Chapter 19

The International View: It's a Small World After All

Creative works and the content rights associated with them do not rest at a nation's geographic borders. The power of thought expressed in books, film, music, graphics, paintings, sculpture, and photographs transcends space and boundaries. As a result, works are exchanged throughout the world in both the original format and language and in translated versions and revised formats.

In the digital era, where …

• A student in Athens, Greece, can enroll in a distance education course from the University of Georgia in Athens, Georgia;
• An author in London, England, can e-mail the draft of her book to an editor in New London, Connecticut;
• An Internet groupie from the Philippines can post a pirated version of The Lord of the Rings days after it is released to theaters in the United States;
• An auction website can offer for international sale memorabilia otherwise banned from sale under the laws of a foreign nation;
• A teenager in Bangkok can freely download and burn a CD of her favorite music from a file of someone she does not know in Budapest;
• A factory in China can turn out thousands of musical CDs that sound like the original;
• A printer in Peru can reproduce posters and photographs using scanners and inkjet printers;
• A baseball fan can log on to a renegade Italian site, www.yankees.it, and order World Series T-shirts at a fraction of the Major League Baseball price;…

one can appreciate that the commerce of copyrighted and trademarked works circles the globe.

A world in which rules of different countries apply unevenly is no longer fair for authors or users. The code word for creating international fairness is harmonization: If nations can harmonize their laws of copyright and trademark— establish shared, common principles that permit only a limited number of special exceptions in local environments—then an efficient expansion of commerce in works of intellectual property in a digital world can be achieved.

The Berne Convention: The International Copyright Standard

For centuries, nations organized compacts based on shared principles. In the area of copyrights and trademarks, such agreements have been around for more than 100 years. These agreements (treaties or conventions) and their organizing institutions serve as the basis on which most national laws are structured. The grand-daddy of copyright treaties is the Berne Convention, on which we touched briefly in earlier chapters. The Berne Convention was inspired by Victor Hugo and the French intellectuals of the mid-19th century, who believed the individual author was being denied fair economic return on the fruits of his or her creativity. While it has been updated numerous times in the past 130 years, the Berne Convention has certain core principles, many of which sound familiar from our discussion of the U.S. Copyright Act:

• A definition of specific rights. Authors must be allowed to control certain key uses of their works. These include copying, public performance, public rental, public communication, and public distribution of their works.
• A minimum term of protection. The convention ensures that authors enjoy certain exclusive rights to their works for a minimum number of years, currently life of the author plus 50 years. All countries that belong to the Berne Convention may grant protection for a longer term; however, none can allow a shorter term. Today, the European and U.S. standard is life of the author plus 70 years.
• No formalities. An important principle of the Berne Convention is that no formalities should impede an author's entitlement to copyright protection. In particular, the former U.S. standards saying that each published work must have a proper copyright notice and be registered with the Copyright Office were contrary to this precept of the Berne Convention.
• Limited exceptions to rights for public purposes. As to limitations on rights, the Berne Convention recognizes free uses for education and news. The U.S. doctrine of fair use has been viewed as broader than the exceptions spelled out in the Berne Convention.
• Fair treatment of foreigners. Central to the Berne Convention and most international conventions is the principle that national laws should treat all persons equally, irrespective of where they live. Therefore, the Berne Convention requires all its signatory nations to treat the works of foreigners in the same manner as works of its own citizens. Put another way, a French citizen trying to protect his book from unauthorized copying in Spain should be treated no differently than a Spaniard would be treated.
• National treatment. An understanding of the Berne Convention is that nations are allowed reasonably to interpret or apply the obligations of the treaty in their own manner. This is not to say that signatories to a treaty can ignore their commitment to basic terms; rather, it means that precisely how the commitment is implemented may vary on a nation-by-nation basis. When the United States formally joined Berne, it required a ruling from the administrative agency for the treaty confirming that terms of U.S. law were consistent with the obligations of the Berne Convention. In recent and ongoing debates about digital copyright provisions, a common argument of representatives of owners against certain exceptions espoused by representatives of users (particularly those seeking new compulsory licenses, which are not formally recognized by the Berne Convention) is that any limitation on the broad grant of rights to owners is contrary to the Berne Convention and therefore not to be countenanced.
• Droit de suite. This right is the concept that an author's interest in a work remains even after the work has been sold. Under this principle, artists are entitled to share in the appreciated value of paintings and other artwork as a result of sales long after the creator sold his original work. This provision is one of the few Berne Convention sections that is optional, not mandated on all member states. Only if the nations where the artwork is bought and sold provide for such remuneration is the requirement enforced. If one of the two affected countries (assuming a sale across national boundaries) has not adopted a droit de suite provision, then the other nation need not enforce it in favor of the foreign national.
• Droit moral. Perhaps the signature principle of the Berne Convention is droit moral, or moral rights. Simply stated, the concept is that, aside from the economic interests an author has to exploit and benefit from a copyrighted work, there are noneconomic interests that should also be protected. Most particularly, an author's honor and reputation are deemed part of his or her creative endeavors, and the artist and his or her heirs should be entitled to protect that honor from the degradation that occurs when an original work is altered. We have more to say about moral rights in Chapter 25 in connection with the discussion of the prominent debate on the virtues and vices of colorizing black-and-white movies. Moral rights are implicated whenever digital alterations are made to copyrighted materials by someone other than the original author.
• World International Property Organization (WIPO). The Berne Convention is administered by WIPO. While not a judicial body governing copyright, WIPO provides practical and logistical support for the international harmonization of copyright rules. WIPO also is involved with most other intellectual property conventions, including trademarks and patents.

The United States Joins the Berne Convention after More Than a Half-Century of Debate

The headline in 1988 was that, after more than 50 years of sometimes polite, sometimes heated debate, the United States finally joined the Berne Convention. It had been ironic that the United States, the 20th century's leading exporter of copyrighted works, resisted joining the preeminent international convention. What was the problem, and how did things change?

The two biggest drawbacks of the Berne Convention were the absence of formalities and the presence of moral rights. The lack of prerequisites for obtaining a copyright was fundamentally at odds with the U.S. system, which relied on notice, registration, and renewal to organize its copyright system. Without a copyright notice, how would one know who held the right and for how long? Without registration and statutory renewal (which required the filing of a copy with the Library of Congress), how would one prove what the work was and what was the proper term of protection? Most nations of the world did not need these requirements, and they were able to enforce rights. So, starting with the major reform in the mid-1970s, the U.S. copyright law was amended to pave the way for the United States joining the convention.

Moral rights was a different story. The U.S. film production and software and print publishing industries, in particular, have relied on the concept of work for hire to maintain tight control over the public distribution of works. Their argument was that control was needed to recoup the financial investment in producing the work and make a profit. If an individual author could object to the way a film was released, a magazine edited, or a software program designed, not only could an investment be jeopardized, but profit could be lost. The solution for this concept came down to a sleight of hand; a legal analysis waved a wand and found that U.S. law as a whole (including copyright and the derivative right, trademark and Section 43(a), laws of defamation and slander, privacy, and publicity) provided the equivalent of moral rights. With a rationale embraced by Congress and WIPO, moral rights proved no longer an obstacle to U.S. passage of the Berne Convention.

On the other side of the ledger, the benefits of the United States joining Berne were substantial. The Berne Union was a ready-made institutional base for fighting piracy of film, software, and other digital content on a worldwide scale. Also, if the Berne Convention could be revised over time to harmonize with U.S. copyright principles (rather than the United States changing its core concepts), then the intellectual property of the United States could be transported to countries of the world, safe in the knowledge that the principles of protection embedded in American law were embraced elsewhere. With this goal in mind, in 1988 copyright owners broke with their past reluctance and pushed U.S. leaders in Congress and the government to accept the Berne Convention.

Eight years later, the United States led a WIPO-organized diplomatic conference to consider and ultimately adopt amendments to the Berne Treaty that became the basis for the DMCA and copyright reform in countries around the world (see Chapter 9).

While the influence of U.S. copyright principles within the Berne Union is substantial, there are other pressures for reform. For example, in 1999 a new treaty granting rights to performers (actors, musicians, and speakers) control over exploitation of their performances, much like composers and lyricists when their music is heard on radio stations. However, the Berne Union's adoption of a performer's right is optional for member states.

Also on the Berne agenda are matters of greater concern to less developed nations, like the proper treatment of folklore and aural works, but what is really important here is that the debate on copyright rights takes place on a world stage, and as the Berne Convention becomes universal, authors will be guaranteed control of their works and compensation for use of their creations no matter where it occurs.

Trademark Treaties: Paris, Nice, and Madrid

In trademark law, as in copyright, international treaties govern common standards. For trademark aficionados, the key conventions sound like cities in a sequel to Chevy Chase's movie European Vacation—Paris, Nice, and Madrid.

The Paris Convention dates back to 1883 and covers common standards for both trademark and patent laws. The principles in the Paris Convention are evident within the U.S. law, notably (1) a system of public registration, based on the principle of uniqueness and lack of confusion with other marks, which grants protection in classes of goods and services for a term of years, and (2) foreign nationals, whose mark is registered in one country, can apply for registration in a member state even without using the mark in that country.

In 1972, the United States took another important step in the internationalization of its trademark laws when it agreed to the Nice Convention Regarding Classification of Trademarks. The Nice Convention organizes and categorizes trademarks into 42 classes of goods and services. While the original U.S. classification scheme had over 100 different classifications, the Nice classification establishes broader categories with refinement within these categories. In a world made small by instant communications and economic treaties opening markets to trading of goods and services, the Nice system assures that the trademarks that apply cross-borders will have common definitions. Such uniformity supports efforts to clamp down on counterfeit goods and pirated services.

The dream of a single, international system for the protection of trademarks is embodied in the Madrid Agreement Concerning International Registration of Trademarks. Under the Madrid Convention, applying for registration in one country can result in the designation and protection of marks in other member countries. Often debated in U.S. Congress, the United States has thus far refused to join a unitary international system. The United States stands committed to a significant degree of international trademark standardization, but the ability to regulate trademarks on a national basis remains a core part of our intellectual property policy.

A single registration system was adopted by more than a dozen European countries in the mid-1990s, when the European Union implemented a Community Trademark Application (CTA) procedure. By filing a single application, the prospective registrant can obtain simultaneous protection in all 15 participating countries; another 12 candidate countries are in the process of negotiating to be included. (The 15 current participants are Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, The Netherlands, Portugal, Spain, Sweden, and United Kingdom. The 12 candidate countries are Bulgaria, Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Romania, Slovakia, and Slovenia.) One filing for all these nations—quite a bargain. But the strategy of filing only one application is not always the best. It turns out that processing a CTA can take longer than the prosecution of an application in some of the participating countries. If one only needs protection in France, it may make sense simply to file for protection only in France. Further, because a registration review is conducted in the registries of all the nations, if only one country's registry poses a barrier to registration, the CTA will be denied, even though the trademark may be technically clear in all the remaining countries. If separate applications were filed, the protections would accrue in each of those cleared nations. In short, if one had a responsible search done in advance, the risks or benefits of a CTA could have been compared to the one-country-at-a-time approach, and the best result more effectively assessed.

Having covered the laws of copyright and trademark, as well as some of the collateral domestic and international concerns, we now turn in our next two parts to a focused discussion of content rights in established and new media. How do these rules work out in practice for the creative professional? Let's see.