Part 31

With some six months of background behind us, its time to put on our oxygen masks, break Camp VII, and go for the summit: Capitol v. Naxos. But first, there is one ridge to traverse: ITAR-TASS News Agency v. Russian Kurier, a case from 1998. The details are not terribly relevant: the giant quasi-national Russian news bureau TASS accused Kurier, a Brooklyn-based Russian-language weekly newspaper with a circulation of about 20,000, of copying its material. The only really relevant facts were: 1) the TASS material originated in Russia; and, 2) the infringement, if any, took place in Brooklyn. Almost every aspect of the case turned on whether Russian or American copyright law should apply. The trial court had determined that Russian copyright law should apply—sort of.

Under the Berne Convention, an author of one member state is entitled to the same copyright protection in all other member states as in one’s home nation. Despite this, the conventional wisdom was that of David Nimmer (Melville’s son), who said that “the applicable law is the copyright law of the state in which the infringement occurred,” not the author’s home or the place where the work was first published. Judge Newman, who wrote the appellate opinion, was unhappy with both the trial court and Nimmer’s formulation because it didn’t break “applicable law” down into its (supposedly) two components: ownership and scope of rights.

Normally, one would think that Russian law should be applied, because, as the Berne Convention states, a work should be treated in the U.S. as in Russia. Not so, according to Newman. He ruled that “the treaty does not supply a choice of law rule for determining ownership [of an intellectual property].” Thus, the choice of law rule defaults to that of the jurisdiction where the court sits, i.e. the United States. The general rule under U.S. law is that the jurisdiction with “the most significant relationship to the persons and parties” determines the law to be used. Again, Russian law. Again, not so fast. The court declared an exception: if one has “an exclusive right under a copyright” pursuant to section 501(b) of the 1976 Copyright Act, “including one determined according to foreign law,” then American law shall be used.

But wait. Section 501(b) is the basic “standing” requirement under the Copyright Act. Unless one can meet that condition directly (holding an American copyright) or indirectly (holding a foreign copyright of a fellow Berne Convention member), the minimum threshold for bringing suit in federal court is not satisfied, and one’s case will be dismissed at the start. Judge Newman had created a clever Catch-22: if you can’t meet section 501(b), you can’t get in the door of the courthouse for lack of standing; and if you can, your ownership will be determined by American law because anything that meets 501(b) is an exception to the general choice of law rule. Newman went through an elaborate ritual of applying Russian law, but the criteria under section 501(b) is that one must be a legal or beneficial owner of an exclusive right under a copyright, and Newman determined that nothing under Russian law gave anything comparable to American exclusive copyrights to newspaper publishers. In other words, the issue wasn’t whether the newspaper articles were protected under Russian law, but whether the Russian newspapers had standing to be in an American court.

Frankly, the entire line of argument was nothing but an elaborate way of justifying the Nimmer Rule: “The applicable law is the copyright law of the state in which the infringement occurred, not that of the state of which the author is a national, or in which the work is first published.” One might also add: “the Berne Convention be damned.”

To be continued…