How Did We Get Here?

The opinion, authored by Justice Ginsburg, nicely describes the history of the legislation at issue.  In 1989, the United States signed on to the Berne Convention for the Protection of Literary and Artistic Works, a multilateral copyright treaty which first took effect in 1886.  The Berne Convention requires its members to afford “national treatment” to authors from other member countries – in other words, a country must provide foreign authors with the same degree of copyright protection that it provides to its own nationals.  The legislation passed in the United States to implement Berne, however, gave no protection to any foreign work that had already entered the public domain the United States.  The U.S. considered that protecting future foreign works was sufficient to satisfy Berne.  Though other Berne members disagreed with this interpretation and disapproved of it, the Berne Convention does not include an effective enforcement mechanism, leaving disgruntled parties with little recourse.

That changed in 1994, when the Uruguay Round of multilateral trade negotiations resulted in the establishment of the World Trade Organization (”WTO”), an international organization dealing with the global rules of trade between nations, and the Agreement on Trade-Related Aspects of Intellectual Property Rights(”TRIPS”).  The United States became a WTO member and signed the TRIPS agreement.  TRIPS requires its signatories to implement the first 21 articles of the Berne Convention, including the provision requiring national treatment.  Breach of the agreement is subject to enforcement by the WTO, which could subject the breaching party to tariffs or other punitive measures.  The threat of a challenge from other Berne members to the United States’ implementation of the Berne Convention took on new urgency.

Accordingly, Congress took action to ensure that United States was indisputably in compliance with the national treatment requirements of Berne.  It passed Section 514 of the Uruguay Round Agreements Act, which extended copyright to works that remained protected by copyright in their countries of origin, but has passed into the public domain in the United States for any one of three reasons: (1) lack of copyright relations between the country of origin and the U.S. at the time of publication; (2) lack of protection for sound recordings fixed before 1972; and (3) failure to comply with U.S. statutory formalities (such as failure to affix notice of copyright to the work, or failure to register or renew copyright in the work – requirements which no longer exist under U.S. law).  To avoid Takings Clause problems, Congress included some protections for ”reliance parties” – those who had been using foreign public domain works.  A reliance party may continue to make use of a restored work until the owner of the restored copyright gives notice of intent to enforce, either by filing notice with the U.S. Copyright Office within two years of restoration, or by actually notifying the reliance party.  After that, a reliance party may continue to exploit existing copies for one year.  Any reliance party who created a derivative work of a restored work may indefinitely exploit the derivative work upon payment of “reasonable compensation” to the owner of the restored work.  If the parties cannot agree upon “reasonable compensation,” a federal district court judge may set the fee.

As a result of this legislation, a large body of foreign works previously in the public domain became subject to copyright protection in the U.S.  This disrupted the activities of individuals and organizations who were making use of these public domain works.  Some of these individuals and organizations sued to have the legislation declared unconstitutional.  The petitioners included orchestra conductors, musicians, publishers, and others who were making uses of works that were formerly within the public domain.

The Opinion

The petitioners argued that Section 514 of the URAA violates two Constitutional provisions: the Copyright Clause and the First Amendment.

Article I, Section 8, Clause 8 of the Constitution authorizes Congress “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries . . .”  The petitioners argued that clawing back works from the public domain violated the “limited times” restriction.  The Supreme Court dismissed this argument on the basis of its earlier decision in Eldred v Ashcroft, which upheld the extension of the term of copyright in the U.S. to the life of the author plus 70 years.  In Eldred, the Court “declined to infer from the text of the Copyright Clause ‘the command that a time prescription, once set, becomes forever ‘fixed’ or ‘inalterable.””  Applying this reasoning, the Court found that the “terms afforded works restored by §514 are no less ‘limited’. . .”   The Court was unpersuaded by the petitioners’ argument that the “limited term” of foreign works which were previously unprotected by U.S. law was “expressly set to zero.”  The Court found “scant sense in this argument, for surely a ‘limited time’ of exclusivity must begin before it may end.”

In support of conclusion, the Court noted that Congress has removed works from the public domain before.  Most notably, the Copyright Act of 1790 – the first federal copyright act passed in the newly minted United States – granted protection to many works that were previously in the public domain.  Because the drafters of the 1790 Act were “men who were contemporary with [the Constitution's] formation, many of whom were members of the convention which framed it,” the Court found their action “entitled to very great weight.” 

The Court also rejected the petitioners’ argument that the Copyright Clause’s emphasis on “progress of science and the useful arts” requires that any legislation be designed to incentivize the creation of new works – an argument embraced by the dissent.  “Nothing in the text of the Copyright Clause confines the ‘Progress of Science’ exclusively to ‘incentives for creation.’”  Rather, Congress may also “promote[] the diffusion of knowledge” by encouraging the dissemination of works as well.  This seems to put a new gloss on the Copyright Clause, which many - including dissenting Justices Breyer and Alito – have understood to encourage authors to create new works. 

The petitioners also argued that Section 514 violated the First Amendment by inhibiting the free speech rights of individuals and organizations who were already making legal uses of foreign works in the public domain.  The Supreme Court again turned to Eldred to dispatch this argument.  In Eldred, the Court identified “traditional contours of copyright” that “are recognized in our jurisprudence as ‘built-in First Amendment accommodations.’”  One is the idea/expression dichotomy, which provides that copyright does not protect ideas, only the original expression of ideas.  The other, the fair use doctrine, allows the public make certain uses of copyrighted works that would otherwise constitute infringement.  Because Section 514 does not curtail either the idea/expression dichotomy or the fair use doctrine, the Court found that there was no need to subject the statute to the kind of heightened scrutiny otherwise required when legislation places limits on First Amendment rights.  Congress included safeguards within Section 514 to ease the burden on reliance parties who were making uses of foreign works previously within the public domain.  Nor does Section 514 bar public access to the works at issue.  Rather, it requires those who seek to exploit the works to pay for that exploitation or to limit it to “fair uses.”

Where We Go From Here

Reactions to the opinion have varied, predictably, from those who decry it as the destruction of the public domain to those who see no injustice in bringing U.S. copyright law in line with our international treaty obligations.  (A particularly spirited debate can be found at the Chronicle of Higher Education, http://bit.ly/x8rEPG.)  The nagging question remains in many commentators’ minds, in view of of Eldred and Golan, whether Congress can do wrong  in legislating copyrights.  Congress was authorized to extend the term of copyright by 20 years in Eldred, and Congress was likewise authorized to claw back works from the public domain in Golan.  There were reasons for both pieces of legislation, though reasonable minds can disagree about the validity of those reasons.  Could Congress suddenly extend the term of copyright to life of the author plus 150 years?  These questions are not new, and the Golan opinion leaves us to continue chewing them over for the foreseeable future.

It will be interesting to see how the accommodations for reliance parties work as a practical matter.  Will the owners of newly restored copyrights and their associated reliance parties find a way to negotiate mutually acceptable arrangements for ongoing uses?  Or will this provide more fertile ground for litigation?  I would love to hear opinions from those involved.

The opinion stands out in a number of respects, but most starkly for (1) its eagerness to find any basis to rule in Tenenbaum’s favor and (2) its scathing assessment of defense counsel’s performance.  The court was “deeply concerned by the rash of file-sharing lawsuits, the imbalance of resources between the parties, and the upheaval of norms of behavior brought on by the internet,” and did “everything in its power to permit Tenenbaum to make his best case for fair use.”  Courts don’t usually go to such lengths to advance one party’s interests, at least not where the party is represented by counsel.  Here, Tenenbaum was represented both by a private law firm and by a Harvard Law School professor – a team presumably capable of advancing his interests without an assist from the judge.  But this opinion conjures up the image of a judge itching to vault over the bench to argue Tenenbaum’s case for him:

“[T]he court was prepared to consider a more expansive fair use argument than other courts have credited . . . For example, file sharing for the purposes of sampling music prior to purchase or space-shifting to store purchased music more efficiently might offer a compelling case for fair use.  Likewise, a defendant who used the new file-sharing networks in the technological interregnum before digital media could be purchased legally, but who later shifted to paid outlets, might also be able to rely on the defense.”

Tenenbaum made none of these arguments, however, and the court deplored – in unusually harsh and explicit terms – his counsel’s performance in the case.  Among a litany of other transgressions, the court chastised counsel for litigating the fair use defense “as an afterthought, and literally on the eve of trial,” and characterized the defense as “truly chaotic” and based on “perfunctory” papers.  Indeed, Tenenbaum’s papers opposing summary judgment on fair use were structured skeletally, resembling an outline more than a substantive brief; cited only sparsely to the record and to caselaw; addressed the four traditional fair use factors in cursory fashion while emphasizing arguments drawn from unrelated legal doctrines; and invoked generalized incantations of “fairness” more reminiscent of the playground than the courtroom. 

Possibly the most interesting insight into Tenenbaum’s defense, however, comes from his own attorney’s legal blog.  Following Tenenbaum’s loss at trial, and public criticism of his fair use defense, his attorney, Harvard Law School professor Charles Nesson, solicited feedback in the blogosphere on what alternative defenses commentators felt might have prevailed.  In response to one commentator’s list of potentially successful arguments, Mr. Nesson wrote, “these defenses do not join the fundamental issues.  this [sic] trial was not an exercise in getting joel off the hook.”  The notion that counsel’s job could consist primarily of anything other than exonerating his client should boggle any practicing litigator’s mind.   Presumably, Tenenbaum – now saddled with a $675,000 verdict – might wish that his counsel had been more concerned with getting him “off the hook” than with transporting the fair use doctrine to a galaxy far, far away.

Fair Use Analysis

Despite its apparent desire to find in Tenenbaum’s favor, the court correctly noted that the fair use “analysis is not some open-ended referendum on ‘fairness,’ as [Tenenbaum]  would have it, but an effort to measure the purpose and effects of a particular use against the incentives for literary and artistic creation that drive copyright protections.”  Consistent with mainstream fair use jurisprudence, the court examined each of the four statutory factors and concluded that each one weighed against a finding of fair use.  But the court’s overt predisposition in Tenenbaum’s favor unmistakably influenced its reasoning. 

For instance, the court refused to “label” Tenenbaum’s conduct as commercial because “there is a meaningful difference between personal file sharing and a business strategy that exploits copyrighted works for profit.”  In this respect, the court disagreed with the Ninth Circuit, which found in the Napster case that file sharing was commercial because “repeated and exploitative unauthorized copies were made to save the expense of purchasing authorized copies.”  A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1015 (9^thCir. 2001).  In contrast, the court felt that Tenenbaum’s conduct fell “somewhere in the middle” of a spectrum of commerciality ranging from “pure, large-scale profit-seeking to uses that advance important public goals. . .” 

Similarly, in its treatment of the portion of each copyrighted work infringed, the court urged that if Tenenbaum had “just sampled individual songs as a prelude to purchasing the full albums on which those songs appeared[,] [t]hat could well present a compelling argument for fair use.”  Tenenbaum admitted, however, that his purpose in downloading songs was not to sample them in anticipation of later purchases, which the court ultimately acknowledged.  The disappointment that results when the facts do not support a cherished theory of the case is familiar to many a litigator.

After finding that each of the four traditional fair use factors weighed against a finding of fair use, the court then addressed the creative and unusual “non-statutory factors” that Tenenbaum advanced.   These included that: (1) the copyright owners assumed the risk of infringement by releasing their works in an environment where file sharing was rampant; (2) the copyright owners aggressively marketed their works while failing to protect them in any meaningful way, essentially creating an attractive nuisance; (3) Tenenbaum was forced to engage in file sharing because only entire albums, not individual songs, were available for legal purchase; (4) it is unfair for parents and universities to bear the costs of policing the file-sharing activity of children and students; and (5) the “injustice of the action” weighed in favor of fair use. 

The court properly rejected each of these arguments, though it viewed some of them with a degree of approval.  For instance, because the Supreme Court has suggested that the unavailability of a work for purchase through normal channels is a proper fair use consideration, the court felt that Tenenbaum was “on firmer ground” in arguing that his conduct was excused because he could only legally buy entire CDs rather than individual songs.  Nonetheless, by August 2004, when Tenenbaum’s file sharing was detected by the plaintiffs, “a commercial market for digital music had fully materialized,” making the “unavailability of paid digital music [] simply not relevant.” 

The opinion concluded by reiterating that the court was “very, very concerned that there is a deep potential for injustice in the Copyright Act as it is currently written.  It urges – no implores – Congress to amend the statute to reflect the realities of file sharing.”

This opinion – and the verdict that followed it – should strike fear into the hearts of file sharers everywhere.  It is the second staggering jury verdict against an individual file sharer, following the nearly $2 million verdict in Capitol Records v. Thomas-Rasset.  Nonetheless, at least one piece of anecdotal evidence suggests that file sharers are not so easily deterred: overheard in the ticket line at a movie theatre over the holidays, one youth commenting to another, “We can just download it illegally online!”