Ownership of Work Included in a Compilation

Co-author, Gerald M. Levine

To have a work included in a compilation is a goal eagerly sought after by authors. It is a distinction for a story or article to appear in an anthology. What should the author be alert to? The question comes up in discussing digital aggregation of compilations in the context of authors’ rights under the Copyright Act. The answer is found in sections 103 and 201(c) of the Copyright Act as construed in decisions from the United States Court of Appeals for the Second Circuit and the Supreme Court.

Compilers and authors have complementary rights. Section 103 provides in pertinent part

The copyright in a compilation … 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. (Emphasis added)

Authors typically grant exclusive first publication rights to the compiler but non-exclusive rights thereafter. A non-exclusive right is not a transfer of rights under the Copyright Act. A “compilation” is defined in Section 101 as “a work formed by the collection and assembling of preexisting materials.” It includes “collective works” which are works “in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”

Section 201(c) of the Copyright Act is composed of two sentences. The first concerns the author; the second the compiler. The first provides: “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.” The second sentence defines the compiler’s rights:

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. (Emphasis added)

Legally, author and compiler have separate rights under the Copyright Act, but the compiler’s “privilege of reproducing and distributing the contribution” after its initial appearance is limited.

Imagine that an author has contributed a story to a compilation which is one of a series, for example a quarterly anthology of short stories. The compiler wishes to have the entire series made available to future readers by an electronic database provider. Essentially two scenarios can be envisioned. In the first, the compiler licenses the series of compilations (the archives) to a third-party who aggregates the material in electronic and CD-ROM databases without the author’s permission. The compiler assumes the “privilege” to license the individual stories in the compilation. In the second scenario, the compiler (also without permission) either creates or licenses the compilations for distribution in a format that duplicates the compilations page for page.

The first scenario was the subject of a case decided in favor of authors, Tasini v. New York Times, 206 F.3d 161 (2nd Cir. 1999), affirmed by the Supreme Court, 533 U.S. 483 (2001). The second was decided in favor of the compiler, Faulkner v. National Geographic Enterprises Inc., 409 F.3d 26 (2nd Cir. 2005). Authors win in the first case because section 201(c) does not permit the author of a collective work (the compiler) to license an individual contribution without the author’s agreement to “express[ly] transfer … [her] copyright.” The compiler wins when the medium of reproduction preserves the original format.

The author of an individual contribution to a collective work owns the copyright to that contribution. Any unauthorized reproduction and distribution generally infringes the copyright unless such use is specifically protected by the Act. There are two sides to this principle: Tasini illustrates one; Faulkner the other. In Tasini, individual contributors’ works were licensed by the compiler for inclusion in electronic databases. The presumption under section 201(c) is that the author of a short story (or article, as in Tasini) “gives the publisher the author’s permission to include the article in a collective work … [as well as] a non-assignable, non-exclusive privilege to use the article as identified in the statute.” The Court held that section 201(c) does not permit compilers (or, as in Tasini, publishers”) to license copyrighted works where they “may be retrieved individually or in combination with other pieces originally published in different editions of the periodical or in different periodicals.”

Putting its decision in context with Tasini, the Court in Faulkner emphasized the different factual circumstances between the two cases. “Crucial to our decision” (in Tasini) “was the fact that each article had to be retrieved individually from the particular database and made ‘available without any material from the rest of the periodical in which it first appeared’.” The Supreme Court held that “publishers are not sheltered by §201(c) 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.”

In contrast National Geographic did reproduce the back issues of the magazine “as part of the collective work to which the author contributed or as part of any ‘revision’ thereof’.” National Geographic is entitled to the § 201(c) “privilege” because it converted the “intact periodicals (or revisions of periodicals) from one medium to another.” The Court noted that

Each issue of the magazine was scanned two pages at a time into a computer system. As a result, the [complete digital collection] user sees exactly what he or she would see if viewing an open page of the paper version, including the fold of the magazine.

Having complete digital collections available for the reading public is valuable – individual works would otherwise be lost in the accumulation of newer works. However, to scan separate individual works into a database must be expressly agreed upon by each author to avoid exposure to liability for copyright infringement. A digital database should benefit authors as well as readers and compilers.

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