Website not entitled to court finding that future uses of Eminem songs would be fair use

Shady Records, Inc. (“Shady”), filed suit against Source Enterprises, Inc. (“Source”) and others for copyright infringement arising from Source’s publication on its website of various songs by Marshall Mathers III (widely a/k/a “Eminem”). After a long process of litigation leading up to trial, Shady moved to voluntarily dismiss its claims of copyright infringement. Accordingly, the court dismissed the action with prejudice.

While most defendants would be fully satisfied by the plaintiff voluntarily withdrawing its claims and the court dismissing the action with prejudice, Source wanted some extra conditions imposed on the dismissal. One of the requested conditions was for the court to memorialize a finding that Source’s past use of the Eminem songs on its website was fair use. Furthermore, Source asked the court to determine that any future use of the Eminem songs would also constitute fair use.

The court declined to add these extra conditions to the dismissal order. It noted that Source “misconceive[d] the consequences of a successful result in this case.” Questions of fair use are highly fact-intensive, and the court held that “it would, indeed, be highly inappropriate . . to issue an advisory opinion about any particular hypothetical use of the material in the future. . . .” The dismissal with prejudice means that Shady is not entitled to any relief based on Source’s past actions. “That is the totality of the adjudication that defendants are entitled to, and that is what they will receive by the [dismissal of the action].”

Shady Records, Inc. v. Source Enterprises, Inc., 2005 WL 696795 (S.D.N.Y., March 23, 2005).

Electronic scans of National Geographic were proper revisions under Tasini standard

The Second Circuit has upheld the U.S. District Court for the Southern District of New York’s grant of summary judgment in favor of the National Geographic Society and related entities, holding that the creation and distribution of electronic versions of National Geographic did not infringe the copyrights of the contributing photographers and authors. Applying the standard set forth in New York Times v. Tasini, the court determined that the electronic version was a “privileged revision” under Section 201(c) of the Copyright Act.

In 1996, the National Geographic Society took each and every issue of National Geographic Magazine since 1888 and scanned them electronically, two pages at a time. The resulting images were placed on CD-ROMs and sold to the public. The compilation was called the Complete National Geographic.

The plaintiffs in this case, photographers and authors of numerous photos and articles that appeared in National Geographic over the years sued the National Geographic Society and related entities for copyright infringement. The plaintiffs alleged that the copyrights in their works were infringed when the works appeared in the Complete National Geographic.

Defendants argued that the electronic compilation did not infringe the plaintiffs’ copyrights because it was a privileged revision of a collective work as provided in Section 201(c) of the Copyright Act. The district court agreed with the defendants and granted summary judgment in their favor. The Second Circuit affirmed.

Section 101 of the Copyright Act defines a 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.”

An obvious example of a collective work is any magazine. The photographers that take the photos appearing in the magazine and the authors that pen the articles may own the copyrights in those individual works, but all the elements combined together give rise to a new work based on the way in which the elements are selected or arranged. The publisher of the magazine can own the copyright in the way the elements are selected or arranged, i.e., the collective work, while the copyrights in the individual works making up the magazine remain with the photographers and authors.

Section 201(c) of the Copyright Act sets forth how an owner of a copyright in a collective work may use the individual works. “[T]he owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing [a] contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”

In this case, the court employed the test set forth in the Supreme Court case of New York Times v. Tasini, 533 U.S. 483 (2001) to determine that the replication of the pages of the National Geographic magazine was acceptable under Section 201(c) of the Act, and thus did not give rise to copyright infringement. The Tasini case required an analysis of how the individual photos and articles were “presented to, and perceptible by” users of the electronic versions. Because the entire works were merely scanned as they appeared in the original print versions, the original context of the magazines was “omnipresent” in the electronic compilation. The court held that the electronic compilation was simply a new version of the magazine, and therefore privileged under Section 201(c) of the act.

Faulkner v. Mindscape Inc., — F.3d —-, 2005 WL 503652 (2d Cir., March 4, 2005).

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