In 1976 Congress placed in the Copyright Act a “presumptive” privilege to republish individual creative works that narrowly limited the circumstances of republication. That presumptive privilege now seems more like a publisher’s right that exceeds what Congress had in mind.

In December 1997 Miami photographer Jerry Greenberg sued the National Geographic Society for infringement of copyrights he owned for 64 photographs. His case, which he ultimately lost in 2008, has resulted in a modification of the copyright landscape with special overtones for digital works. Squire Sanders represented Greenberg. Various publishers are gathering up early editions of magazines and other works and republishing them in digital collections, sometimes with and sometimes without the consent of copyright holders whose contributions were included properly in the earlier collective works.

As a hallmark event in the digital age, the Society placed in the market in 1997 a collection of 30 CD-ROMs, called the Complete National Geographic (CNG), that digitally reproduced all back issues of monthly magazines published by the Society since 1888. Each magazine was copied and placed in sequence on a disc; each disc also displayed various other elements not associated with the original magazines. The CNG reproduced, within various issues of the magazines, 64 photographs focused on undersea themes that had been created by Greenberg over a period of decades as works-for-hire for the Society. In the 1980s, copyrights to the photographs were transferred to Greenberg by the Society. The CNG product had a spectacular run in the global marketplace, with more than one million units sold.

A three-judge panel of the Eleventh Circuit Court of Appeals decided in 2001 that the Society had infringed Greenberg’s copyrights. Subsequently, Greenberg obtained a sizable jury award of damages. Ultimately, in 2008, Greenberg’s victory disappeared when the Eleventh Circuit, with 12 judges sitting en banc, concluded that an intervening Supreme Court decision in Tasini v. New York Times had broadened the right to republish. Greenberg lost on a 7-5 split in the en banc Eleventh Circuit.

The Tasini decision involved the republication of copyrighted contributions to newspapers. However, that setting was factually different from the Greenberg case because individual news articles had been lifted out of the old newspapers and placed in isolation in a vast database with other articles. In Tasini, the Supreme Court said that such a republication was not permitted by the Copyright Act.

Section 201(c) of the Act was central to the Tasini outcome, and later to the Greenberg loss. That section says that the publisher of a collective work, such as a magazine or newspaper, has the privilege of reproducing a photograph or article, owned by others, that had appeared previously in an issue of the magazine or newspaper only “as part of that particular collective work, [or] any revision of that collective work.”5 The Supreme Court said in Tasini that the 201(c) privilege does not apply when a copyrighted freelance article or photograph is republished in a “new collection” or “new collective work.”

In its defense, the Society’s position was that the CNG product amounted to a “revision” of the 1,200-plus monthly magazines that had been aggregated on CD-ROMs. The 201(c) language quoted above says, however, that any permissible “revision” must be a “revision of that collective work.” The only collective works that existed, and that might be revised, were the separate issues of the monthly magazine. No single issue of the Society’s magazine was revised in any manner. The Eleventh Circuit majority, in the 7-5 split, decreed that the gathering up of a great number of back issues of the Society’s magazine, preserved in their original context and copied in a new digital aggregation, “revised” each of them and thereby satisfied the § 201(c) requirement.

The issue henceforth for publishers and artists has at least two principal components. One, if the Complete National Geographic product satisfied the statutory requirement of “revision,” where none of the original collective works (magazines) was revised, will different approaches to the digital aggregation of magazines and newspapers also be lawful? Two, still unclear in the court decisions is what constitutes a “new collection” or a “new collective work” that the Supreme Court says is not within the statutory privilege.6

The scanning and digitizing of previously published collective works has had a lot of other attention in legal disputes. Very recently, Google and a number of book publishers and authors settled a major copyright quarrel by agreeing to apportion revenues that would be derived from the presentation online of millions of out-of-print books. Google also, with permission from certain publishers, will be allowing Google News users to search newspaper and magazine archives through its scanning. There have been other issues.

The Supreme Court in Tasini explained at length why §201(c) came into existence. The Court said that the Congressional revision of the Copyright Act in 1976 was undertaken in part to rebalance publishers’ “superior bargaining power over authors.” Section 201(c), said the Court, “adjusts a publisher’s copyright in its collective work to accommodate a freelancer’s copyright in her contribution [to the collective work]. If there is [later] demand for a freelance article standing alone or in a new collection, the Copyright Act allows the freelancer to benefit from that demand. . . .”

As the digital age accelerates, there will be issues aplenty. The republication of a bundle of pre-existing works in a digital format should be studied carefully by publishers, with their lawyers, prior to committing to such a project. The same precaution would be true for the individual creators of articles and photographs that might be used in such a new collection.