In a class action led by the Football Association Premier League (FAPL) and U.S. music publishers Bourne against YouTube and its owners Google (The FAPL v YouTube Inc. (US District Court Southern District of New York)) filed on 4 May 2007, a U.S. District Court judge held that, because the FAPL did not register its broadcasts of Premier League matches with the US Copyright Office, it cannot claim statutory damages under the US Copyright Act against YouTube in respect of allegedly copyright infringing material uploaded by users to the video sharing site. The only circumstances in which a claim would have been possible are that, only in relation to live broadcasts, the FAPL gave YouTube 48 hours notice of potential infringement.

STATUTORY DAMAGES

Section 412 of the U.S. Copyright Act prohibits recovery of statutory damages for any work unless the work has been registered before the infringement commenced or within three months of first publication. The FAPL did not register its work. According to YouTube, the FAPL was not therefore entitled to claim statutory damages as its broadcasts were unregistered foreign works. The FAPL’s response was that they were entitled to seek statutory damages because all foreign works, as a matter of law, are exempt from any registration requirements under the Act.

U.S. District Judge Louis L Stanton rejected the FAPL’s contention and found that section 412 had no exception excusing foreign works from its mandate. It required registration to obtain statutory damages for both domestic and foreign work.

LIVE BROADCAST EXEMPTION

Under Section 411(c) of the Act there is a “live broadcast” exemption. Under this, the copyright owner of a foreign work consisting of sounds, images, or both, the first fixation of which is made simultaneously with the transmission, may obtain statutory damages without registering the work if the copyright owner serves an “Advance Notice of Potential Infringement” on the prospective infringer at least 48 hours before the work is transmitted. Among other things, the Advance Notice must identify clearly each work at issue by title, as well as the date, specific time and expected duration of the intended first transmission of each work, the source of the intended first transmission and the copyright owner of each work. It must also include a description of the relevant activities of the potential infringer which would, if carried out, result in an infringement of the copyright.

The FAPL’s evidence showed that it had sent more than 344 Advance Notices by email no less than 48 hours in advance of the live broadcasts of Premier League matches. Statutory damages of up to U.S.$150,000 for each infringement under the Act will be available to the FAPL for infringements of such live broadcasts if liability is established ultimately. Where infringement relates to broadcasts not covered by Advance Notices, damages would be limited to actual loss.

COMMENT

The implications for non-U.S. copyright owners is that they must ensure that either they register the copyright in their works in the U.S. within three months of publication, or, where the work is a live broadcast, that a timely and well drafted “Advance Notice of Potential Infringement” is sent. Failure to do this will limit the range of remedies available to the copyright owners should they need to enforce their rights in the United States.