Kernel Records Oy v. Mosley et al

Filing 241

MEMORANDUM OPINION AND FINAL ORDER Affirming 227 March 31, 2011 Order on Pending Motions and Granting 137 Defendants Timothy Z. Mosley p/k/a Timbaland and Mosley Music, LLC's Motion for Summary Judgment; Denying 230 Plaintiff Kernal Record s Oy's Motion for Reconsideration or, in the Alternative, to Hold Entry of Final Order Briefly in Abeyance; and Denying 235 Plaintiff's Motion for Leave to Amend Complaint. This case is now closed and all pending motions are denied as moot. Signed by Magistrate Judge Edwin G. Torres on 6/7/2011. (aed) (aed)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 09-21597-CIV-TORRES
CONSENT CASE

KERNAL RECORDS OY,

Plaintiff,
vs.
TIMOTHY Z. MOSLEY p/k/a TIMBALAND;
et al.,
Defendants.
___________________________________________/
MEMORANDUM OPINION AND FINAL ORDER ON
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
AND PLAINTIFF’S MOTION TO AMEND
On March 31, 2011, we issued a non-final Order granting Defendants Timothy
Z. Mosley p/k/a Timbaland and Mosley Music, LLC’s (“Defendants”) Motion for
Summary Judgment [D.E. 137]. [D.E. 227]. The underpinnings of the ruling were our
conclusions that Plaintiff’s SID file version of “Acid Jazzed Evening” (“AJE”) had first
been published on the Internet and that that act constituted simultaneous publication
in the United States and other nations around the world having Internet service under
the Copyright Act of 1976, 17 U.S.C. § 501, et seq. We concluded that Plaintiff’s work
met the definition of a “United States work” under 17 U.S.C. § 101(1)(C) and that,
pursuant to 17 U.S.C. § 411(a), Plaintiff was required to register AJE prior to suing for
copyright infringement. As there was no dispute that Plaintiff had failed to obtain a

copyright registration for AJE or for any claimed “sound recording” or “composition,”
we found that Plaintiff had not satisfied a statutory condition precedent to initiating
this infringement lawsuit. Accordingly, since Plaintiff could not initiate or maintain
this action, we granted summary judgment for Defendants.
Plaintiff immediately moved for reconsideration of our ruling or, alternatively,
an abeyance in order to register AJE and amend the complaint to show compliance
with § 411(a). [D.E. 230]. Before we could rule on this request, Plaintiff obtained
registration for AJE and moved for leave to amend the complaint.

[D.E. 235].

Defendants oppose the amendment.
Following another thorough review of the record and the legal arguments and
analyses presented by the parties, we now affirm our March 31, 2011 ruling. We deny
Plaintiff’s motion to reconsider to the extent we are asked to reverse our prior ruling.
We also deny Plaintiff’s motion to amend the complaint. Accordingly, we affirm our
grant of summary judgment for Defendants. This determination is final and closes the
case.
I.

BACKGROUND

The action arises from a sound recording of a composition and musical
arrangement of “Acidjazzed Evening” created by Glenn Rune Gallefoss (“Gallefoss”) in
2002. Gallefoss, a citizen and resident of Norway, created AJE on a Commodore 64
computer in the form of a SID file.1 Gallefoss based AJE on an earlier musical

The Commodore 64 used a custom-designed musical synthesizer chip,
called the Sound Interface Device (“SID”), to play music. A SID file is a computer file
playable on a Commodore 64 or any computer through the use of a software player that
“emulates” the Commodore 64 SID sound chip. A SID file contains all the information
1

arrangement created in 2000 on a different kind of computer by Janne Suni (“Suni”)
of Finland.
Gallefoss first authorized publication of AJE in an Australian disk magazine
called Vandalism News, issue 39, in August 2002. The work was not only displayed
but was made available for downloading and copying, with Gallefoss’ knowledge and
approval. In December 2002, AJE was posted on the High Voltage SID Collection
website.
On August 16, 2007, Gallefoss transferred “all transferrable rights” to the sound
recording and arrangement of AJE to Plaintiff Kernal Records Oy (“Plaintiff”).
Plaintiff alleges that the sound recording and musical arrangement were copied into
a new sound recording and composition called “Do It.” Defendants are the performers,
writers, producers, publishers, record labels, and others associated with “Do It,” who
wrote, created, copied, published, licensed, distributed, manufactured and/or sold “Do
It,” or authorized others to do so in various media. Plaintiff is suing for copyright
infringement of sound recording, infringement of musical work, and accounting. [D.E.
63; D.E. 108; D.E. 195].
II.

ANALYSIS

Defendants moved for summary judgment on Plaintiff’s infringement claims on
the ground that Plaintiff had not obtained copyright registration for its SID file version
of AJE or for any claimed “sound recording” or “composition” and therefore had failed

necessary to play a particular musical composition.

to satisfy the statutory preconditions of 17 U.S.C. § 411(a) for filing an infringement
suit.2 Plaintiff claimed AJE is exempt from § 411(a) requirements.
A.

Legal Framework

Section 411(a) of the Copyright Act of 1976 provides in relevant part that no suit
for copyright infringement of a “United States work” may be instituted until the work
has been registered with the United States Copyright Office. 17 U.S.C. § 411(a) (“no
civil action for infringement of the copyright in any United States work shall be
instituted until preregistration or registration of the copyright claim has been made
in accordance with this title.”). For purposes of § 411, a work is a “United States work”
only if,
(1) in the case of a published work, the work is first published –
(A) in the United States;
(B) simultaneously in the United States and another treaty party3
or parties, whose law grants a term of copyright protection that is
the same as or longer than the term provided in the United States;
(C) simultaneously in the United States and a foreign nation that
is not a treaty party; or
(D) in a foreign nation that is not a treaty party, and all of
the authors of the work are nationals, domiciliaries, or

Plaintiff has now obtained copyright registration for AJE. This fact does
not dispose of the matter, though, for we are denying Plaintiff’s motion to amend. See
Section D infra.
2

A “treaty party” is a “country or intergovernmental organization other
than the United States that is a party to an international agreement.” 17 U.S.C. § 101.
The Berne Convention, more formally known as “the Convention for the Protection of
Literary and Artistic Works, signed at Berne, Switzerland, on September 9, 1886, and
all acts, protocols, and revisions thereto,” is one such “international agreement.” Id.
3

habitual residents of, or in the case of an audiovisual work
legal entities with headquarters in, the United States[.]
17 U.S.C. § 101.
In 1989, the United States acceded to the Berne Convention (“Convention”), an
international copyright treaty that among other things prohibits signatories from
imposing copyright formalities as a condition to the protection of works of nationals of
other member countries.

See generally Christopher Sprigman, Reform(aliz)ing

Copyright, 57 Stan. L. Rev. 485, 488 (2004).4 To meet obligations necessary to adhere
to the Convention, the United States eliminated many of the formalities for foreign
works, including the registration requirement of § 411(a). See, e.g., Football Ass’n
Premier League Ltd. v. YouTube, Inc. 633 F. Supp. 2d 159, 163-64 (S.D.N.Y. 2009); 2
Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.01[A], at 7-8 - 7-9
(2011) (for non-U.S. Berne Convention authors, the formality of copyright registration
is no longer a prerequisite to filing an infringement action); see also Berne Convention
Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853 (1988). Thus, if AJE
does not qualify as a “United States work,” it is exempt from the registration
requirement of § 411(a).
Defendants argue (1) that the evidence establishes that AJE was first published
on the Internet in Vandalism News # 39 in August 2002 and (2) that publication on the

Article 5(1) of the Berne Convention provides that “[a]uthors shall enjoy,
in respect of works for which they are protected under this Convention, in countries of
the Union other than the country of origin, . . . the rights specially granted to this
Convention.” Berne Conv. Art. 5(1). The Convention further specifies that “[t]he
enjoyment and exercise of these rights shall not be subject to any formality.” Id. Art.
5(2).
4

Internet constitutes simultaneous publication all over the world.

If both those

assertions are correct, then AJE qualifies as a “United States work” under § 101(1)(C)
because it was published simultaneously in the United States and (necessarily) in
foreign nations that are non-treaty parties.5 17 U.S.C. § 101(1)(C).
Plaintiff hotly disputes Defendants’ assertion that AJE was first published on
the Internet. Plaintiff insists that when Gallefoss testified AJE was first published on
a “disk magazine,” he was referring to a “computer disk containing a magazine,” i.e.,
a physical computer disk. [D.E. 172 at 4]. Plaintiff claims that the evidence shows
that AJE was not posted on the Internet until it appeared on the High Voltage SID
Collection website, more than three months after it was published in Vandalism News.
At the very least, Plaintiff contends that the manner of first publication is in dispute
and precludes entry of summary judgment on the issue.
Plaintiff also disagrees that Internet publication equates to simultaneous
worldwide publication. Plaintiff urges us to follow Moberg v. 33T LLC, 666 F. Supp.
2d 415 (D. Del. 2009), a decision from the District of Delaware that is the only other
published opinion that has addressed this particular issue. Judge Hillman held in that
case that publication of photographs posted on a German website did not amount to
simultaneous publication in the United States and Germany and therefore, because the
photos did not qualify as “United States works,” the plaintiff did not have to satisfy

AJE does not qualify as a “United States work” under § 101(1)(B) because
at the time of first publication in 2002, Australia’s term of copyright protection (the life
of the author plus 50 years) was not the same or longer than the term provided in the
United States (the life of the author plus 70 years). [See D.E. 172 at 11-12].
5

U.S. registration requirements before suing for copyright infringement. 666 F. Supp.
2d at 422, 424.
The issues presented for our determination in this case are (1) whether AJE was
first published on the Internet and if so, (2) whether that act constituted simultaneous
worldwide publication which would make AJE a “United States work” subject to §
411(a)’s registration requirements. We answer both questions in the affirmative.
B.

First Publication

Defendants argue that AJE was first published on the Internet. Plaintiff claims
first publication was on a physical computer disk. At the very least, Plaintiff posits
that if we view the evidence in the light most favorable to Plaintiff as the non-moving
party, we must find that there are material facts in dispute with regard to this issue.
We disagree and affirm our prior ruling. We have thoroughly reviewed the
evidence and conclude the evidence shows that first publication was on the Internet.
Moreover, Plaintiff has not offered any credible evidence that creates a dispute about
this.
Defendants requested in discovery that Plaintiff produce all documents that
evidenced the date, manner and place of first publication of AJE. In response, Plaintiff
produced a printout of a computer screen showing the online image of Vandalism News
# 39. [D.E. 201-1]. The top of the printout displays the following tabs: “Log In,”
“Register,” “Browse,” “Help,” “Statistics,” “Forums,” “RSS,” and “Donate.” The printout
displays other interactive features including “User rating,” “SIDS used in this release”
(listing Gallefoss’ Acid Jazz SID), “Download,” and “User Comment.” The printout
indicates a “Release Date” of August 10, 2002.

The printout was the only evidence Plaintiff produced in response to the
defense’s specific request for all proof of first publication. Plaintiff did not produce a
physical copy of a magazine or computer disk, explain why it could not produce any
physical evidence after all these years, or provide any tangible evidence suggesting
that what appeared to be an online publication was in fact not.
Importantly, Gallefoss confirmed in his February 2010 deposition that
Vandalism News was an online magazine:
Q:

Now, you indicated that the first publication of your version of
“Acid Jazz” was posted on this Australian –

A:

Disk magazine.

Q:

– online magazine, correct?

A:

Yeah, that’s the first – I gave it to the disk magazine, yes, so it was
first used in that disk magazine.

Q:

And then after that you posted it on this High Voltage site; is that
correct?

A:

I didn’t post it. Someone else did.

Q:

Who did that?

A:

I don’t know. Maybe the people who work for the High Voltage
SID collection.

Q:

And they may have just gained access to it from the online
magazine?

A:

Yeah.

Q:

And then posted it themselves?

A:

They took it from the disk magazines.

[D.E. 138-1 at 8 (emphasis supplied)].

Plaintiff claims that based on this limited exchange, the record is unclear as to
whether Vandalism News was an online magazine. Plaintiff complains that defense
counsel never asked obvious follow-up questions such as “what is a disk magazine?”
and “was the disk magazine published online in 2002?”
But we find Gallefoss’ testimony clear enough. He agreed with defense counsel
that the first publication of AJE was posted on an online magazine. If the testimony
were inaccurate or unclear, it was incumbent upon Plaintiff’s counsel to clarify the
witness’ testimony on this important point.6
Plaintiff has attempted to create an issue of fact with Gallefoss’ sworn
declaration from May 2010 (a few months after his deposition), submitted in opposition
to Defendant’s motion for summary judgment. There, Gallefoss stated in relevant part:
“I authorized publication of my version of [AJE] in a magazine published on a computer

6

Janni Suni also testified about his familiarity with Vandalism News as
an online magazine:
Q:

Are you familiar with an Internet publication called Vandalism
News?

A:

Yes.
***

Q:

All right. Now, this online magazine, what is the focus of that
magazine?
***

A:

Well, it’s the demoscene. It’s history and publications and also
displays interviews on people involved in the demoscene.

[D.E. 202-1 at 3-4 (emphasis supplied)].

disk in Australia called Vandalism News, issue 19, in August 2002.” [D.E. 143-4 at 4
¶ 23 (emphasis supplied)].
Plaintiff asserts this statement is consistent with and clarifies Gallefoss’ earlier
deposition testimony regarding the manner of first publication. But significantly,
Gallefoss failed to explain in his declaration why he admitted in deposition that AJE
was first published online. Nor did he explain in the declaration how “disk magazine”
could be synonymous with “computer disk” when in deposition he had been discussing
an online magazine.
Plaintiff also contends that Gallefoss’ declaration that publication was on a
computer disk is consistent with his deposition testimony regarding the small size of
the SID file. Gallefoss testified that in creating AJE, he attempted “to make this
sound, this musical composition as small as possible, . . ., so it would fit in the disk
magazine demonstration.” [D.E. 171-1 at 14]. Plaintiff argues that the size of the file
would have mattered to Gallefoss only if the file were intended for inclusion on a
computer disk where space is at a premium, whereas the size of the file would have
been irrelevant for purposes of internet publication. Plaintiff attempts to bolster its
position here by citing to articles and other supplemental information concerning space
on disks, the nature of disk magazines, and online archives, none of which is properly
in evidence. We find that Plaintiff’s assertion that Gallefoss meant “physical computer
disk” when he said “disk magazine” is unsupported by the record.
To the extent that Gallefoss’ declaration conflicts with his prior deposition
testimony on this issue, we will not consider it. The deposition testimony was clear
that first publication was online; Plaintiff’s counsel could have questioned Gallefoss to

clarify his position on this important point but did not; Gallefoss never intimated
during the deposition that the disk magazine was a physical computer disk; and the
only tangible evidence produced by Plaintiff in direct response to a discovery request
on the issue of first publication supports the deposition testimony that it was online.
“[W]hen a party has given clear answers to unambiguous questions which negate the
existence of any genuine issue of material fact, that party cannot thereafter create such
an issue with an affidavit that merely contradicts, without explanation, previously
given clear testimony.” Delaware Valley Floral Group, Inc. v. Shaw Rose Nets, LLC,
597 F.3d 1374, 1381 (11th Cir. 2010); see also Van T. Junkins & Assocs., Inc. v. U.S.
Indus., Inc., 736 F.2d 656, 658-89 (11th Cir. 1984) (affirming the district court’s grant
of summary judgment for the defendants upon a finding that the plaintiff’s affidavit
was a sham and did not serve to create a genuine issue of material fact as to require
submission to a jury).
Based on the foregoing, we conclude that Defendants have established that AJE
was first published on the Internet while Plaintiff has failed to present any competent
evidence to the contrary that might to create a genuine issue of fact. We have not
weighed the evidence for there was none to weigh. Accordingly, we affirm our prior
ruling on this point.
C.

“United States Work”

We also ruled in the March 31, 2011 Order that Plaintiff’s posting of AJE on the
Internet constituted a “publication” under § 101 and that publication on the Internet
constituted simultaneous publication in the United States and other nations around
the world that have Internet service. Thus, we concluded that AJE, which was first

published on a website in Australia, was also simultaneously published in the United
States and other nations with Internet service that are not treaty nations, making AJE
a “United States work” under § 101.
Plaintiff urges us to follow Moberg in which Judge Hillman held that “as a
matter of U.S. statutory law,” photographs posted on a website in German “were not
published simultaneously in the United States.” 666 F. Supp. 2d at 422.
In Moberg, a plaintiff-photographer living in Sweden created a series of
photographs that were first published on a German website, blaugallery.com, an online art shop that offered copies of the works for sale. 666 F. Supp. 2d at 417-418. A
few years later several of the photographs were posted on a few U.S. websites. Id. at
418. The plaintiff sued in United States district court, alleging infringement under
U.S. copyright law. Id.
The plaintiff had not registered his photographs in accordance with the
provisions of the Copyright Act. Id. at 419. The defendants contended, as they do in
our case, that the plaintiff’s works were “United States works” because, although they
were created outside the United States, their publication on a German website, i.e., the
Internet, constituted simultaneous publication in Germany and in the United States.
Id.
Judge Hillman rejected the notion that posting a photograph on a foreign
country’s website results in publication simultaneously in the United States so as to
transform it into a “United States work.” Id. at 419-420. He opined that an acceptance
of the defendants’ position would “overextend and pervert the United States copyright
law, and would be contrary to the Berne Convention.” Id. at 420. In analyzing these

issues of first impression, Judge Hillman found highly persuasive Professor Thomas
Cotter’s law journal article, Toward a Functional Definition of Publication in Copyright
Law, 92 Minn. L. Rev. 1724 (2008), which examined the interrelation between the
Copyright Act, the Convention, and the Internet, and what constitutes “publication.”
Id.
1.

Publication Via Internet

Judge Hillman did not, however, decide whether posting a work on the Internet
constituted publication under § 101. He deemed it unnecessary “to delve into yet
another unsettled issue[] because[,] even assuming that the German website
‘published’ plaintiff’s photographs, [] as a matter of U.S. statutory law the photographs
were not published simultaneously in the United States.” Id.
We must address the issue, however. Defendants contend and we agree that
posting AJE on the Internet was a publication under § 101. [D.E. 137 at 5-6]. Plaintiff
disagrees, reiterating that the issue is unsettled and citing to Moberg and Professor
Cotter’s article. [D.E. 172 at 10-11].
The term “publication” is defined in the Copyright Act as:
the distribution of copies or phono records of a work to the public by sale
or other transfer of ownership, or by rental, lease, or lending. The offering
to distribute copies or phono records to a group of persons for purposes of
further distribution, public performance, or public display, constitutes
publication. A public performance or display of a work does not of itself
constitute publication.
17 U.S.C. § 101 (emphasis supplied). “[A] sine qua non of publication should be the
acquisition by members of the public of a possessory interest in tangible copies of the
work in question.” 1 Nimmer on Copyright § 4.07[A], at 4-43.

This principle was explored in Getaped.com, Inc. v. Cangemi, 188 F. Supp. 2d
398 (S.D.N.Y. 2002). There, the court held that the source code for the plaintiff’s
website was “published” for copyright purposes when the website went “live.” Id. at
402. The court cited with favor several decisions in which the posting of music files,
software, and photographs on webpages was found to have violated the copyright
holders’ exclusive distribution rights under 17 U.S.C. § 106 and, by implication,
amounted to publication. Id. at 401 (citing e.g., A&M Records, Inc. v. Napster, Inc., 239
F.3d 1004, 1014 (9th Cir. 2001) (Napster users who uploaded music files to the Internet
for others to copy violated the copyright holder’s exclusive distribution right); Playboy
Enters., Inc. v. Chuckleberry Publ’g, Inc., 939 F. Supp. 1032, 1039 (S.D.N.Y. 1996)
(defendant’s unauthorized uploading of copyrighted pictorial images to a website, from
which images were downloaded to and stored on the computers of subscribers to the
defendant’s internet service, constituted distribution); Playboy Enters., Inc. v. Frena,
839 F. Supp. 1552, 1556 (M.D. Fla. 1993) (defendant’s unauthorized uploading of
copyrighted images to a subscription bulletin board from which the images were
downloaded by bulletin board subscribers constituted an infringement of the plaintiff’s
exclusive display and distribution rights)).
The determinative factor in those cases, Getaped.com explained, was “the ability
of the Internet user to download a file containing copyrighted work and thereby gain
control of it, that is, gain a proprietary or possessory interest in the copyrighted work.”
Id. (citing Nimmer on Copyright). The Getaped.com court thus differentiated between
viewing a painting or watching a play on the one hand, and accessing a webpage on the

other: in the latter, the user not only viewed the webpage but could also view and copy
the code used to create it. Id. at 402. The court reasoned:
. . . merely by accessing a webpage, an Internet user acquires the ability
to make a copy of that webpage, a copy that is, in fact, indistinguishable
in every part from the original. Consequently, when a website goes live,
the creator loses the ability to control either duplication or further
distribution of his or her work. A webpage in this respect is
indistinguishable from photographs, music files or software posted on the
web - all can be freely copied. Thus, when a webpage goes live on the
Internet, it is distributed and “published” in the same way the music files
in Napster or the photographs in the various Playboy decisions were
distributed and “published.”
Id.
We think the same rationale applies here. AJE was not merely viewable
(audible) on the Internet (as was the case with the photographs in Moberg), it was also
available for downloading and copying (which was not a factor in Moberg). Gallefoss
knew that anyone who accessed Vandalism News # 39 would be able to download and
copy his work, and he did not object. From the moment it was posted online, AJE could
be reproduced, distributed, or otherwise manipulated. Gallefoss lost the ability to
control his work as members of the public acquired (or in theory had the ability to
acquire) a possessory interest in AJE.
In posting AJE online where it could be downloaded and copied, Gallefoss was
distributing or offering to distribute his work to the public. See 1 Nimmer on Copyright
§ 4.07[A], at 4-43 (“[I]t would then seem proper to conclude that . . . no publication
should be held to occur unless the public obtain a possessory right in tangible copies
of the work for only then are significant economic rewards [to the author] attainable.
. . . [U]nless members of the public are able to obtain such a possessory right, the

author has not lost the physical ability to control the dissemination and enjoyment of
his work, and hence, the work has not, in a meaningful sense, been acquired by the
public.”). This constituted “publication” as defined in § 101.7
2.

Simultaneous Global Publication

We next concluded that publishing AJE on a website in Australia was an act
tantamount to global and simultaneous dissemination of the work, rendering it a
“United States work” subject to § 411(a)’s registration requirement.
Judge Hillman articulated three reasons for rejecting the proposition that
publishing a work on the Internet “automatically, instantaneously, and simultaneously
causes that work to be published everywhere in the world.” Moberg, 666 F. Supp. 2d
at 422-23.
First, he concluded that such a result would subject every copyright holder to the
formalities of the copyright laws of every country that has such laws which “is contrary
to the purpose of the Berne Convention.” 666 F. Supp. 2d at 422. Next, Judge Hillman
reasoned that transforming the plaintiff’s photographs into “United States works”
“simply by posting them on the internet would allow American citizens to infringe on

Professor Cotter outlined the “controversy” surrounding, and for policybased reasons expressed skepticism with, the notion that materials transmitted over
the Internet necessarily are published. Cotter supra at 1767-70, 1785-88. But he also
acknowledged that “[c]hanging the facts [surrounding an author’s uploading his
materials onto his website] may result in the transmissions appearing more or less like
a publication.” Id. at 1768. He hypothesized a situation where an author uploaded
materials to his website then authorized users to make copies of the material. Id.
“This might seem more like a conventional publication, because the end result is the
(at least offered) release of tangible copies to the general public.” Id. In our case, as
noted, AJE was not merely transmitted over the Internet, it was downloadable and
copyable which allowed the public to acquire a possessory interest in tangible copies
of the work.
7

foreign copyrighted works without fear of legal retribution, since the majority of foreign
works are never registered in America.” Id. at 423. This would be contrary to the
Convention’s stated purpose of forming “a Union for the protection of the rights of
authors in their literary and artistic works.” Id. (citing Berne Conv. Art. 1). Finally,
Judge Hillman determined that U.S. copyright laws, in accord with the Convention,
currently protect foreign works in the United States “without requiring the artists to
undertake any formalities in the United States.” Id. He concluded that requiring
artists who posted their work on a foreign country’s website to comply with U.S.
copyright formalities would be contrary to that law. Id.
We respectfully decline to follow the reasoning of Moberg. As indicated in our
prior Order, Judge Hillman’s contextual and policy-driven analysis is reasonable and
sound but is, in our opinion, wholly untethered to the actual statutory and treaty
language that governs this dispute. We need not spend much time examining the
interrelationship between U.S. copyright law and the Berne Convention because a
simpler approach is available and dispositive.
We begin our analysis with the copyright statute. “[T]he starting point for
interpreting a statute is the language of the statute itself.” Consumer Product Safety
Comm’n v. GTE Sylvania, Inc., 447 U.S. 102, 108 (1980). “As a basic rule of statutory
interpretation, we read the statute using the normal meanings of its words.”
Consolidated Bank, N.A. v. Office of Comptroller of Currency, 118 F.3d 1461, 1463
(11th Cir. 1997). We “must assume that Congress intended the ordinary meaning of
the words it used, and absent a clearly expressed legislative intent to the contrary, that
language is generally dispositive.” Id. We look beyond the plain language of a statute

only when it is unclear or ambiguous, when Congress has clearly expressed a
legislative intent to the contrary, or when an absurd result would ensue from adopting
the plain language interpretation. Id. at 1463-64. See also, Grabein v. Jupiterimages
Corp., No. 07-22288-CIV, 2008 WL 2704451, at * 4 (S.D. Fla. July 7, 2008) (“When the
import of words Congress has used is clear . . . we need not resort to legislative history,
and we certainly should not do so to undermine the plain meaning of the statutory
language), aff’d and adopted, No. 07-22288-CIV-GRAHAM/TORRES (S.D. Fla. July 25,
2008).
A “United States work” is defined in the copyright statute as a work that “was
first published . . . simultaneously in the United States and a foreign nation that is not
a treaty party.” 17 U.S.C. § 101(1)(c). We have already determined that AJE was
“published” on the Internet in Australia. Was it published simultaneously in the
United States and elsewhere?
“In the absence of a statutory definition of a term, we look to the common usage
of words for their meaning.” Consolidated Bank, 118 F. 3d at 1464. We must consider
words in the context of the statute as a whole, and dictionary definitions can also
provide guidance. See Grabein, 2008 WL 2704451, at *5.
“Simultaneous” is defined in relevant part as “existing or occurring at the same
time: exactly coincident.” Merriam-Webster Dictionary online,
http://www.merriam-webster.com/dictionary/simultaneous (June 1, 2011). Absent
evidence of Congressional intent to the contrary, the term “simultaneously” should be
given its ordinary and plain meaning.

There can be little dispute that posting material on the Internet makes it
available at the same time – simultaneously – to anyone with access to the Internet.8
There is nothing in the text of the statute to suggest that Congress intended to except
works published on the Internet from the phrase “first published . . . simultaneously”
or that certain works should be excluded from the definition of “United States work”
based solely on the manner in which they are published. Nor has Plaintiff identified

In outlining the history and basic technology of the Internet (as a
backdrop to resolving constitutional challenges to provisions of a law intended to
protect minors from harmful materials on the Internet), one district court described the
Internet as a “giant network which interconnects innumerable smaller groups of linked
computer networks.” American Civil Liberties Union v. Reno, 929 F. Supp. 824, 830
(E.D. Pa. 1996), aff’d, 521 U.S. 844, 849-53 (1997) (summarizing the district court’s
findings regarding the Internet). The court continued:
8

Some of the computers and computer networks that make up the Internet
are owned by governmental and public institutions, some are owned by
non-profit organizations, and some are privately owned. The resulting
whole is a decentralized, global medium of communications - or
”cyberspace” - that links people, institutions, corporations, and
governments around the world. The Internet is an international system.
This communications medium allows any of the literally tens of millions
of people with access to the Internet to exchange information. These
communications can occur almost instantaneously, and can be directed
either to specific individuals, to a broader group of people interested in a
particular subject, or to the world as a whole.
Id. at 831 (emphasis supplied).
The most well-known category of communication over the Internet, the “World
Wide Web,” “is a series of documents stored in different computers all over the
Internet.” Id. at 836. Most documents on the Web contain “links” which are short
sections of text or image that refer to another document. Id. “[L]inks from one
computer to another, from one document to another across the Internet, are what unify
the Web into a single body of knowledge, and what makes the Web unique. The Web
was designed with a maximum target time to follow a link of one tenth of a second.” Id.
at 836-37 (emphasis supplied).

anything in the statutory provisions or legislative history that suggests Congress
intended such an exception.
If Congress had intended to exclude works published on the Internet from the
definitions of “United States work” or “publication” in § 101, it easily could have done
so. See, e.g., Consumer Product Safety Comm’n, 447 U.S. at 109 (Congress could have
included the disclosure of information in response to a FOIA request in the list of
exceptions set out in the Consumer Product Safety Act, but it did not). The copyright
provisions at issue here were modified in 1998 as part of the Digital Millennium
Copyright Act. See Pub. L. 105-304, 112 Stat. 2860, § 102(a)(2) (1998) (amending the
definition of “United States work” to its current form) & § 102(d) (same for registration
requirements for foreign works). We must presume that Congress was fully aware of
the Berne Convention and other international treaties as well as the global nature of
the Internet when it enacted the 1998 Act. Yet it evidenced no intent to treat Internetpublished works differently from works published in another manner.
Judge Hillman’s objections to the proposition that publication on the Internet
constitutes simultaneous global publication for copyright purposes are policy-driven.
They reflect a deference to certain goals of the Berne Convention at the expense of
clear statutory language. But “Congress passed the Berne Convention Implementation
Act of 1998 with explicit direction to courts that they should apply the law that it
drafted, not look to vindicate propositions of the Berne Convention directly.” 2 Nimmer
on Copyright § 7.16[B][6][e], at 7-190.8(2) (criticizing the decisional approach taken in
Moberg; 1 Nimmer on Copyright § 1.12[A], at 1-167 - 1-169 (discussing and citing to
provisions in the Berne Convention Implementation Act, Pub. L. 100-568, 102 Stat.

2853, that were designed to forestall treaty self-execution). See also Football Ass’n, 633
F. Supp. 2d at 162-64 (rejecting the plaintiff’s claim that 17 U.S.C. § 412 excuses
foreign works from the registration requirement in order to obtain statutory damages;
there is no exception for foreign works in the statute, Congress did not intend an
exception, requiring foreign works to meet this requirement would not violate
international copyright and intellectual property treaties to which the United States
is bound, and “[e]ven if Section 412 were in conflict with the Berne Convention, Section
412 would be binding . . . [b]ecause the Berne Convention has no effect on U.S. law
unless Congress so provides . . .”). When the statute is clear, as it is here, we need go
no further in our analysis.
Turning to Moberg, we respectfully disagree with some of the premises on which
Judge Hillman’s analysis appears to have been based. For instance, he stated that this
country’s copyright laws, in accord with the Convention, protect foreign works “without
requiring the artists to undertake any formalities in the United States.” 666 F. Supp.
2d at 423. But not all formalities for foreign authors have been dispensed with. While
registration of foreign works as a precondition to bringing an infringement suit is no
longer required, registration is still required for foreign authors to gain the procedural
benefits of a prima facie presumption of the validity of a copyright, statutory damages,
and attorney’s fees under the Act. See 2 Nimmer on Copyright § 7.01[B], at 7-11 - 7-12;
17 U.S.C. § 410(c) (registration required for presumption of validity); 17 U.S.C. § 412
(registration required for award of statutory damages and attorney’s fees); see also, e.g.,
Football Ass’n, 633 F. Supp. 2d at 162 (17 U.S.C. § 412 requires registration before
party can obtain statutory damages for both domestic and foreign works). And of

course, a foreign author wishing to avail himself of U.S. copyright laws must comply
with various requirements for filing a lawsuit in federal court.
Judge Hillman also opined that transforming Internet-posted works into “United
States works” would allow American citizens to infringe on foreign-copyrighted works
with impunity, since the majority of foreign works are not registered in this country.
666 F. Supp. 2d at 423. But “registration is not a condition of copyright protection.”
17 U.S.C. § 408(a). There is no loss of copyrights by virtue of publishing a work on the
Internet, irrespective of registration. Registration is simply a prerequisite to bringing
a claim after infringing activity has occurred. 17 U.S.C. § 411(a); Reed Elsevier, Inc.
v. Muchnick, 130 S. Ct. 1237, 1241-42 (2010).
Similarly, Judge Hillman expressed concern that if publishing a work on the
Internet automatically and simultaneously caused the work to be published
everywhere in the world, an artist would be required “to survey all the copyright laws
throughout the world, determine what requirements exist as preconditions to suits in
those countries should one of its citizens infringe on the artist’s rights, and comply with
those formalities, all prior to posting any copyright image on the Internet.” 666 F.
Supp. 2d at 422-23. The Berne Convention, he reasoned, was formed in part to prevent
exactly such a result.

Id. at 423.

But as we just noted, registration is not a

prerequisite to copyright protection. Registration need not be in place before a work
is published or before allegedly infringing activity has occurred in order for an artist
to later enforce his copyrights.
We hold that publishing AJE on a website in Australia was an act tantamount
to global and simultaneous publication of the work, bringing AJE within the definition

of a “United States work” under § 101(1)(C) and subject to § 411(a)’s registration
requirement.

Gallefoss elected to publish AJE on the Internet and the legal

consequences of that decision must apply. Plaintiff was therefore required to register
AJE prior to seeking judicial enforcement of its copyright rights.
D.

Motion to Amend Complaint9

Having now obtained copyright registration for the sound recording and musical
composition of AJE, Plaintiff moves to amend the complaint to add this allegation. As
stated earlier, Plaintiff applied for and then obtained registration after March 31,
2011, after we determined that AJE was subject to § 411(a)’s registration requirement,
a precondition precedent to filing suit that Plaintiff failed to meet. Plaintiff claims the
proposed amendment does not change any facts or legal theories or add a new cause
of action. Plaintiff maintains that amendment should be allowed in the interest of
justice, particularly here where Plaintiff was under a good faith (though mistaken)
belief that registration was not required.
When amendment to a complaint is sought after the deadline established in a
scheduling order, as is the case here,10 the plaintiff must first demonstrate good cause

Plaintiff initially asked that we hold entry of our Final Order in abeyance
so that it could apply for and obtain a copyright certificate. [D.E. 230]. That goal has
been achieved and the abeyance request is moot.
9

The deadline for amending the pleadings passed long ago. The original
scheduling order issued in this case set December 21, 2009 as the deadline to amend
the pleadings. [D.E. 34]. On February 9, 2010, Plaintiff amended the complaint
following a ruling on motions to dismiss by the then-presiding judge, the Honorable
Donald L. Graham. [D.E. 61; D.E. 63]. Following our May 10, 2010 ruling on the next
round of motions to dismiss [D.E. 108], Defendants filed their answers to the amended
complaint on May 26, 2010. [D.E. 127]. Pursuant to the scheduling order, which was
amended on several occasions, the discovery period ultimately closed on May 14, 2010
10

under Fed. R. Civ. P. 16 before a court will consider whether amendment is proper
under Fed R. Civ. P. 15(a). See, e.g., Smith v. School Bd. of Orange County, 487 F.3d
1361, 1366 (11th Cir. 2007) (citing Sosa v. Airprint Sys., Inc., 1418, 1419 (11th Cir.
1998)); Fed. R. Civ. P. 16(b)(4) (scheduling order may be amended only for good cause
and with the judge’s consent).
To show good cause for an untimely amendment, a plaintiff must demonstrate
diligence. See e.g., Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1232
(11th Cir. 2008) (Rule 16's “good cause” standard precludes modifying the scheduling
order unless the schedule cannot be met despite the diligence of the party seeking the
extension); Auto-Owners Ins. Co. v. Ace Elec. Serv., Inc., 648 F. Supp. 2d 1371, 1375
(M.D. Fla. 2009) (the key to establishing good cause is to demonstrate diligence).
Diligence is evaluated by considering the following factors: (1) whether the plaintiff
failed to ascertain facts prior to filing the complaint and to acquire information during
the discovery period; (2) whether the information supporting the proposed amendment
was available to the plaintiff; and (3) whether even after acquiring the information the
plaintiff delayed in seeking the amendment. Auto-Owners, 648 F. Supp. 2d at 1375.
Plaintiff claims it has demonstrated diligence and established good cause for the
amendment. First, Plaintiff states there is no information it could have obtained prior
to filing the complaint or during discovery that would have made this amendment
necessary. From the beginning of the case, Plaintiff has taken the position that AJE

and motions for summary judgment were filed on May 28, 2010. [D.E. 110; D.E. 122].
Plaintiff’s motion to amend was filed nearly one year later, on May 5, 2011 [D.E. 235],
after we granted summary judgment for Defendants on the registration issue.

was not a “United States work” and therefore not subject to § 411(a)’s registration
requirement. [D.E. 1; D.E. 63]. Meanwhile, Plaintiff complains, Defendants did not
raise the issue of lack of copyright registration until late in the case, in their Answers
which were filed after several motions to dismiss had been resolved, after the close of
discovery, and just days before the summary judgment deadline.
Plaintiff also argues that the information on which it bases its amendment – our
determination that AJE was first published on the Internet simultaneously in the
United States and around the world – was not available until March 31, 2011.
Plaintiff states that once we ruled, it immediately applied for registration and
thereafter, immediately upon receiving its registration certification, filed the pending
motion to amend.
We reject Plaintiff’s argument that it could not have anticipated a possible need
for registration prior to our March 31, 2011 ruling. Plaintiff was on notice nearly a
year earlier that copyright registration (or lack thereof) was an issue in the case.
Specifically, in May 2010 Defendants raised lack of copyright registration as a defense
in their Answers. [D.E. 127 at 10]. Defendants then argued in their summary
judgment papers, also filed in May 2010, that AJE was published online, was a “United
States work” subject to the § 411(a) precondition for filing suit, and that Moberg should
not control our resolution of the issue. [D.E. 137 at 2-12]. Even if registration was not
an issue in the case before May 2010, these filings injected it front and center. Plaintiff
had ample opportunity between May 2010 and March 2011 to seek registration and

amendment to the complaint.11 See, e.g., Frankel v. Stein & Day, Inc., 470 F. Supp.
209, 212 (S.D.N.Y. 1979) (after defendant raised lack of copyright registration in its
motion for summary judgment, plaintiff immediately complied with the registration
requirements; court allowed plaintiff to amend the complaint, noting that the
defendant did not object to the procedure).
We do not put much stock in Plaintiff’s claim that it could not possibly have
anticipated that we might rule differently than Judge Hillman did in Moberg. The
issues raised in our two cases was and remains unsettled. Judge Hillman noted the
issues were of first impression. Moberg, 666 F. Supp. 2d at 417. Professor Cotter noted
throughout his law article that the question of whether Internet transmission
constituted publication for copyright purposes was an unsettled one and could be
resolved either way. E.g., Cotter supra at 1785 (“as a textual matter, the question of
whether an author who transmits her work over the Internet has effected a publication
could be resolved either way, depending on whether the temporary RAM copy that a
user’s computer necessarily makes whenever the user accesses a website that
incorporates the work is considered a tangible copy.”); id. at 1786 (“Unfortunately, the
policy considerations [of equating transmission with publication] do not all point
unambiguously in one direction.”); id. at 1788 (“On balance, despite some commonsense appeal to the notion that works transmitted over the Internet are necessarily
published, and despite a plausible textual basis for reaching this result, it is hardly
obvious that this result would be desirable.”).

As we now know, Plaintiff could have obtained registration within a
matter of weeks.
11

Finally, and significantly, Moberg, the sole published decision on this issue, is
from a district court in another circuit and clearly not binding on us. Plaintiff’s claim
that it could not have anticipated we would reach a different conclusion than Judge
Hillman rings hollow.
Consequently, we find that Plaintiff has not identified any facts or new
information it could not otherwise have discovered that justify an amendment of the
complaint at this late stage in the proceedings. We will not ascribe bad faith to
Plaintiff for failing to seek registration earlier in the case. Plaintiff made a calculated
decision not to do so even though the issue was contested. Plaintiff’s decision to hedge
its bet supports our conclusion that Plaintiff has not met the good cause standard
under Rule 16(b)(4) for a tardy amendment of the pleadings.
Even if Plaintiff could demonstrate good cause for seeking this amendment after
summary judgment was granted, it still must satisfy Rule 15 which permits
amendment by leave of court or by written consent of the adverse party. Fed. R. Civ.
P. 15(a)(2). As consent has not been granted, Plaintiff seeks leave of court.
Rule 15(a) provides that leave to amend shall be “freely given when justice so
requires.” Foman v. Davis, 371 U.S. 178, 182 (1962) (“this mandate is to be heeded”).
Factors to consider when evaluating a motion to amend include undue delay, bad faith
or dilatory motive on the part of the movant, repeated failure to cure deficiencies by
amendments previously allowed, undue prejudice to the opposing party, and the
futility of the amendment. Id. Although a district court has discretion to grant an
amendment, “outright refusal to grant the leave without any justifying reason
appearing for the denial is not an exercise of discretion.” Id.

Plaintiff cites a number of copyright infringement cases in which a plaintiff who
failed to meet the § 411(a) registration requirement prior to suing for infringement, but
then subsequently obtained registration for the infringed work, was granted leave to
amend the complaint accordingly. None of those cases are persuasive. None display
a fact pattern similar to ours, where Plaintiff is attempting to amend the complaint to
allege copyright registration when registration was not even sought until after
summary judgment was granted for Defendants on the issue.
For instance, Plaintiff cites M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d
1486, 1488-89 (11th Cir. 1990), where a plaintiff applied for copyright registration but
two months later sued for infringement even though the registration had not been
issued.

Eight days later the district court dismissed the complaint for lack of

registration. Id. at 1489. Seventeen days later, on the same date that the plaintiff
received its copyright registration, it moved to amend the complaint to allege the
registration. Id. The court allowed the amendment notwithstanding the defendant’s
challenge on jurisdictional grounds.12 Id.
The Eleventh Circuit concluded that the trial court had erred in allowing the
amendment because at that juncture the court was without jurisdiction to do so. Id.
The proper way to proceed would have been for the plaintiff to file a new lawsuit as
contemplated by the trial court which had expressly dismissed the complaint without
prejudice so that the plaintiff could re-file once registration was obtained.

Id.

The Supreme Court recently decided in Reed Elsevier that § 411(a)’s
registration requirement was a precondition to filing an infringement suit and
nonjurisdictional. 130 S. Ct. at 1241.
12

However, the Eleventh Circuit concluded that it was “too late in the day and entirely
contrary to the spirit of the Federal Rules of Civil Procedure for decisions on the merits
to be avoided on the basis of such mere technicalities.” Id. (internal citation omitted).
“Except for the technical distinction between filing a new complaint and filing an
amended complaint, the case would have been properly filed.” Id. Additionally, the
court noted that the defendant was not prejudiced by the error. Id.
We are well past the stage of the case at which the M.G.B. Homes judge allowed
the amendment. There, the plaintiff’s claims were dismissed shortly after the action
was filed.

Registration had been sought two months prior to filing suit, and

registration was obtained shortly after the case was dismissed. Further, when the
court dismissed the case, it anticipated a refiling. That scenario is in stark contrast
with ours, where summary judgment motions were briefed, argued, and ruled upon,
and only then did Plaintiff apply for and obtain registration.
M.G.B Homes and the other infringement cases cited by Plaintiff involve
plaintiffs who obtained their registrations before the courts had issued their final
rulings on the pleadings. See, e.g., Positive Black Talk Inc. v. Cash Money Records Inc.,
394 F.3d 357, 363-64 (5th Cir. 2004) (plaintiff filed an infringement action four days
before the Copyright Office received its application, deposit, and fee, all of which the
plaintiff had mailed on the same day it filed suit13); Identity Arts v. Best Buy Enter.

The Fifth Circuit requires only that the Copyright Office receive a
copyright registration application, deposit, and fee before a plaintiff may sue for
infringement. Positive Talk, 394 F.3d at 365. The Eleventh Circuit, on the other hand,
requires that registration have occurred before suit may commence. M.G.B. Homes,
903 F.2d at 1488 & n. 4.
13

Servs., Inc., Nos. C 05-4656 PJH, C 06-1631 PJH, 2007 WL 1149155, at * 6 - *7 (N.D.
Calif. April 18, 2007) (plaintiff obtained registration prior to filing a subsequent
amended complaint); Historical Truth Prods., Inc. v. Sony Pictures Entertainment, Inc.,
No. 93 Civ. 5529 (MBM), 1995 WL 693189, at * 6 (S.D. N.Y. Nov. 22, 1995) (plaintiff
did not register its copyrighted works until approximately one year after filing its
complaint for infringement but cured the defect prior to the court’s ruling on summary
judgment); Frankel, 470 F. Supp. at 212 (after the defendant raised lack of copyright
registration in its motion for summary judgment, the plaintiff immediately complied
with the registration requirement, and the defendant did not object to the amendment).
All of those cases are factually distinguishable from our case, where registration
was sought and obtained after the Court had ruled for Defendants. Moreover, there are
a number of infringement cases in which the registration requirement was strictly
construed, resulting in dismissal because the plaintiff had not satisfied the
precondition of registration before initiating suit. See, e.g., Sony/ATV Music Publ’g
LLC v. D.J. Miller Music Distribs., Inc., No. 3:09-cv-01098, 2010 WL 3872802, at * 4
(M.D. Tenn. Sept. 28, 2010) (motion to dismiss infringement claims granted even
though the plaintiff obtained registration after lawsuit filed; § 411(a) is “clear that
copyright registration is necessary before remedies for copyright infringement can be
sought by filing a lawsuit in federal court.”); Business Audio Plus, L.L.C. v. Commerce
Bank, NA, No. 4:10CV2064 JCH, 2011 WL 250670, at * 2 (E.D. Mo. Jan. 26, 2011)
(dismissing infringement claim for failure to allege or demonstrate the existence of a
valid copyright registration, thereby failing to comply with the statutory precondition
of registration); Treadmilldoctor.com, Inc. v. Johnson, No. 08-2877, 2011 WL 1256601,

at * 4 - * 6 (W.D. Tenn. March 31, 2011) (dismissing infringement claims where the
plaintiff failed to satisfy the registration requirement of § 411(a), a statutory
“precondition” to suing for copyright infringement).
In a broader sense, there is ample caselaw justifying the denial of a motion to
amend that is filed after summary judgment has been granted for the defendant. E.g.,
Diersen v. Chicago Car Exchange, 110 F.3d 418, 489 (7th Cir. 1997) (district court did
not abuse its discretion in denying motion for leave to amend complaint where motion
was not filed until after the court had granted the defendant’s motion for summary
judgment; the proposed amendment could and should have been suggested much
earlier in the case, and allowing the amendment would have prolonged the litigation);
Key Airlines, Inc. v. National Mediation Bd., 745 F. Supp. 749, 751-52 (D.D.C. 1990)
(denial of leave to amend that post-dated summary judgment was justified where the
plaintiff made a tactical decision not to present the newly asserted claim at an earlier,
more appropriate stage of the litigation). As the Tenth Circuit stated in Pallottino v.
City of Rio Rancho, 31 F.3d 1023 (10th Cir. 1994), where the plaintiff attempted to
amend his complaint in order to advance a new theory after his primary theory had
been dismissed:
A busy district court need not allow itself to be imposed upon by the
presentation of theories seriatim. Liberality in amendment is important
to assure a party a fair opportunity to present his claims and defenses,
but “equal attention should be given to the proposition that there must
be an end finally to a particular litigation.” [Citation omitted.] . . . Much
of the value of summary judgment procedure in the cases for which it is
appropriate . . . would be dissipated if a party were free to rely on one
theory in an attempt to defeat a motion for summary judgment and then,
should that theory prove unsound, come back along thereafter and fight
on the basis of some other theory.

Id. at 1027 (citation omitted). Cf. Oravec, 527 F.3d at 1231-32 (plaintiff failed to show
the requisite level of diligence in pursuing infringement claim when he moved to
amend 20 months after the original complaint was filed, more than a year after
expiration of the deadline for amending the pleadings, and six weeks before trial;
although plaintiff claimed he was not aware of a jurisdictional issue concerning his
copyrights until the trial court raised the issue at a summary judgment hearing, “the
fact that Oravec or his counsel misunderstood the scope of legal protection available
for [certain] works does not constitute good cause” and in any event, the issue had been
raised three months earlier in defendants’ summary judgment motion).
We also find that Defendants would be prejudiced by allowing an amendment
to the complaint at this juncture. Having obtained summary judgment in their favor,
Defendants have a right for this litigation to end. Moreover, allowing this amendment
exposes Defendants to approximately two years’ worth of damages that they might
otherwise avoid under the statute of limitations, if the case is dismissed and Plaintiff
files a new action.14 That is hardly a lack of prejudice.
Finally, we think that denying the motion to amend makes practical sense from
the perspective of judicial economy. The most appropriate forum in which to litigate
this case is New York. Significantly, in July 2010, we dismissed Defendant Nelstar
Publishing, Inc. (“Nelstar”) from the case after concluding we could not exercise

Defendants argue that any claim Plaintiff pursues based on the newlyobtained copyright registration cannot relate back to the initial filing of this suit,
because a party may not satisfy a condition precedent to suit after the statute of
limitations has run, then amend the complaint to allege registration and have it relate
back as though the condition had been satisfied from the outset. [D.E. 239 at 14-17].
We need not decide this issue here.
14

personal jurisdiction over that particular Defendant. [D.E. 195]. We also determined
that Nelstar was a necessary and indispensable party to this action and that Plaintiff
could not proceed on Count 4, a claim for permanent injunction based on the
composition “Do It,” against all Defendants in Nelstar’s absence. Accordingly, we
dismissed Count 4 without prejudice. New York is the only jurisdiction in which
Plaintiff may bring the composition claim against Nelstar and the other Defendants.
Moreover, all Defendants in this case have stipulated to jurisdiction there. [Id. at 27,
33]. If Plaintiff re-files the matter in New York, it may pursue a claim that cannot be
heard in our court.
These facts militate against allowing the amendment. Under the circumstances,
justice does not require it. For the aforementioned reasons, we deny Plaintiff’s request
to amend the complaint.
III.

CONCLUSION

For the foregoing reasons, it is hereby ORDERED AND ADJUDGED as
follows:
1)

We reaffirm our March 31, 2011 ruling and GRANT Defendants Timothy

Z. Mosley p/k/a Timbaland and Mosley Music, LLC’s Motion for Summary Judgment
[D.E. 137] as to the copyright registration issue.
2)

Plaintiff’s Motion for Reconsideration or, in the Alternative, to Hold Entry

of Final Order Briefly in Abeyance [D.E. 230] is DENIED.
3)
DENIED.

Plaintiff’s Motion for Leave to Amend the Complaint [D.E. 235] is

4)

THIS CASE IS CLOSED and any pending motions are denied as moot.

DONE AND ORDERED in Chambers at Miami, Florida, this 7th day of June,
2011.

/s/ Edwin G. Torres
EDWIN G. TORRES
United States Magistrate Judge