© Springer International Publishing Switzerland 2015Brian Fitzgerald and John Gilchrist (eds.)Copyright Perspectives10.1007/978-3-319-15913-3_4
4. Country of Origin and Internet Publication: Applying the Berne Convention in the Digital Age
Thomas More Academy of Law, Australian Catholic University, 486 Albert Street, East Melbourne, VIC, 3002, Australia
East China University of Political Science and Law, Room 416, Chongfa Building, 555 Longyuan Rd., Songjiang District, Shanghai, 201620, China
Curtin Law School, Curtin University, Building 407, Level 3, Kent Street, Bentley, WA, 6102, Australia
It is increasingly common for copyright works to be made available to the public for the first time via the Internet. Online publication allows a work to be published simultaneously throughout the world to every country with Internet access. While this is certainly advantageous for the dissemination and impact of information and creative works, it creates potential complications under the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”), an international intellectual property agreement to which most countries in the world now subscribe. The Berne Convention contains national treatment provisions, which require member countries to extend baseline rights and protections to foreign copyright works.1 Rights accorded under the national treatment provisions may not be subject to any formality, such as registration requirements.2 Member countries are free to and some do impose formalities on the exercise of rights in relation to domestic copyright works. In the United States, for example, the Copyright Act 1976 establishes a requirement that copyright owners register their work with the Copyright Office before they can commence a civil action for infringement of their work.3 Additionally, the U.S. law limits the availability of certain remedies depending on when the work was registered.4
The Berne Convention contains “country of origin” provisions, which seek to assist member countries in determining whether copyright works are domestic or foreign for the purpose of applying Berne’s protection for foreign works. Under the Convention, determining the country of origin of a published work is simply a matter of ascertaining where that work was first published or simultaneously published.5 The rules provide that for works first published in a country of the Union, the country of origin will be that country.6 For works published simultaneously in several countries of the Union which grant different terms of protection, the country of origin will be the country with the shortest term of protection, and for works published simultaneously in a country of the Union and a country outside of the Union, the country of origin will be the Union country.7 Historically, determining the country of origin of a published work presented few challenges, because works were generally published physically—whether in print or otherwise—in a distinct location or few locations. However, publishing opportunities presented by new technologies mean that we now live in a world of simultaneous publication—works that are first published online are published simultaneously to every country in world in which there is Internet connectivity. These new opportunities present unique challenges and bring to the fore the apparent gaps in the Berne Convention’s country of origin provisions. For example, as discussed further in Sect. 2.3 of this article, the Berne Convention fails to point to a distinct country of origin where a work is published simultaneously in multiple Union countries with the same term of protection.8 This is exactly the kind of scenario that is likely to arise more frequently as Member countries seek consistency in the term of copyright protection accorded to copyright works9 and as more and more works are first published online. In this situation, the Berne Convention offers little guidance. This creates legal uncertainties for Member countries such as the United States in determining whether a work first published over the Internet is a domestic or foreign work for the purpose of applying national copyright formalities.
Two cases recently decided in the United States deal directly with this issue. In Kernel Records Oy v. Timothy Mosley p/k/a Timbaland, et al. (“Kernel v Mosley”),10 the Florida Southern District Court of the United States ruled that first publication of a work on the Internet via an Australian website constituted “simultaneous publication all over the world,” and therefore rendered the work a “United States work” under the definition in section 101 of the U.S. Copyright Act,11 subjecting the work to registration formality under section 411. This ruling is in sharp contrast with an earlier decision delivered by the Delaware District Court in Håkan Moberg v 33T LLC, et al. (“Moberg v 33T”).12 The Delaware court held that the publication of a work via a German website did not render the work a “United States work” within the meaning of section 411 of the Copyright Act, and thus need not be registered in the U.S. in order for the copyright owner to bring suit for infringement. The conflicting rulings of the U.S. courts reveal the problems posed by new forms of publishing online and demonstrate a compelling need for further harmonization between the Berne Convention, domestic laws and the practical realities of digital publishing.
In this article, we argue that even if a work first published online can be considered to be simultaneously published all over the world it does not follow that any country can assert itself as the “country of origin” of the work for the purpose of imposing domestic copyright formalities. More specifically, we argue that the meaning of “United States work” under the U.S. Copyright Act should be interpreted in line with the presumption against extraterritorial application of domestic law to limit its application to only those works with a real and substantial connection to the United States. To be clear, we argue that the extraterritorial application of U.S. law at issue here is not the imposition of formalities at the point of enforcing copyright in courts within the United States (the “enforcement stage”), but the designation, via U.S. copyright legislation and the judicial interpretation of such, of all works first published online as “United States works” within the ambit of section 411 of the U.S. Copyright Act (the “designation stage”). We propose a number of factors that may be considered in assessing whether there is a “real and substantial connection” to the United States and assert that in most cases, the nationality, domicile or habitual residence of the author of the work should be the determinative factor in ascertaining the country of origin of the work. As discussed above, there are gaps in the Berne Convention’s articulation of “country of origin” which provide scope for judicial interpretation, at a national level, of the most pragmatic way forward in reconciling the goals of the Berne Convention with the practical requirements of domestic law. We believe that the uncertainties arising under the Berne Convention created by new forms of online publishing can be resolved at a national level by the sensible application of principles of statutory interpretation by the courts. While at the international level we may need a clearer consensus on what amounts to “simultaneous publication” in the digital age, state practice may mean that we do not yet need to explore textual changes to the Berne Convention.
4.2 Country of Origin Under the Berne Convention
4.2.1 Essentials of the Berne Convention
One of the aims of the Berne Convention is “to help nationals of its member States obtain international protection of their right to control, and receive payment for, the use of their creative works”.13 For example, Article 5(1), under the title ‘Rights Guaranteed’, states that “Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention”.
In addition, the 1908 Berlin revision of the Berne Convention established a prohibition on the imposition of any governmental formalities by a Member country as a precondition for “the enjoyment and the exercise” of copyright in foreign works in that country. Today, this rule reads as follows in Article 5(2) of the Convention: “The enjoyment and the exercise of these rights shall not be subject to any formality”. The Convention therefore purports to secure minimum rights for authors, which automatically arise without the need to obey formalities, in countries of the Union other than the country of origin of the work. Protection of works in their country of origin is governed by domestic law and may, in fact, be subject to formalities (as they are in the U.S. for enforcement of rights).14 Therefore, a central object of the Convention is to guarantee that a foreign work will be protected in a Union country other than its country of origin without formality requirements.
4.2.2 The Notion and Place of Publication
The definition of “published works” set forth in Article 3(3) of the Convention is as follows:
The expression “published works” means works published with the consent of their authors, whatever may be the means of manufacture of the copies, provided that the availability of such copies has been such as to satisfy the reasonable requirements of the public, having regard to the nature of the work. The performance of a dramatic, dramatico-musical, cinematographic or musical work, the public recitation of a literary work, the communication by wire or the broadcasting of literary or artistic works, the exhibition of a work of art and the construction of a work of architecture shall not constitute publication.
In addition, “simultaneous publication” is defined under Article 3(4): “A work shall be considered as having been published simultaneously in several countries if it has been published in two or more countries within thirty days of its first publication.”
The definition of “published works” and the corresponding determination of the country of origin of a work are significant to the application of certain important clauses of the Convention. As highlighted by the Committees of Experts on a Possible Protocol to the Berne Convention, these clauses include “[the] application of the protection of the Convention to authors who are not nationals of one of the countries of the Union but whose works have been first published in one of those countries (Article 3(1)(b)); the comparison of terms of protection (Article 7(8)); and application of the Convention to works already in existence when their country of origin first joins the Convention (Article 18(1)).”15 In addition, whether or not protection under Articles 5(1), (2) and (3) comes into operation with respect to a work also hinges on this determination.
A modern enquiry, contemplated in both the Kernel v Mosley and Moberg v 3TT cases discussed below, is what happens under our assessments of “published” and “country of origin” where a work is first made available to the public online. Is the act of posting a work to the Internet enough to make the work a “published work” under the Berne Convention? And if so, given that the Internet is a globally distributed platform, how do we determine the country or countries of first (or simultaneous first) publication for the purpose of establishing the country of origin?
The general consensus appears to be that Internet dissemination is enough to render a work “published”. A WIPO Committee of Experts has acknowledged as much, stating, “As far as the public is concerned, these new forms of publishing are functionally no different than the traditional forms: the works are available”.16 Under the abovementioned Article 3(3) of the Berne Convention, the dispositive factor in determining whether a work is published is “[that] the availability of such copies has been such as to satisfy the reasonable requirements of the public”. We agree with the proposition that posting a work over the Internet may “easily satisfy this requirement”.17 Therefore, we contend that once a work is made available over the Internet the work will be published in every country with adequate access to the Internet. Nevertheless, it does not follow that the work will become a “work of every country”; or put differently, it does not mean that the country of origin of the work will be every country in the world.18
4.2.3 Identifying the Country of Origin
What then is the country of origin of a work first published online? Article 5(4) of the Convention sets out the rules for determining the country of origin as:
in the case of works first published in a country of the Union, that country; in the case of works published simultaneously in several countries of the Union which grant different terms of protection, the country whose legislation grants the shortest term of protection;
in the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country;
in the case of unpublished works or of works first published in a country outside the Union, without simultaneous publication in a country of the Union, the country of the Union of which the author is a national, provided that:
when these are cinematographic works the maker of which has his headquarters or his habitual residence in a country of the Union, the country of origin shall be that country, and
when these are works of architecture erected in a country of the Union or other artistic works incorporated in a building or other structure located in a country of the Union, the country of origin shall be that country.
While these rules look comprehensive at first glance, they fail to address a number of probable scenarios. As a result, legal uncertainties may arise, particularly in the case of Internet publication. As Ricketson and Ginsburg have observed, certain situations are not directly covered by the rules in Article 5(4). These situations include where: (1) the country of origin of a Union author’s published works is a different country from that of which they are a national; (2) a work is published simultaneously in several countries of the Union that have the same period of protection; and (3) a work is unpublished or first published in a country outside the Union and the work has several co-authors from different Union countries.19
In the digital era, it has become even more apparent that the rules in Article 5(4) fail to cover the field. If a work is initially posted and made available to the public over the Internet, such publication “may be truly simultaneous, within seconds” to every corner of the world.20 It is arguable that a work first made available online could be considered by any country in the world to be “first published” within that country and thus subject to domestic law (including any applicable formalities) as a “domestic work”. Indeed, this was the position reached in relation to U.S. law in the Kernel v Mosley decision. As Professor Ginsburg noted,
A Union member meets its Berne obligations if it accords protection consonant with Convention minima to foreignBerne-Union works. Arguably, with simultaneous universal publication via the Internet, every work of authorship could be considered a domestic work in each country of the Berne Union. In that event, ironically, Berne Convention minimum standards of protection might never apply, because there will be no foreign works.21
Alternatively, it is also arguable that under Article 5(4)(a) of the Convention, the work could be considered to be “published simultaneously in several countries” and the country of origin of the work should be “the country whose legislation grants the shortest term of protection”. Then all works first published over the Internet will have whichever is the shortest term of protection in the world under the copyright laws in effect at that time.22 “These anomalies”, as Ginsburg points out, “suggest that the notion of Internet ‘publication’ should be limited to a single Berne Union country: but which one?”23
These uncertainties in the application of the Berne Convention become particularly relevant in suits for infringement of foreign works brought in the United States. The U.S. imposes a registration requirement before infringement actions can be brought with respect to U.S. works.24 If a work first published online in any country in the world can be deemed a “U.S. work”, then potentially all authors of the world, wherever they reside, must register their copyright with the U.S. Copyright Office before they can assert their copyright interests in U.S. courts. The difficulty in determining country of origin has been brought to light in two U.S. District Court cases involving works first made available online, Kernel v Mosley 25 and Moberg v 33T.26 The courts had divergent views on what constituted a “United States work”, which in turn led to two very different results.
4.3 “United States Works” in the U.S. Copyright Act
4.3.1 Defining “United States Works” for the Purpose of Section 411
Section 411(a) of the Copyright Act 1976 of the United States provides that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made”. This means that in the U.S., domestic copyright owners must complete copyright registration or preregistration in order to bring a suit for infringement in federal court. This registration requirement only applies to “U.S. works”, not foreign works. But copyright owners of non-U.S. works still must comply with registration requirements if they wish to seek statutory damages in court.27 The removal of registration as a precondition to filing an infringement claim for non-U.S. works was one of the results of the Berne Convention Implementation Act of 1988 28 and the WIPO Copyright and Performances and Phonograms Treaties Implementation Act of 1998.29 Furthermore, the U.S. Supreme Court has recently clarified in Reed Elsevier, Inc. v Muchnick that section 411(a) merely contains “claim-processing rules” rather than “jurisdictional conditions”. Thus, the Court ruled that “[s]ection 411(a)’s registration requirement is a precondition to filing a claim that does not restrict a federal court’s subject-matter jurisdiction.”30
For the purposes of section 411, a full definition of “United States work” is set out in section 101. This definition provides:
For purposes of section 411, a work is a “United States work” only if—
in the case of a published work, the work is first published—
in the United States;
simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States;
simultaneously in the United States and a foreign nation that is not a treaty party; or
in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States;
in the case of an unpublished work, all the authors of the work are nationals, domiciliaries, or habitual residents of the United States, or, in the case of an unpublished audiovisual work, all the authors are legal entities with headquarters in the United States; or
in the case of a pictorial, graphic, or sculptural work incorporated in a building or structure, the building or structure is located in the United States.
The legislative history of section 411 suggests a fairly strong correlation between the definition of “United States work” in the Copyright Act and the definition of “country of origin” in the Berne Convention.31 The apparent intention of the U.S. Congress was to parallel the relevant definitions in section 101 with those terms contained in Article 5(4) of the Berne Convention.32
Nevertheless, there are operative variations between the concepts of “U.S. works” and “country of origin”. The definition of “country of origin” in the Berne Convention has a narrowing or pinpointing function—it seeks to determine, of all the countries in the world, the country from which a published work can be considered to have originated. The definition of “United States work” need not be so comprehensive. It seeks to determine only whether a work originates (i.e. is firstly or simultaneously published) in the U.S. or not for the purpose of imposing registration requirements. If the work does not originate in the U.S., then it has little relevance to the operation of section 411. As being emphasized in The Senate Statement on the Berne Convention Implementation Act of 1988, it is “not necessary in all cases to determine the precise country of origin of the work in order to know whether or not the registration prerequisite to suit applies”.
Despite the relatively clear function of the section 101 definition of “United States work”, it is not always easy to determine whether a particular work falls within the language of this definition. For example, it is uncertain (and unsettled) whether works that are first published online can be considered U.S. works for the purposes of section 411. This is because a work first published online is arguably published in all countries in the world with internet access, including the United States, which may bring the work within paragraph (1)(B) or (C) of the definition of “United States work” even if the work was not created or uploaded in the United States and the author is not a U.S. national, domiciliary or resident. As we have alluded to earlier, the following two cases considered this very issue of online publication and reached vastly different conclusions about whether the work was a U.S. work under section 411.
4.3.2 Moberg v 33T
Håkan Moberg, a professional photographer from Sweden created a series of photographs entitled “Urban Gregorian I-IX”. These photos were first published in 2004 on a German website, blaugallery.com, which offered copies of the photos for sale as canvas prints. In late 2007, three websites began displaying the Moberg’s Urban Gregorian images.
In September 2008, Moberg brought a complaint in the United States federal district court against the website proprietors for copyright infringement under the U.S. Copyright Act. The defendants argued that the court lacked subject matter jurisdiction because the work was a ‘United States work’, which had not been registered in accordance with s 411(a) of the Copyright Act.
Hillman J considered that the question of whether Moberg’s photographs were ‘United States works’ involved two issues: (1) whether the posting of plaintiff’s photographs on the Internet is considered “publishing,” and, (2) if so, whether “publishing” on the Internet causes the photographs to be published only in the country where the Internet site is located, or in every country around the world simultaneously.33