Copyhype

It’s been a good couple of months for music producer Timbaland.

At the end of March, the 11th Circuit affirmed a grant of summary judgment in favor of Timbaland in a copyright infringement suit brought by Saregama. ¹Saregama India v. Mosley, No. 10-10626 (March 25, 2011). The Indian music production and distribution company alleged that Timbaland had sampled a portion of one of its catalog songs for rapper The Game’s “Put You on the Game.” For more about the court’s decision, which resolved on copyright ownership issues rather than infringement issues, check out Saregama’s Lack of Standing to Sue at Spicy IP.

Last Tuesday brought another court victory for the producer in a completely different case. On June 7, 2011, the Southern District Court of Florida affirmed its previous grant of summary judgment in favor of Timbaland in Kernel Records Oy v. Mosley.

Perhaps you recall the saga: Timbaland allegedly sampled portions of the Finnish chiptune “Acidjazzed Evening” to make the song “Do It” for Nelly Furtado’s 2006 album Loose. Kernel Records Oy, which had acquired the rights to Acidjazzed, sued both Furtado and Timbaland in 2009. ²Joe Bosso, Timbaland, Nelly Furtado sued for plagiarism, MusicRadar.com (June 17, 2009).

Timbaland’s remarks about the controversy, when the story first broke that he had sampled from Acidjazzed, attracted some outrage (and were reminiscent of Judith Griggs — editor of the infamous Cooks Source magazine — response to food blogger Monica Gaudio). Among other things, the producer said, “It makes me laugh. The part I don’t understand, the dude is trying to act like I went to his house and took it from his computer. I don’t know him from a can of paint. I’m 15 years deep. That’s how you attack a king? You attack moi?” ³Jayson Rodriguez, Timbaland still in shock over Jay-Z, Madonna, Elton Collaborations, MTV.com (Feb 9, 2007).

Like Saregama, the court never reached the issue of whether the use of the sample was infringement. Instead the court held that Kernel Records had failed to register its copyright before filing suit. But wait, you might say, I thought foreign copyright owners didn’t need to register their works in the US?

Normally, that’s true. But not if the work is first published online, says the Florida District Court.

Copyright Registration

The subject of copyright registration is one of great confusion for those who aren’t copyright lawyers, so I think a quick review might be helpful.

Under the Berne Convention, of which the US is a party member, copyright protection is automatic — it vests as soon as a work is in fixed form. Formalities like registration are not allowed under the Convention, though many countries do provide the option of registering a work for certain evidentiary and other purposes.

In the US, however, registration is also required for creators of “United States works” before filing a copyright infringement lawsuit. ⁴17 USC § 411(a); see Reed Elsevier v. Muchnick, 130 S.Ct. 1237 (2010). Owners of non-US works can sue without registering, though they still must comply with registration requirements if they wish to seek statutory damages in court. ⁵Football Ass’n Premier League v. YouTube, 633 F. Supp. 2d 159 (2009). (And, while optional for non-US works, registration still confers certain rebuttable presumptions in court.)

Kernel Records, assuming that the Finnish Acidjazzed was not a United States work, hadn’t registered the copyright before suing Timbaland. That would turn out to be a fatal assumption.

Does Online Publication Subject a Foreign Author to US Registration Requirement?

Whether online publication amounts to a work being simultaneously published in the US was an issue of first impression for the Florida court and apparently had only been addressed by one other district court. In Moberg v. 33T, Judge Hillman, of the District Court of Delaware, faced the same question and came to the opposite conclusion as Kernel Records. The Florida court explained:

Judge Hillman articulated three reasons for rejecting the proposition that publishing a work on the Internet “automatically, instantaneously, and simultaneously causes that work to be published everywhere in the world.”

First, he concluded that such a result would subject every copyright holder to the formalities of the copyright laws of every country that has such laws which “is contrary to the purpose of the Berne Convention.” Next, Judge Hillman reasoned that transforming the plaintiff’s photographs into “United States works” “simply by posting them on the internet would allow American citizens to infringe on foreign copyrighted works without fear of legal retribution, since the majority of foreign works are never registered in America.” This would be contrary to the Convention’s stated purpose of forming “a Union for the protection of the rights of authors in their literary and artistic works.” Finally, Judge Hillman determined that U.S. copyright laws, in accord with the Convention, currently protect foreign works in the United States “without requiring the artists to undertake any formalities in the United States.” He concluded that requiring artists who posted their work on a foreign country’s website to comply with U.S. copyright formalities would be contrary to that law.

Unfortunately for Kernel Records, the Florida court declined to adopt Hillman’s interpretation of “United States work.” The court said, “Judge Hillman’s 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.” Based on that language, the court came to its conclusion that online publication of a work is “simultaneous global publication.”

Florida District Court Says Yes

The Copyright Act defines a “United States work” — one that is subject to the §411 registration requirement — as a work that, if published, was 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 ⁶17 USC § 101.

The court arrived at its conclusion that Acidjazzed fell within this definition by looking at the language of (B). Acidjazzed was “published”, said the court, when it was shared on a German website. ⁷Kernel Records disputed this fact, saying the song was first published in an offline “disk magazine”, but the court concluded that they hadn’t provided any credible evidence to back up their dispute. Germany is a treaty party with the same term of copyright protection provided in the US. Finally, said the court, publication on a website amounts to “simultaneous global publication” — “There 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.”

Thus, since Kernel was required to register its copyright before filing a lawsuit and it hadn’t done so, Timbaland was entitled to summary judgment.

The Bottom Line

The proposition that US works include any work first published online anywhere in the world might seem at first a little surprising, but in reality (and as the court notes) the practical effect is small. As mentioned earlier, foreign authors already have an incentive to register a copyright in the US to pursue statutory damages or receive evidentiary benefits. At most, it adds one additional step before a foreign author can sue in a US court. ⁸Though the 11th Circuit, where this case occurred, has adopted the rule that a copyright is not considered “registered” until the Copyright Office actually processes the registration, as opposed to the rule that a copyright is considered registered as soon as the Copyright Office receives the registration materials. See Cosmetic Ideas v. IAC, 606 F.3d 612, 616 (9th Cir. 2010).

Kernel Records again faced bad news. Though it had eventually registered its copyright, the court ruled that it was too late in the game. (In fact, the whole opinion seems like one long string of bad news for Kernel.)

So, barring an appeal, Timbaland walks away victorious for the second time in 3 months. He is joined by Cypress Hill, who emerged unscathed from their own sampling lawsuit on June 1, also resolved on copyright ownership issues. ⁹Syl Johnson v. Cypress Hill, Nos. 08-3810, 09-2213, 10-1733 (7th Cir 2011). I’ll bet Jay-Z hopes to join both soon.