## Facts

- Kip Rano, a professional photographer, granted Sipa Press (a photo distribution syndicate) an oral, nonexclusive license in France around 1978 to reproduce, distribute, sell, and authorize others to do the same with his photographs, in exchange for Sipa’s handling of negatives and payment of 50% of net royalties.
- For roughly eight years, Rano supplied thousands of photographs and Sipa distributed them and paid royalties.
- In March 1986, Rano notified Sipa’s president, Gökşin Sipahioglu, that he was changing agencies and would stop sending negatives, citing late royalty payments and other grievances.
- From July 1986 forward, Rano demanded the return of his negatives; in March 1987, he stated he did not authorize Sipa to sell any more of his photographs.
- Rano alleged Sipa failed to pay some royalties, failed to credit him for at least one photograph, continued distributing after his termination notice, and failed to return some photographs and negatives.
- In July 1989, Rano sued Sipa entities and Sipahioglu in federal court in California for copyright infringement and related state-law claims, seeking damages and injunctive relief.

## Issues

1. Whether California could exercise personal jurisdiction over Sipahioglu, a France-based corporate officer.
2. Whether the oral, nonexclusive copyright license of indefinite duration was terminable by Rano’s 1986–87 notices, and whether post-termination distribution could constitute infringement.
3. Whether Rano’s state-law claims were preempted by 17 U.S.C. § 301, and which claims contained a distinct element sufficient to avoid preemption.

## Decision

- The Ninth Circuit affirmed dismissal of the claims against Sipahioglu for lack of personal jurisdiction.
- The court affirmed in part and reversed in part the summary judgment for Sipa.
- The court held the oral, nonexclusive license of unspecified duration was terminable, and Rano’s communications were sufficient to terminate it; continued distribution after termination could support a copyright infringement claim.
- The court held some state-law claims were preempted by federal copyright law, but claims tied to wrongful retention or return of physical negatives (and other non-equivalent rights) were not categorically preempted.
- The case was remanded for further proceedings on the surviving claims, including potential post-termination infringement.

## Legal Principles

- A nonexclusive copyright license of indefinite duration is generally terminable upon notice after a reasonable time, absent an enforceable agreement establishing perpetuity.
- Use of a copyrighted work outside the scope of a license, including after effective termination, can constitute copyright infringement.
- Under 17 U.S.C. § 301, state-law claims are preempted when they fall within the subject matter of copyright and assert rights equivalent to the exclusive federal rights (such as reproduction or distribution).
- State-law claims may avoid § 301 preemption when they include an extra element that makes the right asserted qualitatively different, including claims concerning possession or wrongful retention of tangible items (such as photographic negatives).
- Personal jurisdiction over an individual corporate officer requires constitutionally sufficient forum contacts attributable to the individual, not merely to the corporation.

## Conclusion

The Ninth Circuit upheld the dismissal of the foreign corporate officer for lack of personal jurisdiction, held that an oral nonexclusive license with no stated duration was terminable and could support infringement liability for post-termination distribution, and applied § 301 to preempt state claims equivalent to copyright rights while allowing distinct claims—such as those involving physical negatives—to proceed on remand.


Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993)