[This article was first distributed at a UIA conference in London in 1995. Since that time, the Copyright Office has taken the position that Notices of Intent to Enforce may be filed during 1996 and 1997 and not just through 1996.]

Comments are generalizations and may not apply to every situation. It is advisable to consult with a competent professional before relying on any written commentary. Paul D. Supnik is a member of the State Bar of California and not of any other state or country. The material set forth herein is not for the purpose of soliciting any engagements where to do so would be to offend or violate the professional standards of any other state, country or bar. This web page Copyright 1995, 1996 by Paul D. Supnik

1. Background

As part of the legislation in the United States enacted December 8, 1994, approving the Uruguay Round Agreements and establishing the World Trade Organization, the United States enacted two provisions now part of the copyright law which are of considerable interest to entertainment lawyers outside of the United States. One provision deals with copyright restoration for works originating outside of the United States which had fallen into the public domain in the United States.⁽¹⁾ This article deals with that issue and the limited time frame of the year 1996 in which to maximize rights for clients having interests in copyrighted works.

Formalities and the Public Domain

The United States has for many years been singularly particular about formalities as a prerequisite to obtaining benefits under its copyright laws. For example, until 1978, federal copyright protection was only obtained by publishing a work with a copyright notice. The copyright notice consisted of three elements, either the symbol ©, the word "Copyright" or "Copr.", the name of the copyright proprietor and the year of first publication. If any of these were missing or incorrect, there was a risk that the work fell into the public domain. If a work was not renewed under prior law, after an initial copyright term of 28 years,⁽²⁾ the work would fall into the public domain. Until recently, the United States had a manufacturing requirement that, subject to certain exceptions, copies of books had to be printed in the United States if the author was domiciled in the United States at the time of distribution. An author who was a citizen of a country outside of the United States could then move to the United States and if the work were then manufactured and distributed in the United States, the work would be unenforceable, if not in the public domain.

While these risks of forfeiture could be substantial, and the difficulty or at least nuisance of complying could be great even for residents of the United States, the requirements could be unnecessarily and significantly more burdensome to those across the Atlantic and other parts of the world. The United States has received many a complaint from abroad concerning its formalities. In 1989, following the adherence of the United States to the Berne Convention, Congress enacted legislation which did away with many of the formalities, at least as to Berne Convention works having an origin outside of the United States. Nevertheless, many works of origin outside of the United States had already fallen into the public domain. For years, it was perceived that it would be impossible to retrieve those works which had fallen into the public domain in the United States as a result of a constitutional impediment.⁽³⁾ But trade has now become all important and a way was found to attempt to right the wrongs to our neighbors abroad. For the sake of hoping that countries outside the United States would give broader protection to copyrights of United States nationals, we have now provided a method of resurrecting old copyrights which would otherwise now be in the public domain in the United States. The solution was a "notice of intent to enforce". The old formalities are to some extent now replaced by the new formalities--a "notice of intent to enforce" and also registration of the newly restored work.

Notice of Intent to Enforce

Section 104(A) of the Copyright Act provides for restoration of copyright for certain works which have fallen into the public domain but generally not to works originating in the United States. Restoration occurs automatically on January 1, 1996, the date when the TRIPS (Trade Related Aspects of Intellectual Property annexed to the WTO agreement) takes effect with respect to the United States. However, in order to take advantage of the benefits of restoration, it is necessary to either file a Notice of Intent to Enforce a restored copyright or to serve a Notice of Intent to Enforce the copyright on a party relying on the belief that the work was in the public domain. In either event, there is, in effect, a 12 month grace period that the "reliance party" has to stop engaging in what would be infringing activity unless the complained of activity is reproduction, in which case there is no grace period following either publication of the notice or service of the notice on the reliance party. The statute is complex and must be carefully examined before taking these generalizations literally. A "reliance party" is a term of art in the Act and is defined as one whose acts would have infringed the exclusive rights of copyright if there had been copyright protection.

If the Notice of Intent is filed with the Copyright Office, there is no need to specifically seek out any particular reliance party. Moreover, filing the Notice of Intent with the Copyright Office now will satisfy infringing activity which occurs years later without concern over losing the 12 months grace period before remedies are effective. For example, consider that in a few years, your client only learns of infringement two years after it commences and has not filed a notice during 1996. In order to have remedies, including profits of the infringer a Notice of Intent must be served on the infringing party. The infringer stops within a month after receiving the Notice. It would appear that your client would only be able to go after profits for that one month interval after receiving notice, and not for the prior to years of profits. That could make the claims not worth pursuing. If the infringing activity only relates to distribution, the infringer would have a full 12 month grace period.

However, the catch, and one of the main points of bringing this statute to your attention at this time is that there is only a narrow window of time in which to file the Notice of Intent to Enforce with the Copyright Office. That time period is expected to commence the beginning of 1996 and will conclude during the end of the calendar year 1996. Thus, ideally it is in your clients' interest to make your clients aware of this situation now so that they may consider filing such notices beginning next year.

Eligible works

What works are given the benefit of restoration? First, the work must still be protectable in its home country. The work must not be in the public domain in the source country as a result of expiration of its copyright term. The work must be in the public domain in the United States has a result of certain specified grounds. Noncompliance with formalities imposed at any time by the United States copyright law is one of those grounds. These include failure to renew, lack of proper notice, or failure to comply with any manufacturing requirement. For some recordings, lack of subject matter protection for recordings fixed before February 15, 1972 is a basis. Finally, lack of national eligibility. For example, if copyright protection did not extend to a work because the source country did not have copyright relations with the United States.

In addition, to be eligible for restoration, the work must have its origin outside of the United States. The work must not have been published within the United States within the thirty day period following publication in an eligible country. Thus, works which obtained Berne copyright protection by the so-called back door to Berne route are not eligible. At least one author or rightholder must be a national or domiciliary of an eligible country.

In determining eligibility, it is necessary to determine the source country of the work. The source country is determined by looking at the nationality or domiciliary of the author or rights holder and if more than one author or rightholder, then the nationality or domiciliary of the majority of rightholders is applied.

Contents of the Notice of Intent to Enforce

The Notice of Intent to Enforce must contain certain information required by the statute. If the title of the restored work is in a language other than English, and English translation of the title and any alternatives is required. An address and telephone number at which the owner may be contacted is needed. If the notice is prepared and signed by counsel, it is necessary to reduce the agency relationship to writing by the owner before filing the notice.

The Copyright Office has disseminated preliminary rules for filing of the Notice of Intent. Presently, the rules have not become fixed but are expected to become so shortly. Attached is a copy of information likely to be required in a Notice of Intent that has been suggested by the Copyright Office. Lawyers are likely to get creative in developing their own Notices of Intent to Enforce, likely containing language warning of the dire consequences of infringement. It would probably be wise not to overstate the law in create these documents, or they could ultimately become embarrassing at such time that litigation actually occurs.

Who Owns a Restored Work?

In many situations it may not be clear that a particular client has any interest in a restored copyright. Years may have passed since there was any thought that there were ownership rights in a work. For company owned works, their interests may have changed. Authors may have become deceased. Moreover, the statute determines ownership in a manner which is highly unusual when dealing with intellectual property in an international context. Normally, the law applied is the law of the enforcing country. Copyright as other forms of intellectual property are universally considered to be territorial. Nevertheless, here, Congress has chosen to determine copyright ownership as determined by the country of origin.

7. Benefits to the Owner of a Restored Copyrights

The restored owner can now seek to exploit the copyright again. The restored owner can seek compensation and injunctive relief from new infringers. The restored owner can seek compensation from those who have previously created and continue to exploit derivative works from the source material of the restored copyright owner.

The remedies which are available for restored works are the same remedies which are available to ordinary copyright works. However the remedies against those who have created and exploited derivative works created subsequent to the restoration are more limited. The owner of the resource copyright can file a lawsuit in federal district court seeking reasonable compensation but not an injunction.

Registration

In addition to filing notice of intent to enforce, there is also some benefit to registering the work with the Copyright Office. Simply filing and intent to enforce will not be adequate to constitute registration credit registration provides certain additional benefits which while possibly not required to file a lawsuit in a United States Court for a Berne convention work not originating in the United States, can be substantial. Registration provides prima facie evidence of the facts asserted in the copyright registration certificate if registered within five years of publication. Registration also provides an opportunity to assert claims for statutory damages and attorneys fees. Some of the requirements for registration, including the requirement of deposit copies are likely to be relaxed. It may be difficult to obtain the best edition of very old works which may have been required if not a restored work.

Warranties and Immunities

What is the effect of warranties and immunities given by producers of derivative works to distributors, broadcasters and the like which now have important source material for which the copyright as in restored? Congress specifically granted immunity from liability if a breach occurs as a result of the restoration. Issues associated with this material not to have been fully considered and this may lead to considerable litigation in the future.

Conclusions

So, is 1996 the year of exploiting dangerously? Not really. For the user of public domain works in the United States, it may be the last year of exploiting safely.

Warranties granted based on assumptions relating to the public domain works are no longer protected in 1996, and in fact the relief given by Congress from warranties and indemnities ended on January 1, 1995. If the act of infringement is making copies of a restored work, any act done after either receipt of a Notice of Intent to Enforce or could occur even today. If the work is a derivative work, a method for a compulsory license with compensation to be determined by a court is available. But 1996 appears to be the only year to file Notices of Intent to Enforce a restored copyright in the United States Copyright Office.

1. The other relates to the establishment of protection for bootleg recordings which is not dealt with here, but mentioned in the article on rental rights.

2. The copyright term is now life plus 50 years, or 75 years if a "work made for hire". For works subsisting on January 1, 1978, the 28 year renewal term was extended to 47 years. The system of copyright renewal still exists but is gradually being supplemented and replaced by "termination of transfers" introduced in legislation effective beginning in 1978.

3. "...nor shall any person be ... deprived of life, liberty or property, without due process of law; nor shall private property be taken for public use, without just compensation." U.S. Constitution, Amendment V."

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