Estate of Elkan v. Hasbro, Inc., USCA Ninth Circuit

The plaintiff created the board game Strategy and received U.S. and Canadian copyright registrations for the work in 1948. The plaintiff’s U.S. copyright expired in 1976 and the work passed into the public domain. The plaintiff filed a copyright infringement suit against Hasbro and its wholly owned subsidiary Milton Bradley Company, distributors of a board game called Stratego. The plaintiff argued that its Canadian copyright provides independent protection under the Copyright Act and restores the U.S. copyright under 17 U.S.C. § 104A.

The Ninth Circuit disagreed. The court explained that although the Universal Copyright Convention and the Berne Convention for the Protection of Literary and Artistic Works mandate a policy of national treatment in which copyright holders are afforded the same protection in foreign nations that those nations provide their own authors, any rights in a work eligible for protection under the Copyright Act cannot be expanded or reduced by virtue of, or in reliance upon, the provisions of the Berne Convention. The court noted that the rights to the plaintiff’s board game not only were eligible for protection under the Copyright Act, they were protected when the plaintiff obtained a U.S. copyright, and, consequently, the Canadian copyright cannot expand the rights to the board game here in the U.S. beyond those provided by the U.S. copyright, which the plaintiff admits expired in 1976.

The court also rejected the plaintiff’s argument that the Canadian copyright restored the U.S. copyright. In order for a foreign copyright to restore an expired U.S. copyright, a published work must have been published first in the foreign country and “not published in the United States during the 30-day period following publication in such eligible country.” 17 U.S.C. § 104A(h)(6)(D). In this case, the Canadian copyright and U.S. copyright each listed the initial publication date for the board game in its respective country as May 25, 1948. The court concluded that because the work was published on the same date in both countries, the Canadian copyright cannot restore the U.S. copyright. The Ninth Circuit also affirmed the district court’s award of attorney’s fees under the Copyright Act, stating that the district court had faithfully followed Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), and similarly affirmed an award of sanctions under 28 U.S.C. §1927.