If registration is not to be required for new Berne Convention works, we do not believe it should be required for old Berne Convention works to be recaptured. We do not believe that the burden of registration is any more appropriate for a Berne Convention work first published the day before adherence than for such a work published the day after. 2. Notwithstanding 17 U.S.C. $912(b), we think it may be appropriate in the provisions now being discussed, which will of course be enacted subsequent to the S.C.P.A., to clarify that references to "this title" be references to chapters 1 through 8. ordinarily should 3. We utilize the terms "Berne Convention works" and "works of United States origin," as defined in the proposed revision of $101. 4. For the general criteria and procedures relating to the Presidential proclamations, we have suggested a modified meld of the relevant portions of SS104 (b) (4) and 902 (a) (2). 5. As we have stated above, the language in our subparagraphs (b)(4) and (5) [Draft Bill subparagraph (b) (4)] requires careful further review to sort out important questions relating to the transition of works from public domain to protected status. Some analogies can perhaps be drawn from $$203 (b) (1) and 304 (c) (6) (A), which we have adapted in slight measure. In addition, consideration should be given to the treatment under 35 U.S.C. $252 of transitional liabilities and immunities with respect to claims under a reissued patent which were not contained in the original patent. UNITED STATES COUNCIL FOR INTERNATIONAL BUSINESS June 16, 1986 INFORMATION INDUSTRY ASSOCIATION Supplemental Comments Concerning 4/15/86 Draft United States Adherence to the Berne Convention The Information Industry Association (IIA) is grateful to the Subcommittee on Patents, Copyrights and Trademarks, as well as to the Copyright Office, for their efforts in preparing the draft implementing legislation. Such legislation is a necessary step if our one-hundred-year absence from the Berne Union is finally to be remedied. The IIA has reviewed the comments on the legislation which are being submitted simultaneously by the United States Council for International Business (USCIB) [Enclosure "A" herewith]. The IIA agrees with those comments and joins in them, with one exception discussed below. On the fundamental question, IIA reiterates its support for Berne adherence. As stated in our testimony submitted at the April 15, 1986 Senate Subcommittee hearing, we believe that, for legal, political and practical reasons Berne adherence is now urgent. The IIA is willing to provide whatever assistance it can in order to help secure United States adherence to the Berne Convention. As noted above, there is one area in which the IIA wishes to diverge from the comments prepared by the USCIB. That area a very important one from the perspective of is the question of a "two-tier" system of IIA members - copyright protection. While the IIA will not withdraw its support from Berne adherence if it can be obtained only at ENCLOSURE "B" WITH LETTER OF JUNE 16, 1986 FROM SCHWAB GOLDBERG PRICE & DANNAY TO HON. CHARLES MCC. MATHIAS, JR. the price of a two-tier system which discriminates against U.S. works, IIA members strongly oppose such a solution. As a general matter, IIA believes that it would be not only controversial politically but basically unfair to implement a system which inequitably burdens U.S. works. As a specific matter, the IIA believes that the discrimination against certain U.S. works of new technology, notably electronic data bases, would be particularly severe, because the current set of U.S. formalities is ill-suited to such works. As stated on pp. 7-9 of our earlier testimony before this subcommittee, the U.S. Copyright Act requires that complex registration and deposit procedures be followed for a copyright proprietor to receive full protection under the Act, and to enforce rights which may be infringed. There are complex (and unresolved) legal issues relating to data bases, such as identifying when, how and where such a work is "published," and what constitutes the protectible "work." In addition, there are practical burdens associated with deposit and registration of a voluminous electronic data base. These formalities thus create impractical and inappropriate obstacles which make it unnecessarily burdensome for copyright proprietors to secure for their data bases the protection provided by the Copyright Act. In sharp contrast is the no-formalities approach to protection embraced by the Berne Convention, an approach which is the only practical and effective means of providing full protection to many of the works produced by IIA members and others. To deny U.S. proprietors the benefits of such an approach by placing them in the burdened tier of a two-tier system, while granting the benefits to foreign works, would compound the problems created by our current system by adding serious inequity and unfairness. We The United States should adhere to the Berne Convention. It should do so, however, in a way that preserves and enhances both the spirit of that Convention and the principles that underlie our current system of copyright. should adopt a one-tier scheme of protection which meets Berne's requirements, including its prohibition of formalities. While a two-tier system would not prevent the United States from achieving compliance with Berne, it would be at odds with the spirit of that Convention. The U.S. should provide all copyright owners including owners of U.S. with the benefits of the Convention. works - INFORMATION INDUSTRY ASSOCIATION Senator MATHIAS. Thank you, Mr. Goldberg. I appreciate your reference to the bicentennial, because I do think it gives us an opportunity to educate this country on the subject of intellectual property. It is of increasing practical importance to our country, as Mr. Henriques' testimony, I think, underscores. Mr. GOLDBERG. Yes, indeed, sir. Senator MATHIAS. You raised the question of the back door. In order that it doesn't remain an obscure reference in the record, how does the back door work today? Mr. GOLDBERG. Not as well as some people may think it does, Mr. Chairman. Essentially, the back door is the procedure under which U.S. proprietors will simultaneously publish a work in the United States and in a Berne Convention country, quite commonly Canada, so that Canada-or whatever other Berne country it is simultaneously published in-would be considered the country of origin under the Berne Convention. The work consequently would be entitled to protection under the Berne Convention because its country of origin is a Berne country. The problems in connection with simultaneous publication are several. One of them is that, as concerns data bases, for example, it is uncertain as to exactly how one really, really does publish a data base. So we do not know when a data base might be published simultaneously and when it might not be. Second, the simultaneous publication procedure is frequently driven not by marketing considerations, not by business considerations, but by what the lawyers tell their clients. It is simply a poor way to run a business if market considerations are overridden purely for the sake of legal formalities. These are important legal formalities, but nonetheless they should be secondary to the considerations that make business sense. Third, there are the problems of proof which have been alluded to earlier, which are frequently encountered in pressing infringement litigation based on entitlement under simultaneous publication. The problem of proof present additional uncertainty. Last, we have earned no friends in the international copyright community by relying on the back door and taking but not giving, by accepting Berne benefits but not Berne responsibilities. Senator MATHIAS. And, of course, there is just the sheer bureaucratic problem of dual publication. Mr. GOLDBERG. Well, if, in fact, the simultaneous publication takes place even though there is no real marketing plan to publish simultaneously, or to publish first, in the Berne Convention country, that is correct, Mr. Chairman. Yes. There is, of course, quite commonly a legitimate publication simultaneously in a Berne country and in the United States, but it is all too common, unfortunately, that simultaneous publication is effected solely for the purpose of obtaining Berne Convention protection. Senator MATHIAS. Does any other member of the panel want to address that question? Mr. Feist. Mr. FEIST. There is another aspect of the simultaneous publication which might at some time present a problem. In the 1971 Paris revision of the Berne Convention, relative to publication, publication is defined as making available a work in sufficient quantities to satisfy the demand for a work of that particular nature. Now, by and large, it is my understanding that we place on sale for simultaneous publication purposes a copy or two. A country could make a demand upon us to satisfy for publication purposes a far larger quantity, which might present embarrassment or hardship on American publishers. Of course, under the back door, as a moral matter, American work becomes entitled to protection throughout the Berne Union without any corresponding obligation on the part of the United States to protect Berne works-rather a one-sided situation. Senator MATHIAS. So, in effect, we get the benefits of Berne without having to incur any of the problems of changing our domestic law. That is what it comes down to. Yes, Mr. Alterman. Mr. ALTERMAN. Mr. Chairman, I would like to add just one other aspect to this. If you look at everything since book publishing as new technology, when you got to the new technological developments, be it dance or film or computer programs, the ancient terms that were developed for simultaneous publication did not really make sense because it is publication and not communication to the public. You can communicate a ballet or a film without publishing under the technical definitions. We have a terrible time trying to find what date it is we have to establish. |