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Eleventh Circuit Upholds National Geographic’s Right to Reproduce Photos First Published in its Magazine in CD-ROM Compilation
Greenberg v. National Geographic Society, et al.
No. 05-16964, U.S. Court of Appeals for the Eleventh Circuit, 06/30/2008
Companies Mentioned: Mindscape, Inc., National Geographic Enterprises, Inc., National Geographic Society
Holding
The U.S. Court of Appeals for the Eleventh Circuit upheld the right of defendant-appellant National Geographic Society (the “Society”) to reproduce photographic works featured in National Geographic Magazine (“Magazine”) in CD-ROM digital compilation without additional permission. Plaintiff-respondent, photographer Jerry Greenberg (“Greenberg”), sued for copyright infringement after the Society reproduced and distributed his works that were previously published in the Magazine in CD-Rom. Citing Section 201(c) of the Copyright Act of 1976 and case law on the topic, the Eleventh Circuit rejected Greenberg’s argument that the CD-Rom digital compilation was an entirely new collective work, and that publication of his works in this new format constituted copyright infringement. On the contrary, the Eleventh Circuit declared, the CD-ROM compilation was a mere revision, or a new version, of the works found in the Magazine. The Court reasoned that the CD-ROM format should not deprive the Society of its reproduction right under Section 201(c) because it did not destroy the original context in which Greenberg’s photographs originally appeared. Therefore, the Court reversed the jury award of $400,000.00 in favor of Greenberg.
Detailed Summary
Defendant-appellant Society is a nonprofit scientific and educational organization that has published its monthly print Magazine since 1888. The Society also produces televised programs and computer software as well as other educational products through National Geographic Enterprises, a wholly-owned and for-profit subsidiary of the Society, and co-defendant-appellant in this case. Plaintiff-respondent Greenberg is a freelance photographer, whose photographs were published in four issues of the Magazine. In 1997, National Geographic produced “The Complete National Geographic” (“CNG”), a thirty-disc CD-ROM set containing each monthly issue of the Magazine, as it was originally published, for the 108 years from 1888 through 1996—roughly 1200 issues of the Magazine. In addition, the CNG includes a short opening montage and a computer program that allows users to search the CNG, zoom into particular pages, and print them.
Greenberg sued the Society, alleging that it had infringed his copyrights by reproducing in the CNG the print magazine issues that included his photographs. The District Court disagreed and granted summary judgment in favor of the Society. However, a panel of the Eleventh Circuit in Greenberg v. National Geographic Society (“Greenberg I”), 244 F.3d 1267, 1275–76 (11th Cir. 2001), reversed and remanded for a determination of damages. After the damages trial, the jury returned a verdict against the Society in an amount of $400,000.00. The Society appealed, citing the decision of the U.S. Supreme Court in New York Times Co. v. Tasini, 533 U.S. 483 (2001), decided after Greenberg I. Opinion, p. 4. A second panel of the Eleventh Circuit found in favor of the Society, citing Tasini. Id., citing Greenberg v. Nat’l Geographic Soc’y (“Greenberg II”), 488 F.3d 1331 (11th Cir. 2007). Greenberg appealed and the full Eleventh Circuit vacated the Greenberg II panel opinion and granted rehearing en banc in this case to address the question of whether the Society’s use of Greenberg’s photographs in the CNG was permissible.
In this appeal, the relevant law was 17 U.S.C. Section 201(c) of the Copyright Act, which was added as part of the 1976 amendments to the Copyright Act. It states: “(c) Contributions to collective works. Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” In Tasini, the Supreme Court held that a magazine publisher is privileged to reproduce or distribute articles contributed by a freelancer, “absent a contract otherwise providing, only ‘as part of’ any (or all) of three categories of collective works: (a) ‘that collective work’ to which the author contributed her work, (b) ‘any revision of that collective work,’ or (c) ‘any later collective work in the same series.’” Id., p.6, citing Tasini. Given Tasini and Section 201(c), the issue in this appeal was whether the Society could reproduce and distribute the CNG as a mere collective work to which the author contributed his work (first prong of Section 201(c)), or as a revision of that collective work (second prong of the same statute). Greenberg argued that the CNG should be considered a “new collective work” that is not entitled to any privilege under Section 201(c).
Applying Tasini, the Eleventh Circuit found that the Society was privileged to reproduce and distribute the CNG under the “revision” prong of Section 201(c). The Eleventh Circuit noted that the Copyright Act does not define “revision,” but Tasini does. Id., pp. 8-9, citing 533 U.S. at 500 (quoting Webster’s Third New International Dictionary 1944, 2545 (1976). Tasini defines “revision” as a “new ‘version,’ and a version is, in (the Section 201(c)) setting, a ‘distinct form of something regarded by its creators or others as one work.’” Id. In the instant case, 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. Id., p. 13, citing Faulkner v. Nat’l Geographic Enters. Inc., 409 F.3d 26, 38 (2d Cir. 2005). In addition to the layout of the Magazine, the content of the CNG is also in the same position as in the print versions of the Magazine. Just like in Tasini, the Eleventh Circuit held that the CNG uses the identical selection, coordination, and arrangement of the underlying individual contributions as used in the original collective works. Id., citing 17 U.S.C. § 101; Greenberg I, 244 F.3d at 1269; Greenberg II, 488 F.3d at 1335; Faulkner, 409 F.3d at 38.
Further, the Eleventh Circuit held that the CNG’s additional elements—such as its search function, its indexes, its zoom function, and the introductory sequence—do not deprive the Society the right to reproduce the copyrighted prints in CD-Rom because they do not otherwise destroy the original context of the collective work in which Greenberg’s photographs first appeared.
On the basis of the foregoing, the Eleventh Circuit reversed the jury verdict against the Society, and remanded the proceedings consistent with its opinion.
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