USDC S.D. New York, October 4, 2008
In April, 2008, the district court issued an Opinion and Order granting plaintiffs’ motion for partial summary judgment, holding that plaintiffs hold a valid U.S. copyright in a jewelry design based on the long-held French copyright. Defendants moved for reconsideration, asserting that the parallel U.S. copyright in the work was abandoned based on a failure to abide by statutory formalities in the Copyright Act of 1909 and had not been “restored” under the Uruguay Round Agreements Act (URAA, codified in § 104A of the Copyright Act, 17 U.S.C. § 104A). In this October 4 decision, the court granted defendants’ motion for reconsideration but adhered to the result reached in its original decision in the April 18 Opinion and Order.
Under Second Circuit law, international copyrights are subject to a bifurcated choice of law analysis. When determining the initial owner of a copyright, a court must look to the law of the country in which the work originated. According to the court, the scope of the rights that attend copyright ownership is determined by the country in which the copyright is to be enforced. (This is also known as the “national treatment” principle.) The court explained that “[o]ngoing copyright ownership and the attendant question of copyright abandonment are questions of scope rather than initial ownership, and they are therefore determined according to the law of the country of enforcement.” The court admitted in a footnote that it overlooked this dichotomy and looked to the law of France to analyze both initial and continuing ownership, but that the change in its analysis does not alter the court’s decision concerning present ownership.
In 1994, Congress passed the URAA, in which the United States agreed to restore copyright registrations for works of foreign origin that were in the public domain in the United States for failure to comply with the formalities required under the U.S. copyright laws. Under the 1909 Copyright Act, which remained the core of U.S. copyright law until 1978, works published in the United States were required to adhere to certain formalities, including affixation of a copyright notice; publication without the requisite notice constituted abandonment of the copyright into the public domain.
In order for the URAA to have restored a U.S. copyright at the time the Act became effective, the work must have met four statutory requirements: (1) the work was not in the public domain of its source country through expiration of its copyright terms; (2) the work was in the public domain in the United States because of noncompliance with statutory formalities; (3) the work had at least one author who was a national or domiciliary of an eligible country; and (4) the work was first published in an eligible country and was not published in the United States within thirty days of first publication.
Eligible countries included member-states of the World Trade Organization. If a work met all of these criteria on January 1, 1996, copyright was automatically restored on that date without further action. The URAA requires the holder of a restored copyright to file a notice of intent to enforce its rights with the U.S. Copyright Office or directly with an infringer in order to enforce its rights against a “reliance party.” A reliance party is one who was legitimately exploiting works in reliance on their public domain status prior to restoration. If an infringer was not a reliance party at the time of restoration, a restored copyright may be enforced in the same manner as a copyright that never entered the public domain.
The court reasoned that, even assuming that the initial copyright was abandoned due to a failure to abide by formalities required in 1968 when Van Cleef first published the design, Van Cleef’s U.S. copyright in the design would have been automatically restored by the URAA. Van Cleef holds a valid copyright in France, the source country of the work. The only reason why the work would have fallen into the public domain would be a failure to abide by statutory formalities (e.g., publication with proper copyright notice). The author of the Design was the Societe de Lapidaires et Professionnels de la Recherche Artistique – a France-based subsidiary of Van Cleef & Arpels – and France is a member-state of the World Trade Organization. Finally, the work was first published in France and was manufactured and sold in the French market before its export to the United States. “The fact that Van Cleef did not file a notice of intent concerning restoration does not alter the legal inevitability of restoration.” The court also held that plaintiffs were entitled to enforce the full panoply of remedies available to a U.S. copyright owner against defendants because defendants never asserted that they were a “reliance party” under § 104A.