US Copyright Law Discriminates against Foreign Copyrights
A U.S. District Court Judge declined to find that the registration prerequisite for statutory damages under the U.S. Copyright laws was preempted by the Berne Convention.
Elsevier B.V., Elsevier Inc., and Mosby, Inc. (collectively “Elsevier”) own or exclusively license copyrights in scientific books and journals which they offer to subscribers to their on-line database, ScienceDirect ®. A large percentage of those publications are created abroad and their foreign copyrights have not been registered in the United States. Elsevier alleged that Defendant Ingenix, Inc. (“Ingenix”) violated the terms of its subscriber agreement with Elsevier by allowing unauthorized access to the ScienceDirect ® database. In seeking statutory damages in a case filed in the US District Court for the Southern District of New York, Elsevier assered that Article Five of the Berne Convention for the Protection of Literary and Artistic Works (the “Berne Convention”) conflicts with § 412 of theUS Copyright laws to the extent that it conditions an award of statutory damages and attorney's fees for infringement of a Berne Convention copyright on the registration of that copyright in the United States.
Article Five of the Berne Convention provides that “the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality.” Elsevier argues that the Berne Convention superseded § 412 of the Copyright Act of 1976 because statutory damages and attorney's fees are integral to the enjoyment and exercise of foreign copyrights.
The US District Court noted that that argument requires a finding that the Berne Convention was self-executing and became law upon ratification. However, in adopting the Berne Convention Implementation Act of 1988 (the “Implementation Act”), Congress declared that the Berne Convention was “not self-executing under the Constitution and laws of the United States”; that “[t]he obligations of the United States under the Berne Convention may be performed only pursuant to appropriate domestic law”; and that “[t]he amendments made by this Act ..., together with the law as it exists on the date of the enactment of this Act [October 31, 1988], satisfy the obligations of the United States in adhering to the Berne Convention and no further rights or interests shall be recognized or created for that purpose.” Berne Convention Implementation Act of 1988, Pub.L. No. 100-568 § 2, 102 Stat. 2853 (codified as amended at 17 U.S.C. § 101 et seq.)
The court concluded that since the Berne Convention is not self-executing, it cannot serve as the basis for a claim of preemption under Article VI of the United States Constitution.
This decision, although correct on the law, highlights a bias in our copyright laws. We cannot complain about inequities in other countries' IP rights unless we address this issue in our own laws.
