Fred von Lohmann, former staff attorney of the EFF and currently Legal Director of Copyright at Google, has been presenting a talk recently on “Revising the Copyright Act for the 21st Century.” While the views Lohmann expresses in the talk may not necessarily reflect the views of Google, it is reasonable to assume that there is close alignment.

The talk is motivated by review efforts that have begun in earnest by various government entities in recent months: the House Judiciary IP Subcommittee, the Copyright Office, and the Internet Policy Task Force in the Department of Commerce. In it, Lohmann makes a range of points about the current state of copyright and its future; while I haven’t been able to find a video or transcript of the talk, the Yale Information Society Project (among others) livetweeted an October 15th presentation, which seems to be fairly comprehensive.

Lohmann calls for an aggressive reshaping of copyright law, not only domestically but internationally as well. Many of the fundamental changes would clearly benefit large online service providers like Lohmann’s employer; very little is said about ensuring that individual creators have meaningful rights that enable them to build sustainable creative careers.

One of Lohmann’s major points is that “Copyright is badly ‘fit for purpose.’” The law “assumes that full rights apply to all works, even given the sheer quantity of creativity enabled by digital tools.” According to Lohmann, “Ninety-nine percent of copyrighted works today are not incentivized by copyright.Lohmann suggests that YouTube and Instagram users, for example, aren’t incentivized by the law’s specific features, such as its duration or reversion rights. He asks, “Is [the] classic copyright incentive story necessary or appropriate for all these categories of works?

Lohmann’s question is premised on the flawed claim that the sole reason for securing copyright is to incentivize creation. That is only part of the reason for copyright. Just as important – if not more so – is the role copyright plays in providing incentives to publish and disseminate the works that authors create.

The Supreme Court made this crystal clear less than two years ago in Golan v. Holder. “Nothing in the text of the Copyright Clause confines the ‘Progress of Science’ exclusively to ‘incentives for creation.’ Evidence from the founding, moreover, suggests that inducing dissemination—as opposed to creation—was viewed as an appropriate means to promote science.” The Southern District of New York echoed this idea last summer. “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.” 1ABC v Aereo, No. 12-Civ-1540(AJN), order denying preliminary injunction (SDNY, July 11, 2012).

It may seem odd to suggest to anyone who has spent more than five minutes on social networking sites to suggest that incentives are needed for users to share things publicly. But much more is needed beyond the design of a particular social networking service to make it widely used or widely ignored – and some services, such as Myspace and Digg, have seen just how quickly a service can go from the former to the latter.

There are many factors that individuals and internet uses consider when making the choice of what and when to share something online. Most often, these are noneconomic considerations.

Barely a week goes by without a new privacy or term change that draws outrage. Earlier this month, Google announced that it would be “placing the photos, profiles and comments of some users in advertising endorsements across the Web.” In September, Facebook released a new “Statement of Rights and Responsibilities” policy that caused the FTC to begin an inquiry (Facebook is governed by a 2011 agreement with the FTC that requires it to get explicit consent of its users before making material changes to its privacy policy). As Mashable reported, “Most alarming to users was the understanding that their profile data, including their profile picture, name, and personal information, could show up as part of a Facebook ad their friends may see on the site.” And nearly a year ago, Instagram faced consumer ire over terms that would let it commercialize photos uploaded by users.

Sometimes it’s not even an actual change but the perception of change that will cause users to think twice about disseminating their creative work. This past spring, there were reports that users were fleeing Tumblr once it was announced that the service would be purchased by Yahoo. Some have suggested that the motivation over leaving (or threatening to leave) the free service were concerns that Yahoo would change the characteristic of the community, tighten content standards, or overrun the site with advertisting.

The outcry that accompanies such announcements demonstrates quite clearly that many users factor into their decision to share photos, comments, and other content what will happen once its uploaded. Maintaining some control serves as an incentive to sharing in the first place. And if we want to encourage such dissemination, we need to continue to recognize that individuals have rights to their expression.

A large amount of those who share personal photos, writing, thoughts and other creative expression on social networking sites don’t typically look to commercialize such expression. Likewise, they rarely need incentives to create such expression. But they do have some expectation when disseminating their expression that their work won’t appear in advertising, as stock imagery for political causes they might not agree with, as endorsing some brand or cause. In other words, maintaining some level of choice and control over our stuff gives us an incentive to share our stuff.

Of course, much of these issues are governed by a particular site’s terms of service or privacy policy. But these agreements are not enough. They can mediate the relationship between user and service, and users are able to make their own decisions about where to upload based on what terms are acceptable – though much more could be done to make such terms more transparent and understandable as well as address the issue of how easily services can change terms subsequently.

But contracts only go so far – terms of service and contracts don’t extend to non-contracting third parties. Copyright serves as a backstop to what non-contracting parties can do. It’s not the only mechanism, of course; various torts and statutes may govern what third parties can do with users’ expression. But it certainly plays an important role. Again, copyright doesn’t force anyone into sharing or not sharing their expression. It just prevents corporations and other parties from making that choice for them.

What’s more, copyright reinforces First Amendment values that may come into play. Not only does it “motivat[e] individuals to make available their creative works and increase the store of public knowledge,” but it also protects the freedom not to speak—a necessary complement to the freedom to speak. 2Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 US 539, 560 (1985).

Copyright aligns with internet users’ free speech rights and their expectations about what should happen with their photos, writing, and other expression once it is made available to the public online. We shouldn’t be in such a rush to declare it a “bad fit” and start thinking of ways to toss it aside or turn it into something that only benefits large internet companies at the expense of the public. That’s not to say that there are specific areas of the law that could be made better, but the basic principles of copyright law are just as applicable and vital today to the 99% of creators today.

References   [ + ]

1. ABC v Aereo, No. 12-Civ-1540(AJN), order denying preliminary injunction (SDNY, July 11, 2012).
2. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 US 539, 560 (1985).

Challenge to streaming TV — Lyle Denniston of SCOTUSBlog reports on the cert petition filed by TV broadcasters asking the Supreme Court to review the Second Circuit’s decision in WNET v. Aereo. A good background of the issues is provided, as well as some thoughts on how likely the Court is to agree to hear the case.

Real Censorship — This week in the U.S. was National Free Speech Week. Author Chris Ruen had these thoughts to share: “Giant tech companies are happy to avoid the pains of regulation and reduced profits that would come with rules-of-the-road that treat creators with more decency. It’s much easier and more effective to say they believe in ‘free expression’ or are ‘against censorship’ than to admit that artists, once again in history, have little negotiating power and can therefore be rolled over by the powers that be.”

How the Creative Industries Defend Free Speech — Also marking the week, the Copyright Alliance has a white paper, written by Evan Sheres and myself, looking at some of the many cases over past decades where members of the creative community have done the actual legwork of defending free speech and fair use in courts.

Randolph May & Seth Cooper: The Constitution’s Approach to Copyright — The Originalism Blog features May and Cooper’s article exploring the property rights approach to copyright and patent enshrined in the U.S. Constitution. “Copyright and patent are rooted in an individual’s basic right to the fruits of his or her own labor. Intellectual property (IP) protections are extensions of that basic right. Such protections secure to authors and inventors the financial rewards of their creative works and innovations for limited times, thereby promoting the public good.”

Making Money from Movie Streaming Sites, an Insider’s Story — Torrentfreak interviews “John”, a successful uploader. “John was soon adding more than a thousand links a day to several streaming websites. He now has 30,000 different movies and TV shows stored online, across 12 different file-hosting sites, each carrying between 10,000 and 30,000 items from John’s collection. ‘Amongst the different streaming websites I have added over 200,000 links. And yes, I am making a nice living at it,’ John concludes.”

Google’s iron grip on Android: Controlling open source by any means necessary — Google’s adoption of an open source mobile OS wasn’t an embrace of a new paradigm, or a endorsement of “open” as morally and fiscally superior to “closed.” It was, as Ars Technica reports, a shrewd business move to quickly gain marketshare against Apple in the mobile space, followed by a slow enclosure that would lock in users to Google properties.

Mercatus’s Unhelpful Business Advice to the Creative Industries — The Center for the Protection of Intellectual Property’s Mark Schultz thoroughly debunks the results of the project released last week. Very much worth reading in full. Schultz concludes with these parting thoughts: “If you love the free market, then perhaps it’s time to respect the people with the best information about their property and the greatest motivation to engage in mutually beneficial voluntary exchanges. Or you can just contribute to the mountain of lame excuses for piracy that have piled up over the last decade.”

Dubious news hook lets me confirm and blog my pre-existing views — How bad is anti-copyright research getting? So bad that even copyright skeptics are quick to point out the flaws. Here, the Volokh Conspiracy’s Stewart Baker notes some questionable methodology in a study that purports that Girl Talk’s 2010 album All Day — created primarily using hundreds of samples of existing sound recordings without permission — led to a massive increase in sales of the songs that were sampled. Says Baker, “Schuster says he’s just correcting for noise in the data, and it isn’t appropriate to charge Girl Talk with the natural rhythm of pop music sales. Maybe so, but once you start making big after-the-fact adjustments to a sample of 200, you can prove pretty much anything.”

Here’s why isoHunt deserved to die — “Critics warned that the vagueness of [the Grokster] rule would open the floodgates to frivolous lawsuits against technology innovators. But that hasn’t happened for a simple reason: It’s easy to avoid running afoul of the inducement standard. If an entrepreneur is sincerely not trying to profit from infringement, then she won’t encourage her customers to infringe, and so plaintiffs won’t be able to find evidence of her doing so. In contrast, the court found clear evidence that isoHunt was trying to profit from infringement. For example, the 9th Circuit Court of Appeals wrote that for a time, ‘isoHunt prominently featured a list of ‘Box Office Movies,’ containing the 20 highest-grossing movies then playing in U.S. theaters. When a user clicked on a listed title, she would be invited to ‘upload [a] torrent’ file for that movie.’ Since the top-grossing movies are almost always copyrighted, this feature shows clear evidence of infringing intent.”

My Art Was Stolen for Profit (and How You Can Help) — Independent artist Lisa Congdon writes of her discovery that wholesaler Cody Foster appears to have “blatant[ly]” copied her artwork. Says Congdon, “In the world of art & illustration, you can use the artwork of artists on your products as long as you ask permission, sign a licensing agreement with the artist, and agree to compensate them. I sell my images to companies all the time, companies who ask my permission and compensate me for my intellectual property. In this case, I was never contacted, asked permission or paid. That is called copying. It’s also called stealing.”

Is unauthorized online copying theft and does it hurt creators? — Canadian attorney Barry Sookman points to an interesting case that addresses a subject that is vigorously debated online. It’s an interesting case: essentially, Party A engages in copying a database compiled by Party B without permission. Party B posts angry messages about Party A online, accusing Party A of being a “thief” and of stealing the database. A sues B for defamation. Truth is a defense to defamation. So the court had to consider whether the characterization of unauthorized copying as theft is true or false. it concluded that it was true. “To a lay person such as Henry, ‘theft’ can also mean the wrongful act of taking the property of another person without permission. The data Henry had collected could be reasonably understood as her property—she had collected it, and it was her work in compiling it that gave it value. She did not give Tamburo permission to copy it and sell access to it. Although Henry might not be able to successfully sue Tamburo for using her data in this way, the gist of her statements was true: he took the data without her permission.”

Musicians: Don’t Let Google Hijack Your Brand With “Shared Endorsements” — The announcement this week that Google will start using user photos and likenesses in advertising raised a stir. Fortunately, at the moment, it appears that Google users can opt out of becoming unpaid shills (though how long Google will allow that is unclear). Probably a good idea for not just musicians, but any creators and small businesses who use Google to promote their work.

You are a soldier in Google’s Cold War with Facebook for social dominance — Web.Tech.Law takes a closer look at why Google has made the above-mentioned move.

The Walking Dead: Season 4 Begins — If, like me, you were excited to see the return of AMC’s zombie drama last Sunday, you might enjoy this look at the creation of the music for the season premiere from Bear McCreary, who regularly blogs, in depth, about his creative process. Fascinating stuff.

Tollbooths and Newsstands on the Information Superhighway — Brad Greenberg has posted a draft of an interesting forthcoming essay. “The Internet has made it easier than ever before to stay informed on current events — and without ever needing to pick up, let alone pay for, a newspaper. But recent litigation and legislation in the United States and Europe have challenged the cost-free flow of such information. The opposition to these recent legal developments is rooted in a belief that stronger intellectual property protections result in higher tolls, which, in turn, price many consumers out of accessing and using the information. But overlooked has been an existential consideration: information-gathering is expensive, and absent efficient tolls there will be far less information to access at all, regardless of cost. The United States Supreme Court recognized this principle in Harper & Row Publishers, Inc. v. Nation Enterprises as it applies more narrowly to whether copyright law inhibits free expression. Identifying the particular importance of incentives for newsgatherers, this Essay extends the Harper & Row rationale beyond its copyright mooring. In light of the continued withering corps of professional newsgatherers, these legal developments actually could enhance the exchange of information and ideas to the extent they preserve incentives for news publishers. This Essay proffers that copyright expansions actually can increase access and thereby serve important copyright and First Amendment values.”


This past summer, the Ninth Circuit released its decision in Fox Broadcasting Company v. Dish Network, holding that the lower court had not abused its discretion when it denied a preliminary injunction against Dish.

Fox had sued Dish after the satellite television provider released a set-top DVR called the “Hopper” along with two features: the first, PrimeTime Anytime (PTAT), automatically records all four broadcast networks’ programming during prime time hours, giving viewers a video on-demand type experience, and the second, AutoHop, allows viewers to automatically skip over commercial breaks while watching shows recorded by PTAT. Fox alleged that these features breached its contract with Dish, which prohibits the recording of Fox programs and requires that any video on demand services disable fast-forward functionality during commercial breaks. Fox also alleged copyright infringement because Dish exceeded the scope of its license.

The district court denied the injunction, unconvinced that Fox had demonstrated a likelihood to succeed on the merits at this stage of the litigation.

After the Ninth Circuit affirmed the district court’s decision, writers at the Fenwick & West blog made the following observation:

the Ninth Circuit left open what causation standard governs copyright actions. Following Cablevision, the district court purported to apply ordinary tort principles to determine whether Dish was directly liable. Despite the role that Dish played in operating PTAT, the district court held, and the Ninth Circuit repeated: “The user, then, and not Dish is the ‘most significant and important cause’ of the copy.” 905 F. Supp. 2d at 1102 (quoting Prosser & Keeton on Torts § 42); Opinion at 12. Oddly, this statement misquotes Prosser & Keeton’s commentary on proximate, or legal, causation. The treatise provides that: “[Legal Causation] is sometimes said to depend on whether the conduct has been so significant and important a cause that the defendant should be legally responsible.” Prosser & Keeton § 42. By substituting “most” for “so,” the opinions suggest that only one actor may be liable for direct infringement. This approach threatens to eliminate the ordinary rule of joint and several liability in favor of a new “primary causation” standard.

Oops. It’s not every day that a Circuit Court reaches a legal conclusion through such a glaringly obvious mistake. Broadcasters have rightfully jumped on this error in their petition for rehearing. Unfortunately, courts outside the Ninth Circuit have gone down the same road without being misled by a misreading of legal authority. The result has been a strand of copyright cases that seemingly stand for the proposition that only one actor can be found directly liable. With multiple actors, it becomes a binary, either/or question of causation, and any other liability can only be found indirectly.

This is a sharp departure from well-established legal rules concerning causation. What’s all the more striking about this departure is how little explanation has accompanied it in court decisions responsible for it. Such a dramatic change at the very least deserves far closer examination then what courts — especially the Ninth Circuit through Dish — have given it.

Joint Causation and Netcom

William Prosser, whose name graces the torts treatise that the Ninth Circuit misquoted, wrote in 1937 on Joint Torts and Several Liability, a guide of sorts to understanding joint tortfeasors. In it, he provides a taxonomy of situations where the law has historically recognized that multiple people can be held directly liable for a single harm. This includes, most relevantly, “Concurrent causation of a single, indivisible result, which neither would have caused alone.”

Where the acts of two defendants combine to produce a single result, which is incapable of being divided or apportioned—such as the death of the plaintiff—each may be the proximate cause of the loss, and each may be held liable for the entire damage. A common case is that of two vehicles which collide and injure a third person. The duties which are owed to the plaintiff by the defendants are separate, and may not be similar in character or scope, but by far the greater number of courts now permit joinder in one action.

Entire liability in these cases rests upon the obvious fact that each defendant is responsible for the loss, and the absence of any logical basis for apportionment. It is not necessary that the misconduct of the defendants be simultaneous, or that it operate simultaneously to produce the result; one defendant may create a situation, harmless in itself, upon which the other may act to cause injury. One may leave combustible material, and the other set it afire; one may leave a hole in the street and the other drive into it. The first defendant remains the proximate cause of the injury, so long as the intervention of the second is a foreseeable, or normal, “not extraordinary” consequence, which fairly may be said to lie within the scope of the risk created.

Relatively straightforward. But when copyright law entered the internet age, the idea that multiple actors could be liable for direct infringement began to erode. 1Indirect liability—contributory infringement, vicarious infringement, or inducement—is a form of joint liability, one long recognized in copyright law. See Arista Records v. Lime Group, 784 F.Supp.2d 313, 315 (SDNY 2011) (Service provider that induced infringement is jointly and severally liable with individual, direct infringers).

One of the earliest cases involving copyright and online services, Religious Tech. Center v. Netcom On-line Comm. (Netcom), involved the unauthorized posting of copyrighted materials on a Usenet group. The copyright owner sued the alleged uploader, as well as the BBS service that connected the uploader to the internet and the internet service provider that connected the BBS service to the internet. When the court reached the issue of direct liability for the latter, it paused, noting that strict liability in this circumstance would “create many separate acts of infringement and, carried to its natural extreme, would lead to unreasonable liability.” The court likened Netcom to a machine that makes copies, and concluded that because the copies are made at the initiation of the user and without any further human intervention, Netcom, as owner of the machine, was not directly liable for the copies. It buttressed this conclusion with a nod toward policy, saying, “Where the infringing subscriber is clearly directly liable for the same act, it does not make sense to adopt a rule that could lead to the liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet.”

CoStar: Putting the Stamp of Approval on Netcom

Netcom would be directly challenged several years later in CoStar Group v. LoopNet. In that case, which reached the Fourth Circuit, real estate photographer CoStar Group sued ISP LoopNet for directly infringing its photographs, which were posted by LoopNet users on LoopNet’s website. CoStar argued that Netcom’s holding was based on the expedience of preventing the internet from being crippled in its infancy. Now that the internet was more mature, and in light of the DMCA safe harbors that had been established by Congress, the “special exemption” was no longer necessary.

The Fourth Circuit disagreed and said that

While the Copyright Act does not require that the infringer know that he is infringing or that his conduct amount to a willful violation of the copyright owner’s rights, it nonetheless requires conduct by a person who causes in some meaningful way an infringement. … This, of course, does not mean that a manufacturer or owner of machines used for copyright violations could not have some indirect liability, such as contributory or vicarious liability. But such extensions of liability would require a showing of additional elements such as knowledge coupled with inducement or supervision coupled with a financial interest in the illegal copying…

But to establish direct liability … something more must be shown than mere ownership of a machine used by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner. The Netcom court described this nexus as requiring some aspect of volition or causation. CoStar Group 545-50.

You’ll note right off the bat that the Fourth Circuit did not embrace a “primary causation” theory like Dish would. It anticipates that multiple actors may be liable for infringement. But rather than looking for the “most significant and important cause” of a copy, it is looking only for a “nexus sufficiently close and causal” to the copying.

Even so, CoStar determined that an ISP that does not engage in intervening conduct when a subscriber uses its facilities to infringe on copyright is not directly liable for such infringement. Like Netcom, CoStar analogized the ISP to the owner of a copying machine, who at the most could be found indirectly liable for infringement if it, for example, had knowledge of unauthorized copying. CoStar also found that the requirement that there be “some aspect of volition and meaningful causation” was supported by the Copyright Act’s fixation requirement for copies. Said the Fourth Circuit, “When an electronic infrastructure is designed and managed as a conduit of information and data that connects users over the Internet, the owner and manager of the conduit hardly ‘copies’ the information and data in the sense that it fixes a copy in its system of more than transitory duration.

Finally, CoStar notes that its endorsement of Netcom’s volition requirement serves an important public policy.

There are thousands of owners, contractors, servers, and users involved in the Internet whose role involves the storage and transmission of data in the establishment and maintenance of an Internet facility. Yet their conduct is not truly “copying” as understood by the Act; rather, they are conduits from or to would-be copiers and have no interest in the copy itself. To conclude that these persons are copyright infringers simply because they are involved in the ownership, operation, or maintenance of a transmission facility that automatically records material — copyrighted or not — would miss the thrust of the protections afforded by the Copyright Act.

The CoStar decision has not escaped criticism; indeed, it attracted a dissent. Circuit Judge Gregory agreed with the legal reasoning of the majority but disagreed with its characterization of LoopNet, believing instead that the ISP engaged in “non-passive, volitional conduct with respect to the photographs on its website such that the Netcom defense does not apply.”

Gregory notes that once a photograph has been uploaded to LoopNet’s servers, it does not become automatically and immediately accessible to other users. Instead, “one of the company’s employees can review the photo to ensure (1) it is an image of commercial real estate, and (2) it is not an obviously copyrighted image.” To Judge Gregory, this distinguishes LoopNet from a truly passive service provider, one that exercises no control over what is being communicated through its hardware.

LoopNet remains the pivotal volitional actor, “but for” whose action, the images would never appear on the website. Indeed, “volition” is defined as “the act of willing or choosing[;] the act of deciding (as on a course of action or an end to be striven for)[;] the exercise of the will … [or] the termination of an act or exercise of choosing or willing[;] a state of decision or choice.” Under any analytical framework, LoopNet has engaged in active, volitional conduct; its employees make a conscious choice as to whether a given image will appear in its electronic publication, or whether the image will be deleted from the company’s system. Nothing in the brief nature of LoopNet’s review makes the company akin to a copy machine owner or a security guard by the owner’s door. LoopNet is the publisher of LoopNet Magazine in cyberform; a volitional copier of images to whom direct infringement liability applies. Because I believe that the Netcom volitional defense should focus on passivity and the automated nature of the act — not the fact that a user’s initial volition somehow exterminates liability for later volitional acts — I would reverse the district court.

I believe Judge Gregory was correct on this last point. CoStar represents a slight shift from Netcom’s volition or causation requirement for direct liability to more of an “initiation” requirement. However, CoStar‘s conclusions regarding volition were at least still motivated by the same concerns as Netcom over cabining liability in a wide open communications network.

Cablevision and Dish: Extending the Volition Requirement Beyond its Origins

Cablevision represents the next shift away from traditional tort principles. Cable provider Cablevision was found by a district court to be directly liable for copying that occurred through its “Remote Storage DVR” (“RS-DVR”) service that allowed customers to save television programs for later viewing without needing a set-top DVR device. 2Twentieth Century Fox Film v. Cablevision, 478 F.Supp.2d 607 (SDNY 2007). The court marshaled a number of reasons why Cablevision was actively involved in the copying of television programs: Cablevision designs, houses, and maintains the necessary equipment used for copying; it is involved in an ongoing relationship with customers, unlike the manufacturer of a copying device; the copying is instrumental rather than incidental to the RS-DVR service; Cablevision selects the programming that is available for recording; and it provides that content to its RS-DVR service [rather than a user providing the content to be copied]. In short, Cablevision’s RS-DVR service was “a far cry from the ISP’s role as a passive conduit in Netcom” and played a sufficiently active role in causing the copies to be made.

The Second Circuit completely rejected the district court’s conclusions on appeal. 3Cartoon Network v. CSC Holdings, 536 F.3d 121 (2nd Cir. 2008). It paid no heed to Netcom‘s original desire to draw a line to keep the number of direct infringers at a limited and reasonable number and seemingly couldn’t get past the superficial similarities between the operation of the RS-DVR system and a set-top VCR. Devlin Hartline has criticized the decision, saying

Cablevision’s actions were far more proximate to the copying of particular materials than Netcom’s or the CoStar defendant’s ever were, and the rule from Netcom has been extended significantly past relieving mere passive conduits of liability for direct infringement. This leads to the potentially nefarious situation where no matter how instrumental a service provider’s actions may be in causing the unauthorized copying of particular materials—such as by Cablevision (1) supplying its customers with the source materials and the tools for the job, (2) making the copying as simple as pressing a virtual button, and (3) maintaining complete control over every aspect of its dedicated copy machine that existed for no purpose other than to make particular copies—that service provider would not be a direct infringer.

The Second Circuit gives little reason why it adamantly refused to recognize joint causation here. Both Cablevision and its customers are necessary, “but for” causes of the copying. There are no concerns that such a holding would render the entire internet liable. Nevertheless, the Circuit narrowed the element of volition even further than Netcom and CoStar to one of “initiation” or, perhaps, a “last deliberate intervention” requirement that results in a less likelihood there can be multiple actors directly liable.

And so we arrive at Dish. On a motion for a preliminary injunction, the district court adopted the novel “causation” requirement developed through Netcom, CoStar, and Cablevision to determine that Dish was not a sufficient cause of the copying on its service. 4Fox Broadcasting Co. v. Dish Network, 905 F.Supp. 2d 1088 (CD Cali 2012). This despite the fact that Dish has designed, houses, and maintains the equipment necessary for the copying. It determines what to copy, when to copy it, and how long copies are available for subscribers to watch. Users cannot stop the copying once it starts after the service is enabled. For the court, the only sufficient cause of the copying for purposes of direct liability was the user, when she enables the PTAT service.

The Ninth Circuit affirmed the district court’s holding with little discussion, save for the previously mentioned misquote of Prosser and Keeton.

What’s Next for Volition

The shift in copyright’s liability standard that has occurred from Netcom to Dish calls out for more attention, as it has been as dramatic as it has been ignored.

One brief observation: much of the doctrinal confusion in these cases seems to come from a conflation between factual, or “but for”, causation and legal, or “proximate”, causation. The courts mentioned above appear on the face to be talking about factual causation when they are really talking about legal causation. By doing this, the courts obscure or ignore the policy considerations inherent in defining proximate causation behind a facade of what seems to be factual observations.

But any first year law student halfway through a torts class can see that Netcom, LoopNet, Cablevision, and Dish Networks are factual causes of the copying that has occurred. But for the design and maintenance of their systems and services, the copying could not have occurred. The appropriate inquiry is whether such acts should be considered the legal cause of the copying.

By recognizing that when courts have talked about volition they really mean proximate causation, we can have a more thorough discussion about how to apportion responsibility in copyright law. 5For more on causation in tort law, see Honoré, Antony, “Causation in the Law“, The Stanford Encyclopedia of Philosophy (Winter 2010 Edition), Edward N. Zalta (ed.). Much preferable to misquoting Prosser.

References   [ + ]

1. Indirect liability—contributory infringement, vicarious infringement, or inducement—is a form of joint liability, one long recognized in copyright law. See Arista Records v. Lime Group, 784 F.Supp.2d 313, 315 (SDNY 2011) (Service provider that induced infringement is jointly and severally liable with individual, direct infringers).
2. Twentieth Century Fox Film v. Cablevision, 478 F.Supp.2d 607 (SDNY 2007).
3. Cartoon Network v. CSC Holdings, 536 F.3d 121 (2nd Cir. 2008).
4. Fox Broadcasting Co. v. Dish Network, 905 F.Supp. 2d 1088 (CD Cali 2012).
5. For more on causation in tort law, see Honoré, Antony, “Causation in the Law“, The Stanford Encyclopedia of Philosophy (Winter 2010 Edition), Edward N. Zalta (ed.).

Hood hits Google on guarding intellectual property — Mississippi State Attorney General Jim Hood continues to work on behalf of creators. His latest efforts concern gaining support from other state attorneys general to solicit greater cooperation from internet giant Google in helping curb infringement.

Samsung Exposed as Top Advertiser on Pirate Sites — Similar to some efforts in the U.S., a group of media companies in Ukraine have started a “Clear Sky” initiative that aims to find solutions to online infringement. One of their first campaigns has been to measure major brand advertising on several popular filesharing sites, and the resulting list has consumer electronics manufacturer Samsung firmly at the top.

The Supreme Court’s New Copyright Case Is Not a Copyright Case — Though arising out of a copyright infringement action, the issue in front of the Supreme Court in Petrella v. Metro-Goldwyn-Mayer (granted cert last week) actually concerns the equitable doctrine of laches, sort of a common law version of a statute of limitations.

Internet Exploitation, Not Just a Problem For Artists — This post from UK mastering engineer Nick Lewis looks at some of the fallout that an non-sustainable creative ecosystem has beyond the “front-line” creators. “The free market theory is that competition will drive price down, which is good for the consumer. Adam Smith couldn’t possibly have predicted what would happen in the face of intangible, easily copyable assets and hyper-globalisation. The trend towards zero is not good for the consumer in the long-term as the quality of product degrades or disappears altogether along with the skills and supportive infrastructure that go into it.”

The soul of a new machine: Gawker struggles with the slippery slope between viral and true — “If you tell the truth, people might not share it.” If freedom of speech is valued so highly because of it’s truth-seeking function, then should stories like this raise concern?

Copyright’s Role in a Free Press — Speaking of free expression, last week I discussed at the Copyright Alliance Idea/Expression blog a recent story that looked at how resource intensive high-quality investigative journalism continues to be. I argue that it’s important to keep copyright functioning as a mechanism for funding such efforts.

Photofocus Podcast Interview with Terry Hart — I’d also be remiss if I didn’t link to this Photofocus Podcast where I was invited as a guest last month. The topic was recent changes to Facebook’s terms of service that raised concerns among photographers and other creators regarding what Facebook could do with their images once uploaded.

These Journalists Spent Two Years and $750,000 Covering One Story — Writes Peter Osnos of the Atlantic, “It costs a lot, but investigative reporting can save lives. And non-profits lead the way in producing high-quality, in-depth stories. So who’s going to pay for them?” Maybe they can sell t-shirts?

Breaking Up With ‘Breaking Bad’ Is Hard for Albuquerque — A highlight of the contributions that film and television production have on local economies. “During the show’s run, the production directly employed an average of 200 people, said Wayne Rauschenberger, chief operating officer at Albuquerque Studios, the 28-acre facility where much of the show was filmed. Beyond that, there were lumber yards, antique stores, limousine companies, hotels, caterers and others performing ancillary functions. Residents were hired as extras, and homeowners and businesses were paid for filming privileges.”

A Conversation with Dr. David Price Part 1 — David Newhoff chats with Price, author of the recent NetNames report Sizing the Piracy Universe. The result is an in-depth and engaging discussion. Continued in Part 2.

New York Times: “David Lowery Represents the Anger of Musicians In the Internet Age…” — “Because the tech industry still hasn’t innovated a way to shut up David Lowery.” Digital Music New’s intro to this New York Times article.

An interesting duo from the Trichordist, whose titles speak for themselves: Record Labels Invest $4.5 Billion Annually in Artists… Pirates, $0… Any Questions? and Grand Theft Auto V: How Profits Soar when Piracy is Managed.

Why Ad Blocking can Hurt Ad Blockers — Jonathan Bailey writes, “The end result though is that ad blocking doesn’t push the Internet toward a future free of advertising, rather, it pushes us toward a future of ads tougher to separate from the content and harder to remove. We’re likely nudging toward this future regardless of ad blocking, but ad blocking is certainly a factor and could become a much bigger one. The only way to ensure better business models and a better future for content is to support the content creators that you feel are finding the right chords.”

MPs attack Google’s ‘derisory’ efforts to stop music and film piracy — Despite Google’s “influence in the government’s inner, policy-making sanctum,” a UK gov’t committee has released a report that “accused the search engine of offering the thinnest of excuses to avoid taking action against widespread piracy.”

How Google Algorithm Changes Hit Torrent Site Traffic — Torrentfreak speaks with an admin of one of the largest torrent sites who notes that changes in Google’s search engine have a big impact on the traffic that is driven to infringing sites, confirming last week’s report from the MPAA.

Fox Television Stations, Inc. et al. v. Filmon X LLC, et al.:Another victory for content providers in the ongoing saga of internet re-transmission of broadcast TV — Scott Sholder of Cowan, DeBaets, Abrahams & Sheppard examines the decision from a DC district court earlier this month that continued the trend of courts outside the Second Circuit rejecting the “one antenna one user” contrivance that Aereo and FilmOn X have relied on.

As the world churns: The young and restless world of online video — TechPolicyDaily looks at the explosion in options in online video that we’ve seen in recent years. “Of course, any assertion that media consumers are not better off than ever is difficult to support. In my childhood, most of us got CBS (and perhaps a few dozen VHF and UHF channels) via one medium — broadcast. Depending on your geographic location, the signal was often fuzzy. And once a show aired — it was gone forever, or at least until summer reruns.”

The 13 Most Insidious, Pervasive Lies of the Modern Music Industry… — Everything from the Long Tail to touring and t-shirts.

Copyright 2.0 Show – Episode 300 – Not Quite Sparta — Last week I joined Jonathan Bailey, Patrick O’Keefe, and David Newhoff of Illusion of More for the 300th episode of Jonathan and Patrick’s Copyright 2.0 show. A freewheeling discussion of current copyright issues ensued.

Goold on Translations in Early Copyright Law — Interesting academic article that challenges the dominant historical account that early copyright law focused only on verbatim copying and did not extend the exclusive right to translations.

Hotfile is liable for the “staggering” amount of infringement it financially benefitted from, and it is not protected by the DMCA safe harbor for online service providers.

That is the conclusion of U.S. District Court Judge Kathleen Williams of the Southern District Court of Florida. Williams made the ruling August 28, but the decision had been under seal until this past Friday.

What makes this case notable is that it was brought by the five major motion picture studios (Disney Enterprises, Inc., Twentieth Century Fox Film Corporation, Universal City Studios Productions LLLP, Columbia Pictures lndustries, Inc., and Warner Bros. Entertainment Inc.) against a fairly popular filelocker service (at least at the time the suit was filed). This appears to be the first time an infringement lawsuit from major players in the creative industries had been brought against a filelocker service specifically — previous efforts have aimed at P2P services and the like. Add to that the fact that the suit was filed in Florida, outside the 2nd and 9th Circuits where the bulk of copyright litigation occurs, and you have a situation where the court is interpreting many DMCA provisions on a blank slate.

Oh, and the decision also comes in at just under 100 pages.

I had previously discussed the issues in front of the court and both parties’ arguments. That was over a year ago, which is an unusually long time between hearing and order on a summary judgment motion. Part of that may have been the sheer complexity of the issues; part of that may have been the aggressive litigation posture taken by both sides. The court diplomatically refers to the many “robust pleadings” filed without leave of court and notes, certainly an understatement, that “the parties do not agree on much.”

Whatever the case may be, the issue boils down to a familiar one. Hotfile, an “off-shore technology company” provides online file storage. As is often the case, infringing works are among the files that were stored and shared by Hotfile users. The film studios argued that Hotfile should be held liable for such infringement because it contributes to, encourages, or benefits from such infringement.

As the court explains, Hotfile’s storage locker service allows registered users to upload any file they want from their computer to Hotfile’s servers to be stored. The service automatically generates a link where the file can be accessed. The files or links are not otherwise private; any member of the public can access them so long as they know the link. Hotfile operated an affiliate program which paid users when they directed others to Hotfile file locations, encouraging affiliates to catalog and broadcast Hotfile links. Hotfile also provided premium service, which gave users additional file space and faster download speeds for a monthly fee.

The court begins with a careful, comprehensive discussion of the facts (nearly 35 pages worth). As we’ll see in a moment, the question of whether Hotfile had adopted and reasonably implemented a repeat infringer policy will play a key role in determining whether the service is protected by the DMCA safe harbor, but I do want to highlight the court’s discussion regarding the policy that was in place — some of these numbers are staggering. The evidence reveals that when the studios had filed their complaint, Hotfile had received a total of 10 million takedown notices for infringing content, yet had only terminated 43 users – 33 of those as a result of a court order from prior litigation. At the same time, nearly 25 thousand Hotfile users had accumulated more than three infringement notices; 61 of those users had over 300 notices each. After the litigation began, Hotfile adopted a “revamped” repeat infringement policy, and the results were dramatic: 444 of its 500 highest paid affiliates were terminated for repeated infringement.

The DMCA safe harbor and the repeat infringer policy

Turning to the legal issues, the court begins with the DMCA safe harbor. 117 U.S.C. § 512. As it notes, if Hotfile qualifies for the safe harbor, it is immunized from any liability for infringement. If it doesn’t, the court must then separately consider if Hotfile is liable. The court cites to the relevant legislative history of the DMCA to explain the law’s motivations in striking a balance between protecting creators’ rights and promoting the growth of online services.

The DMCA applies to online service providers, which Hotfile clearly is, and one of the safe harbors covers storage at the direction of the user, which the court says covers the activities at issue here. 2I note that the court glosses over one of the studios’ (admittedly far-reaching) arguments that the infringement in question was not within the scope of the storage safe harbor. The studios had argued that Hotfile’s practice of routinely deleting files that have never been downloaded was the antithesis of “storage” and thus not protected under the safe harbor.

The DMCA safe harbor requires that a service provider

has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers. 317 U.S.C. § 512(i)(1)(A).

The court here turned to the legislative history and other courts to flesh out the details of this provision, since the terms are not defined in the statute. It determined that a policy is “reasonably implemented” if it terminates users, under appropriate circumstances, who “repeatedly or blatantly infringe copyright.” At a minimum, this means that a policy “must be capable of tracking infringers.” Hotfile, said the court, “effectively did nothing to tie notices to repeat infringers.” This, in addition to the breathtaking scope of infringement that Hotfile essentially ignored took the service provider outside the protection of the DMCA safe harbor. The court concluded:

Here, the scale of activity – the notices of infringement and complaints from copyright holders — indicated to Hotfile that a substantial number of blatant repeat infringers made the system a conduit for infringing activity. Yet Hotfile did not act on receipt of DMCA notices and failed to devise any actual policy of dealing with those offenders, even if it publicly asserted otherwise. It has presented no evidence to show that the small number of removals that did occur were for any reason other than threatened Iitigation or by court order. lndeed, it has been unable to point to a single specific user who was terminated pursuant to its policy of manual review and exercise of ”discretion.” Documents and statistics indicate that there was never any realistic threat of termination to Hotfile’s users, whose activities were protected by the company’s indifference to infringement notices. In sum, regardless of official policies forbidding infringement, Hotfile did not significantly address the problem of repeat infringers. This renders Hotfile’s policy legally insufficient under Section 512(i).

While this, on its own, was enough to kick Hotfile out of the safe harbor, the court continued to provide observations and conclusions on two other DMCA requirements. The first provides that service providers designate an agent to receive infringement notices and register the agent with the U.S. Copyright Office. Hotfile, however, did not register an agent until December 2009 and had not identified the agent on its website as required by the statute until May 2010. Additionally, the court suggested that Hotfile was still not in compliance with this requirement since it “to date, has not provided a proper mailing address for its registered agent insofar as it lists only a post office box,” contrary to Copyright Office regulations.

The second requirement is that a service provider cannot have either actual or “red flag” knowledge of infringement. But, as the court notes, the DMCA places limitations on this requirement. Under the statute, a service provider does not initially have a duty to affirmatively monitor for infringement. Courts have also determined that the statute requires the knowledge be of specific infringing activity rather than a general awareness of infringement, a determination that the court here adopts. At the same time, willful blindness is a form of knowledge, and courts have struggled with incorporating willful blindness into the DMCA consistent with its limitations on the knowledge prong — the court here notes the complexity of this inquiry but doesn’t attempt to clarify it.

Instead, it concludes that whether Hotfile had the requisite knowledge that would disqualify it from the DMCA safe harbor was a question that would need to be decided by a jury. This conclusion is a little odd procedurally, as the court had already granted summary judgment denying Hotfile’s DMCA defense, meaning the question of knowledge would never reach a jury, but perhaps Judge Williams wrote it anticipating an appeal.

Secondary liability for copyright infringement

Next the court turns to the question of infringement itself. As it notes, the DMCA safe harbor and secondary liability are independent inquiries (even though there is plenty of overlap between some of the factors and the evidence that is relevant to each). And while it has been a challenge for courts to apply common law secondary liability principles to new technologies, they still play an important role since copyright protections would be rendered meaningless if creators were limited to going after each individual infringers using such services.

Inducement and contributory infringement are discussed first. The court marches through some of the most relevant precedent here, including, among others, the Supreme Court’s Grokster decision, the recent Lime Group decision, and the Ninth Circuit’s Perfect 10. The court extracts from this precedent its own standard for examining contributory infringement, one that provides three separate avenues for establishing secondary liability:

First, while it may be unclear whether Grokster introduced a new category of Iiability based on inducement or whether it spoke to pre-existing notions of contributory liability, it is evident that a defendant will be liable for actually expressing an intention to foster infringement. If that intent is express or can otherwise be said to be ‘’unmistakable,’’ the Sony/Betamax defense will not apply and the defendant will be liable for aII acts of direct infringement committed using its system, as was the case in Grokster. Similarly, as explained in, where traditional principles permit a court to impute intent – for instance, where the defendant knows of specific infringing content available on its system yet fails to remove it – that defendant may be Iiable, by operation of Iaw, just as if he had actually intended to infringe under Grokster. Finally, contributory infringement may be found based on a material contribution theory in instances where a defendant did not express an intention to foster infringement but provided the means for infringement of distributed a commercial product that was subsequently used to infringe. Under that theory, the Sony/Betamax rule provides a backstop of liability, immunizing a defendant who demonstrates that noninfringing uses of the system are substantial.

Here, the evidence left a number of unresolved questions about whether Hotfile is liable under any one of these avenues, and the court concludes that “while Hotfile may have difficulty explaining its ‘innocence’ to a jury, the genuine issues of material fact must be resolved by a jury at trial.”

Less complex is the vicarious liability inquiry. The standard used by the court here is two pronged: one is vicariously liability if he (1) profits from direct infringement while (2) declining to exercise a right to stop or limit it.

The profit, or financial benefit, from infringement does not, the court observe, need to be a direct one, or even a significant one. It is enough that there is a causal relationship between infringement and benefit to satisfy this prong. And here, the court found that the evidence did establish a connection between infringement on Hotfile and its sales of premium subscriptions, concluding that “it is undeniable that it financially benefitted from [infringement] by attracting some users.”

The second prong was just as easily met. The infringing files were stored on Hotfile’s own servers, and it contractually retained a right to control uploaded files in its terms of service. As a matter of law, then, Hotfile is vicariously liable for copyright infringement.

Two final issues were addressed in the court’s order. First, the court held that Anton Titov, one of the primary corporate officers of Hotfile, is, as a matter of law, personally liable for any infringement along with Hotfile itself. And second, the court found that there was enough evidence to support Hotfile’s counterclaim against one of the studios involved, Warner. The evidence suggested that Warner intentionally sent takedown notices for files that it knew it had no right to remove.

While the decision has been a long time coming, and while it will take a long time to digest — it’s very thorough — this is likely only the beginning. Hotfile has already appealed the decision to the Eleventh Circuit.

References   [ + ]

1. 17 U.S.C. § 512.
2. I note that the court glosses over one of the studios’ (admittedly far-reaching) arguments that the infringement in question was not within the scope of the storage safe harbor. The studios had argued that Hotfile’s practice of routinely deleting files that have never been downloaded was the antithesis of “storage” and thus not protected under the safe harbor.
3. 17 U.S.C. § 512(i)(1)(A).

Colour grading: the unsung hero of film — Whether it involves balancing color tones over different scenes to make a consistent look or more aggressive techniques to create a specific tone or mood, film colorists are just another of the countless behind-the-scenes technicians who contribute to the films and television programs that audiences enjoy.

Online Piracy Grows, Reflecting Consumer Trends — A study from NetNames was released this week that gave an empirical look at the size and shape of online infringement. Among the study’s revelations is that “Successful pay-for-play subscription plans, such as Netflix and Amazon, have not curbed widespread piracy of copyrighted content.” The full report is available here.

Congress: Restore Our Rightful Privacy Ownership — An interesting piece arguing for more meaningful privacy protections. The overlap between privacy and copyright is not always obvious, but no less tangible. “In the not too distant past, people enjoyed substantial privacy because practically it was inefficient, difficult, and expensive to collect, store, and disseminate private information. In stark contrast, Internet technology now makes it hyper-efficient, easy and near-free incrementally to collect, store, and disseminate private information. As we have learned, Internet technology can serve as a universal tracking and recording device, copy machine, and surveillance system for those who want it to serve those functions.”

Rene Summer gets it Wrong about Piracy and Payment… The Internet Time Machine Strikes Again — The arguments favoring piracy have been wrong for over a decade, yet they are still being recycled. “So Kim Dotcom’s five suggestions have been fulfilled and yet, I don’t think we’ll see an end to piracy anytime soon. There is still one thing piracy offers that legal, licensed and legitimate services do not, and that is compensation to the artists, musicians, filmmakers and creators which requires that consumers actually do pay the fair price asked.”

MPAA report says Google, other search engines a major gateway to piracy — “The survey found that 74% of consumers surveyed cited using a search engine as a navigational tool the first time they arrived at a site with infringing content, even when the consumer was not looking for pirated movies or TV shows.”

Practical Lessons from the MPAA’s Search Engine Study — PlagiarismToday’s Jonathan Bailey offers some practical advice, especially for independent creators and artists, in the wake of the MPAA study that shows a significant amount of traffic for infringing works comes from search.

Google’s Eric Schmidt says government spying is ‘the nature of our society’ — Schmidt also says that protecting citizens from government surveillance will “break the way the internet works.” If this is Google’s vision for the internet, do we really want to keep it from breaking?

UnSound : New Film Explores Artists Rights in The Digital Age (Video Clip) — UnSound looks to be a promising romp through the past decade or two and how it has reshaped the music industry. Here is a clip from the documentary featuring Bad Religion guitarist and Epitaph Records founder Brett Gurewitz.

“[W]ithout question, the exercise of the [copyright] power has operated as an encouragement to native genius, and to the solid advancement of literature and the arts.” 1Joseph Story, Commentaries on the Constitution of the United States, Book 3, Chapter 19 (1833).

September 17 marks “Constitution Day” in the United States, a day that commemorates the approval of the final draft of the Constitution by the U.S. Constitutional Convention delegates in 1787. 236 U.S.C. § 106. Copyright is the subject of one of Congress’s few enumerated powers; Clause 8 of Section 8 of Article 1 says that  “The Congress shall have power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

The story of how the United States became only the second nation in history to recognize a modern day version of copyright is one of authors and ideals. There was no publishing industry to speak of in Colonial America. What few printers did exist in the thirteen original states by the time of the Revolution focused mostly on government printing or newspapers. Horace Scudder, a 19th century biographer of Noah Webster (more on him later) wrote of the time, “Literature in its finer forms had but slender encouragement. The absence of easy communication, the poverty of the people, the dispersion of the population, gave little chance for bookstores and circulating libraries and private accumulation.” 3Horace Scudder, Noah Webster: American Man of Letters (Boston: 1890).

As in many parts of Europe and Great Britain, exclusive publishing privileges had at times been granted to individuals in the colonies, but these were rare. 4The first was granted to John Usher in 1672 to print and publish the laws of the Massachusetts colony. The first attempt by an author, rather than a publisher, to seek exclusive rights to his work came in 1772 from musician William Billings, though he was ultimately unsuccessful. It was not until after the Revolutionary War that we would see the push for copyright begin in earnest.

Copyright before the Constitution

Thomas Paine, who is best known in U.S. history for his 1776 pamphlet Common Sense, immensely influential in calling for independence from Great Britain, also “counted copyright agitation among his many other revolutionary interests.” 5John William Tebbel, 1 A History of Book Publishing in the United States 138 (1972). In a 1782 pamphlet, Paine used the introduction to call attention to the pirating of works by French writer Abbe Raynal, saying “It may with propriety be remarked, that in all countries where literature is protected, and it never can flourish where it is not, the works of an author are his legal property; and to treat letters in any other light than this, is to banish them from the country, or strangle them in the birth.” 6Paine, On the Affairs of North America: In Which the Mistakes in the Abbe’s Account of the Revolution of Amreica [sic] are Corrected and Cleared Up (1782). Paine added, in a passage that demonstrated that his thoughts on copyright were consistent with the Republican ideals he espoused in his political writings,

The state of literature in America must one day become a subject of legislative consideration. Hitherto it hath been a disinterested volunteer in the service of the revolution, and no man thought of profits: but when peace shall give time and opportunity for study, the country will deprive itself of the honour and service of letters and the improvement of science, unless sufficient laws are made to prevent depredations on literary property.

These sentiments were shared by Noah Webster, who wrote in a letter to Connecticut representative John Canfield, “America must be as independent in literature as in Politics, as famous for arts as for arms.” 7Oren Bracha, Commentary on the Connecticut Copyright Statute 1783, in Primary Sources on Copyright (1450-1900), (2008). citing Noah Webster, Letters of Noah Webster ed. H.R. Warfel (New York: Literary Publishers, 1953), 1-4.

Webster, who would go on to create the dictionary bearing his name, played perhaps the most pivotal role in getting states to recognize copyright. Having recently completed his second book on grammar and spelling for schoolchildren, Webster began efforts to lobby the states for copyright laws, beginning in New Jersey in 1782. Then, on to Connecticut in October of that year (at which time he wrote the letter quoted above), returning in January of 1783 where he learned of the plans to pass a general copyright act.

On January 6, 1783, author and explorer John Ledyard had petitioned the Connecticut General Assembly for copyright protection for his latest work, A Journal of Captain Cook’s Last Voyage to the Pacific Ocean. On January 29, 1783, the General Assembly instead passed a general copyright statute, the first in the colonies.

Titled “An Act for the Encouragement of Literature and Genius”, the statute’s preamble indicated its foundations in natural rights and its goals to encourage publication, which was seen as providing a benefit to the public and the nation.

Whereas it is perfectly agreeable to the Principles of natural Equity and Justice, that every Author should be secured in receiving the Profits that may arise from the Sale of his Works, and such Security may encourage Men of Learning and Genius to publish their Writings, which may do Honour to their Country, and Service to Mankind.

The statute also provided a public interest requirement that authors and publishers provide sufficient copies of books at reasonable prices.

Along with Ledyard and Webster, others were striving for a copyright act, including historian Jeremy Belknap and author and politician Joel Barlow. Barlow wrote to Elias Boudinot, president of the Continental Congress in 1783, calling on him to protect the rights of authors. Barlow’s letter would end up playing an influential role in the foundations of U.S. copyright law. It both pressed the issue forward and established its starting points. Barlow’s exhortation for protecting the natural rights of authors would be reflected in the Continental Congress’s and State’s language to follow, and his suggestion to follow the Statute of Anne was also heeded.

In it, Barlow also echoed the appeals to pride in the new nation that Paine and Webster used. Said Barlow,

America has convinced the world of her importance in a political & military line by the wisdom, energy & ardor for liberty which distinguish the present era. A literary reputation is necessary in order to complete her national character; and she ought to encourage that variety & independence of genius, in which she is not excelled by any nation in Europe. As we have few Gentlemen of fortune sufficient to enable them to spend a whole life in study, or enduce others to do it by their patronage, it is more necessary, in this country than in any other, that the rights of authors should be secured by law.

According to Continental Congress records, the Connecticut Act was forwarded to the Continental Congress two days after it was proposed, on January 8th, followed another two days later by Barlow’s letter. 824 Journals of the Continental Congress 211 (1783).

Continental Congress representative Hugh Williamson of North Carolina moved that a committee be formed “to consider the most proper means of cherishing genius and useful arts through the United States by securing to authors or publishers of new books their property in such works.” That motion carried on March 10th, with the Congress appointing a committee consisting of Williamson, Ralph Izard of South Carolina, and James Madison.

On May 2, the committee issued its report. Records indicate the committee “to whom were referred sundry papers and memorials from different persons on the subject of literary property, [are] persuaded that nothing is more properly a man’s own than the fruit of his study, and that the protection and security of literary property would greatly tend to encourage genius.” 924 Journals of the Continental Congress 326. The Continental Congress issued a recommendation encouraging States to pass copyright legislation. By that time, Massachusetts and Maryland had already joined Connecticut in passing a general copyright law. It is likely that Noah Webster shared some responsibility for the the Massachusetts law, as he had been in that state, along with New York, that winter to lobby the representatives.

The Massachusetts copyright act began with a preamble explaining the foundations and motivations for the law:

Whereas the improvement of knowledge, the progress of civilization, the publick weal of the Commonwealth, and the advancement of human happiness, greatly depend on the efforts of learned and ingenious persons in the various arts and sciences: As the principal encouragement such persons can have to make great and beneficial exertions of this nature, must exist in the legal security of the fruits of their study and industry to themselves, and as such security is one of the natural rights of all men, there being no property more peculiarly man’s own than that which is produced by the labour of his mind.

After the Continental Congress’s recommendation, Webster redoubled his efforts, visiting the “middle and southern states” in May 1785. That November, Webster visited General Washington, who gave him letters addressed to members of the Virginia legislature to assist Webster in his efforts. Webster also lobbied James Madison personally to pass a copyright act, including through a letter to the Virginiana legislator in 1784. Madison would eventually write the act himself. The bill, “An act for securing to the authors of literary works an exclusive property therein for a limited time,” was presented to the Virginia House of Delegates by Madison on November 16, 1785.

Webster’s successful run fell short, however, when he reached Delaware. He petitioned the legislature, saying

Among all modes of acquiring property, or exclusive ownership, the act or  operation of creating or making seems to have the first claim. If anything can justly give a man an exclusive right to the occupancy and enjoyment of a thing it must be that he made it. The right of a farmer and mechanic to the exclusive enjoyment and right of disposal of what they make or produce is never questioned. What, then, can make a difference between the produce of muscular strength and the produce of the intellect?

But while a committee was formed to draft a copyright bill, the bill was deferred at the end of the legislative session, never to resume. All in all though, not too bad. Following the Continental Congress’s recommendation, twelve of the thirteen original states — all but Delaware — had enacted copyright legislation within three years. And over half, like Massachusetts, referred explicitly to the natural rights foundation of the law. 10The others included Connecticut, Georgia, New Hampshire, North Carolina, New York, and Rhode Island.

Toward a Federal Copyright Power

Within a year of the last state copyright act going into effect (That honor goes to New York, which passed a copyright act on April 29th, 1786) there were calls to amend the Articles of Confederation that governed the Continental Congress. Once this Convention assembled however, in May 1787, delegates agreed that the goal was not amendment but drafting of an entirely new Constitution. From that point, the delegates moved quickly:

The Convention kicked off May 14, 1787. On June 23, a Committee on Detail was established to draft a document that incorporated the various plans and proposals from the Convention. The Committee presented the first draft of the Constitution to the Convention on August 6. On September 8, a Committee on Style was created to incorporate changes brought up by delegates after discussing the first draft and revise the text of the Constitution. This Committee presented the final draft to the Convention on September 12, who ratified and signed it on September 17. And that’s how you make an America. 11Copyright and the Constitution (September 12, 2010).

James Madison played a pivotal role in drafting the Constitution. In the April before the Convention, he sat down to write a memorandum to the chairman of the Convention detailing a dozen Vices of the Political System of the United States. Among these vices was a “want of concert in matters where common interest requires it.” Madison wrote that this defect was most noticeable concerning commercial affairs, but it was also felt in “the want of uniformity in the laws concerning naturalization & literary property.”

Considering the enormity of the issues facing the delegates, it should not be surprising that copyright was not a high priority. It was not included in the first draft of the Constitution, on August 6, and would not be proposed until the waning days of the Convention. 12Some suggest that South Carolina delegate Charles Pinckney included authority to secure copyrights in the Plan he submitted on May 28th, which would move the genesis of the clause a few months earlier. However, at least one scholar has concluded that the evidence does not support this. See Dotan Oliar, The (Constitutional) Convention on IP: A New Reading, 57 UCLA Law Review 421 (2009).

On August 18, James Madison and Charles Pinckney proposed a number of enumerated powers to vest in the legislative branch of the federal government. Among these, Madison proposed that Congress have the power “to secure to literary authors their copyrights for a limited time” while Pinckney proposed the similar power “to secure to authors exclusive rights for a certain time.” All were referred to the Convention’s Committee on Detail without discussion. 132 The Records of the Federal Convention of 1787, at 321–22, 324–35. The final version of the Copyright Clause (which also incorporated a authority to secure patents) was presented to the Convention on September 5, where it was agreed to without any objections. 14Id. at 509. There is no evidence that the change in wording between the proposed powers and the final version was intended to be substantive rather than merely stylistic.

The Copyright Clause in the Court of Public Opinion

After September 17, the newly drafted Constitution went to the Continental Congress for approval on September 28, and then referred to the states to be ratified. Reflecting the low amount of attention the power received during the Convention, there were few mentions of the power during ratification debates.

James Madison did refer to the Clause in the Federalist Papers, written along with John Jay and Alexander Hamilton to drum up support for ratifying the Constitution, but only once, and only very briefly. In Federalist Papers 43, Madison wrote

The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provision for either of the cases, and most of them have anticipated the decision of this point, by laws passed at the instance of Congress.

George Mason, a delegate to the Continental Convention from Virginia became one of the Constitution’s most strenuous critics, and penned a series of Objections explaining his reasons for not signing the final draft. Among these, he warned that “Under their own construction of the general clause at the end of the enumerated powers, the Congress may grant monopolies in trade and commerce, constitute new crimes, inflict unusual and severe punishments, and extend their power as far as they shall think proper.” 15Objections of the Hon. George Mason, one of the Delegates from Virginia in the Late Continental Convention, to the Proposed Federal Constitution; Assigned as His Reasons for not Signing the Same (Oct. 1787). Mason was referring to the Necessary and Proper Clause. But this and his other objections drew a response from North Carolina’s James Iredell, a strong supporter of the Constitution and future Supreme Court Justice. Iredell explained that the Necessary and Proper Clause was not an independent grant of authority; it could only be exercised in conjunction with authority that the Constitution expressly granted Congress. Iredell then went on to confirm that none of Mason’s specific dangers could come to fruition through Congress’s delegated powers. When he looked at the possibility that “Congress may grant monopolies in trade and commerce,” Iredell remarked in a footnote

One of the powers given to Congress is, “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” I am convinced Mr. Mason did not mean to refer to this clause, he is a gentleman of too much taste and knowledge himself to wish to have our government established upon such principles of barbarism as to be able to afford no encouragement to genius. 16Reprinted by Griffith John McRee in Life and correspondence of James Iredell, vol. 2, pg. 186 (1863).

At another point in his answer to Mason’s objections, Iredell noted that Congress could not infringe the freedom of speech and press through the Copyright Clause:

The liberty of the press is always a grand topic for declamation, but the future Congress will have no other authority over this than to secure to authors for a limited time an exclusive privilege of publishing their works. This authority has been long exercised in England, where the press is as free as among ourselves or in any country in the world; and surely such an encouragement to genius is no restraint on the liberty of the press, since men are allowed to publish what they please of their own, and so far as this may be deemed a restraint upon others it is certainly a reasonable one, and can be attended with no danger of copies not being sufficiently multiplied, because the interest of the proprietor will always induce him to publish a quantity fully equal to the demand-besides, that such encouragement may give birth to many excellent writings which would otherwise have never appeared. 17Answers to Mr. Mason’s Objections to the New Constitution Recommended by the Late Convention at Philadelphia, in Pamphlets on the Constitution of the United States, pg. 361. Alexander Hamilton implicitly made a similar argument regarding the liberty of the press and the copyright clause in the Federalist Papers number 84, when he wrote, “Why, for instance, should it be said that the liberty of the press shall not be restrained, when no power is given by which restrictions may be imposed?”

We see the Clause come up during the Pennsylvania ratification debates as well, where it was mentioned by influential politician Thomas McKean, who was addressing possible objections to the Constitution. He noted none regarding the clause, pointing out instead the need for national uniformity in protecting authors.

[T]he power of securing to authors and inventors the exclusive right to their writings and discoveries, could only with effect be exercised by Congress. For, sir, the laws of the respective States could only operate within their respective boundaries, and therefore, a work which has cost the author his whole life to complete, when published in one State, however it might there be secured, could easily be carried into another State, in which a republication would be accompanied with neither penalty nor punishment—a circumstance manifestly injurious to the author in particular, and to the cause of science in general. 18Thomas McKean Speaking at the Pennsylvania Convention on the Ratification of the Federal Constitution.

The Constitution would eventually be ratified by the States, and it went into effect on March 4, 1789. The first Congress exercised its authority under the Copyright Clause not too long after, with George Washington signing into law the first U.S. copyright act on May 31, 1790.

References   [ + ]

1. Joseph Story, Commentaries on the Constitution of the United States, Book 3, Chapter 19 (1833).
2. 36 U.S.C. § 106.
3. Horace Scudder, Noah Webster: American Man of Letters (Boston: 1890).
4. The first was granted to John Usher in 1672 to print and publish the laws of the Massachusetts colony. The first attempt by an author, rather than a publisher, to seek exclusive rights to his work came in 1772 from musician William Billings, though he was ultimately unsuccessful.
5. John William Tebbel, 1 A History of Book Publishing in the United States 138 (1972).
6. Paine, On the Affairs of North America: In Which the Mistakes in the Abbe’s Account of the Revolution of Amreica [sic] are Corrected and Cleared Up (1782).
7. Oren Bracha, Commentary on the Connecticut Copyright Statute 1783, in Primary Sources on Copyright (1450-1900), (2008). citing Noah Webster, Letters of Noah Webster ed. H.R. Warfel (New York: Literary Publishers, 1953), 1-4.
8. 24 Journals of the Continental Congress 211 (1783).
9. 24 Journals of the Continental Congress 326.
10. The others included Connecticut, Georgia, New Hampshire, North Carolina, New York, and Rhode Island.
11. Copyright and the Constitution (September 12, 2010).
12. Some suggest that South Carolina delegate Charles Pinckney included authority to secure copyrights in the Plan he submitted on May 28th, which would move the genesis of the clause a few months earlier. However, at least one scholar has concluded that the evidence does not support this. See Dotan Oliar, The (Constitutional) Convention on IP: A New Reading, 57 UCLA Law Review 421 (2009).
13. 2 The Records of the Federal Convention of 1787, at 321–22, 324–35.
14. Id. at 509.
15. Objections of the Hon. George Mason, one of the Delegates from Virginia in the Late Continental Convention, to the Proposed Federal Constitution; Assigned as His Reasons for not Signing the Same (Oct. 1787).
16. Reprinted by Griffith John McRee in Life and correspondence of James Iredell, vol. 2, pg. 186 (1863).
17. Answers to Mr. Mason’s Objections to the New Constitution Recommended by the Late Convention at Philadelphia, in Pamphlets on the Constitution of the United States, pg. 361. Alexander Hamilton implicitly made a similar argument regarding the liberty of the press and the copyright clause in the Federalist Papers number 84, when he wrote, “Why, for instance, should it be said that the liberty of the press shall not be restrained, when no power is given by which restrictions may be imposed?”
18. Thomas McKean Speaking at the Pennsylvania Convention on the Ratification of the Federal Constitution.