Copyright Law — FALL 2008

It was asked if you all had to take the exam at your carrels — no, you do not.  You just need to turn it in by the end of the flex-exam day you take it out.

This would have made a great exam question:

Coldplay Copy Joe Satriani?

Teen Transplant Candidate Sued Over Music Downloads

    Copyright cases involving a foreign work are interesting because different issues of the case can require the courts to apply different countries copyright laws. One area where this can be an issue is when ownership of the copyrights is contested. The Second Circuit looked at this issue in the Itar-Tass Russian News Agency v. Russian Kurier, Inc. case. The Court felt the choice of law issue in copyright cases was largely overlooked and often not considered a serious aspect of a copyright case involving foreign works. This was largely because of the “national treatment” principle of the Berne Convention and the Universal Copyright Convention, (both of which the U.S. is a member) as explained in Nimmer’s treatise on Copyright. According to Nimmer this meant that a member state had to grant the same protection to foreign copyright holders from other member states as the state accords its own nationals. The Court in Itar-Tass decided that this doesn’t express how ownership of the rights is decided when the law of the foreign country differs from the U.S. Ultimately the Second Circuit decided that because copyright is a form of property the law of the state with the most significant relationship to the property and the parties should be applied. In the Itar-Tass case this meant the Second Circuit would have to apply the Russian laws regarding the ownership rights of the copyrighted work.
Is this decision really the best policy and does it follow the intention of the Berne Convention? Without knowing much about the Berne Convention’s intentions it seems to me to be an odd position for the Court to take. First off, such policy means U.S. courts could have to interpret the copyright law of other countries, surely a topic they do not have a lot of experience with. It also seems to imply that we would expect other countries to apply U.S. copyright law in certain instances. While that may be beneficial to a plaintiff from the U.S. suing in a foreign country you also find yourself in what I think is a questionable situation having a foreign court interpreting and applying U.S. copyright law.
The Berne Convention also seems to take the approach that the law of the country where the suit is being brought should be applied. In fact, it specifically lays out that in the case of cinematographic work, the ownership of a copyright should be a matter for legislation in the country where protection is claimed. The Second Circuit in Itar-Tass decided that this was not meant to apply to other areas of copyright law.
The decision to apply the law of the country with the most significant relationship could make sense if it was the general policy for all copyright cases involving foreign works, but the Court agrees that the “national treatment” principle is accurate for solving what law governs in other aspects of a copyright dispute. Thus the Court seems to acknowledge the intent of the Berne Convention to use the law of the country where protection is being sought; so as it treat foreign copyright holders the same as resident copyright holders in that jurisdiction; but it also ignores that principle when deciding ownership issues and allows the foreign copyright holder the ability to use their home state laws. This does not then treat the foreigners the same as nationals because now people in the U.S. have to understand how every other member country of the Berne Convention sets up the ownership aspect of their copyright laws; rather than knowing that when a foreigner seeks copyright protection in the U.S., U.S. copyright laws will apply in all instances. I don’t know why the Court took this position but it only seems to further complicate the already complicated issue of international copyright law.

Attached are the actual instructions for your exam — I place them up here so that you are aware of the exam procedures.

Copyright Law Fall 2008 Exam Cover Page

Copyright law internationally is governed by a series of several conventions and agreements. Most notably, the Berne Convention, which has been adopted by the WTO in the Agreement on Trade-Related Aspects of International Property Rights (TRIPs). Given the broad nature of international law, there are many differences in copyright rights granted through international law and those guaranteed by US law. The interesting question is whether, given these differences, US law provides better protection or if a copyright holder can find better protection under international law?

One major difference is on the issue of moral rights. Under the US Copyright Act, section 106A, moral rights are granted to an author.

the author of a work of visual art —

(1) shall have the right —

(A) to claim authorship of that work, and

(B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create;

The American law, however, also grants several exceptions to the moral rights afforded an author, including the ability to waive those rights. This differs from the European version of moral rights, which do not necessarily require a copyright to exist. Instead, moral rights confer upon the creation of the work. For example, in Societe Le Chant du Monde v. Societe Fox Europe and Societe Fox Americaine Twentieth Century, four Russian composers sued Fox to prevent the use of their public domain works from being used in an anti-communist film. The judge agreed and had the film seized, even though no copyright existed. Strauss, The Moral Right of the Author, 4 Am. J. Comp. L. 506, 534-35 n.56 (1955).

Another major difference is on the issue of fair use. Section 107 grants limited use of copyrighted material without the permission of the copyright holder. Fair use has been found to include parodies of the original work and the use of quotes or excerpts from the work in critiques and other works, so long as the excerpt is brief.

International law has taken a different approach, more often preferring the concept of fair dealing. Fair dealing is the right to reproduce limited portions of a copyrighted work without infringing the rights of the copyright-holder. The fair dealing doctrine tends to be more specific than the § 107 fair use exceptions to copyright law.

“Fair dealing for non-commercial research or private study

A certain amount of copying is allowed under “fair dealing” for purposes of “non-commercial research or private study”. Since the law does not clearly define the amount of original material that can be copied, the Society of Authors issued guidance in 1965:

• one article from any one issue of a journal (even if that one article is the whole issue)
• one chapter or up to 5% (whichever is greater) of a book or similar publication
• up to 10% of a short book of up to 200 pages (Library Association guidelines)
• one poem or short story of up to 10 pages from an anthology, or
• the report of one case in law reports

You may copy for yourself or make a single copy for another person. Fair dealing does not cover multiple copying of extracts or articles, this must be done under the CLA Photocopying Licence, or with the permission of the rights-owner. It does not cover the copying of sheet music.

The Publishers’ Association and JISC have drawn up similar guidelines for fair dealing in the copying of electronic publications.

Fair dealing for criticism or review

Fair dealing for “criticism or review” allows copying within generally accepted limits.

The Society of Authors advises that permission need not be sought for short extracts provided that the content is quoted in the context of ‘criticism or review’ and not just to embellish the text.

A short prose extract is defined as:

• not more than 400 words
• or a total of 800 words in a series of extracts, none exceeding 300 words

A poetry extract is defined as:

• not more than 40 lines from a poem, providing that this does not exceed a quarter of the poem.

When deciding if the extract you wish to use is covered by fair dealing, consider:

• the length and importance of the extract
• the amount quoted in relation to your commentary
• the extent to which your work competes with the work quoted

Works that are out-of-copyright can of course be quoted from beyond these limits, providing you are using an edition that was published more than twenty-five years ago, and providing you acknowledge the source of the extract.”

http://library.leeds.ac.uk/info/200174/copyright_and_licences/176/fair_dealing_and_moral_rights

Just looking at these two differences—moral rights and fair use—which set of laws is better protection for the copyright owner? The international community extends a much greater protection, at least in these two instances, than the US Copyright Act. The fair dealing doctrine, for example, relies on legislative specifics while the US doctrine of fair use relies more on judicial interpretation and case law. These are, however, only a small representation of the differences between US law and the copyright laws of other countries. As more and more international agreements are signed (TRIPs was only enacted in 1994 and is continuing to strengthen), the protections afforded a copyright holder and author may one day become clearer internationally. For now, however, the differences and holes will continue to keep international copyright lawyers very busy.

With considerable advances in technology and the consistent improvement of accessibility to, and speed of, the internet, a steadily growing number of individuals throughout the world are spending more and more of their time online socializing, gaming, conducting business, shopping, and so much more. The possibilities, these days, seem endless. Accessibility to content that infringes upon copyrights, trademarks, etc. has increased substantially as a result of the popularity of the internet. The enforcement and choice of intellectual property laws has become infinitely more problematic due to the internet and its worldwide use. Online jurisdictional issues as well as choice of law have recently been raised in cases such as Bragg v. Linden and Twentieth Century Fox Film Corp. v. iCraveTv, but these decisions have yet to be sufficiently applied to virtual worlds. Millions of people throughout the world enjoy the use of Massively-Multiplayer Online Role-Playing Games (MMORPGs) such as World of Warcraft, Second Life, Maple Story, EverQuest, and many more. These types of online role-playing games allow the players to create their own character, or avatar, which the player then guides through the virtual world in order to interact with other players within that realm.  In “open virtual worlds,” the developer confers certain powers and rights to the players within the virtual world (the primary example being Second Life). Individuals using the virtual world are able to create virtual property that they are able to sell for real world money (through the exchange rate of 265
Linden virtual dollars to $1US). Second Life has been met with great controversy as a result of its inherently unique principles that concede intellectual property rights (including copyright protection) to the Second Life users for the property (and code) that they produce within the virtual world.

Currently, the primary regulatory mechanism for virtual worlds such as Second Life are the End User Licensing Agreements (EULA) and Terms of Service (ToS) that an individual must sign and agree to prior to partaking in each virtual world experience. These licenses establish, among other things, the general rights of the developer as well as the rights and restrictions placed upon the user. Oftentimes, the licensing agreements contain considerable grey areas, leading users and real world governments to question how users may be taxed, punished, or even sued for their actions within the virtual world. The courts must first determine how best virtual activity should be regulated and whether or not they should step in, as opposed to leaving regulation solely to the developer and his or her EULA. Additional questions have been raised, including issues related to jurisdiction and choice of law, as oftentimes infringers of intellectual property rights within the virtual worlds are located outside of the
United States. It is becoming critical that these answers, and many more, are soon answered, especially in light of the rise in legal disputes that have come as the result of Linden Lab’s Second Life and its purported concession of intellectual property rights to users for their creations of virtual property.

As it stands now, virtual worlds most affected by copyright law, such as Second Life, are user-built worlds and generally self-governed republics, where the creator, Linden Lab, specifically disclaims regulation of content and interaction between avatars[1] and refuses to be an arbiter in conflicts beyond those that are clearly defined as harmful practices (such as spamming or dissemination of hateful data).[2] While service providers of virtual worlds are protected against copyright infringement claims, due to the safe harbors made available from the U.S. Digital Millennium Copyright Act, there is no similar legislative provision that protects virtual world users from copyright infringement.[3] Although Linden Lab explicitly states that its virtual world, Second Life, follows the procedures set out in the U.S. Digital Millennium Copyright Act, that does not necessarily mean that
United States law governs any copyright claims that may be raised by a foreign user. In fact,
United States courts have been extremely hesitant to step in and provide any regulation of virtual conduct, including infringement actions involving trademarks and copyrights.

One example of the problematic nature of real world governance of online intellectual property infringements was provided in two separate trademark cases brought against eBay. Tiffany and Co. filed a lawsuit in the Southern District of New York against eBay for direct and contributory trademark infringement, for providing a forum which allowed the sale of counterfeit Tiffany products.[4] In addition, LVMH Moët Hennessy Louis Vuitton SA, the maker of the Louis Vuitton Brand, filed suit raising the same causes of action in
Paris, France against eBay in 2006.[5] While the Tiffany and Co. lawsuit found eBay not liable to Tiffany, the

(two weeks prior) ruled that eBay was liable for the fake LVMH products sold through eBay’s website, and fined eBay the equivalent of over $60 million in damages.[6] The difference in outcome of the near-same fact pattern clearly delineates how problematic it is to govern online infringement conduct in the real world. If any other company were to sue eBay in the future, both inside and out of the
U.S., it is extremely possible that the outcomes of the previous eBay decisions could change entirely.[7]

According to Peter Starr, United States copyright laws do not have an extraterritorial effect and therefore, infringing actions that take place entirely outside the
United States are not actionable.[8] In fact, extraterritorial application of American law would be contrary to the spirit of the Berne Convention, as stated by Judge Nelson in Subafilms, Ltd. v. MGM-Pathe Communications Co.[9]Therefore, courts should look to the Berne Convention and similar international copyright treaties in order to determine which choice of law to apply to a particular copyright infringement case. Nevertheless, if a plaintiff can establish a predicate act of copyright infringement by a defendant that occurred within the United States, the plaintiff can state a claim against that defendant under the Copyright Act for damages occurring outside the
United States.[10] This has allowed United States citizens (and corporations) to sue foreign infringers for conduct such as distribution of infringing materials or targeting
U.S. customers on a website.[11] Similarly, personal jurisdiction of non-resident defendants have been found in cases where the defendants had continuous and systematic contacts with the
United States.[12] However, how would extraterritoriality be applied in copyright infringement cases where a Second Life user from Japan, who had absolutely no contacts with the United States and did not advertise or specifically distribute the copyrighted virtual property, was infringing on a
U.S. users’ copyright? Furthermore, what law would protect a virtual copyright in the case of a Second Life infringer located in
Taiwan, a country that is not a member or signatory of the Berne Convention, the UCC, or the WCT?

Although the application of real world law to virtual world conduct would be an improvement to the current, or continued, regime of anti-regulation (or placing all of the power in the EULAs), the real world framework as applied has many inherent flaws that should best be resolved by an in-world regulatory framework which utilizes real world regulatory principles. This alternate dispute resolution regime would ultimately utilize Second Life users hired by the governments of the respective countries to form one, single source of copyright enforcement in the virtual worlds. The member states of the Berne Convention and the UCC should work to create a Copyright Act that governs all virtual world conduct in relation to the protection of copyrightable virtual assets, including computer code, text, moving and still images, and even avatars in the virtual world (according to the decision made by Judge Learned Hand in Nichols v. Universal Pictures Corp.).[13] This suggested Virtual Copyright Act, following the same national principles of the Berne Convention, would apply only to virtual conduct and would have virtual punishment and repercussions for copyright infringement (ex: injunctions via freezing of user accounts, damages in the form of virtual dollars, etc.). Although it is likely that the creation of one, single governing force within the virtual world, would be difficult to enact, it seems to be the most viable option to efficiently and adequately protect virtual world copyright rights across the world- including those countries that are not necessarily signatories of the real world copyright treaties that have currently been enacted.

[1] § 1.2 of Terms of Service for
Linden Lab

[2] Max Vern, Second Life- A New Dimension for Trademark Infringement, Intellectual Property Today (May 2008)

[3]
Id.

[4] Henry M. Sneath, Internet IP Litigation: Can the Law Catch Up With Technology?, Intellectual Property Today (September 2008)

[5]
Id.

[6]
Id.

[7]
Id.

[8] Gorman & Ginsburg, pg. 1105

[9]
Id. at 1109

[10]
Id. at 1114

[11]
Id.

[12]
Id. at 1116.

[13] http://www.aippiboston.org/en/phpincludes/program/workshops/seven/pdfs/WS_VII_Handa.pdf

As I was doing research for this commentary post on international copyright issues, I came across an interesting article by a student at the Pacific, McGeorge School of Law.  The article, titled “Harmonization of International Copyright Protection in the Internet Age,” was written by Christian A. Camarce in 2007.[i] <#_edn1>  It discusses a proposed system of copyright protection which was drafted by Professor J.A. Sterling of the Queen Mary Intellecutal Property Institute, an institute at the Queen Mary School of Law at the University of London.

Professor Sterling’s proposed International Copyright System (“ICPS”), with all of its proposed parts, can be found at http://www.qmipri.org/icps.html. The ICPS includes a Draft International Copyright Code (“Draft Code”), a Draft International Copyright Agreement (“Draft Agreement”), a Draft Protocol on Interpretation of the WIPO Treaties, a Draft Protocol on Space Copyright Law & Extraterritorial Exploitation of Protected Material, and a Draft Protocol on Limitation of Liability of Service Providers.

Mr. Camarce argues that the current international copyright conventions and agreements provide inconsistent protection for copyrightable material.  He does not specifically refer to the principle of national treatment as such, but does discuss the fact that the current international copyright conventions primarily do determine the scope of protection based on the law of the country where protection is sought.  As our book explains, this is the principle of national treatment.  Mr. Camarce’s main contention throughout the article is that in the age of the internet, where many different countries can be involved in a single act of copyright infringement at one time, a more uniform system is needed to provide consistent and dependable results.  An example of this concept of multiple countries involved at the same time would be a person located in one country browsing on a website of another country which is streaming copyrightable material from a third country.  The example that Mr. Camarce uses is that “one state may broadcast copyright content owned by another state over the internet and not violate it’s own national law.  The broadcast of the copyrighted material, however, may violate the copyright laws of the right holder’s state.”[ii] <#_edn2>

The ICPS proposes to establish an International Copyright Tribunal which would review copyright infringement issues between member countries and “issue injunctions, order the destruction or disposal of infringing material, order the payment of damages, and make any other order that the tribunal considers justifiable under the circumstances of the case.”[iii] <#_edn3>  Once the Tribunal reaches a judgment, it would not actually have any enforcement power, but rather would rely on the local courts of the member countries to enforce its decisions.  The ICPS requires member countries to enact legislation that would give that effect to the Tribunal’s decisions.  This system is different than the national treatment system which relies on the courts of the country where protection is being sought to handle copyright issues.  Our book points out that an advantage of this national treatment system is that local courts are not required to master a foreign copyright law, they need only know the law of their own jurisdiction and apply it to any case where copyright protection is being sought within their jurisdiction.  The single uniform, common copyright law that the ICPS proposes would have a similar result.  Each member country’s courts would only have to become familiar with one common international copyright law that would apply to all member countries.  The stated goal of the Draft Code for the ICPS is to view the international community of member countries as one country with one copyright law.  Additionally, local courts would only need to enforce the decisions, which they would be required by to do by their own national legislation, of the Tribunal, which would of course be well-versed in the uniform international copyright law.

Despite some of the possible advantages of this uniform copyright law system, the Draft Code seems to fall short of its goal of one uniform law for all of the member countries because it allows a member country to choose to bring its action under either the country’s own national law in its own court or under the Draft Code before the International Tribunal.  This allowance of a country to bring the action before its own laws causes the same problems for which the Draft Code and the Tribunal proposes to be established in the first place.  If the victim of copyright infringement prefers the local laws of the country where the enforcement is being sought, then they can choose to sue there under those laws, otherwise, if they believe that the laws of the Draft Code are better for their case, then they can bring the issue before the Tribunal.  This allows for the same variance in decisions and results that occurs under the national treatment system.  However, one could say though that the Draft Code would at the least provide a base level of guaranteed protection for victims of copyright infringement who seek protection in a member country.  As our book explains, though, this already exists with regard to the Berne Convention and the Universal Copyright Convention. There are substantive minima in the language of the agreements, which “prescribe categories of works to be protected, minimum periods of protection, limitations on imposition of formalities, and forms of exploitation in which exclusive rights, or in some instances, at least equitable remuneration, must be assured.”[iv] <#_edn4>

A specific internet issue that Mr. Camarce discusses with regard to the ICPS and the proposed Draft Code is peer-to-peer (“P2P”) file sharing.  The examples he discusses are the Napster, Kazaa, and Grokster cases.  He refers to these cases, where different courts reached different conclusions regarding liability and points to this as an example where a uniform international copyright law would harmonize international law regarding P2P technology.  He states that “a uniform copyright law would maintain constituency in applying theories of liability in P2P copyright infringement cases.”[v] <#_edn5>

Mr. Camarce concludes that the ICPS and its accompanying code, agreement, and protocols, would be an ideal and harmonious solution to the inconsistencies in international copyright law, particularly with regard to internet-related international copyright law issues.

It appears to me that the ICPS and its accompanying parts provide an over-simplified attempt to harmonizing international copyright law.  It seems unlikely to me that many countries would be compelled to agree to participate in this overarching copyright law, through which victims of infringement in a particular country could choose to override the national copyright laws of that country by appealing to the Tribunal and the Draft Code.  The international copyright law landscape today is complicated because there is not one simple solution for the problems of dealing with multiple countries with different sets of copyright laws.  The already existing agreements, such as the Berne Convention and the Universal Copyright Convention, which may result in varying results internationally, at least provide consistency in each country itself based on the national treatment principle.


[i] <#_ednref1> Christian A. Camarce, Harmonization of International Copyright Protection in the Internet Age, Pac. McGeorge Global Bus & Dev. L.J. 435 (2007).

[ii] <#_ednref2> Id. at 437.

[iii] <#_ednref3> Id. at 442.

[iv] <#_ednref4> Robert A. Gorman & Jane C. Ginsburg, Copyright 1082 (2006).

[v] <#_ednref5> Camarce, supra note 1, at 460.

The Berne Convention, the WTO/TRIPs accord, the WTC and the Universal Copyright Convention have done a good job of harmonizing copyright protection in the international setting.  Because of these treaties, authors of creative works can feel more comfortable knowing that they will receive at least a standard minimum amount of protection from each member state.  However most of the treaties were created before the digital age.  New technology has made infringement easier while enforcement has stayed relatively expensive.  A procedural mechanism for international litigation would be a step forward for authors trying to protect from infringement in foreign countries.  One of the major hurdles to creating this procedural mechanism is the difficulty of achieving an international standard on the question of jurisdiction.  The differences in the way civil law countries and common law countries deal with jurisdictional questions have made it difficult to find a common ground.

An example of how a civil law country deals with jurisdiction is the European Union Council Regulation on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (EC Regulation).  The general rule is that “persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.” EC Regulation, Art. 2.  An exception to this rule is found in Article 5(3), which says that a Member State may be sued in another Member State “in matters relating to tort, in the courts for the place where the harmful event occurred or may occur.” EC Regulation, Art. 5(3).  While this exception exists in the EC Regulation, it is important to keep in mind that it is not common in all civil law countries.  There is one final basis for jurisdiction in civil law countries that needs to be noted before a discussion of how to reconcile civil and common law jurisdictional questions can begin.  Article 6(1) of the EC Regulation says that a court may exercise jurisdiction over a nonresident defendant if he is part of a group of defendants and “it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.” EC Regulation, Art. 6(1).  This is true in most civil law countries.  If there are multiple defendants in different countries, the plaintiff can choose to sue them all in one particular defendant’s country.  As we will see, this would be completely unacceptable in a common law country like the United States.

The United States approach has two important aspects that are not found in civil law countries.  First, U.S. federal courts can exercise jurisdiction over a foreign defendant committing infringing acts abroad that have effects in the United States. See 2 International Copyright Law and Practice, ch. USA §8(3)(a).  To establish personal jurisdiction over a foreign defendant, where the infringement has occurred abroad (but has effects in the forum), the court must first look at the long arm statute of the state where the court is sitting.  If the situation meets the statutory requirements, then the court looks to see whether exercise of jurisdiction is constitutional.  Bensusan Rest. Corp. v. King, 126 F. 3d 25 (2d Cir. 1997).  Whether or not exercise of jurisdiction is constitutional is usually determined by a three part test: (1) the nonresident defendant must perform some act by which he purposely avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; (2) the claim must be one which arises out of or results from forum-related activities; and (3) exercise of jurisdiction must be reasonable. Ballard v. Savage, 65 F.3d 1495, 1498 (9th Cir. 1995).  Acts that can establish the first part of the test include economic transactions within the state, an agent within the state, or targeted market activities.  This type of jurisdiction may not sit well with lawyers and judges from civil law countries, where they are only used to actions in the court of the place where the defendant lives.  It also differs from EC Regulation Article 5(3), in that the US requires minimum contact with the forum.  The second aspect of the US approach that differs from civil law is the doctrine of forum non conveniens.  Under this doctrine, a court can dismiss a case if there is another forum for the action and factors like administrative difficulties or access to sources of proof weigh in favor of dismissing the case.  In contrast, most civil law countries do not have this doctrine, and require judges to hear all cases filed properly before them.

As we can see, the difference between way civil law and common law countries exercise jurisdiction creates a substantial hurdle to the creation of an international procedural mechanism.  However, some authors believe that it is possible to find a suitable point of convergence that would be acceptable to lawyers of both legal traditions.  In an article from the Marquette Intellectual Property Law Review, Professor Roberto Garza Barbosa proposes such a mechanism. 11 Marq. Intell. Prop. L. Rev. 77 (2007).  He proposes that jurisdiction will only be exercised under two grounds.  His first recommendation is to adopt Article 2 or the EC Regulation.  If a defendant resides in one state, he may be sued in that state.  His second basis of jurisdiction would be to subject nonresidents conducting actions abroad with consequences in the forum.  The approach would be similar to Article 5(3) of the EC Regulation, which establishes jurisdiction in the place where the harmful event occurred or in the place where damages were suffered.  Unlike Article 5(3) however, he would require the U.S. principle of minimum contacts be met.  This could create a problem since civil law can be formalistic and may not be comfortable without a concrete definition of what acts would meet the minimum contacts.  To try and solve this problem, professor Barbosa proposes that certain acts that have already been found to meet minimum contacts in U.S. cases be codified. Id. at 119-120.

In order to find an acceptable middle ground, Barbosa has also recommended that certain aspects of each legal tradition be left out of the international procedure.  The first thing he would leave out is provisions like Article 6(1) of the EC Regulation.  These are the provisions that enable a plaintiff to sue multiple defendants in the court of the domicile of any one defendant.  He leaves this out because it would not be compatible with the U.S. constitution.  A potential defendant may not have any contacts in the forum or have committed any actions that caused damages in the forum.  Additionally, provisions like these encourage plaintiffs to add defendants so that they can choose where to bring their action.  The second thing he would leave out is the U.S. basis for jurisdiction based on the presence of the defendant for service.  This is too unfamiliar to civil law tradition countries according to Barbosa.  Finally, he would do away with the doctrine of forum non conveniens.  The doctrine goes against the constitutions of many civil law countries, which were influenced by the French revolution, and its distrust of the judiciary.  The constitutions attempt to restrain judges from making public policy decisions, and require them to hear all cases brought properly before them.  Id. at 115-119.

Professor Barbosa should be applauded for attempting to create an international procedural mechanism for copyright litigation.  His article attempts to reconcile much more than just the question of jurisdiction.  He makes some very persuasive arguments but I feel he glosses over some important details that will be harder to agree upon in reality than in theory.  For instance, he proposes to codify certain acts that will show a defendant to have minimum contacts in a forum.  I believe he underestimates the difficulty that this will entail.  As he himself said, new technology brings new opportunities for infringement.  I think it would be nearly impossible to codify all the ways one could meet minimum contacts, especially as new technologies emerge.  I agree with his thinking that a procedural mechanism for international copyright litigation would be extremely valuable to the enforcement of copyright in foreign countries.  It will be interesting to see if an acceptable harmonization can be reached between many different countries, and many different legal systems.

Curb Makes Better Sense Than Subafilms

Curb v. M.C.A. correctly criticizes the holding in Subafilms because that decision “ignores [the] economic reality and the economic incentives underpinning the Copyright Clause designed to encourage creation of new works.” Subafilms stands for the proposition that Congress merely intended to invoke notions of contributory infringement by the inclusion (within the Copyright Act of 1976) of language providing in section  106 that “the owner of copyright under this title has exclusive rights to do and to authorize any of the following…” There is direct support for this proposition in the legislative history of the Act.

The exclusive rights accorded to a copyright owner under section 106 are ‘to do and to authorize’ any of the activities specified in the five numbered clauses. Use of the phrase ‘to authorize’ is intended to avoid any questions as to the liability of contributory infringers. For example, a person who lawfully acquires an authorized copy of a motion picture would be an infringer if he or she engages in the business of renting it to others for purposes of unauthorized public performance. (H.R. Rep. 94-1476, Sept. 3, 1976).

Because the House Report directly states the legislative intention to clarify questions as to liability of contributory infringers, the holding in Subafilms cannot be attacked as a misinterpretation of legislative intent. The problem with the holding in Subafilms it undermines the constitutional goals of Copyright law in those situations where actual infringement occurs overseas that would not or could not occur but for the authorization obtained or transmitted from within the United States. Under Subafilms, a proximate cause for infringing conduct (the authorization) occurring within the United States is perfectly legal so long as the infringement is not within the territorial borders of the United States. This cannot be good policy and cannot be squared with the Constitutional goal of incentivizing the creation of original works.  For instance, let’s say that a person, D owned land in Canada that borders the United States and D also owned the land adjacent within the United States as well. D sets up a huge screen and giant speakers for sound, buys consumer copies of Copyrighted works and proceeds to lawfully project the films onto the screen. D then charges Canadians for access to his Canadian property from which the films can be seen and heard. On the United States side of D’s property, there is no violation of 106(4) since he has not taken any liberties with the exclusive right “in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;” D could argue that the screening on his private property is not public since the public does not have access to his U.S.  property. The paying Canadian public is enriching D considerably so he conceives a business plan which he calls Border Cinema. He screens films on the border and can avoid paying licensing fees for public performance. All he needs is to purchase a consumer copy and he can avoid paying hefty fees to the copyright holders. Furthermore, Canadians are free to film the screening of their own accord and make their own copies! After all, D is not in violation of any of provision of 17 U.S.C.A 106. It seems that under Subafilms this would be perfectly legal. Remember that Subafilms states:  ‘Because the copyright laws do not apply extraterritorially, each of the rights conferred under the five section 106 categories must be read as extending “no farther than the [United States’] borders.” ‘ So 17 U.S.C.A 106(4) would limit public performance of copyrighted works “no farther than the United States borders.” Granted this fictional international Drive-in Theatre scenario is farfetched but it does illustrate a flaw in reading the reach of the provisions of Section 106 to extend only to the borders of the U.S. when we have a culprit right here in the U.S. whose conduct is the but-for cause of the infringing acts elsewhere.

This is not to ignore the legitimate concern Judge Nelson expresses in Subafilms that “an extension of extraterritoriality might undermine Congress’s objective of achieving “ ‘effective and harmonious’ copyright laws among all nations.”” However in the scenario above, there is no reason to fear for that objective merely by attaching liability for D’s actions that occur within the United States. We have implied authorization that occurs within the United States. We have copying on the Canadian side by drive-in moviegoers and yet, under Subafilms, the fact that the copying is done in Canada rather than in the U.S. completely exonerates D! However unlikely the scenario, Subafilms does not make sense when we have extraterritorial infringing conduct that could not occur but for D’s actions authorizing the infringement from within the U.S..

Curb v. MCA makes better sense than Subafilms. In Curb Judge Wiseman states: “A U.S. court, for example, could grant injunctive remedies under U.S. law for acts that commence a course of infringing conduct in the United States, for example, acts of authorizing or copying, without regard for whether eventual exploitation is to take place at home or abroad. Such an injunction would be justifiable if it forestalled piracy, whether at home or abroad, but did not risk interfering with such relief as might be granted under foreign laws for exploitation abroad.” As long as there was actual infringement and as long as that infringement could not have occurred but for the actions of a person while he is within the United States, it is difficult to see why the concerns raised in Subafilms regarding potential threats to the goal of “harmonious copyright laws among all nations” should come into play. United States law is not foisted on foreign nationals merely because it prevents infringing conduct by enjoining the authorization of that conduct inside the U.S..

Furthermore, infringement based on territorial notions of jurisdiction makes little sense when it is clear that infringers are now capable of obtaining digital access from virtually anywhere. For the same reason that we don’t force copyright holders to track down every individual direct infringer, we should not limit liability to those cases where an infringer can be caught red-handed within U.S. borders – especially when the infringing extra-territorial conduct could not occur but for authorization from within the United States.  Liability for contributory infringement allows copyright holders to attack the source of the unlawful activity while the holding in Subfilms would frustrate the ability of copyright holders to maintain effective protection of their work when the infringement happens to occur outside of the United States.