The Southern District Court of New York held recently that certain formality-requiring provisions of the US Copyright Act cannot be challenged under the Berne Convention as it is not a self-executing treaty. [The Berne Convention states that the enjoyment and exercise of copyright shall not be subject to any formality]

While the Southern District has previously ruled that the Berne Convention is not self-executing, the practical effect of this ruling is significant The formalities in question require the registration of copyrights by the owner with the US Copyright Office prior to an infringement, or at the most within the 3 month grace period after publication in order to be eligible for statutory damages and attorney fees.

The US is the only country where such a requirement is necessary. Thus a plaintiff would be required to prove actual damages and/or profits made by the defendant alleged with infringement in the absence of the plaintiff's registration of the copyright.

For the full article by James Trigg and Harris W. Henderson reviewing this case, see Elsevier B.V. v. UnitedHealth Group, Inc., No, 9 Civ. 2124 (S.D.N.Y. January, 14, 2010)