Steven Ayr

Advanced Issues in
Trademark and Copyright
Professor Damich
5/9/08

Peer-to-Peer Litigation: The “Making Available” Argument and the

Need for Legislation

In February of 2005, Jammie Thomas was just another one of the hundreds of
thousands of individuals using the peer-to-peer program Kazaa to download and share
music. By October of 2007, she had become the first individual to challenge the
Recording Industry Association of America all the way through trial. By October 4th,
she owed the recording industry a quarter of a million dollars 1.
Ms. Thomas’ outcome may be unique, but her position, squarely in the crosshairs
of the recording industry, is not. Since the inception of peer-to-peer file sharing, the
Recording Industry of America (RIAA), the music industry’s representative trade group,
has filed suit or threatened to file suit against more than 19,000 individuals for infringing
their exclusive right of distribution under the Copyright Act 2. In most cases, the
defendants or potential defendants have chosen to settle the claims against them rather
than take their chances in court. Among the reasons settlement has been an attractive
option to defendants is the incredible uncertainty over what a trial court would require as
evidence against them. The RIAA, in an effort to evade the evidentiary problems caused
by new technology, is seeking to greatly expand the definition of “distribution” under the
Copyright Act by advancing a “making available” conception of that exclusive right. In
so doing, the RIAA is attempting to greatly expand protection for the copyrighted works
of its members. To date, trial courts throughout the country have failed to come to a
consensus, leaving defendants guessing as to their liability, and the state of the law wholly
in flux.

1 Bangeman, Eric, RIAA trial verdict is in: Jury finds Thomas Liable for Infringement, Ars Technica, at
http://arstechnica.com/news.ars/post/20071004-verdict-is-in.html (Oct. 4, 2007).
2 Stokes, Jon, The RIAA vs. the EFF: who will redefine copyright for the digital age, Ars Technica, at
https://arstechnica.com/mews.ars/post/20060418-6626.html (April 18, 2006).

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 Legislation is required if there is to be certainty and fairness for defendants, and
effective legal recourse for the recording industry. As a group, the recording industry
finds itself facing a technology that allows infringement on an enormous scale and a
Copyright Act that provides them little recourse against it. Moreover, their most
significant attempt to expand protection under this Act, the “making available” argument,
fails, as they garner no support from the language of the Copyright Act, the torturing of
the definition of “publication”, the Register of Copyrights, or the case law. Further, in
the resulting confusion the courts have at times ground to a halt and individuals have
been subjected to terrific uncertainty.

The Recording Industry and Peer-to-Peer

The RIAA speculates that the recording industry worldwide loses up to $12.5
billion a year between online and more traditional forms of piracy. 3 A large portion of
online piracy is accomplished through the use of peer-to-peer file-sharing software, now
operating mostly on the Gnutella network. 4 Using pieces of software, users log on to the
file-sharing network from their individual computers and are immediately connected to
countless users all over the world. Once connected, users can search the computers of
other users (typically, only those files contained in the users’ “shared” folder), and
download those files of interest to them. All types of files can be downloaded to an
individual computer in this manner, and users often use this means to acquire copies of
sound recordings in contravention of 17 U.S.C. § 106 (1) and (3). The RIAA has been
successful in suing a number of developers of peer-to-peer software developers, most
notably in MGM v. Grokster.5, and continues to sue others.
Peer-to-peer software is unique however, in that it does not require a centralized,
established, software developer. Peer-to-peer software is in fact largely self-perpetuating.
The reason is the difference between the client and the network. Peer-to-peer software, as
a colloquial term, describes the file-sharing client, that is, the software on the individual
computer that connects to the network. The network can be more aptly described as a
uniform piece of code found in the clients that allows users to connect to each other.
Software developers create clients with different user interfaces, search options, etc., all

3 RIAA, For Students Doing Reports, at http://www.riaa.org/faq.php (last visited May 9, 2008).

4 Bangeman, Eric, Study: BitTorrent sees big growth, LimeWire still #1 P2P app, Ars Technica at http://
arstechnica.com/news.ars/post/20080421-study-bittorren-sees-big-growth-limewire-still-1-p2p-app.html
(April 21, 2008).
5 Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).

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built around the same piece of code, allowing them to connect to each other and
interoperate.
As a practical matter, this means that the network is not dependent upon any one
client, or any one software developer, for its existence. Additionally, the piece of code that
represents the network is open-source, meaning that it’s free for any software developer to
utilize in creating a file-sharing client. What this means for the RIAA is that when it sues
an individual software developer, even a victory will mean the elimination of a single
entity from a market where it can be replaced almost immediately. Additionally, because
there is no centralized network, but rather a disparate connection of computers to one
another, once a client is released there’s no effective way of taking it back, it will always
function so long as there are other users making use of it. It is this decentralized, self-
perpetuating quality of peer-to-peer networks that limits the effectiveness of RIAA
lawsuits against software developers and distributors, and has driven the RIAA to seek
recompense from individual users.
The RIAA starts the process of bringing suit against a peer-to-peer user with an
investigation. To date, the RIAA has used a company called MediaSentry to conduct all
of its investigations into peer-to-peer users. Typically, an investigator from MediaSentry
will sign onto a peer-to-peer client such as Kazaa and conduct a search for music files
whose copyright is owned by one of the RIAA’s member companies. Once a music file is
located, the investigator will make use of a Kazaa feature that allows one to see the entire
contents of a user’s “Shared Folder”. The shared folder is that folder that a user
designates as the location on their computer the contents of which will be shared with
other users, and to which all of a user’s downloads will be saved. Having accessed the
contents of a user’s shared folder, the investigator will take a screenshot, a digital picture
of the contents of the investigator’s monitor at a given time, of the folder and download
several of the copyrighted sound recordings 6.
Associated with each Kazaa user is a screen name and an Internet Protocol (IP)
address. The screen name is a name that the user designates for themselves upon the
installation of the Kazaa software, whereas the IP address is a number unique to the
user’s internet location, and which can be used to determine their internet service
provider (ISP). Both the screen name and IP address are shown for each user as a
function of the Kazaa software. The RIAA uses the screen name, and more importantly,
the IP address to file suit against a John Doe, obtain an ex parte order for immediate
discovery, and to issue a subpoena to the ISP compelling disclosure of the user’s name

6 Plaintiff’s Statement of the Case at 2, Capitol Records, Inc. v. Thomas, No. 06-cv-1497 (D. Minn. 2007).

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and address. Once the RIAA has obtained this information, they re-file suit in the
appropriate jurisdiction against the now-identified user.
Typically, the RIAA will come to court with three primary pieces of evidence, the
IP address, the screenshot, and the downloads. The IP address is used to establish that
the defendant is the Kazaa user. The screenshot is used to establish that the defendant
had a library of copyrighted sound recordings. The downloads are used to establish that
that defendant actually distributed the sound recordings without the permission of the
copyright holder, in violation of 17 U.S.C. § 106 (3). It is on this final prong that the
RIAA has frequently run into trouble in court, as many courts have been extremely
hesitant or downright opposed to considering the download by MediaSentry an actual
illegal distribution.
The argument against a finding of actual, illegal, distribution in this context is that
there is no infringement of the recording company’s exclusive right of distribution
because the distribution is made to the recording company’s duly authorized agent. In
support of this argument, the case of Olan Mills v. Linn Photo Co. is typically cited for its
proposition that, “It is well-established that the lawful owner of a copyright cannot
infringe its own copyright.” 7
This argument however, crumbles under the weight of authority, and the most
recent District Court ruling on the subject rejects it outright.8 . In Olan Mills, the plaintiff
photographer sent an investigator to the defendant photo store to see if the defendant
would make an enlargement of the plaintiff ’s photograph, as plaintiff had suspected
defendant was doing for a number of customers. Even though the investigator signed a
statement indicating that he owned the copyright to the photo and indemnifying the
defendant store, the court still held that the enlargement was an infringement.9 As such,
this case does not stand for the proposition that an investigator hired by a copyright
holder cannot infringe, but rather exactly the opposite.
Additionally, as the RIAA argued in its brief in Atlantic v. Howell, RCA/Ariola Int’l v.
Thomas & Grayston Co.10 weighs heavily against a finding that an investigator cannot
infringe its employers’ copyright. In this case, an investigator working for plaintiff record
company went into the defendant’s retail store, and with the help of the store’s employees,

7 Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1348 (8th Cir. 1994).

8Order at 13, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed April 29,
2008).
9 Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1347 (8th Cir. 1994).

10 RCA/Ariola Int’l v. Thomas & Grayston Co, 845 F.2d 773 (8th Cir. 1988).

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used a cassette duplicator in the store’s possession to make an infringing copy of a cassette
tape. As the Court stated on appeal, “The magistrate concluded that RCA had proved a
clear case of direct infringement against the retailers by showing that the investigators
were permitted to make infringing copies.” 11 This component of the ruling was not even
seriously considered on appeal, and apparently no agency argument was made by the
defendants. Clearly, this ruling weighs heavily in favor of the RIAA and against the
notion that MediaSentry’s downloads can’t be used as evidence of actual illegal
distribution.
Finally, in the most recent ruling on the subject, an order denying summary
judgment in Atlantic v. Howell, the judge clearly accepted the RIAA’s line of reasoning in
determining that a download by MediaSentry could constitute an actual illegal
distribution. Specifically, the Court stated, “...the recording companies obviously did not
intend to license MediaSentry to authorize distribution or to reproduce copies of their
works.”12 As such, when MediaSentry downloaded the sound recordings off of the
Howell’s computer, it was affecting an illegal distribution.
Despite this line of authority, courts have been reluctant to allow MediaSentry’s
downloads as direct proof of infringing distribution. Therefore, the RIAA has had to fall
back on its “making available” argument.

The “Making Available” Argument

The “making available” argument is at its heart an attempted expansion of

copyright protection in response to a lack of evidence. This lack of evidence is a direct
result of the nature of the peer-to-peer clients used to make the infringing downloads.
When a court determines that MediaSentry’s downloads may not be used as evidence of
an infringing distribution, the RIAA must find other evidence of infringement. However,
when the user of a peer-to-peer client downloads from another user, no record of the
transfer is stored on either computer. As such, when the RIAA is prohibited from using
MediaSentry’s downloads as evidence, they are left completely without evidence that any
distribution, infringing or not, ever took place. In response to this dilemma, the RIAA
has argued, most notably in its brief in Atlantic v. Howell, that making a copyrighted work
available for download should constitute a distribution under § 106 (3).

11 Id. at 777.

12Order at 13, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed April 29,
2008).

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 The RIAA’s “making available” argument fails for four reasons: it is not supported
by the language of the Copyright Act, it is not supported by the definition of
“publication” in § 101 of the Act, it is not supported by the Register of Copyrights, and it
is not supported by the relevant case law.

(i) The Language of the Copyright Act

The language of the Act simply does not lend itself to a “making available”
theory of copyright infringement. That is, nowhere in the Act will one find a reference to
the “making available” theory of distribution, nor will one find language that can be
reasonably construed to support such a theory.
The first instance in which it is suggested by the RIAA that one might find
legislative endorsement of the “making available” theory, is in the “to do and to
authorize” clause of § 10613. This reading of the clause is in clear conflict with the
legislative history and thus with the intent of the statute. The document that lends insight
into the minds of the legislators that enacted the Copyright Act of 1976 is the House of
Representatives Report Number 94-147614. As the House Report clearly states, “Use of
the phrase ‘to authorize’ is intended to avoid any questions as to the liability of
contributory infringers. For example, a person who lawfully acquires an authorized copy
of a motion picture would be an infringer if he or she engages in the business of renting
it to others for purposes of unauthorized public performance.”15
Thus, when the RIAA characterizes “making available” of a copyrighted work as
an infringement of the exclusive right of distribution because they’ve authorized that
distribution, they’re mischaracterizing the nature of the phrase “to authorize.” It is clear
that the legislative intent was to include “to authorize” for the purpose of secondary
liability. As such, one doesn’t directly infringe a copyright by improperly authorizing a
distribution, one vicariously or contributorily infringes a copyright by authorizing an
infringing copy to be made by a third party. In this way the plain language of the
legislative history very clearly forecloses the possibility that the statute can be read the way
that the RIAA suggests.

13 17 U.S.C. § 106 (2002).

14 H.R. Rep. No. 94-1476 at 61 (1976).

15 Id.

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 The First Circuit Court of Appeals expressly endorses the view that 106 should be
read in the light of the legislative history in Venegas-Hernandez v. ACEMLA 16, and two years
later in LAMCO v. Archdiocese of San Juan17 . As the Court in Venegas-Hernandez stated,
Because the right to “authorize” is literally one of the exclusive rights
provided in section 106, the authorizing person could (as a matter of
language) be treated as an infringer subject to statutory damages even if no
listed infringing act (for example, performance) actually occurred. Yet the
legislative origins of the “authorize” language in the statute arguably
support a narrower reading, and most (perhaps all) courts that have
considered the question have taken the view that a listed infringing act
(beyond authorization) is required for a claim. 18
The court goes on to say, and the RIAA misleadingly cites in its Atlantic v. Howell brief,
Admittedly, the better bare-language reading would allow the claims in
question; they might add some slight protection to federal copyright
interests, at the cost of more federal litigation. But the narrower
interpretation appears from legislative history to be closer to congressional
intent and has been followed by other courts. 19
Thus the First Circuit acknowledges, in a way that the RIAA is unwilling to, that one
must resist the very real temptation to take § 106 at face value. The Court further
acknowledges that such a reading of § 106 would expand the current formulation of the
exclusive rights encompassed by that section, and that the alternative, narrow reading
indicated by the legislative history represents the true intention of the drafters of the
Copyright Act and the interpretation generally accepted by the judiciary.
In its Atlantic v. Howell brief, the RIAA also misleadingly discusses Venegas-
Hernandez’s progeny, LAMCO, in support of its reading of § 106. The RIAA states, “Thus,
LAMCO is entirely consistent with Plaintiffs’ argument that the distribution right is
violated where copyrighted sound recordings are not only listed in an index, but are also
available behind the index.”20 This statement is simply wrong. LAMCO was at its base a
dispute between performing rights societies and music publishers in which there were

16 Venegas-Hernandez v. ACEMLA, 424 F.3d 50 (1st Cir. 2005).

17 LAMCO v. Archdiocese of San Juan, 499 F.3d 32 (1st Cir. 2007).

18 Venegas-Hernandez v. ACEMLA, 424 F.3d 50, 57 (1st Cir. 2005).

19 Id. at 58.

20Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 10, Atlantic
Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).

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nearly five hundred songs that the court had to work out ownership of. Part of the case
involved whether LAMCO/ACEMLA had infringed the copyrights of songs it mistakenly
asserted rights over. The District Court ruled on summary judgment, solely on the basis of
the songs being listed in a catalog, that LAMCO/ACEMLA had infringed the publisher’s
copyright.
The Court of Appeals, citing Venegas-Hernandez, reversed the District Court,
stating, “Infringement depends upon whether an infringing act, such as copying or
performing, has occurred. Therefore, to prove infringement, a claimant must show ‘an
infringing act after the authorization.’” 21 In the case at hand, the only evidence presented
to the District Court that any possibility of infringement might have taken place was that
LAMCO/ACEMLA had made the songs available on their website and had actually
distributed two songs on CDs. Since the District Court had applied the wrong standard
when reviewing evidence at trial, and there was such a paucity of evidence before the
Court of Appeals, the determination as to whether there was infringement in accord with
the proper standard belonged to the District Court in the first instance. The Court of
Appeals made clear however, that there had to be some infringing act independent of
mere authorization. This ruling then, clearly contradicts the RIAA’s interpretation of §
106.
As to the RIAA’s assertion that the ruling is in accord with its making available
theory, that’s blatantly false. The Court did in fact say that the actions of LAMCO/
ACEMLA “might be infringing” 22, but they also stated that, “...we cannot decide whether
the record contains sufficient undisputed evidence of infringing acts to warrant summary
judgment on infringement.”23 Since the RIAA’s “making available” theory requires only
an index and something available behind the index, a court in line with this reasoning
would have no trouble ruling on summary judgment where, as here, there is a website
listing tracks (an “index”), and one can actually listen to those tracks off of that website
(something “available behind the index”). In this way, the Court in LAMCO shows a clear
departure from both the RIAA’s reading of 106 and from their “making available”
conception of infringement.
The RIAA’s citation of case law on this point is equally mystifying when it
references Resnick v. Copyright Clearance Center, Inc. 24 in support of its broad reading of 106,

21 LAMCO v. Archdiocese of San Juan, 499 F.3d 32, 46 (1st Cir. 2007).

22 Id. at 48.

23 Id.

24 Resnick v. Copyright Clearance Center, Inc., 422 F.Supp.2d 252 (D. Mass. 2006).

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which imposes liability for authorization alone.25 Specifically, the RIAA argument
contends that the Resnick court, “...acknowledged that where, as here, there is direct proof
of an infringing act such as distribution that occurs after the wrongful authorization, a
direct cause of action may lie against the individual who authorized the act.”26 To begin
with, Resnick is a strange case for one to cite in favor of any position on direct liability for
copyright infringement, because the plaintiffs here, as the Court acknowledged, expressly
dropped their direct infringement claim and, despite other amendments to the complaint,
never reintroduced the claim. As such, the Court recognizes that no ruling is required on
the issue of direct infringement and liability. The Court does, however, go out of its way
in dicta to expressly affirm the rulings in Venegas-Hernandez and LAMCO27 , further adding
to the mystery of this case’s inclusion in the RIAA’s brief.
The second major problem with the RIAA’s reliance on Resnick, is its use of the
term “direct cause of action” 28 when describing what may lie if direct infringement is
proven after authorization. Essentially, it appears as though the RIAA is simply confused
on this point and has gotten a bit cavalier with the use of the word “direct.” The RIAA,
by citing this case, is trying to prove that its interpretation of § 106, wherein authorization
alone is a direct infringement of a copyright, is correct and supported by case law. This
case, however, supports the opposite, narrow, reading of § 106, where authorization is an
element of vicarious or contributory infringement, and only when there’s a third party
that directly infringes because of the authorization.
In this case, the plaintiff was alleging that the defendant was vicariously and
contributorily infringing its copyrighted photographs by keeping articles containing the
photographs on file and selling them to those that requested them. The Court ruled that
the defendant had in fact authorized third parties to infringe the works by offering them
for sale, but since no one had bought them, there had been no third party direct
infringement. The court then concluded that without third party direct infringement,
there couldn’t be contributory or vicarious infringement by the defendant.29 Thus, the
RIAA, in their reading of the case, appears to confuse the Court’s explanation of the

25Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 10, Atlantic
Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).
26 Id.

27 Resnick v. Copyright Clearance Center, Inc., 422 F.Supp.2d 252, 259 (D. Mass. 2006).

28Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 11, Atlantic
Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).
29 Resnick v. Copyright Clearance Center, Inc., 422 F.Supp.2d 252, 259 (D. Mass. 2006).

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elements for contributory or vicarious infringement with an explanation of the elements
direct infringement, placing this confusing jumble of elements under the heading “direct
cause of action.” 30

(ii) “Distribution” v. “Publication”

The whole issue of what action or inaction constitutes distribution is caused by the
fact that “distribution” is not defined in §101 of the Copyright Act. What is defined in §
101 is “publication.” In relevant part, “Publication” is defined as,
The distribution of copies or phonorecords of a work to the public by sale
or other transfer of ownership, or by rental, lease, or lending. The offering
to distribute copies or phonorecords to a group of persons for purposes of
further distribution, public performance, or public display, constitutes
publication.31
It is the RIAA’s contention that for the purposes of the Copyright Act, the words
“distribution” and “publication” are synonymous. Following this logic, § 106 (3) would
then encompass the definition of publication, which includes “offering to distribute.” It is
the RIAA’s further contention that the “making available” of files in the peer-to-peer
context would thus qualify as “offering to distribute,” which would in turn violate the
exclusive right of distribution. The RIAA bases this assertion solely on the authority of
Harper & Row Publishers, Inc. v. Nation Enterprises, the Supreme Court decision dealing with
the boundaries of fair use in the face of the right of first publication.
The RIAA’s position is incorrect, in so much as its reading of the Harper & Row
decision is incredibly over-expansive. Simply put, the Harper & Row decision did not dub
“distribution” and “publication” synonyms. Rather, it merely quoted a section of the
legislative history, namely, “Clause (3) of section, 106, establishes the exclusive right of
publications... Under this provision the copyright owner would have the right to control
the first public distribution of an authorized copy... of his work.” 32 This quotation was
merely the vehicle by which the Court could begin the discussion of the right of first
publication, as it is not actually mentioned in § 106 (3). Moreover, this section of the
legislative history, when read in its full text, clearly establishes publication as a subset of
distribution. Thus, the right of first publication (Justice O’Connor adds the word “first”

30Plaintiff’s Brief in Response to Amicus Brief of the Electronic Frontier Foundation, at 11, Atlantic
Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. 2007).
31 Publication, 17 U.S.C. § 101 (2000).

32 Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552 (1985).

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where it did not exist in the legislative history with no discussion), is a narrower brand of
the more broad right of distribution.
The appropriateness of this reading of the legislative history and thus of Harper &
Row is evidenced by the particular language of the House Report and the definition of
“Publication.” Most notably, the definition of “Publication” uses the word “Distribute”
three separate times 33. The net result is that the definition of “Publication” starts with
distribution, and adds a number of different qualifiers to it. Additionally, the explanation
of the right of first publication in the legislative history uses the word “Distribute” two
times. Again, the writers begin with distribute, add qualifiers, and come up with a
narrower concept: first publication. Lastly, were one to read the Copyright Act as the
RIAA suggests, substituting “Publication” for every instance of “Distribute”, the whole of
§ 106 (3), the definition of “Publication” and the legislative history embodied in H.R.
Rep. No. 94-1476, would all be so circular and confounded as to render them a nullity.
As the court states in Atlantic v. Howell, “One cannot assume that the terms are absolutely
synonymous in the face of such an unsatisfactory definition.” 34

(iii) The Register of Copyrights

In 2002, in a letter to Representative Berman for presentation before the House

Subcommittee on Courts, the Internet, and Intellectual Property, Mary Beth Peters, the
Register of Copyright, said the following:
While Section 106 of the U.S. Copyright Act does not specifically include
anything called a “making available” right, the activities involved in
making a work available are covered under the exclusive rights of
reproduction, distribution, public display and/or public performance set
out in Section 106. Which of these rights are invoked in any given context
will depend on the nature of the “making available” activity.

In the case of a peer to peer network user uploading a copyrighted work

onto his or her computer, making it available for other users of the peer to
peer network to download, it is simply incorrect to suggest that the person
performing the download is the only person legally responsible for
infringement. Making the work available in this context constitutes an
infringement of the exclusive distribution right, as well of the reproduction

33 Publication, 17 U.S.C. § 101 (2000).

34Order at 12, Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed April 29,
2008).

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 right (where the work is uploaded without the authorization of the
copyright holder). 35
The RIAA, in various briefs, has attempted to use this statement by the Register as
persuasive authority in support of their position. This use is wrong.
On the face of the language used by Ms. Peters, it seems clear that her
intention was to attempt to tread the fine line between supporting either
construction of § 106 (3). As such, this statement is not the blanket admonition of
the “making available” theory that some might wish it were. The first paragraph
clearly endorses the thinking behind the “making available” theory, that is, an
infringement is taking place for which the copyright holder should have some
form of redress.
Ms. Peters stops short, however, of endorsing the evidentiary loophole that
the RIAA is championing. She is still asserting that “making available” must be
thought about in the context of the particularly enumerated exclusive rights in §
106. That is, “making available” as some ethereal concept is not itself infringing,
but in order to make something available one must necessarily infringe one of the
exclusive rights in the conventional way. She clarifies this position by example in
the second paragraph, stating that in a peer-to-peer download, both parties are
liable for infringement. Her example assumes, however, a consummated transfer,
not just a listing of availability. Thus, it would seem that Ms. Peters’ conception of
infringement by “making available” is that the “making available” is not in and of
itself infringement, except insomuch as the act of “making available” infringes
one of the exclusive rights in a conventional way.

(iv) The Case Law

Both the RIAA and its opposition have cited to a number of cases, which
they believe wholly support their position that “making available” either does or
does not infringe the copyright holder’s exclusive right of distribution. More often
than not, the cases the two sides cite are the same, each side reading their own
position in the Court’s opinion. This can clearly be seen in the three most

35Letter from Marybeth Peters, Register of Copyrights, to Howard Berman, United States Representative,
(Sept. 25, 2002).

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important cases on point, A & M Records, Inc. v. Napster36, Perfect 10 v. Amazon37 , and
finally, Hotaling v. Church of Jesus Christ of Latter-Day Saints38.
In Napster, the Court was asked to decide whether the District Court below
had properly granted a preliminary injunction barring Napster from, “engaging
in, or facilitating others in copying, downloading, up-loading, transmitting, or
distributing plaintiffs’ copyrighted musical compositions and sound recordings...
without express permission of the rights owner.”39 As the Court of Appeals
rightly noted, preliminary injunctive relief is available where a plaintiff shows
either, “(1) a combination of probable success on the merits and the possibility of
irreparable harm; or (2) that serious questions are raised and the balance of
hardships tips in its favor.” 40 On appeal then, Napster was attempting to show
that the plaintiff either had no likelihood of success on the merits, or alternatively
stated, that no serious questions were raised.
The way in which Napster attempted to show no likelihood of success on
the merits forecloses the possibility that the case can be read as persuasive
authority (and controlling authority in the 9th Circuit) in favor of a “making
available” conception of distribution. Napster had been originally sued for
contributory infringement. Rather than defend on the grounds that no direct
infringement was taking place (a defense that would have been utterly
unbelievable in light of the common knowledge), Napster attempted to defend
itself on the ground that the massive direct infringement by its users was actually a
fair use. Thus, on appeal, Napster explicitly did not challenge the District Court’s
determination of direct infringement by users. As such, the issue was not properly
before the Court of Appeals for it to rule on.
The RIAA’s reliance on the Court’s language with regard to direct
infringement, namely, “Napster users who upload file names to the search index
for others to copy violate plaintiffs’ distribution rights,” is misplaced. In this
passage, the Court has gone on an unnecessary intellectual frolic, and thus the
views expressed are purely dicta. While the persuasiveness of dicta on such an

36 A & M Records, Inc. v. Napster, 239 F.3d 1004 (9th Cir. 2001).

37 Perfect 10 v. Amazon, 487 F.3d 701 (9th Cir. 2007).

38 Hotaling v. Church of Jesus Christ of Latter-Day Saints, 1218 F.3d 199 (4th Cir. 1997).

39 A & M Records, Inc. v. Napster, 239 F.3d 1004, 1011 (9th Cir. 2001).

40 Id. at 1013

13
important topic coming from the Ninth Circuit, a court generally given great
deference with regards to technology and entertainment based decisions, can be
debated, the simple fact is that it’s not controlling authority, even in the Ninth
Circuit.
The actual language that was determinative in this case came from Judge
Patel in the District Court, who stated, “here the evidence establishes that a
majority of Napster users use the service to download and upload copyrighted
music... And by doing that, it constitutes... direct infringement of plaintiffs musical
compositions, recordings.” 41 This language does not describe exactly which of the
exclusive rights had been violated, as it appears that from the onset of the case
both parties generally assumed that direct infringement on a massive scale was
taking place. Therefore, there were none of the evidentiary considerations that
would necessitate even a consideration of a “making available” conceptualization
of distribution, the defense had all but stipulated to actual, direct infringement.
Thus, the RIAA is attempting to rely on dicta from a case in which there were no
evidentiary disagreements, to support a broadening of copyright protection via a
relaxation of evidentiary standards. That’s simply an illogical position to take.
Clearly, a complete look at the Napster litigation shows that this case does not
support the “making available” argument.
In Perfect 10 v. Amazon both sides of the “making available” argument can
find language in which to take refuge, but any support this may lend to the
“making available” argument is of little persuasive value. Where the argument
against “making available” finds its most persuasive support is in the discussion of
the District Court’s reasoning. In particular, the Court of Appeals stated, “The
district court reasoned that distribution requires an ‘actual dissemination’ of a
copy. Because Google did not communicate the full-size images to the user’s
computer, Google did not distribute these images.” 42 The court then goes on to
state that this conclusion is in keeping with the language of the Copyright Act,
making a clear argument against the “making available” theory of distribution.
As the Court of Appeals addresses the plaintiff ’s “deemed distribution”
argument, however, it drifts towards and eventually applies the dicta of Napster and
the rule of Hotaling. In distinguishing the instant case from both Napster and
Hotaling, the court ends up laying out the RIAA’s preferred conceptualization of
the “making available” theory of distribution: where a person actually has an

41 A & M Records, Inc. v. Napster, No. 99-5183 at 1 (N.D.Cal. July 26, 2000).

42 Perfect 10 v. Amazon, 487 F.3d 701, 719 (9th Cir. 2007).

14
unauthorized copy of a work and makes it available to others through an index,
there will be “deemed distribution” and an infringement of the exclusive right of
distribution.43 It is important to note however, that neither Napster nor Hotaling
was actually applicable here, as Google did not own a collection of Perfect 10’s full
size images, the works they were accused of infringing. As such, this case lacks the
precedential and persuasive value that the RIAA would like it to have. When
coupled with the contradictory endorsement of the plain language reading of the
Copyright Act, this case becomes too confused to offer any substance to the
“making available” argument.
The preeminent case in the discussion, though, is without a doubt Hotaling
v. Church of Jesus Christ of Latter-Day Saints44. While this case very clearly falls on the
side of the RIAA’s conceptualization of the right of distribution, the quality of the
opinion is suspect. This case, a 1997 decision from the Fourth Circuit Court of
Appeals, involved a set of genealogical research materials produced on microfiche
that were compiled by the Hotalings and subsequently sold to the Church. The
infringement relevant to the opinion occurred when the Church made a copy of
the original microfiche to substitute the now-damaged original, placed record of
that unauthorized copy in its library index, and made the copy available to the
public to look at. The Hotalings brought an action for infringement of their
exclusive right of distribution, but lacked any evidence of actual distribution
because the library did not keep records of who, if anybody, looked at the
unauthorized copy.45
The Court ruled that the act of placing a work in your possession in an
index and making it available to the public qualifies as public distribution.46
Therefore, doing the same with an unauthorized copy qualifies as unauthorized
and infringing distribution. The Court then, is clearly aligned with the RIAA’s
perspective, a perspective that is itself gleaned from this very case.
The Court, in support of this arguably radical expansion of the exclusive
right of distribution by way of a relaxation of evidentiary standards necessary to
prove such distribution, cites exactly zero authorities. Rather, the Court makes a
brief public policy argument, implying that the library was intentionally acting in

43 Id.

44 Hotaling v. Church of Jesus Christ of Latter-Day Saints, 1218 F.3d 199 (4th Cir. 1997).

45 Hotaling v. Church of Jesus Christ of Latter-Day Saints, 1218 F.3d 199, 202 (4th Cir. 1997).

46 Id. at 203.

15
bad faith by not keeping records and concluding that a defendant should not be
allowed to profit by such a willful lack of evidence. If anything, this is an
argument that is much more forceful in the peer-to-peer context than in the
context of a single library with a single infringing microfiche. While today it’s
generally accepted (perhaps not by certain members of the community, bloggers,
and lobbying groups) that there is infringement of a massive scale going on and
that something needs to be done to stem the flow of illegally copied materials, in the
context of this case the same policy argument is somewhat less persuasive.
The merits of the policy aside though, in the Court’s statement of this
principle cited authority is conspicuously absent, and the ruling seems to be purely
conclusory. One reading the opinion is left with the overwhelming feeling that the
Court simply made this one up because it liked the result. As the court in London-
Sire Records v. Doe 1 stated, “Respectfully, Hotaling did not cite any precedent... [its]
interpretation, even if sound public policy, is not grounded in the statute.” 47
Thus, while this case does stand as the seminal case in favor of the “making
available” argument, its value as precedent is questionable, and in the face
contradictory statutory authority, it cannot stand as the rule.
Where the recording industry is thus left without any ability to stop peer-
to-peer infringement directly by shutting down a network, is left without any direct
evidence of infringing distribution, is left without the ability to assume infringing
distribution through a “making available” argument, and yet is still being robbed
of its valuable intellectual property on a daily basis, legislation is required to
rectify the situation.

The Courts and the Defendants

Legislation is also necessary in the peer-to-peer context, specifically with

regard to a “making available” conceptualization of the right of distribution, for
the sake of the courts and the defendants. The courts have come at times to a
grinding halt, and have been wildly divergent where decisions have been rendered.
Defendants, meanwhile, have been put at a disadvantage in both settlement
negotiations and in the courtroom by the tremendous uncertainty surrounding this
type of litigation.
The exceedingly slow way in which the RIAA’s peer-to-peer lawsuits have
progressed in the face of the “making available” confusion is typified by the case

47 London-Sire Records v. Doe 1, No. 04-CV-12434-NG at 10 (D. Mass. Mar. 31, 2008).

16
of Elektra v. Barker. The complaint in this case was filed on August 19, 200548 . On
January 26, 2007, nearly a year and a half later, and after numerous delays and
amicus briefs, the judge finally heard arguments regarding a motion to dismiss. At
the conclusion of those arguments, the judge made known his decision both to
rule on the contentious “making available” argument, and to reserve judgment
until a later date. Fourteen months later, on March 31, 2008, the judge returned
his decision49 . It took two and a half years for the court to deliver a ruling on a
motion to dismiss. While this case may be slightly atypical, it exemplifies perfectly
the need for a legislative resolution to the “making available” dilemma, and the
dangers involved in failing to so resolve the problem.
Moreover, the need for legislation can be seen in the wildly divergent
results that have been rendered in various District Courts. In Electra v. Barker, the
court’s much anticipated decision explicitly endorsed the “making available”
argument, basing its decision upon the conclusion that “distribution” and
“publication” are synonymous in the Copyright Act. The most recent decision in
peer-to-peer litigation took the exact opposite view. The court in Atlantic v. Howell
denied the plaintiff ’s motion for summary judgment and explicitly rejected the
“making available” argument, the argument that “distribution” and “publication”
are synonymous, and the value of Hotaling as precedent 50. To further complicate
the matter, what appellate authority there is on the matter, Napster and Perfect 10, is
dicta at best and confused to the point of lacking any value at worst. Where courts
diverge so wildly in an area of law dominated by statute, Congress must be called
upon to provide guidance.
Finally, legislation is needed so as to protect defendants from unfair
disadvantage and uncertainty. Whereas it has already been shown that courts
differ greatly in their rulings with regard to the “making available” argument, and
whereas there is seemingly no means of predicting how any individual court will
decide, defendants are left unable to reasonably assess their chances of victory or
defeat. This leaves open the very real possibility that defendants, afraid of
judgments in the hundreds of thousands of dollars or more, or simply unwilling to

48Complaint at 1, Elektra Entertainment Group, Inc. v. Barker, No. 05-CV-7340 (S.D.N.Y. filed Aug. 19,
2005).
49 Opinion and Order at 1, Elektra Entertainment Group, Inc. v. Barker, No. 05-CV-7340 (S.D.N.Y. filed
Jan. 26, 2007).
50Order at 7, 11, 9 Atlantic Recording Corporation v. Howell, No. CV-06-02076-NVW (D. Ariz. filed
April 29, 2008).

17
commit years of their life to litigation, will feel coerced into settling claims that
potentially have no merit. As Judge Otero said in Elektra v. O’Brien, “The concern
of this Court is that in these lawsuits, potentially meritorious legal and factual
defenses are not being litigated, and instead, the federal judiciary is being used as
a hammer by a small group of plaintiffs to pound settlements out of
unrepresented defendants.” 51 With estimates of up to 25,000 lawsuits having
been filed, 52 this is not a potentially coercive position to take lightly, particularly
given the lack of reporting and oversight on claims settled out of court, at times
even before a complaint is filed. Clearly, legislation is necessary to eliminate a
potentially coercive situation for defendants.

Conclusion

In conclusion, action is required by Congress to safeguard the interests of

both the RIAA and those it seeks to hold liable for infringement. The extent of
the infringement that the recording industry is suffering online is such that the
industry must have redress for its grievances, while the nature of the peer-to-peer
software is such that traditional evidence gathering techniques and statutory
constructions don’t apply. In the face of these issues the recording industry has
attempted to carve out an expansion of current copyright law in the form of its
“making available” argument, but this argument is not a true reflection of the
statutory language or valued case law, so it must fail. Legislation then, in an area
dominated by statute, is the appropriate tool by which to vindicate the rights of
the copyright holder, allow for the efficient workings of the court, unify the federal
trial courts, and protect accused infringers from coercion.

51Order to Show Cause re First Amended Complaint at 2, Elektra Entertainment Group, Inc. v. O’Brien,
No. CV 06-5289 (C.D. Cali. filed March 2, 2007).
52 Bangerman, Eric, Foundation on which RIAA builds cases in danger of being undermined, Ars Technica,
at http://arstechnica.com/news.ars/post/20070820-foundation-on-which-riaa-builds-cases-in-danger-of-
being-undermined.html (Aug. 20, 2007).

18