The long saga of the Electronic Databases Copyright Litigation (a class action originally launched in the New York courts in 2000, and consolidating several actions, including one launched by Jonathan Tasini) is finally approaching its denouement.
It illustrates both the perennial need for vigilance in managing the business of commissioning freelances, and the globalisation of rights licensing, and shows that UK-based publishers are not immune to the long arm of the US class action lawsuit.
Securing adequate rights from freelance journalists has always been critical for newspaper and magazine publishers. The increasing demand for new ways of accessing material – through websites, more recently by means of ‘e-papers’ (searchable electronic facsimile versions that mimic the printed page) and now via mobile applications, has only thrown this into greater relief.
In a dynamic environment in which new methods of distributing material are constantly emerging, publishers have found that it is no longer adequate to rely on telephone conversations between commissioning editors and journalists, or on any prior ‘course of dealing’. Commissioning procedures have been tightened up and indeed, in some cases, automated – using new technology to improve consistency and record-keeping.
But the US class action is a reminder that for many publishers these issues have a global dimension.
Although the litigation was solely concerned with the alleged infringement of US copyright in the literary works of freelance journalists, many United Kingdom newspaper and magazine publishers have been drawn into a consideration of the issues.
This is because material originally commissioned by them from freelances had been supplied or syndicated to US database publishers, who will have distributed or displayed the material in electronic form.
In 2001, the parties to the class action were ordered to enter into mediation. It is now clear that the result of this is likely to be a settlement in which UK newspaper publishers or their parent companies are potentially capable of participating.
Many newspaper and magazine publishers will have amended their commissioning terms to include the right to store and display commissioned material on electronic databases, and to authorise others to do the same. However, these amendments will not serve to release all claims under the class action, which relate to material displayed or distributed on electronic databases since 1997 (including material created before that date). So publishers may need to consider their position once the settlement terms become clear.
The specific implications of the class action and its settlement will prove relatively transient.
Nevertheless, it exemplifies the recurrent need to secure rights in respect of new forms of exploitation of commissioned works, and illustrates particularly starkly how some commissioned material has become a global commodity.
As such it serves as a reminder that publishers need to review their commissioning terms on a regular basis and, if necessary, adjust them, to ensure that they have all the rights they need to meet the needs of their business.
Peter Wienand is a partner in the Intellectual Property Team at Farrer & Co