Prepared by Jon Garon presented at the World Intellectual Property Organization (WIPO) Workshop on International Intellectual Property in cooperation with United Nations Institute for Training and Research (UNITAR)
August 27, 2001
Copyright provides one of the earliest of modern legal doctrines protecting the intellectual endeavor. In 1710, England adopted the Statute of Anne which was designed both to create some legal property rights in authorship and to reduce the prior monopolies held by the printers, who had exclusive rights to print. Among the significant terms of the Statute of Anne were limits regarding the scope of protection to English language printing, a term of 14 years, that was renewable if author is living; the power to fine and destroy infringing works; and the reserved power to limit the price of a seller's books (recognizing the monopoly power granted by the Statute). By the end of the century copyright protection was extended in both France (1791 and 1793) and the United States (1790) immediately following great political change.
Copyright protection has extended virtually worldwide. In general, each country's law of copyright governs only its own territory. Copyright does not extend extraterritorially. As a result, throughout the Nineteenth Century, works created in one country could be reproduced without need for a license in other countries. The ease of export for copyrighted works created the need for greater international coordination. Not surprisingly, these arrangements started as bilateral agreements between close, neighboring states, but they grew broader in scope throughout the Nineteenth and Twentieth Centuries.
This process culminated with the adoption of the Berne Convention for the Protection of Literary and Artistic Works in 1886. The most important of the international copyright laws, the Berne Convention rests on two primary principles. First, each member state must provide national treatment for all authors. National treatment requires that any work originating in a Berne Union country be afforded the same treatment as that state provided for its own nationals. With only a few limited exceptions, national treatment guarantees equality of protection within each Berne Union country. Second, each Berne Union country must provide minimum rights regarding the protections. In this way, the Berne Convention serves as an international floor for the scope of copyright protections afforded throughout much of the world. There are presently 148 member states who are members of the Berne Union.
The application of the Berne Convention to domestic law varies. In some countries, it is self-executing, meaning that the text is treated as the law of the land, analogous to any other statute. In other jurisdictions, such as the United States, it has no direct effect on domestic law. Instead, the national laws must be modified to comply with the terms of the convention.
The United States was a latecomer to the Berne Convention and indeed to most of the international protection of copyright. The U.S. joined only as of March 1989. Prior to that it had been a member of the Universal Copyright Convention beginning in 1955, and had had limited bilateral cooperation with other countries as far back as 1891. Nonetheless, because of the importance of intellectual property in international trade today, copyright has taken center stage in much of the international trade policy in the U.S. and throughout the world.
In addition to the Berne Convention itself, there are a number of important related international treaties. These include the Trade Related Aspects of Intellectual Property Rights (The TRIPS Agreement), World Intellectual Property Organization Copyright Treaty (WCT), and the WIPO Performances and Phonograms Treaty (WPPT). Each is dealt with briefly below.
Copyright provides the author or creator of an original work of authorship the exclusive ownership of that work. Although variously defined, authorship generally incorporates literary and artistic works. The enumerated list of the U.S. Copyright act is representative:
(1) Literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.
The Berne Convention has a similar list of criteria that essentially covers the same broad range of categories, although drafted in a somewhat different manner:
The expression "literary and artistic works" shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.
In both categories, the list is broad and inclusive. Although neither specifically includes software, the U.S. and most countries extend copyright to software as well.
Copyright limits the scope of the ownership afforded to the author of the work. The law protects only the expression of the work, not ideas, procedures, processes, or facts. This protects the creativity of the expression but does not give any author a monopoly on the facts or ideas presented.
To be afforded copyright protection, an author must have created the work, meaning that the work is original to that author. There is no requirement that the work is novel or unique, merely that the work derives from the person who is the author. Similarly, there must be some creative spark, no matter how minor, that serves to set the work apart.
In a large number of countries, copyright protection is available only once the work is fixed in a tangible form. Technology has made the fixation requirement increasingly easy to accomplish, so that today, a written copy of a speech, sheet music, or videotape of an improvisational dance all will serve to fix the work.
Despite the growing ease of fixation, it remains a barrier to copyright protection for some works, such as unwritten speeches or improvisational theater. As a result the Berne Convention and many other countries do not require fixation as a prerequisite to copyright protection. In the U.S., federal law imposes the fixation requirement, but most U.S. states will afford limited copyright protection for unfixed works.
An author shall be afforded the protections of the Berne Convention if that author is a national of one of the Berne Union countries, or if the work is first published in a Berne Union country. This may be accomplished by simultaneously publishing a work in a Berne Union country, which means that such publication occur within 30 days of any other publication. In addition, authors who are not nationals of one of the countries of the Union but who have their habitual residence in one of them shall be treated as nationals of that country.
The exclusive property rights of the copyright owner fall into the following broad categories: (1) reproduction or copying; (2) translation, adaptation, modification, or the creation of derivative works; (3) distribution by sale, license or other transfer of ownership, or by rental, lease, or lending; (4) public performance; and (5) public display.
The exact scope of these exclusive rights may vary somewhat from country to country. For example, England provides for a lending right, which guarantees a minimal payment to the copyright holder when a work is transferred from the owner of the copy of the work to a new owner. In the U.S., once a particular copy has been transferred, the author has no additional economic rights in that particular copy of the work.
In addition to the economic rights, the Berne Convention provides that an author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation. In the U.S. these rights are extended by federal copyright law only to works of visual arts created in series of no more than 200 copies. Additional protections are afforded through the U.S. unfair competition laws which approximate the moral rights granted to Berne Union members. As provided in the Berne Convention, moral rights are neither assignable nor waiveable and remain fully enforceable by the author of the work, even if that person is no longer the copyright owner.
The copyright ownership initially vests in the author of the work. If the country has a fixation requirement, the copyright will vest upon fixation.
In the U.S., one significant exception to that rule is the "work-for-hire" doctrine, under which, works in two categories are owned by the employer or the party that contracted for the work to be created. The first category is covers Works Made for Hire for Specially Commissioned Works. Under U.S. law, an independent contractor or other non-employee may assign the authorship in a work so long as two conditions are met. First, there must be a signed agreement among the parties that provides the work is to be considered a work made for hire. No oral understanding or course of conduct between the parties will be sufficient. It must be in writing. Second, the work must fall into one of nine categories set forth in the statute: (1) a contribution to a collective work, (2) a motion picture or other audiovisual work, (3) a translation, (4) a supplementary work, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test, and (9) an atlas. Such a signed, written agreement will vest the copyright ownership in the purchaser, eliminating any claim of ownership by the actual author of the work.
The second category is covers Works Made for Hire during the Employer-Employee Relationship. As a separate basis for transferring authorship to an employer, copyright law provides that works prepared by an employee within the scope of his or her employment are the copyrighted work of the employer rather than the employee. To meet this test, there are also two criteria. First, the person must be an employee, which typically means paid a salary, with proper tax withholding and employment benefits. For more difficult cases, there are a list of factors that have been identified by the U.S. Supreme Court. Second, the materials must have been prepared in the scope of the person's general duties as an employee. The authorship for works made by an employee within the scope of his or her employment vest in the employer rather than the employee.
The Berne Convention sets as the minimum protection for most works the life of the author, plus an additional 50 years. Increasingly, however, the European Union and many other countries have extended the term of copyright for the life of the author plus 70 years.
If the work is made as a work for hire, and then the term is 95 years from publication or 120 years from creation, whichever is less. In the U.S., this is also the term provided for anonymous and pseudonymous works, but this term varies significantly from country to country.
The Berne Convention prohibits the member country from requiring any formalities as a prerequisite to receiving copyright protection. Nonetheless, there remain a few general formalities that are often encouraged by member countries, although they do not bar copyright protection. In some situations, the copyright holder is given additional remedies from infringement. In addition, registration can also serve as prima facie evidence of the information contained in the registration form, which can be helpful in any legal disputes relating to the use or ownership of the copyright.
The first requirement is notice that the work is protected by copyright, which typically includes the copyright symbol "©" or the word or abbreviation for copyright along with the year of publication and the name of the copyright holder. This should be featured prominently in a place a reader would expect to look, such as the title page of a book.
The second formality is registration, which often requires payment of a filing fee and submission of a copy of the work the country's copyright office. In the U.S., for example, while registration is no longer required, it does provide some benefits if a legal dispute ever erupts regarding the work, including prima facie evidence of the facts in the copyright application and statutory damages and attorneys fees if filed in a timely fashion.
The U.S. also requires that the author provide the Library of Congress two copies of the best edition of every published work made in the United States. This deposit, however, is generally made as part of the registration process. In the situation where a copyright holder of a published work elects not to register the work, he or she is still obligated to submit the copies to the Library of Congress. If the copyright owner refuses to send the copies after receiving a demand letter, then the copyright office can levy substantial fines.
Copyright is often described as a "bundle of rights" that can be separated into any number of exclusive and non-exclusive transfers. Exclusive rights can be granted for period of time, for a geographic location, or for a particular use. In most countries, the transfer of rights is accomplished either by a license of some portion of the copyright holder's interest or an assignment of the copyright holder's entire interest. In some countries, however, an assignment of copyright is not permitted. Even in these countries, a license of the copyright holder's interest remains valid, even if the license encompasses virtually all the copyright holder's interest. As a result, the practical effect puts the licensee in the same position as if it were an assignee of the copyright.
Formalities may also apply to transfers of copyright. Under U.S. law, for example, for the transfer to be exclusive, it must be in writing. This is best done with a signed contract, but a series of letters may suffice. Non-exclusive grants need not be in writing and may be either oral or implied from conduct - such as providing copies for use. An oral promise to transfer copyright exclusively cannot be enforced, but the courts will generally allow at least a non-exclusive use. Similarly, absent any understanding between a school and the owner of course materials or a website, a history or allowing the materials to be reprinted or used in other ways can create an implied non-exclusive license.
When first developed, copyright typically extended only to books and maps and fine arts. The expansion of copyright to broadcasters, performers, and sound recordings has evolved slowly in the past century. As a result, the protection for these rights are sometimes incorporated into the copyright laws of a country, but are sometimes treated as rights related to copyright. In those countries that do not incorporate these art forms directly into their copyright law, there may be shorter duration for protection than under traditional copyright laws.
Typically, the related rights focus on the rights of (1) performing artists such as actors and musicians in their performances, (2) producers of sound recordings, and (3) broadcasting organizations in the broadcast of their programming. In each of these three areas, unique issues require at least a grant of minimal protection from unauthorized exploitation.
For performing artists such as actors and musicians, the neighboring rights provide a minimal protection that a person's performance cannot be fixed, broadcast or sold without the performer's permission. This right is particularly important where the culture relies heavily on an oral tradition, recognizing the moral and economic interest of the performer in the activity.
For the producers of sound recordings, the neighboring rights recognize the interest in the phonogram (or CD, cassette tape, or other technological format) that embeds a musical composition. The author of the musical composition is often not the author of the phonogram, but sufficient artistry and economic interests are embodied in the creation of the phonogram that it is separately protected work. This has become particularly important because the phonogram has seen the greatest technological change and stands on the forefront of much of the anti-piracy protection today.
For the broadcast organizations, protection of the broadcast signal requires controls over international rebroadcast of the signal by satellite to jurisdictions around the globe. Protection of the interest of the broadcasters in the control of their transmission serves to protect the interest of the industry and the national interest in regularizing the global telecommunications among countries.
These principles have been made the subject of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, the Rome Convention of October 26, 1961. Under the Rome Convention, the parties are granted the protections of national treatment, and protections in each of the three performance rights identified by the neighboring rights. Many of these same protections have been expanded under the Trade Related Aspects of Intellectual Property Rights (The TRIPS Agreement).
Many of the same topics covered by the Rome Agreement have been the subject of expanded protection through a series of additional international agreements. In particular, the areas of sound recordings and broadcast require increasing protection and enforcement authority because of the constant advances in technology and the dangers of copyright infringement.
In 1994, significant advances were made in the international protection of copyrighted works with the TRIPS Agreement, which expanded the protection for copyright holders or holders of neighboring rights. The TRIPS Agreement extended the obligations to all members of the World Trade Organization (WTO), rather than just the signatories to the TRIPS Agreement itself. The TRIPS Agreement required all WTO members to protect all recordings released within the past fifty years. In addition, the TRIPS Agreement provided the phonogram copyright holder the ability to control rental of their recordings. The TRIPS Agreement also clarified and expanded the subject matter of copyright protection to specifically include computer programs, compilations of data, cinematographic works, and sound recordings.
The TRIPS Agreement also supplemented and expanded the Rome Convention by extending the protection of neighboring rights to all WTO members and by increasing the term of protection for sound recordings from 20 to 50 years.
It furthered the goal of protecting copyright holders from piracy of the works by requiring that members of the WTO to ensure that effective enforcement procedures are available. Similarly, the TRIPS Agreement includes provisions requiring action by customs authorities against suspected counterfeit or pirated goods.
Finally, the TRIPS Agreement also establishes that countries can bring an action against other countries for infringement of these rights through the World Trade Organization. While the WTO can't change a country's laws, it can impose tariffs as penalties if a country is found to be in violation of TRIPS.
After the adoption of the TRIPS Agreement, work continued to address issues not yet resolved through the TRIPS Agreement. This process culminated with the WIPO Diplomatic Conference on Certain Copyright and Neighboring Rights Questions took place in Geneva from December 2 to 20, 1996. The Diplomatic Conference adopted two treaties, the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).
The WCT expands the protection of the TRIPS Agreement by it granting copyright owners the exclusive right of distribution of the physical copies of their work. It also reflects the growing importance of the Internet by treating on-demand communication of works to individuals as public performances. Finally, like the TRIPS Agreement, it sets requirements concerning technological measures intended to safeguard copyright through rights management protection that may be digitally embedded within the music, software, and/or hardware. Rights management information identifies the work, the author, the owner of any right of the work, the conditions of use, and any data that represent this information.
Increasingly protection of the copyrighted work is tied to the digital transmission or reproduction of the work. Countries must prohibit the circumvention of technological measures used by copyright holders to protect their works. Similarly, the must provide adequate and effective legal remedies against persons who remove or alter electronic rights management information without authority, or knowingly distributes works that have been stripped of the electronic rights management without authority.
The WPPT expressly granted that producers of phonograms would have the exclusive right of direct or indirect reproduction of their works, in any form. This expanded the control over the neighboring rights first protected by international convention in the Rome Convention. It gave producers and performers the exclusive right to authorize on-demand transmissions, providing an excellent platform for international e-commerce. Finally, the WPPT provided limited rights to both producers and performers regarding remuneration for broadcasting or any communication to the public of their work As a result, the international sound recording industry has moved to the forefront of legal protection and international treaty in copyright.
Copyright claims are enforced in the country where the unauthorized activity or infringement actually took place. Because copyright does not apply extraterritorially, a copyright holder cannot sue in his or her home country for infringements that take place in another country.
Typically, the copyright holder must establish that he or she is the valid owner of the copyright. The copyright holder must also establish that the defendant in the lawsuit copied or otherwise violated one of the exclusive rights reserved to the copyright holder. Typically this is shown by establishing the access the defendant had to the work and the similarity between the two works.
A court can order the seizure and destruction of infringing copies of a work. Depending on the country, fines may be levied, the profits made by the infringement may be paid to the copyright holder, or the damages sustained by the copyright holder may be paid by the infringer.
In addition, criminal charges may be brought in many countries by the appropriate government prosecutors. Criminal suits generally follow the country's laws regarding criminal procedure and process.
Since the middle of the Nineteenth century, copyright owners have recognized that individual lawsuits are economically inefficient to stop copyright infringement. A composer simply cannot spend $1,000 to collect $10.00 in copyright royalties. Instead, composers recognized that the only method of effective collection and compensation would be through organized societies that collect royalties on behalf of their members.
The performing rights societies typically license their library of music to performance halls, broadcasters and similar venues. The licensee pays a fee for the right to publicly perform the music to the performing rights society. Organizations generally operate nationally or regionally, including ASCAP (American Society of Composers, Authors, and Publishers), SACEM (Societe Des Auteurs Compositeurs Et Editeurs De Musique) and SIAE (Societa Italiana Degli Autori Ed Editori), to name a few. The revenue received from the sale of licenses is then divided among the members based on the internal formula adopted by the organization. These payments are generally tied to the proportion of public performance attributed to each author in any given period.
With the growth of the Internet, performing rights societies have taken on increasing importance as a method of protecting the rights of holders of various copyright interests. Depending on the country, the rights to publicly perform a song may now require the authorization of the composer, the phonogram copyright holder, and the performers on the recording. Through the use of performing rights societies, these authorizations can be coordinated and payments made.
With few exceptions, copyright does not have a perpetual duration. Instead copyright holders exclusive rights to works eventually expire and those works become freely available to the public. Once a work has ceased to be protected by copyright it is considered to be in the public domain and free for any party to use in any manner.
A person may take a public domain work and modify, translate or adapt that work into something new. The author of this new work receives copyright protection for the new creation, but does not receive any ownership or protection of the source work that has fallen into the public domain. In this way, many different authors can create works based on popular works that have fallen into the public domain.
The Berne Convention and most laws limit the exclusive rights of the copyright holder at least to the extent necessary to allow for some general criticism, comment, news reporting, scholarship, or research. This protects the public's need to comment on a work, to quote portions in other critical works, and to build upon the works that have gone before. The laws protecting unauthorized use of a work for comment or criticism vary considerably from country to country, but virtually all recognize that the absolute ownership of copyright must be tempered to some degree with the need for public discourse.
At its heart, copyright protects the creations of the mind - the literature, art, music, and content that an individual creates. These works serve as the economic and cultural heart for every country in the world. The protection of these works and the promotion of the unique voice of each author and nation has gained increased importance in the world economy as these works take priority in international trade.
Through international agreements such as the Berne Convention, the TRIPS Agreement and other WTO understandings, the common basis for copyright protection has grown dramatically over the past twenty years. Although there continues to be much work to be done to include all nations, the expansion and growth of copyright protection and international harmony is unparalleled. As a result, copyright will serve as the basis for much of the international trade in the years to come.
Professor of Law, Franklin Pierce Law Center and of counsel, Gallagher, Callahan & Gartrell. Additional materials by Professor Garon are available at http://www.gcglaw.com or http://ipmall.fplc.edu/pubs/
These materials are presented with the understanding that, due to the rapidly changing nature of the law, information contained in this publication and the presentation may become outdated. As a result, any individual using these materials and information presented must always research original sources of authority and update information to ensure accuracy when dealing with a specific client or firm matter. In no event will the author be liable for any direct, indirect or consequential damages resulting from the use of these materials.