YouTube and its parent Google face copyright infringement lawsuits on a number of fronts, including by the English Football Association Premier League. But even if the Premier League were to prevail on its claim that YouTube video clips of its soccer matches infringe its copyrights, there is one class of damages for which YouTube will not be liable, namely, statutory damages. Football Ass’n Premier League Ltd. v. YouTube, Inc., 2009 WL 1939812 (S.D.N.Y. July 3, 2009).

Judge Louis Stanton held that, “Section 412 [of the Copyright Act] has no exception excusing foreign works from its mandate it requires [timely] registration to obtain statutory damages for both domestic and foreign works,” with the exception of works that fall under the Act’s “live broadcast exemption.” Judge Stanton spurned the Premier League’s argument that, consistent with the Berne Convention’s rejection of formalities, the registration requirements in § 412 should not be applied to bar recovery of statutory damages for foreign works.

The court noted that whereas § 411(a) (which makes registration a prerequisite to suit) is expressly limited to United States works, § 412 contains no such limitation. The court also relied on an express statement in the Copyright Act’s legislative history that § 412 “would be applicable to works of foreign and domestic origin alike” in ruling that there is no exception to the registration requirement for foreign works. Ultimately, the court held (consistent with a line of earlier cases) that Berne and other treaties that the Premier League tried to rely on were not self-executing and thus the Copyright Act would have to be amended to exclude foreign works from § 412’s registration’s requirements. Separately, the court also held that there was no exception to the well-established principle that punitive damages are not available for copyright infringement, even for foreign works.

The consequence of this decision is that companies outside of the United States seeking to enforce their copyrights here should register their works with the Copyright Office to keep all their options open. Importantly, failure to timely register foreign works will also preclude plaintiffs from recovery of attorney’s fees in the event that such plaintiffs are successful in proving copyright infringement.

The Premier League is not, however, without options. The court confirmed that it may be able to avail itself of an exception under Section 411(c), which is designed to address the unique situation that presents itself when works are being transmitted live at the same time as they are being fixed in a tangible form for the first time. The owners of such works, which are anticipated to include sporting events, concerts, and news and public affairs programs, may obtain statutory damages without registering the works if the right holders serve an “Advance Notice of Potential Infringement” on the prospective infringer, with supporting information, at least 48 hours before the work is transmitted or broadcast. The Premier League alleges that virtually all of its video clips fall within this exception and that it has served appropriate advance notices on YouTube; the court held the pleadings to be sufficient on this point to withstand a motion to dismiss.