United States: Owner Of Foreign Copyrights Must Plead Registration Exemption

Last Updated: March 14 2018
Article by David A. Kluft

What exactly is the definition of a "United States work" for copyright registration purposes? And why is a certain Albanian television company unlikely to forget that definition any time soon?

As we've previously discussed, plaintiffs must register their work with the Copyright Office before filing suit in a U.S. court. Section 411(a) of the Copyright Act, 17 U.S.C. § 411(a), provides that:

No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.

There is currently a circuit split over Section 411(a)'s definition of "registration," which you can read about here. But that's not the only part of the statute causing controversy. Take for example, the definition of "United States work," as discussed in the recent case of DigitAlb SH.A v. Setplex, LLC.

The (Alleged) Albanian Television Pirate

DigitAlb SH.A is an Albanian corporation that distributes Albanian television programming, including to U.S. customers through a subscription-based Internet Protocol Television platform. In September 2017, DigitAlb brought suit in the Southern District of New York against Bronx-based Setplex, LLC. The complaint contained copyright counts alleging that Setplex was pirating DigitAlb's programming for a competing online platform.

Consistent with the United States' obligations under the Berne Convention, Section 411(a)'s registration requirement applies only to "United States works." In other words, if you own a non-United States work, you can sue without registering. Because of this, DigitAlb figured that it had no obligation with respect to Section 411(a). It alleged in its complaint that it was an Albanian company and that its programs originated in Albania. But DigitAlb didn't bother expressly pleading that it was exempt from the Section 411(a) registration requirement, and it didn't include any allegations about where and when the programs were published.

Setplex moved to dismiss, claiming that DigitAlb had failed to state a claim because it did not affirmatively plead that the works in question were exempt from the registration requirement of 411(a). The judge agreed that this omission was a fatal flaw and allowed the motion to dismiss. Moreover, because DigitAlb already had been warned about this deficiency and didn't correct it, the Court barred DigitAlb from amending its complaint.

What is a "United States work"?

DigitAlb lost its copyright case because it failed expressly to plead a negative, i.e., that the works were not "United States works" subject to Section 411(a). Such detailed pleading is required in part because the question of whether something is a "United States work" cannot be answered simply by reference to the national origin of the party or even of the work. Section 101 of the Copyright Act provides that a work is a "United States work" if:

  1. The work is first published in the United States;
  2. The work is published simultaneously in the United States and a foreign nation; or
  3. In the case of an unpublished work, the authors reside in the United States.

It's the issue of publication that makes things complicated. The publication date is not the same as the creation date of a work, nor is it necessarily the date a work is first displayed. Rather, publication occurs when you first distribute copies to the public. Thus, a work can be created in Albania and first published in the U.S., or simultaneously published in both countries. Therefore, DigitAlb's failure to plead "where or when [its] programming was first published" left the Court unable to determine whether the works, which indisputably originated in Albania, were nevertheless also alleged to be "United States works."

The lesson here is simple: if you are suing for copyright infringement of a non-United States work, you must expressly plead that you are exempt from Section 411(a). And if you are defending a lawsuit against a foreign copyright owner, pay special attention to whether the plaintiff has sufficiently alleged the exemption, including the "where and when" of first publication.

Is Internet Publication the Same as "Simultaneous" Publication?

There is one more point worth making about Section 411(a). Because DigitAlb failed to include the necessary pleadings in its complaint, the Court never reached what may be a far more interesting issue: Is internet publication the same as "simultaneous publication?" A great deal of copyrighted works these days are first made available online, where they are often accessible to the whole world at once. Does this mean that any work first published online from a foreign country is published "simultaneously in the United States," and is therefore a "United States work" that must be registered before filing suit?

As far as we can tell, this question has been considered only twice in published opinions. A 2009 opinion by the District of Delaware, in Moberg v. 33T LLC, concerned photographs created outside of the United States and first uploaded to a German website. The Court held that, despite the simultaneous availability of the photographs in multiple countries, they were not "United States works," because requiring U.S. registration in such circumstances would be contrary to the Berne Convention.

However, a couple years later, in Kernal Records v. Mosley, the Southern District of Florida came to the opposite conclusion with respect to a sound recording uploaded to the internet from Australia. The Court distinguished Moberg on the grounds that the Moberg photographs were only being displayed and not intended for downloading (and thus not truly "published" in the statutory sense). By contrast, the sound recording in Kernel Records was intended to be downloaded and distributed (and therefore "published" in the statutory sense). The Eleventh Circuit later reversed because of a lack of evidence that the sound recording was in fact publicly available in the United States and not, for example, uploaded to a platform with restricted access. However, nothing in the Eleventh Circuit's opinion undermined the basic notion that internet publication can be "simultaneous publication" for purposes of Section 411(a).

The takeaway: in addition to the "registration" circuit split (now pending before the Supreme Court), we appear to be quietly but "simultaneously" developing another Section 411 rift over the definition of "United States works." If you are in the District of Delaware or the Eleventh Circuit, you have a little case law to show you the way. The rest of us are on our own for now. Circle back for updates.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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