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Collective Works 12/12/2008 3:25:11 PM EST FREE DOWNLOAD: Mary LaFrance on Copyright Owner's Right to Reproduce Collective Works: Greenberg v. National Geographic Professor of Law, William S. Boyd School of Law, University of Nevada Las Vegas
In an important follow-up to the Supreme Court’s decision in New York Times v. Tasini, 533 U.S. 483 (2001), the Eleventh Circuit’s en banc decision in Greenberg v. National Geographic Society addressed the scope of § 201(c) of the Copyright Act, 17 U.S.C. § 201(c), which gives the owner of a collective work copyright a limited right to reproduce and distribute the copyrighted contributions that are included in that compilation. Although Tasini made clear that the § 201(c) privilege applies only when the individual contributions are presented in the context of the original collective work, and does not permit them to be exploited outside of that context, questions regarding the scope of this privilege have arisen when multiple issues of collective works are combined in electronic publications which permit individual contributions to be searched and indexed, even if they cannot be viewed separately. Greenberg addresses several of these questions.
Background and Procedural History. Plaintiff Greenberg, a freelance photographer, assigned the copyrights in several of his photographs to the National Geographic Society between 1962 and 1990, but regained the copyrights after the initial publication of the photographs in the Society’s magazine. In 1997, the Society issued the CNG, a CD-ROM set containing every issue of the magazine from 1888–1996 (approximately 1,200 issues). The CNG reproduced each page of the magazine exactly as it appeared in the original paper version. It did not permit users to separate the photographs from their surrounding context, or to edit the pages in any way. The CNG also included a computer program which compressed and decompressed the images of the magazine pages and allowed users to search the CNG, zoom in on specific pages, and print. In addition, the opening sequence of the CNG displayed ten of the magazine’s cover photos, including one of Greenberg’s photos.
Greenberg filed suit, alleging that the CNG infringed the copyrights in his photographs. Although the district court held that the CNG fell within the Society’s § 201(c) privilege, a panel of the Eleventh Circuit reversed, holding that even if (arguendo) the exact reproduction of the magazine contents was privileged, the computer program and the introductory sequence vitiated the privilege. Greenberg v. National Geographic Society, 244 F.3d 1267 (11th Cir.2001) (“Greenberg I”). On remand, the district court entered judgment for the plaintiffs.
Soon thereafter, the Supreme Court issued its decision in New York Times v. Tasini, 533 U.S. 483 (2001), holding that § 201(c) did not permit the electronic republication of a collective work in a format which, unlike a microform, allowed users to view individual contributions outside of the context of the original collective work. Following Tasini, the Greenberg defendants filed another appeal, and a second panel of the Eleventh Circuit held that the CNG was covered by § 201(c), but the introductory sequence was not. Greenberg v. National Geographic Society, 488 F.3d 1331 (11th Cir. 2007) (“Greenberg II”). Accordingly, the appellate court remanded the case once again for a determination whether the use of Greenberg’s cover photo in the introductory sequence was infringing.
The Eleventh Circuit then vacated this opinion and granted rehearing en banc, issuing its third opinion in the case. Agreeing with the second panel’s decision in Greenberg II, the en banc decision again reversed and remanded the district court’s opinion, holding that, pursuant to Tasini, the CNG was privileged as a “revision” of the original collective work within the meaning of § 201(c). Greenberg v. National Geographic Society, __ F.3d __, 2008 U.S. App. LEXIS 13832 (June 30, 2008) (“Greenberg III”).
17 U.S.C. § 201(c). Section 201(c), which was enacted as part of the Copyright Act of 1976, is a default rule (thus, capable of being altered by contract) which gives the copyright owner of a collective work the right to reproduce and distribute the individual copyrighted contributions “as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” Unless the parties agree otherwise, this rule defines the respective rights of the collective work’s copyright owner and the copyright owners of the individual contributions.
The § 201(c) privilege is not limited to exact reproductions of a collective work. It expressly encompasses “revision[s]” and “later collective work[s] in the same series.” Although these terms are undefined, the 1976 House Report provides some clarification:
Under the language of this clause a publishing company could reprint a contribution from one issue in a later issue of its magazine, and could reprint an article from a 1980 edition of an encyclopedia in a 1990 revision of it; the publisher could not ... revise the contribution itself or include it in a new anthology ... or an entirely different magazine or other collective work.
Similarly, the Register of Copyrights, who drafted § 201(c) at Congress’s request, noted that the § 201(c) privilege was “not intended to permit revisions in the contribution itself or to allow inclusion of the contribution in anthologies or other entirely different collective works." Staff of H. Comm. on the Judiciary, 89th Cong., Copyright Law Revision pt. 6, Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill 69 (Comm. Print 1965) (emphasis added), reprinted in 9 Melville B. Nimmer and David Nimmer, Nimmer on Copyright app. 15-97 (2007).
Despite these contemporaneous clarifications, it may be difficult at times to distinguish between a permissible “revision” and an impermissible “new anthology” or “entirely different . . . collective work.” In Tasini, the Supreme Court defined a “revision” as a “new ‘version,’” and defined a “version” as a “distinct form of something regarded by its creators or others as one work.” 533 U.S. at 500. However, Greenberg III demonstrates that the Supreme Court’s definition does not fully resolve the question whether a particular work such as the CNG is a mere revision or an entirely different and unprivileged collective work.
The Eleventh Circuit’s En Banc Opinion. In Greenberg III, the Eleventh Circuit centered its analysis on the Supreme Court’s statement in Tasini that “[u]nder § 201(c), the question is . . . whether the database itself perceptibly presents the author’s contribution as part of a revision of the collective work.” 533 U.S. at 504, quoted at 2008 U.S. App. LEXIS 13832, at *22-23 n.14. Treating this question as the sole test for § 201(c) eligibility, the Eleventh Circuit held, in a sharply divided opinion, that the CNG qualified for the § 201(c) privilege because it presented Greenberg’s photographs in the same context as the original National Geographic issues in which they appeared. Thus, retaining the original context was both necessary and sufficient to satisfy § 201(c).
Because the CNG presented an exact image of each magazine page, thus presenting each article and photograph in its original context, the Eleventh Circuit held that the CNG was “analogous” to the microforms which Tasini indicated would qualify for the § 201(c) privilege. 2008 U.S. App. LEXIS 13832, at *18. Because the CNG preserved the context of the original collective work, the fact that the CNG aggregated many issues of the Society’s magazine into one compilation did not alter the analysis: “Aggregating editions or issues of one magazine into a larger collective work of that same magazine is permissible under § 201(c) insofar as the individual contributions are presented and perceivable to viewers in their original context.” Id. at *22.
The Eleventh Circuit majority squarely rejected Greenberg’s argument that the CNG was a “new collective work.” Every revision of a collective work is “new” to some degree, the majority observed, but the legislative history (discussed earlier) reveals that Congress intended to deny the § 201(c) privilege only where the revision amounts to an “entirely different” collective work. Id. at *26. Specifically, the court held that the addition of new material (such as an index or a forward) to a collective work does not, by itself, cause the enhanced version to fall outside of the § 201(c) privilege: “[T]he pertinent question for a court is whether the new material so alters the collective work as to destroy its original context.” Id. at *28.
Responding to a scenario presented in Judge Anderson’s dissent, the majority opinion observed that its interpretation of § 201(c) would not permit the Society to incorporate one entire issue of its magazine in a larger volume presenting “The Complete Intellectual History of Africa from 1900 to 2008.” While acknowledging that “the context of the individual contribution within its original collective work may have been preserved” in this example, the majority observed: “[T]hat context is infected to the extent that a ‘user’ of the larger collective work will not readily perceive the individual contribution within its original context.” Id. at *29-30 n.18 (emphasis added). The majority offered no further explanation as to why it believed that the original context of the contribution would be less perceptible in this situation than in a super-compilation such as the CNG. This less-than-satisfactory attempt to distinguish Judge Anderson’s scenario illustrates the difficulty of distinguishing between a mere revision and an “entirely different” work.
Based on this distinction between a revision and an entirely different collective work, the majority concluded that the CNG was within the scope of § 201(c), despite the addition of the introductory sequence and the computer program. The addition of the introductory sequence—which the court described as a “virtual cover” for the collection of magazines—did not alter the context in which the photographs were presented, “just as a new cover on an encyclopedia set would not change the context of the entries in the encyclopedia.” Id. at *30. Likewise, the inclusion of a computer program with a search function and zoom capacity did not negate the § 201(c) privilege, because it did not alter the original context in which Greenberg’s photographs appeared. Id. at *31-32.
Nor was the § 201(c) privilege nullified by the inclusion of one of Greenberg’s cover photos in the introductory sequence (the “virtual cover” of the CNG), because this was “not just Greenberg's photograph taken apart from its original context but rather the entire original cover.” Id. at *30-31. However, the majority immediately limited the significance of this holding by adding: “Even though the introductory sequence does not deprive National Geographic of its § 201(c) privilege, we are only deciding that the CNG as a whole is privileged.” Id. at *31 n.19 (emphasis added). The majority expressly did not decide whether the reproduction of Greenberg’s photo in the introductory sequence was itself an infringement, and explicitly adopted the holding of Greenberg II that the introductory sequence was not privileged by § 201(c); it instructed the district court on remand to consider whether the Society had raised any valid defenses to infringement liability based on this second usage of the photo. Id. at *38 n. 21.
Dissenting Views. Five judges dissented from the en banc decision, in two separate opinions.
In a somewhat rancorous dissent, Judge Birch argued that the CNG was a “new” collective work rather than a mere revision or republication of the original collective work, for two reasons: (1) instead of reproducing one individual issue of the National Geographic magazine, the CNG reproduced roughly 1,200 issues in a single compilation, id. at *53-56 (Birch, J., dissenting); and (2) the CNG incorporated significant new material (the computer program), id. at *58 n.8.
Judge Birch’s conclusion that assembling 1,200 magazines into a single compilation gives rise to a “new” collective work rather than a revision is grounded in a passage in Tasini in which the Supreme Court considered whether combining multiple issues of a periodical into a larger electronic database constituted a revision of the original periodicals:
One might view the articles as parts of a new compendium—namely, the entirety of works in the Database. In that compendium, each edition of each periodical represents only a miniscule fraction of the ever-expanding Database. The Database no more constitutes a "revision" of each constituent edition than a 400-page novel quoting a sonnet in passing would represent a "revision" of that poem. "Revision" denotes a new "version," and a version is, in this setting, a "distinct form of something regarded by its creators or others as one work." Webster's Third New International Dictionary 1944, 2545 (1976). The massive whole of the Database is not recognizable as a new version of its every small part. . . . Those Databases simply cannot bear characterization as a "revision" of any one periodical edition.
Except for these brief passages, however, Tasini does not discuss whether assembling multiple collective works into a larger compilation may constitute a revision under § 201(c). Instead, the remainder of the Tasini opinion focuses on the fact that the electronic databases at issue there permitted individual articles to be viewed separately from their surrounding context:
The crucial fact is that the Databases . . . store and retrieve articles separately within a vast domain of diverse texts. Such a storage and retrieval system effectively overrides the Authors' exclusive right to control the individual reproduction and distribution of each Article . . .
Moreover, as noted by the majority in Greenberg III, microform reproductions frequently involve compilations of multiple collective works, yet Tasini strongly implies that these larger compilations are permitted by § 201(c):
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 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.
Id. at 501-02. Thus, Tasini appears to be internally inconsistent on the crucial question whether aggregations of collective works can qualify under § 201(c).
Although Judge Birch’s remaining arguments were rejected by the majority because they had not been raised by the parties, they identify two other important issues. One is whether the § 201(c) privilege can be transferred by the original compilation publisher to third parties—in this case, the publisher of an electronic database. Another issue is whether the publication of an electronic database involves an exercise of the public display right under § 106(5), a right which is not addressed in § 201(c).
In a separate and more succinct dissent, Judge Anderson agreed with Judge Birch that, while Tasini establishes that retention of the original publication context is necessary to the § 201(c) privilege, Tasini does not establish that it is sufficient. In Judge Anderson’s view, even if the CNG compilation took the form of hard copy rather than an electronic database, the fact that it aggregates 1,200 separate collective works makes it a new work rather than a revision, thus exceeding the scope of the § 201(c) privilege. The addition of computer programs to the super-compilation provided a second basis for Judge Anderson’s conclusion that the CNG was a new and unprivileged compilation.
The Second Circuit’s Faulkner Decision. Between Greenberg I and Greenberg II, the Second Circuit also addressed the application of § 201(c) to the CNG, in Faulkner v. National Geographic Enters., 409 F.3d 26 (2d Cir. 2005). The facts of Faulkner were almost identical to those of Greenberg, except that the work of the freelance photographers in Faulkner was not incorporated in the CNG’s introductory sequence. Therefore, the Faulkner opinion focused exclusively on whether the CNG is a “revision” of the original magazine issues. The Second Circuit held that it is.
Faulkner held that the CNG was a privileged revision under § 201(c) because it reproduced the freelance photographs in their original context, with only minor alterations to that context (the index, the opening sequence, and a small number of photographs that were blacked out because their licenses did not permit electronic publication). Id. at 38. Faulkner also held that the § 201(c) privilege is transferable (an issue that was squarely addressed by the parties in Faulkner, but not in Greenberg). Id. at 38-39.
Faulkner tacitly assumes that the preservation of the original collective work context is both necessary and sufficient for the § 201(c) privilege. The Faulkner opinion does not squarely address the possibility that combining 1,200 collective works into a single collective work exceeds the scope of § 201(c).
Conclusion. Greenberg III reveals an internal inconsistency in the Supreme Court’s Tasini decision on the crucial question whether the aggregation of multiple collective works into a single compilation exceeds the § 201(c) privilege. In other words, is preservation of the context of original collective work merely a threshold requirement for § 201(c) to apply, or is it both necessary and sufficient?
In reaching the opposite conclusion from the majority, Judge Birch’s dissent appears to be premised on the belief that Congress intended § 201(c) to afford only a minimal privilege to compilation publishers, leaving the free-lance author’s copyright interest as unencumbered as possible. The majority and Judge Birch appear to embrace different views of the balance of power which Congress intended to strike between authors and publishers.
Section 201(c) is simply a default rule, and one that no longer operates well due to changes in publishing technology. Until § 201(c) is revised to address the issues raised by electronic publications, free-lancers and collective work publishers can, and should, contract around the statutory ambiguities on a prospective basis, but this strategy does not help in scenarios such as Tasini, Greenberg, and Faulkner, in which the contracts have already been concluded. In the future, some authors may have the opportunity to exercise their termination rights under § 203, terminating their original licensing agreements with compilation publishers so as to regain complete control over their individual contributions. In theory, this would create the opportunity to renegotiate their original licensing agreements. However, their ability to renegotiate will depend on the relative importance of their individual contributions.
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