22nd Example of How Canadian Copyright Law is Stronger than US - and Another Possible US Treaty Violation

I can add a new 22nd example to my list of 21 ways in which Canadian copyright law is stroner than that of the USA.

James A. Trigg and Joseph Petersen at Kilpatrick, Stockton have written about a recent decision of a US Federal Court Judge William Pauley III in the highly regarded Southern District of New York Federal Court. The decision in Elsevier B.V. v. UnitedHealth Group, Inc., No, 9 Civ. 2124 (S.D.N.Y. January, 14, 2010) is here.

This decision confirms that, pursuant to 17 USC §412, there can be no recovery of statutory damages or attorney's fees for infringed foreign copyrights unless there has been timely registration in the US Copyright Office. That's no different than for U.S. Copyrights. But one might have thought that the USA would not impose formalities on foreigners, because the Berne Convention prohibits this. The Judge ruled that the Berne Convention didn't help here because it is not self executing.

None of this is surprising or even new. And the result treats foreigners no worse in this respect than owners of American copyright.

If this seems like déja vu all over again, it is - because there was an important similar ruling in the YouTube litigaiton by another SDNY judge, Louis Stanton, last year which I blogged about here.

But it highlights an area in which US law is MUCH weaker than Canadian law. Canada has statutory damages and has a registration system. But there is no sine qua non of prior registration in order to be eligible for statutory damages. There are significant advantages to timely registration in Canada in terms of proving the ownership and subsistence of copyright and entitlement to damages when the defendant proves that, at the date of the infringement, the defendant was not aware and had no reasonable ground for suspecting that copyright subsisted in the work or other subject-matter in question.bBut there is nothing resembling the harsh disadvantage of failure to register in the USA.

On a policy and political level, this shows once again the “do as we say, not as we do” approach of the USA when it preaches that other countries don't provide "adequate and effective" enforcement. On this issue, Canada once again comes out way ahead.

The even more interesting question is whether there is a Berne Treaty violation here - in terms of the imposition of mandatory formalities (i.e. registration) in order to achieve “adequate and effective” protection, as the Americans like to call it.

Article 5(2) of the Berne Convention provides that:

The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.

The decision provides a short but very discussion of the legislative history of §412 and the discussion of the Berne Convention. The U.S. Senate chose NOT to amend the section in order to relieve foreigners of these formality requirements because it concluded that this was not necessary. Elsivier argued that this decision by the Senate was wrong and that §412 conflicts with Article 5(2) of Berne. But the Judge did not rule on that argument, given his ruling that the Berne Convention is not self-executing and that it therefore doesn't apply.

It should be noted that USA registration, while not rocket science, can be far more difficult and expensive in terms of legal fees than Canadian registration. One has to choose the right form (not always obvious) and there is examination involved. The process is slow and the outcome is not always assured, given that the examination process is quite serious. In contrast, the Canadian system is much simpler and there is no examination. Indeed, one can't even deposit the work.

Let's see if anyone in another country is sufficiently riled about this to bring a WTO complaint, as was done successfully against the USA in the notorious §110 case about the exemption for performances in countless small establishments such as bars, restaurants and stores.