Shidler Journal of Law, Commerce & Technology 3 Shidler J. L. Com. & Tech. 1 Volume 3, Issue 1, Summer 2006
Intellectual Property
Cite as: Shan Sivalingam, Broadening the Scope of Electronic Reproductions: The Interpretation of Section 201(c) in Faulkner v. National Geographic Enterprises Inc., 3 Shidler J. L. Com. & Tech. 1 (Aug. 24, 2006), at [http://www.lctjournal.washington.edu/Vol3/a001Sivalingam.html]
Broadening the Scope of Electronic Reproductions: The Interpretation of Section 201(c) in Faulkner v. National Geographic Enterprises Inc.
By Shan Sivalingam [fn1]
(c) 2006 Shan Sivalingam
Abstract
This Article analyzes the implications of the recent decision of the United States Court of Appeals for the Second Circuit in Faulkner v. National Geographic Enterprises Inc. The court interpreted 201(c) of the federal Copyright Act to permit National Geographic to compile print issues of its magazine into a CD-ROM digital archive without explicit permission from freelance authors who contributed to the print issues. The court's decision has raised concern among freelance journalists and photographers who contribute works to newspapers and other periodicals that compile copyrighted works. This Article outlines significant features of the Faulkner decision and analyzes it within a larger framework of cases that have dealt with electronic reproductions of collective works. The Article concludes that while the Faulkner decision is in accord with the interpretation of 201(c) that the United States Supreme Court set forth in New York Times Co. v. Tasini, the decision weakens the control of freelance contributors over their copyrighted works.
Table of Contents
Introduction The Copyright Act and Collective Works The Faulkner Opinion The Effect of Faulkner Is Faulkner consistent with earlier cases? Electronic Reproduction Spectrum Conclusion
Introduction
[1] In Faulkner v. National Geographic Enterprises Inc., the United States Court of Appeals for the Second Circuit attempted to balance the intellectual property rights of two competing groups: publishers and freelance periodical contributors. [fn2] The issue before the court was whether a publisher's electronic compilation [fn3] of its magazine issues into a CD-ROM archive was an authorized revision of the original magazine issues under 201(c) of the Copyright Act. [fn4] The court held that National Geographic's digital archive of its print publications was a privileged revision of its previously copyrighted compilations and therefore did not constitute infringement. [fn5]
[2] The Faulkner case represents a significant development in copyright law. Under Faulkner, publishers are allowed to compile information in digital media - a media that did not exist when Congress amended the Copyright Act in 1976. [fn6] The Faulkner court's recognition of electronic reproductions under 201(c) expanded the rights of publishers to compile information and limited the rights of periodical contributors to have greater control over the use of their works. This holding represents the first direct application of the "original context" rule for electronic reproductions under 201(c) that the United States Supreme Court established in New York Times Co. v. Tasini. [fn7] This application of the 201(c) rule raises serious questions about the ability of freelance authors to protect their works from reproductions not contemplated by their original copyright licenses.
The Copyright Act and Collective Works
[3] It is useful to examine the law that governs the transfer of copyright ownership from the original author to the author of a compilation in order to better understand the genesis of the issue in Faulkner. The Copyright Act (the "Act") generally protects "original works of authorship fixed in any tangible medium of expression." [fn8] The Act defines a "compilation" as an original work formed by selecting, coordinating, and arranging preexisting materials. [fn9] A compilation also includes collective works, "such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole." [fn10]
[4] Traditionally, original authors had little control over publication of their works after allowing them to be included in a collective work. Before 1976, federal copyright law recognized a freelance author's copyright in a published work only when the author's work appeared with a copyright notice printed next to the author's name. An author risked losing all future rights in his article if he contributed an article to a collective work without affixing a copyright notice. [fn11]
[5] In 1976, Congress completed a major revision of the Act. One result of this revision was to guarantee the rights of contributors to collective works. Specifically, the Act distinguishes "copyright in each separate contribution to a collective work" from "copyright in the collective work as a whole." [fn12] The former "vests initially in the author of the contribution," whereas "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." [fn13] This rule grants the owner of a collective work a privilege to revise the collective work. [fn14]
[6] Congress stated that these revisions were intended to preserve the original author's copyright in a contribution "without requiring any unqualified transfer of rights to the owner of the collective work." [fn15] But in 1976, Congress had not anticipated the advent of new digital technologies that have dramatically enhanced the ability to store, distribute, and display information. Consequently, the revised Act is ambiguous as to whether an electronic compilation of print publication issues falls within 201(c)'s protection for "revision[s] " of a collective work. [fn16] The Second Circuit confronted this ambiguity in Faulkner.The Faulkner
Opinion
[7] Douglas Faulkner and his co-plaintiffs are freelance photographers and authors whose photographs and articles appeared in print issues of National Geographic Magazine. [fn17] National Geographic subsequently compiled the Magazine issues into a CD-ROM archive (the...
