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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.
Complaining that this republication infringed the copyrights he held in his photos, plaintiff commenced this suit. 

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:

Contribution 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 revisions of that collective work, and any later collective work in the same series.

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.
In light of these decisions, the 11th Circuit reversed it prior decision, and held that the Complete National Geographic was indeed a permitted revision of the original magazines protected by application of Section 201(c).  As explained by the 11th Circuit, the central question was “whether the original context of the collective work has been preserved in the revision.”  Because such was the case here, as the cd-roms contained 1200 National Geographic magazines exactly as they had originally been published, this was a revision protected by 201(c).  This was true notwithstanding the fact that the cd-roms also included a new 25 second video montage of the covers of 10 of the magazines contained in the cd-rom set.  Said the Court:

We … hold that the addition of the Sequence does not extinguish the privilege that attaches to the Replica.  The addition of the Sequence to the Replica portion of the CNG amounts to 25 seconds of “new” material that had been appended to some 1200 intact issues of the magazine. … The question is whether the new material so alters the collective work as to destroy its original context. … the addition of a preface to a 400 page anthology would not transform the book into a different collective work.  So it is here.  The Sequence is nothing more than a brief visual introduction to the Replica, which acts as a virtual cover for the collection of magazines.  Just as a new cover on an encyclopedia set would into change the context of the entries in the encyclopedia, the Sequence in no way alters the contest in which the original photographs … were presented.

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.

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