A court in the Southern District of Florida recently held that the publication of a song on a foreign website constitutes “simultaneous global publication,” bringing it within the definition of “United States work” under Section 101 of the Copyright Act and subject to Section 411(a)’s pre-suit copyright registration requirement. See Kernal Records Oy v. Mosley, Slip Copy, 2011 WL 2223422 (S.D. Fla. June 7, 2011). In so doing, the Florida court expressly rejected the holding of the only other published decision to have considered the issue, Moberg v. 33T LLC, 666 F. Supp. 2d 415 (D. Del. 2009). As a result of this decision, foreign authors face increased uncertainty as to whether the provisions of the Berne Convention will serve to exempt them from the copyright registration requirements applicable to owners of U.S. works.

Background

The Law

Section 411(a) of the U.S. Copyright Act provides that “no 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.” A published work is a “United States work” if:

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.

17 U.S.C. § 101. The “treaty” to which the statute refers is the Berne Convention. And pursuant to the United States’ obligations under the Berne Convention, works that are not “United States works” are exempt from the registration requirement.

The Case

In 2000, Janne “Tempest” Suni, a Finnish musician, created a “chiptune-style” musical composition entitled “Acidjazzed Evening.” “Chiptune” is synthesized music typically produced with the sound chips of old computers and video game consoles. In 2002, Norwegian musician Glenn Rune Gallefoss created a remix of Acidjazzed Evening (with Suni’s permission) on a Commodore 64 computer. Gallefoss did not commercially release Acidjazzed Evening, but he authorized its publication on an Australian website in August 2002, where it was available for downloading and copying. In 2007, Gallefoss transferred his rights in Acidjazzed Evening to Kernal Records Oy.

Meanwhile, in 2006, pop musician Nelly Furtado released “Do It,” a song produced by Timothy Z. Mosley (a/k/a “Timbaland”). According to Kernal Records, Timbaland copied Acidjazzed Evening in making Furtado’s “Do It,” without receiving the necessary authorization. As a result, Kernal Records sued Timbaland and others for copyright infringement under the U.S. Copyright Act. Timbaland moved for summary judgment, arguing that Kernal Records lacked standing because it had failed to register Acidjazzed Evening with the U.S. Copyright Office prior to filing suit, as required by 17 U.S.C. § 411(a). Kernal Records responded that Acidjazzed Evening was exempt from Section 411(a)’s registration requirement because it was not a “United States work.”

Decision

After concluding that Gallefoss first published Acidjazzed Evening on a website in Australia, the district court next considered whether such publication constituted simultaneous publication in the United States under Section 101 of the Copyright Act. Kernal Records urged the court to follow Moberg, the only other published decision to have considered the issue. In Moberg, the Delaware district court held that allowing publication of a work on a foreign website to transform the work into a United States work would “overextend and pervert the United States copyright law, and would be contrary to the Berne Convention.” Id. at 420.

The district court rejected Moberg, noting that its “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.” 2011 WL 2223422, at *8. The court instead focused on the plain language of the copyright statute, and concluded that, under 17 U.S.C. § 101, Acidjazzed Evening had been “published” because it had been made available for downloading and copying. In considering whether Acidjazzed Evening had been published “simultaneously,” the court looked to the dictionary definition of “simultaneous” and held that “[t]here 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.” Id. at *9. The court noted that there was nothing in the text of the Copyright Act to suggest that Congress intended to except works published on the Internet from the phrase “first published . . . simultaneously,” or that certain works should be excluded from “United States works.”

The district court criticized the Delaware court’s reasoning in Moberg, stating that it showed a “deference to certain goals of the Berne Convention at the expense of clear statutory language.” Id. The Florida court reasoned that although the Berne Convention had removed many of the formalities for foreign authors, it had not dispensed with all of them. “[R]egistration is still required for foreign authors to gain the procedural benefits of a prima facie presumption of the validity of a copyright, statutory damages, and attorneys fees under the Act. . . . And of course, a foreign author wishing to avail himself of U.S. copyright laws must comply with various requirements for filing a lawsuit in federal court.” Id. at *10. Requiring a foreign author to register a simultaneously-published work before filing suit in the United States merely adds one additional procedural step.

Accordingly, the court held that publishing Acidjazzed Evening on a website in Australia was an act tantamount to simultaneous global publication of the work, bringing it within the definition of “United States work” under Section 101(1)(C) and subject to Section 411(a)’s pre-suit registration requirement. Kernal Records, therefore, lacked standing to bring suit against Timbaland.

Conclusion

The Southern District of Florida’s decision in Kernal Records is likely to increase uncertainty surrounding what constitutes a “United States work.” Foreign authors should take note that, if they seek to avoid Section 411(a)’s pre-suit registration requirement, they should be careful to avoid first publication on the Internet. Conversely, those facing an infringement suit from the owners of presumably non-U.S. works should investigate whether first publication took place on the Internet. Above all, the court’s decision adds yet another reason to the long list of reasons why foreign authors should consider timely registration of their works with the U.S. Copyright Office, despite the exemptions provided by the Berne Convention.