Highlights of Copyright Amendments Contained in the URAA
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|This work is referred to as Circular 38b. The current edition is located at http://www.copyright.gov/circs/|
Highlights of Copyright Amendments Contained in the URAA
What Is the URAA?
On December 8, 1994, President Clinton signed the Uruguay Round Agreements Act (URAA). The URAA implements the Uruguay Round General Agreement on Tariffs and Trade (GATT), which includes an agreement on the Trade-Related Aspects of Intellectual Property (TRIPS). Several provisions of the URAA amend the U.S. copyright law at 17 USC 104A, 109 (b). The URAA also adds a new Chapter 11 to title 17 and a new section 2319A to title 18.1
United States Law Amended
The URAA amends United States law in several ways.
- It amends the computer program rental provision found in section 109 (b) of the Copyright Act by eliminating the expiration or "sunset date," so that copyright owners of computer programs will continue to enjoy an exclusive rental right.
- It amends both the Copyright Act and title 18 of the U.S. Code to create civil and criminal remedies for "bootlegging" sound recordings of live musical performance and music videos. These new remedies are in addition to any remedies that exist under the laws of the various states.
- Finally, it amends section 104A of the Copyright Act to provide for the automatic restoration of copyright in certain foreign works that are in the public domain2 in the United States but are protected by copyright or neighboring rights in the source country. The effective date for restoration of copyright for works from countries that are currently eligible is January 1, 1996. This circular explains this amendment to the law in considerable detail.
The URAA also gives the Copyright Office several responsibilities related to restoration and registration of those works.3
Restoration of Copyrights of Eligible Works
Ownership of Restored Copyright
A restored copyright vests initially in the author or initial rightholder, as determined by the law of the restored work’s source country or by the owner of an exclusive right in the United States.
Eligibility for Restoration
Copyright in eligible works was restored January 1, 1996. To be eligible, the work must meet all the following requirements:
- At the time the work was created, at least one author (or rightholder in the case of a sound recording) must have been a national or domiciliary of an eligible country. An eligible country is a country, other than the United States, that is a member of the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), is a member of the World Trade Organization (WTO), or is subject to a presidential proclamation that extends restored copyright protection to that country on the basis of reciprocal treatment to the works of U.S. nationals or domiciliaries;
- The work is not in the public domain in its source country through expiration of the term of protection;
- The work is in the public domain in the United States because the work did not comply with formalities imposed at any time by the U.S. law,4 the work lacked subject matter protection in the United States in the case of sound recordings ﬁxed before February 15, 1972, or the work lacked national eligibility in the United States; and
- If published, the work must have ﬁrst been published in an eligible country and must not have been published in the United States during the 30-day period following its first publication in that eligible country.
Term of Copyright
The copyright in any work in which copyright is restored will last for the remainder of the term of copyright that the work would have enjoyed if the work had never entered the public domain in the United States.
Generally, the U.S. copyright term for works published before January 1, 1978, lasts for 95 years from the year of ﬁrst publication. Although sound recordings ﬁxed before 1972 were not then protected by federal copyright, those sound recordings will receive the remainder of the term they would have received had they been protected by such copyright when published. For example, a sound recording published in 1925 will be protected until 2020. For works published on or after January 1, 1978, the term of copyright is the life of the author plus 70 years. For example:
- A French short story that was ﬁrst published without copyright notice in 1935 will be treated as if it had both been published with a proper notice and properly renewed, meaning that its restored copyright will expire on December 31, 2030 (95 years after the U.S. copyright would have come into existence).
- A Chinese play from 1983 will be protected until December 31 of the seventieth year after the year in which its author dies.
- A Mexican sound recording ﬁrst published in Mexico in 1965 will be protected until December 21, 2060.
For further information concerning the length of copyright protection in the United States, request Circular 15a, Duration of Copyright.
Restoration Is Automatic
Eligible copyrights are restored automatically and no further steps need to be taken to make a restored copyright fully enforceable against any party other than a reliance party.
Notice of Intent to Enforce (NIE)
Notification of Reliance Parties
Although copyright is restored automatically in eligible works, the URAA directs the owner of a restored work to notify reliance parties if the owner of the rights in a restored work plans to enforce those rights. A reliance party is typically a business or individual who, relying on the public domain status of a work, was already using the work prior to the date of enactment of the URAA on December 8, 1994.5
The URAA authorizes the owner of a right in a restored work either
- to provide actual notice by notifying a reliance party directly, or
- to provide constructive notice through the filing of a Notice of Intent to Enforce (NIE) a Restored Copyright with the Copyright Office.
The URAA further directs the Copyright Ofﬁce to publish in the Federal Register, the U.S. government's publication for ofﬁcial agency notices, a list identifying restored works and their ownership where NIEs have been filed with the Office. For inspection and copying by the public, the Copyright Office maintains a list identifying all NIEs.
Date to File NIEs
Eligibility on January 1, 1996 · The owner of a restored work may file an NIE directly with a reliance party at any time after the date of restoration. If the owner wished to file an NIE with the Copyright Office, the owner of a work whose source country as of January 1, 1996, was a member of the Berne Convention or the WTO must have filed an NIE for that work between January 1, 1996, and December 31, 1997.6 The Office published the first listing of NIEs on May 1, 1996 (61 FR 19371), and published lists at regular 4-month intervals for the next 2 years. All are available on the Copyright Office website at www.copyright.gov.
Eligibility after January 1, 1996 · When a country becomes eligible as a source country after January 1, 1996, owners of restored works from such a country will have a 2-year period from the date of eligibility for filing NIEs with the Copyright Office.
Grace Period for Use of Restored Work After Notification
A reliance party has a 12-month grace period to sell off previously manufactured stock, to perform or display the work publicly, or to authorize others to conduct these activities. This period begins when the reliance party receives notice that the owner is enforcing the copyright in the identified work. The date runs from either the date of publication in the Federal Register identifying the work or the date of receipt of the actual notice. If notice is provided both by publication in the Federal Register and service on the reliance party, the period runs from whichever date is the earlier date. Except for certain reliance parties who created derivative works, a reliance party must cease using the restored work after the 12-month grace period expires unless the reliance party reaches a licensing agreement with the copyright owner for continued use of the restored work.
Subsection (d)(3) of the amended section 104A of the Copyright Act contains special rules with respect to certain derivative works created before December 8, 1994, based on underlying restored works, such as the translation of a restored work or a motion picture based on a restored book or a play. Such derivative works may continue to be exploited by a reliance party, if the reliance party pays the owner of the restored copyright reasonable compensation.
Filing an NIE in the Copyright Office
The following information describes how to file an NIE with the Copyright Office. Filing actual notice on a reliance party is described later in this circular.
Format for Filing an NIE
The Copyright Office does not provide a form for filing an NIE, however, the attachment to this circular and the regulations published in the Federal Register and the Code of Federal Regulations contain a format that may be used to file notices. This format also may be downloaded from the Internet at www.copyright.gov.
The format includes both required and optional information. The Copyright Office strongly recommends use of this format. An NIE filed with the Copyright Office should be typed or printed legibly by hand on 8½ x 11" (or a4, i.e., 210 x 297 mm) white paper with a 1" (or 3 cm) margin.
Content of Notice of Intent to Enforce
The URAA specifies the minimum content of an NIE. It requires that the notice be signed by the owner or the owner's agent. In addition to the signature, it must contain the title, or a brief description if untitled; an English-language translation of the title if the title is in a foreign language; any other alternative titles known to the owner by which the restored work may be identiﬁed; the name of the copyright owner of the restored work or owner of an exclusive right therein; and the address and telephone number at which the owner can be contacted. Although the Copyright Ofﬁce can ask for additional information, failure to provide it will not invalidate the NIE.
The Copyright Office has identified certain information that is not required by the URAA but is important for proper identiﬁcation of a restored work. It includes:
- type of work (painting, sculpture, music, motion picture, sound recording, book, etc.)
- name of author(s)
- source country
- approximate year of ﬁrst publication
- additional identifying information (e.g., for movies: director, leading actors, screenwriter, animator; for photographs; subject matter; for books: editor, publisher, contributors)
- rights owned by the party on whose behalf the NIE is filed (e.g., the right to reproduce /distribute/publicly display/publicly perform the work, or to prepare a derivative work based on the work)
- telefax number at which the owner, exclusive rights holder, or agent can be reached
Multiple works may be included on a single NIE provided that: 1) each work is identified by title, or a brief description if untitled; 2) all the works have the same author; 3) all the works are owned by the same copyright owner or the owner of the exclusive rights therein; and 4) the rights owned by the party on whose behalf the notice is being filed are the same.
Signature and Certification
The NIE must be signed by the owner of the restored copyright, the owner of an exclusive right therein, or an agent of the owner. The agency relationship must be established in writing and signed by the owner before the NIE is filed.
The NIE must include a certification statement indicating that the information given is correct to the best of the filer's knowledge. Any material false statement knowingly made with respect to any restored copyright identified in an NIE shall void all claims and assertions against reliance parties made about such restored copyright. The certification statement is found on the sample format.
The nonrefundable fee* for filing an NIE covers a notice including one work. For a notice covering multiple works, there is an additional fee for each group of 10 titles. The fee includes the cost of an acknowledgement of recordation, which will be mailed to the filer after the Copyright Office records the NIE. The fee may be paid by any of the following methods:
- Checks, money orders, or bank drafts made payable to Register of Copyrights. Remittances must be redeemable without service or exchange fees through a U.S. institution, must be payable in U.S. dollars, and must be imprinted with American Banking Association routing numbers. Currency, international money orders, and postal money orders that are negotiable only at a post office are not acceptable.
- Copyright Office deposit account. This is an account into which an applicant makes advance payment for use later in paying copyright fees. For information on deposit accounts, request Circular 5, How to Open and Maintain a Deposit Account in the Copyright Office.
- Credit cards (for use only in ﬁlings under the URAA). The Copyright Ofﬁce will accept Visa, MasterCard, and American Express. Debit cards cannot be accepted for payment. To pay by credit card, the filer must provide in a separate letter the name of the credit card used, the credit card number, the expiration date of the credit card, the total amount authorized to be charged, and a signature authorizing the Copyright Ofﬁce to charge the fees to that account. To protect the security of the credit card number, the credit card number must not appear on the NIE, since the notice becomes part of the public record.
The filer of an NIE must ensure that sufficient funds accompany the NIE or are available in a deposit account. Insufficient fees could delay the effective date of notice.
Send NIEs to the following address:
PO Box 70400, Southwest Station
Washington, DC 20024 USA
Do not mail to the Copyright Office.
Serving Notice Directly on a Reliance Party
The Copyright Ofﬁce does not provide a form for use in serving an NIE directly on a reliance party. Those parties choosing to serve a Notice of Intent to Enforce a Restored Copyright on the reliance party should note that the URAA requires additional information. Therefore, if they use the Copyright Office's NIE format as a guide for the actual notice, it will be incomplete unless the additional information specified is added. The URAA speciﬁcations follow, with roman type added to show additional requirements for actual notice:
Actual notice may be served on a reliance party at any time after copyright in the work is restored.
Restoration of Claims to Copyright in Restored Works
The URAA directs the Copyright Ofﬁce to provide procedures for registration of claims to copyright; however, copyright owners of restored works need not register their works. Although the copyright law provides that the author or copyright owner of a work that is not considered a Berne Convention work must register the work or seek registration before he or she can bring a copyright infringement action in federal court,7 the owner of rights in a Berne work does not have to register before initiating a copyright infringement suit.
Who May Claim Copyright
A claim in a restored work may be registered only in the name of the owner(s) of the U.S. copyright on the date that the application is submitted, that is, in the name of the owner(s) of all U.S. rights in that work. A licensee or other owner of only certain exclusive rights in a work is not permitted to register a claim in a restored work in his or her name.
How to Obtain GATT Registration Forms
Special GATT registration forms must be used for registration of works restored under the URAA. Use Form GATT for claims to copyright in restored works and restored works published under a single series title.
There are several ways to obtain forms.
- Request a limited number of free application forms by writing to:
101 Independence Avenue SE
Washington, DC 20559-6000
- Call the Forms and Publications Hotline at (202) 707-9100 at any time and leave a recorded message.
- Download forms from the Copyright Ofﬁce website at www.copyright.gov. Forms should be printed head-to-head on a single piece of 8½ x 11" white paper so that when you turn the paper over, the top of page 2 is directly behind the top of page 1. The Copyright Office requires downloaded applications on a single sheet of paper. Therefore, you should consider reinserting the first page back into the printer so that the back page will be printed onto it.
- Fill in the forms on the Copyright Ofﬁce website. Go to www.copyright.gov/forms and follow the instructions. The fill-in forms allow you to enter information while the form is displayed on the screen by an Adobe Acrobat Reader product. You may then print the completed form and mail it to the Copyright Office. Fill-in forms provide a clean, sharp printout for your records and for filing with the Copyright Office.
- Photocopy forms legibly on a single sheet of good quality 8½ x 11" white paper following the instructions for downloaded forms.
When determining publication information regarding restored works for which registration is sought, the following guidelines are offered:
- For works published on or after January 1, 1978: Publication is the distribution anywhere in the world of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication. (17 USC 101)
- For works published before January 1, 1978: Publication may be deﬁned as the act of making one or more copies of a work available to the general public, usually by the sale, placing on sale, or the public distribution of one or more copies or sound recordings without express or implied restrictions as to future use. Recordings of musical compositions were not considered copies of the recorded music before January 1, 1978. A distribution of a recording before that date would publish the sound recording but not the music contained on the recording.
Instructions for completing the application forms and information on deposit preferences are included on the forms supplied by the Copyright Office. Applications, deposit copies, and fees should be submitted in one package.
The basic registration fee is also applicable to a series of works published during a calendar year under a single title in episodes, installments, or issues. Copyright Ofﬁce fees are subject to change. For current fees, please check the Copyright Office website at www.copyright.gov, write the Copyright Office, or call (202) 707-3000.
Applications to register restored works should be sent to the following address:
101 Independence Avenue SE
Washington, DC 20559-6000
Public Access to NIE Information and Copyright Office Registrations
The information contained in NIEs filed with the Copyright Office and in copyright registrations and related documents catalogued since January 1, 1978, is open to the public for searching. These records are also available via the Copyright Office website at www.copyright.gov. In addition, upon request, the Copyright Office will search its files for a fee.
The online information includes 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 (if given); 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 (if given); and the address, telephone, and telefax number (if given) of the copyright owner.
Online records of NIEs are searchable by the title of the work, the copyright owner or owner of an exclusive right, and the author.
The Copyright Office is located in the Library of Congress, James Madison Memorial Building, 101 Independence Avenue SE, Washington, DC. The public records of Notices of Intent to Enforce may be searched by the public Monday through Friday, 8:30 am to 5:00 pm, eastern time, except federal holidays. Public terminals are located in the Copyright Office and in the reading rooms of the Library of Congress.
Upon request and payment of a fee, the Copyright Office staff will search the records and furnish a written report. For further information, request Circular 22, How to Investigate the Copyright Status of a Work, or contact:
Copyright Office Reference and Bibliography Section
101 Independence Avenue SE
Washington, DC 20559-6000 USA
tel: (202) 707-6850
fax: (202) 707-6859
Relationship to NAFTA
Under the NAFTA Implementation Act,8 a number of Mexican motion picture owners timely filed a Statement of Intent to Restore with the Copyright Ofﬁce.9 These works will continue to enjoy copyright protection, but such protection will be governed by the new section 104A substituted by the URAA.
Copyright owners of these works need not file an NIE under the URAA. However, other works from NAFTA countries that are in the public domain in the United States, including motion pictures for which no NAFTA restoration was sought, are subject to copyright restoration under the new section 104A. NAFTA works that have not been registered may be registered using the URAA registration procedures, including GATT forms and deposit preferences.
For Further Information
Information via the Internet
Circulars, announcements, regulations, other related materials, and all copyright application forms are available from the Copyright Ofﬁce website at www.copyright.gov.
Information by telephone
For general information about copyright, call the Copyright Public Information Ofﬁce at (202) 707-3000. The tty number is (202) 707-6737. Staff members are on duty from 8:30 am to 5:00 pm, eastern time, Monday through Friday, except federal holidays. Recorded information is available 24 hours a day. Or, if you know which application forms and circulars you want, request them 24 hours a day from the Forms and Publications Hotline at (202) 707-9100. Leave a recorded message.
Information by regular mail
101 Independence Avenue SE
Washington, DC 20559-6000
^2 . Sound recordings ﬁxed before February 15, 1972, would not be in the public domain; they were protected by state, not federal, copyright law.^3 . The Copyright Ofﬁce has issued ﬁnal regulations governing its administration of restoration of copyrights under the URAA, including the filing of NIEs and registration of copyright claims in restored works by amending section 201.31 of 37 CFR and by adding new sections 201.33 and 202.12 to implement the URAA (60 FR 50414).
^4 . The work could be in the public domain because the copyright owner failed to comply with one or more of the formalities required by U.S. copyright law, for instance by publishing the work without a proper copyright notice, failing to renew the copyright, or by failing to comply with the manufacturing clause or ad interim provisions of the copyright law.
^5 . This is true for the great majority of works. However, for works from any country that was not eligible under the URAA as of December 8, 1994, reliance parties would be those using the work before the date on which that country becomes an eligible country by joining Berne or the WTO or as a result of a Presidential proclamation.
^7 . 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, but one can only assume that works that do not come under the deﬁnition of "Berne Convention work" found in 17 USC 101 would have to be registered before the owner can initiate a suit.^9 . See 60 FR 8252 (February 13, 1995) for a list of these works.