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Trademark & Copyright Litigation Update – August 2021

August 18, 2021

Conflicts in the Duration of Copyright Protections Under United States and International Law


An issue that courts have not yet addressed, but which may become of increasing significance for musicians, authors, artists, their estates, and their copyright attorneys alike, is the existing conflict between the duration for copyright protections under United States and international laws.

United States law protects a copyrighted work for the life of the author plus 70 years.  17 U.S.C. § 302.  By contrast, the Berne Convention, the leading international copyright treaty, only protects copyrighted works for the life of the author plus 50 years.  The 50-year deadline under the Berne Convention is approaching, or has already passed, for an increasing number of iconic works from the 20th Century.  This ranges from the music of Jimi Hendrix and Janis Joplin (The Conundrum at the Heart of Public Domain Day 2021, WLNR 4139241, Ms. Nadia Rowe and Michal Jaworski, February 8, 2021), to written and subsequent film works of Ian Fleming, such as “James Bond.”  What Does It Mean That James Bond’s in the Public Domain in Canada?  Katharine Trendacosta, January 8, 2015

When the 50-year period under the Berne Convention expires, arguably copyrighted works enters the “public domain” in international locations while, at the same time, remaining subject to protection for a number of additional years in the United States.  The difference between this duration of copyright protection, and how it may impact the rights of copyright holders in both the United States and abroad, has not been squarely addressed to date.  However, when clients,  attorneys, and courts do face the issue, it may raise complicated questions related to ownership and the substantive rights of copyright holders.

For example, “ownership” of a work is often determined by reference to the laws of the country that has the “closest relationship to the work,” usually found to be the country where it was created.  See, e.g., Auto. Data Sols., Inc. v. Directed Elecs. Canada, Inc., 2018 WL 4742289, at *6 (C.D. Cal. Aug. 15, 2018).  And certain courts have treated the question of whether a work is in the public domain as one that turns on ownership.  E.g. Tastefully Simple, Inc. v. Two Sisters Gourmet, L.L.C., 134 F. App’x 1, 5 (6th Cir. 2005); Comedy III Prods., Inc. v. New Line Cinema, 200 F.3d 593, 595 (9th Cir. 2000).  Consider a hypothetical piece of work that was prepared in the United Kingdom in 1972, and copyrighted both in the United Kingdom and United States.  Under this precedent, an argument could be made that United Kingdom law applies to determine ownership; that under the Berne Convention, ownership expires in 2022; and, thus, that the copyright holder may no longer assert a claim for infringement, even in the United States, after 2022 when the 50-year Berne Convention period expires. 

When evaluating substantive issues such as “infringement,” by contrast, courts typically apply the laws of the country where the infringement is alleged to have taken place.  Auto. Data, 2018 WL 4742289, at *6.  Thus, for the same 1972 hypothetical piece of work, an argument could be made that in a case brought in the United States, United State law should apply and a copyright holder should be permitted to assert infringement at any time within the life of the author plus 70-year period. 

            No courts appear to have addressed this specific issue of whether, in the context of competing laws regarding the duration of copyright protection, a copyright holder’s rights either in the United States or abroad should turn on issues of ownership, infringement, or other choice-of-law principles.  However, prior precedent illustrates the principles courts may look to when faced with the issue.  For example, courts have addressed duration issues in the context of copyrighted works that span significant time frames, and expire at different points in time.  In Klinger v. Conan Doyle Estate, Ltd., the Seventh Circuit considered whether certain stories about the famed detective Sherlock Holmes could continue to be protected after the majority, but not all (46 out of 56), of these stories  had entered the public domain.  755 F.3d 496, 497 (7th Cir. 2014).  The estate of Sir Arthur Conan Doyle argued that the original characters in the 46 stories could not be lawfully copied without a license from the writer until the copyright on the later work, in which that character appears in a different form, expire.  Id. at 500.  In an opinion authored by Judge Richard Posner, the court rejected this theory: “[w]e cannot find any basis in statute or case law for extending a copyright beyond its expiration.  When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors.”  Id.  Applying similar principles, a court could find that if a copyright falls into the public domain under the Berne Convention, it can no longer be subject to protection in the United States.

            By contrast, courts and United States statutes recognize a strong policy in favor of protecting the rights of both American and foreign copyright holders.  See, e.g., Golan v. Holder, 609 F.3d 1076,  (10th Cir., 2010).  This is illustrated, for example, by Section 514(a) of the Uruguay Round Agreements Act, Codified at 17 U.S.C. Section 104A, which provides for the restoration of foreign-based copyrights that have fallen into the public domain in the United States as a result of a copyright lapse due to noncompliance with U.S. copyright formalities.  Analogizing and relying on this precedent, an argument could be made that the longer, 70-year copyright duration should apply to maximize the protection afforded to copyright holders even after the 50-year duration under the Berne Convention expires.    

            It remains unclear how this issue may be resolved if or when raised to a court, but given this uncertainty, attorneys and their clients should be cognizant of the issue in preparing copyright cases, whether on the plaintiff or defense side.  This should include a close evaluation and consideration where a work was prepared, and the merits of any potential argument that it should or should not continue to be protected, including a consideration of the policy arguments that can be made given the existing uncertainty.