No. 00-201 

IN THE 

6XSUHPH&RXUWRIWKH8QLWHG6WDWHV 

———— 

THE NEW YORK TIMES COMPANY, INC.; NEWSDAY, INC.; 
THE TIME INCORPORATED MAGAZINE COMPANY; LEXIS/NEXIS 
and UNIVERSITY MICROFILMS INTERNATIONAL, 

Petitioners, 

v. 

JONATHAN TASINI; MARY KAY BLAKELY; BARBARA GARSON; 
MARGOT MIFFLIN; SONIA JAFFE ROBBINS; and 
DAVID S. WHITFORD, 

Respondents. 
———— 

On Writ of Certiorari to the 
United States Court of Appeals 
for the Second Circuit 

———— 

BRIEF FOR RESPONDENTS 
TASINI, BLAKELY, MIFFLIN & WHITFORD 

———— 

MICHAEL H. GOTTESMAN 
600 New Jersey Ave., N.W. 
Washington, D.C. 20001 
(202) 662-9482 

LAURENCE GOLD 
LEON DAYAN 
805 Fifteenth Street, N.W. 
Washington, D.C. 20005 
(202) 842-2600 

PATRICIA A. FELCH 

Counsel of Record 
10 South Wacker Drive 
Suite 3000 
Chicago, IL 60601 
(312) 715-1000 

DANIEL W. SHERRICK 
8000 East Jefferson Avenue 
Detroit, MI 48226 
(313) 926-5216 

WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D. C. 20001 

QUESTION PRESENTED 

Whether a periodical publisher’s Copyright Act § 201(c) 
privilege to reproduce and distribute an author’s individually 
copyrighted article in “any revision of [the periodical issue in 
which the article originally appeared]” encompasses the 
privilege to reproduce and distribute such an article (i) as a 
freestanding work, or (ii) in a new anthology of articles 
entirely different from the periodical issue in which the article 
first appeared. 

(i) 

TABLE OF CONTENTS 

Page 

TABLE OF AUTHORITIES ......................................... 
iv 

STATEMENT OF THE CASE...................................... 
1 

A. Statement of the Facts ........................................ 
1 

B. Proceedings Below............................................. 13 

SUMMARY OF ARGUMENT..................................... 
15 

ARGUMENT................................................................. 18 

A. Section 201(c)’s Statutory Language ................. 
22 

B. The Section 201(c) Legislative Materials........... 
28 

C. The Petitioners’ Electronic Publishing 

Activities Exceed the Scope of the Section 
201(c) Privilege .................................................. 
32 

CONCLUSION.............................................................. 50 

(iii) 

iv 

TABLE OF AUTHORITIES 
CASES Page 

CCC Information Services v. MacLean Hunter 

Reports, Inc., 44 F.3d 61 (2d Cir. 1994) ............ 
46 

Harper & Row Publishers v. The Nation, 471 

U.S. 539 (1985).................................................. 
47 

Kalem Co. v. Harper Bros., 222 U.S. 55 (1911).... 
38 

Ryan v. Carl Corp., 23 F. Supp. 2d 1146 (N.D. 

Cal. 1998)........................................................... 40, 41 

Sony Corporation of America v. Universal 

Studios, Inc., 464 U.S. 417 (1984)..................... 
37 

Stewart v. Abend, 495 U.S. 207 (1990).................. 
24 

STATUTES 

17 U.S.C. § 101 .................................................23, 26, 48 

17 U.S.C. § 102 ..................................................... 

18 

17 U.S.C. § 103(b) ................................................ 
26 

17 U.S.C. § 106 .....................................19, 20, 22, 38, 39 

17 U.S.C. § 108 ..................................................... 

4 

17 U.S.C. § 201(a) ................................................ 
18 

17 U.S.C. § 201(c) ................................................ passim 

LEGISLATIVE MATERIALS 

H.R. 11947, 88th Cong., § 14(c) (1964) ................ 
29 

H.R. 4347, 89th Cong., 1st Sess. § 201(c) (1965) . 
29 

H.R. Rep. 94-1476, 94th Cong. 2nd. Sess. 
(1976).......................................................28, 30, 31, 32 

Preliminary Draft for Revised U.S. Copyright 

Law and Discussions and Comments on the 
Draft, 88th Cong., 2d Sess. (H. Judiciary 
Comm. Print 1963) ............................................ 
29 

Report of the Register of Copyrights on the 

General Revision of the U.S. Copyright Law, 
87th Cong., 1st Sess., Copyright Law Revision 
(H. Judiciary Comm. Print 1961)....................... 29 

v 

TABLE OF AUTHORITIES 

Page 

S. 3008, 88th Cong., § 14(c) (1964) ...................... 
29 

S. 1006, 89th Cong., 1st Sess., § 201(c) (1965)..... 
29 

MISCELLANEOUS 

S. Pinker, Words and Rules (Basic Books, 1999) . 

8 

Websters’ Third New Int’l Dict., (1968) ............... 25 

STATEMENT OF THE CASE 

A. Statement of the Facts 

1. Respondents Jonathan Tasini, Mary Kay Blakely, 
Barbara Garson, Margot Mifflin, Sonia Jaffe Robbins, and 
David S. Whitford are freelance authors. J.A. 67a. 
Petitioners New York Times Company, Inc., Newsday, Inc., 
and Time Incorporated Magazine Company (collectively the 
“Periodical Publishers”) publish the New York Times, 
Newsday, and Sports Illustrated. J.A. 470a, 473a, 474a. 
Between 1990 and 1993, each of the six Respondents wrote 
and contributed to those periodicals a total of 21 articles. J.A. 
67a-68a. 

None of the Respondents was an employee of any of the 
Periodical Publishers when their contributions to the 
periodicals were published, and none of the 21 works at issue 
in this case was written pursuant to a “work for hire” 
agreement within the meaning of the Copyright Act. J.A. 
67a. That being so—and this is undisputed—the copyright in 
each of the 21 contributions at issue “vest[ed] initially in the 
author of the contribution,” and not in the Periodical 
Publisher who published the contribution in an issue of its 
periodical. 17 U.S.C. § 201(c). 

Given the rulings below and 

the scope of the Question Presented, it is further undisputed 
that, while Respondents authorized the Periodical Publishers 
to include their articles in the periodical publications, none of 
the individual Respondents entered into any valid contract or 
licensing agreement with any of the Periodical Publishers that 
had the effect of divesting or diminishing the Respondents’ 
copyright in the contributed articles.1 

1 In the courts below, there was litigation concerning (i) the lawfulness 
of Petitioner Newsday’s practice of attempting to secure assignments of 
copyrights from Respondents Tasini, Garson, and Whitford through a 
legend stamped on the backs of checks issued to those Respondents after 
their articles had been written and published; and (ii) the scope of a formal 

2 

2. The New York Times is a general interest newspaper 
published daily. J.A. 470a. Each daily edition contains on 
the order of 200 to 600 separate news and feature articles 
organized into several topical sections, such as the front page 
section, the business section, and the sports section. The 
Sunday edition of the New York Times includes certain 
sections that do not appear on any other day, including the 
Book Review section and the Magazine section. J.A. 95a. 
Each page of each section typically contains several articles, 
as well as photographs or other pictorial and graphic 
elements, the arrangement of which is determined by Times 
editors. See, e.g., Lodged Materials, Vol. II (“L-II”), p.1. 
Some of the articles in a given edition of the Times are 
written by paid staff employees of the Times (and therefore 
are “works made for hire”); other articles are written by 
freelance authors such as Respondents who have no 
employment relationship with the Times. J.A. 482a-483a. 

Newsday is also a daily general interest newspaper. And, 
like the New York Times, each edition of the newspaper 
consists of a number of articles as well as various pictorial 
and graphic elements. L-II, p.17. The articles in Newsday 
include both works-for-hire and freelance contributions. J.A. 
482a. 

Sports Illustrated is a weekly sports magazine, each issue 
of which contains numerous articles, including both works- 
for-hire and freelance contributions. J.A. 482a. Sports 
Illustrated also contains pictorial and graphic elements, 
including a cover, advertisements, many photographs, and a 
variety of other non-text features. L-II, pp. 28-33. 

agreement between Respondent Whitford and Time, Inc. concerning the 
parties’ respective rights in a Sports Illustrated article written by 
Whitford. See Pet. App. 3a, 18a. The Second Circuit ruled in favor of 
Respondents on those issues, and Petitioners have not sought review of 
those rulings in this Court. Id. at 3a n.1, 21a-22a. 

3 

3. Petitioners LEXIS/NEXIS and University Microfilms 
International (“UMI”) (collectively the “Electronic Pub- 
lishers”) republish written works in three different electronic 
forms. 

(A) NEXIS 

(i) Petitioner LEXIS/NEXIS maintains “NEXIS,” a 
digital database comprised of millions of articles from 
selected newspapers and periodicals. LEXIS/NEXIS pro- 
vides individual articles and compilations of articles 
electronically to subscribers for a fee. J.A. 83a. Pet. App. 3a- 
4a. The articles in NEXIS originate from, and are licensed 
from, hundreds of different publications; the three periodicals 
at issue here constitute a small fraction of the licensing 
publications. J.A. 216a-328a; Pet. App. 3a-4a. 

Each article is stored in the NEXIS database system as an 
individual file, and each file has its own individual file 
identifier. J.A. 83a. Each file contains (i) the text of the 
article as the text appeared in the originating periodical; and 
(ii) various electronic codes (including author, subject, and 
other codes, see infra) that enable the NEXIS software to cull 
the article from the mass of articles in the database, to link the 
article to other articles in the database, and to provide 
computer displays, printouts, and “downloads” (i.e., 
electronic copies and transfers) of individual articles and/or 
groups of articles. J.A. 190a. 

At any given time, the contents of NEXIS are fixed and 
stored in electronic form in a master file made up of the 
millions of individual files/articles that have been compiled to 
that point. J.A. 83a-84a. At the same time, additional 
articles/files are being added to NEXIS at least daily. See 
J.A. 89a. Before those articles/files are made part of the 
database, an electronic copy is made of the entire pre-existing 
version of NEXIS, which copy is stored off-line in electronic 
form and given a designation, such as NEXIS “Generation 

4 

100.” J.A. 83a. The new and additional articles/files are then 
“streamed” and merged into that off-line copy one by one. 
J.A. 83a-84a. When the process of adding the new articles/ 
files is complete, the updated version of the compilation is 
separately designated, e.g. as NEXIS “Generation 101,” and, 
in the terminology of NEXIS, is then “promoted” to the 
public in lieu of “Generation 100.” Id. 

As noted above, the individual articles/files that make up 
NEXIS each contain numerous electronic codes that are 
invisible to the NEXIS user. Some of the codes are added by 
the originating Periodical Publisher and the remainder by 
NEXIS. J.A. 82a. The codes enable the NEXIS operating 
software to identify the individual article/file from the others 
in the database according to any one of dozens of identifiers, 
including author, topic, keyword, date, words or phrases from 
the text of the article, or name of publication—or according 
to any combination of the various identifiers. J.A. 84a-85a. 

The codes also enable the NEXIS software to execute 
“Boolean” searches of the database—searches using the 
connectors “and,” “or,” and “but not”—so that the NEXIS 
software can, in a single pass, compile from the mass of 
articles in the database, for example, all articles containing 
either the word “porpoises” or the word “dolphins” but not 
the phrase “Miami Dolphins.” See J.A. 84a-85a. 

A person can secure the NEXIS display—and/or printout 
or download—of the database articles by becoming a NEXIS 
subscriber, obtaining a password, and (with a few exceptions 
not pertinent here) by agreeing to pay a fee for use. J.A. 84a, 
388a. When a subscriber enters her password and gains 
access to the database, she is presented, not with the text of 
any article, but rather with a menu asking her to identify a 
source, or a set of NEXIS files—denominated by NEXIS as 
either a “group file” or a “library,” J.A. 85a—from which the 
subscriber would like to have NEXIS display, print out, or 

5 

download articles. See J.A. 84a-85a. Many of the NEXIS 
sources—including, for example the “Newsgroup File-All” 
source—encompass articles/files drawn from hundreds of 
newspapers, magazines, and other periodicals electronically 
linked together through NEXIS’ internal codes. See J.A. 84a, 
216a-328a, 330a. 

As can readily be determined by accessing NEXIS, the 
subscriber, for example, can choose the “Newsgroup Files- 
All” source and, by entering a simple “author” or “byline” 
search, can cause the NEXIS software to pull up and display 
every article from every journal, magazine, and newspaper 
source within the NEXIS database by a particular author. If 
the search is for the articles authored by, e.g., Stephen Jay 
Gould—and there are 98 such articles from 27 different 
publications—then NEXIS will display either (i) a numbered 
list, in reverse chronological order, of the titles of all of the 
98 Gould articles, along with other identifying information 
including the word count of the article and the source 
periodical’s name and date of issue; (ii) the full text of the 98 
articles on that list in the same sequence (with the text of the 
first document appearing first and the text of the remaining 
documents accessible through a click of the “next document” 
button); or (iii) those portions of the articles that contain text 
within a certain number of words (usually 25) of the search 
term. See J.A. 85a-87a. 

The NEXIS system not only provides computer displays of 
individual articles to subscribers, but also prints in hard copy 
form the full text of such articles and makes electronic copies 
of such articles—copies which can be downloaded to the 
subscriber’s own electronic files for “off-line” use (i.e., for 
use after the subscriber’s telecommunication contact with 
NEXIS has been terminated). J.A. 90a. Thus, to return to the 
illustration, a NEXIS subscriber interested in a copy of the 98 
Stephen Jay Gould articles in the “Newsgroup File-All” 
source can secure a NEXIS printout or download of the 

6 

complete text of those articles, and a NEXIS user interested 
in a copy of Gould’s 1998-1999 articles can secure a NEXIS 
printout or download of that more limited compilation of 
articles. 

Whether NEXIS provides an article by display, download, 
or printout, only the text of the article is provided, and not 
any of the pictorial, graphic, or layout elements of the article 
as it appeared in the print publication from which it 
originated. See, e.g., L-II, pp. 89-91. And regardless of 
whether or not the article is an author-copyrighted contri- 
bution, the copyright notice that NEXIS appends to the article 
attributes copyright in the article to NEXIS and to the 
originating periodical, but not to the author of the article. 
J.A. 90a. 

One of the almost infinite available combinations of 
articles that the NEXIS system can provide through a 
computer display, printout, or download is a compilation of 
all articles appearing in NEXIS drawn from a particular 
periodical issue—a compilation that can be assembled 
through the use of the “date” and “publication” identifiers. 
J.A. 88a. Given NEXIS’ make up as a database of individual 
files/articles, the results of a search for articles from a 
particular day’s edition will be displayed as a list or series of 
individual articles presented in an order that does not (except 
by sheerest coincidence) reflect the order in which the articles 
appeared in the original print issue. J.A. 502a-503a. 

(ii) NEXIS operates under a series of licensing 
agreements in which the Periodical Publishers authorize not 
only reproduction and distribution of a particular periodical 
issue as a whole, but also reproduction and distribution of 
“any portion” thereof. 

7 

(a) The New York Times-LEXIS/NEXIS License 

On January 31, 1983, the New York Times and 
LEXIS/NEXIS entered into a licensing agreement, which was 
in effect when all of the articles at issue in this case were first 
published in the Times. The agreement, in an attachment 
styled “Exhibit A,” defines the term “Licensed Times 
Materials” to include “future sections and editions (including 
regional and national editions) of The New York Times, . . . 
excepting therefrom photographs, crossword puzzles, other 
graphic material and advertisements.” J.A. 98a. The body of 
the licensing agreement then proceeds to grant to 
LEXIS/NEXIS “an exclusive worldwide copyright license” to 
“sell and display, publicly or privately,” through 
“computerized electronic coded retrieval systems to which 
customers gain access through terminals,” “all and any 
portion of the material set forth in Exhibit A (the ‘Licensed 
Times Material’).” Materials Lodged with Certiorari Petition, 
vol. 3, Exh. 38 at M3689 (emphasis added); J.A. 98a. The 
agreement further authorizes LEXIS/NEXIS to “sublicense” 
the rights LEXIS/NEXIS has obtained from the Times. Id. 
And, while the Times/LEXIS-NEXIS agreement grants 
LEXIS/NEXIS the right to sell and display all and “any 
portions of” the editions under license—including individual 
articles—the agreement explicitly denies LEXIS/NEXIS the 
“right to display or produce facsimile reproductions of The 
New York Times.” J.A. 98a. 

Each night, after the day’s newspaper has been printed, the 
Times selects out of the day’s edition the news and feature 
articles and, in line with the terms of the license provision 
permitting NEXIS to electronically publish “all and any 
portions of the [Times] materials,” prepares a series of 
individual electronic files, each of which contains the text of 
one article. J.A. 73a. In so doing, the Times takes a number 
of steps to make the article/files searchable and displayable as 
individual article/files, including, inter alia, coding each file 

8 

according to such criteria as author, topic, keyword, etc. J.A. 
75a-78a. “In the process, a substantial portion of what 
appears in that particular issue of the periodical is not made 
part of a file transmitted to [LEXIS/NEXIS] including among 
other things, formatting decisions, pictures, maps, tables, and 
obituaries.” Pet. App. 4a. 

The Times then transmits that series of article/files to 
NEXIS, J.A. 78a, and NEXIS, as we have seen, further codes 
each article/file and then adds the series of article/files to the 
NEXIS database. J.A. 81a, 83a-84a.2 

(b) The Newsday-NEXIS License 

Articles from Newsday first appeared in NEXIS in 1988 
pursuant to an April 21, 1988 licensing agreement. That 

2 A series of new individual files may be added to an electronic 
database in a particular sequence, but once the files are stored inside the 
computer drive housing the database, the computer’s storage system will, 
with each use of the database, continuously reconfigure the arrangement 
of the files so that their storage arrangement no longer reflects their 
original sequence. The system performs these reconfigurations so as to 
ensure that the storage space continues to be utilized as efficiently as 
possible. As one scholar has put it: 

[A] computational system cares about how information flows within 
it, not about how the system takes up space. In computers a 
program or file may end up in different parts of the memory or disk 
when loaded onto two machines or onto one machine on different 
occasions, and it may be fragmented across far-flung regions of the 
disk or memory. As long as the information is preserved and the 
regions are properly linked, the program can work perfectly, even 
though we can never draw a circle around the part of the memory or 
disk that contains it. [S. Pinker, Words and Rules (Basic Books, 
1999) 242.] 

Thus, one cannot open up a computer and “draw a circle” around the 
group of files that contain, say, the text of articles constituting a particular 
issue of Sports Illustrated. While those files may share a “publication” and 
“date” code in common, those files are no more (and no less) closely 
linked to each other than files sharing the same “topic” and “author” code. 
See also Pet. Br. 43-44 n.30. 

9 

agreement, in its “Schedule A,” defines the “Licensed 
Materials” as “all stories from Newsday” except for, inter 
alia, “Graphic materials,” “Weather Forecast[s],” “Paid 
Death Notices,” “Selected Wire Services,” and “Selected 
Syndicated Materials and Freelance Materials.” J.A. 105a 
(emphasis added).3 The licensing agreement begins by 
granting LEXIS/NEXIS “a non-exclusive world-wide license 
… to use and authorize use by others of all or any portion of 
the information and materials identified in Schedule A hereto 
(the “Licensed Materials”) in connection with [LEXIS/ 
NEXIS’] development, creation, rendition, display, 
dissemination and distribution, directly or through third 
parties, of computer-assisted information products or 
services.” [Id. (emphasis added)]. 

The license then goes on to particularize the rights included 
within the license: 

The rights embraced by the License include, but are 
not limited to, the right to display and authorize displays 
of Licensed Materials by means of computer-assisted 
devices, telecommunications and systems; the right to 
reproduce and authorize reproduction of Licensed 
Materials in visually perceptible or machine-readable 
copies in connection with computer-assisted information 
products or services. 

[J.A. 104a]. 

Thus, like the Times, Newsday authorized NEXIS to use 
all or “any portion” of the materials under license, with no 

3 By excluding “selected” freelance materials, Newsday evidently was 
reserving the right to refrain from providing and licensing to NEXIS the 
use of individually copyrighted materials as to which Newsday was 
unable to secure assignments. Apparently because Newsday believed 
(erroneously it turned out) that it could validly secure copyright 
assignments from freelancers by means of legends stamped on the back of 
the checks issued to them, see note 1 supra and Pet. App. 3a n.1, 
Newsday did not select any of the Respondents’ articles for exclusion 
from the materials licensed and transmitted to NEXIS. 

10 

restriction requiring articles from the same edition to be 
displayed or filed together as single units. And, just as the 
Times authorized LEXIS/NEXIS to grant sublicenses of 
Times materials, Newsday expressly authorized LEXIS/ 
NEXIS to authorize NEXIS subscribers to reproduce and 
display all or any Newsday stories. 

Pursuant to the license, Newsday each night transmits to 
LEXIS/NEXIS the licensed portions of a particular day’s 
edition of the paper as a series of individual electronic 
files/articles, each of which is separately coded. 

(c) The Time, Inc.-LEXIS/NEXIS License 

On or about November 27, 1990, Time Inc. entered into a 
licensing agreement with LEXIS/NEXIS that was nearly 
identical to Newsday’s. The “Licensed Materials” included 
all of the contents of the Time publications except, inter alia, 
“All material appearing on the cover page,” “Graphic 
materials,” and “Special issues of a publication (e.g. Sports 
Illustrated Year in Sports). . . .” J.A. 106a-107a. And, the 

license extended to LEXIS/NEXIS “the right to use and 
authorize use by others of all or any portion” of the materials, 
and “the right to reproduce and authorize reproduction of 
Licensed Materials in copies (including printed, electronically 
displayed, and machine-readable copies) in connection with 
computer-assisted information products or services.” J.A. 
107a (emphasis added). 

Pursuant to the license, Sports Illustrated sends NEXIS a 
magnetic tape every week containing, in separate files, each 
article from the previous week’s issue of the magazine. 

(B) New York Times OnDisc (NYTO) 

(i) Respondent UMI’s “The New York Times OnDisc,” is 
a set of CD-ROMs, or computer-readable compact discs. The 
CD-ROM’s store, in separate electronic files containing one 

11 

article per file, the text of New York Times articles from 
1981 to the present—the very same “text-only” New York 
Times articles/files in NEXIS during that same period. J.A. 
90a, 369a. Indeed, UMI receives the electronic text 
article/files that it encodes onto disc directly from NEXIS, and 
not from the New York Times. J.A. 102a, 90a. 

As is the case with respect to the individual New York 
Times articles in NEXIS, each individual article in New York 
Times OnDisc is marked with codes, invisible to the user, that 
(i) enable the software operating the discs to cull from the 
article from the mass of other articles, and (ii) electronically 
link one article to another. J.A. 91a. 

(ii) The New York Times OnDisc is created and 
distributed pursuant to a three-way New York Times- 
LEXIS/NEXIS-UMI licensing agreement. J.A. 90a. The 
agreement distinguishes between “image” CD-ROM 
products, i.e., products that display photographic or facsimile 
images of newspaper pages; and electronically coded 
“ASCII” CD-ROM products, i.e., coded storage-and-retrieval 
products that display only the text of articles. J.A. 101a-103a. 
The agreement then assigns to UMI the “exclusive worldwide 
copyright license to manufacture and sell CD-ROM (ASCII) 
format versions of textual . . . materials” from the New York 
Times, and further provides that UMI is to obtain the 
individual articles that make up the contents of the CD- 
ROM’s directly from LEXIS/NEXIS and not from the Times. 
J.A. 102a, 90a. 

(C) General Periodicals On Disc (GPO) 

(i) UMI’s “General Periodicals OnDisc” is a set of CD- 
ROM’s containing (i) articles from more than 200 
publications or sections of publications from 1988 forward, 
J.A. 331a, 380a; and (ii) abstracts and indices of the articles 
designed to facilitate retrieval, display, and reproduction of 

12 

the individual articles by topic, author, and other criteria. J.A. 
95a. Unlike NEXIS and The New York Times OnDisc, 
General Periodicals OnDisc displays facsimile images of the 
articles contained within it. J.A. 379a. Those images are 
created by a device that scans the original pages of the 
periodicals one by one and converts each page into an 
electronic computer-readable image. J.A. 380a. Like 
NEXIS, GPO identifies, displays, and prints individual 
articles, and not issues or editions of a periodical, in response 
to search requests. As UMI describes the product in its 
promotional literature: 

General Periodicals OnDisc (GPO) provides exact 
reproductions of articles in image format from 
approximately 200 of the most frequently used general- 
interest periodicals. . . . Users search the abstract-and- 
index database, locating and reviewing relevant citations 
and abstracts, then retrieve and print complete article 
copies from the image database—all with just a few 
keystrokes. [J.A. 331a (emphasis added).] 

A user of General Periodicals OnDisc can thus retrieve a 
list of all articles on, say, the topic of “missile defense,” and, 
by entering the citations generated by the list, cause the 
software operating the database to display or print out hard 
copies of all or any combination of the listed articles. Only 
the pages of the periodical issue containing the identified 
articles are displayed and/or printed, not the entire periodical 
issue. See L-II, pp. 144-145 (GPO printout of Respondent 
Mary Kay Blakely’s 9/23/90 New York Times Magazine 
article which begins on page 26 and jumps to page 76). 

The only New York Times materials available on General 
Periodicals OnDisc are the Book Review and Magazine 
sections of the New York Times Sunday edition; the 

13 

remaining sections of the Sunday edition are not available on 
GPO. J.A. 101a-102a.4 

(ii) In 1989, the New York Times and UMI executed an 
agreement that permitted UMI to create a CD-ROM image 
product (later named General Periodicals OnDisc) that would 
include images of the Book Review and Magazine sections of 
the Sunday New York Times, along with materials from other 
periodicals, but not other sections of the New York Times. 
J.A. 101a-102a. 

The licensing agreement provided that, although the 
contents of the Book Review and Magazine “will not be 
stored or made available as ‘text’ but as a facsimile of the 
entire page,” articles could be searched and displayed as part 
of a page through the use of an electronic indexing system 
J.A. 101a-102a & n.28. 

4. In the 1990-1993 period, each of the 21 articles 
authored by the six Respondents was published by one or the 
other of the Periodical Publishers. J.A. 68a-69a. After 
publication of the pertinent article, the Periodical Publisher 
provided the article to one or more of the Electronic 
Publishers, who in turn republished the article in electronic 
form. J.A. 90a. 

B. Proceedings Below 

On December 16, 1993, the Respondent authors filed suit 
in the U.S. District Court for the Southern District Court of 
New York alleging that the Periodical Publishers, by 

4 The New York Times continuously registers copyrights in its daily 
and Sunday editions as the newspapers are published. At all times 
relevant here, the Times, in the registration forms submitted to the U.S. 
Copyright Office, treated the Book Review and Magazine sections of the 
Sunday Times as just that—sections of that day’s newspaper—and not as 
independent publications. See, e.g., L-II, p. 178. 

14 

licensing the republication of Respondents’ copyrighted 
articles in the manner described above, and the Electronic 
Publishers, by republishing those articles in the manner 
described above, infringed the authors’ copyrights in the 
articles. See, e.g., J.A. 31a-32a (“[N]either Defendant New 
York Times nor Defendant [LEXIS/NEXIS] has ever 
obtained plaintiff[’s] . . . consent to the inclusion of the article 
[authored by plaintiff] in an electronic database nor to the 
distribution, transmission and/or communication of an 
electronic copy to the public. . . . The conduct complained of 

. . . has violated and continues to violate . . . plaintiff’s 
exclusive rights under the copyright [in the article] . . . in that 
it interferes with plaintiff’s exclusive right to reproduce or 
license reproduction of the copyrighted work, to distribute or 
license distribution of copies of the copyrighted work, to 
publicly . . . display the copyrighted work . . . and to 
authorize all of the same.”) 

At the conclusion of discovery, the parties filed cross 
motions for summary judgment. The Respondent authors 
argued that the Petitioner publishers’ reproduction and 
distribution of the authors’ copyrighted contributed articles 
was outside the bounds of the three delimited privileges 
accorded by § 201(c) of the Copyright Act and therefore 
constituted infringement of the authors’ copyrights. The 
Petitioners, for their part, asserted that § 201(c) privileges 
these reproductions and distributions of the authors’ 
contributions. 

The District Court granted summary judgment in favor of 
the Petitioner publishers on the theory that NEXIS and the 
other electronic databases were “revisions” of each and every 
periodical issue contained within the databases, and that 
inclusion of the authors’ articles in the databases was within 
the § 201(c) privilege for reproducing and distributing an 
author’s contribution to a periodical issue in a “revision of 
that [periodical issue].” Pet. App. 76a. 

15 

The Second Circuit reversed in a unanimous opinion by 
Judge Winter. The Second Circuit held that, because “NEXIS 
is a database comprising thousands or millions of individually 
retrievable articles taken from hundreds or thousands of 
periodicals,” “[i]t can hardly be deemed a ‘revision’ of each 
edition of every periodical that it contains.” Pet. App. 14a. 
The other two electronic databases likewise “c[ould] not be 
said to be a ‘revision’ of any (or all) particular editions” 
contained therein, but instead were “new antholog[ies].” Pet. 
App. 17a. And, because the databases were not revisions of 
the pertinent periodical issues, the court of appeals reasoned, 
the publishers exceeded the § 201(c) privilege and infringed 
the authors’ copyrights. Id. 

SUMMARY OF ARGUMENT 

1. Section 201(c) of the Copyright Act confirms that, in 
the absence of an express agreement to the contrary, an 
author who contributes an article to a “periodical issue”æor 
to any other “collective work” as defined in § 101 of the 
Act•••••••• ownership of the copyright in the contributed 
article. 

Section 201(c) also grants the periodical publisher—as the 
“collective work” copyright owner of the periodical issue— 
the delimited privileges to reproduce and distribute the 
author’s contribution as part of (i) “that particular” periodical 
issue, (ii) “any revision of that” periodical issue; and (iii) 
“any later [periodical issue] in the same series.” 

The Petitioner publishers invoke the second of § 201(c)’s 
three stated privileges, and claim that they are reproducing 
and distributing to the public electronic copies of their 
periodical issues and that this activity is within their § 201(c) 
privilege to publish “any revision” of these periodical issues. 

It is the Respondent authors’ position that what Petitioners 
are doing is making electronic reproductions and distributions 

16 

of the authors’ copyrighted contributed articles (i) as 
freestanding works, and (ii) in compilations of articles that 
are entirely different “collective works” from the periodical 
issue in which the article originally appeared, and that each of 
these electronic publishing activities is well outside the 
§ 201(c) privilege. 

2. Section 201(c) recognizes two distinct copyrights: the 
author’s copyright in her contribution to a periodical issue, 
and the publisher’s copyright in the periodical as a collective 
work. The § 201(c) privileges prevent any resulting impasse 
between these copyright owners by permitting the publisher 
to reproduce and distribute the periodical issue without any 
express copyright grant from the authors of the contributed 
articles. This privilege thus facilitates the publication of 
periodicals and other collective works in a manner that does 
not disturb the author’s copyright in her contributed article. 

The second § 201(c) privilegeæwhich permits a periodical 
publisher to reproduce and distribute an author’s copyrighted 
article in “any revision of” the periodical issue in which the 
article originally appearedæis at the center of this case. 

Given the standard meaning of “revision,” the Copyright 
Act’s definition of “collective work,” and the Act’s 
characterization of the collective work copyright, a second 
collective work is a revision of the first collective work when 
the second work is of the same type as the first and when the 
second work is an amended version of the first comprised of 
contributions of the same kind as were included in the first 
that are assembled into a collective whole according to the 
same informing “selection, coordination, or arrangement” 
principles that characterized the first work. 

In light of that understanding, and of § 201(c)’s recognition 
of the author’s copyright in her contributed work, the 
privilege does not extend to a periodical publisher’s 
reproduction and distribution of an author’s copyrighted 

17 

contributed article as a freestanding work. Nor does the 
privilege extend to a periodical publisher’s reproduction and 
distribution of a contributed article in a compilation of 
articles that is entirely different as a collective work from the 
periodical issue in which the article originally appeared. 

3. The pertinent Petitioner electronic reproductions and 
distributions at issue here are typified by those effected by 
LEXIS/NEXIS. On proper analysis, those reproductions and 
distributions are of the following kinds: 

(i) the NEXIS-provided computer display, printout, or 
download of a copy of a particular author-copyrighted article 
to a NEXIS subscriber; 

(ii) the NEXIS computer display, printout, or download to 
a subscriber of a compilation of articles that includes the 
copyrighted article together with other articles by the same 
author, or on the same subject, or with the same keyword, or 
the like; and 

(iii) NEXIS’ “promot[ion] to the public”æNEXIS’ term 
for “publishing”æa new version, or “generation,” of the 
NEXIS compilation of articles in lieu of the prior generations 
of the compilation. 

And, on the proper understanding of the scope of the § 
201(c) “any revision of that collective work” privilege, all 
three classes of NEXIS reproductions and distributions fall 
well outside that privilege. None of the Petitioners’ efforts to 
recast NEXIS’ electronic publishing activities to make those 
activities fit within the § 201(c) privilege are availing. And, 
because for all purposes relevant to the § 201(c) analysis, 
Petitioner UMI’s electronic publishing activities are 
functionally equivalent to NEXIS, Petitioners’ efforts to 
recast UMI’s activities to make them fit within the privilege 
likewise are unavailing. 

18 

ARGUMENT 

The 1976 Copyright Act’s basic ownership rule is that 
copyright in an “original work[] of authorship” “vests initially 
in its author.” 17 U.S.C. §§ 102, 201(a). Copyright gives the 
author a set of exclusive rights in the work, including the 
rights “to reproduce the work in copies” and “to distribute 
copies of . . . the . . . work . . . to the public by sale.” Id. 
§ 106. 

Section 201(c) of the Act confirms that, in the absence of 
an express agreement to the contrary, an author who 
contributes an article to a “periodical issue”—or to any other 
“collective work” as defined in § 101 of the Act—retains 
ownership of the copyright in the contributed article. 

Section 201(c) also grants the periodical publisher—as the 
“collective work” copyright owner of the periodical issue— 
the delimited privileges to reproduce and distribute the 
author’s contribution as part of (i) “that particular” periodical 
issue, (ii) “any revision of that” periodical issue; and (iii) 
“any later [periodical issue] in the same series.” 

The § 201(c) privileges are incidental to, and coextensive 
with, the publisher’s right, as a collective work copyright 
owner, to reproduce and distribute the periodical, and serve to 
facilitate the exercise of that right. While the periodical 
publisher can exploit the contributed article through these 
privileges, the publisher has no copyright at all in the 
contributed article as such. The author of the article remains 
the owner of the copyright in the article with the exclusive 
rights, among others, to reproduce and distribute the article as 
a freestanding work or through a different periodical issue or 
other collective work. 

In this copyright infringement case, the Respondent 
freelance authors complain that the Petitioner Periodical 
Publishers, acting through their licensees, the Petitioner 

19 

Electronic Publishers, have improperly “reproduced . . . and 
distributed copies of the [authors’] work[s] to the public by 
sale.” 

The Petitioners respond by invoking the second of 
§ 201(c)’s three stated privileges, and by claiming that their 
challenged “electronic[] publishing” activity consists of 
reproducing and distributing to the public “electronic copies” 
of their periodical issues and that this activity is within their 
§ 201(c) privilege to publish “any revision” of these 
periodical issues. Petitioners’ Brief (“Pet. Br.”) i, 2, 41; id. 
at 39-46. 

The direct, dispositive answer to the Petitioners’ reliance 
on the second § 201(c) privilege is that the Petitioners’ 
electronic publishing activity at issue here is leagues away 
from the electronic reproduction and distribution of 
“revisions” of the periodical issues in which the Respondent 
authors’ copyrighted articles originally appeared. What 
Petitioners are doing is making electronic reproductions and 
distributions of the authors’ articles (i) as freestanding works, 
and (ii) in compilations of articles that are entirely different 
“collective works” from the periodical issue in which the 
article originally appeared. Each of these electronic 
publishing activities is well outside the § 201(c) privilege. 

It is fair enough for the Petitioners to denominate their 
endeavors as “electronic[] publishing,” and, for the present 
purposes, to insist that such publishing is to be judged on a 
Copyright Act “media neutrality” basis.5 The Petitioners are 

5 We pause to elaborate on our reasons for accepting only in carefully 
guarded terms (“for the present purposes”) Petitioners’ media neutral 
approach. 

There is the most substantial question as to whether the § 201(c) 
privileges permit collective work copyright owners to publicly display an 
author’s copyrighted contributed work, e.g., through a computer display 
of the article. Cf. 17 U.S.C. § 106. The Register of Copyrights in a 

20 

however quite wrong in suggesting that there is some dispute 
between the parties here regarding media neutrality. There is 
not. 

Our legal position is concerned exclusively with the 
Petitioners’ reproduction and distribution of the Respondents’ 
copyrighted contributed articles as free-standing works and in 
compilations of articles that are different collective works 
from the periodical issue in which the Respondents’ articles 
originally appeared. Our legal position is not concerned at all 

response, printed in the Congressional Record, to a request by 
Congressman James P. McGovern for an analysis of the Copyright Act 
issues implicated by this litigation, states that the answer is “no”: 

Section 106 of the Copyright Act, which enumerates the exclusive 
rights of copyright owners, includes an exclusive right to display 
their work publicly. Among the other exclusive rights are the rights 
of reproduction and distribution. The limited privilege in § 201(c) 
does not authorize publishers to display authors’ contributions 
publicly, either in their original collective works or in any 
subsequent permitted version. It refers only to “the privilege of 
reproducing and distributing the contribution.” [147 Cong. Rec. E 
182-E 183 (Feb. 14, 2001 daily ed.).] 

And, the Register then outlines the basis for her position at length and 
in so doing opines that in the § 201(c) context the “focus on the media 
neutrality of the Act is misplaced.” See id. at E 182. 

Respondents argued this point in the District Court, but that court 
concluded that the “public display” of a contributed work is a type of 
reproduction and distribution of the work, and that the § 201(c) 
“reproduction and distribution” privileges authorize such displays. Pet 
App. 53a-54a. And, the Respondent did not press the point in the Second 
Circuit Court. Nor did the Court of Appeals advert to the point in its 
decision. 

Against that background we take it as a given in this Court that there is 
a § 201(c) display privilege subsumed within the § 201(c) reproduction 
and distribution privileges, and that, in these circumstances, it is proper to 
treat with § 201(c) as a “media neutral” provision. We argue the § 201(c) 
issue decided below and presented here on that basis. 

21 

with the circumstance that the Petitioners are making 
reproductions and distributions through electronic publishing 
rather than print publishing. 

This copyright case is no different from a case precipitated 
by a print republishing endeavor in which periodical 
publishers license print republishers and provide the 
republishers with reformatted press plates of periodical issue 
articles on an article-by-article, issue-by-issue basis; the 
republishers code and store the plates; and, on subscriber 
orders, the republishers print in pamphlet form and deliver 
any individual article, or a variety of compilations of 
articles—e.g. “author” compilations or “subject” 
compilations—drawn from multiple periodicals. 

In such a case, the authors of the contributed copyrighted 
articles would have the same infringement claim as the 
authors have here, and the periodical publishers and print 
republishers, for better or worse, would have the same 
§ 201(c) privilege response as the Petitioners have here, and 
only that response. In both instances, as we will show, that 
response fails. 

With these somewhat lengthy preliminaries, we turn first to 
the proper interpretation of § 201(c), reading its words 
according to their ordinary and accepted meaning in the 
context of the Copyright Act as a whole, and taking into 
account the evolution of the statutory text and the legislative 
explanations of the provision’s purposes and effect. Infra at 
pp. 22-32. With the governing legal principles firmly in 
mind, we then address and rebut the Petitioners’ claim that 
the reproductions and distributions here are of revisions of the 
periodical issues in which the Respondent authors’ 
copyrighted articles originally appeared. Infra at pp. 32-50. 

22 

A. Section 201(c)’s Statutory Language 

Section 201(c) provides: 

(c) Contributions to Collective Works.æCopyright in 
each separate contribution to a collective work is distinct 
from copyright in the collective work as a whole, and 
vests initially in the author of the contribution. In the 
absence of an express transfer of the copyright or of any 
rights under it, the owner of copyright in the collective 
work is presumed to have acquired only the privilege of 
reproducing and distributing the contribution as part of 
that particular collective work, any revision of that 
collective work, and any later collective work in the 
same series. 

1. Section 201(c)’s first sentence confirms the Copyright 
Act’s basic ownership rule••••••••••••• in a work . . . vests 
initially in the author,” § 201(a)æfor one particular class of 
works: “separate contribution[s] to a collective work.” 
Where a work is written for contribution to a “periodical 
issue, anthology or encyclopedia,” or other “collective work,” 
and is not a “work made for hire,” the copyright in the 
contributed work vests in the author of that work. And, as 
stated in § 106 of the Act, it is the author, by reason of her 
copyright in the contribution, who has “the exclusive rights,” 
inter alia, “to reproduce the copyrighted work in copies,” “to 
distribute copies … of the copyrighted work to the public by 
sale . . . ,” and “to authorize” others to make such 
reproductions and distributions. 

2. Section 201(c)’s second sentence addresses the legal 
consequences that attach when an article is contributed to a 
collective work such as a periodical issue. Understanding its 
logic requires an understanding of the Copyright Act defined 
terms on which it rests. 

23 

A person who “assemble[s]” separate and independent 
contributions into a “collective whole,” e.g., a periodical 
issue, creates a “compilation,” which itself is an “original 
work of authorship.” 17 U.S.C. § 101. And, the term 
“‘compilation’ includes ‘collective works,’” viz. “a work, 
such as a periodical issue, anthology, or encyclopedia, in 
which a number of contributions, constituting separate and 
independent works in themselves, are assembled into a 
collective whole.” Id. 

The person who assembles the periodical issue—the 
periodical publisher—is entitled to “[c]opyright protection” 
for that work. 17 U.S.C. § 103(b). That copyright protection 
extends “only to the material contributed by [the person who 
assembles the periodical issue], as distinguished from the 
preexisting material [the individual articles] employed in the 
[periodical issue].” Id. 

In other words, the publisher’s copyright protection runs to 
the publisher’s “collection and assembling of [contributed 
articles] . . . selected, coordinated or arranged in such a way 
that the resulting [periodical issue] as a whole constitutes an 
original work,” 17 U.S.C., § 103, but not to the author’s 
copyrighted contributed articles included in the periodical. 
The author’s copyright in her article, recognized in § 201(a) 
and again in the first sentence of § 201(c), is thus distinct 
from the publisher’s copyright in the periodical issue as a 
collective work. 

At the same time, the accepted and expected means for the 
publisher to exploit the collective work copyright in the 
periodical issue is for the publisher to reproduce and 
distribute the periodical to the public—in real world terms, to 
reproduce and distribute not the publisher’s “selection, 
arrangement or coordination” of articles in the abstract, but 
those elements of assembly articulated through the collection 
of individual contributions assembled into a collective whole. 

24 

Without some meliorating privileges, the foregoing copy- 
right rules could produce an impasse in cases where the 
author owns the copyright in the contributed article and has 
not expressly granted reproduction and distribution rights to 
the periodical publisher. Cf. Stewart v. Abend, 495 U.S. 207 
(1990) (copyright owner of derivative work is precluded from 
exploiting the copyright in the derivative work after the initial 
grant of rights from the owner of the copyright in the pre- 
existing material from which the derivative work was drawn 
lapsed and the successor-in-interest to the preexisting- 
materials copyright owner refused to make a new transfer). 

The first question that arises from the coexistence of•••• 
tension between•••••••••••• work copyrights and collective 
work copyright is whether, in the absence of an express 
transfer from each contributing author, the publisher of a 
periodical issue will be privileged to make any publication of 
a periodical issue that includes the contributed articles. 

And, it is § 201(c)’s second sentence—providing that “the 
owner of copyright in the collective work is presumed to have 
acquired … the privilege of reproducing and distributing the 
contribution as part of that particular collective work”—that 
resolves this question. It does so by permitting the publisher 
to reproduce and distribute the periodical issue without any 
express copyright grant from the authors of the contributed 
articles. This privilege thus facilitates the publication of 
periodicals and other collective works in a manner that does 
not disturb the author’s copyright in her contributed article. 

A second question is whether the periodical publisher, as a 
collective work copyright owner, can exploit the contributed 
article in collective works other than the original periodical 
issue. Section 201(c)’s second sentence resolves this 
question in measured terms by providing the publisher “the 
privilege of reproducing and distributing the contribution as 
part of . . . any revision of that collective work,” viz., any 

25 

revision of the particular periodical issue in which the 
contributed article originally appeared, and the “privilege of 
reproducing and distributing the contribution as part of . . . 
any later collective work in the same series.” 

a. The first of these two privileges—to reproduce and 
distribute an author’s copyrighted article in “any revision of 
that collective work”—has been the center of this case. 

The Copyright Act does not define “revision.” Nor is that 
term a copyright term of art. And, none of the secondary 
legislative materials provide a precise meaning of “revision” 
as used in § 201(c). 

The definitions of “revision” as the term is used in its 
ordinary sense are, moreover, less than exact. A revision is 
“something made by revising” and to revise is “to look at or 
go over again for the purpose of correcting or improving” or 
“to make a new, amended, improved or up to date version 
of.” Webster’s Third New Int’l Dict., 1944 (1968). Thus a 
revision is the product of a certain kind of endeavor— 
returning to an original for the purpose of correcting, 
improving, etc. the original—that produces a certain result— 
an amended version of the original, and not something that is 
no longer a recognizable version of the original. On any 
understanding of the term, differences can exist between any 
two works so that the second is not judged to be a revision of 
the first, but a separate work in itself. And, on any 
understanding, that judgment turns on determining the first 
work’s defining characteristics. 

But, the context provided by § 201(c) does give a 
significant measure of additional content to “revision” in its 
ordinary sense. The § 201(c) privilege allows a collective 
work copyright owner to include a contributed work only in 
“any revision of that collective work”æviz., only in a revision 
of the original collective work that included the contributed 

26 

work. There is no § 201(c) privilege to include the contri- 
bution in “any revision of any work.” 

The Copyright Act, moreover, does define “collective 
work”æ“a work such as a periodical issue, anthology, or 
encyclopedia, in which a number of contributions, 
constituting separate and independent works in themselves, 
are assembled into a collective whole.” 17 U.S.C. § 101. 
Further, the Act does provide that the copyright owned by the 
assembler of a collective work is in the “material contributed 
by the author [i.e., the assembler] of such work,” viz., in the 
assembler’s “select[ion], coordinat[ion], and arrange[ment]” 
of the “preexisting materials” employed in the work, “as 
distinguished from the preexisting material” itself. Id. 
§§ 101, 103(b). 

What follows from the standard meaning of “revision,” the 
Act’s definition of “collective work,” and its characterization 
of the collective work copyright is this: a second collective 
work is a revision of the first collective work when the 
second work is of the same type as the first•• daily 
newspaper issue, a general encyclopedia, etc.æand when the 
second work is an amended version of the first, comprised of 
contributions of the same kind as were included in the first 
that are assembled into a collective whole according to the 
same informing “selection, coordination, or arrangement” 
principles that characterized the first work. 

This explication of the phrase “any revision of that 
collective work” does not, to be sure, provide a litmus test for 
resolving borderline cases. But it does have sufficient 
explanatory power to resolve two highly pertinent non- 
borderline cases: 

••••• privilege does not extend to a periodical publisher’s 
reproduction and distribution of an author’s copyrighted 
contributed article as a freestanding work. The article as such 
is not a collective work at all much less a revision of the 

27 

original periodical issue. And, the author of the contributed 
article—not the publisher—is the copyright owner of the 
article. Indeed, § 201(c)’s most basic point is to confirm that 
the author of the contributed article is its copyright owner— 
and that the publisher has no copyright in the article as such. 

••••• privilege does not extend to a periodical publisher’s 
reproduction and distribution of a contributed article in a 
compilation of articles that is entirely different as a collective 
work from the periodical issue in which the article originally 
appeared: viz., in a compilation that collects and assembles a 
far different set of contributed works according to far 
different “selection, coordination and arrangement” criteria. 
Such a compilation is not on any view a “new, amended, 
improved, or up to date version” of the particular periodical 
issue in which the contribution originally appeared. 

These cases are pertinent because the Petitioners have 
effected just these kinds of reproductions and distributions of 
the Respondent authors’ copyrighted articles. Infra at 32-50. 

b. The last § 201(c) privilege, which Petitioners have not 
invoked here, permits the republication of a contributed work 
in the course of publishing “any later collective work in the 
same series.” This provision says•••• throughout this 
litigation has been taken by the parties to say••• more and 
no less than that the publisher of a periodical (or other 
publication that appears in intervals over time) who has 
included an article in an earlier issue in a continuing series of 
similar periodical issues can include the article in a later issue 
in the series. There one day may be a dispute over whether 
two periodical issues are “in the same series,” but no such 
dispute is involved in this case. 

This privilege does, however, throw a cross light on the 
two preceding § 201(c) privileges. Like the modifier “only” 
that applies to all the stated privileges, the inclusion of the 
last privilege makes it manifest that § 201(c) provides 

28 

periodical publishers three expressly stated privileges and no 
others. And, the terms of the final two privileges taken 
together reinforce the conclusion that § 201(c) only permits a 
publisher to include a contribution to a particular periodical 
issue in a second periodical issue that is closely related to the 
original periodical—viz., in an amended version of the 
original or in a later issue that is in a succession of similar 
periodical issues. 

B. The § 201(c) Legislative Materials 

The background § 201(c) legislative materials confirm that 
the foregoing reading of the provision’s language in its 
Copyright Act context is the correct reading. 

1. The 1976 Copyright Act was the culmination of a 
Congressional undertaking that began in 1955 with a charge 
to the United States Copyright Office to prepare the way for a 
revision bill. 

See House Report 94-1476, 95th Cong. 2nd. 

Sess., pp. 47-48 (1976) (“House Report” 94-1476). 

In carrying out that charge, the Copyright Office•••••• a 
period of study and debate that included the copyright law 
constituencies•••••••••• a 1961 set of recommendations 
for a copyright law revision bill and drafted a 1963 revision 
bill, a 1964 bill, and a 1965 bill. Both the 1964 bill and the 
1965 bill were introduced in Congress. And the 1965 bill, 
which was accompanied by an extensive explanatory report 
by the Register of Copyrights became the base for the 
legislative effort that led to the 1976 Act. See House Report 
94-1476, pp. 47-48 (outlining these developments). 

All four of the Copyright Office proposals addressed the 
contributed works/collective works issue as a discrete issue. 
In so doing each proposal treated somewhat differently with a 
periodical publisher’s reproduction and distribution of a 
contribution to a particular periodical issue in a second 
collective work. 

29 

••••• 1961 recommendation accorded the publisher the 
“right to publish it [the contributed work] in a similar 
composite work.” Report of the Register of Copyrights on the 
General Revision of the U.S. Copyright Law, 87th Cong. 1st 
Sess. (H. Judiciary Comm. Print 1961). 

••••• 1963 bill provided the publisher “only the privilege 
of publishing the contribution in that particular collective 
work.” S. 3008, 88th Cong. 2nd Sess., § 14(c) (1964); H.R. 
11947, 88th Cong. 2nd Sess., § 14(c) (1964). 

••••• 1964 bill provided the publisher “only the privilege 
of reproducing and distributing the contribution as part of that 
[the original] collective work and any revisions of it.” 
Preliminary Draft for Revised U.S. Copyright Law and 
Discussions and Comments on the Draft, 88th Cong., 2nd 
Sess., p. 15 (H. Judiciary Comm. Print (1964). 

•••••• the 1965 bill, like the present law, accorded the 
publisher “only the privilege of reproducing and distributing 
the contribution as part of that particular collective work, any 
revision of that collective work and any later collective work 
in the same series.” S. 1006, 89th Cong. 1st Sess., § 201(c) 
(1965), H. R. 4347, 89th Cong. 1st Sess. § 201(c) (1965). 

It is telling that none of these proposals can fairly be read 
to accord a periodical publisher any privilege to reproduce 
and distribute a contributed article as a free standing work 
and that not even the broadest of the four—the 1961 
recommendation proposal•••• be read to provide any 
privilege to include the contributed article in a compilation of 
articles that is entirely different as a collective work from the 
periodical issue in which the article originally appeared. 

It is telling, too, that the Copyright Office did not in the 
end recommend to Congress the 1961 formulation most 
favorable to the publishers, or the 1963 formulations most 

30 

favorable to the authors, or the somewhat ambiguous 1964 
formulation, but rather the more nuanced 1965 formulation. 

It is evident then that the Copyright Office, after 
considering its earlier proposals and the competing 
arguments, concluded that the 1965 bill struck the best 
balance between facilitating the publication of collective 
works and providing authors the opportunity to exploit their 
copyright in their contributed works. And, Congress, in 
acting on the Copyright Office’s proposal, and after 
considering the arguments of the publishers and the authors, 
came to the same conclusion. It follows that the § 201(c) 
privileges are to be read as three carefully considered, 
discrete and delimited privileges and not as some broad or 
general privilege—viz., read as the statutory text is written 
and according to its terms. 

2. House Report 94-1476—the Committee Report that was 
last in time and that accompanied the bill that formed the 
backbone of the Conference Report and the final legislation— 
illuminates the § 201(c)(1) text in a number of ways. In so 
doing, it draws heavily on the Register of Copyright’s earlier 
reports and their explication of the provision. 

••••• House Report begins by stating that § 201(c)(1)’s 
first sentence establishes the new contributed 
works/collective work regime’s “basic principle”—“that 
copyright in the individual contribution and copyright in the 
collective work as a whole are separate and distinct, and that 
the author of the contribution is, as in every other case, the 
first owner of copyright in it.” House Report 94-1467, p. 
122. 

That principle is “basic” in two respects. In large part, the 
prior law had been unsatisfactory in failing to draw a clear 
line between a contributing author’s copyright and the 
collective work owner’s copyright. Section 201(c) draws 
such a line. And, in so doing § 201(c) makes it plain that the 

31 

author has the copyright in the “individual contribution,” that 
the collective work copyright owner has the copyright in that 
work•••• that the latter has no copyright in the contribution 
as such. By allocating these copyrights in this way § 201(c) 
provides the author the exclusive right to reproduce and 
distribute the contributed work as a separate work or in a 
collective work different from the collective work in which 
the contribution originally appeared. 

• The Report makes it plain that § 201(c)(1) “does nothing 
to change the rights of the owner of copyright in a collective 
work under the present law” but is intended “to clarify and 
improve the present confused and frequently unfair legal 
situation with respect to rights in contributions.” House 
Report 94-1476, p.122. As to “rights in contributions,” then, 
the Act, and not the pre-Act understandings, controls. 

• The Report emphasizes that Congress’ primary interest 
in changing the prior law was to “preserv[e] the author’s 
copyright in a contribution even if the contribution does not 
bear a separate notice in the author’s name, and without 
requiring any unqualified transfer of rights to the owner of the 
collective work.” House Report 94-1476, p.122. This echoes 
the opening of the Report explaining that § 201(c)’s “basic 
principle” is to provide the author of a contributed work the 
copyright in that work and the attended rights to reproduce 
and distribute that work as a separate work or in a collective 
work different from the collective work in which the 
contribution originally appeared. 

• The Report concludes by amplifying on the § 201(c) 
collective works copyright owner’s privileges stated therein. 
The Report separates out the first—the privilege to reproduce 
and distribute the contribution as part of that collective 
work—as the “basic” § 201(c) privilege and as one that is 
“fully consistent with present law and practice, and represents 
a fair balancing of equities.” House Report 94-1476, p.122. 

32 

In its final passageæand the one most directly pertinent 
here•••• Report focuses on the two remaining § 201(c) 
privileges. The Report emphasizes that these privileges 
provide for “republishing the contribution under certain 
limited circumstances.” To illustrate what those circum- 
stances are, the Report states two proper exercises of these 
privileges: “a publishing company could reprint a contri- 
bution from one issue in a later issue of its magazine, and 
could reprint an article from a 1980 edition of an 
encyclopedia in a 1990 revision of it.” In contrast, “the 
publisher could not revise the contribution itself or include it 
in a new anthology or an entirely different magazine or other 
collective work.” House Report, 94-1476, pp. 122-23. 

The Report thus provides the strongest confirmation of the 
conclusion that § 201(c)’s statutory language does not accord 
a periodical publisher any privilege to republish a 
contribution to a periodical issue in a compilation of articles 
that is entirely different as a collective work from the original 
periodical••••• in a compilation that constitutes a “new 
anthology or an entirely different magazine or other collective 
work.” 

C. The Petitioners’ Electronic Publishing Activities 

Exceed the Scope of the § 201(c) Privilege 

On analysis, the Petitioners’ position in this case comes 
down to this: (i) the set of articles that a Periodical Publisher 
pulls from a given issue of its periodical and converts into 
electronic form for transmission to the Electronic Publishers 
constitutes a § 201(c) “revision” of that periodical issue, Pet. 
Br. 40; and (ii) the Electronic Publishers’ “reproduct[ions]” 
and “distribut[ions] … to the public by sale” at issue in this 
case are of these sets of electronic periodical issue articles. 
Pet. Br. at 47 (contending that this case turns on “the content 
of those allegedly directly infringing copies, as they were 
created and fixed on an issue-by-issue basis”) (emphasis 
added). 

33 

The Petitioners’ first point is nothing but a distraction. 
Section 201(c) is not solely, or even primarily, concerned 
with the transmission of text materials by one publisher to a 
second publisher antecedent to the latter’s reproduction and 
distribution to the public of those text materials. The 
provision is instead very much concerned with what the 
second publisher then reproduces and distributes to the 
public••• this case, what the Electronic Publishers, as the 
Periodical Publishers’ licensees, reproduce and distribute to 
the public. Thus, the critical question here is whether, as the 
Petitioners imply, the Electronic Publishers confine 
themselves to reproducing and distributing to the public 
author copyrighted articles from a particular periodical issue 
as part of the set of articles from that issue that Petitioners 
identify as the “revision” of the issue. 

The answer to that question is that the Electronic 
Publishers’ reproductions and distributions are not so 
confined. The transmissions of sets of articles from a 
particular periodical issue on which Petitioners focus•••• 
transmissions from the Periodical Publishers to the Electronic 
Publishers•••• but a transitory, intermediate production step 
in the process of reproducing the Respondent authors’ 
copyrighted articles on an individual article basis and of 
distributing copies of those articles to the public on an 
individual article basis. The pertinent LEXIS/NEXIS 
“distribut[ions] of copies . . . to the public by sale” are: 

(i) the NEXIS-provided computer display, printout, or 
download of a copy of a particular author-copyrighted article 
to a NEXIS subscriber; 

(ii) the NEXIS computer display, printout, or download to 
a subscriber of a compilation of articles that includes the 
copyrighted article together with other articles by the same 
author, or on the same subject, or with the same keyword, or 
the like; and 

34 

(iii) NEXIS’ “promot[ion] to the public”æNEXIS’ term 
for “publishing”æa new version, or “generation,” of the 
NEXIS compilation of articles in lieu of the prior generations 
of the compilation. See supra at 3-4 (explaining in detail 
what LEXIS/NEXIS does when it “promotes” an updated 
generation of NEXIS to the public). 

As we proceed to show, not only are these “reproduc[tions] 
and distribut[ions]” of something other than the sets of 
electronic periodical issue articles formed by the Periodical 
Publishers on an issue-by-issue basis, all three are 
reproductions and distributions that fall well outside the 
§ 201(c) privilege. 

1. Very simply stated, in every respect and for all of its 
purposes, the NEXIS system is a system of individual 
article/files. From the point at which licensed text materials 
are received by NEXIS from its various periodical-publisher 
licensors to the point at which NEXIS provides computer 
displays, print outs, and downloads of licensed materials to its 
subscribers, the unit of text material that is being stored, 
coded, identified, displayed, printed out, downloaded, and 
otherwise processed, reproduced or distributed is the unit 
consisting of the individual article/file. 

When, for example, a newspaper publisher transmits text 
materials from a day’s newspaper to NEXIS, the Electronic 
Publisher assigns each article in the newspaper—not each 
section of the paper and not the entire edition of the paper— 
to a separate article/file and gives that file its own identifier. 
And, when text materials are further electronically coded so 
that they can be linked to other materials in the database, it is 
each individual article/fileæand not any other unit of text 
material••••• is coded. 

The very point of proceeding in this way is to enable 
NEXIS (i) to cull any individual article/file from the mass of 
articles/files in the data bank and to provide a computer 

35 

display, print out, or download of that individual article as an 
individual article and without providing the collective work in 
which the article first appeared; and (ii) to make compilations 
of articles selected, coordinated and arranged according to an 
author criterion, a subject criterion, or others coded into the 
searching/linking software. 

That being so, it is plain that when NEXISæin response to 
a subscriber request for a particular author-copyrighted article 
•provides a computer display, print out, or download of that 
article to the subscriber as a freestanding article, the NEXIS 
reproduction and distribution of that article is not within any 
§ 201(c) privilege. 

2. The Petitioners offer three alternative views of the 
NEXIS reproduction and distribution of author-copyrighted 
contributed articles as freestanding works. Each one distorts 
the realities more than the last. 

a. The Petitioners first argue that each author-contributed 
article NEXIS provides through a computer display, printout, 
or download is taken from a potential “revision” of the 
original periodical issue••••••••••• of the set of article/files 
drawn from that issue and coded by date and 
publication••••••• in the database. Pet. Br. 42-43. NEXIS’ 
reproduction and distribution of an individual article drawn 
from that periodical issue, say the Petitioners, should on that 
account be treated as a reproduction and distribution not of an 
individual article but of the revised original periodical issue 
as a whole. Id. 

The Petitioners’ suggestion is artificial in the extreme. 
Each individual article in the NEXIS system is in a self- 
contained file with its own separate identifier, and that file is 
the only file activated by a subscriber request for the article 
that the file contains. 

Furthermore, the article/files in a computer data system are 
constantly shifting place as the system is used and do not 

36 

remain in any fixed serial order••• Petitioners themselves 
acknowledge. See Pet. Br. 43-44; see also supra at 8 note 2. 

Equally to the point, no NEXIS article/file is included in 
only one “potential” compilation of articles. Given the nature 
of the finding/labeling codes embedded in each article/file, 
each article is simultaneously linked to a potential “author” 
compilation, a potential “subject” compilation, a potential 
“keyword” compilation and so forth. Supra at 4. And, the 
Petitioners offer no justification•••••••• there is none•••• 
treating the potential date-and-publication compilation as the 
compilation of reference. 

Beyond that, when NEXIS reproduces and distributes a 
particular author copyrighted article, the existence in the 
NEXIS database of a number of other article/files that, if 
assembled, might constitute a revision of the periodical issue 
in which the article originally appeared, does nothing to 
change the fact that the contributed article is being 
“reproduc[ed] . . . and distribut[ed] [as] an individual 
contribution apart from the remainder of the publication.” 
And that being so, a NEXIS-provided display, printout, or 
download of the article as an individual article constitutes an 
infringement even on the Petitioners’ own reading of 
§ 201(c). See Pet. Br. 39 (“Section 201(c) prevents a 
publisher from reproducing, revising, or distributing an 
individual contribution apart from the remainder of the 
publication.”) 

Petitioners are thus left to argue that because 
“Respondents’ contributions are tagged with information 
•such as the author’s identity, the name of the periodical, 
and the page number and column in which it appears,” each 
contribution••••• when separately displayed, printed out, or 
downloaded••• still part of the original periodical issue. Pet. 
Br. 42-43. This is sheer casuistry. The “tag[ging]” is 
necessary only because the article is no longer part of the 

37 

original periodical issue. Tagging something does not make 
it part of another thing. And, it would make nonsense of 
§ 201(c) and of the author’s ownership of the copyright in her 
contributed article, to conclude that a periodical publisher 
could publish a contribution as a freestanding work so long as 
the publisher added a note or legend to the reprint identifying 
the publication in which and the page number where the 
contribution first appeared. Section 201(c) is not a trademark 
provision concerned with fair and proper identification of 
source; it is a copyright provision concerned with the 
Copyright Owners right to reproduce and distribute her work. 

Given the foregoingæand given the novelties of electronic 
publishing••• believe it is helpful to consider a print 
analog. Suppose, for example, that the New Yorker magazine 
put out a fiction issue containing four separate novellas by 
freelance authors and thereafter put out a separately bound 
reprint of each work and offered each reprint volume to the 
public for sale as a freestanding work. It is too clear for 
doubt that these reprints are not within any § 201(c) privilege 
and constitute an infringement of each of the four authors’ 
individual copyrights in their respective contributed works. 
And, all of this would be so even if the New Yorker 
continued also to reproduce and distribute the fiction issue in 
which the four novellas appeared together. 

b. Petitioners argue too that if there is any infringing 
reproduction and distribution of the Respondent authors’ 
contributed articles here, it is the individual NEXIS 
subscriber that is the sole infringer. Pet. Br. 45. Petitioners 
thereby attempt to fit this case within Sony Corporation of 
America v. Universal Studios, Inc., 464 U.S. 417 (1984). 
Sony holds that a manufacturer of a machine that can be used 
to copy copyrighted material—there, a videotape recorder 
(VTR)—is not liable for contributory infringement, where the 
machine has substantial non-infringing uses and where the 
defendant itself has neither engaged in the copying of 

38 

copyrighted materials nor authorized such copying. Id. at 
456. 

NEXIS, Petitioners would have it, is like the machine in 
Sony, since one use to which NEXIS can be put is to provide 
the computer display, printout, and download of all NEXIS- 
available articles from a particular periodical issue••• a 
compilation that Petitioners style a “revision” of that 
periodical issue. But NEXIS does not distribute machines 
that can make copies of text materials in the database. NEXIS 
itself reproduces and distributes those text materials. Indeed 
NEXIS has negotiated and paid for licenses from periodical 
publishers to do just that. And, the Sony Court made it clear 
that its ruling there provides no defense to a party that does in 
fact make infringing reproductions and distributions of an 
author’s copyrighted work. Id. at 436. 

The Sony Court did so by reaffirming Kalem Co. v. Harper 
Bros., 222 U.S. 55 (1911), where the defendant motion 
picture producer was itself a distributor of the infringing work 
and had been held liable for infringement on that basis. 
Kalem was distinguishable from Sony, because “the producer 
in Kalem did not merely provide the ‘means’ to accomplish 
an infringing activity; the producer supplied the work itself, 
albeit in a new medium of expression. Sony in the instant 
case does not supply Betamax consumers with [the copyright 
owner] respondents’ works; respondents do.” 464 U.S. at 
436. 

Here NEXIS is most certainly “supply[ing] the [authors’ 
copyrighted] work[s] [them]selves” in providing computer 
displays, printouts, and downloads of the authors’ 
copyrighted articles in full text. 

The Sony Court’s reasoning, moreover, makes it clear that 
the Periodical Publishers’ actions here constitute infringe- 
ment as well. For Sony confirms the proposition—made plain 
in the text of the Copyright Act itself, see 17 U.S.C. § 106— 

39 

that an author’s exclusive rights include not only the 
“exclusive right[]” to reproduce and distribute copies of a 
copyrighted work, but the exclusive right “to authorize 
[others]” to do the same, whether through licensing or 
otherwise. Thus, the Sony Court, citing § 106, confirmed that 
“an infringer is not merely one who uses a work without 
authorization by the copyright owner, but also one who 
authorizes the use of a copyrighted work without actual 
authority from the copyright owner.” 464 U.S. at 435 n.17. 

In this case, each of the Periodical Publishers licensed 
LEXIS/NEXIS to reproduce and distribute to the latter’s 
subscribers “all and any portions” of the “Licensed 
Materials.” Supra at 7-10. Thus, the licenses on their face 
authorize NEXIS, inter alia, to provide computer displays, 
printouts, and downloads to its subscribers of discrete, 
individual articles from the newspapers and periodicals at 
issue. An individual article certainly constitutes “any 
portion” of the Licensed Materials. Petitioners would be 
hard-pressed to contend otherwise, having championed in 
another context the proposition that “‘any’ is a term of 
considerable breadth,” Pet. Br. 15, which “does not permit . . . 
artificially imposed” limits, id. at 21. 

Thus, under Sony, and under the plain language of § 106 of 
the Copyright Act, those acts of authorization—wholly apart 
from the Petitioners’ other acts—are separate and distinct acts 
of infringement. Sony, 464 U.S., at 435 n.17. 

c. Lastly, the Petitioners would have it that NEXIS is an 
electronic “library” that contains, on its computer disk 
“stacks” or “shelves” a complete set of the daily editions of 
the New York Times from the early 1980’s to the present, a 
complete set of the daily editions of Newsday for that period, 
etc. Pet. Br. 2, 19, 43. And, say Petitioners, a print library 
can, without any copyright infringement concerns, offer a 
reader the opportunity to pull down an edition of a newspaper 

40 

and thumb directly to a page that the reader knows contains a 
particular article of interest to her without requiring the reader 
to go through the paper as a collective whole. Pet. Br. 2. It 
follows, we are told, that NEXIS can provide the computer 
display, print out, or download of the same individual article 
to the same person as a subscriber. Pet. Br. 2, 43. This 
analogy fails. 

The essence of the matter is that a print library cannot, 
consistent with the Copyright Act, provide readers with a new 
copy of the text material that the reader requests. What a 
print library can do is allow the interested reader to borrow 
and return a purchased copy of a copyrighted work bought 
from the copyright owner. NEXIS in contrast is reproducing 
and distributing new copies of the author’s copyrighted article 
in providing its subscriber a computer display, printout or 
download of the work. If ten NEXIS subscribers request the 
same article, then NEXIS reproduces and distributes ten 
electronic copies to those subscribers, all of which come from 
the single article/file stored in its database. 

A print library•••• in particular any print library 
reproducing and distributing text materials “for direct or 
indirect commercial advantage”æcan not make multiple 
copies of a copyrighted work in response to reader requests 
without violating § 108 of the Copyright Act. 

See generally 

17 U.S.C. § 108. And the Act’s limitations on copying by 
libraries are particularly restrictive if the library is “engage[d] 
in the systematic reproduction or distribution of single or 
multiple copies” of copyrighted works. Id. 

Petitioners themselves quote with approval from testimony 
before Congress comparing an electronic database to “a 
duplicating rather than a circulating library.” Pet. Br. at 36 

n.24. This accurate characterization, of course, undermines 
the Petitioners’ effort to equate NEXIS with a circulating 
print library. 

41 

Indeed, far from resembling a circulating library, Nexis 
more closely resembles the defendant photocopying service 
found guilty of infringement in Ryan v. Carl Corp., 23 F. 
Supp. 2d 1146 (N.D. Cal. 1998). 

In Ryan, the defendant company maintained a list of the 
titles of millions of individual articles from over 10,000 
periodical publishers. The defendant had licensing arrange- 
ments with many of the periodical publishers but with none of 
the authors. The defendant’s customers ordered articles from 
the list; the defendant sent one of its employees to a print, not 
an electronic, library; and the employee retrieved the 
periodical issue containing the article from the library’s 
shelves, photocopied the article, and sent the photocopy to the 
customer. On those facts, the district court held that••••• as 
regards those acts of copying from periodicals published by 
companies with whom defendant had a licensing 
arrangement•••• defendants had engaged in infringement of 
the rights of the authors. Id. at 1150. 

Petitioners concede that Ryan was correctly decided, as 
they must, having embraced the proposition that § 201(c) 
“prevents a publisher from reproducing, revising, or 
distributing an individual contribution apart from the 
remainder of the publication.” Pet. Br. 39 (emphasis added). 
And Petitioners, thus forced to distinguish the case, can only 
mutter that in this case “the publishers license the entirety of 
their collective works to NEXIS and UMI,” whereas in Ryan 
the licensing arrangements presumably differed. Pet. Br. 33 

n. 22. 

Putting aside the fact that Petitioners mischaracterize the 
licenses here, the decision in Ryan did not turn on the scope 
of the copying-service/periodical-publisher licenses in 
question there, but on the proposition that, whatever rights the 
periodical publishers had as owners of the collective works 
copyrights, those rights did not include “the right to 

42 

reproduce individual contributions”; instead, “the right of 
reproduction [of such contributions] must belong to the 
authors.” 23 F. Supp. 2d at 1150. 

That principle, which Petitioners profess to embrace, 
condemns Nexis’ practice of providing computer displays, 
printouts, and downloads of copies of the Respondents 
authors’ articles as freestanding works. 

3. NEXIS, as we have stated, does more than provide 
computer displays, printouts, and downloads to subscribers of 
individual articles as freestanding works. The NEXIS system 
author, subject, keyword and other electronic codes 
embedded in each article/file enable NEXIS to reproduce and 
distribute compilations of articles linked by these codes and 
drawn from multiple periodical issues. The NEXIS system 
can, for example, provide in response to an author, or 
“byline,” search, a compilation of 98 Stephen Jay Gould 
articles from twenty-seven different periodicals, or a 
compilation of the numerous articles on missile defense 
drawn from myriad periodicals. Supra at 5-6. 

We have already shown that the § 201(c) “any revision of 
that collective work” privilege does not permit a periodical 
publisher to reproduce and distribute a contributed article in a 
compilation of articles that is an entirely different collective 
work from the periodical issue in which the article first 
appeared. Supra at 25-27. As we explained, such a 
compilation is not a revised version of the original periodical 
issue that included the contribution, but is instead a new and 
different collective work altogether. Supra at 27. 

The Petitioners do not offer any argument that these 
NEXIS “author” and “subject matter” compilations that 
include a copyrighted article from a particular periodical issue 
are “a revision of the original periodical issue.” Instead the 
Petitioners claim that NEXIS simply stores many potential 
revised periodical issues and that when NEXIS in response to 

43 

a subscriber request provides an author compilation, that is 
akin to a library allowing a reader to take the print periodicals 
off the shelves, turn each to the author’s article, and collect 
the copies in order on a reading room table. Pet. Br. 2, 43. 

In analytic terms, this is the same response that the 
Petitioners offer with regard to the NEXIS reproduction and 
distribution of individual author-copyrighted articles as 
freestanding works. And the response is no stronger now 
than it was the first time. 

The Petitioners’ response does not, because it can not, 
explain why an Electronic Publishers’ theoretical capacity to 
provide one compilation of articles excuses the actual 
provision of a different compilation of articles. 

And, to the extent that the Petitioners’ point is that under 
Sony, only the subscriber, and not LEXIS/NEXIS, is liable for 
infringement when NEXIS provides the subscriber with a 
requested computer display, printout, or download of a 
compilation of articles drawn from multiple collective works, 
that suggestion is erroneous for the reasons we set out supra 
at 38-39. 

Finally, in comparing the NEXIS database to a library 
shelf, Petitioners again fail to take account of the fact that 
NEXIS does not merely store purchased copies of 
copyrighted materials; NEXIS reproduces and distributes new 
copies of the copyrighted materials. 

Supra at 40. 

4. As noted, LEXIS/NEXIS also reproduces and 
distributes author-copyrighted articles every time NEXIS 
makes an electronic copy of such an article in “promot[ing] 
to the public”æpublishingæa new version, or “generation,” 
of the database in lieu of a previous version of the database. 
The question implicated by this practice is whether the 
NEXIS database itself constitutes a “revision” of the 

44 

periodical issue in which the copyrighted article first was 
published. 

Here, again, the dispositive point is that the NEXIS 
database is a compilation of works drawn from multiple 
collective works and is not a revision of any the particular 
collective works that contain the copyrighted freelance 
articles. Indeed, because as we have emphasized, the 
individual article/file is the basic component of the NEXIS 
database, the database is properly characterized as a 
compilation of the millions of articles that are contained 
within it. The Register of Copyrights has captured the 
essence of the matter: 

[B]oth common sense and the dictionary tell us that a 
database such NEXIS, which contains every article 
published in a multitude of periodicals over a long 
period of time, is not a revision of today’s edition of The 
New York Times or last week’s Sports Illustrated.” A 
revision is “revised version” and to “revise” is “to make 
a new, amended, improved, or up-to-date version of” a 
work. … What makes today’s edition of a newspaper or 
magazine or any other collective work a “work” under 
the copyright law•••• selection, coordination and 
arrangement••• destroyed when its contents are 
disassembled and then merged into a database so 
gigantic that the original collective work is unrecog- 
nizable. As the court of appeals concluded, the resulting 
database is, at best, a “new anthology,” and it was 
Congress’s intent to exclude new anthologies from the 
scope of the § 201(c) privilege. [147 Cong. Rec. at 
E182.]. 

We would add only that what the Periodical Publishers and 
LEXIS/NEXIS have done here is to disassemble the contents 
of each periodical issue into individual article units•••••• 
into the very unit of text in which the author has copyright. 

45 

This point makes it all the more clear that NEXIS is precisely 
the sort of non-privileged “new anthology” of millions of 
individual articles that the Register has described. 

Against this, Petitioners insist that “by no stretch of the 
imagination, let alone the plain language of the Act and its 
legislative history, can NEXIS . . . be deemed a new 
anthology or different collective work,” because NEXIS is 
“simply [a] storage medi[um] on which copies of works 
reside in electronic versions.” Pet. Br. 33-34. In other words, 
Petitioners suggest that NEXIS is not a “work” at all; they 
offer no argument for the view that if NEXIS is a work, it is a 
permissible “revision” of any or all of the individual 
periodical issues that it contains. 

But NEXIS is a work. Indeed, in Copyright Act terms, 
NEXIS is both a “literary work” and a “collective work.” 
Under the Act, “‘[l]iterary works’ are works . . . expressed in 
words, numbers, or other verbal or numerical symbols or 
indicia, regardless of the nature of the material objects, such 
as books, periodicals, manuscripts, phonorecords, film, tapes, 
disks, or cards, in which they are embodied.” 17 U.S.C. § 
101 (emphasis added). 

Since NEXIS, at any given time, is 

embodied in a disk or series of disks under some identifier 
such as “NEXIS Generation 101,” it plainly is a “literary 
work.” Moreover, NEXIS is a “collective work” in that it is 
“a work . . . in which a number of contributions, constituting 
separate and independent works in themselves, are assembled 
into a collective whole.” 

That being so, unless the NEXIS database is a “revision” of 
each periodical issue in which one of Respondents’ 
individually copyrighted works first appeared, it follows that 
when LEXIS/NEXIS reproduces those articles in 
“promot[ing]” a new “generation” of the NEXIS database in 
lieu of a previous version, LEXIS/NEXIS is exceeding the 

46 

second § 201(c) privilege. We have already shown that the 
NEXIS database is not such a “revision.”6 

6 Given Petitioners’ failure to defend the proposition that the database 
is a revision, we could perhaps end our discussion of this point. However, 
the District Court in this case concluded that NEXIS is a “revision” of 
each and every periodical issue from which NEXIS draws its articles. Pet. 
App. 76a. And, in what may be an overabundance of caution, we take the 
opportunity here to demonstrate the error in that court’s approach. 

The District Court reached its conclusion through the following 
syllogism: (1) Under the accepted test for copyright infringement, if 
author A copies from author B, author A is liable for copyright 
infringement if author A’s work is “substantially similar” to author B’s. 
(2) If a second work is “substantially similar” to the first within the 
meaning of that test, it must be the case that the second work is a 
recognizable version of the first work. (3) If a second work is a 
recognizable version of the first work, it must be a “revision” of the first 
work. 

Applying this syllogism, the District Court stated that had 
LEXIS/NEXIS electronically published the articles in a particular day’s 
edition of the New York Times (for instance, the December 13, 1991 
edition in which one of Respondent Tasini’s articles appeared) without 
securing a license from the Times, LEXIS/NEXIS would clearly be guilty 
of infringement of the Times’ collective works copyright. LEXIS/NEXIS 
would be guilty even though much of NEXIS••••••• virtually all of 
NEXIS••• different from the December 13, 1991 Times, because a 
second work can be “substantially similar” to a first under the 
infringement test even if any part of the second work is substantially 
similar to the first work. Pet. App. 70a (citing CCC Information Services 

v. MacLean Hunter Reports, Inc., 44 F.3d 61, 68 n.8 (2d Cir. 1994)). 
And, the court concluded, because there could be no doubt that one part 
of the NEXIS database•••• part constituting the group of articles that 
originated from the December 13 New York Times•••• “substantially 
similar” to the December 13 New York Times, NEXIS was a “revision” 
of that edition of the Times. Pet. App. 70a, 74a, 76a. 

The fatal flaw in the district court’s reasoning lies in the second step of 
its syllogism, where the court assumes that if a second work is 
“substantially similar” to the first for the purposes of determining 
infringement, it must be the case that the second work is necessarily a 

47 

5. Everything that we have said concerning LEXIS/ 
NEXIS’ reproduction and distribution of Respondents’ works 
applies with equal force to Petitioner UMI’s “New York 
Times OnDisc” (NYTO) CD-ROM and to its “General 
Periodicals OnDisc” (GPO) CD-ROM. 

a. As set out above, the New York Times OnDisc is a 
database that is structured identically to the NEXIS database. 
Like NEXIS, each component article in the NYTO is stored 
in its own self-contained file and is separately coded with 
author, subject, and other identifiers that serve to link the 
article to other article/files sharing the same codes. See supra 
at 10-11. The main difference between NYTO and NEXIS is 
that the former is a compilation of articles drawn from 
multiple New York Times newspaper editions, whereas the 
latter is a compilation of articles drawn from the newspaper 
editions and periodical issues of numerous publishers. 

recognizable version of the first work. But, because a second work is 
deemed “substantially similar” to a previous work under the infringement 
test even if only a small part of the second work is similar to a small part 
of the earlier one, the adoption of the infringement test as a test for 
whether a second collective work is a “revision” of the original collective 
work leads to total absurdity••• works being labeled as “revisions” that 
no one would ever call a “revision” in ordinary usage. 

For example, in Harper &. Row Publishers v. The Nation, 471 U.S. 
539, 548 (1985), the Court stated that the use in a nine-page magazine 
article of 300 words of verbatim or nearly verbatim quotations from a 
200,000-word manuscript rendered the magazine article sufficiently 
similar to the manuscript to constitute an infringement under the accepted 
test. But that, of course, did not mean that the magazine article 
constituted a “revision” of the manuscript in any ordinary use of that term; 
it meant only that the quotations from the magazine article were 
substantially similar to the materials being quoted. The reason is 
straightforward: When one is considering whether a particular 
work••••••••••••• a collective work••• a “revision” of another, one 
compares the two works as collective wholes and not as disaggregated 
parts. 

48 

That difference, however, has absolutely no legal rele- 
vance. The Copyright Act defines “collective work” as “a 
work such as a “periodical issue . . . in which a number of 
contributions, constituting separate and independent works in 
themselves are assembled into a collective whole.” 17 U.S.C. 
§ 101 (emphasis added). Thus, it is the particular issue of a 
periodical or the particular edition of a newspaper in which an 
author-copyrighted article first appearsæand not the entire 
series of periodicals or newspapers put out by a 
publisher••••• constitutes “that collective work” within the 
meaning of § 201(c). That being so, the New York Times 
OnDisc, like NEXIS, is a compilation of individual articles 
drawn from multiple collective works. 

For these reasons, it is clear that when NYTO provides a 
computer display, a printout, or a download of an individual 
author-copyrighted article, NYTO is “reproducing and 
distributing” a contributed work as a freestanding work in 
precisely the same manner as NEXIS. Furthermore, when 
NYTO provides a display, printout, or download of an author 
or subject compilation of articles drawn from multiple issues 
of the paper, it is providing the same kind of “compilation 
drawn from multiple collective works” as is NEXIS. And 
lastly, when UMI reproduces and distributes a new copy of a 
set of the NYTO CD-ROMs, it reproduces and distributes a 
compilation of articles drawn from multiple collective works 
that is no different in kind from the compilation LEXIS/ 
NEXIS reproduces and distributes when it electronically 
publishes a new “generation” of the NEXIS database. 

It follows that Petitioners’ attempt to justify the foregoing 
reproduction and distribution practices stands on no firmer 
ground than their attempt to justify the same practices when 
engaged in by NEXIS. 

b. The General Periodicals OnDisc, like NEXIS, is a 
compilation drawn from multiple periodicals. And, like 

49 

NEXIS, GPO’s finding system, as well as its display and 
printout system, make the individual article the basic 
component of the database and link individual articles to 
others within the disc system. See supra at 12. When a user 
requests a computer display or print out of, for example, a 
Mary Kay Blakely article, and that article begins on page 26 
of a magazine and jumps to page 76 , the GPO system will 
print out those two pages and only those two pages. See 
supra at 12. Any fragment of a different article appearing on 
one of those pages will be printed out only as a fragment, 
because the GPO system understands that is the Blakely 
article and only the Blakely article for which a display or 
printout is being sought.7 

GPO, like NEXIS and New York Times OnDisc, thus 
provides displays and printouts of individual articles apart 
from the remainder of the particular periodical issue in which 
the article appeared. In addition, through its indexing and 
abstracting system, GPO also provides displays and printouts 
of compilations of articles organized by subject, topic, and 
the like. 

And, finally, given the fact that its internal finding 

and indexing system is keyed to the individual article, the 
GPO database as a whole is, like NEXIS, a compilation of 
articles drawn from multiple collective works. All of this 
being so, the reproduction and distribution of articles and 
compilations of articles from GPO, as well as the 
reproduction and distribution of GPO itself, are outside the 
§ 201(c) privilege. 

7 Petitioners would have it that GPO is no different from a spool of 
microfilm that contains more than one copy of a periodical issue. Pet. Br. 
But UMI, in keying each individual article in GPO to GPO’s indexing, 
retrieval, display, and printing system, is disaggregating the set of images 
from a given periodical issue contained on the discs so that (as the Mary 
Kay Blakely example in the text illustrates) the images can be retrieved 
only as adjuncts to individual articles. 

50 

* * * * 

All else failing, Petitioners attempt to force a decision in 
their favor through the hyperbole that “[t]he Second Circuit’s 
decision will have devastating real world effects if it is not 
reversed,” in that “Petitioners and those similarly situated will 
have no alternative but to destroy any CD-ROM’s that 
contain freelance articles and remove all freelance 
contributions from electronic libraries.” Pet. Br. 49. 

Petitioners appear to forget that this case is at the liability 
stage and not the remedy stage. And, be that as it may, the 
Register of Copyrights takes a far saner view of the 
consequences of a ruling in accord with the Copyright Act’s 
precepts and in the Respondents’ favor: 

Recognizing that freelance contributions have been 
infringed does not necessarily require that electronic 
databases be dismantled. … The Supreme Court, in 
Campbell v. Acuff-Rose Music, Inc., [510 U.S. 569 
(1994)], and other courts have recognized in the past that 
sometimes a remedy other than injunctive relief is 
preferable in copyright cases to protect the public 
interest. … Ultimately the Tasini case should be about 
how the authors should be compensated for the 
publishers’ unauthorized use of their works, and not 
about whether the publishers must withdraw those works 
from their databases. [147 Cong. Rec. E-182]. 

There are, of course, multiple arts-and-letters clearinghouse 
models, including the Publication Rights Clearinghouse, for a 
joint author-publisher program for assigning proper 
compensation for the freelance authors whose copyrighted 
works are being improperly exploited. 

CONCLUSION 

For the foregoing reasons, the decision below should be 
affirmed. 

Respectfully submitted, 

MICHAEL H. GOTTESMAN 
600 New Jersey Ave., N.W. 
Washington, D.C. 20001 
(202) 662-9482 

LAURENCE GOLD 
LEON DAYAN 
805 Fifteenth Street, N.W. 
Washington, D.C. 20005 

(202) 842-2600 

PATRICIA A. FELCH 

Counsel of Record 
10 South Wacker Drive 
Suite 3000 
Chicago, IL 60601 
(312) 715-1000 

DANIEL W. SHERRICK 
8000 East Jefferson Avenue 
Detroit, MI 48226 

(313) 926-5216