Prof. Jane C. Ginsburg, Columbia University School of Law*
August 29, 2011

My previous column, “Internet Publication and U.S. Copyright Imperialism,” criticized a recent decision of a federal district court in Florida in Kernal Records OY v. Moseley, 2011 Dist. LEXIS 60666 (S.D. Fla. June 7, 2011), for ruling that a Norwegian composer’s work “published” on an Australian website was a “United States work” that must be registered with the U.S. Copyright Office as a prerequisite to a suit alleging infringement of the work in the United States.  Were the musical composition not a U.S. work, its author or rightholder could initiate the lawsuit in the United States without first registering the work.  (See 17 USC Sec. 411(a).)  The Kernal court’s interpretation of the statutory definition of “United States work” bestowed U.S. nationality – for purposes of imposing U.S. formalities – on any work first “published” over the Internet, at least when the author thus sought to make her work available to a world-wide audience.  As the court unflinchingly observed, the Norwegian composer “elected to publish [his work] on the Internet and the legal consequences of that decision must apply.”

These “consequences,” however, attach only if making a work available over the Internet in fact simultaneously “first publishes” the work in the United States.  The definition that the Kernal court construed provides:

For purposes of Section 411, a work is a “United States work” only if –
(1) in the case of a published work, the work is first published –

(C) simultaneously in the United States and a foreign nation that is not a treaty party….

Did the Norwegian’s posting of his work to an Australian website simultaneously “first publish” it in the United States and in some foreign nation that is not a member of any copyright treaty to which the United States is also a party?  The posting made it available to U.S. users and to users all over the world, including in non-treaty-party countries (while there are at this point few such countries, it may suffice that there be one such country with a computer-equipped population, e.g., Iran).  Nonetheless, if making the work available does not “first publish” it, then the work will not be a “United States work” for purposes of the registration formality unless the nationality, domicile, or habitual residence of all of its authors is the United States (17 USC Sec. 101).

This column will first address the meaning of “first publish” under the U.S. Copyright Act, and then will consider the term under the leading multilateral copyright treaty, the Berne Convention for the Protection of Literary and Artistic Works.  A later column will consider the follow-on problem: If first disclosure of a work over the Internet does not “first publish” it, and the country of origin therefore is determined by reference to the nationality or residence of the author, what is the work’s nationality if, as is increasingly true, there are many authors, all from different countries?

The Kernal court did not in fact analyze whether the first public disclosure and making available of the composition over the Australian website “first published” the musical composition within the meaning of the U.S. Copyright Act.  The court appears to have adopted the plaintiff’s concession that the work was “published” and therefore did not inquire whether the plaintiff’s colloquial understanding of that term corresponded to any definition in the Copyright Act.  In fact, the Act does not define the term “first published.”  It does, however, define “publication.”  Under that definition, “a public performance or display of the work does not itself constitute publication.”  Thus, making the work available as a display of fixed images, or as a stream of an audio or audiovisual work, would not “publish” it.  Rather, publication is the “distribution of copies or phonorecords of a work to the public….”  Is making a work available so that members of the public may download it – that is, create copies in their computer hard drives – a distribution of copies within the meaning of the statute?

The caselaw addressing the existence, in the domestic context, of a making-available right, has divided over the question whether simply offering works for download is a “distribution of copies,” or whether it is necessary also to prove that the offered copies were in fact received.1.   The definition of “publication” also extends to “offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display….”  Making a work available on a website so that users may further disseminate the work would appear to fit the definition.2.   But were an offering to constitute a “publication” only if the offerees were permitted to further distribute, publicly perform, or publicly display the work, then the work’s publication status would turn on the extent of downstream access the author permitted.  In any event, at least as a matter of internal U.S. copyright law, the better view of the meaning of “distribution of copies” characterizes making works available by offering them for download as an instance of the distribution right.3.

But if making a work available for download from within the United States is a “distribution of copies,” would it not follow that making the work available to U.S. Internet users from outside the United States is also a “distribution of copies” and therefore also a “publication?”  Were the issue one of infringement of the distribution right, the extraterritorial origin of the distribution would not matter: Because the allegedly infringing works are offered to (or are actually sent to) U.S. users for downloading, the act giving rise to the infringement culminates in the United States and therefore would come within the scope of the U.S. copyright law.4.   If “publication” occurs through “distribution,” then it seems, at least at first blush, inconsistent to argue that offering unauthorized copies to U.S. users from offshore infringes the distribution right in the United States, but that offering authorized copies to U.S. users from offshore does not “publish” the work in the United States.  To escape this quandary, it may be necessary to distinguish the concepts of “distribution” and “publication” in internal U.S. law from the meaning of “first published” in the transborder context.

In the absence of a domestic definition of “first published,” one might consider the legislative intent behind the definition of “United States work.”  Congress provided that the characterization, and its concomitant obligation to register the work before initiating an infringement action, would apply “only if”; the drafting suggests an intent to restrict, not enlarge, the scope of the category.5.   A narrow reading is consistent with the context of the definition’s original enactment, as part of the pre-Internet 1988 Berne Convention Implementation Act, which implemented the United States’ obligation to exempt foreign works from mandatory copyright formalities.  An interpretation of “first published” that instead subjects to U.S. formalities all works first posted on the Internet, even if they lack other points of attachment with the United States, such as the author’s nationality or residence, or the country from which the work was first made available, seems particularly perverse.6.

In the absence of a domestic definition of “first published,” it may also be useful to consult the Berne Convention.  While the treaty’s provisions do not apply directly in U.S. law (17 USC Sec. 104(c)), U.S. courts traditionally endeavor to interpret domestic law consistently with our international obligations.  Article 5(4) of Berne defines a work’s “country of origin” by reference to the country in which it was “first published.”  Under Article 5(3), a treaty-covered work is governed by domestic law in its country of origin; the country of origin need not accord minimum Berne protections (such as exemption from formalities) to its own works.  Article 3(3) defines “published works” as follows:

works published with the consent of their authors, whatever may be the means of manufacture of the copies, provided that the availability of such copies has been such as to satisfy the reasonable requirements of the public, having regard to the nature of the work.  The performance of a dramatic, dramatico-musical, cinematographic or musical work, the public recitation of a literary work, the communication by wire or the broadcasting of literary or artistic works, the exhibition of a work of art and the construction of a work of architecture shall not constitute publication.

U.S. law and the Berne Convention concur in excluding works that are publicly performed but not made available in copies.  The difference between Berne and the United States may lie in the nature of the copies whose availability renders the work “published.”  The copies referred to in Article 3(3) are physical copies, not digital copies.  One may infer this from the words “manufacture of copies” or, in the authoritative French version, “fabrication d’exemplaires,” and the term “availability of such copies,” which would seem to refer back to the material copies that are made available by the author or authorized intermediary distributor.  In other words, Berne Article 3(3) appears to assume that, for purposes of ascertaining whether a work has been “published,” the material copies pre-exist the end-user’s acquisition of them.  (Copies to which the end-user gives material form after receiving the communication of a digital file would probably be considered part of the process of “communication to the public” and therefore not “published.”7. )

Interpreting “first published” in the definition of “United States work” consistently with the Berne Convention’s category of “published works” thus would avoid the anomaly to which Kernal led: Any work first made available over the Internet to an international audience becomes a U.S. work subject to U.S. formalities.  But other problems remain.  If the work is not “published,” it can still be protected in the United States; see 17 USC Sec. 104(a).  On an international scale, however, the potential difficulty of identifying a multiple-authored unpublished work’s “country of origin” poses new challenges, which we will explore in our next column.