By Mickey H. Osterreicher, Esq.
BUFFALO, NY – In two cases that pit the National Geographic Society against a number of freelance photographers, the United States Supreme Court this week refused to grant a petition for certiorari (appeal). That refusal thus let stand a lower court ruling in one of the cases 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.
What makes this matter both confusing and important is that the appeal to the High Court was brought by National Geographic even though it received a favorable ruling on appeal in the 2nd Circuit. Apparently National Geographic had hoped the Supreme Court would hear the matter and thus resolve the conflicting opinion issued in the 11th Circuit (which ruled against National Geographic) in the same controversy brought by different freelance photographers.
The first suit was commenced in federal district court in New York in 1997 by photographers Douglas Faulkner, Louis Psihoyos, and FredWard (Faulkner v. National Geographic Association) after National Geographic 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-ROMs 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) based on the same underlying facts.
In both cases, the plaintiffs alleged that National Geographic 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, National Geographic, 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 National Geographic, relying on the 1997 decision in New York district court in the watershed case of Tasini v. New York Times Co. (see below). 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 2nd Circuit would overturn that Tasini decision in 2000.) The rulings in both Faulkner and Greenberg went up for appeal.
Greenberg was heard first. In March 2001, 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 Greenberg. It held thatNational Geographic 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 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 National Geographic 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.
In October 2001 the U.S. Supreme Court refused to hear National Geographic’s appeal of the 11th Circuit’s decision.
Adding to the confusion is that the circuit court Greenberg decision 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 Co., 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. In Tasini (as stated above) the 2nd Circuit Court in New York overturned the 1997 federal district court decision by 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 publishers 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.
It was also a seminal case that distinguished the 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 [inTasini] 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 National Geographic 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 just one piece at a time – out of context from how it was originally published on a page, and by itself, as a piece of material returned as the result of a database search, whereas the National Geographic CD-ROM set retains the material’s original presentation page by page while staying in context and in sequence, being a “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. What is a key factor and consistent with the 2nd Circuit Court rulings in both cases is that the focus is on how the materials are “presented to, and perceptible by, the user;” whereas the Greenberg court focused on how National Geographic 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).
Key to the 2nd Circuit’s decision was their 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 earlier decision was the fact that they viewed the CD as the original work of a new author (the act of compiling the issues into one venue, and adding new features), and that they were presented in a new medium (electronic instead of in print), and were being sold to a different market, therefore making the set a “new product.”
There are other procedural questions that were dealt with in these cases but it will be interesting to see how these conflicting decisions are squared. Could a new compilation of previously published material be considered an “allowable revision” even though some photographs found in the original version may be blacked out and it also contains additional material? It appears that the determining factor will be how a court applies the standard in determining whether “these changes do not substantially alter the original context.”
In the meantime the U.S. Supreme Court appears to have difficulty in determining its own standards. Part III, Rule 10 of the Rules of the Supreme Court of the United States, in pertinent part, states that:
Review on a writ of certiorari is not a matter of right, but of judicial discretion. A petition for a writ of certiorari will be granted only for compelling reasons. The following, although neither controlling nor fully measuring the Court's discretion, indicate the character of the reasons the Court considers: (a) a United States court of appeals has entered a decision in conflict with the decision of another United States court of appeals on the same important matter . . .
By not hearing these cases, the two Circuit Court rulings leave the plaintiffs with two conflicting legal findings on what is basically the same question of copyright infringement, both involving the very same product, National Geographic’s CD-ROM set. Plaintiffs and attorneys alike had hoped the Supreme Court would see a need to clarify the conflicting rulings and would hear the case. Having the Supreme Court this week refuse to consider the matter leaves it unclear as to where the photographers stand in seeking any resolution in the matter and whether there is any further course of action that can be taken. It also leaves unsettled the question of which standard will apply to previously copyrighted material: no substantial alteration, or new and original compilation?
Mickey H. Osterreicher has been a member of the NPPA since 1972 and is the chair of the Government Media Relations Committee and also a member of the Advocacy Committee. He has been a photojournalist for over 30 years in Buffalo, NY, where he now practices law. Donald Winslow contributed some reporting to this article.