Elsevier v. UnitedHealth Group

Citation
Elsevier B.V. v. UnitedHealth Group, Inc., 2010 WL 150167, 93 U.S.P.Q.2d (BNA) 1408 (S.D.N.Y. Jan. 10, 2010).

Factual Background
The plaintiff, Elsevier, alleged that a UnitedHealth subsidiary, Ingenix, Inc. violated Elsevier’s copyrights -- 9,093 to be precise -- by allowing unauthorized access to its online database ScienceDirect. Of the 9,093 works allegedly infringed, 7,786 were unregistered foreign works. Elsevier sought statutory damages and attorneys’ fees for all of the works allegedly infringed, including the unregistered foreign works. Elsevier pointed to the language of the Berne Convention, which states that “the enjoyment and exercise of [copyright] shall not be subject to any formality.” Elsevier argued that “statutory damages and attorney’s fees are integral to the enjoyment and exercise of foreign copyrights” and that, therefore, Section 412 of the Act is preempted by the Berne Convention under the Supremacy Clause of Article VI of the U.S. Constitution.

Trial Court Proceedings
The court first examined the authority of the Berne Convention itself, noting an important distinction between self-executing and non self-executing treaties. U.S. courts have traditionally recognized a distinction between (a) those treaties that take effect into law upon their signing and, therefore, establish enforceable rights immediately (“self-executing” treaties) and (b) those that still require some action “pursuant to the laws of the United States” before they become effective (“non self-executing” treaties). See Medellin v. Texas, 128 S. Ct 1346, 1356 (2008).

The Court emphasized that Congress itself deemed the Berne Convention not to be self-executing and that the U.S. could meet its obligations “only pursuant to appropriate law” (citing the Senate Report to the Berne Convention Implementation Act).

The Senate Report states further, “[t]he statutory incentives for registration contained in the provisions of. . . [Section] 412. . . are not preconditions for the ‘enjoyment and exercise’ of copyright. While those provisions substantially enhance the relief available. . . they do not condition the availability of all meaningful relief.” (In contrast to its treatment of Section 412, the Senate Report concluded that Section 411(a) of the Copyright Act, which required registration as a precondition to filing suit, should not apply to foreign works, as this requirement would diminish their enjoyment and exercise of rights under U.S. law.)

The Court also pointed to the language of the Berne Convention itself; Article 36 expressly requires member nations to adopt measures necessary to ensure the application of the Convention.

For these reasons, the court concluded that the Berne Convention is not a self-executing treaty and that it therefore could not serve as a basis for Elsevier’s claim for preemption of Section 412 under Article VI of the U.S. Constitution. As a result, Elsevier’s recovery was limited to actual damages and/or defendants’ profits caused by the infringement of its unregistered foreign copyrights, and not statutory damages and attorneys’ fees.