By Nick Kajca
Count me among those who assumed there was no meaningful distinction between posting content on the “internet” and posting on the “World Wide Web.” As it turns out, the Eleventh Circuit would beg to differ. At least when it comes to determining what constitutes a published “U.S. work,” for purposes of applying the copyright registration requirement – a statutory mandate for registration in order bring an infringement action under the Copyright Act unless a work is first “published” outside of the U.S. In Kernel Records Oy v. Mosley, No. 11-12769, slip op. at 32 (11th Cir. Sept. 14, 2012), a case arising in the context of global online music publishing and distribution, the Eleventh Circuit issued a detailed opinion holding that where and when first publication occurs can depend upon a critical distinction between merely distributing content over the “internet” and publishing content that is available globally on the World Wide Web.
Kernel Records is a Finish based record company which purchased the copyright to a computer generated song called Acidjazzed Evening. Notwithstanding the fact that Kernel did not register the copyright with the U.S. Copyright Office, Kernel brought action in federal court in Florida, claiming that the Nelly Furtado song Do It, featuring renowned music producer Timbaland (Mosley), infringed on Kernel’s copyright by sampling a portion of Acidjazzed Evening. According to Kernel, the original author of Acidjazzed Evening published the song in 2002 in Australia on an internet-based “disc magazine.” On that basis, Kernel argued that the song was first published outside of the U.S. and registration was unnecessary in order to proceed with its infringement action. The U.S. District Court for the Southern District of Florida disagreed, holding that because the song was available for download from an “internet” website, the work was simultaneously first “published” worldwide in every country having internet service – namely the U.S. Thus, the song should be treated as a “U.S. work” under § 411 of the Copyright Act subject to the registration requirement.
Enter the Eleventh Circuit, and its distinction between the “internet” and the “World Wide Web.” According to the court, it is an error in logic to assume that all internet publication must occur on the Web and simultaneously result in worldwide distribution. Rather, internet publication can be distributed through password restricted websites, private e-mail, or peer-to-peer networks, and in each of these methods of internet distribution it would not be accurate to presume simultaneous worldwide availability. While perhaps this distinction is a bit nitpicky, the court’s logic was that under the Copyright Act, “publication” speaks of strict temporal and geographic limitations for purposes of determining a “U.S. work”; thus, the same limitations should be kept in mind when determining the various ways of publishing content over the internet. Accordingly, the court held that the defendants failed to meet their factual burden of establishing the exact nature of online publication of Acidjazzed Evening, and whether it could truly be said to have resulted in simultaneous distribution in Australia and the U.S. However, the court affirmed summary judgment, holding that Kernel also failed to meet its burden of introducing evidence of how the song was first distributed to the public, thus failing to prove that registration was indeed unnecessary.
While the issue remains of what constitutes a “U.S. work” for first publication purposes in the context of internet distribution first done outside of the U.S., the Eleventh Circuit’s opinion provides helpful detail into what constitutes “publication” under the Copyright Act. Additionally, parties on both sides of an infringement suit need to keep in mind their respective factual burdens of proof, as whether or not registration is necessary may depend on being able to demonstrate how and where a song was first posted on the Internet, as this case demonstrates.