An invitation to free internet advocates to join us — Following the sentencing of two Vietnamese songwriters for “spreading propaganda against the state” through their songs, the Copyright Alliance has urged others to call for their release. “We encourage artists and creators, as well as anyone who has shared a link, signed a petition, or blacked out a website in support of internet freedom, to exercise your right to free speech and share the plight of Vo Minh Tri and Tran Vu Anh Binh with your friends, your community and your elected officials.”

Going Memeless – Do civil rights abuses have to be hip to get attention? — This is the question posed by David Newhoff regarding the above convictions. “Almost every day, I encounter some proclamation that democratic governments are trying to stifle free speech, and the claim usually comes from some middle-class American or European whose rights are more than intact.  But it really does seem that when we have clear evidence of exactly this kind of oppression, there has to be a hook before it can get much attention.”

I Loved the Whole ‘Information Is Free’ Thing. Until It Was My Book Getting Stolen… — Duke professer Dan Ariely discusses his personal conversion of his views on illegal downloading.

Maintaining Transparency — In response to concerns raised over the methodology of the Copyright Alert System’s process for identifying alleged infringement over p2p networks, the Center for Copyright Infringement, responsible for implementing the System, has released a copy of the independent expert report assessing its system.

Sorry, Internet, SOPA had zero effect on election day results — Digital Trends’ Andrew Couts reports that “Blockage of the Stop Online Piracy Act (SOPA) may have served as the Web’s defining political moment of the year, but the anti-SOPA movement appears to have had little to no effect on Congressional elections, with 21 out of 24 SOPA supporters hanging on to their seats.”

Workspace: Cherry Chevapravatdumrong — Screenwriter John August has a wonderful recurring series on how and where other screenwriters get their jobs done. Here, he talks with Family Guy writer Cherry Chevapravatdumrong, who confesses “I’m fine if there’s an actual deadline, I can totally kick it into high gear then, but if there isn’t one staring me right in the face, yikes. This is probably also a problem with writing at home most of the time…it’s so easy to be like ‘Oh, there’s the TV.’ ‘Oh, there’s the kitchen where the snacks live.’ ‘Oh wow, what if I turned on some music and had a one-woman dance party for the next hour?’”

Inside the Music of ‘Nashville’ — I’ve been watching ABC’s new drama Nashville since it premiered and have been pleasantly surprised (Connie Britton, what more could you want?) Rolling Stone looks behind the scenes at Nashville‘s music, a major component of the show, guided by the more than capable hands of executive music producer T Bone Burnett.

NAACP calls Pandora-backed legislation unfair — According to CNet’s Greg Sandoval, “In a letter to Congress, the civil rights group asks that lawmakers vote no on legislation designed to cut the rates paid by Pandora and other Webcasters to artists — some of whom are elderly Motown performers who weren’t compensated fairly for their original work.”

Megaupload Faces Mega Problems Before Relaunch — Kim Dotcom wants you to keep paying attention to him.

If you get confused reading about Kirtsaeng v John Wiley & Sons, the Supreme Court case argued last week involving copyright’s importation provisions and the first sale doctrine, you are not alone. Resolving the issue requires wading through a morass of interdependent statutory provisions. Add previous Supreme Court precedent, and you end up with, in the words of Chief Justice Roberts, “an awfully difficult maze.”

I would suggest that there is an easy way out of this difficult maze (though as explained below, unlikely to be adopted by the Supreme Court in its eventual opinion): interpret “import” as independent from a sale or other disposition. (I briefly discussed this idea in More on Kirtsaeng v John Wiley & Sons.)

The first sale doctrine, codified in 17 USC § 109(a), gives the owner of a particular copy the ability “to sell or otherwise dispose of the possession of that copy.” The argument in Kirtsaeng treats this language as including the ability to import a particular copy, so how this language interacts with § 602′s prohibition on importation of copies “that have been acquired outside the United States” turns on how the Supreme Court chooses to interpret the phrase “lawfully made under this title” in the first sale doctrine.

But if the act of importation is distinct from the act of selling or otherwise disposing, than everything lines up neatly. This interpretation offers a number of advantages.

First, it is consistent with the plain language of the relevant statutory provisions. Section 602 applies to both nonpiratical and piratical copies acquired outside the US. Interpreting the first sale doctrine to include overseas sales of copies made overseas would render much of § 602 superfluous and its exceptions — listed in 17 USC § 602(a)(3) — meaningless.

Second, it is consistent with the legislative intent of both the first sale doctrine and the importation prohibition. The House Report on the Copyright Act of 1976, to give just one example, clearly states that:

The second situation covered by section 602 is that where the copies or phonorecords were lawfully made but their distribution in the United States would infringe the U.S. copyright owner’s exclusive rights. As already said, the mere act of importation in this situation would constitute an act of infringement and could be enjoined.1

Third, this interpretation would allay concerns raised by Kirtsaeng and several amici that “a copyright owner could make copies abroad, import them into the United States and sell them subject to onerous restrictions on resale, and then obtain copyright remedies from buyers who disregard those restrictions.” But if it is only the act of unauthorized importation that triggers § 602, then an authorized importation would eliminate any liability for downstream users and resellers.

Is Importation a disposition?

The argument that the act of importation should be treated independently of the acts protected by the first sale doctrine is not in front of the Supreme Court in Kirtsaeng. However, it was made in 1998, when the Court heard Quality King v L’anza, a case involving similar issues concerning the first sale doctrine and § 602.

It was primarily raised by the United States, acting as amicus curiae. In its brief, the US argued:

The first sale doctrine does not divest the copyright owner of its right to prevent unauthorized importations. Petitioner’s argument proceeds from the assumption that a first sale abroad completely exhausts a copyright owner’s distribution right. Nothing in Section 109(a)’s text, however, suggests that the limitation on rights effected by a first sale is coextensive with the entire distribution right defined by Section 106(3). To the contrary, Section 109(a) allows the owner of a copy only “to sell or otherwise dispose of the possession of that copy” without the authority of the copyright owner. Because the “mere act of importation”  regulated by Section 602(a) does not entail a sale or disposal of possession by the owner of a copy, the first sale doctrine offers petitioner no safe harbor.

Among the other amici who filed briefs in Quality King, various trade associations — the RIAA, MPAA, Association of American Publishers, American Film Marketing Association, Business Software Alliance, Interactive Digital Software Association, National Music Publishers’ Association, and International Intellectual Property Alliance — also argued this point (coincidentally, this brief was authored by Theodore Olson, who argued on behalf of John Wiley & Sons last Monday):

The language of section 109(a) and the structure of the Copyright Act establish that the first sale doctrine is not a defense to unauthorized acts of importation.

First, section 109 by its terms only allows an owner of a particular tangible copy of a copyrighted work to “sell or otherwise dispose of the possession of the copy or phonorecord.” It does not grant the owner of that copy the right to import the copy into the United States. Importation is distinct from sale or disposition. As noted, importation entails only the carrying of copies or goods across borders, and does not, by definition, necessarily involve sale or transfer of possession.

If importation were not distinct from sale or distribution, there would be no need for section 602: Unauthorized sale or other disposition of possession of imported copies in the United States would be, and is, actionable by a copyright owner under section 106(3). Moreover, there would be no need for the various exceptions to section 602(a) liability expressly set forth by Congress. In particular, there would be no need for the exception to section 602(a) which allows unauthorized importation of copies “forming part of [a] person’s personal baggage” if such copies are “for the private use of the importer and not for distribution.” Importation of a few copies “for private use and not for distribution” cannot, by definition, constitute a distribution “to the public.” If importation were a form of sale or other distribution, or otherwise limited by the first sale doctrine, the “private use” exception to the importation right would be wholly superfluous.

Quality King, the distributor seeking protection under the first sale doctrine, responded to these arguments in its reply brief, arguing that the meaning of disposition should not be read so narrowly:

The terms of Section 109(a) are quite broad: they allow any owner of a copy made lawfully under U.S. copyright law (and it is undisputed that Quality King is such a person) to sell “or otherwise dispose of the possession” of that copy. As this Court has noted, “‘the expression ‘dispose of’ is very broad, and signifies more than ‘to sell.’ Selling is but one mode of disposing of property.’” And as even the Government notes, the term “dispose of” means, among other things, “to transfer,” –a meaning that is plainly broad enough to include the act of transporting from one country to another. Section 109(a) was plainly intended to immunize more activities than those listed in Section 106(3) itself, and importation is a principal example of such an activity. A disposal of possession of any article could include the article’s transport, delivery, export or import, and there is no exception to Section 109(a) when an importation is part of the transaction by which a lawfully obtained article is “disposed of.” Moreover, very few situations covered by Section 602(a) would not entail selling or disposing of the possession of the imported item–whether to a shipper or the ultimate recipient–and there is no allegation that this case presents such a situation.

During oral arguments in front of the Supreme Court, the question of whether importation was included within the scope of otherwise disposing came up only briefly, in the following exchange:

[JUSTICE GINSBURG]: There’s one other language point that the Government makes in addition to its 501 argument.

It refers to the later provision, the one in the… what is it, the chip, the 905 and 906, and that 906 includes… 906(b) refers not simply to otherwise dispose, but includes the word, import, and the argument is, and when Congress… Congress knows there’s a difference between importing and otherwise disposing.

In the end, Quality King appears to have convinced the Court. It summarily rejected the argument that importation is not a form of disposition in its opinion:

Whether viewed from the standpoint of the importer or from that of the copyright holder, the textual argument advanced by the Solicitor General—that the act of “importation” is neither a sale nor a disposal of a copy under § 109(a)—is unpersuasive. Strictly speaking, an importer could, of course, carry merchandise from one country to another without surrendering custody of it. In a typical commercial transaction, however, the shipper transfers “possession, custody, control and title to the products” to a different person, and L’anza assumes that petitioner’s importation of the L’anza shipments included such a transfer. An ordinary interpretation of the statement that a person is entitled “to sell or otherwise dispose of the possession” of an item surely includes the right to ship it to another person in another country.

If you read this carefully, you should be able to quickly spot the flaws in the Court’s logic. The act of importation is not a disposition, but “in a typical commercial transaction” there is a disposition, therefore the act of importation is a disposition. At the very least, the Court’s conclusion seems an awkward shoehorning of one act into the definition of another.

The Better Definition?

Reading “importation” as distinct from “otherwise dispose” seems the better interpretation for several reasons.

First, the Supreme Court’s interpretation renders the definition of disposition in the first sale doctrine inconsistent with other provisions in the Copyright Act. As Justice Ginsburg points out, § 906(b), dealing with limitations on exclusive rights of semiconductor chip products, reads, in pertinent part, “the owner of a particular semiconductor chip product made by the owner of the mask work … may import, distribute, or otherwise dispose of or use, but not reproduce, that particular semiconductor chip product.” Like the language of the first sale doctrine, § 906 includes to “otherwise dispose”; however, it adds an explicit reference to importation. Under the Supreme Court’s interpretation, this language is superfluous and redundant.

Likewise, provisions outside the Copyright Act explicitly refer to importation alongside disposition. For example, 18 USC § 2320, dealing with trafficking in counterfeit goods or services, defines “trafficking” as “to transport, transfer, or otherwise dispose of, to another, for purposes of commercial advantage or private financial gain, or to make, import, export, obtain control of, or possess, with intent to so transport, transfer, or otherwise dispose of.”

I think this shows, as Ginsburg remarked, that “Congress knows there’s a difference between importing and otherwise disposing.” The Supreme Court’s decision in Quality King, however, rendered the first sale’s definition of otherwise disposing an anomaly — it includes “importation” while virtually every other instance mentions importation separately from otherwise disposing.

Finally, while treating importation as synonymous with otherwise disposing might be supported through linguistic gymnastics, treating the two independently produces the better result. The former leads us into the “difficult maze” the Court currently finds itself in; the latter provides a consistent and felicitous operation of all relevant statutory provisions.

Precedent

As noted above, this argument has not been made by any of the parties in Kirtsaeng v John Wiley & Sons. And it’s doubtful it would have been successful even if it had been made, as it would require overturning, at least in part, Quality King — a unanimous decision. While the Supreme Court can overturn its own prior rulings, it is rare.2

However, while Quality King was a unanimous decision, it’s difficult to find many fans of it. Take a look at the following exchange during Kirtsaeng oral arguments:

JUSTICE KAGAN: Mr. Rosenkranz, there is that passage in Quality King, which is, I think it’s fair to say, unfortunate to your position. Is your basic view of that passage that it was simply ill-considered dicta that we should ignore?

MR. ROSENKRANZ: To put it bluntly, yes.

Interestingly, Justice Sotomayor has broached the topic of overturning Quality King not only during arguments for Kirtsaeng, but also during arguments for Costco v Omega in 2010, which concerned essentially the same issue as here.

Here is Justice Sotomayor during Costco oral arguments:

JUSTICE SOTOMAYOR: Then you are trying to rewrite Quality King. Now you are saying that the entire premise of Quality King is wrong.

MR. PANNER: Not at all, Your Honor, because in Quality King, what the Court held was that a copy that is made in the United States is lawfully made under this title.

And during oral arguments for Kirtsaeng:

JUSTICE SOTOMAYOR: So you get what you wanted anyway. That’s really the bottom line. We undo Quality King, except that the price is that people have to ship their manufacturing abroad.

MR. STEWART: Well, we’re not urging the Court to take that course, but yes, that would have been one way to accomplish the same objective.

I wouldn’t recommend reading too much into these questions — finding meaning in the questions asked during oral arguments is like reading tea leaves — but it is interesting to note that the thought of revisiting Quality King seems to at least have been on Justice Sotomayor’s mind for the past two years.

Footnotes

  1. H.R. No. 94-1476, 169 (1976). []
  2. See Planned Parenthood v Casey, 505 US 833, 854-55 (1992), discussing four factors that should guide the Court when it is deciding whether to overturn a prior holding. []

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

On its face, the Copyright Act provides that copyright owners actually have two separate sets of rights. Section 106 of the Act gives copyright owners the exclusive rights “to do” and “to authorize” certain listed activities with their copyrighted works, including creating reproductions, making adaptations, distributing copies to the public, publicly performing them, and publicly displaying them.1 It’s clear enough what it means “to do” any of those listed activities, but what does it mean “to authorize” them? Moreover, does merely authorizing someone else to infringe lead to liability even if that party doesn’t actually infringe?

Section 501 of the Act provides that “[a]nyone who violates any of the exclusive rights of the copyright owner” is an infringer.2 It matters not whether they violated the exclusive right “to do” or “to authorize” the listed activity. Either way it’s infringement and they’re an infringer, subject to the full range of remedies under the Act. Nonetheless, as the Supreme Court has noted, distinguishing between different types of infringement is not always easy since “the lines between direct infringement, contributory infringement, and vicarious liability are not clearly drawn.”3

Under the 1909 Copyright Act, courts “came to mixed conclusions about how much involvement in infringing was necessary to subject a defendant to liability for an infringement.”4 The doctrinal disarray was not helped by the fact that the previous Act “did not specifically state that the copyright holder had the exclusive right to authorize use” of the copyrighted work.5 But that all changed with the addition of the right “to authorize” in the 1976 Copyright Act, which “was intended to remove the confusion surrounding contributory and vicarious infringement.”6

But can merely authorizing a listed activity itself be infringement without more? In other words, can one who authorizes an infringement be liable even if that authorized infringement never occurs? That depends on whether the exclusive right “to authorize” is seen as an independent right that stands on its own. The relevant House Report has surprisingly little to say about the newly-minted right “to authorize,” though it does suggest that the right doesn’t stand alone:

The exclusive rights accorded to a copyright owner under section 106 are ‘to do and to authorize‘ any of the activities specified in the five numbered clauses. Use of the phrase ‘to authorize’ is intended to avoid any questions as to the liability of contributory infringers. For example, a person who lawfully acquires an authorized copy of a motion picture would be an infringer if he or she engages in the business of renting it to others for purposes of unauthorized public performance.7

The reason it matters is because direct infringers are always liable to the copyright owner, while indirect infringers are only liable if the authorized infringement actually occurs.8 Thus, if the exclusive right “to authorize” is in fact merely a codification of existing secondary liability doctrines, then one who authorizes an infringement has no liability unless the party authorized actually infringes. On the other hand, if the exclusive right “to authorize” stands alone, then mere authorization of an infringement is itself infringement—even if the party authorized doesn’t actually infringe.

In his influential copyright treatise, Nimmer posits that a “far more perplexing question is whether direct infringement must even exist in order for third-party liability to arise.”9 He thinks that reading the Act to create liability for mere authorization without actual infringement is “overly facile,” and that “to authorize” should be seen as “simply a convenient peg on which Congress chose to hang the antecedent jurisprudence of third-party liability.”10 He concludes that “the rule should generally prevail that third party liability, as its name implies, may exist only when direct liability, i.e., infringement, is present.”11

A few district courts have disagreed with Nimmer and found that the right “to authorize” stands alone. For example, one district court stated that “Congress created a new form of ‘direct’ infringement” when the Act was amended to add the right “to authorize.”12 Another district court stated that “tying the authorization right solely to a claim of justiciable contributory infringement appears contrary both to well-reasoned precedent, statutory text, and legislative history.”13 That court held that merely authorizing infringing acts could itself constitute direct infringement.

A different district court followed suit and stated that Section 106 should be read literally to create an independent, exclusive right “to authorize” use of a copyrighted work.14 That court held that “mere authorization . . . constitutes direct infringement and is actionable under United States Copyright Law.”15 And in yet another district court, it was held that infringement commences at the moment that authorization occurs, because “the right ‘to authorize’ infringing acts” was itself “a right newly recognized by Congress.”16 But these four district courts represent the minority view, and no appellate court that I could find has ever agreed.

In fact, the appellate courts that have addressed the issue have instead agreed with Nimmer, as have the district courts that have cited them. In a leading case, the Ninth Circuit stated that “the addition of the words ‘to authorize’ in the 1976 Act appears best understood as merely clarifying that the Act contemplates liability for contributory infringement . . . .”17 The court of appeals quoted Nimmer for the proposition that Congress was merely codifying the preexisting “jurisprudence of third party liability.”18 Accordingly, the appellate court found that the authorization right is only implicated in cases of contributory infringement, i.e., where there is also direct infringement.

The First Circuit took a similar tack while addressing the issue of whether authorization is infringement “where there is no adequate proof that the third party ever undertook an infringing act.”19 The court of appeals noted that “most (perhaps all) courts that have considered the question have taken the view that a listed infringing act (beyond authorization) is required for a claim.”20 While acknowledging that “the better bare-language reading would allow” a claim for mere authorization, the appellate court nonetheless held that there must be proof “of an infringing act after the authorization.”21

The district court in the famous Jammie Thomas-Rasset case considered whether merely “making available” song files in a peer-to-peer share folder violated plaintiffs’ exclusive right “to authorize” distributions. (This was in addition to its consideration of whether Thomas-Rasset violated plaintiffs’ exclusive right “to do” distributions, as I wrote about previously.) After surveying the statutory text, case law, and legislative history, the district court concluded that “the authorization clause merely provides a statutory foundation for secondary liability, not a means of expanding the scope of direct infringement liability.”22 Moreover, said the district court, “the authorization right . . . only applies if there is an actual dissemination.”23

Bringing us back to the Copyright Act, it’s safe to say that while the plain wording of Section 106 appears to create an independent, exclusive right “to authorize” the listed activities, the majority view is that the right “to authorize” doesn’t stand alone and that one who authorizes an infringement is only liable if the authorized infringement actually takes place.

Follow me on Twitter: @devlinhartline

Footnotes

  1. 17 U.S.C.A. § 106 (West 2012) (“the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.”). []
  2. 17 U.S.C.A. § 501 (West 2012). []
  3. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 435, n.17 (1984) (internal quotations omitted). []
  4. Peter Starr Prod. Co. v. Twin Cont’l Films, Inc., 783 F.2d 1440, 1443 (9th Cir. 1986). []
  5. Id. (emphasis in original). []
  6. Id. []
  7. H.R. REP. 94-1476, 61. []
  8. See, e.g., 1 Goldstein, Copyright: Principles, Law and Practice § 6.1, at 705 (1989) (“It is definitional that, for a defendant to be held contributorily . . . liable, a direct infringement must have occurred.”). []
  9. 3-12 Nimmer on Copyright § 12.04[D][1]. []
  10. Id. []
  11. Id. []
  12. ITSI T.V. Productions, Inc. v. California Auth. of Racing Fairs, 785 F.Supp. 854, 860 (E.D. Cal. 1992). []
  13. Curb v. MCA Records, Inc., 898 F. Supp. 586, 594 (M.D. Tenn. 1995). []
  14. Expediters Int’l of Washington, Inc. v. Direct Line Cargo Mgmt. Services, Inc., 995 F. Supp. 468, 476 (D.N.J. 1998). []
  15. Id. at 477. []
  16. Thomas v. Pansy Ellen Products, Inc., 672 F. Supp. 237, 241 (W.D.N.C. 1987). []
  17. Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088, 1093 (9th Cir. 1994). []
  18. Id. (internal quotations and brackets omitted). []
  19. Venegas-Hernandez v. ACEMLA, 424 F.3d 50, 57 (1st Cir. 2005). []
  20. Id. at 57. []
  21. Id. at 59. []
  22. Capitol Records, Inc. v. Thomas, 579 F.Supp.2d 1210, 1221 (D. Minn. 2008). []
  23. Id. at 1223. []

Last week, the Supreme Court held oral arguments in Kirtsaeng v John Wiley & Sons. You can read a transcript of the arguments or listen to audio of the arguments.

The US Government, through the Solicitor General, is participating as amicus curiae, not uncommon when a Supreme Court case involves a question of statutory interpretation. During arguments, Deputy Solicitor General Malcolm Stewart started by saying:

I would like to discuss — begin by discussing our Bobbs-Merrill argument, because it’s a part of our brief that’s different from both the parties’ submissions, and I do think it’s very important to understanding the practical implications of the Court’s decision.

The Bobbs-Merrill argument that the US advanced has been described as a “middle-ground” between Kirtsaeng and Wiley’s positions, though at least a few observers have characterized it as “odd.” Many have also commented that this argument did not seem to land during arguments, being greeted by skepticism from the Justices.

The actual argument made by the US is a relatively minor one, discussed in just three paragraphs in its 31 page brief. However, I think it deserves some attention, because it may have some merit.

The Government’s Argument

Kirtsaeng involves nonpiratical copyrighted works — as opposed to infringing works — manufactured overseas. Section 602(a)(1) of the Copyright Act prohibits the “[i]mportation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States.”

Petitioner Supap Kirtsaeng was sued by John Wiley & Sons under this section but argued in the lower court that the first sale doctrine, codified in 17 USC § 109, allows such conduct. Section 109(a) provides that “the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.”

The issue in front of the Supreme Court is primarily focused on the meaning of the phrase “lawfully made under this title” — Kirtsaeng argues that this means any copy that would be lawful had US law been applied (thus allowing importation of nonpiratical works manufactured overseas) while John Wiley & Sons argues that it only includes works manufactured in the US.

Virtually every court in the past 30 years has held that the first sale doctrine is not available as a defense when works manufactured overseas are imported into the US without authorization. However, Kirtsaeng has raised several concerns with this interpretation on appeal.

In its brief, the US addressed one such concern: that, if you interpret the Copyright Act to say the first sale doctrine does not allow importation of nonpiratical copies, it would also mean the first sale doctrine never applies to copies made outside the US, allowing copyright owners to control resale markets and all downstream sales.

Petitioner’s argument assumes that, if Section 109(a) is inapplicable, a copyright owner could make copies abroad, import them into the United States and sell them subject to onerous restrictions on resale, and then obtain copyright remedies from buyers who disregard those restrictions.

The US argues that this conclusion does not follow its (and John Wiley’s) interpretation of the statutes. Section 109 explicitly only applies to copies lawfully made within the US, allowing copyright owners to prohibit the importation of copies lawfully acquired overseas. But, says the US, this interpretation does not expand a copyright owner’s distribution right in other respects.

Thus, when a copyright holder has authorized goods to be imported into the United States and/or sold within this country, applying a “first sale” or “exhaustion” principle as an implicit limitation on the copyright holder’s exclusive right to “distribute” would be consistent with the current text of the Copyright Act and faithful to the doctrine’s historical underpinnings. (Emphasis added.)

To get to this point, the US relies on the 1908 Bobbs-Merrill case, one of the earliest applications of the “first sale doctrine.” Though Bobbs-Merrill was framed as an interpretation of the Copyright Act as it existed then, the US argues that it relied on common-law principles to reach its result. Foremost among these principles is the deep suspicion of restraints on alienability of property.

At the time, the Copyright Act gave a copyright owner the sole right to “vend” a work and did not explicitly contain a first sale doctrine. The Bobbs-Merrill Court nevertheless held that the right to “vend” a work did not extend past the first sale of a work.

True, the statute also secures, to make this right of multiplication effectual, the sole right to vend copies of the book, the production of the author’s thought and conception. The owner of the copyright in this case did sell copies of the book in quantities and at a price satisfactory to it. It has exercised the right to vend. What the complainant contends for embraces not only the right to sell the copies, but to qualify the title of a future purchaser by the reservation of the right to have the remedies of the statute against an infringer because of the printed notice of its purpose so to do unless the purchaser sells at a price fixed in the notice. To add to the right of exclusive sale the authority to control all future retail sales, by a notice that such sales must be made at a fixed sum, would give a right not included in the terms of the statute, and, in our view, extend its operation, by construction, beyond its meaning, when interpreted with a view to ascertaining the legislative intent in its enactment.

This is the implicit limitation that the US argues survives today. Using the same reasoning as Bobbs-Merrill, to add to the right of importation the authority to control all future retail sales “would give a right not included in the terms of the statute.”

Deputy Solicitor General Stewart made clear the import of this argument last Monday:

JUSTICE KAGAN: So Mr. Stewart, if I understand your argument, both here and in Quality King you want the copyright holder to have some control over importation, but at the same time you don’t want the copyright holder to have control over all downstream sales.

MR. STEWART: That’s correct.

JUSTICE KAGAN: And that’s what your Bobbs-Merrill argument is designed to do. It’s designed to prevent that.

MR. STEWART: That’s correct.

However, Justice Alito first expressed skepticism of this argument, followed by Chief Justice Roberts.

CHIEF JUSTICE ROBERTS: That’s an awfully difficult maze for somebody to — to get through. You have to start with the difficulty of the language here, and then you have to proceed and put the Quality King gloss over it; and, when you finally get to that point, you say, well, now you’ve got to read Bobbs-Merrill and figure out how the common law governs all that.

Justice Roberts is correct in noting the awfully difficult maze here (I would place the blame mostly on the Quality King decision), but most of the difficulty would arise in crafting an opinion that incorporates the Government’s argument. Actual application would be fairly straight-forward.

Under the US approach, copyright owners could engage in the type of market segmentation that § 602 permits and block unauthorized importation of nonpiratical goods manufactured overseas. However, if a copyright owner were to try to extend its right under § 602 to control downstream uses and resales of works once they were in the US, Bobbs-Merrill would kick in.

It may be a “difficult maze”, but it’s also one of the few ways out presented to the Supreme Court.

Why Cory Doctorow’s “Pirate Cinema” Makes Me Root for Big Content — A fabulous read from a self-ascribed fan of remix culture who finds Doctorow’s latest anti-copyright screed so over-the-top that it turns him off. “That’s the gaping black hole at the center of this book: any sort of acknowledgement that copyright law is IMPORTANT. What he dismisses as ‘greed,’ the entertainment industry would certainly defend as “basic fairness.”

Google News wars are here again: Schmidt vs France on ‘news tax’ — In response to a French proposal to copy a recent German law requiring a license to excerpt material online, Google has stated that such a levy would “threaten its very existence.” Hyperbole?

Have EU orphans found a caring home? — IPKat reports on the recent Orphan Works Directive from the EU. Some good preliminary analysis from the Directive, which is directed at certain permitted uses of orphan works.

Kirtsaeng v. John Wiley & Sons, Inc. — Sandra Aistars of the Copyright Alliance shares some thoughts on the first sale case which the Supreme Court heard this week. “If you are concerned that as a result of a copyright case the Supreme Court is hearing tomorrow, Kirtsaeng v. Wiley, you will be frisked at the border for foreign newspapers and magazines when you return from your next trip abroad, that libraries will stop lending books, and that discounted overstock items will no longer be available from big box stores, read on.”

On Letting Foxes Mind Chicken Coops — David Newhoff continues to post thought-provoking articles on his new site, Illusion of More. “So far, it looks a lot like there isn’t a piece of legislation, a trade agreement, a civil action, or any other policy initiative that is not going to be labeled a ‘threat to freedom’ by [internet] companies, their lobbyists, and their PR groups. The first sane question anyone should ask when any industry makes such a claim is, ‘Do you mean a threat to my freedom or your cash flow?’”

CCI Recommits to Independent Evaluation of Content Methodology — The Center for Copyright Information, responsible for implementing the Copyright Alert System, was in the news this week because of the expert they retained for evaluating their system. “Recent reports that a former employee of Stroz Friedberg lobbied several years ago on behalf of RIAA on matters unrelated to CCI have raised questions about the impartiality of Stroz Friedberg,” says the CCI, and in response, the organization will be retaining a second, independent expert to evaluate the system’s methodology.

Future of Music Coalition Summit 2012 — FOMC’s annual conference is November 13th and features an interesting lineup of panels and speakers, including friends of the blog David Lowery and Chris Ruen. Check out the site for links to a livestream of the event.

NYC Conference: Earlybird Extended Until Next Monday — Another upcoming event that looks interesting, the Copyright and Technology NYC 2012 conference in December, is still open for registration. Because of this weeks weather, the deadline has been extended to November 5th.

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

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

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

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

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

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

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

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

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

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

Copyrightability

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

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

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

Design inseparable from useful article

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

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

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

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

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

Fair use

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

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

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

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

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

Copyright misuse

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

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

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

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

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

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

Footnotes

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

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

    No first sale defense raised

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

    []

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

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

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

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

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

Aereo merely provides TV reception equipment for personal use.

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

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

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

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

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

Aereo should win because of copyright’s technological neutrality.

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

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

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

Aereo assists in cord-cutting.

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

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

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

Aereo is innovative.

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

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

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

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

Aereo is furthering the public interest.

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

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

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

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

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

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

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

Footnotes

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

On another occasion, the Supreme Court noted

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

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

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

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

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

“One of the great fallacies of modern copyright jurisprudence”

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

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

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

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

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

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

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

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

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

Echos from 1909

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Footnotes

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

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

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

How does one make sense of all of this?

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

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

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

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

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

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

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

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

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

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

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

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

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