U.S. Copyright Law on Enforcement of Foreign Copyrights

Don't Get Berned- Important Limitations

What is the Berne Convention?

The Berne Convention guarantees that certain works will be protected in countries outside of the author’s original country at the same degree the foreign country protects its works of its own national authors. Additionally, “the enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work” (Berne Convention art 5.2 Paris Text). Furthermore, the United States took quite some time to join the Berne Convention due to the formalities that were required by the U.S. Copyright Law, which include proper use of copyright notice and registration as a prerequisite to bringing legal action.

Moreover, the no-formalities protocol of the Berne Convention does not mean that the contracting parties can’t impose additional requirements under their national laws. When the U.S. joined the Berne Convention, it decided to maintain certain formalities for domestic work while dispensing formalities for foreign-based works. Withal, owners of foreign works may bring an action for copyright infringement in the U.S. to the courts without obtaining a registration from the U.S. Copyright Office, whereas U.S. citizens have to have a registration before bringing a lawsuit.

Protection and Damages in the United States

It should be known that a foreign copyright owner can bring a suit to the U.S. without a U.S. copyright registration and obtain an injunction, actual damages, and/or an infringer’s profits to rectify. However, statutory damages can not be elected instead of actual damages if a foreign copyright owner does not have a registration with the U.S. Copyright Office.

Statutory damages are a leverage for a copyright plaintiff. In order to qualify, a work must be registered within three months after the first publication or before the date of infringement. The range of statutory damages that can be awarded by a court are between $750 to $30,000, unless the court increases the award to $150,000 in a case where the infringement was willful.

It has been affirmed that although the Copyright Act does not require registration to bring forth an infringement suit of foreign works, the court acknowledges that the Act does not exempt registration with respect to statutory damages. Both the House and Senate reports on the implementation of the Berne Convention to specifically address the imposition of a registration to qualify for statutory damages.

The Takeaway

All in all, the owners of a foreign copyright may qualify for protection in the United States through the Berne Convention if a registration is acquired for their works. This preserves the ability to claim statutory damages in a lawsuit.