Unregistered Foreign Copyrights in US Courts: No Statutory Damages and Attorneys Fees

In Elsevier B.V. v. United Healthgroup, Inc., S.D.N.Y. January 14,2010, Judge William Pauley considered a plaintiff's claim that a provision of the Copyright Act requiring copyrights to be registered prior to an infringement violated the Berne Convention and thus was "preempted" by the U.S. Constitution.

The plaintiff commenced a declaratory judgment action that Section 412 of the Copyright Act violated Article IV of the U.S. Constitution because Section 412 conflicted with Article 5 of  the Berne Convention.

The problem comes up in the following context:  many foreign publishers of copyrighted materials do not register their copyrights in the United States, even if they publish or sell copyrighted works in the United States.   So when their works are infringed, they do not enjoy the protections of the sections of the Copyright Act that give statutory damages and attorneys fees to persons who have timely registered their works (Sections 504 and 505).

Elsevier provides access to a database on which many of the unregistered copyrighted works can be accessed.  Elsevier alleged that the defendant permitted others to access the database in violation of a subscriber agreement.

The provision challenged was Section 412 of the Copyright Act, which provides:

§ 412. Registration as prerequisite to certain remedies for infringement12



In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for —

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Find Section 412 and the rest of the Copyright Act here.

The doctrine of "preemption" is used in a number of different ways in copyright practice, but here the Plaintiff was arguing that the doctrine of preemption provides that where the Exective Branch has validly committed the U.S. under treaty powers and Congress has ratified such commitments, any inconsistent laws are "preempted" by the treaty.

The Plaintiff pointed to  Article Five of the Berne Convention which states:  “the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality.”   Find the full text of the Berne Convention here.

The District Court analyzed whether the Berne Convention was "self-executing" and found that it was not.  In other words, for any provisions of the Berne Convention to be binding, enabling legislation has to be adopted by Congress.  The Court looked at the legislation implementing the Berne Convention and noted that Congress decided not to change Section 412.

Noting that no federal appellate court has ruled on the question of whether the Berne Convention is self-executing, but that other courts in the district found it not to be self-executing, the Court found that it cannot serve as a basis for a preemption claim under Article IV of the US Constitution.

Since the District Court found the Berne Convention not to be self-executing, it found that Article 5 could not serve as the basis for a preemption.    The question of whether Article 5 and Section 412 conflict were not reached, leaving the question in the hands of diplomats.

Encyclopedias of Facts About Fiction: J.K. Rowling and Harry Potter

Warner Bros. Entertainment Inc. v. RDR Books, --- F. Supp.2d ---, 2008 WL 4126736 (9/8/2008) S.D.N.Y., Patterson, J.

A Harry Potter fan created a lexicon, available on the internet. The lexicon was popular with everyone, including J.K. Rowling and the people who made films about her books. Rowling wrote on her website "This is such a great site that I have been known to sneak into an internet cafe while out writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is embarrassing)." But when the fan published a book with the website's contents, Rowling sued, claiming copyright infringement. The defense was "fair use".

The court found that the defendant copied from the Harry Potter books, and indeed, copied too much and too clumsily to qualify for the fair use. The defendant failed to properly use quotation marks to indicate "borrowed" text. Also, the defendant borrowed too much expression from the originals. Significantly, Rowling had already prepared two lexicon-type works "Fantastic Beast & Where to Find Them" and "Quidditch Through the Ages", and the defendant had borrowed verbatim many of Rowling's own definitions relating to her Harry Potter fantasy world.

The court noted that there is a usefulness and a demand for reference guides to fictional worlds written by third parties, such as Paul F. Ford's Companion to Narnia: A Complete Guide to the Magical World of C.S. Lewis's The Chronicles of Narnia.

After closely weighing the "fair use" factors, the court issued a permanent injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure against publication of defendant's book. The court found that where a prima facie showing of infringement was made, irreparable harm is presumed, but questioned whether that presumption had survived the U.S. Supreme Court's decision in eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006).

From the decision, it appears that the court was quite sympathetic to the defendant's apparent underlying goal of publishing a reference guide without Ms. Rowling's consent and was cognizant of the social utility of this type of publication. If the publisher had done a better packaging and editing job, had worked with the plaintiff to remove the more extensive borrowings, provide better citations and added a bit more "scholarly" commentary, it appears that the court would have found fair use.

As in most of these fair use cases, the devil is in the details.

Of Mice and Men - Copyright Termination Rights

The Second Circuit just reversed a district court decision that had permitted the heirs of John Steinbeck to terminate a copyright grant to Penguin Group.

The issue arose from a termination right granted to authors and their heirs that corresponded to the extension of the copyright term. The logic was that if copyright terms were extended, publishers should not receive an unfair windfall without letting authors or their heirs renegotiate. An historic logic for letting authors terminate is that young authors would often enter into unfavorable agreements and giving them a chance to renegotiate later would compel publishers to reckon with the mature authors' better bargaining power.

Steinbeck's widow had renegotiated a 1938 rights grant in 1994. The Second Circuit found that the 1994 renegotiation was a complete termination of the 1938 rights grant. Steinbeck's widows heirs tried to exercise their termination rights in 2004.

But the Second Circuit found that, applying New York contract law, the 1938 grant had been terminated, giving the widows heirs no pre-1978 rights grants to terminate. Essentially, an author or heirs get one crack at renegotiating.

--- F.3d ----, 2008 WL 3376654 (2d Cir. 2008).

Copyright and Publishing Online Program

If you would like to earn CLE (Continuing Legal Education) credits online, my publisher, West has made available online a course I delivered in Eagan, Minnesota. Below, you can find a video excerpt.

Anyone putting up a website or a blog is a "publisher" these days, so it helps to know the principles involved. What can you publish? What will get you in trouble? How do you analyze problems that arise in using content created by others?

Copyright Law and Publishing
Content Provider: Clarion LegalDuration: 2 hours 0 minutes
Program Description: This session is comprised of practical, hands-on examples designed to give participants the analytical tools with which to confront copyright issues facing publishers.

If you would like more information or want to enroll in this program, click on the program title listed above or paste this link into your web browser:

http://westlegaledcenter.com/course.jsf?vId=10065888&aId=10065888

Blogs on My Blackberry - No Iphone Necessary

Last Friday I was blocked from walking down the Fifth Avenue sidewalk in front of the Apple store. The Iphone madness was going on. I saw a television advertisement for the Iphone while at the gym showing the user playing around with the New York Times. I confess, I had a moment of Iphone envy. But if I bought a toy like that, I would never use it.

I have recently been playing around with some features on my Blackberry 8700. There is a browser called Opera Mini that you can download for free. It greatly speeds up the internet connection and makes searches much quicker. I had a hard time installing it, until I read the fine print on the help page that gave me very simple instructions on configuring the telephone.

The Opera Mini browser also collects RSS Feeds. The previous RSS aggregators I used did not include images. But in testing the Opera Mini browser, I subscribed to this blog and was delighted to see that the images posted were crystal-clear and in color, rivalling the display that the Iphone advertisements showed. Very pleasing to the eye. The Opera Mini also had high-quality color access to the New York Times with a very readable interface.

As video and photo quality improve, the PDA and cell phones will be at the forefront of copyright and royalty litigation.