Copyright Law: Authorial Rights v. Publisher Privileges

[p101] Appellant, Jerry Greenberg, worked as a freelance photographer for appellee, the National Geographic Society. [1] Appellee is responsible for the publication of the National Geographic Magazine (Magazine). [2] Appellant, while working for appellee, [3] took a photograph of a diver, which appeared in the July 1990 issue of the Magazine. [4] Additionally, the photo was the subject of an explicit agreement that all rights acquired by appellee would be returned to appellant after sixty days from the date of publication of the photograph. [5]

Some years later, [6] appellee took part in a collaborative project to create a thirty disk CD-ROM library, [7] which encompassed every National Geographic Magazine from 1988 to 1996. [8] The Magazine pages and layouts placed on the CD-ROMs were identical to how they had appeared in the original publications. [9] Additionally, appellee used photographs from the magazine covers to create an opening photographic and musical montage, which ran at the beginning of every CD-ROM in the library. [10] Appellant's picture of a diver was one of ten photos used in Appellee's twenty-five second opening montage. [11]

[p102] Appellant brought suit in the U.S. District Court for the Southern District of Florida and alleged copyright infringement. [12] In rejecting appellant's argument that appellee's use of the photograph within the CD-ROM was a new use, the District Court found that the appellee's use of the photograph was merely a revision of the collective work and was within appellee's privilege as a publisher under 17 U.S.C.S. § 201(c). [13] The U.S. Court of Appeals for the [p103] Eleventh Circuit heard appellant's appeal, reversed, and HELD, that the appellee's use of the photograph infringed appellant's copyright since appellee used the photograph in a new collective work and the use was thus outside the scope of the § 201(c) privileges afforded to appellee. [14]

Traditionally, courts have sought to interpret the laws relating to copyright in conjunction with the rights afforded under Article I, Section 8, Clause 8 of the U.S. Constitution. [15] In order to achieve harmony between copyright law and the U.S. Constitution, Congress enacted the Copyright Act of 1976, [16] which enlarged author's rights and was better suited to achieve the societal goals of copyright protection. [17] However, the widespread growth of technology and a pressing demand to mainstream traditional educational methods into the current technological age has left courts grappling with how far a publisher can modernize past issues before an infringement occurs. [18]

The crux of both arguments lies within the last sentence of § 201(c), [19] specifically, the three phrases which purport to give limited privileges to publishers of collective works. [20] Initially, courts were unsure of how far to extend the privileges, [21] but ultimately settled on a view that kept the exception from swallowing up the general rule of copyright law. [22]

[p104] In Tasini v. New York Times, [23] the U.S. Court of Appeals for the Second Circuit interpreted § 201(c) in the context of a publisher using an electronic database, which gave users access to contributions within the publisher's collective works. [24] The plaintiffs in Tasini brought suit against several publishing companies, contending that the publishers' act of placing plaintiffs' articles on an electronic database infringed plaintiffs' copyrights. [25] The publishing companies asserted that they were protected by the reproduction and distribution privileges that § 201(c) accorded collective work copyright owners, and thus they were within their rights granted by that section to revise their collective works into the form of an electronic database. [26]

The Tasini court held that under these facts the databases were not among the collective works covered by § 201(c) because the databases did not constitute a revision of the original collective work, the periodicals, in which the plaintiffs' articles first appeared. [27] The Tasini court further articulated that courts should construe the revision clause of § 201(c) to mean that a revision of a collective work is permitted only in limited circumstances. [28] For example, revision of a collective work is permissible only when the collective copyright owner revises the entire collective work for a later issue, since the collective copyright owner holds a copyright only in the work that the collective owner contributed to personally and does not have any rights in the preexisting material. [29] The Tasini court reasoned that it was imperative to construe § 201(c) with the U.S. Constitution in mind so that exceptions did not overtake the general rule of copyright law: that the author of a work is the owner of the copyright for that work. [30]

[p105] Similarly, in Ryan v. Carl Corp., [31] the U.S. District Court for the Northern District of California also construed the meaning of § 201(c) narrowly, with a strong focus on the congressional intent in creating that section. [32] The Ryan plaintiffs brought suit for copyright infringement against the defendant, whose private company held the role as an interlibrary loan service center. [33] The function of defendant's company allowed customers to call and request an article from the service center, which would then copy the requested article from the periodical and send it to the customer. [34] Usually, defendant would send a copyright payment to the publisher or to a copyright payment clearinghouse. [35]

Plaintiffs asserted that under § 201(c) the defendant was prohibited from reproducing the articles, without reproduction of the periodical in its entirety. [36] Alternatively, defendant asserted that § 201(c) meant that publishers could reproduce the contributed work even though the entire collective work was not reproduced at the same time they reproduced the contribution. [37] In rejecting defendant's interpretation of § 201(c), the Ryan court relied on the historical underpinnings of § 201(c). [38] Namely, the Ryan court concluded that the main reason to construe § 201(c) narrowly, and in favor of authorial rights, was because of the harsh treatment authors received in the pre-1976 Copyright Act era. [39] The Ryan court emphasized that Congress promulgated § 201(c) mainly in response to the copyright indivisibility doctrine, which forced authors of contributions to collective works to either forego their rights to the publishers of the collective work or allow the contributed work to fall in the public domain. [40] Thus, in the context of § 201(c), and the struggle for rights between [p106] publishers and authors, courts should construe § 201(c) to enlarge the rights of authors, as Congress intended. [41]

The instant court, in applying § 201(c), relied heavily on the historical foundation of the copyright clause found in both the U.S. Constitution and in the House Reports. [42] The instant court construed the language of § 201(c) very narrowly when the instant court found that the rights granted to a contributor of a collective work were greater than the privileges granted to the owner of the copyright in the collective work. [43] In doing so, the instant court restricted the publishers' use of a contribution to limited situations. [44]

In the instant case, the CD-ROM compilation consisted of three separate contributions: (1) the digitally reproduced old magazine issues; (2) the opening montage; and (3) the computer program used to run the CD-ROMs. [45] The instant court stated that a simple change of medium, such as the digital reproduction of the old magazine issues, might have given appellee's protection under § 201(c) because a change of medium does not necessarily constitute a new collective work. [46] However, in the instant case, the instant court found that the change in medium, together with the opening montage and the computer [p107] program, amounted to a new collective work. [47] The instant court further explained that a reprint of a contribution from a prior issue to a later issue was permissible under § 201(c). [48] Additionally, another permissible use would be a revision of an entire collective work in which the contribution itself was not revised. [49] The § 201(c) privilege exists mainly to serve the purpose of a later edition revision, not to allow a new collective work to be created based on prior contributed works. [50] Thus, the instant court rationalized that to rule otherwise and allow publishers greater use of contributed works would eradicate the general rule. [51]

By relying on both congressional intent and the historical foundations of the Copyright Act, the instant court, like the Ryan court, focused on the notion that the Copyright Act was designed to protect an author's copyright. [52] The instant court further articulated that this goal would be thwarted if a publisher were permitted to reprint and distribute the contributed work either by itself or as a part of a new collection. [53] Clearly, Congress intended to give the author the freedom to contribute to a specified, particular collective work without subjecting the author to any and all uses of the contributed work. [54] Essentially, the limitations articulate the notion that just because the author permitted the publisher to use the contribution in one collective work does not mean that the publisher has the permission to use the contributed work in whatever else the publisher may desire to create. [55]

The instant court's decision preserves the fundamental goal of copyright law by favoring a narrow focus on authorial rights. [56] Although the original photograph could have been reproduced or revised properly under § 201(c) had appellee only changed the medium, the instant court found that the addition of the opening montage and the computer program resulted in appellee creating a new collective work. [57] Section 201(c), designed to enlarge authorial rights, does not permit a publisher to use a contribution in a new collective work. [58] [p108] Therefore, appellee's use of appellant's photograph constituted a use of appellant's contribution in a new collective work. [59]

The instant court found the language of § 201(c) ample enough to allow for a limited use of revisions when the publisher reprints the entire collective work as a new edition, but not in circumstances where the publisher revises the contributed work itself. [60] Additionally, the House Reports of the Copyright Act of 1976 reported that Congress intended for courts to interpret § 201(c) to favor authors. [61] The instant court also stated that its interpretation of § 201(c) was in conformity, not only with legislative intent, but also with the intent of the founding fathers of the U.S. Constitution. [62] Since appellee's use of the contribution was outside the intended privileges for a collective work, the use of the photo infringed appellant's copyright. [63]

The instant court's ruling allowed a narrow reading for when a publisher may use a contributed work before infringing on an author's copyright, since § 201(c) does not explicitly bar the publisher's revision of a contribution. [64] Though § 201(c) was implemented in conjunction with the Copyright Act of 1976, few court cases have had the opportunity to interpret the reach of the section. [65] Congress, however, envisioned the scenario in which a publisher wants to revise or reprint a collective work for a new edition and tries to balance that interest with the author's interest in retaining a copyright on the contributed work. Moreover, as society makes new technological advances resulting in a greater demand for traditional aspects of society to advance to that same level of technology, the courts will encounter more of a struggle between authors and publishers.

Use of the House Reports allowed the instant court to correctly interpret the legislative intent during § 201(c)'s formulation. [66] The instant court's ruling is a continuance of the public policy to support an author's right to contribute to a collection without losing all rights to the contributed work. Moreover, the limited privileges that § 201(c) gives to publishers provide an important incentive for authors to keep creating and contributing without the risk of losing their rights.

[*] Winner of the Journal of Technology Law & Policy Fall 2001 Open Writing Competition. I dedicate this to my parents, whose constant love and support has guided me through my many years of schooling, and to God for all of my blessings.

[1] Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267, 1269 (11th Cir. 2001).

[2] Id. at 1268.

[3] Id. at 1269.

[4] Id.

[5] Id.

[6] Greenberg, 244 F.3d at 1269.

[7] Id.

[8] Id.

[9] Id.

[10] Id. The montage in its entirety was twenty-five seconds long and used overlapping images of the covers so that one cover would come up and then fade as another cover was coming up, with only ten photographs being used for the entire montage. Id.

[11] Greenberg, 244 F.3d at 1269.

[12] Id. at 1270. See 17 U.S.C. § 501(a) (2001). Section 501(a), entitled "Copyright Infringement and Remedies" classifies an infringer under subsection (a) which states in relevant part:

Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 though 118 or of the author as provided in section 106A(a), or who imports copies or phono records into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be. For purposes of this chapter (other than section 506), any reference to copyright shall be deemed to include the rights conferred by section 106A(a).

Id. Another pertinent section for infringement actions is Section 106A(a) which states:

(a) Rights and Attribution and Integrity. Subject to Section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art
(1) shall have the right
(A) to claim authorship of that work, and
(B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create;
(2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and
(3) subject to the limitations set forth in section 113(d), shall have the right
(A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and
(B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.

Id. § 106A(a).

[13] Greenberg, 244 F.3d at 1268. See also 17 U.S.C. § 201 (1976). Relevant sections of 17 U.S.C. § 201 of the 1976 Copyright Act state as follows:

Section 201 Ownership of Copyright
(a) Initial Ownership -- Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of copyright in the work.
(b) Works Made for Hire -- In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.
(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.

Id. Other pertinent definitions include: "collective work" is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole. 17 U.S.C. § 101. A "compilation" is defined as a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. Id. The term "compilation" includes collective works. Id.

[14] Greenberg, 244 F.3d at 1268.

[15] Id. at 1271. See also U.S. CONST. art. VIII, cl. 8.

[16] 17 U.S.C. § 101 (1976).

[17] Ryan v. Carl Corp., 23 F. Supp. 2d 1146, 1150 (N.D. Cal. 1998).

[18] See id.

[19] 17 U.S.C. § 201(c) (2001).

[20] Id.

[21] Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267, 1268 (11th Cir. 2001); see also Ryan, 23 F. Supp. 2d at 1149-50.

[22] Tasini v. NY Times Co., 206 F.3d 161, 168 (2nd Cir. 1999); see also Ryan, 23 F. Supp. 2d at 1150-51. The U.S. Supreme Court recently affirmed the U.S. Court of Appeals for the Second Circuit decision in Tasini. NY Times Co. v. Tasini, 121 S. Ct. 2381 (2001). Although Greenberg was not decided based on the U.S. Supreme Court's ruling, the ruling from the high court clearly supports the Eleventh Circuit's interpretation of § 201(c).

[23] Tasini, 206 F.3d at 167-70.

[24] Id. at 165-66.

[25] Id. at 164-65.

[26] Id. at 165.

[27] Id. at 165-66.

[28] Tasini, 206 F.3d at 166-67.

[29] 17 U.S.C. § 103(b) (2002). Section 103(b) states in its entirety:

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

Id. See also Tasini, 206 F.3d at 168.

[30] Tasini, 206 F.3d at 168.

[31] 23 F. Supp. 2d 1146, 1150 (N.D. Cal. 1998).

[32] Id.

[33] Id. at 1147.

[34] Id.

[35] Id.

[36] Ryan, 23 F. Supp. 2d at 1149.

[37] Id.

[38] Id. at 1149-51. The Ryan court suggested that its interpretation of § 201(c) would read as follows:

The privilege of reproducing the contribution "as part of that particular collected work" plainly permits a publisher to include the contribution "in" the collected work; otherwise, collected works would be impossible. Likewise, there can be no dispute that contributions may be reproduced "in" revised collected works and "in" later collected works in the same series.

Id. at 1149-50.

[39] Id. at 1150.

[40] Id.

[41] Ryan, 23 F. Supp. 2d at 1150.

[42] Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267, 1271-72 (11th Cir. 2001); see also H.R. Rep. No. 94-1476.

[43] Greenberg, 244 F.3d at 1272.

[44] Id. at 1273.

[45] Id. at 1269.

[46] Id. at 1274 n.14. Specifically the instant court stated, "the mere electronic digital reproduction that represents the Replica may not qualify as a derivative work, and thus not violate Greenberg's exclusive right to prepare derivative works under § 106." Id. The instant court also stated with regard to the instant case, "[b]ut here, as explained above, we have far more than a mere reproduction in another medium." Id. Section 106 states:

Subject to Sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2)to prepare derivative works based upon the copyrighted work;
(3)to distribute copies of phono records of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual work, to perform the copyrighted work publicly;
(5)in the case of literary, musical, dramatic, and choreographic work, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6)in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. § 106 (2001).

[47] 17 U.S.C. § 201(c) (2001); Greenberg, 244 F.3d at 1272-73.

[48] Ryan v. Carl Corp., 23 F. Supp. 2d 1146, 1150 (N.D. Cal. 1998).

[49] Greenberg, 244 F.3d at 1273.

[50] Id.

[51] See id. at 1272.

[52] Id.; see also Ryan, 23 F. Supp. 2d at 1150.

[53] See Greenberg, 244 F.3d at 1272-73.

[54] See id.

[55] See id. at 1273; see also H.R. Rep. No. 94-1476, at 122-23.

[56] See Greenberg, 244 F.3d at 1272.

[57] See id. at 1274 n.14.

[58] See id. at 1272.

[59] See id.

[60] Id. at 1273. Specifically, the House Report stated that, "Under the language of this clause a publishing company could reprint a contribution from one issue in a later issue of its magazine, and could reprint an article from a 1980 edition of an encyclopedia in a 1990 revision of it." H.R. Rep. No. 94-1476, at 122.

[61] H.R. Rep. No. 94-1476.

[62] See Greenberg, 244 F.3d at 1271.

[63] See id. at 1275.

[64] See 17 U.S.C. § 201(c) (2001).

[65] See Ryan v. Carl Corp., 23 F. Supp. 2d 1146, 1150 (N.D. Cal. 1998).

[66] See Greenberg, 244 F.3d at 1273; see also Ryan, 23 F. Supp. 2d at 1150.


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