National Geographic’s Victory On Hold

by Joel Hecker, Esq.

Advance Notes: The saga of this copyright infringement case continues.

As you may recall, in my July 2007 column, I reported on what appeared to be the final victory of National Geographic Society (“NGS”) over photographer Jerry Greenberg, when an  Eleventh Circuit Court of Appeals three-judge panel ruled in its favor. However, the full Eleventh Circuit Court of Appeals has now granted what is called an “en banc” hearing, which means that all of the active judges will review the case anew, with the initial decision by the three-judge panel being vacated.

  To recap the issues: NGS released a thirty-disc CD Rom set containing each monthly issue of the magazine for the 108 years from 1888 through 1996, a collection of some 1200 issues of the magazine. It is called the “Complete National Geographic” (“CNG”).
  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, including advertisements. It also contains a computer program which compresses and decompresses the images and allows the users to search an electronic index. It further contains an introductory sequence that begins when the user inserts the disc into a drive. This sequence starts with a Kodak ad, then shows a moving display of NGS’s logo and theme song, and a 25-second segment in which ten issues of actual magazine covers from past issues digitally fade into one another. 

  Lawsuits by various photographers followed publication, most of which were consolidated in the New York Federal Court, and by Jerry Greenberg in Florida, alleging in each instance, copyright infringement.

  Greenberg initially won his case in Florida where a jury awarded him $100,000 in statutory damages for the four images involved, or a total of $400,000. On appeal, the Eleventh Circuit Court of Appeals affirmed the holding.

Three months later, on June 25, 2001, the Supreme Court decided New York Times Co. v. Tasini. This case established a new framework  for application of the Section 201(c) privilege (section 201(c) of the Copyright Act), which grants to the publisher of a collective work a copyright to the collective work as a whole, while the author of an individual contribution to a collective work receives a copyright to that individual contribution.

  Thereafter, on March 5, 2005, the Second Circuit Court of Appeals in New York ruled in Faulkner v. National Geographic, a case involving substantially the same facts but different photographers, that the use of those photos in CNG was privileged under section 201(c) and therefore not an infringement. This holding created a conflict between the two Circuit Courts of Appeals and left the law muddled.

  The Eleventh Circuit Court of Appeals must now determine, as an entire court, whether it agrees with the Second Circuit Court of Appeals that the Tasini decision was an intervening change in the law which occurred since the initial Greenberg decision, and if so, should the lower court decision in Greenberg stand or be vacated.

  As a result, there is once again, at least temporarily, a split in the Circuit Courts of Appeals and a lack of uniformity in this area of the law. 

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com.