Filewrapper-old

Ninth Circuit: Pre-1923 published foreign works may still be copyrighted, depending on notice
December 15, 2008

In a decision last week, the Ninth Circuit affirmed a district court's grant of summary judgment in favor of the plaintiff in a copyright case. The works at issue, sculptures by the famed artist Renior and coauthored by one of his assistants, Richard Guino, were created between 1913 and 1917, and first published in France no later than 1917. However, because they were not published with a U.S.-type copyright notice before 1978 (when the 1976 Copyright Act became effective).The Ninth Circuit found this fact significant. It held that because the works were not published with such a notice until after the effective date of the 1976 Act, they were never subject to U.S. copyright under the 1909 Copyright Act, and therefore could not have fallen into the public domain in the U.S. As a result, the work fell under 17 U.S.C. § 303(a), which covers works that were created before January 1, 1978, but not previously in the public domain or copyrighted, rather than § 104A, which covers foreign works not in the public domain in their country, but, for one of various reasons, in the public domain in the United States. Given this, the work was entitled to protection for the life of the author plus 70 years, which in this case is 2043 (70 years after Guino's death in 1973). Because the work was still under copyright, the court affirmed the district court's summary judgment to the plaintiff.This holding is particularly interesting because, as the Ninth Circuit noted, "[t]he year 1923 is significant because the 1976 Act . . . and the 1998 Copyright Extension Act operate together to create a bright line rule for which works are now in the public domain: works published before January 1, 1923 are generally in the public domain." This rule is even noted in Copyright Office Circular 22. This holding complicates that issue, confirming that one must be more careful when attempting to determine the copyright status of an unpublished foreign work.More detail of Societe Civile Succession Richard Guino v. Renoir after the jump.Pierre-August Renoir was a famed French sculptor who, along with one of his assistants, Richard Guino, created several sculptures between 1913 and 1917. The sculptures at issue were first exhibited for sale at the Hotel Bristol in Paris in 1974. In 1982, the Guino family received exclusive rights to create subsequent editions to the sculptures, and a trust, the Societe Civile Succession Richard Guino (hereinafter the "Societe") was formed to implement the family's rights under the agreement. In 1984, Societe obtained U.S. Copyright Office registrations for the sculptures, and in the registrations represented that the sculptures were either first published in England in 1983 or unpublished. In 2003, Renoir sold some of the sculptures to Beseder, who advertised and sold the sculptures and castings at its gallery in Scottsdale, Arizona.On July 10, 2003, Societe filed its complaint against Beseder and Renoir alleging federal copyright infringement and false designation and false description of sponsorship in violation of the Lanham Act. Societe alleged that the defendants engaged in sales, marketing and reproduction activities in 2003 that infringed upon Societe's copyrights in the sculptures. The defendants generally conceded that if Societe had legitimate, existing copyright interests under U.S. law in the sculptures, then some of the Defendants' actions would constitute infringing acts. However, the Defendants alleged that the sculptures were in the public domain.In 2004, Societe moved for partial summary judgment on liability of its copyright claims, contending that if the sculptures had fallen into the public domain, they were nonetheless subject to restoration under 17 U.S.C. § 104A. The district court entered partial summary judgment for Societe holding the sculptures were not in the public domain because the publications were in a foreign country and without notice of the U.S. copyright, and further concluded that § 303(a) of the 1976 Copyright Act applied because the sculptures were "created before January 1, 1978, but not theretofore in the public domain or copyrighted." Under § 303(a), the sculptures are protected for seventy years after the death of the last surviving author, in this case Guino who passed away in 1973, making the copyright valid until 2043. The district court, however, criticized the "unreasonable result" the court believed was mandated by the Ninth Circuit's Twin Books case when applied to a pre-1978 work that was published in a foreign country but not republished with a notice of copyright.The Ninth Circuit affirmed. The court observed the 1976 Copyright Act provides copyright protection for four categories of works:1. Works created on or after January 1, 1978 (covered by 17 U.S.C. § 302);
2. Works copyrighted as of January 1, 1978 (covered by 17 U.S.C. § 304);
3. Works created before January 1, 1978, but neither in the public domain or copyrighted as of that date (covered by 17 U.S.C. § 303(a); and
4. Foreign works not in the public domain in their country but (for various enumerated reasons) in the public domain in the U.S. (covered by 17 U.S.C. § 104A)It was undisputed that neither #1 nor #2 above applied. The question of the applicable copyright term was therefore controlled by whether the sculptures had passed into the public domain in the United States as of January 1, 1978. If they had not, § 303(a) applies, and the copyright term is 70 years from the death of the last author, here 2043 (Guino died in 1973). If they had passed into the public domain, § 104A applies, and the sculptures would be in the public domain. In Twin Books, the court held "that publication without a copyright notice in a foreign country [does] not put the work in the public domain in the United States." In support of this conclusion, the court cited Supreme Court decisions holding "that United States copyright law should not be given extraterritorial effect." Applying Twin Books, the court held the sculptures were not in the public domain as the sculptures were not published with notice of U.S. copyright either during their publication in France in 1917 (as Renoir works) or 1974 (as Renoir-Guino works). Because those publications were in a foreign country and without notice of U.S. copyright, they "did not put the work in the public domain in the United States" under Twin Books. Because the sculptures were never published before 1978 with copyright notice, under Twin Books, the sculptures were not protected by copyright under the 1909 Act. Therefore, between 1917 and 1978, the sculptures were neither protected by copyright nor in the public domain. As a result, § 104A did not apply. Instead, § 303(a) applied because the sculptures were "created before January 1, 1978, but not theretofore in the public domain or copyrighted." Because § 303(a) provides protection for the term provided by § 302, which is a term seventy years after the death of the last surviving author, the district court properly held the sculptures still subject of a valid U.S. copyright.The Defendants offered three reasons for distinguishing Twin Books from the facts of this case. First, the Defendants argued that Twin Books should not apply since there was no foreign publication with notice within a few years or while the 1909 Act was in effect. However, the court held nothing in Twin Books suggests the republication of the work with notice was essential to its holding that foreign publication without notice did not trigger copyright protection.Second, the Defendants argued that Twin Books should not apply based on their conclusion that Twin Books "does not stand for the proposition that works, which have never been published with a copyright notice, are protected by U.S. copyright law." The court disagreed, however, noting that the district court's holding was entirely consistent with Twin Books as it held that from 1917 to 1978 (i.e., before the 1976 Act granted protection), the sculptures were neither protected by copyright nor placed in the public domain.Third, the defendants argued that Twin Books should not be applied to this case because the sculptures were published before 1923, and the Bambi book at issue in Twin Books was published in 1923. Thus, their argument was that the court should hold that pre-1923 publications abroad without notice triggered copyright protection, while constraining the Twin Books holding that publication abroad without notice did not trigger copyright protection to only post-1923 publications. The court held, however, that this difference in dates was not enough to distinguish Twin Books on a principled basis, nor did the Twin Books court raise the significance of the 1923 date.The defendants also argued in the alternative that the application of Twin Books to this case violated the Constitution and Eldred v. Ashcroft by creating a limitless term of U.S. copyright for works published abroad. In this regard, the defendants argued that under the Twin Books rationale, a newly discovered ancient Greek work, "published obviously without notice a millennia ago," would not be in the public domain and would still be eligible for copyright protection. While the court agreed that such an ancient work would be protected today under Twin Books, the term is not limitless. Instead, the copyright term for a newly discovered ancient work that is not in the public domain or copyrighted would be limited to a finite term of seventy years after the death of the last author or December 31, 2047, whichever is later. Thus, the court concluded Twin Books did not conflict with either the Copyright and Patent Clause of the Constitution or Eldred.To read the full decision in Societe Civile Succession Richard Guino v. Renoir, click here.

Rebecca Tushnet has a series of posts covering both the district court decision and the appeal on her blog as well, including the Lanham Act claims that were not the subject of the published decision. The Seattle Trademark Lawyer provides this post regarding the Lanham Act issues.

Post has no comments.
Post a Comment




Captcha Image
Return to the Filewrapper Blog
  Newer Posts Older Posts  

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole

Connect with MVS

Enter your name and email address to receive the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.