International Issues; Remedies Intro to IP – Prof Merges 3.12.2012 [Originally scheduled for 3.6.2012]

Agenda International copyright protection Remedies – especially damages

International Copyright History Current situation

History US a net infringer (“pirate nation”) through the 19th century? Famous complaints of Dickens, Gilbert & Sullivan, et al. Finally resolved in late 20th century: TRIPS/Berne movement

Current situation No formalities required for foreign works Berne permits uneven treatment

The Berne/TRIPS Framework on Copyright Berne Convention for the Protection of Literary and Artistic Works (1886) Establishes basic principles protectable subject matter term of protection conditions of protection scope of protection rights under copyright limitations & exceptions

TRIPS 1995 Makes Berne mandatory for all WTO Members (Even those that are not Parties to Berne) Clarifies that computer programs & databases shall be protectable as literary works Introduces rights to commercial rental after first sale

Copyright basic principles General exception to reproduction right: three-step test, Art 9.2 Berne Convention limited to certain special cases (step 1) No conflict with normal exploitation of work (step 2) No unreasonable prejudice to author’s legitimate interests (step 3)

The WIPO Internet Treaties WIPO Copyright Treaty (WCT), 1996 WIPO Performances and Phonograms Treaty (WPPT), 1996 Objective: to adapt international copyright to digital environment Articles 4.10; 20.1(e); 29.3(d); 30.1(b); 31.1(d).

WCT and WPPT basics Parties must provide adequate legal protection & effective legal remedies against circumvention of technological protection measures (TPMs) used by authors, performers & producers to restrict acts that are Not authorized by rights holders, or Not permitted under domestic law Art 12 WCT; 18 WPPT.

Foreign law, Choice of Law London Film Prods. v. Interconinental Comms., Inc., 580 F.Supp. 47 (1984) British plaintiff sued NY Corp. for infringement in South American countries Jurisdiction upheld; no forum non conveniens, suit can proceed

Sheldon v. MGM Play: Dishonored Lady Movie: Letty Lynton

Madeleine Smith & Scottish murder case

Chief Justice Hughes

Relative contributions Infringing material Original initiative of the infringer How to handle relative contributions?

Common public domain source: idea/expression [T]he general skeleton was already in the public demesne. A wanton girl kills her lover to free herself for a better match; she is brought to trial for the murder and escapes.

IPNTA 5th p. 727 From comparison and analysis, the Court of Appeals concluded that they had ‘‘deliberately lifted the play’’; their ‘‘borrowing was a deliberate plagiarism.’’ It is from that standpoint that we approach the questions now raised.

Infringement analysis Common source – public domain (basis story) Play: specific incidents, characters, details Movie: Use Nicholls (“levels of abstraction”) test; here – infringement found

Relative Contributions Respondents contend that the material taken by infringement contributed in but a small measure to the production and success of the motion picture. They say that they themselves contributed the main factors in producing the large net profits. IPNTA 5th at 727

The court thought an allowance to petitioners of 25 percent of these profits ‘‘could be justly fixed as a limit beyond which complainants would be receiving profits in no way attributable to the use of their play … District Court awarded all the net profits to petitioners, feeling bound by the decision of the Court of Appeals in Dam v. Kirk La Shelle Co., 175 F. 902, 903, a decision which the Court of Appeals has now overruled.

Purpose of copyright damages The purpose is thus to provide just compensation for the wrong, not to impose a penalty by giving to the copyright proprietor profits which are not attributable to the infringement.

Restitution principle Where there is a commingling of gains, he must abide the consequences, unless he can make a separation of the profits so as to assure to the injured party all that justly belongs to him. When such an apportionment has been fairly made, the copyright proprietor receives all the profits which have been gained through the use of the infringing material and that is all that the statute authorizes and equity sanctions. – IPNTA 5th 729

But beware: problems of proof! “. . . When such an apportionment has been fairly made . . .”

(b) Actual Damages and Profits (b) Actual Damages and Profits.--The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work. – 17 USC 504(b)