Maryland Bar Bulletin
Publications : Bar Bulletin : March 2010

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 BAR BULLETIN FOCUS: INTELLECTUAL PROPERTY  

Why worry whether a work is a United States work or a work of German origins? Simply put, it is because where a work is first published affects which set of copyright laws govern its protection. The Internet is available in all international jurisdictions at once. If displaying a work on a website changes the country of origin of the work, its author could be forced to comply with foreign copyright laws to protect the work. United States copyright law, for example, requires copyright registration as a condition of bringing suit for infringement of United States works.

Last summer, in a case of first impression, the federal district court in Delaware determined, in Hakan Moberg v. 33T LLC, 2009 WL 3182606 (D. Del. 2009), that displaying Swedish photos on a German website would not convert such foreign works into United States works. The court determined that forcing foreign authors of foreign works to comply with the United States registration requirement conflicted with United States treaty obligations under the Berne Convention for the Protection of Literary and Artistic Works. Ironically, this theory was advanced by a pair of French citizens operating websites in the United States which infringed the Swedish photographer's works.

The requirement of copyright registration prior to filing suit has been a feature of United States copyright law since 1909. The present-day copyright registration requirement grants courts subject matter jurisdiction over the copyrighted works at issue. The Berne Convention disapproves of copyright formalities that limit an author's copyright protection. Because the United States registration requirement presents an obstacle to enforcement of copyright, the Copyright Act was amended to exempt Berne works from the registration requirement when the United States joined the Convention in 1988. Now, only authors of United States works are required to register their works prior to bringing a copyright lawsuit.

This may seem to create an unfair advantage for authors of foreign works infringed in the United States. If an author of a United States work did not plan ahead and register works with the Copyright Office prior to infringement, the author could be forced to wait up to six months to file suit while his copyright applications are pending. An author may opt to pay $760 per work for "special handling" to speed up the application. Although registration is not required for a valid copyright, registering works online for $35 each prior to infringement accords the author with prima facie evidence of copyright, immediate entrance to United States courts and the right to claim statutory damages and attorneys' fees if successful. Valuable benefits, yes, but photographers who create hundreds of works per year find prior registration of every work unfeasible, and without a crystal ball it is impossible to identify which works may be infringed. So many must wait. But the effect would be even worse for foreign authors seeking registration with the added hassles of international currency and shipping.

Hakan Moberg, the Swedish photographer, never anticipated infringement of his photos in the United States. In 1993, he created a series of photographs titled "Urban Gregorian I - IX". Moberg arranged for a German gallery to sell copies of his photos. Images of the photos were displayed on the gallery's website in 2004 for marketing purposes. The images were digitally copied and displayed without authorization on websites operated by defendants in the United States. Moberg sued the defendants in the United States. The defendants moved to dismiss on the basis (among others) that the court lacked subject matter jurisdiction because copyright registration of the Urban Gregorian I IX photos was not procured prior to suit.

Defendants argued that when Moberg's photos were displayed on the website in Germany, the works were simultaneously published in the United States and Germany; and hence, under the Copyright Act and the Berne Convention, Moberg's photos were works of United States origin and subject to the registration requirement. Moberg disagreed, contending that posting a photograph on a website in a foreign country does not publish it simultaneously in the United States so as to transform the work into a United States work.

Defendants claimed that it is "well settled" that websites are published everywhere on the Internet simultaneously. Defendants' support for its statement comprised two cases concerning enforcement of laws protecting children from indecent, offensive and obscene materials on the Internet. Neither case discussed, let alone settled, the issue of how displaying foreign copyrighted works on a foreign website affects the copyright owner's ability to file suit for infringement in the United States.

The court, aided by a recent law review article regarding publication of copyrighted works in the United States, determined that no court has addressed what constitutes "publication" on the Internet for the purposes of the Copyright Act. The court held that whether or not Moberg's photographs are United States works depends on resolving whether (1) the posting of the photos on a website is considered "publishing" under the Copyright Act, and if so, (2) does "publishing" on a website happen only in the country where the website is located, or are the works published in every country around the world simultaneously.

Reasoning that under the laws of both the Copyright Act and the Berne Convention, "publication" means an authorized distribution of copies of a work to the public, the court determined that simply posting a work on a website is not necessarily a "publication." For example, an exhibition of artwork is not considered a publication under either the Copyright Act or the Berne Convention. Further, even if display of Moberg's photos on the gallery's website in Germany might qualify as a "publication," the court held, as a matter of law, that the photographs were not published simultaneously in the United States, as that result contravenes United States copyright law and the Berne Convention.

The goal of the Berne Convention, and United States accession thereto, is to make it easier for authors to protect their works in multiple countries, so bootstrapping the simultaneous publication rule to limit an author's ability to enforce copyright against a couple of admitted pirates just isn't right.

Cynthia Blake Sanders is an associate at Ober | Kaler.


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Publications : Bar Bulletin: March 2010

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