The Supreme Court is set to hear oral arguments in Costco v. Omega on November 8, 2010.1 The issue before the court is a rather narrow one – and probably boring to a good deal of the public – but the stakes are high, and a wide variety of interests are keeping a close eye on the case.

Take a look at the lineup of industry groups who have submitted amicus briefs in the case:

In support of Costco

  • Retail Industry Leaders Association
  • National Association of Chain Drug Stores
  • Gamestop Corp
  • Quality King Distributors
  • Sam’s West
  • Target Corp
  • Public Citizen
  • Entertainment Merchants Association
  • National Association of Recording Merchandisers
  • American Library Association
  • Association of College and Research Libraries
  • Association of Research Libraries
  • Public Knowledge
  • American Association of Law Libraries
  • American Free Trade Association
  • Electronic Frontier Foundation
  • Medical Library Association
  • Special Libraries Association
  • Ebay
  • Google
  • NetCoalition
  • Computer and Communications Industry Association
  • Internet Commerce Coalition
  • Intel Corp

In support of Omega

  • The United States of America
  • Association of American Publishers
  • Intellectual Property Owners Association
  • American Watch Association
  • Business Software Alliance
  • American Bar Association
  • Fujifilm
  • Seiko Epson
  • Epson America
  • Epson Portland
  • Software & Information Industry
  • Motion Picture Association of America
  • Recording Industry Association of America

Some pretty big names up in there. So what’s going on in Costco v. Omega? As Joe Mullin at points out, this case “doesn’t involve the kind of cutting-edge issues that copyright lawyers usually grapple with in the digital age.” Instead, it deals with getting a good deal on watches.

Omega manufactures and sells watches around the world. Like most companies in international markets, it engages in “geographical price discrimination.” Basically, it can’t sell the same watch in, say, Paraguay as it can in the US. So, a company like Omega will sell the same product at different prices in different markets, making less profit in some areas to gain market access and making up for it in markets that can support a higher price.

Costco and similar companies in the “secondary” market can take advantage of these different prices. If, after factoring in shipping and transportation, the cost to purchase legitimate products in another country is less than purchasing them in the US, they can buy the product in a country where it costs less and sell it in a country where it costs more.

The secondary market, also known as the “gray” market, is huge – generating tens, if not hundreds, of billions of dollars in all industry sectors worldwide.2 And hopefully you can see the tension here, between manufacturers who want to disseminate their products as widely as possible while turning a profit and retailers engaged in legitimate arbitrage and free trade.

Since these are not counterfeit products, trademark law provides little recourse to manufacturers to control such parallel imports. But can copyright law? That’s the question the Supreme Court is set to answer.

When is a ‘Sale’ a ‘First Sale’?

In the US, under the “first sale” doctrine, a copyright owner can not control further sale or use of a legitimate copy once it has been lawfully sold. The new owner obviously doesn’t have the right to make additional copies, but he is generally free to do what he wants with the copy he has. The sale is said to have “exhausted” the copyright owner’s right to control the copy.

Here’s where things get tricky. “Exhaustion” only applies to the extent a nation’s laws says it does.3 Some countries allow for international exhaustion, meaning an authorized sale anywhere in the world exhausts a copyright owner’s right to control. Other countries follow the principle of national exhaustion: Only an authorized sale within the national boundaries constitutes a “first sale”; an authorized sale outside the country doesn’t, meaning a copyright owner can prevent parallel imports. The Supreme Court must decide whether the Ninth Circuit was correct when it held that US copyright law follows the principle of national exhaustion, or whether US copyright law doesn’t allow copyright owners to prevent importation of authorized copies manufactured outside its borders.

One quick note: the temptation is to think international exhaustion is more beneficial to consumers. “Omega is just greedy, why shouldn’t I be able to get cheaper watches at Costco?” The reality is far more complex:

There is considerable debate concerning whether granting IPR holders the power to segregate markets is good or bad from various perspectives – economic, social, political and cultural. From the standpoint of those favouring open markets and competition, it may appear fundamentally inconsistent to permit intellectual property to serve as a mechanism to inhibit trade. Yet IPR holders argue that there are positive dimensions to market segregation, and corollary price discrimination.4

Hard Cases (Bad Law?)

Costco v. Omega is about the scope of the first sale doctrine as it relates to a copyright owner’s exclusive right of distribution concerning importation; both parties make extensive use of statutory interpretation canons, existing precedence, legislative history, and public policy to make their case. The case is not, as Forbes blog has stated, about the “power of a manufacturer to use copyright law – normally thought to protect creative works like books and movies – to ‘protect’ a tiny logo affixed to an expensive Swiss watch.”

We do normally think of copyright as protecting creative works, not “useful articles” such as watches. It strikes many as odd, then, that Omega can claim copyright protection for its watches by registering a copyright on its logo – and placing a tiny version of the logo on the back of the watch.

The Supreme Court has been “‘careful to caution against misuse or over-extension’ of trademark and related protections into areas traditionally occupied by patent or copyright.” The concern is that allowing copyright-esque claims to be heard under trademark law “would create a species of mutant copyright law that limits the public’s ‘federal right to ‘copy and to use’ ‘ expired copyrights'”, for example.5 But Omega has cleverly sidestepped this issue entirely by obtaining an ostensibly valid copyright on its logo, essentially turning something traditionally considered a trademark into a copyrighted work and bringing the dispute wholly within the confines of copyright law.

However worrisome this pretextual use of copyright law by manufacturers is, it is not the issue the Supreme Court is faced with. The question it is presented with treats Omega’s copyright as a given. The Ninth Circuit made no mention of the validity of Omega’s copyright, and as far as I can tell, the issue did not come up during the District Court proceedings. But the issue does raise concerns in the blogosphere. The conventional wisdom – Omega shouldn’t even have copyright protection in the first place, thus, it shouldn’t succeed in its actual claim.

And therein lies the problem. No matter how unsympathetic Omega is, or how improperly it has extended copyright law, the Supreme Court’s decision in this case will apply equally to the core copyright industries – book publishers, film studios, record labels, etc. The policy considerations for these industries differ in many ways from those of consumer goods manufacturers and resellers.

The amicus brief filed by the RIAA and MPAA devotes considerable time to discussing how market segmentation benefits both creators and consumers while ensuring wide dissemination of new works. The latter benefit is especially relevant to copyright policy, as dissemination is one of the inherent goals of the law.

These industries increasingly rely on foreign markets to recoup the costs of creation. Professional screenwriter William Martell notes (in one of his characteristically humorous and fascinating posts) that the average US film makes around 60-70% of its money outside the US and Canada.

I doubt the Court will fail to consider that any decision it makes will impact the core copyright industries. What I don’t doubt, though, is that as this case progresses we will see less discussion about the actual issue of the case and more discussion about Omega’s extension of copyright law – with the accompanying hue that Omega’s actions implicate all creators and industries who rely on copyright.


  1. Recordings of the arguments will be available by the end of the week at thanks to the Court’s new policy. []
  2. The Seattle Times cites $58 billion as the size of the secondary market in technology industry alone. []
  3. TRIPS – the international agreement on intellectual property that governs the majority of the world’s countries – leaves the point at which exhaustion occurs up to each individual nation. []
  4. UNCTAD-ICTSD, Resource Book on TRIPs and Development, Exhaustion of Rights. []
  5. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23, 34 (2003). []

Wow, I can’t believe it’s been nearly two months since I began this blog!

Today’s post will be brief. I want to welcome all the new readers and subscribers who have found this site over the last few weeks. I hope to continue to provide the same quality of content that brought you here in the future.

Since this is a relatively new site, there are still a few wrinkles. For example, the commenting procedure is still on the WordPress default mode, meaning I have to manually approve all comments before they appear. The good news is, I believe that once you’ve had a comment approved, future comments are automatically approved. For now, I have it this way to keep out spam comments, and even a new site like this attracts quite a bit of spam! But bear in mind that if you’re a first time commenter, your remarks won’t show up immediately.

Also, be sure to check out the sites on my Blogroll if you haven’t already: the 1709 Blog, Copyright Litigation Blog, Copyrights & Campaigns, Music Think Tank, Plagiarism Today, and The Cynical Musician – they all consistently provide excellent articles about copyright and the content industries, from a variety of perspectives. The list will likely be growing in the  next couple weeks as there are plenty of great sites out there.

I did want to point out a couple of new – and “new to me” – sites that may be of interest to my readers:

Clannco: Art and Law is a blog devoted to exploring the relationship between art and law written by Sergio Muñoz Sarmiento, an artist and a lawyer. I originally came across the site after seeing Sergio’s response to my piece on artistic expression, the first amendment, and copyright law. The rest of the site provides an insightful look at issues and topics which don’t often garner much attention on other sites.

Copygrounds is an “academic discussion forum” maintained “through the collective effort of Brett Caraway and students from the Department of Radio-Television-Film at The University of Texas at Austin.” The site is set apart by its attraction of some notable guest bloggers so far. Be sure to check out the latest posts from Matt Oppenheim, former VP at the RIAA and plaintiff’s attorney at the Joel Tenenbaum trial, discussing the Tenenbaum trial and statutory damages in P2P cases.

John Degen, Literature Officer for the Ontario Arts Council, has a personal blog I recently came across. He’s one of many Canadians who have noticed that online discussion of Canadian copyright law is heavily dominated by one particular law professor; his blog covers a variety of issues from a creator’s perspective.

What other good sources of information about copyright and the digital world are there? And what topics would you like to see covered here?

Let’s make this an “introduce yourself” slash “open thread” entry. Plug yourself, plug your work, or just say “hi” in the comments. I’d like to hear from everyone reading!

The First Amendment is perhaps the most famous part of the Constitution. Defending People’s blogger Mark Bennett ran a tally of how many times each article and amendment (of the ten included in the Bill of Rights) in the Constitution was specifically mentioned in the week leading up to Constitution Day; the First Amendment was mentioned by bloggers nearly as many times as all others combined. In the words of the Oxford Companion to the Supreme Court of the United States, the Amendment “reflects vital attributes of the American character,” “is the cornerstone of the nation’s liberty,” and “is known and cherished by virtually all citizens.”

It may come as a surprise then, that very few cases concerning the First Amendment arose in the first hundred or so years of its existence. It wasn’t until after World War I that the Supreme Court began to develop many of the free speech doctrines we see today.1

What does this have to do with copyright? Well, if you take a closer look, you can see an inherent tension between the First Amendment and copyight law. The First Amendment prevents the government from restricting freedom of speech; copyright restricts the ability of a person to “speak” using the words of another.2

Like the development of modern free speech doctrines, this recognition of a conflict between the First Amendment and copyright law is a relatively recent phenomenon. It wasn’t until about the 1960s when the idea began to receive attention from legal scholars.3 It wasn’t until 1985 that the “kernels” of the modern doctrines addressing the tension between the First Amendment and copyright law were sown by the Supreme Court, in Harper & Row v. Nation Enterprises. In 2003, in Eldred v. Ashcroft, the Court fleshed out the current state of the law concerning the relationship between the First Amendment and copyright.

Simply put, the Court said, First Amendment concerns are adequately addressed by “copyright’s built-in free speech safeguards.” It noted two of those safeguards: the “idea/expression dichotomy” and the doctrine of fair use. It also suggested that there are supplemental safeguards, like copyright law’s exceptions for libraries and archives.

Criticisms of this approach began in earnest after Harper & Row and multiplied in the wake of Eldred.4 The overall theme is that copyright’s safeguards are not, in fact, adequate to address First Amendment concerns – specifically in cases of what I label “creative infringement.”5

But something is missing in the discussion about copyright and the First Amendment. For all the attention given to the First Amendment concerns of alleged infringers, there is scant attention devoted to the First Amendment concerns of infringees – artists and creators.

Artistic Expression and the First Amendment

Part of this lack of attention stems from how the subject matter of copyright – artistic expression – is viewed. As constitutional scholar Sheldon Nahmod states, “Artistic expression has been assigned a derivative and second-class status in the views of many first amendment thinkers, the Supreme Court, and other courts.”6 Much First Amendment scholarship focuses on protection of political speech, with other forms of speech – like artistic expression or commercial speech – relegated to the margins of the discussion.

This slighting of artistic expression in First Amendment theory is not historically unusual; many philosophic schools of thought have placed relatively little importance on the role of art in society. Some have been downright skeptical of artistic expression. Nahmod notes that, “According to Plato, the state must control art for the good of the society as a whole. Otherwise, art threatens the stability of the state.”7 He adds that contemporaries of Marx, too, “are so convinced of art’s influence that they view art as an appropriate subject for state control.”8

Artistic expression has been subjected to censorship in the US throughout its history, with restrictions largely aimed at sexual content. Book bans are not unheard of; the film industry has a storied past involving first local government ratings boards and, later, voluntary industry ratings systems. Industry groups play a role in protecting the slighted First Amendment rights of artists and creators. The RIAA states that part of is its mission is working to protect the “First Amendment rights of artists and music labels”; lest the more cynical readers think this is just PR lip-service, I point out the amicus brief filed just last week by the MPAA, RIAA, and other industry groups arguing that California’s recent law prohibiting the sale of violent video games to minors is unconstitutional.

But artistic expression can serve other purposes that make it, even absent any objectionable content, unworthy of more than second-class status in scholarly discussion. It can often be used as entertainment, a diversion from the drudgery of ordinary life. Here, we can draw analogies between artistic expression as entertainment and other forms of entertainment throughout history to see that this low opinion of artistic expression is not an anomaly. Sports have, at various times, been the subject of regulation or outright banning by governments. In England during the Middle Ages, soccer, bowling, golf, and other sports were the subject of bans at various times. Often, these bans reflected the idea that these sports diverted young men’s energy away from military training and were thus a threat to law and order.9

Despite its at-times uncomfortable fit within First Amendment theory and a general snubbery throughout history, artistic expression flourishes in the US. Movies and television shows created here are watched around the world. Jazz, rock and roll, and hip-hop have all arisen within the US. As a result of all of this, artistic expression in the US can sometimes find itself in an odd position. For example, in the late 80s and early 90s, several record store clerks were arrested for selling 2 Live Crew albums to minors;10 in 1994, the highest court in the US upheld that same group’s right to release a ribald, dirty parody of Roy Orbison’s Pretty Woman as fair use.11

Artistic Expression, the First Amendment, and Copyright

Attention to artistic expression’s place within First Amendment theory remains underdeveloped. However, within discussions of copyright law, the role of artists’ First Amendment rights is practically ignored.

What do I mean by the role of artists’ First Amendment rights within copyright law? Courts that have addressed the tension between the First Amendment have, as I stated above, said that copyright law has built in safeguards to protect the First Amendment rights of those who make use of copyrighted works. But there’s another side of the coin. In Harper & Row - repeated later in Eldred – the Supreme Court declared that “the Framers intended copyright itself to be the engine of free expression.”12 The metaphor adopted by the court explains how copyright and the First Amendment accomplish the same goal – the dissemination of new ideas – through distinct means. Copyright pushes the dissemination – by providing an incentive to create new expression – while the First Amendment removes the obstacles in the way of that dissemination.

In many ways, the copyright incentive provides the most free method to spread new ideas. We don’t have to rely on the wealthy to fund whatever expression captures their fancy. We don’t have to rely on government to fund whatever expression it deems serves the state. Instead, we have a society where the values of artistic expression – as beauty, sublime, frivolity, or entertainment – and the value of artistic expression is determined solely by its members and the market. Patrick Ross, of the Progress and Freedom Foundation, puts it this way:

Our culture is remarkably vibrant and expressive, and is consumed around the world (even if many of those global consumers enjoy deriding our culture while consuming it). We embrace freedom of expression. We don’t burn down buildings when someone publishes a cartoon we find offensive. A bookstore can display the latest David McCullough biography beside a paperback collection of bathroom jokes. In fact, our culture seems pretty indestructible (we’ve survived the lip-synching scandals of Milli Vanilli and Ashlee Simpson, after all). While there will always be those who appoint themselves guardians and protectors of our culture, we can recognize that they aren’t truly needed. That is, they aren’t needed as long as artists retain their longstanding role in the culture. Artists, through the flexible exercise of their rights bundles, allow the culture to be enriched. No corporation can lock that culture down, and no p2p pirate can significantly erode that culture, as long as society collectively thanks its artists by respecting property rights.

But you won’t find much discussion of copyright’s role in the dissemination of new ideas when First Amendment concerns are raised in the context of copyright law. The “engine of free expression” metaphor is mentioned only in passing, ignored, or even dismissed as a “judicial sound bite.”13 That’s just wrong. In any case of “creative infringement,” there are two sides to the “free expression” coin. Any discussion of free expression rights which focuses on the rights of only one side (the alleged infringer) while ignoring the other (the infringee) is incomplete.


  1. The Oxford Companion cites Justices Holmes’ and Brandeis’ dissent in Abrams v. United States (1919) as sowing the “kernels of modern free speech doctrine.” []
  2. I use the terms ‘speak’ and ‘words’ here in a very broad sense, as copyright protection extends to subject matter beyond the written word. []
  3. See, e.g., Melville Nimmer, Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?, 17 UCLA L. Rev. 1180 (1969); Lionel Sobel, Copyright and the First Amendment: A Gathering Storm?, 19 Copyright Law Symposium (ASCAP) 43 (1971) (predicting a “coming clash between ‘free speech and press’ principles and copyright clause exclusive-rights principles.” []
  4. See footnote 2 of Alan Garfield, The Case for First Amendment Limits on Copyright Law, for a sampling of several dozen books and articles exploring the subject. []
  5. One such example of the relevance of this distinction regarding the First Amendment and copyright is provided by Mark Lemley and Eugene Volokh, who agree that “there’s no First Amendment problem” for preliminary injunctions in “piracy and other ‘easy’ cases” of copyright infringement. Freedom of Speech and Injunctions in Intellectual Property Cases (1998). But free speech concerns have also been raised in cases of “consumptive infringement” – albeit on issues outside the scope of copyright law. ((See the EFF’s amicus brief in Achte-Nuente v. Does for one such example. []
  6. Nahmod, Artistic Expression and Aesthetic Theory: The Beautiful, the Sublime and the First Amendment, Wisconsin Law Review (1987). []
  7. Nahmod, p. 227 []
  8. Nahmod, p. 224 []
  9. Andrew Pittman, The Interaction of Sport and Law: Where Has it Been, Where is it Now, and Where is it Going?, 2 Journal of Legal Aspects of Sport 64 (1992). []
  10. Steve Jones, Ban(ned) in the USA: Popular Music and Censorship, 15 Journal of Communication Inquiry 73 (1991). []
  11. Campbell v. Acuff-Rose Music, 510 US 569 (1994). []
  12. 471 US 558 []
  13. Michael D. Birnhack, The Copyright Law and Free Speech Affair: Making-Up and Breaking-Up, Idea: Journal of Law & Technology 43 (2003): 233. []

I’d like to take a step back from discussions about copyright specifics to make a general observation. We can distinguish between two types of copyright infringement – let’s call them “consumptive” infringement and “creative” infringement.

“Consumptive” infringement includes what is generally called “piracy.”1 This is the type of file-sharing that has flourished on the internet, whether we’re talking about music, movies, books, software, images, or any other copyrighted subject matter. Consumptive infringement involves the reproduction and distribution through unauthorized channels of what is generally offered through legitimate ones.

“Creative” infringement, by contrast, involves the use of existing works, without permission, to create new works. It includes transformative uses, derivative works, and works which may be protected by fair use. This category also includes what has been described in academic literature as “remixes” or “mashups.”

I define consumptive infringement in such a way that it is de facto infringing at law. A work has been reproduced, in its entirety, for the sole purpose of substituting a legal use of the work. Creative infringement, however, is a grey area, and can only be declared an infringement by a court. With creative infringement, the line between infringement and non-infringement is necessarily fuzzy and undefined. Inherent in this category is the recognition that all creative works, to some extent, borrow from existing works. Some, like Men at Work’s Down Under, may be determined to have borrowed in a legally infringing manner, while others, like 2 Live Crew’s Pretty Woman, may be determined to have borrowed in a legally acceptable manner.

The doctrines used to determine whether creative infringement exist occupy close to 99% of copyright casebooks and a solid proportion of academic literature. Substantial similarity, fair use, the idea-expression continuum, de minimis – all these have been developed and employed by courts to sort perfectly acceptable uses of existing copyrighted works from those that cross the line into infringement.

I’m certainly not the first to note a distinction between these two types of infringement; I’m not even the first to make use of the term “consumptive infringement.” In Copyright and the Rule of Reason, author and law professor Christopher Sprigman defines “consumptive infringement” as those “forms of infringement involving the reproduction and distribution of copies that are either exact or near enough so that they are almost certain to compete with the original work for patronage.” He goes on to say that this “category of consumptive infringement will apply to a large percentage of copyright cases that plaintiffs will wish to bring. Most copyright violations involve the making and distribution of exact or near-exact copies. Virtually all of the infringement via peer-to-peer networks falls into this category.”

Why bother with this distinction?

While Sprigman makes the distinction between “consumptive” infringement and other types of infringement to propose a new legal standard, my purpose here is to merely note that a distinction exists to aid in our discussion of copyright. As noted above, cases of creative infringement occupy the vast majority of copyright discussion. When is a use fair? Where is the line between an idea and an expression? Consumptive infringement, however, is pretty cut and dry. It competes precisely with the rights that copyright law was designed to protect. Bootlegs and torrents act as displacements for the consumptive offerings of content creators.

The distinction I make is not often noted but apparent in practice. The RIAA lawsuits targeted those who shared those songs that record labels offer for sale. Criminal copyright infringement charges can be brought for any type of infringement, but as far as I can determine, the only cases which have historically been brought have been against those who have engaged in widespread consumptive infringement. And while you can find a flourishing mashup scene online, not a single lawsuit has been brought against a mashup artist, even a commercially successful one like Girl Talk.2

It should not be surprising that the grey areas of a law receive the most analysis while the black and white cases generate the most legal action. Copyright law is no exception. But here’s the problem: the entirety of copyright law has become somewhat of a boogeyman. A good portion of the online public has grown increasingly skeptical of content industries.

As a result, all aspects of copyright law have been placed under a microscope. Any and all deficiencies in court’s applications of substantial similarity, fair use, or the idea expression continuum have been duly noted. The shortcomings of these problems are transposed on discussions involving efforts to manage piracy.

It’s as if content creators are not justified in addressing piracy as long as all these other problems with copyright law remain.

What we need to remember is that any substantive problems with copyright law are independent of the problems of consumptive infringement. I don’t think I’m going too far out on a limb to say that most creators, whether large or small, are primarily concerned about the effects of consumptive infringement.

It’s also fair to say that while creative infringement occupies the vast majority of casebooks and academic literature, consumptive infringement occupies the vast majority of court dockets. Creators of all stripes are rightfully concerned about the effects consumptive infringement has on their livelihood, and shouldn’t have to become apologists for any perceived problems involving creative infringement.

Bottom line, I think it’s important to recognize this distinction between consumptive and creative infringement. Rational discussion of copyright policy is aided by separating the two. I’ve remained deliberately broad and general in this article; it’s my expectation to use this as a launching pad for more detailed topics in the future.


  1. Noted copyright scholar William Patry defines “piracy” as the “massive, commercial, unauthorized reproduction of copyrighted works.” []
  2. The New York Times notes the lack of legal action against mashup artist Girl Talk. A number of sites offering Danger Mouse’s Grey Album, one of the most famous mashup albums, received cease and desist letters from EMI, but the label never pursued further action. I’ve been able to find only one other report of a cease and desist sent to a mashup artist. []

Four weeks ago, I began a walk through the proposed Anti-Counterfeiting Trade Agreement, a plurilateral trade agreement currently in negotiations that has sparked a great deal of Fear, Uncertainty, and Doubt (FUD) online. Using the official draft text of the agreement released last April, I laid out each provision of the ACTA and compared it to provisions in US law that corresponded. You can see the previous entries in this series here:

The goal of this exercise was two-fold. First, I have not seen a similar examination of each provision of the ACTA. I have seen concerns that it will result in changes to existing US law. I thought a side-by-side comparison of provisions from both would be helpful in this regard.

More importantly, many of the more wild concerns seem to stem from those who simply did not understand the scope of the agreement nor understood the scope of existing copyright law. If you don’t know what is in the ACTA, it’s easy to buy into the FUD surrounding it. Even if you’ve read through the proposed provisions (either in the officially released draft text that I worked off of or one of the many leaked texts), it’s still easy to accept the scary stories being told if you can’t put it into the context of existing law. In other words, it’s easier to buy into apocalyptic tales that the ACTA will implement radical changes to the law if you aren’t aware that its provisions mirror already existing law.

What general observations can we make after looking at this side-by-side comparison? First, as far as copyright law goes, nothing in the ACTA jumps out that would require changes to US law. Second, the language of the treaty comports with Ambassador Ron Kirk’s responses in his letter to Senator Ron Wyden about concerns with the flexibility of the treaty and its effect on fundamental rights and civil liberties. Few, if any, of the provisions “require” a Party to enforce copyrights in a set way, while recognition of due process and privacy are reiterated in many provisions.


This comparison of proposed ACTA provisions with corresponding US copyright law is only that. It does not show what, if any, differences exist between the ACTA and existing patent or trademark law, which will likely be covered under the agreement. It does not show how the laws of any country besides the US compare to the ACTA provisions. It also does not make any judgment about existing US law.

I also at no point implied that “ACTA will change US law” is the only criticism aimed at the proposed agreement. Certainly, as with any proposal of any sort – whether a trade agreement, legislation, policy directive, etc. – criticisms will exist. Indeed, one criticism is that it is too much like US law; the ACTA is an attempt by the US to “export” its framework of copyright law to other nations. Critics also label those negotiating the treaty as engaged in “policy laundering.” There are concerns that the treaty will “lock in” certain aspects of copyright law that should remain flexible to respond to rapidly changing technologies. You can find plenty of sites exploring these criticisms, so I’ll refrain from saying anything more about them, but I did want to take a quick look at one of the most common criticisms about the ACTA: the lack of transparency in the negotiating process.


A bit about “transparency.” One of the biggest complaints about the agreement have concerned a supposed lack of transparency over the negotiating process. The proposed treaty is nearly always characterized as “secret.” It’s difficult seeing how this charge of “secrecy” holds up; the United States Trade Representative has an entire page devoted to the ACTA, with various documents available, including the draft text of the treaty that I have been working off of during this series of articles. As several commentators have pointed out, the USTR has made other information available to those outside the negotiating process – subject to a rather standard nondisclosure agreement – including Public Knowledge, Google, and the Center for Democracy and Technology.

Placing aside the hyperbolic criticism of the treaty’s “secrecy,” the question remains whether the negotiating process is sufficiently “transparent.” We accept that transparency plays an important role in democratic institutions. Noted philosopher and “patriarch of utilitarianism” Jeremy Bentham wrote, “Publicity should help constrain the members of the assembly to perform their duty; secure the confidence of the people; enable the assembly and the governors to know the wishes of the governed; enable the electors to act from knowledge; and generate the amusement that by itself increases the happiness of the people.”1 We want to know the language of bills introduced in Congress, how our representatives have voted in the past, how our tax dollars are being spent; knowing these things helps us on election day and keeps government officials in line.

Treaty negotiations, however, are a different kind of creature then the types of political transactions Bentham is referring to and what we generally want information about. Indeed, it has long been customary for trade negotiators to refrain from disclosing every proposal or early draft to the public, and the ACTA negotiators have simply acted in the same fashion. When you’re negotiating complex issues among a diverse group of parties, confidentiality allows a more free exchange of ideas and facilitates negotiation and compromise. The Founding Fathers recognized these benefits when they chose to draft the Constitution in private.

The “wrong” kind of transparency during treaty negotiations can be more detrimental than beneficial. Insisting on keeping the doors open at every stage of the process accomplishes little more than crippling the process. Those who are opposed to the entire process insist on this kind of transparency as a tactic – they want the negotiation process to fail. As stated above, the transparency of the ACTA negotiations is on par with other agreements; the draft text and other documents are publicly available. I doubt any level of transparency will satisfy the “secret treaty” critics, and I doubt any will say when negotiations are finished, “Well, I agree with the goals and provisions of the treaty, I just wish you would have kept us more in the loop.”


  1. “Of Publicity,” Public Culture (1791/1994). []

Happy Constitution Day!

Today marks the very date – 223 years ago – the US Constitution was ratified. Since 2004, this date has officially been known as Constitution Day, and has been set aside to encourage education about the framework of law that serves as the foundation for US government.1

US copyright (and patent) law stems from the Constitution. Article 1, Section 8 reads, in part:

The Congress shall have power …

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

To celebrate the occasion, let’s take a look at how this clause made it into the Constitution on September 17, 1787.

Writing the Constitution

We’ll begin with a look at the drafting of the Constitution as a whole. We probably recall from high school the general story of what lead to the drafting of the Constitution.2 The United States of America, having successfully secured independence from England, were operating under the Articles of Confederation. Some founders – including George Washington, Alexander Hamilton, and James Madison – felt the centralized government established by the Articles was inadequate to address the many challenges facing the new nation. In September 1786, delegates from five of the states met to discuss ways to remedy the defects in the federal government, resulting in the recommendation for a broader convention, to be held in Philadelphia the following May. But while the Philadelphia Convention began under the premise of revising the Articles, its purpose quickly became the creation of an entirely new form of government for the thirteen states.

“Quickly” is the operative word for a lot of the work done at the Convention. Looking at the timeline of the Constitution’s drafting, I’m astonished at how fast a group with many diverse interests were able to achieve a result with such a broad purpose. The purpose was not simply to address the mundane concerns of interstate squabbles and foreign trade, but to come as close as possible to an ideal form of republican government. The delegates looked at Greek, Roman, Renaissance, and Enlightenment philosophers as well as the experiences of English government and the thirteen state governments to craft a new framework. The result was, according to historian Forrest McDonald, “a new form of government, unprecedented under the sun. Every previous national authority either had been centralized or else had been a confederation of sovereign states. The new American system was neither one nor the other; it was a mixture of both.” It is also a system that, for all its criticisms, is still chugging away 223 years later.

The Convention kicked off May 14, 1787.3 On June 23, a Committee on Detail was established to draft a document that incorporated the various plans and proposals from the Convention. The Committee presented the first draft of the Constitution to the Convention on August 6. On September 8, a Committee on Style was created to incorporate changes brought up by delegates after discussing the first draft and revise the text of the Constitution. This Committee presented the final draft to the Convention on September 12, who ratified and signed it on September 17. And that’s how you make an America.

The Copyright Clause

Now that we have a general idea of how the Constitution was drafted for context, let’s see how the copyright clause became a part of the Constitution. The historical record presents some challenges to this task. The Convention was held in secret, and most of our knowledge of its proceedings come from the official Convention journal of secretary William Jackson as well as a private journal kept by Madison. From those sources, we see that the first draft of the Constitution did not include the copyright clause. A number of proposals for additional Congressional powers were made following the first draft. These proposals and other pending issues were referred to a Committee of Eleven, which revised them and submitted final versions to the delegates for approval. Among the recommendations of the Committee was granting to Congress copyright power, a recommendation that was unanimously agreed to by the delegates without debate. The recommendation matched exactly the language in the final draft of the Constitution.

In the discussion above and below, I’m drawing largely on the tremendous work done by law professor Dotan Oliar. Oliar has carefully examined historical records to piece together the story of the Constitution’s copyright clause. I highly recommend his publications Making Sense of the Intellectual Property Clause: Promotion of Progress as a Limitation on Congress’s Intellectual Property Power and The (Constitutional) Convention on IP: A New Reading for all the details of what I’m summarizing here.

Oliar traces the Committee of Eleven’s proposed copyright clause back to eight separate proposals for additional Congressional powers made by both Madison and South Carolina governor Charles Pinckney on August 18.4 They proposed that Congress have the power –

  • to secure to inventors of useful machines and implements the benefits thereof for a limited time
  • to grant patents for useful inventions
  • to secure to literary authors their copyrights for a limited time
  • to secure to authors exclusive rights for a certain time
  • to establish a university
  • to establish seminaries for the promotion of literature and the arts and sciences
  • to encourage by proper premiums and provisions the advancement of useful knowledge and discoveries
  • to establish public institutions, rewards and immunities for the promotion of agriculture, commerce, trades, and manufactures

At first glance, some of these proposals seem to have little to do with the power that was eventually adopted. However, Oliar convincingly argues that these proposals best explain the clause’s “ends-mean” structure. The “ends” of the clause is the promotion of “the progress of the useful arts and sciences.” The “means” by which this end is achieved is the “securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” None of the proposals above combine both the specific end and mean of the final clause. Instead, they form a pool of various ends and means that were considered by the Committee, which rejected some means – universities and premiums, for example – in favor of exclusive rights in writings and discoveries and combined the ends. Because the historical record is largely silent on how the Committee settled on its final language, we cannot know for sure what role these eight proposals played, but Oliar presents a reasonable hypothesis.

Motivation for Including the Clause

Similar to the lack of record regarding the textual origins of the clause, the historical record regarding the motivation for including the clause is scant. Perhaps it was included to reflect the idea that, as Convention delegate James Wilson suggested, the primary objective of government is the “cultivation and improvement of the human mind.” More likely, it reflected what was by then a well-established practice. The laws and traditions of the young United States stemmed primarily from England. English government was in the business of granting copyright since the Statute of Anne in 1710, and many of the individual colonies continued this practice.

The only mention of the clause in the Federalist Papers – a series of articles written by Hamilton, Madison, and John Jay advocating the ratification of the Constitution – comes in Federalist No. 43. There, Madison writes:

The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases, and most of them have anticipated the decision of this point, by laws passed at the instance of Congress.

This suggests that there was little debate over the granting of copyright itself. More important to Madison was the fact that the federal government alone should hold this power, rather than the individual states.

Whatever the origins, this clause in Article 1, Section 8, of the Constitution provides the foundation for all US copyright law today. Debate over its meaning and intent, its scope and its structure, continues today, 223 years after it was written.


  1. The more cynical among us would say instead that any educational institution receiving federal funds is required to provide educational programming on the Constitution on this day. []
  2. I apologize, as my retelling of this general story is also primarily based on what I recall from high school (and Wikipedia). []
  3. Though due to the difficulties of travelling at the time, a quorom wasn’t present until May 25. []
  4. Making Sense of the Intellectual Property Clause: Promotion of Progress as a Limitation on Congress’s Intellectual Property Power, pp 1805-10. []

On September 13, 2010, the Library of Congress released the following:

Register of Copyrights Marybeth Peters has announced her intention to retire effective December 31, 2010. Ms. Peters has served as Register of Copyrights since August 7, 1994, a tenure longer than any other Register with the exception of Thorvald Solberg, the first Register. Her exemplary service to the nation began in the Library of Congress in October 1965, and she began working in the Copyright Office in 1966. During her 45-year career, she has held positions at all levels in the Office including acting general counsel, policy planning advisor, chief of the Examining Division, chief of the Information and Reference Division, attorney-advisor, and music examiner. She also served as a consultant on copyright law to the World Intellectual Property Organization in Geneva (1989-1990). For further information, go to the Copyright Office website. The Library of Congress has posted a vacancy announcement for the position of Register of Copyrights. Interested parties are invited to apply. For further information, go to the Library of Congress website.

I would like to extend my thanks to Marybeth Peters for her exemplary service as this nation’s 11th Register of Copyrights. Marybeth Peters presided over the US Copyright Office during a period of significant changes not only in technology and communications, but in the role of the Office itself.

When Peters assumed her post, Friends had yet to premiere. More importantly, the internet was still on the outskirts of public awareness. In a 1993 article, the New York Times covered the introduction of the Mosaic web browser – “the first ‘killer app’ of network computing”, credited elsewhere as popularizing the world wide web. Only 994 .com domains were registered at the beginning of 1994, growing to 3,712 by the end of the year.1 Since then, we’ve seen the introduction of internet services like Google, YouTube, Napster, iTunes, and Hulu. It’s fascinating to see how much the technological landscape has changed during Peters’ time as Register. Consider this: in the last round of DMCA exemption proceedings that went into effect this past July, her Office recommended an exemption for circumventing protection on DVDs for certain educational and noncommercial uses. When she took office, DVDs had not yet been invented.2

Peters saw – and played varying roles shaping – changes in United States copyright law to address these rapid technological advances: the Digital Performance Right in Sound Recordings Act of 1995, the Digital Millennium Copyright Act of 1998 (DMCA), the Copyright Term Extension Act of 1998, and the PRO-IP Act (2008), to give a few notable examples. Internationally, she was there to see the inception of the World Trade Organization and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), considered “the most important multilateral instrument for the globalization of intellectual property laws.” It should not be surprising, then, that the nature of the Copyright Office itself also changed significantly while Peters was at the helm.

The US Copyright Office

Despite the increasingly public discourse on copyright law, the role of the executive agency3 that is the Copyright Office is still somewhat mysterious. The United States Copyright Office was formed in 1897 as a department within the Library of Congress. Historically, the Office’s duties have been limited – accepting and recording copyright registrations. It should be noted that the Office’s duty here is ministerial. Its granting or denial of registrations is not determinative of what precisely is protected by copyright, but rather whether the work fulfills the minimum requirements for protection – is it proper subject matter as defined by the Copyright Act, is the form properly filled out, did the check accompanying the application clear, etc.

The Copyright Office does play an important advisory role to Congress, other executive departments, international bodies, and foreign governments regarding copyright law and policy. It played a pivotal part in the efforts which lead to the 1909 and 1976 Copyright Acts. Congress often relies on the Office to prepare studies on specific areas involving copyright or contribute testimony at Congressional hearings.

But until recently, the Copyright Office had almost no role in directly administering substantive copyright law and policy.4 This changed with the passage of the DMCA, which gave the Office the authority to conduct triennial rulemaking procedures to determine exceptions to the anti-circumvention provisions of 17 USC § 1201. For the first time in its history, the Office had substantive rule-making authority. As the issues presented in copyright law become more complex, it’s not hard to imagine that Congress will rely on the Copyright Office to administer that law more.

What’s Next

Whoever the next Register of Copyrights will be, he or she is guaranteed to preside over an office with an increasingly expanded role. Peters’ term coincided with the federal government placing increased priority on enforcing intellectual property rights. Undoubtedly, this trend will continue during the next Register’s term, and I think it’s fair to say the Copyright Office itself will continue to see a growing role in administering copyright law and policy.5 The scope of international copyright law will continue to expand; the final draft of the Anti-counterfeiting Trade Agreement is expected to be completed by the end of this year, with the acceptance and implementation by the US likely to be a major issue during the first couple years of the new Register.

I certainly have no inside information about likely candidates for the next Register of Copyrights, and I have yet to come across any predictions. Still, I’d like to hazard some guesses based on historical practice. Most previous Registers have come from within the Copyright Office itself. The very first Register, Thorvald Solberg, had played an active role in the copyright functions of the Library of Congress prior to being tapped by Librarian John Russell Young to head up the newly created department. Since then, only four of the fourteen Registers and Acting Registers – Clement Lincoln Bouvé, Sam Bass Warner, David L. Ladd, and Ralph Oman – had not worked within the Copyright Office before being appointed (though it should be noted that even those four have had some experience in the federal government).

If we look at the chart showing the Organization of the US Copyright Office, we can see several candidates for the position if selection follows the historical pattern: David O. CarsonMaria Pallante, and Nanette Petruzelli (who spearheaded the change from separate registration forms for different subject matter to a consolidated form) are all “next in line” in the hierarchy. All seem fine candidates, all have a combination of public and private experience and actively involved in copyright policy outside their work at the Copyright Office. I expect we’ll hear more details about the next United States Register of Copyrights very shortly.


  1. []
  2. According to Wikipedia, the specification for DVDs was finalized December 1995 and introduced to the market in November 1996. []
  3. Despite some lingering doubts, the Copyright Office is indeed an executive agency. I have the proof, let me show you it. []
  4. For a detailed look at the institutional evolution of copyright law administration, check out Joseph P. Liu, Regulatory Copyright, 83 North Carolina Law Review 87 (2004). []
  5. Another plug for my paper, Copyright Reform Step Zero, where I argue that Congress should, in fact, delegate the bulk of administering copyright law to the Copyright Office. []

H/T to Eric E. Johnson at Blog Law Blog for providing in-depth coverage of the Righthaven lawsuits and Jonathan Bailey at PlagiarismToday for his thoughts on this subject.

Righthaven continues to file new lawsuits, seemingly unabated, adding seven new complaints to the dockets last week. That brings the total number of lawsuits up to 124 as of the writing of this article, according to site

For those not familiar with Righthaven, it’s a private company engaged by the Las Vegas Review-Journal to protect its news content online. Righthaven’s strategy involves searching online for sites where Review-Journal articles have been republished, buying the copyright to those articles, and then filing an infringement suit against the site. This campaign against infringement began earlier this year, coinciding with an editorial by Review-Journal publisher Sherman Frederick, who announced point-blank (about copyright infringement): “We’re not taking it anymore.”

Those sued so far include everyone from a “cat blogger” and a real estate agent, to both right-wing and left-wing forums, the Nevada Democratic Party, NORML, and most recently, and perhaps most bizarrely, Nevada Senate candidate Sharron Angle – a candidate the newspaper is expected to endorse.1

Competitor Las Vegas Sun has committed to reporting developments in the Righthaven lawsuit story; their site provides numerous articles on the unfolding events. In addition, you can find a large amount of court filings from the various Righthaven suits at Scribd.

Opposition to the lawsuits is growing, not only from interest groups and the general public, but also from the defendants themselves. Some are responding to the complaints with allegations that Righthaven is misusing the legal system. In fact, I don’t even think it’s particularly noteworthy to register your opposition to Righthaven’s campaign, as public opinion appears almost universally critical. What is noteworthy is pointing out the conflation between criticism of Righthaven’s methods and criticism of copyright law in general.

My take on these lawsuits echoes what many others have noted. The complaints themselves have merit. While there are some issues which can be addressed, particularly fair use, the case for copyright infringement is pretty cut and dry.

The problem is the Review-Journal’s approach it has taken. It is using litigation as a way to make money,2 and the lawsuits border on vexatious. The way it skips over resolving cases of infringement privately and heads straight to filing a lawsuit undermines the strong public policy for using the legal system as a last resort.

I cannot stress enough that criticism of Righthaven is about its litigation methods, not about the validity of copyright laws and enforcing those laws. If you replace “copyright infringement” with some other cause of action, the criticisms mentioned above would remain the same. Unfortunately, opponents of effective copyright enforcement are more than happy to use the Righthaven lawsuits as yet another example of content industries run amok. This only adds to the challenges of all other content owners who are trying to address dealing with infringement in a digital world.

Safe havens and Fair Use

Let’s take a quick look at the copyright issues raised by these lawsuits. As I said, in many cases they are cut and dry. The Review Journal, as the copyright owner, has the exclusive right to reproduce and distribute its content (and the right to assign its copyright to parties like Righthaven, though the way it is exercising this right raises other questions that I’ll address later). Anyone who reproduces its content without authorization is infringing. As a strict liability tort, it doesn’t matter what the infringer’s intent was in reproducing the content, nor whether the infringer profited from the infringement. Of course, the alleged infringer must have taken more than an insubstantial portion of the original work to be liable. This seems to be the case in most of the Righthaven lawsuits. Sharron Angle, for example, reproduced two individual articles in their entirety on her site.

One defense often mentioned in connection with these lawsuits is the safe harbor provided by the Digital Millennium Copyright Act (DMCA). The law protects online service providers from liability for infringement, providing the famed notice-and-takedown procedure where a content owner can request infringing material removed without resorting to the courts as Righthaven has done. I think the applicability of the DMCA is limited in these cases, however. The DMCA safe harbors only protect service providers from secondary liability – liability for users posting content to forums or BBS’s. It doesn’t apply to direct infringement, and a number of the lawsuits were filed against owners of personal sites and blogs who posted the content themselves. Qualifying for the safe harbors also requires following certain procedures – registering a DMCA agent with the US Copyright Office and posting contact information with the site’s DMCA policies on the site3  – and it appears that Righthaven has been pretty careful about targeting only those sites that don’t follow these provisions.

The defense that is more likely to come into play with these lawsuits is fair use. The doctrine of fair use allows for certain uses of copyrighted material without the permission of the copyright owner. Courts typically4  use the four factors from 17 USC § 107 to determine whether a particular use is fair: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educa-tional purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in rela-tion to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Fair use is highly fact-specific, and it’s up to each individual defendant to raise the defense, so it’s difficult to make any generalizations about what role it will play in these lawsuits. You can see, though, that the noncommercial nature of many of the uses in these cases may favor a finding of fair use, though this may be negated where an entire article was reproduced and where no additional commentary or criticism was added to the republication.

Despite some of the limitations on a fair use defense under the traditional four factor test, Eric Johnson makes a strong argument that fair use should protect the right to republish news articles that a person is the subject of. He writes:

The free-speech, communicative, and democratic values that protect the right of newspapers to report and publish should also protect the right of persons who are subject to the scrutiny of the press to republish that material.

I would add that the practice of reprinting articles about oneself or one’s organization is a fairly well-established practice. Many routinely reprint news articles in press packets and internal newsletters. Many of the fair use opinions dealing with reproducing news content involve commercial press clipping services, where the purely commercial nature of these enterprises typically defeats a finding of fair use. When you consider that the reprinting here is done by the subjects of the articles themselves rather than commercial enterprises, and combine it with the fact that the Review-Journal already provides a multitude of options for sharing content5 it is conceivable that some defendants may succeed with a fair use defense.

It’s Not Copyright at Issue

But however interesting the copyright issues raised in these lawsuits are, they do not explain the almost instinctual aversion most have to Righthaven’s behavior. In theory, it seems odd to criticize Righthaven; if, for the sake of argument, the claims are meritorious, why would anyone speak out against their right to pursue those claims in court?

In a broad sense, the reaction to Righthaven can be compared to the reaction when an overzealous municipality shuts down a kid’s lemonade stand because the tiny tots failed to get the proper vending licenses, as an Oregon city did last month, or a California city did last year. It sparks our conscience whenever anyone, no matter how right, goes nuclear against a relatively minor infraction.

But the problems with Righthaven’s approach go deeper than just shocking sensibilities. They approach the territory of upending ancient notions of how a legal system should work. One hint at how old these notions are comes from some of the answers to Righthaven complaints. We see concepts like “barratry” and “champerty” coming back in style.

In addition to these defenses, the method of Righthaven’s pursuit of lawsuits has been attacked, with some calling them “ambush” style lawsuits. Most lawsuits begin with the aggrieved party contacting a would-be defendant, typically through a cease and desist letter. It is only after the parties fail to come to a satisfactory conclusion that the dispute is taken to the courts. Righthaven skips over this step entirely, going straight to filing suit. One group reported that its first notice that it was in trouble came from “a Google alert indicating a court document had been filed, followed by an e-mail of inquiry from a reporter for the Las Vegas Sun.”

Whether these criticisms of Righthaven’s legal strategy rise to legally recognized defenses remains to be seen.6 But regardless of whether Righthaven can do what it’s doing, most disagree with Righthaven that it should do what it’s doing.

Going to court is a last resort. This isn’t just good advice, it’s a cornerstone of western law – an assertion that finds support not only in secular thought, but also Judaism and Christianity.7 Litigation is costly and time-consuming, and most of the time, that’s ok. The costs encourage individuals to settle disputes themselves without getting the government involved. Righthaven flips the default on this view by pursuing litigation as a business and skipping the whole “let’s work this out” step.

We certainly don’t want to close the courts off to those with meritorious claims. But most of us believe that there should be some, well, justice in the justice system. Rules against using the legal system as a sword to vexate others or profit from lawsuits have been in place for a long, long time to prevent extortion and ensure that the legal system operates fairly for all of us.8

The Danger to Content Owners

The gravest danger to content owners and creators not caught in Righthaven’s cross-hairs is that these lawsuits will make their efforts to protect content more difficult. Those opposed to all attempts to maintain the incentive copyright provides are quick to lump Righthaven’s litigation-as-a-business-model in with all efforts by those who recognize that unabated piracy damages the incentive to disseminate new works. It’s doubtful anyone can say anything to change their minds, but it bears repeating that criticism of these lawsuits doesn’t implicate copyright law as much as Righthaven’s strategy.

Is there any lesson content owners can learn from Righthaven? The RIAA litigation demonstrated that lawsuits are cumbersome and costly as a shield against piracy. The Righthaven litigation demonstrates the dangers of using lawsuits as a sword against piracy. In my opinion, this is enough evidence to shift the focus away from the courts as a tool for managing piracy. Content owners and consumers alike would benefit from an alternative approach, whether it involves placing more responsibility on ISPs and service providers for policing infringement, or whether it involves revisiting some of the numerous proposals for addressing online piracy that have been advanced in the past.


  1. A former managing editor of the Review-Journal imagines the endorsement would say something like, “We think she’s a thief, but we like her a lot.” []
  2. There have been some reports of the amount Righthaven has already collected from settlements, but it’s difficult to see how suing one’s sources – and advertising agencies – is a good business model. []
  3. Check out this site for pointing out this important information for UGC site operators. []
  4. Close to 60% of the time, as noted by Baron Beebe in his extraordinary article, An Empirical Study of US Copyright Fair Use Opinions, 1978-2005, 156 Univ of Penn Law Review 549 (2008). []
  5. The site provides numerous RSS feeds, as well as providing options to email, print, or share on 19 different social networking sites each article. []
  6. The doctrine of champerty is often described as ‘vestigial’, see Paul Bond, Making Champerty Work: An Invitation to State Action, 150 Univ of Penn Law Review 1297 (2002). []
  7. See Max Radin, Maintenance by Champerty, 24 Cali Law Review 48 (1935). []
  8. For more information on the history of champerty and maintenance, as well as discussion on the various public policies the doctrines protect, check out Ari Dobner, Litigation for Sale, 144 Univ of Penn 1529 (1996), and Radin. []

The general consensus is that the Anti-Counterfeiting Trade Agreement (ACTA)1 is on track to be completed by the end of this year. Once completed, the treaty would still need to be implemented by each party through its own legislative process – a process that could easily take several years. If the past is any indication, we can expect plenty of Fear, Uncertainty, and Doubt over the treaty until then.

If you’re just joining us, be sure to check out ACTA: Thought for FUD, parts one, two, and three. If not, read on for part four of this series, where I’m comparing the provisions of the ACTA to existing US law to counter some of the FUD over what this treaty will do.

The FUD toward this section of the ACTA departs from the pattern it follows in the previous sections. Here, the fear is not based on a misunderstanding of existing US law; instead, the fear is that this section follows US law too closely. The provisions here – the majority of which had been passed as part of the Digital Millennium Copyright Act of 1998 (DMCA)2 have caused a great deal of consternation since they became a part of US law, and the complaint is that the US is attempting to “export” these much-derided laws to the rest of the world.

Since I’ve limited these articles so far to a side-by-side comparison between the ACTA provisions and US law, I won’t get into any substantive discussion of these criticisms, but I did want to point out one such criticism since it came out just this week.

On Monday, Boing Boing posted Latest leaked draft of secret copyright treaty: US trying to cram DRM rules down the world’s throats, illustrating precisely the criticism I noted above.

The article frames the state of the current law through a complete mischaracterization. The author states:

In the US version, breaking DRM is always illegal, even if you’re not committing any copyright violation — so breaking the DRM on your iPad to install software you bought from someone who hasn’t gone through the Apple approval process is illegal, even though the transaction involves no illicit copying.

But, the claim that under US law “breaking DRM is always illegal – even if you’re not committing any copyright violation” is followed in the very next sentence by links to a court case and regulations where breaking DRM is not illegal when there is no copyright violation!

The original characterization of laws regarding DRM is wrong. The “evidence” presented only shows the way laws typically work. Congress passes a new law. Someone brings a lawsuit based on an interpretation of the law outside of its scope. A court determines the interpretation is outside the scope of the law – based on the text of the statute Congress passed and any relevant legislative history of the law. The court denies the person’s claim. The only way you can call this an “erosion” of the law is if you claim that Congress and supporters of the law secretly wanted it to mean the same as the interpretation advanced by these unsuccessful lawsuit filers.

The idea that the law has been “eroded” by regulators is even more silly. The DMCA included a provision that charges the Librarian of Congress, through the Register of Copyrights, to examine and pass exemptions to the DMCA anti-circumvention provisions every three years. The Copyright Office completed the latest round of these proceedings just this past June. It’s difficult to see how such a provision built into a law counts as erosion of the law.

But enough about that. Let’s take a look at Section 4 of the ACTA.

Section 4: Special Measures Related to Technological Enforcement of Intellectual Property in the Digital Environment

Proposed ACTA Provision Corresponding US Law

1. Each Party shall ensure that enforcement procedures, to the extent set forth in the civil and criminal enforcement sections of this Agreement, are available under its law so as to permit effective action against an act of copyright infringement which takes place in the digital environment, including expeditious remedies to prevent infringement and remedies which constitute a deterrent to further infringement.
2. Those measures, procedures and remedies shall also be fair and proportionate.
3. Without prejudice to the rights, limitations, exceptions, or defenses to copyright infringement available under its law, including with respect to the issue of exhaustion of rights, each Party shall provide for civil remedies as well as limitations, exceptions, or defenses with respect to the application of such remedies, are available in its legal system in cases of third party liability *

* For greater certainty, the Parties understand that third party liability means liability for any person who authorizes for a direct financial benefit, induces through or by conduct directed to promoting infringement, or knowingly and materially aids any act of copyright or related rights infringement by another. Further, the Parties also understand that the application of third party liability may include consideration of exceptions or limitations to exclusive rights that are confined to certain special cases that do not conflict with a normal exploitation of the work, performance or phonogram, and do not unreasonably prejudice the legitimate interests of the right holder, including fair use, fair dealing, or their equivalents. At least one delegation opposes this footnote.

Metro-Goldwyn-Mayer Studios v. Grokster, 545 US 913, 930 (2005)

One infringes contributorily by intentionally inducing or encouraging direct infringement, … and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it … Although “[t]he Copyright Act does not expressly render anyone liable for infringement committed by another,” … these doctrines of secondary liability emerged from common law principles and are well established in the law.

I’ve discussed third party liability in detail previously on this site. This section begins with a provision establishing that Parties to the treaty recognize third party liability; I’ve included a footnote found in the text for clarity. Third party liability in copyright infringement is largely a creature of common law, so I’ve included language from the Supreme Court’s most recent third party infringement liability case, where the court restates the relevant principles.

Option 1
3. Each Party recognizes that some persons use the services of third parties, including online service providers, for engaging in copyright infringement. Each Party also recognizes that legal uncertainty with respect to application of copyright, limitations, exceptions, and defenses in the digital environment may present barriers to the economic growth of, and opportunities in, electronic commerce. Accordingly, in order to facilitate the continued development of an industry engaged in providing information services online while also ensuring that measures to take adequate and effective action against copyright or related rights infringement are available and reasonable each Party shall:
(a) provide limitations on the scope of civil remedies available against an
online service provider for infringing activities that occur by
(i) automatic technical processes, and
(ii) the actions of the provider’s users that are not directed or initiated by that provider and when the provider does not select the material, and
(iii) the provider referring or linking users to an online location,
when, in cases of subparagraphs (ii) and (iii) the provider does not have actual knowledge of the infringement and is not aware of facts or circumstances from which infringing activity is apparent; and
Option 2
Each Party recognizes that some persons use the services of third parties, including online service providers, for engaging in intellectual property rights infringements.
(a) In this respect, each Party shall provide limitation on the scope of civil remedies available against an on-line service provider for infringing activities that occur by
(i) automatic technical processes, or
(ii) the actions of the provider´s users that are not initiated nor modified by that provided and when the provider does not select the material or
(iii) the storage of information provided by the recipient of the service or at the request of the recipient of the service,
when exercising the activities as stipulated in paragraph 3(a)(ii) and/or (iii) the online service providers act expeditiously, in accordance with applicable law, to remove or disable access to infringing material or infringing activity upon obtaining actual knowledge of the infringement
the information at the initial source has been removed or disabled.

Option 1
(b) condition the application of the provisions of subparagraph (a) on meeting the following requirements:
(i) an online service provider adopting and reasonably implementing a policy to address the unauthorized storage or transmission of materials protected by copyright or related rights; and
(ii) an online service provider expeditiously removing or disabling access to material or alleged infringement, upon receipt of legally sufficient notice of alleged infringement, and in the absence of a legally sufficient response from the relevant subscriber of the online service provider indicating that the notice was the result of mistake or misidentification.
except that the provisions of (ii) shall not be applied to the extent that the online service provider is acting solely as a conduit for transmissions through its system or network.
Option 2:
Paragraph 3(a) shall not affect the possibility for a judicial or administrative authority, in accordance with the Parties legal system, requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility of the parties establishing procedures governing the removal or disabling of access to information
The Parties shall not impose a general monitoring requirement on providers when acting in accordance with this paragraph 3.

3. Each Party shall enable right holders, who have given effective notification to an online service provider of materials that they claim with valid reasons to be infringing their copyright or related rights, to expeditiously obtain from that provider information on the identity of the relevant subscriber.

3. Each Party shall promote the development of mutually supportive relationships between online service providers and right holders to deal effectively with patent, industrial design, trademark and copyright or related rights infringement which takes place by means of the Internet, including the encouragement of establishing guidelines for the actions which should be taken.

17 USC § 512. Limitations on liability relating to material online

(a) Transitory Digital Network Communications.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the provider’s transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections, if—
(1) the transmission of the material was initiated by or at the direction of a person other than the service provider;
(2) the transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the service provider;
(3) the service provider does not select the recipients of the material except as an automatic response to the request of another person;
(4) no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission, routing, or provision of connections; and
(5) the material is transmitted through the system or network without modification of its content.

(b) System Caching.—
(1) Limitation on liability.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider in a case in which—
(A) the material is made available online by a person other than the service provider;
(B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person; and
(C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to the material from the person described in subparagraph (A),
if the conditions set forth in paragraph (2) are met.


(c) Information Residing on Systems or Networks At Direction of Users.—
(1) In general.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—
(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

(2) Designated agent.— The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
(A) the name, address, phone number, and electronic mail address of the agent.
(B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.


(d) Information Location Tools.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the provider referring or linking users to an online location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link, if the service provider—
(1)(A) does not have actual knowledge that the material or activity is infringing;
(B) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(C) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(2) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(3) upon notification of claimed infringement as described in subsection (c)(3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity, except that, for purposes of this paragraph, the information described in subsection (c)(3)(A)(iii) shall be identification of the reference or link, to material or activity claimed to be infringing, that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate that reference or link.

This provision largely mirrors the DMCA chapter on internet safe harbors. I’ve edited out large portions of the statute for space.

4.59 In order to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors, the right holder of any copyright or related rights or owner of an exclusive license in connection with the exercise of their rights and that restrict unauthorized acts in respect of their works, or other subject matters specified under Article 14 of the TRIPS Agreement, each Party shall provide for civil remedies, or criminal penalties in appropriate cases of willful conduct , that apply to:
(a) the unauthorized circumvention of an effective technological measure that controls access to a protected work, performance, or phonogram; and
(b) the manufacture, importation, or circulation of a technology, service, device, product, component, or part thereof, that is: marketed or primarily designed or produced for the purpose of circumventing an effective technological measure; or that has only a limited commercially insignificant purpose or use other than circumventing an effective technological measure.

5. Each Party shall provide adequate legal protection against a violation of a measure implementing paragraph (4), independent of any infringement of copyright or related rights.

Option 1
Further, each Party may adopt exceptions and limitations to measures implementing paragraph 4 so long as they do not significantly impair the adequacy of legal protection of those measures or the effectiveness of legal remedies for violations of those measures.

Option 2
5. Each Party may provide for measures which would safeguard the benefit of certain exceptions and limitations to copyright and related rights, in accordance with its legislation.

17 USC § 1201. Circumvention of copyright protection systems

(a) Violations Regarding Circumvention of Technological Measures.—
(1)(A) No person shall circumvent a technological measure that effectively controls access to a work protected under this title. The prohibition contained in the preceding sentence shall take effect at the end of the 2-year period beginning on the date of the enactment of this chapter.


(2) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;
(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or
(C) is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.

Also part of the DMCA, this provision creates separate liability for circumventing or manufacturing tools to circumvent technological protection measures.

6. Each Party shall provide adequate and effective legal remedies to protect electronic rights management information, each Party shall provide for civil remedies, or criminal penalties in appropriate cases of willful conduct, that apply to any person performing any of the following acts knowing or with respect to civil remedies having reasonable grounds to know that it will induce, enable, facilitate, or conceal an infringement of any copyright or related right:
(a) to remove or alter any electronic right management information. The obligations in paragraphs (4) and (5) are without prejudice to the rights, limitations, exceptions, or defenses to copyright or related rights infringement. Further, paragraph (4) does not imply any obligation to require that the design of, or the design and selection of parts and components for, a consumer electronics, telecommunications, or computing product provide for a response to any particular technological measure, so long as the product does not otherwise violate any measures implementing paragraph (4).
(b) to distribute, import for distribution, broadcast, communicate, or make available to the public copies of works, knowing that electronic rights management information has been removed or altered without authority.
6.2 Each Party may adopt limitations or exceptions to the requirements of subparagraphs (a) and (b).

17 USC § 1202. Integrity of copyright management information

(a) False Copyright Management Information.— No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement—
(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management information that is false.
(b) Removal or Alteration of Copyright Management Information.— No person shall, without the authority of the copyright owner or the law—
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law,
knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

This is yet another part of the DMCA. There is not much to say about this provision – it hasn’t received a lot of attention in academic literature and there are very few published court opinions applying it.3

That actually takes care of the bulk of the substantive provisions of the ACTA. Next week, I’ll take a brief look at the remaining chapters, and then wrap up what lessons we can learn from this comparison, as well as make a few general observations about some of the other major criticisms of the treaty.


  1. I’ve been referring to the treaty in its acronym form as “the ACTA” rather than just “ACTA.” Maybe it’s just me, but while the former is technically correct, it still sounds weird to say. []
  2. Which itself was passed largely to implement WIPO treaties – which themselves were largely a result of the US’s National Information Infrastructure Initiative – which itself was turtles all the way down. []
  3. But check out IQ Group v. Wiesner Pub, 409 F.Supp.2d 587 (NJDC 2006) for a detailed discussion of the provision’s history and meaning. []

Is copyright infringement theft?

This question pops up often in online discussions, and nearly always sparks heated debate. You can see a recent example in the comments section of Obama administration: ‘Piracy is flat, unadulterated theft’ on Ars Technica. Many, many other examples abound online.

But I’m not going to answer that question today.

The biggest problem with this question is that – and this is going to sound very much like lawyerspeak – the answer depends on what the meaning of the word “theft” is.1 Don’t dismiss such an answer right away. When I was in law school, I took a course taught by a judge in the nearby county court. He had been sitting for decades – well-qualified to teach about how the law worked in the real world. On more than one case, this judge would be in the middle of pointing out some minor point on correct use of terminology when he would pause and say, “I know this sounds like semantics. But the law is semantics – that’s what lawyers do: argue over words.”

The classic example of the relationship between the law and language is a hypothetical problem: “No Vehicles in the Park.” The hypo begins with a seemingly simple sign that reads “No vehicles in the park” and then asks what situations are prohibited by the rule and why. Bicycles? Park maintenance trucks? Ambulances on the way to the hospital? Wheelchairs? A war memorial consisting of a parked tank? It’s not enough to figure out what you think the result of each situation should be. In a democratic society, lawmakers and judges must ensure that laws are consistently applied, understandable, and fair.2

The argument over applying terms like “theft” to copyright infringement is not, however, about whether the comparison is legally appropriate, but about the similarities between the two in the colloquial sense of the word. This is where the opponents of the word begin to falter – attempting to prove their point by using the legal definition of the word to trump the colloquial definition. In other words, the argument goes, since the legal meaning of theft differs from the legal meaning of copyright infringement, any comparison between the two is invalid. By itself, this argument is barely worth refuting, but it has unfortunately been bolstered by the misuse of language from an otherwise inconsequential Supreme Court decision. This type of quote-mining from case law is prevalent in many debates – sort of a cross between an appeal to authority and contextomy – a practice that merits further discussion. If we want to learn what the law means, it sometimes help to understand common errors in understanding the law.

You’re in a Helicopter

I suspect a large part of the intensity over the use of “theft” to describe copyright infringement is based simply on linguistic peevery. The use of the word rubs some people the wrong way, and they have developed a strong objection to its use. Like language police, they immediately jump on anyone who dares to draw a comparison between the two concepts. Once the word is spoken, it won’t be long until you hear the legal argument. “Theft has a specific legal meaning, copyright infringement has a different legal meaning, thus copyright infringement is not theft.” This argument reminds of this old joke:

A helicopter was flying around above Seattle when an electrical malfunction disabled all of the aircraft’s electronic navigation and communications equipment. Due to the clouds and haze, the pilot could not determine the helicopter’s position and course to fly to the airport. The pilot saw a tall building, flew toward it, circled, drew a handwritten sign, and held it in the helicopter’s window. The pilot’s sign said “WHERE AM I?” in large letters. People in the tall building quickly responded to the aircraft, drew a large sign and held it in a building window. Their sign read: “YOU ARE IN A HELICOPTER.” The pilot smiled, waved, looked at her map, determined the course to steer to SEATAC airport, and landed safely. After they were on the ground, the co-pilot asked the pilot how the “YOU ARE IN A HELICOPTER” sign helped determine their position. The pilot responded “I knew that had to be the Microsoft building because, like their technical support, online help and product documentation, the response they gave me was technically correct, but completely useless.”

It’s technically correct that “copyright infringement” and “theft” have distinct legal meanings, but so what? The idea that the legal distinction between the two terms forecloses any colloquial comparison is invalid. “Theft” in the legal sense has always meant something far narrower than “theft” in the everyday sense. In early English common law, for example, the crime of theft only included the taking of another’s property by force or by stealth. It didn’t include the taking of property by deception or trick, and it also didn’t include the taking of property by someone in whom the property was entrusted. While today we would have no problem saying a delivery truck driver engaged in “theft” if he kept a package instead of delivering it, earlier courts had to jump through several hoops before reaching the same conclusion.3

Dowling v. United States: Misusing Case Law

Despite the obvious shortcomings of this line of reasoning, it was given extra legs after the 1985 Supreme Court case Dowling v. United States. Paul Dowling ran a lucrative, interstate business selling bootleg recordings of Elvis Presley. Once caught, the federal government prosecuted him under the National Stolen Property Act, which made it a federal crime to transport stolen merchandise across state lines. The Supreme Court reversed his conviction on the grounds that the Act did not extend to items which infringed copyright.

This holding was like manna from heaven to the “copyright infringement is not theft” crowd. In particular, they point to the following language from the syllabus of the opinion:4

The phonorecords in question were not “stolen, converted or taken by fraud” for purposes of [section] 2314. The section’s language clearly contemplates a physical identity between the items unlawfully obtained and those eventually transported, and hence some prior physical taking of the subject goods. Since the statutorily defined property rights of a copyright holder have a character distinct from the possessory interest of the owner of simple “goods, wares, [or] merchandise,” interference with copyright does not easily equate with theft, conversion, or fraud. The infringer of a copyright does not assume physical control over the copyright nor wholly deprive its owner of its use. Infringement implicates a more complex set of property interests than does run-of-the-mill theft, conversion, or fraud.

If you make it into the actual opinion, however, you’ll find that the Court is careful to note the distinction between the legal and colloquial meanings of words:

While one may colloquially link infringement with some general notion of wrongful appropriation, infringement plainly implicates a more complex set of property interests than does run-of-the-mill theft, conversion, or fraud. As a result, it fits but awkwardly with the language Congress chose — “stolen, converted or taken by fraud” — to describe the sorts of goods whose interstate shipment § 2314 makes criminal.5

I mentioned earlier that mischaracterizing language from case law to bolster an argument is common. Our common law system is partially to blame for this pitfall, since cases create binding precedent that shape the law. However, it’s important to remember that the only thing binding from a court opinion is the holding. The reasoning a court uses is helpful in seeing how it arrived at the holding, and much of the dicta may be persuasive and useful to shaping one’s argument.  The danger is taking this language – anything besides the specific, narrow holding – as a binding conclusion to any argument. ((Other cases have similarly been distorted to “prove” certain arguments: Flora v. United States, 362 US 145 (Income tax is voluntary); Church of the Holy Trinity v. United States, 143 US 457 (US is a Christian nation); Interstate Commerce Commission v. Brimson, 154 US 447 (Census is unconstitutional).)) It’s not like the Dowling court made a broad pronouncement that “Henceforth, no one may describe copyright infringement as ‘theft.'” Or as one forum commenter said, “The comments are to long and it’s becoming a chore. I’ll just quote Dowling v. United States, a 1985 case regarding copyright infringement.”

The holding of Dowling was indeed narrow:

By virtue of the explicit constitutional grant, Congress has the unquestioned authority to penalize directly the distribution of goods that infringe copyright, whether or not those goods affect interstate commerce. Given that power, it is implausible to suppose that Congress intended to combat the problem of copyright infringement by the circuitous route hypothesized by the Government.6

In other words, the federal government cannot prosecute an alleged copyright infringer under the National Stolen Property Act.7  Curiously, those who point to the language of Dowling as incontrovertible proof that copyright infringement shouldn’t be called theft manage to miss a later Supreme Court case that says the opposite. Justice Breyer states in his concurrence to MGM v. Grokster:

No one disputes that “reward to the author or artist serves to induce release to the public of the products of his creative genius.” United States v. Paramount Pictures, Inc., 334 U. S. 131, 158 (1948). And deliberate unlawful copying is no less an unlawful taking of property than garden-variety theft.8

The lesson, if any, is to pay attention when someone quotes case law. It’s easy to find language that appears to support just about any proposition; the challenge is recognizing the common fallacies that arise from the use of such language.

Does it even matter? Yes, it does. Or does it?

Hopefully, this reliance on Dowling in the debate over copyright infringement and theft can be put to a rest. That still leaves the question of whether or not the comparison is appropriate in the colloquial sense. I doubt that debate will ever be resolved.

Quibbling over the use of words like “theft” stems from the larger debate about whether “intellectual property” should be considered “property.” People have been arguing over that point since – at the least – the first copyright law was written down in 1709. To some, the issue has great consequences. In Moral Panics and the Copyright Wars, noted copyright scholar William Patry writes:

No side in the Copyright Wars can claim semantic purity or sole virtue … One way we got where we are is through the misuse of language, specifically metaphors that characterize the nature of copyright as property and that characterize those who use copyright works without permission as thieves or parasites. When a court or legislature is faced with a copyright dispute, there is more than one way to frame that dispute. There is, after all, no Platonic copyright against which we can match the ideal form of copyright. Instead, the outcome is determined by reference to the contesting legal, economic, and social forces. Those forces in turn are defined and understood in terms of the conceptual frameworks employed.9

Patry sees the use of metaphors like “theft” as an effort by content industries to push for self-serving copyright laws to “preserve their old business model of controlling consumers.”10

But there are others who see this argument as largely academic. Law professor Stuart P. Green notes:

Whether something will be regarded as “property” is nothing more, and nothing less, than a conclusion of law. As Stephen Carter has put it, “the term does not refer to any object or to any necessary set of legal rights that always inheres in a property relationship. Instead, the term refers to a bundle of rights that define, singly or collectively, the relationship of an individual to a resource.” Hence, simply because some resource is considered “property” for purposes of, say, mail fraud, copyright, or constitutional law, does not necessarily mean that it will be regarded as property for purposes of theft law, and vice versa.11

Finally, there are those who think even the academic debate over terminology is pointless. In an online debate with Patry, noted copyright attorney Ben Sheffner had this to say:

I just have a hard time getting too worked up about what label we attach to copyright. And I suspect most non-philosophers agree. Consider this thought experiment: Go to a studio head and say, “I’ve got a deal for you. I’ll give you your copyright wish list: repeal first sale, make Justice Ginsburg’s concurrence in Grokster the controlling opinion, delete Cablevision, Perfect 10 v. Amazon (and a few other Perfect 10 cases while we’re at it) from the law books, and codify a “making available” right. But here’s the catch: From now on, you are forever forbidden from referring to copyright as ‘property,’ and must instead call it a ‘set of social relationships.'” Or go to a copyright skeptic, and say, “I’ve got a deal for you. I’ll give you your copyright wish list: reduce the term of copyright back to 14 years, expand fair use, eliminate the derivative works right, and repeal the anti-circumvention provisions of the DMCA. But there’s the catch: From now on, you must refer to copyright as property; no more of this ‘set of social relationships’ mumbo-jumbo.” I’m confident both the studio head and the copyright skeptic would take those deals in a heartbeat. Ultimately, it’s the substance, not the label, that matters.

I tend to agree with Sheffner. The debate over the labels we give to copyright is interesting in an academic sense but largely meaningless in the real world. Creators often use words like “theft” to reflect how they feel about acts of infringement. Shifting the focus from the colloquial meaning of the word to the legal meaning accomplishes little more than arguing for the sake of argument, while misusing language from case law only forecloses a fuller understanding of the law.


  1. Cue obligatory Clinton jokes. []
  2. For a more in-depth look at law and language, check out Stanford Encyclopedia of Philosophy: Law and Language. []
  3. See A History of the Criminal Law of England, Sir James Fitzjames Stephen, Volume 3 [Google incorrectly titles the book “Volume 2″](1883). []
  4. It’s worth pointing out that the syllabus of a legal opinion is not legal authority. For an interesting behind-the-scene’s look at the Supreme Court reporter of decisions who prepare the syllabuses, check out The Supreme Court’s Man of Many Words. []
  5. 473 US 217-218 []
  6. 473 US 220-221. []
  7. The dissent in the case argues that the federal government can. It points out that the majority cites differences between the rights of copyright owners and other property owners as well as the differences between interference in those rights but fails to explain why those differences are relevant to the statute. It notes that other courts have interepreted “stolen, converted or taken by fraud” broadly enough to encompass intangible property. Finally, and most persuasively, it notes that Congress explicitly provided that penalties under the statue “shall be in addition to any other provisions” of the Copyright Act. []
  8. 545 US 913, 961 (2005) (Breyer concurring). []
  9. Pp. 14-15, Oxford University Press (2009). []
  10. Pg. 22. []
  11. Plagiarism, Norms, and the Limits of Theft Law: Some Observations on the Use of Criminal Sanctions in Enforcing Intellectual Property Rights, 54 Hastings Law Journal 168, 208-209 (2002). []
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