Wikilegal/The 9th Circuit and Works Published Without Formalities
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Because the Wikimedia Foundation (WMF) has its headquarters in San Francisco, which is part of the 9th Circuit Court of Appeals, any copyright litigation brought against WMF in its home jurisdiction will have to follow 9th Circuit precedent. Accordingly, the 9th Circuit’s unique ruling in Twin Books v. Walt Disney, along with subsequent cases, have implications for the copyright status of works initially published outside of the U.S. before 1978 and used on WMF projects.
Twin Books v. Walt Disney Co.
In this 1996 decision, a panel of 9th Circuit judges considered an appeal from a copyright infringement claim brought by the copyright holder of the book Bambi, A Life in the Woods against the Disney Corporation, maker of the 1942 film Bambi. Although the initial claim involved a dispute over a licensing agreement, in hearing the appeal, the court focused on the copyright status of Bambi, A Life in the Woods.
Bambi, A Life in the Woods was initially published in Germany in 1923. This initial publication, however, did not include the statutory formalities required by U.S. law under the 1909 Copyright Act, such as a formal copyright notice and registration of copyright. A subsequent 1926 publication in Germany did include those formalities, and the author registered the U.S. copyright in 1927. The author’s heir renewed the copyright in 1954, pursuant to the renewal provisions of the 1909 Act.
In court, Disney challenged the validity of the book’s copyright. Disney argued first that the 1923 publication in Germany without the required formalities had automatically placed the book in the public domain in the U.S., as a publication without formalities in the U.S. would have. Alternatively, Disney argued that, even if the book had not entered the public domain in 1923, it would have in 1951. Disney reasoned that, if the 1923 publication did not send the book in to the public domain, then it must have started the 28 year term of copyright protection provided by the 1909 Act. As a result, the 1954 renewal had come three years too late, and the copyright had lapsed.
The court rejected both of these arguments. Citing principles of territoriality and an earlier decision by the 2nd Circuit limiting the application of the formal requirements of the 1909 Act to the U.S., the court held that “publication without a copyright notice in a foreign country did not put the work in the public domain in the United States.” The court further held that, because the 1909 Act only granted U.S. copyright when the formalities had been followed, the 1923 publication did not secure a U.S. copyright, and that the book’s copyright term had started in 1926 (and therefore the 1954 renewal was valid). Essentially, the court put the book into a copyright limbo between 1923 and 1926, neither in the public domain nor protected by copyright.
Societe Civile Succession Guino v. Renoir
The 9th Circuit’s conclusion in Twin Books that non-U.S. publication without the required formalities neither put a work into the public domain nor entitled it to U.S. copyright protection has come under criticism. Nevertheless, in the absence of contrary 9th Circuit or Supreme Court rulings, the case stands, and in 2008 the 9th Circuit expanded its scope. In Societe Civile Succession Guino v. Renoir the court considered the copyright status of sculptures created by Pierre-Auguste Renoir and one of his assistants, Richard Guino between 1913 and 1917. The sculptures were initially exhibited[note 1] in France under Renoir’s name in 1917, and in 1974, following a French court’s award of joint authorship rights to Guino, the sculptures were again exhibited in France. Neither of these exhibitions, nor any other exhibition of the sculptures before 1978[note 2], had the formalities required by the 1909 Act.
On appeal from a lower court case resulting from a dispute between the heirs of Renoir and Guino, a panel of the 9th Circuit upheld a lower court ruling that Twin Books controlled the case. Although the panel acknowledged the criticism the Twin Books ruling had received, they pointed out that, under applicable case law, a panel of a Court of Appeals must follow the prior rulings of other panels of that same court. Accordingly, the panel held that the exhibition of the sculptures without the required formalities had not put them in the public domain nor triggered U.S. copyright protection, and the sculptures were essentially unpublished works. As such, the court held that the sculptures were entitled to protection under 17 U.S.C. § 303(a), which, at a minimum, gives works which had not entered the public domain or been copyrighted before January 1, 1978 copyright for the life of their last surviving author plus 70 years.[note 3]
Impact of Societe Civile Succession Guino v. Renoir on Twin Books v. Walt Disney
In holding that the precedent established in Twin Books still applied, the court in Societe Civile Succession Guino rejected several arguments by the defendant attempting to distinguish Twin Books. Most importantly, the court declined to limit Twin Books to works published after January 1, 1923, which would have preserved the bright line rule that works from before 1923 fall into the public domain. Instead the court pointed out that the Twin Books court “did not raise the significance of the 1923 date,” and “did not intend to draw a line between works published before and after January 1, 1923.”
Although the court in Societe Civile Succession Guino did not directly address the issue, the ruling there seems to eliminate one distinction drawn by people analyzing Twin Books. Some commentators had argued that Twin Books, a case about a book published in German, only applied to works published outside the U.S. in languages other than English. However, the decision to apply Twin Books to the situation in Societe Civile Succession Guino, where, because the work was a sculpture, language was not a factor, suggests that this distinction may not matter.
When analyzing the copyright status of works first published abroad without the formalities required by the 1909 Act, any question of copyright brought in the 9th Circuit will have to take account of Twin Books and Societe Civile Succession Guino. Per the holdings in these two decisions, just because a work was published before 1923 does not automatically mean that it has entered the public domain. Works published outside the U.S. will have to be analyzed to see if they complied with the required formalities; if they did not then the analysis turns to whether the work was later published with the required formalities. If the work was later published with the required formalities, then the copyright term started with that publication and, depending on the the circumstances of the work, may still apply. If the work was never published with the required formalities before January 1, 1978, then copyright is governed by 17 U.S.C. § 303(a).[note 4]
As the decisions in Twin Books and Societe Civile Succession Guino interpreted the 1909 Copyright Act, their impact stretches at least back to July 1, 1909.[note 5] While no court has directly addressed whether this impact goes further back in time, the court in Societe Civile Succession Guino opined (though arguably in dicta) that “an ancient work may be protected today under the ruling of Twin Books.” David Nimmer, in a somewhat tongue-in-cheek 1998 article, argued that the Twin Books ruling meant that an ancient Greek epic, if only published outside the U.S. without the required formalities, would be eligible for copyright under 17 U.S.C. § 303(a). Although these opinions suggest that a court could find works prior to 1909 protectable, the issue is arguably not settled.
- Exhibition for sale of an artwork generally counts as the publication of that artwork. See 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 4.03[B] (2005)
- On January 1, 1978, the Copyright Act of 1976 superseded the 1909 Act.
- 17 U.S.C. § 303(a), however, stipulates that, regardless of the date the author died, the copyright protection on such works shall not expire “before December 31, 2002, and, if the work is published on or before December 31, 2002, the term of copyright shall not expire before December 31, 2047.” It is unclear whether a publication without the required formalities before December 31, 2002 would trigger this protection under the 1976 Act. The court in Societe Civile Succession Guino raised this issue but did not answer it. Societe Civile Succession Guino, 549 F.3d at 1188 n.1.
- 17 U.S.C. § 303(a), however, stipulates that, regardless of the date the author died, the copyright protection on such works shall not expire “before December 31, 2002, and, if the work is published on or before December 31, 2002, the term of copyright shall not expire before December 31, 2047.” It is unclear whether a publication without the required formalities before December 31, 2002 would trigger this protection under the 1976 Act. The court in ‘’Societe Civile Succession Guino’’ raised this issue but did not answer it. ’’Societe Civile Succession Guino’’, 549 F.3d at 1188 n.1.
- On July 1, 1909, the 1909 Act superseded prior copyright legislation.
- Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1164 (9th Cir. 1996).
- Twin Books, 83 F.3d at 1165.
- Twin Books, 83 F.3d at 1164.
- See, e.g., LaCienega Music Co. v. ZZ Top, 53 F.3d 950, 954 (9th Cir. 1995) superseded by statute on other grounds, 17 U.S.C. § 303(b) (holding that failure to comply with the formal requirements of the 1909 Act caused a work to enter the public domain).
- Twin Books, 83 F.3d at 1167.
- Twin Books, 83 F.3d at 1168.
- See, e.g., Societe Civile Succession Richard Guino v. Beseder, Inc., 414 F. Supp. 2d 944, 949 (D. Ariz. 2006) aff'd sub nom. Societe Civile Succession Guino v. Renoir, 549 F.3d 1182 (9th Cir. 2008) (“The Court will follow Twin Books, but expresses criticism of the rule announced in Twin Books to avoid burying the issue by proceeding in a summary fashion.]”) (citations omitted); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 4.01[C] (2005)
- Societe Civile Succession Guino v. Renoir, 549 F.3d 1182, 1184 (9th Cir. 2008)
- Societe Civile Succession Guino, 549 F.3d at 1186-87.
- Societe Civile Succession Guino, 549 F.3d at 1190 (“[A] later three-judge panel considering a case that is controlled by the rule announced in an earlier panel's opinion has no choice but to apply the earlier-adopted rule.”) (quoting Hart v. Massanari, 266 F.3d 1155, 1170 (9th Cir. 2001)).
- Societe Civile Succession Guino, 549 F.3d at 1187.
- 17 U.S.C. § 303(a) (outlining protection and assigning the term defined in 17 U.S.C. § 302)
- Societe Civile Succession Guino, 549 F.3d at 1189.
- See, e.g., Cornel Copyright Information Center, Copyright Term and the Public Domain in the United States, subsection “Works First Published Outside the U.S. by Foreign Nationals or U.S. Citizens Living Abroad; Special Cases.”
- David Nimmer, An Odyssey Through Copyright's Vicarious Defenses, 73 N.Y.U. L. Rev. 162, 173 (1998). Although Nimmer concluded that Twin Books required this finding, he characterized the result as “patently absurd.”