Cordon Art B.V.
and the M.C. Escher Foundation vs. Jerome Walker d/b/a Rock Walker
District Court - Case No. 950863 R
In 1996, the M.C.
Escher Company B.V. (formerly known as Cordon Art B.V.) and The M.C.
Escher Foundation started legal proceedings against a
Mr. Rock Walker for
amongst other issues, copyright infringement.
On September 20,
1996 United States District Judge, Mr. John S. Rhoades
following judgement against Mr. Rock Walker:
agents, servants, representatives, attorneys, employees, successors,
assigns, as well as all entities in any way controlled by or
participated in by Defendant, and all those in active concert or
participation with any of them who receive notice of this Consent
Judgement directly or otherwise, are hereby permanently enjoined and
restrained anywhere in the world from:
using, reproducing any work of M.C. Escher, and/or preparing any
derivative work(s) based thereon or authorizing any third party to
imitate, copy, use, reproduce any work of M.C. Escher, and/or
prepare any derivative work(s) based thereon. Etc.,etc.
It is rare for
visual arts copyright cases to end up at court. Even more rare for
the trial to be fully conducted and judgment given; roost copyright
cases are settled out of court. A recent case tried in the United
States has important beneficial effects for European artists whose
works may be thought not to be protected by US Copyright Law. It
concerned the estate of MC Escher, some of whose works were
reproduced and marketed in the US without licence or other authority
from the artist's copyright heirs.
In 1968 Escher established the 'MC Escher Foundation' in The
Netherlands to curate and promote his works via publications,
exhibitions, lectures and so on. In 1972 Escher died. Copyright in
his works will expire at the end of 2042. In 1984 all copyright in
Escher's works was transferred to the ownership of 'Cordon Art BV, a
company incorporated in The Netherlands. Cordon Art sells copyright
licences authorising the merchandising of Escher's images.
A US merchandiser, Rock Walker, manufactured large numbers of
articles which carried representations of 24 different Escher images
and marketed them throughout the US. Moreover, Walker retailed these
articles under the trading name ‘The MC Escher Museum Foundation'.
Neither Cordon Art nor the MC Escher Foundation had authorised the
reproduction of the images nor the use of the real Foundation's
Cordon Art BV and the MC Escher Foundation brought proceedings last
year against Rock Walker. The case was heard in the US District
Court for Southern California (and, for those interested, is
reported in 41 U.S.P.Q. 2D, 1224). The plaintiffs alleged copyright
infringement of Escher's 24 images, including celebrated works such
as 'Drawing Hands', 'Relativity' and 'Waterfall'; trademark
infringement and unlawful interference with the plaintiffs business
through the encouragement by Walker to Cordon Art's copyright
licensees not to pay royalties to them.
The Copyright Issue
Under US Copyright Law between 1909 and 1978, visual works published
in the US were required to display a copyright notice or, in certain
circumstances, to have been registered for copyright protection
purposes. If such works did not carry such a notice, or were not
registered, they did not have the protection of US Copyright Law.
However, in 1992 US Copyright Law was amended. The important changes
give effect, in US Copyright Law, to the most recent series of
intergovernmental trade agreements made under GATT (the General
Agreement on Tariffs and Trade). In essence, the changes gave
copyright protection in the US back to non-US copyright owners whose
works had lost protection through failure to comply with the
procedural requirements for copyright notice or registration. Such
copyright protection was restored, so long as: the work in question
was made by a national of a country which was a signatory to the
international Berne Copyright Convention, and the work was still
protected by copyright law in the country where copyright was first
These changes in US Copyright Law were at the heart of the dispute.
Walker agreed that the 24 Escher works had lost their copyright
protection in the US through failure to display the required
copyright notice, and that he was therefore free to reproduce the
images without authorisation from the plaintiffs.
One of the most interesting aspects of the case centred on the way
the works had been made. The final works in existence today started
life as graphic representations made with pencil and paper. Escher
then reproduced these images by creating woodcuts or lithography
stones, referred to as the 'master blocks', from which he then
pulled prints by hand to create the final limited editions.
Ownership of copyright needs to be determined by reference to the
making process. The images contained in Escher's original pencil
drawings automatically acquired copyright protection in The
Netherlands; the further processes described above reproduced these
copyright images into different media: the master blocks and
Walker argued that Escher's prints had been published in the US
without the necessary copyright notices, and were not therefore
protected by US Copyright Law. The plaintiffs begged to differ.
Their arguments were fascinating: the original graphic drawings and
roaster blocks were never published in the US- only the resulting
limited edition prints (which Walker had seen published but not
bearing copyright notices) - and therefore were still protected by
US Copyright Law. Their further or alternative argument (if
necessary) was that, even if copyright had been lost through failure
to publish a copyright notice, the copyright had been restored in
1992 through amendments to the US Copyright Act 1976, enacted by
Congress following the GATT agreement. These were the issues. Walker
freely admitted reproducing Escher's works without authority.
The court found in favour of the plaintiffs, holding that Walker's
argument failed because the original drawings and master blocks were
protected by copyright law at all times in the US. Moreover, the
court ruled that, even if copyright had been lost at any time prior
to 1992, it had been restored by the amendment to US Copyright Law
enacted by Congress following the GATT agreement.
The court's reasons were as follows: the original drawings and
roaster blocks were never published in the US, and therefore were
protected by US Copyright Law. The final limited edition prints
(that were published in the US) were effectively reproductions based
almost entirely on the original drawings and master blocks, and were
not therefore substantially 'new' works that would have required
copyright notices in order to be protected.
As for the amendment to US Copyright Law following the GATT
agreement, the court explained that Escher's prints fulfilled the
three criteria required by US law after 1992 to prove that any lost
copyright had been revived: the works were still protected under
Dutch Copyright Law; any copyright lost in the US was because of
failure to comply with US procedures (ie no copyright notice) and
Escher was at all times a Dutch national entitled to the protection
of the Berne Copyright Convention (because The Netherlands is a
signatory, as is the US).
Thank goodness UK Copyright Law is more straightforward than in the
US. We have no legal requirement that works have to carry a
copyright notice or have to be registered in order to be protected
against copyright infringements. In the UK, copyright is
automatically acquired by the artist as soon as he or she makes a
work. That said, it is sensible for the artist to endorse upon the
work, preferably on its face, margin or bleed: ©; Year of making;
initials or name (eg © 1997 Henry Lydiate). Such an endorsement or
notice is required in any event for works to be protected outside
the UK in countries which have also signed the Berne Copyright
Convention (which includes most developed countries in the world).
The case also sets a precedent for European (including UK) artists
and their heirs who understood their copyright work to have lost
protection against infringement in the US through any previous
failure to register or display a copyright notice there. Such 'lost'
copyrights now appear to have been restored.
© Henry Lydiate 1997