Publication Date

September 1, 2001

Perspectives Section




Most historians never have the opportunity to get involved in Supreme Court cases. But to anyone considering joining an amicus brief, historian Jack Rakove (Stanford) offers words of caution. "If you want to preserve your authority, you have to be careful and talk about things you know."

Rakove is chastened by his recent experience joining a brief in support of publishers in the case of The New York Times v. Tasini, which pitted a group of freelance writers against several large publishing companies. Historians spoke out on both sides. Some defended the rights of writers, while others argued for the importance of complete electronic archives. Like many historians, Rakove wasn’t fully aware of the high stakes of intellectual property rights in the electronic age.

The advent of electronic publishing has created vast new domains where intellectual property rights may be claimed and forfeited. As the sale and distribution of electronic information becomes increasingly widespread, historians and other scholars need to confront the marketplace of ideas in new ways. Like freelance writers, historians must negotiate in a world where their ideas may circulate more freely and widely than ever before, but where keeping control of such distribution is increasingly difficult.

We are in the midst of a broad legal and economic transition, contends Stanley Katz of Princeton University, a historian who has published articles and taught courses on intellectual property. Nations now argue over who owns "the information product" the way they used to argue about ownership of oil or mineral wealth. With growing possibilities for profiting from the sale of information—even articles written by academic historians—rights holders make increasingly broad claims to ownership, often at the expense of users of information. "People with enormous economic power are trying to lock in rights," Katz said.

In Tasini, the Supreme Court struck a blow against publishing Goliaths by ruling that publishers who sold their products to electronic databases violated the rights of freelance authors who had not explicitly granted permission for such use. The ruling implies that publishers owe compensation to freelance writers whose work was published between 1980 and about 1995. Immediately after the court’s decision, the New York Times—as well as Lexis-Nexis and other publishers involved in the lawsuit—began deleting articles by freelance writers. The Times insists that they must do this in order to protect against “claims of willful infringement,” but the parties in the case are discussing an out of court settlement that could reinstate the excised articles.

This was exactly the eventuality Rakove and several other scholars had sought to prevent when they joined an amicus brief for the publishers. The historians' brief—known as the "Burns" brief because documentary filmmaker Ken Burns's name appeared first—predicted that if the writers won, publishers would excise their articles from electronic databases, thus rendering them incomplete and unreliable as archives. A decision in favor of the authors "threatened both the integrity of this nation's historical record and the public's access to it," they wrote.

Rakove said he joined the brief because he believes historians "have a stake in guaranteeing that as electronic archives are created, they be as full as possible." He wanted to help make the "argument about the integrity and completeness of the historical records as we move toward a new conception of archiving." He was solicited to join by the Washington law firm Morgan, Lewis & Bockius, which sent him materials on the case and the brief, already signed by scholars Doris Kearns Goodwin, Richard N. Goodwin, and David McCullough.

Dismayed that the Burns brief might be understood to represent a consensus among historians, a different group of historians, led by Katz and Ellen Schrecker (Yeshiva), filed a counter brief. Conceding that archival preservation is an immense problem for the country, their brief argued that "the answer to preserving archives is to allocate the money and resources necessary to the task, not to sacrifice the legal rights of freelance writers to this supposed greater good." In other words, honoring the freelance writers' copyright ownership is more important than preserving the integrity of commercial databases that, in any event, are of limited use to historians.

"I was quite angry when I saw the so-called historians' brief," said Katz, who felt "it was particularly important for a group of historians to speak out on the other side."

The counter brief took shape when Schrecker, a former member of the National Writers Union (NWU) was informed of the Burns brief by an NWU colleague. Schrecker (who is also currently editor of Academe, the bimonthly published by the American Association of University Professors), in turn, helped recruit Katz and several others, many of whom are known for their work in the history of organized labor and the left.

Rakove himself now wishes he had understood the nuances of the case before he took a position. In retrospect, he realizes that the law firm had supplied him incomplete information about the case. "Maybe I was naive," he said. Having been apprised of the writers' side of the case by several colleagues, he now realizes that "a lot of this is being driven by the economics of it, not by the general concern about archival issues."

Responding to growing opportunities to distribute publications electronically, publishers have increasingly turned to "all rights contracts" that ask writers to grant permission to use their work in all existing formats and all formats not yet invented or imagined. In fact, the New York Times has used such contracts since the mid 1990s, making the Tasini decision relevant only for writers whose articles were published before that point.

Scholarly journals, including the American Historical Association's American Historical Review, have also adopted all rights contracts. Katz—who as the AHA’s vice president for research (1997-2000) was active in developing the History Cooperative, which publishes the AHR online—acknowledged that the AHA is itself “part of the phenomenon of getting increasing rights. We can’t publish electronically unless we have those permissions.”

Until recently, writers publishing in the AHR were given a simple choice—retain the copyright or give it to the AHA. Marking the changing times, the AHR contract now consists of five paragraphs of dense legalese. Retaining copyright is no longer an option; authors must either transfer all rights to the AHA or publish elsewhere. (The contract also stipulates that when the AHA sells an article to a profit-making venture, proceeds will be split between the two parties.)

"All rights" contracts provide protection for publishers, but it is unclear how writers benefit by signing away control and, in many cases, claims to royalties. Writers' trade groups, including the National Writers Union and the Authors Guild, are currently involved in lawsuits protesting all rights contracts. "Contracts are about exchange," said Dian Killian of the NWU. Publishers that insist on all rights contracts are "putting a gun to writers' heads. There needs to be some give and take."

"We would encourage all writers not to sign those kinds of contracts," Killian said. "Even more so if you're not being paid. I know people want tenure; I know they want to see their works in print." But writers should also participate actively in defining the terms under which their work is published. "Once you sign over copyright," she said, "you lose control."

Lately, however, universities have sought to claim ownership of faculty's work under the doctrine of "work made for hire." This is the idea that when people create products in their capacity as employees, the employers retain the rights. For instance, when newspaper employees write articles, the newspaper holds the rights, not the author. Translated to the humanities, this would imply that when a history professor writes a book, the university automatically retains the copyright under the claim that it was "work for hire."

This has become a particularly live issue in the field of distance education. Not surprisingly, when there is money to be made—in this case through marketing courseware developed by faculty—conflicts over intellectual property rights become more pointed. For an article examining such conflicts, see James I. McNelis, III, "The Goose and the Golden Egg," Perspectives, April 2001.

In Tasini, the court found that freelance writers retained their copyright, even when publishers sold their articles to certain commercial electronic databases. Despite its far-reaching implications, Tasini was decided on a very narrow point of legal interpretation. Stanford University law Professor Paul Goldstein, who worked on the Supreme Court appeal on behalf of the authors, emphasized that “it would be dangerous to extrapolate any general proposition” from the ruling. It was not a sweeping statement about the rights of publishers and creators.

The decision rested on the court's interpretation of the word "revision." The salient clause of the Copyright Act of 1976 holds that publishers have a right to produce "revisions" of a publication. However, when publishers want to create a new product, their original agreements with writers are not binding. The court found that databases such as Lexis-Nexis were not revisions but were, instead, new products requiring new agreements with authors.

In their roles as readers and researchers, historians may be comforted to know that the Tasini ruling probably does not affect JSTOR, a large electronic archive of scholarly journals funded by the Mellon Foundation. “The decision only solidifies [the perception] that the commercial databases are very different from JSTOR,” said Heidi McGregor, director of publisher relations at JSTOR.

The court cited microfilm as an example of a revision of an existing product. "JSTOR is more similar to microfilm," McGregor explained. "The whole purpose is to act as an exact replication of the journal issues." Unlike Lexis-Nexis and other commercial databases, JSTOR includes blank pages, advertisements, and illustrations. Said McGregor, "They're scanned pages. They look and feel just like the journal."

According to the Supreme Court, this may be the distinction that makes all the difference.

In the meantime, as the parties in Tasini work to negotiate an out-of-court settlement, the NWU’s proposed solution is that publishers use its Publication Rights Clearinghouse (PRC) as a mechanism for ensuring that royalties are paid to freelance writers. The clearinghouse draws its model from the music industry, where trade organizations (BMI and the American Society of Composers, Authors, and Publishers, or ASCAP) have overseen the distribution of royalties to musicians for decades.

Killian, who directs the PRC, said if the Times would identify the freelance authors who are owed royalties, the PRC would act as a mediator to track down authors. “It’s perfectly workable,” she said, “the only reason that they’re not interested in it is greed; they just want to keep all the money for themselves.” For its own part, the Times will not discuss its position but says in a statement on its Web site that “any voluntary settlement agreement . . . must balance the interests of the writers and the publishers, as well as the public’s interest in having a readily accessible, comprehensive historical archive available to it.”

Law professor Goldstein offers some historical perspective. He argues that the Tasini case represents grievances that transcend both time and medium. “Go back to the turn of the century,” he said. In 1914, composer and musician Victor Herbert was upset by “the prospect of dance halls and saloons and radio broadcasting” playing his music without remitting royalties. To solve the problem, Herbert helped found ASCAP, which continues to oversee distribution of royalties to creators of music. “From the point of view of the copyright owners, it’s really the same,” Goldstein said. When he saw his work on Lexis-Nexis, Jonathan Tasini faced “the same dismal prospect” as Herbert did. And, like Herbert, Tasini became “an activist who got rights recognized.”

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