Amicus Curiae Brief — New York Times Co. v. Tasini

No. 00-201 Supreme ap Ics

IN THE AiR 2% op

Supreme Court of valor Hnitep States

THE NEW YORK TIMES ears 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 PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE SECOND CIRCUIT

BRIEF FOR ADVANCE PUBLICATIONS, INC., A.H. BELO

CORPORATION, BUENA VISTA MAGAZINES, INC., THE COPLEY

PRESS, INC., COX NEWSPAPERS, INC., DONREY MEDIA GROUP,

DOW JONES & COMPANY, INC., THE E.W. SCRIPPS COMPANY

GANNETT CO., INC., HACHETTE FILIPACCHI MAGAZINES, INC.,

THE HEARST CORPORATION, JOURNAL COMMUNICATIONS

INC., KNIGHT RIDDER, MACROMEDIA INC., MAGAZINE

PUBLISHERS OF AMERICA, INC., MCCLATCHY NEWSPAPERS,

INC., NEWS AMERICA INC., NEWSPAPER ASSOCIATION OF

AMERICA, PHILADELPHIA NEWSPAPERS, INC., PRIMEDIA INC.,

VILLAGE VOICE MEDIA, INC., THE WASHINGTON POST

COMPANY, AND ZIFF DAVIS MEDIA INC.,

AMICI CURIAE, IN SUPPORT OF THE PETITION

Charles S. Sims

Counsel of Record

PROSKAUER ROSE LLP

1585 Broadway

New York, New York 10036

(212) 969-3950

(Additional Amici Counsel on inside cover)

Of Counsel:

JERRY S. BIRENZ, Esa.

SABIN, BERMANT & GOULD, LLP

350 Madison Avenue

15th Floor

New York, New York 10017-3704

(212) 381-7057

Attorneys For Amici

Advance Publications, Inc.

HAROLD W. FUSON, JR., Esa.

Vice President and

Chief Legal Officer

THE COPLEY PRESS, INC.

7776 Ivanhoe Avenue

La Jolla, California 92037

(858) 729-7633

ANDREW A. MERDEK, ESQ.

Vice President/Legal Affairs

and Corporate Secretary

Cox NEWSPAPERS, INC.

1400 Lake Hearn Drive, NE

Atlanta, Georgia 30319-1464

(404) 843-5564

MARK A. HINUEBER, ESQ.

DONREY MEDIA GROUP

1111 W. Bonanza Road

Post Office Box 70

Las Vegas, Nevada 89125

(702) 477-3830

M. DENISE KUPRIONIS, ESQ.

Corporate Secretary

THE E.W. SCRIPPS COMPANY

312 Walnut Street

Cincinnati, Ohio 45202-4024

(513) 977-3000

BARBARA WARTELLE WALL, ESQ.

Vice President and

Senior Legal Counsel

GANNETT Co., INC.

1100 Wilson Blvd.

Arlington, Virginia 22234

(703) 284-6951

CATHERINE R. FLICKINGER, ESQ.

Senior Vice President

and General Counsel

HACHETTE FILIPACCHI MAGAZINES

1633 Broadway

New York, New York 10019

(212) 767-6918

ROBERT J. HAWLEY, Esq.

Counsel

THE HEARST CORPORATION

959 Eighth Avenue

New York, New York 10019-3795

(212) 649-2075

KAREN STEVENSON, Esq.

Vice President and

General Counsel

KNIGHT RIDDER

50 West San Fernando Street

San Jose, California 95113

(408) 938-7765

KATHERINE HATTON, Esq.

Vice President and General Counsel

PHILADELPHIA NEWSPAPERS, INC.

400 North Broad Street

P.O. Box 8263

Philadelphia, Pennsylvania 19101

(215) 854-4710

BARBARA COHEN, ESQ.

VILLAGE VOICE MEDIA, INC.

36 Cooper Square

New York, New York 10003

(212) 475-3300

MARY ANN WERNER, ESQ.

Vice President and Counsel,

Newspaper Division

THE WASHINGTON Post Co.

1150 15th Street, NW

Washington, DC 20071-0001

(202) 334-6575

CAROLYN SCHURR LEVIN, Esq.

Vice President and General Counsel

ZIFF-DAVIS MEDIA INC.

One Park Avenue

New York, New York 10016

(212) 503-3575

QUESTION PRESENTED

Is the publication of newspapers and magazines in digital

and other non-print formats, in addition to traditional print

formats, privileged under 17 U.S.C. § 201(c), or does it infringe

the copynghts held by contributing freelance authors?

TABLE OF CONTENTS

Page

SPB TR PRIIOTED . . won ccc cicbsccccccavnar 1

INTEREST OF THE Amici Curiae .................. ]

SUMMARY OF ARGUMENT .................0005. 2

I 665 ee FA ede eee ern eee 4

The Court Should Grant the Petition Because the

Second Circuit’s Decision Rejecting the

Common-Sense View that Republishing an

Electronic Version of a Newspaper or Magazine

Is Merely a Revision or Reprinting of a Printed

Version Will Grievously and Gratuitously

Disserve the Public Interest .................

et a nee eee oe ee ae

Table of Authorities

Cases

Page

Berlin v. E.C. Publications, Inc., 329 F.2d 541

vee By Pere Te Te Tee re ee oe 9

Harper & Row Publishers, Inc., v. Nation Enters.,

C7) A DO ERE 6 6 nnd ivGR aba eae 9

Twentieth Century Music Corp. v. Aiken, 422 U.S. 151

(SRISE 6 on. 0% ohd dev ickth eee )

INTEREST OF THE AMICI CURIAE'

This brief amici curiae in support of the petition is

submitted on consent by Advance Publications, Inc., A.H. Belo

Corp., Buena Vista Magazines, Inc., The Copley Press, Inc.,

Cox Newspapers, Inc., Donrey Media Group, Dow Jones &

Company, Inc., The E.W. Scripps Company, Gannett Co., Inc.,

Hachette Filipacchi Magazines, Inc., The Hearst Corporation,

Journal Communications Inc., Knight Ridder, McClatchy

Newspapers, Inc., Macromedia Inc., Magazine Publishers of

Amenica, Inc., News America Inc., Newspaper Association of

America, Philadelphia Newspapers, Inc., PRIMEDIA Inc.,

Village Voice Media, Inc., The Washington Post Company,

and Ziff Davis Media Inc. (the “amici’’). For the reasons

discussed below, amici urge that the Court grant the writ and

hear this case on its merits.

Amici are newspaper and magazine publishers, who

together publish hundreds of newspapers and magazines,

including some of the most influential and useful periodicals in

the nation. Many, if not all, of the amici have published issues

of newspapers or magazines that they have made available on

the NEXIS service or other databases, CD-ROMs, microfilm or

electronic media, to researchers, scholars, and the general

public. These issues may contain contributions from freelance

contributors who have not made “an express transfer of the

copyright or of any rights under it” under 17 U.S.C. § 201(c)

for such electronic (or non-paper) publication. The continued

availability and integrity of their publications through on-line

distribution or through media such as CD-ROM therefore

depends in large measure on the proper construction of 17

U.S.C. § 201(c).

No counsel for a party authored this brief in whole or in

part, and no person or entity other than the amici curiae, their

members, or their counsel, made a monetary contribution to the

preparation or submission of this brief. The individual amici

are identified in the addendum attached hereto.

Ly

2

Amici have a direct and compelling interest in the nght

afforded them under § 201(c) to publish their publications in

digital formats available online and through the Internet, and in

such other media as microfilm and CD-ROM, for use by

researchers, scholars and the public at large.

SUMMARY OF ARGUMENT

Amici submit this brief to focus the Court's attention on

the enormous extent to which the Second Circuit's decision will

restrict public access to the national historical record compiled -

by the nation's newspapers and magazines. With a great sense

of urgency, amici show here that this Court’s review is

required, because, unless reversed, the Second Circuit’s

decision will harm the public interest underlying copynght law

gratuitously — without any discernible benefit to the public

interest underlying copyright law, or even to freelance writers

in general.

Over the past two and a half decades — with the

publication of back issues first on microfilm and microfiche,

and then in digital form with the advent of services like NEXIS

and media like CD-ROMs — back issues of newspapers and

magazines have become easier to access, easier to use, and

freed from physical deterioration. In reliance on these new

archival media, public and university libraries have substan-

tially reduced their holdings in physical copies of newspapers

and periodicals.

The Second Circuit’s decision threatens to degrade this

valuable public resource immediately and severely. The

boundless breadth of the decision appears, astonishingly, to

mean that storage of any given issue from any given periodical

with issues of other periodicals, or even with other issues of

that same periodical — in a database like NEXIS, or on a

CD-ROM — precludes a publisher from relying on 17 U.S.C.

§ 201(c) with respect to every individual article in which the

publisher does not own the copyright. The decision even

threatens the microfilm and microfiche archives on which the

3

public had come to depend (and about which freelancers had

not complained) before the advent of electronic media.

As a practical matter, the Second Circuit's decision will,

at a minimum, lead most publishers to delete freelance

contributions from the electronic versions of their old

newspapers and magazines on a wholesale basis due to the

difficulty and expense of locating freelance contributors and

obtaining their authorization for republication in those forms.

The modest phrase "freelance contributions,” moreover, covers

a large territory: for newspapers, for example, it extends past

such traditional "freelance" works as travel pieces and book

reviews to news stories sent in by stringers, letters to the editor,

Op-ed pieces, and other articles sent in "over the transom" by

political officials and public spirited citizens, among others.

Whether the electronic publication occurred on NEXIS,

on some other service, or in some other medium (such as

optical disk or microfilm), the Second Circuit’s judgment has

the same consequence: it will be virtually impossible as a

practical matter, and grossly inefficient, for publishers to find

each and every freelance writer whose work is included in an

archived edition (usually without the benefit of any delineation

of who was an “employee” and whose work would therefore be

work-for-hire) and to negotiate over whether and at what terms

to license the retention of that contribution as an integral part

of the collective work that has been archivally republished in

its original or revised form.

Most publishers’ continued ability to make their collective

works accessible electronically with any kind of completeness

and integrity depends, therefore, on this case and the Court’s

disposition of the petition for certiorari. If the Second Circuit's

decision stands, existing comprehensive archives will not.

Unless this Court intervenes, historians, researchers,

scholars, journalists, and society at large will no longer have

meaningful access to the rough draft of the nation’s history

which back issues of the nation's newspapers and magazines

represent. A generation of journalists, students and researchers

4

will have to re-learn the old method of traveling to a

brick-and-mortar library or a newspaper morgue, if they are

lucky enough to live near one that still exists and retains paper

archives of the magazines and newspapers they want to review.

The Second Circuit’s decision does a tremendous disservice to

publishers, writers, and the public without any compensating

benefit. A writ of certiorari should issue, and the decision

below should be reversed.

ARGUMENT

THE COURT SHOULD GRANT THE PETITION BECAUSE THE

SECOND CIRCUIT’S DECISION REJECTING THE COMMON-

SENSE VIEW THAT REPUBLISHING AN ELECTRONIC VERSION

OF A NEWSPAPER OR MAGAZINE IS MERELY A REVISION OR

REPRINTING OF A PRINTED VERSION WILL GRIEVOUSLY AND

GRATUITOUSLY DISSERVE THE PUBLIC INTEREST.

1. Newspapers and magazines are written for today, but

valuable for tomorrow. The economic cost of producing The

Washington Post is borne by its subscribers and advertisers on

any given day; but it has a continuing importance to the

historians and researchers and students who examine it ten,

thirty, or seventy years from its publication date. That is

generally true of the works of amici and other periodical

publishers; they write for today, but their daily, weekly or

monthly editions are used in different ways by the public for

years after first publication. The maintenance, completeness,

integrity, and accessibility of the archive of the nation’s

publications is a valuable public asset.

For many years, access to the archived publications of

the American press, broadly defined, depended on the work of

libraries, the willingness of publications to maintain “morgues”

and the ability of users to physically travel to and use those

libraries and morgues. With the advent of new technologies —

on-line access, whether through the NEXIS service, or the

Internet, and microfilm, microfiche, and CD-ROMs — the

physical library has been replaced by the electronic archive,

and old issues are as a result far easier to access and to use.

The historian, student, or journalist who wants to see The New

5

York Times of December 7, 1941, or the researcher wanting to

use Time Magazine to see how the anti-war movement in the

1960s gained momentum, or the social scientist wanting to

review newspapers in Iowa to see how communities in the

upper Midwest reacted to the outflow of the young to the coasts

in the ‘80s and ‘90s, need no longer travel to New York or Des

Moines. They can access the NEXIS service, or obtain a set of

CD-ROMs, and work quickly, conveniently, and efficiently.

The search engines that allow users to locate individual articles

within these electronic copies are simply automated and more

efficient versions of the Readers’ Guide to Periodicals.

2. The Second Circuit’s acceptance of respondents’

overly restrictive reading of section 201(c) of the Copyright

Act of 1976 undermines this important function and consigns

the public to paper copies of publications as the only definitive

archive. That result — in an age when collection of paper

archives is increasingly uncommon, when electronic storage

and archiving has become standard, and in the face of the

Congressional decision in 1976 to make the copyright law

media-neutral — is to the practical advantage of no one, and

would greatly harm the public interest. Copyright law has

always protected publishers who traditionally preserved paper-

printed versions of their newspapers and magazines from

claims of copyright infringement by freelance writers. The

Second Circuit, however, would deprive most publishers of that

same protection to the extent that they choose to rely on

electronic copies.

According to the Second Circuit, publishers of news-

papers and magazines risk infringement liability if they publish

or republish their works (containing freelance contributions)

through NEXIS or comparable means, unless they first

withdraw freelance articles before delivering their copy to

NEXIS or comparable services or expressly acquired republica-

tion rights — even though amici and, the record shows,

defendants, had for many years published in those additional

media without complaint. Under the decision below, for

example, electronic publication of law reviews, which typically

sag ele han

6

include student notes (for which written licenses expressly

covering electronic nghts were unlikely to have been obtained),

is not privileged under § 201(c), and publishers who want to

avoid liability and the NEXIS service must either purge from

the published editions on NEXIS all contributions of non-

employees (i.e., usually the complete text of law reviews), or

find and obtain consents from all past authors of student notes

or of any other articles and comments for which they did not

obtain appropriate express transfers. And just as pieces written

by authors who cannot be located will likely be withdrawn

from electronic archives, so too CD-ROMs containing back

issues will likely be destroyed.

Publishing practices generally make it impractical, if not

impossible, to go back and obtain authorization from freelance

writers of their individually copyrighted contributions to

newspapers and magazines now stored in electronic archives.

Compensation for such pieces was paid when the pieces were

published, and most newspapers and magazines had no need to

retain records of thé whereabouts of their freelance

contributors. Even if records were available (which they

generally are not), the chance that wmiters of prior decades

remain at the same address is small. The impracticality of

locating all freelance contributors potentially affected by the

Second Circuit’s opinion, much less negotiating an appropriate

license, is further complicated by the possibility that fractional

interests in the copyrights at issue have vested in the authors’

heirs and assigns.

Nor is there any practicable way to negotiate the

“appropriate” share of the publishers’ revenues for the Jane

Doe who wrote a piece for the travel section of The Los

Angeles Times or the Bergen Record in 1981. Her article is

now available on NEXIS, but because NEXIS does not collect

or maintain data on whether particular articles have been

downloaded or printed, no one knows if it has ever been

accessed, and no one knows, or can know, what percentage of

downloads or printouts by users have been for freelance work

(as distinguished from staff writer work). If Jane Doe could be

7

found, and if she insisted on payment, it would be impossible

reasonably to assess the value to her of the right to retain her

work in the copy of that issue in the archive.

Consideration of the most widely used archival service,

NEXIS, which does not compensate publishers for use of their

archived works on a “per-hit” or “per-download” basis,

illuminates the basis for concern that the likely result of the

Second Circuit’s judgment will likely be a decision by

publishers to purge all works not written by readily identifiable

staff writers, mot any increased compensation to freelance

writers for previously written works — and an over-broad

purging at that, with doubts resolved against retaining articles

of uncertain parentage (was Doe an employee or freelancer in

1981?). Because NEXIS pays publishers an annual sum for

electronic republication, there is no economic benefit for

publishers (or NEXIS) to retain freelance contributions in an

electronic archive, but enormous risk of damage liability under

17 U.S.C. § 504 for not withdrawing content that might

conceivably be owned by freelance contributors. The risk is

particularly great because the Second Circuit predicated direct

infringement liability based merely on the delivery of a

newspaper or magazine to NEXIS (or the republication of a

back issue on an optical disk or other storage medium),

regardless of whether the freelance writer’s work was subse-

quently requested, accessed, or read by anyone at all. Under

the decision below, a publication infringes freelance

contributions merely by duplicatively publishing a given issue

on the Internet (or in some other non-print format) joined with

copies of other issues or publications, even if no person has

ever downloaded or printed the work of those contributors.

Given these circumstances, the impact of the Second

Circuit’s decision is lose-lose-lose:

¢ Publishers lose by having to allocate scarce

resources to identifying and stripping freelance

materials from existing databases, and lose through

the diminution of the public benefit they have been

making generally available.

8

e Freelancers lose, since those who would have

chosen to have their works remain online without

further compensation will nonetheless have their

works eliminated from electronic databases, depriv-

ing them of intangible benefits of continued access

and the "free publicity" it offers. That most free-

lancers might prefer continued inclusion in electronic

databases, or on CD-ROM, etc., is of no moment:

their works will still be purged, because transaction

costs will prohibit most if not all publishers from

pursuing the impractical task of finding and striking

bargains with freelancers over contributions dating

back decades, for which there is no discernible

economic value.

¢ Most importantly, the public will lose its convenient

access to and attendant ability to search through

comprehensive and genuine archived newspapers

and magazines.

Moreover, the decision below would likely make matters

worse than they were before the advent of electronic media.

During the past few decades, as a result of the availability of

services like NEXIS, and new storage media like CD-ROMs,

many libraries have cleared their shelves of their paper-printed

archives of periodicals and reduced their ongoing archival

efforts. Storage costs and the fragility of newsprint have

spurred increasing reliance on electronic archives, whose

accessibility and permanence have been enormously beneficial.

The Second Circuit opinion therefore threatens not only the

integrity of the historical record, but as a matter of practical

fact, the accessibility to the historical record too.

Nor is it any answer to say that the decision below only

affects New York, and that the Court should wait to see if

conflict develops before granting review. Because New York

is the center of the magazine publishing and advertising

industries, and most publishers are arguably subject to suit in

New York, the Second Circuit’s judgment effectively

establishes a national rule for newspaper and magazine publish-

9

ers (and their existing electronic publications) throughout the

nation, which do not have the luxury of waiting to see whether

other circuits, including those where their principal offices may

be located, reach different conclusions.

The increasing accessibility of back issues in new media

has undeniably advanced copyright’s goal of increasing the

store and availability of writing. Twentieth Century Music

Corp. v. Aiken, 422 U.S. 151, 156 (1975) (aim of copyright law

is “promoting broad public availability of literature, music, and

the other arts”). Historians, researchers of various types,

students, and curious citizens are able as never before to access

back issues, not just of their own home town papers, but of a

wide range of newspapers and magazines throughout the

nation. The Second Circuit’s decision would destroy that

achievement, and turn a comprehensive, accurate, national

archive into a collection of local ones, riddled with holes.

Publishers who strive for completeness and a faithful electronic

record could be exposed to any holdout’s whims, giving

individual freelancers bargaining power out of all proportion to

any real value in any individual work that may have no real

public demand at all. The resulting “hole in history” would

have a devastating impact on research and study.

If, as the Second Circuit has held, delivery of copies of

newspapers and magazines containing freelance contributions

to NEXIS (or to other services or archival media) infringes the

rights of freelance contributors, then existing archives will

likely be perforated, because the contributors cannot as a

practical or economic matter be located, and because the risk

from not deleting conceivably “infringing” articles far exceeds

any economic benefits to publishers of retention. The value of

existing complete electronic archives will be sacrificed to the

Second Circuit’s misreading of § 201(c).

Publishers should not be forced to degrade their public

archives without this Court’s careful review, which amici

believe would lead to a far different result than that woodenly

reached below. As this Court has repeatedly emphasized, the

touchstone of copyright law is copyright law’s overarching

10

purpose “to increase and not to impede the harvest of know-

ledge.” Harper & Row Publishers, Inc., v. Nation Enters., 471

U.S. 539, 545 (1985); see also Berlin v. E.C. Publications, Inc.,

329 F.2d 541, 543 (2d Cir. 1964) ("particular claims of

infringement must occasionally subordinate the copyright hold-

er's interest in a maximum financial return to the greater public

interest in the development of art, science and industry”).

Amici respectfully submit that the Second Circuit’s

decision retroactively allocating to freelancers nghts for works

previously created cannot be squared with copynght’s purpose

of “increas[ing] . . . the harvest of knowledge.” The potential

license fees were not necessary to induce creation of those

works, and are so small, for any given work, that they cannot

plausibly be said to have induced that or any further creation.

But the liability ruling below will surely shrink the harvest of

existing knowledge by making the complete historical archive

inaccessible in any medium but print, if it exists at all.

CONCLUSION

Because the Second Circuit’s decision threatens vital

public interest in access to the complete national historical

record as reported by the nation’s newspapers and magazines

and made available through such services as NEXIS or such

electronic media as CD-ROMs and microfilm, the petition for

a writ of certioran should be granted.

Respectfully submitted.

Charles S. Sims

Proskauer Rose LLP

1585 Broadway

New York, NY 10036

(212) 969-3950

Counsel of Record