International Judicial Monitor
Published by the International Judicial Academy, Washington, D.C., with assistance from the
American Society of International Law

Summer 2012 Issue

Private International Law Discourse


Transnational Copyright Litigation

Carolyn A. DubayBy: Carolyn A. Dubay, Associate Editor, International Judicial Monitor

In the last 25 years, international law has come to play a significant role in all aspects of copyright protection and litigation in the United States.  One of the leading international conventions governing the protection of copyrighted works is the Berne Convention for the Protection of Literary and Artistic Works, which the United States joined in 1989.  The United States’ obligations under the Berne Convention resulted in a number of changes to existing U.S. copyright law.  Importantly, the Berne Convention Implementation Act did away with certain formalities, such as copyright notice, that had caused a number of foreign works to fall into the public domain.  Following the United States’ participation in the Uruguay Round General Agreement on Tariffs and Trade (GATT) and entry into the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), Congress also enacted the Uruguay Round Agreements Act (URAA) in 1994, which restored copyrights to many foreign works that had fallen into the public domain prior to the United States’ entry into the Berne Convention.  Recently, in Golan v. Holder, 132 S. Ct. 873 (2012), the Supreme Court rejected a challenge to the constitutionality of the URAA brought by orchestra conductors, musicians, publishers and others who had previously enjoyed free access to such foreign works.

Beyond these aspects addressing the protection of foreign works, the United States’ entry into the Berne Convention also resulted in additional protection for certain works that had previously been outside the scope of U.S. copyright law.  For example, the Berne Convention also called for the recognition of “moral rights” (rights of attribution) of authors, which led to the enactment of the Visual Artists Rights Act of 1990 and extended moral rights to authors of certain works of visual art.  The Berne Convention also required copyright protection for architectural works, which resulted in passage of the “Architectural Works Copyright Protection Act.”

An important motivation for the United States’ entry into the Berne Convention was to secure better protection for the copyrighted works of American authors outside the United States.  The Berne Convention’s principle of “national treatment” is articulated in Article 5, which provides generally for the right of foreign authors to equal protection in copyright actions brought in countries outside the country of origin of the work.  In such actions, Article 5(2) also provides that:  “the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.” The general understanding of this language is that it provides a lex loci delicti basis for choice of law in infringement actions– that is, the location where the infringement occurred determines the applicable law.  Consistent with this provision, the federal Copyright Act has also been interpreted by the courts as having no extraterritorial application to acts of infringement that occur outside the United States.

Despite the language in Article 5 of the Berne Convention, courts continue to struggle with the problem of choice of law in transnational copyright cases where ownership (and possibly later transfer) originated outside the United States, but the acts of infringement occurred within the United States.  Specifically, does the national treatment standard identified in the Berne Convention require the same applicable law to ownership and infringement issues?  Commentators, courts and scholars are somewhat divided on this issue.  In Itar-Tass Russian News Agency v. Russian Kurier, 153 F.3d 82 (2nd Cir. 1998), however, the Second Circuit rejected any interpretation of Article 5 that would impose a choice of law rule requiring application of the law of the nation where the infringement occurred in all circumstances relating to the copyright.  The Second Circuit instead interpreted Article 5 to require only a rule against discrimination between domestic and foreign authors, and not a choice of law principle.  Subsequent to this decision, other courts have found that the national treatment standard in the Berne Convention does not supply a choice of law rule, but instead assures potential copyright plaintiffs that regardless of whether the author of the work is foreign or domestic, the law of the country of infringement applies with equal force. 

In the absence of a governing set of choice of law rules either derived from the Berne Convention or the federal Copyright Act, courts turn to federal common law to resolve the conflicts issues in transnational copyright cases.   Under existing choice of law analysis, differing laws may govern the issue of ownership of the copyright, the validity of transactions involving the copyright, and the alleged infringement.  For example, in the Eleventh Circuit’s recent decision in Saragema India, Ltd. v. Mosley, 635 F.3d 1284 (11th Cir. 2011), the court applied Indian copyright law to the issue of copyright ownership and the validity of the transfer of that copyright, while applying U.S. copyright law to the ultimate question of infringement occurring within the United States. 

In turn, the federal common law of conflicts may apply principles of private international law as “part of our law,” as famously stated in Hilton v. Guyot, 159 U.S. 113 (1895).  Application of private international law to determine applicable law in transnational copyright cases will undoubtedly become more important in the future as choice of law issues in copyright cases become more complex in a globalized market place where books, songs, movies, computer programs and other protected works pass freely from country to country through the Internet and other streams of commerce.   Complex licensing agreements that span different regions, and changes in ownership of the copyright itself, further implicate difficult choice of law issues. 

To confront these questions concerning choice of law in transnational copyright litigation, several organizations have begun to focus on developing principles that can be applied by the courts in such cases, or that may serve as the basis for a future convention relating to choice of law in intellectual property cases.  Courts and practitioners in the United States and beyond should therefore be aware of at least two current projects to develop international guidelines for choice of law in transnational copyright cases.  First, the American Law Institute (ALI) is currently working on a project entitled “Intellectual Property:  Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes.”  Second, the European Max Planck Group on Conflict of Laws in Intellectual Property (CLIP) has drafted a set of soon-to-be published principles on conflict of laws in intellectual property that cover issues ranging from applicable law to recognition and enforcement of foreign judgments.  CLIP’s Principles are due to be published in 2012.  With these projects ongoing, there is hope that in the future a set of uniform rules for choice of law in transnational copyright litigation may come to fruition.

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© 2012 – The International Judicial Academy
with assistance from the American Society of International Law.

Editor: James G. Apple.
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