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Greenberg v. National Geographic Society, ___ F.3d ___ (11^thCir. 2007)

SUMMARY

Relying on an intervening Supreme Court case, the Eleventh Circuit abrogated its earlier decision in this case which held that defendants’ digital compilation was not a privileged revision under Section 201(c).

Facts

Greenberg is a freelance photographer whose photographs were published in the January 1962, February 1968, May 1971, and July 1990 issues of the National Geographic magazine. Greenberg retained ownership of the photographic copyrights. For decades, the Society has reproduced back issues of the magazine in bound volumes, microfiche, and microfilm. In 1997, defendants produced “The Complete National Geographic” (CNG), a thirty-disc CD-ROM set containing each monthly issue of the magazine for the 108 years from 1888 through 1996—a collection of some 1200 issues of the magazine. The CNG is an image-based reproduction of the magazine—every page of every issue appears exactly as it did in the original version. The CNG does not provide a means for the user to edit the pages in any way but does allow the user to search an electronic index. The CNG also contains an introductory sequence that starts with a Kodak advertisement followed by a moving display of the Society’s logo, a theme song, and a 25-second segment in which ten images of actual magazine covers from past issues (including Greenberg’s January 1962 cover photograph) digitally fade into one another. The Society registered its copyright in the CNG in 1998, claiming that the work had not been registered before and indicating that it was a “compilation of pre-existing material primarily pictorial,” to which a “brief introductory audiovisual montage” had been added.

Greenberg filed suit in 1997, and defendants moved for summary judgment. Relying on the lower court’s reasoning in Tasini v. New York Times, 972 F. Supp. 804 (S.D.N.Y. 1997), 11 CLJ 64 (Sept.-Oct. 1997), the district court held that the CNG was a privileged revision under Section 201(c). The Eleventh Circuit reversed, concluding that the CNG is a new product, in a new medium, for a new market that far transcends any privilege of revision under Section 201(c). Greenberg I, 244 F.3d 1267 (11^th Cir. 2001), 15 CLJ 26 (May-June 2001). After the decision in Greenberg I, the Supreme Court decided Tasini, and held that the use of individual freelance contributions in electronic databases that removed the individual contributions from the context of the original collective work is not a privileged revision under Section 201(c). New York Times Co. v. Tasini, 533 U.S. 483 (2001), 15 CLJ 38 (July-August 2001). The Supreme Court focused on how the articles were “presented to, and perceptible by, the user of the databases,” Id. at 499, and distinguished the electronic databases at issue from microfilm and microfiche, which present an individual freelance contribution in the context of the original collective work.

Subsequent to Tasini, in a case where plaintiffs, like Greenberg, were freelance photographers whose photographs originally appeared in various issues of the National Geographic magazine, the Second Circuit affirmed summary judgment in favor of the Society. Faulkner v. National Geographic Enterprises, Inc., 409 F.3d 26 (2d Cir. 2005), 19 CLJ 26 (May-June 2005). The Faulkner Court was of the opinion that the Supreme Court gave “tacit approval to microfilm and microfiche as permissible Section 201(c) revisions . . .” 499 F.3d at 35.

After the Eleventh Circuit’s reversal and remand in Greenberg I, a jury returned a verdict of willful infringement and awarded Greenberg damages of $400,000. Defendants appealed. The Eleventh Circuit held that Tasini effectively overruled Greenberg I and vacated the verdict of willful infringement.

THE ELEVENTH CIRCUIT OPINION

Section 201(c)

Judge Trager noted that Greenberg I analyzed the three components of the CNG: the introductory sequence (Sequence), the digitally reproduced issues of the magazine (Replica), and the computer program (Program). Greenberg I, he said, assumed, without deciding, that the Replica was privileged under Section 201(c), but refused to apply the privilege to the Program or the Sequence, which it characterized as separately copyrightable elements. According to Judge Trager, Tasini creates a new, post-Greenberg I framework for analyzing the Section 201(c) privilege. Under Tasini, he said, the relevant question is whether the original context of the collective work has been preserved in the revision. The Replica portion of the CNG, he said, preserves the original context of the magazines, because it comprises the exact images of each page of the original magazines. The addition of the Sequence, he said, does not extinguish the privilege that attaches to the Replica. The House Report, H.R. Rep. No. 94-1476, at 122-23 (1976), states that under the language of Section 201(c), “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.” It was clear to Judge Trager from the encyclopedia analogy that the addition of new material to a collective work would not take the revised collective work outside the privilege.

Judge Trager concluded that Tasini established a new framework for applying the Section 201(c) privilege that effectively overruled Greenberg I. Under the new framework, Judge Trager found that the Replica and Program portions of the CNG are privileged. Although the Sequence portion is not privileged, he said, the district court erred in dismissing defendants’ answer and defenses. The case was remanded for adjudication of those defenses.

COMMENT

1. Under Section 201(c), the publisher of a collective work (newspaper or magazine) is “presumed” to have the “privilege” of copying and distributing the contributed work as part of that particular collective work, any revision of that collective work, or any later collective work in the same series. Section 201(c) is a default provision that governs the rights of freelance authors and publishers where there is no agreement between them. Congress enacted Section 201(c) to preserve the author’s copyright in a contribution to a collective work. Practice Tip: Courts should, therefore, narrowly construe the publisher’s presumed privilege when balancing it against the author’s constitutionally protected rights.

2. In Tasini v. New York Times Co., 206 F.3d 161 (2d Cir. 1999), 13 CLJ 64 (Sept.-Oct. 1999), the Second Circuit held that electronic and CD-ROM databases containing individual articles from multiple editions of various periodicals did not constitute privileged revisions under Section 201(c). Following that decision, but before the Supreme Court’s affirmance, sub nom. New York Times Co. v. Tasini, 533 U.S. 483 (2001), 15 CLJ 38 (July-August 2001), the Eleventh Circuit decided Greenberg I, 244 F.3d 1267 (11^th Cir. 2001), 15 CLJ 26 (May-June 2001). In Faulkner v. National Geographic Society, 409 F.3d 26 (2d Cir. 2005), 19 CLJ 26 (May-June 2005), a case virtually identical on the facts and law to Greenberg I, the Second Circuit held that defendants’ use of plaintiffs’ works in a CD-ROM version of their magazines was a privileged revision under Section 201(c). Despite the conflict between the Second and Eleventh Circuits, the Supreme Court denied certiorari, 126 S. Ct. 833 (2005). The facts in Tasini are different from those in Greenberg and Faulkner.

3. In Tasini, the question before the Supreme Court was whether an electronic version of a particular issue of The New York Times was a permissible revision of that particular work. The Times authorized Nexis to create a collective work comprised of many issues of the newspaper. The Supreme Court held that Section 201(c) does not allow publishers of collective works to license for inclusion in electronic databases individually copyrighted articles written by freelance authors and published in their periodicals. Similarly, in Greenberg and Faulkner, the Society authorized a third party to create another collective work comprising back issues of the Society’s magazines. Greenberg I concluded that the new collective work is just that—a new work and not a revision of “that particular collective work” (the magazine issue) which included Greenberg’s contribution. This same common sense reasoning was applied in Tasini, which held that the Nexis database is not a revision of the particular issue of The New York Times containing Tasini’s contributed article, but a new collective work outside the scope of Section 201(c).

4. In determining whether the contributed works were reproduced and distributed as part of a revision of the collective works at issue, the courts focus on the articles as presented to, and perceptible by, the consumer. As stated in Tasini: “One might view the articles as part of a new compendium—namely, the entirety of the works in the Database. In that compendium, each edition of each periodical represents only a miniscule fraction of the ever-expanding Database. The Database no more constitutes a ‘revision’ of each constituent edition than a 400-page novel quoting a sonnet in passing would represent a ‘revision’ of that poem.” 533 U.S. at 500. Because Tasini held that the Databases, unlike microfilm and microfiche, do not perceptibly reproduce articles as part of the collective work to which the author contributed or as part of any revision thereof, it did not address the question presented in Greenberg I and Faulkner, namely whether combining the particular collective work—the particular issue of the magazine—to which the photographer contributed with about 1,200 other issues of the magazine constitutes a permissible revision or an impermissible new collective work, or even whether the particular collective work to which the photographer contributed was, in fact, revised. To revise a work is to amend, correct, alter, or modify it. The particular collective work to which Greenberg (or Faulkner) contributed (say, for example, the October 1990 issue of the magazine) was reproduced through a digital scanning process, resulting in an exact copy of that particular issue. There are no changes in the content, format, or appearance of that issue of the magazine. But an exact reproduction is a copy, not a revision.

Moreover, the statement in Faulkner that Tasini “gave tacit approval to microfilm and microfiche as permissible Section 201(c) revisions by contrasting that method of reproduction with the databases,” misses the point. In contrasting microforms with databases, Tasini gave as an example, an article that appeared in a particular edition of the newspaper, i.e., the Magazine Section of The New York Times of September 23, 1990, and compared a microfilm version of that particular collective work with the Databases in which articles appear disconnected from their original context. Tasini did not suggest or even imply that a combination of the September 23, 1990 edition of the Times with more than a thousand other editions would be allowed as a privileged revision. Without any discussion regarding whether or how the particular collective work to which Faulkner contributed was ever “revised,” or whether the CD-ROM library constitutes an impermissible new collective work, Faulkner merely stated that “because the original context of the Magazine is omnipresent in the CNG and because it is a new version of the Magazine, the CNG is a privileged version.” This seems hardly adequate. Faulkner was wrongly decided and its reasoning is unpersuasive.

5. Some of the Society’s marketing materials urge consumers to print “any article or photograph” and advise them that they “are free to use, modify and publish the Images as you wish” and to “incorporate any Image(s) into your own original work and publish, display, and distribute your work in any media”—a clear invitation (inducement?) to infringe plaintiffs’ copyrighted contributions! To the extent that the CD-ROMs in Greenberg and Faulkner are part of a library collection, for example, or other place open to the public, that would implicate the freelance authors’ exclusive right of public display.

6. The reasoning of the Supreme Court in Tasini (an intervening case) does not directly contradict the analysis of Greenberg I. Therefore, Greenberg II has no power or authority to overrule the earlier panel’s decision. Faulkner was wrongly decided and Greenberg II compounds the error. A petition for en banc review by the Eleventh Circuit is pending. Such a review is necessary to correct this unfortunate comedy of errors.


	About The Copyright Law Journal : Sample Case
	The case below has been excerpted from the March-April 2004 issue of The Copyright Law Journal. Online subscriptions provide full newsletters in PDF format (Portable Document Format). Subscribe today Greenberg v. National Geographic Society, ___ F.3d ___ (11^thCir. 2007) SUMMARY Relying on an intervening Supreme Court case, the Eleventh Circuit abrogated its earlier decision in this case which held that defendants’ digital compilation was not a privileged revision under Section 201(c). Facts Greenberg is a freelance photographer whose photographs were published in the January 1962, February 1968, May 1971, and July 1990 issues of the National Geographic magazine. Greenberg retained ownership of the photographic copyrights. For decades, the Society has reproduced back issues of the magazine in bound volumes, microfiche, and microfilm. In 1997, defendants produced “The Complete National Geographic” (CNG), a thirty-disc CD-ROM set containing each monthly issue of the magazine for the 108 years from 1888 through 1996—a collection of some 1200 issues of the magazine. The CNG is an image-based reproduction of the magazine—every page of every issue appears exactly as it did in the original version. The CNG does not provide a means for the user to edit the pages in any way but does allow the user to search an electronic index. The CNG also contains an introductory sequence that starts with a Kodak advertisement followed by a moving display of the Society’s logo, a theme song, and a 25-second segment in which ten images of actual magazine covers from past issues (including Greenberg’s January 1962 cover photograph) digitally fade into one another. The Society registered its copyright in the CNG in 1998, claiming that the work had not been registered before and indicating that it was a “compilation of pre-existing material primarily pictorial,” to which a “brief introductory audiovisual montage” had been added. Greenberg filed suit in 1997, and defendants moved for summary judgment. Relying on the lower court’s reasoning in Tasini v. New York Times, 972 F. Supp. 804 (S.D.N.Y. 1997), 11 CLJ 64 (Sept.-Oct. 1997), the district court held that the CNG was a privileged revision under Section 201(c). The Eleventh Circuit reversed, concluding that the CNG is a new product, in a new medium, for a new market that far transcends any privilege of revision under Section 201(c). Greenberg I, 244 F.3d 1267 (11^th Cir. 2001), 15 CLJ 26 (May-June 2001). After the decision in Greenberg I, the Supreme Court decided Tasini, and held that the use of individual freelance contributions in electronic databases that removed the individual contributions from the context of the original collective work is not a privileged revision under Section 201(c). New York Times Co. v. Tasini, 533 U.S. 483 (2001), 15 CLJ 38 (July-August 2001). The Supreme Court focused on how the articles were “presented to, and perceptible by, the user of the databases,” Id. at 499, and distinguished the electronic databases at issue from microfilm and microfiche, which present an individual freelance contribution in the context of the original collective work. Subsequent to Tasini, in a case where plaintiffs, like Greenberg, were freelance photographers whose photographs originally appeared in various issues of the National Geographic magazine, the Second Circuit affirmed summary judgment in favor of the Society. Faulkner v. National Geographic Enterprises, Inc., 409 F.3d 26 (2d Cir. 2005), 19 CLJ 26 (May-June 2005). The Faulkner Court was of the opinion that the Supreme Court gave “tacit approval to microfilm and microfiche as permissible Section 201(c) revisions . . .” 499 F.3d at 35. After the Eleventh Circuit’s reversal and remand in Greenberg I, a jury returned a verdict of willful infringement and awarded Greenberg damages of $400,000. Defendants appealed. The Eleventh Circuit held that Tasini effectively overruled Greenberg I and vacated the verdict of willful infringement. THE ELEVENTH CIRCUIT OPINION Section 201(c) Judge Trager noted that Greenberg I analyzed the three components of the CNG: the introductory sequence (Sequence), the digitally reproduced issues of the magazine (Replica), and the computer program (Program). Greenberg I, he said, assumed, without deciding, that the Replica was privileged under Section 201(c), but refused to apply the privilege to the Program or the Sequence, which it characterized as separately copyrightable elements. According to Judge Trager, Tasini creates a new, post-Greenberg I framework for analyzing the Section 201(c) privilege. Under Tasini, he said, the relevant question is whether the original context of the collective work has been preserved in the revision. The Replica portion of the CNG, he said, preserves the original context of the magazines, because it comprises the exact images of each page of the original magazines. The addition of the Sequence, he said, does not extinguish the privilege that attaches to the Replica. The House Report, H.R. Rep. No. 94-1476, at 122-23 (1976), states that under the language of Section 201(c), “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.” It was clear to Judge Trager from the encyclopedia analogy that the addition of new material to a collective work would not take the revised collective work outside the privilege. Judge Trager concluded that Tasini established a new framework for applying the Section 201(c) privilege that effectively overruled Greenberg I. Under the new framework, Judge Trager found that the Replica and Program portions of the CNG are privileged. Although the Sequence portion is not privileged, he said, the district court erred in dismissing defendants’ answer and defenses. The case was remanded for adjudication of those defenses. COMMENT 1. Under Section 201(c), the publisher of a collective work (newspaper or magazine) is “presumed” to have the “privilege” of copying and distributing the contributed work as part of that particular collective work, any revision of that collective work, or any later collective work in the same series. Section 201(c) is a default provision that governs the rights of freelance authors and publishers where there is no agreement between them. Congress enacted Section 201(c) to preserve the author’s copyright in a contribution to a collective work. Practice Tip: Courts should, therefore, narrowly construe the publisher’s presumed privilege when balancing it against the author’s constitutionally protected rights. 2. In Tasini v. New York Times Co., 206 F.3d 161 (2d Cir. 1999), 13 CLJ 64 (Sept.-Oct. 1999), the Second Circuit held that electronic and CD-ROM databases containing individual articles from multiple editions of various periodicals did not constitute privileged revisions under Section 201(c). Following that decision, but before the Supreme Court’s affirmance, sub nom. New York Times Co. v. Tasini, 533 U.S. 483 (2001), 15 CLJ 38 (July-August 2001), the Eleventh Circuit decided Greenberg I, 244 F.3d 1267 (11^th Cir. 2001), 15 CLJ 26 (May-June 2001). In Faulkner v. National Geographic Society, 409 F.3d 26 (2d Cir. 2005), 19 CLJ 26 (May-June 2005), a case virtually identical on the facts and law to Greenberg I, the Second Circuit held that defendants’ use of plaintiffs’ works in a CD-ROM version of their magazines was a privileged revision under Section 201(c). Despite the conflict between the Second and Eleventh Circuits, the Supreme Court denied certiorari, 126 S. Ct. 833 (2005). The facts in Tasini are different from those in Greenberg and Faulkner. 3. In Tasini, the question before the Supreme Court was whether an electronic version of a particular issue of The New York Times was a permissible revision of that particular work. The Times authorized Nexis to create a collective work comprised of many issues of the newspaper. The Supreme Court held that Section 201(c) does not allow publishers of collective works to license for inclusion in electronic databases individually copyrighted articles written by freelance authors and published in their periodicals. Similarly, in Greenberg and Faulkner, the Society authorized a third party to create another collective work comprising back issues of the Society’s magazines. Greenberg I concluded that the new collective work is just that—a new work and not a revision of “that particular collective work” (the magazine issue) which included Greenberg’s contribution. This same common sense reasoning was applied in Tasini, which held that the Nexis database is not a revision of the particular issue of The New York Times containing Tasini’s contributed article, but a new collective work outside the scope of Section 201(c). 4. In determining whether the contributed works were reproduced and distributed as part of a revision of the collective works at issue, the courts focus on the articles as presented to, and perceptible by, the consumer. As stated in Tasini: “One might view the articles as part of a new compendium—namely, the entirety of the works in the Database. In that compendium, each edition of each periodical represents only a miniscule fraction of the ever-expanding Database. The Database no more constitutes a ‘revision’ of each constituent edition than a 400-page novel quoting a sonnet in passing would represent a ‘revision’ of that poem.” 533 U.S. at 500. Because Tasini held that the Databases, unlike microfilm and microfiche, do not perceptibly reproduce articles as part of the collective work to which the author contributed or as part of any revision thereof, it did not address the question presented in Greenberg I and Faulkner, namely whether combining the particular collective work—the particular issue of the magazine—to which the photographer contributed with about 1,200 other issues of the magazine constitutes a permissible revision or an impermissible new collective work, or even whether the particular collective work to which the photographer contributed was, in fact, revised. To revise a work is to amend, correct, alter, or modify it. The particular collective work to which Greenberg (or Faulkner) contributed (say, for example, the October 1990 issue of the magazine) was reproduced through a digital scanning process, resulting in an exact copy of that particular issue. There are no changes in the content, format, or appearance of that issue of the magazine. But an exact reproduction is a copy, not a revision. Moreover, the statement in Faulkner that Tasini “gave tacit approval to microfilm and microfiche as permissible Section 201(c) revisions by contrasting that method of reproduction with the databases,” misses the point. In contrasting microforms with databases, Tasini gave as an example, an article that appeared in a particular edition of the newspaper, i.e., the Magazine Section of The New York Times of September 23, 1990, and compared a microfilm version of that particular collective work with the Databases in which articles appear disconnected from their original context. Tasini did not suggest or even imply that a combination of the September 23, 1990 edition of the Times with more than a thousand other editions would be allowed as a privileged revision. Without any discussion regarding whether or how the particular collective work to which Faulkner contributed was ever “revised,” or whether the CD-ROM library constitutes an impermissible new collective work, Faulkner merely stated that “because the original context of the Magazine is omnipresent in the CNG and because it is a new version of the Magazine, the CNG is a privileged version.” This seems hardly adequate. Faulkner was wrongly decided and its reasoning is unpersuasive. 5. Some of the Society’s marketing materials urge consumers to print “any article or photograph” and advise them that they “are free to use, modify and publish the Images as you wish” and to “incorporate any Image(s) into your own original work and publish, display, and distribute your work in any media”—a clear invitation (inducement?) to infringe plaintiffs’ copyrighted contributions! To the extent that the CD-ROMs in Greenberg and Faulkner are part of a library collection, for example, or other place open to the public, that would implicate the freelance authors’ exclusive right of public display. 6. The reasoning of the Supreme Court in Tasini (an intervening case) does not directly contradict the analysis of Greenberg I. Therefore, Greenberg II has no power or authority to overrule the earlier panel’s decision. Faulkner was wrongly decided and Greenberg II compounds the error. A petition for en banc review by the Eleventh Circuit is pending. Such a review is necessary to correct this unfortunate comedy of errors.