Special pleadings needed for unregistered foreign copyright lawsuits in the US. DIGITALB v. SETPLEX

A copyright is a set of exclusive rights granted to the creator of a new work of artist expression. A copyright is granted to an artist the moment that the new work is fixed in a tangible medium. This means that when a singer records a song, sculptor creates a sculpture or photographer takes a picture they are granted a copyright to their creation. In the United States a copyright owner can register their copyright to strengthen the rights associated with the copyright, but registration is not necessary to for the copyright to be granted.

The Berne Convention for the Protection of Literary and Artistic Works is an international agreement which creates a standard to protect copyrighted works. Nations that adopt the Berne Convention agree to protect citizens of other nations the same as its own citizens. The Berne Convention also requires contracting nations to not condition copyright on compliance with any formalities, copyright protection must be automatic. The United States and the People’s Republic of China are both nations which have adopted the Berne Convention. This means that United States courts will treat a Chinese citizen’s copyright the same as an American citizen’s copyright.

To file a lawsuit in United States, a United States citizen must register their copyright with the Copyright Office of the Library of Congress. Section 411(a) of the Copyright Act, provides that: No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title. 17 U.S.C. § 411(a). Because the United States is a contracting nation to the Berne Convention, foreign citizens are not required to register their copyright before filing a copyright infringement lawsuit in United States courts. This may lead foreign copyright owners to believe they are completely exempt from following the formalities of United States copyright law. However, it is still important that a foreign citizen that wants to file a copyright infringement lawsuit in the United States either register their copyright or follow precise pleading requirements when they file their copyright infringement lawsuit.

DIGITALB, SH.A, v. SETPLEX, LLC, 17-cv-4102 (S.D.N.Y. 2018) is a case which demonstrates what can happen when a foreign copyright owner does not properly plead their case in court. The plaintiff in this case is an Albanian television company that distributes copyrighted television shows. The defendant is a company accused of infringing on the copyright of the plaintiff’s television shows by distributing the shows without permission. The plaintiff filed a lawsuit in the Federal District Court for the Southern District of New York.

Because it is a foreign citizen and Albania is a contracting nation of the Berne Convention, the plaintiff did not register its copyright in the United States before filing the lawsuit. The plaintiff also did not expressly plead in its complaint that it was exempt from copyright registration in its complaint because it was a foreign citizen. The defendant moved for dismissal on the grounds that the plaintiff failed to state a claim.

The court agreed with the defendant and dismissed the case because the plaintiff had not registered its copyright and had not plead that it was exempt from registration. The lesson here is simple, a foreign copyright infringement plaintiff must either register their work in the United States before filing a lawsuit or explicitly plead that they are exempt from the registration requirement.

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