Sunday, March 12, 2006

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?


Anonymous said...

Incorrect decision. Under 302(b) it's the date of creation, not publication, from which the copyright term is measured, yes? So what's this about the term being counted from a "new" "first" publication in 1983? And could somebody please tell me how it is that the 1976 Act applies here, anyway? Were the sculptures created on or after January 1, 1978? No. I'd say that the 1909 Act (in all its maddeningly confusing glory) applies to the works in this case. Sounds to me, then, like the copyright term clock began ticking with publication in 1917. (Following Heim, that is. Did the UCC notice req. even apply at this time?) Without applying the Twin Books rule, copyright would have expired in 1973 (1917 + 56). Under Twin Books, Section 303(a) gets the owners a copyright term of (Guino's) life plus 70. Until--hey, will ya look at that--2043.

If Section 104(A) was applied, the copyright term would still have expired in 1973 ... because the term that the works "would have otherwise been granted in the US" would have run.

Sure that I've missed something, what I'd really love to know is what do you think, Professor Patry?

William Patry said...

The works were clearly created under the 1909 Act. If the works were unpublished on January 1, 1978, then they would be subject to the Section 303/302 analysis on term. But I don't think the judge believed the works were unpublished prior to January 1, 1978; if they were unpublished, notice wasn't required. He only had to worry about notice if they were published. And he was quite worried about notice. If they were published, then for term purposes the 1909 Act applied and they were in the public domain on that basis. They were also in the public domain if they were published without the required notice, and there was no allegation that before 1978 they were published with the required notice. Yet, 1909 Act works published without notice end up being treated as 1976 Act works published with a proper notice and 1976 Act term. Whoever said lawyers can't be creative?

Anonymous said...

Indeed. Thanks for clearing that up.

Anonymous said...

I have stumbled upon your website while doing undergraduate Art History research. Unfortunately, my minimal knowledge of the law prevents me from understanding your explanation of the Renoir-Guino case results. Might you be able to word the results in basic lay-man's terms. Specifically, I am curious as to whether Beseder, Inc. was allowed to continue using the sculpture casts. Also, if you have any recent information on this case it would be greatly appreciated. Thank you for your time and I look forward to your response.

Anonymous said...

As a juror on this case, it was very difficult to decide much of anything. The law and case presented to us was very limited in CONTENT and we were left to decide based on limited evidence and testimony. (and with a french interpreter - try that one on) The problem was with the casting of the bronzes from the plasters and casts...there were a limited number of bronze "editions" that were allowed and both the Guino and Renoir Societe members must agree on the editions to be re-cast. The art gallery reportedly consulted with 3 law firms and the US copyright office and were told that these works were in the public domain. As we understood it, the owner of the casts and plasters (Jean-Emmanuel Renoir and RedStar corporation) had the right to sell the casts and plasters, but not be able to reproduce anything from these without the "Societe Civile Succession Richard Guino"'s permission. The 70's and 80's references were for bronzes being cast for an exhibition in Bristol (UK). The original lawsuit that the Guino family filed to claim their family's co-creation rights started back in the 60's as I recall. let me know if I can answer anything else (if I can remember). They kept talking about the Lanham Act, but limited information was provided to us as we were just deciding on the degree of copyright violation and the amount of money to be rewarded.