Eleventh Circuit Brings a Quiet End to Timbaland Sampling Lawsuit

September 17, 2012 · · Comments Off

A case involving hip-hop producer Timothy Mosley (aka Timbaland), chiptunes, and alleged unauthorized sampling has drawn to a close.

On Friday, the Eleventh Circuit affirmed a lower court’s decision that resolved the case in favor of Mosley. If you’re expecting a discussion of copyright and its intersection with the practice of digital sampling, you can stop reading now. The litigation here ended up being resolved on more dry matters.

I had previously written about Kernel Records Oy v Mosley, including the district court’s judgment in favor of Mosley and Kernel Record’s appeal. To reiterate, AcidJazzed Evening is a “chiptune” style track originally composed by Janne Suni. The track was remixed with permission by Norwegian Glenn Rune Gallefoss and first released via an Australian “disk magazine” in August 2002.

In 2006, pop artist Nelly Furtado released her album Loose. One of the tracks, “Do It”, produced by Mosley, was alleged to contain elements from the Gallefoss version of AcidJazzed Evening. Gallefoss subsequently transferred his rights to Kernel Records, and litigation ensued.

Kernel Records had not registered its copyright prior to bringing suit in the US. Mosley moved for summary judgment on this point, and in 2011, a Florida district court granted the motion, holding that AcidJazzed Evening was a “United States work” under the US Copyright Act and must be registered before bringing a copyright infringement suit. Kernel appealed.

Copyright Registration and Country of Origin

Since the first US Copyright Act, and for nearly 200 years afterward, creators were required to register their works to receive copyright protection. This requirement was done away with in the 1976 Copyright Act. Since then, copyright protection vests automatically once a work is put into fixed form — on paper, on tape, or saved to a digital file. The US, however, has retained a voluntary registration system that provides certain benefits to authors. One in particular is especially important to US authors: a US author cannot sue for infringement before registering her work.1

The move from mandatory to voluntary registration happened for several reasons, one of which was to bring US law into accordance with the Berne Convention, which the US entered in 1988. The Convention provides minimum standards of copyright protection for creators of member parties in other member parties. One of these standards is that “enjoyment and the exercise of these rights shall not be subject to any formality.”2 Thus, under the Convention, the US may require registration before a lawsuit is filed for US authors, but not for foreign authors.

Since this registration requirement hinges on the distinction between a US work and a foreign work, things get tricky when a work is published at the same time in the US and a foreign country. What is the country of origin in that situation?

The Berne Convention provides that “The country of origin shall be considered to be: … in the case of works published simultaneously in several countries of the Union which grant different terms of protection, the country whose legislation grants the shortest term of protection” and ”in the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country.”3

The US Copyright Act, consistent with these provisions, states:

For purposes of section 411, a work is a “United States work” only if—

(1) in the case of a published work, the work is first published—

(A) in the United States;

(B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States;

(C) simultaneously in the United States and a foreign nation that is not a treaty party; or

(D) in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States

Since Kernel Records had not registered its copyright in the US before bringing suit, the Eleventh Circuit was tasked with determining, under this complex framework, whether the work at issue was a “United States work,” and thus not falling within the scope of the registration requirement.

What isn’t entirely clear from the language of either the Berne Convention or the US Copyright Act is what happens when a work falls into more than one category — when, for example, it is first published simultaneously in the US and another Berne Convention country and a non-Berne country. On appeal, Kernel argued that this is typical when a work is first published online, calling it “simultaneous worldwide publication.” Since the Copyright Act uses the disjunctive or, according to Kernel, any publication that falls in more than one category would be excluded from the definition of a “United States work.”

The Decision

The court begins with a recitation of the meaning of “publication” under the Copyright Act and then turns to an explanation of the analysis required for determining whether a work is first published in the US or abroad.

Determining whether a work was first published domestically or abroad adds an additional level of complexity. Because the statutory definition of “United States work” contains strict temporal and geographic requirements (e.g., “first,” “simultaneously,” “in the United States,” “foreign nation,” and “treaty party”), a determination that a work was first published abroad requires both: (1) an examination of the method, extent, and purpose of the alleged distribution to determine whether that distribution was sufficient for publication, and (2) an examination of both the timing and geographic extent of the first publication to determine whether the work was published abroad.

For example, a free pamphlet distributed by mail to every household on the continent of North America would undoubtedly meet the statutory definition of “publication.” However, to determine whether the very same pamphlet was first published abroad, the exact timing and geographic extent of the first publication must be known. Was the pamphlet first mailed to every household in Mexico, followed a week later by a separate mailing to the rest of the continent? If so, the pamphlet is a foreign work, first published abroad, and is not subject to the registration requirement. Or was the pamphlet first mailed to households in the United States and Mexico, followed a week later by a separate mailing to the rest of the continent? If so, the pamphlet was first published in the United States and a treaty party whose law grants a term of copyright protection longer than the United States, making the work a United States work that is subject to the registration requirement. Without evidence of the exact timing and geographic extent of first publication, it would be impossible to determine whether the pamphlet met the statutory definition of a “United States work,” or was instead a foreign work.

Applying this analysis to online publication, the court notes that care must be taken — the question still relies on a close look at the facts of a specific case rather than a blanket determination that online publication equals simultaneous worldwide publication.

Although “online” and “Internet” are largely synonymous terms, the Internet consists of distribution methods of significantly different types. Thus, an “online” activity may occur through public websites, restricted websites, peer-to-peer networks, e-mail, or other less common methods. Although it may be possible to presume simultaneous worldwide availability of a public website, such a presumption could not apply to restricted websites, peer-to-peer networks, and e-mail. A restricted website is only available to those willing to pay a fee or who meet specified criteria; a peer-to-peer network is only available to those who have downloaded the required software; and an e-mail only goes to the addresses input by the sender. Thus, unlike public websites on the World Wide Web, each of these other methods of online distribution would be inconsistent with a presumption of simultaneous worldwide availability.

To determine the countries to which these other online methods distribute material would require additional evidence, such as the country of residence of the users of a certain restricted website or peer-to-peer network, or the recipient of a certain e-mail.

The court ends its analysis there, however, since it has no need to go further based on the facts of this case.

It first denies Mosley’s motion for summary judgment because the parties disputed over first publication. Acidjazzed Evening first appeared in an Australian “disk magazine”, a point both parties agreed on. They disagreed, though, on whether this “disk magazine” was an offline or an online publication. Since this point is necessary to determine whether registration is required, and since courts can only grant summary judgment when there is no disputed material facts, the Eleventh Circuit denied Mosley’s motion.

The court nevertheless affirms the district court’s judgment because it found that Kernel Records failed to meet its burden of offering evidence that Acidjazzed Evening was published simultaneously worldwide. As it notes above, simultaneous worldwide publication might be possible when a work is published on the world wide web, but this depends on the facts, and here there was only speculation that the work was first made available on a website. The court concludes that, “A reasonable fact-finder could not find that a simultaneous, worldwide publication occurred in August 2002,” fatally dooming Kernel’s copyright claim since it had not met the Copyright Act’s registration requirements.

So the court punts on the issue of “simultaneous worldwide publication.” It states, “Because the record lacks sufficiently probative evidence of simultaneous worldwide publication, we need not determine what effect simultaneous worldwide publication would have under 17 U.S.C. § 101’s definition of a United States work.” That issue, then, remains unresolved.

As a result, Mosley essentially faces no more liability, and considering the narrow grounds that the Eleventh Circuit based its decision on, the success of any potential future appeal does not seem likely.

So this decision will be of interest primarily to copyright practitioners. As this case indicates, registering a copyright is important before initiating any infringement suit in the United States. The cost of registration is nominal compared to court fees and attorney costs, so the first step when contemplating an infringement lawsuit in the United States should be ensuring that the work is properly registered.4

Footnotes

  1. 17 USC § 411(a). [↩]
  2. Article 5(2). [↩]
  3. Article 5(4). [↩]
  4. Timely registration also allows for statutory damages and attorney fees. Here, the court noted without discussion that these remedies are only available to works that have been registered, regardless of the country of origin, consistent with other courts that have faced the issue. See, for example, Football Ass’n Premier League v. YouTube, 633 F. Supp. 2d 159 (SDNY 2009). [↩]
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Friday’s Endnotes – 06/22/12

June 22, 2012 · · 2 comments

How Can We Get Artists Paid On The Internet? A Chat With David Lowery — Perhaps you’ve seen David Lowery’s letter to Emily White, which lit up the internet this week. (My favorite headline in a response: Our Digital Innocence Just Died. And David Lowery Killed It…) Maria Bustillos of The Awl talked with Lowery about the piece and other issues relating to building a sustainable creative ecosystem in a digital age.

Changing copyright laws won’t solve everything — Helienne Lindvall reports on the “copyleft math” put to use by the UK’s Vince Cable regarding implementing that country’s Hargreaves Report. For example, according to the IPO, the proposed parody exemption would result in a £600m growth per year; quite astonishing in a country where the total value of the music industry is estimated “to be around £1.33bn.”

NMPA Inks Deal With Universal Music Group Over VEVO, YouTube Videos — Songwriters and music publishers will now get a cut of ad revenues from online music videos. According to Billboard: “The NMPA termed the agreement, which covers North America, a groundbreaking model licensing deal because it will allow  songwriters and music publishers to share in revenue from music videos. Up until now, while Youtube and VEVO were making money on their ad-supported services, indie music publishers had not shared in that revenue because the major labels long considered videos as promotional tools and never paid for licensing the songs used in the videos.”

Google moves to snuff sites that rip music from YouTube videos — PaidContent reports: “The company’s move against YouTube-Mp3 comes at the same time that it is spending hundreds of millions of dollars on partnerships to create new YouTube channels that will offer original programming. Google may thus be seeking to protect its investment and reassure its partners that it can control the new distribution environment. Or the dispute may signal a more permanent shift in which Google begins to adopt the outlook of a copyright owner.” Chris Castle has another take: “Always be wary of anything from the tech press that begins ‘the free ride may be ending’ because that is never true.”

Stats And Figures On 30 Years Of Sampling [INFOGRAPHIC] — Hypebot presents this look at sampling from Whosampled, a site that catalogs the pedigree of samples since their introduction in music decades ago. Most surprising: the prevalance of samples is at an all-time high, a stat at odds with much IP scholarship.

German Court’s Verdict in Kino.to Case Supports an Internet that Works for Everyone  — The MPAA offers its take on the recent conviction of the ringleader of a major German streaming portal. Said the Association, the decision “paves the way for an internet that works for everyone by clearly recognizing that those who illegally distribute content are not in business for the greater good. The Kino.tv business model worked for its operators who made millions from ads but not for viewers whose privacy was compromised and not for the many thousands of creators and makers whose content was made available for free, denying them the value of their hard work and of the economic incentive to keep creating and making it.”

Why Can’t We Be Friends? — Sandra Aistars reflects on the future of conversation in a post-SOPA world. “We all want the internet to mirror the kind of society we profess to be. One that allows us to gather and exchange thoughts online, one that supports democracy and does not threaten others with exploitation, whether they be the unwary misled by scams, children and women exploited for the pleasure of others, or artists and creators who we neglect to compensate for their work. Just as a vibrant, open and free society cannot exist without empathy for our fellow travelers and mutual respect for basic rights and privileges, so too a healthy internet society must accept basic rules of the road.”

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Remix Without Romance: What Free Culture Gets Wrong

April 18, 2012 · · 6 comments

In his four-part video, Everything is a Remix, filmmaker Kirby Ferguson makes a familiar argument:

Copy, transform and combine. It’s who we are, it’s how we live, and of course, it’s how we create. Our new ideas evolve from the old ones.

But our system of law doesn’t acknowledge the derivative nature of creativity. Instead, ideas are regarded as property, as unique and original lots with distinct boundaries.

I say familiar because if you’ve paid any attention to copyright issues in the last decade or so, you’re bound to have heard a variation on the claim. Other videos like Copyright Criminals take the same approach. Lawrence Lessig has written several books on the topic, and entire organizations like Creative Commons have been created to address and advance this claim.1

This idea that copyright law hinders creativity is one of several ideas central to what could be called “free culture,” and it has fueled a great deal of criticism of current copyright law and opposition to enforcement efforts. Free culture scholarship has held sway in legal literature –  with many of its ideas cited by IP academics outside the free culture sphere — and enjoyed very little criticism until very recently.

In Remix Without Romance, UC Davis professor of law Thomas W. Joo provides a comprehensive and convincing critique of free culture scholarship.

Remix Without Romance

A highly recommended read. The abstract says:

A dominant argument in intellectual property scholarship asserts that technologies such as digital copying empower individuals to participate in the making of culture. Such participation involves individuals appropriating cultural material, “remixing” it with other elements, and “recoding” it by assigning it alternative meanings. By enabling more people to participate in culture, remixing and recoding supposedly enhance “semiotic democracy” and mitigate the dominance of the media industry. The same theorists who make this argument also tend to assert that copyright law is in need of significant reform because it inhibits recoding and thus stifles semiotic democracy.

This Article challenges the empirical assertion that law inhibits recoding—but it also questions the normative assumption that recoding is presumptively good for semiotic democracy. This Article focuses on a specific type of recoding: musical sampling (that is, the recoding of music through digital copying and other means). Sampling, particularly in hip-hop music, is frequently cited as a paradigmatic example of recoding that has been inhibited by intellectual property law. The legal history of sampling, however, suggests otherwise. Commentators have misread important judicial opinions about sampling and misunderstood the business practices of the music industry. At least in the sampling context, law has not prevented the reallocation of recoding rights by contract.

While markets have been able to reallocate sampling rights, however, such transactions do not necessarily advance semiotic democracy, because market failures afflict the marketplace of ideas. In the cultural context, as in the political and economic contexts, formally equal opportunity to participate does not result in equality of influence, and can in fact exacerbate power imbalances. For example, legal and technological innovations (such as digital copying and the Internet) can enable cultural underdogs to recode the messages of media conglomerates and other dominant cultural institutions. But those same innovations also allow dominant institutions to appropriate from the underdog—and dominant institutions can then use their influence to “drown out” those independent voices with recoded meanings. Moreover, recoding by its nature involves the incorporation and repetition of dominant cultural messages. Such repetition can propagate and reinforce dominant messages, resulting in the cooptation of recoding, regardless of the recoder’s intent. In short, recoding is not clearly conducive to semiotic democracy. Rather, it is full of internal contradictions that make its relationship to semiotic democracy an ambivalent one.

In short, Joo makes two claims.

First, many of the factual claims made by free culture advocates are incorrect. This is important. Amongst copyright skeptics, many question statistics about the economic benefits of copyright or effects of piracy and calls for more empirical evidence in copyright policy are common. Yet, as Joo demonstrates, many free culture arguments lack such empirical evidence. They may sound attractive, and they are repeated often, but do not hold up under closer scrutiny. In the article, Joo focuses specifically on musical sampling to demonstrate the differences between the facts on the ground and the narrative advanced by free culture scholars.

Second, Joo refutes the normative free culture claims that weakening copyright rules would increase participatory culture. He finds little reason to believe that “semiotic democracy” would be enhanced, and media dominance in culture would be reduced, if the law was reformed to better allow remixing and recoding.

I want to look at the first of these claims today.

Did Copyright Law Kill Sampling?

Thomas Joo focuses on “sampling”, especially sampling in hip-hop, because it is emblematic of the type of artistic practice free culture scholars focus on, and sampling has received so much attention from legal academics. Joo notes, “The hip-hop era has coincided with the digital age, and hiphop has become closely identified with recoding and particularly digital remixing. Indeed, the term ‘remix,’ which today is often used to refer to recoding practices in general, derives from pop music, where it has been used for decades to refer more narrowly to re-edited versions of records in hip-hop, disco, and other genres.”

The prevailing view is that sampling developed as an artistic practice in early hip-hop by flying under the radar of copyright law. Then, as a result of a series of lawsuits beginning in the 1990s, the legal landscape radically shifted. Sampling was declared copyright infringement and largely died out because of the cost of incorporating previously recorded music into new songs.

The prevailing view is wrong, according to Joo. “The narrative of a battle between copyright and hip-hop is an overdramatized myth that ignores the actual history of the interaction between law and musical recoding.”

Joo blames this myth on free culture scholars “thinking like a lawyer, not like an artist.” They overemphasise the effect of law on artistic practices: legal doctrines lag behind artistic innovation, which limits their “role to settling disputes over the proceeds from established practices.”

Joo marshals impressive research and analysis to support his claims. He begins by providing examples of “sampling” that pre-date hip-hop — and examples of recording artists getting and paying for permission to use such samples. The emergence of hip-hop in the late 1970s into the music industry did not change this.

Both turntablism and rap music made the transition from live performance to records, and the existing business practice of paying for permission to appropriate was, quietly and unremarkably, extended to hiphop records. Indeed, the practice dates to the very first commercially successful hip-hop record—yet it did not prevent hip-hop from becoming a dominant artistic and commercial force in popular music.

Infringement lawsuits involving sampling began to appear in the early 90s. The most frequently cited sampling cases, however, have been misinterpreted, and their effect exaggerated. Chief among these are Grand Upright Music v. Warner Bros. Records, (considered the first “sampling” lawsuit to go to court) and Bridgeport Music v. Dimension Films.

Joo on Grand Upright:

Copyright scholars are in general agreement that a 1991 opinion, Grand Upright Music v. Warner Bros. Records, suddenly and radically changed the legal status of sampling by declaring that sampling without copyright permission constitutes infringement. This general understanding is, in fact, a gross misconception of the opinion. Grand Upright did not even present the question of whether unlicensed sampling would constitute infringement, because the defendants conceded that it would. Indeed, the historical record, including the court records in Grand Upright itself, shows that the hip-hop community, from its earliest days, generally understood and respected the obligation to obtain and pay for permission to use samples in commercial recordings.

This “gross misconception” of the law and business practices surrounding sampling extends to Bridgeport, a 2004 Sixth Circuit decision that you’ll find in just about any discussion on copyright law and sampling since.

Joo points out that “Bridgeport is the decision of only one circuit, and not one that is especially influential with respect to copyright law,” and even so, the opinion appears  “to have been consistent with existing industry practices—practices under which sampling flourished. By the late 1980’s, it was well-established practice in the music industry to seek copyright permission both for lengthy, recognizable samples and for briefer, slice and-dice samples.”

Legal scholars often state that albums in the earlier years of hip-hop that made heavy use of sampling — the Beastie Boy’s Pauls Boutique and early Public Enemy albums are frequently used as examples — couldn’t be made today today because of copyright law. Joo argues that this is simply incorrect. These albums were made, after all, at a time when legal rules and business practices concerning samples were similar to today — not to mention that samples on many of those albums were cleared and licensed. The shift away from sample-heavy styles of music is more reflective of a shift in musical tastes than a shift in the law.

Joo’s takeaway: “As a historical matter … copyright law has not prevented the development of sampling.”

The Mythology of Free Culture

Remix Without Romance is a fascinating read for anyone interested in the issues discussed above. And it’s tremendously useful for its empirical contributions to copyright doctrine.

In my opinion, it is also an important work for critiquing free culture (and other copyright skepticism) scholarship. The “exaggerations” (to use Joo’s term) in such scholarship are not isolated to digital sampling — it is concerning how many similar claims are made in this area. In a way, large portions of free culture and other opposition to copyright have been built upon mythology. The effects of this scholarship aren’t limited to academia; free culture has become very popular online and in the general public, where these specious claims morph into talking points against copyright in toto.

Footnotes

  1. See Remix and Free Culture by Lessig. See also Siva Vaidhyanathan, Copyrights and Copywrongs: The Rise of Intellectual Property and How It Threatens Creativity; James Boyle, The Public Domain: Enclosing the Commons of the Mind. [↩]
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Friday’s Endnotes – 10/14/11

October 14, 2011 · · Comments Off

Protecting Property Rights on the Web: Thoughts on the Protect IP Act — The Institute for Policy Innovation released a paper, written by Tom Giovanetti, dealing with the PROTECT IP Act. Very good read, the piece places the legislation within the context of the fundamental principles the US is based on. “So, if we recognize the threat to our economy, to our health, and to our overall well-being posed by pirated and counterfeit goods, and if we recognize that it is a legitimate role for government to facilitate the protection of property rights, why should the Internet be set aside as a zone safe for the marketing and distribution of pirated and counterfeit goods? Is there something in the essential nature of the Internet that demands that there be no attempt to impose basic legal protections for those who participate in the online world?”

Argument recap: The constitutionality of zombie copyrights — Rebecca Tushnet provides some thoughts on last week’s oral arguments in Golan v. Holder. She concludes that “petitioners have an uphill battle, but not necessarily an unwinnable one.”

Spielberg, Hanks and Winfrey Join Forces with First Lady, Starring in Public Service Announcement Campaign Supporting Military Families — News about the entertainment community contributing their time and talents to produce a series of PSA’s which will be used to draw attention to the White House’s Joining Forces initiative. The initiative seeks to “bring Americans together to recognize, honor and take action to support military families as they serve our country and throughout their lives.”

Opening Remarks at the California Copyright Conference, October 11, 2011 — Chris Castle shares his remarks at a recent panel discussion hosted by the Conference. “I think we must balance our attention between fighting to achieve the legal environment for survival with supporting the people who are doing legitimate business or who aspire to do legitimate business.  And we likewise have to do what we can to nurture a business environment where people with good karma can thrive.”

ICYMI: Support for Rogue Sites Legislation is HUGE — How huge? The list of supporters can barely fit on this full page ad running in Politico.

When is a lock not a lock? — John Degen addresses TPMs and DRM, a hot topic in Canada due to their being addressed in the proposed Copyright Reform Act. “Well, why do we bother with diary, luggage or gate locks? None of them work very well. All of them can be broken with little to no effort. As serious efforts at security, TPMs are… well… lame. But ask any kid whose little brother has broken into her diary why that useless little lock is there, and you begin to understand why we use these things. They’re not really locks at all – they’re declarations of private property.”

Copyright Litigation Blog Turns Five — Kudos to Ray Dowd, who literally wrote the book on copyright litigation, for celebrating his fifth year blogging. Dowd shares some insightful thoughts on his experience writing the Copyright Litigation Blog.

The State of Colleen’s Industry from Print to Web: It’s working, and I don’t need a gag strip to make it pay — Colleen Doran shares her experiences of promoting, online, her work as a comic artist over the past decade. Getting to the point of actually making money online is a lot harder and more complex than what the “You Should Just People” make it out to be.

Sampling – a cautionary tale — Finally, music attorney Ian Clifford talks about his work clearing samples and the lessons he’s learned. Good information and advice for new bands and musicians who incorporate sampling into their work.

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Timbaland wins 2nd Sampling Lawsuit in 3 Months

June 15, 2011 · · 3 comments

It’s been a good couple of months for music producer Timbaland.

At the end of March, the 11th Circuit affirmed a grant of summary judgment in favor of Timbaland in a copyright infringement suit brought by Saregama.1 The Indian music production and distribution company alleged that Timbaland had sampled a portion of one of its catalog songs for rapper The Game’s “Put You on the Game.” For more about the court’s decision, which resolved on copyright ownership issues rather than infringement issues, check out Saregama’s Lack of Standing to Sue at Spicy IP.

Last Tuesday brought another court victory for the producer in a completely different case. On June 7, 2011, the Southern District Court of Florida affirmed its previous grant of summary judgment in favor of Timbaland in Kernel Records Oy v. Mosley.

Perhaps you recall the saga: Timbaland allegedly sampled portions of the Finnish chiptune “Acidjazzed Evening” to make the song “Do It” for Nelly Furtado’s 2006 album Loose. Kernel Records Oy, which had acquired the rights to Acidjazzed, sued both Furtado and Timbaland in 2009.2

Timbaland’s remarks about the controversy, when the story first broke that he had sampled from Acidjazzed, attracted some outrage (and were reminiscent of Judith Griggs — editor of the infamous Cooks Source magazine — response to food blogger Monica Gaudio). Among other things, the producer said, “It makes me laugh. The part I don’t understand, the dude is trying to act like I went to his house and took it from his computer. I don’t know him from a can of paint. I’m 15 years deep. That’s how you attack a king? You attack moi?”3

Like Saregama, the court never reached the issue of whether the use of the sample was infringement. Instead the court held that Kernel Records had failed to register its copyright before filing suit. But wait, you might say, I thought foreign copyright owners didn’t need to register their works in the US?

Normally, that’s true. But not if the work is first published online, says the Florida District Court.

Copyright Registration

The subject of copyright registration is one of great confusion for those who aren’t copyright lawyers, so I think a quick review might be helpful.

Under the Berne Convention, of which the US is a party member, copyright protection is automatic — it vests as soon as a work is in fixed form. Formalities like registration are not allowed under the Convention, though many countries do provide the option of registering a work for certain evidentiary and other purposes.

In the US, however, registration is also required for creators of “United States works” before filing a copyright infringement lawsuit.4 Owners of non-US works can sue without registering, though they still must comply with registration requirements if they wish to seek statutory damages in court.5 (And, while optional for non-US works, registration still confers certain rebuttable presumptions in court.)

Kernel Records, assuming that the Finnish Acidjazzed was not a United States work, hadn’t registered the copyright before suing Timbaland. That would turn out to be a fatal assumption.

Does Online Publication Subject a Foreign Author to US Registration Requirement?

Whether online publication amounts to a work being simultaneously published in the US was an issue of first impression for the Florida court and apparently had only been addressed by one other district court. In Moberg v. 33T, Judge Hillman, of the District Court of Delaware, faced the same question and came to the opposite conclusion as Kernel Records. The Florida court explained:

Judge Hillman articulated three reasons for rejecting the proposition that publishing a work on the Internet “automatically, instantaneously, and simultaneously causes that work to be published everywhere in the world.”

First, he concluded that such a result would subject every copyright holder to the formalities of the copyright laws of every country that has such laws which “is contrary to the purpose of the Berne Convention.” Next, Judge Hillman reasoned that transforming the plaintiff’s photographs into “United States works” “simply by posting them on the internet would allow American citizens to infringe on foreign copyrighted works without fear of legal retribution, since the majority of foreign works are never registered in America.” This would be contrary to the Convention’s stated purpose of forming “a Union for the protection of the rights of authors in their literary and artistic works.” Finally, Judge Hillman determined that U.S. copyright laws, in accord with the Convention, currently protect foreign works in the United States “without requiring the artists to undertake any formalities in the United States.” He concluded that requiring artists who posted their work on a foreign country’s website to comply with U.S. copyright formalities would be contrary to that law.

Unfortunately for Kernel Records, the Florida court declined to adopt Hillman’s interpretation of “United States work.” The court said, “Judge Hillman’s contextual and policy-driven analysis is reasonable and sound but is, in our opinion, wholly untethered to the actual statutory and treaty language that governs this dispute.” Based on that language, the court came to its conclusion that online publication of a work is “simultaneous global publication.”

Florida District Court Says Yes

The Copyright Act defines a “United States work” — one that is subject to the §411 registration requirement — as a work that, if published, was first published:

(A) in the United States;
(B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States;
(C) simultaneously in the United States and a foreign nation that is not a treaty party; or
(D) in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States6

The court arrived at its conclusion that Acidjazzed fell within this definition by looking at the language of (B). Acidjazzed was “published”, said the court, when it was shared on a German website.7 Germany is a treaty party with the same term of copyright protection provided in the US. Finally, said the court, publication on a website amounts to “simultaneous global publication” — “There can be little dispute that posting material on the Internet makes it available at the same time — simultaneously — to anyone with access to the Internet.”

Thus, since Kernel was required to register its copyright before filing a lawsuit and it hadn’t done so, Timbaland was entitled to summary judgment.

The Bottom Line

The proposition that US works include any work first published online anywhere in the world might seem at first a little surprising, but in reality (and as the court notes) the practical effect is small. As mentioned earlier, foreign authors already have an incentive to register a copyright in the US to pursue statutory damages or receive evidentiary benefits. At most, it adds one additional step before a foreign author can sue in a US court.8

Kernel Records again faced bad news. Though it had eventually registered its copyright, the court ruled that it was too late in the game. (In fact, the whole opinion seems like one long string of bad news for Kernel.)

So, barring an appeal, Timbaland walks away victorious for the second time in 3 months. He is joined by Cypress Hill, who emerged unscathed from their own sampling lawsuit on June 1, also resolved on copyright ownership issues.9 I’ll bet Jay-Z hopes to join both soon.

Footnotes

  1. Saregama India v. Mosley, No. 10-10626 (March 25, 2011). [↩]
  2. Joe Bosso, Timbaland, Nelly Furtado sued for plagiarism, MusicRadar.com (June 17, 2009). [↩]
  3. Jayson Rodriguez, Timbaland still in shock over Jay-Z, Madonna, Elton Collaborations, MTV.com (Feb 9, 2007). [↩]
  4. 17 USC § 411(a); see Reed Elsevier v. Muchnick, 130 S.Ct. 1237 (2010). [↩]
  5. Football Ass’n Premier League v. YouTube, 633 F. Supp. 2d 159 (2009). [↩]
  6. 17 USC § 101. [↩]
  7. Kernel Records disputed this fact, saying the song was first published in an offline “disk magazine”, but the court concluded that they hadn’t provided any credible evidence to back up their dispute. [↩]
  8. Though the 11th Circuit, where this case occurred, has adopted the rule that a copyright is not considered “registered” until the Copyright Office actually processes the registration, as opposed to the rule that a copyright is considered registered as soon as the Copyright Office receives the registration materials. See Cosmetic Ideas v. IAC, 606 F.3d 612, 616 (9th Cir. 2010). [↩]
  9. Syl Johnson v. Cypress Hill, Nos. 08-3810, 09-2213, 10-1733 (7th Cir 2011). [↩]
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