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Court ruling on stringers could have major impact By KIMBERLY K. GREENE Are there any KPA member newspapers out there who haven't used freelance writers or photographers from time to time? If so, don't bother reading any further. This information's not for you. If you do use stringers - or have in the past - read on. The United States Supreme Court has just issued a decision which may have a significant impact on your newspaper. Bottom line - the Supreme Court has held in New York Times Co., Inc., et al. v. Tasini, et al. (decided on June 25) that, unless there's a specific written contract to the contrary, a newspaper may not republish a freelancer's articles online without further compensation to the freelancer. In Tasini, six freelance writers brought a copyright infringement lawsuit against several publishers and electronic database publishers. The freelancers had sold articles for publication to the New York Times, Sports Illustrated and Newsday (the “publishers”). Each edition of the newspaper or magazine is considered a collective work, for copyright purposes (“collective works”). The publishers then authorized republication of their editions or collective works, including the freelancers’ articles, by NEXIS, an electronic database operated by defendant LEXIS/NEXIS (formerly Mead Data Central Corporation), and other electronic databases (the “databases”). The freelancers claimed this was an unauthorized use of their articles. The print publishers, on the other hand, argued that they owned the copyright in their respective collective works, and that republication on the electronic databases was nothing but a revision of the collective work, permitted by the Copyright Act. The Supreme Court agreed with the freelancers. The database republication was not a revision of the collective work. One of the primary reasons given by the Supreme Court for its ruling was that the freelancers’ articles are independently searchable on the electronic database. They do not appear to users within the context of the original periodical edition. That is, when a user conducts a search of the database's thousands or millions of files containing individual articles from the thousands of collective works contained in the database (that is, not just your newspaper's collective work), the searched-for article will appear as a separate item within the search result. The article will appear to the user without any of the graphics or formatting that appeared in the original print publication. Nor will the user see other articles which appeared on the same page as the searched-for article or contiguous pages. The Court, therefore, held that the publishers and databases had infringed the copyrights of the freelance authors by including their articles in the electronic database without their permission. The Supreme Court opinion focused on republication of the articles in an electronic database operated by an independent organization, such as LEXIS/NEXIS. Therefore, this decision is pertinent to any KPA member newspaper which has agreements with LEXIS/NEXIS or another company operating a computerized database. But even those of you who do not have arrangements with any electronic database company need to take note. Although the Court was not explicit, it appears that the same decision applies to any electronic version of your newspaper - including your own website - if a user is able to search for and retrieve an individual article. This case did not present the scenario of a newspaper's own website containing today's paper and archived editions, but the Supreme Court said: "We would reach the same conclusion if the Times sent intact newspapers to the Electronic Publishers." In other words, it is the fact that a user retrieving an article would get the article completely out of its original context that is key to the Court's decision. That means, if your website has a search function that enables readers to locate a particular article without having to scroll through the entire newspaper online - or if the newspaper's electronic edition has an archive database - this ruling applies to you. So what are your options? Use freelancers? You could, of course, decline to use freelance writers or photographers in the future. That would be one way of solving your problem prospectively, but you still have to deal with the freelance articles already on your website (more on that in a minute). Have a website? In the alternative, you could decline to have a website. This option is not very attractive to many newspapers who see electronic publishing as a necessity for their future survival. Written agreements. If you determine that you are going to have both a website on which you publish your newspapers and archive prior editions and you are going to use - or have in the past used - freelance writers, your third option is to have written contracts with the freelancers. As the Supreme Court noted in a footnote in Tasini, "it bears reminder here and throughout that these Publishers and all others can protect their interest by private contractual arrangements." Some of the print publishers in the Tasini case had agreements with the freelancers, but they were not specific enough to deal with this situation. Unfortunately, that has been the case too often in the newspaper industry. But you can avoid the problem in the future. There are two possible approaches to the contracts. One would be to agree with your freelancer that the freelancer's contributions to the newspaper are works-for-hire. To accomplish this, the work must have been specifically commissioned by the publisher, and the written agreement must specify that the material submitted is a contribution to a collective work and will be considered a work made for hire. Sample language: [Freelancer] acknowledges that the material submitted constitutes a contribution to a collective work and will be considered to be a work made for hire within the meaning of Sections 101 and 201(b) of the U.S. Copyright Act. Sometimes freelance writers are reluctant to enter into
work-for-hire agreements. Once they do that, the newspaper owns the
copyright to the piece for all purposes. Freelancers often want to
retain their copyrights and only grant the newspaper certain limited
rights to use the piece. That would mean that the freelancer could In those cases where a freelancer is unwilling to sign a work for hire agreement, an alternative is an agreement which uses a "grant of rights" clause which expressly lists electronic republishing rights among those rights granted to the newspaper. A "grant of rights" clause enumerates the specific rights granted by the freelancer to the publisher. The publisher may only use the freelancer's piece as specifically authorized in the agreement; otherwise, the publisher is at risk of infringing the freelancer's copyright. While the "grants of rights" clause can be all-inclusive or very narrow, it needs to be very clear about the intent of the parties. The following language is a full transfer of all ownership rights to the publisher: Sample language: By entering into this agreement [freelancer] irrevocably assigns and transfers exclusively to [publisher] all rights, including all copyrights and all extensions and renewals in the materials submitted by [freelancer]. The practical ramifications of this transfer are much the same as a work-for-hire agreement - the freelancer no longer has any right to use the piece, unless she gets your permission. If that arrangement is not agreeable, a grant of nonexclusive and limited rights to the publisher will also work. In this case though, the language you use becomes crucial. Sample language: [Freelancer] authorizes [publisher] to edit, use, reproduce, transmit, display, publish, post, download, upload, prepare derivative works of, including or combining with other works, and otherwise utilize and exploit the material [freelancer] produces and submits, as well as the title and format of any such submission, in any and all versions of publisher's publication and in any medium now or hereafter known. Such media include, but are not limited to, print, broadcast, cable, wire, wireless, computer, telecommunication, satellite communication, video, sound recording, motion picture, audiovisual, public performance, electronic databases, the Internet, the World Wide Web, computer networks and any and all other electronic media. Review existing agreements. The first thing you should do is pull all of your freelancers' contracts from your files and review them. Look to see if the contracts are still current or have expired. Look for the above language. [Of course, there is other language your agreements should contain, to deal with other aspects of the arrangement.] If you do not have substantially the above language in your contracts, you should move quickly to enter into new agreements which clearly specify either the work for hire arrangements or the explicit grant of the right to redistribute the freelance piece through any form of electronic publication. Unless and until you have solid agreements, the cautious approach will be to delete the freelancers' work from the editions you place on your website. Freelancer pieces in your archives. What, though, do you do about the water which has already flowed under the proverbial bridge? If you do not have existing contracts with the strong language we've discussed in place for the entire period of time you have published your newspaper electronically, then you should attempt to get after-the-fact authorization from those freelancers to use their pieces in all subsequent versions of your newspaper regardless of the medium. If that's not possible, you should consider removing the contributions of those freelancers from your website (and any other electronic database). For any newspaper which has had a website for any length of time, this is a daunting task, but an important one. Potential damages. Even that may not be enough. Because you had the freelancers' articles or photos on your website without the benefit of contracts which gave you the right to do so, you have violated the freelancers' copyrights. If the freelancers have registered their work with the Copyright Office and is successful in an infringement suit against you, you could be required to pay statutory damages ranging from $750-$30,000 per infringing piece. A national organizing effort. According to the National Newspaper Association of America (NNA), the National Writers Union (NWU) is urging its members not to sign individual agreements with publishers. Instead the NWU wants to negotiate collective licensing agreements with the NWU-run Publication Rights Clearinghouse. That would give the NWU the right to negotiate licensing agreements with publishers on behalf of the freelancers. That would likely result in higher fees for publishers than if you contract directly with individual freelancers. If you are sued. The NNA says it is looking at logical next steps - perhaps legislative initiatives - on this issue. Meanwhile, if you receive a challenge or a threat of litigation over the prior publication be sure to give notice to your liability insurance carrier. Particularly if you have advertising injury coverage, it is likely to cover your defense costs of any such challenge. Other types of coverage may, as well. You're best off asking. In the meantime, as you are going through the process of making sure your "house is in order," you are welcome to call the Hotline with questions about this. Jon L. Fleischaker: 502/ 540-2319 DINSMORE & SHOHL, LLP
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