Taken Down

Tenise Barker has some powerful enemies. The Department of Justice (DOJ), three multinational record companies and the Motion Picture Association of America (MPAA) have lined up against her.

Barker, who lives in a housing project in the Bronx, has been caught up in a legal battle over the scope of copyright protection. The result could have a profound effect on the entertainment, hardware, software and online industries.

"It could sweep a vast number of people and companies into liability [for infringement], where no one has even suspected liability before," says Andrew Bridges, a partner at Winston & Strawn.

Barker's part in this high-stakes legal war began Aug. 19, 2005, when Elektra Entertainment Group, UMG Recordings and Virgin Records sued her for copyright infringement. The companies alleged that Barker had eight copyrighted songs on her computer that could be downloaded by users of Kazaa's P2P software. By making the songs available for download, Barker allegedly infringed the songs' copyrights.

Barker moved to dismiss the complaint, arguing that "making available" a copyrighted work for distribution does not constitute infringement. The MPAA and the DOJ filed amicus briefs siding with the record companies and arguing that "making available" was infringement. The Computer & Communication Industry Association, the U.S. Internet Industry Association and the online civil rights group Electronic Frontier Foundation filed amicus briefs supporting Barker.

District court cases are rarely important enough to generate so many amicus briefs, but "making available" liability has attracted a lot of attention because it might significantly expand the types of activities that are infringing.

The issue has generated controversy and confusion. Some courts have recognized "making available" liability, while others have rejected it. And one recent ruling has tried to split the difference. In Elektra Ent. Group v. Barker, Manhattan Federal Judge Kenneth M. Karas ruled March 31 that there is no liability for making a work available, but there is liability for "offer[ing] to distribute copies or phonorecords to a group of persons for purposes of further distribution."

Experts aren't sure what this means. How is "offering to distribute" different from "making available"? "The judge did not specify," says Richard Gabriel, a Colorado state judge who until recently was lead national counsel for the record companies in their suits against file sharers.


Public Display
The Copyright Act grants six specific rights to copyright owners. Nothing in the statute, however, mentions a right to make the work available to the public.

That hasn't stopped some courts from ruling this right exists. The 4th Circuit led the way with its 1997 decision in Hotaling v. Church of Jesus Christ of Latter-Day Saints. In that case, a library placed an unauthorized copy of a book on its shelves and made this copy available to the public.

If the book had been loaned out to anyone, the library would have clearly violated the Copyright Act, which gives a copyright owner the exclusive right "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending." There was no evidence that the library had loaned out the book, however, because the library kept no relevant circulation records.

Even without evidence of actual distribution, the court ruled that the library had infringed. Merely making the work available to the public violated the copyright owner's distribution right, the court held. Otherwise, "a copyright holder would be prejudiced by a library that does not keep records of public use, and the library would unjustly profit by its own omission."


Shaping the Law
That was just the beginning. "In [the 2001 case of] A&M Records Inc. v. Napster Inc., the 9th Circuit picked up on Hotaling and applied it to P2P services," says Gabriel. "The court said that 'making available' is a violation of the distribution right."

Some federal district courts have reached the same conclusion, but in most of those cases, the defendants either did not appear or did not wage a significant legal defense.

"I think the RIAA [Recording Industry Association of America] is trying to shape the law by getting favorable rulings in cases that have not been defended vigorously, where the court does not have the benefit of a counterargument," says Bridges, who filed an amicus brief in Barker on behalf of the Computer & Communications Industry Association and the U.S. Internet Industry Association.

Strong counterarguments have been presented in some recent cases with considerable success. Within the past six months, federal courts in Arizona, Connecticut and Massachusetts have ruled there is no "making available" right; making a work available does not violate the copyright owner's right of distribution, in part because a mere offer to distribute is not the same as actual distribution.


Lower Standards
The entertainment companies want a "making available" right because it would make it cheaper and easier to sue alleged file-sharers.

Instead of having to prove that a work was wrongfully downloaded from the defendant's computer, a plaintiff could produce a screen shot of the defendant's shared files folder and show that the copyrighted work was available for download from that folder.

"Record companies are trying to lower the standards they have to meet," says Wendy Seltzer, a fellow at Harvard's Berkman Center for Internet & Society and counsel for the Electronic Frontier Foundation in Barker.

Technology and Internet companies oppose a "making available" right, fearing they might become liable for helping copyrighted works to be wrongfully distributed.

"Google makes all sorts of stuff available on the web," Bridges says. "A modem maker may help make things available."

Some see no obvious limits to a "making available" right. "Almost the entire Internet would be shut down because it makes things available," says Ray Beckerman, a partner at Vandenberg & Feliu who is representing Barker.

In the wake of Barker and other recent rulings, the record companies have revised their tactics against file-sharers. Sort of.

"The language of the complaint has changed," Gabriel says. "We no longer use the words 'making available,' because we no longer have to. We continue to argue that the right of distribution includes the right to make available."

So the legal battle continues.

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Steven Seidenberg

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