Mr. WALCH. There is nothing that leaps to mind at this moment that impresses me that it would, that the procedure would be as comprehensive as it is now. Right now we look to the Library of Congress as being the depositor of all those works, and they are registered, and that is a very comfortable feeling for libraries, knowing there is at least one place in the United States all these items are placed. I think we could study that matter and perhaps come up with some suggestions, but nothing comes to mind. Mr. CARDIN. It might be helpful if you want to go back and talk to some of your colleagues, it seems to me some statement by Congress could in fact be extremely helpful if we were to eliminate the formal requirements. There may well be some action that Congress could take that would encourage the continuing filing, even though it is admittedly voluntary, not as a precondition to protection? Mr. WALCH. Fine. Mr. CARDIN. Thank you, Mr. Chairman. Mr. KASTENMEIER. Are there any other questions of the witnesses? If not, I wish to thank the two witnesses. I think Mr. Lawson has raised some questions about inclusion of architectural works which, frankly, has been a neglected area in terms of study with respect to inclusion. So it is most helpful. Both of you have been helpful to the committee. We appreciate your contribution. This concludes today's hearing. Without objection, I would like to include for the record a letter, and it is from Irwin Karp, dated yesterday, together with a statement of the National Committee for the Berne Convention relevant to some of the questions raised this morning. [The information follows:] The National Committee for the Berne Convention respectfully submits the enclosed statement for inclusion in the Subcommittee's record of its hearings on pending bills to implement U.S. Adherence to the Berne Convention. Attached, is a list of groups which subscribed to NCBC's memorandum: WHY THE UNITED STATES SHOULD JOIN THE BERNE CONVENTION. - the basic The statement comments on the bills' provisions concerning copyright notice, registration and recordation of copyright transfers "formalities" required by the Act. In summary, the statement notes: 1. To be compatible with the Berne Convention, the U.S. Copyright Act should not provide that the exercise or enjoyment of rights it grants are "subject to any formality"; Article 5(2) of Berne precludes such conditions. 2. Section 401 on notice of copyright is made compatible with Berne; the bills provide that notice shall be voluntary rather than mandatory. But the proposed abolition of section 404 would deny the benefit of voluntary notice to many authors/publishers of articles, poetry, etc. 3. Section 411 makes registration of copyright, and section 205(d) makes recordation, a condition for infringement suits; they are incompatible with Berne and should be repealed. However, 3 bills retain these conditions, while S. 1301 adds an unnecessary and harmful new penalty. 4. Sections 411 and 205(d) were not meaningful incentives for registration prior to 1978. The new Copyright Act created far more powerful new incentives after 1977: section 412, compelling registration as a condition for the essential remedies of statutory damages and attorneys' fees; and section 410(c) which conditions mandatory prima facie effect of a copyright certificate on registration within 5 years of publication. Sincerely yours, CC: Members of the Subcommittee Irwin Karp, The National Committee for The Berne Convention 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: (i) 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 - |