July 2007
Eleventh Circuit Reverses Earlier Panel Decision and Re-Affirms
Publishers’ Right to Reissue Collective Works in Digital Format
By Naomi Jane Gray and Eric A. Long
Reversing an earlier panel decision which created a problematic split among the circuit courts, and eliminating any lingering confusion over the rights of publishers to republish their collective works in different media, the Eleventh Circuit recently held that § 201(c) of the Copyright Act permits the publisher of a collective work to reproduce its collective work in electronic format. Greenberg v. Nat’l Geographic Soc’y (“Greenberg II”), ___ F.3d ___, 2007 WL 1693056 (11th Cir. June 13, 2007). In Greenberg II, the Eleventh Circuit found that the Supreme Court’s decision in New York Times Co. v. Tasini, 533 U.S. 483 (2001), abrogated its earlier decision in the case, Greenberg v. National Geographic Society (“Greenberg I”), 244 F.3d 1267 (11th Cir. 2001). Based on the Tasini framework, the Eleventh Circuit overruled Greenberg I and affirmed the proposition that publishers, as copyright owners of collective works, may reproduce and distribute such works electronically as long as “the original context of the collective work has been preserved in the revision.” Background Facts
Jerry Greenberg, a freelance photographer, sued the National Geographic Society (the “Society”) and others for copyright infringement after the Society published the “Complete National Geographic,” (“CNG”), a digital collection of every issue of National Geographic Magazine (the “Magazine”) published since its inception in 1888. Greenberg created certain images that appeared, with his authorization, in issues of the Magazine. The Society created CNG by digitally scanning, two pages at a time, each issue of the Magazine that had been published to date. The scanning process created an exact image of each page precisely as it appeared in the paper copy of the Magazine, including all text, photographs, graphics, advertising, credits, attributions, and the “fold” down the center of each issue. Thus, the images and texts were presented in the same context as they originally had appeared in print. In addition to the issues of the Magazine, CNG also contained certain introductory and concluding material. For instance, a brief series of multimedia sequences appeared when the program is launched, including the Society’s logo, a short promotional message for Kodak, and a digital sequence depicting the covers of ten issues of the Magazine that transitioned from one into the other (the “Moving Cover Sequence”). Greenberg created one of the images appearing in the Moving Cover Sequence. When exiting the program, a sequence displaying the spines of issues of the Magazine played. Procedural and Legal Background
Greenberg I
Before answering Greenberg’s complaint, the Society moved to dismiss or, in the alternative, for summary judgment, contending that CNG was privileged under § 201(c) of the Copyright Act. Section 201(c) provides: 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 the copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular 18 Offices Worldwide | Paul, Hastings, Janofsky & Walker LLP | www.paulhastings.com
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collective work, any revision of that collective work, and any later collective work in the same series. amount of damages and attorneys fees that are due, if any, as well as any injunctive relief that may be appropriate.” Id. at 1275‐76. 17 U.S.C. § 201(c) (emphasis added). The legislative history elaborates: Within 20 days of the Eleventh Circuit’s mandate, the Society filed an answer, asserting four affirmative defenses for the first time. The district court, however, read the Eleventh Circuit’s mandate to require a finding of liability. Consequently, the district court struck the Society’s answer as precluded by the Eleventh Circuit’s mandate, as well as being untimely under relevant portions of the Federal Rules of Civil Procedure. The district court then referred the matter to a magistrate judge for jury trial on the issues of damages and willfulness of infringement. Under the language of this clause 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; the publisher could not revise the contribution itself or include it in a new anthology or an entirely different magazine or other collective work. New York Times v. Tasini
H.R. Rep. No. 94‐1476, at 122‐23 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5738. The Society argued that CNG constituted (1) either “that particular collective work” because it reproduced each issue of the Magazine exactly as it appeared in print, or (2) at the very most, a “revision” of the issues of the Magazine. The district court granted the Society’s pre‐answer motion, finding that CNG constituted a “revision” under § 201(c). In Greenberg I, the Eleventh Circuit reversed because it found that CNG constituted a new product “in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction envisioned by § 201(c).” 244 F.3d at 1273. Specifically, the Greenberg I panel held that the presence of the Moving Cover Sequence, along with other multimedia sequences and the software necessary to run the program on a computer – themselves independently copyrightable – rendered CNG a “new” and “other collective work” beyond the scope of § 201(c). The Greenberg I panel distinguished CNG from microfilm and microfiche – media in which the Society had long reproduced collections of issues of the Magazine – on the basis that microforms do not require the presence of independently copyrightable software which itself constitutes an original work of authorship. In Tasini¸ the Second Circuit held and the Supreme Court affirmed that electronic databases – specifically, NEXIS and similar databases – containing individual articles from a variety of different publications did not constitute “revisions” of those publications within the ambit of § 201(c). The Supreme Court’s opinion turned on the fact that the databases in question reproduced individual articles standing alone and divorced from the context in which they originally appeared. Specifically, the databases did not reproduce articles “‘as part of that particular collective work’ to which the author contributed, ‘as part of . . . any revision’ thereof, or ‘as part of . . . any later collective work in the same series.’” Tasini, 533 U.S. at 488 (alterations in original). Because, absent an express transfer of copyright, the author of the contribution retains exclusive ownership of the copyright in that contribution, the author alone has the right to reproduce and distribute the contribution itself. The Tasini databases, which reproduced individual articles, violated that exclusive right. Significantly, the Supreme Court contrasted the infringing products in Tasini with microfilm and microfiche, publications which the Supreme Court approved because they “represent a mere conversion of intact periodicals (or revisions of periodicals) from one medium to another.” Id. at 502. Initially, the Eleventh Circuit remanded the case and directed the court to enter judgment on the copyright claims. Shortly thereafter, however, the Eleventh Circuit issued a corrected opinion which eliminated the direction to enter judgment in Greenberg’s favor and merely stated that “the district court should ascertain the The Greenberg I panel’s reasoning differed dramatically from the Supreme Court’s reasoning in Tasini. The Greenberg I panel did not consider whether articles and photographs were reproduced in the context in which they originally appeared. Nor did it address the Second Circuit’s Tasini opinion, which was published more than 2
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of CNG. After reviewing Tasini and Faulkner, the Eleventh Circuit agreed, holding that “Tasini creates a new, post‐Greenberg I framework for analyzing the § 201(c) privilege.” 2007 WL 1693056, at *5. The court determined that the portion of CNG containing the issue‐
for‐issue, page‐for‐page replications of original Magazines in a new medium, and the computer program that allowed the user to view the original Magazine content via CD‐ROM, were privileged revisions of the original collective works under § 201(c). Specifically, the court held that “the Replica portion of the CNG preserves the original context of the magazines, because it comprises the exact images of each page of the original magazines. Similarly, the Program is transparent to the viewer and does not alter the original context of the magazine contents.” 2007 WL 1693056, at *5. a year before the Greenberg I decision and was analyzed by the parties in the Greenberg I appellate briefs. Instead, the Greenberg I panel based its decision on the presence of additional creative elements such as the Moving Cover Sequence and the software necessary to run the program. Faulkner v. National Geographic Enterprises
In Faulkner – a group of cases consolidated for purposes of appeal – freelance writers and photographers brought suit against the Society for the alleged infringement of their articles and photographs as initially published in the Magazine and republished in CNG, just as in Greenberg I. The Second Circuit, relying on Tasini and focusing on “the underlying works as presented to, and perceptible by, the user of the CNG,” Faulkner v. Nat’l Geographic Enters., 409 F.3d 26, 38 (2d Cir. 2005) (quoting Tasini, 533 U.S. at 499), held that CNG fit comfortably within the Tasini framework, as it reproduced texts and photographs in the same context as they originally appeared in the print version of the Magazine. The Second Circuit also relied on an element from its own opinion in Tasini that was not explicitly affirmed by the Supreme Court in noting that CNG “uses the almost identical ‘selection, coordination, and arrangement’ of the underlying works as used in the original collective works.” Id. (quoting Tasini, 206 F.3d at 168). Moreover, the Eleventh Circuit followed the Second Circuit in holding that the addition of the twenty‐five second introductory montage, including the Moving Cover Sequence, did not destroy the privileged nature of the digital compilation. The court noted that the legislative history explicitly sanctioned the example of a 1990 revision of a 1980 encyclopedia, which “would almost by definition include entries on new topics. The question is whether the new material so alters the collective work as to destroy its original context.” Id. at *6. In direct contrast to the Greenberg I opinion, the Second Circuit also made clear that a “revision” may include new and independently copyrightable elements not found in the original collective work. For example, a collection of past issues of a magazine in a bound volume along with an index of the entire collection would be permissible, even though the index itself would be independently copyrightable. A revision may also delete matter from the original. Due to contractual issues, approximately sixty out of the 180,000 photographs in CNG were blacked out of certain iterations of the product. However, these changes did not “substantially alter” the context of the original Magazines, which was “immediately recognizable,” and thus did not affect CNG’s status as a revision. Although the introductory sequence did not remove CNG from the scope of § 201(c), the use of Greenberg’s cover image in the Moving Cover Sequence itself was not privileged. Notably, this issue was not addressed by the Second Circuit, as none of the Faulkner plaintiffs’ images appeared in the Moving Cover Sequence. The court noted that the Society did not argue that the Moving Cover Sequence was privileged under § 201(c) and that the Greenberg I panel had rejected the Society’s argument that the Moving Cover Sequence was a de minimis or fair use of Greenberg’s cover image. Nevertheless, the court vacated the district court’s determination that the Society was liable for copyright infringement on the procedural ground that the district court had “over‐read” its Greenberg I mandate. The portions upon which the district court relied in construing the mandate were eliminated when the Greenberg I court amended its opinion; moreover, the Greenberg II decision rendered moot the Greenberg I mandate. Additionally, the Eleventh Circuit found that The Greenberg II Decision
In the wake of these developments, the Society appealed the trial court’s entry of final judgment on the grounds that Tasini authorized the reproduction and distribution 3
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originally appeared. That right remains with the author of the contribution, unless the author chooses to contract it away. Faulkner, and now Greenberg II, demonstrate what publishers can do – create new versions of their publications, including in electronic format, that (1) incorporate new creative elements, even if those elements are independently copyrightable and (2) delete material that appeared in the original. Publishers are now relieved of the precarious situation created by the conflict between Greenberg I’s determination that CNG was infringing and Faulkner’s opposite holding. Moreover, and of great significance in the electronic age, Greenberg I’s ruling that the presence of independently copyrightable software rendered CNG beyond the scope of § 201(c) was tantamount to a ruling that the § 201(c) privilege is simply unavailable in any electronic medium. Greenberg II restores § 201(c) to the electronic age and firmly establishes that publishers’ § 201(c) rights are equally applicable whether in electronic or traditional media. Publishers may, without securing permission from contributing authors, reproduce and distribute collective works in a new medium as long as the revision preserves the original context of the work. the Society’s answer, filed within twenty days of the mandate, was timely. The Federal Rules allow a defendant twenty days to file an answer after service of a complaint, but are silent “where a district court grants a pre‐answer dispositive motion but an appellate court subsequently reverses.” Because the Society followed the twenty‐day rule, and the Rules set no time limit for answering a complaint following a reversal of summary judgment, the Society’s answer was timely. The district court, in striking the answer, precluded the Society from asserting any of its other defenses. Accordingly, the Eleventh Circuit vacated the district court’s grant of Greenberg’s motion to strike the answer. Conclusion
Greenberg II eliminates the apparent conflict between the Faulkner and Greenberg I decisions and puts to rest any lingering confusion over the application of the Supreme Court’s decision in Tasini to a publisher’s right to reproduce its collective works in electronic format. Together, these three cases serve as “bookends” to publishers’ rights under § 201(c). Tasini demonstrated what publishers cannot do under § 201(c) – reproduce individual articles outside the context in which they ™™™
If you have any questions concerning these developing issues, please do not hesitate to contact any of the
following Paul Hastings lawyers:
San Francisco
San Francisco
Naomi Jane Gray
415-856-7026
naomijanegray@paulhastings.com
Eric A. Long
415-856-7235
ericlong@paulhastings.com
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