Copyright, Greenberg, and Tasini: a reversal [?]

Citing Supreme Court Precedent, 11th Circuit Reverses Major Copyright Ruling

'Greenberg' and 'Tasini' cases pit publishers against freelance photographers and writers

In a decision called "curious" by an intellectual property expert, a federal appellate panel in Atlanta has reversed its circuit's 6-year-old opinion in a major copyright case, declaring the ruling's mandate on behalf of freelance photographers to be "moot."

In doing so, the three-judge panel of the 11th U.S. Circuit Court of Appeals interpreted a landmark U.S. Supreme Court decision that expanded freelance writers' copyrights in a way that limited the copyright claims of freelance photographers.

The panel's June 13 ruling in Greenberg v. National Geographic Society II, 97-03924-CV, reversed a separate panel's 2001 opinion, Greenberg v. National Geographic Society I, 244F.3d1267. That decision had been authored by 11th Circuit Judge Stanley F. Birch Jr., a noted copyright expert whose formal 11th Circuit portrait depicts him holding a copy of "Nimmer on Copyright," the definitive work on copyright law. Judges Gerald B. Tjoflat and R. Lanier Anderson III joined Birch in the 2001 ruling.

In reversing Greenberg I, the second appellate panel sidestepped a precedent which binds panels to an earlier circuit decision addressing the same issue of law unless it has been overturned either by the entire 11th Circuit or by the U.S. Supreme Court.

By declaring Greenberg I moot, the new panel -- Judge Rosemary Barkett, Senior Judge Phyllis A. Kravitch and David G. Trager, a visiting U.S. district judge from the 2nd Circuit in New York -- also resolved a long-standing conflict with the 2nd Circuit created by the Birch opinion. Trager wrote the Greenberg II opinion for the new panel.

Both cases deal with The National Geographic Society's placement of its entire magazine library on CD-ROM and selling it as "The Complete National Geographic."

In the 2001 case, Birch found that National Geographic infringed the copyright of Florida freelance photographer Jerry Greenberg. Sixty-four of Greenberg's photos had appeared in issues of the National Geographic. One of those published photos also was included in an animated photo montage designed exclusively for the CD-ROM.

But in nearly identical cases in New York that were brought against National Geographic by other freelance writers and photographers, 2nd Circuit judges have taken the opposite tack.

In Greenberg II, Trager asserted that the new 11th Circuit panel on which he sat had authority to overturn Greenberg I if an intervening Supreme Court case overruled a prior panel decision, or if "the rationale the Supreme Court uses in an intervening case directly contradicts the analysis this court has used in a related area, and establishes that this Court's current rule is wrong."

The intervening ruling on which Trager rested Greenberg II was the Supreme Court's 2001 opinion in New York Times v. Tasini, 533 U.S. 233.

In Tasini, the high court found that the Times' sales of its published news articles to online databases such as Lexis and Westlaw infringed the copyrights of its freelance writers whose contracts had never contemplated the advent of digital databases.

This week, Lawrence Nodine, a partner at intellectual property boutique Needle & Rosenberg, called the Greenberg II ruling "curious" for several reasons.

"Leave out for a second, the sitting 2nd Circuit judge," he said. "The rule is that you are bound by previous panel decisions of the circuit that should only be reversed en banc."

While an appellate panel would have authority to reverse a previous panel if there were a Supreme Court decision "on point," Nodine suggested that Tasini was based on a different set of facts.

And dicta -- any explanatory commentary included in the high court opinion that does not directly address the facts of the case under review -- "ought not entitle the panel [in Greenberg II] to disregard the previous decision," Nodine said.

"Whether or not the [Greenberg II] panel could reverse without an en banc [hearing] is a very interesting question."

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 the 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.

As Birch noted in 2001 during oral argument in Greenberg I, "All this is about who gets the money, whether you [publishers] can get the money or have to share it with some author."

Florida lawyer Norman Davis of the Miami firm Squire, Sanders & Dempsey, who represents Greenberg, insisted that Tasini "has no relevance whatsoever to Greenberg I" and was not a proper basis for reconsidering and then mooting the Birch opinion.

Davis added that his client has not decided whether to ask the 11th Circuit to reconsider Greenberg II en banc.

In an appellate brief in Greenberg II, Davis suggested that the 2nd Circuit's rulings in other National Geographic cases "set up a conflict" with Birch's 2001 opinion "through the misapplication of Tasini" and argued that "any resolution of the conflict between the two circuits should be left to the Supreme Court."

National Geographic Society executive vice president Terrence B. Adamson -- a former Atlanta attorney who was a key assistant to then-Attorney General Griffin B. Bell and remains President Carter's longtime personal lawyer -- said he was "pleased and quite delighted" by Greenberg II.

"This is a very important case," he said. "It wasn't that we were selling a lot of product, but it is our archive. There are now almost 120 years of National Geographic. It's our whole history and archive of what this organization has been about."

The CD set, Adamson asserted, is not a new use of formerly published issues. "It's the same use. ... because the practice had been for 40 to 50 years to do microfilm and microfiche, which everyone understood" and which required no additional royalty payments to freelancers. "It's the same result if you put it on CD-ROM, or DVD."

The Tasini case was one of the most widely watched copyright cases to reach the Supreme Court in years. Freelance authors of articles previously published in newspapers and magazines, led by Jonathan Tasini, brought claims of copyright infringement against publishers and owners of electronic databases that had made the articles widely available via the Internet.

A federal district court found for the defendant publishers but was reversed by the 2nd Circuit, which ruled in favor of the writers. In a 7-2 opinion issued June 25, 2001, the high court affirmed the 2nd Circuit's appellate ruling.

Writing for the majority, Justice Ruth Bader Ginsburg determined that electronic and CD-ROM databases containing individual articles from multiple editions of magazines, newspapers and other periodicals could not be considered "revisions" or revised editions of the previously published issues.

"[T]he Databases reproduce and distribute articles standing alone and not in context, not 'as part of that particular collective work' to which the author contributed, 'as part of ... any revision' thereof or 'as part of ... any later collective work in the same series,'" she wrote, citing federal copyright law.

Under the terms of Section 201(c) of the 1976 revisions to the Copyright Act of 1909, Ginsburg wrote, "A publisher could reprint a contribution from one issue in a later issue of its magazine, and could reprint an article from one edition of an encyclopedia in a later revision of it, but could not revise the contribution itself or include it in a new anthology or an entirely different collective work. ...

"If there is demand for a freelance article standing alone or in a new collection, the Copyright Act allows the freelancer to benefit from that demand; after authorizing initial publication, the freelancer may also sell the article to others," she noted.

"It would scarcely preserve the author's copyright in a contribution as contemplated by Congress," Ginsburg concluded, "if a print publisher, without the author's permission, could reproduce or distribute discrete copies of the contribution in isolation or within new collective works. The publishers' view that inclusion of the articles in the databases lies within the 'privilege of reproducing and distributing the [articles] as part of ... [a] revision of that collective work,' is unacceptable."

The majority in Tasini also dismissed an analogy offered by publishers that digital databases were akin to microfilm and microfiche reprints, which have not prompted copyright infringement claims.

Ginsburg noted that databases "do not perceptibly reproduce articles as part of the collective work to which the author contributed or as part of any 'revision' thereof. ... We would reach the same conclusion if the Times sent intact newspapers to the electronic publishers."

The Greenberg cases stem from The National Geographic Society's creation of "The Complete National Geographic" -- a 30-disc CD-ROM set containing complete reproductions of every issue of National Geographic published in the magazine's history. Four of those issues included photos by Greenberg, who had reclaimed his copyrights from the National Geographic Society after publication.

"The Complete National Geographic" was powered by copyrighted software programs and included -- in addition to the magazine reproductions -- an animated montage of photos set to music and a Kodak commercial. The National Geographic registered a separate, and new, copyright for the CD-ROM set in 1997.

In Greenberg I, Birch -- writing for the panel -- stated that "common-sense copyright analysis compels the conclusion" that the National Geographic, in collaboration with a software company, has created "a new product ... in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction" envisioned by federal copyright law.

Birch specifically dismissed arguments offered by National Geographic lawyers that the CD-ROM sets were merely a republication of a pre-existing work no different from converting the magazines to microfilm.

"[T]he 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. "These computer programs are themselves the subject matter of copyright, and may constitute original works of authorship, and thus present an additional dimension in the copyright analysis."

On remand, a district judge in Florida, using Greenberg I as a guide, awarded Greenberg $400,000 in 2004, three years after Tasini.

After the Tasini ruling, National Geographic again appealed, resulting in last week's ruling.

In Greenberg II, Trager, joined by Kravitch and Barkett, sided with his home circuit, which since Tasini has rejected claims against National Geographic by other freelance writers and photographers.