[Federal Register: July 10, 1995 (Volume 60, Number 131)]
[Proposed Rules]
[Page 35522-35531]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr10jy95-18]
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LIBRARY OF CONGRESS
Copyright Office
37 CFR Parts 201 and 202
[Docket No. 95-1A]
Restoration of Certain Berne and WTO Works
AGENCY: Copyright Office, Library of Congress.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The Copyright Office is proposing regulations for the filing
of Notices of Intent to Enforce (NIEs) copyright and the registering of
copyright claims as required by the Uruguay Round Agreements Act
(URAA); the Act automatically restores copyright for certain foreign
works effective January 1, 1996. Although restoration is automatic, the
copyright owner must file a Notice of Intent to Enforce the restored
copyright in order to enforce rights against reliance parties. The Act
requires the Copyright Office to establish regulations for filing NIEs
and for registration of those restored works. The Office is seeking
public comment on its proposed regulations.
DATES: Comments should be in writing and received on or before August
23, 1995.
ADDRESSES: If sent by mail, fifteen copies of written comments should
be addressed to: Marilyn J. Kretsinger, Acting General Counsel,
Copyright GC/I&R, PO Box 70400, Southwest Station, Washington, DC
20540. Telephone: (202) 707-8380. Telefax: (202) 707-8366. If hand
delivered, fifteen copies should be brought to: Office of the General
Counsel, Copyright Office, James Madison Memorial Building, Room LM-
407, First and Independence Avenue, SE., Washington, DC 20540. If sent
electronically via the internet send to: ([email protected]). Comments
submitted electronically must include the following information: your
name, the organization or institution you represent, if any; your
[[Page 35523]]
mailing address; telephone number and FAX number, if any.
FOR FURTHER INFORMATION CONTACT: Marilyn J. Kretsinger, Acting General
Counsel, Copyright GC/I&R, PO Box 70400, Southwest Station, Washington,
DC 20024. Telephone: (202) 707-8380. Telefax: (202) 707-8366.
I. Background
On December 8, 1994, President Clinton signed the ``Uruguay Round
Agreements Act'' (URAA), Public Law 103-465, 108 Stat. 4809. The URAA
contains several significant copyright amendments. It amends the
software rental provision found in 17 U.S.C. 109(b) by eliminating the
expiration or sunset date, amends Titles 17 and 18 to create civil and
criminal remedies for ``bootlegging'' sound recordings of live musical
performances and music videos, and adds a new 17 U.S.C. 104A which
restores copyright in certain foreign works. The URAA also gives the
Copyright Office several responsibilities related to restoration of
those works.
A. Restoration of Copyright of Eligible Works
Under the URAA, restoration of copyright in works from countries
which are currently eligible occurs automatically on January 1, 1996.
An eligible country is a nation, other than the United States, that is
a member of the Berne Convention,<SUP>1 or a member of the World Trade
Organization, or is the subject of a presidential proclamation.
\1\ Convention concerning the creation of an International Union
for the Protection of Literary and Artistic Works (Sept. 9, 1886,
revised in 1908, 1928, 1948, 1967, 1971), hereinafter cited as the
Berne Convention.
Works from any source country eligible under the URAA may be
subject to automatic copyright restoration. However, to be so restored,
a work must meet certain other requirements:
1. It is not in the public domain in its source country through
expiration of the term of protection;
2. It is in the public domain in the United States due to
noncompliance with formalities imposed at any time by United States
copyright law, lack of subject matter protection in the case of sound
recordings fixed before February 15, 1972, or lack of national
eligibility;
3. It has at least one author or rightholder who was, at the time
the work was created, a national or domiciliary of an eligible country;
4. If published, it was first published in an eligible country and
was not published in the United States during the 30-day period
following publication in such eligible country.
Notwithstanding the fact that the work meets the above
requirements, any work ever owned or administered by the Alien Property
Custodian and in which the restored copyright would be owned by a
government, is not a restored work.
B. Effective Date of Restoration
On February 9, 1995, the Copyright Office published a notice in the
Federal Register summing up the provisions in the URAA with regard to
the restoration of copyright protection for certain foreign works and
announcing a public meeting on March 20, 1995, to discuss those
provisions related to the responsibilities Congress gave the Copyright
Office. 60 FR 7793 (Feb. 9, 1995). The effective date of copyright
restoration is crucial to fulfilling those responsibilities in a timely
manner. Eligible copyrights are restored automatically on the date the
Agreement on Trade Related Aspects of Intellectual Property (TRIPs)
enters into force with respect to the United States (URAA, section
514(a)). As discussed in the February notice, the Copyright Office
concluded that the effective date of copyright restoration is January
1, 1996. 60 FR 7793 (1995). Since then President Clinton has issued a
proclamation confirming that the date on which the obligations of the
TRIPs Agreement will take effect for the United States is January 1,
1996. Proclamation No. 6780, 60 FR 15845 (Mar. 27, 1995).
II. The Copyright Office's Responsibilities
Although copyright restoration is automatic for eligible works, the
new section 104A, which will go into effect on January 1, 1996, charges
the Office with establishing regulations for two filings which may be
made with the Copyright Office and may assist the owner of the restored
work in securing certain remedies. The URAA requires the Copyright
Office to publish regulations governing the filing of Notices of Intent
to Enforce (NIEs) a restored copyright and the registering of copyright
claims in restored works no later than ninety days before the date the
TRIPs Agreement takes effect with respect to the United States. This
date has been determined to be January 1, 1996; therefore, the
Copyright Office will need to publish final regulations establishing
the procedures for filing NIEs and applications for registration by no
later than October 1, 1995.
The Act also requires the Office to publish a list in the Federal
Register identifying restored works and their ownership where NIEs have
been filed with the Office. The Office must publish its first list by
no later than May 1, 1996, and must publish lists at regular four-month
intervals for a period of two years thereafter. The Office must also
maintain for inspection and copying a list containing all NIEs.
A. Notices of Intent To Enforce
In order to enforce certain rights against reliance parties, the
URAA directs copyright owners to notify these parties that they are
enforcing the rights in a restored work. A reliance party is a business
or individual who, relying on the public domain status of a work, was
already using the work prior to the enactment of the URAA. The URAA
authorizes the owner of a right in a restored work either to serve an
actual NIE directly on a reliance party or provide constructive notice
through the filing of such notices with the Copyright Office. Notices
may be served on a reliance party at any time after the date of
restoration of the restored copyright, i.e., January 1, 1996. As noted
above, the Copyright Office is to publish a list in the Federal
Register identifying NIEs filed with it. Reliance parties have a
twelve-month grace period after they have been notified either by
publication in the Federal Register or by actual notice to sell off
previously manufactured stock, to publicly perform or publicly display
the work, or to authorize others to conduct these activities. All
reliance parties, except those who created derivative works, must cease
using the work after the twelve-month grace period unless they reach a
licensing agreement with the copyright owner for continued use of the
restored work. The effective date of notification is thus very
important both to owners of the restored works and reliance parties.
B. Registration of Copyright Claims in Restored Works
The second filing that the owner of a restored work may want to
make with the Copyright Office is an application for registration of a
copyright claim. The URAA directs the Office to provide procedures for
such registration, but it does not require owners of the restored works
to register. An author of a work which is not considered a Berne work
must obtain or seek registration for a work before he or she can bring
a copyright infringement action in federal court.\2\ While the owner of
rights in a
[[Page 35524]]
Berne work does not have to register before initiating a copyright
infringement suit, the holder of a copyright certificate of
registration may secure some procedural advantages in litigating the
suit. Under 17 U.S.C. 412 the remedies of statutory damages and
attorney's fees are typically contingent upon the securing of a
copyright registration before the date of copyright infringement. Under
section 410(c), a certificate of registration obtained within five
years from the date of publication is accorded prima facie evidence of
the validity of the copyright and the facts stated in the certificate.
After five years, the weight accorded the certificate is within the
discretion of the court.
\2\ The question of whether a work from a country that is a
member of WTO but not Berne must be registered was not specifically
addressed in the legislation; therefore, it would seem that works
that do not come under the definition of a ``Berne Convention work''
found in 17 U.S.C. 101 would have to be registered before the owner
can initiate a suit.
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III. The Comments
A. Comments Submitted
Recognizing that the URAA makes significant changes in established
U.S. copyright practice, the Copyright Office sought public comment
even before it published a Notice of Proposed Rulemaking (NPRM)
concerning the implementation of the URAA. To that end, the Office
published a notice inviting interested parties to submit written
comments and/or to attend a public meeting held at the Copyright Office
on March 20, 1995, to discuss issues related to NIEs and registration
of restored works. 60 FR 7793 (1995). It also sent this notice to over
ninety artists rights organizations and industry groups, as well as 182
foreign government agencies with copyright authority, to give them the
opportunity to respond. Approximately forty individuals from outside
the Copyright Office attended the meeting, including representatives
from authors and artists rights organizations, museums, the publishing
industry, the film industry, and the computer software industry.\3\ The
Copyright Office accepted written comments filed after the meeting from
those unable to attend the meeting or those able to attend, who wanted
to comment further. A total of fifteen comments were received.
\3\ A summary of the meeting can be found in the Public
Information Office of the Copyright Office, Room LM-401, James
Madison Memorial Building, Washington, D.C.
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The Office received comments from the following parties: Dr.
Theodore H. Feder, for Artists Rights Society; Andrew Yeates, for
Channel Four Television; Confederation Internationale des Societes
d'Auteurs et Compositeurs (CISAC); Fernando Zapata Lopez, for Direccion
Nacional del Derecho de Autor of Colombia; Melinda T. Koyanis, for
Harvard University Press; Nobutake Ide, for Japanese Society for Rights
of Authors, Composers and Publishers (JASRAC); Edwin Komen, of Cleary &
Komen; Maria Pallante, for the National Writers Union; Blanche
Gwilliams, for the Performing Rights Society of the United Kingdom;
Neil Turkewitz, for the Recording Industry Association of America
(RIAA); Eduardo Bautista, for Sociedad General de Autores de Espana
(SGAE); Jean-Marc Gutton, for Societe des auteurs dans les arts
graphiques et plastiques (ADAGP); Janine Lorente, for Societe des
Auteurs et Compositeurs Dramatiques (SACED); Jay Gast, Jerry L. Robb,
and Nancy H. McAleer, for Thomson & Thomson; and Richard Wincor, of
Coudert Brothers. Those attending the meeting but not filing written
comments include: Dr. Carole Ganz Brown, for the National Science
Foundation; Linda Chase, Melissa Levine, and Billie Munro, for the
Smithsonian; Hayden Gregory, for the American Bar Association; Herbert
Hirsch, of Fried, Frank, Harris, Shriver & Jacobson; Carol Risher and
Lois Wasoff, for the Association of American Publishers; Bernard Korman
and Gloria Messinger, of Dornbush Mensch Mandelstam & Schaeffer; Steve
Metalitz, for the International Intellectual Property Alliance; Felipe
Mier and Juan Jose Ortega, for the Association of Producers and
Distributors of Mexican Films; Charles Ossola, for the American Society
of Media Photographers; Bill Patry, former Assistant Counsel,
Subcommittee on Intellectual Property and Judicial Administration;
Shira Perlmutter, for the International Literary and Artistic
Association; and Ralph Weinsten, for Copyright Connection.
B. Formality Issue
It was at times unclear whether the commentators were speaking with
regard to NIEs or registration of copyright claims. However, it is
clear that many of the commentators view the NIEs and registration for
restored works as burdensome formalities and ask for their abolition or
simplification. For example, both CISAC and Mr. Gutton of ADAGP
asserted that requirements for NIEs and registration for restored works
are new formalities in violation of the Berne Convention. CISAC asked
that no formalities be required in order to assure protection in the
United States for eligible foreign works of visual art and photography.
Mr. Ide representing JASRAC asked that after a twelve-month grace
period, no procedure be required to enforce rights against any party,
including reliance parties.
The Copyright Office cannot alter the legislative requirements. The
restoration of copyright in certain foreign works considered in the
public domain in the United States creates a conflict between reliance
parties and copyright owners, with legitimate interests on both sides.
Reliance parties have invested capital and labor in the lawful
exploitation of public domain property; the sudden restoration of
copyright divests them of these investments. Without some provision
addressing this potential loss, successful challenges based on the
``taking'' clause of the Fifth Amendment of the U.S. Constitution would
appear possible.
On the other hand, it was important that the United States restore
copyright protection in certain foreign works. The United States
arguably failed to fully conform its law to the Berne Convention in
1989 when it declined to interpret Article 18(1) \4\ on restoration as
being mandatory. Moreover, foreign copyright claimants have lost
copyright protection due to inadvertent noncompliance with unique U.S.
formalities.
\4\ This Convention shall apply to all works which, at the
moment of its coming into force, have not yet fallen into the public
domain in the country of origin through the expiry of the term of
protection. Berne Convention art. 18(1)(Paris text).
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The filing of NIEs was required in the draft URAA legislation. When
the U.S. Justice Department reviewed the draft bill, it concluded that
under existing precedents interpreting the Fifth Amendment, the notice
of intent to enforce the restored copyright avoided an unconstitutional
``taking.'' \5\ These procedures are part of the enacted bill. Such a
filing is not inconsistent with the Berne Convention because Article
18(3) \6\ of the Berne Convention specifically permits member nations
to determine ``conditions'' for applying the principles of restoration.
\5\ See Memorandum from Chris Schroeder, Counsellor to the
Assistant Attorney General, Office of Legal Counsel, United States
Dept. of Justice to Ira S. Shapiro, General Counsel, USTR, on
Whether Certain Copyright Provisions in the Draft Legislation to
Implement the Uruguay Round of Multilateral Trade Negotiations Would
Constitute a Taking Under the Fifth Amendment (July 29, 1994).
\6\ The application of this principle shall be subject to any
provisions contained in special conventions to that effect existing
or to be concluded between countries of the Union. In the absence of
such provisions, the respective countries shall determine, each in
so far as it is concerned, the conditions of application of this
principle. Berne Convention art. 18(3) (Paris text).
Neither procedures permitting copyright registration of restored
works nor requiring the filing of NIEs are formalities in violation of
the Berne Convention. Registration is entirely voluntary for Berne
works since copyright registration of restored works is not a
prerequisite for the filing of a copyright infringement action.
Copyright restoration occurs automatically; the URAA merely creates
[[Page 35525]]
a narrow set of conditions that requires notice to reliance parties.
These conditions do not violate the Berne Convention. Without such
notice the effect of restoration on a reliance party could be
unconstitutional. Moreover, the information sought on the NIEs is
calculated to assist in the voluntary licensing of the restored work.
The decision of Congress to enact these provisions is, therefore,
supported by the legitimate interests of both reliance parties and
copyright owners, by constitutional considerations, and by Article
18(3) of the Berne Convention.
C. Issues Related to Notices of Intent to Enforce
The URAA specifies the minimum content of the NIEs. It requires
that the notice be signed by the owner or the owner's agent.<SUP>7 In
addition to the signature, the URAA states that the NIE must contain
the title, including an English-language translation, any other
alternative titles known to the owner by which the restored work may be
identified, the name of the owner, and an address and telephone number
at which the owner can be located. The URAA specifies that the
Copyright Office can ask for additional information, but the failure to
provide such information will not invalidate the NIE. At the March 20
meeting, the Office sought information from representatives of authors
and user groups on what optional data would be helpful in creating a
useful public record for both groups.
\7\ Ownership of a restored work vests initially in the author
or initial rightholder (if the work is a sound recording) of the
work as determined by the law of the source country of the work.
Amended sec. 104A(b).
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1. Useful Public Record
Many of the commentators expressed concern that unless filers of
NIEs provide information beyond the minimum required by the statute,
the NIE will not provide adequate notice to reliance parties. A number
of commentators, including Ms. Perlmutter, Ms. Wasoff, and Thomson &
Thomson asked that a public record be created for NIEs that provides
information sufficient to identify a work and differentiate it from
those with the same title. The commentators noted that the type of work
and the name(s) of the author(s) would provide particularly valuable
and essential information. Ms. Wasoff, Ms. Risher, Mr. Mier, Mr.
Ortega, Mr. Chaubeau, and Thomson & Thomson also indicated that other
information would help in differentiating between works, such as date
and nation of first publication, names of producers, directors, and
leading actors (in the case of motion pictures), and birth and death
dates for authors. Though date and location of publication could be
helpful as identifying information, Dr. Feder and Ms. Koyanis pointed
out that the date of publication is not particularly useful in
establishing the expiration of the copyright term since most countries
use the date of the author's death to establish the term. Ms. Koyanis
and Thomson & Thomson stated that the NIE should specify whether the
``owner'' named is the owner of the restored copyright or the owner of
an exclusive right. Several parties, including Dr. Feder, Ms.
Messinger, and Thomson & Thomson suggested that the person who signs
the certification statement should indicate whether he or she is acting
as an agent. Ms. Koyanis suggested that no more proof of agency be
required beyond that currently required for routine registrations.
2. Group Filing
Dr. Feder, Mrs. Gwilliams, and Mr. Bautista asked the Copyright
Office to permit the filing of a single NIE for the body of an author's
work. Mr. Patry pointed out that the law requires a NIE to be filed
only for the ``restored works'' for which the copyright is going to be
enforced against reliance parties, not all works, and that the titles
must all be listed in the Federal Register. Mr. Patry stated that this
was done as part of an effort to balance the interests of owners of
restored works and reliance parties, so that the reliance parties could
have a date certain when they would not have liability through
constructive notice.
3. Acknowledgement
Another issue addressed at the public meeting was whether the
publication in the Federal Register would be sufficient notice to the
filer of a NIE that the NIE had been received and/or recorded by the
Office. A number of parties, including Mr. Ossola, Ms. Munro, Dr.
Feder, Mr. Ortega, and Thomson & Thomson asserted that acknowledgement
of receipt and recordation of a NIE is an essential service that the
Copyright Office should provide since foreign remitters will be anxious
to know the status of the NIE(s) and would otherwise flood the Office
with calls.
4. Fees
The Act allows the Office to charge a reasonable fee for recording
a NIE, and the Office raised the question of what this fee should be.
Mr. Komen stated that fees for NIEs should be consistent with current
recordation fees. Thomson & Thomson suggested that since most works
will have two titles, the basic fee ($20) could cover the first two
titles, with an additional $10 for each group of ten or fewer titles.
Mr. Turkewitz urged the Copyright Office to keep fees for the NIE to a
minimum.
D. Issues Related to Registration of a Restored Work
Another subject addressed at the public meeting was what the
registration procedures should be for restored works. Particularly, the
Office asked whether there should be a new registration form, what
simultaneous filing under the URAA meant, whether group registration
should be available, who the appropriate author is for registration
purposes, and what the appropriate fee and deposit should be.
1. A New Registration Form
Mr. Yeates and Thomson & Thomson supported the creation of a new
form. Mr. Komen recommended against adoption of a separate URAA
copyright registration form.
2. Simultaneous Filing
Thomson & Thomson stated that simultaneous filing of a NIE and a
registration should be allowed, as is currently the case with an
assignment or a renewal application and a registration. Mr. Turkewitz
urged that simultaneous registration of claims of copyright be both
automatic and at no additional cost.
3. Group Registration
Many of the commentators urged the Copyright Office to allow group
registration of restored works. Mr. Gutton and Dr. Feder asked the
Copyright Office to accept one registration for the entire body of an
artist's work. Ms. Koyanis noted that it is unlikely that the entire
body of an artist's restored work will have been developed and
distributed in such a way that the same facts would apply, but she
asserted that a single registration could suffice if the facts do agree
for all works, and if each work is given a title or description to aid
identification. Thomson & Thomson indicated that every work in a group
registration should have the same author(s) and owner(s).
4. Author
Dr. Feder, Mr. Yeates, Mr. Zapata, Mr. Gutton and Thomson and
Thomson all stated that the author should be determined by the law of
the source country.
[[Page 35526]]
5. Fees
Ms. Pallante and Thomson and Thomson suggested that fees be kept
consistent with current Copyright Office practice.
6. Claimant and Transfer Statement
Thomson & Thomson noted that the claimant should be the owner of
all the restored rights in the United States on the date the
application is filed. Mr. Zapata, Mr. Turkewitz, and Thomson & Thomson
stated that a claimant should be required to indicate if there has been
a transfer of rights and that a transfer statement should be attached
to the application. Dr. Feder and Mr. Turkewitz asked that a person
claiming ownership by virtue of transfer be required to set forth all
documents (omitting confidential information) by which the transfer
occurred. At a minimum, Mr. Turkewitz asked that a transfer statement
identify the name of the person from whom the rights were acquired as
well as the date and location of the transfer. Mr. Yeates stated that
the source country should be required in order to demonstrate how the
author claiming the benefit of restored copyright has acquired title.
Ms. Koyanis stated that as with current registrations, the owner should
not be required to submit documents showing the chain of title to the
Office.
7. Deposit
Thomson & Thomson suggested that, as copyright notice is not an
issue, deposit requirements be greatly simplified. With regard to
motion pictures, they asked that the deposit copy represent the foreign
published version, not the U.S. dubbed version.
E. Public Access to NIE and Registration Information
The final topic of discussion at the March 20th meeting was what
kind of records the Office should maintain for these new filings.
1. Online Record
Mr. Yeates indicated that for overseas distributors any system
whereby NIE or registration information can be easily accessed online
via the Internet would be helpful. Ms. Koyanis also supported the
availability of the records on the Internet. Many of the parties,
including Ms. Koyanis, Mr. Komen, and Thomson & Thomson stated that it
is critical to include the effective date of the NIE in the COPICS
<SUP>8 record. Ms. Koyanis, Mr. Komen, Ms. Pallante, and Thomson &
Thomson argued that the online record would be of little use unless the
author's name is included in COPICS, and unless that name is fully
indexed and searchable. Ms. Pallante recommended that COPICS be
adjusted to allow for searches within designated time periods. Mr.
Yeates recommended a system that would highlight URAA registrations for
those conducting searches.
\8\ COPICS is the Copyright Office's automated database of
registrations and recorded copyright transfers and other documents.
These records may be accessed by the public on terminals in the
Copyright Office at the Library of Congress and are also available
via the Internet.
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2. Frequency of Federal Register Publication
The Act requires the Office to publish a list identifying the
titles and ownership of restored works for which NIEs have been filed
at four-month intervals and then again annually. The Office proposed
publishing the list at shorter intervals. Many of the parties felt that
the list of NIEs should be published on a four-month schedule as
opposed to more often. They also felt that publication in the Federal
Register was not the best record and urged the Office to provide a more
detailed record, available on COPICS. The parties stated that the
annual publication in the Federal Register would be costly and not
necessarily helpful.
IV. Procedures for Notices of Intent to Enforce
A Copyright Office task force has been meeting for several months
to discuss issues related to establishing regulations for both URAA
filings. The Office also carefully considered comments of the
interested parties on these issues. Most of the commentators supported
a detailed NIE rather than the minimal information required by the
statute. Based on those comments, the Office is encouraging the filer
of a NIE to give more information than is required under the URAA. As
provided in the statute, this additional information is optional and
will not affect the validity of the notice; however, the Copyright
Office and the interested parties believe this additional information,
such as the identity of the author, is necessary in order to identify
the specific work where enforcement of copyright is sought. The
additional information will also facilitate the licensing of uses of
restored works. We, therefore, urge those parties who are filing NIEs
to provide this additional information, if at all possible.
A. Proposed Format for NIEs
The Copyright Office will not publish NIE forms; however a proposed
format for the NIE is included in the Appendix below. Moreover, this
format will be available over the Internet, and could be downloaded for
use as a form. The proposed format requests information required by the
statute and information which is optional but deemed necessary and
useful. The Copyright Office adopted a similar approach of providing a
format but not a form for the filings under NAFTA, and filers followed
the suggested format with few problems.
B. The Public Record
The URAA requires publication of the titles and owners of restored
works in the Federal Register, and the Copyright Office will do this.
Since publication in the Federal Register is costly and the parties
indicated that such information would not be as accessible as
information made available via the Internet, the Office will limit the
information published in the Federal Register to titles and the name of
the first owner listed on the NIE. However, the Copyright Office plans
to make much of the information contained in the NIE available on
COPICS, which can be accessed over the Internet. Online access will be
the primary means for providing this information to the public. The
database will be searchable by title, copyright owner, and author.
C. Recordation Fee
The Office is proposing a fee of $30 for recording a NIE covering
one work; and for recording an NIE covering multiple works $30, plus $1
for each additional work beyond the first work. The proposed regulation
additionally includes special provisions relating to foreign payments
which must be followed in order to permit processing of the fee.
For all URAA filings, both recordation of an NIE and registration
of a restored work, the Copyright Office will accept Visa, Master Card,
and American Express credit cards. The Copyright Office is accepting
these credit cards for URAA filings in order to make payment in U.S.
dollars easier. Payment by credit card will be available only for URAA
filings. Acceptance of credit cards for URAA filings will serve as a
test, however, under which the Office can determine the feasibility of
accepting credit cards in other areas at a later date.
D. Certification
The Office will require the filer to sign a short certification
statement at the end of the NIE indicating that the information given
is correct to the best of his or her knowledge. The statute states that
any materially false statement knowingly made with respect to any
[[Page 35527]]
restored copyright identified in any Notice of Intent shall make void
all claims and assertions made with respect to such restored copyright.
104A(e)(3) of the URAA.
E. Mailing Address
It is expected that the volume of NIEs filed at the Copyright
Office may be high and turnaround time is critical; therefore, it is
important that URAA mail not come in with regular mail addressed to the
Copyright Office. The Copyright Office is planning to obtain a special
post office box. Notices of Intent to Enforce should be mailed to:
(Address to be given in the final rule) or delivered personally to:
(Address to be given in the final rule).
V. Procedures for Registering Copyright Claims in Restored Works
The URAA raises a number of unique considerations regarding
registering copyright claims in restored works. First, a number of
technical requirements, many of which are contained in the definition
of ``restored work,'' govern whether a foreign copyright is subject to
automatic restoration under the URAA. In many cases applicants seeking
restoration will be foreign claimants who are unfamiliar with the
registration procedures of the U.S. Copyright Office. In addition,
communication over technical issues may be difficult. Finally,
virtually all of the restored copyrights will be older works; and in
some cases, this will raise problems with submitting a copy or
phonorecord of the work.
The Copyright Office weighed all of these considerations before
developing the proposed procedure for registering copyright claims in
restored works. The Copyright Office believes the proposed procedure is
as simple as it can be, while still maintaining the basic integrity of
the public record and adhering to the provisions of the copyright law
and the URAA.
A. Registration Forms
Because the URAA creates unique requirements for eligibility, the
Copyright Office believes it is necessary to create two new forms which
are specifically designed to secure only the necessary information. One
of the new forms will cover registration of individual restored works
and works published under a single series title, and the second form
will cover registration of groups of related restored works under the
conditions set forth in the regulations.
B. Foreign Law Questions
One of the more difficult issues facing the Copyright Office is to
what extent foreign law issues should be raised in the registration
process. Section 104A(b) of the Act provides: ``A restored work vests
initially in the author or initial rightholder of the work as
determined by the law of the source country of the work.'' The
Copyright Office does not plan to question an applicant's determination
of foreign law issues. Interested parties may wish to comment on this
matter.
C. Deposit Required
In recognition of the difficulty some applicants might have in
submitting a deposit of an older work ``as first published,'' the
Copyright Office has proposed special deposit provisions which permit a
deposit of other than the first published edition of the work, if
necessary. However, applicants should keep in mind that the deposit
serves as a crucial part of the public record.
D. Registration Fee
The fee for registration will be the standard $20, since the
Copyright Office believes the work in administering the proposed
registration procedure for restored works will be roughly comparable to
general registration procedures. In addition, special group
registration options are proposed which will permit the registration
of:
(1) A group of works published under a single series title. This
option would be filed on the basic GATT registration form and would
cost the basic fee of $20 for up to a year's worth of episodes,
installments, or issues published under the same single series title;
and
(2) A group of up to 10 related individual works published within
the same calendar year. This option would be filed on the GATT/GROUP
registration form and would cost a fee of $10 per individual work.
Finally, special rules are proposed regarding payment, including
permitting the use of credit cards for fee payment.
E. Mailing Address
For the reasons given above in discussion of NIE filings, the
Office has determined that a separate mailing address is necessary for
all URAA filings. This address will be given in the final rule.
VI. NAFTA
Exactly a year before the URAA was signed into law, Congress
enacted the North American Free Trade Agreement Implementation Act
(NAFTA) of December 8, 1993, adding a new section 104A to the Copyright
Code that allowed copyright restoration in certain Mexican and Canadian
works. See generally, Federal Register notices leading to the
implementation of NAFTA, 59 FR 1408 (Jan. 10, 1994); 59 FR 12162 (Mar.
16, 1994); and 59 FR 58787 (Nov. 15, 1994). Although Congress modeled
the URAA provisions on NAFTA, there are significant differences. For
example, under the URAA, copyright restoration is automatic; under
NAFTA it was not. Moreover, the URAA requires an English translation of
the title as part of the NIE. On January 1, 1996, section 104A, as
modified by the URAA, will replace the NAFTA version of section 104A.
In enacting these two laws, Congress intended the restoration
provisions to operate separately from one another. Therefore, works
restored under NAFTA are not additionally restored under the URAA.
Unfortunately, the statutory language in the URAA creates some
ambiguities. The recent presidential proclamation clarifies some of
these questions. 60 FR 15845 (Mar. 27, 1995).
The proposed regulations clarify other issues relating to the
operation of NAFTA. A technical amendment is proposed for the first
sentence of the regulation governing filings under NAFTA whereby
reference to section 104A is deleted in favor of reference to the
public law. This change is made necessary by the deletion of the NAFTA
version of section 104A on January 1, 1996. In addition, proposed
Secs. 201.32 and 202.12 of the Copyright Office regulations contain
provisions clarifying that works already restored under NAFTA do not
additionally fall within the provisions of the URAA.
Despite the differences in NAFTA and URAA filings, the task force
has determined that the group registration procedures available for
URAA restored works should also apply to those restored works that come
in under NAFTA.
Appendix--Notice of Intent to Enforce a Copyright Restored Under the
Uruguay Round Agreements Act (URAA)
1. Title:--------------------------------------------------------------
(If this work does not have a title, state ``No title.'')
or
Brief description of work (for untitled works only):
2. English translation of title (if applicable):
----------------------------------------------------------------------
3. Alternative title(s) (if any):
----------------------------------------------------------------------
4. Type of work:-------------------------------------------------------
(e.g. painting, sculpture, music, motion picture, sound recording,
book)
[[Page 35528]]
5. Name of author(s):--------------------------------------------------
6. Source country:-----------------------------------------------------
7. Approximate year of publication:------------------------------------
8. Additional identifying information:
----------------------------------------------------------------------
(e.g. for movies: director, leading actors; for photographs or
books: subject matter/content)
9. Name of copyright owner:
----------------------------------------------------------------------
(Statements may be filed in the name of the owner of the restored
copyright or the owner of an exclusive right therein.)
10. If you are not the owner of all rights, specify the right for which
the NIE is being filed:------------------------------------------------
----------------------------------------------------------------------
(e.g. translation, screenplay, etc.)
11. Address at which copyright owner may be contacted:-----------------
----------------------------------------------------------------------
(Give complete address, including an ``attention'' line, or ``in
care of'' name, if any. Give the country if other than the United
States.)
12. Telephone number of owner:-----------------------------------------
13. Telefax number of owner:-------------------------------------------
14. Certification and Signature:
I hereby certify that, for each of the work(s) listed above, I
am the copyright owner, or the owner of an exclusive right, or the
owner's authorized agent and that the information given herein is
true and correct to the best of my knowledge.
Signature:-------------------------------------------------------------
Name (printed or typed):-----------------------------------------------
As agent for (if applicable):------------------------------------------
Date:------------------------------------------------------------------
Note: Notices of Intent to Enforce must be in English, except
for the original title, and either typed or printed by hand legibly
in dark, preferably black, ink. They should be on 8\1/2\'' by 11''
white paper of good quality, with at least a 1-inch (or 3cm) margin.
List of Subjects
37 CFR Part 201
Copyright, Restoration of Copyright.
37 CFR Part 202
Registration of claims to copyright, Restored works.
Proposed Regulations
In consideration of the foregoing, the Copyright Office proposes to
amend 37 CFR parts 201 and 202 in the manner set forth below:
PART 201--GENERAL PROVISIONS
1. The authority citation for part 201 is revised to read as
follows:
Authority: 17 U.S.C. 702.
Sec. 201.31 [Amended]
2. Section 201.31 is amended by revising the first sentence of
paragraph (a) to read as follows:
(a) General. This section prescribes the procedures for submission
of Statements of Intent pertaining to the restoration of copyright
protection in the United States for certain motion pictures and works
embodied therein as required by the North American Free Trade Agreement
Implementation Act of December 8, 1993, Public Law 103-182. * * *
3. A new Sec. 201.32 is added to read as follows:
Sec. 201.32 Procedures for filing Notices of Intent to Enforce a
restored copyright under the Uruguay Round Agreements Act.
(a) General. This section prescribes the procedures for submission
of Notices of Intent to Enforce a restored copyright under the Uruguay
Round Agreements Act, as required in 17 U.S.C. 104A(a). On or after May
1, 1996, and approximately every four months thereafter, the Copyright
Office will publish in the Federal Register a list of works for which
Notices of Intent to Enforce have been filed. It will maintain a list
of these works. The Office will also make a more complete version of
the information contained in the Notice of Intent to Enforce available
on its automated database, which can be accessed over the Internet.
(b) Definitions.
(1) Restored work means an original work of authorship that--
(i) Is protected under 17 U.S.C. 104A(a);
(ii) Is not in the public domain in its source country through
expiration of term of protection;
(iii) Is in the public domain in the United States due to--
(A) Noncompliance with formalities imposed at any time by United
States copyright law, including failure of renewal, lack of proper
notice, or failure to comply with any manufacturing requirements;
(B) Lack of subject matter protection in the case of sound
recordings fixed before February 15, 1972; or
(C) Lack of national eligibility; and
(iv) 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.
(2) Source country of a restored work is--
(i) A nation other than the United States;
(ii) In the case of an unpublished work--
(A) The eligible country in which the author or rightholder is a
national or domiciliary, or, if a restored work has more than one
author or rightholder, the majority of foreign authors or rightholders
are nationals or domiciliaries of eligible countries; or
(B) If the majority of authors or rightholders are not foreign, the
nation other than the United States which has the most significant
contacts with the work; and
(iii) In the case of a published work--
(A) The eligible country in which the work is first published, or
(B) If the restored work is published on the same day in two or
more eligible countries, the eligible country which has the most
significant contacts with the work.
(3) NAFTA work means a work restored to copyright on January 1,
1995, as a result of compliance with procedures contained in the North
American Free Trade Agreement Implementation Act of December 8, 1993,
Public Law 103-182.
(c) Forms. The Copyright Office does not provide forms for Notices
of Intent to Enforce filed with the Copyright Office. It does suggest
that filers follow the format set out in the Appendix (found in the
preamble) and give all of the information listed in paragraph (d) of
this section. Notices of Intent to Enforce should be typed or printed
by hand legibly in dark, preferably black, ink, on 8\1/2\ by 11 inches
white paper, with at least a 1 inch (or 3 cm) margin.
(d) Requirements for Notice of Intent to Enforce a copyright
restored under the Uruguay Round Agreements Act.
(1) Notices of Intent to Enforce should be sent to the following
address:[Address to be given in the final rule]
(2) The document should be clearly designated as ``Notice of Intent
to Enforce a Copyright Restored under the Uruguay Round Agreements
Act'';
(3) Notices of Intent to Enforce must include:
(i) Required information:
(A) The title of the work, or if untitled, a brief description of
the work;
(B) An English translation of the title if title is in a foreign
language;
(C) Alternative titles if any;
(D) Name of the copyright owner of the restored work, or of an
owner of an exclusive right therein;
(E) The address and telephone number where the owner of copyright
or the exclusive right therein can be reached;
(F) The following certification signed and dated by the owner of
copyright, or the exclusive right therein, or authorized agent:
I hereby certify that for each of the work(s) listed above, I am
the copyright owner, or the
[[Page 35529]]
owner of an exclusive right, or the owner's authorized agent and that
the information given herein is true and correct to the best of my
knowledge.
Signature--------------------------------------------------------------
Name (printed or typed)------------------------------------------------
As agent for (if applicable)-------------------------------------------
Date:------------------------------------------------------------------
(ii) Optional information:
(A) Type of work (painting, sculpture, music, motion picture, sound
recording, book, etc.);
(B) Name of author(s);
(C) Source country;
(D) Approximate year of publication;
(E) Additional identifying information (director, leading actors,
subject/content, etc.);
(F) Rights for which the Notice of Intent to Enforce is being filed
(translation, screenplay, etc.);
(G) Telefax number at which owner, exclusive rights holder, or
agent thereof can be reached.
(4) Notices of Intent to Enforce may cover multiple works provided
that each work is identified by title, all the works have the same
author, all the works are owned by the identified copyright owner or
owner of an exclusive right, and the rights for which the notice is
being filed are the same. In the case of Notices of Intent to Enforce
covering multiple works, the notice will separately designate for each
work covered the title of the work, or if untitled, a brief description
of the work; an English translation of the title if the title is in a
foreign language; alternative titles, if any; the type of work; the
source country; the approximate year of publication; and additional
identifying information.
(5) Notices of Intent to Enforce may be submitted to the Copyright
Office on or after January 1, 1996.
(e) Fee.
(1) Amount. The fee for recording Notices of Intent to Enforce is
$30 for notices covering one work. For notices covering multiple works
as described in paragraph (d)(4) of this section, the fee is $30, plus
$1 for each additional work covered beyond the first designated work.
(For example, the fee for a Notice of Intent to Enforce covering 3
works would be $32.)
(2) Method of Payment. (i) Checks, money orders, or bank drafts.
The Copyright Office will accept checks, money orders, or bank drafts
made payable to the Register of Copyrights. Remittances must be
redeemable without service or exchange fees through a United States
institution, must be payable in United States dollars, and must be
imprinted with American Banking Association routing numbers.
International money orders, and postal money orders that are negotiable
only at a post office are not acceptable. Currency will not be
accepted.
(ii) Copyright Office deposit account. The Copyright Office
maintains a system of Deposit Accounts for the convenience of those who
frequently use its services. The system allows an individual or firm to
establish a Deposit Account in the Copyright Office and to make advance
deposits into that account. Deposit Account holders can charge
copyright fees against the balance in their accounts instead of sending
separate remittances with each request for service. For information on
Deposit Accounts please write: Register of Copyrights, Copyright
Office, Library of Congress, Washington, DC 20559. Request a copy of
Circular 5, ``How to Open and Maintain a Deposit Account in the
Copyright Office.''
(iii) Credit cards (for use only in filings under the Uruguay Round
Agreements Act). The Copyright Office will accept VISA, MasterCard, and
American Express. A filer using a credit card must provide a separate
cover letter stating the name of the credit card he or she wishes to
use, the credit card number, the expiration date of the credit card,
and his or her signature authorizing the Office to charge the fees to
his or her account. Debit cards cannot be accepted for payment. To
protect the security of the credit card number, the filer must not
write his or her credit card number on the Notice of Intent to Enforce.
(f) Public online access.
(1) Almost all of the information contained in the Notice of Intent
to Enforce may be secured online through the Internet. This information
may be secured in the Copyright Office History Documents (COHD) file
through the Library of Congress electronic information system LC
MARVEL.
(2) Alternative ways to connect through Internet are:
(i) Telnet to locis.loc.gov or the numeric address 140.147.254.3,
or
(ii) telnet to marvel.loc.gov, or the numeric address 140.147.248.7
and log in as marvel, or
(iii) use a Gopher Client to connect to marvel.loc.gov, (use port
70), or
(iv) use the Library of Congress World Wide Web at: http://
lcweb.loc.gov, or http://www.loc.gov.
(3) Information available online: The title or brief description if
untitled; an English translation of the title; the alternative titles
if any; the name of the copyright owner or owner of an exclusive right;
the author; the type of work; the date of receipt of the NIE in the
Copyright Office; the date of publication in the Federal Register; the
rights covered by the notice; and the address, telephone and telefax
number (if given) of the copyright owner.
(4) Online records of Notice of Intent to Enforce will be
searchable by the title, the copyright owner or owner of an exclusive
right, and the author.
(g) NAFTA work. The copyright owner of a work restored under NAFTA
by the filing of a NAFTA Statement of Intent to Restore with the
Copyright Office prior to January 1, 1995, is not required to file a
Notice of Intent to Enforce under this regulation.
PART 202--REGISTRATION OF CLAIMS TO COPYRIGHT
4. The authority citation for part 202 is revised to read as
follows:
Authority: 17 U.S.C. 702.
5. A new Sec. 202.12 is added to read as follows:
Sec. 202.12 Restored copyrights.
(a) General. This section prescribes rules pertaining to the
registration of foreign copyright claims which have been restored to
copyright protection under section 104A of 17 U.S.C., as amended by the
Uruguay Round Agreements Act, Pub. L. No. 103-465.
(b) Definitions. (1) For the purposes of this section, restored
copyright has the same meaning as set forth in 17 U.S.C. 104A(h), as
amended by the URAA.
(2) Descriptive statement for a computer program is a statement
consisting of the following elements: the title of the computer
program; a description of the purpose and function of the program; an
identification of size of the program (i.e. quantity of lines, pages,
or bytes in the programming code); the language in which the program is
written; and the operating system, platform or computer environment in
which the program functions.
(3) Descriptive statement for a database is a statement consisting
of the following elements: title of the database; name and content of
each separate file of the database, including a description of its
subject matter; origin of its data or contents; an estimate of the
total number of pages or data records.
(4) Reliance party means any person who--
(i) With respect to a particular work, engages in acts, before the
source country of that work becomes an eligible country, which would
have violated 17 U.S.C. 106 if the restored work had been subject to a
copyright protection and who, after the source country becomes
[[Page 35530]]
an eligible country, continues to engage in such acts;
(ii) Before the source country of a particular work becomes an
eligible country, makes or acquires one or more copies of phonorecords
of that work; or
(iii) As the result of the sale or other disposition of a
derivative work, covered under the new 17 U.S.C. 104A(d)(3), or of
significant assets of a person, described in the new 17 U.S.C.
104A(d)(3) (A) or (B), is a successor, assignee, or licensee of that
person.
(c) Registration--(1) General. Application, deposit, and fee for
registering a copyright claim in a restored work under section 104A, as
amended, may be submitted to the Copyright Office on or after January
1, 1996. The application, fee, and deposit should be sent in a single
package to the following address: (Address to be given in final rule).
(2) GATT Form. Application for registration for single works
restored to copyright protection under URAA should be made on Form
GATT. Application for registration for a group of works published under
a single series title and published within the same calendar year
should also be made on Form GATT. Finally, application for a group of
up to 10 individuals, and related works as described in paragraph
(c)(5)(ii) of this section, should be made on Form GATT/GROUP.
These forms may be secured from the Copyright Office after October
1, 1995. Requests for these forms may also be made by calling the
Copyright Office Hotline anytime after October 1 at (202) 707-9100 and
leaving a message. In addition, legible photocopies of this form are
acceptable if reproduced on good quality, 8\1/2\ by 11 inch white
paper, and printed head to head so that page two is printed on the back
of page one.
(3) Fee.
(i) Amount. The fee for registering a copyright claim in a restored
work is $20. The fee for registering a group of multiple episodes under
a series title under paragraph (c)(5)(i) of this section is also $20.
The fee for registering a group of related works under paragraph
(c)(5)(ii) of this section is $10 per individual work.
(ii) Method of payment.
(A) Checks, money orders, or bank drafts. The Copyright Office will
accept checks, money orders, or bank drafts made payable to the
Register of Copyrights. Remittances must be redeemable without service
or exchange fees through a United States institution, must be payable
in United States dollars, and must be imprinted with American Banking
Association routing numbers. In addition, international money orders,
and postal money orders that are negotiable only at a post office are
not acceptable. Currency will not be accepted.
(B) Copyright Office deposit account; The Copyright Office
maintains a system of Deposit Accounts for the convenience of those who
frequently use its services. The system allows an individual or firm to
establish a Deposit Account in the Copyright Office and to make advance
deposits into that account. Deposit Account holders can charge
copyright fees against the balance in their accounts instead of sending
separate remittances with each request for service. For information on
Deposit Accounts please write: Register of Copyrights, Copyright
Office, Library of Congress, Washington, DC 20559. Request a copy of
Circular 5, ``How to Open and Maintain a Deposit Account in the
Copyright Office.''
(C) Credit cards (for use only in filings under the Uruguay Round
Agreements Act). The Copyright Office will accept VISA, MasterCard, and
American Express Cards. A filer using a credit card needs to provide a
separate cover letter stating the name of the credit card he or she
wishes to use, the credit card number, the expiration date of the
credit card, and his or her signature authorizing the Office to charge
the fees to his or her account. Debit cards cannot be accepted for
payment. To protect the security of the credit card number, the filer
must not write his or her credit card number on the registration
application.
(4) Deposit.
(i) General. The deposit for a work registered as a restored work
under the amended section 104A, except for those works listed in
paragraph (c)(4) (ii) through (v) of this section, should consist of
one copy or phonorecord which best represents the copyrightable content
of the restored work. In descending order of preference, the deposit
should be:
(A) The work as first published;
(B) A reprint or re-release of the work as first published;
(C) A photocopy or identical reproduction of the work as first
published;
(D) A revised version which includes a substantial amount of the
copyrightable content of the restored work with an indication in
writing of the percentage of the restored work appearing in the
revision.
(ii) Computer programs. The deposit requirements for computer
programs in descending order of preference are as follows:
(A) A machine-readable copy of the program and a descriptive
statement of the computer program;
(B) An eye-readable printout of 10 representative pages of the
program, preferably source code, and a descriptive statement of the
computer program;
(C) A descriptive statement of the computer program.
(iii) Literary works embodied solely in machine-readable format.
The deposit of literary works embodied solely in machine-readable
format shall consist of any 10 representative pages (printout or
transcription) of the contents of the work.
(iv) Databases. The deposit requirements of databases in descending
order of preference are as follows:
(A) Any 10 representative pages (printout or transcription) or
records of the contents of the database and a descriptive statement of
the database;
(B) A descriptive statement of the database.
(v) Visual arts. With the exception of 3-dimensional works of art,
the general deposit preferences specified under paragraph (c)(4)(i) of
this section shall govern. For 3-dimensional works of art, the
preferred deposit is one or more photos, preferably in color.
(vi) Special relief. An applicant who is unable to deposit any of
the preferred deposits may seek an alternative deposit under special
relief. 37 CFR 202.20(d). In such a case, the applicant should indicate
in writing why the deposit preferences cannot be met, and submit
alternative identifying materials clearly showing some portion of the
copyrightable contents of the restored work which is the subject of
registration.
(vii) Motion pictures. If the deposit is a film print (16 as 35
mm), call the Performing Arts Section of the Examining Division for
delivery instructions. (202) 707-6040 or fax (202) 707-6048.
(5) Group registration. Copyright claims in multiple restored works
may be registered as a group in the following circumstances:
(i) Single series title. Works published under a single series
title in multiple episodes, installments, or issues during the same
calendar year may be registered as a group, provided the owner of U.S.
rights is the same for all episodes, installments, or issues. The Form
GATT should be used and the number of episodes or installments should
be indicated in the title line. The fee for registering a group of such
works is $20. In general, the deposit requirements applicable to
restored works will be applied to the episodes or
[[Page 35531]]
installments in a similar fashion. In the case of weekly or daily
television series, applicants should first request guidance as to the
proper deposit from the Performing Arts Section of the Examining
Division.
(ii) Group of related works. A group of related works may be
registered on the Form GATT/GROUP, provided the following conditions
are met: The author is the same for all works in the group; the owner
of all United States rights is the same for all works in the group; all
works must have been published in the same calendar year; all works
must fit within the same subject matter category [i.e. literary works,
musical work, motion picture, etc.]; and there must be at least two and
not more than 10 individual works in the group submitted. Applicants
registering a group of related works must file for registration on the
Form GATT/GROUP. The fee for registering a group of related works is
$10 per individual work.
(d) Works excluded. Works which are not copyrightable subject
matter under title 17 of the U.S. Code, other than sound recordings
fixed before February 15, 1972, should not be registered as restored
copyrights.
Dated: July 3, 1995.
Marilyn J. Kretsinger,
Acting General Counsel.
Approved by:
James H. Billington,
The Librarian of Congress.
[FR Doc. 95-16765 Filed 7-7-95; 8:45 am]
BILLING CODE 1410-30-P