Brain Teaser

Here's a brain teaser involving notice under the 1909 Act and the 1994 Uruguay Round Agreements Act, amending Section 104A. The question is the impact, under Section 9 the 1909 Act, of a failure to affix a copyright notice to copies of works of foreign origin, distributed overseas. Did this result in loss of U.S. copyright?

In the original draft of Section 9 (codified in 1947 as Section 10), it was proposed that "any person entitled thereto by this Act may secure copyright for his work by publication thereof in the United States with the notice of copyright required by this Act." (Emphasis added.) In the final draft, however, the italicized words were transferred to the next clause: "and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor." This change made it clear that a work duly copyrighted in the United States did not lose protection merely because there might be an edition subsequently published abroad without notice.

Not addressed, however, was whether a foreigner whose country had relations with the United States (but that did not have a notice requirement) could secure protection in the United States by publishing an edition in the United States with the prescribed notice after first publishing in the foreign country of origin without notice. After a number of lower court decisions, the Second Circuit, in Heim v. Universal Pictures Co., 154 F.2d 480 (2d Cir. 1946), expressed the view, in extended dicta, that American copyright could be secured by mere publication abroad even without the notice admittedly required for publication in the United States, so long as the work was not in the public domain in the foreign country. This view relied on the second clause of Section 10, quoted earlier. But, as pointed out by Judge Clark in his concurring opinion, that provision concerns only preserving copyright after it has been secured by original publication with the proper notice. For a number of years after Heim, the Copyright Office registered claims for works first published abroad without notice. However, following the United States' adherence to the Universal Copyright Convention, the Office issued regulations stating that Heim conflicted with the public policy reflected in the UCC implementing legislation that in order to enjoy full protection in the United States, foreign works first published abroad should bear the "UCC notice."

In 1996, the Ninth Circuit, relying on a general review of copyright as being nonextraterritorial, purporting to follow Heim, holding that publication overseas without notice does not inject the work into the public domain in the United States so long as such publication does not throw the work into the public domain in its foreign country of origin, Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1167 (9th Cir. 1996). According to the Ninth Circuit, when a work is published with proper notice overseas, U.S. protection begins, including subsequently the obligation to timely renew. This approach elides the real question: Did U.S. law in existence at the time, and therefore governing, require notice on copies first published overseas? If it did, chest thumping about the nonextraterritoriality of U.S. law is beside the point: by definition, if the statute is construed as requiring affixation of such a notice, Congress expressly made U.S. law extraterritorial, which it is entitled to do (and did in Section 401(a) of the 1976 Act as passed, which required notice to be affixed on authorized copies published "in the United States or elsewhere").

Very recently, on January 30, 2006 in Societe Civile Succession Richard Guino v. Beseder, Inc., a district judge in Arizona, in a very close reading of Heim and Twin Books criticized Twin Books for an "arguably incorrect" reading of Heim, for leading to an "unreasonable result," for ducking the issue in a summary fashion, and because it "unduly restricts the copyright restoration provisions of Section 104A." The Arizona court's concern was that under Twin Books, "the foreign publication without notice would neither place the work in the public domain in the United States, ... nor commence the term of copyright." Thus, the court concluded: "The Twin Books rule would prevent a foreign work published without notice from being eligible for copyright restoration under Section 104A."

In the Richard Guino case, sculptures (with authorship attributed solely to Renoir) were created in France in 1917. In an exhibition for sale held at the Bristol Hotel in Paris in 1974, the sculptures were listed for sale as works of Renoir-Guino. The plaintiff (a trust created by an agreement between the Renoir and Guino estates) registered the works with the U.S. Copyright Office on June 11, 1984. The court was of the belief that the earlier activity in France was a "publication", but found that 1983 was the date of a "new" "first" publication, and therefore measured the term under Section 302(b) of the 1976 Act; since Guino, a joint author, died in 1973, the term expires in 2043. Correct decision?