Federal Courts in CA, VA Consider Int'l Copyright Laws

To what extent does a foreign country's copyright law affect infringement litigation in the United States? Federal district courts in California and Virginia recently considered different aspects of this issue.

California

In the California federal case, Osama Fahmy filed an infringement suit against artists Jay-Z and Linkin Park, among other defendants, over use of the music “Khosara, Khosara” ' written in the 1950s and registered in Egypt by Fahmy's late uncle, Baligh Hamdy ' in the rap recording “Big Pimpin'” and in a DVD of Jay-Z and Linkin Park performing “Big Pimpin'/Papercut” in concert. The defendants claimed to have obtained a license to use the Hamdy music through EMI Music Arabia, which obtained rights through a chain of title that began with Hamdy.

Fahmy argued that “[u]nder Egyptian copyright law, 'moral rights' in a musical composition, like 'Khosara, Khosara' include the right to make derivative works, the right to make new arrangements, the right to synchronize the composition with images or moving pictures, and the right to make any other fundamental alteration of the composition.” Fahmy further claimed that “'moral rights are perpetual, inalienable, and imprescriptable,'” under Egyptian law, that though “'the author can assign or transfer any or all of his economic rights, a disposition of any of the moral rights is null and void.'” (The plaintiffs were quoting 1 Copyright Throughout the World '14:20 (Thomson Reuters).)

But the U.S. District Court for the Central District of California decided that the right to license adaptations of a copyrighted work exists independently of moral rights under Egyptian law. Fahmy v. Jay-Z, 07-5715. District Judge Christina A. Snyder noted that the defendants' expert, Ahmed Y. Zohny, had stated that “Egypt's IP Law of 2002, in Articles 143, 145 and 147, clarifies the distinction between inalienable moral rights and fully transferable economic rights, which once again, as in the Berne Convention, include economic rights equivalent to the various exclusive rights under U.S. law, including reproduction, adaptation and translation. Moreover, as [the plaintiffs' expert] acknowledged at his deposition, even under Egypt's earlier 1954 law, blanket statements regarding an author's right to prevent 'modifications' or 'changes' to a work refer to the author's moral rights, not financial rights.”

The district judge then found “a triable question of fact otherwise exists with respect to the scope of the grant [in the license to the defendants]. In making this determination, a jury can consider whether the grant was specific enough under Egyptian law.”

Virginia

In the Virginia federal case, U.S. distributors of Korean-language TV programs sued video stores over alleged unauthorized sales of the shows. The U.S. District Court for the District of Virginia noted that “plaintiffs have submitted several binders containing thousands of certificates of registration with the United States Copyright Office covering the precise works at issue here.” The defendants moved for summary judgment by arguing that the plaintiffs nevertheless hadn't established exclusive rights in the programs. The U.S. District Court for the District of Virginia denied the motion.

Section 410(c) of the Copyright Act provides a presumption of valid ownership to works that are timely registered. On the defendants' motion for reconsideration, District Judge Leonie M. Brinkema pondered the interplay of '410(c) with foreign copyright law. Seoul Broadcasting System International Inc. v. Ro, 1:09cv433. Judge Brinkema noted that “there simply is no binding precedent in this District as to whether the presumption in 17 U.S.C. '410(c) applies to works that were produced outside of the United States but later registered with the United States Copyright Office, or whether that presumption is irrelevant because only the law of the situs of creation controls. That matter is currently an open question of law in the Fourth Circuit [within which the Virginia district court resides]. However, for the purposes of the instant case, this Court need not definitively resolve that question, as the plaintiffs have submitted ample proof of their ownership of the works in question under either United States or Korean copyright law.”

The district judge added: “Defendants attempt to confuse the issue by claiming that the works can only be protected as 'works for hire,' and that the specific requirements of the 'work for hire' doctrine have not been met under Korean copyright law. However, even under Korean law, plaintiffs need not prove that the works were works made for hire so long as they can show exclusive ownership rights through some other means or via some other doctrine of copyright ownership. And in this case, plaintiffs have provided more than sufficient proof of such ownership, by producing written agreements with production companies and with their parent corporations in Korea in which the plaintiffs were granted exclusive licenses or were assigned the rights to the asserted works, including the right to sue to enforce the works' copyright protections.”

To what extent does a foreign country's copyright law affect infringement litigation in the United States? Federal district courts in California and Virginia recently considered different aspects of this issue.

California

In the California federal case, Osama Fahmy filed an infringement suit against artists Jay-Z and Linkin Park, among other defendants, over use of the music “Khosara, Khosara” ' written in the 1950s and registered in Egypt by Fahmy's late uncle, Baligh Hamdy ' in the rap recording “Big Pimpin'” and in a DVD of Jay-Z and Linkin Park performing “Big Pimpin'/Papercut” in concert. The defendants claimed to have obtained a license to use the Hamdy music through EMI Music Arabia, which obtained rights through a chain of title that began with Hamdy.

Fahmy argued that “[u]nder Egyptian copyright law, 'moral rights' in a musical composition, like 'Khosara, Khosara' include the right to make derivative works, the right to make new arrangements, the right to synchronize the composition with images or moving pictures, and the right to make any other fundamental alteration of the composition.” Fahmy further claimed that “'moral rights are perpetual, inalienable, and imprescriptable,'” under Egyptian law, that though “'the author can assign or transfer any or all of his economic rights, a disposition of any of the moral rights is null and void.'” (The plaintiffs were quoting 1 Copyright Throughout the World '14:20 (Thomson Reuters).)

But the U.S. District Court for the Central District of California decided that the right to license adaptations of a copyrighted work exists independently of moral rights under Egyptian law. Fahmy v. Jay-Z, 07-5715. District Judge Christina A. Snyder noted that the defendants' expert, Ahmed Y. Zohny, had stated that “Egypt's IP Law of 2002, in Articles 143, 145 and 147, clarifies the distinction between inalienable moral rights and fully transferable economic rights, which once again, as in the Berne Convention, include economic rights equivalent to the various exclusive rights under U.S. law, including reproduction, adaptation and translation. Moreover, as [the plaintiffs' expert] acknowledged at his deposition, even under Egypt's earlier 1954 law, blanket statements regarding an author's right to prevent 'modifications' or 'changes' to a work refer to the author's moral rights, not financial rights.”

The district judge then found “a triable question of fact otherwise exists with respect to the scope of the grant [in the license to the defendants]. In making this determination, a jury can consider whether the grant was specific enough under Egyptian law.”

Virginia

In the Virginia federal case, U.S. distributors of Korean-language TV programs sued video stores over alleged unauthorized sales of the shows. The U.S. District Court for the District of Virginia noted that “plaintiffs have submitted several binders containing thousands of certificates of registration with the United States Copyright Office covering the precise works at issue here.” The defendants moved for summary judgment by arguing that the plaintiffs nevertheless hadn't established exclusive rights in the programs. The U.S. District Court for the District of Virginia denied the motion.

Section 410(c) of the Copyright Act provides a presumption of valid ownership to works that are timely registered. On the defendants' motion for reconsideration, District Judge Leonie M. Brinkema pondered the interplay of '410(c) with foreign copyright law. Seoul Broadcasting System International Inc. v. Ro, 1:09cv433. Judge Brinkema noted that “there simply is no binding precedent in this District as to whether the presumption in 17 U.S.C. '410(c) applies to works that were produced outside of the United States but later registered with the United States Copyright Office, or whether that presumption is irrelevant because only the law of the situs of creation controls. That matter is currently an open question of law in the Fourth Circuit [within which the Virginia district court resides]. However, for the purposes of the instant case, this Court need not definitively resolve that question, as the plaintiffs have submitted ample proof of their ownership of the works in question under either United States or Korean copyright law.”

The district judge added: “Defendants attempt to confuse the issue by claiming that the works can only be protected as 'works for hire,' and that the specific requirements of the 'work for hire' doctrine have not been met under Korean copyright law. However, even under Korean law, plaintiffs need not prove that the works were works made for hire so long as they can show exclusive ownership rights through some other means or via some other doctrine of copyright ownership. And in this case, plaintiffs have provided more than sufficient proof of such ownership, by producing written agreements with production companies and with their parent corporations in Korea in which the plaintiffs were granted exclusive licenses or were assigned the rights to the asserted works, including the right to sue to enforce the works' copyright protections.”