Back-to-back rulings by federal appellate courts in Atlanta and New York favoring the National Geographic Society will allow magazine and newspaper publishers to transfer their published archives to computer discs and sell them commercially without infringing on freelance contributors' copyrights.
National Geographic won its dual victories after more than a decade of litigation in two federal circuits. The publisher of National Geographic has battled freelance writers and photographers over whether it must pay them additional royalties associated with the sale of "The Complete National Geographic" -- a digital version of the magazine's published archive.
On Monday, Judge Rosemary Barkett, writing the majority opinion for a sharply divided en banc court of the 11th U.S. Circuit Court of Appeals rejected the claims of a freelance Florida photographer whose work has been published in National Geographic.
Barkett was joined in the majority by fellow circuit judges Joel F. Dubina, Susan H. Black, Edward E. Carnes, Stanley Marcus, William H. Pryor Jr. and Senior U.S. Circuit Judge Phyllis A. Kravitch. Judge Frank M. Hull recused.
The ruling turned on the extent to which publishers may reprint and distribute previously published photos without infringing on individual photographers' copyrights. Central to that ruling is the definition of a "collective work" to which a freelancer has contributed.
A publisher, according to the en banc majority, may reproduce a freelance photographer's work in a reprint of the original collective work (such as a magazine, newspaper or encyclopedia) to which that photographer contributed; or a revision of that collective work; or a later collective work "in the same series." Reproduction of copyrighted photos in a new work without permission would constitute copyright infringement.
The ruling turns on what constitutes an acceptable revision and what constitutes a new work in light of a 2001 landmark copyright ruling by the U.S. Supreme Court. In that ruling, New York Times v. Tasini, the high court determined reprinting freelance writers' articles without permission in large computer databases such as Lexis-Nexis infringed freelancers' copyrights.
This week, the 11th Circuit relied on the language of that ruling in deciding that although photographs could not be reprinted in computer databases without permission, they could be republished on CD-ROM or DVD in a reprint of the original work, (in this case, issues of National Geographic) without infringing freelance contributors' copyrights.
The Atlanta court split 7-5. Judge Stanley F. Birch Jr. authored one of two dissenting opinions, with Judge R. Lanier Anderson III, authoring the second. Judge Charles R. Wilson joined Birch in his dissent, while Anderson and Chief Judge J.L. Edmondson joined in part. Birch, Judge Gerald B. Tjoflat, Edmondson and Wilson joined with Anderson in his opinion.
Two opinions handed down last Friday in the 2nd U.S. Circuit, involving breach-of-contract claims against the National Geographic Society by its former freelance authors and photographers, that also were tied to "The Complete National Geographic," reached similar conclusions. The federal appellate panels in New York affirmed summary judgments by the trial courts upholding the National Geographic Society's assertion that it owed no additional royalties to its published freelancers for reprinting their copyrighted works in "The Complete National Geographic."
"These opinions obviously have been a long time coming and have been considered quite thoroughly, briefed quite thoroughly, and argued quite thoroughly," former Atlanta lawyer Terry Adamson, now executive vice president of the National Geographic Society, said Tuesday. "We are very gratified by the opinion of the 11th Circuit and most recent opinions by the 2nd Circuit on contract issues."
The decade-long litigation, he said, "has been all about preserving 120 years electronically, so it would be preserved for all time," whereas the actual print publications "will be lost."
Norman Davis of Squire, Sanders & Dempsey, a Miami attorney who represented plaintiff photographer Jerry Greenberg in the Atlanta appeal, could not be reached for comment. Greenberg's photographs were published in National Geographic in January 1962, February 1968, May 1971 and July 1990. Greenberg regained ownership of each photo's copyrights.
Greenberg first sued the National Geographic in 1997, shortly after it began selling "The Complete National Geographic."
A district court in Florida found in favor of National Geographic. But in 2001, an 11th Circuit judicial panel that included Birch, Tjoflat and Anderson reversed and remanded the case. A jury later awarded Greenberg $400,000, which the National Geographic appealed.
That second appeal was reviewed by a new appellate panel, composed of Barkett, Senior Judge Kravitch and Judge Lewis A. Kaplan, sitting by designation from the Southern District of New York. That appellate panel rejected the 2001 opinion Birch had authored and, instead, found that National Geographic could reprint its magazines in whole on computer disks without running afoul of federal copyright laws. In doing so, the second panel resolved a conflict with the 2nd Circuit, which had been ruling for National Geographic in a string of companion cases.
After the reversal, the 11th Circuit issued an order to consider the Greenberg case a second time, this time en banc.
The Tasini case prompted the reversal of the earlier appellate ruling. But National Geographic's attorneys, including former Whitewater independent counsel and Kirkland & Ellis of counsel Kenneth W. Starr, sought to use the Tasini ruling to limit freelance photographers' copyrights.
In Monday's appellate court's majority opinion, Barkett said "each individual National Geographic magazine issue -- including the January 1962, February 1968, May 1971 and July 1990 print issues in which Greenberg's photographs first appeared -- is a 'particular collective work,' and each of Greenberg's photographs is 'part of' one of those collective works.
"National Geographic has the privilege of reproducing these individual magazine issues in print as often as it wishes, and Greenberg retains his copyrights in his individual photographs. At the same time, National Geographic has a copyright in the collective work as a whole -- to wit, the individual magazine issues."
The Greenberg case differed from Tasini in that, in Tasini, articles were "isolated from the context of the original print publications in which they first appeared," Barkett wrote in the majority opinion. "Because the freelance authors' articles were 'presented to, and retrievable by, the user in isolation, clear of the context of the original print publication," publishers were wrong in claiming they had not infringed freelancers' copyrights, the majority opinion stated.
Relying on dicta, found in Tasini holding that digital databases were not the same as microfilm or microfiche reproductions (for which royalties have generally not been paid), the 11th Circuit majority determined that because National Geographic's digital library reproduced complete magazine issues "exactly as they are presented in the print version," publishers retained the privilege of reproducing them under federal copyright laws without renegotiating contracts with their writers and photographers.
The majority also decided that new elements such as the operating software and search engines that were added to the CD-ROM library -- even if they carry copyrights -- were not enough to make "The Complete National Geographic" a new collective work subject to copyright.
"The addition of new material to a collective work will not, by itself, take the revised collective work outside the privilege," the majority opinion stated.
"The conversion of magazine issues from print to digital form -- as opposed to their conversion from print to print, or print to microform -- does not create a different balance of copyright protection … between individual authors and publishers. ... [T]he revision of a magazine by reproducing it in its original context in a new 'distinct form' -- i.e. a digital version -- is not a difference that would undo a publisher's [copyright] privilege ..."
Birch disagreed. "The authors, artists and creators should share in the publisher's profits," he wrote, adding that "the publishers are bereft of logic, legal merit and are totally disingenuous."
National Geographic and its co-plaintiffs, he said, "have changed their legal position in this case more than a politician running for election. ... Just as the chameleon politician changes position with the most recent poll, our appellants have changed their legal position and rationales as the Tasini case worked its way through the courts."
Birch also dismissed the majority opinion as "histrionic speculation and contention that a decision in favor of Greenberg would lead to the wholesale purging of their electronic archives (information-destroying purges, loss of recorded history, massive destruction of constitutionally protected information, etc.)."
"This often-repeated but seldom-analyzed threat is totally specious," Birch wrote, adding that one must distinguish "between history being available to the public in archives, and history as a consumer product sold to the public in mass-merchandised CD-ROMs or databases. If publication isn't limited to the former, history need not be lost (or even inconveniently stored)," he said. "It will just not be a profitable commodity -- as the publishers here have endeavored to make it."
Birch also took pains to point out what he said was the driving force behind the decade-long litigation.
"The reader should understand the pecuniary or commercial positions of the parties and their constituencies in this dispute," he wrote. "On one side there are the artists, authors, and other creators of copyrightable works who argue that their creative contributions to collective works already exploited by publishers should not be further exploited by those publishers without sharing the profits realized by that further commercial exploitation.
"On the opposite side, the publishers are seeking to generate new revenues by repackaging an old product -- the 'old wine in new bottles' paradigm; updated in this instance with an easier access twist-off metal cap rather than a cork. Here the new packaging of the old content, replicated but unrevised, in electronic medium is both cost-efficient, profitable, and attractive to a new, computer-savvy generation of consumers. Moreover, the profits are enhanced exponentially when the publisher can exclude the contributing artists, authors, and creators of the content from sharing in those profits. At the end of the day, this case is not about education, access by the masses, or efficient storage and preservation -- it is about who gets the money."
The 11th Circuit case is Greenberg v. National Geographic Society, No. 05-16964.