Cab Old Magazines Can be Digitized Without the Author's Consent?

Should magazine publishers be allowed to republish their old works, even in a compilation, in digital form? The 11th Circuit said no; then it said yes. The defendant is the esteemed National Geographic Society. The plaintiff a poor photographer. Who has the rights to reproduce the photographer's work originally published in the National Geographic magazine?

Section 201(c) of the Copyright Act (dealing with ownership of contributions to collective works), which provides as follows:

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."

Well, that sounds like the deck is stacked in favor of the photographer, does it not? Section 201(c) was a big change in 1976: Prior to 1976, whenever freelance authors contributed to a collective work, they risked losing their copyright in their individual works absent a printed copyright notice in the author’s name. The presumption now is that the author retains the rights to copyright when his or her work in included in a collective work.

But, in the absence of the author expressly allowing future use, the publisher can still claim that the future work was a "later collective work in the same series." And that is what National Geographic asserted about its digital collection. What is the same and what is "new?"

The Supreme Court in the NY Times Photographer case, Tasini, held that the New York Times went beyond the Section 201(c) privilege by compiling the text of all its articles in a searchable online database. That database allowed users to view the individual articles out of context from the other material originally compiled and published as part of the daily newspapers. It ruled that the database constituted a new use rather than a republication or revision of the collective work and, hence, infringed the copyrights of the authors of the individual contributions.

What about the National Geographic digital use. National Geographic reproduced all of the contents of all of its issues, from the very first to the then most recent, including all of the articles and photographs, and even including the original ads, just as they appeared to readers in print form. So, "new" did not apply here. Decision: magazine.

Here is the distinction, provided in a footnote: "In Judge Anderson’s dissent, he gives the example of placing the March 2000 monthly 18 edition of National Geographic devoted entirely to the geography and natural beauty of Africa
into a larger book entitled “The Complete Intellectual History of Africa from 1900 to 2008” as an impermissible reproduction. Under this opinion’s reasoning, that reproduction and/or distribution would not survive the contextual analysis either and I would reach the same result."

http://www.intellectualpropertylawblog.com/greenberg%20v%20national%20geographic%20society.pdf