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Because New York Times Co. v. Tasiniwill be the Supreme Court’s first opportunity to address how fundamental copyright concepts apply in the digital era, it has enormous implications — not just for the writers and publishers in the case, but for all creators and users of digital content. Were the Court to adopt an understanding of copyright law based on Emily M. Bass’ April 24 commentary ( “Copyright Protection in a Digital Age”), the ruling would be disastrous for publishers, libraries, scholars, students, and even the six free-lancers who brought the Tasinisuit in 1993. Tasini, which the high court heard on March 28, will answer the question of what happens to this commentary after we deliver it to Legal Times. The Tasini plaintiffs claim that the copyrights in their contributions to newspapers and magazines are infringed when those periodicals are republished electronically — i.e., on CD-ROMs and in the Nexis electronic library. Thus, according to Bass, if we submit this commentary to Legal Timeswithout expressly stating that it may be published not only in print but also electronically, any publication in nonpaper form would infringe our rights. The district court in Tasiniproperly rejected this theory, recognizing that Congress granted publishers broad rights to publish works regardless of the medium in which they appear. The 2nd U.S. Circuit Court of Appeals reversed, however, setting the stage for Supreme Court review. (For the record, we represent publishers, and Emily Bass represents free-lancers in this case.) THE ACT OF NOT INFRINGING Bass’ arguments rely on the notion that the inherent benefits of digitization — enhanced search capabilities and immediate, pinpoint access to portions of a work — so change the underlying nature of the work that the shift in medium actually makes the work a different work altogether. This type of medium-specific reasoning is apparent from her attempt to answer the question repeatedly posed by the Supreme Court during oral argument: What is the first act of alleged infringement about which the free-lancers complain? Bass purports to identify no fewer than four infringing acts, all of which would render literally hundreds of thousands of previously published electronic copies infringing: (1) the publishers’ reproduction of the articles “after the print publication has been put to bed,” (2 & 3) the addition of “article-specific keywords” and “unique retrieval numbers” to each electronic file, and (4) the transmission of the articles to Nexis. Labeling these routine publishing practices as acts of infringement demonstrates a pronounced hostility to, and profound misunderstanding of, electronic media. Here are the four simple reasons why none of these acts could possibly infringe: � Reproduction after the print edition has been put to bed. Section 201(c) of the Copyright Act specifically authorizes publishers to reproduce free-lance articles in “any revision” of their periodicals. Bass argues that digital reproduction of an article to make the article “individually retrievable” is infringing. Since all digital reproduction to produce a revision of a periodical occurs “after the print publication has been put to bed,” and all digital reproduction makes an article “individually retrievable,” the argument that such reproduction infringes is directly contradicted by the language of Section 201(c). � Addition of keywords and retrieval numbers. These are no more than the electronic equivalent of the indices and page numbers that always have been added to facilitate access to articles by researchers. Such electronic indicia of location are functional, noncopyrightable additions. They in no way alter the essence of the copyrighted collective work owned by the publishers; they just make it possible to use that work in digital form. Because they do not alter the collective work, they cannot create an infringing copy. � Transmission to Nexis. Nexis receives a copy of the complete text of, for example, The New York Timesfrom the same computer files that are transmitted from the Times‘ editors to its composing room. The composing room then reproduces the collective work — i.e., the newspaper — on paper. Likewise, Nexis makes the collective work available electronically. Either both transmissions are infringing, or neither is. Of course, none of these copies actually infringes. In all cases, the free-lance contribution is included with the group of articles that make up the periodical, thus falling squarely within the Copyright Act’s definition of a collective work — a work that is “formed by the collection and assembling of preexisting” articles. Unfortunately, Bass has not been alone in imagining infringement when periodical publishers include free-lance articles in the electronic copies of their periodicals. Both the 2nd Circuit in Tasiniand the 11th Circuit in Greenberg v. National Geographic Society(March 22, 2001) have employed equally flawed theories to deem electronic publishing infringing. The 2nd Circuit’s opinion in Tasinirests on the premise that when multiple issues of a periodical are stored on the Nexis servers or a single CD-ROM disc, they lose their status as a collective work. Instead, they dissolve into an undifferentiated mass of individual articles, resulting in an infringing “new anthology.” The 11th Circuit’s case involved 30 CDs that contain all the back issues of National Geographic. The 11th Circuit, while recognizing that the discs contained exact digital replicas of each issue, nonetheless held them to be infringing because each CD was introduced by a montage of magazine covers and included a copyrightable program that allowed users to access the information stored on the discs. The court reasoned that storing additional, separately copyrightable, works on the CD created a new collective work that, to the extent the CD contained free-lance contributions, rendered it infringing. Either of these rationales, if adopted by the Supreme Court, would render infringing the act of storing more than a single collective work on a CD-ROM, computer hard drive, or server. That type of Luddite thinking would rewrite copyright law, which recognizes that a copyrightable work, including collective works, can be stored on any medium “now known or later developed.” The key is whether the storage medium, whatever it is, contains the collection of articles that make up the collective work. If it does, then storing the periodical on that medium cannot infringe an individual free-lancer’s article because that article has been reproduced, in the language of Section 201(c), “as part of” the rest of the periodical. ‘CULTURAL REVOLUTION’ Judging from the oral argument, even veteran Supreme Court watchers cannot tell which way the Court will rule on these important issues. If the Court affirms the 2nd Circuit’s decision, however, one thing is certain: To protect themselves from the litigation threatened by Jonathan Tasini and his fellow free-lancers, publishers will be forced to delete hundreds of thousands of free-lance contributions from electronic libraries and to destroy all CD-ROMs that contain such articles. One cannot begin to count the number of other copyright cases that have similarly resulted in defendants destroying allegedly infringing works to reduce potential liability. In this case, the practical impossibility and prohibitive transaction costs of locating and negotiating with thousands of free-lance authors, their transferees, and/or their heirs or successors would necessitate such a result. In his press appearances immediately before and after oral argument, Tasini repeatedly dismissed these inevitable redactions as litigious hyperbole. But this is not speculation. In response to the 2nd Circuit’s decision, U.S. News & World Reportreportedly is already deleting such free-lance contributions from its new microfilm copies. Given that Tasini’s articles, and those of his fellow respondents, have already been deleted, it is not clear why he maintains his position. As Justice Stephen Breyer noted at the oral argument, the resulting holes in the historical record would be akin to the effects of a “Chinese cultural revolution,” the burden of which would fall on students and scholars who rely on complete historical records. Nor would there be any corresponding benefit to such a result. As Bass candidly admits, there is no evidence that the free-lance articles in this case were accessed or read by the public. Nor could the free-lancers identify, by way of lost license fees or otherwise, any actual economic harm from the reproduction of periodicals in digital form. Moreover, since the suit was filed in 1993, many publishers have contracted for various electronic rights and yet, because of the negligible value of such rights for any individual article, have not paid any more for them. The destruction of information that would follow an adverse outcome in Tasiniwould be particularly ironic in light of the deference the Supreme Court generally gives Congress when technological innovations impact copyright concerns. In Section 201(c), Congress brokered the appropriate compromise between the interests of free-lancers and publishers: Free-lancers are granted all rights to exploit their individual articles, and publishers are given similarly broad rights to publish their collective works in any medium. It is that compromise that the justices should uphold in Tasini. It alone advances the goal at the heart of copyright law: to promote the progress of arts and sciences for the benefit of the public. Bruce P. Keller is a partner and Michael R. Potenza is an associate in the New York office of Debevoise & Plimpton, where they are members of the intellectual property practice group. Together with Professor Laurence H. Tribe and Thomas C. Goldstein, they represent the petitioners inNew York Times Co. v. Tasini.

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