COLLECTIVE WORKS

Ivan Hoffman, B.A., J.D.


        Here is the situation: a writer has licensed certain rights, such as print rights, to a publisher.  Now the publisher wishes to put out another version of the licensed material, say for example, in CD-ROM format.  The issue: can the publisher put out that new format without a further license from the writer?

        This is a similar situation to the one that became the case of Tasini vs. NY Times (see Electronic Rights: The Supreme Court’s “Tasini” Decision) but, as with all things in the law, the details matter.

        In Greenberg vs. National Geographic Society et. al., the Eleventh Circuit Court of Appeals had this set of facts in front of it:

This case presents the question of whether § 201(c) of the Copyright Act accords a magazine publisher a privilege to produce a digital compilation that contains exact images of its past magazine issues. This case comes before this Court for a second time and requires a determination whether an intervening Supreme Court case, New York Times Co. v. Tasini, 533 U.S. 483 (2001), abrogates an earlier decision in this case, Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267 (11th Cir. 2001) ("Greenberg I"), such that we are bound to overrule Greenberg I, which held that the digital compilation was not privileged.
        In this instance, the plaintiff had licensed to National Geographic certain print rights in and to certain photographs taken by the plaintiff.  National Geographic then put out a 30 disc CD-ROM (referred to in the case as “The CNG”) containing exact reproductions of all their magazines which of course contained plaintiff’s photographs.  In the words of the Court:
The CNG is an image-based reproduction of the magazine; every page of every issue appears exactly as it did in the original paper version. The CNG does not provide a means for the user to separate the photographs from the text or to otherwise edit the pages in any way.

The CNG also contains a computer program, created by Mindscape, which compresses and decompresses the images and allows the user to search an electronic index. The CNG further contains an introductory sequence that begins when the user inserts the disc into a drive. This sequence starts with a Kodak advertisement, which is followed by a moving display of the Society's logo and theme song and then a 25-second segment in which ten images of actual magazine
covers from past issues (including Greenberg's January 1962 cover photograph) digitally fade into one another.

        For the sake of simplicity, I will not deal in this article with the intervening procedural steps this litigation had taken including the above-referred to initial appeal, corrected decision etc.

        Section 201 provides:

(c) Contributions to Collective Works.--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. In the absence of an express transfer of the copyright or of any rights under it, 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.
        Initially, it should be noted that the opening paragraph of this article refers to a “license.”  Section 201 expressly is not applicable if the transfer is not a “license” but is “an express transfer of the copyright or of any rights under it.”  So if the author has transferred rights, then section 201 and this article do not apply.

        Section 201 provides a “privilege” to the publisher “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” as result of the publisher being the copyright proprietor of the collective work.

The Analysis

        The Court discussed the Tasini standard for when a work is a “revision of that collective work.”

Tasini involved the use of individual freelance contributions in electronic databases that removed the individual contributions from the context of the original collective work. Tasini, 533 U.S. at 487. The Tasini court held that § 201(c) did not apply there because the works had been removed from their original context. Id. at 488. [emphasis added]

In particular, the Supreme Court focused on how the articles were "presented to, and perceptible by, the user of the [d]atabases." Id. at 499. 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," the Supreme
Court concluded that it could not "see how the [d]atabase perceptibly reproduces and distributes the article 'as part of' either the original edition or a 'revision' of
that edition." Id. at 499-500.

The Supreme Court distinguished the electronic databases at issue in Tasini from microfilm and microfiche, which present an individual freelance contribution in the context of the original collective work, and implied, without directly stating, that such collections are privileged under § 201(c). Id. at 501-02. The Supreme Court noted that in the case of microforms, "articles appear . . ., writ very small, in precisely the position in which the articles appeared in the newspaper." Id. at 501.

The Supreme Court further observed that it is "[t]rue [that] the microfilm roll contains multiple editions, and the microfilm user can adjust the machine lens to
focus only on the article, to the exclusion of surrounding material. Nonetheless, the user first encounters the article in context." Id. at 501. The Supreme Court
affirmed that "transfer of a work between media does not alter the character of that work for copyright purposes," a concept known as "media neutrality." Id. at 502. [emphasis added]

        The issue in this case turned on whether the material inserted in the CD-ROM created a new work, as opposed to merely a “revision of that collective work.”  Remember that the National Geographic created an introductory sequence (“the Sequence”) and a computer program that allowed the user to compress and decompress the images and to search through the CD-ROM (“the Program”).  As to the Sequence, the Court described it as:
This sequence starts with a Kodak advertisement, which is followed by a moving display of the Society's logo and theme song and then a 25-second segment in which ten images of actual magazine covers from past issues (including Greenberg's January 1962 cover photograph) digitally fade into one another.
        The Court stated:
Under the Tasini framework, the relevant question is whether the original context of the collective work has been preserved in the revision. Clearly, the Replica [i.e. the exact reproductions of each magazine] portion of the CNG preserves the original context of the magazines, because it comprises the exact images of each page of the original magazines.

Similarly, the Program is transparent to the viewer and does not alter the original context of the magazine contents. See Tasini, 533 U.S. at 499 ("In determining
whether the Articles have been reproduced and distributed 'as part of' a 'revision' of the collective works in issue, we focus on the Articles as presented to, and
perceptible by, the user of the Databases.").

As to the Sequence, the Court stated:
Thus, the two remaining issues center on the Sequence. First, does the addition of the Sequence so alter the Replica that the CNG as a whole is no longer a privileged revision of the original magazines? And second, is the Sequence itself privileged under § 201(c)? As to the first question, we agree with the Second Circuit and hold that the addition of the Sequence does not extinguish the privilege that attaches to the Replica. The addition of the Sequence to the Replica portion of the CNG amounts to 25 seconds of "new" material that has been appended to some 1200 intact issues of the magazine..

It is clear from the encyclopedia analogy that the addition of new material to a collective work will not, by itself, take the revised collective work outside the privilege, as a revision of an encyclopedia would almost by definition include entries on new topics. The question is whether the new material so alters the
collective work as to destroy its original context. [emphasis added]

The Sequence is nothing more than a brief visual introduction to the Replica, which acts as a virtual cover for the collection of magazines.  Just as a new cover on an encyclopedia set would not change the context of the entries in the encyclopedia, the Sequence in no way alters the context in which the original photographs (as well as the articles and advertisements) were presented.

        Remember though that the Sequence used one of plaintiff’s photographs and as to that point, it was clear that such use in the Sequence was not protected as part of the Section 201 privilege.  However, the Court noted in a footnote:
An argument could be made, however, that the Sequence did, in fact, use the covers in context. Just as the original cover provided an introduction to the issue of the magazine to which it was attached, the Sequence recycled previous National Geographic Magazine covers as a virtual cover for (or introduction to) the digital compendium of all of the magazine issues in the CNG.
        However, on technical procedural grounds, the Court ruled that the district court (i.e. the trial court) did not allow defendants to present other defenses to what would otherwise have been an infringement of plaintiff’s rights.  We need not cover these matters in this article since they do not involve principles under section 201.

Conclusion

        As a result of Tasini and its progeny, precise contract language is all important.  And, as indicated, details are often the deciding point.

Copyright © 2008 Ivan Hoffman.  All Rights Reserved.

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This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.

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