"Making available" as distribution: file-sharing and the copyright act.

• Author: Horsfield-Bradbury, John

TABLE OF CONTENTS I. INTRODUCTION II. ORIGIN AND STATUTORY ANALYSIS OF THE "MAKING AVAILABLE" DOCTRINE A. Statutory Structure B. The Introduction of the "Making Available" Doctrine-- Hotaling C. The RIAA's Statutory Arguments in Support of the "Making Available" Doctrine 1. Does the Plain Meaning of "Distribute" Encompass the "Making Available" Right? 2. Is "Distribution" Synonymous with "Publication"? 3. Does "Authorization" of "Distribution" Imply Primary Liability? III. CASES INTERPRETING THE "MAKING AVAILABLE" DOCTRINE A. Supreme Court and Circuit Court "Distribution" Cases After Hotaling B. District Court Decisions Prior to 2008 C. District Court Decisions in 2008 D. Capitol Records Inc. v. Thomas IV. ALTERNATIVES TO THE "MAKING AVAILABLE" DOCTRINE A. There Is No Justification for the Survival of the "Making Available" Doctrine B. The Importance of Limiting the "Making Available" Doctrine C. Secondary Liability Is the Appropriate Form of Liability for Infringing File-Sharers V. CONCLUSION I. INTRODUCTION

On October 4, 2007, a jury in Minnesota fined Jammie Thomas $222,000 for sharing twenty-four songs on the KaZaA music-sharing program. (1) The verdict came four years into the extensive program of actions against individual file-sharers conducted by the Recording Industry Association of America ("RIAA")--the industry group representing record companies. (2) This was the first case in which a jury had reached a verdict, (3) even though the RIAA has "filed, settled, or threatened, legal actions against well over 20,000 individuals." (4) In summarizing the case, now Chief Judge Michael J. Davis gave the following jury instruction: "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 been shown." (5) This instruction succinctly identifies the issue considered in this Note, an issue of much debate in the recording industry and the judicial and academic legal communities. Specifically, this Note analyzes whether the "making available" of an electronic file is sufficient to qualify as "distribution" under the Copyright Act, and thus infringes a copyright owner's exclusive rights.

The "making available" doctrine was first introduced not in reference to Internet file-sharing, but in the completely different context of the catalog of materials held by a library. (6) The appellate courts have never fleshed out the doctrine in any detail. (7) Consequently, it has been left to district courts to interpret the doctrine as it relates to file-sharing. Needless to say, some courts have come out in favor of the "making available" doctrine, some against it, and a minority of courts have ducked the issue entirely. (8) In a thirty-day period in the spring of 2008, district courts in Arizona, Massachusetts, Texas, and New York each issued opinions that offered a different interpretation of the doctrine. (9)

The highly-publicized Thomas case took an unusual turn when Chief Judge Davis issued an order on May 15, 2008 stating that the court was considering granting a retrial and asking for briefs on the propriety of the "making available" doctrine in this context. (10) On September 24, 2008, a retrial was granted on the grounds that the distribution jury instruction was invalid. (11) Chief Judge Davis dismissed the "making available" doctrine and "implored" Congress to act to address the extreme liability levels facing individual file-sharers. (12) Nevertheless, the RIAA has appealed the decision and continues to bring actions against thousands of private individuals. (13) Soon, the appellate courts will be called upon to settle the increasing discrepancies among the judicial districts.

This Note argues that the "making available" doctrine has no basis in the text of the Copyright Act, the Act's legislative history, or appellate jurisprudence, and thus should be abolished. Moreover, the interpretation of the doctrine proposed by the RIAA potentially exposes thousands of inadvertent file-sharers to millions of dollars of liability because of very high mandatory statutory damage levels. (14) This interpretation would give great power to the copyright holder and foster an unfair system of liability that the judiciary would be unable to check. Part II analyzes the text of the statute and the origin of the "making available" doctrine. Part III considers the few appellate cases that have touched upon the distribution right as related to the "making available" doctrine and then analyzes the slew of recent district court decisions that interpret, accept, or reject the doctrine. Part IV argues for the abolition of the doctrine and suggests that secondary liability would be more appropriate for tackling the problem of illegal file-sharing. Part V concludes.

2. ORIGIN AND STATUTORY ANALYSIS OF THE "MAKING AVAILABLE" DOCTRINE

   1. Statutory Structure

      The cornerstone of United States copyright law is the set of exclusive rights granted to the owner of a copyrighted work in § 106 of the Copyright Act of 1976. The three primary rights that are reserved to the copyright owner are the rights to reproduce, to prepare derivative works, and to distribute copies of the copyrighted work. (15) Section 106 confers upon a copyright owner the exclusive right "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." (16) At first glance, the distribution right appears incredibly broad: the text of § 106(3) alone would appear to give a copyright owner the power to limit the distribution of a copyrighted work at any point in time, even with respect to an authorized copy that he has sold. For example, under this reading of the distribution right, a record company could prevent the purchaser of a CD from selling that CD to someone else. The "first-sale doctrine," however, heavily limits the distribution right. (17) The owner of a copy of a copyrighted work "is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy." (18) This language specifically limits only the distribution right of § 106(3).19 The legislative history of the Act clarifies this: "As section 109 makes clear ... the copyright owner's rights under section 106(3) cease with respect to a particular copy or phonorecord once he has parted with ownership of it." (20) If the purchaser of the legitimate copy makes and distributes an unauthorized copy, then the distribution right is certainly violated. However, in those circumstances, the reproduction right would be violated as the purchaser has made an unauthorized copy, an exclusive right of the copyright owner, and thus in this scenario § 106(3) is not doing any additional work that § 106(1) is not. As the legislative history of the Act summarizes, the two purposes of the distribution right independent of the reproduction right are (1) to ensure an author has "the right to control the first public distribution of an authorized copy or phonorecord of his work," and (2) to protect against the "unauthorized public distribution of copies or phonorecords that were unlawfully made," even if the distributor did not himself make the copies. (21)

      The prototypical scenario this Note considers is a file-sharer who stores an authorized, original copy of a publicly-released song on the hard drive of his computer--for example, an electronic track downloaded from Apple's iTunes Music Store that does not have Digital Rights Management (DRM) protection. (22) The file-sharer then makes the file available for copying on an electronic network of some kind but does nothing to "push" the specific file to others. Rather, if another network user so desires, he can access the file and make an identical copy of it on his computer.

      Clearly, the first purpose of the distribution right is inapplicable as the song is already publicly-released--the "right of first distribution" has been exercised. Therefore, it is in the interpretation of the second purpose of the right that the "making available" doctrine has arisen.

   2. The Introduction of the "Making Available" Doctrine--Hotaling

      In 1997, the Fourth Circuit introduced the "making available" doctrine in Hotaling v. Church of Jesus Christ of Latter-Day Saints. (23)

      There, the defendant library had made unauthorized reproductions of a work copyrighted by Hotaling and had made them available to the public. (24) Hotaling, however, did not bring an infringement suit until more than three years after she discovered the copies had been made. (25) One reason why the second purpose of the distribution right lay dormant for so long is that, generally, when an unauthorized copy of a work is distributed, the plaintiff can bring an action under § 106(1) for unauthorized reproduction against the copier. The statute of limitations under the Copyright Act, however, is three years from the date of discovery of infringement, and thus Hotaling was barred from bringing a reproduction claim, meaning the court had to consider the distribution right. (26) The district court granted the library's motion for summary judgment, but the Fourth Circuit found in favor of Hotaling on appeal, holding that the library had infringed her exclusive right to distribute. (27) The court first noted that "distributing unlawful copies of a copyrighted work does violate the copyright owner's distribution right and, as a result, constitutes copyright infringement." (28) Hotaling conceded that there was no evidence "showing specific instances within the limitations period in which the libraries loaned the infringing copies to members of the public," as the library did not keep records. (29) The defendant argued that "holding a work in a library collection that is open to the public constitutes, at...