Fame came to Henry Joseph Darger (1892-1973) - widely regarded as one of America's greatest self-taught artists - posthumously. In life, he was a recluse, and his genius and prodigious output went undetected. Today, his works hang in the permanent collections of MOMA, the American Folk Art Museum, and the Art Institute of Chicago; his illustrations routinely sell for six figures; and exhibitions have been mounted about his influence on other artists.

A case in the Northern District of Illinois raises the question of who should get to control the artist's valuable copyrights (and, to some degree, his legacy). Should it be the landlords who discovered (and salvaged) his work and have been championing it ever since? Or the artist's distant relatives who came forward to stake a claim only recently, nearly half a century after the artist died intestate? 

Background

Between 1930 and 1973, Darger lived in a boarding house on Chicago's North Side owned by Nathan and Kiyoko Lerner. During his four decades in residence, Darger created a massive trove of literary and artistic works, including his magnum opus The Story of the Vivian Girls, in What Is Known as the Realms of the Unreal, of the Glandeco-Angelinian War Storm, Caused by the Child Slave Rebellion, a 15,000-page epic fantasy manuscript, with approximately 300 illustrations, about a civil war between children and abusive adults.

When Darger became too ill to continue living on his own, he moved to a nursing home. According to Kiyoko Lerner, her husband Nathan visited Darger shortly before he died to discuss the possessions left behind in the apartment he would never occupy again:

"Nathan asked him at one point if he needed anything from his room because Nathan wanted to clean up the room in order to remodel the third floor as one apartment for a better income. He replied, 'I have nothing I need in the room. It is all yours. You can throw everything away.' With this permission, we started to clean up his room."

In the process of cleaning out the room, the Lerners discovered Darger's works (and removed a lot of trash, including 80 bottles of Pepto Bismol). Without the Lerners, these works likely would have ended up in a landfill.

In June 2022 - 49 years after Darger died - a probate court in Cook County approved Christen Sadowski to be the administrator of Darger's estate and gave him the green light to begin the process of collecting the estate's assets on behalf of approximately 50 heirs (most of them Darger's first cousins twice or three times removed). The court's opinion is silent on why it took the family so long to come forward. However, the New York Times reports that the heirs were tracked down by a photographer who shared with them a law review note (yes, a student note!) that raised questions about the legitimacy of the Lerners' claim to own the copyrights in Darger's works. See Elyssa Westby, “Henry Darger’s “Realms of The Unreal” - But Who in The Realm Is Kiyoko Lerner?,” 16 Nw. J. Tech. & Intell. Prop. 209 (2018).

Shortly thereafter, the Darger estate sued Kiyoko Lerner, entities affiliated with her, and the estate of her deceased husband Nathan. The estate seeks a declaratory judgment that it (and not the defendants) owns the copyright in Darger's corpus. In addition, the estate asserts claims of copyright infringement, unfair competition, and deceptive trade practices.

The Court's Decision

The defendants moved to dismiss the complaint under Rule 12(b)(6). I will focus on the copyright claims.

Timeliness.  

First (no surprise here), the defendants argued that the copyright claims were time-barred under the doctrine of laches and applicable statute of limitations. The court disagreed. At the outset, the court noted that the laches defense is not available in copyright infringement cases, citing Petrella v. Metro- Goldwyn-Mayer, Inc., 572 U.S. 663 (2014). And while the statute of limitations for copyright claims is three years from when the claim accrues. (17 U.S.C. § 507(b)), the court noted that there were "two conceivable set of facts consistent with the Complaint by which the Estate could defeat a statute of limitations defense." 

• First, under the Copyright Act, a copyright infringement claim accrues when the infringing act occurs, which means that each separate act of infringement - i.e., each reproduction, each distribution, etc. - triggers a new three-year limitations period. Since the estate alleges that the defendants, to this day, hold themselves out as owners of the copyrights in Darger's works and continue to reproduce and exhibit copies of the works, "the Estate's claims arising from those current violations continue to accrue." 
• Second, the Seventh Circuit (like every other circuit court to consider the issue) applies a discovery rule to determine when a copyright claim accrues for purposes of the statute of limitations. Under that rule, a copyright claim accrues when the copyright owner knows, or should have known, about the infringement. The court held that at the pleading stage it was "reasonable to infer that the Estate representative did not have a reasonable basis for learning of Defendants’ conduct until recently" and that this inference was "entirely consistent" with the allegations in the complaint, including that Darger was cut off from his extended family due to the difficult circumstances of his childhood and that the court didn't appoint an Estate administrator until 2022, shortly before the complaint was filed.

(Programming note: you should check out Nicole Bergstrom's excellent post covering the circuit split on how the discovery rule is applied in copyright cases. It will make your head spin.)

Copyright Ownership.  

The defendants argued that the complaint should be dismissed because the estate had failed to demonstrate that the "Lerners lacked ownership of the Darger copyrights" and because the Estate had failed to “rule out competing inferences, such as that Darger gifted his work to the Lerners." The court held that this argument was premature since this was a motion to dismiss and not a motion for summary judgment. At this stage of the case, the estate was not required to plead facts to anticipate the defendants' affirmative defenses, and it was "not required to include evidence, documents, or testimony and may proceed on “information and belief.” The question of whether Darger had "gifted" his copyrights to the Lerner and related questions (including whether Darger, towards the end of his life, had the mental capacity to make such a gift) will, no doubt, be a hotly contested issue as the litigation proceeds, after discovery.

No Written Transfer?  

In the complaint, the estate alleges that Darger did not assign his copyrights to the Lerners in writing (an allegation that does not appear to be disputed). Noting that current copyright law requires that a transfer of copyright ownership be in writing (17 U.S.C. § 204(a)), the estate alleges in the complaint that the Lerners have no basis for asserting ownership of those copyrights. However, Darger died in 1973, years before current copyright law (the 1976 Copyright Act) went into effect. The defendants urged the court to dismiss the copyright claims based on the estate's citation to the wrong copyright statute. Specifically, the defendants argued that (1) the prior copyright statute (the 1909 Copyright Act) is the governing law, (2) since Darger's works were unpublished at the time of his death, they were protected by common law copyright, not federal copyright law, and (3) under the 1909 Copyright Act and common law, transfer of the physical works was sufficient to transfer the underlying copyrights in those works, even without an written instrument. 

Once again, the court refused to dismiss the complaint. The court agreed with the defendants that the 1909 Copyright Act and common law governed the question of whether or not a valid transfer of copyright from Darger to the Lerners occurred in 1973. The court also acknowledged that, under that applicable law, an assignment of a common law copyright did not need to be in writing. However, ultimately whether such an assignment occurred was a question of the intent of the transferor (here, Darger). And while a transfer of ownership of a material object could evidence an intent to transfer the underlying common law copyright, that was not necessarily always the case. In the complaint, the estate alleged facts to support that Darger had not intended to transfer his common law copyrights to the Lerners (even though the estate was not required to plead facts to anticipate the defendants' affirmative defense). Specifically, the estate alleged that it was a "false claim" that Darger had gifted his works to the Lerners, and it was "a reasonable inference under the common law that the lack of a writing and the circumstances of the case evidence Darger's lack of intent to transfer the copyrights to the Lerners." 

Finally, the estate's citation to the wrong copyright statute was not a basis for dismissing the complaint. While, as noted above, the question of ownership and transfer will be governed by common law, the estate's cause of action arises under the 1976 Copyright Act because the common law copyrights in Darger's works were given statutory protection upon enactment of the 1976 Copyright Act. Moreover, the defendants will suffer no prejudice by allowing the complaint, even with incorrect statutory citations, to stand, since the defendants are aware of the correct legal standard.

Preemption.  

The court also denied the defendants' motion to dismiss the estate's equitable easement and Illinois Uniform Deceptive Trade Practices Act ("IUDTPA") claims as preempted under copyright law. A claim is preempted under copyright law if two conditions are met: (1) the particular work at issue falls within the type of works protected by copyright law (the "subject matter prong") and (2) the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights protected under § 106 (the "general scope prong"). (17 U.S.C. § 301.)

In its equitable easement claim, the estate seeks physical access to Darger's original works in the defendants' possession so it can create copies of them. Because the right to physically access Darger's works is substantively different than the rights conferred under the Copyright Act, the equitable easement claim is not preempted under the second prong.

The estate alleges that the defendants violated the IUDTPA by “falsely and deceptively representing to consumers that they are associated with the Estate and Darger." These claims also are not preempted because "making a misrepresentation about one's affiliation, by itself, is not among the exclusive rights enumerated in § 106."

Estate of Darger v. Lerner, No. 22 C 03911, 2023 WL 2664341 (N.D. Ill March 28, 2023).