You or one of your employees has created a work that is copyrightable subject matter—for example, a book, a computer program, a photograph, a song, or an architectural work. You want to make certain that you have the full range of protection available to you, both in the United States and abroad. In this article, we build on the intricacies of securing international patent protection and navigate the legal maze of international copyright protection.
Copyright Law Is National in Scope
The first thing to understand is that there is no such thing as an “international copyright” that will protect an author’s works throughout the world with a single registration (unlike the multi-jurisdictional protection provided by a patent filing under the Patent Cooperation Treaty). Copyright law is “territorial” and national in scope. Regardless of where the author lives or where the work was first published, the copyright protection afforded to a work depends on the national laws of the country in which the author seeks protection. That concept has an important implication for U.S. authors. Regardless of the protection an author has secured for the work in the United States, acts of infringement that occur outside of the jurisdiction of the United States cannot be addressed under the U.S. Copyright Act because copyright laws do not have any extraterritorial operation.
Refresher on U.S. Copyright Law
Before contemplating what protections may be available in other jurisdictions, authors should first make sure they understand the framework for protection in the United States. United States copyright law is governed by the Copyright Act of 1976, as amended. Under U.S. law, copyright protection in original works of authorship exists once the work is fixed in a tangible medium of expression. That is, copyright exists upon “putting pen to paper” and creating an original work.
While the copyright can be registered with the U.S. Copyright Office, registration of the work is entirely permissive, and is not a precondition to holding or maintaining the copyright in the work. However, registration of the copyright is a precondition to filing an infringement lawsuit in federal court. Also, if the author registers the copyright either before publication of the work or within three months after first publication of the work, then the author can seek additional remedies in the infringement lawsuit— namely, an award of attorneys’ fees and an award of “statutory” damages instead of actual damages.
There also is no requirement that the author place the “copyright notice” on the work. The copyright notice is notice in the form of the word “copyright” or the copyright symbol, year of first publication, copyright owner (for example © 2012 Bradley Arant Boult Cummings LLP). However, putting the copyright notice on published works is a good practice, and can be done regardless of whether the copyright has been registered with the Copyright Office.
International Copyright – A Network of Treaties and Conventions
So, if the author has created a work and has published it in the United States, then what steps does the author need to take to obtain international protection? The short answer is: very little. As noted above, copyright law is territorial. So, does an author have to register the copyright in multiple jurisdictions to have any hope of obtaining protection? No.
There are a number of international treaties and conventions that provide protection for creative works that are the subject matter of copyright. Generally, those international agreements provide protection for copyrightable works once they are created (“fixed in a tangible medium of expression”). The Berne Convention for the Protection of Literary and Artistic Works is the most important international treaty that addresses international protection for copyright. The United States acceded to that treaty in 1989. With the accession of China in 1992 and the Russian Federation in 1995, almost all of the world’s most important countries now belong to the Berne Union. The Copyright Office publishes a listing of the countries that are parties to the Berne Convention, as well as other international copyright treaties like the Universal Copyright Convention.
The central feature of the Berne Convention is that it prohibits member countries from imposing “formalities” on copyright protection, in the sense that the enjoyment and exercise of copyright cannot be subject to any formality except in the country of origin. For over a hundred years, the United States resisted joining the Berne Union, in part because of the desire to maintain the formalities U.S. law required. In order to be eligible to join the Berne Union, Congress had to amend the Copyright Act to dispose of the many formalities the Act required. Therefore, while the United States Copyright Act can impose a requirement that the owner of a United States work must register the copyright with the Copyright Office before filing an infringement suit in federal court, it cannot impose that same obligation on foreign nationals. Likewise, foreign jurisdictions cannot impose similar formality requirements on U.S. copyright owners as a condition to filing suit in their national courts, even though they can impose those requirements on their own nationals.
The other main characteristics of the Berne Convention are the concepts of “minimum standards” and “national treatment.” “Minimum standards” are the baseline that all nations must provide to non-domestic claimants. The “national treatment” principle in copyright law states that authors should enjoy the same protection for their works in other countries as those countries accord their own authors. Therefore, a country that is a member of the Berne Union must afford copyright protection to foreign nationals without a requirement of any formalities (like use of a copyright notice or a registration requirement). Foreign nationals must be afforded the same rights and treatment that a domestic copyright holder would receive.
The result then, is that a United States author automatically is entitled to protection against the infringement of his work in a foreign jurisdiction that is a member of the Berne Union. The U.S. author does not have to register the work in the foreign jurisdiction or comply with any other formalities required in the foreign jurisdiction. In fact, there are few benefits, if any, from registering the work in a foreign jurisdiction. However, if an act of infringement occurs in a foreign country, then the infringement lawsuit must be brought in the courts of the foreign country, and will be prosecuted under the terms of the foreign jurisdiction’s copyright law, not under the United States Copyright Act.
With respect to international copyright enforcement, many U.S. copyright owners are left with a bitter taste. While they can be assured of protection for their works in foreign jurisdictions, the road to enforcement usually is with a lawsuit in the courts of a far-flung country (where the proceedings will be conducted in the language of that country) under the law of that country. However, there are some steps a U.S. author can take to understand and perhaps improve that position.
- Although they are not required for ownership and protection, compliance with the formalities of U.S. law will improve an author’s position. That means the owner should certainly put the copyright notice on all published works (e.g., © 2012 Bradley Arant Boult Cummings LLP), and also should register the copyright with the Copyright Office. Complying with those formalities places the world on notice of your claim of rights, and may stop potential infringers otherwise acting in good faith.
- A person or company with whom you are in a contractual relationship can infringe your copyright. Take care to address the limits on copying and distribution in licensing agreements with foreign nationals and foreign companies. Where the copyright owner has a relationship with the infringer that is documented in a written agreement, contract law can be used not only to address issues of copying and distribution, but also to ensure that contract law of a state applies and that the foreign national or company consents to suit in the United States, binding them to U.S. law and U.S. courts.
- If the owner becomes aware of infringement in a foreign jurisdiction, determine if there is any basis for a violation of U.S. law that would be addressed in a United States court. The Copyright Act grants the owner the exclusive right to reproduce the original work, distribute reproductions, display, and adapt the original work. It also prohibits importation, without the copyright owner’s permission, of copies that have been acquired outside the United States. So, the owner can file suit under U.S. law in a United States court if legitimate copies are being imported without permission.
- The importation right also extends to infringing works that were made outside the U.S. and imported into the U.S. Infringement of the importation right occurs where the making of the copy constituted copyright infringement or would have constituted an infringement if U.S. copyright law applied. So, the creation of an infringing copy in China that is then imported into the United States for sale would allow the owner to sue in a United States court and U.S. law would apply.
- Likewise, the exportation from the U.S. of copies without the owner’s permission is infringement under U.S. law. Infringement of the exportation right occurs where the making of the copy constituted copyright infringement or would have constituted an infringement if U.S. copyright law applied. So, the sale of an infringing copy in Russia, where the copy was made in the U.S. and exported to Russia, allows the owner to sue in a United States court and U.S. law would apply.