In an unpublished decision, the Court of Appeals for the Ninth Circuit held that the expired U.S. copyright in the board game “Strategy” is not eligible for restoration based on its Canadian copyright under § 104A of the Copyright Act (17 U.S.C. §104A). . Estate of Gunter S. Elkan v. Hasbro, Case No. 06-35027, 2007 WL 24261 (9th Cir., Dec. 5, 2007) (per curiam).

Section 104A was incorporated into the Copyright Act in accordance with the “Uruguay Round Agreements Act.” Effective January 1, 1996, § 104A restored copyright in certain foreign works that were then in the public domain in the United States but were protected by copyright in their source country. By allowing such restoration, the United States rendered itself compliant with the retroactivity requirements of the Berne Convention for the Protection of Literary and Artistic Works. To be eligible for restoration under § 104A, a work must have its origin outside of the United States and must not have been published in the United States during the 30-day period following publication in the source country.

Gunter S. Elkan, a Canadian citizen, copyrighted the board game “Strategy” in both the United States and Canada. His U.S. copyright expired in 1976, but his Canadian copyright continued. The Estate of Gunter Elkan sued Hasbro and its subsidiary Milton Bradley alleging that the defendants’ board game “Stratego” infringed the copyright in “Strategy.” After the district court granted Hasbro’s motion for summary judgment, the plaintiff appealed.

On appeal, the plaintiff did not dispute that Elkan’s U.S. copyright for “Strategy” expired in 1976, at which time the game passed into the public domain. However, the plaintiff argued that Elkan’s Canadian copyright provides independent protection under the Copyright Act and restored the U.S. copyright under § 104A. In rejecting the plaintiff’s argument, the Ninth Circuit made two observations. First, Elkan’s rights to “Strategy” were already protected (not just eligible for protection as required by the Act) in the United States when he obtained a U.S. copyright, and his Canadian copyright cannot expand such rights beyond those provided by the U.S. copyright. Second, in order for a foreign copyright to restore an expired U.S. copyright, the work must have been published first in the foreign country and “not published in the United States during the 30-day period following publication in such eligible country.” Because the Canadian copyright and U.S. copyright each lists the initial publication date for “Strategy” in its respective country on the same date, the Court ruled that those publication dates preclude restoration of the U.S. copyright under § 104A.