Faulkner v. National Geographic Society

• Citation: 211 F.Supp.2d 450
• Decision Date: 13 July 2002
• Docket Number: No. 97CIV.09361LAK.,No. 99CIV.12488LAK.,97CIV.09361LAK.,99CIV.12488LAK.
• Parties: Douglas FAULKNER, et al., Plaintiffs, v. NATIONAL GEOGRAPHIC SOCIETY, et al., Defendants. David Hiser, et al., Plaintiffs, v. National Geographic Society, et al., Defendants.
• Court: U.S. District Court — Southern District of New York

211 F.Supp.2d 450

Douglas FAULKNER, et al., Plaintiffs, v. NATIONAL GEOGRAPHIC SOCIETY, et al., Defendants.

David Hiser, et al., Plaintiffs, v. National Geographic Society, et al., Defendants.

No. 97CIV.09361LAK.

No. 99CIV.12488LAK.

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

July 13, 2002.

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Stephen A. Weingrad, Alessandro Turina, Weingrad & Weingrad LLP, New York City, for Plaintiffs.

Robert G. Sugarman, Naomi Jane Gray, Joanne McLaren, Pierre M. Davis, Armelle Nina VanDorp, Weil, Gotshal & Manges LLP, New York City, Terrence B. Adamson, National Geographic Society, Washington, DC, for Defendants.

MEMORANDUM OPINION

KAPLAN, District Judge.

This is an action principally for copyright infringement and breach of contract by a number of 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 and that the defendants have infringed their intellectual property and contract rights by republishing their work beyond the rights granted to them, chiefly in electronic media. The matter is before the Court on the motion of defendants NGS, National Geographic Enterprises, Inc. ("NGE"), Mindscape Inc. ("Mindscape"), Dataware Technologies, Inc. ("Dataware"), and Eastman Kodak Co. ("Kodak") for partial summary judgment dismissing plaintiffs' claims regarding their photographs and texts that appeared in the Magazine before 1978 (the "Pre-1978 Works").

Facts

Defendants and Their Product

The facts concerning the defendants (other than Kodak¹), the relationships among them and The Complete National Geographic² are set forth in the Court's opinion of even date in Ward v. National Geographic Society³ and will not be repeated here.

Kodak is a manufacturer and developer of film and photographic equipment, among other products. In October 1997, Kodak entered into a co-sponsorship agreement with NGI, Mindscape and Dataware that provided that Kodak would pay a fee to NGI in exchange for inclusion of a Kodak promotional message in the digital contents of The Complete National Geographic⁴ and advertising on the product packaging.⁵ It specified also that the Kodak name and logo, together with the phrase "Proudly Sponsored by," would appear on the letterhead, printed materials, banners, posters and other similar materials used in connection with certain promotional media campaigns and that Kodak representatives would be invited to attend, speak and otherwise promote both Kodak and The Complete National Geographic at these events.⁶ The agreement provided further that the parties would hold a sweepstakes in connection with the launch of The Complete National Geographic, that the Kodak name and logo would appear on all sweepstakes items, and that NGI and Kodak would contribute prizes to the sweepstakes.⁷ Finally, it provided that Kodak would promote The Complete National Geographic and the sweepstakes on its website.⁸ Kodak received 5,000 complimentary units of the first edition of The Complete National Geographic for promotional use only, which were not to be resold or made available for resale by Kodak.⁹ Kodak received no revenues or other remuneration from sales of The Complete National Geographic products.¹⁰

Plaintiffs and Their Professional Relationships with NGS

Plaintiffs are freelance writers and photographers, or their successors, whose works have been published in various issues of the Magazine. Their professional relationships with NGS during the relevant time period took various forms and, at least for many of the contributors, the precise contours remain murky. Immediately below the Court will set out material undisputed facts regarding each of these relationships.

Douglas and Sally Faulkner

Douglas Faulkner is a professional photographer and writer. Sally Faulkner is his former wife. Douglas Faulkner photographed two stories that were published in the Magazine before 1978: "Finned Doctors of the Deep," published in December 1965 ("Finned Doctors"), and the "Chambered Nautilus," published in January 1976. When the Faulkners divorced in the mid-1970's, Douglas assigned to Sally the copyright in all ten Finned Doctors photographs.

NGS paid Faulkner $2,000 for the photographs and text used in Finned Doctors. In return, it received "first rights" and rights to use Finned Doctors photographs and text "in [NGS's] other publications, including any purposes related to the Society's objectives."¹¹ NGS purchased "first publication rights" to the photographs in the Chambered Nautilus,¹² also for $2,000.

On June 22, 1997, Mr. Faulkner applied for individual registration of the Finned Doctors and Chambered Nautilus photographs and text.¹³ In letters dated January 15, 1998 and August 10, 1998, the Copyright Office advised Faulkner that it was refusing registration because the photographs and text had been published with copyright notice only in the name of NGS.¹⁴ It indicated, however, that because the Magazine had been registered. Faulkner could pursue renewal registration for the photographs and text associated with the Finned Doctors project.¹⁵ Similarly, it indicated that the Chambered Nautilus photographs might be protected by virtue of the general notice for the Magazine and that Faulkner potentially could pursue renewal rights beginning in the twenty-eighth year following publication.¹⁶

On October 14, 2000, Mr. Faulkner applied to the Copyright Office to register a compilation entitled "Doug's Best," which was made up of the photographs and text from Finned Doctors and Chambered Nautilus, as well as another project referred to as "Dazzling Corals."¹⁷ The Office replied by noting that the claim regarding "Doug's Best" was for "`compilation' authorship, not the authorship of the particular photos and text you sent us."<sup>18</sup> The examiner reminded Mr. Faulkner's counsel that compilation authorship involves "the selection, coordination, or arrangement of preexisting materials or data."<sup>19</sup> He went on to explain that the compilation lacked sufficient originality to support a copyright claim because the compilation consisted merely of the photographs and text published by NGS arranged in the order in which they had appeared in the Magazine.<sup>20</sup> In a subsequent letter, the Office again refused registration based on lack of originality, noting also that Mr. Faulkner had confirmed that the intent of his application was to claim "`compilation' authorship."²¹

After the present lawsuits were commenced, plaintiffs' counsel wrote to the General Counsel of the Copyright Office to give notice of the pending lawsuits pursuant to Section 411(a) of the Copyright Act of 1976 (the "1976 Act").²² He apparently intended to give such notice for all of his clients at once,²³ referenced the captions of both lawsuits, and purportedly enclosed the amended complaints.²⁴ The letter stated also that counsel had enclosed "letters denying applications." It contained a second page entitled "Denied Copyright Applications for Compilations (Copies Attached)."²⁵ Included in the schedule on this page is "Doug's Best," but there is no mention of Finned Doctors or the Chambered Nautilus as individual works.²⁶ It therefore appears that plaintiffs' counsel gave Section 411(a) notice for the compilation Doug's Best, but not for the individual articles themselves.

Arthur Allen

Arthur Allen was a professor of ornithological studies at Cornell University who published photographs and text in a number of issues of the Magazine, all before 1964.²⁷ Neither he nor his successor in interest, David Allen, applied for copyright or renewal registration prior to January 1993 for any of the works.²⁸

David Allen

David Allen is Arthur Allen's son and successor in interest and owns a business through which he licenses photographs to third parties. He contributed photographs to some of the articles referred to above, including The Curlew's Secret, Voices of the Night, Split Seconds in the Lives of Birds, and Sapsucker Woods. Further, he created photographs for the "The Quetzal," published in January 1969.²⁹ In connection with The Quetzal assignment, David Allen was paid a minimum guarantee of $2,000 for photographing the story, and NGS provided him with film and processing, reimbursed him for expenses incurred in writing and photographing it, and paid for required special equipment.³⁰

David Allen submitted an application for registration to the Copyright Office sometime in 2000. Because the application was clumsily worded, the Office sought clarification of the nature of the claim by letter dated December 14, 2000.³¹ The examiner advised plaintiffs' counsel that the Copyright Office could not register the individual photographs and text because they had been published with only the copyright notice of NGS.³² He indicated that Allen could register a compilation claim, although he made clear that such a registration "would apply only to the particular arrangements and not to other arrangements of the same photos. Nor would the claims apply to the photos themselves."³³ Eventually, Mr. Allen registered a "compilation of photographs and text previously published in various issues of [the Magazine]."³⁴ He entitled it "Volumes I and II of David Allen's Collection of National Geographics 1937-1989" and designated himself as the author of the compilation.³⁵ Thus, although the Copyright Office never formally denied registration of the individual photographs and text, it steered plaintiffs' counsel away from this type of claim and toward the compilation claim.

Although the Copyright Office registered Allen's compilation claim, plaintiffs' counsel included Mr. Allen's compilation in the notice of these infringement suits sent to the Copyright Office on January 29, 2001. The schedule labeled "Denied Copyright Applications for Compilations" i...