Faulkner v. National Geographic Soc., 97 Civ. 9361(LAK).

CourtUnited States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
Citation452 F.Supp.2d 369
Docket NumberNo. 02 Civ. 12385(LAK).,No. 99 Civ. 12488(LAK).,No. 97 Civ. 9361(LAK).,97 Civ. 9361(LAK).,99 Civ. 12488(LAK).,02 Civ. 12385(LAK).
PartiesDouglas FAULKNER, et al., Plaintiffs, v. NATIONAL GEOGRAPHIC SOCIETY, et al., Defendants. Fred WARD, et ano., Plaintiffs, v. The National Geographic Society, et al., Defendants. David Hiser, et al., Plaintiffs, v. National Geographic Society, et al., Defendants.
Decision Date18 September 2006

Danial Alan Nelson, Schaden, Katzman, Lampert & McClune, for Plaintiffs Louis Psihoyos, Rick Rickman, David Austen and Matrix Intl, Inc.

Stephen A. Weingrad, William D. Gardner, Weingrad & Weingrad, LLP, for Plaintiffs David Allen, A. Allen, Douglas Faulkner, Sally Faulkner, Doranne Jacobsen, Jerome Jacobsen, Pamela Wilson Sartorelli, Jon Krakauer, Richard Coniff, Elizabeth Royte, John Knoebber, and Joe Baraban.

Andrew Berger, Tannenbaum, Helpern, Syracuse & Hirschtritt, LLP, for Plaintiff Fred Ward.

Robert G. Sugarman, Denise Alvarez, Weil, Gotshal & Manges LLP, Terrence B. Adamson, National Geographic Society, for Defendant National Geographic Society.


KAPLAN, Judge.

The plaintiffs in these three actions are freelance photographers and writers whose work has been published in National Geographic Magazine (the "Magazine"). The essence of their claim is that they granted National Geographic Society ("NGS") limited rights to publish their works in the Magazine and tiiat NGS and the other the defendants infringed their intellectual property and contract rights by republishing their work beyond the rights granted to them. This Court has dismissed plaintiffs' federal claims, including those based upon the Copyright Act of 1976 (the "1976 Act"), and the majority of their state law claims. The matter is now before the Court on the motion of defendant NGS for partial summary judgment dismissing plaintiffs' claims for breach of express and implied contracts to make additional payments for certain further uses of plaintiffs' work.1


The facts surrounding these cases have been set out in detail in several prior opinions, familiarity with which is assumed.2 It is necessary to outline only those facts relevant to the present motions.


NGS is the world's largest nonprofit scientific and educational organization, with approximately ten million members. Plaintiffs created images or text that originally appeared in the print version of the Magazine, NGS's official monthly journal. Although the parties dispute whether and to what extent NGS was entitled to make subsequent use of plaintiffs' works, all agree that plaintiffs granted NGS the right to publish their works in the Magazine.3

In the late 1990's, NGS and the other defendants in these actions began to market various editions of "The Complete National Geographic" (the "CNG"), a digital archive of all past issues of the Magazine on CD-ROM and DVD. The CNG was produced largely through a process of digital scanning, with each past issue scanned into electronic media. The pages of the prior issues were scanned two at a time, so that a user of the CNG is presented with the exact same visual experience as if reading from the print version of the Magazine. As the Court noted in a prior opinion, Defendants claim that the scanning process created an "exact imagebased reproduction" of each page as it appeared in the Magazine.4

The first edition of the CNG, "The Complete National Geographic: 108 Years of National Geographic Magazine on CROM," was introduced in 1997. It has three components: (1) a multimedia sequence that displays NGS's logo followed by a promotional message for Eastman Kodak Company and a sequence depicting the covers of ten issues of the Magazine that transition from one into another (the "Moving Cover Sequence"); (2) a digital reproduction of the scanned pages and issues of the Magazine (the "Replica"); and (3) the computer software that serves as the storage repository and retrieval system for the Magazine images. Since 1997, the NGS has published additional CNG products, principally CD-ROMs and DVDs for the first 109, 110, 111 and 112 years of the Magazine. These products have varied slightly from the first, but all contain a Replica section.5

Following the release of the CNG products, plaintiffs filed suit, asserting that the production and sale of the CNG infringed their copyrights, breached their express and implied contracts with NGS, and otherwise violated their rights with respect to contributions to the Magazine.

Procedural History

After dismissing some of plaintiffs' claims on previous summary judgment motions, the Court in Faulkner II was called upon to determine whether NGS, as owner of the copyrights in the individual issues of the Magazine, was privileged by Section 201(c) of the 1976 Act to market the CNG on the theory that the CNG was a revision of the Magazine rather than a new collective work infringing plaintiffs' copyrights in original contributions.6 Relying on the Supreme Court's then recent decision in New York Times v. Tasini,7 the Court reasoned that

"[i]n determining whether [a] freelancer's work is part of a new collection as distinguished from a revision [of the original collective work], the focus is on the manner in which it is `presented to, and perceptible by, the user.' A critical consideration is whether the original contribution is presented in the same context in which it appeared in the initial collective work, at least to such an extent that the new product `perceptibly presents the author's contribution as part of a revision of the collective work."8

Because the CNG is a near exact replica of the Magazine, presented to and perceptible by the user in the same manner as the original Magazine with "no changes to the content, format or appearance," the Court held that it was a revision, rather than a new work, and granted defendants' motion for summary judgment dismissing plaintiffs' claims for copyright infringement under the 1976 Act.

Upon dismissal of the copyright claims, the last federal claims in the actions, the Court dismissed plaintiffs' remaining state law claims for breach of express and implied contract based on the lack of subject matter jurisdiction.9 Plaintiffs then appealed the dismissal of their copyright claims, and the Second Circuit affirmed this Court's decision in substantial part.10 The parties, save those represented by the Weingrad firm, then stipulated to the Court's retention of jurisdiction over the remaining state law claims, and the Court overruled the Weingrad firm's objection to its retention of jurisdiction based upon its familiarity with the case and the desire of substantially all the parties to have the remaining issues decided in this Court.11

The Contract Claims

Plaintiffs claim that NGS was contractually obligated to make additional payment to them for any further promotional, advertising, or editorial use of their work. They assert that the CNG constituted such a further use and that NGS breached their express and implied contracts by failing to make additional payments for use of their work therein.

Plaintiffs' express contract claims rest on dozens of different contracts.12 Because NGS often entered into separate agreements with its contributors for each new work assignment and because the precise terms of the contracts varied somewhat over time and from contributor to contributor, these claims are based on several different formulations of the idea that NGS would provide additional payment for certain subsequent use of plaintiffs' work. Many of the contracts at issue provide that contributors

"hereby grant the Society the right to use any of the commissioned photographs for promotional or advertising purposes. We will make additional payment for such use or for a new editorial use. No additional payment will be made for photographs taken on a Geographic commission then later used in an NGS photographic exhibit."13 Others state that NGS will make "additional appropriate payment" to contributors if "NGS makes further use (promotional, advertising, or other editorial use) of a photograph selected for publication," but note that "no additional payment will be made if the use is as part of an NGS photographic exhibit or in an audiovisual presentation or lecture given by an NGS employee or under NGS auspices."14 The remaining agreements were to similar effect.15

Several plaintiffs conveyed rights in some or all of their works to NGS without an express written contract or pursuant to an agreement that did not obligate NGS to make additional payment for further use of their contributions.16 Accordingly, plaintiffs bring claims for breach of alleged contracts implied in fact, as well as for breach of express contracts.17

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.18 The moving party has the burden of demonstrating the absence of a genuine issue of material fact,19 and the Court must view the facts light most favorable to the nonmoving party.20 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 of fact on an essential element of the nonmovant's claim.21 In that event, the nonmoving party must come forward with admissible evidence22 sufficient to raise a genuine issue of fact for trial.23

In a dispute over the interpretation of a contract, summary judgment will be warranted in two situations. First, summary judgment may be granted when the language of the contract is unambiguous.24 Under New York law,25 "[c]ontract language is unambiguous if it has a definite and precise meaning, unattended by the danger of misconception in the purport of the [contract] itself, and concerning which there is no reasonable basis for a difference of opinion."26 In such cases, courts...

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