Intellectual Property Law

Chapter 16 Discussion Answers

1. Sophia, a U.S. citizen, would like to seek copyright protection in several foreign
countries (all members of the Berne Convention) for her book of poems. The
book has been published in the United States. How will Sophia go about
achieving copyright protection for the book?

Sophia will need to apply for copyright protection in each country in
which she desires protection. There is no such thing as an
“international copyright” that will protect a work in all countries.
Protection is afforded on a country-by-country basis. The fact that
Sophia’s works have previously been published in the United States
may complicate matters to some degree because the extent of
protection afforded to a work in some countries may depend on facts
existing at the time of first publication.

Because Sophia is seeking protection in Berne Convention countries,
the works will generally be protected by complying with the terms of
the Berne Convention (because member nations must treat nationals
of other member countries like their own nationals for purposes of
copyright).

2. Would your answer to Question 1 change if the book were published in the United
States without a copyright notice?

No. Including or omitting a copyright notice has no effect because
under the Berne Convention, works are automatically protected
without requiring notice of copyright or registration (and countries
may not condition copyright on such “formalities”).

3. What is the duration of protection of the book in the various countries?
Under the Berne Convention, works are protected for a minimum of
50 years. Thus, the book will have a minimum 50-year protection
period in every country. Many nations, however (including the United
States), offer longer periods of protection.

4. Harry, a British author, lost copyright protection for his works in the United
States by not including a copyright notice on his books (in 1985, when the United
States required notice of copyright). Harry filed a Notice of Intent to Enforce
Rights under the URAA with the Copyright Office.

a. What effect does this Notice have on Martin who has been selling the
books at his bookstore since 1993?
Harry’s copyright in the book (which entered the public
domain in the United States in 1985 because it was published
without a copyright notice at the time the United States
required such notice) was automatically restored under the
URAA. His Notice of Intent to Enforce means that Martin now
has 12 months to sell his existing stock in the books and phase
out any such sales or distributions, display, etc.

b. What effect does this Notice have on Mark who made a 1992 film based
on one of Harry’s books?
Mark created a derivative work based on Harry’s original
work. Under the URAA, Mark may continue to use his
derivative work, but he must pay Harry reasonable
compensation to continue to exploit the derivative work.

c. What effect does restoration have on Maria who began selling the books
last year?
Maria is not a reliance party (because she was not exploiting
the work prior to its time of restoration—only after its January
1, 1996, date of restoration). Thus, Harry may immediately sue
Maria for infringement of the work. She does not receive the
limited protection that reliance parties do.

5. Lewis is a U.S. citizen who would like to sue for infringement of his sculpture
entitled Victory. Clark is a French citizen who would like to sue for infringement
of his sculpture entitled Defeat. Discuss any prerequisites either might need to
fulfill in order to bring an infringement lawsuit.
United States law requires that U.S. works be registered (or refused
registration) before a lawsuit can be brought alleging infringement of
the work. Thus, Lewis must register the copyright in the sculpture
before he may initiate any lawsuit alleging infringement. Non-U.S.
works need not be registered before a lawsuit alleging their
infringement may be brought. Thus, Clark need not register the
copyright in his sculpture before he initiates any lawsuit alleging
infringement (registration is, however, a prerequisite for both Lewis
and Clark in order for them to obtain statutory damages and
attorneys’ fees).