- 34 and would have no effect without implementing legislation. The answer to such a question is finally determined as a matter of interpretation by courts in the United States if the issue arises in litigation."39/ The Ad Hoc Working Group determined that Berne is a nonselfexecuting treaty. The Working Group noted that the Third Circuit in Mannington Mills, Inc. v. Congoleum Corp.40/ held that the 1883 Paris Convention for the Protection of Industrial Property, as amended, was not a self-executing treaty because the language of the Convention does not provide a private right of action. The Working Group found the relevant language of the Paris Convention and the Berne Convention to be almost identical, and concluded that Berne, too, is nonself-executing. The Working Group finally observed that even if there were doubt about Berne's self-executing status in the United States, it could be resolved by a Senate statement of intent that Berne is not to be construed as self-executing in the United States.41/ 2. Retroactive Application of Berne. The questions loosely referred to as "retroactivity" are a set of related issues concerning the eligibility for protection of preexisting works under the Berne Convention, once the Convention enters into force for a new adherent. The existence of formalities under United States law poses unique retroactivity problems, basically because the Berne Convention tends strongly to define "the public domain" with sole reference to the expiration of statutory terms of protection, whereas works have long entered the United States public domain also for failure to satisfy formalities. 35 The application of the Berne Convention to pre-existing works is directed to works in their "countries of origin" [generally, the place of first publication; Article 5(4)] and "countries where protection is claimed" for such works. It is necessary to consider therefore: 1) retroactive protection of United States works in other Berne states, where they may be in their public domain; 2) retroactive protection of foreign works in the United States, where they may now be in our or their public domain; and, 3) retroactive protection of United States works now in the United States public domain. Article 18(1) of Berne provides: This Convention shall apply to works which, at the moment of its coming into force, have not yet fallen into the public domain in their country of origin through the expiry of the term of protection. [Emphasis added]. As Professor Ladas notes: Thus, the Convention was not applicable to works which, at its coming into effect, had fallen into the public domain in the country of origin by the lapse of the term of copyright, but it was applicable to works the copyright in which had been lost in the country of origin by reason of non-compliance with the prescribed formalities (deposit, registration, or notice of reservation of rights).42/ The United States would not be obligated to protect a work originating in a Berne Convention country whose term of copyright under the national law of the country of origin has expired. Conversely the United States could not expect protection in other Berne countries for United States' origin works, whose term of protection under the 1909 or 1976 Copyright Act has expired. 36 Article 18(2) of Berne sets out a "further condition" to the rule of retroactivity: If, however, through the expiry of a term of protection which was previously granted, a work has fallen into the public domain of the country where protection is claimed, that work shall not be protected anew. The reference to "term of protection" in Article 18(1) and (2) does not, by itself, impose any minimum term, i.e., life plus 50 or any period of years. This means the expiration of a term of protection much shorter than that provided for by the Convention has as much effect under Article 18(1) and (2), as does the expiration of the Convention's minimum terms. Finally, Article 18(3) of Berne provides, with respect to the principles established by 18(1) and (2): The application of this principle shall be subject to any provisions contained in special conventions to that effect existing or to be concluded between countries of the Union. In the absence of such provisions, the respective countries shall determine, each insofar as it is concerned, the conditions of application of this principle. Copyright policy in the United States has generally tried to avoid retrieval of works from the public domain. United States adherence to Berne requires us to confront difficult issues regarding retroactive application. The Copyright Office believes the Congress must address the retroactivity issue, since in the absence of legislation, the Conventional rule of Article 18(1) would seem applicable and might be given effect by our courts. The Ad Hoc Working Group stressed that in view of current initiatives to improve protection of United States intellectual property abroad, and perhaps obtain retroactive protection for United States works in certain countries, the retroactivity question must be handled with care. The Working Group set out in some detail five classes of works which must be recaptured from the United - 37 States public domain for the United States to be in strict compliance with the retroactivity provisions of Berne, and raised numerous ancillary questions that would arise if Congress were to legislate for recapture of those classes of works.43/ 3. Jukebox Compulsory License. From 1909 until 1978 the performance of music on "coin-operated machines" was not an infringement of the United States copyright in the music unless a fee was charged for admission to the place where the performance occurred. As part of the 1976 general revision of the copyright law, Congress established a new compulsory license for the performance of nondramatic music on "coin-operated phonorecord players" (generally known as "jukeboxes"). 17 U.S.C. $116. The copyright owner cannot refuse to license the performance of nondramatic music on a jukebox, if the compulsory license requirements are satisfied. Article 11(1) of the Berne Convention provides that: (1) Authors of dramatic, dramatico-musical and musical (i) the public performance of their works, (ii) any communication to the public of the In contrast to Article 13 44/ and Article 1lbis 45/ for example, this text does not seem to permit any compulsory license for non-broadcast 43. Ad Hoc Working Group Report at 508-595. 44. Article 13 allows each country to impose "reservations and conditions" on the exclusive right to record music after the first authorization to record is granted, subject to a right of equitable remuneration. 45. Article 1lbis (2) says: "[i]t shall be a matter for legislation in the countries of the Union to determine the conditions under which the rights mentioned ... may be exercised ...," subject to a right of equitable remuneration and the moral rights of the author. 38 public performances of music. Before 1967 a different text of Article 13 would have sanctioned our jukebox compulsory license. At the Stockholm revision of Berne, Article 13 was modified to eliminate the possibility of a compulsory license for non-broadcast performances of recorded music; the scope of the compulsory license was confined to the act of recording. This modification was retained in the 1971 Paris version.46/ The jukebox compulsory license 17 U.S.C. $116 appears to be inconsistent with the minimum obligations of Article 11(1) of the Berne Convention. The Ad Hoc Working Group agreed that this is the case insofar as works of foreign origin are concerned.47/ 4. Moral Rights. Another provision in the Berne Convention which has often been identified as a major barrier to United States adherence is Article 6bis which governs "moral rights." These are legal rights which are widely known in European states' copyright laws, but are not provided for in uniform federal laws in the United States. a. Moral Rights Required in Berne. - Moral rights are legal rights copyright rights and should not be confused with notions of public or private morality. The term "moral rights" is used to distinguish them from the "economic rights" which have classically comprised United States and world copyright, such as rights to copy, translate, and publicly perform works of authorship. Article 6bis (1) provides: Independently of the author's economic rights, and |