MEMORANDUM To: Senate Subcommittee on Patents, Copyrights and Trademarks of the Senate Committee on the Judiciary Subject: One-page Summary of Written Statement Regarding U.S. From: John M. Kernochan, Nash Professor of Law, Columbia Date: April 11, 1986 I am strongly in favor of U.S. adherence to the Berne Convention as an aid to the United States in valuable international dealings in intellectual property with nations party to the Universal Copyright Convention (UCC) and a number of nations party to Berne but not to the UCC. Adherence could strengthen our voice in the international development of authors' rights. It could avert the risks of exclusion or retaliatory action stemming from our manufacturing clause and from our "backdoor" use of Berne advantages without assumption of its obligations. Adherence to Berne mainly implicates the adequacy of our provisions for protection of non-U.S. authors protected by Berne, but interchange with Berne countries could also assist us to improve our own protections for authors. I confess, however, to a worry about possible dilution of existing U.S. authors' rights in another wide-open struggle of competing pressure groups in Congress if our law is revised. Aside from some minor queries on compatibility, my main comments concern droit moral, works for hire, and formalities. While there are signs of emerging legislative, judicial and scholarly consciousness of "droits moraux" in the U.S., our law does not substantially protect, and has really not faced up to, the basic interests and concepts articulated in Berne Article 6bis. I agree we can perhaps "squeak by" on compatibility in the droit moral area, leaning on the failures of certain Berne countries (e.g., U.K. and Australia); but I hope we would feel obligated to do more. It is hard to see why the "paternity" right would be controversial in the U.S. As to the "integrity right", somewhat inchoate even in the Berne countries that apply it, we may again be able to "squeak by" though one would hope for more development in the U.S. As to the droit moral "right of disclosure", especially in relation to U.S. treatment of unpublished works, I believe U.S. law is incompatible with the UCC and, arguably, with Berne. Reform on this matter is needed with or without Berne. U.S. work-for-hire law may be barely compatible with Berne, but expanded application of this arrangement and its overuse are arguably antithetical to droit moral concepts and even to our own Constitutional aims. Rethinking is needed regarding our own law in any case. MEMORANDUM To: Subject: Senate Subcommittee on Patents, Copyrights and Trademarks Statement Regarding U.S. Adherence to the Berne Convention From: John M. Kernochan, Nash Professor of Law, Columbia Thank you for inviting me to submit comments on U.S. Adherence to the International Union for the Protection of Literary and Artistic Works, known as the Berne Convention, in preparation for the Subcommittee hearings scheduled for April 15, 1986. Given the short time available to me, I believe the best course is for me to transmit to you, for your consideration, in large part the same statement I have just submitted on the Report of the Ad Hoc Working Group on U.S. Adherence to the Berne Convention (chaired by Irwin Karp, Esq.) a report sponsored by the State Department's Office of Business Practices under Mr. Harvey Winter. Following is a revised text of the statement with a few additions regarding Moral Rights. I am strongly in favor of U.S. adherence to Berne, subject to some doubts about feasibility. Adherence could be of great help to our own increasing, and increasingly valuable, international dealing in "authors' rights" material whether as exporters or importers. It could, inter alia, improve our international relations with Berne countries, including nations we do not reach with Universal Copyright Convention (UCC) relations. It could alleviate some of the strains consequent on our (let us hope temporary) estrangement from UNESCO. It could strengthen our voice in international intellectual property developments, and allay natural resentments occasioned by our use of "back-door" Berne benefits without assuming the responsibilities and commitment Berne membership would fairly" seem to call for. Also important in my view is the pressure Berne adherence should put on us to raise the level of U.S. "consciousness" about authors' needs and the level of protection we accord our own authors a level that lags behind much of the developed world. Without such a raising, other Berne countries might see our adherence as threatening their own hard-won Berne gains for authors. At the same time, I recognize only too well some of the thorny problems of U.S. law revision that Berne adherence and other reforms of the U.S. Copyright Law may entail. The Copyright Revision Act of 1976 is, in a number of respects, inadequate to today's needs and requires a thorough revision in non-Berne respects as well as in ways to accommodate Berne. I recall vividly, however, the two decades or so of struggle to get the Act of 1976 adopted. And I do not think we should undertake the new revision effort required for Berne adherence unless the entire arts community and its supporters are well organized and led to represent their interests effectively in Congress. Without such organization and leadership, and perhaps in spite of it, we could subject valuable provisions in the 1976 Act to risks of dilution or loss in the wide-open power-struggles of the Congressional process. With this disclosure of my biases as preface, I must also make plain at the outset that I have not had time to pursue all the tributaries of law that the Ad Hoc Committee has well addressed and therefore only comment (a) on a few of the areas addressed by the Committee and (b) on one area that of unpublished works which the Committee does not squarely deal with. See my comment (3) on Chapter VI, Moral Rights, infra. - Chapter I Cable Compulsory License Is it as certain as the author of this Chapter of the Ad Hoc Committee's Report seems to assume that moral rights may not be jeopardized in cable retransmissions? See, e.g., the § 111 (c) (3) exception as it relates to alteration, deletion or substitution of commercial advertisements. Chapter II Exemptions to the Rights of Public I agree with the Ad Hoc Committee's Report as to compatibility here, but see my later comments (under Chapter VI, Moral Rights) on unpublished works. As to § 110(2) of the 1976 Act, it would not seem that adding a credit requirement to the user's obligations in order to comply with Berne Article 10(3) would arouse serious controversy. - - in Professor Edward Damich of the George Mason University School of Law has submitted a statement to the Ad Hoc Committee on U.S. Adherence to the Berne Convention, commenting on that Committee's discussion of Moral Rights. Much of what he says seems apt. He my view correctly observes that it is more the "lack of effective compliance" by certain Berne countries, such as the U.K. and Australia, than genuine U.S. protection of moral rights as such that lends plausibility to the argument that Article 6bis of Berne is not an obstacle to U.S. adherence to Berne. But it appears that the U.K., and perhaps Australia, at least, seem now to be weighing whether new protections are not needed to meet Berne droit moral standards. - Regarding the so-called "right of paternity" (the right to be named as author), the evidence for protection for this right in U.S. state law is skimpy in the cases and the statutes are few in number existing only in four of 50 states and there are damaging negative case law statements or rulings, as in the well-known case of Vargas v. Esquire, Inc., 164 F.2d 522 (7th Cir. 1947), and more recently in Suid v. Newsweek Magazine, 211 U.S.P.Q. 898 (D.D.C. 1980) where the court had this to say: plaintiff alleges that Newsweek copied from common-law action for failure to attribute or I do believe the Lanham Act § 43(a), e.g., as applied in Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981), may fairly be regarded as a significant possible source of protection for failure to give proper authorship credit though we are really only at the foothills of any such legal development. If some signs of greater judicial awareness of the author's interest in, or right to, authorship credit after transfer of the copyright may now be discerned, real protection is more a potentiality than an actuality. It does seem to this observer that recognition of the paternity right in U.S. law could commonly be accorded. without serious damage to vested interests. As to the "right of integrity", Gilliam v. American - Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 1976), does seem to represent a landmark, a "glimmer" of recognition that there may be an author's interest in integrity deserving of legal protection, with the Lanham Act § 43(a) playing a significant part in support of this attitude. Defamation law may, of course, be an aid in some cases. With these we may indeed "squeak by" for purposes of Berne compatibility. Both § 43(a) and defamation have significant limitations in this setting, however, and here and elsewhere, we are lacking in protection of the droit moral interests as such. We have not as yet really faced up in any significant measure (in the Copyright Act or elsewhere) to the theoretical basis on which the Article 6bis rights rest 1.e., a continuing nexus between the author and his work even after transfer of rights in it to others. The theories we have invoked such as unfair competition, damage to reputation, etc. do not genuinely reflect the basic concepts of droit moral in Article 6bis. At the same time, the "right of integrity" cannot, however, even in France (its place of origin) be said to rest on a thoroughly worked out structure of laws and decisions. Much is still inchoate. And there is some room for hope that joining Berne might prod us to deal with droit moral's basic notions and participate in their development more forthrightly. Our four state statutes (mainly affecting visual art and possibly "preempted" by the U.S. Copyright Law), plus a few cases, provide some indication of an awakening consciousness in this area and perhaps our national legislature might take these as signs that there is popular support for national provisions on the subject. In reading the Ad Hoc Committee's Report on this and other subjects, however, one is led to wonder whether compatibility in the sense of "squeaking by" is a good enough goal. I add here only a few more brief observations: (1) To the Report's list of U.S. statutory provisions tending toward moral rights protection, one might perhaps add § 110(4) which permits a copyright owner to object to certain performances of a nondramatic literary or musical work (except that no provision is made for any notice to the owner that the performance is to take place). But this provision really adds very, very little, indeed, of protective substance to the already very little provided by the "derivative works" clause (§ 106(2)) and to § 115(2). It refers to the copyright owner, like the other provisions cited, and not to the actual author who is the intended beneficiary of Berne Article 6bis moral rights even after transfer of the so-called economic right to another. A much more substantial recognition of a droit moral-type of protection (closer to the "right to withdraw" than to "paternity" or "integrity") special to U.S. law is arguably found in the termination right accorded by § 203 and § 304 of the 1976 Copyright Act. (2) Notice should be taken of the undermining effect on moral rights of the widespread use of work-for-hire arrangements by exploiters of authors' works. Recent judicial decisions seem to have broadened the statutory definition of works-for-hire in a way I believe both undesirable and unintended by the enactors, with the result that still more works will be swept into this class and the rights of actual creators still further constricted. The work-forhire concept is generally antithetical to the droit moral view of art-works as linked to the personalities of the individuals who in fact create them. Under our broad work-for-hire concept, the creator-in-fact will often be deprived of authorship status and of all rights in the work whether they be moral rights of disclosure, paternity, integrity or termination, or economic rights. (3) One of the traditional components of the droit moral, the "droit de divulgation" (right to disclose) is, I think, discussed too superficially and dismissed too quickly in the Ad Hoc Committee's Report mainly because this right, curiously, is not expressly referred to in Article 6bis of the Berne Convention. But the "right of disclosure" is arguably recognized at least by negative implication in Berne Article 10 et seq. Article 10, for example, enumerates limited "fair uses" applicable to published works and, as the Masouye Guide's comments make plain at 10.3 et seq., "Unpublished manuscripts or even works printed for a private circle may not, it is felt, be freely quoted from; the quotation may only be made from a work intended for the public in general." The same statement is applied to other uses teaching, newspapers, broadcasts, etc. If I am right in my view that some "right of disclosure" was assumed in Berne and I do not deny the matter is subject to debate then U.S. law, in applying fair use across the board ($107) both to published and unpublished works (subject to Harper & Row Publishers, Inc. v. Nation Enterprises, 105 S. Ct. 2218 (1985) and comments therein), is probably incompatible with Berne. It is certainly inconsistent with the law in other countries of the world including France which have been leaders in developing Berne and authors' rights. Apart from fair use, mention should be made also of other provisions in Chapter I of the present U.S. law. These include $108, $109, $110 and later sections which purport to allow, or exempt from infringement, acts in relation to unpublished works that seem wholly inconsistent with assuring a true right of disclosure or publication in the author and with the sentiments expressed in 10.3 of the Masouyé Guide. I should note here, parenthetically, that the provisions on registration and deposit of unpublished works in Chapter IV of the 1976 Act seem to me starkly incompatible with the Universal Copyright Convention to which we do adhere, as well as troublesome in relation to the Berne provisions on formalities which are discussed in Chapters VII and IX U.S. See, e.g., 2 Article III, §4 of the Universal Copyright Convention requires that member countries provide "legal means of protecting without formalities the unpublished works of nationals of other contracting states." Is it believable that the Berne Convention intended less protection? |