Copyright essentialism and the performativity of remedies.

• Author: Gilden, Andrew
• Position: Introduction through II. The Rights/Remedy Relationship, p. 1123-1154

TABLE OF CONTENTS INTRODUCTION I. REMEDY REFORM PROPOSALS A. First Amendment Approaches: Remedies as Procedural Safeguards B. Law and Economics Approaches." From Property Rule [right arrow] Liability Rule II. THE RIGHTS/REMEDY RELATIONSHIP III. THE PERFORMATIVITY OF REMEDIES IV. RIGHTS ESSENTIALISM IN MOTION: THE REEMERGENCE OF THE FOUR-FACTOR TEST A. eBay v. MercExchange B. Salinger v. Colting C. Splitting the Baby V. WHAT IS THE HARM.? A. Distributional Consequences and Chilling Effects B. Lack of Transparency CONCLUSION INTRODUCTION

In declaring that a "statutory right to exclude" is "distinct from the provision of remedies for violations of that right," the Supreme Court revealed and further entrenched a rights/remedy problem in copyright law. (1) By viewing remedies principally as a means of addressing the real-world consequences of a predicate rights violation, this distinction overlooks the role of remedies in establishing and shaping substantive rights. Although the interplay between rights and remedies has been well explored in constitutional law, (2) and scholars in other areas of private law have grappled with the rights/remedy distinction, (3) intellectual property scholarship has, for the most part, lacked critical insight into the relationship between "the creation of a right" and the "provision of remedies." (4) This Article (1) shows how the conventional framing of copyright remedies overlooks the interrelationship between rights and remedies and (2) develops a "performative" theory of remedies to explain how limitations on remedies in the name of the First Amendment might actually serve to reinforce rights-holder dominance within the copyright system.

Many copyright scholars have invoked the First Amendment (5) and related concepts (6) to rein in both the substantive and remedial dimensions of copyright. In response to widely perceived overreach by industrial copyright holders, these scholars have put forth competing normative visions of our copyright system that would push back against the steady accretion of rights and limit the consequences of infringement through a scaled-back remedial regime. For example, even if a particular use of a copyrighted work is not sufficiently "transformative" to be considered fair use, a court could deny the copyright holder's request to enjoin the distribution of the infringing work and ensure the public's access to a socially valuable good. (7)

Although efforts to rein in the "substantive" expansions of copyright--the unlawfulness of a wider range of activities for a longer period of time--have been largely unsuccessful, (8) remedy reform efforts in recent years have proven remarkably fruitful. (9) In 2006, the Supreme Court in eBay v. MercExchange prohibited categorical rules entitling a patent owner to an injunction, (10) and the Second Circuit in Salinger v. Colting extended eBay to copyright. (11) In the wake of Salinger, eBay, and other appellate decisions adopting their approach, (12) copyright's remedial structure has shifted away from the reflexive issuance of preliminary and permanent injunctions (13) toward a more rigorous analysis of the various interests impacted by the requested relief. (14) Increasingly, the question of Richemont, TECH. & MARKETING L. BLOG (Jan. 17, 2012, 11:49 AM), http://blog. ericgoldman.org/archives/2012/01/two_more_ex_par.htm, and cases cited/cross-posted therein. These injunctions have generally been issued ex parte with the defendant in default. appeared in the novel (19)--the Second Circuit affirmed the rejection of fair use in a single paragraph. (20) The consequences of being deemed an infringer may be mitigated through the Salinger approach, but Salinger itself substantially increases the number of individuals potentially deemed infringers for critically reinterpreting copyrighted works. After Salinger, rights holders may not be able to obtain a quick and easy injunction against such uses, but they may be able to effect the same outcome with a demand for compensation and/or the threat of money damages. (21) Indeed, shortly after the Second Circuit's ruling, Colting agreed not to distribute 60 Years Later in the United States. (22)

The Salinger and eBay decisions' underlying assumption about the ontological independence of rights--and the derivativeness of the remedial determination from those rights--obscures the role of remedies in the production of "substantive" entitlements. (23) When viewed in isolation from its discussion of fair use, the Salinger court's discussion of injunctive relief appears to be an unqualified check against copyright overreach. When the two portions are viewed together, however, the heightened injunction standard appears to have reformulated the overall calculus of adjudicating both remedies and rights. Vacating the injunction seemingly renders the fair use analysis less consequential, in turn allowing the court to both champion the First Amendment interests in accessing Colting's book and strongly signal to the Salinger estate that it would be entitled to compensation. (24) The Salinger standard may be celebrated as a First Amendment safeguard, but the litigation nonetheless resulted in a copyright holder successfully blocking the U.S. distribution of a largely original work. The court's rhetoric expresses sensitivity toward free speech interests--and its new four-part test appears much fairer than automatically enjoining infringing works--but the decision itself does little to dislodge the permissions-based norms that prompted remedy reforms in the first place. (25)

Part I of this Article will document the remarkable consensus within copyright scholarship about the need to scale back injunctive relief. It will first review a long line of scholarship seeking a more explicit role for the First Amendment in copyright law. This scholarship has repeatedly advocated a heightened standard, or unavailability, of injunctive relief as a last line of defense to ensure public access to creative expression that is nonetheless deemed infringing. (26) It will then briefly survey similar law and economics proposals to shift from a property rule--with readily available injunctive relief--to a liability rule--with an expectation of monetary relief--in order to lower transaction costs and facilitate transparent, efficient bargaining. (27)

Part II will argue that these lines of copyright scholarship have largely adopted an "essentialist" view of remedies, whereby a determination of rights precedes and thus is unaffected by the determination of remedies that appears to occur later in time. Although copyright scholarship has largely overlooked the ways in which the scope of available remedies may be inversely related to the scope of substantive protections, this interplay has been explored in other legal contexts. Constitutional law scholars have pointed out that narrowing the remedies available for a violation of a constitutional right--for example, through the doctrines of qualified immunity and nonretroactivity--effectively "lowers the cost" of constitutional innovation, allowing courts to expand the scope of constitutional protections without needing to deplete government coffers or set free large numbers of inmates. Although this dynamic may lead to more robust civil liberties in the constitutional context, in the copyright context, the narrowed scope of remedies can serve to lower the cost of the further expansion of copyright. If the whole point of narrowing the availability of injunctive relief is to push back against copyright overreach and protect First Amendment interests, the lesser consequences of a court concluding that a particular use is infringing would seem to undermine this effort.

Part III will build upon the remedies scholarship in Part II and set forth a "performative" approach to remedies. In the same way that speech can be performative by producing the phenomenon it names, (28) a remedy is performative to the extent it shapes the right it implements. Although remedies scholarship provides a useful taxonomy of the various ways rights and remedies may interact, it lacks the conceptual tools to expose the normative thrust behind a particular rights/remedy configuration. Poststructural theories of performativity, however, can illustrate how a court's normative preference for the ultimate outcome of a particular dispute--and similar future disputes--"reaches back" and sets into motion a decision-making process designed to justify those normative ends. Although rights appear to come "before" and remedies "after," copyright protections only come into existence through their iteration in a particular remedy, and the linear sequencing of copyright litigation masks the ontological significance of the remedial determination. Remedies may be curtailed ostensibly to protect downstream First Amendment interests, but cordoning off the rights determination allows status quo industrial norms to remain intact, albeit with a new veneer of fairness.

Part IV will then survey judicial decisions...