New technology forces courts to examine copyright

From the Spring 2001 issue of The News Media & The Law, page 26.

A CD-ROM library archiving past magazines constitutes a new work and not simply a revision of the original contents, the U.S. Court of Appeals in Atlanta (11th Cir.) ruled on March 22.

Jerry Greenberg sued the National Geographic Society for its use of his copyrighted photographs in a 1997 set of 30 CD-ROMs, which archived 108 years of its magazine. The magazine featured Greenberg’s photographs in four issues from 1962 to 1990. “The Complete National Geographic” also included a 25-second animated introductory sequence of 10 magazine covers, including a Greenberg photo.

National Geographic argued that it had a right to produce and publish the CD-ROM under section 201(c) of the Copyright Act, which provides that “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.”

Greenberg contended that the CD-ROM set was “a new derivative work,” and not covered under the revision section of the Copyright Act.

The appeals court took a hard look at the technology used in the CD-ROM program. The software allows users to navigate through digital pages creating enough of a distinction, according to the court, for the content not to qualify as a “collective work” although the pages appear the same on disc as in print.

“In layman’s terms, the instant product is in no sense a ‘revision,'” the court said.

The court also said the disc collection was a new product in a new medium because, in its copyright application, National Geographic said that no previous claim of registration had been made with the Copyright Office. However, the individual issues of the magazines are copyrighted works.

The court did not accept National Geographic’s fair use defense in regard to the animated covers sequence because “the resultant moving and morphing visual creation transcends a use that is fair within the context of” the Copyright Act’s fair use section. The fair use doctrine permits limited use of copyrighted material for certain purposes, such as criticism, comment, teaching and scholarship.

In the lower court, a federal trial judge in Florida ruled in 1999 that the use of Greenberg’s photos in the CD-ROM collection did not infringe the photographer’s copyright, prompting Greenberg to appeal the ruling.

This case is not the only one to pit freelancers against publishers in a battle over how to interpret copyright laws in today’s high-tech world. A group of writers recently asked the U.S. Supreme Court a similar question.

In that case, The New York Times v. Tasini, a publisher and several freelance writers faced off to determine whether the publisher infringed on the freelancers’ copyrights when it sold their articles to electronic databases such as NEXIS. Like National Geographic, The New York Times argued the electronic databases are simply revisions of the publications and therefore protected by section 201(c). The U.S. Court of Appeals in New York (2nd Cir.) reversed a lower court decision that said a database containing thousands of periodicals can “hardly be deemed a revision of each edition of every periodical it contains.”

The U.S. Supreme Court has yet to issue its ruling.

National Geographic, in its brief to the Eleventh Circuit, argued that the Second Circuit’s decision in Tasini should not be consulted on the grounds that the CD-ROM contained exact reproductions of the magazine, in contrast to the newspaper articles in NEXIS, which did not appear in their original layout. The electronic database archives newspaper articles individually and excludes photographs, graphics and advertisements that may appear on the original print page.

Both the Eleventh Circuit and the Supreme Court questioned the significance of translating published material into a new medium.

“What a CD-ROM set is really not analogous to is bound volumes,” Judge Stanley F. Birch Jr. of the Eleventh Circuit said, according to the Fulton County Daily Report. “What you’ve got is a brand new work for a new medium for a new market that was never contemplated by the parties or in the licensing agreement. It is as plain as day to me this is a derivative work, and the Society has exercised a right it doesn’t have.”

In contrast, Justice John Paul Stevens inquired during the Tasini oral arguments about why selling the publication to an electronic database differed from selling it to a library.

In both cases, publishers could be forced to pay royalties to freelancers when their works are used in various electronic formats. Without a ruling in their favor, the freelancers argued, they will not receive any money should a publisher sell software containing their work or sell their work to commercial databases.

At stake are thousands of articles that would have to be deleted unless publishers compensate freelancers for their works.

A friend-of-the-court brief filed in the Greenberg case, which was written on behalf of several publishers including The New York Times, said a ruling in his favor “would seriously diminish public access to a substantial portion of the historical record compiled by this nation’s magazines and newspapers.” — EH