April 28, 2017

Just Because You Own a Copy Doesn’t Mean You Own the Copyright

By Bryan K. Wheelock, Principal

The Estate of Vivian Maier has sued Jeffrey Goldstein and his company Vivian Maier Prints, Inc. for copyright infringement.  Vivian Maier was an American street photographer who worked for about forty years as a nanny in Chicago’s North Shore while pursuing photography during her spare time.  Chicago art collector Jeffrey Goldstein accumulated a significant quantity of Maier’s work, including 17,500 negatives, 2,000 prints, 30 homemade movies, and numerous slides.  Before selling his collection in 2014, Goldstein formed Vivian Maier Prints, Inc., to sell prints.

On April 20, 2017, the Estate of Vivian Maier sued Goldstein for “copyright infringement, trademark infringement, false designation of origin, unfair competition, unfair trade practices, and cybersquatting under the Copyright Act, 17 U.S.C. §§101 et seq., the Lanham Act, 15 U.S.C. §§1051 et seq., and the laws of the State of Illinois, based on, among other acts, Defendants’ unlawful copying, distribution, sale, and public exhibition of the Estate’s copyrighted works, Defendants’ use of the Estate’s registered mark VIVIAN MAIER, and Defendants’ false portrayal of their activities as officially endorsed or connected with Vivian Maier or her estate.”

Goldstein may or may not have been aware of 17 USC §102, which provides:

Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied.  Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

This statute, which on some levels is intuitive, often leads to some surprising results.  Most of us understand and accept that buying a book doesn’t give the purchase the right to make a movie based upon the purchased book.  However, it is less intuitive that the purchaser of a painting cannot hang the picture in a public place (because of the public display right), or the purchaser of a movie on DVD cannot show the movie in public (private showing is not prohibited, and is impliedly licensed in any event).  Does the owner of negatives get to make prints of the negatives — the only real use for them?  That would be making a copy of the image, and is arguably an infringement.

Given that Goldstein sold his collection nearly three years ago, and the copyright statute has just a three year statute of limitations, what does the Estate hope to accomplish with the filing?  Well, among other things, it may be a grab for whatever Maier materials Goldstein still has:

Perhaps getting back the materials that Goldstein accumulated is the ultimate goal.  The separation of copyright from the physical work works both ways: while the owner of the physical image can’t exploit the image without access to the copyright rights, the owner of the copyright rights in an image can’t exploit that copyright without access to the physical image.

The Estate also complains about Goldstein using the name Vivian Maier in selling prints of Vivian Maier’s photographs.  The Estate obtained an assignment of Supplemental Registration No. 4057824 on VIVIAN MAIER from another collector of Vivian Maier images, John Maloof, and on March 29, 2017, applied for another registration on VIVIAN MAIER (Application No. 4057824).  Is is really infringement of the Estate’s right to call a VIVIAN MAIER print a VIVIAN MAIER print?