Second Circuit Upholds Section 201(c) Privilege for Digital Compilation in National Geographic CD-ROM Collection

Second Circuit Upholds Section 201(c) Privilege for Digital Compilation in National Geographic CD-ROM Collection

Introduction

In the landmark case Douglas Faulkner et al. v. National Geographic Enterprises Inc. et al., decided on March 4, 2005, the United States Court of Appeals for the Second Circuit addressed significant issues concerning copyright law, specifically the application of Section 201(c) of the Copyright Act of 1976. The plaintiffs, a group of freelance photographers and authors, alleged that National Geographic Society ("NGS") infringed their copyrights by including their works in "The Complete National Geographic" (CNG), a digital compilation of past magazine issues. The primary legal questions centered around whether the CNG constituted a "privileged revision" under Section 201(c) and the applicability of collateral estoppel from previous related cases.

Summary of the Judgment

The district court initially granted summary judgment in favor of the defendants, determining that the CNG fell under the privileged revision of Section 201(c) and thus did not infringe the plaintiffs' copyrights. Appellants challenged this decision, arguing that the district court erred in its application of collateral estoppel based on the precedent set by GREENBERG v. NATIONAL GEOGRAPHIC SOCiety and that the CNG should not be considered a privileged revision.

The Second Circuit affirmed the district court's decision, agreeing that the CNG was indeed a privileged revision under Section 201(c). The court held that the CNG maintained the original context, selection, coordination, and arrangement of the magazine's content, thereby preserving the integrity of the collective work. However, the court reversed the summary judgment concerning seven specific photographs that were subject to express contractual limitations on electronic reproduction, remanding these issues for further consideration.

Analysis

Precedents Cited

The judgment extensively analyzed key precedents that shaped the court's decision:

  • TASINI v. NEW YORK TIMES CO. (533 U.S. 483, 2001): The Supreme Court held that electronic databases reproducing articles in isolation did not qualify as "revisions" under Section 201(c), thereby not granting publishers the privilege to distribute individual articles separately.
  • GREENBERG v. NATIONAL GEOGRAPHIC SOCiety (244 F.3d 1267, 11th Cir. 2001): This case closely mirrored the present matter, where the Eleventh Circuit found that the CNG created a new collective work with independently copyrightable elements, thus not qualifying as a privileged revision.
  • PARKLANE HOSIERY CO. v. SHORE (439 U.S. 322, 1979): Addressed the doctrine of collateral estoppel, outlining the prerequisites for its application.
  • CELOTEX CORP. v. CATRETT (477 U.S. 317, 1986): Provided standards for granting summary judgment.

Impact

This judgment has significant implications for the digital reproduction of collective works:

  • Digital Compilations: Establishes that digital compilations maintaining the original context and arrangement can be considered privileged revisions under Section 201(c), thereby not infringing individual copyrights.
  • Contractual Limitations: Highlights the importance of explicit contractual language in limiting the scope of reproduction rights, especially regarding new media formats.
  • Precedent Flexibility: Demonstrates the courts' willingness to adapt legal interpretations in light of evolving technologies and subsequent judicial decisions.
  • Collateral Estoppel Boundaries: Clarifies that collateral estoppel cannot be rigidly applied when there is a substantive change in legal interpretations post previous rulings.

Complex Concepts Simplified

Section 201(c) of the Copyright Act

Section 201(c) allows publishers to reproduce and distribute individual contributions (like articles or photographs) as part of a collective work (like a magazine) and any revisions of that collective work. However, this privilege is limited to certain conditions and does not grant exclusive rights over the individual contributions.

Privileged Revision

A "privileged revision" is a legally sanctioned update or reissue of a collective work that allows for the reproduction and distribution of individual contributions without infringing on the authors' exclusive rights. To qualify, the revision must maintain the original context and arrangement of the collective work.

Collateral Estoppel

Collateral estoppel is a legal doctrine that prevents a party from re-litigating an issue that has already been definitively settled in a previous legal proceeding. For it to apply, specific criteria must be met, including identical issues and a final judgment on the merits.

Conclusion

The Second Circuit's decision in Faulkner et al. v. National Geographic Enterprises Inc. reinforces the scope of Section 201(c) in the digital age, affirming that digital compilations like the CNG can be considered privileged revisions when they preserve the original context and arrangement of the collective work. This judgment underscores the necessity for clear contractual agreements regarding reproduction rights and delineates the boundaries of collateral estoppel in light of evolving legal interpretations. As digital media continues to evolve, this case serves as a pivotal reference point for publishers and content creators navigating the complexities of copyright law.

Case Details

Year: 2005
Court: United States Court of Appeals, Second Circuit.

Judge(s)

Ralph K. Winter

Attorney(S)

Danial A. Nelson, Schaden, Katzman, Lampert McClune (John D. McClune, Troy, Michigan, on the brief), Broomfield, Colorado, for Psihoyos Plaintiffs-Appellants. Andrew Berger, Tannenbaum, Helpern, Syracuse Hirschtritt LLP, New York, New York, for Plaintiff-Appellant Ward. Stephen A. Weingrad, Weingrad Weingrad, LLP (William D. Gardner, on the brief), New York, New York, for Faulkner and Hiser Plaintiffs-Appellants. Robert G. Sugarman, Weil, Gotshal Manges LLP (Pierre M. Davis, Denise Alvarez, on the brief) (Terrence B. Adamson, Angelo M. Grima, Karen-Kerley Shwartz, National Geographic Society, Washington, D.C., of counsel) (Kenneth W. Starr, Christopher Landau, Kirkland Ellis, LLP, Washington, D.C., of counsel), New York, New York, for Defendants-Appellees. Victor S. Perlman, American Society of Media Photographers, Inc., Philadelphia, Pennsylvania, for Amici Curiae American Society of Media Photographers, Inc., et al. Surjit P. Soni, The Soni Law Firm, Pasadena, California, for Amici Curiae Plaintiffs in Auscape. Joseph M. Beck, Kilpatrick Stockton LLP (Alex S. Fonoroff, on the brief) (Nancy A. Kopans, JSTOR, New York, New York, on the brief), Atlanta, Georgia, for Amici Curiae JSTOR, et al. Arnold P. Lutzker, Lutzker, Lutzker Settlemyer LLP (Carl H. Settlemyer, III, Allison L. Rapp, on the brief), Washington, D.C., for Amici Curiae American Library Association, et al. Charles S. Sims, Proskauer Rose LLP (Meredith R. Miller, on the brief), New York, New York, for Amici Curiae Advance Publications, Inc., et al.

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