Greenberg v. National Geographic Society

533 F.3d 1244, 87 U.S.P.Q. 2d (BNA) 1768, 2008 U.S. App. LEXIS 13832, 2008 WL 2571333

• Court: Court of Appeals for the Eleventh Circuit
• Decided: June 30, 2008
• Docket: No. 05-16964
• Status: Published

Opinions

BARKETT, Circuit Judge:

Appellant National Geographic Society is a nonprofit scientific and educational organization that has published a monthly magazine since 1888.² The Society also produces televised programs and computer software as well as other educational products through National Geographic Enterprises, a wholly-owned and for-profit subsidiary of the Society. Appellee Jerry Greenberg is a freelance photographer, some of whose photographs were published in four issues of the National Geographic Magazine.³

For decades, the Society has reproduced back issues of the Magazine in bound volumes, microfiche, and microfilm. In 1997, National Geographic produced “The Complete National Geographic” (“CNG”), a thirty-disc CD-ROM⁴ set containing each monthly issue of the Magazine, as it was originally published, for the 108 years from 1888 through 1996 — roughly 1200 issues of the Magazine. In addition, the CNG includes a short opening montage and a computer program that allows users to search the CNG, zoom into particular pages, and print.

Greenberg sued National Geographic, alleging that it had infringed his copyrights by reproducing in the CNG the print magazine issues that included his photographs. The district court disagreed and granted summary judgment in favor of National Geographic, holding that because the CNG constituted a “revision” of the print issues of the Magazine, the reproduction of Greenberg’s photographs in the CNG was privileged under 17 U.S.C. § 201(c) of the Copyright Act and did not constitute an infringement of Greenberg’s copyrights. However, a panel of this Court in Greenberg v. National Geographic Society (Greenberg I), 244 F.3d 1267, 1275-76 (11th Cir.2001), reversed and remanded for the district court to “ascertain the amount of damages and attorneys fees that are, if any, due as well as any injunctive relief that may be appropriate.” After a jury trial on damages, the jury returned a verdict against National Geographic in the amount of $400,000.

National Geographic appealed again, this time arguing that the intervening decision of the U.S. Supreme Court in New York Times Co. v. Tasini, 533 U.S. 483, 121 S.Ct. 2381, 150 L.Ed.2d 500 (2001), decided after Greenberg I, mandated a reversal of the jury verdict against it. A second panel of this Court agreed, finding that Tasini compelled a reversal of the jury verdict because, under Tasini’s rationale, National Geographic was privileged to reproduce its print magazines in digital format pursuant to § 201(c) of the Copyright Act. See Greenberg v. Nat’l Geographic Soc’y (Greenberg II), 488 F.3d 1331 (11th Cir.2007).⁵ This Court then vacated the Greenberg II panel opinion and granted rehearing en banc to address the question of whether National Geographic’s use of Greenberg’s photographs in the CNG is privileged.

I. DISCUSSION

The section of the Copyright Act that is relevant to the question before us, 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.

Prior to 1976, whenever freelance authors contributed to a collective work, they risked losing their copyright in their individual works absent a printed copyright notice in the author’s name. A freelance author could not just assign the publisher the right of publication in the collective work while preserving her copyright in the individual work. The amended 1976 Copyright Act — including § 201(c) — rejected this idea of copyright “indivisibility,” instead reframing copyright as a bundle of discrete “exclusive rights.” See Tasini, 533 U.S. at 494-96, 121 S.Ct. 2381; see also 17 U.S.C. §§ 106, 201(d)(2). Thus, as part of its recasting of copyright as a bundle of exclusive rights, Congress added § 201(c) to the Copyright Act in order to protect both the copyrights of freelance authors in their individual contributions to a collective work as well as the copyright of the publisher in the collective work itself:

When ... a freelance author has contributed an article to a “collective work” such as a newspaper or magazine, ... the [Copyright Act] recognizes two distinct copyrighted works: “Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole .... ” Copyright in the separate contribution “vests initially in the author of the contribution” (here, the freelancer). Copyright in the collective work vests in the collective author (here, the newspaper or magazine publisher) and extends only to the creative material contributed by that author, not to “the preexisting material employed in the work.”

Tasini, 533 U.S. at 493-94, 121 S.Ct. 2381 (citations omitted). Congress intended this limitation on what the author is presumed to give away primarily to keep publishers from “revising] the contribution itself or including] it in a new anthology or an entirely different magazine or other collective work” without the author’s consent. Id. at 497, 121 S.Ct. 2381 (emphasis added) (quoting H.R.Rep. No. 94-1476, at 122-23 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5738).

Thus, pursuant to § 201(c), and as Tasini notes, a magazine publisher is privileged to reproduce or distribute an article — or photographs, in this instance — contributed by a freelancer, “absent a contract otherwise providing, only ‘as part of any (or all) of three categories of collective works: (a) ‘that collective work’ to which the author contributed her work, (b) ‘any revision of that collective work,’ or (c) ‘any later collective work in the same series.’ ” Id. at 496, 121 S.Ct. 2381. National Geographic argues that it should be able to reproduce and distribute the CNG under either the first or second prongs of § 201(c). Greenberg, on the other hand, argues that the CNG should be considered a “new collective work” which, he asserts, is not entitled to any privilege under § 201(c).

Accordingly, we must decide whether the reproduction of the National Geographic Magazines from print to CD-ROM falls within either (a) “that particular collective work” privilege, and/or (b) the “revision of that collective work” privilege.⁶ Because we conclude that the CNG is a “revision” of the original “collective works” under the second prong of § 201(c) based on Tasini’s definition of “revision” in conjunction with its discussion of microform, we need not address whether it is also privileged under the first prong of § 201(c).⁷

The Copyright Act defines “collective work” as a “work, 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.” 17 U.S.C. § 101. Under the definition of “compilation,” which includes “collective works,” a “collective work” is an “original work of authorship” insofar as it involves the selection, coordination, or arrangement of preexisting materials or data. Id.; see also id. § 102(a) (“Copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression .... ”).

With respect to a “collective work,” copyright extends only to materials contributed by the compiling author, as opposed to preexisting materials. Id. § 103(b). A copyright in a “collective work” does not imply an exclusive right in the preexisting material. Id. Here, each individual National Geographic Magazine issue — including the January 1962, February 1968, May 1971, and July 1990 print issues in which Greenberg’s photographs first appeared — is a “particular collective work,” and each of Greenberg’s photographs is “part of’ one of those collective works. National Geographic has the privilege of reproducing these individual magazine issues in print as often as it wishes, and Greenberg retains his copyrights in his individual photographs. At the same time, National Geographic has a copyright in the collective work as a whole — to wit, the individual magazine issues.

The Copyright Act does not define “revision,” but Tasini does. Tasini defines “revision” as a “new ‘version,’ and a version is, in [the § 201(c)] setting, a ‘distinct form, of something regarded by its creators or others as one work.’ ” 533 U.S. at 500, 121 S.Ct. 2381 (emphases added) (quoting Webster’s Third New International Dictionary 1944, 2545 (1976)).

In Tasini, the articles at issue — written by freelance authors — originally appeared in the New York Times, Newsday, and Sports Illustrated. Pursuant to licensing agreements with two computer database companies, the publishers of the three periodicals provided to the database companies all the separate articles from each periodical which were then placed in electronic databases, isolated from the context of the original print publications in which they first appeared. Id. at 487-89, 121 S.Ct. 2381.⁸ The reproduction of all articles took place without any of the freelance authors’ consent. Id. at 489, 121 S.Ct. 2381.

To resolve the case, the Court focused on whether the articles were removed from their original context and now isolated in an entirely different context. Id. at 503, 121 S.Ct. 2381. It noted that the three databases in question — NEXIS, the NYTO, and the GPO — have certain differences but are all similar in that a user of any of the three databases can only view articles in isolation of the context of their original print publications. For example, in NEXIS, each article appears as a “separate, isolated ‘story¹ — without any visible link to the other stories originally published in the same newspaper or magazine edition. NEXIS does not contain pictures or advertisements, and it does not reproduce the original print publication’s formatting features such as headline size ....” Id. at 490, 121 S.Ct. 2381. Like NEXIS, the NYTO shows articles with “identifying information (author, title, etc.), but without original formatting or accompanying images.” Id.9 Finally, the GPO did show each article exactly as it appeared in print, with photographs and advertisements, “but without any material published on' other pages of the original periodical.” Id. at 500, 121 S.Ct. 2381.

After finding that the individual articles were presented “clear of the context provided either by the original periodical editions or by any revision of those editions,” the Supreme Court concluded that the three electronic databases did not reproduce or distribute the freelance authors’ works “as part of’ either the original editions or as a “revision” of those editions. Id. at 499-500, 121 S.Ct. 2381. Because the freelance authors’ articles were “presented to, and retrievable by, the user in isolation, clear of the context of the original print publication,” id. at 487, 121 S.Ct. 2381 (emphases added), the publishers could not claim a privilege under § 201(c). Thus, the “crucial fact” for the Supreme Court was the databases’ ability to “store and retrieve articles separately within a vast domain of diverse texts.” Id. at 503, 121 S.Ct. 2381 (emphasis added). The articles were presented to the user “standing alone and not in context.” Id. at 488, 121 S.Ct. 2381.

The Supreme Court found that by presenting the articles outside of their original context, the databases were not mere revisions of the original collective works because the publishers had done more than create a “distinct form of something regarded by its creators or others as one work.” Id. at 500, 121 S.Ct. 2381. “Under § 201(c), the question is not whether a user can generate a revision of a collective work from a database, but whether the database itself perceptibly presents the author’s contribution as part of a revision of that collective work.” Id. at 504, 121 S.Ct. 2381.¹⁰ Therefore, “[i]n determining whether the [articles have been reproduced and distributed ‘as part of a ‘revision’ of the collective works in issue, we focus on the [ajrticles as presented to, and perceptible by, the user of the [databases.” Id. at 499, 121 S.Ct. 2381 (emphasis added); see also Faulkner, 409 F.3d at 38.

In sum, the teachings of Tasini are twofold. First, the concept of “revision” necessarily includes some element of novelty or “newness” as defined by the Court, and second, consideration of the context in which the contributions are presented is critical in determining whether that novelty is sufficient to defeat the publisher’s § 201(c) privilege.¹¹

Through its discussion of microform reproductions, the Supreme Court elaborated on the difference between revisions of collective works and collective works where the individual contributions have been taken out of context. See Tasini, 533 U.S. at 501, 121 S.Ct. 2381. It explained that “[microforms typically contain continuous photographic reproductions of a periodical in the medium of miniaturized film. Accordingly, articles appear on the micro-forms, writ very small, in precisely the position in which the articles appeared in the newspaper.” Id. And although “the microfilm roll contains multiple editions, and the microfilm user can adjust the machine lens to focus only on [an article], to the exclusion of surrounding material, ... the user first encounters [the articles] in context.” Id. Based on this fidelity to context, the Supreme Court reasoned that the reproduction of print publications in microform would be privileged under § 201(c). Id. at 501-02, 121 S.Ct. 2381. Unlike the “conversion of newsprint to microfilm, the transfer of articles to the [databases [in Tasini did] not represent a mere conversion of intact periodicals (or revisions of periodicals) from one medium to another.” Id. at 502, 121 S.Ct. 2381.

Applying Tasini to the facts before us, we find that the CNG is analogous to the microforms discussed therein. Similar to microfilm or microfiche, the CNG uses the identical selection, coordination, and arrangement of the underlying individual contributions as used in the original collective works. 17 U.S.C. § 101; Greenberg I, 244 F.3d at 1269; Greenberg II, 488 F.3d at 1335; Faulkner, 409 F.3d at 38. The CNG’s image-based reproduction of the Magazine is like microform. The CNG presents two pages of an issue at a time, with the Magazine fold in the middle, and with the page numbers in the lower outside corners, exactly as they are presented in the print version. See Faulkner, 409 F.3d at 38. In addition to the layout of the Magazine issues, the content of the CNG is also in the same position as in the print versions of the Magazine. As we noted in Greenberg I, “[w]hat the user of the CNG sees on his computer screen ... is a reproduction of each page of the Magazine that differs from the original only in the size and resolution of the photographs and text[,] [with] [e]very cover, article, advertisement, and photograph appearing] as it did in the original paper copy of the Magazine.” 244 F.3d at 1269; see also Greenberg II, 488 F.3d at 1335.¹² That is, an author’s contribution is viewed within its original context, with each page containing the articles, photographs, and/or advertisements as they originally appeared in the Magazine’s print versions. No alteration in positioning has been made in the CNG. A user of the CNG can focus on a particular page or parts of a page, but this is similar to microform, where the user “can adjust the machine lens to focus only on the [a]rticle, to the exclusion of surrounding material.” Tasini, 533 U.S. at 501, 121 S.Ct. 2381. Thus, Greenberg’s photographs do not appear disconnected from their original context. Rather, they are firmly positioned within their original context, and a user of the CNG cannot move or alter the photographs.

The CNG is also distinct from the GPO CD-ROM of Tasini. The GPO is an image-based system which shows “each article exactly as it appeared on printed pages, complete with photographs, captions, advertisements, and other surrounding materials,” id. at 491, 121 S.Ct. 2381, making it the most similar of the three databases in Tasini to the CNG. When a user conducts a search using the GPO, a computer program will search available indexes and abstracts, and a user may view each article within the search result. However, “[t]he display of each article provides no links to articles appearing on other pages of the original print publications” and a user cannot simply “flip” to another article. Id. at 491 & n. 2, 121 S.Ct. 2381. In the GPO, the original context of the print publication is not perceptible to the user. This is in direct contrast to the CNG where the user is free to flip through the pages or issues of the Magazine after conducting a search, thereby preserving the original and complete context of the print issues.¹³

Moreover, the aggregation of multiple issues of the Magazine in the CNG is no different from the aggregation of multiple editions or issues in microform. Aggregation is permissible if the original context of the individual contribution is preserved. The Supreme Court in Tasini recognized that although “the microfilm roll contains multiple editions” of a publication, the relevant consideration was that “the user first encounters [the articles] in context.” Id. at 501, 121 S.Ct. 2881. The Court focused on the ability of a user to isolate an individual copyrightable article from its original collective work. Id. at 503-04, 121 S.Ct. 2381. In the CNG, a user cannot “isolate” an article from its original context. Thus, that concern does not apply here. Aggregating editions or issues of one magazine into a larger collective work of that same magazine is permissible under § 201(c) insofar as the individual contributions are presented and perceivable to viewers in their original context.¹⁴

The legislative history supports this conclusion because it reveals that Congress intended the § 201(c) privilege to allow publishers to make revisions to collective works, but not to the individual contributions themselves. As part of the Roundtable Discussions in 1964 regarding § 201(c), a prominent author captured this sentiment:

I have but one question with reference to the wording, and that is with respect to the wording at the end of subsection (c): “ ... and any revisions of it.” If that means “any revisions of the collective work” in terms of changing the contributions, or their order, or including different contributions, obviously the magazine writers and photographers would not object. But there is an implication, or at least an ambiguity, that somehow the owner of the collective work has a right to make revisions in the contributions to the collective work. This is not and should not be the law, and consequently I suggest that the wording at the end of subsection (c) be changed or eliminated to make that absolutely clear.

S. 3008, H.R. 11947, H.R. 12354, 89th Cong. § 14(c) (1965), reprinted in Copyright Law Revision pt. 5, 1964 Revision Bill with Discussions and Comments 152 (Comm. Print 1965), quoted in Tasini v. N.Y. Times Co., 972 F.Supp. 804, 819 (S.D.N.Y.1997). Congress responded by changing § 201(c) from privileging “any revisions of it” to “any revision of that collective work.” Compare Copyright Law Revision pt. 5, at 152, with 17 U.S.C. § 201(c). And the House and Senate Reports indicate that Congress intended that language to prevent publishers from “revising] the contribution itself or including] it in a new anthology or an entirely different magazine or other collective work.” H.R.Rep. No. 94-1476, at 122, 1976 U.S.C.C.A.N. at 5738 (emphasis added).¹⁵

Moreover, the legislative history exposes the flaw in Greenberg’s claim that the CNG is a “new collective work,” and therefore unprivileged. Even assuming that the CNG is a “new collective work,” Congress intended for publishers to retain their § 201(c) privilege unless the republication constituted an “entirely different” collective work. Id.16 Nowhere does the legislative history suggest that publishers lose their § 201(c) privilege on account of some novelty or “newness” in the republication of a collective work. Any “revision” of a collective work is, strictly speaking, a “new” collective work. Tasini, 533 U.S. at 500, 121 S.Ct. 2381 (defining “revision” as a “new” version). Although Greenberg’s photographs can be reproduced as part of the original Magazines in which they appeared, they cannot be removed from their original context and printed in an entirely different magazine or database.

Greenberg misses the mark when he argues that the CNG is not privileged because new elements have been added to the original print publications of the Magazine. If simply adding a new element to a collective work, such as an index, table of contents or a new foreword, creates a “new collective work” outside the purview of § 201(c), then the “revision” prong is effectively nullified.¹⁷ The addition of new material to a collective work will not, by itself, take the revised collective work outside the privilege, and the pertinent question for a court is whether the new material so alters the collective work as to destroy its original context.¹⁸

Looking at the new elements of the CNG, we find that they do not bring the CNG outside the scope of the § 201(c) privilege. First, the brief twenty-five second montage of the introductory sequence, which serves as nothing more than a “brief visual introduction” to the image-based collection of the Magazine, does not infect the CNG such that it destroys the original context of the more than 1200 digitally reproduced issues of the Magazine. As a “virtual cover” for the Magazines, the introductory sequence in no way alters the context in which the original photographs were presented, just as a new cover on an encyclopedia set would not change the context of the entries in the encyclopedia. See Faulkner, 409 F.3d at 38 (noting that the “additional elements [of the CNG], such as, among other things, the Moving Cover Sequence ... do not substantially alter the original context which, unlike that of the works at issue in Tasini, is immediately recognizable”). The use of Green-berg’s January 1962 cover photograph in the introductory sequence, which is not just Greenberg’s photograph taken apart from its original context but rather the entire original cover, does not nullify National Geographic’s privilege under § 201(c).¹⁹

In addition to the introductory sequence, the computer program’s elements, such as the search function or zoom capacity, do not take the CNG outside the § 201(c) privilege. The CNG is no different than other CD-ROM products, in that all CD-ROMs contain an operating computer program that directs their functionality. The CNG’s computer program simply compresses and decompresses the digital images of the Magazine issues while allowing a CNG user to search an electronic index of the Magazines. The search function of the computer program is akin to a traditional index, except that it is a by-product of the medium in which it finds its functionality. Just as a reader of a bound-volume of previous issues of National Geographic might look to an index to find all the pages in which the phrase “global warming” appears, a user of the CNG’s search function can enter the phrase “global warming” and the program will retrieve for the user all those same pages. The CNG user is then free to flip through other pages of the issues without having to conduct a new search. Similarly, the zoom function, while allowing a CNG user to focus on a specific part of a page, does not deprive National Geographic of its privilege because, just like adjusting a lens to look at a specific part of a page of a publication reproduced on microform, the page in question first appears to the reader in context. See Tasini, 533 U.S. at 501, 121 S.Ct. 2381. These added features only serve to provide functionality to “the CNG’s raison d’tre” — i.e., the intact collected issues of the Magazine. See Greenberg I, 244 F.3d at 1269. The CNG’s new elements are no different than microform’s “new” elements, such as a zoom lens or the ability to print only a portion of a document. These additional features do not destroy the original context of the collective works.

We see no material distinction between the CD-ROMs at issue here and the permissible “revision” of a collective work into microform as discussed in Tasini. The fact that the CNG is on CD-ROMs in digital form does not make the microform analogy any less relevant.²⁰ The conversion of magazine issues from print to digital form — as opposed to their conversion from print to print, or print to micro-form — does not create a different balance of copyright protection under § 201(c) between individual authors and publishers because copyright protection is media neutral. See 17 U.S.C. § 102(a) (noting that “[cjopyright protection subsists ... in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated ...” (emphasis added)). Tasi-ni explained that the long-embraced doctrine of media neutrality mandates that the “transfer of a work between media does not alter the character of that work for copyright purposes.” 533 U.S. at 502, 121 S.Ct. 2381 (internal quotations and brackets omitted); see also Faulkner, 409 F.3d at 40 (“The transfer of a work from one medium to another generally does not alter its character for copyright purposes.”).

To this end, Congress adopted broad statutory language including within copyright’s ambit all existing and later developed media through which works could be communicated either directly or with the aid of a device. See 17 U.S.C. §§ 101, 102(a). The legislative history underscoring the adoption of this doctrine explains:

This broad language is intended to avoid the artificial and largely unjustifiable distinctions ... under which statutory copyrightability in certain cases has been made to depend upon the form or medium in which the work is fixed. Under the bill it makes no difference what the form, manner, or medium of fixation may be — whether it is in words, numbers, notes, sounds, pictures, or any other graphic or symbolic indicia, whether embodied in a physical object in written, printed, photographic, sculptural, punched, magnetic, or any other stable form, and whether it is capable of perception directly or by means of any machine or device “now known or later developed.”

H.R.Rep. No. 94-1476, at 5665. Because the principle of media neutrality is a staple of the Copyright Act, 17 U.S.C. § 102(a), Tasini 533 U.S. at 502, 121 S.Ct. 2381, it is incorrect to say that an exact digital replica of a print magazine is somehow a “new collective work.”

Furthermore, the fact that a computer program allows CNG users to search and access — without altering — the collective works in their exact original form and context does not change our § 201(c) analysis. As technology progresses and different mediums are created through which copyrightable works are introduced to the public, copyright law must remain grounded in the premise that a difference in form is not the same as a difference in substance. “No one doubts that [a publisher] has the right to reprint its issues in Braille, in a foreign language, or in micro-form, even though such revisions might look and feel quite different from the original. Such differences, however, would largely result from the different medium being employed.” Tasini 533 U.S. at 512-13, 121 S.Ct. 2381 (Stevens, J., dissenting). Thus, the revision of a magazine by reproducing it in its original context in a new “distinct form” — i.e., a digital version — is not a difference that would undo a publisher’s privilege under § 201(c). See id. at 500, 121 S.Ct. 2381.

With publications continuously being reproduced in new mediums, courts should not disapprove of the reproduction or distribution of collective works in those mediums without evaluating whether the publisher has violated the contextual fidelity of the original collective work or revised the individual contribution itself. Courts must determine whether the addition of new materials to the reproduction creates an “entirely different” collective work which falls outside § 201(c)’s privilege, not whether the medium itself presumptively creates a “new collective work.” Green-berg’s copyrights in his individual contributions to the National Geographic Magazine issues and National Geographic’s copyrights in the collective works — and National Geographic’s privilege of reproducing and distributing the collective works — were not determined thirty years ago based on the medium in which they were produced, and they should not be determined on that basis today.

II. CONCLUSION

In the light of the Supreme Court’s holding in Tasini that the bedrock of any § 201(c) analysis is contextual fidelity to the original print publication as presented to, and perceivable by, the users of the revised version of the original publication, we agree with the Second Circuit in Faulkner and find that National Geographic is privileged to reproduce and distribute the CNG under the “revision” prong of § 201(c).

The CNG — albeit in a different medium than print or microform — is a permissible reproduction of the National Geographic Magazine. Greenberg’s photographs are preserved intact in the CNG and can only be viewed as part of the original collective works in which they appeared. Similar to the microforms of Tasini, which preserve the context of multiple issues of magazines, the CNG’s digital CD-ROMs faithfully preserve the original context of National Geographic’s print issues. The CNG’s additional elements— such as its search function, its indexes, its zoom function, and the introductory sequence — do not deprive National Geographic of its § 201(c) privilege in that they do not destroy the original context of the collective work in which Greenberg’s photographs appear.²¹

We REVERSE and REMAND to the district court for proceedings consistent with this opinion.

2 . National Geographic Society is one of three Appellants in this case. The other two Appellants are National Geographic Enterprises, Inc. and Mindscape, Inc. Mindscape is the creator of the computer program underlying the "The Complete National Geographic”— the product at issue in this case. Collectively, the three Appellants are referred to throughout this opinion as "National Geographic.”

3 . Specifically, Greenberg’s photographs appeared in the January 1962, February 1968, May 1971, and July 1990 issues. In each instance, after their initial publication in the Magazine, Greenberg regained ownership of the copyrights in the photographs he originally assigned to National Geographic.

4 . CD-ROM is an abbreviation for "Compact-Disc Read-Only Memory.”

5 . Subsequent to the Tasini decision, the Second Circuit also decided a case involving the CNG with nearly identical facts to this case. See Faulkner v. Nat’l Geographic Enters. Inc., 409 F.3d 26, 36 (2d Cir.2005) (“[The Green-berg I\ decision addressed the application of Section 201(c) to a case virtually identical on the facts and law to the instant matter.”). In that case, the Second Circuit found that (1) Greenberg I did not have preclusive effect because "the Tasini approach so substantially departs from the Greenberg analysis that it represents an intervening change in law rendering application of collateral estoppel inappropriate," id. at 37, and (2) "because the original context of the [National Geographic] Magazines is omnipresent in the CNG and because it is a new version of the Magazine, the CNG is a privileged revision,” id. at 38.

6 . The third prong of the § 201(c) privilege— “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 ... any later collective work in the same series” — is not at issue in this case, and National Geographic has not argued that the CNG falls within this third prong.

7 . Judge Birch devotes nearly half of his dissent to two substantive issues that have never been raised in this case. In Parts B and C of his dissent, he finds that National Geographic impermissibly transferred its § 201(c) privileges to third-parties and the § 201(c) privilege does not extend to the "public display” of Greenberg’s photographs, a copyright owner’s exclusive right under § 106(5). While neither of these arguments has merit, it is inappropriate to consider these issues for the first time en banc. The parties have been briefing this case for over a decade now and not once has either party argued that either of these issues is dispositive in deciding whether National Geographic is entitled to the § 201(c) privilege. Furthermore, the district court never ruled on these issues and we did not ask the parties to brief these issues. Finally, in Parts B and C of his dissent, Judge Birch relies on Tasini in finding that the § 201(c) privilege is non-transferable and "public display” is not covered under § 201(c), even though the Supreme Court explicitly stated that it "neither decide[d] nor express[ed] any view” on either issue, one of which was only raised by an amicus. 533 U.S. at 496 n. 5, 498 n. 8, 121 S.Ct. 2381.

8 . The New York Times provided its articles to both computer database companies — LEXIS/NEXIS and University Microfilms International (UMI). Newsday and Time, Inc. — the publisher of Sports Illustrated — only provided their articles to LEXIS/NEXIS. See Tasini, 533 U.S. at 488-90, 121 S.Ct. 2381. LEXIS/NEXIS reproduced the articles in its NEXIS electronic database and UMI reproduced the articles on two CD-ROM products — the New York Times OnDisc (N.Y.TO) and General Periodicals OnDisc (GPO). Id. at 489-90, 121 S.Ct. 2381.

9 . In his dissent, Judge Anderson points to the Supreme Court's discussion in Tasini regarding the databases (specifically, the NYTO) to find that the CNG is not a "revision” under § 201(c). Judge Anderson notes that, similar to the CNG, the NYTO contains all the articles from one edition of the New York Times along with all the articles from other editions of that periodical on CD-ROM. However, Judge Anderson fails to take into account the main problem with the NYTO in making his analogy' — that is, like the CNG, the NYTO may have placed all the articles from one edition of the New York Times together on CD-ROM along with all the articles from other editions of the New York Times, but unlike the CNG, the individual articles were never preserved in their original context. Thus, the analogy is wanting.

10 . Judge Birch explains in his dissent how a user of the CNG could extract a photograph from a scanned page of an issue of the Magazine, thereby removing it from its original context. However, this is no different from material in microform where a user can print only a portion of what is contained on a microform roll or a microfiche sheet. More importantly, this is not the proper inquiry under Tasini. The question is whether the reproduction of a collective work "perceptibly presents” a freelancer's contribution as part of a revision of that collective work. If the user's manipulation of a collective work, after it has been initially presented to the user, were the deciding factor in a contextual inquiry under § 201(c), then National Geographic — or any other publisher — would never be able to revise an edition of its Magazine and reproduce and/or distribute it, even in print, because a user could easily cut and isolate a photograph out of the Magazine issue. He or she could then copy and scan the photograph and transmit it free of its original context. Moreover, with existing technology, there is nothing to prevent an individual from scanning an existing document and isolating a portion of that document.

11 . Tasini does not decide, nor need we, at what point elements of novelty or "newness” make a republished collective work more than a "revision.” In this case, we simply find that the degree of novelty here does not reach that level.

12 . See Faulkner, 409 F.3d at 30-31 (“[Tjhere are no changes in the content, format, or appearance of the issues of the magazine. The pages appear as they do in the print version, including all text, photographs, graphics, advertising, credits and attributions. Issues of the Magazine 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 individual images and texts are therefore viewed in a context almost identical — but for the use of a computer screen and the power to move from one issue to another and find various items quickly' — to that in which they were originally published.”).

13 . Judge Anderson’s dissent finds little difference between the CNG and GPO. While the "flip” function of the GPO may not make a large difference from a marketing standpoint, it does from a legal perspective. The GPO isolates an article clear of the context of its original print publication whereas the CNG presents an article within the Magazine's larger context as a user of the CNG can easily scroll through an entire issue of the Magazine without having to conduct an indefinite number of searches trying to retrieve each individual article from an issue, each of which is only viewable to the user standing alone.

14 . We find unavailing Greenberg’s attempt to distinguish this case from Tasini by arguing that Tasini was a disassembly case (i.e., removing individual contributions from collective works in which they originally appeared) whereas this case is an assembly case (i.e., taking collective works with their individual contributions intact within those collective works and putting the collective works into a larger collective work). Greenberg argues that Tasini involved completely unrelated facts from this case, and that Tasini's contextual inquiry is simply a threshold question in any § 201(c) analysis. Tasini, however, never placed a caveat on the contextual inquiry by describing it as a "starting point” in a § 201(c) analysis. The Court clearly stated, without qualification, that "[u]nder § 201(c), the question is ... whether the database itself perceptibly presents the author’s contribution as part of a revision of the collective work.” 533 U.S. at 504, 121 S.Ct. 2381. Thus, the contextual inquiry laid out in Tasini does not turn on this assembly-disassembly dichotomy such that it need not be addressed for an assembly case. Nor is it somehow simply a threshold inquiry for any § 201(c) analysis. It is the contextual inquiry that is of fundamental import in any § 201(c) analysis.

15 . See also H.R.Rep. No. 89-2237, at 117 (1966); S.Rep. No. 94-473, at 106 (1975), reprinted in 8 Melville B. Nimmer & David Nimmer, Nimmer on Copyright app. 4A-171 (2007). Similarly, the Register of Copyrights, which drafted § 201(c) at Congress’s request, noted that "the [§ 201(c)] privileges ... are not intended to permit revisions in the contribution itself or to allow inclusion of the contribution in anthologies or other entirely different collective works.” Staff of H. Comm, on the Judiciary, 89th Cong., Copyright Law Revision pt. 6, Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill 69 (Comm. Print 1965) (emphasis added), reprinted in 9 Nimmer on Copyright app. 15-97.

16 . In addition to not appearing at all in the legislative history, the phrase "new collective works” appears only once in the Tasini opinion. The Supreme Court stated that "[i]t would scarcely 'preserve the author's copyright in a contribution’ as contemplated by Congress, H.R. Rep. 122, if a newspaper or magazine publisher were permitted to reproduce or distribute copies of the author’s contribution in isolation or within new collective works.” Tasini, 533 U.S. at 497, 121 S.Ct. 2381. This is the only time the Court uses the phrase "new collective works.” Taken within the context of the passage in which it appears, the Supreme Court surely did not mean that the addition of any new element to a collective work or the placement of a "revised” collective work within a larger collective work by the same publisher deprives that publisher of its § 201(c) privilege. Within the very same sentence in which "new collective works" appears, the Court cites to the same House Report which states that a publisher cannot include the author’s contribution in a "new anthology or an entirely different magazine or other collective work." H.R.Rep. No. 122-23 (emphasis added). Furthermore, in support of the Tasini sentence in question, the Supreme Court cites to a law review article. However, the page cited to by the Supreme Court does not use the phrase "new collective work” and deals solely with the danger of interpreting "revision” such that it swallows the third prong of § 201(c) — i.e., "a later collective work in the same series.” See Wendy J. Gordon, Fine-Tuning Tasini: Privileges of Electronic Distribution and Reproduction, 66 Brook. L.Rev. 473, 484 (2000). The phrase "new collective work” is only used once in the law review article as well, in a sentence regarding the "distribution” of collective works which reads; "Even if a privilege were available to allow a new collective work to be made, § 201 would not cover distribution of the individually-owned articles, except in connection with the whole collective work.” Id. at 499.

17 . We are not persuaded by Greenberg's extension of this argument that the addition of any independently copyrightable element to a collective work renders it unprivileged. Merely adding an independently copyrightable foreword to a collective work would not necessarily forfeit the publisher’s privilege in the work. See 2 William F. Patry, Patry on Copyright § 5:139 (2007) (''[A] revision may still include new elements such as an index, as well as some new material.” (footnote omitted)). Contrary to Judge Birch’s contention in his dissent, the addition of two independently copyrightable computer programs does not divest National Geographic of its § 201(c) privilege. Even when the degree of novelty of such an addition is sufficient to forfeit the privilege, that determination would not turn simply on the independent copyright-ability of the additional element.

18 . In Judge Anderson’s dissent, he gives the example of placing the March 2000 monthly edition of National Geographic devoted entirely to the geography and natural beauty of Africa into a larger book entitled "The Complete Intellectual History of Africa from 1900 to 2008” as an impermissible reproduction. Under this opinion's reasoning, that reproduction and/or distribution would not survive the contextual analysis either and I would reach the same result. As noted earlier, a revision includes something "new” and the amount of "newness” will certainly impact the contextual inquiry. While the context of the individual contribution within its original collective work may have been preserved in the above example, that context is infected to the extent that a "user” of the larger collective work will not readily perceive the individual contribution within its original context. Thus, Tasini’s contextual analysis is also dis-positive in the above example and not simply a threshold inquiry.

19 . Even though the introductory sequence does not deprive National Geographic of its § 201(c) privilege, we are only deciding that the CNG as a whole is privileged.

20 . Greenberg seeks to distinguish microform from the CNG based primarily on an economically-driven argument — he argues that micro-form has no commercial value. However, there is nothing in the record to suggest that microform has no commercial value. The question of whether the reproduction of a collective work creates a "new market” is legally irrelevant to a § 201(c) privilege analysis. The protection afforded an author's individual contribution does not vary with the market value of the collective work or a revision of the collective work in which it appears. Contrary to Judge Birch's view, this case is not simply “about who gets the money.” The fact that a publisher can resell a collective work for a profit with a freelancer’s individual contribution in it is not determinative of whether that reproduction and/or distribution of the collective work is privileged as a "revision” under § 201(c). Under an extension of Judge Birch’s view, republishing an old magazine issue in its original format to a younger, new market would not be permissible. The economic inquiry is clearly not the question. Rather, it is a question of whether the publisher has a privilege to reproduce and/or distribute "that particular work,” not whether that reproduction and/or distribution is targeted at a new market.

21 . The only issue addressed en banc is whether the CNG itself is privileged under § 201(c). We adopt and reiterate the holding of the panel in Greenberg II that the introductory sequence itself is not privileged under § 201(c). 488 F.3d at 1339. On remand, the district court must consider National Geographic’s other defenses not yet adjudicated with respect to its liability for the use of the 1962 cover photograph in the introductory sequence. Likewise, because the CNG is privileged and other defenses relating to the introductory sequence have not been adjudicated, we also adopt the Greenberg II panel’s holding that the district court erroneously permitted the jury to find that National Geographic willfully violated § 201(c). Id. at 1341.

1 . The 1976 Copyright Act was supposed to reverse two hundred years of publishers' exploitation of authors under the 1909 Copyright Act. See Barbara Ringer, First Thoughts on Copyright Act of 1976, 22 N.Y.U. Sch. L.Rev. 477, 490 (1977) ("Barbara Ringer, the Register of Copyrights, more than any other single person, is responsible for the content of the new law ...” Melville Nimmer, Preface to the 1978 Comprehensive Treatise Revision of 1 Melville Nimmer, The Law of Copyright, at vi (1983)). Marybeth Peters, a later Register of Copyrights, echoed this in her 2001 letter to Congress regarding New York Times Co. v. Tasini, 533 U.S. 483, 121 S.Ct. 2381, 150 L.Ed.2d 500 (2001):

Section 201(c) was intended to limit a publisher’s exploitation of freelance authors’ works to ensure that authors retained control over subsequent commercial exploitation of their works.

In fact, at the time § 201 came into effect, a respected attorney for a major publisher observed that with the passage of § 201(c), authors “are much more able to control publishers’ use of their work” and that the publishers' rights under § 201(c) are “very limited.” Indeed, he concluded that "the right to include the contribution in any revision would appear to be of little value to the publisher.” Kurt Steele, "Special Report, Ownership of Contributions to Collective Works under the New Copyright Law.” Legal Briefs for Editors, Publishers, and Writers (McGraw-Hill, July 1978).

In contrast, the interpretation of § 201(c) advanced by publishers in Tasini would give them the right to exploit an article on a global scale immediately following its initial publication, and to continue to exploit it indefinitely. Such a result is beyond the scope of the statutory language and was never intended because, in a digital networked environment, it interferes with authors’ ability to exploit secondary markets. Acceptance of this interpretation would lead to a significant risk that authors will not be fairly compensated as envisioned by the compromises reached in the 1976 Act. The result would be an unintended windfall for publishers of collective works.

147 Cong. Rec. E182-02 (2001) (Letter from Marybeth Peters, The Register of Copyrights of the United States of America, to Representative James P. McGovern, United States House of Representatives (Feb. 14, 2001)). See Jessica D. Littman, Copyright Compromise, And Legislative History, 72 Cornell L.Rev. 857, 893-96 (Interpreting Bargains) (1987).