February 10, 1988 STATEMENT OF THE NATIONAL COMMITTEE FOR THE BERNE CONVENTION - - TO - SUBCOMMITTEE ON COURTS, CIVIL LIBERTIES, & THE ADMINISTRATION OF JUSTICE RE: PROVISIONS ON FORMALITIES IN BILLS TO IMPLEMENT U.S. The National Committee For the Berne Convention ("NCBC") has submitted to the Subcommittee a Statement, dated July 2, 1987, setting forth the reasons why the United States should join the Berne Convention. The more than 50 organizations and companies that subscribe to the NCBC statement are listed on its cover page, copy attached. Several of these subscribers represent hundreds of U.S. companies and thousands of U.S. citizens who create, publish, produce or otherwise disseminate copyrighted works, and other subscribers speak for a broad constituency of educational and library organizations. Since sections in the pending bills that change present requirements for notice, registration, and recordation of copyright claims are intended to make our Copyright Act compatible with the Berne Convention, NCBC respectfully submits the following comments on these proposed revisions. Our comments deal primarily with the question of compatibility. We should note, however, that this does not imply that subscribers to our July 2nd Statement have no other concerns with proposed changes in formalities. Consequently, we will indicate various objections raised as to some of these provisions. Some subscribers to NCBC's July 2nd statement have or will submit comments to the Subcommittee; e.g., book publishers' views on revising copyright formalities were expressed in a November 6th statement to the Subcommittee by the Association of American Publishers, some of whose members are NCBC subscribers. Section 401 (Title 17) requires a copyright notice on all publicly distributed copies of works published by the copyright Owner's authority. Omissions or errors in notice may result in restriction or forfeiture of copyright protection. (Secs. 405 & 406) These provisions are not compatible with Article 5(2) of the Berne Convention, which states that the enjoyment and exercise of rights provided in the Convention "shall not be subject to any formality." The WIPO "Guide to the Berne Convention" explains that "formality" means "any condition which is necessary for" any of the specified rights "to exist." (Sec. 5.5, at page 33.) The reasons why the notice requirements of section 401 are incompatible with Berne are discussed in the Final Report of the Ad Hoc Working Group on U.S. Adherence to the Berne Convention ("the Ad Hoc Report"), prepared at the State Department's request. This discussion appears in Chapter VII of the Report, reprinted at pp. 468-69 of Senate Serial No. J-99-25, the Transcript of Hearings before the Senate Subcommittee on Patents, Copyrights and Trademarks; May 16, 1985 and April 15, 1986. (Page citations are to pages of the Senate Transcript at which the pertinent portion of the Ad Hoc Report appears.) All of the pending Bills eliminate the incompatibility of section 401 by revising it to make the use of a copyright notice voluntary rather than mandatory. The Bills add an incentive for the voluntary use of notice; namely, that a copyright notice under the revised section would foreclose the defense of innocent infringement in mitigation of damages. (But, since this foreclosure applies only if the notice appears on copies to which the defendant "had access", it might not be available where the copies involved omitted the notice without the authorization, or contrary to the instructions, of the copyright owner.) NCBC believes that the proposed amendments of section 401 bring it into compliance with the Berne Convention. Some copyright groups have expressed concern because the Bills would repeal section 404, which deals with copyright notices for poems, articles, stories and other works published as contributions to magazines or other collective works. Section 404 provides that the copyright notice for the magazine or other collective work satisfies the notice requirement for each contribution. This is a significant safeguard for authors and publishers since, often, the publisher of a collective work will not include separate copyright notices for each of the contributions it contains. If section 404 is eliminated from the Act, many authors and publishers might lose the protection that would be provided to copyright owners who voluntarily include a copyright notice in publicly distributed copies. Those who urge that section 404's substance be retained in the Act point out that a copyright notice for the collective work sufficiently warns the public (as section 404 indicates), and therefore should prevent the defense of innocent infringement from being raised in a suit for infringement of copyright in an individual contribution to a collective work which bears a "collective" notice. (a) Section 405 (a) of the Act requires registration as a condition for curing omissions of copyright notices. The Ad Hoc Report explains why this requirement is not compatible with the Berne Convention; Chapter IX, at 480-82. Each Bill revises section 405 (a) to apply it only to copies publicly distributed before the implementing statute's effective date, thus bringing it into compliance with Berne. (b) Section 411 provides that a copyright owner must register the copyright before commencing a suit for infringement. Imposing this condition on works of foreign origin is not compatible with Article 5(2) of the Berne Convention, since the condition makes "the enjoyment and exercise" of the fundamental right granted by the Copyright Act - the right to prohibit infringement - "subject to a formality." (Ad Hoc Report, Chapter IX, at 477-482.) While the Copyright Office believes section 411 is compatible with Berne, that opinion is not consistent with the plain letter of Article 5(2), or with the views of highly regarded Berne commentators (ibid.) For the same reasons, section 205(d)'s requirement of recordation as a condition for suit is not compatible with Berne's Article 5(2) (ibid), and the following comments apply to recordation as well as registration. H.R. 1623, H.R. 2962 and S.1971 do not revise or repeal section 411, thus retaining registration as a condition for suit. At a minimum, it seems clear, registration should not be required for works of foreign origin. Its retention for works of U.S. origin would not be incompatible with Berne since the Convention does not apply to them by virtue of Article 5(3) which stipulates that "protection in the country of origin is governed by domestic law". As the WIPO Guide states, "in short, the protection in the country of origin of a work where the author is a national of that country is governed exclusively by the national legislation; the Convention offers no protection whatsoever." (at 34) However, all of the bills reject the "two-tier" approach, recognizing that it would be unjust to U.S. authors and publishers/producers. Eliminating the requirement of registration as a condition for suit would not reduce the incentive for copyright owners to register works of foreign origin, or works of U.S. origin. That requirement was not a meaningful stimulus to registration prior to 1978, under the 1909 Act, since the Supreme Court had ruled that registration could be made many years after publication (Washington Pub. Co. v. Pearson, 306 U.S. 30 [1936]). Moreover, registration could be made after the infringement occurred, without depriving the copyright owner of statutory damages and attorneys fees or the prima facie effect of the registration certificate. In sharp contrast, the 1976 Act, effective January 1, 1978, established new incentives for registration far more powerful than its requirement as a condition for initiating an infringement suit: (1) Section 412 deprives the copyright owner of statutory damages and attorneys fees if the infringement begins before registration is made, unless registration is made within 3 months after first publication of a work infringed in that period. This new condition is a vastly more compelling stimulus to registration than section 411 since statutory damages and recovery of attorneys fees are, in a majority of infringements, the only meaningful remedies. Without them, copyright owners are literally helpless against infringement. Section 412, which is not incompatible with Berne, remains in effect -- providing greater incentive to registration than existed prior to 1978, under the 1909 Act. (ii) The 1976 Act added a second potent incentive for registration that did not exist from 1909 to 1977. Under section 410 (c) a copyright certificate provides mandatory prima facie evidence of a copyright's validity and the facts stated in it only when registration is made before or within 5 years after publication. That prima facie effect is extremely valuable to copyright owners and their successors or heirs; consequently, the 5-year limitation is another powerful new spur to registration. It did not exist from 1909 to 1977 under section 209 of the 1909 Act; prima facie effect in those decades was given to a registration certificate without any time limit on registration. Since these two post-1977 conditions provide far greater impetus for registration than existed under the 1909 Act, and vastly greater stimulus to register than does section 411, there is no reason for the United States to enter Berne while retaining formalities that are not compatible with its Article 5(2) -- registration as a condition for suit, and recordation ass a condition of suit. There is even less reason why a new penalty should be added to our statute, as S. 1301 provides. Although it would eliminate section 411, it would add a new condition (section 7(c)) which deprives copyright owners of statutory damages and attorneys fees for all subsequent infringements (even those occurring after registration), if registration or recordation is not made within 5 years after publication. Copyright owners believe this unnecessary penalty will be very harmful to many author and copyright proprietors. The view also has been expressed that if this new forfeiture of basic remedies is added to U.S. law, other countries in and outside of Berne might decide to apply a similar registration (or recordation) requirement to works of U.S. origin, or even decide to require registration of works of U.S. origin on penalty of losing some remedies under their laws. The United States would be in no position to object because we impose these requirements and penalties on their authors. If other nations did impose these requirements, U.S. copyright owners would be deprived of significant protection in important foreign markets -- just as many U.S. corporations lose protection of trademarks abroad because they cannot afford to separately register their marks in several countries. One of the great advantages U.S. copyright owners enjoy in other nations thanks largely to Article 5(2) of Berne, is the absence of registration (or recordation) requirements and penalizing forfeitures of remedies such as sections 412 provides and S. 1301 proposes to add. Respectfully submitted, National Committee for the Berne Convention, By Irwin Karp National Committee for the Berne Convention WHY THE UNITED STATES THE BERNE COPYRIGHT CONVENTION As of September 1, 1987, the following organizations have subscribed to this Statement: As of January 1, 1988, the following organizations also had subscribed to this Statement: Ashton-Tate Corporation, Harris Publishing Company, Hudson Hills Press, Inc., IPL (Intellectual Property Owners, Inc.), Lotus Development Corporation, MPAA (Motion Picture Association of America), Music Publishers Association of the United States, Peter Norton Computing, and Intellectual Property Committee (consisting of): Bristol-Myers Company, E. I. du Pont de Nemours and Company, FMC Corporation, General Electric Company, General Motors Corporation, Hewlett-Packard Company, IBM Corporation, Johnson & Johnson, Merck & Co., Inc., Monsanto Company, Pfizer Inc., and Rockwell International. |