Ruling
(Full Text)



UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK 
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JONATHAN TASINI, MARY KAY BLAKELY,  
BARBARA GARSON, MARGOT MIFFLIN,  
SONIA JAFFE ROBBINS, and DAVID S.  
WHITFORD                                

                           Plaintiffs,
                                             93 Civ. 8678 (SS)

                            -against-                                       

THE NEW YORK TIMES CO., NEWSDAY INC., 
TIME INC., THE ATLANTIC MONTHLY CO., 
MEAD DATA CENTRAL CORP., and 
UNIVERSITY MICROFILMS INC.,

                           Defendants. 
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Appearances:                       BURSTEIN & BASS
                                   330 Madison Ave., 11th Floor
                                   New York, New York 10017
                                   212/297-3383

                                   Emily M. Bass
                                   Attorney for Plaintiffs


                                   DEBEVOISE & PLIMPTON
                                   875 Third Ave.
                                   New York, New York 10022
                                   212/909-6000

                                   Bruce P. Keller
                                   Lorin L. Reisner
                                   Thomas H. Prochnow
                                   Attorneys for Defendants

                        OPINION AND ORDER

          In this action, the Court is called upon to determine 
whether publishers are entitled to place the contents of their 
periodicals into electronic data bases and onto CD-ROMs without 
first securing the permission of the freelance writers whose 
contributions are included in those periodicals.  According to 
the Complaint, filed by a group of freelance journalists, this 
practice infringes the copyright that each writer holds in his or 
her individual articles.  The defendant publishers and electronic 
service providers respond by invoking the "revision" privilege of 
the "collective works" provision of the Copyright Act of 1976, 17 
U.S.C.  201(c).  Defendants maintain that they have not 
improperly exploited plaintiffs' individual contributions, but 
that they have permissibly reproduced plaintiffs' articles as 
part of electronic revisions of the newspapers and magazines in 

which those articles first appeared.  For the reasons to be 
discussed, the Court agrees with defendants, and grants summary 
judgment in their favor.

BACKGROUND                         

          Plaintiffs are six freelance writers who have sold 
articles for publication in a variety of popular newspapers and 
magazines, including The New York Times, Newsday, and Sports 
Illustrated.  The first two of these periodicals, published 
respectively by defendants The New York Times Company and 
Newsday, Inc., are daily newspapers widely circulated to 
subscribers and newsstands.  Sports Illustrated, published by the 
defendant Time, Inc. ("Time"), is a weekly magazine featuring 
articles and commentary of particular interest to sports 
enthusiasts.  In addition to circulating hard copy versions of 
their periodicals, the defendant publishers sell the contents of 
their publications to the remaining defendants -- University 
Microfilms Inc. (now called UMI Company ("UMI")) and The MEAD 
Corporation (now called LEXIS/NEXIS ("MEAD")) -- for inclusion in 
assorted electronic data bases. 

          MEAD owns and operates NEXIS, an on-line, electronic, 
computer assisted text retrieval system in which articles from a 
number of leading newspapers, newsletters, magazines, and wire 
services -- including The New York Times, Newsday, and Sports 
Illustrated -- are displayed or printed in response to search 
requests from subscribers.  (Pl.s' Mot. Summ. J. Ex. 49 at 
M01464.)  UMI produces and distributes two CD-ROM products 
identified by plaintiffs in their Amended Complaint.  One of 
these products, "The New York Times OnDisc," operates in much the 
same manner as NEXIS, and is made up of the articles appearing in 
each issue of The New York Times.  The remaining CD-ROM, "General 
Periodicals OnDisc," provides a full image-based reproduction of 
The New York Times Book Review and Sunday Magazine.  

          Plaintiffs move for summary judgment on their claims of 
copyright infringement contending that the electronic 
reproductions of their articles are improper under the Copyright 
Act.  Defendants Time and Newsday move for summary judgment on 
the ground that plaintiffs entered into contracts authorizing 
these publishers to sell plaintiffs' articles to the electronic 
defendants.  All of the defendants argue that, even in the 
absence of such agreements, dismissal of this action is warranted 
because the publisher defendants properly exercised their right, 
under the Copyright Act, to produce revised versions of their 
publications.           

     A. The Parties' Relationship 

          The six plaintiffs claim that defendants infringed 
their copyrights in a total of 21 articles sold for publication 
between 1990 and 1993.  Twelve of these articles, written by 
plaintiffs Tasini, Mifflin, and Blakely, appeared in The New York 
Times.  Another eight of the articles, by plaintiffs Tasini, 
Garson, Whitford, and Robbins, were featured in Newsday.  The 
remaining article, a piece entitled "Glory Amid Grief" by 
plaintiff Whitford, appeared in an issue of Sports Illustrated.  
All of the plaintiffs wrote their articles on a freelance basis, 
and not as employees of the defendant publishers.

          1.   The New York Times

          As of the time this action was commenced, freelance 
assignments for The New York Times were typically undertaken 
pursuant to verbal agreements reached between the newspaper and 

the contributing journalists.  A New York Times editor and a 
selected freelance writer ordinarily agreed upon such matters as 
the topic and length of a particular piece, the deadline for 
submission, and the fee to be paid.  (Keller Dec. Ex. B7.)  These 
discussions seldom extended into negotiations over rights in the 
commissioned articles.  Indeed, there were no such negotiations 
between The New York Times and any of the plaintiffs, all of whom 
submitted their articles for publication by The New York Times 
without any written agreements.  Id.

          2.   Newsday

          Prior to this action, Newsday solicited its freelance 
contributions in much the same manner as did The New York Times.  
Freelance assignments for Newsday were most often undertaken 
pursuant to discussions between editors and writers and without 
any written agreements.  (Keller Dec. Ex. B2.)  However, the 
checks with which Newsday paid freelance writers for their 
contributions, including those checks sent to plaintiffs 
following the publication of their articles, included the 
following endorsement:

     Signature required. Check void if this endorsement 
     altered. This check accepted as full payment for 
     first-time publication rights (or all rights, if 
     agreement is for all rights) to material described 
     on face of check in all editions published by 
     Newsday and for the right to include such material 
     in electronic library archives.

(Pl.s' Mot. Summ. J. Ex. 47.)  Plaintiff Tasini crossed out this 
notation prior to cashing those checks paying him for his two 
disputed submissions to Newsday.  Those plaintiffs who wrote the 
remaining six Newsday articles cashed their checks with the 
notation intact.

          3.   Sports Illustrated

          Only plaintiff Whitford submitted an article for 
publication in Sports Illustrated.  The relationship between Time 
and Whitford was decidedly more formal than the arrangements 
routinely entered into between freelance writers and Newsday or 
The New York Times.  Whitford and Sports Illustrated entered into 
a written contract specifying the content and length of the 
purchased article, the date due, and the fee to be paid by the 
magazine.  The contract also provided Sports Illustrated "the 
following rights":

(a)   the exclusive right first to publish the Story in 
     the Magazine:
     (b)  the non-exclusive right to license the 
     republication of the Story whether in translation, 
     digest, or abridgement form or otherwise in other 
     publications, provided that the Magazine shall pay 
     to you fifty percent (50%) of all net proceeds it           
     receives for such republication: and
     (c)  the right to republish the Story or any 
     portions thereof in or in connection with the 
     Magazine or in other publications published by The 
     Time Inc. Magazine Company, its parent, 
     subsidiaries or affiliates, provided that you 
     shall be paid the then prevailing rates of the 
     publication in which the Story is republished. 

(Keller Dec. Ex. C7.)  Plaintiff Whitford claims that he did not 
intend, by this language, to grant Time electronic rights in his 

article.  (Pl.s' Mot. Summ. J. Ex. 14.) 

     B.   The Technological Reproductions 

          Beginning in the early 1980s, the defendant publishers 
entered into a series of agreements pursuant to which they sold 
the contents of their periodicals to the electronic defendants.  
NEXIS has carried the articles appearing in Sports Illustrated 
since 1982, The New York Times since 1983, and Newsday since 
1988.  (Keller Dec. Ex. B5 at PP 3,4,8.)  UMI has distributed 
"The New York Times OnDisc" since 1992, and The New York Times 
Magazine and Book Review have been available on the image-based 
CD-ROM since 1990.  (Keller Dec. Ex. B6 at PP 3, 8.)  

          1.   NEXIS 

          The defendant publishers deliver or electronically 
transmit to NEXIS the full text of all of the articles appearing 
in each daily or weekly edition of their periodicals.  The 
publishers provide NEXIS with a complete copy of computer text 
files which the publishers use during the process of producing 
the hard copy versions of their periodicals.  Coded instructions 
as to page lay out added to these files permit typesetters 
working for the publishers to produce "mechanicals" -- which 
resemble full pages as they will appear at publication -- copies 
of which are transmitted to printing facilities for mass 
production.  NEXIS does not use the electronic files to create 
"mechanicals" or to emulate the physical lay out of each 
periodical issue: such things as photographs, advertisements, and 
the column format of the newspapers are lost.  NEXIS instead uses 
the electronic files to input the contents of each article on-
line along with such information as the author's name, and the 
publication and page in which each article appeared.  The 
articles appearing in The New York Times and Newsday are 
available within twenty-four hours after they first appear in 
print, and the articles from an issue of Sports Illustrated 
appear on-line within forty-five days of the initial hard copy 
publication.  

          Customers enter NEXIS by using a telecommunications 
package that enables them to access NEXIS' mainframe computers.  
Once on-line, customers enter "libraries" consisting of the 
articles from particular publications, or groups of publications.  
Customers can then conduct a "Boolean search" by inputting 
desired search terms and connectors from which the system 
generates a number of "hits."  These "hits," the articles in the 
library corresponding to the selected search terms, can be 
reviewed either individually or within a citation list.  A 
citation list identifies each article by the publication in which 
it appeared, by number of words, and by author.  When a 
particular article is selected for full-text review, the entire 
content of the article appears on screen with a heading providing 
the same basic information reported within a citation list.  
Although articles are reviewed individually, it is possible for a 
user to input a search that will generate all of the articles -- 
and only those articles -- appearing in a particular periodical 
on a particular day.   

          2.   The New York Times OnDisc

          "The New York Times OnDisc," the text only CD-ROM 
product, is created from the same data furnished by The New York 
Times to NEXIS.  Indeed, at the end of each month, pursuant to a 
three-way agreement among The New York Times, NEXIS and UMI, 
NEXIS provides UMI with magnetic tapes containing this 
information.  UMI then transfers the content of these tapes to 

CD-ROM discs and codes the included articles to facilitate 
Boolean searching.  

          Not surprisingly, given that the two systems share 
data, the text-based CD-ROM operates much like NEXIS.  Users 
enter search terms prompting the system  to access all 
corresponding articles.  These articles are displayed with 
headings indicating the author, and the date and page of The New 
York Times issue in which the articles appeared.  As with NEXIS, 
an article selected for review appears alone; there are no 
photographs or captions or columns of text.  Moreover, a search 
typically retrieves articles which were published on different 
dates, though it is possible to conduct a search that will 
retrieve all of the articles making up a single issue of The New 
York Times. 

          3.   General Periodicals OnDisc

          "General Periodicals OnDisc," an image-based CD-ROM 
product, does not carry full issues of The New York Times, but 
only the Sunday Magazine and Book Review.  It includes numerous 
other periodicals, as well, although none of those involved in 
this litigation.  The image-based system differs from the other 
technologies presently at issue in that it is created by digital 
scanning.  Articles are not inputted into the system 
individually, but the entire Sunday Magazine and Book Review are 
photographed producing complete images of these periodicals.  
Articles appear precisely as they do in print, complete with 
photographs, captions, and advertisements.  

          "General Periodicals OnDisc" does not employ Boolean 
searching.  Image based discs are sold alongside text-based 
discs, which are searchable, and which provide abstracts of 
articles.  By searching these abstracts, users can identify 
articles that are of interest to them.  Users can then return to 
the image-based system in order to retrieve those articles.  
Drawing upon this interplay between discs, plaintiffs propose 
that the image-based CD-ROMs are better characterized as part-
text/part-image based CD-ROMs.

     C.   The Parties' Dispute

          All of the parties recognize that the defendant 
publications constitute "collective works" under the terms of the 
Copyright Act of 1976.  A collective work is one "in which a 
number of contributions, constituting separate and independent 
works in themselves, are assembled into a collective whole."  17 
U.S.C.  101.  The rights which exist in such works are delineated 
in 17 U.S.C.  201(c):

     Copyright 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. 

Plaintiffs maintain that the publisher defendants have exceeded 
their narrow "privileges" under this provision by selling 
plaintiffs' articles for reproduction by the electronic 
defendants.  In particular, plaintiffs complain that the disputed 
technologies do not revise the publisher defendants' collective 

works, but instead exploit plaintiffs' individual articles. 

          Defendants Time and Newsday argue that they are not 
limited to those privileges set out at the conclusion of Section 
201(c), because plaintiffs have "expressly transferred" the 
electronic rights in their articles.  Newsday relies upon the 
check legends authorizing the publisher to include plaintiffs' 
articles "in electronic library archives."  Time relies upon the 
"right first to publish" secured in its written contract with 
plaintiff Whitford.  Plaintiffs insist that neither of these 
provisions contemplate the sort of electronic reproductions 
presently at issue.

          Even without an express transfer of rights, all of the 
defendants maintain that the practice of electronically 
reproducing plaintiffs' articles is authorized under Section 
201(c) of the Copyright Act.  Defendants argue that the disputed 
technologies merely generate "revisions of [the defendant 
publishers'] collective work[s]," and therefore do not usurp 
plaintiffs' rights in their individual articles.  17 U.S.C.  
201(c).  Plaintiffs counter that Section 201(c) was not intended 
to permit electronic revisions of collective works, and that, in 
any event, the technologies presently at issue are incapable of 
creating such revisions.                             

                           DISCUSSION

I.   INTRODUCTION

          Summary judgment is required when "there is no genuine 
issue as to any material fact and . . . the moving party is 
entitled to a judgment as a matter of law."  Fed. R. Civ. P. 
56(c).  "The moving party has the initial burden of 'informing 
the district court of the basis for its motion' and identifying 
the matter 'it believes demonstrate[s] the absence of a genuine 
issue of material fact.'"  Liebovitz v. Paramount Pictures Corp., 
1996 WL 733015, * 3 (S.D.N.Y. Dec. 18, 1996) (quoting Celotex 
Corp. v. Catrett, 477 U.S. 317, 323 (1986)).  Once the movant 
satisfies its initial burden, the nonmoving party must identify 
"specific facts showing that there is a genuine issue for trial."  
Fed. R. Civ. P. 56(e).  In assessing the parties' competing 
claims, the Court must resolve any factual ambiguities in favor 
of the nonmovant.  See McNeil v. Aguilos, 831 F. Supp. 1079, 1082 
(S.D.N.Y. 1993).  It is within this framework that the Court must 
finally determine "whether the evidence presents a sufficient 
disagreement to require submission to a jury or whether it is so 
one-sided that one party must prevail as a matter of law."  
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986).  

          Where there are cross motions for summary judgment, as 
there are here, "the standard is the same as that for individual 
motions for summary judgment and the court must consider each 
motion independent of the other . . . .  Simply because the 
parties have cross-moved, and therefore have implicitly agreed 
that no material issues of fact exist, does not mean that the 
court must join in that agreement and grant judgment as a matter 
of law for one side or the other."  Aviall, Inc. v. Ryder System, 
Inc., 913 F. Supp. 826, 828 (S.D.N.Y. 1996) (citing Heublein, 
Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir. 1993)), 
aff'd, 110 F.3d 892 (2d Cir. 1997).  

 II.  THE ALLEGED TRANSFER OF RIGHTS PURSUANT TO CONTRACT

     Two of the publisher defendants, Newsday and Time, claim 
that plaintiffs "expressly transferred" electronic rights in 
their articles, and that it is therefore unnecessary to determine 

whether the electronic data bases produce revisions of these 
defendants' collective works.  The Court disagrees. 

     A.   Newsday   

          According to Section 204(a) of the 1976 Act, "[a] 
transfer of copyright ownership . . . is not valid unless an 
instrument or conveyance, or a note or memorandum of the 
transfer, is in writing and signed by the owner of the rights 
conveyed or such owner's duly authorized agent."  17 U.S.C.  
204(a).  "[A] writing memorializing the assignment of copyright 
interests 'doesn't have to be the Magna Carta; a one-line pro 
forma statement will do.'  However, the terms of any writing 
purporting to transfer copyright interests, even a one-line pro 
forma statement, must be clear."  Papa's June Music, Inc. v. 
McLean, 921 F. Supp. 1154, 1158-1159 (S.D.N.Y. 1996) (citing 
Effects Associates, Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 
1990)).  

          The only writing that Newsday points to in support of 
the transfer of electronic rights appears on the back of the 
checks it issued to plaintiffs in payment for their articles.  In 
particular, the publisher relies upon the language providing that 
Newsday has the "right to include [plaintiffs' articles] in 
electronic library archives."  By the time Newsday sent 
plaintiffs' articles to NEXIS, however, plaintiffs had not yet 
received or cashed these checks.  Plaintiffs therefore contend 
that any transfer of rights that might have been effected by the 
check legends occurred too late to excuse defendants' alleged 
infringement.  See R&R Recreation Products, Inc. v. Joan Cook 
Inc., 1992 WL 88171, * 4 (S.D.N.Y. 1992) ("R&R's assignment of 
the cat and mouse copyright to DMV does not preclude suit by R&R 
for infringement occurring prior to the assignment.").  

          Newsday responds by arguing that a "note or memorandum" 
of transfer can serve to validate a prior oral agreement.  See 
Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27, 
36 (2d Cir. 1982) ("the 'note or memorandum of the transfer' need 
not be made at the time when the license is initiated; the 
requirement is satisfied by the copyright owner's later execution 
of a writing which confirms the agreement."); see also Imperial 
Residential Design, Inc. v. Palms Development Group, Inc., 70 
F.3d 96, 99 (11th Cir. 1995) ("a copyright owner's later 
execution of a writing which confirms an earlier oral agreement 
validates the transfer ab initio.").  Newsday is correct as to 
the law, but finds no support in the facts.  

          Newsday concedes that there is no evidence of any prior 
agreements concerning electronic rights in plaintiffs' articles.  
(Def. Newsday's Res. Pl.s' Rule 3(g) stmt No. 25 ("DEFENDANTS' 
RESPONSE:  Other than the check endorsement . . . there is no 
evidence of any express agreement, written or oral, between any 
of the plaintiffs and Newsday with respect to the articles at 
issue.").)  The most Newsday claims is that the check legends 
confirmed "its understanding" that there had been a transfer of 
electronic rights in plaintiffs' articles.  (Def.s' Memo. Supp. 
Mot. Summ. J. at 14 n. 2.)  This is not enough: the record 
reveals no basis for concluding that Newsday's purported 
"understanding" was shared by plaintiffs, all of whom deny that 
they ever intended to authorize the use of their articles on-
line.  Thus, Newsday cannot now rely upon its check legends to 
give retroactive effect to supposed unspoken agreements 
concerning electronic rights in plaintiffs' articles. 

          The check legends themselves, moreover, are ambiguous 
and cannot be taken to reflect an express transfer of electronic 

rights in plaintiffs' articles.  See Playboy Enterprises, Inc. v. 
Dumas, 53 F.3d 549, 564 (2d Cir.) (finding that check legend 
providing for the "assignment . . . of all right, title, and 
interest" was ambiguous, and did not effectively transfer 
copyright in certain paintings), cert. denied, 116 S. Ct. 567 
(1995); see also Papa's-June, 921 F. Supp. at 1159 ("neither the 
royalty checks nor the attached royalty statements mention a 
transfer of copyright ownership."); Museum Boutique 
Intercontinental, Ltd v. Picasso, 880 F. Supp. 153, 162 n. 11 
(S.D.N.Y. 1995) ("the checks submitted by MBI, which do not 
contain any explanatory notations besides "Picasso royalties," 
are not convincing proof, to say the least, of the alleged oral 
agreement.").  Plaintiffs argue persuasively that the most 
reasonable interpretation of "electronic library archives" does 
not encompass NEXIS.  Plaintiffs provide affidavits from experts 
who opine that an archive and a commercial data base contain 
different types of material and serve different purposes.  (Pl.s' 
Mot. Summ. J. Ex. 17.); cf. American Geophysical Union v. Texaco 
Inc., 60 F.3d 913, 919, 921 (2d Cir. 1995) (photocopying of 
articles from scientific journal was characterized as "archival" 
where copies were kept in researcher's files for later reference 
and were not used for any "direct or immediate commercial 
advantage").  Plaintiffs also note, and Newsday admits, that 
Newsday maintains its own "electronic library archives," a 
computerized in-house storage system that serves no commercial 
purpose.  (Pl.s' Mot. Summ. J. Ex. 35 at 26.)  It is at least 
plausible -- and would have been reasonable for plaintiffs to 
conclude -- that Newsday was simply referring to such "archives" 
in its check legends.  In any event, there is no evidence that 
plaintiffs understood, or should have understood, that the check 
legends implicated rights extending as far as NEXIS.

          In short, there is no basis for holding that the 
Newsday check legends effected an unambiguous and timely transfer 
of any significant electronic rights in plaintiffs' articles.    

     B.   Sports Illustrated

          In support of its Motion for Summary Judgment, 
defendant Time invokes Section 10(a) of its contract with 
Whitford.  Pursuant to this provision, Sports Illustrated 
acquired the right "first to publish" Whitford's article.  
Arguing that this language includes no "media-based limitation," 
Time contends that its "first publication" rights must be 
interpreted to extend to NEXIS.  See Bartsch v. Metro-Goldwyn-
Mayer, Inc., 391 F.2d 150, 154-55 (2d Cir.) (holding that the 
right to "exhibit" motion picture included the right to exhibit 
movie on television), cert. denied, 393 U.S. 826 (1968); see also 
Bourne v. Walt Disney Co., 68 F.3d 621, 629 (2d Cir. 1995) 
("motion picture" rights did not "unambiguously exclude" 
videocassette rights), cert. denied, 116 S. Ct. 1890 (1996); L.C. 
Page & Co. v. Fox Film Corp., 83 F.2d 196, 199 (2d Cir. 1936) 
("exclusive moving picture rights" included "talkies" as well as 
silent films); Rooney v. Columbia Pictures Indus., Inc., 538 F. 
Supp. 211 (S.D.N.Y.) (exhibit "by any present or future method or 
means" included videocassette rights), aff'd, 714 F.2d 117 (2d 
Cir. 1982), cert. denied, 460 U.S. 1084 (1983).  

          Time's reliance upon the Bartsch line of authority is 
misplaced.  Bartsch and its progeny stand for the proposition 
that when contract terms are broad enough to cover a new a 
technological use, "the burden of framing and negotiating an 
exception should fall on the grantor."  Bartsch, 391 F.2d at 155.  
None of these cases, however, involved a contract (like the one 
before the Court) that imposed specific temporal limitations such 
as "first publication rights."  The right to publish an article 

"first" cannot reasonably be stretched into a right to be the 
first to publish an article in any and all mediums.  Cf. Harper & 
Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 564 
(1985) ("The right of first publication encompasses not only the 
choice whether to publish at all, but also the choices of when, 
where, and in what form first to publish a work.") (emphasis 
added).  Because Whitford's article was "first" published in 
print, the electronic republication of that article some 45 days 
later simply cannot have been "first." 

 III. COLLECTIVE WORKS UNDER THE COPYRIGHT ACT OF 1976

          Because the Court cannot find that any of the 
plaintiffs expressly transferred electronic rights in their 
articles, the numerous arguments and voluminous record in this 
case devolve to whether the electronic defendants produced 
"revisions," authorized under Section 201(c) of the Copyright 
Act, of the publisher defendants' collective works.  The issue is 
narrow, but its resolution is not simple: there is virtually no 
case law parsing the terms of Section 201(c), and certainly no 
precedent elucidating the relationship between that provision and 
modern electronic technologies.  Further complicating matters, 
the Copyright Act of 1976 was crafted through a unique and 
lengthy process involving the input of numerous experts from 
assorted interest groups and industries.  See Barbara Ringer, 
First Thoughts On The Copyright Act Of 1976, 22 N.Y.L. Sch. L. 
Rev. 477 (1977).  As a result, the pertinent legislative history 
is notoriously impenetrable.  See generally Jessica D. Litman, 
Copyright, Compromise, and Legislative History, 72 Cornell L. 
Rev. 857 (1987).

          Despite the numerous challenges, there are several 
considerations which allow a principled approach to analyzing 
Section 201(c).  Most importantly, the provision cannot be 
understood in isolation, but must be considered alongside other 
sections of the Act.

     A.   Collective Works And Derivative Works Under Section 
103(b)

          "Both collective works and derivative works are based 
upon preexisting works that are in themselves capable of 
copyright."  1 M. Nimmer & D. Nimmer, Nimmer on Copyright  3.02, 
at 3-8 (1996 ed.).  A derivative work "transforms" one or more 
such preexisting works into a new creation.  See 17 U.S.C.  101.  
A collective work, on the other hand, consists of numerous 
original contributions which are not altered, but which are 
assembled into an original collective whole.  Id.  In both 
instances, the copyright law accounts for the fact that the 
larger work -- although it is entitled to copyright protection -- 
consists of independent original contributions which are 
themselves protected.

          The 1976 Act addresses the competing copyright 
interests apparent in both derivative works and collective works 
in Section 103(b).  Pursuant to this provision:

     The copyright in a compilation or derivative work 
     extends only to the material contributed by the 
     author of such work, as distinguished from the 
     preexisting material employed in the work, and 
     does not imply any exclusive right in the 
     preexisting material.  The copyright in such work 
     is independent of, and does not affect or enlarge 
     the scope, duration, ownership, or subsistence of, 
     any copyright protection in the preexisting 

     material.

17 U.S.C.  103(b).  Section 103(b) does not represent an 
innovation under the 1976 Act, but is intended merely to clarify 
a point "commonly misunderstood" under Section 7 of the 1909 Act.  
H.R. Report No. 94-1476, at 57 (1976).  Specifically, "copyright 
in a 'new version' covers only the material added by the later 
author, and has no effect one way or the other on the copyright 
or public domain status of the preexisting material."  Id.

          The "misunderstanding" regarding copyright protection 
in "new versions" and in "preexisting materials" developed 
largely in connection with derivative works, and grew out of the 
"new property rights" approach espoused, most prominently, by 
Judge Friendly of the Second Circuit.  See Rohauer v. Killiam 
Shows, Inc., 551 F.2d 484 (2d Cir.) (holding that film producer 
retained rights in underlying story despite fact that novelist, 
who authorized initial use of story, died before granting 
producer renewal rights), cert. denied, 431 U.S. 949 (1977).  
According to this view, "once a derivative work is created 
pursuant to a valid license to use the underlying material, a new 
property right springs into existence with respect to the entire 
derivative work, so that even if the license is thereafter 
terminated, the proprietor of the derivative work may 
nevertheless continue to use the material from the underlying 
work as contained in the derivative work."  Nimmer,  3.07[A][1], 
at 3-34.9.  Numerous authorities on copyright law, including 
Professor Nimmer, assailed the reasoning in Rohauer, deriding the 
"new property rights" approach as "neither warranted by any 
express provision of the Copyright Act, nor by the rationale as 
to the scope of protection achieved in a derivative work."  Id.  

          Prior to its holding in Rohauer, and contrary to the 
"new property rights" approach, the Second Circuit had upheld 
several claims of infringement based upon the unauthorized reuse 
-- by the owner of a valid copyright in a derivative work -- of 
the protected preexisting material.  See, e.g., Gilliam v. 
American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 
1976); G. Ricordi & Co. v. Paramount Pictures Inc., 189 F.2d 469 
(2d Cir.) (prohibiting plaintiff, in declaratory judgment action, 
from making a motion picture version of an opera that had been 
created with the permission of the author of the underlying 
work), cert. denied., 342 U.S. 849 (1951); see also Russell v. 
Price, 612 F.2d 1123, 1128 (9th Cir. 1979) ("since exhibition of 
the film "Pygmallion" necessarily involves exhibition of parts of 
Shaw's play, which is still copyrighted, plaintiffs here may 
prevent defendants from renting the film for exhibition without 
their authorization."), cert. denied, 446 U.S. 952 (1980).  In 
Gilliam, for instance, the Court granted an injunction in favor 
of plaintiffs, the members of a British comedy troop, who claimed 
that the BBC infringed their copyright in certain scripts.  
Plaintiffs had authorized the BBC to broadcast television 
programs based upon these scripts, but took exception when the 
BBC subsequently sold the programs to the defendant, an American 
television network which edited the programs prior to airing them 
in the United States.  In support of its decision to enjoin the 
defendant from airing those edited versions for a second time, 
the Second Circuit reasoned that, under Section 7 of the 1909 
Act, "any ownership by BBC of the copyright in the recorded 
program would not affect the scope or ownership of the copyright 
in the underlying script."  Gilliam, 538 F.2d at 20.  The use of 
that script without plaintiffs' consent would therefore 
constitute infringement, "even with the permission of the 
proprietor of [a] derivative work [based upon that script]."  Id. 

          Upholding a Ninth Circuit opinion which rejected 

Rohaeur in favor of the Second Circuit's earlier approach in 
Gilliam, the Supreme Court finally and firmly settled the "new 
property rights" controversy.  See Stewart v. Abend, 495 U.S. 207 
(1990).  In Abend, the author of a fictional story agreed to 
assign the rights in his renewal copyright term to the owner of a 
movie version of that story, but died before the commencement of 
the renewal period.  Because the assignment never occurred, the 
Court held that defendant infringed the copyright of the 
successor owner of the story by continuing to distribute the film 
during the renewal term of the preexisting work.  

          In reaching its result, the Abend Court rejected 
defendants' view, based on Rohaeur, that the "creation of the 
'new,' i.e., derivative, work extinguishes any right the owner of 
rights in the preexisting work might have had to sue for 
infringement . . . "  Id. at 222.  Citing Nimmer, the Court 
concluded that such an approach runs counter to the terms of both 
Section 7 of the 1909 Act and Section 103(b) of the 1976 Act, 
each of which advances the same fundamental formula:  

     The aspects of a derivative work added by the 
     derivative author are that author's property, but 
     the element drawn from the pre-existing work 
     remains on grant from the owner of the pre-
     existing work.  So long as the pre-existing work 
     remains out of the public domain, its use is 
     infringing if one who employs the work does not 
     have a valid license or assignment for use of the 
     preexisting work.  It is irrelevant whether the 
     preexisting work is inseparably intertwined with 
     the derivative work.

Abend, 495 U.S. at 223-24 (citations omitted).  Thus, Section 
103(b) of the 1976 Act -- like Section 7 of the 1909 Act before 
it -- stands as a rejection of the new property rights theory.  
Id.; see also Nimmer,  3.07, at 3-34.9 n. 3. (describing Section 
103(b) as "hardly consistent with the new property right 
theory").  Under Section 103(b), any unauthorized use of 
preexisting protected material by the creator of a derivative or 
a collective work infringes the copyright existing in that 
preexisting material.

     B.   Defendants' "Privileges" Under Section 201(c)

          The first sentence of Section 201(c) -- providing that 
the "[c]opyright 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" -- 
essentially reiterates the substance of Section 103(b).  If the 
provision ended with its first sentence, plaintiffs would prevail 
in this action.  With no "new property right" in the articles 
making up their collective works, the publisher defendants would 
not be at liberty to reuse plaintiffs' individual contributions 
even in new versions of their own periodicals.  See Abend, 495 
U.S. 207; see also Gilliam, 538 F.2d 14.  In its second sentence, 
however, Section 201(c) expands upon the baseline established in 
Section 103(b) by extending to the creators of collective works 
"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."  17 U.S.C.  201(c).  The determinative issue 
here, then, is the precise scope of these "privileges." 

          1.   Privileges As Transferrable Rights

          Plaintiffs liken the "privileges" which Section 201(c) 

extends to "the owner of copyright in the collective work" to 
narrowly circumscribed nonexclusive licenses.  Unlike assignments 
or exclusive licenses or most other conveyances under copyright 
law, such limited grants are not transferrable.  See 17 U.S.C.  
101 (defining "transfer of copyright ownership").  Because the 
publisher defendants own the copyrights in their collective 
works, plaintiffs reason that the electronic defendants are 
guilty of infringement even in the event that they are creating 
revisions -- authorized by the publisher defendants -- of the 
disputed periodicals.  (Pl.s' Memo. Supp. Mot. Summ. J. at 16, n. 
15; Pl.s' Memo. Opp. Def.s' Cross-Mot. Summ. J. at 19-23.) 

          Plaintiffs arrive at their understanding of the term 
"privileges" by juxtaposing Section 201(c) with Section 201(d).  
The first clause of the latter section provides that "[t]he 
ownership of a copyright may be transferred in whole or in part 
by any means of conveyance or by operation of law . . . "  17 
U.S.C.  201(d)(1).  According to Section 201(d)(2):

     Any of the exclusive rights comprised in a 
     copyright, including any subdivision of any of the 
     rights specified by section 106, may be 
     transferred as provided by clause (1) and owned 
     separately.  The owner of any particular exclusive 
     right is entitled, to the extent of that right, to 
     all of the protection and remedies accorded to the 
     copyright owner by this title.

In plaintiffs' view, the fact that Section 201(d)(2) provides for 
the transfer of "rights" can only be taken to mean that the 
"privileges" identified in the preceding section of the Act are 
nontransferable.  This approach distorts the relationship between 
Section 201(c) and Section 201(d).

          Section 201(d)(2) does not speak only of "rights," but 
also of any "subdivision" of rights.  The potential for such a 
subdivision of rights is created in the preceding section, 
201(d)(1), which permits the transfer of copyright, "in whole or 
in part," either by conveyance or by "operation of law."  This 
recognition of the potential for a partial transfer of copyright 
"by operation of law" follows from the fact that exactly such a 
transfer is effected in the preceding Section of the Act, Section 
201(c), which extends certain enumerated "privileges" to 
publishers.  In other words, the three provisions operate in 
tandem: Section 201(c) transfers plaintiffs' copyrights, "in 
part," to defendants -- a permissible exercise under Section 
201(d)(1) -- and therefore, under Section 201(d)(2), defendants 
are left with full authority over the "subdivision" of rights 
they acquire. 

          When Sections 201(c) and 201(d) are placed into 
historical context, the weakness in plaintiffs' position is all 
the more apparent.  The 1976 Act, in significant part, amounts to 
a repudiation of the concept of copyright indivisibility, a 
principle pursuant to which the assorted rights comprising a 
copyright could not be assigned in parts, i.e., subdivided.  See 
Nimmer,  10.01[A], at 10-5.  Under this former regime, individual 
authors were at risk of inadvertently surrendering all rights in 
a contribution to a collective work either to the publisher of 
that work, or to the public.  Id.  Under Sections 201(c) and (d) 
of the 1976 Act, that threat is gone.  Authors are no longer at 
risk of losing all rights in their articles merely because they 
surrender a small "subdivision" of those rights -- either by 
operation of Section 201(c) or by express transfer -- to the 
publishers of collective works. 


          The aim of Section 201(c) -- to avoid the 
"unfair[ness]" of indivisibility -- would not be further served 
by equating "privileges" with nonexclusive licenses.  H.R. Report 
No. 94-1476, at 122 (1976).  As explained, Congress was not 
responding to any perceived problem associated with the ability 
of publishers to enlist the help of outside entities to produce 
versions of their collective works, but rather to the risk that 
publishers of collective works might usurp all rights in 
individual articles.  It simply would not have advanced its goal 
for Congress to have constrained publishers in their efforts to 
generate and distribute their permitted revisions and 
reproductions.  Such an approach would not prevent the 
exploitation of individual contributions, but would serve only to 
undermine the competing goal of ensuring that collective works be 
marketed and distributed to the public.  See H.R. Rep. No. 94-
1476, at 122 (1976) (characterizing the Section 201(c) privileges 
extended to publishers an "essential counterpart" to the basic 
presumption favoring authors).

          The term "privilege" is used in Section 201(c) to 
underscore that the creators of collective works have only 
limited rights in the individual contributions making up their 
collective works; the term does not indicate that the creators of 
collective works are limited in exercising those few rights, or 
"privileges," that they possess.  Thus, to the extent that the 
electronic reproductions qualify as revisions under Section 
201(c), the defendant publishers were entitled to authorize the 
electronic defendants to create those revisions.

          2.   Reproductions, Revisions, and Computer Technology

          Plaintiffs advance several arguments in support of 
their view that the framers of Section 201(c) intended to limit 
the creators of collective works to revising and reproducing 
their works in the same medium in which those collective works 
initially appeared.  For the reasons discussed, however, the 
Court finds nothing in the terminology of Section 201(c), the 
relevant legislative history, or the nature of revisions 
generally which supports such an approach.

               a.   Display Rights

          Plaintiffs contend that the right to reproduce articles 
as part of a collective work, because it is unaccompanied by 
other key rights, necessarily precludes the use of computer 
technologies.  Plaintiffs refer to Section 106 of the 1976 Act, 
which lists the five exclusive rights, i.e., the "bundle" of 
rights, constituting a copyright.  The "reproduction" privilege 
identified under Section 201(c), as plaintiffs note, invokes the 
first of these rights -- the right "to reproduce the copyrighted 
work in copies or phonorecords."  See 17 U.S.C.  106(1).  Section 
201(c) does not, however, implicate the distinct right, under 
Section 106,  to "display the copyrighted work publicly."  Id. at  
106(5).  In plaintiffs' view, this absence of any express grant 
of "display" rights is fatal to defendants' position because a 
work cannot be reproduced electronically unless it is "displayed" 
on a computer screen.

          By focusing upon the "display" rights that are not 
granted under Section 201(c), plaintiffs fail to account fully 
for the "reproduction" rights that are extended to the owners of 
copyright in collective works.  Although "reproduction" is not 
defined separately under the Act, Section 106 reveals -- 
predictably enough -- that reproductions result in "copies."  As 
defendants emphasize, this is a term with a broad and forward 
looking definition:


     'Copies' are material objects, other than 
     phonorecords, in which a work is fixed by any 
     method now known or later developed, and from 
     which the work can be perceived, reproduced, or 
     otherwise communicated, either directly or with 
     the aid of a machine or device . . .

17 U.S.C.  101 (emphasis added).  Thus, the right to reproduce a 
work, which necessarily encompasses the right to create copies of 
that work, presupposes that such copies might be "perceived" from 
a computer terminal.   

          Plaintiffs argue that the legislative history precludes 
the Court from reading "display" rights into Section 201(c).  As 
plaintiffs point out, early draft versions of Section 201(c) 
extended the "privilege to publish" -- instead of the privilege 
to "reproduce" and "distribute" -- individual contributions in 
subsequent versions of a collective work.  (Pl.s' Memo. Opp. 
Def.s' Mot. Summ. J. at 22, n. 37.)  "'Publication' is the 
distribution of copies . . . of a work to the public."  17 U.S.C.  
101.  More importantly, for plaintiffs' purposes, "publication" 
contemplates the public distribution of a work "for purposes of 
further distribution, public performance, or public display . . . 
"  Id. (emphasis added).  The absence of the term "publish" from 
the final version of Section 201(c), according to plaintiffs, 
must therefore be taken to indicate the absence of any such 
display rights.

          The problem with plaintiffs' argument is that it rests 
on the unfounded assumption that the replacement of the term 
"publish" in Section 201(c) necessarily amounted to a rejection 
not only of that term, but also of the rights it connotes.  There 
is no hint in the pertinent legislative history, however, that 
Congress settled upon its "reproducing and distributing" language 
for purpose of diminishing the publication rights initially 
envisioned for the creators of collective works.  To the 
contrary, it appears that the "reproducing and distributing" 
language -- a seeming paraphrase of the "distribution of copies" 
language the Act uses to define "publication" -- was meant to 
secure precisely those rights.  Indeed, the House Report 
explicitly equates the privilege of "reproducing and 
distributing" a contribution as part of a "particular collective 
work" with the "privilege of republishing the contribution under 
certain limited circumstances."  H.R. Report No. 94-1476, at 122 
(1976) (emphasis added). 

          In sum, both the terms of the 1976 Act, and the 
pertinent legislative history, reveal a design to extend display 
rights, in "certain limited circumstances," to the creators of 
collective works.  Thus, so long as defendants are operating 
within the scope of their privilege to "reproduce" and 
"distribute" plaintiffs' articles in "revised" versions of 
defendants' collective works, any incidental display of those 
individual contributions is permissible. 

               b.   The Updated Encyclopedia

          Plaintiffs' narrow reading of defendants' reproduction 
and revision rights is informed not only by the absence of any 
"display" rights under Section 201(c), but also by the examples 
of revisions included in the pertinent legislative history.  In 
particular, plaintiffs rely upon the following passage of the 
House Report accompanying Section 201(c):

     Under the language of this clause a publishing 

     company could reprint a contribution 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; the 
     publisher could not revise the contribution itself 
     or include it in a new anthology or an entirely 
     different magazine or other collective           
     work.

H.R. Report No. 94-1476, at 122-23 (1976).  To plaintiffs, the 
modest reach of the encyclopedia example suggests a narrow scope 
to the term revision, one not contemplating new technologies or 
significant alterations of format and organization.

          For several reasons, plaintiffs are mistaken to 
approach the encyclopedia example as the outer boundary of 
permissible revision.  Foremost, the language of Section 201(c) 
does not support the sort of media restriction that plaintiffs 
infer from the legislative history.  Cf. Demarest v. Manspeaker, 
498 U.S. 184, 190 (1991) ("When we find the terms of a statute 
unambiguous, judicial inquiry is complete except in rare and 
exceptional circumstances.").  Indeed, Section 201(c) contains no 
express limitation upon the medium in which a revision can be 
created.  To the contrary, "any revision" of a collective work is 
permissible, provided it is a revision of "that collective work."

          Plaintiffs attribute the absence of any express 
prohibition on electronic revisions to the fact that electronic 
data bases were not a part of the "Congressional consciousness" 
at the time that Section 201(c) was drafted.  (Pl.s' Memo. Supp. 
Summ. J. at 41.)  It is more accurate to say that Congress was 
aware of such technologies, but did not fully understand their 
implications.  See Arthur R. Miller, Copyright Protection For 
Computer Programs, Databases, And Computer Generated Works: Is 
Anything New Since CONTU?, 106 Harv. L. Rev. 977, 979 (1993).  
Recognizing its ignorance in such matters, Congress expressly 
declined -- as of the time it passed the 1976 Act -- to settle 
the copyright implications of "automatic systems capable of 
storing, processing, retrieving, or transferring 
information . . . "  17 U.S.C.  117 (repealed by Computer 
Software Protection Act, Pub. L. No. 96-517, 117, 94 Stat. 3028 
(1980)).  Congress determined that such developing computer 
technologies required continued investigation, and organized a 
study of the matter by the National Commission on New 
Technological Uses of Copyrighted Works (CONTU).  H.R. Rep. No. 
1476, 94th Cong., 2d Sess. 116 (1976).  In 1980, after CONTU 
determined that the 1976 legislation would afford "the desired 
substantive legal protection for copyrighted works which exist in 
machine readable form," Congress repealed the original Section 
117.  Id. at 40.  Plaintiffs invoke this history, particularly 
the initial reluctance of Congress to delve into the realm of 
computer technologies, as evidence that Section 201(c) was not 
intended to vest defendants with electronic rights in their 
collective works.  

          The legislative history that plaintiffs describe 
undercuts their argument more than it advances it.  The fact that 
Congress initially saw the need to pass Section 117 is strong 
indication that, in the absence of such an explicit limitation, 
it is to be presumed that the terms of the 1976 Act encompass all 
variety of developing technologies.  With the repeal of Section 
117, this presumption is restored with respect to computers.  
Thus, there is no remaining reason to foreclose the possibility 
of an electronic "revision" of a collective work.

          As defendants emphasize, the 1976 Act was plainly 

crafted with the goal of media neutrality in mind.  See 
Register's Report on the General Revision of the U.S. Copyright 
Law, included in Nimmer at Volume 5, Appendix 14 at 14-8 
("technical advances have brought in new industries and new 
methods for the reproduction and dissemination of the . . . works 
that comprise the subject matter of copyright . . . .  In many 
respects, the [1909 Act] is uncertain, inconsistent, or 
inadequate in its application to present-day conditions."); see 
also Copyright Law Revision: Hearing on H.R. 4347, 5680, 6831, 
6835 Before Subcommittee No. 3 of the House Committee on the 
Judiciary, 89th Cong., 1st Sess. 57 (1965) (testimony of George 
D. Cary, Deputy Register of Copyrights: "We have tried to phrase 
the broad rights granted in such a way that they can be adapted 
as time goes on to each of new advancing media.").  Key terms of 
the Act are defined to accommodate developing technologies.  See, 
e.g., 17 U.S.C.  101 (defining "copies" in terms of "any method 
now known or later developed";  defining "literary works" as 
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.").  
Equally telling, none of the provisions of the Act limit 
copyright protection to existing technologies.  The unusual 
exception of the original Section 117 only demonstrates that 
Congress took steps to ensure that its media neutral approach 
could effectively accommodate developing technologies before 
ultimately determining that the terms of the 1976 Act were fully 
equipped for the task.

          In sum, it is unwarranted simply to assume -- on the 
basis of one example provided in the legislative history of 
Section 201(c) -- that Congress intended for the terms 
"reproduction" and "revision" to announce a radical departure 
from the media neutrality otherwise characterizing the Copyright 
Act of 1976.

               c.   A "Plain Reading" of the Term Revision

          Throughout their pleadings, plaintiffs seemingly 
presume that a "revision," by its plain meaning, must be nearly 
identical to an original.  Particularly in the context of the 
Copyright Act of 1976, this is not so obvious.  Conceived as a 
"revision" of the 1909 Act, the 1976 Act thoroughly changed the 
face of copyright law in the United States.  See Barbara Ringer, 
First Thoughts On The Copyright Act Of 1976, 22 N.Y.L. Sch. L. 
Rev. 477, 479 (1977). 

          At a bare minimum, the Copyright Act contemplates that 
a "revision" can alter a preexisting work by a sufficient degree 
to give rise to a new original creation.  See 17 U.S.C.  101.  
Indeed, a "derivative work," which is itself an "original work of 
authorship," can be created by means of "editorial revisions" to 
a preexisting work.  Id.  Thus, even the revised encyclopedia 
might differ from its predecessor edition by a "substantial, and 
not merely trivial" degree.  See Eden Toys, Inc. v. Florelee 
Undergarment Co., Inc., 697 F.2d 27, 34 (2d Cir. 1982).  If 
"editorial revisions" can transform a work to this extent, the 
broader "any revisions" language of Section 201(c) suggests the 
promise of even greater change.

          The structure and language of Section 201(c) confirm 
that the parameters of a permissible revision are broader than 
plaintiffs suppose.  Section 201(c) authorizes publishers to 
"reproduce" an individual contribution "as part of . . . any 
revision" of the collective work in which it initially appeared.  
By allowing only "reproductions" of individual contributions, and 

not revisions of those contributions, Congress plainly intended 
to prevent publishers from reshaping or altering the content of 
individual articles.  With this limitation in place, Congress 
apparently was willing to permit publishers significant leeway, 
i.e., the leeway to create "any revision" of their collective 
works. 

          The legislative history is consistent with this 
construction of Section 201(c).  An early draft version of the 
provision permitted publishers to reproduce an individual 
contribution to a collective work "as part of that particular 
collective work and any revisions of it."  Harriet Pilpel, a 
prominent author representative, expressed the following concern 
related to this language:

     I have but one question with reference to the 
     wording, and that is with respect to the wording 
     at the end of subsection (c): ' . . . and any 
     revisions of it."  If that means 'any revision of 
     the collective work' in terms of changing the 
     contributions, or their order, or including 
     different contributions, obviously the magazine 
     writers and photographers would not object. But 
     there is an implication, or at least an ambiguity, 
     that somehow the owner of the collective work has 
     a right to make revisions in the contributions to 
     the collective work.  This is not and should not 
     be the law, and consequently I suggest that the 
     wording at the end of subsection (c) be changed to 
     make that absolutely clear.

1964 Revision Bill with Discussions and Comments, 89th Cong., 1st 
Sess., Copyright Law Revision, Part 5, at 9 (H. Comm. Print 
1965).  In other words, authors were comfortable permitting 
publishers broad discretion in revising their collective works, 
provided that individual articles would remain intact.  Section 
201(c) was modified to accommodate these narrow concerns, and it 
now clarifies that a publisher is not permitted to revise an 
original contribution to a collective work, but is permitted to 
reproduce that contribution "as part of . . . any revision" of 
"that collective work" in which it initially appeared.

          In sum, Section 201(c) does not impose any significant 
limitations upon publishers through the use of such terms as 
"privilege," "reproducing," or "any revision."  A privilege is 
transferrable; a reproduction can occur in any medium; and "any 
revision" might include a major revision.  The key limitation 
imposed upon publishers under Section 201(c) rests in the fact 
that publishers are permitted only to reproduce a particular 
plaintiff's article "as part of" a revised version of "that 
collective work" in which the article originally appeared.

          3.   Revising "That Collective Work"

          Although the "any revision" language of Section 201(c) 
is broad, a new work must be recognizable as a version of a 
preexisting collective work if it is to be fairly characterized a 
revision of "that collective work."  17 U.S.C.  201(c).  
Considering that defendants are prohibited from changing the 
content of plaintiffs' individual articles, this gives rise to 
something which, at first blush, might seem puzzling: how can a 
particular collective work, one made up entirely of separate 
contributions, be revised without making changes to those 
contributions?  The resolution of this question rests in the fact 
that collective works, even to the extent that they consist 
entirely of individual original contributions, possess 

distinguishing original characteristics of their own -- i.e., 
they are greater than the sum of their parts.  It is therefore 
possible to revise a collective work by changing the original 
whole of that work without altering the content of the individual 
contributions to that work.

          In order to identify the original characteristics of a 
collective work, it is useful to recognize that collective works 
are a form of compilation.  "A compilation is a work formed by 
the collection and assembling of preexisting materials or of data 
that are selected, coordinated, or arranged in such a way that 
the resulting work as a whole constitutes an original work of 
authorship."  17 U.S.C.  101.  "Many compilations consist of 
nothing but raw data -- i.e., wholly factual information not 
accompanied by any original written expression."  Feist 
Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 
345 (1991).  Collective works are a unique form of compilation 
only because they are not made up of facts, but of "separate and 
independent works" protected as the original contributions of 
individual authors.  17 U.S.C.  101.

          Because it is a "bedrock principle of copyright" that 
no author may possess a copyright in facts, the Supreme Court has 
struggled to identify those aspects of factual compilations that 
might reflect the original contribution of the copyright holders 
in such works.  See Feist, 499 U.S. 340.  Ultimately, the Feist 
Court determined that "[t]he only conceivable expression is the 
manner in which the compiler has selected and arranged the 
facts."  Id. at 349.  Because the creator of a collective work, 
like the creator of any compilation, has no rights in the 
component parts of his or her work, this same formulation 
applies.  In other words, the creators of collective works are 
entitled to rights in those works only to the extent that they 
have demonstrated creativity in selecting and arranging 
preexisting materials into an original collective whole.  See 
H.R. Report No. 94-1476, at 122 (explaining that publishers' 
"exclusive rights" extent "to the elements of compilation and 
editing that went into the collective work as a whole . . . ").  
It is this original contribution which gives a collective work 
its unique character, i.e., which makes it identifiable as "that 
collective work."

          Because compilations, and collective works, are 
characterized by the fact that they possess relatively little 
originality, defendants must walk a fine line in their efforts to 
revise their collective works.  Defendants are not permitted to 
place plaintiffs' articles into "new anthologies" or "entirely 
different magazine[s] or other collective work[s]," but only into 
revisions of those collective works in which plaintiffs' articles 
first appeared.  See H.R. Report No. 94-1476, at 122-23 (1976); 
see also Quinto v. Legal Times of Washington, Inc., 506 F. Supp. 
554 (D.D.C. 1981) (holding that law school newspaper could not 
authorize a separate District of Columbia newspaper to reprint an 
article originally published by the law school).  If defendants 
change the original selection and arrangement of their newspapers 
or magazines, however, they are at risk of creating new works, 
works no longer recognizable as versions of the periodicals that 
are the source of their rights.  Thus, in whatever ways they 
change their collective works, defendants must preserve some 
significant original aspect of those works -- whether an original 
selection or an original arrangement -- if they expect to satisfy 
the requirements of Section 201(c).  Indeed, it is only if such a 
distinguishing original characteristic remains that the resulting 
creation can fairly be termed a revision of "that collective 
work" which preceded it. 


     C.   Applying Section 201(c)

          Even to the extent that they accept that an electronic 
revision of a collective work is a theoretical possibility, 
plaintiffs insist that the technologies presently at issue "deal 
in individual articles and not in collective works."  (Pl.s' Mem. 
Supp. Mot. Summ. J. at 37.)  For instance, searches retrieve the 
full content of individual articles, and not of entire issues.  
The electronic defendants add coding to individual articles in 
order to facilitate Boolean searching.  Individual articles are 
stored as separate "files" within the system, where they exist 
alongside almost countless articles from numerous other 
publications.  Moreover, for the convenience of users, articles 
are supplemented to make them useful on a stand alone basis; 
headers appear with each article identifying the author, and the 
publication and page in which the article appeared.  In short, 
plaintiffs complain that defendants not only fail to preserve 
their collective works, they actively dismantle those works for 
purposes of electronically exploiting plaintiffs' individual 
contributions.

          1.   Aspects Of Defendants' Periodicals Preserved 
Electronically           

In order to evaluate plaintiffs' contention that NEXIS and the 
disputed CD-ROMs "remove everything that constitutes the 
originality" of the publisher defendants' collective works, it is 
necessary first to identify the distinguishing original 
characteristics of those works.  (10/17/96 Tr. at 38.)  To the 
extent that defendants' publications reveal an original selection 
or arrangement of materials, the Court must then determine 
whether these characteristics are preserved electronically.  This 
two step approach is closely analogous -- virtually identical -- 
to the analysis undertaken by those courts confronted with claims 
of copyright infringement brought by the creators of factual 
compilations.  See, e.g., Feist, 499 U.S. 340; Lipton v. Nature 
Co., 71 F.3d 464 (2d Cir. 1995); CCC Information Services, Inc. 
v. MacLean Hunter Reports, Inc., 44 F.3d 61 (2d Cir. 1994), cert. 
denied, 116 S. Ct. 72 (1995); Key Publications, Inc. v. Chinatown 
Today Publishing Enterprises, Inc., 945 F.2d 509 (2d Cir. 1991); 
Nester's Map & Guide, Corp. v. Hagstrom Map Co., 796 F.Supp. 729 
(E.D.N.Y. 1992).  

          In the compilation infringement context, courts begin 
by determining whether the plaintiff's compilation exhibits 
sufficient originality to merit protection; if there is 
sufficient originality in either selection or arrangement, it is 
necessary to determine whether these original elements have been 
copied into the allegedly infringing work.  Id.; see also 
Skinder-Strauss Associates v. Massachusetts Continuing Legal 
Education, Inc., 914 F. Supp. 665, 672 (D. Mass. 1995) ("If a 
party demonstrates that its compilation is sufficiently original 
to be copyrightable, he must further show copyright 
infringement . . . 'The plaintiff must . . . prove that the 
copying of copyrighted material was so extensive that it rendered 
the offending and copyrighted works substantially similar' as a 
matter of law.") (quoting Lotus Development Corp. v. Borland 
Intern, Inc., 49 F.3d 807, 813 (1st Cir. 1995)).  A finding that 
an allegedly infringing work copies original aspects of a 
protected compilation supports a finding of infringement.  There 
is no infringement where a defendant copies only the component 
parts of a protected compilation.  

          In the circumstances of this case, the same analysis 
leads to opposite results.  If the disputed periodicals manifest 
an original selection or arrangement of materials, and if that 

originality is preserved electronically, then the electronic 
reproductions can be deemed permissible revisions of the 
publisher defendants' collective works.  If, on the other hand, 
the electronic defendants do not preserve the originality of the 
disputed publications, but merely exploit the component parts of 
those works, then plaintiffs' rights in those component parts 
have been infringed.  That this Court's revision analysis mirrors 
the Supreme Court's compilation infringement analysis reflects a 
common concern permeating both areas.  Courts must ensure that 
the creators of factual compilations and collective works derive 
their rights solely from their original contributions, and that 
they not be permitted to usurp complete control over the 
component parts of their creations.  See 17 U.S.C.  103(b); see 
also Nimmer, 3.04[A], at 3-20-21 ("only that which is original 
with the copyright proprietor or his assignor may be protected by 
his copyright.").

          In Feist, a telephone utility company claimed that the 
defendant publishers infringed its copyright in a local "white 
pages" by incorporating the phone numbers and addresses listed in 
that directory into a larger phone book covering a broader 
geographic region.  Recognizing that the creator of a phone book 
cannot have any exclusive rights in the facts set forth in such a 
volume, the Court considered whether plaintiff had made any 
significant original contribution in creating its white pages.  
Though venturing that "the vast majority of compilations" would 
reflect sufficient originality in selection and in arrangement to 
merit protection, the Court concluded that "not every selection, 
coordination, or arrangement will pass muster."  Feist, 499 U.S. 
at 358-59.  Indeed, the plaintiffs' white pages were "entirely 
typical," merely providing an alphabetical listing of all of the 
phone numbers in a particular region.  Id. at 362.  Therefore, 
the Court held that defendant did not commit copyright 
infringement by copying the factual information set forth in 
plaintiff's directory.

          In other instances, as envisioned by the Court in 
Feist, the selection and arrangement of matter in assorted 
compilations has been sufficiently original to warrant copyright 
protection.  See, e.g., Lipton, 71 F.3d 464; Eckes v. Card Price 
Update, 736 F.2d 859 (2d Cir. 1984); Key, 945 F.2d 509; CCC, 44 
F.3d 61 (holding that computer data base provider infringed 
plaintiff's copyright in book of used car valuations by including 
same selection of vehicles and same price estimates in online 
system); Nester's Map & Guide Corp., 796 F.Supp. 729 (holding 
that publisher infringed plaintiff's copyright in a taxi driver's 
guide of New York City by producing competing guide copying 
plaintiff's selection and arrangement of street listings).  In 
Lipton, for instance, the Second Circuit held that defendant 
infringed plaintiff's copyright in a book of venery -- a guide of 
"collective terms for identifying certain animal groups" -- by 
releasing a compilation consisting of those very terms that 
plaintiff had selected for inclusion in his book.  71 F.3d at 
467.  In Eckes, the Court held that defendants infringed 
plaintiffs' copyright in a baseball card price guide by 
publishing a competing price "update" which listed essentially 
the same 5,000 cards that plaintiff's guide designated as 
"premium."  736 F.2d at 861.  These and other decisions highlight 
that "[t]he amount of creativity required for copyright 
protection of a compilation is decidedly small," and that the 
mere selection of information for publication can often times 
reflect sufficient originality to warrant copyright protection.  
Lipton, 71 F.3d at 470.

          Although relatively little creativity is required to 
give rise to an original selection or arrangement of materials 

within a compilation or collective work, great care is required 
to preserve that original selection or arrangement in a 
subsequent work.  In order to preserve an original selection of 
materials, for instance, a subsequent work must copy more than a 
"certain percentage" of those materials.  See Worth v. Selchow & 
Richter Company, 827 F.2d 569, 573 (9th Cir. 1987) (holding that 
defendants' trivia game did not copy original selection of facts 
included in plaintiff's trivia encyclopedia where defendant 
copied only a fraction of those facts), cert. denied, 485 U.S. 
977 (1988).  As the Second Circuit has put it, the subsequent 
work cannot differ in selection by "more than a trivial degree" 
from the work that preceded it.  See Kregos v. Associated Press, 
937 F.2d 700, 710 (2d Cir. 1991) (holding that defendant did not 
infringe plaintiff's form of baseball pitching statistics by 
devising a competing form including 6 of the 9 categories of 
statistics identified by plaintiff); see also Lipton, 71 F.3d at 
471 (finding that defendant's allegedly infringing work contained 
"essentially the same selection" as plaintiff's).

          One of the defining original aspects of the publisher 
defendants' periodicals is the selection of articles included in 
those works.  Indeed, newspapers and magazines are quite unlike 
phone books.  Far more so even than books of terminology or 
baseball card guides, selecting materials to be included in a 
newspaper or magazine is a highly creative endeavor.  The New 
York Times perhaps even represents the paradigm, the epitome of a 
publication in which selection alone reflects sufficient 
originality to merit copyright protection.  Identifying "all the 
news that's fit to print" is not nearly as mechanical (or 
noncontroversial) a task as gathering all of the phone numbers 
from a particular region.  Indeed, recognizing matters of 
interest to readers is a highly subjective undertaking, one that 
different editors and different periodicals undoubtedly perform 
with varying degrees of success.  

          The defendant publishers' protected original selection 
of articles, a defining element of their periodicals, is 
preserved electronically.  Articles appear in the disputed data 
bases solely because the defendant publishers earlier made the 
editorial determination that those articles would appeal to 
readers.  As a result, the disputed technologies copy far more 
than a "certain percentage" of the articles selected by the 
publisher defendants.  See Worth, 827 F.2d at 573; see also 
Kregos, 937 F.2d at 710.  Those technologies copy all of the 
articles which are selected to appear in each daily or weekly 
issue of The New York Times or Newsday or Sports Illustrated.

          Although they recognize that the complete content of 
all of the articles from each disputed periodical are available 
electronically, plaintiffs point out that those articles are 
stored alongside almost countless other articles that appeared in 
other issues of other periodicals.  This immersion into a larger 
data base does not automatically mean, however, that the 
defendant publishers' protected original selection is lost.  See 
CCC, 44 F.3d at 68 n. 8 ("The district court also believed that 
CCC did not infringe Red Book's original protected elements 
because CCC included Red Book's selection in a more extensive 
data base.  We disagree.").  Indeed, the electronic defendants 
avoid this risk by taking numerous steps to highlight the 
connection between plaintiffs' articles and the hard copy 
periodicals in which they first appeared.  For instance, users 
access plaintiffs' articles through data bases consisting only of 
those articles printed in a particular identified periodical, or 
particular periodicals.  More importantly, once an article is 
selected for review, that article is identified not only by 
author, but by the publication, issue, and page number in which 

it appeared.  Thus, the electronic technologies not only copy the 
publisher defendants' complete original "selection" of articles, 
they tag those articles in such a way that the publisher 
defendants' original selection remains evident online. 

          2.   Aspects Of Defendants' Periodicals Not Preserved 
Electronically

          According to plaintiffs, the electronic reproductions 
cannot reasonably be considered revisions of the publisher 
defendants' periodicals because significant elements of each 
disputed periodical are not preserved electronically.  Put 
differently, plaintiffs object to the Court's approach because it 
focuses upon that which is retained electronically, as opposed to 
that which is lost.  Most notably, aside from the image-based CD-
ROM, the disputed technologies do not reproduce the photographs, 
captions, and page lay-out of the defendant publications.  With 
these significant differences between the technological 
reproductions and the defendant publications, plaintiffs' 
position has a certain appeal.  There is no avoiding that much of 
what is original about the disputed publications is not evident 
online or on disc.  Ultimately, however, these changes to the 
defendant publishers' hard copy periodicals are of only 
peripheral concern to the "revision" analysis.

          By its very nature, a "revision" is necessarily a 
changed version of the work that preceded it.  As already 
explained, (Section IIIB2c, supra), Section 201(c) permits even 
major changes to collective works.  The framers of that provision 
sought to avoid the exploitation of individual articles, and did 
not intend to prevent publishers from reworking their collective 
works in significant ways.  In order to permit such reworking, 
while at the same time preventing changes to the substance of 
individual articles, Congress determined that publishers would 
have the leeway to preserve certain original aspects of their 
creations while discarding others.  In the words of Section 
201(c), Congress determined that publishers would be permitted to 
create "any revision" of their collective works.  The critical 
question for the Court, then, is not whether the electronic 
reproductions are different from the publisher defendants' 
collective works; it is inevitable that a revision will be 
different from the work upon which it is based.  The question for 
the Court is whether the electronic reproductions retain enough 
of defendants' periodicals to be recognizable as versions of 
those periodicals. 

          Because a collective work typically possesses 
originality only in its selection and arrangement of materials, 
it is to be expected that, in a revised version of such a work, 
either the selection or arrangement will be changed or perhaps 
even lost.  This is precisely what has happened here.  Lacking 
the photographs and page lay out of the disputed periodicals, 
NEXIS and "The New York Times OnDisc" plainly fail to reproduce 
the original arrangement of materials included in the publisher 
defendants' periodicals.  By retaining the publisher defendants' 
original selection of articles, however, the electronic 
defendants have managed to retain one of the few defining 
original elements of the publishers' collective works.  In other 
words, NEXIS and UMI's CD-ROMs carry recognizable versions of the 
publisher defendants' newspapers and magazines.  For the purposes 
of Section 201(c), then, defendants have succeeded at creating 
"any revision[s]" of those collective works.     

          The Court finds further support for its holding in the 
language of those compilation infringement cases that have 
already informed so much of the analysis in this decision.  In 

particular, a work that copies either the original selection or 
the original arrangement of a protected compilation is 
"substantially similar" to that compilation for copyright 
purposes.  See Key, 945 F.2d 514 ("If the Galore Directory is 
substantially similar to the 1989-90 Key directory with regard to 
that arrangement of categories or that selection of businesses, 
then a finding of infringement can be supported.") (emphasis 
added).  In other words, where a compilation possesses both an 
original arrangement and an original selection, a substantial 
similarity persists even where the original arrangement is 
sacrificed.  Id.  Thus, because the electronic data bases 
preserve defendants' original selection of articles, those data 
bases are "substantially similar," as a matter of law, to 
defendants' periodicals.  

          By invoking the "substantial similarity" test of the 
compilation infringement cases, the Court does not mean to 
declare a fixed rule by which a revision of a particular 
collective work is created any time an original selection or 
arrangement is preserved in a subsequent creation.  In certain 
circumstances, it is possible that the resulting work might be so 
different in character from "that collective work" which preceded 
it that it cannot fairly be deemed a revision.  The Court need 
not speculate or hypothesize as to this possibility, however, 
because the electronic reproductions do more than merely preserve 
a defining element of the publishers' collective works.  Those 
technologies preserve that element within electronic systems 
which permit users to consult defendants' periodicals in new ways 
and with new efficiency, but for the same purposes that they 
might otherwise review the hard copy versions of those 
periodicals.  Indeed, in the broadest sense, NEXIS and CD-ROMs 
serve the same basic function as newspapers and magazines; they 
are all sources of information on the assorted topics selected by 
those editors working for the publisher defendants.

          In sum, if NEXIS was produced without the permission of 
The New York Times or Newsday or Time, these publishers would 
have valid claims of copyright infringement against MEAD.  If 
"General Periodicals OnDisc" or "The New York Times OnDisc" was 
produced without the permission of The New York Times, that 
publisher would have a valid claim of infringement against UMI.  
In other words, absent a consideration such as fair use, the 
defendant publishers would be able to recover against the 
electronic defendants for creating unauthorized versions of their 
periodicals.  See 17 U.S.C.  107 (describing those circumstances 
in which the unauthorized creation of a substantially similar 
version of an original work is excused as "fair use").  The Court 
is unable to conclude that these electronic versions can be 
"substantially similar" to defendants' collective works for some 
purposes, without at least qualifying as "any revision[s]" of 
those works for present purposes.  17 U.S.C.  201(c).  This is 
particularly so in light of the fact that these technologies 
preserve this substantial similarity while retaining the basic 
character of the publisher defendants' periodicals. 

          3.   Section 201(c) And The Rights Of Authors

          Plaintiffs are adamant that a ruling for defendants in 
this case leaves freelance authors without any significant 
protection under the 1976 Act.  This result, according to 
plaintiffs, cannot be reconciled with the fact that the passage 
of Section 201(c) -- and the dismantling of indivisibility -- 
represented an important victory for individual authors.  

          As an initial matter, plaintiffs exaggerate the 
repercussions of this decision.  The electronic data bases retain 

a significant creative element of the publisher defendants' 
collective works.  In numerous other conceivable circumstances, 
Section 201(c) would apply to prevent the exploitation, by 
publishers, of individual articles.  The New York Times, for 
instance, cannot sell a freelance article to be included in 
Sports Illustrated.  See Quinto, 506 F. Supp. 554; see also H.R. 
Report No. 94-1476, at 122-23 (1976) ("the publisher could not 
revise the contribution itself or include it in a new anthology 
or an entirely different magazine or other collective work).  A 
magazine publisher cannot rework a featured article into a full 
length book.  Cf. Oddo v. Ries, 743 F.2d 630, 633-34 (9th Cir. 
1984) (explaining that magazine publisher did not acquire the 
exclusive right to rework plaintiff's published articles into 
book form).  And publishers cannot create television or film 
versions of individual freelance contributions to their 
periodicals.  Cf. Abend, 495 U.S. 207 (prohibiting film maker 
from creating movie version of story first published in a 
magazine without the permission of the author's successor in 
interest).  Though these scenarios are perhaps overshadowed by 
the seeming omnipresence of NEXIS and CD-ROM technology, authors 
remain protected under Section 201(c). 

          The Court does not take lightly that its holding 
deprives plaintiffs of certain important economic benefits 
associated with their creations.  This does not result from any 
misapplication of Section 201(c), however, but from modern 
developments which have changed the financial landscape in 
publishing.  In particular, on-line technologies and CD-ROMs did 
not begin to flourish commercially until the early to mid 1980s.  
Thus, when the Copyright Act was formulated, during the 1960s and 
early 1970s, the most immediate economic threat to freelance 
writers was not posed by computer technology, but by the sort of 
transactions described in the preceding paragraph -- e.g., the 
sale of articles between magazines, television adaptations of 
stories, etc.  Congress responded with a provision targeted to 
prevent such exploitation.  Publishers were left with the right 
to revise their collective works; a right then perceived to have 
only limited economic value, but a right that time and technology 
have since made precious.

          In sum, plaintiffs insist that the framers of Section 
201(c) never intended the windfall for publishers permitted under 
this Court's ruling.  This may well be.  If today's result was 
unintended, it is only because Congress could not have fully 
anticipated the ways in which modern technology would create such 
lucrative markets for revisions; it is not because Congress 
intended for the term revision to apply any less broadly than the 
Court applies it today.  In other words, though plaintiffs 
contend mightily that the disputed electronic reproductions do 
not produce revisions of defendants' collective works, 
plaintiffs' real complaint lies in the fact that modern 
technology has created a situation in which revision rights are 
much more valuable than anticipated as of the time that the 
specific terms of the Copyright Act were being negotiated.  If 
Congress agrees with plaintiffs that, in today's world of pricey 
electronic information systems, Section 201(c) no longer serves 
its intended purposes, Congress is of course free to revise that 
provision to achieve a more equitable result.  Until and unless 
this happens, however, the courts must apply Section 201(c) 
according to its terms, and not on the basis of speculation as to 
how Congress might have done things differently had it known then 
what it knows now.  See ABKCO Music, Inc. v. Stellar Records, 
Inc., 96 F.3d 60, 65 (2d Cir. 1996) ("what Congress may or may 
not do in the future to redefine [a copyright] term is not for us 
to speculate.").


                           CONCLUSION

          For the reasons set forth above, defendants' motion for 
summary judgment is GRANTED.  The Clerk of the Court is directed 
to enter judgment dismissing this action against the remaining 
defendants in accordance with this Opinion and Order.

SO ORDERED.

Dated:    New York, New York
          August 13, 1997


                                               Sonia Sotomayor
                                               ---------------

U.S.D.J.             


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