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Spoiler: Yes.

So, I’m talking about this article of mine that was kindly published by the Vanderbilt Journal of Entertainment and Technology Law (“JETLaw”). See part I here. The issue has to do with one of copyright law’s “exclusive rights”—i.e., things only the copyright owner and his or her authorized licensees may do with a copyrighted work—the right to distribute copies of the work to the public, which we’ll just call the “distribution right.” The question is whether the distribution right includes only consummated acts of distribution, or can also include attempts and offers to distribute.* Most (but not all) courts have held that the right is limited to consummated distributions, but rights holders would very much prefer the broader interpretation. The issue used to be academic, but with file-sharing, it matters now because it’s very difficult to detect consummated downloads**, but it’s easy to prove that the unlicensed works were “made available” for download on the file-sharer’s computer.

* Remember that the distribution right has an important exception: the first sale doctrine. Once you legally obtain a physical embodiment of the work, you may dispose of it as you see fit.

** Putting aside what I have termed the “phonorecord problem,” i.e., that the distribution right appears to require the distribution of actual physical embodiments of the work, which doesn’t quite describe downloading, though so far this hasn’t stopped any courts from deeming downloads to be a form of distribution. The court in Redigi recently held that downloading a file constitutes a distribution of the work for infringement purposes but not a distribution for purposes of the first sale doctrine, an asymmetry that bothers me.

Last time, I explained the subtext of my article. I have no problem with someone making the case that the distribution right includes attempts and offers to distribute.* The law is unsettled, and some courts have gone that way. What I had a problem with was to say so in a treatise, whose function is to help practitioners understand what the law is—not what it might be, or what it should be.

* My own policy view—expressed at the end of the article—is that both alternatives are undesirable. One overprotects; the other under-protects. If I had to lean one way, I’d lean toward the narrow interpretation on the theory that it’s easier to get Congress to increase protection than to moderate it.

It is simply incorrect to say that the distribution right definitively includes attempts and offers to distribute. The actual legal authority—the statute + court decisions interpreting said statute—is too unsettled to say that with any confidence, and the court decisions trend the other way. That’s what a treatise should say. This is important because practitioners—not law professors*—rely on treatises to tell it to them straight. A practitioner advising her client and arguing to a court that the distribution right definitely includes attempts and offers to distribute is likely to be in for a rude shock.

* Yeah, I know, but I’m just an adjunct.

A Legacy of Copyright Law’s Bad Old Days

This time, I’ll explain why I think Nimmer (and really his ghost-writer for this section, Menell—I’ll call them “Menell/Nimmer”) should not have been so confident in the conclusion that the distribution right includes attempts and offers to distribute. Rather than just summarize the article—you can always just read it—I hope to explain to those who don’t practice copyright law where the problems are with Menell/Nimmer’s reasoning. Again, the point is not to prove the underlying issue one way or another, or even to say that Menell/Nimmer’s approach is wrong, but simply to say that Menell/Nimmer’s reasoning is not “treatise-worthy.”

To start, here are five things about copyright law you might not have known:

1. The current Copyright Act was passed in 1976 (and is sometimes known as the “1976 Act”), and took about 15 years to draft, debate and pass.

2. It replaced the Copyright Act of 1909 (usually known as the “1909 Act”) and, in doing so, made several major changes.

3. For our purposes, the most important change the 1976 Act wrought was the way copyright arose. Under the 1976 Act, copyright arises as soon as your expression is “fixed in a tangible medium” (e.g., written on a piece of paper, recorded on tape, punched into a player-piano ribbon, stored in random-access memory).

4. Under the 1909 Act, copyright arose* when you “published with notice.” What “publication” meant was up for vigorous debate—and the outcome of that debate mattered because what constituted “with notice” wasn’t up for debate. Notice meant physically placing on the copies the term “copyright,” “copr.” or (c), the year and the name of the copyright owner. If you published without proper notice? You really blew it: the work went immediately into the public domain. As we’ll see, people didn’t screw up the notice part—but they often screwed up the publication part because, depending on how defined “publication,” it was pretty easy to accidentally publish (i.e., before you knew you needed to put the notice on). There were a lot of lawsuits that turned on precisely when a work was first published.

* Technically, what really happened is that the jurisdiction governing copyright changed. Before publication, it was governed by state law and could last forever, so long as you didn’t publish it. After publication, federal law governed, and the term was quite short: two 28-year periods. The 1976 Act abolished state copyright law—it’s all federal now.

5. Once copyright was established, the 1909 and 1976 Acts worked in much the same way. The copyright owner got a sheaf of exclusive rights—i.e., things only the owner could do with the copyrighted work, such as make copies of it. If you did these things without the owner’s permission, you infringed. The 1909 Act, however, did not use the term “distribute” to describe one of these rights. Instead, it had the right to “publish” and the right to “vend.” As we’ll see, there’s very little legal authority interpreting the extent of these rights, though the other meaning of “publish” gets lots of play, but in a very different legal context.

Menell/Nimmer’s Argument in Five Easy Steps (and Two Hand-Waves)

Now that you have that background, here is Menell/Nimmer’s reasoning, boiled down to the following extended syllogism:

  1. Under the 1909 Act, two of the exclusive rights were the right to “publish” and to “vend” the work.
  2. Courts interpreted the use of “publish” and “publication” under the 1909 Act and its predecessor as including offers to sell.
  3. It is well-known that Congress meant to replace the publication and vending rights in the 1976 Act with a new distribution right.
  4. According to legislative materials from the mid 1960’s (more than 10 years before the 1976 Act was enacted), Congress intended for the new distribution right to fully encompass the publication and vending rights, and then some.
  5. Therefore, the distribution right must include offers to sell and, by extension, offers to distribute.

At almost every step, Menell/Nimmer’s reasoning has at least one major hand-wave.

Hand-Wave No. 1: Publication Right Might Not Have Been So Broad.

It is not at all clear that the publication and vending rights including offers to sell. This is because the 1909 Act used the terms “publish” and “publication” in two different ways: as a right, and as a condition for copyright protection (or the exact opposite, depending on whether there was proper notice). The publication right was hardly ever litigated—in fact, I could find only one instance, in a trial-level decision that Menell/Nimmer was a pains to discredit. By contest, publication as condition for copyright protection was a frequent subject of litigation and, therefore, of legal authority.

The reason it was litigated so frequently was its double-edged quality: publication could give your work copyright protection, or it could void copyright protection. If you failed to affix proper copyright notice to your published work, your work when straight into the public domain. What is proper copyright notice? The word “copyright,” the abbreviation “copyr.” or the © symbol, plus the year and the name of the copyright owner. You’ve seen them.*

* Even though copyright notices aren’t required any more, they’re still pretty common. They still serve a very minor function under current law, and they’ve become pretty traditional.

This would seem an unconscionable result. Imagine, you’ve worked really hard on something that’s protectable, and you make one tiny mistake, and BAM, you’ve just nuked your copyright. Anyone can copy your work now. You can maybe appreciate why the 1976 Act changed things.

The problem was that it was pretty easy to accidentally publish your work without the notice—not because you forgot to affix the notice but because you didn’t realize that you were publishing in the first place. Thus, these cases turned on what constituted a “publication.” Courts were reluctant to, in effect, “work a forfeiture,” but the majority rule quickly became that offers for sale—just putting the work in the public’s reach—was sufficient.*

* Having said that, the decisions on which Menell/Nimmer rely for this proposition tend to prove too much. I.e., they could be decided without such an unforgiving rule. To minimize the harshness of this rule, courts invented the doctrine of “limited publication,” which did not constitute a publication, then proceeded to monkey with the scope of the doctrine. The result was craziness.

Normally, when you have a coherent law, like the 1909 Act, a key term, like “publish,” should have the same meaning all the way through. But that’s not a mechanical rule. We assume a certain amount of care by the drafters of a statute, so we assume more consistency than ordinarily do, but we don’t assume perfection. There are plenty of badly drafted statutes. If a word is used in two different contexts in a statute, we aren’t bound to assume that the term means the same thing in both contexts.

Frustratingly, we just don’t have much legal authority addressing the publication right. There is just one decision on this issue of which I and Menell/Nimmer are aware. In that case, the court had to determine when and where a book was “published” and “vended.” The court concluded, based on some dodgy legal authority, that the books were not “vended” for copyright purposes until there was an actual sale.

Menell/Nimmer don’t think much of this authority, and not without reason. But it’s also the only legal authority on point. The other authority construing the concept of publication deals with a different set of policies. We know precious little about the 1909 Congress’ intent in drafting and passing the 1909 Act*. It’s not that you can’t make a case; it’s that the case isn’t so one-sided that you can say definitively what Congress intended here. This argument isn’t “treatise-worthy.”

* Menell in his article, but not Menell/Nimmer (in the treatise—and why not?) raises the interesting point that Webster’s original 1828 dictionary defined “publish” to include offers to sell, which is pretty persuasive, if circumstantial, evidence of what Congress may have had in mind. (The Oxford English Dictionary doesn’t quite back this up 100%.) Then again, the issue was so completely academic at the time—would anyone have sued for money damages for a failed sale?—it’s just as likely that Congress just didn’t put that much thought in its selection of the nomenclature to define this right.

Hand-Wave No. 2: Use of Legislative Materials.

I’m willing to consider that Congress may have wanted the publication right to be fairly expansive. I was just surprised that the legal authority that Menell/Nimmer relied on wasn’t nearly as firm as they suggest. What I really objected to was their casual use of legislative materials. Menell/Nimmer call these a “trove,” and Menell in his article call them “copyright’s lost ark.” Menell/Nimmer spends almost no time explaining whether it is proper to use these materials, and Menell in his article spends a paragraph or so. Scholars like legislative materials because digging stuff up is what scholars do. But in practice, even large law firms rarely have the time or resources to do so much digging*. And I seriously question whether it’s a good idea for the law to have secret meanings that only scholars can discern.

* Even the RIAA’s best lawyers seem not to have found these materials.

If you’re not a lawyer, you probably don’t know what “legislative materials” are. They are reports that individual members of Congress, congressional committees and subcommittees prepare and issue that document their work in considering and drafting legislation. They are valuable because sometimes these reports say more clearly what the committee or subcommittee was intending than what the final statutory language says. Drafting statutes is an art and requires a good deal of care, and there isn’t always the talent or the time to do a good job, and statutory language can’t come out and say, “Listen, this is what we’re trying to accomplish with this legislation.” But legislative reports can. Legislative reports are also voluminous and not necessarily organized in any helpful way. And sometimes they just make things more confusing.

Courts have mixed feelings about legislative materials. On the one hand, they can shed a lot of light on an otherwise ambiguous statute. On the other hand, over-reliance on them defeats the purpose of drafting statutes, which is give the public notice of the law in question. An ordinary citizen should be able to read a statute and understand what it is permitting, requiring or forbidding without recourse of reams of intensely dull legislative materials that might alter the statutory language. Lawyers like legislative materials, of course, because it gives them more to do. Courts generally require parties to show that a statute is intrinsically ambiguous before the court will consider the legislative materials. You may not use the legislative materials to make the statutory language ambiguous. If the statute says X, and the legislative materials say non-X, too bad, the statute controls.

Normally—and by “normally,” I mean, “every time”—you look at the legislative materials produced by the Congress that actually passed the statute. That’s because we’re interested in what that Congress was thinking when it passed the statute. Every two years, there’s a different set of personalities in Congress (though there’s a good deal of consistency among the key ones—committee chairs, and so forth). Most significant statutes have to be introduced and fail several times before passing, but we don’t care about the previous Congresses’ legislative reports. Different people may have had different things in mind at different times.

The 1976 Act was unusual, even for major legislation. It passed in 1976, but its legislative roots go back to the late 1950’s. Congressional committees were discussing it in earnest in the early 1960’s, and many key portions were drafted at that time—most notably, the distribution right. Should legislative materials produced by the Congress that drafted the language that eventually passed be considered? In other words, should we privilege the intentions of the drafters over the intentions of the enactors?

There is no authority for that. And I can think of a good reason not to: the drafters don’t pass legislation, Congress as a whole does. A member of Congress looking in 1976 at language drafted in 1963 might interpret the language very differently from what the drafter meant. If that member had known what the drafter meant, perhaps he or she wouldn’t have voted for it, or would have insisted on re-drafting the language.*

* This is more generally a common criticism of using legislative history: we might know what the drafters thought, because they’re the ones who prepare the committee reports, but we don’t know what the rest of Congress thought. I’ll just say that a report prepared by your fellow member of Congress someone contemporaneously with your vote at least indicated to you what the drafter meant. With the 1976 Act, there’s no reason to think the members of Congress knew about the 1963 drafter’s intent.

Unambiguous Ambiguity or Ambiguous Unambiguity

But we’re getting ahead of ourselves, because first thing we have to establish is that “distribute” is sufficiently ambiguous—not a little bit, not a theoretical amount, but enough that a reasonable people (excluding those with an axe to grind) could really disagree about meaning. If you look it up in Webster’s, find a definition that’s pretty much on point, and it requires actual consummated delivery of something: “to give out or deliver especially to members of a group <distribute newspapers> <distribute leaflets>.” Under this sense, the term “distribute” isn’t all that ambiguous. Menell/Nimmer doesn’t even go through this crucial step.* And, oh, by the way, you can’t use the legislative materials to create an ambiguity. The ambiguity must be inherent in the statutory language.

* In his article, Menell does try to show that “distribute” is ambiguous. His attempt is, in my opinion, completely unpersuasive. He first argued that because there are multiple definitions, the term is inherently ambiguous. That’s a terrible argument. If you accepted it, you’d have to pretty much say that the most of the English language is hopelessly ambiguous. It’s pretty clear which definition of “distribute” applies here. He then argues that a definition that the most obvious definition is ambiguous because, although it “seems to involve some physical act by the distributor, it could plausibly be accomplished through placing a work into a file-share folder that is searchable and accessible to a network of subscribers.” Um, how is that plausible? He doesn’t say.

Scholars Wish They Got to Pass Laws, but Alas…

But let’s say that “distribute” is ambiguous, and let’s say it’s appropriate to look at legislative materials from the early 1960’s for a statute that wasn’t passed until 1976. There’s something wrong with the materials themselves. The materials that Menell/Nimmer rely on are, without exception, prepared by someone other than a member of Congress. They are prepared by some pretty awesome and influential people, most notably the General Counsel of the U.S. Copyright Office, someone to whom Congress might well have looked for counsel on just these types of issues. But that doesn’t mean that Congress actually took their advice. The reports were duly included in the legislative materials—standard practice—but no member of Congress endorsed or commented on the materials (at least that Menell/Nimmer or Menell could find).* It’s not the experts’ minds we’re trying to read here (as much as scholars might wish it were otherwise); it’s Congress’.

* Indeed, other than the Register’s 1965 Supplementary Report, the “trove” of legislative documents most crucial to Menell’s argument is the transcript of a 1963 “meeting convened at the Library of Congress [that] included sixty-two government copyright officials, industry representatives, and copyright scholars.” Do you know who wasn’t at that meeting? Anyone from Congress (that I can tell). A lot of great minds, and I’m sure I would have preferred to be at that meeting than at any Congressional subcommittee meeting, but just because a bunch of scholars say something doesn’t mean Congress was listening or even cared.

The sad fact is that not every legal question has a definitive answer. In copyright law, one learns to accept this with a patient heart.* As I mentioned earlier, there simply isn’t a good answer to the question of whether the distribution right does or should include attempts and offers to distribute. Both “yes” and “no” are unsatisfactory answers, and there’s no easy way to create middle ground. This is just another puzzle for Congress to figure out.

* Melville Nimmer (the original author of Nimmer on Copyright) wrote that the unanswered questions were why he wrote the treatise in the first place. But even he may have been dismayed by copyright law’s inability to keep up with the digital economy.

Thanks for reading!

Rick Sanders

Rick is currently General Counsel for Software Freedom Conservancy. Previously, he has been practicing law as an intellectual-property litigator since 2000.