Indecisive Decision: An Examination of the Greenberg and Faulkner Cases and their Impact on Libraries

Sharon Whitfield is currently a student working towards her Master's Degree in Library Information Science at the University of Pittsburgh. After graduation, she hopes to become a digital librarian; therefore, she has concentrated on examining legal issues in information handling in the digital library context.

In order to create shelf space for new periodicals, Mary Ann, a serials librarian at the local university, has decided to digitize a twenty-year old collection of 60 library newsletters that contain student articles. Mary Ann digitizes the collection by scanning each page of the newsletter; reviews the scanned image for text distortion and creates an Adobe Acrobat .pdf file that contains the entirety of the original newsletters. After discussing the library newsletter digitization project with Mary Ann, the library's computer services department creates both a Graphical User Interface (GUI) for browsing and search engine software, which will aid library patrons to easily retrieve the newsletters and individual articles. Finally, the .pdf files, the GUI browser and search engine software are burned onto a CD-ROM, which will be stored within the serials department.

By digitizing the library newsletter collection, Mary Ann maximized the amount of space in the serials room, but did Mary Ann infringe on the student's copyright ownership by creating the CD-ROM without their permission. Currently, this question is unanswerable due to conflicting decisions made by the Eleventh Circuit Court in the case of Greenberg v. National Geographic and the Second Circuit Court in the case of Faulkner v. National Geographic. In this paper, we will examine the summary arguments and decisions of the courts and the impact that these court decisions may have on libraries that are looking to reformat their copyrighted material into digital media.

Greenberg v. National Geographic & Mindscape

In 1996, the National Geographic Society began to develop a collection of thirty CD-ROMS, which would contain every issue from 1888 to 1996 (Greenberg-11th, 32). To enable the audience to easily review articles within the CD-ROM set, National Geographic collaborated with a California based company, Mindscape, who would create an introduction and technology for browsing and searching. Their collaboration produced "The Complete National Geographic" CD-ROM set, which retailed for $100 dollars (Livingston, 1446). After the CD-ROM set was released in 1998, Jeffery and Idaz Greenberg sued National Geographic for copyright infringement claiming that the CD-ROM was a "new use of work", which violated §201(c) of the Copyright Law (Greenberg-11th, 1273). The district court determined, after hearing the petitioner's arguments, that the CD-ROM set was a "revision"; therefore, summary judgment was granted to National Geographic Society (Greenberg-Dist, 10).

On appeal, the Eleventh Circuit Court reversed and remanded the Greenburg case back to the district court. The Eleventh Circuit Court decided that "The Complete National Geographic" CD-ROM set did infringe on Greenburg's copyright ownership by violating §201(c) of the Copyright Law. According to the Eleventh Circuit Court, the collaboration between National Geographic and Mindscape, "created a new product ("an original work of authorship"), in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction envisioned in § 201(c) (Greenberg-11th, 1273)." In analyzing the Eleventh Circuit Court's discussion of the arguments, two key issues appeared to have weighed heavily on their decision: National Geographic's new copyright claim for "The Complete National Geographic" CD-ROM set and the addition of Mindscape's technology to the CD-ROM.

On July 14, 1998, the National Geographic Society was assigned the copyright registration number VA-931-760 for "The Complete National Geographic: 108 years of National Geographic magazine on CD-ROM: 30-CD digital library" (Complete National Geographic). Both publication and the creation dates are listed as 1997 (Complete National Geographic). "Pre-existing material: Pictorial" is listed in the "Previous Related Version" field of the copyright record (Complete National Geographic). In Section 5 of the copyright registration form, the claimant (National Geographic Society) marked the response, "No," to the question, "Has registration for this work or for an earlier version of this work, already been made in the Copyright Office" (Complete National Geographic). To the Eleventh Circuit Court, the answers provided by the Society are analogous to the Society admitting that the CD-ROM set was a compilation of three copyrightable components, which created an "original work" and not a revision (Greenberg-11th, 1275-1276).

Rather than considering if the entirety of the CD-ROM set infringed on the §201(c) of the Copyright Law, Eleventh Circuit Court chose to deconstruct "The Complete National Geographic" CD-ROM set into these three copyrightable components: the "Sequence," the "Program" and the "Replica" (Greenberg-11th, 1273). Mindscape, a collaborating company, created both the "Sequence" and the "Program" components of the CD-ROM set. The additions of Mindscape's components were a key issue in influencing the Court's decision.

Mindscape's "Sequence" is described as a photo montage of magazine covers that use "computer animation, [which] overlappingly [sic] fades into another cover image." Each CD-ROM in the set begins with the "Sequence," which lasts twenty-five seconds. Only ten magazine covers were selected for the beginning Sequence, one of which contained a photograph by Greenberg (Greenberg-11th Ct, 1267). The National Geographic argued that the use of the magazine images in the sequence were de minimis (meaning "unworthy of the law's attention") and fair use (Greenberg-11th Ct, 1275). Yet, the Eleventh Circuit Court rejected these arguments claiming that Congresses' concluding paragraph of §201(c) did not allow the publisher to "revise the contribution itself or include it in a new anthology ...or another collective work" (Greenberg-11th Ct, 1275). The judges decided that the animation and the display of the cover image in the montage created "a derivative work" that infringed Greenberg's "exclusive right under §106(2) to prepare derivative works based upon his copyrighted photograph" (Greenberg-11th Ct, 1275).

The "Program," allows CD-ROM users to enter keywords into a search engine and to view each page of the magazine using a flip technology that simulates a reader flipping a page. The Court decided that Mindscape's "Program" was itself copyrightable, which made the collaboration of the components "a new product" (Greenberg-11th Ct, 1275). Although National Geographic created the "Replica" component, the Court scarcely addressed whether the "Replica" component was not also an infringement of Copyright law nor did the Court address whether the CD-ROM set would have been a revision without the added technology. However, the "Replica" component was the heart of the CD-ROM set that consisted of all 1,200 scanned National Geographic issues (Greenberg-11th Ct, 1275).

Since Copyright law is a statutory law, the Eleventh Circuit Court based their decision on their interpretation of Congress' discussion of §201(c) of Copyright law and the written text of the 1976 and 1909 Copyright law. At the time of the decision, the Eleventh Circuit Court had nominal legal precedent to base their decision. However, the Eleventh Circuit Court was not the last court to render a decision on whether "The Complete National Geographic" CD-ROM set infringed the rights of the copyright owner. In 2004, another copyright infringement case was filed against the National Geographic Society. This time both the Circuit Court and their decision were different.

Faulkner v. National Geographic Society

In 2004, Faulkner petitioners relied upon the Eleventh Circuit Court's decision in Greenberg v. National Geographic to prevent National Geographic from litigating their copyright infringement lawsuit. Yet, the Second Circuit Court rejected the Faulkner petitioner's attempts to foreclose further judicial consideration. The Second Circuit Court believed that the Faulkner v. National Geographic appellate case was "one of substantial public importance to the development of Copyright law and its impact on the dissemination of knowledge" (Faulkner, 4 at 5-9). Furthermore, subsequent to the Eleventh Circuit Court's decision in Greenberg v. National Geographic, the Supreme Court upheld the Second Circuit Court's decision in The New York Times v. Tasini, a landmark lawsuit brought by members of the National Writers Union against The New York Times Company, Newsday Inc., Time Inc., Lexis/Nexis, and University Microfilms Inc. Therefore, although the facts of the Greenberg case are virtually the same as the Faulkner case, the Eleventh Circuit Court did not use the "Tasini analysis", which the Supreme Court determined a "collective work was a revision based on how the articles are presented to and perceptible by the user" (Faulkner, 17-19). For this reason, the Second Circuit Court believed that "the decision in New York Times v. Tasini represented an intervening (post-Greenburg) change of law," which constituted the review of whether "The Complete National Geographic" CD-ROM set was a revision or an original work (Faulkner, 20 at 18-21). Thus, with the rejection of the petitioners' foreclosure the Second Circuit Court rejected the decision of Greenberg v. National Geographic by the Eleventh Circuit Court.

In accordance with "Tasini analysis," the Second Circuit Court examined whether the petitioner's articles and photographs were presented in the "context of the original work" when viewed in "The Complete National Geographic" CD-ROM set (Faulkner, 20-21) . The Second Circuit Court determined that the National Geographic's methods of digitization and arrangement presented a user with an "electronic replica" of each page, each issue of the magazine (Faulkner, 22 at 9-10). The "replica" included the gutter, page numbers, all text, photographs, graphics, advertising, credits and attributions that were all visible in the written format (Katzmann, Raggi, & Winter, 21-32). Each page, each issue was in chronological arrangement, which the Court found lacked selection, coordination and arrangement aspects that would create an "original work of authorship" (Faulkner,14 at 22-23). Furthermore the Court, found that "but for the use of a computer screen and the power to move from one issue to another and find various items quickly" there were no unique differences between the written format and the digitized National Geographic (Faulkner, 27 at 20-22).

"Media Neutrality" was another key issue in Faulkner v. National Geographic (Tasini, 533 U.S at 502). During The New York Times v. Tasini case, the Supreme Court ruled, "Transfer of a work from one media to another generally does not alter its character for copyright purposes" (Tasini, 533 U.S at 502). Therefore, the National Geographic Society did not violate §201(c) of Copyright law when they transformed their written text into digital format. The Second Circuit Court, unlike the Eleventh Circuit Court in the Greenberg case, added that the collaboration between National Geographic Society and Mindscape technology had little consequence on whether "The Complete National Geographic" CD-ROM set violated copyright ownership. The Court found that Mindscape's technology was transparent to the user and aided in making the publication computer accessible.

In March 2005, the Second Circuit upheld the district court's ruling by dismissing the petitioner's claims of copyright infringement involving the "The Complete National Geographic" CD-ROM set. The Court's dismissal affirmed that written text is transferable into a computer accessible format under Copyright law. This decision by the Second Circuit Court was an antithesis of the Eleventh Circuit Court's decision four years earlier.

Impact of Court Cases for Libraries

With the increasing shortage of funding and space, both academic and public libraries are seeking alternatives to traditional paper materials. According to a survey conducted by the Institute of Museum and Libraries Services in 2002, thirty-four percent of academic libraries began digitization activities and nineteen percent expected to begin digitization the following year (Status of Technology and Digitization). However, the conflicting decisions from the Second Circuit Court and Eleventh Circuit Court could have a major impact on the furtherance of their digitization efforts and the "public availability of collective works" (Lutzker).

After both the Greenberg and Faulkner cases, the American Library Association, American Association of Law Libraries, the Medical Library Association and the Special Libraries Association issued an Amici Curae (meaning "friends of the court"). In the Amici Curae, the library associations cited their concerns over the Greenberg case as the "defacto law of the land and the publishing world" (Jaszi & Lutzker). Due to the decisions in the Greenberg case, publishers are less likely to distribute their works in digital format because of fear of an impending lawsuit from contributing or freelance authors. The Courts' differing decisions also create confusion of whether or not publisher's need to obtain new copyright or new permissions in order to make material available in digital format or online. Publisher's reservations to digitize increases accessibility limitations to obscure publications that libraries and library associations want to make available to the public, but may not be able to afford the publication in traditional, paper format.

Another concern addressed in the Amici Curae was whether libraries' efforts to invest in technologies for improving user access and long-term preservation of digital materials are a misuse of their dwindling economic resources. The Greenberg decision insinuates that yes, it is a waste. Any additional software or technology added to make browsing or searching of information easier may violate the rights of the copyright owner.

The question continues to remain whether libraries and publishers can provide computer accessible material to their publications without securing permission from contributing authors. The indecisiveness of the Courts is impeding our founding fathers desires "to promote the progress of science and useful arts" through the Copyright Law (Constitution of the United States of America, Article 1, Section 8).

In an effort to resolve the conflicting decisions of the Eleventh and Second Circuit Court, National Geographic filed a writ of certiorari (meaning "an appeal") to the Supreme Court. In December of 2005, the Supreme Court refused to hear the writ of certiorari; thus, leaving the standard that will apply to previously copyrighted material unanswered.

Bibliography

"Complete National Geographic." Search Records Results for TTL/Complete National Geographic. U.S. Copyright Office. 25 Jan. 2006. http://www.loc.gov/cgi-bin/formprocessor/copyright/locis.pl

Faulkner v. National Geographic Society, 294 F. Supp.2d 523 (SDNY 2003).

Greenberg v. National Geographic Society, 1998 U.S. Dist. LEXIS 18060 (S.D. Fla. 1998)

Greenberg v. National Geographic Society, 244 F.3d. (11th Cir. 2001).

NAA: Greenberg v. National Geographic Society, et. al. Greenberg v. National Geographic Society, et. al.. 01 Dec. 2001. Newspaper Association of America. 25 Jan. 2006. http://www.naa.org/Government-and-Legal/Legal-Affairs/Case-Summaries/Intellectual-Property-and-Copyright/Greenberg-v,-d-,-National-Geographic-Society-et,-d-,-al.aspx

Status of Technology and Digitization. 2002 Tech Reports. 2002. Institute of Museum and Libraries Services. 11 Feb. 2006.

The New York Times Co., Inc v. Tasini, 533 U.S. 483 (2001).

The Constitution of the United States of America. Article 1, Section 8.

Jaszi, Peter & Lutzker, Arnold. Brief Amici Curae of the ALA, ARL, AALL, and the MLA in support of Petitioners (National Geographic Society v. Greenberg). 04 Sept 2001. 12 Feb 2006.

Katzmann, Raggi, & Winter, . Faulkner v. National Geographic Enterprises. New York Law Journal (2005): 21-32.

Livingston, Jennifer. "Digital "Revision": Greenberg v. National Geographic Society." University of Cincinnati Law Review 2002: 1419-1455.

Lutzker, Arnold. Brief Amici Curae of the ALA, ARL, AALL, and the MLA in support of Petitioners (Faulkner v. National Geographic Society). 28 Jun 2006. 27 Jan 2006.