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 print publications.

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 opinion in 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, story titled "Supreme Court Grants Cert in NYT v. Tasini", Tech Law Journal, November 7, 2000.

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 magazine contents."

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.

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.

Relevant Statutes. 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 release. 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."

The House will meet at 9:00 AM.

The Senate will meet at 9:30 AM. It will resume consideration of HR 6 [LOC | WW], the "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 St., NW.

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 17 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 streaming". See, 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 27519-27535.

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 28998-29000.

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 Kenneth Lehn, Leonce Bargeron and Chad Zutter (all from the University of Pittsburgh's Katz Graduate School of Business), Charles Calomiris (AEI), Allen Ferrell (Harvard Law School), Kate Litvak (University of Texas at Austin School of Law), and Peter Wallison (AEI). See, 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 2. Deadline to submit initial comments to the Federal 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 text [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 27811-27813.

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, notice. Location: USCC, 1615 H St., NW.

10:00 AM - 12:00 NOON. The Department of State's (DOS) International 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.

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 Board). See, notice. 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.

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, notice and 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 Hill.

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 St. NW.

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, Karl Renner (Fish & Richardson), and Kevin 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, notice. Location: Washington Convention Center, 801 Mount Vernon Place, NW.

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, notice. 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 28527-28528.

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 26138.

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