Son of Tasini -- or Desperately Seeking Analogies

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Books published before tape recorders were invented are now on CD, movies made before television was invented are now on DVD, and newspapers--that most venerable of media formats--are now online.  Each new technology creates the same old headache for the courts, especially in copyright infringement cases: the need to find the appropriate analogy. We've seen it before as courts try to determine whether the contractual right to publish a book also includes the right to publish an ebook or, as in last month's ruling, whether the 1939 grant of "motion picture and television rights" to the distributor of Citizen Kane includes the right to make and distribute the movie in home video form.

And now the latest round in freelance photographer Jerry Greenburg's copyright battle with the National Geographic Society, which has taken an ominous turn for him in this, its tenth year in the federal courts.  His lawsuit is the latest skirmish along the borders of  Section 201(c) of the Copyright Act, which governs the allocation of copyrights in "collective works" such as magazines, anthologies and encyclopedias. His lawsuit--and especially this week's decision by the 11th Circuit in Greenburg v. National Geographic Society vacating his $400,000 judgment--is an excellent example of the judiciary's ongoing struggle to apply to new technology the legal principles that were forged on old technology.

The National Geographic, like most periodicals, contains a variety of individually copyrightable works (such as articles, photographs, essays and charts). The editors compile those separate pieces into a copyrightable whole each month that is known as a periodical, a/k/a, a "collective work."  Under Section 201(c) of the Copyright Act, the 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."  Thus in Jerry Greenburg's case, he continues to own the copyrights in the photographs the National Geographic used in four issues of the magazine.  As for the National Geographic, under § 201(c)  they "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."

But as with so much of the Copyright Act of 1976, new technologies have rendered Section 201(c) ambiguous at best and obsolete at worst.  When National Geographic released a 30-disk CD-ROM compilation of 108 years of monthly issues of the magazine, Jerry Greenburg sued for copyright infringement on the ground that the digital compilation included several of his photographs without his permission.  The National Geographic defended, arguing that its repackaging of the magazines containing Greenburg's photographs in the form of the CD-ROM compilation constituted nothing more than an allowed "revision of that collective work" under Section 201(c).

On the first appeal back in 2001, the Eleventh Circuit rejected the National Geographic's defense, holding that the computer program incorporated into the CD-ROM and the short introductory sequence went beyond the mere reproduction of the original magazines (which would have been allowed under § 201(c)) and instead constituted a new product "in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction envisioned in § 201(c)." Greenburg I,  244 F.3d 1267, 1273 (11th Cir. 2001).

But three months later, the U.S. Supreme Court handed down its decision in Tasini v. New York Times, 533 U.S. 483 (2001).  Tasini involved the sale by various magazines and newspapers of the contents of their publications to electronic data bases such as LexisNexis.  The publishers in that case defended on the ground that electronic versions were merely "revisions" of the originals, and thus within the scope of their rights under § 201(c).  The Supreme Court ultimately disagreed, finding that the databases presented the articles "clear of the context provided either by the original periodical editions or by any revision of those editions," and thus concluding that it could not see how the database "perceptibly reproduces and distributes the article 'as part of' either the original edition or a 'revision' of that edition." Id. at 499-500.

In reaching that decision, the Supreme Court struggled for an analogy to old technology and found one in microfilm and microfiche, both of which present an individual freelance contribution in the context of the original collective work, surrounded by the original advertisements and other articles.  Without directly stating it, the Supreme Court suggested that a microfilm version of a periodical--as opposed to a data base version--would be privileged under § 201(c).

That microfilm analogy proved fatal to Jerry Greenburg's infringement claim.  As the Eleventh Circuit explained in Greenburg II, "Under the Tasini framework, the relevant question is whether the original context of the collective work has been preserved in the revision."  And because the CD-ROM reproduced the magazine issues in exactly the way they had appeared in print, the CD-ROM qualified as a "revision" under § 201(c).

The lesson here--as in the ongoing struggle over whether the Google AdWords program constitutes trademark infringement--is that successful advocacy consists of presenting your judge with an appealing old bottle into which he can pour your client's new wine.

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