Enforcement of Foreign Copyrights in the U.S.
I recently received an email from John, an acquaintance in the UK who is a photographer. He asked a very good question regarding the protection of foreign copyrights.
Here's something maybe you could comment on ... an Australian photographer  is claiming he is being infringed by ... a California Corporation. He is asking for some initial advice on his position. The first questions seem to be:
A) In the US, for US originated works, registration is a pre-condition to bringing an infringement action;
B) The Berne Convention, however, sets out that an infringement of a foreign work, PROVIDED that any registration formalities in the country of origin are complied with, can be actioned in any other signatory state as if, and protected to the same extent that, registration in that other state has been effected;
C) Australia, as in the UK and many other countries, has no formal registration requirement at all;
D) In such an action under Berne, the governing law is the law of the state in which the action is commenced and that is the state in which the infringer can be found;
E) On that basis, that he has complied with the formalities in Australia [none], would an action be possible without US registration [prior to the infringement - or at all] and still be able to benefit from the statutory damages provisions of the US law?
Your analysis appears to be spot on. Presumably, this work does not qualify as "Library Material" under Australian law, thus, deposit with the National Library is not required (Copyright Act of 1968, Secs. 201(1), 241) and I also assume that the work was published after March 1, 1989.
When the United States joined the Berne Convention on March 1, 1989, copyright notice ceased to be a precondition to copyright protection. After Congressional debate about how to continue registration while complying with the Berne Convention, Congress divided the registration provision so that Berne works (foreign works), need not be registered as a prerequisite to suing for infringement, but ''a United States'' work must so register. Section 411 of Title 17, provides in relevant part:
(a) Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register's failure to become a party shall not deprive the court of jurisdiction to determine that issue.
The United States implements its treaty obligations to protect foreign works under U.S. domestic law. In fact, Congress declared that no private causes of action can be maintained in United States courts under the Berne language but only under domestic law. Section 104, Subsection (c) provides:
(c) Effect of Berne Convention. No right or interest in a work eligible for protection under this title may be claimed by virtue of, or in reliance upon, the provisions of the Berne Convention, or the adherence of the United States thereto. Any rights in a work eligible for protection under this title that derive from this title, other Federal or State statutes, or the common law, shall not be expanded or reduced by virtue of, or in reliance upon, the provisions of the Berne Convention, or the adherence of the United States thereto.
Thus, under U.S. Copyright law, a "copyright owner" may bring an action for infringement in U.S. Federal courts, provided the work is registered if a "U.S. Work," but registration is not required for foreign works (unless required by the laws of the foreign jurisdiction). The keys to the court are open to the foreign copyright owner.
Unfortunately, 17 USC § 412, clearly states that "registration" is a prerequisite to certain remedies for infringement. In particular:
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(b), 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.
In short, absent registration with the U.S. Copyright Office, a foreign copyright holder may bring an action in U.S. Federal Court for copyright infringement (17 USC § 502) and impound musical works (17 USC § 503) and provable loss profits. While a remedy is afforded, the unavailability of statutory damages and attorneys fees (absent U.S. Registration) eleminates signficant weapons from the arsenal and practically means that most copyright infringements will go unenforced, asbsent significant provable damages.
Michael W. Newcomb
Attorney at Law