# Petition for Writ of Certiorari — U. E. Enterprises, Inc. v. New York Chinese TV Programs, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386011_0815%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1992 - **Citation:** 506 U.S. 827 ## Text FILED JUN 12 1992 OFFICE CF THE CLERK No. 91- IN THE Supreme Court of the Gnited States October Term, 1992 U.E. ENTERPRISES, INC.; FLUSHING STAR, INC.; CHAN’S VIDEO & TRADING, INC.; GONG PICTURES, INC.; DANG’S VIDEO, INC.; PO YUEN, . Petitioners, NEW YORK CHINESE TV PROGRAMS, INC., Respondent. PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT PETITION FOR WRIT OF CERTIORARI KENNETH J. CHESEBRO Counsel of Record 1600 Massachusetts Avenue Cambridge, Massachusetts 02138 (617) 661-4423 Po W. YUEN STEVEN GLEIT 41 Mott Street New York, New York 10013 (212) 966-6704 Counsel for Petitioners June 11, 1992 BATEMAN & SLADE. INC BOSTON, MASSACHUSETTS |OO QUESTION PRESENTED Whether the Court of Appeals for the Second Circuit exceeded the Judicial power, and invaded the prerogative of the Executive, in ruling that Taiwan is a "nation" -- contrary to the President’s declaration in the Joint Communique of December 15, 1978 (reaffirmed repeatedly, and most recently on December 19, 1991), announcing official United States foreign policy that "all Chinese on either side of the Taiwan Strait maintain there is but one China and that Taiwan is part of China." TABLE OF CONTENTS oy eB yy) i po ise) : iv ee ee ee | I Se ee ee ee ee ee ee ee oe l CONSTITUTIONAL AND STATUTORY PROVISIONS ... 1 ROME UEPEUE GOP SOU CA 6 tt ce cee 2 REASONS FOR GRANTING THE WRIT ............ 5 1. This Court Should Grant Review to Reverse the Second Circuit’s Finding that Taiwan is a “Nation” -- a Finding that Overrides the Consistent Executive Determination for the Past Two Decades to the Contrary ... 5 2. This Court Should Grant Review to Protect the President's Powers Over the Foreign Affairs ee a ee ee ee 10 ke re 12 iV TABLE OF AUTHORITIES Cases Department of the Navy v. Egan, OA re eee 11 Jones v. United States, 137 U.S. 202 (1890) ........ 11 Morrison v. Olson, 487 U.S. 654 (1988) ........... 11 United States v. Belmont, 301 U.S. 324 (1937) ....... 11 United States v. Munoz-Flores, 110 S. Ct. 1964 (1990) .. 11 United States v. Nixon, 418 U.S. 683 (1974) ........ 10 United States v. Verdugo-Urquidez, ke ES a re ee 11 W.S. Kirkpatrick & Co., Inc. v. Environmental Tectonics Corp., 493 U.S. 400 (1990) ........... 11 Webster v. Doe, 486 U.S. 592 (1988) ............. 11 Zschernig v. Miller, 389 U.S. 429 (1968) .......... 11 Constitutions, Statutes and Regulations U.S. Constitution, Article II, §§ 2,3 ............. l De SA EE oo ee ae Ce eee ee l Copyright Act of 1978, 17 U.S.C. § 104(b)(1) .... passim President Carter’s Joint Communique with China, 14 Weekly Comp. of Pres. Doc. 2264, gg Pe era oe eee eee ee 6 Taiwan Relations Act, 22 U.S.C. §§ 3301, et seg. .... 3, 10 wremes GA POPON Ce) cc vc Kc he we eww eens 10 Treaty of Friendship, Commerce and Navigation, Nov. 4, 1946, 63 Stat. 1299 (1946) ............ 3 Vv TABLE OF AUTHORITIES (cont.) Miscellaneous Hungdah Ghiu, Certain Legal Aspects of Recognizing the People’s Republic of China, 11 CASE W.RES. hoe ee i, re eee ae ee eee 4 11 New Encyclopedia Britannica 511 (15th ed. 1988) (Micropedia: Taiwan) ......-----++++erree: 6 Restatement (Third) of the Foreign Relations Law of the United States (1987) .... 5, 8,9, 10, 11, 12 White House Briefing, Federal News Service, Shee. OR. TO nin ot ee en ee eee 9, 10 The Economist, March 7, 1992, at35 .......----- 8 N.Y. Times., Aug. 18, 1982, at Al2, col. 1 ........- 9 A Strong Vote for One China, N.Y. Times, Dec. 24, 1991, at Al8, col. 1 ......---------- 7 Morton I. Abramowitz, One China, and the Moment of Truth, N.Y. Times, Jan. 18, 1992, at oe ia Editorial, N.Y. Times, Feb. 22, 1992, at ee ae Nicholas D. Kristof, As China Looks at World Order, It Detects New Struggles Emerging, N.Y. Times, Apr. 21, 1992, at Al, ot % aa wee eee eee 8 Nicholas D. Kristof, Taiwan Becomes a Tiger With an Identity Crisis, N.Y. Times, Jan. 12, 1992, § 4, & 4, col. 1 .......+5+----: 7 Drew Torchia, Voters Say Taiwan is Part of China, The Independent, Dec. 23, 1991 ......-------: 7 James L. Tyson, Taiwan Voters Opt for Stability, Christian Science Monitor, Dec. 24, 1991, at4 ..... 7 OPINIONS BELOW The decision of the United States Court of Appeals for the Second Circuit, affirming the district court’s finding that petitioners are liable for copyright infringement, is reported at 954 F.d 847, and is reprinted as Appendix A, at page Al. (References to the appendices bound with this Petition are styled "A___"). The opinion and order of the United States District Court for the Southern District of New York finding liability, from which appeal was taken, is reported at Copy. L. Rep. (CCH) 426,398, and is reprinted as Appendix B, at page Al4. The opinion and order of the District Court setting damages is reported at Copy. L. Rep. (CCH) 426,778, and is reprinted as Appendix C, at page A47. JURISDICTION The decision of the Court of Appeals was entered on January 24, 1992. A timely petition for rehearing and suggestion for rehearing en banc was denied on March 23, 1992. See Appendix D, at page A79. The jurisdiction of this Court is invoked under 28 U.S.C. § 1254(1). STATUTORY AND CONSTITUTIONAL |. PROVISIONS INVOLVED Art. II, § 2, cl. 2 of the U.S. Constitution provides in relevant part that: [The President] shall have Power, by and with the Advice and Consent of the Senate, to make Treaties, provided two thirds of the Senators present concur... . Art. II, § 3 of the U.S. Constitution provides in relevant part that: {The President] shall receive Ambassadors and other public Ministers... . Section 104(b)(1) of the Copyright Act of 1978, 17 U.S.C. § 104(b)(1), states: 2 Section 104. Subject matter of copyright: National origin. (b) Published Works. -- The works specified by sections 102 and 103, when published, are subject to protection under this title if -- (1) on the date of first publication, one or:more of the authors is a national or domiciliary of the United States, or is national, domiciliary, or sovereign authority of a foreign nation that is a party to a copyright treaty to which the United States is also a party, or is:a Stateless person, whenever that person may be domiciled. STATEMENT OF THE CASE The decision of the Court of Appeals below, declaring the island of Taiwan a "nation" despite consistent declarations to the contrary by the President of the United States, is a fundamental violation of the separation of powers because it strikes at the core of the Executive power over foreign affairs. The decision ignores both the Constitution and this Court’s careful guarding of Executive prerogative and cannot be allowed to stand. The relevant facts are uncontested and were stipulated below. (A25). Petitioner U.E. Enterprises, Inc. ("U.E."), a New York corperation, is in the business of distributing, in the Northeast United States, videotapes of television programs aired in Hong Kong. Petitioner Po W. Yuen is the chief executive officer of U.E; the other petitioners are affiliates or customers of U.E. (collectively, "U.E."). From 1986 to 1988, U.E. sold and rented videotapes of various television “soap opera" programs originally aired in Taiwan. (A16, A18). On June 16, 1988, respondent New York Chinese TV Programs, Inc., brought suit against U.E. in the United States District Court for the Southern District of New York, claiming that it held a valid copyright interest in the television programs being distributed by U.E., and seeking injunctive and monetary relief. Respondent alleged, in relevant part, that it was an exclusive sub-licensee of the three Taiwanese television stations that had originally aired the programs in Taiwan, and that copyright protection therefore existed under Section 104(b)(1) of acerca aaeentiaiete arate el 3 the Copyright Act of 1978, which makes an original work eligible for copyright protection if on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a foreign nation that is a party to a copyright treaty to which the United States is also a party. U.E. conceded that the “authors” of the programs -- the Taiwanese television stations that produced them -- are "domiciliaries" of Taiwan. U.E. based its defense, and its claim that all its activities were entirely legal and indeed protected by the First Amendment, on the ground that the island of Taiwan is not a "foreign nation that is a party to a copyright treaty to which the United States is also a party." As the decision of the Second Circuit below recognized in confronting U.E.’s claim (A9-A11), the plain language of Section 104(b)(1) specifies that copyright protection cannot be found by a court without a threshhold finding by the court that Taiwan is a “nation.” Without such a finding, the inquiry ends; it becomes clear that U.E.’s activities were constitutionally protected; and the judgment below becomes unsustainable. Yet the district court never took on this central task. Its opinion did analyze various constitutional issues raised by petitioners bearing on the status of the 1946 Treaty of Friendship, Commerce, and Navigation ("FCN Treaty"), 63 Stat. 1299 (1946), negotiated between the United States and the government of the Republic of China before its leaders fled to Taiwan upon losing the Chinese civil war (A5-AS). Specifically, the district court considered whether the FCN Treaty is today in force as a “treaty” within the meaning of Section 104(b)(1) of the Copyright Act. (A30-A36). But ultimately the district court did not even definitively resolve these issues. Instead, it held that “the constitutional issues defendants seek to raise may be properly avoided" by regarding the Taiwan Relations Act ("TRA"), 22 U.S.C. §§ 3301, ef seq., as having impliedly accomplished a de facto amendment of the Copyright Act so as to read out of the Act, for purposes of Taiwan, the necessity to eae 4 find either "nationhood" or a “treaty” -- thus viewing the TRA "as a domestic law extending to Taiwan the provisions of the FCN Treaty pertaining to copyright protection despite derecognition and the cessation of formal diplomatic relations." (A37). On appeal in the Second Circuit, the United States as amicus urged the court of appeals to adopt the “de facto Copyright Act amendment" theory and avoid the various constitutional issues raised by petitioners. See Brief for the United States as Amicus Curiae, filed October 18, 1991, at 8-16. The Second Circuit ignored this suggestion, perhaps because the suggestion presents its Own constitutional concerns about how far Congress can go in announcing a general intent to amend statutes toward a given ends, but then essentially delegating to the Judiciary the responsibility of working out the details and language. Regardless of why, in the core of its opinion the Second Circuit usurped a fundamental Executive prerogative by declaring that Taiwan is a “nation.” (Al1-A12). Rather than inquiring whether the President had addressed the question of Taiwan’s status as a “nation” in the exercise of his powers over foreign affairs, the Second Circuit troated the point as an objective issue of fact and performed its own independent analysis. The Second Circuit applied a summary of “four essential elements of statehood under international law,"' which it found were met: "“(1) a defined territory; (2) a permanent population; (3) a government; (4) the ability to engage in relations with other nations." (A11). In conducting its factual analysis, the Second Circuit assumed (incorrectly) that prior to the United States’ derecognition of the Republic of China in 1979 (A6-A7), the island of Taiwan was clearly a "nation" -- a "nation" controlled by members of the Nationalist government that had ruled on mainland China prior to losing to the Communists in the Chinese civil war. The " Hungdah Chiu, Certain Legal Aspects of Recognizing the People's Republic of China, 11 CASE W.REsS.J.INT’L L. 389, 395-96 (1979). a a ae 5 Second Circuit decided that the “nation” requirement of the Copyright Act turns on whether "the United States’ derecognition of Taiwan implies that Taiwan is no longer a ‘nation.’" (A10) (emphasis added). Citing Restatement (Third) of the Foreign Relations Law of the United States § 202, cmts. a, b (1987), the court stated that "[a]n entity’s status as a nation, however, does not depend on whether it receives diplomatic recognition from other nations," and the court quickly concluded: “We hold, therefore, that the United States’ derecognition of Taiwan did not change Taiwan’s status as a nation. Because Taiwan is still a nation, the United States may continue to honor its treaties with Taiwan." (A11.) The case for certiorari hinges on whether this determination usurps the President’s foreign policy powers under the Constitution. REASONS FOR GRANTING THE WRIT Perhaps intending to promote “the wishes of the elected branches of government," (A10), the Second Circuit in fact took the extraordinary step of re-making U.S. foreign policy with respect to Taiwan. By doing so it entangled itself in an emotionally charged and politically sensitive international issue: the national status of Taiwan. In addition to being plainly wrong, the decision below presents an ideal opportunity for this Court to recanvass principles of judicial restraint, and Executive primacy, in the foreign policy realm. 1. This Court Should Grant Review to Reverse the Second Circuit’s Finding that Taiwan is a "Nation" -- a Finding that Overrides the Consistent Executive Determination for the Past Two Decades to the Contrary The Second Circuit’s approach to the matter of Taiwan’s national status was fundamentally misdirected. The question is not whether an entity can be a "nation" without being recognized by other nations; petitioners acknowledge such a possibility. This inquiry is irrelevant, for it does not show that Taiwan is a "nation" to begin with. At least since 1661, Taiwan has never 6 been a "nation." (A4-A5). One need go no further than 11 New Encyclopedia Britannica 511 {15th ed. 1988) (Micropedia: Taiwan), which observes that Taiwan is an island situated 100 mi (160 km) off the southeast coast of the China mainland . . . governed by the Republic of China, or National Chinese, who aiso claim jurisdiction over the whole of the mainland China; the island, in their view, is Taiwan Area, or Taiwan District. The People’s Republic of China, in turn, claims jurisdiction over Taiwan. Both governments agree that Taiwan is a province of China. The Court of Appeals failed to honor decades of Chinese history and the consistent policy of the Executive Branch concerning the status of Taiwan. What the United States derecognized in 1979 was not "Taiwan," but rather "the Republic of China" -- a government, not a land mass -- which for several decades was recognized as the sole legitimate government of all of China, including the province of Taiwan. The United States had never before then recognized "Taiwan" as any sort o. independent entity, much less a “nation.” Upon derecognition of the Republic of China, the United States recognized “the People’s Republic of China" ("PRC") -- again, a government, not a land mass -- as the sole legitimate government of all of China, including the province of Taiwan. President Carter expressly reaffirmed the status of Taiwan as part of China, and removed any possibility that it could be considered a “nation” on its own, in the Joint Communique he approved with the PRC on December 15, 1978. In that document, the United States acknowledged that "all Chinese on either side of the Taiwan Strait maintain that there is but one China and that Taiwan is part of China," and recognized that the PRC is "the sole legal Government of China." 14 Weekly Comp. of Pres. Doc. 2264 (Dec. 18, 1978). The Joint Communique, of course, merely reflected reality -- that under standard principles of international law, there was simply no basis for suggesting that Taiwan was a nation. The aati iam iinaiieiiiial 7 key reality under international law is that neither the governing authorities on Taiwan nor those on the mainland claim that Taiwan is a nation. Indeed, politicians on Taiwan favoring independence for Taiwan recently suffered a crushing defeat at the polls. During the campaign debate over independence, authorities on the mainland repeated their long-standing vow to invade Taiwan if its people attempt to secede from China.? > A small sampling of major press articles spanning the past six months shows that no serious claim exists that Taiwan is a "nation": "For the last four decades, the Nationalist government has insisted that the island remains part of China and will one day be politically reunited with the mainland... . In Saturday’s general election, the first . . . in which opposition candidates dared to campaign openly for independence, Taiwanese had a chance to reverse that policy. By handing the Nationalist Party a crushing victory in the polls, voters showed they wanted Taiwan to remain legally part of the ‘Chinese motherland’.". Drew Torchia, Voters Say Taiwan is Part of China, The Independent, Dec. 23, 1991, at 8. ¢ “The [Nationalist Party] won more than 70 percent of the vote. That margin testifies to public support for the [Nationalist Party’s] ‘One China’ doctrine, holding that eventual reunification with the mainland is inevitable and that Taiwan's independence is inconceivable. The main opposition party, the Democratic Progressives, openly backed independence, and lost support." A Strong Vote for One China, N.Y. Times, Dec. 24, 1991, at Al8, col. 1. e “The ruling party considers advocacy of independence a form of sedition and had threatened to dissolve the [opposition party] after the election. Also, China has said it would invade Taiwan if the island formally breaks from the mainland." James L. Tyson, Taiwan Voters Opt for Stability, Christian Science Monitor, Dec. 24, 1991, at 4. ¢ "[B]ecause of the fear of inviting military attack from Beijing, a Nationa! Assembly election last month -- the first full election on Taiwan in four decades -- led to a crushing defeat for the opposition party after it proposed a declaration of independence from China." Nicholas D. Kristof, Taiwan Becomes a Tiger With an Identity Crisis, N.Y. Times, Jan. 12, 1992, § 4, at 4, col. 1. ¢ Currently, “Beijing, Taipei and Washington agree on the unity of China. In the National Assembly election last month, the people of Taiwan voted for the status quo, for prudence and prosperity." Morton I. Abramowitz, One China, and the Moment of Truth, N.Y. Times, Jan. 18, 1992, at 23, col. 2. a 8 The dispositive nature of Chinese politics to the issue of Taiwan’s "nationhood" is clear from the section of the Restatement (Third) of the Foreign Relations Law of the United States (1987) immediately preceding the section cited by the Second Circuit at All. Section 201, cmt. f, adds a caveat after listing the four standard elements relied on by the Second Circuit: While the traditional deiinition does not formally require it, an entity is not a state if it does not claim to be a state. For example, Taiwan might satisfy the elements of the definition in this section, but its authorities have not claimed it to be a state, but rather part of the state of China. See Reporters’ Note 8, and § 203, comment /- (Emphasis added). Reporters’ Note 8 to comment f, cited here, further states: 8. Taiwan. After the Second World War Japan renounced claims to Taiwan (Formosa). Both the regime governing Taiwan and the regime governing the mainland of China have claimed Taiwan as part of China, and other e “Both Taiwan’s ruling Nationalist Party and the Communist Government in Beijing insist that there is but one China, encompassing Taiwan and the mainland. Taiwan’s voters passed their own verdict when the dealt the Democratic Progressives a* stinging electoral defeat." Editorial, N.Y. Times, Feb. 22, 1992, at 22, col. 1. e "No one in China thinks of Taiwan as anything but a renegade province that will eventually be rejoined to China." The Economist, March 7, 1992, at 35. e "China regards Taiwan as a renegade province and reserves the nght to use force to resolve what it considers to be its own ‘internal affair.’ A confrontation in the Taiwan Strait could well happen if Taiwan’s opposition movement gets its way and declares independence from China. ‘If Taiwan declares independence, we'll have to attack them’ said a Chinese official with ties to senior generals." Nicholas D. Kristof, As China Looks at World Order, It Detects New Struggles Emerging, N.Y. Times, Apr. 21, 1992, at Al, col. 3. aaah aia aia 9 states have either confirmed or acquiesced in that claim. [S]ince the authorities on Taiwan do not claim that Taiwan is a state of which they are the government, the issue of its statehood has not arisen. See Comment f._ If Taiwan should claim statehood, it would in effect be purporting to secede from China. (Emphasis added). In sum, the governing authorities situated on Taiwan do not claim that Taiwan is a "state," "nation," or other independent entity of any kind; they insist that it is a province of China. The PRC, which rules from mainland China, insists likewise. President Carter, out of an acknowledged desire to maintain smooth relations with all Chinese people, adamantly agreed -- as have all subsequent presidents.* The only dissenting voice in * In a Joint Communique issued by the United States and China on August 17, 1982, President Reagan promised to cut back United States arms assistance to Taiwan, and reaffirmed: “Respect for each other’s sovereignty and territorial integrity. and noninterference in each other’s internal affairs constitute the fundamental principles governing United States-China relations. These principles were confirmed in the Shanghai Communique of Feb. 28, 1972, and reaffirmed in the Joint Communique on the Establishment of Diplomatic Relations which came into effect on Jan. 1, 1979. Both sides emphatically state that these principles continue to govern all aspects of their relations." ¢ 3. President Reagan also promised: "The United States Government attaches great importance to its relations with China, and reiterates that it has no intention of infringing on Chinese sovereignty and territorial integrity, or interfering in China’s internal affairs, or pursuing a policy of ‘Two Chinas’ or ‘one China, one Taiwan.’" {|S (emphasis added). See N.Y. Times., Aug. 18, 1982, at Al2, col. 1 (text of Joint Communique). President Bush reaffirmed these principles in a press conference held on December 19, 1991, in which he refused to comment on the debate central to elections in Taiwan concerning whether Taiwan should declare its independence. He was asked: "If [independence] became reality, do you think the United States would change its China policy, one-China policy?" President Bush responded: That question is too hypothetical. Everyone here that keeps up with these matters is familiar with our obligations under the Shanghai Communique. ... We don’t need any more tensions in that area. 10 this country is the Second Circuit in its decision below, which has declared that Taiwan is clearly a "nation," and therefore that defendants in 1986-88 were not engaging in protected First Amendment activity, and may be held liable for copyright infringement. Such judicial freelancing is inexcusable, especially in the foreign policy realm, and this Court should take corrective action. 2. This Court Should Grant Review to Protect the President’s Powers Over the Foreign Affairs of the United States Not only did the Second Circuit reach an indefensible result -- that Taiwan is a “nation” -- but, in doing so, the court interfered with the core exercise of the President’s power over foreign affairs. This case affords this Court a unique opportunity to underscore the importance of the separation of powers and the dangers that result when one branch usurps the responsibilities of another. And / know that there’s strong feeling on Taiwan -- continues to be -- that it is, as they have said all along, a part of China. White House Briefing, Federal News Service, Dec. 19, 1991 (available on NEXIS) (emphasis added). Both President Reagan and President Bush, of course, made these policy announcements well after passage of both the Copyright Act (1978) and the Taiwan Relations Act (1979), so that anything in those Acts inconsistent with these announcements must be disregarded. See Restatement (Third), supra, § 115, cmt. c, and Reporters’ Notes | & 5. The Second Circuit found "significant[]” that each edition since 1979 of Treaties in Force, published each year by the State Department, "includes the FCN Treaty as a valid and enforceable treaty." (A7). But the preamble to the same eniry cited by the Second Circuit, “China (Taiwan), " also reaffirms consistent Executive policy and destroys the Second Circuit's holding: "The United States acknowledges the Chinese position that there is but one China and Taiwan is part of China. The United States does not recognize the ‘Republic of China’ as a state or government." 11 This Court has long recognized "‘the very delicate, plenary and exclusive power of the President as the sole organ of the federal government in the field of international relations.’" Webster v. Doe, 486 U.S. 592, 605-606 (1988) (O’Connor, J., dissenting) (quoting United States v. Curtiss-Wright Export Corp., 299 U.S. 304, 320 (1936)). See also Department of the Navy v. Egan, 484 U.S. 518, 529 (1988) (noting "‘the generally accepted view that foreign policy [is] the province and responsibility of the Executive’") (quoting Haig v. Agee, 453 U.S. 280, 293-294 (1981)).* In the foreign policy context, "‘the courts have traditionally shown the utmost deference to Presidential responsibilities.’" Egan, 484 U.S. at 530 (quoting United States v. Nixon, 418 U.S. 683, 710 (1974)).* See, e.g., United States v. Verdugo- Urquidez, 494 U.S. 259, 274-275 (1990); W.S. Kirkpatrick & Co., Inc. v. Environmental Tectonics Corp. , 493 U.S. 400, 404- 405 (1990); Morrison v. Olson, 487 U.S. 654, 726 (1988) (Scalia, J., dissenting) ("What about a special Assistant Secretary of State, with responsibility for one narrow area of foreign policy, who would not only have to be confirmed by the Senate but could also be removed only pursuant to certain carefully designed restrictions?"). Thus, it is only "{i]n the absence of a * See generally Restatement (Third), supra, § 204, Reporters’ Note 1. See also United States v. Belmont, 301 U.S. 324, 330 (1937) (holding that “the Executive [has] authority to speak as the sole organ of [the national] government” on questions related to recognition); Jones v. United States, 137 U.S. 202, 212 (1890) (holding that "[w]ho is the sovereign, de jure or de facto, of a territory is not a judicial, but a political question, the determination of which by the legislative and executive departments of any government conclusively binds the judges"). * Courts must protect the office of the Executive regardless of whether the temporary holder of that office defends the Executive’s interest in a particular legal proceeding. See Zschernig v. Miller, 389 U.S. 429, 432 (1968) (invalidating Oregon statute that restricted power of probate courts to award property to citizens of Communist countries as “an intrusion by the State into the field of foreign affairs which the Constitution entrusts to the President and the Congress," despite the reluctance of the State Department to oppose the Oregon law); of. United States v. Munoz-Flores, 110 S. Ct. 1964, 1969-1970 (1990). 12 Presidential decision [that] a court will decide whether to treat an entity as a state, or a foreign regime as a government, where such a determination is necessary for the purposes of a case before the court." Restatement (Third), supra, § 204, cmt. a (emphasis added). This case illustrates that these principles are not mere platitudes or abstractions. In recent months, the PRC on the mainland repeatedly threatened to invade Taiwan if its people chose to declare independence, and in a general election the people on Taiwan resoundingly reaffirmed that Taiwan is part of China. See note 2, supra. During this process, President Bush explicitly refused to alter the consistent foreign policy of the United States, and he reaffirmed that the United States officially regards Taiwan as a part of China, not an independent nation. See note 3, supra. The Second Circuit’s finding -- that Taiwan is, after all, a nation -- overrides President Bush’s judgment and directly usurps his constitutional authority to set U.S. foreign policy. In the quest for harmonious relations with the Chinese, particularly the PRC, the past several presidents have all declared that there is only one China, and that Taiwan is a province of China, not a separate nation. These declarations are controlling, and should be vigorously enforced by this Court. CONCLUSION For these reasons, this Court should grant the petition for certiorari. 13 Respectfully submitted, KENNETH J. CHESEBRO Counsel of Record 1600 Massachusetts Avenue Cambridge, Massachusetts 02138 (617) 661-4423 PO W. YUEN STEPHEN GLEIT 41 Mott Street New York, NY 10013 (212) 966-6704 Counsel for Petitioners June 11, 1992 APPENDICES APPENDIX A Decision of the United States Court of Appeals for the Second Circuit, affirming the district court’s finding of copyright infringement, ES eee eee eee eee Al APPENDIX B Opinion and Order of the United States District Court for the Southern District of New York, finding defendants liable for copyright infringement, dated March 8, 1989 ............. Al4 APPENDIX C Opinion and Order of the United States District Court for the Southern District of New York, setting damages, dated June 14, 1991 .... A47 APPENDIX D Denial of petition for rehearing in the United States Court of Appeals for the District of Columbia Circuit, dated March 23, 1992 ........ A79 Al APPENDIX A UNITED STATES COURT OF APPEALS For the Second Circuit No, 91-7694 NEW YORK CHINESE TV PROGRAMS, INC., Plaintiff-Appellee, vs. U.E. ENTERPRISES, INC.; FLUSHING STAR, INC.; CHAN’S VIDEO & TRADING, INC.; GONG PICTURES, INC.; DANG’S VIDEO, INC.; PO YUEN, Defendants-Appellants, QUEENS VIDEO LTD.; JOHN DOES 1-50, Defendants. January 24, 1992 Before: PRATT, MAHONEY, and McLAUGHLIN, Circuit Judges. McLAUGHLIN, Circuit Judge: There are six defendants-appellants: U.E. Enterprises, Inc. ("U.E."); Flushing Star, Inc. ("Flushing Star"); Chan’s Video & Trading, Inc. ("Chan’s"); Gong Pictures, Inc. ("Gong"); Dang’s Video, Inc. ("Dang"); and Po Yuen ("Yuen"). They seek to review a judgment of the United States District Court for the Southern District of New York (Kathleen A. Roberts, U.S. Magistrate Judge), finding the six defendants liable for copyright infringement. For the reasons set forth below, we affirm the order of the district court. BACKGROUND Three television stations in Taiwan (the "Taiwanese Sta- tions") produce Mandarin language’ soap operas (the "Pro- ' Mandarin is the principal dialect of the Chinese language, and is the A2 grams"). These Programs are popular among the twenty million people who live on the island of Taiwan. There are also many Mandarin speaking people in the United States. To tap this American market for Mandarin soap operas, the International Audio Visual Corporation ("IAVC"), a Califor- nia corporation, contracted with the Taiwanese Stations in 1982 for the right to sell video cassette copies of the Programs in the United States. The Taiwanese Stations also assigned to IAVC the right to obtain American copyrights for the Programs. Shortly after signing this agreement, IAVC registered the Programs for copyright protection with the United States Copyright Office. In April, 1988, IAVC signed an agreement with plaintiff New York Chinese TV Programs, Inc. ("New York Chinese"). This agreement granted New York Chinese the exclusive license to distribute video cassette copies of the Programs in New York and New Jersey. The agreement also assigned to New York Chinese the right to sue to protect IAVC’s copyrights in the Programs throughout New York and New Jersey. The present controversy arises out of the defendants’ attempts to sell the same Programs in the New York-New Jersey area. Operatives of defendants Dang and U.E. videotaped the Programs as they were broadcast in Taiwan, and then imported these tapes surreptitiously into the United States in boxes labelled "Gift." Dang and U.E. later made numerous copies of the tapes, and distributed them to store-front video retail stores operated by U.E. in the New York metropolitan area, including defendants Flushing Star, Chan’s, and Gong. New York Chinese eventually discovered that defendants’ stores were renting out illicit videotapes of the Programs. Of course, none of the stores had obtained valid sub-licenses from New York Chinese to do this. New York Chinese filed suit official language of China, Taiwan, and Singapore. See The Universal Almanac 545 (John W. Wright ed., 1989). A3 against U.E., Dang, Flushing Star, Chan’s, Gong, and Mr. Yuen (the president of both U.E. and Dang) alleging copyright infringement, and requesting damages and a permanent injunction to prevent defendants from further copying or marketing the Programs. Then-District Judge Walker issued a temporary restraining order on June 17, 1988, prohibiting defendants from copying, distributing, renting, or selling any copies of the Programs. He then assigned the case to Magistrate Judge Kathleen A. Roberts for all purposes, pursuant to 28 U.S.C. § 636(c),? and she subsequently bifurcated the liability and damage issues for trial. On the liability issue, the parties submitted a stipulation of facts for determination. The district court concluded that defendants had infringed the copyrights on the Programs, and permanently enjoined defendants from copying, distributing, selling, renting or otherwise marketing any copies of the Programs. The district court then held a trial to determine damages, and awarded New York Chinese actual damages of $718,707.85, or, alternatively, statutory damages of $762,500.° New York 2 28 U.S.C. § 636(c)(1) provides, in pertinent part, "Upon the consent of the parties, a full-time United States [MJagistrate [Judge] . . . may conduct any or all proceedings in a jury or nonjury civil matter. . . .” In such situations, a non-prevailing party “may appeal directly to the appropriate United States court of appeals from the judgment of the [Magistrate [Judge] in the same manner as an appeal from any other judgment of a district court." Id. § 636(c)(3). Thus, we have jurisdiction to review the judgment of Magistrate Judge Roberts. > "Actual" damages include “damages suffered by [the copyright owner] as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages." 17 U.S.C. § 504(b). "Statutory" damages are awarded by the trial court for each work that has been infringed “in a sum of not less than $ 500 or more than $ 20,000 as the court considers just." Id. § 504(c)(1). A copyright owner who prevails in a copyright infringement action may elect to recover either actual "damages or statutory damages. /d. A4 Chinese opted to receive statutory damages, and a final judgment awarding such damages, plus attorney’s fees, was entered on July 5, 1991. The parties later stipulated to reduce the damages, but defendants have appealed the district court’s determination that they are liable for copyright infringement. Accordingly, the sole issue we must address is whether there has been a copyright infringement. DISCUSSION To establish a claim for copyright infringement, the plaintiff must (1) possess a valid copyright in a given work, and (2) show that the defendant has copied the work. Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir. 1984). Defendants concede that New York Chinese has satisfied the second prong of the Eckes test, but focus their attack on the first prong. Specifically, they challenge the district court’s ruling that the Programs are eligible for copyright protection under Section 104(b)(1) of the Copyright Act of 1978, codified at 17 U.S.C. § 104(b)(1). We disagree, and affirm the conclusion of the district court. Section 104(b)(1) makes an original work eligible for copyright protection if on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a foreign nation that is a party to a copyright treaty to which the United States is also a party. Defendants do not question that the "authors" of the Programs are the Taiwanese Stations, which are Taiwanese nationals. The sole question, then, is whether Taiwan has a copyright treaty with the United States. The answer to this question requires some understanding of the evolution of Taiwan’s place in the world community. From 1661 through 1895, the imperial dynasty that ruled mainland China also controlled the island of Taiwan. In 1895, AS following its defeat in the first Sino-Japanese War, the Chinese monarchy ceded control of Taiwan to Japan in the Treaty of Shimomoseki. After the collapse of the Chinese monarchy in 1912, a new government -- the Republic of China ("ROC") -- was established to rule over China. Shortly after the bombing of Pearl Harbor in December 1941, the ROC declared war on Japan. At that time, the ROC renounced the Treaty of Shimomoseki, and reasserted its claim to sovereignty over Taiwan. However, Taiwan remained under Japanese control until Japan surrendered to the Allied powers, and accepted the Potsdam Declaration on September 2, 1945. The Potsdam Declaration explicitly stated that Taiwan would return to Chinese rule. Thus, the post-World War II ROC included both mainland China and the island of Taiwan. As the post-war Republic of China sought to enhance its stature in the world, it set out to forge an especially strong economic relationship with the United States. To do this, the ROC signed the Treaty of Friendship, Commerce and Navigation ("FCN Treaty") with the United States in 1946. The FCN Treaty was then ratified by the United States Senate in June, 1948, and took effect on November 30, 1948. See Treaty of Friendship, Commerce and Navigation, Nov. 4, 1946, U.S.-Taiwan, 63 Stat. 1299 (1946). The FCN Treaty lies at the core of the present controversy. Of paramount importance is Article IX, which requires both the ROC and the United States to guarantee the privileges of their own laws to citizens of the other nation in regard to copyrights, patents, trademarks, trade names, and other literary, artistic and industrial property, upon compliance with the applicable laws and regulations, if any, respecting registration and other formalities which are or may hereafter be enforced by the duly constituted authorities 63 Stat. at 1309. Thus, the FCN Treaty empowers the United States to grant copyright protection to works authored by Taiwanese citizens. A6 Before the ROC could enjoy the fruits of the FCN Treaty, however, civil war broke out in China between Chiang Kai-Shek’s ROC army, and communist revolutionaries led by Mao Zedong. The communists ultimately defeated the ROC army in 1949, and established a government called the People’s Republic of China ("PRC"). Approximately two million ROC loyalists fled to Taiwan, and have retained control of that island to this day. The United States declined to establish diplomatic relations with the communist PRC, and continued instead to recognize the ROC as the sole government of China and Taiwan. The United States continued to honor all its agreements with the ROC, which, in effect, meant with Taiwan because, in reality, the ROC controlled only that area. Thus, because the United States had honored the FCN treaty prior to the Chinese revolution, it continued to abide by that treaty’s terms in its dealings with Taiwan. By the 1970’s, it had become impossible for the international community to ignore the reality of the PRC, a nation of nearly one billion people. In 1971, the United Nations ordered that China’s U.N. seat be taken from the ROC, and given to the PRC. This fueled efforts within the United States to give diplomatic recognition to the PRC, culminating with the United States establishing full diplomatic relations with the PRC on January 1, 1979. Recognition of the PRC, of course, enveloped the ROC in a diplomatic fog. Neither the PRC nor the ROC asserted that they were two separate countries. Because both the PRC and the ROC professed to be the one true "China," the United States could not pretend that both governments had sovereignty over all of China. Recognition of the PRC, therefore, necessitated derecognition of the ROC. Accordingly, on December 30, 1978, then-President Jimmy Carter signed a memorandum "recognizing the government of the People’s Republic of China as the sole legal government of China and . . . terminating diplomatic relations with the Republic of China." President’s Memorandum A7 for All Departments and Agencies: Relations With the People on Taiwan, reprinted in 1979 U.S. Code Cong. & Admin. News 75 (hereinafter President’s Memorandum). The President’s Memorandum acknowledged that, despite its termination of diplomatic relations with Taiwan, the United States still wished to maintain "commercial cultural, and other relations with the people of Taiwan without official government representation and without diplomatic relations." Jd. As part of this policy, the President’s Memorandum directed that Existing international agreements and arrangements in force between the United States and Taiwan shall continue in force and shall be performed and enforced by departments and agencies beginning January 1, 1979, in accordance with their terms and, as appropriate, through that instrumentality. Id. Since 1979, the Executive Branch has consistently used the President’s Memorandum’s mandate as a basis for continuing to honor the FCN Treaty. The State Department annually publishes Treaties in Force, listing all treaties that are honored by the United States. Significantly, each edition of Treaties in Force published since the United States derecognized Taiwan in 1979 includes the FCN Treaty as a valid and enforceable treaty. Derecognition of Taiwan prodded Congress to ensure that Taiwan’s status as a major United States trading partner remained unscathed.* Accordingly, Congress passed the Taiwan Relations Act ("TRA") codified at 22 U.S.C. § 3301, et seg., “to preserve and promote extensive, close, and friendly commercial, culturai, and other relations between the people of the United States and the people on Taiwan" and to "declare that peace and stability in * In 1979, Taiwan imported $3 billion of American-made products, making Taiwan the seventeenth largest importer of American goods. In the same period, Taiwan exported $5.6 billion of goods to the United States, ranking it the eighth largest exporter of goods to the United States. See Official Statistics of the United States Dep’t of Commerce (1979). A8 the area are in the political, security, and economic interests of the United States." 22 U.S.C. § 3301(b)(1), (2). The substantive provisions of the TRA are analogous to the President’s Memorandum. Like the President's Memorandum, the TRA states that the absence of diplomatic relations or recognition shall not affect the application of the laws of the United States with respect to Taiwan . . . in the [same] manner that the laws of the United States applied with respect to Taiwan prior to January 1, 1979. 22 U.S.C. § 3303(a). More specifically, the TRA mandates the continuation in force of all treaties and other internation- al agreements . . . entered into by the United States and the governing authorities on Taiwan recognized by the United States as the Republic of China prior to January 1, 1979, and in force between them on December 31, 1978, unless and until terminated in accordance with law. Id. § 3303(c). That Congress intended to include the FCN Treaty within the “treaties in force" between the United States and Taiwan is beyond question. Indeed, the House of Representatives Report on the TRA explicitly stated Congress’ intent to honor the FCN Treaty: "[T]he U.S.-ROC Treaty of Friendship, Commerce and Navigation, which provides a legal foundation for commercial relations between the United States and Taiwan, will continue without interruption.” H.R. Rep. No. 26, 96th Cong., Ist Sess. 10-11 (1979). Despite the overwhelming evidence of both the Executive and Legislative Branches’ intent to give full effect to the FCN Treaty, defendants make two arguments that the United States no longer has a copyright treaty with Taiwan. First, defendants contend that because the TRA purported to require the United States to honor the obligations of the FCN Treaty, the TRA itself had to be a new "treaty" between the United States and Taiwan. But, the argument runs, the TRA was not made in accordance A9 with Article II of the United States Constitution and, therefore, is not a valid "treaty." Defendants conclude that because the TRA is not a "treaty," the requirement of Section 104(b)(1) that there be a treaty has not been met. Second, defendants argue that even if the TRA does not have to meet the "treaty" require- ment of Section 104(b)(1), the United States cannot constitution- ally continue to honor the FCN Treaty. We reject both argu- ments. 1. The "Treaty" Requirement of Section 104(b)(1) As noted previously, Section 104(b)(1) permits the granting of copyright protection to works authored by citizens of a foreign nation if that nation is a party to a copyright treaty with the United States. Defendants argue that the United States and Taiwan no longer have such a treaty. This conclusion rests on two premises. First, defendants contend that the FCN Treaty lapsed in 1979 when the United States derecognized Taiwan. Second, defendants assert that the TRA cannot resurrect the obligations imposed by the FCN Treaty because that would require a new treaty, and the TRA is not a treaty. To be sure, the TRA is not a "treaty." A “treaty” is a contract between nations. 7rans World Airlines v. Franklin Mint Corp. , 466 U.S. 243, 253 (1984). The TRA is solely a domestic statute. It was passed by both the House of Representatives and the Senate, and became law upon the signature of President Carter. The TRA did not require Taiwanese ratification. The TRA did not impose any obligations on Taiwan. Therefore, the TRA is not a contract between the United States and Taiwan, but rather is a statute that binds just the United States. The difficulty with the defendants’ argument lies in their root premise that the FCN Treaty lapsed upon derecognition of Taiwan. It is well settled that "on the question whether a treaty has ever been terminated, governmental action in respect to it must be regarded as of controlling importance." Terlinden v. Ames, 184 U.S. 270, 285 (1902). Moreover, the judiciary should refrain from determining whether a treaty has lapsed, and Al0 instead should defer to the wishes of the elected branches of government. See Whitney v. Robertson, 124 U.S. 190, 194 (1888). In this case, both Congress and the Executive Branch have, with rare clarity, determined that the United States must continue to honor the FCN Treaty, despite official diplomatic derecognition of Taiwan. The TRA requires the United States to honor all previous treaties and international agreements with Taiwan. Among these obligations is the FCN Treaty, which was explicitly noted by the House of Representatives in its report on the TRA. H.R. Rep. No. 26, 96th Cong., Ist Sess. 10-11 (1979). Thus, we find that Congress indisputably intended that the FCN ae remain a valid and enforceable treaty. Similarly, the Executive Branch has not wavered from honoring the FCN Treaty. Each edition of the State Department pamphlet Treaties in Force published between 1979 and the present date lists the FCN Treaty as a valid treaty. Moreover, we have not located any proclamation from either the President or any Executive Agency renouncing the United States’ obliga- tions under the FCN Treaty. Because both Congress and the Executive Branch agree that the FCN treaty is to continue in effect, and because of the deference we owe to the political branches of the government in treaty matters, we hold that the FCN treaty remains a valid and enforceable treaty. 2. The Constitutionality of Honoring the FCN Treaty Defendants contend that if the United States must continue to honor the FCN Treaty, such a course of action violates the constitutional mandate that the President "shall have Power, by and with the Advice and Consent of the Senate, to make Trea- ties, provided two thirds of the Senators present concur." U.S. Const. art. II, § 2, cl. 2. Because a treaty is a contract between nations, see Trans World Airlines, 466 U.S. at 253, defendants argue that the United States’ derecognition of Taiwan implies that Taiwan is no longer a “nation,” and, thus, the United States . All - cannot remain bound by any treaties with Taiwan. This argu- ment is fatally flawed because it confuses two distinct concepts: nationhood and diplomatic recognition. A "nation" is an entity with (1) a defined territory; (2) a permanent population; (3) a government; and (4) the ability to engage in relations with other nations. See, e.g., Hungdah Chiu, Certain Legal Aspects of Recognizing the People’s Republic of China, 11 CASE W. REs. J. INT’L L. 389, 395-96 (1979). "Diplomatic recognition,” marked by an exchange of diplomats, is a formal acknowledgement by a nation that another entity possesses the qualifications for nationhood. An entity’s status as a nation, however, does not depend on whether it receives diplomatic recognition from other nations. See Restatement (Third) of the Foreign Relations Law of the United States § 202 cmts. a, b (1987). Defendants have cited no authority, and we have found none, that bars treaties between sovereign nations that do not otherwise maintain diplomatic relations. There is no reason in logic or policy to require diplomatic recognition as a sine qua non to the treaty-making power. We hold, therefore, that the United States’ derecognition of Taiwan did not change Taiwan’s status as a nation. Because Taiwan is still a nation, the United States may ccntinue to honor its treaties with Taiwan. It is significant that Taiwan is not the only nation that has treaties with the United States despite the absence of diplomatic relations. Currently, the United States does not accord diplomat- ic recognition to nine nations:* Albania, Angola, Cambodia, Taiwan, Cuba, Iran, Libya, Vietnam, and North Korea. Howev- er, with the exception of Angola and North Korea, each of these nations has at least one treaty with the United States that is currently honored. See Treaties in Force, passim. Thus, our holding that diplomatic recognition is not a prerequisite for a valid treaty ensures that we do not thwart the ability of the 5 This enumeration does not take into account the recent dissolution of the U.S.S.R. and the emergence of its constituent republics as independent nations. | ———————— Al2 United States to honor treaties with other nations. Having failed to persuade us that the United States may not constitutionally honor treaties with unrecognized nations, defendants make one final argument: that the TRA has unconsti- tutionally amended the FCN Treaty. They fecus their attack on section 3303(c) of the TRA, which states: For all purposes, including actions in any court in the United States, the Congress approves the continuation in force of all treaties and other international agreements. . . entered into by the United States and the governing authori- ties on Taiwan recognized by the United States as the Republic of China prior to January 1, 1979, and in force between them on December 31, 1978, unless and until terminated in accordance with law. 22 U.S.C. § 3303(c) (emphasis added). Defendants claim that because the FCN Treaty was signed by the “Republic of China," the TRA’s approval of all agree- ments with the "governing authorities on Taiwan recognized by the United States as the Republic of China prior to January 1, 1979" changes one of the parties to the FCN Treaty. Because the TRA was not enacted pursuant to the Treaty Clause of the Constitution, defendants argue that the TRA is, therefore, an unconstitutional amendment to the FCN Treaty. We do not quarrel with defendants’ assertion that a signifi- cant amendment to a treaty must follow the mandate of the Treaty Clause, and therefore must be proposed by the President, and be ratified following the advice and consent of the Senate. We find, however, that the TRA has not amended the FCN Treaty in such fashion as to implicate the Treaty Clause. The TRA simply inserted a new name in the FCN Treaty to replace the derecognized "Republic of China," and to recognize the realities of a changed political landscape. A change in the name of a party to a treaty is not an “amendment” to that treaty. Cf. Arnbjornsdottir-Mendler v. United States, 721 F.2d 679 (9th Cir. 1983) (treaty between the United States and Denmark Al3 applied to Iceland after Iceland had declared its independence from Denmark). Rather, a treaty is "amended" only if the obligations imposed by that treaty change. The TRA certainly has not changed any of the substantive requirements of the FCN Treaty. Finally, we are mindful of the strong commercial relation- ship ties between the United States and Taiwan. Indeed, Taiwan’s trade with the United States has increased nearly four-fold since 1979.6 This trade would surely go elsewhere if the FCN, the bedrock of the U.S.-Taiwanese commercial relationship, were to crumble suddenly. Taiwan, moreover, has unfailingly relied upon the FCN Treaty to provide protection of its own copyright laws to works authored by American citizens. Taiwan would have little reason to honor the FCN Treaty if the | United States were to turn its back on the Treaty. Thus, our holding encourages the United States to provide copyright protection to works authored by Taiwanese citizens, and insures that Americans will receive copyright protection of their works in Taiwan. CONCLUSION We hold that the FCN treaty is still in effect by virtue of both Congress’ enactment of the TRA and the Executive Branch’s position that the FCN has remained in effect, and that the actions of both of these branches do not violate the Constitu- tion. The FCN is a valid "treaty" for purposes of Section 104(b)(1) of the Copyright Act. Accordingly, the district court correctly held that the Programs enjoy copyright protection, and defendants are liable for copyright infringement. AFFIRMED. * In 1990, Taiwan imported over $11 billion of American goods, and exported over $22 billion of its own goods to the United States. See Official Statistics of the United States Dep’t of Commerce (1990). Al4 APPENDIX B UNITED STATES DISTRICT COURT For the Southern District of New York No. 88 Civ, 4170 UMW) (KAR) NEW YORK CHINESE TV PROGRAMS, INC., : Plaintiff-Appellee, vs. U.E. ENTERPRISES, INC.; FLUSHING STAR, INC.; CHAN’S VIDEO & TRADING, INC.; GONG PICTURES, INC.; DANG’S VIDEO, INC.; PO YUEN, Defendants-Appellants, QUEENS VIDEO LTD.; JOHN DOES 1-50, Defendants. March 8, 1989 OPINION & ORDER KATHLEEN A. ROBERTS, UNITED STATES MAGISTRATE: This action for copyright infringement, violations of Section 43(a) of the Lanham Act, unfair competition and interference with contractual relations was filed on June 16, 1988.' Plaintiff seeks damages and an order enjoining defendants from infringing plaintiff's copyrights and other proprietary rights in and to certain Chinese language television programs produced by three- Taiwanese television companies. On June 17, 1988, Judge Walker issued an ex parte temporary restraining order, which the parties subsequently agreed would remain in effect pending the court’s decision on plaintiff's request for a preliminary injunc- tion. Judge Walker referred the case to me on August 2, 1988, ' An Amended Complaint, adding defendants Po Yuen and Dang’s Video, Inc., was served on October 31, 1988, and filed on November 10, 1988. Al5 to conduct a hearing on plaintiff's application for a preliminary injunction. The parties thereafter agreed that I would conduct all proceedings in this matter, pursuant to 28 U.S.C. § 636(c) (1968 and Supplement 1988). Defendants opposed plaintiff's motion for a preliminary injunction on many grounds, asserting, inter alia, that the Taiwan Relations Act, 22 U.S.C. § 3301 et seg. (1979) (the "TRA"), is unconstitutional to the extent the TRA seeks to confer copyright protection on Taiwanese nationals pursuant to the Treaty of Friendship, Commerce and Navigation (the "FCN Treaty"). Because defendants raised an issue regarding the constitutionality of a federal statute, I invited a response from the Department of Justice, pursuant to 28 U.S.C. § 517 (1968), which submitted a Statement of Interest of the United States ("Statement of Interest") on September 27, 1988. The Court also received an amicus curiae brief ("Amicus Brief") on September 29, 1988, from Wang & Wang-USA, a California law firm specializing in intellectual property right enforcement between the United States and Taiwan.? On October 11, 1988, I held oral argument on the legal issues pertaining to the application and constitutionality of the TRA. At the same time the parties and I worked to identify and narrow the disputed facts regarding other issues that would require an evidentiary hearing on plaintiff's application for a preliminary injunction. Based upon the success of these efforts and the extensive briefing of all legal issues pertaining to plaintiff's infringement claims, I ordered that the hearing on ? Amicus Wang & Wang contends that defendants’ challenge to the validity of the FCN Treaty “threaten[s] the very comerstone of U. S. policy and trade relations with Taiwan." Mr. Wang points out that the FCN Treaty currently serves as “the legal framework through which a host of essential agreements are negotiated with Taiwan, and brought to fruition includ{ing] trade navigation, and tariff agreements as well as agreements to cooperate in educational and cultural matters.“ Amicus Brief at 1. The reciprocal rights and privileges currently protected by the FCN Treaty are detailed on pages 13-20 of the Amicus Brief. Al6 plaintiffs application for a preliminary injunction be consolidated with the trial of the action on the merits pursuant to Fed. R. Civ. P. 65(a)(2). In addition, as set forth in greater detail below, the parties agreed to submit all issues for decision without an evidentiary hearing, based upon motions for summary judgment dismissing the complaint or trial on stipulated testimony aid exhibits. This Opinion therefore constitutes my decision on the motions and my findings of fact and conclusions of law pursuant to Fed. R. Civ. P. 52(a) with respect to plaintiff's claim of copyright infringement. By agreement, plaintiff's other claims, plaintiff's damages and defendants’ counterclaims will be tried separately .° BACKGROUND Plaintiff New York Chinese TV Programs, Inc. ("New York Chinese") is a New York corporation engaged in the distribution of Mandarin language videotapes to its authorized sub-licensee retail outlets for rental purposes. Defendants U.E. Enterprises, Inc. ("UE"), Flushing Star, Inc. ("Star Video"), Chan’s Video and Trading, Inc. ("Chan’s Video"), Gong Pictures, Inc. ("Gong Pictures"), and Queens Video, Ltd. ("Queens Video"), are New York corporations engaged primarily in selling and renting Chinese language videotapes. Defendant Dang’s Video, Inc. ("Dang’s Video"), is a subsidiary of UE. Defendant Po Yuen is the President and owner of UE and Dang’s Video, and an attorney admitted to practice in New York. New York Chinese is a _ licensee of International Audio-Visual Corporation ("IAVC"), a California corporation * Plaintiff's other. claims involve alleged Lanham Act violations, unfair competition and interference with contractual relations. At the hearing before me on November 9, 1988, defendants reserved a possible antitrust counterclaim, as well as potential cross-claims. In addition, defendant Po Yuen reserved his right to answer and further contest the issue of his personal liability for any infringement this court may find by the corporate defendants. See Transcript of November 9, 1988 conference at 25-27. Al7 that is the exclusive authorized distributor in the United States and Canada of Mandarin language television programs ("the Programs") produced by three Taiwanese television companies.‘ The Programs are delivered to IAVC in Taiwan and sent to IAVC’s California headquarters where they are edited and copied for distribution in North America with IAVC’s copyright notice. Copies of the edited version of each Program have been regis- tered with the United States Copyright Office.‘ On April 20, 1988, IAVC granted plaintiff an exclusive license in New York and New Jersey to distribute and rent videotapes of the Programs to the general public or to selected sub-licensee retail outlets. A copy of the License Agreement is annexed to the Amended Complaint as Exhibit C. By written assignment executed contemporaneously with the License Agreement, and recorded in the United States Copyright Office on or about June 10, 1988, IAVC assigned to New York Chinese: (i) the right, title, and interest in and to the copyrights in New York and New Jersey of programs created on or after March 1, 1988, and the right to commence and maintain actions * Those companies are Taiwan Television Enterprises, Ltd., China Television Company, and Chinese Television System. IAVC and the Taiwan television companies have agreed to be bound by the decision of this court. The Taiwan television companies have assigned the copyrights to the Programs in the United States to IAVC, and IAVC has duly recorded the assignment of copyright from each of the Taiwan television companies in the United States Copyright Office. Copies of IAVC’s agreements with the Taiwan television companies are annexed to the Amended Complaint as Exhibit A. Copies of the assignments of copyright recorded with the Copyright Office are annexed to the Amended Complaint as Exhibit B. * IAVC has previously obtained orders restraining unauthorized distribution of the Programs. Int’! Audio-Visual Communications. Inc. v. Chen, CV. 84-2328-DWW (MCX) (C.D. Cal. 1984) (copy of order granting preliminary injunction annexed to Plaintiff's Reply Memo as Exhibit A); Jnt’l Audio-Visual Communications. Inc. v. Michael Wu, et al., No. 85-521 (C.D. Cal. 1985) (copies of TRO and preliminary injunction annexed to Affidavit of Laurence I. Fox, dated June 15, 1988, as Exhibit A). See also Affidavit of Eva Young, dated July 22, 1988 4] 8-15. ee Al8 for infringement of the copyrights in such programs; (ii) the right to commence and maintain actions for infringement of programs created on or before February 29, 1988; and (iii) all proceeds from judgments obtained with respect to any infringement of the copyrights in New York and New Jersey. A copy of the Assign- ment is annexed to the Amended Complaint as Exhibit B. See also License Agreement { 19. New York Chinese and [AVC subsequently placed numerous advertisements in Chinese language newspapers and on Chinese language radio stations identifying New York Chinese as the only authorized distributor of the Programs in New York and New Jersey.*® On or about May 3, 1988, plaintiff determined that defen- dants UE, Flushing Star, Chan’s Video, Gong Pictures, and Queens Video (none of which is an authorized sub-licensee of New York Chinese) were renting videotapes of the Programs to the public.” Plaintiff filed this action on June 16, 1988, alleging that defendants’ activities violate the United States copyright laws, 17 U.S.C. § 101 et seg. (1979) (the "Copyright Act"), the Lanham Act, 15 U.S.C. § 1125(a) (1982), N.Y. General Business Law § 350 (McKinney 1988), and constitute common law unfair competition and interference with contractual rela- tions. Through the course of expedited discovery, it was revealed that the videotapes of the Programs distributed by defendants had been copied by a “source” in Taiwan directly off the Taiwanese airwaves (deleting commercials), and shipped to the United States in boxes marked "gift," to Dang’s Video, which in turn supplied the tapes to UE for copying and distribution to the other defen- dants and to the public. UE, Dang’s, Yuen and Queens Video admit importing, copying and/or distributing copies of the Programs with knowledge of plaintiff's claim to ownership of the * Copies of the print edvertisements are annexed to the Affidavit of “Dick Ying, dated June i3, 1988, as Exhibits D-G. ” See Affidavit and Supplemental Affidavit of Joy Chen Yu Lewis, dated May 26, 1988 and June 15, 1988, respectively. Al9 copyright.* The other defendants acknowledge distributing the Dang’s/UE tapes. Defendants, however, challenge plaintiff's claim of copyright ~ infringement on several legal grounds.’ First, defendants contend that because certain differences exist between the Programs as aired on Taiwanese television and the videotapes marketed by New York Chinese, plaintiff at best holds a copyright on a “derivative work." See 17 U.S.C. § 103. Defendants argue that because they copied the Programs directly off the Taiwanese airwaves and not from the "edited" version prepared by IAVC in California, they have not infringed plaintiff's copyright on the “derivative” work. Defendants contend that, because IAVC has not registered its copyright on the "underlying work," i.e., the unedited version aired in Taiwan, plaintiff cannot prove that defendants have copied a registered work. Second, defendants contend that even if the videotapes copyrighted by IAVC are not "derivative works," IAVC does not hold valid U. S. copyrights on the Programs. There are two grounds for this contention: 1) the Programs were "first pub- lished" in Taiwan and there is no valid treaty in effect between the United States and Taiwan extending copyright protection to works by Taiwanese nationals that are first published in Taiwan; and 2) even if a valid copyright treaty exists between the United States and Taiwan, IAVC’s copyrights are invalid because [AVC made material misrepresentations to the U. S. Copyright Office. Finally, defendants argue that the “sole purpose" of the * See Affidavit of Laurence I. Fox, dated July 22, 1988, pp. 2-8 (summarizing and annexing deposition testimony of UE owners and officers Manching Ng and Jack Ho); Affidavit of Sui-Ti-Feng (annexed to Queens Video Memo of Law); Affidavit and Supplemental Affidavit of Po Yuen, dated July 12 and July 27, 1988, respectively. ® These defenses have been formally raised and briefed in affidavits and memoranda submitted by defendant UE, which have been joined in by all other defendants. A20 License Agreement between IAVC and plaintiff is the assignment of the right to litigate disputes over copyright infringement, and that the Agreement is therefore "champertous" and should not be enforced by this Court." DEFENDANTS DERIVATIVE WORK DEFENSE In order to establish copyright infringement plaintiff "’must show ownership of a valid copyright and copying by the defen- dant. Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir. 1984) (quoting Novelty Textile Mills. Inc. v. Joan Fabric Corp., 558 F.2d 1090, 1092 (2d Cir. 1977)). A timely obtained certificate of registration "constitute{s] prima facie evidence of the validity of the copyright * * * ," 17 U.S.C. § 401(c), but "a certificate of registration creates no irrebutable presumption of validity." Durham Industries Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980). Plaintiff has offered prima facie evidence of a valid copyright by submitting timely obtained certificates of registration for the Programs, which were issued by the Copyright Office to plaintiffs assignor, IAVC. See Affidavit of Eva Young, dated May 27, 1988, Exhibit H; see also Affidavit of Dick Ying, dated June 13, 1988, Exhibit A. Defendants’ challenges to the validity of plaintiff's copyright are addressed infra, pages 16-44. I turn first to defendants’ assertion that they have not copied the works registered by IAVC. Defendants concede that they have copied and distributed the Programs as they are broadcast by Taiwan TV (except for commercials). They contend, however, that they have not copied the works registered by IAVC, which are “edited” versions of the Programs. Defendants argue that by submitting to the Copyright Office only the edited version of the Programs, IAVC * Defendants’ previously asserted opposition to the application for a preliminary injunction on grounds of delay is moot in light of the consolidation of that application with trial on the merits of the infringement action. A21 (and therefore plaintiff) obtained a copyright on a "derivative work," or "compilation" leaving the unedited version unprotected and subject to legal copying by defendants. Section 103 of the Copyright Act provides that copyright protection may be obtained for "derivative works," or "“compila- tions." 17 U.S.C. § 103(a). The Act defines a derivative work as: a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elabora- tions, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work". 17 U.S.C. § 101. A compilation is defined as a work formed by the collection and assembling of preexist- ing materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term "compi- lation" includes collective works. Id. In the typical derivative work case, the person accused of infringment contends that the alleged infringing work is indepen- dently copyrightable as an original work of authorship. See, e.g., Durham, 630 F.2d at 909-911; L. Batlin & Son. Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en banc), cert. denied, 429 U.S. 857 (1976). Defendants offer an unusual variation on the classic deriva- tive work defense. Defendants contend that if IAVC’s edited version is independently copyrightable as a derivative work, it is by definition a "different work” than the unedited version, and the registration of the edited version does not protect the unedited version. Conversely, if the edited version is not sufficiently "different" to constitute a derivative work, it is the same work as —=— A22 the unedited version and defendants have therefore copied a registered work." Without accepting the validity of this approach to the issue,’? I find that the edited version does not qualify as a derivative work. The “‘one pervading element prerequisite to copyright protection’ * * * is originality," Batlin, 536 F.2d at 489-90 (quoting 1 M. Nimmer, Nimmer on Copyright, § 10 at 32 (1975)). Although the requirement of originality has been described as "modest," "mimimal," and as establishing a "low threshhold," see Durham, 630 F.2d at 910, the original aspects of the work must be “more than trivial." Jd. at 909. As the court noted in Batlin, "[t]o extend copyright-ability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers * * * ." Batlin, 536 F.2d at 492. see also Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) ("slavish copying involving no artistic skill whatsoever does not qualify" for copyright protection). The parties have agreed that I may determine whether the edited versions of the Programs are derivative works by viewing both versions of representative episodes of a Program entitled "' Defendants concede that if IAVC registered its copyright on the Programs as they were broadcast in Taiwan, defendants’ derivative work defense would be of no avail. * Plaintiff argues that even if the “edited” version is a derivative work, the distinction is irrelevant where the same individual owns the copyrights in both a derivative work and the original. See Rexnord. Inc. v. Modern Handling Systems. Inc., 379 F. Supp. 1190, 1198-1199 (D. Del. 1974) (plaintiff acquired a valid copyright in the 1968 version of catalogue when it was published with notice of copyright, and plaintiff's copyright in the 1970 catalogue therefore protected plaintiff from copying of the 1968 material from the 1970 catalogue); see also 2 M. and D. Nimmer, pNimmer on Copyright, § 7.16[B][2] at 7-120.1- 121. Because I find that defendants’ argument is meritless by their own proposed standard, it is not necessary to decide whether a rule more favorable to plaintiff should be applied. A23 "The Kidnapped Pearl." I have reviewed the videotapes in their entirety’? and make the following findings of fact regarding the similarities and dif- ferences between the IAVC version and the Dang’s/UE version: 1. The dramatization of the story "The Kidnapped Pearl," including dialogue, universal Chinese subtitles, characters, action settings, costumes and music, is identical in both versions. 2. Both versions delete commercials. 3. Each tape contains two episodes. 4. The first episode on the IAVC tape is preceded by a thirty-second display of the IAVC logo and a United States copyright warning, a thirty-second preview of a different IAVC title, and 2-1/2 minutes of opening credits for "The Kidnapped Pearl." The first episode on Dang’s/UE tape is preceded only by the opening credits, which are identical to those shown by IAVC. 5. The Taiwan TV logo appears periodically at identical points in the action in both versions in the upper right hand corner of the screen. 6. The end of the first episode on the IAVC tape is followed by a picture of bamboo with the message "please watch the next episode" in Chinese. This does not appear on the Dang’s UE tape. The end of the first episode of the Dang’s/UE version is followed by 2-1/2 minutes of end credits and highlights from prior and future episodes. © The presentation of these tapes to the court was somewhat confused. I received two IAVC tapes containing two episodes each. I received one Dang’s/UE tape, which defense counsel represented contained four episodes. In fact, the Dang’s/UE tape contains only two episodes, which cover the program content of IAVC episodes one and two, and approxi- mately ten minutes of IAVC episode three. Accordingly, my comparison is limited to the first two episodes of each version. I find, however, that this is a sufficient sample for purposes of determining the derivative work issue raised by defendants. A24 7. The second episode in the IAVC version is preceded only by a short title (the name of the program in raised stone letters with falling leaves) and a brief replay of the last scene in the first IAVC episode. The second episode of the Dang’s/UE tape is preceded by 2-1/2 minutes of opening credits (identical to episode one in the IAVC and Dang’s/UE versions). 8. The end of the second IAVC episode is followed by the "please watch the next episode" message; the end of the second episode on the Dang’s/UE tape is followed by 2-1/2 minutes of end credits and highlights from prior and future episodes; a time-of-day display appears periodically during the end credits. 9. With the exception of the begining of episode one, the beginnings and endings of each episode occur at different points in the action in the two versions. Episode one of the Dang’s/UE version ends at a point approximately five minutes further into the story than the IAVC version; epidose two of the Dang’s/UE version ends approximately ten minutes further into the story than the IAVC version.'* Although defendants refer to a number of the differences de- tailed above, the only original or creative effort identified by de- fendants is the "creative selection of dramatic endpoints." De- fendants argue that this creative effort is “beyond the bare mini- mum necessary to constitute a derivative work." UE October 26, 1988 Letter at 2. I find this argument meritless, if not frivolous. I find that the mere relocation of a few minutes of the program from the end of one to the beginning of the next does not constitute the kind of creative effort and originality required to qualify the IAVC version as an independent derivative work. Rather, I find that IAVC’s episode divisions and other additions or deletions of previews and credits are trivial non-programmatic “ Defendants incorrectly assert that the Dang’s/UE tapes contains dialogue not found in the IAVC version and that the Dang’s/UE tapes contain certain parts of scenes that are not present on the [AVC tapes. UE Letter, October 26, 1988, p.2, | 3; Affidavit of Po Yuen dated July 12, 1988 at { 12. The program content is in fact identical. A25 “packaging” changes. See Rohauer v. Killiam Shows Inc., 551 F.2d 484, 494-495 n.12 (videotape of silent film "The Son of the Shiek" starring Rudolph Valentino with addition of a few new subtities and newly incorporated music not sufficient to make it a new work). Under defendants’ theory of the necessary quantum of creative effort, the mere serialization of a motion picture preceded by previews of future motion pictures would be independently copyrightable as a derivative work. Such a result would render the “modest” originality requirement meaningless. Accordingly, I find that the defendants have copied and distribut- ed registered works. COPYRIGHT PROTECTION FOR TAIWANESE WORKS The parties agree that there are no disputed material issues of fact with respect to this issue and that it may be decided as a matter of law. The submissions of the parties on this question, including Local Rule 3(g) statements, have therefore been considered by me as a motion by defendants for summary judgment dismissing the complaint. Section 104(b) of the Copyright Act of 1978 governs whether videotapes of the Taiwanese broadcasts at issue here enjoy copyright protection. Section 104(b)(1) grants copyright protection to works authored by citizens or domiciliaries of a "foreign nation that is a party to a copyright treaty to which the United States is also a party." Section 104(b)(2) grants copyright protection if "the work is first published in the United States or in a foreign nation that, on the date of first publication, is a party to the Universal Copyright Convention." Plaintiff offers two alternative grounds for copyright protec- tion. First, plaintiff argues that its works were "first published" in the United States and are therefore protected under § 104(b)(2).'* See, e.g., Reply Memorandum of Law in Support 'S It is conceded that neither the People’s Republic of China nor the governing authorities on Taiwan has ever been a party to the U.C.C. See treaty/convention table following 17 U.S.C.A. § 104 (Supp. 1988). A26 of Plaintiff's Motion for a Preliminary Injunction ("Plaintiff's Reply Memo"), at 16-18. Second, plaintiff contends that, even assuming arguendo that Taiwan is the place of first publication, the works are protected under § 104(b)(1) because Taiwan is a party to a copyright treaty with the United States, i.e., the FCN Treaty signed by the United States and the Republic of China ("ROC") in 1946 and entered into force on November 30, 1948." Article IX of the FCN Treaty provides that each country shall make copyright privileges available to the nationals of the other country on the same basis as to its own citizens. Following the derecognition of the ROC, the FCN Treaty was extended to Taiwan pursuant to the TRA, which continued in force all treaties “entered into by the United States and the governing authorities on Taiwan recognized by the United States as the Republic of China prior to January 1, 1979 and in force between them on December 31, 1978 * * * ." 22 U.S.C. § 3303(c) (Supplement 1988). Defendants concede that the FCN Treaty is a “copyright treaty" within the meaning of the copyright laws.'’ Defendants contend, however, that plaintiff does not hold valid United States copyrights on the Programs because the works were first published in Taiwan and because the TRA does not and cannot constitutionally be interpreted to extend copyright protection under the FCN Treaty to Taiwanese nationals. For the reasons set forth below, I find that the TRA does and may constitutionally be interpreted to provide copyright protection to Taiwanese nationals. I therefore find that the Programs are protected under 17 U.S.C. § 104(b)(1), and do not reach the issue of whether the works were first published in Taiwan or the United States. ‘* A copy of the FCN Treaty is annexed to Plaintiff's Reply Memo as Exhibit B. '’ The FCN Treaty is listed on the treaty/convention table following 17 U.S.C. § 104 (Supplement 1988). ' | A27 Historical Context In order to understand defendants’ statutory and constitution- al claims, it is necessary to provide a brief historical overview of the United States’ changing relationship with the ROC and the People’s Republic of China ("PRC"), as well as the facts surrounding the FCN Treaty, the derecognition of the ROC, and the enactment of the TRA. Japan assumed control of the island of Taiwan following Japan’s victory over China in 1895 in the first Sino-Japanese war, and pursuant to the Treaty of Shimonoseki. The ROC renounced the Treaty of Shimonoseki on December 9, 1941, when the ROC formally declared war on Japan. Taiwan remained in Japanese control until it was restored to the ROC following Japan’s surrender and acceptance of the Potsdam Deciaration on September 2, 1945. The ROC entered into the FCN Treaty with the United States in 1946, ensuring reciprocal protection for intellectual property, and solidifying important trade relations. Within two years of the signing of the FCN Treaty, however, the leaders of the ROC, including Chiang Kai-Shek, had reiocated on Taiwan, following their overthrow by the Communists and the establish- ment of the PRC. The United States continued to honor all commitments it had made with the ROC before relocation, but simply confined the scope of the agreements to the island of Taiwan. The United States did not have any formal relations with the PRC, and asseited that the ROC, temporarily exiled on Taiwan, was the legitimate ruler of all of China. The passage of several decades eventually led to an opening of relations with the PRC. Visits to the mainiand by Secretary of State Henry Kissinger (the so-called “secret trip to Peking") in 1971, followed by President Nixon’s trip in early 1972, and the pledge in the Shanghai Communique to normalize relations, culminated in President Carter’s Memorandum of December 30, 1978, terminating diplomatic relations with the ROC and A28 recognizing the PRC as "the sole legal government of China." Memorandum of December 30, 1978, ("Memorandum") reprinted in U. S. Code Cong. & Ad. News (96th Cong. Ist session 1979) ae. 72. At the same time, however, President Carter took steps to assure the Taiwanese that they were not being abandoned by the United States. In a communique dated December 15, 1978, President Carter reserved the right to sell "defensive" arms to Taiwan in the event the PRC and Taiwan remained hostile to one another. See Senate Report No. 96-7 at p. 6, reprinted in U. S. Code Cong. & Ad. News (96th Cong. Ist session 1979) at p. 41 (hereinafter “Senate Report"). Congress explicitly adopted this policy inthe TRA. 22 U.S.C. § 3302(a). President Carter also declared in his December 30 Memorandum that "the American people will maintain commercial, cultural and other relations with the people of Taiwan without official government represen- tation and without diplomatic relations." Memorandum (first full paragraph). Specifically, President Carter directed that existing international agreements between the United States and Taiwan continue in force. Jd. { (B). The Senate, and particularly the Senate Committee on Foreign Relations and the Senate Committee on Finance, became integrally involved in determining how to structure and conduct post-derecognition relations with Taiwan. The Senate passed a bill (S.245) establishing a detailed structure for the conduct of post-derecognition relations. The House of Representatives also passed a bill to "promote extensive, close and friendly relations" with the people of Taiwan. See House Conference Report No. 96-71, reprinted in U. S. Code Cong. & Ad. News (96th Congress, Ist Session, 1979). The House bill (H.R. 2479) integrated much of the text of the Senate bill, and the House bill * This Memorandum was issued pursuant to the President’s constitu- tional authority to recognize and derecognize nations. See National Petrochemical Co. of Iran v. The M/T Stolt Sheaf, 860 F.2d 551 (2d Cir. 1988); Chang v. Northwestern Memorial Hospital, 506 F. Supp. 975, 977 (N.D. Ill. 1980). a A29 became the TRA (P.L. 96-8) when it was passed by both houses and approved by President Carter on April 10, 1979. The TRA was retroactively effective as of January 1, 1979, the date President Carter’s Memorandum became effective. The TRA contains several provisions relevant to the disposition of this case. First, the TRA provides that "[t]he absence of diplomatic relations or recognition shall not affect the application of the laws of the United States with respect to Taiwan, and the laws of the United States shall apply with respect to Taiwan in the manner that the laws of the United States applied with respect to Taiwan prior to January 1, 1979." 22 U.S.C. § 3303(a). The TRA reiterates the provision of President Carter’s Memorandum that "[w]herever the laws of the United States refer or relate to foreign countries * * * those laws shall apply with respect to Taiwan," 22 U.S.C. § 3303(b)(1), and provides that "[t]he absence of diplomatic relations and recognition with respect to Taiwan shall not abrogate, infringe, modify, deny, or otherwise affect in any way any rights or obligations * * * heretofore or hereafter acquired by or with respect to Taiwan." 22 U.S.C. § 3303 (b)(3)(A). The TRA further provides that "[n]o requirement, whether expressed or implied, under the laws of the United States with respect to maintenance of diplomatic relations or recognition shall be applicable with respect to Taiwan." 22 U.S.C. § 3303(b)(8). Finally, and most importantly for purposes of this case, the TRA provides that "[flor all purposes, including actions in any court in the United States, the Congress approves the continuation in force of all treaties and other international agreements, including multilateral conventions, entered into by the United States and the governing authorities on Taiwan recognized by the United States as the Republic of China prior to January 1, 1979, and in force between them on December 31, 1978, unless and until terminated in accordance with law." 22 U.S.C. § 3303(c). The TRA defines Taiwan as "the islands of Taiwan and the Pescadores, the people on those islands, corporations and other A30 entities and associations created or organized under the laws applied on those islands, and the governing authorities on Taiwan recognized by the United States as the Republic of China prior to January 1, 1979, and any successor governing authorities * * * "U.S.C. § 3314(2). The FCN Treaty is listed as a treaty in force between the United States and “China (Taiwan)" in the State Department publication, “7Jreaties in Force: A Lisi of Treaties and other International Agreements of the United States in Force on January 1, 1987" (excerpt annexed as Exhibit C to Plaintiff's Memorandum in Response to UE Supplementary Memorandum of Law) ("Pl. Resp. Memo"). Validity of the FCN Treaty Prior to 1979 Defendants initially asserted that at the time the FCN Treaty was negotiated and became effective, Taiwan was still under Japanese control and that the ROC governed only what is known as "mainland" China. Defendants therefore argued that because the FCN Treaty was made in the context of an "expressly territorial relationship between the United States and the main- land," the Nationalist Government did not succeed to the FCN Treaty following its defeat by Communist forces in 1949 and subsequent flight to Taiwan. See UE Supplementary Memoran- dum of Law ("UE Supp. Memo") at 13-16, 18-19. Defendants asserted that "[p]ursuant to the normal principles of international law, and absent special, affirmative action by the United States, the [People’s Republic of China] would have succeeded to the treaties that were in force at the time the Nationalists were routed “eee * wits. Defendants substantially retreated from this position after amicus Wang and Wang demonstrated that Taiwan was in fact under ROC control when the FCN Treaty was signed and that references in that FCN Treaty to the "territories of the ROC" therefore included the territory of Taiwan. See Amicus Brief at 5-10. See also Declaration of Dr. Tao-Tai Hsia, (Amicus Brief, Exhibit A) at 1-3. In addition, the Government’s Statement of — A31 Interest demonstrated that wholly apart from the question of the ROC’s control of Taiwan in 1946, or its lack of control over the mainland after 1949, the determination that a government is a party to a treaty covering a particular territory is exclusively the function of the executive branch, pursuant to its power to recognize and derecognize governments. See Statement of Interest at 8-9. In their reply brief defendants concede that in determining who is a party to a particular treaty covering a certain territory, a court must first look to who the President recognizes as legitimate government of that territory, and it does not matter whether that government actually controls the territory. Thus, the FCN Treaty was perhaps preserved from 1949 to 1979, with the Republic of China as the party to it, even though that government did not control the territory covered by the FCN Treaty -- or at best * * * controlled only a small portion of it. Memorandum of law in Reply to the Three Briefs Opposing its Suppiementary Memorandum of Law ("UE Reply Memo") at 8 n.8. Post-Derecognition Validity of FCN Treaty Defendants now focus their argument on the asserted invalidity of the FCN Treaty following derecognition of the ROC in 1979. Defendants acknowledge that the TRA expressly approves “the continuation in force of all treaties and other international agreements * * * entered into by the United States and the governing authorities on Taiwan recognized by the United States as the Republic of China prior to January 1, 1979, and in force between them on December 31, 1978 * * * ." 22 U.S.C. § 3303(c). They argue, however, that because the TRA refers to treaties entered into by the United States and "the governing authorities on Taiwan," the TRA applies only to treaties entered into with the Taiwan authorities while they were on Taiwan. UE Supp. Memo at 27; UE Reply Memo at 15. Defendants’ theory is essentially that the words “on Taiwan" in A32 § 3303(c) are meant to draw a distinction according to where the governing authorities were when the treaty was entered into--"on Taiwan" or “on the Chinese mainland." Because the FCN Treaty was entered into with the governing authorities while they were on the mainland in 1946, defendants conclude that the FCN Treaty is not covered by the TRA. This interpretation of the TRA is contrary to both its language and legislative history, which demonstrate that Congress intended the TRA to apply to all treaties and international agreements that were in force between the United States and the Republic of China as of December 31, 1978, and not only those concluded after the governing authorities moved to Taiwan. The language of the TRA makes clear that "governing authorities on Taiwan" refers to the government recognized by the United States as the Republic of China until January 1, 1979. Indeed, § 3304(c) makes the term “governing authorities on Taiwan" the functional equivalent of the term “Republic of China." The use of the qualifying phrase "recognized by the United States as the Republic of China prior to January 1, 1979" clearly indicates that the phrase “governing authorities on Taiwan" was meant to refer to the governing authorities formerly recognized as the Republic of China.” The legislative history of § 3303(c) makes this even clearer: This section was added by the Committee to remove any doubt concerning the validity of the international agreements in force between the United States and the entity recognized as the Republic of China prior to the normalization of relations with the People’s Republic of China. Its effect is to make clear that these agreements have not "lapsed" and that they continue in effect between the United States and the people on Taiwan. The reference to all courts "in" the United States expresses the Committee’s intent that this rule '? These governing authorities are consistently referred to throughout the TRA as the “governing authorities on Taiwan." See 22 U.S.C. $§ 3301(a), 3303(b)(3)(B), 3309(b), 3311(6)(1), 3314(2). A33 of substantive Federal law be applied by both Federal and State courts. Senate Report at p. 30. The Senate Report similarly describes the Senate version of this provision as: added by the [Foreign Relations] Committee to remove any doubt concerning the validity of the international agreements in force between the United States and the entity recognized as the Republic of China prior to the normalization of relations with the People’s Republic of China. Senate Report at p. 25. In addition, the legislative history specifically mentions the FCN Treaty as an example of a treaty covered by the TRA. The House Report states that the House version of the legislation is: designed to make clear that all treaties and international agreements between the United States and the Republic of China which were in force before derecognition will continue to be in force. For example, the U.S. ROC Treaty of Friendship, Commerce and Navigation, which provides a legal foundation for commercial relations between the United States and Taiwan, will continue without interrup- tion. No United States-Republic of China treaty or interna- tional agreement would be terminated except that which is terminated under its terms or otherwise, pursuant to U.S. law. House Report, H.R. Rep. No. 26, "House Report together with Additional Views", accompanying H.R. 2479 (printed pamphlet) (96th Cong., Ist Sess. 1979) at pp. 10-11. The final bill, as described in the Conference Report, combines both the general House provisions and the more specific Senate provisions without weakening or narrowing the applicability of any of the provisions adopted. * * * The conference substitute further provides that the Congress A34 approves the continuation in force of all treaties and other international agreements, including multilateral conventions, between the United States and Taiwan which were in force prior to January 1, 1979, * * * with regard to the issue of conditioning the right to sue and be sued on reciprocity, the Committee of Conference noted that the Treaty of Friend- ship, Commerce, and Navigation between the United States and the Republic of China continues in force. Conference Report, H.R. Report 7, reprinted in U. S. Code Cong. & Ad. News (96th Cong. Ist Sess. 1979) at p. 99. Finally, consistent testimony by Executive Branch witnesses - supports this reading of § 3303(c). See e.g., Implementation of Taiwan relations Act: Issues and Concerns, Hearings Before the Subcomm. on Asian and Pacific Affairs of the House Comm. on Foreign Affairs, 96th Cong., Ist Sess. 12 (1979) (statement of Assistant Secretary of State Richard Holbrooke, noting that international agreements with Taiwan remain in force, with specific mention of the FCN Treaty); Taiwan Hearings Before the Senate Comm. on Foreign Relations, 96th Cong., Ist Sess. 74, 77 (1979) (State Department responses to questions by Senator Stone note that all international agreements (except the Mutual Defense Treaty and other related agreements), including the FCN Treaty, remain in force); id. at 106 (response by State Department Legal Adviser Hansell to question by Senator Percy notes that TRA provides for continuation in force of the FCN Treaty). There can therefore be no doubt that Congress intended the TRA to continue the provisions of the FCN Treaty in force between the United States and Taiwan.” Defendants next argue that if the TRA purports to extend the provisions of the FCN Treaty to Taiwan, as I find it does, * At least two other courts have reached this conclusion. See Int’! Audio-Visual Audio-Visual Communications v. Chen, supra, n.5; Chang 506 F. Supp. at 978. a A35 Congress has unlawfully "amended" the FCN Treaty 1) by changing the other "High Contracting Party" from the ROC to "the governing authorities on Taiwan" and 2) by eliminating those provisions of the FCN Treaty that may be read to require the existence of official diplomatic relations between the contract- ing parties. Such "amendments," defendants contend, are unconstitutional because under the Treaty Clause, only the President, with the advice and consent of the Senate, may make or amend a treaty.” See UE Supp. Memo at 25-26; UE Reply Memo at 11. Plaintiff argues that the TRA does not constitute an "amend- ment” of the FCN Treaty because "the governing authorities on Taiwan" are the same "High Contracting Party" that entered into the FCN Treaty in 1948, i.e¢., the nationalist government that previously ruled the ROC. Moreover, as the Government also points out, a change in the name of one of the parties to a treaty, as a result of succession or modification of States, a govern- ment’s renaming of a state, or changes in recognition, is not normally considered an “amendment” requiring further Senate action. Statement of Interest at 11.4. See, e.g., Arnbjorns- dottir-Mendler v. United States, 721 F.2d 679 (9th Cir. 1983) (treaty between United States and Denmark remained in force vis-a-vis Iceland after Iceland declared its independence from Denmark). Rather, such matters fall within the recognition power of the Executive Branch. Accordingly, because the Executive Branch has consistently maintained since the derecog- nition of the ROC that the FCN Treaty remains in force with the governing authorities on Taiwan, and because Congress has concurred in that view, the FCN Treaty may constitutionally continue in force with Taiwan. The Government also persuasively argues that even if the TRA were construed as an “amendment” of the FCN Treaty, or, 4 Article II, § 2 cl. 2 provides: "He [the President] shall have Power, by and with the advice and Consent of the Senate, to make Treaties, provided two thirds of the Senators present concur * * *." A36 for that matter, as an attempt to make an entirely new interna- - tional agreement with Taiwan, there is no constitutional impedi- ment to such action, because Congress and the President may constitutionally enter into "legislative-executive agreements" that are as binding in United States law as treaties. Statement of Interest at 11 n.4. See, e.g., Weinberger v. Rossi, 456 U.S. 25, 32 (1982) (equating Military Base Labor Agreement with the Republic of the Phillipines, authorized by statute, with "treaty" for purposes of United States law); Star-Kist Foods Inc. v. United States, 169 F. Supp. 268 (Cust. Ct. 1958), aff'd, 275 F.2d 472 (C.C.P.A. 1959) (Congress has authority to authorize the President to enter into executive agreements). See also Treaties and Other International Agreements: The Role of the United States Senate. A Study Prepared for the Senate Comm. on Foreign Relations, 98th Cong., 2d Sess. 71-77 (1984); M. McDougal and A. Lans, “Treaties and Congressional-Executive Agreements: Interchangeable Instruments of National Policy”, 54 YALE L.J. 181, 216-218 (1945); Restatement (Third) of the Foreign Relations Law of the United States §§ 302(2) and 303 (1987). - Indeed, the author of defendants’ brief on this issue, Professor Laurence Tribe, acknowledges in his treatise on American Constitutional law that such congressional-executive agreements are "coextensive with the treaty power." L. Tribe, American Constitutional Law (1979) at p. 170 n.18. Accord L. Henkin, Foreign Affairs and the Constitution (1972) at p. 173 n.l. Defendants counter that even if a congressional-executive agreement had been created, it would not satisfy § 104(b)(1) of the copyright Act, which requires a treaty entered into pursuant to Article II. UE Reply Memo at 5 n.4, 17-18. I disagree. Nothing in the Copyright Act suggests such a rigid requirement and defendants cite no authority for this assertion. In any event, the TRA clearly eliminated any such requirement with respect to Taiwan. Finally, as defendants concede, Congress could at any time constitutionally pass a law that would grant Taiwanese nationals copyright protection equivalent to that existing for the ROC prior A37 to January 1, 1979. UE Reply Memo at 14, 19. Thus, the constitutional issues defendants seek to raise may properly be avoided by considering the TRA not as an amendment of a treaty or a "hybrid" international agreement, but as a domestic law extending to Taiwan the provisions of the FCN Treaty pertaining to copyright protection despite derecognition and the cessation of formal diplomatic relations. See Statement of Interest at 3, 10-14 (Congress, in the TRA, could constitutionally consider the FCN Treaty to be in force for purposes of the Copyright Act, irrespec- tive of the TRA’s effect on the international obligations of the United States). See also Chang v. Northwestern Memorial Hospital, 506 F. Supp. 975 (N.D. Ill. 1980); Int’ Audio-Visual Communications, Inc. v. Chen, No. CV 84-23Z28-DWW (MCX) (C.D. Cal. 1984) (opinion annexed as appendix A to Plaintiff’s Reply Memo). For all of the above reasons, I find that the TRA constitu- tionally continues in force those provisions of the FCN Treaty providing reciprocal copyright protection to Taiwanese nationals and deny defendants’ motion to dismiss the complaint on this ground. CHAMPERTY Although defendants acknowledge that the question of whether an agreement is champertous is normally a question of fact, see UE Memo at 12, defendants have restricted their challenge to the IAVC -- New York Chinese License Agreement to the face of the document,” which they argue is champertous as a matter of law, and therefore void.” = Because defendants have chosen to limit their attack to the face of the agreement, I do not address the assertions contained in their submis- sions regarding the subjective motives of plaintiff's President, Dick Ying. * "Champerty is a bargain between a stranger and a party to a lawsuit by which the stranger pursues the party’s claim in consideration of receiving part of any judgment proceeds. It is one type of ‘maintenance,’ the more general term, which refers to maintaining, supporting, or promoting another person’s litigation." Alexander v. Unification Church A38 In support of their argument that the Agreement is champer- tous on its face, defendants point to the following provisions: 1) As part of the “consideration” for the assignment, New York Chinese agrees to commence and maintain "such actions with respect to any infringements or imitations of the licensed tapes as it deems advisable for the protection of its rights * * * ." Agreement 10(a).” 2) Plaintiff is not required to pay IAVC the yearly license fee of $360,000 until 30 days after plaintiff obtains its first preliminary injunction in an infringement action. Agreement 4 3(a). 3) IAVC may terminate the agreement at the end of one year if plaintiff has been unable to obtain a preliminary injunction. Agreement 11(a)(iv). 4) IAVC specifically conveys to New York Chinese the right to sue for infringements which occurred prior to the Agreement and the right to retain "all monetary judgments obtained as a result of such actions." Agreement { 10(b). 5) IAVC agrees to permit plaintiff's $40,000 security deposit to be placed in escrow with plaintiff's attorneys, and to be applied to plaintiff's legal fees in prosecuting infringement actions. Agreement { 10(c). Defendants’ assertion that the assignment of IAVC’s copyright to plaintiff is champertous, and therefore invalid, rests of America, 634 F.2d 673, 677 n.5 (2d Cir. 1980). Champerty is a viable defense to another’s claim to the extent it is outlawed by statute. Sedgwick against Stanton, 14 N.Y. 289, 294-95 (1856); see also Irvin v. Curie, 171 N.Y. 409, 411 (1902). A champertous assignment is null and void. See Koro Co., Inc. v. Bristol-Myers Co., 568 F. Supp. 280, 288 (D.D.C. 1983) (applying New York’s champerty law to invalidate a contract); Lost Lots Associates. Lid. v. Bruyn, 415 N.Y.S.2d 99 (3rd Dep’t 1979); see also Alexander, 634 F.2d at 677 n.6. * The Agreement is annexed to the Amended Complaint as part of Exhibit C. ee A39 upon Section 489 of the New York Judiciary Law (McKinney 1983 and Supplement 1989).?* The landmark case interpreting the New York champerty statute is Moses v. McDivitt, 88 N.Y. 62 (1882). In Moses the court held that the statute "prohibits the purchase by attorneys * * * of choses in action ‘with the intent and for the purpose’ of bringing a suit thereon." Moses, 88 N.Y. at 65 (emphasis original) (quoting predecessor statute). The purpose of the statute is to prevent trafficking and specula- tion in lawsuits. Koro Co. Inc. v. Bristol-Myers Co., 568 F. Supp. 280, 288 (D.D.C. 1983) (applying New York law); see also Fairchild Hiller Corp. v. McDonnell Douglas Corp., 28 N.Y.2d 325, 321 N.Y.S.2d 857, 860 (1971) (section 489 is designed to prevent the "strife, discord, and harassment which could result from permitting attorneys and corporations to purchase claims for the purpose of bringing actions thereon"). -It is well-established that a violation of § 489 is established only when the purchase is made for the purpose of bringing a lawsuit, to the “exclusion of any other purpose," and that an assignment is lawful where the intent to bring a suit is merely "incidental and contingent" to other rights conveyed. Moses, 88 N.Y. at 65; see also Sygma Photo News. Inc. v. Globe Int'l. Inc., 616 F. Supp. 1153, 1157 (S.D.N.Y. 1985); Koro, 568 F. Supp. at 286-287; Welch v. Corp. Inc., 97 F. Supp. 185, 186 (S.D.N.Y. 1951); Fairchild, 28 N.Y.2d at 330, 321 N.Y.S. 860; Sprung v. Jaffe, 3 N.Y.2d 539, 544, 169 N.Y.S.2d 456, 460 (1959); Realty Corp. v. USwiss Realty Holding, Inc., 492 N.Y.S.2d 754, 755-756 (1st Dep’t 1985); 10/5 Gerard Realty % Section 489 of the New York Judiciary Law provides in pertinent part as follows: No * * * corporation or association, directly or indirectly, itself or by or through its officers, agents or employees, shall solicit, buy or take an assignment of a * * * thing in action, or any claim or demand, with the intent and for the purpose of bringing an action or proceeding thereon; * * *. Any corporation or association violating the provisions of this section shall be liable to a fine of not more than five thousand dollars * * *. A40 Corp. v. A & S Improvements Corp., 457 N.Y.S.2d 821 (ist Dep’t 1983); Prudential Oil Corp. v. Phillips Petroleum Co. , 415 N.Y.S.2d 217, 218 (1st Dep’t 1979); American Express Co. v. Control Data Corp., 376 N.Y.S.2d 153, 154 (1st Dep’t 1975) (per curiam). Applying these legal principles to the facts of this case, | find that the License Agreement and Assignment between IAVC and New York Chinese is not champertous. The Assignment conveys actual and valuable rights, namely, the exclusive right to distribute the Mandarin language tapes in New Jersey and New York, as well as the right to enter into sub-license agree- ments with retailers. See License Agreement, § 3(b). The License Agreement spells out the details of the parties’ ongoing business relationship, including, inter alia, the minimum number of program hours annually that plaintiff will receive from IAVC, how delivery of the tapes is to be effected, and the continuing advertising rights and obligations of IAVC. At the same time, IAVC and plaintiff were clearly aware that infringement of the Mandarin language tapes had taken place in the New York area, and that it would undoubtedly continue if not prosecuted. Accordingly, the provisions regarding prosecution of infringe- ment reflect one of the realities of copyright ownership: the continuing battle to stem infringement that threatens to diminish the value of the copyright. Indeed, because of this reality, an assignee generally owes an affirmative duty to its assignor to sue for infringements the assignee learns of, and the failure to do so could potentially lead to an action for rescission, and possibly damages, against the assignee. See 3 M. and D. Nimmer, Nimmer on Copyright ("Nimmer") (1988) § 12.02, at 12-27 - 12-28. I find that the "right to sue" provisions of the Assignment are not champertous, but “incidental and contingent" to the assignment of valuable distribution rights in New York and New Jersey, and that the license agreement and assignment are therefore fully enforceable. Defendants’ motion to dismiss the complaint on this ground is therefore denied. A4l FRAUD ON THE COPYRIGHT OFFICE Defendants contend that IAVC’s copyright is invalid and unenforceable by plaintiff because IAVC knowingly misrepre- sented or failed to present to the U. S. Copyright Office material facts regarding the Programs. Defendants assert that if the correct information had been provided to the Copyright Office, IAVC’s applications would have been rejected. See Russ Berrie & Co. Inc. v. Jerry Elsner Co. Inc., 482 F. Supp. 980, 988 (S.D.N.Y. 1980) (court may declare a copyright invalid and deny enforcement on the ground of unclean hands if it finds that the applicant knowingly failed to advise the Copyright Office of facts which might have occasioned a rejection of the application); see also 3 Nimmer § 13.09(b) at 13-142 - 13-148; 2 Nimmer § 7.20 at 7-147. Following discovery, defendants waived an evidentiary hearing on this issue and agreed that the court could make findings of face and conclusions of law on the merits of their claim of fraud on the Copyright Office based upon documentary evidence and the deposition testimony of Julia Baker Huff (a Copyright Examiner in 1984 and currently Head of the Perform- ing Arts Section of the United States Copyright Office); Eva Young (the treasurer of IAVC); and Ronald L. Yin, Esq. (the attorney for IAVC who represented IAVC in connection with its applications to the Copyright Office for these Programs). The following facts are undisputed: each of the Programs is broadcast once over the Taiwanese airways. Following this broadcast, a 3/4" “mastertape" is delivered to IAVC’s office in Taipei, Taiwan, where the quality of the mastertape is reviewed. IAVC then sends the mastertape (uncopied and unedited) to its home office in Brisbane, California, where the Program is edited, copied onto a 1/2" videotape and distributed for rental to the public. The Taiwanese television stations are paid by IAVC’s office in Taipei. For several years prior to 1984, IAVC submitted to the Copyright Office a registration application for each Program, accompanied by a 1/2" tape of the version edited by IAVC in California. IAVC did not submit the 3/4" master- A42 tape and did not include in its applications any reference to the fact that the 3/4" tape had been sent to IAVC’s Taipei office for review prior to shipment to the United States, or to the fact that the 1/2" tape is an edited ‘version of the Program as broadcast in Taiwan. The applications did state, however, that the Pro- grams were "first published" in Taiwan, because Mr. Yin mistakenly believed that the broadcast in Taiwan constituted publication under the Copyright Act. The Copyright Office at no time questioned the application of the Copyright Act to works first published in Taiwan. On March 21, 1984, Mr. Yin was contacted by Copyright Examiner Julia Huff. Ms. Huff told Mr. Yin that she believed IAVC should be submitting the 3/4" mastertape as the “best edition" of the work as first published in Taiwan. Ms. Huff’s memorandum to the file regarding this conversation reads as follows: I questioned best edition as first published. He said that works first aired and then a 3/4 inch tape sent to U.S. where 1/2 inch tapes made and distributed. We discussed publica- tion . . . definition in law and possibility that were published by a network or station authorized copies to made (sic) at time of airing and these copies to be used for later airdates or further distribution. He will discuss publication with client. And he will discuss best edition. We may have to register under special relief. Exhibit #1, Exhibits to Deposition of Julia Baker Huff ("Huff Dep. Exh."). With respect to this conversation, Ms. Huff testified that it was the practice of the Copyright Office to inquire as to what was the best edition as first published when it received 1/2" videotapes (apparently because videotapes are generally originally produced on 3/4" tapes). Huff Tr. 8-9.% She recalled that she and Mr. Yin discussed “the general meaning of * References to “Huff Tr." refer to transcript pages of her deposition testimony. References to "Yin Tr." similarly refer to transcript pages of his deposition testimony. A43 publication,” and that she probably read him the legal defini- tion.?” Huff Tr. 11-12, 31. She advised Mr. Yin that the mere broadcast of the Program did not constitute a publication, but only a performance. Huff Tr. 16-17, 32; Huff Dep. Exh. #4 (letter from Mr. Yin recounting their discussion); Huff Dep. Exh. #5 (letter from Ms. Huff to Mr. Yin). They also discussed "an extension of the understanding of publication in the video industry, that it might have been possible that copies were * * * authorized to have been made from the airing of the Program. And then those copies might have been used at a later date some- where else, either for distribution or for later air dates [by other stations or the same station]." Huff Tr. 33. They did not discuss the distribution of a 3/4" videotape to IAVC in Taiwan; nor did they discuss the fact that the 1/2" tapes were “edited” versions of the 3/4" tape. Huff Tr. 11-12. Mr. Yin’s testimony, as well as his handwritten notes and a March 29, 1984 letter to IAVC regarding this conversation, are essentially consistent with Ms. Huff's memorandum and testimony regarding the March 21 discussion. Yin Tr. 7, 9-14, 16, 25-27; Exhibit #2 to Exhibits to Deposition of Ronald L. Yin and Eva C. Young ("Yin Dep. Exh.") (3/19/84 letter); Yin Dep. Exh. #9 and #10 (Mr. Yin’s handwritten notes). In a letter to Mr. Yin dated April 13, 1984, Ms. Huff again questioned the submission of a 1/2 inch videotape, stating For registration of a work first published outside the United States, we need a complete copy of the work as first published. If the 1/2 inch copies are the copies as first published in Taiwan, please give us your written confirma- tion. Otherwise, you should send a copy of each as first 71 The Copyright Act is somewhat ambiguous about what constitutes "first publication.” 17 U.S.C. § 101 defines “first publication” as the “distribution of copies * * * of a work to the public by sale * * * or by rental, lease or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution * * * constitutes publication." Professor Nimmer notes that "broadcasting per se” does not constitute a publication. 1 Nimmer § 4.11[B] at 4-55. Aad published. Or, if this is not possible, you may request special relief from the deposit requirements. Such a request should be made in writing to the Chief of the Examining Division and should explain why your client is unable or unwilling to deposit the copies as first published in Taiwan and should explain what copies they have sent instead. Yin Dep. Exh. #3 (emphasis original). Mr. Yin subsequently determined from IAVC that the lo~al Taiwan TV stations did not have the authority to tape a d rebroadcast the programs." Accordingly, Mr. Yin wrote to Ms. Huff on May 9, 1984: I am returning all of the attached Form PA in accordance with your letter of April 13, 1984. Please note that the publication dates have all been changed, and that the nation of publication has also been changed. This is pursuant to our discussion that merely airing of the TV programs in Taiwan constitutes only the performance of the work -- not the publication. In the U.S., the applicant, international Audio-Visual Communication Inc., sells the works in 1/2 inch tape cassettes, copy of which were previously submit- ted. Thus, the copies previously submitted were the copies first published.” Yin Dep. Exh. #4. Ms. Huff testified that following receipt of this letter she allowed the applications. Huff Tr. 17. IAVC never requested "special relief" from depositing the 3/4" tape. * Mr. Yin does not recall if he was ever informed that a 3/4" tape was transferred from the Taiwan TV Station to IAVC in Taiwan, or if he was told that [AVC edits the 3/4" tape in California. Tr. 7. ”* Notwithstanding this letter, [AVC continued to submit applications stating Taiwan as the nation of first publication, prompting further correspondence between Mr. Yin and Ms. Huff. See Ms. Huff's letter to Mr. Yin dated June I, 1984 and Ms. Huff's letter to IAVC dated July 20, 1984 (annexed as exhibits to Ms. Huff's telephonic deposition taken on November 8, 1988). A45 Defendants’ first contention is that Mr. Yin’s decision to change the place of first publication was not based upon his learning that the broadcast in Taiwan did not constitute publica- tion. Rather, defendants assert that Mr. Yin knew that the delivery of the 3/4" mastertape to IAVC’s Taipei office was itself a publication and that Mr. Yin changed the place of first publication from Taiwan to the United States because he knew that the validity of the FCN Treaty was being challenged in litigation in California, and was concerned that IAVC’s entitlement to copyright protection for works first published in Taiwan was threatened. Defendants therefore conclude that Mr. Yin knowingly and deliberately failed to advise the Copyright Office of the delivery of the 3/4" master to IAVC in Taiwan and falsely represented the place of first publication to be the United States. See Defendants’ Post-Trial Brief at 13-14, 21-27. I find absolutely no evidence in the record before me to support this allegation. First, Mr. Yin knew that the Copyright Office had already granted registration to hundreds of tapes that were stated to be first published in Taiwan. Second, it is undisputed that Ms. Huff at no time suggested that the place of publication had any bearing on the [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386011_0815%3A1. Public record. Not legal advice.