by Rob Carrigan

Some community newspapers, afraid of becoming the next TV antenna salesman, have quite correctly repositioned themselves as Internet “content developers.”

That transformation means putting out an electronic version in addition to their role as the local ink-on-paper press. But it also means a publisher’s need for better awareness of intellectual property laws.

This past June, the United States Supreme Court ruled that print publishers may not use material in online databases to which they previously obtained only print rights from independent contractors. By a 7-2 majority, the Court upheld a September 1999 unanimous ruling by the U.S. Court of appeals, 2nd Circuit in Tasini v. The New York Times. The decision basically found that The New York Times and other publishers violated copyright law when they resold freelance newspaper and magazine articles to databases such as LexisNexis without asking permission or making additional payments to the creator of those articles and photos.

The publishers’ lawyers argued that reselling to databases was covered under the “collective works” provisions of copyright law. They called the repackaging of content a “revision of that collective work.” The court disagreed and said it was a separate use.

“In accord with the Congress prescription, 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,” the Courts said in its decision.

The Tasini v. The New York Times decision has sent many publishers, large and small, scrambling to put in place “works for hire” contracts for freelance writers, photographers and other content developers. The 1976 Copyright Act as amended provides that copyright protection starts as soon as a work is created in a fixed form. The copyright immediately belongs to whoever created it.

“Although the general rule is the person who creates a work is the author of that work,” according to a government flyer produced by the United States Copyright Office, “there is an exception to that principle: the copyright law defines a category of works called ‘works made for hire.’ If a work is ‘made for hire,’ the employer, and not the employee, is considered the author.”

Therefore, the copyright belongs to the employer.

In the last five to 10 years, experts on intellectual property law have been warning publishers and freelancers to put in place written agreements that spell out who owns what rights before it becomes a problem.

“Whenever a work-for hire question is raised, freelance photojournalists should remember one simple thought,” Professor Michael D. Sherer of the University of Nebraska at Omaha advised in the November 1995 edition of News Photographer Magazine: “Unless one signs a written work for hire agreement, which effectively transfers copyright ownership to another party, the photographer retains the rights to the images.”

With no agreement in place with freelance writers, photographers and other content developers, publishers cannot legally reuse material that they did not specify as a works for hire relationship with the creator.

Rob Carrigan specializes in prepress systems for weekly newspapers. He is the publisher of the Ute Pass Courier in Woodland Park, the Gold Rush in Cripple Creek, and the Pikes Peak Journal in Manitou Springs, all Westward Communications Inc. weeklies in Colorado. He can be reached via e-mail at RCarrigan@aol.com.