On Monday, the Supreme Court heard oral arguments in Kirtsaeng v John Wiley & Sons, a case dealing with the impact of copyright’s first sale doctrine — 17 USC § 109(a) — on the Copyright Act’s importation prohibition — 17 USC § 602(a)(1). I’ve previously written about the case here, with more thoughts here.

A decision is months away, but before closing the book on this case until then, I wanted to look at one other aspect of the legal issues involved. While Kirtsaeng involves textbooks, one of the traditionally copyright protected works, other cases, including the two previous cases involving these provisions to reach the Supreme Court (Costco v Omega and Quality King v L’anza Research), involve consumer goods, goods that we don’t typically think of as within the subject matter of copyright. Those cases generally rely on an assertion of copyright protection over the goods’ packaging or labels, rather than the good itself. Generally, we would think of such products as relying on trademark law rather than copyright law for any protection.

Trademark law does provide effective protection against grey market goods, but this protection is curtailed in several respects that explains why some companies have turned to the importation provisions of the Copyright Act.1 Perhaps most importantly, trademark law does not prohibit unauthorized importation of goods that had been manufactured by a foreign subsidiary of a US company.2

Whether overlap between copyright and trademark law creates concerns is an interesting academic question.3 Whether it matters in the real world, especially in the context of parallel imports, is also, I think, a legitimate question.4

Regardless, I think it’s worth examining the use of copyright law to police importation of non-piratical goods which aren’t customarily considered within the scope of copyright subject matter. I’ve done so by first surveying §602 case law and then examining several of the defenses raised in actions involving consumer goods.

I’ve looked for published opinions on cases with claims arising under §602 that involved non-piratical, or “authentic” goods (§602 also provides remedies for the importation of piratical, or infringing, goods). The result is a list of 35 cases in total, 27 of which a first sale defense was raised.5

These cases are a mix between the situation where, as in Quality King, a good was first manufactured in the US and, as in Kirtsaeng, a good was first manufactured overseas. Though I haven’t indicated which is which, I will note that, before Quality King, courts were split on whether the first sale doctrine applied to goods first manufactued in the US and then re-imported without authorization. Where goods were first manufactured overseas, however, courts have been virtually unanimous in holding that the first sale doctrine does not apply — I’ve only been able to find one case in the past 30 years that has held otherwise.

Out of these 35 cases, 24 involved traditionally copyrighted works: books, phonorecords, software, and sculptural works. The eleven remaining cases involved situations where the goods themselves would not be copyrightable — instead, copyright protection on labels or packaging was asserted. These cases include everything from perfume, to watches, to diapers.

The first thing you note from this survey is the small usage of this provision, roughly 30 reported cases in 30 years. Compare this to, say, the fair use provision in §107, which has generated over 300 published opinions in the same time-frame.6 And less than one-third of these involved consumer goods.

Next, I’ll look at some of the defenses that may be raised when the Copyright Act’s importation provisions are used to protect such consumer goods.

Copyrightability

The first defense that might be raised is that such goods are outside of copyrightable subject matter. The Copyright Act provides that copyright protection exists in all “original works of authorship fixed in any tangible medium of expression “It is well established that labels are subject to copyright protection, if the label manifests the necessary modicum of creativity.”7 The statute lists several categories of works which may be protected, including “(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.”

The bar for originality is low; it requires only a “modicum of creativity.”8 It is well established that product labels and packaging can be protected by copyright.9

This avenue, then, would be a non-starter for defending against including consumer goods in the importation provision — indeed, it is precisely because of the low bar for copyrightability that such goods are within its scope. This argument was raised in one case dealing with §602, and the court, confronted with the argument against plaintiff’s hair care product labels, said, “Catch phrases, mottos, slogans and short advertising expressions are not copyrightable. But, of course, the length of a sentence is not dispositive of whether it is subject to protection. … While this text tries the limits of the modicum of creativity necessary for a work to be copyrightable, I find that taken as a whole it comes within the purview of the Copyright Act.”10

Design inseparable from useful article

Next, one might argue that any copyrightable matter in consumer goods is inseparable from their function and thus unprotectable. The Copyright Act says of pictorial, graphic, and sculptural works, “Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Courts have interpreted this to mean that copyrightable elements of works must be physically or conceptually separable from utilitarian aspects. Easier said than done — if you think this inquiry could lead you into a metaphysical quandary, you’d be correct.

The Koosh Ball, for example, had its registration for copyright rejected by the Copyright Office, and on appeal, the DC Circuit held that the Office had not abused its discretion.11 But in most cases, separability would not be an issue since plaintiffs would be asserting copyright protection over labelling or packaging rather than the good itself.

Indeed, the one time I’ve found where a defendant raised this defense, regarding importation of perfume, the court rejected it:

It is well established that an artistic packaging design or label is entitled to copyright protection. Indeed, the Copyright Office regulations make clear that a copyright may be issued for “a print or label that contains the requisite qualifications for copyright even though there is a trademark on it.”

Moreover, the Amarige Box Design is physically separable from the perfume with which it is associated and thus does not even raise an issue of ‘conceptual separability.’ Section 101 of the Copyright Act provides that “the design of a useful article” or a work of art that embellishes a useful article is copyrightable to the extent that it is capable of existing independently of the utilitarian aspects of the article. The legislative history specifies that the design or embellishment may be separable from the useful article either physically or conceptually. The Amarige Box Design is a two-dimensional artistic design, which is physically separable from the utilitarian aspects of Amarige perfume.  Thus, the issue of conceptual separability does not even arise.12

Fair use

During oral arguments, Justice Breyer pressed Theodore Olson, attorney for John Wiley & Sons, about the potential liability of downstream users if the first sale doctrine wouldn’t apply to goods manufactured abroad. In response, Olson alluded to the existence of fair use exceptions that would apply. Though I have not seen fair use raised as a defense for unauthorized importation of non-piratical consumer goods, one amici has raised the possibility of its application in its brief in favor of Wiley. The Software and Information Industry Association, arguing that “the Copyright Act contains the flexibility to deal with unforeseen applications of section 602″, says:

In the same way that Congress did not intend to cabin section 602’s application to copies from countries with a shorter term or compulsory licenses, the legislative record provides no evidence that it intended its application to situations where a trademark owner adds a copyrightable insignia or label on goods to protect against their parallel importation into the United States. Amicus SIIA believes that the better way to address the concern raised by these cases is through the fair use defense contained in section 107 of the Act.

Although the Court in dicta suggested that fair use might not be available to the importer who infringed under this circumstance, SIIA respectfully suggests that that is not the case. Fair use is at its core an “equitable rule of reason,” designed to take into account the facts of each case. The flexible and factspecific nature of the defense renders it fully capable of taking into account the practical reality that people do not buy a watch because of an insignia on the back or buy shampoo because of the wording of the instructions. This reality would likely influence a court’s determination of the fourth fair use factor: “the effect of the use upon the potential market for or value of the copyrighted work.”

The fair use doctrine requires that a market for a work be “traditional, reasonable, or likely to be developed” when examining and assessing the effect that a secondary use of a copyrighted work may have on the potential market for or value of that work. In the case of products such as shampoo and watches, there is no economic value severable from the product to which the work is affixed, and no actual or potential market that can be harmed. For example, there is likely no separate licensing market for shampoo labels as the expressive work – the label – has no economic value severable from the product.

This argument is interesting on its surface, though somewhat novel. I’ve been unable to find any cases where fair use has been applied outside the exclusive right of reproduction. There have been cases where a defendant has raised the defense when he was engaged in distribution, but this is always in combination with alleged reproduction.13 The language of the fair use provision in the Copyright Act itself does not expressly preclude application outside of reproduction,14 I just don’t know if any court has ever been confronted with its application where there hasn’t been an unauthorized reproduction, as would be the case with an unauthorized importation of a non-piratical work under §602.

Copyright misuse

Whether the defense of copyright misuse exists at all is an open question. It is a court-created doctrine that has only emerged within the past 30-some years. Only a minority of federal circuit courts have even recognized its existence, with some remaining skeptical, and even less have actually applied the doctrine.15 But when it is recognized, copyright misuse is typically defined as using a copyright to secure control over something not protected by the copyright in a way which is contrary to public policy.16

But despite its shaky foundation as a doctine, the defense of copyright misuse is one of the only defenses to actually defeat a claim of unauthorized distribution under §602 for non-piratical consumer goods.

In Omega v Costco, Omega sought a copyright infringement claim under §602 based on the copyright in its logo, affixed to the back of watches manufactured overseas, which Costco had imported without authorization. Omega succeeded in its claim all the way up to the Supreme Court, which affirmed, without opinion, the 9th Circuit decision that held the first sale doctrine did not protect Costco. But on remand, the district court subsequently granted summary judgment to Costco based on copyright misuse. The court said in its opinion:

Here, Omega concedes the purpose of the copyrighted Omega Globe Design was to control the importation and sale of its watches containing the design, as the watches could not be copyrighted. Accordingly, Omega misused its copyright of the Omega Globe Design by leveraging its limited monopoly in being able to control the importation of that design to control the importation of its Seamaster watches.

Cases that have found copyright misuse have been limited to situations involving antitrust tying agreements and restrictive licensing agreements. However, this is not to say that copyright misuse could not exist in other situations. Indeed, the courts in LasercombPractice Management, and A & M Records all deliberately chose a broad rule for copyright misuse so that the rule could be applied to new situations as they arose. If the contrary were true, then those courts would have made a tying agreement or a restrictive licensing agreement a necessary element of copyright misuse. Finally, “[c]opyright misuse is an equitable defense to copyright infringement, the contours of which are still being defined.”

Omega argues that the Omega Globe Design had multiple purposes. While Omega concedes that one purpose was to control the importation of watches, it argues that another purpose was to promote the creativity and aesthetics of the Omega Globe Design, itself, and to increase the value that the design gives to a watch. While the Omega Globe Design might have its own independent creative and aesthetic values, those aspects of the design are protected by its copyright and are not a defense to copyright misuse.

Footnotes

  1. Parker A. Howell, Cheaper Watches and Copyright Law, 7 Washington Journal of Law, Technology & Arts 237, 244 (2012). []
  2. K Mart v Cartier, 486 U.S. 281, 295 (1988) (Brennan, J., concurring). []
  3. See, for example, Viva R. Moffat, Mutant Copyrights and Backdoor Patents: The Problem of Overlapping Intellectual Property Protection, 19 Berkeley Technology Law Journal 1473 (2004). []
  4. For example, Moffat notes that one of the main concerns with extending trademark protection into the copyright arena is that trademark’s potentially perpetual duration runs counter to copyright’s limited term. When the situation is reversed, as here, and copyright protection is extended into the trademark arena, this concern vanishes. []
  5. First sale defense raised

    John Wiley & Sons v Kirtsaeng, 654 F.3d 210 (2nd Cir. 2011) (books)
    Microsoft v Technology Enterprises, 805 F.Supp.2d 1330 (SD Fla. 2011) (software)
    Pearson Education v Kumar, No. 1:07-CV-9399 (CSH) (D. Conn. 2010) (books)
    Pearson Education v Arora, 717 F.Supp.2d 374 (SDNY 2010) (books)
    Pearson Education v Liu, 656 F.Supp.2d 407 (SDNY 2009) (books)
    Pearson Educaction v Liao, 2008 WL 2073491 (SDNY 2008) (books)
    Omega v Costco, 541 F.3d 982 (9th Cir. 2008), aff’d without opCostco v Omega, 131 S.Ct. 565 (2010) (watches)
    Microsoft v Intrax Group, No. C 07-1840 CW, 2008 WL 4500703 (ND Cali. Oct. 6, 2008) (software)
    Microsoft v Cietdirect.com, No. 08-60668-CIV, 2008 WL 3162535 (SD Fla. Aug. 5, 2008) (software)
    Microsoft v Big Boy Distribution, 589 F.Supp.2d 1308 (SD Fla. 2008) (software)
    Swatch SA v New City, 454 F.Supp.2d 1245 (SD Fla. 2006) (watches)
    UMG Recordings v Norwalk Distributors, 2003 U.S. Dist. LEXIS 26302 (CD Cali. 2003) (phonorecords)
    Lingo Corp v Topix, 2003 WL 223454 (SDNY 2003) (electronic language translator)
    Quality King v L’anza Research, 523 US 135 (1998) (hair care products)
    Denibcare USA v Toys’R’Us, 84 F.3d 1143 (9th Cir. 1996) (diapers)
    DAISA v Costco, 97 F.3d 377 (9th Cir. 1996) (figurines)
    Summit Technology v High-Line Medical Instruments, 922 F.Supp. 299 (CD Cali. 1996) (medical devices)
    Parfums Givenchy v Drug Emporium, 38 F.3d 477 (9th Cir. 1994) (perfume)
    Parfums Givency v C&C Beauty Sales, 832 F.Supp. 1378 (CD Cali. 1993) (perfume)
    Red Baron v Taito, 9 U.S.P.Q.2D (BNA) 1901 (1988) (video games — Double Dragon) (first sale doctrine applied as a defense against unauthorized importation of nonpiratical work first manufactured overseas)
    BMG v Perez, 952 F.2d 318 (9th Cir. 1991) (phonorecords); Neutrogena v United States, 7 USPQ.2d (BNA) 1900 (D SC 1988) (cosmetic products)
    Sebastian Int’l v Consumer Contact (PTY), 664 F.Supp. 909 (D NJ 1987), rev’d 847 F.2d 1093 (hair care products)
    Original Appalachian Artworks v JF Reichert, 658 F.Supp. 458 (ED Pa. 1987) (soft sculptured dolls — Cabbage Patch Kids)
    Hearst v Stark, 639 F.Supp. 970 (ND Cali 1986) (books)
    Cosmair v Dynamite Enterprises, 226 USPQ (BNA) 344 (SD Fla. 1985) (cosmetic products)
    Columbia Broadcasting v Scorpio Music, 569 F.Supp. 47 (ED Pa. 1983), aff’d without op, 738 F.2d 421 (3d Cir. 1984) (phonorecords).

    No first sale defense raised

    Microsoft v EEE Business, 555 F.Supp.2d 1051 (ND Cali. 2008) (software)
    UMG Recordings v Disco Azteca, 446 F.Supp.2d 1164 (ED Cali. 2006) (phonorecords)
    U2 Home Entertainment v Lai Ying Music & Video Trading, No. 04-CIV-1233 (DLC) (SDNY 2005) (motion pictures)
    Enesco v Jan Bell Marketing, 992 F.Supp. 1021 (ND Ill. 1998) (figurines — Precious Moments)
    TB Harms v Jem Records, 655 F.Supp. 1575 (D. NJ 1987) (phonorecords)
    Selchow & Righter v Goldex, 612 F.Supp. 19 (SD Fla. 1985) (game board and rules — Trivial Pursuit)
    Goebel Porzellanfabrik v Action Industries, 589 F.Supp. 763 (SDNY 1984) (figurines — Hummel)
    CBS Inc v Pennsylvania Record Outlet, 598 F.Supp. 1549 (WD Pa. 1984) (phonorecords)

    []

  6. Barton Beebe, An Empirical Study of US Copyright Fair Use Opinions, 1978-2005, 156 University of Pennsylvania Law Review 549 (2008), surveying 306 published opinions on fair use from 1978 to 2005. []
  7. 17 USC § 102. []
  8. Feist Publications v Rural Telephone Service, 499 US 340, 346 (1991). []
  9. Kitchens of Sara Lee v Nifty Foods Corp, 266 F.2d 541, 544 (2nd Cir. 1959). []
  10. 664 F.Supp. at 913. []
  11. OddzOn Products v Oman, 924 F.2d 346 (DC Cir. 1991). []
  12. 832 F.Supp. at 1391-92. []
  13. See, for example, Kelly v Arriba Soft (336 F.3d 811 (9th Cir. 2003), fair use where defendant engaged in display, reproduction, and distribution. []
  14. 17 USC § 107, which, in part, reads, “the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section.” []
  15. See Michael E. Rubenstein, Extending Copyright Misuse to an Affirmative Cause of Action, 5 Akron Intellectual Property Journal 111 (2011). []
  16. See, for example, Lasercomb America v Reynolds, 911 F.2d 970, 977 (4th Cir. 1990), the first Circuit Court decision to recognize and apply a defense of copyright misuse. []

Last September, broadcasters and amici supporters filed their briefs in the Second Circuit in WNET v Aereo. Within the last week or so, Aereo and its amici began to file their briefs in response. You can read Aereo’s brief here, as well as a brief from the EFF, Public Knowledge and the Consumer Electronics Association (CEA) and a brief from law professors.

Aereo, if you recall, is an online service which, like cable or satellite TV, retransmits broadcast television signals to paying services. But, unlike cable and satellite providers, Aereo is not licensed to publicly perform these copyrighted works because, as it argues, the equipment it uses is really, really tiny.

I’ve previously written about Aereo here. In July, the district court denied a preliminary injunction against Aereo. The broadcasters appealed that decision, and I’ve written about why I believe the court erred in denying the injunction. Oral arguments are scheduled for November 30th.

But as the appeal wends its way through the Second Circuit, I wanted to take a look at some of the arguments favoring the court’s decision both in the recently filed briefs and online. The reaction from amici and bloggers in support of Aereo is actually quite astonishing. So astonishing, in fact, that it seems at times that we’ve left the real world and entered Opposite Town. Let’s take a look at some of these arguments.

Aereo merely provides TV reception equipment for personal use.

A good deal of effort is spent characterizing Aereo as something other than your typical cable provider. It’s merely a facility where TV viewer’s can rent equipment similar to what they would use at home to watch and record their favorite shows, which certainly doesn’t require licensing. This is the crux of Aereo’s argument on appeal:

Aereo provides a technology platform that enables consumers to use remotely-located equipment, including an individual antenna and digital video recorder (“DVR”), to create, access and view their own unique recorded copies of free over-the air broadcast television programming. Essentially, for a small monthly fee, consumers are able to take advantage of current technology to use remotely-located “in the cloud” equipment functionally identical to that which they would otherwise have and use in their home for those same purposes.

Others have framed Aereo’s service this way as well. David Post, one of the law professors who signed the amicus brief, wrote in a blog post last week that “Aereo is in the business of allowing consumers, in effect, to rent a little teeny TV antenna that can pick up over-the-air broadcasts, and a little teeny bit of disk storage space, and then to record over-the-air programming for later viewing over the Net.” Last spring, Public Knowledge wrote, “No one thinks that it’s a public performance if a TV viewer attaches an antenna to his TV. Nor does a store like Radio Shack, who might have sold him the antenna, infringe any copyrights by doing so. Aereo is a bit different than this–it rents out antennas to TV viewers in the New York area, but keeps them in their own facility (which gets better TV reception).” And in its brief with the EFF and CEA,  it argues that Aereo’s service is no different from “the classic form of TV reception with a living-room set and a personal antenna, with the only difference being the length of the wire between antenna and set (or the replacement of that wire with an equivalent self-to-self transmission over the Internet).”

In effect, Aereo and its amici argue that its service — which receives transmissions of TV broadcast signals and retransmits them to paying subscribers — is the opposite of a cable service provider — which receives transmissions of TV broadcast signals and retransmits them to paying subscribers.1

Aereo’s own terms of service even belie its characterization of its service as merely renting remotely-located equipment controlled by users. It grants users only a “non-exclusive, non-transferable, limited right to use and control” its equipment, it prohibits subscribers from using its equipment for “any commercial purpose whatsoever.” Aereo “retains exclusive ownership of all right, title, and interest in and to the Equipment, Site, and the Aereo Platform” and does not allow any subscriber to “reverse engineer, disassemble, modify, decompile and/or create derivative works of the Site, Equipment and/or the Platform.” And finally, “You may not transfer or attempt to transfer material available on Aereo’s Site and/or through your use of the Equipment and/or Platform, to another storage device or medium other than the DVR Equipment for your personal use.” It would seem that the difference between Aereo’s service and a viewer’s personal equipment is far more substantial than “the length of the wire.”

Aereo should win because of copyright’s technological neutrality.

Copyright law should be technologically neutral — I agree that this should be the default rule. Some of Aereo’s supporters have used this point to argue in favor of the service. Duke University Scholarly Communications Officer Kevin Smith, for example, has said that “such neutrality would seem to favor Aereo” in a recent post.

How so? Aereo’s primary argument is that it uses a lot of little antennas instead of one big antenna. CATV, cable providers, and satellite, retransmit broadcast signals through their systems to their subscribers. Aereo retransmits broadcast signals through its system to its subscribers. The former must have permission from the copyright holders to do so. Aereo argues it does not need permission, solely because the technology it uses is somewhat different.

This sounds like the exact opposite of “technological neutrality.”

Aereo assists in cord-cutting.

Indiewire asks, “Is Aereo the answer for cable cord-cutters who still want access to live TV?” Duke’s Kevin Smith says, “as someone who has long wanted to ‘cut the cable,’ I might be interested in the Aereo service if it is upheld.” Mashable says “Aereo makes cutting the cord even easier, and cheaper.” Wired describes Aereo as “one small step for cord cutting.

Let me see if I got this straight. Cable TV provides access to broadcast TV for a monthly fee. Aereo provides access to broadcast TV for a monthly fee.

Switching from one to the other sounds like the exact opposite of “cord-cutting.”

Aereo is innovative.

Aereo and its supporters go to great pains to cast the service as an “innovation.” The law professor amicus brief, for example, frames this case as one involving “new technologies” and “major technological innovations.”

The TV antenna is not a new technology. Internet streaming is not a new technology.

Retransmitting TV broadcasts is not innovative — CATV has been around in the US since at least 1948 and has required a license since the Copyright Act of 1976.2 And Aereo is not the first website to try retransmitting broadcast signals over the internet without permission — Canadian company iCraveTV tried a similar service over a decade ago.3

The only “innovation” displayed by Aereo is the claim that it has figured out a way to do what cable providers do without having to pay license fees like they do. But building a system that does the same thing as something invented over 60 years ago sounds to me like the opposite of innovation. Here, “innovation” seems like merely a code word for “infringement.”

Aereo is furthering the public interest.

The EFF resurrects its argument that exempting Aereo from copyright liability furthers the public interest, an argument rejected by the district court even though it denied the preliminary injunction. According to the EFF, there is a public policy interest in making television broadcasts freely accessible to the public. But Aereo charges for this service. This sounds to me like the opposite of free.

Courts should rewrite the law to prop up Aereo’s business model.

Much ink has been spilled over a brief filed in favor of broadcasters by former Register of Copyrights Ralph Oman. In it, Oman argued that “It is nothing less than a major new exception, which could permit streaming of copyrighted works over the Internet … Whenever possible, when the law is ambiguous or silent on the issue at bar, the courts should let those who want to market new technologies carry the burden of persuasion that a new exception to the broad rights enacted by Congress should be established.”

Because copyright law is entirely a creature of statute, it is up to Congress to define its scope rather than courts. This has been a defining feature of copyright law, and one that has often acted to the detriment of copyright holders.4 But, it seems, when this principle acts instead to the detriment of an economic user of copyrighted works, outrage ensues.

Much of this outrage stems from a severe misconstruction of Oman’s arguments. Peter Suderman at the Reason blog, for example, believes Oman is suggesting that inventors must “ask Congress for permission before releasing any new product.” Part is also based on a logical fallacy; says Suderman, “Aereo designed its system to be technically legal.” But that begs the question that Aereo’s interpretation of copyright law and its design based on that interpretation is, in fact, “technically legal.”

Duke’s Kevin Smith also takes exception to this portion of Oman’s brief, writing, “This is an extraordinary statement, suggesting that the Copyright Act was intended to force all innovators to go to Congress before beginning any service that might threaten some established form of exploiting the rights of copyright holders.”

That sounds to me quite ordinary. If Congress passes a law, and a business doesn’t like that law, it has to go to Congress to change the law. I mean, what’s the alternative? Corporations should be allowed to break the law? Perhaps that’s the thinking in Silicon Valley, but I respectfully disagree; corporations should be subject to laws just like everybody else.

Footnotes

  1. 17 USC § 111(f)(3). But note that services which retransmit over the internet do not fall under this definition; WPIX v IVI, No. 11-788-CV (2012). []
  2. 17 USC § 111, P.L. 94-553 (Oct. 19, 1976). []
  3. A court subsequently enjoined iCraveTV’s streaming service. []
  4. See, for example, Sony v Universal City Studios, 464 US 417 (1984); Fortnightly v United Artists Television, 392 US 390 (1968); White-Smith Music Publishing v Apollo, 209 US 1 (1908). []

Claeys on Justifying IP— The Legal Theory Blog points to a new paper from Eric Claeys, On Cowbells in Rock Anthems (and Property in IP): A Comment on Justifying Intellectual Property, which examines Robert Merges’ 2011 book, Justifying Intellectual Property. The title of the paper refers to a popular Saturday Night Live skit, and like Christopher Walken, who “gotta have more cowbell”, Claeys looks at Merges’ book and “gotta have more property.”

The Big Debate: OK gloomsters, how can the music biz be FIXED? — Andrew Orlowski reports on a recent Battle of Ideas conference he participated in, along with Helienne Lindvall, John Waters, and Alan Miller. A lot of great remarks, like this one from Miller toward the end: “The phrase someone used, ‘The genie is out of the bottle’, is really a call for passivity. But we make the world every day anew, if we want to and chose to. That’s the bit that’s missing. That we can’t innovate, we can’t come up with ways to modify things – that the obstacles are too immense. We need to separate things that we project onto the technology, and then say they’re part of that technology. They’re not. We innovate.”

Pandora, Clear Channel, Others Form Lobby Group for Lower Web Radio Payments; MusicFirst Pushes Back — Another week, another lobbying group from the tech industry. This one, along with Pandora and Clear Channel, includes the “Consumer Electronics Association, terrestrial broadcaster Salem Communications, AccuRadio, Small Webcaster Alliance and Computer and Communications Industry Association,” according to Billboard, and seeks to drum up support for the Internet Radio Fairness Act. The bill has already drawn criticism from the musicFIRST Coalition.

Voters Growing Disillusioned with Germany’s Pirate Party — Spiegel Online has an in-depth look at the stunning, self-inflicted implosion of the Pirate Party in Germany.

Who Killed (Or Saved!) The Music Industry? by Future Machine — An interesting sounding documentary currently seeking funding on Kickstarter. “Fifteen years ago the record business was flourishing. Sales were at an all time high, and everyone from the major label executives all the way down to the roadies were enjoying the success. Today, the music business is largely a working class industry. Record labels have seen dramatic revenue loss, and many artists have seen once lucrative careers diminish, if not disappear altogether. Some blame technology, some blame consumers, still others blame the record companies. This documentary seeks to explore the intersection of these ideas and find answers to the big questions.”

Notice of inquiry for orphan works — The US Copyright Office is currently seeking comments on orphan works. In its inquiry, it notes, “The Copyright Office is reviewing the problem of orphan works under U.S. copyright law in continuation of its previous work on the subject and to advise Congress on possible next steps for the United States. The Office has long shared the concern with many in the copyright community that the uncertainty surrounding the ownership status of orphan works does not serve the objectives of the copyright system. For good faith users, orphan works are a frustration, a liability risk, and a major cause of gridlock in the digital marketplace. The issue is not contained to the United States. Indeed, a number of foreign governments have recently adopted or proposed solutions.”

Catching Up, Not Cord Cutting, Drives Increase in Content Streaming: Study — Some interesting results from a recent survey by TVGuide.com.

At a Congressional Hearing last April, Representative Zoe Lofgren (D-Silicon Valley) grilled Register of Copyrights Maria Pallante over a statement she had made during an interview published in the ABA’s Landslide magazine. Lofgren took issue especially with Pallante’s remark during the interview that “Copyright is for the author first and the nation second.” At one point during the hearing, Lofgren asked Pallante about the remark:

Now, this comment attracted quite a bit of attention among some people, especially my constituents in Silicon Valley, and it seems to me when you look at the Constitution, which empowers congress to grant exclusive rights in creative works in order, and i quote, “to promote the progress of science and the useful arts.” It seems to me that the Constitution is very clear that copyright does not exist inherently for the author but for the benefit for society at large.

Now, I’m concerned when any public official, especially one in charge of regulation of a particular industry or area of law seems to favor particular stakeholders in that very industry. We’d be alarmed, for example, if the chairman of the FCC said the Telecommunications Act was for the telecom companies first and the nation second, and it’s not clear to me how your statement, if it was accurately reported, is any different.

This struck me at the time as a bizarre attempt to create controversy over a relatively benign statement. To set the record straight: Lofgren was wrong, and Pallante was right. Lofgren’s attack is full of misguided statements — not least of which is the notion that the Register of Copyrights is “in charge of regulation of a particular industry or area of law”1 — but most of all was her misconstruction of the “public interest” in copyright.

Saying that “copyright is for the author first” does not ignore the public interest but rather recognizes that the public’s interest is served when authors are protected. Lofgren’s remarks seem oblivious to the public interest in securing exclusive rights to creators and instead substitute a vague, chameleon-like conception — an “untethered public interest”, one that more often than not provides cover for the private interests of economic users of copyrighted works.

Far from controversial, the public’s interest in encouraging the creation of expressive works by protecting creators’ rights — which Pallante was alluding to in her statement — has been recognized since the earliest days of copyright law. James Madison, the primary architect of the Constitution’s Copyright Clause, said of it in the Federalist Papers, “The public good fully coincides… with the claims of individuals.” Pallante’s remarks, as she notes herself in her response to Lofgren, are primarily a restatement of what the Supreme Court said in Twentieth Century Music Corp. v. Aiken:

The immediate effect of our copyright law is to secure a fair return for an “author’s” creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.

On another occasion, the Supreme Court noted

The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in “Science and useful Arts.” Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.2

To put it bluntly: society benefits when creators get paid. The private right that copyright law secures is what advances the public’s interest in new expressive rights. And the importance of this private right shouldn’t be minimized, as the Ninth Circuit noted in 1981:

Despite what is said in some of the authorities that the author’s interest in securing an economic reward for his labors is “a secondary consideration,” it is clear that the real purpose of the copyright scheme is to encourage works of the intellect, and that this purpose is to be achieved by reliance on the economic incentives granted to authors and inventors by the copyright scheme. This scheme relies on the author to promote the progress of science by permitting him to control the cost of and access to his novelty.3

Other courts have reiterated the public’s benefit from copyright law, especially when considering preliminary injunctions (since the public interest must be considered when deciding to issue a preliminary injunction). Just a few examples:

  • “There is a strong public interest in the copyright system’s function of motivating individuals to make available their creative works and increase the store of public knowledge.”4
  • “Since Congress has elected to grant certain exclusive rights to the owner of a copyright in a protected work, it is virtually axiomatic that the public interest can only be served by upholding copyright protections and, correspondingly, preventing the misappropriation of the skills, creative energies, and resources which are invested in the protected work.”5
  • “Google argues that the “value of facilitating and improving access to information on the Internet . . . counsels against an injunction here.” This point has some merit. However, the public interest is also served when the rights of copyright holders are protected against acts likely constituting infringement.”6
  • “The object of copyright law is to promote the store of knowledge available to the public. But to the extent it accomplishes this end by providing individuals a financial incentive to contribute to the store of knowledge, the public’s interest may well be already accounted for by the plaintiff’s interest.”7

“One of the great fallacies of modern copyright jurisprudence”

The notion of an “untethered public interest”, as I referred to it above, and its ascendancy over the private right has seeped into the copyright skeptic zeitgeist (Lofgren is certainly not alone in her views) However, this has partly been the result of a mistake.

In the 1932 Supreme Court case Fox Film Corp. v. Doyala company that licensed films challenged the collection of state taxes on the gross receipts of royalties from its licenses.8 The company argued that its copyrights were “instrumentalities” of the federal government and, thus, immune from state taxation.

The Supreme Court rejected this argument, saying, “the mere fact that a copyright is property derived from a grant by the United States is insufficient to support the claim of exemption.” To be exempt from state taxation, the government must reserve some sort of controlling interest in a grant or privilege. But here, as the Court notes earlier, “The sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors.” In other words, the government only has a policy interest, not a property interest; “After the copyright has been granted,” said the Court, “the Government has no interest in any action under it save the general one that its laws shall be obeyed.”

But then a curious thing happened. This language, which only served to distinguish a pecuniary interest from a general interest, transmogrified into a declaration of the interest itself.

In 1948, the Supreme Court was faced with the question of whether the practice of “block-booking” — “licensing, or offering for license, one feature film or group of features on the condition that the exhibitor will also license another feature or group of features released by the distributors during a given period” — violated the Sherman Act.9 In holding that it did, the Supreme Court said, “The copyright law, like the patent statutes, makes reward to the owner a secondary consideration.”

As support, it then stated, “In Fox Film Corp. v. Doyal, Chief Justice Hughes spoke as follows respecting the copyright monopoly granted by Congress, ‘The sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors.'”

This case, in turn, was cited by the Supreme Court in the 1984 Betamax case to support the idea that “The monopoly privileges that Congress may authorize are neither unlimited nor primarily designed to provide a special private benefit.”10 And so, the eisegesis was complete; scholars today continue to rely on this quote, taken out of context, to support the supremacy of an untethered public interest over the private right.11

Legal scholar David Householder has called this notion espoused by the Betamax court, “one of the great fallacies of modern copyright jurisprudence.”12 As Householder explains:

It would be similarly fallacious to say that in a real estate transaction, the money paid to the seller is only a secondary consideration, with the primary value of the transaction consisting of the conveyance of the parcel to the buyer. Both the money and the land in such a transaction are consideration; neither is more important to the public, although at the time of the transaction the money is more important to the seller and the land is more important to the buyer. The value to society consists merely in the existence of a market for the land so that property may be obtained by those who are likely to put it to better use. Likewise, for intellectual property; the value to society consists in the existence of a market for the authors’ writings. The money paid to the author is by no means secondary. Rather, it is the unavoidable result of the creation of a market because a market cannot exist without the promise of reward to owners of property who choose to place that property on the market.

Echos from 1909

Another element that feeds into this misconstruction of copyright and the public interest is a statement made over a century ago.

During the drafting of the 1909 Copyright Act, New Hampshire Representative Frank Currier submitted a report from the Committee on Patents, which at one point stated, “Not primarily for the benefit of the author, but primarily for the benefit of the public, such rights are given.” To hear some put it, this lone statement plucked from the middle of a Committee Report represents the be-all and end-all of copyright justification in the US, an explicit and certain rejection of any consideration due the private right itself.

But immediately following, Currier distinguishes exactly what he means by the “benefit of the public,” and it sounds far more like the view expressed by Pallante:

Not that any particular class of citizens, however worthy, may benefit, but because the policy is believed to be for the benefit of the great body of people, in that it will stimulate writing and invention, to give some bonus to authors and inventors.

In enacting a copyright law Congress must consider, as has been already stated, two questions: First, how much will the legislation stimulate the producer and so benefit the public; and, second, how much will the monopoly granted be detrimental to the public. The granting of such exclusive rights, under the proper terms and conditions, confers a benefit upon the public that outweighs the evils of the temporary monopoly. [Emphasis added.]

It’s also worth noting how Currier’s statement comports with what the 1909 Copyright Act actually did to further this public benefit:

  • The term of protection for copyright was extended by 14 years.
  • Copyright protection was expanded to include mechanical reproductions (interestingly, Currier said of this provision, “The main object to be desired in expanding copyright protection accorded to music has been to give to the composer an adequate return for the value of his composition”).
  • New remedies against infringers were added, including impoundment during actions and destruction of infringing copies and plates.
  • Criminal penalties were expanded to include willful infringment of any right in any subject matter (formerly, only the unauthorized public performance of dramatic works and musical compositions carried criminal penalties).

As the Supreme Court noted in 1939, the 1909 Copyright Act “introduced many changes and was intended definitely to grant valuable, enforceable rights to authors, publishers, etc. … ‘to afford greater encouragement to the production of literary works of lasting benefit to the world.'”13 That is, the public interest was served by first securing the exclusive rights of creators.

Finally, Currier’s statement regarding the public interest in copyright law is far from an unequivocal proclamation by Congress. In 1975, former Register of Copyrights Barbara Ringer testified in front of Congress during a hearing on the revisions that would become the Copyright Act of 1976. She disagreed that, “Not primarily for the benefit of the author, but primarily for the benefit of the public, such rights are given.”

This sounds great and for a long time, I felt that this was probably correct. But, the more I have looked upon the status of authors in this country and the fact that the public interest is badly served when authors are badly served, I have felt that too often the ‘public interest’ has been identified with economic users rather than with authors.

In recent years, partly as a result of this whole revision exercise, I have been trying to gage individual issues in terms of their impact upon creativity and authorship, which I consider the ultimate public interest.

The Constitution speaks of the desirability of promoting the progress of science and useful arts, science in the broad sense of learning or knowledge, by offering protection for limited times to authors and inventors.

It seems to me that it is this protection, the exclusive rights that are supposed to be granted to authors, that is the ultimate public interest that the Constitution and its drafters were thinking about. I do not think that this has ever been fully or even partly realized in any copyright law we have had in our entire history.

Copyright, in other words, is for the author first and the nation second.

Footnotes

  1. The US Copyright Office has little direct role in regulating copyright law. The bulk of its work is in administering the registration of copyrighted works. The only area it exercises substantive rulemaking authority is in the triennial DMCA anticircumvention exemption proceedings, a relatively minor aspect of copyright law in the grand scheme of things; see Joseph Liu, Regulatory Copyright, 83 North Carolina Law Review 88, 148 (2004). []
  2. Mazer v. Stein, 347 US 201, 219 (1954). []
  3. Universal City Studios v. Sony Corp, 659 F.2d 963 (9th Cir. 1981). []
  4. ABC v Aereo, No. 12-Civ-1540(AJN), order denying preliminary injunction (SDNY, July 11, 2012). []
  5. Klitzner Industries v HK James & Co, 535 F.Supp. 1249, 1259-60 (ED Pa. 1982); cited by Taylor Corp v Four Seasons Greetings, 403 F.3d 958 (8th Cir 2005); Concrete Machinery v Classic Lawn Ornaments, 843 F.2d 600 (1st Cir 1988); Apple Computer v Franklin Computer Corp, 714 F.2d 1240 (3rd Cir 1983); Coach v Ocean Point Gifts, No. 09-4215, Order on Motion for Default Judgment (D. NJ, June 14, 2010); FMC Corp v Control Systems, 369 F.Supp.2d 539 (ED Pa 2005); TalkISP v XCast Laboratories, No. C05-0055, Report and Recommendation on Motion for Preliminary Injunction (ND Iowa, Dec. 19, 2005); Video Pipeline v Buena Vista Home Entertainment, 192 F.Supp.2d 324 (D. NJ 2002); Budish v Gordon, 784 F.Supp 1320 (ND Ohio 1992); EF Johnson v Uniden Corp, 623 F.Supp 1485 (D. Minn 1985); Albert E. Price, Inc v Metzner, 574 F.Supp 281 (ED Pa 1983); Ass’n of American Medical Colleges v Mikaelian, 571 F.Supp 144 (ED Pa 1983). []
  6. Perfect 10 v Google, 416 F.Supp.2d 828, 859 (2006). []
  7. Salinger v Colting, 607 F.3d 68, 82 (2nd Cir. 2010). []
  8. 286 US 123. []
  9. United States v. Paramount Pictures, 334 US 131. []
  10. Sony Corp. v. Universal City Studios, 464 US 417, 429 (1984). []
  11. See, for example, Jessica Litman, Readers’ Copyright, 58 Journal of the Copyright Society of the US 325 (2011); Edward Lee, Technological Fair Use, 83 Southern California Law Review 797, 819 (2010); William Patry, Moral Panics and the Copyright Wars, pg. 123 (Oxford Univ. Press 2009); Pamela Samuelson, Unbundling Fair Uses, 77 Fordham Law Review 2537, 2580-81 (2009); Rebecca Tushnet, Legal Fictions: Copyright, Fan Fiction, and a New Common Law, 17 Loyola L.A. Entertainment Law Journal 651 (1997). []
  12. The Progress of Knowledge: A Reexamination of the Fundamental Principles of American Copyright Law, 14 Loyola LA Entertainment Law Review 1, 35 (1993). Householder similarly notes how the notion is premised in part on the mistake discussed above. []
  13. Washingtonian Co. v. Pearson, 306 US 30, 36. []

Chicago attorney Kevin Parks was kind enough to send me a copy of his new book, Music & Copyright in America: Toward the Celestial Jukebox.

Copyright in the music business can be a daunting subject for the uninitiated. For starters, you’re typically dealing with two distinct copyrighted works — one for the underlying musical composition and one for the sound recording of that composition. Next, each copyright actually entails a “bundle” of separate rights: reproduction, distribution, public performance, etc. Through industry practice and custom, many of these rights have come to be administered through different entities; the public performance right for musical compositions, for example, is primarily administered through collective licensing societies — ASCAP, BMI, and SESAC in the US. Finally, the US Copyright Act includes a number of compulsory licenses for certain uses of copyrighted works — mechanical reproductions of musical compositions and digital performances of sound recordings for noninteractive webcasters, to name two — which adds to the complexity.

How does one make sense of all of this?

In Music & Copyright in America: Toward the Celestial Jukebox, IP attorney Kevin Parks contributes to a better understanding of this system by exploring how it developed. Beginning in the early 19th century, when music as commerce first began to emerge in the US, he traces the legal and commercial developments of musical copyrights.

Composed of seven major sections, Parks chronicles the birth of the American music industry, the development of sound recording technology, the development of radio and growth of the public performance right, struggles against record piracy, the challenges brought by the internet, and finally today’s changes involving convergence and the shift toward the cloud.

Telling the story of music and copyright in America as Parks did is interesting on several levels.

First, it is somewhat striking how idiosyncratic the development of musical copyright law has been at times. Parks notes that the public performance right for musical compositions resulted from a last minute change to an 1897 amendment aimed primarily at shoring up the public performance right for dramatic compositions. Its appearance is somewhat of a mystery, as songwriters at the time were not pushing for the right, and there is “scant evidence” that the change was the result of lobbying from music publishers or more prominent songwriters. It would not be until the formation of ASCAP and the emergence of radio decades later that composers and publishers would begin to take advantage of the public performance right, which today generates over $1.5 billion a year for songwriters and music publishers.

The creation of the compulsory license for mechanical reproductions is another example. Mechanical reproduction, that is, copying a musical composition onto a mechanical object that plays the sounds like a piano roll or phonograph, was explicitly recognized as part of the exclusive right to reproduction under the Copyright Act of 1909. Prior to that, courts, including the Supreme Court the year before, had held that this type of copying was not within the gambit of a copyright owner’s right to reproduce his work, meaning piano rolls and records of popular songs could be produced without permission of the songwriters.

But at the same time, Congress created a compulsory license in the statute, allowing anyone to mechanically reproduce a song for a set fee without permission of the songwriter. The compulsory license was added because of concerns that a record company might monopolize the market on mechanical reproductions of songs — specifically the Aeolian Company, which had financed the earlier Supreme Court fight. Whether or not these concerns over the potential for monopoly were accurate or just a product of their time, the fact remains that the compulsory license is still with us, long after the Aeolian Company ceased making piano rolls.

Second, the book reinforces the idea that there has never been anything approaching any type of monolithic “music industry.” Throughout the last two centuries, the music industry has been comprised of a number of various stakeholders, whose interests sometimes aligned but often diverged. And neither the stakeholders nor interests remained constant; companies folded or shifted to new industries, technology and society changed. You often hear critics of copyright try to craft some overriding historical narrative of the law — the music industry hates innovation is a popular example. But such narratives oppose history.

Finally, it is easy to pick out parallels between historical challenges in musical copyright and today’s challenges. One common theme is how often emerging players would resist copyright liability by pointing out the “promotional” benefit their use of music provided. Another is how often positive changes only resulted when artists and creators spoke up.

The narrative is breezy and engaging. In just over 200 pages, Parks hits on all the major events of musical copyright in the US over the past 200 years while fleshing out the tale with interesting biographical sketches and historical tidbits. These latter details elevate the book from what could be a perfunctory treatment of an admittedly dry subject into a story equally at home on your bedroom nightstand as it is on a reference desk. And, once read, the book remains a tremendous source of citations to legal documents and secondary sources for delving deeper into the events and topics it addresses.

The book does get weaker the closer it gets to the present. Much of this is unavoidable: first, because any book dealing with current events will be somewhat outdated when it hits the stands because of the lag time between final draft and publishing, and second because it’s more difficult to craft a broader narrative without the benefit of history’s filter. For example, Parks includes a discussion of the Supreme Court’s 2012 decision in Golan v Holder. While the case is certainly as important as any Supreme Court case goes, it is unlikely to have much lasting impact on music and copyright, as it dealt with a relatively obscure and transitional provision in the Uruguay Round Agreements Act.

Finally, I’d be remiss in not pointing out that while the book may be of interest to a general audience, it is priced for the professional legal market.

But overall, the positives of Music & Copyright in America: Toward the Celestial Jukebox far outweigh any negatives. It remains a fascinating look at the development of the American music industry over the past two centuries and a tremendous resource for legal practitioners and scholars.

Talking Music, Freeloading, and “Cultural Self-Destruction” with Chris Ruen — Vol.1 Brooklyn sat down with Chris Ruen to discuss his new book Freeloading, coming out soon. An engaging interview that wheels from Adam Smith to 50 Shades of Grey. I can’t wait to read Ruen’s book.

© is good for artists, ask them— Bemuso takes issue with the idea, propounded here by Rick Falkvinge, that creators don’t benefit from legal protection of their works. “Rick Falkvinge says ‘Eliminate those gatekeepers and those 93% of the money go to artists instead – or at least, a significantly larger portion of it.’ But if the artists have no legal claim to their work how can they earn from it? We don’t have to guess how big business would behave in the absence of legal ownership. Sam Tarrantino (Grooveshark) makes money out of other people’s work. So does Kim Dotcom (MegaUpload). And so, of course, does Google and many others. They pay the artists nothing.”

Protect IPR, Protect Indonesia — When it comes to discussing international copyright protections, the case is often made that better protection only benefits more-developed countries, at the expense of lesser-developed countries. But that’s not the case, as this article from the Jakarta Post demonstrates. To give one example, “Because of lack of IPR protection, Indonesia has missed out on the booming global software business, with Bangalore in India positioning itself as Asia’s Sillicon Valley. Indonesia is not short of software expertise, but this industry cannot survive, let alone flourish, without the protection of the intellectual talent on which it is crucially based.”

Pandora Asks Users To Lobby Congress On Royalty Rates (Updated) — Forbes takes a look at the recently introduced Internet Radio Fairness Act. According to one analysist, the bill is “crazy”: “Pandora is effectively asking the government to intervene and reduce its cost structure, helping it remain a viable business because it knows its business model only works while running limited advertising. Why should the U.S. government allow musicians to be harmed simply to help Pandora and its investors generate enhanced returns?”

Blogspot.com, a Bridge to Piracy? — Ellen Seidler takes a look at Google’s Blogger platform, home to many wonderful original blogs on a variety of subjects, but also home to many sites profitting off and driving traffic to illegal content. Asks Seidler, “Google’s Blogger platform makes website creation easy.  Why not do more to make operating a pirate site hard?”

Argument preview: Court tries again on copyright importation problem — The inimitable SCOTUSBlog takes a look at the upcoming arguments in Kirtsaeng v. John Wiley & Sons, where the Court is faced with the issue of how the Copyright Act’s first sale doctrine and §602’s prohibition on unauthorized importation interact. I’ve discussed the case on this site here and here.

Breaking Bad’s Bryan Cranston on the Ethics of Supporting Creators — CreativeAmerica highlights recent remarks by the TV star on piracy. Said Cranston in an interview with CNET, “I mean piracy is not good in any sense. You have artists hard at work and they need to be compensated for their work.” Also, I’m only up to Season 4, so no spoilers, plz.

Overall impact of unlicensed p2p file-sharing is negative — The IFPI shares some thoughts on the Google-funded Copy Culture Survey, a preview of which was released this week, making headlines for its unsurprising and meaningless conclusion that, when asked over telephone, US P2P users reported higher spending on legal music than non-P2P users. Notes the IFPI, “The overall impact of P2P use on music purchasing is negative, despite a small proportion of P2P users spending a lot on music.”

The Copyright Alert System: Moving to Implementation — The Center for Copyright Information announced this week that the Copyright Alert System, announced in July 2011, is going to begin rolling out among participating ISPs over the next two months. “The progressive series of alerts is designed to make consumers aware of activity that has occurred using their Internet accounts, educate them on how they can prevent such activity from happening again (for example, by securing home wireless networks or removing peer-to-peer software), and provide information about the growing number of ways to access digital content legally.”

5 Important Copyright Misconceptions that Linger — Jonathan Bailey lists some of the top misconceptions that are still most commonly seen online, including “fair use is magic” and “every song has one copyright.”

From Megashark To Some Guy Who Kills People – The Realities Of Being An Indie Filmmaker — Bleeding Cool interviews Jack Perez, writer and director of Mega Shark vs. Giant Octopus, which is exactly what it sounds like, and director of Some Guy Who Kills People, also much like what it sounds like, though streets ahead of Mega Shark in terms of quality. Says Perez, “Regardless of whatever film it is I’m making, making any film is an opportunity, whether you connect with it intimately or not so I value the opportunity to make anything that I don’t have to pay for myself. The difference isn’t in how much of myself I put into the film, because I end up breaking my back on a dumb movie as much as on a movie that’s important to me because once I get there I don’t see anyway to do it other than make the best film I can make.

Thomas Edison invented the phonograph in 1877, the first device that was capable of recording and reproducing sound. The device would soon become an important source of musical entertainment. Columbia Records, formed in 1888, for example — now a subsidiary label of Sony Music Entertainment — would boast a catalog 10 pages long of pre-recorded musical records by 1891.

As early as 1888, songwriters and composers would claim, unsuccessfully, that reproducing their songs on mechanical devices like the phonograph was copyright infringement.1 Courts rejected these claims, including the Supreme Court in 1908, but Congress eventually stepped in and recognized mechanical reproduction as one of the exclusive rights of copyright owners in the Copyright Act of 1909.

Recording artists would not be so successful in making the claim that they too were entitled to separate legal protection for their interpretation of musical compositions on recordings. As early as 1906, manufacturers of recorded media would seek copyright protection for their works.2 Repeated attempts in courts and legislatures would fall short; legal protection against “dubbing” and bootlegging sound recordings would not begin to appear until the late 60s, and only then in the states. By 1970, half of state legislatures prohibited sound recording piracy.3 Federal law eventually recognized copyright protection for sound recordings in 1972, but only for recordings made after that date, and only for reproduction, distribution, and derivative works — a public performance right in sound recordings continues to be denied to this day under US law, contrary to most other nations,4 except in the case of digital public performances.5

But recording artists would have sporadic successes in courts to protect their works before the arrival of federal copyright protection. One example is Metropolitan Opera Assn v Wagner-Nichols, a 1950 decision from the New York Supreme Court6 granting a preliminary injunction against a company engaged in unauthorized duplication of sound recordings.7 The court relied on the common law tort of unfair competition and equitable principles to reach its decision.

The language of the decision makes it worth a read. It serves as a reminder that, while copyright protection itself is solely a creature of statute, it is firmly rooted in principles of justice, fairness, and equity. After opening with a discussion of the facts of the case, the court writes:

In passing upon the question of the sufficiency of a complaint alleging unfair competition it is helpful to bear in mind the origin and evolution of this branch of law. It originated in the conscience, justice and equity of common-law judges. It developed within the framework of a society dedicated to freest competition, to deal with business malpractices offensive to the ethics of that society. The theoretic basis is obscure, but the birth and growth of this branch of law is clear. It is an outstanding example of the law’s capacity for growth in response to the ethical as well as the economic needs of society. As a result of this background the legal concept of unfair competition has evolved as a broad and flexible doctrine with a capacity for further growth to meet changing conditions.

Defendants had argued that unfair competition was limited to “palming off” someone else’s work as their own. Thus, since defendants weren’t claiming the recordings as their own, there was no unfair competition. The court discarded this argument, as well as the argument that defendants weren’t in direct competition with the Opera.

The modern view as to the law of unfair competition does not rest solely on the ground of direct competitive injury, but on the broader principle that property rights of commercial value are to be and will be protected from any form of unfair invasion or infringement and from any form of commercial immorality, and a court of equity will penetrate and restrain every guise resorted to by the wrong-doer.

The court next considers the public’s interest in applying the doctrine of unfair competition to this case, in a discussion that parallels discussions about the goals and purposes of copyright law.

The production of an opera by an opera company of great skill, involving, as it does, the engaging and development of singers, orchestra, the training of a large chorus and the blending of the whole by expert direction into a finished interpretative production would appear to involve such a creative element as the law will recognize and protect against appropriation by others.

***

The fostering and encouragement of fine performances of grand opera, and their preservation and dissemination to wide audiences by radio and recordings are in the public interest. The Metropolitan Opera, over a period of sixty years, has developed one of the finest, if not the finest, opera companies available to Americans. Through the media of recordings and broadcasts, an avenue of culture has been opened to vast numbers of Americans who have been able to enjoy the fruits of this great enterprise. To many, it is the only available source of grand opera. To refuse to the groups who expend time, effort, money and great skill in producing these artistic performances the protection of giving them a “property right” in the resulting artistic creation would be contrary to existing law, inequitable, and repugnant to the public interest. To hold that the broadcasts of these performances, making them available to a wider audience of Americans, deprives the Metropolitan Opera of all of its rights in this production and abandons the production to anyone to appropriate and exploit commercially, would indeed discourage the broadcasting of such operas and penalize not only the Metropolitan Opera but the public which now benefits from these broadcasts. Equity will not bear witness to such a travesty of justice; it will not countenance a state of moral and intellectual impotency. Equity will consider the interests of all parties coming within the arena of the dispute and admeasure the conflict in the scales of conscience and on the premise of honest commercial intercourse.

The court ultimately grants the injunction. It ends by noting:

The conclusion here reached is not an onslaught on the currents of competition; it does not impose shackles on the arteries of enterprise. It simply quarantines business conduct which is abhorrent to good conscience and the most elementary principles of law and equity.

 

Footnotes

  1. Kennedy v McTammany, 33 F. 584 (D. Mass. 1888). []
  2. Copyright Law Revision, Study No. 26: The Unauthorized Duplication of Sound Recordings, Subcommittee on Patents, Trademarks, and Copyrights (1961). []
  3. Capitol Records v Naxos, 830 NE 2d 250 (NY Ct of Appeals, 2005). []
  4. According to the Future of Music Coalition, “At least 75 nations, including most European Union member states, do have a performance right.” []
  5. 17 USC § 114. []
  6. Unlike the federal court system, where the Supreme Court is the highest level court, the New York Supreme Court is the lowest, trial level court. []
  7. 199 Misc. 786. []

Last week, I took a look at Kirtsaeng v John Wiley & Sons, a case currently up for review at the Supreme Court, with oral arguments scheduled October 29th. There, the Court is faced with the following issue:

How do Section 602(a)(1) of the Copyright Act, which prohibits the importation of a work without the authority of the copyright’s owner, and Section 109(a) of the Copyright Act, which allows the owner of a copy “lawfully made under this title” to sell or otherwise dispose of the copy without the copyright owner’s permission, apply to a copy that was made and legally acquired abroad and then imported into the United States?

The case presents some tricky issues of statutory interpretation. Having read through many of the briefs, I wanted to look at several of these issues in more detail.

Does §602 only apply to non-owners?

As noted in my previous post, § 602(a)(1) prohibits importation of both “piratical” and “nonpiratical” works — it applies to both infringing copies and copies legally acquired abroad. Wiley and the US argue that Kirtsaeng’s interpretation of the first sale doctrine would render the latter superfluous: if a sale abroad defeats the §602 importation prohibition, when, if ever, would it operate to protect against nonpiratical works?

Kirtsaeng relies on Quality King to argue that §602 still retains meaning under its interpretation of the first sale doctrine. There, the Supreme Court gave three reasons in support. The second reason it gave was that “because the protection afforded by § 109(a) is available only to the ‘owner’ of a lawfully made copy (or someone authorized by the owner), the first sale doctrine would not provide a defense to a §602(a) action against any nonowner such as a bailee, a licensee, a consignee, or one whose possession of the copy was unlawful.”

I’m not convinced this interpretation is accurate. §602(a)(3) provides three exceptions to §602(a)(1), the second of which reads, “importation or exportation, for the private use of the importer or exporter and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the United States or departing from the United States with respect to copies or phonorecords forming part of such person’s personal baggage.” This exception doesn’t explicitly refer to “ownership”, but it’s difficult to imagine a situation where it would apply to anyone but an owner. A “bailee” would not be importing a copy for his “private use”; a “consignee” must necessarily distribute the copy once it’s imported.

It is a basic principle of statutory interpretation that courts should give effect to every clause and word of a statute.1 If §602(a) does not apply to “owners”, it would not need an exception that applies to no one but owners.

And even if this interpretation is accepted, I’m not sure it would ultimately help Kirtsaeng. Unauthorized importation under §602(a) violates the copyright owner’s exclusive right to distribution.2 It is well-settled law that in copyright infringement cases, as with other areas of tort law, “any member of the distribution chain can be sued as an alleged joint tort-feasor.”3

Under Kirtsaeng’s interpretation, if §602 does not apply to owners, and the owner himself acquires a copy lawfully acquired overseas, the first sale doctrine does not prevent importation. But if someone besides the owner — a “bailee, a licensee, a consignee” — imports the copy without authorization, that party is liable for infringing the distribution right, and, by extension, any other member of the distribution chain, including the owner. And I would imagine, in most cases, a third party is doing the actual importation. That is, even if Kirtsaeng is correct, we’re back where we started at. An “owner” of a copy lawfully acquired overseas may not be personally liable for importation under the first sale doctrine, but he is still liable as a joint tortfeasor for the third party importer’s unauthorized distribution.

Is Importation a Sale or Disposition?

§109 gives “the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” (Emphasis added). It doesn’t give any other rights to the owner of a particular copy — owning a DVD doesn’t mean you can make additional copies, or show it publicly for profit.4

So is §109 even relevant to §602? §602(a) prevents “importation into the United States.” Importation is not a sale, but is it otherwise a disposition? To “dispose” is defined as “to transfer to the control of another; to get rid of.” Typically, disposition of property can be accomplished by gift, bequest, devise, etc; under the law, it most commonly refers to a transfer of legal title of the property. This is distinguishable from a mere transfer of possession.5 A bailment, for example, involves the transfer of possession but not legal title, and so is distinguishable from a sale.6

In the same vein, importation does not necessarily involve a transfer of legal title — it is simply the act of “bringing an article into a country from the outside.”7 Any transfer of title that occurs is independent of this bringing. Read this way, where importing and selling are different types of acts, keeps the first sale doctrine and §602 in harmony, allows the market segmentation that Congress intended when it wrote §602, and avoids concerns over hypothetical downstream resellers raised by Kirtsaeng and his amici.

But the Supreme Court found an argument similar to this “unpersuasive” in Quality King. It said,

Strictly speaking, an importer could, of course, carry merchandise from one country to another without surrendering custody of it. In a typical commercial transaction, however, the shipper transfers “possession, custody, control and title to the products” to a different person, and L’anza assumes that petitioner’s importation of the L’anza shipments included such a transfer. An ordinary interpretation of the statement that a person is entitled “to sell or otherwise dispose of the possession” of an item surely includes the right to ship it to another person in another country.

This holding would seem to foreclose the same argument being made in Kirtsaeng, and as far as I can tell, no party or amicus has raised the issue. But I would suggest that there is a solid argument the Supreme Court got it wrong in Quality King. The Court held that importation is merely an incident to a sale or disposition. But importation is a distinct act from any sale or disposition. You can, for example, buy or sell food without restraint, but you can’t open a restaurant to buy and sell food without the proper licensing and permits. Those licensing and permits, incidents of the state’s power to regulate health and safety, are not improper restraints on the alienability of property.

Likewise, you can sell or dispose of a lawfully acquired copy of a copyrighted work. §602 prohibits the importation of copies into the US without the copyright owners authorization, an incident of Congress’s Constitutional authority to secure copyright owners’ exclusive rights. Conflating the act of importation with a disposition, as the Court did in Quality King, seems erroneous. The right to sell or dispose of an item does not “surely include[] the right to ship it to another person in another country” if Congress specifically passed a law saying it doesn’t. Keeping the two separate and distinct, however, gives effect to the language of both §109 and §602 (and other provisions in the Copyright Act) while remaining true to Congress’s intent.

Footnotes

  1. Yule Kim, Statutory Interpretation: General Principles and Recent Trends, CRS Report for Congress, No. 97-589 (2008). []
  2. “Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501. 17 USC §602(a)(1).” []
  3. Costello Pub. v Rotelle, 670 F.2d 1035, 1043 (DC Cir. 1981), quoting Stabilisierungsfonds Fur Wein v Kaiser Stuhl Wine Distributors, 647 F.2d 200 (DC Cir 1981); but see Enesco v Jan Bell Marketing, 992 F.Supp. 1021 (ND Ill. 1998), holding subsequent distributor cannot be held liable under §602. []
  4. Reinforcing this interpretation is the fact that §109 provides additional exceptions to owners of particular copies. §109(c) and (e) provide that the owner of a particular copy can publicly display that copy and the owner of a coin-operated video game machine can publicly perform and display that video game respectively. See also Columbia Pictures v Redd Horne, 749 F.2d 154, 159-60 (3rd. Cir. 1984). []
  5. See, for example, UMG Recordings v Augusto, 628 F.3d 1175, 1180 (9th Cir. 2011), “not every transfer of possession of a copy transfers title.” []
  6. Sturm v Boker, 150 US 312, 329-30 (1893). []
  7. Cunard SS v Mellon, 262 US 100,122 (1923). []

A Deeper Bond: A ‘Mad Men’ Insight On Revaluing Music — ReValue Music takes a cue from the scene from the first season of AMC’s Mad Men to ask how artists can help change the perceived value of music. “It is largely up to you, as the independent artist, to establish the way your audience determines the value of your work. Music is not a download. It is not a gadget or a widget. It is not a temporary utility that will only serve a limited purpose and then be disposed of. As an artist, you are not selling your latest track or album; you are selling something amazing, almost magical. You are selling a transcendent tapestry of sound that somehow facilitates the deepest of connections to one’s self and to others.”

Let the vinyl spin: my journey into record collecting — Along those same lines, Cameron Schaefer, of Vinyl + Cocktails, discusses how “dying of musical thirst in an ocean of MP3s,” led him to embrace reconnecting with music in the analog medium. Not that everyone need become vinyl purists, but well worth the read.

Lessons in Stealing Like an Artist — The Copyright Alliance’s Sandra Aistars points to a recent NY Times piece on fair use and creativity, highlighting poet Austin Kleon’s book Steal Like an Artist. Says Aistars, “The key according to Kleon, however, is not to copy or to imitate, but to transform what you steal so that you make it your own, and then send it back out into the world for others to embrace and react to.”

How Much do Google and Facebook Profit From Your Data? — Ars Technica reports on PrivacyFix, a new add-on for Firefox and Chrome, that calculates how much value your browsing behavior benefits the two tech giants. I haven’t personally tried it yet, but it sounds helpful, especially since it also lets you know which websites are tracking your behavior and feeding it back to the sites. PrivacyFix also apparently offers tips and techniques to help you adjust your privacy settings on Google and Facebook.

YouTube to serve niche tastes by adding channels — Google is spending $200 million this year promoting original programming on YouTube (as well as an undisclosed amount for production). Cat videos don’t pay the bills.

Sherman helps RIAA lighten up — An entertaining profile of RIAA CEO Cary Sherman over at Variety.

A Lesson from Steve — Chris Castle offers a few words to mark the one year anniversary of Jobs’ passing. “Not surprisingly, Steve’s choice to embrace the copyright of others has led to enormous financial reward for his company and his employees.  He took an already great company and made it greater–ultimate vindication for the ‘Newton,’ if you ask me–and he also put a lot of money into the hands of artists.”

WhoSampled Wins EMI Innovation ChallengeWhoSampled, an incredibly comprehensive database of songs that have been sampled and songs that have used samples, beat out other music apps to win EMI’s Innovation Challenge in London earlier this week.

On October 29th the Supreme Court will hear oral arguments in Kirtsaeng v John Wiley and Sons, Inc. The case concerns the US Copyright Act’s importation provisions in 17 USC § 602 and the first sale doctrine. Since it’s a copyright case, that means it’s never too early to start overreacting. Jennifer Waters of MarketWatch leads the pack with her article, Your right to resell your own stuff is in peril, appearing last week. Waters writes, “Tucked into the U.S. Supreme Court’s busy agenda this fall is a little-known case that could upend your ability to resell everything from your grandmother’s antique furniture to your iPhone 4.”

Could it? Let’s take a look at Kirtsaeng in more detail.

First Sale and § 602

Among the rights given to copyright owners is the exclusive right “to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”1 This right is limited by the “first sale doctrine”, first recognized by the Supreme Court in 19082 and then codified in the Copyright Act of 1909. Since the Copyright Act of 1976, the first sale doctrine has resided in 17 USC § 109(a), which reads:

Notwithstanding the provisions of section 106 (3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

Put another way, a copyright owner’s exclusive right to distribute a particular copy of a work (but not her right to reproduce, display, perform, etc. it) ends at the first sale.

The Copyright Act of 1976 also included provisions that made unauthorized importation of copyrighted works an infringement of the distribution right, codified at 17 USC § 602(a)(1):

Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.

While the provision that follows this prohibits the importation of copies “the making of which either constituted an infringement of copyright, or which would have constituted an infringement of copyright if this title had been applicable,”3 § 602(a)(1) applies to both “piratical” and “nonpiratical” copies; so long as they have been “acquired outside the United States”, only the copyright owner of the work can import or authorize their importation.

The motive behind § 602 was to give copyright owners more protection against the “grey market.” Like most other businesses and industries, copyright owners engage in market segmentation to decrease risk and maximize revenues. Many copyright holders practice geographic market segmentation, contracting with distributors in local markets who provide works adapted to the particular needs of that market. Prior to the 1976 Copyright Act, US copyright law only prohibited the importation of piratical goods, with the understanding that copyright owners could still segment markets through exclusive contracts with their foreign distributors. But this was seen as inadequate, as it didn’t prevent third parties from acquiring works in other countries and importing them into the US, since there would be no privity between these third parties and the original copyright owner. So, Congress expanded the importation provisions to also include nonpiratical works.

The first sale doctrine and § 602 are fine in isolation, but put together and things get tricky. If a copy is sold in a foreign country and then imported to the US without the copyright owner’s permission, does the first sale doctrine apply, effectively rendering § 602 superfluous?

Grey Market Case Law

Since the enactment of the 1976 Copyright Act, courts have wrestled with this interplay between § 602 and the first sale doctrine. The results have actually been very consistent.

The first line of cases, of which Kirtsaeng would fall under, involves copies manufactured outside the US under the authority of the copyright owner, but imported into the US without authorization.

One of the first cases to raise this issue and reach the appellate level came just a few years after the Copyright Act of 1976 went into effect. In Columbia Broadcasting v Scorpio Music Distributors, Scorpio had bought approximately 6,000 copies of recordings copyrighted by Columbia from an importer who had acquired them from a company in the Philippines acting as the exclusive manufacturer and distributor of the recordings in that country.4 Scorpio argued that it was protected by the first sale doctrine because, even though the recordings were manufactured outside the US, they had already been sold, thus exhausting the copyright owner’s exclusive right to distribution, including the § 602 bar on importation.

The District Court disagreed with Scorpio, holding that the first sale doctrine only “grants first sale protection to the third party buyer of copies which have been legally manufactured and sold within the United States and not to purchasers of imports such as are involved here.” The Third Circuit affirmed the court’s decision on appeal, without opinion.5

The Ninth Circuit has consistently held the same through a series of cases. First, in 1991, in BMG Music v Perez, the court held that “the words ‘lawfully made under this title’ in § 109(a) grant first sale protection only to copies legally made and sold in the United States.”6 Three years later, the Circuit declined to overturn or distinguish BMG Music in Parfums Givenchy v Drug Emporium.7 Then again in Denbicare USA v Toys ‘R’ Us, the court reiterated that the first sale doctrine “applies to copies made abroad only if the copies have been sold in the United States by the copyright owner or with its authority.”8

A number of district courts have also held that the first sale doctrine is not a defense for unauthorized importation when copies are made lawfully outside the US.9

In 1998, the Supreme Court resolved a different line of cases dealing with the interplay between § 602(a) and the first sale doctrine in Quality King Distributors v L’anza Research.10 There, the question was whether § 602(a) barred the importation of goods that had originally been manufactured in the US — making a “round trip” journey. The Court held, in a unanimous decision, that it did not, overturning the Ninth Circuit’s earlier decision, but consistent with other courts that had faced the issue.11

However, in dicta, the Court said, “§ 602(a) applies to a category of copies that are neither piratical nor ‘lawfully made under this title.’ That category encompasses copies that were ‘lawfully made’ not under the United States Copyright Act, but instead, under the law of some other country.” In addition, Justice Ginsburg concurred, adding, “we do not today resolve cases in which the allegedly infringing imports were manufactured abroad.”

The Ninth Circuit revisited the situation where copyrighted works are first manufactured abroad in 2008, in Omega v Costco.12 Costco, which had sold Omega watches originally obtained from overseas distributors, argued that the Quality King decision overturned the 9th Circuit’s precedent regarding the first sale doctrine’s application to § 602(a) when the goods are not manufactured in the US. The court disagreed.

The case was appealed, and the Supreme Court granted cert. But rather than weigh in, the Court, with Justice Kagan recused, came to a tie, affirming the Ninth Circuit’s decision by default without issuing an opinion.13 Many had expressed concerns that Omega was benefiting from the Copyright Act’s importation provisions by affixing a tiny copyrighted logo on the back of ordinarily uncopyrightable watches. It should be noted that Omega eventually lost on this point; after the case returned from the Supreme Court to the District Court, the court granted Costco’s motion for summary judgment, saying, “Omega misused its copyright of the Omega Globe Design by leveraging its limited monopoly in being able to control the importation of that design to control the importation of its Seamaster watches.”

In short, considering the above and the Second Circuit’s decision in Kirtsaeng, every court that has interpreted § 602(a) since it was enacted over 30 years ago has come to the same conclusion: the first sale doctrine does not extinguish the exclusive right to import copyrighted works that have been manufactured in foreign countries.14

Kirtsaeng

Let’s turn now to Kirtsaeng. Supap Kirtsaeng, originally from Thailand, attended college and graduate school in the US beginning in 1997. To help defray the costs of his education, he engaged his family back home to purchase Thai versions of English language textbooks, which were cheaper than US versions, and ship them to him, where he resold them on eBay.15 Kirtsaeng later would testify that this venture netted him approximately $900,000 in revenue.

Among the books Kirtsaeng resold were several published by John Wiley & Sons. Wiley sued Kirtsaeng in 2008, claiming, among other things, infringement of its distribution right. The case went to trial, and a jury found Kirtsaeng liable for willful copyright infringement, awarding statutory damages of $600,000 to Wiley. Kirtsaeng appealed.

On appeal, the Second Circuit was tasked with the question of “whether the first sale doctrine, 17 U.S.C. § 109(a), applies to copies of copyrighted works produced outside of the United States but imported and resold in the United States.” Noting the tension between the first sale doctrine and § 602(a)(1), the court relied on the text of §109(a), the structure of the Copyright Act, and the Supreme Court’s opinion in Quality King.

The court found no help from the statute’s text, calling it “utterly ambiguous.” The Copyright Act’s structure and Quality King, however, convinced the court to hold that “the phrase ‘lawfully made under this Title’ in § 109(a) refers specifically and exclusively to copies that are made in territories in which the Copyright Act is law, and not to foreign-manufactured works.” It rejected Kirtsaeng’s alternative interpretations of the phrase, noting that § 602(a)(1) would be virtually meaningless “in the vast majority of cases if the first sale doctrine was interpreted to apply to every copy manufactured abroad that was either made ‘subject to protection under Title 17,’ or ‘consistent with the requirements of Title 17 had Title 17 been applicable.'” Since the books imported by Kirtsaeng had been manufactured outside the US, the Second Circuit upheld the district court’s decision that the first sale doctrine did not provide Kirtsaeng with a defense to his unauthorized importation.

Judge Garvan Murtha dissented from the Second Circuit’s decision, disagreeing with the court’s analysis. After engaging in his own analysis of the Copyright Act, as well as looking at the policy behind the first sale doctrine, he found that “Nothing in § 109(a) or the history, purposes, and policies of the first sale doctrine limits it to copies of a work manufactured in the United States,” concluding that the doctrine does apply to foreign manufactured copies.”

Now that the case is at the Supreme Court, one of the major issues is how to interpret the phrase “lawfully made under this title” in the first sale doctrine. Kirtsaeng argues that it means a copy had been made in accordance with the Copyright Act, meaning a sale in a foreign country counts as a “first sale”, exhausting the copyright owners authority to prohibit importation. Wiley argues that it instead means a copy has been made in the United States, since the Copyright Act does not apply extraterritorially.

I’ll refrain from predicting the outcome of the case so early on, but let’s take a look at some of the factors that favor each party.

Factors favoring John Wiley & Sons

Case law. As noted above, every court that has considered this question, including two other Circuit Courts, has reached the same result as Wiley seeks. In addition, the Supreme Court has indicated in dicta that it would agree with the result the Second Circuit reached.

Legislative history. The House Report on the Copyright Act of 1976, HR 94-1476, seems clear in its support of the interpretation embraced by the Second Circuit:

Section 602, which has nothing to do with the manufacturing requirements of section 601, deals with two separate situations: importation of “piratical” articles (that is, copies or phonorecords made without any authorization of the copyright owner), and unauthorized importation of copies or phonorecords that were lawfully made. The general approach of section 602 is to make unauthorized importation an act of infringement in both cases, but to permit the United States Customs Service to prohibit importation only of “piratical” articles.

The Copyright Office also agreed that this was the purpose of § 602 during its drafting, as the US points out in its brief:

The Copyright Office ultimately endorsed legislation that would expand the importation restrictions to encompass “foreign copies that were made under proper authority.” The Register explained that the provision would bar importation if, “for example, … the copyright owner had authorized the making of copies in a foreign country for distribution only in that country.”

Treatises. Legal treatises are given much weight by courts, and all the major copyright treatises today interpret the Copyright Act the same way as Wiley. Nimmer writes that the Act should be “interpreted to bar the importation of gray market goods that have been manufactured abroad.”16 Patry states that the Act prohibits the importation of copies that “were not ‘lawfully made under this title,’ i.e., were not made in the United States.”17 Goldstein says, “the first sale defense is unavailable to importers who acquire ownership of gray market goods made abroad.”18

Factors favoring Kirtsaeng

Costco‘s 4-4 split. Though the Supreme Court did not issue an opinion in Costco, there was something that four of the Justices disagreed with in the Ninth Circuit’s opinion. That’s good news for Kirtsaeng, but whether that area of disagreement ultimately favors him remains to be seen. Oral arguments may shed some light on this.

Growing judicial discomfort? A review of the case law suggests, at least in some courts, increased skepticism with the accepted interpretation of § 602 and concern over its effect on the first sale doctrine (though the latter point has yet to be tested in court, as explained below). The most recent example is Judge Murtha’s dissent in this very case at the Second Circuit. In Pearson Education v Liu, the Southern District Court of New York flat out rejected the accepted interpretation, saying, “the Court provisionally is of the view that nothing in § 109(a) or the history, purposes, and policies of the first-sale doctrine, limits the doctrine to copies of a work manufactured in the United States.” But it deferred to the Supreme Court’s dicta in Quality Kings, saying, “While this Court would not limit the doctrine to copies manufactured in the United States, the case for this interpretation of § 109(a) is not so overwhelming as to justify disregarding the Supreme Court’s views.”

When does the first sale doctrine kick in?

What has attracted the most attention to this case, it seems, is the question of what happens, under the currently accepted interpretation of § 602, to “downstream” owners of copies manufactured abroad but imported without authorization. If the first sale doctrine only applies to works manufactured in the US, does that mean that copyright owners retain exclusive distribution rights over any goods manufactured abroad? Kirtsaeng, in fact, presents this question as the issue in front of the Supreme Court.

Warns Kirtsaeng:

“For goods made anywhere else, the panel majority granted copyright owners eternal control over all further sales, rentals, or gifts, all the way down the stream of commerce. This rule means that Random House could block resales of books and close down public libraries and flea markets and Paramount Pictures and Sony Records could prohibit resales of DVDs and CDs and shut down rental businesses like Netflix—so long as these manufacturers concentrate production abroad.

The ramifications extend far beyond publishers and other content providers. This rule applies with equal force to any product with a copyrightable component—a household product with a label, apparel with a fabric design, a watch with an insignia, a camera or microwave with software on the inside or packaging on the outside, a car with an on-board computer, and so on. Any producer who sends jobs overseas will be rewarded with the manufacturer’s Holy Grail—the power to lock up, extract exorbitant rents from, or discriminate in any secondary market, from multibillion dollar retailers of new products (like Costco and Target) to large dealers in used goods (like used car dealers, Goodwill, and the Salvation Army) to flea markets and garage sales and their modern-day online analogs (such as eBay).

Kirtsaeng paints a powerful picture, but it ignores the fact that the Second Circuit’s decision is not novel, but consistent with every other court decision in the past 30 years, and none of the hypothetical horribles presented has occurred since the enactment of § 602 in 1978. Essentially the argument is: affirming three decades of practice and precedent will result in sudden and dramatic changes.

Nevertheless, courts have yet to resolve the issue of downstream distribution. Both Wiley and the United States, appearing as amicus, address the issue in their defense of the accepted interpretation of § 602.

In its brief, Wiley first points out that:

Kirtsaeng’s strategy appears designed to deflect attention away from his own conduct—the unauthorized importation of copies made abroad for distribution only in foreign countries—and instead onto a hypothetical scenario where the copyright owner makes the copy abroad but authorizes its sale in the United States. The experience of the last 30 years would seem to foreclose Kirtsaeng’s argument: Even though it has long been settled that Section 109(a) generally does not apply to foreign copies, Kirtsaeng has not identified a single manufacturer that has ever attempted to move its facilities abroad to avoid the first-sale doctrine.

Turning to the question of how the first sale doctrine applies to goods manufactured abroad, Wiley stops short of arguing that the Supreme Court needs to resolve that issue here. But it does admit that it could be a factor and seems open to the idea that once a copyrighted work is lawfully imported, the first sale doctrine applies to subsequent sales:

To be sure, the Ninth Circuit, in response to hypotheticals similar to those raised by Kirtsaeng, concluded that even foreign-made copies can be subject to Section 109(a) if the copyright holder has authorized their sale in the United States. It is unclear why the court needed to adopt this exception to Section 109(a): If the copyright owner authorizes a U.S. sale of a foreign-made copy, principles of implied license or estoppel would preclude it from asserting control over subsequent sales. But in any event, this Court can leave open whether (as one of Kirtsaeng’s own amici argues) “lawfully made under this title” could be read to include foreign-made copies that are subject to an authorized sale in the United States. The critical word is “made.” The right to “reproduce” a “cop[y]” is one of the exclusive rights granted to copyright owners under Section 106 of the Copyright Act. If Congress had intended “made” in Section 109(a) to mean “produced,” it could simply have said so; the words “produce” and “reproduce” appear throughout the Copyright Act. One reading of Section 109, therefore, is that to make a copy means not only to exercise the right to “produce” that copy, but also to exercise the right “to distribute copies . . . to the public.” “‘Lawfully made under this title’ would then mean either lawfully manufactured (caused to exist) or placed in commerce (caused to occur or appear) in the United States.” On that reading, a copy is “made under [Title 17]” when either the U.S. “produc[tion]” right is exercised—by making the copy in the United States—or the U.S. “distribut[ion]” right is exercised—by distributing the copy in the United States.

The United States, in its brief, also rejects the idea that barring the importation of nonpiratical works without authorization would result in the negation of the first sale doctrine for any copies made outside the US. Like Wiley, the US first notes that Kirtsaeng “identifies no instance in which a copyright owner has actually sought to exercise such control.” It then argues:

when a copyright holder has authorized goods to be imported into the United States and/or sold within this country, applying a “first sale” or “exhaustion” principle as an implicit limitation on the copyright holder’s exclusive right to “distribute” would be consistent with the current text of the Copyright Act and faithful to the doctrine’s historical underpinnings. By contrast, Congress enacted Section 602(a)(1) to ensure that an authorized sale outside the United States does not exhaust the copyright holder’s right to control subsequent importation.

This question will likely play a big role during oral arguments, but it remains to be seen whether the Supreme Court ultimately rules on it. It’s certainly a tough question, and the Court can’t rewrite the law to make it easier. I agree that a ruling from the Court that the first sale doctrine should apply once a copy has been lawfully imported would be beneficial, if only to confirm what has been the practice for the past three decades, but actually stating that in a way that gives effect to all the relevant provisions of the Copyright Act is something that would require a bit more thinking.

Footnotes

  1. 17 USC § 106(3). []
  2. Bobbs-Merrill Co v Straus, 210 US 339. []
  3. 17 USC § 602(a)(2). []
  4. 569 F.Supp. 47 (ED Pa, 1983). []
  5. 738 F.2d 421 (1984). []
  6. 952 F.2d 318 (9th Cir. 1991). The court also rejected a First Amendment defense raised by Perez. []
  7. 38 F.3d 477 (9th Cir. 1994). []
  8. 84 F.3d 1143 (9th Cir. 1996). []
  9. Pearson Education v Liu, 656 F.Supp. 2d 407 (SDNY 2009); Microsoft v Big Boy Distribution, 589 F.Supp.2d 1308 (SD Fla. 2008); Swatch SA v New City, 454 F.Supp.2d 1245 (SD Fla 2006); TB Harms v Jem Records, 655 F.Supp. 1575 (D.NJ 1987); Hearst Corp. v Stark, 639 F.Supp. 970 (ND. Cali 1986) (the court also rejected defendant’s argument that § 602 violated the First Amendment). []
  10. 523 US 135 (1998). []
  11. See, for example, Sebastian Intern. v Consumer Contacts (PTY), 847 F.2d 1093 (3rd. Cir. 1988; Summit Technology v High-Line Medical Instruments, 922 F.Supp. 299, 312 (CD Cali 1996). []
  12. 541 F.3d 982 (9th Cir. 2008). []
  13. 131 S.Ct. 565 (2010). []
  14. I’ve been unable to find a case holding otherwise. See also Summit Technology v High-Line Medical Instruments, 922 F.Supp. 299, 312 (CD Cali 1996): “Reviewing the case law, the courts appear to be in agreement in one respect: ‘sales abroad of foreign manufactured United States copyrighted materials do not terminate the United States copyright holder’s exclusive distribution rights in the United States under §§ 106 and 602(a).'” []
  15. According to the Second Circuit, Kirtsaeng had “consulted ‘Google Answers’ … to ensure that he could legally resell the foreign editions in the United States.” []
  16. 2 Nimmer on Copyright § 8.12[B][6][c] at 8-134.34 to 8-134.35. []
  17. 4 William F. Patry, Patry on Copyright § 13:44, at 13-98 (2012). []
  18. 2 Paul Goldstein, Goldstein on Copyright § 7.6.1, at 7:144 (3d ed. Supp. 2012). []
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