The Southern District of New York held recently that the Berne Convention is not a self-executing treaty. Accordingly, the treaty itself does not provide grounds to challenge the registration requirements of Section 412 of the Copyright Act, which mandates registration as a prerequisite to statutory damages and attorneys’ fees recovery in copyright infringement actions. Elsevier B.V. v. UnitedHealth Group, Inc., No, 9 Civ. 2124 (S.D.N.Y. January, 14, 2010) (denying motion for declaratory judgment). While this ruling in and of itself is not shocking -- indeed the Southern District has previously ruled on three separate occasions that the Berne Convention is not self-executing [1]; the practical effect of this ruling is significant. The decision should make all foreign copyright holders evaluate their registration practices with the United States Copyright Office, because it confirms that owners of non-U.S. copyrights must register with the Office prior to the infringement or within the three month grace period after publication in order to be eligible for statutory damages and attorneys’ fees.

Background

The Law

“For decades, the outstanding feature distinguishing United States copyright law from that of the rest of the world has been its emphasis on formalities. This situation persisted from the dawn of U.S. copyright law through the Copyright Act of 1976, which at its passage provided that the failure to observe certain formalities could result in either the loss of copyright, or in a loss of certain remedies under the copyright.” 2 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 7.01[A] (Matthew Bender, Rev. Ed).

For foreign copyright holders unaccustomed to registration requirements, it may be easy to gloss over potential benefits gained by virtue of a simple registration, which ranges in cost from $35.00 for an electronic filing up to $65.00 for a traditional paper filing. Section 412 of the Copyright Act makes clear, however, that unless a plaintiff has registered its work with the U.S. Copyright Office, neither statutory damages nor attorneys’ fees will be available as litigation remedies under most circumstances. 17 U.S.C. § 412. These remedies can be substantial. Statutory damages may be awarded on a scale from $200.00 per work (where defendant can prove innocent infringement) up to $150,000 per work (where the plaintiff demonstrates that the infringement was willful). 17 U.S.C. § 504(c). Further, attorneys’ fees in copyright cases can easily range in excess of $1,000,000 in a fully-litigated proceeding. Without statutory damages and attorneys’ fees as available remedies, copyright plaintiffs must prove actual damages and/or the defendants’ profits attributable to the infringing activity; showing actual damages and defendant’s profits can prove difficult and expensive for a copyright litigant. Thus, the unavailability of statutory damages and attorneys’ fees as potential remedies can severely restrict a copyright litigant’s options.

The Case

Elsevier provides online access to thousands of scientific books and journals through its searchable database, ScienceDirect. The database contains a large number of foreign works that have never been registered with the Copyright Office. In its complaint, Elsevier alleged that a UnitedHealth subsidiary, Ingenix, Inc. violated Elsevier’s copyrights -- 9,093 to be precise -- by allowing unauthorized access to the ScienceDirect database.

Of the 9,093 works allegedly infringed, 7,786 were unregistered foreign works. Because statutory damages are awarded per work, the potential statutory damages award in a case like this is substantial. Without access to statutory damages and attorneys’ fees with respect to 85% of the works at issue, Elsevier’s sole options for damages were recovery of its actual damages and UnitedHealth’s profits attributable to the alleged infringements. Seeking to avoid this limitation, Elsevier pointed directly to the language of the Berne Convention of the Protection of Literary and Artistic Works (“The Berne Convention”). The Berne Convention, of which the U.S. is a member, states that “the enjoyment and exercise of [copyright] shall not be subject to any formality.” Elsevier argued that “statutory damages and attorney’s fees are integral to the enjoyment and exercise of foreign copyrights” and that therefore Section 412 of the Act is preempted by the Berne Convention under the Supremacy Clause of Article VI of the U.S. Constitution.

Decision

The court first examined the authority of the Berne Convention treaty itself, noting an important distinction between self-executing and non self-executing treaties. U.S. courts have traditionally recognized a distinction between (a) those treaties that take effect into law upon their signing and, therefore, establish enforceable rights immediately (“self-executing” treaties) and (b) those that still require some action “pursuant to the laws of the United States” before they become effective (“non self-executing” treaties). See Medellin v. Texas, 128 S. Ct 1346, 1356 (2008).

The Court emphasized that Congress itself deemed the Berne Convention not to be self-executing and that the U.S. could meet its obligations “only pursuant to appropriate law” (citing the Senate Report to the Berne Convention Implementation Act). The Senate Report states further, “[t]he statutory incentives for registration contained in the provisions of . . . [Section] 412 . . . are not preconditions for the ‘enjoyment and exercise’ of copyright. While those provisions substantially enhance the relief available . . . they do not condition the availability of all meaningful relief.” (In contrast to its treatment of Section 412, the Senate Report concluded that Section 411(a) of the Copyright Act, which requires registration as a precondition to filing suit, should not apply to foreign works, as this requirement would diminish their enjoyment and exercise of rights under U.S. law.) The Court also pointed to the language of the Berne Convention itself; Article 36 expressly requires member nations to adopt measures necessary to ensure the application of the Convention.

For these reasons, the Court concluded that the Berne Convention is not a self-executing treaty and that it therefore could not serve as a basis for Elsevier’s claim for preemption of Section 412 under Article VI of the United States Constitution. Moving forward, Elsevier must demonstrate actual damages and/or defendants’ profits caused by the infringement of its unregistered foreign copyrights, and it must do so without the prospect of court awarded attorney’s fees and statutory damages.

Conclusion

Owners of non-U.S. copyrights who are not accustomed to registering their works routinely in the U.S. should take note of this decision and consider whether it has implications for re-evaluation of their registration practices. Timely registration of works under the U.S. Copyright Act can have significant implications in terms of expanding the remedies available in U.S. copyright litigation.