Copyright and Digital Works

Caroline Horton Rockafellow
date: Thursday, December 29, 2005

Last week, the United States Supreme Court declined to hear Psihoyos, v. National Geographic Enterprises, a dispute between National Geographic Magazine and several of its freelance writers and photographers.

The dispute involved claims by certain writers and photographers that a 1997 CD-ROM compilation of 108 years of National Geographic Magazines infringed the copyright of works previously included in the hard copy version of the National Geographic Magazine. The writers and photographers argued that the electronic distribution of such works was an infringement of the original copyright and should entitle the writers and photographers to additional compensation.

The lower Appeals Court in the 2nd Circuit (New York, Connecticut, Rhode Island, and Vermont) found that the CD-ROMs were an electronic replica of the original magazines and thus a permissible revision under copyright.

Some might believe that by refusing to hear this case, the Supreme Court tacitly agreed that electronic reproduction of compilations by their original publishers is a permissible reproduction. Unfortunately, this would be an incorrect conclusion, and the fact that the Supreme Court failed to take this case does not explicitly demonstrate the Court's support of this ruling by the 2nd Circuit. In fact, the Appeals Court in the 11th Circuit (Georgia, Florida, Alabama) had earlier held in Greenberg v. National Geographic Society, a case argued under the same facts as Psihoyos, that the National Geographic's use of photographs in the CD-ROM compilation constituted a new product in a new medium and was therefore a copyright infringement.

Thus, the failure of the Supreme Court to hear the Psihoyos case was a loss for both sides and means that there is no clear cut rule regarding the digitization of composition works.

Background

Under copyright law, a copyright holder has the exclusive right to reproduce, distribute, perform and display the copyright work as well as to prepare derivative works based on the copyright work. Freelance writer and photographers will often provide their works under a license to reproduce and distribute the work for a particular purpose. More recently, that grant of rights has become more specific with respect to the licensed medium. For example, if an author grants a publisher the right to reproduce and distribute a manuscript, that does not grant the publisher the right to then go and create a motion picture based on that manuscript, unless, of course, the author has granted the publisher unrestricted rights in the manuscript or has assigned the copyright to the publisher.

Freelancers tend to be relatively sophisticated when it comes to the grant of rights in and to their work. As this is a critical revenue stream for most freelancers, they are focused on creating the most value for each piece of work. Granting overly broad rights to any publisher of their work would necessarily restrict the potential revenue stream from such work and limit avenues for distribution of that work. It is well established law that under the copyright act, it is permissible for the owner of a collective work (a work that encompasses the work of several different authors) to reproduce an exact facsimile of the complete collective work. What the National Geographic cases were asking the courts to determine was whether reproducing multiple issues of a magazine into a single CD with new graphical content was indeed a permissible reproduction of a compilation.

The National Geographic Cases

Greenberg v. National Geographic Society involved a case of a photographer who had provided photographs to the National Geographic over a 30 year period. Greenberg’s legal action was in part based on the fact that National Geographic used one of his pictures as a cover image on the CD-ROM. This cover image was displayed in a moving sequence, clearly not the same as th