Intellectual Property Law

Chapter 16 Lecture Notes

Major points addressed in the chapter include the following:

1. There is no such thing as an international copyright that will protect an author’s work
throughout the world. Protection is afforded on a country-by-country basis; however,
most countries offer protection to foreign works under international conventions and
treaties.

2. There are two principal international copyright treaties: the Berne Convention and the
Universal Copyright Convention (UCC). These treaties impose certain minimum
requirements on each signatory country. After instituting these minimum obligations,
countries are free to enact other statutes. Thus, protection is far from uniform around
the world.

3. In 2002, two international treaties adopted by WIPO (often called the Internet
treaties) entered into force to protect copyrighted works in the digital environment.
The United States is a party to both of these new treaties (by virtue of its passage of
the DMCA), which are viewed as the most important updates to international
copyright protection in a generation.

4. Determination of the scope of copyright rights in foreign countries should be done
prior to publication of a work inasmuch as protection in some countries may depend
on facts existing at the time of first publication of a work.

5. Most countries provide that copyright protection exists independently of any
formalities and that it is not necessary to register a work to achieve copyright
protection for a work. Duration of copyright in many countries is similar to that in the
United States, namely 70 years after the author’s death.

6. The Berne Convention was created in 1886 and has more than 165 members,
including the United States, which became a member in 1989. The Berne Convention
is administered by WIPO and is based on the principle of national treatment: Each
member nation must treat nationals of other member countries like its own nationals
for purposes of copyright.

7. The Berne Convention has established certain minimum levels of copyright
protection to which all member nations must adhere, thereby ensuring that copyright
laws in the member nations will share many similar features.

8. The Berne Convention provides that copyright protection cannot be conditioned upon
compliance with any registration formalities, thus clarifying that works are
automatically protected without requiring registration or a notice of copyright.

9. The most significant change made to U.S. copyright law so that the United States
could become a party to Berne was the abolition of the mandatory notice of
copyright, previously required in the United States. Thus, failure to place a notice on
a copyrighted work no longer results in the loss of copyright.

10. Berne also recognizes moral rights (the rights of authors to claim authorship of their
works and to object to mutilation or modification of their works that would injure
their reputations). Although the United States recognizes moral rights for works of
fine arts, the scope of moral rights afforded in the United States is less extensive than
that provided in many other countries.

11. Before a copyright infringement suit is brought for a work of U.S. origin, the work
must be submitted to the Copyright Office for registration. Works originating in other
countries are exempt from the requirement to register before bringing suit (although
no statutory damages or attorneys’ fees are permissible unless a work is registered in
the United States, whether it is a work of U.S. origin or a foreign work). Authors
whose works originate in the United States, however, must still comply with the
requirement of registering their work (or showing registration was refused) before
suing for infringement.

12. Two recent treaties supplement Berne and the United States has agreed to be bound
by these new treaties, often called the Internet treaties. The WIPO Copyright Treaty
expressly recognizes that computer programs are protected by copyright as literary
works, clarifies that an author’s exclusive right to distribute his/her work extends to
electronic distribution, and requires member nations to provide remedies against a
person who alters electronic rights management information and to provide legal
protection against the circumvention of security or encryption devices used by
authors to protect their works. The WIPO Performances and Phonograms Treaty
protects the rights of performers and producers of phonograms (tapes, discs, and so
forth).

13. The United States is a party to the Internet treaties by virtue of its passage of the
DMCA, which prohibits the circumvention of protection technologies and insulates
Internet service providers from copyright liability (assuming they follow certain
procedures, as discussed in Chapter 15).

14. Neither of the new WIPO Internet treaties addresses liability of Internet service
providers for copyright infringement using the Internet (although the new DMCA
legislation in the United States clarifies that Internet service providers are not liable
for infringement if they do not know of the infringing acts, do not profit from them,
and follow certain other requirements and procedures such as those relating to the
“takedown” of materials that violate copyright). The WIPO Copyright Treaty
provides that databases consisting of original work can be protected; however, no
decision was reached on protection of databases that result from time and effort
(which would essentially overrule Feist, which held that a work is not copyrightable
merely because it arose from “sweat of the brow”).

15. The Uruguay Round Agreements Act of 1994 amended U.S. copyright law in several
ways, including the addition of remedies for bootlegging sound recordings of live
musical performances and music videos. The URAA also provided for the automatic
restoration of copyright in certain foreign works (but not U.S. domestic works) that
had fallen into the public domain in the United States (generally because their authors
had not complied with prior U.S. law requiring a copyright notice on a work).
“Reliance parties” (those who used the work while it was in the public domain) are
given a one-year grace period to phase out sales (after the copyright owner provides
them or files with the Copyright Office a Notice of Intent to Enforce its copyright
rights).

16. The World Trade Organization was established in 1995 to implement the URAA and
serve as a forum for trade-related issues. The United States is a member.

17. Under U.S. law, the U.S. Trade Representative identifies “priority countries” that
deny effective protection of intellectual property rights. The USTR can impose
sanctions against such countries.

18. The United States became a party to the UCC in 1955, prior to the time the United
States joined the Berne Union. Like Berne, the UCC is also based on the principle of
national treatment although the UCC imposes fewer minimum standards on its
members than does the Berne Convention. The Berne Convention takes precedence
over the UCC inasmuch as the terms of Berne (rather than those of the UCC) govern
relationships among Berne members even though those parties may also be members
of the UCC.

19. Gray market goods (or “parallel imports”) are those lawfully made but which are
imported into the United States without the copyright owner’s permission.

20. The U.S. Supreme Court held in Quality King in 1998 that a copyright holder loses
control over subsequent sales of material produced in the United States once a first
sale occurs anywhere. Once this first sale occurs, even abroad, the purchaser of the
work or product can resell the item anywhere without permission of the copyright
owner.

21. The Quality King ruling was expanded in 2013 in Kirtsaeng, which held that the first
sale defense applies even if the goods were originally manufactured abroad. Thus,
once a first sale occurs, the original copyright owner’s rights are exhausted, and the
purchaser may resell or give away the work without obtaining the copyright owner’s
permission—regardless of where the work was originally manufactured.