USCA Ninth Circuit, December 9, 2008

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A trust established by the family of Richard Guino, an assistant to French sculptor Pierre-Auguste Renoir, brought a copyright infringement claim against Renoir’s great-grandson and an art gallery in Scottsdale, Arizona. Plaintiff alleged that defendants sold sculptures or reproduction casts in violation of plaintiff’s exclusive rights in those works. Based on its finding that the sculptures were protected under Section 303(a) of the 1976 Act, and its rejection of defendants’ arguments in favor of distinguishing or overruling its decision in Twin Books v. Walt Disney Co., 83 F.3d 1162 (9th Cir. 1996), the Ninth Circuit affirmed the district court’s grant of summary judgment in favor of plaintiff on the issue of copyright infringement.

The case concerned eleven sculptures created by Pierre-Auguste Renoir and Richard Guino between 1913 and 1917. The sculptures were first published in Paris, under Renoir’s name, no later than 1917. Prior to 1978, there was no publication of the works within the U.S., nor was there any publication containing an American-style copyright notice. In 1973, the year of Guino’s death, the French Supreme Court awarded Guino co-authorship and a one-half interest in the sculptures. Guino’s family and members of the Renoir family entered into a 1982 agreement giving the Guino family control of reproduction of the sculptures using plaster casts of the originals. Plaintiff trust (“Societe”) was formed to implement the Guino family’s rights under the agreement. Societe obtained registrations for the sculptures from the U.S. Copyright Office in 1984.

In 2003, defendant Renoir sold some of the sculptures, molds, or castings to the defendant gallery, which in turn sold them to buyers in Scottsdale, Arizona. Societe brought this action for copyright infringement, as well as for false designation and false description of sponsorship in violation of the Lanham Act, the same year. Plaintiff moved for summary judgment on the issue of copyright infringement, and the district court granted plaintiff’s motion. The district court denied defendants’ petition for an interlocutory appeal. Following a jury trial on damages, defendants appealed the district court’s grant of summary judgment.

Reviewing the district court’s grant of summary judgment de novo, the Ninth Circuit focused its analysis on the basis for copyright protection of the sculptures. Because the works were created prior to January 1, 1978, the court applied its earlier decision in Twin Books. In Twin Books, the court looked at the effect of publication in a foreign country with respect to a pre-1978 work’s entry into the public domain and held that “publication without a copyright notice in a foreign country [does] not put the work in the public domain in the United States.” To support this conclusion, the Twin Books court cited U.S. Supreme Court decisions holding “that United States copyright law should not be given extraterritorial effect.” With respect to the book that was the subject of that case, the Twin Books court found that “between 1923 and 1926, the book was neither in the public domain, nor protected by copyright.” Rather the Twin Books court found that copyright commenced under the 1909 Act “in 1926, when the book was republished in Germany with notice of copyright.”

Applying Twin Books to the facts of this case, the court held that the Renoir-Guino sculptures were not in the public domain. First, although the sculptures were published in France in 1917 and 1974, neither publication would place the works in the public domain, because neither publication included a notice of U.S. copyright. Second, the lack of notice of copyright in the pre-1978 publications also defeated protection under the 1909 Act pursuant to Twin Books. The court then reasoned that, having found that from 1917 to 1978 the sculptures were neither in the public domain nor protected by copyright, the works qualified for protection under Section 303(a) of the 1976 Act. As such, copyright in the works commenced upon plaintiff’s 1984 registration, lasting for a term of seventy years after the death of Guino, the “last surviving author.” Finding the sculptures protected until 2043, the court pointed out that, under Section 303(a), the works may qualify for protection until December 31, 2047, as they were published “on or before December 31, 2002.”

Continuing its analysis, the court rejected all three of defendants’ attempts to distinguish Twin Books, as well as a challenge to that decision’s constitutionality. First, the court refused to limit Twin Books to situations where there was subsequent foreign publication with notice giving protection under the 1909 Act. Second, the court declined to find that affording copyright protection in the instant case conflicted with language in the Twin Books decision which could be interpreted as rejecting protection on these facts. According to the court, Twin Books did not turn on the presence or absence of notice under the 1909 Act, but on the fact that in that case, as in this, the work was neither in the public domain nor protected by copyright. Third, the court rejected defendants’ argument that Twin Books should not be read to allow protection for works created before 1923. The book which was the subject of Twin Books was published in 1923, and January 1, 1923, serves as a bright line rule for entry into the public domain. Generally, any work published before that date has fallen into the public domain. The court rejected defendants’ argument on this point, reasoning that, if the Twin Books court had intended to draw a distinction at 1923, it would have said so. Finally, addressing defendants’ argument that Twin Books is unconstitutional for creating a “limitless” copyright term for works published abroad, the court stated that, although the decision does create the possibility that an “ancient work may be protected today under the ruling in Twin Books, the term is not limitless.” Any protection for a work not in the public domain or copyrighted still would be limited to the term of seventy years after the death of the last author.