With respect to the exclusive right to distribute the work in copies or phonorecords (17 U.S.C. sec. 106(3)), the U.S. encounters the danger of insufficient international compliance even though it has long been recognized in the U.S., as a matter of statute and caselaw, that the right applies to digital files as well as to material copies.���� But the authorities are inconsistent as to whether the distribution right extends both to offers as well as to actual deliveries of digital copies.�� For the moment, only federal district courts have ruled on the question, but their rulings have ranged from simply asserting that the distribution right includes a making available right, to assimilating making available to “publication” (whose statutory definition encompasses offers to distribute), to requiring actual downloads.���� The last group of decisions thus leaves a gap in U.S. coverage of the full range of the making available right.

With respect to the public performance right, the Second Circuit’s decisions in Cartoon Network v Cablevision and WNET v Aereo seriously compromised U.S. compliance with the WIPO Treaties because the court’s interpretation of the definition of “to perform publicly” excluded on-demand transmissions of broadcast and cable television content offered by remote storage and retransmission services, thus effectively reading asynchronous transmissions out of the statute.�� In ABC v Aereo, which involved retransmissions of broadcast television programming captured by individualized antennas on Aereo’s premises and digitized and stored on Aereo’s servers, A 6-3 majority of the Supreme Court reversed the Second Circuit. ��Justice Breyer’s opinion held that Aereo was “performing” the broadcast programming when the service captured the programming through the users’ individually-assigned antennas, then digitized, momentarily stored in individualized copies and retransmitted the programming to its subscribers at their request.�� The majority also ruled that the performances were “to the public” notwithstanding each transmission’s origin in a separate subscriber-assigned copy.�� The Court’s ruling on this point is consistent with the CJEU’s decision construing the making available right in TV Catchup, a 2014 controversy involving a similar technology.�� What matters is not how many people are capable of receiving a particular transmission, but whether members of the public may receive the performance of the work.�� The majority emphasized Aereo’s resemblance to cable retransmission operators, a service Congress in the 1976 Copyright Act unambiguously brought within the scope of the exclusive right of public performance.�� Although the majority distinguished less cable-like transmission services, notably “cloud storage” models such as Dropbox, and RS-DVR services, it declined to elaborate on the implications of its holdings for these other kinds of internet-based enterprises.���� Finally, the majority posited that in appropriate cases, even if the service is deemed to be “publicly performing” third party content, the fair use doctrine might excuse the transmission.

The dissenters (Scalia, joined by Thomas and Alito) did not address the “public” character of the performance because they contended that Aereo lacked sufficient volition to be “performing” the programming.���� The dissenters distinguished video on-demand services, which exercise volition in the selection of content offered to consumers, from automated retransmission services, which simply relay an upstream transmission entity’s (in this case, the broadcasters’) selection of programming proposed to users.

The Supreme Court’s Aereo decision alleviates some concerns about the conformity of U.S. copyright law with international norms, but the limited scope of the decision allows other shortcomings to persist.�� Thus, the court has reaffirmed the reach of the public performance right with respect to:

near-real time individualized digital retransmissions to members of the public of broadcast content (akin to cable retransmissions);

a-synchronous transmissions to members of the public when the primary value of the service to its customers is to transmit performances of content the customers did not themselves store with the service, or regarding which the customers did not enjoy some possessory relationship to a copy or right to access

Although the Court did not expressly state that the public performance right encompassed offers to transmit performances as well as actual performances, the logic of the decision points toward the broader (and internationally harmonious) interpretation.

The majority did not apply a specific “volition” predicate to determine whether a retransmission service “performs” the content it communicates, but it acknowledged the possibility that in some instances the end-user might be deemed the “performer.”

The Court has not directly spoken to the following issues:

Whether remote storage services are publicly performing content stored at the direction of their customers (but the opinion strongly suggests those services are not publicly performing);

Whether “volition” is a predicate to determine whether a remote storage service “makes” the consumer-requested copies created and retained on its servers;

Perhaps most importantly, because Aereo concerned only the public performance right, the Court did not have occasion to address whether the distribution right encompasses offers to distribute digital copies, or is limited to actual distributions of digital copies.�� As a result, the greatest gap in U.S. compliance with its international obligation to implement the “making available” right remains unremediated.

Jane C. Ginsburg is the Morton L. Janklow Professor of Literary and Artistic Property Law at Columbia University School of Law, and Faculty Director of the Kernochan Center for Law, Media and Arts.

The post U.S. Implementation of the “making available” right: Are we there yet? appeared first on IPOsgoode.

Professor Ginsburg has a new article��forthcoming in WORKING WITHIN THE BOUNDARIES OF INTELLECTUAL PROPERTY, Rochelle Cooper Dreyfuss, Harry First, Diane Leenheer Zimmerman, eds., forthcoming, Oxford University Press (2009).

��

This article addresses the extremes of private ordering, and the extent to which the principal multilateral copyright instruments, the Berne Convention and the TRIPs Accord, limit the range of State responses to the problems encountered at the far ends of the copyright-contract spectrum. At one end, we encounter private ordering at its most aggressive, in which private parties enter into agreements (or, more likely, the stronger party coerces the weaker parties, who may be mass market consumers) to protect subject matter or rights excluded from the ambit of copyright's exclusivity. At the other end, the difficulties arise not from overweening sellers forcing their way with timid buyers, but from failure to find the seller at all. The buyers, would-be copyright exploiters, are unable to locate the right holders from whom to negotiate a license to use their works. In this case, no contract can be concluded, unless the State steps in for the absent right holder. In the first case, a contract has been concluded, but at a cost that the State could not exact were it to seek the same result through public ordering.

The analysis of Part I proceeds in three steps. First, a review of the relevant Berne-TRIPs provisions will identify and assess the "maxima." Second, consideration will be given to whether the prescriptive force of the maxima extends to extra-copyright means of achieving copyright-prohibited objectives. Finally, an inquiry will be made into whether the mandatory exclusions and restrictions apply only to foreign Berne Union works or whether the treaties can also be read to compel their domestic application. Part II shifts from private ordering to State-imposed licenses and other interventions that limit the exercise of exclusive rights. Where Part I inquires whether current multilateral instruments limit private parties' freedom effectively to expand the scope of copyright subject matter or rights, Part II examines whether those same instruments constrain State responses to systemic failures of private ordering by limiting the remedies available against the unauthorized exercise of otherwise exclusive rights. The example of failed private ordering that will be considered concerns the problem of "orphan works," where the inability to find right holders means that would-be exploiters cannot enter into private agreements with them.

This exploration of the extremes of the copyright-contract spectrum finds little prescriptive force in the Berne-TRIPs "maxima" with respect to private agreements to protect subject matter the treaties exclude from copyright's ambit. By contrast, Berne-TRIPs "minima" can meaningfully constrain a State's prerogative to impose compulsory licenses or limit remedies when private agreements cannot be concluded, for example because a willing buyer cannot find the seller (willing or otherwise). The minima should not, however, be regarded as an impediment to resolving the "orphan works" problem. Rather, attention to the minima should enable States to shape an orphan works regime which both permits the exploitation of unlocatable right holders' works, and fairly compensates those right holders who, notwithstanding a rigorously diligent but unsuccessful search, subsequently turn up and object to the uses made of their works.

Professor Jane Ginsburg's article "Contracts, Orphan Works, and Copyright Norms: What Role for Berne and TRIPs?" (Columbia Public Law Research Paper No. 09-200)��is available for download on SSRN .��

The post Contracts, Orphan Works, and Copyright Norms: What Role for Berne and TRIPs appeared first on IPOsgoode.