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.
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.