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Date 31-01-2017

The respect of formalities: beyond the formula of the Berne Convention(1), an essential practical utility

The respect of formalities was often presented as an important marker of the differences between an author’s right country and a copyright country. The opposition must be put in perspective today. In France, the Decree of July 19th and 24th, 1793 stated in its article 6 that the author had to register copies of her/his work at the National Library, failing that she/he could not "be admitted in justice for the pursuit of counterfeiters". This requirement has been eliminated in 1915, further to the revision of the Bern Convention in 1908. The United Kingdom has known a similar evolution. The Act adopted in 1842, forbidding the prosecution of counterfeiters for lack of formalities, was repealed in 1911. The key of the distinction lies therefore in the Bern Convention and it is only the situation in the United States that must catch our attention. Before presenting the concrete contents of these formalities, it is necessary to understand their legal basis.

Both in the United Kingdom and in the United States, the respect of formalities is to be put in connection with the system of the privileges which allowed the organization of a control of the works by the States. The respect of formalities answers the same concerns. The Bern Convention which establishes in its article 5-2 that: "The enjoyment and the exercise of these rights shall not be subject to any formality" shows that the goal was to prevent States from controlling the works. Respect of formalities is the product of a history but also the expression of a philosophy. The principle, according to which the author’s right arises from the creation itself, must be connected with the philosophy of natural rights. The right is born in the absence of any control of the State. The existence of formalities is on the other hand to be linked with the analysis which makes of copyright a legal monopoly. The formalities indeed allow the verification of the fact that the work answers to the required conditions and that it is could therefore be protected. Two systems radically opposed. Naturally the formalities are also a practical answer to several difficulties. The registrations or other recordings have indeed for purpose to inform third parties of the existence of the rights, which answers a goal of transparency and fair competition. With the rights clearly identified, formalities allow to identify their owners; a point which appears essential in the course of trade. The formalities also allow dating the works which can also be made by different means (bailiffs, solicitors, author's companies, private bodies[1]) by all rights-holders of continental author’s rights.

What is the content of formalities in the United States? The American copyright knows two means of registration (or knew one should say): the copyright notice and the copyright deposit. The copyright notice is well known. It must contain on every copy of the work the following three elements: firstly the symbol © (letter C in a circle), secondly the year of the first publication of the work, and finally the name of the copyright owner. Under the Act of 1909, the copyright could be acquired only on the condition of respect of this copyright notice. In other words, the formality held the granting of the right. Failing that notice, the work stayed in the public domain. In the Act of 1976, the system was maintained; however, the legislator inserted hypotheses where the omission would not invalidate the right (for example if the copyright owner added the notice during a period of five years following the publication of the work). In spite of this loosening, the penalty of lack of copyright notice remained the "fall" of the work in the public domain. Following the accession of the United States to the Bern Convention on March 1st, 1989, the copyright notice is not required anymore. This however concerns only the works published after this date. The preservation of this mention after this date keeps all the same certain interest. Indeed, by virtue of article 401 of the Copyright Act, in the absence of such a notice, the counterfeiter will be authorized to plead "the innocent infringement". He can accordingly obtain a reduction of the damages due to the copyright owner. Thus it is recommended to keep adding this notice.

The deposit and registration represent another formality. As opposed to the copyright notice, the registration is not a condition of copyright protection. The Supreme Court indeed judged in 1939 that these formalities did not condition the existence of the right but only its exercise. Under the Act of 1976, as that of the 1909, thus the recording is a prerequisite in any legal action. Under the influence of the law of 1976, the formality also represents a beginning of proof of the validity of the copyright. Two good reasons for complying with these formalities. What do they consist of? Concretely the copyright owner must send a form to the Copyright Service providing them with a certain number of information related to the work and its ownership (see article 409). This sending comes along with the payment of a tax, which varies between 35 and 65 dollars, whether the deposit was made online or not. The registration is inevitably accompanied with the sending of two copies of the work which are going to be inserted in Library of Congress.

The Act of 1989 modified profoundly these rules. After the accession of the United States to the Bern Convention on March 1st, 1989, the Bern Convention Implementation Act (the BCIA) exempted copyright owners from formalities to act against a violation of their copyright for works whose country of origin was not the United States. Two sets of works could therefore be distinguished: the "foreign" works, for which the formalities of deposit and registration were no longer necessary and the American works, for which the formalities of deposit continued to be applicable. In fact, this display of things does not correspond to the reality. The BCIA did not question article 412 which established that the recording of the works is a precondition for the allocation of damages and lawyers’ fees. Yet this requirement is applicable for both the American and foreign works. The legal damages or statutory damages can represent considerable amounts (up to 100 000 $ by counterfeited work), in particular since the Congress decided to double the amount of this damages. Besides this financial interest, the deposit creates a copyright presumption for the foreign works. Moreover, it allows the copyright owner to forbid importation counterfeited goods in the United States by sending a written request to the service of American customs. The evolution of the formalities in the United States is thus a little contradictory. The formalities allowing the grant of the right totally disappeared, but at the same time the Congress strengthened the formalities at the procedural level.



[1] Article 5-2 of the Bern Convention states that : "The enjoyment and the exercise of these rights shall not be subject to any formality"

[2] For the United Kingdom see for example: UK Copyright Service https://www.copyrightservice.co.uk/protect/supporting