Attention: open in a new window. PrintE-mail

New News


by Barry Werbin

Two developments of note:

1. American Institute of Physics and John Wiley & Sons Inc. v. Schwegman Lundberg & Woessner PA (D. Minn.). This is one of the cases filed earlier this year where publishers sued patent law firms for copyright infringement based on copies the firms made of scholarly journal articles filed with the Patent Office with patent applications in the context of legally required prior art disclosures. In January 2012, the Patent Office issued a memo  stating its belief that such copying and submissions should be deemed fair use. USPTO also intervened in these cases. Now the publishers have amended their complaint in the Schwegman action to withdraw their infringement claims with respect to materials submitted to the Patent Office for prior art statutory purposes (apparently the publishers still allege infringement with respect to other copying).

2. A second very interesting and detailed case  addressing what constitutes a published “US work” in the context of global online publishing and distribution, is Kernel Records Oy v. Timothy Z. Mosley p/k/a Timbaland, et al. (11th Cir. Sept. 14, 2012). The plaintiff, a Finnish record company, had purchased rights to a musical computer arrangement called Acidjazzed Evening, which was first published by the original author allegedly in Australia in August 2002 as a “disk magazine” called Vandalism News, and later by a Swedish website, which had uploaded it. The defendants (including UMG, EMI and other music publishers) created, distributed and marketed an allegedly infringing (sampled) song called Do It. Kernel failed to apply for US copyright registration, but alleged that because the work was first published outside the US, no US registration was required as a prerequisite to sue. Mosley argued, however, that by making AcidjazzedEvening available for download from an “Internet site,” the work was simultaneously “published” in every country of the world having Internet service and, thus, the work was subject to the US registration requirement. The Florida District Court agreed and dismissed the case on a summary judgment motion based on its view that the Copyright Act dictates that a work simultaneously published in every country of the world should be treated as a “United States work” under Section 411 of the Act, and therefore subject to the Copyright Act’s registration requirement.

The 11th Circuit affirmed on alternative grounds under Section 411 of the Act but rejected the District Court’s analysis and basis for the summary judgment grant, stating: “The district court…confounded ‘the Internet’ and ‘online’ with ‘World Wide Web’ and ‘website.’ Because of the strict temporal and geographic requirements contained in the statutory definition of ‘United States work,’ conflating these terms had a profound impact on the district court’s evidentiary analysis. By confounding ‘Internet’ with ‘website,’ the district court erroneously assumed that all ‘Internet publication’ must occur on the ‘World Wide Web’ or a ‘website.’ The district court then erroneously assumed all ‘Internet publication’ results in simultaneous, worldwide distribution. [A] proper separation of the terms yields a very different analysis.” The Court ultimately held that Mosley failed to meet his factual burden in establishing the exact nature of the online posting of the song and its intended scope of distribution to support summary judgment in defendants’ favor. The Court noted that “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” and in the context of whether a work was first published abroad, also relevant is the “timing and geographic extent of the first publication.”

But the Court ruled alternately that, based on discovery in the case, summary judgment was still warranted because “[t]he record reveals a lack of sufficiently probative evidence to determine that Acidjazzed Evening is a foreign work” because there was no evidence that the Australian “disk magazine” site was ever made “publicly accessible.” The Court concluded that there was only “simple speculation that Acidjazzed Evening “was published on the Internet [in Vandalism News] in August 2002. A reasonable fact-finder could not find that a simultaneous, worldwide publication occurred in August 2002. Because the record lacks sufficiently probative evidence of simultaneous worldwide publication, we need not determine what effect simultaneous worldwide publication would have under 17 U.S.C. §101’s definition of a United States work.” Because Kernel Records bore the burden of proving compliance with statutory formalities, the Circuit affirmed summary judgment on this alternative ground.

So the core issue remains of what constitutes a “US work” for first publication purposes in the context of online/Web/Internet uploading first done outside the US.