Magazine article Information Today

Retrospective Publishing Contracts: Publishers and Authors Should Work Together to Comply with Tasini. (Legal Issues)

Magazine article Information Today

Retrospective Publishing Contracts: Publishers and Authors Should Work Together to Comply with Tasini. (Legal Issues)

Article excerpt

The letter should not have come as a surprise. After all, the Supreme Court decision last June in favor of freelance writers (New York Times Co., Inc., et al. v. Tasini, et al.) sent shock waves through publishers. They suddenly understood that they were legally liable for licensing articles for which they did not own the rights to third-party publishers and aggregators.

In writing the majority opinion, Justice Ruth Bader Ginsburg summarized the adjudication: "Because the databases reproduce and distribute articles standing alone and not in context ... [b]oth the print publishers and the electronic publishers, we rule, have infringed the copyrights of the freelance authors." (1)

Since the Supreme Court did not offer a remedy or guidelines for dealing with the past practice--which was widespread among publishers--and since Jonathan Tasini, president of the National Writers Union (NWU) and the named litigant in the case, showed no signs of mollification, the door was wide open for print and electronic publishers to fear the worst.

Within 9 days of the verdict, The New York Times pulled older book reviews from its Web site, admitting that for a period, "The Times typically did not have written agreements with freelance book reviewers to permit publishing reviews in electronic form." (2) The newspaper's publisher formally announced that "it would delete 115,000 freelance works, dated from 1980--95, from its own and other databases." (3)

It was only a matter of time before other publishers who also did not have signed contracts that authorized electronic distribution--either by themselves or by aggregators with whom they had deals--would also take action. But what action?

Last fall's library and information conferences all provided forums for mulling over the decision and its implications. In many cases, notably the Charleston Conference and Internet Librarian, the simultaneous presence of authors, publishers, aggregators, and librarians produced lively and informative discussions. The biggest fear, as SCOUG (Southern California Online Users Group) tided its session at the Internet Librarian conference, is whether the Tasini decision marks "The End of Full Text as We Know It." Would freelance-written, unauthorized articles be removed from full-text databases, leaving a Swiss-cheese archive with holes in the historical record? By November, Rick Anderson wrote in a review article that there were "scattered reports of content suddenly disappearing from online products, but nothing like the catastrophic outbreak of database leprosy that was predicted in some quarters." (4)

For authors, is risking the deletion of your works from the online record worth the possibility of back payments? We can't help but speculate whether civil actions filed against publishers for damages would provide significant revenues, to freelancers. We also wonder how freelance incomes are faring post-Tasini. We would like to see an updated version of the 1995 National Writers Union/Wellesley College "American Writers Survey" (http://members.aol.com/nancyds/wlot1.html), since, for example, the NWU last fall accused The New York Times of "blacklisting" some freelance writers. (5)

The Letter

Publishers--faulted in the decision for selling individual works to aggregators without authors' permissions and who may have unwittingly told aggregators that they possessed the rights to everything that was delivered--got very busy trying to secure those rights retrospectively. Authors are now receiving letters that essentially request permission to do what has already been done with their past work. One of those letters was the inspiration for this column--it came from Information Today, Inc. (ITI), Information Today's publisher.

The letter spoke thoughtfully to authors as colleagues and tried to explain how the practice started in the early days, when microfilming was the most prevalent form of preserving and archiving newspapers, magazines, and journals. It indicated that although publishers received some revenue from the microfilm sales of their complete works by the third-party microfilm vendor (University Microfilms/Bell & Howell), it was generally. a very small amount that was absorbed into the general budget--not something allocated or dispersed to individual issues or authors. The letter acknowledged that although ITI "thought [it was] within [its] rights to grant licenses to companies offering access to [its] archives," the courts have said that it was "wrong not to have gotten permission from authors for non-print use of their contributions" and that like it or not, this fact is "now part of the landscape of our industry."

ITI said it was faced with two scenarios: 1) "Obtain written agreements from the authors of this archival material" or 2) "Tell the aggregators to remove all articles written by outside authors who do not sign these agreements." The company provided a contract that requested rights for articles published in any ITI periodical dated prior to January 1, 2002.

On the whole, we each thought it a good and responsible effort. But in the course of discussing the contract's provisions, we still found unanswered questions and unresolved issues. This column is an attempt to share insights and information we obtained as we thought through the practical reality of responding to our publisher's letter and contract.

Both of us have been librarians and are independent information professionals as well as freelance authors. We think our experiences put us in a unique position to understand many sides of the situation. Bjorner has worked as an editor for CHOICE and ONLINE magazines. She has written much in the past (for four separate ITI publications) but has done little recently. Ardito is Information Today's current Legal Issues co-columnist, and had recently negotiated an updated contract, including some electronic rights, for current and future submissions. We'd both written for ONLINE magazine, which was then published by Online, Inc. but has since been acquired by ITI. Prior agreements had been negotiated for some, but not all, of the work. We were unclear about interpreting some of the provisions to these situations. The more we discussed the issues, the murkier our view became.

What Others Are Doing

We decided to find out if and how other library/information publishers and aggregators are approaching freelance authors to retroactively secure permissions for these electronic works. We contacted six library and information publishing companies and examined the Web sites of major aggregators.

Few of our interviewees would speak on the record. One editor surprisingly admitted to "not paying any attention" to the Tasini decision, but acknowledged that the publisher "need[ed] to attend to this." Another organization indicated that it was still meeting with lawyers to determine possible liability and a course of action, and that current permissions contracts were being re-evaluated. A different company was already sending out letters requesting retrospective rights. While it acknowledged a positive response from most recipients, it lamented the difficulty of tracking down authors whose articles were published long ago. All decried the administrative costs to publishers in trying to correct the past mistake, noting that even if retrospective payments were made (and we heard of none offered), the amount per article received would be "a pittance for the author but a mountain for the publisher."

Major aggregators Dialog, Factiva, and LexisNexis are encouraging freelancers to contact them regarding the electronic distribution of articles that may not be authorized (see http://www.dialog.com/freelance, http://www.factiva.com/press/copyright.asp, and http://www.lexis-nexis.com/terms/authors). Factiva provides a site through which searchers can find the latest coverage additions and deletions to the company's service (http://www.factiva.com/sources/sourcedeletions.asp) and is up front about whether the removal of a publication is a direct result of the Tasini decision.

'Archival' Rights?

Publishers slipped into unauthorized licensing of material as a mode of providing permanent archives, which were first in microfilm but later became digital. Today's electronic "archives" are far more functional than the microfilm archives of yesterday. Both formats require special machinery to access, but the systems needed to access electronic archives are more plentiful than microfilm reader/printers, are less cumbersome to operate, are found in homes and offices rather than only in libraries, and produce an easier-to-read image. Electronic archives are accessible for more purposes, by more people, more often, and from more locations.

Online archives are browsable and are available through random access. Microfilm is rarely consulted unless an exact citation is known. Access to a particular point on film or fiche is forward, backward, or at most, diagonal. Microfilm archives retain the context of a particular issue; electronic archives do not. Accessing a particular article by microfilm requires the user to retrieve from a "whole." In the current online world, it's increasingly difficult for online users to know what whole (or hole) they are retrieving from.

Contrary to the majority opinion, we and many information industry representatives believe that the databases cited in the Tasini case do function increasingly as archives. But the court is correct in saying that they (also) function differently than archives--i.e., their contents can be retrieved and displayed outside of their original context. In panic and confusion over the decision, the publishing community is now talking about "electronic rights." In fact, many proposed contracts (from publishers that date after Tasini was first filed in 1993), have asked not only for electronic rights, but for "all publication rights in all conceivable formats ... in perpetuity." (6) This is in marked contrast to how rights have historically been recognized in permissions contracts. Most rights have been sold with some limits: first, second, or one-time rights; North American or world rights; or derivative rights, such as a translation, film, or abridgment based on a pre-existing work and consisting of editorial revisi ons or modifications.

Answering the Letter

We are deeply worried about the coverage gaps in electronic archives. We usually write about topics of current interest (i.e., most of our past editorials and columns would now be considered out-of-date and of interest mainly to historians), and we agree that our writings should remain in databases without any additional compensation. However, if our publishers decide now or in the future to create derivative works, such as a compilation (in print or electronic format) that includes some of those early writings, then shouldn't we receive an additional fee or royalties on sales? At the least, shouldn't we have an editorial say-so in whether or not our writings become part of a compilation? What if we don't like the proposed derivative work or feel that our reputations will be harmed by the republication of a dated work? (See the January Legal Issues column at http://www.infotoday.com/it/jan02/ardito.htm.) Fortunately, most publishers say they are willing to make changes to their retrospective contracts at the request of authors.

We are not advocating which specific rights publishers should seek to obtain, and authors to retain, in their negotiations. We are advocating that authors and publishers enter into negotiation now concerning the mistaken or illegitimate material that is (or perhaps was) housed in databases. We hope your discussions will not be rancorous, but will be mutual efforts to find solutions that will meet legal requirements, preserve the historical record of the original publication, acknowledge the role of digital archives, and satisfy the financial needs of both author and publisher.

References

(1.) New York Times Co., Inc., et al. v. Tasini, et al. (http://www.supremecourtus.gov/opinions/00slipopinion.html).

(2.) "NYTimes & Tasini: And So It Begins," (quoted in an e-mail from James Mouw to liblicensel@lists.yale.edu, June 30, 2001; available at http://www.library.yale.edu/~llicense/ListArchives/0107/msg00001.html ).

(3.) Gasaway, Laura N., "Tasini: Did Authors Win?" Against the Grain, February 2002, p. 20.

(4.) Anderson, Rick, "The Politics of Librarianship and the Tasini Case," Against the Grain, February 2002, p. 24.

(5.) Barringer, Felicity, "Some Writers Accuse Times of Hiring Ban," The New York Times, September 25, 2001, Section C, Column 6, p. 8 (see also "Writer Alerts" on the NWU Site at http://www.nwu.org).

(6.) Anderson, Rick, "The Politics of Librarianship and the Tasini Case," Against the Grain, February 2002, p. 24.

Further Reading

Allen, Moira, "The Tasini Decision: A Victory for Writers?" (http://www.writing-world.com/rights/tasini.html).

"ATG Special Report--The Tasini Case," Against the Grain, February 2002, pp. 1, 18-30.

Fausett, Bret A., "Bringing Old Content to a New Medium," October 2001 (http://www.webtechniques.com/archives/2001/10/legal).

Kenney, Cary, "Newspaper Publishers in the Post-Tasini Era," Searcher, March 2002, pp. 50-58.

"Tasini v. The New York Times: A Note on the Consequences," The Complete Review, August 2001 http://www.complete-review.com/quarterly/vol2/issue3/tasini.htm)

Weiner, Richard, "Decoding Insider Jargon: Rights: Moral, Legal, and Pecuniary," The Editorial Eye, February 2001, p. 10.

White, Claire E., "A Novice Writer's Guide to Rights," December 1997 (http://www.writerswrite.com/journal/dec97/cew3.htm).

RELATED ARTICLE: Recommendations for Authors

* Have a written contract for every piece you write from now on, whether you are paid for it or not.

* For current contracts, consider separate provisions for first-time rights, "archival rights," and third-party rights. Do not accept "electronic rights" as a catch-all category.

* Search the open Internet and proprietary products for your own work. You will be surprised by what you find. (For example, take a look at FindArticles.com.)

* Respond to a contract request from a publisher of past works, even if it's a "forgiveness" request allowing continuation of what already exists.

* Recognize that it may be harder for publishers to locate you than it is for you find them. If you have not heard from publishers of your past work, contact the publisher yourself and suggest terms.

* Publications change ownership. Be aware of contracts that you may have with the original publisher of your work and how they may be affected by an acquisition.

Recommendations for Publishers

* Do contact previous authors. If not individually, use prominent notices in current issues of the journal, on your Web site, or in electronic discussion lists.

* Consider author requests that differ from your standard contract.

* Honor rights contracts between authors and previous publishers when you purchase a publication.

* Do not allow a third party to which you have licensed rights to license the material further without your knowledge and permission.

Stephanie C. Ardito is the principal of Ardito Information & Research, Inc., a full-service information firm based in Wilmington, Delaware. Her e-mail address is sardito@ardito.com. Susanne Bjorner is an independent consultant who provides editorial and publishing services from Franconia, New Hampshire, and Copenhagen, Denmark. She has recently moved a printed archive of CHOICE reviews from 1988 to the present into ChoiceReviews.online. Her e-mail address is bjorner@earthlink.net.

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