Materials From the 2005 Future of Music Summit

Transcription

TABLE OF CONTENTS
Program Overview .......................................................................................................... 3
Program Agenda ............................................................................................................. 5
Articles
1.
Band, Jonathan. So What Does Inducement Mean? (2005) ..................................... 15
2.
Broussard, Whitney. Current and Suggested Business Practices for the Licensing
of Digital Samples, 11 Loyola Entertainment Law Journal 479,484 (1991) ............ 27
3.
Kohn, Bob. The Art of Music Licensing, Chapter 17 “The Digital Sampling
Controversy” (1993) .............................................................................................. 47
4.
Bridgeport v. Dimension Films. US Court of Appeals for the Sixth Circuit.
September 7, 2004. File Name: 04a0297p.06 (2004) .............................................. 66
5.
Burger, Jim. Grokster Case Decided. June 27, 2005............................................... 82
6.
Carroll, Michael. A Primer on U.S. Intellectual Property Rights Applicable to Music
Information Retrieval Systems. (2003) ................................................................... 87
7.
Litman, Jessica. Sharing and Stealing (2004)....................................................... 104
8.
Maynor, Dawn. Just Let the Music Play: How Classic Bootlegging Can Buoy
the Drowning Music Industry (2002).................................................................... 141
9.
MGM v. Grokster Supreme Court Decision Decided June 27, 2005. No. 04-48 .... 176
10. Podsafe Manifesto License Proposal (2005)......................................................... 232
11. Von Lohmann, Fred. Remedying Grokster (2005) ................................................ 236
12. Zisk, Shoshana. Rock n Roll Control: Censoring Music
Lyrics in the ‘90’s (1996). .................................................................................... 241
Panelist Biographies.................................................................................................... 258
September 11-13, 2005 • GWU’s Lisner Auditorium, Washington, DC
Co-presented by Future of Music Coalition, the Entertainment & Sports Law Committee
of the Maryland State Bar Association and the Maryland Institute for Continuing
Professional Education of Lawyers, Inc. (MICPEL)
ABOUT FUTURE OF MUSIC POLICY SUMMIT
Now in its fifth year, the FMC Policy Summit brings an unprecedented group of panelists
and keynote speakers together with an engaged and diverse audience for a robust debate
about the critical issues at the intersection of music, law, technology and policy.
Presented in partnership with the Entertainment & Sports Law Committee of the
Maryland State Bar Association and the Maryland Institute for Continuing Professional
Education of Lawyers, Inc. (MICPEL), this year’s panels cover such issues as whether
digital distribution is a good deal for artists, to the licensing challenges associated with
sampling, to intellectual policy matters post-Grokster.
http://www.futureofmusic.org/events/summit05/
ABOUT FUTURE OF MUSIC COALITON
The Future of Music Coalition is a non-profit collaboration between leading independent
musicians and experts from the worlds of technology, public policy and intellectual
property law. The FMC seeks to educate the media, policymakers, and the public about
music/technology issues, while also bringing together key stakeholders in an effort to
come up with creative solutions to some of the challenges in this space. The FMC also
aims to identify and promote innovative business models that will help independent
musicians and the public benefit from new technologies.
The FMC actualizes its mission through a number of activities. First, we organize public
discussion of issues that impact musicians and the public at large, making sure to include
a variety of voices in the conversation. Second, we submit testimony, publish articles and
speak on panels to make sure the creators' experience is heard. Third, we encourage
musicians and citizens to publicly document their experiences. Finally, we generate
original research on historic trends and issues of import to the public to more completely
illuminate the mechanics of the music industry.
Policy Summit 2005 CLE Materials
Page 2
ABOUT MICPEL
The Maryland Institute for Continuing Professional Education of Lawyers, Inc.
(MICPEL) is the continuing professional education provider for lawyers in Maryland on
behalf of its partners: the Maryland State Bar Association, the University of Baltimore
School of Law, and the University of Maryland School of Law. MICPEL’s purpose is to
provide, throughout the state of Maryland, the highest quality continuing professional
education for the practice of law in Maryland through educational programs,
publications, and other delivery systems that utilize available technologies in a fiscally
responsible manner.
MICPEL services and products include:
• Fundamental Introductory Seminars
• Intermediate Level Seminars
• Advanced Level Institutes
• Hands-On Skills Workshops
• Legislative and Case Law Updates
• Nationally Recognized Speakers
• Multiple Session Evening Seminars
• Manuals and Handbooks
• Forms on Disk
• Audio Tapes or CDs and Materials
• Video Replays of Seminars for CLE
Credit
• DVDs of Seminars for Purchase
MICPEL seminars address all areas of law utilizing a volunteer faculty of experienced
and respected practitioners, judges, and professionals. In addition, MICPEL often
contracts with nationally recognized experts to provide a broader perspective or
specialized training to Maryland lawyers. MICPEL courses are approved for CLE credit
in Delaware, Pennsylvania and Virginia. www.micpel.edu
ABOUT THE ENTERTAINMENT AND SPORTS LAW COMMITTEE
OF THE MARYLAND STATE BAR ASSOCIATION
The purpose of the Committee is to provide valuable resources, as well as a forum for
members of the bar interested or practicing in the areas of entertainment, art, and sports
law. The Committee provides continuing legal education in the areas of entertainment
and sports law, supports the Maryland arts community, and provides outreach to the
general public on pertinent issues pertaining to these areas of law.
For information about joining the Committee, you may contact Cheryl Slay at
cls@slaylaw.com or visit www.msba.org/sec_comm/committees/entsports/
Page 3
PROGRAM STRUCTURE and SCHEDULE OVERVIEW
This year’s Summit includes twelve panels and fourteen breakout sessions. The panels
are 1 hour, 15 minute-long moderated discussions with up to six panelists that will take
place in Lisner Auditorium. The breakout sessions are one hour long discussions that
will be run concurrently, giving attendees up to four options from which to choose.
These sessions will be held in meeting rooms in GWU’s Marvin Center.
SUNDAY, SEPTEMBER 11
1:00
1:15 Welcome from FMC
1:15
2:30 panel 1: Guiding Artists Through Tremendous Change
2:30
2:45 break/music interlude
2:45
4:00 panel 2: New Label/No Label Models
4:00
4:30 One on one interview with FCC Commissioner Jonathan Adelstein
4:30
5:45 panel 3: Music Policy 101
MONDAY, SEPTEMBER 12
9:00
9:15 Welcome
9:15
10:30 panel 4: State of the Union
10:30
10:45 Break
10:45
12:00 panel 5: Is Digital Distribution Good for Artists?
HOWTO promote and sell your music online
12:45
1:45 Breakouts
Developers Roundtable
License to Cover: A Discussion on Section 115
HOWTO work with the PROs
Oh, Canada
2:00
3:00 Breakouts
Ethics of Contract Negotiation
3:15
4:30 panel 6: I Am the DJ: Podcasting, Webcasting, Music Blogs
4:30
5:00 One on one interview with George Clinton and Hank Shocklee
5:00
6:15 panel 7: Sampling and Shared Art
TUESDAY, SEPTEMBER 13
9:00
9:20 Featured Speaker: Rep. Rick Boucher (D-VA)
9:30
10:45 panel 8: IP in a Post-Grokster World
10:45
12:00 panel 9: The Changing Face of Distribution
12:00
12:30 Keynote: Senator Maria Cantwell
HOWTO Podcast and Music Blog
Reclaiming the Media
12:45
1:45 Breakouts
Ethics of Innovation
Our AAIM is True
Get the HINT: Musicians & Health Insurance
Remix, Reuse, Repercussions: Transformative Use
2:00
3:00 Breakouts
Recommendation Engines and the 5 Cent Solution
Music, Indecency and Censorship
3:15
4:30 panel 11: Radio, Radio: A Discussion on Payola
4:30
4:45 M4: music interlude/break
4:45
6:00 panel 12: The Unheard Music
Page 4
POLICY SUMMIT PROGRAM
SUNDAY, SEPTEMBER 11
LISNER AUDITORIUM
1:00 – 1:15 PM
Welcome by Jenny Toomey Executive Director, Future of Music Coalition
1:15 – 2:30 PM
Guiding Artists Through Tremendous Change
It's no secret that the music marketplace has been undergoing rapid technological and
legal changes. How are artists' teams working to protect artists as the markets change?
What do artists need to know from a business and legal perspective? Panelists include
managers, lawyers, artists and label representatives.
Eric Brace Last Train Home and The Washington Post (moderator)
Charles Bissell The Wrens
Bertis Downs Advisor, R.E.M.
Michael Hausman President, Michael Hausman Artist Management
Peter Jenner Manager, Sincere Management/Secretary General, IMMF
Clyde Valentin Director, Hip Hop Theater Festival
Shoshana Zisk Management, George Clinton Enterprises
2:30 – 2:45 PM
Music by The Wrens’ Charles Bissell
2:45 – 4:00 PM
New Label/No Label models
Lots of musicians get stranded without labels. What are some of the creative ways that
musicians have moved ahead? Examples range from artists running their own labels, to
new alliances and distribution partnerships, to digital-only labels, to alternatives like CD
Baby and Garageband. What works? What are the new challenges for musicians that
choose the new label/no label route?
Kristin Thomson Organizer, Future of Music Coalition (moderator)
John Buckman Founder/CEO, Magnatune
Brian Camelio Owner, ArtistShare
Melissa Ferrick Artist/CEO, Right On Records
Jerry Harrison Multi-platinum producer, Chairman & co-founder,
GarageBand.com, member of Talking Heads
Joe Henry ASCAP artist and songwriter/producer
Sam Jennings Director, NPG Music Group Club (Prince)
4:00 – 4:30 PM
Interview with FCC Commissioner Jonathan Adelstein
Page 5
4:30 – 5:45 PM
Music Policy 101
Our annual overview of the policy issues from an artist's perspective. Policy experts will
educate artists about emerging legislative and policy issues including copyright reform,
payola, and media ownership, and give them practical ways to engage.
Michael Bracy Policy Director, Future of Music Coalition (moderator)
Fred Cannon Senior VP of Government Relations, BMI
Mike Godwin Legal Director, Public Knowledge
Rebecca Greenberg National Director, Recording Artists' Coalition
Mike Mills Bass Player, R.E.M.
Hal Ponder Director of Government Relations, AFM
Johanna Shelton Democratic Counsel, US House Energy and Commerce
Committee
LISNER AUDITORIUM
9:00 – 9:15 AM
Welcome from FMC
9:15 – 10:30 AM
State of the Union
During the first Policy Summit, there were optimistic visions about the imminent arrival
of the “Celestial Jukebox”. In many ways, we’re getting there. We’ve seen iTunes pass
the 500 million download mark, we’ve seen satellite radio subscriptions take off, we’ve
seen music fans and record labels embrace podcasting and music blogs. But the road to
this Jukebox has had its share of potholes. We’ve seen court battles rage over P2P
filesharing. We’ve seen technology companies jostle for front-running position with
proprietary players and software. We’ve also heard confusion and frustration ripple
through many communities as emerging technologies meet traditional licensing
structures. For the fifth Summit in a row, FMC brings together leaders from the music,
law, technology and policy communities for a top-level discussion about the state of the
music industry. What does the Grokster decision mean for innovation? How are
copyright holders embracing new technologies? And most importantly, how are artists
and creators impacted by these changes?
Jim Griffin CEO, Cherry Lane Digital (moderator)
Mitch Bainwol Chairman and CEO, RIAA
Shawn Fanning Founder and Chief Strategy Officer, Snocap
Joe Henry ASCAP artist and songwriter/producer
Andrew Moss Senior Director, Technical Policy, Microsoft
Marybeth Peters Register, US Copyright Office
Gary Shapiro President and CEO, Consumer Electronics Association
10:30 – 10:45 AM
Music by Brian Franklin
Page 6
10:45 AM – 12:00 PM
Is Digital Distribution a Good Deal for Artists?
It's been two years since the launch of Apple's iTunes Music Store, and the number of
downloads and subscription services continues to rise. Record labels have been posting
significant revenue from digital sales, but are musicians and artists seeing a financial
benefit yet? If so, how? From where? Representatives from record labels, digital music
stores, digital distributors and artists' agents will discuss.
Walter McDonough General Counsel, Future of Music Coalition
Kevin Arnold Founder/CEO, IODA (Independent Online Distribution Alliance)
Slim Moon Owner, Kill Rock Stars
David Pakman Managing Director, eMusic/Dimensional Associates
David Printis President/CEO, DE-Urecords.com
Tim Quirk GM, Music Content and Programming, RealNetworks
MONDAY. SEPTEMBER 12
BREAKOUT SESSIONS IN MARVIN CENTER
THREE CONCURRENT SESSIONS
12:45 – 1:45 PM
ROOM 301
HOWTO promote and sell your music online
A practical session for artists and songwriters to share ideas about the best ways to use
the internet to promote and sell music, hosted by Derek Sivers of CD Baby.
12:45 – 1: 45 PM
ROOM 302
Developer's Roundtable
This session will give technology wizards a chance to mingle with others, discuss
emerging technologies and share ideas. Hosted by Robert Kaye Executive Director,
Metabrainz Foundation.
12:45 – 1:45 PM
ROOM 307
License to Cover: A Discussion about Section 115
In June 2005, the US Copyright Office proposed changes to or the elimination of Section
115 to streamline the music licensing process. However, the proposed reforms raise many
questions. The public performance and reproduction/distribution are still two separate
rights, and many people license these rights separately from one another. In addition,
what would happen to the compulsory license that allows artists to record a “cover” song
without prior licensing, which Section 115 grants? Representatives from the music, legal
and technology communities will discuss Section 115 in general and the impact of
proposed reforms.
Ken Kaufman Partner, Skadden Arps (moderator)
David Jones Counsel, Subcommittee on Intellectual Property, Senate Judiciary
Committee
Jonathan Potter Executive Director, Digital Media Association
Josh Wattles Entertainment and Technology Attorney
Page 7
THREE CONCURRENT SESSIONS
2:00 – 3:00 PM
ROOM 301
HOWTO work with the Performance Rights Organizations
This breakout session will give artists a chance to learn about ASCAP, BMI and SESAC.
What do the PROs do? How do they collect data on public performances? How are PROs
adjusting to the new modes of performance, including digital streaming, webcasting and
podcasting? How would proposed changes to Section 115 impact their work?
Marcy Wagman Director, Music Industry Program, Drexel University
(moderator)
Samantha Cox Senior Director, Writer/Publisher Relations, BMI
Marc Hutner Associate Director of Membership Group/Creative Affairs,
ASCAP
Gregory Riggle Director of Broadcast Licensing, SESAC
2:00 – 3:00 PM
ROOM 302
Oh, Canada
While Americans have been busy dissecting the MGM v. Grokster ruling, equally
momentous developments have been happening in Canada. In June, the Canadian
government introduced a sweeping copyright reform Bill C-60. In July, the Canadian
Supreme Court let stand an earlier decision that an existing “copying levy” was legal, but
that it could not be applied to digital copying. In addition, questions have been raised
about the efficacy of the distribution of royalties collected on this levy. Key figures will
discuss Canada's copyright systems, copying levies, digital distribution and support for
arts.
Walter McDonough General Counsel, Future of Music Coalition (moderator)
David Basskin President, Canadian Music Reproduction Rights Agency
Hon. Sarmite D. Bulte, PC Member of Parliament, Parliamentary Secretary to
the Minister of Canadian Heritage
Michael Geist Canada Research Chair in Internet and E-commerce Law,
Univ. of Ottawa
Graham Henderson President, Canadian Recording Industry Association
2:00 – 3:00 PM
ROOM 307
The Ethics of Contract Negotiation
Contract negotiation is a delicate business, usually done in private between artist and
label representatives. How do attorneys handle the ethics of representing artists in some
cases, and record labels in others? What happens to the negotiations process when it's
done in the open, either through public relations fights, lawsuits, or as is done in the
EU/UK through a standard contract negotiations process?
Duff Berschback Entertainment attorney (moderator)
Barbie Baylis Attorney, LaPolt Law
Bob Kohn Chairman and CEO, RoyaltyShare, Author, Kohn on Music Licensing
John Strohm Attorney, Bradley Arant Rose and White, formerly member of
Blake Babies
Page 8
LISNER AUDITORIUM
3:15 – 4: 30 PM
I Am The DJ: Podcasting, Webcasting and Music Blogs
Podcasting, music blogs, digital radio, webcasting. Technological developments have
resulted in a panoply of ways for musicians and music fans to promote, discover and
distribute music. But each new technology also dredges up concerns about
compensation, licenses and control. Can old royalty distribution models be adapted to
meet new technologies, or do we need to rethink the entire revenue stream structure for
musicians and songwriters? Panel includes podcasters, producers and artists who have
experimented with new technologies.
Jon Kertzer Business Development Manager, MSN Music, KEXP-Seattle
host/producer (moderator)
Atri Chatterjee Co-founder and VP Marketing, Mercora
Candace Corrigan Songwriter/Creator, "The Nashville Nobody Knows" podcast
Lucas Gonze Creator, Webjay
Chris MacDonald Co-founder, Indiefeed/Director of Legal Affairs and
Compliance, Association of Music Podcasters
Steve Nelson Program Director, The Current
Ali Partovi CEO, Garageband.com
4:30 – 5:00 PM
Conversation about sampling and creativity with legendary funkmaster George Clinton
and Music Industry Producer, Founder of Public Enemy, President of Shocklee
Entertainment Hank Shocklee
Hosted by Rick Karr
5:00 – 6:15 PM
Sampling and Shared Art
In the 1980s, groundbreaking hip-hop records included hundreds of samples –
breakbeats, horn blasts, choruses, police sirens – as the musical foundation for new raps
songs. These albums were nothing short of revolutionary, and the template for today's
hip-hop and rap community. Sampling has moved from the margins to the mainstream,
but it's also led to a new layer of legal control. Using samples in recordings now requires
licenses and financial transactions to ensure that creators are compensated for the use of
their works, even for the shortest use, from the most obscure source. A panel of attorneys,
managers, and hip-hop producers will discuss how the creative community balances the
rights of creators to be compensated for their work with the desire of other artists to
reference existing works.
Rick Karr former NPR cultural correspondent/Technopop (moderator)
Whitney Broussard Partner, Selverne, Mandelbaum & Mintz
Jeff Chang Author, Can't Stop Won't Stop
Shannon Emamali Executive Director, DC Chapter, Recording Academy
Bob Kohn Chairman and CEO, RoyaltyShare, Author, Kohn on Music Licensing
Hank Shocklee Music Industry Producer, Founder of Public Enemy, President of
Shocklee Entertainment
Page 9
LISNER AUDITORIUM
9:00 – 9:30 AM
Featured Speaker Representative Rick Boucher (D-VA)
9:30 – 10:45 AM
Intellectual Property in a post-Grokster World
In its opinion on MGM v. Grokster, the US Supreme Court found that companies that
show intent to encourage infringement are subject to copyright infringement lawsuits.
Now that the opinion is out, how are the music and technology industries adjusting?
What new legal challenges does the decision create?
Preeta Bansal Partner, Skadden Arps (moderator)
Chris Amenita Senior Vice President, ASCAP Enterprises Group
Mia Garlick General Counsel, Creative Commons
Cary Sherman President, RIAA
Siva Vaidhyanathan Assistant Professor of Culture and Communication, NYU
Don Verrilli Partner, Jenner & Block
Fred von Lohmann Senior Staff Attorney, Electronic Frontier Foundation
10:45 AM – 12:00 PM
The Changing Face of Distribution
While much attention is paid to the growth of digital distribution, subscription models
and satellite radio, the vast majority of music is still sold as physical CDs via terrestrial
distribution channels. But even this area has changed with the entry of new online
sources like CD Baby, Amazon, eBay, and offline places like Starbucks and Whole
Foods. How do the online and offline worlds compare? How are retail record stores
changing to keep up? Why are new players like Starbucks entering this marketplace?
Brian Zisk Technologies Director, Future of Music Coalition (moderator)
Jim Donio President, National Association of Recording Merchandisers
Derek Sivers President and Programmer, CD Baby
Jim Urie President, Universal Music & Video Distribution
Don VanCleave President, Coalition of Independent Music Stores
12:00 – 12:30 PM
Keynote Speaker Senator Maria Cantwell (D-WA)
Page 10
BREAKOUT SESSIONS IN MARVIN CENTER
FOUR CONCURRENT SESSSIONS
12:45 – 1:45 PM
ROOM 301
HOWTO Podcast and Music Blog
A practical guide to using new technologies to promote and learn about music.
Kyle Gustafson Information Leafblower Blog
Mike Holden Musician and Arlingtonmusicscene.com
Eric Olsen Publisher/Editor, Blogcritics.org
Glenn Peoples Publisher/Editor, Coolfer.com
12:45 – 1:45 PM
ROOM 302
Reclaiming the Media
In the wake of Hurricane Katrina, questions about communications and communitycontrolled local radio in a time of need are putting LPFM legislation into sharp focus. In
this breakout session, advocates from the media reform community will discuss
upcoming agenda items at the FCC and Congress including pending LPFM legislation
and media ownership proceedings.
Lauren Coletta Director of Campaigns, Common Cause
Russ Newman Campaign Director, Free Press
Anthony Riddle Executive Director, Alliance for Community Media
Hannah Sassaman Organizer, Prometheus Radio Project
12:45 – 1:45 PM
ROOM 308
The Ethics of Innovation
Rapid technological innovations have presented musicians and consumers with an
exciting array of new ways to purchase, access or listen to music. However, many of
these technologies present challenges to existing copyright, trademark and patent law.
How do attorneys balance new technologies and current laws? In a post-Grokster world,
how do attorneys counsel clients who have a business model or technology that could be
used to infringe copyrights? What are innovators’ experiences navigating these waters,
and what do they need from attorneys?
Jim Burger Member, Dow Lohnes & Albertson (moderator)
Jonathan Band Attorney, Jonathan Band PLLC
Chris Castle General Counsel, Snocap
Marty Lafferty CEO, Distributed Computing Industry Association (DCIA)
12:45 – 1:45 PM
ROOM 310
Our AAIM is True
An introduction to the American Association of Independent Music, a new alliance of
independent music labels. What are A2IM’s goals? What can independent labels
accomplish as an alliance that they can’t do on their own?
Don Rose Acting President, A2IM
Lesley Bleakley CEO, The Beggars Group
Glenn Morrow Owner, Bar-None Records
Molly Neuman Co-owner, Lookout! Records/Manager, Indivision Management
Page 11
FOUR CONCURRENT SESSIONS
2:00 – 3:00 PM
ROOM 301
Get the HINT: Musicians and Health Insurance
Are you a musician? Do you need advice or information about health insurance? You’re
not alone. A 2001 FMC survey of almost 3,000 musicians revealed that the complicated
process of obtaining health insurance overwhelmed many of them. FMC has teamed up
with Alex Maiolo and Chris Stephenson to create HINT – the Health Insurance
Navigation Tool. The goal of this project is to provide informed, rocker-friendly support
and advice to curious musicians who need information about health insurance, for
free. Alex Maiolo Co-owner, Lee-Moore Insurance, will be joining us at the Summit for
a breakout session on HINT and the state of health insurance for musicians.
2:00 – 3:00 PM
ROOM 302
Remix, Reuse, Repercussions: Transformative Use
Since the days of Shakespeare, artists have created new works by improvising on existing
themes. But in recent years, appropriation, sampling, and transformative use have raised
sticky legal questions in the music world. Lawyers are subpoenaing ProTools sound files
to look for uncleared samples. Lawsuits like Bridgeport v. Dimension Films and Newton
v. Diamond have tackled such issues as short samples, and whether improvisation rises to
level of composition. Has the increased litigation had an impact on artists’ ability to
transform existing works?
Whitney Broussard Partner, Selverne, Mandelbaum & Mintz
Lawrence Ferrara Professor and Chair, NYU Music and Performing Arts
Wayne Marshall UW-Madison, Harvard Extension School, Mashit Records
Kembrew McLeod Assistant Professor, Department of Communication Studies,
Univ. of Iowa
2:00 – 3:00 PM
ROOM 308
Music, Indecency and Censorship
Capitol Hill’s recent focus on broadcast indecency has put commercial broadcasters in
the spotlight. But what about the chilling effect of indecency rules on artists, noncommercial and college broadcasters, and satellite radio? How do we balance free speech
with community standards? Panelists include radio station programmers, attorneys, media
activists and policymakers.
Michael Carroll Associate Professor of Law, Villanova Law School (moderator)
John Crigler Attorney, Garvey Schubert Barer
Ken Freedman Station Manager, WFMU
Erik Huey Partner, Venable LLC
Kathryn Montgomery Professor, School of Communication, American
University
Page 12
2:00 – 3:00 PM
ROOM 310
Recommendation Engines and the 5 Cent Solution: How to Crash the Pricing,
Re/Monetize the Music Business, Radically Expand the Catalog and Finally Get
Artists Paid the Big Bucks
With free downloads currently running at 40 billion per year, versus a mere 360 million
annualized paid legitimate transactions, clearly almost all the music consumed in the
world today is being delivered for nothing. However the existence of distributional
instruments such as Google and Bit Torrent create an opportunity to painlessly monetize
these free transactions and recapture the vast sums of money now negligently being left
on the table. The critical choice for the future of music will be made between the now
dominant absolutely free de facto model, which pays no one, and a model which pays
everyone, by selling very large quantities of music for almost nothing: i.e. at a target
sweet spot of 5 cents a download. Accomplishing the scenario requires creation and
implementation of extremely robust Recommendation Engines, built to reliably lead
anyone in the world to all the music in the world they would love if only they knew it
existed. Recommendation Engines, capable of creating a taste-based trend line populated
by as many songs and/or titles one may specify, simply as a function of a few inputted
descriptors, would impose individually generated guided availability upon what might
otherwise prove a discouraging soundscape of music information overload. This breakout
session will discuss the status and promise of recommendation engines.
John Nichols Writer, The Nation (moderator)
Robert Kaye Executive Director, Metabrainz Foundation
Daniel Levitin Bell Chair in Psychology of Information Science, McGill
University
Mike McGuire Research Director, Media, Gartner Inc.
Sandy Pearlman Visiting Scholar, McGill University, Producer Blue Oyster Cult
and the Clash, founder of EMusic
Derek Slater Fellow, Berkman Center for Internet and Society, Harvard
University
LISNER AUDITORIUM
3:15 – 4: 30 PM
Radio, Radio: A Discussion on Payola
Pay-for-play between radio and record labels has long been a hushed reality in the music
industry. Now, New York State Attorney General Eliot Spitzer and the FCC are not only
talking about the illegal practice out loud, but they’re taking action to expose and
eliminate it. What is the impact of payola on radio, record labels, musicians and citizens?
Will these investigations make the radio landscape better?
Opening Remarks by Terryl Brown Clemons Assistant Deputy Attorney General,
Division of Public Advocacy, NYS Attorney General's Office followed by a panel
discussion including:
Neda Ulaby Reporter, National Public Radio (moderator)
Page 13
Jared Ball Educator and Journalist, FreeMix Radio: The Original Mixtape Radio
Show
Thomas Hazlett Professor of Law and Economics, George Mason University
Jeff McClusky President/CEO, Jeff McClusky & Associates
Don Rose Acting President, A2IM
Andy Schwartzman President and CEO, Media Access Project
Jacob Slichter Author/drummer, Semisonic
4:30 – 4:45 PM
Featured Speaker Representative Louise Slaughter (D-NY)
4:45 – 6:00 PM
The "Unheard" Music
Certain genres of music have been perceived by commercial broadcasters and major
labels as not appealing to large enough audiences to merit a place on commercial radio
airwaves or on the shelves in big record stores. However, technological changes, digital
distribution, recommendation engines and new radio outlets have given these genres a
new space in the cultural landscape. Panelists representing some of the "unheard" genres
discuss how emerging technologies such as low power FM, webcasts, satellite radio,
blogs and digital music stores are changing how music is promoted and distributed.
Elliott Adams Founder/Editor, DJ DIY
Heather Hitchens President, Meet the Composer
Suzan Jenkins President, Jazz Alliance International, IAJE
Matthew Shipp ASCAP artist/avant-garde jazz piano player
D.A. Sonneborn Ph.D. Assistant Director, Smithsonian Folkways Recordings
Brian Austin Whitney Founder, Just Plain Folks
Billy Zero Program Director, “Unsigned”, XM Satellite Radio
Page 14
Band, Jonathan. So What Does Inducement Mean? (2005)
Page 15
So What Does Inducement Mean?
Jonathan Band
jband@policybandwidth.com
Last December, when the Supreme Court agreed to hear the entertainment
industry’s appeal in MGM v. Grokster, the Court appeared poised to resolve the growing
controversy between the entertainment and technology industries concerning when a
technology provider could be held liable for copyright infringements committed by users
of that technology. Specifically, the Court seemed ready to explain exactly what it meant
in its 1984 ruling in Sony Corp. v. Universal City Studios, 464 U.S. 417, 442 (1984),
when it stated that the sale of copying equipment did not constitute contributory
copyright infringement if the equipment was “merely … capable of substantial
noninfringing uses.” If 90% of the uses of a product were infringing, as the
entertainment industry alleged with respect to defendants Grokster and StreamCast, could
the product still be “capable of substantial noninfringing uses,” and could the product’s
manufacturer or distributor still escape contributory liability?
However, on June 27, 2005, the unanimous Court went in a different direction
altogether. Rather than explicate the phrase “capable of substantial noninfringing uses,”
the Court held that “one who distributes a device with the object of promoting its use to
infringe copyright, as shown by clear expression or other affirmative steps taken to foster
infringement, is liable for the resulting acts of infringement by third parties.” MGM
Studios Inc. v. Grokster, Ltd., 125 S. Ct. 2764, 2770 (2005). Thus, the Court decided the
case on the basis of inducement, a theory that centers the defendant’s intent rather than
his technology’s characteristics.
The inducement theory first received widespread public attention in the summer
and fall of 2004 when the Senate Judiciary Committee considered S. 2560, The Inducing
Infringement of Copyrights Act, as a response to the lower courts’ decisions in Grokster.
Although a secondary argument in petitioners’ briefs, inducement received extensive
attention in the amicus briefs filed with the Court. During the oral argument, several
Justices --particularly Justice Sandra Day O’Connor – expressed interest in the
inducement theory. It then became the basis for Justice Souter’s opinion for a unanimous
Court.
The question now becomes: what does inducement mean?
Theoretical Underpinnings
In Sony, the Court took the “capable of substantial noninfringing use” test directly
from Section 271(c) of the Patent Act. 1 Acknowledging this borrowing by the Sony
1
35 U.S.C. § 271(c) provides that “[w]hoever offers to sell…a component of a patented machine…
knowing the same to be especially made or especially adapted for use in an infringement of such patent,
and not a staple article of commerce … suitable for substantial noninfringing use, shall be liable as a
contributory infringer.”
1
Page 16
Court, the Grokster Court imported the inducement rule from the Patent Act: “For the
same reasons that Sony took the staple-article doctrine of patent law as a model for its
copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We
adopt it here….” Id. at 2780. 2
In the Patent Act, however, active inducement and contributory infringement
appear in separate subsections, 271(b) and 271(c) respectively, with the staple article
doctrine constituting a limitation (or exception) to contributory infringement. In
Grokster, by contrast, the Court merged inducement and contributory copyright
infringement. The Court achieved this by redefining contributory infringement.
Prior to this case, contributory copyright infringement was typically defined as
knowingly making a material contribution to a direct infringement. See Gershwin
Publishing Corp. v. Columbia Artists Management, 443 F.2d 1159 (2nd Cir. 1971). Sony
was viewed as an exception to this rule, but the precise doctrinal basis for exception was
unclear. Thus, the Ninth Circuit in both A&M Records v. Napster, 239 F.3d 1004 (9th
Cir. 2001), and Grokster, 380 F.3d 1154 (9th Cir. 2004), interpreted Sony as going to the
knowledge prong of contributory infringement – that Sony stood for the proposition that
the distributor of a product capable of a substantial noninfringing use could not be
presumed to know that the product was being used to infringe. Based on this
interpretation, the Ninth Circuit concluded that if a distributor had actual knowledge of
specific infringing uses at a time when the distributor could prevent the infringement, but
declined to do so, the distributor could incur liability. Both Napster and Grokster had
actual knowledge, but only Napster had the ability to respond to it. Since Grokster did
not maintain a centralized server, it had no way to react to a claimed infringement.
Accordingly, the Ninth Circuit did not find it liable for contributory infringement. By
attaching Sony to the knowledge prong, the Ninth Circuit limited Sony in a way that had
no real basis in the Sony decision, and fashioned a rule that led to inconsistent results.
Here, Justice Souter stated that “[o]ne infringes contributorily by intentionally
inducing or encouraging direct infringement.” Grokster at 2776. This is a new definition
for contributory infringement – in essence, Justice Souter replaced knowledge with
intent. And Sony also has a new meaning within this new understanding of contributory
infringement: “Sony barred secondarily liability based on presuming or imputing intent to
cause infringement solely from the design or distribution of a product capable of
substantial lawful use, which the distributor knows is in fact used for infringement.” Id.
at 2778. Here, too, Justice Souter replaced knowledge with intent – Sony now forbids
imputing intent, rather than imputing knowledge, as the Ninth Circuit suggested. Thus,
although Sony knew that the Betamax could be used for infringing purposes, the Sony
rule “limits imputing culpable intent as a matter of law from the characteristics or uses of
a distributed product.” Id. at 2779. Since “[t]here was no evidence that Sony had
expressed an object of bringing about taping in violation of copyright or had taken active
steps to increase its profits from unlawful taping,” id. at 2777, and since such an unlawful
objective could not be presumed, Sony was not liable for contributory infringement.
2
35 U.S.C. § 271(b) provides that “[w]hoever actively induces infringement of a patent shall be liable as
an infringer.”
2
Page 17
In contrast, it appears that Grokster and StreamCast did intend for users to employ
their software to infringe. And Justice Souter explained that “nothing in Sony requires
courts to ignore evidence of intent if there is such evidence….” Id. at 2779. If the
evidence at trial demonstrates that the defendants intended to encourage infringement,
they can be found liable for infringement – even if their products are capable of
substantial noninfringing uses.
What is curious about this redefinition of contributory infringement is that it
appears to run contrary to the Court’s discussion of contributory infringement in Sony. In
footnote 19, the Sony Court drew a clear distinction between the standards for
contributory infringement in copyright and contributory infringement in trademark. The
Court noted that contributory infringement in trademark requires intentional inducement
of infringement, and observed that if this “narrow standard” applied in copyright cases,
“respondents’ claim of contributory infringement [in Sony] would merit little discussion.”
464 U.S. at 439 n.19. Nonetheless, in Grokster the Court adopted an intentional
inducement standard for contributory copyright infringement.
By redefining contributory infringement to focus on intent to induce, and
reinterpreting Sony to forbid presuming intent from mere design or distribution, Justice
Souter may have found an elegant way of preserving Sony while capturing “bad” actors.
Moreover, under this approach, the Sony safe harbor could apply to the provision of
services as well as the distribution of products. If the service were capable of
noninfringing uses, the service provider would incur liability only if it manifested
unlawful intent in some manner beyond providing the service. Of course, an Internet
service provider would still be entitled to 17 U.S.C. § 512’s limitations on remedies, if
the provider satisfied Section 512’s requirements.
Significantly, under the Grokster Court’s new definition of contributory
infringement, inducement is not a separate cause of action, as it is under the Patent Act.
Rather, it is a specific form of contributory infringement that applies to technology
providers. And inducement is not an exception to the Sony safe harbor. To the contrary,
Sony is a limitation on inducement liability. That is, Sony (as interpreted by Grokster)
teaches that a court cannot impute intent to infringe by virtue of the distribution of an
infringing technology if that technology is capable of substantial noninfringing uses.
Instead, the intent must be shown “by clear expression or other affirmative steps taken to
foster infringement....” Id. at 2780.
The Contours of Inducement
Justice Souter defined the inducement rule as: “one who distributes a device with
the object of promoting its use to infringe copyright, as shown by clear expression or
other affirmative steps taken to foster infringement, is liable for the resulting acts of
infringement by third parties.” Id. What “clear expression or other affirmative steps” are
sufficient to manifest an intent to induce infringement?
3
Page 18
During the briefing of the case before the Supreme Court, two distinct theories of
inducement emerged. Several information technology associations, including BSA and
NetCoalition, argued that that a technology provider could incur liability for acts other
than the design and distribution of the technology that encouraged infringement.
NetCoalition, for example, argued that: 1) liability should not lie merely because a
technology company profits from infringement; 2) the purpose for which a technology
has been designed is irrelevant to an assessment of inducement; 3) the mere fact that a
vendor maintains an ongoing relationship with its customers should not give rise to
liability; 4) no act relating to design, manufacture, general advertising, routine support, or
distribution of a technology should lead to liability; 5) acts other than those relating to
design, manufacture, distribution, general advertising, or routine support are outside of
the Sony defense, but do not incur secondary liability if they are facially neutral; and 6)
injunctive relief should be directed only towards the inducing conduct, and not the
distribution of the technology itself.3
By contrast, the content providers argued more broadly that if a provider engaged
in a pattern of encouraging or assisting infringement, where part of the pattern was
providing a technology with certain functionalities, liability could attach. Some amici
argued that a business model based on encouraging mass infringement should lead to
liability.
The proponents of both theories of inducement relied on Federal Circuit precedent
interpreting active inducement under 35 U.S.C. § 271(b). But as one amicus observed,
the Federal Circuit case law concerning inducement is far from consistent or coherent.
The inducement rule articulated by Justice Souter seems to fall in between these
two general approaches. One the one hand, Justice Souter wrote that mere distribution,
even with knowledge of infringing potential or actual infringement, would not be enough
to subject the distributor to liability. Nor “would ordinary acts incident to product
distribution, such as offering technical support or product updates, support liability in
themselves.” Grokster at 2780. Further, Justice Souter indicated that a “classic case” of
inducement would involve advertising an infringing use or instructing how to engage in
an infringing use. Id. at 2779.
On the other hand, the Court also made clear that “[p]roving that a message was
sent out … is the preeminent but not exclusive way of showing that active steps were
taken with the purpose of bringing about infringing acts….” Id. at 2781. Internal
communications can also demonstrate the defendant’s “unlawful purpose.” Id. Justice
Souter then provided three examples of “other evidence” that demonstrated that the
defendants “acted with a purpose to cause copyright violations….” Id. These examples
of other evidence are troubling, and could lead to wasteful litigation if the federal courts
interpret Grokster overbroadly.
3
For a detailed discussion of the briefing in Grokster, see Jonathan Band, “The Grokster Playlist,” 10
Electronic Commerce Law Report 334 (2005).
4
Page 19
The first example is evidence that showed that “each company aimed to satisfy a
known source of demand for copyright infringement….” Id. While this objective
certainly reflects unlawful purpose, the evidence the Court cited is quite thin – e.g.,
constant reference in internal email to Napster, or Grokster’s derivation of its name from
Napster.
The second example is the defendants’ failure to attempt to develop a filtering
tool to diminish infringing activity. This hints at inviting courts to scrutinize technology
companies’ design decisions.
The third “complement to direct evidence of unlawful objective” was that the
defendants’ profitability relied on infringing conduct. Id. Because the defendants
adopted an advertising-based business model, they generated more revenue as more
people used the software, and the software’s utility for infringement drove its high
volume use. This focus on an advertising based business model could be problematic for
the many Internet companies that rely on advertising revenue.
To be sure, the opinion does include language that mitigates these examples. The
Court states that “[o]f course, in the absence of other evidence of intent, a court would be
unable to find contributory infringement liability merely based on a failure to take
affirmative steps to prevent infringement, if the device was otherwise capable of
substantial noninfringing uses. Such a holding would tread too closely to the Sony safe
harbor.” Id. at n.12. Similarly, with respect to the business model, the Court says that
“[t]his evidence alone would not justify an inference of unlawful intent….” Id. at 2782.
Moreover, the Court’s rhetoric suggests that the intent to encourage infringement
must be blatant: “[i]f liability for inducing infringement is ultimately found, it will not be
on the basis of presuming or imputing fault, but from inferring a patently illegal objective
from statements and actions showing what that objective was.” Id. Similarly, the Court
referred to “unequivocal indications of unlawful purpose.” Id. at 2781.
Thus, it is unlikely that a person can be liable for inducement if he advertises a
use that he reasonably believes to be a fair use, but which turns out to be an infringement.
The language of the opinion suggests that liability should attach only if the defendant had
the specific intent to cause infringement: “the object of promoting its use to infringe,” id.
at 2770, “their principal object was use of their software to download copyrighted
works,” id. at 2774, “an actual purpose to cause infringing use,” id. at 2778, “statements
or actions directed to promoting infringement,” id. at 2779, “purposeful, culpable
expression and conduct,” id. at 2780, “a message designed to stimulate others to commit
violations,” id., “acted with a purpose to cause copyright violations,” id. at 2781, “a
principal, if not exclusive, intent on the part of each to bring about infringement,” id.,
“intentional facilitation of their users’ infringement,” id., “unlawful objective,” id., “the
distributor intended and encouraged the product to be used to infringe,” id. at 2782, n.13,
“a purpose to cause and profit from third-party acts of copyright infringement,” id. at
2782, and “patently illegal objective.” Id.
5
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Furthermore, the Court places the inducement rule in a framework that expressly
seeks to balance the goals of copyright protection and technological innovation. Justice
Souter makes clear that the Court is targeting only “purposeful, culpable expression and
conduct, and thus does nothing to compromise legitimate commerce or discourage
innovation having a lawful promise.” Id. at 2780. Hopefully, lower courts will take this
admonition seriously, and will not impose inducement liability promiscuously. Indeed,
an argument could be made that since these other forms of evidence are “complements to
direct evidence of unlawful objective,” id. at 2781, summary judgment must be granted
absent direct evidence of the classic sort: a public message such as an advertisement
encouraging infringement.
Nonetheless, the possibility remains that a court could view an advertising-based
business model taken together with a failure to filter as sufficient grounds to find
inducement liability – or at least sufficient grounds to allow extensive discovery of
internal communications to uncover an expression of intent to promote infringement.
While these indicia would not appear to satisfy the Court’s call for “unequivocal
indications of unlawful purpose,” trial courts confronted by sympathetic plaintiffs and
unsympathetic defendants may interpret inducement over broadly. Such
misinterpretations probably will be corrected by dispassionate courts of appeals, but by
then the damage to a thinly capitalized defendant will have been done.
Another troubling feature of the inducement theory articulated by Justice Souter is
that “the distribution of a product can itself give rise to liability where evidence shows
that the distributor intended and encouraged the product to be used to infringe. In such a
case, the culpable act is not merely the encouragement of infringement but also the
distribution of the tool intended for infringing use.” Id. at 2782, n.13. This means that
injunctive relief can extend beyond the affirmative inducing act and encompass product
distribution. Moreover, Justice Souter rejected defendants’ argument that inducing
conduct with respect to earlier releases of the software should not be attributed to the
current release. Evidently, Justice Souter viewed the current release as “fruit of the
poisonous tree.”
In sum, to prove inducement:
•
•
•
•
The plaintiff must demonstrate that the defendant distributed a technology
with the objective of promoting its use to infringe copyright.
This objective must be shown by clear expression or other affirmative
steps taken to foster infringement. The expression or affirmative steps
must not be merely suggestive of infringing intent; they must constitute
unequivocal indications of unlawful purpose.
Knowledge of infringing potential or actual infringing uses would not be
enough to subject a distributor to liability. Nor would ordinary acts
incident to product distribution, such as technical support or product
updates.
The “classic” evidence of unlawful purpose is advertising an infringing
use or instructing how to engage in an infringing use. These messages can
6
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•
•
•
demonstrate the defendant’s unlawful purpose even if they are not actually
communicated to potential users; they still reflect his intent.
Other evidence of unlawful purpose include:
o Aiming to satisfy a known source of demand for copyright
infringement.
o Failure to take affirmative steps to prevent infringement. This, in
the absence of other evidence of intent, would be insufficient to
trigger liability.
o An advertising-based business model where revenue increases as
infringing uses increase. This evidence alone would not justify an
inference of unlawful purpose.
The inducement rule should not be applied in a manner that compromises
legitimate commerce or discourages innovation having a lawful promise.
The inducement rule also should not inhibit fair use because liability
should attach only if the defendant had the specific intent to cause
infringement.
The Inducement Rule Compared to S. 2560
The Court’s unanimous adoption of the inducement rule ended any momentum, at
least in the short run, in favor of legislation creating an inducement cause of action.
Nonetheless, a comparison of the inducement rule with S. 2560 helps evaluate the
Court’s action.
S. 2560 provided that “[w]hoever intentionally induces any violation [of the
exclusive rights of the copyright owner] shall be liable as an infringer.” § 2(g)(2). The
bill then explained that “intent may be shown by acts from which a reasonable person
would find intent to induce infringement based upon all relevant information about such
acts then reasonably available to the actor, including whether the activity relies on
infringement for its commercial viability.” § 2(g)(1). The bill also contained a savings
clause that stated that “[n]othing in this subsection shall enlarge or diminish the doctrines
of vicarious and contributory liability for copyright infringement or require any court to
unjustly withhold or impose any secondary liability for copyright infringement.” §
2(g)(3).
The savings clause indicated that S. 2560 intended for inducement to constitute a
new cause of action independent of contributory infringement. In contrast, the Grokster
Court viewed inducement as a form of contributory infringement. Inducement under S.
2560 was broader and more open-ended than under Grokster. Significantly, under S.
2560, the distribution of a technology with knowledge that it could be used for
infringement could conceivably have constituted inducement. The Grokster Court,
conversely, made clear that mere distribution of technology with knowledge of actual or
potential infringement could not result in inducement liability. Likewise, the Grokster
Court sheltered ordinary acts incident to product distribution, including technical support
and product updates.
7
Page 22
Moreover, S. 2560 singled out reliance on infringement for commercial viability
as an act from which a reasonable person could infer an intent to induce. While Grokster
did consider a business model that profits from infringement as evidence of unlawful
objective, the Court made clear that business model alone would not justify an inference
of unlawful intent. In other words, S. 2560 places much greater weight on the business
model than does the Grokster Court.
After S. 2560 met with harsh criticism from the technology industry, Senators
Hatch and Leahy, the bill’s sponsors, asked the Copyright Office to propose inducement
legislation. The Copyright Office proposal centered entirely on the defendant’s business
model. The Copyright Office proposal would have imposed liability on:
whoever manufacturers, offers to the public, provides, or otherwise traffics
in any product or service … that is a cause of individuals engaging in
infringing public dissemination of copyrighted works shall be liable as an
infringer where such activity:
a) relies on infringing public dissemination for its commercial viability;
b) derives a predominant portion of its revenues from infringing public
dissemination; or
c) principally relies on infringing public dissemination to attract individuals to
the product or service.4
As with S. 2560, technology companies observed that the commercial viability
test was too easy to meet. Given the narrow profit margins for many technology
products, particularly new technologies, even a small amount of revenue from infringing
activity might make the difference between profit and loss. Moreover, a distributor may
not know with any accuracy how much revenue it receives from infringing activity, nor
the extent of that activity’s contribution to the distributor’s profitability. While Grokster
treated the defendant’s business model as evidence of intent to induce, it did not treat this
evidence as dispositive, unlike S. 2560 and the Copyright Office proposal.
The Copyright Office proposal was narrower than Grokster’s species of
inducement in one critical respect. The Copyright Office proposal applied only to
infringing public dissemination – that is, to infringements of the right of distribution to
the public, public display, and public performance. As a practical matter, this meant that
the Copyright Office proposal applied to technologies enabling infringement on the
Internet, but not private copying, e.g., a CD burner in a personal computer.
The opposition to the Copyright Office’s proposal prompted the staff of the
Senate Judiciary Committee to propose yet another draft inducement bill. The staff draft
targeted intentional inducement, which was defined as “conscious and deliberate
affirmative acts which a reasonable person would expect to result in widespread
4
U.S. Copyright Office, Recommended Statutory Language, Sept. 9, 2004.
8
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violations” of the copyright owner’s rights.5 The draft then listed a variety of acts that
would not, by themselves, constitute intentional inducement. These acts included:
•
•
•
•
•
the defendant’s actual or constructive knowledge that a third party used the
defendant’s technology to infringe;
advertising or promoting a technology when doing so does not encourage use of
the technology to infringe;
providing information on the use of the technology through user guides or
customer support, when the information does not encourage use of the
technology for infringing purposes;
third party product reviews and criticism; and
providing venture capital or financial services.
As with the Copyright Office proposal, the staff draft did not reach infringements that
were private, noncommercial, and not distributed to the public.
The staff draft’s list of acts that, by themselves, did not constitute inducement was
remarkably similar to that created by the Supreme Court. In particular, mere distribution
of a product with knowledge that infringement might result, as well as customer support
for the product, would not result in liability under either Grokster or the staff draft. The
staff draft, however, made no mention of either business models or failure to take
preventative measures. This silence cuts in two ways. On the one hand, the staff draft
did not invite courts to consider these features, as the Grokster Court did by highlighting
them as evidence of intent. On the other hand, the staff draft did not limit the weight a
court could accord such evidence, as the Grokster Court did by stating that each feature,
by itself, was insufficient to impose liability. Thus, under the staff draft, a business
model that profited from infringement, or a failure to take measures to prevent
infringement, could be sufficient by itself to trigger liability.
Even though the substantive tests for inducement under Grokster and the staff
draft appear quite similar, Justice Souter’s opinion contains a gloss on inducement that
signals to lower courts the spirit in which the rule should be applied. He wrote that the
inducement rule “does nothing to compromise legitimate commerce or discourage
innovation having a lawful promise.” Grokster at 2780. Earlier in his opinion, he noted
that the case required the balancing of the “values of supporting creative pursuits through
copyright protection and promoting innovation in new communication technologies by
limiting the incidence of liability for copyright infringement.” Id. at 2775. In short,
Justice Souter made clear that inducement liability should not be imposed in a manner
that would “limit further development of beneficial technologies.” Id. This gloss on
inducement would have been difficult, if not impossible, to include in a statute, and
hopefully will prevent abuse of the concept.
5
Staff of Senate Comm. on the Judiciary, 108th Cong., Staff Discussion Draft on Inducing Infringement of
Copyrights Act of 2004 (Sept. 24, 2004).
9
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Groskter on Sony
By finding direct evidence of inducement, the Grokster Court managed to decide
the case without interpreting Sony’s staple article rule. But interpretation of Sony can still
be relevant to inducement. The Court explained that Sony “barred secondary liability
based on presuming or imputing intent to cause infringement solely from the design or
distribution of a product capable of substantial lawful use, which the distributor knows is
in fact used for infringement.” Id. at 2778. This suggests that if a technology is not
capable of substantial noninfringing uses, then intent to promote infringement can be
inferred from the act of design and distribution. When direct evidence of inducement is
present, as in Grokster, a court need not explore whether the technology is capable of
substantial noninfringing uses, because liability can be imposed by virtue of the direct
evidence of inducement. If, however, such evidence is absent, a court would need to
wade into the staple article rule to determine whether to infer intent from the distribution
of the technology.
While Justice Souter’s opinion does not consider the staple article rule, the two
concurring opinions offer two different interpretations of the phrase “capable of
substantial noninfringing uses.” Justice Breyer, in an opinion joined by Justices
O’Connor and Stevens, argued that Sony prevents contributory liability for product
distribution “unless the product in question will be used almost exclusively to infringe
copyrights….” Id. at 2791. In his view, this standard would be met if 10% of the uses
were noninfringing.
Justice Ginsburg, in an opinion joined by Chief Justice Rehnquist and Justice
Kennedy, rejected this interpretation as departing from the facts and holding of Sony.
Nonetheless, Justice Ginsburg appeared to require a showing of overwhelming infringing
use before imposing liability on the distributor: “there was evidence that Grokster’s and
StreamCast’s products were, and had been for some time, overwhelmingly used to
infringe, … and that this infringement was the overwhelming source of revenue from the
products….” Id. at 2786. She acknowledged that the absolute number of noninfringing
uses of defendants’ software may be large, but those uses were “dwarfed” by the number
of infringing uses. See id. While Justice Ginsburg did not offer a specific benchmark,
“overwhelming” infringing use represents a far more stringent standard than one
requiring only “that a product [be] used ‘principally’ for infringement….” Id. at 2778.
This weaker, 50% of use threshold was advocated by the petitioners and their amici. Id.
In other words, while the concurring opinions disagreed with one another, they
both articulated a narrower standard than that sought by petitioners. Six justices (now
five, with Justice O’Connor’s retirement), would require a showing of at least
overwhelming infringing use that dwarfs noninfringing use before denying the distributor
Sony’s safe harbor. This narrow standard ensures that Sony “leaves breathing room for
innovation and a vigorous commerce.” Id.
At the same time, advocates of a sweeping, Breyer-like interpretation of Sony
were also disappointed. With Justice O’Connor’s retirement, only two sitting justices
10
Page 25
seem willing to sanction products with noninfringing uses of just 10%, even if that 10%
represents millions of uses. Moreover, even these two justices believe that Sony does not
protect distributors who intend to induce infringement.
Practical Guidance
It remains to be seen what impact the inducement test will have on legitimate
companies. If the lower courts apply inducement in the narrow manner the Supreme
Court seems to suggest, it should not interfere with design and distribution of mainstream
information technology products and services. But if the lower courts misapply
inducement, or allow plaintiffs to engage in fishing expeditions looking for incriminating
email, it could become extremely burdensome.
Until the standards for inducement are fleshed out, technology companies can
take the following measures to reduce the likelihood of inducement liability:
•
•
•
•
•
Take care in advertisements, product descriptions, and manuals not to
appear to encourage infringing activity.
Obtain opinion letters from copyright counsel concluding that uses
encouraged through public communications are not infringing.
Include statements in manuals, browse-wrap licenses, etc., encouraging
users not to infringe.
Train employees to be careful in internal communications – to avoid
even joking references to infringing uses of the product.
Explore the feasibility of reducing infringement by technological
measures. If such measures are determined to be ineffective, maintain
proper documentation of the research.
Since this inducement standard applies to everyone – not just technology companies – all
entities should adopt these policies.
11
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Broussard, Whitney. Current and Suggested Business Practices for the Licensing of Digital Samples, 11
Loyola Entertainment Law Journal 479,484 (1991
Page 27
CURRENT AND SUGGESTED BUSINESS PRACTICES FOR THE
LICENSING OF DIGITAL SAMPLES
I. INTRODUCTION
Concurrent with the widespread proliferation and acceptance of
digital sampling technology,1 an increasingly common practice for musical
artists and audio producers is to include portions of the copyrighted
recordings of others in their own works.2 Much to the frustration of the
owner of the applicable copyright in the prior work,3 these samples are often
used without obtaining the requisite permission. Although situations may
exist in which such use of a portion of a copyrighted recording would not
constitute copyright infringement, many instances of unpermitted use are
clearly infringing.4 In between these extremes, as in most areas of the law, a
significant gray area exists.
The ad hoc approach within the music industry to the issues of when
and whether the artist must seek permission to use the sample, from whom
such permission must be obtained, and on what terms permission is granted
has unnecessarily inhibited the growth of a process of creating music that has
many artistic and economic benefits.5 The purpose of this article is to survey
the legal background relating to sampling, examine the current practices in
the recording industry concerning the licensing of digital samples,6 and
derive from this information a standardized licensing scheme for samples.
The author hopes that this effort will enable artists who wish to use samples
in their work to reasonably predict the costs and procedures involved and
provide both licensors and licensees in such situations with common
guidelines and language to use when negotiating the price of the license.
1
A digital sampler enables a musician to record a portion of a sound recording or other audio signal (the
"sample") as binary code in a computer. The musician may recall the sample later, manipulate it and
include it in his own subsequent performance. There are other techniques by which a musician may
achieve similar effects, most notably "scratching" and "needledropping." Scratching is a process whereby
a vinyl record is physically rocked back and forth to manipulate and play the sound recording embodied
therein. Needledropping, also called "looping," is a process whereby a portion of a sound recording is
recorded onto magnetic tape, and the beginning and end of the tape are joined together to form a
continuous loop which, when played, repeats the portion recorded therein ad infinitum. The latter process
is generally used to create a background track for the subsequent sound recording.
All of these processes share the characteristic of potentially infringing on the owners of the copyrights
in the original sound recording and musical' composition, thus for the sake of clarity, the terms "sample"
and "sampling" should be understood to include all processes by which a portion of a sound recording
may be embodied in a subsequent sound recording.
2
Sampling is most common in Rap and Dance music. One source, see infra note 6, reported that at least
180 recordings, by 120 different musical artists, contain samples from recordings by the P-Funk series of
bands (Parliament, Funkadelic, and various spin-off bands formed by George Clinton or Bootsy Collins).
3
Samples may infringe on the copyrights in the prior musical composition, sound recording; or both. See
infra text accompanying notes 24-86.
4
See infra text accompanying notes 31-86.
5
See infra text accompanying notes 95-102 and 106-08.
6
While researching the current practices in the industry concerning sampling, the author contacted many
industry figures to determine the parameters of these practices. These figures include music publishers,
record company executives, and attorneys representing artists and record producers that sample. All of
these people deal with sampling issues on a continuing basis; thus, as a condition to their speaking freely,
many of them requested that their name, company and the artists involved not be identified. This request
was justifiably made so that the publication of this article would neither be deemed a statement of their
general policy, or lack thereof, nor hamper any of the many behind-the-scenes settlements that occur
almost daily concerning sampling. Accordingly, assertions in this comment based upon statements made
by these sources will not receive citations.
Page 28
II. WHY SEEK CONSENT AT ALL?
A. Legal Concerns
By definition, sampling is copying.7 As a result, the use of a sample
may constitute copyright infringement if the sample embodies an excessive
amount of the prior work.8 Artists and record companies therefore undertake
substantial risks when using potentially infringing samples without
permission. Under federal copyright law, the remedies available to one
whose exclusive rights9 have been violated include: actual damages; 10
statutory damages; 11 attorneys fees and costs;12 injunctions against further
exploitation;13 impounding and destruction of infringing materials; 14 and
possible criminal penalties.15
The potential effect of these remedies, should the defense of an
infringement suit prove unsuccessful, may devastate both an artist's career
and bank account. In addition to a judgment against the artist that could
easily amount to several hundred thousand dollars, the time and energy
wasted in attending to the suit may create a substantial impediment to the
orderly development of the artist's recording career. One respected litigator
stated that even a successful defense of a copyright infringement claim may
cost $150,000 or more. Similarly, a pre-trial settlement would be
unnecessarily expensive and inefficient. The defendant would be in a weak
bargaining position as a result of the prior release of his recording, and the
plaintiff would have a natural tendency to be upset about the infringement
and thus reluctant to grant favorable terms for the use.16 When considered in
7
See supra note 1.
See infra text accompanying notes 24-86 for a discussion of what may be considered an excessive
appropriation. For the purpose of this section, it is only necessary to understand that, at some point, the
use of a sample may infringe upon the rights of others. See Newton, Digital Sampling: The Copyright
Considerations of a New Technological Use of a Musical Performance. 11 HASTINGS COMM/ENT L.J. 671
(1989); McGraw, Sound Sampling Protection and Infringement in Today's Music Industry, 4 HIGH TECH.
L.J. 147 (1989); Comment, Digital Sampling: Old-Fashioned Piracy Dressed Up in Sleek New
Technology, 8 LOY. ENT. L.J. 297 (1989); Comment, Digital Sound Sampling, Copyright and Publicity:
Protecting Against the Electronic Appropriation of Sounds, 87 COLUM . L. REV. 1723 (1987). But cf
Comment, Digital Sampling and Signature Sound: Protection Under Copyright and Non-Copyright Law.
6 MIAMI ENT. & SPORTS L. REV. 61.
9
The exclusive rights of the copyright owner of a musical composition are to do or to authorize the
following:
1. to reproduce the copyrighted work in copies or phonorecords;
2. to prepare derivative works based on the copyrighted work;
3. to distribute copies or phonorecords of the copyrighted work;
4. to perform the copyrighted work publicly; and
5. to display the copyrighted work publicly.
Copyright Act of 1976, 17 U.S.C. § 106 (1988). The exclusive rights in a sound recording are limited to
those rights set forth in 1, 2 & 3 above. 17 U.S.C. § 114. There are other important limitations to the rights
in sound recordings. See infra note 73.
10
17 U.S.C. § 504b.
11
17 U.S.C. § 504c.
12
17 U.S.C. § 505.
13
17 U.S.C. § 502.
14
Copyright Act of 1976, 17 U.S.C. §§ 503, 506b (1988).
15
17 U.S.C. § 506a.
16
With rare exception, this situation describes the conditions under which very expensive settlements
occur. These settlements often involve full or partial assignments of the copyright(s) and cash payments in
the tens of thousands of dollars. Even if no litigation is initiated, virtually all record and publishing
companies polled stated that the price charged for the use of a given sample would be substantially higher
if the company had to contact, on its own initiative, the user of the sample after the release of the
infringing record. In addition, the perception within the industry that an artist or record company is
stealing from others may have the effect of increasing the costs of licenses for subsequent samples and
8
Page 29
light of these possibilities, the wisdom of obtaining prior permission to use a
sample is readily apparent.
Generally, the costs of a suit or settlement would be borne entirely
by the artist. Although a record company could be liable under contributory
infringement theories 17 or by virtue of its infringement of the copyright
owner's exclusive right to distribute the copyrighted material,18 in virtually
all cases there will be a clause in the contract between the record company
and the artist in which the artist agrees to indemnify the record company
from any claim that the recordings produced pursuant to the contract violate
the rights of third parties.19 Despite such contractual language, the record
company does undertake a substantial risk in not licensing, or causing the
licensing of, samples used by its artists. If the artist is not in the financial
position uphold the indemnification, the record company will be left to bear
the costs of the suit or settlement.20 Some record companies have responded
to this risk by requiring proof from the artist, prior to the record company's
acceptance of the masters,21 that the samples used in a recording have been
cleared with the owners of the applicable copyright. This practice
undoubtedly will, and should, be followed by more record companies in the
future if the unlicensed use of samples is not otherwise curtailed.
A sobering thought for those who think their sampling will go
unnoticed: at least one major music publisher has now begun to buy each rap
album and single as it hits the charts 22 and has its employees listen carefully
perhaps costs associated with other, unrelated deals.
17
There are two types of situations in which this doctrine may apply. One is where the defendant: 1)
actively induces, yet does not directly participate in, the infringement; 2) has knowledge of the infringing
acts; and 3) has a direct financial stake in the infringement. See, e.g., Elektra Records Co. v. Gem
Electronic Distributors, Inc., 360 F. Supp. 821 (E.D.N.Y. 1973). The other is where the defendant: 1) has
the power or right to supervise the acts of the direct infringer; and 2) has a financial stake in the infringing
acts (knowledge of the infringing acts is not required). Shapiro, Bernstein & Co. v. H.L. Green Co., 316
F.2d 304 (2d Cir. 1963). Arguably, either of these doctrines may apply in the recording artist-record
company relationship.
18
See supra note 9 and accompanying text.
19
Typical provisions to this effect would read:
None of the Masters hereunder, nor the performances embodied thereon, nor any other
Materials, as hereinafter defined, nor any authorized use thereof by [the record company] or its grantees,
licensees or assigns, will violate or infringe upon the rights of any third party. "Materials" as used herein
means: all Controlled Compositions; each name or sobriquet used by you or Artist, individually or as a
group; and all other musical, dramatic, artistic and literary materials, ideas and other intellectual
properties furnished or selected by you, the Artist or any individual producer and contained in or used in
connection with any recordings made hereunder or the packaging, sale, distribution, advertising,
publicizing or other exploitation thereof.
4 ENTERTAINMENT I NDUSTRY CONTRACTS N EGOTIATING A ND DRAFTING GUIDE Form 160-1, cl. 1.07 (D.
Farber 7th ed. 1990) [hereinafter Contracts]; and
You agree to and do hereby indemnify, save and hold [the record company] and its licensees
harmless of and from any and all liability, loss, damage, cost or expense (including legal expenses and
reasonable attorney fees) arising out of or connected with any breach or alleged breach of this agreement
or any claim which is inconsistent with any of the warranties or representations made by you in this
agreement
….
Id. at cl. 1.12.
20
Whether or not the record company is responsible for these expenses, such proceedings will disrupt its
normal business operations. While a major record label may be able to effectively withstand this
disruption due to its considerable resources, a smaller label with limited financial and human resources
may not be able to fare as well.
21
In a standard recording contract, the record company has the right to reject recordings delivered
thereunder that infringe upon the rights of others. 4 Contracts, supra note 19, at cl. 3.01. Should the
record company reject the recordings, the artist is deemed to have not fully performed his obligations
under the contract and must either clear the violative portion or deliver a substitute recording.
22
There are many charts in the industry that show the relative sales and airplay of albums currently in
release. The chart most commonly referred to is the Billboard Top 200 Pop albums and Top 100 singles.
Page 30
for samples that may infringe on the company's rights. A major record
company whose catalog includes artists who are frequently sampled has been
reported as employing a similar practice. Such procedures will spread
quickly if the unpermitted use of samples continues to go unchecked. An
artist or record company should not therefore justify the risks involved in
unpermitted sampling by thinking that no one will notice.23 As a standard
business practice, potentially infringing samples should be cleared prior to
the release of the subsequent recording.
B. Practical Concerns
A further benefit of licensing samples would be the creation, through
experience and familiarity, of industry-wide standards regarding the terms of
such licenses. These standards would greatly reduce the uncertainty currently
present in decisions relating to the use of samples and would allow the artist
to accurately choose the most efficient course of action. The more accurately
an artist understands, prior to going into the studio, what types of sampling
require consent and approximately how much this consent would cost, the
better position he will be in to make intelligent decisions as to whether it was
economically advantageous to use a particular sample. He will sample only
when it was "worth it" to him. Conversely, the artist will not be inhibited
from sampling by the uncertainty as to whether he can obtain the use of a
sample for a fair price or whether he may ultimately risk facing costly
litigation or forced settlements. Since, when use occurs, the owner of the
original copyright receives fair compensation, he too would benefit from the
artist's increased knowledge.
Standardization may also permit a reduction in the overall costs of
the licenses. If the owner of the applicable copyright in the sample felt that
generally he would be fairly compensated for the use of samples, he may be
more inclined to grant favorable terms in the license for each use.
Transaction costs associated with such licensing would also be greatly
reduced, because if both parties knew what the terms were likely to be prior
to negotiation, they would spend less time concluding the deal.
III. AT WHAT POINT DOES THE USE OF A SAMPLE REQUIRE CONSENT?
Two distinct copyrights are embodied in any given popular
recording: that of the musical composition24 and that of the sound recording
itself.25 These two copyrights are virtually always owned by different
Billboard also publishes similar charts that focus on "black" music. Rap albums may and often do, appear
on both types of charts.
23
Such a position would be unreasonable even if companies were not specifically looking for infringing
samples, as it is entirely inconsistent with the nature of the record business. Records are very expensive to
produce, costing on the average (for a major label release) $150,000 -$175,000 each. When one adds the
costs associated with manufacturing, promotion, marketing, overhead and related expenses, the
investment may easily exceed $250,000. Even a release on a small record label, although objectively
costing considerably less, will represent a significant investment relative to the company's available
assets. Clearly, the goal of recording artists and their record companies is to be noticed, so that they may
sell records and recover their investment.
24
There is no definition of "musical work" or "musical composition" in the Copyright Act. A musical
composition is generally understood, however, to be the song (i.e., words and music) upon which a
recording is based.
25
17 U.S.C. § 101 provides:
'Sound recordings' are works that result from the fixation of a series of musical, spoken, or other
sounds, but not including the sounds accompanying a motion picture or other audiovisual work,
Page 31
companies 26 that have different interests and concerns. Further, use of a
sample may infringe the copyright in the sound recording without infringing upon the copyright in the musical composition.27
In order to prove copyright infringement, the plaintiff must show: 1)
ownership of a valid copyright; and 2) impermissible copying by the
defendant.28 The second element of the test requires a two-step analysis. The
first step is to establish that the defendant copied the plaintiff's work.29 The
second step is to show that the defendant's copying constituted improper
appropriation.30 The question posed by the second step of this test – at what
point the use of a short portion of a work will constitute improper
appropriation – is likely to be heavily contested in the context of sampling
and thus is the focus of this section. The answer to this question will differ
significantly for musical compositions and sound recordings.
A. Musical Compositions
1. Infringement Under the Copyright Laws
In its most basic terms, the test used to determine whether an
appropriation of a portion of a prior work and its incorporation into a
subsequent work is improper, is whether, as a result of the appropriation, the
two works are "substantially similar."31 In such determinations, courts
generally focus their inquiries on the qualitative value of the portion
appropriated.32 As applied to musical compositions, the standard of
infringement has been variously explained by the courts as whether the
defendant appropriated: "the whole meritorious part of the song;"33 "what is
pleasing to the ears of lay listeners;"34 "that portion of the [plaintiff's work]
upon which its popular appeal, and hence, its commercial success,
regardless of the nature of the material objects, such as disks, tapes, or other phonorecords, in which
they are embodied.
A sound recording is the recording of a particular performance of a musical composition, or song.
Accordingly, the sound recording is a derivative work of, and thus embodies, a musical composition.
When one samples a recording, one risks infringing upon both the copyright in the musical composition
and the copyright in the sound recording.
26
The copyright in a sound recording is owned by a record company, and the copyright in a musical
composition is owned or controlled by a music publisher.
27
A classic example of this is a sample of a popular singer's shout. This phenomenon will be discussed at
greater length below. Compare infra text accompanying notes 61-67 and text accompanying notes 70-80.
28
Arnstein v. Porter, 154 F.2d 464, 468, aff’d on reh'g. 158 F.2d 795 (2d Cir. 1946). The first element of
this test is unlikely to be a factor in the vast majority of potential sampling cases and thus it will not be
discussed in depth. The possession of a valid copyright certificate is prima facie evidence of the validity
of the copyright and the facts stated in the copyright registration. 17 U.S.C. § 410c. As a matter of course,
music publishers and record companies will be in possession of a valid copyright certificate stating that
they are the owner of the applicable copyright in the work.
29
Again, the first step at this stage is not the concern of this article, for the act of sampling is by
definition a clear case of actual copying. See supra note 1. Although the subtle issues involved in actually
proving sampling, and thus copying, are beyond the scope of this article, such proof may be shown either
by comparison listening tests or by waveform analysis.
30
Arnstein. 154 F.2d at 468.
31
3 M. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT, § 13.03[E] (1990).
32
See infra text accompanying notes 33-39. Such an approach is particularly germane in the context of
sampling, as most samples involve the appropriation of relatively short portions of the prior work. Of
course, the greater the amount appropriated, the more likely that the portion will contain something of
sufficient qualitative value to constitute infringement.
33
Northern Music Corp. v. King Record Distrib.Co., 105 F. Supp. 393, 397 (S.D.N.Y. 1952).
34
Arnstein v. Porter, 154 F.2d 464, 473 aff’d on reh'g. 158 F.2d 795 (2d Cir. 1946).
Page 32
depends;"35 and "the very part that makes [the plaintiff's work:] popular and
va1uable."36
The qualitative approach to substantial similarity was more fully
explored in M. Witmark & Sons v. Pastime Amusement Co.37 (“Witmark”).
In Witmark, the defendant publicly performed the chorus of the plaintiff's
song to accompany the showing of a silent movie.38 The defendant argued
that such a performance could not infringe the copyright in the song as solely
the chorus was performed and such a quantitatively small use was de
minimus.39 The court rejected this argument, stating that should such a
purely quantitative approach be followed, “the fairest portion of a musical
composition, the very parts that make it popular and valuable, may be taken
with impunity, provided the work is not taken in its entirety.”40 Although
recognizing the impossibility of formulating a precise rule, the court did
offer some guidelines as to when the line between de minimus use and
infringement would be crossed:
To constitute infringement it is not necessary that the
whole, or even a large portion, of the work shall have been
copied, [but] on the principle of ‘de minimus non curat lex’ it
is necessary that a material and substantial part of it shall
have been copied; it being insufficient that mere words or
lines have been abstracted. Between these extremes no
precise and definite rules can be cited. If so much is taken
that the value of the original is sensibly diminished, or the
labors of the original author are substantially and to an
injurious extent appropriated by another, that is sufficient…to
constitute piracy. The question is one of quality rather than
quantity, and is to be determined by the character of the
[original] work and the relative value [to the original work]
of the material taken.41
Although it is helpful knowing that a qualitative approach is to be
followed, such knowledge does not fully resolve the issue. The true question
is what are the qualities that make short portions of a musical composition
protectable by copyright law? The answer may be found by considering the
nature of the language describing infringing appropriations and the general
goals of the copyright laws.
The specific qualitative aspect that courts tend to focus on in
determining whether an appropriation constitutes copyright infringement is
the commercial value of the portion appropriated. This may be inferred from
the consistent use of words like "valuable,"42 "popular,"43 and "commercial
success"44 to describe the qualities of an infringing appropriation. These
35
Robertson v. Batten, Barton, Durstine & Osborn, Inc., 146 F. Supp. 795, 798 (S.D. Cal. 1956).
Johns & Johns Printing Co. v. Paull-Pioneer Music Corp., 102 F.2d 282, 283 (8th Cir. 1939).
37
298 F. 470 (E.D.S.C. 1924), aff’d. 2 F.2d 1020 (4th Cir. 1924).
38
The court found the chorus to be 27 seconds long. Id. at 473.
39
Essentially, "de minimus" is a shorthand phrase meaning, in this context, "too insubstantial an
appropriation to be an infringement." The phrase comes from the Latin maxim "de minimus non curat
lex," which translates into English as: "The law takes no notice of trivialities." LATIN WORDS & PHRASES
FOR LAWYERS 64 (R. Vasan 1980).
40
Witmark. 298 F. at 478.
41
Id. at 476-77.
42
See supra notes 36, 40 and accompanying text.
43
See supra notes 35, 36, 40 and accompanying text.
44
36
Page 33
words clearly relate to the potential remuneration to the author for his efforts.
The importance of the commercial value of the portion appropriated was
explicitly acknowledged in Arnstein v. Porter ("Arnstein").45 The court stated
that "plaintiff's legally protected interest is not, as such, his reputation as a
musician but his interest in the potential financial returns from his
compositions which derive from the lay public's approbation of his efforts.46
If a plaintiff's legally protected interest is in the potential financial returns
from his compositions, then logically those portions of his compositions with
the greatest commercial value will be the most highly protected.
In popular music, the most commercial element of any given
composition is, almost without exception, the chorus.47 The chorus is the
comparatively brief, highly repetitive and especially memorable section of a
song that is itself repeated, generally after each verse and often incessantly at
the end of the song. This barrage of repetition has a tendency to cause the
chorus to echo in the listener's head long after the song has played and
become the song's primary identifying characteristic.48 That such a portion
becomes so distinctive and unforgettable is crucial to the creation of public
demand for the song, which leads to, among other things, radio airplay and
record sales. The airplay and record sales in turn bring potentially staggering
income from performance and mechanical royalties.49 The protection of the
chorus is thus justifiably quite high, as it will often embody the bulk of the
commercial value m a song.50
Due to its high commercial value, exceedingly short appropriations
of the chorus have been considered infringing. Boosey v. Empire Music Co.,
Inc.51 (“Boosey"), involved two songs that the court found were
“considerably different, both in theme and execution, except as to [the]
phrase, ‘I hear you calling me.’”52 This phrase, and the music accompanying
the words, were “practically identical”53 in both compositions. The court held
that such an appropriation was an infringement because, even though it was a
very short phrase, it had “the kind of sentiment in both cases that causes the
audiences to listen, applaud, and buy copies in the corridor on the way out of
the theater.” The fact pattern in Boosey closely parallels a typical sampling
fact pattern. In the context of sampling, it is highly likely that the two songs
will be "considerably different" in overall theme and execution, sharing only
the brief, sampled phrase. Thus Boosey stands for the proposition that if the
sampled phrase is commercially important to the original work, then the
appropriation of that phrase will constitute infringement.
The chorus is valuable precisely because it is distinctive and
memorable. One useful guideline that may be drawn from this fact is that to
45
Arnstein v. Porter, 154 F.2d 464 aff'd on reh’g, 158 F.2d 795 (2d Cir. 1946).
Id. at 473.
47
The chorus is often referred to within the industry as the "hook," as it is the part of the song which
"hooks" the listener and causes him to purchase a recording of the song. See also infra note 48.
46
48
"The chorus of the song. ..is often the only art of the song that anybody cares about. The Gershwin
brothers' 'I Got Rhythm' ...has certainly been a classic for a long time, but who remembers its verse?'
Sherman, Musical Copyright Infringement: The Requirement of Substantial Similarity, 22 COPYRIGHT
L. SYMP. (ASCAP) 81, 103 (1977).
49
See infra notes 100-01. I
50
Johns & Johns Printing Co. v. Paull-Pioneer Music Corp., 102 F.2d 282, 283' (1939) (citing Witmark &
Sons v. Pastime Amusement Co., 2 F. 470 (E.D.S.C. 1924).
51
224 F. 646 (S.D.N.Y. 1915).
52
Id. at 647.
53
Id.
Page 34
the extent a portion of a song has these characteristics, it will be
commercially significant, and therefore likely to be protected. Phrases that
are repeated often throughout the original composition would probably fall
within this category.54 One commentator has suggested that in addition to
phrases that are repeated, short phrases at the beginning or end of a song may
be sufficiently memorable to afford protection.55
Repetition of the appropriated portion in a defendant's work may
also affect the determination of whether the use is infringing. As a simple
matter of mathematics, such repetition should create a greater likelihood of
infringement if the portion appropriated was also repeated throughout the
original work. If the defendant takes a phrase consisting of six consecutive
notes from the plaintiff's composition, in which the phrase is repeated fifteen
times, and the defendant repeats the phrase ten times in his own composition,
he has not taken just the six notes, but has actually appropriated sixty notes.
Such a use would be more likely to make the overall sound of the two
compositions substantially similar, thus constituting infringement, than if the
phrase were used only once in the subsequent work.56 Accordingly, although
the repetition of a phrase in both the plaintiff's and defendant's works will not
necessarily create substantial similarity,57 it may have the effect of making
the appropriation of a fairly short, yet commercially important, phrase more
likely to be an infringement.
One significant limitation to the protectability of an exceedingly
short phrase within a musical composition is that the protected expression
embodied therein is closely intermingled with the unprotected ideas that the
expression conveys.58 When there are a limited number of ways in which an
idea, e.g., a musical tone, may be expressed, there will be no copyright
protection for such expressions. In Morrissey v. Proctor & Gamble Co.,59 the
defendant appropriated, almost verbatim, certain sweepstakes rules that the
plaintiff had previously copyrighted. Although the situation was such that, if
the rules had been protectable, the defendant would have certainly been
liable for infringement, the court nonetheless held for the defendant, stating:
[w]hen the uncopyrightable subject matter is very narrow,
so that the 'topic necessarily requires,' if not only one form
of expression, at best only a limited number, to permit
copyrighting would mean that a party or parties, by
copyrighting a mere handful of forms, could exhaust all
possibilities of future use of the substance.60
As applied to musical compositions, this rule would mandate that a
single musical note would never be copyrightable, as a note is properly
considered an idea that may only be expressed one way. The copyright in a
54
See, e.g., Fred Fisher, Inc. v. Dillingham, 29 F. 145 (S.D.N.Y. 1924). "[T]he effect upon the ear [of a
short phrase is] entirely different when the figure is rolled over and over again." Id. at 148.
55
Shennan, supra note 48, at 109.
56
See, e.g., Darrell v. Joe Morris Music Co., 11 F.2d 80 (2d Cir. 1940). "The strength of the plaintiff's
case lies in the substantial identity of a sequence of eight notes in his song and theirs; and indeed, that
hardly does justice to the similarity between the two, because the sequence reappears in each song so
frequently as to constitute the greater part of each." Id.
57
Davilla v. Harms, Inc., 36 F. Supp. 843, 844 (S.D.N.Y. 1940).
"In no case does copyright protection for an original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or discovery, regardless of the form in which it
is described, explained, illustrated, or embodied in such work." Copyright Act, 17 U.S.C. § 102b.
59
379 F.2d 675 (1st Cir. 1967).
60
ld. at 678 (citations omitted).
58
Page 35
musical composition protects the sequence of notes and words from which it
is made. As there are only twelve possible notes in traditional western music,
to afford protection to any one of them would severely limit musical
expression by removing that note from the pool of available ideas upon
which a composer could otherwise base his expressions. Similarly, a twonote phrase would not be protectable, as there are only a very limited number
of two-note combinations that can be made from the available pool of twelve
notes. This same rationale would also probably prevent the protection of
combinations of three notes. As the number of notes in the sequence
increases, the possible permutations of notes and rhythm would inhibit this
doctrine from denying protection.
To date, the smallest infringing appropriation from a musical composition has been a phrase consisting of six notes.61 However, in Elsmere
Music, Inc. v. NBC,62 the court strongly suggested that the taking of a fournote phrase is capable of rising to the level of copyright infringement. In this
case, the appropriated portion of the composition was four notes and two of
the words from the phrase “I Love New York.”63 The phrase was constantly
repeated in both the plaintiff's and defendant's work, and was referred to by
the court as “the heart of the composition.”64 The defendants used the portion
of the plaintiff's composition in a parody on the television show Saturday
Night Live, changing the words to “I Love Sodom.”65 Although the court
found that the use was not an infringement because it was a satire, and thus
excused under the fair use doctrine,66 it stated that the taking was of
“substantial nature,” “easily recognizable” and “capable of rising to the level
of a copyright infringement.”67 Due to the factors relating to the
idea/expression dichotomy discussed above, a phrase consisting of less than
four notes would not likely be protected by the copyright in a musical
composition, despite the repetition of the phrase in the original or subsequent
work.
2. Perceptions Within the Industry
Because infringement standards for musical compositions have been
heavily litigated through the years, a somewhat uniform, if only intuitive,
perception has evolved within the music industry concerning the type of
appropriation that may constitute infringement.68 Although the test as applied
61
See Boosey v. Empire Music Co., 224 F. 646, 647 S.D.N.Y. 1915); supra notes 51-53 and
accompanying text.
62
482 F. Supp. 741 (S.D.N.Y. 1980), aff’d 623 F.2d 252 (2d Cir. 1980).
63
64
Id. at 744.
ld.
ld. at 743.
66
The fair use doctrine is an affirmative defense to a claim of copyright infringement. Thus, even though
an appropriation may constitute infringement, a finding of fair use would relieve the defendant of liability.
The four factors to applied in a fair use analysis are: (1) the purpose and character of the use; (2) the
nature of the copyrighted work; (3) the amount and substantiality of the portion used; and (4) the effect of
the use upon the potential market for, or value of, the copyrighted work. 17 U.S.C. § 107. This doctrine is
primarily applicable to works of criticism, comment, news reporting, teaching, scholarship, or research.
ld. Sampling per se is unlikely to fall consistently within this exception to copyright infringement, due to
its commercial nature and effect on the potential markets for the original work. However, specific
instances of sampling could conceivably be excused under traditional applications of the doctrine, such as
parody or criticism.
67
Elsmere Music, Inc. v. NBC, 482 F. Supp. 741, 744 (S.D.N.Y. 1980).
68
One publisher interviewed by the author unknowingly paraphrased Justice Stewart's infamous words
concerning obscenity in Jacobellis v. Ohio, 378 U.S. 184, 197 (1964), stating, in effect: "I can't define
65
Page 36
to any given situation may be argued at length, as reported to the author,69
the standard itself is generally understood within the industry to include
those appropriations embodying an arguably valuable portion of the original
composition. This standard is essentially in agreement with the discussion in
the previous subsection, and thus will not be discussed at length. As
mentioned, the standard is fairly ambiguous, thus some illustrative examples
from music publishers will be helpful in developing an intuitive
understanding of the parameters of infringement.
Portions of a musical composition that are perceived as clearly
unprotectable include: a shout by a famous singer; any single note; two
chords; three notes from a nonessential bass line; commercially insignificant
phrases; and commonplace phrases that are not original to the plaintiff.
Appropriations that are perceived as clearly constituting infringement
include: the chorus; any portion that is clearly identifiable as having been
taken from the original composition; and any portion which an average
person would immediately recognize and associate with the original
composition. Situations in which an appropriation may or may not be
perceived as constituting copyright infringement include the use of: a mildly
noticeable portion of the melody; or a portion only recognizable by experts
or a similarly limited audience.
B. Sound Recordings
1. Infringement Under the Copyright Laws
The question of what constitutes the smallest theoretically
protectable portion of a sound recording 70 is somewhat more difficult to
answer. As yet, no cases have been decided on the issue.71 Accordingly, any
analysis of such a standard will necessarily involve a close examination of
the relevant statutory provisions and the potential analogous application of
the standards relating to musical compositions.
Although copyright protection for all works extends solely to the
protection of expression of ideas and not the ideas themselves,72 the
protection granted to sound recordings is uniquely worded to conceptually
separate the ideas from the expression represented therein. A copyright in a
sound recording protects only the actual recorded performance, or pure
infringement, but I know it when I hear it."
69
See supra note 6.
70
Federal copyright law does not extend protection to sound recordings fixed prior to February 15, 1972.
17 U.S.C. § 301c. For sound recordings fixed before this date, state law, generally the doctrine of
misappropriation, may be used to protect such works. Id. This should not drastically affect a prudent
artist's decision to obtain consent for the use of a sample, since misappropriation applies if: 1) the plaintiff
creates an intangible product through extensive time, labor, skill and money; 2) the defendant makes use
of that product and gains a special advantage because the defendant is not burdened with the same
production costs; and 3) as a result, the plaintiff suffers commercial damage. See, e.g., International News
Service v. Associated Press, 248 U.S. 215 (1918). Sampling would seem to fall well within the scope of
such protection.
71
Cases involving infringement of the copyright in a sound recording have so far been concerned with
record piracy, which is the appropriation of a sound recording in its entirety. To this date, all of the cases
filed relating to digital sampling have been settled prior to judgment, and thus there have been no judicial
constructions of the copyright laws relating to the appropriation of short segments of a sound recording.
See, e.g., Island Records, Inc. v. Next Plateau Records, Inc., No. 87 Civ. 8165 (S.D.N.Y. Nov. 17 1987);
Thomas v. Diamond, No. 87 Civ. 7048 (S.D.N.Y. Oct. 1, 1987); Castor v. Def Jam Records, No. 87 Civ.
6159 (S.D.N.Y. Aug. 25, 1987).
72
17 U.S.C. § 102b.
Page 37
expression, of the song which it embodies.73 In sharp contrast to musical
compositions, no unprotectable ideas are intermingled with the protectable
expressions embodied in sound recordings.
That a sound recording is, by definition, a pure expression of ideas
should permit quite substantial protection against sampling. The ideas
embodied therein may be easily borrowed, free from the chilling effect of
potential liability for copyright infringement. Any person wishing to incorporate an element of a sound recording may do so with impunity by hiring
musicians to precisely recreate that element in a subsequent recording. They
cannot, however, appropriate any of the actual sounds embodied on the
sound recording as such sounds are pure expression and fully protected.
Since the transfer or use of ideas will not be inhibited by complete
protection, a compelling argument exists that the protection should be
absolute.
This reasoning is strongly supported by the words of the Copyright
Act, which states that the exclusive rights to copy and prepare derivative
works granted to the owner of the copyright in a sound recording do not
extend to subsequent sound recordings that consist “entirely of an
independent fixation.”74 By the words of this section, Congress appears to
have intended that a subsequent sound recording consisting of an actual copy
of any portion of a prior sound recoding, so long as such portion was not
independently fixed, would infringe on the owner's copyright. Under this
interpretation, all samples taken from prior recordings would infringe upon
the copyright in that sound recording. Although the words of the Copyright
Act may support such a broad statement, this interpretation may be subject to
judicial narrowing. As a practical matter, it is unlikely a court would find, for
instance, the use of 1/1000th of a second from a sound recording to constitute
infringement. Logically, such an extremely brief appropriation would be de
minimus. If a court did not apply the strict test proposed above, it would
likely apply a standard analogous to the substantial similarity test discussed
above in connection with musical compositions.75 However, due to the
difference in the nature of the elements protected in musical compositions
and sound recordings, the standards of infringement will necessarily differ.
The substantial similarity test suggests that the measure would be based on
the qualities of the protectable portion of the sound recording that have
commercial value.76 Since the sound recording of a performance is pure
expression and thus contains no unprotectable elements,77 the essential
question would be whether the portion of the performance captured by the
73
“The exclusive rights of the owner of copyright in a sound recording…do not extend to the making or
duplication of another sound record that consists entirely of an independent fixation of other sounds, even
though such sounds imitate or simulate those in the copyrighted sound recording.” 17 U.S.C. § 114b.
Thus, the copyright protection granted to sound recordings with respect to the copying and preparation of
derivative works is limited to the copying of the actual sounds of the sound recording. If one were to hire
musicians and record one's own version of the song embodied therein, there would be no infringement of
the sound recording copyright even if the subsequent performance sounded identical to the prior
recording. Whether such an act would infringe on the copyright in the musical composition is a separate
matter.
74
17 U.S.C. § 114b (emphasis added). See supra note 73.
75
See, e.g., United States v. Taxe, 540 F.2d 961 (9th Cir. 1976). See supra text accompanying notes 3246.
76
77
That is, protection would not be limited by the fact that there are only eleven notes to choose from
since it is only the actual recording of each note is protected, not the note or sequence of notes per se. See
supra note 58 and accompanying text.
Page 38
sample has commercial value.78 The issue therefore arises, what constitutes
the commercially valuable elements, excluding the musical composition, of
the performance embodied in a sound recording?
The lifeblood of the music industry is personality. The marketing
and promotion of an artist's recordings in all cases focus on the qualities of
the artist that are relatively unique and distinguish him from the other
musicians whose recordings are available in the marketplace. This
phenomenon is present in the marketing of the artist's appearance, lifestyle,
and most importantly to the present discussion, the style of his performance
of musical compositions. The distinguishing characteristics of an artist's
performance have great commercial value, as they are often responsible for
the consumer's purchase of that artist's recordings instead of the recordings
of other artists performing the same or similar songs. For this reason, in the
context of sound recordings, it is the distinguishable qualities of the artist's
performance that would be protected by copyright law. In this sense, the
copyright in a short portion of a sound recording may be considered
somewhat analogous to the law of trademark and the right of publicity.79
Under a substantial similarity test, any part of the performance that is
sufficiently unique or distinctive to be recognizable as identified with the
artist, and thus arguably valuable, would be protected. A sample as
quantitatively minor but qualitatively significant as a shout or yell by a
famous singer, or a particularly notable guitar slide by a well-known guitar
player, should certainly receive protection.80 This category of sounds is often
referred to as a "signature sound," as it is recognizable by the average listener
as unique and identified with the performer. In this sense, a signature sound
is analogous to a handwritten signature. In contrast to the protection of
signature sounds, a single, indistinguishable drum beat, guitar note or sound
that is so heavily modified that an average listener would neither recognize
nor associate it with the original recording or performer, would not be
protected under this test.
2. Perceptions Within the Industry
Although copyright law may afford sound recordings absolute
protection from subsequent re-recordings,81 this standard could not generally
be used within the industry. As a practical matter, an unrecognizable sample
would not attract the attention of the record company that owns the original
recording. Further, even if the company did discover the use of such a
sample, the damages resulting from the use would be so insignificant it is
78
As a rule of thumb, given the higher standard of infringement for musical compositions, any
infringement of the copyright in a musical composition due to sampling would also infringe upon the
copyright in the sound recording from which the sample was taken, although the converse would not
necessarily be true. See supra note 27. This statement of course assumes the sample is not of an
independent fixation of the recording, but of the actual recording.
79
The most significant difference would be that, as previously explained, the protection granted to sound
recordings only extends to the appropriation of the actual recording and not to the emulation thereof, see
supra note 73, whereas the protection granted under the above referenced theories applies as well to
emulation as it does to actual appropriation.
80
These examples are not intended to create the perception that only extremely popular musicians would
be entitled to protection. The test, as mentioned, is recognizability. See supra text accompanying notes 7879. However, it is reasonable to assume that a court would find an extremely popular musician to be more
recognizable than lesser known musicians, thus a smaller appropriation of one of the performances of an
extremely popular musician would constitute infringement.
81
Page 39
highly unlikely that the company would vigorously attempt to enforce its
rights.
The signature sound standard, with some variation, is the overwhelming position of the record companies polled by the author.82 This
standard has been most often stated by record companies as those samples
that are recognizable by an average listener as being taken from the original
source. Some companies intimated that they might consider a sample an
infringement even if it were only recognizable by a “sophisticated party.”
Others stated that they would be unlikely to press their rights unless the
sample embodied an "essential element" of the original recording.83
Parties using samples should obtain licenses for the use whenever
the sample embodies a recognizable portion of the prior recording, even if
the portion is recognizable only to sophisticated parties. The attorneys
polled who represent artists who have sampled, or are currently sampling,
support this position. In close cases, they would prefer to err on the side of
caution, by licensing when it might not be necessary, rather than risk not
licensing when it is necessary. These attorneys recognize that it will be
cheaper to negotiate a few licenses in advance, even if one thinks that an
infringement suit would be unsuccessful, than to litigate or be forced into
negotiation over even a single sample after the release of the subsequent
recording.84 Such a prudent practice should be encouraged. Record
companies may do so by granting favorable terms for samples that embody
only a relatively minor portion of the original recording and are cleared in
advance.85 Considerations of whether the sample is recognizable by a
sophisticated listener, an average listener, or embodies an essential element
of the prior sound recording should more appropriately be considered in the
context of setting a fair price for the use of the sample.86
IV. HOW MUCH SHOULD THE CONSENT COST?
A. The Benefits of Reasonableness
While the idea of charging high prices for the use of a sample may at
first sound enticing to licensors, the problems generated by such a practice
outweigh its benefits. When the licensor presses for substantially more
compensation than the licensee truly feels is justified, transaction costs
associated with the license will increase. The increase in costs will manifest
itself as an abundance of unclosed deals for which the licensor is reticent to
82
See supra note 6.
One unstated, but highly relevant, standard which should not be ignored by artists and record
companies using samples is whether the sample is recognizable by the record company executive
responsible for enforcing rights relating to the sound recording sampled. The latter standard would be the
most accurate test, as it takes into account the varying degrees of attempted enforcement throughout the
industry. Some companies, especially those controlling sound recordings which are frequently sampled,
have demonstrated a greater tendency to actively seek unpermitted uses of its sound recordings. See supra
text accompanying notes 22-23. This fact should be taken into account by parties using samples.
84
See supra note 16.
85
The attorneys polled stated that the most significant impediment to the implementation of a policy
seeking licenses for all samples is the possibility that the record companies from which such licenses are
sought would be unreasonable in the terms required for relatively insignificant uses. Record companies
could eliminate this reluctance by accepting realistic terms for minor uses. See infra text accompanying
notes 95-99.
86
See infra text accompanying notes 90-91.
83
Page 40
sue on87 and the inefficient use of a significant portion of the company's
resources negotiating deal which, in the scope of the company's activities,
represent a very minor portion of its income. Further, if the licensor sets a
very high price, he will dissuade potential licensees from obtaining licenses
to use future samples. In essence, he would be encouraging the continuing
unlicensed use of samples since the licensee may, under the circumstances,
decide to undergo the risks involved.
Egregious terms would also adversely affect the licensor in future
negotiations. Most large record companies have both a significant back
catalog and a large active roster.88 Under these circumstances, any benefit
from higher prices that the company receives as a licensor, when its catalog
is sampled, would be roughly equaled by the increased costs it would bear as
a licensee, when its active artists sample.89 When the related increase in
transaction costs is factored in, the situation may involve a net loss of
income, despite the higher price. In light of the fact that large record
companies control the majority of past catalog, few potential licensors exist
that could benefit from increased prices for the rights relating to the sound
recordings without being equally burdened by increased costs. Music
publishers would not be entirely immune to the reciprocal effect of expensive
samples. To the extent that the publisher controls rights pertaining to songs
by artists who are sampling, the company will have to bear the adverse
effects of such prices. An increase in costs beyond the actual value of the
sample would benefit virtually no one.
B. Factors Relating to the Price
Though numerous, the considerations taken into account when setting the price of the license to use a sample generally fit into three broad
categories: what is sampled; how the sample is used; and who is using the
sample. These categories apply, with minor variations, to both sound
recordings and musical compositions.
1. What is Sampled
The focus of the first factor is on the relative value of the sample to
the owner of the original copyright. The specific considerations involved in
such a determination include: how popular the original song or recording was
and is; how recognizable the sample is; whether the sample is from the
chorus, melody or background of the original work; and whether it is from a
vocal or instrumental portion of the work.90 Further, the identity of the
songwriter or performer may either trigger a contractual requirement for the
copyright owner to obtain consent from said person in order to grant consent
87
There are two primary reasons that, absent peculiarly egregious circumstances, a licensor would be
reticent to sue. One reason is that the damages recoverable from most sampling cases would be unlikely to
justify the risks and aggravation of litigation. The second reason is that since the record business is
comparatively small and closely knit, parties prefer to settle disputes through negotiation rather than sue
an entity which it may wish to do business with in the future.
88
The "catalog" of a record company is the collection of recordings the company has previously made.
The "active roster" is the collection of artists of which the record company is currently producing records.
89
This statement assumes, of course, that the record company's recordings are sampled by others
approximately as much as the record company releases records embodying the recordings of others.
90
In the context of sound recordings, these factors would relate to the issue of whether the sample was
recognizable only to sophisticated parties (low value), average persons (medium value), or embodied an
essential element of the original recording (high value), See supra text accompanying note 83.
Page 41
at all, or may otherwise increase the recognizability, and thus the value, of
the sample. A highly valued sample under this category would be an
extremely recognizable and qualitatively important vocal portion of a hit
song or record by a very popular artist or songwriter. A low-valued sample
would be a relatively unrecognizable instrumental portion of an obscure
recording or song.91
2. How the Sample is Used
The focus of the second factor is on the relative value of the use of
the sample to the person doing the sampling. The relevant considerations
include: the number of times the sample is repeated in the new work; how
qualitatively important the sample is to the new work; and whether the new
work has artistic or commercial merit.92 Further, many industry figures
expressed an unwillingness to license samples for use in exceedingly violent
or pornographic works.93 A sample used in a highly valued manner would be
repeated constantly throughout, and constitute the primary appeal of, a
subsequent recording or song with substantial commercial potential but
relatively little artistic merit. A low-valued use of a sample would embody
the sample only once in a song or sound recording of little commercial
potential but high artistic value, and constitute only a minor portion of the
subsequent work.94
3. Who is Using the Sample
The third factor primarily concerns the relationship between the
owner of the original copyright and the person or entity seeking consent for
the use. Although the general rapport between the parties is significant, the
most important consideration relates to the issue of whether the artist or
record company using the sample attempted to obtain permission to do so
before the release of the subsequent recording. Without exception, each of
the industry figures polled stated that if the original copyright owner had to
initiate discussions with the sampling artist or record company regarding the
licensing of a sample, a substantial penalty would be added to the price that
would otherwise have been set.
In such a situation, the artist or record company is at a significant
disadvantage in negotiating a favorable price for the use, since the new
recording is already on the market. Options that may have been previously
available to the licensee, such as declining to use the sample, are no longer
available. The stature of the artist or record company using the sample may
also affect the price, since a very popular artist may be able to pay more for
the use. This fact is seldom lost on the owner of the original copyright. The
most expensive type of sample in this category would be one used by an
91
A low value sample from a musical composition would be unlikely to be considered an infringement,
as the taking must be qualitatively substantial. See supra note 41 and accompanying text.
92
All other factors remaining constant, commercial potential was reported as more likely to drive the
price up, as there is the expectation that there will be more profit generated by the record. Artistic merit
may drive the price down, as the copyright owner may not dislike being quoted as such.
93
This generally would not be a factor when the original song or recording was violent or pornographic.
94
A low valued use of a musical composition would be unlikely to be considered an infringement. See
supra note 41 and accompanying text. When a minor use is made of a low valued sample, the sample is
particularly unlikely to infringe on the copyright of the original musical composition.
Page 42
extremely popular artist with a general reputation throughout the industry as
being an uncooperative megalomaniac who refuses to acknowledge the need
to obtain consent to use a sample embodied on a hit record. This particular
scenario would, in all likelihood, require litigation in order to be resolved.
Conversely, if the parties have a good rapport, the sample is cleared in
advance, and the artist using the sample is new and relatively unknown, the
price for the sample may be less than would otherwise be set.
C. Types of Deals
There are five basic classes of deals that are used to grant consent for
the use of a sample: gratis; buyouts; royalties; co-ownership; and an
assignment of the copyright. Not all of these deals are used for both songs
and recordings. The various classes of deals will therefore be discussed
according to the copyright to which they most often relate.
1. Sound Recordings
Generally, the license to use a sample from a sound recording will be
either gratis, a buyout or a royalty. Gratis use is granted for fairly minor
samples that are relatively unrecognizable or used only once in the new work
by an artist or record company friendly with the original copyright owner.
Such deals, though not unheard of, are relatively uncommon.95
Buyouts are the most common form of deal, due to the ease of
administration for all concerned.96 A typical buyout is a one-time payment
for all rights necessary to exploit the new work, and may range from $500$5,000 or considerably more, if the above referenced factors97 weigh heavily
in favor of the original copyright owner. Gratis use and buyouts are most
often documented in simple letter agreements.
Royalties are used by some companies, but are somewhat disfavored
by both the original copyright owners and the licensees.98 However, if the
new recording appears to have great commercial potential, the owner of the
original copyright may have a greater tendency to demand a royalty, in order
to participate more fully in the expected success of the record. When used,
the royalty rate is generally $.005-$.03 per unit, but at times is as high as
$.05. These rates may be subject to the deductions and limitations of the
sampling artist's royalty, pursuant to his contract with his record company.
Often, a royalty deal will use a rollover method of accounting, generally
requiring successive advances based on sales for anywhere from 50,000500,000 units,99 the exact figure depending on anticipated sales. Royalty
95
One reason for this is that often the licensor will require a nominal fee, solely as a matter of principle,
to reinforce the notion that a license is necessary even for minor uses.
96
A single rap album may embody twenty to thirty samples, and at times considerably more. If a record
company had in release a substantial number of albums with a high number of sampling royalty
participants - in addition to the standard royalty participants like artists, producers and publishers - its
accounting system could become sorely taxed. Also, given the tremendous uncertainty of sales predictions
in the record business, many licensors would prefer a buyout as a "bird in the hand." Some companies use
a buyout for minor uses and a royalty for significant uses, but currently there appears to be a growing
trend in favor of buyouts.
97
See supra text accompanying notes 90-94.
98
See supra note 96.
99
In essence, this method of payment requires that the licensee pay a set fee each time the sales plateau is
reached. For example, if the royalty were $.01 per unit and the contract required successive advances for
each 100,000 units sold, then the licensee would make an immediate payment of $1,000 for the right to
use the sample on the first 100,000 units, then a further payment of $1,000 when the 100,001st unit was
Page 43
deals are most often documented in a form similar to a traditional master use
license.
2. Musical Compositions
Generally, the compensation required for permission to use a sample
from a musical composition will take the form of a royalty, co-ownership or
an assignment. A royalty deal is the most common approach and will take
the form of a percentage of mechanical royalties100 on the order of 10%-50%,
usually documented as a simple letter agreement. In some cases, a similar
percentage of the performance royalties 101 due may also be part of the deal.
Another fairly common type of deal is co-ownership. In such a situation, the
owner of the original copyright will acquire an ownership interest in the
range of 25%-50%. Accordingly, all income related to the new song102 will
be apportioned between the parties. Such deals are documented in fairly
traditional publishing co-ownership agreements.
One significant problem with co-ownership is that the original copyright owner may be exposing himself to potential future lawsuits if there are
other uncleared samples used in the new work. Although the original
copyright owner would generally demand and rely upon an indemnification
from its co-owner should such a situation arise, as previously mentioned in
the context of artist-record company relationship,103 such an indemnification
could be illusory if the co-owner does not have considerable financial
resources.
An assignment of the copyright is obviously the most egregious
arrangement and is often reserved for artists who are very uncooperative in
obtaining consent for the use. Generally, these agreements occur pursuant to
the settlement of a previously filed lawsuit. An assignment may also be
required in situations where the sampling artist has added little, if anything,
to the previous song.104
B. The Cost Matrix
sold, for the right to use the sample on units 100,001-200,000, and so on. A variation on this type of deal
may require the licensee to increase the payment by a stated amount as particular sales plateaus are
reached.
100
Mechanical royalties are the money due to a publisher from a record company for the right to embody
a song on phonorecords. S. SHEMEL & M. KRASILOVSKY, THIS BUSINESS OF MUSIC 174 (1985).
Mechanical royalties are generally governed by statute, the current statutory rate being $.057 per unit, but
often a record company will be able to reach an agreement with the publisher or songwriter to reduce the
rate payable to 75% of the statutory rate. 4 Contracts, supra note 19, at cl. 11.01(a)(2)(i).
101
Performance royalties are monies due to a publisher from those parties who publicly perform a song,
such as radio and television stations, nightclubs, and establishments that play music for the enjoyment of
their patrons. S. SHEMEL & M. KRASILOVSKY, supra note 100, at 178. These fees are paid by acquiring
blanket licenses from performing rights societies such as The American Society of Composers, Authors
and Publishers (ASCAP), and Broadcast Music, Inc. (BMI), to publicly perform any and all songs the
societies control. The performing rights society then allocates this money to the publishers and
songwriters it represents. Id.
102
In addition to the previously mentioned mechanical and performance royalties, publishers may also
receive money from such sources as the sale of printed sheet music of the song and fees payable for the
right to synchronize the song with visual images, as in films and videos.
103
104
In this situation, the new recording is actually considered a liberal interpretation of the original song,
not a new and different song. A true assignment would only be required if the sampling artist had
previously registered the copyright to the new song. Otherwise the artist would simply obtain the requisite
mechanical license to embody the song in records, without claiming ownership of the song.
Page 44
In order to graphically clarify the range of prices and deal types, and
to suggest a method of calculating the value of a sample, Schedule "A"
embodies these concepts in a "Cost Matrix." Use of the Cost Matrix is
simple. First, one determines the approximate value of the sample – high,
medium or low – in accordance with the factors set forth above. Next, one
determines the value of the use in a similar fashion. The box represented by
the conjunction of these two valuations will provide some guidance relating
to the type of deal that would be reasonable, in light of current industry
practices, in that particular situation.105 Considerations relevant to who did
the sampling should cause one to shift up or to the left for favorable factors,
and down or to the right for unfavorable factors.
V. CONCLUSION
Many industry figures express a desire to see the entire issue of
sampling go away, stating that the whole situation is considerably more
trouble than it is worth. However, the public appears to have accepted, if not
embraced, the use of samples in the music that it purchases.106 As a result,
musicians and audio producers will likely continue to include samples in
their works.107
There are clear benefits to sampling, not the least of which is the
ability for publishers and record companies to recycle old and relatively
inactive copyrights.108 Sampling permits a new method of composing music
with unique artistic potential, and reduces the high overhead associated with
the production of records. Currently, the most distressing concern with
sampling is the confusion in the industry with respect to the issues of when a
license to use sample is necessary and how much the applicable license
should cost. This confusion should dissipate as the music industry develops
standardized practices in this area through experience with the process of
obtaining such licenses and thoughtful consideration of the issues involved.
Crucial to this end is the employment of reasonable practices by all parties
involved. Those using samples should conscientiously obtain permission for
their use, and those parties who are asked for permission to use a sample
should grant it on reasonable terms.
Whitney C. Broussard
All Rights Reserved By Author
105
The Cost Matrix is designed to provide a structure for a dialogue concerning the pricing of sampling
licenses and suggest reasonable outcomes to those dialogues. Naturally, individuals and companies will
have their own preferences and predilections in such matters.
106
Two of the largest selling albums of 1990, "Please Hammer Don't Hurt 'Em" by MC Hammer, and
"To The Extreme" by Vanilla Ice, apparently made considerable use of prior copyrighted works. These
albums sold approximately eight million and five million copies respectively. Top Pop Albums, Billboard,
Dec. 22, 1990, at 102.
107
Saxophones, electric guitars and electronic keyboards were all, at times, considered to be musical
"fads" and likely to fade into obscurity. Quite possibly, sampling will achieve and maintain a similar level
of acceptance in the future.
108
At least one major publisher has begun to encourage artists to sample its catalog and thus reap the
potential benefits of a "new" version of the song achieving widespread popularity.
Page 45
COST MATRIX
What Is Sampled
Low
Low
How The
Sample Is
Used
Medium
High
Medium
High
SR: Free/
Low Buyout
SR: Buyout
SR: High Buyout/
Low Royalty
MC: N/A
MC: Buyout/
Low Royalty
MC: Royalty
SR: Buyout
SR: High Buyout/
Low Royalty
SR: Royalty
MC: Buyout/
Low Royalty
MC: Royalty
MC: Royalty/
Co-Ownership
SR: High Buyout/
Low Royalty
SR: Royalty
SR: High Royalty
MC: Royalty
MC: Royalty/
Co-Ownership
MC: Co-Ownership/
Assignment
SR = Sound Recording
Low Buyout = $250-$1,000
Low Royalty = $.005-$.01
Buyout = $1,000-$3,500 Royalty = $.01-$.025
High Buyout = $3,500-$5,000
High Royalty = $.025-$.05
MC = Musical Composition
Low Royalty = 10%-25%
Royalty = 25%-50%
N/A = not an infringement
Page 46
Kohn, Bob. The Art of Music Licensing,
Chapter 17 “The Digital Sampling Controversy” (1993)
Page 47
THE ART of MUSIC LICENSING: Chapter 17
THE DIGITAL SAMPLING CONTROVERSY
A cold chill raced across the face of the recording industry when a Federal District Court in New
York invoked the Seventh Commandment1 in a lawsuit filed by British recording artist and songwriter
Gilbert O’Sullivan against the rap music recording artist Biz Markie and his record company Cold Chilin’
Records, after Markie included in his rap album entitled, I Need a Haircut, a digital sample of three
words and their accompanying music taken from the popular recording of O’Sullivan’s hit song Alone
Again (Naturally).2 Markie’s album might as well have been entitled I Need a Lawyer, as the court
proceeded to enjoin all sales of the album and specifically referred the matter to the United States
Attorney for consideration of prosecution under the provisions of federal law that make such
infringements criminal acts subject to fines and imprisonment.3
This chapter will sketch the technical and legal background of digital sampling and will outline
some of the practices currently emerging in connection with the licensing of and settlement of disputes
about sampling activities.
TECHNICAL BACKGROUND
The term digital sampling, or sampling, refers to the recording of a sound, or a portion of a
previously existing sound recording, with the aid of a device that can store the recording in binary form in
the memory of a computer. Sampling was made possible by the emergence of digital sound and computer
technology developed in the 1960’s and 1970’s and has been made practical in the 1980’s and 1990’s by
the widespread availability of inexpensive sampling-capable digital synthesizers and personal computers.
In scientific terms, music is a series of sound waves that emanate from a musical instrument (e.g.,
violin, vocal chords). These waves cause analogous vibrations on the human eardrum which are then
transmitted to the human brain and, by act of Providence, perceived by the human mind. Sound waves
may be recorded in tangible media, such as a phonograph record or tape recorder, by various
technological means. These recordings may be made in analog form—analogously reflecting the
vibrations of the analog sound waves, such as the grooves of a vinyl phonograph record—or in digital
form, recorded on tape or on compact disk.
An analog performance, or a recording of an analog performance, may be converted to digital form
with the aid of a device that converts the analog sound waves into a digital code. This is accomplished by
breaking down the sound waves into small bits of information that are represented in the form of the
binary numbering system (i.e., numbers comprised of solely 0’s and l’s). This is the numbering system, or
1
2
3
“Thou shalt not steal.” Exodus, Chapter 20: Verse 15.
Grand Upright Music Limited v. Warner Bros. Records, Inc., No. 91 Civ. 9648 (S.D.N.Y. Dec. 16, 1991).
17 U.S.C. Sec. 506(a) and 18 U.S.C. Sec. 2319.
Page 48
machine language, which forms the basis of modern computing.
Digital sampling can be viewed as the “high tech” equivalent of several non-digital or physical
sampling techniques, such as scratching and needledropping. The term scratching refers to the process of
making or recording the sounds produced by turning back and forth a vinyl record while the needle is still
in the grooves. The term needledropping, also referred to as looping, refers to the process of taking a
portion of a magnetic tape recording, joining together the beginning and the ending of the selected portion
of the tape to form a continuous loop, and playing the loop so that the selected portion of the recording is
played over and over. What distinguishes scratching and needledropping, on the one hand, from digital
sampling, on the other, is what amounts to the proverbial Pandora’s Box of sampling: the digital, binary
or machine language of computers.
The significance of the digital format is this: any information that can be stored in a computer in
digital form may be readily displayed, modified, copied, or transmitted to an extremely exacting degree of
flexibility. Recording artists today have access to a sophisticated array of equipment capable of
manipulating digitized sound recordings. For example, using a triggering instrument, such as an electronic
keyboard or specially modified set of drums, guitar or reed instrument, an artist may replay sampled
sounds at their original pitch (i.e., vibrations per second) or any other pitch desired. The artist can
increase or decrease the speed at which the sampled sound is rendered, add new sounds, eliminate sounds,
add echo effects, and, by reversing the sequence of the digital information, can even play the notes
backwards. The waveform of a sampled sound may even be displayed on a computer screen and
modifications may be made in the waveform to more precisely change the characteristics of the sound it
produces.
Sounds may be sampled from live performances or recorded sources such as magnetic tapes and
compact disks. An artist can sample his own voice, the sounds made by an individual instrument, or the
crescendo of an entire orchestra. Because digital samples can be stored for future use, they may easily be
distributed on standard computer floppy disks, allowing artists to create and distribute libraries of
sampled sounds for reuse by others. The question to which we now turn is whether we can find Hope at
the bottom of this Pandora’s Box.
RECENT RECORDING PRACTICES
If sampling were performed solely by amateur musicians or computer hobbyists intending only to
perform their sampled recordings privately in their own homes, there would be no controversy. Digital
sampling has become, however, an attractive practice among young professional recording artists and
their producers.
Sampled recordings merged with original material affords the professional recording artist or
producer a way to more economically complete the task of producing pop records within tight recording
budgets. For many artists, it is easier to select the “right” sound than to produce it from scratch, and using
samples of existing recordings obviates the need to employ the talents of live musicians who could other-
Page 49
wise, albeit at greater expense, produce the desired performance or sound mix. Theoretically, a song can
be composed entirely by the mere combination of sampled elements of existing recordings.
Though artists will use samples to save money and time, a more common and compelling reason why
sampling is often employed stems from a desire to use the distinctive sound of a successful song or
recording artist for the express purpose of giving sampling artist’s original work a familiar element that
listeners will quickly recognize.
LEGAL BACKGROUND
It has been the practice of many artists to engage in sampling under the assumption that sampling is
not a copyright infringement, believing that the act of sampling is somehow a fair use of copyright. As
discussed below, this assumption is invalid, as now confirmed by at least one court.4
1.
Multiple Copyright Infringement
Unauthorized sampling may be an infringement of both (i) the sound recording from which the
sample is taken and (ii) the song underlying the sampled recording. As noted in Chapter 1, the copyright
in a sound recording is completely separate from the copyright in the underlying song featured in the
sound recording, and the underlying song should not be overlooked when considering the use of a sound
recording.
It has been suggested that the standards for infringement of copyright for sound recordings and
musical works may be different.5 The standards for determining infringement by sampling for each will
be discussed in the following sections.
A.
Infringement of the Music
In general, to prove copyright infringement, a person must show that he owns a copyright in the
work and that the alleged infringer has copied it.6 The question whether a valid copyright subsists in a
song or a sound recording will rarely be at issue in a sampling case; 7 this leaves the issue of whether the
work was copied: To prove that his work was copied a person must show that the alleged infringer had
access to the work and that the work and the allegedly infringing work are substantially similar Whether
the alleged infringer had access to the work will also rarely be at issue in a sampling case, as access will
4
Grand Upright Music, supra.
See, Broussard, Current and Suggested Business Practices for the Licensing of Digital Samples, 11 Loyola Entertainment Law Journal 479,484
(1991). The authors acknowledge that the following section contains a number of ideas sampled from the foregoing thoughtful law review article.
6
See generally, 3 Nimmer On Copyright, Sec. 13 (1991).
7
1t is assumed that the musical work, or portion thereof, in question, is copyrightable subject matter. In other words, it is not (i) unoriginal, (ii)
merely an idea, procedure, process, system, method of operation, concept, principle, or discovery, (iii) one of only a limited number of ways to
express the idea underlying the expression, (iv) dictated by concerns for efficiency, (v) dictated by factors external to the work (such as factors
dictated by the market or other works with which it was designed to interact), (vi) in the public domain, (vii) or not a work of authorship or
copyrightable subject matter for other reasons.
5
Page 50
either be admitted or easily proven. The extent of similarity which constitutes a substantial and hence
infringing similarity has presented difficulties that have long challenged courts engaged in deciding these
cases and lawyers engaged in advising their clients on the extent to which a particular use is legally
permissible under the law.
Courts have approached the issue of substantial similarity in a variety of ways. Some courts have
broken the question down into two parts: (1) whether the work was physically copied and (2) whether the
copying was illicit or improper. In the case of sampling, whether the work was physically copied will
either be admitted or an easy matter of proof. But proof of physical copying will not end the inquiry. A
determination must still be made as to whether the copying was illicit or improper, or, in other words,
whether the extent of similarity is sufficiently substantial to constitute infringement.
In making this determination, courts will inquire whether the portion copied was a qualitatively
substantial portion of the work from which it was taken.8 Courts will find infringement where the quality
of the portion taken was “the whole meritorious part of the song,”9 “so much of what is pleasing to the
ears of lay listeners,”10 “that portion of the [copied work] upon which its popular appeal, and hence, its
commercial
success,
depends,”11 or “the very part that makes [the copied work] popular and
valuable.”12
In determining what kinds of short portions of musical compositions are qualitatively substantial and
hence protectable by copyright law, it will be useful to divide the universe of potential samples into those
tending to be clearly infringing and those tending to be noninfringing, recognizing, however, that there
will always be those cases in that “gray area” in which the parties may find themselves subject to the most
precisely applicable standard ever developed by the courts, “I know it when I see it.”13
(a) Clearly Infringing Samples
The chorus is often the heart of a song. Because of its brevity, repetitiveness, and frequent
placement at the end of the song, the chorus tends to be the most memorable part of the song. In many
cases, it would not be difficult for a court to find that the chorus is the very part that makes the song
“popular and valuable.” Accordingly, should a digital sample be made of a recognizable portion of a
chorus, its unauthorized use is likely to be held infringing.
Other phrases of a musical composition that are distinctive and memorable are likely to be deemed
qualitatively substantial parts of the song. This may include any phrase that is repeated often in a
composition or placed at the beginning or ending of the song.
Even a very short phrase from a musical composition could be infringed by the use of a sample of
8
9
M. Witmark & Sons v. Pastime Amusement Co., 298 F. 470 (E.D.S.C. 1924), aff’d, 2 F.2d 1020 (4th Cir.1924).
Northern Music Corp. v. King Record Distrib. Co., 105 F.Supp. 393, 397 (S.D.N.Y.1952).
10
11
12
Arnstein v. Porter, 154 F.2d 464,473, aff’d on reh‘g, 158 F.2d 795 (2d Cir. 1946).
Robertson v. Batten, Barton, Durstine & Osborne, Inc., 146 F.Supp. 795, 798 (S.D.Cal.1956).
Johns & Johns Printing Co. v. Paull-Pioneer Music Corp., 102 F.2d 282,283 (8th Cir. 1939).
13
Jacobellis v. Ohio, 378 U.S. 184 (1964).
Page 51
that phrase if the sampled phrase is repeated through substantial portions of the sampler’s new work. For
example, if the digital sample contains six notes from a song which repeats those six notes fifteen times,
and the digital sample of the six notes is repeated ten times in the sampler’s new work, then the sampler
has taken sixty notes, not six. In such a case, the sampler’s work is more likely to be held substantially
similar to the copied work and the unauthorized distribution of the sampler’s new work would constitute
copyright infringement.
Finally, the unauthorized use of any sample which is clearly identifiable as having been taken from
another copyrighted composition or which an average person would immediately associate with another
copyrighted composition is likely to be held an infringement.
(b) Clearly Non-Infringing Samples
Because there is only a limited number of ways in which a short number of musical notes may be
expressed, copyright protection does not subsist in exceedingly short phrases of music. Clearly, a single
musical note is not protectable by copyright. For the same reason, a two-note phrase is not protectable,
and the same is probably true for a three-note phrase. The more notes that are appropriated, the more
likely the appropriation will constitute an infringement, but where will the courts draw the line on the use
of extremely short phrases?
The smallest appropriation from a musical composition ever held to be infringing was a phrase
consisting of six notes.14 In that case, the two songs before the court were “considerably different, both in
theme and execution, except as to [the] phrase, ‘I hear you calling me.’ ” This phrase, and the music
accompanying the words, in both compositions, were “practically identical” and the court held that the
use of the phrase was a copyright infringement, because the phrase, despite its brevity, had what “causes
audiences to listen, applaud, and buy copies in the corridor on the way out of the theatre.”
Nevertheless, samplers should take note15 of a more recent case in which a court determined that the
use of a four-note phrase, together with two of the words accompanying those notes, would have been
sufficient to constitute infringement. In Elsmere Music, Inc. v. NBC,16 the song I Love New York became
the basis of the parody composition, I Love Sodom, performed by the “not-ready-for-prime-time-players”
on NBC’s Saturday Night Live television program. In both compositions, the four-note phrase was
continually repeated and was referred to by the court as “the heart of the composition.” The court
concluded that the use did not constitute infringement, because it was part of a satire, permissible under
the doctrine of fair use (discussed below). However, the court stated that the taking was of a “substantial
nature,” “easily recognizable,” and “capable of rising to the level of a copyright infringement.”
Accordingly, while the sampling of a single note or a phrase of two notes would appear not to be an
infringement of a musical composition, the sampling of four notes may be the sine qua non of permissible
14
Boosey v. Empire Music Co., Inc., 224 F.646 (S.D.N.Y 1915).
Pun intended.
16
Elsmere Music, Inc. v. NBC, 482 F. Supp. 741 (S.D.N.Y. 1980), aff‘d 623 F.2d (2d Cir. 1980).
15
Page 52
song sampling, at least where the sample includes two of the words accompanying the music. Thus, a
single shout rendered by a singer, two chords, or three notes from a nonessential bass line would probably
not be qualitatively substantial parts of musical compositions, and therefore not protectable.
Commercially insignificant phrases and commonly used phrases would also fall outside the scope of
protection.
As noted below, however, sound recordings may be afforded significantly stronger protection than
the underlying music, meaning that an infringement of a sound recording may still be found in a sample
that appropriates elements that would not constitute an infringement of the underlying musical
composition.
B.
Infringement of the Sound Recording
No known court decisions are available at this time to help determine the extent to which samples
may be made of copyrighted recordings without the permission of their owners. Certain provisions of the
copyright law, however, do suggest that broader protection against unauthorized sampling may be
available for owners of sound recordings than for the owners of musical compositions that may be
embodied in those sound recordings.
For example, the Copyright Act states that, “The exclusive rights of the owner of copyright in a
sound recording…do not extend to the making or duplication of another sound recording that consists
entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in
the copyrighted sound recording” (emphasis added).17 By using the words “entirely of an independent
fixation” in referring to sound recordings which may imitate or simulate the sounds of another, Congress
may have intended that a recording containing any sounds of another recording would constitute
infringement. Thus, it would appear that any unauthorized use of a digital sample taken from another’s
copyrighted recording would be an infringement of the copyrighted recording.
In fact, the copyright law specifically provides that the owner of copyright in a sound recording has
the exclusive right to prepare derivative works “in which the actual sounds fixed in the sound recording
are rearranged, remixed, or otherwise altered in sequence or quality.” A recording that embodies samples
taken from the sound recording of another is by definition “rearranged, remixed, or otherwise altered in
sequence or quality.”
It has been suggested that the strong protection implied by the foregoing provisions could be
mitigated by a judicially applied standard which permits some degree of de minimus copying or copying
where the sampled portion of the resulting work is not substantially similar to the copied work.18 For
example, a court could determine that the taking of a millisecond of sound from another’s copyrighted
recording, or the taking of a more extensive portion that has been modified to the point of being
completely unrecognizable or impossible to associate with the copied recording, does not constitute
17
18
17 U.S.C. Sec. 114(b).
Broussard, Current and Suggested Business Practices for the Licensing of Digital Samples, at 492, see supra.
Page 53
infringement. It is believed, however, that the courts should take what appears to be a rare opportunity to
follow a “bright line” rule specifically mandated by Congress. This would result in a substantial reduction
of litigation costs and uncertainty attending disputes over sampling infringement of sound recordings and
would promote a faster resolution of these disputes.
While the question as to whether an unauthorized use of a digital sample infringes a musical
composition may require a full substantial similarity analysis, the question as to whether the use of a
sample constitutes infringement of a sound recording could end upon a determination that the sampler
physically copied the copyrighted sound recording of another. If the sampler physically copied any
portion of another’s copyrighted sound recording, then infringement should be found. If the sampler did
not physically copy, then there could be no infringement (even if the resulting recording substantially
simulates or imitates the original recording).
Even if the courts choose to apply a de minimus standard, or a substantial similarity analysis, the
courts are likely to find infringing those samples of recordings that appropriate the style of an artist’s
performance. This would include any part of the performance that is unique or sufficiently distinctive or
identifiable with the artist. Examples may include the distinctive “whoa” of Michael Jackson, shriek of
James Brown, snare of Phil Collins, etc.—anything that might be considered a signature sound of an
artist. None of these would be considered copyrightable as musical compositions, but would clearly be
protectable under the copyright of a sound recording.
2.
No Fair Use
The doctrine of fair use of copyright will not justify sampling for most purposes. In particular, the
unauthorized use of the typical digital sample made for the purpose of giving the sampling artist’s work a
familiar element from another artist’s distinctive sound would clearly not be considered a fair use of the
copyrighted composition or sound recording from which the sample was taken.
The doctrine of fair use is generally limited to several specific kinds of circumstances defined in the
copyright law,19 such as criticism, news reporting, teaching, or research. Fair use has also been recognized
for works created for the purposes of parody and satire, on the basis that society benefits from the social
and literary commentary contributed by these kinds of works.20 The copyright law lists the following four
factors to be used by the courts in determining whether the use made of a work in any particular case is a
fair use:
(1) the purpose and character of the use, including whether such use is of a commercial nature or
is for nonprofit educational purposes;
(2) the nature of the copyrighted work
19
20
17 U.S.C. Sec. 107.
5ee, 3 Nimmer On Copyright, Sec. 13.05[C] (1991).
Page 54
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The application of the first factor would militate against a finding of fair use in a digital sample case,
because the purpose and character of the sampler’s recording is generally commercial, rather than
nonprofit. In applying the second factor, the courts give greater flexibility to those desiring to use portions
of informational works, such as compilations of facts or data. Being that musical compositions and sound
recordings of musical compositions are purely creative or imaginative works, the second factor is also
likely to weigh heavily against a finding of fair use for samplings of those works. The third factor would
imply that if the material that was sampled was slight and was not qualitatively substantial, the
application of the factor could support a finding of fair use. Of course, all samples that are deemed to
have taken a qualitatively substantial part of an existing musical work under a substantial similarity
analysis would fail to meet this criterion. Thus, this factor might only apply to de minimus use of sound
recordings. The fourth factor has been interpreted as including a consideration of whether the use would
have a detrimental effect if the practice were widespread. Further, the U.S. Supreme Court has held that
“if the defendant’s work adversely affects the value of any of the rights in the copyrighted work…the use
is not fair” (emphasis added).21 One of the rights an owner has in a copyrighted work is the exclusive
right to make derivative works. Since the sampling would adversely affect the potential market for similar
derivative uses of the song or recording, the fourth factor would not support a finding of fair use.
As demonstrated by the Elsmere Music case discussed above, the use of music may be a fair use if
the use is for the purpose of parody or satire. The courts have determined that parody and satire are works
that should be encouraged and their creation would often not be possible without the doctrine of fair use.
However, fair use will apply to samples taken and used for the purposes of parody or satire only if “the
parody has neither the intent nor the effect of fulfilling the demand for the original, and where the
parodist does not appropriate a greater amount of the original work than is necessary to ‘recall or conjure
up’ the object of his satire.”22
While a single performance of a composition using a sample for the purpose of parody might meet
this requirement, a commercial recording of the performance is not likely to pass fair-use muster. It
should be clear that unless the sample is being used for some form of criticism, news reporting, teaching,
research, parody, satire, or some non-profit use, the doctrine of fair use is not likely to provide a valid
defense to copyright infringement.
21
22
Harper & Row v. Nation Enters., 471 U.S. 539, 568 (1985).
Berlin v. E.C. Publications, Inc., 329 F.2d 57 (2d Cir.1964).
Page 55
3.
Permission Required
Record companies have tended to be quite tolerant of other record companies whose artists engage
in the sampling of their recordings. This tolerance has afforded each record company the informal
privilege of tolerating the sampling practices of their own recording artists and producers under contract.
As more and more artists become outraged by the sampling of their works, record companies should
begin to become less sanguine about these practices.
Music publishers and songwriters, however, have taken a much dimmer view of sampling practices.
At least one prominent music publisher has begun reviewing new recordings to listen for samples that
may infringe their copyrights. It also should be noted that Gilbert O’Sullivan’s record company was not a
plaintiff in the songwriter’s action against Biz Markie and Markie’s record company. Mr. O’Sullivan filed
the lawsuit through his own music publishing company, taking on the expense of the litigation himself.
As his lawyer explained in a recent music trade magazine, “This case was not brought by some
megacompany…This case was brought by a solitary artistic person who did not like the idea that
somebody was using the song that he wrote and the recording that he made without his permission…He
could have made a deal early on. But that wasn’t what he wanted. What he wanted was the recording that
he did not like off the market, and that is what he got. If you are a creator, shouldn’t that be your right?”
With music publishers searching for authorized samples and filing lawsuits, a recording artist can no
longer assume that no one will notice his use of a sample. Nor should the artist assume that he will be
absolved of liability as long as an average lay person would not recognize his use of an authorized
sample. While it is true the courts have found infringement where the quality of the portion taken was “so
much of what is pleasing to the ears of lay listeners” and will often rely on the ears of lay juries to
determine whether an average person would clearly identify a sample as having been taken from another
song, it is still quite possible that a court could hold a sampler’s work an infringement even where an
association of the sample with the copied composition is only noticeable by experts or others with trained
or sophisticated perceptions. Samplers would therefore be advised to seek permission of the copyright
owners even if it is believed that an association could be made only by an expert or that the association is
only mildly noticeable. If the sampler knows he physically copied another song or recording, he should
seek permission.
Artists intending to use samples from another’s copyrighted recording would be strongly advised to
maintain a record of the samples used in their recordings and obtain permission from the copyright
owners before any distribution takes place. Once the sample is used in a recording that has been
distributed to the public, the bargaining leverage of the copyright owner of the composition or recording
from which the sample was taken increases significantly.
Finally, samplers seeking the proper clearance should not overlook the fact that two copyrights may
be involved in each particular sample. Copyrights in sound recordings are generally owned by the record
companies that financed or distributed them, and songs are owned by music publishers. These are rarely
the same entities.
Page 56
CONSIDERATIONS IN GRANTING AND CLEARING
LICENSES FOR DIGITAL SAMPLES
This section sketches the considerations in granting and clearing licenses for the use of portions of
copyrighted musical compositions and recordings by digital sampling.
1.
Music Licensing
When a sampling artist wishes to make copies of a recording containing the sampled musical
composition of another, permission will be required from the copyright owner of the musical
composition. The permission, if granted without further conditions, will normally be in the form of a
mechanical license.
A.
Applicability of Compulsory License Provision
The use of a sample containing the copyrighted song of another will not, however, be subject to the
compulsory license provision of the copyright law.23 As noted in Chapter 7, Congress specifically
recognized the legitimate interests of songwriters who might wish to prevent their musical works from
being “perverted, distorted, or travestied.”24 Accordingly, the compulsory license provision provides, “A
compulsory license includes the privilege of making a musical arrangement of the work to the extent
necessary to conform it to the style or manner of interpretation of the performance involved, but the
arrangement shall not change the basic melody or fundamental character of the work.., except with the
express consent of the copyright owner.”25 No doubt most recorded samples will be deemed arrangements
that change the fundamental character of the musical works from which they were taken.
Because mechanical licenses for song samples are not subject to the compulsory license provision,
the fees and other terms of licenses to make and distribute samples containing copyrighted compositions
may be freely negotiated. Even if the compulsory license statute should apply with respect to a given
sample—i.e., the sample recording does not change the basic melody or fundamental character of the
song—the consequences of a sampling artist not complying with the express terms of the compulsory
license provision will have the same effect. It has been the common practice of many sample artists to
release their recordings before seeking to obtain the proper mechanical license. The compulsory license
provision provides that any person who wishes to obtain a compulsory license shall, before or within 30
days after making, and before distributing any copies of the work, serve notice of intention to do so on the
copyright owner. Once a recording containing the musical work of another is distributed without
23
24
25
17 U.S.C. Sec. 115.
House Report of the Copyright Act of 1976, No. 94-1476, at page 109 (September 3, 1976).
17 U.S.C. Sec. 115 (a) (2).
Page 57
compliance with the compulsory license provision and without the consent of the copyright owner, a
compulsory license is no longer available, and the copyright owner is free to negotiate the terms of the
mechanical license without regard to the restrictions set forth in the compulsory license provision.
B.
Alternatives Available to the Music Copyright Owner
When a copyright owner is faced with the circumstances of an artist having included a portion of his
musical composition in an otherwise original song, the alternatives available to the copyright owner are:
(a) do nothing, (b) refuse to license, (c) grant a mechanical license for a one-time flat fee, (d) grant a
mechanical license for a royalty, (e) grant a mechanical license for a royalty and take a share in a
percentage of the performance royalties of the new composition containing the sample, (f) seek a coownership interest in the new composition, or (g) seek an assignment of the copyright in the new
composition.
Which of these alternatives the copyright owner chooses will depend upon the circumstances,
including the circumstances under which the sampling came to his attention, the value of the song, the
importance of the song in relation to its intended use, the leverage he perceives he has over the sampling
artist, and the fortitude that may be required to justify his position.
The ability of the music copyright owner to demand a license for the use of a sample containing a
portion of his musical composition will depend upon whether the sampling artist’s unauthorized use of
the sample would constitute an infringement of the copyrighted music. As noted above, in determining
whether an unauthorized use of the sample would constitute an infringement of a music copyright, courts
will inquire whether the portion copied was a qualitatively substantial portion of the work from which it
was taken. If it is determined that the portion copied was qualitatively substantial, then the inquiry turns
to how substantial. At this point, the music copyright owner would turn to basic considerations of music
licensing, including the value of the song sampled, the importance of the sample in relation to its intended
use, and the scope of the use. The outcome of an analysis of these factors will result in a perception about
the leverage the copyright owner has over the sampling artist in bargaining for a license.
Other factors affecting the copyright owner’s leverage include the circumstances under which the
sampling came to his attention. For example, if the sampling artist attempts to obtain permission for the
use before releasing the recording, then the availability of other samples containing substitute music will
preserve for the sampling artist the ability to walk away from the negotiations. If, however, the recording
containing the sample is already on the market when the music copyright owner is engaging in his
analysis, the result of the Grand Upright case should impress upon both parties the significantly higher
bargaining leverage of the copyright owner.
A copyright owner’s leverage in bargaining with the sampling artist will influence his fortitude or
willingness to take the actions required, up to and including the filing of a lawsuit, to justify his choice
among the following alternatives, including the structure of any deal, or the amount of any license fee, to
which he may settle upon.
Page 58
(a) Do Nothing
When a music copyright owner discovers that an artist has made and distributed recordings
containing a sampled portion of his copyrighted composition, he may choose to do nothing. This would
only be likely in one or more of the following circumstances: the material sampled was not a qualitatively
substantial part of the copyright owner’s song, the similarity between the owner’s musical work and the
sampling artist’s work was so slight as to render the similarity unrecognizable by the listening public or
even a trained ear, or the sampling was so~ slight that it may be difficult to prove that the similarity of
compositions was the result of sampling at all. In any of these circumstances, the copyright owner may
decide it is just not worth the trouble to take any further action, if, in fact, he had any action he could take.
If, however, the sampling artist’s new composition has become a hit and is receiving a significant
amount of airplay and record sales, or if it is merely included in a record album that has become a top
seller, it may be worth the trouble for the copyright owner to take steps to enforce his rights under the
appropriate circumstances.
(b) Refuse to License
Should the music copyright owner be approached by a sampling artist seeking permission to make
and distribute recordings containing a sampled portion of the owner’s composition, the copyright owner
may refuse to grant a license. This may be a sampling artist’s worst nightmare. To repeat the statement
made by Gilbert O’Sullivan’s attorney, O’Sullivan “could have made a deal early on. But that wasn’t
what he wanted. What he wanted was the recording that he did not like off the market, and that is what he
got.”
It has been suggested that Congress consider a compulsory license scheme for the licensing of
digital samples similar to the regime currently in place for recordings under Section 115 of the copyright
law.26 This suggestion, however, unreasonably ignores the rights of the creative artist’s right not to have
his work “perverted, distorted, or travestied,” a right which Congress has enacted into law by the express
terms of Section 1 15(a)(2). This section compels music copyright owners to grant licenses for other
recordings, but only after the copyright owner already has once permitted the public distribution of
recordings of the composition (in audio form only—licensing the work for inclusion in motion picture
soundtracks and other audiovisual works would not be considered a distribution for the purpose of this
provision). Until that first distribution is made, if ever, the law respects the right of the copyright owner to
refuse to permit the distribution of recordings of his copyrighted composition. And, even after such
recordings are first distributed, the law compels the copyright owner to license only those recordings
which have arrangements that do not change the basic melody or the fundamental character of the
26
Note, A New Spin on Music Sampling: A Case of Fair Play 105 Harvard Law Review 726, 742 (1992).
Page 59
owner’s musical composition.’
Nevertheless, unless the copyright owner has a compelling reason not to license, he should consider
licensing his music in sampled recordings. A reasonable reason to refuse to license may be that the
recording in which the sample is intended to be used contains indecent, racist, or other opprobrious
language. Another reason to refuse to license may be that the sampler’s work uses the owner’s
composition in a way that mutilates the composition or otherwise offends the creative sensitivities of the
songwriter. Even if the songwriter does not have a contractual right of consent over such uses, a music
publisher should avoid licensing music in a sampled recording if that action would harm his business or
personal relationship with the songwriter. Leaving aside such circumstances, a music copyright owner
should not view sampling as a form of stealing, but as a new market in which to derive revenue for the
songs in his catalog.
(c) Grant a Mechanical License for a One-lime Flat Fee
If the copyright owner who discovers the unauthorized use of his musical composition in a sampled
recording decides to do something about it, such as write a letter demanding that the sampling artist’s
record company cease and desist distribution of the offending recording, the response he receives will
depend upon whether the sampling artist or record company perceives that the recording constitutes an
infringement of copyright in the owner’s musical composition. An indignant reply from the artist’s
attorney telling the copyright owner, in a more or less dignified manner, to go away, should require no
explanation as to the artist’s perception of the use or evaluation of the copyright owner’s position.
If the copyright owner’s position is, under the circumstances, a weak one, the parties may wish to
settle upon the issuance of a mechanical license in exchange for a one-tune flat fee. Even if the copyright
owner’s perception of his case is stronger than the record company’s perception of it, the copyright owner
may still be unwilling to bear the expense of taking the matter to court, and may accept such an arrangement. The artist or record company may be willing to pay some amount on a flat fee basis, even where it
is felt the music copyright owner’s position is weak, to avoid the costs and risks associated with any
litigation that would be necessary to defend their position.
A form effecting this kind of flat fee arrangement is set forth as Form 17.1 at the end of this
chapter.27
On occasion, a copyright owner may be asked to grant such a license on a gratis basis—that is,
without charge. Music copyright owners, once persuaded to issue a license, will generally charge at least
some nominal fee sufficient to cover the administrative costs of issuing the license. This may range from
$25 to $50.
(d) Grant a Mechanical License for a Royalty
27
The forms relating to sampling at the end of this chapter are courtesy of Martin Cohen, Esq. and Ira B. Selsky, Esq. of Los Angeles, California.
Page 60
If, in light of all the circumstances regarding the qualitative substantiality of the music sampled and
the importance of its contribution to the recording in which it is used, the sampling artist is persuaded that
the copyright owner has a strong position and the fortitude to support that position with legal action, the
parties may negotiate a more substantial arrangement.
A straightforward arrangement under which sampled music may be licensed is the issuance of a
mechanical license in exchange for a royalty based upon the number of copies of the recording
distributed. The royalty in these arrangements is usually a function of the statutory rate set forth in the
compulsory license provision in the copyright law, as modified from time to time by the Copyright
Royalty Tribunal. The sampling artist, however, would take the position that it is unfair for his record
company to pay the full statutory rate, because the amount of material sampled from the copyright
owner’s work represents only a small part of the original musical work in which it is embodied. A
copyright owner might therefore be persuaded to accept half of the statutory rate or less, and, in fact, this
has become the standard practice. The percentage is typically set between 10% to 50%, with the
prevailing rate in average sampling cases being about 30% of statutory.
(e) Grant a Mechanical License for Royalty and Take a Share
in a Percentage of the Performance Royalties of the New
Composition
Nevertheless, the foregoing arrangement may still not be satisfactory to the copyright owner, who
would understandably assert that he should not only receive a portion of the mechanical royalty for copies
made and distributed of the recording, but should also share a portion of the performance royalties
resulting from the broadcast of the music on radio and television and other public performances.
The most common arrangement under which sampled music is licensed are deals in which the
copyright owner grants a mechanical license at some percentage below the statutory rate and the sampling
artist agrees that the copyright owner is entitled to receive some percentage of the performance royalties
payable by performance rights societies. Even where a significantly substantial amount of the copyright
owner’s music is sampled, the copyright owner may be willing to accept a mechanical royalty at lower
than the statutory rate in exchange for a significant share of the performance royalties, because the latter
often represents a greater source of income than mechanical royalties.
A form effecting this kind of sample licensing arrangement is set forth as Form 17.2 at the end of
this chapter.
A special problem arises where the sampling artist does not own the composition containing the
sampled song. For example, a sampling artist may include a sample of a song in a recording of a song
owned by another copyright owner, adding no original material of his own. Under these circumstances,
the solution described in this section will not work, because the sampling artist would be entitled to no
performance royalties with which to share with the copyright owner. This problem is revisited below.
The solution may also be unsatisfactory to the copyright owner for another reason: mechanical and
Page 61
performance royalties are not the only sources of music publishing revenue. The copyright owner would
want an arrangement that assures that he receives a fair share of all sources of subsidiary revenue derived
from the composition containing his copyrighted music, including revenue from commercial advertising,
motion picture and television synchronization and other licenses. Form 17.2 attempts to address ‘this
problem by making all licenses other than mechanical and performance licenses subject to the further
permission of the copyright owner. However, the copyright owner might not be convinced that this
sufficiently secures his interest in the additional revenue and the sampling artist may feel no assurance
that the copyright owner will seek only a fair portion of the additional revenue.
(f)
Seek a Co-ownership interest in the New Composition
Where the sampling artist can be persuaded that the copyright owner has a very strong position and
the fortitude to support that position with legal action, the parties may negotiate an arrangement that
satisfies the copyright owner’s desire to share in all sources of subsidiary revenue derived from the new
composition.
The most elegant way to assure that the copyright owner and the sampling artist each receive the
proper share of all music publishing income derived from the exploitation of the new composition is for
the parties to enter into a co-publishing agreement. Under this arrangement, the copyright owner is
granted a co-ownership interest in the new composition containing the sampled material. This has become
a fairly common solution to the sampling problem.
Under this arrangement, the percentage of the undivided copyright in the new composition granted to
the copyright owner of the sampled material would reflect the qualitative substantiality of the music
sampled and the importance of its contribution to the new work as a whole.
When these deals are struck, copyright owners commonly acquire a 25% to 50% co-ownership
interest in the new composition. Exclusive administration rights are generally left to the sampling artist’s
music publisher, who is often more experienced in exploiting music in the same genre of new
composition. However, this point is open to negotiation.
Three forms each effecting this kind of licensing arrangement are set forth as Form 17.3, 17.4 and
17.5 at the end of this chapter. Form 17.4 is a short-form agreement that allows each owner to grant
mechanical license to others, subject to accounting to the other co-owner of its share of the revenues, but
neither may license other uses unless the other has failed to object after receiving notice. Form 17.3, a
short-form letter agreement, requires each party to obtain the consent of the other prior to issuing licenses
for each of their respective shares. Form 17.5, the long-form, entitles each co-owner to administer its own
respective share. None of these solutions seems desirable. The problems arising from ownership of
copyrights split in this manner is discussed at length in Chapter 18.
Page 62
(g) Seek an Assignment of the Copyright
in the New Composition
If the copyright owner feels he has the leverage and all the fortitude and money necessary to engage
in litigation, then he may insist on nothing less than a complete ownership interest in the new
composition.
An extreme position such as this may be justified in cases where the sampled recording adds little
original material to the owner s copyrighted song. This may be the case where the new composition is
merely a modem arrangement of the song, the instrumental portion of the composition with modified or
new lyrics, or the song’s lyrics sung to a newly composed music.
In such cases, the music copyright owner could seek to enjoin the sampling artist from collecting
any music publishing income in connection with the recording and collect damages for copyright
infringement. The result of such a lawsuit could be severe and the sampling artist or its recording
company could choose to quickly settle the claim by just assigning all right in the work over to the
copyright owner.
2.
Sound Recording Licensing
When a sampling artist wishes to make copies of a recording containing the sampled sound
recording of another, permission will be required from the copyright owner of the sound recording. The
permission, if granted without further conditions, will normally be in the form of a master use license.
The alternatives available to the owner of a sound recording faced with an artist having included a
portion of his sound recording in an otherwise original sound recording are quite similar to those of the
owner of the copyright in the underlying music. Those alternatives need not be repeated here, but a few
important differences between practices in sound recording and music licenses for sampling will be
pointed out in the context of licenses for sampled recordings.
A.
Flat Fee Licenses
As noted, the owner of the sound recording may often have a much stronger case for infringement
than the owner of the music underlying the recording, but record companies, who generally own the
recordings, are more tolerant of sampling, because they know that artists in their own repertoire
frequently engage in similar practices. Thus, it might not always be in the best interests of recording
companies to do anything that would unreasonably restrain customary practices or help establish legal
case law that supports strong protection against the use of sound recordings or musical compositions in
digital samples.
Record companies therefore typically accept one-time flat fee payments for the use of samples from
their recordings. Where the sampling is insubstantial or virtually unrecognizable, a record company may
Page 63
grant a license on a gratis or nominal fee basis. Examples of licenses to use a recording sample on a flat
fee basis are set forth as Forms 17.6 and 17.7 at the end of this chapter.
B. Royalties
Where the sampling is substantial or recognizable, or if the success of the sampler’s recording can
clearly be attributed to the distinctive features of the sampled recording, a record company may demand a
royalty. In fact, a record company may actually be under an obligation, albeit an implied one, under its
recording contract with the recording artist who created the original recording, to use good faith efforts to
generate income from sampled uses of the recording. Royalty rates for samples of sound recordings
typically range from ½ cent to 5 cents per unit, with advances typically starting at about $5,000. An
example of a license to use a recording sample on a royalty basis is set forth as Form 17.8 at the end of
this chapter. The record company should review its contract with the artist to determine whether any
consent is required prior to issuing such a license.
3. Where Sampling Artist’s Additional Musical
Material is Owned by Another
As previously noted, a special problem may arise where the sampling artist does not own the
composition containing the sampled song. For example, a sampling artist may include a sample of a song
in a recording of a song owned by another copyright owner, adding no original material of his own.
If the sampling artist does not own, or claim to own, the new musical composition embodied in his
original recording, a co-ownership agreement may be the only solution to a serious sampling problem the
artist has created for the several copyright owners affected. In such circumstances, the owners of the two
musical compositions used in the unauthorized creation of the new work will need to work out a coownership arrangement among themselves. This may be a difficult negotiation, because it would seem
that none of the parties involved would have any particular leverage over any of the others. Yet, if the
resulting composition became a hit or was included in a hit album, the parties involved would have a
great incentive to reach a co-ownership arrangement clarifying where lucrative mechanical royalties,
performance royalties, and royalties from subsidiary uses should be paid.
Worse yet, where the work of one party was copied in virtually its entirety and that party is already
receiving a mechanical royalty at full statutory rate and all the performance credits, negotiations for a fair
share of royalties attempted by a party whose work was subjected to only a small sampling would seem
most difficult. The party who is already receiving full royalties – one who has done no wrongdoing –
would appear to have little incentive to negotiate, except to avoid the expense of a lawsuit or to maintain
good relations with another member of a small industry.
The National Music Publishers’ Association (NMPA) offers its services to help mediate or arbitrate
disputes between members and can provide a forum with knowledgeable industry veterans to help resolve
Page 64
the dispute in a quick, fair, amicable, and inexpensive way.28 Music publishers faced with a situation such
as that described above should seriously consider inquiring with the NMPA or a similar organization
about how they may help the parties resolve such a matter.
CONCLUSION
It has been the practice of sampling artists to sample under the assumption that sampling is not an
infringement or with the knowledge that their activity was illegal, but thought their sampling would not
be discovered. With music publishers listening carefully for samples containing their copyrighted works,
artists can no longer assume their activity will not be noticed. An artist who has incorporated in his
recording a digital sample from a song or sound recording of another is likely to be held to have infringed
two copyrights – that in a sound recording and that in the song embodied in the recording. The first
federal judge to have issued a ruling on the issue of such infringement enjoined all sales of the recording
and took the unusual step of referring the matter to the U.S. Attorney’s office for criminal prosecution.
Thus, it is now clear that sampling is illegal and will be dealt with seriously by the law.
A sampler is therefore strongly advised to seek permission wherever he knows he physically copied
the sounds of another song. Careful records should be maintained of all samples used during the creation
of a recording so that the appropriate permissions can be cleared. Permission should always be cleared
before any distribution of the recording takes place. By following these procedures, a sampling artist may
avoid the substantial risks and consequences of violating the legitimate rights of other songwriters and
artists.
28
National Music Publishers’ Association, 205 East 42nd Street, New York, N.Y 10017, Phone: 212-370-5330.
Page 65
Bridgeport v. Dimension Films
US Court of Appeals for the Sixth Circuit, September 7, 2004. File Name: 04a0297p.06 (2004)
Page 66
Page 67
1
No. 02-6521
X
BRIDGEPORT MUSIC , INC.;
WESTBOUND RECORDS, INC.,
Plaintiffs-Appellants, >
SOUTHFIELD MUSIC , INC.;
,
NINE RECORDS, INC.,
Plaintiffs, v.
DIMENSION FILMS; MIRAMAX FILM CORP .,
Defendants, NO LIMIT FILMS LLC,
Defendant-Appellee. No. 03-5738
BRIDGEPORT MUSIC , INC.;
SOUTHFIELD MUSIC , INC.;
NINE RECORDS, INC.,
Plaintiffs-Appellants, WESTBOUND RECORDS, INC.,
Plaintiff, v.
Nos. 02-6521;
03-5738
FOR THE SIXTH CIRCUIT
_________________
UNITED STATES COURT OF APPEALS
ELECTRONIC CITATION: 2004 FED App. 0297P (6th Cir.)
File Name: 04a0297p.06
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
Nos. 02-6521; 03-5738
N
Appeal from the United States District Court
for the Middle District of Tennessee at Nashville.
No. 01-00412—Thomas A. Higgins, District Judge.
Bridgeport Music et al. v.
Dimension Films et al.
The Honorable Judith M. Barzilay, Judge, United States Court of
International Trade, sitting by designation.
*
ARGUED: Richard S. Busch, KING & BALLOW,
Nashville, Tennessee, for Appellants. Robert L. Sullivan,
LOEB & LOEB, Nashville, Tennessee, for Appellee.
ON BRIEF: Richard S. Busch, D’Lesli M. Davis, KING &
BALLOW, Nashville, Tennessee, for Appellants. Robert L.
Sullivan, John C. Beiter, LOEB & LOEB, Nashville,
Tennessee, for Appellee.
COUNSEL
_________________
Before: GUY and GILMAN, Circuit Judges; BARZILAY,
Judge.*
Decided and Filed: September 7, 2004
Argued: April 28, 2004
DIMENSION FILMS, et al.,
Defendants,
NO LIMIT FILMS LLC,
Defendant-Appellee.
2
Page 68
All of plaintiffs’ claims against Miramax Film Corp. and Dimension
Films were dismissed with prejudice, pursuant to a settlement, on June 27,
2002.
RALPH B. GUY, JR., Circuit Judge. Plaintiffs, Bridgeport
Music, Inc., Westbound Records, Inc., Southfield Music, Inc.,
and Nine Records, Inc., appeal from several of the district
court’s findings with respect to the copyright infringement
claims asserted against No Limit Films.1 This action arises
out of the use of a sample from the composition and sound
recording “Get Off Your Ass and Jam” (“Get Off”) in the rap
song “100 Miles and Runnin’” (“100 Miles”), which was
included in the sound track of the movie I Got the Hook Up
(Hook Up). Specifically, Westbound appeals from the district
court’s decision to grant summary judgment to defendant on
the grounds that the alleged infringement was de minimis and
therefore not actionable. Bridgeport, while not appealing
from the summary judgment order, challenges instead the
denial of its motion to amend the complaint to assert new
claims of infringement based on a different song included in
the sound track of Hook Up. Finally, Bridgeport, Southfield,
and Nine Records appeal from the decision to award attorney
fees and costs totaling $41,813.30 to No Limit Films under 17
U.S.C. § 505. For the reasons that follow, we reverse the
district court’s grant of summary judgment to No Limit on
Westbound’s claim of infringement of its sound recording
copyright, but affirm the decision of the district court as to the
award of attorney fees and the denial of Bridgeport’s motion
to amend.
1
Nos. 02-6521; 03-5738
These are two of eleven appe als arising out of six related lawsuits
that have been assigned to this panel for hearing and decision (Nos. 026521, 03-5002, 03-5003, 03-5004, 03-5005, 03-5738, 03-5739, 03-5741,
03-5742 , 03-5744, 03-565 6).
2
Bridgeport and Westbound claim to own the musical
composition and sound recording copyrights in “Get Off Your
Ass and Jam” by George Clinton, Jr. and the Funkadelics.
We assume, as did the district court, that plaintiffs would be
able to establish ownership in the copyrights they claim.
There seems to be no dispute either that “Get Off” was
The claims in this case were brought by all four plaintiffs:
Bridgeport and Southfield, which are in the business of music
publishing and exploiting musical composition copyrights,
and Westbound Records and Nine Records, which are in the
business of recording and distributing sound recordings. It
was conceded at the time of summary judgment, however,
that neither Southfield Music nor Nine Records had any
ownership interest in the copyrights at issue in this case. As
a result, the district court ordered that they be jointly and
severally liable for 10% of the attorney fees and costs
awarded to No Limit Films.
The claims at issue in this appeal were originally asserted
in an action filed on May 4, 2001, by the related entities
Bridgeport Music, Southfield Music, Westbound Records,
and Nine Records, alleging nearly 500 counts against
approximately 800 defendants for copyright infringement and
various state law claims relating to the use of samples without
permission in new rap recordings. In August 2001, the
district court severed that original complaint into 476 separate
actions, this being one of them, based on the allegedly
infringing work and ordered that amended complaints be
filed.2
4
OPINION
_________________
3
I.
_________________
Nos. 02-6521; 03-5738
Page 69
5
Sound recordings and their underlying musical compositions are
separate works with their o wn distinct cop yrights. See 17 U.S.C.
§ 102 (a)(2), (7). Bridgeport M usic, Inc. v. Still N The W ater Publ’g, 327
F.3d 472 , 475 n.3 (6th Cir.), cert. denied, 124 S. Ct. 399 (2003)
(consolidated appeals from the dismissal of 19 of the 476 actions for lack
of personal jurisdiction).
3
Westbound’s claims are for infringement of the sound
recording “Get Off.”3 Because defendant does not deny it, we
assume that the sound track of Hook Up used portions of “100
Miles” that included the allegedly infringing sample from
“Get Off.” The recording “Get Off” opens with a three-note
combination solo guitar “riff” that lasts four seconds.
According to one of plaintiffs’ experts, Randy Kling, the
recording “100 Miles” contains a sample from that guitar
solo. Specifically, a two-second sample from the guitar solo
digitally sampled or that the recording “100 Miles” was
included on the sound track of I Got the Hook Up. Defendant
No Limit Films, in conjunction with Priority Records,
released the movie to theaters on May 27, 1998. The movie
was apparently also released on VHS, DVD, and cable
television. Fatal to Bridgeport’s claims of infringement was
the Release and Agreement it entered into with two of the
original owners of the composition “100 Miles,” Ruthless
Attack Muzick (RAM) and Dollarz N Sense Music (DNSM),
in December 1998, granting a sample use license to RAM,
DNSM, and their licensees. Finding that No Limit Films had
previously been granted an oral synchronization license to use
the composition “100 Miles” in the sound track of Hook Up,
the district court concluded Bridgeport’s claims against No
Limit Films were barred by the unambiguous terms of the
Release and Agreement. Bridgeport Music, Inc. v. Dimension
Films LLC, 230 F. Supp.2d 830, 833-38 (M.D. Tenn. 2002).
Although Bridgeport does not appeal from this determination,
it is relevant to the district court’s later decision to award
attorney fees to No Limit Films.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
Mindful of the limited number of notes and chords
available to composers, the district court explained that the
question turned not on the originality of the chord but, rather,
on “the use of and the aural effect produced by the way the
notes and the chord are played, especially here where copying
of the sound recording is at issue.” Id. (citations omitted).
The district court found, after carefully listening to the
recording of “Get Off,” “that a jury could reasonably
conclude that the way the arpeggiated chord is used and
memorialized in the ‘Get Off’ sound recording is original and
creative and therefore entitled to copyright protection.” Id.
(citing Newton v. Diamond, 204 F. Supp.2d 1244, 1249-59
(C.D. Cal. 2002)) (later affirmed on other grounds at 349 F.3d
Bridgeport, 230 F. Supp.2d at 839. No Limit Films moved
for summary judgment, arguing (1) that the sample was not
protected by copyright law because it was not “original”; and
(2) that the sample was legally insubstantial and therefore
does not amount to actionable copying under copyright law.
The portion of the song at issue here is an arpeggiated
chord – that is, three notes that, if struck together,
comprise a chord but instead are played one at a time in
very quick succession – that is repeated several times at
the opening of “Get Off.” The arpeggiated chord is
played on an unaccompanied electric guitar. The rapidity
of the notes and the way they are played produce a highpitched, whirling sound that captures the listener’s
attention and creates anticipation of what is to follow.
was copied, the pitch was lowered, and the copied piece was
“looped” and extended to 16 beats. Kling states that this
sample appears in the sound recording “100 Miles” in five
places; specifically, at 0:49, 1:52, 2:29, 3:20 and 3:46. By the
district court’s estimation, each looped segment lasted
approximately 7 seconds. As for the segment copied from
“Get Off,” the district court described it as follows:
6
Page 70
7
The district court’s decision granting summary judgment is
reviewed de novo. Smith v. Ameritech, 129 F.3d 857, 863
(6th Cir. 1997). In deciding a motion for summary judgment,
the court must view the evidence and reasonable inferences in
the light most favorable to the nonmoving party. Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
II.
On October 11, 2002, the district court granted summary
judgment to No Limit Films on the claims of Bridgeport and
Westbound; dismissed with prejudice the claims of Southfield
and Nine Records; denied as moot the motion of Bridgeport
and Westbound for partial summary judgment on the issue of
copyright ownership; and entered final judgment accordingly.
Bridgeport and Westbound appealed. The facts relevant to
the earlier denial of Bridgeport’s motion to amend the
complaint will be discussed below. No Limit Films filed a
post-judgment motion for attorney fees and costs, which the
district court granted for the reasons set forth in its
memorandum opinion and order of April 24, 2003.
Bridgeport, Southfield Music, and Nine Records appealed
from that award.
Turning then to the question of de minimis copying in the
context of digital sampling, the district court concluded that,
whether the sa mpli ng is examined under a
qualitative/quantitative de minimis analysis or under the socalled “fragmented literal similarity” test, the sampling in this
case did not “rise to the level of a legally cognizable
appropriation.” 230 F. Supp.2d at 841. Westbound argues
that the district court erred both in its articulation of the
applicable standards and its determination that there was no
genuine issue of fact precluding summary judgment on this
issue.
591 (9th Cir. 2003)). No Limit Films does not appeal from
this determination.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
Westbound does not challenge the district court’s
characterization of either the segment copied from “Get Off”
or the sample that appears in “100 Miles.” Nor does
Westbound argue that there is some genuine dispute as to any
material fact concerning the nature of the protected material
in the two works. The heart of Westbound’s arguments is the
claim that no substantial similarity or de minimis inquiry
should be undertaken at all when the defendant has not
disputed that it digitally sampled a copyrighted sound
recording. We agree and accordingly must reverse the grant
of summary judgment.
In granting summary judgment to defendant, the district
court looked to general de minimis principles and emphasized
the paucity of case law on the issue of whether digital
sampling amounts to copyright infringement. Drawing on
both the quantitative/qualitative and “fragmented literal
similarity” approaches, the district court found the de minimis
analysis was a derivation of the substantial similarity element
when a defendant claims that the literal copying of a small
and insignificant portion of the copyrighted work should be
allowed. After listening to the copied segment, the sample,
and both songs, the district court found that no reasonable
juror, even one familiar with the works of George Clinton,
would recognize the source of the sample without having
been told of its source. This finding, coupled with findings
concerning the quantitatively small amount of copying
involved and the lack of qualitative similarity between the
works, led the district court to conclude that Westbound could
not prevail on its claims for copyright infringement of the
sound recording.
(1986). Summary judgment is appropriate when there are no
genuine issues of material fact in dispute and the moving
party is entitled to judgment as a matter of law. FED . R. CIV .
P. 56(c).
8
Page 71
9
“In most copyright actions, the issue is whether the infringing work
is substantially similar to the original wo rk. . . . The scope of inquiry is
much narro wer when the work in question is a so und recording. The only
issue is whether the actual sound recording has been used without
authorization. Substantial similarity is not an issue . . . .” Bradley C.
Rosen, Esq., 22 CAUSES OF ACT ION § 12 (2d ed . 2003).
5
Defendants claim tha t this argument is made for the first time on
app eal. Assuming without deciding that such is the case, we nonetheless
exercise our discretion to entertain this argument due to the dearth of legal
authority on this issue and the importance of the resolution of this issue
to the m usic industry.
4
3. We would agree with the district court’s analysis on the
question of originality if the composition copyright had been
at issue. Having concluded that the statute requires a different
analysis for sound recording copyrights, however, we also
find that the requirement of originality is met by the fixation
of sounds in the master recording. Only an actual physical
copy of a master recording will be exactly the same as the
copyrighted sound recording. We assume that Westbound
will be able to establish it has a copyright in the sound
2. Since the district court decision essentially tracked the
analysis that is made if a musical composition copyright were
at issue, we depart from that analysis.5
1. The analysis that is appropriate for determining
infringement of a musical composition copyright, is not the
analysis that is to be applied to determine infringement of a
sound recording. We address this issue only as it pertains to
sound recording copyrights.4
At the outset it is important to make clear the precise nature
of our decision. Our conclusions are as follows:
A. Digital Sampling of Copyrighted Sound Recordings
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
“E.g., Terry Fryer, Sampling Jargon Illustrated, KEYB OAR D, June
1988, at 66-73. First, the cost barrier to enter into the audio production
arena is low d ue to the influx of affordab le digital record ing equipment.
The combination of a microphone, digital audio equipment, consumer
audio equipment and an album or com pact disc co llection are the o nly
tools needed to produce commercial rap m usic. Second, utilizing samples
as the musical element of the song enables the producer to create
commercial rap music without any original musical accompaniment prior
to recording the vocals. T hird, using music samples saves a considerable
amount of time when compared to the traditional recording methods
because another artist already record ed the underlying music. . . .”
Stephen R. W ilson, Music Sam pling Law suits: Does L oop ing M usic
Samples Defeat the De Min imis Defense?, 1 Journal of High Technology
Law (JHT L) 179 n.9 (200 2) (citations omitted).
6
7. The music industry, as well as the courts, are best served
if something approximating a bright-line test can be
established. Not necessarily a “one size fits all” test, but one
that, at least, adds clarity to what constitutes actionable
6. Advances in technology6 coupled with the advent of the
popularity of hip hop or rap music have made instances of
digital sampling extremely common and have spawned a
plethora of copyright disputes and litigation.
5. Because of the court’s limited technological knowledge
in this specialized field, our opinion is limited to an instance
of digital sampling of a sound recording protected by a valid
copyright. If by analogy it is possible to extend our analysis
to other forms of sampling, we leave it to others to do so.
4. This case involves “digital sampling” which is a term of
art well understood by the parties to this litigation and the
music industry in general. Accordingly, we adopt the
definition commonly accepted within the industry.
recording and that a digital sample from the copyrighted
sound recording was used in this case.
10
Page 72
Nos. 02-6521; 03-5738
(5) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial,
(4) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and motion
pictures and other audiovisual works to perform the
copyrighted work publicly;
(3) 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;
(2) to prepare derivative works based upon the
copyrighted work;
(1) to reproduce the copyrighted work in copies
or phonorecords;
Subject to sections 107 through 122, the owner of
copyright under this title has the exclusive rights to do
and to authorize any of the following:
Section 106 provides:
The exclusive rights of the owner of copyright in a
sound recording are limited to the rights specified by
clauses (1), (2), (3) and (6) of section 106, and do not
include any right of performance under section 106(4).
B. Analysis
(b) The exclusive right of the owner of copyright in a
sound recording under clause (1) of section 106 is limited
to the right to duplicate the sound recording in the form
of phonorecords or copies that directly or indirectly
recapture the actual sounds fixed in the recording. The
exclusive right of the owner of copyright in a sound
recording under clause (2) of section 106 is limited to the
right to prepare a derivative work in which the actual
sounds fixed in the sound recording are rearranged,
remixed, or otherwise altered in sequence or quality. The
exclusive rights of the owner of copyright in a sound
recording under clauses (1) and (2) of section 106 do not
extend to the making or duplication of another sound
recording that consists entirely of an independent fixation
of other sounds, even though such sounds imitate or
simulate those in the copyrighted sound recording. The
exclusive rights of the owner of copyright in a sound
recording under clauses (1), (2), and (3) of section 106 do
not apply to sound recordings included in educational
television and radio programs (as defined in section 397
of title 47) distributed or transmitted by or through public
broadcasting entities (as defined by section 118(g)):
Provided, That copies or phonorecords of said programs
are not commercially distributed by or through public
broadcasting entities to the general public.
Section 114(b) states:
(6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital
audio transmission.
12
We do not set forth the arguments made by Westbound
since our analysis differs somewhat from that offered by the
plaintiff. Our analysis begins and largely ends with the
applicable statute. Section 114(a) of Title 17 of the United
States Code provides:
11
graphic, or sculptural works, including the
individual images of a motion picture or other
audiovisual work, to display the copyrighted work
publicly; and
infringement with regard to the digital sampling of
copyrighted sound recordings.
Nos. 02-6521; 03-5738
Page 73
13
Needless to say, in the case of a recording of a musical composition
the imitator would have to clear with the holder of the composition
cop yright.
7
Section 114(b) provides that “[t]he exclusive right of the
owner of copyright in a sound recording under clause (2) of
section 106 is limited to the right to prepare a derivative work
Before discussing what we believe to be the import of the
above quoted provisions of the statute, a little history is
necessary. The copyright laws attempt to strike a balance
between protecting original works and stifling further
creativity. The provisions, for example, for compulsory
licensing make it possible for “creators” to enjoy the fruits of
their creations, but not to fence them off from the world at
large. 17 U.S.C. § 115. Although musical compositions have
always enjoyed copyright protection, it was not until 1971
that sound recordings were subject to a separate copyright. If
one were to analogize to a book, it is not the book, i.e., the
paper and binding, that is copyrightable, but its contents.
There are probably any number of reasons why the decision
was made by Congress to treat a sound recording differently
from a book even though both are the medium in which an
original work is fixed rather than the creation itself. None the
least of them certainly were advances in technology which
made the “pirating” of sound recordings an easy task. The
balance that was struck was to give sound recording copyright
holders the exclusive right “to duplicate the sound recording
in the form of phonorecords or copies that directly or
indirectly recapture the actual sounds fixed in the recording.”
17 U.S.C. § 114(b). This means that the world at large is free
to imitate or simulate the creative work fixed in the recording
so long as an actual copy of the sound recording itself is not
made.7 That leads us directly to the issue in this case. If you
cannot pirate the whole sound recording, can you “lift” or
“sample” something less than the whole. Our answer to that
question is in the negative.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
“Samplers should apply for the appropriate licenses, respect the
rights of copyright holders, and be respected in turn as equal creators,
Resp onsibility for obtaining clearance should fall to either the artist, the
9
Susan J. Latham, Newton v. Diamond: Measuring the Legitimacy of
Unauthorized Compositional Sampling–A Clue Illuminated and
Obscured, 26 Hastings Comm. & Ent. L.J. 119, 125 (2003) (footnotes
omitted).
The import of this language is that it does not matter how
much a digital sampler alters the actual sounds or whether the
ordinary lay observer can or cannot recognize the song or the
artist’s performance of it. Since the exclusive right encompasses
rearranging, remixing, or otherw ise altering the actual sounds,
the statute by its own terms precludes the use of a substantial
similarity test.
The exclusive right of the owner of copyright in a sound
recording under [the section 106 right to prepare derivative
works] is limited to the right to prepare a derivative work in
which the actual sounds fixed in the sound recording are
rearranged, remixed, or otherwise altered in sequence or qu ality.
First, by clarifying the rights of a sound recording copyright owner
in regard to d erivative works, Sectio n 114(b) makes it clear that the digital
sampling of a cop yrighted sound recording must typically be licensed to
avoid an infringement. Sec tion 11 4(b) states that:
8
To begin with, there is ease of enforcement. Get a license
or do not sample. We do not see this as stifling creativity in
any significant way. It must be remembered that if an artist
wants to incorporate a “riff” from another work in his or her
recording, he is free to duplicate the sound of that “riff” in the
studio. Second, the market will control the license price and
keep it within bounds.9 The sound recording copyright holder
in which the actual sounds fixed in the sound recording are
rearranged, remixed, or otherwise altered in sequence or
quality.” In other words, a sound recording owner has the
exclusive right to “sample” his own recording. We find much
to recommend this interpretation.8
14
Page 74
15
“Thus, it seems like the only way to infringe on a sound recording
is to re-record sounds from the original work, which is exactly the nature
of digital sound sampling. Then the on ly issue becomes whether the
defendant re-reco rded sound from the original. This suggests that the
substantial similarity test is inapplicable to sound recordings.” Jeffrey R.
Houle, Digital Audio Sampling, Copyright Law and the A merican Mu sic
Industry: Piracy or Just a Bad “RAP”?, 37 Loy. L. Rev. 879, 896
(1992).
10
label, or bo th. Sam plers re alize that in the litigious environment of the
United States, there is nothing to be gained and much money potentially
to be lost by being a renegade. Surely some obscure materials will be
sampled and overlooked, but the process should proceed devoid of
recrimination and with the opp ortunity for money to be made by both the
sampler and those whom he sam ples.” D avid S anjek , “D on’t Have to DJ
No M ore”: Sampling and the “Autonomous” Creator, 10 C ardo zo A rts
& Ent. L.J. 607, 621 (19 92).
This analysis admittedly raises the question of why one
should, without infringing, be able to take three notes from a
musical composition, for example, but not three notes by way
of sampling from a sound recording. Why is there no de
minimis taking or why should substantial similarity not enter
the equation.10 Our first answer to this question is what we
have earlier indicated. We think this result is dictated by the
applicable statute. Second, even when a small part of a sound
cannot exact a license fee greater than what it would cost the
person seeking the license to just duplicate the sample in the
course of making the new recording. Third, sampling is never
accidental. It is not like the case of a composer who has a
melody in his head, perhaps not even realizing that the reason
he hears this melody is that it is the work of another which he
had heard before. When you sample a sound recording you
know you are taking another’s work product.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
“The current lack o f bright-line rules lead s to unp redictability,
which may be one reason that so few sampling cases are brought to trial
. . . . A cost-benefit analysis generally indicates that is is less expensive
12
“(A)ll samples from a record approp riate the work of the musicians
who performed on that record. This enables the sampler to use a musical
performance without hiring either the musician wh o originally played it
or a different musician to play the music a gain. Thus sampling of records
. . . allows a producer of music to save money (by not hiring a musician)
without sacrificing the sound and phrasing of a live musician in the song.
This practice poses the greatest danger to the musical profession because
the musician is being replaced with himself.” Christopher D. Abramson,
Digital Sam pling and the R ecording Mu sician: A Proposal for
Legislative Protection, 74 N.Y.U. L. R EV . 1660, 1668 (1999) (footnote
omitted).
11
This case also illustrates the kind of mental, musicological,
and technological gymnastics that would have to be employed
if one were to adopt a de minimis or substantial similarity
analysis. The district judge did an excellent job of navigating
these troubled waters, but not without dint of great effort.
When one considers that he has 800 other cases all involving
different samples from different songs, the value of a
principled bright-line rule becomes apparent. We would want
to emphasize, however, that considerations of judicial
economy are not what drives this opinion. If any
consideration of economy is involved it is that of the music
industry. As this case and other companion cases make clear,
it would appear to be cheaper to license than to litigate.12
recording is sampled, the part taken is something of value.11
No further proof of that is necessary than the fact that the
producer of the record or the artist on the record intentionally
sampled because it would (1) save costs, or (2) add something
to the new recording, or (3) both. For the sound recording
copyright holder, it is not the “song” but the sounds that are
fixed in the medium of his choice. When those sounds are
sampled they are taken directly from that fixed medium. It is
a physical taking rather than an intellectual one.
16
Page 75
17
2. Infringement of the Sound Recording
For example, the copyright act states that, “The exclusive
rights of the owner o f copyright in a sound recording . . . do not
extend to the making or duplication of another sound recording
that consists entirely of an independent fixation of other sound s,
even though such so unds imitate or simulate those in the
copyrighted sound recording” [17 U.S.C. § 114 (b)] (e mph asis
No know n court decisions are available at this time to help
determine the extent to which samples may be made of
copyrighted recordings without the permission of their owners.
Certain provisions of the copyright law, however, do suggest
that broader protection against unauthorized sampling may be
availab le for owners of sound recordings than for the owners of
musical com positions that may be embodied in those sound
recordings.
14
W e have not addressed in detail any of the cases frequently cited
in these music copyright cases because in the main they involved
infringement of the composition copyright and not the sound recording
cop yright. Baxter v. MCA , Inc., 812 F.2d 421 (9th C ir. 198 7); Grand
Upright Music Ltd. v. Warner Bros. Records, Inc., 780 F. Supp. 182
(S.D.N.Y. 199 1); Jarvis v. A&M Records, 827 F. Supp. 282 (D.N.J.
1993); Williams v. Broadus, 60 U.S.P.Q.2d 1051 (S.D.N.Y. 20 01);
Newton v. Diamond, 349 F.3d 59 1, 594-95 (9th Cir. 2003).
13
for a samp ler to purchase a license before sampling (or se ttle a postsampling lawsuit) rather than take his chances in an expensive trial, the
outcome of which . . . is nearly impossible to predict with any degree of
certainty.” Steph en R. W ilson, Mu sic Sam pling La wsuits: Does Looping
Mu sic Sam ples Defeat the De Min imis Defense, 1 Journal of High
Technology Law (JH TL) 17 9, 187 n.97 (20 02).
Since our holding arguably sets forth a new rule, several
other observations are in order. First, although we followed
no existing judicial precedent, we did not pull this
interpretation out of thin air.13 Several law review and text
writers, some of whom have been referenced in this opinion,
have suggested that this is the proper interpretation of the
copyright statute as it pertains to sound recordings.14 Since
Nos. 02-6521; 03-5738
18
Nos. 02-6521; 03-5738
W hile the question whether an unauthorized use of a digital
samp le infringes a musica l composition ma y require a full
substantial similarity analysis, the question whether the use of a
samp le constitutes infringement of a sound recording could end
upon a determination that the sampler physically copied the
copyr ighted sound recording of another. If the sampler
physically copied any portion of another’s copyrighted sound
recording, then infringement should be found . If the sampler d id
It has been suggested that the strong protection implied by
the forego ing pro visions could be mitigated by a judicially
applied standard which p ermits so me degree of de m inimis
copying or copying where the sampled portion of the resulting
work is not sub stantially similar to the copied wo rk. For
example, a court could determine that the taking of a millisecond
of sound from another’s copyrighted recording, or the taking of
a more extensive portion that has been modified to the point of
being completely unrecognizable or impo ssible to associate with
the copied recording, do es not constitute infringem ent. It is
believed, however, that the courts should take what appears to be
a rare oppo rtunity to follo w a “bright line” rule specifically
mandated by Congress. This would result in a substantial
reduction of litigation costs and uncertainty attendin g disputes
over sampling infringem ent of so und recordings and would
prom ote a faster resolution of these d isputes.
In fact, the copyright law specifically provides that the
owner of copyright in a sound recording has the exclusive right
to prepare a derivative work “in which the actual sounds fixed
in the sound rec ording are rearranged , remixed, or o therwise
altered in sequence or quality.” A recording that embodies
samples taken from the sound recording of another is by
definition a ‘rearranged, remixed, or otherwise altered in
sequence or qu ality.’
added). By using the words “entirely of an independent
fixation” in referring to sound recordings which may imitate or
simulate the sounds of another, Congress may have intended that
a recording containing any sound s of ano ther rec ording would
constitute infringement. Thus, it would appear that any
unauthorized use of a digital sam ple taken from ano ther’s
copyrighted recording would be an infringement of the
copyrighted recording.
Page 76
19
“As a result of actual, as well as threatened, litigation in the area of
digital sampling infringement, several developments have occurred.
Sampling clearinghouses serve as one recent outgro wth.
These
companies are similar to publisher clearinghouses in that they are
authorized by member copyright owners to clear samples for use on
albums acco rding to an agreed upon fee struc ture. In addition, record
companies and most music publishers have instituted certain licensing
policies as more and more artists routinely seek clearance for their
samples with the ho pe of avoiding litigation.” A. D ean Johnson, Mu sic
Cop yrights: The Need for an Appropriate Fair Use Analysis in Digital
15
AL KOHN & BOB KOHN, KOHN ON MU SIC LICENSING 1486-87
(Aspen Law & Business 3d ed. 2002) (footnotes omitted).
not physically copy, then there could be no infringement (even
if the resulting reco rding substantially simulates or imitates the
original recording).
Second, to pursue further the subject of stifling creativity,
many artists and record companies have sought licenses as a
matter of course.15 Since there is no record of those instances
digital sampling has become so commonplace and rap music
has become such a significant part of the record industry, it is
not surprising that there are probably a hundred articles
dealing with sampling and its ramifications. It is also not
surprising that the viewpoint expressed in a number of these
articles appears driven by whose ox is being gored. As is so
often the case, where one stands depends on where one sits.
For example, the sound recording copyright holders favor this
interpretation as do the studio musicians and their labor
organization. On the other hand, many of the hip hop artists
may view this rule as stifling creativity. The record
companies and performing artists are not all of one mind,
however, since in many instances, today’s sampler is
tomorrow’s samplee. The incidence of “live and let live” has
been relatively high, which explains why so many instances
of sampling go unprotested and why so many sampling
controversies have been settled.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
Sampling Infring ement Suits, 21 FLA . S T . U. L. R EV . 135, 163 (1993)
(footnote omitted).
Finally, and unfortunately, there is no Rosetta stone for the
interpretation of the copyright statute. We have taken a
“literal reading” approach. The legislative history is of little
help because digital sampling wasn’t being done in 1971. If
this is not what Congress intended or is not what they would
intend now, it is easy enough for the record industry, as they
have done in the past, to go back to Congress for a
clarification or change in the law. This is the best place for
the change to be made, rather than in the courts, because as
this case demonstrates, the court is never aware of much more
than the tip of the iceberg. To properly sort out this type of
problem with its complex technical and business overtones,
one needs the type of investigative resources as well as the
ability to hold hearings that is possessed by Congress.
Fourth, we realize we are announcing a new rule and
because it is new, it should not play any role in the
assessment of concepts such as “willful” or “intentional” in
cases that are currently before the courts or had their genesis
before this decision was announced.
Third, the record industry, including the recording artists,
has the ability and know-how to work out guidelines,
including a fixed schedule of license fees, if they so choose.
of sampling that either go unnoticed or are ignored, one
cannot come up with precise figures, but it is clear that a
significant number of persons and companies have elected to
go the licensing route. Also there is a large body of pre-1971
sound recordings that is not protected and is up for grabs as
far as sampling is concerned. Additionally, just as many
artists and companies choose to sample and take their
chances, it is likely that will continue to be the case.
20
Page 77
21
The district court also denied plaintiffs leave to amend to add
claims against new parties arising from the inclusion of “100 M iles” in I
Got the Hook Up. Plaintiffs have a bandoned an y appeal with respect to
the denial of that reque st.
16
Head v. Jellico Hous. Auth., 870 F.2d 1117, 1123 (6th Cir.
1989) (quoting Hageman v. Signal L.P. Gas, Inc., 486 F.2d
479, 484 (6th Cir. 1973)). “When amendment is sought at a
late stage in the litigation, there is an increased burden to
Undue delay in filing, lack of notice to the opposing
party, bad faith by the moving party, repeated failure to
cure deficiencies by previous amendments, undue
prejudice to the opposing party, and futility of
amendment are all factors which may affect the decision.
Delay by itself is not sufficient reason to deny a motion
to amend. Notice and substantial prejudice to the
opposing party are critical factors in determining whether
an amendment should be granted.
Bridgeport’s substantive appeal is from the denial of leave
to file a second amended complaint that would have asserted
new claims of infringement based on the inclusion of a
different song, called “How Ya Do Dat,” in the sound track of
Hook Up.16 We review the denial of a motion to amend for
abuse of discretion, except to the extent that it is based on a
legal determination that the amendment would not withstand
a motion to dismiss. Wade v. Knoxville Utilities Bd., 259
F.3d 452, 459 (6th Cir. 2001). Leave to amend a pleading
shall be freely given “when justice so requires.” FED . R. CIV .
P. 15(a).
III.
These conclusions require us to reverse the entry of
summary judgment on Westbound’s claims against No Limit
Films.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
Plaintiffs moved to amend on April 19, 2002, and No Limit
Films opposed the motion in a response filed on April 26,
2002. On May 6, 2002, the magistrate judge recommended
that the motion be denied. Plaintiffs filed objections on May
16, 2002, and defendant responded on May 30, 2002. The
discovery cutoff date, May 21, had passed, but the deadline
On April 15, 2002, plaintiffs’ counsel received a “cue
sheet” for Hook Up that apparently alerted Bridgeport to the
presence of another song in which it held a copyright interest.
Specifically, Bridgeport claims 37% interest in the
composition “How Ya Do Dat” (“How Ya”) under a Release
and Agreement dated October 21, 1998, that granted
permission to use a sample from the composition “One of
Those Funky Things” in “How Ya.” While there was
disagreement about whether discovery made available as
early as October 2001 should have alerted Bridgeport of this
claim, there is no dispute that the presence of “How Ya” was
readily observable from watching the movie. In fact, the
magistrate judge noted that the “cue sheet” appears to be a list
of credits from the end of the film.
Plaintiffs commenced this action in May 2001, and filed an
amended complaint in September 2001. In November 2001,
the district court entered a scheduling order which required
that any motion to amend pleadings be filed far enough in
advance of April 1, 2002, to allow briefing to be completed
by that date. Discovery was to be completed by May 21,
2002. On March 18, 2002, the district court extended the
time for amending pleadings with the proviso that it would
have to be done in time to avoid extending discovery beyond
May 21, 2002.
A. Facts
show justification for failing to move earlier.” Wade, 259
F.3d at 459 (citing Duggins v. Steak ‘N Shake, Inc., 195 F.3d
828, 834 (6th Cir. 1999)).
22
Page 78
23
The plaintiffs object to the Magistrate Judge’s
conclusion that plaintiffs had not offered a sufficient
reason for failing to amend their complaint to add claims
and parties by the deadline set by the Court. Plaintiffs
argue that this deadline was modified by subsequent
order, and that the Magistrate Judge erred under Sixth
Circuit law by not allowing the amendments in the
interests of justice. The defendants respond that [the]
Magistrate Judge correctly concluded that, under the
circumstances of this case, amendment on the eve of the
Had the district court made an explicit finding of prejudice,
very little would need to be said in affirming the denial of
leave in this case. The district court’s order, although brief,
touched on undue delay and prejudice, explaining:
Bridgeport maintains the district court abused its discretion
by denying leave to amend on the grounds of unjustified
delay and in the absence of a finding of prejudice to the
defendant. It is true that, ordinarily, delay alone will not
justify the denial of leave to amend the complaint. Morse v.
McWhorter, 290 F.3d 795, 800 (6th Cir. 2002). Delay,
however, will become “undue” at some point, “placing an
unwarranted burden on the court,” or “‘prejudicial,’ placing
an unfair burden on the opposing party.” Morse, 290 F.3d at
800 (citing Adams v. Gould Inc., 739 F.2d 858, 863 (3d Cir.
1984)).
B. Analysis
for completing depositions had been extended to June 14,
2002. But, the deadline for filing dispositive motions
continued to be June 21, 2002. No Limit Films filed its
motion for summary judgment on that date. On August 14,
2002, the district court entered its order overruling plaintiffs’
objections, denying plaintiffs’ motion to amend, and denying
plaintiffs’ further motion to certify the issue for appeal.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
Bridgeport, Southfield Music, and Nine Records appeal
from the decision to award $41,813.30 in attorney fees and
costs to No Limit Films as a prevailing party under 17 U.S.C.
IV.
Defendant clearly argued that it would be unfairly
prejudiced if required to respond to a distinct new claim of
infringement with only a few weeks of discovery remaining.
Plaintiffs focus on the magistrate judge’s mistaken reliance on
the April 1 deadline for seeking leave to amend. Nonetheless,
as defendant argues, plaintiffs’ motion was not timely because
the district court required that any amendments be sought in
sufficient time that discovery could be completed before May
21. Also, the record reflects that although there were
extensions of discovery beyond that date, extensions were
only granted to allow the completion of certain depositions
and did not affect the deadline for filing dispositive motions.
We find no abuse of discretion in the district court’s denial of
leave to raise new claims based on a different song, by a
different artist, in the movie.
To the extent that this brief discussion leaves doubt that a
finding of prejudice was made, we may sustain a denial of
leave to amend on grounds that are apparent from the record.
Morse, 290 F.3d at 801.
After careful consideration of the entire record, the
Court adopts and approves the Magistrate Judge’s Report
and Recommendation. The plaintiffs’ objections are
overruled. The interest of justice in this case requires
that plaintiffs show good cause why the Court should
allow amendment of their complaint to add a claim and
parties after the Court’s deadline for such amendments,
which the plaintiffs have failed to do.
close of discovery would be prejudicial to defendants and
unduly delay trial.
24
Page 79
25
Section 505 provides that: “In any civil action under this title, the
court in its discretion may allow the recovery of full costs by or against
any party other than the United States or an officer thereof. Except as
otherwise provided by this title, the court may also aw ard a reasonable
attorne y’s fee to the prevailing pa rty as part of the co sts.”
17
The discretion to award attorney fees under § 505 is to be
exercised in an evenhanded manner with respect to prevailing
plaintiffs and prevailing defendants, and in a manner
consistent with the primary purposes of the Copyright Act.
Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). “‘There is no
precise rule or formula for making these determinations,’ but
instead equitable discretion should be exercised ‘in light of
the considerations we have identified.’” Id. at 534 (quoting
A court may, in its discretion, award costs, including
reasonable attorney fees, to the prevailing party in a civil suit
under the Copyright Act. 17 U.S.C. § 505.17 Our review is
for abuse of discretion. Coles v. Wonder, 283 F.3d 798, 804
(6th Cir. 2002) (affirming award to prevailing defendant);
Murray Hill Publ’ns, Inc. v. ABC Communications, Inc., 264
F.3d 622, 639 (6th Cir. 2001) (reversing award to prevailing
defendant). A district court abuses its discretion when it
relies on clearly erroneous factual findings, improperly
applies the law, or uses an erroneous legal standard. AdcockLadd v. Sec’y of Treasury, 227 F.3d 343, 349 (6th Cir. 2000).
§ 505. Apportioning the award between these plaintiffs, the
district court ordered that Southfield and Nine Records be
held liable, jointly and severally, for 10% of the total. The
district court also found that no award was warranted against
Westbound Records because its claims were objectively
reasonable and based on a developing area of copyright law.
As a result, the amount of fees reasonably incurred in defense
of this action were reduced by 50%. Plaintiffs do not
challenge the calculation of the fees or the inclusion of any
particular item.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
Tho se considerations include: the primary objective of the
Copyright Act to “encourage the production of original literary, artistic,
and musical expression for the good of the public”; the fact that
defendants as well as p laintiffs may ho ld copyrights and run the “gamut”
from large corporations to “starving artists”; the need to encourage
“defen dants who seek to advance a variety of meritorious copyright
defenses . . . to litigate them to the same extent that p laintiffs are
encouraged to litigate meritorious claims of infringement”; and the fact
that “a successful defense of a copyright infringement action may further
the policies of the Copyright Act every bit as much as a successful
prosecution of an infringement claim by the holder of a copyright.” Id.
at 524 and 527.
18
Southfield and Nine Records, neither of which had an
interest in “Get Off” or “100 Miles,” argue that defendant did
not truly prevail against them because they were
“inadvertently” left in the amended complaint and they did
not oppose dismissal in this case. They did not voluntarily
dismiss their claims, however, as it was only in response to
defendant’s dispositive motions that they acquiesced in
dismissal. Moreover, the inclusion of Southfield and Nine
Records in the amended complaint in this case was less
“inadvertent” than a reflection of the plaintiffs’ failure to
discriminate between defendants and claims. No Limit Films
is a prevailing defendant as judgment was entered in its favor
Hensley v. Eckerhart, 461 U.S. 424, 436-37 (1983)).18
Several nonexclusive factors may be considered as long as
they are “faithful to the purposes of the Copyright Act and are
applied to prevailing plaintiffs and defendants in an
evenhanded manner.” Id. at 534 n.19. Those nonexclusive
factors include:
“frivolousness, motivation, objective
unreasonableness (both in the factual and in the legal
components of the case) and the need in particular
circumstances to advance considerations of compensation and
deterrence.” Id. (quoting Lieb v. Topstone Indus., Inc., 788
F.2d 151, 156 (3d Cir. 1986)).
26
Page 80
27
Plaintiffs argue that Southfield had a significant interest in “How
Ya Do Dat” and joined Bridgeport in seeking leave to file the second
amended complaint to assert infringement claims. That assertion does not
affect the pre vailing party status of defendant or undermine the finding
that the claims which were asserted were objectively unreasonable.
19
The initial complaint in this action is so voluminous that,
with exhibits, it is almost 1,000 pages long and takes
days to read in its entirety. It is replete with diatribes
against the music industry, but lacks concrete facts
directed at specific defendants. Almost all of the 800 or
so defendants in the initial complaint (representing what
appeared to be almost the entirety of entities involved in
This brings us to what the district court called the deciding
factor – the manner in which the plaintiffs litigated this
action. This consideration, plaintiffs maintain, represents
nothing more than an attempt to punish Bridgeport and deter
the plaintiffs from pursuing reasonable, nonfrivolous claims
in other cases under threat of an award of attorney fees. The
district court reasoned as follows:
on all claims.19 Concluding that Bridgeport’s claim was
objectively unreasonable, the district court indicated that the
factor weighed heavily in favor of awarding fees. The district
court, relying on its decision granting summary judgment to
defendant, specifically found Bridgeport’s claims were
objectively unreasonable because Bridgeport had no
ownership interest in “100 Miles” when the oral
synchronization license was granted and offered no evidence
to undermine the existence of a valid license. Bridgeport
argues that its claim, although unsuccessful, was not
objectively unreasonable because it was not aware No Limit
would claim it had an oral license that preceded the Release
and Agreement. As defendant responds, nothing in this
record suggests Bridgeport would not have sued No Limit
Films if it had been aware of the oral license.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
The plaintiffs’ tactics have contributed to the
multiplication of fees by all parties, including the
defendant here. This, combined with the determination
that Bridgeport’s claim was objectively unreasonable,
merits an award for fees and costs against Bridgeport.
From that inauspicious beginning, this action
proceeded in a like manner, with heavy emphasis on
discovery disputes and motion practice and little
attention paid to narrowing the issues and refining the
claims. The plaintiffs repeatedly taxed the patience of
the Court, from narrowing the margins on their
memoranda to circumvent page limits, to filing
voluminous pleadings that were long on argument but
short on concrete facts or applicable legal authority. The
plaintiffs took every opportunity to inundate the Court
with paperwork, yet many of these motions were hastily
prepared and often lacked sufficient legal or factual
support. Most notably, the plaintiffs filed a motion for
summary judgment on ownership yet failed to submit
certified copies of the registration certificates for the
copyrights they claimed to own. When this oversight
was pointed out by the Magistrate Judge as being fatal to
their summary judgment motion, the plaintiffs, instead of
providing the documentation (which could be easily
obtained from the U.S. Copyright Office), expended
enormous effort in subsequent motion papers trying to
convince the Court that the certified copies were
unnecessary [until ordered to produce them].
making urban music) were lumped together in broad
categories and descriptions of activities. The individual
counts described the infringing conduct of the defendants
by references to these broad generalizations, without any
specific information as to what any individual defendant
did to violate the Copyright Act.
28
Page 81
29
Plaintiffs charge that the defendant was equally responsible
for multiplying fees, particularly by failing to designate a
representative for deposition who had knowledge of the facts
concerning the use of “Get Off” in Hook Up. While there is
some suggestion that defendant contributed to increased
discovery costs because multiple depositions were required,
our review is deferential and the record does not demonstrate
clear error in the district court’s assessment of plaintiffs’
litigation conduct. Ultimately, we cannot say the district
court abused its discretion in this case, particularly given the
50% reduction in attorney fees to account for Westbound’s
claims. Nor should Southfield and Nine Records be relieved
While the district court did not articulate this consideration
in terms of the Fogerty factors, and was not required to since
they are nonexclusive, we see it as related to the recognized
factor of deterrence and compensation. The unique posture of
this case as one of hundreds brought in the same manner and
asserting parallel claims, makes deterrence a particularly
relevant and appropriate consideration. It is not the
deterrence of objectively reasonable good faith claims, but the
interest in motivating plaintiffs to sort through the objectively
unreasonable ones and prosecute this at best cumbersome
litigation in a way that discriminates between parties and
claims.
To award fees simply because of the length of and lack of
specificity in the original complaint or because of the number
of claims brought by the plaintiffs would strike us as punitive
and inconsistent with the purposes of the Copyright Act. See
Murray Hill, 264 F.3d at 639-40 (reversing award of attorney
fees, despite district court’s criticism of the “voluminous
burden” the case imposed, noting only that the law was
unsettled and the plaintiff presented one or more colorable
claims). The district court’s criticisms go beyond just that,
however, and are tied to conduct that complicated rather than
streamlined the issues and contributed to the multiplication of
fees for the defendant.
Nos. 02-6521; 03-5738
Nos. 02-6521; 03-5738
AFFIRMED in part, REVERSED in part, and
REMANDED for further proceedings consistent with this
opinion.
of the nominal award of fees in this case, as defendant was
required to investigate whether they had any claim and
affirmatively move for dismissal of their claims before it was
conceded that they had no interest in the copyrighted works.
30
Burger, Jim. Grokster Case Decided. June 27, 2005
Page 82
Grokster Case Decided
Supreme Court Unanimously Reaffirms Sony and Announces Standard for Active
Inducement of Copyright Infringement
June 27, 2005
Today, the United States Supreme Court issued its much‐anticipated decision in Metro‐Goldwyn‐
Mayer Studios, Inc. v. Grokster, Ltd. (“Grokster”). In a unanimous opinion written by Justice Souter, the Court reaffirmed the rule of law it announced in 1984 in Sony v. Universal1 (“Sony‐
Betamax”), but held that the Sony‐Betamax rule does not immunize the distributor of a technology from liability for secondary copyright infringement where the distributor of the technology intentionally induces direct infringement by others. The Supreme Court vacated the Ninth Circuit’s decision and remanded the case to the trial court, finding there was “substantial evidence” from which the trial court could find defendants Grokster and StreamCast, both distributors of peer‐to‐peer file sharing software, liable for inducing copyright infringement by end‐users of their software. Justice Ginsberg filed a concurring opinion, in which Chief Justice Rehnquist and Justice Kennedy joined. Justice Breyer also filed a concurring opinion, in which Justice Stevens and Justice O’Connor joined. The text of the Supreme Court’s decision (including the concurring opinions) can be found at http://a257.g.akamaitech.net/7/257/2422/27jun20051200/www.supremecourtus.gov/opinions/04p
df/04‐480.pdf. Overview The Court today reaffirmed the rule of law it announced in 1984 in Sony‐Betamax, but held that the staple‐article‐of‐commerce doctrine announced in Sony‐Betamax does not immunize a distributor of a technology from liability for secondary copyright infringement where the distributor of the technology intentionally induces direct infringement by others. The Court held that: “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.ʺ
The Court vacated the Ninth Circuit’s decision and remanded the case to the trial court, finding there was substantial evidence from which the trial court could find defendants Grokster and StreamCast, both distributors of peer‐to‐peer file sharing software, liable for inducing copyright infringement by their end‐users based on evidence of Grokster’s and StreamCast’s “words and deeds going beyond distribution,” words and deeds that the trial court could conclude For additional information concerning any of the material in the report, please contact Jim Burger at jburger@dowlohnes.com or at 202/776‐2300 or Jon Hart at jhart@dowlohnes.com or at 202/776‐2819. Policy Summit 2005 CLE Materials
Page 83
June 27, 2005
showed an intent to induce and profit from third‐party acts of copyright infringement. “declin[ing] to impute the requisite level of knowledge where the defendants made and sold equipment capable of both infringing and ‘substantial noninfringing uses.’” It concluded that Napster could be held liable for contributing to copyright infringement committed by its users because Napster actually knew of specific infringing materials traded on its system, had the ability to remove or block access to the system by suppliers of the infringing material, and nevertheless failed to block such access or to remove the material. Background The District Court Decision This case began in 2002 when plaintiff motion picture studios, music publishers and songwriters brought suit alleging that the vast majority (nearly 90%) of files exchanged through the use of peer‐to‐peer file‐sharing software offered by defendants was copyrighted material, of which most (approximately 70%) was owned by plaintiffs.2 The question presented in the case was whether Grokster and StreamCast could avail themselves of the staple article of commerce defense under the U.S. Supreme Court’s decision in Sony‐Betamax, which held that distribution of a product that was used for, or was “merely … capable” of substantial noninfringing use did not constitute secondary copyright infringement. The Ninth Circuit Decision The Ninth Circuit affirmed the district court’s partial grant of summary judgment in favor of defendants Grokster and StreamCast, concluding that, under its earlier decision in Napster I, Grokster’s and StreamCast’s distribution of the current versions of their software did not give rise to liability under either a contributory infringement or a vicarious infringement theory.4 On cross‐motions for summary judgment, the trial court held that Grokster and StreamCast could not be found secondarily liable for copyright infringement committed by users of their software because neither defendant had any actual knowledge of specific infringement or material involvement in the trading of copyrighted materials by end‐users and neither defendant had the right and ability to supervise their end‐users’ conduct. Specifically, the Ninth Circuit found that the defendants’ software was both capable of and was actually being used for noninfringing uses, including trading files of materials owned by copyright owners who permitted their work to be distributed via the software and trading public domain works not protected by copyright. Therefore, under the Supreme Court’s Sony‐Betamax decision, the defendants could avail themselves of the staple article of commerce doctrine unless they were found to have “reasonable knowledge of specific infringement” at a time when the infringement occurs. The Impact of Napster The copyright owners appealed this decision to the U.S. Court of Appeals for the Ninth Circuit. The Ninth Circuit had previously considered the circumstances under which a distributor of peer‐
to‐peer software could be held secondarily liable for copyright infringement in Napster I.3 In that regard, the court found that the plaintiffs had failed to raise sufficient genuine issues of material fact because, unlike Napster’s more centralized system, StreamCast’s decentralized network and Grokster’s quasi‐decentralized, supernode‐type network included no central index, neither defendant hosted infringing files or lists of infringing files, and the defendants did not regulate or provide access to the infringing files. In Napster I, the Ninth Circuit held that peer‐to‐
peer software distributor Napster could not avail itself of the staple article of commerce doctrine announced in Sony‐Betamax because Napster had actual, specific knowledge of direct infringement by end‐users of its software. The Ninth Circuit interpreted Sony‐Betamax as Policy Summit 2005 CLE Materials
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June 27, 2005
The court also held that defendants’ failure to modify their software to filter out specific infringing files or monitor users’ access to the system via a login and password system did not give rise to liability under a theory of contributory infringement. unable to find contributory infringement merely based on a failure to take affirmative steps to prevent infringement, if the device is otherwise capable of substantial noninfringing uses.“ Rather, the Court held, that “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.” The plaintiff must show “purposeful, culpable expression and conduct” intended to induce infringement. Accordingly, the Court emphasized, the announcement of the inducement standard, coupled with reaffirmation of the staple‐article‐of‐commerce doctrine announced in Sony‐Betamax, would not “compromise legitimate commerce or discourage innovation having a lawful promise.” The Supreme Court’s Decision Court Reaffirms Sony‐Betamax • The Court rejected the invitation of the copyright owners to revisit the holding of Sony‐
Betamax that a distributor of a product that is capable of substantial noninfringing uses is not secondarily liable for copyright infringement based merely on its distribution of the product. Instead, the Court reaffirmed its holding in Sony‐Betamax, stressing that “mere knowledge of infringing potential or of actual infringing uses would not be enough . . . to subject a distributor to liability.” Court Rejects Ninth Circuit’s “Reasonable Knowledge of Specific Infringement” Test • The Court also expressly rejected the copyright owners’ invitation to revisit the holding of Sony‐Betamax to add a “more quantified description” of the point of balance between infringing and noninfringing uses at which liability may occur. (The plaintiffs had argued that a defendant seeking to invoke the staple article of commerce doctrine in its defense should have to prove that the primary use of its technology was non‐infringing.) • The Supreme Court rejected the Ninth Circuit’s interpretation of Sony‐Betamax as requiring “reasonable knowledge of specific infringement” at a time when the infringement occurs. The Court explained that, while Sony‐
Betamax “limits imputing culpable intent as a matter of law” from the characteristics or uses of a distributed product, “nothing in Sony requires courts to ignore evidence of intent if there is such evidence.” Where evidence goes beyond a product’s characteristics or the knowledge that it may be put to infringing uses, and shows “statements or actions directed to promoting infringement,” Sony‐Betamax will not preclude liability. The Ninth Circuit erred by ignoring evidence presented in the trial court of “words and deeds going beyond distribution” that could demonstrate an intent to induce and profit from acts of copyright infringement committed by end‐users of the peer‐to‐peer file sharing software distributed by defendants Grokster and StreamCast. Court Adopts Active Inducement Test • The Court adopted an active inducement test intended to “balance the interests of protection and innovation.” Just as the Sony‐Betamax court adopted the staple‐article‐of‐commerce doctrine from patent law, the Grokster court looked to patent law as the source of its active inducement standard. The Court’s inducement test would not subject a product distributor to liability for ʺmere knowledge of infringing potential or of actual infringing usesʺ or for “ordinary acts” incident to product distribution, such as offering customers technical support or product updates. The Court also stressed that “in the absence of other evidence of intent, a court would be Policy Summit 2005 CLE Materials
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June 27, 2005
Consequences of Decision Congress to enact legislation along the lines of the Induce Act that was unsuccessfully introduced last year. • The decision that Grokster and StreamCast may be held secondarily liable for copyright violations may set the stage for a more aggressive legal assault by copyright owners on distributors of peer‐to‐peer software ‐‐ a more promising legal avenue than suing infringing users directly. • The Courtʹs reaffirmation of the Sony‐Betamax doctrine will leave inventors free to innovate without fear that they will be held secondarily liable for copyright infringement if their inventions are misused for unlawful purposes more than they are used for lawful, noninfringing purposes. • The decision may slow, but will not stop, illegal file sharing. According to a report by MAGNA Global USA media analyst Brian Wieser, the decision will likely ʺpush P2P (peer‐
to‐peer) file trading further underground toward services that are literally and figuratively beyond the reach of the law.ʺ Next Steps The case will now return to the District Court for the Central District of California for further proceedings. The Supreme Court specifically suggested that “[o]n remand, reconsideration of [plaintiff’s] motion for summary judgment will be in order.” • The Court’s adoption of a clearly defined active inducement test for secondary liability will likely relieve some of the pressure on 464 U.S. 417 (1984). The Sony‐Betamax decision is available at 1
http://caselaw.lp.findlaw.com/scripts/getcase.pl?navby=case&court=us&vol=464&page=417. 2 Metro‐Goldwyn‐Mayer Studios Inc. v. Grokster, 259 F.Supp.2d 1029, 1033 (C.D.Cal. 2003). Available at http://www.cacd.uscourts.gov/Cacd/Recent PubOp.nsf/0/b0f0403ea8d6075e88256d13005c0fdd/$FILE/CV01‐
08541SVW.pdf 3 A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). Available at http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=9th&navby=case&no=0016401&exact=1. 4 Metro‐Goldwyn‐Mayer Studios Inc. v. Grokster, 380 F.3d 1154 (9th Cir. 2004). Available at http://caselaw.lp.findlaw.com/data2/circs/9th/0355894p.pdf Policy Summit 2005 CLE Materials
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Carroll, Michael. A Primer on U.S. Intellectual Property Rights
Applicable to Music Information Retrieval Systems. (2003)
Page 87
A PRIMER ON U.S. INTELLECTUAL
PROPERTY RIGHTS APPLICABLE TO MUSIC
INFORMATION RETRIEVAL SYSTEMS
Michael W. Carroll*
Digital technology has had a significant impact on the ways in
which music information can be stored, transmitted, and used. Within
the information sciences, music information retrieval has become an
increasingly important and complex field.
This brief article is
addressed primarily to those involved in the design and implementation
of systems for storing and retrieving digital files containing musical
notation, recorded music, and relevant metadata – hereinafter referred
to as a Music Information Retrieval System (“MIRS”). In particular,
this group includes information specialists, software engineers, and the
attorneys who advise them.
Although peer-to-peer computer
applications, such as Napster’s MusicShare or the Kazaa Media
Desktop, can be conceived of as creating a MIRS, my analysis focuses on
MIRS designed or operated by an entity that takes responsibility for
choosing and controlling the music information stored in the system.
Examples would include digital music collections stored in research
libraries or on university intranets, as well as commercial systems with
similar design features.
This article describes how certain provisions of U. S. intellectual
property law apply to MIRSs and mentions relevant law in the European
Union for purposes of comparison. The focus is on U. S. copyright
law, with very brief mention of U.S. patent and trade secret law.
Additionally, the article mentions proposed legislation for database
protection, which already exists in the European Union. Enactment of
such legislation could be very significant for developers and operators
of MIRS.
I. C OPYRIGHT LAW
Copyright is important to those involved in designing and operating
MIRS for two different reasons. First, copyright law constrains the uses of the
*
Assistant Professor o f Law, Villanova University School of Law. Thanks go to the
anonymous referee for help ful comments. Any mistakes, of cou rse, remain mine. This Article is
licensed
under
a
Creative
Commons
Attribution
License.
See
http://creativecommons.org/licenses/by/2.0/.
313
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JOURNAL OF LAW, TECHNOLOGY & POLICY
[Vol. 2003
data in MIRS because the law grants creators of data and their assigns exclusive
rights in the music information. 1 Designers, and users of MIRS need
permission from the owners of the rights in the music information for many
uses.2 Second, those who build MIRS receive rights from copyright law in the
original selection and arrangement of musical information stored in the MIRS,
as well as in software designed for use in MIRS. For these reasons, the
discussion of copyright covers both rights in musical information and rights in
MIRS.
A. What is Copyrightable?
The U. S. Constitution permits Congress to grant to “authors” exclusive
rights to their respective “writings” for “limited times.”3 As interpreted by the
Supreme Court, this provision gives Congress considerable flexibility in
determining the scope and duration of copyright protection. 4
1. Originality
A work must be “original,” meaning that the work must have been
independently created by the author and it must reflect a minimal spark of
creativity. 5 In the field of music information, two different copyrightable
works are recognized.
First, the underlying composition, called the “musical work,” is
comprised of the original expression in the music and lyrics.6 Almost all
musical compositions satisfy the originality requirement. Even compositions
that are highly derivative of prior works usually contain some original
material.7 Copyright protection is limited to the original material added by the
composer or publisher.8
Second, since 1972, federal law has recognized that original expression
1. 17 U.S.C. § 106 (2000); Kelly v. Arriba Soft Co rp., 336 F.3d 811, 817 (9th Cir. 2003 )
(“An owner of a copy right has the exclusive right to reproduce, distribute, and publicly display
copies of the wo rk.”).
2. See, e.g., A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1014, 1022, 1024 (9th Cir.
2001 ) (holding users directly liable and Napster contributo rily and vicariously liable fo r the
infringement o f copyrights in both musical works and sound recordings).
3. U.S. CONST. art. I, § 8, cl. 8.
4. See, e.g., Eld red v. Ashcro ft, 537 U.S. 186, 200-04 (2003 ) (retrospective extension o f
copyright does not violate the “limited Times” restriction); Goldstein v. Califo rnia, 412 U.S. 546,
561-62 (1973 ) (stating Cong ress has broad discretion to identify protectible “writings”).
5. Feist Publ’ns, Inc. v. Ru ral Tel. Serv. Co., 499 U.S. 340, 345 (1991 ).
6. See 17 U.S.C. § 102(a)(2 ) (2000 ).
7. Cf. Newton v. Diamond, 349 F.3d 591, 594 (9th Cir. 2003) (assuming that a three-note
sequence was a protectable musical work ).
8. See Entm’t Research Group v. Genesis Creative Group, 122 F.3d 1211, 1218 -19 (9th Cir.
1997 ) (“[C]opy right protection affo rded to derivative works is mo re limited than it is fo r o riginal
works of authorship. Specifically, Section 103 (b ) provides that the copyright in a derivative wo rk
‘extends only to the material contributed by the author o f such work, as distinguished from the
preexisting material employed in the work.”) (quoting 17 U.S.C. § 103 (b) (1994 )); see also Russell
v. Price, 612 F.2d 1123, 1128 (9th Cir. 1979).
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also goes into the recorded version of a musical work.9 The creative decisions
made by the performers, sound engineers, and producers collectively are
captured in the “sound recording” of the musical works. 10 Thus, even if a
MIRS comprises only recorded renditions of musical works whose copyright
has expired – say, a collection of Mozart’s works – the orchestra or its
recording company likely owns the copyright in the sound recording of those
musical works that are in the public domain.
It should not be surprising that most music information in MIRS will be
original. However, the generous originality standard also means that the MIRS
itself may constitute one or more original works of authorship. The selection
and arrangement of information in a compilation or collection may be
sufficiently original to be copyrightable.11 The key is whether the judgments
made by the person(s) selecting and arranging the data require the exercise of
sufficient discretion to make the selection or arrangement “original.”12 In Feist
Publications, Inc. v. Rural Telephone Service Company, which announced the
originality requirement, the Court held that a white pages telephone directory
could not be copyrighted.13 The data—the telephone numbers and addresses—
were “facts” which were not original because they had no “author.”14 Also, the
selection and arrangement of the facts did not meet the originality requirement
because the decision to alphabetize all the numbers and addresses in a certain
geographic area did not reflect the “minimal spark” of creativity needed.15
The selection and arrangement of music information stored in a MIRS can
be sufficiently original to satisfy copyright law’s requirement. If the other
copyrightability requirements are satisfied, the creator of the MIRS may have a
right to claim infringement against anyone who copies the MIRS database
without authorization. Adding a layer of complexity, original expression in a
MIRS may include the selection and arrangement of the metadata describing the
music information. For example, if the MIRS designer makes sufficiently
original choices about how to classify the music information or how to
describe the music information, the metadata may also constitute a
copyrightable work.16
9. See 17 U.S.C. § 102(a)(2 ), (7 ) (2000 ); Agee v. Paramount Communications, Inc., 59 F.3d
317, 322 (2d Cir. 1995) (discussing the legislative histo ry o f the sound recording amendment).
10 . E.g., Sys. XIX, Inc. v. Parker, 30 F. Supp. 2d 1225, 1228 (N.D. Cal. 1998 ) (citing
legislative history fo r the proposition that authorship of a sound record ing is likely to include the
creative contributions o f perfo rmers and record producers).
11 . See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991 ).
12 . See Id. at 360.
13 . Id. at 361.
14 . Id. at 361 -62.
15 . Id. at 362 -63.
16 . Copyright protection would not, however, be app rop riate is the metadata is not sufficiently
original. For example, metadata that merely identifies the names o f composers o r perfo rmers, dates
of composition, publication, and perfo rmance would probably not be sufficiently original, however
such data were arranged. But if the metadata also included info rmation about musical sources that
inspired a particular work o r info rmation about other recordings on which perfo rmers had played,
then the metadata would more likely be su fficiently original to be copy rightable. An example of a
complex metadatabase describing music info rmation is the community-compilation, MusicBrainz, at
http://www.musicbrainz.o rg (last visited Mar. 5, 2004).
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[Vol. 2003
To the extent that software is used in a MIRS, software is protectable as a
“literary work.”17 So long as the code reflects the exercise of editorial
discretion, it is protectable. As is discussed below, the scope of protection is
limited.18
2. Fixation
A work must also be “fixed” in any medium permitting the work to be
“perceived, reproduced, or otherwise communicated for a period of more than a
transitory duration.”19 An original musical composition is not copyrighted
until it is recorded in some way—in musical notation or in a recorded
performance. Sound recordings are by definition recorded and thus are
copyrighted so long as the decisions going into the recording reflect the
requisite originality. 20 Finally, the structure and arrangement of a MIRS may
be fixed any time that it is written down or implemented. Fixation of the work
is a momentous occasion for works created after January 1, 1978, because
exclusive rights under copyright shower down upon the creator at the moment
of fixation. 21 Previously, rights in published works attached only when
registered and published with notice.22
B. What Rights Does Copyright Grant?
What are the rights that attach to a creator at the moment the work is
fixed? With regard to musical information and MIRS, it depends. The owner
of any copyright has: (1) the right “to reproduce the copyrighted work in copies
or phonorecords;”23 (2) the right “to prepare derivative works based upon the
copyrighted work;”24 and (3) the 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.”25 In addition the owners of musical and literary
works—which would include software and, potentially, a MIRS data
structure—have (4) the right to perform the copyrighted work publicly 26 and (5)
17 . Dun & Bradstreet Software Servs. v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir.
2002 ) (“Computer prog rams are entitled to copyright protection as ‘literary works.’”); Compute r
Mgmt. Assistance Co. v. Robert F. DeCastro, Inc., 220 F.3d 396, 400 (5th Cir. 2000 ) (“Computer
prog rams are entitled to copyright protection.”); see also Vault Corp. v. Quaid Software Ltd., 84 7
F.2d 255, 259 (5th Cir. 1988) (noting that the Copyright Act was amended in 1976 “to include
computer p rog rams in the definition of protectable literary works”).
18 . A caveat for MIRS p rotection is that when functional considerations essentially dictate the
design of either the data structure o r the software, the work will not be deemed original. Functional
considerations can include the decision to adopt an “industry standard” structure. Cf. Kregos v.
Associated Press, 937 F.2d 700, 707 (2d Cir. 1991) (explaining and applying merger doctrine).
19 . 17 U.S.C. §§ 101, 102 (a) (2000 ).
20 . See, e.g., Staggers v. Real Authentic Sound, 77 F. Supp. 2d 57, 61 n.6 (D.D.C. 1999).
21 . See 17 U.S.C. § 301(a) (2000 ).
22 . See Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663, 674 n.20
(7th Cir. 1986); see also H.R. R EP . NO. 94-1476 (1976 ).
23 . 17 U.S.C. § 106 (1 ) (2000 ).
24 . Id. § 106(2 ).
25 . Id. § 106(3 ).
26 . Id. § 106(4 ).
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317
the right to display the copyrighted work publicly. 27 Sound recordings have a
more limited performance right, which is (6) the right to perform the
copyrighted work publicly by means of a digital audio transmission. 28 The
rights in musical information most relevant to the use of a MIRS are the rights
of reproduction, distribution, and performance.
1. Reproduction
The reproduction right covers both exact duplicates of a work and works
that are “substantially similar” to the copyrighted work when it can be shown
that the alleged copyist had access to the copyrighted work.29 Digital
technology has broadened the scope of the reproduction right because computers
necessarily make exact duplicates of data when processing or transmitting it.
The courts have held that even a temporary copy of a copyrighted work stored
in a computer’s random access memory (“RAM”) exercises the right to
reproduce the work.30
Consequently, the operator of a MIRS with digital data must have
permission not only to store a copy of the musical work and/or sound recording
on a hard disk or other similar medium, but also permission to make the copies
that a user will make to view the musical information while stored in RAM
and any copies the user will receive when accessing the MIRS through a
computer network.
Reproductions of sound recordings necessarily involve the reproduction of
the underlying musical work. Thus, in many cases, permission to reproduce
both the musical work and the sound recording must be obtained.
A more vexing question arises with regard to the scope of the reproduction
right with respect to streaming audio files. If a MIRS permits users to stream
audio files without receiving a permanent copy, what rights must the operator
of the MIRS have? Audio streaming involves the making of temporary buffer
copies during transmission. It remains uncertain whether these copies are
sufficiently permanent to implicate the reproduction right. 31 The European
27 . Id. § 106(5 ).
28 . Id. § 106(6 ).
29 . See, e.g., Repp v. Webber, 132 F.3d 882, 892 (2d Cir. 1997 ) (stating that the song “Till
You” did not infringe copyright the fo r the song “Close Every Door”); Benson v. Coca-Cola Co.,
795 F.2d 973, 975 (11th Cir. 1986) (stating that the song “I’d Like to Buy the Wo rld a Coke” was
an independent creation and did not infringe on the copyright of the song “Don’t Cha Know”); Selle
v. Gibb, 741 F.2d 896, 905 (7th Cir. 1984) (stating that the plaintiff failed to show that the musical
group the Bee Gees had access to plaintiff’s song “Let It End” befo re they composed “How Deep Is
Your Love”); Tisi v. Patrick, 97 F. Supp. 2d 539, 548 (S.D.N.Y. 2000) (stating that the compose r
failed to show both that the perfo rmer had access to “Sell Your Soul” and the necessary “strikin g
similarity” between the songs).
30 . See, e.g., MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 518 (9th Cir. 1993). See
generally Joseph P. Liu, Owning Digital Copies: Copyright Law and the Incidents of Copy
Ownership, 42 WM. & MARY L. R EV. 1245 (2001) (arguing that ownership o f physical copy is a
hidden presumption in copy right law that should be updated with respect to digital copies).
31 . See R. Anthony Reese, Copyright and Internet Music Transmissions: Existing Law, Major
Controversies, Possible Solutions, 55 U. MIAMI L. R EV . 237, 252 (2001 ). An agreement between the
music publishers and the recording industry treats these ephemeral copies as “copies” requiring a
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Union has made explicit that temporary buffer copies do not implicate the right
of reproduction. 32
2. Distribution
The distribution right applies to the distribution of copies to the public.
In the off-line world, the distribution right would be the basis for a recording
company’s lawsuit against the sellers of unauthorized recordings. In the digital
context, one could argue that the distribution right does not apply because
computers do not distribute a single copy from point A to point B; instead,
they generate new copies.33 Thus far, the courts have not adopted this
interpretation and have also given the distribution right a broad reading. Some
courts, including the appeals court in the Napster case, have held that merely
exposing an MP3 file to the Internet is a public distribution of the file.34
Consequently, in any license agreement for the musical information stored in a
MIRS, the operator will need permission to distribute the copyrighted works—
the musical works and the sound recordings (where applicable)—if the system
permits users to download copies.
The harder case would involve systems that permit streaming-only access
to recorded music. If a system operator would need a license to reproduce the
musical information because of the buffer and cache copies made during the
streaming process, then the system operator probably also needs a license to
publicly distribute those evanescent copies.
3. Public Performance
With regard to musical information, two different performance rights
apply. For underlying musical works, the copyright owner has the exclusive
right to authorize any public performance, subject to the fair use privilege and
certain statutory exceptions. 35 The right of public performance applies
whenever the copyrighted work can be listened to or watched by members of
the public at large, such as during a live performance or recorded performance
made available by broadcast or digital streaming. 36 Copyright owners in sound
recordings, by contrast, have an exclusive right only in public performances
license. Id.
32 . See I NTERNATIONAL CONFEDERATION OF M USIC PUBLISHERS , SECOND WIPO I NTERNATIONAL
CONFERENCE ON E LECTRONIC COMMERCE AND I NTELLECTUAL PROPERTY (2001), available at
http://ecommerce.wipo.int/meetings/2001/con ference/presentations/pdf/vacher.pd f.
33 . See, e.g., Michael W. Carroll, Disruptive Technology and Common Law Lawmaking: A Brief
Analysis of A&M Records, Inc. v. Napster, Inc., 9 VILL. S PORTS & E NT . L.J. 5, 16 n.52 (2002 ).
34 . A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1014 (9th Cir. 2001).
35 . See 17 U.S.C. § 106(4 ) (2000).
36 . Id. at § 101; Home Box Office, Inc. v. Co rinth Motel, Inc., 647 F. Supp. 1186, 1190 (N.D.
Miss. 1986 ) (“Public perfo rmance [of copyrighted material] occurs when a work is transmitted with
any device to the public for reception in separate places.”); Entm’t & Sports Prog ramming Network ,
Inc. v. Edinburg Cmty. Hotel, Inc., 735 F. Supp. 1334, 1340 (S.D. Tex. 1986) (“A public
perfo rmance [of a copyrighted work] also occurs when a work is transmitted with any device to the
public for reception in separate places.”).
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done by “digital audio transmission.”37 Digital streaming of an audio file
would be a digital audio transmission of a sound recording. One practical effect
of the distinct performance rights is to treat broadcasters and webcasters
differently—broadcasters need a license only from the composers or publishers
whereas webcasters need a license from both the composers or publishers and
from the sound recording copyright owners. The operators of a MIRS that
permits digital audio streaming of copyrighted musical works or sound
recordings similarly would need licenses from both the composers’
representatives and the sound recording owners’ representatives.
Adding another layer of complexity and uncertainty is the alternative to
applying reproduction and distribution rights to streaming-only audio. In that
case, the question is whether the unambiguous public performance also is a
reproduction and distribution. With respect to MIRS that permit downloading
of audio files, which unambiguously exercise at least the right of reproduction,
arguments have been made that public performance rights also are exercised
because the file often can be listened to as the download takes place.38
4. Public Display
The owner of the copyright in a musical work also has the exclusive right
to publicly display the work.39 To the author’s knowledge, this right has not
been the subject of much dispute or attention because musical works
traditionally have been copied and distributed in sheet music form or have been
performed. The Internet and other digital networks may increase attention on
the display right because posting a musical score to an online location from
which it can be viewed by the general public almost certainly would be
considered a public display of the work.40 Indeed, because a musical work is
defined to include lyrics, the many Web sites that publish lyrics are likely
engaged in the public display of those musical works. Operators of MIRS that
permit online display of music and/or lyrics should obtain permission to
publicly display the musical work.
5. Prepare Derivative Works
“A ‘derivative work’ is work based upon one or more preexisting works”
that consists of elaborations or modifications that, taken as whole, are
themselves original works of authorship.41 That is, a derivative work has two
characteristics: (1) it incorporates a pre-existing copyrighted work; and (2) it
37 . 17 U.S.C. §§ 101, 106 (6 ), 114 (j)(5 ) (2000 )
38 . See, e.g., Samval Fifer, Changing Horses in Mid-Stream: The Copyright Office’s New Rule
Makes Broadcasters Pay for “Streaming” Their Signals Over the Internet, 3 VAND. J. E NT . L. & PRAC.
182 (2001 ).
39 . See 17 U.S.C. § 106(5 ) (2000).
40 . Cf. Kelly v. Arriba Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003) (parties conceded that
posting photog raphs to an online location implicated both the right o f reproduction and right o f
display).
41 . 17 U.S.C. §§ 101, 103, 106(2 ) (2000 ).
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has sufficiently original modifications to allow for recognition of a new
copyrighted work.42 With regard to music information, some easy examples are
sound recordings (the editorial decisions involved in rendering the musical work
create a new work), musical arrangements (same), and parodies (e.g., the oeuvre
of Weird Al Yankovic is comprised of derivative works). Within the music
industry, the right to make derivative works is implicated most often by new
compositions based on pre-existing compositions (including samples of prior
recordings), sound recordings of pre-existing compositions, and use of recorded
music in audiovisual works, such as movies, television shows, and
advertisements. 43
For those who build MIRS, more subtle forms of the derivative works
right may be implicated. If a MIRS designer must make discretionary
decisions in choosing how to translate music information in analog form into
digital form, the MIRS designer may have a “thin” copyright in the digital
version. The same may be said for the decisions involved in translating a work
from one digital format to another. The digital work would be a derivative
work comprised of the underlying copyrighted work and the new work
embodied in the digital object. This “thin” copyrighted work would be similar
to the copyright claimed by those who reformat movies to be shown on
television. 44 The copyright is “thin” because it is limited to that particular
form of digitization and can be asserted against only those who copy that
particular form of digitization. 45 This right could have economic importance
if, for example, a competitor copied digital files of public domain sound
recordings from a MIRS. The only potential copyright claimant in such a case
would be the MIRS designer. To create such a derivative work, however, the
decisions involved in translating the copyrighted work would have to be more
involved than the mere choice to encode a file in .mp3 format rather than .wav
format.
The derivative works right also could be implicated if a MIRS were
designed so as to permit users to edit or rearrange musical works or sound
recordings. Were that possible, the user could be directly liable for exercising
the derivative works right without authorization. The MIRS designer or
42 . See Stewart v. Abend, 495 U.S. 207, 223 (1990 ) (noting that “aspects of a derivative work
added by the derivative author are that autho r’s property, but the element drawn from the p reexisting wo rk remains on grant fro m the owner of the p re-existing work”); see also Russell v. Price,
612 F.2d 1123, 1128 (9th Cir. 1979 ).
43 . See, e.g., Broadcast Music, Inc. v. Columbia Broad. Sys., Inc., 441 U.S. 1, 10, 24 (1979 )
(holding that the issuance by ASCAP and BMI o f blanket licenses fo r television netwo rks to use
copyrighted musical works is not per se unlawful under antitrust laws); Newton v. Diamond, 349
F.3d 591, 597 -98 (9th Cir. 2003) (The Beastie Boys did not exceed the scope of their license to
“sample” plaintiff’s composition.); Carte v Evans, 27 F. 861, 864 -65 (C.C.D. Mass. 1886) (Piano fo rte arrangement o f an opera orchestral score is an original musical composition and subject to
copyright.).
44 . See, e.g., Maljack Prods., Inc. v. UAV Corp., 964 F. Supp. 1416, 1426 -28 (C.D. Cal. 1997 )
(finding sufficient originality in pan-and-scan refo rmatting of public domain film for television to
create copyrighted work in edited version).
45 . See generally Satava v. Lowry, 323 F.3d 805, 812 (9th Cir. 2003) (“[A] thin copyright . . .
protects against only virtually identical copying.”).
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operator, however, could also be held liable under theories of third-party
liability for copyright infringement discussed immediately below.
C. Theories of Third Party Liability
Those who build or operate MIRS also have to be aware of theories of
third party liability that could be asserted against them if their systems or
software enable others to infringe copyrights. Music publishers and record
labels have asserted these theories against Napster and other developers of peerto-peer networking software.46
1. Contributory Infringement
To contributorily infringe a copyright, one must (1) have actual or
constructive knowledge of the direct infringer’s infringing conduct; and (2)
substantially participate in, or materially contribute to, the infringing
conduct.47 For builders or operators of MIRS, the second requirement likely
will be met when the MIRS is used to accomplish the infringement.
The harder question will be under what conditions the manufacturer or
operator of a MIRS knows, or should know, that users are engaged in
infringing conduct? Evidence of actual knowledge would include discovering
infringing conduct and then doing nothing to stop it. 48 Constructive
knowledge could be shown when a reasonable person is aware of facts causing
the person to inquire further as to whether infringement was occurring in
connection with the MIRS, or when the facts would lead a reasonable person to
infer in specific instances that the MIRS was being used for infringement of
copyrights.
One defense available to the manufacturer of a MIRS that can respond to
an allegation of infringing conduct is the so-called Sony defense, announced by
the Supreme Court in Sony Corporation v. Universal City Studios, Inc.49
There, the Court did not impose contributory liability on the manufacturers of
VCRs for infringing copies of television shows made by VCR owners.50 This
defense articulates the common-sense reasoning that we do not hold the
manufacturers of photocopiers liable when users make infringing copies of
books or sheet music, even though the manufacturers know that this is one
likely use of the technology.51 Under the Sony defense, the manufacturer of a
technology that can be put to infringing use cannot be held to have
constructive knowledge of infringement and, therefore, cannot be held liable for
46 . See, e.g., In re Aimster Copy right Litig., 334 F.3d 643 (7th Cir. 2003) (upholding a
preliminary injunction against the distribution of Aimster software and the operation of the Aimste r
system).
47 . See, e.g., A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1020 (9th Cir. 2001).
48 . See id. at 1022 n.6 (stating that Napster executives had actual knowledge of users’
infringing conduct).
49 . 464 U.S. 417 (1984 ).
50 . Id.
51 . See In re Aimster, 334 F.3d at 650-51.
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contributory infringement as long as the technology is capable of “substantial
non-infringing uses.”52
2. Vicarious Liability for Copyright Infringement
Vicarious liability will apply whenever (1) one has control or supervisory
power over the direct infringer’s infringing conduct and (2) one receives a direct
financial benefit from the infringing conduct.53 Recent cases have expanded the
scope of this kind of liability. In the Napster case, the court held that Napster
had control over its users because it could refuse them access to the Napster
server and, pursuant to the Terms of Service Agreements entered into with
users, could terminate access if infringing conduct was discovered.54 Other
courts have required a greater showing of actual control over the infringing
conduct,55 but operators of MIRS should be aware that by merely asserting
contractual rights to terminate access to the MIRS for infringing conduct may
be sufficient to satisfy the control requirement.56
Similarly, a direct financial benefit is not limited to a share of the
infringer’s profits. The Napster court held that Napster received a direct
financial benefit from infringing file trading because users’ ability to obtain
infringing audio files drew them to the service. Additionally, Napster could
potentially receive a financial benefit from having attracted a larger user base to
the service.57
D. How Long Does Copyright Last?
Use of most MIRS will involve the exercise of some of the rights of
copyright owners. Therefore, the operator of a MIRS will need a license to
exercise those rights unless the music information is in the public domain.
Determining whether music information contained in a MIRS is under
copyright protection will not be an easy task.58 The only hard and fast rule is
that musical works—that is, musical scores—are in the public domain in the
United States if they were published prior to 1923. 59
52 . Napster, 239 F.3d at 1020-22.
53 . Id. at 1022.
54 . Id. at 1023 -24.
55 . See, e.g., Sony Corp., 464 U.S. at 437 n.18.
56 . For an extended discussion and criticism of the expansive view o f control, see Carroll,
supra note 33, at 25-29.
57 . Napster, 239 F.3d at 1023.
58 . See Lolly Gasaway, When U.S. Works Pass Into the Public Domain, at
http://www.unc.edu/~unclng/public-d.htm (last updated Nov. 14, 2003 ) (showing a helpful chart fo r
determining when works pass into the public domain).
59 . See U.S. COPYRIGHT OFFICE, E XTEN SION OF COPYRIGHT T ERMS (2003), available at
http://www.copy right.gov/circs/circ15t.pd f (“Works published befo re January 1, 1923 have fallen
into the public domain . . . .”). If the data in a MIRS consist solely o f digital copies of public domain
sheet music, the copy right status of the musical works still must be investigated. Some publishers o f
public domain compositions claim they have added original material in the arrangement or in the way
that they typeset or otherwise present the composition. See Life Music, Inc. v. Broadcast Music, Inc.,
31 F.R.D. 3, 19 (S.D.N.Y. 1962 ). In many cases these are dubious claims.
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Regrettably, the same cannot be said for early recorded music. Sound
recordings were not protected by federal copyright until 1972. 60 These
recordings cannot truly be considered to be in the public domain, however,
because a number of states have anti-bootlegging laws that apply to the
unauthorized sale or distribution of sound recordings. These laws are not
consistent. Some limit the claim to those who seek to profit from the sale or
rental of sound recordings, others provide express exemptions for non-profit
institutions, and some place time limits on protection. 61 Federal law will not
preempt the effect of these state laws until 2067.62 Thus, even when the
underlying musical work—say a Scott Joplin rag—has entered the public
domain, early recordings of that work have not. This is in stark contrast to the
approach taken in the European Union63—which generally has a more
protective copyright regime—where sound recordings enter the public domain
50 years after publication. 64 The effect of this provision is becoming more
pronounced as popular music from the 1950s begins to enter the public domain
in Europe.65
For post-1923 musical works and post-1972 sound recordings, measuring
the length of copyright requires knowing whether the author is a known
individual or the creator’s employer, whether the work was created before or
after January 1, 1978, and if created before 1978, whether the work was
published.66 Works created after 1978 are under copyright for the life of the
author plus 70 years. If the work was created as a “work made for hire,” the
term is 95 years from the date of publication or 120 years from the date of
creation if not published.
Prior to 1978, copyright lasted for one term of twenty-eight years, which
could be renewed for another twenty-eight years. A work published prior to
60 . See, e.g., Robert W. Clarida, Pre-1972 Sound Recordings, L EGAL LANG UAGE SERV., at
http://www.legallanguage.com/lawarticles/Clarida007.html (Dec. 2000) (d escribing copyright issues
su rrounding the ownership, du ration, and restoration o f sound recordings first fixed before
February 15, 1972).
61 . See, e.g., CAL. PENAL CODE § 653h(a) (1999 ) (requiring that use o f early recorded sounds
must be fo r p ro fit to be actionable.); FLA . STAT. ch. 540.11 (6 )(c) (2002 ) (p roviding exp ress
exemption fo r non -p ro fit institutions); COLO. R EV . STAT. § 18-4 -601 (1999 ) (Rights to pre-197 2
sound recordings are defined in terms o f a “common law copyright” which expires after fifty -six
years. So, as of January 1, 2004, sound recordings made on or before December 31, 1947 were
recognized by the State of Colorado as public domain.).
62 . See 17 U.S.C. § 301(c) (2000 ).
63 . Council Decision 2000/278, art. 1, 2000 O.J. (L89 ) 2 (adopting treaty by Eu ropean
Community ).
64 . See World Intellectual Property Organization: Perfo rmances and Phonograms Treaty, Dec.
20, 1997, art. 17, 36 I.L.M. 76.
65 . As of February 2004, Congress was considering proposed responses to this discrepancy in
copyright protection, to protect American copyright owners fro m the European public domain. See
Piracy Deterrence and Education Act of 2003: Hearing on H.R. 2517 Before the Subcommittee on
Courts, the Internet, and Intellectual Property of the Committee on the Judiciary, 108th Cong. (2003 )
(p roposing to amend federal copyright law to prohibit importation of sound recordings which have
entered the public domain under the European standard, but which are still under copyright in the
United States).
66 . See, e.g., Richard D. Rose, Connecting the Dots: Navigating the Laws and Licensing
Requirements of the Internet Music Revolution, 42 IDEA 313, 327 (2002) (providing a helpful chart
of copy right status of sound recordings by date of fixation and publication).
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1978 will be in the public domain if it was published without a copyright
notice. Alternatively, if a work published before 1978 did not have its
copyright renewed, it is in the public domain. Otherwise, for works still under
copyright on January 1, 1978, the term of copyright is effectively ninety-five
years from the date the copyright was secured.
E. Ownership and Transfer of Copyright
Most of the music information in a MIRS will be copyrighted and almost
all MIRS will exercise at least some of the copyright owners’ rights.
Consequently, creators and operators of MIRS will likely need to seek
permission to use the copyrighted music information. From whom does one
seek permission?
As a practical matter, in most cases, licenses should be sought from the
music publisher for musical works and from the recording company for sound
recordings. If a MIRS includes the ability to stream audio works to the public,
performance licenses will be required.67 For the musical works, these licenses
can be obtained from the following performing rights organizations: The
American Society of Composers, Authors and Publishers (ASCAP), 68
Broadcast Music, Inc. (BMI),69 and SESAC, Inc. (formerly the Society of
European State Authors and Composers).70 Licenses for sound recordings can
currently be obtained from SoundExchange.71 However, the U.S. Copyright
Office has received petitions to allow other performing rights organizations to
also play this role.72
As a background matter, copyrights vest initially with the author(s). 73
For musical works, this will usually be the composer(s). Sound recordings
often have multiple authors, so tracing the rights can be quite complex. Under
the “work made for hire” doctrine, the employer will be treated as the author
when the work was created by an employee acting within the scope of
employment, or by an independent contractor when there has been a written
agreement and the work falls within one of nine classes.74
Copyrights are transferable by contract.75 Under standard business
practices within the music industry, composers transfer the rights in their
compositions to the publisher, and those involved in the creation of sound
67 .
68 .
See, e.g., Reese, supra note 31, at 244-45.
T HE AMERICAN SOCIETY OF COMPOSERS , AUTHORS AND PUBLISHERS , ASCAP I NTEREST
L ICENSE A GREEMENT, at http://www.ascap.com/weblicense (last visited Mar. 3, 2004).
69 . BMI, DIGITAL L ICENSIN G C ENTER , at https://dlc.bmi.com/dlcmenu.asp (last visited Mar. 3,
2004 ).
70 . SESAC, L ICENSING , at http://www.sesac.com/licensing/licensing1.asp (last visited Mar. 3,
2004 ).
71 . See SoundExchange, at http://soundexchange.com (last visited Mar. 3, 2004); U.S.
COPYRIGHT OFFICE, W EBCASTING RATES , at http://www.copyright.gov/carp/webcasting_rates.html
(last visited Mar. 3, 2004) [hereinafter W EBCASTING RATES ].
72 . W EBCASTING RATES , supra note 71.
73 . 17 U.S.C. § 201 (a) (2000).
74 . See id. §§ 101, 201(b ).
75 . See id. § 204(a).
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recordings transfer their rights to the record label.76 Some powerful artists
retain their copyrights, and in these cases licenses must be obtained from the
artists’ representatives.
II. LEGAL PROTECTION OF DIGITAL R IGHTS MANAGEMENT
The Digital Millennium Copyright Act (“DMCA”) creates an obligation
to respect the technological protection that a copyright owner has placed on
copies of his or her work.77 For those who own or operate MIRS, these
provisions require the MIRS not to circumvent technological controls that
limit access or the ability to exercise one of the exclusive rights—such as the
right to make copies—attached to the musical information within the MIRS. 78
Additionally, the MIRS must not remove or alter “copyright management
information” which could include information identifying the artist and/or
publisher of a musical work or sound recording.79 These provisions also
provide protection to the owner or operator of a MIRS against unauthorized
access to technologically protected, copyrightable MIRS.
Section 1201 of the DMCA creates three claims that a copyright owner
can make with regard to access and copy control technologies: (1) unauthorized
circumvention of a “technological measure that effectively controls access” to a
copyrighted work; (2) unauthorized manufacture or trafficking in a technology
that circumvents a copyright owner’s access control technology; and (3)
unauthorized manufacture or trafficking in a technology that circumvents a
copyright owner’s technology that protects one of the owner’s exclusive
rights. 80 The copyright owner’s technology “effectively controls access” if the
technology requires the application of information (such as a password),
application of a process, or treatment in order to acquire access to a copy of the
work.81 A person or a technology “circumvent[s] a technological measure” by
descrambling, decrypting, or otherwise bypassing, removing, deactivating, or
impairing the copyright owner’s technology.82
Some limited exemptions from these claims exist for non-profit libraries,
archives, and educational institutions; for law enforcement and intelligencegathering agencies; those who reverse engineer computer programs; those doing
research on encryption; those doing security testing; and those who circumvent
access controls that gather personally identifiable information. 83
Section 1202 of the DMCA sets forth a series of obligations to ensure the
integrity of so-called “copyright management information,” which the
76 . See M. WILLIAM KRASILOVSKY & SIDNEY S HEMEL, T HIS B USINES S OF M USIC , 293 -305 (8th
ed. 2000).
77 . Universal City Studios, Inc. v. Co rley, 273 F.3d 429, 441 (2d Cir. 2001 ).
78 . Id. at 440.
79 . See 17 U.S.C. § 1202 (2000 ).
80 . Id. §§ 1201(a), (b ).
81 . Id. § 1201(a)(3 )(B ).
82 . See id. § 1201 (a)(3 )(A); see also Corley, 273 F.3d at 441.
83 . See 17 U.S.C. §§ 1201 (d )-(j) (2000 ).
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copyright owner has associated with the copyrighted work.84 The simplest
example of such information would be a copyright notice, but the statute also
includes information identifying the composer, performer, and/or the copyright
owner, as well as any “terms and conditions for use of the work” within the
definition of “copyright management information.”85 Section 1202 creates a
cause of action against someone who makes copies but removes the notice.86
Digital file formats permit far more extensive forms of metadata to be
associated with copyrighted works. Section 1202 gives the copyright owner a
basis for insisting that this information be replicated in all copies of the work
and for pursuing those who associate false metadata with the music
information. 87
III. PATENT AND TRADE S ECRET
If an invention is novel, non-obvious, and useful, it is patentable in the
United States.88 Patentable inventions include not only new and useful things
(i.e. end products), but also new and useful processes or methods. Judicial
decisions in the late 1990s have greatly broadened the scope of patent coverage,
particularly with respect to software and methods of doing business. 89 As a
result, developers of MIRS or software used in MIRS should investigate
whether the processes embodied in their software infringe an existing patent or
are themselves patentable. Obtaining a patent (or “prosecuting” a patent) can
be an expensive endeavor. A defensive maneuver for software developers, for
whom patent protection is not cost-justified, is to publish a description of their
novel and non-obvious processes. By making the invention public, a developer
reduces the risk that another party will claim patent protection for the
developer’s invention.
In the European Union, software patents have been more difficult to
obtain, although about 30,000 such patents have been issued.90 In the wake of
considerable controversy,91 the European Parliament has adopted an amended
directive restricting the patentability of software.92
84 . See id. § 1202(b ) (p rohibiting the removal or alteration of copy right management
information ); see also id. § 1202 (c) (defining “copy right management info rmation” as including
nearly all “info rmation conveyed in connection with copies or phonorecords of a work o r
perfo rmances or displays o f a wo rk, including in digital fo rm, except that such term does not include
any personally identifying info rmation about a user of a work or of a copy, phonorecord ,
perfo rmance, or display of a work”).
85 . See id. § 1202 (c).
86 . See id. § 1202 (b )(1 ).
87 . See id. §§ 1202 (a), (b ).
88 . 35 U.S.C. §§ 101-103 (2000 ).
89 . See, e.g., AT&T Co rp. v. Excel Comm., Inc., 172 F.3d 1352 (Fed. Cir. 1999); State St.
Bank & Trust Co. v. Signatu re Fin. Group, Inc., 149 F.3d 1368, 1374-75 (Fed. Cir. 1998 ).
90 . FFII: Software Patents in Eu rope, at http://swpat.ffii.org (last visited Mar. 5, 2004 ).
91 . The proposed directive has been very controversial. See, e.g., Matthew Broersma, Patent
Battle to Culminate in Brussels, CNET News.com, at http://news.com.com/2100-1012_3 5068007.html (Aug. 26, 2003).
92 . See FFII: Software Patents in Eu rope, Europarl 2003-09 -24: Amended Software Patent
Directive, at http://swpat.ffii.org/papers/europarl0309 (last visited Mar. 5, 2004 ).
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The downside of publication is the forfeiture of trade secret protection.
Trade secrets are protected by state law in the United States.93 A trade secret is
usually defined as information that derives actual or potential economic value
from not being generally known or readily ascertainable and is subject to
reasonable efforts to maintain its secrecy.94 Trade secret protection for software
embodying trade secrets remains in place as long as the software is released to
the public in object code form. 95 However, reverse engineering generally is not
regarded as theft of a trade secret,96 and if a party reverse engineers such
software and publicly discloses the trade secret(s) contained therein, the
information is no longer a protected trade secret.
IV. DATABASE PROTECTION
The European Union has created a distinct right in otherwise
uncopyrightable databases,97 and proposals to create a similar right in the
United States have been considered by Congress over the past six years or so.
Creation of such a right could have a significant impact on those who design,
operate, and use MIRS. Many databases include information from other
databases, and a right of protection for databases could cause the need for far
more extensive licensing of current practices. As of this writing, Congress is
considering proposed legislation that would provide protection from
misappropriation likely to harm the market for those databases requiring
substantial investments to create or maintain.98
With respect to MIRS, the effect of database legislation would be to
protect even factual music information, such as bibliographic or other
metadata. For example, a complete bibliography or discography of a particular
artist arranged in alphabetical or chronological order probably would not be an
original work of authorship protected by copyright. However, under the
proposed legislation, such a collection of information would be protected.
93 . See MELVIN F. JAGER , T RADE SECRETS LAW § 2:3 (2003 ); Ch ristopher Rebel J. Pace, The
Case for a Federal Trade Secrets Act, 8 HARV. J.L. & T ECH . 427, 429-35 (1995 ). Although state law
is the source, protection is fairly uniform because most ju risdictions have adopted the Uniform Trade
Secrets Act. T HE NAT’L CONFERENCE OF COMMISSIONERS ON U NIFORM STATE LAWS , A FEW FACTS
ABOUT
THE
U NIFORM
TRADE
SECRETS
ACT,
at
http://www.nccusl.org/nccusl/unifo rmact_factsheets/unifo rmacts-fs-utsa.asp (last visited Mar. 5,
2004 ).
94 . See U NIF . T RADE SECRETS ACT § 1 (4 ) (1985 ).
95 . See Stargate Software Int’l, Inc. v. Rumph, 482 S.E.2d 498, 502 (Ga. Ct. App. 1997 ) (the
term “trade secret” applies to data or a prog ram); Jostens, Inc. v. Nat’l Computer Sys., Inc., 31 8
N.W.2d 691, 698 (Minn. 1982) (“unique principles, engineering, logic and coherence in computer
so ftware may be accorded trade secret status”).
96 . See U NIF . T RADE S ECRETS ACT § 1(2 ) (comments) (1985).
97 . Council Directive 96/9, 1996 O.J. (L 77) 20.
98 . See generally Database and Collections o f In fo rmation Misapprop riation Act, H.R. 3261,
108th Cong. (2003) (p rovides civil liability, subject to exceptions, fo r those who misapprop riate
information contained in another’s database).
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328
[Vol. 2003
V. C ONCLUSION
Intellectual property law in the United States is designed to provide
incentives for investments of time, energy and financial resources in
innovation. Necessary trade-offs are made between the rights of innovators,
follow-on innovators, and users. In the field of music information, the
multiplicity of rights holders and licensing agents makes costly the aggregation
of necessary rights to build or operate a MIRS. Those who build MIRS also
should be aware of their own rights bestowed under U.S. intellectual property
law.
Page 103
Litman, Jessica. Sharing and Stealing (2004)
Page 104
LEXSEE 27 HASTINGS COMM. & ENT. L.J. 1
Copyright (c) 2004 Hastings College of the Law
Hastings Communications and Entertainment Law Journal (Comm/Ent)
Fall, 2004
27 Hastings Comm. & Ent. L.J. 1
LENGTH: 19300 words
ARTICLE: Sharing and Stealing
NAME: by Jessica Litman*
BIO: * Professor of Law, Wayne State University. Jon Weinberg's suggestions greatly improved this paper. I'm also
grateful to Jane Ginsburg, Justin Hughes, David Lametti, Lydia Pallas Loren, Kevin Marks, Neil Netanel, Richard
Stallman, and Fred Von Lohmann, who gave me very helpful comments on earlier drafts; and to Mike Carroll, Anupam
Chander, Peggy Radin, and Tim Wu, whose criticism of a much earlier version persuaded me to take a different approach. All URL citations are up to date as of September 20, 2004.
SUMMARY:
... The purpose of copyright is to encourage the creation and mass dissemination of a wide variety of works. ...
Moreover, the theory underlying the recording industry's recent service of more than a thousand subpoenas on Internet
service providers and universities appears to be that merely possessing an unauthorized digital copy of a protected work,
in circumstances in which a member of the public could download a copy of the work from the possessor's hard disk,
may itself be infringing distribution. ... Instead, the recording industry, which has recently licensed services that permit
consumers to buy the opportunity to listen to or download music recorded in copy-protected digital files, claims that if
peer-to-peer file sharing services would simply prevent any exchange of unlicensed content, copyright owners would
have an opportunity to sell consumers the music they want. ... ) Finally, in order to recover in an infringement suit for
consumer-to-consumer dissemination of a withdrawn work, the copyright owner would need to show knowledge that
the work had been withdrawn. ...
TEXT:
[*2]
Introduction
The purpose of copyright is to encourage the creation and mass dissemination of a wide variety of works. Until recently, most means of mass dissemination required a significant capital investment. Disseminators needed printing
presses, trains or trucks, warehouses, broadcast towers, or communications satellites. It made economic sense to channel
the lion's share of the proceeds of copyrights to the publishers and distributors, and the law was designed to facilitate
that. n1 Digital distribution raises the possibility of mass dissemination without the assistance of professional distributors, via direct author-to-consumer and consumer-to-consumer dissemination. Digital distribution, thus, invites us to
reconsider the assumptions underlying the conventional copyright model.
We are still in the early history of the networked digital environment, but already we've seen experiments with both
direct and consumer-to-consumer distribution of works of authorship. Direct author distribution - by itself - has not yet
garnered a lot of attention because the most publicized efforts have been less than wholly successful. n2 When direct
author distribution is augmented by consumer-to-consumer distribution, though, the combination has the potential to
revolutionize the distribution chain. That potential has not escaped the attention of professional distributors. Consumerto-consumer dissemination, especially in the form of peer-to-peer file sharing, has been met with hostility and panic. n3
Legislation pending in [*3] Congress seeks to deter consumers from engaging in peer-to-peer file sharing. n4 Meanwhile, representatives of the music, recording and film industries have sued the purveyors of peer-to-peer file sharing
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27 Hastings Comm. & Ent. L.J. 1, *
software, n5 the Internet service providers who enable consumers to trade files, n6 and more than 5000 individual consumers accused of making recorded music available to other consumers over the Internet. n7
In this paper, I propose that we look for some of the answers to the vexing problem of unauthorized exchange of
music files on the Internet in the wisdom intellectual property law has accumulated about the protection and distribution
of factual information. In particular, I analyze the digital information resource that has developed on the Internet, and
suggest that what we should be trying to achieve is an online musical smorgasbord of comparable breadth and variety.
Ten years ago, an influential government task force proposed enhancing the scope of intellectual property rights in
the digital environment as a device to encourage investment in the infrastructure underlying a national digital network.
n8 As the task force explained, the cost of constructing such a network was beyond the federal government's ability to
fund, and the construction would need to be undertaken by the private sector. The private sector, however, would be
reluctant to invest its resources unless it saw profits to be made. The network would be commercial only if large numbers of people could be persuaded to subscribe to digital network services, which would require a killer application to
draw people online. In the view of the task force, that application was the possibility consumers could enjoy movies,
music and other content on demand. Enhanced [*4] copyright protection would be needed to persuade the producers of
movies, music and other content to make the investment in making their material available over the national digital network. In order to create a viable online information and entertainment resource, the task force concluded, the United
States needed to promise the distributors of copyrighted works a larger share of the copyright pie - only then would they
invest the resources needed to develop digital content that would be sufficiently compelling to convince ordinary consumers to pay for Internet access. n9
With the benefit of hindsight, it's become clear that most of the assumptions underlying that argument were wrong.
Greatly expanded copyright has not yet encouraged movies or music online - there is an enormous variety of music and
movies available over the Internet, but the overwhelming majority of what's there is there over the vehement objections
of the content owners. Nonetheless, the network has grown at an unbelievable rate. The killer application that fueled the
growth of the Internet wasn't digital movies, after all. Instead, it was communication - email, chat, online forums and
personal web pages. It turns out that people want to communicate with one another, and that they love to share. The
information space that has grown up on the World Wide Web is largely the result of anarchic volunteerism - not to build
the pipes, which have been constructed by telephone and cable companies to meet consumer demand for broadband
Internet access, n10 but to supply the information that runs through them. Anecdotal evidence indicates that at least for
some material, untamed digital sharing turns out to be a more efficient method of distribution than either paid subscription or the sale of conventional copies. If untamed anarchic digital sharing is a superior distribution mechanism, or even
a useful adjunct to conventional distribution, we ought to encourage it rather than make it more difficult.
Part I of this essay explores the burgeoning digital information space that has grown up on the Internet in the last
two decades. In Part II, I review the legal obstacles preventing us from simply treating digital music the way we treat
digital information. Amendments to the copyright law enacted over the past 30 years have erected legal barriers to consumer-to-consumer distribution that make lawful [*5] exchange of copyrighted material extremely difficult. Part III
tells a true story about my son's third grade classroom, and spends a brief moment looking at his teacher's use of the
resources she finds on the Internet. Part IV suggests that we look to the digital information space described in Part I as a
model for crafting a solution to the controversy over peer-to-peer file sharing, and reviews some of the proposals made
in recent copyright scholarship. Finally, Part V briefly outlines a particular solution that is in some respects different
from those discussed earlier.
I. Someone Knows What I Want to Know
Someone knows what I want to know. Someone has the information I want. If I can find her, I can learn it from her.
She will share it with me.
Which came first, the computer or network television? n11
I could try to find the answer in a reference book instead. On my bookshelf, I have two editions of the Encyclopedia
Britannica, one published in 1989 and one assembled at a public library used-book sale from individual volumes published in 1964 and 1966. I no longer consult either of them with any frequency. In a jewel case somewhere near my
desk, I have a multimedia CD ROM version of the Britannica that I received as a gift in 1998. I never look at it at all,
and haven't since the month that I received it. I used to buy an Almanac each year to look up quick facts (what's the
population of New Zealand? n12 How old is Senator Barbara Mikulski? n13), but between [*6] 1994 and beginning
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work on this project, I didn't bother. I stopped relying on these books as it became possible to find specific answers to
particular questions online, because the person or persons who knew what I wanted to know had been generous enough
to post the answer where it was easy for me to find it. The search was quicker, and commonly yielded more accurate
information, than consulting whatever reference books were handy.
Although the Internet's usefulness as an engine of commerce has flowed and ebbed, its value as a repository of information has continued to grow exponentially. What we used to class as trivia (and therefore useless information) becomes a matchless resource when it is combined with other trivia in searchable form. n14 Volunteers, most of them
amateurs, have collected an unimaginable variety of information and are eager to share it with the world. What I want to
know may not be in any book on my shelf or in my university's libraries. I can probably find it on the Internet in less
than an hour.
What are sesame seeds? n15
Networked digital technology has transformed information and the way that we interact with it. Digital information is
extraordinarily accessible. If I have a question, I don't need to make up an answer that seems plausible, or reason out
what it's likely to be. I don't need to go to the library and ask the reference librarian if I can see the library's only copy of
a reference book that ought to have the answer. I can just turn to my computer and look it up on the web. n16
[*7] Digital information, moreover, is shared. Ten, even five, years ago, it was conventional to talk about the Internet as a tool for disintermediation. Authors and musicians would be able to use digital networks to send stuff directly
to their readers and listeners. (Remember Stephen King's The Plant? n17) There's some of that. People post content on
their websites for the rest of the world to view. Academics exchange drafts of scholarly papers that way, n18 and independent musicians and composers make recordings of their work available for sampling and download. n19 But, while
we've seen a small but appreciable amount of direct distribution, there's even more consumer-to-consumer distribution.
The "blog" (or weblog) is an increasingly popular art form in which people post ongoing, public, hyperlinked diaries of
things they find interesting and want to share. n20 Readers of the blogs write in to contribute their own comments. n21
Someone has the recording I want. If I can find her, she'll share it with me. I can copy it and pass it on. Someone
knows the answer to my question. If I can locate her, she'll tell me. I can learn it and pass it on. Someone has seen the
source I want to consult. She can tell me where to find it.
[*8]
Where is a copy of the complaint in Hamilton v. Microsoft? n22
The most powerful engine driving this information space turns out not to be money - at least if we're focusing on generating and disseminating the content rather than constructing the hardware that it moves through. What seems to be
driving the explosive growth in this information space is that people like to look things up, and they want to share. This
information economy is largely a gift economy. The overwhelming majority of the information I'm talking about is initially posted by volunteers. Many of them are amateurs, motivated by enthusiasm for their topics, a desire to pass interesting stuff on, and, perhaps, an interest in attention and the benefits it may bring. When one is a volunteer, the time and
effort one is willing to put into contributing to the information space can seem limitless. Volunteers move on, of course:
they get bored, or broke, or caught up in other things, but there seems to be an inexhaustible supply of new volunteers to
take their places, and, luckily, the new volunteers are able to build on earlier volunteers' foundations. n23 I potentially
know all of the information the other participants know. Their knowledge can be my knowledge with a few clicks of a
mouse. In return, I make [*9] my knowledge available to anyone who happens by. Each of us can draw on the information stores of the others. n24
The rate at which people have adopted the Internet as their research tool of choice is astonishing. People find the
easy availability of all that information empowering. People want to know how old Steven Spielberg is. They want to
know the history of early radio. They want to know what traveling musicians wore in 15th century Europe. They want
to know how to make Shaker Lemon Pie. They want to know what the Constitution actually says. If it's quick and easy
to do so, they'll look it up. They enjoy discovering new stuff. The system has been evolving as we watch: consumer-toconsumer interaction is leading to more information, better information, and more accessible information; more complete and deeper archives; wider ranges of divergent sources. n25 People appreciate the instant gratification of learning
answers in a moment. Probably more important than the speed of the system, however, is its breadth and depth. Because
of the disparate contributions of a host of volunteers, one can find information that would not appear in conventional
reference sources. n26
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[*10] Ten years ago, not only Washington, but the entire journalism business believed that the burgeoning digital
network (which went by the name, back then, of the "National Information Infrastructure") would develop into a 500
channel interactive television system, with "interactive" meaning that it would incorporate a method for ordering and
charging purchases and receiving targeted advertising. n27 There are a number of businesses out there that are continuing to try to shove the Internet in that direction, n28 but it isn't yet anything like a 500 channel TV largely because of
the way people have come to interact with information.
What is "the fuct of Pepsiman"? n29
Let's pause for a word from our friendly reference book publishers. Speed and convenience are all very well, but doesn't selecting the speediest research tool ignore the quality and reliability of the information I retrieve? The Internet, after
all, is an infamous source of falsehood and untruth. n30 Books and periodicals have editors and fact checkers to screen
out misinformation; websites need not. n31
The story, as stories often do, turns out to be more complicated. The efforts of editors and fact checkers have apparently not, for example, prevented periodicals from reprinting Internet untruths as if they were fact. n32 That should
not be surprising. Many editors and fact [*11] checkers are neither well paid nor well qualified to assure the accuracy
of the information their employers print. Not all publications use them. Often, fact checkers must rely on authors to direct them to corroborating sources. The customs of different disciplines may control how carefully content is checked.
n33 Correcting errors in print publications is difficult and expensive. Except in cases egregious enough to merit a recall,
n34 the corrections must be put off until the publication of a later edition.
On the World Wide Web, in contrast, correcting errors and revising documents is simple and inexpensive. One can
rewrite a file several times each day and spend nothing more than the time that it takes to enter the revisions and transmit the file to the server. If one makes a mistake, there are dozens of eager volunteers likely to send one an email offering corrections. n35 Indeed, the feedback of knowledgeable readers is a powerful force promoting accuracy on the web.
With the world looking in, errors are much more likely to be identified, n36 and correcting them is easy.
Stepping back to look at the whole dynamic information space, it becomes clear that the remote participation of
readers doesn't stop at writing comments in other people's blogs, or even at writing in to correct errors or misstatements.
Fellow enthusiasts are likely to reuse the information they find in one web page - or a dozen - in their own web pages. A
reader may simply post a hyperlink to someone else's page, or she may appropriate some prose, combine it with her own
prose and additional prose lifted from some other sites, and post the [*12] amalgam as her own (with or without attribution). Thus does information spread. What makes this economy so astonishingly useful is information sharing - we're
not each downloading facts from some giant Encyclopedia Britannica in the sky. We are both finding what we need and
making available material that we've generated or assembled.
Who invented the phonograph? n37
This information system is vital and dynamic because information sharing is almost frictionless. Material is passed
along at low cost with few practical or legal barriers. Jeff Dalehite, webmaster of scratchdj.com, is free to post the details of the early history of the phonograph without seeking the consent of his sources. Dalehite's site tells us that Thomas Edison invented the cylinder phonograph in the 1870s and patented it in 1878. Dalehite recounts the details of the
commercial standards competition between Edison's phonograph and the disk gramophone introduced to the U.S. market in 1901 by the Victor Talking Machine Company. n38 He attributes none of his sources; he need not even know
whether the information he has abstracted was original to the references he used or derived by them from some other
source. Technical writer Samuel Berliner III has posted a site honoring famous people throughout history named Berliner. His site reports that the disk gramophone was invented by Emile Berliner in 1887. Berliner needs no permission
from Frederick W. Nile, the author of a 1926 biography of Emile Berliner, n39 nor the National Inventors Hall of Fame,
who have posted a short profile of Berliner, n40 from whom he initially learned that information. n41 Neither Dalehite
nor Berliner has secured a license from Tommy Cichanowski for any facts they might have learned by studying [*13]
Tommy's History of Western Technology, n42 nor have they sought the blessing of the periodical Electronic Design,
whose February 1976 issue commemorating the U.S, bicentennial n43 furnished many of the dates that Cichanowski
reports. If one were unable to post facts without determining who controlled them and obtaining a license to pass those
facts on, this online information space would not exist.
II. Formalities and Default Rules
Who wrote "When I was One-and-Twenty"? n44
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The purpose of copyright is to promote the progress of science, by encouraging the production and dissemination of
works of authorship. n45The contributions of this networked digital information [*14] space to the "Progress of Science" are difficult to overestimate. Already, a network of people sharing what they know has made many of the most
popular reference sources obsolete. Thus, one might reasonably expect that a law designed to promote the Progress of
Science would encourage the robust growth and prodigious use of this network to exchange the full spectrum of interesting material.
Under current law, though, the information space I'm talking about is lawful only because so much of its content the facts, information, and ideas - is in the public domain. n46 To the extent that the material in this information space is
in the public domain, we can all share it, use it, and reuse it. To the extent it's protected by copyright, on the other hand,
we would need permission to do all of that, and, as a practical matter, it would be impossible to secure that permission.
One of the most salient lessons from the copyright wars of the last few years is that if express permission is required
before one can post a collection of anything on the Internet, one will be unable to do it. n47
To appreciate the extent of the problem, it's helpful to review key changes in the copyright law and the information
space over the past thirty years. Today, facts are some of the only material solidly part of the public domain. Thirty
years ago, the public domain was far more expansive. In 1974, federal copyright protection was not automatic. To get it,
you needed to distribute copies of your work to the public, and the copies needed to be marked with a copyright [*15]
notice. n48 Notice of copyright - the familiar C-in-a-circle, along with the name of the copyright owner and the date the
work was first published - secured copyright. Distributing copies without notice caused the work to enter the public
domain. n49 Indeed, while the copyright system offered authors protection for a limited time as an incentive to encourage them to distribute their works to the public, it also attempted to ensure that most works entered the public domain
promptly, so that the public could make unfettered use of them. n50 Copyright law was designed to separate works
whose authors wanted copyright protection enough to follow a few simple rules for preserving it, from works that
would have been created and distributed anyway. n51
Thirty years ago, when you saw something you wanted to use or share, the default rule was that you were entitled
to do so. Unless the object was marked "do not copy" you were, with some modest exceptions, entitled to assume it was
in the public domain, because the absence of a copyright notice ensured that it was in the public domain (even if it hadn't been before). n52 Not only that, but the notice had to be accurate, had to tell you when the copyright was scheduled
to expire, and had to tell you to whom you needed to address any request for permission. n53 The overwhelming majority of potentially copyrightable works didn't have this notice and entered the public domain the minute copies were publicly distributed. Of the ones that bore the prescribed copyright notice, only a fraction were registered, and of the fraction that were registered, only 15% were renewed, so for most of the copyright-protected works that had the requisite
notice, copyright protection lasted only 28 years. n54
[*16]
When was the U.S. army first officially racially segregated? When was it officially integrated? n55
The formalities get a bad rap these days. We've left that sort of thinking behind us; we're more enlightened now. We
know better than to condition copyright protection on a bunch of technical requirements. n56 (We feel more comfortable conditioning use of copyrighted works on a bunch of even more technical requirements. n57) The formalities have
been so thoroughly discredited that some of us have even stopped teaching them. n58
What we miss when we dismiss the formalities as characteristic of a provincial and outmoded attitude is that the
formalities were the principal method embodied in U.S. copyright law for preserving the public domain and encouraging the public to use, reuse, and share potentially copyrightable material. If you read older copyright cases, textbooks
and law review articles, you find a broad consensus that copyright law was designed to encourage the growth of the
public domain. n59 The theory underlying the system was that a rich public [*17] domain was essential to the progress
of knowledge. By offering copyright for a limited time to authors who distributed their works to the public, copyright
bribed them to generate material for the public domain. n60
The old rules worked to preserve copyright for works whose owners wanted it enough to take the affirmative steps
required to assert it. The law made copyright subject to exceedingly modest requirements to claim protection and put the
public on notice. It was designed to force everything else into the public domain, so that everyone else could make
whatever use of it they wanted. Copyright wasn't automatic, but it was easy to secure. Putting a notice on publicly distributed copies might not be trivial, but it is far easier than the effort involved in applying for a patent, or registering a
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trademark. Retaining copyright after the initial 28-year term was a little harder, but again, not very hard. Nothing one
would need a lawyer for. Meanwhile, the rules were designed to make it easier for people who wanted to negotiate a
license to use a work protected by copyright to know whether and whom they needed to ask. Again, for most licenses, a
lawyer would be strictly optional.
Congress abandoned many of the formalities when it enacted the 1976 Copyright Revision Act, n61 and ditched the
rest of them in 1989 when we acceded to the Berne Convention. n62 In 1976, we essentially abolished the rule that publication without notice or with inaccurate notice sent the work into the public domain, n63 and in 1989 we abolished the
notice requirement entirely. n64 We also made other changes to the law that, cumulatively, reversed the default rule.
[*18] Today, all potentially copyrightable works are protected by copyright, whether their authors want copyright protection or not. n65
How do you make Shaker lemon pie? n66
A second, less obvious but still crucial, change transformed the U.S. copyright system from one designed to ensure the
enhancement of the public domain to one designed to support the indefinite proprietary treatment of articulated thought.
In 1976, Congress adopted divisibility of copyright. n67 So far as I can tell, the change was completely uncontroversial.
Divisibility is exceedingly useful. It's the biggest reason that authors don't need to sign over their copyrights when they
publish things. It allows the author to keep control over different sorts of exploitation of her work by different entities.
The problem with divisibility is that it potentially requires multiple licenses for any single use of a copyrighted work,
while simultaneously making it very difficult to tell who owns the rights one needs to license. n68
[*19] There once was an interesting Internet start-up named MP3.com, which specialized in making both majorlabel and unsigned music available in the MP3 format. MP3.com intended to stream copyrighted music to its subscribers, and bought ASCAP and BMI public performance licenses to allow it to do so. That seems right. If you look at the
statutory definition of public performance, it appears to cover Internet streaming quite nicely. n69 MP3.com got sued
for willful infringement (and lost) because it didn't also license the reproduction rights to those songs, which are controlled by a different entity. n70
This is much worse in the Internet context because copyright owners have asserted, so far successfully, that every
time a work is made available over the Internet, someone has reproduced the work, distributed the work, and publicly
performed or displayed the work. n71 Anyone who wants to post a work on the web, thus, needs a license from the
owners of each of these rights, plus a license from the owners of each of these rights in any underlying works that are
incorporated within the work. n72 Under the current leading analysis of how copyright law interacts with the Internet,
making any material available over the Internet (whether via posting it on a website, [*20] sending it through email,
posting it to Usenet news, typing it on Internet relay chat or making it available in a share directory associated with a
peer-to-peer file trading application) constitutes a reproduction of the material, a distribution of the material to the public, and a public display or performance of the material. It is therefore illegal unless done with the authorization of the
copyright owners of the reproduction right, the public distribution right, and the public display or public performance
right, as well as the copyright owners of those rights in any underlying material. n73 It counts as an actionable copy
notwithstanding the fact that the reproduction may be ephemeral (what the law used to deem unfixed). n74 It counts as a
distribution to the public notwithstanding the fact that no tangible copy of the material is transferred (what the law used
to deem a display or performance rather than a distribution). n75 It constitutes a public display or performance notwithstanding the fact that any display or performance may occur only between two individual computers (what the law used
to deem private). n76
Indeed, there's some indication in the case law that making a hyperlink to material available over the Internet may
be deemed to be a reproduction, public distribution, and public performance or public display, requiring the permission
of the owners of the reproduction, distribution and public performance and display rights in the material on the other
end of the link. n77 Moreover, the theory underlying the recording industry's recent service of more than a thousand
subpoenas n78 on Internet service providers and universities [*21] appears to be that merely possessing an unauthorized digital copy of a protected work, in circumstances in which a member of the public could download a copy of the
work from the possessor's hard disk, may itself be infringing distribution. n79 A bill introduced in the 108[su'th'] Congress extends that argument further. Under Congressman Conyers's Author, Consumer, and Computer Owner Protection
and Security Act, possessing an unauthorized digital copy could constitute felony distribution. n80
And (as if that weren't troubling enough) largely because of the adoption of divisibility of copyright, in many if not
most cases, it can be difficult and sometimes impossible to discover who the copyright owners of all of those rights are.
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n81 One of the more disturbing revelations of the Napster litigation was that record companies insisted that they were
unable to generate a list of the copyrighted works they claimed to own. n82 (This is particularly disquieting because one
would assume they kept records in order to send out those royalty checks they're supposed to be sending out, but apparently not.) Some of the problem, apparently, is record keeping, but not most of it. In addition to difficulties caused by
lost or misfiled records, there is significant legal uncertainty about the ownership of rights to control digital exploitation
of works that are subject to contracts contemplating conventional exploitation. n83 Record companies, for [*22] example, have claimed to own all copyright rights in the recorded music they distribute under the work-made-for-hire doctrine, but most experts agree that those claims are unpersuasive. n84 A successful effort to amend the copyright law to
strengthen the record labels' work-made-for-hire arguments excited so much outrage among musicians that the recording industry persuaded Congress to repeal the amendment the following year. n85 Without the benefit of a work-madefor-hire claim, though, the record labels' claims to own the digital rights to the recordings they produce requires a workby-work, contract-by-contract analysis. New York Times v. Tasini n86 and Random House v. Rosetta Books n87 teach
us that contractual assignments of copyright may not necessarily include the electronic rights. We'd have to examine the
contracts to be sure. We might need to know whether the case would be coming up on the east coast or the west coast.
n88 We'd also need to see the contract between the composer and the music publisher for each song on the recording,
and the contracts between each of the music publishers and the record company that recorded each song. Those contracts aren't publicly available. One suspects that a large number of them are no longer in anyone's file cabinets either.
Bottom line: we don't know with any certainty who owns the digital rights in any number of recorded musical performances. That may be why record companies have scrambled to settle cases when their ownership of sound recordings is
actually put in issue. n89 If I want to share my music collection with my newfound friend who was able to tell me that
the "Fuct of Pepsiman" is a promotional toy released in Japan by the Pepsi Cola Company, there isn't any way for me to
figure out whose permission I need to ask.
Today, in short, everything is protected by copyright and it is almost impossible to figure out whom to ask for permission. Just as [*23] we built a communications network that would permit us, if we chose to, to dispense with a
complicated and expensive distribution infrastructure, we ditched the legal rules that would have permitted us to do so.
n90
III. Digression: The Music of Room A-9
What are the lyrics to "The Syncopated Clock?" n91
When my son was in the third grade, one of his assignments required him to conduct research on the flora, fauna, and
climate of the alpine tundra. His teacher didn't send him to look it up in books - indeed, the school library didn't have a
lot of information to offer on the alpine tundra. My son's teacher sent him to look it up on the Web. She gave him a list
of URLs for some websites that were likely to lead him to the information he needed, and sat him down in front of a
computer to do his research. At the end of the school year, this teacher said goodbye to the class and presented all of the
students with a souvenir: A home-burned CD full of Room A-9's favorite songs. Where did the songs come from? My
son's elementary school teacher had downloaded them from the Internet herself so the class could enjoy them. Room A9 apparently especially liked the Sugar Beats' rendition of "Put A Little Love in Your Heart." n92
When an elementary school teacher helps her class to download information about the animals that inhabit the tundra, we all agree that that's admirable. When she teaches the class to download "Put a Little Love in Your Heart," at
least some of us would argue that that's reprehensible. Collecting information on the Internet is "learning." Posting information on the net is "sharing." Try exactly the same thing with recorded music and it's "stealing." When my son's
teacher downloads information from the Internet and shares it [*24] with her students, that's the sort of thing the law is
supposed to encourage; when she downloads music from the Internet and shares it with her students, that's the sort of
thing the law is supposed to prevent. The law treats the two acts differently because facts are in the public domain,
while music is someone's property. Information cannot be owned, we're told, because, unlike music, facts aren't original. n93 From my son's teacher's point of view, though, what she's doing is the same: she's sharing. n94 From her point
of view, there's no reason to think that it would make intuitive sense that downloading information to share with her
students would be good, while downloading music to share with her students would be bad. Those of us who teach
copyright know that the distinction between unprotected fact and protected expression is as elusive and counterintuitive
as anything in the copyright course. n95 There's a wealth of literature challenging the rule that information is unlike
music in any way that's important to whether we should give it intellectual property protection. n96 Any originalitybased distinction [*25] between facts and notes is untenable, we're told, since unearthing and assembling facts takes at
least as much creativity and often lots more money than writing a song. n97 Scholar after scholar has deconstructed the
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supposed rationales for giving factual information different treatment from fiction, and concluded that the asserted differences can't be defended. The inescapable conclusion, they've told us, is that we need to give comparable intellectual
property protection to information. n98 There's a perennial bill pending in the U.S. Congress that threatens to do just
that; n99 it's even passed the House of Representatives once or twice. n100
Copyright scholars never seem to reverse the syllogism. You never run into an argument that says: if facts and music are equivalent in the respects that matter, and we have an ample, readily accessible and diverse supply of facts when
the law gives them no protection, shouldn't we at least investigate what sort of musical smorgasbord we might develop
if we treated music comparably?
IV. Resetting the Default Rules
Who are the Sugar Beats? n101
We have a mature information market on the Internet that allows almost anyone with a net connection to find the answer to almost any question by consulting what would a generation ago have been an unimaginable wealth of information resources. This information space has sprung up not despite but because of the [*26] absence of any copyright
protection for facts. (If you doubt me, stop a moment for a thought experiment, and imagine what this information space
would look like if we adopted and enforced a legal rule that no fact could be posted without the permission of the originator of that fact or his employer or assignee.) At worst, this information space is an invaluable adjunct to the library of
reference books, and at best it's a superior alternative for retrieving and disseminating information. If consumer-toconsumer dissemination can create a superior information marketplace, shouldn't we give serious consideration to the
idea that it would create a superior music marketplace? The digital information space is compelling at least as much
because of the variety and ecology of shared information as because of the convenience and speed that might be supplied by an online "encyclopedia world," containing the digitized text of the Encyclopedia Britannica and a dozen of its
competitors. Consumer-to-consumer dissemination of music might enable the evolution of a music space with comparable variety. That potential is more exciting than the advantages of instant gratification that accompany the ability to
download whatever music the record labels are currently selling. Just as we wouldn't want to get all of our facts from
some giant Encyclopedia Britannica in the sky, there's no need to cabin our musical tastes to reflect what's currently
selling in online or offline stores.
How old is the recording industry? n102
At this point, the vast majority of the copyright specialists who stuck with me through part III have stopped reading.
They've decided that this is just another rant by one of those copyright-hating academics. n103 There's no rush to reassure them that I'm not seriously [*27] suggesting anything so radical as treating music exactly the way we treat facts,
or dumping all recorded music into the public domain. They are no longer paying attention. We can take some time to
reflect on what the music world might look like if we did.
Imagine a world in which consumers were free to copy and transmit any and all recorded musical they wished to.
Someone who wants to avoid shelling out $ 18.98 plus tax for Norah Jones's Feels Like Home n104 could download it
from the hard drive of a price-insensitive fan who lives down the block. Someone searching for a track from the 1960s
that she hasn't heard in 40 years could find it in the collection of another music lover half way around the world. If one
considers only the universe of existing recordings, the promise of copyright-free consumer-to-consumer distribution of
music seems boundless. If one were able to prevent - or at least prohibit - spoofing and other well-poisoning, n105 we
would have a highly efficient, cheap distribution network. The potential range of the marketplace, including music too
marginal to market, too obscure to clear, too unusual to fit into conventional marketing niches, would allow us to find
music to scratch almost any itch in our minds' ears as easily as we have become able to satisfy both idle and abiding
curiosity with a few clicks of a mouse. Moreover, our experience with nascent peer-to-peer file sharing thus far suggests
a strong likelihood that a variety of mechanisms would arise for sorting music and directing the attention of people
likely to want it to the appropriate files, and that those mechanisms would prove at least as effective as the current marketing devices. n106
[*28] The story for music not-yet-written or not-yet-recorded is more complex. Reasonable people differ vehemently about whether composers would compose songs or performers perform or record them absent the incentives
supplied by the current copyright system. n107 We have little empirical data to test theories seeking to explain why musicians make music. n108 Some people have suggested that, at least in some genres, musicians are motivated less by the
fact that music is what they love and do best and more by the possibility of hitting it big as the next mega hit rock star.
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Others argue that the most important role in supplying music to a music-loving public is finding the good stuff. The
hard, expensive, crucial task that all the recording industry's bookkeeping tricks are barely managing to subsidize is
searching for and identifying the musicians whose work will prove to be worth listening to. These are both completely
plausible stories; we don't yet have the tools to allow us to evaluate whether they're more true than not.
Perhaps treating recorded music as if it were in the public domain would usher in an era of enhanced creativity and
boundless profit; perhaps songwriters and musicians would choose to become lawyers and investment bankers. We
don't have the tools to make a confident prediction. Fortunately, we don't need so extreme a prescription in order to capture the benefits of consumer-to-consumer [*29] digital distribution. There's no need to jettison copyright protection
for music if, instead, we can apply some of the insight that we've gained from watching the expanding exchange of information over the Internet. Creation and dissemination may flourish without the incentives supposedly supplied by
producer control. n109 Even if we believe that copyright-like incentives are sometimes essential to encourage composers and musicians to create music, n110 it doesn't follow that those precise incentives are necessary to induce dissemination.
When will the song "Happy Birthday to You" enter the public domain? n111
Can we design a system that preserves copyright incentives for creators who rely on them while reducing unnecessary
barriers hampering wide consumer-to-consumer dissemination? Our experience with digital information works suggests
that we can. The flourishing information space on the Internet includes proprietary content sitting alongside material
that is freely shared. Because facts are in the public domain, but the prose used to communicate those facts is fully protected by copyright, proprietors of fact-heavy works have sued, successfully, when their prose is appropriated. n112
Those successful lawsuits don't seem to have impeded the free flow of information significantly. The information ecology continues to function when some information sources prohibit free exchange of their material, not because sharers
are scrupulous about sharing only facts and not prose (which they surely are not), but because the proprietors of information-rich content who insist on controlling the dissemination of their stuff mark their content and enclose it in [*30]
electronic envelopes that give notice of their claims and make it clear that they have opted out of the prevailing norm of
sharing. By and large, people appear to respect that choice. The coexistence of proprietary and shared information suggests that we can design a workable shared music space without taking the drastic step of dumping music into the public
domain. Another of the lessons we can take from the vibrant commerce in facts that goes on over the Internet is that
allowing, indeed encouraging individuals to share music, trade music - engage in non-commercial "stealing" of music if
you prefer - without legal liability is not necessarily going to bring the progress of science and the useful arts to a crashing halt, and it has lots of advantages over the distribution system that preceded it. n113
What's the name of that song that keeps going through my head? n114
There are vast differences between music and information, but outside of the fact that the owners of music and sound
recording copyrights have a lot more brute political clout than, say, Reed Elsevier, I'm not sure that any of those differences undercut the basic insight: If music in a digital world shares many of the attributes of information, it may be useful to apply some of the wisdom IP law has developed over the protection and distribution of information. In particular,
we should remember that widespread dissemination is as central to the goals of copyright as initial creation; facilitating
the sale of copies is only the means the law has adopted to further those goals. n115 If sharing is a more effective
method of dissemination than [*31] selling copies, then prohibiting sharing to protect the market for copy sales is exactly backward. n116
If we can agree on that, I think it's relatively easy to work out the details of a compromise we can live with. n117 A
growing consensus has emerged that P2P is exciting technology with one serious flaw - creators aren't getting paid.
n118 (That flaw characterizes much conventional distribution as well. n119) The current conventional system of music
distribution has been successful in disseminating a broad range of music to consumers and less successful in compensating the individuals who create that music. Peer-to-peer file trading has so far proved to be a far more effective distribution mechanism for a broader range of music, but is even worse than the conventional system at compensating creators.
n120 Tweaking peer-to-peer file trading to incorporate a mechanism for compensating creators is a sensible response to
that problem, and there are a host of recent thoughtful suggestions outlining ways to do that. n121 If the only reason we
care [*32] about compensation for composers and musicians is to induce them to make music, the most efficient option
is probably to legalize peer-to-peer file trading, prohibit well-poisoning n122 and leave creator compensation untouched
- the recording industry has demonstrated that artists make music even when money is not forthcoming. If our sense of
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fairness impels us to compensate creators because they deserve to be paid, then extracting creator compensation from
peer-to-peer file trading would probably be an easier route than reforming the recording and broadcast industries.
Consumer-to-consumer distribution, after all, is a lot less costly than conventional commercial distribution, and
may allow us to free up resources now spent on CD stamping, shipping, storage, shelf space and radio payola, not to
mention the huge cost of legal efforts to eradicate what is commonly called "piracy." That money could be used to pay
the people who create the music - something the record companies insist they can't really afford to do very well under
the current system. n123
A number of scholars have floated proposals urging the adoption of systems that would permit peer-to-peer file
sharing, charge money to the people who enjoy it (or the businesses that profit from it), and use those funds to compensate creators and copyright owners. n124 [*33] Professor Neil Netanel suggests allowing consumers to engage in unrestricted noncommercial use, adaptation, and peer-to-peer exchange of all types of communicative expression, and imposing a noncommercial use levy to compensate copyright owners. Netanel would impose the levy on the sale of products and services whose value is enhanced by peer-to-peer file sharing. Organizations representing copyright owners
would divide the levy proceeds among their members using both sampling and digital tracking technologies. n125 Professor Terry Fisher proposes a slightly different solution. Fisher would encourage copyright owners of music recordings
and films to register their works with the Copyright Office, which would assign every registered music recording or
film a unique registration number. Copyright owners would incorporate the registration numbers into the names of the
digital files containing the registered works. The Copyright Office would be responsible for administering a tax on digital recording devices, digital storage media and Internet access services, and would divide the proceeds of the tax
among owners of the copyright in registered works by tracking downloads of files by registration number and using
sampling to estimate offline consumption. Anyone would be permitted to reproduce, distribute or perform audio and
video recordings over the Internet. Professor Fisher suggests that the initial deployment of his proposal be completely
voluntary, but he envisions that it would ultimately replace the current copyright law. n126
Professor Raymond Ku argues that the current copyright law makes no sense in the context of digital distribution.
Ku would retain the current law for analog distribution, but would replace copyright in the Internet context with a privilege allowing consumers to engage in noncommercial online distribution. If the revenue from analog sources proved
insufficient to support the creation and distribution of music, Ku recommends the enactment of a statute imposing levies
on sales of Internet service and on computer, audio, and video [*34] equipment. n127 Professor Glynn Lunny argues
that private digital copying probably does more good than harm, but suggests that if that harm must be redressed, a levy
imposed on devices and blank storage media is the best available solution. n128 Professor Daniel Gervais, analyzing the
problem from the Canadian vantage point, where a court has recently concluded that peer-to-peer file sharing is often
lawful, n129 suggests modifying existing collective licensing to extend to peer-to-peer file trading. n130 Professor
Larry Lessig has weighed in with a modified version of Fisher's proposal, designed to compensate copyright owners
temporarily until ubiquitous licensed music streaming replaces peer-to-peer file sharing as consumers' preferred means
of gaining access to music. n131 The Electronic Frontier Foundation recently suggested that the best solution would be
for the music industry simply to agree to offer music fans a license to engage in file sharing for a small monthly fee.
n132
The music industry's response to all of these proposals n133 has been chilly. Despite a spirited recent defense of the
recording [*35] industry's need to rely on the copyright compulsory license crafted for its benefit, n134 a recording
industry spokesman explained that any compulsory license benefiting the public would be unacceptable because it
would involve the government in setting the price for music. n135 Voluntary collective licensing, he insisted, would
either be unfair because the few consumers who participated would subsidize the many who continued to rely on free
downloads, or it would be voluntary only in name. n136 Instead, the recording industry, which has recently licensed
services that permit consumers to buy the opportunity to listen to or download music recorded in copy-protected digital
files, claims that if peer-to-peer file sharing services would simply prevent any exchange of unlicensed content, copyright owners would have an opportunity to sell consumers the music they want. n137 The market can work only if the
recording industry doesn't have to compete with free.
At its best, though, letting the market work promises to perpetuate and extend the already vexing problems that
have engendered today's music environment, in which rights are difficult or impossible to clear and the majority of creators go unpaid. Nothing in the music and recording industry's promises suggests that they have an interest in solving
these problems, much less a plan to do so. Instead, the recording and music industry seem determined to [*36] exacerbate the difficulties imposed by a multiplicity of conflicting rights holders, by imposing obligations on hardware manufacturers, software publishers and Internet access services to implement a variety of maddening digital rights manage-
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ment formats and incompatible files and devices. n138 Surely we can do better. Adopting solutions designed to support
the current music market structure, and export its anomalies to a digital marketplace, saddles us with undesirable and
unnecessary artifacts that arose from problems particular to conventional distribution. Under our current system, immensely talented and hard working composers and musicians, who create great stuff that people would want to buy if
they knew about it, are often unable to make a living making music, because the system we rely on to encourage the
creation and dissemination of music works best when its products are scarce. As a necessary corollary of a distribution
mechanism that requires significant investment of capital in order to deliver music to consumers, that fact may be a regrettable but a reasonable sacrifice at the altar of great music. Extending the lottery-like nature of today's conventional
music market to a digital world, though, where maintaining scarcity is more expensive than tolerating ubiquity, is profoundly dysfunctional.
From the viewpoint of the individuals who make the music, moreover, the reform proposals to legitimize peer-topeer file sharing rely on mechanisms that are remarkably similar to the devices we rely on today to pay money to composers and musicians. n139 In Canada, [*37] Europe and Japan, musicians and composers rely heavily on collecting
societies. n140 In the United States, a patchwork combination of compulsory licenses, n141 blanket licenses, n142 standard trade practices n143 and rate courts n144 add up to much the same thing. The proposals to enact a new license to
permit peer-to-peer file sharing and compensate creators through a levy, tax, or uniform royalty have inspired heated
philosophical and economic debates over the flaws in any compulsory or collective licensing system. n145 The objections tend to ignore the fact that to the extent that composers and performers currently earn income from the sale and
performance of recorded music, they collect most of that income through a combination of standardized, compulsory
and collective licenses administered by intermediaries (music publishers, record companies, performing rights societies)
in return for payment. From the vantage point of music creators, replacing the theoretical control they enjoy under the
copyright law with an enforceable promise of payment makes them no worse off, and makes most of them better off.
The intermediaries who hold control over musical works and recordings are also in it for the money, and one might
expect them to be delighted to hand over their control in return for more cash. Not a [*38] bit of it. n146 The current
dominant forces in the music and recording business may no longer need record pressing plants, CD stamping plants,
warehouses and trucks to distribute music, but they have a huge stake in ensuring that digital distributors be limited to
those who used to rely on record pressing plants, CD stamping plants, warehouses and trucks. The rest of us, however,
don't share that stake. Indeed, new distributors who never assumed those expenses may be in a position to experiment
with new variations on digital distribution and still pay a larger percentage of proceeds to the creators of the material.
The proposals advanced by Netanel, Fisher, Ku, Lunney, Gervais and Lessig would improve the law by allowing
frictionless, consumer-to-consumer dissemination, and collecting royalties to compensate creators from those who in a
broad sense may be described as commercially exploiting copyrighted works. n147 Moreover, when their schemes are
limited to music, currently the most vexing case of consumer-to-consumer dissemination, the proposals are modest extensions of devices contained in current law and business practice. In drawing on their analyses, I end up suggesting a
variant solution pegged at least initially only to music sharing, but my pursuit of some different choices shouldn't obscure the importance of their work. The politics of copyright legislation will likely prevent us from adopting any of the
proposals they advance, but our copyright law would be much improved if we did.
[*39]
V. Sharing and Hoarding
How violent is next week's episode of Dragonball Z? n148
If I'm persuaded that politics would prevent the adoption of the sort of peer-to-peer licensing solutions scholars have
proposed, why am I bothering to articulate my own variation? n149 As consensus builds around the idea of paid peerto-peer, it seems increasingly plausible that some legislation will emerge with enough support from the music, recording, computer, and consumer electronic industries to have a fair chance of enactment. I expect that that legislation will
include both consumer downloads of music and collective licenses to pay for them. Such a bill is less likely to resemble
the proposals advanced by Netanel, Fisher, Lunney, Ku, Gervais, or Lessig, however, than it is to be designed to maintain the current recording and music industry distributors in their market dominant position. Most importantly, it is less
likely to incorporate a privilege for consumer-to-consumer dissemination than it is to include measures designed to prevent it. If we are willing to give up consumer-to-consumer dissemination in return for the instant gratification of licensed direct downloads, the recording industry is probably willing to sell us copy-protected files replicating much of
the music it makes available in stores.
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The prospect of downloading copy-protected versions of music otherwise available in stores is not particularly enticing. This is the music version of the online "Encyclopedia World," and we can do [*40] better. The promise of being
able to find music that is not available in stores, and to share it with other consumers, in contrast, is compelling. Lots of
music is not available in any store, because it's old, it's obscure, it has little commercial potential, or the rights can't be
cleared without a statutory license or privilege because it's just too difficult to figure out who owns them. Consumer-toconsumer music dissemination makes it possible to find and share that music.
The fact that more than sixty million consumers are currently exchanging music over peer-to-peer networks in the
U.S. gives them a stake in the building consensus, and a political claim to a seat at the copyright bargaining table as well
as a moral one. The details of any proposal for an online music system will determine the extent to which it promotes
unfettered consumer-to-consumer exchange, allows untethered consumer use, encourages the broad dissemination of a
wide variety of music of disparate types, takes advantage of the economies made possible by digital distribution, and
pays composers and musicians. The details of such a system will also determine whether and to what extent it requires
copyright police to enforce its rules. The more conversations that people who are not copyright lobbyists can have about
the details of a revised copyright bargain, the better positioned they will be to shape the law Congress may enact. n150
The devil will be in the details, and focusing on the details allows us to figure out which ones are most important.
I suggest that we should try to build a music space that resembles the current digital information space in the ubiquity of music it contains and the ease with which music may be shared, and that we should devise a combination of
blanket fees or levies designed to compensate the creators of the music we exchange. In order to achieve the breadth and
diversity of music (and the community of consumers who enjoy it) that has evolved in the Internet information space,
we will need to rely on consumer-to-consumer dissemination as well as licensed downloads or streams. If we as consumers want to pay for the music we exchange, we need some form of blanket fee or levy to enable us to do so. Because
some creators and copyright owners find the idea of consumer-to-consumer dissemination unacceptable, I suggest that
we devise a way to allow them to withhold their music from the system. To discourage them from electing that option, I
believe we should optimize the legal infrastructure for sharing. I've drawn the details of that infrastructure [*41] with
an eye toward recapturing some of the lost advantages of notice and indivisibility.
So, should I have a drink with that guy or not? n151
One important goal of online music copyright reform, I would argue, should be to encourage music file sharing, as distinguished from merely tolerating it. To do that, it should incorporate some licensing mechanism that can cut through
the thicket of overlapping and conflicting rights. In addition, the legal defaults of such a system need to be reset to
"share" rather than "hoard." So long as shareable is the legal default, we don't need to make sharing compulsory. We
can allow creators who would like to prevent their music from being shared to make that election, without encouraging
them to do so. The system should allow consumers, computers and software to ascertain, easily, whether music is
hoarded or shareable, and thus encourage the design of computer software allowing the sharing of shareable music
while making it difficult to share hoarded music. Another equally important goal is to generate and actually distribute
payments to the creators of music. Moreover, music copyright reform should be cast so as to avoid unnecessarily entrenching the intermediaries who dominate the current bricks-and-mortar distribution system, and should provide opportunities for the generation of new digital intermediaries who can explore different ways of adding value to music and
promoting it to its audience. Finally, a reform proposal should in the best of worlds accomplish all of this without abrogating any international copyright treaties.
With those goals to guide us, we can envision a legal architecture that would encourage but not compel copyright
owners to make their works available for widespread sharing over digital networks. Although a variety of different licensing mechanisms would be suitable, I favor a blanket license that would be both statutory and voluntary. By statutory, I mean that the copyright law would prescribe the terms and conditions of the license. By voluntary, I mean that
the law would provide an opportunity to designate works as ineligible for the blanket license. Critics of compulsory
license proposals have complained about government involvement in music price regulation, and suggested that collective licensing using a [*42] copyright owner member organization, rather than the government, to collect and disburse
royalties would be a superior alternative. n152 Our experience of collective licensing, however, indicates that royalty
collectives may sometimes be better at collecting money than disbursing it. A government agency that requires transparency from designated licensing agents and that can serve as the collection and disbursement agent of last resort for
creators who designate no agent to represent them seems likely to encourage prospective licensing agents to compete in
the representation they offer, and may diminish the possibility that any funds will be consumed by administrative and
legal expenses before they can be allocated to claimants. n153
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We should build the statutory license around a payment mechanism designed to compensate creators and to bypass
unnecessary intermediaries. n154 That mechanism should have sufficient flexibility to allow current and new upstart
intermediaries to devise useful value-added flavors of intermediation and collect dollars accordingly. The most straightforward route to accomplish that would be to assign the right to collect the proceeds of the license directly to the individual creators of music rather than their intermediaries, but without relieving them of any contractual obligations they
may have assumed to pass some portion of their receipts to others. Where extant contracts speak directly to the division
of royalties for consumer-to-consumer digital dissemination, the contracts will doubtless control. Where contracts are
unclear or lost, the creators and their intermediaries will need to work things out. Creators who don't wish to act as their
own collection agents should be encouraged to designate agents to collect and disburse funds on their behalves. [*43]
Where a composer or performer prefers to eschew representation, however, she should be able to collect her share of
any fund from the government entity that will collect and disburse the money.
In the first instance, money should be disbursed to the musicians and composers who author music and recordings.
n155 If musicians and composers have assigned their copyrights to intermediaries, they would be obliged to pass along
their assignees' share of that money under whatever terms their contracts set. n156 There is value nonetheless in choosing to distribute the money directly to the creators. First, where contracts do not assign the copyright in its entirety and
fail to speak to the rights to collect royalties for consumer-to-consumer digital dissemination, the question whether particular intermediaries have contractual rights to a portion of the fees will depend on the language of the particular contracts. If intermediaries are optional contributors to digital dissemination, it seems counterproductive to presume that
they must have persuaded creative contributors to assign them any rights that would ever become remunerative. Where
particular contracts don't seem to say, or simply cannot be found, the creators of the music ought to be able to keep the
payments, or to find different intermediaries who may be able to administer digital rights without the inertia of bookkeeping tricks that became customary fifty or more years ago. n157 Second, directing the payments to authors and performers addresses a problem that has plagued the administration of extant compulsory licenses in the United States. The
system for managing those licenses was designed by large, well-financed and legally sophisticated stakeholders, with
large, well-financed and legally sophisticated stakeholders in mind, and has systematically disadvantaged stakeholders
who are small, independent or poorly organized. The price of a ticket to a Copyright Arbitration Royalty Panel proceeding is beyond the means of all but the wealthiest interest groups. n158 Why not design the system so that [*44] individuals can actually use it? Finally, directing the payments to composers and musicians will pose an opportunity for
new flavors of intermediary interested in providing a different package of services in return for a different percentage of
receipts. Those intermediaries may introduce new value-added enhancements to digital distribution.
There are two extant models for collecting the fees to be divided among creators: the first model is a direct blanket
license fee of the sort collected by performing rights organizations such as ASCAP. Subscribers wishing to engage in
peer-to-peer file sharing would pay a premium that would absolve them from liability for infringement. The Electronic
Frontier Foundation proposal for voluntary collective licensing endorses this model. n159 The second model is to impose a levy or tax on the sale of goods or services that are most directly involved in peer-to-peer file trading. Professors
Netanel and Fisher, among others, base their proposals on this model. n160 The United States copyright statute includes
examples following both models, n161 as do the copyright laws of our trading partners. n162 The levy or tax approach
has the dual advantages of fairness n163 and relative ease of administration - it can be imposed on commercial activities
that earn money from peer-to-peer file sharing without inflicting significant burdens on consumers. That strength may
be its most important disadvantage: to the extent that license fees "feel free" to consumers they may conclude that paying creators for music is unnecessary or unimportant. Whichever model we adopt, though, we need to remember that the
consumers who are engaging in this behavior are providing the valuable services that in the bricks-and-mortar world
[*45] are provided by CD stamping plants, warehouses, trucks, record stores, and radio broadcasters, and they should
be compensated accordingly. n164 The fees consumers pay to engage in file trading don't need to replace the income of
the intermediaries they're replacing, and I think those fees shouldn't be large.
If the legal architecture encourages sharing but permits what we might want to call "hoarding," then consumer-toconsumer exchange can develop without difficult legal or technological barriers. n165 Thus, I'd be willing to incorporate a limited, carefully structured, notice-based opt out for copyright owners who prefer control to payment. If hoarded
music is indeed superior, it will be able to compete with the "free" stuff. (If it can't compete with the "free" stuff, then
overall welfare is probably enhanced if we refuse to subsidize it with expensive legal barriers and copyright police.) To
achieve a legal regime that encourages sharing but permits hoarding, we should impose a requirement that copyright
owners who decide to hoard must forgo any payment for hoarded works from the common payment system, and must
take affirmative but relatively modest steps to exclude their works from the network and enable consumers to quickly
and painlessly ascertain that those works may not lawfully be shared.
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My reasons for preferring a system that copyright owners can choose not to participate in are at least in part pragmatic. First, so long as the legal and technological architecture are optimized for sharing, allowing copyright owners to
withhold their works does little harm. Paid subscription information and news sites on the Internet coexist comfortably
with sites that are open to the public and free of charge; if we can duplicate that peaceful coexistence for digital music,
it seems sensible to try to do so. Second, if we design an alternative compensation system to collect enough money to
compensate the proprietors of mega-hits for all of their forgone income, we can expect that the expense of such a system
will be unreasonably high, and that the compensation paid to the creators of more modestly successful music will be
unreasonably low. Third, if such a system allows copyright owners to decline to participate, it seems more likely that it
will be deemed at least arguably compliant with our treaty [*46] obligations under the Berne Convention and the
WIPO Copyright Treaty. n166 Finally, my proposal is motivated in part by my conviction that composers and musicians have been ill-served by the current system. If they nonetheless prefer the dysfunction they know to a new and unproved system, and we can make the system work without including them, I see no important policies that will be
served by forcing them to participate. At the same time, it makes little sense to allow copyright owners to opt out too
easily. A key element of my proposal relies on consumer willingness to pay a blanket license fee to share some but not
all music. I believe that consumers will be willing to pay a blanket license fee if it seems clear that they are buying
something of appropriate value. The value of the system would diminish significantly if the list of unshareable music
were so long it became burdensome to check it.
To enable an opt-out mechanism that won't deform the legal and technical architecture encouraging sharing, I suggest that we try to reproduce the functions that notice and indivisibility provided before we abandoned them. n167 Consumers should be able to rely on an assumption that musical works may be shared unless copies of the works indicate
otherwise in some fashion that can be read by both consumers and their computers. The key to the opt-out mechanism I
propose is the selection of a single digital file format or family of formats capable of conveying copyright management
information as defined in section 1202 of the copyright act. n168 The format will [*47] probably incorporate digital
rights management capability because the people who will be using it will desire that feature, but there's no need for any
copy-protection to be hack-proof, or even exceptionally durable. To the extent feasible, the new format should be compatible with the current generation of digital playback devices. n169 I'll call the format "*.drm" for short. n170 Any
musical work or sound recording that is made available to the public, under the copyright owner's authority, only in
*.drm format will be ineligible for sharing or compensation. n171 At such time as the creators or copyright owners of a
work desire to participate in the revenue earned from digital sharing, they may publish the work in other formats and
become eligible to collect compensation.
[*48] What about the works being traded on peer-to-peer networks today? The system can incorporate an opportunity to withdraw works from sharing, but in fairness to consumers, the process for withdrawing a work should be significantly more difficult than the initial choice to withhold it. n172 (Frankly, I'd prefer it if it were sufficiently onerous
to withdraw a work from the shareable realm that it would almost never make economic sense to pursue it. Some works
will doubtless be hoarded for non-economic reasons, n173 but we shouldn't encourage it.) Moreover, discouraging consumers from trading hoarded music requires that they believe the division between shared and hoarded is a reasonable
one. If consumers understand that hoarding applies to new works and not the stuff on their hard disks, they're more
likely to go along.
For all works that have been released in any format other than *.drm, then, the law should adopt a presumption of
shareability. Copyright owners may avail themselves of an opportunity to withdraw works that have already been made
available to the public, but the terms of that opportunity should be sufficiently burdensome that they don't lightly undertake to withdraw a work. I'd suggest that withdrawing a work would require the copyright owner to take the following
steps: All owners of the copyright in the work, as well as the work's creators, would be required to join in the decision
to withdraw. n174 First, the copyright owners would need to recall copies of the work released in formats other than
*.drm, n175 and offer any consumers who own authorized, commercial copies in a non-*.drm format the opportunity to
swap those copies for *.drm copies at no charge. Second, the law should incorporate a 24-month grace period before
any withdrawal of a work could take effect. n176 (In the meantime, withdrawn works could collect payments from the
common fund.) Finally, in order to recover in an infringement suit for consumer-to-consumer dissemination of a withdrawn work, the copyright owner would need to show knowledge that the work had been withdrawn. n177
[*49]
Whatever happened to Herman's Hermits? n178
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With the exception of works released only in *.drm format, consumer-to-consumer dissemination and any reproduction, distribution or public performance or display that it entailed, would be completely legal. Any music that's already
been released in other formats could be recaptured only with great difficulty, so the overwhelming majority of music
currently being shared over peer-to-peer networks would not be locked back up. It would, however, be eligible for compensation. Creators of new releases could choose to make them available for sharing or they could hoard them and forgo
both the free distribution and the additional income that sharing would generate.
Inevitably, some noncompliant consumer will seek to trade a *.drm file over a peer-to-peer network. Copyright
owners could sue, as they do now, for copyright infringement. Notwithstanding that record labels are currently pressing
copyright infringement suits against individual peer-to-peer file traders, why would they settle for a system that gives
them no more effective an enforcement mechanism than the one they have now? My answer is that if hoarding were
reserved for new releases with significant commercial potential, I believe that consumers would be far more likely to
respect the choice to hoard, and a law with broad consumer support is easier to enforce than one that lacks it. n179
The use of a single file format will enable consumers easily to identify files they may not share and facilitate efforts
of software designers to create file sharing software that blocks transfers of proprietary files. The use of a single, identified file format captures some of the public benefits of copyright notice and registration. By allowing copyright owners
to opt out of file sharing so long and only so long as their work remains published in the single *.drm format, the proposal mitigates the effects of divisibility by requiring the copyright owners to coordinate with one another in exploiting
their works.
My specific proposal is inspired by an impulse to see whether an architecture like the one that has permitted the Internet to flourish as [*50] an information space can define a thriving music space. The U.S. recording industry's recent
enforcement campaign seems to seek to move us in a very different direction. It promises us something we would all
agree is desirable if we only renounce what to many of us is crucial. The recording industry appears poised to accept a
world in which we agree to allow consumer downloading (for a price) but not what the recording industry is calling
"uploading" - which is the state of having on your hard disk a music file that someone else can search for and copy from
you. Just as the idiosyncratic interests of large numbers of individuals who want to share is directly responsible for the
wealth and incredible variety of information we can find when we go looking for it, I think that consumer-to-consumer
file trading has the potential to make it economically feasible to distribute a much broader variety of music to a much
larger audience. I'd hate to lose that potential just because it's strange, new, unproven, and not yet well represented by
lobbyists.
FOOTNOTES:
n1. See Benjamin Kaplan, An Unhurried View of Copyright 75 (1966); Jessica Litman, Digital Copyright
104 (2001); see, e.g., American Geophysical Union v. Texaco, 60 F.3d 913 (2d Cir. 1994) ("the monopoly privileges conferred by copyright protection and the potential financial rewards therefrom are not directly serving to
motivate authors to write individual articles; rather, they serve to motivate publishers to produce journals, which
provide the conventional and often exclusive means for disseminating these individual articles").
n2. Stephen King's The Plant has been the most famous example of the direct distribution model. Stephen
King promised to keep writing the novel so long as three quarters of the individuals who downloaded each chapter paid a dollar for it. Initially, 76% of the people who downloaded chapters paid. After 4 chapters, the percentage of paying readers dropped to 46%, and King dropped the project. See M.J. Rose, Stephen King's "Plant" Uprooted, Wirednews, Nov. 28, 2000, at http://www.wired.com/news/culture/ 0,1284,40356,00.html. While 46%
probably exceeds the percentage of paying readers of a typical work of King fiction published in book form (allowing for book borrowers, used book purchasers, etc.), it fell below King's announced minimum.
n3. It is not yet clear whether peer-to-peer file sharing of music recordings decreases or increases sales of
CDs. Compare Felix Oberholzer & Koleman Strumpf, The Effect of File Sharing on Record Sales: An Empirical
Analysis (March 2004), available at http://www.unc.edu/<diff>cigar/papers/FileSharing_March2004.pdf (concluding that file sharing does not reduce and may increase sales), with Stan Liebowitz, Will MP3 Downloads
Annihilate the Record Industry? The Evidence So Far (June 2003), available at
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http://www.utdallas.edu/<diff>liebowit/intprop/records.pdf (attributing decline in CD sales to P2P file sharing).
See also Lawrence Lessig, Free Culture 68-73 (2004).
n4. See H.R. 2572, 108th Cong. (2003); H.R. 2517, 108th Cong. (2003); H.R. 4077, 108th Cong.,(2004); S.
2560, 108th Cong. (2004).
n5. See MGM v. Grokster, 380 F.3d 1154 (9th Cir. 2004); A&M v. Napster, 239 F.3d 1004 (9th Cir. 2001);
In re Aimster, 334 F.3d 643 (7th Cir. 2003)
n6. See RIAA v. Verizon, 351 F.3d 1229 (D.C. Cir. 2003).
n7. See RIAA, Recording Industry Begins Suing P2P File Sharers Who Illegally Offer Copyrighted Music
Online, Sept. 8, 2003, at http://www.riaa.com/news/newsletter/ 090803.asp; Jefferson Graham, Freeze! Drop the
song! File-swappers targeted, USA Today, October 8, 2004, at 3B.
n8. .See Information Infrastructure Task Force, Intellectual Property and the National Information Infrastructure: The Report of the Working Group on Intellectual Property Rights 7-17, 218-38 (1995).
N9. Id.; Litman, supra note 1, at 89-100.
n10. See, e.g., Jim Hu, Broadband Numbers Show Heightened Demand, C<abval1>Net News.com (October
31, 2003), at http://news.com.com/2100-1034-5100321.html; Matt Richtel, Fast and Furious: The Race to Wire
America, N.Y. Times, Nov. 16, 2003, 3 at 1.
n11. Television, but not by much. Tom Genova's TV history site, at
http://www.tvhistory.tv/1941%20QF.htm, tells us that NBC began commercial broadcasts in 1941. See also Erik
Barnouw, Tube of Plenty: The Evolution of American TELEVISION 99-148 (rev. ed. 1982). According to Asaf
Goldschmidt's and Atsushi Akera's introduction to the University of Pennsylvania's special exhibition on John
Mauchley, at http://www.library.upenn.edu/special/gallery/mauchly/jwmintro.html, the ENIAC computer came
along in 1946. See also 16 Encyclopedia Britannica 641-42 (1989).
n12. The 2003 Information Please/Time Almanac lists New Zealand's population at 3,908,037. Time Almanac 2003 with Information Please 828 (2002). The government of New Zealand currently describes its population as "a diverse multi-cultural population of 4 million people, the majority of whom are of British descent.
New Zealand's indigenous Maori make up around 14 percent of the population." See NZGO, People and History, at http://www.purenz.com/index.cfm/purenz_page/3DD63CE4-18FD 402B-A74A-A4C7A7AF5630.html.
The SNZ Pop Clock at http://www.stats.govt.nz/ domino/external/web/prod_serv.nsf/htmldocs/Pop+Clock estimates New Zealand's population on 11 October 2003 at 04:16:30 AM as 4,025,641.
n13. According to the Information Please/Time Almanac, Senator Mikulski was born in 1936. Information
Please/Time Almanac, supra note 12, at 45. See also, The Political Graveyard Index To Politicians at
http://politicalgraveyard.com/ bio/midkiff-milen.html ("Mikulski, Barbara Ann (b. 1936) - also known as Barbara A. Mikulski - of Baltimore, Md. Born in Baltimore, Md., July 20, 1936. Democrat."). The 2001 World Almanac doesn't include that information, but will tell you that Colin Powell was born in 1937. See World Almanac and Book of Facts 2001 at 320 (2000).
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n14. See, e.g., Yochai Benkler, Coase's Penguin, or Linux and the Nature of the Firm, 112 Yale L.J. 369
(2003).
n15. See Sesame, Plant (Plants), 1up Info Encyclopedia,
http://www.1upinfo.com/encyclopedia/S/sesame.html. ("Sesame was introduced by African slaves to the U.S.
South, where it sometimes becomes a weed. The sesame was once credited with mystic powers.").
n16. The conventional wisdom about information available on the Internet is that it lacks the reliability of
information printed on dead tree pulp. See infra text accompanying footnotes 30-35. That's a plausible charge
but not, I think, a true one. Much of information on the web is garbage (as is much information in print) and
seekers of truth have needed to develop new skills to distinguish reliable digital information sources from the
online equivalent of the Weekly World News, but they have developed those skills remarkably quickly. People
who find things out for a living, like reporters and librarians, have embraced the Internet as an invaluable research tool. See, e.g., Jeffrey Selingo, When a Search Engine Isn't Enough, Call a Librarian, N.Y. Times, Feb. 5,
2004, at G1.
n17. See supra note 2.
n18. See, e.g., Michael Froomkin's Home Page at http://personal.law.miami.edu/ <diff>froomkin/
n19. See, e.g., Rick Sowash: Composer and Author at http://www.sowash.com.
n20. See, e.g., Andrew Ross Sorkin, Building a Web Media Empire on a Daily Dose of Fresh Links, N.Y.
Times, Nov. 17, 2003 at C1, available at http://www.nytimes.com/ 2003/11/17/technology/17blog.html. I class
the blog as an example of consumer-to-consumer distribution rather than direct distribution because a central
feature of so many blogs is the hyperlinked recommendation to other material. See Lawrence Lessig, Free Culture 41 (2004). For a sample of the assortment of blogs currently posted in the Web, see
http://directory.google.com//top//computers/Internet/On_The_W eb/Weblogs; http://www.daypop.com;
http://www.blogspot.com; http://new.blogger.com.
n21. See Lawrence Lessig, The New Road to the White House: How grassroots blogs are transforming
presidential politics, Wired 11.11, November, 2003, at 136.
n22. I quote verbatim the text of two email messages:
Date: Sat, 18 Oct 2003 21:38:14 -0400
To: cyberprof_list@uclink4.berkeley.edu
From: Jessica Litman <litman@mindspring.com>
Subject: Hamilton v. Microsoft
Has anyone seen a copy of the complaint in Hamilton v. Microsoft, the class action suit filed in California
recently seeking to hold Microsoft liable for the vulnerability of its software?
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Date: Sat, 18 Oct 2003 19:38:14 -0700
To: Jessica Litman <litman@mindspring.com>
From: Wendy Seltzer <wendy@seltzer.com>
Subject: Re: Hamilton v. Microsoft
Cc: cyberprof_list@uclink4.berkeley.edu
I've put a copy up at <http://www.eff.org/<diff>wseltzer/hamilton_v_ microsoft.pdf> Much as I dislike Microsoft's operating system and tactics, a class action blaming the company for virus attacks and identity theft
seems a heavy-handed way to clean them up. - Wendy
n23. Volunteers also turn into entrepreneurs. Yahoo! and the Internet Movie Database are businesses that
began as content authored by volunteers and morphed into commercial services. Litman, supra note 1, at 103105.
n24. If you read a lot of science fiction, this model should feel familiar. A number of authors have portrayed
worlds in which characters are connected to a massive electronic database, which they can query at will. See,
e.g., Frank Herbert, Dune (1965); Joan Vinge, The Snow Queen (1980). This is different. The World Wide Web
is certainly not a database in the conventional sense. The information has neither structure nor organization. It
has no index, no table of contents, and no hierarchy. The domain name system supplies a hierarchy of location,
but information is not organized in any analogous fashion. Instead, the Internet gives me access to a fluid conglomeration of the items millions of individuals have chosen to make publicly available. A variety of third party
search engines purport to index only a small portion of the web. See Louis Introna & Helen Nissenbaum, Defining the Web: The Politics of Search Engines, 33 Computer 54 (Jan. 2000). Rather than a giant database, this is
the hive mind, where all members of the species share one another's knowledge and experiences. See, e.g.,
Orson Scott Card, Ender's Game (1985); Barbara Hambly, The Time of the Dark (1982); Robert A. Heinlein,
Methuselah's Children, reprinted in Robert A. Heinlein, The Past Through Tomorrow 655, 794-808 (1967);
Robert A. Heinlein, The Puppet Masters (1951); Robert A. Heinlein, Starship Troopers (1959); Frank Herbert,
Hellstrom's Hive (1974); Nancy Kress, Probability Moon (2000); Theodore Sturgeon, To Marry Medusa, reprinted in Theodore Sturgeon, The Joyous Invasions (1965). Books published during the cold war commonly
portrayed hive mind species as the enemy. Hive minders were thinly disguised communists, against whom
clever, independent capitalists always managed to prevail. See Card, supra; Heinlein, Starship Troopers, supra;
Herbert, supra; Sturgeon, supra. Frequently insectoid, hive mind creatures possessed great superiority of knowledge, often balanced by a deficit of creativity or ingenuity. See especially Card, supra.
n25. See, e.g., John Borland, et. al., Mother of Invention, C<abval1>Net News.com, Apr. 14, 2002, at
http://news.com.com/2009-1032-995679.html.
n26. See, e.g., infra notes 29, 66, 148, and 151, and accompanying text.
n27. See Litman, supra note 1, at 89-90. See, e.g., Herbert I. Schiller, Public way or private road? The "information highway,' The Nation, July 12, 1993, at 64.
n28. See Jessica Litman, Electronic Commerce and Free Speech, 1 Ethics & Information Technology 213
(1999).
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n29. PepsiMan is a promotional superhero featured in Japanese commercials for Pepsi Cola. See Pepsinut,
PepsiMan at http://www.pepsinut.com/PepsiMan.htm. The campaign has spawned a Japanese-only Nintendo
game and a variety of promotional toys. See id. The "Fuct of PepsiMan" is a pepsi-scented PepsiMan action figure available in Japan and in the occasional U.S. anime store.
See http://www.doctorhook.com/pepsiuniversecom/pmanaction.html; Francine's diary for Nov. 14, 2000 at
http://francine.diaryland.com/20001114.html.
n30. See, e.g., Carl M. Cannon, The Real Computer Virus, Amer. Journalism Rev., April, 2001, at 28 ("Internet ... has an unmatched capacity for distributing misinformation"); Paul S. Piper, Better Read That Again, 8
Searcher, Sept. 1, 2000, at 40 ("Misinformation on the Internet is, and always will be, a problem.").
n31. See, e.g., Michael Ollove, Turning the Pages, Balt. Sun, Jan. 10, 2000, at 1E; Fresh Air: David Talbot,
Founder And Editor In Chief Of Salon Magazine, Discusses The Trials And Tribulations Of Running An Online
Magazine (NPR radio broadcast, June 14, 2000).
n32. See Cannon, supra note 30. See also Correcting the Record: Times Reporter Who Resigned Leaves
Long Trail of Deception, N.Y. Times, May 11, 2003, at A1 (detailing NYT reporter Jayson Blair's fabrication of
facts in many NYT articles); Blake Morrison, Ex-USA Today Reporter Faked Major Stories, USA Today,
March 19, 2004, at 1A; Fabrications Mar Reporters Work, USA Today, March 19, 2004, at 16A ("Jack Kelley
wrote hundreds of stories during his 21-year career at the nation's largest newspaper. Substantial portions of
some of his most memorable stories are untrue.").
n33. Law is a particularly curious example. The editors of most law journals are students, and the closest we
get to fact checking is cite-checking, where students will confirm that sources support the assertions for which
they are cited. In practice, anything can be corroborated merely by identifying some document that asserts it.
n34. Florence Fabricant, Magazine Corrects a Cookie Recipe, N.Y. Times, Aug. 7, 1991 at C4 (Gourmet
magazine published a recipe calling for "oil of wintergreen" as an ingredient. Upon discovering that oil of wintergreen is toxic, the magazine sent out a warning letter to its 800,000 subscribers.); Heather McPherson, Icebox
Rolls and Other Things that Go Bump in the Kitchen, Orlando Sentinal Tribune, April 7, 2004, at F1 (error in
icebox roll recipe posed fire hazard and led to the recall of the April 2004 issue of Southern Living Magazine).
n35. For my Law in Cyberspace seminar, I post all students' assignments. See
http://www.law.wayne.edu/litman/classes/cyber/syllabus.html. I regularly get email from complete strangers objecting to one of my students' characterizations of facts or law and requesting or demanding that I replace the file
with a corrected version.
n36. See Clive Thompson, The Honesty Virus, N.Y. Times Magazine, March 21, 2004, at 24 (suggesting
that one reason people are careful what they post on the Internet is that they realize how easy it is for online liars
to get caught).
n37. According to the Audio Engineering Society Historical Committee, "Thomas Alva Edison, working in
his lab, succeeds in recovering Mary's Little Lamb from a strip of tinfoil wrapped around a spinning cylinder."
Audio Engineering Society Historical Committee, AudioTimeline, at
http://www.aes.org/aeshc/docs/audio.history.timeline.html. Edison and Emile Berliner each has a plausible claim
to the invention of the first phonograph record. Edison's invention was first, but used rotating cylinders rather
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than a flat disk. Berliner appears to have invented the disk format for phonograph recordings. See infra notes 3843 and accompanying text.
n38. See The History of Turntablism, at http://www.scratchdj.com/history.shtml.
n39. .Frederic W. Nile, Emile Berliner: Maker of the Microphone (1926).
n40. See Hall of Fame Inventor Profile: Emile Berliner at http://www.invent.org/ hall_of_fame/13.html.
n41. .See S. Berliner III, Emile Berliner Page, at http://home.att.net/<diff>BerlinerUltrasonics/berlemil.html.
n42. .Tommy Cichanowski, Tommy's History of Western Technology at
http://www.luminet.net/<diff>wenonah/history/edpart3.htm.
n43. 24 Electronic Design No. 4 (Feb. 1976)
n44. A. E. Housman. See, e.g., http://www.amherst.edu/<diff>rjyanco/literature/ alfrededwardhousman/poems/ashropshirelad/wheniwasoneandtwenty.html. The answer is not in Bartlett's Familiar Quotations (Justin Kaplan ed., 16th ed. 1992). The Encyclopedia Britannica has a nice squib on Mr. Housman, but
doesn't mention the titles of any of his poems. See 6 Encyclopedia Britannica 85 (15th ed. 1989). The poem is
included in Oscar Williams, A Little Treasury of Modern Poetry 62 (1952), but the book is indexed only by
author and not by title.
n45. We in the intellectual property community have come to accept a version of that principle based on a
primitive conception of the economic analysis of law: copyright promotes authorship by offering incentives to
authors that encourage them to create new works and distribute them to the public. Thus, it has become conventional to argue that enhanced copyright protection is desirable if and only if it enhances incentives, or that any
diminution in copyright protection will discourage the creation of new works by reducing authors' and publishers' incentives. See, e.g., Stephen Breyer, The Uneasy Case for Copyright, 84 Harv. L. Rev. 281 (1970); I Trotter
Hardy, The Internet and the Law: Copyright and "New-Use" Technologies, 23 Nova L. Rev. 657 (1999); Deborah Tussey, Owning the Law: Intellectual Property Rights in Primary Law, 9 Fordham Intell. Prop. Media &
Ent. L.J. 173, 226-28 (1998). The incentive rationale for copyright has become so conventional that it is easy to
forget that it is in fact relatively recent. See Litman, supra note 1, at 79-81. The Supreme Court first articulated
an incentive explanation for copyright in 1975, in a case in which it explained that copyright's incentives for
authors must yield to the public's interest in broad dissemination of protected works. See Twentieth Century Music v. Aiken, 422 U.S. 151, 156 (1975):
The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by
the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts. The immediate effect of our copyright law is to secure a fair return for
an "author's" creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good. "The sole interest of the United States and the primary object in conferring the monopoly," this
Court has said, "lie in the general benefits derived by the public from the labors of authors."
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quoting Fox Film Corp. v. Doral, 286 U.S. 123, 127 (1932)) (footnotes omitted). A discussion of the economic
rationale for copyright in the earlier case of Mazer v. Stein, 347 U.S. 201, 219 (1952), described the basis for
copyright in terms of reward and desert:
The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through
the talents of authors and inventors in "Science and useful Arts.' Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.
The rationale has evolved into a justification for any expansion in the scope of copyright protection: stronger
copyrights mean more powerful incentives mean that more works of authorship will be created and distributed to
a larger slice of the public. Opponents of copyright expansion have tried to argue against enhancements within
the confines of the incentive model, with little success. See, e.g., Eldred v. Ashcroft, 537 U.S. 186 (2002).
n46. See, e.g., Feist Publications v. Rural Telephone Service, 499 U.S. 340 (1991).
n47. See Litman, supra note 1, at 151-65; Jessica Litman, War Stories, 20 Cardozo Arts & Ent. L.J. 337
(2002); Danny O'Brien, Something Completely Different, Wired, Nov. 2003, at 29, 31.
n48. Copyright Act, ch. 320, 10, 19, 35 Stat. 1075, 1078-1079 (1909) (current version at 17 U.S.C. 401, 402
(2000)). Section 12 of the Act permitted copyright in designated classes of unpublished works to be secured
through registration. Those works - lectures, plays, paintings, sculptures and motion pictures - were commonly
commercially exploited without distributing copies to the public. Id. at 12
n49. See William F. Patry, Latman's The Copyright Law 154-55 (1986); see, e.g., J.A. Richards v. New York
Post, 23 F. Supp. 619 (S.D.N.Y. 1938).
n50. See, e.g., London v. Biograph, 231 F. 696 (2d Cir. 1916); Stone & McCarrick v. Dugan Piano, 210 F.
399 (E.D. La. 1914).
n51. Accord Lawrence Lessig, Free Culture 133-39 (2004).
n52. See Vincent Doyle et. al., Notice of Copyright, 1 Studies on Copyright 229, 231 (1968).
n53. See Alan Latman, The Copyright Law 121-41 (5th ed. 1979).
n54. See Barbara Ringer, Renewal of Copyright, 1 Studies on Copyright 503, 583 (1968).
n55. According to the Redstone Arsenal Historical Information, History of Black Military Service, at
http://www.redstone.army.mil/history/integrate/history.htm, African American soldiers served side by side with
whites as well as in segregated units until 1820, when Congress passed a law prohibiting the enlistment of
blacks in the Army. Bennie J. McRae, Jr.'s Lest We Forget site at http://www.coax.net/people/lwf/hisusct.htm
explains that African-American volunteers sought to serve in the Civil War, but Lincoln initially refused to per-
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mit enlistment of black soldiers. In 1862, Congress passed a law authorizing the use of black troops. A number
of black companies were recruited and in 1863, the War Department established the Bureau of Colored Troops.
During the Civil War, blacks served in segregated regiments, commanded by white officers. The Gilder
Lehrman Institute of American History, at http://www.gliah.uh.edu/historyonline/integrating.cfm, reports that it
was not until 1869 that Congress enacted a law requiring soldiers to fight in racially segregated units. In 1948,
President Truman issued an executive order directing the armed forces to desegregate. Integration began slowly
on a unit-by-unit basis, and in 1951, the Army Chief of Staff ordered all units to desegregate.
n56. See Jane C. Ginsburg & John M. Kernochan, One Hundred And Two Years Later: The U.S. Joins the
Berne Convention, 13 Colum.-VLA J. L. & Arts 1 (1988).
n57. See Litman, supra note 1, at 22-34.
n58. See, e.g., Sheldon W. Halpern, David E. Shipley & Howard B. Abrams, Copyright: Cases and Materials 43-44, 295-97 (1992). Compare Alan Latman and Robert A. Gorman, Copyright for the Eighties: Cases and
Materials 263-303 (1981), with Robert A Gorman & Jane C. Ginsburg, Copyright: Cases and Materials 383-413
(6th ed. 2001), and Benjamin Kaplan & Ralph S. Brown, Copyright 100-157 (1960), with Ralph S. Brown &
Robert C. Denicola, Copyright 35-48 (8th ed. 2002) .
n59. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984); Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975); United States v. Paramount Pictures, Inc., 334 U.S. 131,
158 (1948); Fox Film Corp. v. Doyal, 286 U.S. 123, 127-8 (1932). See also Stewart v. Abend, 495 U.S. 207,
228-29 (1990); L. Ray Patterson, Copyright in Historical Perspective (1968); David Lange, Recognizing the
Public Domain, 44 Law & Contemp. Probs. 147 (1981). But see Eaton S. Drone, Drone On Copyright 1-26
(Boston, Little, Brown & Co. 1879) (arguing that literary property has its origins in natural law and, like other
property, should be perpetual).
n60. See Jessica Litman, The Public Domain, 39 Emory L.J. 965, 1013 (1990); L. Ray Patterson, Free
Speech, Copyright and Fair Use, 40 Vand. L. Rev. 1 (1987).
n61. Pub. L. No. 94-553, 90 Stat. 2541.
n62. Berne Convention Implementation Act, Pub. L. No. 100-568, 102 Stat. 2853.
n63. In 1976, Congress enacted the 1976 Copyright Act. Although the 1976 Act required copyright notice,
see 17 U.S.C. 401, 402, it also included generous savings provisions that allowed copyright owners to cure notice defects. See 17 U.S.C. 404, 405, 406 (2000). By muting the effect of no notice or inaccurate notice, Congress caused notice to stop performing both its function of establishing what was and was not protected by copyright, and also its function of notifying the public what rights it had and whom it needed to ask for permission to
copy a work.
n64. See 1 William F. Patry, Copyright Law And Practice 437-54 (1994).
n65. There is a rich recent copyright literature analyzing the problems that have accompanied recent expansions in copyright rights. Most of the scholarship focuses on substantive expansion: in copyright subject matter,
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in the duration of copyright, and in the scope of copyright rights. See, e.g., James Boyle, The Second Enclosure
Movement and the Construction of the Public Domain, 66 Law. & Contemp. Probs. 33 (2003); Dennis S. Karjala, The Term of Copyright in Laura N. Gassaway, Growing Pains: Adapting Copyright for Libraries, Education and Society 33 (1997); Lawrence Lessig, The Future of Ideas 196-99 (2001); Neil Weinstock Netanel, Locating Copyright within the First Amendment Skein, 54 Stan L. Rev. 1, 12-30 (2001); L. Ray Patterson, Copyright and "the Exclusive Right" of Authors, 1 J. Intell. Prop. L. 1 (1993). Relatively little critical attention has
focused on the formalities.
n66. Someone named Susan Green submitted the classic version of the recipe to AllRecipe's site at
www.pierecipes.com, see http://www.pierecipes.com/az/ShakerLemonPie.asp. The same recipe was submitted
by someone named Pat Dennis to the Carnegie Mellon University recipe server. See http://www2.cs.cmu.edu/<diff>mjw/recipes/pie/sweet/shaker-lemon-pie.html. The Encyclopedia Britannica Online at
http://www.britannica.com/ ("Search Results You Can Trust") includes entries for "lemon," "pie" and "Shaker,"
but nothing for "shaker lemon pie."
n67. See 17 U.S.C. 201(d) (2000); H.R. Rep. No. 94-1476, at 123 (1976).
n68. See Mark A. Lemley, Dealing With Overlapping Copyrights on the Internet, 22 U. Dayton L. Rev. 547
(1997); Lydia Pallas Loren, Untangling the Web of Music Copyrights, 53 Case W. Res. L. Rev. 673 (2003); John
Schwartz, Music Sharing Service at M.I.T. is Shut Down, N.Y. Times, Nov. 3, 2003, at C13. Professor Lydia
Loren recently summed up the problems the music industry faces in putting its works online:
There are too many vested industry players for downstream users to be able to efficiently obtain the authorizations needed for downstream use of recorded music. Second, the divisible yet overlapping rights granted to
copyright owners lead to industry gridlock and problems with holdout behavior. Finally, the demands for payment from the downstream user by too many vested industry players, combined with industry consolidation, result in the price being too high to achieve the goal of copyright.
Loren, supra, at 698.
n69. See 17 U.S.C. 101 (2000):
To perform or display a work "publicly" means ... (2) to transmit or otherwise communicate a performance or
display of the work ... to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same
time or at different times.
n70. See TEEVEE Toons v. MP3.com, 134 F. Supp. 2d 546 (S.D.N.Y. 2001); UMG Recordings v. MP3.com,
109 F. Supp. 2d 223 (S.D.N.Y. 2000); see also Schwartz, supra note 68 (MIT music streaming service suspended
because of dispute over whether the licensors of the various elements of the service had the authority to sell MIT
the licenses it purchased).
n71. See Loren, supra note 68, at 696-702. The argument that any Internet appearance of a work should be
treated as an invasion of multiple copyright rights appears to have been first publicly articulated by Bruce Lehman's Information Infrastructure Task Force, see supra note 8, and accompanying text, in an effort to settle the
dispute between composers and music publishers over whether Internet transmissions of music should be
deemed public performances (licensed by ASCAP, BMI & SESAC) or distributions (licensed by the Harry Fox
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Agency, a subsidiary of the National Music Publishers Association). The Task Force's answer was both. See Information Infrastructure Task Force, supra note 8, at 213-25; Lemley, supra note 68, at 550-59.
n72. See, e.g., Michael W. Carroll, A Primer on U.S. Intellectual Property Rights Applicable to Music Information Retrieval Systems, Ill. J. Of Law, Tech. & Pol. (forthcoming Winter 2004); Loren, supra note 68, at
696-98.
n73. See Carroll, supra note 72.
n74. See Intellectual Reserve v. Utah Lighthouse Ministry, 75 F. Supp. 2d 1290 (D.Utah 1999); Gorman &
Ginsburg, supra note 58, at 416-20. Unfixed reproductions don't infringe the copyright owner's right "to reproduce the copyrighted work in copies or phonorecords." See 17 U.S.C. 106(1).
n75. See Playboy v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993); Gorman & Ginsburg, supra note 58, at
544-47.
n76. See A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). Private performances and
displays don't infringe the copyright owner's rights to perform and display the copyrighted work publicly. See 17
U.S.C. 106(4), 106(5); see, e.g., Columbia Pictures v. Professional Real Estate Investors, 866 F.2d 278 (9th Cir.
1989).
n77. Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir., 2002), withdrawn 336 F.3d 811, 2003 (9th Cir.
2003); Cf. Intellectual Reserve v. Utah Lighthouse Ministry, 75 F. Supp. 2d 1290 (D.Utah 1999)(posting URL
of infringing material on the web is contributory infringement). See generally Stacey L. Dogan, Infringement
Once Removed: The Perils of Hyperlinking to Infringing Content, 87 Iowa L. Rev. 829 (2002).
n78. See Electronic Frontier Foundation, RIAA Subpoena Database Query Tool, at
http://www.eff.org/IP/P2P/riaasubpoenas/. Or you could rely on the proprietary "RIAA Case Activity" service
from Lexis/Nexis Courtlink at http://www.lexisnexis.com/trial/ nalm100181clinkriaa.asp, which, as of November 2, 2003, was significantly out of date. The recording industry claimed that section 512(h) of the copyright
law, which requires Internet service providers to identify subscribers responsible for posting infringing material
on the ISP's servers, also required ISPs to name subscribers the RIAA had identified as maintaining allegedly infringing copies on their personal computers. See Recording Industry of America v. Verizon, Inc., 351 F.3d 1229
(D.C. Cir. 2004).
n79. The theory of liability appears to be based on the idea that the 106(3) distribution right in the U.S.
copyright statute should be read expansively to encompass the equivalent of the European right, under article 3
of the EU Directive, to make a work available or communicate it to the public. See Council Directive
2001/29/EC, art. 3 (2001). That makes little sense given the overall structure of the US copyright statute, which
separates public performance and public display from distribution to the public, and specifies distinct privileges
and exceptions for each of them. See 17 U.S.C. 109, 110, 111, 112, 118 (2000)
n80. H.R. 2752, 108th Cong. (2003). The Bill would define "placing of a copyrighted work ... on a computer network accessible to the public" as criminal copyright infringement unless the copyright owner had
authorized it. A conventional home or WiFi network without firewall protection is accessible to the public in the
sense the bill defines it.
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n81. See O'Brien, supra note 47, at 31.
n82. See A & M Records, Inc. v. Napster, Inc., 114 F. Supp. 2d 896, 925 (N.D. Cal. 2000) (plaintiffs claim
"it would be burdensome or even impossible to identify all of the copyrighted music they own" but have made a
minimal effort to describe the works involved in the lawsuit), aff'd in part, rev'd in part, 239 F.3d 1004 (9th Cir.
2001).
n83. See, e.g., Schwartz, supra note 68.
n84. See, e.g., Marci Hamilton, The Constitution and Your CDs, Findlaw's Writ, 2000, at
http://writ.news.findlaw.com/hamilton/20000919.html.
n85. See Sound Recordings As Works Made For Hire: Hearing Before the Subcomm. On Courts and Intellectual Property of the House Comm. on the Judiciary, 106th Cong. (May 25, 2000) (Statement of Marybeth Peters, Register of Copyrights).
n86. New York Times v. Tasini, 533 U.S. 483 (2001).
n87. Random House v. Rosetta Books, 150 F. Supp. 2d 613 (S.D.N.Y. 2001), aff'd, 283 F.3d 490 (2d Cir.
2002). See also Greenberg v. National Geographic, 244 F.3d 1267 (11th Cir. 2001).
n88. Compare Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998),
with Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1988).
n89. See Marci Hamilton, The Story Behind the MP3.com Judgment, Findlaw's Writ, 2000, at
http://writ.news.findlaw.com/hamilton/20001123.html.
n90. See, e.g., Lawrence Lessig, The Future of Ideas 120-202 (2001); Yochai Benkler, A Political Economy
of the Public Domain: Markets in Information versus the Marketplace of Ideas, in Rochelle Dreyfuss, Diane L
Zimmerman & Harry First, Expanding the Boundaries of Intellectual Property: Innovation Policy for the
Knowledge Society 267 (2001).
n91. See and hear, e.g., K(eep) I(t) SS(imple) W(eb) D(esign), The Syncopated Clock,
http://kissd.8m.com/jukebox/51-39.html.
n92. .The Music Of Room A-9! (2003). The CD includes three cuts by Faith Hill, three cuts by the Dixie
Chicks, four cuts by Kabah, four cuts by the Sugar Beats, two songs by Sarah Evans, one each by Toby Keith
and George Straight, and finally a rendition of "Chicken Cheer" by the students of Room A-9.
n93. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 347 (1991) ("facts do not owe
their origin to an act of authorship").
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n94. I probably need to stop here and defend my use of the term "sharing" since it's recently come under attack. Some people argue that whatever using peer-to-peer networking involves, it shouldn't be called "sharing."
Richard Parsons, the CEO of Time-Warner, told the U.S. Congress: "The popular term for trafficking in copyrighted works - "file sharing" - is a misnomer. It isn't sharing. It's online shoplifting. " Ensuring Content Protection in the Digital Age: Hearing Before the Subcomm. On Telecommunications of the House Commerce
Comm., 107th Cong. 30 (Apr. 25, 2002) (prepared statement of Richard Parsons, AOL Time-Warner). Similarly,
lawyer David Kendall, who represented President Clinton during his impeachment and currently represents Hollywood on copyright issues, has said:
The word "file-sharing" is a euphemism and a serious misnomer... . In fact, it's not really sharing at all, because
if I share a piece of cake with you, we're each doing with a little less - I have half a piece and you have half a
piece. This doesn't hold true for digital distribution since I don't lose anything by "sharing" with you.
David Kendall, Copyright in Cyberspace, (March 25, 2002) (Brigance lecture to Wabash College) available at
http://www.copyrightassembly.org/briefing/DEKWabashSpeech4.htm. Kendall is talking about sharing cake or
cookies. That's the wrong metaphor. Sharing digital objects is less like sharing cookies and more like sharing
ideas - when I share my ideas, I don't lose anything. Of course, it's precisely the difference between cookies and
ideas that causes us to treat the first as tangible property and the second as intellectual property. Cookies have to
be allocated. Ideas need not. Indeed, the purpose of the intellectual property regime is to achieve widespread
sharing by temporarily endowing IP with some - and only some - of the attributes of tangible property. If we can
achieve widespread sharing without endowing IP with those attributes, then we ought at least to question
whether the attributes of tangible property are the tools we need.
n95. See, e.g., Justin Hughes, Copyright And The Collapse Of The Fact/Value Distinction (2002) (manuscript on file with author).
n96. See, e.g., Michael Steven Green, Copyrighting Facts, 78 Ind. L. J. 919 (2003); Hartwell Harris Beall,
Comment; Can Anyone Own A Piece Of The Clock?: The Troublesome Application Of Copyright Law To
Works Of Historical Fiction, Interpretation, And Theory, 42 Emory L. J. 253 (1993); Anant S. Narayanan, Note;
Standards Of Protection For Databases In The European Community And The United States: Feist And The
Myth Of Creative Originality, 27 Geo. Wash. J. Int'l L. & Econ. 457 (1993).
n97. E.g., Jane C. Ginsburg, Sabotaging and Reconstructing History: A Comment on the Scope of Copyright Protection in Works of History after Hoehling v. Universal City Studios, 29 J. Copyright Soc'y 647 (1982);
Robert Gorman, Fact or Fancy? The Implications for Copyright, 29 J. Copyright Soc'y 560 (1982); Beryl Jones,
Copyright: Factual Compilations and the Second Circuit, 52 Brook. L. Rev. 679 (1986).
n98. See, e.g., Jane C. Ginsburg, "No Sweat" Copyright, 92 Colum. L. Rev. 338 (1992).
n99. The current version is H.R. 3261, 108th Cong. (2003).
n100. See H.R. 2652, 105th Cong. (1998).
n101. The Sugar Beats' website at http://www.sugar-beats.com/about/ explains that the musicians are thirtysomething parents who wondered why kids and parents didn't like to listen to the same music and hit on the idea
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of recording "hip" and "funky" tunes from the 60s, 70s and 80s in children's voices, to entice kids to sing along.
I wouldn't have thought it would work either, but Room A-9's experience suggests that I don't have a good handle on what sells.
n102. Early phonographs were marketed as dictation machines. Historians date the release of the first commercial recordings to 1889, when both the Edison Company and the Columbia Phonograph company sold wax
cylinders containing musical recordings. See, e.g., Steven E. Schoenherr, Charles Sumner Tainter and the
Gramophone (1999), http://history.acusd.edu/gen/recording/graphophone.html; Steven E. Schoenherr, Recording Technology History (revised Feb. 16, 2004) at http://history.sandiego.edu/gen/ recording/notes.html#cylinder; Washington Area Music Association, D.C. Music Timeline (2003), available at
http://www.wamadc.com/wama/dc_music_timeline.html.
n103. See Andrea L. Foster, Scholars Rally to Online Magazine's Defense Over Publishing Software Code,
Chronicle Of Higher Education, Feb. 16, 2001, available at http://www2.cs.cmu.edu/<diff>dst/DeCSS/Gallery/chronicle-16-feb 2001.html (quoting a film industry lawyer's complaints
about "a group of anti-copyright professors" who "represent a small extremist wing of the academic community"). See also Jonathan Zittrain, The Copyright Cage, Legal Affairs, July-August 2003, available at
http://www.legalaffairs.org/issues/July-August-2003/feature_zittrai n_julaug03.html (reporting that a colleague
asked him why all law professors who specialize in Internet law "hate copyright").
n104. Billboard reports that Jones' Feels Like Home is the top selling album as of March 15, 2004. See Billboard.com, Billboard Album Charts (Mar. 15, 2004), available at http://www.billboard.com/bb/charts/bb200.jsp.
n105. In an effort to make peer-to-peer file trading less attractive, some copyright owners have engaged in
technological self help measures, "spoofing" files by flooding peer-to-peer networks with files that do not contain what their name would indicate. See Catherine Greenman, Taking Sides in the Napster War; With Copyright Law at Issue, Sites Battle for the Ears and Minds of Music Lovers, N.Y. Times, Aug. 31, 2000, at G1.
n106. See, e.g., Webjay: Listener Created Radio, available at http://www.webjay.org/; Katie Dean, Music
Gurus Scout Out Free Tunes, WIRED News, April 9, 2004, available at
http://www.wired.com/news/digiwood/0,1412,62982,00.html. In the late 1990s, a number of search engines for
music popped up on the web, only to be shut down by litigation claiming that the services facilitated copyright
infringement. See Arista Records v. MP3Board.com, 2002 U.S. DIST LEXIS 16165 (S.D.N.Y. 2002); Twentieth
Century Fox v. Scour, Inc., No. (S.D.N.Y. filed July 20, 2000); Steven Musil, Scour to End File-Swapping Service, c<abval1>net News.com, Nov. 14, 2000, at http://news.com.com/2100-1023-248631.html.
n107. Compare, e.g., Stephen Manes, Full Disclosure: Copyright Law Ignore at Your Peril, P.C. World,
Sept. 2003 ("if pilfering persists and pirated content drives out the real thing, expect hardworking artists to look
for vocations that pay. Classic content will be free for the swiping, but most new stuff will be the product of
well-meaning amateurs ...") available at http://www.pcworld.com/howto/article/0,aid,111657,00.asp; Mike Stoller, Songs That Won't Be Written, N.Y. Times, October 7, 2000, at A15 ("by taking the incentive out of songwriting, Napster may be pushing itself closer to a time when there won't be any songs for its users to swap"),
with Rodger Walters Online, Interview with Everett True, April 5, 2002,
http://www.rogerwatersonline.com/the_age_interview.htm; Felix Oberholzer and Koleman Strumpf, The Effect
of File Sharing on Record Sales: An Empirical Analysis (March 2004), available at
http://www.unc.edu/<diff>cigar/papers/ FileSharing_March2004.pdf ("the financial incentives for creating recorded music are quite weak" and therefore reducing payments to recording artists "should have very little influence on entry into popular music"); Eben Moglen, Anarchism Triumphant: Free Software and the Death of
Copyright, 4 First Monday (1999), available at http://www.firstmonday.dk/issues/issue4_8/moglen/; and Mi-
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chael Pfahl, Giving Away Music to Make Money: Independent Musicians on the Internet, 8 First Monday
(2001), available at http://www.firstmonday.dk/issues/issue6_8/pfahl/. See also Courtney Love, Courtney Love
Does the Math, Salon.com, June 14, 2000, available at http://www.salon.com
n108. See Michael W. Carroll, Whose Music Is It Anyway?: How We Came To View Musical Expression
As A Form of Property, 72 U. Cin. L. Rev. __ (forthcoming 2004); Raymond Shih Ray Ku, The Creative Destruction of Copyright: Napster and the New Economics of Digital Technology, 69 U. Chi. L. Rev. 263, 306-311
(2002).
n109. See Raymond Shih Ray Ku, The Creative Destruction of Copyright: Napster and the New Economics
of Digital Technology, 69 U. Chi. L. Rev. 263, 305 (2002).
n110. The degree to which U.S. copyright law has sought to motivate creators rather than distributors is
open to question. See, e.g., Kaplan, supra note 1, at 75:
I have spoken of encouraging "creation" as well as "dissemination," but copyright has evidently more to do today with mobilizing the profit-propelled apparatus of dissemination - publication and distribution - than with
calling the signals into first unpublished existence; the latter process must be to a considerable extent selfgenerated.
n111. That's hard to tell. Some people insist that it is in the public domain already. See, e.g., J. Byron, Exposing the Happy Birthday Story (June 2003), available at
http://www.kuro5hin.org/story/2003/7/5/112441/6280; Wikipedia Fact Index, Happy Birthday, available at
http://www.fact-index.com/h/ha/happy_birthday.html; Urban Legends Reference Pages: Happy Birthday, We'll
Sue, available at http://www.snopes.com/music/songs/birthday.htm. The melody appears to have been written in
1893, and the lyrics some years later.
n112. See New York Times Co. v. Tasini, 533 U.S. 483 (2001); L.A. Times v. Free Republic, 54 U.S.P.Q.2D
1453 (C.D. Cal. 2000).
n113. See, e.g., Chris Nelson, Upstart Labels See File Sharing as Ally, Not Foe, N.Y. Times, Sept. 22, 2003
(cataloging ways that unauthorized file sharing helps independent record companies compete against conglomerates).
n114. See Pamela Licalzi O'Connell, Online Diary: Virtual Cemetery Visits And Naming That Tune, N.Y.
Times, Jan. 29, 2004. See, e.g., LetsSingIt.com (your lyrics engine on the Internet) (visited March 4, 2004), at
http://www.letssingit.com ("The lyrics on this site are not only submitted by visitors, but also maintained by the
visitors. You as visitor can submit and correct lyrics. These submissions are reviewed by other visitor [sic]
whereafter they are placed in the archive. With this, LetsSingIt.com always has the newest lyrics."). See also,
e.g., Musicnotes.com at http://www.musicnotes.com (a licensed commercial sheet music sales site with a lyrics
search engine) .
n115. If musicians create music primarily because of the control-based incentives supplied by copyright
law, one might argue that any encouragement of sharing will reduce the incentives that inspire musicians to produce music. Whether musicians will make music if the copyright regime is altered is an empirical question, but
the fact that so many musicians have complained so bitterly at their treatment at the hands of record companies
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without withholding their music suggests that musicians' motivations are more complex than the simple copyright-incentive model captures. See Ku, supra note 109, at 300-11. In addition, history indicates that the absence
of enforceable proprietary rights in music has not dissuaded musicians from creating and performing new works.
See Michael W. Carroll, Whose Music Is It Anyway?: How We Came To View Musical Expression As A Form
of Property, 72 U. Cinn. L. Rev. (forthcoming 2004). I nonetheless suggest in part V that we adopt a collective
license to pay the creators of music for peer to peer file trading.
n116. See Ku, supra note 109, at 305 (on the Internet, "copyright serves no purpose other than to transfer
wealth from the public and, as we shall see, artists to distributors. In this case, the use of Napster is not theft copyright is theft.")
n117. I'd probably be comfortable if we found ourselves in a world in which noncommercial consumer-toconsumer file sharing was not illegal. Period. No quid pro quo. I'm confident that we'd figure out ways to ensure
that creators of music and the businesses that market them earn money. I recognize that most people don't share
my confidence, and I'm willing to look hard for a middle ground.
n118. See, e.g., Diane Leenheer Zimmerman, Authorship Without Ownership: Reconsidering Incentives In
A Digital Age, 52 DePaul L. Rev. 1121(2003); Fred Goldring, Taking Issue: Abandon The "Shock And Awe'
Tactics, Billboard, Oct. 25, 2003 (available on LEXIS); Xeni Jardin, Creative License: Some analysts are proposing compulsory licenses as the answer to digital piracy, Grammy Magazine, July 25, 2003, available at
http://www.grammy.com/features/2003/0725_complicenses.html; Editorial: End to File-Swapping Wars Demands Ideas, Not Threats, USA Today, July 20, 2003, at 10A, available at
http://www.usatoday.com/news/opinion/editorials/2003-07-20-our-vi ew_x.htm; Electronic Frontier Foundation,
Let the Music Play, available at http://www.eff.org/share.
n119. See Future of Music Coalition, Major Label Contract Clause Critique (Oct. 3, 2001), available at
http://www.futureofmusic.org/contractcrit.cfm.
n120. But see a variety of reports indicating that peer-to-peer file sharing leads to increased CD sales. E.g.,
Katie Dean, Record Stores: We're Fine Thanks, Wired News, March 20, 2004, available at
http://www.wired.com/news/digiwood/0,1412,62742,00.html; Kevin Featherly, Long-Time File-Swappers Buy
More Music, Not Less - Update, Newsbytes, April 25, 2002, available at www.bizreport.com/news/3337 (summarizing study by Jupiter Media Metrix). See also Janis Ian, The Internet Debacle: An Alternative View, May,
2002, available at http://www.janisian.com/articles.html ("every time we make a few songs available on my
website, sales of all the CDs go up. A lot").
n121. See, e.g., William W. Fisher III, Promises to Keep: Technology, Law and the Future of Entertainment
199-258 (2004); Ku, supra note 109, at 312-21; Glynn S. Lunney, The Death of Copyright: Digital Technology,
Private Copying, and the Digital Millennium Copyright Act, 87 Va. L. Rev. 813, 852-69, 886-920 (2001); Neil
W. Netanel, Impose a Noncommercial Use Levy to Allow Free Peer-to-Peer File Sharing, 17 Harv. J. L. & Tech.
1 (2003). See also Zimmerman, supra note 118 ("street performer protocol"); EFF, Making P2P Pay Artists,
available at http://www.eff.org/share/compensation.php (summarizing various proposals).
n122. Some copyright owners have fought back against peer-to-peer file trading by "spoofing," see supra
note 105, and launching denial-of-service attacks against individuals perceived to be particularly active file traders. Their cumulative efforts have apparently succeeded in significantly reducing the reliability of peer-to-peer
file trading. The Recording Industry Association sought legislation that would have immunized copyright owners from suit or criminal prosecution for damage caused by "disabling, interfering with, blocking, diverting, or
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otherwise impairing the unauthorized distribution, display, performance, or reproduction of his or her copyrighted work on a publicly accessible peer-to-peer file trading network ... ." See H. R. 5211, 107[su'th'] Cong.
(2002). The legislation proved controversial and failed to make it out of the Judiciary Committee.
n123. See, e.g., Music on the Internet: Is There an Upside to Downloading?: Hearing Before the Senate Judiciary Comm., 106th Cong. (2000) (testimony of Fred Ehrlich, Recording Industry Association of America),
available athttp://www.riaa.com/ news/newsletter/press2000/071100_2.asp.
n124. See sources cited supra note 121; Daniel Gervais, Copyright, Money and the Internet, (Mar. 3, 2004),
available at http://www.commonlaw.uottawa.ca/faculty/prof/ dgervais/CopyrightMoneyAndTheInternet.pdf. See
also Zimmerman, supra note 118 ("street performer protocol"); EFF, Making P2P Pay Artists, available at
http://www.eff.org/share/compensation.php (summarizing various proposals). This is not the first time such proposals have been made; Richard Stallman made a similar proposal more than a decade ago. See Richard Stallman, Copywrong, WIRED 1.03 (July 1993), at www.wired.com/wired/archive/1.03/1.3_stallman.copyright.html
(proposing a tax in return for unrestricted digital copying). What is surprising is the growing consensus supporting payment or licensing systems designed to compensate copyright owners in return for legalizing consumer
digital copying.
n125. See Netanel, supra note 121, at 35-59.
n126. See Fisher, supra note 121, at 9-10, 199-258.
n127. See Ku, supra note 109, at 311-24. Ku suggests such a license as a last resort only if revenue from the
sales of albums augmented by voluntary "tipping" should prove insufficient.
n128. Lunney, supra note 109, at 911-20.
n129. See BMG Canada v. Doe [2004] F.C. 88 (Can.)
n130. Daniel J. Gervais, Copyright, Money and the Internet (March 3, 2004), available at
http://www.commonlaw.uottawa.ca/faculty/prof/dgervais/ CopyrightMoneyAndTheInternet.pdf.
n131. See Lessig, supra note 51, at 300-04.
n132. Electronic Frontier Foundation, A Better Way Forward: Voluntary Collective Licensing of Music File
Sharing (Feb. 2004), available at http://www.eff.org/share/ collective_lic_wp.pdf.
n133. The differences between these proposals are not, in fact, that large. Netanel's plan would permit unrestricted noncommercial use of most copyrighted material, see Netanel, supra note 121, at 37-43, while Fisher
limits his proposal to audio and video recordings, but would allow commercial as well as noncommercial uses.
See Fisher, supra note 121, at 203-05, 234-36. Lessig believes that P2P will become less desirable once enhanced Internet access makes ubiquitous licensed streaming an attractive alternative, and would therefore make
the system a temporary stopgap. See Lessig, supra note 51 at 297-303. Netanel, Fisher, Gervais and Lessig
would direct their alternative compensation to copyright owners, while Ku would reserve it for musicians and
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songwriters. Netanel, Fisher and Ku all, however, rely on a government-imposed, Copyright Office-administered
fee on the sale of digital goods and services to provide compensation for missed sales and royalties. Netanel
would leave the current copyright law untouched except for his noncommercial user privilege and levy. See
Netanel, supra note 121, at 37-59. Ku would retain the current law for analog distribution so long as works were
distributed in the analog as well as the digital channel. Ku, supra note 109, at 321-24. Fisher envisions his system's ultimately superseding the current statutory copyright. Fisher, supra note 121, at 9-10, 246-51. Despite
these differences, however, the core of all of the proposals is to permit, indeed encourage, consumers to engage
in consumer-to-consumer distribution while compensating creators from a fund financed by the sales of related
equipment and services. Gervais and the Electronic Frontier Foundation rely on similar mechanisms but argue
that rights holders should adopt the mechanisms voluntarily and administer them collectively rather than relying
on government-administered licensing. As a practical matter, the adoption of any compulsory license would require the endorsement of music and recording industry copyright owners. The differences between the compulsory license proposals and the voluntary collective license proposals are, thus, more formal than fundamental.
n134. Section 115 of the Copyright Act: In Need of Update?: Hearing Before the Subcomm. On Courts and
Intellectual Property of the House Judiciary Comm., 108th Cong. (2004) (statement of RIAA President Cary H.
Sherman), available at http://www.house.gov/judiciary/sherman031104.htm.
n135. Lindsay Martell, A License to Share: Group Proposes Music Licensing Scheme for Music File Networks, ABCNews.com, March 1, 2004, at http://abcnews.go.com/sections/
scitech/TechTV/music_download_license_techtv&uscore ;040301.html (quoting RIAA Vice President David
Sutphen: "I don't want the federal government deciding the value of things like music.").
n136. See id.; Drew Clark, Intellectual Property: Music Software Officials Debate Merits of Licenses, Filters, National Journal's Technology Daily, (Feb. 27, 2004), (available on LEXIS); EFF Voluntary License Plan
Brings RIAA "Thanks But No Thanks,' Washington Internet Daily, Feb. 26, 2004.
n137. See, e.g., Tom Spring, Three Minutes with RIAA Chief Cary Sherman, PC World, Oct. 30, 2003, at
http://yahoo.pcworld.com/yahoo/article/0,aid,113133,00.asp; sources cited supra notes 131-133.
n138. See Roy Mark, RIAA v. P2P: Same Old Song, InternetNews.com, Feb. 27, 2004, at
http://www.internetnews.com/bus-news/article.php/3318901.
n139. Considered in the context of music, the changes envisioned by proponents of blanket licensing for
peer-to-peer file sharing are hardly extreme. Consumers already have a privilege to make non-commercial digital copies of musical recordings, and the right to distribute those copies to members of the public. See 17 U.S.C.
1008, 109 (2000). The scope of the copying privilege is contested. The statute prohibits copyright infringement
actions "based on the manufacture, importation, or distribution of a digital audio recording device, a digital
audio recording medium, an analog recording device, or an analog recording medium, or based on the noncommercial use by a consumer of such a device or medium for making digital musical recordings or analog musical
recordings." Id. Digital musical recordings are defined to exclude material objects "in which one or more computer programs are fixed." Id. 1001. That has led some to argue and at least one court to conclude that section
1008 shields noncommercial recordings burned to music CDs (on which a royalty has been paid), or recorded on
analog or digital audiotape, but excludes recordings saved to a computer hard disk. See A&M Records v. Napster, Inc., 239 F.3d 1004, 1024 (9th Cir. 2001). See also Recording Indus. Ass'n of Am. v. Diamond Multimedia
Sys, 180 F.3d 1072, 1076-81 (9th Cir. 1999)(computers are not "digital audio recording devices" within the
meaning of the statute). Under 17 U.S.C. 109, "the owner of a particular copy or phonorecord lawfully made under this title ... is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord." So long as the copy is made lawfully, whether under the fair use privilege
Page 135
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or under the section 1008 shelter for consumers' noncommercial copies of music recordings, the owner of the
copy is entitled to sell it or give it away. Accord M. Nimmer & D. Nimmer, Nimmer On Copyright 8.12
[B][3][c]; U.S. Copyright Office, Report of the Register of Copyrights Pursuant to 104 of the Digital Millennium Copyright Act 155-157 (2001). Consumers, moreover, already pay a levy intended to compensate composers, musicians and record companies for the sales lost through private consumer copying. See 17 U.S.C. 1003,
1004 (2002). Netanel, Fisher, Lunney and Ku would extend both the privilege and the levy to copying and dissemination over digital networks.
n140. See Daniel Gervais, Application of an Extended Collective Licensing Regime in Canada: Principles
and Issues Related to Implementation (2003); Daniel Gervais, Collective Management of Copyright and Neighbouring Rights in Canada: An International Perspective, 1 Canadian Journal of Law & Technology 21-50
(2002).
n141. See 17 U.S.C. 112(e), 114(d), 115, 118, 119 (2000).
n142. See Broadcast Music Inc. v. CBS, 441 U.S. 1, 4-14 (1979).
n143. See, e.g., Donald S. Passman, All You Need To Know About The Music Business 70-79, 210-22 (5th
ed. 2003)
n144. See U.S. v. Broadcast Music, Inc., 316 F.3d 189 (2d Cir. 2003); U.S. v. ASCAP, 902 F. Supp. 411
(S.D.N.Y. 1995).
n145. See, e.g., Music on The Internet: Hearing Before the House Judiciary Comm. Subcomm. On Courts,
the Internet, and Intellectual Property, 107th Cong. 2-3 (2001) (statement of Rep. Howard Berman), available at
http://www.house.gov /judiciary/72613.pdf; id. at 17-18 (statement of the National Music Publishers Association); id. at 52 (statement of Lyle Lovett, ASCAP); Rachna Dhamija & Frederik Wallenberg, A Framework for
Evaluating Digital Rights Management Proposals, at
http://sims.berkeley.edu/<diff>fredrik/research/papers/EvaluatingDRM.html.
n146. See Jon Healy, New Napster to Play by Music Industry's Rules, Los Angeles Times-Mirror, Oct. 7,
2003, at C1; Martin LaMonica, Debating Digital Media's Future, c<abval1>net News.com, at
http://news.com.com/2100-1025-5079007.html. (Sept. 18, 2003).
n147. See Litman, supra note 1, at 178-86; Loren, supra note 68, at 716-19.
n148. See Molikidan Tunksuu, Dragonball Z a Titles and AirDates Guide, at
http://epguides.com/DragonballZ/. Dragonball Z is a violent and modestly homoerotic product of Japanese animation derived from a manga (comic book) authored by Akira Toriyama. The original manga and animated series appear to have been intended for an audience of grownups, but Funimation has edited them to make them
more nearly suitable for children and licensed them to the Cartoon Network. See Usenet News Groups,
alt.fan.dragonball, at http://groups.google.com/groups?hl=en&lr=&ie=UTF-8&oe= UTF8&group=alt.fan.dragonball, and Usenet News Groups, alt.fan.dragonball, at
http://groups.google.com/groups?hl=en&lr=&ie=UTF-8&oe= UTF8&group=alt.fan. dragonball.us. The original
manga have been translated into English and published by Viz Communications; the original Japanese television
episodes can be viewed (in Japanese) on the International cable channel.
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n149. In 1995, I published an article suggesting that copyright law should be reformulated as an exclusive
right to exploit works commercially. See Jessica Litman, Revising Copyright Law for the Information Age, 75
Or. L. Rev. 19, 40-48 (1995). If that proposal were adopted, consumers would be free to engage in peer-to-peer
file sharing, while commercial peer-to-peer file sharing software and services would face liability. That result
seems to accord with many people's instincts about what makes sense. I don't mean by offering this reform plan
to repudiate that proposal, which I continue to support. See Litman, supra note 1, at 180-85.
n150. See Jessica Litman, Ethical Disobedience, 5 Ethics And Information Technology 217 (2003).
n151. See Randy Cohen, The Ethicist: Is it Ethical to Google After a Blind Date?, N.Y. Times Magazine,
Dec. 15, 2002, at 50; Neil Swidery, A Nation of Voyeurs: How the Internet Search Engine Google is Changing
What We Can Find Out About One Another - And Raising Questions About Whether We Should, Boston Globe
Magazine, Feb. 2, 2003, at 10.
n152. See, e.g., Robert P. Merges, Compulsory Licensing vs. the Three "Golden Oldies" Property, Contract
Rights and Markets, CATO Institute Policy Analysis No 508, at http://www.cato.org/pubs/pas/pa508.pdf (Jan.
15, 2004); sources cited supra notes 135-137.
n153. The current debates over proposals for alternative compensation systems have tended to devolve into
religious disagreements over whether dividing the money up among claimants requires counting every download, as Fisher's system would, or relying on a less precise measure in order to preserve the privacy of downloaders, as Gervais and others suggest. Counting every download poses problems other than privacy. It makes
little sense to require a measuring system that is so expensive that it consumes the bulk of the proceeds. As an
initial matter, the law should instruct the government entity charged with disbursing the funds in very general
terms, to ensure the money is distributed fairly among creators. Fine tuning, if it proves necessary, can come
later.
n154. Here I part company from both Netanel and Fisher, who insist that compensation under their proposed
alternatives should flow to the copyright owners rather than to the creators of works. Netanel suggests that, under his system, empowered creators will no longer need to rely on intermediaries and will increasingly retain
copyright ownership. See Netanel, supra note 121, at 58-59. I'm skeptical.
n155. As well as encouraging creators to designate agents to collect on their behalves, we should permit
them to designate percentages of any proceeds that should be disbursed directly to intermediaries under whatever contracts might call for a royalty split.
n156. Cf. 17 U.S.C. 114(g)(1) (2000) (providing that recording artists are entitled to receive payments from
copyright owners for licensed webcasts in accordance with the terms of their recording contracts).
n157. See generally Passman, supra note 143, at 72-77, 208-235.
n158. See Copyright Arbitration Royalty Panel (CARP) Structure and Process: Hearing Before the Subcomm. On Court, the Internet and Intellectual Property of the House Judiciary Comm., 107th Cong. (2002),
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available at http://www.house.gov/judiciary/ 80194.pdf (statement of MaryBeth Peters, Register of Copyrights);
id at 150-51 (letter from Hilary Rosen, RIAA); id. at 167 (letter from Kevin Klose, National Public Radio).
n159. See EFF, A Better Way Forward, supra note 132, at http://www.eff.org/share/ collective_lic_wp.php.
n160. See Fisher, supra note 121, at 205-23; Netanel, supra note 121, at 35-84.
n161. See, e.g., 17 U.S.C. 111(d)(1)(B) (1976) (cable compulsory license semiannual royalty calculated as a
percentage of gross receipts); 115(c) (mechanical compulsory license monthly royalty computed by number of
phonorecords made and distributed); 1004 (digital audio recording device royalty calculated as percentage of
wholesale price of each device).
n162. See, e.g., Copyright Act, (1985) (Can.) 66 (collective license royalty for public performance); 82
(levy on blank audio recording media).
n163. See Fisher, supra note 121, at 216-23. It makes sense to impose a fee on the commercial activities and
objects most heavily involved in peer-to-peer music file trading. I include in this category commercial peer-topeer file trading software, whether sold or advertising-supported. I'd personally also include the hardware and
software that allows people to use their computers as home entertainment centers, especially those bundled into
a computer by original equipment manufacturers: computer sound cards, computer speakers and software for CD
ripping and music playing. It may make sense to collect a fee on broadband access, either as a broadband tax or
a quasi-negotiated broadband peer-to-peer subscription fee.
n164. See Ku, supra note 109, at 300-05.
n165. I believe that in general outline, this solution is appropriate for copyrighted works other than music.
Cf. Litman, supra note 1, at 180-86 (outlining alternative to current copyright law). I focus on music here because the differences between my proposal and current law are narrowest in the music context, and because the
peer-to-peer file sharing of music recordings is perceived to be the current emergency facing copyright legislators.
n166. Although desirable, the proposal's Berne-compatibility is optional. We could comply with our treaty
obligations by limiting the application of any provision to "United States works" as defined in 17 U.S.C. 101.
United States works include all works first published in the U.S. Cf. Public Domain Enhancement Act, H.R.
2601, 108th Cong. 3 (2003) (limiting the bill's provisions to "United States works"). The Berne Convention
obliges us to protect the copyrights of members of Berne nations without requiring any formalities.
n167. To the extent possible, we should do this without further undermining the United States' debatable
position that it complies with the Berne Convention. Our argument that US law protected droit moral, always
dubious, seems even less tenable after Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, (2003).
After Dastar it is difficult to make a credible argument that the United States complies with our obligations under article 6 bis of the treaty. The WTO, further, has ruled that 17 U.S.C. 110(5) (2000) violates our treaty obligations under articles 11, 11 bis, and 13 of Berne. See International Developments, 23 No. 6 Ent. L. Rep. 4
(2001); WTO, Award of the Arbitrators in United States - Section 110(5) of the US Copyright Act, at
http://www.wto.org/english/tratop_e/ dispu_e/160arb_25_1_e.pdf.
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n168. See 17 U.S.C. 1202 (2000):
"copyright management information" means any of the following information conveyed in connection with copies or phonorecords of a work or performances or displays of a work, including in digital form, except that such
term does not include any personally identifying information about a user of a work or of a copy, phonorecord,
performance, or display of a work:
(1) The title and other information identifying the work, including the information set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author of a work.
(3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.
(4) With the exception of public performances of works by radio and television broadcast stations, the name of,
and other identifying information about, a performer whose performance is fixed in a work other than an audiovisual work.
(5) With the exception of public performances of works by radio and television broadcast stations, in the case of
an audiovisual work, the name of, and other identifying information about, a writer, performer, or director who
is credited in the audiovisual work.
(6) Terms and conditions for use of the work.
(7) Identifying numbers or symbols referring to such information or links to such information.
(8) Such other information as the Register of Copyrights may prescribe by regulation, except that the Register of
Copyrights may not require the provision of any information concerning the user of a copyrighted work.
n169. I've been unable to get a definitive answer to my question whether any extant file format (for example, one of the formats generated by the now moribund Secure Digital Music Initiative, see
http://www.sdmi.org), would fit the bill, or whether a new format would need to be designed. The chief difficulty in adopting any of the proprietary formats now in use seems to be in ensuring backward-compatibility with
legacy CD players.
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n170. Naming the format ".drm" burdens it with baggage from the debate over the propriety of digital lockup. See, e.g., Julie E. Cohen, DRM and Privacy, 18 Berkeley Tech. L.J. 575 (2003); Raymond Shih Ray Ku,
Consumers and Creative Destruction: Fair Use Beyond Market Failure, 18 Berkeley Tech. L.J. 539 (2003). My
preference would have been to name the format .cmi, but "cmi" has a settled inconsistent meaning.
n171. Implementing the proposal would require an amendment to the mechanical compulsory license provisions in 17 U.S.C. 115 (2000). As amended, section 115 would need to require any recording of a work issued
only in .drm format to itself be in .drm format. See Loren, supra note 68.
n172. If, as some claim, the recording and music industries are intent on protecting their hot new hits from
peer-to-peer networking but are resigned to the traffic in unauthorized copies of older releases, that feature
should not be too bitter to swallow.
n173. I would, for example, expect composers and performers to want to consider withdrawing works upon
terminating copyright transfers under section 203 or 304.
n174. Cf. 17 U.S.C. 203(a) (2000).
n175. Cf. 17 U.S.C. 405 (a)(2) (2000).
n176. Cf. 17 U.S.C. 104 (2000).
n177. Despite the Berne Convention's prohibition of formalities, it should be possible to establish an optional registry of withdrawn works, and provide that listing of a work on the registry for 24 months would allow
the copyright owner to show constructive notice of withdrawal. Cf. 17 U.S.C. 401, 408 (2000) If a voluntary registry is deemed to pose Berne compliance problems, then copyright owners suing for infringement of withdrawn
works would need to prove actual notice.
n178. See Guitarsam's Ezine, at http://www.guitarsam.com/ezine/2001.2/5.htm (Feb. 2001) (Peter Noone,
the Herman of Herman's Hermits, performs to this day).
n179. See Litman, supra note 1, at 111-121.
Page 140
Maynor, Dawn. Just Let the Music Play: How Classic Bootlegging Can Buoy
the Drowning Music Industry (2002)
Page 141
LEXSEE 10 J. INTELL. PROP. L. 173
Copyright (c) 2002 Journal of Intellectual Property Law Association
Journal of Intellectual Property Law
Fall, 2002
10 J. Intell. Prop. L. 173
LENGTH: 22177 words
NOTE: JUST LET THE MUSIC PLAY: n1 HOW CLASSIC BOOTLEGGING CAN BUOY THE DROWNING
MUSIC INDUSTRY
NAME: Dawn R. Maynor
SUMMARY:
... "Close enough," he said, handing her the album. ... This Note revisits the federal anti-bootlegging provisions enacted
by Congress in 1994 to combat the draining of revenue from the music industry by the widespread availability of bootleg recordings. ... This fourth type of music piracy constitutes a major threat to the economic viability of the music industry in terms of traditional record sales, as well as to the protection that federal copyright law affords to musicians,
producers, and record companies. ... The debate over copyright protection for musical sound was finally settled by Congress when it amended the 1909 Copyright Act via the Sound Recording Act of 1971. ... The U.C. Convention failed to
give complete copyright protection on an international scale because of difficulty in enforcement due to an expansion of
music piracy in general (i.e., counterfeiting, piracy, and bootlegging) on the international scene. ... The band had similar success with a live recording from Morrison, Colorado's Red Rocks amphitheater that was issued in 1997 while the
band was working on a new studio album. ...
TEXT:
[*173]
Introduction
Minneapolis, MN 1961. Tina Twirler and her best-friend-since third-grade Susie Spinner climbed noisily into
Tina's VW and drove downtown. The girls had been looking forward to tonight's concert for weeks. Folk artist Bob Dylan was their favorite musician, and Susie had been fortunate enough to win two tickets in the local radio station's
phone-in contest. The occasion was a special one because the following day, Tina was moving to California for college.
Susie planned to stay in Minneapolis and keep her cashier job at the Safeway. She had saved her paychecks for the last
month so she could treat her best friend to a nice dinner and the Dylan show before she moved away. The two friends
could not have asked for a better performance. Dylan sang all of their favorite songs, and the girls danced and laughed
until they were exhausted. The next day, as Tina shoved the last box of books into the crowded van, the two girls
hugged each other tight, promised to always stay in touch, and Susie waved until Tina's blue Volkswagen went out of
sight down the road.
Los Angeles, CA 1969. Tina "Marigold" Twirler wandered into a small record store and thumbed through the
stacks of vinyl. She noticed an inauspicious white cardboard cover marked with the letters "GWW".
"What's this one?" she asked the man behind the counter.
"We just got that one in," the man replied. "Some live Dylan from back in '61 and, uh, Woodstock, I think."
"Could it be?" mused Tina, half under her breath. She emptied her purse, then ran outside and rifled through her
van for spare change. Ten dollars seemed rather exorbitant for a record, but she just had to have it. She returned to the
store, spread $ 9.89 out on the sticker-covered counter, and smiled hopefully at the bearded storekeeper.
"Close enough," he said, handing her the album.
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10 J. Intell. Prop. L. 173, *
"Thanks, brother! Peace," Tina replied gratefully and hurried back to her room to play the record. Sure enough, part
of the recording was the Minneapolis show she had attended with her long lost friend what seemed like a lifetime ago.
[*174] Though the sound quality left much to be desired, she could not help but grin practically from ear to ear as the
melody wafting from the hi-fi refreshed the evanescent memories of the show in her mind, transporting her back in time
to that wonderful evening.
Lost in her reverie, Tina failed to notice that the "GWW" album bore no graphics, photos of Dylan, or a record
company's mark of designation. She was just glad that someone had recorded the show, thereby allowing her to experience the show all over again. n2
This Note revisits the federal anti-bootlegging provisions enacted by Congress in 1994 to combat the draining of
revenue from the music industry by the widespread availability of bootleg recordings. Part I defines "classic" bootleg
recordings, distinguishes this term from counterfeit and pirated recordings, and notes the sources of these recordings.
Part II discusses the slow development of copyright protection for sound recordings in the United States. Part III describes the historical context of the anti-bootlegging legislation, specifically the Universal Copyright Convention, the
Berne Convention, the Rome Convention, the Geneva Convention, the Uruguay Round of negotiations under the General Agreement on Tariffs and Trades ("GATT"), and the resulting Agreement on Trade Related Aspects of Intellectual
Property Rights ("TRIPS"). Part IV opens the author's analysis of the bootlegging issue by examining some of the constitutional conundrums arising from enactment of the federal scheme, particularly the Eleventh Circuit's decision in
United States v. Moghadam. n3 Part V continues by offering varied perspectives on the practice from music industry
officials, artists and their legal counsel, music enthusiasts, and the bootleggers themselves. Part VI concludes with the
author's determination that the music industry should use the sustained demand for bootlegged live recordings to its
advantage. With the proliferation of online piracy in the last few years, the music industry now faces the destruction of
the business model that has been its mainstay for almost a hundred years. Though the federal anti-bootlegging statute
provides a means of suing and penalizing commercial bootleggers with large operations, industry enforcement efforts
should be focused on the revenue-draining forms of music piracy since classic bootleggers provide a public service by
archiving the fleeting moments of a live musical performance. Since the anti-bootlegging law has rather shaky constitutional underpinnings, and should at least be amended y Congress to remedy some of its defects; the music industry
should take more aggressive steps to actually embrace bootlegging at the market level and use it to offset some of
[*175] the damage caused by online piracy. Artists should use the appeal of live bootlegs to their advantage and may
find that the practice actually enlarges the market for their music, as well as ticket sales for their shows. It seems that the
music industry is finally beginning to accept the fact that, illegal or not, bootlegs are here to stay. Some members of the
business are using this fact as a means of boosting legitimate record sales. If other record company executives would
follow suit, they may find the overall market for music augmented and the sting of online piracy diminished with the
help of an unlikely accomplice: the music bootlegger.
I. My Bluest Tape: n4 What Bootlegs Are and Where They Come From
The Supreme Court, in Dowling v. United States, n5 described a "bootleg" phonorecord as one containing an "unauthorized copy of a commercially unreleased performance." n6 Sources of these recordings vary from fan-recorded
concerts or television appearances to studio "outtakes" not intended for release to the public that nonetheless end up in
the public purview courtesy of some studio employee or custodian. n7 The Recording Industry Association of America's
("RIAA") anti- piracy unit n8 describes music piracy, in general, as "illegal duplication and distribution of sound recordings." n9 Piracy traditionally takes three forms: counterfeit, pirate, and bootleg recordings. According to the RIAA,
counterfeits are duplicates of commercially released albums, intended to look just like the original. n10 Pirated recordings are the "unauthorized duplication of only the sound of legitimate recordings." n11 These recordings often take the
form of compilations of selected songs from multiple albums. n12 Conversely, a bootleg recording is the unauthorized
recording of an artist's live performance that has not been previously released. n13 With the growth of the Internet,
broadband, and sound technology over the last few years, a fourth category of music piracy has been added to the traditional list of three. Online piracy involves uploading a [*176] copyrighted recording to make it available to the public,
or downloading a recording from an Internet site. n14 The RIAA is careful to point out that uploading or downloading
music is unlawful copyright infringement, even if the recording is not sold or used for commercial gain. n15 This fourth
type of music piracy constitutes a major threat to the economic viability of the music industry in terms of traditional
record sales, as well as to the protection that federal copyright law affords to musicians, producers, and record companies. According to the RIAA, manufacturers of music products shipped 10% fewer units (compact discs, videotapes,
and digital videodiscs) in the first six months of 2002 than for the same period in 2001. n16 Compact disc shipments
dropped 7.2% in the first half of 2002, while confiscations of counterfeit and pirated discs increased by almost 70%.
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n17 Though it is difficult to systematically evaluate these losses, since some portion of them may be related to vagaries
in the number of releases and popularity of artists in the relevant time period, industry executives attribute the decline in
sales largely to online piracy.
The RIAA's definitions are helpful in distinguishing among the forms of musical piracy, though they are often used
inconsistently among lay persons. Furthermore, though they are not legal definitions, they are in accord with the Court's
definition in Dowling, n18 and with the rather broad definition of piracy contained in the Agreement on Trade Related
Aspects of Intellectual Property Rights ("TRIPS") itself. n19
The most accessible source of live material for bootleggers to exploit is amateur recordings of live concerts. n20
The typical means of obtaining these recordings involves surreptitious recording of the show from the audience using
small microphones. n21 A few recordings are obtained through a direct soundboard feed, sometimes with the assistance
of the sound engineer (for a band that allows taping) and other times by unauthorized collusion with the sound engineer
(for a band that prohibits it). n22 As one would expect, such recordings are cherished by music collectors since soundboard mixes are generally of very high quality n23 (to [*177] say nothing of the relative dearth of bootlegs with good
sound quality). Examples of these highly collectible bootlegs include a series of " 'bettyboards' " derived from mixes by
Betty Cantor-Jackson, sound engineer for the granddaddy jam band Grateful Dead during the 1970s n24 and, more recently, the opening show of the "Sit-n- Ski" Tour performed by Athens, Georgia-based touring machine Widespread
Panic in 1996. n25
The quality of bootlegs has improved tremendously since the days of "Great White Wonder," both in sound fidelity
and packaging design. Though serious music fans had long collected and traded bootleg recordings through informal
tape-trading exchanges, n26 the appearance of the compact disc ("CD") in the late 1980s brought bootleg recordings
into many homes throughout the world. n27 Some bootlegs benefit from noise reduction technology and mastering, n28
and use of digital transfer ensures that there is no loss of fidelity from copy to copy. n29 Whether the sound quality is
superb or sub-par (as is more often the case), n30 some bootlegs are packaged, designated "rare imports," and sold for
around fifty dollars for a two-CD set. n31
II. An Honest Tune: n32 The Development of Copyright Protection For Sound Recordings
Prior to 1970, sound recordings were completely unprotected by American copyright law. n33 The long and arduous road to copyright protection for sound recordings began with the powers granted to Congress in the United States
Constitution to encourage the creation and dissemination of creative works by giving exclusive rights to authors for a
limited period of time. n34 Musical [*178] compositions were originally granted federal copyright protection in 1831,
when a copyright holder received the right to sell a musical score from a particular work. n35 Protection of the composition itself was especially important at that time since several machines were invented between 1831 and 1909 that mechanically reproduced musical compositions. n36 Though the Supreme Court eventually held that the term "Writings"
in the Copyright Clause was meant to include "any physical rendering of the fruits of creative, intellectual, or aesthetic
labor, n37 the early copyright statutes (1831 and 1909) protected against the," reproduction of musical notation (i.e. the
composition as it appeared drawn out on a musical staff) but not against the reproduction of actual musical sound. n38
The distinction between musical notation and musical sound reproduction played a significant role in the development of copyright protection for music. In White- Smith Music Publishing Company v. Apollo Company, the Supreme
Court grappled with sound reproduction technology when a copyright holder of musical scores and a music publisher
sued a company that reproduced the copyrighted composition on player piano rolls. n39 The Court decided that the rolls
were just pieces of equipment and not "copies" under copyright law so there was no infringement on the part of the defendant company. n40 Even though the piano rolls contained the composer's creative effort, the Court denied them
copyright protection. n41
Congress recognized the inadequacy of copyright protection and soon passed the Copyright Act of 1909. The 1909
Act allowed for "fixation" in copyright law, such that the copyright owner was allowed to choose the first person to
archive the composition on a piano roll or phonorecord. n42 Essentially, subsequent performers could lawfully record
their own version of the musical work as long as they paid the requisite compulsory license fee. n43 Although the 1909
Act offered [*179] greater protection for composers, it did not answer the question of whether someone could legally
reproduce a copyright owner's performance by paying the rather nominal compulsory licensing fee instead of recording
his or her own performance of the same composition. n44 Early evaluation of that question suggested that the answer
was yes. n45
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In 1970, the same question arose in Duchess Music Corporation v. Stern. n46 There, the defendant argued that her
release of a compilation of multiple artists' work on cassette was legal because she paid the compulsory license fee and
made a "similar use" of the protected matter, as the 1909 Act required. n47 The defendant reproduced the cassette in
25,000 copies. n48 The court determined that the defendant had not made a "similar use" of the artists' copyrighted material but instead had made "identical copies" of the protected work. n49 Thus, the pirated cassettes were deemed to
stand outside the coverage of the compulsory licensing scheme. n50
Because the court had finally drawn a clear distinction between the copying of original performances and the creation of a new version by recording, copyright owners were afforded some protection against pirates and counterfeiters.
The Ninth Circuit maintained this stringent position on copyright protection for music. In United States v. Taxe, the
court determined that a compilation on eight-track tapes did not constitute "independent fixations" under the Copyright
Act where the pirates had simply re-recorded previously released albums with minute variations from the original. n51
The Supreme Court facilitated another advancement in the protection of sound recordings with its 1973 decision in
Goldstein v. California. n52 One question in that case was whether a state law that imposed harsher penalties on music
pirates than those provided by the 1909 Act violated the Supremacy Clause of the Constitution. n53 Goldstein involved
pirated compilations of various previously [*180] released albums. The state of California charged the defendant pirates with criminal copyright infringement. In deciding that the state's penal code provisions did not violate the Supremacy Clause, the Court noted that copyright protection does not come under exclusive federal jurisdiction; n54 "under the
Constitution, the States have not relinquished all power to grant to authors 'the exclusive Right to their respective Writings.' " n55
The debate over copyright protection for musical sound was finally settled by Congress when it amended the 1909
Copyright Act via the Sound Recording Act of 1971. n56 The Sound Recording Act became effective on February 15,
1972. n57 It extended federal protection to actual sound recordings apart from and in addition to that for the musical
composition, as long as the originality and fixation requirements of the 1909 Act were met. n58 As meaningful as the
Sound Recording Act was in protecting sound recordings, it did not apply to works recorded before February 15, 1972,
many of which were by artists such as Bob Dylan and The Beatles, who ended up being among the most bootlegged
artists of all time. n59
The Copyright Act of 1976 presently provides a copyright holder exclusive rights to copyrighted works, including:
1) the right to reproduce the work in copies i.e. phonorecords, n60 2) the right to prepare derivative works i.e. works
based on the original copyrighted work, n61 and 3) the right to distribute the work. n62 The 1976 Act does contain
some exceptions to these rights, such as the compulsory licensing provision n63 and the fair use limitation. n64 Anyone
who distributes copies of copyrighted sound recordings without authorization of the copyright holder may face up to
five years in prison and fines reaching $ 250,000. n65
Although the 1976 Act provided powerful protection from the distribution of pirate and counterfeit recordings,
none of its original legislation worked to regulate the unlawful distribution of bootleg recordings. The 1976 Act had
potential impact on those who bootlegged live performances in two respects. First, all exclusive rights under federal
copyright law were made divisible. [*181] Consequently, record companies were in a position to prosecute bootleggers
without the participation and/or consent of the artist whose performance was bootlegged. Second, since sound recordings had become the subject of federal protection, bootleggers faced the possibility of being under the surveillance of
the Federal Bureau of Investigation. n66
Since the 1976 Act offered no true protection against bootleg recordings, artists and record companies who became
aware of bootlegging operations were compelled to craft alternate means of curbing the process. In Dowling v. United
States, n67 the Supreme Court determined that charging a bootlegger with transporting stolen goods in interstate commerce was one alternate means that would not withstand judicial scrutiny. n68 Paul Dowling allegedly spent about $
1000 each week for postage to send bootlegged Elvis Presley performances to customers throughout the country. n69
The Ninth Circuit upheld Dowling's conviction for mail fraud, interstate transportation of stolen goods, and conspiracy
to transport stolen property interstate. n70 The Supreme Court held that the criminal penalty provisions of the National
Stolen Property Act did not extend to the interstate transport of bootleg recordings: "[T]he property rights of a copyright
holder have a character distinct from the possessory interest of the owner of simple 'goods, wares, [or] merchandise,' for
the copyright holder's dominion is subjected to precisely defined limits." n71
Because the defendant in Dowling had not stolen the bootlegs themselves (other than the fact that they were manufactured and distributed without the permission of the copyright holders for the musical compositions contained on
them), he could not be penalized for violation of the National Stolen Property Act. n72
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Justice Blackmun explained that Congress had not been clear in categorizing bootleg recordings as stolen property
for purposes of the National Stolen Property Act. He compared Dowling's prosecution to an earlier case, Harper & Row
Publishers v. Nation Enterprises. n73 There, a magazine called The Nation published excerpts from former President
Gerald Ford's as yet unpublished memoirs without permission. n74 If Dowling could be convicted of interstate transportation of stolen goods in his case, then The Nation would have been guilty of the same [*182] offense for mailing its
magazines to subscribers, even though the magazines themselves were not stolen. n75 The heart of the problem in
Dowling was that the sound recordings at issue were not protected by copyright (because they were unreleased recordings of unprotected live performances) even though the musical compositions (i.e. the individual songs) they embodied
were. n76
Although the United States stood at the fore in enhanced copyright protection for sound recordings, the rest of the
world was not so inclined. The U.S. produces and uses more copyrighted works than any other country in the world.
n77 The export value of American motion pictures is higher than that of American steel. n78 Music piracy alone is estimated to cause a loss of approximately $ 300 million each year from the $ 12 billion American recording industry, n79
so it is easy to understand why the United States had a peculiar interest in an effective international scheme of enforcement for music piracy.
Bootleggers soon moved their operations to countries such as Luxembourg and Germany in order to produce large
quantities of bootlegs without concern for the disfavoring attitude of American courts. n80 Bootleg cassettes tended to
be the format of choice since developing countries lacked technology to manufacture CDs in quantity. n81 Bootleggers
were quite efficient in their operations; some were able to distribute bootlegs with rapid ease. For instance, a Rolling
Stones concert in Czechoslovakia was available on cassette at the band's next show the following evening. n82 On July
13, 1985, several concerts were performed around the world under the collective title of "Live-Aid" in order to raise
funds for famine relief. n83 The concerts' organizer, Bob Geldof, complained about the widespread availability of bootleg cassettes of the shows which cropped up quickly since the shows were the subject of live television and radio broadcasts. n84 The government of Indonesia, where the 1.5 million copies of Live-Aid on cassette were made, was indifferent to the manufacture of the illegal tapes, even though their dissemination [*183] quite literally took food out of the
mouths of the famine victims the shows were intended to benefit. n85
Although worldwide copyright protection continues to be a struggle, international treaties and negotiations have established some degree of minimum protections. A series of treaties have governed international intellectual property
rights.
III. The Rise of 17 U.S.C. ß 1101
a. the universal copyright convention: temporary protection
The United States encouraged the formation of the Universal Copyright Convention ("U.C. Convention") after
World War II as a temporary means of protecting U.S. copyright interests. n86 The current U.C. Convention was ratified in Paris on July 24, 1971 and became effective on July 10, 1974. n87 The convention states that works already published in member states and works to be published in member states are to enjoy the same protection in other member
states as works published in those other member states would be granted. n88 The U.C. Convention failed to give complete copyright protection on an international scale because of difficulty in enforcement due to an expansion of music
piracy in general (i.e., counterfeiting, piracy, and bootlegging) on the international scene. n89
Despite its shortcomings, the U.C. Convention may still provide some protection against music piracy in general
and bootlegging in particular since almost two dozen nations are members of the U.C. Convention but not of the Berne
Convention. n90
Since the United States withdrew from the United Nations' agency that oversees the U.C. Convention, the recording
industry relies heavily on the Berne Convention for comprehensive copyright protection for sound recordings on an
international scale. n91
[*184]
b. the berne convention: minimum standards
Before the adoption of TRIPS, the Berne Convention for the Protection of Literary and Artistic Works (1886) n92
was the oldest multilateral copyright convention. n93 It established minimum standards of protection but had little effect
in the area of piracy. n94 The Berne Convention did not offer copyright protection for musical compositions until its
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revision in 1971, and then it offered scant protection for sound recordings. n95 Another Berne Convention provision
pertaining to music stated that authors of dramatic and musical works had the exclusive right of allowing for public performance of their work. n96
The Berne Convention was intended to provide a body of international law characterized by flexibility so that more
nations would be inclined to join. n97 Consequently, it led to the creation of a "Union" of member nations for purposes
of protecting authors and their literary and artistic works. n98 The treaty offers a system to be adopted by member states
that includes an outline of measures to be taken in ensuring that the Berne Convention will function as intended. n99
Any nation may join the Berne Convention, but each is required to enact domestic legislation that meets the minimum
standards created by the treaty. n100 Under the Berne Convention, authors are given ten intellectual property rights that
are considered the general rights that authors should receive if their work is to hold value: n101 "[M]oral rights, reproduction rights, translation rights, broadcasting and public communication rights, public recitation rights, adaptation
rights, recording rights, cinematography rights, public performance rights, and the right of [*185] pursuit." n102 In
spite of this comprehensive list of intellectual property rights, the Berne Convention did not address music piracy at all.
n103
The Berne Convention is under the auspices of the World Intellectual Property Organization ("WIPO"), in Geneva,
Switzerland, for purposes of administration. n104 While its chief responsibility is to facilitate the protection of intellectual property, n105 the Berne Convention has been criticized for failure to require its members to enact law that truly
enforces the protection of intellectual property rights. n106 Berne is tolerant of individual national approaches to intellectual property issues, and although it provides for the resolution of disputes between member states by the International Court of Justice, no case has been brought before that court. n107 Because of the treaty's leniency, commercial
infringements of intellectual property rights abounded in the 1980s and early 1990s, some of which constituted total
breaches of the minimum standards of protection required by the treaty. n108
The United States joined the Berne Convention in 1988 when it enacted the Berne Convention Implementation Act.
n109 Given the United States' position as the world's largest user and producer of copyrighted works, n110 it was inevitable that the problems inherent in the Berne Convention would be of particular interest to this country.
c. the rome convention: protection for performances
In 1961, the International Convention on the Protection of Performers, Producers of Phonograms and Broadcast
Organizations (popularly called the Rome Convention) broadened the rights granted by the Berne Convention by including musicians, record companies, and broadcast media. n111 The Rome Convention included the possibility of prevention of "the fixation, without their consent, of (his) unfixed performance," and the reproduction of a phonogram by
[*186] the performer and producer. n112 One commentator suggests that since the United States favors the idea of economic incentive as the rationale behind the copyright monopoly, it avoided the Rome Convention as it had refused to
recognize the moral rights provision of the Berne Convention. n113 At that time, the United States was one of several
countries that did not legally protect an artist's live musical performance, even though it was one of the major creators
and exporters of entertainment in the world. n114 The United States found the minimum standards of the Rome Convention inadequate to protect American copyright owners in sound recordings n115 and pushed for creation of a multilateral convention in the face of tremendous revenue loss due to piracy and other infringements. n116
d. the geneva convention: international piracy protection
The Geneva Copyright Convention of 1971 n117 offers international protection against the piracy of phonograms
or phonorecords. n118 Member states are required to offer national protection with minimum requirements such as a
twenty-year minimum term. n119 One commentator suggests that the United States gave up a better scheme of copyright protection by favoring the Geneva Convention over the Rome Convention, which covers performances, including
those captured on sound recordings. n120
[*187]
e. gatt and trips: fixation of performances, outtakes, and broadcasts prohibited
The Agreement on Trade Related Aspects of Intellectual Property Rights n121 ("TRIPS") was sparked by concern
for the many problems in the interconnectedness of intellectual property and international trade. n122 The widespread
availability of bootleg recordings left artists with little incentive to engage in development of musical projects that may
not succeed economically or be protected by adequate enforcement of intellectual property rights. n123 Some record-
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ings left the artist with no profits at all, and ultimately the production of legitimate recordings decreased, as did overall
international trade. n124
One provision of TRIPS concerned bootleg recordings in particular: "In respect of a fixation of their performance
on a phonogram, performers shall have the possibility of preventing the following acts when undertaken without their
authorization: the fixation of their unfixed performance and the reproduction of such fixation." n125 Though this language is almost identical to that used in the Rome Convention which the United States did not join, some suggest that
this implies an affirmative property right that goes beyond the subjects of the Rome Convention. n126 Thus it appears
that TRIPS prohibits recording live performances or the release of studio outtakes, n127 as well as the fixation of
broadcasts. n128 Section 5 of Article 14 of TRIPS extends protection of performance, production, and broadcast rights
for fifty years after the performance. n129
To combat its own concerns regarding bootleg recordings, the United States moved for placing TRIPS on the
agenda of the Uruguay Round. n130 On April 15, 1994 in Marrakesh, Morocco, the United States and 110 other nations
signed the [*188] Final Act embodying the results of the Uruguay Round of Multilateral Trade negotiations. n131
Regarding international copyright, TRIPS incorporated the mandates of the Berne Convention and established its
own rights and standards. n132
f. the uraa: civil and criminal penalties
In keeping with Article 14 of TRIPS, sections 511 and 512 of the Uruguay Round Agreements Acts ("URAA") set
forth civil and criminal penalties under the federal scheme for unauthorized fixation and "trafficking in" n133 sound
recordings and music videos of live musical performances.
As a result of the adoption of the URAA in December 1994, the United States Congress extended federal protection
against bootlegging to live performers for the first time in history. n134 Although numerous states had enacted state law
protections, n135 there was no uniform federal protection against unsanctioned fixation of live musical performances
before the adoption of the URAA. The anti-bootlegging provisions of the URAA protect only live musical performances. n136 Performers are granted the right to control the fixation of their performances, along with any reproduction
of those fixations and their distribution or subsequent communication to the public. n137 Section 512 also [*189] includes the stipulation that the fixation does not have to occur in the United States. n138
Further, section 512 recognizes the important role that state law has played in curbing bootlegging and provides
that the URAA's anti-bootlegging provisions do not preempt any remedies available to artists under state common law
or statutory law. n139
Besides various criminal penalties, the URAA also requires that once a bootlegger is convicted, all infringing copies as well as " 'any plates, molds, matrices, masters, tapes, and film negatives by means of which such copies or phonorecords may be made' " be forfeited and destroyed. n140 The URAA also instructs the Secretary of the Treasury to
promulgate regulations allowing for seizure of unauthorized bootlegs by United States Customs Service officials and to
allow artists to register with Customs so that they may be notified of the seizure of any copies that appear to infringe
their rights under the Act. n141
g.17 u.s.c. ß 1101: federal bootlegging prohibition
Subsequent modifications to U.S. copyright law were based on TRIPS and section 512 of the URAA. The resulting
statute was the first federal anti-bootlegging statute, and is now codified at 17 U.S.C. ß 1101. n142
[*190]
IV. Constitutional Conundrums
a. copyright clause quandaries
The federal anti-bootlegging scheme raises some interesting constitutional questions. Since it extends protection to
unfixed live musical performances, section 1101 covers works that would not have met the constitutional "writings"
requirement for copyright protection. n143 By their very nature, live performances are not fixed in a tangible medium of
expression. This fact led some commentators to question whether the constitutional basis for section 1101 could in fact
be the Copyright Clause. n144
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In addition to the "writings" requirement, the protection extended under section 1101 states no specific duration of
the term of protection. This would seem to mean that the protection has a potentially unlimited duration, and thus would
be contrary to the "Limited Times" restriction on grants of copyright protection described in the Copyright Clause. n145
One writer has suggested three possible solutions to the "Limited Times" issue: 1) application of existing copyright
duration provisions for the performer's rights in a live musical performance; 2) application of section 301 n146 to fixations of live performances; and 3) application of Article 17(1) of the 1996 WIPO Treaty, which required a fifty-year
term of protection from the end of the year in which fixation occurs. n147 A related inquiry is whether any statute of
limitations applies to section 1101 remedies against those who engage in activities described in 18 U.S.C. 2319(A), i.e.
selling, renting, or otherwise trafficking in bootleg recordings. n148 According to commentator Susan Deas, if section
1101 remains unaffected by a statute of limitations, its time limit on remedies would be the same as that for murder.
n149 It is unlikely that Congress intended this perpetual [*191] availability of remedies; rather the questions left open
by section 1101 are likely the result of faulty drafting in the rush of implementation of the URAA. n150
b. first amendment woes
Section 1101 also raises First Amendment issues, particularly in its lack of an affirmative defense for acts under
section 1101 that amount to fair use n151 of a live musical performance. n152 Since fair use does not appear to be a
defense to bootlegging under section 1101, the statute could be held to infringe First Amendment free speech rights.
The fair use doctrine allows courts to uphold copyright law against free speech challenges. The lack of a fair use defense in section 1101 is a deficiency that Congress must remedy to avoid challenges on a First Amendment basis in the
future. n153
Since the protection granted to artists under the anti-bootlegging statute does not appear to be absolute, their rights
may be limited by the First Amendment's protection of speech. According to William Patry, section 512 of the URAA
(and its United States progeny section 1101) contain rights that are granted under the Commerce Clause of the Constitution, not under the Copyright Clause. n154 Section 512 of the URAA indicates that bootleggers "shall be subject to the
remedies provided in Sections 502 through 505 (of Title 17), to the same extent as an infringer of copyright" (emphasis
added). n155 Since the anti-bootlegging protections arise under the Commerce Clause and not the Copyright Clause, the
"fair use" doctrine n156 and the statutory preemption n157 of the 1976 Copyright Act do not apply. There may be an
exemption under the First Amendment if the performance qualifies as protected speech. In enacting the anti-bootlegging
legislation, Congress did note that the law would "not apply in cases where First Amendment principles are implicated."
n158 The Senate noted that small portions of an [*192] unauthorized fixation used in a news broadcast or for other
purposes of comment or criticism would be an example of an exempt use under the First Amendment. n159 It seems
clear that such uses would qualify as de minimis uses, but that begs the question of whether a First Amendment exemption should be implicitly recognized, and, if so, how broad that exemption should be.
c. the test case
In 1999, the Eleventh Circuit had the opportunity to address some of the constitutional issues raised by section
1101 in the first case to challenge its constitutionality. Ali Moghadam was arrested during Operation Goldmine, a sting
operation aimed at the capture of key individuals involved in the underground music bootleg industry. n160 Undercover
agents set up a meeting between eleven international and American bootleggers and a record distributor from Orlando,
Florida. n161 When the bootleggers arrived, they were arrested by United States Customs Service officials. n162 The
sting resulted in the seizure of more than 800,000 illegal CDs from warehouses in Orlando. These albums were largely
attributed to Tori Amos and the Beastie Boys, and had a street value of $ 20 million. n163
Moghadam challenged the constitutionality of his conviction under 18 U.S.C. ß 2319A. n164 He alleged that the
statute under which he was convicted was unconstitutional in that it did not fall within any of the federal legislative
powers enumerated in Article I, ß 8 of the Constitution. n165 After an examination of the background of the antibootlegging statute, the court observed that the rights created by the anti-bootlegging provisions were actually related
rights that were similar to copyright law but more accurately described as " 'quasi- copyright' or sui generis protection."
n166 While the copyright owner has six exclusive rights under 17 U.S.C. ß 106, the only exclusive right created by the
anti-bootlegging statute is that of recording or re-communicating a live musical performance. n167 The [*193] Eleventh Circuit continued in Moghadam with an analysis of the Copyright Clause and whether the statute in question could
be sustained under its authority. n168 Moghadam relied only on the limitation expressed by the "Writings" requirement
in the Constitution's Copyright Clause. n169 The concept of a "Writing" suggests that the protected matter must be expressed in a material form with some degree of permanence. n170 The concept that copyright protection is given only to
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works that have been "fixed" in a tangible medium of expression is bolstered by two hundred years of jurisprudence and
legislative interpretation.
Though the concept of a "Writing" has been expanded to include a sound recording n171 in response to technological advances, the fixation requirement remains intact. The Supreme Court has also considered whether recordings of
musical shows are protected under the Copyright Clause. n172 Moghadam argued that a live performance had not been
reduced to a tangible form and that but for the bootlegger's decision to record the show, the performance would remain
unfixed and therefore unprotected. n173
The court noted in dictum that this problem with satisfaction of the fixation requirement would preclude use of the
Copyright Clause as the source of Congressional power for passage of the anti-bootlegging statute. n174
The court continued its analysis of Moghadam's conviction in examining the Commerce Clause of the Constitution
as an alternative source of Congressional authority for implementation of the anti-bootlegging provision. n175 The
Constitution states that Congress has the legislative authority "to regulate Commerce with foreign Nations, and among
the several States." n176 The Commerce Clause gives Congress power to legislate regarding: (1) use of channels of
interstate commerce, (2) instrumentalities and persons or things in interstate commerce, and (3) intrastate activities that
substantially affect interstate commerce. n177
[*194]
In examining 2319A (the criminal code's counterpart to section 1101), the test was whether a "rational basis existed
for concluding that a regulated activity sufficiently affected interstate commerce." n178 Although section 1101 is not
based on any particular legislative findings n179 and lacks a jurisdictional element that might assist the court in evaluating the statute's validity under the Commerce Clause, n180 the court concluded that section 2319A clearly prohibited
conduct that bore a substantial effect on interstate commerce since by its very nature, bootlegging is done " 'for purposes of commercial advantage or private financial gain.' " n181 The court relied on the underlying purpose of Congress
in enacting the statute (i.e., compliance with an international treaty intended to provide uniform global protection of
valuable intellectual property rights) and determined that "the link between bootleg compact discs and interstate commerce and commerce with foreign nations is self- evident." n182
The court proceeds with an analysis of a possible tension between upholding the anti-bootlegging statute under the
Commerce Clause and some case law n183 which supports the notion that the Commerce Clause cannot be used by
Congress to eliminate a limitation placed upon Congress in another constitutional grant of power. n184 The court artfully dodges this potential pitfall by noting that the Copyright Clause does not positively forbid Congress from extending copyright- like protection under other constitutional grants of authority (like the Commerce Clause) to works that
might not satisfy the fixation requirement of the term "Writings." n185 The court explained that it follows that extending quasi- copyright protection to unfixed live musical performances is not inconsistent with [*195] the Copyright
Clause. n186 The court goes so far as to say that extending this protection complements existing copyright law since a
live musical performance satisfies the originality requirement and because extending quasi-copyright protection fosters
the purpose of the Copyright Clause to promote the arts. n187
In regards to the fixation requirement (the basis for Moghadam's challenge), the court noted that "although a live
musical performance may not have been fixed, or reduced to tangible form, as of the time the bootleg copy was made, it
certainly was subject to having been thus fixed." n188 The court finds support for this conclusion in an example from
existing copyright law. n189 The court suggests that the incorporation of this fiction into existing copyright law suggests that the fixation requirement is not a "rigid, inflexible barrier" to the power of Congress. n190 If a performer could
have protected a live musical performance under existing copyright law merely by simultaneously recording the show,
then it follows that extending copyright-like protection to such a performance is not inconsistent with the Copyright
Clause. n191
The court notes that the "Limited Times" provision of the Copyright Clause may also be implicated by the antibootlegging statute, but does not decide whether extending copyright-like protection under it might be inconsistent with
the "Limited Times" provision because Moghadam did not raise the issue in the appeal. n192 It seems certain that this
question will give rise to some future challenge to section 1101 and its criminal counterpart, section 2319A, but the case
has not come up yet. n193
In handing down its decision in Moghadam, the Eleventh Circuit was the first court to uphold copyright legislation
that exceeds the Copyright Clause's authority under the Commerce Clause. n194 This holding has its critics, since it
gives rise to the notion that any copyright legislation could find support under the Commerce Clause, which might ob-
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viate the need for the Copyright Clause and run afoul of [*196] its intent. n195 Others find the Moghadam ruling
sound. n196 Though the court managed to traverse the sticky legal quagmire and rendered a decision that seemed to
balance public policy against the stringent requirements of Constitution and precedent, the ultimate issue raised by both
parties in Moghadam (i.e. the constitutionality of section 1101 under the Copyright Clause) was not affirmatively settled. n197 For the moment, everyone is happy, with the obvious exception of Ali Moghadam. The music and recording
industry has a means for protecting its revenue; artists have a means of curbing public distribution of unauthorized recordings of their musical performances; and the courts still have a hold on two hundred years worth of copyright jurisprudence. The United States Supreme Court denied certiorari for the Moghadam case, perhaps content to let the decision stand.
V. That's Me in the Spotlight: n198 Perspectives on Bootlegging
While the legal environment progressed from one lacking in protection for sound recordings to one characterized
by stringent penalties for infringers and unauthorized recorders, the music industry currently faces a business reality that
can only be described as grim. For around a hundred years, major record labels ran a bricks and mortar type business i.e.
one built on piece by piece sales. From vinyl to eight track to cassette to compact disc, the industry has financed musical
careers and artistry through mass marketing to music fans and collectors. With the proliferation of online piracy in the
last few year, record sales have declined, even for very popular albums. The latest U2 album sold only around a million
copies, even though it included two songs nominated for Grammy awards and the band performed music from it at last
year's Super Bowl. n199 Red Hot Chili [*197] Peppers' latest effort, which features several popular singles, to date has
sold about three million copies though the band is popular worldwide. n200 The music industry faces a reality of fewer
pieces sold, and must find a way to compete with free online music distribution to replenish the coffers that sponsor
artists and recordings and to protect artists' intellectual property rights.
Not surprisingly, perspectives on the bootlegging issue among artists, industry officials, and entertainment attorneys range from staunch disapproval, to acquiescence, to open allowance of taping. The music industry is realizing that
even with federal legislation on its side, bootlegging is here to stay. Though the music industry is beginning to take
steps toward using the demand for bootlegs to its advantage, major record companies and their trade organization maintain a hardline stance against the practice of recording musical performances without the permission of the artist, especially when those unauthorized recordings are sold for profit.
a. the riaa: temperance union of the music industry
The RIAA divides music piracy into four categories. n201 It regards all forms of music piracy as stealing, plain and
simple. n202
To all artists, 'copyright' is more than a term of intellectual property law that prohibits the unauthorized duplication,
performance or distribution of a creative work. To them, 'copyright' means the chance to hone their craft, experiment,
create, and thrive . . . [b]efore free speech, before freedom of assembly, before freedom of religion, there was copyright
protection in our Constitution . . . [t]he principle that work one creates belongs to the creator and should be controlled
by the creator is as timeless as it is global. n203
The RIAA represents ninety percent of all legitimate sound recordings produced in the United States and employs a
team of investigators to uncover piracy operations throughout the world. n204 Frank Creighton, RIAA senior vice
president and director of anti-piracy, says the team has stepped up efforts to reduce the growth of CD-R piracy in particular by encouraging the assistance of [*198] law enforcement as well as consumers in the private sector. n205 "We
recognize that in order to keep up with the expanding CD-R piracy problem, we need to work hand in hand with those
charged with enforcing Intellectual Property laws and those hurt most by sound recording piracy." n206 In the last year,
the RIAA and its member record companies have engaged in significant efforts at educating retailers and the public
about illegitimate sound recordings and ways that unauthorized CDs can be spotted and reported. n207 Training programs for federal, state, and local authorities have also been expanded to ensure that officials can identify piracy activities and deal with them at the local level without requiring an RIAA investigator at the site. n208
These efforts seem to have paid off in 2001 as record numbers of arrests, unauthorized material seizures, and convictions were reported in the RIAA's anti- piracy statistics for the first half of the year. n209 The Anti-Piracy Unit was
involved in the confiscation of 1,257,796 illicit CD-Rs during that time. n210 This marks an increase of one hundred
thirty-three percent over the number of CD-Rs seized over the same time period in 2000. n211 Search warrants were
executed at seventy-two illegal distribution sites and thirty-four manufacturing operations in the first half of 2001, resulting in seizure of 604 CD burners. n212 The RIAA reports that this number is about the same as the number of CD
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burners confiscated for the entire year in 2000. n213 There were 1,762 arrests of individuals for trafficking in illegal
CDs or CD-Rs in the first six months of 2001, an eighty-nine percent increase over the 932 arrests over the same time
period in 2000. n214
These numbers demonstrate the success of the RIAA in reducing the number of illegal CD-Rs on the market in recent months, especially when compared with their seizure of eighty-seven illegal CD-Rs during the first six months of
1997; 23,858 during the same period of 1998; and 165,981 for the first half of 1999. n215 It is important to remember
that these statistics include pirated and counterfeit recordings and are not entirely attributable to the seizure of illicit live
bootlegs.
[*199]
The RIAA does not discriminate in its efforts to curb piracy. The Anti-Piracy Unit targets illicit CD reproduction
facilities with as much tenacity as possible:
CD fraud on a massive scale is too great a temptation for some pirates . . . [Pirates] place an illegal order at a CD
mastering or manufacturing plant. Often the request comes to transfer music from digital audiotape (DAT) or CD-R to
CD. The competition in the CD replication industry is intense, to the point that some plant personnel do not check orders as carefully as they should. Soon, thousands of illegal counterfeited discs are on the shipping dock.
U.S. copyright law provides for strict liability for copyright infringement. If a CD plant presses an illegal disc, the
plant is liable. Ignorance is no excuse. n216
A recent decision finding the president of a California CD manufacturing facility liable for copyright infringement
because the facility pressed illicit CDs demonstrates this hardline stance. The RIAA received summary judgment
against Media Group, a CD manufacturing plant, and its president for copyright infringement. n217 The District Court
for the Central District of California deemed all defendants to be willful infringers and determined that Media Group's
president was liable for vicarious and contributory infringement. n218 The defendants were found liable for infringement of 1,547 works owned by RIAA members since 1995. n219
According to the RIAA, one of the reasons for the decision was the fact that Media Group had been involved in the
RIAA's anti-piracy education program, and failed to take it seriously. n220
Among the artists whose works were illicitly reproduced by Media Group were James Brown, Madonna, and Elvis
Presley. n221 Frank Creighton points out that the training efforts aimed at CD replicator employees were specifically
meant to allow replicators to limit any possible liability if they filled an order for a music pirate. n222
[*200]
The RIAA also encourages the public to get involved in its fight against piracy. In August, 1999, it announced its
CD-Reward program. n223 This initiative offers monetary rewards of as much as $ 10,000 to any individual who tips
off the RIAA regarding illegal reproduction of member sound recordings. n224 The RIAA states that persons reporting
illicit replication facilities may remain anonymous unless a government agency requests their identity or a court of law
subpoenas for it. n225
The RIAA actively seeks to assist local law enforcement officials in investigating and prosecuting music pirates.
Some very recent operations included the seizure of 13,095 illegal sound recordings, which led to a fourteen month period of incarceration and a $ 65,475 judgment in restitution to the RIAA by the suspect who was convicted of criminal
copyright infringement in Maryland. n226 In New York, 13,000 pirated CD-Rs by musicians such as Usher and Natalie
Cole were seized in a combined effort by the New York Police Department's Organized Crime Investigation Division
and the RIAA's New York Anti-Piracy Unit. n227 Two people face charges of Failure to Disclose the Origin of a Sound
Recording as a result of the arrests. n228
A record store employee pled guilty for manufacturing CD-Rs for sale in a store in Garland, Texas after a search
warrant execution by the Texas Department of Public Safety and the RIAA's Texas Anti-Piracy unit uncovered 373 pirate CD- Rs. n229 In Nashville, Tennessee, an ordinary traffic stop resulted in the seizure of 347 counterfeit cassettes
and 985 counterfeit CD-Rs. n230
In response to the expansion of Latin music piracy that was an inevitable by- product of the explosion of Latin music in the last three years, the RIAA devotes about seventy percent of its non-Internet related investigatory work to uncovering Latin music piracy. n231 Half of all illegal sound recordings confiscated in 1998 and the first six months of
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1999 were in the Latin genre. Most of these were in cassette form. n232 The RIAA opened an office in Miami in July
1998 to serve the [*201] American Latin music industry and to assist local law enforcement in anti-piracy efforts. n233
The RIAA also pushes for the enactment of state legislation to combat music piracy. The California Optical Disc
Identifier Act was enacted in 1998 and directly aids in the reduction of piracy by requiring CD, CD-R, and DVD manufacturers to identify products with the name and home state of the manufacturer. n234 Similar legislation has been
passed in Florida and New York. n235
b. there's something going on that's not quite right n236
Many artists have no patience with the practice of bootlegging and piracy in general. In some instances, their outspoken opposition is probably the result of their record company's stance on the issue. Paul McCartney of the Beatles
once told a journalist that he had no problem with bootlegs but "every time I say that, my lawyer says, 'Oh yes you do.' "
n237
It is no wonder. The Beatles' performances are captured on 186 known bootlegs, while Prince appears on 180 bootlegs. n238 The Rolling Stones are on 167 bootlegs, and U2 performs on 149. n239 Other artists whose performances are
popular among music collectors include all-time favorites Bruce Springsteen, Led Zeppelin, Bob Dylan, and newer
choices of Pearl Jam, U2, Phish, Nirvana, and the Dave Matthews Band. n240
The Dave Matthews Band maintained an open-taping policy at its shows as late as 1999. n241 Like many artists,
band leader Dave Matthews draws a clear distinction in his mind between fan-taping and free trading of shows, on one
hand, and commercial bootlegging, on the other:
[W]hen somebody who doesn't . . . [care] about the music or about the fans comes in and makes 500,000 copies of
a show and gives it [*202] a weird name and misnames all the songs because nothing matters, and then puts out a bad
recording with the voices of . . . five drunk guys screaming louder than the music and then charges you $ 80 for it,
there's something about that that's a little . . . "irritating". n242
The band employs a lawyer named Jules D. Zalon, who is well known for reducing the sale of counterfeit T-shirts
for artists like Michael Jackson and Hootie and the Blowfish, to confiscate bootleg recordings offered for sale at independent record stores. n243 Zalon hit record retailers in Rhode Island, Massachusetts, New Jersey, and Connecticut by
sending representatives into the stores to purchase bootleg albums. n244 After the purchases were complete, Zalon entered each store accompanied by a federal marshal, seized any remaining bootlegs by Dave Matthews Band, and threatened a $ 100,000 law suit for every illegal CD. n245 The last step in Zalon's assault on the sale of bootleg recordings
was handing over a letter asking for $ 10,000 to $ 15,000 for the costs of the investigation as an out-of- court settlement.
n246
In another example of a zero tolerance approach to bootlegging, the British heavy metal band Saxon received an interlocutory injunction against Rainbow Communications Ltd. to temporarily enjoin the release of an album of their recordings in the U.K.'s Chancery Division in 1995. n247 Rainbow was a brand new record company that planned its inception around the release of the live Saxon performance from 1980's Castle Donington Music Festival. n248 The company received the recording from one of the band members who was booted (no pun intended) from the band soon after
he gave Rainbow the recording. n249
According to the band's lead singer, the group did not give permission for the 1980 show to be recorded and the recording thus violated his rights under the United Kingdom's Performance Protection Act. n250 The judge determined
that the band had given consent in 1980 for the recording of only two songs to appear on a compilation album from the
festival and that because Saxon was about to [*203] release a new album, its sales and the reputation of the band might
suffer from any release of the 1980 recordings. n251
c. in an easy chair with my boots on n252
Eddie Vedder of Pearl Jam happened to notice a bootlegger taping one of his band's concerts in Stockholm, Sweden
in 1992 and responded with the following: "[t]his guy's making a tape recording, everybody be careful, don't make too
much noise. No, keep it out, I like that idea. He's O.K. . . . right? He can tape it . . . ." n253
Other bands such as the Grateful Dead, Black Crowes, Metallica, and Page and Plant allowed fans to tape their performances. n254 Pearl Jam was the most- bootlegged group in 1995, having done several worldwide broadcasts that no
doubt contributed to the large number of Pearl Jam bootlegs on the market. n255 In 2000 the band decided to take action against the bootleggers and had each show on its tour professionally recorded. The band then released all the shows
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as "official bootlegs." n256 These live recordings totaled twenty-five and were released simultaneously on September
25, 2000. n257 Eddie Vedder remarked of the band's release of the twenty-five live performances: "[a] lot of people out
there buy bootlegs, and it's risky because you can spend a lot of money and get a very poor-quality recording." n258
Bruce Springsteen was happy to have people tape his concerts in the early years of his career because the recordings increased his popularity and thereby the market for his music, but in later years he was more inclined to sue for
copyright infringement. n259 Bob Dylan also complained about bootleggers though, ironically, "Great White Wonder"
was the first known rock bootleg. n260
[*204]
d. i hope someone with a tape machine had the sense to record this n261
Some bands openly permit taping of their performances with the hope that fans will recognize that taping is a privilege and only engage in free trading of shows without crossing the line into commercial bootlegging. Examples of these
very tolerant bands include improvisational rockers Widespread Panic, the now defunct touring apparatus Phish, and the
psychedelic band The Grateful Dead. n262 These bands see tapers as helping to disseminate their music on a broad
scale without the costs associated with the release of commercial albums, and also as creating a strong connection with
fans that fosters their success in the competitive music industry. n263
Phish grossed upwards of ten million dollars in annual ticket sales while selling only a few hundred thousand copies of their albums each year. The band credits that fact to their policy of allowing fans to tape shows since the band's
inception in Vermont in 1984. n264 According to one of the editors of "The Pharmer's Almanac," a touring companion
for the band's fans, "without taping there would be no Phish . . . It's the most important element of the Phish phenomenon. You can only go see the band so many times a year, but it's the tape that you can enjoy over and over again . . . The
story of Phish is how bootleg tapes created the popularity of a band." n265
According to band spokesman Dennis McNally, the Grateful Dead allowed taping because they knew they could
not stop it. n266 The band made clear its desire that the tapes be traded freely and not sold for profit, and McNally says
that is just what happened most of the time. n267 The Grateful Dead was one of the country's biggest concert attractions
for years before the group disbanded after the death of front man Jerry Garcia in 1995. n268 McNally says that the
Grateful Dead trusted their audience and that trust really influenced the fans. n269
Another band that exhibits trust in its audience is Widespread Panic. David Schools, the band's bassist, discovered
The Grateful Dead by trading tapes and acknowledges that open-taping and fan tape-trading facilitated the growing
popularity of his own band years later:
[*205]
I remember there was one time when we had not been farther West than the Mississippi River . . . [W]e were performing in San Francisco, and we figured that people would be unfamiliar with our music, and they weren't. I looked
out there and they were singing every word, and that was incredible . . . [j]ust the grapevine procedure of tapes. Right
then it sort of clicked that this is definitely not a bad thing. n270
Like many artists who allow the audience to record their concerts, Schools is careful to distinguish free tape trading
from commercial bootlegging: "Bootlegging is a bad thing . . . [s]elling a record at an incredible price, slapping on an
imported sticker and finding some sorority sister to buy [bad]-sounding Dave Matthews album." n271
Even a few bands who could not be said to benefit in any way from informal distribution and popularization of their
music have no real problem withbootlegging. Bertis Downs, III, Esq., counsel for R.E.M., who are undoubtedly one of
the most popular and influential rock bands on the planet, says the band has always treated bootlegs with " 'benign neglect' " n272 because most of the people who own or collect bootlegs generally own all the band's legitimate recordings
anyway. n273 Besides, as Downs observes, there are "bigger [sic] more dangerous fish" for the music industry to fry,
fish that "actually might cannibalize legitimate sales." n274 In the short time that has transpired between the composition of Downs' e-mail and the publication of this Note, it seems that his statement regarding the potential cannibalization of legitimate record sales has become a pale understatement. The advent of MP3 technology and the increase of
online piracy pose tremendous threats to authorized record sales, and those threats grew to fruition in 2001 and the first
half of 2002. Each time a file-sharing site is enjoined from facilitating the infringement of copyrighted music (e.g., Napster and Audiogalaxy), a half dozen new sites crop up to fill the gap. According to Downs, file sharing via the Internet
"calls into question the very ability of artists . . . to build a career through record sales." n275
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[*206]
VI. These Boots Are Made for Walkin' n276
In the years since the adoption of the URAA and the resulting anti-bootlegging statute, the music industry has
slowly opened its eyes to the reality of the huge and sustained demand for music bootlegs. After a few artists like Bob
Dylan, n277 Frank Zappa, n278 and Led Zeppelin n279 gave in and bootlegged themselves, other popular musicians
and their record companies followed suit. It is not very surprising that these authorized releases have had a huge success
in terms of sales, because discerning music fans take their devotion seriously and tend to gorge themselves on their favorite artists' sound. Capitol Records, after years and years of witnessing tremendous demand for Beatles bootlegs, released a two-CD set of tracks that the band had cut off previous albums, which sold a million copies within a few
months of its release. n280 Dave Matthews Band released a double live album called "Live at Luther College" in 1999
that filled a spot on the Top 20 chart for weeks. n281 The band had similar success with a live recording from Morrison,
Colorado's Red Rocks amphitheater that was issued in 1997 while the band was working on a new studio album. n282
More recently, Pearl Jam took the notion of using bootlegging to the artist's advantage a step further by releasing
every show on its 2000 tour on what amounts to sanctioned bootlegs. The simultaneous release of twenty-five live albums with perfect sound quality has been quite successful in garnering public support and preventing the sale of any
unauthorized recordings from the tour. n283 Remarkably, five of the albums debuted in the Top 200 chart and, not surprisingly, you cannot find any unauthorized bootleg from the tour even in the smallest of record stores. n284 The potential use of this type of strategy by very popular artists seems endless. Certainly the future will bring more sanctioned
live [*207] releases and simultaneous live releases as the music industry continues to accept and even embrace bootlegging.
Major labels should consider producing commercial live recordings and offering particular shows or compilations
of live material from a series of shows for popular artists. It goes without saying that the sound quality should be superb, a clear advantage over poorer quality audience recordings. These official "bootlegs" should also come with unique
graphics or rare photographs of the act to augment the appeal to the urge to collect in devoted music fans. Finally, these
releases, whether simultaneous tour recordings or individual live offerings, should be very affordable to clinch the sale
to the music collector. Pearl Jam, through their label, achieved price reasonability by offering their series of "bootlegs"
for around five dollars if ordered from the band's website, or about seven dollars in record stores.
Though there will always be diehard bootleg collectors who feel that an "official bootleg" violates the spirit of
"classic" bootlegging and will continue to seek out copies of audience-recorded shows, most music fans would likely
prefer to have a recording with superior sound fidelity and unusual graphics or photographs to add to their collections.
Record labels could further benefit from releasing their sanctioned like records on enhanced CDs that include concert
footage, interviews, or even cartoons of the artist or band, which would be available to the purchaser when he or she put
the CD into a computer.
Another important strategy that the industry should employ, and one that will prove advantageous to less popular
musicians, is an open-taping policy at concerts. This idea may at first seem counterintuitive, but if fan taping (and resulting free trading) can lead to touring success for bands like Phish and Widespread Panic, there is no reason why it
cannot do the same for other acts. By allowing taping, a band sends a message of trust to its audience. The Grateful
Dead always allowed fans to record their shows, and thereby built a strong relationship with a particular group of people. By utilizing the taping policy and other alternative marketing strategies, the band built a huge merchandise and distribution business that still generates upwards of sixty million dollars each year. n285 Surely their decision to allow
taping seemed absurd in a time when most of the music industry was battling the bootleg problem, but their success
proves that open taping can turn out to be a really good idea.
Obviously, an open-taping policy will not just mean that loyal fans who intend to trade the recordings freely will
tape the shows. There is no guarantee that a commercial bootlegger will not be there to plug in his deck too. But just as
surely [*208] as that will happen, artists can trust some fan to get a copy of any commercial bootleg that ends up on
the market, burn copies onto CD-R, and distribute those copies for free through bootleg trading networks. That's right,
fans are actually bootlegging the bootleggers. When commercial bootleggers release a new product, in no time at all it is
duplicated and traded for free. n286 Legitimate tapers pride themselves on archiving shows for the annals of music history, and shun any taper who tries to sell recordings. n287 The Internet gives fans worldwide access to all the bootlegs
they could ever want. n288 Therefore, an open- taping policy may not only popularize a band's music and beat the
commercial bootleggers at their own game, but can also prove to bolster tremendous financial success from touring for
those acts willing to spend much of the year on the road.
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Finally, the sale of official "bootlegs," increase in fan loyalty, and the potential for inflated tour revenues may alleviate the economic losses the industry is feeling as a result of massive online piracy. Where hit albums in the past could
sell upwards of a million copies, the twenty-first century is more characterized by a few people uploading a hit album
that soon results in the free distribution of upwards of a million copies. And while it is just as likely that any sanctioned
live releases will be uploaded and potentially copied in the same manner, record labels should flex their marketing muscles and work to appeal to music collectors and loyal fans. Though many people who infringe copyrights by downloading music from the Internet justify their actions by pointing to "fat cat" label executives and wealthy artists, the avid
music collector or true fan would likely respond to manifestations of trust and unselfishness on the part of labels and
artists. Some artists who allow taping have figured this out for themselves, and the overall industry could really benefit
if more musicians and record companies adopt this policy. Though traditionally, popular musicians enjoyed four sources
of revenue to support their careers (i.e. record sales, touring, publishing, and merchandise/ancillary sales), the onslaught
of online piracy in the last several years has seriously called into question the most important of these sources of revenue: record sales. As the industry scrambles to build a "celestial jukebox" that can compete with free online distribution,
it seems that it would do well to make every effort to bolster the sources of revenue that remain viable.
United Kingdom attorney Colin Davis, who handles bootlegging cases for the British Phonograph Industry, observes that bootlegging can be very favorable by noting that many of the bard's great plays are unauthorized scripts: "
'It's quite possible that William Shakespeare thought that Richard III was a rather embarrassing piece of Tudor propaganda that he should never have put his name [*209] to.' " n289 As the music industry blinks in the bright and rude
awakening of the destruction of its business model, it should embrace any strategy that might foster consumer loyalty
and offset the draining of its revenues by online piracy. Otherwise, the words of Nancy Sinatra will ring ominously true
as online piracy becomes more menacing, leaving behind a pale shadow of the music business as it used to be: "one of
these days these boots are gonna walk all over you." n290
FOOTNOTES:
n1 Widespread Panic, Don't Tell the Band, Don't Tell the Band (Sanctuary Records 2001). This song was
conceived by guitarist Michael Houser, a founding member of Athens, Georgia's Widespread Panic, who lost his
life to cancer at the age of forty in 2002. This Note is dedicated to his memory, and to the fans who will keep it
alive.
n2 See generally Todd D. Patterson, Comment, The Uruguay Round's Anti-Bootlegging Provision: A Victory for Musical Artists and Record Companies, 15 Wis. Int'l L.J. 371 (1997) (recounting the appearance of
"Great White Wonder" in Los Angeles record stores in 1969).
n3 175 F.3d 1269, 50 U.S.P.Q.2d (BNA) 1801, (11th Cir.) 1999.
n4 Widespread Panic, Driving Song, Widespread Panic (Capricorn Records 1991).
n5 473 U.S. 207 (1985).
n6 Dowling v. United States, 473 U.S. 207, 209 n.2 (1985).
n7 Id. at 210.
n8 The Recording Industry Association of America ("RIAA") is a non-profit trade organization whose
members represent ninety percent of all legitimate musical releases. See Part V, infra pp. 196-206 (discussing
the RIAA).
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n9 What is Piracy?, at http://riaa.com/Protect- Campaign-1.cfm (last visited Sept. 1, 2002).
n10 Id.
n11 Id.
n12 Id.
n13 Id.
n14 What is Piracy? at http://riaa.com/Protect- Campaign-1.cfm (last visited Sept. 1, 2002).
n15 Id.
n16 Jennifer Ordonez, Sales of Recorded Music Decline, Wall St. J., Aug. 27, 2002.
n17 Id.
n18 473 U.S. 207, 209 n.2 (1985).
n19 Article 51 in TRIPS explains that any unauthorized copying amounts to illegal piracy; Agreement on
Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the
World Trade Organization, Annex IC, legal instruments-Results of the Uruguay Round vol. 31; 33 I.L.M. 1197
(1997) [hereinafter TRIPS].
n20 Patterson, supra note 2, at 375.
n21 Id.
n22 Id. at 375 n.20.
n24 Id. at 375 n.20.
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n25 See Will Duckworth & Ted Rockwell, Everyday Companion, 224 (1997) (listing this show as a fan favorite after conducting a fan survey); the author is acquainted with several music collectors who prize this recording as one of the best in their collections.
n26 Patterson, supra note 2, at 376-77.
n28 Id.
n29 David Schwartz, Note, Strange Fixation: Bootleg Sound Recordings Enjoy the Benefits of Improving
Technology, 47 Fed. Comm. L.J. 611, 615-16 (1995).
n30 See generally Robert M. Blunt, Comment, Bootlegs and Imports: Seeking Effective International Enforcement of Copyright Protection for Unauthorized Musical Recordings, 22 Hous. J. Int'l L. 169 (1999) (discussing sound quality of bootleg recordings).
n32 See Driving Song, supra note 4 (alluding to the smiling force of canines and cadence).
n33 See infra notes 56-57 and accompanying text.
n34 "Congress shall have the power . . . [t]o promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
U.S. Const. art. I, ß 8, cl. 8. This portion of the Constitution is referred to as the Intellectual Property Clause and
contains both the Copyright Clause and the Patent Clause.
n35 See Goldstein v. California, 412 U.S. 546, 562, 78 U.S.P.Q. (BNA) 129, 136 n.17 (1973) (recounting
the history of copyright protection in the United States).
n36 Id. at 562-63 n.17.
n37 Id. at 561.
n38 David Schwartz, Note, Strange Fixation: Bootleg Sound Recordings Enjoy the Benefits of Improving
Technology, 47 Fed. Comm. L.J. 611, 624 (1995).
n39 209 U.S. 1 (1908). Piano rolls are scrolls of paper marked with perforations. When air passes through
these perforations, the keys of a player piano are activated to emit melodic sound. Id. at 10.
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n40 Id. at 18.
n41 Goldstein, 412 U.S. at 565.
n42 Copyright Act of 1909, ch. 320, 35 Stat. 1075, superseded by Copyright Act of 1976, Pub. L. No. 94553, 90 Stat. 2541 (codified at 17 U.S.C. ß ß 101-803 (2000)).
n43 See 17 U.S.C. ß 115 (2000) (containing compulsory licensing requirements for making and distributing
phonorecords).
n44 See Shapiro, Bernstein & Co. v. Goody, 248 F.2d 260, 262 (discussing the compulsory licensing system; performers were required to pay either two and three-fourths cents per copy or one-half of one cent per
minute of playing time, whichever amount was larger); 17 U.S.C. ß 115(c)(2) (2000).
n45 See, e.g., Melville B. Nimmer, Photocopying and Record Piracy: Of Dred Scott and Alice in Wonderland, 22 UCLA L. Rev. 1052, 1060 (1975) (suggesting that a third party could duplicate original works by paying
the compulsory licensing fee under the 1909 Act).
n46 458 F.2d 1305 (9th Cir. 1972).
n47 Id. at 1310.
n48 Id. at 1307.
n49 Id. at 1310.
n50 Id.
n51 540 F.2d 961 (9th Cir. 1976).
n52 412 U.S. 546 (1973).
n53 The Supremacy Clause appears at U.S. Const. art. VI, ß 2.
n54 Goldstein, 412 U.S. at 558.
n55 Id. at 560.
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n56 The Sound Recording Act of 1971, Pub. L. No. 92- 140, 85 Stat. 391.
n57 Id. at 392.
n58 Schwartz, supra note 29, at 628; 17 U.S.C. ß 102(a)(7) (2000).
n59 See Patterson, supra note 2, at 385 (noting the acts regarded as the most bootlegged artists of all time);
according to Hot Wacks-a bootleg encyclopedia-as of 1992, 1400 Beatles bootlegs had been catalogued by collectors. Schwartz, supra note 29, at 616.
n60 17 U.S.C. ß 106(1).
n61 17 U.S.C. ß 106(2) (2000).
n62 17 U.S.C. ß 106(3).
n63 17 U.S.C. ß 115(a).
n64 17 U.S.C. ß 107. See infra note 156 and accompanying text (discussing the fair use doctrine).
n65 17 U.S.C. ß 506(a) (2000); 18 U.S.C. ß 2319 (2000).
n66 Patterson, supra note 2, at 387 n.95.
n67 473 U.S. 207 (1985).
n68 473 U.S. 207.
n69 Id. at 212.
n70 United States v. Dowling, 739 F.2d 1445 (9th Cir. 1984), rev'd, 473 U.S. 207 (1985).
n71 Dowling, 473 U.S. at 217.
n72 Id. at 207. See also 18 U.S.C. ß 2314 (1994) (detailing the National Stolen Property Act).
n73 471 U.S. 539 (1985).
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n74 Harper & Row Publishers v. Nation Enters., 471 U.S. 539, 539-540 (1985).
n75 Dowling, 473 U.S. at 226.
n76 Id. at 211 n.4.
n78 Id.
n79 Jeanmarie LoVoi, Note, Competing Interests: Anti- Privacy Efforts Triumph under TRIPS, but New
Copying Technology Undermines the Success, 25 Brook. J. Int'l L. 445 (1999), citing Lauren Wiley, Bootleggers Turning to Burning: RIAA Says CD-R Piracy is on the Rise, EMedia Prof, June 1, 1998, available at 1998
WL 9595630.
n81 Schwartz, supra note 29, at 632.
n82 Id. at 633.
n83 Id. at 632 n.135.
n84 Id.
n85 Id. at 632.
n86 Robert M. Blunt, Comment, Bootlegs and Imports: Seeking Effective International Enforcement of
Copyright Protection for Unauthorized Musical Recordings, 22 Hous. J. Int'l L. 169, 175 (1999).
n87 Id. at 176.
n88 Universal Copyright Convention, Sept. 6, 1952, 6 U.S.T. 2731, 216 U.N.T.S. 132, revised by Universal
Copyright Convention, July 24, 1971, 25 U.S.T. 1341, at 1345 [hereinafter U.C. Convention].
Page 161
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n90 Blunt, supra note 87, at 177.
n91 Id.
n92 Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, revised at Stockholm, July 14, 1967, 331 U.N.T.S. 217, amended in Paris, July 24, 1971, 828 U.N.T.S. 221 [hereinafter Berne
Convention].
n93 Blunt, supra note 87, at 177-78.
n94 See Patterson, supra note 2, at 395 (noting that neither sound recordings nor live performances are mentioned in the provision of the Berne Convention relating to protected works).
n95 Id. at 393 n.134.
n96 Id.
n98 Berne Convention, supra note 93, at 221. See also Ann Moebes, Negotiating International Copyright
Protection: The United States and European Community Positions, 14 Loy. L.A. Int'l & Comp. L.J. 301, 303
(1992) (discussing the Berne Convention and Union member positions on intellectual property issues).
n99 Blunt, supra note 86, at 178-79.
n101 Alexander A. Caviedes, International Copyright Law: Should the European Union Dictate Its Development?, 16 B.U. Int'l L.J. 165, 172 (1998).
n102 Id. at 172 n.44.
n103 Patterson, supra note 96 and accompanying text.
n105 Id.
n106 Id. at 181.
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n107 Id. at 182.
n108 Id. at 181 (citing Laurence R. Helfer, Adjudicating Copyright Claims under the TRIPS Agreement:
The Case for a European Human Rights Analogy, 39 Harv. Int'l L.J. 357, 375 (1998)).
n109 Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853 (1988).
n110 See Blunt, supra note 86, at 182 (pointing out the United States' position as the biggest user and producer of copyrighted works in the world).
n111 International Convention for the Protection of Performers, Producers of Phonograms, and Broadcast
Organizations, Oct. 26, 1961, 496 U.N.T.S. 43.
n112 Id. art. 7(1)(b); art. 10.
n113 Patterson, supra note 2, at 396 n.154.
n114 Susan M. Deas, Jazzing up the Copyright Act? Resolving the Uncertainties of the United States AntiBootlegging Law, 20 Hastings Comm. & Ent. L.J. 567, 579 (1998).
n115 See Jerry D. Brown, U.S. Copyright Law After GATT: Why a New Chapter Eleven Means Bankruptcy for Bootleggers, 16 Loy. L.A. Ent. L.J. 1, 9-15 (1995) (noting that bootlegging is of special concern for
the United States because the exportation of American music is one of few positive American trade balances).
n116 Marshall Leaffer, Protecting United States Intellectual Property Abroad: Towards a New Multilateralism, 76 Iowa L. Rev. 273, 298 (1994).
n117 Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of their
Phonograms, Oct. 29, 1971, 25 U.S.T. 309, 866 U.N.T.S. 67 [hereinafter Geneva Convention].
n118 Leaffer, supra note 116, at 324; 866 U.N.T.S. at 72. "Phonograms" are defined as "any exclusive aural
fixation of sounds of a performance or other sounds." Id.
n121 Agreement on Trade Related Aspects of Intellectual Property Rights, Dec. 15, 1993, World Trade Organization, Annex IC, legal instruments-Results of the Uruguay Round vol. 31; 33 I.L.M. 81 (1994) [hereinafter
Page 163
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TRIPS Agreement] (resulting from the negotiations under the General Agreement on Tariffs and Trade
("GATT"), an international arrangement under which almost eighty nations negotiated norms for international
trade). See also Blunt, supra note 86, at 186 n.114 (discussing GATT and TRIPS).
n122 Linda W. Tai, Music Piracy in the Pacific Rim: Applying a Regional Approach Towards the Enforcement of International Conventions, 16 Loy. L.A. Ent. L.J. 159, 163-67 (1995).
n123 Id. at 159.
n124 Leaffer, supra note 116, at 277.
n125 TRIPS Agreement, supra note 121, at 88.
n126 See Deas, supra note 114, at 587.
n127 Schwartz, supra note 29, at 636.
n128 Id. at 636-37.
n129 TRIPS Agreement, supra note 121, at 68.
n130 David Nimmer, The End of Copyright, 48 Vand. L. Rev. 1385, 1390-91 (1995).
n132 Id. at 404.
n133 Uruguay Round Agreements Act, Pub. L. No. 103-465, 108 Stat. 4809 (1994) [hereinafter URAA];
under section 512 of URAA, to "traffic in" is defined as to "transport, transfer, or otherwise dispose of, to another, as consideration for anything of value or make or obtain control of with intent to transport, transfer, or
dispose of." URAA at ß 512 (creating 17 U.S.C. ß 1101).
n134 Patterson, supra note 2, at 407-08.
n135 The U.S. Department of Justice says that forty- five states have "true name and address" statutes.
These laws require distributors of sound recordings to print the name and address of the producer and distributor
on the label. See http://www.doj.gov/criminal/cybercrime/intell prop rts/app l- .htm (discussing state law protections against intellectual property crimes). In New York, failure to disclose the origin of a sound recording is a
felony offense if more than 1,000 copies of a sound recording or one hundred copies of an audiovisual recording
are involved. If fewer recordings are involved, the offense is a misdemeanor. N.Y. Penal Law ß 275.40 (McKinney 1999), 275.35 (McKinney Supp. 1999). In 1997, a concerted effort from a New York District Attorney's of-
Page 164
Page 24
fice and RIAA investigators resulted in the seizure of 3,500 bootleg CDs and hundreds of bootleg videos of live
shows. The offenders were prosecuted under New York's "true name and address" statute. Michael Coblenz, Intellectual Property Crimes, 9 Alb. L.J. Sci. & Tech. 235, 268-69 (1999).
n136 Doris E. Long, Copyright and the Uruguay Round Agreements: A New Era of Protection or an Illusory Promise?, 22 AIPLA Q.J. 531, 568 (1994).
n137 Id.
n138 Id.
n139 URAA, supra note 133, at ß 512; this section states that "nothing in this section may be construed to
annul or limit any rights or remedies under the common law or statutes of any state."
n140 Long, supra note 136, at 569.
n141 Id. at 570.
n142 Patterson, supra note 2, at 408-09; 17 U.S.C. ß 1101(a) (1994) provides: Anyone who, without the
consent of the performer or performers involved 1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation, 2) transmits or otherwise communicates to the public the sounds or sounds and images of a
live musical performance, or 3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or
traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in the United States, shall be subject to [specified penalties]. See also 18 U.S.C. ß 2319(a) (1994) (criminalizing the unsanctioned recording of and trafficking in live performances).
n143 U.S. Const. art. I, ß 8, cl. 8 ("To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.").
n144 Nimmer, supra note 130, at 1410.
n145 Id. at 1399-1400 (citing 17 U.S.C. ß 1101).
n146 See 17 U.S.C. ß 301 (pre-empting state copyright protections in favor of uniform federal protection).
Section 301(b)(1) provides however that "[n]othing in [the Copyright Act] annuls or limits any rights or remedies under the common law or statutes of any State with respect to . . . subject matter that does not come within
the subject matter of copyright as specified by sections 102 and 103 . . . ." If live musical performances are not
the proper subject of copyright protection, state statutes or common law standards could specify a length of time
for their protection.
n147 Deas, supra note 114, at 588.
Page 165
Page 25
n148 Id. at 580.
n149 Id.
n150 Id.
n151 See 17 U.S.C. ß 107 (2000), infra note 158 and accompanying text.
n152 Deas, supra note 114, at 580.
n153 Id. at 580.
n154 William F. Patry, Copyright and the GATT: An Interpretation and Legislative History of the Uruguay
Round Agreements Act, 18 (1995).
n155 Uruguay Round Agreements Act, Pub. L. No. 103-465, 108 Stat. 4809 (1994).
n156 "[T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords . .
. for purposes such as criticism, comment, news reporting, teaching . . . is not an infringement of copyright." The
inquiry into whether a use is "fair" should consider "the purpose and character of the use," "the nature of the
copyrighted work," the amount of the work used in relation to the whole, and "the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. ß 107 (1994).
n157 17 U.S.C. ß 301 (2000). See supra note 146 (discussing statutory preemption).
n158 S. Rep. No. 103-412, at 3 (1994).
n159 Id.
n160 Keith V. Lee, Note, Resolving the Dissonant Constitutional Chords Inherent in the Federal AntiBootlegging Statute in United States v. Moghadam, 7 Vill. Sports & Ent. L.J. 327, 330 n.19 (2000).
n161 Id.
n162 Id.
n163 Id.
Page 166
Page 26
n164 United States v. Moghadam, 175 F.3d 1269, 1271, 50 U.S.P.Q.2d (BNA) 1801, 1803 (11th Cir. 1999),
cert. denied, 529 U.S. 1036 (2000).
n165 Id.
n166 Id. at 1273. See also Steven M. Szczepanski, updated by David M. Epstein, Eckstrom's Licensing in
Foreign and Domestic Operations, 4.05A (1999) (abstracting the Moghadam opinion).
n167 Szczepankski, supra note 166.
n168 Moghadam, 175 F.3d at 1273.
n169 Id.
n170 Id. See also Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright ß 1.08[c][2], at 1-66.40
(2001) (discussing the "Writings" requirement).
n171 Shaab v. Kleindienst, 345 F. Supp. 589, 590, 174 U.S.P.Q. (BNA) 197, 197-98 (D.D.C. 1972) (per curiam).
n172 Goldstein v. California, 412 U.S. 546, 561-62, 178 U.S.P.Q. (BNA) 129, 136-38 (1973). In Goldstein,
petitioners illegally copied and distributed tapes of popular musical concerts. 412 U.S. 546 at 549-50. The Court
concluded that the term "Writing" may be interpreted to include "any physical rendering of the fruits of creative
intellectual or aesthetic labor" Id. at 561. This suggests that "fixation" occurs at the moment when the "Writing"
is reduced to a tangible medium.
n173 Moghadam, 175 F.3d 1269, 1274.
n174 Id.
n175 Id.
n176 U.S. Const. art. I, ß 8, cl. 3.
n177 United States v. Lopez, 514 U.S. 549, 558-59 (1995).
n178 Id. at 557.
Page 167
Page 27
n179 See id. at 562-63 (observing that Congress does not have to make "formal findings as to the substantial burdens that an activity has on interstate commerce" but that such findings would allow the court to "evaluate the legislative judgment that the activity in question substantially affected interstate commerce . . . .").
n180 See id. at 562 (observing that the statute under scrutiny did not include an "express jurisdictional element which might limit its reach to [activities] . . . hav[ing] an explicit connection with or effect on interstate
commerce"); Lee, supra note 160, at 352.
n181 Moghadam, 175 F.3d 1269, 1276; see also 18 U.S.C. ß 2319A(a) (1994) (outlining U.S. prohibition
on commercial distribution of unauthorized recordings of live musical performances).
n182 United States v. Moghadam, 175 F.3d 1269, 1276, 50 U.S.P.Q.2d (BNA) 1801, 1805 (11th Cir. 1999),
cert. denied, 529 U.S. 1036 (2000).
n183 See, e.g., Railway Labor Executives' Ass'n v. Gibbons, 455 U.S. 457, 471-73 (1982) (evaluating statute
that conflicted with the Bankruptcy Clause's uniformity requirement and holding that the statute could not be
upheld as constitutional). "[I]f we were to hold that Congress had the power to enact nonuniform bankruptcy
laws pursuant to the Commerce Clause, we would eradicate from the Constitution a limitation on the power of
Congress to enact bankruptcy laws." Id. at 468-69.
n184 Moghadam, 175 F.3d at 1279-80.
n185 U.S. Const. art. I, ß 8, cl. 8.
n186 Moghadam, 175 F.3d at 1280.
n187 Id.
n188 Id.
n189 The last sentence of the definition of "fixed" in 17 U.S.C. ß 101 states that "[a] work consisting of
sounds, images, or both, that are being transmitted, is 'fixed' for purposes of this title if a fixation of the work is
being made simultaneously with its transmission." The Eleventh Circuit observed that this definition gives rise
to a legal fiction that the work becomes "fixed" in the simultaneous fixation before the transmission and unauthorized recording. Moghadam, 175 F.3d 1269, 1280-81 (1999).
n190 Moghadam, 175 F.3d 1269, 1281 (1999).
n191 Id. at 1281.
n192 Id. at 1281 n.15.
Page 168
Page 28
n193 Appeals Court Backs Anti-Bootlegging Statute, 15 No. 3 Ent. L. & Fin. (1999).
n194 Lee, supra note 160, at 356.
n195 See 3 Nimmer on Copyright, supra note 170, ß 8E.01(C), at 8E-8 (noting that Congress' passage of
the anti- bootlegging statute under the authority of the Commerce Clause raises the question of whether there is
any amendment to copyright law that Congress could not make under its broad commerce powers); Nimmer supra note 130, at 1409, 1411 (wondering if legislators in Washington considered at all the constitutional grounds
for the enactment of the anti-bootlegging statute). But see Lionel S. Sobel, Bootleggers Beware Copyright Law
Now Protects Live Musical Performances But New Law Leaves Many Questions Unanswered, 17 No. 2 Ent. L.
Rep. 6, at 11-12 (1995) (applauding willingness of Congress to provide copyright protection for all sorts of unfixed works by way of the Commerce Clause) "[R]eliance on the [C]ommerce [C]lause to amend the Copyright
Act opens the door to all types of additional amendments . . . thought to be beyond the reach of copyright law."
Id. at 12.
n196 See Lee, supra note 160, at 361-62 (approving the Moghadam opinion).
n197 Lee, supra note 160, at 361.
n198 R.E.M., Losing My Religion, Out of Time (Warner Bros. Records 1991).
n199 Interview with Edward P. Pierson, Exec. V.P./Legal & Bus. Affairs, Warner Chappell Music, Inc., and
Bertis Downs, R.E.M. counsel, in Athens, Ga. (Oct. 9, 2002).
n200 Id.
n201 See supra notes 6-31 and accompanying text (explaining the main forms of music piracy).
n202 What is Piracy?, supra note 14.
n203 Id.
n204 RIAA Releases Mid-Year Anti-Piracy Statistics, at http://www.riaa.com/News Story.cfm?id= 457
(last visited Sept. 24, 2002).
n205 Id.
n206 Id.
Page 169
Page 29
n207 Id.
n208 Id.
n209 RIAA Releases Mid-Year Anti-Piracy Statistics, at http://www.riaa.com/News Story.cfm? id=457
n210 Id.
n211 Id.
n212 Id.
n213 Id.
n214 RIAA Releases Mid-Year Anti-Piracy Statistics, at http://www.riaa.com/News Story.cfm?id= 457
n215 CD-R Piracy, at http://www.riaa.com/Protect- CDR.cfm (last visited Sept. 16, 2002).
n216 A Miracle Easily Replicated, at http://www.riaa.com/Protect-Plant-1.cfm (last visited Sept. 16, 2002).
n217 Media Group Found Guilty of Copyright Infringement, at http://www.riaa.com/News
Story.cfm?id=445 (last visited Oct. 10, 2001).
n218 Id.
n219 Id.
n220 Id.
n221 Id.
n222 Media Group Found Guilty of Copyright Infringement, at http://www.riaa.com/News
Story/cfm?id=445 (last visited Oct. 10, 2001).
n223 Up to $ 10,000 in Reward, at http://www.riaa.com/Protect-Report.cfm (last visited Oct. 8, 2001).
Page 170
Page 30
n224 Id. The RIAA offers a toll-free hotline at 1-888- BAD-Beat and e-mail tip mailboxes at cdreward@riaa. com and on its website at www.CDReward.com. Id.
n225 Id.
n226 Recording Industry Helps Local Law Enforcement Uncover Illegal Music Operations, at
http://www.riaa.com/News Story.cfm?id=453 (last visited Oct. 10, 2001).
n227 Id.
n228 Id.
n229 Id.
n230 Id.
n231 Latin Music Piracy, at http://www.riaa.com/Protect-Latin.cfm (last visited Oct. 8, 2001).
n232 Id.
n233 Id.
n234 Id.
n235 Id. These enactments are "true name and address" statutes. See supra note 135 and accompanying text
(discussing state "true name and address" laws).
n236 R.E.M., Strange, Document (IRS Records, 1987).
n237 Allan Kozinn, Bootlegging as a Public Service: No, This Isn't a Joke, N.Y. Times, Oct. 8, 1997, available at 1997 WL 8006586.
n238 Nick Varley, 'Garden Shed' at Hub of CD Pirates' Huge Bootleg Racket: Nick Varley on a MultiMillion Pound Fraud, Guardian, Oct. 19, 1996, available at 1996 WL 13382261.
n239 Id.
n240 Kenneth Lovett, Bootlegged in the U.S.A.: Artists Battle Illicit CD Boom, Record, July 15, 1999,
available at 1999 WL 7107402.
Page 171
Page 31
n241 Roger Catlin, Matthews Pacifies Fans with Some Live Stock, Record, Feb. 22, 1999, available at 1999
WL 7090293.
n242 Id.
n243 Neil Strauss, The Pop Life, N.Y. Times, Apr. 23, 1997, available at 1997 WL 7994221.
n244 Id.
n245 Id.
n246 Id.
n247 British Court Grants Injunction Temporarily Barring Release of Recording by "Saxon" Allegedly
"Bootlegged" in 1980 While the Band Was Performing at Castle Donington Music Festival (No. 8), 17 Ent. L.
Rep. 20 (1996).
n248 Id.
n249 Id.
n250 Id.
n251 Id.
n252 Widespread Panic, Chilly Water, Space Wrangler (Capricorn Records 1991).
n253 Mark Brown, Bootlegging and Tape-trading of Unreleased and Live Tracks Is Exploding: Fans Want
These Unauthorized Recordings, but Is the Trend Hurting the Artists They Love?, Orange County Reg., Mar. 19,
1995, available at 1995 WL 5840197.
n254 Id.
n255 Id.
n256 Mark Brown, Sound Investment: Concert Tapers Help Make Music History, Denver Rocky Mountain
News, Oct. 22, 2000, available at 2000 WL 6610824.
Page 172
Page 32
n257 Adam Sweeting, Stolen Moments: Pearl Jam are releasing 25 Live Albums at Once to Protect Fans
from Poor Quality Bootlegs, Guardian, Sept. 22, 2000, available at 2000 WL 27020661.
n258 Id.
n259 Id.
n260 Id. See also Patterson, supra note 2 (discussing the availability of "Great White Wonder").
n261 Jeri Rowe, Messengers of Music, Greensboro News & Rec., Nov. 16, 1997.
n262 Id.
n263 Id.
n264 Id.
n265 Id.
n266 Rowe, supra note 261.
n267 Id.
n268 Id.
n269 Id.
n270 Id.
n271 Rowe, supra note 261.
n272 E-mail from Bertis Downs, III, Counsel, R.E.M., to Dawn Maynor, Second-year law student, University of Georgia School of Law (Nov. 21, 2001) (on file with author). The author gratefully acknowledges the
guidance of Bertis Downs III, Esq. in the composition of this Note, as well as the direction and support provided
by Jason Lewis, Chris Thomas, Katie Bindles, Gracie Waldrup, and the esteemed L. Ray Patterson.
n273 Id.
Page 173
Page 33
n274 Id.
n275 Id.
n276 Nancy Sinatra, These Books Are Made for Walkin', Boots (Reprise Records 1977).
n277 Mark Brown, BOOTLEG PIRATES//MUSIC: Bootlegging and tape-trading of unreleased and live
tracks is exploding. Fans want these unauthorized recordings, but is the trend hurting the artists they love?, Orange County Reg., Mar. 19, 1995, available at 1995 WL 5840197. Bob Dylan released "The Basement Tapes" in
1975, his sanctioned version of "Great White Wonder." Id. Dylan also issued "Bootleg Series, Vols. 1-3." Id.
n278 Id. Frank Zappa released a series of albums called "Beat the Boots." Id.
n279 Id. Led Zeppelin included bootlegged tracks in the CD box set it issued in 1991. Id.
n280 Jon Pareles, Bootleggers: Unsung Heroes of Music?, New Orleans Times-Picayune, Dec. 22, 1995,
n281 Roger Catlin, Matthews Pacifies Fans with Some Live Stock, Rec., Northern N.J., Feb. 22, 1999,
n282 Id.
n283 Mark Brown, Sound Investment: Concert Tapers Help Make Music History, Denver Rocky Mountain
News, Oct. 22, 2000, available at 2000 WL 6610824.
n284 Id.
n285 Brian C. Drobnik, Truckin' in Style Along the Avenue: How the Grateful Dead Turned Alternative
Business and Legal Strategies Into a Great American Success Story, 2 Vand. J. Ent. L. & Prac. 242, 251 (2000).
n286 Brown, supra note 283.
n287 Id.
n288 See, e.g., alt.music.bootlegs (listing bootlegs accessible to fans).
n289 Gabe Stewart, Original Sin: They Have it on Tape: Anti-Piracy Chief Dave Martin Says thetions is
Minimal Compared to Those for Countald (U.K.), May 1, 1999, available at 1999 WL 17021832.
Page 174
Page 34
n290 Nancy Sinatra, supra note 276.
Page 175
MGM v. Grokster Supreme Court Decision Decided June 27, 2005. No. 04-48
Page 176
(Slip Opinion)
OCTOBER TERM, 2004
1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
METRO-GOLDWYN-MAYER STUDIOS INC. ET AL. v.
GROKSTER, LTD., ET AL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE NINTH CIRCUIT
No. 04–480.
Argued March 29, 2005—Decided June 27, 2005
Respondent companies distribute free software that allows computer
users to share electronic files through peer-to-peer networks, so
called because the computers communicate directly with each other,
not through central servers. Although such networks can be used to
share any type of digital file, recipients of respondents’ software have
mostly used them to share copyrighted music and video files without
authorization. Seeking damages and an injunction, a group of movie
studios and other copyright holders (hereinafter MGM) sued respondents for their users’ copyright infringements, alleging that respondents knowingly and intentionally distributed their software to enable users to infringe copyrighted works in violation of the Copyright
Act.
Discovery revealed that billions of files are shared across peer-topeer networks each month. Respondents are aware that users employ their software primarily to download copyrighted files, although
the decentralized networks do not reveal which files are copied, and
when. Respondents have sometimes learned about the infringement
directly when users have e-mailed questions regarding copyrighted
works, and respondents have replied with guidance. Respondents
are not merely passive recipients of information about infringement.
The record is replete with evidence that when they began to distribute their free software, each of them clearly voiced the objective that
recipients use the software to download copyrighted works and took
active steps to encourage infringement. After the notorious filesharing service, Napster, was sued by copyright holders for facilitating copyright infringement, both respondents promoted and marketed themselves as Napster alternatives. They receive no revenue
Page 177
2
METRO-GOLDWYN-MAYER STUDIOS INC. v.
GROKSTER, LTD.
Syllabus
from users, but, instead, generate income by selling advertising
space, then streaming the advertising to their users. As the number
of users increases, advertising opportunities are worth more. There
is no evidence that either respondent made an effort to filter copyrighted material from users’ downloads or otherwise to impede the
sharing of copyrighted files.
While acknowledging that respondents’ users had directly infringed MGM’s copyrights, the District Court nonetheless granted respondents summary judgment as to liability arising from distribution
of their software. The Ninth Circuit affirmed. It read Sony Corp. of
America v. Universal City Studios, Inc., 464 U. S. 417, as holding that
the distribution of a commercial product capable of substantial noninfringing uses could not give rise to contributory liability for infringement unless the distributor had actual knowledge of specific instances of infringement and failed to act on that knowledge. Because
the appeals court found respondents’ software to be capable of substantial noninfringing uses and because respondents had no actual
knowledge of infringement owing to the software’s decentralized architecture, the court held that they were not liable. It also held that
they did not materially contribute to their users’ infringement because the users themselves searched for, retrieved, and stored the infringing files, with no involvement by respondents beyond providing
the software in the first place. Finally, the court held that respondents could not be held liable under a vicarious infringement theory
because they did not monitor or control the software’s use, had no
agreed-upon right or current ability to supervise its use, and had no
independent duty to police infringement.
Held: One who distributes a device with the object of promoting its use
to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, going beyond mere distribution with knowledge of third-party action, is liable for the resulting
acts of infringement by third parties using the device, regardless of
the device’s lawful uses. Pp. 10–24.
(a) The tension between the competing values of supporting creativity through copyright protection and promoting technological innovation by limiting infringement liability is the subject of this case.
Despite offsetting considerations, the argument for imposing indirect
liability here is powerful, given the number of infringing downloads
that occur daily using respondents’ software. When a widely shared
product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively against all direct infringers, so that the only practical alternative is to go against the device’s distributor for secondary liability on a theory of contributory or
vicarious infringement. One infringes contributorily by intentionally
Page 178
Cite as: 545 U. S. ____ (2005)
3
Syllabus
inducing or encouraging direct infringement, and infringes vicariously by profiting from direct infringement while declining to exercise
the right to stop or limit it. Although “[t]he Copyright Act does not
expressly render anyone liable for [another’s] infringement,” Sony,
464 U. S., at 434, these secondary liability doctrines emerged from
common law principles and are well established in the law, e.g., id.,
at 486. Pp. 10–13.
(b) Sony addressed a claim that secondary liability for infringement
can arise from the very distribution of a commercial product. There,
copyright holders sued Sony, the manufacturer of videocassette recorders, claiming that it was contributorily liable for the infringement that occurred when VCR owners taped copyrighted programs.
The evidence showed that the VCR’s principal use was “timeshifting,” i.e., taping a program for later viewing at a more convenient time, which the Court found to be a fair, noninfringing use. 464
U. S., at 423–424. Moreover, there was no evidence that Sony had
desired to bring about taping in violation of copyright or taken active
steps to increase its profits from unlawful taping. Id., at 438. On
those facts, the only conceivable basis for liability was on a theory of
contributory infringement through distribution of a product. Id., at
439. Because the VCR was “capable of commercially significant noninfringing uses,” the Court held that Sony was not liable. Id., at 442.
This theory reflected patent law’s traditional staple article of commerce doctrine that distribution of a component of a patented device
will not violate the patent if it is suitable for use in other ways. 35
U. S. C §271(c). The doctrine absolves the equivocal conduct of selling an item with lawful and unlawful uses and limits liability to instances of more acute fault. In this case, the Ninth Circuit misread
Sony to mean that when a product is capable of substantial lawful
use, the producer cannot be held contributorily liable for third parties’ infringing use of it, even when an actual purpose to cause infringing use is shown, unless the distributors had specific knowledge
of infringement at a time when they contributed to the infringement
and failed to act upon that information. Sony did not displace other
secondary liability theories. Pp. 13–17.
(c) Nothing in Sony requires courts to ignore evidence of intent to
promote infringement if such evidence exists. It was never meant to
foreclose rules of fault-based liability derived from the common law.
464 U. S., at 439. Where evidence goes beyond a product’s characteristics or the knowledge that it may be put to infringing uses, and
shows statements or actions directed to promoting infringement,
Sony’s staple-article rule will not preclude liability. At common law a
copyright or patent defendant who “not only expected but invoked
[infringing use] by advertisement” was liable for infringement.
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4
GROKSTER, LTD.
Syllabus
Kalem Co. v. Harper Brothers, 222 U. S. 55, 62–63. The rule on inducement of infringement as developed in the early cases is no different today. Evidence of active steps taken to encourage direct infringement, such as advertising an infringing use or instructing how
to engage in an infringing use, shows an affirmative intent that the
product be used to infringe, and overcomes the law’s reluctance to
find liability when a defendant merely sells a commercial product
suitable for some lawful use. A rule that premises liability on purposeful, culpable expression and conduct does nothing to compromise
legitimate commerce or discourage innovation having a lawful promise. Pp. 17–20.
(d) On the record presented, respondents’ unlawful objective is unmistakable. The classic instance of inducement is by advertisement
or solicitation that broadcasts a message designed to stimulate others
to commit violations. MGM argues persuasively that such a message
is shown here. Three features of the evidence of intent are particularly notable. First, each of the respondents showed itself to be aiming to satisfy a known source of demand for copyright infringement,
the market comprising former Napster users. Respondents’ efforts to
supply services to former Napster users indicate a principal, if not
exclusive, intent to bring about infringement. Second, neither respondent attempted to develop filtering tools or other mechanisms to
diminish the infringing activity using their software. While the
Ninth Circuit treated that failure as irrelevant because respondents
lacked an independent duty to monitor their users’ activity, this evidence underscores their intentional facilitation of their users’ infringement. Third, respondents make money by selling advertising
space, then by directing ads to the screens of computers employing
their software. The more their software is used, the more ads are
sent out and the greater the advertising revenue. Since the extent of
the software’s use determines the gain to the distributors, the commercial sense of their enterprise turns on high-volume use, which the
record shows is infringing. This evidence alone would not justify an
inference of unlawful intent, but its import is clear in the entire record’s context. Pp. 20–23.
(e) In addition to intent to bring about infringement and distribution of a device suitable for infringing use, the inducement theory requires evidence of actual infringement by recipients of the device, the
software in this case. There is evidence of such infringement on a gigantic scale. Because substantial evidence supports MGM on all
elements, summary judgment for respondents was error. On remand, reconsideration of MGM’s summary judgment motion will be
in order. Pp. 23–24.
380 F. 3d 1154, vacated and remanded.
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Cite as: 545 U. S. ____ (2005)
5
Syllabus
SOUTER, J., delivered the opinion for a unanimous Court. GINSBURG,
J., filed a concurring opinion, in which REHNQUIST, C. J., and KENNEDY,
J., joined. BREYER, J., filed a concurring opinion, in which STEVENS and
O’CONNOR, JJ., joined.
Page 181
Cite as: 545 U. S. ____ (2005)
1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Washington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
_________________
No. 04–480
_________________
METRO-GOLDWYN-MAYER STUDIOS INC., ET AL.,
PETITIONERS v. GROKSTER, LTD., ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE NINTH CIRCUIT
[June 27, 2005]
JUSTICE SOUTER delivered the opinion of the Court.
The question is under what circumstances the distributor of a product capable of both lawful and unlawful use is
liable for acts of copyright infringement by third parties
using the product. We hold that one who distributes a
device with the object of promoting its use to infringe
copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the
resulting acts of infringement by third parties.
I
A
Respondents, Grokster, Ltd., and StreamCast Networks,
Inc., defendants in the trial court, distribute free software
products that allow computer users to share electronic
files through peer-to-peer networks, so called because
users’ computers communicate directly with each other,
not through central servers. The advantage of peer-topeer networks over information networks of other types
shows up in their substantial and growing popularity.
Because they need no central computer server to mediate
the exchange of information or files among users, the high-
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GROKSTER, LTD.
bandwidth communications capacity for a server may be
dispensed with, and the need for costly server storage
space is eliminated. Since copies of a file (particularly a
popular one) are available on many users’ computers, file
requests and retrievals may be faster than on other types
of networks, and since file exchanges do not travel through
a server, communications can take place between any
computers that remain connected to the network without
risk that a glitch in the server will disable the network in
its entirety. Given these benefits in security, cost, and
efficiency, peer-to-peer networks are employed to store
and distribute electronic files by universities, government
agencies, corporations, and libraries, among others.1
Other users of peer-to-peer networks include individual
recipients of Grokster’s and StreamCast’s software, and
although the networks that they enjoy through using the
software can be used to share any type of digital file, they
have prominently employed those networks in sharing
copyrighted music and video files without authorization.
A group of copyright holders (MGM for short, but including motion picture studios, recording companies, songwriters, and music publishers) sued Grokster and
StreamCast for their users’ copyright infringements,
alleging that they knowingly and intentionally distributed
their software to enable users to reproduce and distribute
the copyrighted works in violation of the Copyright Act, 17
U. S. C. §101 et seq. (2000 ed. and Supp. II).2 MGM sought
——————
1 Peer-to-peer networks have disadvantages as well.
Searches on
peer-to-peer networks may not reach and uncover all available files
because search requests may not be transmitted to every computer on
the network. There may be redundant copies of popular files. The
creator of the software has no incentive to minimize storage or bandwidth consumption, the costs of which are borne by every user of the
network. Most relevant here, it is more difficult to control the content
of files available for retrieval and the behavior of users.
2 The studios and recording companies and the songwriters and music
publishers filed separate suits against the defendants that were con-
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3
damages and an injunction.
Discovery during the litigation revealed the way the
software worked, the business aims of each defendant
company, and the predilections of the users. Grokster’s
eponymous software employs what is known as FastTrack
technology, a protocol developed by others and licensed to
Grokster. StreamCast distributes a very similar product
except that its software, called Morpheus, relies on what is
known as Gnutella technology.3 A user who downloads
and installs either software possesses the protocol to send
requests for files directly to the computers of others using
software compatible with FastTrack or Gnutella. On the
FastTrack network opened by the Grokster software, the
user’s request goes to a computer given an indexing capacity by the software and designated a supernode, or to some
other computer with comparable power and capacity to
collect temporary indexes of the files available on the
computers of users connected to it. The supernode (or
indexing computer) searches its own index and may communicate the search request to other supernodes. If the
file is found, the supernode discloses its location to the
computer requesting it, and the requesting user can
download the file directly from the computer located. The
copied file is placed in a designated sharing folder on the
requesting user’s computer, where it is available for other
users to download in turn, along with any other file in that
folder.
In the Gnutella network made available by Morpheus,
the process is mostly the same, except that in some versions of the Gnutella protocol there are no supernodes. In
these versions, peer computers using the protocol commu——————
solidated by the District Court.
3 Subsequent versions of Morpheus, released after the record was
made in this case, apparently rely not on Gnutella but on a technology
called Neonet. These developments are not before us.
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nicate directly with each other. When a user enters a
search request into the Morpheus software, it sends the
request to computers connected with it, which in turn pass
the request along to other connected peers. The search
results are communicated to the requesting computer, and
the user can download desired files directly from peers’
computers. As this description indicates, Grokster and
StreamCast use no servers to intercept the content of the
search requests or to mediate the file transfers conducted
by users of the software, there being no central point
through which the substance of the communications
passes in either direction.4
Although Grokster and StreamCast do not therefore
know when particular files are copied, a few searches
using their software would show what is available on the
networks the software reaches. MGM commissioned a
statistician to conduct a systematic search, and his study
showed that nearly 90% of the files available for download
on the FastTrack system were copyrighted works.5 Grokster and StreamCast dispute this figure, raising methodological problems and arguing that free copying even of
copyrighted works may be authorized by the rightholders.
They also argue that potential noninfringing uses of their
software are significant in kind, even if infrequent in
practice. Some musical performers, for example, have
gained new audiences by distributing their copyrighted
works for free across peer-to-peer networks, and some
——————
4 There is some evidence that both Grokster and StreamCast previously operated supernodes, which compiled indexes of files available on
all of the nodes connected to them. This evidence, pertaining to previous versions of the defendants’ software, is not before us and would not
affect our conclusions in any event.
5 By comparison, evidence introduced by the plaintiffs in A & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (CA9 2001), showed that
87% of files available on the Napster filesharing network were copyrighted, id., at 1013.
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5
distributors of unprotected content have used peer-to-peer
networks to disseminate files, Shakespeare being an
example. Indeed, StreamCast has given Morpheus users
the opportunity to download the briefs in this very case,
though their popularity has not been quantified.
As for quantification, the parties’ anecdotal and statistical evidence entered thus far to show the content available
on the FastTrack and Gnutella networks does not say
much about which files are actually downloaded by users,
and no one can say how often the software is used to obtain copies of unprotected material. But MGM’s evidence
gives reason to think that the vast majority of users’
downloads are acts of infringement, and because well over
100 million copies of the software in question are known to
have been downloaded, and billions of files are shared
across the FastTrack and Gnutella networks each month,
the probable scope of copyright infringement is staggering.
Grokster and StreamCast concede the infringement in
most downloads, Brief for Respondents 10, n. 6, and it is
uncontested that they are aware that users employ their
software primarily to download copyrighted files, even if
the decentralized FastTrack and Gnutella networks fail to
reveal which files are being copied, and when. From time
to time, moreover, the companies have learned about their
users’ infringement directly, as from users who have sent
e-mail to each company with questions about playing
copyrighted movies they had downloaded, to whom the
companies have responded with guidance.6 App. 559–563,
808–816, 939–954. And MGM notified the companies of 8
million copyrighted files that could be obtained using their
software.
Grokster and StreamCast are not, however, merely
passive recipients of information about infringing use.
——————
6 The Grokster founder contends that in answering these e-mails he
often did not read them fully. App. 77, 769.
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The record is replete with evidence that from the moment
Grokster and StreamCast began to distribute their free
software, each one clearly voiced the objective that recipients use it to download copyrighted works, and each took
active steps to encourage infringement.
After the notorious file-sharing service, Napster, was
sued by copyright holders for facilitation of copyright
infringement, A & M Records, Inc. v. Napster, Inc., 114
F. Supp. 2d 896 (ND Cal. 2000), aff’d in part, rev’d in part,
239 F. 3d 1004 (CA9 2001), StreamCast gave away a
software program of a kind known as OpenNap, designed
as compatible with the Napster program and open to
Napster users for downloading files from other Napster
and OpenNap users’ computers. Evidence indicates that
“[i]t was always [StreamCast’s] intent to use [its OpenNap
network] to be able to capture email addresses of [its]
initial target market so that [it] could promote [its]
StreamCast Morpheus interface to them,” App. 861; indeed, the OpenNap program was engineered “ ‘to leverage
Napster’s 50 million user base,’ ” id., at 746.
StreamCast monitored both the number of users
downloading its OpenNap program and the number of
music files they downloaded. Id., at 859, 863, 866. It also
used the resulting OpenNap network to distribute copies
of the Morpheus software and to encourage users to adopt
it. Id., at 861, 867, 1039. Internal company documents
indicate that StreamCast hoped to attract large numbers
of former Napster users if that company was shut down by
court order or otherwise, and that StreamCast planned to
be the next Napster. Id., at 861. A kit developed by
StreamCast to be delivered to advertisers, for example,
contained press articles about StreamCast’s potential to
capture former Napster users, id., at 568–572, and it
introduced itself to some potential advertisers as a company “which is similar to what Napster was,” id., at 884.
It broadcast banner advertisements to users of other
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7
Napster-compatible software, urging them to adopt its
OpenNap. Id., at 586. An internal e-mail from a company
executive stated: “ ‘We have put this network in place so
that when Napster pulls the plug on their free service . . .
or if the Court orders them shut down prior to that . . . we
will be positioned to capture the flood of their 32 million
users that will be actively looking for an alternative.’ ” Id.,
at 588–589, 861.
Thus, StreamCast developed promotional materials to
market its service as the best Napster alternative. One
proposed advertisement read: “Napster Inc. has announced that it will soon begin charging you a fee. That’s
if the courts don’t order it shut down first. What will you
do to get around it?” Id., at 897. Another proposed ad
touted StreamCast’s software as the “#1 alternative to
Napster” and asked “[w]hen the lights went off at Napster
. . . where did the users go?” Id., at 836 (ellipsis in original).7 StreamCast even planned to flaunt the illegal uses
of its software; when it launched the OpenNap network,
the chief technology officer of the company averred that
“[t]he goal is to get in trouble with the law and get sued.
It’s the best way to get in the new[s].” Id., at 916.
The evidence that Grokster sought to capture the market of former Napster users is sparser but revealing, for
Grokster launched its own OpenNap system called Swaptor and inserted digital codes into its Web site so that
computer users using Web search engines to look for
“Napster” or “[f]ree filesharing” would be directed to the
Grokster Web site, where they could download the Grokster software. Id., at 992–993. And Grokster’s name is an
apparent derivative of Napster.
——————
7 The
record makes clear that StreamCast developed these promotional materials but not whether it released them to the public. Even if
these advertisements were not released to the public and do not show
encouragement to infringe, they illuminate StreamCast’s purposes.
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StreamCast’s executives monitored the number of songs
by certain commercial artists available on their networks,
and an internal communication indicates they aimed to
have a larger number of copyrighted songs available on
their networks than other file-sharing networks. Id., at
868. The point, of course, would be to attract users of a
mind to infringe, just as it would be with their promotional materials developed showing copyrighted songs as
examples of the kinds of files available through Morpheus.
Id., at 848. Morpheus in fact allowed users to search
specifically for “Top 40” songs, id., at 735, which were
inevitably copyrighted. Similarly, Grokster sent users a
newsletter promoting its ability to provide particular,
popular copyrighted materials. Brief for Motion Picture
Studio and Recording Company Petitioners 7–8.
In addition to this evidence of express promotion, marketing, and intent to promote further, the business models
employed by Grokster and StreamCast confirm that their
principal object was use of their software to download
copyrighted works. Grokster and StreamCast receive no
revenue from users, who obtain the software itself for
nothing. Instead, both companies generate income by
selling advertising space, and they stream the advertising
to Grokster and Morpheus users while they are employing
the programs. As the number of users of each program
increases, advertising opportunities become worth more.
Cf. App. 539, 804. While there is doubtless some demand
for free Shakespeare, the evidence shows that substantive
volume is a function of free access to copyrighted work.
Users seeking Top 40 songs, for example, or the latest
release by Modest Mouse, are certain to be far more numerous than those seeking a free Decameron, and Grokster and StreamCast translated that demand into dollars.
Finally, there is no evidence that either company made
an effort to filter copyrighted material from users’
downloads or otherwise impede the sharing of copyrighted
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9
files. Although Grokster appears to have sent e-mails
warning users about infringing content when it received
threatening notice from the copyright holders, it never
blocked anyone from continuing to use its software to
share copyrighted files. Id., at 75–76. StreamCast not
only rejected another company’s offer of help to monitor
infringement, id., at 928–929, but blocked the Internet
Protocol addresses of entities it believed were trying to
engage in such monitoring on its networks, id., at 917–
922.
B
After discovery, the parties on each side of the case
cross-moved for summary judgment. The District Court
limited its consideration to the asserted liability of Grokster and StreamCast for distributing the current versions
of their software, leaving aside whether either was liable
“for damages arising from past versions of their software,
or from other past activities.” 259 F. Supp. 2d 1029, 1033
(CD Cal. 2003). The District Court held that those who
used the Grokster and Morpheus software to download
copyrighted media files directly infringed MGM’s copyrights, a conclusion not contested on appeal, but the court
nonetheless granted summary judgment in favor of Grokster and StreamCast as to any liability arising from distribution of the then current versions of their software.
Distributing that software gave rise to no liability in the
court’s view, because its use did not provide the distributors with actual knowledge of specific acts of infringement.
Case No. CV 01 08541 SVW (PJWx) (CD Cal., June 18,
2003), App. 1213.
The Court of Appeals affirmed. 380 F. 3d 1154 (CA9
2004). In the court’s analysis, a defendant was liable as a
contributory infringer when it had knowledge of direct
infringement and materially contributed to the infringement. But the court read Sony Corp. of America v. Uni-
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versal City Studios, Inc., 464 U. S. 417 (1984), as holding
that distribution of a commercial product capable of substantial noninfringing uses could not give rise to contributory liability for infringement unless the distributor had
actual knowledge of specific instances of infringement and
failed to act on that knowledge. The fact that the software
was capable of substantial noninfringing uses in the Ninth
Circuit’s view meant that Grokster and StreamCast were
not liable, because they had no such actual knowledge,
owing to the decentralized architecture of their software.
The court also held that Grokster and StreamCast did not
materially contribute to their users’ infringement because
it was the users themselves who searched for, retrieved,
and stored the infringing files, with no involvement by the
defendants beyond providing the software in the first
place.
The Ninth Circuit also considered whether Grokster and
StreamCast could be liable under a theory of vicarious
infringement. The court held against liability because the
defendants did not monitor or control the use of the software, had no agreed-upon right or current ability to supervise its use, and had no independent duty to police
infringement. We granted certiorari. 543 U. S. ___ (2004).
II
A
MGM and many of the amici fault the Court of Appeals’s holding for upsetting a sound balance between the
respective values of supporting creative pursuits through
copyright protection and promoting innovation in new
communication technologies by limiting the incidence of
liability for copyright infringement. The more artistic
protection is favored, the more technological innovation
may be discouraged; the administration of copyright law is
an exercise in managing the trade-off. See Sony Corp. v.
Universal City Studios, supra, at 442; see generally Gins-
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11
burg, Copyright and Control Over New Technologies of
Dissemination, 101 Colum. L. Rev. 1613 (2001); Lichtman
& Landes, Indirect Liability for Copyright Infringement:
An Economic Perspective, 16 Harv. J. L. & Tech. 395
(2003).
The tension between the two values is the subject of this
case, with its claim that digital distribution of copyrighted
material threatens copyright holders as never before,
because every copy is identical to the original, copying is
easy, and many people (especially the young) use filesharing software to download copyrighted works. This
very breadth of the software’s use may well draw the
public directly into the debate over copyright policy, Peters, Brace Memorial Lecture: Copyright Enters the Public
Domain, 51 J. Copyright Soc. 701, 705–717 (2004) (address
by Register of Copyrights), and the indications are that
the ease of copying songs or movies using software like
Grokster’s and Napster’s is fostering disdain for copyright
protection, Wu, When Code Isn’t Law, 89 Va. L. Rev. 679,
724–726 (2003). As the case has been presented to us,
these fears are said to be offset by the different concern
that imposing liability, not only on infringers but on distributors of software based on its potential for unlawful
use, could limit further development of beneficial technologies. See, e.g., Lemley & Reese, Reducing Digital
Copyright Infringement Without Restricting Innovation,
56 Stan. L. Rev. 1345, 1386–1390 (2004); Brief for Innovation Scholars and Economists as Amici Curiae 15–20;
Brief for Emerging Technology Companies as Amici Curiae 19–25; Brief for Intel Corporation as Amicus Curiae
20–22.8
——————
8 The mutual exclusivity of these values should not be overstated,
however. On the one hand technological innovators, including those
writing filesharing computer programs, may wish for effective copyright
protections for their work. See, e.g., Wu, When Code Isn’t Law, 89 Va.
L. Rev. 679, 750 (2003). (StreamCast itself was urged by an associate
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The argument for imposing indirect liability in this case
is, however, a powerful one, given the number of infringing downloads that occur every day using StreamCast’s
and Grokster’s software. When a widely shared service or
product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively
against all direct infringers, the only practical alternative
being to go against the distributor of the copying device for
secondary liability on a theory of contributory or vicarious
infringement. See In re Aimster Copyright Litigation, 334
F. 3d 643, 645–646 (CA7 2003).
One infringes contributorily by intentionally inducing or
encouraging direct infringement, see Gershwin Pub. Corp.
v. Columbia Artists Management, Inc., 443 F. 2d 1159,
1162 (CA2 1971), and infringes vicariously by profiting
from direct infringement while declining to exercise a
right to stop or limit it, Shapiro, Bernstein & Co. v. H. L.
Green Co., 316 F. 2d 304, 307 (CA2 1963).9 Although
——————
to “get [its] technology written down and [its intellectual property]
protected.” App. 866.) On the other hand the widespread distribution
of creative works through improved technologies may enable the
synthesis of new works or generate audiences for emerging artists. See
Eldred v. Ashcroft, 537 U. S. 186, 223–226 (2003) (STEVENS, J., dissenting); Van Houweling, Distributive Values in Copyright, 83 Texas
L. Rev. 1535, 1539–1540, 1562–1564 (2005); Brief for Sovereign Artists
et al. as Amici Curiae 11.
9 We stated in Sony Corp. of America v. Universal City Studios, Inc.,
464 U. S. 417 (1984), that “ ‘the lines between direct infringement,
contributory infringement and vicarious liability are not clearly drawn’
. . . . [R]easoned analysis of [the Sony plaintiffs’ contributory infringement claim] necessarily entails consideration of arguments and case
law which may also be forwarded under the other labels, and indeed
the parties . . . rely upon such arguments and authority in support of
their respective positions on the issue of contributory infringement,”
id., at 435, n. 17 (quoting Universal City Studios, Inc. v. Sony Corp.,
480 F. Supp. 429, 457–458 (CD Cal. 1979)). In the present case MGM
has argued a vicarious liability theory, which allows imposition of
liability when the defendant profits directly from the infringement and
has a right and ability to supervise the direct infringer, even if the
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13
“[t]he Copyright Act does not expressly render anyone
liable for infringement committed by another,” Sony Corp.
v. Universal City Studios, 464 U. S., at 434, these doctrines of secondary liability emerged from common law
principles and are well established in the law, id., at 486
(Blackmun, J., dissenting); Kalem Co. v. Harper Brothers,
222 U. S. 55, 62–63 (1911); Gershwin Pub. Corp. v. Columbia Artists Management, supra, at 1162; 3 M. Nimmer
& D. Nimmer, Copyright, §12.04[A] (2005).
B
Despite the currency of these principles of secondary
liability, this Court has dealt with secondary copyright
infringement in only one recent case, and because MGM
has tailored its principal claim to our opinion there, a look
at our earlier holding is in order. In Sony Corp. v. Universal City Studios, supra, this Court addressed a claim that
secondary liability for infringement can arise from the
very distribution of a commercial product. There, the
product, novel at the time, was what we know today as the
videocassette recorder or VCR. Copyright holders sued
Sony as the manufacturer, claiming it was contributorily
liable for infringement that occurred when VCR owners
taped copyrighted programs because it supplied the means
used to infringe, and it had constructive knowledge that
infringement would occur. At the trial on the merits, the
evidence showed that the principal use of the VCR was for
“ ‘time-shifting,’ ” or taping a program for later viewing at a
more convenient time, which the Court found to be a fair,
not an infringing, use. Id., at 423–424. There was no
——————
defendant initially lacks knowledge of the infringement. See, e.g.,
Shapiro, Bernstein & Co. v. H. L. Green Co., 316 F. 2d 304, 308 (CA2
1963); Dreamland Ball Room, Inc. v. Shapiro, Bernstein & Co., 36 F. 2d
354, 355 (CA7 1929). Because we resolve the case based on an inducement theory, there is no need to analyze separately MGM’s vicarious
liability theory.
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evidence that Sony had expressed an object of bringing
about taping in violation of copyright or had taken active
steps to increase its profits from unlawful taping. Id., at
438. Although Sony’s advertisements urged consumers to
buy the VCR to “ ‘record favorite shows’ ” or “ ‘build a library’ ” of recorded programs, id., at 459 (Blackmun, J.,
dissenting), neither of these uses was necessarily infringing, id., at 424, 454–455.
On those facts, with no evidence of stated or indicated
intent to promote infringing uses, the only conceivable
basis for imposing liability was on a theory of contributory
infringement arising from its sale of VCRs to consumers
with knowledge that some would use them to infringe. Id.,
at 439. But because the VCR was “capable of commercially significant noninfringing uses,” we held the manufacturer could not be faulted solely on the basis of its
distribution. Id., at 442.
This analysis reflected patent law’s traditional staple
article of commerce doctrine, now codified, that distribution of a component of a patented device will not violate
the patent if it is suitable for use in other ways. 35
U. S. C. §271(c); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476, 485 (1964) (noting codification of
cases); id., at 486, n. 6 (same). The doctrine was devised
to identify instances in which it may be presumed from
distribution of an article in commerce that the distributor
intended the article to be used to infringe another’s patent, and so may justly be held liable for that infringement.
“One who makes and sells articles which are only adapted
to be used in a patented combination will be presumed to
intend the natural consequences of his acts; he will be
presumed to intend that they shall be used in the combination of the patent.” New York Scaffolding Co. v. Whitney, 224 F. 452, 459 (CA8 1915); see also James Heekin
Co. v. Baker, 138 F. 63, 66 (CA8 1905); Canda v. Michigan
Malleable Iron Co., 124 F. 486, 489 (CA6 1903); Thomson-
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15
Houston Electric Co. v. Ohio Brass Co., 80 F. 712, 720–721
(CA6 1897); Red Jacket Mfg. Co. v. Davis, 82 F. 432, 439
(CA7 1897); Holly v. Vergennes Machine Co., 4 F. 74, 82
(CC Vt. 1880); Renwick v. Pond, 20 F. Cas. 536, 541 (No.
11,702) (CC SDNY 1872).
In sum, where an article is “good for nothing else” but
infringement, Canda v. Michigan Malleable Iron Co.,
supra, at 489, there is no legitimate public interest in its
unlicensed availability, and there is no injustice in presuming or imputing an intent to infringe, see Henry v.
A. B. Dick Co., 224 U. S. 1, 48 (1912), overruled on other
grounds, Motion Picture Patents Co. v. Universal Film
Mfg. Co., 243 U. S. 502 (1917). Conversely, the doctrine
absolves the equivocal conduct of selling an item with
substantial lawful as well as unlawful uses, and limits
liability to instances of more acute fault than the mere
understanding that some of one’s products will be misused. It leaves breathing room for innovation and a vigorous commerce. See Sony Corp. v. Universal City Studios,
supra, at 442; Dawson Chemical Co. v. Rohm & Haas Co.,
448 U. S. 176, 221 (1980); Henry v. A. B. Dick Co., supra,
at 48.
The parties and many of the amici in this case think the
key to resolving it is the Sony rule and, in particular, what
it means for a product to be “capable of commercially
significant noninfringing uses.” Sony Corp. v. Universal
City Studios, supra, at 442. MGM advances the argument
that granting summary judgment to Grokster and
StreamCast as to their current activities gave too much
weight to the value of innovative technology, and too little
to the copyrights infringed by users of their software,
given that 90% of works available on one of the networks
was shown to be copyrighted. Assuming the remaining
10% to be its noninfringing use, MGM says this should not
qualify as “substantial,” and the Court should quantify
Sony to the extent of holding that a product used “princi-
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pally” for infringement does not qualify. See Brief for
Motion Picture Studio and Recording Company Petitioners
31. As mentioned before, Grokster and StreamCast reply
by citing evidence that their software can be used to reproduce public domain works, and they point to copyright
holders who actually encourage copying. Even if infringement is the principal practice with their software
today, they argue, the noninfringing uses are significant
and will grow.
We agree with MGM that the Court of Appeals misapplied Sony, which it read as limiting secondary liability
quite beyond the circumstances to which the case applied.
Sony barred secondary liability based on presuming or
imputing intent to cause infringement solely from the
design or distribution of a product capable of substantial
lawful use, which the distributor knows is in fact used for
infringement. The Ninth Circuit has read Sony’s limitation to mean that whenever a product is capable of substantial lawful use, the producer can never be held contributorily liable for third parties’ infringing use of it; it
read the rule as being this broad, even when an actual
purpose to cause infringing use is shown by evidence
independent of design and distribution of the product,
unless the distributors had “specific knowledge of infringement at a time at which they contributed to the
infringement, and failed to act upon that information.”
380 F. 3d, at 1162 (internal quotation marks and alterations omitted). Because the Circuit found the StreamCast
and Grokster software capable of substantial lawful use, it
concluded on the basis of its reading of Sony that neither
company could be held liable, since there was no showing
that their software, being without any central server,
afforded them knowledge of specific unlawful uses.
This view of Sony, however, was error, converting the
case from one about liability resting on imputed intent to
one about liability on any theory. Because Sony did not
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17
displace other theories of secondary liability, and because
we find below that it was error to grant summary judgment to the companies on MGM’s inducement claim, we
do not revisit Sony further, as MGM requests, to add a
more quantified description of the point of balance between protection and commerce when liability rests solely
on distribution with knowledge that unlawful use will
occur. It is enough to note that the Ninth Circuit’s judgment rested on an erroneous understanding of Sony and to
leave further consideration of the Sony rule for a day when
that may be required.
C
Sony’s rule limits imputing culpable intent as a matter
of law from the characteristics or uses of a distributed
product. But nothing in Sony requires courts to ignore
evidence of intent if there is such evidence, and the case
was never meant to foreclose rules of fault-based liability
derived from the common law.10 Sony Corp. v. Universal
City Studios, 464 U. S., at 439 (“If vicarious liability is to
be imposed on Sony in this case, it must rest on the fact
that it has sold equipment with constructive knowledge” of
the potential for infringement). Thus, where evidence
goes beyond a product’s characteristics or the knowledge
that it may be put to infringing uses, and shows statements or actions directed to promoting infringement,
Sony’s staple-article rule will not preclude liability.
The classic case of direct evidence of unlawful purpose
occurs when one induces commission of infringement by
another, or “entic[es] or persuad[es] another” to infringe,
Black’s Law Dictionary 790 (8th ed. 2004), as by advertising. Thus at common law a copyright or patent defendant
——————
10 Nor does the Patent Act’s exemption from liability for those who
distribute a staple article of commerce, 35 U. S. C. §271(c), extend to
those who induce patent infringement, §271(b).
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who “not only expected but invoked [infringing use] by
advertisement” was liable for infringement “on principles
recognized in every part of the law.” Kalem Co. v. Harper
Brothers, 222 U. S., at 62–63 (copyright infringement).
See also Henry v. A. B. Dick Co., 224 U. S., at 48–49 (contributory liability for patent infringement may be found
where a good’s “most conspicuous use is one which will
coöperate in an infringement when sale to such user is
invoked by advertisement” of the infringing use); Thomson-Houston Electric Co. v. Kelsey Electric R. Specialty
Co., 75 F. 1005, 1007–1008 (CA2 1896) (relying on advertisements and displays to find defendant’s “willingness . . .
to aid other persons in any attempts which they may be
disposed to make towards [patent] infringement”); Rumford Chemical Works v. Hecker, 20 F. Cas. 1342, 1346 (No.
12,133) (CC N. J. 1876) (demonstrations of infringing
activity along with “avowals of the [infringing] purpose
and use for which it was made” supported liability for
patent infringement).
The rule on inducement of infringement as developed in
the early cases is no different today.11 Evidence of “active
steps . . . taken to encourage direct infringement,” Oak
Industries, Inc. v. Zenith Electronics Corp., 697 F. Supp.
988, 992 (ND Ill. 1988), such as advertising an infringing
use or instructing how to engage in an infringing use,
show an affirmative intent that the product be used to
infringe, and a showing that infringement was encouraged
overcomes the law’s reluctance to find liability when a
defendant merely sells a commercial product suitable for
some lawful use, see, e.g., Water Technologies Corp. v.
Calco, Ltd., 850 F. 2d 660, 668 (CA Fed. 1988) (liability for
inducement where one “actively and knowingly aid[s] and
abet[s] another’s direct infringement” (emphasis omitted));
Fromberg, Inc. v. Thornhill, 315 F. 2d 407, 412–413 (CA5
——————
11 Inducement
has been codified in patent law. Ibid.
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19
1963) (demonstrations by sales staff of infringing uses
supported liability for inducement); Haworth Inc. v. Herman Miller Inc., 37 USPQ 2d 1080, 1090 (WD Mich. 1994)
(evidence that defendant “demonstrate[d] and recommend[ed] infringing configurations” of its product could
support inducement liability); Sims v. Mack Trucks, Inc.,
459 F. Supp. 1198, 1215 (ED Pa. 1978) (finding inducement where the use “depicted by the defendant in its
promotional film and brochures infringes the . . . patent”),
overruled on other grounds, 608 F. 2d 87 (CA3 1979). Cf.
W. Keeton, D. Dobbs, R. Keeton, & D. Owen, Prosser and
Keeton on Law of Torts 37 (5th ed. 1984) (“There is a
definite tendency to impose greater responsibility upon a
defendant whose conduct was intended to do harm, or was
morally wrong”).
For the same reasons that Sony took the staple-article
doctrine of patent law as a model for its copyright safeharbor rule, the inducement rule, too, is a sensible one for
copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other
affirmative steps taken to foster infringement, is liable for
the resulting acts of infringement by third parties. We
are, of course, mindful of the need to keep from trenching
on regular commerce or discouraging the development of
technologies with lawful and unlawful potential. Accordingly, just as Sony did not find intentional inducement
despite the knowledge of the VCR manufacturer that its
device could be used to infringe, 464 U. S., at 439, n. 19,
mere knowledge of infringing potential or of actual infringing uses would not be enough here to subject a distributor
to liability. Nor would ordinary acts incident to product
distribution, such as offering customers technical support
or product updates, support liability in themselves. The
inducement rule, instead, premises liability on purposeful,
culpable expression and conduct, and thus does nothing to
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compromise legitimate commerce or discourage innovation
having a lawful promise.
III
A
The only apparent question about treating MGM’s
evidence as sufficient to withstand summary judgment
under the theory of inducement goes to the need on
MGM’s part to adduce evidence that StreamCast and
Grokster communicated an inducing message to their
software users. The classic instance of inducement is by
advertisement or solicitation that broadcasts a message
designed to stimulate others to commit violations. MGM
claims that such a message is shown here. It is undisputed that StreamCast beamed onto the computer screens
of users of Napster-compatible programs ads urging the
adoption of its OpenNap program, which was designed, as
its name implied, to invite the custom of patrons of Napster, then under attack in the courts for facilitating massive infringement. Those who accepted StreamCast’s
OpenNap program were offered software to perform the
same services, which a factfinder could conclude would
readily have been understood in the Napster market as
the ability to download copyrighted music files. Grokster
distributed an electronic newsletter containing links to
articles promoting its software’s ability to access popular
copyrighted music. And anyone whose Napster or free
file-sharing searches turned up a link to Grokster would
have understood Grokster to be offering the same filesharing ability as Napster, and to the same people who
probably used Napster for infringing downloads; that
would also have been the understanding of anyone offered
Grokster’s suggestively named Swaptor software, its
version of OpenNap. And both companies communicated a
clear message by responding affirmatively to requests for
help in locating and playing copyrighted materials.
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21
In StreamCast’s case, of course, the evidence just described was supplemented by other unequivocal indications of unlawful purpose in the internal communications
and advertising designs aimed at Napster users (“When
the lights went off at Napster . . . where did the users go?”
App. 836 (ellipsis in original)). Whether the messages
were communicated is not to the point on this record. The
function of the message in the theory of inducement is to
prove by a defendant’s own statements that his unlawful
purpose disqualifies him from claiming protection (and
incidentally to point to actual violators likely to be found
among those who hear or read the message). See supra, at
17–19. Proving that a message was sent out, then, is the
preeminent but not exclusive way of showing that active
steps were taken with the purpose of bringing about infringing acts, and of showing that infringing acts took
place by using the device distributed. Here, the summary
judgment record is replete with other evidence that Grokster and StreamCast, unlike the manufacturer and distributor in Sony, acted with a purpose to cause copyright
violations by use of software suitable for illegal use. See
supra, at 6–9.
Three features of this evidence of intent are particularly
notable. First, each company showed itself to be aiming to
satisfy a known source of demand for copyright infringement, the market comprising former Napster users.
StreamCast’s internal documents made constant reference
to Napster, it initially distributed its Morpheus software
through an OpenNap program compatible with Napster, it
advertised its OpenNap program to Napster users, and its
Morpheus software functions as Napster did except that it
could be used to distribute more kinds of files, including
copyrighted movies and software programs. Grokster’s
name is apparently derived from Napster, it too initially
offered an OpenNap program, its software’s function is
likewise comparable to Napster’s, and it attempted to
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divert queries for Napster onto its own Web site. Grokster
and StreamCast’s efforts to supply services to former
Napster users, deprived of a mechanism to copy and distribute what were overwhelmingly infringing files, indicate a principal, if not exclusive, intent on the part of each
to bring about infringement.
Second, this evidence of unlawful objective is given
added significance by MGM’s showing that neither company attempted to develop filtering tools or other mechanisms to diminish the infringing activity using their software. While the Ninth Circuit treated the defendants’
failure to develop such tools as irrelevant because they
lacked an independent duty to monitor their users’ activity, we think this evidence underscores Grokster’s and
StreamCast’s intentional facilitation of their users’ infringement.12
Third, there is a further complement to the direct evidence of unlawful objective. It is useful to recall that
StreamCast and Grokster make money by selling advertising space, by directing ads to the screens of computers
employing their software. As the record shows, the more
the software is used, the more ads are sent out and the
greater the advertising revenue becomes. Since the extent
of the software’s use determines the gain to the distributors, the commercial sense of their enterprise turns on
high-volume use, which the record shows is infringing.13
——————
12 Of
course, in the absence of other evidence of intent, a court would
be unable to find contributory infringement liability merely based on a
failure to take affirmative steps to prevent infringement, if the device
otherwise was capable of substantial noninfringing uses. Such a
holding would tread too close to the Sony safe harbor.
13 Grokster and StreamCast contend that any theory of liability based
on their conduct is not properly before this Court because the rulings in
the trial and appellate courts dealt only with the present versions of
their software, not “past acts . . . that allegedly encouraged infringement or assisted . . . known acts of infringement.” Brief for Respondents 14; see also id., at 34. This contention misapprehends the basis
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23
This evidence alone would not justify an inference of
unlawful intent, but viewed in the context of the entire
record its import is clear.
The unlawful objective is unmistakable.
B
In addition to intent to bring about infringement and
distribution of a device suitable for infringing use, the
inducement theory of course requires evidence of actual
infringement by recipients of the device, the software in
this case. As the account of the facts indicates, there is
evidence of infringement on a gigantic scale, and there is
no serious issue of the adequacy of MGM’s showing on this
point in order to survive the companies’ summary judgment requests. Although an exact calculation of infringing
use, as a basis for a claim of damages, is subject to dispute, there is no question that the summary judgment
evidence is at least adequate to entitle MGM to go forward
with claims for damages and equitable relief.
*
*
*
In sum, this case is significantly different from Sony and
reliance on that case to rule in favor of StreamCast and
Grokster was error. Sony dealt with a claim of liability
based solely on distributing a product with alternative
lawful and unlawful uses, with knowledge that some users
would follow the unlawful course. The case struck a bal——————
for their potential liability. It is not only that encouraging a particular
consumer to infringe a copyright can give rise to secondary liability for
the infringement that results. Inducement liability goes beyond that,
and the distribution of a product can itself give rise to liability where
evidence shows that the distributor intended and encouraged the
product to be used to infringe. In such a case, the culpable act is not
merely the encouragement of infringement but also the distribution of
the tool intended for infringing use. See Kalem Co. v. Harper Brothers,
222 U. S. 55, 62–63 (1911); Cable/Home Communication Corp. v.
Network Productions, Inc., 902 F. 2d 829, 846 (CA11 1990); A & M
Records, Inc. v. Abdallah, 948 F. Supp. 1449, 1456 (CD Cal. 1996).
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ance between the interests of protection and innovation by
holding that the product’s capability of substantial lawful
employment should bar the imputation of fault and consequent secondary liability for the unlawful acts of others.
MGM’s evidence in this case most obviously addresses a
different basis of liability for distributing a product open
to alternative uses. Here, evidence of the distributors’
words and deeds going beyond distribution as such shows
a purpose to cause and profit from third-party acts of
copyright infringement. If liability for inducing infringement is ultimately found, it will not be on the basis of
presuming or imputing fault, but from inferring a patently
illegal objective from statements and actions showing
what that objective was.
There is substantial evidence in MGM’s favor on all
elements of inducement, and summary judgment in favor
of Grokster and StreamCast was error. On remand, reconsideration of MGM’s motion for summary judgment
will be in order.
The judgment of the Court of Appeals is vacated, and
the case is remanded for further proceedings consistent
with this opinion.
It is so ordered.
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1
GINSBURG, J., concurring
_________________
No. 04–480
_________________
[June 27, 2005]
JUSTICE GINSBURG, with whom THE CHIEF JUSTICE and
JUSTICE KENNEDY join, concurring.
I concur in the Court’s decision, which vacates in full the
judgment of the Court of Appeals for the Ninth Circuit,
ante, at 24, and write separately to clarify why I conclude
that the Court of Appeals misperceived, and hence misapplied, our holding in Sony Corp. of America v. Universal
City Studios, Inc., 464 U. S. 417 (1984). There is here at
least a “genuine issue as to [a] material fact,” Fed. Rule
Civ. Proc. 56(c), on the liability of Grokster or StreamCast,
not only for actively inducing copyright infringement, but
also or alternatively, based on the distribution of their
software products, for contributory copyright infringement. On neither score was summary judgment for Grokster and StreamCast warranted.
At bottom, however labeled, the question in this case is
whether Grokster and StreamCast are liable for the direct
infringing acts of others. Liability under our jurisprudence may be predicated on actively encouraging (or inducing) infringement through specific acts (as the Court’s
opinion develops) or on distributing a product distributees
use to infringe copyrights, if the product is not capable of
“substantial” or “commercially significant” noninfringing
uses. Sony, 464 U. S., at 442; see also 3 M. Nimmer & D.
Nimmer, Nimmer on Copyright §12.04[A][2] (2005). While
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the two categories overlap, they capture different culpable
behavior. Long coexisting, both are now codified in patent
law. Compare 35 U. S. C. §271(b) (active inducement
liability), with §271(c) (contributory liability for distribution of a product not “suitable for substantial noninfringing use”).
In Sony, 464 U. S. 417, the Court considered Sony’s
liability for selling the Betamax video cassette recorder. It
did so enlightened by a full trial record. Drawing an
analogy to the staple article of commerce doctrine from
patent law, the Sony Court observed that the “sale of an
article . . . adapted to [a patent] infringing use” does not
suffice “to make the seller a contributory infringer” if the
article “is also adapted to other and lawful uses.” Id., at
441 (quoting Henry v. A. B. Dick Co., 224 U. S. 1, 48
(1912), overruled on other grounds, Motion Picture Patents
Co. v. Universal Film Mfg. Co., 243 U. S. 502, 517 (1917)).
“The staple article of commerce doctrine” applied to
copyright, the Court stated, “must strike a balance between a copyright holder’s legitimate demand for effective—not merely symbolic—protection of the statutory
monopoly, and the rights of others freely to engage in
substantially unrelated areas of commerce.” Sony, 464
U. S., at 442. “Accordingly,” the Court held, “the sale of
copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the
product is widely used for legitimate, unobjectionable
purposes. Indeed, it need merely be capable of substantial
noninfringing uses.” Ibid. Thus, to resolve the Sony case,
the Court explained, it had to determine “whether the
Betamax is capable of commercially significant noninfringing uses.” Ibid.
To answer that question, the Court considered whether
“a significant number of [potential uses of the Betamax
were] noninfringing.” Ibid. The Court homed in on one
potential use—private, noncommercial time-shifting of
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3
television programs in the home (i.e., recording a broadcast TV program for later personal viewing). Timeshifting was noninfringing, the Court concluded, because
in some cases trial testimony showed it was authorized by
the copyright holder, id., at 443–447, and in others it
qualified as legitimate fair use, id., at 447–455. Most
purchasers used the Betamax principally to engage in
time-shifting, id., at 421, 423, a use that “plainly satisfie[d]” the Court’s standard, id., at 442. Thus, there was
no need in Sony to “give precise content to the question of
how much [actual or potential] use is commercially significant.” Ibid.1 Further development was left for later days
——————
1 JUSTICE
BREYER finds in Sony Corp. of America v. Universal City Studios, Inc., 464 U. S. 417 (1984), a “clear” rule permitting contributory
liability for copyright infringement based on distribution of a product
only when the product “will be used almost exclusively to infringe
copyrights.” Post, at 9–10. But cf. Sony, 464 U. S., at 442 (recognizing
“copyright holder’s legitimate demand for effective—not merely symbolic—protection”). Sony, as I read it, contains no clear, nearexclusivity test. Nor have Courts of Appeals unanimously recognized
JUSTICE BREYER’s clear rule. Compare A&M Records, Inc. v. Napster,
Inc., 239 F. 3d 1004, 1021 (CA9 2001) (“[E]vidence of actual knowledge
of specific acts of infringement is required to hold a computer system
operator liable for contributory copyright infringement.”), with In re
Aimster Copyright Litigation, 334 F. 3d 643, 649–650 (CA7 2003)
(“[W]hen a supplier is offering a product or service that has noninfringing as well as infringing uses, some estimate of the respective magnitudes of these uses is necessary for a finding of contributory infringement. . . . But the balancing of costs and benefits is necessary only in a
case in which substantial noninfringing uses, present or prospective,
are demonstrated.”). See also Matthew Bender & Co., Inc. v. West Pub.
Co., 158 F. 3d 693, 707 (CA2 1998) (“The Supreme Court applied [the
Sony] test to prevent copyright holders from leveraging the copyrights
in their original work to control distribution of . . . products that might
be used incidentally for infringement, but that had substantial noninfringing uses. . . . The same rationale applies here [to products] that
have substantial, predominant and noninfringing uses as tools for
research and citation.”). All Members of the Court agree, moreover,
that “the Court of Appeals misapplied Sony,” at least to the extent it
read that decision to limit “secondary liability” to a hardly-ever cate-
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and cases.
The Ninth Circuit went astray, I will endeavor to explain, when that court granted summary judgment to
Grokster and StreamCast on the charge of contributory
liability based on distribution of their software products.
Relying on its earlier opinion in A&M Records, Inc. v.
Napster, Inc., 239 F. 3d 1004 (CA9 2001), the Court of
Appeals held that “if substantial noninfringing use was
shown, the copyright owner would be required to show
that the defendant had reasonable knowledge of specific
infringing files.” 380 F. 3d 1154, 1161 (CA9 2004). “A
careful examination of the record,” the court concluded,
“indicates that there is no genuine issue of material fact as
to noninfringing use.” Ibid. The appeals court pointed to
the band Wilco, which made one of its albums available for
free downloading, to other recording artists who may have
authorized free distribution of their music through the
Internet, and to public domain literary works and films
available through Grokster’s and StreamCast’s software.
Ibid. Although it acknowledged MGM’s assertion that
“the vast majority of the software use is for copyright
infringement,” the court concluded that Grokster’s and
StreamCast’s proffered evidence met Sony’s requirement
that “a product need only be capable of substantial noninfringing uses.” 380 F. 3d, at 1162.2
This case differs markedly from Sony. Cf. Peters, Brace
Memorial Lecture: Copyright Enters the Public Domain,
51 J. Copyright Soc. 701, 724 (2004) (“The Grokster panel’s
reading of Sony is the broadest that any court has given it
——————
gory, “quite beyond the circumstances to which the case applied.” Ante,
at 16.
2 Grokster and StreamCast, in the Court of Appeals’ view, would be
entitled to summary judgment unless MGM could show that that the
software companies had knowledge of specific acts of infringement and
failed to act on that knowledge—a standard the court held MGM could
not meet. 380 F. 3d, at 1162–1163.
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5
. . . .”). Here, there has been no finding of any fair use and
little beyond anecdotal evidence of noninfringing uses. In
finding the Grokster and StreamCast software products
capable of substantial noninfringing uses, the District Court
and the Court of Appeals appear to have relied largely on
declarations submitted by the defendants. These declarations include assertions (some of them hearsay) that a
number of copyright owners authorize distribution of their
works on the Internet and that some public domain material
is available through peer-to-peer networks including those
accessed through Grokster’s and StreamCast’s software.
380 F. 3d, at 1161; 259 F. Supp. 2d 1029, 1035–1036 (CD
Cal. 2003); App. 125–171.
The District Court declared it “undisputed that there
are substantial noninfringing uses for Defendants’ software,” thus obviating the need for further proceedings.
259 F. Supp. 2d, at 1035. This conclusion appears to rest
almost entirely on the collection of declarations submitted
by Grokster and StreamCast. Ibid.
Review of these
declarations reveals mostly anecdotal evidence, sometimes
obtained second-hand, of authorized copyrighted works or
public domain works available online and shared through
peer-to-peer networks, and general statements about the
benefits of peer-to-peer technology. See, e.g., Decl. of Janis
Ian ¶13, App. 128 (“P2P technologies offer musicians an
alternative channel for promotion and distribution.”);
Decl. of Gregory Newby ¶12, id., at 136 (“Numerous authorized and public domain Project Gutenberg eBooks are
made available on Morpheus, Kazaa, Gnutella, Grokster,
and similar software products.”); Decl. of Aram Sinnreich
¶6, id., at 151 (“file sharing seems to have a net positive
impact on music sales”); Decl. of John Busher ¶8, id., at
166 (“I estimate that Acoustica generates sales of between
$1,000 and $10,000 per month as a result of the distribution of its trialware software through the Gnutella and
FastTrack Networks.”); Decl. of Patricia D. Hoekman ¶¶3–
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4, id., at 169–170 (search on Morpheus for “President
Bush speeches” found several video recordings, searches
for “Declaration of Independence” and “Bible” found various documents and declarant was able to download a copy
of the Declaration); Decl. of Sean L. Mayers ¶11, id., at 67
(“Existing open, decentralized peer-to-peer file-sharing
networks . . . offer content owners distinct business advantages over alternate online distribution technologies.”).
Compare Decl. of Brewster Kahle ¶20, id., at 142 (“Those
who download the Prelinger films . . . are entitled to redistribute those files, and the Archive welcomes their redistribution by the Morpheus-Grokster-KaZaa community of
users.”), with Deposition of Brewster Kahle, id., at 396–
403 (Sept. 18, 2002) (testifying that he has no knowledge
of any person downloading a Prelinger film using Morpheus, Grokster, or KaZaA). Compare also Decl. of Richard Prelinger ¶17, id., at 147 (“[W]e welcome further
redistribution of the Prelinger films . . . by individuals
using peer-to-peer software products like Morpheus, KaZaA and Grokster.”), with Deposition of Richard Prelinger,
id., at 410–411 (Oct. 1, 2002) (“Q. What is your understanding of Grokster? A. I have no understanding of
Grokster. . . . Q. Do you know whether any user of the
Grokster software has made available to share any Prelinger film? A. No.”). See also Deposition of Aram Sinnreich,
id., at 390 (Sept. 25, 2002) (testimony about the band
Wilco based on “[t]he press and industry news groups and
scuttlebutt.”). These declarations do not support summary
judgment in the face of evidence, proffered by MGM, of
overwhelming use of Grokster’s and StreamCast’s software for infringement.3
——————
3 JUSTICE BREYER finds support for summary judgment in this motley
collection of declarations and in a survey conducted by an expert
retained by MGM. Post, at 4–8. That survey identified 75% of the files
available through Grokster as copyrighted works owned or controlled
by the plaintiffs, and 15% of the files as works likely copyrighted. App.
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7
Even if the absolute number of noninfringing files copied
using the Grokster and StreamCast software is large, it does
not follow that the products are therefore put to substantial
noninfringing uses and are thus immune from liability. The
number of noninfringing copies may be reflective of, and
dwarfed by, the huge total volume of files shared. Further,
the District Court and the Court of Appeals did not sharply
distinguish between uses of Grokster’s and StreamCast’s
software products (which this case is about) and uses of
peer-to-peer technology generally (which this case is not
about).
In sum, when the record in this case was developed,
there was evidence that Grokster’s and StreamCast’s
products were, and had been for some time, overwhelmingly used to infringe, ante, at 4–6; App. 434–439, 476–
481, and that this infringement was the overwhelming
source of revenue from the products, ante, at 8–9; 259
F. Supp. 2d, at 1043–1044. Fairly appraised, the evidence
was insufficient to demonstrate, beyond genuine debate, a
reasonable prospect that substantial or commercially
significant noninfringing uses were likely to develop over
——————
439. As to the remaining 10% of the files, “there was not enough
information to form reasonable conclusions either as to what those files
even consisted of, and/or whether they were infringing or noninfringing.” App. 479. Even assuming, as JUSTICE BREYER does, that
the Sony Court would have absolved Sony of contributory liability
solely on the basis of the use of the Betamax for authorized timeshifting, post, at 3–4, summary judgment is not inevitably appropriate
here. Sony stressed that the plaintiffs there owned “well below 10%” of
copyrighted television programming, 464 U. S., at 443, and found,
based on trial testimony from representatives of the four major sports
leagues and other individuals authorized to consent to home-recording
of their copyrighted broadcasts, that a similar percentage of program
copying was authorized, id., at 424. Here, the plaintiffs allegedly
control copyrights for 70% or 75% of the material exchanged through
the Grokster and StreamCast software, 380 F. 3d, at 1158; App. 439,
and the District Court does not appear to have relied on comparable
testimony about authorized copying from copyright holders.
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time. On this record, the District Court should not have
ruled dispositively on the contributory infringement
charge by granting summary judgment to Grokster and
StreamCast.4
If, on remand, the case is not resolved on summary
judgment in favor of MGM based on Grokster and
StreamCast actively inducing infringement, the Court of
Appeals, I would emphasize, should reconsider, on a fuller
record, its interpretation of Sony’s product distribution
holding.
——————
4 The
District Court’s conclusion that “[p]laintiffs do not dispute that
Defendants’ software is being used, and could be used, for substantial
noninfringing purposes,” 259 F. Supp. 2d 1029, 1036 (CD Cal. 2003);
accord 380 F. 3d, at 1161, is, to say the least, dubious. In the courts
below and in this Court, MGM has continuously disputed any such
conclusion. Brief for Motion Picture Studio and Recording Company
Petitioners 30–38; Brief for MGM Plaintiffs-Appellants in No. 03–
55894, etc. (CA9), p. 41; App. 356–357, 361–365.
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1
BREYER, J., concurring
_________________
No. 04–480
_________________
[June 27, 2005]
JUSTICE BREYER, with whom JUSTICE STEVENS and
JUSTICE O’CONNOR join, concurring.
I agree with the Court that the distributor of a dual-use
technology may be liable for the infringing activities of
third parties where he or she actively seeks to advance the
infringement. Ante, at 1. I further agree that, in light of
our holding today, we need not now “revisit” Sony Corp. of
America v. Universal City Studios, Inc., 464 U. S. 417
(1984). Ante, at 17. Other Members of the Court, however, take up the Sony question: whether Grokster’s product is “capable of ‘substantial’ or ‘commercially significant’
noninfringing uses.” Ante, at 1 (GINSBURG, J., concurring)
(quoting Sony, supra, at 442). And they answer that
question by stating that the Court of Appeals was wrong
when it granted summary judgment on the issue in Grokster’s favor. Ante, at 4. I write to explain why I disagree
with them on this matter.
I
The Court’s opinion in Sony and the record evidence (as
described and analyzed in the many briefs before us)
together convince me that the Court of Appeals’ conclusion
has adequate legal support.
A
I begin with Sony’s standard. In Sony, the Court con-
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sidered the potential copyright liability of a company that
did not itself illegally copy protected material, but rather
sold a machine—a Video Cassette Recorder (VCR)—that
could be used to do so. A buyer could use that machine for
noninfringing purposes, such as recording for later viewing (sometimes called “ ‘time-shifting,’ ” Sony, 464 U. S., at
421) uncopyrighted television programs or copyrighted
programs with a copyright holder’s permission. The buyer
could use the machine for infringing purposes as well,
such as building libraries of taped copyrighted programs.
Or, the buyer might use the machine to record copyrighted
programs under circumstances in which the legal status of
the act of recording was uncertain (i.e., where the copying
may, or may not, have constituted a “fair use,” id., at 425–
426). Sony knew many customers would use its VCRs to
engage in unauthorized copying and “ ‘library-building.’ ”
Id., at 458–459 (Blackmun, J., dissenting). But that fact,
said the Court, was insufficient to make Sony itself an
infringer. And the Court ultimately held that Sony was
not liable for its customers’ acts of infringement.
In reaching this conclusion, the Court recognized the
need for the law, in fixing secondary copyright liability, to
“strike a balance between a copyright holder’s legitimate
demand for effective—not merely symbolic—protection of
the statutory monopoly, and the rights of others freely to
engage in substantially unrelated areas of commerce.” Id.,
at 442. It pointed to patent law’s “staple article of commerce” doctrine, ibid., under which a distributor of a
product is not liable for patent infringement by its customers unless that product is “unsuited for any commercial noninfringing use.” Dawson Chemical Co. v. Rohm &
Haas Co., 448 U. S. 176, 198 (1980). The Court wrote that
the sale of copying equipment, “like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate,
unobjectionable purposes. Indeed, it need merely be capa-
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3
ble of substantial noninfringing uses.” Sony, 464 U. S., at
442 (emphasis added). The Court ultimately characterized
the legal “question” in the particular case as “whether
[Sony’s VCR] is capable of commercially significant noninfringing uses” (while declining to give “precise content” to
these terms). Ibid. (emphasis added).
It then applied this standard. The Court had before it a
survey (commissioned by the District Court and then
prepared by the respondents) showing that roughly 9% of
all VCR recordings were of the type—namely, religious,
educational, and sports programming—owned by producers and distributors testifying on Sony’s behalf who did
not object to time-shifting. See Brief for Respondent
Universal Studios et al. O. T. 1983, No. 81–1687, pp. 52–
53; see also Sony, supra, at 424 (7.3% of all Sony VCR use
is to record sports programs; representatives of the sports
leagues do not object). A much higher percentage of VCR
users had at one point taped an authorized program, in
addition to taping unauthorized programs. And the plaintiffs—not a large class of content providers as in this
case—owned only a small percentage of the total available
unauthorized programming. See ante, at 6–7, and n. 3
(GINSBURG, J., concurring). But of all the taping actually
done by Sony’s customers, only around 9% was of the sort
the Court referred to as authorized.
The Court found that the magnitude of authorized
programming was “significant,” and it also noted the
“significant potential for future authorized copying.” 464
U. S., at 444. The Court supported this conclusion by
referencing the trial testimony of professional sports
league officials and a religious broadcasting representative. Id., at 444, and n. 24. It also discussed (1) a Los
Angeles educational station affiliated with the Public
Broadcasting Service that made many of its programs
available for home taping, and (2) Mr. Rogers’ Neighborhood, a widely watched children’s program. Id., at 445.
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On the basis of this testimony and other similar evidence,
the Court determined that producers of this kind had
authorized duplication of their copyrighted programs “in
significant enough numbers to create a substantial market
for a noninfringing use of the” VCR. Id., at 447, n. 28
(emphasis added).
The Court, in using the key word “substantial,” indicated that these circumstances alone constituted a sufficient basis for rejecting the imposition of secondary liability. See id., at 456 (“Sony demonstrated a significant
likelihood that substantial numbers of copyright holders”
would not object to time-shifting (emphasis added)).
Nonetheless, the Court buttressed its conclusion by finding separately that, in any event, unauthorized timeshifting often constituted not infringement, but “fair use.”
Id., at 447–456.
B
When measured against Sony’s underlying evidence and
analysis, the evidence now before us shows that Grokster
passes Sony’s test—that is, whether the company’s product is capable of substantial or commercially significant
noninfringing uses. Id., at 442. For one thing, petitioners’
(hereinafter MGM) own expert declared that 75% of current files available on Grokster are infringing and 15% are
“likely infringing.” See App. 436–439, ¶¶6–17 (Decl. of Dr.
Ingram Olkin); cf. ante, at 4 (opinion of the Court). That
leaves some number of files near 10% that apparently are
noninfringing, a figure very similar to the 9% or so of
authorized time-shifting uses of the VCR that the Court
faced in Sony.
As in Sony, witnesses here explained the nature of the
noninfringing files on Grokster’s network without detailed
quantification. Those files include:
—Authorized copies of music by artists such as Wilco,
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Janis Ian, Pearl Jam, Dave Matthews, John Mayer, and
others. See App. at 152–153, ¶¶9–13 (Decl. of Aram
Sinnreich) (Wilco’s “lesson has already been adopted by
artists still signed to their major labels”); id., at 170, ¶¶5–
7 (Decl. of Patricia D. Hoekman) (locating “numerous
audio recordings” that were authorized for swapping); id.,
at 74, ¶10 (Decl. of Daniel B. Rung) (describing Grokster’s
partnership with a company that hosts music from thousands of independent artists)
—Free electronic books and other works from various
online publishers, including Project Gutenberg. See id., at
136, ¶12 (Decl. of Gregory B. Newby) (“Numerous authorized and public domain Project Gutenberg eBooks are
made available” on Grokster. Project Gutenberg “welcomes this widespread sharing . . . using these software
products[,] since they assist us in meeting our objectives”);
id., at 159–160, ¶32 (Decl. of Sinnreich)
—Public domain and authorized software, such as WinZip
8.1. Id., at 170, ¶8 (Decl. of Hoekman); id., at 165, ¶¶4–7
(Decl. of John Busher)
—Licensed music videos and television and movie segments distributed via digital video packaging with the
permission of the copyright holder. Id., at 70, ¶24 (Decl. of
Sean L. Mayers)
The nature of these and other lawfully swapped files is
such that it is reasonable to infer quantities of current
lawful use roughly approximate to those at issue in Sony.
At least, MGM has offered no evidence sufficient to survive summary judgment that could plausibly demonstrate
a significant quantitative difference. See ante, at 4 (opinion of the Court); see also Brief for Motion Picture Studio
and Recording Company Petitioners i (referring to “at
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least 90% of the total use of the services”); but see ante, at
6–7, n. 3 (GINSBURG, J., concurring). To be sure, in quantitative terms these uses account for only a small percentage of the total number of uses of Grokster’s product. But
the same was true in Sony, which characterized the relatively limited authorized copying market as “substantial.”
(The Court made clear as well in Sony that the amount of
material then presently available for lawful copying—if
not actually copied—was significant, see 464 U. S., at 444,
and the same is certainly true in this case.)
Importantly, Sony also used the word “capable,” asking
whether the product is “capable of” substantial noninfringing uses. Its language and analysis suggest that a figure
like 10%, if fixed for all time, might well prove insufficient,
but that such a figure serves as an adequate foundation
where there is a reasonable prospect of expanded legitimate uses over time. See ibid. (noting a “significant potential for future authorized copying”). And its language
also indicates the appropriateness of looking to potential
future uses of the product to determine its “capability.”
Here the record reveals a significant future market for
noninfringing uses of Grokster-type peer-to-peer software.
Such software permits the exchange of any sort of digital
file—whether that file does, or does not, contain copyrighted material. As more and more uncopyrighted information is stored in swappable form, it seems a likely
inference that lawful peer-to-peer sharing will become
increasingly prevalent. See, e.g., App. 142, ¶20 (Decl. of
Brewster Kahle) (“The [Internet Archive] welcomes [the]
redistribution [of authorized films] by the MorpheusGrokster-KaZaa community of users”); id., at 166, ¶8
(Decl. of Busher) (sales figures of $1,000 to $10,000 per
month through peer-to-peer networks “will increase in the
future as Acoustica’s trialware is more widely distributed
through these networks”); id., at 156–164, ¶¶21–40 (Decl.
of Sinnreich).
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And that is just what is happening. Such legitimate
noninfringing uses are coming to include the swapping of:
research information (the initial purpose of many peer-topeer networks); public domain films (e.g., those owned by
the Prelinger Archive); historical recordings and digital
educational materials (e.g., those stored on the Internet
Archive); digital photos (OurPictures, for example, is
starting a P2P photo-swapping service); “shareware” and
“freeware” (e.g., Linux and certain Windows software);
secure licensed music and movie files (Intent MediaWorks,
for example, protects licensed content sent across P2P
networks); news broadcasts past and present (the BBC
Creative Archive lets users “rip, mix and share the BBC”);
user-created audio and video files (including “podcasts”
that may be distributed through P2P software); and all
manner of free “open content” works collected by Creative
Commons (one can search for Creative Commons material
on StreamCast). See Brief for Distributed Computing
Industry Association as Amicus Curiae 15–26; Merges, A
New Dynamism in the Public Domain, 71 U. Chi. L. Rev.
183 (2004). I can find nothing in the record that suggests
that this course of events will not continue to flow naturally as a consequence of the character of the software
taken together with the foreseeable development of the
Internet and of information technology. Cf. ante, at 1–2
(opinion of the Court) (discussing the significant benefits
of peer-to-peer technology).
There may be other now-unforeseen noninfringing uses
that develop for peer-to-peer software, just as the homevideo rental industry (unmentioned in Sony) developed for
the VCR. But the foreseeable development of such uses,
when taken together with an estimated 10% noninfringing
material, is sufficient to meet Sony’s standard. And while
Sony considered the record following a trial, there are no
facts asserted by MGM in its summary judgment filings
that lead me to believe the outcome after a trial here could
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be any different. The lower courts reached the same
conclusion.
Of course, Grokster itself may not want to develop these
other noninfringing uses. But Sony’s standard seeks to
protect not the Groksters of this world (which in any event
may well be liable under today’s holding), but the development of technology more generally. And Grokster’s
desires in this respect are beside the point.
II
The real question here, I believe, is not whether the
record evidence satisfies Sony. As I have interpreted the
standard set forth in that case, it does. And of the Courts
of Appeals that have considered the matter, only one has
proposed interpreting Sony more strictly than I would
do—in a case where the product might have failed under
any standard. In re Aimster Copyright Litigation, 334
F. 3d 643, 653 (CA7 2003) (defendant “failed to show that
its service is ever used for any purpose other than to infringe” copyrights (emphasis added)); see Matthew Bender
& Co., Inc. v. West Pub. Co., 158 F. 3d 693, 706–707 (CA2
1998) (court did not require that noninfringing uses be
“predominant,” it merely found that they were predominant, and therefore provided no analysis of Sony’s boundaries); but see ante, at 3 n. 1 (GINSBURG, J., concurring); see
also A&M Records v. Napster, Inc., 239 F. 3d 1004, 1020
(CA9 2001) (discussing Sony); Cable/Home Communication Corp. v. Network Productions, Inc., 902 F. 2d 829,
842–847 (CA11 1990) (same); Vault Corp. v. Quaid Software, Ltd., 847 F. 2d 255, 262 (CA5 1988) (same); cf. Dynacore Holdings Corp. v. U. S. Philips Corp., 363 F. 3d
1263, 1275 (CA Fed. 2004) (same); see also Doe v. GTE
Corp., 347 F. 3d 655, 661 (CA7 2003) (“A person may be
liable as a contributory infringer if the product or service
it sells has no (or only slight) legal use”).
Instead, the real question is whether we should modify
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the Sony standard, as MGM requests, or interpret Sony
more strictly, as I believe JUSTICE GINSBURG’s approach
would do in practice. Compare ante, at 4–8 (concurring)
(insufficient evidence in this case of both present lawful
uses and of a reasonable prospect that substantial noninfringing uses would develop over time), with Sony, 464
U. S., at 442–447 (basing conclusion as to the likely existence of a substantial market for authorized copying upon
general declarations, some survey data, and common
sense).
As I have said, Sony itself sought to “strike a balance
between a copyright holder’s legitimate demand for effective—not merely symbolic—protection of the statutory
monopoly, and the rights of others freely to engage in
substantially unrelated areas of commerce.” Id., at 442.
Thus, to determine whether modification, or a strict interpretation, of Sony is needed, I would ask whether MGM
has shown that Sony incorrectly balanced copyright and
new-technology interests. In particular: (1) Has Sony (as I
interpret it) worked to protect new technology? (2) If so,
would modification or strict interpretation significantly
weaken that protection? (3) If so, would new or necessary
copyright-related benefits outweigh any such weakening?
A
The first question is the easiest to answer. Sony’s rule,
as I interpret it, has provided entrepreneurs with needed
assurance that they will be shielded from copyright liability as they bring valuable new technologies to market.
Sony’s rule is clear. That clarity allows those who develop new products that are capable of substantial noninfringing uses to know, ex ante, that distribution of their
product will not yield massive monetary liability. At the
same time, it helps deter them from distributing products
that have no other real function than—or that are specifically intended for—copyright infringement, deterrence
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that the Court’s holding today reinforces (by adding a
weapon to the copyright holder’s legal arsenal).
Sony’s rule is strongly technology protecting. The rule
deliberately makes it difficult for courts to find secondary
liability where new technology is at issue. It establishes
that the law will not impose copyright liability upon the
distributors of dual-use technologies (who do not themselves engage in unauthorized copying) unless the product
in question will be used almost exclusively to infringe
copyrights (or unless they actively induce infringements as
we today describe). Sony thereby recognizes that the
copyright laws are not intended to discourage or to control
the emergence of new technologies, including (perhaps
especially) those that help disseminate information and
ideas more broadly or more efficiently. Thus Sony’s rule
shelters VCRs, typewriters, tape recorders, photocopiers,
computers, cassette players, compact disc burners, digital
video recorders, MP3 players, Internet search engines, and
peer-to-peer software. But Sony’s rule does not shelter
descramblers, even if one could theoretically use a descrambler in a noninfringing way. 464 U. S., at 441–442;
Compare Cable/Home Communication Corp., supra, at
837–850 (developer liable for advertising television signal
descrambler), with Vault Corp., supra, at 262 (primary use
infringing but a substantial noninfringing use).
Sony’s rule is forward looking. It does not confine its
scope to a static snapshot of a product’s current uses
(thereby threatening technologies that have undeveloped
future markets). Rather, as the VCR example makes
clear, a product’s market can evolve dramatically over
time. And Sony—by referring to a capacity for substantial
noninfringing uses—recognizes that fact. Sony’s word
“capable” refers to a plausible, not simply a theoretical,
likelihood that such uses will come to pass, and that fact
anchors Sony in practical reality. Cf. Aimster, supra, at
651.
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Sony’s rule is mindful of the limitations facing judges
where matters of technology are concerned. Judges have
no specialized technical ability to answer questions about
present or future technological feasibilility or commercial
viability where technology professionals, engineers, and
venture capitalists themselves may radically disagree and
where answers may differ depending upon whether one
focuses upon the time of product development or the time
of distribution.
Consider, for example, the question
whether devices can be added to Grokster’s software that
will filter out infringing files. MGM tells us this is easy
enough to do, as do several amici that produce and sell the
filtering technology. See, e.g., Brief for Motion Picture
Studio Petitioners 11; Brief for Audible Magic Corp. et al.
as Amicus Curiae 3–10. Grokster says it is not at all easy
to do, and not an efficient solution in any event, and several apparently disinterested computer science professors
agree. See Brief for Respondents 31; Brief for Computer
Science Professors as Amicus Curiae 6–10, 14–18. Which
account should a judge credit? Sony says that the judge
will not necessarily have to decide.
Given the nature of the Sony rule, it is not surprising
that in the last 20 years, there have been relatively few
contributory infringement suits—based on a product
distribution theory—brought against technology providers
(a small handful of federal appellate court cases and perhaps fewer than two dozen District Court cases in the last
20 years). I have found nothing in the briefs or the record
that shows that Sony has failed to achieve its innovationprotecting objective.
B
The second, more difficult, question is whether a modified Sony rule (or a strict interpretation) would significantly weaken the law’s ability to protect new technology.
JUSTICE GINSBURG’s approach would require defendants
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to produce considerably more concrete evidence—more
than was presented here—to earn Sony’s shelter. That
heavier evidentiary demand, and especially the more
dramatic (case-by-case balancing) modifications that MGM
and the Government seek, would, I believe, undercut the
protection that Sony now offers.
To require defendants to provide, for example, detailed
evidence—say business plans, profitability estimates,
projected technological modifications, and so forth—would
doubtless make life easier for copyrightholder plaintiffs.
But it would simultaneously increase the legal uncertainty
that surrounds the creation or development of a new
technology capable of being put to infringing uses. Inventors and entrepreneurs (in the garage, the dorm room, the
corporate lab, or the boardroom) would have to fear (and
in many cases endure) costly and extensive trials when
they create, produce, or distribute the sort of information
technology that can be used for copyright infringement.
They would often be left guessing as to how a court, upon
later review of the product and its uses, would decide
when necessarily rough estimates amounted to sufficient
evidence. They would have no way to predict how courts
would weigh the respective values of infringing and noninfringing uses; determine the efficiency and advisability of
technological changes; or assess a product’s potential
future markets. The price of a wrong guess—even if it
involves a good-faith effort to assess technical and commercial viability—could be large statutory damages (not
less than $750 and up to $30,000 per infringed work). 17
U. S. C. §504(c)(1). The additional risk and uncertainty
would mean a consequent additional chill of technological
development.
C
The third question—whether a positive copyright impact
would outweigh any technology-related loss—I find the
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most difficult of the three. I do not doubt that a more
intrusive Sony test would generally provide greater revenue security for copyright holders. But it is harder to
conclude that the gains on the copyright swings would
exceed the losses on the technology roundabouts.
For one thing, the law disfavors equating the two different kinds of gain and loss; rather, it leans in favor of
protecting technology. As Sony itself makes clear, the
producer of a technology which permits unlawful copying
does not himself engage in unlawful copying—a fact that
makes the attachment of copyright liability to the creation, production, or distribution of the technology an exceptional thing. See 464 U. S., at 431 (courts “must be
circumspect” in construing the copyright laws to preclude
distribution of new technologies). Moreover, Sony has
been the law for some time. And that fact imposes a serious burden upon copyright holders like MGM to show a
need for change in the current rules of the game, including
a more strict interpretation of the test. See, e.g., Brief for
Motion Picture Studio Petitioners 31 (Sony should not
protect products when the “primary or principal” use is
infringing).
In any event, the evidence now available does not, in my
view, make out a sufficiently strong case for change. To
say this is not to doubt the basic need to protect copyrighted material from infringement. The Constitution
itself stresses the vital role that copyright plays in advancing the “useful Arts.” Art. I, §8, cl. 8. No one disputes
that “reward to the author or artist serves to induce release to the public of the products of his creative genius.”
United States v. Paramount Pictures, Inc., 334 U. S. 131,
158 (1948). And deliberate unlawful copying is no less an
unlawful taking of property than garden-variety theft.
See, e.g., 18 U. S. C. §2319 (criminal copyright infringement); §1961(1)(B) (copyright infringement can be a predicate act under the Racketeer Influenced and Corrupt
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Organizations Act); §1956(c)(7)(D) (money laundering
includes the receipt of proceeds from copyright infringement). But these highly general principles cannot by
themselves tell us how to balance the interests at issue in
Sony or whether Sony’s standard needs modification. And
at certain key points, information is lacking.
Will an unmodified Sony lead to a significant diminution
in the amount or quality of creative work produced? Since
copyright’s basic objective is creation and its revenue
objectives but a means to that end, this is the underlying
copyright question. See Twentieth Century Music Corp. v.
Aiken, 422 U. S. 151, 156 (1975) (“Creative work is to be
encouraged and rewarded, but private motivation must
ultimately serve the cause of promoting broad public
availability of literature, music, and the other arts”). And
its answer is far from clear.
Unauthorized copying likely diminishes industry
revenue, though it is not clear by how much. Compare
S. Liebowitz, Will MP3 Downloads Annihilate the
Record Industry? The Evidence So Far, p. 2 (June 2003),
http://www.utdallas.edu/~liebowit/intprop/records.pdf
(all Internet materials as visited June 24, 2005, and available in Clerk of Court’s case file) (file sharing
has caused a decline in music sales), and Press Release,
Informa Media Group Report (citing Music on the Internet
(5th ed. 2004)) (estimating total lost sales to the music
industry in the range of $2 billion annually),
at http://www.informatm.com, with F. Oberholzer
& K. Strumpf, The Effect of File Sharing on Record
Sales: An Empirical Analysis, p. 24 (Mar. 2004),
www.unc.edu/~cigar/papers/FileSharing_March2004.pdf
(academic study concluding that “file sharing has
no statistically significant effect on purchases of the
average album”), and McGuire, Study: File-Sharing
No Threat to Music Sales (Mar. 29, 2004),
http://www.washingtonpost.com/ac2/wp-dyn/A34300-2004
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15
Mar29?language=printer (discussing mixed evidence).
The extent to which related production has actually and
resultingly declined remains uncertain, though there is
good reason to believe that the decline, if any, is not substantial. See, e.g., M. Madden, Pew Internet & American
Life Project, Artists, Musicians, and the Internet, p. 21,
http://www.pewinternet.org/pdfs/PIP_Artists.Musicians_
Report.pdf (nearly 70% of musicians believe that file sharing is a minor threat or no threat at all to creative industries); Benkler, Sharing Nicely: On Shareable Goods and
the Emergence of Sharing as a Modality of Economic
Production, 114 Yale L. J. 273, 351–352 (2004) (“Much of
the actual flow of revenue to artists—from performances
and other sources—is stable even assuming a complete
displacement of the CD market by peer-to-peer distribution . . . . [I]t would be silly to think that music, a cultural
form without which no human society has existed, will
cease to be in our world [because of illegal file swapping]”).
More importantly, copyright holders at least potentially
have other tools available to reduce piracy and to abate
whatever threat it poses to creative production. As today’s
opinion makes clear, a copyright holder may proceed
against a technology provider where a provable specific
intent to infringe (of the kind the Court describes) is present. Ante, at 24 (opinion of the Court). Services like
Grokster may well be liable under an inducement theory.
In addition, a copyright holder has always had the legal
authority to bring a traditional infringement suit against
one who wrongfully copies. Indeed, since September 2003,
the Recording Industry Association of America (RIAA) has
filed “thousands of suits against people for sharing copyrighted material.” Walker, New Movement Hits Universities: Get Legal Music, Washington Post, Mar. 17, 2005,
p. E1. These suits have provided copyright holders with
damages; have served as a teaching tool, making clear
that much file sharing, if done without permission, is
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unlawful; and apparently have had a real and significant
deterrent effect. See, e.g., L. Rainie, M. Madden, D. Hess,
& G. Mudd, Pew Internet Project and comScore Media
Metrix Data Memo: The state of music downloading
and file-sharing online, pp. 2, 4, 6, 10 (Apr. 2004),
www.pewinternet.org/pdfs/PIP_Filesharing_April_04.pdf
(number of people downloading files fell from a peak of
roughly 35 million to roughly 23 million in the year following the first suits; 38% of current downloaders report
downloading fewer files because of the suits); M. Madden
& L. Rainie, Pew Internet Project Data Memo: Music and
video downloading moves beyond P2P, p. 7 (March 2005),
www.pewinternet.org/pdfs/PIP_Filesharing_March05.pdf
(number of downloaders has “inched up” but “continues to
rest well below the peak level”); Groennings, Note, Costs
and Benefits of the Recording Industry’s Litigation
Against Individuals, 20 Berkeley Technology L. J. 571
(2005); but see Evangelista, Downloading Music and
Movie Files is as Popular as Ever, San Francisco Chronicle, Mar. 28, 2005, p. E1 (referring to the continuing “tide
of rampant copyright infringement,” while noting that the
RIAA says it believes the “campaign of lawsuits and public
education has at least contained the problem”).
Further, copyright holders may develop new technological devices that will help curb unlawful infringement.
Some new technology, called “digital ‘watermarking’ ” and
“digital fingerprint[ing],” can encode within the file information about the author and the copyright scope and date,
which “fingerprints” can help to expose infringers. RIAA
Reveals Method to Madness, Wired News, Aug. 28, 2003,
http://www.wired.com/news/digiwood/0,1412,60222,00.html;
Besek, Anti-Circumvention Laws and Copyright: A Report
from the Kernochan Center for Law, Media and the
Arts, 27 Colum. J. L. & Arts 385, 391, 451 (2004). Other
technology can, through encryption, potentially restrict
users’ ability to make a digital copy. See J. Borland,
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17
Tripping the Rippers, C/net News.com (Sept. 28, 2001),
http://news.com.com/Tripping+the+rippers/2009=1023_3=
273619.html; but see Brief for Bridgemar Services Ltd. as
Amicus Curiae 5–8 (arguing that peer-to-peer service
providers can more easily block unlawful swapping).
At the same time, advances in technology have discouraged unlawful copying by making lawful copying (e.g.,
downloading music with the copyright holder’s permission)
cheaper and easier to achieve. Several services now sell
music for less than $1 per song. (Walmart.com, for example, charges $0.88 each). Consequently, many consumers
initially attracted to the convenience and flexibility of
services like Grokster are now migrating to lawful paid
services (services with copying permission) where they can
enjoy at little cost even greater convenience and flexibility
without engaging in unlawful swapping. See Wu, When
Code Isn’t Law, 89 Va. L. Rev. 679, 731–735 (2003) (noting
the prevalence of technological problems on unpaid swapping sites); K. Dean, P2P Tilts Toward Legitimacy,
wired.com, Wired News (Nov. 24, 2004), http://
www.wired.com/news/digiwood/0,1412,65836,00.html; M.
Madden & L. Rainie, March 2005 Data Memo, supra, at 6–
7 (percentage of current downloaders who have used paid
services rose from 24% to 43% in a year; number using
free services fell from 58% to 41%).
Thus, lawful music downloading services—those that
charge the customer for downloading music and pay royalties to the copyright holder—have continued to grow and
to produce substantial revenue. See Brief for Internet
Law Faculty as Amici Curiae 5–20; Bruno, Digital Entertainment: Piracy Fight Shows Encouraging Signs (Mar. 5,
2005), available at LEXIS, News Library, Billboard File
(in 2004, consumers worldwide purchased more than 10
times the number of digital tracks purchased in 2003;
global digital music market of $330 million in 2004 ex-
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pected to double in 2005); Press Release, Informa Media
Report, supra (global digital revenues will likely exceed $3
billion in 2010); Ashton, [International Federation of the
Phonographic Industry] Predicts Downloads Will Hit the
Mainstream, Music Week, Jan. 29, 2005, p. 6 (legal music
sites and portable MP3 players “are helping transform the
digital music market” into “an everyday consumer experience”). And more advanced types of non-music-oriented
P2P networks have also started to develop, drawing in
part on the lessons of Grokster.
Finally, as Sony recognized, the legislative option remains available. Courts are less well suited than Congress to the task of “accommodat[ing] fully the varied
permutations of competing interests that are inevitably
implicated by such new technology.” Sony, 464 U. S., at
431; see, e.g., Audio Home Recording Act of 1992, 106 Stat.
4237 (adding 17 U. S. C., ch. 10); Protecting Innovation
and Art While Preventing Piracy: Hearing Before the
Senate Comm. on the Judiciary, 108th Cong., 2d Sess.
(July 22, 2004).
I do not know whether these developments and similar
alternatives will prove sufficient, but I am reasonably
certain that, given their existence, a strong demonstrated
need for modifying Sony (or for interpreting Sony’s standard more strictly) has not yet been shown. That fact,
along with the added risks that modification (or strict
interpretation) would impose upon technological innovation, leads me to the conclusion that we should maintain
Sony, reading its standard as I have read it. As so read, it
requires affirmance of the Ninth Circuit’s determination of
the relevant aspects of the Sony question.
*
*
*
For these reasons, I disagree with JUSTICE GINSBURG,
but I agree with the Court and join its opinion.
Page 231
Podsafe Manifesto License Proposal (2005)
Page 232
Podsafe Manifesto License Proposal
DRAFT September 7, 2005
•
•
•
•
•
•
•
•
•
Preamble
Defined Terms
Podcaster - the licensee.
Musician - the licensor.
Work - the song to be licensed.
Term - Perpetuity.
Territory - The world.
Artist Reserve - a figure representing X% of the net profits derived from the
Podcast.
Net Profits - income earned by the Podcast minus operating expenses.
Warranties and Representations
Each party represents and warrants that it has full authority to enter into this Agreement
and owns or controls all the rights necessary to fully perform its obligations hereunder
and that the exercise of such rights, licenses, and permissions by the other party hereto
shall not violate or infringe the rights of any third party.
Each party represents and warrants that it shall not act in any manner which conflicts or
interferes with any existing commitment or obligation of such party, and that no
agreement previously entered into by such party will interfere with such party's
performance of its obligations under this Agreement.
Each party represents and warrants that it shall perform in compliance with any
applicable laws, rules, and regulations of any governmental authority.
Licensor warrants and represents that it will not look to Licensee for any payment beyond
what appears in this license, including but not limited to royalties provided for by statute.
Licensee Obligations
Licensee shall announce or somehow make available information regarding the name of
the Work and the performer close enough in time such that an ordinary person would be
able to associate the attribution information with the Work.
Licensee Rights
This license is non-transferrable, and may be used in one and only one podcast. Licensee
shall not modify the Work any more than is necessary for timing or format purposes, and
licensee is expressly forbidden from creating a derivative work from the Work such as a
mashup or remix.
Licensor Obligations
Licensor shall grant the licensee a perpetual license to include the Work in one podcast.
Page 233
Compensation
This payment represents all compensation I shall receive from you the podcaster. With
this license I, the artist, waive my rights to any statutory royalties.
This license shall be granted in perpetuity under one of the following guidelines:
Gratis
Artist understands and agrees that the promotional value of use of the Work in the
Podcast will likely exceed any compensation for its use in the Podcast. Artist therefore
grants Podcaster the right of use of the Work in the Podcast without compensation, and
waives, both present and future, all right to and claim of compensation by the Podcaster
for use of the Work in the Podcast.
FlatRate
Musician grants the right of use to the Podcaster in exchange for a one-time payment of
$XX.xx. Musician understands and agrees that this payment will represent full
compensation for unlimited use of the Work in the Podcast, and waives all right to future
claims for additional compensation for use the Work.
PerUse
Musician grants the right of use to the Podcaster in exchange for a per-use payment of
$00.xx. For the purposes of this Agreement, "use" shall be defined as (select one) a) a
single subscription to the Podcast representing one Podcast listener, or, alternatively, a
single Internet Protocol address from which a request for the Podcast rss feed has been
received, or b) a single download of the Podcast.
ProRata
Musician and Podcaster understand that some commercial benefit may be derived by the
Podcaster from the Podcast. Musician therefore grants the right of use to the Podcaster in
exchange for a pro-rata share of X% of Artist Reserve of the Podcast. Podcaster agrees to
provide the Musician with a(n) (select one) monthly semi-annual annual earnings
statement detailing the income accrued by the Musician during the previous reporting
period and to make payment of such earned amounts no later than 30 days thereafter.
Audit By Independent Third Party
With the exception of a Gratis license, Podcaster grants Musician the right to audit the
accounts of Podcaster at any time by providing notice in writing, 30 days in advance, of
the intent to audit. The Parties agree that such audit will be conducted by an independent
third-party accounting firm to be agreed upon by the Parties.
Arbitration of Disputes
The Parties agree that any and all disputes arising from this license, and not resolved by
an audit, will be heard by an independent aribitrator agreed upon by the Parties, and that
the decision of such arbitrator will be binding on the Parties.
Page 234
Mutual Indemnification
Each Party (Musician and Pod Caster) shall indemnify, defend, and hold harmless the
other Party and all its affiliates, with respect to any claim brought by any third party,
including reasonable outside attorneys' fees, to the extent that any such Claim is based
upon or arises out of a breach of any of the indemnifying Party's representations,
warranties, covenants or obligations hereunder. The foregoing indemnity shall be
applicable only to such Claims as have been reduced to final non-appealable judgment or
settled with the consent of the Indemnifying Party (such consent not to be unreasonably
withheld or delayed).
Above is an indemnification alternative. What is below is in the warranties and
reperesentations above. As a matter of style, that is where they typically go.
I hereby warrant that I own the full rights over the work and am free to enter into this
agreement, without having to involve any third parties that may have claims on the
copyright of the work being licensed (or, have checked and received all due approvals
from such party(ies), including, but not limited to, PROs, mechanical rights agencies,
music publishers).
By signing this podsafe license I warrant that I have complied with the above, and will
hold the podcast harmless in the event of any third-party action. I hereby indemnify the
podcaster should any such issues arise.
Page 235
Von Lohmann, Fred. Remedying Grokster (2005)
Page 236
Remedying 'Grokster'
Fred von Lohmann
Special to Law.com
07-25-2005
This article is reprinted with permission from Law.com.
Copyright 2005. ALM Properties, Inc.
Further duplication without permission is prohibited. All rights reserved.
Don't you hate it when you ask someone a question and, rather than
answering it, they choose to answer a different one? Then you
understand the frustration that technology lawyers feel in the wake of
the Supreme Court's opinion in Metro-Goldwyn-Mayer, Inc. v. Grokster
Ltd. The question asked by the parties and dozens of amici was direct
and critically important: when will a technology vendor be held liable
for the copyright infringements committed by third parties with its
products? Asked to clarify the reach of copyright law's existing
secondary liability doctrines, however, the Court instead announced a
new doctrine for copyright: inducement.
The Court's ruling leaves technology companies and their attorneys to
pick their way through a dangerous minefield of legal uncertainties.
The trouble is not principally with the new doctrine of inducement
announced by the Court: "one who distributes a device with the object
of promoting its use to infringe copyright, as shown by clear
expression or other affirmative steps taken to foster infringement, is
liable for the resulting acts of infringement by third parties." Rather,
the trouble is the continued uncertainty surrounding the traditional
copyright doctrines of contributory infringement and vicarious liability.
In other words, it's not so much what the Court said, as what it didn't
say, that ought to worry innovators and their attorneys.
WHY COPYRIGHT IS DIFFERENT
Why is legal uncertainty in this context particularly chilling to
innovators? First, and most important, is copyright's statutory
damages regime. Unlike nearly every other area of law, copyright
allows plaintiffs to skip proving actual damages and instead collect
statutory damages, which a court may set between $750 and $30,000
per work infringed. So when secondary copyright claims are made
against mass market products like the iPod, CD burners or file-sharing
software, all of which are regularly used by customers to make copies
of millions of works, statutory damages become a corporate death
penalty. Insurance is unavailable for risks of this size and a claim
Page 237
against one product can sink an entire company. In contrast, patent
law has no similar provision, nor do most other countries around the
world.
And it gets worse. Not only can a copyright claim sink the company,
but also it can imperil the personal assets of the individuals involved
with the company. The corporate veil -- which generally shields the
private assets of corporate officers, directors and investors from
liabilities incurred by the corporation -- is a bedrock principle of
American business. In copyright cases, however, the veil is routinely
pushed aside. Copyright owners can and often do bring secondary
liability claims directly against officers, directors and investors, alleging
that each personally contributed to, or should be held vicariously liable
for, the acts of the corporations they control. The music industry, for
example, is continuing to press secondary copyright infringement
claims against the officers, directors and principal investors behind
Napster, long after the company's liquidation.
WHAT THE COURT DIDN'T SAY
In light of these two harsh realities, the Supreme Court's failure to
address the uncertainties in copyright's traditional secondary liability
doctrines -- contributory infringement and vicarious liability -- is
particularly troubling.
Contributory infringement arises when a defendant knows about
infringing activity and materially contributes to it. When two motion
picture studios sued Sony in 1976 for selling the first Betamax VCR,
they did so under this theory. In that case, Sony Corp. of America v.
Universal Studios Inc., 464 U.S. 417 (1984), the Supreme Court
announced the "Betamax defense," holding that a technology vendor
could not be held liable for distributing a technology "capable of
substantial noninfringing uses." Because the Betamax VCR was plainly
capable of noninfringing uses, Sony was off the hook.
Since the Court's Sony ruling, the technology and entertainment
industries have bickered about the scope of the Betamax defense.
Technologists see a bright-line rule: so long as a technology is merely
capable of noninfringing uses, it is legal to sell, notwithstanding how
some, or even most, customers may actually use it. Hollywood and the
music industry, in contrast, read the case more narrowly, reasoning
that Sony was only excused because the principal use of the Betamax
was noninfringing.
Page 238
The proper scope of the Betamax defense was the "main event" in the
briefs filed by the parties and amici in Grokster. In its unanimous
opinion, however, the Court refused to resolve the issue definitively.
Nevertheless, the two concurring opinions make it clear how much was
left unresolved.
Justice Stephen Breyer, joined by Justices Sandra Day O'Connor and
John Paul Stevens, adopted and endorsed the views expressed by
many of the technology sector amici, declaring that "Sony's rule is
strongly technology protecting ... Sony thereby recognizes that the
copyright laws are not intended to discourage or to control the
emergence of new technologies, including (perhaps especially) those
that help disseminate information and ideas more broadly or more
efficiently." In contrast, Justice Ruth Bader Ginsburg's concurrence,
joined by Chief Justice William Rehnquist and Justice Anthony
Kennedy, rejected the bright-line interpretation. Unmoved by the
argument that Sony bars contributory infringement unless a
technology is almost exclusively used for infringement, Ginsburg
declared, "Sony, as I read it, contains no clear, near-exclusivity test."
The inconclusive debates in the concurring opinions leave innovators
and lower courts with precious little guidance. Assume that a
technology company steers entirely clear of any inducement of
infringement, as well-advised companies certainly will. How will courts
react when copyright owners buttress their contributory infringement
claims by commissioning experts to opine that the technology in
question is primarily used for infringing purposes? If you happen to
distribute technologies that are widely used for infringing purposes,
like CD or DVD burners, a great deal may hang on this question.
The Court was even stingier with guidance on vicarious liability,
copyright's other secondary liability doctrine. The Court recited the
traditional formulation: "a vicarious liability theory ... allows imposition
of liability when the defendant profits directly from the infringement
and has a right and ability to supervise the direct infringer." But,
having disposed of Grokster on inducement grounds, the Court
declined to address the vicarious liability theory.
The lower courts in Grokster, responding to the diametrically opposing
views of the parties, addressed vicarious liability in some detail. The
entertainment industry had argued that the ability to redesign a
product to reduce infringing uses ought to be deemed equivalent to a
"right and ability to supervise" the customers who use the technology.
The P2P defendants replied that such a "could have designed it
Page 239
differently" test would effectively force technology companies to
redesign their products to suit the demands of copyright owners. On
this point, the Solicitor General's amicus brief before the Supreme
Court sided with the defendants: "The 'right and ability to supervise'
element of vicarious liability ... has never, to our knowledge, been held
to be satisfied by the mere fact that the defendant could restructure its
relations or its product to obtain such an ability."
So what is the law? The Supreme Court ducked the question, leaving
innovators and lower courts to sort the matter out in future cases.
A REMEDY IN REMEDIES?
The uncertainties surrounding copyright's secondary liability doctrines
pose unique risks for innovators. These risks, in turn, chill innovation
and investment in new multipurpose technologies with noninfringing
uses, to the detriment of consumers, the economy and ultimately
copyright owners themselves.
If the Supreme Court is unwilling to address the scope of secondary
liability, perhaps it is time for Congress to address copyright remedies.
As discussed, much of the copyright chill felt by innovators and
technology investors can be traced to the prospect of apocalyptic
statutory damages that can reach beyond the corporate grave into the
personal assets of officers, directors and investors.
The extraordinary remedy of statutory damages should intimidate
commercial pirates engaged in direct infringement, not technology
innovators developing multipurpose devices. Congress should abolish
statutory damages for secondary copyright claims. This would leave
copyright owners injunctive remedies and actual damages, putting
them in no worse a position than litigants in most other areas of civil
law. Technology companies and investors, meanwhile, would be able
to make reasonable business decisions about manageable levels of
legal risk, rather than face the prospect of a corporate death penalty
at the hands of unpredictable legal standards.
Fred von Lohmann is a senior staff attorney with the Electronic Frontier
Foundation, a San Francisco-based nonprofit devoted to protecting civil
liberties and free expression in the digital world.
Page 240
Zisk, Shoshana. Rock n Roll Control: Censoring Music Lyrics in the ‘90’s (1996)
Page 241
LEXSEE 13 U. MIAMI ENT. & SPORTS L. REV. 175
Copyright (c) 1995 University of Miami Entertainment & Sports Law Review
University of Miami Entertainment & Sports Law Review
Fall, 1995 / Spring, 1996
13 U. Miami Ent. & Sports L. Rev. 175
LENGTH: 9922 words
ARTICLE: Rock & Roll Control: Censoring Music Lyrics in the '90's
NAME: Shoshana D. Samole *
BIO:
* J.D. 1996, University of Miami School of Law; B.A.M. 1993, University of Miami School of Music. The
author wishes to thank Brian Piperno, Esq. for his assistance, support, encouragement, and wisdom.
SUMMARY:
... In 1985 two emotionally disturbed teens listened to the record album Stained Class by the British heavy metal group
Judas Priest and subsequently shot themselves on a church playground. ... Alternative-pop singer Beck agreed to delete
an obscenity for a cleaned-up version of his first album, Mellow Gold. ... The most obvious standpoint from which to
address the music lyric problem is to treat the material as obscene. ... According to this doctrine, the state has the power
to adjust the definition of obscenity as it applies to minors to allow the state to restrict children's access to materials
which would not otherwise be obscene. ... Despite this controversy among legal theorists and Supreme Court Justices,
variable obscenity has remained a valuable tool to protect children from indecent materials. ... In the much publicized
Luke Records, Inc. v. Navarro, the court determined that 2-Live Crew's musical recording As Nasty As They Wanna Be
was not obscene under the standards of Miller. ... However, legislatures can still restrict children's access to music that
would not otherwise be obscene under the "variable obscenity" exception promulgated in Ginsberg. Yet, there are problems inherent in this approach. ... Thereafter, any retailer in Washington who sold, distributed, or exhibited the "erotic"
recording to a minor would be in violation of the statute. ...
HIGHLIGHT: Music expresses that which cannot be said and on which it is impossible to be silent.
-- Victor Hugo n1
TEXT:
[*175] I. INTRODUCTION
Censorship of music lyrics is a hotly debated issue. Advocates of censorship believe that certain lyrics corrupt the
minds of young people, leading them to drugs, violence, and rebellion. In his 1993 law review article, Edward de Grazia
asked, "Why should our daughters have to grow up in a culture in which musical advice on the domination and abuse of
women is accepted as entertainment?" n2
Opponents of censorship object to any measure restricting the free flow of artistic expression. The late musician
Frank Zappa, who referred to censors as "cultural terrorists," believed that "when people say 'that's not music,' it's a
manifestation of closed-mindedness." n3
However heated, the conflict over censorship is not new. Rock music has been censored and subjected to investigation as early as its inception in the mid-1950's. In 1956 Elvis Presley, whose [*176] gyrating hips were considered too
risque for The Ed Sullivan Show, was televised from the waist up. n4 In the early 1970's, Spiro Agnew conducted a
short-lived campaign to ban rock music from the radio, which he felt promoted drug use and the "drug-culture." n5 In
Page 242
Page 2
13 U. Miami Ent. & Sports L. Rev. 175, *
1975 the Reverend Charlie Boykin in Florida set fire to thousands of dollars worth of rock records, citing a local poll
that said 984 of 1000 unwed mothers interviewed got pregnant while listening to pop songs. n6
The decade of the 1980's ushered in a new wave of shocking sexuality and aggression in popular music. n7 In
thirty years, popular music has moved from "I Wanna Hold Your Hand" to "I Wanna Fuck You Like an Animal." n8 In
1984 teen John D. McCollum committed suicide while lying on his bed listening to the song "Suicide Solution" by
Ozzy Osbourne. n9 In 1985 two emotionally disturbed teens listened to the record album Stained Class by the British
heavy metal group Judas Priest and subsequently shot themselves on a church playground. n10 The surviving families
both filed, and lost, lawsuits blaming the teen suicides on the record companies that produced the albums. The McCollum court found [*177] that "no rational person would . . . mistake musical lyrics or poetry for literal commands." n11
The shocking musical trend of the 1980's led to a new wave of national cries for censorship. Industry groups, concerned parents, and reactive legislators began advancing new tactics to protect American children from music lyrics.
This attack occurred on many fronts, which included enacting "Harmful to Minors" legislation, arresting retailers for
selling adult music to teenagers, and lawsuits to declare rap music obscene. The record industry responded by affixing
"PARENTAL ADVISORY -- EXPLICIT LYRICS" stickers to albums, adopting "Eighteen to Buy" policies, and removing controversial recordings from store shelves. These changes were largely the result of the industry capitulating to
political threats, ostensibly to forestall legislation regulating rock lyrics, rather than actual government censorship.
In the fall of 1995, Time Warner bowed to political pressure and sold back its interest in Interscope Records after
becoming the target of a much publicized campaign that accused rappers of promoting violence and misogyny in their
records. n12 According to the Wall Street Journal, Time Warner "walked away from one of the most successful new
music companies in recent years." n13 There was subsequently a bidding war that ended with MCA entering into a $
200 million partnership with Interscope in February 1996. n14 Nonetheless, MCA still included an "escape clause" in
the contract that allows MCA to pass on distributing any Interscope album that it considers objectionable. n15
Most recently, in December 1996, Wal-Mart, the country's leading pop music retailer with 2300 stores across the
nation, implemented a new censorship policy. Wal-Mart now refuses to carry record albums with "PARENTAL
ADVISORY" stickers and even asks artists to change objectionable lyrics and CD cover art-work. n16 Aware that an
album can lose up to ten percent of its sales if not carried by the chain, many artists agreed to make adjustments. n17
Alternative-pop singer Beck agreed to delete an [*178] obscenity for a cleaned-up version of his first album, Mellow
Gold. n18 John Mellencamp agreed to airbrush out images of Jesus Christ and the devil on his latest album, Mr.
Happy-Go-Lucky. n19 Cleaned-up copies of Superswingin' Sexy Sounds by metal-rock band White Zombie include
bikini straps painted on naked women. n20 According to band member Rob Zombie, "I didn't do it for Wal-Mart, but
for the kids who have no other way of getting the music." n21
Thus far in the 1990's, the music industry has chosen to exercise self-restraint rather than test the government's
regulatory powers. The enduring question is how much can the government regulate lyrics, if at all. Part II of this article
summarizes the development of First Amendment obscenity standards as they apply to adults, minors, and music. Part
III discusses legislation attempting to criminalize the sale of music deemed "harmful to minors." Part IV describes the
recent movement towards industry self-regulation, which is critically attacked in Part V. Ultimately, this article concludes that the government poses no actual threat to the music industry because of the rights guaranteed by the U.S.
Constitution.
II. THE FIRST AMENDMENT APPROACH
The most obvious standpoint from which to address the music lyric problem is to treat the material as obscene.
However, this approach raises two important questions: first, whether music lyrics can be obscene from a constitutional
standpoint; and, second, even if the lyrics are obscene, whether they can be constitutionally regulated. The following
section explores answers to these questions.
A. The Adult Obscenity Standard
The First Amendment provides: "Congress shall make no law . . . abridging the freedom of speech." n22 However,
First Amendment protection is not absolute. n23 On the basis of early cases discussing obscenity in its dicta, the Supreme Court had "assumed" [*179] that obscenity was an exception to the First Amendment. n24 In actuality, the Supreme Court was not faced squarely with the issue of obscenity until 1957 in Roth v. United States. n25 The Roth Court
converted the traditional assumption into a rule of law holding that "obscenity is not within the area of constitutionally
protected speech." n26
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Page 3
In creating an "obscenity" exception to the First Amendment, the Court faced a new task: establishing a concrete
definition of obscenity that all justices could agree upon. The definition proffered in Roth, when reduced to a formula,
provided that material may be deemed obscene, and therefore wholly without constitutional protection, if it (a) appeals
to a prurient interest in sex; (b) has no serious literary, artistic, political, or scientific merit; and (c) is on the whole offensive to the average person under contemporary community standards. n27 However, there is a problem with the
word "prurient." To the Roth Court, prurient material was that which has "a tendency to excite lustful thoughts." n28
Yet, it is possible that material can be "both prurient and political; that it can be possessed of a tendency to excite lustful
thoughts and contain profound social commentary; or that it can create in an individual morbid and lascivious desires
and constitute poetry of the highest order." n29 Thus, the Roth Court rendered a definition framed in terms that would
not easily address the surplus of varying factual circumstances that would burden the Court in the years to come.
The difficulties created by the vague standards of the Roth test were perhaps best described by Justice Stewart in
his concurring opinion in Jacobellis v. Ohio. n30 Unable to clearly apply the Roth test to an allegedly obscene motion
picture, Stewart stated, "I shall not today attempt further to define the kinds of material I understand to be embraced
within that shorthand description [*180] ["obscenity"]; and perhaps I could never succeed in intelligibly doing so. But
I know it when I see it." n31 During the next several years, the Court continued to grapple unsuccessfully with several
tests to apply to allegedly obscene material. n32
Finally, in 1973, in Miller v. California, n33 five Justices agreed on a definition. The Court held that the basic
guidelines for the trier of fact must be:
(a) whether the average person, applying contemporary community standards would find that the work,
taken as a whole, appeals to the prurient interest;
(b) whether the work depicts or describes, in a patently offensive way, sexual conduct specifically defined by the applicable state law; and
(c) whether the work, taken as a whole, lacks serious literary, artistic, political or scientific value. n34
The Miller test is currently the state of the law for obscenity.
B. Variable Obscenity: State Interest in Protecting Minors
When children are the target of allegedly obscene materials, the Court applies a different standard. The approach,
adopted in Ginsberg v. New York, n35 is known as "variable obscenity." According to this doctrine, the state has the
power to adjust the definition of obscenity as it applies to minors to allow the state to restrict children's access to materials which would not otherwise be obscene. n36 The Ginsberg Court held that a statute defining obscenity in terms of
an appeal to the prurient interest of minors was constitutional. n37 The Court justified "variable obscenity" by finding
that the "state had an independent interest in protecting the welfare of children and in seeing that they are safeguarded
from abuses which might inhibit their free, independent, and well-developed growth." n38 The Court further justified
its holding as a [*181] means to "support parents in their responsibility to raise children." n39
The 1978 case FCC v. Pacifica expanded the notion of variable obscenity to include "indecent expression." n40
Pacifica created the concept of "lesser protected speech," finding that indecent words offend for the same reason that
obscenity offends and that neither has social value. n41
In any system of censorship, there is constant danger that the official in charge will be overzealous or unresponsive
to the concerns and interests of the majority. Thus, in creating variable obscenity, the Court also created strict procedural safeguards to ensure against the curtailment of protected speech. Statutes for the protection of children must be
narrowly drawn in two respects. First, the statute must not be overbroad; the state cannot prevent the general public
from reading or having access to materials on the grounds that the materials would be objectionable if read or seen by
children. n42 Second, the statute must not be vague. n43
Even with these procedural safeguards in place, the adoption of variable obscenity was met with much opposition.
Justice Douglas, in a strong dissent to Ginsberg, argued that "Big Brother can no more say what a person shall listen to
or read than he can say what shall be published." n44 Harvard law professor, Laurence Tribe, discussing variable obscenity, argued that "Constitutional rights do not mature and come into being magically only when one attains the statedefined age of majority." n45 Justice Brennan in his Pacifica dissent argued that speech cannot properly be valued according to the preferences of the majority, stating, "The words that the Court and the Commission find so unpalatable
may be the stuff of everyday conversations in some, if not many, of the innumerable subcultures that compose this na-
Page 244
Page 4
tion." n46 Despite this controversy among legal theorists and Supreme Court Justices, [*182] variable obscenity has
remained a valuable tool to protect children from indecent materials.
C. Obscenity and Music
If music lyrics can be classified as obscene under the three-pronged test of Miller, they are unprotected by the First
Amendment and subject to government regulation. However, it is not possible to find music lyrics "obscene" under the
current Miller formulation. This shortcoming of the Miller test became evident in 1990 when a United States district
court in Florida, for the first time, was asked to determine the obscenity of a work combining "hard core" pornographic
speech and a constitutionally protected medium of artistic expression: music. n47 On appeal, the Eleventh Circuit was
asked to apply the Miller test to a musical composition, which contained both instrumental music and lyrics. n48 In the
much publicized Luke Records, Inc. v. Navarro, n49 the court determined that 2-Live Crew's musical recording As
Nasty As They Wanna Be was not obscene under the standards of Miller. n50 With lyrics such as, "Let's go to my house
and fuck forever," the court had little problem finding that the album "appealed to prurient interest" and "described sexual activity." n51 Nonetheless, because the lyrics were combined with music, the court could not satisfy the last prong
of the Miller analysis and could not determine that the work "lacked serious, artistic, scientific, literary or political
value." n52 When unconstitutional speech and music are combined as a unit, applying the Miller test ultimately results
in the speech taking secondary importance. Courts are not in a position to justifiably determine that music lacks artistic
value. Judges are not music critics. Therefore, even at its worst, music cannot be considered obscene, and First Amendment guarantees remain.
III. THE LEGISLATIVE APPROACH
Because music is not "obscene" and is protected by the First Amendment, music can never be completely banned
unless the Miller test is revised. However, legislatures can still restrict children's [*183] access to music that would not
otherwise be obscene under the "variable obscenity" exception promulgated in Ginsberg. Yet, there are problems inherent in this approach. Currently, many states have provisions regulating the sale and display of sound recordings to minors included in their "Harmful to Minors" statutes. n53 Few have been enforced to date, and no arrests have resulted in
convictions. n54 In fact, a New York Times commentator argues that it may be impossible to convict anyone under obscenity laws at all. n55
Although criminal prosecution may not be a reality in urban America, the actual harm is the chilling effect these
statutes have on musicians and store owners. Many record store owners representing the nation's major retail chains,
fearing consumer boycotts and prosecution under local obscenity ordinances, have discontinued selling records with
warning labels to anyone younger than eighteen or simply removed questionable products from their shelves. n56 The
State of Washington's recent attempt to regulate the sale of music to children illustrates these problems.
[*184] Effective June 11, 1992, Washington amended its "Harmful to Minors" statute to include sound recordings.
The former version, enacted in 1969, applied only to erotic visual materials and had never been challenged. n57 Under
the amended statute, prosecutors could bring a suspect sound recording before a judge to determine if it was "erotic."
n58 Once a judge ruled that a sound recording was, in fact, "erotic," the law required that an "Adults Only" label be
affixed to all copies of the recording in Washington. n59 Thereafter, any retailer in Washington who sold, distributed,
or exhibited the "erotic" recording to a minor would be in violation of the statute. n60 The State contended that a shopkeeper who has perused the sound recordings before selling them would have ample notice which ones could not be
sold to minors, thereby circumventing any legal action. The musical groups scoffed at this assumption. Indeed, the record industry issues a combined 50,000 songs a year. n61 At three minutes a song, it would take a staff of three people
working year-round to listen to every one. This does not take into account the thousands of independent, underground,
and foreign releases that can be found in the United States as well. n62
Amid this atmosphere, Seattle-based artists (including Soundgarden, Nirvana, and Pearl Jam), the American Civil
Liberties Union, and music industry groups, including PolyGram, Sony, and Warner Brothers, announced a facial challenge to the Washington amendment. n63 In 1994 the State was permanently enjoined from enforcing the statute. n64
Although the Washington [*185] Supreme Court held that the statutory definition of "erotic material" satisfied the
First Amendment test of obscenity for minors under the Ginsberg test, the statute did not survive the strict procedural
safeguards that accompany "variable obscenity." n65 The court found the statute to be procedurally infirm and dedicated a large portion of its opinion to pointing out the constitutional flaws with the Washington statute.
First, the court held that the statute was overbroad because it reached constitutionally protected conduct. The court
noted that the statute would create a "widespread chilling effect or self-censorship upon the whole industry" and that
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"shopkeepers have already instituted policies to prevent sale to minors of even recordings which have not been adjudged to be erotic." n66 The court was also responsive to artists claims that they must "curtail their protected speech
and expression or risk loss of sales because of censorship by shopkeepers or the State." n67
Second, the court held that the statute constituted an impermissible prior restraint upon protected speech as applied
to adults. n68 The court noted that the statute authorized the State of Washington to conduct hearings to determine
whether a recording was "erotic." The statute further authorized the court to require retailers to attach "Adults Only"
stickers to the recordings and to enjoin retailers from displaying and selling the recording to minors. The retailer could
then be subject to criminal contempt for violating the injunction, even if the retailer neither was aware of the hearing nor
had knowledge of the injunction. n69 The State argued that the court could limit the statute so that contempt proceedings would apply only to dealers and distributors who were parties in the initial hearing. n70 The court did not accept
this invitation to engage in judicial legislation.
Finally, the court held the statute violated due process. n71 The musical groups claimed the two-stage procedure of
the statute, on [*186] its face, denied due process because not all interested parties were given timely notice of the initial hearing nor adequate notice concerning which recordings were deemed to be erotic. n72 The plaintiffs further argued that the five days notice to a single seller or distributor of an alleged "erotic" recording did not provide sufficient
time for adequate legal preparation to defend the nature of the questioned recording. n73 Though the court recognized
that the State of Washington had a "strong and legitimate interest in protecting minors . . . that protection can only be
provided by constitutional means." n74
In the aftermath of the Soundgarden trial, Washington proposed new bills remodeling the rejected legislation.
These bills overwhelmingly passed the Democratic controlled Senate and the Republican controlled House, but both
were ultimately rejected by then Washington Governor Lowry. n75
Whether the legislation can be reformulated to withstand constitutional scrutiny, yet still bring about its desired effect, is questionable. One possible way to resolve the due process defect in the statute is to prosecute store owners who
sell albums labeled by the record companies "PARENTAL ADVISORY -- EXPLICIT LYRICS," rather than require a
hearing. However, this is not a viable solution.
According to the court in Motion Picture Ass'n v. Specter, n76 the government cannot use a private organization's
rating system to determine whether a form of expression receives constitutional protection. In Specter, a Pennsylvania
criminal statute adopted the Code and Rating Administration (CARA) standards for rating motion pictures. The court
ruled that because CARA does not have defined standards or criteria, n77 the Pennsylvania statute was [*187] constitutionally vague and infringed upon rights of freedom of expression. n78
Thus, if a theater owner admits a fifteen-year-old to an Rrated movie, he may have breached industry ethics, but he
has not broken any laws. In the same way, if a retailer sells a CD with an industry-placed warning label to a fifteenyear-old, the retailer may not be exercising his best judgment, but the government does not have the right to stop him.
Nonetheless, other states are following Washington's initiative and attempting to amend their "Harmful to Minors"
statutes. None of these proposals have survived. A recent Louisiana bill was stopped that would have criminalized the
sale or distribution to minors of a tape or CD bearing the "PARENTAL ADVISORY" warning. n79 A similar bill is
pending in Pennsylvania after a previous bill died in committee. n80
The objective for these statutes is not the desire to turn music-loving children into criminals. Rather, state legislatures are trying to generate pressure on the music industry to self-censor. To illustrate, Pennsylvania agreed not the pursue its lyrics legislation if the National Association of Recording Merchandisers (NARM) formed a task force to deal
with the issue. n81 Thus, the legislatures instead are looking for increased accountability from the record labels.
IV. THE SELF-REGULATION APPROACH
In 1985 the Parent's Music Resource Center (PMRC), alarmed by the new wave of shocking lyrics, began a crusade
against popular music. The PMRC was a potent force, largely due to its four politically connected founders and its
board of directors. With Tipper Gore and Susan Baker, the PMRC leadership included the wives of ten senators, six
representatives, and one sitting Cabinet [*188] member. n82 Concerned about their children's exposure to messages
they considered "destructive" and "negative," the PMRC used its high-powered connections and money from Occidental
Petroleum, Merrill Lynch, and other political contributors to generate pressure on the music industry. n83
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In response, the Recording Industry Association of America (RIAA) agreed to institute a voluntary policy of affixing warning labels on music releases containing explicit lyrics, including depictions of sex and violence, so that parents
could make intelligent listening choices for their children. However well-intentioned, the RIAA policy did not work to
alleviate the problem. Many record companies found ways to side-step the agreement by varying the size and placement
of the warnings, using the warning label as a sly marketing device, and even creating warning stickers that actually
mocked the agreement. Rapper Ice T's album, The Iceberg/Freedom of Speech, contained the following warning label:
"Parents strongly cautioned . . . some material may be X-tra hype and inappropriate for squares and suckers." n84 Additionally, a few underground bands devised the following label: "Warning - Explicit Lyrics. Hide from parents!" n85
Critics of the voluntary system claimed it was ineffective because the labeling decisions were made by the record companies.
Jean Dixon, then Missouri state representative, took action asserting, "If corporations who create degrading entertainment can't police themselves, then I think it's government's role to put [*189] the country back on course." n86
Inspired by Dixon, many state legislators around the country drafted similar record-labeling bills that would require
record companies to affix warning stickers on albums, cassettes, and compact discs with lyrics deemed inappropriate for
young people. n87 Each state legislature would require a different type of label n88 and some would criminalize the
sale of offensive albums to youngsters. n89 As previously discussed, it is unlikely that these laws would have withstood a constitutional attack. n90
Nonetheless, the threat was enough to cause the record companies to scramble to action. In 1990 the RIAA established a voluntarily-affixed, uniform, black and white "PARENTAL ADVISORY -- EXPLICIT LYRICS" logo and
uniform terms for its placement. Each record company, in consultation with the artist, determined which of their recordings would display the logo. n91
The adoption of uniform stickering has received varying reactions from the music community. The groups concerned with explicit lyrics applaud this industry action, while First Amendment absolutists argue that this is quasi censorship.
Surprisingly, NARM was among those groups pleased by the labeling. Record store owners, especially those in
Florida and Alabama whose employees had been jailed under local anti-obscenity laws for selling music containing
lyrics about sex, violence, suicide, or drugs, felt that "things would certainly be made easier for them if manufacturers
would label recordings." n92 Record retailers do not wish to become censors or surrogate parents for consumers who
frequent their stores. At the same time, no retailer wants picket lines gracing their store entrance. Most retailers believe
[*190] that the "PARENTAL ADVISORY" sticker performs well in its primary function of helping parents make informed decisions about the music their children buy. n93
Retailers have received mixed messages from their customers. Stores which implemented "Eighteen to Buy" policies in combination with the stickering found that after a period of months they "received as much feedback from parents who were angry that they had to accompany a teenager to buy a particular recording as they previously received
from parents who were angry about a piece of music a teenager had bought unchaperoned before the policy was implemented." n94 Some commentators believe that the use of the stickers is being exploited as a sales tool. "You tell kids
there's explicit lyrics on an album, that's the one they're going to want," notes Tom Schafer, owner of Soundwave CDs
in Reno, Nevada. n95 Though these unanticipated problems have arisen, overall this self-censorship scheme has temporarily pacified those seeking change.
V. PROBLEMS WITH SELF-REGULATION
A. The Position of First Amendment Absolutists
The PMRC frequently asserts that it does not seek government censorship. Self-regulation, it argues, is less restrictive. n96 Private regulation, however, raises unique policy concerns. Cecelie Berry and David Wolin argued in the
1986 Harvard Journal on Legislation that "regulation by a private industry council can be an arbitrary, ungovernable
form of restraint and a greater threat to First Amendment values than government-sponsored regulation." n97
Where the government would focus on children's welfare, the music industry may be driven by business concerns.
For example, the Grammy winning album Dookie by Green Day, which includes the lyrics "when masturbation's lost its
fun" and other sexual references, [*191] does not carry a warning sticker. n98 Alan Levinson, president of Backstage
Music, a retail outlet, explains, "Green Day is a best-selling record. But, the labels aren't going to sticker it, because
they want it in K-Mart." n99
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Furthermore, the music industry may tend to overregulate in areas where the government would be unable to censor. For example, record companies frequently label rap music for its violent references, although the definition of obscenity only incorporates sexual references.
The belief that industry self-regulation is less intrusive than governmental regulation "misplaces the locus of the
free speech concern, emphasizing the source rather than the substance of regulation." n100 The effect of self-regulation
is to decentralize censorial power, not to eradicate it. Barry and Wolin assert that "when the government/nongovernment distinction blurs, the restraint most fundamental to freedom -- the refinement and allocation of power
through a system of checks and balances -- is lost." n101 Therefore, when censorship is effectuated by private rather
than government groups, it is beyond the reach of the law so that today's business elites clearly have the freedom to dictate our nation's policy.
B. Finding the "Message" in Music
1. Misinterpreting the Lyrics
As private institutions embrace the task of censoring music without judicial standards, there emerges the problem
of finding the correct "message" in the music. Lyrics, like poetry, are subject to more than one interpretation. n102 The
court in Skyywalker Records, Inc. v. Navarro acknowledged that "music is sufficiently subjective that reasonable persons could disagree as to its meaning." n103
Many American songwriters, aware of this subjectivity, have kept busy over the years outwitting censors with lyrics that have [*192] multiple meanings. Lyrics such as "Pull up to my bumper," "Squeeze my lemon," and "Push, push
in the bush" contain obvious sexual references while evading explicit profanity. Unfortunately, these clever artists augment the risk that songs intended to be harmless will be misread. John Denver's "Rocky Mountain High" was banned
from some radio stations for its alleged reference to drugs, although Denver asserted that it is an ode to nature. n104
Even the innocuous folk singers Peter, Paul & Mary found their popular "Puff the Magic Dragon" on the list of songs
having drug-related lyrics. n105 Fortunately, these misinterpretations usually garner few supporters.
However, in some instances, misinterpretation can have serious consequences. In McCollum v. CBS, n106 parents
blamed Ozzy Osbourne's music for the death of their teenage son. After spending an evening listening to Osbourne's
music, including a song called "Suicide Solution," the mentally disturbed nineteen-year-old shot himself. n107 Osbourne claimed that "Suicide Solution" is a song commenting on the terrible effects of alcohol, not a call to suicide as
the plaintiffs asserted. n108
Finally, choice of words plays a significant role in determining that music is offensive. Though the lyrics to the
Pointer Sisters' hit "I'm So Excited" referred to sex, the song's lack of profanity evaded a negative reaction. However, 2
Live Crew's "Me So Horny," which more explicitly says precisely the same thing, fell subject to national attack. n109
2. The Influence of Harmony, Melody and Rhythm
Although music can convey a message, an assertion that instrumental music alone could "appeal to prurient interests" would raise a few eyebrows. Even suggestive pieces, such as Ravel's "Bolero," cannot arouse "dirty" thoughts absent an imaginative exercise on the part of the listener. Terance Moran, in a New Republic article commented that "it's
absurd for would-be censors to hold a magnifying glass to the words when it's the [*193] music itself that arouses people. There's something sexy in the pure pulse of a rock song." n110 Still, this "pure pulse" could not alone be found
obscene. The only sound unaccompanied by words that could probably be found obscene would be utterances simulating those stimulated by sexual arousal. n111 A court might find that such sexually explicit sounds appeal to prurient
interests. n112 However, considering the non-explicit nature of music in general, no rational person could find purely
instrumental music obscene under Miller standards.
In litigation against musicians, the ability of music to enhance the power of words has been subject. In the suit
against the British heavy metal group Judas Priest, the parents contended that their child's suicide was triggered not just
by the song's words, but rather by a combination of "suggestive lyrics accompanied by hypnotic rhythms and beat."
n113 In the liability action against Ozzy Osbourne, the parents brought a similar claim, alleging that "Osbourne's music
utilized a strong, pounding and driving rhythm and . . . a 'hemisync' process of sound waves which impact the listener's
mental state." n114 Finally, in Skyywalker Records, Inc., the court recognized that rap music accentuates lyrics by
stressing rhythm over melody. n115 This suggests that rap music might be particularly vulnerable to determinations of
obscenity because it might be deemed less "musical" and more like plain speech. As of yet, courts have found none of
these arguments persuasive enough to override First Amendment protection.
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VI. CONCLUSION
The recent efforts to curb lyrical expression continue to intensify. Fortunately, with the current legal state in America, the diehard censors have many legal obstructions to surmount. Unless or until the Court alters the present formulation of the Miller test as it applies to music, it may be impossible to judicially suppress music lyrics. It would be difficult, if not impossible, to draft a statute [*194] which would survive the procedural safeguards of "variable obscenity."
Any statute which did survive would be so constricted due to these constitutional protections as to be rendered relatively
harmless. Finally, industry imposed parental advisory ratings are not effective unless they are, to some extent, coercive.
The industry's move towards self-restraint has little bite without criminal enforcement.
Although the placement of warning labels has temporarily quelled paternalistically-minded legislators, the stickers
set bad precedent for the music industry and society generally. For nearly two millennia music has served as an emotional and political sounding board for Western culture. Artists should not be discouraged from commenting on certain
topics through their music. The Court has acknowledged that "one man's vulgarity is another's lyric." n116 The fact that
many ideas have "survived to become part of mainstream life is more a tribute to the tenacity of those who advocate
them than to the willingness of Americans to allow new concepts into their lives." n117 The zealous censors should
leave the artists alone and reevaluate the power of effective parenting.
FOOTNOTES:
n1 THE GIFT OF MUSIC 45 (Louise Bacelder ed. 1975).
n2 Edward de Grazia, Girls Lean Back Everywhere: The Law of Obscenity and the Assault on Genius,
Chapter 30 Just a Pro-Choice Kind of Gal, 11 CARDOZO ARTS & ENT. L.J. 777, 780 (1993) (book excerpt).
n3 Richard Lacayo, The Other Partner, Tipper, TIME, July 20, 1992, at 30.
n4 Marc D. Allan, Shock & Roll; The Theme of Modern Music Lyrics Seems to be "Anything Goes." Should
We Be Concerned?, THE INDIANAPOLIS STAR, July 9, 1995, at I01.
n5 Steven Dougherty, From "Race Music" to Heavy Metal: A Fiery History of Protests, PEOPLE, Sept. 16,
1985, at 52.
n6 Id.
n7 The following songs are examples of sex and violence theme songs that emerged in the 1980's:
MOTLEY CRUE, Bastard, on SHOUT AT THE DEVIL (Warner Brothers Records 1984):
Out go the lights,
In goes my knife,
Pull out his life,
Consider that bastard dead.
PRINCE, Darling Nikki, on PURPLE RAIN (Electra/Asylum Records 1983):
I met a girl named Nikki
I guess you could say she was a sex fiend
I met her in a hotel lobby masturbating with a magazine.
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2 LIVE CREW, Dick Almighty, on AS NASTY AS THEY WANNA BE (Luke Records 1989):
She'll climb a mountain, even run the block
Just to kiss the head of this big black cock.
n8 NINE INCH NAILS, Closer, on DOWNWARD SPIRAL (Nothing/TVT/Interscope Records 1994).
n9 McCollum v. CBS, 249 Cal. Rptr. 187, 191 (Ct. App. 1988).
n10 Judas Priest v. Second Judicial Dist. Court, 760 P.2d 137 (Nev. 1988).
n11 249 Cal. Rptr. at 194.
n12 Jeffrey A. Trachtenberg, Time Warner Sells Its Stake in Label Criticized for Rap, WALL ST. J., Sept.
28, 1995, at B9.
n13 Id.
n14 Bruce Haring, MCA Buys Half of Interscope Label -- Controversial Rap Included in Deal, USA
TODAY, Feb. 22, 1996, at 1D.
n15 Id.
n16 Steve Morse, Up Against the Wal-Mart, Some Artists Change Their Tunes, MIAMI HERALD, Dec. 28,
1996, at 1G.
n17 Id. at 6G.
n18 Id.
n19 Id.
n20 Id.
n21 Id.
n22 U.S. CONST. amend. I.
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n23 See Chaplinsky v. N.H., 315 U.S. 568, 571 (1942).
n24 See, e.g., id. Justice Murphy stated that the "lewd and obscene" are among "certain well-defined and
narrowly limited classes of speech, the prevention and punishment of which have never been thought to raise
any Constitutional problem." Id at 571-72. See also Beauharnais v. Ill., 343 U.S. 250, 266 (1952) (equating obscenity with group libel as being beyond the area of constitutionally protected speech).
n25 354 U.S. 476 (1957).
n26 Id. at 485.
n27 Id; see also JOHN E. NOWAK & RONALD D. ROTUNDA, CONSTITUTIONAL LAW 1137 (1991).
n28 354 U.S. at 487 n.20.
n29 NOWAK & ROTUNDA at 1138 (1991).
n30 378 U.S. 184 (1964).
n31 Id. at 197.
n32 See, e.g., A Book Named "John Cleland's Memoirs of a Woman of Pleasure" v. Attorney Gen. of Mass.,
383 U.S. 413 (1966). The Court added "utterly without redeeming social value" to the definition of obscenity;
however, the Justices were split as to a definition of the appropriate community standard. Id. See also Ginzburg
v. United States, 383 U.S. 463 (1966), reh'g denied, 384 U.S. 934 (1966) (emphasizing the intent of the speaker
in definition of obscenity).
n33 413 U.S. 15 (1973).
n34 Id. at 24.
n35 390 U.S. 629 (1968), reh'g denied, 391 U.S. 971 (1968).
n36 390 U.S. at 637.
n37 Id.
n38 Id. at 640.
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n39 Id. at 639.
n40 438 U.S. 726 (1978).
n41 Id. at 746.
n42 See Butler v. Mich., 352 U.S. 380, 383 (1957). Legislation must not "reduce the adult population . . . to
reading only what is fit for children." Id.
n43 See, e.g., Interstate Circuit v. Dallas, 390 U.S. 676 (1968). The Court struck down a city ordinance
which classified films as "not suitable for children" because it lacked "narrowly drawn, reasonable and definite
standards for the officials to follow," giving censors too much discretion. Id. at 690.
n44 390 U.S. 629, 654 (Douglas, J. dissenting).
n45 LAURENCE H. TRIBE, AMERICAN CONSTITUTIONAL LAW 937 n.52, (quoting Planned Parenthood of Cent. Mo. v. Danforth, 428 U.S. 52, 74 (1976)).
n46 438 U.S. at 776 (Brennan, J. joined by Marshall, J., dissenting).
n47 Skyywalker Records, Inc. v. Navarro, 739 F.Supp. 578 (S.D. Fla. 1990).
n48 Luke Records, Inc. v. Navarro, 960 F.2d. 134 (11th Cir. 1992) (per curiam), cert. denied, 506 U.S. 1022
(1992).
n49 Id.
n50 Id.
n51 Id.
n52 Id.
n53 See Ark. Code Ann. ß 5-68-502(a)(2) (Michie 1987); Colo. Rev. Stat. Ann. 18-7-502(1)(b) (West 1992);
Del. Code Ann. tit. 11, ß 1365(i)(1) 1991); Fla. Stat. Ann. ß 847.012(2)(b) (West 1992); Ga. Code Ann. ß 1612-103(a)(2) (Michie 1992); Idaho Code ß 18-1515(1)(b) (1992); Minn. Stat. Ann. ß 617.293(1)(b) (West
1992); Neb. Rev. Stat. ß 28-808(1)(b) (1991); Nev. Rev. Stat. Ann. ß 30-37-2(B) (Michie 1992); N.H. Rev. Stat.
Ann. ß 571-B:2.I(b) (1991), N.M. Stat. Ann. ß 30-37-2(B) (Michie 1992); N.Y. Penal Law ß 235.21(1)(b)
(McKinney 1992); 18 Pa. Cons. Stat. Ann. ß 5903(c)(2) (1992); Tenn. Code Ann. ß 39-17-911(a)(2) (Michie
1992); Wis. Stat. Ann. ß 948.11(1)(a)(2) (West 1990).
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n54 The reason for the lack of convictions is that a sound recording must be deemed obscene before an arrest for sale of the sound recording can be made. Thus, the only prosecutions under "Harmful to Minors" statutes
were during the period between the lower and upper court decisions in the Luke Records case, where the 2 Live
Crew album As Nasty As They Wanna Be was temporarily classified as constitutionally obscene before reversal
by the Eleventh Circuit. See, e.g., Florida Judge Finds 2 Live Crew Album Legally Obscene, ENT. LITIG. REP.,
July 9, 1990 (record-store clerk in Sarasota, Florida, arrested for selling a copy of 2 Live Crew album to an
eleven-year-old girl, but charges eventually dropped); Stan Soocher, It's Bad, It's Def -- Is It Obscene?, NAT'L
L.J., June 4, 1990, at 1 (record store owner in Alexander City, Alabama arrested for selling copy of 2 Live Crew
album to police officer, but ultimately earned jury acquittal).
n55 See Steven Lee Myers, Obscenity Laws Exist, But What Breaks Them?, N.Y. TIMES, Jan. 19, 1992, ß
4, at 1 (arguing that state obscenity laws have become virtually unenforceable).
n56 These retailers include Musicland Stores Group (814 stores), Trans World Corp., (450 stores), Sound
Warehouse (142 stores), and WaxWorks (140 stores). Chuck Philips, A War on Many Fronts: Censorship: 1990
Was the Year That 'Free Expression' Ran Head-On Into 'Moral Concern.' But the Conflict May Only Be Beginning, L.A. TIMES, Dec. 26, 1990, at F1. The retailer Wal-Mart (2300 stores) adopted this policy most recently.
See Steve Morse, Up Against the Wal-Mart, Some Artists Change Their Tunes, MIAMI HERALD, Dec. 28,
1996, at G1. See also supra notes 17-22 and accompanying text.
n57 Soundgarden v. Eikenberry, 871 P.2d 1050 n.4 (Wash. 1994).
n58 Wash. Rev. Code Ann. ß 9.68.060(1) (West 1992):
When it appears that material which may be deemed erotic is being sold, distributed, or exhibited
in this state, the prosecuting attorney of the county in which the sale, distribution, or exhibition is
taking place may apply to the superior court for a hearing to determine the character of the material with respect to whether it is erotic material.
n59 Wash. Rev. Code Ann. ß 9.68.060(3)(a) (West 1992). It is interesting to note that no materials have
been judged erotic in the 22 years the Washington bill has been on the books. Richard Harrington, 2 Live Crew
Beats the Rap, WASH. POST, May 13, 1992, at B7.
n60 Wash. Rev. Code Ann. ß 9.68.060(d).
n61 Bill Holland, Stickering Review an RIAA Priority: Latest Lyrics Bill Blocked in Louisiana,
BILLBOARD, June 24, 1995.
n62 Allan, supra note 5, at I01.
n63 Bid to Overturn Washington Ban on 'Erotic' Music, S.F. CHRON., June 12, 1992, at D4.
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n64 Soundgarden v. Eikenberry, No. 92-2-14258-9, 1992 WL 486597 (Wash. Super. Ct., King County, Nov.
20, 1992), aff'd, 871 P.2d 1050 (Wash.), cert. denied, 115 S.Ct. 663 (1994). In addition to their traditional constitutional complaints, the plaintiffs filed affidavits and declarations that the statute interfered with their ability
to express themselves, manage their businesses, and access ideas; and interferes with society's notion of a free
marketplace of ideas, and, in general, the evolution of society itself. 871 P.2d at 1052.
n65 See discussion supra part II.B.
n66 871 P.2d at 1057.
n67 Id.
n68 Id. at 1059.
n69 Id. at 1059.
n70 Id.
n71 Id. In deciding the due process claim, the court balanced the following interests: (1) the private interest
to be protected; (2) the risk of erroneous deprivation of that interest by the government's procedures; and (3) the
government's interest in maintaining the procedures. Id. (citing Morris v. Blaker, 821 P.2d 482 (Wash.
1992))(citing Mathews v. Eldridge, 424 U.S. 319, 355 (1976)).
n72 871 P.2d at 1060.
n73 Id. at 1062.
n74 Id. at 1060.
n75 David Postman, Rockers' Pac Seeks Funds Nationwide -- Organizers Commend Lowry For Veto On
'Harmful to Minors' Bill, SEATTLE TIMES, Aug. 12, 1995, at A11.
n76 315 F. Supp. 824 (E.D. Pa. 1970).
n77 See EDWARD DE GRAZIA & ROGER K. NEWMAN, BANNED FILMS: MOVIES, CENSORS &
THE FIRST AMENDMENT 120 (1982). The standards applied to determine the ratings include upholding the
dignity of human life; exercising restraint in portraying juvenile crime; not demeaning religion; prohibiting extreme violence and brutality, obscene speech, gestures or movements; and limiting sexual content and nudity. Id.
n78 See also Engdahl v. Kenosha, 317 F. Supp. 1133 (E.D. Wis. 1970) (granting a preliminary injunction on
the same grounds).
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n79 Holland, supra note 62. The bill would have made retailers responsible for screening the approximately
50,000 recorded songs that the RIAA releases each year. Id.
n80 Richard Harrington, A Harder Spin; Debate on Stricter Label Laws, Penalties Heat Up Again, WASH.
POST, Apr. 26, 1995, at C07. Retailers knowingly selling a stickered album would face a penalty of $ 25, with
each subsequent fine of $ 100. A minor found buying a labeled album would be subject to as many as 10 hours
of community service for a first offense and 25 hours for each subsequent offense. Id.
n81 Id.
n82 The Women Behind the Movement; Group of Prominent Washington Wives Form Resource Center to
Make Parents Aware of Lyrics; Parents Music Resource Center, BROADCASTING, July 15, 1985, at 42. "[The
PMRC] recognizes that their high-powered connections have helped them attract the public's attention" and "acknowledges there is congressional interest in the issue." Id.
n83 Frank Zappa, Protect Us From "Voluntary" Labels, USA TODAY, Jan. 10, 1990, at 8A.
n84 Amy Duncan, Can Music Corrupt? CHRISTIAN SCI. MONITOR, Jan. 10, 1989, at 10.
n85 Id. Frank Zappa's album Frank Zappa Meets the Mothers of Prevention bore the following warning label:
WARNING/GUARANTEE: This album contains material which a truly free society would neither fear nor suppress . . . The language and concepts contained herein are GUARANTEED NOT
TO CAUSE ETERNAL TORMENT IN THE PLACE WHERE THE GUY WITH THE HORNS
AND POINTED STICK CONDUCTS HIS BUSINESS. This guarantee is as real as the threats of
the video fundamentalists who use attacks on rock music in their attempt to transform America
into a nation of check-mailing nincompoops (in the name of Jesus Christ). If there is a hell, its
fires wait for them, not us. (Barking Pumpkin 1985).
n86 Philips, supra note 57, at F1.
n87 By 1990 record-labeling bills had been introduced in eight states: Missouri, Pennsylvania, Kansas,
Iowa, Delaware, Maryland, Oklahoma, and Florida. THE REC., Feb. 4, 1990. In addition, legislators in six other
states, Arizona, Alabama, New Mexico, Illinois, Nebraska, and Washington, threatened to propose similar bills.
Id.
n88 The Pennsylvania proposed legislation would require such labels to be "printed with black letters of
Number 12 type or more on a yellow fluorescent background, except that the words 'WARNING' and
'PARENTAL ADVISORY' shall be printed in letters which are 48-point typeface in the case of a phonograph
record cover." Id. The Missouri labeling bill would require printed lyrics on the outside cover. Id.
n89 Id.
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n90 See discussion supra part III.
n91 See discussion infra part V.B. examining the problems inherent in this method.
n92 See supra note 55 regarding jailing of store owners. Desiree French, Record Firms Create Own Warning Labels, BOSTON GLOBE, Apr. 11, 1990, at 30.
n93 Influence of Lyrics on Children: Hearings Before the U.S. Senate Judicary Subcomm. on Juvenile Justice, 103d Cong., 2d Sess. (1994) (statement of the National Association of Recording Merchandisers).
n94 Id.
n95 Mark Robison, Another Music Phase, Or is it the Devil's Tune, GANNETT NEWS SERVICE, Mar. 6,
1995.
n96 Philips, supra note 57, at F1.
n97 Cecelie Berry & David Wolin, Comment, Regulating Rock Lyrics: A New Wave of Censorship?, 23
HARV. J. ON LEGIS. 595, 597 (1986).
n98 Eileen Fitzpatrick, Georgia DA Issues Warning About Explicit-Music Sales, BILLBOARD, Jan. 21,
1995.
n99 Id.
n100 Berry & Wolin, supra note 98, at 610.
n101 Id. at 615.
n102 McCollum v. CBS, Inc., 249 Cal. Rptr. 187 (1988). The McCollum court interpreted Suicide Solution
contrary to plaintiffs "to illuminate the very serious problems which can arise when litigants seek to cast judges
in the role of censor." Id. at 193.
n103 739 F.Supp. 578, 591 (S.D. Fla. 1990).
n104 Margaret A. Blanchard, The American Urge to Censor: Freedom of Expression Versus the Desire to
Sanitize Society -- From Anthony Comstock to 2 Live Crew, 33 WM. & MARY L. REV. 741, 803 (1992).
Page 256
Page 16
n105 Id.
n106 McCollum v. CBS, 249 Cal. Rptr. 187 (Ct. App. 1988).
n107 Id. at 189.
n108 Id. at 194 n.8.
n109 See Luke Records, Inc. v. Navarro, 960 F.2d 134 (11th Cir. 1992) (per curiam) cert. denied, 506 U.S.
1022 (1992).
n110 Terance Moran, Sounds of Sex, Why Daddy Took the T-Bird Away, NEW REPUBLIC, Aug. 12, 1985,
at 14.
n111 Kenneth W. Masters, Comment, Law in the Electronic Brothel: How Postmodern Media Affect First
Amendment Obscenity Doctrine, 15 U. PUGET SOUND L. REV. 415 (1993).
n112 Id.
n113 Judas Priest v. Second Judicial Dist. Court, 760 P.2d 137, 138 (Nev. 1988).
n114 249 Cal. Rptr. 187, 191.
n115 739 F.Supp. 578, 595 (1990).
n116 Cohen v. Cal., 403 U.S. 15, 25 (1971).
n117 Blanchard, supra note 105, at 742.
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PANELIST BIOS
Elliott Adams
Founder/Editor, djDIY.com
After an adolescence and early-adulthood primarily consumed with electronic music and digital
culture, Elliott Adams started djDIY.com to address industry issues particular to DJ/electronica
artists. The basis of the site is that Djs and sample-based musicians are in a unique position given
their medium: no bandmates and no roadies, but a whole host of unique legal and technical
differences that are especially relevant in the digital age. Ironically, many of these artists, who
have been on the cutting-edge of technology in music production, are lacking information about
the seemingly ever-changing landscape of online distribution, new revenue models, online
promotion, and of course licensing and sample clearance. The site features interviews and
articles, and is completely free of charge. Adams teaches ‘Social Impacts of New Technology’
and ‘Music and Technology’ at Portland State University, where he also coordinates the
university’s biweekly concert series. He operates an event production company in Portland that,
in addition to working with some of the biggest names in hip-hop/electronic DJ culture, produces
specialty events ranging from breakdancing battles to roller discos. Elliott can often be found in
his basement honing his ten years of DJ experience, recordings of which can be gotten from
othertempo.net.
Jonathan Adelstein
Commissioner, FCC
Jonathan S. Adelstein was sworn in as a member of the Federal Communications Commission on
December 3, 2002, and sworn in for a new five-year term on December 6, 2004. Before joining
the FCC, Adelstein served for fifteen years as a staff member in the United States Senate. For the
last seven years, he was a senior legislative aide to United States Senate Majority Leader Tom
Daschle (D-SD), where he advised Senator Daschle on telecommunications, financial services,
transportation and other key issues. Previously, he served as Professional Staff Member to Senate
Special Committee on Aging Chairman David Pryor (D-AR), including an assignment as a
special liaison to Senator Harry Reid (D-NV), and as a Legislative Assistant to Senator Donald
W. Riegle, Jr. (D-MI). Prior to his service in the Senate, Adelstein held a number of academic
positions, including: Teaching Fellow in the Department of History, Harvard University;
Teaching Assistant in the Department of History, Stanford University; and Communications
Consultant to the Stanford University Graduate School of Business. Adelstein received a B.A.
with Distinction in Political Science from Stanford University, an M.A. in History from Stanford
University, studied at the Kennedy School of Government at Harvard University and is a graduate
of Phillips Academy in Andover, Massachusetts. He is a member of the National Academy of
Social Insurance, the Phi Kappa Phi National Honor Society and the Pi Sigma Alpha Political
Science Honor Society. Adelstein was born and raised in Rapid City, South Dakota. He now lives
in the Washington, D.C. area with his wife Karen, son Adam and daughter Lexi.
Chris Amenita
Senior Vice President, Enterprises Group, ASCAP
Christopher Amenita is the Senior Vice President of ASCAP’s Enterprises Group, which is the
entrepreneurial division of ASCAP. The Enterprises Group focuses on two main areas: The first
is the society’s internet activities, which includes ASCAP’s licensing efforts as well as the
evaluation of emerging technologies surrounding the digital delivery of music on the internet. The
second area centers on investing and partnering in developing technologies and ventures. Chris
was responsible for overseeing ASCAP’s creation of Mediaguide, which is the largest Broadcast
Monitoring and Data Information company utilizing audio fingerprinting technology. Chris was
also involved in the creation of ASCAP's New Media and Technology Department, ASCAP's
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Web Site, and has directed numerous projects in the Office of the Chief Executive Officer. He
continues to appear on panels discussing the impact of technology on the Music/Entertainment
industry. Chris received a Bachelor of Science degree from the New York Institute of
Technology.
Kevin Arnold
Founder/CEO, IODA
IODA founder Kevin Arnold is a terminal music fan and music technology geek. In 1993 he
created the seminal indie rock music festival Noise Pop in his adopted hometown of San
Francisco, and for the past 11 years has watched it grow from a one night shindig to an
internationally renowned sprawling week-long celebration of quality music, film, and
independent culture. Noise Pop has become an institution in the Bay Area, and continually strives
to foster the growth of local up-and-coming musicians while showcasing the best of regional and
national independent music. Somewhere in there he got a computer day job, worked his way
through a stint at database technology leader Oracle, and eventually ended up at the online music
company Listen.com. As Director of Data Services for Listen, he was able to combine his loves
for music and technology by guiding the growth and development of Listen's complex music
metadata database systems, data integration tools, and music royalty data warehouse. While the
prospect of creating compelling legal music services that catered to individual tastes in new ways
was exciting, the realization that they would be focused overwhelmingly on major label music
wasn't. Kevin is also the founder and chairman of Bay Area music nonprofit The Popular Noise
Foundation. PNF has operated programs to study the space needs of musicians in the city,
promote live music entertainment, and educate the public on the local music community, and is
planning a Musician's Grant Program to connect local musicians with resources from the
community to further their art. In 2004 Kevin was invited to join the Advisory Board of the
Future of Music Coalition, a forward-thinking not-for-profit organization dedicated to educating
the media, policymakers, and the public on issues at the intersection of music and technology, and
collaborating on creative solutions to challenges in this space. With IODA, Kevin brings this
dedication to music and the prosperity of the independent community together with a unique
understanding of the digital music world and the technical knowledge to build a solution that can
benefit the independent rightsholder community at large as well as the growing digital music
industry.
Mitch Bainwol
CEO, RIAA
Mitch Bainwol joined the Recording Industry Association of America (RIAA) as Chairman and
CEO in September 2003. As a seasoned policymaker, he is one of the Washington's most
recognized and respected strategists and possesses a unique blend of political, legislative, and
communications skills. The Washington Post recently called Bainwol a ‘Top D.C. Lobbyist and
Man in Demand.’ Several years in a row, Capitol Hill’s Roll Call newspaper hailed Bainwol as
one of the 50 most influential ‘politicos’ in Washington. He was also named by Entertainment
Weekly as one of the most powerful people in show business and Campaigns and Elections
magazine named him a ‘Mover and Shaker.’ Bainwol, highly respected by both sides of the
political aisle, most recently led The Bainwol Group, a lobbying firm in Washington. He
postponed the original launch of the firm in November 2002, though, at the request of the thenincoming Senate Majority Leader, Bill Frist (R-TN), who asked him to manage the Frist
transition and serve as the Leader's Chief of Staff. Bainwol had worked closely with thenNational Republican Senatorial Committee (NRSC) Chairman Frist during the 2002 campaign
cycle while serving as Executive Director of the NRSC. With an undergraduate degree from
Georgetown University and an M.B.A. from Rice University, Bainwol began his career as a
budget analyst in President Ronald Reagan's Office of Management and Budget (OMB). He went
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on to become a U.S. Senate leadership staff director from 1993-97, chief of staff of the
Republican National Committee in 1998, and then a top lobbyist for the management consulting
firm Clark and Weinstock in 1999. During his career, he has managed two successful statewide
campaigns and advised on numerous others. Before forming The Bainwol Group in 2002, he also
served as chief of staff for U.S. Senator Connie Mack (R-FL) for nine years (1989-1997). Mack
praised Bainwol’s ‘ability to manage an organization, fully appreciate all the nuances of issues,
and grasp in a very short period of time the essence of a debate.’ Bainwol and his wife, Susan,
have three children.
Jared Ball
Educator and Journalist, FreeMix Radio: The Original Mixtape Radio Show
Jared Ball is an educator and journalist working in and around Washington, DC. He currently
teaches both African American and Media Studies at Frostburg State University and the
University of Maryland at College Park. His forthcoming dissertation, on the potential for the rap
music mixtape to be a source of Emancipatory Journalism, attempts to blend his prior work on
underground education/ communication with his current media studies efforts. Jared Ball is
founder/host of FreeMix Radio: The Original Mixtape Radio Show (voxunion.com), is the
managing editor of the Words, Beats and Life hip-hop journal and is also a co-host of The
Blackademics part of Washington, DC's Decipher Hip-Hop Politics Block on WPFW 89.3 FM
Pacifica. He has a BS in History from Frostburg State University, a Masters degree in Africana
Studies from the Africana Studies and Research Center at Cornell University and is soon to
complete his Ph.D. in Journalism and Media Studies from the University of Maryland at College
Park.
Jonathan Band
Attorney, Jonathan Band PLLC
Jonathan Band helps shape the laws governing intellectual property and the Internet through a
combination of legislative and appellate advocacy. He has represented clients with respect to the
drafting of the Digital Millennium Copyright Act (DMCA); database protection legislation; the
Uniform Computer Information Transactions Act; and other federal and state statutes relating to
copyrights, patents, trademarks, counterfeiting, privacy, spam, spyware, cybersecurity, gambling,
and indecency. He complements this legislative advocacy by filing amicus briefs in significant
cases related to these provisions. Mr. Band received a B.A., magna cum laude, Phi Beta Kappa, in
1982 from Harvard College, and a J.D. from Yale Law School in 1985. From 1985 to 2005, Mr.
Band worked at the Washington, D.C. office of Morrison & Foerster LLP, including thirteen
years as a partner. Mr. Band established his own law firm in May, 2005.
Preeta Bansal
Partner, Skadden, Arps, Slate, Meagher & Flom LLP
Preeta D. Bansal is partner at Skadden, Arps, Slate, Meagher & Flom LLP in New York City. She
concentrates on appellate litigation and complex legal issues in intellectual property, commercial,
statutory and constitutional cases. Ms. Bansal has engaged in an active First Amendment and
copyright litigation practice for major media companies, book publishers and entertainment
companies and represented the recording and motion picture industries as significant amici in
several matters in the United States Supreme Court, including in Quality King v. L’Anza
(reimportation right under copyright law) and 2 Live Crew v. Acuff-Rose (fair use for parodies).
She served in the Clinton Administration (1993 - 1996) as Counselor to Assistant Attorney
General Joel Klein (Antitrust Division) in the U.S. Department of Justice and as Special Counsel
in the White House. While in the Antitrust Division, she supervised investigations in the
computer, media and entertainment industries and helped implement the antitrust/intellectual
property guidelines. Ms. Bansal served as the Solicitor General of the State of New York during
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the first term of New York Attorney General Eliot Spitzer’s administration. As Solicitor General,
she argued cases in the United States Supreme Court, the en banc Second Circuit, and the New
York State Court of Appeals on behalf of New York State. During her tenure, the New York
Attorney General’s Office and she received the ‘Best United States Supreme Court Brief’ award
from the National Association of Attorneys General in 1999 for the first time and then repeated
this accomplishment in each subsequent year of her leadership. She served as appellate counsel of
record for all states in United States v. Microsoft, including in the United States Supreme Court.
She directly supervised 45 lawyers in the Solicitor General’s Office who filed 40 to 50 appellate
briefs each week, and she helped oversee and coordinate the significant legal positions of the 600
lawyers in the Attorney General’s Office. Ms. Bansal has been profiled in many national news
and legal publications, including The New York Times and the New York Law Journal, in which
she has been referred to as ‘one of the most gifted lawyers of her generation, who combines a
brilliant analytical mind with solid, mature judgment.’ A magna cum laude graduate of Harvard
Law School and a magna cum laude, Phi Beta Kappa of Harvard-Radcliffe College, she served as
a law clerk to Justice John Paul Stevens of the U.S. Supreme Court and to then-Chief Judge
James L. Oakes of the U.S. Courts of Appeals for the Second Circuit.
David Basskin
President, Canadian Musical Reproduction Rights Agency Ltd. (CMRRA)
David A. Basskin is President of the Canadian Musical Reproduction Rights Agency Ltd.
(CMRRA) and Counsel to the Canadian Music Publishers Association (CMPA). Mr. Basskin
joined CMRRA and CMPA in 1989. CMRRA is Canada's largest music licensing agency and
licenses music publishing rights on behalf of more thousands of music publishers and copyright
owners to record companies, internet music distributors and film and television producers. Mr.
Basskin directs the negotiation and administration of the industry-standard agreements for the
licensing of music reproduction and distribution on CD's and the Internet. He also acts as Counsel
to CMRRA's parent body, the Canadian Music Publishers Association (CMPA) and acts as
CMPA's advocate in such areas as copyright reform, the information highway,
telecommunications and broadcast policy and appears before parliamentary committees, the
CRTC and other government bodies. Mr. Basskin is a graduate of the University of Toronto
(B.A., 1974), and Osgoode Hall Law School (LL.B., 1977, LL.M., 1999). In 2003, he graduated
as an M.B.A. from the Rotman School of Management at the University of Toronto. Mr. Basskin
was called to the Bar of Ontario in 1979. Prior to joining CMRRA and CMPA, Mr. Basskin
worked as a Law Clerk to the Chief Justice of the High Court of Ontario, as Corporate Secretary
and Legal Counsel to CTV Television Network and was a member of the legal department of
Nelvana, a major Canadian films and television producer. Mr. Basskin lives in Toronto, Canada
and is a keen golfer in what can only be called a pathetically short season.
Barbie Baylis
Attorney, LaPolt Law, P.C.
Barbie Baylis is an entertainment attorney at LaPolt Law, P.C. in Los Angeles. LaPolt Law is a
boutique entertainment firm that specializes in representing clients in the music, merchandising,
film, television, and book publishing industries. The firm's clientele include recording artists,
independent record companies, music publishers, songwriters, producers, managers, executives in
the music and film industries, film production companies, photographers, directors, writers,
authors, and actors. Before joining the team as a senior attorney at LaPolt Law, Barbie was at
King, Holmes, Paterno & Berliner in Los Angeles and Carroll, Guido & Groffman, LLP in New
York and Los Angeles. For more information on Barbie please log on to www.LaPoltLaw.com
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Duff Berschback
Attorney, Duff Berschback, Esq.
Duff Berschback is an entertainment attorney based in Nashville. He represents a broad range of
media clients, including songwriters, publishers, artists, producers, managers, labels, technology
companies, film production companies, authors, and others, in all genres. He plays both forward
and goalie for his clients.
Lesley Bleakley
CEO, The Beggars Group
Lesley Bleakley was born in Burnley Lancashire in the U.K. and attended Kingston University
where she received a Bachelor of Science Degree in Sociology. While in college she began
booking bands for college shows sparking her interest in working in the music business upon
graduation. In 1988 Bleakley took her first job in the music industry as the Office Junior at
Beggars Banquet. A short 4 months later she was promoted to A&R assistant. She remained in
that department for 3 1/2 years eventually signing Buffalo Tom, The Dylans, & The Fuzztones
amongst others. In 1991 Bleakley decided to expand her knowledge of the label and music
industry and took the position as head of the publicity department for Beggars Banquet. At the
same time she started a new label called Placebo which went on to release debut albums
by,Come, Rollerskate Skinny & Rosa Mota. Bleakley thought it was of utmost importance that
she be kept very busy -- thus during this same time period she was also the Video Commissioner
for the Beggars Banquet Group. June 12th 1995 moved to New York to set up the label’s office..
She is currently the CEO of the North American operations which has now become The Beggars
Group, a group of the best UK independent labels including Too Pure, Mo’wax, XL-Recordings
& 4AD. Around for nearly ten years now the Beggars Group US has grown steadily and recently
had stellar success with artists such as Peaches, Badly Drawn Boy, Prodigy Presents, Super Furry
Animals & The Throwing Muses . In September 2002 The Beggars Group purchased a 50% stake
in the well-respected independent label Matador. Bleakley has started working with an expanded
staff over over 30 and roster, along with a new office she continues with this new challenge.
Since her move to the United States Bleakly has participated on many panels at various
conventions concerning the state of independent labels, and women’s roles in the music industry.
She along with Tom Silverman spearheaded the founding of A2IM and is now is now a founding
board member and Chair of the New Media committee. She is also active in attempting to
launching a UK government sponsored British Music Office. To date she has yet to, attend a U.S.
sporting event, stop drinking tea every afternoon or venture to New Jersey.
Eric Brace
Moderator, The Washington Post & band Last Train Home
Eric Brace began his performance career playing in the Boston area bluegrass band The Mystic
Valley Mountaineers in the late '70s and early '80s. In the mid-'80s he and his brother Alan
formed the D.C. guitar-pop band B-Time, and Eric formed the Top Records label to release their
works, along with the works of other D.C. bands, like Frontier Theory, Carnival of Souls, Kevin
Johnson and many more. After playing bass in several area bands (Alice Despard Group, Kevin
Johnson & the Linemen), Eric formed his own band Last Train Home in 1997, playing an
amalgam of styles ranging from country to jazz, bluegrass to Tin Pan Alley. They were named the
Washington DC area "Artist of the Year" in 2003, and have become a full-time touring unit. In
1996, Eric became a staff writer at The Washington Post, holding down the "Local Music &
Nightlife" columnist job for six years, before taking a leave-of-absence from The Post to go on
the road full-time with Last Train Home. He splits his time between Nashville and Washington.
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Whitney Broussard
Partner, Selverne, Mandelbaum & Mintz
Whitney Broussard is a partner in the New York office of the entertainment law firm of Selverne,
Mandelbaum & Mintz, LLP. The firm represents a variety of music-related entities, including the
Wu-Tang Clan, Third Eye Blind, Van Halen, Ludacris, The Neptunes, Motley Crue. The Fugees,
Wyclef Jean, India.Arie, Fisherspooner, Lit, Kinetic Records, Caroline Distribution and many
others. Mr. Broussard has spoken at venues that include NXNW, The Webnoize Venture Forum,
NEMO, The MP3 Summit, CMJ in San Francisco and New York, the California Copyright
Conference, Cardozo Law School, Fordham University, the Norwegian Trade Council, the Future
of New Orleans Music, and the Future of Music Coalition conferences in 2001 and 2002. He has
also been quoted widely in the press regarding digital music issues, in publications and programs
such as the San Francisco Chronicle, The New York Times, The New York Post, USA Today,
Billboard, Spin, Wired, Music Business International, The Atlantic Monthly, GQ, The Industry
Standard, HITS, Webnoize, Digital Music Weekly, SonicNet, ACM TechNews, Vitaminic,
InfoWar, NewsBytes, Mogulwars, LiveDaily, CNET Online, CNET Radio, NPR and Tech TV.
Terryl Brown Clemons
Assistant Deputy Attorney General, NYS Office of the Attorney General
Terryl Brown Clemons is the Assistant Deputy Attorney General of the Division of Public
Advocacy in the New York State Attorney General’s Office. She is responsible for assisting with
the management, operation and administration of the Division’s nine bureaus - Antitrust,
Charities, Civil Rights, Consumer Frauds, Environmental Protection, Health Care, Internet,
Investment Protection and Telecommunications and Energy. From May 2003 - October 2004,
Terryl served as Acting Deputy Attorney General of the Division of Public Advocacy during the
Division Directors sabbatical. Prior to her appointment as Assistant Deputy Attorney General in
1997, Ms. Clemons served as the Deputy Bureau Chief of the Civil Rights Bureau and before that
as an Assistant Attorney General in the Litigation Bureau defending actions brought against the
state, state agencies and state officials. Before joining the Attorney General’s Office, Ms.
Clemons worked in private practice and also work overseas for the Dutch law firm, Naua Dutilh.
Terryl received a B.A. from Pace University; and a J.D. and MBA from the University of
Pittsburgh. She studied international law at the University of Amsterdam in the Netherlands, and
international trade law in Africa at the University of Nairobi in Nairobi, Kenya.
John Buckman
Founder/CEO, Magnatune
John Buckman, CEO and Founder, Magnatune. In May 2003, John Buckman launched an
independent, profitable online record label Magnatune, www.magnatune.com, that selects its own
artists, sells its catalog of music through online downloads and print-on-demand CDs and licenses
music for commercial and non-commercial use. Mr. Buckman brings a background in both music
and technology to the enterprise. At an early age he began designing software, as well as playing
and composing music. He earned a bachelor’s degree in philosophy from Bates College and a
master’s degree in Philosophy from the Sorbonne in Paris, France. His professional career began
in Washington, DC, as a researcher at the think tank the Academy for Advanced and Strategic
Studies, and later he worked for the Discovery Channel as a programmer. Prior to founding
Magnatune, Mr. Buckman founded Lyris Technologies, a software and services company for
email marketing, publishing, email filtering and spam prevention, in 1994. The company
currently generates $12.1 annually. Frustrated by the music industry’s unfair treatment of artists,
Mr. Buckman decided to create Magnatune as an artist-friendly record label that shares profits
equally with musicians and allows them to retain the rights to their work. Based on the principle
that ‘we are not evil,’ the Magnatune has successfully used creative commons and open source
principles to establish a new kind of business model for the music industry.
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Hon. Sarmite D. Bulte
Member of Parliament, Parliamentary Secretary to t, Government of Canada
A successful lawyer, arts advocate and leader in the women’s business community, Sam Bulte
was first elected as the Member of Parliament for Parkdale-High Park in June 1997, and reelected in November 2000 and June 2004. In July 2004, she was appointed to the Privy Council
and Parliamentary Secretary to the Minister of Canadian Heritage. In February 2004, she was
elected Chair of the Ontario Liberal Caucus. Sam was the Chair of the Standing Committee on
Canadian Heritage when, in May 2004, it tabled the Interim Report on Copyright, which passed
unanimously by all parties. Sam has been invited to speak on the copyright process by the Law
Society of Upper Canada at their Entertainment, Advertising and Media Law Symposium; the
University of Toronto’s Tech and IP Group Conference on Copyright; and ALAI Canada’s
Ottawa Conference entitled ‘Rethinking Copyright: A Roadmap to the Future of Copyright’. Sam
actively supported the City of Toronto’s application to be named the Cultural Capital of Canada,
which was announced in February 2005. She was integral in the renewal of the Tomorrow Starts
Today program and increased funding for the CBC. In November 2002, she was appointed Chair
of the Prime Minister’s Task Force on Women Entrepreneurs. The Report and Recommendations
of the Task Force was released on October 29, 2003, and many of the recommendations now
form government policy. Sam was a founding member and director, and served as Vice-President,
International, of the Women Entrepreneurs of Canada; and, in May 2003, Sam was presented
with the Women Entrepreneurs of Canada Life Tribute 2003 Award.
Jim Burger
Member, Dow, Lohnes & Albertson
Jim represents technology and consumer electronics companies on intellectual property,
communications, and government policy matters. Jim joined the firm’s Media, Information and
Technology group in January 1997. For nine years before that, Jim was Senior Director in Apple
Computer’s Law Department; his responsibility included worldwide telecommunications and
intellectual property policy. Also, he was General Counsel for Europe and Latin America and
responsible for worldwide government affairs. He was Chair of the Information Technology
Industry Council’s Proprietary Rights Committee. Jim has participated extensively in such
complex matters as, DVD content protection, the Secure Digital Music Initiative (SDMI),
wireless data communications, the Copy Protection Technical Working Group (CPTWG), as well
as representing information technology industry associations and individual IT companies before
the FCC in proceedings such as Broadcast Protection, and Cable Plug & Play. Jim recently won
FCC Broadcast Protection certification of TiVo’s technology in the face of MPAA and NFL
opposition and filed an amicus brief in MGM v. Grokster on behalf of Intel in the Supreme Court.
Jim is a Director of the DVD Association. Jim works, speaks, and writes extensively on legal and
policy issues arising from the confluence of digital technology, telecommunications,
entertainment, intellectual property, and government regulation.
Michael Carroll
Professor, Villanova University School of Law
Michael W. Carroll is an Associate Professor at the Villanova University School of Law, and he
serves on the Board of Directors of Creative Commons, Inc. His research and teaching interests
are in the areas of intellectual property law and cyberlaw. Prior to joining the Villanova faculty,
Professor Carroll practiced law at Wilmer, Cutler & Pickering in Washington, D.C., specializing
in intellectual property and e-commerce issues. He also served as a law clerk to Judge Judith W.
Rogers, U.S. Court of Appeals for the D.C. Circuit and Judge Joyce Hens Green, U.S. District
Court for the District of Columbia. Professor Carroll received his A.B., with general honors, from
the University of Chicago and his J.D. magna cum laude from the Georgetown University Law
Center. Professor Carroll’s recent scholarship includes (1) The Struggle for Music Copyright 57
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FLA. L. REV. (forthcoming 2005); (2) Whose Music Is It Anyway?: How We Came To View
Musical Expression As A Form of Property, 72 U. CIN. L. REV. 1405 (2004); (3) A Primer on
U.S. Intellectual Property Rights Applicable to Music Information Retrieval Systems, 2003 U.
ILL. J. L. TECH. & POL'Y 313; (4) Disruptive Technology and Common Law Lawmaking: A
Brief Analysis of A&M Records, Inc. v. Napster, Inc., 9 VILL. SPORTS & ENTER. L.J. 5
(2002).
Chris Castle
Senior VP, Legal Affairs and General Counsel, Snocap
Chris Castle is Senior Vice President, Legal Affairs and General Counsel of SNOCAP, Inc. His
interest in digital music began in 1986 and continued through his tenure as Vice President,
Business & Legal Affairs, A&M Records, Inc., Senior Vice President, Business Affairs, Sony
Music Entertainment, of counsel to Wilson Sonsini Goodrich & Rosati and Davis Shapiro Lewit
Motone & Hayes. Chris has been an adjunct professor at the University of Texas School of Law,
writes on a wide range of entertainment and digital music topics, and is a contributing editor to
Entertainment Law & Finance. He is a member of alumni advisory board of the Anderson
Graduate School of Management's Entertainment and Media Management Institute at his alma
mater UCLA, and lectures at AGSM from time to time. He is also a frequent moderator or
panelist at SXSW, the State Bar of California IP and Internet conference, the State Bar of Texas
Entertainment Law Symposium, CMJ, and the Lyndon Baines Johnson Presidential Library's
Future Forum. Before his life in the law, Chris was a professional musican, performing or
recording with artists such as Yvonne Elliman, Long John Baldry and Jesse Winchester, and
volunteers his time to help independent musicians as a member of the advisory board of the
Austin Music Foundation and its groundbreaking Austin Music Incubator. He recently coproduced the Moog soundtrack album for for Hollywood Records and the Advent Rising
soundtrack for Majesco Entertainment.
Jeff Chang
Master of Kung Fu, Author, Can't Stop Won't Stop: A History of the Hip-Hop Generation
Jeff Chang is the author of Can't Stop Won't Stop: A History of the Hip-Hop Generation. He
began working as a hip-hop journalist in 1991 with URB and The Bomb Hip-Hop magazines. He
was a Senior Editor/Director at Russell Simmons' 360hiphop.com, and a founding editor of
ColorLines magazine. In 1993, he co-founded and ran the influential hip-hop indie label,
SoleSides, now Quannum Projects, helping launch the careers of DJ Shadow, Blackalicious,
Lyrics Born and Lateef the Truth Speaker. He has helped produce over a dozen records, including
the "godfathers of gangsta rap", the Watts Prophets. Born of Chinese and Native Hawaiian
ancestry and raised in Hawai'i, he lives in California. He is currently editing an anthology entitled
Next Elements: The Future Aesthetics of Hip-Hop, due in 2006. He is a big fan of Japanese curry
and poi, but not at the same time.
Lauren Coletta
Director of Campaigns, Common Cause
Lauren Coletta is the director of campaigns for Common Cause. She is an experienced organizer,
trainer, not-for-profit manager, and has served as a consultant on numerous domestic and
international advocacy projects. Coletta spent 13 years in Chicago before joining Common Cause
in 2001. While in Chicago she served as consultant to the Center for Law and Human Services,
the National Democratic Institute, and the Chicago Housing Authority. She worked for eight
years as Executive Director of Citizens Information Service of Illinois, a statewide non-profit
dedicated to informed citizen participation. Coletta received her B.A. from the University of
Pittsburgh and later a Masters in Urban Planning and Public Policy from the University of
Illinois.
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John Crigler
Attorney, Garvey Schubert Barer
John Crigler has been suspicious of decency ever since his copy of Leaves of Grass was
confiscated in high school, and he is more than suspicious of a legal standard that uses the
imaginary views of the "average listener or viewer" to discourage everything else. He is a
member of the law firm of Garvey Schubert Barer, where he represents Pacifica, KBOO, and
other noncommercial broadcasters who try their best not to be average.
Jim Donio
President, NARM
Jim Donio is the President of the National Association of Recording Merchandisers (NARM), the
leading trade association for retailers, wholesalers, distributors, suppliers, and individuals
involved in the music and entertainment retailing community. Donio has been with NARM since
1988, when he joined the organization as Director of Creative Services, focusing primarily on
editing a monthly newsletter, as well as developing promotional and informational publications
and materials. In 1991, Donio added PR and marketing functions to his NARM resume, and was
promoted to the position of Communications Director. In 1995, he took on oversight of NARM’s
conventions and conferences as Vice President of Communications & Events. In 2000, he was
elevated to Executive Vice President, adding most of the organization’s day-to-day administrative
and operational responsibilities to his job description. Donio assumed the position of President in
October 2004. Prior to joining NARM, Donio held a variety of editorial, PR and event-related
positions for the Association of Information Systems Professionals (AISP), an international
individual membership organization focused on the needs of office systems professionals. Donio
earned his Bachelor’s Degree in Journalism from Temple University in Philadelphia. He has been
active in Philadelphia-area TV and cultural events, winning a local Emmy Award in 1986 for
"Outstanding Cultural Programming."
Bertis Downs
Advisor, r.e.m.
Bertis Downs has been the band R.E.M.'s attorney and advisor since their earliest days. He lives
in Athens, Georgia, where he teaches Entertainment Law part-time at the University of Georgia
ASchool of Law. Downs also serves on the boards of People For The American Way and Georgia
Conservation Voters, and he is an active rabble-rouser in local and national politics.
Shannon Emamali
Executive Director, The Recording Academy - DC Chapter
Shannon Emamali is the Executive Director of The Recording Academy’s Washington D.C.
Chapter. Internationally known for the GRAMMY® Awards, The Recording Academy is an
organization of musicians, producers, engineers and recording professionals dedicated to
improving the cultural condition and quality of life for music and its makers. As Executive
Director, Emamali represents the Academy in the Washington, DC area by working with the local
recording and music community, addressing its needs through education, advocacy, professional
development and events, providing a conduit for members to meet, network and address the
concerns of the recording industry locally and nationally. Shannon’s career as an arts
administrator was launched more than 10 years ago at The Rhythm and Blues Foundation where
she was Managing Director and the Associate Producer of The Annual Pioneer Awards
Ceremony, a nationally acclaimed event that recognizes legendary artists that have made a
lifelong contribution to the development of rhythm and blues music. During her tenure at the
Foundation, she worked on the production of five compilation recordings, The Newport Rhythm
and Blues Festival and ‘Let the Good Times Roll’, a nationwide public radio series and a 2005
Peabody Award recipient. Emamali has worked for the influential U.S. House of Representatives
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Judiciary Committee and in the Litigation Department of The Recording Industry Association of
America (RIAA) during her law school tenure. Emamali has a B.A. in Radio, Television and Film
from the University of Maryland and a Juris Doctorate from The George Washington University
Law School.
Shawn Fanning
Founder and Chief Strategy Officer, SNOCAP
Shawn Fanning is the Founder and Chief Strategy Officer of SNOCAP. Since the company’s
inception in 2002, Fanning has driven SNOCAP’s mission to dramatically improve the consumer
digital music experience and help grow the overall digital music market. Fanning sparked the filesharing phenomenon with the creation of Napster in 1999 while a freshman year at Northeastern
University. He envisioned an easier, more practical way for people to share their personal music
collections and find like-minded music fans online, which led to one of the fastest growing
applications in Internet history. He has graced the covers of Time, Fortune and Business Week
magazines. Fanning, 24 and originally from the Cape Cod town of Harwich, Massachusetts, now
resides in San Francisco, CA.
Lawrence Ferrara
Professor and Chair, NYU Music and Performing Arts
Lawrence Ferrara, pianist, music theorist with expertise in music copyright. Piano studies with
Gustave Ferri, Genia Robinor, Murray Present, Robert Goldsand and Donald Currier. Chamber
music with Artur Balsam. Recordings for Orion Master Recordings and Musique International.
Performances throughout North America and Europe including radio and television. Reviews by
New York Times, etc. Author and/or co- author of three books and numerous contributions to
American and foreign journals on music theory, keyboard harmony and improvisation,
philosophy of music, aesthetics, research methodologies, music education and medical issues for
musical performers. For example, A Guide to Research in Music Education (written with Roger
Phelps) has been a standard text used throughout North America and enjoyed a new, Fifth Edition
released in 2005. Music copyright consultant for all major record, music publishing and motion
picture companies as well as numerous independent record companies in music copyright claims
involving numerous composer/artists including: Andrew Lloyd Webber, Paul McCartney, Elton
John, Billy Joel, Bob Dylan, Paul Simon, Sean Combs, Ludacris, Mariah Carey, Britney Spears,
Wyclef Jean, James Brown, Gloria Estefan, Marc Anthony, Hillary Duff, Jay Z, Eminem, Dr.
Dre, Notrious B.I.G., Alicia Keys, Ice-T, Luther Vandross, Enrique Iglesias, Tom Petty, Tupac,
Shania Twain, Mary J. Blige, Prince, and Jennifer Lopez as well as numerous groups such as 3
Doors Down, Beastie Boys, N'Sync, Filter, Wu Tang, Train, Real McCoy, SWV, Linkin Park,
and War.
Melissa Ferrick
Artist/CEO, Right On Records
Put her on a stage, and watch how within minutes Melissa Ferrick earns a fresh new batch of
hardcore fans. She does it simply by being herself: fierce & funny, outspoken & vulnerable,
passionate & playful. Above all, Ferrick’s keenly aware that a truly memorable concert will
contain as many shifts of energy and spur-of-the-moment surprises as life itself. And now
Ferrick gives us The Other Side, an album packed with all the intensity and subtlety of her live
shows. This entirely solo project was created in her home studio, with Melissa playing all the
instruments (save for a single cameo guitar appearance by Teddy Goldstein) ‘ and recording,
producing and engineering the album all alone. ‘The Other Side marks the first time I’ve made a
record by myself,’ she notes. ‘I just put down what I heard in my head, in real time. I love being
in my own element like that.’ Of course it doesn’t hurt that she’s a masterful guitarist. Or that
she’s got a powerhouse voice and a constantly deepening catalogue of irresistible songs. Then
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there’s the emotional honesty of Ferrick’s first-person lyrics; the force of her vocal delivery; the
disciplined fury of her musicianship; and her instinctive ability to connect to her audience with
both confidence and grace. Whether playing an acoustic set in an intimate club or rocking a
crowd of thousands, Melissa takes command of her surroundings and beckons her growing
community of listeners to hear where she’ll take them next. And take them she does. Playing
well over 150 dates a year, Melissa packs venues like Manhattan and LA’s Knitting Factory, New
Orleans’ House of Blues, Slim’s in San Francisco, and Boston’s Somerville Theatre. Ferrick
started attracting widespread attention back in her teen years; by age twenty she was signed to
Atlantic Records where she released her first two records, Massive Blur and Willing to Wait. Her
next three recordings were put out by indie label What Are Records, and then, in 2000, Melissa
launched her own label: Right On Records. So far Right On has released three studio albums,
including The Other Side, and a double live set. Born in 1970, Ferrick spent her formative years
in Ipswich, Massachusetts, raised by a public school teacher dad with a love of poetry and a
thoroughly devoted mom who instilled in Melissa the gifts of passion and commitment. Mr.
Ferrick also managed a few free-jazz bands back then and often brought his five- year-old
daughter to clubs on Boston’s North Shore to listen and to watch. The results: by junior high
school, Melissa had learned the violin, bass and trumpet. Twelve years of classical training,
starting with her elementary Suzuki lessons and capped by two years each at Berklee College of
Music and at New England Conservatory of Music, provided her with ample background in
music theory. But it wasn’t until she picked up a guitar that she truly found her own voice. ‘I
feel like we found each other,’ Melissa says of her favorite instrument. ‘I’m constantly
discovering ways I can make sounds come out of it; ways I can make an acoustic guitar not sound
like an acoustic guitar.’ Ferrick is truly in her element these days, both in-concert and offstage.
Right On Records continues to grow and, thanks to a brand-new arrangement with North
Carolina-based Redeye Distribution, her albums are now readily available throughout the States,
in addition to Canada (via RAM Recordings) and Japan (through SMASH). As if this wasn’t
enough, Ferrick recently released the live CD she recorded in Flagstaff, AZ, with drummer Brian
Winton, 70 People @ 7000 ft. These days you’ll find Melissa keeping pretty busy: working on a
collection of updated versions of songs from her early albums, editing a forthcoming DVD
document of her first ten years on the road, running her record company, writing music and, oh
yeah, up on stage winning over more and more people every night she plays.
Ken Freedman
Station Manager, WFMU
Ken Freedman is the Station Manager of radio station WFMU in Jersey City, New Jersey.
WFMU is an independent, non-commercial radio station broadcasting to the New York City
metropolitan area, the Catskills, and online via wfmu.org . WFMU is the country's longest
running and most renowned freeform radio station.
Mia Garlick
General Counsel, Creative Commons
As General Counsel, Mia oversees the domestic and international legal strategy for Creative
Commons and advises on ongoing legal issues that arise in relation to Creative Commons licenses
and activities. Mia joined Creative Commons after working in the Silicon Valley office of the
law firm Simpson Thatcher and Bartlett on a range of shareholder and securities, antitrust and
intellectual property litigation matters. Prior this, Mia completed a Masters of Law at Stanford,
specializing in Law, Science, and Technology, to deepen her knowledge of IP and technology
issues. Before her Stanford studies, Mia worked as an IP associate in the Sydney office of Gilbert
& Tobin Lawyers. Throughout her legal career, Mia has regularly acted on a pro bono basis for
individual creators, giving them legal advice on IP and related issues. Mia has also written
numerous articles on current issues in IP and technology law and presented frequently on these
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issues. Mia received a Bachelor of Arts and a Bachelor of Laws from the University of New
South Wales in 1998 and her Masters of Law from Stanford Law School in 2003. She is admitted
to practice in New South Wales, Australia, and in California, US.
Michael Geist
Canada Research Chair in Internet and E-commerce L, University of Ottawa, Faculty of Law
Dr. Michael Geist is a law professor at the University of Ottawa where he holds the Canada
Research Chair of Internet and E-commerce Law. He has obtained a Bachelor of Laws (LL.B.)
degree from Osgoode Hall Law School in Toronto, Master of Laws (LL.M.) degrees from
Cambridge University in the UK and Columbia Law School in New York, and a Doctorate in
Law (J.S.D.) from Columbia Law School. Dr. Geist has written numerous academic articles and
government reports on the Internet and law, is a member of Canada’s National Task Force on
Spam, is a nationally syndicated columnist on technology law issues for the Toronto Star and
Ottawa Citizen, and is the author of the textbook Internet Law in Canada (Captus Press) which is
now in its third edition. He is the editor of the Canadian Privacy Law Review and the creator of
privacyinfo.ca, one of Canada’s leading privacy websites. Dr. Geist has received numerous
awards for his work including Canarie’s IWAY Public Leadership Award for his contribution to
the development of the Internet in Canada and he was named one of Canada’s Top 40 Under 40
in 2003. More information can be obtained at http://www.michaelgeist.ca.
Mike Godwin
Legal Director, Public Knowledge
For nine years, Mike Godwin served as counsel for the Electronic Frontier Foundation, where he
advised users of electronic networks about their legal rights and responsibilities, instructed
criminal lawyers and law-enforcement personnel about computer civil-liberties issues, and
conducted seminars on civil liberties in electronic communication for a variety of groups. Godwin
has published articles for print and electronic publications on topics such as electronic searches
and seizures, the First Amendment and electronic publications, and the application of
inter¬national law to computer communications. In 1991-92, Godwin chaired a committee of the
Massachusetts Computer Crime Commission, where he supervised the drafting of
recommendations to Governor Weld for the development of computer-crime statutes. In 19961997, he was one of the counsel of record for the plaintiffs in Reno v. ACLU, the Supreme Court
case that established the applica¬bility of First Amendment doctrine to the Internet. In 19971998, he was a Fellow at the Media Studies Center, a project of the Freedom Forum. In 1998,
Godwin published his first book, Cyber Rights: Defending Free Speech in the Digital Age (MIT
Press), which deals with a number of important cases raising issues about freedom of speech on
the Internet. Godwin’s articles about social and legal issues on the electronic frontier have
appeared in the Whole Earth Review, The Quill, Index on Censorship, Internet World, WIRED,
Playboy, and Time. He has lectured at the FBI Academy and at the Federal Law Enforcement
Training Center on the constitutional and criminal law relating to computer communi-cations. In
1999 he served as a legal editor and correspondent for American Lawyer Media, and a regular
columnist for American Lawyer magazine. He remains a contributing editor for Reason
magazine. In September 2000, Godwin joined the Center for Democracy and Technology as a
Policy Fellow. In 2003, he joined Public Knowledge as senior technology counsel and now serves
as Public Knowledge’s legal director.
Lucas Gonze
creator, Webjay
Lucas Gonze is best known for his work on playlists. He is the creator of Webjay, a playlist
community dedicated to finding music on the web which is both free and authorized. His related
work includes the XSPF playlist format, CC Mixter, and the CreativeCommons SMIL Module.
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Prior to becoming interested in music libre, he founded the [Decentralization] list, an early hub of
the peer to peer movement.
Rebecca Greenberg
National Director, Recording Artists' Coalition
Rebecca Greenberg is the National Director of the Recording Artists' Coalition (RAC), a nonprofit recording artist advocacy organization representing over 130 well-known featured
recording artists, including Don Henley, Sheryl Crow, Jimmy Buffet, Natalie Maines, Billy Joel,
Stevie Nicks, Bonnie Raitt and Bruce Springsteen. RAC is primarily concerned with political,
legal, and business issues affecting the interests of recording artists on both the federal and state
levels. Before Rebecca joined RAC in 2004, she spent three years in the Screen Actors Guild's
Government Relations Department championing artists' rights. Prior to that, she worked in the
U.S. House of Representatives for Congressman John Murtha of Pennsylvania and for the House
Appropriations Committee, which is responsible for overseeing all federal arts funding. She also
served in the Clinton Administration at the Department of Education in the Office of Legislation
and Congressional Affairs. Rebecca, who was born and raised in Pittsburgh, PA, holds a
Bachelors Degree in Psychology from the University of Pittsburgh.
Jim Griffin
CEO, Cherry Lane Digital
Jim Griffin is CEO of Cherry Lane Digital. Cherry Lane is dedicated to the future of music and
entertainment delivery, and works as a consultant to absorb uncertainty about the digital delivery
of art. In addition to serving as an agent for constructive change in the media and technology, he
is an author, serving as a columnist for magazines, and is on the boards of companies and
associations. Before starting Cherry Lane Digital, he started and ran for five years the technology
department at Geffen Records. Prior to Geffen he was an International Representative for The
Newspaper Guild in Washington, D.C. While at Geffen, Jim led a team that in June of 1994
distributed the first full-length commercial song on-line, by Aerosmith. Geffen was the first
entertainment company to install a web server, and Geffen World was one of the first corporate
intranet sites. Geffen was named by Network World in 1996 as one of the world's top 25
technology companies, and one of only seven in the United States. He has been regularly named
to the list of the 100 most important people in the music business.
Jim is one of the founders of the Pho group. Named after a bowl of Vietnamese soup, Pho is an
organization that meets weekly in numerous cities around the world and is electronically linked
by a mailing list. Pho's thousand-strong membership enjoys dialogue on the digital economy in
music, movies, books and all media, new and old. Jim testified in July 2000 before the Senate
Judiciary Committee at its oversight hearing on file sharing and music licensing. He regularly
moderates video and television shows on digital entertainment. He is often a keynote speaker or
moderator at conferences (Internet Summit, Giga Conference, Comdex, CES, Webnoize, and
many others) and lectures annually at business schools (Harvard, USC, UCLA, Berkeley). He
also serves as an expert witness in court cases in the area of digital entertainment, and has
presented many Continuing Legal Education courses. In addition to work with music, his
networking expertise now includes wireless work in Europe, including a speech at Nokia's
Research Center in Helsinki, Finland, and work with numerous companies in Finland and
throughout Europe. He's moderated numerous panels on wireless and given speeches on wireless
issues around the world, ranging from every annual MP3.com conference in San Diego to
parliament meetings in Europe. He is a regular speaker at entertainment industry events and
corporate and association meetings.
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Jerry Harrison
Multi-platinum producer, Chairman & co-founder, GarageBand.com
Jerry Harrison is the lead guitarist for the Talking Heads, a multi-platinum producer, and a
member of the Rock & Roll Hall of Fame. In addition to his active career as a producer, Jerry
also serves as a board member or advisor to various high-tech companies. Jerry co-founded
GarageBand.com in 1999 and today serves as Chairman of its Board of Directors.
Thomas Hazlett
Professor of Law & Economics, George Mason University
Thomas W. Hazlett is Professor of Law & Economics at George Mason University, where he also
serves as Director of the Information Economy Project at the GMU Law School. He has
previously held faculty positions at the University of California, Davis, Columbia University, and
the Wharton School, and served as Chief Economist of the Federal Communications
Commission. He writes extensively on public policy in information technology markets, and is a
columnist in the New Technology Policy Forum for the Financial Times.
Graham Henderson
President, Canadian Recording Industry Association
Graham Henderson became President of the Canadian Recording Industry Association (CRIA) in
November 2004. Prior to joining CRIA, he was Senior Vice-President of Business Affairs and
eCommerce at Universal Music Canada. There he had managed Universal’s e-commerce strategy
and was instrumental in the launch of Puretracks.com, Canada’s first legal digital music
download service. Graham began his legal career in 1987 at Canada’s largest law firm, McCarthy
Tétrault where he became a partner in 1992. In 1993 Graham left McCarthy’s to found his own
practice. Graham joined forces with Stephen Stohn and Susan Abramovitch in 1997 to start Stohn
Henderson, a law firm which rapidly became the leading entertainment law boutique in Canada.
His clients included a veritable who’s who of Canadian music at the time (among them Alannah
Myles, Crash Test Dummies, Leahy, Loreena McKennitt, Randy Bachman, The Northern Pikes,
The Pursuit of Happiness, Somerset Records and True North Records). Graham teaches
entertainment law and ‘The Art of the Deal’ at the University of Toronto, where he earned his
LL.B, after completing an MA in English Literature. Graham also holds a double major in
English Literature and Fine Art History from Guelph University. Graham lives in Toronto with
his wife Margo Timmins of Cowboy Junkies and their son Ed.
Joe Henry
artist, songwriter, producer, ASCAP
In May 2002 Joe Henry won the "Most Performed Song" ASCAP Award for "Don't Tell Me", cowritten with and recorded by Madonna. His 2003 release "Tiny Voices" (his 9th) was hailed as an
artistic and musical milestone by critics throughout the US and Europe. As a Grammy winning
producer Joe has worked with Solomon Burke, Aimee Mann, Susan Tedeschi, Ani DiFranco,
John Doe and more. Joe lives in South Pasadena, California with his wife and two children.
Mike Holden
Musician, www.mikeholdenmusic.com
Called a "forthright songwriter with an ear for rootsy melody" and "a tireless organizer and
proponent of local music" by The Washington Post, Mike Holden is a musician based in the D.C.
area. His first CD, "Exhibit A," receieved press in publications such as The Village Voice, Time
Out New York and The Washington Post and he released his second CD, "Level," in late August
2005. Holden has used blogging and podcasting to promote his own music and that of other
musicians. In 2001, Holden founded arlingtonmusicscene.com, which now functions as a blog
and a Yahoo Group that has grown to over 1,200 members. The site focuses on the Arlington,
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Virginia and D.C. area music scene. Holden also keeps a journal/ blog on his own site at
www.mikeholdenmusic.com.
Suzan Jenkins
President, Jazz Alliance International
Suzan Jenkins’ career in the arts has spanned over 20 years at myriad music, recording industry
and arts and culture related organizations across the nation where she has served as President,
Executive Director, Producer and Senior Vice President of Marketing. From the Thelonious
Monk Institute of Jazz, to the Rhythm and Blues Foundation, to the Smithsonian Institution, to
the Recording Industry Association of America, to her newest appointment as President of Jazz
Alliance International, Inc., Suzan Jenkins has conceptualized, initiated, developed, produced,
implemented and successfully managed arts, educational and marketing programs, campaigns and
events to heighten public awareness and promote cultural appreciation and diversity. Jenkins has
produced several recordings including two compilations for Jazz Alliance International - Jazz
Hear and Now! and Smooth Jazz Hear and Now!; five compilations for the Rhythm and Blues
Foundation entitled Rites of Rhythm an Blues; Latin Jazz: La Combinación Perfecta for the
Smithsonian Institution and is the Conceptual and Executive Producer of the Peabody Award
winning radio series Let the Good Times Roll, produced for Public Radio International. Suzan is
one of the principals of Open Sky, a performing arts management consulting firm. Jenkins has
served on panels for the National Endowment for the Arts, Arts International, Maryland and
Michigan State Councils for the Arts and Arts Midwest and has served on the Board of the
Rhythm and Blues Foundation, the Berklee School of Music Board of Visitors, the BMI
Foundation John Lennon Scholarship Program, the National Music Council, The National
Association for Music Education, the World Music Institute and Jazz at Lincoln Center's
Armstrong Curriculum Program. Suzan is a graduate of the University of Maryland, a voting
member of NARAS and grew up in the Caribbean isles of Trinidad and San Juan, Puerto Rico.
She is a native of Buffalo, NY.
Peter Jenner
Manager, Sincere Management, Sec Gen IMMF
After gaining a First Class Honours Degree in Economics at Cambridge University, Peter Jenner
became a Lecturer at the London School of Economics at the tender age of twenty-one. His career
in academia lasted for four years after which he left to devote his attention to managing an upand-coming modern music group which had caught his attention. The band?s name was Pink
Floyd. Peter then put on a series of free concerts in London?s Hyde Park which culminated with
The Rolling Stones in 1969. Now, after more than twenty-five years in the music business, the
list of clients he has worked with reads like a Who?s Who of musical successes. He has managed
T Rex (fronted by Marc Bolan), Ian Dury, Roy Harper, The Clash, The Disposable Heroes of
Hiphopracy, Robyn Hitchcock and Baaba Maal. Peter has managed Billy Bragg?s career for more
than fifteen years and also manages Eddi Reader (the voice of Fairground Attraction). Peter
Jenner is also chairman of the IMMF (International Music Managers? Forum), a director of the
UK MMF (Music Managers? Forum), a council member of AURA (Association of United
Recording Artists) and a director of Artspages. Last year Peter Jenner worked in tandem with
Jenny Toomey to put together the successful and provoking Tell Us the Truth Tour of the USA,
featuring Billy Bragg, The Nightwatchman, Steve Earle and Lester Chambers to name a few working together to raise political, media and fair trade awareness.
Sam Jennings
Director, NPG Music Club
Sam Jennings first began working with the Internet in 1994 while studying fine art, design, and
art & technology at The Art Institute of Chicago. In 1999, Sam began work on Prince’s
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Love4OneAnother.com site and in 2000, launched a new website for Prince called
NPGOnlineLtd.com that focused on Prince's music. NPGOnlineLtd.com began experimenting
with releasing downloadable Prince music online, creating an experience that went beyond single
downloadable tracks. They wanted to bring Prince's strongest supporters together and establish
the direct connection between Prince and his audience. When NPGMusicClub.com was unveiled
in 2001, it gave Prince's fans what they wanted most ‘ music, the best concert tickets and a
vibrant online community of people who were all connected by their love of that music, all
completely independent and 100% owned by Prince. In 2004, The NPG Music Club won
Billboard’s Digital Entertainment Award for ‘Best Use of Technology by an Artist.’
Robert Kaye
Executive Director, MetaBrainz Foundation
Robert is a die hard music fan dedicated to improving the digital audio experience. After studying
Computer Engineering at Cal Poly, San Luis Obispo, he joined Xing Technology where he started
the the MP3 team and served as the development manager for the AudioCatalyst project. While at
EMusic, Robert worked on the Zinf (formerly FreeAmp) audio player and Obsequeiuem projects,
in addition to working on MusicBrainz. Robert is currently serving as the Executive Director for
the MetaBrainz Foundation, which operates the MusicBrainz project.
Jon Kertzer
MSN Music-business development manager, Microsoft
Jon Kertzer is the business development manager for Microsoft’s MSN, with a focus on the MSN
music service. He is also producer and host of the African radio program on KEXP-Seattle, ‘The
Best Ambiance’, a three hour weekly show which has been broadcasting since 1984. Kertzer is an
ethnomusicologist who specializes in African popular music, and has also produced a number of
recordings for Smithsonian Folkways, Rakumi Arts, and the Music of the World labels. For the
past fifteen years, he has worked in the coming together of music and technology, including the
development of the Microsoft Encarta multimedia encyclopedia; the interactive Experience
Project music museum in Seattle, and as director the Smithsonian online Global Sound project.
He also has a long background in the music business, including record companies, artist
management, and music festivals, including the Bumbershoot Festival, and WOMAD-USA.
Bob Kohn
Chairman & CEO, RoyaltyShare, Inc.
Bob Kohn is founder and Chairman of RoyaltyShare, Inc., a leading provider of royalty solutions
to music labels, distributors and publishers. Kohn is a leading expert on music licensing and
intellectual property law & policy, and as an entrepreneur was a pioneer in digital music
distribution. He is the co-author of Kohn On Music Licensing (Aspen Law & Business, 3rd
Edition 2002), a 1,600 page legal treatise which USA Today called, ‘the bible on legal issues in
the music world.’ In 1998, he founded EMusic.com, Inc., the pioneering MP3 music-download
service which was acquired in 2001 by Universal Music Group. Until recently, Kohn served vice
chairman of the board of Borland Software Corporation where he previously served as senior vice
president and general counsel. Prior to that, he was an associate attorney at the law offices of
Milton A. "Mickey" Rudin, an entertainment law firm whose clients included Frank Sinatra, Liza
Minelli, and Cher. Kohn serves on the editorial board of the Entertainment Law Reporter and has
taught law at Monterey College of Law in Monterey, California. He is a frequent lecturer and
panelist at industry conferences, including most recently conferences co-sponsored by the U.S.
Chamber of Commerce held in several cities in China. He also has made numerous appearances
on television news programs as an authority on copyright and entertainment law.
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Marty Lafferty
CEO, DCIA
Marty Lafferty is the Chief Executive Officer of the Distributed Computing Industry Association
(DCIA). Marty is a new media industry leader with a track record of multi-business collaboration
in pioneering distribution of content via new technologies. Prior to DCIA, he was CEO of Zoom
Culture, which he transformed from a dotcom into a thriving digital television firm with partners
NBC and Apple. Previously, as CMO for StreamSearch, he teamed with Paramount and the
Sundance Film Festival. During his tenure as Microsoft TV VP of Corporate & Service
Marketing, he supported the strategic refocusing of WebTV. As President of FutureVision, he
supervised the first switched-digital-network service offering and the company’s acquisition by
Verizon. Marty also was CEO of NBC’s Olympics joint venture, where he led multiple vendors
to develop alternative security solutions for a satellite-delivered mini-subscription PPV service.
Finally, as VP of TDBS, he led Turner Broadcasting’s internal and GI engineering teams to
deploy the industry’s first signal-scrambling security technology for basic programming services.
Marty has served as Membership Chairman of the Interactive Services Association and cofounded the Satellite Broadcasting Communications Association, serving as its first Vice
Chairman. Marty holds a Master’s degree from Yale and a Bachelor’s degree from Williams
College. He has received the NCTA’s President’s Award and a CTAM TAMI Award for industry
service.
Daniel Levitin
Professor, McGill University
Daniel Levitin is a professor of psychology at McGill University (Montreal, QC) where he holds
the Bell Canada Chair in the Psychology of Electronic Communication. Professor Levitin's
research focuses on cognitive structures for the perception and classification of music, including
seminal work on music recommendation engines over the past 10 years. He has published more
than 350 articles and scientific publications, and is the author of the forthcoming book "This is
your brain on music" (Penguin Books). A former professional musician and record producer,
Levitin was head of A&R for 415/Columbia Records (a division of C.B.S.) from 1984- 1989, and
ran a music industry consulting company from 1989- 1998, during which time he worked for
every major record company from A&M to Zomba. He has worked with a number of artists
including Stevie Wonder, Santana, Joe Satriani, Chris Isaak, and Steely Dan.
Chris MacDonald
Director Legal Affairs and Compliance, Co-Founder, Association of Music Podcasters; Indiefeed
Podcasts; Regional Podcast Network
Chris MacDonald is co-Founder of the Association of Music Podcasting (AMP,
musicpodcasting.org) and its Director of Legal Affairs and Compliance. He also runs IndieFeed, a
multi-genre music podcast service, rated by Business Week Online as one of the top eight Podcast
Picks. Chris also runs the Regional Podcast Network (regionalpodcastnetwork.org) which was
recently created to service high-quality local podcast content in a variety of metropolitan areas
across the United States. Chris is a lawyer and emerging growth technology and new media
consultant by trade, and obsessive music enthusiast. He lives in Washington, DC.
Alex Maiolo
Partner, Lee-Moore Insurance
Alex Maiolo is a partner with Lee-Moore Insurance Inc., in the Carrboro / Chapel Hill area of
North Carolina. His agency insures anything from typical risks to more specialty related lines,
including insurance as it relates to the artist and musician. He has been a consultant to the FMC
for over four years, an active musician since the age of nine, and an active fan since he was
learning to crawl. In addition to appearing on panels to discuss the state of health care in the U.S.,
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Alex has given his time to educate young musicians as to how they can stay active in musicrelated projects for their entire lives. Past work includes forums at the Wade Edwards Learning
Lab, a non-profit educational center started by Senator John Edwards, panel participation at the
2003 and 2004 FMC Policy Summits, TapeOp Magazine's TapeOpCon 2004, and many Artsrelated projects in the Carrboro / Chapel Hill area. He will be a contributor at this year's
TapeOpCon in June.
Wayne Marshall
scholar/producer, UW-Madison, Harvard Extension School, Mashit Records
Wayne Marshall is a scholar/producer writing a dissertation on the intertwined histories of hiphop and reggae. Examining the way that their musical interplay highlights the shifting
relationship between the U.S. and Jamaica, Wayne's study highlights the way that various forms
of musical borrowing, allusion, and sampling create meaning in local and international contexts.
He has taught at Harvard, Brown, and the University of Wisconsin, and he is also a sample-based
musician, laptop-DJ, and (audio) blogger.
Walter McDonough
General Counsel, Future of Music Coalition
Walter F. McDonough is the General Counsel and one of the founders of the Future of Music
Coalition and a board member of the United States Performing Rights Organization Sound
Exchange. The FMC is a non-profit research institute that examines the law, economics and
technology of the music business and is renowned for its annual policy conference at Georgetown
Law School. Mr. McDonough has been involved in several copyright initiatives including the
recently passed Small Webcaster Settlement Act of 2002. He has written for several publications,
including Performer magazine, and been interviewed by National Public Radio’s "All Things
Considered" and "Eye on the Media", the Washington Post, Billboard, Music Business
International, CMJ, the Tennessean, and the Boston Globe. Mr. McDonough has traveled
throughout North America to speak at Suffolk University Law School, Canadian Music Week,
the Future of Music Policy Conference, CMJ, the Nashville Independent Music Conference, the
Boston Bar Association, the Future of New Orleans Music Conference, South by Southwest, the
Massachusetts Institute of Technology, Harvard Law School, NEMO, the Music Industry
Educators of America Conference, and Webnoize.Mr. McDonough is also an attorney in Boston
and an adjunct professor of copyright law at Suffolk University Law School and Northeastern
University. He is a former member of the Boston Bar Association’s Intellectual Property Steering
Committee and Chair of the BBA Arts, Entertainment and Sports and Entertainment Law
Committee. He represents such acts as the Dresden Doills and Mission of Burma. He was also an
associate at Carroll Guido & Groffman in New York City, one of America's leading music law
firms, where he worked on matters for, among others, Jay-Z, Roc-A-Fella Records where he had
primary responsibility in the copyright clearances surrounding the Grammy Award winning
"Hard Knock Life" which "sampled" a composition from the Broadway play "Annie." A former
assistant Massachusetts Attorney General, Mr. McDonough was a law clerk for the Honorable
Edward F. Harrington of the United States Court for the District of Massachusetts.
Mike McGuire
Research Director, Media, Gartner, Inc.
Mike McGuire is a research director for Gartner, Inc.’s Media team. He is responsible for the
media team’s coverage of the online music business, legal and regulatory issues facing media
companies. He also collaborates with GartnerG2’s Allen Weiner to chart the emerging class of
Digital Media Titans. Mr. McGuire is also GartnerG2’s research liaison with The Berkman
Center for Internet & Society at Harvard Law School. Mr. McGuire received his Bachelor of Arts
degree in journalism from San Jose State University.
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Kembrew Mcleod
Assistant Professor, university of iowa
A journalist, activist, artist, and professor in the Department of Communication Studies at the
University of Iowa, Kembrew McLeod is the author of Freedom of Expression: Overzealous
Copyright Bozos and Other Enemies of Creativity (Doubleday, 2005) and Owning Culture:
Authorship, Ownership, and Intellectual Property Law (Lang, 2001). He has written music
criticism for Rolling Stone, The Village Voice, Spin, Mojo, and the 2004 edition of the New
Rolling Stone Album Guide. He is also the co-producer of a documentary on the history of digital
sampling and sound collage, Copyright Criminals: This Is a Sampling Sport, which is currently in
production. As well, he worked as a documentary producer at the Media Education Foundation,
co-producing Money for Nothing: Behind the Business of Pop Music. McLeod was involved in
the traveling art show Illegal Art: Freedom of Expression in the Corporate Age, and his collage
work can be found on his Web site, kembrew.com.
Kathryn Montgomery
Professor, School of Communication, American University
Kathryn Montgomery is a professor in the Public Communication division. She comes to
American University with more than 25 years of experience in both the nonprofit field and
academe. For 12 years, she was President of the DC-based Center for Media Education (CME),
which she co-founded in 1991. During her tenure at CME, Montgomery's research, publications,
and testimony helped frame the national public policy debate on a range of critical media issues.
She led a coalition of child advocacy, health, and education groups in a series of successful
advocacy campaigns, leaving behind a legacy of policies on behalf of children and families. They
include: a Federal Communications Commission rule requiring a minimum of three hours per
week of educational/informational television programming for children; a content-based ratings
system for TV programs; and the first federal legislation to protect children's privacy on the
Internet.
Before moving to Washington, D.C., Montgomery was a media studies professor at California
State University, Los Angeles, and at the University of California, Los Angeles. She is the author
of Target: Prime Time - Advocacy Groups and the Struggle over Entertainment Television
(Oxford University Press, 1989). Montgomery currently directs the Project on Youth, Media, and
Democracy through AU's Center for Social Media. The project's 2004 report, "Youth as ECitizens," documented the variety of ways that young people are using the Internet for politics
and civic engagement. She is also writing a book on youth and digital media for MIT Press. She
received her Ph.D. in Motion Pictures and Television from UCLA.
Slim Moon
owner guy, kill rock stars/shotclock
Slim Moon is the founder and President of Kill Rock Stars. He also runs its sister label, 5 Rue
Christine, and is a partner in Shotclock Management, an artist management company. In his 20
years in punk, Slim has worn many hats - musician, spoken word artist, promoter, label guy,
booking agent, manager, record store owner, marketer.
Glenn Morrow
owner, Bar None Records
Glenn Morrow has been wearing a variety of hats in the music business since walking through the
doors of CBGBs in 1976. For the past 18 years he has been running the Bar None Record label
(www.bar-none.com). Besides discovering and signing They Might be Giants and Freedy
Johnston, Bar None has released albums by Esquivel, Yo La Tengo, The Langley School Music
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Project, DJ Spooky, Evan Dando, and Architecture In Helsinki. Most recently Bar None helped
promoted the Japanese girl duo Puffy AmiYumi who now have their own cartoon show "Hi Hi
Puffy AmiYumi" developed by the Cartoon Network.
Andrew Moss
Senior Director, Technical Policy, Microsoft
Andy Moss is Senior Director of Technical Policy in the Windows Client Media, Entertainment
and Technology Convergence Group. In this role, Andy leads the group which drives Microsoft’s
strategy where business and technical directions intersect public policy issues, such as Intellectual
Property and Content Protection, Digital Broadcasting (TV and Radio), Cable Plug and Play,
Security, IPv6, VoIP, and Broadband. With more than 24 years of technology experience, Andy
Moss has spent the past fifteen as an internal entrepreneur within Microsoft developing,
launching and managing new products and services. His many projects include Windows Media
Center Edition, Windows XP Plus!, Microsoft Digital Broadcast Manager, Microsoft Visual
Studio Enterprise Edition and Microsoft Consulting Services. Throughout his career, Andy has
worked extensively to help customers adopt effective and creative uses for new innovations and
advanced technologies. Andy is on the Board of Directors for the Digital Honesty Campaign,
Westport Public Library Advisory Board, and was recently a Co- Chair for the Analog Reconversion Discussion Group, a multi-industry organization established to review solutions to
Intellectual Property concerns arising during the transition from analog to digital consumer
technologies. He is an active public speaker on technology issues in a variety of forums,
including Harvard Law School’s Berkman Center for Internet and Society, the Rockefeller
Foundation Study and Conference Center, The American Assembly (an affiliate of Columbia
University), government sponsored events such as U.S. Dept. of Commerce, Federal Trade
Commission and a range of industry forums and conferences
Steve Nelson
Program Director, The Current, Minnesota Public Radio
Steve Nelson brings a variety of news and music radio experiences to 89.3. He started his
broadcasting career as a morning show co-host at commercial Twin Cities music stations during
the mid-1990s. He also worked as production director and sound engineer at various Twin Cities
stations. From 2000-2002, he was associate producer for public radio's national arts and culture
show Studio 360 at public radio station WNYC in New York, where he helped to develop the
sound and content of the show from its inception. Nelson graduated from the University of
Minnesota with a journalism degree. He helped create Radio K, the University's music station.
Molly Neuman
Co-Owner/Manager, Lookout Records/Indivision Management
Originally from Washington, DC, Molly Neuman began her career in music as the drummer for
the seminal riot girl band Bratmobile. After graduating from The Evergreen State College in
1992, she moved to the San Francisco Bay Area and began to work at Lookout Records in 1994.
In 1997 she became a partner and has been instrumental in the signing and development of such
artists as The Donnas, Pretty Girls Make Graves, Ted Leo/Pharmacists among many others. in
2001 she co founded Indivision Management, an artist management company dedicated to
preserving artists autonomy in their careers while providing them with complete management
services. Current clients include The Donnas, Ted Leo, The Locust, The Tyde and others. Molly
continues to play music with friends because this is what keeps her heart light. She is currently
based in New York City.
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Russell Newman
Campaign Director, Free Press
Russell Newman serves as Campaign Director for Free Press. There, he facilitates numerous
initiatives, including the tracking of current media issues, grassroots organizing, research projects
and content creation for the Free Press website (www.freepress.net). Previous to joining Free
Press, he was a professional multimedia designer. Russell also served as production designer for
several independent films and was active in radio for nearly a decade. He was a Waterston
Scholar at Suffolk University's Sawyer School of Management, from which he holds as Master of
Science with specializations in the political economy of mass communication, nonprofit
management and documentary production. He also holds a degree in Brain and Cognitive Science
from MIT.
David Pakman
Managing Director, Dimensional Associates / eMusic
David Pakman has been a pioneer and entrepreneur in the digital media space as long as the space
has existed. He is a Managing Director at Dimensional Associates, the private equity group which
buys and operates digital media companies including eMusic, The Orchard, and Dimensional
Music Publishing (formerly DreamWorks Music Publishing). He is the COO of eMusic,
responsible for every aspect of that digital music subscription business. He was the co-founder
and President of Business Development and Public Policy at Myplay, Inc., the broadband
application services company that introduced the digital music Locker and provided companies
with Web-based products and services to create their own customized digital entertainment
products. Myplay, founded in 1999, pioneered the Locker category which spurred numerous
imitators. After selling Myplay to Bertelsmann’s eCommerce Group in 2001, Pakman became
Senior Vice President of Corporate Development and Public Policy for BeMusic, a division of
Bertelsmann, where he was responsible for BeMusic strategy, licensing, partnerships, mergers
and acquisitions, as well as BeMusic’s legislative and policy agenda. A respected figure in the
world of digital entertainment, Pakman was a board member of DiMA (Digital Media
Association) in Washington, D.C., co-chair of its Music Licensing Committee, and is a frequent
resource for journalists on music and copyright policy. He has testified before Congress and the
NTIA about the Digital Millennium Copyright Act (DMCA), guest-lectured at both the Wharton
School and the School of Engineering at the University of Pennsylvania, and has spoken at
literally hundreds of conferences and public events including Jupiter Plug-In and Webnoize. Prior
to Myplay, Pakman was an early principal force and co-creator of Apple Computer’s Music
Group, which focused on partnerships with the music industry. During this time, he co-founded
the Macintosh New York Music Festival and co-produced the industry's first music-oriented
webcast. As a webcasting pioneer, Pakman executive produced many of Apple's webcasts
including Metallica, the Mission: Impossible Premiere, and the then-largest industry webcast to
date, the 1997 GRAMMY Awards. He also managed Apple's efforts in creating continuous
entertainment programming under the Macintosh Music Network brand. The majority of
Pakman’s work has centered on developing new business models for the music industry which
exploit the economies and new distribution models afforded artists by technology, particularly the
internet. After Apple, Pakman became Vice President at N2K Entertainment where he forged
strategic partnerships with Internet and media companies such as AOL, Microsoft and Disney. He
pioneered the early development of affiliate programs and 1:1 music marketing programs, both
now ubiquitous across the Internet. At N2K, Pakman designed the business model for the first
commercially-viable secure digital download service which launched in July of 1997. While at
N2K, he led the company’s business development efforts and claimed P&L responsibility for
more than 60% of the company’s $100M in revenue Pakman is a board member of Knitting
Factory Entertainment and an avid musician and songwriter. He can be seen behind a set of
drums frequently in various New York area clubs. He holds a Bachelor’s Degree in Computer
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Science Engineering from University of Pennsylvania.
Ali Partovi
CEO, GarageBand.com
Ali Partovi is CEO of GarageBand.com, the world's largest community for podcasting and
independent music. GarageBand.com has over 40,000 active podcasts, 150,000 bands, and half a
million listeners, and offers tools for any consumer to create their own podcast, music-related or
not. Garageband.com uses a collaborative-filtering process to discover the best music in every
genre. Many of the top-rated bands at GarageBand.com have gone on to become major label acts,
including double-platinum artists Drowning Pool. GarageBand's top-ranking artist, Geoff Byrd,
reached #1 on the RadioWave internet radio charts and is currently #48 and rising on the
Billboard charts. Ali has a long track record with grass-roots ventures. He was a co-founder of
LinkExchange (now bCentral), a startup that helped small businesses build web traffic and
revenue. LinkExchange rapidly became the web's largest small business portal and was acquired
for $265m by Microsoft in 1998. Ali has provided strategic consulting to Google, Overture,
PayPal, and Yahoo. Ali also co-founded "DrinkExchange," a grass-roots social and networking
community with regular events in San Francisco, San Diego, Washington DC, Tokyo, Sydney,
and London. Ali has Bachelors and Masters degrees from Harvard.
Sandy Pearlman
VP Media Development, Multicast Technologies
Woodrow Wilson Fellow in the History of Ideas. New School Fellow in Sociology and
Anthropology. Framer of many of the key terms of the current public discourse concerning ?the
Future of Music.? Founding Vice President, for A&R and Media Development at EMusic.com
(the first of the downloading companies, way back in 1998). Vice President for Media
Development at Moodlogic (creator of omniscient trans-media navigators for the likes of Sony
and Microsoft). Producer, creator, songwriter, manager and theorist for many of the most
important bands and musical trends of the last 20 years. Described by the Billboard Producer?s
Directory as ?the Hunter Thompson of rock, a gonzo producer of searing intellect and vast
vision.? Gonzo enough to be played by Christopher Walken in the infamous Saturday Night Live
parody skit of the making of ?The Reaper? (which Pearlman produced for Blue Oyster Cult).
President and Owner of the seminal American alternative label, 415 Records. By profession a
visionary authority on the convergence of the Film, Video and Music cultures, with, the new
culture of technology engendered by the Web. One of the few able to speak with equal authority,
both, to, and, for these cultures. Visiting Lecturer on these issues at such assorted cool places as
Stanford, Princeton, McGill and various Universities of California (Berkeley, Santa Cruz,
Monterey etc?). Visiting Scholar at McGill. Consultant on these issues to overweight
multinational entertainment conglomerates, stressing out on declining market share and growing
irrelevancy: Sandy Pearlman is one of the crucial prime movers in the ever tightening embrace of
Music by Technology and Technology by Music. One of the first of the teen age Rock Critic
cabal (see ?Almost Famous?), he paid his way through school in the early 70s with his writing,
actually inventing the term ?Heavy Metal ?, along the way, during his sojourn at Crawdaddy
magazine. He went on to produce (in some cases literally create) an impressive crew of diverse
and uniquely innovative artists with attitude, a discography encompassing: Blue Oyster Cult, the
Dictators (the first ?punk? record), the Clash, Pavlov?s Dog (the first Goth record), Dream
Syndicate (kings of the L.A. Paisley Underground scene), etc. For this work he has received ( at
last count) 17 gold and platinum records and was hailed (or blamed) by the Village Voice for
creating ?the Triumph of the Will guitar sound?. He recently completed work on the new 100
minute magnum opus pending release for Space Team Electra. He headed the seminal alternative
label, 415 Records: Romeo Void, Translator, Wire Train, Red Rockers, Love Club, Manitoba's
Wild Kingdom, etc. In this capacity he acted as executive producer for much of the 415 output.
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As songwriter he is best known for his association with the Blue Oyster Cult, with whom he
virtually defined the whole Heavy Metal genre, writing about half of their catalog, culminating in
their 1989 conceptual song-cycle, Imaginos: An album, which has, according to Google, launched
3 new religions and more than 4,500 obsessive ?All About Imaginos? Web Sites. Ironically
enough (for a founder of EMusic), Metallica recorded "Astronomy," one of Pearlman's Imaginos
songs, for their notoriously ultra-Napsterized (therefore famously litigated), Garage Inc.
His management clients have included a who's who of influential artists in their respective genres,
including Romeo Void (one of the breakthrough New Wave bands), Black Sabbath, Aldo Nova,
and again, The Dictators and Blue Oyster Cult. To ensure consistent profitability for these touring
artists and their promoters, he pioneered the ?mega-tour? stadium format of the 1980s, wherein a
package of enormous acts (for example Heart, Black Sabbath, Blue Oyster Cult, Cheap Trick,
Metallica....) travel together, sharing promotional, production and travel costs, a format persisting
today with Lollapalooza, Lillith and their spawn. These tours included the enormously successful
Black & Blue (Featuring Black Sabbath and the Blue Oyster Cult). The classic rock film ?Black
and Blue?, which Pearlman produced, was a by-product of these tours. He just might be the only
person on the planet, to have been on the front page of the Wall Street Journal, Mondo 2000 and
the pulp English Music newspaper, New Musical Express. The National Public Radio special on
Heavy Metal, The Karamazov Vista, was basically the Sandy Pearlman show. In 1992 (when
Nirvana ruled the Earth) KIRO TV (CBS Seattle) produced a program on his views regarding the
Seattle rock scene. Most recently Sandy Pearlman has been at the forefront of the developing
ACS (Alternative Compensation Systems) project. Having been so instrumental in overthrowing
the Old Music Business Order, he has become prominent in that group of academics, lawyers,
economists, intellectual property rights theorists and think tank denizens now attacking the
problem of how is that artists, creators and rights holders are actually to be paid in the context of
a radically de-monetized music business (and soon enough film business). In this regard his
proposal for, and, numerical analysis of a ?World Wide Information Industries Micro Tax?, first
surfaced at the Future of Music Conference at Georgetown University, has been receiving
considerable attention, including that of the New York Times. Stay tuned for hearings at a US
Senate Sub Committee chamber nowhere near you sometime soon.
Marybeth Peters
Register of Copyrights, Library of Congress
Marybeth Peters became the United States Register of Copyrights on August 7, 1994. From19831994 she held the position of Policy Planning Adviser to the Register. She has also served as
Acting General Counsel of the Copyright Office and as chief of both the Examining and
Information and Reference divisions. Ms. Peters is a frequent speaker on copyright issues; she is
the author of The General Guide to the Copyright Act of 1976. Ms. Peters received her
undergraduate degree from Rhode Island College and her law degree, with honors, from The
George Washington University Law School. She is a member of the bar of the District of
Columbia. Ms. Peters, is a member of The Copyright Society of the U.S.A., where she serves as
a member of the Board of Trustees, the Intellectual Property Section of the American Bar
Association, the U.S. Chapter of the Association litteraire et artistique internationale (ALAI), the
American Intellectual Property Law Association (AIPLA) and the Computer Law Association.
Ms. Peters, from 1986 to 1995 was a lecturer in the Communications Law Institute of The
Catholic University of America's law school and previously served as adjunct professor of
copyright law at The University of Miami School of Law and at The Georgetown University Law
Center. During 1989-1990 Ms. Peters served as a consultant on copyright law to the World
Intellectual Property Organization in Geneva, Switzerland.
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Hal Ponder
Director of Government Relations, American Federation of Musicians
Hal Ponder has been Director of Government Relations for the American Federation of Musicians
for the last four years. Previous to that, he was Director of Policy for the Department for
Professional Employees, AFL-CIO, where he worked with all the entertainment guilds. Mr.
Ponder worked on the floor of the House of Representatives as Assistant to the Chief Deputy
Whip in the 80's. Mr.Ponder, an attorney, is also a former diplomat.
David Printis
President / CEO, De-U Records, Inc
Producer Calls on the Power of Music to Increase Math Scores In just four years, producer David
Printis has taught math, science and geography to over 60,000 children by invoking the power of
music. Now, his company continues to educate with new CD's. Fort Washington, MD ‘ As the
country rallies for higher math achievement scores by increasing teachers’ pay and rewarding
states for encouraging learning, one music producer has risen to the call to action by producing
educational music CD’s that kids, parents, and even teachers are raving about. By utilizing hiphop’s ability to influence and entertain, and parlaying it into a learning tool that features music
today’s children embrace, music producer David Printis and his company, De-U Records
(www.De-Urecords.com), have taught more than 35,000 students mathematics, science, and
geography. Launched in October 2001, the series’ first CD, ‘Multiplication Hip Hop,’ became an
instant hit, and has since become one of the hottest selling independent music CD’s on the East
coast. Later titles in the series, ‘It’s Elementary,’ ‘Science and Geography,’ and the newest one,
‘Addition and Subtraction’ have met with equal success. ‘Kids like the CD's,’ Printis remarks.
‘They don’t even realize they’re learning. They just think they’re having fun listening to hip hop.’
-more- Power of Music to Increase Math Scores Not only has Printis won the praise of parents,
teachers, and school principals, his company has received the interest of university faculties and
national media such as The Washington Post and National Public Radio's "Morning Edition.’
‘Kids learn the alphabet by learning a song, they learn to count by putting it in a song. This is just
another way of bringing it to life for kids,’ says Martin L. Johnson, professor of mathematics
education at the University of Maryland at College Park. Karen Kunkel, principal at Green
Valley Elementary School in a suburb of Washington, D.C., uses ‘Multiplication Hip Hop’ to
teach her second graders. She has attributed the CD's with her school’s significant improvement
on the Comprehensive Test of Basic Skills, a standardized test given to students in Maryland.
‘The CD's are a good influence,’ Printis concludes. ‘The rhythm keeps the kids interested
learning.’ The "Children’s Learning Tool" CD's can be purchased online at http://www.DeUrecords.com, or by phone at (301) 265-1600.
Tim Quirk
GM, Music Content and Programming, RealNetworks, Inc.
Tim Quirk is the General Manager of Music Content and Programming for RealNetworks, where
he oversees the team that secures, ingests, publishes and promotes music content across all of
Real's music properties, including Rhapsody, Real's online music subscription service. Prior to
this role, Tim was Listen.com's Editorial Director. He spent more than 10 years as the singer and
lyricist for the punk-pop band Too Much Joy, then politely eased his way into music journalism.
He's been a regular contributor to popular publications including Raygun and The San Francisco
Chronicle, and his critical essays have been published in anthologies by the Oxford University
Press and the academic journal Popular Music. Tim is also one half of an electro-pop outfit called
Wonderlick.
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Gregory Riggle
Director - Broadcast Licensing, SESAC Inc.
Gregory Riggle: As Director of Broadcast Licensing for SESAC, Riggle oversees Broadcast
Licensing activities and directs strategic licensing initiatives within the Broadcast industry. Prior
to joining SESAC in 1986, he earned a Bachelor of Science degree in Communications and
Recording Industry Management from Middle Tennessee State University. With SESAC, Riggle
garnered extensive performing rights experience by serving both the Licensing and
Writer/Publishers Relations departments. He made the transition from Regional Manager of
Broadcast Licensing to Writer/Publisher Relations Representative in 1993 and was named Vice
President Writer/ Publisher Relations in 1997. Later that year, he left the organization to pursue
publishing and licensing interests. During this period, he developed a full service publishing
division for New York based Sweetfish Enterprises; an early, interactive recording imprint, and
established The Almanac Recording Company; a unique Licensing/Branding venture which
developed and marketed audio and media products for established brands. Riggle returned to
SESAC as a consultant in 2001 and was appointed to his current position in 2003. During his
tenure at SESAC, he is recognized for strengthening the company’s profile and competitive
position through unprecedented service to licensees and affiliates.
Don Rose
acting president, American Association of Independent Music
Don Rose has lead the 2005 launch of the American Association of Independent Music (A2IM)
and is the organization’s acting president. A2IM is a non-profit trade association representing
independent record labels. The Indie music sector accounts for approx 27% of retail record sales
and much of the cultural diversity of the musical landscape. Celebrating his 32nd year in the
music industry, Rose is co-Founder and former Chairman / CEO of Ryko Corporation. Rykodisc
was the world’s first "CD-only" record label, and was among the first Indies active in the format.
As such it helped to establish many of the parameters for content and packaging, particularly in
the reissue market. Eventually, by around 1987, Rykodisc grew into a ‘full format’ music label.
Always a technological innovator, Rykodisc also pioneered the 80-minute CD and was the Indie
consultant for the launch of the commercial MiniDisc. Ryko artists included David Bowie, Frank
Zappa, Jimi Hendrix and Elvis Costello (reissues); new productions included Morphine, Bruce
Cockburn, Robert Cray, Ringo Starr, and the Grammy Award Winning albums by Ry Cooder/Ali
Farka Toure and Mickey Hart (of the Grateful Dead) with Planet Drum. Ryko also worked
closely with government agencies such as The Smithsonian and The Library of Congress to
develop product issue programs. Under leadership by Rose, Ryko Corporation generated in
excess of $80MM in revenues and employed 150 people around the world. The operation
included a distribution company, music publishing and international offices as well as the core
label group.
Hannah Sassaman
Organizer, Prometheus Radio Project
Hannah Sassaman studied for a BA in English and Sociology from the University of
Pennsylvania, class of 2001. She joined Prometheus as Program Director in the Summer of 2002.
Hannah builds partnerships, coordinates outreach, and manages volunteers. Ms. Sassaman has
been coordinated public participation in the FCC Localism Task Force hearings. In San Antonio,
TX, she helped to get almost 700 individuals from all over Texas to testify on how to make the
media more local. She also leads LPFM community participation in the advocacy process on
Capitol Hill, where she has organized more than 100 visits between LPFM broadcasters and their
elected representatives. Hannah works to build coalitions between existing media justice and
media democracy groups and a wide diversity of allies for a better, more flexible media system,
and has built partnerships on media issues with groups as diverse as Latino environmental arts
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groups and Christian community ministries and broadcasters. Hannah has published articles in
Clamor and YES! Magazine, and is interviewed regularly for local, national, and international
publications.
Johanna Shelton
Democratic Counsel, US House Energy & Commerce Committee
Johanna Mikes Shelton serves as Minority Counsel to the House Energy & Commerce
Committee under Ranking Member John D. Dingell. Her portfolio includes all
telecommunications and media issues before the Committee. Prior to joining the Committee in
February 2005, she served as Legal Advisor to Commissioner Jonathan Adelstein at the Federal
Communications Commission. Shelton previously worked for Representative Rick Boucher, the
FCC’s Common Carrier Bureau, and Latham & Watkins in Washington, D.C. She received her
J.D. magna cum laude from the Georgetown University Law Center, and a B.S. in Business
Administration summa cum laude from Georgetown University. Following law school, Shelton
served as law clerk for the Honorable Karen Nelson Moore, U.S. Court of Appeals for the Sixth
Circuit.
Cary Sherman
President, RIAA
Cary Sherman President,Recording Industry Association of America Cary Sherman is the
president of the Recording Industry Association of America (RIAA). The trade group's more than
350 member companies are responsible for creating, manufacturing, or distributing 90 percent of
all legitimate sound recordings sold in the United States. As the president, Mr. Sherman
represents the interests of the $12 billion U.S. sound recording industry -- the largest market for
prerecorded music in the world. He coordinates the industry's legal, policy and business
objectives and his responsibilities include technology, licensing, enforcement, and government
affairs issues, among others. National Journal has described Mr. Sherman as an ‘intellectual
property guru’ and ‘one of the top copyright attorneys in the country.’ Before joining the RIAA
as General Counsel of the organization in 1997, Mr. Sherman was a senior partner at the
Washington, D.C. firm of Arnold & Porter, where he was the head of the firm’s Intellectual
Property and Technology Practice Group. One of his special areas of expertise during his 26 years
at Arnold & Porter was reconciling developing technologies and intellectual property laws. Mr.
Sherman graduated from Cornell University in 1968, and Harvard Law School in 1971. A longtime musician and songwriter, Mr. Sherman is an officer of the board of the Levine School of
Music in Washington, D.C. He also serves on the boards of the Copyright Society and BNA’s
Patent, Trademark and Copyright Journal, and has served on numerous other boards, including
the Washington Area Lawyers for the Arts, The Computer Law Association, and The Computer
Lawyer. He is also co-author of a two-volume treatise published by BNA Books, Computer
Software Protection Law.
Matthew Shipp
avant-garde jazz pianist, ASCAP
Born in the 1960s and raised in Wilmington, DE, Matthew Shipp grew up around '50s jazz
recordings. He began playing piano at the young age of five, and decided to focus on jazz by the
time he was 12. Shipp played on a Fender Rhodes in rock bands while privately devouring
recordings by a variety of jazz players. His first mentor was a man in his hometown named
Sunyata, who had an enthusiasm for a variety of studies in addition to music. Shipp later studied
music theory and improvisation under Clifford Brown's teacher Robert "Boisey" Lawrey, as well
as classical piano and bass clarinet for the school band. After one year at the University of
Delaware, Shipp left and took lessons with Dennis Sandole for a short time, after which he
attended the New England Conservatory of Music for two years. Shipp moved to N.Y.C. in 1984
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and soon met bassist William Parker, among others. Both were playing with tenor saxophonist
Ware by 1989, and debuted as a recording artist in a duo with alto player Rob Brown. Shipp
married singer Delia Scaife around 1990. He then went on to lead his own trio with Parker and
drummers Whit Dickey and Susie Ibarra. Shipp has led dates for a number of labels, including
FMP, No More, Eremite, Thirsty Ear, Silkheart, and more. In 2000, Shipp began acting as curator
for Thirsty Ear's Blue Series. This excellent series hosted a number of Shipp's own recordings, as
well as the recordings of William Parker, Tim Berne, Roy Campbell, Craig Taborn, Spring Heel
Jack, and Mat Maneri. The following year saw the release of Nu Bop, an exploration into
traditional jazz. Following that a string of releases follow that go in as many directions as one
could conceive, while still remaining in the realm of jazz, including melding electronic elements
of music composition with more traditional practices of jazz. This is most evident in his latest
album "Harmony and Abyss"
Hank Shocklee
President of Shocklee Entertainment, Producer, Music Industry Executive & Founder of Public
Enemy
Hank Shocklee currently heads up his own New Media Entertainment company, Shocklee
Entertainment, and is producing several music and film projects including Shocktronica, an
electronic ‘mythological sci-fi multi-media album and DVD project. Shocklee is also currently
writing a book on his philosophy behind creating the group Public Enemy and the creation of the
famed album 'It Takes A Nation Of Millions To Hold Us Back'. The book will be an in-depth
manual chronicling and giving its readers an inside look at his philosophies behind the making of
the band, production techniques, his famed Shocklee sonic sculpture and the making of the
landmark record 'It Takes A Nation Of Millions To Hold Us Back'. Best known for his
innovative production techniques and founding the group Public Enemy, Shocklee has a
distinctive, diverse background in the entertainment world. Whether working with a wide range
of artists (Ice Cube, Madonna, Janet Jackson, Peter Gabriel, Slick Rick), scoring and producing
film soundtracks (He Got Game, How Stella Got Her Groove Back, Dangerous Minds, Juice) or
as a music industry executive (Senior Vice President MCA Records, Mary J. Blige, Patti LaBelle,
K-Ci & JoJo, Gladys Knight) Shocklee has lead an illustrious career and track record as a
producer, composer, record label executive and entrepreneur. Shocklee’s creative vision is
widely heralded in contemporary popular music history. He has garnered a collection of Platinum
and Multi-Platinum albums as well as 14 Grammy Nominations and numerous Soul Train
Awards. He has also been the recipient of a Sony Innovators Award and an Apex Creative
Engineer Award. Shocklee has also been named the Source Magazine’s Producer of the year
twice during his career.
Derek Sivers
president and programmer, CD Baby
Derek Sivers is founder, president, and programmer of CDBaby and HostBaby. A professional
musician since 1987, Derek started CD Baby by accident in 1998, when he was selling his own
CD on his website, and offered to let his fellow musicians use his service, too. As this hobby
grew, he refused all investors and advertising, choosing to grow slowly and quietly during the
dot-com boom and bust. Now CD Baby is the largest seller of independent CDs on the web, with
over $25M in sales for over 100,000 musician clients. (Note that while the rest of the industry
moans about piracy, CDBaby's sales have doubled every year.) Esquire Magazine's annual "Best
and Brightest" cover story said, "Derek Sivers is changing the way music is bought and sold...
one of the last music-business folk heroes." Sivers is Winner of the 2003 World Technology
Award.
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Derek Slater
Student Fellow, Berkman Center for Internet and Society
Derek Slater is a senior at Harvard College and a student fellow at the Berkman Center for
Internet Society at Harvard Law School. Since joining the Center in 2002, he has contributed to
the Digital Media Project, a joint venture with GartnerG2 that studies the legal, policy, and
business issues raised by the Internet's disrupting the production and consumption of copyrighted
works.
Currently, Derek is analyzing music taste-sharing tools and how they enable consumers to play a
more active role in defining and shaping their culture. He is a lead author of Content and Control:
Assessing the Impact of Policy Choices on Potential Online Business Models and he contributed
substantially to the case study iTunes: How Copyright, Contract, and Technology Shape the
Business of Digital Media as well as the foundational white paper Copyright and Digital Media in
a Post-Napster World.
Derek also tracks developments in digital media at his popular weblog A Copyfighter's Musings
and has served as an intern for the Electronic Frontier Foundation, Creative Commons, and the
Samuelson Clinic for Law, Technology, and Public Policy.
Jacob Slichter
Drummer/Writer, Self
Writer and drummer Jacob Slichter is a native of Champaign, Illinios, and graduated from
Harvard with a degree in Afro-American studies and history. His Minneapolis-based band,
Semisonic, was formed in 1992 with guitarist singer/songwriter Dan Wilson and bassist John
Munson, both formerly of Trip Shakespeare. After signing with MCA Records in 1994,
Semisonic released several albums, including "Great Divide," "Feeling Strangely Fine," and "All
About Chemistry." After their chart-topping single ‘Closing Time’ propelled them to platinumselling success, Semisonic traveled the world and appeared on television with Jay Leno, David
Letterman, and Conan O'Brien. Slichter's entertaining and critically acclaimed memoir, "So You
Wanna Be a Rock & Roll Star," was published in June of 2004 by Broadway Books, a literate and
detailed look behind the scenes at the workings of the music business as well as the performers
who chase after superstardom. He has read his road diaries (originally published on the Semisonic
website) on NPR's Morning Edition. He has spoken at dozens of colleges and music schools
about the world of record labels, commercial radio, and MTV, and his book has been adopted as a
primary text on the music business by professors in various fields, from sociology and economics
to the entertainment business. (For book reviews and links to his NPR commentaries, go to
www.jacobslichter.com.)
D. A. Sonneborn
Assistant Director, Smithsonian Folkways Recordings, Center for Folklife and Cultural Heritage,
Smithsonian Institution
D. A. Sonneborn, Ph.D. is assistant director of Smithsonian Folkways Recordings, a small notfor-profit record label, a small part of the national museum complex in Washington, D.C. He is
co-author of the book PLANET DRUM (1992) with Mickey Hart and Frederic Lieberman and of
articles and reviews. He has a Ph.D. in Music from UCLA (1995), is chair of the Audio-Visual
Committee of the Society for Ethnomusicology, a founding member of its Applied
Ethnomusicology Committee and member of the UNESCO-advisory International Council for
Traditional Music. Prior to his current work, he produced concerts and albums, managed the
Nubian recording artist Hamza El Din, and composed and performed music for live theatre, dance
and film.
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John Strohm
Attorney, Bradley Arant Rose & White LLP
John Strohm is an attorney and musician based in Birmingham, Alabama. He is a magna cum
laude graduate of Cumberland School of Law of Samford University, where he served as Editorin-Chief of the Cumberland Law Review. He is an associate at the firm Bradley Arant Rose and
White LLP in Birmingham, where his transactional practice focuses on entertainment law and
general corporate law. His clients include songwriters, recording artists and independent record
labels. Prior to becoming an attorney, John played in a number of well- known indie and
alternative rock bands, including the Blake Babies, the Lemonheads, Polara and Antenna. John
has released two solo albums, with a third to be released in 2006. He continues to record and
perform whenever he has time.
Jenny Toomey
Executive Director, FMC
Jenny Toomey is the Executive Director of the Future of Music Coalition. She is also an
intellectual, an activist and a musician. After graduating from Georgetown University with an
interdisciplinary major in Philosophy, English and Women's Studies in 1990, Jenny co-ran
Simple Machines, an independent record label for eight years with Future of Music board
member Kristin Thomson. Simple Machines had over 70 releases, the most important of which
may have been a 24 page Mechanic's Guide to Putting Out Records which clearly and practically
described the process of putting out records and CDs, while educating young artists about the
value of retaining control of their work. This guide helped to launch a countless number of
independent labels and led to somewhat of a DIY renaissance in the alternative music community
throughout the 1990s. In the past 15 years Jenny has been a composer and performer on at least
12 CDs and dozens of compilation records, singles, and even a musical! These records were
released both on Simple Machines and other respected independent labels including Homestead,
Sub Pop and 4AD. Her second solo CD, Tempting, was released October 2002 on Misra Records.
After closing down Simple Machines in 1998 Jenny worked for three years at the Washington
Post as a copywriter. She also wrote music and technology reviews for the Post, Village Voice,
CNET and a variety of other music and technology publications. Here she began to understand
the potential power of technology to transform the lives of musicians. This fascination with
technology, when combined with her work organizing musicians to support the FCC's Low
Power Radio initiative, led her to join with Kristin Thomson and Insound.com to create an online
forum called The Machine in December 1999. At this site Kristin and Jenny began the process of
educating themselves and other musicians about the music/tech landscape. They also began to
raise critical questions regarding the artist's role in the unfolding technological revolution. After
publishing an op-ed piece in the Washington Post, Jenny pulled together a board that wrote and
published the Future of Music Manifesto, thus leading to the formation of the organization in
June 2000. In the past two years Jenny has spoken about music and technology at Harvard, MIT,
Columbia's American Assembly, South By Southwest, CMJ, Comdex, University of Chicago,
Temple University, NARM Convention, CNN International, Tech TV, London's Net Media,
Manchester's In The City conference and on NPR. In March 2001 she was named one of Internet
Weekly's "25 Unsung Heroes of the Web" and more recently received a special achievement
award from the Washington Area Music Association for her activism.
Jim Urie
President, Universal Music & Video Distribution
Jim Urie is President of Universal Music and Video Distribution (UMVD). In this capacity, Mr.
Urie oversees the activities and business strategies of Universal Music and Video Distribution,
the sales and distribution arm of the Universal Music Group and Universal Studios Home Video,
plus UMVD Visual Entertainment and UMVD’s newest venture, Fontana Distribution. Universal
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Music and Video Distribution handles the distribution and sales for such labels as The
Universal/Motown Records Group, The Island/Def Jam Music Group, Interscope, Geffen, A&M
Records, Roadrunner, MCA Nashville, Lost Highway, Mercury Nashville, Universal South, The
Verve Music Group, Universal Classics, Universal Music Latino, Universal Music Enterprises,
Univision Music Group, DreamWorks, Disa, ABKCO, Hollywood, Lideres Entertainment, Lyric
Street, Thump, Varese Sarabande and Walt Disney, as well as video product from Palm Pictures,
Xenon, Atkins and Trinity. Mr. Urie assumed the role of President in August 1999 and has
played a pivotal role in strategically breaking new ground in the areas of marketing and artist
development. Additionally, in 2003 Jim was the architect of a new dramatic and sweeping pricing
strategy for UMG, appropriately called ‘JumpSTART.’ UMVD has since experienced double
digit sales growth since JumpSTART was initiated. Not coincidentally, overall US music
business revenues, having been in decline for the past several years, actually increased
significantly in the fall of 2003, shortly after JumpSTART was announced, and have continued to
soar in 2004. Urie first joined the company in August 1996 as Executive Vice President and
General Manager and has since led UMVD to record breaking success. The company became the
first in the music industry to achieve the No. 1 position in the top five market share categories for
the year 2000. His efforts have resulted in fueling new market growth for Universal, while further
enhancing and broadening its reach with such best-selling artists as Eminem, 50 Cent, Ludacris,
Nickelback, 3 Doors Down, Sting, Nelly, Shania Twain, George Strait, India.Arie, Pat Green,
Lloyd Banks, and Ashlee Simpson among many others. Since 1996, Universal Studios Home
Video has also experienced unprecedented growth culminating in 2000 with revenues over onebillion for the first time in history, a feat that was repeated in 2001, 2002 and 2003. UMVD has
garnered many awards, including being named the National Association of Recording
Merchandisers’ Distributor of the Year three years in a row; 2000, 2001 and 2003. In March of
2004, Jim Urie was named Executive of the Year by the American Business Awards. Mr. Urie
began his career in 1972 as a college rep for CBS Records in Washington, D.C. and soon moved
up through the company’s ranks with brief stints in promotion and sales. In 1978, he was
appointed Miami Branch Manager where, in 1979, the division finished number one in sales out
of 21 branches. In 1980, Mr. Urie became New York City Branch Manager for CBS. Later, in
1987, his artist-driven approach to sales caught the attention of PolyGram executive Dick Asher.
Soon after, Mr. Asher recruited him to the post of Senior Vice President, Sales and Distribution,
for the newly reorganized PolyGram Records. With his dedication to artist development and
keen understanding of the creative process, Mr. Urie took on broader responsibilities in 1989
when he was promoted to Senior Vice President of Marketing. In this role, Mr. Urie oversaw
artist development, creative services, publicity, video product and product management for the
Mercury, Polydor, and London labels. This move made him one of the few executives in the
music industry to have held senior positions in both the creative and sales side of the business. In
1993, Mr. Urie joined Arista Records as Senior Vice President of Sales. While at the label, he
worked alongside Arista President Clive Davis in building the highly-acclaimed careers of such
superstars as Toni Braxton, Whitney Houston, Sarah McLachlan, TLC, and The Notorious B.I.G.
Siva Vaidhyanathan
Director of Communication Studies, New York University
Siva Vaidhyanathan, a cultural historian and media scholar, is the author of Copyrights and
Copywrongs: The Rise of Intellectual Property and How it Threatens Creativity (New York
University Press, 2001) and The Anarchist in the Library (Basic Books, 2004). Vaidhyanathan
has written for many periodicals, including The Chronicle of Higher Education, The New York
Times Magazine, MSNBC.COM, Salon.com, openDemocracy.net, and The Nation. After five
years as a professional journalist, Vaidhyanathan earned a Ph.D. in American Studies from the
University of Texas at Austin. He has taught at Wesleyan University and the University of
Wisconsin at Madison and is currently Director of the undergraduate program in Communication
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Studies in Culture and Communication at New York University. He lives in Greenwich Village,
USA.
Clyde Valentin
Director, Hip-Hop Theater Festival
Clyde Valentin is the producer and executive director of the Hip-Hop Theater Festival. He has a
history of contributing to and creating socially responsible entertainment projects for the last ten
years. Valentin co-founded Stress Magazine, a pioneering publication that examined the sociopolitical context of Hip-Hop through groundbreaking content and design, including graffiti art &
culture. Valentin also co-founded the Black August Benefit Concert series, now in its eight year.
He also co-founded the International Hip-Hop Exchange, an international arts project that works
to strengthen the capacity of artists, cultural workers, arts institutions and global youth
communities. Valentin has participated on national and international panels (the Association of
Performing Arts Presenters ‘Pop Goes the Culture: Finding your New Audience in the High/Low
Art Divide’ and the Hip Hop and Social Change Conference’s panel on ‘Film and Media’) and
has been invited to weigh in at convenings on field-specific issues internationally including at
The National Association of Latino Arts and Culture’s retreat to develop a re-granting program
being developed for Latino organizations, the Rockefeller and Ford Foundation’s Creative
Practice in the 21st Century, the Andrew W. Mellon's evolution of the Performing Arts System
and the International Theater Institute's World Congress as a member of the U.S. Delegation in
Tampico, Mexico, among others. Valentin is a graduate of Binghamton University, where he was
a member of La Raza Theater Company. He was born and raised in Brooklyn, NYC.
Don VanCleave
President, Coalition of Independent Music Stores
Don VanCleave left the industrial engineering business in Dallas in 1988 to open Magic Platter
CD in Birmingham, AL. For 14 years, Magic Platter (and Birmingham) became known as a
national starting point for many acts. Magic Platter received NARMs Small Retailer of the Year
in 1998 and 1999. In 1995, VanCleave met with about 30 other independent music retailers at a
hotel in San Francisco where it was decided to form a support group. The Coalition of
Independent Music Stores (CIMS) grew out of that meeting and VanCleave was appointed
President. For the past 10 years, CIMS has acted as a marketing liaison between many record
labels and the stores who are members. The members get behind nationally coordinated efforts to
develop new artists. CIMS also owns junketboy.com, an indie store only distribution company
that buys products directly from bands and works with the indie store community to promote and
sell the goods.
Donald Verrilli
Partner, Jenner & Block
Donald B. Verrilli, Jr. serves as Chair of the Firms Telecommunications Practice and a Co-Chair
of its Appellate and Supreme Court Practices. He is also a member of the Firms Policy
Committee. Mr. Verrilli concentrates his practice on Supreme Court and appellate litigation,
telecommunications, and First Amendment and media litigation. Mr. Verrilli has argued
numerous cases before the United States Supreme Court. Most recently, he argued on behalf of
the entertainment industry in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., where he
urged the Justices to hold software companies that build businesses on the illegal distribution of
copyrighted material liable for copyright infringement. He also successfully argued General
Dynamics Land Systems v. Cline, a case in which the Court ruled that the Age Discrimination in
Employment Act does not authorize reverse discrimination suits, FCC v. Next Wave Personal
Communications, a case in which the Court returned to NextWave billions of dollars worth of
wireless phone spectrum licenses that the FCC had sought to repossess from NextWave while it
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was in bankruptcy, and Verizon Communications v. FCC, the most important case arising out of
the Telecommunications Act of 1996. On a pro bono basis, he successfully defended the right to
effective counsel in Wiggins v. Smith. Mr. Verrilli has argued many cases in the federal courts of
appeals and in state supreme courts on a range of issues, including cases involving constitutional
law (involving the First Amendment, the Takings Clause and the Bill of Attainder Clause),
statutory construction, administrative law, copyright and criminal law. As part of his active First
Amendment practice he successfully represented the National Association of Broadcasters in a
case involving a First Amendment challenge to the compulsory copyright provisions of the
Satellite Home Viewer Improvement Act. Mr. Verrilli was counsel to NAB in Turner
Broadcasting System v. FCC, the landmark case upholding the must-carry provisions of the 1992
Cable Act. He was counsel in Reno v. American Civil Liberties Union, the Supreme Court
decision establishing the First Amendment rights of Internet speakers. Mr. Verrilli also represents
the Recording Industry Association of America on matters arising out of the Digital Millennium
Copyright Act.
Fred von Lohmann
Senior Staff Attorney, EFF
Fred von Lohmann is a senior staff attorney with the Electronic Frontier Foundation, specializing
in copyright and trademark law. In that role, he has represented programmers, technology
innovators, and individuals in litigation against every major record label, movie studio, and
television network (as well as several cable TV networks and music publishers) in the United
States. He served as counsel to StreamCast Networks in the MGM v. Grokster case recently
decided by the Supreme Court, and argued that case before the Ninth Circuit Court of Appeals.
Fred was named one of 2004's 100 most influential lawyers in California by the Daily Journal, a
leading legal newspaper, and received a 2003 CLAY award (California Lawyer of the Year) from
California Lawyer magazine. He has appeared on The News Hour with Jim Lehrer, CNN, CNBC,
ABC's Good Morning America, Fox News O'Reilly Factor, C-SPAN, and TechTV's
ScreenSavers and has been widely quoted in a variety of major print publications. Fred also
serves on the advisory boards of both the Future of Music Coalition and Public Knowledge.
Marcy Wagman
Program Director, Music Industry, Drexel University
Ms. Rauer Wagman is the principal owner of The Law Offices of Marcy Rauer Wagman, Esq. in
Philadelphia, Pennsylvania. She represents numerous entertainment industry clients, from
recording artists to record labels, both domestically and internationally. She is also Program
Director of the Bachelor of Science in Music Industry Program at Drexel University, where she is
the Head of MAD Dragon Records (distributed nationally by Ryko Distribution) and DraKo
Booking and Concert Promotion. In addition, she serves on the Advisory Board of the Villanova
University Law School's Sports and Entertainment Law Journal. At 17 years old, she recorded her
first album with Atlantic Records, and toured all over the United States in support of the LP.
Subsequently, she was Executive Producer/Creative Director for broadcast music production
company FC&D, Inc. for over 10 years. She composed and produced award-winning music for
over 500 TV and radio commercials, and numerous film/video scores, for clients such as ABC
News/Good Morning America, KYW Newsradio, AT&T, McDonald’s Restaurants, Campbell’s
Soup, American Express, Total Raisin Bran, Mallo-Cup Candies, Herr’s Potato Chips. Some of
her other accomplishments include: - Composing a No. 1 hit song on the Billboard charts (‘I’m
Not Your Man’) for Tommy Conwell and the Young Rumblers (Columbia/SONY Records) and
co-authoring three songs that appeared on his second Columbia/SONY release, Guitar Trouble. Contributing songs and production services to other major label recording artists, such as
Crimson Glory (Atlantic Records), John Kuzma (Epic/SONY) and many others. Her awards
include: Best Songwriter Award from the Philadelphia Music Foundation, two Television and
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Radio Advertising Club Awards, National Marketing Award for McDonalds’ Inc., and three
Philadelphia Advertising Club Awards. Also, she served for three years on the Board of
Governors of the National Academy of the Recording Arts and Sciences (NARAS), the Grammy
Awards organization, of which she is a voting member.
Joshua Wattles
Attorney
Mr. Wattles was counsel to certain P2P services and developers appearing as amici before the
District Court in MGM v. Grokster. He is a past-president of the Los Angeles Copyright Society
and was deputy and acting general counsel of Paramount Pictures Corporation as well as an inhouse lawyer for the American Society of Composers Authors and Publishers (ASCAP). He is an
Internet entrepreneur, an adjunct law professor and the former executive in charge of the largest
independent music publisher in the U.S., The Famous Music Publishing Companies.
Brian Austin Whitney
Founder, Just Plain Folks
Brian Austin Whitney is the founder of the Just Plain Folks Music Organization (JPF). Started in
the summer of 1998 with 60 people, it has grown to over 40,000 members worldwide. As a
grassroots organization focused on education, promotion and networking, JPF has inspired and
guided it's members to success at all levels. JPF hosts the largest music awards program in the
world with nearly 300,000 songs and over 26,000 albums entered in over 60 genres from it's
members for the 2005-2006 awards already. JPF also has local chapters in nearly 100 cities and
regularly tours the US and Canada to meet members face to face in their own communities,
keeping focus on the JPF motto "We're All In This Together."
Shoshana Zisk
Management, George Clinton Enterprises
Shoshana Zisk is an entertainment lawyer with a wide range of experience in the music industry.
Shoshana currently runs Business Affairs for George Clinton and his musical groups Parliament,
Funkadelic and The P-Funk Allstars. She also runs his new independent record label, The C
Kunspyruhzy. Shoshana previously worked in Legal Affairs at BMG Entertainment, Copyright at
Motown, and A&R Admin at Island Records. Shoshana is bar admitted in California, New York
and Florida.
Brian Zisk
Technologies Director, Future of Music Coalition
Brian Zisk is a Founder and the Technologies Director of The Future of Music Coalition. Brian is
also a partner in Kiddie Village, a children’s educational video company. Previously, Brian
founded The Green Witch Internet Radio, an Open Source audio pioneer which was purchased by
CMGI, Inc. (Nasdaq: CMGI). Brian is on the Board of Advisors for numerous companies and
projects, including leading Video on Demand company Gotuit Media and the non-profit Xiph
Organization, creators of Vorbis, FLAC, and Icecast among many Open Source projects.
Page 290

Materials From the 2005 Future of Music Summit

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