Auscape Intern. v. National Geographic Soc.

• Decision Date: 12 August 2004
• Docket Number: No. 02 Civ.6441 LAK.,02 Civ.6441 LAK.
• Citation: 409 F.Supp.2d 235
• Parties: AUSCAPE INTERNATIONAL, et al., Plaintiffs, v. NATIONAL GEOGRAPHIC SOCIETY, et al., Defendants.
• Court: U.S. District Court — Southern District of New York

409 F.Supp.2d 235

AUSCAPE INTERNATIONAL, et al., Plaintiffs, v. NATIONAL GEOGRAPHIC SOCIETY, et al., Defendants.

No. 02 Civ.6441 LAK.

United States District Court, S.D. New York.

August 12, 2004.

Surjit P. Soni, the Soni Law Firm, for Plaintiffs.

Robert G. Sugarman, Pierre M. Davis, Denise Alvarez, Weil, Gotshal & Manges LLP, for Defendants National Geographic Society, National Geographic Holdings, Inc., National Geographic Ventures, National Geographic Interactive, National Geographic Enterprises, Inc., Image Collection and Image Sales, and Mindscape, Inc.

Terrence B. Adamson, National Geographic Society, for Defendants National Geographic Society, National Geographic Holdings, and National Geographic Enterprises, Inc.

Juli Wilson Marshall, Daniel Scott Schecter, Elizabeth Heering Hickey, Latham & Watkins LLP, for Defendants Pro-Quest Company and ProQuest Information and Learning Company.

MEMORANDUM OPINION

KAPLAN, District Judge.

In Faulkner v. National Geographic Society,¹ this Court held that a CD-ROM archive of digitized images of National Geographic Magazine (the "Magazine"), known as The Complete National Geographic ("CNG"), was a "revision" of the print publication within the meaning of Section 201(c) of the Copyright Act of 1976² and therefore did not infringe any copyrights held by freelance photographers and writers whose works first were published, with their consent, in the Magazine.

Plaintiffs in this case make the same claims rejected in Faulkner. But they assert also that their claimed copyrights were infringed by use of their works in both microform and electronic editions of the Magazine and that the defendants violated the Lanham Act in connection with the CNG and microform products.

Now before the Court are cross-motions for summary judgment, one each by plaintiffs, the National Geographic defendants, and the ProQuest defendants, as well as defendants' motion to strike the expert designation and expert report of John A. Bunge and the ProQuest defendants' motion to preclude certain evidence. As the Court grants defendants' motions for summary judgment dismissing the complaint in almost all respects, there is no need to reach the remainder of the motions.

Facts

The greater part of the factual background is set forth in Faulkner, familiarity with which is assumed. A few words are appropriate, however, in light of the copyright infringement claims concerning the microform editions of the Magazine and the two electronic databases, General Periodicals On Disc and its subset, Magazine Express (collectively, "GPO"), as well as the Lanham Act count relating to the CNG and microform products.³

ProQuest Information and Learning Company ("PQIL") is a subsidiary of the ProQuest Company.⁴ Pursuant to licensing agreements with the NGS, PQIL has reproduced and distributed editions of the Magazine in both microform and electronic format.⁵ The microform products include microfilm and microfiche reproductions of issues of the Magazine from 1888 through the present.⁶ Beginning in 1992, PQIL included the 1988 to 1993 issues of the Magazine as part of its GPO subscription offering.⁷ The GPO products are described more fully in New York Times Co. v. Tasini,⁸ and there is no need to repeat that description here.

Discussion

In view of Faulkner's holdings that the Section 201(c) privilege applies to the CNG and that the privilege is transferable, what remains to be decided in this case is:

• Whether the Section 201(c) privilege applies also to the microform and electronic products,

• Whether any copyright infringement claims with respect to any products that are not privileged under Section 201(c) nevertheless are barred by the statute of limitations, and

• Whether the defendants are entitled to dismissal of the Lanham Act claim.

I. Summary Judgment Standard

Summary judgment is appropriate if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.⁹ Where the burden of proof at trial would fall on the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence to go to the trier of fact on an essential element of the nonmovant's claim.¹⁰ In that event, the nonmoving party must come forward with admissible evidence¹¹ sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment.¹²

A court faced with cross-motions for summary judgment need not "grant judgment as a matter of law for one side or the other," but "must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration."¹³

II. Copyright Infringement

Plaintiffs assert claims against all defendants for direct and contributory copyright infringement and inducement to infringe copyright, all arising out of the use of plaintiffs' works¹⁴ in the CNG, the microform publications, and the GPO databases. Defendants argue that these claims should be dismissed because, inter alia, their use of these contributions in each of the products at issue is privileged under Section 201(c) of the Copyright Act¹⁵ and, to any extent that the privilege does not apply, the claims are barred by the statute of limitations.

A. The CNG and Microform Products

The parties agree that NGS had the right to publish plaintiffs' contributions in the Magazine.¹⁶ This Court held previously that the CNG is a revision of a collective work, more specifically, the individual print issues of the Magazine, and that it is protected under Section 201(c) absent agreement depriving defendants of that protection.¹⁷ To the extent that plaintiffs' claims involve the CNG, the prior holding is dispositive.

The microform products present no substantial issue. The relevant inquiry in determining whether a product is a revision under Section 201(c) is "whether the original contribution is presented in the same context in which it appeared in the initial collective work."¹⁸ As articles "appear on ... microforms, writ very small, in precisely the position in which [they] appeared in the [Magazine],"¹⁹ the microform products too are revisions protected under Section 201(c).²⁰

B. The Electronic Databases

1. Section 201(c)

The GPO databases differ from the CNG and microform products in that they allow the user to view individual articles standing alone, apart from the contexts in which they appeared in the original collective works.²¹ In Tasini, the Supreme Court held that the use of freelance writers' contributions to three print periodicals in the GPO database was not privileged under Section 201(c).²² Thus, to the extent that either the ProQuest or National Geographic graphic defendants assert a Section 201(c) defense, it is without merit.²³

Defendants' attempt to distinguish Tasini fails. That Tasini concerned only textual, and not photographic, works and that GPO's search function for photographers differs from that for authors, as the Pro-Quest defendants argue,²⁴ is immaterial for Section 201(c) purposes. In either case, the user may view the allegedly infringed work as part of an individual article completely removed from the context in which it appeared in the particular issue of the Magazine.

2. Statute of Limitations

The question with respect to the GPO databases that remains is whether plaintiffs' copyright infringement claims are barred by the statute of limitations.

A copyright infringement claim must be commenced within three years of the date on which the cause of action accrued.²⁵ Defendants argue that any infringement ended more than three years prior to the filing of this complaint on January 31, 2002 and that plaintiffs' claims regarding the electronic databases therefore are barred by the statute of limitations.

a. Date of Alleged Infringement

The continuing infringement doctrine is unavailable in the Second Circuit.²⁶ Thus, plaintiffs may recover only for acts of infringement that occurred within the three years next preceding suit unless, of course, the cause of action accrued later than the infringement date or they can demonstrate that the statute of limitations has been tolled.²⁷ Accordingly, the initial question is whether any acts of infringement occurred on or after January 31, 1999.

Any direct copyright infringement claims against the National Geographic defendants with respect to GPO arise from their licensing of the 1988 through 1993 issues of the Magazine to the ProQuest defendants. While the parties dispute whether current subscriptions to GPO include access to the archived issues of the Magazine, it is undisputed that NGS's contract with the ProQuest defendants ended in 1993.²⁸ Thus, any direct infringement by the National Geographic defendants ended in 1993, nine years before the filing of this case. They cannot be held responsible, at least as direct infringers, for any alleged infringement by the ProQuest defendants since that time.²⁹

Determining the last date of any infringement by the ProQuest defendants is not as simple. According to the ProQuest defendants, any infringement by them in including plaintiffs' contributions in the GPO databases ended no later than 1996.³⁰ Thus, defendants have met the initial burden of showing an absence of infringement during the limitations period. In these circumstances, plaintiffs may avoid summary judgment on limitations grounds only by coming forward with admissible evidence sufficient to raise a genuine issue of fact which, if resolved in their favor, would demonstrate that any infringement by the ProQuest defendants continued until at least January 31, 1999.

Plaintiffs' opposition to ProQuest's Rule 56.1 statement seeks to do this by citing a faxed copy of an exhibit to defendants' expert report of Lauren J. Stiroh, which allegedly demonstrates that ProQuest paid royalties to NGS in relation to the GPO products through 2001.³¹ This exhibit is insufficient on its own. Not only is the expert...