Plaintiff Kernel lost in the U.S. District Court when Defendant Mosley’s (for Nelly Furtado’s “Do It” and producer Timbaland) motion for summary judgment was granted, and then won when the 11th Circuit Court of Appeals reversed the summary judgment order, but finally lost again when the 11th Circuit held that Plaintiff Kernel failed to register his copyright in the Copyright Office. Kernel Records Oy, v. Timothy Mosley, f.k.a. Timbaland, UMG Recordings, Inc., Interscope-Geffen-A&M, Mosley Music Group, LLC, Universal Music Distribution, Case No. 11-12769 (11th Circuit, September 14, 2012) (available here). Kernel failed to produce substantially probative evidence that it complied with the statutory prerequisites of copyright registration prior to filing the copyright action in federal court. He failed to prove that the work was a foreign originated work, not subject to registration.
In the summer of 2002, Glenn Gallefoss created a Sound Interface Device (SID) file called “Acidjazzed Evening.” “Acidjazzed” was based on a work by Janne Suni. Suni’s MOD file was playable on an Amiga computer. Gallefoss’ SID file was playable on a Commodore 64 computer. “Acidjazzed” then appeared in the Australian disk magazine Vandalism News Issue #39. In December 2002, a Swedish website called High Voltage SID Collection uploaded “Acidjazzed.” On June 7, 2006, the allegedly infringing song “Do It” was released by Nelly Furtado, as produced by Mosley, also known as Timbaland. Gallefoss, the author of “Acidjazzed” transferred his rights to plaintiff Kernel. Kernel earlier litigated the copyright claim in Finland and lost.
Kernel’s amended complaint sued Mosley, Nelly Furtado, EMI Music Publishing, Warner Chappell Music, among others. Kernel claimed “Acidjazed” was “first published outside the United States” and that “[c]opyright registration in the United States [was] not required.” Mosley contended that Kernel lacked the statutorily required copyright registration for Acidjazzed. Mosley contended that the “Acidjazzed” download from the Swedish “Internet site” published his work in every country in the world with Internet service and therefore was a “United States work” as defined by the Copyright Act. 17 U.S.C. § 101.
Mosley argued that “The burden [wa]s on the Plaintiff to plead and prove its work is of foreign … origin and that, therefore, it [wa]s exempt from registration requirements.”
Gallefoss’s deposition testimony was “clear enough” to affirmatively establish “Internet publication.” Relying on the sham affidavit doctrine, the District Court disregarded Gallefoss’s declaration, stating the “deposition testimony was clear” and a declaration cannot be used to create a factual dispute when “a party has given clear answers to unambiguous questions.” See the sham affidavit doctrine in Van T. Junkins & Assocs., Inc. v. U.S. Indus., Inc., 736 F.2d 656, 657 (11th Cir. 1984)(sham affidavit rule should be applied sparingly) and Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1237 (11th Cir. 2010).
The District Court determined that the unambiguous statutory language of the Copyright Act dictates that a work simultaneously published in every country of the world should be treated as a “United States work,” and subject to the Copyright Act’s registration requirement.
“Thus, although ‘registration is not a condition of copyright protection,’ 17 U.S.C. § 408(a), registration (or a refusal of registration) of a United States work ‘is a prerequisite for bringing an action for copyright infringement,’ BUC Int’s Corp. v. Int’s Yacht Council Ltd., 489 F.3d 1129, 1142 (11th Cir. 2007). The plaintiff bears the burden of proving compliance with statutory formalities. Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1233 (11th Cir. 2010).” 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.” Proof of distribution or an offer to distribute, alone, is insufficient to prove publication. Central to the determination of publication is the method, extent, and purpose of distribution.
Mosley failed to meet his burden as the summary judgment movant to show that there was no genuine dispute as to whether “Acidjazzed” was published on a public website. The sham affidavit doctrine was not properly applied by the District Court. “Mosley’s failure to meet his burden precludes the presumption of simultaneous, worldwide publication. Mosley failed to show whether ‘Acidjazzed Evening’ is a United States work.”
Kernel, despite being a determined plaintiff, nevertheless failed to apply for registration prior to making his case in the District Court. He had to prove that “Acidjazzed” was not a “United States work” exempt from copyright registration. Kernel bears the burden of proving compliance with statutory formalities, including the registration prerequisite, or the statutory exemption that the work was not a “United States work.” Without sufficiently probative evidence that “Acidjazzed” was a foreign work exempt from registration, and without a certificate of registration, Kernel’s infringement suit was over before it began. Although Kernel’s defeat in the District Court was rectified by the 11th Circuit Court of Appeals, the appellate Court, reviewing the evidence found a defect in Kernel’s copyright claim that “Acidjazzed” was a foreign work not subject to the pre-suit registration requirement.