Today’s guest post comes from Copyhype contributor Devlin Hartline.

One topic of debate in copyright is over whether simply “making available” a file on a peer-to-peer network is itself a violation of the distribution right.1 The courts have been split on the issue.2 Professor Peter S. Menell explains the controversy:

Interpreting “distribute” narrowly, some courts have held that copyright owners must prove that a sound recording placed in a share folder was actually downloaded to establish violation of the distribution right. Other courts held that merely making a sound recording available violates the distribution right. The ramifications for copyright enforcement in the Internet age are substantial. Under the narrow interpretation, the relative anonymity of Internet transmissions in combination with privacy concerns make enforcement costly and difficult. A broad interpretation exposes millions of file-sharers to potentially crushing statutory damages.3

The popular copyright treatise Nimmer on Copyright has played an important role in the debate. The treatise was first published in 1963 by the late Professor Melville Nimmer. Since 1985, his son Professor David Nimmer (“Nimmer”) has taken over the task of editing and updating it. It’s hard to exaggerate how influential Nimmer on Copyright has been in shaping copyright jurisprudence. A quick, informal search on Westlaw turns up 3,301 state and federal cases that have cited it. That is compared to 1,444 cites for Goldstein on Copyright and 236 cites for Patry on Copyright, two other leading copyright treatises.

Several courts have consulted Nimmer on Copyright when analyzing whether “making available” constitutes distribution. As recently as 2011, the treatise took the position that infringement of the distribution right requires actual dissemination of copies of a work to the public.4 But in the latest edition, Nimmer has changed his tune—the treatise now states that “making available” is distribution simpliciter. After a detailed examination of the legislative history of the current Copyright Act, Nimmer now concludes that “the distribution right was formulated precisely so that it would extend to making copyrighted works available, rather than mandating proof of actual activities of distribution.”5

Thomas-Rasset and “Making Available”

The “making available” issue took center stage in the famous Jammie Thomas-Rasset case. In 2006, certain recording companies sued Thomas-Rasset for willful copyright infringement. One of the claims was that she had violated the distribution right by merely “making available” twenty-four copyrighted song files on the KaZaA peer-to-peer network. An investigator working for the plaintiffs found that the song files were available in a KaZaA share folder for others to download, but it could not be determined whether other users had in fact downloaded the files.

The district court instructed the jury that the “act of making copyrighted sound recordings available for electronic distribution on a peer-to-peer network, without license from the copyright owners, violates the copyright owners’ exclusive right of distribution, regardless of whether actual distribution has been shown.”6 The jury found Thomas-Rasset liable for willful copyright infringement, awarding the plaintiffs statutory damages of $9,250 per song, for a total of $222,000. The next day, the court entered judgment on the jury’s verdict.

Thomas-Rasset then moved for new trial, or in the alternative, for remittitur. Months later, the district court sua sponte asked the parties to submit briefs on the issue of whether its jury instruction on “making available” was a manifest error of law. Several amici, including the EFF, Public Knowledge, and the MPAA, were permitted to file briefs as well. The plaintiffs and their supporters argued that the jury instruction on “making available” was proper, while Thomas-Rasset and her supporters argued that “making available” is not distribution. After thorough analysis, the district court sided with Thomas-Rasset.

The district court noted that while the Eighth Circuit had not addressed the “making available” issue in the peer-to-peer context, the court of appeals had nonetheless considered and rejected the “making available” argument in a different context in National Car.7 In that case, the appellate court grappled with the issue of whether a state law claim for breach of contract was preempted by the Copyright Act. The district court below had held that a licensee’s unauthorized use of licensed software to process third-party data was equivalent to distribution of copies of that software.

The Eighth Circuit rejected the notion that use of a software program for the benefit of third parties constituted distribution of the software. The court of appeals turned to Nimmer’s treatise for the proposition that the distribution right “grants the copyright owner the exclusive right publicly to sell, give away, rent or lend any material embodiment of his work.”8 It concluded that “even with respect to computer software, the distribution right is only the right to distribute copies of the work. As Professor Nimmer has stated, infringement of the distribution right requires an actual dissemination of either copies or phonorecords.”9

Finding that the Eighth Circuit’s opinion in National Car was binding precedent, the district court in the Thomas-Rasset case held that liability “for violation of the exclusive distribution right . . . requires actual dissemination.”10 The district court then granted Thomas-Rasset’s motion for a new trial on the ground that the jury instruction on the “making available” issue was legal error that substantially prejudiced her rights. The new trial was of no help to Thomas-Rasset. Even without the “making available” instruction, the jury again found her liable for willful copyright infringement of the twenty-four song files.

The Thomas-Rasset story demonstrates nicely the influence that Nimmer on Copyright has had in the “making available” debate. The Eighth Circuit in National Car relied on the treatise in finding that violation of the distribution right requires actual dissemination of copies of a work to the public. In turn, the district court in the Thomas-Rasset case followed suit in concluding that merely “making available” a work on a peer-to-peer network does not violate the distribution right. But what’s to be made of the fact that Nimmer has now changed his tune on the “making available” issue?

Nimmer’s New Tune

In his recent journal article, Professor Peter S. Menell (“Menell”) surveys the voluminous legislative history leading up the passage of the 1976 Copyright Act, and he shows that Congress did in fact intend to establish that “making available” is distribution. Menell examines the significant errors in interpreting the scope of the distribution right made in the treatises, scholarship, and court decisions. And then in a footnote, he mentions that he was able convince Nimmer to change his tune:

The discussion that follows is based upon the version of Nimmer on Copyright that was available to jurists and practitioners through August 2011. After reading this article, Professor Nimmer asked me to co-author a complete revision of the sections of Nimmer on Copyright relating to the scope of the distribution right and the definition of “publication.”11

The latest edition of Nimmer’s treatise does indeed adopt Menell’s findings on the “making available” issue. (Relatedly, Menell and Nimmer have created two multimedia presentations of their discoveries that I highly recommend: Part I: In Search of the Lost Ark and Part II: The Elephant in the Room.) Nimmer on Copyright now notes that the courts that have looked at the “making available” puzzle have all failed to consider the relevant evidence of Congress’s intent:

The point of commonality among these opinions is that none of them went back to examine the rich trove of legislative materials from the early to mid 1960s and early 1970s explicating Congress’s intent in shifting terminology from the 1909 rights to publish and vend to the 1976 Act’s right to “distribute,” and at the same time expanding the definition “publication” to include offers to distribute.12

Under the 1909 Copyright Act, there was no right to distribute. Instead, copyright owners had the rights to publish and to vend. The right to publish was universally understood to encompass all public offerings of a work, i.e., “making available” copies of a work to the public. Nimmer observes that no court “recognized a requirement to prove actual distribution of copies, and even gratuitous offers of a work to the public fell within the right to publish.”13 That “making available” copies of a work to the public constituted publication was well-settled at the time the revisions for the modern Copyright Act were considered.

Determination of what constituted publication under the 1909 Act was of critical importance because a work was deemed to have lost its common law copyright protection the moment it was published. Moreover, if a work was published without the obligatory copyright notice, that work fell into the public domain and received no statutory copyright protection. Since the penalty for publishing a work without copyright notice was so harsh, judges advanced some questionable distinctions into the jurisprudence. The drafters of the 1976 Act introduced the right to distribute in an attempt to shed these dubious vestiges.

Nimmer explains:

The drafters of the current Act wished to avoid the tremendous accumulation of common law interpretation that had thus arisen over how to define “publication.” For that reason, they chose a new term, “distribution,” as an omnibus term that would encompass all acts then qualifying as “publication,” without the technical exceptions that had accreted through the common law process of various rulings.14

Thus, the introduction of the right to distribute in the 1976 Act was intended not only to incorporate the preexisting publication right, which included “making available” copies of a work to the public, but it was also intended to broaden the publication right by eliminating the problematic exceptions that had been introduced into the doctrine by the judiciary.

As Nimmer summarizes:

The distribution right accorded by Section 106(3) is to be interpreted broadly, consonant with the intention expressed by its drafters. It extends to the offer to the general public to make a work available for distribution without permission of the copyright owner. No consummated act of actual distribution need be demonstrated in order to implicate the copyright owner’s distribution right.15

So under Nimmer’s contemporary analysis, the district court in the Thomas-Rasset case had it wrong when it concluded that nowhere in the legislative history does “Congress state that distribution should be given the same broad meaning as publication.”16 Not only did Congress intend that distributions should encompass all publications, the new distribution right was specifically created to be broader than the antecedent publication right. Similarly, the district court in the Thomas-Rasset case had it backwards when it held that “all distributions to the public are publications, but not all publications are distributions to the public.”17

Given the widespread influence of his treatise, it seems inevitable that others will follow Nimmer in his conclusion that “the act of making available sound recordings for downloading by the public through file-sharing networks suffices to show actionable copyright infringement.”18 But only time will tell how many others change their tunes as well.

Follow me on Twitter: @devlinhartline

Footnotes

  1. 17 U.S.C.S. § 106(3) (Lexis 2012) (“the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: *** (3) 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”). []
  2. See, e.g., Atl. Recording Corp. v. Howell, 554 F.Supp.2d 976 (D. Ariz. 2008); London-Sire Records, Inc. v. Doe 1, 542 F.Supp.2d 153 (D. Mass. 2008); Motown Record Co., LP v. DePietro, No. 04-cv-2246, 2007 WL 576284 (E.D. Pa. Feb. 16, 2007); Warner Bros. Records, Inc. v. Payne, No. 06-ca-051, 2006 WL 2844415 (W.D. Tex. July 17, 2006); Atl. Recording Corp. v. Anderson, No. 06-cv-3578, 2008 WL 2316551 (S.D. Tex. Mar. 12, 2008); Universal City Studios Productions LLLP v. Bigwood, 441 F.Supp.2d 185 (D. Me. 2006); UMG Recordings, Inc. v. Alburger, 2009 U.S. Dist. LEXIS 91585 (E.D. Pa. Sept. 29, 2009). []
  3. Peter S. Menell, In Search of Copyright’s Lost Ark: Interpreting the Right to Distribute in the Internet Age, 59 J. Copyright Soc’y U.S.A. 1 (2011). []
  4. Nimmer on Copyright § 8.11[A], at 8-149 (2007) (“Infringement of [the distribution right] requires an actual dissemination of either copies or phonorecords.”). []
  5. 2-8 Nimmer on Copyright § 8.11[D][4][c]. []
  6. Capitol Records, Inc. v. Thomas, 579 F.Supp.2d 1210, 1213 (D. Minn. 2008) (internal quotations omitted). []
  7. National Car Rental Sys. v. Computer Assocs. Int’l, 991 F.2d 426 (8th Cir. 1993). []
  8. Id. at 430 (quoting 2 Nimmer on Copyright § 8.11[A], at 8-123) (emphasis in original; internal quotations omitted). []
  9. Id. at 434 (quoting 2 Nimmer on Copyright § 8.11[A], at 8-124.1) (emphasis in original; internal quotations and brackets omitted). []
  10. Thomas, 579 F.Supp.2d at 1226. []
  11. Menell, 59 J. Copyright Soc’y U.S.A. at 20 n.90. []
  12. 2-8 Nimmer on Copyright § 8.11[D][1]. []
  13. 2-8 Nimmer on Copyright § 8.11[B][4][d] (emphasis in original). []
  14. 2-8 Nimmer on Copyright § 8.11[A]. []
  15. 2-8 Nimmer on Copyright § 8.11[B][4][d]. []
  16. Thomas, 579 F.Supp.2d at 1219. []
  17. Id. at 1220. []
  18. 2-8 Nimmer on Copyright § 8.11[D][4][c]. []

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About the author: Devlin Hartline

Devlin is a husband, father, and law geek (JD & LLM). He is currently an SJD candidate at Tulane Law in New Orleans, Louisiana, where he is writing his dissertation on copyright law. He is also a Mark Twain Copyright Fellow at the Center for the Protection of Intellectual Property at George Mason Law in Arlington, Virginia.

4 Comments

  1. Another reasons to support Prof. Nimmer’s view is that the WCT requires the US to have a making available right. If the distribution right was not broad enough to include making available the US would arguably be offside the treaty. As the Congress did not amend the distribution right when ratifying the WIPO treaties, one may infer it viewed the combination of the public performance and distribution rights as implementing the making available right for streams and downloads.

    • Devlin Hartline

      Nimmer does mention the WIPO treaty obligation, but only briefly:

      Treaty Harmonization.

      A final issue that could arise in this regard depends on treaty language. The WIPO Copyright Treaty, to which the United States adheres, obligates member states to provide a “making available” right in their domestic copyright law. Although the treaty is not self-executing as a matter of domestic law, some plaintiffs have argued that its language should be used as a tool of construction to reach their own preferred construction of the Copyright Act. One decision rejected that approach, holding an interpretation of the distribution right to encompass making copyrighted works available to lie beyond the bounds of reasonable statutory construction. It is respectfully urged, to the contrary, that that statutory interpretation is actually the one to be preferred. At a minimum, therefore, this argument deserves full development within the constitutional structure of U.S. laws. That investigation lies beyond the scope of this treatise—but also never need be reached to the extent that the “making available” right is properly vindicated.

      2-8 Nimmer on Copyright § 8.11[D][5][c].

      That treaty came after the 1976 Act and wasn’t self-executing, so you’d have to argue that the reason Congress didn’t change the law to be in harmonization was because the law already recognized that “making available” is distribution.

      Nimmer does though spend more time looking at a different treaty that came before the 1976 Act, the Geneva Phonogram Convention, implemented by the Sound Recording Amendments Act of 1971:

      The 1971 Legislation.

      Of key importance here is the second sentence defining “publication” that was added in 1971: “The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.” That language signals that Congress intended to trigger “publication” merely by offering of works of authorship to the public—i.e., making them available. In fact, the timing, circumstances, and reasons for adding this language to the definition of publication illuminates Congress’s intent on that issue both with respect to the defined term “publication” and the undefined term “distribution.”

      In 1971, the United States was negotiating the Geneva Phonogram Convention, driven by concern over “record piracy.” In that year, Congress adopted enabling legislation, the Sound Recording Amendments Act of 1971. As the House Report accompanying that legislation noted, “the United States recently participated in an international conference of government experts at which the draft of an international treaty to combat record piracy was prepared” and “progress in domestic efforts to protect sound recordings will be helpful to the United States Delegation.” The Geneva Phonogram Convention provides, “Each Contracting State shall protect producers of phonograms who are nationals of other Contracting States against the making of duplicates without the consent of the producer and against the importation of such duplicates, provided that any such making or importation is for the purpose of distribution to the public, and against the distribution of such duplicates to the public.” Of key import to the current inquiry, the treaty defines “distribution to the public” to mean “any act by which duplicates of a phonogram are offered, directly or indirectly, to the general public or any section thereof.” Thus, as understood at the time, “distribution” broadly encompassed the offering—whether directly or indirectly—of duplicates to the public.

      Against this backdrop, Congress passed the Sound Recording Amendments Act to address “the widespread unauthorized reproduction of phonograph records and tapes.” L. Quincy Mumford, the Librarian of Congress, observed in a letter accompanying the House Report that “the problem of record piracy is one of immediate concern internationally, and that a draft treaty closely corresponding to the content and purpose of S. 646 was adopted by a Committee of Governmental Experts on March 5, 1971” This letter indicates that the Sound Recording Amendments Act (the successor to what was then S. 646) was understood and intended to implement the Geneva Phonogram Convention.

      The pieces thus fit together as follows:

      •In 1971, the United States spearheaded a treaty that explicitly defined “distribution to the public” to mean “any act by which duplicates of a phonogram are offered, directly or indirectly, to the general public”;

      •The Librarian of Congress told Congress that the language of that treaty corresponded to S. 646;

      •S. 646 was identical in all pertinent particulars to the Sound Recording Amendments Act of 1971 that Congress ultimately enacted;

      •The language of that 1971 amendment, granting copyright owners of sound recordings the exclusive right to “distribute to the public by sale or other transfer of ownership, or by rental, lease, or lending, reproductions of the copyrighted work,” was therefore designed to fulfill the treaty purpose of encompassing “any act by which duplicates of a phonogram are offered, directly or indirectly, to the general public”;

      •Five years later, Congress employed identical language to grant copyright owners 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”;

      •That provision of the current Act eliminates the limitation to sound recordings, contained in the 1971 amendment—instead, it applies across the board to all copyrighted compositions;

      •It follows that the distribution right embodied into the current Act applies to offers to the public, rather than being limited to consummated acts of actual distribution.

      2-8 Nimmer on Copyright § 8.11[B][4][b].

      I like that argument’s even better than the WCT argument.

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