|11th Circuit Rules in Collective Work
6/13. The U.S. Court of Appeals
(11thCir) issued its
opinion [19 pages in
PDF] in Greenberg v. National Geographic Society, a copyright case.
Initially, copyright vests in the author of a work, or the photographer who
takes a picture. However, the writer or photographer may work under a contract
with an employer or other person or entity that provides that articles or
pictures are works made for hire, in which case the employer holds the
copyright. Alternatively, an independent or freelance writer or photographer may
license works to the publisher of a collective work, such as a daily newspaper
or periodical magazine. This case concerns this later scenario.
More specifically, this case, and other similar cases, address copyright in
works that have been licensed to a publisher of a collective work when that
publisher decides to later include the copyrighted article or photograph in
subsequent collective works, such as electronic databases, or CD versions of
The Supreme Court held in New York Times v. Tasini that freelanced
articles in newspapers, for which the author still owns the copyright, cannot be
republished in electronic databases without permission from the author.
The present case involves National Geographic's (NG) replication of past
issues of its print magazine in a CD collection. NG used articles of freelance
writers and photographers, including Jerry Greenberg. The Second Circuit held in
Faulkner v. National Geographic Society, and the 11th Circuit held in the
present case, that this is permissible, under Section 201(c) of the Copyright
Act, without further license from the freelance authors and photographers.
Moreover, both Courts held that adding additional material to the CD collection
that contains the replications does not negate the Section 201(c) privilege for
reproducing the freelance works. However, the 11th Circuit held that while there
is no infringement of a copyrighted freelance work that is included in the
replication, there may be infringement if it is in the additional material that
accompanies the replication.
Relevant Statute. The relevant statute is codified at
17 U.S.C. § 201(c). It provides in full that "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 of that collective work, and any later
collective work in the same series."
Related Cases. This is another in a series of related cases regarding
collective works and new electronic media. The just released opinion will likely
be referred to as Greenberg II. In 2001 the 11th Circuit issued its
Greenberg I opinion, Greenberg v. National Geographic Society, 244
F.3d 1267. There is also the Supreme
Court's June 25, 2001
New York Times v. Tasini, which is reported at 533 U.S. 483, and the
U.S. Court of Appeals (2ndCir)'s 2005
opinion in Faulkner v. National Geographic Enterprises, which is reported
at 409 F.3d 26.
In Tasini, the Supreme Court addressed the republication of the
articles of freelance writers in electronic databases, which articles were
originally published in periodicals, such as the New York Times. The plaintiffs
were freelance authors whose articles were previously published in these
periodicals. The defendants were publishers and owners of electronic databases
that republished their articles. None of the plaintiffs were employed by the
periodical publications in which their articles appeared. Nor did they have work
for hire contracts. All registered a copyright in each of the articles at issue.
The authors' ownership of the copyright in their individual works was not in
dispute. Subsequently, the periodical publications licensed much of the content
of their periodicals, including the plaintiffs' works, to one or more of the
electronic database providers.
The Supreme Court held that the defendant publishers did not have a privilege
under Section 201(c) of the Copyright Act to include in electronic databases the
freelance articles written for and licensed to print publications.
See also, story titled "Supreme Court Rules for Authors in NYT v. Tasini" in
TLJ Daily E-Mail
Alert No. 216, June 26, 2001. And see,
"Supreme Court Grants Cert in NYT v. Tasini", Tech Law Journal, November 7,
Faulkner was decided after Tasini. The plaintiffs in that case
also sued the NGS for copyright infringement following republication of their
work in the CNG. There is, however, a distinguishing fact in Greenberg's case.
While his photographs were used in the CNG's replication of the print issues,
one was also included in a new photographic sequence contained in the CNG.
Greenburg I was decided before Tasini and Faulkner.
Facts Related to Greenberg. The plaintiffs below in the present case
are Jerry Greenberg, an independent photographer, and his wife. The
defendants are the National Geographic Society, National Geographic Enterprises,
Inc., and Mindscape, Inc., a software company.
Greenberg's photographs were published in the January 1962,
February 1968, May 1971 and July 1990 issues of
National Geographic magazine.
In 1997, National Geographic produced a 30 disc CDROM product
titled "The Complete National
Geographic" or CNG. It reproduced each monthly issue of the print
magazine from 1888 through 1996, including Greenberg's pictures, in which he
holds the copyright. NG did not obtain permission from Greenberg to include his
pictures in CNG.
The Court of Appeals wrote that there are three relevant
components of the CNG. First, there is the replica of the print issues. Second,
there is a program created by Mindscape that compresses and decompresses the
images and allows users to search an electronic index. Third, there is a
sequence that includes a 25 second segment in which ten images of actual
magazine covers from past issues, including Greenberg's January 1962 cover
photograph, digitally fade into one another.
District Court. Greenberg and his wife filed a complaint in
U.S. District Court (SDFl)
against NGS, NGE, and Mindscape alleging copyright infringement.
The NG defendants filed a motion to dismiss on the ground that NG had a
privilege to publish a revision of the originally licensed works under 17 U.S.C.
§ 201(c). The District Court granted the motion. The Court of Appeals reversed
in Greenberg I. (The Supreme Court issued its opinion in Tasani
three months later.)
The Court of Appeals reasoned in Greenberg I that the subsequent work,
the CNG, added independently copyrightable elements not present in the original
collective work, and hence cannot be privileged by Section 201(c).
On remand, the District Court granted Greenberg judgment of infringement. The
trial jury then returned a verdict finding willfulness, and awarded maximum
statutory damages for willful copyright infringement.
Court of Appeals. The NG parties brought the present appeal. The Court
of Appeals held the Tasini opinion created a new framework that overrules
Greenberg I. Hence, the Court of Appeals is now no longer bound under
collateral estoppel by its earlier decision.
Then, applying Tasini, the Court of Appeals held that both the replica
and program are privileged under Section 201(c). The Court of Appeals also
vacated the verdict of willful infringement and the damage award. The case now
goes back to the District Court. Greenberg can proceed against the NG defendants
only on the one photograph included in the sequence.
The Court of Appeals distinguished the facts of Tasini from those in
the present case. In Tasini, the authors contributed articles to the
print editions of periodicals, and these articles were later included in
electronic databases. In contrast, in the present case, Greenberg contributed
photographs to the print editions of the National Geographic magazine, and NG
now replicates those issues on CD.
The Court of Appeals wrote that "The Supreme Court distinguished
the electronic databases at issue in Tasini from microfilm and microfiche, which
present an individual freelance contribution in the context of the original
collective work, and implied, without directly stating, that such collections
are privileged under § 201(c)."
The Court of Appeals continued that "Under the Tasini framework, the
relevant question is whether the original context of the collective work has
been preserved in the revision. Clearly, the Replica portion of the CNG
preserves the original context of the magazines, because it comprises the exact
images of each page of the original magazines. Similarly, the Program is
transparent to the viewer and does not alter the original context of the
The Court added that the "Sequence does not extinguish the
privilege that attaches to the Replica." The Court noted that the sequence is a
"brief visual introduction" and analogized it to the cover of a book.
However, Court also held that the CNG's sequence presents one of Greenberg's
pictures out of the context in which the original photographs were presented,
and hence, is not privileged under Section 201(c).
The Court of Appeals remanded the case to the District Court the question of
whether NG is liable for infringement for its sequence, and if so, whether that
infringement was willful. The Court of Appeals also reinstated other defenses
raised by NG that were not previously decided on their merits.
This case is Jerry Greenberg v. National Geographic Society, et al.,
U.S. Court of Appeals for the 11th Circuit, App. Ct. No. 05-16964, an appeal
from the U.S. District Court for the Southern District of Florida, D.C. No.
97-03924-CV-AMS. Judge David Trager (USDC/EDNY sitting by
designation), wrote the opinion of the Court of Appeals, in which Judges Barkett
and Kravitch joined.
Before this opinion, the 11th Circuit's opinion in Greenberg I was
arguably in conflict with the 2nd Circuit's opinion in Faulkner. Then, a
judge from the 2nd Circuit, sitting by designation in the 11th Circuit, wrote an
opinion for the 11th Circuit that adopted the 2nd Circuit's position, and
overturned the 11th Circuit's precedent.
|6th Circuit Addresses Damages in
Software Copyright Infringement Case
6/14. The U.S. Court of Appeals (6thCir)
issued is opinion
[9 pages in PDF] in Thoroughbred Software v. Dice, a software
copyright case involving the award of actual damages, profits resulting from
infringement, and attorneys fees.
The Court of Appeals held, among other things, that when a software copyright
holder licenses software for a license fee for each copy, and the licensee makes
more copies than it licenses, the copyright holder is entitled to recover as
actual damages the amount of unpaid licensing fees. Moreover, this applies to
unlicensed copies that are made, but not actually used.
Thoroughbred Software International, Inc. develops and sells business accounting software.
Dice, Inc. provides computer hardware with pre-installed software to its business customers
in the security and alarm monitoring industry. Dice licensed software from Thoroughbred. The
agreement provided that a license fee is due for each copy of software
purchased, and that Dice cannot make additional copies.
However, Dice also installed extra unlicensed copies of Thoroughbred software, and a
disgruntled former Dice employee notified Thoroughbred.
District Court. Thoroughbred filed a
complaint in U.S. District Court (EDMich)
against Dice and two of its principals alleging copyright infringement. The
District Court found that Dice exceeded the scope of its license and violated
the Copyright Act.
The District Court also found that some of the
unauthorized copies were used by Dice's customers, but some were not. The
District Court awarded actual damages (the unpaid licensing fees) for the
software that was used, and denied actual damages for the unused software. The
District Court also declined to award Thoroughbred recovery for profits that
Dice made from infringement. It also declined to award attorney's fees to either
party on the ground that no party constituted a prevailing party under Section 505.
17 U.S.C. § 504(b) provides in full that "The
copyright owner is entitled to recover the actual damages suffered by him or her
as a result of the infringement, and any profits of the infringer that are
attributable to the infringement and are not taken into account in computing the
actual damages. In establishing the infringer’s profits, the copyright owner is
required to present proof only of the infringer’s gross revenue, and the
infringer is required to prove his or her deductible expenses and the elements
of profit attributable to factors other than the copyrighted work."
17 U.S.C. § 505 provides in full that "In any civil action under this title,
the court in its discretion may allow the recovery of full costs by or against
any party other than the United States or an officer thereof. Except as
otherwise provided by this title, the court may also award a reasonable
attorney’s fee to the prevailing party as part of the costs."
Court of Appeals. Thoroughbred brought
the present appeal. Dice did not cross appeal the judgment of infringement, or
the award of actual damages as to the software that was used. Hence, the only
issues on appeal pertain to the other remedies for infringement.
The Court of Appeals wrote that the proper measure of actual
damages in this case is the amount Thoroughbred would have received but for
Dice’s unlawful copying of the software. IT also held that Dice is liable for
the unpaid license fees for all of the unauthorized copies, regardless of
whether or not they were ultimately used by Dice's customers. Hence, it reversed
the District Court on this issue.
The Court of Appeals affirmed the District Court's denial of
profits. However, it based its affirmance upon Thoroughbred's failure to offer
the appropriate evidence of profits at trial.
The Court of Appeals wrote that "In the instant case, the proper
measure of the infringer’s profits is the amount that Dice Corp. charges its
customers for the infringing software, minus the amount that Dice Corp. should
have paid Thoroughbred for the infringing software (i.e., the lost license fee),
which has already been included as actual damages." (Parentheses in original.)
Finally, the Court of Appeals held that Thoroughbred is the
prevailing party. Hence, it vacated the District Court's denial of attorney's
fees, and remanded for a determination of whether Thoroughbred, as the
prevailing party, is entitled to an award for attorney's fees.
This case is Thoroughbred Software International, Inc. v. Dice Corporation, et al.,
U.S. Court of Appeals for the 6th Circuit, App. Ct. No. 06-2080, an appeal from the U.S.
District Court for the Eastern District of Michigan at Bay City, D.C. No. 03-10259, Judge
David Lawson presiding. Judge Solomon Oliver (USDC/NDOhio sitting by designation) wrote the
opinion of the Court of Appeals, in which Judges Keith and Cole joined.
6/13. Microsoft and
Linspire, which makes a Linux based operating system,
announced "a broad interoperability, technical collaboration that also includes
intellectual property assurances". See, Microsoft
release and substantially identical Linspire
Microsoft and Linspire stated that "Through the agreement, Microsoft and
Linspire have developed a framework to provide patent covenants for Linspire
customers. The patent covenants provide customers with confidence that the
Linspire technologies they use come with rights to relevant Microsoft patents.
As well, Linspire now joins a growing group of open source software (OSS)
distributors collaborating with Microsoft on efforts to establish rich
interoperability, deliver IP assurance to customers and build the bridge between
open source and proprietary software."
|Washington Tech Calendar
New items are highlighted in red.
|Friday, June 15
The House will meet at 9:00 AM.
The Senate will meet at 9:30 AM. It will resume consideration of
HR 6 [LOC |
"Creating Long-Term Energy Alternatives for the Nation Act of 2007".
9:00 - 10:30 AM. The Information
Technology and Innovation Foundation (ITIF) will host a debate titled "Is
the United States Falling Behind in Broadband? If so, What Should We Do About It?"
The speakers will be Robert Atkinson
(ITIF) and Scott Wallsten (Progress and Freedom Foundation). Breakfast will be served.
Location: Lisagor Room, National Press Club, 529 14th
9:30 AM - 4:00 PM. Day two of a two day hearing of
the U.S.-China Economic and Security Review Commission. This hearing will
focus on the consequences of China's energy consumption. See,
notice in the Federal Register: May 23, 2007, Vol. 72, No. 99, at Page
29042. Location: Room 385, Russell Building, Capitol Hill.
9:30 AM - 4:30 PM. The Copyright
Office (CO) will hold a public roundtable regarding
U.S.C. § 115 and "the use of the statutory license to make and distribute digital
phonorecords, including for a limited period, and to make phonorecords that facilitate
notice in the Federal Register, May 30, 2007, Vol. 72, No. 103, at Pages
30039-30042. Location: Copyright Office Hearing Room, Library of Congress,
Room LM-408, 4th Floor, Madison Building, 101 Independence Ave., SE.
Deadline to submit initial comments to the Federal
Communications Commission (FCC) in response to its Notice of Proposed
Rulemaking (NPRM) regarding its collection of data on broadband deployment.
This NPRM is FCC 07-17 in WC Docket No. 07-38. See,
notice in the Federal Register, May 16, 2007, Vol. 72, No. 94, at Pages
Deadline to submit to the the Copyright
Office (CO) written or e-mail notifications of intent to testify at the CO's hearings
on July 23 through July 26 regarding the operation of, and continued necessity for, the
cable and satellite statutory licenses under the Copyright Act. See,
notice in the Federal Register, May 23, 2007, Vol. 72, No. 99, at Pages
|Monday, June 18
12:00 NOON. The Cato Institute will
host a panel discussion titled "Trade Promotion Authority, R.I.P.?".
The speakers will be former Rep. Cal Dooley (D-CA) and
Dan Griswold (Cato). Lunch will
be served. See, notice and
registration page. Location: Room B-339, Rayburn Building.
2:00 - 4:00 PM. The American
Enterprise Institute (AEI) will host a panel discussion titled "Is
Sarbanes-Oxley Impairing Corporate Risk-Taking?". The speakers will be
Leonce Bargeron and
Chad Zutter (all from the
University of Pittsburgh's Katz Graduate School of Business),
Allen Ferrell (Harvard Law School),
Kate Litvak (University
of Texas at Austin School of Law), and
notice. Location: AEI, 12th floor, 1150 17th St., NW.
5:30 PM. The
House Appropriations Committee
will meet to mark up the Commerce, Justice, Science FY 2008 appropriations
bill. Location: Room 2359, Rayburn Building.
EXTENDED TO JULY
Deadline to submit initial comments to the
Communications Commission (FCC) in response to its Notice of Proposed Rulemaking
(NPRM) regarding FCC regulation of exclusive contracts for the provision of video
services to multiple dwelling units (MDUs) and other real estate developments. The FCC
adopted this NPRM on March 22, 2007, and released the
[19 pages in PDF] on March 27. See, stories titled "FCC Adopts MDU Forced Access
NPRM" in TLJ Daily E-Mail Alert No. 1,556, March 26, 2007, and "FCC Releases
MDU NPRM" in TLJ Daily E-Mail Alert No. 1,557, March 27, 2007. See also,
notice in the Federal Register, April 18, 2007, Vol. 72, No. 74, at Pages
19448-19453. This NPRM is FCC 07-33 in Docket 07-51.
Deadline to submit initial comments to the
Federal Communications Commission (FCC) in response to
its request for comments updating its record on the Center for the Study of Commercialism's
(CSC) Petition for Reconsideration regarding stations that air home shopping programming
and their status. See,
notice in the Federal Register, May 17, 2007, Vol. 72, No. 95, at Pages
|Tuesday, June 19
9:00 AM - 12:30 PM. The U.S. Chamber
of Commerce (USCC) will host a workshop titled "Engaging Online in a
Presidential Election". This is the fourth of four workshops in a series titled
"Online Strategies for Grassroots Advocacy". See,
USCC, 1615 H St., NW.
10:00 AM - 12:00 NOON. The Department of State's (DOS)
Telecommunication Advisory Committee (ITAC) will meet regarding U.S. positions for a
meeting of the Organization of American States Inter American Telecommunication Commission
(CITEL) Permanent Consultative Committee II (Radiocommunication) which will prepare for
the International Telecommunication Union World Radiocommunication Conference (WRC07). See,
notice in the Federal Register, May 30, 2007, Vol. 72, No. 103, at Page
30045. Location: undisclosed.
TIME? The Department of Defense's (DOD) Defense Science Board Task
Force on Integrating Sensor-Collected Intelligence will hold another of its closed sessions
regarding intelligence, surveillance and reconnaissance systems. See,
notice in the Federal Register, April 2, 2007, Vol. 72, No. 62, at Page
15659. Location: Science Applications International Corporation, 4001 N.
Fairfax Drive, Arlington, VA.
|Wednesday, June 20
9:30 AM. The U.S. International
Trade Commission (USITC) will hold a hearing on the potential effects of a U.S.
Korea Free Trade Agreement. See,
notice in the Federal Register, May 23, 2007, Vol. 72, No. 99, at Page
28997. Location: USITC, 500 E St., SW.
8:30 - 11:00 AM. The Progress and
Freedom Foundation (PFF) will host an event to release a report titled
"Parental Controls and Online Child Protection: A Survey of Tools &
Methods". The speakers will be Adam
Thierer (author), Stephen Balkam (Family Online Safety
Institute), Jim Dyke (TV Watch), Simrin Mangat (MySpace), Michael McKeehan
(Verizon), Rob Stoddard (National Cable & Telecommunications Association),
Frank Torres (Microsoft), and Patricia Vance (Entertainment Software Rating
Location: Ballroom, National Press Club, 13th floor,
529 14th St., NW.
The Federal Communications Commission
(FCC) is scheduled to commence
Auction No. 72, the Phase II 220 MHz spectrum licenses auction.
TIME? The Department of Defense's (DOD) Defense Science Board
Task Force on Integrating Sensor-Collected Intelligence will hold another of its closed
sessions regarding intelligence, surveillance and reconnaissance systems. See,
notice in the Federal Register, April 2, 2007, Vol. 72, No. 62, at Page
15659. Location: Science Applications International Corporation, 4001 N.
Fairfax Drive, Arlington, VA.
6:30 - 8:30 PM. The Federal
Communications Bar Association's (FCBA) Young Lawyers Committee will host an event
titled "Summer Associate Happy Hour". For more information, contact Chris Fedeli
202-973-4274 or chrisfedeli at dwt dot com, or Tarah Grant at 703-610-6155 or tsgrant at
hhlaw dot com. Location: The Reef, 2446 18th Street, NW.
|Thursday, June 21
8:30 AM - 4:00 PM. The
American Antitrust Institute (AAI) will host a conference. At 9:35 AM, Hector
Ruiz, CEO of Advanced Micro Devices (AMD), will give a
speech titled "The Meaning of a Global Market for Monopoly". At
3:00 PM, Thomas Barnett,
Assistant Attorney General in charge of the Department of Justice's (DOJ)
Antitrust Division, will give a speech titled
"Report on the Joint Hearings on Single-Firm Conduct". See,
agenda. Location: National Press Club, 13th floor,
529 14th St., NW.
9:00 - 10:30 AM. The
Information Technology and Innovation Foundation (ITIF)
will host a panel discussion titled "The Rise of the New Mercantilists: Unfair
Trade Practices in the Innovation Economy". The speakers will be Rep. Artur Davis
(D-AL), Robert Atkinson (ITIF), and Julie Hedlund (ITIF). RSVP to Torey Liepa at tliepa
at itif dot org. Breakfast will be served. Location: Room 122, Cannon Building, Capitol
9:30 - 11:00 AM. The
Institute for Policy Innovation (IPI) will host an event titled "An Analysis
of EU Trade Policy". The speakers will include
Syed Kamall (Member of the European
Union Parliament), George Pieler (IPI), and Jens Laurson (Editor-in-Chief of the
International Affairs Forum). RSVP to Sonia Blumstein
at 205-620-2087 or soniab at ipi dot org. Location: 1st Amendment Lounge,
National Press Club, 13th floor, 529 14th
6:00 - 8:15 PM. The Federal Communications
Bar Association (FCBA) will host a continuing legal education (CLE) seminar titled
"Enforcement of U.S. Patent Laws Against International Activities: The Blackberry
Case and Beyond". The speakers will be Joshua Turner,
(Fish & Richardson), and
Anderson (Wiley Rein). The price to attend ranges from $50 to $125. See,
registration form [PDF].
Registrations are due by 5:00 PM on June 19. Location: Wiley Rein, 1776 K St., NW.
Day one of a seven day conference of the American Library
Association (ALA) will hold its annual convention. See,
Location: Washington Convention Center, 801
Mount Vernon Place, NW.
|Friday, June 22
12:00 NOON - 2:00 PM. The
Progress & Freedom Foundation (PFF) will host a
panel discussion titled "The Effect of Supreme Court Decisions on Patent Reform
Legislation". The panel will address eBay v. MercExchange, MedImmune
v. Genentech and KSR v. Teleflex. The speakers will include
John Duffy (George
Washington University Law School), Andy Culbert (Microsoft), Phillip Johnson (Johnson
& Johnson), John Squires (Goldman Sachs), and John Whealan (USPTO, currently working
for the Senate Judiciary Committee). Lunch will be served. See,
Location: Room B369, Rayburn Building, Capitol Hill.
5:00 PM. Deadline to submit to the Office
of the U.S. Trade Representative (OUSTR) petitions to modify the list of products
that are eligible for duty free treatment under the Generalized System of Preferences
(GSP) program. See,
notice in the Federal Register, May 21, 2007, Vol. 72, No. 97, at Pages
Deadline to submit comments to the
U.S. Patent and Trademark Office (USPTO)
on a wide range of patent issues. The USPTO seeks comments on various priority
of invention issues, the prior art effective date of a published application
or granted patent, the scope of prior art effect of published patent
applications, the one year grace period, geographical restrictions that limit
the definition of prior art, the public use or on sale bar, the experimental
use exception to prior art, prior user rights, assignee filing of
applications, and the 18 month publication of patent applications. See,
notice in the Federal Register, May 3, 2007, Vol. 72, No. 85, at Pages
24566-24569. The deadline to submit comments is June 22, 2007.
Deadline to submit applications for membership on the
Department of Homeland Security's (DHS)
Homeland Security Information Network Advisory Council (HSINAC). See,
notice in the Federal Register, May 8, 2007, Vol. 72, No. 88, at Page
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