Smells Like Copyright Infringement

Sarah Raja is a 3L J.D. Candidate at Osgoode Hall Law School, enrolled in Professor David Vaver’s 2021-2022 Intellectual Property Law & Technology Intensive Program. As part of the course requirements, students were asked to write a blog on a topic of their choice.

Background

In 1949, C.W. Scott-Giles created an illustration called Upper Hell. It was published in the U.K. as part of Dorothy L. Sayers’ translation of Dante’s Inferno, the first part of the epic poem, Divine Comedy. Seventy-two years later, Scott-Giles’ granddaughter, Jocelyn Bundy, noticed that “an image virtually identical” to Scott-Giles’ illustration was being used in the popular grunge-rock band Nirvana’s merchandise and brought a copyright infringement lawsuit in the United States for damages covering decades of sales.

A Brief Overview

The issue in this case surrounded what one might call, excuse the pun, Territorial Pissings. Namely, it highlights the complexities in determining whether a foreign work is protected under U.S. copyright law, a particularly confusing subject for foreign works published before 1978.

Bundy argued that the work, as created by a British citizen and published in the U.K., is protected as a foreign work under U.S. copyright law. Relying on Twin Books Corporation v Walt Disney Company (Twin Books), Bundy argued, “a foreign publication of a foreign work, before January 1, 1978, without notice of United States copyright, did not put the foreign work into the public domain in the U.S.”

The defendants argued, among other things, that Bundy erred in application of Twin Books, because it does not apply to works which have been published in the U.S. They brought evidence of U.S. publications of the translated work, which lacked both registration and copyright notice in Scott-Giles’ name. Drawing on Twin Books, they argued, “a publication of a work in the United States without the statutory notice of copyright fell into the public domain,” as per the U.S. Copyright Act of 1909. If you’re understandably confused by the myriad of copyright laws surrounding this issue, this summary published by Cornell University may be helpful.

There was Something (else) in the Way of Bundy’s success. The defendants moved to dismiss the complaint altogether on forum non conveniens, arguing that the U.K. is a more appropriate jurisdiction for the proceeding because, among other things, the plaintiff is a British citizen, the copyright is governed by U.K. law, and key witnesses to the case reside in the U.K.

The Outcome

On October 21, 2021, U.S. District Judge Fischer granted the defendant’s motion, stating, “Given that one of the core disputes in this case concerns ownership of the copyright in the Illustration, which is governed by U.K. law, the U.K. likely has a stronger interest, on balance, in this case.” The order was given under various conditions, including the defendants must agree to submit themselves to the jurisdiction of the U.K. if the action is filed by Bundy in the U.K. and must satisfy a judgement given in the U.K. The defendants were given to file their decision regarding acceptance of the conditions of the order.

While Bundy’s lawyers are disappointed with the decision, it looks like further litigation is In Bloom. They’re considering their options to move forward, including a possible appeal or refiling the suit in the U.K. Given the complex set of facts regarding ownership in this case, Bundy will likely need to prove Scott-Giles’ ownership of the illustration in any future litigation, which won’t be easy. Not only is her now deceased grandfather unable to testify, but the defendants have found ample evidence to disprove ownership. This includes correspondence between Scott-Giles and Sayers showing that Sayers engaged Scott-Giles to produce the illustrations, agreed to pay him for his work, and Sayers drew the originals of the drawings credited to Scott-Giles, engaging him largely because of his skill in inking the pencil drawings. If Bundy decides to refile the suit in the U.K., she will need to strengthen her claims to ownership of the illustration.

An Age-Old Debate

Lengthy copyright terms have been regularly debated. We’ve all heard that extended removal of works from the public domain can really Drain You of creativity, especially in the copyright world where present creativity is inspired by past works. In 2009, economist Rufus Pollock estimated that the optimal copyright term is 15 years – far from the author’s life + 70 years in the U.S. (and soon Canada). Bundy v Nirvana L.L.C. highlights further questions: Should successors of authors benefit from works they did not put any skill, labour, or judgment into? Should copyright be treated like land or personal possessions? Should the decades of uncontroversial use have any effect on copyrights? As one Twitter user succinctly and sarcastically wrote, “The granddaughter of the creator of a 72-year-old illustration is suing Nirvana over a 32-year-old t-shirt, because copyright law makes sense.

Leave a reply

Your email address will not be published. Required fields are marked *

twelve − 5 =