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Premier League's failure to register copyrights in US limits YouTube claim

The English Premier League cannot claim statutory damages against YouTube for user-submitted video clips of non-live football matches, even if it proves that the site infringed its rights, because it failed to register its copyrights, a judge has said.08 Jul 2009

A New York lawyer involved in the case has said that if the ruling stands, overseas companies will be forced to register their copyrights in the US to protect their options in future litigation. They must do so within three months of a work being published .

The Football Association Premier League, which is behind the English Premiership, filed its lawsuit against YouTube and parent company Google in 2007. It argues that YouTube is profiting from a knowing violation of its copyrights in the league and in footage of games in that league, a claim that YouTube denies.

The claim is a class action lawsuit on behalf of the Premier League and music publisher Bourne Co and "all others similarly situated", according to the court filing. It says that Google and YouTube should be denied the 'safe harbor' protection of the Digital Millennium Copyright Act (DCMA).

But in an opinion filed yesterday, US District Judge Louis Stanton of the Southern District of New York dismissed parts of the Premier League's claim due to its failure to register its copyright works.

In the US there is a system of copyright registration that does not exist in the UK. Registration is not required to secure copyright, but before an infringement suit may be filed in court, registration with the US Copyright Office is necessary for works of US origin under Section 411(a) of the country's Copyright Act.

The Premier League argued that it could seek statutory damages for unregistered foreign works. Under the Copyright Act, statutory damages can be as high as $150,000 per infringement. They are distinct from 'actual' damages, which allow the claimant to recover its actual loss.

Google and YouTube pointed to another Section of the Act, though, that limits the remedies available in an infringement suit.

Section 412 says that no award of statutory damages shall be made for "(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication of the work and before the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."

"Unlike Section 411(a), Section 412 has no such limitation to US works: it applies to all unregistered works," wrote Judge Stanton.

This means that non-US companies must register all works with the US Copyright Office within three months of first publication if they ever wish to claim statutory damages for any subsequent infringement.

The Premier League said that this interpretation would violate the Berne Convention, an international treaty of which the US is a member. That Convention says that the enjoyment and exercise of copyright "shall not be subject to any formality". Judge Stanton disagreed, observing that US lawmakers had already deemed the law compatible with Berne.

"Even if Section 412 were in conflict with the Berne Convention, Section 412 would be binding," wrote Judge Stanton. "The Berne Convention has no effect on US law unless Congress so provides".

He also rejected an argument that his interpretation of Section 412 would violate the Agreement on Trade-Related Aspects of Intellectual Property Rights, known as TRIPs.

The Premier League also asked if it could claim punitive damages for "wilful infringements of the unregistered foreign works that are barred from statutory damages" but Judge Stanton refused. "There is no circumstance in which punitive damages are available under the Copyright Act of 1976," he wrote.

The ruling leaves open potential remedies of actual damages, disgorgement of profits and injunctions if the Premier League wins its case. But statutory damages, which are generally much easier to calculate than actual damages and profits, will not be available for some works.

The ruling is further complicated by being limited to video clips of non-live broadcasts only. That is due to an exemption from Section 412 in the Copyright Act for unregistered foreign works meeting the Copyright Act's "live broadcast exemption".

Under the Act, that means the Premier League can still claim statutory damages for works if it served an "Advance Notice of Potential Infringement" on the prospective infringer, with supporting information, at least 48 hours before the work was transmitted.

Google and YouTube said that the plaintiffs have "failed to point to a single work for which they claim to qualify for the exception". But a lawyer for the Premier League told the court that the organisation has served more than 344 such Advance Notices by email within the 48 hour limit and later in hard copy.

Judge Stanton accepted the Premier League's argument on this point, meaning that any YouTube videos that are recordings of live broadcasts will be subject to statutory damages if liability is established at trial.

William M Hart, a lawyer with the Premier League's New York-based firm Proskauer Rose told OUT-LAW today that "virtually every one" of the videos in which the Premier League claims rights is a recording of a live broadcast.

French Tennis, another plaintiff, is in the same position, according to Hart. He said that music publisher plaintiffs are also protected because they registered their copyrights. "So it's not an issue [for the plaintiffs]," said Hart. "It's a positive ruling for us."

Hart said that the Premier League did not make a mistake in failing to register its copyrights – it simply should not have been necessary. While the ruling may not damage the case of the plaintiffs, Hart says it is bad news for other non-US copyright owners.

 "We think this ruling is a throwback to draconian times," he said. He said an appeal may follow because, while the ruling does not damage Premier League's case, it sets what he described as an important but unfair precedent for non-US copyright owners "who are equally unaware of the need to register."

"It's conceivable that rather than forcing foreign rights owners to register in the US system, a country overseas could say the US is not complying with its duties under Berne," said Hart.

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