FUTURE SHOCK AND THE COPYRIGHT ACT OF 1976:

IS MERELY MAKING A COPYRIGHTED WORK AVAILABLE FOR DIGITAL TRANSMISSION A VIOLATION OF § 106(3)?

Draeke Weseman*

“Future Shock” is a psychological state that results when technology outpaces human adjustment. The Copyright Act of 1976 was supposed to introduce a law that would cover all technology “now known or later developed.” This was Congress’ attempt at creating a law that could not be outpaced by technology.

But the Copyright Act has failed to keep pace. This article advances the claim that Congress did not adequately anticipate the changes in distribution technology that would arise during the digital age. This paper supports that claim by reporting the difficulty courts are having in analyzing whether making a copyrighted work available for digital transmission violates the section 106(3) distribution right. As this paper shows, future shock has resulted because Congress failed to define distribution at all, much less in a way that would not be outpaced by technology.

Thus, as this paper concludes, Congress must revisit the Copyright Act to update the definition of distribution Until then, the individual user – caught between new technology and outdated law – should not be subjected to hundred-thousand dollar penalties by future-shocked judges and juries.

* B.A., University of Minnesota; J.D. Candidate 2009, William Mitchell College of Law.

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TABLE OF CONTENTS

PAGE TABLE OF CONTENTS ........................................................................................................ i

INTRODUCTION: FUTURE SHOCK ...................................................................................... 1

I. PEER-TO-PEER TECHNOLOGY ....................................................................................... 2

II. LAWSUITS .................................................................................................................. 4

A. Evidence ............................................................................................................. 5

B. The “Making Available” Claim........................................................................... 6

C. Arguments........................................................................................................... 7

1. Is actual dissemination required?................................................................. 7

2. Is distribution synonymous with publication?.............................................. 8

3. Is a digital file a “phonorecord” that can be “transferred?”. ......................... 9

4. Is a “making available” right required by international treaty obligations?............................................................................................... 10

5. Is a “making available” right required by public policy? ........................... 12

III. IMPORTANT RECENT DECISIONS .............................................................................. 12

A. Interscope Records v. Rodriguez ....................................................................... 13

B. Atlantic v. Brennan ........................................................................................... 14

C. Elektra v. Barker............................................................................................... 15

D. London-Sire v. Doe 1 ........................................................................................ 19

E. Atlantic v. Howell.............................................................................................. 20

1. Part 1.. ...................................................................................................... 20

2. Part 2. ....................................................................................................... 21

IV. CONLCUSION: “NOW KNOWN OR LATER DEVELOPED” ............................................. 24

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Introduction: Future Shock

Future Shock is the dizzying disorientation brought on by . . . . greatly accelerated change in society. It arises from the superimposition of a new culture on an old one.1 – Alvin Toffler, 1970 In 1970, the sociologist Alvin Toffler published Future Shock, a book defining

what happens when technology outpaces human adjustment. Toffler describes “future shock” as a psychological state that results when individuals and societies undergo technological change too quickly.2 At the intersection of music, digital technology and copyright law, we find ourselves in this state of “future shock.” Peer-to-peer networks, file-sharing, MP3’s, ISP’s, downloading – these are not the terms and technology of the Copyright Act from just 30 years ago. Yet the already “old” Act is being forced to fit the new legal situations arising from new technology defined in such new terms.

It was supposed to be this way – minus the future shock. 3 Congress enacted the Copyright Act of 1976 (“Copyright Act” or “Act”) under the pressures of an emerging global economy and the incredible acceleration of technology. If the Copyright Act was to secure a copyright term for the life of the creator plus 50 years, as then required by international minimum standards, Congress recognized it could not know the possible technological mediums or methods in which copyrighted works would be embodied. Thus, the Copyright Act states that “[c]opyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”4 The Act went further, defining “copies” as “material objects . . . in which a work is fixed by any method now known or later developed. . . .”5 This was Congress’ attempt at preventing future shock in copyright law: Congress sought to create a set of laws that would protect copyrights in any imaginable technology of the future – “now known or later developed” – without having to rewrite the underlying law.

My concern is that Congress was in fact not successful at preventing future shock within at least one specific area: digital distribution. I am concerned that Congress, blinded by the foreseeable age of digital reproduction technology then arriving, failed to accommodate the age of digital distribution technology just beyond the horizon. Now, having technologically arrived at that horizon, the courts are left scrambling to adjudicate allegations of copyright infringement through digital distribution systems without 1 ALVIN TOFFLER, FUTURE SHOCK 11 (Bantam 1984). 2 See Id. 3 See Frank H. Easterbrook, Cyberspace and the Law of the Horse, 1996 U. CHI. LEGAL. F. 207 (1996) (advising the creation of clear property rights, rules, and bargaining institutions for cyberspace) (“I don’t know much about cyberspace; what I do know will be outdated in five years (if not five months!)). 4 17 U.S.C. § 102(a) (emphasis added). 5 17 U.S.C. § 101 “copies” (emphasis added).

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adequate Congressional guidance. The most glaring example of the future shock phenomenon in copyright law arises in the recent litigation carried out by members of the recording industry against individual peer-to-peer users.

At the heart of every lawsuit filed by the members of the recording industry against individual peer-to-peer users is some variation of the following boilerplate complaint:

19. Plaintiffs are informed and believe that each Defendant, without the permission or consent of Plaintiffs, has used, and continues to use, an online media distribution system to download, distribute to the public, and/or make available for distribution to others, certain of the Copyrighted Recordings.6 In this paper, I examine the recording industry’s claim that merely making a file

available for distribution to others is copyright infringement. Thus, the question narrowly tailored for the courts is this: Is making a copyrighted work available for digital transmission a violation of a copyright owner’s § 106(3) distribution right? It is a question of increasing importance in the age of digital distribution. It is also a question that, I conclude, Congress has not prepared the courts to answer.

Part I examines briefly the history of peer-to-peer technology and its basic architecture. Part II discusses the litigation against peer-to-peer users, the arrival of a “making available” claim, the issues that arise from that claim, and the various arguments seen so far. Part III shows how the courts have struggled to apply copyright law to digital distribution. Part IV concludes this paper by recommending that Congress clear up certain ambiguities that contribute to the current state of future shock in copyright law.

I. PEER-TO-PEER TECHNOLOGY

With a p2p system, you can share your favorite songs with your best friend – or your 20,000 best friends.7 In June of 1999, peer-to-peer technology officially arrived.8 Shawn Fanning, at

seventeen and a college drop-out, had launched the peer-to-peer network9 Napster.10

6 See, e.g., Complaint for Copyright Infringement at 1, London-Sire Records, Inc. v. Doe 3, 2008 WL 887491 (D. Mass. Mar. 31, 2008) (No. 04-cv-12434) (emphasis added); Complaint for Copyright Infringement at 3, Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340). 7 LAWRENCE LESSIG, FREE CULTURE 67 (2004). 8 See Niels Schaumann, Copyright Infringement and Peer-to-Peer Technology, 28 WM. MITCHELL L. REV. 1001, 1020 (2002). 9 The hallmark architectural feature of peer-to-peer networks is the absence of a central computer server. Hence, “peer-to-peer” and not “client-server.” See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 919-20 (2005). 10 For a timeline, see Napster’s High and Low Notes, BUSINESSWEEK, August 14, 2000 http://www.businessweek.com/2000/00_33/b3694003.htm (last visited April 14, 2008).

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Napster made peer-to-peer file sharing famous and within 18 months there were nearly 80 million registered Napster users.11 Shawn Fanning even found himself on the cover of Time Magazine.12 In almost an instant, the spread of peer-to-peer technology facilitated an entirely new type of behavior – the anonymous digital distribution of information – or file-sharing.13

It was like nothing before.14 Peer-to-peer users could communicate directly with each other to exchange files and information.15 Because files and information could be exchanged between any computers connected to the network without a central server to mediate the exchange, users needed less bandwidth, could transfer information faster, and could avoid a network-wide shutdown from the possibility of a server overload.16 These benefits made peer-to-peer networks popular among individual users as well as universities, government agencies, corporations, and libraries.17

The absence of a central server in peer-to-peer networks also created anonymity or pseudonymity for individual users.18 Computers interacting directly with each other learned only the Internet Protocol (IP) address of the other computer and whatever corresponding user-name pseudonym was transmitted by the software.19 Furthermore, file and information exchanges between computers on a peer-to-peer network were not easily observable by a third party.20

These architectural details – the anonymity of users and inability of third-parties to observe transactions on a peer-to-peer network – created significant problems for content owners trying to enforce their copyright against individual users. It was the recording industry’s worst nightmare come true. The solution: sue.

11 LESSIG, supra note 7, at 67. 12 Meet the Napster, TIME, Oct. 2, 2000, http://www.time.com/time/covers/0,16641,2000102,00.html (last visited April 14, 2008). 13 Stanford Professor Lawrence Lessig documents at least four classes of sharing: (1) sharing as a substitute for purchasing; (2) sharing to sample before purchasing; (3) sharing that which is impossible or not easily purchased; (3) sharing that which is intended to be shared. LESSIG, supra note 7, at 68-69. 14 For a thorough explanation of peer-to-peer technology, see Schaumann, supra note 8, at 1019-1023. 15 Id. 16 Id. See also LESSIG, supra note 7, at 79 (noting peer-to-peer technology enables a vastly superior mode of distribution). 17 See London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491, at *2 (D. Mass. Mar. 31, 2008). 18 Id. 19 Id. 20 See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 920, n.1 (2005) (“Most relevant here, it is more difficult to control the content of files available for retrieval and the behavior of users.”).

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II. LAWSUITS

Our goal is not to be vindictive or punitive, it is simply to get peer-to-peer users to stop offering music that does not belong to them.21

It is no exaggeration to say that the recording industry sued everything that touched digital distribution or peer-to-peer technology. Even before Napster was sued, the recording industry sued Diamond Rio, the maker of the first portable MP3 player.22 Subsequently Napster,23 Aimster,24 Grokster and KaZaA,25 among others, were sued. Each lawsuit was essentially the same: the courts found the technology provider liable for contributory copyright infringement. But despite the lawsuits, peer-to-peer networks continued to thrive.

So, on September 8, 2003, members of the Recording Industry Association of America (the “RIAA”) filed lawsuits against 261 individuals for copyright infringement.26 To those watching from the legal community it made little sense.27 To the general public, it was a terrible PR move - even children were sued.28 Yet the RIAA merely noted that “parents need to be aware of what their children are doing on their computers” and continued filing lawsuits. 29 According to the Electronic Frontier

21 John Borland, RIAA Sues 261 File Swappers, CNET news.com, Sept. 8, 2003, http://www.news.com/RIAA-sues-261-file-swappers/2100-1023_3-5072564.html?tag=st.nl (last visited April 14, 2008) (emphasis added) (quoting Cary Sherman, RIAA president). 22 See Recording Indus. Ass'n of Am. v. Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1078 (9th Cir. 1999). 23 See A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). 24 See In re Aimster Copyright Litig., 334 F.3d 643 (7th Cir. 2003) (Posner, J.). 25 See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). (Author’s note: Grokster was the U.S. licensee of KaZaA.) 26 See THE ELECTRONIC FRONTIER FOUNDATION, RIAA V. THE PEOPLE: FOUR YEARS

LATER 1 (2007), http://w2.eff.org/IP/P2P/riaa_at_four.pdf (visited Apr. 14, 2008) [hereinafter FOUR YEARS]. 27 See In re Aimster, 334 F.3d at 643 (citing Randal C. Picker, Copyright as Entry Policy: The Case of Digital Distribution, 47 ANTITRUST BULL. 423, 442 (2002) (“Chasing individual consumers is time consuming and is a teaspoon solution to an ocean problem.”)). But see Schaumann, supra note 8, at 1044 (“Today, however, while enforcement against individual members of the public has not begun in any organized way, there is reason to believe that it soon may.”). 28 John Borland, RIAA Settles with 12-Year-Old Girl, CNET news.com, September 9, 2003, http://www.news.com/RIAA-settles-with-12-year-old-girl/2100-1027_3-5073717.html (last visited April 14, 2008). Brianna Lahara was the first person to reach a settlement agreement with the RIAA. Id. Given that Brianna was just 12 years-old, the RIAA agreed to settle for only $2000 – an amount lower than its typical settlement offer. Id. 29 Id.

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Foundation (the “EFF”), more than 20,000 individuals have been threatened with legal action by the RIAA since 2003.30

A. Evidence To prepare for lawsuits against individual peer-to-peer users, the RIAA gathers

evidence through hired third-party investigators, such as MediaSentry, Inc.31 MediaSentry acts as an undercover user of the peer-to-peer network.32 MediaSentry connects to the network with a computer and searches for the other computers making available the RIAA members copyrighted sound recordings.33 Upon finding such files, MediaSentry downloads them, capturing whatever information it can about the computer from which the files were downloaded.34 The typical information includes the peer-to-peer user’s user-name, that user’s IP address35, a list of downloaded songs, and several screen captures indicating the date and time at which the files were made available and downloaded by Media Sentry.36

After the files are downloaded, the RIAA reviews a listing of the music files that the user has offered for download in order to determine whether they appear to be copyrighted sound recordings.37 The RIAA also listens to the downloaded music files from these users in order to confirm that they are, indeed, illegal copies of sound recordings whose copyrights are owned by RIAA members.38 Allegedly, this verifies that they can form the basis for a lawsuit.39 But the anonymity and privacy of peer-to-peer networks creates substantial problems for the RIAA, limiting what they can allege in their copyright infringement complaints.

There are essentially three problems with the evidence gathered by MediaSentry which limit what the recording industry can allege. First, MediaSentry’s downloads are

30 Among those sued were children, the elderly, veterans, the recently passed-away. FOUR YEARS, supra note 24, at 6. Amy Weiss, spokeswomen for the RIAA in 2003 justified it this way: “When you go fishing with a driftnet, sometimes you catch a dolphin.” See Dennis Roddy, The Song Remains the Same, Post-gazette.com, Sept. 14, 2003 http://www.post-gazette.com/columnists/200301914edroddy0914p1.asp (last visited April 14, 2008). 31 See London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491, at *2-3 (D. Mass. Mar. 31, 2008). 32 Id. 33 Id. 34 Id. 35 Id. (noting that most computers do not have a “static” IP address, but rather are assigned an IP address within a certain range, or a “dynamic” address). 36 See London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491, at *3 (D. Mass. Mar. 31, 2008). 37 Id. 38 Id. 39 Id.

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authorized, and thus not themselves copyright infringement.40 Second, MediaSentry gathers no direct evidence that those files were previously or subsequently actually transferred to any other computer.41 Third, MediaSentry cannot gather evidence that the files made available on the peer-to-peer user’s computer are not legitimate copies “space-shifted”42 from the user’s own CD collection. Thus, the only claim generally supported by direct evidence is the recording industry’s “making available” claim.

B. The “Making Available” Claim

As noted in the introduction, every lawsuit filed by the members of the recording

industry against peer-to-peer users includes some variation of the following complaint: 19. Plaintiffs are informed and believe that each Defendant, without the permission or consent of Plaintiffs, has used, and continues to use, an online media distribution system to download, distribute to the public, and/or make available for distribution to others, certain of the Copyrighted Recordings.43

The claim is seemingly straightforward: making copyright works available for distribution to others violates the copyright owner’s exclusive distribution right under section 106(3). Under section 106(3) of the Copyright Act:

The owner of copyright . . . has the exclusive rights to do and to authorize any of the following: . . . (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending

The recording industry reads this to include a direct “making available” claim. But this assertion by the recording industry - that there is an independent “making available” right within section 106(3) – has been challenged by peer-to-peer users and judges as failing to state a claim upon which relief can be granted.44 In doing so, several key issues arise. Is

40 Id. at *7 (“Arguably . . . MediaSentry's own downloads are not themselves copyright infringements because it is acting as an agent of the copyright holder, and copyright holders cannot infringe their own rights.”). But see Order, Atl. Recording Corp. v. Howell, No. CV-06-02076, at *13 (D. Ariz. Apr. 28, 2008) (finding MediaSentry’s downloads to be unauthorized.). 41 Id. at *16. 42 Cf. Recording Indus. Ass'n of Am. v. Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1078 (9th Cir. 1999). 43 See, e.g., Complaint for Copyright Infringement at 1, London-Sire Records, Inc. v. Doe 1, 2008 WL 887491 (D. Mass. Mar. 31, 2008) (No. 04-cv-12434) (emphasis added); Complaint for Copyright Infringement at 1, Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340). 44 The challenges arise most often in the form of a peer-to-peer user initiated motion to dismiss under Federal Rule of Civil Procedure 12(b)(6); or when a court is considering

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actual dissemination required before distribution has occurred?45 Is distribution synonymous with publication?46 Is a digital file a “phonorecord” that can be “transferred?”47 Is a “making available” right required by international treaty obligations?48 Public policy?49

C. Arguments

The arguments discussed in this section come from a variety of sources: peer-to-peer users, the recording industry, the MPAA, the EFF, and others. For simplicity’s sake, the arguments are organized by issue and present the support raised both for the recording industry and for peer-to-peer users. Although different members of the recording industry and different peer-to-peer users are the subject of various cases, throughout this section, they are referred to only as “the recording industry” or “peer-to-peer users.”

1. Is actual dissemination required?

The roots of this issue – whether actual dissemination is required for distribution to occur under section 106(3) - arguably trace back to a case, ironically, about genealogical roots. In the late 1980s, the Church of Jesus Christ of Latter-Day Saints (the Church) acquired a single legitimate microfiche copy of genealogical research materials prepared by Donna Hotaling.50 The Church added the materials to its main library’s collection in Salt Lake City, Utah, and subsequently sent copies made by the Church to other branch libraries.51 Ms. Hotaling discovered these copies in the early 1990s and sued the Church in 1995, alleging that the Church and its libraries infringed her right to distribute the work under section 106(3).52 The Fourth Circuit found in favor of Ms. Hotaling, holding that “distribution occurs, within the meaning of § 106, when a library holds a copy in its collection, lists the copy in its card file, and makes the copy available to the public.”53

The Hotaling holding has routinely appeared in peer-to-peer litigation, both as citation in support for the recording industry’s “making available” claim,54 and as an

the recording industry-plaintiffs’ request for default judgment under Rule 55; or on a motion for summary judgment under Rule 56. 45 See infra Part II.C.1. 46 See infra Part II.C.2. 47 See infra Part II.C.3. 48 See infra Part II.C.4. 49 See infra Part II.C.5. 50 See Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 201 (4th Cir. 1997). 51 Id. at 202. 52 Id. 53 Id. at 204. 54 See Plaintiffs' Brief in Response to the Amicus Curiae Brief of the Computer & Communications Industry Association and U.S. Internet Industry Association at 1,

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example of bad judicial decision-making.55 Regardless, it raises a critical issue: is merely making the work available to the public, without proof of actual dissemination, enough to infringe the 106(3) distribution right?

In amicus briefs filed by the EFF on behalf of peer-to-peer users the answer has been “No.” The EFF contends that the plain language of section 106(3) requires actual dissemination because there is no “prohibitory language pertaining to offers to distribute, attempts to distribute, or the ‘making available’ of copyrighted works.”56 In short, section 106(3) gives an exclusive right to distribute “certain things” to “certain people” in “certain ways.”57

To the contrary, the recording industry argues that one of the “certain” rights afforded by the plain language of the statute is the right “to do and to authorize any of [the section106 rights].”58 In other words, by making copyright works available to the public, peer-to-peer users directly infringe a copyright owner’s right to authorize distribution.59 Therefore, no proof of actual dissemination or a consummated transfer is required if “making available” can be shown.60

2. Is distribution synonymous with publication?

In efforts to define the section 106(3) distribution right, both the recording industry and peer-to-peer users have looked to the definition of “publication” within section 101 of the Copyright Act. The recording industry argues that distribution and publication are synonymous, while peer-to-peer users contend that the two words are substantially different. Publication is defined in section 101 as:

[T]he distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.61

Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340) [hereinafter Plaintiffs, Barker Brief in Response to CCIA/USIIA]. 55 Amicus Curiae Brief of The Electronic Frontier Foundation in Opposition to Plaintiffs' Motion for Summary Judgment at 4, Atl. Recording Corp. v. Howell, No. CV-06-02076 (D. Ariz. Jan. 11, 2008) [hereinafter EFF, Howell Brief] 56 Id. at 6 (noting that 17 U.S.C. § 901(a)(4) and 35 U.S.C. § 271(a) includes “offer to sell” in defining scope of rights in semiconductor mask works and patents, respectively). 57 Id. 58 Plaintiffs' Supplemental Brief Support of Their Motion for Summary Pursuant to Court's Order of October 3, 2007 at 6, Atl. Recording Corp. v. Howell, No. CV-06-02076 (D. Ariz. Dec. 07, 2007) [hereinafter Plaintiffs, Howell Supp. Brief]. 59 Id. 60 Id. 61 17 U.S.C. § 101 “publication” (2006) (emphasis added).

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Thus, the recording industry asserts, it is a logical conclusion that if publication includes “offering to distribute” and publication is distribution, then distribution must also include the “offering to distribute.”62 For support, the recording industry cites Congress, the Supreme Court, and the U.S. Copyright Office. First, the recording industry argues that the legislative history of the 1976 Copyright Act shows that Congress intended distribution and publication to be synonymous.63 Second, in Harper v. Row, the Supreme Court seemed to agree, relying on legislative history to conclude that section 106(3) “establishes the exclusive right of publications.”64 And third, the recording industry cites a September 25, 2002 letter from Marybeth Peters, the Register of Copyrights, to U.S. Representative Howard L. Berman, where Ms. Peters writes: “[M]aking [a work] available for other users of the peer to peer network to download . . . . constitutes an infringement of the exclusive distribution right, as well of the reproduction right.”65 In reply, peer-to-peer users contend that the recording industry is merely “attempt[ing] to confuse the court.”66 Peer-to-peer users assert that Congress’ inclusion of “offering to distribute” under the section 101 definition of publication, while excluding that same phrase from the section 106(3) delineation of the distribution right, indicates that Congress intended publication and distribution to mean different things. In other words, section 106(3) intentionally tracks the first sentence of the definition of publication in section 101, but not the second.67 Peer-to-peer users also point out that where publication and distribution have been found synonymous, such as in legislative history and in Harper v. Row, it was the right of first publication that was equated with distribution, and not publication in general.68

3. Is a digital file a “phonorecord” that can be “transferred”? The issue of whether a digital file is “phonorecord” that can be “transferred” arises from the particular language of section 106(3), which if read closely, appears to limit the distribution right to “transfers” of “copies” and “phonorecords.” Section 101

62 Plaintiffs, Howell Supp. Brief, supra at note 58, at 6. 63 Id. (citing H.R. REP. NO. 1476, 94th Cong., 2d Sess. 62, reprinted in 1976 U.S.C.C.A.N. 5659, 5675-76). 64 Id. (citing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552 (1985)) 65 Plaintiffs, Barker Brief in Response to CCIA/USIIA, supra note 53, at (citing Letter from Marybeth Peters to Rep. Howard L. Berman at 1 (Sept. 25, 2002), reprinted in Piracy of Intellectual Property on Peer-to-Peer Networks, Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the House Comm. on the Judiciary 107th Cong. 114-15 (2002)). 66 See Reply Memorandum of Law of Defendant Tenise Barker in Support of Her Motion to Dismiss the Complaint at 1, Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340) [hereinafter Defendant, Barker Reply Brief] 67 Id. (citing PAUL GOLDSTEIN, 2 COPYRIGHT 5.5.1, n.16 (2d ed. 1996)). 68 Id. (quoting the House Judiciary: “Under this provision the copyright owner would have the right to control the first public distribution of an authorized copy ... of his work.” H.R. Rep. No. 94-1476, at 62 (1976) (emphasis added)).

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defines “phonorecords” as “material objects in which sounds . . . are fixed by any method now known or later developed, and from which the sounds . . . can be communicated, either directly or with the aid of a machine or device.” This creates fruitful ground for argument.

On behalf of peer-to-peer users, the EFF contends that although a digital file stored on computer hard-drive is a “material object” under section 101, and therefore, a phonorecord, it is not “transferred” in the context of peer-to-peer file-sharing.69 The EFF asserts that digital files cannot be “transferred” because at the end of a peer-to-peer transmission, two digital files exist – the original and a copy of the original.70 Thus, while the 106(1) reproduction right might be infringed71, the transmission of a digital file from one peer to another is not distribution within the scope of section 106(3).72 For that to happen, the peer-to-peer user would have to be passing out hard-drives with digital files already stored on them. The recording industry disagrees, contending that section 106(3) only requires a work to be transferred from one location to another in such a way that the recipient has a “material object embedded with the work” at the end of the transfer.73 To do otherwise would be to “anchor the concept of distribution to the long past.”74 In support, the recording industry cites the Supreme Court cases New York Times Co. v. Tasini and MGM v. Grokster, where the recording industry contends “[a] fundamental presumption” was “that the 106(3) right encompasses digital transmissions.”

4. Is a “making available” right required by international treaty obligations?

As an actor in the global economy, the United States has obligations to the international community. These obligations are the subject of both peer-to-peer users’ and the recording industry’s arguments regarding the viability of the “making available” claim.

In 1996, the World Intellectual Property Organization (WIPO), of which the U.S. is a member, passed the WIPO Copyright Treaty and the WIPO Performances and

69 See Amicus Curiae Brief of The Electronic Frontier Foundation in Support of Defendant's Motion to Dismiss the Complaint at 3, Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340) [hereinafter EFF, Barker Brief]. 70 Id. 71 Section 106(1) grants authors the exclusive right “to reproduce the copyrighted work in copies or phonorecords.” But see Schaumann, supra note 8, at 1036, (concluding that downloading music for personal non-commercial use does not infringe the § 106(1) reproduction right). 72 See EFF, Barker Brief, supra note 69, at 3. 73 See Plaintiffs' Brief in Response to the Amicus Curiae Brief of The Electronic Frontier Foundation at 1, Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340) [hereinafter Plaintiffs, Barker Response Brief to EFF]. 74 Id. (citing Schaumann, supra note 8, at 1037).

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Phonograms Treaty (WPPT).75 Article 6 of the WIPO Copyright Treaty and Article 8 of the WPPT require member countries to have laws in place that achieve the following minimum standards for foreign authors:

Authors of literary and artistic works shall enjoy the exclusive right of authorizing the making available to the public of the original and copies of their works through sale or other transfer of ownership.76 [A]uthors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.77

The recording industry and the MPAA acting as amicus argue that the plain language of the WIPO Copyright Treaty and the WPPT requirements support its interpretation of section 106(3) as including an independent “making available” right.78 In support, the recording industry contends that the WIPO treaties’ use of “making available” is a clear expression that “no consummated transfer is required.”79

Amici arguing on behalf of peer to peer users assert that any “making available” right in the WIPO Copyright Treaty already exists within 106(3) and 106(4)-(6) of the Copyright Act.80 More importantly, the Amici contend that Article 6 of the WIPO Copyright Treaty is limited in the same way that 106(3) is: to “copies” distributed by “transfer of ownership.”81 The WPPT, the Amici contend, is a treaty about performances that refers to “communication to the public,” and therefore does not “justify a distortion of the distribution right” granted by section 106(3).82 In addition, the EFF separately

75 WIPO Copyright Treaty, Dec. 20, 1996, S. Treaty Doc. No. 105-17, 36 I.L.M. 65 (1997); WIPO Performances and Phonograms Treaty, Dec. 20, 1996, S. Treaty Doc. No. 105-17, 36 I.L.M. 76 (1997). 76 WIPO Copyright Treaty, art. 6, supra note 66, S, Treaty Doc. No. 105-117, 36 I.L.M. at 70. 77 WIPO Performances and Phonograms Treaty, art. 8, supra note 66, S, Treaty Doc. No. 105-117, 36 I.L.M. at 83. 78 Plaintiffs, Barker Brief in Response to CCIA/USIIA, note 54, at 6-8; See also Brief of Amicus Curiae Motion Picture Association of America, Inc. (MPAA) in Connection with Defendant's Motion to Dismiss the Complaint at 1, Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340) [hereinafter MPAA, Barker Brief]. 79 See id. 80 See Brief of Amici Curiae Computer & Communications Industry Association and US Internet Industry Association in Connection with Defendant's Motion to Dismiss the Complaint at 12-16, Elektra Entm't Group, Inc. v. Barker, 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008) (No. 05-CV-7340). 81 Id. 82 Id.; see also EFF, Howell Brief, supra note 55, at 11.

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notes that the WIPO Copyright Treaty and the WPPT are concerned with the protection afforded foreign authors, are not self-executing, and lack any independent legal authority.83

5. Is a “making available” right required by public policy?

As bound by the Constitution, the United States has obligations to preserve the

Founder’s intended balance between intellectual property owners and the public. That balance arises from Article I, Section 8, Clause 8 which grants Congress the power to grant intellectual property rights insofar as they “promote the Progress of Science and the Useful Arts.”84 Whether a “making available” right furthers that balance or disrupts it is the subject of arguments raised by both peer-to-peer users and the recording industry. The EFF contends that whatever balance has been reached by current Intellectual Property law is threatened by the inclusion of an independent “making available right.”85 Specifically, the EFF notes that “broadcasters rely on compulsory licenses or negotiated licenses” that would be put in jeopardy and require re-examination.86 Satellite radio broadcasters also understand their transmissions to be covered by statutory licenses that apply only to sections 106(4)-(6).87 Lastly, unknown private contracts would also be potentially upset.88 In response, the recording industry asserts that a “making available claim” is not novel and not an extension of copyright.89 Furthermore, the recording industry contends, that although the EFF “professes to fear” improper application of the copyright law to existing bargained-for relationships, not a “single instance” actually exists.90 As this section and those preceding it have shown, many difficult, unresolved issues surround the litigation between the recording industry and peer-to-peer users. The next section discusses recent decisions by federal district courts on various pre-trial motions related to the “making available” claim. More than any so far, the next section demonstrates the future shock that has resulted at the intersection of digital technology and copyright law.

III. IMPORTANT RECENT DECISIONS

The several cases discussed here, in my opinion, are the most important to date. There are other important cases, such as Capitol Records v. Thomas91, that are not

83 EFF, Howell Brief, supra note 55, at 11 (citing 17 U.S.C. § 104(c) & (d)). 84 U.S. CONST. art. I, § 8, cl. 8. 85 EFF, Barker Brief, supra note 61, at 11-12. 86 Id. 87 Id. 88 Id. 89 See Plaintiffs' Brief in Response to Amicus Brief of The Electronic Frontier Foundation at 13, Atl. Recording Corp. v. Howell, No. CV-06-02076 (D. Ariz. Feb. 06, 2008). 90 Id. 91 See infra Part IV.

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presented here because they lacked depth of analysis into the issues related to the “making available” claim. For simplicity, only the first party is referenced when discussing what are actually multiple recording-industry plaintiffs that filed suit against a peer-to-peer user.

A. Interscope Records v. Rodriguez

On November 14, 2007, Interscope Records filed a complaint against Mr.

Rodriguez for copyright infringement.92 The complaint alleged that Mr. Rodriguez used and continued to use an online media distribution system to make available for distribution to the public Interscope Record's copyrighted recordings.93 After Mr. Rodriguez was served with the summons and complaint by personal service and failed to file a responsive pleading, the Clerk entered default.94 The notice of entry of default was served on Mr. Rodriguez by mail, but Mr. Rodriguez again failed to respond, and Interscope Records filed for entry of default judgment.95

The Court, in determining whether to exercise its discretion to enter default judgment, considered the following seven factors: (1) the possibility of prejudice to the plaintiff, (2) the merits of plaintiff's substantive claim, (3) the sufficiency of the complaint, (4) the sum of money at stake in the action, (5) the possibility of a dispute concerning material facts, (6) whether the default was due to excusable neglect, and (7) the strong policy favoring decisions on the merits. 96 The Court based its decision on the third factor – the sufficiency of the complaint. The Court found that entry of default judgment was not warranted because the complaint failed to sufficiently state a claim upon which relief could be granted.97 The Court explained that under the recent Supreme Court case, Bell Atlantic Corp. v. Twombly, Interscope Records needed to present at least some facts to show the plausibility of its allegations of copyright infringement against the Mr. Rodriguez.98 The Court noted that “other than the bare conclusory statement ‘that on information and belief Defendant has downloaded, distributed and/or made available for distribution to the public copyrighted works,’ [Interscope Records] has presented no facts that would indicate that this allegation is anything more than speculation.”99 In short, Interscope Record’s complaint was “simply a boilerplate listing of the elements of copyright infringement without any facts pertaining specifically to [Mr. Rodriguez],” and therefore, failed under Twombly.

92 Interscope Records v. Rodriguez, No. 06-CV-2485, 2007 WL 2408484 at *1 (S.D. Cal. Aug. 17, 2007). 93 Id. 94 Id. 95 Id. 96 Id. 97 Id. 98 Interscope Records v. Rodriguez, No. 06-CV-2485, 2007 WL 2408484 at *1 (S.D. Cal. Aug. 17, 2007) (citing Bell v. Twombly, 127 S.Ct. 1955 (2007)). 99 Id.

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Interscope Records was granted 30 days to amend its complaint and serve it on Mr. Rodriguez.100 Noticeably, the amended complaint did not include a “making available” claim.101

B. Atlantic v. Brennan

On February 15, 2007, Atlantic filed a copyright infringement action against Christopher David Brennan, who subsequently failed to respond.102 Atlantic filed a motion for Default Judgment.103 In determining whether to grant Default Judgment for Atlantic, the Court considered three factors: (1) “the willfulness of default”; (2) “the existence of a meritorious defense”; and (3) “the possibility of prejudice to the plaintiffs should the default judgment be vacated.”104 Applying the factors, the Court found that Brennan’s willfulness could not be established, that Brennan could have a valid defense against the allegation of making copyrighted recordings available, and that denial of Default Judgment posed no concrete risks to Atlantic.105 The Court elaborated on the issue of whether Brennan might have a meritorious defense.106 In Judge Areton’s view, a multitude of valid defenses possibly existed. First, Brennan might “seek refuge in the fair use doctrine.”107 Second, Atlantic’s allegation of infringement based on “mak[ing] the Copyrighted Recordings available for distribution to others” was “problematic,” because “without actual distribution of copies ... there is no violation [of] the distribution right.”108 Third, the statutory damages available under the Copyright Act could be unconstitutionally excessive; and fourth, the RIAA member’s infringement suits could constitute copyright misuse if the conduct was determined to be anticompetitive.109

100 Id. at *2. 101 Plaintiffs’ First Amended Complaint for Copyright Infringement at 3, Interscope Records v. Rodriguez, No. 06-CV-2485, 2007 WL 2408484 at *1 (S.D. Cal. Aug. 17, 2007) (alleging “[t]he Defendant . . . downloaded and/or distributed to the public”). 102 See Atl. Recording Corp. v. Brennan, 534 F. Supp. 2d 278, 279 (D. Conn. Feb.13, 2008). 103 Id. 104 Id. at 280-81. 105 Id. at 281-83. 106 Id. at 281-82. 107 Id. at 281 (citing 17 U.S.C. § 107.) 108 See Atl. Recording Corp. v. Brennan, 534 F. Supp. 2d 278, 281 (D. Conn. Feb.13, 2008) (citing 4 WILLIAM F. PATRY, PATRY ON COPYRIGHT § 13:9 (2007); id. n. 10 (collecting cases); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1162 (9th Cir. 2007) (affirming the district court's finding “that distribution requires an ‘actual dissemination’ of a copy”)). 109Id. at 282 (citing Zomba Enters., Inc. v. Panorama Records, Inc., 491 F.3d 574, 588 (6th Cir. 2007); UMG Recordings, Inc. v. Lindor, No. 05-1095, 2006 WL 3335048, at *4 (E.D.N.Y. 2006)).

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In addition, the Court also conducted an independent analysis of whether Atlantic’s complaint adequately stated a claim upon which relief could be granted.110 The Court noted the similarities between Atlantic’s complaint against Brennan and the complaint in Interscope v. Rodriguez.111 Citing Interscope Records v. Rodriguez, the Court rebuked Atlantic for “failing to provide ‘[f]actual allegations’ sufficient to make [its] claims for relief more than mere conjecture.”112 Moreover, the Court found that Atlantic’s complaint lacked “any factual grounding whatsoever,” and was the type of “‘speculative’ pleading” insufficient under Twombly.113 The Court concluded that given the inadequate pleadings, the numerous potential meritorious defenses, the unestablished record regarding Brennan’s alleged willfulness, and the lack of concrete risk to Atlantic in continuing the suit, it would be inappropriate to enter Default Judgment against Brennan.114

C. Elektra v. Barker

In Elektra Entertainment Group v. Barker, District Court Judge Kenneth M. Karas took a turn at analyzing the recording industry’s complaint and specifically its “make [sic] available” claim.115 On August 19, 2005, Elektra Entertainment Group sued Tenise Barker for copyright infringement, alleging Ms. Barker infringed Elektra’s “exclusive rights of reproduction and distribution by downloading, distributing, and/or making available copies of protected sound recordings using an online media distribution system.”116 Ms. Barker moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), contending that copyright infringement was not pled with adequate specificity and that the making available claim failed to state a claim upon which relief could be granted.117 The United States government, the Computer & Communication Industry Association/US Internet Industry Association (“CCIA/USIIA”), the Electronic Frontier Foundation (“EFF”), and the Motion Picture Association of America (“MPAA”) all filed amicus briefs.118

Judge Karas first found that Elektra’s complaint pled copyright infringement with adequate specificity, despite not describing specific acts of infringement or the dates and

110 Id. at 283 111 Id. 112 Id. (citing Interscope Records v. Rodriguez, No. 06-CV-2485, 2007 WL 2408484 (S.D. Cal. Aug. 17, 2007)). 113 Id. (citing Bell v. Twombly, 127 S.Ct. 1955 (2007)). 114 An amended complaint has been filed, but the page alleging copyright infringement is missing. 115 Elektra Entm't Group, Inc. v. Barker, No. 05-CV-7340, 2008 WL 857527 (S.D.N.Y. March 31, 2008). Throughout the opinion, Judge Karas refers to the right as a “make available” right rather than a “making available” right. Author’s opinion: The latter is grammatically correct. It is allegedly a right to “make available” and a “making available” right. As in: a right to distribute and a distribution right. 116 Id. 117 Id. at *2. 118 Id, n.3.

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times at which the infringement allegedly occurred.119 In reaching that conclusion, Judge Karas relied on three pre-Twombly decisions120 and expressly considered and rejected Interscope v. Rodriguez.121 The court then addressed the making available claim and Ms. Barker’s contention that Elektra could not establish copyright infringement without alleging an actual transfer of Elektra’s works by her.122

To begin, the court examined the language of the Copyright Act and asked whether the definition of “publication” in section 101 affected the meaning of “distribution” in section 106(3). In determining that it did, Judge Karas noted that “several courts . . . have generally found . . . distribution and publication to be synonymous;”123 that “the House and Senate of the Ninety-Fourth Congress considered the terms distribute and publication to be synonymous;”124 and that “courts faced with similar [making available] allegations have looked to the definition of publication . . . to construe the definition of distribution.”125 Without explanation, Judge Karas specifically and expressly declined to follow the Southern District of New York case Obolensky v. G.P. Putnam’s Sons, as well as the well-known Goldstein on Copyright and Nimmer on Copyright treatises.126

Moreover, because of the “ample support in the contemporaneous legislative history of the Copyright Act,” Judge Karas found unnecessary Elektra’s argument that the work of the 105th congress in adopting WIPO should influence the interpretation of

119 Id. at *3. 120 See Id. (citing Elektra Entm't Group, Inc. v. Santangelo, No. 05-CV-2414, 2005 WL 3199841, at *2 (S.D.N.Y. Nov. 28, 2005); Atl. Recording Corp. v. Does 1-25, No. 05-CV-9111, at *2 (S.D.N.Y. Jan. 3, 2006) (Order); Franklin Elec. Publishers, Inc. v. Unisonic Prod. Corp., 763 F.Supp. 1, 4 (S.D.N.Y. 1991)). 121 Elektra Entm't Group, Inc. v. Barker, No. 05-CV-7340, 2008 WL 857527, *3, n.4 (S.D.N.Y. March 31, 2008) (declining to follow Interscope Records v. Rodriguez, No. 06-CV-2485, 2007 WL 2408484 (S.D. Cal. Aug. 17, 2007). 122 Id. at *4. The court declined to consider EFF’s argument, (mis)construing it as a contention that digital music files are not “material objects,” and denying it because it was not raised by Ms. Barker. Id., n.6; see supra section III.C.3 (discussing the EFF’s argument that digital files are not “transferred” as “material objects.” 123 Id. at *5 (citing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552 (1985); Ford Motor Com. v. Summit Motor Prod., Inc. 930 F.2d 277 (3d Cir. 1991); Agee v. Paramount Commc’ns, Inc., 59 F.3d 317, 325 (2d Cir. 1995)). 124 Id. (citing H.R. Rep. No. 94-1476, at 61 (1976); S. Rep. No. 94-473 at 57 (1976). 125 Id. (citing Atl. Recording Corp. v. Abner Anderson, No. 06-CV-3578, slip op. at *12 (S.D. Tex Mar. 12, 2008); Interscope Records v. Duty, No. 05-CV3744, 2006 WL 988086, at *2 (D. Ariz. Apr. 14, 2006); In re Napster, Inc. Copyright Litig., 377 F.Supp.2d 796, 803 (N.D. Cal.2005); Getaped.com, Inc. v. Cangemi, 188 F.Supp.2d 398, 401 n. 2 (S.D.N.Y.2002)). 126 Id. at *5, n.7. (declining to follow Obolensky v. G.P. Putnam’s Sons, 628 F.Supp. 1552, 1555-56 (S.D.N.Y.) (finding an unconsummated offer to sell a copyrighted work does not constitute infringement under the Copyright Act of 1976.); PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT § 7.5.1. (3d ed. 2005); MELVILLE B. NIMMER & DAVID

NIMMER, 2 NIMMER ON COPYRIGHTS § 8.11[A] n.2 (2005)).

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section 106(3), which was authored by the 94th Congress.127 Judge Karas also ruled that Mary Beth Peters’ opinion was unpersuasive because she lacked the authority to give opinions, define legal terms, or interpret an issue never before decided.128

Tangents aside, having decided that distribution and publication were synonymous, the court turned its attention to whether a specific “making available” right exists.129 Judge Karas explained that a “small number of courts”130 have found a “‘make available’ right in Section 106(3)” while a “great majority of courts” have only expressed “interest” without specifically resolving the issue.131 Judge Karas then noted that since the “definition of distribution [sic] and publication” did not contain an express “making available” right no such violation could be pled.132 Instead, Judge Karas concluded, the definition of publication includes both distribution and the “offer to distribute.”133 Thus in the court’s logic, if publication is distribution and the “offer to distribute,” then distribution is distribution and the “offer to distribute.”134 Therefore, to satisfy Rule 8, Elektra needed to plead that Ms. Barker violated Elektra’s exclusive right using an online media distribution system to “offer to distribute,” rather than to “make available,” Elektra’s copyrighted recordings, “for further distribution to others.”135

127 Elektra Entm't Group, Inc. v. Barker, No. 05-CV-7340, 2008 WL 857527, at *3, n.7 (S.D.N.Y. March 31, 2008). 128 Id. 129 Id. at *6. 130 Id. (citing courts that “followed Hotaling:” A & M Records, Inc. v. Napster Inc., 239 F.3d 1004, 1014 (9th Cir.2001); Motown Record Co., LP v. DePietro, No. 04-CV-2246, 2007 WL 576284, at *3 n. 38 (E.D. Pa. Feb.16, 2007)). The court cited, but declined to follow Arista Records, Inc. v. Mp3Board, Inc., No. 00-CV-4660, 2002 WL 1997918, at *4 (S.D.N.Y. Aug.29, 2002) (limiting the applicability of Hotaling to cases where proof of actual infringement is impossible to produce because the infringer has not kept records of public use)). 131 Id. at *7 (citing Arista Records LLC v. Gruebel, 453 F.Supp.2d 961, 969 (N.D. Tex.2006); Maverick Recording Co. v. Goldshteyn, No. 05-CV-4523, 2006 WL 2166870, at *3 (E.D.N.Y. July 31, 2006); Fonovisa, Inc. v. Alvarez, No. 06-CV-011, slip op. at *5 (N.D. Tex. July 24, 2006); Warner Bros. Records, Inc. v. Payne, No. 06-CA-051, 2006 WL 2844415, at *4 (W.D. Tex. July 17, 2006); Interscope Records v. Duty, 2006 WL 988086, at *2 (D. Ariz. April 14, 2006); Atlantic Recording Corp. v. Howell, No. 06-CV-2076, 2007 WL 2409549, at *3-4 (D. Ariz. Aug. 20, 2007), vacated on mot. for recons., 2007 WL 3010792 (D. Ariz. Sept.27, 2007). The court cited but declined to follow Atl. Recording Corp. v. Brennan, No. 07-CV-232, 2008 WL 445819, at *3 (D. Conn. Feb 13, 2008) (denying plaintiffs' entry of default against defendant, in part, by finding that defendant may have a meritorious defense against plaintiffs' “problematic” make available argument)). 132 Id. *8. 133 Elektra Entm't Group, Inc. v. Barker, No. 05-CV-7340, 2008 WL 857527, *8 (S.D.N.Y. March 31, 2008). 134 Id. 135 Id. (“Whether the use of a peer-to-peer file sharing program such as KaZaA necessarily entails further distribution,’ however, is still an open question.” Id. n.8 (citing

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Judge Karas granted Elektra thirty days to amend its complaint to allege an “illegal ‘offer to distribute’” rather than “making available.”136 As a final matter, the court also concluded that section 106 did not include an independent “right of authorization” which would support a “making available” right, as argued by the MPAA in an amicus brief.137

D. London-Sire v. Doe 1

In London-Sire v. Doe 1, the District Court of Massachusetts, Judge Nancy Gertner, addressed the “making available” claim from a unique procedural position.138 London-Sire, an RIAA member, had served several court-approved subpoenas on Internet Service Providers (ISP) in order to discover the identity of individuals making files available but known only by their Internet Protocol (IP) number.139 Two of the Does moved to quash the subpoenas, alleging that their anonymity and creative activity on peer-to-peer networks was protected under the First Amendment.140 Judge Gertner agreed and determined that “some limited First Amendment protection” required her to subject the London-Sire’s subpoenas to “somewhat heightened scrutiny.”141

In order to facilitate heightened scrutiny, the court applied a balancing test to balance the harm of disclosure against the harm of restricting discovery.142 Essential to the outcome of that test was whether London-Sire had asserted an actionable harm, supported by concrete, prima facie evidence.143 The Does argued that London-Sire had not asserted such a claim because the copyright laws require an actual dissemination of a material object.144 London-Sire argued that the copyright laws grant a right “to do and to authorize” distribution and that under circumstances merely making copyrighted works available constitutes actual distribution.145 Judge Gertner provided a lengthy analysis of each argument.

First, Judge Gertner determined that the Does must do more than authorize a violation of distribution under § 106(3); “they must actually ‘do’ it.”146 The court also noted that merely “complet[ing] all the steps necessary for distribution” did not amount

Payne, 2006 WL 2844415, at *4 (“[L]isting copyrighted works on an online file-sharing system contemplates ‘further distribution,” and thus, could constitute a violation of the copyright owner’s exclusive distribution right under §106(3).”)). 136 Id. 137 Id. at *10. 138 London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491 (D. Mass. Mar. 31, 2008). 139 Id. at *4 140 Id. at *5. 141 Id. at *5-6. 142 Id. at *6. 143 Id. at *7. 144 London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491, *7 (D. Mass. Mar. 31, 2008). 145 Id. at *8. 146 Id.

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to actual distribution, as Hotaling suggested.147 Moreover, the court found that under “even a cursory reading of the statute,” distribution was not synonymous with publication.148 Judge Gertner wrote: “By the plain meaning of the statute, all ‘distributions ... to the public’ are publications. But not all publications are distributions to the public.” 149 Therefore, the court found the Does could not be liable for violating London-Sire’s distribution right under § 106(3) unless actual distribution occurred; merely exposing music files to the internet was not copyright infringement.150 Next, Judge Gertner determined that the distribution right under § 106(3) was not limited to tangible objects and included purely electronic distributions of “non-tangible copies.”151 In reaching that conclusion, the court declared that the fixation of any copyrighted work created a “material object.”152 The court read “material objects” as defined in Section 101 to refer broadly “to materiality as a medium in which a copyrighted work can be “fixed,” and not as “a tangible object with a certain heft.”153

The court then focused on the market effects. To Judge Gertner, it was clear that 106(3) intended to give content owners the ability to control the rate and terms at which copies of the work were made available to the public.154 To that end, the court decided that“[w]hat matters in the marketplace is not whether a material object ‘changes hands,’ but whether, when the transaction is completed, the distributee has a material object.”155 This unraveled the EFF’s argument on behalf of the Does that distribution required a “hand-to-hand exchange of physical things” through an enumerated method – “transfer of ownership, sale, lease or lending” – under section 106(3).156 Thus, at the most basic level, Judge Gertner read section 106(3) to grant an exclusive right to create ownership rights in someone else, regardless of whether the “transferor” retained ownership rights in a copy themselves.157

147 Id. at *9 (noting that the EFF had pointed out a “lacuna in the Fourth Circuits reasoning). 148 Id. at *10 (“[T]he plaintiffs’ argument mischaracterizes the Supreme Court’s decision in Harper & Row.”). 149 Id., contra Elektra Entm't Group, Inc. v. Barker, No. 05-CV-7340, 2008 WL 857527 (S.D.N.Y. March 31, 2008) 150 London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491, *10 (D. Mass. Mar. 31, 2008). 151 Id. at *11. 152 Id. at *13. 153 Id. at *12. 154 Id. at *14. 155 Id. at *15. 156 London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491, *13 (D. Mass. Mar. 31, 2008). 157 Id. at *14. This is an astute observation that goes to the heart of IP law: The difference between real property and intellectual property is often framed as such: “When you take a book from Barnes & Noble, it has one less book to sell. By contrast when, you take an MP3 from a computer network, there is not less one CD that can be sold.” LESSIG, supra note 7, at 64. Judge Gertner seems to be endorsing, however, that from a market perspective, such a difference is artificial because in both cases, you have

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Of course, for the court, the ultimate question was whether London-Sire had made out a prima facie case of copyright infringement and tied its allegations to specific acts of infringement.158 The court found that London-Sire had, writing that “[t]he evidence and allegations, taken together, are sufficient to allow a statistically reasonable inference that at least one copyrighted work was downloaded at least once. That is sufficient to make out a prima facie case for present purposes.”159 Most importantly, the court reasoned that although London-Sire needed to ultimately prove that an actual infringement occurred, they could do so through circumstantial proof and inference.160 The court seemed sympathetic to London-Sire’s inability to observe transfers on a peer-to-peer network as an outside user.161 Thus, despite London-Sire’s inability to directly observe the Does committing an infringing act, the court found that London Sires could show infringement through “build[ing] a chain of inferences.”162 Ultimately, however, Judge Gertner granted the Does Motion to Quash that assert privacy interests because the London-Sire’s requests were not deemed to be narrowly tailored.163

E. Atlantic v. Howell

1. Part One.

On August 29, 2006, Atlantic Recording Corp. (Atlantic) filed a complaint for copyright infringement against Jeffery Howell and his wife Pamela Howell.164 Atlantic moved for summary judgment, arguing against the pro se Howell and his wife that there was no disputed material fact that Mr. Howell, a.k.a. KaZaA user “jeepkiller,” violated Atlantic’s exclusive distribution right for the identified sound recordings in his KaZaA shared folder.165

Judge Neil Wake agreed.166 First, Judge Wake cited Perfect 10, Napster, and Hotaling for the proposition that making copyrighted material available to the public violates § 106(3) whether a physical transfer is involved or not.167 Judge Wake then

one less customer who needs to purchase a book or CD. In other words, it is not entirely true that there is “not one less CD that can be sold,” because there is one less person to sell that CD to. But see supra note 13 (listing several types of sharing, not all economically harmful). 158 Id. at *16. 159 Id. (listing the evidence to include that MediaSentry showed it possible to download “Clocks” by Coldplay on January 25, 2007 from Doe no. 21’s computer). 160 Id. at *17. 161 Id. 162 Id. 163 Id. at *20. 164 See Atl. Recording Corp. v. Howell, No. CV-06-02076, 2007 WL 2409549, at *1 (D. Ariz. Aug. 20, 2007). 165 Id. 166 Id. 167 Id. at *3 (citing Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 718-19 (9th Cir.2007; A & M Records v. Napster, Inc. 239 F.3d 1004, 1011-14 (9th Cir. 2001);

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narrowed his focus, citing the decisions in Arista Records v. Gruebel,168 Warner Bros. Recording v. Payne,169 and Interscope v. Duty,170 for support of the rule that “KaZaA users commit direct infringement by employing the KaZaA program to make their collections of copyrighted sound recordings available to all other KaZaA users.”171 Finally, Judge Wake decided that Howell eliminated any genuine issue of material fact by admitting in his deposition that the sound recordings were being distributed from his KaZaA shared folder.172 As a pro se defendant, Howell had answered, “Yes,” that on the date of January 30, 2006, certain copyrighted works were seen by Atlantic “being shared” by his KaZaA account.173

Judge Wake granted Summary Judgment in favor of Atlantic and awarded statutory damages in the amount of $40,500.174 But, on September 27, 2007, Judge Wake granted Mr. Howell’s Motion to Reconsider175 and vacated the earlier grant of summary judgment in favor of Atlantic Records.176

2. Part Two.

On April 28, 2008, Judge Wake denied Atlantic’s motion for summary

judgment.177 To begin, Judge Wake rehashed the reasons why summary judgment was originally granted on August 17, 2007 and subsequently vacated on September 27,

Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 203 (4th Cir. 1997)). 168 See Arista Records v. Greubel, 453 F.Supp.2d 961, 969 (N.D. Tex. 2006) (concluding that a set of screenshots showing the contents of a defendant's KaZaA shared folder presented a cognizable claim for copyright infringement under 17 U.S.C. § 106(3)). 169 See Warner Bros. Records, Inc. v. Payne, 2006 WL 2844415, at *4 (W.D. Tex. July 17, 2006) (concluding that the placement of items in a KaZaA shared folder was publication as defined by 17 U.S.C. 101 because it was either a distribution or an offer of distribution in which further distribution, public performance or display was contemplated)). 170 See Interscope Records v. Duty, 2006 WL 988086, at *2 (D. Ariz. Apr. 14, 2006) (noting that the mere presence of copyrighted sound recordings in a defendant's KaZaA shared folder may constitute copyright infringement)). 171 See Atl. Recording Corp. v. Howell, No. CV-06-02076, 2007 WL 2409549, at *3 (D. Ariz. Aug. 20, 2007). 172 Id. at *4. 173 Id. 174 Id. at *5. 175 Motion to Reconsider, Atl. Recording Corp. v. Howell, No. CV-06-02076, 2007 WL 2409549, at *1 (D. Ariz. Aug. 20, 2007) (disputing what was said at Mr. Howell’s deposition and contending that “[Mr. Howell] was unaware that [his] personal files were being shared.”). 176 Atl. Recording Corp. v. Howell, No. CV-06-02076, 2007 WL 3010792, at *1 (D. Ariz. Sept. 27, 2007). 177 Order, Atl. Recording Corp. v. Howell, No. CV-06-02076 (D. Ariz. Apr. 28, 2008).

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2007.178 The court explained that its initial summary judgment decision in favor of Atlantic was improper because “Mr.Howell, had not, in fact admitted to placing the sound recordings in the KaZaA shared folder” as Atlantic had previously alleged.179 Judge Wake then delivered a thorough, four-part analysis of Atlantic’s “making available” claim, concluding that Atlantic failed to establish unlawful distribution by Mr. Howell.180

First, Judge Wake rejected Atlantic’s reliance on Hotaling, Napster, and Perfect 10, to support the “making available” claim.181 The court found that the “great weight of authority” requires actual distribution to a member of the public before section 106(3) is deemed violated.182 Judge Wake noted that “[u]nless a copy of the work changes hands in one of the designated ways, a “distribution” under § 106(3) has not taken place. Merely making an unauthorized copy of a copyrighted work available to the public does not violate a copyright holder’s exclusive right of distribution.”183

But, like Judge Gertner in London-Sire, Judge Wake reasoned that making a copyrighted work available could serve as circumstantial evidence.184 Although insufficient to prove that “[a] copy changed hands,” it would demonstrate that a defendant “attempted to distribute [a] copy.”185 This, Jude Wake decided, could support the inference that a copy was likely transferred to a member of the public.186

The court next addressed whether distribution and publication were synonymous under the copyright statute.187 Judge Wake found that although the terms were synonymous within the context of first publication, the same could not be concluded

178 Id. at *2. 179 Id. 180 Id. at *6. 181 Id. at *7-9; contra Atl. Recording Corp. v. Howell, No. CV-06-02076, 2007 WL 2409549, at *3 (D. Ariz. Aug. 17, 2007). 182 Id. at *4 (citing Nat’l Car Rental Sys. V. Computer Assocs. Int’l, Inc., 991 F.2d 426, 434 (8th Cir. 1993); Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 718 (9th Cir. 2007); London-Sire Records, Inc. v. Doe 1, No. 04-cv-12434, 2008 WL 887491, *10 (D. Mass. Mar. 31, 2008); Musical Prods., Inc. v. Roma’s Record Corp., No. 05-CV-5903(FB)(VVP), 2007 U.S. Dist. LEXIS 16064, at *3, 2007 WL 750319, at *1 (E.D.N.Y. Mar. 7, 2007); In re Napster, Inc. Copyright Litig., 377 F.Supp.2d. 796, 802 (N.D. Cal. June 1, 2005); Paramount Pictures Corp. v. Labus, 1990 U.S. Dist. LEXIS 11754, at *14, 1990 WL 120642, at *4 (W.D. Wis. Mar. 23, 1990); 2 DAVID NIMMER & MELVILLE B. NIMMER, NIMMER ON COPYRIGHT § 8.11[A], at 8-149 (2007); 4 WILLIAM F. PATRY, PATRY ON COPYRIGHT § 13:9, AT 13-13 (2007); 2 PAUL GOLDSTEIN, GOLDSTEIN ON

COPYRIGHT § 7.5.1, at 7:125 to 7:126 (3d ed. 2005)). 183 Order, Atl. Recording Corp. v. Howell, No. CV-06-02076, at *10 (D. Ariz. Apr. 28, 2008). 184 Id. at *11 (citing London-Sire Records, Inc., 2008 WL 887491, at*10.) 185 Id. 186 Id. 187 See Id. at *11-13.

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outside that context.188 The court reasoned that all distributions were publications under section 101, but that not all publications were distributions.189 To conclude otherwise, Judge Wake explained, would lead to the “unsatisfactory definition” that distribution meant “‘distribution’ or an ‘offering to distribute.’”190 Instead, the plain language of section 106(3) specifically requires a “sale or transfer of ownership” or “rental, lease or lending” of a copy of the work before distribution can be said to have taken place.191 Judge Wake concluded that distribution necessarily “requires an identifiable copy of the work to change hands in one of the prescribed ways” and that Atlantic, therefore, had failed to prove an actual distribution of 42 of the copyrighted sound recordings at issue.192

In the third part of the analysis, the court considered whether MediaSentry’s downloads of 12 songs from Mr. Howell proved actual distribution of those 12 songs.193 The court squarely addressed EFF’s contention on behalf of Mr. Howell that the agent of a copyright owner cannot infringe the copyright owner’s rights when acting on the owner’s behalf.194 Judge Wake disagreed, writing that “the recording companies obviously did not intend to license MediaSentry to authorize distribution or to reproduce copies of their works . . . therefore the 12 copies are unauthorized.”195 But this conclusion, the court noted, did not “conclusively indicate that Howell was responsible for making the 12 downloaded recordings publicly available” and that “there exists a disputed issue of fact regarding Howell’s responsibility for sharing the files.”196 Therefore, Judge Wake denied Atlantic’s motion for summary judgment with respect to MediaSentry’s 12 downloads.197

In the fourth and final section, the court examined the nature of digital transmissions and concluded that a KaZaA user “certainly does not distribute the copy that resides in the shared folder, for that copy never leaves its location on the owner’s hard drive. Rather, a copy of the copy in the shared folder is made.”198 Judge Wake reasoned that this potentially created secondary liability for infringement of the reproduction right, but was not sufficient to prove primary liability for infringement of the distribution right.199 As an example, the court cited Columbia Pictures v. Aveco,

188 Order, Atl. Recording Corp. v. Howell, No. CV-06-02076, at *11-12 (D. Ariz. Apr. 28, 2008) (discussing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552 (1985). 189 Id. at *12 (citing London-Sire Records, 2008 WL 887491, at *10.). 190 Id. at *12. 191 Id. at *13. 192 Id. 193 Id. at *13-14. 194 Order, Atl. Recording Corp. v. Howell, No. CV-06-02076, at *13 (D. Ariz. Apr. 28, 2008). 195 Id. at *14. 196 Id. 197 Id. 198 Id. at *15. 199 Id. (citing 4 WILLIAM F. PATRY, PATRY ON COPYRIGHT § 13:11.50, at 13-26 to 13-27 (2007)).

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noting that a video rental store making viewing rooms available was held secondarily liable for infringement of the public performance right.200 In declining to grant summary judgment, the court reasoned that Atlantic had failed to explain KaZaA’s architecture adequately “enough to determine conclusively whether the owner of the shared folder distributes an unauthorized copy, or simply provides a third-party with access and resources to make a copy on their own.”201

As a final matter, the court held that if contributory liability applied, Atlantic still must prove actual distribution or reproduction by a third-party in order to fall within the “to do and to authorize” language of section 106.202 That language did not create a separate cause of action “divorced completely from the legal consequences of authorized conduct.”203 Thus, contributory liability could only be established upon a showing of direct or primary infringement.204

IV. CONCLUSION: “NOW KNOWN OR LATER DEVELOPED”

Sound policy, as well as history, supports our consistent deference to Congress when major technological innovations alter the market for copyrighted materials. Congress has the constitutional authority and the institutional ability to accommodate fully the varied permutations of competing interests that are inevitably implicated by such new technology.205

It was honorable for Congress to try. The “now known or later developed” language was a good idea. But to think that it was possible to capture all known technology and all future technology that would be later developed was a tad naïve. Thus, the courts are left with a Copyright Act from 1976 that applies to all technology “now known or later developed,” but fails to apply, as this paper has shown, to some legal situations that were then unknown but have now developed. The result: future shock. And the effect of this future shock on the individual is disheartening.

200 Order, Atl. Recording Corp. v. Howell, No. CV-06-02076, at *15 (D. Ariz. Apr. 28, 2008) (citing Columbia Pictures Indus., Inc. v. Aveco, Inc., 800 F.2d 59, 62 (3d Cir. 1986). 201 Id. at *15-16. 202 Id. at 16. 203 Id. 204 Id. 205 Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 432 (1984); see also Order, Atl. Recording Corp. v. Howell, No. CV-06-02076, at *15 (D. Ariz. Apr. 28, 2008) (quoting extended Sony quote). Author’s note: This paper was originally submitted as a term paper to Professor and Dean Niels B. Schaumann for the course “Advanced Copyright” at William Mitchell College of Law on April 28, 2007 at approximately 3:50 PM. The conclusion was in place, eerily citing the same quote from Sony chosen by Judge Wake to conclude tha. The paper was updated April 30 – May 1, 2008 to include report of the April 28, 2008 Howell order.

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Consider Jammie Thomas, a 30 year-old single-mother of two from Brainerd, Minnesota.206 She works for the Department of Natural Resources of the Mille Lacs Band of Ojibwe and holds a bachelors degree in business administration from St. Cloud State University. On October 4, 2007 a jury in the United States District Court of Minnesota determined that Jammie Thomas was also KaZaA user “tereastarr” whom the jury also determined had willfully infringed the copyrights of 24 sound recordings owned by major record labels when she made MP3 files available207 for downloading through the KaZaA peer-to-peer file-sharing network208. The price for her willful infringement: $222,000.209 Despite the judgment against her, Jammie Thomas maintains her innocence.210 Congress needs to revisit the Copyright Act of 1976 to address the digital distribution capabilities of the Internet. To start, Congress needs to define “distribution” for the digital age. If digital transmissions are distributions when at the end of a transaction, the distributee has a “copy” or “phonorecord,” then Congress, not the courts should say so. If “making available” is meant to be an independent right or circumstantial evidence sufficient to prove distribution, Congress, not the courts, should say so. If it is some combination of the two or a sui generis right, Congress, not the courts should say so. For now, the courts should err on the side of the individual user: they were not at the bargaining table in 1976 – or ever.211

Such clear definitions are important because peer-to-peer distribution capabilities will not shrink away, they will expand. Already on the horizon is a combination of social networking technology and mobile-to-mobile content distribution that will challenge our

206 It has been recently argued that such details are signs of a distributive justice argument – instead, I present them as signs of the legal future shock that arises where individuals using new technology collide with out-dated laws. See Daniel Benoliel, Copyright Distributive Injustice, 10 YALE JOURNAL OF LAW & TECHNOLOGY 45, 56 (2007) (arguing that copyright law should not promote distributive justice concerns because taxation and welfare are more efficient means of doing so). 207 Jury Instruction No. 15 read: “The act of making copyrighted sound recordings available for electronic distribution on a peer-to-peer network, without license from the copyright owners, violates the copyright owners’ exclusive right of distribution, regardless of whether actual distribution has occurred.” See Jury Instructions at 18, Capitol Records Inc. v. Thomas, 06-cv-01497 (D. Minn. Oct. 5, 2007) http://blog.wired.com/27bstroke6/files/jury_instructions.pdf (last visited April 14, 2008). 208 Eric Bangeman, RIAA Trial Verdict is in: Jury Finds Thomas Liable for Infringement, Ars Technica, Oct. 4, 2007, http://arstechnica.com/news.ars/post/20071004-verdict-is-in.html (last visited April 14, 2008). 209 Id. 210 Defendant’s Motion for New Trial, or in the Alternative, for Remittitur, Capitol Records Inc. v. Thomas, 06-cv-01497 (D. Minn. Oct. 5, 2007). http://www.ilrweb.com/viewILRPDF.asp?filename=virgin_thomas_071015MotiontoSetAsideVerdict (last visited April 14, 2008). 211 See Schaumann, supra note 8, at 1023-24 (“It seems inherently unjust to subject the public to statutes in which it had essentially no say, and then not even give it – us – the benefit of whatever exceptions from liability were put there by copyright industries.”).

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understanding of the Copyright Act even further. Section 106(3) grants creators the right “to distribute copies or phonorecords of the copyrighted work to the public,” but in that context, never mind what “distribution” means - it is not even clear who the “public” is anymore. That is future shock at its core.

One thing is clear though: the days of $222,000 dollar judgments against individuals caught between future technology and out-dated laws should be put to an end. Better yet, with care, maybe such legal battles can be over before they are ever “known and later developed.”