Friday, May 02, 2008
"Making available" transcript from March 28th Fordham Law School IP Law Conference
The
following is an informal preliminary transcript of the "Making
Available" panel from the Fordham IP Law Conference which took place on
March 28, 2008. One oddity about the transcript, though, is that it
omits the 'keynote remarks' by Michael Schlesinger. I regret their
omission, because they were really odd. Mr. Schlesinger made the
peculiar remark, to an audience which contained many foreign lawyers,
that "making available" has been well established in United States
copyright law for over 10 years. The only 'authority' to which he could
point, however, was (a) the Hotaling case, which of course did not
establish a broad 'making available' right, (b) a pro se case in which
the issue had never been briefed by the defendant, (c) another case in
which the issue had never been briefed, and (d) a jury instruction (not
a decision) which is, of course, not a judicial precedent, and he
totally omitted all reference to Atlantic v. Brennan, which had
rejected the RIAA's "making available" theory altogether.
Interestingly, this panel discussion took place on the business day
before Elektra v. Barker and London-Sire v. Doe 1 came down, both
rejecting a making available right. And of course a month later
Atlantic v. Howell was handed down, rejecting the 'making available'
theory from pillar to post.:
FORDHAM UNIVERSITY SCHOOL OF LAW
SIXTEENTH ANNUAL CONFERENCE
INTERNATIONAL INTELLECTUAL PROPERTY
LAW & POLICY
Friday, March 28, 2008
SESSION X — COPYRIGHT LAW
Part C: The Role, Effectiveness and Issues in Infringement Actions against Individual P2P
Downloaders; Recent Legislative Initiatives
Aimed at Downloaders
———
1.
What is the effect in the United States of the “making available”
right? Comparative approaches in Asia, interpreting the “making
available” right, and also the intersection with secondary liability
———
Moderator
Prof. Hugh C. Hansen
Fordham University School of Law, New York
Speaker
Michael Schlesinger
Greenberg Traurig LLP, Washington, D.C.
Panelists
Ray Beckerman
Vandenberg & Feliu LLP, New York
David Carson
U.S. Copyright Office, Washington, D.C.
Prof. Brian Fitzgerald
Queensland University of Technology Law School,
Brisbane, Australia
Prof. Jane Ginsburg
Columbia Law School, New York
Prof. Mary Wong
Franklin Pierce Law Center,
Concord, NH
PROF.
HANSEN: Welcome. Basically what we are looking at are the role,
effectiveness, and issues in infringement actions against individual
downloaders. We are dealing with making available, the individual
lawsuits, tactics, strategy, statutory damages, and privacy issues that
are involved.
We will start off with the making-available right,
which until recently nobody considered too much in this country. Now,
because of the practical value of it and infringement actions against
individual downloaders and with peer-to-peer software, it has become an
issue.
We have a very good panel: Michael Schlesinger, who is going
to give is a paper with an overview of the law; our panelists include
Ray Beckerman, who is litigating this issue; Brian Fitzgerald, whom you
all know by now from the conference, this and other times and
everywhere, from Queensland University of Technology Law School in
Brisbane; Jane Ginsburg, whom obviously everyone knows, and also she
was written on this; and Professor Mary Wong of Franklin Pierce Law
Center.
We are going to have the talk and then we are going to have some sort of a free-type discussion following that.
[SUBSTITUTE PAPER FOR SCHLESINGER ORAL REMARKS]
PROF.
HANSEN: Just a show of hands. How many think under U.S. law, to the
extent you understand it, that the acts of peer-to-peer network, of
making something in a folder for further pickup, would be a violation
of U.S. law?
[Show of hands]
PROF. GINSBURG: Absent the applicable exceptions. At least prima facie.
PROF. HANSEN: Prima facie. A good point. Thank you.
How many would say no?
[Show of hands]
Significantly fewer.
I think that’s all we need to do. I think the ayes have it. We can move on to statutory damages.
Ray
Beckerman of Vanderberg & Feliu, you have been litigating this. You
heard what Michael said, that he thinks the case law up until now has
gone one way. He does say that there are other cases in which it has
been disputed. Give me your take on the current state of U.S. law.
MR. BECKERMAN: Michael’s whole discussion of U.S. law was extremely biased, one-sided, and incorrect.
The
Hotaling case was a very distinguishable case in which a library failed
to keep circulation records. The court held that it was not going to
reward a library for failing to keep circulation records. The issue is
before the courts now.
The cases upon which Mr. Schlesinger relied
are ridiculous. DePietro was a pro se case, where the defendant did not
have an attorney and was not able to brief the issue. Atlantic v.
Anderson was a case where the defendant had an incompetent attorney who
never briefed the issue at all. The Capitol v. Thomas case is a jury
instruction.
PROF. HANSEN: EFF, they’re not very good either.
MR.
BECKERMAN: The Capitol v. Thomas case is not a judicial precedent. In
fact, what happened in that case was that when they briefed the issue,
the judge adopted an instruction that said that “in accordance with the
U.S. Copyright Act, there has to be an actual dissemination of copies
to the public by a sale or transfer of ownership or license, lease, or
lending, which is the law.”
Then, during the trial, he entertained
oral argument. The lawyer who was representing the defendant, who had
not been paid and who had made a motion to withdraw from the case,
which the judge denied, was asked by the judge: “So what do you have to
say about the Hotaling case?” which was the RIAA’s only authority. In
response to that, he said, “I have nothing to say about the Hotaling
case.”
Now, in the cases where it has been fully litigated, where
parties have litigated, you have six cases that declined to decide the
issue and you have several motions that are pending.
That was
another pro se case, just like DePietro, Atlantic v. Howell, where
there was no attorney. The judge ruled in favor of the RIAA. Then, when
the pro se litigant submitted copies of the briefs from Elektra v.
Barker to the judge, the judge granted a reconsideration motion and
vacated his earlier decision.
Meanwhile, Mr. Schlesinger left out
the recent decision from Connecticut, Atlantic v. Brennan, Judge
Arterton, which specifically held in no uncertain terms that there is
no such thing as a making-available right, that there has to be a
physical distribution of copies to the public. This was a case where
the judge rejected a default judgment application by the record
industry. There wasn’t even a defendant’s lawyer there to present a
brief. But the judge familiarized herself with the law and made the
correct decision.
PROF. HANSEN: So why didn’t the judges in the other cases familiarize themselves with the law and make the right decisions?
MR. BECKERMAN: They were not competently represented.
PROF. HANSEN: In this case they weren’t represented at all.
MR. BECKERMAN: Because that judge did the research to find out what the law was.
PROF. HANSEN: Okay.
MR.
BECKERMAN: Now, meanwhile, of those cases that have been fully briefed,
the Elektra v. Barker is the most fully briefed because that attracted
a few amicus curiae. It has been pending for two years. The judge heard
oral argument. It was brief in the spring of 2006. It was argued in
January of 2007. We are all awaiting the decision. But I’m confident
that he will agree with Atlantic v. Brennan.
Unlike the raising of
hands by Professor Hansen, this is not a super-Congress here. We are
not the United States House of Representatives or the Senate or the
president or all three combined, which are required in order to enact a
law in the United States. The law in the United States says that a
distribution requires “a dissemination of copies of phonorecords to the
public by a sale or other transfer of ownership or by license, lease,
or lending.” That’s it.
PROF. HANSEN: Okay, Ray. Thanks.
You reject the idea that the intellectual elite, which I think is fairly represented here, should not run this country?
MR.
BECKERMAN: The law runs the country. This is a nation of law, not a
country of lawyers who are best paid by large content owners.
PROF.
HANSEN: Ray, let’s not get ad hominem. You know what ad hominem means?
You’ve got a losing argument and you’re desperate. So just stick to the
merits.
Jane?
PROF. GINSBURG: Let’s go back to the so-called
“umbrella” solution, whose author is in the room. When the WIPO
Copyright Treaty put in the making-available right as part of the right
of communication to the public, a right which does not exist in those
words in the U.S. Copyright Act, the theory was that Member States
could achieve the making-available right through either or both of the
public performance right or the distribution right. The United States,
I imagine, thought that it qualified on both counts.
But now we are in kind of an interesting position, because maybe our umbrella is sort of a naked shaft.
The
public performance right as a form of making available for a download
that is not also a stream is now coming into some question. I think
Marybeth referred to this yesterday. In the ASCAP Rate Court
proceeding, the district judge has taken the position that a download,
at least a straight download (reserving judgment, I suppose, on the
universe of limited downloads) is not a public performance. So that one
route to making available has come under some question. That is not to
say that the Rate Court is the last word, but it certainly raises the
issue.
What about the distribution right? Well, Ray is quite correct
to quote the language of Section 106(3). I suppose the question is
whether “to distribute copies to the public by sale or other transfer
of ownership or by rental, lease, or lending” means that the only type
of distribution that our copyright law recognizes as triggering an
exclusive right is a distribution that occurs by means of the transfer
of ownership of a copy or by rental, lease, or lending. We are not
talking about rental, lease, or lending when we’re talking about file
sharing.
And we are not exactly talking about transfer of ownership
of a copy because it is not the same copy in the digital context. It is
much easier to talk about transfer of ownership of a copy in the
hard-copy context. But what is happening in the digital context is that
you are creating ownership of a copy in the hard drive of the recipient
but you didn’t transfer ownership of your copy. That might leave one in
something of a quandary.
But that’s not all there is in the
Copyright Act about distribution. There are the arguments from the
definition of publication, and then there are other parts of the
Copyright Act, notably the definition of a digital phonorecord
delivery, that I think calls into question the theory that the only
kind of cognizable distribution that occurs in the Copyright Act is by
a transfer of physical copies, a transfer of ownership of a copy.
I
think we can have interesting discussions about whether the amendments
to Section 115 and to Section 112 and other bits and pieces in the
Copyright Act effectively enlarge the definition of distribution.
But I agree, we have to deal with the law, and I think those are interesting questions about how does one interpret the law.
I
think it’s also fair to say that the courts have been fairly unrigorous
about this. Those courts that have found that there has been a
distribution, going back to the Playboy and Playmen case [Playboy v.
Chuckleberry Publishing], which is a trademarks case but it talks about
distribution, have taken the common-sense position that if the
recipient ends up with copies and the recipient got those copies
because of a process that was triggered by the defendant, that is a
distribution. That is kind of a common-sense point of view.
But I
think we do have to answer the question whether, common sense or not,
the actual words of the Copyright Act taken together — not just 106(3)
but 115, 112, et al. — gets you to that common-sense point of view, or
whether in fact we don’t have an umbrella, we have just some tatters
and we have a gap.
PROF. HANSEN: So what is your prediction, Jane?
In the six vigorously defended cases with expert attorneys on both
sides, what do you see the courts doing? Are they going to take a
strict, literal approach, or are they going to take a commonsensical
approach, or what?
PROF. GINSBURG: I actually think Section 115, the
definition of a digital phonorecord delivery, and 112 pretty much get
you there. I suppose I would also cite my co-author Jessica Litman, who
has pointed out that the courts have done quite a job of interpreting
the Copyright Act while ignoring the text. So in that case, common
sense might prevail.
PROF. HANSEN: Mary, you raised your hand.
PROF.
WONG: Yes, I did. I just want to make a couple of quick comments on the
BitTorrent case from Hong Kong [Hksar v. Chan Nai Ming ] and also on
some of the U.S. cases that are going through the courts.
First of
all, I am not sure that everybody in the world, or at least maybe the
non-intellectual elite, are on the same page when we talk about making
available. For example, sometimes people talk about Article 8 of the
WCT, which is actually a right of communication to the public including
the right of making available by certain kinds of transmissions; or
Article 6 of the same treaty, which is in many countries called the
distribution right, which is the making available of physical copies.
A
couple of interesting things about the BitTorrent case. The court did
talk about for purposes of criminal distribution, which is the wording
used in the Hong Kong statute, they did talk about the civil liability
provisions. But they talked about the civil liability provisions in the
Hong Kong statute not in terms of the distribution right, which is the
right to issue copies to the public in the Hong Kong Act, but in terms
of the Hong Kong equivalent of Article 8, the Hong Kong equivalent of
the public communication right, which is the making available of
copies.
So just some fuzziness, I think, around the language of a
lot of national implementations, which might lead to a number of
inconsistent decisions and results in the courts.
Secondly, on the
American cases, I think it would be interesting to see — and we are all
waiting for the Barker case and a number of the appeals, like in Jammie
Thomas, for example, to see if the U.S. district courts are going to do
anything about the deemed distribution rule, which was talked about a
little bit by the Ninth Circuit in the Perfect Ten case in describing
the Hotaling case. I haven’t gone through all the briefs of all these
cases, but it will be interesting to see if the courts actually decide
to take on that issue and to see whether or not they apply it, limit
it, or what they do with it.
PROF. HANSEN: David?
MR. CARSON: Let me respond to a couple things.
Jane
pointed out that if you look at the literal words of the statute, maybe
you get into some trouble, even with the notion that transmission on
the Internet is a distribution.
I think we are past that point
because we have two fairly recent Supreme Court cases where the Court
stated unambiguously that transmission on the Internet is distribution.
We have the Tasini case, where the Court mentioned in the context of
databases like the NEXIS database that that was distribution. We have
the Grokster case, where the Court said what was going on in the
peer-to-peer file-sharing context is distribution. So at least we know
this much. We know that when the file is in fact transmitted to
somebody else, you’ve got a distribution.
The more interesting
question, and one on which I think reasonable minds can differ, is
whether the making available in that shared file folder without more
constitutes distribution. I think there are a number of arguments that
you can make which suggest that it is sufficient.
The Register of
Copyrights several years ago, in response to a question from the
Chairman of the House Intellectual Property Subcommittee, opined that
that was the case. You can go back to the Napster case in the Ninth
Circuit, where the court said that when you make those files available
in at that time the Napster system, you were in fact infringing the
distribution right.
You have the Ninth Circuit more recently in
the Perfect Ten case, which in fact was cited in a recent amicus brief
in one of these peer-to-peer cases as rejecting Hotaling and as stating
that you have to have an actual distribution, the Ninth Circuit seemed
to suggest that the Hotaling-deemed distribution notion may well be an
acceptable notion. I think you can read the Ninth Circuit Perfect Ten
v. Amazon opinion as quite possibly endorsing the notion of deemed
distribution, at least when the person who was deemed to have
distributed actually has a copy of the work, which in fact was the case
in Hotaling, which was not the case in Perfect Ten, which is the case
in the peer-to-peer context.
PROF. HANSEN: So what’s your prediction of the six cases?
MR.
CARSON: You never know how an individual judge is going to react. I
think, once it goes up to the courts of appeal, there are these
arguments, and there are some other arguments as well, which I think
are likely to persuade thoughtful judges in concluding that the mere
offering in this context constitutes distribution.
PROF. HANSEN: Okay.
Brian?
PROF. FITZGERALD: Just some quick comments.
Our
definition of “communication” includes making available in electronic
transmission. We drew that definition from the WCT and the WPPT. The
Cooper case was about a sound recording, so for us that’s a WPPT issue.
In Cooper the judge said that creating a hyperlink is not in itself a
communication because, under our Act 22(6), the person who determines
the content is the person who makes the communication.
Interestingly
enough, when we introduced the criminal provisions, we introduced a
distribution offense that includes communicate, but seems to be broader
than that, potentially putting ISPs in this limbo-land of actually
being potentially liable for distribution even though they haven’t made
the communication as defined under our Act.
For us I would say that
we haven’t had as many cases, but communication is regarded as a pretty
broad right. At the time it was introduced, the examples given were
people who were putting unauthorized software up on Web sites. That was
probably before the P2P era, but that sort of scenario, putting
something up on a Web site, would certainly be taken in Australia, I
think, as making available for access, without more, as Jane says,
without exceptions or other circumstances coming into it.
PROF. HANSEN: Okay.
Ray, if you are right, is there any way then to sue a downloader in a peer-to-peer case?
MR.
BECKERMAN: Of course. You would use traditional copyright law
principles. If you could prove that someone copied something through a
peer-to-peer file-sharing network other than from an authorized user
with a proper license, then that would be a violation of the
reproduction right. And possibly disseminating a copy would be a
violation of the distribution right. It would probably also be a
violation of the reproduction right.
PROF. HANSEN: How would you prove that?
MR.
BECKERMAN: The reason I say “possibly” is because there’s one issue
that the Electronic Frontier Foundation and the U.S. Department of
Justice squared off on in Elektra v. Barker. It was a position on which
my client took no position. The Electronic Frontier Foundation took the
position that under the 1976 Act no ephemeral transmission could
actually be a violation of the distribution right even if it did result
in a physical copy. The U.S. Department of Justice disagreed with that.
PROF. HANSEN: What do you think?
MR. BECKERMAN: I take no position on it. I think it’s probably true.
PROF. HANSEN: What’s probably true?
MR.
BECKERMAN: I think the Electronic Frontier Foundation’s argument is
probably true. But the Second Circuit, which is the law as far as I’m
concerned, had a very difficult time with that issue. They suggested
that there was a possibility, but they ran away from it. So I consider
it a very tough, very difficult issue. I think they are probably right,
but I don’t want to argue that issue.
PROF. HANSEN: We have twelve seconds. Unfortunately, we don’t have time for any questions.
Thank you very much, panel.
Commentary & discussion:
Keywords: digital copyright law online internet law legal download upload peer to peer p2p file sharing filesharing music movies indie independent label freeculture creative commons pop/rock artists riaa independent mp3 cd favorite songs intellectual property
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