acquired, by contract, electronic rights in an article written by plaintiff Whitford and first published in the hard copy version of Sports Illustrated. In support of its argument, Time Inc. had invoked a provision of its written agreement with Whitford pursuant to which the publisher acquired "the exclusive right first to publish the Story in the Magazine." Tasini, 972 F. Supp. at 807 1997 WL 466520, at *3. Determining that the right of "first" publication could not reasonably be stretched into the right to be the first to publish a particular work in any and all mediums, the Court held that the disputed provision did not authorize Time Inc. to make Whitford's article available on NEXIS some 45 days following its initial hard copy publication.
Having found that Time Inc. failed to acquire electronic rights in Whitford's article pursuant to its selected contract provision, the Court considered whether Time Inc. -- along with those defendants who had not entered into enforceable contracts concerning rights in the disputed articles -- had nevertheless obtained those rights by statute. Ultimately, the Court determined that they had. All of the defendants had acted within the scope of their "privileges," under Section 201(c) of the Copyright Act of 1976, by creating electronic "revisions" of their collective works.
In their present motion, plaintiffs argue that the Court should have held in Whitford's favor directly upon rejecting Time Inc.'s contract claim. The Section 201(c) privileges, plaintiffs contend, "apply only 'in the absence of an express transfer of the copyright or of any rights under it . . .'" (Memo Recon. at 2 (quoting Section 201(c)).) Because there was an express transfer between Whitford and Time, Inc. -- and because defendants failed to show that this transfer reaches NEXIS -- plaintiffs contend the Section 201(c) privileges simply do not apply in favor of Time Inc. Thus, plaintiffs insist that the Court should have extended the specified statutory privileges only to the remaining defendants, none of whom had entered into any binding agreements concerning rights in the disputed articles.
A. The Court's Contract Holding
Plaintiffs' argument has considerable appeal, but it depends upon a misstatement of the Court's August 13 ruling. The Court did not, as plaintiffs suppose, find that "Whitford did not expressly transfer electronic rights in his article." (Memo. Recon. at 4.) Rather, the Court found that the particular contract provision invoked by Time Inc. -- the provision extending "first" publication rights to the publisher -- did not authorize the electronic republication of Whitford's article. Because only Time Inc. invoked its contract with Whitford, and because Time Inc. invoked only this provision, the Court was not in a position to announce any broader conclusion concerning the extent to which the remainder of the agreement did or did not reach questions of electronic republication.
The Court noted, however, in its August 13 Opinion, that at least two provisions in the contract between Time Inc. and Whitford potentially encompass rights extending as far as NEXIS. Tasini, 972 F. Supp. at 811 n.4, 1997 WL 466520, at 7 n.4. One provision, in particular, grants Time Inc. the following right in Whitford's article:
(c) the right to republish the Story or any portions thereof in or in connection with the Magazine or in other publications published by Time Inc. Magazine Company, its parents, subsidiaries or affiliates, provided that you shall be paid the then prevailing rates of the publication in which the Story is republished.