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In a case that pits a freelance photographer against a publisher, an 11th U.S. Circuit Court of Appeals panel could redefine copyright law to fit today’s high-tech era. A three-judge panel of Atlanta’s 11th U.S. Circuit Court of Appeals on Tuesday heard oral arguments on whether the National Geographic Society violated copyright law when it reproduced on CD-ROM disks a series of magazines containing freelance photographer Jerry Greenberg’s photos without his permission. Greenberg v. National Geographic Society, No. 00-10510-C (11th Circ. Oct. 3, 2000). The case is being watched closely by publishers. Kilpatrick Stockton partner Joseph M. Beck has filed a “friend of the court” brief on behalf of Gannett Co., The New York Times Co., Time Inc., the Times Mirror Co., Hatchette Filipacchi Magazines, the Tribune Co., the Magazine Publishers of America and the Newspaper Association of America. In that brief, Beck claims a ruling favoring Greenberg “would seriously diminish public access to a substantial portion of the historical record compiled by this nation’s magazines and newspapers.” The American Society of Photographers has countered with a brief on Greenberg’s behalf. A district court judge in Florida last year ruled that the National Geographic Society’s CD-ROM set had not infringed on Greenberg’s photo copyrights. In oral arguments that lasted a nearly unprecedented 90 minutes Tuesday, the judicial panel aggressively questioned opposing counsel and laid out in often blunt language issues that are surfacing in Internet and computer copyright suits across the country. SIMILAR CASE BEFORE HIGH COURT The Greenberg case is similar to a New York case pending before the U.S. Supreme Court. In Tasini v. The New York Times, 206 F.3d 161, (2nd Circ., Sept. 24,1999, amended Feb. 25, 2000) a 2nd Circuit panel ruled last year that newspaper and magazine publishers must obtain reprint permission from freelancers and other independent contractors for works published on the Internet through electronic archives such as Nexis. The Atlanta panel included Judge Gerald B. Tjoflat, Chief Judge R. Lanier Anderson III, and Judge Stanley F. Birch Jr. Anderson was one of two appeals court judges last year who revived a copyright infringement suit against CBS by the family of Martin Luther King Jr. A federal district court judge had ruled that King’s “I Have A Dream” speech was in the public domain. But Anderson penned the appeals court opinion that King’s copyright had not been forfeited. Birch is a scholar of intellectual property law whose courthouse portrait depicts him holding “Nimmer on Copyright,” the definitive legal text on copyright law. Among the legal issues raised by the judges: � Who owns publication rights�the freelancer or the publisher?�for a medium that was not expressly included in a licensing agreement because the medium did not exist at the time of the agreement. � Is a publisher’s reproduction, without alteration, of back magazine issues on CD-ROM a simple compilation, equivalent to microfilm or microfiche reproduction, which is allowed by copyright law? � Does translating the published material to a new computer medium and adding a separately copyrighted search engine that functions as an index sufficiently alter the freelancer’s work so that it is derivative and, thus, subject to copyright protection? At stake are royalties that publishers could be forced to share with freelancers whenever they reproduce and sell the freelancers’ published works in merchandise designed for computer access. Said Birch: “All this is about who gets the money, whether you [publishers] can get the money or have to share it with some author.” PHOTOGRAPHER’S CONTRACTS Greenberg has been selling photos for publication in The National Geographic since 1961. According to Greenberg’s attorney, Norman Davis of the Miami firm Steel Hector & Davis, the photographer’s contracts generally included a copyright clause stating that, after publication, all rights to his photos reverted to him. In addition, in 1985, Greenberg wrote to the magazine, asking for a letter clarifying his ownership of the rights to his published photos. The magazine’s attorney complied in a notarized letter reassigning the rights to Greenberg’s published photos to the photographer, Davis said. But in 1997, the National Geographic Society began selling a set of 30 CD-ROM disks containing 108 years of The National Geographic, which included Greenberg’s photos. Greenberg contended the society had no right to republish his photos because they had reassigned the photo rights to him and because the CD-ROM set was “a new derivative work” protected by federal copyright law. The CD-ROM set, in addition to containing reprints of each magazine cover and contents, also included a video sequence of moving covers, including one shot by Greenberg. �A NEW ANTHOLOGY’ Greenberg’s attorney argued in his appellate brief that the CD-ROM set was “a new anthology” rather than a simple reprint. National Geographic, Davis argued, retained the rights to reprint only copies of the original magazine. “Congress,” he wrote, “did not intend to permit the inclusion of previously published freelance contributions �� such as the Greenberg photographs –in a completely new anthology or in later collective works not in the same series. The society cannot contend that The Complete Geographic is a collective work in the same series as each issue of the monthly magazine.” But defense attorney Robert Sugarman of the New York law firm Weil, Gotshal & Manges argued that the reproduction, including revisions, of the original publication are not a copyright infringement. In his appellate brief, he argued that the CD-ROM library was no different from bound volumes of The National Geographic or reproductions on microfilm and microfiche. “The difference in the medium is immaterial,” he wrote. “The fact that multiple issues of the magazine are included on one CD-ROM disk is immaterial, just as the inclusion of more than one issue of the magazine in a bound volume or on a roll of microfilm or microfiche is immaterial. The addition of tables of contents, introductions and advertisements is immaterial, just as the addition of tables of contents and indices in bound volumes, microfilm and microfiche is immaterial.” IS CD SET A REPRINT? From the bench, Judge Anderson searched for a distinction between selling the CD-ROM set of National Geographics and simply selling bound volumes of back issues, which Davis acknowledged did not infringe Greenberg’s copyright. And he pondered whether binding a decade’s worth of issues in a single volume was truly the same as “binding” them on a computer disk. “The question in my mind is whether reproduction in a computer format constitutes a sufficient transformation,” he said. “You say the medium makes no difference. But here, the medium creates a new market.” Does the legal privilege that grants publishers certain reprint rights extend to that new market, he asked. Anderson also questioned whether a collective work refers to a single published issue or to the entire, historical body of the publication. The difference is key, he noted. If the entire back list of a publication is considered a single “collective work” to which a freelance author, illustrator or photographer contributed, copyright law may permit reprints or revisions of multiple issues in a single volume without infringement. Said Davis: “Each magazine is a collective work. The combined product is a different collective work.” Anderson also asked at what point a revised edition of a collective work might metamorphose into a new, derivative publication. Greenberg’s lawyer, the judge noted, argued that the National Geographic’s CD-ROM “is so changed it is more than a revision, it is a derivative work. If you’re wrong in that, you lose.” But, Anderson added, “I think you may be right on that.” Birch and Tjoflat zeroed in on the details of the contracts between Greenberg and The National Geographic and how clearly those contracts spelled out the disposition of the photo copyrights. “I don’t see how anybody can decide this case without knowing what the contract arrangements were,” Tjoflat complained. “They told us nothing in the record that sets out the agreements.” And Birch noted that copyright law only comes into play “if there’s a void, if the contract doesn’t speak to it.” If the licensing agreements between a freelancer and a publisher do not include reproducing a purchased work in a new medium or as a new product, “You lose,” he told Sugarman, the National Geographic’s attorney. “If the licensing agreement doesn’t contemplate it, you lose.” BIRCH: MEDIUM MATTERS Birch also took issue with Sugarman’s argument that the medium in which a work was reproduced is irrelevant. “If an author of a novel gives a license … to a publisher to publish a novel in hardback or in softback, we’re saying the medium doesn’t matter. A publisher can make a movie of it, too. Of course not. The medium matters in copyrights. One of the exclusive rights of the author is to make a derivative work. If a CD-ROM constitutes a derivative work, they [the National Geographic Society] are in violation of an exclusive right of the author.” Like Anderson, Birch questioned whether the National Geographic’s CD-ROM set is really a compilation or whether the National Geographic Society and Mindscape, which produced the CD-ROM set, are being disingenuous in making that claim. Birch noted that both the society and Mindscape secured new copyrights for the set. “What a CD-ROM set is really not analogous to is bound volumes,” he said. “What you’ve got is a brand new work for a new medium for a new market that was never contemplated by the parties or in the licensing agreement. … I suggest the author has exclusive right to make derivative works. It is as plain as day to me this is a derivative work, and the society has exercised a right it doesn’t have.”

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