BY: KRISTOPHER HAWKINS, Guest Contributor
Editor’s Note: The Campbell Law Observer has partnered with Judge Paul C. Ridgeway, Resident Superior Court Judge of the 10th Judicial District, to provide students from his International Business Litigation and Arbitration seminar the opportunity to have their research papers published with the CLO. The following article is one of many guest contributions from Campbell Law students to be published over the next two weeks.
The advent of the internet has made enforcement of copyright laws increasingly more difficult, causing courts to struggle to keep pace with technological and societal changes. Data found on a computer is subject to attack from across the globe, forcing courts into an interesting analysis of conflicts of laws, particularly considering the variation remaining after the ratification of The Berne Convention for the Protection of Literary and Artistic Works. The Berne Convention attempted to establish equal and automatic protections for copyrighted works throughout signatory nations, but has been somewhat unsuccessful in reducing differences in substantive issues.
Considerable variation still exists throughout signatory jurisdictions in regards to fair use defenses, duration of protection, authorship and ownership regarding works-for-hire, and a number of other issues. As the speed at which data travels quickens, the need for swift action to establish uniform choice-of-law provisions within the Berne Convention family of treaties grows.
Neither the WIPO Copyright Treaty nor the DMCA contain provisions providing direct guidance as to how the treaties should be applied in cross-border disputes.
The Berne Convention was drafted and ratified by over 150 nations in 1886 in an attempt to ensure copyright protection across the globe. The Convention sought to establish equal treatment in each of its signatory nations’ jurisdictions by instigating minimum standards for protection. The United States acceded to the treaty in 1988, over a century after its establishment. Soon after the United States joined the Berne Convention, advances in technology made it clear that the provisions of the Convention would not suffice in the information age.
The World Intellectual Property Organization (WIPO) Copyright Treaty was drafted and ratified in 1996 in order to help copyright law keep pace with the changing times. The United States joined the WIPO Copyright Treaty through the implementation of the Digital Millennium Copyright Act (DMCA).
While the DMCA would grant protection to software and place restrictions on the use of encryption circumvention programs, among other provisions, neither the WIPO Copyright Treaty nor the DMCA contain provisions providing direct guidance as to how the treaties should be applied in cross-border disputes. The choice-of-law analysis involved in international copyright litigation has proven difficult for courts in the United States. This is evinced by a split in authority as to how to interpret certain articles of the Berne Convention. This analysis proves critical to international disputes because the minimum standards of the Berne Convention allow for variation among signatory nations.
“[A]lthough the treaties do not expressly discuss choice-of-law issues, it is commonly acknowledged that the national treatment principle implicates a rule of territoriality.”
There is a split among jurisdictions in the United States regarding how to apply the principle of “national treatment” of the Berne Convention to an analysis of choice of law. Article 5(1) of the Berne Convention states the national treatment principle as follows:
Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.
The U.S. Court of Appeals for the Ninth Circuit, in Subafilms, Ltd. v. MGM-Pathe Communications Co., treats the principle as one governing choice of law. Conversely, the U.S. Court of Appeals for the Second Circuit, in Itar-Tass Russian News Agency v. Russian Kurier, Inc., has chosen to read the “national treatment” provision as an anti-discrimination device meant to ensure equal treatment of foreign nationals faced with copyright disputes.
Subafilms involved a dispute regarding the unauthorized dissemination of home video copies of The Beatles’ animated motion picture “Yellow Submarine” across the globe. The infringement at issue had been authorized by MGM/UA Communication Co., pursuant to a licensing agreement with Warner Home Video, Inc. In Subafilms, the U.S. Court of Appeals for the Ninth Circuit posited that “although the treaties do not expressly discuss choice-of-law issues, it is commonly acknowledged that the national treatment principle implicates a rule of territoriality.” The Court cited Melville B. Nimmer in support of the position that the national treatment principle requires the application of the doctrine of lex loci delicti, applying the law of the state in which the infringement was committed to every issue of the case.
The Court, by dismissing the action under the doctrine of forum non conveniens, supported its decision to refuse application of United States law to actions transpiring outside of the country by citing the need for international comity, bootstrapping (pdf) a conflicts of law analysis to a jurisdictional doctrine. However, some scholars believe there to be a fundamental flaw in the Ninth Circuit’s reading of the principle as a choice-of-law provision which the comity reasoning does not overcome. In her article, “Copyright Infringement in the Internet Age – Primetime for Harmonized Conflict-of-Law Rules ?,” Anita B. Frohlich comments that the Berne Convention was “drafted in efforts to harmonize international copyright law,” which suggests that “the drafters of the Berne Convention did not focus on conflict issues, since the whole study of conflict of laws is based on the diversity of laws, not their harmonization.” Furthermore, the preamble to the treaty professes a desire to enact protections “in as effective and uniform a manner as possible” (emphasis added). It is unlikely that the drafters considered a choice-of-law provision, considering the language of the treaty expressly contemplates uniformity.
Because of the internet’s rapid growth, the U.S. Court of Appeals for the Second Circuit’s choice-of-law analysis could prove extremely difficult in practice.
The U.S. Court of Appeals for the Second Circuit approaches the issue from a much different angle, choosing to view the national treatment principle as merely an anti-discrimination provision in Itar-Tass. The Itar-Tass case involved a Russian language newsletter distributed throughout New York. The newspaper copied verbatim as many as 500 articles written by Russian journalists for Russian newspapers, often using photographic reproductions of works cut from the pages of the original publisher. In order to resolve the disagreement, the Court was required to analyze a number of choice-of-law questions. In its analysis, the Court chose not to follow the reasoning of the U.S. Court of Appeals for the Ninth Circuit.
The Itar-Tass Court’s reading of the principle forces the Court to search elsewhere for a choice-of-law provision, but the Court found no relevant provisions within the United States Copyrights Act. As a result, the Court chose to mend the fences left open by the Copyrights Act through the development of federal common law. As the Court states, “The choice of law applicable to the pending case is not necessarily the same for all issues.” The Court first recognizes that interests in copyright law are akin to property rights and determines that the choice-of-law should be determined by the jurisdiction with the “most significant relationship” to the interest at hand. Further, the Court determined that, under the doctrine of lex loci delicti, the law of the jurisdiction in which the alleged wrong has taken place should govern the issue of infringement.
Because of the internet’s rapid growth, the U.S. Court of Appeals for the Second Circuit’s choice-of-law analysis could prove extremely difficult in practice. For instance, suppose that Dr. Robinson, a resident of North Carolina, publishes an article in Science Bi-Daily Magazine, which is circulated primarily in the United States. Mr. Hestonsson posts the article to his website with servers located in Sweden. Following the upload, users across the globe in Germany, France, India, and Russia download the article. Courts following the Second Circuit’s position would be led into the path of uncertainty when determining which of the myriad jurisdictions should be considered the place of infringement.
The split of authority in the United States indicates an increasing confusion as to the application of the Berne Convention. The problematic approaches taken by both the U.S. Court of Appeals for the Second and Ninth Circuits showcase the need for immediate action from the international legal community to safeguard copyright protection for the Berne Convention’s signatory nations. Courts will continue to struggle with these difficult questions until amendments to existing law are made.
While intriguing, this approach may seem radical to those in search of a more traditional theory.
Many scholars have proposed solutions to the choice-of-law issue as the debate on copyright protection in the information age continues. Scholars David R. Johnson and David Post, not limiting their discussion to copyright, have postulated that cyberspace be treated as its own jurisdiction, allowing for a set of laws to grow and expand as our understanding of the internet’s effect on the global populace becomes clearer. They suggest that a clear delineation between the established jurisdictions of the physical realm and the cyber frontier would allow these legal issues space to develop, while retaining established legal principles applicable to physical publications. While intriguing, this approach may seem radical to those in search of a more traditional theory, particularly considering the daunting task of maintaining proper jurisdiction in an area as ethereal as cyberspace.
Another solution proposed by the American Law Institute (ALI) establishes the doctrine lex loci protectionis as the standard choice-of-law doctrine, applying (pdf) “the law of the country for which protection is sought.” This doctrine is also mandated in the European Union through Article 8(1) (pdf) of the Rome II Regulation. Further, Section 103 of the ALI principles draws a distinction between choice-of-law issues and jurisdictional issues, preventing the somewhat tenuous approach taken by the U.S. Court of Appeals for the Ninth Circuit in Subafilms.
It is only a matter of time before a consensus is reached on the reasoning behind choice-of-law provisions.
As the legal community finds itself in the midst of the information age, there has been a concerted effort to secure a system of law that is prepared to master the complex issues of a globalized society. Scholars have found that the process of legal change progresses slowly due to the intense nature of the debate, but many agree that change is required in order to meet the needs of the legal profession. The enactment of universal regulations on choice-of-law provisions within the intellectual property arena will allow courts to further the goals of the Berne Convention without being forced to stumble through a multi-faceted analysis. As the internet has made the application of laws more difficult, it has also made the flow of ideas throughout communities easier. It is only a matter of time before a consensus is reached on the reasoning behind choice-of-law provisions.
Kristopher Hawkins is a 2L student at Campbell Law School. Kristopher may be reached via email at firstname.lastname@example.org.