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Sunday, July 31, 2011

Copyright as Overcriminalization

As an IP lawyer, I get frequent questions from friends and family members about whether such-and-such activity would infringe copyright.  My standard answer is, "if you need to ask me, don't bother, it definitely infringes."  Basically, the scope of modern copyright law so far exceeds the expectations of normal people that what normal people think is definitely legal is probably infringing, and what normal people think is borderline is definitely infringing (at least if we leave out the possiblity of a fair use defense, which is famously unpredictable and thus unreliable).

Take a simple example.  Suppose you go buy an Omega watch from Canada, from a legitimate store, and come back.  You then suffer buyers remorse and, rather than go all the way back to Canada to return the watch, simply resell it on eBay.  Normal people don't even think this has anything remotely to do with copyright, since they associate copyright with stuff like books and not watches, and also they think that buying things from legitimate stores should insulate them.  But, actually, this is an infringement.  The tiny little logo on the watch is copyrighted, and the resale is an infringing distribution under 17 USC 106(3).

Of course, normal people hardly have to seriously worry about getting sued by Omega for copyright infringement.  But that is simply because it is not economically and politically feasible for Omega to sue such individuals -- there are too many individuals with too small a recovery to make suit worthwhile, and if one of the defendants happened to be a sympathetic grandmother, there would be howls of protest.  In this sense, the problem that everyone is infringing dozes of copyrights every day is rather similar to the problem of over-criminalization.  All of us break numerous criminal laws, starting with tax evasion in failing to pay use taxes for internet purchases.  This is not a practical problem in so far as few people have to seriously fear getting prosecuted for these violations.  But a system that relies on the grace of prosecutors to keep it running is not so much the rule of "law" and more the rule of "discretion."

Posted by Tun-Jen Chiang on July 31, 2011 at 02:06 PM | Permalink


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I'm really not sure what you mean by "acquiesc[ing]" to a construction paradigm. I'm presenting what I think judges would do given the existing body of precedent. You clearly disagree with that prediction, but that is simply a disagreement about judges will do. And I would obviously be quite happy if you proved right on this matter. But we do not "acquiesce" to judicial decisions--they are imposed without us having much choice in the matter.

Posted by: TJ | Aug 2, 2011 10:17:48 AM

TJ --

I do question your legal analysis: I think that if importing an object is expressly permitted by section 602(a)(2), then selling, loaning, or gifting that object later is not an infringement of section 106(3), notwithstanding some loose language in the Omega opinion. More globally, though, I think it's a mistake to acquiesce in a construction paradigm in which we read all of the section 106 rights as broadly as possible to encompass uses that Congress did not imagine and then read all of the statutory and judge-made exceptions as narrowly as possible to cover only those situations Congress paid express attention to. [Mind you, it's a tempting mistake, and one that I've made in the past, too, but I've recanted.] Thus, while I think you could characterize your reading of the statute as a plausible (if silly) one, I don't agree that it's the "most faithful interpretation"

Posted by: Jessica Litman | Aug 2, 2011 8:49:56 AM


I don't see anything wrong with my statutory analysis, so aside from a fair use defense (which I expressly addressed), I think that it is a technical infringement. Maybe a court could spin some implausible theory, but even I'm not such a legal realist as to think that it would, given that my hypo is basically identical to Omega v Costco but for the identity of the defendant. And I don't think you really disagree that much with the legal analysis when you would advise people not to worry about what might be considered a "technical infringement."

Rather, our disagreement seems to be what we should say when the law makes a lot of things that are "reasonable" in a broader normative sense nonetheless technically illegal. You seem to believe that the best thing to do is rely on judges exercising their good sense to render implausible interpretations of the statute to "get out of" that problem. I view that as a second-best solution at most. Rather, my belief is that we should call this out for the ridiculousness as it is, so that legislators can be pressured to change it, as a first best solution.

Now there is a flip side to the calculus. Openly acknowledging that the most faithful interpretation of the statute leads to ridiculous result might lend legitimacy of that result, and therefore make it harder for judges to twist the statute into something more reasonable. The trade-off between first-best and second-best solutions is a well known dilemma.

Posted by: TJ | Aug 1, 2011 4:24:26 PM

The Omega case is a good one. It sounds like it would catch a lot of goods. For example, if I give away a book I acquired in England, that would be copyright infringement, right?

There was an old law saying, "No servitudes on chattels". I guess that must have been repealed by the copyright statute.

Posted by: Eric Rasmusen | Aug 1, 2011 3:24:14 PM

I'm late to this party, but I want to express a slightly different concern. If the importer of the Canadian Omega watch were in fact to be sued by Omega, I think it's pretty unlikely that Omega would prevail. I don't know on what theory the court would dismiss the case (although I can spin one out based on 602(3)(B)), but I believe the court would find a way to do so. If that's right, then I think it isn't correct to say that reselling the watch on eBay is infringement. When we make statements like that, moreover, we give more legitimacy to claims that any use of a copy of a copyrighted work is infringement unless it is licensed or comes within a particular statutory exception. I think that (1) that misdescribes the law as it is and (2) as the law grows to look more and more like that shorthand expression of it, the law gets more and more dysfunctional. I would tell your friends and family that they should behave in a way that seems fair, reasonable, and respectful of the rights of the copyright owners, but that they shouldn't worry about doing reasonable things that under some construction of the statute might constitute technical infringements. I tell my friends and family that they should try to interact with copyrighted works as if the law were reasonable and fair to both authors and readers (and, by extension here, watchmakers and watch-wearers). That may be the best way for ordinary people to cause the law to move in that direction.

Posted by: Jessica Litman | Aug 1, 2011 9:52:43 AM


No, I'm not saying that ordinary people should change their behavior or lose sleep over the matter. But we debate a lot of things in legal circles that ordinary people cannot react to and thus shouldn't care about, if they are perfectly rational and self-interested. Ordinary people should not care about whether we default on the debt, or basically about anything that Congress does, because there is no way for an ordinary person to influence that outcome (the chance of one vote affecting an election is about as close to zero as one can get). So if the question is whether a legal problem is something that ordinary people should care about, in the sense of having a direct affect on their life that they can control, then you can basically burn every book in the law library and there would be no great loss.

[And of course when friends and family come to me to ask about copyright, they are not looking for legal advice to govern their behavior (and I wouldn't be able to give such advice anyway since I'm not admitted in Virginia). They are asking as a matter of curiosity. In terms of actual behavior, people operate on the assumption they won't be sued, as you state, since even violations that everyone knows about, like bittorrent, are widespread.]

Posted by: TJ | Aug 1, 2011 1:51:11 AM

"Yes, most people are protected, except those that offend Omega or a prosecutor or a cop or a TSA agent or even an airline employee in some way." Well, that's what I'm pressing you on. When should a person reasonably alter their behavior, or even just walk around nervous? It can't be just every time there's some theoretical prospect of some sort of enforcement. After all, no matter what the law is it won't protect you from at least some inconvenience from the prosecutor or cop etc. who misunderstands the law. And that goes quadruple for private plaintiffs, whose only obligation is to not maintain a Rule 11 sanctionable filing for more than 21 days. So, taking that to its logical conclusion, you should be walking around nervous, all the time, everywhere, no matter what you're doing. Right?

Overcriminalization in the abstract bugs me as well and I think you are correct that there is a tradeoff to flexible language in both spheres. But beyond just a vague buggy feeling, when it comes to advising people about whether they should be worried or not, I think there needs to be an indication of a nonnegligible amount of risk for ordinary individuals (or individuals in whatever subcategory we want to focus on). I don't think that exists in the Canadian watch example, or in a lot of the other examples that tend to get bandied around.

Posted by: Bruce Boyden | Aug 1, 2011 1:44:06 AM

As an IP lawyer I get frequent questions from friends and family about copyright and trademark issues, but I don't tell them it definitely infringes. The fact of the matter is that most questions fall into clear fair use territory or well-known fair-use gray areas. Thus, your fall back position that a company isn't going to go after a single consumer is generally the rule. (You yourself state fair use is unreliable, and it is to an extent, so why would a company waste their time and money pursuing an unreliable case against shallow pockets? Typically they don't.)

I do agree with your general idea that IP laws have become too broad. The big problem with the OMEGA case is that the copyrighted work being sued upon wasn't operating as a copyrighted work, it was operating as a trademark. The courts should have rejected OMEGA's attempt to use copyright law to perform trademark functions. There are doctrines in English law that specifically prevent this, and some US courts have done this for a while now. After all, there are trademark remedies for gray market goods—those remedies should be used in cases like OMEGA rather than trying to fashion copyright law to do the job.

Finally, as an IP lawyer the problem I find is not so much a lack of understanding by laymen, but a lack of understanding about copyright law by other lawyers. Perhaps it's the tough times in the legal industry, but I have had to deal with more and more lawyers pressing highly questionable copyright claims. These folks are either (1) ignorant about copyright law (which is sad if they bother to bring a lawsuit or send a demand letter) or (2) are willfully ignoring the lack of credibility in their case and pressing on anyhow in hopes of confusing a court (which just makes all of us lawyers look bad).

Sadly, the OMEGA decision shows that courts can be confused. Either OMEGA's lawyers were very good in framing the issues as copyright rather than trademark, or CostCo's lawyers were terrible at showing the not insubstantial body of law indicating that copyright law shouldn't be used to perform a trademark function.

Posted by: John W. Nelson | Jul 31, 2011 11:02:12 PM

Sean, I say it is presumptively right in the sense that we normally think of court of appeals opinions as presumptively right. The Ninth Circuit has such an atrocious record that one might be tempted to reverse that presumption. I'm not saying that the divided court sets some kind of precedent, but that getting for votes means that this is not your standard Ninth Circuit opinion.

Bruce, your point that people take comfort in the economic and political protections is precisely why I draw the over-criminalization example. Yes, most people are protected, except those that offend Omega or a prosecutor or a cop or a TSA agent or even an airline employee in some way.

Posted by: TJ | Jul 31, 2011 10:20:42 PM


I'm not sure I understand your statement that the 9th Circuit's decision is "presumptively right." An affirm by an equally divided court has no precedential value. I think you mean that it has at least four votes going for it, so it's not as outlandish as some 9th Circuit opinions, but it doesn't mean it's going to stand once all nine justices can hear the case.

Posted by: Sean M. | Jul 31, 2011 10:02:28 PM

TJ, it's pretty common in my experience, and I take it James's as well. In fact, I'd guess that the number of non-copyright-lawyers with overly expansive views of copyright is nearly even with the overly restrictive views (naturally, there is a vast middle that is deeply uncertain). I think it's important to indicate in general in such conversations, as with any discussion of the law with non-experts, that there some bright lines, there are many areas where the answer is reasonably clear, and then there's a large body of "that may technically be infringing/may possibly be fair use, but it would never get litigated."

Given that, as you suggest, most people fill out their state income tax returns on that basis (self-reporting no use tax, that is, nearly zero Internet purchases), why is that so bad? There's really no danger of the individual being pursued in your hypo--which is already fairly unusual to start with, and applies in only one circuit (albeit a large and influential one)--for copyright infringement. For one thing, I doubt there is much of any arbitrage opportunity between Canada and the U.S. But in any event, as in the use tax case, why shouldn't people take comfort, as they do in other areas of the law, in the economic and fairly predictably strong political protections for their behavior, as opposed to legal ones?

Posted by: Bruce Boyden | Jul 31, 2011 6:01:26 PM

Well, I certainly don't think I'm making a particularly novel point to IP scholars, so I will freely hat-tip Lessig and anyone else who has made the same point before.

As for ignorance in the other direction, I'm sure that happens, but it is not very common in my experience.

Posted by: TJ | Jul 31, 2011 3:29:52 PM

Many lay people actually have massively overreaching views about what copyright does. They tend to think that some uses which are obviously fair, or which are covered by one of the section 110 public performance exceptions, or which do not involve either the making of a "copy" or any "public" activity are infringing, even though they aren't. You're right that the ignorance runs in the other direction, as well, but it doesn't run exclusively in that direction, either.

Also, where's the hat-tip to Larry Lessig's Free Culture?

Posted by: James Grimmelmann | Jul 31, 2011 3:22:05 PM

I thought whether the sale would constitute infringement depended on whether the relevant judge liked or disliked that result.

Posted by: ooo | Jul 31, 2011 3:13:19 PM

Here is the cite if you are interested.

OMEGA SA v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir. 2008)

Posted by: TJ | Jul 31, 2011 2:50:40 PM

Thanks -- I must've missed that case. (What a bizarre ruling! And from the 9th circuit? You'd think if anyone would recognize the first amendment interests in being able to, e.g., transfer foreign works...)

Posted by: Paul Gowder | Jul 31, 2011 2:44:41 PM

The Ninth Circuit has held that unless the article is made or first sold in the United States, it does not come under the first sale doctrine (which is why I chose Canada). And unlike standard Ninth Circuit decisions that are presumptively going to be reversed at the first opportunity, this one got affirmed 4-4 when it went up, so it is presumptively right.

Posted by: TJ | Jul 31, 2011 2:36:12 PM

I agree with the overall point, but ... the example ... what happened to the first sale doctrine? (Or is there some Canadian/WIPO thing precluding that defense?)

Posted by: Paul Gowder | Jul 31, 2011 2:25:50 PM

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