Visual Artists Rights Act - Right to Display Works That Do Not Yet Exist

The Massachusetts Museum of Contemporary Art sued Swiss artist Christoph Buchel over an installation called Training Ground for Democracy. Buchel is an installation artist who allegedly did not finish an installation piece. The MOCA wanted the right to display the unfinished installation that it had already spent $300,000 for.

In its brief in support of its summary judgment motion, Mass MOCA's counsel Skadden Arps found a couple of cases for the proposition that "VARA most decidedly does not cover works that do not yet exist." citing Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303, 329 (S.D.N.Y. 1994) rev'd on other grounds, 71 F.3d 77 (2d Cir. 1995) cert. denied, 517 1208 (1996) and Flack v. Friends of Queen Catherine Inc., 139 F. Supp.2d 526 (S.D.N.Y. 2001).

To find out whether the court agree with the argument that VARA did not cover non-existent works, I checked the PACER system for the U.S. District Court of Massachusetts. The court's decision was non-existent.

There was a notice of appeal, appealing from "a final order and/or judgment (or alternatively, order denying injunctive relief) announced from the bench on the 21st day of September, 2007 by the Honorable Michael A. Ponsor (1) denying Buchel's motion for summary judgment and request for injunctive relief under . . . . VARA . . . 17 U.S.C. Section 106A, and the Copyright Act Section 101 et seq. and (2) granting plaintiff's relief in its entirety, allowing it to display the work at issue with a disclaimer."

Practice Point: When a judge rules from the bench, counsel can do three things to get a piece of paper from which to appeal. First, order an expedited copy of the transcript from the court reporter. 1. submit the transcript to the judge and ask the judge to "so order" it; 2. submit a proposed order to the judge according to the judge's rules or 3. ask the judge whether the judge will be issuing a written order or decision so that you can appeal it.

Appeals generally require an appealable paper, that is, an existing written decision from a judge from which you appeal. It is analogous to the fixation requirement in copyright law.

Submitting a proposed order is generally the best and most elegant way of proceeding, and if it is not life or death and the court's discussion was lengthy, it will almost certainly help your accuracy to have the transcript. It allows you to get back to your office, clear your mind, and draft something that will make the court's decision clear. It also may be an opportunity to clarify an issue that you were not clear on from the court's oral comments.

I can't wait to see Mass MOCA's display of this non-existent work, to which VARA does not apply, and to see the disclaimer.

Some of the artist's demands in pursuing the work are found at Exhibitionist.

-The artist will not give permission to show an unfinished project nor will the artist allow the museum to show any work in progress, as the museum had suggested in previous discussion related to the postponed opening date.
- Money needs to be raised and in place to finish the project as it was proposed and completed.
- A projected budget for the second round will be sent, if an updated to punch list with very detailed photographs of the installation and the updated list of items that have been organized has been sent.
- The additional monies raised must cover the costs for ALL elements and ALL structural elements, which are clearly defined and which were much discussed. This money would have to cover the cost of the salaries, flights, per diem and housing for the 1st and 2nd round for assistants and the replacement crew and equipment to be hired.
- There is NO negotiation about the scope of the project. It will be realized as proposed.

Sounds like the non-existent Training Ground for Democracy has lessons for us all about the nature of democracy. The above photograph (of the non-existent exhibit) is found on Mass Moca's website. Does a photograph of a non-existent work exist? For more on Buchel, his work and the case, check out Anaba.

May Credit Card Processors Be Contributorily Liable for Copyright Infringement?

According to its Wikipedia entry Perfect 10 magazine ceased publishing and has gone solely to an online format. I visited the Perfect 10 website, which has generated a tremendous amount of copyright litigation. The photographs were a bit too racy to reference here.

In Perfect 10 v. Google, these purveyors of photographs of naturally beautiful women temporarily succeeded in enjoining Google from continuing its Google Images search. The Ninth Circuit, however, overturned the District Court's injunction, finding that Google's use of thumbnail images is highly transformative. My May 20, 2007 post on that case is here.

Perfect 10 recently went after credit card processing companies that facilitate transactions involving copyright infringement. Perfect 10, Inc. v. Visa International Service Assn., 494 F.3d 788 (2007). Visa won a 12(b)(6) motion to dismiss the claims against it for contributory and vicarious copyright infringement. The court found that the credit card processors, unlike a the swap meet organizer in the Fonovisa case, or the players in Napster or Grokster, did not actually get involved in the infringement process.

Judge Alex Kozinski entered a spirited dissent. He pointed out that Perfect 10 had alleged that infringers were operating offshore and reaching the U.S. through the credit card processors. If you are suing a copyright infringer who is operating offshore and profiting through use of credit cards, you should be aware of his well-reasoned dissent when you put your pleadings together.

Richard Prince - Practicing Without a License

In 2005, a Richard Prince photograph of a Marlboro cigarettes advertisement was auctioned for over $1.2 million - a world record. He photographed the Marlboro ad without permission removing the identifying marks. In a 1977 essay, Prince proclaimed that he was "practicing without a license" - referring to his practice of stealing other people's pictures and publishing them as his own.

Prince is having a one-man show at the Guggenheim museum, titled "Spiritual America". The title of the show comes from disturbing nude photograph of a prepubescent Brooke Shields taken by photographer Gary Gross that Prince "rephotographed" and presented in a gilt frame in a gallery on the Lower East Side. The photograph is part of the Guggenheim show and reprinted in its catalog.

Prince likened his taking of others' photographs to sampling someone else's 8-track tape, he could manipulate his "8 -track photographs" in the following way:

1. the original copy
2. the rephotographed copy
3. the angled copy
4. the cropped copy
5. the focused copy
6. the out-of-focus copy
7. the black-and-white copy
8. the color copy

Prince's show is interesting, disturbing, and challenging. In Nancy Spector's catalog essay, she likens Prince's acts to the act of Marcel Duchamps submitting a urinal as part of an art show (Duchamps called this "readymade") - and this act is widely considered with opening up and introducing the art of the 20th century. Is Prince a Warholian or Duchampian genius - or a fraud? If auction prices, income, and museum shows are a measure - Prince is a genius of the highest order. He certainly has his critics, though.

As we move into a world where digital photography and sophisticated consumer-level photo retouching software is available, appropriating and manipulating images has become a widespread phenomenon. His appropriation may foreshadow the copyright battles of the future, and a weakening of the visual artist's copyright.

But as you go up the Guggenheim spiral, you will note less wholesale appropropriation, and more borrowing of bits and pieces. Once an artist is successful and no longer judgment proof . . . remaining an outlaw becomes problematic. His latest series consists of scanning faces from the works of De Kooning and sticking pornographic cut-outs onto the bodies.

Maybe we will all see "moral rights" in a different light after this show. See it and judge for yourself.

Freelancers, Unregistered Copyrights and Electronic Database Litigation

Freelancers suffered a very tough blow in the Second Circuit's decision In re Literary Works in Electronic Databases Copyright Litigation, --- F.3d---, 2007 WL 4197413 (2d Cir. 2007). Dissents in the Second Circuit are fairly rare, but the Second Circuit's former Chief Judge John M. Walker, Jr. wrote a fairly thorough dissent.

In 2001 the U.S. Supreme Court decided New York Times v. Tasini, 533 U.S. 483, 488 (2001) which held that section 201(c) 0f the Copyright Act does not permit publishers to reproduce freelance works electronically when the publishers lack specific authorization to do so. In the wake of that decision, the In re Literary Works litigation was commenced as a class action to vindicate the rights of freelancers whose works were taken without their permission. After years of heated negotiation, the parties agreed to a class settlement. The settlement Classes were divided into subclasses A, B and C. Subclass A consisted of freelancers who had registered their copyrights (see my post of yesterday on advantages of registration). Subclass B registered after infringement, but before December 31, 2002. Subclass C never registered their works.

As discussed in my post of yesterday: for a U.S. copyright owner, registration is a prerequisite for commencing litigation. As the In re Literary Works decision sets forth: Class A is entitled to statutory damages and attorneys fees. Class B to actual damages. Class C .. well.... there's the rub.

The Defendants claimed that Class C (unregistered copyrights) were practically worthless. So a group of objectors (holders of unregistered copyrights) objected to the class settlement, which was likely to leave next to nothing or nothing for the Class C. Watch out what you ask for: the objectors brought the issue of the court's jurisdiction to the fore, and the Second Circuit scuttled any settlement in favor of the unregistered copyright holders. Why? They had not registered.

It seems that all of the parties spend a lot of time arguing the meaning of Section 411 of the Copyright Act, which makes it a requirement that registration to occur for a federal court to have jurisdiction. To dig into the highly technical nuances of the argument, it appears to me that the dissent makes the most sense: Section 411 doesn't create the pre-existing rights and should be treated solely as an enforcement mechanism.

And in the end, the result is not only unfair, but it renders Tasini a pyrrhic victory. As In re Literary Works states: "this jurisdictional failure likely affected more than 99 percent of the claims at issue."

Why unfair? Well, freelancers (a.k.a. ink-stained wretches) traditionally beat deadlines by minutes, turned in their work, got some beer money, and lived hand-to-mouth. They owned their work, and maybe, just maybe, someday they'd turn it into a book. Of course they owned their copyright, and when they saw "Copyright New York Times" they knew that the Old Gray Lady had taken care of the formalities of registration for them.

But in a case called Morris Business Concepts, Inc., 259 F.3d 65 (2d Cir. 2001) and in a decision denying a petition for rehearing 283 F.3d 502 (2002), all of that was taken away. Why? It was held that the newspaper owns the "collective copyright" but that if a freelancer wanted to consider a copyright registered, it would have to file a separate registration to indicate that all of the rights had not been transferred to the publisher. So every time the ink-stained wretch turned in a story, he or she was also supposed to file a registration with the Copyright Office.

Clearly, 99% of the freelancers did not have that understanding. They were relying on the publisher's registration.

So when we look at the In re Literary Works decision, the "unregistered copyrights" that were settled and under discussion were copyrights claimed by freelancers in registered collective works. Since copyright is an area of "complete preemption", this is clearly an area in which Congress intended to legislate - and whether the publisher's re-publication of a story without permission is deemed a breach of contract or a copyright infringement, it seems that there is sufficient grounds for litigation over whether it is a state or federal claim to permit a federal court to exercise supplemental jurisdiction over it in the settlement context. As Judge Walker correctly noted, there is certainly a "case or controversy" to give the freelancers standing in the constitutional sense.

As Judge Walker correctly noted, "... a plaintiff alleging copyright infringement has suffered an injury-in-fact whether or not he has registered his copyright." Professor Patry's lively discussion and link to the decision.

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.