Home > Commerce > Legal Resources > Legal Articles > This article

Faulkner Court Rules Against Photographers

Tasini decision changed the ground rules

The U.S. Court of Appeals for the Second Circuit has now ruled against a group of photographers who had sued National Geographic and some related entities for copyright infringement. The Court affirmed the earlier decision of the U.S. District Court for the Southern District of New York. Many of the photographers are, or were, ASMP members. ASMP was the lead amicus curiae in a brief that we had written in support of the photographers and in which we were joined by most of the other photographers’ trade groups.

Background. The suit was based on the fact that, in 1997, the National Geographic Society rolled out a CD-ROM collection of back issues called The Complete National Geographic. To make the CD, National Geographic scanned its back issues two pages at a time, complete with text, photos, ads and even the page numbers. It added a text-search feature and an introductory animation, but otherwise the material on the CD was a literal transfer of content from print to disk. Because National Geographic did not seek permission or pay any additional fees for this use of their photos, several of the photographers whose images appeared in the CD filed copyright infringement suits.

The basis of the photographers’ claim was that the uses they had licensed were intended to be limited to print media and that the conversions to digital media were infringements. The publisher argued that §201(c) of the Copyright Act gave it the right to convert print publications into digital media without additional permissions from the contributors, except where specific agreements with certain contributors said otherwise. The agreements between the photographers and National Geographic had been written at a time when digital rights were not specifically addressed.

Jerry Greenberg’s suit, filed in Florida, was the first to be tried. In that case, the U.S. Court of Appeals for the Eleventh Circuit ruled that Geographic had violated Jerry’s copyrights. Ordinarily, that would have set a strong precedent for any later case in which the facts of the matter, the legal issues in question, and at least one of the parties (here, National Geographic) were essentially the same. Usually, the legal system does not allow someone to keep relitigating the same subject matter over and over.

Meanwhile up north, photographers Douglas Faulkner, Fred Ward, David Hiser, Louis Psihoyos and others were pursuing their own suits in the U.S. District Court for the Southern District of New York. All of the New York cases were consolidated so that they would be tried together. The facts of the New York and Florida cases were extremely similar. It was, therefore, surprising when the New York District Court went the opposite way from the Court of Appeals (a higher court) in Florida and ruled in favor of Geographic in December, 2003. Faulkner and the others appealed, and ASMP filed an amicus curiae brief on their behalf.

NY decision upheld. The U.S. Court of Appeals for the Second Circuit has now ruled that, despite the similarity to the Greenberg case, the New York trial court was correct: National Geographic did not violate the photographers’ copyrights, and the federal district court in New York was not bound by the decision of the federal appellate court in Florida. The reason, it said, is that although the facts in the two cases were substantially the same, the law had changed between the Florida and New York decisions. Specifically, during that time, the Supreme Court decided Tasini et al. v. New York Times Co et al..

The reasoning. In all these cases, a key issue is whether the electronic version is merely a revision of the earlier publication or was something else. If it were a revision, no payments to the photographers would be required. In Greenberg, the Eleventh Circuit held that, because the CD contained independently copyrightable elements (namely, the animation and searchable index) that were not present in the printed work, it was actually a new work and not a revision.

But when the Second Circuit judges looked at the Faulkner case, they decided that the animation and index were not critical factors. Rather, they said that in Tasini, the Supreme Court had focused on whether the underlying works were presented to and perceived by the user in the same context as the original works. Therefore, the fact that the magazine pages were shown in their original form (page folds, gutters and all) must be the deciding element.

What now? The photographers in the Faulkner cases can ask the U.S. Supreme Court to hear an appeal, although the odds of the Supreme Court hearing any particular case are extremely small. When two federal appeals courts reach conflicting decisions, the odds become a bit better; however, it is still not likely that the Supreme Court will accept the appeal. And, as of this writing, we do not know whether the Faulkner team will take the step of asking the Supreme Court to hear an appeal. We will report on any developments as they occur.

Effects of the decision. This decision affects primarily older publications and copyright license agreements, rather than recent or future ones. For a number of years, photographers and publishers have addressed the digital rights question in their paperwork, rather than leaving the matter to whatever the law might provide. No matter what the final outcome of these cases might be, the Faulkner ruling is a sharp reminder that you should include a discussion of electronic rights when you negotiate with a prospective client.

 

Want more details? Here is the full text of the Second Circuit’s ruling.

top