Publication used to be a critical concept in copyright. Until the 1976 Act, it served as the dividing line between state law protection (for unpublished works) and federal protection (limited to published works generally; cf. Section 12 of the 1909 Act, permitting registration for unpublished works copies of which weren’t sold). The courts, ever inventive, developed rules for this rubicon, in particular “investitive publication,” meaning a publication with a proper notice that resulted in the obtaining of federal rights, and “divestitive publication,” meaning a publication without a proper notice and which resulted in the loss of state law protection but without being able to ever get federal protection; in other words, the work was in the public domain. One might think that the two concepts would be applied identically, but that would be asking for legal consistency, something Learned Hand warned against: in order to avoid tossing works into the public domain for minor straying off the path of formality adherence, the courts usually required that the publication be a bit more of a publication to lose protection than to get it. Much like the equal protection clause protection created by the Supreme Court in Bush v. Gore, publication was very much in the eye of the beholder and for that case alone.
If publication itself was hard to figure out, how about “simultaneous” publication? Simultaneous publication was a device originally used by U.S. publishers as a “Back door to Berne;” a few copies were “published” in Canada or the UK shortly after or on the same day as the real publication took place in the U.S. Then, the publisher would claim the work was subject to Berne protection long before the U.S. adhered to Berne. Canadians in particular thought this not sporting and attempted to put an end to it. Berne itself deals with the issue of publication and simultaneous publication in Article (3)-(4):
(3) The expression "published works" means works published with the consent of their authors, whatever may be the means of manufacture of the copies, provided that the availability of such copies has been such as to satisfy the reasonable requirements of the public, having regard to the nature of the work. The performance of a dramatic, dramatico-musical, cinematographic or musical work, the public recitation of a literary work, the communication by wire or the broadcasting of literary or artistic works, the exhibition of a work of art and the construction of a work of architecture shall not constitute publication.
(4) A work shall be considered as having been published simultaneously in several countries if it has been published in two or more countries within thirty days of its first publication.
After we joined Berne, we “two-tiered” the Section 411(a) requirement of registration as a prerequisite to bringing an infringement action, meaning we left the requirement in for U.S. works, but abandoned it for works of Berne origin (a category later expanded to almost all foreign works). This necessitated defining what is a foreign work, a task that also involved the tricky question of simultaneous publication. The answer is found in the definition of “United States work” in Section 101:
For purposes of section 411, a work is a “United States work” only if —
(1) in the case of a published work, the work is first published —
(A) in the United States;
(B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States;
(C) simultaneously in the United States and a foreign nation that is not a treaty party.
That wasn’t the end of simultaneous publication, though. The U.S. turned the tables on efforts by Canada and the UK to close the Backdoor to Berne in the 1994 GATT restoration act, by excluding from restoration works from those countries (although not by name) if they were simultaneously published in the U.S., using the 30 day period as the period for simultaneous publication, referred to in Article 3(4) of the Berne convention, quoted above. Thus in the definition of restored work in Section 104A(h)(6)(D) we find:
(6) The term “restored work” means an original work of authorship that — ;
(D) has at least one author or rightholder who was, at the time the work was created, a national or domiciliary of an eligible country, and if published, was first published in an eligible country and not published in the United States during the 30-day period following publication in such eligible country ….
The Ninth Circuit has issued a decision on this issue. Here is the opinion, editing out extraneous stuff:
2007 WL 4246149 (9th Cir. Dec. 3, 2007)
ESTATE OF Gunter S. ELKAN
HASBRO, INC., and its wholly owned subsidiary Milton Bradley Company
Plaintiff Estate of Gunter S. Elkan sued Defendants Hasbro, Inc., and its wholly owned subsidiary Milton Bradley Company for copyright infringement of Plaintiff's board game "Strategy," allegedly caused by Defendants' board game "Stratego." The district court granted Defendants' motion for summary judgment, ruling that Defendants lacked access to Plaintiff's work. Defendants moved for the award of attorney fees, which the district court denied. Plaintiff appeals the grant of summary judgment, and Defendants cross-appeal the denial of attorney fees.
1. Under the Copyright Act, "[t]he legal ... owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b). Plaintiff does not dispute that its United States copyright for Strategy expired in 1976, at which time Strategy passed into the public domain. See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 33-34 (2003). Plaintiff argues that its Canadian copyright for Strategy provides independent protection under the Copyright Act and restores the United States copyright under 17 U.S.C. § 104A. We disagree.
Although "[b]oth the Universal Copyright Convention ... and the Berne Convention for the Protection of Literary and Artistic Works ... mandate a policy of national treatment in which copyright holders are afforded the same protection in foreign nations that those nations provide their own authors," Creative Tech., Ltd. v. Aztech Sys. PTE, Ltd., 61 F.3d 696, 700 (9th Cir.1995), "[a]ny rights in a work eligible for protection under [the Copyright Act] ... shall not be expanded or reduced by virtue of, or in reliance upon, the provisions of the Berne Convention, or the adherence of the United States thereto," 17 U.S.C. § 104(c) (emphasis added). The rights to Strategy not only were eligible for protection under the Copyright Act, they were protected when Plaintiff obtained a United States copyright. Consequently, the Canadian copyright cannot expand the rights to Strategy here in the United States beyond those provided by the United States copyright , which Plaintiff admits expired but alleges has been restored.
In order for a foreign copyright to restore an expired United States copyright, a published work must have been published first in the foreign country and "not published in the United States during the 30-day period following publication in such eligible country. " Id. § 104A(h)(6)(D) (emphasis added). The Canadian copyright and United States copyright each lists the initial publication date for Strategy in its respective country as May 25, 1948. Those publication dates preclude restoration of the United States copyright under § 104A(h)(6). Plaintiff does not have a valid, enforceable copyright under the Copyright Act.