In 1966, the cable TV industry warned that if it was brought within the scope of copyright law, it “could very well be forced out of existence to the great injury to the public interest, and with no corresponding benefit to copyright owners, broadcast stations, or the public.”1

That didn’t happen; in fact, cable television is not only doing quite well but has become the producer of some of the most amazing and compelling programs today, benefiting all.

But nearly a half century later, Aereo has resurrected the same arguments to justify its position as a for-profit middleman. According to Aereo’s CEO, holding the company liable “would impair cloud innovation and threaten the myriad benefits to individuals, companies, and the economy at large of the advances in cloud computing and cloud storage.”

A Supreme Court ruling against Aereo won’t spell the end of cloud computing — Over at Truth on the Market, Geoffrey Manne, Ryan Radia, and Ben Sperry explain why a holding finding Aereo liable for publicly performing copyrighted works won’t mean cloud computing services would face new liability.

Google, once disdainful of lobbying, now a master of Washington influence — A comprehensive and sobering look at how stunningly powerful the search giant has grown in only a few short years. “‘Google’s influence in Washington has chilled a necessary and overdue policy discussion about the impact of the Internet’s largest firm on the future of the Internet,’ said Marc Rotenberg, a Georgetown University law professor who runs the Electronic Privacy Information Center, a watchdog and research organization.”

Digital Public Library of America to add millions of records to its archive — Ars reports, “Today marks the Digital Public Library of America’s one-year anniversary. To celebrate the occasion, the non-profit library network announced six new partnerships with major archives, including the US Government Printing Office and the J. Paul Getty Trust.”

World IP Day – Movies: A Global Passion — If you’re in DC next Wednesday, do check out the Copyright Office’s World IP Day program, in partnership with the Copyright Alliance, featuring multi-award winning feature film and television director Matthew Harrison, two-time Daytime Emmy Award-nominated actor Robert Newman, and film scholar Mike Mashon, Head of the Moving Image Section at the Library of Congress.

Footnotes

  1. Statement of Frederick W. Ford, President, National Community Television Association, Inc.; Accompanied by Alfred R. Stern, Chairman, Board of Directors; and E. Stratford Smith, Special Counsel, National Community Television Association, Inc., Hearings before the Subcommittee on Patents, Trademarks, and Copyrights of the Committee on the Judiciary, US Senate, 89th Congress, Pursuant to S. Res. 201 on S. 1006, pg. 86 (1966). []

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The World’s Top 10 Most Innovative Companies in Music — What makes this list particularly relevant is its recognition that innovative music companies include record labels, both major and independent.

Can Private Photos be Used in Political Ads Without Permission? — An anti gay rights group used a wedding photo of a gay couple to create a political flier without the couple’s or photographer’s permission. This week, a federal judge refused to dismiss a copyright infringement claim brought by the photographer and couple based on a fair use defense raised by the advocacy group.

Who’s a jerk? The site that tagged millions of Facebook users ‘jerk’ — “The FTC filed a complaint on Monday alleging that Jerk.com dishonestly harvested personal information from millions of Facebook users to create profiles that labeled people either ‘jerk’ or ‘not a jerk.’ The site then reportedly told users they had to pay $30 to access ‘premium’ features that would let them dispute the ‘jerk’ tags.” The complaint raises charges of deceptive representations, and it was initiated by Facebook, rather than the users affected, but there are parallels to copyright. Jerk.com misappropriated Facebook users’ expressive content. And though the personal information is not inherently commercial, the sharing of it with Facebook is a commercial exchange—it is what Facebook’s entire business model is premised on. Finally, for those who place substantial emphasis on the incentive function of copyright, this case demonstrates why copyright’s incentives are still a good fit even outside the paradigmatic professional publication context. Facebook users disseminate their photos and other expressive works on the service with certain expectations; having their content scraped by sites like Jerk.com is very likely outside those expectations. If such occurrences became commonplace or unenforced, it would create a disincentive to disseminate personal content.

YouTube Hurts Music Album Sales, Research Finds — The research, from R. Scott Hiller and Jin-Hyuk Kim, refutes in part the idea that services like YouTube have a promotional effect on music sales. Rather, there appears to be a significant substitutional effect.

Fire the robot — “Toyota, which just yesterday announced a recall of more than six million cars for a variety of defects, is having second thoughts about its robot culture. A longtime pacesetter in factory automation, the company is putting a new stress on nurturing human expertise and craftsmanship.”

Girl Talk Q&A: On Sampling, Disney & His First Ever Music Video — The spiritual successor to Jive Bunny reveals in an interview that on his latest project, “We cleared the samples for this song. I didn’t feel like my ideals were compromised when we did that. I evaluate each piece of work on its own merits. I don’t think of it as anarchy. I think about each work separately and consider whether it qualifies for fair use or not. In this case, we needed the clearance.”

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Imagine an author. She has a spark of inspiration and sets out developing a story. Characters are sketched out. Index cards bearing plot points are written up, arranged, and rearranged. As the story takes shape, she calls in her assistant, who, sitting at a computer, types in the first draft of the story as the author dictates.

Now, we ask, who has written the story?

Common sense would tell us the author, of course, has written the story, and few would dispute that answer. But in the strictest, technical sense, if we define “to write” narrowly enough to mean only the last act between thought and word on page, the ministerial act, it is the assistant who wrote the story, by typing it out.

Beyond semantics, that narrow definition is not particularly useful. Only the trivia buff would be interested in the participation of the assistant; most of us want to know who the author was, who is responsible, in the real sense, for the story we are reading. We don’t need a million monkeys to know that the process of writing is more than tapping on a keyboard.

In recent decades, due to technology, copyright law has increasingly had to deal with a similar question. Because copyright law is concerned primarily with the act of copying, some courts have had to ask who has made the copy. When a copy has been made without authorization, who is the author of the infringement?

This question becomes most palpable when we start talking about what I will refer to as “copy machines.” These include literal copiers like photocopiers, tape recorders, or DVRs, as well as virtual copy machines—computing processes, both on local devices or working within the cloud. The problem is that some courts have adhered to the strict technical sense of words and defined “to copy” so narrowly that it doesn’t correspond with the common sense definition.

Aereo

The Supreme Court is set to hear oral arguments in American Broadcasting Companies v. Aereo on April 22. The question of who “caused” the infringement is raised by Aereo in its brief, though the issue was not addressed by either the district or appellate courts below. However, it does cast a long shadow over the proceedings. Some commenters have raised the fear that the entire fate of the cloud computing industry rests on the Supreme Court’s decision (this year’s iteration of “copyright will break the internet,” I suppose).1

This argument is unsound for at least two reasons. First, the Cablevision decision, upon which Aereo relies on, only applies within the Second Circuit, so the fact that cloud computing has flourished in other parts of the US, and throughout the world, suggests the decision is not the panacea Aereo supporters claim it is.2 Second, service providers already have safe harbor from liability for infringing activity stemming from user-directed storage.3 So any protection Supreme Court affirmation would provide would largely be redundant.

Nevertheless, US case law has yet to fully develop a satisfactory answer to the question of who “makes” a copy, and it is safe to say the issue will maintain its prominence in the near future. In this article, I want to take a look at this case law to see how courts have approached the question, which is not a novel question in the law. Particularly, I look at the emergence of the “volitional conduct” test to mediate disputes over direct liability on the internet. I note that most often, this test resembles the legal doctrine of proximate causation and argue that ditching volitional conduct entirely in favor of a more direct focus on proximate causation would offer more clarity and better results. I finish by sketching out what a proximate causation inquiry might look like.

Copying, causation, and volition in the courts

Prior to the popularization of the internet, a handful of cases examined the contours of liability for those who make, own, or operate copy machines utilized by others.

Make-A-Tape

In 1973, a court considered a chain of electronics stores operating “Make-A-Tape” machines.4 Customers could select an album from the store’s catalog, purchase one of the blank tapes sold by the store, conveniently receiving as change the two quarters required to operate the machine, and start the “Make-A-Tape.” Within two minutes, the customer could leave the store with a perfect copy of the album at a fraction of the cost.

The Eastern District Court of New York did not delve too deeply into the question of causation, but it did conclude that “Regardless of the precise role played by defendants’ employees, the above-described operation of the Make-A-Tapes clearly evidences their commercial exploitation by defendants for profit in derogation of plaintiffs’ rights of exclusive publication.”

The defendants attempted to escape direct liability by focusing the court’s attention on the self-service nature of the copiers and their resemblance to “a photocopier in a public library.” This did not convince the court, which focused on the differences in time, quality, and cost of reproducing entire works on a photocopier compared to the Make-A-Tape machine. It also pointed out the non-profit nature and altruistic motives of a library, which differ from how the defendants “manifestly utilize the Make-A-Tape as a further source of income.”

Sony Betamax

The issue of who makes a copy did not, apparently, come in front of courts again for another six years, in Universal City Studios v. Sony Corp. of America. The Supreme Court’s decision regarding the secondary liability of a Betamax manufacturer is considered a cornerstone of modern copyright jurisprudence. But little attention is paid to the fact that, years before the highest court would consider indirect liability, the district court considered whether Sony should be directly liable for infringement of Betamax users.

The district court noted that “It is true that one can be found to have infringed directly even without participating in the actual infringing activity.” But the court ultimately held Sony could not be directly liable for copying occurring on the machines it designs and distributes for a number of reasons.

First, Sony does not “loan or otherwise provide the copyrighted work” that is being copied. Second, the copying does not occur on premises “operated and managed by the defendants but rather in a person’s home, a location in which individual privacy is constitutionally protected and over which defendants have no control.”5 Finally, the Betamax players aren’t solely used for unauthorized copying; they have a range of uses and can be used for noninfringing purposes.6

Kinko’s

Print shop Kinko’s would find itself in court in the early 90′s, the subject of an infringement complaint for operating a “course packet” service—college professors would provide nearby Kinko’s with selections and chapters from original copyrighted works that had been assigned to students, and Kinko’s would duplicate and assemble the materials into anthologies that they would then sell to students.7

There was little argument that Kinko’s was “making” the copies. However, when it came to assessing damages, Kinko’s argued that it was acting as an agent of the professors’ college since “Section 504(c) provides that the court ‘shall remit statutory damages … where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use …, if the infringer was (i) an employee or agent of a nonprofit educational institution….’ 17 U.S.C. § 504(c)(2).”

The court rejected this argument, saying there was no evidence of an agency relationship between Kinko’s and the university, and Kinko’s was unable to show that “the professors exerted a sufficient level of control over the relationship.”

Frena

Finally, one of the earliest cases involving copyright liability in the online context saw a bulletin board system (BBS) operator liable for directly infringing public display and distribution rights.8 Though there was only brief discussion in Frena, the court did say, “There is no dispute that Defendant Frena supplied a product containing unauthorized copies of a copyrighted work. It does not matter that Defendant Frena claims he did not make the copies itself.”

Netcom

And then came Netcom. In 1995, the Northern District Court of California was confronted with the question of copyright liability for an internet access provider based on infringement occurring on Usenet groups.9 Usenet is a decentralized communications system consisting of thousands of “newsgroups” where users can read and post public messages. Internet access providers can set up a Usenet server to become part of the system and allow their subscribers to interact with Usenet, but the system otherwise functions independently from any one internet access provider—indeed, it operates independently from any individual or entity.

A critic of the Church of Scientology had posted a number of unpublished and published works, without permission, of Scientology founder L. Ron Hubbard to a religion newsgroup. The copyright holders of the works sued for copyright infringement, naming the critic who uploaded the works, the operator of the BBS where the works were uploaded, and Netcom, which provided internet access to the BBS (and, by extension, to the critic). Netcom moved for summary judgment on the issue of its own direct liability.

The court granted the motion, saying “Although copyright is a strict liability statute, there should still be some element of volition or causation which is lacking where a defendant’s system is merely used to create a copy by a third party.” The court described the copying done by Netcom as “automatic[] and uniform[]” and its actions as “necessary to have a working system for transmitting Usenet postings to and from the Internet.” Thus, “the mere fact that Netcom’s system incidentally makes temporary copies of plaintiffs’ works does not mean Netcom has caused the copying.”

Netcom would serve as the stepping off point for analyzing direct liability online. Nearly every subsequent case where the issue of direct liability for the owner or operator of a copying service or platform arose refers to the case.

But while these courts agree that Netcom said direct liability requires some form of “volitional conduct”, there is little agreement over what that means.

After Netcom

The Fourth Circuit adopted Netcom in CoStar Group v. LoopNet, saying

to establish direct liability under §§ 501 and 106 of the Act, something more must be shown than mere ownership of a machine used by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner. The Netcom court described this nexus as requiring some aspect of volition or causation.10

However, the language of CoStar, rather than describing a general causation principle, suggests that it was laying down a blackletter rule that “an ISP who owns an electronic facility that responds automatically to users’ input is not a direct infringer.” A subsequent, unpublished Fourth Circuit opinion lends credence to this notion; in Quantum Systems Integrators v. Sprint Nextel, the court quoted CoStar‘s holding “that ISPs, when passively storing material at the direction of users in order to make that material available to other users upon their request, do not ‘copy’ the material in direct violation of § 106 of the Copyright Act” and rejected defendant’s argument that it was shielded from liability under this rule in part by pointing out that it was not engaging “in ‘conduct typically engaged in by an ISP.’”11

In Cartoon Network v. CSC Holdings (“Cablevision“), the Second Circuit adopted Netcom, holding that copies produced by a cable provider’s remote DVR (RS-DVR) system are “made” by the cable provider’s customers, and the cable provider’s contribution of providing the system doesn’t warrant the imposition of direct liability.12 Unlike CoStar, Cablevision didn’t read Netcom as establishing a rule for analyzing the liability of ISPs—indeed, Cablevision operated a sui generis service wholly separate from the Internet. Instead, Cablevision read into Netcom a distinction between human acts and technical processes, with only the former supplying the necessary “volition” for direct liability. “In determining who actually ‘makes’ a copy,” said the Second Circuit, “a significant difference exists between making a request to a human employee, who then volitionally operates the copying system to make the copy, and issuing a command directly to a system, which automatically obeys commands and engages in no volitional conduct.”

The Cablevision court never explains exactly what this difference is or why it is so significant. (Indeed, this statement seems contrary to the Fourth Circuit’s claim in CoStar that employee review of images before they are posted “tends only to lessen the possibility that LoopNet’s automatic electronic responses will inadvertently enable others to trespass on a copyright owner’s rights.” As noted later on, some courts have been too quick to read causation out of the design of automated processes.)

Other cases have taken the same view as Cablevision and held that Netcom stands for the proposition that the design of automated technical processes is never causational. Some courts describe this rule as saying the lack of human intervention means there is no volitional conduct.13 But that is not entirely true. Humans certainly intervened, volitionally, to design the system and maintain and operate it. So, contrary to how courts here have described it, it is more accurate to say this permutation of the “volitional conduct” test limits direct liability when there is no human intervention contemporaneous with the moment a copy is initiated.

Finally, some courts have interpreted “volitional conduct” as roughly synonymous with the general tort principle of “proximate causation.”

At least one court has explicitly called attention to this resemblance. “Notwithstanding these sound decisions, the concept of ‘volition’ can be confusing,” said the Central District Court of California. “‘Volitional’ is sometimes understood to mean ‘intentional,’ and yet no showing of intent is required for direct infringement liability. In this Court’s view, the key to understanding the so-called ‘volitional conduct’ requirement is to equate it with the requirement of causation, not intent. ‘Just who caused the copyrighted material to be infringed?’”14

And the Ninth Circuit seems to have implicitly taken the position that volitional conduct is equivalent to proximate causation.

In Fox Broadcasting Co. v. Dish Networks, satellite TV provider Dish was sued, in part, for unauthorized copying of television programs made through its PrimeTime Anytime Service (PTAT). When enabled by a subscriber, PTAT automatically recorded all primetime programs from the four major broadcasters and made them available on the subscriber ‘s DVR. Dish argued that its subscribers should be the ones exposed to liability because they, not Dish, “made” the copies.

The Central District Court of California agreed with Dish. On a preliminary injunction motion, the court said Dish was likely to prevail on the merits, relying primarily on the holdings of Netcom and Cablevision that require some element of “volitional conduct” for direct liability.

The decision was appealed, and the Ninth Circuit affirmed. But there’s something curious about the opinion. The Circuit does not once mention volition, nor does it cite to the granddaddy of volitional conduct, Netcom (though it does cite approvingly to Cablevision). Instead, it said simply that direct liability “comprises a requirement that the defendant cause the copying.” (Emphasis added). In addition, the court repeats the lower court’s quotation to Prosser’s recitation of the proximate causation inquiry.15 At least one district court within the Ninth Circuit has since suggested that the Circuit had yet to adopt the “volitional conduct” test.16

In short, it is not remarkable to say “that the principle of volition has been applied inconsistently and is not always well understood.”17 The above discussion demonstrates that, since Netcom, at least three versions of the “volitional conduct” test have emerged (four, if you count cases where its application was declined entirely).

I think the last view—that volitional conduct is merely a substitute for proximate causation—is correct, and that the different terminology has led courts astray. Focusing on proximate causation instead of volitional conduct would provide better results. To see why, let’s take a closer look at proximate causation.

Proximate Causation and Copyright

Copyright infringement is a strict liability tort. Knowledge or intent are not required for copyright infringement.18 But infringement does require, like all torts, some element of causation, an act that results in the harm. Causation is typically divided into factual (“but for”) causation and “proximate” causation. Put another way, did the act actually cause the harm and, if so, should the law, as a matter of policy, hold the actor liable for causing the harm.19

Factual causation is not typically difficult to establish since it is such a broad concept. Proximate causation, on the other hand, is an entirely different story. It is not a philosophical or scientific question, but a legal one.

“What we do mean by the word “proximate” is that, because of convenience, of public policy, of a rough sense of justice, the law arbitrarily declines to trace a series of events beyond a certain point.”20

The factual causes of any occurrence are seemingly limitless. One could trace forever the chain of events that lead to a specific harm, but it has long been recognized that there is little sense in extending legal responsibility throughout those chains. The chief mechanism animating this recognition is proximate causation. Proximate causation is a limiting theory about the “specific qualities that an agency must possess in relation to the outcome in order to be its cause in law.”21 As Chief Justice Roberts has said, proximate cause “limits liability at some point before the want of a nail leads to loss of the kingdom.”22

Justice O’Connor, in a case concerning causation under an environmental statute that is silent on the issue, explains how proximate causation is an element of all strict liability torts and roughly sketches its contours and purpose:

Strict liability means liability without regard to fault; it does not normally mean liability for every consequence, however remote, of one’s conduct. I would not lightly assume that Congress, in enacting a strict liability statute that is silent on the causation question, has dispensed with this well-entrenched principle. In the absence of congressional abrogation of traditional principles of causation, then, private parties should be held liable under § 1540(a)(1) only if their habitat-modifying actions proximately cause death or injury to protected animals…

Proximate causation is not a concept susceptible of precise definition. It is easy enough, of course, to identify the extremes. The farmer whose fertilizer is lifted by a tornado from tilled fields and deposited miles away in a wildlife refuge cannot, by any stretch of the term, be considered the proximate cause of death or injury to protected species occasioned thereby. At the same time, the landowner who drains a pond on his property, killing endangered fish in the process, would likely satisfy any formulation of the principle. We have recently said that proximate causation “normally eliminates the bizarre,” and have noted its “functionally equivalent” alternative characterizations in terms of foreseeability, and duty, Proximate causation depends to a great extent on considerations of the fairness of imposing liability for remote consequences. The task of determining whether proximate causation exists in the limitless fact patterns sure to arise is best left to lower courts.23

O’Connor notes the role of fairness in the proximate causation inquiry; other commenters point out the role of justice, blame, and moral responsibility. Some common policy questions underlying proximate causation include “indications of preconceived purpose, specifically intended consequence, necessary or natural result, reasonable foreseeability of result, the intervention of independent causes, whether the defendant’s acts are a substantial factor in the sequence of responsible causation, and the factual directness of the causal connection.”24

Proximate causation is often tied to our expectations. “One connotation of proximate cause is that harm came about in a ‘direct’ or expected way, rather than in an unusual, freakish manner.” In addition, liability may not be found “because of lack of proximate cause in the sense that the accidents are coincidental to defendants’ behavior, unrelated to the normal risk created by their behavior.”25

Finally, proximate causation contains a recognition that liability must necessarily cut off. “At some point in the causal chain, the defendant’s conduct or product may be too remotely connected with the plaintiff’s injury to constitute legal causation ”26

If we revisit the Netcom decision through the lens of proximate causation, we can easily see that the court was considering the same policies. For instance, it considers the consequences of placing liability on the defendant when it notes that holding Netcom liable “would create many separate acts of infringement and, carried to its natural extreme, would lead to unreasonable liability.” It looks at whether the defendant’s acts are a substantial factor in the sequence of responsible causation and the magnitude of the burden of guarding against it when it says holding Netcom directly liable “would hold the entire Internet liable for activities that cannot reasonably be deterred.” The court is, in other words, demonstrating reasons it should limit Netcom’s legal liability despite its factual role in causing the copying.

That is to say that when Netcom says direct liability requires “some element of volition or causation”, it is referring primarily to the latter, not the former. Read appropriately, Netcom means “proximate causation” when it says “volitional conduct”.

If we agree that the “volitional conduct” test and proximate causation are largely synonymous than we can, and should, ditch any talk of “volitional conduct.”

This is preferable for a number of reasons. For one thing, the “volitional conduct” test provides no advantage over a proximate causation inquiry.

Saying direct liability requires volitional conduct is redundant. The second Restatement of the Law on Torts says that an intentional tort requires an “act”. It defines an “act” as “an external manifestation of the actor’s will” and notes “there cannot be an act without volition”. So to say that copyright infringement requires a volitional act is simply to repeat the obvious and doesn’t get us far. It is like saying we have a right to “free speech on Tuesdays.”27

And, in fact, it puts courts and litigants at a disadvantage. Calling proximate causation “volitional conduct” adds little or no clarity or guidance to the test and only further masks the policies that drive proximate causation analysis in the first place.

Proximate causation itself is already a proxy for an unspecified set of policies that underlie law. By skipping over analysis of proximate causation, courts miss the opportunity to be informed by those policies. At the same time, there have been little or no underlying policies that have emerged as guidance since Netcom for applying the volitional conduct test.

At its core, the question of who “makes” a copy when we are dealing with owners, operators or other intermediaries of copy machines is this: at what point do we circumscribe legal responsibility for parties who are factual causes of a copy. That is precisely the type of question that proximate causation seeks to answer.

One initial result of this decision is that courts need to take care in per se rules regarding automated processes. In a world with self-driving cars and computers that can play chess, it should be apparent that the mere fact that an act occurs via an automated function that can operate independent of the operator should not preclude the operator or programmer of the function as a causal agent of the consequences. Whether an automated process is a causal agent of the operator is a question of fact, but surely the design or programming of a process is, in the language of tort law, an external manifestation of the programmer’s will.

Indeed, you rarely see cases outside the copyright context reflect this sort of thinking. For example, just last month, a federal court held that search engine results are protected by the First Amendment. During its analysis, the court stated that “the fact that search-engine results may be produced algorithmically” is irrelevant. “After all, the algorithms themselves were written by human beings, and they ‘inherently incorporate the search engine company engineers’ judgments about what material users are most likely to find responsive to their queries.’” It would be weird to say the results of an automated process can be considered protected speech attributed to the operator of the system employing that process, unless they are infringing, in which case they are not attributable to the operator. And indeed, at least a few courts have bucked the trend and found the design of automated processes indicative of causation.28

Analyzing Proximate Causation

The ultimate conclusion here is that using proximate causation to answer the question of who makes a copy is sound. It is superior to the ill-defined “volitional conduct” test that some courts have used and should provide better guidance for courts to reach preferable outcomes. So what would a proximate causation analysis look like?

A full dissertation on proximate causation of copying online is beyond this article, but I think it is still worth attempting to trace out some rudimentary factors that courts might consider.

Since we are concerned with who makes a copy, it makes sense to focus much of our attention on the various steps and elements needed to create a copy. For example:

1) Location of equipment

Location is important, just as it is in most areas of the law. This is not so much a question of geography, but rather over the nature of the place, particularly who has dominion over the premises. Saying, as Aereo has, that the only difference between it and a personal antenna is the “length of the cable” is as inaccurate and meaningless as saying the only difference between my apartment and the Italian restaurant down the street is the amount of steps I have to take to get there. There are, it turns out, quite a few other differences, most far more relevant to any legal issue that may arise. I would point out that I am not as convinced as some courts are of the analogy between a self-service copy machine and that same machine in someone’s home. The copy machine in someone’s home is reserved for their use and so the amount of copying is necessarily limited. But the copy machine at a business is open to a potentially continuous stream of people coming to copy.29

How has this factor been handled by courts? On the one hand, there is little weight given to the fact that copying equipment is on a defendant’s premises—in fact, CoStar expressly exempts the housing and automated operation of copying equipment without more from direct liability. On the other hand, when the copying equipment is outside a defendant’s dominion, courts tend to view defendant’s participation as too remote for direct liability.30

2) Provision of copyrighted work

Implicit in many cases relying on Netcom is the fact that the services play a “hands-off” role in the copying, acting as a conduit or providing instead a platform for users to make their own copies—from their own original works.31 It makes less sense to limit liability for causing a copy when a service is providing the user with the work to be copied.

Even Cablevision, which found no direct liability for the provider of a remote DVR service, grudgingly admitted this point. The Second Circuit there said Cablevision’s “unfettered discretion in selecting the programming that it would make available for recording… is indeed more proximate to the creation of illegal copying than, say, operating an ISP or opening a copy shop, where all copied content was supplied by the customers themselves or other third parties.”

Courts should be skeptical of attempts by services to argue they are formally not the provider of a work despite functionally providing those works. One example of this can be seen in Columbia Pictures Industries v. Redd Horne.32 Defendant there, sued for infringing plaintiff’s public performance rights for operating viewing booths in its video rental store premises, argued that it was protected by the first sale doctrine. That is, since it had rented the video tapes to its customers, it was no longer responsible for any performances that resulted. The court rejected this argument outright, saying that the first sale doctrine only circumscribes a copyright owner’s control over further distributions. It does not operate as a waiver to a copyright owner’s other exclusive rights such as the public performance right.

But the court also noted that defendant’s argument elevated form over function. “The record clearly demonstrates that showcasing a video cassette at Maxwell’s is a significantly different transaction than leasing a tape for home use. Maxwell’s never disposed of the tapes in its showcasing operations, nor did the tapes ever leave the store. At all times, Maxwell’s maintained physical dominion and control over the tapes.”

Citing to Redd Horne, the court in Warner Bros. WTV Systems rejected a similar argument. There, defendant had built a convoluted internet streaming service where films were kept on DVDs and played on DVD players before being transmitted to user’s computers, rather than storing the digital files on a server. It argued that this set-up made it a service that offered “DVD rentals” rather than public performances, thus taking it outside the scope of copyright law. But, as in Redd Horne, the court found the DVDs remained under physical dominion and control of defendants, and did not resemble a DVD rental service.

3) Participation in copying process

How materially did the defendant participate in the copying process? This is one of those questions that can either threaten to swallow every other consideration or become redundant and act as a sort of meta-factor in the analysis. But I think case law does offer some guidance that can help shape this element into something meaningful and useful.

One example can be found in distinctions between cases involving Usenet services—interestingly, Netcom and a surprisingly large percentage of volitional conduct cases have dealt with Usenet. And, like Netcom, the majority have found that causation “is lacking where a defendant’s system is merely used to create a copy by a third party.”33 But at least one Usenet service had been found directly liable by a court, and the differences with that service are illustrative here.

In Arista Records v. Usenet.com, the court found, unlike other Usenet services, the defendant engaged in direct infringement by doing the following: it took active measures to create servers dedicated to mp3 files and increased retention time of those files knowing they were most popular content on service, it took active steps including automated filters and human review to remove access to certain categories of content and block certain users, and it routinely exercised control over which newsgroups to accept and store and which to reject.

Each of these steps make Usenet.com more directly a cause of the resulting unauthorized copying. Usenet.com’s actions make infringement a more likely and natural result, thus weakening the claim to limit Usenet.com, a “but for” cause of infringement, as a legal cause of infringement.

A second example of a court examining the participation of a defendant in the copying process is found in Capitol Records v. ReDigi, involving a service purportedly allowing “used” digital music files to be sold. Here the court found it relevant to direct liability that the defendant built a service where only copyrighted work could be sold, despite being automated. It also played a “fundamental and deliberate role” in distribution, including providing infrastructure for users’ infringing sales and affirmatively brokering such sales by connecting interested users with available sellers.

Third, one court said a filelocker could face direct liability for the following reasons: it designed and maintained a system that allows uploading and downloading; it created distinct websites, presumably in an effort to streamline users’ access to different types of media; it encouraged and, in some cases paid, its users to upload vast amounts of popular media through a reward program; it disseminated URLs for various files throughout the internet; it provided payouts to affiliate websites who maintain a catalogue of all available files; and, at a minimum, it was plausibly aware of the ongoing, rampant infringement taking place on its websites.34

Finally, by way of contrast, the district court in Sony explained a situation where a defendant’s participation was too attenuated to support direct liability. As noted above, the manufacturer of the Betamax maintained no role in copying once the device was sold to a customer and taken to his home. The sale severed all ties with the customer, the device, and any resulting copies.

What can be gleaned from these cases is that evidence that a service provider has not taken a “hands off” or passive role in operating a copying system will defeat limitation on direct liability. That evidence may take the form of intent, purpose, expectation, or ex ante knowledge.

4) Range of uses of “copy machine”

Closely related to the participation in the copying is the range of uses of a copy machine. A defendant who designs a system that is good for nothing but making infringing copies is very proximate to the resulting infringement. The operator of a service with substantial non-infringing uses—a true general-purpose system—is less so. The range necessary narrows as a defendant’s participation in process attenuates—so only devices which are good for pretty much nothing but infringement would give rise to liability as articles of commerce to the manufacturer.35 Essentially, this factor asks how probable the occurrence of infringement is due to the design of a defendant’s system.

Some courts and commenters single out the “unusual result” as demonstrative of causation, the thing that “makes the difference”. As one scholar explains, “The train wreck is said to be caused by the bent rail even though it was the bent rail together with the fact that the train was going at a certain speed (and other facts, of course) that led to the wreck. To cite the speed—when it is the normal speed of the train—as the cause would be wrong precisely because it is normal and therefore present as a factor when trains are not wrecked.”36 Infringement that occurs on a system designed more for infringing uses is a less unusual result than infringement that occurs on a more general purpose system.

5) Dominion over copy

The party that retains dominion over or possession of a copy once it has been made has less of a claim that he should not be legally responsible for making the copy in the first place. Courts are hesitant to place much stock in the fact that a particular defendant may retain possession over a copy—in Netcom, for example, the court rejected the argument that infringing copies remained on Netcom servers for up to eleven days prohibited it from limiting direct liability. But the converse—a service does not possess the copy once it’s made—has been a factor in limiting direct liability for some courts.37

Dominion over a copy, that is, the right or ability to control the copy, is also relevant. Several courts have limited direct liability by relying on the lack of an ability, legal or technical, to control the copy once it has been made.38 In Dish, though the Ninth Circuit ultimately held that the district court did not abuse its discretion when it denied a preliminary injunction, it did suggest that Dish’s dominion over the copies being made might end up supporting direct liability. The court said, “That Dish decides how long copies are available for viewing, modifies the start and end times of the primetime block, and prevents a user from stopping a recording might be relevant to a secondary or perhaps even a direct infringement claim.”

Miscellany

“Drawing the line between where legal causation may exist and where, as a matter of law, it cannot, has generated a considerable body of law.”39 Proximate causation is a factual inquiry—a question for the jury. Even then, it is an amorphous concept. The Seventh Circuit, for example, does not even have a definition for proximate causation in its pattern civil jury instructions.40 This article argues that courts should resist further use of the “volitional conduct” test to determine liability for services that make copies for users and allow users to make copies and instead rely on the existing tort doctrine of proximate causation, as this would be a clearer and more common sense approach. It does not purport to give any definitive answers to the proximate causation inquiry, nor suggest that doing so would be any easier than applying proximate causation outside the copyright context.

But I do want to end with a couple miscellaneous points worth mentioning.

First, and perhaps most importantly, while there may be similar principles governing causation of each of the various exclusive rights of a copyright owner, courts must be careful about the distinctions between each specific right. Throughout this article, I have used the term “copying” as shorthand for any of the exclusive rights of a copyright owner.41 However, the factors I trace are most relevant to the reproduction right. The elements of an act of reproduction are different from the elements of an act of distribution or a public performance. To note one important difference: when a copy of a work is made, there is only a single act of reproduction. A transmission, by contrast, may involve multiple performances.42 This materially changes any causation analysis.

Second, although intent, foreseeability or knowledge are not required to establish strict liability, their presence certainly demonstrates a more proximate cause of the resulting harm. Some courts, like the Cablevision court, appear to see evidence of such factors as irrelevant, or even contrary, to direct liability.43 However, it would seem that the fact that a service provider acted in a way that showed it intended the making of copies seems relevant to the question of whether it caused the making of the copies.

The claim that courts should analyze who “makes” a copy under proximate causation rather than volitional conduct is a starting point, not an end point. But it should provide greater clarity and results that are more congruent with common sense—results that should better adhere to copyright’s greater purpose.

Footnotes

  1. See, for example, David Sohn, Cloud Computing Threatened in Aereo Supreme Court Case, CDT (March 3, 2014); Marc Perton, Cablevision: Case against Aereo could destroy cloud computing (and our cloud DVR), Engadget (Dec. 13, 2013). []
  2. Cloud computing does not, for example, appear to have been destroyed in Australia despite a 2012 decision that is the equivalent of reversing Aereo. []
  3. 17 USC § 512(c). []
  4. Elektra Records v. Gem Electronic Distributors, 360 F. Supp. 821 (EDNY 1973). []
  5. The Ninth Circuit would later hold that a place “open to the public” does not include a hotel room because an individual renting a hotel room enjoys a similar constitutional right of privacy. Columbia Pictures Industries, Inc. v. Professional Real Estate Inv., Inc., 866 F. 2d 278, 281 (9th Cir. 1989). []
  6. The Supreme Court would eventually hold that this characteristic of Betamax players also prevents the imputation of requisite knowledge for contributory infringement by Sony. []
  7. Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 (SDNY 1991). []
  8. Playboy Enterprises v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993). []
  9. Religious Tech. Center v. Netcom On-line Comm., 907 F. Supp. 1361 (ND Cali. 1995). []
  10. 373 F.3d 544, 550 (4th Cir. 2004). []
  11. 338 Fed. Appx. 329 (4th Cir. 2009). []
  12. 536 F. 3d 121 (2nd Circuit 2008). []
  13. Perfect 10 v. Giganews, CV11-07098 AHM (SHx) (CD Cali, March 8, 2013); Wolk v. Kodak Imaging Network, Inc., 840 F. Supp.2d 724, 742 (SDNY 2012), “There is no dispute that any reproduction, display or transmission of the Plaintiff’s images by or through the KODAK Gallery website is an automated process with no human intervention by any employee of the Kodak Defendants. The fact that Wolk’s images are copied into product simulations in addition to being transmitted to fulfillment vendors does not constitute a volitional act where the copying is automated”; Disney Enterprises v. Hotfile, 798 F. Supp. 2d 1303, 1309 (SD Fla 2011), “courts have repeatedly held that the automatic conduct of software, unaided by human intervention, is not ‘volitional’”; Parker v. Google, Inc., 422 F. Supp. 2d 492 (ED Pa 2006), “When an ISP automatically and temporarily stores data without human intervention so that the system can operate and transmit data to its users, the necessary element of volition is missing. The automatic activity of Google’s search engine is analogous”; Field v. Google Inc., 412 F. Supp. 2d 1106 (D. Nevada 2006), holding that, regarding the creation and downloading of a cached copy of a web page from Google’s servers, “The automated, non-volitional conduct by Google in response to a user’s request does not constitute direct infringement under the Copyright Act.” []
  14. Perfect 10 v. Giganews, supra. []
  15. The lower court initially misquoted Prosser as saying the proximate causation inquiry looked at who was “the most significant and important cause” of the copy rather than “whether the conduct has been so significant and important a cause that the defendant should be legally responsible” a fact seized upon by plaintiff’s in their motion for rehearing en banc. The Ninth Circuit denied the rehearing but amended the original opinion to note the misquotation, though the ultimate outcome remained unchanged. []
  16. National Photo Group v. Allvoices, No. C-13-03627 JSC, n.3 (ND Cali, Jan. 24, 2014). []
  17. Eleanor M. Lackman and Scott J. Sholder, The Role of Volition in Evaluating Direct Copyright Infringement Claims Against Technology Providers, 22 Bright Ideas 3 (2013). []
  18. Sater Design Collection v. Waccamaw Construction, No. 4:08-CV-4133-TLW-SVH (D. S.C., Feb. 14, 2011) (“Case law establishes that knowledge or intent is not an element of copyright infringement “). []
  19. “Causation principles generally applicable to tort liability must be considered applicable. These require not only cause-in-fact, but “legal” or “proximate” cause as well, the latter involving a policy rather than a purely factual determination: “whether the conduct has been so significant and important a cause that the defendant should be held responsible.” Brandenburg v. Seidel, 859 F. 2d 1179, 1189 (4th Cir. 1988), quoting Prosser and Keeton Torts, § 42 p. 272 (general principle) (5th ed. 1984); “Cause in fact, “but for” causation, is not enough for liability. ” * * * `”Once it is established that the defendant’s conduct has in fact been a cause of the injury * * * there remains the question whether the defendant should be legally responsible for what he has caused * * *,”` ” and that is a question of policy to be resolved by the courts.” Benner v. Bell, 602 NE 2d 896, 899 (Ill App 4d 1992). []
  20. Palsgraf v. Long Island Railroad Co., 248 N.Y. 339 (1928) (Andrews, J., dissenting). []
  21. Antony Honoré, “Causation in the Law”, The Stanford Encyclopedia of Philosophy (Winter 2010 Edition), Edward N. Zalta (ed.). []
  22. CSX Transportation v. McBride, 131 S. Ct. 2630, 2646 (2011). []
  23. Babbitt v. Sweet Home Chapter, Communities for Great Ore., 515 US 687, 712-13 (1995) (O’Connor concurrence). []
  24. Khurana v. Innovative Health Care Systems, Inc., 130 F. 3d 143, 148-49 (5th Cir. 1997). See also Benner v. Bell, supra at 899, noting policy questions underlying proximate causation include “reasonable foreseeability of injury, likelihood of injury, magnitude of burden of guarding against it, and consequences of placing that burden on defendant.” []
  25. Steven Shavell, “Causation and Tort Liability “. []
  26. Union Pump Co. v. Allbritton, 898 SW 2d 773, 775-76 (Texas 1995). []
  27. See Frederick Schauer, Free Speech on Tuesdays, Virginia Public Law and Legal Theory Research Paper No. 2014-10 (January 10, 2014). Schauer takes on the question of what it means to say a right “exists” and examines the way we talk about—and specify—rights. Noting that “there is no remark without remarkability,” Schauer writes that, “although it is thus true that there is in fact a right to free speech on Tuesdays, it would be odd for someone to say that there is a right to free speech on Tuesdays. And that is because to say that there is a right to free speech on Tuesdays implies that there is something different or special about free speech on Tuesdays as compared to some background or baseline understand.” Similarly, to say that causation requires volitional conduct is both technically true but implicitly “remarkable.” []
  28. See, for example, Capitol Records, LLC v. ReDigi, Inc., 934 F. Supp. 2d 640, 657 (SDNY 2013), “While that process is itself automated, absolving ReDigi of direct liability on that ground alone would be a distinction without a difference. The fact that ReDigi’s founders programmed their software to choose copyrighted content satisfies the volitional conduct requirement and renders ReDigi’s case indistinguishable from those where human review of content gave rise to direct liability.” []
  29. Though the court in Columbia Pictures Indus. v. Redd Horne, Inc., 568 F. Supp. 494 (WD Pennsylvania 1983), aff’d 749 F. 2d 154 (3rd Cir. 1984), was interpreting the definition of a “place open to the public”, it spoke to this distinction as well. In holding that performances in private viewing booths in a public video store were within the scope of a copyright owner’s exclusive rights, the court noted that “the potential exists for a substantial portion of the public to attend such performances over a period of time.” Id. at 500. []
  30. See, for example, In Re Cellco, 663 F. Supp. 2d 363, 377 (SDNY 2009), “Once the customer has downloaded the ringtone onto her telephone, she controls the telephone and makes the decisions that determine whether that ringtone will be triggered by an incoming call signal”; Perfect 10 v Cybernet, 213 F. Supp. 2d 1146, 1168-69 (CD Cali 2002), “Based on the evidence before the Court it appears that Cybernet does not use its hardware to either store the infringing images or move them from one location to another for display. This technical separation between its facilities and those of its webmasters prevents Cybernet from engaging in reproduction or distribution, and makes it doubtful that Cybernet publicly displays the works”; Universal City Studios v. Sony Corp, 480 F. Supp. 429 (CD Cali 1979), “The copying occurs not in a store operated and managed by the defendants but rather in a person’s home, a location in which individual privacy is constitutionally protected and over which defendants have no control.” []
  31. See, for example, Disney v. Hotfile, 798 F. Supp. 2d 1303, 1307 (SD Fla. 2011), “[N]othing in the complaint alleges that Hotfile … took direct, volitional steps to violate the plaintiffs’ infringement. There are no allegations, say, that Hotfile uploaded copyrighted material.” []
  32. 749 F.2d 154 (3rd Cir). []
  33. Perfect 10 v. Giganews, CV11-07098 AHM (SHx) (CD Cali, March 8, 2013); Parker v. Google, 422 F. Supp. 2d 492 (ED Pa. 2006); Ellison v. Robertson, 357 F. 3d 1072 (9th Cir. 2004); ALS Scan v. Remarq Communities, 239 F. 3d 619 (4th Cir. 2001). []
  34. Perfect 10 v. Megaupload, 2011 WL 3203117 (S.D. Cal.). []
  35. See, e.g., Sony, supra. []
  36. Morton White, Causation in the Law by H. L. A. Hart; A. M. Honoré Review, 60 Columbia Law Review 1058, 1059 (1960). []
  37. See In re Cellco, supra.; Cybernet, supra.; Sony, supra. []
  38. E.g., Leonard v. Stemtech Health Sciences, Inc., CV 08-67-LPS-CJB, 2013 WL 5288266 (D. Del. Sept. 19, 2013), though infringing photo was copied onto a website defendant owned, hosted, and directly profited from, the photo was copied by independent distributor onto an area of the website the defendant did not control. []
  39. Union Pump Co. v. Allbritton, 898 SW 2d 773, 775-76 (Texas 1995). []
  40. Federal Civil Jury Instructions of the Seventh Circuit (2009). []
  41. SOS, Inc. v. Payday, Inc., 886 F. 2d 1081, 1085 n.3 (9th Cir. 1989); Playboy Enterprises, Inc. v. Webbworld, Inc., 991 F. Supp. 543, 550-51 (ND Tx 1997), “‘Copying’ is a judicial shorthand for the infringement of any of a copyright owner’s exclusive rights.” []
  42. See House Report No. 94-1476 (1976), “Under the definitions of “perform,” “display,” “publicly,” and “transmit” in section 101, the concepts of public performance and public display cover not only the initial rendition or showing, but also any further act by which that rendition or showing is transmitted or communicated to the public. Thus, for example: a singer is performing when he or she sings a song; a broadcasting network is performing when it transmits his or her performance (whether simultaneously or from records); a local broadcaster is performing when it transmits the network broadcast; a cable television system is performing when it retransmits the broadcast to its subscribers; and any individual is performing whenever he or she plays a phonorecord embodying the performance or communicates the performance by turning on a receiving set.” []
  43. See also Giganews: “Plaintiff ‘s allegations regarding Defendants’ knowledge of the pirated content on its servers do not salvage Plaintiff’s direct infringement claim. As the Netcom court pointed out, “knowledge” is not a required element of direct infringement (although it is a required element for contributory infringement).” []

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Why a Loss for Aereo Wouldn’t Threaten Cloud Services — Todd Spangler at Variety has a great post responding to the doomsday scenarios Aereo supporters have been employing as The Supreme Court prepares to hear arguments in the case. “A Supreme Court finding that Aereo violates provisions of the Copyright Act narrowly tailored to this case won’t kill Dropbox, Apple iCloud, Google Drive, Box, Microsoft OneDrive or Amazon Cloud Drive. Those services aren’t jury-rigged to pull in content from third-party sources without permission. And they’re already protected from liability for copyrighted material illegally uploaded to their services under the Digital Millennium Copyright Act. Cablevision, as noted, already has content rights.”

Alexander on Property’s Ends — A thought-provoking scholarly article that argues property’s ultimate end is human flourishing. This is contrary to the views of many copyright skeptics, who suggest that the fact that copyright has a purpose beyond private gain somehow distinguishes intellectual property from property in general.

USTR Froman: ‘We Have Had Over 1,200 Meetings With Congress On TPP’ — At a House Ways and Means Committee hearing this week US Trade Representative Froman discussed the Trans-Pacific Partnership, currently being negotiated between a dozen countries. As with all US Free Trade Agreements, the TPP sets standards for IP protection, of which Froman said, “The United States is an innovative economy, and the Obama Administration is committed to protecting intellectual property (IP), which is vital to promoting and encouraging innovation and creativity… Millions of American jobs rely on IP, and we will continue to use our trade agenda in 2014 to defend the IP rights of our creators and innovators while supporting the freedom of the Internet, encouraging the free flow of information across the digital world, and ensuring access to medicines, particularly by the poor in less developed economies.”

Baude on Federalism — The best only good April Fool’s joke this week. “The most natural question to ask about zombies and constitutional law is whether zombies are persons within the meaning of the Constitution. But that question turns out to be remarkably difficult. The word “person” appears repeatedly throughout the Constitution, but without any clues about whether it extends to zombies. What’s the best constitutional solution to this problem? Zombie Federalism. The Constitution does not resolve the question of zombie personhood, so we should understand it to leave that question to state law.”

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Why did we evolve to appreciate beauty? — An interesting contemplation of why we enjoy aesthetics. “It is not yet clear why adults should find perceptual play fun. Aren’t we done learning how to perceive? Everyone achieves a certain basic level of skill in characteristically human activities: walking, talking, looking, listening, and singing. We do this by pleasurable play when young, and we maintain these skills with practice well into adulthood. But with each of these activities, the human body affords us the capacity to improve – to become extraordinarily skilled.”

A ‘Crisis’ in Online Ads: One-Third of Traffic Is Bogus — This, and the fact that brands often unwittingly find themselves funding illicit filesharing sites, suggests that there is a need to improve the workings of the online advertising ecosystem.

File sharing study found invalid — Examining a study that claims filesharing actually benefited the music industry. “Dr. Ford opens with a general remark about arguments made in defense of file sharing and that “the empirical analysis in Dr. Lunney’s paper is some of the weakest in this area, and the defects in the analysis are many and varied. Indeed, Dr. Lunney’s analysis suffers from defects so severe as to render it useless for guiding public policy. Dr. Ford expresses his sentiment early on that there are too many things wrong with the study to go through them all.”

Doing nothing is not an option to stop on-line piracy — “Copyright is established in the U.S. Constitution on the theory that one obtains more goods and services when one pays for them.  Those opposed to copyright, on whatever grounds, surely bear a substantial burden in making their case.  That burden requires more than the bandying about of sweet words.  Indeed, the general principle that payment to producers encourages production, so far as I know, is not under attack in any venue except copyright.”

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Earlier this month, the US Copyright Office held a two day public roundtable on the issues of orphan works and mass digitization.

During one of the panels, a brief side debate broke out over what the purpose of copyright law was—particularly, what the proper role of the public benefit is and how much weight it should be accorded.

The first participant essentially quoted the Betamax decision’s description of public benefit.1 There the Supreme Court said:

The copyright law, like the patent statutes, makes reward to the owner a secondary consideration… 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 response, a panelist refuted characterization of reward to the owner as a “secondary consideration”. Disagreement arose. A separate panelist tried to make peace by remarking that both panelists’ explanations of the public benefit come from Supreme Court opinions. Maybe this is a case of agreeing to disagree.

But consider this: the Supreme Court refuted Sony‘s description of the public benefit of copyright in the much more recent Eldred v. Ashcroft. There, the majority said:

JUSTICE STEVENS’ characterization of reward to the author as “a secondary consideration” of copyright law, understates the relationship between such rewards and the “Progress of Science.” As we have explained, “[t]he economic philosophy behind the [Copyright] [C]lause … 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.” Accordingly, “copyright law celebrates the profit motive, recognizing that the incentive to profit from the exploitation of copyrights will redound to the public benefit by resulting in the proliferation of knowledge…. The profit motive is the engine that ensures the progress of science.” Rewarding authors for their creative labor and “promot[ing] … Progress” are thus complementary; as James Madison observed, in copyright “[t]he public good fully coincides . . . with the claims of individuals.” JUSTICE BREYER’s assertion that “copyright statutes must serve public, not private, ends,” similarly misses the mark. The two ends are not mutually exclusive; copyright law serves public ends by providing individuals with an incentive to pursue private ones.

Well sure, the copyright skeptic might respond, that’s all well and good. But the Supreme Court only has authority over the law; it’s ruminations on matters of philosophy are not binding.

But consider this: Eldred‘s description of the public benefit is, as the Court notes, a direct descendant of the justification offered by James Madison, the very drafter of the Constitution’s Copyright Clause.

The description of the public benefit in Sony, on the other hand, comes from the misquotation of a state sales tax case.

Yes, Sony directly quotes Fox Film Corp. v. Doyal, a 1932 Supreme Court case, about the “sole interest of the United States.” In Fox Film, a film company sued to prevent the state of Georgia from collecting state tax on its income from licensing films. The film company argued that copyrights are “instrumentalities” of the federal government, so any income derived from them are immune from state taxation.

The Court disagreed. The federal government doesn’t retain any possessory or ownership interest in a copyright it secures. A copyrights is not a “franchise or privilege to be exercised on behalf of the Government ” Instead, “Copyright is a right exercised by the owner during the term at his pleasure and exclusively for his own profit and forms the basis for extensive and profitable business enterprises. The advantage to the public is gained merely from the carrying out of the general policy in making such grants and not from any direct interest which the Government has in the use of the property which is the subject of the grants.”

So when the Fox Film Court speaks of “the sole interest of the United States”, it is merely making the distinction that the federal government does not retain any right or title in a copyright such that license income would be exempt from state taxation. But the Court would later take this quote out of context,2 and Sony perpetuates this error. Indeed, the above quote from Fox Film about the advantage to the public is more consistent with Eldred‘s explication of the public interest than Sony‘s.

So what is the point here?

Copyright skeptics will often proclaim that copyright law must serve the public interest. But that is not controversial. Of course it should serve the public interest; all laws should serve the public interest.

What is overlooked is how copyright serves the public interest. Skeptics will focus on how exceptions to and limitations on copyright further the public interest. Missing is the inherent public interest in copyright, in preserving incentives to create and disseminate expressive works.

Like any free market, enabling a free market in creative works tends toward the public good. Copyright is the economic building block of this market, allowing voluntary transactions to occur and private ordering to emerge. It encourages investment in creating and distributing the types of works that advance society and enrich our lives, the types of works that shouldn’t be considered an afterthought.

Some will suggest that creators will create and disseminate works even without copyright protection. This counterfactual is unconvincing. That there are creators who will create and distribute their works despite adequate copyright protection is a demonstration of human resilience, not an affirmation that society can continue to benefit while artists, authors, and creators are undermined.

So yes, let us celebrate the public benefit of copyright, let us celebrate how the profit motive serves as the engine ensuring the progress of science. But let’s not confuse the short term gains of ignoring copyright with the public benefit, or focus solely on the benefits of copyright’s limitations at the expense of the public benefit of protecting creators’ rights.

Footnotes

  1. Sony Corp v. Universal City Studios, 464 US 417, 429 (1984). []
  2. United States v. Paramount Pictures, Inc., 334 US 131, 158 (1948). []

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Not-So-Zen and the Art of Voluntary Agreements — If you haven’t already seen it, be sure to read Kurt Sutter’s essay on Google and copyright. “I’m sure Mr. and Mrs. Google are very nice people. But the big G doesn’t contribute anything to the work of creatives. Not a minute of effort or a dime of financing. Yet Google wants to take our content, devalue it, and make it available for criminals to pirate for profit.”

Copyright Holders Look for an Antipiracy DMCA Upgrade — Speaking of voluntary agreements, yesterday the USPTO held its first in a planned series of public multistakeholder forums designed to create voluntary solutions to improve the functioning of the DMCA notice and takedown process within the current statutory framework. A consensus emerged that stakeholders would begin by tackling the standardization of the process and then going from there.

Sean O’Connor: The Overlooked French Influence on the Intellectual Property Clause — Fantastic article. I’m still digesting Prof. O’Connor’s conclusions, but his stocktake on literature analyzing the interpretation of the Copyright Clause is incredibly comprehensive and should prove invaluable to anyone interested in the subject.

Court gags Dotcom bodyguard — Kim Dotcom, self-proclaimed free speech advocate, has successfully gotten a court to prohibit a former employee from speaking out in public about his time in Dotcom’s employ.

MP3Tunes Founder Michael Robertson Found Liable for Copyright Infringement — Earlier this week, YouTube and Viacom settled their long-running litigation, leaving open the question of when, if ever, a service provider could lose DMCA protection because of willful blindness. Just a day later, a jury answered: here.

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Lupita Nyong’o and Celebrating Unsung Artists — “We celebrate successful artists — artists with the machinery of celebrity behind them — but how do we celebrate all of the other people who are making art each and every day? And, forget celebrating them: How do we support them? How do we make it economically viable for them to make art? We don’t. And, for the sake of our culture, we should.”

Slate’s Anti Copyright rant sounds like a letter from your psycho ex — The article insists that voluntary agreements to reduce the harms of infringement are the new SOPA, because in the two years since the bill was stopped, saying something is the new SOPA is the best strategy some copyright skeptics have been able to come up with.

Victims of IP theft need better protection — Reps. Judy Chu and Tom Marino highlight the challenges facing indie artist Christine Filipak in keeping up against the tide of infringement she faces. Just in time for yesterday’s IP Subcommittee hearing on the DMCA notice and takedown process. Along the same lines, check out Mark Schultz’s article, Time to revise the DMCA: the most antiquated part of the copyright may by one of the newest.

Transformative or just taking? Lawyers struggle to define fair use in wake of Google Books case — Report from a NYC Bar Association panel Monday featuring Judge Chin, who recently held Google Books to be a fair use, and other noted copyright lawyers and scholars.

Oakland emails give another glimpse into the Google-Military-Surveillance Complex — “The evidence was abundant and overwhelming: in email after email, Oakland officials had discussed the DAC usefulness for keeping tabs on activists, monitoring non-violent political protests and minimize port disruption due to union/labor strikes. In particular, officials wanted to use the surveillance center to monitor Occupy Wall Street-style activists, and prevent union organizing and labor strikes that might shut down the Port of Oakland. *** But buried deep in the thousands of pages of planning documents, invoices and correspondence was something that the activists either seemed to have missed or weren’t concerned by. A handful of emails revealing that representatives from Oakland had met with executives from Google to discuss a partnership between the tech giant and the DAC.”

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This morning, the House Judiciary Committee Subcommittee on Courts, Intellectual Property, and the Internet will continue its ongoing review of the Copyright Act, focusing this time on Section 512 of Title 17, the DMCA’s notice and takedown provisions.

No doubt, copyright’s skeptics will trot out their usual line of DMCA abuse, so I thought it would be appropriate to offer my own. Here, in no particular order, are my top examples of DMCA notice and takedown abuse: sites and services which had claimed the protection of the law while receiving millions of notices of infringing content and profiting handsomely, to the detriment not just of the large copyright holders who could afford to send takedowns (and litigate if need be) but especially to the detriment of individual creators and small businesses, who effectively have no recourse:

Hotfile

Filelocker Hotfile was founded in 2009. By the time it was sued for copyright infringement by the major motion picture studios in 2011, it had become one of the most popular such sites. In part, this was because the site did such a good job facilitating infringement among its users—evidence showed over 90% of files downloaded through the service were infringing, and the court noted that these efforts “worked a significant financial benefit to Hotfile and its founders.”

Hotfile, of course, argued strenuously that it was operating consistent with the DMCA.

The facts showed a different story. One of the requirements for the DMCA safe harbor is that a site adopts and reasonably implements a “repeat infringer” policy, one that terminates accounts in appropriate circumstances. The court found that Hotfile was doing anything but. When the litigation began, Hotfile had received over 10 million takedown notices for infringing content on its system.  But records show that it had only ever terminated a grand total of 43 users—though 33 of those came as a result of a court order from prior litigation. Nearly twenty-five thousand Hotfile users had accumulated over three infringement notices. Over sixty of those users were sitting on at least three hundred notices.

And as proof that Hotfile could have adopted a reasonable repeat infringement policy but didn’t, and that it would make a difference, the service revamped its policy after the litigation began and almost immediately 444 of its 500 highest paid affiliates were terminated for repeated infringement. Hotfile ended up shutting its doors and settling with the motion picture studios for $80 million the day before it was set to face a jury.

It’s difficult enough for creators to detect and deter online infringement, but some bad actors use the DMCA as legal cover, window dressing that places a façade of legitimacy over plain old for-profit exploitation. The law, however, is more than just a notice-and-takedown mechanism, and services have a number of requirements they must meet to enjoy its protection.

Megaupload

In 2012, the US government brought criminal charges against filelocker Megaupload and seven of its officers. Like Hotfile, Megaupload argued that it was merely an innocent cloud storage provider, shielded by the DMCA, but publicly released evidence shows the site used the law as a sword, helping it rake in $150 million and causing around $500 million in damages to copyright holders.

While the government alleges Megaupload failed to meet most of the DMCA’s requirements, one policy in particular stands out as DMCA abuse. According to the Department of Justice:

If there are multiple links to a file, then any attempt by the copyright holder to terminate access to the file using the Abuse Tool or other DMCA takedown request will fail unless all of the URL links to the infringing file are known and submitted, because the file will continue to be available through any undisclosed URL links. The infringing copy of the copyrighted work, therefore, remains on the Mega Conspiracy’s systems as long as a single link remains unknown to the copyright holder. The Mega Conspiracy maintains a record of links that have been generated by the system, but duplicative links to infringing materials are neither disclosed to copyright holders, nor are they automatically disabled or deleted when a copyright holder either uses the Abuse Tool or makes a standard DMCA copyright infringement takedown request. During the course of the conspiracy, the Mega Conspiracy has received many millions of requests to remove infringing copies of copyrighted works, and yet the Mega Conspiracy has, at best, only deleted the particular URL of which the copyright holder complained, and purposefully left the actual infringing copy of the copyrighted work on the Mega Conspiracy-controlled server and any other access links completely intact.

This is a deliberate end-run around the law’s purpose of cooperation between service providers and copyright owners to detect and deter infringement. “Takedown” should mean “takedown” (ideally, it should also mean “stay down”, but that’s another story).

Grooveshark

One of the safe harbors in the DMCA protects against liability for material stored at the direction of users. So why couldn’t you have users store music files on your servers and then provide an on-demand streaming platform with a catalog rivaling licensed music services? That’s the too-clever-by-half strategy employed by Grooveshark (along with allegations that it requires employees to upload music themselves to plug any holes). Grooveshark is currently involved in copyright infringement litigation with a number of record labels, and indie musician Erin McKeown has repeatedly called them out for their practices:

Noted copyright scholar Peter Menell has also written about the service, calling it a case study in DMCA safe harbor abuse. The “DMCA license” that services like Grooveshark believe they are entitled to under the law—where services believe it’s ok to build full-fledged content platforms without licenses so long as they “launder” the content through users—not only allows them to divert money out of the hands of musicians, but it makes it more difficult for legitimate, sustainable online platforms to grow.

IsoHunt

At one point, IsoHunt was one of the world’s most popular BitTorrent search engines, indexing and helping users search and find torrent files—90-96% of which were infringing. As with the services above, IsoHunt claimed DMCA protection. But last year, the Ninth Circuit rejected that claim.

The primary reason was that IsoHunt was actively inducing infringement through its service:

As noted, the record is replete with instances of Fung actively encouraging infringement, by urging his users to both upload and download particular copyrighted works, providing assistance to those seeking to watch copyrighted films, and helping his users burn copyrighted material onto DVDs. The material in question was sufficiently current and wellknown that it would have been objectively obvious to a reasonable person that the material solicited and assisted was both copyrighted and not licensed to random members of the public, and that the induced use was therefore infringing.

It would seem obvious that service provider actively engaged in encouraging infringement (and, as the record showed, profiting from it) could find refuge in a statue designed to protect service providers from incidental and innocent infringement that occurs on their facilities. But that is unfortunately not always the case. The DMCA should not be so broad that it protects against deliberate infringing behavior.

Though these sites have been or are currently the subject of legal action, there are sadly far too many like them continuing to operate, hiding behind the DMCA to profit off the work of others without their permission. This abuse penalizes good faith service providers and stymies the growth of legitimate innovative services. It exploits creators—and worse, chill their ability to create and disseminate new works for the public to enjoy.

As Congress looks at the DMCA, it should look for ways to reduce the ability of bad faith actors to abuse the important protections the law provides. That would better foster the type of sustainable and innovative online creative ecosystem that the public deserves.

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Last week the Supreme Court received the first round of amicus briefs in American Broadcasting Companies v. Aereo. Individuals and organizations who support the broadcasters’ position (or support neither party) filed nearly 20 briefs; in a few weeks we’ll see Aereo’s opening brief, followed a week later by amici in support of Aereo, setting the stage for oral arguments in front of the Court on April 22.

The issue in front of the Court should be familiar by now to anyone following the case, but to reiterate, it is this: does Aereo violate a copyright owner’s exclusive right to perform a work publicly?

In a series of posts, I broke down this inquiry into its component parts. First, I asked, “what is to the public“? Then I asked “what is a performance“?

Much ink has been spilled over how the Supreme Court should rule in Aereo, and my posts, concluding that, yes, Aereo does perform to the public, were no exception. The primary argument in favor of Aereo is that it is Aereo’s customers, not Aereo itself, engaged in performing broadcast television to users.

So it would seem that one question remains as to Aereo’s ultimate liability: who is the “performer”? This question is pivotal. If, as I have argued, we interpret “to the public” as requiring a look at the relationship between performer and audience, then a conclusion that it is the user engaged in performing would mean the performance is private, since a user-to-user performance is undoubtedly private. But if Aereo is the performer, the opposite conclusion seems required, since the relationship between Aereo, Inc. and its paying subscribers is very likely a public one. In other words, the latter involves direct liability for copyright infringement while the former does not.

But rather than attempting to answer this question here and now, I want to reframe it. Specifically, I want to suggest that the question of who “performs” a work is not a copyright question.

That does not mean it is any less valid of a question. It just means it is a question involving legal doctrines besides copyright law. If the argument, for example, is that Aereo is merely renting equipment to users to engage in otherwise legal actions, than the question is whether this is actually what is happening (and not just legal sleight of hand) and whether the agreement between Aereo and the user is sufficient to shift liability from Aereo onto the user. This involves questions of contract and tort rather than copyright.

Indeed, tort law provides a diverse array of doctrines that can be called upon to answer who a “performer” is: ideas such as proximate causation, agency, and perhaps even bailment.

The answer does not, however, come from the Copyright Act.

What is the import of this claim? For one, it means that it is not necessary to torture the text of the Copyright Act to reach a conclusion that it is a user of Aereo rather than Aereo who is performing a work. The text of the Transmit Clause is straightfoward: one performs a work publicly if they transmit a performance of the work to the public, by means of any device or process. Only the most baffling interpretations can make “by means of any device or process” mean “by means of any device or process… except 1,000 antennas” or “by means of any device or process… except 10,000 antennas.”

It also means the legislative history of the public performance provisions in the 1976 Copyright Act are of no help. In fact, the legislative history compels the conclusion that the Copyright Act is the wrong place to turn to for answering who the “performer” is.

In 1965, the Register of Copyrights released a report on the current version of the Copyright Act, one in which the public performance provisions were substantially the same as those that would eventually become law. In the report, the Register noted that Congress “adopted the approach, like that taken in foreign laws, of stating the public performance right in broad terms in section 106, and of providing the specific exemptions for educational and other nonprofit uses in section 109.”1

It signals this breadth through its explanations of the definition for performances in the draft revision:

A work may be performed ”either directly or by means of any device or process,” and these devices or processes would encompass sound or visual reproduction equipment of all kinds, amplifying systems, radio and television transmitting and receiving apparatus, electronic retrieval devices, and a host of other techniques, undoubtedly including some not invented yet.2

It goes on to state that the language adopted was intended to cover all commercial providers of copyrighted broadcasts except for explicitly provided exceptions:

The bill does not exempt community antennas and other commercial systems that retransmit broadcasts of copyrighted material to the public. It would, however, under section 109(5), exempt operators of nonprofit “boosters” or “translators” who retransmit, “without altering or adding to the content of the original transmission, without any purpose of direct or indirect commercial advantage, and without charge to the recipients.”

So there is no mistake, the report explains just how broadly the language of the Copyright Act should be read, including the note that a specific exception for “common carriers” was considered and rejected.

We have therefore adopted the phrase “transmit or otherwise communicate * * * to the public” to cover every method by which the images or sounds comprising a performance or exhibition can be picked up and conveyed to the public. This concept would include, among other things: direct amplification (as over a loud speaker system); transmission over wires or other connections; wireless transmission by the originating transmitter and by any other transmitter who picks up his signals and passes them on; and further transmission, over wires, of a wireless transmission. Likewise, although probably also covered under clause (A), it would include performances in public places resulting from the playing of records on jukeboxes and other sound reproducing equipment and from the reception of wired or wireless transmissions.

In effect, the definition is intended to cover every transmission, retransmission, or other communication of a performance which reaches “the public.” The 1964 bill contained language exempting transmissions by someone acting, “as a common carrier,” the thought being that a corporation merely leasing wires or equipment for the intermediate transmission of signals to other transmitters, rather than to the public, should not be subjected to liability to the copyright owner. It was pointed out that the concept of “common carrier” might be extended unjustifiably to some commercial transmitters to the public, and we have therefore dropped this exception as ill-advised. We are convinced that purely intermediate transmissions should be exempt, but that an express exemption is not necessary to exclude them.

There is further evidence that Congress did not intend for the language of the public performance provisions to explain the distinction between cable services and antenna rental services. For example, following the district court’s decision in United Artists Television v. Fortnightly Corporation,3 which found the operator of a community antenna television service liable for publicly performing copyrighted works, a bill was introduced that would establish three categories of liability: CATV operators would not be liable for providing access to broadcasts within the broadcast area. Liability would attach where a CATV operator provided access to distant broadcast signals, and a reasonable license fee would be required where CATV services brought outside signals when local viewers were not “adequately served” by three major networks. CATV operators rejected this approach.4

The Supreme Court eventually reversed in Fortnightly, holding that a CATV operator does not perform television broadcasts; instead, its “basic function the equipment serves is little different from that served by the equipment generally furnished by a television viewer.”5 So we know that the idea of a distinction between a service performing a work publicly and a service allowing an individual to perform a work privately was on Congress’s radar during the revision process. But it declined to insert any language that could potentially mediate that distinction. Rather, the public performance provisions would include all third parties, and “cover every transmission, retransmission, or other communication of a performance which reaches ”the public,” no matter how closely they resemble a mere provider of equipment for a user.6

To say otherwise, to suggest that language in the Copyright Act itself guides us to distinguish between a transmitter of performances and a mere passive device or process is supported by zero evidence. To say, after this clear and convincing evidence, that Congress drafted statutory language that would distinguish between companies performing a work to the public and companies merely providing facilities allowing members of the public to perform a work to themselves is untenable. Nothing in the final text of the provisions indicates that Congress intended this distinction, and nothing in the legislative history suggests that it buried such a distinction in the language, to await a clever lawyer to tease it out.

And this isn’t the case that Congress wasn’t aware of an argument that a service could argue it is just doing what users could otherwise do themselves. It heard that argument repeatedly.

Congress heard the argument that CATV equipment was “not owned by the CATV system but by the system’s individual subscribers.”7 Congress heard CATV operators argue that “Because CATV systems are functionally identical to rooftop antennas on private homes, broadcasters deserve no greater exclusivity than they would obtain if everyone chose to install a private rooftop antenna adequate to receive the available signals.”8 Congress heard that “CATV is not a passive rooftop or ‘rabbit-ear’ antenna.”9 CATV proponents argued to Congress that CATV is simply an “aid in reception of television broadcast signals”.10

And, driving home the point that this is not an issue of the Copyright Act being inadequate to deal with current technological challenges, the president of the NCTA argued nearly half a century ago that “The conventional way in which a viewer obtains programs is by buying his own set, installing his own antenna, and then enjoying the program. But the viewer may resort to other methods to enjoy his local station. If, instead of buying his set outright, the viewer chose to rent it from a company which agreed to keep it in good condition, there would be no reason in policy or logic why this act should bring into play different copyright consequences from those which obtain when the viewer owns his set outright.”11

Congress explicitly rejected—decades ago—the arguments Aereo and its supporters are currently making. As noted above, it ultimately settled on a broad statute that does not make the distinctions CATV proponents sought.

But, before consumer electronic advocates’ heads explode, I want to reiterate that this does not mean Aereo or similar services are necessarily liable for copyright infringement. It merely means that any possible salvation does not lie in the Copyright Act but in some other legal doctrine, whether through contract, tort, or otherwise.

General copyright principles would certainly inform the application of these legal doctrines, and the statutory text may serve as a guide, but the language itself does not answer the question of who is the “performer”.

So the Supreme Court’s job is clear. Assuming that Aereo is the performer, since that issue is not in front of the Court,12 it plainly is performing “to the public” because it is transmitting works using any device or process to individual subscribers that it has a public relationship with.

(I personally think proximate causation can play a critical role in the distinction discussed here and hope to explore this more fully in a future post.)

Thanks to Devlin Hartline for valuable feedback during the drafting process!

Footnotes

  1. U.S. Copyright Office, Supplementary Register’s Report on the General Revision of the U.S. Copyright Law (1965), []
  2. Id. []
  3. 255 F. Supp. 177 (SDNY 1966). []
  4. Judith E. Ciani, CATV and Copyright Infringement, 10 B.C.L. Rev. 459, 471-72 (1969). []
  5. Fortnightly Corp. v. United Artists Television, Inc., 392 US 390 (1968). []
  6. Supplementary Report, supra. []
  7. Statement of Louis Nizer, representing producers and distributors of copyrighted television film programs, Copyright Law Revision, Hearings before Subcommittee No. 3, pg. 1359, Serial No. 8 (1966). []
  8. Id. at 1298. []
  9. Statement of Arthur B. Krim, Hearings before Senate Judiciary IP Subcommittee on S.1006 at 170 (1966). []
  10. Fn. 7 at 1330. []
  11. Id. at 103. []
  12. And was not foreclosed by Cablevision in 2008. Cartoon Network LP v. CSC Holdings, 536 F. 3d 121, 134 (2nd Cir. 2008) (“We need not address Cablevision’s” argument “that (1) the RS-DVR customer, rather than Cablevision, does the transmitting and thus the performing”). []

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