Abstract
Online publication allows a work to be published simultaneously throughout the world to every country with Internet access. While it is certainly advantageous for the dissemination and impact of information and creative works, first publication of copyright works over the internet presents unique challenges. In particular, it brings to the fore the gaps in the Berne Convention’s country of origin provisions. In Kernel Records v Mosley, the Florida Southern District Court of the United States ruled that first publication of a work on the Internet via an Australian website constituted “simultaneous publication all over the world,” and therefore rendered the work a “United States work” under the definition in §101 of the U.S. Copyright Act, subjecting the work to registration formality under §411. This ruling is in sharp contrast with an earlier decision delivered by the Delaware District Court in Moberg v 33T LLC. The conflicting rulings of the U.S. courts reveal the problems posed by new forms of publishing online and demonstrate a compelling need for further harmonization between the Berne Convention, domestic laws and the practical realities of digital publishing. While a clearer consensus on what amounts to “simultaneous publication” in the digital age may be needed at the international level, this article proposes a pragmatic way forward, i.e. resolution at the national level through statutory interpretation by the courts in a way which reconciles the goals of the Berne Convention with the practical requirements of domestic law.
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Notes
- 1.
Article 5(1). Discussed in more detail below.
- 2.
Article 5(2). Discussed in more detail below.
- 3.
Copyright Act: 17 U.S.C. § 411(a).
- 4.
Copyright Act: 17 U.S.C. § 412.
- 5.
“Simultaneous publication” is defined as within 30 days of first publication: Article 3(4). For unpublished works, the country of origin is the country of the Union of which the author is a national: Article 5(4)(c).
- 6.
Article 5(4)(a). Article 1 of the Berne Convention establishes a Union: "The countries to which this Convention applies constitute a Union for the protection of the rights of authors in their literary and artistic works".
- 7.
Article 5(4)(a) and (b).
- 8.
The language of Article 5 indicates that there should be only one country of origin of a work, though this is not entirely clear.
- 9.
The European Union recently extended its term of copyright protection from life of the author plus 50 years to life of the author plus 70 years, bringing it in line with the term granted in the United States of America, Australia, and a number of other countries around the world.
- 10.
2011 U.S. Dist. LEXIS 60666 (S.D. Fla. June 7, 2011).
- 11.
The definition states that a work which is published simultaneously in the United States and another country is a “United States work” for the purposes of §411 of the Copyright Act. See further below.
- 12.
666 F. Supp. 2d 415 (D. Del. Oct. 6, 2009).
- 13.
See World Intellectual Property Organization (WIPO), WIPO Treaties – General Information, http://www.wipo.int/treaties/en/general/. Note that in addition to protection in accordance with the principles of national treatment, the Berne Convention also sets out minimum standards of protection in relation to the works and rights to be protected, and the duration of the protection. See WIPO (1886).
- 14.
Berne Convention, Article 5(3).
- 15.
WIPO (1996) at p. 16.
- 16.
Id.
- 17.
Id.
- 18.
In December 1996, the WIPO Committee of Experts raised concerns about the potential impact of new technologies on the provisions of Article 3(3) and Article 5(4) of the Berne Convention. The Committee proposed the following solution:
Article 3 Notion and Place of Publication
-
(1)
When literary or artistic works are made available to the public by wire or wireless means in such a way that members of the public may access these works from a place and at a time individually chosen by them, so that copies of these works are available, Contracting Parties shall, under the conditions specified in Article 3(3) of the Berne Convention, consider such works to be published works.
-
(2)
When applying Article 5(4) of the Berne Convention, Contracting Parties shall consider works referred to in paragraph (1) of the present Article to be published in the Contracting Party where the necessary arrangements have been made for availability of these works to members of the public. [Emphasis in bold added.]
The Committee explained that “[t]he expression ‘necessary arrangements’ is intended to mean such steps as are an absolute condition sine qua non for the availability of the work. Mere linking or routing arrangements are not sufficient.” While not perfectly clear, this approach suggests that the place of publication of a work would likely be the country where the work is first uploaded and made available online, or the country where the publication of the work is specifically targeted. However, the Committee’s proposal was not adopted in the final text of the WIPO Copyright Treaty (“WCT”).
See WIPO (1996), pp. 18–21.
-
(1)
- 19.
- 20.
Ricketson and Ginsburg (2006), at p. 285.
- 21.
- 22.
See further Article 7(8) of the Convention, which provides as follows: “In any case, the term shall be governed by the legislation of the country where protection is claimed; however, unless the legislation of that country otherwise provides, the term shall not exceed the term fixed in the country of origin of the work.”
- 23.
Ginsburg (1998), at p. 8.
- 24.
Copyright Act: 17 U.S.C. §411. Note that in limited circumstances, it may be possible to commence proceedings and subsequently obtain copyright registration. The plaintiff would have to amend the complaint and add the allegation that registration has been obtained, but good cause under the Federal Rules of Civil Procedure (Fed. R. Civ. P. 16) must be shown before a court will consider whether the amendment is proper under Fed. R. Civ. P. 15(a). To show good cause for an untimely amendment, the plaintiff must demonstrate diligence (see e.g. Oravec v Sunny Isles Luxury Ventures, L.C., 527 F. 3d 1218, 1232 (11th Cir. 2008)). In Kernel v Mosley however, Justice Torres held that this was not satisfied because registration was sought and obtained after the Court had ruled for the Defendants.
- 25.
2011 U.S. Dist. LEXIS 60666 (S.D. Fla. June 7, 2011).
- 26.
666 F. Supp. 2d 415 (D. Del. Oct. 6, 2009).
- 27.
§ 412 sets forth registration as prerequisite to certain remedies for infringement. Unlike § 411, the application of § 412 is not limited to “U.S. works”. However, in a suit under § 411(c), the copyright owner of a foreign work consisting of sounds, images, or both, the first fixation of which is made simultaneously with its transmission may obtain statutory damages without registering the work under certain conditions. See Football Ass’n Premier League v. YouTube, 633 F. Supp. 2d 159 (2009).
- 28.
Pub. L. No. 100-568, 102 Stat. 2853, 2854.
- 29.
Pub. L. No. 105-304, 112 Stat. 2860, 2861.
- 30.
Reed Elsevier, Inc., et al., Petitioners, v. Irvin Muchnick, et al., 130 S. Ct. 1237 (2010).
- 31.
In The Senate Statement on the Berne Convention Implementation Act of 1988 that appears on page S14544, Congressional Record (Daily Ed.) (1988), it was stated:
…
With regard to the specifics of the amendment on registration, the two-tier system is established by making three amendments to the committee-reported bill. First, the repeal of existing section 411(a) is eliminated, in favor of an introductory phrase to the existing provision which makes it inapplicable to “actions for infringement of copyright in Berne Convention works whose country of origin is not the United States.” Secondly, in section 411(b), dealing with works such as live broadcasts that are first fixed simultaneously with transmission, the amendment inserts after the reference to post-broadcast registration of the work the phrase “if required by subsection (a).” Finally, the amendment inserts in the definitional section of the Copyright Act, 17 USC 101, a definition of “country of origin” of a Berne Convention work.
The definition of country of origin, while a new feature of U.S. copyright law, is a familiar principle to students of Berne. The definition contained in the amendment tracks the definition of this phrase contained in Article 5(4) of Berne. For the guidance of practitioners, and of the courts, the following observations may be in order.
…
- 32.
The Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853, 2857, amended § 101 by adding the definition of “country of origin” of a Berne Convention work, for purposes of § 411. The WIPO Copyright and Performances and Phonograms Treaties Implementation Act of 1998 Pub. L. No. 105-304, 112 Stat. 2860, 2861 amended that definition by changing it to a definition for “United States work,” for purposes of § 411. See U.S. Copyright Office, Copyright Law – Chapter 1 (‘Chapter 1 Endnotes’), http://www.copyright.gov/title17/92chap1.html.
- 33.
666 F. Supp. 2d 415, 421 (D. Del. Oct. 6, 2009).
- 34.
Note that § 408(a) only relates to “protection” of the work, and does not refer to a precondition to instituting a civil infringement action.
- 35.
600 F. Supp. 2d 437, 473 (E.D.N.Y. 2009).
- 36.
509 F.3d 116, 133 (2d Cir. 2007).
- 37.
666 F. Supp. 2d 415, 423 (D. Del. Oct. 6, 2009).
- 38.
666 F. Supp. 2d 415, 410 (D. Del. Oct. 6, 2009).
- 39.
666 F. Supp. 2d 415, 422–423 (D. Del. Oct. 6, 2009): “if the publishing of plaintiff’s photographs on the German website simultaneously caused them to be published in the United States, and such publication transformed the work into a United States work, plaintiff would be subjected to the very formalities that the Berne Convention eschews. To hold otherwise would require an artist to survey all the copyright laws throughout the world, determine what requirements exist as preconditions to suits in those countries should one of its citizens infringe on the artist’s rights, and comply with those formalities, all prior to posting any copyrighted image on the Internet. The Berne Convention was formed, in part, to prevent exactly this result.”
- 40.
666 F. Supp. 2d 415, 423–424 (D. Del. Oct. 6, 2009).
- 41.
2011 U.S. Dist. LEXIS 60666 (S.D. Fla. June 7, 2011).
- 42.
See Kernel Records Oy v. Mosley, 2010 U.S. Dist. LEXIS 69424, 49 (S.D. Fla., July 5, 2010).
- 43.
See Response in Opposition re Defendant’s Motion for Summary Judgment Statement of Undisputed Facts filed by Kernel Records Oy, 2009 U.S. Dist. Ct. Motions 337943; 2010 U.S. Dist. Ct. Motions LEXIS 52741, 2-3(S.D. Fla., June 21, 2010).
- 44.
2011 U.S. Dist. LEXIS 60666, 11–13 (S.D. Fla. June 7, 2011).
- 45.
2011 U.S. Dist. LEXIS 60666, 19 (S.D. Fla. June 7, 2011).
- 46.
2011 U.S. Dist. LEXIS 60666, 22–24 (S.D. Fla. June 7, 2011). The court cites 1 Nimmer on Copyright S 4.07[A] at 4–43 and Getaped.com v Cangemi, 188 F. Supp. 2d 398 (S.D.N.Y. 2002) for this proposition.
- 47.
2011 U.S. Dist. LEXIS 60666, 28 (S.D. Fla. June 7, 2011).
- 48.
2011 U.S. Dist. LEXIS 60666, 31 (S.D. Fla. June 7, 2011).
- 49.
2011 U.S. Dist. LEXIS 60666, 25 (S.D. Fla. June 7, 2011).
- 50.
EEOC v. Arabian American Oil Co., 499 U. S. 244, 248 (1991) (Aramco) (quoting Foley Bros., Inc. v. Filardo, 336 U. S. 281, 285 (1949).
- 51.
Morrison v. National Australia Bank Ltd., 130 S. Ct. 2869 (2010), 2878.
- 52.
EEOC v. Arabian American Oil Co., 499 U. S. 244, 258 (1991).
- 53.
See further, Gibney (1996), pp. 297, 305.
- 54.
In fact, as explained above, the original definition inserted into the U.S. Copyright Act was for “country of origin”; this was later changed to “United States work” by the WIPO Copyright and Performances and Phonograms Treaties Implementation Act of 1998, Pub. L. No. 105-304, 112 Stat. 2860.
- 55.
Sam Ricketson (1987), p. 211.
- 56.
Id. See also, Ricketson and Ginsburg (2006), p. 280, which refers to “the country of which the author is a national or resident”.
- 57.
Ricketson (1987).
- 58.
Ricketson and Ginsburg (2006), pp. 244–246.
- 59.
Id., 245. For a history of the drafting of the Berne Convention, please see Blakeney (2003).
- 60.
A full list of contracting parties of the Convention can be found at WIPO’s website—see WIPO, Contracting Parties, http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=15.
- 61.
WIPO, Treaties Statistics, http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=15&lang=en. For a history of the signatory of the Convention, see United Nations (1970).
- 62.
Ginsburg (1998), pp. 8–9.
- 63.
Id., 8.
- 64.
Id., 9.
- 65.
Ricketson and Ginsburg (2006), p. 285. The authors also presented an alternative: that the country of origin might be deemed the country with the most author-favourable domestic legislation.
- 66.
2011 U.S. Dist. LEXIS 60666, 26–27 (S.D. Fla. June 7, 2011).
- 67.
See further, Ricketson and Ginsburg (2006).
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We acknowledge the support of the Australian Research Council (ARC) Centre of Excellence for Creative Industries and Innovation (CCI). This chapter was first published in the (2011) NIALS Journal of Intellectual Property and is reproduced by kind permission of the publisher.
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Fitzgerald, B., Shi, S.X., Foong, C., Pappalardo, K. (2015). Country of Origin and Internet Publication: Applying the Berne Convention in the Digital Age. In: Fitzgerald, B., Gilchrist, J. (eds) Copyright Perspectives. Springer, Cham. https://doi.org/10.1007/978-3-319-15913-3_4
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