It's a Small World After All: How Book Publishers & Authors Can Protect Their Rights Abroad
Marshall McLuhan, the famous social scientist, told us more than 50 years ago that newer and more powerful means of communication have turned the world into a "global village," something that brings people together at one level, but at another level, complicates social relationships. A bigger, worldwide, audience increases the number of people who might be tempted to "borrow" your content and since copyright law is essentially national in nature, enforcing rights in original content against foreign theft can be a problem.
But let's back up a step -- why are we talking about suing anybody at all?
Your content is valuable -- you have invested hard earned money, energy and creativity in your creations. These creations generate value and income and if they can be copied, used as the source for derivative works, performed, or mined without your permission and without compensation to you, it would be grossly unfair. It would be like someone moving into your house and crowding you out into the street. And it would be bad enough if you were the only victim of this kind of "rip-off"; if that kind of behavior cannot be readily stopped, and owners cannot be compensated for unauthorized uses, then the incentive for new creations to be made and for innovative expression to come into being, would be reduced to the vanishing point. And some time it takes force, the kind of force embodied in a court proceeding, that invokes rights so valuable that they were first articulated in Article I of the U.S. Constitution, to preserve that value.
We live in a world market now. Societies and cultures in other parts of the world do not uniformly respect intellectual property rights such as those embodied in copyright and to obtain the redress necessary to protect such rights takes an effort. But what if the infringers are not here in the U.S.?
When can a U.S. copyright be recognized internationally? And when, if ever, can a U.S. copyright owner sue someone in the United States whose infringing acts have been committed abroad? The answer is: "look at the copyright treaties."
Treaties are agreements between and among nations governing rights of different kinds. Some treaties are bi-lateral (two countries) and some are multi-lateral. The two treaties that matter here are multi-lateral.
The Berne Convention -- National Treatment and Minimum Standards
The Berne Convention was originally agreed to by only ten countries in 1886. Today, all of the world’s largest countries belong to Berne. The United States declined to join Berne for almost 100 years, but finally amended U.S. copyright law to conform to Berne in 1988 (effective in 1989 with the enactment of various amendments to the Copyright Act, called "The Berne Convention Implementation Act").
The Universal Copyright Convention (UCC) does provide for a form of copyright notice, but the Berne Convention is recognized as assuring higher levels of protection than the UCC. Today, most foreign countries do not require copyright notice or other formalities as a condition to copyright, and most non-Berne countries as a matter of policy do not require any such formalities.
National Treatment. One of Berne’s key features is that copyrighted works should enjoy in all Berne countries the same protection which those nations accord the works of their own citizens. This is referred to as so-called “national treatment.” In other words, Spain cannot grant any less copyright protection to U.S. copyright owners than to its own citizens. Therefore, while not providing for automatic recognition of a U.S. copyright in other nations, Berne does assure that copyright owners will not be treated any less favorably than a Berne nation treats its own citizens.
Minimum Standards. Berne also outlines standards to which nations should adhere, sometimes referred to as “minimum standards.” Some of those standards include a minimum term of protection for copyrighted works of the life of the author plus 50 years, provisions for protecting anonymous and pseudonymous works, and requiring that the remedy of seizure be generally available in all Berne nations.
Prohibition of Formalities. The Berne Convention prohibits nations from denying recognition of a copyrighted work solely on the basis of formal requirements. However, this prohibition only applies to those formalities which establish the conditions for copyright protection. Berne countries can still condition certain remedies (e.g., statutory damages or attorney’s fees) on compliance with stated formalities, subject to the rule of equivalent national treatment.
Computer Software. The Berne Convention itself does not expressly provide for recognizing copyright in computer software. However, the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”) mandates protection for computer programs as literary works under Berne. The TRIPs provisions, which provide for protection of databases and expression, but not underlying facts, are similar to those available under existing U.S. law.
Domestic Laws Required. Finally, the Berne Convention is not self-executing. For example, the United States still needed to enact domestic legislation before they were considered in compliance with Berne. Copyright owners should not assume that the exact language of the Berne Convention has been employed by all, or even most, foreign countries. The specific domestic legislation of any country should be consulted before making any copyright-related decisions in that country based solely on the protections afforded by Berne.
Bringing Suit Against International Copyright Infringers in United States Courts
The U.S. Copyright Act has no extraterritorial operation; therefore, infringing acts occurring abroad are not actionable under U.S. law. While this general principle sharply curtails the opportunity to haul parties which have committed infringing acts abroad into United States courts, it does have several qualifications or exceptions.
First, if part of the “act” of infringement occurred within the United States, those parties which contributed to acts in the United States may be rendered liable under American copyright law even if the infringing acts (like publication and sale) were finally completed in a foreign jurisdiction.
Second, decisions in foreign courts under foreign copyright laws that a specific act constituted copyright infringement may serve as collateral estoppel in actions between the same parties under the U.S. Copyright Act.
Finally, even if one infringing act occurs in the United States, the U.S. courts can still obtain jurisdiction over all claims, including acts of extraterritorial infringement.
In summary, the goals of the treaties are to level the playing field, and give all owners equivalent rights, wherever they reside, and wherever their works travel in commerce. Protecting your rights against foreign infringement takes some work, but it's doable.
Sam Fifer has extensive experience in the fields of intellectual property, and entertainment and media law, including litigation and counseling. He is the US practice leader of Dentons' Intellectual Property and Technology practice.