Last week the United States Supreme Court denied the petition of freelance photographer Jerry Greenberg for a writ of certiorari from the en banc decision of the 11th U.S. Circuit Court of Appeals July holding that the National Geographic Society (“NGS”) did not infringe the copyright of Greenberg when it digitally reproduced Greenberg’s photos onto its CD-ROM archive of the Complete National Geographic (Greenberg v. National Geographic Society, 533 F3d 1244 (11th. Cir. 2008), cert den. 555 U.S. 08-428, Dec. 8, 2008).
Greenberg had originally entered into licenses with NGS granting NGS the right to reproduce and publish his photographs in its hard copy printed magazines. After publishing the printed magazines National Geographic reproduced each and every page by exact page (except that NGS did black out material which it purchased or licensed from agencies where the licenses contained restrictions against digital use), advertisements and all of all of its magazines and made the digital compilation of the reproduction available for sale on CD-ROM and DVD as the Complete National Geographic. (Other publishers have made their archives available for sale, including Playboy; and The New Yorker has made its archive available for purchase on external or portable hard drives.) Greenberg objected to the reuse of his photographs in this manner because the license did not specify that his photograph contributions could be re-used in this manner or without additional compensation, on the grounds that the digital Complete National Geographic was not a revision of the paper magazine since it was scanned in toto, and was not a republication of the same work because it was now part of a new work (the Compete National Geographic). The 11th Circuit ruled for NGS and held that the reproduction at issue did not constitute copyright infringement, and that Section 201(c) of the Copyright Act amounted to an allowable or “privileged” “revision” of the collective work (each issue of the magazine) because the original context of the individual licensed contribution is preserved. The publisher, therefore, did not need to negotiate a new license with Greenberg to pay additional royalties, or pay damages. The refusal of the Supreme Court to hear the case means that the 11th Circuit’s ruling stands.
Whether the denial of cert. puts a nail in this coffin is uncertain since the Supreme Court merely let stand the 11th Circuit ruling. The Supreme Court previously let stand another, similar case brought against National Geographic in the 2nd Circuit, Faulkner v. National Geographic Enterprises (409 F.3d 26 [2d Cir. 2005]). The Appellate Courts in both the Greenberg and Faulkner cases relied, in large part, upon what some consider to have been obiter dictum in New York Times v. Tasini (533 U.S. 483 [2001]), where the Supreme Court wrote that "in context" reproduction such as in microfilm or faithful full-page scans was not an infringing use. There is no conflict between the only two circuits that have addressed the issue.
Terry Adamson, Executive Vice President for The National Geographic Society said, in response to a request for a statement for the Copyright Committee of the IP Section of the State Bar of California (www.ipsection.org) , “It's been our own long march for the past eleven years, but [we are] gratified that the view of Section 201 (c) that we had in 1997 when this product containing our archive in a digital form was issued has now been specifically affirmed on identical grounds by two different U.S. Court of Appeals, and has ended without the need for additional cost and delay for a Supreme Court review, which after all has already spoken on the issue when it decided Tasini v. New York Times in 2001.”
At least in the Second and Eleventh circuits the law is currently that electronic or digital page-by-page reproduction of the entirety of a collective work does not constitute copyright infringement because under Section 201(c) of the Copyright Act such reproduction amounts to allowable or “privileged” “revision” of the collective work (each issue of the magazine) because the original context of the individual licensed contribution is preserved It is certain that reproduction of a single edition is privileged, and as it currently stands it is certain in the 2nd and 11th Circuits that reproduction of the entire archive of collective works (i.e., all the editions of a magazines ever printed by a publisher) is privileged. (One publisher is rolling out digital reproductions of magazines published over many years one decade at a time.) So, unless there is another case on this issue that percolates up, it might be wise for lawyers who represent photographers, writers, artists, and creators (“Authors”), as well as publishers, to be aware of this decision and the Tasini / Faulkner / Greenberg Section 201(c) line of cases when they negotiate for the use of the works of Authors, and to make sure that any contract or license that they agree to in the future clearly sets out rights and limitations, including digital distribution in revisions of collective works, or even what constitutes a revision of a collective work. Publishers may also want to double check past licenses from Authors to ascertain that those licenses do not restrict what would otherwise be reproduction rights or privileges before simply engaging in this type of electronic reproduction of collective works in supposed reliance of the Section 201(c) privilege.
For a short article on the 11th Circuit ruling co-authored by Cydney Tune, Chair of this Copyright Committee, see New Matter, V. 33, No. 3, 2008.
This is a reproduction of an eblast prepared by Committee Vice-Chair Matthew Neco, with some background assistance from Surjit Soni. The eblast is provided as a service of the Copyright Committee of the Intellectual Property Section of the Sate Bar of California. The committee, the section, and the State Bar have no opinion and take no position on the outcome of this case. The foregoing is a distillation of some of the facts, claims, and holding, all of which are more complex than written here. It is recommended that readers conduct their own research and analysis. This post is provided for general information purposes only and does not constitute legal advice. While reasonable care is taken to ensure that the materials and information are accurate and complete, no warranty or representation is given that they are free from inaccuracies or omissions. This post does not create, and is not intended to create, an attorney-client relationship.
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