Greenberg v. National Geographic Society
11th Circuit, June 30, 2008, No. 05-16964
On June 30, the Eleventh Circuit issued a divided en banc opinion, affirming by a 7-5 vote the panel decision in Greenberg II, which had vacated Greenberg I.
Writing for the majority, Judge Barkett held that National Geographic was privileged to reproduce its print issues. Section 201(c) of the Copyright Act distinguishes between the copyright of each individual work within a collective work -- here Greenberg's photographs -- and copyright of the collective work in its entirety, here National Geographic's “Complete National Geographic” (“CNG”), a CD-ROM collection of all the back issues of the National Geographic magazine. Citing New York Times v. Tasini, Judge Barkett wrote that § 201(c) granted the publisher privilege to reproduce an article contributed by a freelancer when it was part of (1) the collective work to which the author originally contributed; (2) any revision of that work; or (3) any later collective work in the same series. Emphasizing the importance of the context in which the works were presented, Judge Barkett found that the CNG CD-ROM collection qualified as a “revision” under § 201(c) and Tasini's interpretation of the term.
William Patry comments favorably on the majority opinion on his blog, and notes that a grant of certiorari is unlikely as there is no split in the circuits, and the issues decided are close to Tasini. He previously criticized Judge Birch's approach as at odds with copyright's constitutional goal of promoting the progress of science. Law.com provides a summary of the decision and the procedural history of the case.
In Greenberg I, the district court had held that National Geographic's reproduction of its print magazine issues in the CNG was a “revision” under 17 U.S.C. § 201(c) of the Copyright Act, and thus did not constitute infringement of the copyrights of a freelance photographer whose photographs were included in several of the print issues. The Eleventh Circuit reversed the district court's grant of summary judgment in favor of National Geographic, however, and remanded for determination of damages. Shortly thereafter, the Supreme Court issued its decision in New York Times v. Tasini, which provided further guidance as to the proper scope and interpretation of § 201(c).
Addressing National Geographic's post-Tasini appeal, the Eleventh Circuit held in Greenberg II that under Tasini's reasoning, National Geographic could reproduce its print magazine in digital form under § 201(c) without infringing individual photographers' copyrights. The court then granted hearing en banc to determine whether National Geographic's use of the photographs was privileged.
In the instant majority opinion, the court reasoned that although CNG reproduced the original print issues in an electronic format, it reproduced them in the exact same context as they originally appeared, merely digital reproductions of the original printed pages. It relied on this to distinguish the instant case from Tasini, as there, the individual articles appeared independent from the context of their original publication, and without the original publication's formatting features. The court noted that CNG's inclusion of a computer search program, which allows users to navigate through the collection, did not alter this conclusion as the search results still present full pages and issues, rather than isolated articles and photographs devoid of the original print context.
The court acknowledged that truly “new” collective works would not qualify for § 201(c) protection. It found, however, that the minimal new features incorporated into the CNG, including an index, search and zoom functions, and a brief introductory sequence montage, did not divest National Geographic of the § 201(c) privilege. The court concluded by recognizing the consequences of the rapid development of new information storage media. The court emphasized that courts must analyze whether the addition of new materials to a new-medium reproduction creates a new collective work so as to place it outside of § 201(c) protections, and not simply presume that the use of a new medium itself creates a new work by default.
Judge Birch, who had authored the majority opinion in Greenberg I, filed a lengthy dissent. He would have found that (1) the CNG is a new work that does not qualify for the § 201(c) privilege; (2) National Geographic could not have transferred its reproduction privilege to Mindscape, a third party developer who worked with National Geographic to create CNG; and (3) projecting the photographs in question onto a computer screen was not privileged under § 201(c). Judge Birch reasoned that by combining some 1,200 pre-existing magazines (each, he argued, a separate collective work) into a single digital collection, together with independent computer software that helps users to search for and view particular articles and photographs, National Geographic created a new work outside of the § 201(c) privilege. He further criticized the majority's analogy of the CNG to microfilm, arguing that without the search engine and the image-compression software that CNG utilizes - two features that microfilm does not have - the digital collection would not be commercially marketable, as it would likely take up several hundred CD-ROMs and would not be easily navigable.
Judge Anderson joined the part of Judge Birch's dissent that argued that CNG was a new work outside of the § 201(c) privilege and submitted a separate, brief dissent. He argued that the “context” analysis set forth in Tasini did not resolve the instant case, because, in his view, that case did not answer whether satisfaction of contextual analysis always meant that the new publication received the § 201(c) privilege. He expressed doubt that the § 201(c) grant of privilege of reproduction of individual collective works extended to compilations, reasoning that compilations were not "revisions" of any of the individual constituent works. Although recognizing that conversion from print to digital media and addition of new functionality does not necessarily result in creation of a new collective work, Judge Anderson thought that National Geographic's creation of a massive digital collection of 1,200 print issues, accompanied by new features and new uses, exceeded its § 201(c) reproduction privilege.