MP3tunes and the Ghost of Cablevision

On September 29th, District Judge William H. Pauley, III, issued his memorandum and order in Capitol Records v. MP3tunes,1 as many have reported. However, as I read the decision, I’m surprised at Judge Pauley’s holding that certain parts of Cablevision are still good law after the Supreme Court’s opinion in Aereo. Specifically, Judge Pauley distinguished Aereo and held that its interpretation of the public-private distinction under the Transmit Clause is not controlling precedent. Respectfully, I think that’s bunk.

The defendant, Michael Robertson, argued that he could not be secondarily liable for violating the plaintiffs’ public performance rights since the third-party websites linked-to from his MP3tunes platform were not themselves directly infringing. In analyzing the direct liability of these third-party websites, Judge Pauley turned to the Second Circuit’s analysis of the public performance right in Cablevision. The Cablevision court held that “under the transmit clause, we must examine the potential audience of a given transmission by an alleged infringer to determine whether that transmission is ‘to the public.'”

In the Second Circuit’s opinion, since “the use of a unique copy may limit the potential audience of a transmission,” such use is “therefore relevant to whether that transmission is made ‘to the public.'” The Cablevision court read into the Transmit Clause a distinction between public and private performances based on the use of a single source copy for each transmission: “it seems quite consistent with the Act to treat a transmission made using Copy A as distinct from one made using Copy B.” When there’s a one-to-one relationship between the source copy and the user, the Second Circuit held, the performances are private.2

But the Cablevision court implied that things would be different if one source copy were used to make multiple transmissions to multiple users. In that case, the performances would be public, even though the “potential audience of a given transmission” would still be limited. This rule would apply, for example, if a video-on-demand service such as YouTube were to use only one source copy for multiple performances. Even if each transmission reaches only one person, the fact that each transmission arises from the same source copy means that the performances are nonetheless public. That’s the Second Circuit’s theory of the public-private distinction under the Transmit Clause.

Judge Pauley applied this analysis to the third-party websites in MP3tunes:

Robertson argues that third-party websites did not publicly perform the works-in-suit. Public performance means, inter alia, to (1) perform or display the work in a public place or in a place where a substantial number of persons is gathered or (2) to transmit or display the work in or to the public by means of any device or process. (See Charge at 31.) “[U]nder the transmit clause, [courts] must examine the potential audience of a given transmission by an alleged infringer to determine whether that transmission is ‘to the public.’ ” Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 137 (2d Cir.2008). “Both factors—the identity of the transmitter and the source material of the transmission—limit the potential audience of a transmission … and are therefore germane in determining whether that transmission is made ‘to the public.’ ” Cartoon Network, 536 F .3d at 138. In the context of this case, a third-party domain hosts a single master copy that is available for transmission to anyone on the Internet.

Having determined that these third-party websites used a “single master copy” for their multiple transmissions, Judge Pauley found that they were direct infringers—thus making Robertson an indirect infringer. The problem with this is that the Supreme Court in Aereo completely rejected this “single master copy” theory from Cablevision. While one can certainly argue that Aereo is distinguishable to the extent its analysis focused on functional equivalence to a cable system, its interpretation of the public-private distinction under the Transmit Clause, by contrast, applies wherever there is a performance-by-transmission (or a display-by-transmission, as discussed below).

In Aereo, the Supreme Court held that a performance is not private simply because there is a one-to-one relationship between the source copy and the user. In other words, the Court held that the public-private distinction under the Transmit Clause does not turn on the “potential audience of a given transmission,” with an exception for multiple transmissions arising from one source copy, as the Second Circuit had indicated in Cablevision. Under the Supreme Court’s interpretation of the Transmit Clause, even multiple transmissions made from multiple copies, one for each user, can be public performances as well:

The text of the Clause effectuates Congress’ intent. Aereo’s argument to the contrary relies on the premise that “to transmit … a performance” means to make a single transmission. But the Clause suggests that an entity may transmit a performance through multiple, discrete transmissions. That is because one can “transmit” or “communicate” something through a set of actions. . . .

The Transmit Clause must permit this interpretation, for it provides that one may transmit a performance to the public “whether the members of the public capable of receiving the performance … receive it … at the same time or at different times.” § 101. Were the words “to transmit … a performance” limited to a single act of communication, members of the public could not receive the performance communicated “at different times.” Therefore, in light of the purpose and text of the Clause, we conclude that when an entity communicates the same contemporaneously perceptible images and sounds to multiple people, it transmits a performance to them regardless of the number of discrete communications it makes.

We do not see how the fact that Aereo transmits via personal copies of programs could make a difference. The Act applies to transmissions “by means of any device or process.” Ibid. And retransmitting a television program using user-specific copies is a “process” of transmitting a performance. A “cop[y]” of a work is simply a “material objec[t] … in which a work is fixed … and from which the work can be perceived, reproduced, or otherwise communicated.” Ibid. So whether Aereo transmits from the same or separate copies, it performs the same work; it shows the same images and makes audible the same sounds. Therefore, when Aereo streams the same television program to multiple subscribers, it “transmit[s] … a performance” to all of them.

Aereo teaches that the public-private distinction under the Transmit Clause doesn’t turn on the number of source copies used, and that holding is not limited to services that look like cable systems—it applies to Transmit Clause analysis generally. While Judge Pauley may have reached the right result in finding that the third-party websites were direct infringers of the plaintiffs’ public performance rights, his reliance on Cablevision’s ghost led him astray when it came to Robertson’s own direct liability for violating the plaintiffs’ public display rights.

Due to its parallel construction, the Transmit Clause applies with equal force to performances and displays accomplished via transmissions. What’s “to the public” for the public performance right is “to the public” for the public display right:

To perform or display a work “publicly” means . . . 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.

Judge Pauley held that Robertson did not directly infringe the plaintiffs’ public display rights because he used individualized source copies for each transmission:

Robertson contends that MP3tunes did not publicly transmit cover art because MP3tunes created a separate copy of each album cover for each user. Each time any user uploaded a track, MP3tunes’ software automatically searched for and retrieved cover art, regardless of whether other users had that cover art in their lockers. (Tr. 345:2–347:1 (Horowitz).) MP3tunes saved the cover art on its servers. (Tr. 345:12–15 (Horowitz).) Only one user was capable of receiving each copy. (Tr. 346:20–347:1 (Horowitz).) Because there was no master copy of the cover art, MP3tunes cannot be held directly liable for a public display of cover art. see Cartoon Network, 536 F.3d at 139; cf. MP3tunes I, 821 F.Supp.2d at 649–50 (holding that MP3tunes could not be directly liable for violations of Publishers’ public performance rights in musical compositions because MP3tunes did not use a master copy).

Judge Pauley’s “cf.” at the end references his earlier holding in 2011 in the same litigation:

EMI argues that MP3tunes’ storage system violates its right to public performance because, much like Robertson’s earlier effort at online music storage with MP3.com, MP3tunes employs a “master copy” to rebroadcast songs to users who uploaded different copies of the same song. EMI relies on the Second Circuit’s holding that a cable provider did not violate television studios public performance rights in its digital recording and play back services because the cable provider did not use a master copy to play back shows recorded by their viewers. Cartoon Network, LP v. CSC Holdings, Inc., 536 F.3d 121, 138 (2d Cir.2008). EMI’s argument, however, mischaracterizes MP3tunes’ storage system. The record demonstrates that MP3tunes does not use a “master copy” to store or play back songs stored in its lockers. Instead, MP3tunes uses a standard data compression algorithm that eliminates redundant digital data. Importantly, the system preserves the exact digital copy of each song uploaded to MP3tunes.com. Thus, there is no “master copy” of any of EMI’s songs stored on MP3tunes’ computer servers.

How a “standard data compression algorithm that eliminates redundant digital data” differs from a “master copy,” I truly don’t know. It seems to me that they’re the same thing—if all of the “redundant digital data” is eliminated, what’s left is a “master copy.” Regardless, while Cablevision’s read of the public-private distinction under the Transmit Clause as turning on the number of source copies may have been good law in 2011, that’s no longer true today. Judge Pauley’s holding that Robertson didn’t directly infringe the plaintiffs’ public display rights because “there was no master copy of the cover art” simply can’t be reconciled with the Supreme Court’s holding in Aereo that the number of source copies doesn’t matter under the Transmit Clause.

The plaintiffs in MP3tunes argued that Aereo’s interpretation of the Transmit Clause should be applied to both the public performance and the public display analysis, but Judge Pauley brushed this aside:

Plaintiffs also argue that the Supreme Court’s opinion in Aereo establishes that the third-party websites performed the work publicly. But the Supreme Court expressly excluded “novel issues not before the Court, as to which ‘Congress has not plainly marked [the] course.’ ” Am. Broad. Cos. v. Aereo, Inc., 134 S.Ct. 2498, 2511 (2014). Because the third-party domains here are not “substantially similar” to a community antenna television provider, they are beyond Aereo’s reach. See Aereo, 134 S.Ct. at 2506. ***

Further, as described earlier, Aereo does not buttress Plaintiffs’ argument because its holding was explicitly limited to technologies substantially similar to the one before the Supreme Court. Aereo, 134 S.Ct. at 2506, 2510–11. Therefore, Robertson’s motion for judgment as a matter of law is granted as to MP3tunes’ liability for public display rights in cover art.

Indeed, the final section of the Supreme Court’s opinion in Aereo discussed the intended reach of its holding. It began by noting that its conclusion that Aereo performs doesn’t necessarily mean that other services also perform:

Aereo and many of its supporting amici argue that to apply the Transmit Clause to Aereo’s conduct will impose copyright liability on other technologies, including new technologies, that Congress could not possibly have wanted to reach. We agree that Congress, while intending the Transmit Clause to apply broadly to cable companies and their equivalents, did not intend to discourage or to control the emergence or use of different kinds of technologies. But we do not believe that our limited holding today will have that effect.

For one thing, the history of cable broadcast transmissions that led to the enactment of the Transmit Clause informs our conclusion that Aereo “perform [s],” but it does not determine whether different kinds of providers in different contexts also “perform.” For another, an entity only transmits a performance when it communicates contemporaneously perceptible images and sounds of a work. See Brief for Respondent 31 (“[I]f a distributor … sells [multiple copies of a digital video disc] by mail to consumers, … [its] distribution of the DVDs merely makes it possible for the recipients to perform the work themselves—it is not a ‘device or process’ by which the distributor publicly performs the work” (emphasis in original)).

The Court was able to determine that Aereo performs because of its functional equivalence to a cable system, but as it noted, that wouldn’t necessarily be true for “different kinds of providers in different contexts.” That said, however, the Court reiterated its definition of what it means to “perform” under the Transmit Clause: “an entity only transmits a performance when it communicates contemporaneously perceptible images and sounds of a work.” That definition of performance-by-transmission applies whether the service is functionally equivalent to a cable system or not.

By the same token, the Court then discussed its definition of “the public” under the Transmit Clause:

Further, we have interpreted the term “the public” to apply to a group of individuals acting as ordinary members of the public who pay primarily to watch broadcast television programs, many of which are copyrighted. We have said that it does not extend to those who act as owners or possessors of the relevant product. And we have not considered whether the public performance right is infringed when the user of a service pays primarily for something other than the transmission of copyrighted works, such as the remote storage of content. See Brief for United States as Amicus Curiae 31 (distinguishing cloud-based storage services because they “offer consumers more numerous and convenient means of playing back copies that the consumers have already lawfully acquired” (emphasis in original)). In addition, an entity does not transmit to the public if it does not transmit to a substantial number of people outside of a family and its social circle.

Nothing in that passage demonstrates that the Court’s understanding of “the public” is limited to services that are functionally equivalent to a cable system. On the contrary, the Court stated affirmatively that “the public” does not include “those who act as owners or possessors of the relevant product.”

Lastly, in the passage quoted by Judge Pauley, the Court stated that it wasn’t deciding cases not before it:

We cannot now answer more precisely how the Transmit Clause or other provisions of the Copyright Act will apply to technologies not before us. We agree with the Solicitor General that “[q]uestions involving cloud computing, [remote storage] DVRs, and other novel issues not before the Court, as to which ‘Congress has not plainly marked [the] course,’ should await a case in which they are squarely presented.” Brief for United States as Amicus Curiae 34 (quoting Sony, supra, at 431, 104 S.Ct. 774 (alteration in original)). And we note that, to the extent commercial actors or other interested entities may be concerned with the relationship between the development and use of such technologies and the Copyright Act, they are of course free to seek action from Congress. Cf. Digital Millennium Copyright Act, 17 U.S.C. § 512.

While it’s true that, as Judge Pauley noted, the Court indicated it was not deciding “novel issues” that were not before it, that doesn’t mean that its entire interpretation of the Transmit Clause should be dismissed as inapplicable to MP3tunes. On the contrary, the Court reiterated its definitions of “perform” and “the public” in the very section where it discussed the intended reach of its holding. The Court didn’t create a special interpretation of the public-private distinction under the Transmit Clause for cable systems and Aereo-lookalikes, as Judge Pauley seemed to think. The Supreme Court’s analysis applies no matter which technology is at issue, including Robertson’s MP3tunes.

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© 2014 Devlin Hartline. Licensed under the Law Theories Public License 1.0.


  1. Capitol Records, Inc. v. MP3tunes, LLC, Case No. 07-cv-9931, 2014 WL 4851719 (S.D.N.Y. Sept. 29, 2014). 
  2. It should be noted that the Second Circuit somewhat cabined things: “This holding, we must emphasize, does not generally permit content delivery networks to avoid all copyright liability by making copies of each item of content and associating one unique copy with each subscriber to the network, or by giving their subscribers the capacity to make their own individual copies.” 

Further Thoughts on Infringement as Conversion

After my last post discussing the holding in Flo & Eddie v. Sirius XM that the defendant had converted the plaintiff’s property when it publicly performed its pre-1972 sound recordings without a license, someone asked me how that holding is reconcilable with the Supreme Court’s statement in Dowling v. United States that “interference with copyright does not easily equate with theft, conversion, or fraud.” My answer to that is two-fold: Dowling read into the National Stolen Property Act a physicality requirement that does not necessarily apply to the tort of conversion, and the fact that conversion claims can be preempted by the Copyright Act demonstrates that such claims do “easily equate” with infringement.1

Dowling sold bootleg recordings of Elvis Presley through the mail, and the issue before the Supreme Court was “whether phonorecords that include the performance of copyrighted musical compositions for the use of which no authorization has been sought nor royalties paid are consequently ‘stolen, converted or taken by fraud’” under Section 2314 of Title 18. The physical records themselves had been paid for by the defendant, but the performances recorded thereon had not. The Court said this wasn’t enough to bring it within Section 2314’s reach, since cases prosecuted under that statute “have always involved physical ‘goods, wares, [or] merchandise’ that have themselves been ‘stolen, converted or taken by fraud.’”

I think this makes sense: If I fill up my legally-bought iPhone with illegally-downloaded movies and songs, my iPhone doesn’t become stolen or converted property. The Court read Section 2314 to require that the physical goods transported across state lines be themselves stolen or converted. But I don’t think this holding is irreconcilable with the notion that infringement can be theft or conversion. My iPhone full of illicit downloads represents my theft or conversion of the victims’ intangible property rights, not of any material objects that may have belonged to the victims. And since those intangible rights have no physicality, they can’t be transported across state lines as required by Section 2314.

Generally speaking, Section 301 of the Copyright Act preempts state law claims that seek to vindicate legal or equitable rights that are equivalent to any of the exclusive rights in Section 106 for works that are copyrightable subject matter under Section 102 or Section 103. State law claims that are qualitatively different from a copyright infringement claim because they contain an extra element are not preempted. However, an element that goes to knowledge or intent is not an extra element that prevents preemption. Under this analysis, courts frequently find that state law claims for conversion are preempted under Section 301.

For example, take the case of Frontier Group v. Northwest Drafting & Design, where the plaintiff claimed that its ownership of certain architectural plans had been converted when the defendant used the plans to build a single-family residence. The court held that the plans were copyrightable subject matter under Section 102. Turning to whether the right asserted was equivalent to an exclusive right under Section 106, the court noted that the plaintiff did not seek the return of the physical plans. Instead, it sought monetary damages because the defendant had used the plans to build the residence, that is, the defendant had made a reproduction. Finding that there was no extra element alleged, the court held that the conversion claim was preempted by the Copyright Act.

Thus, the conversion claim was “easily equate[d]” with a claim for copyright infringement, and it was the act of making the copy that implicated the exclusive right to be vindicated. It should be noted, however, that there was no claim that the residence itself—that is, the copy—was converted property. Building the residence converted the plaintiff’s intangible right under Section 106, but the residence itself did not represent property that had been converted. In the same way, my iPhone full of illicit downloads is the product of my conversion of the victims’ exclusive rights, though my iPhone is not property that has been converted. And this same distinction applies to Dowling’s bootleg recordings of Elvis Presley.

The Dowling dissent faulted the majority’s reasoning:

The statutory terms at issue here, i.e., “stolen, converted or taken by fraud,” traditionally have been given broad scope by the courts. For example, in United States v. Turley, 352 U.S. 407, 77 S.Ct. 397, 1 L.Ed.2d 430 (1957), this Court held that the term “stolen” included all felonious takings with intent to deprive the owner of the rights and benefits of ownership, regardless of whether the theft would constitute larceny at common law. Id., at 417, 77 S.Ct., at 402. Similarly, in Morissette v. United States, 342 U.S. 246, 72 S.Ct. 240, 96 L.Ed. 288 (1952), the Court stated that conversion “may be consummated without any intent to keep and without any wrongful taking, where the initial possession by the converter was entirely lawful. Conversion may include misuse or abuse of property. It may reach use in an unauthorized manner or to an unauthorized extent of property placed in one’s custody for limited use.” Id., at 271–272, 72 S.Ct., at 254–255.

Dowling’s unauthorized duplication and commercial exploitation of the copyrighted performances were intended to gain for himself the rights and benefits lawfully reserved to the copyright owner. Under Turley, supra, his acts should be viewed as the theft of these performances. Likewise, Dowling’s acts constitute the unauthorized use of another’s property and are fairly cognizable as conversion under the Court’s definition in Morissette.

I agree with the dissent that Dowling’s acts constituted theft and conversion under those broad definitions; however, that wasn’t the precise question before the Court. The issue was whether the physical records—that is, the copies that resulted from that theft and conversion—were themselves stolen or converted property. As with my illicitly-filled iPhone and the illicitly-built residence in Frontier Group, Dowling’s creation of the copies converted intangible property, but the copies themselves were not tangible property that had been converted. Section 2314 explicitly requires that the physical property being transported across state lines be “the same” property that was stolen or converted. It was not: The property that Dowling stole or converted was intangible, while the property he transported was tangible.

The Dowling majority noted that “interference with copyright does not easily equate with theft, conversion, or fraud,” but, in the same paragraph, it also said it’s “less clear, however, that the taking that occurs when an infringer arrogates the use of another’s protected work comfortably fits the terms associated with physical removal employed by § 2314.” This lack of “physical removal,” as required by the statute, meant that Dowling’s infringing copies were not “the sorts of goods whose interstate shipment § 2314 makes criminal.” But this doesn’t mean that Dowling’s acts of infringement in creating the physical records were not themselves acts of theft or conversion.

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© 2014 Devlin Hartline. Licensed under the Law Theories Public License 1.0.


  1. Of course, even if a conversion claim is preempted by the Copyright Act, it doesn’t necessarily follow that the claim would have succeeded on the merits had it not been preempted. For example, intangible personal property cannot be converted under Oklahoma state common law. See, e.g., Shebester v. Triple Crown Insurers, 826 P.2d 603, 608 (Okla. 1992) (“Conversion is an illegal taking of another’s personalty inconsistent with his ownership rights. The general rule in Oklahoma is that only tangible personal property may be converted.”) (emphasis in original; footnotes omitted). 

Happy Together: Infringement as Conversion

The copyright world is abuzz this week about Monday’s decision in Flo & Eddie v. Sirius XM. Flo & Eddie Inc. is a corporation owned by two of the original members of “The Turtles,” the group that recorded hit songs in the 1960s such as “Happy Together,” and it sued satellite radio giant Sirius XM Radio Inc. for publicly performing fifteen of its pre-1972 sound recordings. The complaint listed three causes of action: misappropriation, unfair competition, and conversion under California state law. Because sound recordings fixed prior to February 15, 1972, are not protected by the federal Copyright Act, the question of whether there exists an exclusive right to publicly perform pre-1972 sound recordings under California state law was central to all of the plaintiff’s claims. Looking at the statutory text, legislative history, and case law, the district court held: “The Court finds that copyright ownership of a sound recording under § 980(a)(2) includes the exclusive right to publicly perform that recording.”

While most of the coverage that I’ve seen so far has focused on the court’s holding that the plaintiff does have the exclusive right to publicly perform its pre-1972 sound recordings in California, there’s another part of the decision that has caught my eye, namely, that Sirius XM is liable for converting the plaintiff’s property. Conversion is an intentional property tort wherein the defendant wrongfully exercises dominion over the plaintiff’s personal property.1 Historically, conversion only applied to tangible personal property, but over the last two centuries, it has increasingly been applied to intangible personal property as well.2

California state law takes a broad view of the tort of conversion, and this, in turn, follows from the state’s broad conception of property. As far back as 1880, the Supreme Court of California noted that “the action no longer exists as it did at common law, but has been developed into a remedy for the conversion of every species of personal property.”3 While early cases required that the intangible property converted be merged in a document,4 such as a stock certificate, that requirement is no longer adhered to in California.5 And this follows from the recognition that “property” does not refer to the thing itself, but rather to the rights appurtenant to the thing. As one California appellate court put it in 1948, “property is all-embracing so as to include every intangible benefit and prerogative susceptible of possession or disposition.”6

Flo & Eddie presents a unique look at the nature of an author’s exclusive rights, unmoored from the baggage of the Copyright Act. The district court found Sirius XM liable on all three claims: misappropriation, unfair competition, and conversion. Each of these claims is unique, yet they’re also interrelated in that they focus on practices that are fundamentally inequitable. When Sirius XM publicly performed the plaintiff’s sound recordings without paying for the privilege, its business practices were unlawful and unfair. The plaintiff invested substantial time and money to create its property, yet Sirius XM misappropriated that property and reaped where it had not sown. And Sirius XM converted the plaintiff’s property, wrongfully exercising dominion over the plaintiff’s intangible rights.

Too often today, these fundamental notions of fairness get lost when discussing copyright infringement, and we hear complaints from the copyleft whenever anyone dares suggest that copyright is property that can be converted or stolen. Such notions are dismissed as the inventions of “maximalists” who are dishonestly attempting to reframe the debate. But the truth is that the “propertization” of copyright is nothing new,7 and there’s been a steady change in how we think about property generally, both tangible and intangible, over the last few centuries. The district court in Flo & Eddie had no trouble determining that the plaintiff’s intangible property rights had been converted, and this wasn’t because some Hollywood boogeyman was whispering in its ear—it’s simply because the modern conception of property is far broader than it used to be centuries ago.

In its motion for summary judgment, the plaintiff argued that Sirius XM had engaged in conversion under California state common law, and it’s interesting to note too how the plaintiff grounded its property rights in the labor-desert theory:

California’s common law also protects pre-1972 recordings under the long recognized theories of misappropriation and conversion. . . . Conversion . . . is a strict liability tort and only requires a plaintiff to show (1) ownership or right to possession of the property; (2) conversion by a wrongful act or disposition of property rights; and (3) damages. . . .

There can be no doubt that Flo & Eddie and its principals (Kaylan and Volman) invested substantial time and money in development of their pre-1972 recordings. They not only supplied the artistic performances that are on the recordings, but they waived substantial royalty claims in order to obtain ownership of those recordings, and paid to buy out the interests of the other members of The Turtles in those recordings.

In addition, Flo & Eddie and its principals (Kaylan and Volman) have devoted their time and energy over the last four decades licensing, promoting, and marketing those recordings. On the other hand, Sirius XM has simply taken those recordings at little or no cost to it and has used them to become the largest radio broadcaster in the United States measured by revenue.

In its opposition brief, Sirius XM argued that it had not dispossessed Flo & Eddie of any of its property nor caused it any damage when it publicly performed the plaintiff’s sound recordings:

Plaintiff likewise makes no serious effort, nor could it, to prove out the elements of a conversion claim, which requires “the wrongful exercise of dominion over the property of another” and proof of “(1) the plaintiff’s ownership or right to possession of the property; (2) the defendant’s conversion by a wrongful act or disposition of property rights; and (3) damages[.]” . . .

Sirius XM’s public performances of Plaintiff’s sound recordings neither dispossess the Plaintiff of those recordings nor cause any injury or lost sale that could be said to “interfere” with its possessory interest. Plaintiff admits that it cannot identify a single lost sale, lost license, or diminished license fee it has suffered as a result of Sirius XM. . . . Absent any dispossession or any proven damage, Plaintiff’s attempt to extend the conversion cause of action to bar unauthorized performances of its recordings must fail.

In its reply brief, the plaintiff argued that Sirius XM’s public performances had dispossessed it of its property and caused it damage:

Similarly unavailing is Sirius XM’s argument that it is not liable for conversion because its “public performances of Plaintiff’s sound recordings” does not dispossess Flo & Eddie of those recordings. . . . Sirius XM’s ipse dixit ignores the fact that performance of those recordings dispossesses Flo & Eddie of that performance. . . .

Sirius XM’s contention that conversion of sound recordings has been limited by the court to those instances where it interferes with a sale wrongly suggests that only sales of physical product matter. Finally, Sirius XM’s contention that Flo & Eddie have not suffered harm because they are unable to identify lost sales ignores that the harm in this case is measured by much more than lost sales. It also includes the revenue that Sirius XM wrongfully appropriated to itself and the license fees that Sirius XM should have paid had it licensed the recordings instead of simply taking them.

Confronted with these highly disparate views as to whether Sirius XM had converted Flo & Eddie’s property when it violated the plaintiff’s exclusive public performance rights, the district court easily sided with the plaintiff:

“In California, conversion has three elements: ownership or right to possession of property, wrongful disposition of the property right and damages.” . . . Flo & Eddie has an ownership interest in the right to publicly perform its sound recordings under § 980(a)(2). . . . There was wrongful disposition of that property right every time Sirius XM publicly performed the recordings without Flo & Eddie’s permission, in violation of California copyright law. . . .

On the element of damages, Sirius XM contends that there are none because Flo & Eddie cannot identify a single sale or lost or diminished license fee that it has suffered as a result of Sirius XM’s performance of its sound recordings. . . . But Sirius XM’s unauthorized performances alone establish conversion damages in the form of license fees that Sirius XM should have paid Flo & Eddie in order to publicly perform its recordings. . . . Thus, the Court grants Flo & Eddie’s motion for summary judgment on conversion liability.

I don’t claim to know whether the court reached the right conclusion as to the existence of an exclusive right to publicly perform pre-1972 sound recordings under California state law. I’ve never researched that issue, and I have no idea whether it will survive the inevitable appeal. But, assuming that holding is correct, I think the court reached the right result—both descriptively and normatively—that Sirius XM converted Flo & Eddie’s property. And while I’m sure this holding brings much chagrin to those who see little value in the exclusive rights of authors and artists, it makes perfect sense to me.

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© 2014 Devlin Hartline. Licensed under the Law Theories Public License 1.0.


  1. See, e.g.Burlesci v. Petersen, 68 Cal. App. 4th 1062, 1066 (1998) (“Conversion is the wrongful exercise of dominion over the property of another. The elements of a conversion claim are: (1) the plaintiff’s ownership or right to possession of the property; (2) the defendant’s conversion by a wrongful act or disposition of property rights; and (3) damages. Conversion is a strict liability tort. The foundation of the action rests neither in the knowledge nor the intent of the defendant. Instead, the tort consists in the breach of an absolute duty; the act of conversion itself is tortious. Therefore, questions of the defendant’s good faith, lack of knowledge, and motive are ordinarily immaterial.”). 
  2. See, e.g., Restatement (Second) of Torts § 242 cmt. d (1965) (“The modern action for the tort of conversion always has been colored by its descent from the common law action of trover, which originated as a remedy against the finder of lost goods who refused to return them. Because of this origin, and the persistence until comparatively recent years of the fiction of losing and finding, the action was narrowly limited in its scope, and it would not lie for the appropriation of any property which could not be lost and found. It would not lie for the appropriation of land, because land was incapable of being lost; and it would not lie for the appropriation of any choses in action or other intangible rights, which were incapable of being found. With the disappearance of the forms of action, the modern action of conversion has undergone a slow process of extension, which has carried it beyond these ancient limits of the action of trover.”). 
  3. Payne v. Elliot, 54 Cal. 339, 341 (1880). 
  4. See, e.g., Restatement (Second) of Torts § 242 cmt. e (1965) (“It was first held that the conversion of a document in which intangible rights were merged permitted recovery of damages for the appropriation of the rights so identified with it. . . . Then . . . it came to be recognized by a number of courts that the recovery was for the interference with the intangible rights themselves, and that the conversion of the document was merely the means by which this was accomplished. The final step, which a good many courts have taken, was the recognition that there may be ‘conversion’ of such an intangible right, of a kind customarily identified with and merged in a document, even though the document is not itself converted.”). 
  5. See, e.g., Kremen v. Cohen, 337 F.3d 1024, 1033 (9th Cir. 2003) (“In short, California does not follow the Restatement’s strict requirement that some document must actually represent the owner’s intangible property right. On the contrary, courts routinely apply the tort to intangibles without inquiring whether they are merged in a document . . . .”); Welco Electronics, Inc. v. Mora, 223 Cal. App. 4th 202, 210 (2014) (“In California, the tort of conversion has expanded well beyond its original boundaries.”). 
  6. Downing v. Mun. Court of City & Cnty. of San Francisco, 88 Cal. App. 2d 345, 350 (1948) (internal quotations and citations omitted). 
  7. See, e.g., Justin Hughes, Copyright and Incomplete Historiographies: Of Piracy, Propertization, and Thomas Jefferson, 79 S. Cal. L. Rev. 993, 1008-09 (2006) (“The question of whether copyrights were property had been debated by seventeenth- and eighteenth-century English jurists and writers, albeit in a jumble of other issues. Through those debates the view that copyright was property steadily strengthened. While the issue might not have been totally resolved by the time of the American Revolution, the colonists-cum-revolutionaries may have missed some of the nuances of the English debate—and appear to have landed more squarely on the copyright-is-property side. In that sense, the recent scholarly debate about the ‘propertization’ of copyright recapitulates this seventeenth- and eighteenth-century debate—with modern scholars seemingly cautioning modern judges and policymakers not to do what seventeenth- and eighteenth-century judges and policymakers have already done.”). 

Does Petrella’s Laches Rule Apply to Claims for Monetary Damages in Patent Cases?

The Supreme Court’s opinion in Petrella v. MGM from earlier this year left an important issue on the table: Does the Court’s rule that laches may not be invoked to bar claims for monetary damages in a copyright case apply to patent cases as well? (I wrote about the Petrella opinion in an earlier post.) In SCA Hygiene v. First Quality, a panel of the Federal Circuit was asked to decide that very question, and in an opinion issued last Wednesday, it punted:

We first turn to the issue of laches. As a preliminary matter, SCA argues that Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), “compels a finding that [Aukerman] is no longer good law.” . . . In particular, SCA points out that the Supreme Court has never “approved the application of laches to bar a claim for damages brought within the time allowed by a federal statute of limitations.” Petrella, 134 S. Ct. at 1974.

But Petrella notably left Aukerman intact. See id. at 1974 n.15 (“We have not had occasion to review the Federal Circuit’s position.”). Because Aukerman may only be overruled by the Supreme Court or an en banc panel of this court, Aukerman remains controlling precedent.

Aukerman refers to a Federal Circuit opinion from 1992 where the en banc court held that laches could be invoked to bar claims for monetary damages within the Patent Act’s six-year limitation period. In this post, I’ll explain why I think the Federal Circuit panel in SCA Hygiene got it wrong. In my opinion, Aukerman is undoubtedly no longer good law in light of the Supreme Court’s reasoning in Petrella.

Here’s what the Supreme Court said about Aukerman in a footnote in Petrella:

The Patent Act states: “[N]o recovery shall be had for any infringement committed more than six years prior to the filing of the complaint.” 35 U.S.C. § 286. The Act also provides that “[n]oninfringement, absence of liability for infringement or unenforceability” may be raised “in any action involving the validity or infringement of a patent.” § 282(b) (2012 ed.). Based in part on § 282 and commentary thereon, legislative history, and historical practice, the Federal Circuit has held that laches can bar damages incurred prior to the commencement of suit, but not injunctive relief. A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1029–1031, 1039–1041 (1992) (en banc). We have not had occasion to review the Federal Circuit’s position.

The Petrella Court did not take a position on Aukerman, which is unsurprising considering that no patent claims were before the Court at the time. Instead, the Court expressly declined to review that particular opinion. However, the Federal Circuit panel in SCA Hygiene failed to consider whether the Petrella Court’s reasoning implicitly overruled Aukerman—at least insofar as the applicability of laches to claims for monetary damages are concerned.

In an opinion issued this past July, a different panel of the Federal Circuit explained the rule as to earlier circuit court decisions being implicitly overruled by the Supreme Court:

It is established that a later panel can recognize that the court’s earlier decision has been implicitly overruled as inconsistent with intervening Supreme Court authority. See, e.g., Miller v. Gammie, 335 F.3d 889, 899 (9th Cir. 2003) (en banc) (“[C]ircuit precedent, authoritative at the time that it has issued, can be effectively overruled by subsequent Supreme Court decisions that are closely on point, even though those decisions do not expressly overrule the prior circuit precedent.”) (internal quotation marks omitted); see also United States v. Fisher, 502 F.3d 293, 296, 306-07 (3d Cir. 2007); Dawson v. Scott, 50 F.3d 884, 892 n.20 (11th Cir. 1995) (“In view of these intervening Supreme Court precedents, [the prior panel decision] does not control and appears to be overruled.”). We have adopted and applied this principle. See, e.g., Doe v. United States, 372 F.3d 1347, 1354-57 (Fed. Cir. 2004) (concluding that prior precedent has been undermined by intervening Supreme Court decisions, and was therefore “no longer good law”) . . . .

“[T]he issues decided by the higher court need not be identical to be controlling. Rather, the relevant court of last resort must have undercut the theory or reasoning underlying the prior circuit precedent in such a way that the cases are clearly irreconcilable.” Miller, 335 F.3d at 900. Indeed, lower courts are “bound not only by the holdings of higher courts’ decisions but also by their ‘mode of analysis.’” Id. (citing Antonin Scalia, The Rule of Law as the Law of Rules, 56 U. Chi. L. Rev. 1175, 1177 (1989)); see also United States v. Lindsey, 634 F.3d 541, 550 (9th Cir. 2011) (“[W]e are an intermediate court within the federal system, and as such, we must take our cue from the Supreme Court. . . . Setting [a prior panel’s] holding aside for a moment, in our estimation the case’s reasoning has been fatally undercut by the Supreme Court.”) (emphasis in original).

Given the fact that the Supreme Court in Petrella directly spoke to the applicability of laches within a statutory limitation period to claims for monetary damages, I think the Federal Circuit panel in SCA Hygiene shirked its duty to determine whether Petrella had implicitly changed the law in the patent context. As “an intermediate court within the federal system,” the Federal Circuit panel was obligated to “take [its] cue from the Supreme Court.” Respectfully, I think the circuit panel should have determined whether Petrella “undercut the theory or reasoning underlying” Aukerman.

To explain why I think the Federal Circuit panel in SCA Hygiene got it wrong, I need to compare the Supreme Court’s reasoning in Petrella to that of the en banc Federal Circuit in Aukerman. But, first, I think it’s helpful to start with the difference between the statutory limitation period found in the Copyright Act and the one found in the Patent Act. The Copyright Act contains a broad statutory limitation. Section 507(b) provides:

No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.

The Copyright Act, therefore, bars all claims—including claims for monetary damages—that have accrued more than three years prior to when the action is initiated. The Patent Act, by contrast, contains a much narrower statutory limitation. Section 286 provides:

[N]o recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

The Patent Act, therefore, only bars claims for monetary damages that have accrued more than six years prior to when the action is initiated. Thus, these limitations are exactly the same in one important regard: They both bar claims for monetary damages that have accrued more than a set number of years before the action is initiated. For copyright claims, it’s three years, and for patent claims, it’s six years, but with both, Congress has explicitly spoken to the timeliness of claims for monetary damages.

In Aukerman, the en banc Federal Circuit addressed the availability of the laches defense within Section 286’s six-year limitation period to claims for monetary damages. Recall that laches is an equitable defense that applies when the plaintiff unreasonably delays in filing suit to the material prejudice of the defendant. Laches reflects one of the traditional maxims of equity, namely, that equity aids the vigilant, not those who sleep on their rights. (In Latin: “Vigilantibus non dormientibus æquitas subvenit.”)

The Federal Circuit in Aukerman rejected the plaintiff’s argument that laches could not be applied to claims for monetary damages within the six-year limitation period:

Aukerman’s argument is doubly flawed. First, Aukerman is in error in its position that, where an express statute of limitations applies against a claim, laches cannot apply within the limitation period. . . .

Second, with respect to section 286 specifically, a six-year limitation on damages, virtually identical to section 286, has been in the patent statute since 1897. . . . [S]ection 286 is not a statute of limitations in the sense of barring a suit for infringement. Assuming a finding of liability, the effect of section 286 is to limit recovery to damages for infringing acts committed within six years of the date of the filing of the infringement action. . . .

We are unpersuaded that section 286 should be interpreted to preclude the defense of laches and provide, in effect, a guarantee of six years damages regardless of equitable considerations arising from delay in assertion of one’s rights. . . .

Even looked at afresh, we have no difficulty in reading section 286 harmoniously with the recognition under section 282 of the laches defense. By section 286, Congress imposed an arbitrary limitation on the period for which damages may be awarded on any claim for patent infringement. Laches, on the other hand, invokes the discretionary power of the district court to limit the defendant’s liability for infringement by reason of the equities between the particular parties. . . .

Aukerman also argues that laches, by reason of being an equitable defense, may be applied only to monetary awards resulting from an equitable accounting, not to legal claims for damages. Inasmuch as the patent statute was amended in 1946 to eliminate the remedy of an equitable accounting, per Aukerman, this change also eliminated the basis for a laches defense. We disagree.

For many decades, parties have generally been allowed to plead equitable defenses at law without having to resort to a separate bill in equity. In 1915, Congress enacted 38 Stat. 956, codified as 28 U.S.C. § 398, which authorized such pleadings. As of that time, laches became available to bar legal relief, including patent damage actions. . . . Section 398 was then superseded in 1937 by Fed.R.Civ.P. 2 which merged legal and equitable claims into a single civil action. . . . Section 398 was later repealed as being obsolete in light of Fed.R.Civ.P. 2. . . . The right to interpose the equitable defense of laches in patent litigation, therefore, remains as viable today as it was when section 398 was first enacted in 1915.

In any event, the right to interpose the equitable defense of laches in a civil action is specifically recognized in Fed.R.Civ.P. 8(c). . . . Hence, we are unpersuaded that the technical distinction between application of laches against legal damages and an equitable accounting which Aukerman asks us to draw should be made.

Thus, the Federal Circuit reasoned that: (1) laches can be applied within an express statutory limitation period; (2) Section 286 bars claims for damages, not suits for infringement; (3) courts should be allowed to consider the equities in awarding monetary damages; (4) Section 282 recognizes the laches defense; (5) the equitable defense of laches can be applied to a legal claim for monetary damages; and (6) Rule 8(c) guarantees that laches is available for all claims, whether legal or equitable in nature.

In my opinion, post-Petrella, every single one of these reasons is no longer viable. As to the contention that laches can be applied to a claim for monetary damages within a statutory limitation period, the Supreme Court in Petrella explicitly held:

To the extent that an infringement suit seeks relief solely for conduct occurring within the limitations period, however, courts are not at liberty to jettison Congress’ judgment on the timeliness of suit. Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window.

Note that this holding is not tied to the Copyright Act’s statute of limitations; it applies to statutory limitation periods across the board. The reason is simple: Since Congress has expressly determined timeliness, it implicates separation of powers concerns when courts “jettison” that determination. The fact that Section 286 only bars claims for monetary damages, instead of barring all claims as Section 507(b) does, is irrelevant. The fact remains that Congress has established its “judgment on the timeliness” of claims for monetary damages in patent cases. And it follows that courts simply cannot “jettison” that express timeliness determination without implicating separation of powers concerns.

Of course, the fact that Congress only spoke as to timeliness with respect to claims for monetary damages in patent cases means that it did not speak to timeliness with respect to any other types of claims, and it follows that courts can weigh the equities when considering other types of claims in patent cases without implicating separation of powers concerns. However, the Court’s holding in Petrella makes clear that, contrary to the Federal Circuit’s position that courts should always be able to weigh the equities, when there is a statutory limitation period for a given claim, the equitable defense of laches can only be invoked to bar or limit equitable claims:

As to equitable relief, in extraordinary circumstances, laches may bar at the very threshold the particular relief requested by the plaintiff. And a plaintiff’s delay can always be brought to bear at the remedial stage, in determining appropriate injunctive relief, and in assessing the “profits of the infringer … attributable to the infringement.” § 504(b). . . .

[L]aches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitation. See 1 D. Dobbs, Law of Remedies § 2.4(4), p. 104 (2d ed. 1993) (hereinafter Dobbs) (“laches … may have originated in equity because no statute of limitations applied, … suggest[ing] that laches should be limited to cases in which no statute of limitations applies”). Both before and after the merger of law and equity in 1938, this Court has cautioned against invoking laches to bar legal relief. See Holmberg v. Armbrecht, 327 U.S. 392, 395, 396, 66 S.Ct. 582, 90 L.Ed. 743 (1946) (in actions at law, “[i]f Congress explicitly puts a limit upon the time for enforcing a right which it created, there is an end of the matter,” but “[t]raditionally …, statutes of limitation are not controlling measures of equitable relief”); Merck & Co. v. Reynolds, 559 U.S. 633, 652, 130 S.Ct. 1784, 176 L.Ed.2d 582 (2010) (quoting, for its current relevance, statement in United States v. Mack, 295 U.S. 480, 489, 55 S.Ct. 813, 79 L.Ed. 1559 (1935), that “[l]aches within the term of the statute of limitations is no defense [to an action] at law”); County of Oneida v. Oneida Indian Nation of N. Y., 470 U.S. 226, 244, n. 16, 105 S.Ct. 1245, 84 L.Ed.2d 169 (1985) (“[A]pplication of the equitable defense of laches in an action at law would be novel indeed.”).

Because we adhere to the position that, in face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief, the dissent thinks we “plac[e] insufficient weight upon the rules and practice of modern litigation.” Post, at 1985. True, there has been, since 1938, only “one form of action—the civil action.” Fed. Rule Civ. Proc. 2. But “the substantive and remedial principles [applicable] prior to the advent of the federal rules [have] not changed.” . . . Holmberg, Merck, and Oneida so illustrate. The dissent presents multiple citations, . . . many of them far afield from the issue at hand, others obscuring what the cited decisions in fact ruled. . . . Yet tellingly, the dissent has come up with no case in which this Court has approved the application of laches to bar a claim for damages brought within the time allowed by a federal statute of limitations. There is nothing at all “differen[t],” see post, at 1985, about copyright cases in this regard.

Thus, the substantive differences between law and equity remain in force, even though the procedural differences have been eradicated. The Court in Petrella even dispensed with the argument that Rule 8(c) somehow makes laches available to every type of claim:

Laches is listed among affirmative defenses, along with, but discrete from, the statute of limitations, in Federal Rule of Civil Procedure 8(c). Accordingly, MGM maintains, the plea is “available … in every civil action” to bar all forms of relief. . . . To the Court’s question, could laches apply where there is an ordinary six-year statute of limitations, MGM’s counsel responded yes, case-specific circumstances might warrant a ruling that a suit brought in year five came too late. . . .

The expansive role for laches MGM envisions careens away from understandings, past and present, of the essentially gap-filling, not legislation-overriding, office of laches. Nothing in this Court’s precedent suggests a doctrine of such sweep. Quite the contrary, we have never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period. Inviting individual judges to set a time limit other than the one Congress prescribed, we note, would tug against the uniformity Congress sought to achieve when it enacted § 507(b).

The only reason invoked by the Federal Circuit in Aukerman that the Supreme Court did not look at in Petrella is the proposition that Section 282 recognizes the availability of laches to claims for monetary damages. I think this reason is easily dismissed: Nowhere does Section 282 mention laches, and the Aukerman court didn’t contend otherwise. Instead, the Federal Circuit claimed that this recognition of laches comes from the “commentary of one of the drafters of the revised patent statute.” In particular, the circuit court cited the following passage:

The defenses which may be raised in an action involving the validity or infringement of a patent are[:] …. ‘Noninfringement, absence of liability for infringement, or unenforceability’ [35 U.S.C. § 282][;] … this would include … equitable defenses such as laches, estoppel and unclean hands. P.J. Federico, Commentary on the New Patent Law, 35 U.S.C.A. 1, 55 (West 1954).

Of course, the comments of one of the drafters of the Patent Act are not statutory law, but even on its own terms, Federico’s comments merely suggested that certain equitable defenses were to remain available. He said nothing about whether those equitable defenses could be applied to claims for legal relief in all cases. Moreover, even if he had said that, the Supreme Court in Petrella explicitly rejected the notion that laches can be applied to claims for monetary damages within a statutory limitation period. Obviously, the comments of a drafter do not trump the Supreme Court’s explicit holding to the contrary.

Given the Supreme Court’s broad holding in Petrella, I don’t see how it’s possible that “Petrella notably left Aukerman intact,” as the Federal Circuit panel in SCA Hygiene contended last week. The Court’s holding that the equitable defense of laches cannot be invoked within a statutory limitation period to bar a claim for monetary damages could not be any clearer. In my opinion, this is true for the Copyright Act and the Patent Act alike.

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© 2014 Devlin Hartline. Licensed under the Law Theories Public License 1.0.

The Various Views of Volitional Conduct

On July 15th of this year, the Copyright Office sought “further comments on the state of U.S. law recognizing and protecting ‘making available’ and ‘communication to the public’ rights for copyright holders.” The Office had solicited similar comments this past February, and a total of twenty-seven replies were filed at the time. After the Supreme Court issued its Aereo opinion in June, the Office’s July call for comments requested “commenters’ views regarding the Supreme Court’s opinion in Aereo and how that opinion may affect the scope of the rights of making available and communication to the public in the United States.”

The Copyright Office listed six suggested questions that “commenters may wish to address,” but one question in particular concerned volitional conduct:

How should courts consider the requirement of volitional conduct when assessing direct liability in the context of interactive transmissions of content over the Internet, especially in the wake of Aereo?

Twenty-eight comments have now been submitted in response, and the various views among the commenters on volitional conduct are fascinating. Recall that in Aereo, the majority made no mention of “volitional conduct” in holding that Aereo publicly performs, but the dissent thought that Aereo does not perform under its version of the volitional conduct test. The comments filed with the Copyright Office run the gamut on the continued validity of volitional conduct analysis post-Aereo, and they demonstrate fundamental disagreements over what the test is even about.

In previous posts, I’ve developed my own view of the test: I think volitional conduct simply refers to “causation,” in the tort-law sense of the word, and all courts engage in volitional conduct analysis when determining whether a defendant can be held directly liable for violating any of the exclusive rights in Section 106. It’s not enough that the defendant be the factual, but-for cause of the copying; the defendant has to be the legal cause as well. In other words, under the volitional conduct test, I think courts engage in proximate causation analysis. As recurring fact-patterns arise, certain variations of the test take shape in the case law, and what may be the test for one exclusive right in a given context doesn’t necessarily translate to another right in a different context.

In Aereo, I think the majority applied the volitional conduct test when it determined that Aereo publicly performs—a court needn’t use the magic words “volitional conduct” to engage in such analysis. Rather than sussing out a particular version of the test from the case law, the Court deduced its own: Since it knew that cable systems directly perform under the Transmit Clause, and since it knew that Aereo was functionally equivalent to a cable system, it reasoned that Aereo directly performs. The Court didn’t reject a causation-based approach to the Aereo puzzle. On the contrary, the entire purpose of the Court’s syllogism was to determine whether Aereo directly causes the performances to occur.

However, as the comments submitted to the Copyright Office show, my view of volitional conduct is not shared by everyone. Most commenters avoided the volitional conduct question entirely, though many did not. Below, I’ll look at the comments that took a position on the volitional conduct test, adding my own commentary as I go.

A group of musical works organizations, including BMI, ASCAP, NMPA, SESAC, and SGA, argues that, while the volitional conduct test has developed as to the reproduction right, there’s been no such development for the public performance right:

Despite this movement towards a volitional requirement for a finding of reproduction right direct infringement liability, courts have not applied the requirement across all rights. Specifically, courts have recognized the differences between various Section 106 exclusive rights. As noted by the Second Circuit in the Cablevision decision “the definitions that delineate the contours of the reproduction and public performance rights vary in significant ways.” ***

While the Court in Aereo acknowledged that “a user’s involvement in the operation of the provider’s equipment and selection of the content transmitted may well bear on whether the provider performs within the meaning of the Act,” the Court rejected the dissent’s view that an automatic transmission made at the request of a user should be analogized to the copy shop scenario which primed the path for the volitional analysis in the reproduction cases.

Clearly, a volitional conduct test is incompatible with a public performing right that is broadly applicable to on-demand, interactive entertainment technologies. Inventive technicians and software programmers can always engineer transmission systems to have the user initiate the transmission. Indeed, the classic public performance paradigm – the jukebox – is user initiated.

This is a narrower view of volitional conduct than my own. While I certainly agree that the version of the test applicable to the reproduction right has limited utility when the public performance right is at stake, I disagree that volitional conduct only applies to the reproduction right. Under my broad view of the test, it applies to all of the rights under Section 106. However, I think the form of the test changes with the context.

The comments submitted by the Cablevision Systems Corporation (yes, that Cablevision) reflect an understanding similar to my own:

The test that courts have applied . . . is the volitional conduct test: To be a direct infringer, the defendant or its employees must actually engage in the volitional conduct that constitutes the infringing act. It is not enough merely to supply the means that others use to infringe. ***

Like the “to the public” requirement, the volitional-conduct standard provides a sensible basis for distinguishing between on-demand content distributors and legitimate cloud-technology providers. On the one hand, a video-on-demand operator who selects a particular library of content, loads it into his video-on-demand system, and then offers to transmit that content to any subscriber willing to pay is fairly regarded as engaging in sufficient volitional conduct to render him a direct infringer. That is because the volitional steps of selecting the content and loading it into the system are fairly viewed as the initial steps in the process of “show[ing]” the work to the public. ***

By contrast, a cloud-technology provider that merely provides remote storage and transmission facilities does not “do” the transmitting when a consumer uses the service to download his own files from a remote location or stream his own files back to himself. Just as an Internet Service Provider does not “do” the transmitting when a customer uses its facilities to send an email, a remote-storage service like Dropbox does not “do” the transmitting when the customer downloads his own files.

Thus, like me, Cablevision takes a broad view of volitional conduct, and it thinks the test is used to determine whether the defendant has sufficiently caused the copying such that it can be held directly liable—regardless of which exclusive right is at issue. However, I disagree with Cablevision’s read of Aereo: I think that under the Court’s reasoning, a service like Dropbox would in fact be performing, but those performances wouldn’t be public given the prior relationship of the users to the content being transmitted. I actually prefer Cablevision’s approach, which says the identity of the sender changes, but I don’t think it’s viable under Aereo.

The Computer & Communications Industry Association (CCIA) takes a similarly broad approach to volitional conduct, arguing that the focus under the test is on whether the defendant proximately causes the copying:

The volitional act doctrine is a long-held principle that one is not liable for direct infringement without proof that one has actually done the infringing act. When a computer system or service is used to reproduce or perform a work in a way that may infringe, direct liability is reserved for parties whose direct and volitional act is sufficiently proximate to the infringement. *** The volitional act doctrine remains valid law; multiple circuits have analyzed the issue and have so held, and Aereo’s “narrow holding” has not changed this.

Although the majority’s logic leading to the conclusion that Aereo “performs ” appears to have been ad hoc and results-driven, it was nevertheless asking the right question. That is, the Court’s inquiry attempts to determine whether Aereo was the volitional actor: was it the entity doing the performing, or was it just providing the equipment by which the subscriber did the performing. This aspect of the opinion reaffirms that volitional action remains a requirement for finding direct infringement; had the Court concluded Aereo was only providing the equipment to the subscriber, it would have been at most a secondary infringer.

Complaints about the opinion being “ad hoc and results-driven” aside, I agree with the CCIA that the Court did in fact apply the volitional conduct test in Aereo and that it remains good law—regardless of which right is at issue. The entire point of the Court’s analysis as to whether Aereo performs was to determine whether Aereo’s volitional conduct was sufficient to hold it directly liable.

The Copyright Alliance, by contrast, takes a narrower view. It argues that the various tests employed under the “volitional conduct” moniker are inconsistent, and it thinks that a better approach would be to focus on substance, not form:

While the dissent would have applied a volitional conduct test similar to that applied by some lower courts, the majority opinion rejected it in favor of a more practical test. Those lower courts that have addressed “volitional conduct” have approached it inconsistently, with the risk that its adoption and application in other contexts might lead to absurd results. For example, a court might find that any degree of involvement in designing and implementing a multi-use service is volitional conduct, which would lead to the imposition of a duty to design products so they can never be used to infringe. On the other hand, a court might translate “volitional conduct” as a “robot exception ” or a “who pushed the button” test, ignoring any culpable behavior on the part of a service provider so long as it is the user who triggers the making of a copy. Neither of these outcomes is desirable. It would be more helpful for courts to focus less on legal formalities and labels and more on who is doing what to whom. This is essentially the approach taken by the majority in Aereo, and it led to the correct outcome.

I think the Aereo dissent’s focus on one branch of the volitional conduct test affirms the Alliance’s position. By fixating on the label, the dissent lost sight of the substantive differences between the exclusive rights and the various contexts under which questions of direct liability arise. Properly understood, however, I think volitional conduct analysis is context- and right-specific, and I think the Aereo majority implicitly acknowledged this when it analyzed substance instead of form.

The DISH Network Corporation thinks that the Court in Aereo merely rejected the volitional conduct test for cable system lookalikes, though it thinks the test otherwise remains good law:

In the Aereo case, decided this past term, the Supreme Court had occasion to consider the volitional conduct requirement. Aereo, the proprietor of an Internet television service, attempted to interpose that requirement between itself and the television networks’ claim of direct infringement of 17 U.S.C. § 106(4)’s public performance right. The majority in Aereo rebuffed Aereo’s argument, over a dissent that would have applied it to absolve Aereo of liability. Does the Aereo majority’s opinion undermine the volitional conduct requirement generally? Hardly. Properly understood, Aereo is simply a rejection of the volitional conduct requirement for an exceedingly narrow class of conduct, namely “the activities of cable systems.”

As mentioned already, I think the Court did not reject volitional conduct; it instead gave us one version of the test to use when a defendant’s service is functionally equivalent to a cable system.

Professor Jane C. Ginsburg (Justice Ginsburg’s daughter) suggests that the Aereo majority rejected a narrow view of volitional conduct, one which would only consider Aereo’s actions vis-à-vis any particular content:

The Aereo majority’s silence on the matter of “volition” in the face of the dissenters’ emphatic interpolation of a “volition” predicate might suggest that the majority considers “volition” irrelevant to the assessment of whether the defendant has publicly performed a work. The majority’s analysis of whether Aereo “perform[s] at all” distinguishes between the mere provision of equipment and “engag[ing] in activities like Aereo’s.” *** According to Aereo, a service “performs” copyrighted works, rather than simply supplying equipment, when it “uses its own equipment, housed in a centralized warehouse, outside of its users’ homes,” to transmit performances of works to viewers, even when that equipment “may . . . emulate equipment a viewer could use at home.” The majority therefore appears to stress the service’s active engagement in the transmission, rather than any specific “volition” with respect to the particular content transmitted, or with respect to the decision to commence any particular transmission. The end user may be choosing what copyrighted work to view or hear, and when and where to receive it, but the entity that offers the user those choices is “performing” the works, even when it merely responds automatically to the end-user’s choice.

Instead, Ginsburg thinks the Court took a broader view, determining that Aereo performs by looking at its conduct in creating and offering its service to the public. I agree with Ginsburg that the Court took this broader view, but under my formulation of the test, the Court’s analysis was of Aereo’s volitional conduct.

The Internet Association stresses that the Aereo Court left the volitional conduct case law intact, instead finding that the test need not be applied with cable system lookalikes:

The Aereo ruling does not alter Cablevision’s “user direction” standard for determining whether a system provider or the user is the one who “makes” the copy when assessing claims for direct copyright infringement. In Aereo, the Court avoided the issue entirely, deeming a volitional analysis “not critical” when a platform resembles a cable system. This indicates that the Court does not intend to disturb the line of precedent that has explored how to determine volition when technologies facilitate copying or disseminating protected works.

I think this misreads Aereo. The Court did not say that analysis of Aereo’s volitional conduct was “not critical” to determining whether it performs. Instead, it said that in other scenarios, “a user’s involvement in the operation of the provider’s equipment and selection of the content transmitted may well bear on whether the provider performs within the meaning of the Act.” But the Court did not need to independently weigh those factors with Aereo because Aereo’s functional equivalence to a cable system meant that it directly performs.

The Internet Commerce Coalition (ICC) reads the Aereo opinion much the same as I do:

As noted above, questions of volitional conduct and direct liability were limited to the facts of this case and to senders and receivers of cable retransmissions. That Aereo’s business model was directly analogous to that of a cable operator was absolutely central to the Court’s decision. The idea that the opinion would excuse establishing a volitional act is untenable. Indeed, the Court expressly stated that “In other cases involving different kinds of services or technology providers, a user’s involvement in the operation of the provider’s equipment and selection of the content transmitted may well bear on whether the provider performs within the meaning of the Act.” ***

Thus, it is clear that the Court’s decision must not be read as altering the requirements to establish copyright infringement, such as volitional conduct, nor as a decision broadly applicable across the increasingly diverse spectrum of digital content delivery technologies. Furthermore, the facts of Aereo plainly in no way support this sort of strained reading. It can in no way be said that Aereo’s conduct was non-volitional. Aereo went to great lengths to establish a complex network of hardware capable of providing subscribers with the equivalent of cable television. As evidenced by Aereo’s conduct and the promotion of its services, it deliberately sought to assume the role of a cable provider without obtaining the permissions required under the Copyright Act.

I agree with the ICC in that I think the Court found that Aereo performs precisely because its volitional conduct was comparable to a cable system. The syllogism employed by the Court was its way of determining whether Aereo’s conduct was sufficiently close such that it caused the performances to occur. But, as the ICC points out, that analysis wouldn’t necessarily apply to other services that aren’t functionally equivalent to a cable system.

The joint comments by the Motion Picture Association of America (MPAA) and the Recording Industry Association of America (RIAA) take a very narrow tack, and they argue that the volitional conduct test doesn’t even exist:

To the extent that this question suggests that a “volitional conduct” requirement for direct liability exists in certain circumstances under U.S. copyright law, we respectfully disagree with such a premise. Under U.S. copyright law as properly interpreted, proof of “volitional conduct” is not required to establish a defendant’s liability for direct infringement in the context of interactive transmissions of content over the Internet.

Their opposition to the existence of the test appears to stem from how that test has developed doctrinally:

Leading copyright scholars also have questioned or disputed the existence of a volitional conduct requirement. David Nimmer’s treatise, for instance, stated its “respectful[] disagree[ment]” with the Second Circuit’s “treatment of volitional conduct,” 4 Nimmer, supra , § 13.08[C], and Professor Paul Goldstein emphasized that “American copyright law has never required that liability for direct infringement be imposed only on the individual who presses the ‘record’ button,” 2 Paul Goldstein, Goldstein on Copyright (“Goldstein”) § 7.0.2, at 7:8.1 (3d ed. 2014 Supp.).

I agree with the MPAA and the RIAA, as well as with treatise-authors Nimmer and Goldstein, that the development of the volitional conduct test has been disconcerting—especially with the “who pushes the button” variation of the test found in the reproduction right case law. However, if volitional conduct is understood simply to be causation analysis, then I think the test is very much the law when determining direct liability.

Comments submitted jointly by Public Knowledge (PK) and the Electronic Frontier Foundation (EFF) take the position that Aereo should be read narrowly:

Not only was Aereo’s overall holding based upon the unique placement of the service vis-à-vis a perceived exchange between the Court and Congress; the findings on volition are also explicitly tied to inferences about Congressional intent specific to cable systems. In particular, the Court takes its prior findings from Fortnightly and Teleprompter and then assumes, since Congress intended to overturn the result of those cases, that Congress intended (and properly acted to ensure) that all sufficiently similar systems reach the same result — regardless of whether the text of the Copyright Act actually does so.

Looking past their disdain for the Court’s holding, I think PK and the EFF are correct that Aereo left open some questions of how the volitional conduct test would apply in other cases. However, I think the Court’s reading of the Transmit Clause would be controlling in several other contexts, and its analysis of the distinction between public and private carries over to the public distribution and public display rights. I don’t think Aereo is as narrow as PK and the EFF would like it to be.

Last, but certainly not least, we have the comments from attorney and adjunct professor Rick Sanders, who operates the IP Breakdown blog along with his law partner, Tara Aaron. Sanders acknowledges the doctrinal discord with the volitional conduct test:

To answer this question, we must first address what courts mean by “volitional conduct,” which is not at all clear. The only thing that is clear is that volitional conduct relates to direct copyright infringement. Beyond that, it is not even clear whether “volitional conduct” is a kind of intent element, as the leading copyright treatise believes, see 4 Melville and David Nimmer, NIMMER ON COPYRIGHT § 13.08[C] or a kind of causation element, as the courts that developed the doctrine believe . . . . It is probably most accurate to say that volitional conduct partakes of causation and intent, but intent is always with respect to an intent to carry out a certain conduct, not with respect to whether the actor understands the infringing consequences the conduct—much like the “intent” element of the common-law tort of trespass to land.

According to Sanders, the Aereo majority shed no light on the volitional conduct test:

For its part, the majority does not mention volitional conduct, or even causation or intent. Indeed, the majority makes no attempt to place its holding within any theoretical framework of copyright law.

I disagree with Sanders that the Court in Aereo failed to discuss causation. In my opinion, the entire section on whether Aereo performs, which looked at how Aereo is functionally equivalent to a cable system, was causation analysis. It’s precisely because Aereo functions equivalently to a cable system that the Court was able to deduce that Aereo performs. That was the entire point of the Court’s syllogism.

All-in-all, the various views on volitional conduct presented in the comments submitted to the Copyright Office demonstrate that there is little consensus on the precise contours of the test. The fact that the Aereo majority chose not to use the phrase “volitional conduct” has only added to the controversy. Only time will tell which view of volitional conduct, whether broad or narrow or somewhere in between, will develop as the dominate statement of the test. And, by the way, if you’re looking for the strangest comments submitted to the Office, I’d say that award goes to Carrie Devorah.

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© 2014 Devlin Hartline. Licensed under the Law Theories Public License 1.0.