Case: Sheldon v Metro-Goldwyn Pictures Corporation 106 F2d 45 (1939)
Outcome: considered
(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. 73 The respondents contend that the Illinois court is able to make an award of damages or loss of profits by reference to infringements occurring outside the United States. Reliance is placed on the decision of the Court of Appeals for the Second Circuit in Sheldon v Metro-Goldwyn Pictures Corporation 106F 2d 45 (1939). The respondents rely, by analogy, on CSR Ltd v Cigna Insurance Australia Ltd [1997] HCA 33 ; (1997) 189 CLR 345 , where an influential factor in holding that the New South Wales proceeding was oppressive was that CSR could not there pursue its claim for statutory damages under the Sherman Act . However no expert gave evidence here that the Illinois court could make an award of damages or loss of profits by reference to infringements occurring outside the United States. Accordingly I am not at liberty to act in reliance on Sheldon . This is the more so because one of the commentaries to which I was referred spoke only of "sporadic cases" adopting the Sheldon approach, which the authors say is a doctrine invoked "relatively infrequently", and which "many cases ignore": Nimmer on Copyright (2007) SS14-05. Accordingly I have not taken into account this possible advantage to the respondents.