By Mickey H. Osterreicher
NPPA's general legal counsel
BUFFALO, NY (July 8, 2008) – The full 11th U.S. Circuit Court of Appeals in Atlanta - along with the 2nd Circuit in New York - handed down rulings last week in copyright cases that have been going on for over a decade. Those decisions in Greenberg v. National Geographic Society (NGS) find in favor of NGS, allowing magazine and newspaper publishers to create and sell electronic archives (CD-ROM/DVD) of their previously published works without infringing on the copyrights of the contributors to those works.
The decisions handed down on June 30 now resolve the conflicting opinions previously issued in the 11th Circuit (which ruled against NGS) and the 2nd Circuit (which ruled in favor of NGS) and unifies into one holding the opinion that current copyright law permits a publisher to create revisions of existing works and/or to reproduce a collective work in a new format (such as electronically or on a CD-ROM/DVD) even if some new material has been added to the product, without permission by (and compensation to) the freelance photographers and/or writers who created the original work.
In the two opinions delivered on June 27 by the 2nd Circuit, involving breach-of-contract claims against NGS, the New York federal appellate panels affirmed the lower trial court’s grant of summary judgments in favor of NGS and against those freelance photographers who had claimed that they were owed additional royalties for the use of their copyrighted work in “The Complete National Geographic” (CNG).
Historically, the first suit was commenced in federal district court in New York in 1997 by photographers Douglas Faulkner, Louis Psihoyos, and Fred Ward (Faulkner v. National Geographic Association) after NGS produced and sold a 30-disc CD-ROM set called CNG. It was a digital version of all the past issues of National Geographic magazine going back 108 years. The CD-ROMs contained copies of the magazine’s pages exactly as they were published in print, displayed two pages at a time and in the same order as the original magazine, along with a new introduction and a program that allowed users to search for specific content.
The second case began in federal district court in Atlanta in 1998 and was commenced by photographer Jeffrey Greenberg (Greenberg v. National Geographic Society, et al) (referred to as Greenberg I) based on the same underlying facts.
In both cases, the plaintiffs alleged that NGS violated Section 201c of the Copyright Act because it did not obtain their permission to use these works other than in the original publication. The New York Court found for the defendant, NGS, holding that there was no copyright violation because it deemed the CNG compilation to be an allowable revision of the original printed publications in electronic format. The federal district court in Georgia also ruled in favor of NGS, relying on the 1997 decision in New York district court in the watershed case of Tasini v. New York Times Co. The Tasini lower court had held that the re-use of freelance writers’ work on databases and CD-ROMs without their express permission did not constitute a copyright infringement. The rulings in both Faulkner and Greenberg I went up for appeal.
Greenberg I was heard first. In March 2001, a three judge panel of the 11th Circuit Court of Appeals in Atlanta, GA, reversed the lower court ruling that new content in the CD-ROM (including the introduction and the ability to search) did indeed infringe on the copyright of photographer Greenberg. It held that NGS had “created a new product, in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction envisioned in the” Copyright Act. With that reversal the 11th Circuit Court panel sent the case back to the lower court to decide how much Greenberg should be paid in damages. Legal analysts at the time noted that the fact that NGS had applied for, and received, a copyright for the CD-ROM – claiming it as new work – figured heavily in the 11th Circuit Court’s written opinion.
It is important to note that the circuit court decision in Greenberg I was rendered shortly before the U.S. Supreme Court handed down its own decision in Tasini. That case was the result of a suit brought by of the National Writers Union against The New York Times Company, Newsday Inc., Time Inc., Lexis/Nexis, and University Microfilms Inc., claiming copyright violation regarding the electronic reuse of work produced and sold on a freelance basis. On appeal, the 2nd Circuit Court in New York in Tasini had overturned the 1997 federal district court decision, finding that the re-use of freelance writers’ work on databases and CD-ROMs without their express permission constituted a copyright infringement.
The 2nd Circuit in Tasini held that the Copyright Act did not authorize the copying, reproduction and distribution of “articles standing alone and not in context” or “as part of that particular collective work to which the author (originally) contributed” or “as part of … any revision” thereof, or “as part of … any later collective work in the same series.”
After the 2nd Circuit Court’s ruling in favor of the writers, the publishers appealed Tasini to the Supreme Court which in June 2001 upheld the 2nd Circuit’s ruling by a 7-2 majority. That decision meant that in the absence of a written contract, a freelancer automatically retains the electronic rights to their printed work under the Copyright Act of 1976.
The findings in Tasini also began to distinguish methods of reproduction (print, microform, electronic database). “Whereas microforms ‘represent a mere conversion of intact periodicals (or revisions of periodicals) from one medium to another,’ the databases offered users [in Tasini] articles in isolation absent their context in intact collective works.”
This important distinction between Tasini and the cases of Faulkner and Greenberg is what the current decision turns on. In Tasini the user of a database was presented with the authors’ work one piece at a time – out of context from how it was originally published – and on a page by itself as a piece of material returned as the result of a database search; whereas the NGS CD-ROM set retains the material’s original presentation page by page while staying in context and in sequence, being viewed as an electronic “replica” of the magazine.
A key factor in all of these cases (including the current ruling) is that the standard for review is now established as how the materials are “presented to, and perceptible by, the user.” The 11th Circuit’s decision in favor of NGS is also based on the court’s view that the digital pages were displayed to viewers exactly as they had been displayed in print, without changes or modifications, and within the original context of each other, so that they were exact duplicates of the original magazines – and therefore amounted to being no more than a revision.
In rendering its decision the full court rejected the previous holding in Greenberg I that the CD-ROM was: (1) the original work of a new author (the act of compiling the issues into one venue, and adding new features), (2) that they were presented in a new medium (electronic instead of in print) and (3) were being sold to a different market, therefore making the set a “new product.” Instead the en banc decision upholds the more recent opinion of the 11th Circuit panel which adopted language similar to the 2nd Circuit decision in Faulkner, holding that the Supreme Court in Tasini had given “tacit approval” to microform-like (microfilm & microfiche) compilations and therefore “the relevant question is whether the original context of the collective work has been preserved [or not] in the revision.”
“In sum,” the court stated, “the teachings of Tasini are twofold. First, the concept of ‘revision’ necessarily includes some element of novelty or ‘newness’ as defined by the [Supreme] Court, and second, consideration of the context in which the contributions are presented is critical in determining whether that novelty is sufficient to defeat the publisher’s § 201(c) privilege.” The court held that “contextual fidelity to the original print publication as presented to, and perceivable by, the users of the revised version of the original publication” is the “the bedrock of any § 201(c) analysis” finding that NGS is “privileged to reproduce and distribute the CNG under the ‘revision’ prong of § 201(c).”
The full court also relied on the distinction made by the Tasini court between the inter-active, searchable nature of an electronic database yielding stand-alone articles and photos versus the intact, original context of the “collective work” as preserved in microform. The decision affirms the publishers’ assertion that a CD-ROM is nothing more than an electronic version of those traditional storage media, accurately and identically reproducing whole periodical libraries in their original form and context and thus not infringing on the copyrights of those contributors (photographers, writers, etc.) whose work was part of the original publication.
Applying Tasini the 11th Circuit determined that the “CNG’s image-based reproduction of the Magazine is like microform.” “The CNG presents two pages of an issue at a time, with the Magazine fold in the middle, and with the page numbers in the lower outside corners, exactly as they are presented in the print version.” “In addition to the layout of the magazine issues, the content of the CNG is also in the same position as in the print versions of the magazine.” “What the user of the CNG sees on his computer screen . . . is a reproduction of each page of the magazine that differs from the original only in the size and resolution of the photographs and text[,] [with] [e]very cover, article, advertisement, and photograph appear[ing] as it did in the original paper copy of the Magazine.” “That is, an author’s contribution is viewed within its original context . . . .” “No alteration in positioning has been made in the CNG. A user of the CNG can focus on a particular page or parts of a page, but this is similar to microform, where the user ‘can adjust the machine lens to focus only on the [a]rticle, to the exclusion of surrounding material.’” “Thus, Greenberg’s photographs do not appear disconnected from their original context. Rather, they are firmly positioned within their original context, and a user of the CNG cannot move or alter the photographs.”
Additionally, according to the en banc majority, a publisher may reproduce a contributor’s work in a reprint, revision or subsequent collective work “in the same series” without infringing on the contributor’s copyright; but the reproduction of those individual copyrighted contributions in a new work without prior permission would infringe upon the contributor’s individual copyright. As the court stated “each individual National Geographic magazine issue—including the January 1962, February 1968, May 1971, and July 1990 print issues in which Greenberg’s photographs first appeared—is a ‘particular collective work,’ and each of Greenberg’s photographs is ‘part of’ one of those collective works.” “National Geographic has the privilege of reproducing these individual magazine issues in print as often as it wishes, and Greenberg retains his copyrights in his individual photographs.” “At the same time, National Geographic has a copyright in the collective work as a whole – to wit, the individual magazine issues.”
While the 86 page decision clearly favors NGS it did not come without strong dissent against a deeply divided 7-5 majority opinion. Judge Stanley F. Birch Jr., the court’s resident intellectual property expert, who held for Greenberg in the court’s 2001 decision, penned one of two dissenting opinions (which account for almost 60 pages of the decision). Birch believes that “the authors, artists, and creators should share in the publisher’s profits and that the arguments, both legal and policy, by the publishers are bereft of logic, legal merit, and are totally disingenuous.”
In its Greenberg decision the court adopted the same economic argument the publishers made (and lost) in Tasini – that if required to re-negotiate rights and payment questions with the contributors to the original work – that they will be held up for ransom or otherwise have to redact the new compilation so as not to be in violation if they do not come to an agreement. In Tasini, Justice Ruth Bader Ginsburg rejected this notion, stating, “[i]t bears reminder here and throughout that these publishers and all others can protect their interests by private contractual arrangement.” Judge Birch also discards the publishers’ claims as being “histrionic speculation and contention that a decision in favor of Greenberg would lead to the wholesale purging of their electronic archives (information-destroying purges, loss of recorded history, massive destruction of constitutionally protected information, etc.).”
Birch expressed his concern that “[t]he reader should understand the pecuniary or commercial positions of the parties and their constituencies in this dispute.” “On one side there are the artists, authors, and other creators of copyrightable works who argue that their creative contributions to collective works already exploited by publishers should not be further exploited by those publishers without sharing the profits realized by that further commercial exploitation.” “On the opposite side, the publishers are seeking to generate new revenues by repackaging an old product — the “old wine in new bottles” paradigm; updated in this instance with an easier access twist-off metal cap rather than a cork. Here the new packaging of the old content, replicated but unrevised, in electronic medium is both cost-efficient, profitable, and attractive to a new, computer-savvy generation of consumers” (emphasis in the original). “Moreover, the profits are enhanced exponentially when the publisher can exclude the contributing artists, authors, and creators of the content from sharing in those profits.” “At the end of the day this case is not about education, access by the masses, or efficient storage and preservation – it is about who gets the money,” he concluded.
So for now it appears that as long as publishers maintain the “contextual fidelity” of the original print publication, as it is presented to and can be perceived by the viewers/users of the revised version of the original publication, they will be able to reproduce and distribute such works without infringing upon the copyright of the individual contributors to the original publication.
Mickey H. Osterreicher, Esq. is the general counsel for NPPA and a member of the New York State Bar Association Media Law Committee. He has been a photojournalist for over thirty years, having covered hundreds of court proceedings. Osterreicher helped draft the NPPA Amicus brief to the New York State Court of Appeals in support of cameras in the courtroom in Court TV v New York in 2005.
