U.S. Analysis and Global Overview, Copyright

Contributing editors: Andrew H Bart, Steven R Englund, 2013 Susan J Kohlmann and Carletta F Higginson

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Reproduced with permission from Law Business Research Ltd. This article was first published inGetting the Deal Through – Copyright 2013, (published in July 2013; contributing editors: Andrew H. Bart, Steven R. Englund, Susan J. Kohlmann and Carletta F. Higginson of Jenner & Block LLP). For further information please visit www.GettingTheDealThrough.com. CONTeNTS

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Law Business Research Jenner & Block LLP overview

Overview

Andrew H Bart, Steven R Englund, Susan J Kohlmann and Carletta F Higginson Jenner & Block LLP

As a result of the significant advances in technology during the past In the US, courts continue to define the type and amount of two decades – as evidenced by the widespread use of computers and knowledge of infringement occurring on a website that, if possessed the internet, the rise of digital media and the heavy use of comput- by a service provider, would disqualify it from a safe harbour pur- erised databases – intellectual property rights and laws have had to suant to the terms of the Digital Millennium Copyright Act (the evolve. Current global trends are focused on striking the appropriate DMCA). Under the DMCA, a service provider with actual knowl- balance between combating piracy by strengthening the protection edge of specific infringing content on its site has a clear obligation to of intellectual property rights in today’s digital environment and remove or disable access to the content. In Viacom’s $1 billion copy- encouraging the promotion of the continued growth and develop- right lawsuit against YouTube and Google Inc in the case Viacom ment of electronic commerce. Intl v YouTube, Viacom asserted that the defendants are liable for The unauthorised dissemination of copyrighted works through infringement of Viacom programmes on YouTube. In June 2010, a the internet continues to pose a significant challenge to copyright lower court granted summary judgment to Google and YouTube, owners worldwide and countries continue to refine their legislative holding that they were protected from copyright infringement liabil- framework for the protection of intellectual property. ity under the safe harbour provision of the DMCA. Last year, the US For example, in China, the Supreme People’s Court recently Court of Appeals for the Second Circuit revived Viacom’s lawsuit issued Judicial Rules on Several Issues Concerning the Application against YouTube and Google Inc, and highlights some of the issues of Law in Hearing Civil Dispute Cases Involving Infringement of raised by the use of copyright when it reversed the lower court’s deci- the Right to Dissemination Through Information Networks, which sion and directed on remand that the lower court consider, among sets forth the situations in which network service providers can be other things, whether YouTube had specific knowledge of infringe- held liable for the infringing activities of network users. The provi- ment, was wilfully blind to infringing activity, had sufficient con- sions consist of 16 articles aimed at providing clear guidelines for trol or syndicated clips to third parties, such that YouTube cannot Chinese courts in determining the vicarious liability of service pro- qualify for the DMCA safe harbour and must be held responsible for viders for copyright infringement in civil cases. the infringing material posted by users. On remand, the lower court Similarly, in Greece, within the past year, a Greek court issued once again found that Google and YouTube are protected by the the first Greek judgment ordering internet service providers (ISPs) to ‘safe harbor’ provisions of the Digital Millennium Copyright Act, take efficient technological measures in order to prevent users from thus setting the stage for another appeal back to the Second Circuit. accessing websites which allow and facilitate the illegal sharing and The Viacom case remains one of the most important internet intel- copying of digital copyrighted works. In Decision 4658/2012 of the lectual property disputes of the last decade and will continue to be Athens First Instance Court, the Court granted a preliminary injunc- watched closely as courts determine the parameters of the DMCA tion to collecting societies and copyright holders against internet and set guidelines for websites to use content uploaded by users. service providers ordering the latter to block Greece-based internet As the digital world continues to evolve, so do intellectual prop- users’ access to webpages hosting copyright infringing material. The erty laws around the globe. We hope that you find our analysis Court treated ISPs as intermediaries under EC Directive 2004/48 helpful and informative as you navigate through the ever-changing and held that blocking access to the webpage hosting copyright copyright landscape in your practice or business. We look forward infringing material is an appropriate interim measure in light of the to hearing from you and welcome any comments that you may have. principle of proportionality.

www.gettingthedealthrough.com 3 Jenner & Block LLP united states

United States

Andrew H Bart, Steven R Englund, Susan J Kohlmann and Carletta F Higginson Jenner & Block LLP

Legislation and enforcement Various other provisions of the Copyright Act that were not added by the DMCA address additional specialised aspects of digital 1 What is the relevant legislation? exploitation. Among others, section 115 provides a statutory licence The main copyright statute in the United States is the Copyright Act, for ‘ mechanical’ reproduction and distribution of musical works which is Title 17 of the United States Code (17 U.S.C. section 101 et with special provisions for ‘digital phonorecord deliveries’; section seq), and is also known as the Copyright Act of 1976. It originally 117 addresses certain reproduction and adaptation of computer took effect on 1 January 1978, and has been amended numerous programs; and the Audio Home Recording Act of 1992 (codified times since. A very important amendment to the Copyright Act was in Chapter 10) addresses certain digital audio recording devices and the Digital Millennium Copyright Act of 1998 (the DMCA). This media. legislation, which relates primarily to WIPO treaty implementation, online service provider liability, circumvention of technological pro- 4 Do your copyright laws have extraterritorial application to deal with tection measures, streaming of sound recordings and protection of foreign-owned or foreign-operated websites that infringe copyright? vessel hull designs, is codified at 17 U.S.C. sections 114, 512, 1201- 1205 and 1301-1332, among other sections. In addition, 18 U.S.C. US copyright law generally does not have extraterritorial effects. section 2319 provides for criminal penalties for certain copyright However, US law would not view enforcement of the Act against infringement actions. infringing transmissions from a foreign-operated website into the US as extraterritorial. The Prioritizing Resources and Organization for Intellectual 2 Who enforces it? Property Act of 2008 extended generally applicable civil forfeiture The copyright laws of the United States are enforced in the federal provisions to include seizure of property used to facilitate criminal courts through lawsuits initiated mainly by copyright owners. In copyright infringement. Recent successful enforcement activities have certain circumstances, the United States federal government may included seizing internet domain names associated with foreign- initiate a criminal copyright enforcement action against an alleged owned and foreign-operated websites that infringe US copyrights by infringer at the request of the copyright owner. A copyright owner targeting distribution of infringing copies into the US. can also record its rights with United States Customs and Border Protection (CBP). CBP will then seek to stop the infringing products Agency at the border and prevent them from entering the United States. 5 Is there a centralised copyright agency? What does this agency do? The Copyright Office is the centralised copyright agency in the US. It 3 Are there any specific provisions of your copyright laws that address administers various provisions of the Act and serves as the office of the digital exploitation of works? Are there separate statutory record, where private parties’ claims to copyright are registered and provisions that do so? If so, please describe them. where documents relating to copyright may be recorded. As noted in question 1, the provisions of the US Copyright Act The Copyright Office also: specially addressing exploitations online or in digital formats were • furnishes information to the general public about copyright law; primarily added to the Act by the DMCA. • provides expert assistance to Congress on intellectual property First, the DMCA provides civil and criminal remedies for certain matters; circumventions of technological protection measures that control • advises Congress on possible changes in US copyright law; access to works or protect works from copying or other infringement • analyses and assists in drafting copyright legislation and (digital rights management). legislative reports, and provides and undertakes studies for Second, the DMCA also creates a conditional safe harbour for Congress; and online service providers by shielding them from certain acts of direct • offers advice to Congress on compliance with multilateral and secondary liability when they meet certain requirements. In agreements, such as the Berne Convention for the Protection of particular, safe harbours are provided for transitory digital network Literary and Artistic Works. communications, system caching, storage of information at the direction of a user and the provision of information location tools, The Copyright Office works with the Executive Branch’s Department subject to detailed requirements for each safe harbour. of State, the US Trade Representative’s Office and the Department Third, the DMCA expanded the statutory licence for sound of Commerce in providing technical expertise in negotiations for recording performance to include internet webcasting. This statutory international intellectual property agreements. It also provides licence was originally created by the Digital Performance Right in technical assistance to other countries in developing their own Sound Recordings Act of 1995. copyright laws and, through its International Copyright Institute,

www.gettingthedealthrough.com 145 United StateS Jenner & Block LLP promotes worldwide understanding and cooperation in providing 10 What are the standards used in determining whether a particular use protection for intellectual property. is fair? Additionally, a separate unit of the Library of Congress, the Under the fair use provisions of the US Copyright Act, courts are to Copyright Royalty Board, determines royalty rates and terms, and use four non-exclusive factors in determining a question of fair use. distributes royalties, under statutory licences in the music, cable and Courts are free to adapt these factors to particular situations on a satellite television industries. case-by-case basis, and judges have a great deal of freedom when making a fair use determination. The outcome of any given question Subject matter and scope of copyright of fair use can therefore be difficult to predict. The four factors are: 6 What types of works are copyrightable? • the purpose and character of the use (especially whether the use is ‘transformative’ in nature and whether it is for commercial or US Copyright law protects any qualifying ‘original works of for non-profit educational purposes); authorship’ that are fixed for more than a transitory duration in • the nature of the copyrighted work; a tangible medium of expression. The fixation need not be directly • the amount and substantiality of the portion taken; and perceptible so long as it may be communicated with the aid of a • the effect of the use upon the potential market for the copyrighted machine or device. Copyrightable works include the following work. categories: • literary works, including characters; • musical works, including any accompanying words; 11 Are architectural works protected by copyright? How? • dramatic works, including any accompanying music; An architectural work that qualifies as a ‘design of a building • pantomimes and choreographic works; embodied in any tangible medium of expression, including a building, • pictorial, graphic and sculptural works; architectural plans, or drawings’ may be protected by copyright. The • motion pictures and other audio-visual works; protection extends to any architectural work created on or after 1 • sound recordings; and December 1990. In addition, any architectural works that were not • architectural works. constructed, but were embodied in unpublished plans or drawings on that date and were constructed by 31 December 2002, are eligible for 7 What types of rights are covered by copyright? protection. Architectural designs embodied in buildings constructed prior to 1 December 1990 are not eligible for copyright protection. The Copyright Act generally gives the owner of a copyright the exclusive right to: • reproduce the work in copies or phonographic records; 12 Are performance rights covered by copyright? How? • prepare derivative works based upon the work; The US Copyright Act currently provides public performance rights • distribute copies or phonographic records of the work to the in literary, musical, dramatic and choreographic works, pantomimes, public by sale or other transfer of ownership, or by rental, lease and motion pictures and other audio-visual works. The Act also or lending; provides public performance rights as to sound recordings, but these • perform the work publicly, in the case of literary, musical, are limited to performances by means of a digital audio transmission dramatic and choreographic works, pantomimes and motion (sound recordings are defined in the law as ‘works that result pictures and other audio-visual works; from the fixation of a series of musical, spoken, or other sounds, • display the copyrighted work publicly, in the case of literary, but not including the sounds accompanying a motion picture or musical, dramatic and choreographic works, pantomimes, and other audiovisual work’. Common examples include recordings of pictorial, graphic or sculptural works, including the individual music and ‘talking books’). To be a ‘public’ performance, the work images of a motion picture or other audio-visual work; and must be performed to a ‘substantial number’ of people outside of • perform the work publicly by means of a digital audio the performer’s family and social acquaintances, or transmitted in transmission, in the case of sound recordings. such a way that members of the public are capable of receiving it. Exemptions are provided for various kinds of performances in 8 What may not be protected by copyright? specialised circumstances. For example, live performances (not transmissions) of non-dramatic literary or musical works are The following may not be protected by copyright: exempted if they are not for commercial advantage, no compensation • works that have not been fixed in a tangible form of expression; is paid to the performers or organisers, and admission is free or, • titles, names, short phrases and slogans; where the copyright owner has not objected, any proceeds are used • familiar symbols or designs; for charitable purposes. • mere variations of typographic ornamentation, lettering, or colouring; • mere listings of ingredients or contents; 13 Are other ‘neighbouring rights’ recognised? How? • ideas, procedures, processes, systems, methods, concepts, Yes, several neighbouring rights are protected: principles, discoveries, as distinguished from descriptions, • Integrated circuit layouts (called ‘mask works’) are also protected explanations or illustrations; and under specialised provisions in chapter 9. • works consisting entirely of information that is common • Unauthorised fixation and trafficking in live musical property and containing no original authorship. performances is prohibited by chapter 11. • Boat hull designs are protected by chapter 13. 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? • Hot news misappropriation is a recognised common law tort in some states, and covers the use of time-sensitive information by The doctrine of fair use exists. Fair use is codified in section 107 of a competitor regardless of whether the information is protected the Copyright Act. See question 10. by copyright law. The hot news misappropriation doctrine states that while the facts and ideas produced by a content producer may not be copyrightable, the content producer invested time and resources in obtaining this content and should retain some

right to derive revenue from that content until its commercial 18 What are the consequences for failure to make a copyright deposit? value has passed. For a competitor to take that content and If a mandatory deposit is not made on demand, a fine may be levied. resell it, without incurring the costs associated with gathering In addition, when registration is sought, the underlying work will not it, unfairly injures the content producer. In Barclays Capital Inc be registered unless the required deposit copy or copies are submitted v Theflyonthewall.com, Inc, a federal appeals court held that to the Copyright Office. federal copyright law pre-empted the financial firms’ hot news misappropriation claim under the facts at issue, but did not reject the hot news misappropriation doctrine in general. 19 Is there a system for copyright registration? • Additionally, a majority of states recognise the right of publicity, Copyright registration can be obtained by following the procedure which protects the use of a recognisable aspect of an individual’s described in question 21. persona (such as his or her image or voice) in advertising or trade. 20 Is copyright registration mandatory? 14 Are moral rights recognised? There is no requirement that the work be registered. Copyright protection exists from the moment the work is created. However, for The Copyright Act provides only very limited moral rights of ‘US works’ (generally works first published in the US or unpublished attribution and integrity to authors of narrowly defined works works where all the authors are US nationals), registration is a of visual arts, under the Visual Artist Rights Act (VARA). VARA prerequisite to suing for infringement. provides to authors of limited edition works of the fine arts and exhibition photographs the right to claim or disclaim authorship in a work; provides limited rights to prevent distortion, mutilation 21 How do you apply for a copyright registration? or modification of a work; and grants the right, under some circumstances, to prevent destruction of a work that is incorporated To apply for a copyright registration, the author must submit a into a building. The legislation provides for waiver of these moral completed application form, a non-refundable filing fee, and a non- rights, but only by a signed, written agreement specifying the work returnable deposit copy or copies of the work to be registered. The and the precise uses to which a waiver applies. The exclusive right to primary means of registration is to use the Copyright Office online prepare derivative works protects against modification, but is freely system. Paper forms can also be used, but require payment of a higher assignable. Moral rights are also protected indirectly by state tort, filing fee. Forms can be downloaded from the Copyright Office privacy and publicity laws, and by the federal Lanham Act. As a website (www.copyright.gov), picked up in person or requested by general matter, moral rights are much more narrowly defined and of post. little effect in the US as compared to foreign jurisdictions. 22 What are the fees to apply for a copyright registration? Copyright formalities The standard fee for the regular service using the online system is 15 Is there a requirement of copyright notice? $35. When paper forms are used, the standard fee is $65. The fee for the expedited service is $760. Although use of a copyright notice was once required as a condition of copyright protection, it is now optional. A copyright notice generally consists of the symbol or word ‘copyright’ (or ‘copr’ or 23 What are the consequences for failure to register a copyrighted work? ‘©’), the year of first publication and the name of the copyright To bring an infringement suit with respect to a US work, the work owner (for example, ‘© 2012 John Smith’). must be registered. However, the US Supreme Court has held (in Elsevier v Muchnick) that a copyright owner’s failure to comply 16 What are the consequences for failure to display a copyright notice? with the registration requirement of section 411(a) does not restrict a federal court’s subject-matter jurisdiction over infringement In general, the only current legal consequence of a failure to display claims involving unregistered works. In addition, attorneys’ fees the copyright notice is that it makes it easier for an infringer of the and statutory damages will be unavailable if the author has not work to claim that he or she is an ‘innocent infringer’. However, registered the work within certain time requirements. Registration is if a work was published without notice before the United States’ also recommended because it gives the public notice that the creator accession to the Berne Convention in 1989, the omission may have claims copyright protection in the work. Finally, if registration occurs caused copyright to be lost. within five years of publication, it is considered prima facie evidence of copyright validity and ownership in a court of law. 17 Is there a requirement of copyright deposit? Ownership and transfer The owner of copyright or of the exclusive right of publication in a work published in the US generally is required to deposit copies 24 Who is the owner of a copyrighted work? of the work within three months after the date of publication. Such deposit is not a condition of copyright protection. The general rule is that the author of the work initially owns the Such deposit is generally accomplished in connection with copyright. The exceptions to this rule are discussed in question 25. copyright registration (see questions 19-23). Copyright registration The initial owner of copyright may assign its rights (see question is optional. If the copyright owner chooses to register his or her work 28). with the Copyright Office, the applicant must submit specified copies of the work along with the application. Upon their deposit in the 25 May an employer own a copyrighted work made by an employee? Copyright Office, all copies and identifying material, including those deposited in connection with applications that have been refused An employer will be considered the author of a work, and will own registration, become the property of the US government. The actual the copyright, when the work is a ‘work made for hire’. A work deposit requirement varies depending on the category the work falls will be considered a work made for hire if it is prepared by an under. employee within the scope of his or her employment. In a 1989 US www.gettingthedealthrough.com 147 United StateS Jenner & Block LLP

Supreme Court decision (Community for Creative Non-Violence v (other than by operation of law) is not valid unless that transfer is Reid), the Court applied traditional common law agency principles memorialised in a writing signed by the owner of the rights conveyed to determine who constitutes an employee. As an alternative to the or such owner’s duly authorised agent. The writing, however, need ‘work made for hire’ doctrine, an employer may own a copyrighted not be made at the time of assignment, as a letter confirming the work as the result of an assignment from its employee. agreement is sufficient. Transfer of a right on a non-exclusive basis does not require a written agreement. A copyright may also be conveyed by operation of law and may be bequeathed by will, or pass 26 May a hiring party own a copyrighted work made by an independent as personal property by the applicable laws of intestate succession. contractor? Copyright is a personal property right, and is subject to the A hiring party may own a copyrighted work made by an independent various state laws and regulations that govern the ownership, contractor either by assignment, or in some circumstances, as a work inheritance or transfer of personal property as well as the terms of made for hire. If a work prepared by an independent contractor is contracts or conduct of business. Although the recording of a transfer considered a work made for hire, the hiring party will be considered in the US Copyright Office is not required to make the transfer valid the author of the work. If the parties expressly agree in a written between the parties, it does provide certain legal advantages and may document signed by them that the work will be considered a work be required to validate the transfer as against third parties. made for hire, such work created by an independent contractor will be considered a work made for hire if it is specially ordered or 29 May rights be licensed? commissioned for use as: • a contribution to a collective work; Copyright rights can be licensed on an exclusive or non-exclusive • a part of a motion picture or other audio-visual work; basis. The holder of an exclusive licence becomes the owner of the • a translation; transferred right and as such is entitled to sue any party that infringes • a supplementary work; the right while the licensee owns it. A non-exclusive licence gives the • a compilation; licensee the right to exercise one or more of the copyright owner’s • an instructional text; rights, but does not prevent the copyright owner from giving others • a test; permission to exercise the same right. • answer material for a test; or • an atlas. 30 Are there compulsory licences? What are they? The Copyright Act provides various compulsory licences: 27 May a copyrighted work be co-owned? • section 111 – secondary transmissions by cable systems; Yes, either in the case of a joint work (described further below) or • section 112 – ephemeral reproductions of sound recordings; by assignment. In either case, unless the co-owners have agreed • section 114 – public performance of sound recordings by means otherwise, a co-owner can exploit or license the work without seeking of digital audio transmissions; permission from the other co-owner(s), but would owe the other • section 115 – ‘mechanical’ reproduction and distribution of co-owner(s) a duty to account for the profits of such exploitation musical works; or licensing. Of course, a co-owner could not grant a licence that • section 118 – use of certain works in non-commercial is exclusive as to the interests of another co-owner without the broadcasting; agreement of the other co-owner. • section 119 – secondary transmissions by satellite carriers; and When one or more people create a single work together, the • section 122 – local retransmissions by satellite carriers. result is a joint work in which the copyright is initially co-owned by the joint authors. A joint work is defined by the Copyright Act as ‘a 31 Are licences administered by performing rights societies? How? work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of Performing rights societies such as ASCAP, BMI and SESAC Inc. a unitary whole’. Under this definition, all the involved authors must grant and administer voluntary collective licences for the public intend that their contributions be combined, and this intention must performance of musical works on behalf of the copyright owners exist at the time the contribution is created. It is not necessary that of such works. the contributions be equal in effort or value. Nor is it necessary that the joint authors work in the same physical area or at the same time. As defined in the statute, the only requirement is that both authors 32 Is there any provision for the termination of transfers of rights? have the intention that the works are to be ‘merged into inseparable For transfers or licences executed by an author on or after 1 January or interdependent parts of a unitary whole’. If a joint work exists, 1978, the Act permits termination, generally after 35 years from first then both authors are co-owners of equal, undivided interests in the publication, under certain conditions by serving written notice on entire work. the transferee within specified time limits. For works under statutory However, not everyone who makes any contribution to a work copyright protection before 1978, the statute provides similar rights will be considered an ‘author’. Whether a contribution rises to the of termination corresponding to the extensions of the renewal term level of authorship generally requires that a person contribute cop- of protection afforded to such works. yrightable expression and play a sufficiently important role in the creation of the work to be considered an author (based on factors such as an intention shared with other authors of the work to be 33 Can documents evidencing transfers and other transactions be co-authors, control over the work, credit commensurate with other recorded with a government agency? authors, and contribution to the audience appeal of the work). A document that transfers copyright ownership may be recorded in the Copyright Office provided that the document filed for recording 28 May rights be transferred? bears the actual signature of the person who executed it or, if the document is accompanied by a sworn or official certification, that Any or all of the copyright owner’s exclusive rights or any subdivision it is a true copy of the original signed document. A fee for recording of those rights may be transferred, but a transfer of exclusive rights the transfer must be paid.

Duration of copyright copyrights that had already expired, it did extend the terms of existing copyrights. 34 When does copyright protection begin? Copyright protection subsists from the time the work is created in Copyright infringement and remedies fixed form. The copyright in the work of authorship immediately 39 What constitutes copyright infringement? becomes the property of the author who created the work. Copyright infringement occurs when a party makes unauthorised use of copyrighted material, or copied material that is substantially 35 How long does copyright protection last? similar to the original work, in a manner that violates one of the The length of copyright protection varies according to when the copyright owner’s exclusive rights. particular work was authored or published, and according to whether the author is an identified natural person, as discussed in 40 Does secondary liability exist for indirect copyright infringement? What question 36. actions incur such liability? Secondary liability for copyrighted infringement is not statutorily 36 Does copyright duration depend on when a particular work was defined, but is enshrined in case law. Secondary liability can be found created or published? under several theories: Copyright duration depends on when a particular work was • vicarious liability, when the defendant has the ability to authored or published. A work that is created on or after 1 January supervise the infringing conduct, and benefits financially from 1978 is automatically protected from the moment of its creation the infringement; and is ordinarily given a term enduring for the author’s life plus an • contributory infringement, when the defendant has knowledge additional 70 years after the author’s death. In the case of a ‘joint or reason to know of the infringement, and contributes to, work prepared by two or more authors who did not work for hire’, authorises or induces the infringement; and the term lasts for 70 years after the last surviving author’s death. • inducement as discussed in the Supreme Court’s Grokster For works made for hire, and for anonymous and pseudonymous decision, when the defendant acts with the object of promoting works (unless the author’s identity is revealed in Copyright Office infringement, as shown by clear expression or other affirmative records), the duration of copyright will be 95 years from publication steps taken to foster infringement. or 120 years from creation, whichever is shorter. For works created before 1 January 1978, the duration of 41 What remedies are available against a copyright infringer? copyright will generally be computed in the same way as for works created on or after 1 January 1978: the life plus 70, 95 or 120-year Penalties can include: terms will apply to them as well. For works that were unpublished on • a court order restraining the infringer from continuing the 1 January 1978 but were published on or before 31 December 2002, infringing activity; the term of copyright will not expire before 31 December 2047. • confiscation and destruction of the infringing items; For works created and published or registered before 1 January • the payment to the copyright owner of any profits the infringer 1978, under the law in effect before 1978, copyright was secured received and of any losses suffered by the copyright owner, or either on the date a work was published with a copyright notice, or statutory damages as an alternative to actual profits and losses; on the date of registration if the work was registered in unpublished and form. In either case, the copyright endured for a first term of 28 • attorneys’ fees. years from the date it was secured. During the last (28th) year of the first term, the copyright was eligible for renewal. The Copyright Act of 1976 extended the renewal term from 28 to 47 years for 42 Is there a time limit for seeking remedies? copyrights that were subsisting on 1 January 1978, making these The statute of limitations for bringing a copyright infringement claim works eligible for a total term of protection of 75 years. Additional is three years. The statute of limitations is measured from the time the changes to the law in 1998 further extended the renewal term of claim accrued, usually meaning the time at which the infringement copyrights still subsisting on that date by an additional 20 years, occurred, although at least a couple of courts in the US have held providing for a renewal term of 67 years and a total term of that it was the time at which the plaintiff knew or had sufficient protection of 95 years. reason to know that the infringement occurred. If, at the time of suit, the infringement has been ongoing for more than three years, the copyright owner will be able to pursue an injunction and monetary 37 Do terms of copyright have to be renewed? How? recovery for the infringements occurring within the past three years, Works created on or after 1 January 1978 do not need to be renewed. but not for the earlier infringements. However, where the essence of As to works published or registered prior to 1 January 1978, works a copyright claim is ownership, courts have rejected the assertion of first published up until 1963 had to be formally renewed, through an ongoing wrong and have dismissed the claim if it was brought a renewal registration in the US Copyright Office, to maintain more than three years after it accrued. protection; failure to renew placed the work in the public domain. For works first published or registered between 1964 and 1977, renewal was automatic, but obtaining a renewal registration provides certain 43 Are monetary damages available for copyright infringement? advantages. Monetary damages are available for copyright infringement. A party found liable for copyright infringement may be found liable for either the copyright owner’s actual damages and any additional 38 Has your jurisdiction extended the term of copyright protection? profits of the infringer; or statutory damages, as provided by the The term of copyright protection has been extended many times. Copyright Act. However, statutory damages are only available if Most recently, the Sonny Bono Copyright Term Extension Act registration for the infringed work has been obtained within certain of 1998 extended copyright terms by 20 years to yield the terms time requirements. discussed in question 36. While the extension was not applied to www.gettingthedealthrough.com 149 United StateS Jenner & Block LLP

Update and trends

There are several hot topics relating to copyright law in the United appealed back to the Second Circuit. Similarly, in September 2011 a States. First, on 19 March 2013, in its highly anticipated decision group of authors, with The Authors Guild and other associations, filed in Kirtsaeng v John Wiley & Sons, the US Supreme Court addressed a lawsuit in the Southern District of New York against HathiTrust ( a the legality of entities buying authorised copies of works overseas partnership of academic and research institutions offering a collection and then importing them into the US to resell at a profit. The case of millions of titles digitised via the Google Books project from involved the interaction of section 602(a)(1) of the Copyright Act, libraries around the world, five major US universities, and multiple which prohibits the importation of a work without the authority of the university officials), alleging that many of the activities of HathiTrust copyright owner, and section 109(a) of the Copyright Act, which allows related to the storage and search of full-text digital books were an the owner of a copy ‘lawfully made under this title’ to sell or otherwise infringement of copyright. In October 2012, the lower court ruled on dispose of the copy without the copyright owner’s permission. In the parties’ motions for summary judgment, finding that the retention Kirtsaeng, publisher John Wiley & Sons, Inc sued a student, Supap and use of millions of digital books for the purposes of preservation, Kirtsaeng, who came from Thailand to study in the United States. text search and accessibility for the visually impaired were within the Kirtsaeng created a profitable business by buying authorised copies of limits of fair use. The ruling, which was important for the continued textbooks in Thailand and then reselling them at much higher prices in vitality of HathiTrust, offered an analysis of fair use that could be the US. These textbooks were editions directed by Wiley for sale in the helpful in the evaluation of many future projects, especially in the Asian market, and were not intended for sale in the United States. The context of libraries, education and research. However, in November lower courts said Kirtsaeng could not lawfully resell such works in the 2012, plaintiffs filed their appeal with the US Court of Appeals for US without permission from the publisher (John Wiley), and ordered the Second Circuit and the appeal is expected to be fully briefed later him to pay damages to the publisher. However, in its recent decision, in 2013. Both litigations will continue to be watched closely and are the US Supreme Court disagreed with the lower courts and held that expected to have a significant effect on fair use law. the ‘first sale’ doctrine, which allows the owner of a copyrighted work The issue of the level of knowledge of infringing use of to sell or otherwise dispose of that copy as he wishes, applies to copyrighted material by an online service that will disqualify it from a copies of a copyrighted work lawfully purchased abroad. The Court’s safe harbour pursuant to the terms of the DMCA is one that continues finding that the first-sale doctrine applies to all copyrighted works, to be closely watched and is evolving. Under the DMCA, a service wherever made, has the potential of having a widespread impact on provider with actual knowledge of infringing content on its site has various industries. a clear obligation to remove or disable access to the content. A A second hot topic continues to be the impact of the Google 2012 ruling by the US Court of Appeals for the Second Circuit in Books litigation on authorship, publishing and the fair use doctrine. the case Viacom Intl v YouTube revived Viacom’s $1 billion copyright In 2002, Google began digitising books in libraries. In 2004, Google lawsuit against YouTube and Google and highlighted some of the launched Book Search, allowing users to search its database of issues raised by the use of copyrighted material on a site. In the books. Users could view snippets of copyrighted books and download case, Viacom asserts that the defendants are liable for infringement and view full copies of public domain books. On 20 September of Viacom programs on YouTube. In June 2010, the lower court 2005, the Authors Guild filed a class action lawsuit in the Southern granted summary judgment to Google and YouTube holding that they District of New York against Google. The Authors Guild argued that were protected from copyright infringement liability under the safe Google’s Library Project involved ‘massive copyright infringement’ harbour provision of the DMCA. The Second Circuit ruled that the because it created digital copies of copyrighted works. In response, district court had misapplied the DMCA and insufficiently analysed Google temporarily suspended scanning copyrighted works to allow for the evidence and directed the district court on remand to consider, changes to its Print Publisher Program and to allow copyright owners among other things, whether YouTube had specific knowledge of the to submit lists of books they wish to be excluded. On 19 October infringement, was wilfully blind to infringing activity, had sufficient 2005, the Association of American Publishers filed another lawsuit control or syndicated clips to third parties, such that YouTube cannot against Google for copyright infringement, seeking injunctive relief. qualify for the DMCA safe harbour and must be held responsible for Google responded that its use was a fair use because they were only the infringing material posted by users. On remand, the lower court showing ‘snippets’ for books where they did not have permission from once again found that Google and YouTube are protected by the ‘safe the copyright owner. In October 2012, the Association of American harbor’ provisions of the Digital Millennium Copyright Act. The Viacom Publishers and Google announced a settlement of their lawsuit that case, which remains one of the most important Internet intellectual ‘will provide access to publishers’ in-copyright books and journals property disputes of the last decade, will continue to be watched digitised by Google for its Google Library Project,’ according to the closely as courts determine the parameters of the DMCA and set group’s statement, and ‘acknowledges the rights and interests of guidelines for websites to use content uploaded by users. copyright-holders’. However, litigation over the book project continued Finally, legal issues surrounding termination rights under the between the Authors Guild and Google. In May 2013, judges on a Copyright Act continues to be a hot topic in the US section 203 of the panel for the US Court of Appeals for the Second Circuit considered Copyright Act grants authors the right to terminate a copyright transfer, an appeal by Google of a lower court judge’s decision last year to generally 35 years after publication, or 35 years after execution of a grant class status to authors. During the argument, the judges on grant that does not involve publication (see question 32). However, the panel made comments that most interpreted as supportive of these termination rights do not apply to works made for hire. Because Google Inc’s plan to create the world’s largest digital library, which the US Copyright Act went into effect on 1 January 1978, 1 January one judge described as having ‘potentially enormous value for our 2013 marks the earliest date that authors or heirs can reclaim culture’, and pressed both sides to provide a response on whether their works under the 1976 Copyright Act. The exercise of authors’ Google’s decision to scan millions of books amounted to ‘fair use’ termination rights and the determination by courts of what works under copyright law, possibly signaling a desire to remand the case qualify as ‘works made for hire’ will continue to be closely watched. for a ruling on the fair use question – a decision that could then be

44 Can attorneys’ fees and costs be claimed in an action for copyright 45 Are there criminal copyright provisions? What are they? infringement? Criminal copyright provisions exist. Under the Copyright Act, it is a Both costs and attorneys’ fees are available for copyright criminal offence to wilfully infringe a copyright if the infringement infringement. They may be awarded in the court’s discretion if the was committed: work was registered with the US Copyright Office within certain • for either commercial or private financial gain; time requirements. • by the reproduction or distribution, including by electronic means, during a 180-day period, of one or more copies or phonographic records of one or more copyrighted works, which have a total retail value of more than $1,000; or

• by the distribution of a work being prepared for commercial Relationship to foreign rights distribution, by making it available on a computer network accessible to members of the public, if such person knew or 48 Which international copyright conventions does your country belong should have known that the work was intended for commercial to? distribution. The United States is a member of: • the Buenos Aires Convention of 1910; In addition, it is a criminal offence to place a fraudulent copyright • the Berne Convention for the Protection of Literary and Artistic notice on any article, or to publicly distribute or import for public Works (1886, as revised); distribution any article bearing such fraudulent notice. It is also a • the Convention for the Protection of Producers of Phonograms criminal offence to remove or alter any notice of copyright appearing against Unauthorised Duplication of their Phonograms; on a copy of a copyrighted work with fraudulent intent. Moreover, • the Convention Relating to the Distribution of Programme- it is a criminal offence to knowingly make a false representation of Carrying Signals Transmitted by Satellite; a material fact in an application for copyright registration, or in any • the Universal Copyright Convention (Geneva 1952 and Paris written statement filed in connection with the application. 1971); • the World Intellectual Property Organization Copyright Treaty; 46 Are there any specific liabilities, remedies or defences for online • the World Intellectual Property Organization Performances and copyright infringement? Phonograms Treaty; and • various bilateral copyright treaties. See question 3. The United States is also a member of the World Trade Organization. 47 How may copyright infringement be prevented? Generally by pursuing the remedies discussed above. In addition, a number of steps can be taken to put the public on notice that the 49 What obligations are imposed by your country’s membership of work is copyrighted and that the copyright rights will be enforced. international copyright conventions? First, the work may be registered with the Copyright Office. In As the United States has copyright relations with most countries addition, a copyright notice should be used on the work. The owner throughout the world, the main obligation is to honour the copyrights should also actively police the relevant marketplace for potential of citizens of those other countries by affording them copyright infringements. Furthermore, the owner may wish to take advantage protection in the US on the same basis as US citizens. of technical measures that prevent copyright infringement of relevant works. The DMCA (see question 3) prohibits the circumvention of access and copy control technologies that are employed by copyright owners to protect their works from infringement. It also allows copyright owners to request that an online service provider remove access to copyright infringing material if the copyrighted material is made available through the online service provider.

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