Handling issues related to foreign copyrights in the United States
Handling issues related to foreign copyrights in the United States
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)
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
Works protected by copyright:
literary works (including photography, software)
musical works (lyrics)
dramatic works (with music)
pictorial, graphic, sculptural works
motion pictures, audiovisual works
17 U.S.C. § 102
Berne Convention Implementation Act of
Abolished requirement of “formalities” for a
copyright to be protected
Formalities are 1. copyright notice and 2. copyright
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
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(1) in the case of an unpublished work, one or more of the authors is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
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
(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.
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
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
Determining Copyright Status of
Berne Convention Works
Title search (companies such as Thomson)
Conduct copyright investigation (see Circular 22)
Copyright Office records incomplete
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.
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)
The First Sale Doctrine
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)
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
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)
Jurisdiction over Foreign Infringers
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).
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).
Foreign copyrights and claims in U.S.
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).
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.
Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d
Cir 1998). www.dunnington.com
Thanks to Thomson West
For use of Copyright Litigation Handbook