Recent Court Views on "Making Available" Controversy In Copyright Infringement

Western District of Washington Chief Magistrate Brian A. Tsuchida explained: "Because the language of [17 U.S.C.] §106(3) ties a copyright owner's right 'to distribute' to a 'sale or other transfer of ownership, or by rental, lease or lending,' there has been much dispute over whether merely offering a copyrighted item for sale violates the copyright owner's exclusive right 'to distribute.'"

The chief magistrate cited The Making Available Right in the United States, a U.S. Copyright Office 2016 report, and the World Intellectual Property Organization Internet treaties to note: "According to these authorities and majority of cases analyzing the issue, the distribution requirement of §106(3) is satisfied when a copyrighted work is made available for downloading through a file-sharing network — as one might do on a peer-to-peer network … However, because downloading from a digital music store, such as Amazon's, occurs only after the customer pays for the download, the distribution requirement of §106(3) is not satisfied simply by making the copy available for sale."

Granting Amazon's motion to dismiss the "making available" claim, the Western District magistrate then distinguished the case at hand from the library-lending context of Hotaling: "While [library availability] may be analogous to making a work available to the public through a file-sharing network, it is not analogous to requiring a customer to pay for the work before a download can occur."

The other recent decision, Sony Music Entertainment v. Cox Communications Inc., 1:18-cv-950 (E.D.Va. 2019), in the Eastern District of Virginia, involves litigation by record companies and music publishers against online provider Cox Communications, which the district court described as "the largest telecom company in the United States." The plaintiffs alleged vicarious liability and contributory infringement against Cox over peer-to-peer file sharing by Cox's ISP subscribers. A jury ruled against Cox and awarded the plaintiffs $1 billion in statutory copyright damages. Cox in turn filed a post-trial motion for judgment as a matter of law under Rule 50 of the Federal Rules of Civil Procedure, including by arguing the plaintiffs failed to establish actual distribution for underlying direct infringement by Cox subscribers, that instead "the evidence conveyed what the peer had available to share rather than what was in fact shared."

Looking at the Hotaling decision (the federal Eastern District of Virginia resides in the Fourth Circuit), District Judge Liam O'Grady observed: "Courts have struggled to define the scope of the holding in Hotaling. But this Court has held, and now maintains Hotaling did not announce a rule of general applicability, but instead articulated a principle that applies only in cases where it is impossible for a copyright owner to produce proof of actual distribution."

District Judge O'Grady then determined that the Sony Music Entertainment plaintiffs had presented sufficient evidence of direct infringement. "Hotaling has limited applicability in the instant case because it is possible to collect evidence of infringing activity, even if only for a fraction of the actual infringement occurring on BitTorrent and other P2P networks," Judge O'Grady wrote, adding "Cox's expert confirmed, '[i]n the BitTorrent protocol, any participating peer will generally be downloading or retrieving pieces of the file, as well as providing.' … Further, over ninety percent of the infringement notices in suit [based on file-sharing activity tracked by the anti-piracy firm Mark Monitor] reference allegedly infringing conduct on BitTorrent."

Thus Judge O'Grady concluded: "[T]he P2P protocols themselves provided overwhelming circumstantial evidence that comfortably supports direct infringement liability from distribution alone, and a reasonable jury could find as much."

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Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and Professor of Music & Entertainment Studies at the University of Colorado's Denver Campus. For more: http://www.stansoocher.com.