In what appears to be the first instance of an express recognition of a "making available" right under the U.S. Copyright Act, a D.C. district court in Spanski Enters. v. Telewizja Polska S.A., Civ. Action No. 12-cv-957 (TSC), 2016 U.S. Dist. LEXIS 166506 (D.D.C. Dec. 2, 2016) found a foreign defendant liable for copyright infringement for allowing video content stored in Poland to be accessed in the United States. The Plaintiff was a Canadian company that held an exclusive license to some 51 Polish television show episodes. In something of a twist, the Defendant was the producer and original owner of the episodes, but granted exclusive North and South American distribution rights to Plaintiff. Despite granting the license, the Defendant stored the episodes on servers in Poland and allowed users of its website to view the programs via streaming. The court found after a five-day bench trial that the Defendant intentionally disabled geoblocking technology that would have prevented access to the programs from North and South America.

The court concluded that Defendant committed volitional (and willful) copyright infringement by failing to use its geoblocking technology, and "infringed [Plaintiff's] exclusive copyright on the 51 shows by making them available in the U.S. via the website"  The court determined that Defendant's streams constituted a "transmission" that infringed the Plaintiff's public performance right. Under 17 U.S.C. § 101,

[t]o 'perform' a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible. To 'transmit' a performance is to communicate [a work] by any device or process whereby images or sounds are received beyond the place from which they are sent. To perform a work 'publicly' is 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 [the 'Transmit Clause'].

The court analogized the Defendant's technological system to the system of the defendant Areo, which was analyzed by the Supreme Court in 2015.  The Spanski court noted that, like this Defendant's system, "although [Areo's] system remained inert until a subscriber indicated that he or she wanted to watch a program and may have emulated equipment a viewer could use at home, it allowed subscribers to watch programs almost as they were being broadcast." The court also noted that other courts have found that video streaming qualified as an electronic transmission.

In arriving at the conclusion that Defendant infringed Plaintiff's copyright by making the shows available in the U.S., the court did not explicitly wade into the controversy surrounding whether U.S. law in fact recognizes a "making available" right. The United States is supposed to recognize this right by virtue of being a party to the World Intellectual Property Organization (WIPO) Copyright Treaty and the WIPO Performances and Phonograms Treaty. S. Rep. No. 105-190, 5, 9 (1998). However, the treaties are not self-executing, such that they do not have any binding legal authority absent implementation in the Copyright Act itself. Courts that have considered whether the Copyright Act in fact grants such a right have generally found that it does not, and that the Copyright Act's distribution right does not encompass within it a "making available" right. See, e.g., BMG Rights Mgmt. (US) LLC v. Cox Communs. Inc., 149 F. Supp. 3d 634 (E.D. Va. 2015); Capitol Records Inc. v. Thomas, 579 F. Supp. 2d 1210, 1226 (D. Minn. 2008). However, the Register of Copyrights issued a report earlier this year finding that the Copyright Act did in fact allow for a "making available" right by virtue of including a distribution right, as well as rights of public performance and display. The Register concluded that offers of access to infringing work, on-demand access through individualized streaming and streaming that results in a digital reproduction of the work could all be considered making available infringements if courts interpreted the Copyright Act correctly.

The controversy really focuses on whether the "making available" right requires the kind of volitional copying U.S. courts require to hold a defendant liable for copyright infringement.  Opponents of a broad reading of the right fear that it could criminalize passive behavior and render illegal common internet behavior such as hyperlinking. Opponents also fear that the owner of a legally downloaded digital file could be liable for infringement if the file is passively available through certain peer-to-peer or social media systems. The Spanski court appears to have addressed some of those concerns by characterizing as "volitional" the failure to use easily available technology protections, while also broadening the definition of "making available." It will be interesting to see whether this expansion survives possible appellate review, and whether other courts further the expansion into other areas where technological restrictions to access are available and not used.

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