Some thoughts on Fair use, Transformative Use and Non-Expressive Use

Fair use, Transformative Use and Non-Expressive Use


Campbell v. Acuff-Rose and the Future of Digital Technologies, notes on a short presentation at the Fair Use In The Digital Age: The Ongoing Influence of Campbell v. Acuff-Rose’s “Transformative Use Test” Conference, April 17 & 18, 2015, University of Washington School of Law.

Copyright and disintermediation technologies

Copyright policy was hit by an analog wave of disintermediation technology in the post-war era and a digital wave of disintermediation technologies beginning in the 1990s. These successive waves of technology have forced us to reevaluate the foundational assumption of copyright law; that assumption being that any reproduction of the work should be seen as an exchange of value passing from the author (or copyright owner) to the consumer.

Technologies such as the photocopier and the videocassette recorder and then later the personal computer significantly destabilized copyright policy because these inventions, for the first time, placed commercially significant copying technology directly in the hands of large numbers of consumers. This challenge has only been accelerated by digitalization and the Internet. Digitalization allows for perfect reproduction such that the millionth copy of an MP3 file sounds just as good as the first copy.

The implications of the copying that these devices enabled were not clear-cut. In some cases, the new copying technology simply enabled greater flexibility in consumption, in others they generated new copies to be released into the stream of commerce as competitors with the author’s original authorized versions. The Internet has connected billions of people together leading to an outpouring of creativity and user-generativity, but from the perspective of the entertainment industry is also brought people together to undertake a massive scale piracy.

The significant of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)

The Supreme Court in Sony v. Universal[1] had already shown that it was willing to apply fair use in a flexible manner in situations where the use was personal and immaterial to the copyright owner. The significance of the Court’s decision in Campbell[2] was that, by reorienting the fair use doctrine around the concept of transformative use, the Court prepared the way for a flexible consideration of technical acts of reproduction that do not have the usual copyright significance.

Internet search engines, plagiarism detection software, text mining software and other copy-reliant technologies do not read, understand, or enjoy copyrighted works, nor do they deliver these works directly to the public.  They do, however, necessarily copy them in order to process them as grist for the mill, raw materials that feed various algorithms and indices. Campbell arrived just in time to provide a legal framework far more hospitable to copy-reliant technology than had previously existed. Even in its broadest sense, transformative use is not the be all and end all of fair use. At the risk of over-simplification, Sony v. Universal safeguarded the future of the mp3 player, whereas Campbell secured the future of the Internet and reading machines.

Copy-reliant technology and non-expressive use

Some of the most important recent technological fair use cases can be summarized as follows: Copying that occurs as an intermediate technical step in the production of a non-infringing end product is a ‘non-expressive’ use and thus ordinarily constitutes fair use.[3] The main examples of non-expressive use I have in mind are the construction of search engine indices,[4] the operation of plagiarism detection software[5] and, most recently, library digitization to make paper books text-searchable.[6]

To have a coherent concept of fair use, or any particular category of fair use, one needs a coherent concept of copyright. As expressed in the U.S. Constitution, copyright’s motivating purpose is “to promote the Progress of Science and useful Arts.”[7] Ever since the Statute of Anne in 1710, the purpose of Copyright law has been to encourage the creativity of authors and to promote the creation and dissemination of works of authorship. Copyright is not a guarantee of total control; in general, the copyright owner’s rights are limited and defined in reference to the communication of the expressive aspects of the work to the public. This is evident in the idea-expression distinction, the way courts determine whether two works are substantial similar and the focus of fair use cases on expressive substitution. Thus, subsequent authors may not compete with the copyright owner by offering her original expression to the public as a substitute for the copyright owner’s work, but they are free to compete with their own expression of the same facts, concepts and ideas. They are also free to expose, criticize and even vilify the original work. Genuine parodies, critiques and illustrative uses are fair use so long as the copying they partake in is reasonable in light of those purposes.

If public communication and expressive substitution are rightly understood as copyright’s basic organizing principles, then it follows that non-expressive uses — i.e., uses that involve copying, but don’t communicate the expressive aspects of the work to be read or otherwise enjoyed — must be fair use. In fact, they are arguably the purest essence of fair use. Groking the concept of non-expressive use simply involves taking the well understood distinction between expressive and nonexpressive works and making the same distinction in relation to potential acts of infringement.

The legal status of actual copying for nonexpressive uses was not a burning issue before digital technology. Outside the context of reading machines like search engines, plagiarism software and the like, courts have quite reasonably presumed that every copy of an expressive work is for an expressive purpose. But this assumption no longer holds. At a minimum, preserving the functional force of the idea-expression distinction in the digital context requires that copying for purely non-expressive purposes, such as the automated extraction of data, should not be infringing.

Some limits to the non-expressive use framework

Non-expressive use is a sufficient but not necessary condition of fair use. For example, parody is an expressive use, but it is fair use because it does not tend to threaten expressive substation. Even within the realm of recent technology cases, non-expressive use is not the right framework for addressing important man-machine interaction questions such as disability access, also a key issue in the HathiTrust litigation, but it does tie together a number of disparate threads.

The cases which hold that software reverse engineering is fair use are grounded firmly in the idea-expression distinction,[8] but they are not exactly non-expressive use cases for the reasons that follow.[9] The non-expressive use framework is also not the right tool in cases where software is copied in order to access its functionality: after-all, software is primarily functional and its primary (perhaps exclusive) value comes from the function it performs. Software piracy can’t be justified as a non-expressive use, because to do so would defeat the statutory scheme wherein Congress chose to graft computer software protection onto copyright. However, the reverse engineering cases still follow the logic of non-expressive use. In those cases copying to access certain API’s and other unprotectable elements enabled the copyists to either independently recreate that functionality (akin to conveying the same ideas with different expression) or to develop programs or machines that would complement the original software.

Non-expressive use versus transformative use?

The main issue left to resolve in terms of the copy-reliant technology and non-expressive use seems to be one of nomenclature. Is non-expressive use simply a subset of transformative use? Or is it a separate species of fair use with similar implications to that of transformative use.

Non-expressive use, as I have defined and elucidated in a series of law review articles and amicus briefs, is a clear coherent concept that ties a broad set of fair use cases directly to one of copyright’s core principles, the idea-expression distinction. Transformative use, as explained by Pierre Leval and adopted by the Supreme Court is rooted in the constitutional imperative for copyright protection – the creation of new works and the promotion of progress in culture, learning, science and knowledge. But for all that, if transformative use is invoked as an umbrella term, it is often hard to see what holds the category together.

The Campbell Court did not posit transformative use as a unified, exhaustive theory, but it did say that “[a]lthough such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright, …”[10] No doubt, when the Supreme Court spoke of transformative use, it had various communicative and expressive uses, such as parody, the right of reply, public comment and criticism in mind. But since Campbell, lower courts have applied the same purposive interpretation of copyright to a broader set of challenges. Campbell was decided in a different technological context and it is true that many of today’s technological fair use issues were entirely unimaginable before the birth of the World Wide Web and our modern era of big data, cloud computing, social media, mobile connectivity and the “Internet of Things”.

Non-expressive use is a useful concept because it provides a way for courts to recognize the legitimacy of copying that is inconsequential in terms of expressive substitution, but does not necessarily lead to the creation of the type of new expression that the Supreme Court had in mind in Campbell. The use of reading machines in digital humanities research is easy to justify, both in terms of the lack of expressive substitution and in the obvious production of meaning, new insights and potentially new and utterly transformative works of authorship. But what of less generative non-expressive uses? For example, in the future a robot might ‘read’ a copyrighted poster on a subway wall advertising a rock concert in Central Park. The robot might then ‘decide’ to change its travel plans in light of the predictable disruption. The acts of ‘reading’ and ‘deciding’ are both simply computational. Even if reading involves making a copy of the work inside the brain of a machine, it seems nonsensical to conclude that the robot was used to infringe copyright. In the age of the printing press, copying a work had clear and obvious implications. Copying was invariably for expressive ends and it was almost always the point of exchange of value between author and reader. The copyright implications of copying are much more contingent in the digital age.

There is much clarity to be gained by talking directly in terms of non-expressive use rather than relying on transformative as broad umbrella for a range of expressive and non-expressive fair uses. Such clear thinking would hopefully ease the anxieties of the entertainment industry that still fears that fair use is simply a stalking horse for dismantling copyright. Nonetheless, it would not be surprising if courts were more comfortable sticking with the language of transformativeness that Judge Pierre Leval gave us in “Toward a Fair Use Standard“,[11] and the Supreme Court adopted in Campbell.

This is a sketch of some ideas, no doubt revisions will follow after this exciting conference.

Related Publications:

Matthew Sag, Copyright and Copy-Reliant Technology 103 Northwestern University Law Review 1607–1682 (2009)

Matthew Sag, Orphan Works as Grist for the Data Mill, 27 Berkeley Technology Law Journal 1503–1550 (2012)

Matthew Jockers, Matthew Sag & Jason Schultz, Digital Archives: Don’t Let Copyright Block Data Mining, 490 Nature 29-30 (October 4, 2012)

Somewhat Related Publications:

Peter DiCola & Matthew Sag, An Information-Gathering Approach to Copyright Policy, 34 Cardozo Law Review 173–247 (2012)

Matthew Sag, Predicting Fair Use 73 Ohio State Law Journal 47–91 (2012)

Matthew Sag, The Pre-History of Fair Use 76 Brooklyn Law Review 1371–1412 (2011)


[1] Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984).

[2] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

[3] See generally, Matthew Sag, Copyright and Copy-Reliant Technology 103 Northwestern University Law Review 1607–1682 (2009)

[4] There is no case addressing the legality of the process of making a text-based search index (as opposed to caching or display of search results), but the proposition naturally flows from Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) and Perfect 10, Inc. v., Inc., 508 F.3d 1146 (9th Cir. 2007) and is a necessary implication of Authors Guild, Inc. v. Hathitrust, Court of Appeals, 2nd Circuit 2014 and Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d 282 (S.D.N.Y. 2013)

[5] A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009).

[6] Authors Guild, Inc. v. Hathitrust, Court of Appeals, 2nd Circuit 2014; Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d 282 (S.D.N.Y. 2013). See also Matthew Sag, Orphan Works as Grist for the Data Mill, 27 Berkeley Technology Law Journal 1503–1550 (2012); Matthew Jockers, Matthew Sag & Jason Schultz, Digital Archives: Don’t Let Copyright Block Data Mining, 490 Nature 29-30 (October 4, 2012).

[7] U.S. Const. art. I, § 8, cl. 8.

[8] Sega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992); Sony Computer Entm’t, Inc. v. Connectix Corp., 203 F.3d 596, 606 (9th Cir. 2000).

[9] These reasons are more fully elaborated in Matthew Sag, Copyright and Copy-Reliant Technology 103 Northwestern University Law Review 1607–1682 (2009).

[10] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)(citation omitted).

[11] 103 Harv. L. Rev. 1105 (1990)

Cited in Kimble v. Marvel supreme court brief re patent misuse

Someone told me that I was cited in the respondent’s brief to the Supreme Court in Kimble v. Marvel Enterprises, Inc.

Indeed, patent-license negotiations may often fail to approximate the conditions presumed by the classical economic model of efficient bargaining. See, e.g., Sag & Rohde, Patent Reform and Differential Impact, 8 Minn. J.L. Sci. & Tech. 1, 36-37 (2007) (patent holder may have asymmetrically better information about the scope and validity of the patent) ~ Kimble v. Marvel Enterprises, Inc., 2015 WL 881759 (U.S.), 45 (U.S.,2015)

In Brulotte v. Thys Co. the Supreme Court ruled that, when patents are sold in return for a royalty payment, the purchaser was not obligated to continue these payments beyond the expiration date of the patents because doing so would over-compensate the seller of the patent and improperly extend the patent monopoly beyond the intended time limit.

In other words, it is patent misuse to try to extract  royalties for use of the patent post-term. That rule is now being challenged. For a summary of the issue in the case, see

New empirical study of IP litigation in US District Courts

IP Litigation in United States District Courts: 1994 to 2014

I have just posted a new empirical study of IP litigation in US District Courts to SSRN. At the moment it has a very boring title: “IP Litigation in United States District Courts: 1994 to 2014”, but I am open to suggestions. [download it here]

What is this article about?

The article undertakes a broad-based empirical review of Intellectual Property (IP) litigation in United States federal district courts from 1994 to 2014.

Why would anyone want to read it?

Unlike the prior literature, this study analyzes federal copyright, patent and trademark litigation trends as a unified whole. It undertakes a systematic analysis of more than 190,000 individual case filings and examines the subject matter, geographical and temporal variation within federal IP litigation over the last two decades.

What is the payoff?

Well, for a start, it is full of cool graphs, figures and tables!

But if you interested in substance, I think that the article makes a number of significant contributions to our understanding of IP litigation.

  • It analyzes time trends in copyright, patent and trademark litigation filings at the national level, but it does much more than simply count the number of cases; it explores the meaning behind those numbers and shows how in some cases the observable headline data can be positively misleading.
  • Exploring the changes in the distribution of IP litigation over time and their regional distribution leads to a number of significant insights (see below).
  • Just as importantly, the article  frames the context for more fine-grained empirical studies in the future. The results demonstrate the dangers of basing empirical conclusions on narrow slices of data from selected regions or selected time periods.

Notable findings

  • The rise of Internet filesharing has transformed copyright litigation in the United States.

More specifically, to the extent that the rate of copyright litigation has increased over the last two decades, that increase appears to be entirely attributable to lawsuits against anonymous Internet file sharers. These lawsuits largely took place in two distinct phases: the first phase largely consisted of lawsuits seeking to discourage illegal downloading; the second phase largely consists lawsuits seeking to monetize online infringement.

  • In relation to patent litigation, the apparent patent litigation explosion between 2010 and 2012 is something of a mirage

However there has been a sustained patent litigation inflation over the last two decades the extent of which has not been fully recognized until now. The reason why this steady inflation was mistaken for a sudden explosion was that the true extent of patent litigation was disguised by permissive joinder.

  • The data and analysis presented in this study provides a new way of looking at the astonishing ascendancy of this district and the problem of form shopping in patent law more generally.

 In relation to the geography of IP litigation, it appears that filings in copyright, patent and trademark litigation are generally highly correlated. The major exceptions to that correlation are driven by short term idiosyncratic events in copyright and trademark litigation—these are discussed in detail—and by the dumbfounding willingness of the Eastern district Texas to engage in forum selling to attract patent litigation. The popularity of the Eastern District of Texas as a forum for patent litigation is a well-known phenomenon.


“Vaccines lead to shark attacks.” I said it, it must be true.

“Vaccines lead to shark attacks.” I said it, it must be true. Scientists and the government say it is not true, therefore it must be true.

The anti-vaccine crowd are killing and maiming other people’s helpless children who can’t get the measles vaccine because of *real* medical conditions. They are also victimizing their own defenseless children as surely as anyone who beats their kids with switch. The notion that vaccines cause autism has no scientific foundation. It makes as much sense as the fear that vaccines lead to shark attacks. I worry that our habit of tolerating people’s sincerely held, but utterly fantastical, religious beliefs has made us defenseless as a society to this secular lunacy. We have slipped from the admirable stance that everyone is entitled to their own opinion to a popular culture where people think they are entitled to their own facts.

We have no herd immunity to bullshit, and now in California we have no herd immunity to Measles. A disease we thought we had defeated for good in 2000, or so we thought.

Is IP property? An outline of the debate.

Is IP Property?

The debate about whether intellectual property is really property tends to proceed along the following lines.

Pro-property advocates observe that as a matter of definition exclusive and tradable rights should be thought of as property.

Anti-property advocates note that IP rights are limited in scope and duration and subject to a number of important public interest caveats.

Pro-property advocates respond with fascinating descriptions of the law relating to nuisance, easements, riparian rights and ancient Roman laws which hold the oceans and navigable waterways in public trust to show that, for every conceivable feature of IP rights that supposedly distinguishes them from property, there is in fact a property law antecedent.

Anti-property advocates respond by saying “but that is not what you mean when you say IP is property. You mean control that is absolute, unyielding and perpetual.”

Both sides then declare victory in the debate and revert to their initial positions.

Surreal Testimony on Copyright Issues in Education and for the Visually Impaired

I tried to view the statement of Roy S. Kaufman, Copyright Clearance Center, in relation to the “Copyright Issues in Education and for the Visually Impaired” Hearing Before the House Committee on the Judiciary’s Subcommittee on Courts, Intellectual Property, and the Internet (Nov. 19, 2014)

Screen Shot 2014-12-05 at 8.46.51 AM

Screen Shot 2014-12-05 at 8.46.57 AMScreen Shot 2014-12-05 at 8.46.03 AM

It might just be an issue with my browser, but I prefer to think of it as a surrealist commentary by those responsible.

#Aereo was always doomed to fail

and today it filed for Chapter 11 bankruptcy.

I have added some final thoughts on fair use to my review of the Aereo decision. You can download the Article from ssrn at this link ( …).

The main addition to my post from a few days ago is the following paragraph:

Unlike Cablevision’s remote-DVR, Aereo was an unlikely candidate for fair use. Holding that a remote DVR is fair use would be logical extension of the Supreme Court’s 1984 Sony Betamax decision. Like a VCR, a DVR simply allows the consumer to do that which they were already authorized to do more conveniently. No doubt, Aereo would make the same argument with respect to its service, but there is one critical difference. Judge Chin’s intuition that Aereo’s design was a mere “Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the Copyright Act,” was spot on; however a technological contrivance should not be the foundation for a legal contrivance. The very fact of Aereo’s contrivance to avoid the public performance right is the reason why it’s fair use claim should fail. Congress amended the Copyright Act in 1976 to make the retransmission of free to air television broadcasts an additional copyright tolling point. There could not be a better argument against fair use than the fact that Aereo’s service was designed to defeat the purpose of the statute. There was no need for the Supreme Court to adopt such a tortured and opaque reading of the transmit clause of the public performance right. Aereo could have been decided as simple fair use case.

Comments on Joseph Fishman, “Creating Around Copyright” Harvard Law Review, Vol. 128, Forthcoming.

Joseph Fishman presented his forthcoming paper, Creating Around Copyright at the UCLA Entertainment, Media, and Intellectual Property Colloquium Workshop this weekend. The paper argues that rather than seeing copyright as a system of access costs that create incentives, we should recognize that copyright may actually spur additional creativity by virtue of the very constraints it establishes.

I like this paper a lot, but the treatment of copyright as a singular constraint that just varies by questions of degree seemed a bit reductionist to me. The constraints copyright imposes are in fact quite uneven. For example, the fair use doctrine privileges transformative uses, however it is much easier to be confident that a reuse that criticizes the original is transformative compared to one that is simply a new work. Thus, at the margins, copyright encourages criticism, not necessarily creativity. Furthermore, the idea-expression distinction encourages differentiation at the level of superficial characteristics, but allows the uncreative recirculation of ideas. Thus Westside Story is less likely to infringe Shakespeare’s (non-existent) copyright than is the far more creative Rosencrantz and Guildenstern Are Dead.

This is undoubtably a clever and well-written article although some of its claims to significance may be inflated. If some all-knowing accountant were to tally up the costs and benefits of copyright, it seems quite unlikely that the generativity of constraint would count for very much in the grand scheme of things.

The Uncertain Scope of the Public Performance Right After American Broadcasting Companies v. Aereo, Inc.

Professor Matthew Sag, Loyola University of Chicago School of Law.  November 18, 2014

This post is based on a summary I wrote for the ABA IP Litigation Roundtable


The Supreme Court’s recent majority decision in American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498 (2014) holds that a service allowing consumers to watch broadcast television programs over the Internet virtually simultaneously with the original over the air broadcast directly infringes the copyright owners the exclusive rights to “perform the copyrighted work publicly.”[1] The majority overrules the Second Circuit ruling in the same case,[2] and throws into doubt one of the central holdings in the Second Circuit’s Cablevision decision.[3]


Aereo’s service is just one of a long sequence of technologies raising conflicts between the interests of content owners and technology companies. In the late 1960’s and early 1970’s community antenna television (CATV) systems challenged the incumbent television broadcasters by retransmitting television signals to CATV subscribers. The CATV provider in Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968) placed antennas on hills above the cities and used coaxial cables to carry the signals received by the antennas to the home television sets of its subscribers. The CATV provider in Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974) carried broadcast television programming into subscribers’ homes from hundreds of miles away. In both these cases the Supreme Court held that the CATV systems were more like a viewer than a broadcaster and thus were not themselves engaged in a public performance.

There is no doubt that the revised definitions of what it means to perform and to perform a work publicly in the Copyright Act of 1976 were motivated in part by a desire to reverse the outcome of the CATV cases. However, the language Congress adopted to that end is anything but clear, and the actual scope of the public performance right has been a controversial question for some time.


Aereo offered consumers the ability to watch live television over the internet and to pause, rewind and fast-forward programming. Aereo provided this service by receiving free to air television signals on a vast array of micro-antennae. Each antenna was dedicated to an individual subscriber, but only when the subscriber tuned in. The receivers were thus under the subscribers’ individual control. The television signals so received were reduced to individual copies of individual programs, but only if a subscriber indicated an intention to watch the program. These copies were then transmitted to Aereo’s subscribers at their command, either in real time with a very slight lag, or asynchronously like other remote DVR services.

The Second Circuit

On appeal from the denial of a preliminary injunction, the Second Circuit held that Aereo’s system did not implicate the copyright owners’ public performance rights under the Copyright Act because each transmission was from a single fixed copy to a single end-user. Consistent with its ruling in the Cablevision remote DVR case, the Second Circuit held, although Aereo’s system may transmit any given program to a large number of end-users, Aereo did not perform publicly within the meaning of the Copyright Act because it did not transmit “to the public.” Rather, each time Aereo streamed a program to a subscriber, it sent a private transmission that was available only to that subscriber. Judge Chin dissented, arguing that “Aereo’s “technology platform” is, however, a sham. The system … is a Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the Copyright Act and to take advantage of a perceived loophole in the law.”

The Supreme Court

— Who is the performer?

Aereo’s service was evidently designed to take maximum advantage of the precedents holding that the provider of an automated service does not engage in the volitional conduct required for direct copyright liability.[4] There is no obvious engineering reason to give each subscriber their own micro-antenna, however, this design choice emphasizes that it is the user, not Aereo, that choses to receive the broadcast signal, transcode (or reformat) that signal, make a copy of the selected program and ultimately transmit the program by pressing the “watch” button on their internet connected device. Relying on the volitional conduct cases, Aereo argued that it was not directly liable under the public performance right because it merely provided the equipment that its subscribers used and controlled.

Writing for a six Justice majority, Justice Breyer acknowledged that

“the language of the Act does not clearly indicate when an entity ‘perform[s]’ (or ‘transmit[s]’) and when it merely supplies equipment that allows others to do so.”[5]

The majority opinion does not engage with the distinction between direct and contributory copyright liability, nor does it directly address the cases on the ‘volitional conduct doctrine’ (see more below). The majority simply holds that cable systems perform and Aereo is like a cable system, thus Aereo performs. More specifically, the majority holds that in view of the legislative history and the manifest intention of Congress to make cable retransmission services liable for copyright infringement,[6] “an entity that acts like a CATV system itself performs, even if when doing so, it simply enhances viewers’ ability to receive broadcast television signals.”[7]

This broad construction of performance does not demand a rejection of the volitional-conduct doctrine in general. Indeed, the holding may be limited to services that “act[] like a CATV system”. Even in Cablevision the court recognized that “our conclusion … that the customer, not Cablevision, ‘does’ the copying does not dictate a parallel conclusion that the customer, and not Cablevision, ‘performs’ the copyrighted work.”[8]

Justice Scalia, in dissent, argued that the expanded definition of performance under the 1976 Act was still consistent with the volitional-conduct requirement. Unlike the CATV services in Fortnightly and Teleprompter, the Aereo system did not send a constant transmission stream to its subscribers. Instead, the system remained inert until a subscriber sent the ‘watch’ command. Only then, and quite automatically, would the Aereo system activate an antenna and begin to transmit the requested program. Thus, even though both sender and receiver of a conventional broadcast could be said to ‘perform’ because both engage in an affirmative volitional act, only the user of an automated system performs when she alone initiates and receives a transmission.[9]

The majority dismissed this argument noting that the “sole technological difference between Aereo and traditional cable companies” was invisible and meaningless to Aereo’s subscribers and to Aereo itself.

But this difference means nothing to the subscriber. It means nothing to the broadcaster. We do not see how this single difference, invisible to subscriber and broadcaster alike, could transform a system that is for all practical purposes a traditional cable system into ‘a copy shop that provides its patrons with a library card.’[10]

— Public Versus Non-Public Transmissions

Aereo argued, and the Second Circuit agreed, that it did not perform the plaintiff copyright owners works “publicly,” within the meaning of the so-called ‘Transmit Clause’. In addition to the general definition of performance, the 1976 Act contains a two-part definition of what it means to “perform or display a work ‘publicly’”.[11] Subsection (1) guides courts as to where the draw the line between public and non-public places. Subsection (2) of that definition, which is generally simply referred to as the Transmit Clause, provides that an entity performs a work publicly when it “transmit[s]… a performance … of the work … to the public.”

Justice Breyer was willing to assume arguendo (although with some skepticism) that the relevant performance referred to in the Transmit Clause is not the copyright owners’ initial broadcast, but the new performance created by Aereo’s act of transmitting.

That performance comes into existence when Aereo streams the sounds and images of a broadcast program to a subscriber’s screen. … Thus, for present purposes, to transmit a performance of (at least) an audiovisual work means to communicate contemporaneously visible images and contemporaneously audible sounds of the work.[12]

Nonetheless, Justice Breyer argued that Aereo’s attempt to sidestep liability for public performance by interposing discrete copies did not distinguish its service from that of a cable system in terms of Congress’s regulatory objectives. Justice Breyer noted that the behind-the-scenes technical details of how Aereo delivered television programming to its viewers did not change Aereo’s commercial objectives or its subscribers’ user experience.[13] Traditionally copyright law has relied upon secondary liability to address attempts to evade liability that nonetheless are clearly at odds with Congress’s regulatory objectives.[14] However, the Aereo majority indicated that the defendant’s intervening user-specific copies could simply be regarded as an elaborate “device or process” by which the company made its transmissions. The majority has thus converted the broad by any “device or process” language in the Act into an anti-avoidance provision.[15]

While accepting that the relevant performance under the transmit clause was the new performance created by the act of transmission, Justice Breyer nevertheless concluded that “when Aereo streams the same television program to multiple subscribers, it ‘transmit[s] … a performance’ to all of them.”[16] The Transmit Clause indicates that that one may transmit a performance to the public capable of receiving it at the same time or at different times. For Breyer, this necessarily implies that “an entity may transmit a performance through one or several transmissions, where the performance is of the same work.”[17] Previous case law had seemed to require that for such asynchronous transmissions to be aggregated, they had to be made from the same copy of a work.[18] In contract, Justice Breyer concluded 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.[19]

However, Justice Breyer added an important qualification to the foregoing: whether a group of people constitutes ‘the public’ depends upon their relationship to the underlying work.

an entity that transmits a performance to individuals in their capacities as owners or possessors does not perform to “the public,” whereas an entity like Aereo that transmits to large numbers of paying subscribers who lack any prior relationship to the works does so perform.[20]

Uncertainty in the Wake of Aereo

In re Cellco Partnership,[21] the district court held that downloading a ringtone to a cell phone is a reproduction but not a public performance. The clearest implication of the Aereo decision is that the Supreme Court has maintained this distinction between downloading and streaming (the former being a copy, the latter being a performance). The majority insisted that “an entity only transmits a performance when it communicates contemporaneously perceptible images and sounds of a work.”[22] That issue aside, Aereo leaves open a wide range of follow-up questions.

Remote DVRs

1.  Most obviously, copyright owners may now wish to relitigate the legality of remote DVR services. The Second Circuit’s Cablevision decision relies on the volitional-conduct doctrine in relation to copies made at the direction of DVR subscribers and the non-aggregation of transmissions made from separate copies of the work in relation to the question of public performance. Each of these pillars may be challenged in the wake of Aereo. However, I expect that even if the reasoning changes, lower courts will not find remote DVR services liable for direct infringement. There is enough language in Aereo to limit its holding two services that are primarily focused on simultaneous retransmission.

Remote DVRs that let you pause and rewind live tv

2.  The decision also leaves open the question of services that are primarily intended to act as remote DVR’s but which could also be used for near simultaneous viewing of live television. Moreover, cable companies will take heart from the Court’s suggestion that whether a group of people constitutes the public depends upon their relationship to the underlying work. Cable services are authorized to retransmit broadcast television under the terms of a statutory license. The public at large is authorized to receive unencrypted broadcast television signals — at least within the ordinary transmission range of such signals — so it is unclear whether cable TV customers really have a different relationship to the underlying work than Aereo’s subscribers did.

Does the cloud look like a cable system?

3. More broadly, if separate asynchronous transmissions originating from distinct copies of a work are to be aggregated for the purpose of copyright’s public performance right, what does this mean for cloud computing services? The Second Circuit’s interpretation of “to the public” made it quite clear that video-on-demand services would implicate the public performance right, but that online cloud storage providers such as Dropbox and Amazon Cloud Drive would not.

The majority’s ‘looks like a cable system’ approach makes the public performance right almost incomprehensible. Is the aggregation transmissions from distinct copies limited to services directly analogous to cable retransmission? Is it limited to services engineered to avoid public performance liability? The majority’s comment that the legislative history compelled the determination that Aereo performs but that “it does not determine whether different kinds of providers in different contexts also perform” suggest either of these might be possible.[23]

What is it about cable systems that is important?

4.  If future public performance cases turn on the resemblance of an accused service to cable television, which characteristics of a cable service will courts deem to be most relevant? Justice Breyer’s decision indicates that courts will be more focused on commercial motivation and user experience than specific technical details.

Technological neutrality: effects vs. function

5.  Aereo raises fundamental questions about copyright and technology neutrality. If technological neutrality is a question of the effect of a given technology, then Aereo was, in effect, a retransmission system and thus it was, in effect, engaged in public performance. But if technologically neutrality is a question of function, then Aereo was in fact an elaborate copying service and not the originator of public performances. Like Judge Chin’s dissent at the Second Circuit Court of Appeals, Justice Breyer’s majority opinion takes an effect-based perspective. Will the Court use an effects-based approach to expand other exclusive rights under the Copyright Act?

What happened to Aereo?

On October 23, 2014, the Federal Southern District Court of New York granted an injunction against Aereo “barring Aereo from retransmitting programs to its subscribers while the programs are still being broadcast”.[24] The plaintiffs sought an injunction against Aereo’s fully time-shifted transmissions, the district court did not rule this out, but merely said it would “not reach the issue at this preliminary stage of the litigation.”


[1] 17 U.S.C. § 106(4).

[2] WNET, Thirteen v. Aereo, Inc., 712 F.3d 676 (2013).

[3] Cartoon Network LP, LLLP v. CSC Holdings, Inc. 536 F.3d 121 (2008).

[4] See Fox Broadcasting Co. v. Dish Network LLC, 747 F.3d 1060, 1066-1068 (C.A.9 2014); Cartoon Network, supra, at 130-131 (C.A.2 2008); CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 549-550 (C.A.4 2004). Religious Technology Center v. Netcom On-Line Communication Services, 907 F.Supp. 1361 (N.D.Cal.1995). See also Parker v. Google, Inc., 242 Fed.Appx. 833, 836-837 (2007) (per curiam) (3d Cir. Unpublished)

[5] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2504 (2014).

[6] The drafters of the Copyright Act of 1976 clearly intended to include both the sender and the receiver of a traditional broadcast within the definition of ‘to perform’ and thus overturn contrary Supreme Court authority. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975) (“those who listen to the broadcast through the use of radio receivers do not perform the composition”). See also Fortnightly Corp. v. United Artists, 392 U. S. 390 (1968) and Teleprompter Corp. v. CBS, 415 U. S. 394 (1974).

[7] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2506 (2014).

[8] Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F. 3d 121, 134 (2d Cir. 2008).

[9] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2512-13 (2014).

[10] Id. at 2507.

[11] 17 U.S.C. §101.

[12] American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498, 2508 (2014). If the Court had held otherwise it would have not only overturned Cablevision, but also United States v. American Soc. of Composers, Authors and Publishers, 627 F.3d 64, 73 (2d Cir. 2010) (holding that a download of a work is not a performance because the data transmitted are not “contemporaneously perceptible”).

[13] “Why would a subscriber who wishes to watch a television show care much whether images and sounds are delivered to his screen via a large multisubscriber antenna or one small dedicated antenna, whether they arrive instantaneously or after a few seconds’ delay, or whether they are transmitted directly or after a personal copy is made?” Id. at 2509-10.

[14] See e.g. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).

[15] The Copyright Act aims for neutrality in that the public performance right is defined to include the right “to transmit or otherwise communicate a performance… to the public, by means of any device or process.” § 101. But it is far from clear that the “by means of any device or process” language means that non-public transmissions should be rendered into public transmissions simply because they have the same effect as technology we recognize as implicating the public performance right.

[16] Id. at 2509.

[17] Id.

[18] Columbia Pictures Industries, Inc. v. Redd Horne, Inc., 749 F.2d 154 (3d Cir. 1984) Defendant operated a video rental store with a number small private booths. Patrons would select a film, enter the booth, and close the door. An employee would then load a copy of the requested movie into a bank of VCRs at the front of the store and push play, thereby transmitting the content of the tape to the television in the viewing booth. By showing a single copy repeatedly to different members of the public the defendant engaged in a public performance.

[19] Id.

[20] Id. at 2510.

[21] 663 F. Supp. 2d 363, 371–74 (S.D.N.Y. 2009).

[22] Id.

[23] Id.

[24] American Broadcasting Companies, Inc. v. Aereo, Inc., (SDNY 2014).

Do not upgrade to Yosemite.

I am that burning feeling of rage as the computer freezes, then restarts with the last 15 minutes of beautifully crafted prose about the definition the the Transmit clause under the Copyright Act lost forever.

I switched to a Mac to avoid this feeling.

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Post Script: Dealing with a problem in the startup file seems to have resolved this instability.