By Steven Seidenberg for Intellectual Property Watch
The United States can’t make up its mind. On one hand, the country has signed at least nine international agreements that explicitly provide a new digital right for copyright owners: the exclusive right to make their works electronically available to the public. On the other hand, the US courts are uncertain whether this “making available” right exists under US law.

US courts have split over this issue, with some recognising the right and others rejecting it. But a new trend may be emerging. In the last four months, four US federal district courts have ruled that “making available” is not a right recognised by US copyright law.

Moreover, those US courts that have recognised the “making available” right may be on shaky ground. They held this right was part of the copyright owner’s right of distribution, but the relevant international treaties have specifically rejected this interpretation of the right of distribution.

“I don’t know why the [US] courts keep doing this,” said Jerome Reichman, a professor in international copyright law at Duke University School of Law in Durham, North Carolina. “This does not comply with international law.”

Both the World Intellectual Property Organization Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) provide copyright owners with “what is essentially an interactive digital transmission right,” said Michael Schlesinger, counsel in the Washington, DC office of Greenberg Traurig. “It is the right to make the work available [electronically] so it can be accessed at a time and place chosen by the user.”

Article 14 of the WPPT defines the right this way (for producers of phonograms): “Producers of phonograms shall enjoy the exclusive right of authorising the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.”

Article 10 of the WPPT provides the same “making available” right for performers whose performances are fixed in phonograms. Article 8 of the WCT gives this right to “authors of literary and artistic works.”

The United States was one of first countries to sign the WPPT and the WCT. Both treaties went into effect in 2002. They are not self-implementing, however, and the United States has not amended its copyright statutes to create an explicit “making available” right.

Nevertheless, both the US Copyright Office and the US Justice Department have stated that the right exists under US law. The recording industry has repeatedly asserted this right in US courts. The industry has sued many file-sharers for simply putting copyrighted music files in their computers’ “shared files” folders, thus making the songs available to other users of the P2P network in alleged violation of the “making available” right.

Industry Shifting Strategy

However, in the wake of recent court rulings which found this right does not exist under US law, the industry is changing its strategy. It is no longer asserting a separate “making available” right in its complaints, but it is trying to claim this right under other terms.

“We no longer use the words ‘making available’ … but we continue to argue that the right of distribution includes the right to make available,” said Richard Gabriel, who at the time was lead US counsel for the record companies in their suits against file-sharers. He is now a Colorado state court judge.

Initially, US courts were receptive to the “making available” right. The US Fourth Circuit Court of Appeals was the first to find, in the 1997 case Hotaling v. Church of Jesus Christ of Latter-Day Saints, that a “making available” right exists under US copyright law. The court used this right to find that a library had committed infringement by placing an authorised copy of a work on its shelves, where it was available to members of the public.

In the 2001 case of A&M Records, Inc. v. Napster Inc., a second US federal appellate court recognised the “making available” right. “[T]he 9th Circuit picked up on Hotaling and applied it to P2P services,” Gabriel said.

Since that ruling, US federal district courts in numerous file sharing cases have recognised “making available” as a basis for liability. But in most of those cases, the defendants either did not appear or did not wage a significant legal defence. “Those cases are not real precedents,” said Ray Beckerman, a litigator in the New York firm of Vandenberg & Feliu who regularly represents alleged file-sharers.

Other federal district courts have refused to recognise the “making available” right. The existence of the right, under US law, thus remained unclear.

New Judicial Trend: No Right

In February, however, a new judicial trend may have started. In separate cases around the country, four US federal district courts have ruled that no “making available” right exists under US law. See Atlantic Recording Corp. v. Howell, 2008 ILRWeb (P&F) 1665 (D. Ariz. Apr. 29, 2008); London-Sire Records, Inc. v. Doe 1, No. 04 Civ. 12434 (D. MA Mar. 31, 2008); Elektra Ent. Group v. Barker, No. 05-CV-7340 (SDNY Mar. 31, 2008); Atlantic Recording Corp. v. Brennan, 534 F. Supp.2d 278 (D. Ct. Feb. 13, 2008).

One of these cases has provoked further confusion. Elektra v. Barker rejected a “making available” right, but ruled there can be liability for “offer[ing] to distribute copies or phonorecords to a group of persons for purposes of further distribution.” Legal experts are uncertain how this differs, if at all, from the “making available” right.

The problem in the United States is that advocates of the “making available” right are trying to shoehorn it into one of the traditional rights of copyright owners, and it is an awkward fit. “The ‘making available’ right just doesn’t fit well under any other rights,” Reichman said. “That’s why the representatives in Geneva created a separate ‘making available’ right.”

The courts and attorneys which support the right in the US claim that it is included within Section 106(3) of the US Copyright Act, which gives copyright owners 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.”

Critics point out that this provision creates an exclusive right to distribute, whereas “making available” imposes liability even if there is no distribution. Moreover, the statutory distribution right applies only to “copies or phonorecords,” which are defined by the Copyright Act to be physical objects, not electronic data, according to Wendy Seltzer, a fellow at Harvard University’s Berkman Center for Internet & Society.

International View: Not Part of Distribution

The WCT and the WPPT also make it difficult to argue that the “making available” right is part of the right of distribution. “The WCT added ‘making available’ as part of the public performance right, not as part of the distribution right,” Reichman said. “I was there when the parties in Geneva specifically rejected making this part of the distribution right.”

“[T]he WCT includes the act of ‘making available’ as part of the communication right – which would traditionally be the right of public performance under US law,” stated Daniel J. Gervais, an expert in international copyright law who teaches at the University of Ottawa. “The WPPT arguably creates a new right … [because] performers and sound recording producers do not have a full communication right under the main international treaties.”

If the “making available” right was not recognised by the US courts in a case involving a foreign copyright owner, the country would be violating its obligations under the WCT and the WPPT. Moreover, depending on the citizenship of the copyright owner, the United States could be violating other international agreements. The North American Free Trade Agreement, the Central American Free Trade Agreement, and at least seven bilateral free trade agreements all require the US to recognise the “making available” right, according to Schlesinger.

Each of the free trade agreements includes a binding dispute settlement mechanism. “If the United States fails to live up to its obligations under one of these agreements, a foreign party could bring a dispute settlement case,” Schlesinger said.

There is no such simple remedy for a violation of the WCT or the WPPT. Neither treaty contains a binding dispute resolution process, so a foreign copyright owner whose “making available” rights are not enforced in the United States has no forum in which to sue the US directly or indirectly.

“The foreign government would have to deal directly with the US government,” Reichman said. “Should that happen, it would be bad for international copyright relations.”

Steven Seidenberg may be reached at info@ip-watch.ch.