PROTECTION OF WORKS OF FOREIGN ORIGIN

The question dealt with in this study is that of the basis on which the works of foreign authors should be given copyright protection in the United States.

After a brief survey of the development of our law on this subject since 1790 (Chapter I), the present law is analyzed (Chapter II). This is followed by a short summary of the legislative proposals since 1909 (Chapter III), and the solutions obtaining in some of the important foreign countries in this field (Chapter IV). Finally, possible alternatives for dealing with this question in a revision of the present law are presented (Chapter V).

Unlike any other country, the United States has two sets of rules governing the protection of literary and artistic works: common law and federal statute. The basis for protecting works of foreign origin is different under the two sets of rules. This must be kept in mind and will be referred to throughout this study.

Chapter I

HISTORY OF THE DEVELOPMENT OF U.S. LAW SINCE 1790

In the case of unpublished works protected by the common law, the nationality of the author has not in the past, and does not at present, have any significance. Works of alien authors have the same status as works of U.S. citizens under the common law.2

Under our first federal statute, adopted in 1790, the published works of U.S. citizens and residents only were eligible for protection.3 This situation remained unchanged for a hundred years. During that century, most of the leading European countries concluded bilateral arrangements for the reciprocal protection of the works of their authors, and in 1886, they "constituted themselves into a Union. for the protection of the rights of authors" by signing the so-called Berne Convention, a multilateral treaty for the protection of copyright, based on the principle of national treatment (i.e., that each member country would protect works originating in other member countries on the same basis as it protected its own domestic works). The United States did not participate in the creation of the Berne Union and has never become a member of it. Nor did the United States, during this first century of federal copyright legislation, make any bilateral arrangements with any foreign country for reciprocal copyright protection.

1 Before the adoption of the Copyright Act of 1909, the works of authors were protected under the common law until they were published; upon publication protection was governed by the federal statute. Since 1909 the same rule applies except that certain classes of works may be registered before publication, and upon registration common law protection is replaced by protection under the federal statute (17 U.S.C. § 12). ́ Cf. Paige v. Banks, 13 Wall. 608 (1872), and Ferris v. Frohman 223 U.S. 424 (1912).`

3 Act of May 31, 1790, ch. 15, §§ 1 and 5, 1 Stat. 124.

4 Berne Convention, Article 1.

In 1891, Congress passed an Act which, for the first time, opened the possibility of protection for works of foreign origin. Their eligibility for protection in the United States depended on whether the author of the work was a citizen of a "proclaimed country," i.e., & country which was found by the President of the United States to meet either of two conditions: that it granted to U.S. citizens substantially the same protection as to its own citizens ("national treatment"), or that it was a party to an international agreement providing for reciprocity and open to adherence by the United States ("open convention"). The President's finding took the form of a proclamation-hence the designation "proclaimed country."

The system was implemented on the same day the Act came into force by proclamations issued in respect to nationals of Belgium, France, Great Britain and Switzerland. Germany and Italy followed in 1892, Denmark and Portugal in 1893, Spain in 1895, Chile and Mexico in 1896, Costa Rica and The Netherlands in 1899, Cuba in 1903, Norway in 1905, and Austria in 1907. Thus, prior to the general revision of the copyright law in 1909, sixteen countries had been proclaimed under the Act of 1891.7

The Act of 1909 made some changes in the provisions for Presidential proclamations. The 1909 Act retained, as bases for proclamations, the two incorporated in the 1891 Act ("national treatment" and "open convention," discussed above) and it added a third one: The President could proclaim a country if he found that it gave substantially the same protection to our citizens as we gave its citizens ("reciprocal treatment"). The 1909 Act also provided that a special, separate finding by the President was necessary in respect to musical recording rights (so-called "section 1(e) rights"), that is, foreign authors would enjoy musical recording rights only if their country gave similar rights to our citizens, and if this circumstance was found and proclaimed by the President. This resulted in two proclamations for many countries: one extending the benefits of the Act except for musical recording rights, and another extending musical recording rights. In other instances the proclamation for the latter rights was included expressly in the general proclamation.

The adoption of the 1909 Act was followed by the issuance of a new proclamation in respect to those sixteen countries which had already been proclaimed under the 1891 Act. Numerous other proclamations followed so that the present number of proclaimed countries is thirty-five."

Act of March 3, 1891, ch. 565, § 13, 26 Stat. 1106.

The 1891 Act also imposed on all books and certain other works the requirement that copies be manufactured in the United States (§ 3). This, of course, was generally a far greater burden for foreign works than for domestic works. This requirement has been eased somewhat since 1891 by successive amendments. It does not now apply to foreign-language books by foreign authors; and English-language books manufactured abroad may now secure "ad interim" copyright for five years, which may be extended to full-term copyright upon the manufacture of an edition in the United States within the ad interim term, (17 U.S.C. §§ 16, 22, 23). Moreover the requirement of U.S. manufacture does not now apply to foreign works entitled to protection under the Universal Copyright Convention (17 U.S.C. § 9(c)).

A reference list of these and the subsequent proclamations referred to below, and the text of the procla mations, are available from the U.S. Copyright Office.

Act of March 4, 1909, ch. 320, § 8, 35 Stat. 1075.

Act of March 4, 1909, § 1(e).

10 Argentina, Austria, Austria, Belgium, Brazil, Canada, Chile, Costa Rica, Cuba, Czechoslovakia, Denmark, Finland, France, Germany, Great Britain, Greece, India, Ireland, Israel, Italy, Luxembourg, Mexico, Monaco, Netherlands, New Zealand, Norway, Philippines, Poland, Portugal, Rumania, Spain, Sweden, Switzerland, Tunisia, Union of South Africa. For three countries (Costa Rica, Mexico and Portugal) the proclamations do not include musical recording rights.

Excluded from this listing are proclamations that have lapsed, those relating to former countries no longer in existence, and those proclaiming the effectiveness of conventions and treaties.

It must be remembered that in addition to the 35 countries here named there are some 25 other countries whose works are now protected in the U.S. under treaties or conventions.

It should be noted that the protection of foreign works by virtue of a proclamation is subject to compliance with the general requirements of the U.S. statute as to notice, deposit, registration, and manufacture in the U.S.11

Prior to our adherence to the Universal Copyright Convention in 1954, the United States joined two international multilateral conventions, the Mexico City Convention (1902) in 1908, and the Buenos Aires Convention (1910) in 1914,12 thus establishing copyright relations with a number of Latin American countries. The fact that the ratification of these two Conventions-still effective-was not accompanied by implementing legislation creates areas of some uncertainty, as both Conventions may be thought to exclude the applicability of some provisions in the present U.S. statute: the manufacturing clause (§ 16), the requirement of a specified form of copyright notice (§§ 19, 20), and in the case of the Buenos Aires Convention-the requirement of deposit and registration in the U.S. Copyright Office (§§ 13, 14). The United States also entered into a few bilateral treaties dealing with copyright, as will be noted below.

By the forties of this century it became increasingly doubtful that a number of countries, and among them the United States, would ever become members of the Berne Copyright Union. Efforts were made, after the Second World War, to establish a new multilateral convention acceptable to these as well as to the Berne countries. The efforts resulted, in 1952, in the conclusion of the Universal Copyright Convention which the United States ratified in 1954.13 Under this Convention, works of nationals of, or works first published in, the other Convention countries became eligible for protection in the United States subject, in the case of published works, to the insertion in each copy of a copyright notice which is a somewhat liberalized version of the traditional American notice. Works protected under the Convention became exempt from the manufacturing clause, and also from the requirements of deposit and registration except as a prerequisite to an infringement action. Details of protection under this and other theories are discussed in the following Chapter II of the present paper.

Chapter II

PRESENT LAW

There are three main sources for the protection of the works of an alien author in our present law: the common law, title 17 of the U.S. Code, and certain treaties.

(1) Common law

Under the common law, works of alien authors and those of U.S. citizens are protected indiscriminately as long as they are not published and not voluntarily registered in the Copyright Office. The protection is unlimited in time and free of formalities. The rights and remedies available under the common law are discussed in another study.14

11 17 U.S.C. § 10, 19, 20 as to notice; §§ 13, 14 as to deposit and registration; § 16 as to U.S. manufacture. 12 The text of these conventions is set forth in 35 Stat. 1934 and 38 Stat. 1785. 13 6 UST 2731.

14 Strauss, Protection of Unpublished Works [Study No. 29 in an earlier committee print in the present series].

(2) Title 17 of the United States Code

Under our federal copyright statute, 17 U.S.C., protection for works of alien authors that are published or voluntarily registered may be available in three situations:

(a) if the alien author is domiciled in the United States,

(b) if the alien author is the national of a proclaimed country, (c) if the alien author is a national of, or his work is first published in, a foreign country party to the Universal Copyright Convention.15

These three situations will now be considered in turn.

Domicile. The work of an alien author is eligible for statutory protection if he is domiciled in the United States "at the time of first publication of the work" (§ 9(a)). Since the provision speaks about publication, it might be interpreted as meaning that an alien domiciled here cannot, by virtue of that fact alone, apply for registration prior to publication. 15 To this extent the provision is ambiguous. Proclamations. Section 9(b) provides that a proclamation may be issued under any of three conditions:

(i) If the foreign country "is a party to an international agreement which provides for reciprocity in the granting of copyright, by the terms of which agreement the United States may, at its pleasure, become a party thereto" (open convention). This provision seems anamolous. As will be seen, the underlying philosophy of the proclamation system is that we will grant protection only in respect to a country which grants some kind of protection to our citizens. The mere fact that a foreign country is a party to an open convention (to which the U.S. does not adhere) does not result in protection in that country for our citizens. No proclamations have ever been issued on this basis.

(ii) "If the foreign country grants either by treaty, convention, agreement, or law, to citizens of the United States the benefit of copyright on substantially the same basis as to its own citizens" (national treatment).

(iii) "If the foreign country [so] grants to citizens of the United States *** copyright protection substantially equal to the protection secured to such foreign author under this title or by a treaty" (reciprocal treatment).

It will be noted that the protection of our citizens by the foreign country, upon which a proclamation is based, may result either from a treaty between that country and our country, or from the existing law of the foreign country.

If our proclamation is based on the current status of the law of the foreign country, it has a somewhat tenuous basis. The foreign country, not being committed by any agreement to protect the works of U.S. citizens, may later change its law in a manner which deprives our citizens of the required protection. Theoretically, the proclamation could then be rescinded. But as a matter of fact, although there have been instances in which a proclaimed country may have failed to give U.S. works the protection which had been contemplated

15 Protection for alien authors is also available under treaties other than the Universal Copyright Convention which are not mentioned in Title 17 of the U.S. Code. These other treaties are discussed separately below.

15a It was so held in Leibowitz v. Columbia Graphophone Co., 298 Fed. 342 (S.D.N.Y. 1923). But in two later cases it was held that other references in the statute to "publication" included the registration of unpublished works: Marx v. U.S., 96 F. 2d 204 (9th Cir. 1938); Shilkret v. Musicraft Records, Inc., 131 F. 2d 929 (2d Cir. 1942), cert. denied 319 U.S. 742 (1943).

when the proclamation was issued, no proclamation has ever been rescinded for that reason.

All the requirements of the statute for domestic works apply to works of nationals of proclaimed countries, except that for foreign works the statute provides that one copy only need be deposited for registration (instead of the two copies required for domestic works), and that the registration fee need not be paid if two copies of a foreign work are deposited with a catalog card.1

Another point in the federal law which does not operate in the same manner in practice for proclaimed foreigners and U.S. citizens is the right of the Register of Copyrights to demand the deposit of copies of published works; noncompliance with the demand results in liability to a fine and loss of copyright (§ 14). Whereas such demands are constantly made in regard to works published in the U.S., no demands are made, for practical reasons, for copies of works published abroad.

Although, as indicated above, aliens may be favored in some minor respects, they are considerably more burdened than Americans as a practical matter, by the manufacturing clause which requires that English-language books be manufactured in the U.S. in order to be protected for longer than five years. While the manufacturing clause applies alike to works of citizens of the U.S. and of proclaimed countries, the usual place for the manufacture and publication of books is the author's country. The requirement of manufacture in the United States will much more frequently mean added expenses and legal complications for the alien than for the U.S. citizen.

Universal Copyright Convention. Our statute (§ 9(c)) provides in effect that it applies to works of aliens if they are authored by nationals of, or first published in, a country party to the Universal Copyright Convention.

Such works are exempt from obligatory deposit and registration, from the precise requirements of sections 19 and 20 of the U.S. statute as to form and placement of the copyright notice, and from the manufacturing clause, if the published copies bear a copyright notice in the form and location prescribed by the Convention and section 9(c) of the U.S. statute.

(3) Treaties other than the Universal Copyright Convention

A foreign work may be entitled to copyright protection in the United States under a treaty other than the Universal Copyright Convention. Such treaties in effect today are the Mexico City Convention," the Buenos Aires Convention, 18 and bilateral treaties with China,19 Hungary, 20 and Thailand.21

As far as the United States is concerned, the Mexico City Convention now applies only to nationals of El Salvador. Works of nationals of El Salvador may secure protection under that Convention by the deposit of copies and registration in the U.S. (Art. 4 of the Convention).

Under the Buenos Aires Convention, to which 15 Latin American countries and the U.S. are parties, works of nationals and domicili