Sony BMG v. Tenenbaum: Judge Provide Outlines of Possible Fair Use Defense for Peer-to-Peer File Sharing
Participants in the P2P world have long hoped that courts would recognize that at least some forms of file sharing constitute fair use. In a recent opinion in the Tenenbaum file-sharing case, Judge Gernter of the District of Massachusetts enumerated several unauthorized uses of copyrighted music thinks might constitute a fair use -- including file-sharing under certain limited circumstances. While Judge Gertner's opinions have limited precedential value, they may point to some pathways to legitimacy for the oft-maligned P2P industry.
Joel Tenenbaum was a sophomore at a small college in Baltimore. Like many other students, he used a number of music file-sharing services, including Kazaa, through which he shared songs with other users. In 2007, he was sued by Sony BMG and other recordings company for copyright infringement for sharing 30 songs. One of the defenses that Tenenbaum raised was fair use -- a defense which the Judge Gertner rejected in July 2009, shortly before the commencement of trial. As is well-known, trial did not turn out well for Tenenbaum, who was found liable for infringement and statutory damages of $675,000.
On December 7, 2009, Judge Gertner issued a lengthy opinion that provided the full justification for her earlier rejection of Tenenbaum's fair use defense. See Sony BMG Music Entertainment v. Tenenbaum, D. Mass., Memorandum and Order (Dec. 7, 2009). Judge Gertner began by agreeing with Tenenbaum that the Copyright Code does provide for a fair use defense that applies to all forms of copyrights. See 17 U.S.C. ยง 107. Judge Gertner noted that the fair use defense was developed by judges "who recognized that the monopoly rights protected by copyright were not absolute." Where a use did not injure the market for the original work, and advanced a public purpose, such as education or artistic innovation, it could be considered "fair" and not infringing.
When Congress codified the fair use doctrine in Section 107, it set out a list of four, non-exhaustive, factors that a court is require to determine whether a use is fair. These include: (1) the purpose and character of the use, including whether the use is commercial or 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 on the potential market for or value of the copyrighted work. Courts have added several additional factors.
Purpose and character: Judge Gertner found that the key issue was whether the defendant's use of a work was "accompanied by any public benefit or transformative purpose." Tenenbaum argued that file-sharing provides a public benefit by increasing access to copyrighted works. Judge Gertner found that this public benefit was not sufficient, since "nearly every unauthorized reproduction or distribution increases access." For file-sharing to constitute a transformative use, it would need an effect similar to that held fair in the Betamax case -- permitting the use of a work in new way, rather than merely providing users with free copies of works that they could otherwise purchase.
Nature of copyrighted work: Here, Judge Gertner simply found that the works at issue were music, which "commands robust copyright protections." While this suggests that there may be other categories of works for which greater use might be considered fair, Judge Gertner did not spell out what those categories might be.
Portion of the work used: Tenenbaum argued that his file-sharing was fair use, because he had only downloaded individual songs, not complete albums. Judge Gertner found that this distinction was irrelevant. Rather the issue was the degree to which his use served as a market substitute for the original work. If Tenenbaum's use had constituted the sampling of individual songs "as a prelude to purchasing the full albums on which those songs appeared . . . that could well present a compelling argument for fair use." Instead, his file sharing constituted a "full market substitute" for the music in question, since it permitted users to obtain music for free instead of purchasing it.
Effect on the potential market for the work: Judge Gertner held that the relevant issue was whether "unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market" for the original works. She agreed that making a work available for free on the internet might increase its overall value, by increasing "buzz and publicity." But ultimately, she concluded that Tenenbaum's file sharing would ultimately "eliminate the market for digital downloads among individual consumers by transforming all file sharing for private enjoyment into fair use."
Availability of paid alternatives: Following precedent from other courts, Judge Gertner found that an unauthorized use may be fair if there are no other means to obtain access to the original work. See Am. Geophysical Union v. Texaco, Inc., 60 F.3d 913, 931 (2d Cir. 1994) ("If the work is 'out of print' and unavailable for purchase through normal channels, the user may have more justification for reproducing it").
Judge Gertner was sympathetic to Tenenbaum's argument the emergence of easy-to-use, paid outlets for digital music, such as iTunes, lagged the advent of file sharing my many years. During this period, file-sharing conveyed benefits on users, by making individual songs available as mp3 files that users could easily place on portable devices. According to Judge Gertner, "the ability to 'space-shift," by moving music to a more compact and portable medium; the ability to obtain individual tracks, increasing consumer choice; and the ability to sample music prior to purchasing it" all might "belong in the fair use calculus." However, by the time the Tenenbaum engaged in his file-sharing -- 2004 -- "a commercial market for digital music had fully materialized", including players such as iTunes, which debuted in 2003. "A different defendant, who was accused of file sharing prior to iTunes Music Store's market-changing debut, might have a different case." But these factors were not relevant in Tenenbaum's case.
While Judge Gertner ultimately rejected Tenenbaum's fair use defense, she opined that there could be some instances of file-sharing of copyrighted works that constituted fair use. These could include: temporary sampling of songs, creation of mp3 file for space-shifting purposes from a previously purchased CD, or filing sharing prior to the advent of paid outlets for digital music. It is important to note that because Judge Gertner did not rule Tenenbaum's file-sharing was a fair use, her statements about file-sharing activities that might constitute a fair use are pure dicta. This means that they have the status of interesting, but non-precedential commentary. However, they may point the way to a number of uses of file-sharing that other courts may be willing to find are fair.
