Greenberg v. National Geographic Soc.

• Decision Date: 30 June 2008
• Docket Number: No. 05-16964.,05-16964.
• Citation: 533 F.3d 1244
• Court: U.S. Court of Appeals — Eleventh Circuit
• Parties: Jerry GREENBERG, individually, Plaintiff-Appellee, Idaz Greenberg, individually, Plaintiff, v. NATIONAL GEOGRAPHIC SOCIETY, a District of Columbia corporation, National Geographic Enterprises, Inc., a corporation, Mindscape, Inc., a California corporation, Defendants-Appellants.

533 F.3d 1244

Jerry GREENBERG, individually, Plaintiff-Appellee, Idaz Greenberg, individually, Plaintiff, v. NATIONAL GEOGRAPHIC SOCIETY, a District of Columbia corporation, National Geographic Enterprises, Inc., a corporation, Mindscape, Inc., a California corporation, Defendants-Appellants.

No. 05-16964.

United States Court of Appeals, Eleventh Circuit.

June 30, 2008.

Kenneth Winston Starr, Christopher Landrau, Erin E. Morrow, Elizabeth M. Locke, Kirkland & Ellis, LLP, Washington, DC, Stephen N. Zack, Jennifer G. Altman, Boies, Schiller & Flexner, LLP, Miami, FL, Robert G. Sugarman, Weil, Gotshal & Manges, LLP, New York City, for Defendants-Appellants.

Norman Davis, Squire, Sanders & Dempsey, LLP, Miami, FL, for Plaintiff-Appellee.

Slade R. Metcalf, Hogan & Hartson, LLP, New York City, Arnold P. Lutzker, Lutzker & Lutzker, LLP, Washington, DC, William Andrew Pequignot, Kilpatrick Stockton, LLP, Atlanta, GA, for Amici Curiae.

Appeal from the United States District Court for the Southern District of Florida.

Before EDMONDSON, Chief Judge, and TJOFLAT, ANDERSON, BIRCH, DUBINA, BLACK, CARNES, BARKETT, MARCUS, WILSON, PRYOR and KRAVITCH, Circuit Judges.¹

BARKETT, Circuit Judge:

Appellant National Geographic Society is a nonprofit scientific and educational organization that has published a monthly magazine since 1888.² The Society also produces televised programs and computer software as well as other educational products through National Geographic Enterprises, a wholly-owned and for-profit subsidiary of the Society. Appellee Jerry Greenberg is a freelance photographer, some of whose photographs were published in four issues of the National Geographic Magazine.³

For decades, the Society has reproduced back issues of the Magazine in bound volumes, microfiche, and microfilm. In 1997, National Geographic produced "The Complete National Geographic" ("CNG"), a thirty-disc CD-ROM⁴ set containing each monthly issue of the Magazine, as it was originally published, for the 108 years from 1888 through 1996—roughly 1200 issues of the Magazine. In addition, the CNG includes a short opening montage and a computer program that allows users to search the CNG, zoom into particular pages, and print.

Greenberg sued National Geographic, alleging that it had infringed his copyrights by reproducing in the CNG the print magazine issues that included his photographs. The district court disagreed and granted summary judgment in favor of National Geographic, holding that because the CNG constituted a "revision" of the print issues of the Magazine, the reproduction of Greenberg's photographs in the CNG was privileged under 17 U.S.C. § 201(c) of the Copyright Act and did not constitute an infringement of Greenberg's copyrights. However, a panel of this Court in Greenberg v. National Geographic Society (Greenberg I), 244 F.3d 1267, 1275-76 (11th Cir.2001), reversed and remanded for the district court to "ascertain the amount of damages and attorneys fees that are, if any, due as well as any injunctive relief that may be appropriate." After a jury trial on damages, the jury returned a verdict against National Geographic in the amount of $400,000.

National Geographic appealed again, this time arguing that the intervening decision of the U.S. Supreme Court in New York Times Co. v. Tasini, 533 U.S. 483, 121 S.Ct. 2381, 150 L.Ed.2d 500 (2001), decided after Greenberg I, mandated a reversal of the jury verdict against it. A second panel of this Court agreed, finding that Tasini compelled a reversal of the jury verdict because, under Tasini's rationale, National Geographic was privileged to reproduce its print magazines in digital format pursuant to § 201(c) of the Copy-right Act. See Greenberg v. Nat'l Geographic Soc'y (Greenberg II), 488 F.3d 1331 (11th Cir.2007).⁵ This Court then vacated the Greenberg II panel opinion and granted rehearing en banc to address the question of whether National Geographic's use of Greenberg's photographs in the CNG is privileged.

I. DISCUSSION

The section of the Copyright Act that is relevant to the question before us, 17 U.S.C. § 201(c), was added to the copyright statute as part of the 1976 amendments to the 1909 Act, and provides:

(c) Contributions 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 revision of that collective work, and any later collective work in the same series.

Prior to 1976, whenever freelance authors contributed to a collective work, they risked losing their copyright in their individual works absent a printed copyright notice in the author's name. A freelance author could not just assign the publisher the right of publication in the collective work while preserving her copyright in the individual work. The amended 1976 Copyright Act—including § 201(c)—rejected this idea of copyright "indivisibility," instead reframing copyright as a bundle of discrete "exclusive rights." See Tasini, 533 U.S. at 494-96, 121 S.Ct. 2381; see also 17 U.S.C. §§ 106, 201(d)(2). Thus, as part of its recasting of copyright as a bundle of exclusive rights, Congress added § 201(c) to the Copyright Act in order to protect both the copyrights of freelance authors in their individual contributions to a collective work as well as the copyright of the publisher in the collective work itself:

When . . . a freelance author has contributed an article to a "collective work" such as a newspaper or magazine, . . . the [Copyright Act] recognizes two distinct copyrighted works: "Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole . . . ." Copyright in the separate contribution "vests initially in the author of the contribution" (here, the freelancer). Copyright in the collective work vests in the collective author (here, the newspaper or magazine publisher) and extends only to the creative material contributed by that author, not to "the preexisting material employed in the work."

Tasini, 533 U.S. at 493-94, 121 S.Ct. 2381 (citations omitted). Congress intended this limitation on what the author is presumed to give away primarily to keep publishers from "revis[ing] the contribution itself or includ[ing] it in a new anthology or an entirely different magazine or other collective work" without the author's consent. Id. at 497, 121 S.Ct. 2381 (emphasis added) (quoting H.R.Rep. No. 94-1476, at 122-23 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5738).

Thus, pursuant to § 201(c), and as Tasini notes, a magazine publisher is privileged to reproduce or distribute an article—or photographs, in this instance—contributed by a freelancer, "absent a contract otherwise providing, only `as part of' any (or all) of three categories of collective works: (a) `that collective work' to which the author contributed her work, (b) `any revision of that collective work,' or (c) `any later collective work in the same series.'" Id. at 496, 121 S.Ct. 2381. National Geographic argues that it should be able to reproduce and distribute the CNG under either the first or second prongs of § 201(c). Greenberg, on the other hand, argues that the CNG should be considered a "new collective work" which, he asserts, is not entitled to any privilege under § 201(c).

Accordingly, we must decide whether the reproduction of the National Geographic Magazines from print to CD-ROM falls within either (a) "that particular collective work" privilege, and/or (b) the "revision of that collective work" privilege.⁶ Because we conclude that the CNG is a "revision" of the original "collective works" under the second prong of § 201(c) based on Tasini's definition of "revision" in conjunction with its discussion of microform, we need not address whether it is also privileged under the first prong of § 201(c).⁷

The Copyright Act defines "collective work" as a "work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole." 17 U.S.C. § 101. Under the definition of "compilation," which includes "collective works," a "collective work" is an "original work of authorship" insofar as it involves the selection, coordination, or arrangement of preexisting materials or data. Id.; see also id. § 102(a) ("Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression . . . .").

With respect to a "collective work," copyright extends only to materials contributed by the compiling author, as opposed to preexisting materials. Id. § 103(b). A copyright in a "collective work" does not imply an exclusive right in the preexisting material. Id. Here, each individual National Geographic Magazine issue—including the January 1962, February 1968, May 1971, and July 1990 print issues in which Greenberg's photographs first appeared—is a "particular collective work," and each of Greenberg's photographs is "part of" one of those collective works. National Geographic has the privilege of reproducing these individual magazine issues in print as often as it wishes, and Greenberg retains his copyrights in his individual photographs. At the same time, National Geographic has a copyright in the collective work as a whole—to wit, the individual magazine issues.

The Copyright Act does not define "revision," but Tasini does. Tasini defines "revision" as a "new `version,' and a version is, in [the § 201(c)] setting, a `distinct form of something regarded by its creators or others as one work.'" 533 U.S. at 500, 121 S.Ct. 2381 (...