The Aug. 30 decision to vacate the latest ruling in Greenberg v. The National Geographic Society means that the 11th Circuit could reinstitute a conflict between the 11th and the 2nd Circuits about whether publishers, specifically National Geographic, may reproduce publications in digital CD-ROM format without paying more royalties to freelance photographers for additional use of their work. The U.S. Supreme Court tends to favor consideration of cases on issues in which circuit courts disagree.
The copyright litigation was first addressed by the 11th Circuit in 2001 in a decision penned by Judge Stanley F. Birch Jr., the court's resident intellectual property expert. That opinion found in favor of freelance photographer Jerry Greenberg, whose photos had been published by National Geographic and then reproduced in its digital library. In similar cases in New York against National Geographic, the 2nd Circuit has taken the opposite stance, ruling that reproducing the magazine's library on CD-ROM does not violate freelancer copyrights.
Two months ago a new 11th Circuit panel overruled Birch's 2001 decision in the Greenberg case, saying instead that National Geographic should prevail. The latest decision was written by U.S. District Judge David G. Trager, a visiting senior judge from New York, which is part of the 2nd Circuit. He was joined by 11th Circuit Judge Rosemary Barkett and Senior Judge Phyllis A. Kravitch.
Trager's ruling also sidestepped a precedent which generally binds appellate panels to earlier circuit decisions addressing the same issue of law unless it has been overturned either by the entire 11th Circuit or by the U.S. Supreme Court.
But Greenberg asked the full court for an en banc review, and a majority of the active judges voted to rehear the case. En banc orders do not identify how the judges voted, but this one noted that Judge Frank M. Hull recused and that Kravitch, who joined Birch's 2001 decision with Judge Gerald B. Tjoflat, would participate.
"You can imagine how gratified we were to hear about that," Greenberg's attorney, Norman Davis of the Miami firm Squire, Sanders & Dempsey, said last week of the en banc order. "It doesn't happen very often."
"Had the prior decision stayed in place, the case would essentially have been done," said Davis. "Now, it's not. I look forward to learning what issues they [the circuit judges] want briefed and to engaging in responding to those issues."
In response to the 11th Circuit action, the National Geographic Society released a statement saying that the organization and its attorneys "now look forward to presenting our arguments in this important case to the full U.S. Court of Appeals for the 11th Circuit and believe that the full court will agree with the three-judge panel and the U.S. Court of Appeals for the 2nd Circuit that the National Geographic Society is entitled to make past issues of its magazine available in CD-ROM format without violating the copyright laws."
The Greenberg case raises on behalf of freelance photographers many of the same issues raised by freelance writers in another landmark copyright suit decided by the Supreme Court in 2001. That case, New York Times v. Tasini, 533 U.S. 233, favored freelance writers and came three months after the 11th Circuit panel ruled in favor of freelance photographer Greenberg.
In the closely watched Tasini case, freelance writers of articles previously published in newspapers and magazines brought copyright infringement claims against publishers and owners of electronic databases that had made the articles widely available via the Internet and services such as Lexis-Nexis. In a 7-2 opinion issued June 25, 2001, the Supreme Court ruled in favor of the writers.
For a decade, the Greenberg and Tasini cases have pitted publishers against freelance photographers and writers -- all of them seeking to define copyright law in a digital age. At stake are royalties and fees that publishers could be forced to share with freelancers whenever they reproduce and sell those freelancers' previously published works in merchandise designed for computer access.
In 2001 in the 11th Circuit, the Birch panel found for the photographers, specifically dismissing arguments offered by National Geographic that a 30-disc CD-ROM set containing reproductions of every National Geographic magazine was not a new product but was merely a reprint of a previously published work.
"The critical difference, from a copyright perspective, is that the computer, as opposed to the machines used for viewing microfilm and microfiche, requires the interaction of a computer program in order to accomplish the useful reproduction involved with the new medium," Birch wrote in what is now called Greenberg I. "These computer programs are themselves the subject matter of copyright, and may constitute original works of authorship, and thus present an additional dimension in copyright analysis."
Birch emphasized his point by attaching to 2001 opinion a copy of National Geographic's copyright application for the CD-ROM library.
On remand, a district judge in Florida, using Greenberg I as a guide, awarded Greenberg damages of $400,000. That ruling came in 2004, three years after Tasini. National Geographic appealed, resulting in the June opinion by Trager in what is called Greenberg II.
His panel sided with Trager's home circuit -- which since Tasini, has rejected claims against National Geographic by other freelance writers and photographers -- and bluntly labeled the earlier Birch opinion as "wrong."
The 2nd Circuit in those cases has interpreted Tasini as "an intervening (post-Greenberg I) change in the law" even though Trager acknowledged in his opinion that Tasini was decided on different facts than either Greenberg or the other National Geographic cases in New York.
After the en banc order was issued last week, Greenberg lawyer Davis said that an opinion issued by another 11th Circuit panel on Aug. 23 in an unrelated case has given him hope that the full court may restore Greenberg I.
In the case, which deals with maritime law, the panel showed that the court clearly frowns on reversing its own previous rulings, even in cases where a Supreme Court ruling has intervened.
The central question in Atlantic Sounding Co., Inc, v. Townsend, No. 06-13204, is whether the 11th Circuit can, or should, depart from a prior circuit ruling based on the Supreme Court's intervening decision in a similar case.
"We conclude that we may not," wrote Chief Judge J.L. Edmondson, joined by Edward E. Carnes and Senior Judge Peter T. Fay. "Under our prior panel precedent rule, a later panel may depart from an earlier panel's decision only when the intervening Supreme Court decision is 'clearly on point.'"
Edmondson added that the 11th Circuit had concluded in a 2003 case that "an intervening Supreme Court decision did not 'implicitly overrule' a prior circuit decision because the cases dealt with different issues and were not 'clearly consistent.'"
"The Supreme Court reminds us that '[t]here is, of course, an important difference between the holding in a case and the reasoning that supports that holding,'" Edmondson continued. "So, that the reasoning of an intervening high court decision is at odds with that of our prior decision is no basis for a panel to depart from our prior decision. As we have stated, [o]bedience to a Supreme Court decision is one thing, extrapolating from its implications a holding on an issue that was not before that Court in order to upend settled circuit law is another thing."