Page:Country of Origin and Internet Publication - Applying the Berne Convention in the Digital Age.pdf/3

 presented few challenges, because works were generally published physically – whether in print or otherwise – in a distinct location or few locations. However, publishing opportunities presented by new technologies mean that we now live in a world of simultaneous publication – works that are first published online are published simultaneously to every country in worldthe world [sic] in which there is Internet connectivity. These new opportunities present unique challenges and bring to the fore the apparent gaps in the Berne Convention's country of origin provisions. For example, as discussed further in of this article, the Berne Convention fails to point to a distinct country of origin where a work is published simultaneously in multiple Union countries with the same term of protection. This is exactly the kind of scenario that is likely to arise more frequently as Member countries seek consistency in the term of copyright protection accorded to copyright works and as more and more works are first published online. In this situation, the Berne Convention offers little guidance. This creates legal uncertainties for Member countries such as the United States in determining whether a work first published over the Internet is a domestic or foreign work for the purpose of applying national copyright formalities.

Two cases recently decided in the United States deal directly with this issue. In Kernel Records Oy v. Timothy Mosley p/k/a Timbaland, et al. ("Kernel v Mosley"), the Florida Southern District Court of the United States ruled that first publication of a work on the Internet via an Australian website constituted "simultaneous publication all over the world," and therefore rendered the work a "United States work" under the definition in section 101 of the U.S. Copyright Act, subjecting the work to registration formality under section 411. This ruling is in sharp contrast with an earlier decision delivered by the Delaware District Court in Håkan Moberg v. 33T LLC, et al. ("Moberg v. 33T"). The Delaware court held that the publication of a work via a German website did not render the work a "United States work" within the meaning of section 411 of the Copyright Act, and thus need not be registered in the U.S. in order for the copyright owner to bring suit for infringement. The conflicting rulings of the U.S. courts reveal the problems posed by new forms of publishing online and demonstrate a compelling need for further harmonization between the Berne Convention, domestic laws and the practical realities of digital publishing.

In this article, we argue that even if a work first published online can be considered to be simultaneously published all over the world it does not follow that any country can assert itself as the "country of origin" of the work for the purpose of imposing domestic copyright formalities. More specifically, we argue that the meaning of "United States work" under the U.S. Copyright Act should be interpreted in line with the presumption against extraterritorial application of domestic law to limit its application to only those works with a real and substantial connection to the United States. To be clear, we argue that the extraterritorial application of U.S. law at issue here is not the imposition of formalities at the point of enforcing copyright in courts within the United States (the "enforcement stage"), but the designation, via U.S. copyright legislation and the judicial interpretation of such, of all works first published online as "United States works" within the ambit of section 411 of the U.S. Copyright Act (the "designation stage"). We propose a number of factors that may be considered in assessing whether there is a "real and substantial connection" to the United States and assert that in