where the U.S. copyright owner authorizes the manufacture, sale and export of copies or phonorecords, it does not have a further right to authorize the reimportation of those particular copies or phonorecords into the United States.

The Sebastian court reacted negatively to an attempt to use ancillary copyrights on trademarked goods to circumvent the failed attempts to use trademark law to prevent brand dilution from parallel imports.

Despite criticism, Scorpio was followed in the 9th circuit. In BMG Music v. Perez,13 the court imposed harsh sanctions for defendant's violation of a preliminary injunction against importation of sound recordings. The court relied substantially on Scorpio's interpretation that the first sale doctrine is restricted to works lawfully made and sold in the United States and the doctrine therefore does not provide a defense to infringing importation when goods are manufactured abroad. The court was particularly persuaded by the reasoning that the right to authorize importation would be devoid of meaning if section 109 were applied to all copies and phonorecords manufactured and sold by copyright owners.

The Ninth Circuit distinguished Sebastian on its facts, but relied on Scorpio to thwart the many contentions defendant raised to avoid contempt and willful infringement sanctions. Defendant's other contentions were dealt with expeditiously. For example, to defendant's argument that only wholesale importation was proscribed by the importation provision, the court replied that importation of multiple copies for commercial resale was undoubtedly the kind of behavior the statute intended to restrict.44

Perez also argued that the First Amendment might exempt it from liability since phonorecords of the works were unavailable in the United States. The court opined that this is not one of the rare instances when First Amendment considerations operate to limit copyright protection for graphic expression of newsworthy events."

45

A decision in the Ninth Circuit has also furnished support for exclusion of gray market perfume to protect extensive economic investment in the product's image. In Parfums Givenchy v. Drug Emporium,46 defendant had acquired copies of a twodimensional ornamental border design on a fragrance container and imported the fragrances into the United States. Citing, the court held the violation of the importation prohibition by Drug Emporium of the fragrance was not excused by the first sale doctrine.

In summary, the holding in Scorpio remains the majority rule concerning parallel importation of copyrighted goods. The district court rejection of this rule in Red Baron was defused by the Fourth Circuit's reversal of the lower court decision. Sebastian, a later decision in the Third Circuit, refined Scorpio but did not disturb its holding. Both are viable decisions. As the best representation of legislative intent, Scorpio has served as an effective precedent to support forceful judgements for copyright owners in parallel import cases in the United States.

IV. HISTORY AND BASIC PRINCIPLES OF THE BERNE CONVENTION

A. Origin of the 1886 Berne Convention.

The Berne Convention of 1886 was the product of 28 years of study and conferences, which began at the 1858 Congress of Authors and Artists in Brussels, Belgium. Several countries had already undertaken individual efforts to protect the works of foreign authors on the basis of reciprocity. In spite of the protection afforded by the bilateral agreements, negotiated by many European countries, there was still general dissatisfaction with the system. The agreements often subjected copyright protection to a variety of conditions and restrictions, and authors and publishers had to comply with a multitude of formalities. The need for a simpler and more uniform method of protecting the works of authors in countries other than their country of origin became apparent.

In 1878, during a Literary Congress held at Paris under the chairmanship of Victor Hugo, the delegates established a permanent international organization-the International Literary Association.47 During an 1882 meeting this Association adopted a resolution stating "that the need for the protection of intellectual property

43 952 F.2d 318 (9th Cir. 1991) cert. denied 120 L.Ed.2d 873 (1992). 44 Id. at 320.

45 Id.

46 No. CV-92-4206 MRP, U.S. Dist. LEXIS 18328 (C.D.Cal. Nov. 23, 1992).

47 In 1884 the word "artistic" was added and the organization became L'Association Litteraire et Artistique Internationale, a title by which it is still known.

was the same in all countries, and that complete satisfaction of this need could only be obtained by the constitution of 'a union for literary property'...."48

In 1884, the Swiss Federal Council convened a diplomatic conference at Berne, and the third session of the conference adopted the text of an international convention for the protection of literary and artistic works in September 1886.49

This Convention reflects any of the most deeply held desires of authors and artists for recognition of their economic rights in their creations. The authors' objectives were both simple and radical: that recognition of copyright in favor of authors "must be made part of the legislation of all civilized countries;" that the recognition of copyright among states not be based upon reciprocity; that no discrimination in rights be permitted between foreign and national authors; that the imposition of formalities for the "recognition and protection" of copyright in foreign works be curbed; and, "that all countries adopt uniform legislation for the protection of literary and artistic works."50

The 1886 Convention contains two basic principles that are still a basic part of the Berne Convention:

1. The Union concept.

The contracting states constituted themselves into a Union for the protection of the rights of authors in their literary and artistic works. In forming this Union, the original members of the Berne Convention "sought to underline that it was not a matter of merely negotiating a contractual agreement between a number of countries, the duration of which depended on the continuing participation of all the signatories, but one of creating a genuine 'society' of states, able to go on existing even after the departure of one or more of them, open to all countries of the world and capable by periodic revision, of keeping pace with juridical, technical and economic change."51

2. Principle of National Treatment.

One of the major advances made in the 1886 Convention was the adoption of the idea that authors who are subjects or citizens of any of the countries of the Union should enjoy in all other member countries the same protection for their works as those countries accord their own authors. This is the principle of "national treatment," also referred to as "assimilation of the foreigner to the national."

B. Successive Revisions of the Berne Convention.

Although primitive by today's standards, the 1886 Berne Convention included provisions such as the "union of states" and national treatment which remain cornerstones of the Convention today. During the more than one hundred years of its existence, the Convention has been revised five times in order to meet changing conditions, such as new technological developments, that may affect authors' rights. At least through the 1948 Brussels revision, the successive texts have generally improved and extended the rights accorded authors and copyright proprietors.

1. 1908 Berlin Act.52

The principal achievement of the Berlin Revision Conference was the prohibition of formalities as a condition of the enjoyment and exercise of rights under the Convention. The term of copyright protection was set for the life of the author plus fifty years, subject to different regulation by the law of each country. The Convention also extended the range of various kinds of literary and artistic works to be protected and clarified that all contracting countries were bound to afford protection by their law to all of these works. The Berlin Revision recognized the exclusive rights of authors of musical works to authorize the adaptation of these works and gave protection to the authors of cinematographic works. Translation rights were recognized for the life of the copyright without restriction. Photographic works were explicitly included.

48 S. Lad as, The International Protection of Literary and Artistic Property 75 (1938) (hereinafter "Ladas").

49 The original text was signed by ten countries: Belgium, France, Germany, Great Britain, Haiti, Italy, Liberia, Spain, Switzerland, and Tunisia.

50 Ladas at 72.

51 World Intellectual Property Organization, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act, 1971) 9 [1978] (hereafter "Wipo Guide").

62 The Berlin Conference of 1908 worked the first major revision of the Berne Convention, but the first changes were made by an 1896 Paris Conference. This "Additional Act of Parish” made perfecting amendments regarding interpretation of the Berne Convention and firmly recognized the right of translation for a minimum term of ten years.

2. 1928 Rome Act.

This revision expressly recognized the moral rights of authors, giving them both the right to claim authorship, and the right to object to modifications of the work that prejudicet their honor and reputation. States are free to determine conditions of the exercise and safeguard of these moral rights. This revision also specifically recognized the right to authorize broadcasting of a work, but details of the right were left to national legislation.

3. 1948 Brussels Act.

This revision made mandatory the fifty years after the death of the author copyright term of protection as the minimum term of protection. It also added general improvements in copyright protection including: a special right of recitation; optional droit de suite, subject to reciprocity; and protection against communication by cable of the broadcast of the work if that broadcast is made by a body other than the original one. It recognized cinematographic works as a sui generis category, to which works produced by analogous processes were added.

4. 1967 Stockholm Act.

The Stockholm Act created the World Intellectual Property Organization (WIPO) to administer the Union. It extended protection through assimilation of authors not nationals of a Union country but having their habitual residence in one of those countries to nationals of such a country and also established a "Protocol Regarding Developing Countries," which would have allowed developing countries broadly to limit the rights of translation and reproduction. This Act 54 also gave explicit recognition to and provided special regulation of the right to authorize the reproduction of a work and provided other special rules for cinematographic works. C. summary of the 1971 Paris Act.

The latest text of the Berne Convention was concluded at Paris in 1971. Apart from the special provisions for developing countries set forth in an integral appendix, the 1971 Act carries forward the generally favorable level of protection previously enjoyed by authors under the Berne Convention.

Apart from the administrative provisions (which we will not discuss), the Berne Convention_today contains 20 Articles, defining the subject matter of protection under the Convention, setting out points of attachment with the Convention that give rise to the obligation to protect these works, establishing the rule of national treatment and the independence of copyright protection as among the countries of the Union from protection in the country of origin, enumerating certain minimum economic and moral rights of authors with respect to the utilization of their works, establishing specific opportunities to exempt certain uses from the exclusive rights guaranteed by the Convention, setting down special provisions taking account of the unique circumstances surrounding the creation and dissemination of motion pictures, and governing retroactive application of the Convention.

The substantive provisions of the Berne Convention cannot be accurately capsulized in a summary statement. Indeed, the meaning of many of the provisions of the Berne Convention cannot fully be found from a mere reading of the 1971 Paris Act. Copyright treaties simply do not exist in isolation from the domestic copyright laws of states party to such treaties.

The Berne Convention has three general types of provisions: 1) specific rules that guarantee rights to authors and proprietors; 2) rules that establish more general obligations, leaving the details to national legislation within specified limits; and 3) optional rules whose acceptance is left entirely to national law. Absent specific legislation, and depending upon domestic jurisprudence, rules that are susceptible of direct application could be given legal effect by adherence to the Convention. [Article 36]. The range of options open to a member of the Berne Union in implementing Convention obligations is reflected in the diversity of national legislative approaches within the framework of the Convention. Of the many ambiguous questions surrounding the application of copyright law to new technologies and changes in user

53 This right to an interest in resales of works of art and manuscripts is entirely optional for member states and is available only on the basis of reciprocity. Article 14ter.

54 Because of its controversial Protocol, developed countries generally refused to accept the substantive provisions of the Stockholm Act, and the Act is significant primarily for the creation of WIPO, which replaced the International Bureau of the Berne Union (BIRPI) as the administrative organization (secretariat). The substantive provisions later came into force as part of the successful 1971 Paris Revision. The Protocol Regarding Developing Countries was modified to narrow the possible exceptions to exclusive rights. The provisions of the 1971 Paris Act are discussed separately in the next section of our statement.

and proprietary behavior in the marketplace, Berne may provide few answers on its face and much conflicting practice among the members of the Union.

With these caveats in mind, several generalizations about the substance of the 1971 Paris Act of Berne may be offered for more precise analysis.

When referring generally to "literary and artistic works," the Berne Convention means "every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression." [Article 2(1)]. The Convention contains an illustrative listing of such works, "painting," "architecture," "photographic works to which are assimilated works expressed by a process analogous to photography," "illustrations," and "three dimensional works relative to geography, topography, architecture or science," to name but a few. As in the United States copyright law, the subject matter of protection under Berne is established with reference to the creative nature of a work, not its medium of expression or any particular technology of fixation.

The familiar provisions of section 103 of the United States copyright act concerning the protectability of compilations and derivative works are reflected in Articles 2(3) and (5) of the Berne Convention. Further, the extension of copyright protection to governmental or other official works is subject to the discretion of Union states under Article 2(4) of the Convention. The Convention contains an express provision excluding from the scope of its obligations that of protecting by copyright "news of the day or... miscellaneous facts having the character of mere items of press information." [Article 2(8)]. The rationale of this provision draws the familiar line between the non-protectability of facts, per se, as opposed to the protectability of particular original expressions of fact, containing "sufficient intellectual effort for them to be considered as literary and artistic works."55

The obligations of states within the Union to protect works depends upon certain eligibility criteria being satisfied. Minimum eligibility requirements are specified in Articles 3 and 4 of the Convention. Oversimplifying somewhat, Berne provides that the protection of the Convention applies to the published and unpublished works of authors who are nationals of a country of the Union; and to the works of non-Unionist authors first published in a country of the Union (including simultaneous publication in a Berne and a non-Berne country). For purposes of the first criterion, do domiciliaries of Convention countries are treated the same as nationals.

The second criterion, that of first publication in a Berne Union country, is the basis upon which United States works long secured protection in states party to Berne before the creation of the UCC. Our copyright owners used the device of simultaneously publishing works in the United States and the nearest Berne country market: Canada. This procedure has been commonly referred to as the "back door" to Berne.

Formalities of a certain kind cannot be applied to works having a country of origin (generally the place of first publication) other than the country where protection is sought. The Convention by its terms does not govern protection for works in their country of origin. Therefore, formalities can be maintained for works in their country of origin.

The Berne Convention contains a number of articles establishing minimum terms of protection, in general and for specific works. As mentioned earlier, the Berne Convention adopted the minimum term of life of the author plus 50 years post mortem as early as 1908; yet, it became a mandatory requirement only in 1948. Special minimum terms of protection are provided for cinematographic works, anonymous and pseudonymous works, photographs and works of applied art insofar as they are protected as artistic works. For motion pictures, the minimum term is "50 years after the work has been made available to the public with the consent of the author, failing such an event within 50 years from the making of such a work, fifty years after the making." The provision as to anonymous and pseudonymous works is structurally similar to section 302(c) of the United States Copyright Act, with the exception that the Convention's minimum term is 50 years from first publication or 100 years from creation. The minimum term of protection for works of applied art and photographs under Berne is 25 years from the making thereof.

The minimum economic rights of authors specified in the Berne Convention are those familiar to students of the copyright laws of most countries of the world, including countries outside of the Berne Convention: the exclusive right of translation; the exclusive right of reproduction; the right of public performance or recitation (which in Berne is divided basically into two broad categories broadcasting and non-broadcasting public performances); the right of adaptation, that is, to authorize the adaptation, alteration or arrangement of works; and the right to record musical works.

55 Wipo Guide at 23.

In addition to the specific minima, the Convention requires member states to accord national treatment to foreign works, thus prohibiting discrimination against foreign works and their authors.

The Berne Convention does not contain express recognition of the right of public distribution, in the fashion of section 106(3) of the United States Copyright Law, nor of the right of public display created by section 106(5) of the 1976 Copyright Act. The silence of the Convention on the right of public display probably reflects its relative novelty. The absence of specific rules as to the scope of distribution rights for all or certain works may reflect the variable practices of states. Some contend that the distribution right is part of the reproduction right.

As is the case with national copyright laws, the Berne Convention permits exceptions to exclusive rights. Berne permits exceptions permitting free quotations from publicly distributed works "providing that their making is compatible with fair practice and their extent does not exceed that justified by the purpose...." [Article 10(1)]; and, special exemptions favoring the reproduction of articles on "current economic, political, or religious topics" are permitted under certain circumstances.

Union states are further allowed to "permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, providing such utilization is compatible with fair practice." [Article 10(2)1.] And Union states are allowed, with respect to the exclusive right of reproduction,

to permit the reproduction of such works in special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.

[Article 9(2).]

With respect to public performance rights other than broadcasting, and apart from specific exceptions such as Article 10(2) and 10bis, dramatic, dramatico-musical and musical works are accorded unqualified rights. However, "minor reservations" to non-broadcast public performances are tolerated among the states party to Berne, in accordance with a broad understanding reached during the Stockholm revision conference in 1967.

In the important area of public performance by broadcasting, the Berne Convention establishes a comprehensive right applicable to traditional broadcasting, wire diffusion, retransmission, rebroadcasting and public communication of broadcasts. Unlike the case of non-broadcast public performances, however, the Berne Convention permits the application of compulsory licenses in the case of the broadcasting right.

The Berne Convention also contains provisions authorizing states to legislate exemptions permitting ephemeral recording, essentially similar to the system adopted in section 112 of the 1976 Copyright Act.

With respect to the rights of authors of musical works to authorize the recording of their compositions, the compulsory license for making Andy distributing phonorecords of nondramatic musical works in the United States copyright law has long had its analog in the Berne Convention.

The Berne Convention has a number of interesting provisions relating to copyright in cinematographic works. They are recent, having been adopted at the 1967 Stockholm Conference, and put into effect through the 1971 Paris Act. To oversimplify a rather complex subject, the relevant provisions of the Berne Convention attempt to define minimum rights and points of attachment for protection to cinematographic works with reference to the author of a film, while leaving to national legislation discretion to determine who such an author is.

Apart from the economic rights of authors in their works and permissible limitations upon such rights, the Berne Convention also contains the provisions known as “moral rights" which encompass a variety of specific interests authors have with respect to public utilization of their works, more in the nature of artistic and professional integrity than pure commerciality. The recognition and progressive elaboration of the moral rights of the author is and has long been one of the most distinctive features of the Berne Convention.

In fact, Article 6bis of the Convention does not necessarily exhaust the potential scope of so-called "moral rights" however recognized in states party to the Berne Convention. Some states include the right to first publish a work as a moral rather than economic right, or recognize the author's right to object to unfair or excessive criticism of his or her work, or the right of an author to withdraw a work from circulation (subject to compensation of authorized distributors). The Convention does not elaborate on the important question of assignability or waivability of moral rights by specific agreement.