The Berne Convention for the Protection of Literary and Artistic Works, first adopted in 1886 and commonly referred to as the Berne Convention, is the main international agreement dealing with the protection of copyright-eligible works and the rights of their creators. Amongst its provisions are requirements relating to protection of foreign works by member states. Specifically, all members are required to ensure that their copyright systems give the same protections to both works created by domestic authors and works authored by foreign nationals (i.e. the local laws apply to foreign works). This is known as ‘national treatment’, and is a fundamental principle of the Berne Convention (and a key feature of many of the international conventions protecting intellectual property). Another key concept is the requirement for automatic protection for eligible works – in other words, there must be no requirement for any formalities (like use of the © symbol or completion of a registration process) in order for a work to be protected by copyright in a member state. The Berne Convention also includes a range of special provisions directed towards developing countries.
There are currently1 179 signatories to the Berne Convention (including Australia), and this number is set to increase shortly, with Cambodia recently taking steps to ratify the Convention and authorise the making of changes to local laws for compliance purposes. One of the most significant changes will be the automatic grant of protection to foreign works in Cambodia, which is something not contemplated by current laws in the jurisdiction. It has also been indicated that Cambodia, as a developing country, will take advantage of the compulsory licensing provisions for translation and reproduction of works for non-commercial educational purposes. It is expected that Cambodia’s accession to the Berne Convention will be completed by September 2020, and become effective three months after.
Though it establishes a series of minimum requirements and thresholds for member states, the Berne Convention does not prescribe how member states are to implement these. This approach has led to variations amongst the copyright systems of jurisdictions.
One of the most significant examples of this is the implementation of voluntary registration systems in certain countries. Most notable is the copyright system in the United States of America, which has historically required copyright to be formally registered with the US Copyright Office in order for the copyright owner to enforce his/her rights in a court. Timely registration of copyright in the US also permits the owner to seek additional remedies in the event of an infringement action.
Once it joined in 1989, the requirements of the Berne Convention meant that the United States was not permitted to require foreign authors to register their copyright with the US Copyright Office as a precondition to enforcement (it has however maintained the requirement for domestic authors). Despite this, there are strong benefits to foreign owners registering copyright in the United States. Registering the work with the US Copyright Office will enable the foreign owner to have access to an award of statutory damages, which do not require proof in the same way that actual damages or profits do and are therefore much easier to obtain and more attractive to rights owners.
China, another signatory to the Berne Convention, also operates a voluntary registration system for copyright, including a specific software copyright registration system. Registration of copyright works by foreign authors in China significantly simplifies enforcement of rights in that country.
It is therefore recommended that when an owner is looking to make available or commercialise copyright-protected works outside Australia, consideration be given to any steps that should be taken to ensure that the work is able to be enforced in the most simple and cost-effective manner in key overseas territories, which may require registration of copyright with overseas copyright offices.
HWL Ebsworth is able to advise on such requirements, and assist with implementation as required. Please contact a member of our team for further information on how we can assist you.
This article was written by, Luke Dale, Partner and Niomi Abeywardena, Special Counsel.
1 As at 23 July 2020
