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Only Live Broadcasts Qualify for Statutory Damages on Unregistered Foreign Works

By Martha L. Arias

Video sharing Websites such as YouTube, which at inception revolutionized the music industry, have also challenged copyright litigation. Although international organizations have been proactive in conveying homogeneous copyright principles through international agreements such as the Berne Convention, the Trade-Related Aspects of Intellectual Property Rights (TRIPs), WIPO Copyright Treaty, and other major international agreements, practical domestic litigation issues may arise when a party files a claim for copyright infringement. For instance, recovery of damages from copyright infringement varies because each country''s domestic legislation may contain dissimilar rules. This article provides an example of how in the United States (U.S.) statutory damages are not afforded to unregistered foreign works despite the Berne Convention, to which the  U.S. is signatory.

The Viacom Int''l Inc. v. YouTube Inc., 253 F.R.D. 256, 2008 U.S. Dist. LEXIS 50614 (S.D.N.Y., 2008) was the leading case that for the first time presented the question of whether unregistered foreign works published in YouTube in violation of copyright laws merit statutory damages under U.S. copyright legislation. The Viacom case involved several legal issues not to be addressed in this article, but its subsequent history cited as Football Ass''n Premier League Ltd. v. YouTube, Inc., 633 F. Supp. 2d 159  (S.D.N.Y. 2009) is what deserves special attention. In Football Premier, the court was to decide whether publication of unregistered foreign works (sport videos) in YouTube merit statutory claims under 17 U.S.C.S. § 412.

17 U.S.C.S. § 412 prohibits recovery of statutory damages for each and every work unless the work was registered (a) before the infringement commenced or (b) within three months after its first publication. Both, domestic and foreign works must be registered to be eligible for statutory damages in the U.S.  An exception to the registration rule for live broadcasts is found in 17 U.S.C.S § 411(c), which states that "a work consisting of sounds, images, or both, the first fixation of which is made simultaneously with its transmission, the copyright owner may, either before or after such fixation takes place, institute an action for infringement under section 501, fully subject to the remedies [of, among other things, statutory damages], if, in accordance with requirements that the Register of Copyrights shall prescribe by regulation, the copyright owner. . . . (1) serves notice upon the infringer, not less than 48 hours before such fixation, identifying the work and the specific time and source of its first transmission, and declaring an intention to secure copyright in the work. . . ."

The plaintiff in this case claimed that YouTube violated copyright laws when it allowed the upload of defendants" copyrighted videos in YouTube Website and claimed statutory damages under § 412.  Defendants had not registered these works in the U.S.  Plaintiff argued that although the foreign works were not registered in the U.S., denial of statutory damages to defendants was a violation of the Berne Convention and TRIPs.

The court held that in the U.S. a party can bring copyright infringement claims for unregistered foreign works under the Berne Convention, but cannot recover statutory damages in the U.S.  The court supported this holding on the Congressional intent and discussions when ratifying the Berne Convention. The Berne Convention states that the "exercise of copyrights shall not be subject to any formality." The United States Congress analyzed whether registration of copyrighted works constituted a formality within the meaning of the Convention. The Judiciary Committee concluded that the registration requirement under 17 U.S.C. § 411(a) did violate the Berne Convention, but the House of Representatives disagreed. The problem was solved by exempting foreign Berne Convention works from the registration requirements, but leaving the requirement intact for U.S. and other works.  See 134 Cong. Rec. H10091, at H10093, H10096 (daily ed. Oct. 12, 1988). Thus, foreign works do not need to register to file copyright claims in the U.S., but if they do, parties qualify for statutory damages.

Regarding violation of TRIPs, the court held that U.S. domestic laws shall prevail over TRIPs mandates. The United States Congress expressly mandated in 19 U.S.C.S § 3512(a)(1) that "[N]o provision of any of the Uruguay Round Agreements, nor the application of any such provision to any person or circumstance, that is inconsistent with any law of the United States shall have effect." Therefore, 17 U.S.C.S. § 411(a) that requires registration of domestic and foreign works and 17 U.S.C.S. § 412 prohibiting statutory damages to unregistered foreign works prevail over TRIPs copyright principles.

The U.S. is one of few countries that require registration of copyright works in regards to the recovery of statutory damages. It is evident that the U.S. laws on statutory damages do not violated the Berne Convention because aggravated parties still may file their infringement claims and recover other damages. Yet, Congress found the way to maintain its legal tradition of requiring registration despite international commitments; after all, that is what sovereignty is all about.   

 

Full post as published by IBLS Internet Law Blog on January 13, 2010 (boomark / email).