Prof. Jane C. Ginsburg, Columbia University School of Law
August 18, 2010

When the United States ratified the Agreement on Trade Related Aspects of Intellectual Property (TRIPs) in 1994, it undertook to implement Article 18 of the Berne Convention (a provision the United States had left unaddressed when the U.S. ratified the Berne Convention in 1988).  This text requires that member States who join the Berne Union extend copyright protection to works from other member States so long as the copyright in the foreign work’s country of origin has not expired.  The treaty thus obliged the United States, as a new member State, to restore copyrights in foreign works that remain protected at home but that may have lost protection in the United States, for example because of failure to comply with formalities such as affixation of notice of copyright or renewal of copyright registration, or which may not have enjoyed U.S. copyright protection at all because at the time of the foreign work’s first publication, the country of origin had no copyright relations with the United States.  The Berne Convention allows the State implementing Article 18 to provide for transitional measures to accommodate the interests of persons who previously exploited the foreign work in reliance on its public domain status.

In Golan v. Holder, the plaintiffs – orchestra conductors, educators, performers, publishers, film archivists, and motion picture distributors – complained that the restoration of copyright in works by Soviet composers such as Dimitri Shostakovich prohibited, or imposed prohibitive costs for, the performance and other exploitations of these composers’ works, in violation of the plaintiffs’ First Amendment interests.  At an earlier stage of the proceedings, the Tenth Circuit held that removal of works from the public domain raised sufficient free expression interests to require heightened scrutiny of the copyright-restoration legislation.1  On remand, the district court held that the United States had failed to meet its burden of justification: “[T]o the extent Section 514 suppresses the right of reliance parties to use works they exploited while the works were in the public domain,” the legislation was unconstitutional.2  In June 2010, the Tenth Circuit reversed, holding that the restoration provision passed First Amendment “intermediate” scrutiny because it was sufficiently “narrowly tailored to advancing [the] important governmental interest[] of … obtaining legal protections for American copyright holders’ interests abroad.”3

I do not propose in this column to analyze Golan v. Holder further.  Rather, consistent with the Tenth Circuit’s emphasis on the benefits to U.S. copyright holders of U.S. implementation of Berne Convention Article 18, I will focus on the mutuality of interests that Article 18 furthers.  The text is in fact a two-way street: New Berne members must restore copyrights in foreign Berne works, but old Berne members also must extend copyright protection to the new Berne member’s works.  The only condition is that the work must not have “fallen into the public domain in the country of origin through the expiry of the term of protection.”  The French Cour de cassation, that nation’s highest civil law court, has recently construed Article 18 in a controversy concerning infringement in France of the classic American film “His Girl Friday” (with Rosalind Russell and Cary Grant).4  The plaintiffs, who were selling unauthorized DVDs and videocassettes of the film, sought a declaration that because the film had fallen into the public domain in the United States 28 years after its publication in 1939 due to non-renewal of registration of copyright, the U.S. film producer and its French licensee had no basis on which to object to plaintiffs’ exploitation of the film in France.  The copyright claimants rejoined that under Article 18 of the Berne Convention, once the United States ratified that treaty, U.S. works that may previously have been in the public domain at home and accordingly in France, now would be protected anew in other Berne Union members, including France, even if the works remained in the public domain in the United States.  This seems a rather bold argument.  After all, why should a foreign country extend coverage to a work that the country of origin will no longer protect?

The answer turns on the text of Article 18.  Not every reason for the work being in the public domain in its country of origin permits another member state to withhold copyright protection. Another Berne member may decline to protect the new member’s work only if its home copyright term has expired.  If the work has fallen into the public domain for other reasons, particularly if the author failed to comply with formalities imposed by the country of origin, other Berne Union members may not deny protection.  In the case of “His Girl Friday,” the work fell out of copyright because of non-compliance with the renewal registration formality; thus, the French high court held that the condition for declining protection did not apply:

The Court of Appeals correctly held that the conditions for applying article 18.1 of the Berne Convention must be analyzed in light of article 5.2 of this same Convention, by virtue of which the enjoyment and exercise of copyright are not subject to any formality; the Court of Appeals correctly deduced that [the obligation of protection under] the Convention applied to works fallen into the public domain for any cause other than the expiration of the term of protection; thus the work “His Girl Friday” of Howard Hawks, which, registered in 1939, had not fallen into the public domain at the time of the entry into force of the Berne Convention in the USA, in 1989, “through the expiry of the term of protection,” which, at the time, and setting aside any formalities, was 56 years….

The reference to Article 5.2 is fundamental: The Berne Convention has, since 1908, prohibited member States from conditioning protection of foreign Berne works on compliance with formalities, whether in the country whose protection is sought, or in the work’s country of origin.  Authors’ difficulties in complying with multiple national formalities, or for that matter, in demonstrating to a foreign court their compliance with formalities at home, proved a significant impediment to effective international protection.  The removal of formalities as a condition of protection was the signal accomplishment of the 1908 Berlin Revision of the Berne Convention; with that revision, copyright protection arose automatically in every Berne Union country upon creation of the work by an author who was a national of any Berne member State, or upon first publication in any Berne member State.  The Article 18 text, “expiry of the term of protection,” also was a product of the Berlin Revision; the Acts of the revision conference clearly exclude non-compliance with formalities as a justification for denying restoration of copyright protection.5

On the other hand, Article 5.3 of the Berne Convention allows member States to accord their own works less protection than required with respect to works from other Berne Union members.  Thus, a Berne member State may not impose formalities on foreign works, but it may require that domestic works comply with conditions such as notice and registration of copyright.  As a result, the Berne Convention did not oblige the United States to restore copyright in U.S. works that fell into the public domain for non-renewal of copyright, and, indeed, the film “His Girl Friday” remains in the public domain in the United States.  But, as the French high court recognized, Berne’s tolerance of domestic formalities is limited to the country of origin.  If other Berne member States denied protection to foreign works on the ground of non-compliance with formalities in the foreign work’s country of origin, then the domestic formalities would take on international effect, and this is a result plainly inconsistent with the Berne Convention.  Indeed, it was precisely to prevent domestic formalities from compromising international protection that the Berlin revisers added Article 5.2.

An alternative argument for withholding protection in France, not confronted by the Cour de cassation, would be that the Article 18.1 condition for non-restoration in fact was met: “His Girl Friday” was in fact in the public domain in the United States because the “term of protection” then was 28 years from publication.6  The additional 28 years that would have attached had the copyright been renewed constituted another term of protection, but “the” term under the 1909 Copyright Act, in effect when “His Girl Friday” was first published, was the first 28 years.  This argument might draw support from decisions interpreting grants of copyright for “the term of copyright” to 28 years, unless the grant specified “and any renewals and extensions thereof.”7

But this argument encounters another Berne-based objection.  It is implicit in Article 18.1 as well as in Article 7.8, which provides for a comparison of copyright terms, and directs member States to apply the shorter of the term of protection in the country of origin or in the country for which protection is sought, that the “term” must be consistent with the minimum durations of copyright set out in Article 7.  For most works, that term is 50 years post mortem auctoris,though for cinematographic works member States may apply a term of 50 years from publication.  The (first) term of protection under the U.S. 1909 Copyright Act being only 28 years from publication, this term fell below the substantive minimum requirements Berne imposes on member States.

On the other hand, where it is clear that the Berne Convention forbids member States from internationally extruding the formalities with which they may freight domestic works, the Berne Convention, through the “rule of the shorter term,” does give limited international effect to domestic copyright terms.  While the general approach of the Berne Convention is “national treatment,” meaning that member States must accord foreign Berne works at least the same level of protection as local works; duration of protection is an exception to the rule of national treatment.  Article 7.8 specifically instructs member States to ascertain what is the duration of protection in the country of origin; if it is shorter, then the foreign work will not receive national treatment; rather, the Berne member State will apply the term of protection of the foreign work’s country of origin.  Article 7.8 does not explicitly limit how much shorter the country of origin’s domestic term may be.  If there is no limit, so that the “rule of the shorter term” would allow the application of a copyright term that falls below the Berne minimum term, then “the term of protection” that serves as the reference point for Article 18.1 might also be sub-normal, and the host country need not restore copyright in works that fall into the public domain in the country of origin because of the expiration of a very short (28-year) term of protection.

But this argument twists the two axes of the treaty.  The Berne Convention works on two bases: first, the rule of national treatment, which, according to Article 5.1, makes international protection distinct from protection in the country of origin (with a few exceptions, including Article 7.8, permitting member States to apply the rule of material reciprocity); second, substantive minima of protection, which prescribe a threshold of substantive coverage that may with respect to some member States afford more protection to foreign Berne authors than that State grants its own authors.  Indeed, the substantive minima are designed to counter the possibility that a member State’s domestic protection is so low that national treatment will yield inadequate protection.  The argument drawn from Article 7.8 would allow domestic norms of duration to override the substantive minimum term for international protection.  But an exception to the rule of national treatment does not authorize or imply an exception to the application of the substantive minima.

Thus, while a member State may provide for a sub-Berne term of protection in the country of origin, once the work leaves home to seek protection in another Berne member State, the host State must accord the work at least the Berne minimum term.  Under Article 7.8, if the host’s domestic term exceeds the Berne minimum (for example, 70 years pma instead of Berne’s 50), it need not grant the foreign work the years over and above the Berne minimum term.8  But to read the Convention to permit the host state to apply the sub-normal term of the country of origin would deny a foreign Berne work the minimum term of protection required under the Convention.  The “rule of the shorter term” gives international effect to the country of origin’s Berne-consistent durational norms compared to Berne-plus norms in the host country; it no more gives international effect to sub-normal country-of-origin durational rules than it does to country-of-origin norms that are inconsistent with other substantive provisions such as those requiring host States to provide particular rights (without condition of formalities) to other Berne Union works.9

The French high court’s decision in the “His Girl Friday” controversy demonstrates the importance to U.S. copyright holders of international compliance with the Berne Convention’s requirement of restoration of copyright upon accession to the Convention.  As the Tenth Circuit recognized, restoration imposes costs at home – which Article 18.3 of the Convention also permits member States to attenuate – but Congress may, consistent with the First Amendment, determine that the gains to U.S. copyright holders from restoration of copyright in their works in foreign markets sufficiently offset those costs.