Two recent decisions in the United States have addressed the importance of registering copyright to accessing remedies in the United States for copyright infringement. Considerations arise both for United States works and works created outside of the United States.
The United States Copyright Act (17 USC §411(a)) provides that generally no action for infringement of copyright in any United States work can be brought unless the copyright claim has been registered.
In relation to copyright registration, §411(a) does not apply where the work in question is not a United States work. However, certain remedies are available only where infringement is claimed in respect of a registered copyright. Under §412, the availability of statutory damages and attorney’s fees as remedies are, with certain limited exceptions, confined to cases of infringement of a registered copyright. Under §504, statutory damages are available to a copyright owner as an alternative to the owner’s actual damages and any additional profits of the infringer. Under §505, the Court has discretion to award full costs to a party to a civil action, as well as a reasonable attorney’s fee as part of the costs.
Elsevier B.V. v. UnitedHealth Group, Inc. No. 9 Civ. 2124 (S.D.N.Y, 14 January 2010) concerned a claim by the plaintiff, Elsevier, for copyright infringement in relation to its online collection of scientific books and journals. A number of the works contained in the database were protected by non-United States copyright, but that copyright was not registered in the United States. Elsevier pursued a claim against the defendants and sought remedies including the award of statutory damages and attorney’s fees.
Elsevier alleged that §412 of the Copyright Act was unconstitutional on the basis that the section conflicted with Article 5 of the Berne Convention for the Protection of Literary and Artistic Works. That article guarantees certain rights to authors and provides that the “enjoyment and the exercise” of rights under the Convention “shall not be subject to any formality”. Elsevier argued that statutory damages and attorney fees were integral to the enjoyment and exercise of its foreign copyright and that therefore, by virtue of Article VI of the United States Constitution, the Berne Convention provisions superseded those of the Copyright Act.
The Court held that the Berne Convention was not self-executing. It did not become law solely on the basis of ratification. Therefore no question of conflict between the provisions of the Convention and the Copyright Act arose. Elsevier could not seek statutory damages and attorney’s fees in respect of unregistered foreign copyrights.
The requirement of registration has also been considered recently in respect of United States works. In Reed Elsevier, Inc v Muchnick decided 2 March 2010, the Supreme Court of the United States determined that the registration requirement did not prevent a court from approving a class-action copyright settlement agreement where some of the authors in the class of plaintiffs had not registered their works. The Court held this on the basis that the registration requirements in §411(a) did not deprive federal courts of subject-matter jurisdiction over claims of copyright infringement involving unregistered copyright.
There is no Australian provision corresponding to §411(a) of the United States Copyright Act. It is neither necessary nor indeed possible to register copyright in Australia. However, an Australian copyright owner can register their copyright in the United States.
While the United States Supreme Court has affirmed that all is not lost for authors of United States works who fail to register their copyright claims, registration will be critical to protection in most cases. Similarly, while holders of non-United States copyright are not obliged to register their copyright in the United States, they should consider doing so in the interests of maximising available remedies in a case of alleged infringement in the United States.