US Copyright Office Reports: WIPO Internet Treaties Require No Copyright Act Amendment to Protect Exclusive “Making Available” Rights

Has the United States lived up to its obligations under the WIPO Internet Treaties to protect the exclusive “making available” right of copyright owners? 

Some would argue no, and that Congress should amend the U.S. Copyright Act.  Others would argue that the exclusive rights provisions in Section 106 of the Copyright Act are adequate.

In Internet copyright infringement litigation, this issue has arisen in the context of a plaintiff’s evidentiary burden of proof and whether the “making available” right requires a plaintiff to prove that an infringing work was simply uploaded to the Internet, or both uploaded and downloaded.  Court cases have been inconsistent.

By way of background, when the Internet was relatively new and growing rapidly in the mid-1990s, the international copyright community wanted to ensure adequate copyright protection in the new medium.  Toward that goal, the World Intellectual Property Organization (WIPO) and its member states (including the United States) entered into the WIPO Internet Treaties, which consist of the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT). 

The treaties required the U.S. and other member states to provide a “making available” right that gives copyright owners the exclusive right to authorize the on-demand transmission of their works and sound recordings to the public (e.g., via the Internet).  The treaties articulate the exclusive “making available” right as follows:

WCT Art. 8	Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorising any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.
WPPT Art. 10	Performers shall enjoy the exclusive right of authorising the making available to the public of their performances fixed in phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.
WPPT Art. 14	Producers of phonograms shall enjoy the exclusive right of authorising the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.

Congress did not amend the Copyright Act to specifically refer to the “making available” right, instead assuming that the exclusive rights provisions in Section 106 of the Copyright Act adequately protect the right.

The Supreme Court in American Broadcasting Cos. v. Aereo, Inc., 573 U.S. __, 134 S.Ct. 2498 (2014), confirmed that the public performance right encompasses the transmission of copyright works to the public through individualized streams.  However, in the context of merely offering access to copyright content, some district courts questioned the existence of the “making available” right under U.S. law, declining to recognize a cause of action where copyright owners are unable to prove that downloads or receipt occurred.  Other courts simply rejected the “making available” right without acknowledging or discussing the international obligations of the United States under the WIPO Internet Treaties.  Appellate courts have not conclusively resolved the issues in cases involving works in digital format, although some appellate decisions have held that distribution does not necessarily require an actual transfer of copies in the context of a library offering physical copies of a work to the public.

In December 2013, Congress asked the U.S. Copyright Office (USCO) to weigh in on the debate.  Congress specifically requested feedback on the following issues: (1) how the existing bundle of exclusive rights under Title 17 covers the “making available” right in the context of digital on-demand transmissions such as peer-to-peer networks, streaming services, and music downloads, as well as more broadly in the digital environment; (2) how foreign laws have interpreted and implemented the relevant provisions of the WIPO Internet Treaties; and (3) the feasibility and necessity of amending U.S. law to strengthen or clarify the law in this area.

In response, the U.S. Copyright Office (USCO) released The Making Available Right in the United States: A Report of the Register of Copyrights on February 23, 2016.  The report concludes that the treaties require no Copyright Act amendment, but recommends that Congress continue to monitor case law and offers suggestions if Congress chooses to amend the law.

The report is available at HERE.

Final Office Actions - Sometimes Final Is Not So Final

Patent prosecution is a back and forth dialogue to get the broadest coverage allowable. In order to keep from bogging down the system, the USPTO can issue a Final Office Action to close off prosecution. There are limited choices to responding to these Final Office Actions. A recent pilot program has created a new option – the After Final Consideration Pilot 2.0 (AFCP 2.0).

The traditional options included filing a Request for Continued Examination (RCE), Appealing and submitting a Response. An RCE reopens prosecution but comes with a sizable fee. As the RCE can be moved to the back of the Examiner’s docket the Examiner may not respond to the RCE for some time. Appealing the Office Action also requires its own related fees. While a submission for a Pre-Appeal Brief Conference can offer a quick response, such review works best only in those rare situations where there is clear error by the Examiner.

Filing a Response to a Final Office Action is a tricky proposition. The Applicant is limited in their ability to change the claims as there is no right to amend. Such a Response works well for situations where claims are canceled, amended to comply with formal requirements or objected to claims are rewritten in independent form. In other situations, the limitations on amendments may be too restrictive and an RCE may be required in order to have the amendments entered.

Timing of a Response to a Final Office Action is also an issue. Unless the Response is filed within two-months from the date of mailing, there is no guarantee that the Examiner will respond. As the Response does not stop the clock on the six-month period for reply, this may leave Applicants waiting impatiently for the Examiner’s response while they enter ever more expensive extension periods. The Advisory Action procedure, which can be invoked by filing the Response within two-months, helps to alleviate some of this concern but the restrictions on amendments are still present.

In an effort to help fill an unmet need left by these traditional options, the USPTO has created the AFCP 2.0. This program is intended to enhance communication between the USPTO and Applicants, and to help reduce the number of RCEs being filed.

Using the AFCP 2.0, an Applicant can submit a request for consideration under the program with a response to a Final Office Action which includes an amendment. If the request is granted, the Examiner considers the amendment and, if the amendment does not place the application in condition for allowance, the Examiner is to reach out to the Applicant in order to hold an interview to discuss the case.

The AFCP 2.0 requires an amendment to at least one independent claim. The amendment can introduce new elements to the claims that have not been considered previously. However, the claim’s scope may not be broadened in any way. Even with this limitation, this process provides more flexibility than previously allowed without an RCE.

Another key requirement is based on the amount of time the Examiner would need to consider the Response. The program gives Examiners an additional two to three hours. If the Examiner determines that this additional time is not sufficient to consider the amendments and arguments they can refuse the request.

No additional fees are required for the program. However, the request for consideration under AFCP 2.0 does not stop the clock on the six-month period for a response and the Applicant may enter extension periods waiting for a response from the Examiner. The USPTO recommends Applicants request a status update if the Examiner has not responded to the request within a month.

The AFCP 2.0 fills a void in the prior USPTO procedures in order to help move applications through prosecution. Given the ability to consider cases which can be handled swiftly Examiners are now able to devote their limited time to promptly address such applications. Additionally, Applicants can avoid costly fees further incentivizing participation in the program.