A recent en banc ruling of the 11th Circuit helps to clarify and solidify a media-neutral trend in copyright law while adding certainty to what publishers may do with valuable libraries of outdated paper. Such outdated paper will have little utility unless made available for republication in more accessible new media.

In Greenberg v. National Geographic Society, No. 05-16964, decided June 30, 2008, the 11th Circuit, sitting en banc, held that a paper magazine publisher had the privilege of republishing its content, including the photographs at issue, in the form of a CD-ROM, even where the new media was a compilation of all issues published since the magazine’s inception coupled with newly-embedded computer programs for accessing and indexing the individual contributions of the original authors of the text and photographs. This ruling was consistent with an earlier decision of the Second Circuit in Faulkner v. National Geographic Society, 409 F.3d 26 (2d Cir. 2005), and follows the holding of the Supreme Court in Tasini v. New York Times, 533 U.S. 483 (2001).

The ruling interprets Section 201(c) of the Copyright Act (dealing with ownership of contributions to collective works), which provides as follows:

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." (Emphasis added.)

The Supreme Court in Tasini held that the New York Times went beyond the Section 201(c) privilege by compiling the text of all its articles in a searchable online database which allowed users to view the individual articles totally out of context from the other material originally compiled and published as part of the daily newspapers. Such other material included the surrounding articles, photographs and advertisements. Absent Section 201(c)’s privilege, the database constituted a new use rather than a republication or revision of the collective work and, hence, infringed the copyrights of the authors of the individual contributions.

In contrast, the Greenberg, Court found that National Geographic had merely accurately reproduced all of the contents of all of its issues, from the very first to the then most recent, including all of the articles and photographs, and even including the original ads, just as they appeared to readers in print form. The Complete National Geographic (the "CNG") thus allowed users to electronically "flip" through pages displayed side-by-side and engage in a computer-equivalent experience analogous to sifting through the contents of old issues on shelves or discovered in the attics of parents or grandparents. In short, the "in context" reproduction of the individual contributions, even though utilizing the new and previously unknown media of CD-ROMs, constituted the kind of republication or revision of that particular collective work contemplated by Section 201(c) as explicated by Tasini. The en banc majority in Greenberg found this result to be dictated by the application of the doctrine of "media neutrality" long embodied in copyright law, which acknowledged that copyright subsists "in original works of authorship fixed in any tangible medium of expression, now known or later developed…." Section 102(a). The CD-ROM edition of CNG was no different, as viewed by the Court, than microform reproductions of entire collective works, including all individual contributions, within their original context, as Tasini expressly found to be within Section 201(c)’s permissible scope.

The Greenberg Court found that the addition of the computer-aided search tools did not substantively alter the fundamental nature of the CNG as a privileged revision given the faithful reproduction of the individual contributions in their original context. The new indices and animated introductions, likewise, did not vitiate the Section 201(c) privilege.

Significantly, the 11th Circuit did not rule on, and hence remanded for further proceedings, whether the introductory sequences, which included animated montages of photographs from the CNG, would require separate permission from the individual contributors as derivative works. In short, the Greenberg ruling strikes a balance between the collective work publishers’ Section 201(c) privileges and the rights of individual contributors to be compensated for derivative works based upon their separate contributions.

The 11th Circuit concluded with guidelines which speak for themselves:

In the light of the Supreme Court’s holding in Tasini that the bedrock of any § 201(c) analysis is contextual fidelity to the original print publication as presented to, and perceivable by, the users of the revised version of the original publication, we agree with the Second Circuit in Faulkner and find that National Geographic is privileged to reproduce and distribute the CNG under the “revision” prong of § 201(c).

The CNG—albeit in a different medium than print or microform—is a permissible reproduction of the National Geographic Magazine. Greenberg’s photographs are preserved intact in the CNG and can only be viewed as part of the original collective works in which they appeared. Similar to the microforms of Tasini, which preserve the context of multiple issues of magazines, the CNG’s digital CD-ROMs faithfully preserve the original context of National Geographic’s print issues. The CNG’s additional elements—such as its search function, its indexes, its zoom function, and the introductory sequence—do not deprive National Geographic of its § 201(c) privilege in that they do not destroy the original context of the collective work in which Greenberg’s photographs appear. (Emphasis added.)

Although accompanied by vigorous dissents, the 11th Circuit’s en banc opinion, wholly in line with the Second Circuit’s Faulkner decision with almost identical facts, should encourage publishers to repackage their libraries of collective works in a manner which more fully utilizes current and future media and technologies for disseminating these valuable cultural assets, which might otherwise not be available, to the broadest possible audience.

Authored by:

Edwin Komen

(202) 772-5328