602
LEGAL NIGHTMARE
December 22, 2003
If you think that owning copyright to your images guarantees you the right to
stipulate how those images will be used, and to receive compensation for each use;
THINK AGAIN -- particularly if you are dealing with the U.S. legal system.
Back to the Spring of 1997 National Geographic Society (NGS) first announced that
they were going to publish a CD-ROM set that contained all the pictures and words
that had appeared in its flagship magazine for the previous 108 years. Most
photographers believed they should receive some additional compensation for this
re-use of their imagery in an entirely new product. National Geographic initially
claimed that they had a right to use all of the images without any additional
compensation whatsoever. Then they made an offer to a few people of $20 per image for
unlimited rights to use the images on CD-ROM products forever. When that offer was
rejected by virtually everyone NGS reverted to their initial position that based on
section 201(c) of the U.S. Copyright Act they had the right to use these images and
they weren't going to pay anyone anything.
The Battle Was Joined
Some photographers thought at the time, "what's the big deal?" Each image is one of
almost 150,000 that are on each CD set and who will want to buy CD's anyway. What can
a single image be worth? Well, in the intervening years the initial CD-ROM project
morphed into more that 100 different products, all re-using images that were first
published in National Geographic Magazine. These products have generated more than
$70 million in total revenue. Someone's making money off these products, but it's not
the content producers.
The vast majority of photographers and photo agencies took the position that, "I
can't fight someone as big as NGS," and let them do whatever they wanted. There were
loud grumblings, but little else. However, a few photographers were prepared to join
the legal battle.
Greenberg vs. NGS
The first was Jerry Greenberg. He had all his images that were contained in four
major stories registered prior to the infringement. He had clear letters of agreement
with NGS stating that what he had licensed NGS was one-time-rights to use these
images and that the right to make any additional uses needed to be negotiated.
At first his case was heard in the U.S. Federal District Court in Miami. The judge in
that case granted NGS' motion for summary judgment and held that the "allegedly
infringing work was a revision of a prior collective work and fell within the
defendant's privilege under 201(c)" of the copyright law. The judge based her
decision on the Tasini vs. New York Times case that was tried in the Southern
District of New York and favored the Times. That case was at that time being appealed
to the 2nd Circuit Court of Appeals and later to the U.S. Supreme Court. The Supreme
Court eventually ruled in a 7-2 decision in favor of Tasini.
Greenberg appealed his case to the 11th Circuit Court of Appeals in Atlanta which
eventually found in his favor and ordered U.S. District Judge Joan Lenard to enter a
judgment on the copyright claim in favor of Greenberg and to provide injunctive
relief.
NGS, aided by a brief written by former Whitewater prosecutor Kenneth Starr, among
others, appealed the case to the U.S. Supreme Court asking it to review the 11th
Circuit opinion but the High Court without comments, refused to hear the case.
This meant that a new jury trial had to be held in Miami to determine what
"injunctive relief" (damages) should be.
This trial was held in March of 2003 (it had been six years since all this started)
and the jury found that the infringements had been "willful" and awarded Greenberg
$100,000 per infringement for four infringement ($400,000). Willful usually adds
legal fees to the damages.
Has Greenberg seen any money yet? No. Because NGS has asked Judge Lenard to set
aside the jury's determination and 9 months later she has yet to rule on that
request. NGS has indicated that if they don't like her decision they will appeal the
case back to the 11th Circuit.
Meanwhile
Fred Ward filed a case in U.S. District Court for the Southern District of New York
and a group of photographers including Douglas Faulkner, David Hiser and Louis
Psihoyos also filed a separate case in that same court. These cases were assigned to
Judge Louis Kaplan, well known for handling major publishing cases that appear in
this jurisdiction.
Over the years Ward had more than 850 images and 12 articles published in National
Geographic Magazine. He also has excellent documentation substantiating that he
licensed specific one-time-rights to the material and that he was to be compensated
for additional uses. For more about his case see Story
475 .
In reviewing the case Judge Kaplan found that the new features contained in the first
Complete National Geographic set of CD-ROM's did not carry it over the line from
being a revision into a new work. He focused on the fact that NGS made no changes in
the content, format or appearance of the articles in the Magazine that were
reproduced in the CD's and rejected the finding of the 11 Circuit Court of Appeals.
On December 11, 2003, Judge Kaplan ruled that that NGS's section 201(c)(3) copyright
privilege allowed it to create the CD-ROM set. He argued that because the Supreme
Court ruling in New York Times v. Tasini was handed down several months after the
11th Circuit decision in the Greenberg case it cast doubt on the validity of the
Greenberg decision.
The implication of Judge Kaplan's decision are chilling. The court stated that so
long as the publisher digitally reproduces the contents of the original print work in
the same context in which they originally appeared, the publisher is free to add a
number of multimedia elements and software tools that enhance the marketability and
salability of the product.
Thus, unless Judge Kaplan's decision is overturned, we may find that publishers will
be allowed to display photographer's images in many new products without additional
permission, or compensation, so long as the context in which they first appeared
remains substantially the same. This could mean that an ad agency that wants to use
an ad on the web or a corporation that wants to offer their annual report, or
brochure as a PDF may be allowed to do so without having to pay creators for the
additional use.
The Battle Escalates Dramatically
Not only have the current plaintiffs spent countless hours in bringing the cases this
far, but they have also incurred huge expenses - and this may only be the beginning.
Now the case must be taken to the 2nd Circuit Court of Appeals. In the Tasini
decision the 2nd Circuit overturned the District Court decision and found in favor of
Tasini. Whatever happens at the 2nd Circuit the losing side is likely to appeal to
the Supreme Court.
This is no longer a series of lawsuits brought by photographers and writers against
National Geographic for the CD sets. This is a major conflict between the creators of
intellectual property and those who would exploit their works.
The case hinges on what will become the legal definition of a "revision" as it
pertains to copyright law on the digital frontier. This legal hairsplitting could
have huge ramifications as to how clients will be able to use and distribute
photographer's work, and whether photographers will be entitled to compensation for
what they produce.
The plaintiffs are asking organizations and individuals who care about protecting the
copyright of artists, writers, photographers, musicians, painters, television and
movie producers, to file amicus (friend of the court) briefs on their behalf. It is
our understanding that ASMP and EP have already initiated work on such briefs.
(EP estimates that a single amicus brief will cost $8,000 to produce.)
Whatever the eventual resolution it is likely to be many years and many tens of
thousands of dollars in expenses in the future. Photographers considering an action
for copyright infringement should contemplate what might be involved, and carefully
weigh whether their pockets are deep enough to see the action through to the end.
It is unfortunate that the U.S. legal system isn't structured to better aid the
little guy, but that doesn't seem to be the case when it comes to defending
copyright.