Trends In International Litigation : International Business Lawyer & Attorney : Ed Joffe : Joffe & Joffe Law Firm : Miami, Florida Global Customs & Trade Issues

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 Elsevier argues that the Berne Convention superseded § 412 of the Copyright Act of 1976 because statutory damages and attorney's fees are integral to the enjoyment and exercise of foreign copyrights.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.

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 CYBERsitter, LLC which does business as Solid Oak Software, has filed suit in the US District Court, Central District of California  against the Chinese government and two Chinese companies (among others) for software piracy in the theft of approximately 3,000 lines of code from Solid Oak’s internet content filtering program. This software called CYBERsitter, was designed to help parents protect their children from viewing inappropriate pornographic and violent content on the Web. CYBERsitter , the first commercially available Internet content filter, has been published for over 14 years and has over 2.4 million active CYBERsitter users worldwide, including 20 thousands of businesses, individuals, and schools in China.

The law suit alleges that Chinese software developers, in collaboration with the Chinese government, purported to design an Internet content filtering program known as Green Dam Youth Escort. Like CYBERsitter, the Green Dam program was allegedly designed to block pornographic and violent Internet content from children. Unlike CYBERsitter, however, the Green Dam program was found to contain filters to block political  and religious content expressing views that differed from those of the Chinese government.

Solid Oak alleges that a group of  independent researchers at the University of Michigan confirmed that the Green Dam developers had  copied verbatim   nearly   3,000   lines  of code  from the CYBERsitter program and incorporated   it   into the Green Dam program.

The stolen materials include the heart of the CYBERsitter software: its proprietary content filters. The Chinese government has issued Green Dam usage figures reporting — as of early June 2009 — that over 153 million computers marketed for home use had been sold with the Green Dam program, that the Green Dam program had been installed on more than half a million computers in Chinese schools and that Green Dam had been downloaded by users from the Internet an additional 3.27 million times.

The plaintiff seeks over $ 2 Billion Dollars in damages under a variety of theories including misappropriation of trade secrets, unfair competition and copyright infringement.

The court case will impose significant challenges for Solid Oak including defenses of personal jurisdiction and sovereign immunity and this litigation will take years to unfold.
Diplomacy has been unable to stop, or even thwart, the wholesale violation of US intellectual property rights in China. It will be interesting to see if civil litigation and the risk enormous money damages will provide the needed threats and sanctions to bring a stop to this piracy.

At the end of the day, i.e. years from now, this case will eventually settle - Just the cost of doing business with the world’s most populous economy.
 

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Matthew Saltmarch reported in the New York Times that a French court ruled on Friday that Google infringed copyrights by digitizing books and putting extracts online without authorization, dealing a setback to its embattled book project.The court in Paris ruled against Google after a publishing group, La Martinière, backed by publishers and authors, argued that the industry was being exploited by Google’s Book Search program, which was started in 2005.The court ordered Google to pay over 300,000 euros, or $430,000, in damages and interest and to stop digital reproduction of the material. The company was also ordered to pay 10,000 euros a day in fines until it removed extracts of some French books from its online database.

Google said it believed that it had complied with French copyright law and that it planned to appeal the decision."We believe that displaying a limited number of short extracts from books complies with copyright legislation both in France and the U.S. — and improves access to books,” said Philippe Colombet, who is responsible for Google’s books partnership in France.Mr. Colombet said he did not know whether the company would immediately remove the excerpts or pay the fine; Google’s lawyers were still examining the ruling. He also said there would be no impact on Google’s settlement with publishers and authors in the United States, an agreement that would allow the company the right to digitize, catalog and sell millions of books online that are under copyright protection.

La Martinière, based in Paris, first filed the suit in 2006 claiming damages against its publishing houses: Editions du Seuil of France, Delachaux & Niestlé of Switzerland and Harry N. Abrams of the United States.Those publishers, supported by the French Publishers’ Association and an authors’ group, had argued that scanning books was an act of reproduction that Google should pay for. They had demanded that Google be fined millions of euros.They accused Google of letting users browse the content without paying for it, and of reaping revenue from advertisers but not adequately compensating the creators and original publishers of the works.

Yann Colin, a lawyer for La Martinière, expressed his satisfaction with the result and said his client hoped that the level of the fine would be increased.The court, he said, had been “a bit rapid” in its assessment of damages, given that the three publishing houses claim that about 10,000 of their works were infringed.

Google has so far scanned 10 million books through partnerships with libraries in its project to put the world’s literature online. Over half of the books are in languages other than English.Those include books under copyright, of which only extracts can be previewed free. In these cases, Google directs users to sites where they can buy books or libraries where they can borrow them. Other books are in the public domain and can be read and downloaded free.

The project has proved especially controversial in France. Here, politicians including President Nicolas Sarkozy have pushed for a broader public digitization program, apparently wary of offering Google the chance to capitalize on the country’s cultural heritage.Mr. Sarkozy pledged nearly 750 million euros earlier this month toward the computer scanning of French literary works, audiovisual archives and historical documents, an announcement that underscored his government’s desire to maintain control over France’s cultural heritage in an era of digitization.The settlement in the United States outlined a plan to create a database of in-print and out-of-print works. It includes measures to find and compensate authors but covers only books published in North America, Britain and Australia, and any books registered with the United States Copyright Office.

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