ITAR-TASS RUSSIAN NEWS AGENCY; ITAR-TASS USA, AND FROMER & ASSOCIATES, INC., Plaintiffs-Counter-Defendants- Appellees, ARGUMENTY I FAKTY; MOSKOWSKIE NOVOSTI KOMSOMOL-SKAYA PRAVDA; UNION OF JOURNALISTS OF RUSSIA; EKHO PLANETY; MEGAPOLIS EXPRESS; BALAGAN ISRAELI COMIC MAGAZINE; MOSKOWSKY KOMSOMOLETS; AR PUBLISHING CO., INC. AND YEVGEN I. FROMER, Plaintiffs- Appellees, v. RUSSIAN KURIER, INC., Defendant-Counter- Claimant-Appellant, OLEG POGREBNOY, Defendant-Appellant.

Docket No. 97-7498

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

153 F.3d 82; 1998 U.S. App. LEXIS 21016; 47 U.S.P.Q.2D (BNA) 1810; Copy. L. Rep. (CCH) P27,813; 26 Media L. Rep. 2217

December 17, 1997, Argued

August 27, 1998, Decided

PRIOR HISTORY: Julian Lowenfeld, New York, N.Y., for [**1] Appeal from the March 24, 1997, remaining appellees. judgment of the United States District Court for the Southern District of New York (John (Professor William F. Patry, Yeshiva G. Koeltl, Judge) granting an injunction and University, Benjamin N. Cardozo School of awarding damages for copyright Law, New York, N.Y., submitted a brief as infringement. amicus curiae, by appointment of the Court).

DISPOSITION: Affirmed in part, reversed in part, and JUDGES: remanded for further proceedings. Before: FEINBERG, NEWMAN, * and McLAUGHLIN, Circuit Judges. COUNSEL: Joel K. Bohmart, Bohmart & Sacks, New * Judge Calabresi was originally a York, N.Y., for appellants. member of the panel, but recused himself after oral argument. Robert J. Berman, Hackensack, N.J., for Thereafter, Judge Newman was appellee Fromer and Associates. assigned to the panel and has heard the audiotapes of the oral argument.

OPINION: [*84] JON O. NEWMAN, Circuit Judge:

the newspaper employers who compile their This appeal primarily presents issues writings. We further conclude that to the concerning the choice of law in international extent that Russian law accords newspaper copyright cases and the substantive publishers an interest distinct from the meaning of Russian copyright law as to [**2] copyright of the newspaper reporters, the the respective rights of newspaper reporters publishers' interest, like the usual ownership and newspaper publishers. The conflicts interest in a compilation, extends to the issue is which country's law applies to issues publishers' original selection and of copyright ownership and to issues of arrangement of the articles, and does not infringement. The primary substantive issue entitle the publishers to damages for copying under Russian copyright law is whether a the texts of articles contained in a newspaper publishing company has an newspaper compilation. We therefore interest sufficient to give it standing to sue reverse the judgment to the extent that it for copying the text of individual articles granted the newspapers relief for copying appearing in its newspapers, or whether the texts of the articles. However, because complaint about such copying may be made one non-newspaper plaintiff-appellee is only by the reporters who authored the entitled to some injunctive relief and articles. Defendants-appellants Russian damages and other plaintiffs-appellees may Kurier, Inc. ("Kurier") and Oleg Pogrebnoy be entitled to some, perhaps considerable, (collectively "the Kurier defendants") appeal relief, we also remand for further from the March 25, 1997, judgment of the consideration of this lawsuit. District Court for the Southern District of New York (John G. Koeltl, Judge) enjoining Background them from copying articles that have appeared or will appear in publications of the The [**4] lawsuit concerns Kurier, a Russian plaintiffs-appellees, mainly Russian language weekly newspaper with a newspapers and a Russian news agency, circulation in the New York area of about and awarding the appellees substantial 20,000. It is published in New York City by damages for copyright infringement. defendant Kurier. Defendant Pogrebnoy is On the conflicts issue, we conclude that, president and sole shareholder of Kurier and with respect to the Russian plaintiffs, editor-in-chief of Kurier. The plaintiffs include Russian law determines the ownership and corporations that publish, daily or weekly, essential nature of the copyrights alleged to major Russian language newspapers in have been infringed and that United [**3] Russia and Russian language magazines in States law determines whether those Russia or Israel; Itar-Tass Russian News copyrights have been infringed in the United Agency ("Itar-Tass"), formerly known as the States and, if so, what remedies are Telegraph Agency of the Soviet Union available. We also conclude that Russian (TASS), a wire service and news gathering law, which explicitly excludes newspapers company centered in Moscow, functioning from a work-for-hire doctrine, vests exclusive similarly to the Associated Press; and the ownership interests in newspaper articles in Union of Journalists of Russia ("UJR"), the the journalists who wrote the articles, not in professional writers union of accredited print

-2- and broadcast journalists of the Russian Federation. Since the Court's analysis framed the key The Kurier defendants do not dispute that issue that would be considered at trial and is Kurier has copied about 500 articles that first raised on appeal, the Court's opinion and the appeared in the plaintiffs' publications or Russian statutory provisions relied on need were distributed by Itar-Tass. The copied to be explained. material, though extensive, was a small percentage of the total number of articles Preliminarily, the Court ruled that the published in Kurier. See Itar-Tass Russian request for a preliminary injunction News Agency v. Russian Kurier, Inc., 1997 concerned articles published after March 13, U.S. Dist. LEXIS 2717, [**5] No. 95 Civ. 1995, the date that Russia acceded to the 2144(JGK), 1997 WL 109481, at *13 Berne Convention. See id. at 1125. The (S.D.N.Y. Mar. 10, 1997) ("Itar-Tass II"). The Court then ruled that the copied works were Kurier defendants also do not dispute how "Berne Convention works," 17 U.S.C. ' 101, the copying occurred: articles from the [*85] and that the plaintiffs' rights were to be plaintiffs' publications, sometimes containing determined according to Russian copyright headlines, pictures, bylines, and graphics, in law. See Itar-Tass I, 886 F. Supp. at 1125- addition to text, were cut out, pasted on 26. layout sheets, and sent to Kurier's printer for The Court noted that under Russian photographic reproduction and printing in the copyright law authors of newspaper articles pages of Kurier. retain the copyright in their articles unless Most significantly, the Kurier defendants there has been a contractual assignment to also do not dispute that, with one exception, their employer or some specific provision of they had not obtained permission from any law provides that the author's rights vest in of the plaintiffs to copy the articles that the employer. [**7] See id. at 1127. Since appeared in Kurier. Pogrebnoy claimed at the defendants alleged no claim of a trial to have received permission from the contractual assignment, the Court next publisher of one newspaper, but his claim considered the provision of the 1993 was rejected by the District Court at trial. Russian Federation Law on Copyright and See id. at *4. Pogrebnoy also claimed that Neighboring Rights ("Russian Copyright he had obtained permission from the authors Law") (World Intellectual Property of six of the copied articles. The District Organization (WIPO) translation) concerning Court made no finding as to whether this what the United States Copyrights Act calls testimony was credible, since authors' "works made for hire," 17 U.S.C. ' 201(b). permission was not pertinent to the District See Russian Copyright Law, Art. 14(2). That Court's view of the legal issues. provision gives employers the exclusive right Preliminary injunction ruling. After a to "exploit" the "service-related work" hearing in May 1995, the District Court produced by employees in the scope of their issued a preliminary [**6] injunction, employment, absent some contractual prohibiting the Kurier defendants from arrangement. However, the Court noted, copying the "works" of four plaintiff news Article 14(4) specifies that subsection 2 does organizations. See Itar-Tass Russian News not apply to various categories of works, Agency v. Russian Kurier Inc., 886 F. Supp. including newspapers. See Itar-Tass I, 886 1120, 1131 (S.D.N.Y. 1995) ("Itar-Tass I"). F. Supp. at 1127. Accepting the view of

-3- plaintiffs' expert, Professor Vratislav and Other Works." This Article contains two Pechota, Judge Koeltl therefore ruled that sub-sections. Article 11(1) specifies the the Russian version of the work-for-hire rights of compilers generally: doctrine in Article 14(2), though exempting The author of a collection or any other newspapers, applies to press agencies, like composite work (compiler) shall enjoy Itar-Tass. See id. copyright in the selection or arrangement of Turning to the rights of the newspapers, subject matter that he has made insofar as Judge Koeltl relied on Article 11, captioned that selection or arrangement is the result of "Copyright of [**8] Compiler of Collections a creative effort of compilation. evidence at the trial, the last phrase of The compiler shall enjoy copyright Article 11(2) was rendered "independently subject to respect for the rights of the from the publication as a whole." Russian authors of each work included in the Copyright Law, Art. 11(2) (Newton Davis composite work. translation). Because the parties' experts Each of the authors of the works included focused on the phrase "as a whole" in the in the composite work shall have the right to Davis translation of Article 11(2), we will rely exploit his own work independently of the on the Davis translation for the rendering of composite work unless the author's contract this key phrase of Article 11(2), but all other provides otherwise. references to the Russian Copyright Law will .... be to the WIPO translation. Russian Copyright Law, Art. 11(1). Article 11(2), the interpretation of which is critical to n1 The Newton Davis translation, this appeal, specifies the rights of compilers which was an exhibit at trial, renders of those works that are excluded from the this word "publisher." work-for-hire provision of Article 14(2):

[*86] The exclusive right to exploit The District Court acknowledged, as the encyclopedias, encyclopedic dictionaries, plaintiffs' [**10] expert had stated, that collections of scientific works -- published in considerable scholarly debate existed in either one or several installments -- Russia as to the nature of a publisher's right newspapers, reviews and other periodical "in a work as a whole." See Itar-Tass I, 886 publications shall belong [**9] to the editor F. Supp. at 1128. Judge Koeltl accepted n1 thereof. The editor shall have the right to Professor Pechota's view that the mention his name or to demand such newspaper could prevent infringing activity mention whenever the said publications are "sufficient to interfere with the publisher's exploited. interest in the integrity of the work." Id. The authors of the works included in the Without endeavoring to determine what said publications shall retain the exclusive extent of copying would "interfere with" the rights to exploit their works independently of "integrity of the work," Judge Koeltl the publication of the whole work. concluded that a preliminary injunction was warranted because what Kurier had copied Id., Art. 11(2). In another translation of the was "the creative effort of the newspapers in Russian Copyright Law, which was in the compilation of articles including

-4- numerous articles for the same issues, newspapers' creative efforts as a compiler, together with headlines and photographs." such as the selection and arrangement of Id. The Court's preliminary injunction opinion articles, the creation of headlines, and the left it unclear whether at trial the plaintiffs layout of text and graphics, or also for could obtain damages only for copying the copying the text of individual articles. exploit their works "independently of the Expert testimony at trial. At trial, this publication as a whole." unresolved issue was the focus of conflicting [**11] expert testimony. The plaintiffs' expert Though Newcity opined that even under witness at trial was Michael Newcity, Article 485, reprinting of "one or two or three, coordinator for the Center for Slavic, at most," articles from a newspaper would Eurasian and East European Studies at have constituted infringement of the Duke University and an adjunct member of copyright "as a whole," he rested his reading the faculty at the Duke University Law of Article 11(2) significantly on the fact that School. He opined that Article 11(2) gave the the 1993 revision dropped the phrase "as a newspapers rights to redress copying not whole" from the paragraph that specified the only of the publication "as a whole," but also publisher's right. This deletion, he of individual articles. He acknowledged that contended, [*87] eliminated whatever the reporters retained copyrights in the ambiguity might have existed in the first articles that they authored, but stated that paragraph of Article 485. Article 11(2) created a regime of parallel Second, Newcity referred to an opinion of exclusive rights in both the newspaper the Judicial Chamber for Informational publisher and the reporter. He rejected the Disputes of the President of the Russian contention that exclusive rights could not Federation ("Informational Disputes exist in two parties, pointing out that co- Chamber"), issued on June 8, 1995. That authors shared exclusive rights to their joint opinion had been sought by the editor-in- work. chief of one of the plaintiffs in this litigation, Newcity offered two considerations in Moskovskie Novosti (Moscow News), who support of his position. First, he cited the specifically [**13] called the tribunal's predecessor of Article 11(2), Article 485 of attention to the pending litigation between the Russian Civil Code of 1964. That Russian media organizations and the provision was similar to Article 11(2), with publisher of Kurier. The Informational one change that became the subject of Disputes Chamber stated, in response to major disagreement among the expert one of the questions put to it, n2 "In the witnesses. Article 485 had given compilers, event of a violation of its rights, including the including newspaper publishers, the right to improper printing of one or two articles, the exploit their works "as a whole." The 1993 publisher [of a newspaper] has the right to revision deleted [**12] "as a whole" from the petition a court for defense of its rights." first paragraph of the predecessor of Article 11(2), where it had modified the scope of the compiler's right, and moved the phrase to n2 The question posed was: the second paragraph of revised Article Under Russian jurisprudence, must 11(2), where it modifies the reserved right of the newspaper be completely copied the authors of articles within a compilation to by infringers of copyright in order for

-5- the publisher to have standing to come that's the only thing not reserved to the to court, or does the publisher have the authors." He opined that a newspaper's right right to come to court even in the case to use of the compiled work "as a whole" where the copyrights have been would be infringed by the copying of an infringed by means of a reprint of just entire issue of a newspaper and probably by one or two articles by third parties copying a substantial part of one issue, but (infringers)? not by the copying of a few articles, since the copyright in the articles belongs to the

reporters. He also disagreed with Newcity's Defendants' experts presented a very contention that exclusive rights to individual different view of the rights of newspapers. articles belonged simultaneously to both the Professor Peter B. Maggs of the University newspaper and the reporter. Exclusive of Illinois, Urbana-Champaign, College of rights, he maintained, cannot be held by two Law, testifying by deposition, pointed out people, except in the case of co-authors, that Article 11(2) [**14] gives authors the who have jointly held rights against the exclusive rights to their articles and accords world. newspaper publishers only the "exclusive rights to the publication as a whole, because The defendants' second expert trial witness The defendants' first expert witness at was Svetlana Rozina, a partner of the Lex trial was Michael Solton, who has worked in International law firm, who has consulted for Moscow and Washington as an associate of the Russian government. She wrote the first the Steptoe & Johnson law firm. Under draft of what became the 1993 revision of Article 11, he testified, authors retain the Russian Copyright Law. She also exclusive rights to their articles in testified that authors of works in compilations compilations, the compiler acquires a retain the exclusive right to their works, and copyright in the selection and creative that publishers of compilations do not have arrangement of materials in the compilation, any rights to individual articles. Turning to and a newspaper publisher typically [**15] the change in the placement of the phrase acquires the limited rights of the compiler by "as a whole" from Article 11(1) to Article assignment from the compiler. The 11(2), she explained that no substantive publisher, he said, does not acquire any change was intended; the shift was made rights to the individual articles. Solton "for the purpose of Russian grammar." She declined to attach any significance to the also agreed with Solton that the [**16] decision issued by the Informational Informational Disputes Chamber renders Disputes Chamber because, he explained, advice on matters concerning freedom of the bylaws of that body accord it authority mass information and lacks the competence only over limited matters concerning the to adjudicate issues of copyright law. mass media and explicitly preclude it from adjudicating matters that Russian law refers Trial ruling. The District Court resolved the to courts of the Russian Federation, such as dispute among the experts by accepting copyright law. Newcity's interpretation of Russian copyright law. See Itar-Tass II, 1997 WL 109481, at *9-*10. As he had previously ruled in

-6- granting the preliminary injunction, Judge 11(2), and the opinion of the Informational Koeltl recognized that newspapers acquire Disputes Chamber. He also reasoned that no rights to individual articles by virtue of publishers have "the real economic incentive Article 14 since the Russian version of the to prevent wholesale unauthorized copying," [*88] work-for-hire doctrine is inapplicable to and that, in the absence of assignments of newspapers. Nevertheless, Judge Koeltl rights to individual articles, widespread accepted Newcity's view of Article 11, relying copying would occur if publishers could not on both the movement of the phrase "as a prevent Kurier's infringements. Itar-Tass II, whole" from the first paragraph of Article 1997 WL 109481, [**17] at *10. 11(2) to the second paragraph of Article The District Court estimated Kurier's Discussion profits during the relevant years at $ 2 million and found that 25 percent of these profits I. Choice of Law were attributable to the copied articles. The

Court therefore awarded the plaintiffs $ The threshold issue concerns the choice of 500,000 in actual damages against Kurier law for resolution of this dispute. That issue and Pogrebnoy. See id. at *14. The Court was not initially considered by the parties, all also ruled that the plaintiffs were entitled to of whom turned directly to Russian law for statutory damages with respect to 28 articles resolution of the case. Believing that the for which the plaintiffs had obtained United conflicts issue merited consideration, we States copyright registrations. See id. at *15. requested supplemental briefs from the The Court found that the registered articles parties and appointed Professor William F. had originally appeared in 15 different Patry as Amicus Curiae. n3 Prof. Patry has publications and concluded that the plaintiffs submitted an extremely helpful brief on the were entitled to 15 awards of statutory choice of law issue. damages. See id. at *16. The Court found the violations willful, see 17 U.S.C. ' 504(c)(1), and set each statutory award at $ n3 Prof. Patry, a faculty member at 2,700. See Itar-Tass II, 1997 WL 109481, at Cardozo Law School, has served as *16. However, to avoid duplicative recovery, Adviser to the Register of Copyrights the Court ruled that the actual and statutory and Counsel to the Subcommittee on damages could not be aggregated and Intellectual Property and Judicial afforded the plaintiffs their choice of whether Administration of the Committee on the to receive statutory damages (offsetting the Judiciary of the U.S. House of statutory award from the actual damages Representatives. He is the author of award) or actual damages. The Court well known treatises on copyright law. awarded [**18] $ 3,934 in total damages See William F. Patry, Copyright Law against defendant Linco Printing, which and Practice (1994); William F. Patry, prints Kurier; this sum comprised actual The Fair Use Privilege in Copyright damages of $ 1,017, reduced to $ 934 to Law (2d ed. 1995). avoid partial duplication with statutory damages, plus $ 3,000 in statutory [**19] damages. See id. at *17.

-7- Ltd. v. Grupo Pepe Ltda., 1992 U.S. Dist. Choice of law issues in international LEXIS 17144, 24 U.S.P.Q.2D (BNA) 1354, copyright cases have been largely ignored in 1356 (S.D. Fla. 1992) (congruent foreign and the reported decisions and dealt with rather U.S. law both applied). In none of these cursorily by most commentators. Examples cases, however, was the issue of choice of pertinent to the pending appeal are those law explicitly adjudicated. The conflicts issue decisions involving a work created by the was identified but ruled not necessary to be employee of a foreign corporation. Several resolved in Greenwich Film Productions S.A. courts have applied the United States work- v. D.R.G. Records, Inc., 1992 U.S. Dist. for-hire doctrine, see 17 U.S.C. ' 201(b), LEXIS 14770, 25 U.S.P.Q.2D (BNA) 1435, without explicit consideration of the conflicts 1437-38 (S.D.N.Y. 1992). [**21] issue. See, e.g., Aldon Accessories Ltd. v. Spiegel, Inc., 738 F.2d 548, 551-53 (2d Cir. 1984) (U.S. law applied to determine if n4 Though Aldon's use of the statuettes crafted abroad were works for "actual supervision and control" test for hire); n4 Dae Han Video Productions, Inc. v. applying the work-for-hire doctrine has Kuk Dong Oriental Food, Inc., 1990 U.S. since been rejected, see Community Dist. LEXIS 18329, 19 U.S.P.Q.2D (BNA) for Creative Non-Violence v. Reid, 490 1294 (D. Md. 1990) (U.S. law applied to U.S. 730, 104 L. Ed. 2d 811, 109 S. determine if scripts written abroad were Ct. 2166 (1989), its use of U.S. law as works for [*89] hire); n5 P & D International the source of the work-for-hire doctrine v. Halsey Publishing Co., 672 F. Supp. 1429, remains unimpaired, though the 1435-36 (S.D. Fla. 1987) (U.S. work for hire precedential force of the implicit law assumed to apply). Other courts have conflicts ruling is weakened by the applied foreign law. See Frink America, Inc. absence of any discussion of the v. Champion Road Machinery Ltd., 961 F. issue. Under principles we discuss Supp. 398 (N.D.N.Y. 1997) [**20] (Canadian below, United States law was properly copyright law applied on issue of ownership); applied to the ownership issue since Greenwich Film Productions v. DRG the country of origin of the work was Records Inc., 1992 U.S. Dist. LEXIS 14770, the United States, the work having 1992 WL 279, at *357 (S.D.N.Y. 1992) been first published in the United (French law applied to determine ownership States and "authored" by a U.S. of right to musical work commissioned in citizen. France for French film); Dae Han Video Production Inc. v. Dong San Chun, 1990 n5 To the extent that this decision U.S. Dist. LEXIS 18496, 17 U.S.P.Q.2D applied the U.S. work-for-hire doctrine (BNA) 1306, 1310 n.6 (E.D. Va. 1990) simply because copyright certificates (foreign law relied on to determine that had been issued by the United States alleged licensor lacks rights); see also Copyright Office, it relied on an Autoskill, Inc. v. National Educational unpersuasive ground. Issuance of the Support Systems, Inc., 994 F.2d 1476, 1489 certificate is not a determination n.16 (10th Cir. 1993) (U.S. work for hire law concerning applicability of the work-for- applied where claim that contrary Canadian hire doctrine or a resolution of any law should apply was belatedly raised and issue concerning ownership. See Jane for that reason not considered); Pepe (U.K.) C. Ginsburg, Ownership of Electronic

-8- Rights and the Private International broad statement is that it subsumes under Law of Copyright, 22 Colum.-VLA J.L. the phrase "applicable law" the law & Arts 165, 171 n.22 (1998). concerning two distinct issues -- ownership and substantive rights, i.e., scope of [**22] protection. n8 Another [**23] commentator has also broadly stated the principle of The Nimmer treatise briefly (and perhaps national treatment, but described its optimistically) suggests that conflicts issues application in a way that does not "have rarely proved troublesome in the law necessarily cover issues of ownership. "The of copyright." See Nimmer on Copyright ' principle of national treatment also means 17.05 (1998) ("Nimmer") (footnote omitted). that both the question of whether the right Relying on the "national treatment" principle exists and the question of the scope of the of the Berne Convention n6 and the right are to be answered in accordance with Universal Copyright Convention n7 the law of the country where the protection is ("U.C.C."), Nimmer asserts, correctly in our claimed." S.M. Stewart, International view, that "an author who is a national of one Copyright and Neighboring Rights ' 3.17 of the member states of either Berne or the (2d ed. 1989). We agree with the view of the U.C.C., or one who first publishes his work in Amicus that the Convention's principle of any such member state, is entitled to the national treatment simply assures that if the same copyright protection in each other law of the country of infringement applies to member state as such other state accords to the scope of substantive copyright its own nationals." Id. (footnotes omitted). protection, that law will be applied uniformly Nimmer then somewhat overstates the to foreign and domestic authors. See Murray national treatment principle: "The applicable v. British [*90] Broadcasting Corp., 906 F. law is the copyright law of the state in which Supp. 858 (S.D.N.Y. 1995), aff'd, 81 F.3d the infringement occurred, not that of the 287 (1996). state of which the author is a national, or in which the work is first published." Id. (footnote omitted). The difficulty with this country in which protection is claimed n6 See Berne Convention Art. 5(1) must treat foreign and domestic (Paris text 1971), reprinted in 3 William authors alike. Whether U.S. copyright F. Patry, Copyright Law and Practice law directs U.S. courts to look to 2013 (1994). foreign or domestic law as to certain n7 See Universal Copyright issues is irrelevant to national Convention (Paris text 1971), reprinted treatment, so long as the scope of in 3 William F. Patry, Copyright Law protection would be extended equally and Practice 2054 (1994). [**24] to foreign and domestic authors. n8 Prof. Patry's brief, as Amicus Curiae, helpfully points out that the principle of national treatment is really Source of conflicts rules. Our analysis of not a conflicts rule at all; it does not the conflicts issue begins with consideration direct application of the law of any of the source of law for selecting a conflicts country. It simply requires that the

-9- rule. Though Nimmer turns directly to the Convention ... do not expand or reduce Berne Convention and the U.C.C., we think the right of any author of a work, that step moves too quickly past the Berne whether claimed under Federal, State, Convention Implementation Act of 1988, Pub or the common law ... to claim L. 100-568, 102 Stat. 2853, 17 U.S.C.A. ' authorship of the work." 101 note. Section 4(a)(3) of the Act amends Title 17 to provide: "No right or interest in a work eligible for protection under this title may be claimed by virtue of ... the provisions We start our analysis with the Copyrights [**25] of the Berne Convention .... Any rights Act itself, which contains no provision in a work eligible for protection under this relevant to the pending case concerning title that derive from this title ... shall not be conflicts [**26] issues. n10 We therefore fill expanded or reduced by virtue of ... the the interstices of the Act by developing provisions of the Berne Convention." n9 17 federal common law on the conflicts issue. U.S.C. ' 104(c). See D'Oench, Duhme & Co. v. FDIC, 315 U.S. 447, 86 L. Ed. 956, 62 S. Ct. 676 (1942); id. at 472 (Jackson, J., concurring) n9 Other pertinent provisions are: ("The law which we apply to this case Section 2(2), which provides: "The consists of principles of established credit in obligations of the United States under jurisprudence, selected by us because they the Berne Convention may be are appropriate to effectuate the policy of the performed only pursuant to appropriate governing Act."). In doing so, we are entitled domestic law." to consider and apply principles of private Section 3(a)(2), which provides: international law, which are "'part of our "The provisions of the Berne law.'" Maxwell Communications Corp. v. Convention ... shall not be enforceable Societe Generale, 93 F.3d 1036, 1047 (2d in any action brought pursuant to the Cir. 1996) (quoting Hilton v. Guyot, 159 U.S. provisions of the Berne Convention 113, 143, 40 L. Ed. 95, 16 S. Ct. 139 itself." (1985)). Section 3(b)(1), which provides: "The provisions of the Berne n10 The recently added provision added); see id. ' 104A(h)(8) (defining concerning copyright in "restored "source country"). works," those that are in the public This provision could be interpreted domain because of noncompliance to be an example of the general with formalities of United States conflicts approach we take in this copyright law, contains an explicit opinion to copyright ownership issues, subsection vesting ownership of a or an exception to some different restored work "in the author or initial approach. See Jane C. Ginsburg, rightholder of the work as determined Ownership of Electronic Rights and the by the law of the source country of the Private International Law of Copyright, work." 17 U.S.C. ' 104A(b) (emphasis 22 Colum.-VLA J.L. & Arts 165, 171

-10- (1998). We agree with Prof. Ginsburg origin" of these works, see [**28] 17 U.S.C. and with the amicus, Prof. Patry, that ' 101 (definition of "country of origin" of section 104A(b) should not be Berne Convention work); Berne Convention, understood to state an exception to Art. 5(4), although "country of origin" might any otherwise applicable conflicts rule. not always be the [*91] appropriate country See Ginsburg, id.; Brief for Amicus for purposes of choice of law concerning Curiae at 14-17. ownership. n11

[**27] n11 In deciding that the law of the The choice of law applicable to the country of origin determines the pending case is not necessarily the same for ownership of copyright, we consider all issues. See Restatement (Second) of only initial ownership, and have no Conflict of Laws ' 222 ("The courts have occasion to consider choice of law long recognized that they are not bound to issues concerning assignments of decide all issues under the local law of a rights. single state."). We consider first the law applicable to the issue of copyright ownership. To whatever extent we look to the Berne Convention itself as guidance in the Conflicts rule for issues of ownership. development of federal common law on the Copyright is a form of property, and the conflicts issue, we find nothing to alter our usual rule is that the interests of the parties conclusion. The Convention does not purport in property are determined by the law of the to settle issues of ownership, with one state with "the most significant relationship" exception not relevant to this case. n12 See to the property and the parties. See id. The Jane C. Ginsburg, Ownership of Electronic Restatement recognizes the applicability of Rights and the Private International Law of this principle to intangibles such as "a literary Copyright, 22 Colum.-VLA J.L. & Arts 165, idea." Id. Since the works at issue were 167-68 (1998) (The Berne Convention created by Russian nationals and first "provides that the law of the country where published in Russia, Russian law is the protection is [**29] claimed defines what appropriate source of law to determine rights are protected, the scope of the issues of ownership of rights. That is the protection, and the available remedies; the well-reasoned conclusion of the Amicus treaty does not supply a choice of law rule Curiae, Prof. Patry, and the parties in their for determining ownership.") (footnote supplemental briefs are in agreement on this concerning Art. 14bis(2)(a) omitted). point. In terms of the United States Copyrights Act and its reference to the Berne Convention, Russia is the "country of country where protection is claimed."

Berne Convention, Art. 14bis(2)(a). n12 The Berne Convention With respect to other works, this expressly provides that "ownership of provision could be understood to have copyright in a cinematographic work any of three meanings. First, it could shall be a matter for legislation in the carry a negative implication that for

-11- other works, ownership is not to be legal or beneficial owner of an "exclusive determined by legislation in the country right." where protection is claimed. Second, it Conflicts rule for infringement issues. On could be thought of as an explicit infringement issues, the governing conflicts assertion for films of a general principle is usually lex loci delicti, the principle already applicable to other doctrine generally applicable to torts. See works. Third, it could be a specific Lauritzen v. Larsen, 345 U.S. 571, 583, 97 L. provision for films that was adopted Ed. 1254, 73 S. Ct. 921 (1953). We have without an intention to imply anything implicitly adopted that approach to about other works. In the absence of infringement claims, applying United States any indication that either the first or copyright law to a work that was unprotected second meanings were intended, we in its country of origin. See Hasbro Bradley, prefer the third understanding. Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192-93 (2d Cir. 1985). In the pending case, [**30] the place of the tort is plainly the United States. To whatever extent lex loci delicti is Selection of Russian law to determine to be considered only one part of a broader copyright ownership is, however, subject to "interest" approach, see Carbotrade S.p.A. v. one procedural qualification. Under United Bureau Veritas, 99 F.3d 86, 89-90 (2d Cir. States law, an owner (including one 1996), [**31] United States law would still determined according to foreign law) may apply to infringement issues, since not only sue for infringement in a United States court is this country the place of the tort, but also only if it meets the standing test of 17 U.S.C. the defendant is a United States corporation. ' 501(b), which accords standing only to the Nevertheless, though the issues are related, The division of issues, for conflicts the nature of a copyright interest is an issue purposes, between ownership and distinct from the issue of whether the infringement issues will not always be as copyright has been infringed, [**32] see, easily made as the above discussion implies. e.g., Kregos v. Associated Press, 937 F.2d If the issue is the relatively straightforward 700, 709-10 (2d Cir. 1991) (pointing out that one of which of two contending parties owns although work survives summary judgment a copyright, the issue is unquestionably an on issue of copyrightability of compilation, ownership issue, and the law of the country scope of protection against claim of with the closest relationship to the work will infringement might be limited). The pending apply to settle the ownership dispute. But in case is one that requires consideration not some cases, including the pending one, the simply of who owns [*92] an interest, but, issue is not simply who owns the copyright as to the newspapers, the nature of the but also what is the nature of the ownership interest that is owned. interest. Yet as a court considers the nature of an ownership interest, there is some risk that it will too readily shift the inquiry over to II. Determination of Ownership Rights Under the issue of whether an alleged copy has Russian Law infringed the asserted copyright. Whether a copy infringes depends in part on the scope Since United States law permits suit only by of the interest of the copyright owner. owners of "an exclusive right under a

-12- copyright," 17 U.S.C. ' 501(b), we must first conclude that the defendants' experts are far determine whether any of the plaintiffs own more persuasive as to the meaning of Article an exclusive right. That issue of ownership, 11. In the first place, once Article 14 of the as we have indicated, is to be determined by Russian [**34] Copyright Law explicitly Russian law. denies newspapers the benefit of a work-for- hire doctrine, which, if available, would Determination of a foreign country's law accord them rights to individual articles is an issue of law. See Fed. R. Civ. P. 44.1; written by their employees, it is highly Bassis v. Universal Line, S.A., 436 F.2d 64, unlikely that Article 11 would confer on 68 (2d Cir. 1970). Even though the District newspapers the very right that Article 14 has Court heard live testimony from experts from denied them. Moreover, Article 11 has an both sides, that Court's opportunity to assess entirely reasonable scope if confined, as its the witness's demeanor provides no basis caption suggests, to defining the "Copyright for a reviewing court to defer to the trier's of Compilers of Collections and Other ruling on [**33] the content of foreign law. In Works." That article accords compilers cases of this sort, it is not the credibility of copyright "in the selection and arrangement the experts that is at issue, it is the of subject matter that he has made insofar persuasive force of the opinions they as that selection or arrangement is the result expressed. See Curley v. AMR Corp., 153 of a creative effort of compilation." Russian F.3d 5, 1998 U.S. App. LEXIS 17485, 1998 WL 458509, at *6 (2d Cir. 1998) ("Appellate Copyright Law, Art. 11(1). Article 11(2) courts, as well as trial courts, may find and accords publishers of compilations the right apply foreign law."). to exploit such works, including the right to insist on having its name mentioned, while Under Article 14 of the Russian Copyright expressly reserving to "authors of the works Law, Itar-Tass is the owner of the copyright included" in compilations the "exclusive interests in the articles written by its rights to exploit their works independently of employees. However, Article 14(4) excludes the publication of the whole work." Id. Art. newspapers from the Russian version of the 11(2). As the defendants' experts testified, work-for-hire doctrine. The newspaper Article 11 lets authors of newspaper articles plaintiffs, therefore, must locate their sue for infringement of their rights in the text ownership rights, if any, in some other of their articles, and lets [**35] newspaper source of law. They rely on Article 11. The publishers sue for wholesale copying of all of District Court upheld their position, the newspaper or for copying any portions of apparently recognizing in the newspaper the newspaper that embody their selection, publishers "exclusive" rights to the articles, arrangement, and presentation of articles even though, by virtue of Article 11(2), the (including headlines) -- copying that infringes reporters also retained "exclusive" rights to their ownership interest in the compilation. these articles. Having considered all of the views presented by the expert witnesses, we entirely unwarranted significance from the Newcity's contrary interpretation, shift of the phrase "as a whole" from the first according publishers (and reporters) to the second paragraph of Article 11(2). exclusive rights to the text of articles, draws One would not expect drafters of the revised

-13- Article 11(2) to accomplish a major affecting free press issues, and explicitly broadening of the rights of newspaper preclude it from adjudicating issues arising publishers simply by shifting the placement under copyright law. Moreover, the opinion of this phrase. Moreover, the drafter of the that the Chamber rendered does not revision testified that the shift was a matter necessarily [**37] support the plaintiffs' of grammar, and not of any substance. position. In asserting that a newspaper may Furthermore, Newcity's interpretation rests petition for redress "in defense of its rights," on the untenable premise that both the the Chamber might have meant only that a publisher of a newspaper and the author of newspaper can protect its limited compilation an article have exclusive rights to the same rights in the selection and arrangement of article. Under his interpretation, as he articles even when only a small number of acknowledged, the publisher could grant a articles are copied. The opinion of the license to a third party to publish an article, Chamber does not state that the newspaper the "exclusive" rights to which are held by has a protectable copyright interest in the the author. That unlikely [**36] result [*93] text of each article. n14 cannot be accepted in the absence of clear statutory language authorizing it. n13 n14 Also unpersuasive in the opinion of an arbitration court of the n13 Newcity sought to analogize Altai Region of Russia, Closed Stock the exclusive rights that he believed Company Komsomolskaya Pravda v. were held by both the newspaper and Limited Liability Company RIA Nasha the author to the rights held jointly by Pressa, Case # 235/98-10 (City of co-authors. Russian copyright law, Barnaul, Russian Federation, Feb. 25, however, like similar provisions 1998), which awarded damages to a elsewhere, recognizes jointly held newspaper for another publication's rights in "a work that is the product of reprinting of two articles from the the joint creative work of two or more newspaper. The opinion of the persons." Russian Copyright Law, Art. arbitration court (furnished to us by the 10(1). In the absence of either joint appellees) deems exclusive rights in authorship or contractual the articles to be owned by the arrangements, it would be most newspaper by virtue of Article 14(2) of unusual to have exclusive rights held the Russian Copyright Law, ignoring by anyone other than the author. the provision of Article 14(4), which renders Article 14(2) inapplicable to

newspapers.

The opinion of the Informational Disputes [**38] Chamber is not a sufficient basis for upholding the plaintiffs' interpretation. As the defendants' experts pointed out, the bylaws of that body confine its authority to matters Nor can the District Court's conclusion be copying of newspapers will ensue unless supported by its observation that extensive newspapers are permitted to secure redress

-14- for the copying of individual articles. In the consider what relief the newspapers might first place, copying of articles may always be be entitled to by reason of Kurier's copying prevented at the behest of the authors of the of the newspapers' creative efforts in the articles or their assignees. Second, the selection, arrangement, or display of the newspapers may well be entitled to prevent articles. Since Kurier's photocopying copying of the protectable elements of their reproduced not only the text of articles but compilations. Lastly, even if authors lack also headlines and graphic materials as they sufficient economic incentive to bring originally appeared in the plaintiffs' individual suits, as the District Court publication, it is likely that on remand the apprehended, Russian copyright law newspaper plaintiffs will [**40] be able to authorizes the creation of organizations "for obtain some form of injunctive relief and the collective administration of the economic some damages. On these infringement rights of authors ... in cases where the issues, as we have indicated, United States individual exercise thereof is hampered by law will apply. difficulties of a practical nature." Russian Copyright Law, Art. 44(1). Indeed, UJR, the reporters' organization, may well be able in n15 Though the complaint does not this litigation to protect the rights of the precisely plead infringement of reporters whose articles were copied by compilation rights, it does allege that Kurier. the newspapers have rights "in the newspapers," Complaint P 22, and that Relief. Our disagreement with the District the defendants have copied Court's interpretation of Article 11 does not "numerous items of Plaintiffs' Subject mean, however, that the defendants may Works," id. P 28. Moreover, when, continue copying with impunity. In the first during the trial, counsel for the place, Itar-Tass, [**39] as a press agency, defendants objected to a question is within the scope of Article 14, and, unlike concerning the "appearance" of some the excluded newspapers, enjoys the benefit copied text on the ground that "there is of the Russian version of the work-for-hire no allegation[] in this case about the doctrine. Itar-Tass is therefore entitled to creative appearance being infringed," injunctive relief to prevent unauthorized counsel for the plaintiffs replied, "That copying of its articles and to damages for is, indeed, one of our central such copying, and the judgment is affirmed arguments." as to this plaintiff.

Furthermore, the newspaper plaintiffs, Moreover, though the parties do not though not entitled to relief for the copying of raise the issue, we may assume that the text of the articles they published, may the authors of the articles, by well be entitled to injunctive relief and submitting them to their newspaper damages if they can show that Kurier publishers, gave the publishers an infringed the publishers' ownership interests implied license to use the articles in in the newspaper compilations. n15 Because the newspaper compilations. That non- the District [*94] Court upheld the exclusive license, of course, does not newspapers' right to relief for copying the entitle the publishers to sue in the text of the articles, it had no occasion to

-15- United States for infringement of the articles as such. [**41] some form of notice (perhaps at the Finally, there remains for consideration defendants' expense) that is calculated to what relief, if any, might be awarded to UJR, alert the authors of the infringed articles to acting on behalf of any of its members their right to intervene in this lawsuit. Such whose articles have been copied. In its notice might, for example, be addressed opinion granting the newspapers a generally to the group of reporters currently preliminary injunction, the District Court employed at each of the plaintiff noted that the plaintiffs had not "established newspapers. the union's organizational standing to sue to enforce the rights of its members," an issue In view of the reckless conduct of the the Court expected would be considered defendants in the flagrant copying that later in the lawsuit. See Itar-Tass I, 886 F. infringed the rights of Itar-Tass, the rights of Supp. at 1122 n.2. In its ruling on the merits, the authors, and very likely some aspects of the District Court ruled that the UJR had the limited protectable rights of the standing to sue on behalf of its members. newspapers, we will leave the injunction in See Itar-Tass II, 1997 WL 109481, at *11. force until such time as the District Court has However, the Court noted that UJR sought had an opportunity, on remand, to [**43] only injunctive relief and then ruled that since modify the injunction consistent with this UJR declined to furnish a list of its members, opinion and with such further rulings as the the Court was unable to frame an injunction District Court may make in light of this that would be narrowly tailored and sufficient opinion. n16 to give the defendants notice of its scope. See id. n16 Upon remand, the District In view of our conclusion that the Court will also have to consider, if the newspaper plaintiffs may not secure relief for claim is pursued, what relief might be the copying of the text of any articles as accorded to plaintiff-appellee Heslin such, it will now become appropriate for the Trading Ltd., the publisher of Balagan, District Court on remand to revisit the issue a Russian language comic magazine of whether relief might [**42] be fashioned in published monthly in Israel. What favor of UJR on behalf of the authors. ownership interests Heslin might have, Despite UJR's unwillingness to disclose its under Israeli law, that have been entire membership list, it might be possible infringed, under United States law, by to frame some form of injunctive relief that Kurier's copying was not explicitly affords protection for those author-members considered by the District Court. that UJR is willing to identify. And UJR should now be given an opportunity to amend its prayer for relief to state whatever Conclusion claim it might have to collect damages for the benefit of its member-authors whose rights have been infringed. Finally, the Accordingly, we affirm the judgment to the District Court should consider the extent that it granted relief to Itar-Tass, we appropriateness and feasibility of giving reverse to the extent that the judgment

-16- granted relief to the other plaintiffs, and we Itar-Tass Russian News Agency v. remand for further proceedings. n17 No Russian Kurier, Inc., 140 F.3d 442 (2d costs. Cir. 1998). We deny the motion to intervene, without prejudice to renewal in the District Court on remand. n17 While this appeal was pending, we received a motion from Al J. Daniel, Jr., seeking to intervene in support of [**44] the judgment in order to protect the value of a charging lien he asserts as former counsel for the plaintiffs. See

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