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February 18, 1999


The opinion of the court was delivered by: Kaplan, District Judge.


On November 13, 1998, this Court granted defendant's motion for summary judgment dismissing plaintiff's copyright infringement claim on the alternative grounds that the allegedly infringed works — color transparencies of paintings which themselves are in the public domain — were not original and therefore not permissible subjects of valid copyright and, in any case, were not infringed.*fn1 It applied United Kingdom law in determining whether plaintiff's transparencies were copyrightable.*fn2 The Court noted, however, that it would have reached the same result under United States law.*fn3

Following the entry of final judgment, the Court was bombarded with additional submissions. On November 23, 1998, plaintiff moved for reargument and reconsideration, arguing that the Court erred on the issue of originality. It asserted that the Court had ignored the Register of Copyright's issuance of a certificate of registration for one of plaintiff's transparencies, which it takes as establishing copyrightability, and that the Court had misconstrued British copyright law in that it failed to follow Graves' Case,*fn4 which was decided in the Court of Queens Bench in 1869.*fn5 At about the same time, the Court received an unsolicited letter from Professor William Patry, author of a copyright law treatise, which argued that the Court erred in applying the law of the United Kingdom to the issue of copyrightability. Plaintiff then moved for an order permitting the filing of an amicus brief by one of its associates, The Wallace Collection, to address the United Kingdom law issue. The Court granted leave for the submission of the amicus brief and invited the parties to respond to Professor Patry's letter. The matter now is ripe for decision.

At the outset, it is worth noting that the post-judgment flurry was occasioned chiefly by the fact that the plaintiff failed competently to address most of the issues raised by this interesting case prior to the entry of final judgment. In particular, while plaintiff urged the application of U.K. law, it made no serious effort to address the choice of law issue and no effort at all (apart from citing the British copyright act) to bring pertinent U.K. authority to the Court's attention before plaintiff lost the case. Indeed, it did not even cite Graves' Case, the supposedly controlling authority that the Court is said to have overlooked.*fn6

Everything plaintiff has submitted on this motion should have been before the Court earlier, which is more than sufficient reason to deny its motion as an unwarranted imposition on the Court and, indeed, its adversary. The issues, however, are significant beyond the immediate interests of the parties. Accordingly, the Court will address them on the merits.

Choice of Law

Professor Patry argues principally that there can be no choice of law issue with respect to copyrightability because the Copyright Clause of the Constitution*fn7 permits Congress to enact legislation protecting only original works of authorship. In consequence, he contends, only original works, with originality determined in accordance with the meaning of the Copyright Clause, are susceptible of protection in United States courts.

Of course, the ability of Congress to extend the protection of copyright is limited by the Copyright Clause. Nevertheless, the constitutional issue is not as straightforward as Professor Patry suggests. Bridgeman claims that the infringed works are protected by United Kingdom copyrights and that the United States, by acceding to the Convention for the Protection of Literary and Artistic Works, popularly known as the Berne Convention,*fn8 and the Universal Copyright Convention*fn9 and by enacting the Berne Convention Implementation Act of 1988 (the "BCIA"),*fn10 agreed to give effect to its United Kingdom copyrights.

The fact that plaintiff's rights allegedly derive from its claimed British copyrights arguably is material. Granting Professor Patry's point that Congress, in light of the originality requirement of the Copyright Clause, in ordinary circumstances may not extend copyright protection to works that are not original, the questions remain whether (1) the United States constitutionally may obligate itself by treaty to permit enforcement of a foreign copyright where that copyright originates under the law of a signatory nation which does not limit copyright protection to works that are original in the sense required by the United States Constitution and, if so, (2) the United States in fact has done so. Thus, Professor Patry's contention that the United States may not apply foreign law less restrictive than its own with respect to originality may be too narrow because it rests exclusively on the Copyright Clause. The legal effect and constitutionality of treaties also is implicated.

Article II, Section 2, of the Constitution provides that the President "shall have Power, by and with the Advice and Consent of the Senate, to make Treaties, provided two thirds of the Senators present concur." Treaties, by virtue of the Supremacy Clause, join the Constitution and federal statutes as "supreme law of the land."*fn11 As the Supreme Court wrote in Geofroy v. Riggs:*fn12

  "The treaty power, as expressed in the Constitution,
  is in terms unlimited except by those restraints
  which are found in that instrument against the action
  of the government . . ., and those arising from the
  nature of the government itself and the States. It
  would not be contended that it extends so far as to
  authorize what the Constitution forbids, or a change
  in the character of the government or in that of one
  of the States, or a cession of any portion of the
  territory of the latter, without its consent . . .
  But with these exceptions, it is not perceived that
  there is any limit to the questions which can be
  adjusted touching any matter which is properly the
  subject of negotiation with a foreign country."*fn13

And while it now is clear that the treaty power is "subject to the constitutional limitations that apply to all exercises of federal power, principally the prohibitions of the Bill of Rights,"*fn14 the treaty power retains considerable scope.

The Copyright Clause and the Copyright Act both recognize that the United States has an important interest in protecting the intellectual property of its citizens and of those whose creative efforts enrich our lives. In this increasingly interconnected world, securing appropriate protection abroad also is important. Hence, it cannot seriously be denied that international copyright protection is "properly the subject of negotiation with" foreign countries.

Decades ago, the Supreme Court held in Missouri v. Holland*fn15 that Congress could enact legislation necessary and proper to the implementation of a treaty which, absent the treaty, would have been beyond its powers. Although the case arose in a different context,*fn16 it suggests that the Conventions, if their purported effect actually is to permit enforcement in the United States of foreign copyrights which do not meet U.S. standards of originality — in other words, if they require enforcement here of any copyright valid under the law of the signatory nation in which copyright attached, even if that copyright does not meet U.S. standards of validity — would not be obviously invalid.

In view of these considerations, the proposition advanced by Professor Patry — that the Copyright Clause forecloses any choice of law issue with respect to the validity of a foreign Berne Convention work, is not free from doubt. It is necessary to decide that question, however, only if the Conventions require application of foreign law in determining the existence of copyright and, if so, whether there is any true conflict of law in this case on that point.

In most circumstances, choice of law issues do not arise under the Berne and Universal Copyright Conventions. Each adopts a rule of national treatment.*fn17 Article 5 of the Berne Convention, for example, provides that "[a]uthors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this convention" and that "the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed."*fn18 Hence, the Conventions make clear that the holder of, for example, a British copyright who sues for infringement in a United States court is entitled to the same remedies as holders of United States copyrights and, as this Court previously held, to the determination of infringement under the same rule of law.

While the nature of the protection accorded to foreign copyrights in signatory countries thus is spelled out in the Conventions, the position of the subject matter of copyright thereunder is less certain. Do the Conventions purport to require signatory nations to extend national treatment with respect to such enforcement-related subjects as remedies for infringement only where the copyright for which protection is sought would be valid under the law of the nation in which enforcement is sought? Or do they purport to require also that a signatory nation in which enforcement is sought enforce a foreign copyright even if that copyright would not be valid under its own law?*fn19 But there is an even more fundamental issue, viz. whether United States courts may give effect to any provisions of the Conventions which might require or suggest that the existence of copyright be determined under the law of another nation.

Although the Supreme Court has not yet decided the point, it seems quite clear at this point that the Berne Convention is not self-executing.*fn20 Section 3(a) of the ...

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