Securing and Using Copyright Protection

GloballyEric Priest

WIPO-CPIP Summer School on Intellectual PropertyUniversity of Oregon School of Law

1. Does the U.S. author have rights in the other jurisdiction (e.g., China)?

2. Is the alleged infringer violating those rights?

3. Where can the U.S. author sue?

• Can she sue in a U.S. court?

• Is she eligible to sue (i.e., does she have legal “standing”) in a Chinese court?

4. Regardless of the court in which she sues, which country’s law should apply?

Territoriality Principle in International Law

• Principle: States lack power to prescribe legal rules that govern activities outside their national borders.

• Why would states accord such a self-limiting principle of international law?

1. National sovereignty: One nation should not interfere in another’s affairs. Attempts by one state to regulate conduct in another might be viewed as an attack on sovereignty.

2. Promote global commerce by securing reasonable investment expectations: Businesses should expect to be subject to the laws of countries in which they operate, not of those in which they don’t.

Procedural Rules that limit a court’s ability to hear a copyright case: Jurisdiction and

other abstention doctrines• Subject matter jurisdiction (jurisdiction over law and facts—Does the court have the

power to hear a case concerning infringement that occurred beyond its borders)

• Territoriality principle in theory provides a general limitation on whether a court has power to hear the case.

• (But the general trend is courts in common law jurisdictions and the EU will hear copyright cases if they have personal jurisdiction, though they might apply a different country’s copyright law.)

• Personal jurisdiction (jurisdiction over over the defendant—Does the court power to hale a defendant into court)

• Comity

• Forum non conveniens

• Exhaustion of remedies/res judicata

Key International Copyright Treaty Regime

• Berne Convention

• The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (World Trade Organization agreement)

• Universal Copyright Convention

• Rome Convention

• WIPO Copyright Treaty

• WIPO Performance and Phonograms Treaty

• Maastricht (EU) Treaty

• Beijing Treaty on Audiovisual Performances

Berne & TRIPS• Berne (1886)

• Sets certain minimum standards for copyright protection under national law.

• Repudiated formalities as a prerequisite for copyright protection; established principle of automatic protection for persons from other Berne Convention member countries.

• Applies to works of authors who are nationals of member countries, or works of non-member-country nationals whose works are published in a member country.

• Central to Berne and all of the major copyright treaties is the non-discrimination principle (or “national treatment” principle).

• Also established “independence of protection”: an author’s right to protection in a member country is dependent on that country’s domestic law, not on whether the author has protection in the author’s own country.

• Generally, minimum term of protection is life of author + 50 years

Berne & TRIPS• TRIPS

• Binding IP agreement on all members of World Trade Organization

• Incorporates most Berne Convention provisions

• Adds “most-favored-nation” provision

• Adds an enforcement mechanism (WTO dispute resolution procedure)

International Harmonization

• Together these treaties create significant harmonization among national copyright systems.

International Harmonization

• National treatment + most-favored-nation + independence principle + no formal prerequisites for protection = copyright protection in most countries for most authors.

• Harmonization does not mean unification: each country’s copyright system remains distinct and territorial.

Choice of Law Rules• The general rule concerning whether a copyright was

infringed:

• Apply the law of the country in which the unauthorized use (infringement) occurred.

• (In our example, a court would apply Chinese law.)

• But choice of law rules concerning other litigated questions (e.g.ownership) may be different.

1. Does the U.S. author have rights in the other jurisdiction (e.g., China)?

2. Is the alleged infringer violating those rights?

3. Where can the U.S. author sue?

• Can she sue in a U.S. court?

• Is she eligible to sue (i.e., does she have legal “standing”) in a Chinese court?

4. Regardless of the court in which she sues, which country’s law should apply?

Now, based on what we’ve learned, how would you answer these questions?

Subject Matter• Berne Art. 2 covers copyrightable subject matter:

• “…every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.”

Subject Matter• Berne also requires protection for

various adaptations of works

• Some omissions—

• Sound recordings

• Data compilations

• Computer software

(These are provided for in other treaties)

Subject Matter• The treaties set minimum standards—

baselines, and countries are not limited to protecting finite categories of works.

• Countries universally require that a threshold for protection be that the work derived from the author’s intellect.

• Common law countries usually use the term “originality”

• Civil law countries usually require an “imprint” of the author’s persona.

Subject Matter

• As a general rule, most countries’ courts apply the anti-discrimination principle when considering protectability.

Case Study: Sports Broadcasts in China

Subject Matter

• Countries do differ in protectable subject matter in some areas, e.g.:

• Perfumes

• Fashion Designs

• Data/factual compilations

Exclusive Rights• Economic rights

• Reproduction

• Adaptation

• Public distribution

• Public performance

• Communication to the public

• Public display

Exclusive Rights• Moral rights

• Rights of integrity and attribution (both required by the Berne Convention)

• These are personal rights that remain with the author despite alienation of economic rights

• Right of first publication

• Right to withdraw a work from circulation

Neighboring Rights• Subject matter that “neighbors” copyright because it does

not fall within what’s traditionally viewed as literary and artistic works.

• Performances

• Phonograms (Sound Recordings)

• Broadcasts

• Not generally subject to Berne, but other treaties like the Rome Convention and the WIPO Performance and Phonograms Treaty

Neighboring Rights• In common law countries (e.g., U.S., U.K., Canada), some of

these rights are included within copyright (but may be circumscribed).

• E.g., in U.S., no copyright rights for performers (if they are not considered the authors of the recording)

• (although some limited sui generis rights granted to performers to prevent unauthorized recording of live performances)

• Sound recordings limited in scope of protection and no public performance right

Enforcement• Coercive remedies include:

• Injunctions (temporary and permanent)

• TRIPS Art. 50: judicial authorities must be able to order prompt and and effective provisional measures.

• Permanent injunction generally available if the copyright owner can show irreparable harm.

• Seizure and impounding

• Preservation of evidence

• Removal of infringing goods or manufacturing equipment

• U.S. Copyright Act also gives courts the authority to order destruction of the infringing goods

Enforcement• Monetary remedies

• TRIPS Art. 45(1) mandates that judicial authorities in member countries have the power to order monetary damages “adequate to compensate” for the injury to the right holder.

• In most countries (except U.S.), knowledge or negligent disregard of copyright infringement must be shown before damages may be awarded.

• Computational methods vary, but generally involve calculations of lost profits by the copyright owner or unjustly gained profits by the infringer or lost licensing revenue.

• In the U.S., statutory damages are available as an alternative.

Enforcement

• Criminal sanctions—TRIPS Art. 61 mandates that criminal sanctions must be available in cases of willful copyright piracy on a commercial scale.

Cross-Border Enforcement Issues: Intermediary Liability

Cross-Border Enforcement Issues: Importation of Infringing Copies

• § 602. Infringing importation or exportation of copies or phonorecords4

(a) Infringing Importation or Exportation.—

(1) Importation.—Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.

(2) Importation or exportation of infringing items.—Importation into the United States or exportation from the United States, without the authority of the owner of copyright under this title, of copies or phonorecords, the making of which either constituted an infringement of copyright, or which would have constituted an infringement of copyright if this title had been applicable, is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under sections 501 and 506.

Cross-Border Enforcement Issues: Importation of “Gray-Market” Copies

• § 602. Infringing importation or exportation of copies or phonorecords4

(a) Infringing Importation or Exportation.—

(1) Importation.—Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.

(2) Importation or exportation of infringing items.—Importation into the United States or exportation from the United States, without the authority of the owner of copyright under this title, of copies or phonorecords, the making of which either constituted an infringement of copyright, or which would have constituted an infringement of copyright if this title had been applicable, is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under sections 501 and 506.

Defenses: Fair Use/Fair Dealing

• Major affirmative defense to copyright infringement in US is fair use.

• Some countries have fair use, but many apply fair dealing, which is typically narrower, topic-by-topic exceptions.

US Copyright Act § 107§ 107. Limitations on exclusive rights: Fair use Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Copyright Law of the PRC, Article 22

(1) use of another person’s published work for purposes of the user’s own personal study, research or appreciation;

(2) appropriate quotation from another person’s published work in one’s own work for the purpose of introducing or commenting a certain work, or explaining a certain point;(3) unavoidable inclusion or quotation of a published work in the media, such as in a

newspaper, periodical and radio and television program, for the purpose of reporting

current events;(4) publishing or rebroadcasting by the media, such as a newspaper, periodical, radio

station and television station, of an article published by another newspaper or periodical, or broadcast by another radio station or television station, etc. on current political, economic or religious topics, except where the author declares that such publishing or rebroadcasting is not permitted;

(5) publishing or broadcasting by the media, such as a newspaper, periodical, radio station and television station of a speech delivered at a public gathering, except where the author declares that such publishing or broadcasting is not permitted;

(6) translation, or reproduction in a small quantity of copies of a published work by teachers or scientific researchers for use in classroom teaching or scientific research, provided that the translation or the reproductions are not published for distribution;

(7) use of a published work by a State organ to a justifiable extent for the purpose of fulfilling its official duties;

(8) reproduction of a work in its collections by a library, archive, memorial hall, museum, art gallery, etc. for the purpose of display, or preservation of a copy, of the work;

(9) gratuitous live performance of a published work, for which no fees are charged to the public, nor payments are made to the performers;

(10) copying, drawing, photographing or video-recording of a work of art put up or displayed in an outdoor public place;

(11) translation of a published work of a Chinese citizen, legal entity or other organization 12

from Han language into minority nationality languages for publication and distribution

in the country; and(12) transliteration of a published work into braille for publication.

Three-Step Test

• "It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works [a] in certain special cases, provided that [b] such reproduction does not conflict with a normal exploitation of the work and [c] does not unreasonably prejudice the legitimate interests of the author.” Berne Art. 9