National Geographic litigation: going out with a whimper?

Auscape Int’l v. National Geographic Society, 461 F. Supp. 2d 174 (S.D.N.Y. 2006)

Freelance photographers and writers who created images or wrote text that appeared in the National Geographic Magazine sued the National Geographic Society and a number of its licensees for reproducing their works as parts of CD-ROM collections of images of past issues of the Magazine. After their copyright and Lanham Act claims were rejected, and after the Second Circuit affirmed that result in a parallel case, the parties renewed their summary judgment motions on the remaining state-law claims for breach of contract, breach of fiduciary duty, and conversion against the Society, and for unfair competition, unfair trade practices under California law, unjust enrichment, involuntary trust, commercial misappropriation in violation of the common law right of privacy, and violation of California’s statutory right of publicity.

Preemption kicked out: (1) the unfair competition claims, which duplicated the Lanham Act false designation of origin claims (based on the Society’s placement of a copyright notice in its own name on the CD-ROMs); (2) the unjust enrichment claims, which were based on defendants’ profiting from copying plaintiffs’ pictures; (3) the involuntary trust claim, which was predicated on the theory that defendants misused plaintiffs’ property (their copyrighted photos); and (4) big chunks of the unfair trade practices claims. (The remaining unfair trade practices claims were also dismissed because the court found that plaintiffs’ allegations of unlawful conduct failed on other grounds.)

Because the court found that each annual edition of the CD-ROMs was a continuation of the initial conduct of producing the CD-ROMs, rather than a new breach or act, most of the contract claims were time-barred, since the plaintiffs didn’t sue for years after the CD-ROMs first existed. The remaining contracts allowed the Society to reproduce and to license others to reproduce entire issues of the Magazine, and because that’s all the CD-ROMs did, the court rejected the surviving contract claims.

Likewise, most of the tort claims were time-barred. California has enacted the Uniform Single Publication Act, which covers right of privacy claims specifically as well as other torts founded on publication. Under California precedent, a paperback edition of a work is a “new” publication, compared to a hardcover edition, and thus gives rise to a new libel claim, because the paperback is designed to reach a new audience that was unwilling to pay hardcover price. Here, however, plaintiffs had no evidence that later editions of the CD-ROM were less expensive or formatted differently so that they targeted a new market. Instead, successive editions include the entirety of earlier additions, plus new material. Thus, the instant case was more like a California case involving different editions of the same issue of a newspaper, which a state court held was a single publication under the USPA. Like a later edition of a paper updated with more timely information, the CD-ROMs targeted the same audience at a different time, and new releases didn’t restart the limitations period.

The remaining plaintiff argued that the Society owed a fiduciary duty to contributors to ensure that proper credit was given for each contribution and to prevent unauthorized copying of the contributions, which was breached because the CD-ROMs allow users to make unauthorized, uncredited copies of individual images outside of the context of the magazine. This seems clearly preempted. Since fiduciary duty isn’t based on agreement between the parties but imposed by law I can’t see an extra element here that would make this different from a contributory infringement claim. Nonetheless, the court resolved the claim on the ground that publishers are not in a fiduciary relationship with contributors, but rather a standard arms-length business relationship. Likewise, plaintiffs failed to make out a conversion claim for their transparencies and negatives under California law.

The court also determined that the parties’ contracts clearly gave the Society a right to use the plaintiffs’ names to identify them as photographers as part of the overall reproduction of the Magazine. That was the end of the privacy and publicity claims.

Sometimes a laundry list of causes of action can actually produce a success or two among failures. But, in an area in which courts are increasingly paying attention to preemption (and related interpretive concerns), often enough a loss on the big claims generates momentum on the minor ones.