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FOREIGN PUBLICATION PITFALLS -- Practice Pointers

by Robert W. Clarida, November 2000

A recent case, Barris v. Hamilton, No. 96 Civ. 9541, 1999 U.S. Dist. LEXIS 7225 (S.D.N.Y. May 17, 1999), illustrates the complications which can arise when domestic and international copyright laws intersect, particularly with regard to publication and renewal formalities.  Although formalities are no longer imposed on newly-created works, older works such as the 1962 Marilyn Monroe photographs at issue in Barris are still subject to the arcane requirements of  prior U.S. law.  Moreover, works originating in other countries like the Barris photos, first published in the U.K., may also be governed by the patchwork of international copyright arrangements which the U.S. maintained in the pre-Berne era.  In Barris, the interplay of these two obsolete bodies of law resulted in the inadvertent forfeiture of valuable copyrights.

Before getting to the facts of Barris, a little background is in order. Under the 1909 Copyright Act, if a work did not bear proper notice upon first publication, it immediately fell into the public domain (so-called "divestive publication").  Even if the work were published with  proper notice (so-called "investive publication"), the failure of the author to renew in a timely fashion would cause the work to lapse at the end of 28 years.  Because of these harsh consequences, courts interpreting the 1909 Act often saved works from the public domain by holding that particular ways of presenting a work to the public did not count as either "investive" or "divestive" publication. The need for such creative solutions was particularly acute for works which originated outside the U.S., in countries which imposed no notice or renewal formalities.

One response to this situation was the so-called Heim doctrine, first articulated in Heim v. Universal Pictures Co., 154 F.2d 480 (2d Cir. 1946).  Heim held that a publication without notice in a foreign country did not place the work into the public domain.  Further, since such a distribution of the work was not really "publication" under U.S. law, it did not start the 28-year clock running for purposes of determining when the renewal filing had to be made.  Thus the Hungarian publication of a song without notice in 1935 did not preclude the author from obtaining a subsequent U.S. copyright for the same work. 

In 1996, the Ninth Circuit in Twin Books Corp. v. Walt Disney Co., No. 95-15259, 1996 U.S. App. LEXIS 11462 (9th Cir. May 20, 1996) followed Heim to hold that the classic children's book Bambi did not fall into the public domain upon its initial 1923 publication in Germany without copyright notice. The Ninth Circuit noted that the effect of initial foreign publication without U.S. notice presented a "heatedly debated question ... never settled by judicial determination," but went on to adopt the reasoning of Heim and to forgive the lack of notice on the 1923 edition.  The upshot was that a later German edition, published with proper notice in 1926, was held to be the first "investive" publication, rendering the 1954 U.S. renewal timely.

In the Barris case, the reasoning of Heim and Twin Books dictates that the plaintiff's Marilyn Monroe photographs were initially protected by copyright.  The works were first published in the U.K. in 1962, in a newspaper which the court presumed to have carried proper U.S. notice. The court noted that because the U.S. and the U.K. were both members of the Universal Copyright Convention in 1962, publication in the U.K. had the same effect as domestic publication, i.e., it triggered statutory protection under the U.S. Act and caused the 28-year renewal clock to begin running.

Unfortunately, the plaintiff failed to file for renewal in 1990, thus permitting the copyright to lapse.  Plaintiff argued that his failure to renew in 1990 should not be to his detriment, however, because in 1986, prior to the end of the term, he had registered the photos with the U.S. Copyright Office.  This "premature renewal" was rejected by the court as untimely under the 1909 Act, which only allows renewal to occur in the final year of the first term: "That plaintiff was premature, as opposed to delinquent or totally remiss, does not alter the outcome."  Ironically, had the photos been published without notice, or in a country with no U.S. treaty relations, the copyright would arguably still be alive, at least under Heim and Twin Books, because the work would still technically be unpublished.  Such a result is a sobering reminder that when it comes to international publication, the abolition of notice and renewal formalities did not come nearly soon enough. 

© 2000  Cowan, Liebowitz & Latman, P.C. 

Disclaimer:
This the information provided in this article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult with a lawyer concerning your own situation and any specific legal questions you may have.