Greenberg v. National Geographic Society

Citation: Greenberg v. Nat'l Geographic Soc'y 488 F.3d 1331, 82 U.S.P.Q.2d (BNA) 1935 (11th Cir. 2007.

Factual Background:
This copyright infringement claim was filed by Jerry Greenberg, a freelance photographer who contributed photographs to National Geographic that were published in four (4) issues of the magazine. The plaintiff claims that National Geographic did not have the right o republish his photographs on CD-ROMs and DVDs in "The Complete National Geographic" (a thirty (30) disk collection of digital representations of the National Geographic Magazine from 1888 to the late twentieth-century).

The CNG produces an introductory Sequence after being loaded into a drive that displays, among other things, ten (10) images of past covers (including one (1) featuring a photograph taken by Greenberg). A Program written into the CNG allows for the display of "digitally reproduced issues of the magazine themselves ("Replica")".

Procedural History:
Greenberg filed a copyright infringement suit based no the CNG in 1997 and the district court granted summary judgment in favor of National Geographic based on the district court decision of Tasini v. New York Times Co. The district court held the CNG as a whole privileged under Section 201(c) because it was merely a reproduction of the original collective work.

In 2001, the Appellate Court reversed the district court's decision (Greenberg I); separately analyzing the three sections of the CNG: the Sequence, Replica, and Program. Rejecting National Geographic's defense of fair use, the Appellate Court held the Replica to be privileged under Section 201(c) but found the Sequence and Program portions to be separately copyrightable elements and remanded for a determination of damages, attorney's fees, and injunctive relief.

After Greenberg I, the Supreme Court ruled in Tasini that electronic databases that did not preserve the original context of a work were not afforded Section 201(c) privilege. Appellate Court Decision:

The Court of Appeals vacated the lower court's verdict of willful infringement and the jury award of damages. The Replica and Program portions of the CNG were held to be privileged under Section 201(c) and the case was remanded for adjuctication of defenses regarding the Sequence claim.

Section 201(c) outlines a privilege to publishers of collective works to reproduce and distribute contributions only as part of that collective work, revisions of that collective work, and later works in the same series.

The court held that the Tasini decision created a new framework for analyzing the Section 201(c) privilege allowing it to ignore the prior panel precedent rule. Under that framework the court held the Replica and Program portions of the CNG privileged because they "preserve the original context of the magazines" and "comprise the exact images of each page of the original magazine". The images displayed to the user through the use of the Program were shown in their original context and the underlying process of the Program was not visible to the user and so, according to Tasini, not at issue.

Looking to the legislative history of Section 201(c) the Appellate Court found that the addition of the Sequence to the CNG did not destroy the privilege as applied to the Replica. As an introduction to the Replica the Sequence, like a “new cover on an encyclopedia set” did nothing to affect the original character of the contributions.

National Geographic did not argue Section 201(c) privilege for the Sequence and the court remanded for adjudication of the defendant’s defenses to infringement even suggesting a possible argument that the use of the covers in the sequence was in context as an introduction to the collection of issues just as they had originally been used to introduce the issue they were originally attached to.