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made for "(1) any infringement of copyright in an unpublished work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.
