Kernel Records Oy v. Mosley

Decision Date14 September 2012
Docket NumberNo. 11–12769.,11–12769.
Citation694 F.3d 1294
PartiesKERNEL RECORDS OY, Plaintiff–Appellant, v. Timothy MOSLEY, f.k.a. Timbaland, UMG Recordings, Inc., Interscope–Geffen–A&M, d.b.a. Interscope, d.b.a. Geffen, Mosley Music Group, LLC, Universal Music Distribution, et al., Defendants–Appellees.
CourtU.S. Court of Appeals — Eleventh Circuit

OPINION TEXT STARTS HERE

Richard Busch, Thomas J. Motzny, King & Ballow, Nashville, TN, Bruce A. Christensen, Ethan J. Wall, Richman Greer, PA, Miami, FL, for PlaintiffAppellant.

Jonathan L. Gaines, Karen L. Stetson, GrayRobinson, PA, Miami, FL, Jeffrey D. Goldman, Jeffer, Mangels, Butler & Mitchell LLP, Los Angeles, FL, William L. Charron, Pryor Cashman, LLP, New York, NY, for DefendantsAppellees.

Appeal from the United States District Court for the Southern District of Florida.

Before MARCUS and BLACK, Circuit Judges, and HODGES,* District Judge.

BLACK, Circuit Judge:

Appellant Kernel Records Oy (Kernel) appeals the district court's 1 order granting Defendants' motion for summary judgment, and denying as moot Kernel's motion for summary judgment. We conclude the district court erred by granting Appellee Timothy Mosley's motion for summary judgment. However, because Kernel failed to produce substantially probative evidence that it complied with statutory prerequisites prior to filing this action, we affirm.

I. FACTS

In the summer of 2002, Glenn Rune Gallefoss created a Sound Interface Device (SID) file called Acidjazzed Evening.2 Gallefoss based his musical work on a MOD file that had been previously created by Janne Suni. Suni's MOD file is playable on an Amiga computer or by using a newer computer running software that “emulates” the Amiga and its sounds. Gallefoss's SID file is playable on a Commodore 64 computer or with “emulator” software. The technical details of both the SID and MOD files are irrelevant to this opinion; all that is relevant is that during the summer of 2002, Suni's existing MOD file was modified by Gallefoss into a SID file called Acidjazzed Evening.

On August 10, 2002, with Gallefoss's permission, Acidjazzed Evening appeared in the Australian disk magazine Vandalism News Issue # 39. The parties disagree as to how this “disk magazine” was published. Kernel contends the disk magazine was published in August 2002 on a physical computer disk in Australia. Defendants contend the disk magazine was published in August 2002 “on the Internet.” However published in August 2002, the parties agree that in December 2002, a Swedish website called High Voltage SID Collection uploaded 3Acidjazzed Evening to its own website, likely after obtaining a copy from Vandalism News Issue # 39.

On June 7, 2006, the allegedly infringing song Do It was released. On August 16, 2007, Gallefoss transferred his rights in Acidjazzed Evening to Kernel. Kernel litigated a claim of copyright infringement in Finland against parties associated with the release of Do It. Kernel lost. Kernel then brought its copyright infringement claim to the United States.

II. PROCEDURAL HISTORY

Kernel filed this action in the United States District Court for the Southern District of Florida. Kernel's amended complaint alleged that defendants Timothy Z. Mosley, Mosley Music, LLC (Mosley Music), Universal Music Distribution Corp. (Universal), Nelly Furtado, UMG Recordings, Inc. (UMG), Interscope–Geffen–A&M (Interscope), EMI Music Publishing (EMI Publishing), EMI April Music, Inc. (EMI April), Virginia Beach Music (Virginia), WB Music Corp. (WB), and Warner Chappell Music, Inc. (Warner) (collectively, Defendants) 4 infringed its copyright of Acidjazzed Evening. In the amended complaint, Kernel claimed Acidjazzed Evening was “first published outside the United States” and that [c]opyright registration in the United States [was] not required as a prerequisite to bringing an infringement action as the sound recording and musical arrangement at issue is not a ‘United States Work,’ as defined in 17 U.S.C. § 101.” Am. Compl. at 1–2.

Defendants individually answered the complaint and pleaded affirmative defenses. Each defendant raised as an affirmative defense Kernel's failure to comply with the required statutory formalities prior to filing suit, including registration of the allegedly protected work with the Copyright Office.

On May 28, 2010, Mosley and Mosley Music (collectively Mosley) moved for summary judgment. Contemporaneously with the motion for summary judgment, Mosley filed a statement of material facts, which alleged the following was undisputed:

2. Gallefoss's work was first published on the Internet. “The first publication of Gallefoss's version of ‘Acidjazzed Evening,’ in any form, was in Australia as part of the disk magazine Vandalism News, issue 39, in August, 2002.” (Amended Complaint, ¶ 25).

3. Gallefoss chose the Internet as the means to first publish his work (as is customary in the “demoscene” sub-culture of which he is a member). (Gallefoss Depo., 2/11/10, 20–21). Exhibit A.

4. The work at issue was not only “displayed” but was made available on more than one website for download, copying and for preparing derivative works by others. (Gallefoss Depo. 2/11/10, 73–80). Exhibit A.

In his motion, Mosley contended that Kernel lacked the statutorily required copyright registration for Acidjazzed Evening, and the copyright infringement action had to be dismissed. Mosley claimed it was undisputed that Acidjazzed Evening “was first published on the Internet” as part of the disk magazine Vandalism News Issue # 39. Mosley contended that by making Acidjazzed Evening available to download from an “Internet site,” Gallefoss simultaneously published his work in every country in the world with Internet service. Mosley claimed such worldwide and simultaneous publication made Acidjazzed Evening a United States work subject to registration, and that Kernel's failure to register doomed its infringement claim.5

Mosley also attempted to preempt Kernel's response. Mosley predicted Kernel would contend that because the Internet site was “based” in Australia, Acidjazzed Evening was published in Australia, and registration therefore was not required. Mosley called this argument “unavailing, and at odds with the plain language of ... the Copyright Act.” Mosley, however, misconceived Kernel's argument.

On May 28, 2010, Kernel also filed its motion for summary judgment and statement of material facts. In its motion, Kernel simply stated it need not have registered its work because Acidjazzed Evening was first published outside the United States. Kernel did not contend, as Mosley had anticipated, that Acidjazzed Evening was first published on the Internet in Australia. Instead, Kernel claimed as an undisputed fact that Acidjazzed Evening was published in Australia on a physical computer disk, and uploaded to the Internet months later. Kernel's statement of material facts stated that:

19. Gallefoss authorized publication of his arrangement and sound recording of “Acidjazzed Evening” in a magazine published on a computer disk in Australia called Vandalism News, issue [3]9, in August 2002. Gallefoss Decl. ¶ 23.

20. In December 2002, Gallefoss's arrangement and sound recording of “Acidjazzed Evening” was included in the High Voltage SID Collection and uploaded to the internet. Gallefoss Decl. ¶ 25.

The Gallefoss Declaration, dated May 28, 2010, was filed simultaneously with the statement of material facts.

Thus, on May 28, 2010, Mosley contended it was undisputed that Acidjazzed Evening was first published by making the SID file available for download from an “Internet site.” On the same day, May 28, 2010, Kernel contended it was undisputed that Acidjazzed Evening was first published on a physical computer disk, and not uploaded to the Internet until months later.

Kernel subsequently responded in opposition to Mosley's motion for summary judgment. Kernel objected to Mosley's statement of undisputed facts, contending [t]he factual citation made by defendants makes no reference to first publication on the internet.” In its response, Kernel argued that Acidjazzed Evening was first published “on a disk magazine that was not online,” and stated that Mosley's assertionto the contrary was [w]ithout any foundation.” Pl.'s Resp. at 3. Kernel also made the alternative argument that [e]ven if the first publication of [ Acidjazzed Evening ] were online, it [was] not a U.S. Work subject to registration requirements.” Pl.'s Resp. at 5.

Defendants filed a collective response to Kernel's motion for summary judgment. Defendants reiterated Mosley's argument that the facts were undisputed that publication occurred on the Internet and stated that Kernel's “failure to address its non-compliance with [the registration] statutory condition precedent mandate[d] the denial of [Kernel]'s summary judgment motion (and the granting of Defendants' motions).” Defs.' Resp. at 4.

Mosley filed a reply in support of his motion for summary judgment. Mosley argued that:

[T]here ha[d] been no showing made of any mode or manner of publication other than via the Internet, nothing to support Plaintiff's effort to come within an exception to the Copyright Act's registration requirement, and nothing to show Plaintiff's compliance with the condition precedent to suit ... 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 .... Not only has Plaintiff not met its burden, Plaintiff's sudden efforts to contradict that the work was first published via the Internet d[id] not alter the undisputed record of an online publication ....

Mosley's Reply at 1–2. Mosley then argued that Kernel failed to produce a physical copy of the claimed computer disk and that it had only produced a webpage printout. Mosley also argued that Gallefoss “agreed that the publication was via the online magazine” in his deposition. Id. at 3. Finally, Mosley...

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