Published on January 2, 2009
International Copyright: Foreign Copyrights in the U.S. New York County Lawyers’ Association October 22, 2008 New York City Raymond J. Dowd – Partner Dunnington Bartholow & Miller LLP Author – Copyright Litigation Handbook (West 3d Ed. 2008) 1
Copyright protects original works of authorship fixed in any tangible medium of expression . . . from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine . . . 17 U.S.C. § 102 www.dunnington.com 2
Works protected by copyright: literary works (including photography, software) musical works (lyrics) dramatic works (with music) pantomimes/choreographic works pictorial, graphic, sculptural works motion pictures, audiovisual works sound recordings architectural works 17 U.S.C. § 102 www.dunnington.com 3
Berne Convention Implementation Act of 1988 Abolished requirement of “formalities” for a copyright to be protected Formalities are 1. copyright notice and 2. copyright registration Now copyright subsists upon fixation Registration required for U.S. owners to go to court Registration required for Berne Convention owners to get statutory damages and attorneys fees See materials CLH at §§ 1:3, 1:4; 1:5; 1:7 www.dunnington.com 4
Definition of “Berne Convention work” (Part I) A work is a “Berne Convention work” if — (1) in the case of an unpublished work, one or more of the authors is a national of a nation adhering to the Berne Convention, or in the case of a published work, one or more of the authors is a national of a nation adhering to the Berne Convention on the date of first publication; (2) the work was first published in a nation adhering to the Berne Convention, or was simultaneously first published in a nation adhering to the Berne Convention and in a foreign nation that does not adhere to the Berne Convention; www.dunnington.com 5
Definition of “Berne Convention work” (Part II) (3) in the case of an audiovisual work — (A) if one or more of the authors is a legal entity, that author has its headquarters in a nation adhering to the Berne Convention; or (B) if one or more of the authors is an individual, that author is domiciled, or has his or her habitual residence in, a nation adhering to the Berne Convention; or (4) in the case of a pictorial, graphic, or sculptural work that is incorporated in a building or other structure, the building or structure is located in a nation adhering to the Berne Convention; or (5) in the case of an architectural work embodied in a building, such building is erected in a country adhering to the Berne Convention. For purposes of paragraph (1), an author who is domiciled in or has his or her habitual residence in, a nation adhering to the Berne Convention is considered to be a national of that nation. For purposes of paragraph (2), a work is considered to have been simultaneously published in two or more nations if its dates of publication are within 30 days of one another. www.dunnington.com 6
Berne Convention works Statutory damages and attorneys fees strong incentives for Berne Convention work owners to register copyrights in U.S. Exclusive licensees must record to have standing to sue in U.S. Registration must take place prior to infringement to obtain damages and attorneys fees www.dunnington.com 7
Copyright registration as “sculptural work” denied. Originality refers to a work’s origin with an author and to the embodiment of more than trivial variations from works within the public domain. Insufficient “sculptural authorship” since the shape was determined by the building’s contours and wrapping predetermined by the building’s shape. “Wrapped Reichstag, Berlin 1971-95” Christo & Jeanne Claude www.dunnington.com 11
Determining Copyright Status of Berne Convention Works Title search (companies such as Thomson) Conduct copyright investigation (see Circular 22) Copyright Office records incomplete From www.copyright.gov: Protection in Foreign Countries Even if you conclude that a work is in the public domain in the United States, this does not necessarily mean that you are free to use it in other countries. Every nation has its own laws governing the length and scope of copyright protection, and these are applicable to uses of the work within that nation’s borders. Thus, the expiration or loss of copyright protection in the United States may still leave the work fully protected against unauthorized use in other countries. www.dunnington.com 12
Under prior law, publication without a copyright notice put a copyrighted work in the public domain. Certain foreign works that fell into public domain have been restored. Under current law, copyright notices are not necessary for copyright protection. Material entering the public domain has been greatly restricted. See, e.g., Troll Co. v. Uneeda Doll Co., 483 F.3d 150 (2d. Cir. 2007)(foreign troll falling in and out of public domain) www.dunnington.com 14
The First Sale Doctrine and Imports www.dunnington.com 15
First sale doctrine: once a copyright owner sells an object containing the copy, the owner can’t control subsequent distribution. Codified at 17 U.S.C. § 109 (a). Bourne v. Walt Disney Company, 68 F.3d 621 (2d Cir. 1995) www.dunnington.com 16
Once U.S. copyright owner makes “lawful copy” in U.S.A. and sells anywhere in the world, has exhausted rights and first sale doctrine may be asserted as a defense by a re-importer. Quality King Dists. Inc. v. L’Anza Research Int’l, Inc., 523 U.S. 135 (1998). www.dunnington.com 17
International exception to the first sale doctrine: sales of copyrighted goods manufactured and first sold outside the U.S. may not be imported to the U.S. without copyright owner’s consent. First sale doctrine applies only where a manufacture and first sale in the United States. See 17 U.S.C. § 602 (Infringing importation of copies or phonorecords). Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008) www.dunnington.com 18
Jurisdiction over Foreign Infringers www.dunnington.com 19
Where infringer is operating offshore (the island of Vanuatu), under Rule 4(k)(2) of the Federal Rules of Civil Procedure, jurisdiction may be exercised where sufficient contacts with, or injury to, U.S. residents is alleged, even though there are not sufficient contacts with any one state to justify jurisdiction in that state. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 243 F. Supp.2d 1073, 1094 (C.D. Cal. 2003). www.dunnington.com 20
Extraterritorial acts: U.S. courts will exercise jurisdiction over foreign defendants whose extraterritorial acts aid, induce or contribute to copyright infringement by another in the United States. GB Marketing USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F. Supp. 763, 772 (W.D.N.Y. 1991). www.dunnington.com 21
Foreign copyrights and claims in U.S. Courts www.dunnington.com 22
Foreign copyright claims may be pleaded in U.S. courts in diversity cases or under the doctrine of supplemental jurisdiction. For five photographs of Lindsay Lohan published without authorization, the court reserved decision on U.K. copyright claims, noting that the court has discretion to decline such jurisdiction. X17 Inc. v. Hollywood TV Inc., 2008 WL 4527865 (C.D. Cal. 2008). www.dunnington.com 23
Ownership of Russian copyrights to works first published in Russia governed by Russian law, questions of infringements of Russian copyrights governed by U.S. law where infringement in U.S. by U.S. corporation. Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir 1998). www.dunnington.com 24
Thanks to Thomson West For use of Copyright Litigation Handbook excerpts. 25
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