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Peer-to-Peer Litigation: The “Making Available” Argument and the Need for Legislation
In February of 2005, Jammie Thomas was just another one of the hundreds of thousands of individuals using the peer-to-peer program Kazaa to download and share music. By October of 2007, she had become the ﬁrst individual to challenge the Recording Industry Association of America all the way through trial. By October 4th, she owed the recording industry a quarter of a million dollars 1.
Ms. Thomas’ outcome may be unique, but her position, squarely in the crosshairs of the recording industry, is not. Since the inception of peer-to-peer ﬁle sharing, the Recording Industry of America (RIAA), the music industry’s representative trade group, has ﬁled suit or threatened to ﬁle suit against more than 19,000 individuals for infringing their exclusive right of distribution under the Copyright Act 2. In most cases, the defendants or potential defendants have chosen to settle the claims against them rather than take their chances in court. Among the reasons settlement has been an attractive option to defendants is the incredible uncertainty over what a trial court would require as evidence against them. The RIAA, in an effort to evade the evidentiary problems caused by new technology, is seeking to greatly expand the deﬁnition of “distribution” under the Copyright Act by advancing a “making available” conception of that exclusive right. In so doing, the RIAA is attempting to greatly expand protection for the copyrighted works of its members. To date, trial courts throughout the country have failed to come to a consensus, leaving defendants guessing as to their liability, and the state of the law wholly in ﬂux.
Bangeman, Eric, RIAA trial verdict is in: Jury finds Thomas Liable for Infringement, Ars Technica, at http://arstechnica.com/news.ars/post/20071004-verdict-is-in.html (Oct. 4, 2007).
Stokes, Jon, The RIAA vs. the EFF: who will redefine copyright for the digital age, Ars Technica, at https://arstechnica.com/mews.ars/post/20060418-6626.html (April 18, 2006).
Legislation is required if there is to be certainty and fairness for defendants, and effective legal recourse for the recording industry. As a group, the recording industry ﬁnds itself facing a technology that allows infringement on an enormous scale and a Copyright Act that provides them little recourse against it. Moreover, their most signiﬁcant attempt to expand protection under this Act, the “making available” argument, fails, as they garner no support from the language of the Copyright Act, the torturing of the deﬁnition of “publication”, the Register of Copyrights, or the case law. Further, in the resulting confusion the courts have at times ground to a halt and individuals have been subjected to terriﬁc uncertainty. The Recording Industry and Peer-to-Peer
The RIAA speculates that the recording industry worldwide loses up to $12.5 billion a year between online and more traditional forms of piracy. 3 A large portion of online piracy is accomplished through the use of peer-to-peer ﬁle-sharing software, now operating mostly on the Gnutella network. 4 Using pieces of software, users log on to the ﬁle-sharing network from their individual computers and are immediately connected to countless users all over the world. Once connected, users can search the computers of other users (typically, only those ﬁles contained in the users’ “shared” folder), and download those ﬁles of interest to them. All types of ﬁles can be downloaded to an individual computer in this manner, and users often use this means to acquire copies of sound recordings in contravention of 17 U.S.C. § 106 (1) and (3). The RIAA has been successful in suing a number of developers of peer-to-peer software developers, most notably in MGM v. Grokster.5, and continues to sue others. Peer-to-peer software is unique however, in that it does not require a centralized, established, software developer. Peer-to-peer software is in fact largely self-perpetuating. The reason is the difference between the client and the network. Peer-to-peer software, as a colloquial term, describes the ﬁle-sharing client, that is, the software on the individual computer that connects to the network. The network can be more aptly described as a uniform piece of code found in the clients that allows users to connect to each other. Software developers create clients with different user interfaces, search options, etc., all
RIAA, For Students Doing Reports, at http://www.riaa.org/faq.php (last visited May 9, 2008).
Bangeman, Eric, Study: BitTorrent sees big growth, LimeWire still #1 P2P app, Ars Technica at http:// arstechnica.com/news.ars/post/20080421-study-bittorren-sees-big-growth-limewire-still-1-p2p-app.html (April 21, 2008).
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).
built around the same piece of code, allowing them to connect to each other and interoperate. As a practical matter, this means that the network is not dependent upon any one client, or any one software developer, for its existence. Additionally, the piece of code that represents the network is open-source, meaning that it’s free for any software developer to utilize in creating a ﬁle-sharing client. What this means for the RIAA is that when it sues an individual software developer, even a victory will mean the elimination of a single entity from a market where it can be replaced almost immediately. Additionally, because there is no centralized network, but rather a disparate connection of computers to one another, once a client is released there’s no effective way of taking it back, it will always function so long as there are other users making use of it. It is this decentralized, selfperpetuating quality of peer-to-peer networks that limits the effectiveness of RIAA lawsuits against software developers and distributors, and has driven the RIAA to seek recompense from individual users. The RIAA starts the process of bringing suit against a peer-to-peer user with an investigation. To date, the RIAA has used a company called MediaSentry to conduct all of its investigations into peer-to-peer users. Typically, an investigator from MediaSentry will sign onto a peer-to-peer client such as Kazaa and conduct a search for music ﬁles whose copyright is owned by one of the RIAA’s member companies. Once a music ﬁle is located, the investigator will make use of a Kazaa feature that allows one to see the entire contents of a user’s “Shared Folder”. The shared folder is that folder that a user designates as the location on their computer the contents of which will be shared with other users, and to which all of a user’s downloads will be saved. Having accessed the contents of a user’s shared folder, the investigator will take a screenshot, a digital picture of the contents of the investigator’s monitor at a given time, of the folder and download several of the copyrighted sound recordings 6. Associated with each Kazaa user is a screen name and an Internet Protocol (IP) address. The screen name is a name that the user designates for themselves upon the installation of the Kazaa software, whereas the IP address is a number unique to the user’s internet location, and which can be used to determine their internet service provider (ISP). Both the screen name and IP address are shown for each user as a function of the Kazaa software. The RIAA uses the screen name, and more importantly, the IP address to ﬁle suit against a John Doe, obtain an ex parte order for immediate discovery, and to issue a subpoena to the ISP compelling disclosure of the user’s name
Plaintiff’s Statement of the Case at 2, Capitol Records, Inc. v. Thomas, No. 06-cv-1497 (D. Minn. 2007).
and address. Once the RIAA has obtained this information, they re-ﬁle suit in the appropriate jurisdiction against the now-identiﬁed user. Typically, the RIAA will come to court with three primary pieces of evidence, the IP address, the screenshot, and the downloads. The IP address is used to establish that the defendant is the Kazaa user. The screenshot is used to establish that the defendant had a library of copyrighted sound recordings. The downloads are used to establish that that defendant actually distributed the sound recordings without the permission of the copyright holder, in violation of 17 U.S.C. § 106 (3). It is on this ﬁnal prong that the RIAA has frequently run into trouble in court, as many courts have been extremely hesitant or downright opposed to considering the download by MediaSentry an actual illegal distribution. The argument against a ﬁnding of actual, illegal, distribution in this context is that there is no infringement of the recording company’s exclusive right of distribution because the distribution is made to the recording company’s duly authorized agent. In support of this argument, the case of Olan Mills v. Linn Photo Co. is typically cited for its proposition that, “It is well-established that the lawful owner of a copyright cannot infringe its own copyright.” 7 This argument however, crumbles under the weight of authority, and the most recent District Court ruling on the subject rejects it outright.8 . In Olan Mills, the plaintiff photographer sent an investigator to the defendant photo store to see if the defendant would make an enlargement of the plaintiff ’s photograph, as plaintiff had suspected defendant was doing for a number of customers. Even though the investigator signed a statement indicating that he owned the copyright to the photo and indemnifying the defendant store, the court still held that the enlargement was an infringement.9 As such, this case does not stand for the proposition that an investigator hired by a copyright holder cannot infringe, but rather exactly the opposite. Additionally, as the RIAA argued in its brief in Atlantic v. Howell, RCA/Ariola Int’l v. Thomas & Grayston Co.10 weighs heavily against a ﬁnding that an investigator cannot infringe its employers’ copyright. In this case, an investigator working for plaintiff record company went into the defendant’s retail store, and with the help of the store’s employees,
Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1348 (8th Cir. 1994).
Order at 13, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed April 29, 2008).
Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1347 (8th Cir. 1994). RCA/Ariola Int’l v. Thomas & Grayston Co, 845 F.2d 773 (8th Cir. 1988).
used a cassette duplicator in the store’s possession to make an infringing copy of a cassette tape. As the Court stated on appeal, “The magistrate concluded that RCA had proved a clear case of direct infringement against the retailers by showing that the investigators were permitted to make infringing copies.” 11 This component of the ruling was not even seriously considered on appeal, and apparently no agency argument was made by the defendants. Clearly, this ruling weighs heavily in favor of the RIAA and against the notion that MediaSentry’s downloads can’t be used as evidence of actual illegal distribution. Finally, in the most recent ruling on the subject, an order denying summary judgment in Atlantic v. Howell, the judge clearly accepted the RIAA’s line of reasoning in determining that a download by MediaSentry could constitute an actual illegal distribution. Speciﬁcally, the Court stated, “...the recording companies obviously did not intend to license MediaSentry to authorize distribution or to reproduce copies of their works.”12 As such, when MediaSentry downloaded the sound recordings off of the Howell’s computer, it was affecting an illegal distribution. Despite this line of authority, courts have been reluctant to allow MediaSentry’s downloads as direct proof of infringing distribution. Therefore, the RIAA has had to fall back on its “making available” argument. The “Making Available” Argument The “making available” argument is at its heart an attempted expansion of copyright protection in response to a lack of evidence. This lack of evidence is a direct result of the nature of the peer-to-peer clients used to make the infringing downloads. When a court determines that MediaSentry’s downloads may not be used as evidence of an infringing distribution, the RIAA must ﬁnd other evidence of infringement. However, when the user of a peer-to-peer client downloads from another user, no record of the transfer is stored on either computer. As such, when the RIAA is prohibited from using MediaSentry’s downloads as evidence, they are left completely without evidence that any distribution, infringing or not, ever took place. In response to this dilemma, the RIAA has argued, most notably in its brief in Atlantic v. Howell, that making a copyrighted work available for download should constitute a distribution under § 106 (3).
Id. at 777.
Order at 13, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed April 29, 2008).
The RIAA’s “making available” argument fails for four reasons: it is not supported by the language of the Copyright Act, it is not supported by the deﬁnition of “publication” in § 101 of the Act, it is not supported by the Register of Copyrights, and it is not supported by the relevant case law.
(i) The Language of the Copyright Act
The language of the Act simply does not lend itself to a “making available” theory of copyright infringement. That is, nowhere in the Act will one ﬁnd a reference to the “making available” theory of distribution, nor will one ﬁnd language that can be reasonably construed to support such a theory. The ﬁrst instance in which it is suggested by the RIAA that one might ﬁnd legislative endorsement of the “making available” theory, is in the “to do and to authorize” clause of § 10613. This reading of the clause is in clear conﬂict with the legislative history and thus with the intent of the statute. The document that lends insight into the minds of the legislators that enacted the Copyright Act of 1976 is the House of Representatives Report Number 94-147614. As the House Report clearly states, “Use of the phrase ‘to authorize’ is intended to avoid any questions as to the liability of contributory infringers. For example, a person who lawfully acquires an authorized copy of a motion picture would be an infringer if he or she engages in the business of renting it to others for purposes of unauthorized public performance.”15 Thus, when the RIAA characterizes “making available” of a copyrighted work as an infringement of the exclusive right of distribution because they’ve authorized that distribution, they’re mischaracterizing the nature of the phrase “to authorize.” It is clear that the legislative intent was to include “to authorize” for the purpose of secondary liability. As such, one doesn’t directly infringe a copyright by improperly authorizing a distribution, one vicariously or contributorily infringes a copyright by authorizing an infringing copy to be made by a third party. In this way the plain language of the legislative history very clearly forecloses the possibility that the statute can be read the way that the RIAA suggests.
13 14 15
17 U.S.C. § 106 (2002). H.R. Rep. No. 94-1476 at 61 (1976). Id.
The First Circuit Court of Appeals expressly endorses the view that 106 should be read in the light of the legislative history in Venegas-Hernandez v. ACEMLA 16, and two years later in LAMCO v. Archdiocese of San Juan17 . As the Court in Venegas-Hernandez stated, Because the right to “authorize” is literally one of the exclusive rights provided in section 106, the authorizing person could (as a matter of language) be treated as an infringer subject to statutory damages even if no listed infringing act (for example, performance) actually occurred. Yet the legislative origins of the “authorize” language in the statute arguably support a narrower reading, and most (perhaps all) courts that have considered the question have taken the view that a listed infringing act (beyond authorization) is required for a claim. 18 The court goes on to say, and the RIAA misleadingly cites in its Atlantic v. Howell brief, Admittedly, the better bare-language reading would allow the claims in question; they might add some slight protection to federal copyright interests, at the cost of more federal litigation. But the narrower interpretation appears from legislative history to be closer to congressional intent and has been followed by other courts. 19 Thus the First Circuit acknowledges, in a way that the RIAA is unwilling to, that one must resist the very real temptation to take § 106 at face value. The Court further acknowledges that such a reading of § 106 would expand the current formulation of the exclusive rights encompassed by that section, and that the alternative, narrow reading indicated by the legislative history represents the true intention of the drafters of the Copyright Act and the interpretation generally accepted by the judiciary.
In its Atlantic v. Howell brief, the RIAA also misleadingly discusses VenegasHernandez’s progeny, LAMCO, in support of its reading of § 106. The RIAA states, “Thus, LAMCO is entirely consistent with Plaintiffs’ argument that the distribution right is violated where copyrighted sound recordings are not only listed in an index, but are also available behind the index.”20 This statement is simply wrong. LAMCO was at its base a dispute between performing rights societies and music publishers in which there were
16 17 18 19 20
Venegas-Hernandez v. ACEMLA, 424 F.3d 50 (1st Cir. 2005). LAMCO v. Archdiocese of San Juan, 499 F.3d 32 (1st Cir. 2007). Venegas-Hernandez v. ACEMLA, 424 F.3d 50, 57 (1st Cir. 2005). Id. at 58.
Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 10, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).
nearly ﬁve hundred songs that the court had to work out ownership of. Part of the case involved whether LAMCO/ACEMLA had infringed the copyrights of songs it mistakenly asserted rights over. The District Court ruled on summary judgment, solely on the basis of the songs being listed in a catalog, that LAMCO/ACEMLA had infringed the publisher’s copyright. The Court of Appeals, citing Venegas-Hernandez, reversed the District Court, stating, “Infringement depends upon whether an infringing act, such as copying or performing, has occurred. Therefore, to prove infringement, a claimant must show ‘an infringing act after the authorization.’” 21 In the case at hand, the only evidence presented to the District Court that any possibility of infringement might have taken place was that LAMCO/ACEMLA had made the songs available on their website and had actually distributed two songs on CDs. Since the District Court had applied the wrong standard when reviewing evidence at trial, and there was such a paucity of evidence before the Court of Appeals, the determination as to whether there was infringement in accord with the proper standard belonged to the District Court in the ﬁrst instance. The Court of Appeals made clear however, that there had to be some infringing act independent of mere authorization. This ruling then, clearly contradicts the RIAA’s interpretation of § 106. As to the RIAA’s assertion that the ruling is in accord with its making available theory, that’s blatantly false. The Court did in fact say that the actions of LAMCO/ ACEMLA “might be infringing” 22, but they also stated that, “...we cannot decide whether the record contains sufﬁcient undisputed evidence of infringing acts to warrant summary judgment on infringement.”23 Since the RIAA’s “making available” theory requires only an index and something available behind the index, a court in line with this reasoning would have no trouble ruling on summary judgment where, as here, there is a website listing tracks (an “index”), and one can actually listen to those tracks off of that website (something “available behind the index”). In this way, the Court in LAMCO shows a clear departure from both the RIAA’s reading of 106 and from their “making available” conception of infringement. The RIAA’s citation of case law on this point is equally mystifying when it references Resnick v. Copyright Clearance Center, Inc. 24 in support of its broad reading of 106,
21 22 23 24
LAMCO v. Archdiocese of San Juan, 499 F.3d 32, 46 (1st Cir. 2007). Id. at 48. Id. Resnick v. Copyright Clearance Center, Inc., 422 F.Supp.2d 252 (D. Mass. 2006).
which imposes liability for authorization alone.25 Speciﬁcally, the RIAA argument contends that the Resnick court, “...acknowledged that where, as here, there is direct proof of an infringing act such as distribution that occurs after the wrongful authorization, a direct cause of action may lie against the individual who authorized the act.”26 To begin with, Resnick is a strange case for one to cite in favor of any position on direct liability for copyright infringement, because the plaintiffs here, as the Court acknowledged, expressly dropped their direct infringement claim and, despite other amendments to the complaint, never reintroduced the claim. As such, the Court recognizes that no ruling is required on the issue of direct infringement and liability. The Court does, however, go out of its way in dicta to expressly afﬁrm the rulings in Venegas-Hernandez and LAMCO27 , further adding to the mystery of this case’s inclusion in the RIAA’s brief. The second major problem with the RIAA’s reliance on Resnick, is its use of the term “direct cause of action” 28 when describing what may lie if direct infringement is proven after authorization. Essentially, it appears as though the RIAA is simply confused on this point and has gotten a bit cavalier with the use of the word “direct.” The RIAA, by citing this case, is trying to prove that its interpretation of § 106, wherein authorization alone is a direct infringement of a copyright, is correct and supported by case law. This case, however, supports the opposite, narrow, reading of § 106, where authorization is an element of vicarious or contributory infringement, and only when there’s a third party that directly infringes because of the authorization. In this case, the plaintiff was alleging that the defendant was vicariously and contributorily infringing its copyrighted photographs by keeping articles containing the photographs on ﬁle and selling them to those that requested them. The Court ruled that the defendant had in fact authorized third parties to infringe the works by offering them for sale, but since no one had bought them, there had been no third party direct infringement. The court then concluded that without third party direct infringement, there couldn’t be contributory or vicarious infringement by the defendant.29 Thus, the RIAA, in their reading of the case, appears to confuse the Court’s explanation of the
Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 10, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).
26 27 28
Id. Resnick v. Copyright Clearance Center, Inc., 422 F.Supp.2d 252, 259 (D. Mass. 2006).
Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 11, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).
Resnick v. Copyright Clearance Center, Inc., 422 F.Supp.2d 252, 259 (D. Mass. 2006).
elements for contributory or vicarious infringement with an explanation of the elements direct infringement, placing this confusing jumble of elements under the heading “direct cause of action.” 30 (ii) “Distribution” v. “Publication” The whole issue of what action or inaction constitutes distribution is caused by the fact that “distribution” is not deﬁned in §101 of the Copyright Act. What is deﬁned in § 101 is “publication.” In relevant part, “Publication” is deﬁned as, The distribution of copies or phonorecords 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 phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.31
It is the RIAA’s contention that for the purposes of the Copyright Act, the words “distribution” and “publication” are synonymous. Following this logic, § 106 (3) would then encompass the deﬁnition of publication, which includes “offering to distribute.” It is the RIAA’s further contention that the “making available” of ﬁles in the peer-to-peer context would thus qualify as “offering to distribute,” which would in turn violate the exclusive right of distribution. The RIAA bases this assertion solely on the authority of Harper & Row Publishers, Inc. v. Nation Enterprises, the Supreme Court decision dealing with the boundaries of fair use in the face of the right of ﬁrst publication.
The RIAA’s position is incorrect, in so much as its reading of the Harper & Row decision is incredibly over-expansive. Simply put, the Harper & Row decision did not dub “distribution” and “publication” synonyms. Rather, it merely quoted a section of the legislative history, namely, “Clause (3) of section, 106, establishes the exclusive right of publications... Under this provision the copyright owner would have the right to control the ﬁrst public distribution of an authorized copy... of his work.” 32 This quotation was merely the vehicle by which the Court could begin the discussion of the right of ﬁrst publication, as it is not actually mentioned in § 106 (3). Moreover, this section of the legislative history, when read in its full text, clearly establishes publication as a subset of distribution. Thus, the right of ﬁrst publication (Justice O’Connor adds the word “ﬁrst”
Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 11, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).
Publication, 17 U.S.C. § 101 (2000). Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552 (1985).
where it did not exist in the legislative history with no discussion), is a narrower brand of the more broad right of distribution.
The appropriateness of this reading of the legislative history and thus of Harper & Row is evidenced by the particular language of the House Report and the deﬁnition of “Publication.” Most notably, the deﬁnition of “Publication” uses the word “Distribute” three separate times 33. The net result is that the deﬁnition of “Publication” starts with distribution, and adds a number of different qualiﬁers to it. Additionally, the explanation of the right of ﬁrst publication in the legislative history uses the word “Distribute” two times. Again, the writers begin with distribute, add qualiﬁers, and come up with a narrower concept: ﬁrst publication. Lastly, were one to read the Copyright Act as the RIAA suggests, substituting “Publication” for every instance of “Distribute”, the whole of § 106 (3), the deﬁnition of “Publication” and the legislative history embodied in H.R. Rep. No. 94-1476, would all be so circular and confounded as to render them a nullity. As the court states in Atlantic v. Howell, “One cannot assume that the terms are absolutely synonymous in the face of such an unsatisfactory deﬁnition.” 34 (iii) The Register of Copyrights In 2002, in a letter to Representative Berman for presentation before the House Subcommittee on Courts, the Internet, and Intellectual Property, Mary Beth Peters, the Register of Copyright, said the following: While Section 106 of the U.S. Copyright Act does not speciﬁcally include anything called a “making available” right, the activities involved in making a work available are covered under the exclusive rights of reproduction, distribution, public display and/or public performance set out in Section 106. Which of these rights are invoked in any given context will depend on the nature of the “making available” activity. In the case of a peer to peer network user uploading a copyrighted work onto his or her computer, making it available for other users of the peer to peer network to download, it is simply incorrect to suggest that the person performing the download is the only person legally responsible for infringement. Making the work available in this context constitutes an infringement of the exclusive distribution right, as well of the reproduction
Publication, 17 U.S.C. § 101 (2000).
Order at 12, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed April 29, 2008).
right (where the work is uploaded without the authorization of the copyright holder). 35 The RIAA, in various briefs, has attempted to use this statement by the Register as persuasive authority in support of their position. This use is wrong. On the face of the language used by Ms. Peters, it seems clear that her intention was to attempt to tread the ﬁne line between supporting either construction of § 106 (3). As such, this statement is not the blanket admonition of the “making available” theory that some might wish it were. The ﬁrst paragraph clearly endorses the thinking behind the “making available” theory, that is, an infringement is taking place for which the copyright holder should have some form of redress. Ms. Peters stops short, however, of endorsing the evidentiary loophole that the RIAA is championing. She is still asserting that “making available” must be thought about in the context of the particularly enumerated exclusive rights in § 106. That is, “making available” as some ethereal concept is not itself infringing, but in order to make something available one must necessarily infringe one of the exclusive rights in the conventional way. She clariﬁes this position by example in the second paragraph, stating that in a peer-to-peer download, both parties are liable for infringement. Her example assumes, however, a consummated transfer, not just a listing of availability. Thus, it would seem that Ms. Peters’ conception of infringement by “making available” is that the “making available” is not in and of itself infringement, except insomuch as the act of “making available” infringes one of the exclusive rights in a conventional way. (iv) The Case Law Both the RIAA and its opposition have cited to a number of cases, which they believe wholly support their position that “making available” either does or does not infringe the copyright holder’s exclusive right of distribution. More often than not, the cases the two sides cite are the same, each side reading their own position in the Court’s opinion. This can clearly be seen in the three most
Letter from Marybeth Peters, Register of Copyrights, to Howard Berman, United States Representative, (Sept. 25, 2002).
important cases on point, A & M Records, Inc. v. Napster36, Perfect 10 v. Amazon37 , and ﬁnally, Hotaling v. Church of Jesus Christ of Latter-Day Saints38. In Napster, the Court was asked to decide whether the District Court below had properly granted a preliminary injunction barring Napster from, “engaging in, or facilitating others in copying, downloading, up-loading, transmitting, or distributing plaintiffs’ copyrighted musical compositions and sound recordings... without express permission of the rights owner.”39 As the Court of Appeals rightly noted, preliminary injunctive relief is available where a plaintiff shows either, “(1) a combination of probable success on the merits and the possibility of irreparable harm; or (2) that serious questions are raised and the balance of hardships tips in its favor.” 40 On appeal then, Napster was attempting to show that the plaintiff either had no likelihood of success on the merits, or alternatively stated, that no serious questions were raised. The way in which Napster attempted to show no likelihood of success on the merits forecloses the possibility that the case can be read as persuasive authority (and controlling authority in the 9th Circuit) in favor of a “making available” conception of distribution. Napster had been originally sued for contributory infringement. Rather than defend on the grounds that no direct infringement was taking place (a defense that would have been utterly unbelievable in light of the common knowledge), Napster attempted to defend itself on the ground that the massive direct infringement by its users was actually a fair use. Thus, on appeal, Napster explicitly did not challenge the District Court’s determination of direct infringement by users. As such, the issue was not properly before the Court of Appeals for it to rule on. The RIAA’s reliance on the Court’s language with regard to direct infringement, namely, “Napster users who upload ﬁle names to the search index for others to copy violate plaintiffs’ distribution rights,” is misplaced. In this passage, the Court has gone on an unnecessary intellectual frolic, and thus the views expressed are purely dicta. While the persuasiveness of dicta on such an
36 37 38 39 40
A & M Records, Inc. v. Napster, 239 F.3d 1004 (9th Cir. 2001). Perfect 10 v. Amazon, 487 F.3d 701 (9th Cir. 2007). Hotaling v. Church of Jesus Christ of Latter-Day Saints, 1218 F.3d 199 (4th Cir. 1997). A & M Records, Inc. v. Napster, 239 F.3d 1004, 1011 (9th Cir. 2001). Id. at 1013
important topic coming from the Ninth Circuit, a court generally given great deference with regards to technology and entertainment based decisions, can be debated, the simple fact is that it’s not controlling authority, even in the Ninth Circuit. The actual language that was determinative in this case came from Judge Patel in the District Court, who stated, “here the evidence establishes that a majority of Napster users use the service to download and upload copyrighted music... And by doing that, it constitutes... direct infringement of plaintiffs musical compositions, recordings.” 41 This language does not describe exactly which of the exclusive rights had been violated, as it appears that from the onset of the case both parties generally assumed that direct infringement on a massive scale was taking place. Therefore, there were none of the evidentiary considerations that would necessitate even a consideration of a “making available” conceptualization of distribution, the defense had all but stipulated to actual, direct infringement. Thus, the RIAA is attempting to rely on dicta from a case in which there were no evidentiary disagreements, to support a broadening of copyright protection via a relaxation of evidentiary standards. That’s simply an illogical position to take. Clearly, a complete look at the Napster litigation shows that this case does not support the “making available” argument. In Perfect 10 v. Amazon both sides of the “making available” argument can ﬁnd language in which to take refuge, but any support this may lend to the “making available” argument is of little persuasive value. Where the argument against “making available” ﬁnds its most persuasive support is in the discussion of the District Court’s reasoning. In particular, the Court of Appeals stated, “The district court reasoned that distribution requires an ‘actual dissemination’ of a copy. Because Google did not communicate the full-size images to the user’s computer, Google did not distribute these images.” 42 The court then goes on to state that this conclusion is in keeping with the language of the Copyright Act, making a clear argument against the “making available” theory of distribution. As the Court of Appeals addresses the plaintiff ’s “deemed distribution” argument, however, it drifts towards and eventually applies the dicta of Napster and the rule of Hotaling. In distinguishing the instant case from both Napster and Hotaling, the court ends up laying out the RIAA’s preferred conceptualization of the “making available” theory of distribution: where a person actually has an
A & M Records, Inc. v. Napster, No. 99-5183 at 1 (N.D.Cal. July 26, 2000). Perfect 10 v. Amazon, 487 F.3d 701, 719 (9th Cir. 2007).
unauthorized copy of a work and makes it available to others through an index, there will be “deemed distribution” and an infringement of the exclusive right of distribution.43 It is important to note however, that neither Napster nor Hotaling was actually applicable here, as Google did not own a collection of Perfect 10’s full size images, the works they were accused of infringing. As such, this case lacks the precedential and persuasive value that the RIAA would like it to have. When coupled with the contradictory endorsement of the plain language reading of the Copyright Act, this case becomes too confused to offer any substance to the “making available” argument. The preeminent case in the discussion, though, is without a doubt Hotaling v. Church of Jesus Christ of Latter-Day Saints44. While this case very clearly falls on the side of the RIAA’s conceptualization of the right of distribution, the quality of the opinion is suspect. This case, a 1997 decision from the Fourth Circuit Court of Appeals, involved a set of genealogical research materials produced on microﬁche that were compiled by the Hotalings and subsequently sold to the Church. The infringement relevant to the opinion occurred when the Church made a copy of the original microﬁche to substitute the now-damaged original, placed record of that unauthorized copy in its library index, and made the copy available to the public to look at. The Hotalings brought an action for infringement of their exclusive right of distribution, but lacked any evidence of actual distribution because the library did not keep records of who, if anybody, looked at the unauthorized copy.45 The Court ruled that the act of placing a work in your possession in an index and making it available to the public qualiﬁes as public distribution.46 Therefore, doing the same with an unauthorized copy qualiﬁes as unauthorized and infringing distribution. The Court then, is clearly aligned with the RIAA’s perspective, a perspective that is itself gleaned from this very case. The Court, in support of this arguably radical expansion of the exclusive right of distribution by way of a relaxation of evidentiary standards necessary to prove such distribution, cites exactly zero authorities. Rather, the Court makes a brief public policy argument, implying that the library was intentionally acting in
43 44 45 46
Id. Hotaling v. Church of Jesus Christ of Latter-Day Saints, 1218 F.3d 199 (4th Cir. 1997). Hotaling v. Church of Jesus Christ of Latter-Day Saints, 1218 F.3d 199, 202 (4th Cir. 1997). Id. at 203.
bad faith by not keeping records and concluding that a defendant should not be allowed to proﬁt by such a willful lack of evidence. If anything, this is an argument that is much more forceful in the peer-to-peer context than in the context of a single library with a single infringing microﬁche. While today it’s generally accepted (perhaps not by certain members of the community, bloggers, and lobbying groups) that there is infringement of a massive scale going on and that something needs to be done to stem the ﬂow of illegally copied materials, in the context of this case the same policy argument is somewhat less persuasive. The merits of the policy aside though, in the Court’s statement of this principle cited authority is conspicuously absent, and the ruling seems to be purely conclusory. One reading the opinion is left with the overwhelming feeling that the Court simply made this one up because it liked the result. As the court in LondonSire Records v. Doe 1 stated, “Respectfully, Hotaling did not cite any precedent... [its] interpretation, even if sound public policy, is not grounded in the statute.” 47 Thus, while this case does stand as the seminal case in favor of the “making available” argument, its value as precedent is questionable, and in the face contradictory statutory authority, it cannot stand as the rule. Where the recording industry is thus left without any ability to stop peerto-peer infringement directly by shutting down a network, is left without any direct evidence of infringing distribution, is left without the ability to assume infringing distribution through a “making available” argument, and yet is still being robbed of its valuable intellectual property on a daily basis, legislation is required to rectify the situation. The Courts and the Defendants
Legislation is also necessary in the peer-to-peer context, speciﬁcally with regard to a “making available” conceptualization of the right of distribution, for the sake of the courts and the defendants. The courts have come at times to a grinding halt, and have been wildly divergent where decisions have been rendered. Defendants, meanwhile, have been put at a disadvantage in both settlement negotiations and in the courtroom by the tremendous uncertainty surrounding this type of litigation.
The exceedingly slow way in which the RIAA’s peer-to-peer lawsuits have progressed in the face of the “making available” confusion is typiﬁed by the case
London-Sire Records v. Doe 1, No. 04-CV-12434-NG at 10 (D. Mass. Mar. 31, 2008).
of Elektra v. Barker. The complaint in this case was ﬁled on August 19, 200548 . On January 26, 2007, nearly a year and a half later, and after numerous delays and amicus briefs, the judge ﬁnally heard arguments regarding a motion to dismiss. At the conclusion of those arguments, the judge made known his decision both to rule on the contentious “making available” argument, and to reserve judgment until a later date. Fourteen months later, on March 31, 2008, the judge returned his decision49 . It took two and a half years for the court to deliver a ruling on a motion to dismiss. While this case may be slightly atypical, it exempliﬁes perfectly the need for a legislative resolution to the “making available” dilemma, and the dangers involved in failing to so resolve the problem.
Moreover, the need for legislation can be seen in the wildly divergent results that have been rendered in various District Courts. In Electra v. Barker, the court’s much anticipated decision explicitly endorsed the “making available” argument, basing its decision upon the conclusion that “distribution” and “publication” are synonymous in the Copyright Act. The most recent decision in peer-to-peer litigation took the exact opposite view. The court in Atlantic v. Howell denied the plaintiff ’s motion for summary judgment and explicitly rejected the “making available” argument, the argument that “distribution” and “publication” are synonymous, and the value of Hotaling as precedent 50. To further complicate the matter, what appellate authority there is on the matter, Napster and Perfect 10, is dicta at best and confused to the point of lacking any value at worst. Where courts diverge so wildly in an area of law dominated by statute, Congress must be called upon to provide guidance.
Finally, legislation is needed so as to protect defendants from unfair disadvantage and uncertainty. Whereas it has already been shown that courts differ greatly in their rulings with regard to the “making available” argument, and whereas there is seemingly no means of predicting how any individual court will decide, defendants are left unable to reasonably assess their chances of victory or defeat. This leaves open the very real possibility that defendants, afraid of judgments in the hundreds of thousands of dollars or more, or simply unwilling to
Complaint at 1, Elektra Entertainment Group, Inc. v. Barker, No. 05-CV-7340 (S.D.N.Y. filed Aug. 19, 2005).
Opinion and Order at 1, Elektra Entertainment Group, Inc. v. Barker, No. 05-CV-7340 (S.D.N.Y. filed Jan. 26, 2007).
Order at 7, 11, 9 Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed April 29, 2008).
commit years of their life to litigation, will feel coerced into settling claims that potentially have no merit. As Judge Otero said in Elektra v. O’Brien, “The concern of this Court is that in these lawsuits, potentially meritorious legal and factual defenses are not being litigated, and instead, the federal judiciary is being used as a hammer by a small group of plaintiffs to pound settlements out of unrepresented defendants.” 51 With estimates of up to 25,000 lawsuits having been ﬁled, 52 this is not a potentially coercive position to take lightly, particularly given the lack of reporting and oversight on claims settled out of court, at times even before a complaint is ﬁled. Clearly, legislation is necessary to eliminate a potentially coercive situation for defendants. Conclusion In conclusion, action is required by Congress to safeguard the interests of both the RIAA and those it seeks to hold liable for infringement. The extent of the infringement that the recording industry is suffering online is such that the industry must have redress for its grievances, while the nature of the peer-to-peer software is such that traditional evidence gathering techniques and statutory constructions don’t apply. In the face of these issues the recording industry has attempted to carve out an expansion of current copyright law in the form of its “making available” argument, but this argument is not a true reﬂection of the statutory language or valued case law, so it must fail. Legislation then, in an area dominated by statute, is the appropriate tool by which to vindicate the rights of the copyright holder, allow for the efﬁcient workings of the court, unify the federal trial courts, and protect accused infringers from coercion.
Order to Show Cause re First Amended Complaint at 2, Elektra Entertainment Group, Inc. v. O’Brien, No. CV 06-5289 (C.D. Cali. filed March 2, 2007).
Bangerman, Eric, Foundation on which RIAA builds cases in danger of being undermined, Ars Technica, at http://arstechnica.com/news.ars/post/20070820-foundation-on-which-riaa-builds-cases-in-danger-ofbeing-undermined.html (Aug. 20, 2007).