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I. Introduction
The advent of the printing press in 1455 by Johannes Gutenberg heralded a new era for the world. Some have said that Gutenberg, thanks to his invention, was the
most significant person of the past millennium.
Four authors, Agnes Hooper Gottlieb, Henry Gottlieb, Barbara Bowers, and Brent Bowers, ranked people of the previous millennium in accordance with a BioGraph system, which scored people
according to: 1) lasting influence; 2) effect on the sum total of wisdom and beauty in the world; 3) influence on contemporaries; 4) singularity of contribution; and, 5) charisma.2 Each
category was weighted from 10,000 to 2,000 points.3
Gutenberg, despite earning a measly 210 points out of 2,000 for charisma, beat out everyone from Christopher Columbus to Andy Warhol to top the list.4 While some may disagree with the Gottlieb/Bowers ranking, the Encyclopedia Britannica classes Gutenberg's printing press as "the most important technological advance" of the Renaissance era.5
For Gutenberg personally, his invention brought him a multitude of legal problems. Much of what we now know about Gutenberg comes from the numerous lawsuits filed against him by former
partners and creditors who either wanted in on the invention or a quick repayment of their investment.6
Though it is impossible to predict what will be the most important invention of the next millennium, the Internet has clearly earned its place in history. It is now the fastest growing
electronic technology in world history. While it took 46 years before 30 percent of the United States population adopted electricity; 38 years for 30 percent to adopt the telephone and 17
years for television - the Internet hit the 30 percent adoption rate in only 7 years!7
Two-thirds of Americans have already logged on with over 40 percent of non-users at least somewhat likely to log on in the next year. The Internet's capacity to carry information doubles
every 100 days.8 This new medium is unprecedented for connecting people - to each other, to information resources and to commerce. The United States Supreme Court has likened the Internet to "a vast library including millions of readily available and indexed publications and a sprawling mall offering goods and services."9
Law and the Internet
The Internet, likewise, has brought sufficient legal problems to foster the development of an entirely new body of law, cyberlaw. Practitioners of cyberlaw
must be conversant in areas ranging from contract to trademark law. This development is, of course, good news for lawyers, but may frustrate some and prompt them to want to dispatch with
lawyers as suggested in the title of this article.
One reason these Internet purists may be frustrated with lawyers is that "[t]he world wide web has progressed far faster than the law and, as a result, courts are struggling, to catch
up."10
The year 2001 found the courts issuing a myriad of cyberlaw decisions. While A&M Records v. Napster11 may have stolen the headlines, courts were busy on numerous other issues. Among these cases are two clarifying issues as to "new uses" for written works under copyright law; two cases considering issues of jurisdiction; one ruling limiting liability under the "safe harbor" provisions of the Digital Millennium Copyright Act; and two cases affecting online music. These seven cases give a sense of the overall development of cyberlaw and of the Internet.
In this article, I examine whether a grant of rights includes the new uses of electronic databases and e-books. A subsequent article will consider recent cases on the long-arm of Internet
law and the circumstances under which Internet Service Providers enjoy immunity in cases of copyright infringement. The final article in this series analyzes recent developments in
Internet music distribution and Internet radio.
II. New Use
What's in a name? That which we call a rose
By any other word would smell as sweet . . .
ROMEO AND JULIET, Act 2, scene 2
And that which we call a book or a newspaper or magazine article, if it shows up in another form will smell very sweet to the author who is now entitled to an additional payment for the
"new use." While that conclusion is not new, two cases consider what constitutes a "new use" and the specific contractual language used in transferring rights from
author to publisher to determine the extent of rights granted. In both cases, New York Times v. Tasini, 533 U.S. 483 (2001), and Random House v. Rosetta Books, 150 F. Supp.
2d 613 (S.D.N.Y. 2001), the courts found that the authors had only made a limited transfer of rights precluding the publishers from any "new use." Key to the holdings is the
determination that online databases and e-books are a "new use" and not an exempted revision of the original work under the Copyright Act.
New York Times v. Tasini.12 Between 1990 and 1993, six freelance authors wrote articles for the New York Times, Newsday, Time, and Sports Illustrated. These
articles were included in an online database owned and operated by LEXIS/NEXIS and in CD-Rom databases published by University Microsfilms International, "New York Times OnDisc" and "General Periodicals OnDisc."13
The database publishers were licensed in their endeavors by the appropriate publisher(s). At issue in the case was whether the newspaper and magazine publishers had the rights to the
relevant articles necessary for their inclusion in the databases.14
The publishers' argument was that they had the right to publish the articles in their newspapers and magazines in which were collective works and the inclusion of these articles in the
databases was authorized by ¤ 201(c) of the Copyright Act. Section 201(c) provides that "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."
The publishers had prevailed on a motion for summary judgment in the trial court. In that proceeding, the United States District Court for the Southern District of New York held that to be
a "revision" for the purposes of ¤ 201(c), the revised work only needed to "preserve some significant original aspect of [the collective work] - whether an original
selection or an original arrangement."15 The district court reasoned that copying all of the articles of the newspaper or magazine into the database preserved the
publishers "selection of articles."16
On appeal, the Second Circuit Court of Appeals disagreed. The court found that the articles were not a collective work covered by ¤ 201(c).17 The databases did not qualify as a "revision" of the original periodical. The court reasoned that ¤ 201(c) did not "permit a publisher to sell a hard copy of an author's article directly to the public even if the publisher also offered for individual sale all of the other articles from the particular edition." So that same section could not be used to allow a publisher to "achieve the same goal indirectly" through computer databases.18
The U.S. Supreme Court took up the issue and sided with the Second Circuit and the authors. Of import to the Supreme Court was the fact that the individual articles were presented by the
databases "clear of the context provided either by the original periodical editions or by any revision of those editions."19 The Court rejected the publisher's analogy that the databases were simply an electronic form of microfilm and microfiche. "Microforms typically contain continuous photographic reproductions of a periodical in the medium of miniaturized film. Accordingly, articles appear on the microforms, writ very small, in precisely the position in which the articles appeared in the newspaper."20
In the Court's view, the databases are more like a compendium with each article comprising a part of that compendium. "In that compendium, each edition of each periodical represents
only a miniscule fraction of the ever-expanding database."21 The Court went on to say that "[t]he database no more constitutes a "revision" of each constituent edition than a 400-page novel quoting a sonnet in passing would represent a Ôrevision' of that poem."22
One concern raised by the publishers was that a finding in favor of the authors could "punch gaping holes in the electronic record of history."23 This argument was joined by various historians including famed documentary producer Ken Burns. Burns filed an Amicus Curiae Brief with the Court in which he claimed that "the omission of these materials from electronic collections, for any reason on a large scale or even an occasional basis, undermines the principal benefits that electronic archives offer historians - efficiency, accuracy and comprehensiveness."24
The majority acknowledged this concern but noted that several other historians and the Author's Guild did not have the same foreboding as Mr. Burns and the publishers.25 However, the Court stopped short of issuing an injunction on including such freelance articles in electronic databases. Instead, the parties could enter into agreements allowing for such electronic publication and "if necessary the courts and Congress, may draw on numerous models for distributing copyrighted works and remunerating authors for their distribution."26 The remedial issues were remanded to the District Court.27
The Tasini issues were all matters of federal law. A similar case in Utah, therefore, would obtain the same result.
Random House v. Rosetta Books. One month after the Supreme Court ruled in Tasini, the U.S. District Court for the Southern District of New York issued a decision in Random House v. Rosetta Books,
150 F. Supp. 2d 613 (S.D.N.Y. 2001), holding that a grant of rights to "print, publish and sell the work[s] in book form" did not include the right to print, publish and sell in
e-book form.28
Rosetta Books publishes digital books on the Internet (e-books). In 2000 and 2001, Rosetta contracted with William Styron, Kurt Vonnegut, and Robert B. Parker to publish certain of their
works in e-book form. Random House, who published the authors works in printed form took exception to the deal and sued for copyright infringement.
Guiding the District Court in its determination of this matter was the specific contract language of Random House's contracts with the authors and Second Circuit case law "about
whether licensees may exploit licensed works through new marketing channels made possible by technologies developed after the licensing contractÑoften called Ônew use' problems."29
The two leading cases on "new use" problems are the 1968 case of Boosey and Bartsch v. Metro-Goldwyn-Mayer, Inc.,30 and the 1998 decision in Boosey and Hawkes.31
Boosey and Bartsch concerned the grant of rights the author of the play "Maytime" made to Harry Bartsch in 1930. In addition to licensing the motion picture rights throughout the world, the contract with Bartsch (who transferred the rights to Warner Brothers Pictures which transferred them to MGM) also included the right to "copyright, vend, license and exhibit such motion picture photoplays throughout the world; together with the further sole and exclusive rights by mechanical and/or electrical means to record, reproduce and transmit sound, including spoken words. . . ."32 In 1958, "Maytime" was licensed for television broadcast. Ten years later, the Court found that the grant of rights language was broad enough to cover the new use.
A similar result was reached in Boosey and Hawkes in 1998. In this case, the rights holder to the musical composition, "The Rite of Spring" by Igor Stravinksy claimed that the 1939 license to include the music in the Disney movie "Fantasia" did not cover the video rights.33 Disney, the licensee, had been granted the right "to record in any manner, medium or form, and to license the performance of, the musical composition [for use] in a motion picture."34 Once again, the court found that the grant of rights was broad - broad enough to cover the video release.
So how did Random House do in claiming that its right to publish in "book form" included e-books? Not as well as MGM or Disney. The first problem for Random House was that the
court found that neither Boosey nor Bartsch was controlling in the instant case. Those cases dealt with new uses within the same medium.35 The digital books36 contracted for by Rosetta Books were deemed to be a separate medium from the original books.37
An even greater problem for Random House, however, was the fact that its contract with each author was not for the broad right to "publish, print and sell" in "book
form" without elaboration. The Random House contracts were much more specific in obtaining "rights to publish book club editions, reprint editions, abridged forms, and editions
in Braille."38 To make matters worse for Random House "each of the authors specifically reserved certain rights for themselves by striking out phrases, sentences, and paragraphs of the publisher's form contract.
Critical to the outcome of this case was the district court's application of New York contract law to determine that the authors, in striking out phrases, sentences, and paragraphs,
evidenced an intent not to grant the publisher the broadest rights in their works."39
In New York, as in Utah, "a written contract is to be interpreted so as to give effect to the intention of the parties as expressed in the contract's language."40 The contract must be considered in its entirety and all parts reconciled. Utah law is consonant with these principles of contract interpretation.41
The determination of whether an ambiguity exists is a question of law in both New York and Utah.42
There is a very slight difference in New York's and Utah's approaches to determining whether ambiguity exists. New York requires that a contract be capable of more than one meaning when
read "by a reasonably intelligent person who has examined the context of the entire integrated agreement and who is cognizant of the customs, practices, usages and terminology as
generally understood in the particular trade or business."43 Utah law allows for an ambiguity "where the language is reasonably capable of being understood in more than one sense."44 "However, a contract provision is not necessarily ambiguous just because one party gives that provision a different meaning than another party does. [citations omitted] To demonstrate ambiguity, the contrary positions of the parties must each be tenable."45 Both New York and Utah law allow for extrinsic evidence were there is an ambiguity.46
This different approach in determining whether a contract is ambiguous is not a factor in the case at hand. The authors clearly did not grant all rights to Random House.
III. Summary and conclusion.
The common thread in the Tasini cases and Random House was that none of the authors in question had made a broad grant of rights to the publishers. These cases clearly demonstrate the need for attorneys who prepare agreements on behalf of authors or publishers to remember that technology changes. While no one has a crystal ball, everyone should be able to specify exactly what rights are affected in a license agreement, whether it is a broad grant of rights or something more limited.
The legal problems faced by Gutenberg had more to do with rights to his invention and paying his creditors, not with whether authors could collect an additional royalty for the printing of
their works. But Gutenberg would undoubtedly be sympathetic to those who find themselves in court sorting out the legal issues fomented by new technology.
Footnotes
1 William Shakespeare, The Second Part of King Henry the Sixth, act 2, sc. 2.
2 Agnes Hooper Gottlieb, et al., 1,000 Years, 1,000 People: Ranking the Men and Women Who Shaped the
Millennium, ix, (1998).
3 Lasting influence - 10,000 points; Effect on the sum total of wisdom and beauty in the world - 5,000 points; Influence on contemporaries - 4,000 points;
Singularity of contribution - 3,000 points; Charisma - 2,000 points. Id.
4 Id.
5 "Europe, history of" Encyclopædia Britannica Online, available at
http://search.eb.com/ bol/topic?eu=108599&sctn=15&pm=1 (last visited January 12, 2002).
6 Gottlieb, et al. supra and "Gutenberg, Johannes" Encyclopædia Britannica
Online available at http://search.eb.com/bol/topic?eu=39381&sctn=3 (last visited January 12, 2002).
7 UCLA Center for Communication Policy, UCLA Internet Report: Surveying the Digital Future, 5 (2000)
8 Id. at 4, 10.
9 Reno v. ACLU, 521 U.S. 844, 863 (1997).
10 CoStar Group Inc. v. LoopNet Inc., 164 F. Supp. 2d 688, 693 (MD. 2001)
11 239 F.3d 1004 (9th Cir. 2001)
12 The Tasini line of cases includes the U.S. District Court case, Tasini v. New York Times,
972 F. Supp. 804 (2d Cir. 1997); the Second Circuit reversal of the District Court judgment, Tasini v. New York Times, 206 F.3d 161 (2d Cir. 1999) and the U.S. Supreme Court's
affirmation of the Second Circuit Court's ruling, 533 U.S. 483 (2001). These cases will be referred to as Tasini I, Tasini II and Tasini III, respectively.
13 New York Times v. Tasini (Tasini III), 533 U.S. 483, 509-10 (2001).
14 Id. at 508.
15 Tasini v. New York Times (Tasini I), 972 F. Supp. 804, 821 (S.D.N.Y. 1997).
16 Id. at 823.
17 Tasini v. New York Times (Tasini II) 206 F.3d 161, 167-170 (2nd Cir. 1999).
18 Id. at 168.
19 Tasini III, 533 U.S. at 516.
20 Id. at 516-17.
21 Id. at 516.
22 Id.
23 Id. at 519.
24 Id. at 528-29, quoting Brief for Ken Burns et al. as Amici Curiae 13.
25 Id. at 519.
26 Tasini III, 533 U.S. at 519.
27 Id. at 519-520.
28 Random House v. Rosetta Books, 150 F. Supp. 2d 613, 614 (S.D.N.Y. 2001).
29 Id. at 618 (quoting Boosey & Hawkes Music Publishers, Ltd v. Walt Disney Co. 145 F.3d 481, 486 (2d Cir. 1998)).
30 391 F.2d 150 (2d Cir. 1968).
31 145 F.3d 481 (2d Cir. 1998)
32 Boosey and Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F. 2d 150.
33 Disney released "Fantasia" on video in 1991.
34 Boosey and Hawkes, 145 F.3d at 484.
35 Random House, 150 F. Supp. 2d at 623.
36 Defined as "electronic digital signals sent over the internet." Id. at 622.
37 Id. at 622.
38 Id. at 620.
39 Id.
40 Id. at 618. See Dixon v. Pro Image, Inc.,
987 P.2d 48 (1999). "’In interpreting a contract, the intentions of the parties are controlling.' Winegar v. Froerer Corp., 813 P.2d 104, 108 (Utah 1991). If the contract is
written and the language employed is not ambiguous, the parties' intentions are determined from the plain meaning of the language."
41 Plateau Mining Co. v. Utah Division of State Lands and Forestry, 802 P.2d 720, 725 (Utah 1990).
42 Random House, 150 F. Supp. 2d at 618; Dixon, 987 P.2d at 52.
43 Random House, 150 F. Supp. 2d at 618.
44 Dixon, 987 P.2d at 52.
45 Plateau Mining Co., 802 P.2d at 726.
46 Random House, 150 F. Supp. 2d at 618; Dixon, 987 P.2d at 52.
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