Cross-posted on the Law Theories blog.

The making available issue takes center stage today on Capitol Hill as the House Subcommittee on Courts, Intellectual Property, and the Internet holds a hearing on “The Scope of Copyright Protection.” Copyright treatise author Professor David Nimmer argues for the making available right (testimony available here), and Tulane Law Professor Glynn S. Lunney, Jr., who just so happens to be my doctoral advisor, argues against it (testimony available here).

In two previous posts about the making available issue (available here and here), I suggested that the Nimmer treatise had changed its tune on whether merely making a work available constitutes distribution absent actual dissemination. After reading Professor Nimmer’s testimony, as well as reviewing Nimmer 1See 2-8 Nimmer on Copyright § 8.11[C][1][a]-[b] (2013). and the related journal article by Professor Peter S. Menell, 2See 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, 20-21 (2011). I realize that I was wrong to say that Nimmer had flip-flopped on the making available question. Professor Nimmer never said that distribution requires evidence of actual dissemination in the first place.

Nimmer used to state: “Infringement of this right [i.e., the distribution right] requires an actual dissemination of either copies or phonorecords.” 32 Nimmer on Copyright § 8.11[A] (1996). And Nimmer now states: “No consummated act of actual distribution need be demonstrated in order to implicate the copyright owner’s distribution right.” 42-8 Nimmer on Copyright § 8.11[B][4][d] (2013). On its face, it appears that Nimmer has made a 180 degree turn on whether distribution requires actual dissemination. But the fault with this line of thinking is that, in the first statement, Nimmer was not saying that actual dissemination is an element of a plaintiff’s case-in-chief in proving unlawful distribution. It was instead contrasting distributions with performances.

Section 106(3) gives 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.” 517 U.S.C.A. § 106(3) (West 2014). Thus, the distribution right only covers “copies or phonorecords,” which are material objects in which works are fixed. 6See 17 U.S.C.A. § 101 (West 2014) (“‘Copies’ are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term ‘copies’ includes the material object, other than a phonorecord, in which the work is first fixed. *** ‘Phonorecords’ are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term ‘phonorecords’ includes the material object in which the sounds are first fixed.”). Performances, by contrast, are ephemeral and unfixed. 7See 17 U.S.C.A. § 101 (West 2014) (“To ‘perform’ a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.”). An unauthorized public performance of a work is not a distribution because nothing is fixed in a material object when one performs a work. Distributions involve tangible disseminations, while performances involve disseminations that are intangible.

It should be noted that, despite the “copies or phonorecords” requirement, distributions can occur electronically. This might at first seem strange, since sending someone a file via computer is not the same thing as handing someone a tangible copy. However, the argument that Section 106(3) does not reach electronic distributions is foreclosed by the Supreme Court’s opinion in Tasini. 8See New York Times Co., Inc. v. Tasini, 533 U.S. 483, 498 (2001) (“LEXIS/NEXIS, by selling copies of the Articles through the NEXIS Database, ‘distribute copies’ of the Articles ‘to the public by sale,’ § 106(3)”); see also Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1162 (9th Cir. 2007) (“The Supreme Court has indicated that in the electronic context, copies may be distributed electronically.”). Moreover, sending someone a work electronically does involve a tangible copy, because “[w]hat matters . . . is not whether a material object ‘changes hands,’ but whether, when the transaction is completed, the distributee has a material object.” 9London-Sire Records, Inc. v. Doe 1, 542 F.Supp.2d 153, 174 (D. Mass. 2008). The person the file is sent to has a copy fixed in a material object in whatever media he stores the file on, and this fulfills the “copies or phonorecords” requirement under Section 106(3).

Turning back to Professor Nimmer’s testimony, the origin of the earlier statement in Nimmer that infringement of the distribution right “requires an actual dissemination of either copies or phonorecords” stems from the treatise’s account of the Second Circuit’s opinion in Agee. 10Agee v. Paramount Commc’ns, Inc., 59 F.3d 317 (2d Cir. 1995). In that case, the Second Circuit held that “merely transmitting a sound recording to the public on the airwaves does not constitute a ‘distribution.’” 11Id. at 325. In reporting that holding in his treatise, Professor Nimmer stated:

Infringement of this right [i.e., the distribution right] requires an actual dissemination of either copies or phonorecords. A public performance of a work is not a publication and hence, even if unauthorized does not infringe the distribution right. Given that transmissions qualify as public performances, liability for that conduct lies outside the distribution right. 122 Nimmer on Copyright § 8.11[A] (1996).

That first sentence was later quoted out of context by many courts and taken to mean that evidence of actual dissemination is an element of an unlawful distribution claim. But, as Professor Menell explains, that is not the proper interpretation:

That language, written before the emergence of peer-to-peer technology, did not attempt to address its implications for copyright law. It merely contrasted distribution, which requires the dissemination of a copy, with performance, in which no copy need be disseminated. In context, the paragraph simply means that there is no violation of the distribution right when the substance of the copyrighted work has been intangibly dispersed via performance. To violate the distribution right, instead, tangible copies must be at issue. In the peer-to-peer context, uploading followed by downloading results in a “copy” resident on the second peer’s computer, meaning that the tangibility requirement has been met. 13Menell, 59 J. Copyright Soc’y U.S.A. at 21.

When Nimmer stated that distribution “requires an actual dissemination of either copies or phonorecords,” it was making the point that a distribution involves a work fixed in a material object while a performance does not. That statement had nothing to do with what evidence is necessary to prove an unlawful distribution. Furthermore, the treatise’s current statement that “[n]o consummated act of actual distribution need be demonstrated” is not a reversal from the earlier statement in Nimmer. This newer assertion in the treatise is making an evidentiary point about what proof is needed to establish an unlawful distribution. Thus, Nimmer did not change its tune on the making available issue as I erroneously had stated in my two previous posts.

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References   [ + ]

1. See 2-8 Nimmer on Copyright § 8.11[C][1][a]-[b] (2013).
2. See 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, 20-21 (2011).
3. 2 Nimmer on Copyright § 8.11[A] (1996).
4. 2-8 Nimmer on Copyright § 8.11[B][4][d] (2013).
5. 17 U.S.C.A. § 106(3) (West 2014).
6. See 17 U.S.C.A. § 101 (West 2014) (“‘Copies’ are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term ‘copies’ includes the material object, other than a phonorecord, in which the work is first fixed. *** ‘Phonorecords’ are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term ‘phonorecords’ includes the material object in which the sounds are first fixed.”).
7. See 17 U.S.C.A. § 101 (West 2014) (“To ‘perform’ a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.”).
8. See New York Times Co., Inc. v. Tasini, 533 U.S. 483, 498 (2001) (“LEXIS/NEXIS, by selling copies of the Articles through the NEXIS Database, ‘distribute copies’ of the Articles ‘to the public by sale,’ § 106(3)”); see also Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1162 (9th Cir. 2007) (“The Supreme Court has indicated that in the electronic context, copies may be distributed electronically.”).
9. London-Sire Records, Inc. v. Doe 1, 542 F.Supp.2d 153, 174 (D. Mass. 2008).
10. Agee v. Paramount Commc’ns, Inc., 59 F.3d 317 (2d Cir. 1995).
11. Id. at 325.
12. 2 Nimmer on Copyright § 8.11[A] (1996).
13. Menell, 59 J. Copyright Soc’y U.S.A. at 21.

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. Well, that clears things up.
    With respect to the broader issue of making available, I have to say that – on reflection – the absence of a “making available right” leads us down some pretty dark and illogical paths.
    For a start, it seems obvious that if anyone would be liable for infringement in a garden-variety unauthorised distribution case (for simplicity, say, selling pirate CDs off the back of a van) it would be the person doing the distributing. However, their liability would hinge on the actions of third parties: whether anyone actually buys anything. Moreover, proving that actual distribution (sales) have taken place would be difficult indeed – given that they’re unlikely to be recorded in any fashion. Granted, the pirate CD vendor is also liable for unauthorised copying, but what if he claims he did not make them, but instead bought the load from a shady ‘wholesaler’ (also running his business from the back of a van, now long gone)?
    One would think that the natural reaction to such ‘defences’ would be: pull the other one, mate.
    Given that there’s no lawful reason that unauthorised copies may be made available to the public (in contrast with, say, selling cigarettes or alcohol to minors – one can always claim that he sells only to verified adults), I cannot see why an actual showing of a third party engaged in such a transaction would be necessary to demonstrate actual infringement. It seems to me that failing to perform an unlawful act – despite one’s best efforts to do so – due to circumstances beyond one’s control is rarely, if ever, a defence. If anything, the law should strongly discourage an ‘if at first you don’t succeed…’ attitude to unlawful acts.

    • Well, that clears things up.

      I hope I have it right this time. Looking back over it this morning, I have some doubts. Professor Nimmer in his testimony says that he added this sentence in 1996 after the Second Circuit’s opinion in Agee in 1995: “Infringement of this right requires an actual dissemination of either copies or phonorecords.” But looking at the Eighth Circuit’s opinion in National Car from 1993, I see they quoted the treatise for this sentence: “As Professor Nimmer has stated, ‘[i]nfringement of [the distribution right] requires an actual dissemination of either copies or phonorecords.’” So clearly that sentence was added before Agee. Without access to earlier versions of the treatise, I don’t think I can figure it out.

      For a start, it seems obvious that if anyone would be liable for infringement in a garden-variety unauthorised distribution case (for simplicity, say, selling pirate CDs off the back of a van) it would be the person doing the distributing.

      Professor Nimmer mentions in his treatise that with distributions like that, it is only the distributor and not the distributee that is liable for the unlawful distribution. I haven’t had a chance to read the cases he cited for that proposition, but I wonder if there’s an argument that the distributee is jointly liable with the distributor since both cause the distribution to happen.

      However, their liability would hinge on the actions of third parties: whether anyone actually buys anything.

      Well, that depends on whether the distribution right encompasses mere offers to distribute. If it does, then the actions of third parties wouldn’t matter.

      Moreover, proving that actual distribution (sales) have taken place would be difficult indeed – given that they’re unlikely to be recorded in any fashion.

      Right. And one way to look at distribution is to say that even if actual dissemination is required, that element can be proved by inference.

      Granted, the pirate CD vendor is also liable for unauthorised copying, but what if he claims he did not make them, but instead bought the load from a shady ‘wholesaler’ (also running his business from the back of a van, now long gone)?

      If the distributor didn’t make the copies, then he wouldn’t be liable for violation of the reproduction right. What’s interesting is how the order of things is reversed in cyberspace. In the example of the vendor selling CDs out of the back of a van, the reproduction occurs first and then the distribution occurs second. With p2p file-sharing, the distribution occurs first and then the reproduction occurs second.

      Given that there’s no lawful reason that unauthorised copies may be made available to the public (in contrast with, say, selling cigarettes or alcohol to minors – one can always claim that he sells only to verified adults), I cannot see why an actual showing of a third party engaged in such a transaction would be necessary to demonstrate actual infringement. It seems to me that failing to perform an unlawful act – despite one’s best efforts to do so – due to circumstances beyond one’s control is rarely, if ever, a defence. If anything, the law should strongly discourage an ‘if at first you don’t succeed…’ attitude to unlawful acts.

      I agree that there’s no reason to allow people to attempt to distribute, but that’s a different matter than whether the statute prohibits attempts to distribute. The policy concern doesn’t necessarily line up with the text of the statute. But here the statute is a mess. It’s not clear what the relationship is between distribution and publication in the definitional section of 101. The House Report from ’76 even refers to the distribution right as a publication right, which just adds to the confusion. Hopefully Congress will revise the Copyright Act to clarify things.

      • Oh, I agree the statute is annoyingly vague (although not a patch on Polish tax law 🙂 – any Polish law, come to think of it, though our copyright act is generally ok) I was merely exploring the hypotheticals that would arise if actual distribution is to be considered a requirement and demonstrating the kind of problems we’d run into. I think that Nimmer is right in suggesting that Congress should clear the matter up – one way or another – since it is an obvious bit of ambiguity that is making everyone’s lives more difficult than they should be.