Friday, June 15, 2007

Eleventh Circuit Reverses Tasini Course

Shortly before the Supreme Court issued its opinion in Tasini v. New York Times, 533 U.S. 483 (2001), construing the Section 201(c) privilege, the Eleventh Circuit issued its opinion in Greenberg v. National Geographic Society, 244 F.3d 1267 (11th Cir. 2001). The prudent course for the Eleventh Circuit would have been to wait until the Supreme Court issued its opinion, but perhaps the author of Greenberg hoped for the high court's approval of his approach. If so, it was a vain wish because Justice Ginsburg ignored the court of appeals' opinion. And, by virtue of having issued an opinion at odds with the approach subsequently taken by Justice Ginsburg, the Eleventh Circuit caused a problem: did any of its opinion survive Tasini, including for example, most basically the finding of liability? (A jury had awarded the maximum statutory damages for willful copyright infringement, so the issue was hardly academic).

Four years later, the Second Circuit in a case involving the same defendant and the same issue, rejected plaintiff's argument of collateral estoppel, held that Greenberg had been superseded by Tasini, and ruled for defendant, Faulkner v. National Geographic Society, 409 F.3d 26 (2d Cir. 2005). This set up a conflict between the circuits. Two days ago, the Eleventh Circuit did the right thing, and vacated the jury award, holding that "Tasini established a new framework for applying the Section 201(c) privilege that effectively overrrules the earlier panel decision in this case." The opinion was, interestingly, by a district judge from the Eastern District of New York sitting by designation, and may be found here.


Anonymous said...

With all due respect, Bill, I think you've missed the broader principle of Tasini, which, arguably, was that the interests of authors and publishers claiming the 201(c) privilege must be balanced. One should not so quickly support Judge Winter's 2CA Faulkner outcome. It only incompletely applied the Tasini balancing prescription, and it's effect was to eviscerate the most fundamental of pre-Constitutional, Constitutional and '76 Act Copyright principles: authorial rights are granted to incentivize and facilitate independent authorship (not, as Judge Winter would have it, to grant a staggering windfall to publishers by turning 201(c) into carte blanche), thereby maximizing the quality and quantity of creation that reaches the public. The 2CA in Faulkner got it dead wrong, for at least two reasons, and now Judge Trager gets trundled down to the 11CA to mimic it - it all smells a little fishy for at least two reasons:
To quote Lateef Mtima, Tasini and Its Progeny: The New Exclusive Right or Fair Use on the Electronic Publishing Frontier?, 14 Fordham Intell. Prop. Media & Ent. L.J. 369 (2004), at 461:
“each of the Tasini and Greenberg tribunals which compared the various defendants' digital re-publications to microfilm seemed to take for granted that microfilm versions would qualify as revisions within 201(c) and also in the ordinary sense of the term. . . . None of the courts explains, however, the basis for this assumption. . . . In the present author's view, the characterization of full-image microfilm reproductions as 201(c) revisions is incorrect. Full-image microfilm reproductions are merely copies made for archival purposes, i.e., archive versions or archive copies.”

Mtima, at 425: “[a]s construed by the Supreme Court [in Tasini], the 201(c) revision privilege exists to allow for the revising and updating of a collective work while preserving the commercial market for further publication of the individual contributions therein. . . . [E]xact digital replicas can be disqualified from 201(c) revision status on the same market impact grounds as the content-altered digital re-publications at issue in Tasini.”

Finally, Bill, see the following, from today's (, which includes a further sound critique of Judge Trager's "handywork":

"In reversing Greenberg I, the second appellate panel sidestepped a precedent which binds panels to an earlier circuit decision addressing the same issue of law unless it has been overturned either by the entire 11th Circuit or by the U.S. Supreme Court.
In Greenberg II, Trager asserted that the new 11th Circuit panel on which he sat had authority to overturn Greenberg I if an intervening Supreme Court case overruled a prior panel decision, or if "the rationale the Supreme Court uses in an intervening case directly contradicts the analysis this court has used in a related area, and establishes that this Court's current rule is wrong."
This week, Lawrence Nodine, a partner at intellectual property boutique Needle & Rosenberg, called the Greenberg II ruling "curious" for several reasons.

"Leave out for a second, the sitting 2nd Circuit judge," he said. "The rule is that you are bound by previous panel decisions of the circuit that should only be reversed en banc."

While an appellate panel would have authority to reverse a previous panel if there were a Supreme Court decision "on point," Nodine suggested that Tasini was based on a different set of facts.

And dicta -- any explanatory commentary included in the high court opinion that does not directly address the facts of the case under review -- "ought not entitle the panel [in Greenberg II] to disregard the previous decision," Nodine said.

"Whether or not the [Greenberg II] panel could reverse without an en banc [hearing] is a very interesting question."
The majority in Tasini also dismissed an analogy offered by publishers that digital databases were akin to microfilm and microfiche reprints, which have not prompted copyright infringement claims.

Ginsburg noted that databases "do not perceptibly reproduce articles as part of the collective work to which the author contributed or as part of any 'revision' thereof. ... We would reach the same conclusion if the Times sent intact newspapers to the electronic publishers."
Like the 2nd Circuit, Trager acknowledged that Tasini had not addressed the issue directly. But he suggested that the high court had given "tacit approval" to microfilm and microfiche as non-infringing.
L. Donald Prutzman, a partner at Tannenbaum Helpern Syracuse & Hirschtritt in New York who submitted an amicus brief in Tasini for the American Society of Media Photographers, called Greenberg II "a reaction to the 2nd Circuit's decision -- on behalf of another photographer with respect to the same product -- which declined to follow Greenberg [I]."

Prutzman said the 2nd Circuit, in Faulkner v. National Geographic Enterprises, 409F.3d26, determined that Tasini would allow publishers to reproduce previously published articles in digital format as long as they were presented as part of an entire issue. On the other hand, "The National Geographic product added a number of bells and whistles," he said. "There was a basis for a holding that it was a new product, not just an alternative form of the magazine."

Post-Tasini appellate court opinions suggest that, "As long as you reproduce the publication in the same form it was published you haven't infringed," Prutzman continued. "But if you disaggregate it into separate articles and make them separately available, then you have infringed."

Leon Friedman, a professor of copyright law at Hofstra Law School, who filed an amicus brief on behalf of The Authors Guild in Tasini, suggested that, contrary to the Greenberg II opinion, "I don't think Tasini dealt directly with this issue. ... I think people are reading a little too much into Tasini."

To reach the conclusion opined in Greenberg II, "You have to read a lot between the lines ... I don't think Tasini compels the result in this case." Because of that, Friedman said he suspects that the U.S. Supreme Court "would take that case" on writ of certiorari. After issuing Tasini, the high court denied cert in Greenberg I, which the Birch panel had published six days before Tasini was argued.

William Patry said...

Thanks, Anonymous for your long, thoughtful comment. I view the case differently, as a simple one of statutory interpretation. My view is one I have held for a long time, even before the Second Circuit's Tasini oral argument, at a time when I was working with Tasini himself, pro bono, as a law professor, on the side of the freelancers. My views haven't changed since then and reflect what I think Congress meant, from studying the statutory language and its legislative history. Respectfully, I think nothing in that merits wheeling out constitutional balancing. The plain language of the statute is quite sufficient.

The one point I disagreed with Jonathan Tasini about at the time, and which answers the current question, is whether 201(c) is media neutral. He thought not, but there is nothing in the statute or the legislative history to support that view, and certainly microfilm was around when 201(c) was drafted. I don't think a pure microfilm or CD-ROM version of a collective work is even a revision, it is simply a reproduction. As such, they qualify under 201(c), which covers reproductions and revisions. There is no need to do a market-assessment. I have yet to see any support for the idea that 201(c) is limited to reproductions in the original medium.

Everyone I have spoken to thought the 11th circuit was incorrect in its original decision (how for example, did the mere use of software in opertaing a CD-ROM possible take one outsde the prvilege?), and it was certainly immodest of it to have issued a decision after the Supreme Court had already heard argument in Tasini and would be in a month or so issuing an opinion. The 11th circuit's immodestly is the sole source of the need to reverse course as it wisely did. Its opinion was flatly contrary to the Supreme Court and was issued solely to try and influence the Supreme Court; it didn't.

I understand that some wish the opinions had come out differently, but one should not overlook that Tasini himself prevailed at the Supreme Court, only to have the NY Times institute a new policy that dealt with the issue. And in the end, statutory provision aside, freedom of contract is just that.