In a significant victory for publishers in their long-running battle with freelancers, a federal appeals court in Atlanta recently ruled that magazine publishers do not have to compensate the individual copyright holders of freelanced articles and photographs when the magazines are reproduced on CD-ROM for commercial sale, unless contracts between the publisher and the freelancer provide to the contrary.1 This decision paves the way for publishers to generate new revenues from their archives with less apprehension that the owners of the copyrights in the individual works must be compensated unless it is clear from prior arrangements that the parties contemplated such compensation.
The Legal Setting
In the Copyright Act of 1976, Congress clarified that unless the parties agree otherwise, when individual freelancers contribute to a collective work, the freelancers retain the copyright in their original articles and photos while the publisher retains the copyright in the newspaper or magazine as a whole. Section 201(c) provides:
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 to that collective work, and any later collective work in the same series.
In 2001, the Supreme Court determined that §201(c) did not authorize the New York Times to license freelanced articles to databases without the authors’ consent, where the articles could be retrieved individually and without the context of the edition in which they originally appeared.2 In this situation, the Court reasoned, the copyright invoked is that of the individual author and not that of the publisher. By contrast, the Court suggested that §201(c) validates the longstanding practice of publishers reproducing intact periodicals on microfilm without compensating freelancers.
The Complete National Geographic
The recent Greenberg case and New York’s Second Circuit Faulkner decision3 concerned freelancers’ rights to their works when republished in the Complete National Geographic (“CNG”). The CNG is a 30- disc CD-ROM set of the 1200 issues of the National Geographic Magazine that have been published since 1888. The issues are scanned onto the CD-ROMs in chronological order to create an electronic replica of the issues as they originally appeared, including the fold between pages and all text, photos, ads and errors. Additionally, the CNG contains an introductory multimedia sequence that plays every time the CNG is started, an electronic index, a zoom function, and a search feature for identifying articles that can be accessed by inserting the correct CD-ROM.
The Faulkner and Greenberg Decisions
Articles and photographs by Douglas Faulkner appeared in several issues of the Magazine. In Faulkner, the Second Circuit reasoned that “because the original context of the Magazines is omnipresent in the CNG and because it is a new version of the Magazine, the CNG is a privileged revision.” Accordingly, in the court’s view the copyright invoked by the CNG was that of the publisher and not the freelancers, therefore the publisher did not have to compensate Faulkner for the reuse of his works. Several of Jerry Greenberg’s photographs from various issues of the Magazine were republished in the CNG, and one of Greenberg’s photographs was used in the introductory sequence. Agreeing with the
Second Circuit’s Faulkner decision, the Eleventh Circuit in Greenberg held that the publisher did not have to compensate the freelancers whose work appeared in the reproduced Magazines contained in the CNG. In doing so, the Eleventh Circuit rejected Greenberg’s argument that the computer program that enables CNG users to search, access and zoom on particular content changed the analysis under §201(c).
While Faulkner and Greenberg share the conclusion that the CD-ROM reproductions of the Magazine do not violate freelancers’ copyrights to their individual works, each decision contains an instructive example where freelancers’ copyrights are preserved. In Faulkner, the contracts of one of the photographers, Louis Psihoyos, specifically denied the publisher any electronic rights. The Second Circuit observed that these contracts preempted the application of §201(c), and that the publisher had breached the agreements by reproducing Psihoyos’ works without the photographer’s permission. In Greenberg, the Eleventh Circuit noted that one of Greenberg’s photos was used in the introductory montage to the CNG. In contrast to the publisher’s use of Greenberg’s photos in the context of the chronological set of magazines in which the photos originally appeared, the court held that the use of Greenberg’s photo in the opening sequence was not in its original context. Thus, the publisher was not “privileged” to make this use of the photograph without Greenberg’s permission.
These cases provide a roadmap for publishers seeking to generate revenues from their archives. They also provide instruction to publishers and freelancers in their negotiations of new media rights to articles and photographs that appear in periodicals. When reproducing their archives in electronic format, publishers should ensure the following.
- Former publications should be republished as electronic replicas of the print versions, only in their entirety, and chronologically.
- All editions of past publications should be republished; former issues should not be selected for republication based on their contents.
- If republished electronically with a search feature, the user should be able to flip pages from the articles identified in the search to the preceding or following pages in the same issue. That is, the search should “drop” the reader into the issue, and enable him to browse the entire issue from that point.
- If publishers use previously published freelance works to publicize or introduce the reproduced collections, such as with the CNG’s opening sequence, the out-of-context republication of these works will not be privileged under §201(c). The owners of the individual copyrights will have to agree to the reuse of their work in the new context to avoid publisher liability. Thus, publishers should conduct thorough reviews of all freelancers’ contracts whose works are to be included in the republications.
Greenberg was a 7-5 decision, and illustrates that cases involving digital republication of work by freelancers that originally appeared in print present close copyright questions that remain unsettled in many courts. Publishers and freelancers can avoid uncertainty by including comprehensive new media clauses in their contracts.