Ward v. National Geographic Soc.
| Decision Date | 13 July 2002 |
| Docket Number | No. 99 CIV. 12385(LAK).,99 CIV. 12385(LAK). |
| Citation | 208 F.Supp.2d 429 |
| Parties | Fred WARD, Plaintiff, v. The NATIONAL GEOGRAPHIC SOCIETY, et al., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Andrew Berger, Tannenbaum, Helpern, Syracuse & Hirschtritt, New York City, for Plaintiff Fred Ward.
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 National Geographic Society and National Geographic Enterprises, Inc.
Defendants National Geographic Society ("NGS"), National Geographic Enterprises, Inc. ("NGE"), Mindscape Inc. ("Mindscape"), and Dataware Technologies, Inc. ("Dataware") produce and market "The Complete National Geographic," a digital archive of all past issues of National Geographic Magazine (the "Magazine") on CD-ROM and DVD. Plaintiff Fred Ward, a freelance photographer and writer, claims that the production and sale of this product violates his intellectual property rights in photographs and text that originally appeared in the print version of the Magazine. He alleges claims of infringement under the Copyright Acts of 1909 (the "1909 Act") and 1976 (the "1976 Act"), as well as a violation of the Digital Millennium Copyright Act (the "DMCA"). The matter is before the Court on defendants' motion for partial summary judgment dismissing the complaint with respect to claims based on Mr. Ward's photographs and text that appeared in the Magazine before 1978 (the "Pre-1978 Works").
Fred Ward was hired by NGS as an independent contractor to write and photograph numerous stories published in the Magazine between 1964 and 1978. Text and/or photographs from 10 stories are at issue on this motion. They include (1) "Costa Rica," published in July 1965, (2) "Singing Birds," published in October 1965, (3) "National Parks/Parkscape USA,"1 published in July 1966, (4) "Leeward Islands," published in October 1966, (5) "The Living White House," published in November 1966, (6) "Sharks," published in February 1968, (7) "Rhode Island," published in September 1968, (8) "Everglades," published in January 1972, (9) "Those Successful Japanese," published in March 1974, and (10) "Cree Indians," published in April 1975.2
Plaintiff did not independently register any of these works during their initial copyright terms. He did, however, obtain renewal registrations for all the Pre-1978 Works except those associated with the Those Successful Japanese and Cree Indians stories, which still are in their initial terms. The Copyright Office denied Mr. Ward's applications for initial registration of the works associated with the two latter stories on July 10, 2000.
NGS is the world's largest nonprofit scientific and educational organization, with approximately ten million members worldwide. In 1995, NGS placed its television and, subsequently, its interactive and a portion of its cartography divisions into a wholly-owned taxable subsidiary named National Geographic Ventures, Inc. ("NGV"). NGV in turn owns NGE, among the divisions of which is National Geographic Interactive ("NGI").3
The Magazine is the monthly official journal of NGS, published in print format since 1888. In December 1996, NGS granted NGV the nonexclusive right to use photographs and text included in the archive of the Magazine ("in archival form only, without manipulation or alteration") for the development and distribution of various multimedia products.4
Mindscape5 is a computer software publisher and distributor. In September 1996 it entered into an agreement with NGE through its division, NGI, whereby Mindscape would manufacture, market, and distribute CD-ROM products created by NGS, including The Complete National Geographic. The agreement granted Mindscape the sole and exclusive right to manufacture, reproduce, and distribute certain multimedia products based on an archive of the Magazine, including The Complete National Geographic.6 In return, Mindscape granted NGI the right to receive royalties on its sales of The Complete National Geographic and other related multimedia products.7
Dataware, now known as LeadingSide, Inc., is a developer of interactive software for the purpose of information retrieval and electronic publishing applications. In August 1996, Ledge Multimedia, then a division of Dataware, entered into an agreement with NGS.8 The purpose of the agreement was for Dataware to manage the development of The Complete National Geographic archive. It required Dataware to develop a custom CD-ROM template, including integration of a custom set of interfaces to display magazine pages, a search engine and JPEG9 images of the scanned magazine pages. After completing this process, Dataware shipped the prototype CD-ROMs to Mindscape at its California offices for reproduction and mass distribution.10
In 1996, NGS developed a proposal to reproduce all issues of the Magazine published between 1888 and 1996 in CD-ROM format. The product was produced in significant part through a process of digital scanning. Each issue of the Magazine published between 1888 and 1996 was scanned, page by page, into a computer system. The scanning process created an exact image of each page as it appeared in the Magazine.11 The issues of the Magazine appear chronologically, from the earliest at the beginning of the first disc to the latest at the end of the thirtieth disc.
"The Complete National Geographic: 108 Years of National Geographic Magazine on CD-ROM" ("CD-ROM 108"), which was introduced to the marketplace in 1997, has three components. The first is a multimedia sequence that displays NGS's logo, followed by a promotional message for Kodak and a sequence depicting the covers of ten issues of the Magazine that transition digitally from one into another. The multimedia sequence plays the first time a user boots up CD-ROM 108 and at the beginning of each subsequent session. In subsequent sessions, however, the user can skip the sequence by clicking on the logo once. The second component consists of the digital reproduction of the issues of the Magazine. The third is the computer program that serves as the storage repository and retrieval system for the Magazine images.
The parties dispute exactly what Complete National Geographic products other than CD-ROM 108 have reached the market. At the very least, however, defendants have admitted to release of the following products: (a) "The Complete National Geographic: 109 Years of National Geographic Magazine on CD-ROM" ("CD-ROM 109"), published in 1998; (b) "The Complete National Geographic: 109 Years of National Geographic Magazine on DVD" ("DVD 109"), published in 1998; (c) "The Complete National Geographic: 110 Years of National Geographic Magazine on CD-ROM" ("CD-ROM 110"), published in 1999; and (d) "The Complete National Geographic: 110 Years of National Geographic Magazine on DVD" ("DVD 110"), published in 1999.12 Mindscape has distributed also "decade sets" of The Complete National Geographic, which contained, in CD-ROM format, issues of the Magazine from various decades in history.13
Each of the Complete National Geographic products displays a copyright notice in the name of NGS. The notice appears on the product packaging as well as on any pages that are printed out from the product.14 The consumer licensing agreement accompanying CD-ROM 108 advised end-users that "Mindscape and its suppliers grant you the right to use one copy of the Program for your personal use only" and that "[y]ou must treat the [p]rogram and associated materials and any elements thereof like any other copyrighted material."15 The CD-ROM 108 packaging informed the consumer that he or she may "[p]rint any article or photograph in color or black and white."16
Mr. Ward worked as a freelance photographer and writer for NGS during the 1960's and 1970's. In some instances, the terms of his assignments were memorialized in writing.17 In his Rule 56.1 Statement, plaintiff admitted the following facts for purposes of this motion: (1) plaintiff created the photographs and/or texts for the Costa Rica, Sharks, National Parks/Parkscape USA, Leeward Islands, Rhode Island, Everglades, and Those Successful Japanese stories pursuant to assignments from NGS, (2) NGS paid Ward a minimum guarantee for his contributions to all of these stories, and (3) NGS paid Ward's expenses for the Costa Rica, Sharks, National Parks/Parkscape USA, Rhode Island, and Those Successful Japanese stories.18
Nor can it seriously be disputed that plaintiff created the photographs and text for the Cree Indians story pursuant to an assignment from NGS, and that NGS paid him a minimum guarantee and expenses for his contributions to this story.19 The letter contract for this story, which was written by Robert Gilka and dated June 13, 1973, clearly provided that NGS "will retain all rights to the photographs [NGS] publish[es] in the Cree Indians article" and "return ... all photographs in which [NGS] ha[s] no further interest."20
Finally, defendants admit for purposes of this motion that Ward's photograph of John F. Kennedy in the Oval Office, published in The Living White House story, was not created as a work for hire.21 As will be discussed in greater detail below, the remaining contours of the Ward-NGS relationship during the relevant time period remain subject to dispute.
Under Rule 56(c) of the Federal Rules of Civil Procedure, 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.22 While the burden rests on the moving party to demonstrate the absence of a genuine issue of material fact,23 and the Court must view the facts in the light most...
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