Case: Itar-Tass Russian News Agency v Russian Kurier Inc, [1998] USCA2 315 ; 153 F3d 82 (1998) 
Outcome: considered
Mr Geller examined the decision of the Court of Appeals for the Second Circuit in Itar-Tass Russian News Agency v Russian Kurier Inc , [1998] USCA2 315 ; 153 F3d 82 (1998). He treated it as authority for the proposition that copyright ownership issues are governed by the law of the state with the most significant relationship to the property at issue and the parties claiming ownership. 45 Mr Geller noted that Itar-Tass has been applied by the District Court for the Central District of California, Western Division: Lahiri v Universal Music &amp; Video Distribution Inc 513 Supp 2d 1172 (2007). 47 Mr Geller has appended to his report copies of Title 17, the cases referred to above, and others. I have read the cases. I need refer only to Itar-Tass itself. The case concerned a copyright newspaper article, and had nothing to do with films. The Court first noted that Title 17 contains no provision concerning conflicts issues. It was necessary therefore to fill the interstices of the Act by developing federal common law on the conflicts issue. The Court said: Conflicts rule for issues of ownership. Copyright is a form of property, and the usual rule is that the interests of the parties in property are determined by the law of the state with "the most significant relationship" to the property and the parties. ... The Restatement recognises the applicability of this principle to intangibles such as "a literary idea". The Court then applied that rule to the facts of the case, which as the respondents pointed out, were much more related to Russia than are the facts of the present case related to Australia. But that is neither here nor there. It is the choice of law rule that matters, not the outcome of its application in Itar-Tass . 48 The respondents relied on the evidence of Mr Reichman who has undoubted expertise in copyright law. He disagrees with Mr Geller's opinion and believes "there is a strong possibility that the US Court will apply US Copyright law to determine copyright ownership of The Secret". He gives his reasons. 53 The second related deficiency in Mr Geller's report concerns Itar-Tass . He records the essential reasoning of the Court in that case, but does not advert to the note appended to the following statement: To whatever extent we look to the Berne Convention itself as guidance in the development of federal common law on the conflicts issue, we find nothing to alter our conclusion. The Convention does not purport to settle issues of ownership, with one exception not relevant to this case. The note (n 12) reads in part: The Berne Convention expressly provides that "ownership of copyright in a cinematographic work shall be a matter for legislation in the country where protection is claimed" ... Art 14bis(2)(a). The note goes on to explore whether the Article contains any implication as to the choice of law for copyright issues other than ownership. As indicated at [46], Itar-Tass did not concern a cinematographic work. 54 One of the attachments to Mr Geller's report is his article in Journal, Copyright Society of the United States of America (2004): Conflict of Laws in Copyright Cases: Infringement and Ownership Issues . At 326 Mr Geller says: To repeat our basic point: if a field, such as copyright, has a treaty-governed "international system", an ordre public international, such as the Berne/TRIPs regime, then the principles of that system, to the extent relevant to choice of law, must serve as binding constraints on conflicts analysis in the field. In terms of the Second Restatement of Conflict of Laws, reading treaty commitments into the first criterion of section 6(2)(a), "the needs of the ... international system", help to meet other criteria of section 6. Because it is anchored in treaty principles, this approach enhances the "certainty, predictability and uniformity of results": The Restatement framework sets up two levels of conflicts analysis. We have already indicated that, at a first level, section 6(2)(a) of the Restatement sets out a number of criteria for generally resolving conflicts of law, the first being "the needs of the ... international system". The second level of analysis of the Restatement is found in provisions regarding special areas of law, for example, ... in section 222, regarding the choice of laws to govern [copyright] ownership issues. In such instances, the Restatement proposes to choose the "local law" of the jurisdiction which, with respect to the issue in question, has the "most significant relationship" to the ultimate facts of the case, but this relationship is to be determined "under the principles stated in" (italics added) section 6. Thus, in resolving conflicts of laws in cross-border cases under the Restatement, US courts are directed to attend to any relevant "international system" at the first level of analysis, in order to guide focusing on any arguable "significant relationship" adumbrated at the second level of analysis. Following the Restatement analysis in cross-border copyright cases, the courts should then take account of the relevant system, that is, the Berne/TRIPs regime, which the United States has implemented in the Copyright Act . Although Mr Geller does not refer to Art 14bis(2)(a), that passage provides additional support for attending to the provisions of the Berne Convention in any search by a United States court for the appropriate choice of law in a copyright ownership case. 55 Art 14bis(2)(a) directs one to the law of the country where protection is claimed. That is the law of the United States. Title 17 provides in s 104(b) that the works specified in s 102 , which include motion pictures, are "subject to protection under this title" if the work is first published in the United States, as the works in question here were. 68 (c) TS Production's registration under Title 17 is a clear invocation of the protection of the US copyright regime. The effect of that invocation is that under Art 5(2) of the Berne Convention, claims in the United States are governed by US law. (d) Drew Pictures has also sought to avail itself of the protection of US Copyright law. (e) The Film and the screenplay were first published in the United States. Accordingly that country is their "country of origin" under Art 5(4) of the Convention. (f) Title 17 grants copyright protection to joint authors of cinematograph films. If Mr Heriot makes out his case as a co-author of the screenplay and a director of the Film, he is entitled to copyright protection in the US, and it is irrelevant whether the works were conceived in Australia or partly made here. (g) Article 14bis(2)(a) of the Convention allows the US to legislate for ownership of copyright in a cinematograph film, and US law makes provision for joint ownership in films, which counsel submitted the Act does not appear to do. (h) Mr Reichman's expert evidence should be preferred to that of Mr Geller. Mr Geller's reliance on Itar-Tass is misplaced. Here the works were first published in the United States. That is their country of origin. Further, Itar-Tass observed that although the Berne Convention does not purport to settle all questions of copyright ownership, Art 14bis(2)(a) does deal with ownership of copyright in cinematic films this very case. (i) Australian law will apply in the proceeding in this Court. Title 17 will apply to the Illinois proceeding. There is no identity of issues because the two statutory regimes are different. On that basis there can be no anti-suit injunction to stop the respondents prosecuting their claim in the Illinois proceeding. (j) US domestic law will apply to infringement in the Illinois proceeding: Itar-Tass . (k) Where initial infringement occurs in the United States and subsequent infringement occurs elsewhere, United States law allows the recovery of damages for external infringement, at least if there is a causal link between the infringements: Sheldon v Metro-Goldwyn Pictures Corporation 106 F2d 45 (1939). That is not the position in Australia: s 101(1) of the Act. Thus a cross claim for infringement in this proceeding would only cover damages for infringement in Australia. (l) Joint authors of films are not known to Australian law, and that is the central claim in the Complaint. The declarations sought in the Illinois proceeding that the works are joint works, that the respondents can exploit the works independently of TS Production, and that Mr Heriot is a co-author of the works, are not available under Australian law. It is common ground that amendment of the United States copyright register can only be ordered by a United States court. (m) The provisions of the Act relied on, namely ss 22(4) and 98, are quite different from the co-ownership provisions in Title 17 on which the respondents rely in the Illinois proceeding. 74 For the reasons I have given at [49] to [55], the US court will apply United States law to the ownership dispute. If the plaintiffs establish ownership in Drew Pictures, infringement and damages or lost profits will also be governed by United States law: Itar-Tass .