Registration of Foreign Works is Required to Collect Statutory Damages

According to a recent decision from a U.S. district court, the owner of copyrights in works created outside the United States cannot collect statutory damages for infringement in the U.S. unless the work was registered with the U.S. Copyright Office prior to the infringement. The only exceptions are copyrights for works that qualify as live broadcasts and copyrights registered in the United States after the infringement but within three months of publication of the work. Football Association Premier League Ltd. v. YouTube Inc., S.D.N.Y., No. 07 Civ. 3582, 7/3/09.

In May 2007, the United Kingdom-based Football Association Premier League Ltd. and 14 other copyright owners filed a class action lawsuit against YouTube Inc. and its parent, Google Inc. The complaint alleged that YouTube and Google infringed their copyrights by posting television programming, videos, sound recordings and other material. The copyright owners asserted claims for statutory and punitive damages.

YouTube and Google asked the court to dismiss these damage claims on the grounds that the plaintiffs had not registered copyrights in the United States prior to the alleged copying. The plaintiffs responded that under the Berne Convention, prior registration was not required.

Section 412 of the Copyright Act prohibits recovery of statutory damages unless the work at issue is registered (1) before the infringement commenced, or (2) within three months of publication. In his July 3 opinion and order, Judge Louis L. Stanton ruled that there is no exception excusing foreign works from this mandate.

The court acknowledged that, unlike owners of works created in the United States, Section 411(a) of the statute does not require owners of copyrights in foreign works to register copyrights in the United States before being allowed to sue for infringement. But the court ruled that Section 411(a) "does not impair the operation of Section 412, which forbids recovering of statutory damages in any infringement action (except, among others, those under Section 411(c) concerning live broadcasts) unless the work has been registered." The court rejected the plaintiffs' contention that unless Section 412 is construed to exempt all foreign works from its directive, it would violate international treaties, including the Berne Convention's prohibition against "formalities." In addition, the court said that even if Section 412 were in conflict with the Berne Convention, Section 412 would be binding because the Berne Convention has no effect on U.S. law unless Congress so provides.

The court dismissed some, but not all, of the claims for statutory damages. According to the court, the copyright owner of a foreign work that meets the live broadcast exemption may obtain statutory damages without registering the work if the copyright owner serves an "Advance Notice of Potential Infringement" that identifies (1) each work at issue by title, date, specific time, and expected duration of the intended first transmission; (2) the source of the intended first transmission and the copyright owner of each work; and (3) a description of relevant activities of the potential infringer which would, if carried out, result in an infringement of the copyright.

Finally, the court dismissed the plaintiffs' claim for punitive damages. "There is no circumstance in which punitive damages are available under the Copyright Act of 1976," the court said.

The decision should encourage owners of popular foreign works to register those works in the United States in order to preserve the right to claim statutory damages. Registration of copyrights in the United States Copyright Office is relatively straightforward and inexpensive.