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.

Patents In the Shark Tank

My family and I enjoy watching Shark Tank. It’s a mix of business, technology, humor and, in some cases, is a testament to the entrepreneurial spirit of people. Of course, we realize it is mainly about entertainment. It doesn’t mean, however, that there aren’t some learning opportunities to be had.

As a patent attorney, my ears perk up a bit when I hear a shark ask about patents or patent applications or when the team seeking investment (the “contestant?”) mentions either having a patent or having applied for a patent. I have previously written about the differences between having obtained a patent and having applied for a patent. When this issue comes up on Shark Tank, I point it out to my wife and daughter but they just roll their eyes and say “we know, we know.”

When patents come up on Shark Tank, there isn’t an in-depth discussion of what the issued claims cover or what scope of coverage is being pursued. The show isn’t set up for that type of analysis and, I will admit, would be deadly boring if ever there was such a discussion. It is surprising to me, however, that sometimes the sharks consider having or not having patent protection (pending or issued – it doesn’t seem to matter) is important to whether or not they will invest without having any idea as to the scope of protection. Again, merely saying one has a patent or a pending application, without providing an understanding of what the claims cover, might give a potential investor some comfort but it really doesn’t convey any useful information.

Recently, Funbites came on seeking an investment. Funbites sells a device that cuts kids’ food into different shapes. During the pitch, Funbites told the sharks that they had an issued patent and they were ultimately successful in landing a shark. It’s not clear that having a patent helped land a shark, however, looking at the device, I wondered what the patent claims covered.

It didn’t take too much research to find Funbites’ U.S. Patent 8,695,220 (‘’the ‘220 patent”) with the not-so-fun-sounding title “Hand-Held Food Cutter with Shape Imparting Device.” As we know, however, it is the patent’s claims that determine the scope of coverage, i.e., its strength, as they define what others cannot make, use or sell without possibly being liable for infringement.

There are some general rules when it comes to claim interpretation:

1. broad claims are better than narrow (more specific) claims; 
2. long claims are narrower than short claims; and 
3. it’s easier to avoid infringing a narrow claim. The second rule is true because long claims include more components and make it more specific as to what the claim covers. The third rule tends to be true because, generally, infringement can be avoided by not including one or more component recited in a claim and, as there are more components in a long claim, it’s likely something can be removed or changed.

The ‘220 patent includes 14 claims with claim 1 being the only independent claim – and it is pretty long and, therefore, narrow. This is not surprising as it may have been necessary for the claim to be more specific in order to overcome the prior art cited against it during its examination in the Patent Office. The evolution of a claim during its pendency in the Patent Office will have to be the topic of a separate article. Suffice it to say that they obtained a patent but it’s narrow.

So, where does that leave us? Someone wanting to compete with Funbites or understand the scope of coverage will read the ‘220 patent and review claim 1. This review would probably include determining what components are “specific” and, therefore, might be changeable to make a cutting device that would not infringe the claim.

Without reciting the whole claim here, there are a number of terms in the claim that could be removed or changed in a competing device such that the competing device would likely not infringe. For example, the claim requires “an arcuate convex shaped bottom edge that is beveled for cutting the food” and “bottom edges” of second walls that are “V-shaped cutting edges” and where “bottom edges” of “vertical end walls only are beveled along an inner surface thereof.” (emphasis added). What if the competing device has a bottom edge that is not an “arcuate convex” shape and is not “beveled for cutting?” What if something different than a “V-shaped cutting edge” is provided? What if the vertical end walls are not beveled only “along an inner surface?” It may be arguable that these changes take the competing device out from the scope of the claim.

There are certainly other aspects of the claim that might be changed to avoid its infringement and the foregoing was not meant to be an exhaustive list. It does seem, however, that there are points that could be changed in order to avoid being accused of infringement. Generally, however, when considering whether a device is “cleared” with respect to an issued patent it’s highly recommended that you consult with an experienced patent attorney.

I recognize that the sums of money that the sharks are investing on the show are relatively small and that there isn’t a lot of time for due diligence including patent portfolio review. I would expect that their larger deals include a comprehensive review of the IP positions of the parties. I just want the reader to understand that merely saying one has a patent or has applied for a patent doesn’t necessarily mean that a strong position has been staked out and that it doesn’t take that much to make such a determination.

DISCLAIMER: These are just the personal opinions and musings of one who watches too much television and thinks too much, sometimes, about patents. No one should rely on this analysis as to the relative strength or weakness of any patent discussed herein nor should anyone base any business decisions on the opinions expressed herein.