Above: Plaintiff Chuck Close.
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The Ninth Circuit has pending before it for the second time a significant challenge to the validity of the California Resale Royalty Act (“CRRA”) stemming from three related cases: Sam Francis Foundation v. Christie’s, Inc., Case No. 16-56235 (9th Cir. notice of appeal filed Aug. 26, 2016); Chuck Close v. Sotheby’s, Inc., Case No. 16-56234 (9th Cir. notice of appeal filed Aug. 26, 2016); and Sam Francis Foundation v. eBay Inc., Case No. 16-56252 (9th Cir. notice of appeal filed Aug. 26, 2016).

These cases will require the Ninth Circuit to examine the scope of the “first sale doctrine” and determine whether it is at odds with California’s attempt to establish economic rights for visual artists on subsequent sales of their works.

I.  Doctrinal Background

A. The CCRA

California enacted the CRRA in 1976 for the purpose of offering visual artists similar financial protections to artists in other media.1  The California statute codifies droit de suite (literally, “a right to follow”), which provides visual artists with a royalty each time one of their works is resold.2  The rationale, at least in part, is that visual artists are often disadvantaged by a time-lag between a work’s initial sale and the ultimate realization of that work’s value.3

To combat this perceived inequity, section 986(a) of the CRRA provides that, subject to certain limitations, “[w]henever a work of fine art is sold and the seller resides in California or the sale takes place in California, the seller or the seller’s agent shall pay to the artist of such work of fine art or to such artist’s agent 5 percent of the amount of such sale.”4

Notwithstanding several attempts by members of the United States Congress to enact federal resale royalty legislation,5 the CRRA represents the only U.S. codification of such a right at present.6  Nevertheless, droit de suite has been codified in several jurisdictions outside the U.S., including France, England and Australia.7

B. The First Sale Doctrine

Section 109(a) of the Copyright Act of 1976 enacts what is widely known as the “first sale doctrine.”8  Under the first sale doctrine, the lawful owner of a copyrighted work is entitled to dispose of his or her ownership in that property without acquiring the permission of the copyright owner.9  “[O]nce a work has been sold, the copyright owner has no further right to control the resale of the work, and the new owner is free to dispose of the work as he or she chooses.”10  As a matter of policy, the first sale doctrine is an embodiment of the rule against restraints on alienation, a central tenet of property law from time immemorial.11  The question raised by these cases is whether a resale royalty requirement imposes such a restraint on alienation of copyrighted works of art.

II.  Procedural Background

In 2011, plaintiffs The Sam Francis Foundation, the Estate of Robert Graham, Chuck Close and Laddie John Dill together filed putative class action lawsuits against each of Christie’s, Inc., Sotheby’s, Inc. and eBay, Inc., alleging “the willful and systematic violation by [each defendant] of its California law obligation [under the CRRA] to pay royalties to U.S. artists and their estates on artworks sold either in California or at auction by California sellers.”12

The defendants moved to dismiss, articulating several bases for the invalidity of the CRRA, including that the CRRA violated the Commerce Clause of the U.S. Constitution, violated the Takings Clause of the Fifth Amendment, and was preempted by the Copyright Act of 1976.13  In 2012, the Central District of California granted dismissal on the sole basis that the CRRA violated the dormant Commerce Clause by “controlling commerce ‘occurring wholly outside the boundaries’ of California even though it may have some ‘effects within the State.’”14

In June 2012, the plaintiffs appealed the Central District’s order. In 2015, sitting en banc, the Ninth Circuit concluded that, while the CRRA “facially violates” the dormant Commerce Clause insofar as it regulates the sale of fine art taking place outside the state of California, “the offending provision [of the CRRA] is severable from the remainder of the Act.”15  Thus, the CRRA remained valid as to in-state sales of fine art.16  Since the district court had ruled that the CRRA as a whole was invalid, the Ninth Circuit remanded for a determination on the defendants’ alternative grounds for dismissal.

On February 1, 2016, the defendants submitted a second round of motions to dismiss, largely renewing their previously-submitted bases for dismissal.17  In an April 2016 order granting the defendants’ motions to dismiss, the Central District of California held that the CRRA was invalid as preempted by federal copyright law.18  The court determined that the CRRA conflicted with the intent of Congress, which had demonstrated its desire to “keep downstream sales of copyrighted works [ ] free from restrictions imposed by copyright holders” when it enacted section 109(a).19  The court also found that the CRRA was expressly preempted by section 301(a) of the Copyright Act of 1976, which dictates that the rights contained in section 106 of the 1976 Act are the “exclusive rights of copyright holders.”20  This order is the decision from which the current appeals stem.

III.  Current Challenge to the CRRA

Critical to the arguments articulated in both parties’ appellate briefs lies one crucial sub-issue: how broadly the first sale doctrine should be interpreted.

Relying on the Ninth Circuit’s 1980 Morseburg decision, the plaintiffs contend in their opening brief that the district court erred in finding a conflict between the CRRA and the Copyright Act of 1976:  “The first sale doctrine prevents copyright holders from prohibiting or controlling downstream distribution of copyrighted works. . . .  It has nothing to do with the right of copyright holders to possess a financial interest in the proceeds of a sale.”21  The plaintiffs reiterate this argument in speaking to the district court’s determination that the CRRA was expressly preempted by section 301(a) of the 1976 Act, arguing that the CRRA does not create an “equivalent” right to those provided for in section 106; therefore, section 301(a) does not apply.22

In contrast, the defendants favor an expansive reading of the first sale doctrine in their answering brief. “Under the first sale doctrine, once a visual artist sells artwork, the artist loses the ability to interfere with future sales.”23  In support of this interpretation, the defendants look to Supreme Court and Ninth Circuit precedent addressing the first sale doctrine:  Kirtsaeng, Quality King, and Omega v. Costco.24  The defendants rely on these decisions for the proposition that the loss of the copyright holder’s exclusive right to control distribution of a work of art after its initial sale should be read to include a loss of the copyright holder’s ability to profit from subsequent sales.25  In other words, the defendants argue that “the Copyright Act intends [downstream resale transactions of works of fine art] to be unrestricted.”26

Addressing these arguments, the plaintiffs’ reply brief focuses on the Supreme Court’s recent Lexmark decision.27  In that patent case, the Supreme Court considered the scope of the “exhaustion doctrine,” which is essentially the patent law analog of the first sale doctrine.28  The CRRA plaintiffs’ reply brief cites dicta from the Supreme Court’s Lexmark opinion standing for the proposition that contract rights and patent rights exist side by side, and that while the sale of a product may extinguish the patent holder’s patent rights, it does not terminate the rights preserved by the patent holder in contract.29  Extrapolating from the Court’s rationale, and transposing it from the context of patent law to that of copyright law, the CRRA plaintiffs argue that, just as contract entitlements endure despite the first sale doctrine, statutory entitlements like the CRRA should not be terminated by the first sale of a copyrighted work.30

The CRRA plaintiffs’ reliance on Lexmark is particularly intriguing, given that the opinion also includes rhetoric that the CRRA defendants pointed to in support of their position – e.g., Chief Justice Roberts’s comment that “extending [intellectual property] rights beyond the first sale would clog the channels of commerce.”31  In any event, it will be interesting to see whether the Ninth Circuit applies Lexmark in determining these cases – and if so, to whose benefit.

IV.  Looking Forward

Despite the Ninth Circuit’s previous holding as to the in-state-only applicability of the CRRA, the Ninth Circuit’s decision on the current appeals has potential implications reaching beyond California’s borders. If the Ninth Circuit decides in favor of the plaintiffs, holding that the CRRA is not preempted by the Copyright Act of 1976, it may inspire other states to enact similar legislation codifying droit de suite. If the defendants prevail, and the CRRA is struck down, it may re-ignite interest in a federal codification of droit de suite that amends the first sale doctrine.

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1. See Anna J. Mitran, Note, Royalties Too?: Exploring Resale Royalties for New Media Art, 101 Cornell L. Rev. 1349, 1354 (2016); John E. McInerney III, California Resale Royalties Act: Private Sector Enforcement, 19 U.S.F. L. Rev. 1, 5 (1984).
2. See David E. Shipley, Droit de Suite, Copyright’s First Sale Doctrine and Preemption of State Law, 39 Hasting Commnc’s & Enter. L. J. 1, 2 (2017).
3. See McInerney, supra note 1, at 5; Mitran, supra note 1, at 1354.
4. Cal. Civ. Code § 986(a).  As discussed further below, the Ninth Circuit has ruled that the language “the seller resides in California or” facially violates the dormant Commerce Clause and should be read out of the statue. See infra nn.15–16 & accompanying text.
5. See Mitran, supra note 1, at 1363.
6. See Shipley, supra note 2, at 7; see also Droit de Suite: The Artist’s Resale Royalty, December 1992, A Report of the Register of Copyrights, 75 (“[Since the CRRA was enacted, d]roit de suite legislation has been introduced in Connecticut, Florida, Illinois, Iowa, Maine, Michigan, Nebraska, New York, Ohio, Rhode Island, and Texas.  To date, none has become state law.”).
7. See generally Herbert Lazerow, Art Resale Royalty Options, 63 J. COPYRIGHT SOC’Y 201 (2016).
8. See 17 U.S.C. § 109(a).
9. See McInerney, supra note 1, at 5; Shipley, supra note 2, at 2.
10. McInerney, supra note 1, at 17 n.110.  This entitlement of the new owner to resell the copyrighted work does not affect ownership of the copyright in that work.  Thus, the copyright holder’s rights and the new owner’s rights coexist within the same framework, without conflict with one another. Id.
11. See Kimberley Byer, Note, The Death of the First Sale Doctrine, 11 J. on Telecomm. & High Tech. L. 389, 392 (2013).
12. Complaint ¶ 1, Sam Francis Found. v. Christie’s, Inc., No. 11-08605-MWF-FFM (C.D. Cal. Oct. 18, 2011), ECF No. 1; Complaint ¶ 1, Estate of Robert Graham v. Sotheby’s, Inc., No. 11-08604-MWF-FFM (C.D. Cal. Oct. 18, 2011), ECF No. 1; Complaint ¶ 1, Sam Francis Found. v. eBay Inc., No. 11-06822-MWF-PLA (C.D. Cal. Oct. 18, 2011), ECF No. 1.  The Sam Francis Foundation was not a named plaintiff in the suit against Sotheby’s.
13. See, e.g., First Joint Motion to Dismiss, Christie’s, No. 11-08605-MWF-FFM, ECF No. 15.  The defendants’ motions also argued that the complaints failed to state a claim under Federal Rule of Civil Procedure 12(b)(6).
14. E.g., Order Granting First Joint Motion to Dismiss at 16, Christie’s, No. 11-08605-MWF-FFM, ECF No. 38.
15. Sam Francis Found. v. Christies, Inc., 784 F.3d 1320, 1322 (9th Cir. 2015).
16. See id. at 1326.
17. E.g., Second Joint Motion to Dismiss, Christie’s, No. 11-08605-MWF-FFM, ECF No. 103.
18. E.g., Civil Minutes: Order re Motions to Dismiss at 10, Christie’s, No. 11-08605-MWF-FFM, ECF No. 113.
19. Id.
20. Id. at 17 (quoting Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006)).  The Central District also held that (i) the CRRA did not constitute a Fifth Amendment “taking”; (ii) eBay was not a proper defendant (i.e., a seller of fine art or seller’s agent) under the CRRA; (iii) punitive damages were not available under the CRRA; (iv) the Estate of Robert Graham had no capacity to sue, and was thus not a proper plaintiff; (v) the complaints adequately plead sufficiently plausible facts under Rule 8; and (vi) Sotheby’s Motion to Dismiss for lack of subject-matter jurisdiction was more appropriately adjudicated on a motion for summary judgment.
21. See, e.g., Appellants’ Opening Brief at 27, eBay, No. 16-56252 (9th Cir. Mar. 8, 2017), ECF No. 8 (citing Morseburg v. Baylon, 621 F.2d 972 (9th Cir. 1980)).  In Morseburg, an art dealer who became obligated to pay royalties under the CRRA brought suit to challenge the validity of the act, arguing, among other things, that the CRRA was preempted by the first sale doctrine codified in the Copyright Act of 1909.  621 F.2d at 974-75.  The Morseburg court, upholding the validity of the CRRA, determined that there was no preemption under the 1909 Act. Id. at 978.  However, the court explicitly stated that it was not addressing the issue of CRRA preemption by the 1976 Copyright Act. Id. at 975.
22. See Appellants’ Opening Brief at 41-47; see also 17 U.S.C. § 301(a) (establishing that “all legal or equitable rights that are equivalent to any of the exclusive rights . . . specified by section 106 . . . are governed exclusively by this title” (emphasis added)).
23. See Joint Brief of Appellees Christie’s & Sotheby’s at 14, No. 16-56235 (9th Cir. June 20, 2017), ECF No. 26.
24. Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (2013); Quality King Distribs., Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135 (1998); Omega S.A. v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015).
25. See Joint Brief of Appellees Christie’s & Sotheby’s at 14-18.
26. Id. at 20.
27. See, e.g., Appellants’ Reply Brief at 2-7, Sotheby’s, No. 16-56234 (9th Cir. Aug. 21, 2017), ECF No. 44 (discussing Impression Prods., Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523 (2017)).
28. Cf. Lexmark, 137 S. Ct. at 1527 (analogizing the exhaustion doctrine and the first sale doctrine).
29. See Appellants’ Reply Brief at 5.
30. See id. at 6-7.
31. Joint Brief of Appellees Christie’s & Sotheby’s at 18 (quoting Lexmark, 137 S. Ct. at 1532); see also id. (quoting Lexmark, 137 S. Ct. at 1534 (characterizing the exhaustion doctrine as “reflect[ing] the principle that, when an item passes into commerce, it should not be shaded by a legal cloud . . . as it moves through the marketplace”)).

On July 11, 2017, Hughes Hubbard & Reed LLP hosted a brown-bag lunch on the business and law of auction houses.  The Fine Arts Committee of the New York State Bar Association’s Entertainment, Arts & Sports Law Section sponsored the event.

The lunch’s panel included Sherri Cohen, Director of Trusts and Estates at Bonhams; Margaret J. Hoag, Vice President & Senior Counsel at Christie’s; Jonathan Illari, General Counsel, Americas at Phillips; Daniel H. Weiner, Partner at Hughes Hubbard & Reed LLP; and Frank K. Lord IV, Partner at Herrick Feinstein LLP.  These experts in the industry provided different perspectives on auction sales of art.  Lena Saltos, Associate General Counsel at URBN, and Elizabeth Urstadt of Stropheus, LLC, moderated.  The discussion ranged from the business side of auction houses to legal challenges that arise in the art world.

In making business decisions, auction houses consider an array of questions distinct to the field.  When asked to respond to art dealer Larry Gagosian’s comment that, in a single sales transaction, he represents both the buyer and the seller of an artwork, the panel emphasized that an auction house’s primary allegiance is to the seller.  Sherri Cohen noted that auction houses must navigate situations in which the client has expressed objectives that do not necessarily result in selling to the highest bidder, and gave an example of a client who specified that the art she was selling must be used in an educational context once purchased.  Ms. Cohen also noted that appraisals should be used only for the specified purpose provided in the report and that valuations for the same property can vary widely; for instance, for insurance replacement cost verses fair market estate tax value.  Ms. Cohen explained that an auction house will provide complimentary auction estimates and once consigned ship the work to a known expert for authentication.

Maggie Hoag and Jonathan Illari discussed how the current trend of moving sales online poses new challenges for auction houses, as their historic business model depends on in-person interactions, and artwork seen in person can differ greatly from online reproductions, leading to greater potential for buyers’ dissatisfaction.  Auction houses also experience competitive pressures from each other — Dan Weiner shared that he had suggested a reverse auction (where the auction houses bid for a consignment) for a client who was trying to decide between auction houses, and ironically, one of those auction houses expressed deep reservations about participating in such a process.

With regard to a few of the ongoing legal and compliance issues that arise, auction houses continue to be vigilant in detecting fraud, copyright violations and other unlawful practices surrounding the sale of art.  They must be wary of perpetuating fraudulent artwork by putting it up for auction.  Dan Weiner and Frank Lord IV noted that, just because an artist copies another artist’s work, he or she does not necessarily break any laws, even if he or she uses the original artist’s name.  Whether the auction house’s actions in selling that copied work are legal depends on how it represents the artwork.  Specifying that a piece is from the school of a particular artist, as opposed to by that artist, may help to clarify any confusion.  However, liability can arise if auction houses themselves illegally reproduce images of artworks; this has happened when an auction house included images in its catalogue without permission of the copyright holder.  Another area of legal concern is ensuring that items sold privately by auction houses are subject to the same standards as objects consigned for public auction.  For example, if an object’s questionable provenance or title would preclude it from public sale by an auction house, that auction house would also be unable to broker a private sale for the object.

The discussion covered various challenges that auction houses face today.  The panel of experts conveyed that they both look to established practices and think creatively when answering questions that arise, whether as attorneys working in-house at an auction house or as their outside counsel.

Carolyn Harbus assisted with drafting this post.