Faulkner v. National Geographic Enterprises Inc.

409 F.3d 26

Douglas FAULKNER, Louis Psihoyos, Matrix International, Inc., as agent for Roger Hutchings, Sarah Leen and Rick Rickman, Sally Faulkner, David Hiser, David G. Allen, as successor and interest to Arthur Allen, Richard Conniff, Jon Krakauer, John Knoebber, Elizabeth Royte, Joe Baraban, Pamela Wilson Sartorelli, Doranne Jacobson, Jerome Jacobson, David Robert Austin, and Fred Ward, Plaintiffs-Appellants, v. NATIONAL GEOGRAPHIC ENTERPRISES INC., Dataware Technologies Inc., National Geographic Society, National Geographic Interactive, Eastman Kodak Co., and National Geographic Holdings, Inc., doing business as National Geographic Interactive, doing business as National Geographic Enterprises Inc., Defendants-Appellees.

Docket No. 04-0263-CV(L).

Docket No. 04-0388-CV(CON).

Docket No. 04-0265-CV(CON).

Docket No. 04-04750CV(CON).

Docket No. 04-0318-CV(CON).

Docket No. 04-0481-CV(CON).

United States Court of Appeals, Second Circuit.

Argued: October 27, 2004.

Decided: March 4, 2005.

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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.

Before: WINTER, KATZMANN, and RAGGI, Circuit Judges.

WINTER, Circuit Judge.

Appellants are freelance photographers and authors whose photographs and/or written works were originally published in various issues of the National Geographic Magazine. These photographs and writings have now been published in "The Complete National Geographic" ("CNG"), a digital collection of the past issues of the Magazine that offers users various means of searching, viewing, and displaying pages of these issues. Appellants and their representatives brought copyright infringement actions under the Copyright Act of 1976, as amended, 17 U.S.C. § 101 et seq. ("Act"), and the Copyright Act of 1909 ("1909 Act"), against various defendants listed in the margin.¹ The district court granted summary judgment in favor of defendants.

Although a number of issues are raised and resolved on this appeal, the principal questions are whether the district court erred in not applying the doctrine of collateral estoppel to give Greenberg v. National Geographic Society, 244 F.3d 1267 (11th Cir.2001), preclusive effect, and in finding the CNG to be a privileged revision under Section 201(c) of the Copyright Act. We agree with the district court. The decision in New York Times Co. v. Tasini, 533 U.S. 483, 488, 121 S.Ct. 2381, 150 L.Ed.2d 500 (2001), represented an intervening (post-Greenberg) change in law precluding the application of collateral estoppel, and the CNG is a revision for Section 201(c) purposes. We also resolve the other issues against appellants, and therefore affirm, except for issues relating to seven photographs that were subject to express contractual provisions preserving electronic rights in the copyright owners. As to those, we reverse and remand.

BACKGROUND

National Geographic Magazine ("the Magazine") is the monthly publication of the National Geographic Society ("NGS"). In addition to being sold in single bound paper copies, it has been sold in microform format for decades. At different times, NGS has also sold compiled, bound, paper volumes containing multiple issues of the Magazine. Since 1962, NGS has granted rights to the Library of Congress to publish a Braille edition of the Magazine. In 1996, NGS undertook a project to reproduce in CD-ROM format all issues of the Magazine published from its founding in 1888 to 1996. In 1997, NGS produced and began to sell the product, "The Complete National Geographic: 108 Years of National Geographic Magazine on CD-ROM." It was the first of many iterations of the CNG sold.²

The CNG was produced through digital scanning. Each issue of the magazine was scanned two pages at a time into a computer system. As a result, the CNG user sees exactly what he or she would see if viewing an open page of the paper version, including the fold of the magazine. Because of some contractual arrangements excluding electronic reproduction, approximately 60 out of 180,000 images have been blacked out in some iterations of the CNG. None of these images are at issue in this case. Except for the blacked-out images, there are no changes in the content, format, or appearance of the issues of the magazine.³ The pages appear as they do in the print version, including all text, photographs, graphics, advertising, credits and attributions. Issues of the Magazine appear chronologically with the first issue published appearing at the beginning of the first disk and the last appearing at the end of the last disk. The individual images and texts are therefore viewed in a context almost identical—but for the use of a computer screen and the power to move from one issue to another and find various items quickly—to that in which they were originally published.

Because the scanning process does not replicate the high resolution found in the paper magazines, the digital images may appear slightly fuzzy when compared to the high resolution of the original. PicTools Development Kit ("PicTools"), an image compression and decompression tool, compresses the scanned images onto the disc for increased storage and expands them back to their original size when the images are accessed on the CDs. PicTools is a copyrighted storage mechanism. It does not add any creative elements to the Magazines.

Stories can be retrieved through the table of contents of each magazine or by using an electronic search engine. The search engine allows a user to find stories containing certain words or phrases within the texts of articles; descriptions of articles, including title, contributors, date, and major related subjects; advertisements; cover and page images; and page maps. To view a particular story, a user must insert the disk containing the issue in which the story appeared.

Each iteration of the CNG contains introductory and conclusory material. At the beginning of each disk of the first iteration of the CNG, CD-ROM 108, a series of multimedia sequences appears. It begins with a moving display of the NGS logo followed by a Kodak advertisement, and then a sequence depicting the digital transition of ten Magazine covers into each other (the "Moving Cover Sequence"). These multimedia sequences play the first time a user boots up the CNG and at the beginning of each subsequent session. During subsequent sessions, however, the user can skip the introductory sequence by clicking on it with the mouse. A graphic display depicting moving spines of the issues of the magazines (the "Moving Spines Sequence") followed by credits is displayed when the CNG program is exited. The subsequent iterations contain similar or identical multimedia sequences. Additional multimedia tools such as the capability to bookmark and rotate pages and darken text have been added to some subsequent iterations.

NGS is a nonprofit organization that produces the Magazine. The other defendants, see Note 1, supra, are sued as a result of their relation both to NGS and the CNG. In 1995, NGS placed its television division, and subsequently its interactive and a portion of its cartography divisions, in taxable for-profit wholly owned subsidiaries. Holdings, NGV, NGE, and Interactive were such wholly-owned taxable subsidiaries. NGV, before its dissolution, wholly owned NGE. Interactive was a division of NGE.⁴ By a license agreement, NGS gave NGV non-exclusive rights to its copyrights in the Magazine for the development and use in "multimedia" products. The rights granted were for reproduction only in archival form and without alteration. Other parties and their relationship to the CNG are described in the margin.⁵

Eastman Kodak, a manufacturer and developer of film and camera equipment, entered into an agreement to pay a fee to Interactive. In return, Eastman Kodak obtained the right to place a promotional message at the beginning of the CD-ROM Disks as well as on the outside of the CNG product packaging. It also received 5,000 complimentary units of CD-ROM 108.

In 1997, the CNG project was presented to and approved by the Society's Board of Trustees. One trustee was former United States Court of Appeals Judge Leon Higginbotham, now deceased. He had at one time been a partner with Judge Kaplan in the New York law firm of Paul, Weiss, Rifkin, and Garrison.

After gaining Board approval, NGS registered the CNG with the Copyright office. Its registration form states that the CNG is a "compilation of...