Posted on 11/01/2000
In Intellectual Property
by Robert W. Clarida
Not so long ago, the public domain was a land of no return: when a copyrighted work became public property, whether because of a technical error or simple old age, the owner could never recover it. On December 8, 1994, however, President Clinton signed the Uruguay Round Agreements Act, P.L. 103-465, (“the Act”) which was the implementing legislation for the international trade agreement known as GATT (General Agreement on Tariffs and Trade). There were three substantive copyright provisions in the Act, but by far the most controversial was one added as 17 U.S.C. § 104A, which automatically restored copyright in thousands, if not millions, of foreign works which had previously been in the public domain in the U.S. Works of U.S. origin do not benefit from the Act.
Works covered by the Act were restored to copyright automatically on January 1, 1996. The owners need not make any filing or take any other action to re-activate their copyrights. The works will be restored to the term they would have had if the works had not entered the public domain in the U.S. For example, if a work was in the public domain because it was published without notice in 1974, it would be restored for the remainder of its first term, i.e., three more years would remain in the first 28-year term, followed by an automatic 67 year renewal term. If a work was first published without notice in 1935, it would be protected as if it had been timely renewed, and the expiration date would be December 31, 2030 (1935 + 95 = 2030).
What Works Are Entitled to Restoration?
The statute defines a “restored work” as an original work of authorship that is not in the public domain in its source country due to expiration of term, but is in the public domain in the U.S. due to:
(a) noncompliance with U.S. formalities, including failure to renew, lack of proper notice, or noncompliance with manufacturing requirements
(b) lack of subject matter protection in the case of sound recordings fixed before February 15, 1972;
(c) lack of national eligibility when first published;
and which has at least one author or rights holder who was, at the time of creation, a national or domiciliary of a country which is a member of the Berne Convention (“Berne”) or the World Trade Organization (“WTO”). If the work is published, it must have been first published in a Berne or WTO country and not published in the U.S. during the 30 days following publication in such country.
Who Owns the Restored Copyright?
Ownership of the restored copyright vests initially in the author, or “rights holder” (in the case of sound recordings), as determined by the law of the source country of the work. If the author or initial rights holder at any time licensed, assigned or otherwise disposed of an exclusive or non-exclusive interest in the copyright, that disposition is to be given effect according to the terms of the agreement.
How Can the Restored Copyright Be Enforced?
Enforcement of the newly-restored copyrights differs, depending on whether the owner seeks to enforce it against a new infringer or against a so-called “reliance party.” Against new infringers, who acquired or began exploiting the restored work after January 1, 1995, a restored copyright is indistinguishable from any other copyright and the owner has exactly the same rights and remedies as with any other protected work.
Parties who began exploiting the restored work prior to January 1, 1995, or who prepared a derivative work prior to that date, are termed “reliance parties” under the Act. Against reliance parties, the owner of the work must file a Notice of Intent to Enforce the restored copyright (“NIE”). If the owner of the restored work filed an NIE with the Copyright Office during 1996 or 1997, that filing constitutes constructive notice against any reliance party, known or unknown. If no such filing was made, actual notice may be served on a particular reliance party at any time.
Upon receiving notice, whether directly or through the Federal Register, the reliance party must cease reproducing the restored work. The reliance party may continue to sell off stock of the work, however, or publicly perform or display the work, for twelve months after the receipt of notice. An additional provision is made for reliance parties who exploit derivative works based on or incorporating the restored works, where the derivative work was created prior to January 1, 1995. After the twelve month grace period has expired, these parties may continue to exploit their derivative works for the entire duration of the restored copyright, upon payment of “reasonable compensation” to the owner of the work, to be determined by agreement of the parties.
© 2000 Cowan, Liebowitz & Latman, P.C.
This the information provided in this article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult with a lawyer concerning your own situation and any specific legal questions you may have.