If you are the creator or owner of a “foreign work” — one first published outside of the United States — and decide to enforce the copyright within the United States, be prepared. First, you may want to ensure that you understand the “esoteric” meaning of “published” as set forth in the U.S. Copyright Act.  Then, you will need to marshal sufficient evidence to prove that the first publication occurred outside the United States. Or, you could negate the need for such efforts by simply registering your foreign work with the U.S. Copyright Office, thereby affording you a prima facie valid copyright and clearing the path for bringing suit against an alleged infringer.
On September 14, 2012, the United States Court of Appeals for the Eleventh Circuit issued an opinion affirming a lower court’s decision to toss out a copyright suit against Timothy Mosley a.k.a. Timbaland, Nelly Furtado, and a host of record label companies, based on evidentiary grounds. The Court concluded that the district court erred in granting Mosley’s motion for summary judgment, but nevertheless found that the plaintiff-appellant had failed to provide sufficient evidence that it had complied with the statutory prerequisites prior to filing the action.
For background on the origins of the case, see this article published by Music Radar. In short, a Finnish record label, Kernel Records Oy (“Kernel”), obtained the rights to a Sound Interface Device (SID) file, titled Acidjazzed Evening, created by Glenn Rune Gallefoss in 2002. In August 2002, with Gallefoss’ permission, an Australian disk magazine called Vandalism News published Acidjazzed Evening. In December 2002, a Swedish website called High Voltage SID Collection uploaded Acidjazzed Evening to its own website, most likely after obtaining a copy from Vandalism News. On June 7, 2006, Nelly Furtado released a song, Do It, produced by Timbaland and featuring “sampling” of Acidjazzed Evening.
Kernel first brought copyright claims in Finland against those responsible for Do It, but lost. Kernel then filed an action in the United States District Court for the Southern District of Florida against Mosley, Furtado, Mosley Music, LLC, Universal Music Distribution Corp., UMG Recordings, Inc., Interscope-Geffen-A&M, EMI Music Publishing, EMI April Music, Inc., Virginia Beach Music, WB Music Corp., and Warner Chappell Music (collectively, Defendants) alleging infringement of its copyright of Acidjazzed Evening. While the music industry and casual observers saw this as a prime opportunity for a court to weigh in on the permissibility and limits of sampling, the sole focus of the case became whether Kernel could properly litigate its claims.
Though copyright protection exists from the moment “an original idea leaves the mind and finds expression in a tangible medium,” the Copyright Act of 1976 requires registration of a “United States work” with the U.S. Copyright Office before bringing an action for copyright infringement. Kernel did not register Acidjazzed Evening with the Copyright Office before bringing suit, but owing to obligations under the Berne Convention the Copyright Act does not bar the owner of a “foreign work” from bringing suit in the U.S. It should be noted, though, that foreign works may be registered, which, given the low cost and substantial benefits conferred on copyright registrants (e.g., ability to collect statutory damages and attorney’s fees), is highly preferable.
The Copyright Act defines a “United States work” as a work that is first published in the United States or simultaneously in the United States and a foreign nation (whether a party to the Berne Convention or not). 17 U.S.C. § 101. The case-determinative issue, then, was whether first publication of Acidjazzed Evening in Australia’s Vandalism News also occurred simultaneously in the United States. If so, the work was a United States work and subject to the pre-filing registration requirement. If not, the case could go on. The burden is on the plaintiff seeking to bring a copyright action to prove that its work was first published abroad and is exempt from the registration requirement.
First, the Court recited the “esoteric” definition of “publication” set forth in the Copyright Act:
“[T]he distribution of copies or phonorecords or a work to the public by sale or other transfer or ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.”
17 U.S.C. § 101. “Publication also occurs ‘when an authorized offer is made to dispose of the work in any such manner[,] even if a sale or other such disposition does not in fact occur.'” The parties agreed that Acidjazzed Evening was published in Vandalism News, but disputed whether the “disk magazine” was first published on the Internet or on a local physical hard drive. Mosley contended that the disk magazine was first available on the Internet, thereby making it simultaneously available around the world, including in the United States. Kernel argued that the disk magazine was first published on a local computer drive and thus was initially available only in Australia.
The Court first took on Mosley’s and the district court’s reasoning that if a work is published on the Internet it is automatically available worldwide. The Court rejected this reasoning, explaining that numerous works are “online” yet are not publicly available, in places such as restricted websites, peer-to-peer networks, and e-mail systems. The Court looked at the entire factual record, including conflicting and ambiguous deposition testimony, declarations, and other support, to determine whether the publication was simultaneously available to the public around the world. The Court found that the district court erred and that Mosley had not met his burden to show that there was no genuine dispute of material fact as to whether Acidjazzed Evening was a United States work.
Though the district court erred in granting Mosley’s motion, the Court nevertheless affirmed the decision because it found the record devoid of any support that Kernel had met its burden to show that its work was exempt from the registration requirements. To do so, Kernel would have needed to show by a preponderance of the evidence (1) that Acidjazzed Evening was published; (2) when that first publication occurred; and (3) in what countries that first publication occurred. The Court stated that “on this record, no reasonable fact-finder could possibly determine by a preponderance of the evidence those essential facts.” Thus, because Kernel failed to register its work with the U.S. Copyright Office before filing suit, “Kernel’s case is doomed.”
The reported appellate and district court decisions are Kernel Records Oy v. Mosley et al., 794 F. Supp. 2d 1355 (S.D. Fla. 2011), aff’d, __ F.3d __, 2012 U.S. App. LEXIS 19413 (11th Cir. Sept. 14, 2012).
 Kernel Records Oy v. Mosley et al., No. 11-12769, __ F.3d __, 2012 U.S. App. LEXIS 19413 at *22-23 (11th Cir. Sept. 14, 2012) (citing Estate of Martin Luther King, Jr. v. CBS, Inc., 194 F.3d 1211, 1214 n.3 (11th Cir. 1999) (“[P]ublication is a legal word of art, denoting a process much more esoteric than is suggested by the lay definition of the term.”)).
 “Sampling” is the act of repurposing a snippet of another artist’s work and incorporating it into a new work. Sampling has been common in the music industry for decades, and the line between acceptable creativity and unacceptable criminality has been hotly debated. See http://www.npr.org/2011/01/28/133306353/Digital-Music-Sampling-Creativity-Or-Criminality.
 17 U.S.C. § 411(a): “[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.”
 Kernel Records, 2012 U.S. App. LEXIS 19413 at *47.
 Id. at *50.
Categories: Before 2017