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UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF NEW YORK 

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THE FOOTBALL ASSOCIATION PREMIER LEAGUE 

LIMITED, BOURNE CO. (together with its 

affiliate MURBO MUSIC PUBLISHING, INC.), 

CHERRY LANE MUSIC PUBLISHING COMPANY, 

INC., CAL IV ENTERTAINMENT LLC, ROBERT 

TUR d/b/a LOS ANGELES NEWS SERVICE, 

NATIONAL MUSIC PUBLISHERS’ ASSOCIATION, 

THE RODGERS & HAMMERSTEIN ORGANIZATION, 

STAGE THREE MUSIC (US), INC., EDWARD B. 

MARKS MUSIC COMPANY, FREDDY BIENSTOCK 

MUSIC COMPANY d/b/a BIENSTOCK PUBLISHING 

COMPANY, ALLEY MUSIC CORPORATION, X-RAY 

DOG MUSIC, INC., FÉDÉRATION FRANÇAISE DE 

TENNIS, THE MUSIC FORCE MEDIA GROUP LLC, 

THE MUSIC FORCE LLC, and SIN-DROME 

RECORDS, LTD. on behalf of themselves 

and all others similarly situated, OPINION and ORDER 

 

 Plaintiffs, 07 Civ. 3582 (LLS)

 

 - against - 

YOUTUBE, INC., YOUTUBE, LLC and GOOGLE, 

INC., 

 Defendants. 

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 In this putative class action for copyright infringement 

brought under the U.S. Copyright Act of 1976 (17 U.S.C. § 101 et

seq.), defendants move for judgment on the pleadings dismissing 

plaintiffs’ claims under the Act for (1) statutory damages on 

foreign works that have not been registered with the U.S. 

Copyright Office and (2) punitive damages.1

 Plaintiffs’ Copyright Act claims for statutory damages are 

dismissed with respect to all foreign works which were not 

registered in the United States (“unregistered foreign works”), 

except those in suit under the “live broadcast exemption” in 

Section 411(c) of the Act. 

 

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 Although defendants’ motion also seeks, in the alternative, to strike 

those claims, it is treated as a motion for judgment on the pleadings 

dismissing those claims. 

The Football Association Premier League Limited et al v. Youtube, Inc. et al Doc. 133

Dockets.Justia.com
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I. Statutory Damages

A. Section 412 of the Copyright Act 

 Defendants argue that because statutory damages are not 

available under the Copyright Act for the unregistered foreign 

works plaintiffs sue upon, plaintiffs’ Copyright Act claims for 

statutory damages on those works must be dismissed. 

 Plaintiffs respond that they may seek statutory damages on 

unregistered foreign works because all foreign works, as a 

matter of law, are exempt from any registration requirements 

under the Act. 

 That response is foreclosed by Section 412 of the Act. 

With specified exceptions, Section 412 prohibits recovery of 

statutory damages for each and every work unless the work was 

registered (a) before the infringement commenced or (b) within 

three months after its first publication. Section 412 states in 

pertinent part: 

Registration as prerequisite to certain remedies for 

infringement 

 In any action under this title, other than an 

action . . . instituted under section 411(c), no award 

of statutory damages . . . shall be made for—— 

(1) any infringement of copyright in an unpublished 

work commenced before the effective date of its 

registration; or 

(2) any infringement of copyright commenced after 

first publication of the work and before the effective 

date of its registration, unless such registration is 

made within three months after the first publication 

of the work. 

17 U.S.C. § 412. 

 Section 412 has no exception excusing foreign works from 

its mandate: it requires registration to obtain statutory 
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damages for both domestic and foreign works. Cf. Master Sound 

Int’l, Inc. v. PolyGram Latino U.S., No. 98 Civ. 8468 (DLC), 

1999 WL 269958, at *3 (S.D.N.Y. May 4, 1999)(“Registration is a 

prerequisite to bringing suit for recovery of [statutory] 

damages and [attorney’s] fees, and [Section 412] does not 

incorporate an exception for works originated in countries 

outside the United States.”); accord Rudnicki v. WPNA 1490 

AM, 580 F. Supp. 2d 690, 694 (N.D.Ill. 2008)(“Registration is 

only a prerequisite when the foreign copyright holder seeks 

statutory damages and attorney’s fees.”); Peliculas Y Videos 

Internatcionales, S.A. de C.V. v. Harriscope of Los Angeles, 

Inc., 302 F. Supp. 2d 1131, 1138-39 (C.D.Cal. 2004)(statutory 

damages unavailable on four foreign films because they were not 

timely registered in accordance with Section 412); Parfums 

Givenchy, Inc. v. C & C Beauty Sales, Inc., 832 F. Supp. 1378, 

1393-95, 1393 n.13 (C.D.Cal. 1993)(statutory damages not 

recoverable on foreign design for perfume box because it was not 

timely registered as required by Section 412); 2 NIMMER ON 

COPYRIGHT § 7.16[C][1], at 7-183 (2008)(“the loss of remedies 

under Section 412 due to failure to register is applicable to 

works of foreign origin as well as to domestic works”). 

 Section 411(a) of the Act, which requires preregistration 

or registration before any copyright infringement suit may be 

brought, is limited to U.S. works, stating “no civil action for 

infringement of the copyright in any United States work shall be 

instituted until preregistration or registration of the 

copyright claim has been made”, 17 U.S.C. § 411(a) (emphasis 

added), and thus allows suits to be brought upon foreign works 

without registration of them; but it does not impair the 

operation of Section 412, which forbids the recovery of 

statutory damages in any infringement action (except, among 

others, those under Section 411(c) concerning live broadcasts) 
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unless the work has been registered. Unlike Section 411(a), 

Section 412 has no such limitation to U.S. works: it applies to 

all unregistered works. See Barnhart v. Sigmon Coal Co., 

Inc., 534 U.S. 438, 452 (2002)(“when Congress includes 

particular language in one section of a statute but omits it in 

another section of the same Act, it is generally presumed that 

Congress acts intentionally and purposely in the disparate 

inclusion or exclusion” (internal quotation marks omitted)). 

 That Congress did not intend to exempt foreign works 

generally from Section 412 is also clear from the Act’s 

legislative history. The House of Representatives’ Report 

accompanying the Act shows that Section 412 was enacted to 

induce copyright registration, “which is useful and important to 

users and the public at large,” by denying “special statutory 

remedies unless the owner has, by registration, made a public 

record of his copyright claim.” H.R. Rep. No. 94-1476, at 158 

(Sept. 3, 1976). According to the Report (at 158), the Act’s 

general scheme permits a copyright owner whose work has been 

infringed before registration to seek the ordinary remedies of 

an injunction and actual damages plus any applicable profits, 

while: 

section 412 would deny any award of the special or 

“extraordinary” remedies of statutory damages or 

attorney’s fees where infringement of copyright in an 

unpublished work began before registration or where, 

in the case of a published work, infringement 

commenced after publication and before registration 

(unless registration has been made within a grace 

period of three months after publication). 

 The Report’s next sentence states that “These provisions 

[of Section 412] would be applicable to works of foreign and 

domestic origin alike.” Id. 
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B. International Agreements 

 Plaintiffs contend that unless Section 412 is construed to 

exempt all foreign works from its directive it would violate two 

international agreements to which the U.S. is bound: the Berne 

Convention for the Protection of Literary and Artistic Works, an 

international copyright treaty which the U.S. joined in 1989, 

and the Agreement on Trade-Related Aspects of Intellectual 

Property Rights (“TRIPs”), a trade agreement the President made 

in 1994. Further, plaintiffs say, an amendment to Copyright Act 

§ 411(a) in the Digital Millennium Copyright Act of 1998 

(“DMCA”) shows that Congress intended § 412 to be so construed, 

to conform to the foregoing and similar international 

agreements. 

 None of the materials on which plaintiffs rely so alters 

Section 412’s terms. 

1. The Berne Convention 

 Plaintiffs assume that if Section 412 denied statutory 

damages on a foreign work for failure to register, it would 

violate “one of the most fundamental tenets of Berne, that ‘the 

enjoyment and the exercise of [copyright] shall not be subject 

to any formality.’” Class Pls.’ Opp. at 9-10 (plaintiffs’ 

brackets), quoting Berne Convention Art. 5(2). 

 Congress rejected that assumption when it passed the Berne 

Convention Implementation Act of 1988 “to make the changes to 

the U.S. copyright law that are necessary for the United States 

to adhere to the Berne Convention.” S. Rep. No. 100-352, at 1 

(May 20, 1988). 

 The Senate Judiciary Committee confronted “the question of 

whether the registration provisions of existing U.S. copyright 
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law, as applied to foreign works originating in States adhering 

to Berne, constitute a prohibited formality” (id. at 13). 

 With respect to Copyright Act § 411(a), which at that time 

required registration as a prerequisite for a copyright 

infringement suit for both foreign and domestic works, the 

Senate Judiciary Committee “concluded that section 411(a) in its 

current form is incompatible” with Berne. Id. at 14. Although 

the House of Representatives disagreed, Congress as a whole 

ultimately exempted foreign “Berne Convention works” from 

Section 411(a)’s registration requirement, while leaving it 

intact as to U.S. and other works. See 134 Cong. Rec. H10091, 

at H10093, H10096 (daily ed. Oct. 12, 1988). Thus, pursuant to 

that exemption, one could bring an infringement suit (although 

not obtain statutory damages) based on an unregistered foreign 

Berne Convention work. 

 Neither the House nor the Senate found that Section 412, 

which denies statutory damages for both foreign and domestic 

unregistered works, violated the Berne Convention. The Senate 

Judiciary Committee concluded that Section 412 and other 

provisions of the Copyright Act “do not condition the 

availability of all meaningful relief on registration, and 

therefore are not inconsistent with Berne.” S. Rep. No. 100-

352, at 14-15. 

 Even if Section 412 were in conflict with the Berne 

Convention, Section 412 would be binding. The Berne Convention 

has no effect on U.S. law unless Congress so provides,2

 and 

 

2

 Congress declared in the Berne Convention Implementation Act (Pub. L. 

100-568 § 2, codified at 17 U.S.C. § 101 note): that “the ‘Berne 

Convention’” is “not self-executing under the Constitution and laws of the 

United States”; that “The obligations of the United States under the Berne 

Convention may be performed only pursuant to appropriate domestic law”; and 

that “The amendments made by this Act, together with the law as it exists on 

the date of the enactment of this Act, satisfy the obligations of the United 

States in adhering to the Berne Convention and no further rights or interests 

shall be recognized or created for that purpose.”
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Congress left Section 412 “unaffected” by the Berne Convention 

Implementation Act (134 Cong. Rec. at H10096). 

2. Agreement on Trade-Related 

Aspects of Intellectual Property Rights (“TRIPs”) 

 Nor would Section 412 be altered by TRIPs, one of the 

Uruguay Round Agreements on trade entered into by the President 

in 1994, even if applying it to foreign works conflicted with 

TRIPS. “TRIPs is plainly not a self-executing treaty”, ITC Ltd. 

v. Punchgini, Inc., 482 F.3d 135, 161 (2d Cir. 2007), and 

Congress has mandated that U.S. laws such as Section 412 prevail 

if they conflict with any of the Uruguay Round Agreements (see

19 U.S.C. § 3512(a)(1)), including TRIPs (see id. §§ 3501(7), 

3511(a)(1) & (d)(15)). As stated by the Uruguay Round 

Agreements Act implementing TRIPs: “No provision of any of the 

Uruguay Round Agreements, nor the application of any such 

provision to any person or circumstance, that is inconsistent 

with any law of the United States shall have effect.” Id. § 

3512(a)(1). 

3. Digital Millennium Copyright Act of 1998 (“DMCA”) 

 Plaintiffs argue that an amendment to Copyright Act § 

411(a) made by the DMCA shows that Congress intended § 412 to be 

construed to exempt all foreign works from its rule, to conform 

to “an increasing array of international treaties and trade 

agreements that prohibit the conditioning of copyright rights 

and remedies on formalities such as copyright registration.” 

Class Pls.’ Sur-Reply at 2. 

 Plaintiffs cite no binding authority holding that Section 

412’s terms violate any treaty or trade agreement, and the 
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DMCA’s legislative history shows that the amendment it made in 

Section 411(a) was not meant to change Section 412. 

 When Congress was considering the DMCA, Section 411(a) 

exempted foreign “Berne Convention works” from its requirement 

that works be registered before suit could be brought for their 

infringement. See S. Rep. No. 105-190, at 27 (May 11, 1998). 

Congress decided that the exemption needed to be expanded to 

include works from parties to two treaties the United States 

made after the Berne Convention. See id. Rather than leave 

Section 411(a)’s general rule in place and draft an exception 

listing all the treaties, in the DMCA Congress amended Section 

411(a) to “state affirmatively that ‘United States works’ must 

be registered before suit.” Id. 

 That was done so that “section 411(a), as amended by [the 

DMCA], may be easily updated each time the United States joins 

another treaty, without the need to change several interrelated 

provisions of the [Copyright] Act.” Id. The change was merely 

one of “several technical amendments to the U.S. Copyright Act.” 

Id. at 25. Congress, by the DMCA, certainly did not intend a 

sweeping exemption of all foreign works from Section 412’s bar 

of statutory damages for unregistered works, and did not do so 

implicitly by a technical amendment to a different section of 

the statute. 

* * * 

 Thus, Section 412 must be construed according to its terms: 

subject to specified exceptions, it bars statutory damages for 

all foreign and domestic works not timely registered. 

 Plaintiffs’ Copyright Act claims for statutory damages are 

dismissed with respect to all unregistered foreign works that do 

not fall within any such exception. 
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C. Section 411(c) of the Copyright Act 

 The relevant exception is the “live broadcast exemption” in 

Section 411(c) of the Act, which states in pertinent part: 

(c) In the case of a work consisting of sounds, 

images, or both, the first fixation of which is made 

simultaneously with its transmission, the copyright 

owner may, either before or after such fixation takes 

place, institute an action for infringement under 

section 501, fully subject to the remedies [of, among 

other things, statutory damages], if, in accordance 

with requirements that the Register of Copyrights 

shall prescribe by regulation, the copyright owner—— 

(1) serves notice upon the infringer, not less 

than 48 hours before such fixation, identifying the 

work and the specific time and source of its first 

transmission, and declaring an intention to secure 

copyright in the work . . . . 

17 U.S.C. § 411(c)(1).3

 

 All foreign works which meet the requirements of Section 

411(c) are exempted from the general rule of Section 412, which 

bars statutory damages for works not timely registered. See 17 

U.S.C. §§ 411(a) & (c), 412, 504; accord 2 NIMMER ON COPYRIGHT § 

7.16[B][3], at 7-176. Section 411(c) “is intended to deal with 

the special situation presented by works that are being 

transmitted ‘live’ at the same time they are being fixed in 

tangible form for the first time”, H.R. Rep. No. 94-1476, at 

157, such as live broadcasts of “sporting events, concerts, 

theatrical presentations and news and public affairs programs”, 

 

3

 Pursuant to Section 411(c)(2), the copyright owner of such a work may 

(among other things) seek statutory damages only if the copyright owner 

“makes registration for the work, if required by subsection (a), within three 

months after its first transmission.” 17 U.S.C. § 411(c)(2). Since Section 

411(a) does not require registration of foreign works, Section 411(c)(2) does 

not apply to foreign works consisting of sounds, images, or both, the first 

fixation of which are made simultaneously with their transmission. 
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Works Consisting of Sounds, Images, or Both, 46 Fed. Reg. 

28,846, at 28,849 (May 29, 1981). 

 In a suit under Section 411(c), the copyright owner of a 

foreign work consisting of sounds, images, or both, the first 

fixation of which is made simultaneously with its transmission 

may obtain statutory damages (see 17 U.S.C. §§ 411(c), 504) 

without registering the work (see id. §§ 411(a) & (c)(2), 412) 

if the copyright owner serves an “Advance Notice of Potential 

Infringement” on the prospective infringer at least 48 hours 

before the work is transmitted (see id. § 411(c)(1); 37 C.F.R. 

§ 201.22). Among other things, the Advance Notice must clearly 

identify each work at issue by title, as well as the date, 

specific time, and expected duration of the intended first 

transmission of each work, the source of the intended first 

transmission, and the copyright owner of each work; and include 

a description of the relevant activities of the potential 

infringer which would, if carried out, result in an infringement 

of the copyright. See 17 U.S.C. § 411(c)(1); 37 C.F.R. § 

201.22(c). 

 Defendants argue that plaintiffs cannot rely on Section 

411(c), stating (Defs.’ Reply at 14): 

Not only have they failed to point to a single work 

for which they claim to qualify for the exception, 

they have not even attempted to allege the facts 

necessary to satisfy the provision’s detailed notice 

requirements. Plaintiffs’ reference to section 411(c) 

in their complaint is entirely formulaic; it consists 

of a naked assertion devoid of any further factual 

enhancements. As the Supreme Court has recently made 

clear, that is not enough. Instead, “a complaint must 

contain sufficient factual matter, accepted as true, 

to ‘state a claim to relief that is plausible on its 

face.’” Ashcroft v. Iqbal, 129 S. Ct. 1937, 2009 WL 

1361536, at *12 (May 18, 2009)(quoting Bell Atlantic 

Corp. v. Twombly, 550 U.S. 544, 557 (2007)). 
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Plaintiffs’ complaint4

 alleges (at ¶¶ 1-2, 10, 15, 31-32, 

69) that their copyrighted works have been infringed on 

defendants’ YouTube website; that “For each of the Protected 

Works at issue, all statutory and other applicable formalities 

have been complied with”; and that the works of lead-plaintiffs 

The Football Association Premier League Limited and Fédération 

Française de Tennis, each of which owns the copyright in 

audiovisual footage of certain foreign sports matches, “are not 

‘United States works’ within the meaning of the U.S. Copyright 

Act” and are “pursuant to section 411(b) [recently redesignated 

as section 411(c)] of the U.S. Copyright Act, entitled to all 

remedies under U.S. copyright law, including statutory damages.” 

 Whether or not those allegations suffice, it is apparent 

from plaintiffs’ submissions that they could adequately amend 

their complaint to assert facts showing that there are 

unregistered foreign works in suit which meet Section 411(c)’s 

requirements. 

 First, plaintiffs submit the June 4, 2009 Declaration of 

Oliver Weingarten, the Commercial and Intellectual Property 

Solicitor for lead-plaintiff The Football Association Premier 

League Limited, in which he states under penalty of perjury that 

(his Decl. ¶¶ 2-5): 

2. In the period since 10 September 2008, the 

Premier League has caused to be served on [the] 

YouTube [website] more than three hundred and forty 

four “Advance Notices of Potential Infringement” (an 

“Advance Notice”). . . . 

3. Each of these has been served on YouTube by email 

no less than 48 hours in advance of the first fixation 

and simultaneous transmission of a particular Premier 

League soccer match, identifies the particular match 

by title (the names of the teams), the date, specific 

time and expected duration of the intended first 

transmission and other information concerning that 

 

4

 Plaintiffs’ second amended class action complaint is referred to as 

“complaint.” 
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work, including the source of its intended first 

transmission, the parties responsible for recording 

the live event and the identity of the copyright 

owner, as well as a description of the activities 

which would, if carried out, constitute 

infringement . . . . 

4. In addition, the original copy of the Advance 

Notice bearing the actual handwritten signature on 

behalf of the Premier League has been served on 

YouTube by courier . . . so that they receive it 

before the first fixation and simultaneous 

transmission take place. . . . 

5. This practice has been followed for each of the 

hundreds of Advance Notices sent so far to YouTube on 

behalf of the Premier League. 

 

 Second, in his June 9, 2009 Letter to the Court, 

plaintiffs’ counsel represents “that the hundreds of 411(c) 

notices described in Mr. Weingarten’s Declaration specifically 

relate to works in suit” (Solomon Esq.’s June 9, 2009 Ltr. to 

the Ct. at 1). 

 Under the circumstances, plaintiffs’ complaint is deemed 

amended to include the material set forth in Mr. Weingarten’s 

Declaration and the above quoted representation of plaintiffs’ 

counsel,5

 and defendants’ motion is denied insofar as it seeks 

dismissal of plaintiffs’ claims for statutory damages arising 

from infringements of unregistered foreign works which qualify 

under the “live broadcast exemption” in Section 411(c). 

 

5

 Cf. Brickman v. Tyco Toys, Inc., 722 F. Supp. 1054, 1061 (S.D.N.Y. 

1989)(“Plaintiff's amended complaint shall be deemed further amended to 

include the stock purchase information contained in this affidavit, thereby 

curing this particular defect.”). 
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II. Punitive Damages

 

 Defendants argue that plaintiffs’ Copyright Act claims for 

punitive damages must be dismissed because such damages are, as 

a matter of law, not obtainable under the Act. 

 Plaintiffs maintain that they should be allowed to seek 

punitive damages under the Act for willful infringements of the 

unregistered foreign works that are barred from recovering 

statutory damages “in these limited circumstances” (Class Pls.’ 

Opp. at 32), where they would otherwise “have a difficult——if 

not impossible——time obtaining any effective monetary relief” 

for such works (id. at 31).6

 There is no circumstance in which punitive damages are 

available under the Copyright Act of 1976. “Common-law punitive 

damages cannot be recovered under the Copyright Act.” Viacom 

Int’l Inc. v. Youtube, Inc., 540 F. Supp. 2d 461, 464 (S.D.N.Y. 

2008), relying primarily on Oboler v. Goldin, 714 F.2d 211, 

213 (2d Cir. 1983)(“If the action proceeds to a new trial, we 

note that punitive damages are not available under the Copyright 

Act of 1976.”); accord Faulkner v. Nat’l Geographic Soc., 576 

F. Supp. 2d 609, 612-13, 613 n.7, 617 (S.D.N.Y. 2008)(“the 

Copyright Act limits recovery in this case to ‘actual damages’ 

and does not permit recovery of punitive damages”); Granger v. 

Gill Abstract Corp., 566 F. Supp. 2d 323, 330 (S.D.N.Y. 

2008)(“Finally, irrespective of whether a plaintiff is seeking 

actual or statutory damages, “‘punitive damages are not 

 

6

 Plaintiffs also argue that punitive damages must be available for 

foreign works under the Copyright Act because the U.S. has an international 

obligation “to provide ‘foreign’ rights holders with remedies to deter 

infringement.” Class Pls.’ Opp. at 32. However, plaintiffs cite no binding 

authority requiring the U.S. to furnish the remedy of punitive damages in 

suits under the Copyright Act, nor one holding that the remedies ordinarily 

available in infringement cases of an injunction and actual damages plus any 

applicable profits (see H.R. Rep. No. 94-1476, at 158) do not suffice to 

deter infringement.