Jerry Greenberg v. National Geographic Society

Jerry GREENBERG, Idaz Greenberg, Plaintiffs-Appellants,
v.
NATIONAL GEOGRAPHIC SOCIETY, a District of Columbia Corporation, National Geographic
Enterprises, Inc., a corporation, Mindscape, Inc., a California corporation, Defendants-Appellees.
No. 00-10510.
United States Court of Appeals,
Eleventh Circuit.
March 22, 2001.
Appeal from the United States District Court for the Southern District of Florida. (No. 97-03924-CV-JAL),
Joan A. Lenard, Judge.
Before ANDERSON, Chief Judge, and TJOFLAT and BIRCH, Circuit Judges.
BIRCH, Circuit Judge:
This appeal requires us, as a matter of first impression in this circuit, to construe the extent of the
privilege afforded to the owner of a copyright in a collective work to reproduce and distribute the individual
contributions to the collective work "as part of that particular collective work, any revision of that collective
work, and any later collective work in the same series" under 17 U.S.C. § 201(c).1 In this copyright
infringement case, the district court granted the defendants' motion for summary judgment, holding that the
allegedly infringing work was a revision of a prior collective work that fell within the defendants' privilege
under § 201(c). Because we find that the defendants' product is not merely a revision of the prior collective
work but instead constitutes a new collective work that lies beyond the scope of § 201(c), we REVERSE.
I. BACKGROUND
The National Geographic Society ("Society") purports to be the world's largest nonprofit scientific
and educational organization at approximately 9.5 million members, and is responsible for the publication
of National Geographic Magazine ("Magazine"). Through National Geographic Enterprises, a wholly owned,
for-profit subsidiary, the Society also produces television programs and computer software, along with other
educational products. In order to acquire photographs for the Magazine and its other publications, the Society
hires freelance photographers on an independent-contractor basis to complete specific assignments.
Jerry Greenberg is a photographer who completed four photographic assignments for the Society over
1
Hereafter, all references to statutory sections (" § ") will be to Title 17 of the United States Code,
unless indicated otherwise.
the course of 30 years. Photographs from the first three assignments were published in the January 1962,
February 1968, and May 1971 issues of the Magazine, respectively. The terms of Greenberg's employment
for these assignments were set out in a series of relatively informal letters. Greenberg received compensation
consisting of a daily fee, a fee based on the number of photographs published, and payment of expenses, and
in return the Society acquired all rights in any photograph taken on the jobs that was ultimately selected for
publication in the Magazine. In 1985, at Greenberg's request, the Society reassigned its copyrights in the
pictures from these three jobs back to Greenberg. Greenberg's fourth hire for the Society appeared in the July
1990 issue of the Magazine, but the agreement for this job was more detailed than its predecessors. The
principle terms of the fourth agreement were similar to those of the first three; however, in this agreement
it was explicitly provided that all rights that the Society acquired in the photographs from the job would be
returned to Greenberg 60 days after the pictures were published in the Magazine.
In 1996, the Society, in collaboration with Mindscape, Inc., began the development of a product
called "The Complete National Geographic" ("CNG"), which is a 30 CD-ROM library that collects every2
issue of the Magazine from 1888 to 1996 in digital format. There are three components of the CNG that are
relevant to this appeal: (1) the moving covers sequence ("Sequence"); (2) the digitally reproduced issues of
the Magazine themselves ("Replica"); and (3) the computer program that serves as the storage repository and
retrieval system for the images ("Program").
The Sequence is an animated clip that plays automatically when any disc from the CNG library is
activated. The clip begins with the image of an actual cover of a past issue of the Magazine. This image,
through the use of computer animation, overlappingly fades ("morphs") into the image of another cover,
pauses on that cover for approximately one second, and then morphs into another cover image, and so on,
until 10 different covers have been displayed. One of the cover images used in the moving covers sequence
is a picture of a diver that was taken by Greenberg in 1961. The entire sequence lasts for 25 seconds, and is
accompanied by music and sound effects.
The collected issues of the Magazine, which are, of course, the CNG's raison d'être, were converted
to digital format through a process of scanning each cover and page of each issue into a computer. What the
user of the CNG sees on his computer screen, therefore, is a reproduction of each page of the Magazine that
2
The Society publishes multiple regional and international editions of each issue of the Magazine.
These various editions differ from one another in the language in which they are written and the
advertisements that are printed. The CNG includes only one representative edition of each issue.
differs from the original only in the size and resolution of the photographs and text. Every cover, article,
advertisement, and photograph appears as it did in the original paper copy of the Magazine. The user can
print out the image of any page of the Magazine, but the CNG does not provide a means for the user to
separate the photographs from the text or otherwise to edit the pages in any way.
The Program, which was created by Mindscape, is the element of the software that enables the user
to select, view, and navigate through the digital "pages" of the Magazine Replica on the CD-ROM. In
creating the Program for the CNG, Mindscape incorporated two separate programs: the CD Author
Development System ("CDA"), which is a search engine created by Dataware Technologies, Inc.; and the
PicTools Development Kit ("PicTools"), which is a program for compressing and decompressing images that
was created by Pegasus Imaging Corp.3 The CNG package contains a "shrink-wrap" license agreement in
which "all rights [in the Program] not expressly granted are reserved by Mindscape or its suppliers." Without
the Program, the Replica could still be stored on a CD-ROM, but the individual "pages" of the Magazine
would not be efficiently accessible to the user of the CNG.
Prior to placing the CNG on the market, the Society dispatched a letter to each person who had
contributed to the Magazine. This letter informed the contributors about the CNG product and stated the
Society's position that it would not provide the contributors with any additional compensation for the digital
republication and use of their works. Greenberg contends that he responded to this notice through counsel
and objected to the Society's use of his photographs in the CNG, but he received no response from the
Society.
The Society sought registration for its claim of copyright for the CNG in 1998, but noted 1997 as the
year of its completion. On the registration form,4 the Society indicated that the "nature of authorship"
included photographs, text, and an "introductory audiovisual montage." The Society claimed that the work
3
Mindscape indicates that it has not registered a claim of copyright in the Program, which is
manifestly copyrightable. See §§ 101 (defining "computer program"), 102; Montgomery v. Noga, 168
F.3d 1282, 1288 (11th Cir.1999). However, copyright arises by operation of law upon fixation of an
original work of authorship in a tangible medium of expression, which has clearly occurred in the case of
the Program. See § 102; Montgomery, 168 F.3d at 1288. Moreover, Mindscape has represented to this
court that two component elements of the Program, the CDA and PicTools, each of which are separately
copyrightable computer programs, have been registered with the Copyright Office by Dataware
Technologies, Inc., and Pegasus Imaging Corp., respectively. Because it consists of at least two other
individually copyrighted works, the Program meets the definition of both a "compilation" and a
"collective work" under § 101 of the Act.
4
A copy of the registration form (application), which when approved by the Copyright Office became
the registration certificate, is attached hereto as Appendix A.
had not been registered before, but indicated that it was a derivative work, namely a "compilation of
pre-existing material primarily pictorial," to which a "brief introductory audiovisual montage" had been
added. No reference was made to, nor was there any disclosure of, the copyrightable Mindscape Program
or the two pre-existing, copyrightable sub-programs that it incorporates, all of which are also components of
the CNG. The box in which the CNG is packaged and each individual CD-ROM bear the mark "© 1997
National Geographic Society"—indicating the creation of a new work of authorship in 1997.
Greenberg initiated an infringement action against the Society, National Geographic Enterprises, and
Mindscape, alleging five counts of copyright infringement, two of which are relevant here: count "III"
addressed the Society's reuse of Greenberg's photographs in the CNG, generally, and count "V" specifically
addressed the use of his diver photograph in the Sequence. The Society, together with the two other
defendants, moved for summary judgment on counts III-V, arguing that it had a privilege under § 201(c) to
reproduce and distribute Greenberg's photographs in the CNG because it owned the copyright in the original
issues of the Magazine in which the photographs appeared.5 Greenberg filed a cross-motion for summary
judgment on count III. The district court, relying on the district court opinion in Tasini v. New York Times
Co., 972 F.Supp. 804 (S.D.N.Y.1997), rev'd 206 F.3d 161 (2d Cir.2000), cert. granted, --- U.S. ----, 121 S.Ct.
425, 148 L.Ed.2d 434 (2000) (No. 00-201), held that the CNG constituted a "revision" of the paper copies
of the Magazine that was within the Society's privilege under § 201(c), and accordingly granted summary
judgment for all of the defendants on counts III-V. The district court later dismissed counts I and II, which
did not relate to the CNG, at the parties' joint request. The Greenbergs appeal the district court's judgment
only as to counts III and V.
II. DISCUSSION
To evaluate the claims of infringement leveled by Greenberg against the defendants,6 we must
5
There is no evidence in the record that would support the theory that National Geographic
Enterprises or Mindscape, neither of which has a copyright interest in the original issues of the Magazine,
somehow are privy to the privilege in § 201(c) enjoyed by the Society.
6
In the Amended Complaint, Greenberg refers to Mindscape's and National Geographic Enterprises's
liability as "at least vicarious." We construe this as an allegation of contributory copyright infringement.
A contributory copyright infringer is "one who, with knowledge of the infringing activity, induces, causes
or materially contributes to the infringing conduct of another." Cable/Home Communication Corp. v.
Network Prods., Inc., 902 F.2d 829, 845 (11th Cir.1990) (citations omitted). Accordingly, there can be
no contributory infringement without a finding that there was direct copyright infringement by another
party. Id.Further, the CNG appears to be a "joint work," which is defined under § 101 as "a work
interpret and apply § 201(c) of the Act. That section constitutes the sole basis and defense of the Society's
use of Greenberg's copyrighted photographs. In all cases involving copyright law, we understand that any
interpretation and application of the statutory law must be consistent with the copyright clause of the United
States Constitution; specifically, the eighth clause of the eighth section of Article I. That clause is a
limitation, as well as a grant, of the copyright power.7 The copyright clause, consisting of twenty-four words
crafted by our founding fathers, is the Rosetta Stone for all statutory interpretation and analysis. Accordingly,
it is upon that predicate that we examine § 201(c) in the context of this case.8
The Society conceded that it has used Greenberg's photographs in a way that is inconsistent with his
exclusive rights as an author under § 106.9 However, the Society contends that it is privileged to make such
prepared by two or more authors with the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole." Here the two "authors," the Society and
Mindscape ("authors" under the legal fiction created in § 201(b)), clearly intended their
contributions of the Sequence, Replica, and Program to function and be presented as a unitary
whole. The CNG also fits the definition of a "collective work" under § 101; that is, "a work ... in
which a number of contributions, constituting separate and independent works in themselves, are
assembled into a collective whole." The concept of the "collective work" is included within the
term "compilation," which is defined in § 101 as "a work formed by the collection and
assembling of preexisting materials ... that are selected, coordinated, or arranged in such a way
that the resulting work as a whole constitutes an original work of authorship." Whether the CNG
is considered a "joint work" or a "collective work" makes no difference in our analysis because
under each definition, a work results that is copyrightable as an entity separate and distinct from
its constituent, pre-existing, separately copyrightable contributions.
7
See Paul J. Heald and Suzanna Sherry, "Implied Limits on the Legislative Power: the Intellectual
Property Clause as an Absolute Constraint on Congress," 2000 U. ILL. L.REV. 1119 (2000).
8
Appreciation of fundamental principles is required in all areas of the law, but is particularly
important in the copyright arena. As observed by Professor L. Ray Patterson's opening remarks in his
insightful article entitled "Understanding the Copyright Clause," 47 J. COPYRIGHT SOC'Y 365 (2000):
Probably few industries as large as the copyright industry have rested on a legal
foundation as slim as the twenty-four words of the copyright clause. And probably no
foundation of comparable importance has been so little understood and so often ignored.
This is all the more surprising because the components of the copyright
industry-information/learning/entertainment-are so important to a free society, and
because the history of the copyright clause is so well documented.
Id. at 365. The copyright clause provides: "The Congress shall have Power ... To promote the
Progress of Science ... by securing for limited Times to Authors ... the exclusive Right to their ...
Writings." U.S. CONST. art. I, § 8, cl. 8.
9
Section 106 reserves to the owner of a copyright the rights:
(1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare
derivative works based upon the copyrighted work; (3) to distribute copies or
phonorecords of the copyrighted work to the public by sale or other transfer of
ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic,
use of the photographs under § 201(c), and therefore does not violate such exclusive rights and thus is not
an infringer under § 501(a). Subpart "c" of § 201, entitled "Ownership of Copyright," provides:
(c) Contributions to Collective Works.—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.
In the context of this case, Greenberg is "the author of the contribution" (here each photograph is
a contribution) and the Society is "the owner of copyright in the collective work" (here the Magazine). Note
that the statute grants to the Society "only [a] privilege," not a right. Thus the statute's language contrasts the
contributor's "copyright" and "any rights under it" with the publisher's "privilege." This is an important
distinction that militates in favor of narrowly construing the publisher's privilege when balancing it against
the constitutionally-secured rights of the author/contributor.
The Society argues that its use of Greenberg's photographs constitutes a "revision" of the Magazine
["that collective work"], referring to the CNG as the compendium of over 1,200 independent back issues;
in copyright terms, a collective work of separate and distinct collective works, arranged in chronological
order.10 Assuming arguendo, but expressly not deciding, that 201(c)'s revision privilege embraces the entirety
of the Replica portion of the CNG (the 1,200 issues, as opposed to each separate issue of the Magazine), we
are unable to stretch the phrase "that particular collective work" to encompass the Sequence and Program
elements as well. In layman's terms, the instant product is in no sense a "revision." In this case we do not
need to consult dictionaries or colloquial meanings to understand what is permitted under § 201(c). Congress
in its legislative commentary spelled it out in the concluding paragraph of its discussion of § 201(c) (which
and choreographic works, pantomimes, and motion pictures and other audiovisual works,
to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic,
and choreographic works, pantomimes, and pictorial, graphic, or sculptural works,
including the individual images of a motion picture or other audiovisual work, to display
the copyrighted work publicly; and (6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital audio transmission.
10
It does not satisfy the definition of "compilation" since inclusion of all issues of a publication in
chronological order does not satisfy the minimum creativity necessary for the selection, coordination, or
arrangement that would result in an original work of authorship. See Warren Publ'g, Inc. v. Microdos
Data Corp., 115 F.3d 1509, 1518-19 (11th Cir.1997) (en banc) (holding that work incorporating "entire
relevant universe" did not exhibit sufficient creativity in selection to merit copyright protection as a
compilation).
is identical in both the Senate and House versions):11
The basic presumption of section 201(c) is fully consistent with present law and practice, and
represents a fair balancing of equities. At the same time, the last clause of the subsection, under
which the privilege of republishing the contribution under certain limited circumstances would be
presumed, is an essential counterpart of the basic presumption. Under the language of this clause a
publishing company could reprint a contribution from one issue in a later issue of its magazine, and
could reprint an article from a 1980 edition of an encyclopedia in a 1990 revision of it, the publisher
could not revise the contribution itself or include it in a new anthology or an entirely different
magazine or other collective work.
H.R.Rep. No. 94-1476, at 122-23 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5738 (emphasis added).
As discussed above, the CNG is an "other collective work" composed of the Sequence, the Replica,
and the Program. However, common-sense copyright analysis compels the conclusion that the Society, in
collaboration with Mindscape, has 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).12
This analysis is totally consistent with the conduct of the Society when it registered its claim of
copyright in the CNG (under the title "108 Years of National Geographic on CD-ROM"). Under section "5"
of the copyright registration form, in response to the question: "Has registration for this work, or for an
earlier version of this work, already been made in the Copyright Office?"; the Society replied, "No."
Accordingly, this was a new work. Registrations had already been made relative to individual issues of the
Magazine. Under section "6", subpart "a", the Society described the work (the CNG) as a "Compilation of
pre-existing material primarily pictorial." Under section "6", subpart "b", which requested, "Material added
to this work. Give a brief, general statement of the material that has been added to this work and in which
11
A reproduction of the entire discussion in the House and Senate Reports is set out in Appendix B.
12
The Society characterizes this case as one in which there has merely been a republication of a
preexisting work, without substantive change, in a new medium; specifically, digital format. As
discussed in the text, however, this case is both factually and legally different than a media
transformation. The Society analogizes the digitalization of the Magazine to the reproduction of the
Magazine on microfilm and microfiche. While it is true that both the digital reproductions and the
microfilm/microfiche reproductions require a mechanical device for viewing them, the critical difference,
from a copyright perspective, is that the computer, as opposed to the machines used for viewing
microfilm and microfiche, requires the interaction of a computer program in order to accomplish the
useful reproduction involved with the new medium. These computer programs are themselves the subject
matter of copyright, and may constitute original works of authorship, and thus present an additional
dimension in the copyright analysis. Because this case involves not only the incorporation of a new
computer program, but also the combination of the Sequence and the Replica, we need not decide in this
case whether the addition of only the Program would result in the creation of a new collective work.
copyright is claimed," the Society wrote "Brief introductory audiovisual montage." See Appendix A.13 Thus,
even the Society admitted that the registered work, the CNG, was a compilation. Recall that a collective work
is included in the definition of compilation and embraces those works wherein its separate components are
each themselves copyrightable-as are the Sequence, Replica, and Program (the "pre-existing materials"
referred to in part [only the Replica was disclosed] by the Society in section "6".). Accordingly, in the words
of the legislative report, "the publisher [the Society] could not ... include [the contribution (the photographs)
] in a new anthology ... or other collective work [the CNG]." Thus in creating a new work the Society
forfeited any privilege that it might14 have enjoyed with respect to only one component thereof, the Replica.
With respect to the Sequence and its unauthorized use of Greenberg's diver photograph, we find that
the Society has infringed upon the photographer's exclusive right under § 106(2) to prepare derivative works
based upon his copyrighted photograph. The Society has selected ten preexisting works, photographs
included in covers of ten issues of the Magazine, including Greenberg's, and transformed them into a moving
visual sequence that morphs one into the other over a span of approximately 25 seconds. Moreover, the
Society repositioned Greenberg's photograph from a horizontal presentation of the diver into a vertical
presentation of that diver. Manifestly, this Sequence, an animated, transforming selection and arrangement
of preexisting copyrighted photographs constitutes at once a compilation, collective work, and, with reference
13
As noted earlier, the Society failed to indicate the third, and critical, element of the new work, the
Program. While the storage and retrieval system may be "transparent" to the unsophisticated computer
user, it nevertheless is present and integral to the operation and presentation of the data and images
viewed and accessed by the user. Giving the Society the benefit of the doubt, it may not have
intentionally perpetrated a fraud on the Copyright Office.
14
We indicate "might " because a persuasive argument can be made that when the Replica portion of
the CNG was converted from text and picture images on a page to electronic, digital format, the statutory
definition of a "derivative work" was not satisfied. A "derivative work" is defined under § 101 as:
a work based upon one or more preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgment, condensation, or any other form in which a work may be
recast, transformed, or adapted. A work consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a whole, represent an original work of
authorship, is a "derivative work".
(Emphasis added). Note that in order to qualify as a derivative work, the resulting work
(including "revisions") after transformation must qualify as an "original work of authorship."
Thus, the mere electronic digital reproduction that represents the Replica may not qualify as a
derivative work, and thus not violate Greenberg's exclusive right to prepare derivative works
under § 106. See supra note 10. This derivative-works issue may be addressed by the Supreme
Court in Tasini v. New York Times Co., 972 F.Supp. 804 (S.D.N.Y.1997), rev'd 206 F.3d 161 (2d
Cir.2000), cert. granted, --- U.S. ----, 121 S.Ct. 425, 148 L.Ed.2d 434 (2000) (No. 00-201). But
here, as explained above, we have far more than a mere reproduction in another medium.
to the Greenberg photograph, a derivative work. See Warren Publ'g, 115 F.3d at 1515 n. 16.
The Society argues that its use of Greenberg's diver photograph was a fair use under § 107.15 Guided
by the principles explained in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d
500 (1994),16 we find that the Society has neither a fair use defense or right. See Bateman v. Mnemonics, Inc.,
79 F.3d 1532, 1542 n. 22 (11th Cir.1996); David Nimmer, "An Odyssey through Copyright's Vicarious
Defenses," 73 N.Y.U. L. REV. 162, 191 (1998). The use of the diver photograph far transcended a mere
reprinting or borrowing of the work. As explained above, it became an integral part of a larger, new
collective work. The use to which the diver photograph was put was clearly a transformative use. The
Sequence reflects the transformation of the photograph as it is faded into and out of the preceding and
following photographs (after having turned the horizontal diver onto a vertical axis). The Sequence also
integrates the visual presentation with an audio presentation consisting of copyrightable music. The resultant
moving and morphing visual creation transcends a use that is fair within the context of § 107. Moreover,
while the CNG is a product that may serve educational purposes, it is marketed to the public at book stores,
specialty stores, and over the Internet. The Society is a non-profit organization, but its subsidiary National
Geographic Enterprises, which markets and distributes the CNG, is not; the sale of the CNG is clearly for
profit. Finally, the inclusion of Greenberg's diver photograph in the Sequence has effectively diminished,
if not extinguished, any opportunity Greenberg might have had to license the photograph to other potential
15
Among the factors to be considered in determining whether a use of a copyrighted work is a "fair
use" are:
(1) the purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work
as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
17 U.S.C. § 107.
16
In Campbell, the Supreme Court indicated that the statutory factors in § 107 should not "be treated
in isolation, one from another. All are to be explored, and the results weighed together, in light of the
purposes of copyright." 510 U.S. at 578, 114 S.Ct. at 1170-71.
users.17
Alternatively, the Society contends that its use of Greenberg's diver photograph, which appeared on
the cover of the January 1962 issue of the Magazine, constitutes a de minimis use and thus is not actionable.
We find no merit in that argument in the context of this derivative and collective work, the Sequence.
In assessing a de minimis defense, we must examine both the quality and quantity of the use.18
Greenberg's photograph is one of ten selected and arranged by the Society and constitutes one-tenth of the
entire Sequence; a pro-rata share. Thus, when comparing the entire work with the contribution at issue, it
clearly represents a significant portion of the new work. This is particularly accentuated in a qualitative way
when we consider that only ten covers from a universe of some 1200 covers of the Magazine, embracing 108
years of publication, were selected for this composition. Moreover, the instruction materials that accompany
the CD-ROM discs inside the CNG product box refer to the Sequence as "The Complete National Geographic
icon" (emphasis added). [R1-20-Ex.A]
Each and every time a user of the CNG views any of the 30 discs, the user views the Sequence-the
projection of the Sequence is automatic without any prompting from the user. Thus, the use of the Sequence
in the context of the entire CNG is not a de minimis use that fails to reach the threshold of actionable
copyright infringement. The two cases principally relied upon by the Society, Ringgold v. Black Entm't
Television, Inc., 126 F.3d 70 (2d Cir.1997), and Amsinck v. Columbia Pictures Indus., Inc., 862 F.Supp. 1044(S.D.N.Y.1994), are not to the contrary. The "iconic" display at the beginning of each disc in the CNG
product argues against the suggestion that the use of the Sequence in the CNG or the use of the Greenberg
diver photograph in the Sequence is inconsequential. Accordingly, because we find the unauthorized use of
the subject photograph to be both qualitatively and quantitatively significant, we reject the de minimis defense
advanced by the Society and its putative co-infringers.
III. CONCLUSION
We conclude that the unauthorized use of the Greenberg photographs in the CNG compiled and
17
The inclusion by the Society of Greenberg's photograph in a newly copyrighted work, the
Sequence, clearly indicates that the Society claims certain copyright rights in the photograph, with which
potential licensees or assignees of the photograph would have to be concerned.
18
See Horgan v. Macmillan, Inc., 789 F.2d 157, 162 (2d Cir.1986) ("Even a small amount of the
original, if it is qualitatively significant, may be sufficient to be an infringement."); Metro-Goldwyn-
Mayer, Inc. v. American Honda Motor Co., 900 F.Supp. 1287, 1300 (C.D.Cal.1995) ("[T]he court must
look to the quantitative and qualitative extent of the copying involved.").
authored by the Society constitutes copyright infringement that is not excused by the privilege afforded the
Society under § 201(c). We also find that the unauthorized use of Greenberg's diver photograph in the
derivative and collective work, the Sequence, compiled by the Society, constitutes copyright infringement,
and that the proffered de minimis use defense is without merit. Upon remand, the court below is directed to
enter judgment on these copyright claims in favor of Greenberg. Counsel for the appellant should submit its
documented claims for attorneys fees relative to this appeal to the district court for review and approval. We
find the appellant to be the prevailing party on this appeal and, therefore, is entitled to an award of costs and
attorneys fees. Upon remand, the district court should ascertain the amount of damages and attorneys fees
that are due as well as any injunctive relief that may be appropriate. In assessing the appropriateness of
injunctive relief, we urge the court to consider alternatives, such as mandatory license fees, in lieu of
foreclosing the public's computer-aided access to this educational and entertaining work.
REVERSED and REMANDED.
CA(01)1292-1,SIZE-1 PAGE,TYPE-DPI
CA(01)1292-2,SIZE-1 PAGE,TYPE-DPI
APPENDIX B
EXCERPT FROM H.R. 94-1476 (1976)
reprinted in 1976 U.S.C.C.A.N. 5659
Contributions to collective works
Subsection (c) of section 201 deals with the troublesome problem of ownership of copyright in
contributions to collective works, and the relationship between copyright ownership in a contribution and in
the collective work in which it appears. The first sentence establishes the basic principle that copyright in
the individual contribution and copyright in the collective work as a whole are separate and distinct, and that
the author of the contribution is, as in every other case, the first owner of copyright in it. Under the
definitions in section 101, a "collective work" is a species of "compilation" and, by its nature, must involve
the selection, assembly, and arrangement of "a number of contributions." Examples of "collective works"
would ordinarily include periodical issues, anthologies, symposia, and collections of the discrete writings of
the same authors, but not cases, such as a composition consisting of words and music, a work published with
illustrations or front matter, or three one-act plays, where relatively few separate elements have been brought
together. Unlike the contents of other types of "compilations," each of the contributions incorporated in a
"collective work" must itself constitute a "separate and independent" work, therefore ruling out compilations
of information or other uncopyrightable material and works published with editorial revisions or annotations.
Moreover, as noted above, there is a basic distinction between a "joint work," where the separate elements
merge into a unified whole, and a "collective work," where they remain unintegrated and disparate.
APPENDIX—Continued
The bill does nothing to change the rights of the owner of copyright in a collective work under the
present law. These exclusive rights extend to the elements of compilation and editing that went into the
collective work as a whole, as well as the contributions that were written for hire by employees of the owner
of the collective work, and those copyrighted contributions that have been transferred in writing to the owner
by their authors. However, one of the most significant aims of the bill is to clarify and improve the present
confused and frequently unfair legal situation with respect to rights in contributions.
The second sentence of section 201(c), in conjunction with the provisions of section 404 dealing with
copyright notice, will preserve the author's copyright in a contribution even if the contribution does not bear
a separate notice in the author's name, and without requiring any unqualified transfer of rights to the owner
of the collective work. This is coupled with a presumption that, unless there has been an express transfer of
more, the owner of the collective work acquires "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."
The basic presumption of section 201(c) is fully consistent with present law and practice, and
represents a fair balancing of equities. At the same time, the last clause of the subsection, under which the
privilege of republishing the contribution under certain limited circumstances would be presumed, is an
essential counterpart of the basic presumption. Under the language of this clause a publishing company could
reprint a contribution from one issue in a later issue of its magazine, and could reprint an article from a 1980
edition of an encyclopedia in a 1990
APPENDIX—Continued
revision of it; the publisher could not revise the contribution publisher could not revise the
contribution itself or include it in a new
APPENDIX—Continued
anthology or an entirely different itself or include it in a new anthology or an entirely different magazine or
other collective work.