Bo's bLAWg: Foreign Copyright Registration in US

An artist in Europe (UK) was wondering if they needed to register a copyright with the US too.

Fantastic!  Bo’s bLAWg goes international!

The short answer to this question is “No.”  The better answer is “they should.”

It is understandable that there is confusion over whether or not foreign works should be registered in the US.  Until the US joined the international Copyright treaty, the “Berne Convention,” which it failed to do for 100 years until 1989, the foreign copyright holder could not know whether the US courts would provide her a legal remedy under US law as the courts of any other Berne Convention signatory would.  Under the Convention, the foreign copyright holder had the right to bring an action to enforce their copyright interest under that country’s copyright laws.  They could do so whether or not they had included a copyright notice on their works, and whether or not their own country required registration – which few did. The US Copyright Act required both copyright notice and registration before an action could be brought.

Once the US signed the treaty, it still did not deem its mutual recognition of copyright laws to be “self-executing,” but took the position that the US would pass its own laws to conform with Convention procedures and remedies.

Since the Berne Convention requires its signatory countries to mutually recognize the copyright interests of each others citizens without an obligation to register those copyright interests in each foreign country, the US had to amend the Copyright Act to allow for protection of foreign works without requiring registration of those works.  To that end, the US amended USC 17 § 411 of the Copyright Act to limit its registration requirement for infringement action purposes to US works only.  Section 411 now expressly provides that, “…no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.  (See http://www.copyright.gov/title17/92chap4.html#411 )

Hence the short answer, “No, the European artist need not register her copyright in the US to protect her copyright interests here.  BUT…

The US Copyright Act deprives not only foreign copyright holders, but US holders too, of key remedies in the course of bringing a copyright infringement action unless they have registered their copyrights within three month of publication of their works.  (Again, see http://www.copyright.gov/title17/92chap4.html#411 )

Section 412 of the Act provides as follows:

In any action under this title… [exceptions]  no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for —

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

As discussed more particularly in my January 16 bLAWg earlier this year, registration of copyrights with the US Copyright Office – including those belonging to foreigners -- adds valuable statutory protections that the copyright holder would not otherwise have.  Unless registration has been timely made and these statutory rights secured, if an unregistered artwork is infringed upon, the copyright holder may not be able to afford to bring a lawsuit.  These statutory registration benefits include: 1) the right to elect statutory damages of up to $150,000 for a willful infringement of your copyright instead of being limited to “actual damages” which may consist only of the infringer’s profits – if any; and 2) the right to ask the court to have the infringer pay your legal fees and costs, which you would otherwise have to bear yourself.  (See Copyright Act Sections 504 and 505 http://copyright.gov/title17/92chap5.html )

So, does a UK copyright holder “need” to register her copyrights in the US?  No. But if they are going to be published here in the US, or there is any likelihood that they will be infringed upon here, as a practical necessity, she should register her copyrights.

If you have further questions about this that you want to direct to me personally, I can be contacted through my website linked below.

Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com.



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