Appeals Court Limits Publishers' Publishers; Rights in Web Sites, CD-ROMs

A print version of any article or photograph becomes a new work when it is re-published in a CD-ROM, online or in any format that requires "interaction with a computer program," according to the 11th U.S. Circuit Court of Appeals. It is almost as if that court said, every time the publishing industry invents a new way to publish, use of the new system creates a new work, even when the new publication is an exact replica of the first publication, or in the case of a newspaper publisher, "a collective work."

The decision reinstates a lawsuit brought by a free-lance photographer against the nonprofit National Geographic Society, its for-profit television and electronic production subsidiary, and an electronic producer, Mindscape, Inc. The ruling will allow the photographer to go to federal trial court with his claim for copyright infringement for the use of his photographs in a new CD-ROM product collecting all National Geographic Magazines published between 1888 and 1996, over 1,200 back issues.

The consequence of the decision seems to be that when a computer program is used to publish an article, art or photograph produced by an independent contractor, the article, art or photograph may not be published electronically without an assignment of the "right" rights or license to the publisher or additional payment to the freelancer. In terms of the Copyright Act, the 11th Circuit has said the electronic publication is not merely a "revision" of the original print newspaper or magazine, but is a new collective work.

Photographer Jeff Greenberg produced four sets of photographs for the magazine. One of those pictures was chosen for an animated opening sequence in which 10 different magazine covers dissolve or "morph" into the next. The rest of Greenberg’s pictures appeared in the CD-ROM, which "differs from the original only in the size and resolution of the photographs and text," said the court. "Every cover, article, advertisement, and photograph appears as it did in the original paper copy of the Magazine," it said.

Added to this, however, were programs created by Mindscape that allow readers to select, view and navigate through the electronic magazine. One program sets up the animated opening with a Greenberg photo in it every time a reader opened one of 30 CD-ROM’s in the set. Without these programs, of course, the CD-ROM edition could not be viewed or "accessed."

The court said the "common-sense copyright analysis compels the conclusion that the Society, in collaboration with Mindscape, has created a new product. . . in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction." The "privilege" refers to Section 201(c) of the Copyright Act. This section allows a publisher to republish an original collective work or any revision thereof. It was, in the court’s words, the Society’s "sole basis and defense" for using Greenberg’s photograph. In fact the Society also argued "fair use" and a "de minimus" use, but the court rejected those positions quickly in part because the Society’s subsidiary is a for-profit corporation.

Reaction to National Geographic will continue for months, most significantly in the chambers of the U.S. Supreme Court while the justices consider Tasini v. New York Times, a similar case brought by free-lance writers against a group of large news publishers. That case was argued in March before the high court.

Tasini also rests on the interpretation of Section 201(c). In the Tasini case, however, the 2nd U.S. Circuit Court of Appeals’ decision did not rely on the addition of a computer program to find that a new work had been created. In Tasini, the publishers sold entire collective works to data-base managers, like LEXIS-NEXIS, but each article was made available to the reader one by one. The 2nd Circuit ruled that this was, therefore, not a revision of the original collective work. In National Geographic, the revision was an exact copy of the original collective work, but since it was enhanced or published by a brand new computer program, the 11th Circuit found that this was more than a revision of the original collective work.

Assuming that the circuit courts in Tasini and National Geographic will be affirmed by the Supreme Court, the consequence of these decisions is that contracts will have to be written and signed by free-lance workers to be sure that the "right" rights are transferred to the publisher, or that the free lancer is paid additional compensation for the electronic republication. It creates paperwork, possibly some bureaucratic problems, but nothing really formidable.

However, if infringement is found and damages are awarded for past publications, the real damage will be to the publishing industry.