There is one thing about the 9th Circuit’s decision in Kahle v. Gonzales that I could not find any discussion about – namely, the international copyright law implications of the issue. The basics first. Article 5(2) of the Berne Convention provides:
The enjoyment and the exercise of these rights shall not be subject to any formality
In a 1988 Amendment to the Copyright Act (entered into force in 1989) Congress embraced this international arrangement, some 100 years after the original Berne Act. The U.S. is also a member of the WTO and must adhere to Article 9(1) of the TRIPs agreement, incorporating by reference Articles 1 through 21 of Berne, and making respective violations subject to the TRIPs notorious dispute resolution procedure, prescribing a set of very inconvenient trade sanctions. (One WTO dispute resolution panel has already condemned the U.S. in 2000, holding that section 110(5) of the Copyright Act did not conform to Article 13 of TRIPs – the three-step test provision - see Jane Ginsburg’s account on this episode). The U.S. is also a signatory of the WIPO Copyright Treaty of 1996, incorporating by reference in Article 1(4) thereof the relevant Berne provisions, including Article 5(2).
Assuming that the 9th Circuit sided with plaintiffs in Kahle; and assuming that the court held that the switch from an opt-in to an opt-out system deviated from the traditional counters of copyright law and thereby became subject to heightened first amendment scrutiny; and assuming that the relevant amendments did not survive this scrutiny and the court ruled that the U.S. must return to a copyright formalities system – it seems to me that the U.S. would be in violation of all the international provisions mentioned above, provided that as a result protection of foreign works in the U.S. were subject to formalities (in the form of renewal, notice or otherwise.) Now, before 1989, when the U.S. was still free from Berne obligations, its copyright formalities system was nobody's business. Presently, it is not necessarily the case. This still does not say anything about the merits of plaintiffs’ argument in Kahle; it is rather the pragmatist’s observation. Which sane court would hold that the U.S. Constitution contravened with international agreements and mandated their breach? (This would probably contradict also section 104A of the Copyright Act which is meant to prevent such result).
In fact, I truly believe that returning to formalities is an important option for copyright law to save itself from itself. As such, it definitely deserves a thorough examination as a matter of copyright policy under the new conditions of the network environment. Unfortunately, the reality of international agreements in this area would render such inquiries pretty much a theoretical exercise. By the way, one might find it surprising that the Kahle court did not touch upon this tiny issue, not even with a nod.