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In a decision called “curious” by at least one expert, a federal appellate panel last month reversed its circuit’s six-year-old opinion in a major copyright case. The three-judge panel of the U.S. Court of Appeals for the 11th Circuit thereby interpreted a landmark Supreme Court decision that expanded the copyrights of freelance writers in a way that limited the copyrights of freelance photographers. The panel’s June 13 ruling in Greenberg v. National Geographic Society II reversed an entirely different panel’s 2001 opinion in Greenberg v. National Geographic Society I. That decision had been written by Judge Stanley Birch Jr., a noted copyright expert, and joined by Judges Gerald Tjoflat and R. Lanier Anderson III. In reversing Greenberg I, the second panel sidestepped a precedent that binds panels to earlier circuit decisions unless they have been overturned by the entire 11th Circuit or the Supreme Court. By declaring Greenberg I moot, the new panel — Judge Rosemary Barkett, Senior Judge Phyllis Kravitch, and U.S. District Judge David Trager, visiting from the 2nd Circuit — also resolved a conflict with the 2nd Circuit created by the Birch opinion. Trager wrote for a unanimous panel. CONFLICTED FEELINGS The dispute was sparked by the National Geographic Society’s creation of The Complete National Geographic, a 30-disc CD-ROM set containing complete reproductions of every issue of the magazine. Four issues of the magazine had run photos by Florida freelance photographer Jerry Greenberg, who reclaimed his copyrights after publication. One of those photos appeared in an animated montage designed for the CD set. In the 2001 case, Birch found that the CD set infringed Greenberg’s copyright. But in nearly identical cases brought against National Geographic by other freelancers in New York, 2nd Circuit judges took the opposite tack. In Greenberg II, Trager asserted that the new panel had authority to overturn Greenberg I if “the rationale the Supreme Court uses in an intervening case directly contradicts the analysis this Court has used in a related area, and establishes that this Court’s current rule is wrong.” The intervening case was New York Times v. Tasini (2001). In Tasini, the Supreme Court found that the Times‘ sales of published news articles to online databases infringed the copyrights of freelance writers whose contracts had never contemplated the advent of digital databases. Lawrence Nodine of the Atlanta intellectual property boutique Needle & Rosenberg calls Greenberg II “curious” for several reasons. “Leave out for a second the sitting 2nd Circuit judge,” he says. “The rule is that you are bound by previous panel decisions of the circuit that should only be reversed en banc.” Although a panel could reverse a previous panel if there were a Supreme Court decision “on point,” Nodine suggests that Tasini was based on a different set of facts. Norman Davis of the Miami office of Squire, Sanders & Dempsey, who represents Greenberg, insists that Tasini “has no relevance whatsoever to Greenberg I.” In an appellate brief in Greenberg II, he suggested that the 2nd Circuit’s rulings in the other National Geographic cases “set up a conflict” with Birch’s 2001 opinion “through the misapplication of Tasini” and argued that any resolution of that conflict “ should be left to the Supreme Court.” Terrence Adamson, executive vice president of the National Geographic Society, says he is “pleased and quite delighted” by Greenberg II. NEW OR OLD? The Tasini case was one of the most widely watched copyright cases in years. In a 7-2 opinion issued in 2001 (after Greenberg I), the Supreme Court affirmed a 2nd Circuit ruling in favor of the writers. Writing for the majority, Justice Ruth Bader Ginsburg held that electronic and CD databases containing individual articles from multiple issues of periodicals could not be considered “revisions” of those issues. She also dismissed an analogy that claimed digital databases were akin to microfilm and microfiche reprints, which have not prompted copyright infringement claims. As Tasini headed to the high court, the Greenberg dispute reached the 11th Circuit. Greenberg I and II stem from National Geographic’s placement of its entire magazine library on CD. In 1998, National Geographic registered a new and separate copyright for the CD set. In Greenberg I, Birch stated that “common-sense copyright analysis compels the conclusion” that National Geographic has created “a new product . . . in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction” envisioned by federal copyright law. Birch specifically dismissed arguments that the CD set was the same as microfilm or microfiche. The critical difference is “the interaction of a computer program in order to accomplish the useful reproduction,” he wrote. These programs themselves “may constitute original works of authorship, and thus present an additional dimension in the copyright analysis.” On remand, a district judge awarded Greenberg $400,000 in 2004. National Geographic appealed again. In Greenberg II, Trager sided with his home circuit, which since Tasini has rejected other freelancer claims against National Geographic. Although Trager acknowledged that Tasini had not addressed the issue directly, he suggested that the high court had given “tacit approval” to view microfilm and microfiche as noninfringing. “Under the Tasini framework, the relevant question is whether the original context of the collective work has been preserved in the revision,” Trager wrote. “Clearly, the replica portion of the [Complete National Geographic] preserves the original context of the magazines, because it comprises the exact images of each page of the original magazines.” Trager also asserted that the embedded software did not alter “the original context of the magazine contents.” READING INTO TASINI L. Donald Prutzman of New York’s Tannenbaum Helpern Syracuse & Hirschtritt, who submitted an amicus brief in Tasini for the American Society of Media Photographers, says the 2nd Circuit, in Faulkner v. National Geographic Enterprises (2005), held that Tasini allowed publishers to reproduce articles in digital form as long as they were presented as part of an entire issue. But “the National Geographic product added a number of bells and whistles,” he says. “There was a basis for a holding that it was a new product, not just an alternative form of the magazine.” Professor Leon Friedman of Hofstra University School of Law, who filed an amicus brief on behalf of the Authors Guild in Tasini, suggests that “people are reading a little too much into Tasini.” Because of that, he suspects that the Supreme Court would take Greenberg II. (After issuing Tasini, the high court denied cert in Greenberg I, which was published six days before Tasini was argued.) But Charles Sims of the New York office of Proskauer Rose, who filed an amicus brief in Tasini for the Association of American Publishers, says, “The 11th Circuit was wrong in 2001 and corrected itself in 2007. The analysis that the Tasini court used was one of the reasons why it was so clear the 11th Circuit was wrong. It’s certainly useful that they have corrected their error and brought themselves in line with the 2nd Circuit.”
R. Robin McDonald is a reporter for the Daily Report , an ALM publication based in Atlanta where this article first appeared in.

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