U.S. Museums Concerned About Unartful Impact of SCOTUS Copyright Case

Lisa Shuchman

Corporate Counsel

10-17-2012

The U.S. Supreme Court will hear a copyright case later this month that could have serious unintended consequences for the nation’s art museums: If a decision by the Second Circuit Court of Appeals is upheld, every museum in the U.S. that exhibits modern art created overseas could potentially be infringing copyright.

“The most basic of museum functions—exhibiting art—could give rise to infringement claims,” said Stefan Mentzer, a partner with White & Case who filed an amicus brief [PDF] 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, the case before the High Court, Kirtsaeng v. John Wiley & Sons, has nothing to do modern art. The case concerns Supap Kirtsaeng, who came to the U.S. 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 copies of the textbooks to him 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 Supreme 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 the first-sale doctrine does not apply to books or other copyrighted materials made overseas. The federal district court and the Second Circuit Court of Appeals agreed with Wiley, and Kirtsaeng appealed the case to the Supreme Court.

So how does the outcome of this case affect art museums? The first-sale 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. Until the appeals court ruling, museums had long understood that this law applied to works produced both in the U.S. and overseas. “Under the Second Circuit’s reasoning, merely hanging a foreign-made painting on the walls of a museum, buying and importing a sculpture that was created outside the country, or loaning either to another institution for exhibition to the public, could give rise to claims of copyright infringement,” Mentzer wrote in the amicus brief.

At the Art Institute of Chicago, for example, an exhibit of paintings, sculpture, prints, and drawings by Pablo Picasso planned for this spring could leave the museum open to copyright infringement claims, said attorney Troy Klyber, the museum’s intellectual property manager. Displaying many of the works in its permanent collection, which includes foreign-made pieces by such notable modern artists as Marc Chagall, Vasily Kandinsky, and Henri Matisse, could also leave the museum vulnerable. “The decision calls into question whether we have the ability to publicly display nearly half our collection,” Klyber said.

The institutions represented in the brief include many of the nation’s most prominent museums, known for their collections of modern, postwar, and contemporary art. In addition to the Art Institute of Chicago, these include the J. Paul Getty Museum in Los Angeles, the San Francisco Museum of Modern Art, and New York City’s Museum of Modern Art, Solomon R. Guggenheim Museum, and Whitney Museum of Art, among others. The brief lists dozens of well-known artists, including Alexander Calder, Salvador Dalí, Alberto Giacometti, Frida Kahlo, Yayoi Kusama, Rene Magritte, Joan Miró, and Diego Rivera, whose works originate outside the U.S. but are part of the museums’ collections.

The museums decided to present their arguments to the Supreme Court because the issues related to the display of art had never been raised, said Mentzer, who included in the amicus brief examples of iconic works of art produced overseas and explanations of how they have shaped the history of art. The museums wanted to ensure that the justices consider the broader implications of the case, Mentzer said.

The museums focused on their modern art collections because older works are likely to have fallen into the public domain and are no longer protected by copyright. The standard copyright term under U.S. law is the life of the author plus 70 years.

Mentzer says if the decision is not reversed, museums could be left in a legal limbo because many works by American artists are created outside the U.S., and some foreign-born artists live in the United States. “This ruling would leave museums to figure out where the artist did a particular work,” he said.

It would also require museums to seek permission from the artist or copyright owner before exhibiting a work. “As a practical matter it will be difficult, and in many cases impossible, to secure the rights,” Mentzer wrote.

Sometimes copyright owners cannot be found—especially if the owner’s identity or a work’s ownership status cannot be ascertained, Mentzer explained. And even if the copyright owner can be found, there is no guarantee the museum would be able to secure a license. The copyright owner could decide the venue isn’t right, for example, or the owner could demand a sizeable royalty payment.

The museums argue that ultimately, the cost of clearing rights for foreign-made works may be beyond what they can afford. They can continue to display the works in their collections without obtaining a license and risk lawsuits that may require them to pay potentially large damages awards and attorneys fees. Or, they could avoid exhibiting or acquiring foreign-made works entirely. “Either way, the public loses,” the brief states.

The museums say if the decision is not reversed, they may have to rely on the “fair use” provision found in U.S. copyright law to give them protection from copyright infringement claims as they continue to exhibit foreign-made works. But they say “fair use” has been interpreted in different ways and would not provide the kind of guarantee they have found in the “first-sale” doctrine.

“It’s the mission of a museum to bring art to the public,” said Mentzer. “If the lower court decision stands, museums in America will be at risk.”