In China-IPR, the freedom of expression and trade-related intellectual property rights might have shared the same circumstantial space, but they did not make legal eye contact, let alone conduct a civilized juridical exchange. If there was such a meeting, it is not apparent from the Panel Report, and it is effortlessly denied. The Panel did not consider the human rights implications of its decision, either explicitly or implicitly. Indeed, it was not requested to do so by the US as complainant, nor was it encouraged to do so by any of the third-parties. This is reflective of the reluctance of the WTO’s Membership’s to integrate with non-WTO law, and the dispute settlement system’s consequent constraints in engaging with it. In this article I have not set out to either present or advocate an alternative approach; what is striking and noteworthy, however, is the ease with which this indifference to human rights law can be enacted by parties and Panels. To be sure, this is not necessarily a bad thing, and this exposition is not a judgmental one. Trade disputes do not exist in a political vacuum, and the WTO does have to consider its effectiveness in the area of trade law, and the continued legitimacy of its dispute settlement process among Members. However, the analysis shows that this indifference is not necessarily benign in its real implications for human rights.

Judge Victor Marrero of the federal district court in Manhattan issued an order last Wednesday that addressed an interesting litigation tactic. FRMAS registered a collection of jewelry pieces as a single unit, instead of filing separate registrations for the pieces. On motion for summary judgment, the defendants argued that the registration was invalid because the works were not first published together as a single unit.

While the Court is not aware of, nor do the parties direct the Court to, any case that provides a definition of the term “single unit of publication,” the Copyright Act provides defines “publication” as the distribution of copies … of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies … to a group of persons for purposes of further distribution … or public display, constitutes publication. A … display of a work does not of itself constitute publication. 17 U.S.C. § 101.

The distribution of catalogs and collections of photographs to multiple parties has been found by other courts to constitute a single unit of publication. See, e.g., Kay Berry, 421 F.3d at 203, 206; Gross, 2007 WL 1040033, at *4. RFMAS did not first distribute the items in the deposit in a catalog or brochure; rather, [the plaintiff] testified in his deposition that the items were shipped to his parents’ store. [The plaintiff] further stated that his parents were the “exclusive distributors for the Italian market,” and the items were not offered or sold “to the public” or to any other companies or persons, though his parents’ store did make some sales. ( Id.) Aside from the testimony of RFMAS’s principals, RFMAS has not adduced any evidence of such a transaction with [the plaintiffs'] parents.

The Court found that it was unable to decide the issue due to conflicting testimony and left the question to be determined by a jury.

Registration in Italy

As an alternative, RFMAS argued that its jewelry was created and first published in Italy, so the requirement that it register its works prior to suit didn’t apply:

RFMAS next argues that whether or not the Registration is valid, the Stella Pieces are nonetheless protected under U.S. copyright law. Specifically, RFMAS asserts that because it first published its Stella designs in Italy in 2001, the Stella Pieces are protected by U.S. copyright law pursuant to the Berne Convention, to which both Italy and the United States are signatories. Under 17 U.S.C. § 104(b)(2), a copyright is protectable under U.S. law if “the work is first published in … a foreign nation that, on the first day of publication, is a treaty party.”

I find the Court’s analysis a little confusing. Yes, the jewelry is “protectable” regardless of whether the works were created and first published in the United States or in Italy, but the Court misses a step. There is still the residual question of whether registration of the work was required to bring suit.  The requirement that a plaintiff register its work, as set forth in 17 U.S.C. 411, only applies to United States works, which 17 U.S.C. 101 defines as a works “first published in the United States.” So if the work was first published abroad, a registration isn’t required.  But the plaintiff will still lose the opportunity to sue for statutory damages. Foreign works, like domestic works, must be registered in the United States for an author to have statutory damages and attorneys’ fees available as a remedy. Section 412 addresses this issue:

In any action under this title . . . no award of statutory damages . . . shall be made for . . . any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Regardless, the Court found that given the conflicting testimony the issue was more appropriate for a jury.