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,Â 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 ofÂ 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 thatÂ 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 formÂ â€” 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. 117 USC Â§ 411(a).
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.” 2Article 5(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” andÂ “in the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country.” 3Article 5(4).
The US Copyright Act, consistent with these provisions, states:
For purposes of section 411, a work is a â€œUnited States workâ€ only ifâ€”
(1) in the case of a published work, the work is first publishedâ€”
(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 categoryÂ â€” when, for example, it is first publishedÂ simultaneouslyÂ 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 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 abroadÂ adds an additional level of complexity. Because the statutory definition ofÂ â€œUnited States workâ€ contains strict temporal and geographic requirements (e.g.,Â â€œfirst,â€ â€œsimultaneously,â€ â€œin the United States,â€ â€œforeign nation,â€ and â€œtreatyÂ partyâ€), a determination that a work was first publishedÂ abroad requires both: (1) an examination of the method, extent, and purpose of theÂ alleged distribution to determine whether that distribution was sufficient forÂ publication, and (2) an examination of both the timing and geographic extent ofÂ the first publication to determine whether the work was published abroad.
For example, a free pamphlet distributed by mail to every household on theÂ continent of North America would undoubtedly meet the statutory definition of â€œpublication.â€ However, to determine whether the veryÂ same pamphlet was first published abroad, the exact timing and geographic extentÂ of the first publication must be known. Was the pamphlet first mailed to everyÂ household in Mexico, followed a week later by a separate mailing to the rest of theÂ continent? If so, the pamphlet is a foreign work, first published abroad, and is notÂ subject to the registration requirement. Or was the pamphlet first mailed toÂ households in the United States and Mexico, followed a week later by a separateÂ mailing to the rest of the continent? If so, the pamphlet was first published in theÂ United States and a treaty party whose law grants a term of copyright protectionÂ longer than the United States, making the work a United States work that isÂ subject to the registration requirement. WithoutÂ evidence of the exact timing and geographic extent of first publication, it would beÂ impossible to determine whether the pamphlet met the statutory definition of aÂ â€œUnited States work,â€ or was instead a foreign work.
Applying this analysis to online publication, the court notes that care must be takenÂ â€” 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 â€œonlineâ€ and â€œInternetâ€ are largely synonymous terms, the InternetÂ consists of distribution methods of significantly different types. Thus, an â€œonlineâ€Â activity may occur through public websites, restricted websites, peer-to-peerÂ networks, e-mail, or other less common methods. Although it may be possible toÂ presume simultaneous worldwide availability of a public website,Â such a presumption could not apply to restricted websites, peer-to-peer networks,Â and e-mail. A restricted website is only available to those willing to pay a fee orÂ who meet specified criteria; a peer-to-peer network is only available to those whoÂ have downloaded the required software; and an e-mail only goes to the addressesÂ input by the sender. Thus, unlike public websites on the World Wide Web, eachÂ of these other methods of online distribution would be inconsistent with aÂ presumption of simultaneous worldwide availability.
To determine the countries to which these other online methods distributeÂ material would require additional evidence, such as the country of residence of theÂ users of a certain restricted website or peer-to-peer network, or the recipient of aÂ 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 EveningÂ 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 findÂ 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 theÂ record lacks sufficiently probative evidence of simultaneous worldwideÂ publication, we need not determine what effect simultaneous worldwideÂ publication would have under 17 U.S.C. Â§ 101â€™s definition of a United StatesÂ 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 copyrightÂ practitioners. As this case indicates, registering a copyright is important before initiating any infringement suit in the United States.Â 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. 4Timely 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,Â Football Assâ€™n Premier League v. YouTube, 633 F. Supp. 2d 159 (SDNY 2009).
|↑1||17 USC Â§ 411(a).|
|↑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,Â Football Assâ€™n Premier League v. YouTube, 633 F. Supp. 2d 159 (SDNY 2009).|