In an en banc decision with two lengthy dissents, the Eleventh Circuit held that a compilation of 1,200 issues of National Geographic magazine on a CD-ROM, in which each issue of the magazine was displayed in the exact format used in the print version, was a “revision of that collective work” under 17 U.S.C. §201(c). The court held, therefore, that the defendants’ reproduction and distribution of the CD-ROM was “privileged” under § 201(c) and did not infringe the freelance photographers’ copyrights in the photographs that appeared in the print version of the magazine. (This decision comports with the Second Circuit’s decision in Faulkner v. Nat’l Geographic Enters. Inc., 409 F.3d 26 (2d Cir. 2005) involving similar issues.)
The plaintiffs are freelance photographers who contributed photographs that were published in several issues of National Geographic magazine in print form, and they retained ownership of the copyrights in their photographs. There was no contract between the plaintiffs and the publisher. In 1997, National Geographic Society published a CD-ROM containing 1,200 issues of the magazine from 1988 through 1996 and the Society did not obtain permission from the freelancers whose works were contained in those magazines and did not provide any compensation to them. The plaintiffs filed suit for copyright infringement, and the publisher claimed that its publication of the CD-ROM was a privileged use under Section 201(c) of the Copyright Act.
Section 201(c) provides:
17 U.S.C. § 201(c),
(c) Contributions to collective works. Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
The district court granted summary judgment to the publisher, but a panel of the Eleventh Circuit reversed and remanded in 2001, and a jury awarded damages to the plaintiffs in the amount of $400,000. Following the Eleventh Circuit’s decision, the U.S. Supreme Court ruled in New York Times Co. v. Tasini, 533 U.S. 483 (2001), that reproductions of newspaper and magazine articles in electronic databases were not privileged collective works because they were not reproduced in their original context. A second panel of the Eleventh Circuit reversed the damages award in 2007 and then the Eleventh Circuit vacated its 2007 decision and granted rehearing en banc.
In Tasini, the court wrote “Under § 201(c), the question is not whether a user can generate a revision of a collective work from a database, but whether the database itself perceptibly presents the author’s contribution as part of a revision of that collective work. . . . In determining whether the [a]rticles have been reproduced and distributed ‘as part of’ a ‘revision’ of the collective works in issue, we focus on the [a]rticles as presented to, and perceptible by, the user of the [d]atabases.”
The Eleventh Circuit explained that “the teachings of Tasini are twofold. First, the concept of ‘revision’ necessarily includes some element of novelty or ‘newness’ as defined by the Court, and second, consideration of the context in which the contributions are presented is critical in determining whether that novelty is sufficient to defeat the publisher’s § 201(c) privilege.”
According to the Eleventh Circuit, each individual National Geographic Magazine issue--including the January 1962, February 1968, May 1971, and July 1990 print issues in which plaintiff 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 court reasoned that the National Geographic CD-ROM is analogous to the microforms discussed in Tasini: the CD-ROM uses the identical selection, coordination, and arrangement of the underlying individual contributions as used in the original collective works; it presents two pages of an issue at a time, with the magazine fold in the middle, and with the page numbers in the lower outside corners, exactly as they are presented in the print version (“what the user of the [CD-ROM] sees on his computer screen . . . is a reproduction of each page of the magazine that differs from the original only in the size and resolution of the photographs and text[,] [with] [e]very cover, article, advertisement, and photograph appear[ing] as it did in the original paper copy of the magazine”); the plaintiffs’ photographs do not appear disconnected from their original context; and a user of the CD-ROM cannot move or alter the photographs or articles.
The court rejected the argument that the CD-ROM is not privileged because new elements have been added to the original print publications of the magazine. “If simply adding a new element to a collective work, such as an index, table of contents or a new foreword, creates a ‘new collective work’ outside the purview of § 201(c), then the ‘revision’ prong is effectively nullified. The addition of new material to a collective work will not, by itself, take the revised collective work outside the privilege, and the pertinent question for a court is whether the new material so alters the collective work as to destroy its original context.”
The court also rejected the argument that transforming the magazine issues into electronic format created a new work. “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 under § 201(c) between individual authors and publishers because copyright protection is media neutral.”
Judge Birch’s dissent argued the CD-ROM is a “new,” “entirely different” collective work to which the § 201(c) privilege does not attach because it contained two computer programs (the index and the search function) and that the publisher infringed the plaintiffs’ copyrights by publicly displaying the photographs “by means of projection on a computer screen, a non-privileged exercise by a § 201(c) grantee.”
Judge Anderson’s dissent argued that whether contributions to a collective work are reproduced in their original context should be a threshold determination and it does not always mean that the new publication enjoys the §201(c) privilege; that republishing all 1,200 individual issues of the magazine in a single volume is not a privileged revision; and that the CD-ROM was a new product, with new features, intended for a new market, and not a privileged revision.