Author: Christopher Jon Sprigman
Abstract: Not too long ago, conventional wisdom in the copyright field condemned copyright formalities as unnecessary and pernicious, and celebrated their removal from American law. Recently, however, an increasingly prominent strand of copyright scholarship has begun to rue the death of mandatory formalities and to note the many possible benefits of reinstituting them. But now that the prospect of “reformalization” has been raised, the opponents of formalities have laid on the table what seems (at least to them) to be a trump card. Whatever the virtues of formalities, opponents claim that they are banned by article 5(2) of the Berne Convention, which prohibits formalities that affect “the enjoyment and the exercise” of rights in protected works. Furthermore, opponents invoke derivative protection through the TRIPS Agreement, which adopts the Berne standards and makes them enforceable via the World Trade Organization (“WTO”) dispute resolution process.
The view that Berne bans formalities is deeply and honestly held. It is nonetheless almost wholly irrelevant to the current debate about reformalization. The reason for that is straightforward. Recapturing many of the benefits of formalities does not require, and perhaps is not even best pursued by, reinstituting the sort of formalities that article 5(2) bans — that is, those that affect “the enjoyment and the exercise” of exclusive rights in copyrighted works. Rather, the sorts of formalities that occupy the center of the current debate, the so-called “new-style” formalities, are subtler. Unlike traditional formalities, noncompliance with new-style formalities does not prevent copyright from arising, cause existing copyrights to terminate, or make existing copyrights unenforceable in court. Rather, the various varieties of new-style formalities that have been proposed to date would work mostly by contracting the scope of infringement remedies.Traditional formalities work as bludgeons. New-style formalities work as nudges.
This Article will focus on one of the many new-style formalities that has been proposed — one that would condition the availability of preliminary and permanent injunctions, as well as “disgorgement” money remedies (i.e., remedies requiring that the defendant not only pay the value of a reasonable license, but also turn over to the plaintiff any profits linked to the infringement), on compliance with a convenient, low-cost registration formality. Under a new-style formality of this type, owners of unregistered works would continue to recover actual damages as measured by the reasonable value of a license, but they would be ineligible to receive either disgorgement or preliminary or permanent injunctive relief.
For reasons that the Article explains, neither Berne nor TRIPS prohibits such a formality — because neither Berne nor TRIPS significantly restricts signatories’ freedom to condition the availability of remedies for copyright infringement. And indeed, Berne and TRIPS signatories are free to impose a variety of “new-style” formalities that work by constricting infringement remedies.
Citation: Sprigman, Christopher Jon, Berne’s Vanishing Ban on Formalities (March 10, 2014). Berkeley Technology Law Journal, Vol. 28, No. 3, 2013.
Full Paper on SSRN: http://ssrn.com/abstract=2407015
