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Photographer Takes Copyright Fight to U.S. High Court
His lawyer says 11th, 2nd circuits misinterpreted Supreme Court ruling in their decisions favoring National Geographic Society
Fulton County Daily Report
October 17, 2008
A Florida photographer is asking the U.S. Supreme Court to revisit a landmark copyright decision to determine whether federal appellate courts in Georgia and New York have interpreted it correctly.
The move by freelance underwater photographer Jerry Greenberg extends his 11-year fight with the National Geographic Society over its use of his photographs in a CD compilation of every edition of its flagship magazine.
Between 1962 and 1990, National Geographic published 64 of Greenberg's photos, including one of a shark in the Florida Keys that became a magazine cover. National Geographic paid Greenberg for the publication rights, which were conveyed back to Greenberg in the mid-1980s, said the photographer's longtime Miami attorney, Norman Davis of Squire, Sanders & Dempsey.
In 1997, when National Geographic developed "The Complete National Geographic," a CD archive of its entire magazine library, Greenberg attempted to negotiate a new publication contract based on the CD library. But National Geographic claimed the CD set did not infringe Greenberg's copyright, Davis said.
Since 2005, two federal appellate circuits, the 2nd in New York and the 11th in Atlanta, have agreed with National Geographic. In separate cases brought by freelance writers in New York and Greenberg in Florida against the National Geographic over the CD library, the appellate courts have held that publishing the magazine's archive on computer CDs does not infringe the copyrights of its freelance contributors.
Greenberg's appeal asks the Supreme Court to clarify Justice Ruth Bader Ginsburg's majority decision in the 2001 case of New York Times v. Tasini, 533 U.S. 483, which also sought to settle a dispute between freelance writers and publishers over the digitized use of the writers' works.
Greenberg's petition asserts that federal appellate copyright rulings by the 11th and 2nd circuits citing Tasini have "warped" the Ginsburg majority opinion.
"We believe the Supreme Court would be interested in what has been done by two of the [federal appellate] circuits in the Tasini decision," Davis said. "The Supreme Court, I think, will agree that the Tasini decision has been wrongfully applied. In a very volatile copyright environment, that's not a good thing."
Tasini, named for lead plaintiff and freelance writer Jonathan Tasini, determined that publishers violated freelance writers' copyrights if they sold previously published freelance articles to online databases without securing new permission from the authors. The case provided guidance in interpreting and applying revisions made in 1976 to section 201(c) of the federal copyright laws in the context of the technological revolution that has created new avenues of publication.
The decision was considered a win for freelance writers who could then negotiate new permissions and monetary contracts with publishers for what the court majority held were new uses of previously published works.
BACK-AND-FORTH CASE
Greenberg's case began in Florida, where a federal judge originally found for National Geographic. Greenberg appealed to the 11th Circuit, which in 2001 reversed the district court and remanded the case, finding that National Geographic had infringed the photographer's copyright. The 11th circuit opinion was released shortly before Tasini was handed down.
The Florida district court subsequently found that National Geographic owed Greenberg $400,000 in damages. National Geographic appealed, and last year a new 11th Circuit panel -- citing the intervening Tasini decision -- reversed the first panel's ruling in favor of National Geographic. In June the 11th Circuit, sitting en banc, split 7-5 in favor of National Geographic. That decision was compatible with a 2005 finding by the 2nd Circuit of New York regarding virtually identical copyright questions.
The two appellate circuits' majorities adopted arguments by National Geographic and a coterie of amici publishers that Ginsburg's majority opinion in Tasini -- while restricting the publishers from selling freelancers work to online databases such as Lexis and Westlaw without securing the authors' permission -- allowed publishers to place entire publication libraries on CDs and then sell them without owing anything to the freelance authors and photographers whose works are reproduced in those collections.
The 11th Circuit's en banc majority decision, 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 privilege.
"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.
INTERPRETING GINSBURG
The 11th Circuit ruling turned on the definitions of an acceptable revision and a new work as determined by Tasini. Publishers, including National Geographic, have acknowledged that their arguments are not based on specific language in Tasini but rather on dicta -- explanatory commentary included in the opinion that does not directly address the facts of the case under review.
In Tasini, Ginsburg wrote for the 7-2 majority that electronic and CD-ROM databases compiled of individual articles culled from periodicals could not be considered "revisions" or revised editions of previously published issues -- such as revised editions of an encyclopedia or multiple editions of a daily newspaper. Therefore, publishers may not sell the rights to reproduce those articles to computer or online databases without contracting for the publication rights from the authors.
In deciding that the databases were not simply a revised edition, the Supreme Court focused on the articles' appearance in online databases without the graphics, formatting and layout that accompanied their original publication.
"Those databases simply cannot bear characterization as a 'revision' of any one periodical edition," Ginsburg wrote. "We would reach the same conclusion if the [New York] Times sent intact newspapers to the electronic publishers."
The court majority also specifically rejected an analogy offered by publishers saying that the electronic databases were no different than microfilm and microfiche reproductions. The court found that comparison "wanting."
"Microforms typically contain continuous photographic reproductions of a periodical in the medium of miniaturized film," Ginsburg wrote. "Accordingly, articles appear on the microforms, writ very small, in precisely the position in which the articles appeared in the newspaper."
As a result, a user views an article in context, Ginsburg wrote. In electronic databases, "by contrast, the articles appear disconnected from their original context. ... In short, unlike microforms, the databases do not perceptibly reproduce articles as part of the collective work to which the author contributed or as part of any 'revision' thereof."
PETITIONING THE COURT
Greenberg's petition to the justices states that his case "presents the question of whether a database aggregating many collective works constitutes a 'revision' of each of its constituent collective works."
What constitutes a revision is key to the ongoing legal debate because, according to the petition, the 1976 copyright revisions embodied in Section 201(c) were intended "to limit the ability of a publisher to republish contributions to collective works without providing compensation to the freelance artists who should benefit from the demand for their work after the initial publication."
That section is the backdrop against which freelance artists and publishers negotiate their contracts, the petition asserts.
Both the 11th and 2nd circuits, Greenberg's petition says, "have held that a publisher can avoid paying the artist anything under Tasini by the simple expediency of creating 'context' by including a feature that allows users to 'flip' between the pages of individual magazines."
"So long as publishers use an image-based database with a flip function," the petition continues, "they can place their entire archive of magazines or newspapers on the Web for free, benefiting from advertising revenues or increased traffic. Yet the artist receives nary a penny. ... Publishers can sell access to individual articles, stories, or pictures, so long as the rest of the pages in the issue are a click away. Once a Google search can find it, the author's copyright for that individual text, picture or video is essentially worthless."
Finally, in urging the high court to hear the case, Greenberg's petition concludes, "[T]he outcome of this dispute will determine whether freelance artists will share in the benefits of modern technology. ... This Court should clarify that publishers cannot reap the benefits of appropriating the market for the freelancer's individual works without compensating the freelancer."
On Thursday, Terry Adamson, executive vice president of the National Geographic Society, said he was not surprised Greenberg asked the high court to take the case.
In an e-mail to the Daily Report, he said, "We are evaluating whether to respond, and, if we do, what to add for the Court's consideration whether to grant or deny certiorari. As the 11th and 2nd Circuits have both held, we believe that the Supreme Court has clearly outlined the parameters of the statutory 201(c) privilege when it spoke in 2001 in Tasini v. The New York Times et al. and that the CNG [Complete National Geographic] is well within those parameters."
