Clash of the sculpted titans: Ninth Circuit affirms Renoir case

Societe Civile Succession Richard Guino v. Renoir, 2008 WL 5157719 (9th Cir.)

The district court’s rulings are discussed here and here: this is a wonderfully chewy case, but not much goes on in the appeal, even though the Societe appealed practically everything—the verdict against it on Renoir’s Lanham Act false advertising claim, the associated equitable relief, the fee awards on the Lanham Act claim and discovery sanctions, and the district court’s refusal to award prejudgment interest on the Societe’s successful copyright claim—and Renoir also appealed the finding of willful copyright infringement. (There’s a separate published opinion affirming the basic copyright infringement claim, which I haven’t read yet.)

The court found the jury’s verdict on false advertising was supported by substantial evidence that the Societe made a false statement in commercial advertising about its own or another’s product. The court of appeals also found the injunctive relief proper: in order to display the Societe’s Guino reproductions to the public, they had to be labeled as “unauthentic and/or unauthorized duplicates of original Renoir-Guino works.” (Any bets on which word the Societe might pick?) But this was limited relief: the Societe could still sell the sculptures if properly labeled. Defendant Renoir’s copyright infringement didn’t count as unclean hands disentitling him to equitable relief, because copyright and false advertising are different.

The court also affirmed the fee award related to Societe’s Lanham Act claims. The Societe never tried to prove those claims, but waited until trial to abandon them, without having any evidence of the basic elements of confusion or damages. It should have dismissed the claim earlier; fees were properly awarded. Likewise with the discovery sanctions.

Prejudgment interest on the Societe’s successful copyright infringement claim was properly denied. Prejudgment interest may be awarded where infringement is undisputed, to discourage delay and compensate the owner for the time value of money. But this wasn’t a case of indisputable copyright infringement because of confusion surrounding the legal standard for whether the works at issue were in the public domain in the US. Defendants relied on Copyright Office circulars and treatises to show that the works were in the public domain. While their arguments failed, there was no abuse of discretion in denying prejudgment interest.

At the same time, the jury could properly have found willful copyright infringement. (In other words, on these facts, there was a lot of room for disagreement when it comes to things that will increase or decrease an award. The judge apparently found the copyright claim reasonably disputable, even as the jury found the conduct willful.) Willful here means knowing that one’s conduct is infringing; one who believes reasonably and in good faith that conduct is not infringing does not act willfully. Renoir, however, identified no evidence in the record of his belief that the sculptures were in the public domain in the US, so the court of appeals held his argument waived. (Why not rely on the Copyright Office circulars and treatises? If evidence of his belief in those is also required, does that mean he’s likely to have to waive attorney-client privilege to show lack of willfulness?) Anyway, there was substantial evidence of willfulness, including a French judgment against Renoir for violating Societe’s rights in the sculptures. Renoir testified that he knew about the judgment yet still sold molds and castings for the sculptures. A previous judge in the case had stated that applying the relevant 9^th Circuit case to the sculptures was “unreasonable” and that there were “substantial grounds for difference of opinion” on copyright status. But the presiding judge refused to allow those statements to be given to the jury, and the court of appeals found no abuse of discretion: the judge’s statements would simply be improper testimony on issues of law. (This makes more sense: the question is what Renoir thought at the time he took the allegedly infringing acts at issue, and the judge’s statements aren’t good evidence of that.)