[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT FILED
________________________ U.S. COURT OF APPEALS
ELEVENTH CIRCUIT
No. 05-16964 JUNE 13, 2007
________________________ THOMAS K. KAHN
CLERK
D.C. Docket No. 97-03924-CV-AMS
JERRY GREENBERG,
Plaintiff-Appellee,
versus
NATIONAL GEOGRAPHIC SOCIETY,
a District of Columbia corporation,
NATIONAL GEOGRAPHIC ENTERPRISES, INC.,
a corporation, MINDSCAPE, INC.,
a California corporation,
Defendants-Appellants.
________________________
Appeal from the United States District Court
for the Southern District of Florida
_________________________
(June 13, 2007)
Before BARKETT, KRAVITCH, Circuit Judges, and TRAGER,* District Judge.
*
Honorable David G. Trager, United States District Judge for the Eastern District of New
York sitting by designation.
TRAGER, District Judge:
This case presents the question of whether § 201(c) of the Copyright Act1
accords a magazine publisher a privilege to produce a digital compilation that
contains exact images of its past magazine issues. This case comes before this
Court for a second time and requires a determination whether an intervening
Supreme Court case, New York Times Co. v. Tasini, 533 U.S. 483 (2001),
abrogates an earlier decision in this case, Greenberg v. Nat'l Geographic Soc'y,
244 F.3d 1267 (11th Cir. 2001) ("Greenberg I"), such that we are bound to
overrule Greenberg I, which held that the digital compilation was not privileged.
I. PROCEDURAL HISTORY
National Geographic Society ("the Society"), National Geographic
Enterprises, Inc. ("NGE") and Mindscape, Inc. ("Mindscape") (collectively,
"National Geographic" or "defendants") appeal from a final order and judgment of
1
17 U.S.C. § 201(c) was added to the copyright statute as part of the 1976 amendments to
the 1909 Act, and 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.
2
the District Court for the Southern District of Florida entering judgment as a
matter of law against them on the issue of liability and following a jury trial solely
on the issues of damages and willfulness. Jerry Greenberg ("Greenberg") and his
wife Idaz Greenberg filed a complaint and amended complaint alleging that
defendants infringed Greenberg's copyrights in photographs that originally ran in
several issues of National Geographic magazine when defendants released "The
Complete National Geographic" ("CNG"), a thirty-disc CD-ROM set that
reproduces each monthly issue of National Geographic magazine from its first
issue in 1888 through the late twentieth century. Defendants filed a motion to
dismiss2 on the ground that the Society 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. That decision was reversed by this Court in Greenberg I.
Twenty days after entry of this Court's mandate in Greenberg I, defendants
filed answers, raising affirmative defenses for the first time. Pursuant to its
understanding of this Court's mandate, the district court entered judgment for
plaintiffs and, on motion by plaintiffs, struck defendants' answers. The district
court referred the issues of damages and willfulness to a magistrate judge, who
2
The complaint alleged five counts, three of which related to the CNG. Defendants filed
an answer to the non-CNG-related counts, which were subsequently dismissed with prejudice on
Dec. 28, 1999.
3
conducted a jury trial. The jury returned a verdict of willfulness and awarded
plaintiff the maximum statutory damages for willful copyright infringement:
$400,000, or $100,000 for each occurrence.3
Three months after Greenberg I was decided, the Supreme Court decided
Tasini, which elucidated a test for the application of the § 201(c) privilege.
Subsequently, the Second Circuit, deciding a case brought by other photographers
and authors whose works were included in the CNG, held that the CNG was
privileged under § 201(c) and found that Greenberg I was "contrary to" the
Supreme Court's subsequent decision in Tasini. Faulkner v. Nat'l Geographic
Enters. Inc., 409 F.3d 26 (2d Cir.), cert. denied, ___ U.S. ___, 126 S.Ct. 833
(2005).
II. BACKGROUND
Greenberg is a freelance photographer whose photographs were published
in the January 1962, February 1968, May 1971 and July 1990 issues of National
Geographic magazine. In each instance, after their initial publication in the
magazine, Greenberg regained ownership of the copyrights in the photographs he
had originally assigned to National Geographic. For decades, the Society has
3
The maximum statutory damage award for willful infringement has since increased to
$150,000 for each work that is infringed. 17 U.S.C. § 504(c).
4
reproduced back issues of the magazine in bound volumes, microfiche and
microfilm. In 1997, National Geographic produced the CNG, a thirty-disc CD-
ROM set containing each monthly issue of the magazine for the 108 years from
1888 through 1996 – a collection of some 1200 issues of the magazine. The CNG
is an image-based reproduction of the magazine; every page of every issue appears
exactly as it did in the original paper version. The CNG does not provide a means
for the user to separate the photographs from the text or to otherwise edit the pages
in any way.
The CNG also contains a computer program, created by Mindscape, which
compresses and decompresses the images and allows the user to search an
electronic index. The CNG further contains an introductory sequence that begins
when the user inserts the disc into a drive. This sequence starts with a Kodak
advertisement, which is followed by a moving display of the Society's logo and
theme song and then 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.
The Society registered its copyright of the CNG in 1998. On the
registration form, the Society claimed that the work had not been registered
before, but indicated that it was a "compilation of pre-existing material primarily
5
pictorial," to which a "brief introductory audiovisual montage" had been added.
Greenberg I, 244 F.3d at 1270.
Greenberg filed suit in December 1997, alleging, inter alia, that the CNG
infringed his copyrights in his individual photographs. Before answering,
defendants moved to dismiss those claims, or, in the alternative, for summary
judgment. The district court, relying on the reasoning in the district court opinion
in Tasini v. New York Times Co., 972 F. Supp. 804 (S.D.N.Y. 1997), granted
summary judgment in defendants' favor on the copyright claims. The district
court noted that § 201(c) grants the publisher of a collective work a copyright on
the collective work as a whole, while the author of an individual contribution to a
collective work receives a copyright in that individual contribution. Because the
CNG reproduced the entire collective work as a whole, the district court held that
the CNG was privileged under § 201(c) and that defendants did not infringe
Greenberg's copyrights in the individual photographs.
On March 11, 2001, this Court reversed. Greenberg I, 244 F.3d 1267.
Greenberg I separately analyzed what it considered the three components of the
CNG: the introductory sequence ("Sequence"), the digitally reproduced issues of
the magazine themselves ("Replica"), and the computer program ("Program"). Id.
at 1269. This Court assumed, without deciding, that the Replica was privileged
6
under § 201(c), but refused to apply the privilege to the Program or the Sequence,
which it characterized as separately copyrightable elements. Id. at 1272-73.
Taking all three components together, this Court held that the CNG is a new
product "in a new medium, for a new market that far transcends any privilege of
revision or other mere reproduction envisioned in § 201(c)." Id. at 1273. The
Court rejected National Geographic's defense that use of the 1962 photograph in
the Sequence was a fair use or de minimus. Id. at 1274-75. In its conclusion, the
Court remanded the case, and stated that "[u]pon remand, the court below is
directed to enter judgment on these copyright claims in favor of Greenberg." The
Court further directed that, "[u]pon 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."
Defendants moved for rehearing, noting that there was no basis for this
Court to direct the entry of judgment in Greenberg's favor on liability, as none of
National Geographic's defenses other than § 201(c) had been adjudicated. While
that petition was pending, this Court, sua sponte, issued a corrected opinion
deleting the sentence directing the district court to enter judgment on the copyright
claims in Greenberg's favor and amending the direction to assess damages and
attorneys' fees to read: "Upon remand, the district court should ascertain the
7
amount of damages and attorneys fees that are, if any, due as well as any
injunctive relief that may be appropriate." Greenberg I, 244 F.3d at 1275-76. This
Court subsequently denied rehearing. Defendants then filed a petition for a writ of
certiorari by the Supreme Court, which was denied. Nat'l Geographic Soc'y v.
Greenberg, 534 U.S. 951 (2001).
III. DISCUSSION
On June 25, 2001, after this Court's decision in Greenberg I, the Supreme
Court handed down its decision in Tasini. Tasini involved the use of individual
freelance contributions in electronic databases that removed the individual
contributions from the context of the original collective work. Tasini, 533 U.S. at
487. The Tasini court held that § 201(c) did not apply there because the works
had been removed from their original context. Id. at 488.
In particular, the Supreme Court focused on how the articles were
"presented to, and perceptible by, the user of the [d]atabases." Id. at 499. Finding
that the databases presented the articles "clear of the context provided either by the
original periodical editions or by any revision of those editions," the Supreme
Court concluded that it could not "see how the [d]atabase perceptibly reproduces
and distributes the article 'as part of' either the original edition or a 'revision' of
that edition." Id. at 499-500.
8
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). Id. at 501-02. The Supreme
Court noted that in the case of microforms, "articles appear . . ., writ very small, in
precisely the position in which the articles appeared in the newspaper." Id. at 501.
The Supreme Court further observed that it is "[t]rue [that] the microfilm roll
contains multiple editions, and the microfilm user can adjust the machine lens to
focus only on the article, to the exclusion of surrounding material. Nonetheless,
the user first encounters the article in context." Id. at 501. The Supreme Court
affirmed that "transfer of a work between media does not alter the character of that
work for copyright purposes," a concept known as "media neutrality." Id. at 502.
Subsequent to Tasini, on March 4, 2005, the Second Circuit affirmed in
relevant part a summary judgment entered by the District Court for the Southern
District of New York in favor of the Society in a copyright action in which the
plaintiffs, like Greenberg, were freelance photographers and authors whose
photographs and/or written works originally appeared in various issues of National
9
Geographic Magazine.4 Faulkner, 409 F.3d 26. The Faulkner plaintiffs sued for
copyright infringement following republication of their work in the CNG. Of the
six cases that were filed nationwide concerning the CNG, only Greenberg was not
filed in, or transferred to, the Southern District of New York. Faulkner, 409 F.3d
at 32-33. The district court in Faulkner refused to apply the doctrine of collateral
estoppel to give preclusive effect to Greenberg I and found the CNG to be a
privileged revision under § 201(c). Id. at 30. The Court of Appeals for the
Second Circuit agreed with the district court, holding that the Tasini decision
"represented an intervening (post-Greenberg I) change in law precluding the
application of collateral estoppel, and [that] the CNG is a revision for Section
201(c) purposes." Id.
Although Tasini was decided on different facts from Faulkner and
Greenberg, the Faulkner court found it telling that the Supreme Court had given
"tacit approval to microfilm and microfiche as permissible Section 201(c)
revisions, by contrasting that method of reproduction with the databases," at issue
in Tasini, which allowed a user to retrieve an article in isolation, removed from its
original context. Faulkner, 409 F.3d at 35. The Faulkner court distinguished the
4
Unlike Greenberg, none of the Faulkner plaintiffs had works that were used in the
Sequence.
10
analysis in Greenberg I, which had focused on whether the three components
identified as comprising the CNG - the Sequence, the Replica and the Program -
were themselves copyrightable. Id. at 36. The Faulkner court described
Greenberg I as holding that "if a subsequent work contains independently
copyrightable elements not present in the original collective work, it cannot be a
revision privileged by Section 201(c)." Id. at 37. In contrast, "the Supreme Court
held in Tasini that the critical analysis focused on whether the underlying works
were presented by the particular database in the context of the original works....
[I]t also strongly implied, by contrasting the database to microfilm, that microfilm
would constitute a privileged revision." Id. The Faulkner court concluded:
In our view, the Tasini approach so substantially departs from the
Greenberg [I] analysis that it represents an intervening change in
law rendering application of collateral estoppel inappropriate.
Id. On the merits, the Faulkner court held that, "because the original context of
the [m]agazines is omnipresent in the CNG and because it is a new version of the
[m]agazine, the CNG is a privileged revision." Id. at 38. The Faulkner court
additionally held that the Sequence was a revision that did not "substantially alter
the original context," and, therefore, did not affect the CNG's status as a privileged
revision. Id.
11
Under the prior panel precedent rule, a panel of this Court is bound to
follow an earlier panel decision addressing the same issue of law unless it has
been overruled by this Court sitting en banc or by the Supreme Court. See
Glazner v. Glazner, 347 F.3d 1212, 1214 (11th Cir. 2003) (citing Saxton v. ACF
Indus., Inc., 254 F.3d 959, 960 n.1 (11th Cir. 2001) (en banc)); Lufkin v.
McCallum, 956 F.2d 1104, 1107 (11th Cir. 1992) ("A panel of this Court may
decline to follow a decision of a prior panel if such action is necessary in order to
give full effect to an intervening decision of the Supreme Court of the United
States."). The exception to the prior panel precedent rule is clear-cut when a
subsequent Supreme Court case expressly overrules a prior panel decision, and it
is no less applicable "when the rationale the Supreme Court uses in an intervening
case directly contradicts the analysis this Court has used in a related area, and
establishes that this Court's current rule is wrong." Johnson v. Kmart Corp., 273
F.3d 1035, 1063 (11th Cir. 2001) (Barkett, J., concurring) (emphasis in original).
Tasini creates a new, post-Greenberg I framework for analyzing the § 201(c)
privilege. 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.
12
Similarly, the Program is transparent to the viewer and does not alter the original
context of the magazine contents. See Tasini, 533 U.S. at 499 ("In determining
whether the Articles have been reproduced and distributed 'as part of' a 'revision'
of the collective works in issue, we focus on the Articles as presented to, and
perceptible by, the user of the Databases.").
Thus, the two remaining issues center on the Sequence. First, does the
addition of the Sequence so alter the Replica that the CNG as a whole is no longer
a privileged revision of the original magazines? And second, is the Sequence
itself privileged under § 201(c)? As to the first question, we agree with the
Second Circuit and hold that the addition of the Sequence does not extinguish the
privilege that attaches to the Replica. The addition of the Sequence to the Replica
portion of the CNG amounts to 25 seconds of "new" material that has been
appended to some 1200 intact issues of the magazine. For guidance in
determining whether this added material destroys the privilege, we turn to the
legislative history of § 201(c). The House Report gives the following
clarification:
[T]he 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
13
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 122-123 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5738. It is clear from the encyclopedia analogy that the addition of new material
to a collective work will not, by itself, take the revised collective work outside the
privilege, as a revision of an encyclopedia would almost by definition include
entries on new topics. The question is whether the new material so alters the
collective work as to destroy its original context.
The addition of the Sequence to the Replica presents the inverse of an
example mentioned in Tasini, when it noted:
The Database no more constitutes a "revision" of each constituent
edition than a 400-page novel quoting a sonnet in passing would
represent a "revision" of that poem.
Tasini, 533 U.S. at 500. Just as the addition of 400 pages of prose to a sonnet does
not constitute a "revision" of the sonnet, the addition of a preface to a 400-page
anthology would not transform the book into a different collective work. So it is
here. The Sequence is nothing more than a brief visual introduction to the
Replica, which acts as a virtual cover for the collection of magazines. Just as a
new cover on an encyclopedia set would not change the context of the entries in
14
the encyclopedia, the Sequence in no way alters the context in which the original
photographs (as well as the articles and advertisements) were presented.
As to the second question, National Geographic does not contend that the
Sequence itself comes within the ambit of the § 201(c) privilege.5 It concedes that
Greenberg's 1962 cover photograph was used out of context in the introductory
montage6 and notes that Greenberg I's rejection of its de minimus and fair use
defenses remains binding. Accordingly, we follow Greenberg I on this point and
hold that the Sequence is not privileged under § 201(c). As discussed below, it
does not necessarily follow, however, that defendants are liable for infringement
of the 1962 cover photograph.
National Geographic also argues that the district court erred by precluding it
from ever raising, in any court, any other defenses to copyright liability. The
district court granted plaintiff's motion to strike defendants' answers: (1) because it
understood this Court's mandate in Greenberg I to not "permit reopening of the
5
The Faulkner district court did not reach this question, as the Sequence did not use any
of the Faulkner plaintiffs' contributions. Faulkner v. Nat'l Geographic Soc., 294 F. Supp. 2d 523,
543 n.94 (S.D.N.Y. 2003).
6
An argument could be made, however, that the Sequence did, in fact, use the covers in
context. Just as the original cover provided an introduction to the issue of the magazine to which
it was attached, the Sequence recycled previous National Geographic Magazine covers as a
virtual cover for (or introduction to) the digital compendium of all of the magazine issues in the
CNG.
15
liability issues in this case;"7 and (2) because the answers were "untimely"8 and
defendants "waived the right to file an answer"9 by first moving to dismiss or, in
the alternative, for summary judgment under § 201(c). Regarding the first ground,
to justify its perceived "mandate" to strike National Geographic's answer, the
district court quoted from the portions of Greenberg I that were later amended . In
short, National Geographic argues that the district court over-read the Greenberg I
opinion by holding that it precluded defendants from contesting liability on any
ground. Greenberg responds that the district court correctly interpreted the
mandate as precluding it from entertaining any defense to infringement (including
those not raised in the motion to dismiss). Greenberg then proceeds to refute the
four defenses that National Geographic raised in its later-stricken answer,10
attempting to demonstrate the futility of those defenses in the absence of a record.
We review de novo whether a district court correctly applied a mandate
handed down by this Court. See Alphamed, Inc. v. B. Braun Med., Inc., 367 F.3d
7
June 11, 2002 Order Granting, in Part, Defs.' Mot. for Additional Order of Reference;
Denying Defs.' Cross-Mot. For Enlargement of Time; and Granting Pls.' Mot. to Strike Defs.'
Answers, at 5.
8
Id. at 6.
9
May 29, 2002 Order Denying Defs.' Mot. for Interlocutory Appeal, at 6.
10
Those defenses were (1) contractual authorization, (2) that the 1909 Act governs some
of the photographs, (3) failure to state a claim and (4) laches and estoppel.
16
1280, 1285 (11th Cir. 2004) (reviewing de novo application of law of the case
doctrine); Piambino v. Bailey, 757 F.2d 1112, 1120 (11th Cir. 1985) (explaining
that a mandate simply requires a specific application of the law of the case
doctrine). We agree with defendants that the district court over-read the
mandate.11
Regarding the second ground given by the district court – untimeliness –
National Geographic points out that it followed the procedure set forth in Fed. R.
Civ. P. 8(c) and 12(b) which permits filing a motion to dismiss before an answer.
After entry of the mandate in Greenberg I, National Geographic filed its answer
within 20 days. Because Rule 12(a)(1) provides 20 days after service of the
complaint to file an answer, National Geographic argues that its answer was
timely.
Greenberg asserts that the answer is untimely, because when he first filed
his complaint, defendants waited until 15 days after service of the complaint to
request additional time to file their motion to dismiss. He argues that, therefore,
only 5 days of the 20-day period to answer were tolled by the request for
additional time, and any post-mandate answer would have to have been filed
within 5 days to be timely. Greenberg cites no case that supports this proposition,
11
In any event, the mandate of Greenberg I is moot in light of today's ruling.
17
and we find his position on timeliness meritless.
Under the Federal Rules, a defendant may file a motion under Rule 12
before filing an answer to a complaint. National Geographic followed the
procedure set forth in the Federal Rules in making its motion to dismiss prior to
filing an answer and should not have suffered the ultimate penalty of being
precluded from presenting its other defenses to copyright liability for doing so.
See Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg'l Planning Agency, 216 F.3d
764, 788 & n.45 (9th Cir. 2000), aff'd, 535 U.S. 302 (2002) (noting that a
defendant need only present on a motion to dismiss those defenses that are
susceptible to judgment on the pleadings, and may plead any other defenses in a
later-filed answer). Regarding timeliness, National Geographic is correct that
defendants have 20 days under the Federal Rules to file an answer after service of
a complaint, although no time period is specified in the Federal Rules for filing an
answer where a district court grants a pre-answer dispositive motion but an
appellate court subsequently reverses.12 Because National Geographic followed
12
The Rules do set forth a time to respond to a complaint in an analogous situation:
where a district court denies a motion made under Rule 12, a defendant must answer within 10
days after notice of the court's action. Fed. R. Civ. P. 12(a)(4)(A). Neither party discusses the
applicability of Rule 12(a)(4)(A) here, and we have discovered no case that addresses the issue.
Because the applicability of Rule 12(a)(4)(A) to an appellate court's reversal of a district court's
grant of a Rule 12 motion is unclear, defendants should not be held to its 10-day time limit for
filing an answer.
18
the procedures set forth in Rules 8 and 12, and because the Rules set no time limit
for answering a complaint following a reversal of summary judgment, we hold that
National Geographic's answer filed within 20 days after our mandate was timely.
Accordingly, the district court's grant of the motion to strike the answer is vacated.
In light of today's holding that the Replica and Program portions of the
CNG are privileged under § 201(c) and the fact that defendants have filed an
answer with defenses that have not yet been adjudicated to the copyright claims
concerning the Sequence, the willfulness verdict is also vacated.
IV. CONCLUSION
We conclude that the Supreme Court's decision in Tasini established a new
framework for applying the § 201(c) privilege that effectively overrules the earlier
panel decision in this case. Under the Tasini framework, we conclude that the
Replica and Program portions of the CNG are privileged under § 201(c). We
further conclude that the district court erred in striking defendants' answer and
vacate that order. We also vacate the verdict of willful infringement and the
damage award. The case is remanded to the district court for adjudication of the
remaining claims and defenses.
REVERSED and REMANDED.
19