Thursday, February 28, 2008

Will Tasini Get Birched?

Last June, I had a post about the Eleventh Circuit vacating its pre-Tasini panel opinion in the Greenberg v. National Geographic case, 244 F.3d 1267 (11th Cir. 2001), vacated, 488 F.3d 1331 (11th Cir. 2007), vacated and pet. for reh’g en banc granted, 497 F.3d 1213 (11th Cir. 2007).

Both Tasini and Greenberg involved interpretation of 17 USC 201(c):

(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.

If bad facts make bad law, persistently held erroneous views of the law make even worse cases. The Greenberg case illustrates this principle all too well. In Greenberg, district judge Joan Lenard rightly granted summary judgment to defendants National Geographic Society (NGS) and Mindscape, Inc., for the digitization and distribution of back issues of the NGS’ magazine on CD-ROM. Judge Lenard correctly held that Section 201(c) covered the use. (An introductory montage is not covered by that section but is argued to be fair use). A panel of the Eleventh Circuit, per Judge Stanley Birch, reversed.

Among the most important errors made in Judge Birch’s original panel decision are these two: (1) errors in the describing NGS’s copyright registrations ; (2) erroneously holding that by putting past issues of its magazine on CD-ROM, NGS had created a new collective work merely because buried within the CD-ROM, invisible to the user, was a computer program, created by defendant Mindscape, that permitted the search and retrieval of particular subjects. Judge Birch acknowledged that “Every cover, article, advertisement, and photograph appears as it did in the original paper copy of the magazine; ” [w[hat the user … sees on his computer screen … is a reproduction of each page of the Magazine that differs from the original only in the size and resolution of the text.” That should have been the end of the matter, and an affirmance of Judge Lenard.

Judge Birch also acknowledged that “both the digital reproductions and the microfilm/microfiche reproductions require a mechanical device for viewing them,” but added, “the critical difference, from a copyright perspective, is that the computer, as opposed to the machines used for viewing microfilm and microfiche, requires the interaction of a computer program in order to accomplish the useful reproduction involved with the new medium. These computer programs are themselves the subject matter of copyright, and may constitute original works of authorship, and thus present an additional dimension in the copyright analysis.” Although Judge Birch added that because there were other aspects to the court’s ruling, such as an introductory montage, “we need not decide in this case whether the addition of only the Program would result in the creation of a new collective work,” in reality, the only basis for the panel’s holding on the principal issue – exact reproduction of the NGS issues -- was the use of the computer program.

One can scour in vain the statutory language, the legislative history, cases under the 1909 and 1976 Acts, and the Supreme Court’s Tasini opinion for the slightest indication that use of a computer program, copyrighted or not, in conjunction with an exact replica of the original collective work has any bear on the analysis under Section 201(c), nor did Judge Birch cite any authority for the proposition. Neither did he explain what the “additional dimension” is for the copyright analysis: merely stating there is such a dimension establishes its existence much less relevance. Finally, there is no explanation for why the unseen use of a computer program whose only function is to permit one to search and retrieve a digital version of the intact, original collective work results in a “new collective work”: the old NGS collective work was unchanged.

It is important to point out that Section 201(c) does not refer to a “new collective work;” and neither do the legislative reports, which referred instead to “an entirely different magazine or other collective work.” It is semantic and legal legerdemain to characterize a digital version that exactly reproduces the paper version of the original collective work as a “new collective work,” “an entirely different magazine,” or as another collective. It is, instead, the same collective work, not even a revision of that collective work. The fact that a different work, a computer program, is used functionally to permit consumers to search and access the original collective work in the exact form and context could not be more irrelevant for Section 201(c) purposes.

A holding that use of an underlying, unseen computer program disentitles a publisher of the Section 201(c) privilege makes a mockery of Tasini’s holding that Section 201(c) is media-neutral. Digital accessing of works can only be achieved through use of computer programs. All CD-ROMs utilize computer programs, as do search engines (which are computer programs after all). A Luddite construction of Section 201(c) barring use of computer programs would consign the world to using microfilm and microfiche, in the process not only impeding the present surge in electronic preservation in favor of requiring libraries to maintain hard copies and microform/microfiche, but also impeding the democratic access to and dissemination of information to those who do nor live near depository libraries, to who cannot go to those libraries even if they do because they have to work for a living and cannot arrange to go during library hours, to say nothing of the exponentially larger amount of information available and searchable. Judge Birch’s approach places itself diametrically in the strongest opposition to the Constitutional goal of Promoting the Progress of Science.

A panel of the Eleventh Circuit panel vacated Judge Birch’s opinion on June 31, 2007 and as noted in the prior post, was correct in all respects. But that opinion itself was vacated en banc. The court en banc heard argument two days ago, February 26th. I didn’t attend the argument, and so have to rely on those who did, including newspaper reports. The sense I get from my sources is that the vote may be close. Here are excerpts of a truly outstanding article by R. Robin McDonald from the Daily Report in Georgia (link to the full article here):

Kenneth W. Starr, former independent counsel during the Whitewater Investigation, had been addressing the 11th U.S. Circuit Court of Appeals en banc for less than a minute Tuesday morning when Judge Stanley F. Birch Jr. interrupted.

"Mr. Starr, we're familiar with the facts. Let's get to the heart of things," he chided.

… Birch -- the 11th Circuit's resident copyright expert -- repeatedly challenged Starr as National Geographic's executive vice president, Terrence B. Adamson, watched from the packed gallery with former U.S. Attorney General Griffin B. Bell. Adamson clerked for Bell when the latter was a federal appellate judge.

… Starr argued that the U.S. Supreme Court's Tasini opinion expanded the definition of a revision to denote "a new version." The CD-ROM archive, he argued, was a new digital version that faithfully reproduced the published magazines and was "the modern version of microform."

As a digital replica, he said it did not infringe the copyrights of the contributors whose photographs had been previously published.

But Birch noted pointedly that the National Geographic had secured a new copyright for the CD-ROM library, called "The Complete National Geographic" -- an indication that the National Geographic Society considered it to be a new work, not a reprint.

Starr responded, "It's a new copyrightable element, which is what makes this a revision."

… Starr asserted Tuesday that if previously published works are faithfully reproduced -- much as they appear on microform -- then Tasini does not find a copyright has been infringed.

"If Tasini does not approve of microform," Starr said, "I am misreading Tasini."

Said Barkett: "I think Tasini does say that." [Patry: meaning she agreed with Starr].

Chief Judge J. L. Edmondson also weighed in, saying he was troubled that the digital library also contained computer code and software that made it different from old copies of National Geographic sitting in his father's closet.

"Here's the problem I have," Edmondson said. "This thing can do a lot of stuff that thousands of issues in my father's closet can't do. This thing is different. ... At some point, I have to ask, 'Doesn't something stop being a revision and become a new compilation?'"

Edmondson also noted that the photo montage included in the digital set "seems to be a different thing" than faithfully reprinting the magazine.

Judge Stanley Marcus wanted to know how the CD-ROM library differed from microform. But Starr insisted that any difference in the two products "does not matter as long as there is contextual continuity."

Using Ginsburg's dicta as his basis, Starr insisted that as long as what is presented to the user mirrors the previously published image, "regardless of the robustness of the [digital] search engine," it can be considered a revision acceptable under federal copyright law rather than a new work.

Greenberg was represented by Miami attorney Norman Davis, of Squire, Sanders & Dempsey, who argued that federal copyright law permits the reproduction of articles without infringement only in limited cases.

Like Marcus, Judge Susan H. Black pushed to know how microform and the CD-ROM library differed. When Davis suggested the CD-ROM library was more marketable and more lucrative, Black replied, "The money answer doesn't help a lot."

When Davis insisted that "the money argument" was a relevant part of the debate, Birch suggested that the copyright publishing privileges must be balanced "relative to economic advantages. It's kind of like the writers; strike," he said referencing the recent settlement between Hollywood writers and producers over additional royalties derived from digital libraries and Internet Webcasts. Birch also distinguished Greenberg from Tasini, calling Tasini a "disassembled case" where "they had taken apart the original work" and placed individual articles online. "We don't have that case," Birch said. "We have a different case." Greenberg, he said, "is an assembly case" where pieces have been added to a previously published work rather than having that work dissected for individual articles as was the case in Tasini.

Judge Charles R. Wilson appeared unconvinced by Davis' argument. "It's simply a digital version of microfilm," he said. "At least, it sounds like that to me."

And Anderson wanted to know whether a new collection of bound magazines as well as microfilm "would somehow violate your client's [copy]rights? ... Is it your position that a bound volume is a new collective work?"

And he pressed Davis about Starr's argument: "Your opponent is suggesting strongly that the Supreme Court in Tasini held that microfilm of the entire National Geographic magazine is protected."

"I don't think [the Supreme Court] held that," Davis replied. "I think they suggested it."

During Starr's rebuttal, Birch suggested that a revision, under the federal copyright statute, had to be a revision of an individual issue, not an entire library of work.

Starr replied, "You have fallen into error," citing Tasini as "saying microform is a revision."

When Anderson noted pointedly, "That is dicta," Starr replied, "It is guidance that tells us the meaning of revision."


Bruce Boyden said...

Digital accessing of works can only be achieved through use of computer programs.

That is true, but it is not necessarily true that the new medium will contain a computer program, as is apparently true here. E.g., a CD that contains PDF files of magazine pages might not contain a PDF reader. This strikes me as somewhat of a conundrum. You can't have a rule that says that adding computer programs to a collection is always (at most) a revision; what about a collective work that contains nothing but software programs? Surely adding enough programs to it and altering some facts of publication (e.g., moving from a magazine to a CD library) would make it a different collective work. The difficulty here is created by the fact that part of the "reader" is also a copyrighted work -- perhaps the line should be that such works do not make a new or different collection if added work serves more as an instrument than as content.

It also seems that we're going to see a spectrum of cases in between Tasini's rule (databases are not revisions or reproductions of print collections) and the allegedly clear case of microfilm and microfiche. Whether this CD is closer to the former than the latter would appear to depend on the amount of material on it and the reader that is used (e.g., whether it allows searching by article), which seems an odd way to decide the question.

joshua wattles said...

Are there cases about new editions of compilations published with revised indecies? Isn't the search function just an index? A new copyright could issue for a new edition of a compilation that differed from the orinal only in that it contained a revised or expanded index and the authorization for that edition would still flow under 17 USC 201(c).

tekel said...

just wow. This is the kind of educated opinion that clients would happily buy, and here we are enjoying it for free. Thanks for sharing your insight-- but who would have thought that we might find Ken Starr making an argument that commands respect?

Anonymous said...

Even if the court correctly concluded this particular case, I think Greenberg’s lawyers make an important point that will be important to future cases.

Tasini and Greenberg I were, indeed, different types of cases. Unlike Tasini, which involved a reproduction with articles shown in “isolation,” Greenberg I involved a reproduction the court viewed as a “new collective work.”

This distinction was acknowledged in Tasini itself, stating: “it would scarcely preserve the author’s copyright in a contribution as contemplated by Congress if publishers were permitted to reproduce copies of the author’s contribution in isolation or within new collective works.”

The word “or” in that statement is significant; it shows that Tasini recognized a distinction between “isolation” cases and “new collective works” cases, thereby opening the possibility that these different types of cases be approached differently when considered by the court.

Similar to what Greenberg is arguing (but perhaps to make a different point), the difference between these two kinds of cases, is that Tasini (an isolation case) involved a product where too little was done to preserve the original context, whereas the product in Greenberg I involved going too far—adding new elements to become a “new collective work.” This would explain why only Greenberg I focused on whether the product included new copyrightable elements, but Tasini did not. After all, it makes sense that the addition of copyrightable elements would be relevant to showing whether the reproduction in Greenberg I was a “new collective work,” but have nothing to do with whether the reproduction in Tasini was shown in isolation.

But this distinction is ignored in Greenberg II. Instead, having found that Tasini “effectively overruled” Greenberg I, the court applied Tasini’s original context standard believing that it must not take into consideration whether the CNG included new copyrightable elements. Even though, in actuality, copyrightability simply was not an issue Tasini addressed given the type of case it was.

Ultimately, I think this caused Greenberg II to wrongly interpret Tasini as requiring that it ignore the effect that transfer to a new medium has on whether the reproduction preserves its original context when applying the original context standard. There is no reason why courts should not be able to take into consideration the fact that a reproduction includes new copyrightable elements and features as well as the perceptible effect that transfer into a new medium has on whether the original context is preserved.

Whether or not the court comes to the correct result in this case, I think the courts failure to heed this distinction will cause problems in future cases.

Thanks for letting me express my views.


Anonymous said...

The legal discussions here are overlooking the contractual terms of the rights granted by these authors for these collective works.

Section 201(c) is a default provision that establishes rights when there is no contract setting out different terms. Most of the writers in Tasini and the photographers in Greenberg, granted first time print reproduction rights only. This grant does not include electronic rights. Nor does it somehow extend to new products, whether created by print or electronic means, that initiate a new revenue stream.

In her commentary to Congress regarding the Tasini case, MaryBeth Peters reviewed the legislative intent of 201(c):

“ the Copyright Office was instrumental in the 1976 revision of the copyright law that created the publishers’ privilege at the heart of the case. I believe that the Supreme Court should affirm the decision of the court of appeals.

. . . copyright law requires the publishers to secure the authors’ permission and compensate them for commercially exploiting their works beyond the scope of section 201(c) of the Copyright Act.

The issue in Tasini should [be] . . . whether authors are entitled to compensation for downstream uses of their works.

The controlling law in this case is 17 U.S.C. 201(c), which governs the relationship between freelance authors and publishers of collective works such as newspapers and magazines. Section 201(c) is a default provision that establishes rights when there is no contract setting out different terms. The pertinent language of 201(c) states that a publisher acquires "only" a limited presumptive privilege to reproduce and distribute an author’s contribution in "that particular collective work, any revision of that collective work, and any later collective work in the same series."

The Supreme Court’s interpretation of section 201(c) will have important consequences for authors in the new digital networked environment. For over 20 years, the Copyright Office worked with Congress to undertake a major revision of copyright law, resulting in enactment of the 1976 Copyright Act. That Act included the current language of 201(c), which was finalized in 1965.

Although, in the words of Barbara Ringer, former Register and a chief architect of the 1976 Act, the Act represented "a break with the two-hundred-year-old tradition that has identified copyright more closely with the publisher than with the author" and focused more on safeguarding the rights of authors, freelance authors have experienced significant economic loss since its enactment. This is due not only to their unequal bargaining power, but also to the digital revolution that has given publishers opportunities to exploit authors’ works in ways barely foreseen in 1976. At one time these authors, who received a flat payment and no royalties or other benefits from the publisher, enjoyed a considerable secondary market. After giving an article to a publisher for use in a particular collective work, an author could sell the same article to a regional publication, another newspaper, or a syndicate. Section 201(c) was intended to limit a publisher’s exploitation of freelance authors’ works to ensure that authors retained control over subsequent commercial exploitation of their works.

. . .the interpretation of 201(c) advanced by publishers in Tasini would give them the right to exploit an article on a global scale immediately following its initial publication, and to continue to exploit it indefinitely. Such a result is beyond the scope of the statutory language and was never intended because, in a digital networked environment, it interferes with authors’ ability to exploit secondary markets. Acceptance of this interpretation would lead to a significant risk that authors will not be fairly compensated as envisioned by the compromises reached in the 1976 Act. The result would be an unintended windfall for publishers of collective works.”

I am not an attorney, but a creator, who – as do my colleagues – endeavors to appropriately manage the rights to the works I create for publishing, so that I may be able to survive in business to create tomorrow.

I am respectfully interested in a respectful response.

William Patry said...

Dear Anonymous. You are quite right that Section 201(c) is a default provision, and is only a rebuttal presumption at that. Freelancers are free to negotiate whaever terms they wish, and if those terms bear on the use in question, those terms will govern rather than Section 201(c). So the best way for freelancers to obtain what they want is to get it in the contract.

Marybeth's comments are, as you note, pre Supreme Court in Tasini and thus have no bearing on the issues today.

Russell McOrmond said...

It is interesting how this case seems to be similar in many respects to the Canadian Supreme Court case Robertson v. Thomson Corp., [2006] 2 S.C.R. 363, 2006 SCC 43.

While not a lawyer, I posted my own concerns at the time" A perspective on the freelance journalism case from CLUE: Canada's Association for Open Source.