Digital compilation of magazine archives a privileged “revision” of a collective workJune 13, 2007

In a decision today, the Eleventh Circuit held that the National Geographic Society, by its publication of "The Complete National Geographic," had not infringed the copyrights of a photographer whose photos appear in the various individual issues of National Geographic. The court held that the change from print to digital media was a "revision" as contemplated by 17 U.S.C. § 201(c), and therefore National Geographic had the privilege to reproduce it in that form.

This is the opposite result of a previous decision by the Eleventh Circuit in the same case from 2001, and the court came to the opposite result based on an intervening Supreme Court case, New York Times Co. v. Tasini, which set forth the proper test for determining whether material was privileged under § 201(c). As a result of the intervening case, the photographer's copyright claims against National Geographic based on the reproduction of magazine issues failed. However, the court did remand one issue regarding use of a photograph in the introductory animation of The Complete National Geographic, explicitly finding that this use was outside the privilege of § 201(c), but not determining whether this use constituted copyright infringement.

More details of Greenburg v. Nat'l Geographic Soc'y after the jump.

National Geographic has published its magazine since 1888, and has reproduced back issues of the magazine in bound volumes, microfiche and microfilm for many years. In 1997, National Geographic produced "The Complete National Geographic" ("CNG"), a 30 CD-ROM set of all issues of National Geographic issues that had been published between 1888 and 1996. It is an image-based reproduction of the magazines exactly as they appeared in print; the user has no means to separate the photographs from the text or to edit the contents. When a CD-ROM is inserted, a 25 second introductory segment appears with images of ten past magazine covers. National Geographic registered the CNG with the copyright office in 1998, claiming that the work had not been registered before, but was a compilation of pre-existing material to which a brief introductory montage had been added.

Jerry Greenberg is a freelance photographer whose images have appeared in various National Geographic issues over the past 40 years, including the January 1962 cover photo, one of the ten covers shown in the 25 second introductory segment on the CNG CD-ROMs. He sued National Geographic for copyright infringement based on its release of the CNG. Originally, the Eleventh Circuit found for Greenberg, stating that the introductory material and the computer program itself at least infringed his copyrights in his photographs. The court also assumed, without deciding, that the privilege afforded under 17 U.S.C. § 201(c) for revision of collective works applied to the reproduction of the actual magazines on the CD-ROMs.

Section 201(c) states (emphasis added):

(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.

After the court's decision, the Supreme Court decided New York Times Co. v. Tasini, a case regarding archived versions of the New York Times as part of various databases, such as LEXIS. There, the court held that when the contributions to a collective work are placed in a database "clear of the context provided either by the original periodical editions or by any revision of those editions," the database does not distribute "the article 'as part of' either the original edition or a 'revision' of that edition." However, the Supreme Court implied that microfiche and microfilm archives of collective works were privileged under § 201(c), stating that:

The Publishers press an analogy between the Databases, on the one hand, and microfilm and microfiche, on the other. We find the analogy wanting. Microforms typically contain continuous photographic reproductions of a periodical in the medium of miniaturized film. Accordingly, articles appear on the microforms, writ very small, in precisely the position in which the articles appeared in the newspaper. The Times, for example, printed the beginning of Blakely's "Remembering Jane" Article on page 26 of the Magazine in the September 23, 1990, edition; the microfilm version of the Times reproduces that same Article on film in the very same position, within a film reproduction of the entire Magazine, in turn within a reproduction of the entire September 23, 1990, edition. True, the microfilm roll contains multiple editions, and the microfilm user can adjust the machine lens to focus only on the Article, to the exclusion of surrounding material. Nonetheless, the user first encounters the Article in context. In the Databases, by contrast, the Articles appear disconnected from their original context. In NEXIS and NYTO, the user sees the "Jane" Article apart even from the remainder of page 26. In GPO, the user sees the Article within the context of page 26, but clear of the context of page 25 or page 27, the rest of the Magazine, or the remainder of the day's newspaper. 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.

The Eleventh Circuit, applying this language from Tasini, framed the question as "whether the original context of the collective work has been preserved in the revision." The court noted a Second Circuit decision after Tasini, Faulkner v. National Geographic Enterprises, Inc., that held the CNG was a privileged revision under § 201(c), and affirming a district court's grant of summary judgment on the issue. Based on the Supreme Court's decision in Tasini and the Second Circuit's decision in Faulkner, the court held that the portion of the CNG comprising the archived issues was a privileged revision.

The introductory material, however, was another matter, as the ten covers were clearly used "out of context," and thus the privilege of § 201(c) did not apply. As a result, because the merits of the issue had not yet been reached (because of confusion regarding the court's mandate in the previous appeal), the court remanded this issue for determination by the district court.

To read the full decision in Greenburg v. Nat'l Geographic Soc'y, click here.