"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.

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