by Henry Park, Esq.
Of Counsel and Registered U.S. Patent Attorney
Copyrights are territorial rights, which means that they are granted by—and limited to—the jurisdiction in which the copyright claimant seeks protection. To avoid this limitation, 171 countries have signed the Berne Convention for the Protection of Literary and Artistic Works.
Under the Berne Convention, signatories recognize that the works from one contracting state must be given the same protection in each of the other contracting states as the latter gives to its own nationals. See Berne Summary at http://www.wipo.int/treaties/en/ip/berne/summary_berne.html (1) Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union […] the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.
See Berne Convention, Article 5(1) at http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P109_16834. Moreover, that protection must not be conditioned upon compliance with any formality. See supra Berne Summary.
(2) The enjoyment and the exercise of these rights shall not be subject to any formality[.]
See Berne Convention, Article 5(2) at http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P109_16834.
When the U.S. became a signatory to the Berne Convention, it amended its copyright laws through the Berne Convention Implementation Act of 1988. Specifically, the U.S. amended Section 411 to require the registration of only domestic works before a copyright lawsuit can be filed. See 17 U.S.C. § 411(a).
Thus, a non-U.S. copyright claimant (i.e., foreign claimant) can initiate a copyright infringement lawsuit in the U.S. based on its foreign copyrights without registering them.
The U.S., however, did not amend Sections 410(c) or 412. Section 410(c) grants a presumption of validity to registered works, which affects the order of proof. See 17 U.S.C. § 410(c). Section 412 makes timely registration a prerequisite for certain remedies: the award of statutory damages and of attorneys’ fees. See 17 U.S.C. § 412.
[The committee] has concluded that the statutory incentives for registration contained in the provisions of sections 410(c), 412, and 205 of the Copyright Act are not preconditions for the ‘enjoyment and exercise’ of copyright. While those provisions substantially enhance the relief available to the proprietor of a registered work, they do not condition the availability of all meaningful relief on registration, and therefore are not inconsistent with Berne.
Elsevier B.V. v. UnitedHealth Group, Inc., 93 U.S.P.Q.2d (S.D.N.Y. Jan. 10, 2010) (quoting from Senate Report No. 100-352).
To avail oneself of the benefits associated with Section 412, the copyright holder must timely register its works.
– for an unpublished work, that the work is registered before any infringement
– for a published work, that the work is registered within three months of its first publication See 17 U.S.C. § 412. Once timely registered, the copyright holder may claim statutory damages instead of having to prove actual damages and the actual infringer’s profits. See 17 U.S.C. § 504(c). Statutory damages are determined by the court and range from between $750 – $30,000 per infringed work, and can go up to $150,000 per work if the infringement was willful. See 17 U.S.C. § 504(c). Additionally, the copyright holder may recover its costs and, if it is the prevailing party, its reasonable attorney’s fees. See 17 U.S.C. § 505; see also Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. ___ (2016) (a court examines a variety of factors when determining whether to award attorney’s fees, but should put substantial weight on the reasonableness of the losing party’s position). Both of these benefits are particularly strong negotiating tools. Thus, foreign copyright claimants should timely register their foreign copyrights with the U.S. Copyright Office to avail themselves of all potential relief under U.S. Copyright Law.
Rajat
Great article encouraging non-US works to register with the US Copyright Office (USCO). Here are some more thoughts:
The USCO defines foreign works as works generally created by author(s) who are not U.S. citizens or U.S. nationals, and/or works that were published abroad. The copyright applicant must be the author, who actually created the material, with the exception of works made for hire. As Mr. Park mentions, non-U.S. works need not be registered to enjoy and exercise copyright protection, although timely registration is required in order to seek attorney’s fees and statutory damages. The Berne Convention does not create an independent cause of action in U.S. courts nor provide a basis of preemption of the U.S. Copyright Act; hence, registration is mandatory for statutory damages. Elsevier B.V., 93 U.S.P.Q.2D at 1409-1410.
Beyond statutory damages, 17 U.S.C. § 205 provides registrants with additional tools regarding notice and transfer of ownership rights. A copyright holder may file any transfer of ownership or other documents pertaining to a copyright with the U.S. Copyright Office, which serves as constructive notice of the facts stated in the recorded document. Although the Copyright Office does not enforce agreements reflected in the recorded documents or determine whether the document satisfies legal requirements that are necessary for the documents to be effective or enforceable, a recordation establishes public record for the contents in the document or transfer of copyright. The requirements for recordation are that: 1) the work to be protected is identified with specificity and properly indexed; and 2) a registration has been made for the work. See 17 U.S.C. § 205(c).
Further advantages associated with recordation with the USCO include establishing legal priority between conflicting transfers. According to section 205(d), a transfer executed first prevails if it is recorded within one month after its execution in the U.S., within two months after its execution abroad, or if recorded prior to later transfer. “Otherwise, the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.” See 17 U.S.C. §205(d). Some courts have also held that a security interest in a registered work must be recorded in order to perfect the creditor’s interest.
Registration and subsequent recordation provide considerable benefits for non-U.S. copyrighted works. Foreign claimants can not only equip themselves with broader relief provided under U.S. federal law, but also protect transactions, security interests, and licensing agreements among other rights associated with their copyrighted work.
Lance
It’s true: registered non-U.S. (foreign) copyrighted works receive more benefits. Registration of foreign authors should not be required to receive these additional benefits. Congress, relying on the Berne Convention Implementation Act of 1988 (“BICA”), should provide amendments to more U.S. copyright laws to make this possible. Amendments of U.S. copyright laws would uphold the United States’ requirement under the Berne Convention, specifically, the “national treatment” requirement under the Berne Convention.
The Berne Convention was created in 1886 with the objective to create universal copyright law, uniform standards in member countries and, most importantly, copyright protection for a given country’s citizens. See Graeme Dinwoodie, Note, The Development and Incorporation of International Norms in the Formation of Copyright Law, 62 Ohio St. L.J. 733, 737 (2001). The Association Litteraire Internationale—presently known as the Association Litteraire et Artistique Internationale (“ALAI”)—was the precursor to the Berne Convention. See Daniel Gervais, Note, Conference on the 100th Anniversary of the 1909 Copyright Act The 1909 Copyright Act in International Context, 26 Santa Clara Computer & High Tech. L.J. 185, 187 (2010). The ALAI is an independent society dedicated to studying and discussing legal issues regarding creative individuals. See Who Are We, Association Litteraire et Artisitique Internationale, http://www.alai.org/en/presentation.html (last visited Jan. 22,2017). French author and human rights advocate, Victor Hugo, was the ALAI’s first president. Gervais, supra note 26, at 187. “Hugo noted that while a book belongs to its author, ideas expressed in the book belong to human kind. Gervais, supra note 26, at 188. This ideology set the public interest component of the framework for the Berne Convention. Gervais, supra note 26, at 189. Similarly, a tenet of U.S. Copyright law is that protection is afforded to the expression of the idea and not the idea itself.
Initially, developing international copyright law under the Berne Convention proved to be difficult due to the fear of unprincipled compromise among countries. Dinwoodie, supra note 62, at 737. The notion was that rigid standards in the Berne Convention would discourage future membership of other countries. Dinwoodie, supra note 62, at 738. Instead, the Berne Convention took a broad objective to focus on national treatment to pursue international copyright protection. Id. The Berne Convention states: “authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention. See Berne Convention article 5(1), http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=283698#P109_16834. This is known as the national treatment provision of the Berne Convention, which provides equal protection for international copyright laws. Dinwoodie, supra note 62, at 738. The national treatment provision requires member countries to allow the same copyright protection to citizens from foreign member countries, as offered to their own citizens. Id.
It must be noted that national treatment under the Berne Convention requires minima of rights to foreign authors to ensure copyright protection. See William Patry, Article, Choice of Law International Copyright, 48 Am.J.Comp. 383, 405 (2000). Essentially, it does not require a country to grant a choice of law to foreign authors. Id. Choice of law under the Berne Convention is viewed as instructing a court to apply the laws of one country versus considering the application of the laws of another country. Id. National treatment is more of a non-discriminatory provision that monitors the rights of domestic authors compared to foreign authors. Id. The Berne Convention allows members to freely apply national treatment: either (1) apply domestic laws for foreign ownership, or (2) apply the law of the foreign country. Patry, supra article 48, at 409.
The U.S. did not join the Berne Convention until 1989—103-years later—that filled the void that other members directly acknowledged concerning the U.S. absence from the Convention. Gervais, supra note 26, at 194-95. The motivation to join was due to the growing awareness that U.S. authors could not be protected internationally and foreign authors were not protected within the U.S. Gervais, supra note 26, at 195. Prior to joining the Berne Convention, the U.S. enacted the Chace Act in 1891, which allowed conditional, reciprocal protection with other agreeing countries. Binyomin Kaplan, Note, Determining Ownership of Foreign Copyright: A Three-Tier Proposal, 21 Cardozo L. Rev. 2045, 2050-51 (2000). Over time reciprocal-type protection proved to be inefficient, which eventually resulted in the United State’s membership in the Berne Convention in 1988. Kaplan, supra note 21, at 2054. Prior to the United State’s membership in the Berne Convention, the Copyright Act of 1976 (“1976 Act”) was enacted becoming the controlling law for copyright disputes in the U.S. Kaplan, supra note 21, at 2055. Unfortunately, the 1976 Act did not address how to handle international copyright law. Id.
The BICA states that “courts in the U.S. should look for guidance neither to Berne nor to the laws of other signatories to Berne, except where U.S. conflict of law rules or a specific contract requires the application of foreign law.” Kaplan, supra note, at 2055-56. This suggests that Congress had constructive knowledge that international protection for American works would give rise to foreign authors requesting protection in the U.S. Id. Additionally, the effective date of the BCIA coincided with the United States joining the Berne Convention, which ensured that the 1976 Act would be the primary source of copyright law in the United States. Kaplan, supra note, at 2054-55. This conclusion is supported in, Elsevier B.V. v. UnitedHealth Group, Inc., where the court reasons that Berne Convention is not “self-executing.” See Elsevier B.V. v. UnitedHealth Group, Inc. 93 U.S.P.Q.2d 1, 6 (S.D.N.Y. Jan. 10, 2010). There are numerous other cases that follow the same precedent: the Berne Convention and/or the BICA is not self-executing.
The U.S. should make amendments to copyright laws that will uphold their obligation to the Berne Convention. Currently, the U.S. has one foot in the door with the national treatment requirement as a Berne Convention member. It is evident that the U.S. is concerned with the public interest of copyright protection: ensuring that American authors are protected not just domestically, but internationally as well. The Chace Act and the U.S. decision to join the Berne Convention are testaments to the desire to protect American authors’ work. The national treatment provision of the Berne Convention is not a mechanism that is restrictive in application. Congress has the power to apply national treatment in a manner that will benefit both domestic and foreign copyrights.
sewellnylaw
hi