Copyright Office Decides To Rewrite Copyright Law Itself, Blesses A 'Making Available' Right That Isn't There

from the not-such-a-good-look dept

The Copyright Office has decided to take a stance on copyright law that requires two slightly odd things. First, it requires ignoring what the Copyright Act actually says and then, separately, it requires pretending that the law says something that it clearly does not say. That's pretty incredible when you think about it.

For quite some time now there have been ongoing legal fights in the copyright world over whether or not there's a "making available right" in copyright law. The issue is actually super important. 17 USC 106 lays out the only six exclusive rights granted to rights holders under copyright. They are:

1. to reproduce the copyrighted work in copies or phonorecords;
2. to prepare derivative works based upon the copyrighted work;
3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

Now a quick reading of this would suggest that you've most likely violated 106(3), the "distribution" right (assuming it's not a situation where there's fair use or some other such defense), if you share a digital file. But there's a technical problem with this, which is that the "Definitions" part of the law says that the word "copies" only applies to "material objects." Digital files, as you might note, are not material objects. Now, to be clear: courts have almost universally rejected this argument when it comes up. Basically because it's inconvenient. But it is what the law says.

But there's also a separate question here: what if you, say, had a file of a copyright-covered work, and put it in a folder that was "available" via a peer-to-peer network... but the file was never actually downloaded. Then what right listed above would you have violated? Notice that the distribution right not only appears to require distribution (which would mean the actual complete file transfer) but even limits distribution further to "by sale or other transfer of ownership, or by rental, lease, or lending." If there's no "transfer of ownership" -- such as if someone just makes a copy -- then is that distribution? Or is it just an issue that can be covered by 106(1)'s "reproduction" right?

This is the big question around "making available." A number of people (generally speaking they come from the traditional copyright legacy industries) simply try to whitewash this whole thing and argue that simply having the possibility of distributing is distribution itself. Courts in the US have been very mixed on this issue. We've been covering rulings that have gone both ways for over a decade now. But should "making available" -- even if no actual distribution happens -- be considered "distribution" in light of both what the law actually says, and the basic knowledge of what "distribution" means?

Lately, the "making available" crowd has been trying to force the issue, either making sure that "making available" is explicitly included in any copyright reform and/or by making sure it's in various trade agreements. And now the Copyright Office has weighed in on the matter insisting that, despite plenty of evidence to the contrary, "making available" already violates the distribution right. A key issue in this new paper is the WIPO Copyright Treaty (remember what I said about sneaking this issue into international treaties?). Article 6 of that treaty defines the "right of distribution" to include:

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.

It's noteworthy, of course, that a key reason for large parts of the WIPO Copyright Treaty was a way for Hollywood to push through the DMCA, which Congress had previously rejected. As the crafters of the DMCA are now totally proud to admit, after Congress turned them down, they ran to Geneva to put the same ideas into WIPO and then ran back to the US and got the DMCA approved in 1998. However, while the DMCA included a bunch of other stuff, it's notable that it did not change the existing language (seen above) around a distribution right. The Copyright Office interprets this to mean that Congress assumed that the existing 106 rights include a making available right.

During the past two decades, U.S. government officials have uniformly maintained that the Copyright Act’s exclusive rights, taken together, cover the full range of conduct encompassed by the making available right, meaning that such conduct will implicate and be governed by one or more of the Section 106 exclusive rights, including, for example, the distribution, public display, and public performance rights. Subsequent Congresses have reaffirmed this conclusion through their approval, between 2003 and 2011, of a dozen free trade agreements with foreign nations obliging the United States to provide a making available right, determining in each case that adoption would not require changes to U.S. copyright law.

The paper dismisses the courts who have ruled that there is no making available right in the US as "failing to discuss or even acknowledge the international obligations of the United States." As we first discussed well over a decade ago, the second you hear someone claim something about "the international obligations of the United States" in regards to copyright law, they're trying to hide the fact that the law doesn't really say what they want it to say. That's the case here.

Besides, a more complete reading of WIPO suggests that it doesn't support a making available right to the extent the Copyright Office now claims. For example there's a footnote on that "distribution" right definition in the WIPO agreement that says "As used in these Articles, the expressions “copies” and “original and copies,” being subject to the right of distribution and the right of rental under the said Articles, refer exclusively to fixed copies that can be put into circulation as tangible objects." Notice that, just as with US law and "material objects," WIPO says it only applies to "tangible objects." Based on that, it actually seems fairly clear that even if there's a "making available" right in the distribution right, it couldn't apply to purely digital files, which are not "tangible objects."

The Copyright Office basically says, okay yes, sure that's what US law and the WIPO treaty say, but let's just ignore that part because, man, what the law actually says is hellishly inconvenient for what we want it to say. It waves off the "tangible" or "material" objects argument as simply being nonsense, despite the fact that it's written into both the WIPO Copyright Treaty and US copyright law:

Such a narrow view of the distribution right, of course, would wholly upend protections for copyright owners online and therefore defeat the very purpose of the WIPO Internet Treaties—that is, to confirm exclusive rights for copyright owners in the digital age.

The Copyright Office similarly rejects the other limiting factor on the distribution right under US Copyright law, the part that says that distribution can only be made "by sale or other transfer of ownership, or by rental, lease, or lending." But, the Copyright Office just laughs that off as well as just being silly talk, despite being what the law actually says.

In fact, the Copyright Office explicitly claims that the distribution right in 106(3) not only includes a making available right, but that it clearly applies to purely digital files. Because it says so:

Within the particular context of downloads, U.S. law provides the making available right through the exclusive right of distribution under Section 106(3). While some courts have failed to find distribution in the absence of evidence of completed transfers, and therefore declined to recognize claims based solely on making copies available to the public for download, the Copyright Office concludes that the appropriate reading of Section 106(3) in the context of making available claims is that it covers offers of access.

In short, the only way to reach the conclusion the Copyright Office reaches is to (1) ignore what the law actually says and (2) add in something that the law does not say. And then say that Congress must have intended it that way.

There's a lot more in the full paper which is worth reading, but it looks as though the Copyright Office basically decided to side with Prof. Peter Menell, who has been pushing this theory of making available for a while. This was countered by Prof. Rick Sanders who noted that Menell (who also basically rewrote a key section in the popular Nimmer on Copyright treatise on this subject) appeared to be focusing on what he wanted the law to say rather than what it actually said -- and that he appeared to be jumping the gun before the courts had truly decided the issue. This debate has resulted in quite a bit of back and forth sniping at one another. If you feel like really delving into the issue, I'd suggest following a bunch of those links -- the last one of which gives a fairly compelling argument for how Menell totally misrepresents the historical arguments he relies on to make his point.

Either way, it's not necessarily a huge surprise that the Copyright Office came down the way it did. In fact, it's not a surprise at all. But it is at least somewhat disappointing that the Copyright Office has decided that it can create a right that isn't written into the law and insist that must be what Congress meant all along, while at the same time ignoring the stuff that is written in the law and saying that couldn't possibly have been what Congress meant.

Filed Under: copyright, copyright office, distribution, making available, peter menell

Some Thoughts On Fixing Problems In The Patent System

from the lots-of-ideas,-but-the-will-to-implement? dept

I've been procrastinating for the last week and a half or so (admittedly with a Thanksgiving holiday thrown in the middle) writing up my impressions of the recent conference at Santa Clara University called Solutions to the Software Patent Problem. If you want something of a play-by-play on what happened, Groklaw has a pretty good tick-tock on the specifics. Unfortunately, I'm not sure that really covered some of the larger important themes that the conference brought out.

First off, I know that some patent system defenders took great offense to the idea that the event wasn't "balanced" with system supporters. Nearly every speaker presented an aspect of how the system was broken with suggestions to fix it. But I see this complaint as being misleading. There's this random belief out there that conference panels need to be "balanced" with "pro & con" and then let the panelists argue things out. I've argued against this in the past when setting up panels for other events, and with the events that we run, we've tried to avoid that concept as well. While just setting up pro vs. con can make for an entertaining session, it rarely leads to productive discussions that move the conversation forward. They just lead to people arguing past each other. A productive event is one in which people agree on a basic premise or problem and are then working towards possible responses. That's what this was. It was a conference for those who believe the system is broken. Given that assumption, the point of the event was to suggest possible solutions. There are plenty of events where patent system defenders and skeptics can argue against each other, but I can't think of another where people were able to dig in deep on possible fixes.

Given all that, there were a lot of different ideas proposed -- some broad, some specific. Many of them required people to have pretty deep knowledge of how the system works. For patent system geeks, it was really fascinating -- but for those less aware of the inner workings of the system I could see how the basic play-by-play seems confusing or uninteresting. However, in reality, there were a number of interesting ideas presented on ways to fix various problems, from getting Congress involved to having the courts better adhere to the law to getting the Patent Office to better adhere to rules to increasing maintenance fees to carving out software entirely... and many more. The conference schedule has links to more detailed versions of various proposals, sometimes both the "academic" versions and more "mainstream" versions at Wired Opinion. I'll point to a few of the suggestions I found to be more compelling in a bit.

However, what I found really useful about the event was twofold:

1. There are a lot of smart people thinking about the very obvious problems of the system, and they are trying to come up with solutions. That's a good thing, even if there are many (powerful) interests who don't want the system to change at all. You can only deny reality for so long.
2. There are also many ideas for solutions, some of which are quite clever, others of which seem like blunt force attempts to deal with symptoms rather than actual problems. Also, as was raised by some people in the comments, many of the suggestions could have significant unintended consequences that weren't readily considered. This is important -- for as much as I believe that the system needs fixing (and I have my own suggestions for solutions), thinking through the consequences of any change is an important exercise (though always keeping in mind that defenders of the status quo seem to argue any change will destroy the American economy and probably take apple pie and motherhood with it).

We already explored the suggestions from Richard Stallman and Mark Lemley in earlier posts, so we'll look at a few other interesting suggestions.

• There was some interest in using patent fees as a way that the patent office might be able to fix some of the worst problems without requiring a change in the law. James Bessen pointed out that bad patents are a form of pollution and, as such should be taxed as polluters. Christina Mulligan pushed back against attempts at doing the opposite, as urged by some patent system defenders, noting that "Cheaper patent applications mean more – and lower-quality! – patents. Lowering filing fees will make more people more likely to file patents. But if the marginal difference in patent fees is holding inventors back from filing applications, the patent is probably covering a low-value invention."
  
• Related to this, Brian Love presented some research and a proposal for using higher fees to decimate trolls. Part of his argument is that the data shows that trolls quite frequently become much more active as a patent is close to expiring: "Of all patent suits litigated within the final three years of the asserted patents' term of protection, trolls file more than 70%. Of all companies accused of infringing a patent within three years of its expiration, trolls accuse more than 83%." His suggestion is that shortening the term length of patents would deal with this problem, and would likely hurt only trolls or failing companies that are lashing out at more innovative competitors (he highlights Kodak and Encyclopaedia Britannica). But rather than actually go through the process of shortening patents, he argues just increasing the maintenance fees to keep a patent for the full term. He notes that many other countries already do something like this. The data here was compelling, though the risk is that it would just mean that patent trolls would become more active in earlier years...
  
• Peter Menell picked up on the point that many have raised that patents aren't at all clear in what they cover. So he thinks that we should force patents to be much clearer in what the claims cover. Specifically, he argues for a form-based system where you have a series of check boxes and pull downs in defining a claim to make it clear what you're actually trying to cover. I like the idea that patents should be much more precise over what they claim, but I'm not sure it's realistic to think that a form would (a) do this well or (b) be properly used.
  
• Arti Rai pointed out that the software crowd probably screwed up years ago, by not doing what the bioinformatics world did in claiming that you can't get a patent unless you provide the actual working algorithm. This seems like something of a no-brainer. The USPTO has regularly rejected bioinformatics claims on the basis of a lack of "definiteness" for not supplying the algorithm. There's no reason that the same couldn't be done in software. Of course, that would require the USPTO to actually notice this point...
  
• I thought John Duffy's proposal was one of the most interesting (and, in the past, I've found myself disagreeing with Duffy more often than agreeing with him) in which he argued the most "elegant" solution to the software patent problem that isn't all that far off from my own suggestion: fix the "non-obviousness" standard by noting that multiple parties simultaneously, independently inventing the same thing is a sign of obviousness and should lead to no patents being allowed. Duffy's presentation was the one that set Richard Stallman off for arguing that Stallman's solution was "kludgey" rather than a full solution. On this one, I side with Duffy. Duffy's solution here would likely be a lot more effective that Stallman's because patent lawyers could easily write around Stallman's solution of not allowing patents on "general purpose" computing.
  
• Samson Vermont highlighted that we should take into account social harm (Word doc). That is, he suggests courts should base remedies on the amount of harm on the public rather than on the harm on the patentee. "More specifically, in cases in which the defendant's infringement clearly makes the world better off, the court should deny the patentee both money damages and injunctive relief." More specifically, he argues that if the patent isn't actually being used to put a product on the market (either by the inventor or a licensee), the accused infringer is an independent inventor and is actually putting a product out there and the "costs to find the patentee's version of the invention beforehand were greater than the defendant's costs to invent it on his own" then courts should reject any awards. As he notes, when all three conditions are met, "it is very hard to come up with plausible reasons to believe that the defendant's infringement is a bad thing."

There were plenty of other presentations, but those were the ones that seemed most interesting and worth thinking about more deeply. As for the biggest waste of time? That award goes to Dan Ravicher, of PubPat, who plays both sides of the patent troll fence. He started off his presentation by haranguing everyone for not showing enough "respect" for the existing system and various people, and then proceeded to yell at everyone in attendance that they "failed" because they didn't raise their hands fast enough when he mentioned various patent troll lawsuits that he didn't think were that problematic. One of his larger points was sound -- that if you want to convince anyone in the government that the patent system is broken you have to focus entirely on "jobs, jobs, jobs." But there's no reason he had to be completely obnoxious in getting that point across. Many of his other points were specious, at best. However, it has set for me a new "Ravicher Rule": if someone starts off a talk by arguing that everyone needs to be more respectful of everyone else, the probability that they will disrespect pretty much everyone quickly approaches one.

Overall, it was a really great and thought-provoking event. I'm happy that there's a lot of detailed thought going into ways to solve the patent trolling problem, though I'd argue we need to be careful not to just think that this is a "software patent" issue. I think the problems of the system apply equally elsewhere -- which is why I like system-wide fixes, such as those suggested by Duffy and Vermont.

And, just to address this one point before one of our regular patent lawyer commenters tries to make it in the comments: there is an argument among patent system supporters that there is no such thing as a "software patent" and thus any argument that uses that term is meaningless. This is both slightly true and (more importantly) a distortion of the larger issue. As was discussed at the conference, there is a difference between software and hardware that can't be denied. One involves moving around bits. One doesn't. So it's not difficult to define software differently from hardware. The real problem is that if we did carve out software from patentability, it's likely that crafty patent lawyers would quickly figure out how to rewrite patent claims to make them broadly cover the same concepts in a way that could be seen as not being "software." Given all that, I think it's quite legitimate to discuss "patents that cover software" as "software patents," even while I agree that merely targeting "software patents" misses the larger problem.

Filed Under: artia rai, brian love, christina mulligan, dan ravicher, fixes, james bessen, john duffy, mark lemley, patents, peter menell, problems, richard stallman, samson vermont, software patents