Now that the U.S. Supreme Court has weighed in on the New York Times Co., Inc. v. Tasini dispute, what happens next? The Supremes punted on the remedy, choosing to remand the question for the District Court to consider. And remember, the District Court previously sided with the Times. Care to make predictions on the remedy? Even Judge Patel might have difficulty with this one.

The law has a rough time keeping up with technological advances. From railroads to airplanes, telegraph to telephone, newspaper to television, courts have grappled with applying prior legal concepts to the next generation of technology.

Technological advances in the Digital Age are particularly troublesome because they are often years ahead of the laws that courts must apply to them. Consequently, uncertainty exists when it concerns online rights. And, when the parties push a dispute over online rights through the courts, no one can accurately predict who the winner will be.

Filed by freelance authors, the plaintiffs argued that The New York Times did not have the right to convert stories from the Times print media into digital databases without permission; that release agreements signed by the authors did not cover the new technology; and, therefore, the Times had engaged in actual, culpable copyright infringement. The Times argued that it had the rights to the 'collective work' and that placing the content in digital format was a revision, which is privileged under the Copyright Act.

Who is right? The District Court hearing the case sided with the Times. The court of appeals and the U.S. Supreme Court in a 7-2 opinion sided with the authors. A strong dissent by Justice Stevens argued that the digital expression was merely a revision of the collective work. Not an easy case to predict.

Following the decision, publishers fearing that they could face additional liability if they didn't take action, began the process of purging the freelance articles from electronic databases. the Times reports about 115,000 articles at risk, and CNN, The Standard, CNET and the Boston Globe among others, ran stories that contemplated the impact of removing the articles from view. In time, we will learn the consequences of purging the many articles, and whether it re-writes history as some have predicted.

In the opinion, Justice Ginsburg suggested that the Times obtain the authors' consent to continue publishing the digital content. There is a certain amount of common sense to this approach. By obtaining the necessary releases, the content can remain without risking liability.

Apparently, the Times tried it. Jonathan Tasini, president of the National Writers Union has threatened The New York Times with additional litigation concerning the newspaper's request that the authors sign retroactive releases to keep the articles available online. In fact, a rally of writers is planned for July 19. The demonstration's purpose is to raise awareness that authors need to negotiate compensation for the online articles, and that they should not give up their rights without compensation.

On the one hand, the authors have a legitimate gripe that they should be compensated if the Times reproduces their work without permission. On the other hand, the Times feels that it already has paid appropriate compensation, and that the articles have become part of the collective work of the Times. But, this is a symbiotic relationship: The Times needs content to sell papers; the freelance journalists need a place to publish. So, is there a winner? And, will writers be blacklisted as suggested by Wired? Or, will the Times lose quality as authors refuse to sign releases?

Prior to the Digital Age, there were few ways that content could be reproduced: newspapers, magazines, microfiche, photocopy, etc. Each of these means of display maintained the context of the article, which the Supreme Court deemed important in weighing the competing copyright theories: layout, advertising, appearance, etc. If the Times had been able to reproduce context, the case, might have been decided in its favor. And, perhaps the next technology will allow for full text searches and retrieval that preserves the context the Court thought critical. Today, however, copyright law created in the age of the photocopier laid waste to digital reproduction.

Pre-Digital Releases

Under the Copyright Act, all of an author's rights are retained except for those rights that are licensed or assigned to others. A license grants use to another for a limited time or purpose. Generally speaking, an assignment transfers all of the author's rights to another. So, in a symbiotic relationship between author and publisher, the author grants rights in the article to the publisher for a fee and the notoriety that comes with the publication, and the publisher has the right to control the article's publication. Because rights not transferred are retained by the author, if the license is for use only in print media, the article cannot later be broadcast over the radio or reproduced digitally.

Since the filing of the Tasini case in 1993, most publishers have asked authors to sign releases that encompass digital reproduction and any other technological development. Releases signed prior to 1993 need to be reviewed on a case-by-case basis. If today's headlines are any indication, courts are not comfortable giving publishers carte blanche to convert printed works into digital content without obtaining additional permission from the authors. (See, 'Judge Grants Authors a Victory in Fight Over Digital-Book Rights')

While this may be a victory for authors' rights, I must admit that I prefer to run an online search than scan a newspaper with a highlighter. But, I'm not unsympathetic to the plight of authors whose works are often exploited without permission.

Remedies?

While the Tasini decision continues to make good cocktail conversation, the next issue to be decided is the appropriate remedy. What scope of relief are the aggrieved freelancers entitled to receive? What is a decade-old article worth? Undoubtedly, the publishers will have to pay something for the past copyright infringement, or obtain the authors' permission to republish without payment. We know that this latter action may provoke a second suit as threatened by Tasini.

In the mean time, publishers and authors would do well to pay particular attention to the legal forms they sign. Are they giving and getting the rights they want?

Ultimately, the district court will decide what is fair and just. That aspect of the litigation is just beginning to take shape. Predictions, anyone?