Quarterly International Ip Law Update

• Jurisdiction: United States,Federal
• Citation: Vol. 47 No. 3
• Publication year: 2022
• Author: David Tseng
• topic: Business of Law,Contracts,Intellectual Property,Copyright law

QUARTERLY INTERNATIONAL IP LAW UPDATE

AUTHORS

David Tseng

MediaTek Inc.

Mariana Noli

Noli IP Solutions PC

Leaf Williams

Reichman Jorgensen Lehman & Feldberg LLP

THE MYTH OF INTERNATIONAL COPYRIGHT PROTECTION

Contrary to common belief, there is no such thing as an "international copyright" that will automatically protect an original work of authorship throughout the world. As with patents, copyrights are territorial and national in scope. The variation in national copyright laws and enforcement, combined with globalization and the boundless nature of distribution through the internet mean that many scenarios should cause individuals to consider potential repercussions and solutions carefully.

Copyright owners must think globally when evaluating the extent of protection their works can receive. For example, if a work is registered for copyright protection in the United States, and the owner subsequently suspects infringement in Mexico or Italy—what can be done to prevent the infringement? And is the work at issue even within a category that receives copyright protection in that country? Art and content consumers have to be circumspect when contemplating the use of another's IP abroad—is the work in the public domain where the user is located or could the activity be considered fair use? Employers also ought to be wary of how their employees are accessing licensed databases and potentially contributing content toward company objectives depending on where the employees are located. And those negotiating IP licenses that may have international implications should be cognizant of how local laws could affect the terms of the agreements.

Luckily, copyright protection between different nations has been addressed by a number of international treaties and conventions that establish a baseline of expectations, the most important of which is the Berne Convention.¹ First signed in 1886, the Berne Convention currently has 181 members,² including the United States in 1989, China as of 1992, and Russia in 1995.³ The Berne Convention outlines three basic principles, one of which is the principle of "national treatment"—through which copyright authors must be given the same protection for their works in

[Page 46]

other countries as those countries afford their own authors.⁴ Additionally, protection under the Berne Convention is separate from protection in any particular country, such that if a member state provides for a longer period of copyright protection than the Berne Convention mandates, and the copyright is no longer valid in the member country, Berne protection can be denied once the work is no longer protected in the country of origin.⁵

Another fundamental tenet is that copyright protection for foreign nationals cannot be conditioned upon compliance with any formality (such as registration or use of a copyright notice) that is required in the home country.⁶ In the United States, this means that individuals can bring an infringement suit for a foreign work even though the work is not registered, while such an action cannot be maintained for a United States work within the country.⁷ However, while member countries are not permitted to require particular formalities in order to guarantee protection to foreign works under national laws, certain formalities may still be necessary to take advantage of the breadth of remedies afforded in a particular country. For example, while registration is not required to bring an action for copyright infringement in the U.S., to qualify for statutory damages a work must be registered before the date the infringement occurs or within three months after...