10th Cir: Golan v Holder - First Amendment Challenge to Berne Convention's Taking Works Out of Public Domain Retroactively Fails

The 10th Circuit ruled yesterday against a group of distributors of foreign copyrighted works that had fallen into the public domain, but which Congress had restored copyright status by 1994 legislation implementing the Berne Convention, following the Uruguay Round of trade negotiations.

The group, represented in part by Prof. Lawrence Lessig and the Center for Internet and Society, included a man who had composed a marching band song based on a Shostakovitch symphony that had fallen into the public domain.

The situation arose because the US used to have a rule that if you didn't put a copyright notice on your work and register it with the US copyright office, it would fall into the public domain.   Many distributors of foreign copyrighted works failed to put proper notices on them or register them with the copyright office.  Notices and registration are known as "formalities".   For a while, the US was a rare country that required formalities, most didn't, pursuant to the Berne Convention.   The US enacted the Berne Convention Implementation Act in 1988 abolishing the requirement of formalities, but it did not restore copyright protection to foreign works that had fallen out of copyright.  In 1994, Congress restored copyright protection to these foreign works (it was not automatic and involved some bureaucracy).  People who'd used the works or created derivative works were supposed to work out reasonable license fees or have them fixed by the courts.

You can find the requirement of formalities in the Copyright Act of 1909.  I have included the entire 1909 Copyright Act for easy reference as an appendix to my Copyright Litigation Handbook.

The decision has a lot of interesting legislative history, and it's got a lot of litigation history.  (From my memory) it was in district court where plaintiff lost, there was an appeal that plaintiff won with instruction to perform a First Amendment analysis on remand, then plaintiff won again with the district judge holding that the statute violated the First Amendment.  Now, the 10th Circuit reverses, link to decision below:

10th Cir: Golan v Holder - First Amendment Challenge To Removal of Copyrighted Works From Public Domain Fails



Purchase Copyright Litigation Handbook from West here  

Pleading Copyright Claims: Israeli Copyrights, the Berne Convention and Protecting Cracked Software

In Waves Audio Ltd v. Uptime Inc., 2010 WL 308301 (S.D.N.Y. Jan 22, 2010), Judge Naomi Reice Buchwald dealt with an unusual case:  a copyright infringement action that had already spent two years in litigation in New York State Supreme Court.  Plaintiff Waves distributes an audio software and alleged that Uptime Studios used a cracked/pirated copy.  The plaintiffs voluntarily dismissed the state claims and refiled a federal action.   Judge Buchwald considered the issue of whether the plaintiffs should be allowed to amend a FOURTH time in the federal action to allege the copyrights they owned and to add claims to unspecified Israeli copyrights under the Berne Convention.

Judge Buchwald told Waves that a fourth bite at the apple (too many amendments after numerous warnings about the complaint's lack of specificity) was too much and didn't let the plaintiff add the Israeli copyrights.

Lots of litigation recently regarding the Berne Convention see my recent post here.  Software sellers having a nightmare figuring out who owns all that code?  Lots more cases like this to come.

Visual Artists Rights Act: Artist Moral Rights in Unfinished Sculptural Works

In Massachusetts Museum of Contemporary Art Foundation v. Buchel, --- F.3d ---, 2010 WL 297834 (1st. Cir. January 27, 2010), the First Circuit decided a case of first impression that decided a number of complex issues related to the Visual Artists Rights Act ("VARA").

I first wrote about the case here (Visual Artists Rights Act - Right to Display Works That Do Not Yet Exist - December 16, 2007).  The case involved a Swiss installation artist, Christoph Buechel (The "u" in Buechel has an umlaut, but Blogger, unless I am missing something, does not), who, without a clear written agreement, agreed with the Mass Moca to install one of his works.   It was agreed that Mass Moca would pay, and that Buechel would own the copy.

Buechel's installations have been likened to "bristling three-dimensional history paintings" yet are "so obsessively detailed that they might be described as panoramic collage" (full size images here).

The District Court denied Buechel injunctive relief and granted summary judgment against him.   The fact pattern was a law professor's delight:  during the installation, Mass Moca's staff (being directed by emails from Switzerland, allegedly made aesthetic decisions against the artist's will, made "compromises" he did not agree to, covered the work in tarps (allegedly inviting sneek peeks) and held an exhibition next door, which purportedly was orchestrated to subject the artist to ridicule (a local paper referred to the art as "Crap under Wrap").

A few takeaways from a decision that reads like a Peter Greenaway film watches:

1.  artists have rights in unfinished works;
2.  installations are sculptural works;
3. unfinished works are sufficiently "fixed" to be copyrightable subject matter;
4.  if you are going to allege joint authorship (as Mass Moca did, you have to specifically allege your copyrightable contribution);
5.  if you are a museum, get VARA waivers in advance or a clear understanding in writing of who pays for what and what happens if things go wrong;
6.  VARA's moral rights include "attribution" and "integrity";
7. no statutory damages for violations of an artist's right of attribution;
8.   VARA does not include a right of "divulgation" (which sounds a lot like the "display" or "distribution" rights under the Copyright Act;
9.   If you are going to argue that someone violated your rights to prepare a derivative work, if you do not develop the argument on appeal, the court may find that you waived it;
10.  Even if VARA doesn't help you, go back to Section 106 and find another traditional copyright that's been violated and allege it.

Here is the court's summary of its own holdings:
1. VARA's protection of an artist's moral rights extends to unfinished creations that are “works of art” within the meaning of the Copyright Act;

2. The right of integrity under VARA protects artists from distortions, mutilations or modifications of their works that are prejudicial to their reputation or honor, and prejudice must be shown for both injunctive relief and damages;

3. Büchel has adduced sufficient evidence to raise a genuine issue of material fact as to whether MASS MoCA violated his right of integrity on one of his three asserted bases for liability, namely, by modifying “Training Ground” over his objections in a manner that harmed his honor or reputation. His right-of-integrity claims based on the yellow tarpaulins and the mere display of “Training Ground” lack merit;
4. Büchel's right-of-attribution claim is moot, as VARA provides only injunctive relief to protect the right of attribution and the installation no longer exists;

5. The record reveals a genuine issue of material fact as to whether MASS MoCA violated Büchel's exclusive right under section 106(5) of the Copyright Act to display his work publicly;

6. Büchel fails to adequately develop his claim that MASS MoCA violated his exclusive right under section 106(2) to prepare derivative works based on “Training Ground,” and that claim is therefore waived.

We thus remand the case for further proceedings on Büchel's remaining right-of-integrity claim under VARA and his public display claim under section 106 of the Copyright Act.

Although this has been billed as a victory for artist's rights, it showcases some of VARA's weaknesses (no $$$ for the artist if a right to attribution is violated).   It also means that every museum counsel in the country, if not the world, will be trying to force artists to sign away rights as a condition of display.

Again, a decision and a fact pattern worth reading and savoring, but a decision that seems to be unfortunate for Mass Moca, an institution that seemed to be trying to support the avant-garde in an idealistic and trusting, if perhaps misguided manner.
A scaled-down version of the installation was exhibited at Art Basel in Miami Beach in 2007 and sold.

Unregistered Foreign Copyrights in US Courts: No Statutory Damages and Attorneys Fees

In Elsevier B.V. v. United Healthgroup, Inc., S.D.N.Y. January 14,2010, Judge William Pauley considered a plaintiff's claim that a provision of the Copyright Act requiring copyrights to be registered prior to an infringement violated the Berne Convention and thus was "preempted" by the U.S. Constitution.

The plaintiff commenced a declaratory judgment action that Section 412 of the Copyright Act violated Article IV of the U.S. Constitution because Section 412 conflicted with Article 5 of  the Berne Convention.

The problem comes up in the following context:  many foreign publishers of copyrighted materials do not register their copyrights in the United States, even if they publish or sell copyrighted works in the United States.   So when their works are infringed, they do not enjoy the protections of the sections of the Copyright Act that give statutory damages and attorneys fees to persons who have timely registered their works (Sections 504 and 505).

Elsevier provides access to a database on which many of the unregistered copyrighted works can be accessed.  Elsevier alleged that the defendant permitted others to access the database in violation of a subscriber agreement.

The provision challenged was Section 412 of the Copyright Act, which provides:

§ 412. Registration as prerequisite to certain remedies for infringement12



In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for —

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Find Section 412 and the rest of the Copyright Act here.

The doctrine of "preemption" is used in a number of different ways in copyright practice, but here the Plaintiff was arguing that the doctrine of preemption provides that where the Exective Branch has validly committed the U.S. under treaty powers and Congress has ratified such commitments, any inconsistent laws are "preempted" by the treaty.

The Plaintiff pointed to  Article Five of the Berne Convention which states:  “the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality.”   Find the full text of the Berne Convention here.

The District Court analyzed whether the Berne Convention was "self-executing" and found that it was not.  In other words, for any provisions of the Berne Convention to be binding, enabling legislation has to be adopted by Congress.  The Court looked at the legislation implementing the Berne Convention and noted that Congress decided not to change Section 412.

Noting that no federal appellate court has ruled on the question of whether the Berne Convention is self-executing, but that other courts in the district found it not to be self-executing, the Court found that it cannot serve as a basis for a preemption claim under Article IV of the US Constitution.

Since the District Court found the Berne Convention not to be self-executing, it found that Article 5 could not serve as the basis for a preemption.    The question of whether Article 5 and Section 412 conflict were not reached, leaving the question in the hands of diplomats.

Renoir-Guino: Interminable Foreign Copyrights

A series of sculptures was created and published by Pierre-Auguste Renoir in 1917 in France. Renoir died in 1919. The sculptures were published without a copyright notice. Guino died in 1973. In 1973 (56 years later) Guino (or his estate) obtained a determination in a French court that he was co-author of the sculptures, and was awarded a one-half interest in the sculptures.

In 1984, a company representing the joint interest of certain Renoir family members and the Guino family ("Societe Civile Succession Richard Guino") obtained US copyright registrations based on a claim that the sculptures were unpublished or first published in 1983.

In 2003, Jean-Emmanual Renoir, a great grandson of Renoir, sold "some of the sculptures, or molds or castings thereof" to a gallerist in Scottsdale, Arizona.

The Societe Civile Richard Guino sued Renoir's great-grandson for copyright infringement. Since works published prior to 1923 are all in the public domain, how could this possibly happen?

The Ninth Circuit took a case called "Twin Books" involving publication of the story of Bambi in Germany in 1923 without notice and again in 1926 with notice. The Ninth Circuit made a number of extrapolations from the Twin Books case. I won't go through the reasoning which involves the interplay of the 1909 Copyright Act, the 1976 Copyright Act and the Copyright Restoration Act, but suffice it to say that the Ninth Circuit's rule is that if an ancient Greek vase is discovered tomorrow, its copyright term would be the "finite term of seventy years after the death of the last author [under sections 303(a) and 302(a) and (b)] or December 21, 2047 whichever is later."

The case appears to hold that any foreign publication of a work without copyright notice is to be treated as if the work was not published.

The case is Societe Civile Succession Richard Guino v. Renoir, -- F.3d ---, 2008 WL 5142844 (9th Cir. December 8, 2008). Poor great-grandson Renoir and the gallerist to whom he sold the works also lost Lanham Act claims for false advertising. Rebecca Tushnet's here, and Michael Atkins here. William Patry, who calls the case a "brain-teaser" here. Renoir-Guino photos found here.

Copyright and Unregistered Berne Convention (non-U.S.) Works

I have recently been lecturing outside the U.S. - in Berlin, Germany and last month in Montreal. The question comes up: should owners of copyrighted works that are created outside the United States register those works in the United States? The first part of the answer is that if the copyright author created the work in a country that is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, the copyright owner does not have to register in the U.S. to protect their copyright or to have an action in the U.S. for infringement. The owner of an unregistered Berne Convention work may commence an action in U.S. courts without registering. The owner of a U.S. work must register to have standing to sue in a U.S. court.

So, owners of unregistered Berne Convention works may bring an infringement suit in U.S. courts. The implementing legislation eliminated the requirement of registration for non-U.S. works. Compare 17 U.S.C. §411 (registration a prerequisite for “infringement of the copyright in any United States work”).

But the second part of the answer may be more important to European, Asian, Canadian, Middle Eastern and other attorneys residing in countries that are signatories to the Berne Convention. Unregistered Berne Convention works are not eligible for statutory damages and attorneys' fees under 17 USC §4 12. 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, §7.16(c)(1), 7-183 (2006)(the loss of remedies under Section 412 due to failure to register is applicable to works of foreign origin as well as to domestic works).

So, if an attorney from a Berne Convention country wants a client to have what may be strong weapons in a copyright infringement litigation, the advice should be to register the works in the United States.

There is a very narrow possible exception to this general requirement that applies only to broadcasts - but even in that instance, registration will ultimately take place. Georgia Television Co. v. TV News Clips of Atlanta, Inc., 718 F. Supp. 939 (N.D.Ga. 1989) noted the availability of statutory damages for a plaintiff with respect to an unregistered work following implementation of the Berne Convention legislation. However, this case applied narrowly to works “consisting of sounds, images or both, the first fixation of which is made simultaneously with its transmission”. 17 U.S.C. § 411(b). Section 411(b) contains special registration requirements for works that cannot possibly be registered prior to transmission.

Can you wait to register? No. To enjoy the advantages of statutory damages and attorneys fees, a Canadian, British, German or Japanese copyright owner must register, as do U.S. owners, within three months of the first publication of the work or within 30 days of learning of an infringement, whichever date is earlier. 17 U.S.C. § 412.

But wait, there are even more reasons to register, reasons that corporate dealmakers will readily appreciate:

Registration and recordation provide additional advantages to the non-U.S. copyright owner. 17 U.S.C. § 205 provides that registration acts as constructive notice of the facts within the registration. In addition, any transactions involving registered works that have been recorded act to put the world on constructive notice of such a transfer. So if a client enters into a license agreement, a loan transaction, or any other transaction affecting title or rights to a copyright and records it, the world is on notice. Section 205(d) provides that in the case of conflicting transfers of copyright, if it is executed first, the recorded document will have priority in the event of a conflicting transfer if such document executed outside the United States is recorded within two months of such a transfer, or if it is recorded prior to the later transfer. “Otherwise, the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.” 17 U.S.C. §205(d).

Accordingly, non-U.S. attorneys are correct in advising their clients of the considerable advantages to registering copyrights in the U.S. as early as possible, to conducting copyright searches before entering into significant license agreements, and to recording transactions involving copyrights promptly after execution.