The vibrant and rich digital landscape allows content to be shared in an extensive and borderless manner. Image stands out as one of the most shared media assets, used across social media platforms, e-marketplaces, and business homepages to convey messages, spark conversations, and establish connections. The frequent application and usage of images online, however, also indicates a high likelihood of unauthorized image use, whether inadvertent or on purpose. Regardless of intentions, such misuse brings tremendous financial loss to image owners and damages to the creative industry.
When it comes to enforcement, copyright owners may have to navigate multiple legal systems due to differences in national laws, lack of harmonization, recognitions of judgements, choice of law, data privacy, etc. Despite existing international treaties provide a framework to facilitate copyright protection among member countries, practical enforcement remains a challenge. This article summarizes important international treaties and legal precedents involving cross-border copyright infringement to drive informed decision-making in copyright protection.
International Treaties
The Berne Convention for the Protection of Literary and Artistic Works
First established in 1886, the Berne Convention is an international agreement that sets minimum standards for copyright protection across member countries, namely the types of works protected (e.g., literary, artistic, musical) and types of rights protected (e.g., reproduction, translation, public performance), and duration of protection (50 years after the author’s death, 70 years in the EU). Member countries are obliged to grant the same protection to works originated in another member country, regardless of whether copyright protection mechanism exists in another member country. This treaty ensures that rightsholders have the means to control how to use their works and to make a living from their creative outputs. So far, 181 countries have signed the treaty.
World Intellectual Property Organization (WIPO) Treaties
The WIPO administers a comprehensive framework of 28 international treaties that establish global standards for the protection and enforcement of intellectual property (IP) rights. When it comes to images and copyright enforcement in digital spaces, the WIPO Copyright Treaty (WCT), a special agreement under the Berne Convention, addresses protection of copyrighted work in the digital environment. Besides rights acknowledged by the Berne Convention, the WCT grants the right of distribution, the right of rental, and a broader right of communication to the public, covering copyright protection of works specifically in digital formats such as computer programs and databases.
Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement
The TRIPS agreement is administered by the World Trade Organization (WTO) and sets minimum standards for the protection of various intellectual properties. This agreement aims to balance the need for IP protection with the need to access knowledge and technology to drive innovations. The agreement allows for some flexibility in the implementation of IP enforcement, especially in developing countries to help them achieve economic and public policy goals.
The European Parliament published a study that addresses the cross-border enforcement of IP rights in the EU. According to the report, developing countermeasures against online copyright infringement has been a challenging task for policymakers because the recognition and enforcement of intellectual property rights remains largely territorial. The magnitude and scope at which the content is exchanged at a global scale suggests the need for mechanisms that are applicable beyond national borders. Regarding the current online enforcement methods, the EU adopts voluntary, administrative and judicial measures. Despite comparatively comprehensive measures at the member state level, an order or judgement reached in one member state is unlikely to automatically achieve full binding effect in another member state. Rightsowners are likely required to submit additional claims to pursue compensations in other jurisdictions.
Court cases
Swedish Photographer Håkan Moberg published his photographs on a German website in 2004, which was then used by 33T LLC, a U.S.-based company without permission. Moberg brought a copyright infringement action against 33T LLC. 33T LLC argued that by publishing the photographs on the German website, the works are simultaneously published in the US. Section 411 of the US Copyright Act requires copyright registration with the Copyright Office before infringement action can be pursued regarding that work. However, defendants’ motion to dismiss the case was denied by the court. Posting content on a foreign domain does not constitute work in the US, so the plaintiff can pursue legal actions without the formalities of registering their work with the Copyright Office.
The reasoning behind the court’s decision is to reinforce the goals of the Berne Convention in reducing barriers in tackling cross-border copyright infringement and in promoting uniformity in international enforcement practice. In hindsight, this ruling is insightful to prevent an exponential increase of copyright infringement of non-U.S. work in today’s digital landscape where content is shared rapidly every day. After all, most of foreign works are not registered in the US.
Facebook, Inc. v. StudiVZ Ltd. (USA & Germany)
StudiVZ (“Student Directory“ in German) is a Berlin-based social networking site launched in October 2005 by Ehssan Dariani and Dennis Bemmann. In 2006, Facebook sent demand letters to StudiVZ, alleging infringements of its site’s design, features and services, in addition to PHP source code. In 2008, StudiVZ filed declaratory judgement action in Stuttgart to establish that Facebook’s claims were without merit. In the same year, Facebook filed a lawsuit against StudiVZ in California and in Cologne, alleging unfair competition, trademark infringements, copyright infringements, etc.
The U.S. District Court considered the doctrine of forum non conveniens and suggested that Germany was a more appropriate forum for the dispute. Since the alleged infringing activities occurred primarily in Germany, which facilitates evidence collection and application of national law, the US court deferred to the German forum before reaching a final decision. In 2009, the German court ruled against Facebook, stating that Facebook lacked sufficient brand recognition in Germany when StudiVZ was launched to constitute IP infringement. In addition, no evidence was found to support the claim that StudiVZ copied Facebook’s code or that StudiVZ’s launch incurred unfair competition. In the U.S. case, Facebook and StudiVZ reached a settlement, with StudiVZ paying an undisclosed sum to Facebook.
This case shows the complexities in enforcing IP rights across border, from choosing the appropriate forum, procedural challenges in international litigations, and divergence in national laws.
Hejduk v. EnergieAgentur NRW GmbH
Pez Hejduk, an Austrian architectural photographer discovered that a German company, EnergieAgentur NRW, used her photographs on their website without permission or attribution. Therefore, Ms. Hejduk initiated legal proceedings in the Commercial Court of Vienna, Austria. EnergieAgentur argued that the website was not directed at Austria, and the mere accessibility of the website in Austria was insufficient to establish jurisdiction.
In January 2015, Court of Justice of the European Union held that Article 5(3) of Council Regulation allowed claimant to sue in the courts of the place where harmful event occurred. In cases of online infringement, both the place where the content was uploaded and the place where the content was accessible can be used to sue. Even though EnergieAgentur’s website was not directed at Austrian audience, mere accessibility in Austria sufficed. Her copyright was protected under Austrian law. This decision empowers rightsholders to initiate legal action in their home jurisdictions against infringing activities that take place in other member countries, facilitating enforcement.
Although the decision provided a framework within the EU for addressing cross-border copyright infringing activities, extending similar practice globally remains difficult, due to divergence in national laws, economic disparity, and lack of international harmonization. For example, in countries where the enforcement infrastructure is limited, despite filing lawsuits in one’s country and obtaining a favorable judgement, infringers abroad may not respond or participating in the proceedings, rendering little practical impacts. In the long term, the harmonization and unification of copyright law, development of a robust enforcement infrastructure, and international cooperation will reduce cross-border dispute regarding copyright enforcement and better protect rightsowners globally.
