Nightmare at the Museum

Lisa Shuchman

Corporate Counsel

2012-12-01 00:00:00.0

The U.S. Supreme Court will decide a copyright case this term that could have serious unintended consequences for the nation's art museums. If it upholds a decision by the U.S. Court of Appeals for the Second Circuit, every museum in the country that exhibits modern art created overseas could potentially be infringing artists' copyrights.

"The most basic of museum functions—exhibiting art—could give rise to infringement claims," says Stefan Mentzer, a partner with White & Case who filed an amicus brief with the Supreme Court on behalf of the Association of Art Museum Directors and 28 museums of art. "The decision has the potential to disrupt the mission of American museums and interfere with the public's access to art."

On its face, Kirtsaeng v. John Wiley & Sons has nothing to do with modern art. It concerns Supap Kirtsaeng, who came to the United States from Thailand to study at Cornell University—and found that textbooks published in Asia by Wiley were cheaper than those available in the U.S. He got relatives to ship him copies of the textbooks and made money selling them on eBay. Wiley sued Kirtsaeng for infringing its U.S. copyrights on the books' domestic editions.

Kirtsaeng's defense was based on a provision of copyright law first recognized by the high court in 1908, called the "first-sale doctrine," which allows people to sell used books without permission from the copyright owner. Wiley, however, argued that it doesn't apply to books or other copyrighted materials made overseas. The federal district court and the Second Circuit agreed, and Kirtsaeng appealed to the Supreme Court.

How does the outcome affect museums? The doctrine not only gives the owner of a work the right to resell it, but also to display and lend it without obtaining permission from the copyright holder. Museums had long understood that the law applied to works produced both in the U.S. and overseas. But now that's not clear. "The decision calls into question whether we have the ability to publicly display nearly half our collection," says Troy Klyber, IP manager of the Art Institute of Chicago.