Relying solely on the Berne convention, will forfeiture statutory damages in the US.

Relying solely on the Berne convention, will forfeiture statutory damages in the US.

A copyright is a set of exclusive rights granted to the creator of a new work of expression.  Sculpture, photography, literature, are all works which are protected by copyright law.  Computer software is eligible for copyright protection as a form of literature.  The creator of a new work is granted a copyright when the work is fixed in a tangible medium or permanently saved in some manner.  A copyright grants its owner the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original.  If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.

The grant of copyright protection to work at the time of creation is a feature of the Berne Convention. The Berne Convention was formerly known as the International Union for the Protection of Literary and Artistic Works.  The World Intellectual Property Organization, located in Geneva, Switzerland, is charged with administration of the treaty and, at present, there are 174 contracting nations.  The Berne Convention was first established in 1886 and the United States joined the treaty in 1989.  Prior to the Berne Convention United States Copyright Law did have formal requirements for copyright registration and copyright notices as a prerequisite to a grant of copyright protection.

In the United States registration of a copyright is required before a domestic copyright owner can file a lawsuit for copyright infringement.  Foreign copyright owners are exempt from this registration prerequisite to filing a lawsuit, if the foreign copyright owner properly pleads the exemption in court papers.  Beyond granting the right to file a copyright infringement lawsuit, registration of a copyright also grants the following advantages:

  • Registration establishes prima facie evidence of the validity of the copyright and facts stated in the certificate when registration is made before or within five years of publication.
  • When registration is made prior to infringement or within three months after publication of a work, a copyright owner is eligible for statutory damages, attorneys’ fees, and costs.
  • Registration permits a copyright owner to establish a record with the United States Customs and Border Protection for protection against the importation of infringing copies.

Even though a foreign copyright owner can file a copyright infringement lawsuit, they forego these advantages if they fail to register their copyright before commencing the lawsuit.  This means that a foreign copyright owner, who fails to register their copyright can only obtain an injunction, actual damages, and/or an infringer’s profits as a remedy.

Statutory damages are a powerful remedy for a copyright owner.  Proving actual damages is a fact intensive and time consuming exercise.  Statutory damages allow a copyright owner to be awarded $750 to $30,000 per infringement, however a court can increase the award to $150,000 when a defendant’s infringement is proven to be willful.

It is in the best interest of copyright owners, who are not United States citizens, to register their works with the United States Copyright office.  The filing fee to register a copyright are trivial compared to the advantages that comes with registration.

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