Addressing the principal issues of the preclusive effect of the doctrine of collateral estoppel and privileged revisions under the Copyright Act, the U.S. Court of Appeals for the Second Circuit recently affirmed a lower court’s grant of summary judgment in favor of defendant organizations that created a CD-ROM compilation of previous issues of a magazine. Faulkner v. Mindscape, Inc., Nos. 04-0263-cv(L), 04-0388-cv(CON), 04-0265-cv(CON), 04-0475-cv(CON), 04-0318-cv(CON), 04-0481-cv(CON), 2005 U.S. App. LEXIS 3642 (2d. Cir. Mar. 4, 2005) (Winter, J.).
The numerous defendants, including the National Geographic Society and various other entities, were involved in the creation of a CD-ROM entitled "The Complete National Geographic" (CNG) which consists of all issues of the National Geographic Magazine (the magazine) published from its founding in 1888 to the present. Plaintiffs are freelance photographers and authors who had contributed photographs and writings to various issues of the magazine over the years. In several different actions, the plaintiffs filed suit against the defendants for copyright infringement in relation to the CNG, which consists of digital images of each issue of the magazine scanned two pages at a time. A viewer sees the pages exactly as they appeared in the print version with no changes to the original content, format or appearance including all text, photographs, graphics, advertising, credits and attributions. The issues of the magazine also appear chronologically with the first issue published appearing at the beginning of the first disk and the last appearing at the end of the last disk. The CNG includes brief introductory and conclusory materials in addition to a search engine that allows users to find stories and other various images and advertisements within it.
All of the cases were filed in or transferred to the Southern District of New York except for the suit filed by the plaintiff Greenberg which proceeded in a Florida district court (the Greenberg case). The Florida court granted the defendants summary judgment on the copyright claims. However, the Eleventh Circuit reversed the judgment, finding that the three components comprising the CNG—the introductory sequence, the replicas of the magazines, and the computer programs that stored and retrieved the images—were able to be copyrighted, and, therefore, the CNG was not a "revision" but was a new work which infringed the plaintiff’s copyrights. In the meantime, the New York district court granted summary judgment for the defendants on the copyright claims, holding that the CNG was a privileged revision under §201(c) of the Copyright Act, and, therefore, the defendants did not infringe the plaintiffs’ copyrights when publishing the underlying works in the CNG. The plaintiffs appealed to the Second Circuit, arguing that the Eleventh Circuit decision in Greenberg should serve as collateral estoppel and preclude the defendants from litigating their §201(c) argument.
However, in the intervening time between the Eleventh Circuit’s Greenberg decision and the Second Circuit’s consideration of this case, the U.S. Supreme Court, in its Tasini decision, ruled on the issue of privileged revisions, focusing on whether the underlying original works were presented in a particular database in the context of the original works. Because the Tasini approach significantly departed from the analysis in Greenberg, the Second Circuit believed the intervening change in the law rendered application of collateral estoppel inappropriate. Thus, applying Tasini, the Second Circuit held that because the original context of the magazines is intact in the CNG—using almost identical "selection, coordination and arrangement" of the underlying works as used in the original collective works—the CNG is a privileged revision and not a violation of §201(c).
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