Category Archives: Copyrights

Supreme Court Allows Congress to Take Works Out of the Public Domain

It is now necessary to check copyright status of foreign origin works in order to avoid copyright infringement. Many works that were free to use are now back in copyright. In a January 18, 2012 decision1, the Supreme Court upheld a law, the URAA2, that takes many foreign origin works out of the public domain. The law restores copyrights in the United States on all works that were still in copyright in their countries of origin as of January 1, 1996. The law is the United States’ implementation of a section of a treaty3 that seeks to equalize international recognition of copyrights among 162 countries.

Classic movies that were formerly in the public domain include Metropolis (1927), Things to Come (1936) from the H.G. Wells novel, and The Third Man (1949). They are now back in copyright. The music of Igor Stravinsky which had formerly been in the public domain is now in copyright in the United States.

The Court, in effect, said that the Constitution gave Congress the right to do pretty much as it pleases with respect to copyright law. The petitioners, people and entities, had been using works that were in the public domain. The decision has left them with a situation in which they must abandon investments in enterprises which were perfectly legitimate expressions of First Amendment speech. The lower court had found that, “Congress could have complied with the Convention without interfering with Plaintiffs’ protected speech.” Many in the legal community feel that the Supreme Court allowed Congress to exceed its Constitutional authority. Apparently, ideology played no part in the result. The opinion was written by Ginsburg and joined in by Scalia. The dissent was written by Breyer and joined in by Alito.

Exercise caution. We do not yet know how intense the avalanche of copyright infringement suits will be.

1. Golan v. Holder, Case No. 10–545, January 18, 2012, 565 U.S. ___ (2012)

2. Uruguay Round Agreements Act (URAA), 17 U.S.C. 104A (1994), URAA §514

3. Berne Convention for the Protection of Literary and Artistic Works, September 9, 1886, as last revised at Paris on July 24, 1971, 1161 U.N.T.S. 30



Copyright in the Arts – a program by Continuum Law on December 2, 2011 in the San Diego County Law Library series.


Friday, December 2, 2011 from 12:00 PM to 1:00 PM At Procopio Cory, 525 B Street, Suite 2200. San Diego, CA. Non-attorneys are welcome.

This course will enable the non-copyright specialist to better understand what copyrights are and what copyrights can do for clients in the arts. It will address the strategic advantage of copyright registration, exploiting different rights in one work, and how to make agreements so that both creators and buyers will know who will own what. 1 hour General Participatory MCLE credit.

About the Speaker: Robert Cogan is Principal Attorney at Continuum Law in San Diego. In the course of his extensive experience, he has had responsibility for the worldwide patent, trademark, and copyright portfolios of public companies and for protecting rights of software companies. He also works with individual artists in visual arts, web design, and music. Mr. Cogan received his law degree from the George Washington University National Law Center.

Copyright Registration as a Strategic Tool

“Statutory damages” is a remedy that strengthens the hand of copyright owners against infringers. Infringers may take advantage of the difficulty, expense, and delay of having to file suit to use as a bargaining chip. Statutory damages decrease the value of this bargaining chip, and can help a copyright owner reach a desired result without having to file suit.

In a copyright suit, the copyright owner must prove copying and must also prove economic loss. The connection of the owner’s loss to the infringer’s actions must be demonstrated. The amount of loss must be proven. The accounting method used and many other factors may be raised by the infringer to “muddy the waters.” Each additional complication adds to the cost of proving damages. Once a case is completed, appeals are possible based on the calculation of damages.

If the copyright owner has qualified to seek statutory damages, only copying need be proved. The legal requirements for proof are comparatively well defined. In the absence of special circumstances, the award ranges from $750 to $30,000, in the court’s discretion, for each work infringed. The number of copyrighted works infringed, not the number of copies, determines the amount of statutory damages. However, if infringement is willful, the award may be increased to a maximum of $150,000. Demonstrating that the infringement is innocent may reduce the award to as low as $200.

The court has discretion to award attorney’s fees to the prevailing party. A copyright owner seeking statutory damages is more likely to be a prevailing party. The infringer runs a greater risk of having to pay attorney’s fees. Increased liability exposure may encourage an infringer to compensate the copyright owner without the necessity of a suit. Even if suit is necessary, it will be simpler and less expensive. There have been situations in which an infringer capitulated early on.

Statutory damages are available when a copyright is registered prior to the infringement. The statue says when the registration application must be filed. It is simplest and most reliable to file a copyright registration application on a work when the work is published. Prompt registration provides a copyright owner a much stronger position against future infringers.

Copyright registration is accomplished by filing the appropriate application. Different types of works, e.g., text, three-dimensional works, or music, require different application forms, each requiring a filing fee of $35.00 – $65.00.  Consultation with counsel may help in making strategic choices such as deciding how many items to include in one registration application.

Many copyright owners have sought advice of counsel after discovering infringement only to find out that their options were limited. The relatively low-cost of copyright registration at the time of publishing can strengthen the copyright owner’s legal position when infringement is later discovered.