By Mickey H. Osterreicher, Esq.
BUFFALO, NY - In a move that brings together some of the same actors from The New York Times v. Tasini case, a group of high-profile publishers and media corporations have sought permission from the 11th U.S. Circuit Court of Appeals in Atlanta to file amicus (friend-of-the-court) briefs in the case Greenberg v. National Geographic Society (NGS).
The group asking the court for amicus permission includes the Gannett Co. Inc., Hearst Corp., Time Inc., Newsweek Inc., The Washington Post, The Chicago Tribune Co., Forbes, Martha Stewart Living Omnimedia, Playboy Enterprises Inc., Duke University Press and Johns Hopkins University Press, The New York Times Co., along with a number of academic journals and national library associations.
The full 11th Circuit is scheduled to hear oral arguments between during the week of February 25, 2008. NGS had previously asked the United States Supreme Court to resolve conflicting opinions issued in the 11th Circuit (which ruled against NGS) and the 2nd Circuit (which ruled in favor of NGS) but the High Court refused to grant a petition for certiorari (review). That refusal let stand the two opposite rulings – one holding 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) 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 – the other holding that a publisher must first obtain permission of those contributors before they can create such works.
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 “The Complete National Geographic” (CNG) It was a digital version of all the past issues of National Geographic magazine going back 108 years. The CD-ROM’s 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 Jeffrey 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 same group of publishers that are now seeking to file briefs in Greenberg 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.”
On March 4, 2005, following the same legal labyrinth as Tasini, the 2nd Circuit Court in New York upheld the district court ruling in Faulkner. Judge Ralph K. Winter found in favor of NGS because the "transfer of work from one media to another generally does not alter its character for copyright purposes."
This leads to the important distinction between Tasini and the cases of Faulkner and Greenberg. 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.
Thus it can be suggested that, whereas the holdings in Tasini represent what is not allowable under copyright law, Faulkner sets forth what is allowable. A key factor and consistent with the 2nd Circuit Court rulings in both cases is that the standard for review centers around how the materials are “presented to, and perceptible by, the user;” whereas the Greenberg I court focused on how NGS put its new compilation together (e.g., containing separately copyrightable components, such as a moving image introduction, the digital replica of the magazines and software for search capabilities).
The 2nd Circuit’s decision in Faulkner in favor of NGS was 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.
Conversely, the key to the 11th Circuit’s 2001 decision in Greenberg I was the fact that the judges there viewed the CD-ROM as: (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”. Based on those findings the court found that NGS had indeed committed copyright infringement by failing to obtain permission for its digital use of the photographs in question. In 2004, pursuant to that ruling, a jury awarded Greenberg $400,000.00 in damages. Weighing that award against the $120.00 sale price of the CD-ROM NGS stopped selling it and appealed.
Confusing the matter even further is how a different three judge panel in 11th Circuit ruled in June of this year. Citing Justice Ruth Bader Ginsberg’s language in her majority opinion in Tasini they reversed the Greenberg I ruling in favor of NGS in a decision now referred to as Greenberg II. In deciding Greenberg II the 11th Circuit panel 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 a final legal twist, the full 11th Circuit vacated Greenberg II, agreeing to hear the case en banc (by the full court) next year.
Relying 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 publishers have asserted 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.
It is that evolving capability of digital reproduction and dissemination that is the underlying argument of the publishers’ amicus briefs submitted in Greenburg. In Tasini the publishers first argued (and lost) that there was no difference between microfilm/microfiche copies and their searchable databases. Now they assert in their Greenberg papers that the CD-ROM compilation is an exact electronic replica of the original publications. So strongly do they believe in that analogy that many of them have created and marketed their entire collection on CD-ROM. It is no wonder that these groups are supporting NGS in its court case when they have “Playboy Cover to Cover” and “The Complete New Yorker: 80 Years of the Nation's Greatest Magazine” (to name but two) on sale for $100.00 and $125.00 respectively.
Because the court in Greenberg I found that the software (which is itself protected by copyright) used to create and access these electronic replicas was another factor in determining that the CD-ROM was a new work and not just a revision of an old one, the publishers also argue that as long as the software allows users to view the copyrightable work in its original context then the software is “irrelevant” to the copyright question.
The publishers also make the same economic argument that they did (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 dismissing the parade of horribles outlined by the publishers in Tasini, Justice Ginsburg noted, “It bears reminder here and throughout that these publishers and all others can protect their interests by private contractual arrangement.”
We must now wait to see how the entire 11th Circuit decides this very important copyright issue given that its smaller panels issued conflicting decisions. Considering the magnitude for improved or eroded copyright protection it will be interesting to see if this case makes its way to the Supreme Court given their refusal to grant cert on two separate occasions.
It is also unfortunate to note that as of this date no one has sought leave to file an amicus brief on behalf of the Plaintiff/Appellee (Mr. Greenberg) and the time may have passed to do so. Another interesting note is that Kenneth W. Starr (formerly of the Office of the Independent Counsel, author of the Starr Report, which led to President William Jefferson Clinton's impeachment proceedings on charges arising from the Monica Lewinsky investigation) is the lead counsel for NGS.
Osterreicher 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.