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IP/Entertainment Case Law Updates

Noland v. Galerie Michael Janssen

District court holds that artist could not meet “predicate act” exception permitting extraterritorial application of U.S. Copyright Act where all allegedly infringing acts occurred abroad, dismissing artist’s copyright infringement action.

Plaintiff Cady Noland, a visual artist who created a wooden sculpture titled “Log Cabin Façade,” sued a German art collector, Wilhelm Schurmann, and two German art galleries, KOW and Galerie Michael Janssen, for copyright infringement, alleging that Schurmann and KOW’s replacement of the sculpture’s wooden pieces constituted the creation of an unauthorized derivative copy, and that the Janssen Gallery’s later contract to sell the sculpture to an American collector violated her moral rights under the Visual Artists Rights Act and the German Copyright Act.

In 1990, Schurmann purchased “Log Cabin Façade,” brought it to Germany, and displayed the sculpture in a variety of locations, including at a museum in Aachen, Germany, for 10 years. According to the Second Amended Complaint, the Aachen museum exhibited the sculpture outdoors, causing its wooden components to rot and deteriorate. After Schurmann and KOW replaced the rotted pieces with new wooden parts, they retained the Janssen Gallery and its owner, Michael Janssen, to help them sell the work.  

The Janssen Gallery subsequently exhibited “Log Cabin Façade” in Berlin and, on behalf of Schurmann, found an American collector interested in purchasing the sculpture for $1.4 million. Because plaintiff “refuse[d] to acknowledge or approve of the legitimacy of the Work” and pursuant to the contract of sale, the American collector exercised the right to have Janssen buy back the work. The sculpture was never shipped to the United States.

Based on these acts, plaintiff sued the German defendants, alleging that their destruction of the original “Log Cabin Façade,” replacement of the wooden pieces of the work, continued display of the “copied” work and efforts to sell the work constituted violations of the copyright laws of the United States and Germany. On a motion to dismiss, defendants argued that all of their alleged conduct occurred exclusively in Germany and thus plaintiff failed to state an actionable claim under the U.S. copyright laws. The court agreed and dismissed the copyright claims on the grounds that the U.S. Copyright Act does not have extraterritorial application. The court also declined to exercise supplemental jurisdiction over plaintiff’s remaining claims based on the German Copyright Act and negligence claims under New York and German law.

After reaffirming that copyright laws do not generally have extraterritorial application, the court noted that the “predicate act” exception could result in infringement liability under U.S. law where “an individual, who commits an act of infringement in the U.S. . . . permits further reproduction outside of the U.S.” For the “predicate act” exception to apply, plaintiff must first demonstrate that “the domestic predicate act was itself an act of infringement in violation of the copyright laws.” Contrary to plaintiff’s contention, neither defendants’ purchase of wood nor their attempted sale of the sculpture to a U.S. art collector constituted acts of infringement. The court noted that plaintiff did not allege that defendants actually imported any infringing works into the United States. That the contract of sale with the American collector included a New York choice of law provision and contemplated delivery of the sculpture to Ohio were insufficient on their own to establish that any such “distribution” occurred within the United States.

Summary prepared by Tal Dickstein and Mary Jean Kim

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