Checking the Sources: Why I Questioned Nimmer on Copyright

Practitioner’s POV: Treatises Must Be Reliable

So, I’m very grateful to the Vanderbilt Journal of Entertainment and Technology Law (“JETLaw”)* for publishing my article on Nimmer on Copyright‘s about-face on the “making available” theory of the distribution right**. You can read the whole thing here.

* Better known in my day as “JELP”: Journal of Entertainment Law & Practice.

** I explain what this is about near the end of this post.

Oh, are you back so soon? Well, yeah, I guess I failed to mention that it’s about 20 pages of formal prose (but the margins are so big!), there really are 169 footnotes,* and there are zero snarky asides. But you’re still interested, perhaps because you’ve heard this issue directly affects internet-based commerce**. Since you’re not a legal scholar*** and you don’t have tons of time, would I mind summarizing?

* Did I mention that I was grateful to JETLaw? I threw those footnotes together, but do you see how neat and perfect they are, and that they probably actually support the proposition they’re footnoting? You need to thank the JETLaw student editors for that. Since I was once a professional authorities editor, I know what that entails.

** It does.

*** What, you think I am?

I’ll do you one better. I’ll not only summarize (next time), but also explain to you what (other than the encouragement of the JETLaw editors) caused me, a mere practitioner in Nashville, Tennessee, to spend a whole lot of time explaining why two preeminent scholars were wrong.

Accuracy and Authority

From a purely scholarly point of view, the issue is whether Prof. Nimmer—and his ghost-writer, Prof. Peter Menell—are correct to conclude that Congress really did intend to include mere offers to distribute within the distribution right. To me, that’s an abstract debate that, while interesting, is best kept to scholarly articles in law reviews. In fact, Prof. Menell had already published that exact law review article in 2011, which he titled, “In Search of Copyright’s Lost Ark: Interpreting the Right to Distribute in the Internet Age.” I remember reading that article with interest, wondering about it, then putting it aside because, in the end, it was just a law-review article. Its effect would be minor. And, in the end, what I’m interested in is what can help me better serve my clients.

But Nimmer on Copyright is different because it’s not a mere law-review article. It’s a treatise, which is by nature conservative, prizing impartiality and accuracy above all else. In fact, it’s one of the most respected treatises out there. If you’re a practitioner in copyright law, as I am, it’s indispensable. Aaron & Sanders happily* pays about $200 a month to have access to it.

* Well, not “happily.” Perhaps a better term would be “uncomplainingly.”

The reason Nimmer on Copyright is indispensable is that it is (1) accurate, and (2) authoritative. The two go together. The more accurate a treatise is at stating the law and predicting where the law will go, and longer it can keep it up, the more authoritative it becomes. And, perhaps, the more authoritative a treatise is, the more its accuracy becomes a self-fulfilling prophesy.

One way treatises are accurate is they are honest about unsettled legal issues. If an issue is settled, the treatise can just say what the law is, along with any nuances. But if the issue is unsettled, the treatise will tell you the different ways courts have been ruling on the issue, perhaps telling you (if it can) what the trend is, or perhaps what it thinks the correct view is—but still telling what other views are. This is quite valuable to the practitioner because (1) sometimes you happen to be in a jurisdiction that follows a minority view, and (2) sometimes the minority view is the best one to push on your client’s behalf (yet, it’s also good to know that you have something of an uphill fight, so you can advise your client accordingly).

So when Nimmer on Copyright takes a firm position on a hitherto unsettled legal issue, a copyright lawyer takes notice. The new section on the distribution right was completely re-written, by Prof. Menell at Prof. Nimmer’s invitation. It did not say the law was unsettled, but this is how it ought to be. It pretty much said: this is what the law shall be.

Looking Behind the Curtain

When I first heard about it, I had two simultaneous reactions: (1) finally, we have certainty on the issue! and (2) wait a minute…*, it can’t be that easy, can it? This was, after all, almost a 180-degree change in position. I certainly hadn’t heard of any earth-shattering legal authority on the issue. I knew of Prof. Menell’s article, of course, but there are lots of articles on the issue, and surly Prof. Menell’s hadn’t been subject to enough rigorous debate to cause Nimmer on Copyright to change its mind.

* Say “waaiiit a minute” in a Sarah Vowell voice.

Well, that’s what happened. There had been no new significant legal authority on the issue. Instead, a stripped-down version of Prof. Menell’s article essentially became the new section on the distribution right in Nimmer on Copyright. Prof. Menell’s main point is that, for years, we have all been overlooking definitive proof that Congress absolutely meant to include mere offers to distribute within the distribution right, when it drafted the Copyright Act of 1976. The evidence was public, but it was so easy to overlook that even the well-paid lawyers for the RIAA, who argued strenuously again and again for a “making available” theory of the distribution right, were not aware of it and so did not use it to support their arguments.

Sometimes you take Nimmer on Copyright at its word, but, for me, at least, not this time. With the case law trending the other direction*, and the near-exclusive reliance on legislative history and an awful lot of argumentation, I couldn’t accept it blindly. I needed to look behind the new section at its sources and see if the argumentation held up. And that led me down a long rabbit hole, which resulted in the article.

* Less because of any great conviction and more because the other district courts were going that way. So it was a trend that could still be reversed.

Even if this somehow becomes a blow to the reputation of Nimmer on Copyright, the reputation and usefulness of the treatise is such that it can absorb several blows. But it is expensive. And it has competitors now. And in the end, the expense is justified by its accuracy (both in stating what the law currently is and what it likely to be). Many law firms order Nimmer on Copyright just because—and Aaron & Sanders isn’t about to cancel its subscription any time soon—but many law firms are also looking carefully at their overhead expenses. And there are now competitors in the market. If Nimmer on Copyright starts to lose its reputation for impartiality and accuracy (two aspects of the same thing), it might find it difficult to arrest a downward slide.

The “Making Available” Theory of Distribution

What’s the issue (and why it is so important)? It is typically known as the “making available” theory of the distribution right. I blog about it at some length here. Recall that copyright law prohibits you from doing certain things with copyrighted works without permission, and one of those things is distributing physical embodiments of the copyrighted work. If you got your hands on some hitherto undistributed books or CDs, or on some illegally produced books or CDs, it infringes the distribution right to sell the books or CDs, or even to give them away. The question is whether you can offer to sell the books or CDs—put them on display for sale, but fail to sell any, for example.

For a long time, the issue was dormant because there was no need to resolve the issue. It hardly ever came up: (1) most people who attempt to sell something eventually succeed, and (2) attempting to sell something will still make you vulnerable to an injunction (because the copyright holder doesn’t need to wait until you succeed in infringing if you’re clearly hell-bent on infringing).

In the context of file-sharing, it comes up all the time. Assuming that downloading a computer file constitutes a distribution*, it’s nevertheless really difficult to catch someone in the act of downloading a file as part of a file-sharing network. It’s frustrating because the host computer contains all kinds of copyrighted works, in a place where they can be easily accessed and downloaded. But if you need to prove actual downloads, that’s not enough: you need to prove actual downloads.

* Something that’s not 100% clear—see this blog post about the “phonorecord problem.” Note that the two legal opinions that addresses the subject squarely have held that digital distributions really are distributions even though (1) the physical object is not distributed, and (2) the first-sale doctrine doesn’t apply.

There are other theories on which you can based your claim against the hosting party, but none is as good. You can simply infer actual downloads from the network traffic and the sheer number of available files; and you can infer illegal reproduction from the available files (they came from somewhere, and it’s probably not a legal somewhere).

The problem with these alternate theories is they presented fact questions for a jury. That might be fine for a one-off, but it was not fine for the RIAA in 2003. The RIAA wanted to sue thousands of file-sharers*, and taking thousands of cases all the way to trial wasn’t economically feasible. But a “making available” theory could be determined very early on at summary judgment with only a limited amount of evidence: either the illegal files were on your computer, or they weren’t.**

* We all know how that worked out.

** And if you thought you were clever by deleting all the illegal files, then you were guilty of destroying evidence, which would (among other things) result in a jury instruction to the effect that whatever it was you deleted, it wasn’t good for your case.

Next time, I’ll explain why I think Nimmer/Menell are wrong. Note that this isn’t necessarily the same thing as saying there is no such thing as a “making available” theory of the distribution right. It’s just saying that Nimmer/Menell’s basis for it is wrong.

Thanks for reading!

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1 Comment »

  1. Thanks! This really helped me understand the issues behind “making available” law, which I need for a work project even though I’m not at a lawyer.

    Comment by Jessie — October 13, 2013 @ 1:22 pm

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Rick and Tara are experienced lawyers who have set out to serve clients in a new way. Rick's roots reach back to his Silicon Valley home, where he first developed his litigation-oriented practice before moving to Nashville in 2004. Tara got her start in the music publishing business in Nashville in 1998 and has used that experience to form the basis of her transactional law practice since graduating from law school in 2004.
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