Diversey and the not-yet-existent right to make copyrighted works available to the public
Diversey and the not-yet-existent right to make copyrighted works available to the public
Diversey and the not-yet-existent right to make copyrighted works available to the public

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    Congress is considering granting copyright owners the exclusive right to make their works available—shortly after the Tenth Circuit found that a library could face liability for offering a book on its shelves.

    On January 14, 20114, the House Judiciary Committee’s copyright reform hearings will discuss creating a new exclusive right:  the “make available” right, or the right to
    make copyrighted works available to the public. 
    The hearing comes just weeks after the Tenth Circuit case Diversey
    v. Schmidly
    expanded copyright
    owners’ existing distribution right in
    the library context, moving it closer to the new right the Committee is considering.

    The plaintiff in the case,
    Andrew Diversey, was a Ph.D. student unhappy with his experience at the
    University of New Mexico.  Diversey
    alleged that the university’s dean of graduate studies took a draft of his
    dissertation without his permission and gave it to the university’s library,
    which copied it for inclusion in its collection.  He protested to administrators but received
    no response, and after regular searches eventually found the dissertation
    listed in the library’s catalog.

    One day shy of three years
    after finding the catalog listing, Diversey sued for two counts of copyright
    infringement.  First, he claimed that by
    copying the dissertation for deposit in the library, the university had
    violated his right to reproduce it.  And
    second, he claimed that by listing the dissertation in its catalog, the library
    had violated his right to distribute it to the public—even though he didn’t
    allege that anyone had borrowed his dissertation from the library, or even
    browsed through it.

    Unfortunately for
    Diversey’s reproduction claim, although copyrights may last for a long time,
    copyright claims do not.  Copyright
    owners who believe their rights were infringed may only sue “within three years after the claim accrued.”  This means
    that Diversey could only bring claims that he knew about on or after the day he
    found his dissertation in the library catalog, three years before he
    filed.  Since he learned that the library
    had made a copy before then, he missed that three-year window.

    This meant that if the
    Tenth Circuit wanted to help out a student claiming mistreatment by his
    school’s administration, Diversey’s public distribution claim was its only
    option.  But it faced a problem here as well.  Section 106 grants copyright owners the exclusive right “to distribute copies . .
    . to the public by sale or other
    transfer of ownership, or by rental, lease, or lending.”  Although courts’ understanding of this
    provision may be changing, under the prevailing interpretation simply offering
    a work for distribution is not infringement: plaintiffs must also prove that
    someone actually received the work.

    But the Tenth Circuit
    chose instead to follow Hotaling
    v. Church of Jesus Christ of Latter-Day Saints
    , a Fourth Circuit case from 1997 involving a
    similar situation where a library listed an allegedly unauthorized copy of the
    plaintiff’s work in its catalog.  Hotaling held that “[w]hen a public
    library adds a work to its collection, lists the work in its index or catalog
    system, and makes the work available to the borrowing or browsing public, it
    has completed all the steps necessary for distribution to the public.”  The Hotaling
    court justified finding libraries liable for offering even unread books on
    their shelves with concerns that they would unlawfully copy works for their
    catalogs, then dodge liability for distribution by not keeping records of
    whether patrons read them.  The court in Diversey adopted Hotaling’s broad language but left behind even this shaky justification,
    finding that if Diversey’s allegations were true the library had distributed
    the dissertation by making it “available to the borrowing or browsing
    public.”  It therefore denied the
    university’s motion to dismiss his distribution claim.

    and Hotaling before it, are both bad
    news for libraries because they mean that libraries can infringe copyrights by
    merely listing works in their catalogs.  The
    first sale doctrine protects them from liability for distributing copies that
    were lawfully made,” but this imposes heavy administrative costs; libraries
    are not in the business of determining provenance for every document they offer
    for browsing.  Instead, we value
    libraries precisely because they provide public access to content, a function
    that the “making available” take on the distribution right penalizes.

    Beyond libraries, the “make
    available” interpretation is naturally popular among filesharing plaintiffs:  it means that uploading a file to a shared
    locker or putting it in a peer-to-peer share folder can be unlawful distribution
    even if no one else ever downloads it.  The
    Diversey court claimed that it “need
    not delve into the file-sharing issue” because its facts were about libraries
    lending books to the public, and the statute specifically lists lending.  But the same distribution right applies to
    both books offered at libraries and music shared online, and the court’s
    reasoning seems to clearly apply to both.

    This emergence of a “make available”
    right expands liability in two directions, as more behaviors become unlawful
    distribution, and more peripheral participants become potential defendants.  One major harm of this expansion is the
    uncertainty it creates.  For example, linking
    to or embedding an image on a webpage does not infringe the display right, but determining
    whether it makes the image “available” will probably require litigation.  And broadening direct liability to include
    “making available” will naturally expand the range of defendants facing
    possible secondary liability.

    Finally, the “make
    available” right also makes proving infringement easier because plaintiffs need
    not show that any member of the public actually accessed the work.  A majority of courts, including the Tenth
    Circuit in Diversey, do not allow
    plaintiffs to sue for the “continuing wrong” of an unlawful copy’s existence more
    than three years after the plaintiff learns of the copying, but allowing
    plaintiffs to sue because the defendant began passively making the work
    available somewhere avoids this reasonable limitation.  Whether it is possible to put the genie back
    in the bottle and cease making a work available to the public, especially
    online, is hard to say.

    The Copyright Act already
    grants copyright owners a broad range of exclusive rights, including the right
    to reproduce the work, distribute copies of it to the public, and publicly
    perform or display it.  Diversey signals a concerning expansion
    in the scope of the current distribution right that will make it riskier and
    more burdensome for libraries to continue performing their important social
    functions—and that, if unchecked, could be applied in other contexts to
    unnecessarily expand the scope of liability for copyright infringement.  As the House Judiciary Committee considers
    whether to add a new “make available” right to the Copyright Act, it should
    seek to curb, not encourage, this expansion.