Tuesday, April 29, 2008

Making Available Right Found Not to Exist By District Court in Arizona


A District Court Judge in Arizona has found in a clearly reasoned and well briefed decision in Atlantic v. Howell in (Bravo EFF!) that merely making a work available by leaving it in a shared folder does not infringe copyright under US law.

In my original haste to post on this, I got a bit mixed up between what the EFF argued and what Judge Wake actually ruled on the issue of whether downloading by Media Sentry - the investigator - could actually constitute infringement.

Bill Patry believes Judge Wake got this part of the decision wrong - and Bill is far more expert on American copyright law than I will ever be, so readers may as well read his take on this:

In Howell, Judge Wake held, in denying plaintiffs' motion for summary judgment, that plaintiffs could rely on downloading by plaintiffs' outside investigative firm, MediaSentry, to establish infringement. This is the only part of the opinion I disagree with. Judge Wake wrote: "[T]he recording companies obviously did not intend to license MediaSentry to authorize distribution or to reproduce copies of their works." The phrasing of this sentence misstates what occurs and how that relates to plaintiffs' theories. The labels absolutely authorized MediaSentry to download files from Howell's shared folder, and then used that downloading as evidence that there had been an actual distribution. As the court itself wrote: "The recording companies' investigator, MediaSentry, did download 12 of the copyrighted sound recordings from Howell's computer. The recording companies assert that they have proven actual distribution for at least those 12 recordings." The court thus permitted the labels to use their investigator to engage in conduct that the labels then pointed to in proving their allegations. But authorized conduct cannot be unauthorized conduct, and since the only evidence of actual distribution (if that is what the downloading is) was authorized, there could be no infringement, as EFF pointed out.

The court attempted to get out of this fatal flaw in plaintiff's case by describing MediaSentry's efforts as "part of an [effort] to stop infringement. " So what? That still doesn't make authorized conduct unauthorized. I am aware that the Eighth Circuit thinks otherwise as did the Leadbetter court in the Western District of Washington last year, but both opinions are clearly erroneous. Copyright owners are certainly entitled to use investigators to discover infringement (assuming the investigators use lawful techniques), but having authorized the investigators' conduct they cannot then rely on that authorized conduct to prove a cause of action whose principle requirement is that the conduct be unauthorized. This is the only respect in which the Howell opinion is disappointing, but that disappointment is real and may cause real problems in future cases.
I thank the those who submitted comments on this point and given me an opportunity to make this post more useful and accurate.

Bill's position and the EFF position are consistent with what I argued successfully in the Supreme Court of Canada in the Kraft case. See para. 49.

In any case, this is a sharp and large nail in the coffin of the existence of a making available right under US law, which is of course something that Canada is expected to provide.



  1. It is far from clear to me that the court in this case held that a copyright owner cannot violate its own copyright. EFF clearly made that submission, but the judge held that he investigator for the record companies who had downloaded the files did not have authority to distribute, so allowing that person to get the files was a distribution. See page 13 line 24-27, page 14 first 10 lines or so.

    There were a couple of reasons for the decision (which was a refusal of summary judgement for the record companies, not a final judgment for the defendant): making available was itself not distribution; there was disputed evidence on intention even to make available; making available might be contributory infringement rather than direct, and only direct infringement was alleged by the plaintiff record companies.

    I am inclined to think it is a smaller nail than Howard does, though it is one more decision that says that making available is not actual distribution.

  2. I'm going to have to agree with John on this one, Howard -- it seems obvious in the decision that Judge Wake wasn't buying the EFF's argument about whether MediaSentry's downloads constitute infringement or not. He seems to believe that case law upholds the idea that they do, and that the EFF hasn't shown any support for the contrary argument.