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09B indivisibility

Where to Look in the Law

1909 Act: Not yet recognized in law
1947 Act: Not yet recognized in law
1976 Act: §201(c)

What the Supreme Court Ruled


New York Times Co., Inc., et al. vs Tasini et al.

533 U.S. 483 (6-25-2001), appealed from United States Court of Appeals for the second circuit, 206 F.3d 161

“Respondent freelance authors (Authors) wrote articles (Articles) for newspapers and a magazine published by petitioners New York Times Company (Times), Newsday, Inc. (Newsday), and Time, Inc. (Time). The Times, Newsday, and Time (Print Publishers) engaged the authors as independent contractors under contracts that in no instance secured an author’s consent to placement of an article in an electronic database. The print publishers each licensed rights to copy and sell articles to petitioner LEXIS/NEXIS, owner and operator of NEXIS. NEXIS is a computerized database containing articles in text-only format from hundreds of periodicals spanning many years. Subscribers access NEXIS through a computer, may search for articles using criteria such as author and subject, and may view, print, or download each article yielded by the search. An article’s display identifies its original print publication, date, section, initial page number, title, and author, but each article appears in isolation—without visible link to other stories originally published in the same periodical edition. NEXIS does not reproduce the print publication’s formatting features such as headline size and page placement. The Times also has licensing agreements with petitioner University Microfilms International (UMI), authorizing reproduction of Times materials on two CD-ROM products. One, the New York Times OnDisc (NYTO), is a text-only database containing Times articles presented in essentially the same way they appear in LEXIS/NEXIS. The other, General Periodicals OnDisc (GPO), is an image-based system that reproduces the Times’ Sunday Book Review and Magazine exactly as they appeared on the printed pages, complete with photographs, captions, advertisements, and other surrounding materials. The two CD-ROM products are searchable in much the same way as LEXIS/NEXIS; in both, articles retrieved by users provide no links to other articles appearing in the original print publications.

“The Authors filed this suit, alleging that their copyrights were infringed when, as permitted and facilitated by the print publishers, LEXIS/NEXIS and UMI (Electronic Publishers) placed the articles in NEXIS, NYTO, and GPO (Databases).”

The decision cites §201(c) of the Copyright Act: “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.” 

The Court of Appeals held that “Section 201(c) does not authorize the copying at issue here… .

“Where, as here, a freelance author has contributed an article to a collective work, copyright in the contribution vests initially in its author. §201(c). Copyright in the collective work vests in the collective author (here, the Print Publisher) and extends only to the creative material contributed by that author, not to ‘the preexisting material employed in the work,’ §103(b). Congress enacted the provisions of the 1976 revision of the Copyright Act at issue to address the unfair situation under prior law, whereby authors risked losing their rights when they placed an article in a collective work… .  It would scarcely preserve the author’s copyright in a contribution as contemplated by Congress if a print publisher, without the author’s permission, could reproduce or distribute discrete copies of the contribution in isolation or within new collective works.”

The argument advanced by publishers and rejected by the courts was that the databases were merely revisions of the original editions (which would have permitted a reprint, albeit just one per article).  The explanation for this rejection was that: “The Databases first prompt users to search the universe of their contents: thousands or millions of files containing individual articles from thousands of collective works (i.e., editions), either in one series (the Times, in NYTO) or in scores of series (the sundry titles in NEXIS and GPO).  When the user conducts a search, each article appears as a separate item within the search result. … the Database does not reproduce and distribute the article ‘as part of’ either the original edition [where it was joined by material from nearby pages] or a ‘revision’ of that edition.  The articles may be viewed as parts of a new compendium—namely, the entirety of works in the Database… .  In the Databases, unlike microfilm, articles appear disconnected from their original context.  Unlike the conversion of newsprint to microfilm, the transfer of articles to the Databases does not represent a mere conversion of intact periodicals (or revisions of periodicals) from one medium to another.  The Databases offer users individual articles, not intact periodicals.”  (Microfilm reproduction was permissable under the circumstances, because the issue of “revision” did not arise.)  (All above quotations are from the summary provided by the Supreme Court)

The Supreme Court affirmed the opinion of the Court of Appeals:

“This copyright case concerns the rights of freelance authors and a presumptive privilege of their publishers. The litigation was initiated by six freelance authors and relates to articles they contributed to three print periodicals (two newspapers and one magazine). Under agreements with the periodicals’ publishers, but without the freelancers’ consent, two computer database companies placed copies of the freelancers’ articles—along with all other articles from the periodicals in which the freelancers’ work appeared—into three databases. Whether written by a freelancer or staff member, each article is presented to, and retrievable by, the user in isolation, clear of the context the original print publication presented… .

“The publishers are not sheltered by §201(c), we conclude, because the databases reproduce and distribute articles standing alone and not in context, not ‘as part of that particular collective work’ to which the author contributed, ‘as part of … any revision’ thereof, or ‘as part of … any later collective work in the same series.’  Both the print publishers and the electronic publishers, we rule, have infringed the copyrights of the freelance authors… .

“The authors registered copyrights in each of the articles.  The [New York] Times, Newsday, and Time (Print Publishers) registered collective work copyrights in each periodical edition in which an article originally appeared. The print publishers engaged the authors as independent contractors (freelancers) under contracts that in no instance secured consent from an author to placement of an article in an electronic database.

“At the time the articles were published, all three print publishers had agreements with petitioner LEXIS/NEXIS (formerly Mead Data Central Corp.), owner and operator of NEXIS, a computerized database that stores information in a text-only format. NEXIS contains articles from hundreds of journals (newspapers and periodicals) spanning many years. The print publishers have licensed to LEXIS/NEXIS the text of articles appearing in the three periodicals. The licenses authorize LEXIS/NEXIS to copy and sell any portion of those texts.”

The preceding arguments rested in part upon a 25-year-earlier change made in the copyright law that had introduced “divisibility” into an author’s rights where before he didn’t have such rights.  The Court explained:

“Prior to the 1976 revision, as the courts below recognized, authors risked losing their rights when they placed an article in a collective work.  Pre-1976 copyright law recognized a freelance author’s copyright in a published article only when the article was printed with a copyright notice in the author’s name.  When publishers, exercising their superior bargaining power over authors, declined to print notices in each contributor’s name, the author’s copyright was put in jeopardy.  The author did not have the option to assign only the right of publication in the periodical; such a partial assignment was blocked by the doctrine of copyright ‘indivisibility.’  Thus, when a copyright notice appeared only in the publisher’s name, the author’s work would fall into the public domain, unless the author’s copyright, in its entirety, had passed to the publisher.  Such complete transfer might be accomplished by a contract, perhaps one with a provision, not easily enforced, for later retransfer of rights back to the author.  Or, absent a specific contract, a court might find that an author had tacitly transferred the entire copyright to a publisher, in turn deemed to hold the copyright in ‘trust’ for the author’s benefit.

“In the 1976 revision, Congress acted to ‘clarify and improve [this] confused and frequently unfair legal situation with respect to rights in contributions.’  The 1976 Act rejected the doctrine of indivisibility, recasting the copyright as a bundle of discrete ‘exclusive rights,’ each of which ‘may be transferred … and owned separately,’ Congress also provided that ‘a single notice applicable to the collective work as a whole is sufficient’ to protect the rights of freelance contributors.”  (Citations removed; ellipses in original)

“In the instant case, the authors wrote several articles and gave the print publishers permission to publish the articles in certain newspapers and magazines. It is undisputed that the authors hold copyrights and, therefore, exclusive rights in the articles.”

The Supreme Court concluded: “We conclude that the electronic publishers infringed the authors’ copyrights by reproducing and distributing the articles in a manner not authorized by the authors and not privileged by §201(c). We further conclude that the print publishers infringed the authors’ copyrights by authorizing the electronic publishers to place the articles in the databases and by aiding the electronic publishers in that endeavor. We therefore affirm the judgment of the Court of Appeals.”

What the Lower Courts Ruled


Samuel D. Goodis & William Goodis vs United Artists Television and American Broadcasting Company

USCA 2nd Cir (3-9-1970) ¤ 425 F.2d 397

Dark Passage had been written as a novel (finished 1945), but was first published as a serial in the Saturday Evening Post magazine (July 20, 1946, to September 7, 1946).  Although author David Goodis (deceased father of the plaintiff) had contracted for publication in April 1946, he arranged to delay book publication until October 1946 so that he could accept the $12,000 paid by Curtis Publications for the serial rights.


images: (top) Humphrey Bogart and Lauren Bacall starred in the 1947 film of Dark Passage, from a story by David Goodis, who allowed for the movie in a contract; (bottom) David Janssen starred in the television series The Fugitive (which began 1963), the subject of this lawsuit.  Although bottom illustration is from Janssen’s prior television series, the actor brought the same outer calm and inner turmoil to The Fugitive.
This fact of magazine publication as first publication altered the balance of rights from how they worked when a sale of derivative-work rights is made from a novel first published as such.  The movie rights were bought (for $25,000) on December 20, 1945, by Warner Bros., which made a 1947 movie version starring Humphrey Bogart before selling most of its pre-1949 sound films (including this one) to a television distributor which was subsequently acquired by United Artists.  The rights sold to Warner Bros. were the basis of the sale of the rights to make a television series based on the story which was called The Fugitive and ran in prime time for four seasons on ABC starting in 1963.  The author of the novel (and, after his death, his son) sued, asserting that the television series was an infringement of the copyright in the story.  The courts were confronted with unusual issues.  Given that the novel had yet been published when the first sale took place, the author was at the least protected by common-law copyright, after which its publication—this one involving nationwide distribution of copies of a magazine—constituted the “divesting” publication that unquestionably terminated the author’s common-law rights.  Thereafter, statutory copyright was involved.  There was statutory copyright of the magazine, but it was in the name of the magazine, so the Court had to question whether that copyright brought about unintentional forfeiture owing to publication with copyright notice in the “wrong” name.  The author’s rights were protected by this copyright, and with this protection his agreements were binding.  There hadn’t been forfeiture, and thus the Court determined that there wasn’t to be any revocation of any aspect of the movie rights assigned to Warner Bros.

Goodis had recognized that the television rights given in the movie sale permitted the 1947 theatrical movie to be broadcast on television.  However, in the contract he had retained the exclusive right to “‘broadcast said Writings by television from performances by living actors’”.  “Appellant claims, however, that ‘any photoplay produced hereunder’ [quoting the Warner Bros. contract] does not encompass The Fugitive, a film series produced directly for television without any intention to show it in motion picture theaters.  I think a fair interpretation of the contract indicates that the grant of motion picture rights was sufficiently broad to include this use.”  The Court decided that The Fugitive was not in violation of the rights given Warner Bros.

Before reaching this conclusion, the Court had to grapple with the seeming precedent that the “doctrine of ‘indivisibility of copyright’… rejects partial assignments of copyrights and requires a proprietor or assignee of a copyright to hold nothing less than all the rights in a copyrighted work.  It is true that Curtis did not own all the rights in Dark Passage at the time it was first published; in fact, at that time Goodis and Warner Bros. had already contracted for the exclusive motion picture rights.

“We are convinced, however, that the doctrine of indivisibility of copyright is a judge-made rule which relates primarily to the requisite interest needed to bring an infringement action.  The most frequently cited policy for applying the indivisibility rule is to avoid multiple infringement actions, each brought by the holder of a particular right in a literary work without joining as co-plaintiff the author or proprietor of the copyrighted work… . But, regardless of the vitality of the individual theory as it applies to the question of standing to sue, we do not think it is determinative as to the requisite interest of a party who may act to obtain copyright… . [A]lthough we hold Curtis had sufficient interest to obtain copyright in behalf of Goodis, we express no opinion on whether a publisher in Curtis’ position could maintain an infringement action without joining the author.”

(EDITOR’S NOTE: The producer of the television series, the writer of the pilot episode, and the actor who played the antagonist all saw The Fugitive television series as to some extent a modern-dress version of Les Miserables, a classic 1862 novel by Victor Hugo (died 1885) already then in the U.S. public domain.  Although they turned to the novel for inspiration, these forays played no part in the initial conceptualization of the series, would have been irrelevant to the defense built by United Artists, and are not mentioned in the court verdict.)


Margaret M. Landon vs Twentieth Century Fox and CBS

USDC SDNY (11-13-1974)

The owner of rights to the original story of “Anna and the King of Siam” sued, contending that when Twentieth Century Fox made a television series for CBS (titled “Anna and the King”), they did not have the right to do so.  Fox had secured rights when they made a 1946 movie version, which they remade as the 1956 musical The King and I (with a Rodgers & Hammerstein score).  The Judge ruled that this case entailed the same issue as decided that the novel Dark Passage had legally been adapted as the television series The Fugitive.  (See separate listing, above.)


Douglas Faulkner, et al* vs National Geographic Enterprises Inc., Dataware Technologies Inc., National Geographic Society, National Geographic Interactive, Eastman Kodak Co., and National Geographic Holdings, Inc.

USCA 2d Cir (3-4-2005) ¤ 409 F.3d 26, 73 U.S.P.Q.2D (BNA) 1980

* The other parties to the case (not including their representatives) were David Robert Austin, David Hiser, David G. Allen (as successor in interest to Arthur Allen), Doranne Jacobson, Elizabeth Royte, Fred Ward, Jerome Jacobson, Joe Baraban, John Knoebber, Jon Krakauer, Louis Psihoyos, Pamela Wilson Sartorelli, Richard Conniff, Rick Rickman, Roger Hutchings, Sally Faulkner, and Sarah Leen

Freelance photographers whose photos had appeared in National Geographic magazine when it had been customary for the publication to be available in print for a month and thereafter be available only on microfilm, sued when the entire 108-year archive was issued on CD-ROM.  “Because of some contractual arrangements excluding electronic reproduction, approximately 60 out of 180,000 images have been blacked out … . None of these images are at issue in this case.”  The Appeals Court ruled that “With the exception of the specifically discussed works made by [two of the 18 photographers], we affirm” that they had a right to prohibit inclusion of their photos on the CD-ROM and/or to seek additional payment for them.




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