Chipping Away at the RIAA’s “Making Available” Theory of Copyright Infringement

II.     The Right to Distribute Under the Copyright Act

Allegations of file-sharing implicate the right to distribute
creative works, and the RIAA cases are thus litigated under this
provision of the Copyright Act.  Section 106(3) of the Copyright Act
gives a copyright owner the exclusive right to distribute, or authorize
others to distribute “copies or phonorecords of the copyrighted work to
the public by sale or other transfer of ownership.”[6]  The concept of
distribution is often interrelated to publication, as “the distribution
of copies or phonorecords of a work to the public constitutes a
‘publication’ of such work.”[7]

III.    The Thomas Decision and the Origins of the "Making Available" Theory

The “making available” theory of copyright infringement has been the
keystone to the RIAA’s legal claims.  However, there is no express
statutory authority for equating “making available” with infringement
in the absence of evidence of actual acquisition of the work by another
party.  The Copyright Act states that “anyone who violates any of the
exclusive rights of the copyright owner as provided by sections 106
through 122 . . . is an infringer of the copyright of the author.”[8] 
Thus, the litigants in RIAA cases have been engaged in a heated debate
over the plain meaning of the term “distribution” in section 106(3). 
The RIAA believes that distribution occurs when a copyrighted work is
made available for download over P2P networks, while opponents argue
that no distribution takes place until someone downloads the work and
there is actual dissemination.  This distinction is key because the
RIAA does not obtain evidence of actual downloading of the songs found
in shared folders.  The only evidence of actual downloading it brings
to court are the downloads performed by its investigators, who are
arguably agents.  As a result, the RIAA has no evidence that songs
“made available” were actually disseminated to others.

At the dawn of the Internet age, courts were forced to confront the
issue of sharing copyrighted works over electronic networks.  In Playboy Enters., Inc. v. Frena,
the defendant was the proprietor of a subscription-based, computer
bulletin board service onto which users uploaded scanned images from
Playboy magazine for other users who downloaded them.[9]  The court
said that by making the images available for downloading, the defendant
“supplied a product,” thus engaging in unauthorized distribution of
copies to subscribers.[10]  It is noteworthy that, in this case, Fena
admitted that each of the files had been downloaded by at least one of
his customers, clearly evincing actual dissemination as well.[11]

Due the heavy pressure placed on defendants to settle, the extensive
amount of pre-trial procedural motions, and the RIAA’s frequent
decisions to drop suits involving innocent and mistakenly identified
defendants, the first RIAA case against a private individual to reach a
verdict was Capitol v. Thomas in 2007.  In Thomas, a
Minnesota woman was found liable for willful copyright infringement
because she uploaded twenty-four songs on the Kazaa P2P network.[12] 
Prior the jury’s award of $222,000 in statutory damages, both parties
vehemently contested jury instruction number fourteen, relating to the
standard for copyright infringement.[13]  The defendant’s counsel urged
the judge to maintain his original instruction, mandating that an
actual transfer, rather than merely making files available, is
necessary for a determination that the right to distribute has been
violated.[14]  The judge, however, amended the instruction, siding with
the plaintiff’s interpretation that making a copyrighted work available
is infringement.[15]   

The Thomas decision was seen as a major victory for the
RIAA, both in term of the verdict and the extremely high damage award,
which would seemingly compel other defendants to settle out of court. 
The victory did not last long, however.  After receiving a motion to
set aside the verdict, the judge reconsidered his jury instruction in
light of case law he had subsequently come across.[16]  Ultimately,
Judge Davis concluded that the jury instruction was inaccurate and
overturned the verdict.[17]  In doing so, he offered a detailed plain
meaning analysis pertaining to the interpretation of the work
“distribution.”  Upon examining the use of the term in other provisions
of the Copyright Act, in addition to the analogous Patent Act, he
determined that distribution requires actual dissemination.[18]  Judge
Davis looked at the phrase “distribute . . . to the public . . . by sale or other transfer of ownership, or by rental lease, or lending” and judged that an affirmative act beyond a mere offer to distribute was necessary to effectuate “distribution.”[19]

Judge Davis also determined that a “publication” and “distribution”
were separate concepts.[20]  Specifically, he said that a “publication
effected by distributing copies . . . of the work is a distribution,”
while “a publication effected by merely offering to distribute copies .
. . is merely an offer of distribution, not a distribution.”[21] 
Essentially, in reviewing the Copyright Act as a whole, he determined
that a publication could encompass an offer to distribute, but an offer
to distribute does not fall within the statutory right to
distribution.[22]

In the wake of the recent ruling, the RIAA’s notion of a precedent-setting victory in Thomas
has been tempered, and their keystone legal theory has been dealt a
severe blow.  Nevertheless, when the case is retried, Judge Davis did
determine that the downloads conducted by the RIAA’s investigation
company, MediaSentry, can be used as evidence of copyright infringement
at the new trial.[23]  Such evidence could show actual dissemination of
the files Ms. Thomas made available, though it is sure to elicit
another argument regarding the downloading of songs by an agent. 
Practically speaking, a copyright holder, or its agent, cannot infringe
on a copyright it owns.

IV. Recent Court Decisions Concerning File-Sharing

Within a year of the original Thomas decision, a handful of other
cases at varying stages of litigation undertook a similar analysis of
the “making available theory.”  Elektra v. Barker represents
one major decision of significance.  Though the judge was merely ruling
on a motion to dismiss, it was one of the few cases in which the
arbiter has heard arguments and been fully briefed on the “making
available” dispute.[24]  In Barker, Judge Karas determined
that Congress intended the terms “publication” and “distribute” to be
synonymous when it enacted the Copyright Act.[25]  He further stated
that though making files available is not distribution, it is making an
offer to distribute.[26]  In his opinion, an allegation of an offer to
distribute is sufficient to take the case to trial, and he thus denied
the defendant’s motion to dismiss.[27]

A ruling denying the RIAA’s motion for summary judgment in Atlantic v. Howell featured reasoning diametrically opposed to that offered in Barker.  In Howell,
after reviewing briefs and hearing oral arguments, the federal district
court decisively rejected the “making available” theory of
infringement.[28]  The court did not settle for Barker’s
acceptance of the offer to distribute theory; on the contrary, it
determined that an infringement of the distribution right requires
actual dissemination.[29]  Furthermore, unlike Judge Davis’s decision
in Thomas, this court determined that evidence of
MediaSentry’s downloads from the defendant’s shared file is not
sufficient to establish distribution because this defendant had argued
that Kazaa had shared his whole hard drive without his knowledge.[30] 
In a rather unprecedented comment, the court went on to suggest that
P2P file-sharing might not implicate the distribution right at
all.[31]  Rather, it stated that what is really happening is series of
reproductions, moving the legal grounds for suit over to section
106(1).[32]

Further muddying the waters, in London-Sire v. Doe 1, a
Massachusetts court offered perhaps the most comprehensive analysis of
the infringement of the distribution right.  First, the court rejected
the “making available” theory, favoring an actual dissemination
standard.[33]  In returning to the language of the stature, the court
focused on the Copyright Act’s reservation to the owner the right “to
do and to authorize . . . the distribution.”[34]  It cited precedent
indicating that Congress’s intent in including the words “to authorize”
was to avoid any uncertainty as the statute’s applicability to
contributory infringers.[35]  Focusing on the language “to do,” a
defendant, according to this court, cannot violate the Copyright Act by
authorizing an infringement if no actual infringement occurs.[36] 
Therefore, the “making available” theory does not suffice.[37]  Rather,
the alleged infringer must take more affirmative steps before the work
changes hand and “do” the infringing.[38]

The court went on to distinguish between a publication and a
distribution, stating that a publication incorporates a distribution,
though not vice versa.  It offered an example by stating: "[S]uppose an
author has a copy of her (as yet unpublished) novel. If she sells that
copy to a member of the public, it constitutes both distribution and
publication. If she merely offers to sell it to the same member of the
public, that is neither a distribution nor a publication. And if the
author offers to sell the manuscript to a publishing house 'for
purposes of further distribution,' but does not actually do so, that is
a publication but not a distribution."[39]

Following this line of reasoning, the court believed that Congress’s
choice of the word “distribute” as the section 106(3) right indicates
that distribution, not a mere offer of distribution must occur to
trigger infringement.[40]  The only positive aspect of this decision,
as far as the RIAA is concerned, was the court’s willingness to allow
the case to proceed further into discovery on account of the notion
that an allegation of an offer to distribute is sufficient to keep the
case alive, allowing the plaintiff a chance to prove actual
distribution at a later stage in the process.[41]

V.    Conclusion

The wide range of right to distribute interpretations handed down by
courts in the last year alone indicates the likelihood that we are to
see more litigation on the subject.  As is often the case, it is
noteworthy that an issue with seemingly narrow counters elicits such
nuanced differences in statutory interpretation.  The dispute over the
competing infringement standards, “making available” and “actual
dissemination,” is rooted in the language of section 106(3).  From
there, the analysis expands into the definition of the terms
“distribution” and “publication,” whereupon some courts choose to do a
comprehensive analysis of the Copyright Act and even look at related
statutes as well.

Most likely, Congress and federal appellate courts, and perhaps even
the Supreme Court, will have to step into the fray.  If and when this
occurs, it will be interesting to observe whether policy considerations
are introduced into the assessment of black letter law, as the social
and technological implications of file-sharing further coalesce into a
quantifiable economic impact.  The recording industry alleges that it
is losing a great deal of money.  For their part, the anti-RIAA forces
have indicated that they do not seek a file-sharing free-for-all, as
they have proposed compulsory license systems in which fees are
collected from P2Ps by performing rights organizations.[42]  As courts
hammer out their legal analyses of the situation, it is clear that the
lawsuits have not chilled P2P file-sharing, and the RIAA has no
intention of discontinuing its aggressive pursuit of online piracy.

For time being, it seems as though the "making available" theory has
been disfavored by trial courts.  Despite this trend, anti-RIAA forces
should not rejoice, as many of those same courts are willing to allow
the RIAA's own downloads as evidence of actual dissemination.  I
suspect we will get more opinions on the subject in the near future,
until one day, as Judge Davis implored when he set aside the Thomas verdict, the Supreme Court or Congress steps in with a definitive test.

Sources

[1] Electronic Frontier Foundation, RIAA v. The People: Five Years Later, EFF.org, Sept. 2008, http://www.eff.org/wp/riaa-v-people-years-later (last visited Oct. 16, 2008).

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] 17 U.S.C. § 106(3).

[7] 1 Melville B. Nimmer, Nimmer on Copyright § 4.05 (2008).

[8] 17 U.S.C. § 501(a).

[9] Playboy Enter., Inc. v. Frena, 839 F. Supp. 1552, 1554 (M.D. Fla. 1993).

[10] Id. at 1556.

[11] Id. at 1554.

[12] Eric Bangeman, How the RIAA Tasted Victory: A Perfect Storm Which Might Not Be Repeated, Ars Technica, Oct. 7, 2007, http://arstechnica.com/articles/culture/riaa-first-judgement.ars (last visited Oct. 17, 2008).

[13] Eric Bangeman, Debate Over “Making Available” Jury Instruction As Capitol v. Thomas Wraps Up, Ars Technica, Oct. 4, 2007, http://arstechnica.com/news.ars/post/20071004-debate-over-making-available-jury-instruction-as-capitol-v-thomas-wraps-up.html (last visited Oct. 17, 2008).

[14] Id.

[15] Id.

[16] Eric Bangeman, Thomas Verdict Overturned, Making Available Theory Rejected, Ars Technica, Sept. 24, 2008, http://arstechnica.com/news.ars/post/20080924-thomas-verdict-overturned-making-available-theory-rejected.html (last visited Oct. 17, 2008).

[17] Id.

[18] Id.

[19] Id.

[20] Id.

[21] Id.

[22] Id.

[23] Bangeman, supra note 16.

[24] Eric Bangeman, New Ruling May “Grease the Wheels” of RIAA Litigation Machine, Ars Technica, Mar. 31, 2008, http://arstechnica.com/news.ars/post/20080331-new-ruling-may-grease-the-wheels-of-riaa-litigation-machine.html (last visited Oct. 17, 2008).

[25] Id.

[26] Id.

[27] Id.

[28] Fred von Lohmann, Big Victory in Atlantic v. Howell: Court Rejects RIAA “Making Available” Theory, EFF.org, Apr. 29, 2008, http://www.eff.org/deeplinks/2008/04/big-victory-atlantic-v-howell-court-rejects-making
(click on “Atlantic v. Howell” link, then click on “Order Denying
Recording Industry Motion for Summary Judgment” link) (last visited
Oct. 17, 2008).

[29] Id.

[30] Id.

[31] Id.

[32] Id.

[33] London-Sire Records, Inc. v. Doe 1, 542 F. Supp. 2d 153, 166 (D. Mass 2008).

[34] Id.

[35] Id.

[36] Id.

[37] Id.

[38] Id. at 167.

[39] Id. at 168.

[40] Id.

[41] Id.

[42] Electronic Frontier Foundation, supra note 1.