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Borderless Publications, the Berne Convention, and U.S. Copyright Formalities
Prof. Jane C. Ginsburg, Columbia University School of Law*
October 20, 2009

A recent audacious and, happily, unsuccessful attempt to impose U.S. copyright formalities on foreign-published works illustrates the difficulties of adapting international norms that presume the existence of national borders to a world of simultaneous and pervasive communication of works of authorship. 

In Moberg v Leygues, 2009 U.S. Dist. LEXIS 93402 (D. Del. Oct. 6, 2009), Hakan Moberg, a Swedish photographer, had made his works available on the website of a German gallery through which he was selling his work.  Defendants, two French citizens who operated a U.S.-based website, posted Moberg’s work without his authorization. 

When Moberg brought suit in a U.S. federal district court alleging violation of his U.S. copyrights, defendants rejoined that the court lacked subject matter jurisdiction because Moberg’s claim was subject to the U.S. Copyright Act’s requirement that the right holder of a “United States work” have registered the work before initiating a lawsuit. 

The United States’ membership in the Berne Convention precludes it from imposing the pre-suit obligation on foreign copyrighted works; article 5.2 requires that the exercise of copyright (including its enforcement) not be subject to formalities.  But the Berne Convention does not require member states to free domestic works from formalities (see art. 5.3), hence the United States’ retention of an obligation to register U.S. works before bringing an infringement action. 

Since Moberg published his photographs on a German website, he claimed that the country of origin of his works was Germany, and that he therefore was not subject to the U.S. registration formality.  Defendants, however, asserted that publication of a work on a website accessible in the United States makes the work “simultaneously published” in the United States, and therefore brings it within the definition of a U.S. work for purposes of the pre-suit registration obligation.

The audacity of the defendants’ hopeful invocation of simultaneous publication is apparent: Were the court to accept the contention, then every work first publicly disclosed over a foreign website accessible in the Unites States would become a “U.S. work” and therefore would be subject to U.S. formalities, no matter what the nationality or residence of the authors nor the country from which the authors chose to make the work available. 

Not surprisingly, the district court in this case of first impression found the proposed formalities imperialism rather extravagant, and declined to find that publication on the German website “simultaneously published” the photographs in the United States.

The court observed, among other things:

[T]he transformation of plaintiff's photographs into United States works simply by posting them on the Internet would allow American citizens to infringe on foreign copyrighted works without fear of legal retribution, since the majority of foreign works are never registered in America.  While not all Americans would exploit such an advantage, the misappropriation of intellectual property remains a significant problem and there is no principled reason why domestic users should be able to act with such impunity.

The court also recognized that defendants’ argument would defeat one of the purposes of the Berne Convention:

[I]f the publishing of plaintiff's photographs on the German website simultaneously caused them to be published in the United States, and such publication transformed the work into a United States work, plaintiff would be subjected to the very formalities that the Berne Convention eschews.  To hold otherwise would require an artist to survey all the copyright laws throughout the world, determine what requirements exist as preconditions to suits in those countries should one of its citizens infringe on the artist's rights, and comply with those formalities, all prior to posting any copyrighted image on the Internet.  The Berne Convention was formed, in part, to prevent exactly this result.

Indeed, if one works through the relevant elements of the Berne Convention, the defendants’ construction, while consistent with a literal reading, produces entirely perverse results.  The member state in which first publication takes place is considered the “country of origin,” art. 5.4.  Under article 3.3’s definition, “published works”

means works published with the consent of their authors, whatever may be the means of manufacture of the copies, provided that the availability of such copies has been such as to satisfy the reasonable requirements of the public, having regard to the nature of the work.  The performance of a dramatic, dramatico-musical, cinematographic or musical work, the public recitation of a literary work, the communication by wire or the broadcasting of literary or artistic works, the exhibition of a work of art and the construction of a work of architecture shall not constitute publication.

If one interprets “copies” to include reproductions in RAM (a computer’s temporary memory), then posting a work on a website makes “copies” available to anyone who accesses the website.  If one rejects the RAM copying theory, one might contest the characterization of the posting as a “publication,” on the ground that the website is simply making the material available as a public performance or display.  These are not “publications” under the Berne Convention.  Nonetheless, even if one interprets “copies” under article 3.3 to mean more permanent embodiments, then any website that permits downloading (as opposed to streaming-only) would effect a publication because the downloading public can store the work to a more permanent format, such as hard disk or printout.

Moving to the second prong of the definition of publication, Internet disclosure makes copies available for downloading.  Are these copies “made available to the public in a manner that satisfies its reasonable requirements”? 

The Internet culminates the passage from a model of communication of works to a public of passive recipients of a distribution or performance to a model where networks offer interactive consultation of works at the initiative of that very same public.  Public access now can be immediate, individual and instantaneous.  These copies are made available “on demand.”  Reversing the Rolling Stones’ anthem, if you have a computer and Internet access, “you can[] always get what you want” (if it’s made digitally available); this may be at least as much as “what you need,” for purposes of the Berne Convention. 

As a result, the posting of a work on a website would fulfill the reasonable requirements standard for publication, and thus effect publication in any country in which a sufficient portion of the public is computer-equipped.  This, in turn, would mean that copies are simultaneously made available in every country of the world in which there is adequate Internet access at least for downloading.  Currently, more than 160 countries are Berne Union members (see http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=15).  Many, if not all, will have sufficient computing resources to qualify as places of publication.

If a work initially disclosed over the Internet is simultaneously “published” in up to 164 countries, does that mean that every one of those countries is the “country of origin”?  The consequences of such a conclusion are bizarre indeed.  Recall that the Berne Convention explicitly excuses Union members from according Berne-level protection to its members’ domestic works of authorship.  A Union member meets its Berne obligations if it accords protection consonant with Convention minima to foreign Berne-Union works.  If, however, with potentially simultaneous universal publication via the Internet, every work of authorship could be considered a domestic work in each country of the Berne Union, then, ironically, Berne Convention minimum standards of protection might never apply, because there will be no foreign works.1

The court’s policy analyses against finding the publication of Moberg’s photographs to have been “simultaneous” thus are compelling.  Was the court also correct as a matter of interpretation of U.S. law?  Under section 101 of the U.S. Copyright Act:

For purposes of section 411, a work is a “United States work” only if—
(1) in the case of a published work, the work is first published— ....

(B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States....

The law does not define “simultaneously,” but the international standard set out at article 3.4 of the Berne Convention is “within 30 days of first publication.”  The term of copyright protection in Germany, as in the United States, expires 70 years after the death of the author.  Thus, if making a work available over the Internet is a “publication,” the criteria for application of section 411 would at first blush seem to be met.  “Publication”

is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.  The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.  A public performance or display of a work does not of itself constitute publication.

The court acknowledged that the placement of the photographs on the website in Germany might constitute “publication.”  Although the court did not spell it out, Moberg’s offering his photos to the gallery for their display and download from their publicly accessible website seems to meet the literal definition.  But the U.S. copyright law does not rule Germany.  The question is whether acts have occurred in the United States to effect simultaneous publication in the United States

The court appears, without explicit statement, to require that there be more than simultaneity of availability of copies; rather, the author must take steps specifically to effect first publication of the work in additional countries.  Moberg first offered his photos to a group of persons in Germany, not in the United States.  While his photographs thus became available in the United States, that event, standing alone, may not suffice to establish his designation of the U.S. public as the first audience for his work. 

Although the court did not say as much, in the context of the pre-suit registration formality, the key term is “first” publication.  This is not merely incipient distribution of copies, but, the court appears to assume, deliberate territorial organization of the points of attachment of the work.  Because the country of “first” publication carries consequences for the regime of protection, first publication is not something to be stumbled into.  The possibility that some Internet users in a country in which the foreign website is available might in fact download the work within 30 days of its initial posting seems too random to meet that standard.

Thus, while first disclosing a work on an off-shore website may make the work accessible all over the world, it does not follow, either as a matter of U.S. copyright law, or as a matter of Berne Convention policy, that the work thereby roots its “origin” in every country of potential receipt.  The Berne Convention has since 1908 made authors citizens of the world by automatically endowing them with formality-free protection in every member state (other than the work’s “country of origin”).  Digital communications have vastly enhanced authors’ abilities in fact to make their works known throughout the world. The combination of the two should promote both the dissemination and the protection of works of authorship; it should not (as the defendants in Moberg unsuccessfully urged) perversely subject every digitally disseminated work of authorship to the most restrictive and onerous national copyright regimes’ prerequisites to protection or enforcement of copyright.



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