Designer Skin LLC v. S & L Vitamins, Inc., et al.
Jerry Greenberg v. National Geographic Society, et al.
No. 05-16964 (11th Cir., June 13, 2007)
Republication Of Magazine In CD-ROM Format Is A Protected Revision That Does Not Require Additional License
The 11th Circuit holds that pursuant to 17 U.S.C. Section 201(c), the republication of 1200 National Geographic magazines in a 30 disc cd-rom set titled ‘the Complete National Geographic’ is a permitted revision of those collective works for which the National Geographic, the owner of the copyright therein, does not need additional license or permission from plaintiff, the owner of the copyright in various photos contained in these magazines. The fact that this cd-rom set also contained a new 25 second video montage of the covers of 10 of the magazines it contained did not alter this conclusion. In reaching this result, the 11th Circuit followed the decisions of the Second Circuit in Faulkner v. Nat’l Geographic Society, 409 F.3d 26 (2d Cir.) cert denied – US --, 126 S.Ct. 833 (2005) and the Supreme Court in New York Times Co. v. Tasini, 533 U.S. 483 (2001). The 11th Circuit accordingly reversed its prior contrary decision, and remanded the case to the District Court for further consideration of plaintiff’s claim that the inclusion of one of his photographs in a magazine cover contained in this new 25 second montage infringed his copyright therein.
National Geographic Republishes 1200 Magazines In CD-Rom Collection
Plaintiff Jerry Greenberg is a free-lance photographer. A number of his photos were published by the defendant in its National Geographic magazine. One of these photos appeared on the cover of a magazine originally published in 1962. Plaintiff holds the copyright in his photographs.
National Geographic holds the copyright in the collective works in which plaintiff’s photos appeared – the National Geographic Magazine. These works were originally published in print format. In 1997, National Geographic produced a 30 disc cd-rom set which contained each monthly issue of its magazine for the 108 year period from 1888 through 1996. The magazines were reproduced exactly as they had originally been published. Every page of every issue appeared exactly as it did in the original paper version. This cd-rom set, known as ‘the Complete National Geographic,’ also contained a Kodak ad, and a 25 second video segment which depicted images of 10 covers of magazines included in the cd-rom set. Included within these images was the cover of the 1962 magazine which contained a photograph in which plaintiff held the copyright.
Republication A Permitted Revision That Does Not Require Consent Of Holder Of Copyright In Photographs That Appeared In Magazine
National Geographic moved to dismiss, arguing its republication was a permitted revision under 17 U.S.C. Section 201(c). Section 201(c) states, in pertinent part:
The district court agreed with National Geographic, and dismissed plaintiff’s suit. In its initial decision in this case, the 11th Circuit disagreed, holding that this work constituted a new product “in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction envisioned in section 201(c).” In its initial decision, the 11th Circuit accordingly rejected defendants’ defense that its conducted was protected by 201(c).
Subsequent to this decision, the Supreme Court decided New York Times Co. v. Tasini, in which the Court held that under Section 201(c) the Times could not republish articles that had appeared in its newspapers in an electronic database which permitted them to be separated from the context – the newspaper – in which they originally appeared without the permission of their authors. The Court held that including these articles in such electronic databases was not a permitted revision of the collective work in which they originally appeared, and was thus not protected by the New York Times’ copyright therein.
Following Tasini, the Second Circuit, in Faulkner, decided that the National Geographic’s republication of its magazines in the Complete National Geographic cd-rom set was indeed a revision protected by 201(c), and dismissed a copyright infringement suit brought, like the case at bar, by the holder of a copyright of photos contained in those magazines.
The Court accordingly reversed its prior decision, and remanded the case to the District Court for a determination as to whether National Geographic’s use of plaintiff’s photo in it cover montage infringed his copyright therein.