Kernel Records Oy owns the copyright for a song entitled Acidjazzed Evening.  Kernel sued Timothy Mosley and others for infringing Kernel’s copyright in Acidjazzed Evening with the song entitled Do It.  Kernel did not register its copyright in Acidjazzed Evening with the U.S. Copyright Office before filing suit against Mosley in the U.S. or before the district court made its final decision.  Kernel argued that Acidjazzed Evening was first published as a foreign work, so that registration in the U.S. was not required for Kernel to sue Mosley for copyright infringement.  Mosley argued that Acidjazzed Evening was first published on the Internet, was therefore simultaneously published throughout the world, and that registration in the U.S was required before Kernel could sue Mosley for copyright infringement in the U.S.

The district court agreed with Mosley and granted Mosley’s motion for summary judgment.  The Eleventh Circuit Court of Appeals ruled that there was a genuine issue of material fact regarding the publication of Acidjazzed Evening and that the district court erred in granting Mosley’s motion for summary judgment.  The Eleventh Circuit upheld the district court’s decision in Mosley’s favor on the alternative ground that Kernel did not present sufficient evidence to show that it complied with the statutory requirements regarding publication.

The Eleventh Circuit’s decision in this case focused on two issues:  (1) What is a United States work? and (2) What is publication?

United States Work.  In the U.S., copyright registration is not required for a work to receive copyright protection.  17 U.S.C. §408(a).  However, registration is a prerequisite for the copyright owner to bring an action “for infringement of the copyright in any United States work.” (Emphasis added.)  §411(a).  The Copyright Office must receive all of the information necessary to issue a registration certificate before the court issues its final judgment, otherwise, the action must be dismissed.  Foreign works can be registered with the Copyright Office, but registration of foreign works is not required.

The term “United States work” is defined in §101:

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.

Whether a work is a “United States work” under the definition in the statute turns on the timing and locations of first publication.

Publication.  When used in a legal context, the word “publication” is a term of art.  Determining whether and when a work was published requires careful analysis.

“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of 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.

Section 101.

Proof of distribution is required to prove publication, but proof of distribution, by itself, is not sufficient to prove publication.  The method, extent and purpose of distribution must also be examined.  The question of whether a work was published abroad adds a layer of complexity.

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.

(Opinion pdf page 20).

The plaintiff has the burden of proving that the first publication occurred abroad.  The plaintiff must initially prove that there was a publication that meets the requirements of the Copyright Act, then prove that the publication was the first publication and that the publication was outside of the geographic area for a “United States work” as defined by the Copyright Act. 

On summary judgment, Mosley argued that Acidjazzed Evening was first offered to the public by posting it to an Internet site in August 2002, that posting to the Internet means simultaneous worldwide publication and that registration with the Copyright Office was required before bringing suit for copyright infringement.  The district court agreed.  The Eleventh Circuit ruled that the district court erred. 

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.

(Opinion pdf page 24).

The district court did not differentiate among the various methods of Internet distribution and “erroneously assumed all ‘Internet publication’ results in simultaneous, worldwide distribution.”  (Opinion pdf page 26).  Mosley failed to meet his burden on summary judgment, as the evidence he presented did not show that there was no genuine dispute about whether Acidjazzed Evening was first published on a public website.

The Eleventh Circuit affirmed the district court’s ruling in Mosley’s favor on the alternative ground that Kernel did not meet its burden under the statute.  Just as the evidence on the record was insufficient to justify granting Mosley’s summary judgment motion, so too was the evidence insufficient to establish Kernel’s claim of foreign publication.

Without sufficiently probative evidence of Acidjazzed Evening being a foreign work exempt from registration, and without a certificate of registration, Kernel’s infringement suit was over before it began.

(Opinion pdf page 34).

Kernel argued that Acidjazzed Evening was first published in Australia in August 2002 on a computer disk magazine that was not online.  Kernel’s evidence did not address distribution, an essential element of publication.  Kernel’s witness asserted that the computer disk containing Acidjazzed Evening was published in Australia, but did not describe whether the disk was distributed, how widely the disk was distributed, the purpose of the distribution, and whether the distribution included the transfer of other rights, such as diffusion, reproduction, distribution and sale.  The Eleventh Circuit used the word "diffusion" in  its opinion.  "Diffusion" is not one of the exclusive rights of a copyright owner enumerated in §106.  The court did not define "diffusion" in the copyright context or indicate why it is relevant to this case.  "Diffusion" is a word that was used in Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., in which there was a dispute about whether a speech delivered by live broadcast to a world-wide audience was a general publication.

The Eleventh Circuit ruled that Kernel’s evidence of publication was unsupported and conclusory.  Further, because of the lack of evidence on the distribution issue, the Eleventh Circuit ruled that “no reasonable fact-finder could find that Acidjazzed Evening was first published on a physical computer disk in August 2002.”  Therefore, no reasonable fact-finder could determine the location of publication.  The record also did not support a finding that publication occurred under any other theory.

This case is Kernel Records Oy v. Timothy Mosley, No. 11-12769, Eleventh Circuit Court of Appeals.