[A2k] IP-Watch: Golan Case May Put US In Violation Of International Copyright Treaties

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-of-international-copyright-treaties/


Intellectual Property Watch


Golan Case May Put US In Violation Of International Copyright Treaties


A United States federal court recently gave some bad news to the US
government and many foreign copyright owners - including the estates of
Sergei Rachmaninoff, Dmitry Shostakovich, Sergei Prokofiev, and Igor
Stravinsky. The court struck down a US statute which had restored copyright
protection to the works of these foreign authors.

The Federal District Court in Colorado held, in Golan v. Holder
<http://www.lessig.org/blog/Golan%20order.pdf>  [pdf], that the copyright
restoration violated the First Amendment of the US Constitution, which
protects the free speech rights of individuals and businesses. It was a
landmark ruling - the first time any US court had found that a provision of
US copyright law ran afoul of the First Amendment.

Golan, however, may put the US in a rather awkward situation. By limiting
copyright restoration, the ruling might prevent the US from fulfilling its
obligations under the Berne
<http://www.wipo.int/treaties/en/ip/berne/trtdocs_wo001.html>  Convention
and the World Trade Organization Agreement on
<http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm>  Trade-Related
Aspects of Intellectual Property Rights (TRIPS).

=93If the decision is upheld on appeal, the US could potentially be in
violation of these treaties,=94 said Tyler Ochoa, who teaches international=
 IP
law at Santa Clara Law School in California.

The problem arose from some unusual formalities that used to be part of US
copyright law. For instance, during most of the 20th century, a work
received copyright protection in the US only if it was registered in a
timely fashion with the US Copyright Office and displayed a proper copyrigh=
t
notice. Registration provided protection for 28 years, but if the
registration was properly renewed, the work was protected for an additional
28 years.

Works created overseas often failed to satisfy these formalities for
obtaining - or renewing - US copyright protection. As a result, a
significant number of works had copyright protection in their country of
origin, but not in the US.

In 1989, when the United States adhered to the Berne Convention, the countr=
y
was supposed to restore copyright protection to many of these foreign works=
.
Article 18 of Berne mandates that when a country joins the treaty, the
nation must give copyright protection to foreign works from other signatory
countries, provided that those works have not, at the time, fallen into the
public domain in the works=92 countries of origin.

Berne, however, has no enforcement mechanism, and the US failed to comply
with Article 18.

That changed in 1994, when international negotiations created the World
Trade Organization and the TRIPS Agreement. TRIPS requires all signatories
to meet specific minimum standards for IP protection - including the
protections set out in Berne. Violations of TRIPS can subject a nation to
the dispute resolution procedures of the WTO, which can result in hefty
trade sanctions against an offending country.

=93The difference between TRIPS and Berne is that TRIPS has teeth,=94 says
Christopher Sprigman, a professor at the University of Virginia School of
Law. =93TRIPS has an enforcement mechanism that can assess penalties.=94

Not wanting to fall afoul of TRIPS, the US passed a law in December 1994
that restored copyright to foreign works. Unfortunately that statute, =A751=
4
of the Uruguay Round Agreements Act (codified at 17 USC =A7104A
<http://www.bitlaw.com/source/17usc/104A.html> ), runs afoul of the First
Amendment to the US Constitution, according to the May 3 federal district
court ruling in Golan v. Holder.

The US Supreme Court has greatly limited First Amendment challenges to US
copyright law. Eldred
<http://caselaw.lp.findlaw.com/scripts/getcase.pl?navby=3Dcase&court=3Dus&v=
ol=3D53
7&page=3D186>  v. Ashcroft, allows such challenges only if Congress alters
=93the traditional contours of copyright protection.=94

Congress did precisely that when it passed =A7514, the 10th Federal Circuit
Court of Appeals held in Golan v. Gonzales
<http://www.ca10.uscourts.gov/opinions/05/05-1259.pdf>  [pdf]. Restoring
copyrights to works in the public domain violates =93the bedrock principle =
of
copyright law that works in the public domain remain there,=94 the court
stated in its 2007 decision. The appellate court then sent the case back to
the district court to determine whether =A7514 violated the First Amendment=
.

It did, according to the district court ruling in Golan v. Holder. (In this
case, the name of the defendant changes whenever the US gets a new head of
its Justice Department.)

The district court found that although the US had an important interest in
complying with Berne and TRIPS, =A7514 went substantially beyond what was
necessary to comply with those treaties. Specifically, when =A7514 restored
copyrights in some foreign works, the statute created a limited safe harbou=
r
for entities that were using these works at the time copyright was restored=
.
The statute allows these reliance parties to continue reproducing and
selling any restored-copyright work for one year after the copyright holder
files a notice of intent to enforce the restored copyright. If a reliance
party made a derivative work based on the copyrighted work, the party can
continue exploiting the derivative work after the copyright holder files a
notice of intent - but the reliance party must pay a =93reasonable royalty.=
=94

The court found that the Berne Convention (and thus, TRIPS) allows member
states to provide far more expansive protections for reliance parties.
=93Congress could have complied with the Berne Convention =85 by permanentl=
y
=91excepting parties, such as plaintiffs, who have relied upon works in the
public domain,=92=94 the court stated. By restricting reliance parties more=
 than
Berne requires, the government violated the First Amendment. Section 514,
the court stated =93suppresses the right of reliance parties to use works t=
hey
exploited while the works were in the public domain.=94

The district court=92s ruling is controversial. The US government and some
copyright experts insist that Berne does not allow permanent exemptions for
reliance parties. Others experts claim it does.

=93Nothing in Berne says or suggests [accommodations for reliance parties] =
can
only be temporary,=94 said Anthony Falzone, who teaches copyright law at
Stanford and who represents Golan in this case. He adds, =93Other Berne
signatories, such as the UK, have permanent accommodations that have not
been challenged under the WTO dispute resolution mechanism.=94

The district court is unlikely to have the last word in this matter.
Observers widely expect the US government to appeal. And if the 10th Circui=
t
Court of Appeals upholds the ruling - as many believe it will - the US coul=
d
face international repercussions.

=93If it is upheld on appeal, another country could ask the WTO to rule we =
are
not complying with our treaty obligations,=94 Ochoa said. =93If the panel f=
ound
we were not complying with =85 the Berne Convention, it could authorise the
complaining country to impose trade sanctions against the US.=94

Intellectual Property Watch



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