USDC D. Delaware, October 6, 2009

Click here for a copy of the full decision.

  • District court, addressing what it determined to be an issue of first impression, holds that posting a work created outside the U.S. on a website outside the U.S. by a foreign national does not constitute publishing the work simultaneously in the U.S., and therefore plaintiff did not need to register his photographs before filing suit for infringement in a U.S. court.

Plaintiff is a professional photographer and a citizen of Sweden who enlisted a German art gallery to sell his photographs by posting them on the gallery’s web site. This was the first time the works had been “published”. Plaintiff sued the defendants, two French individuals and a U.S. company, alleging they copied his photographs from the art gallery’s website without permission and made them available on their own website.

Defendants moved to dismiss for lack of subject matter jurisdiction, arguing that plaintiff’s photographs, which were not registered for copyright protection in the U.S., were “United States works” as defined under the Copyright Act, and, because they were not registered, the court lacked subject matter jurisdiction because a plaintiff must register a U.S. work before filing an action for infringement in a U.S. court.

The Copyright Act provides, in part, that a work is a “United States work” if it is published simultaneously in the United States and another Berne Convention treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the U.S. 17 U.S.C. § 101.

Defendants asserted that posting the photographs on the Internet constituted “publishing” the works simultaneously everywhere, including in the U.S. and other Berne Convention countries.

The court rejected defendants’ arguments and denied their motion to dismiss. The court held that adopting defendants’ position would be contrary to the Berne Convention, of which the United States is a member. According to the court, if the publishing of plaintiff’s photographs on the German website simultaneously caused them to be published in the United States, and such publication transformed the work into a United States work, plaintiff would be subjected to the very formalities that the Berne Convention eschews. “To hold otherwise would require an artist to survey all the copyright laws throughout the world, determine what requirements exist as preconditions to suits in those countries should one of its citizens infringe on the artist’s rights, and comply with those formalities, all prior to posting any copyrighted image on the Internet. The Berne Convention was formed, in part, to prevent exactly this result.”

The court also held that to adopt defendants’ position would allow Americans to infringe foreign works with impunity and would be contrary to U.S. copyright law which specifically provides protection to foreign works without registration. The court also denied defendants’ motion to dismiss for lack of personal jurisdiction, finding that defendants’ website is in English, allows customers to pay using U.S. dollars, and has a website address ending in .us, all of which show that defendants’ website targeted U.S. citizens.