No statutory damages for unregistered foreign copyright works in US

Copyright holders who wish to enforce their copyright in the US take note — you may be required to register in order to receive statutory damages in the US. This revelation comes after the US District Court ruled that unregistered foreign works were not entitled to statutory damages under the US Copyright Act.

In the long running class action brought by the Football Association Premier League Ltd and others (the plaintiffs) against YouTube and Google (the defendants) for allowing copyright infringement to take place via the YouTube website, US District Court Judge Louis Stanton agreed with the defendants that the plaintiffs’ claim for statutory and punitive damages should be dismissed.

The defendants argued that section 412 of the US Copyright Act, which prevented statutory damages from being awarded to unregistered works, meant that the plaintiffs were not entitled to bring an action to get damages for the infringement of their foreign unregistered works. The plaintiffs argued that they were exempt from this provision, as the effect of international conventions (the Bern Convention and TRIPs) meant that they did not need to register their works to receive protection. Judge Stanton held that the terms of section 412 did not exclude foreign works from its effect, that the section did not breach the conventions and, even if they did, US law would prevail.

Judge Stanton also held that “there is no circumstance in which punitive damages are available under the Copyright Act of 1976“.

However, not everything went Google and YouTube’s way. Judge Stanton allowed the plaintiffs to amend their Statement of Claim to argue that they were entitled to statutory damages under section 411(c) of the Act, which allows damages to be granted in the case of live broadcasts when potential infringers have been notified beforehand.

This action, and the related litigation between Viacom and Youtube, will go some way to resolving the question of whether content sharing sites are liable for authorising copyright infringement by their users. It will also outline the extent of the protection provided by the Safe Harbour provisions in the US Digital Millennium Copyright Act and may therefore play a role in the Australian Government’s current review and proposed extension of the equivalent Australian protections.

The trial date has not yet been set for this case.

For the full decision, see here.

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