Judge Urges – No, Implores — Congress to Amend the Copyright Act: When Might Sharing Digital Music Be Fair Use?

By Lisa Tittemore.

December 2009 IP Update

On December 7, Judge Nancy Gertner of the Federal District Court in the District of Massachusetts issued a decision in the case of Sony BMG Music Entertainment et al. v. Tenenbaum and granted summary judgment in favor of the plaintiff. In doing so, she also made an impassioned plea to Congress to amend the Copyright Act to “reflect the realities of file sharing.”

Judge Gertner’s decision sits in the context of thousands of lawsuits brought by music companies against their customers accused of infringing copyright by sharing digital copies of music over the internet. And we all know people who have illegally downloaded music, even if we have not done it ourselves.

Joel Tenenbaum, the defendant in the case, was a college sophomore when he was accused of using file-sharing software to download and distribute songs to which Sony owned the copyright. His case was taken up by Harvard Law professor Charles Nesson, who sought to portray Tenebaum as a victim of the music industry’s aggressive tactics. Tenebaum did not deny he had downloaded and distributed the music, arguing instead that doing so was a “fair use.”

Judge Gertner went out of her way to convey that she had given Tenebaum and his counsel every opportunity to present his case, and then some. She noted that “the Court, deeply concerned by the rash of file-sharing lawsuits, the imbalance of resources between the parties, and the upheaval of norms of behavior brought on by the internet, did everything in its power to permit Tenebaum to make his best case for fair use.…The Court did what it could to focus the issue, nothwithstanding what can only be described as a truly chaotic defense.”

In fact, fair use was the entire basis of Tenebaum’s defense. Where a use of a copyrighted work is “fair,” no infringement can be found. In determining fair use, courts are directed to weigh a variety of factors, including (but not limited to): (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

In the Tenenbaum decision, Judge Gertner outlined a number of arguments that she would have considered as support for a fair use defense. Specifically, she “was prepared to consider a more expansive fair use argument than other courts have credited – perhaps one supported by facts specific to this individual and this unique period of technological change.

“For example, file sharing for the purposes of sampling music prior to purchase or space-shifting to store purchased music more efficiently might offer a compelling case for fair use. Likewise, a defendant who used the new file-sharing networks in the technical interregnum before digital media could be purchased legally, but who later shifted to paid outlets, might also be able to rely on the defense.”

The decision thus provides a clear roadmap for future defendants who might appear before Judge Gertner, and certainly indicates that she is far more sympathetic to defendants who might be in this position than other judges would be.

Unfortunately for Tenenbaum, Judge Gertner found that, instead of “tailoring his fair use defense to suggest a modest exception to copyright protections,” he “mounted a broadside attack that would excuse all file sharing for private enjoyment. It is a version of fair use so broad that it would swallow the copyright protections that Congress created, defying both statute and precedent.” That far Judge Gertner was not prepared to go.

Further, Judge Gertner appeared to be constrained by the defendant’s failure to present facts which would permit her to find fair use and/or rule on his favor on summary judgment, and she noted that he “offered few disputed facts, and little, if any, legal authority for his position. His opposition briefs were not accompanied by any affidavits, expert reports, deposition testimony, or other evidence of the kind required” under the federal rules.

Despite Tenebaum’s failure to present his case adequately, Judge Gertner undertook an analysis of the facts she had before her and applied them to the fair use standard before reaching her decision. Among the points in her analysis that are worth noting:

  • Sony’s arguments that Tenebaum’s use was commercial were rejected by the judge, and she noted that “there is a meaningful difference between personal file sharing and a business strategy that exploits copyrighted works.”
  • Judge Gertner explained that in the recent Napster and Grokster cases, the Supreme Court “drew a clear line between today’s file sharing” and time-shifting which had been approved in the well-known “Sony Betamax” case decided by the Supreme Court in 1984.
  • The judge strongly discounted defendant’s argument that his conduct did not harm the plaintiff. “Even if every download does not represent a lost sale, as the Court recognizes, it is plain that consumers who regularly pay for music would shift to free downloads if given the chance. Indeed that is the very premise of Tenebaum’s sweeping argument – that this music should be free to individuals simply because it has ‘gone digital.’ *** Tenenbaum’s version of fair use … would simply eliminate the market for digital downloads among individual consumers by transforming all file sharing for private enjoyment into fair use.”
  • While she did not accept defendant’s argument that the plaintiff had assumed the risk of file-sharing by failing to adequately prevent the practice (e.g., by employing encryption technology), Judge Gertner noted that “the ease of reproduction could be relevant to a jury’s determination of statutory damages under Section 504(c), as it may bear on individual culpability.” Further along these lines, the judge noted that “a jury is entitled to look at any mitigating factors it deems relevant – including the ease and temptation that teenagers and students may have faced in the form of file-sharing software.”

Thus, while Judge Gertner was clearly open to and even sympathetic to the idea that file-sharing might be fair use in other instances, Tenenbaum failed to present the facts and arguments that might have permitted her to come to that conclusion in this case.

Judge Gertner concluded with the following observation: “While the court is very sympathetic to the parenting challenges posed by computers and the internet, the defendant has offered no proof that this task is onerous or impossible.  It is often up to parents, and colleges in loco parentis, to teach and enforce the bounds of the law. Although the social costs of policing infringement might factor into fair use – because they diminish the overall benefits of copyright protection – these particular concerns are more appropriately part of an appeal to Congress to amend the statute.”

Judge Gertner closed with the following appeal:

As this Court has previously noted, it is very, very concerned that there is a deep potential for injustice in the Copyright Act as it is currently written. It urges – no implores – Congress to amend the statute to reflect the realities of file sharing. There is something wrong with a law that routinely threatens teenagers and students with astronomical penalties for an activity whose implications they may not have fully understood. The injury to the copyright holder may be real, and even substantial, but, under the statute, the record companies do not even have to prove actual damage. “Repeatedly, as new developments have occurred in this country, it has been Congress that has fashioned the new rules that new technology made necessary.”  … It is a responsibility that Congress should not take lightly in the face of this litigation and the thousands of suits like it.

A gauntlet has been thrown down.