Superman and Foreign Reversionary Rights

Copyright is a territorial right. The Berne Convention is an international treaty but not an international law. Article 5 of the convention makes this clear:

1) Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.

(2) The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.

(3) Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors.

A French author suing in the U.S. is treated as if he/she/them is a U.S. author. A U.S. author suing in France is treated as if he/she/them is a French author. Domestic courts apply domestic law. 
The Berne Convention does not grant rights; it creates treaty obligations by member countries who then implement those obligations in domestic law. Berne is thus not self-executing in the U.S.  Congress made this as clear as possible in the Berne Convention implementing legislation:

No right or interest in a work eligible for protection under this title may be claimed by virtue of … the provisions of the Berne Convention … Any rights in a work eligible for protection under this title that derive from this title … shall not be expanded or reduced by virtue of … the provisions of the Berne Convention.
The obligations of the United States under the Berne Convention may be performed only pursuant to appropriate domestic law. 
The provisions of the Berne Convention … shall not be enforceable in any action brought pursuant to the provisions of the Berne Convention itself.

U.S. courts have understandably uniformly rejected attempts to apply Berne to copyright claims.

U.S. federal courts are courts of limited jurisdiction. For federal question jurisdiction, the complaint must raise an issue under U.S. copyright law. An action under foreign copyright law is not a question under U.S. federal law.  If one wishes to claim rights under foreign copyright law you have to bring an action in that foreign country under that country's foreign law.  You can’t bring it here. 

On February 2, I did a post on an opinion from a district judge in Louisiana that held termination of transfers under 17 USC 203 and 304 terminated not just rights in the U.S. but also foreign rights despite the statute quite clearly stating the opposite. 

We now have another twist on this issue: in a declaratory action, a substitute executor of the estate of Joseph Schuster asserts that claims under foreign copyright laws for termination of transfer under those foreign laws arises under U.S. law because of the Berne Convention. But Berne does not apply in the U.S. and even if it did, it says nothing about the issues in the case  The case is only the latest in decades of disputes between Schuster, Jerome Siegel, and their heirs over rights in the Superman character.  That history is detailed at DC Comics v. Pac. Pictures Corp., 2012 WL 4936588 (C.D. Cal. Oct. 17, 2012) (“Superman I”), aff’d, 545 F. App’x 678 (9th Cir. 2013). That case also rejected plaintiff here’s attempt to terminate prior U.S. grants. The current SDNY case seeks to adjudicate Canadian, UK, and Australian reversionary rights. 

As defendants point out, there is no subject matter jurisdiction in U.S. courts to hear those claims. Whether they have merit or not is a matter for those foreign courts to decide. 

Declaratory judgment defendants' filed a motion to dismiss that can be read here.

Comments

Post a Comment

Popular posts from this blog

How Not To Read A Statute: Termination Rights

From the late 1890s, when Congress began the process of revising and consolidating our copyright laws into what became the 1909 Act, the issue of the proper length of copyright was twined with the ability of authors of get back rights they had transferred. These have been called termination or reversionary rights. The 1909 Act as originally proposed had a term of life of the author, but this was dropped out of concern that authors would not be able to renegotiate royalty payments if a work later became popular. A dual system of an original term and a renewal term was believed to allow such renegotiation, or "second bite at the apple." As a result, Congress granted a 28 year original term, and a 28 year renewal term. The intent was that authors would not be able to convey rights to the renewal term when they conveyed rights to the original term. This intent was expressed in Section 24 of that act which stated that renewal could be made by “the author” (or heirs). It did not in...
Read more
 The Patry Copyright Blog Redux: Post Number 1 Thanks to my new employer, the litigation law firm of Quinn Emanuel Urquhart & Sullivan, I can restart my former blog. Naturally, the views expressed in this blog are solely mine and not the firm's. I hope the separation of personal from employer is respected.  My goal is the same as it ever was (Hat Tip to Talking Heads): provide a civilized discussion of current issues in copyright law. Passion is well and fine but let's not let it led to discussing issues as  partisans. Homilies out of the way, let's begin with the Eighth Circuit's January 14, 2025 opinion in Designworks Homes, Inc. v. Columbia House of Brokers Realty, Inc., 2025 WL 86370. Simplifying the facts and claims, Plaintiff was a residential home designer. In 1996, he designed a home featuring a triangular atrium and stairs. He obtained a registration for an unpublished architectural work. He later built a few additional homes using the design. There thin...
Read more

Beavers, Gas, and Maybe Beer in Texas

Image
A Texas sized fight between two gas station chains may help us learn who an ordinary observer of beavers is, at least in Texas. Plaintiff is Buc-ees. Defendant is Super Fuels. Plaintiff claims there is an “anthropomorphic and cartoon representation of a smiling animal that closely resembles a beaver, which is similarly positioned in a right-facing angle and is depicted in front of a circular background." Here is plaintiff’s work: Here is defendant's work: As a Northern California vegetarian, I am ill-suited to appreciate the finer points of beaver physiology, but here is a picture of one from Wikipedia: This is said to be an "American" beaver, to distinguish it from a Canadian beaver, which looks like this: Much less friendlly, right? Regardless of whether these two pictures are actually representative of their respective nations, there is the question of whether the two are, in fact, different. Do beavers stay on their own side of the St. Lawrence River, or is there...
Read more