[Editors’ note: This is the fifth in our series, What Is the Most Important U.S. Supreme Court Case in Your Area of the Law? The first four installments are here, here, here, and here.]
There have been several important copyright cases before the Supreme Court since the first, Wheaton v. Peters, in 1834 (over, appropriately enough, the copyright in the Supreme Court’s reports). But the most important to me personally is Sony v. Universal, also known as “the Betamax case.” The Sony case, as is widely known, held that recording a program at home in order to watch it later—”time-shifting”—is a fair use. It also devised a very influential test for determining the liability of manufacturers and service providers for infringement committed by users, one that asked only whether the product or service was “capable of substantial noninfringing uses.” Undeniably Sony is an important case, but then so are Bleistein v. Donaldson Lithographing, Baker v. Selden, CCNV v. Reid, Burrow-Giles v. Sarony, Campbell v. Acuff-Rose and countless others. What pushes Sony over the top is the fact that the Sony case marks the boundary between two copyright worlds: a world where copyright is solely a regulation of a particular industry sector—publishing—and a world where it regulates everyone.
In 1975 Sony began marketing its video tape recorder, the Sony Betamax, using ads that extolled the ability to watch one channel and record another. “Build a Library” advised one ad. Two movie studios—Universal and Disney—objected to the new device. Those studios were not the multimedia conglomerates they are now. Universal and Disney were primarily movie studios that also produced some television content. Their primary concern was in protecting the ability to re-release movies in theaters after they had been broadcast on television. Our collective memory of Sony is now that content owners rose up as one to oppose the VCR. But the reaction was considerably more muted, at least at first. None of the television networks, and no television production companies who were not affiliated with a movie studio, joined the suit. As is often the case in copyright law, Sony was largely the product of a single, aggressive copyright owner: Universal, whose president later threatened Nintendo by observing that Universal’s “litigation department even turned a profit.”
Despite the tepid response from content owners, Sony was an extremely close case. The Supreme Court decision was 5-4, and it split the 13 judges to consider it 7-6 the other way. That is, copyright law came very close to declaring that time-shifting was not fair use and that VCR manufacturers needed to get a license from any content owners whose programs might be recorded. It’s difficult even at this relatively short remove to imagine why the law might have taken that path. That’s because, even though the Sony decision is only 26 years old, the legal and social context in which it arose have undergone a sea-change.
We are surrounded now by copying technologies, by copyright issues, and by the constant distribution and reproduction of copyrightable material. But it was not so in 1975. Copying was by and large the domain of publishers. Nascent copying technologies were emerging that enabled individuals to make their own copies—photocopiers, cassette tape recorders, VCRs, and soon, home computers—but in the mid-1970s they were still novelties.
Thus in 1975 it was a subject of considerable dispute whether copying an entire work could ever be deemed a fair use. Certainly, it was assumed, the circumstances in which that would be true would be exceedingly rare. And fair use doctrine tended to distinguish between uses that were “productive,” i.e., that produced something new—something transformative, in today’s jargon—and uses that were merely consumptive. Consumptive uses, again, were not likely to be fair.
Those two rules made a considerable amount of sense in dealing with professional publishers and distributors. The circumstances under which a rival publisher could duplicate an entire work and call it fair use were probably nil. Same for consumptive versus productive uses—in the pre-1975 copyright world, fair use was designed to allow rival publishers to incorporate small portions of works under copyright in producing something new.
Put those two concepts together, and it looked awfully hard to justify what consumers were doing with VCRs. They were recording entire programs, and they were not producing anything new as a result: just verbatim copies of the original broadcasts. But the Sony case introduced a new element. Previous indirect infringement cases involved dance halls, hotels, and independent contractors under the defendants’ supervision—in other words, interactions between humans. But Sony involved a machine. Sony was the first case in which the courts confronted a claim that a machine manufacturer should be held liable under copyright law for the way it was used.
This explains the Sony court’s well-known turn to patent law for a solution. Unlike copyright law, patent law had long contemplated the potential liability of manufacturers for their role in contributing to infringements by others. Section 271(c) of the Patent Act subjects the manufacturers of components of a patented invention that are “not a staple article or commodity of commerce suitable for substantial noninfringing use” to liability as infringers. The Sony court famously adapted this standard to become the Sony test for contributory infringement of copyrights by a machine: manufacturers would only be liable if their product was “capable of substantial noninfringing uses.”
That test has long been criticized by copyright lawyers and scholars active at the time as an inappropriate borrowing from patent law. And indeed the test seems a bit mismatched for the problem. Section 271(c) looks at the way a component is sold—as a staple article of commerce or as something else—to determine whether it is particularly adapted at infringing on one particular patent. A component that targets one particular invention should be relatively easy to identify. The Sony test looks at a product in its infancy and asks whether it infringes copyrights generally. That’s a much harder test to apply; any copying machine at all can infringe copyrights generally, and whether it is typically used for infringement may vary significantly over time (not to mention the definition of fair uses tends to shift with new media). The Sony court made the test easier to apply by limiting the showing a defendant must make to the mere “capability” of substantial noninfringing uses. As Justice Blackmun noted, “[o]nly the most unimaginative manufacturer” would be unable to meet such a standard.
Whatever the limits of the Sony test, however, the Sony majority recognized that a new dawn was breaking in copyright law, one that required a departure from the standard publisher, distributor, and venue cases that made up copyright law’s core. Sony attempted to bridge the old copyright world and the new by carving out a chunk of the new world from copyright’s scope entirely: basically, the court said, copyright has little to say about the responsibility of device manufacturers to design their devices to prevent infringement. Copying devices weren’t liable before 1979, and they shouldn’t be liable afterwards either. In that, the Supreme Court is not alone; the history of congressional legislation dealing with the collapse of the publisher/consumer divide is one of shoring up old bulwarks, of increasing penalties and adding enforcement options while deferring any fundamental reconception of how copyright is supposed to work. Sony marked the moment copyright law entered this morass; it was copyright’s Battle of the Marne.
This Post Has 4 Comments
No mention of Feist Publications v. Rural Telephone Service, 499 U.S. 340 (1991)? The case that defined originality as we know it today? The case that rejected the “sweat-of-the-brow” justification for copyright protection? The case that held that alphabetized telephone books don’t take a modicum of creativity to make?
I’m sure anyone can think of a number of important Supreme Court copyright cases, the Betamax case doubtless among them. Costco Wholesale Corp. v. Omega S.A., set for oral argument later this month, might be one to watch too. As a doctrinal matter, it might only be a one-step extension of the Quality King case, but it might mean that foreign manufacturers can use U.S. copyright law to stop gray market importation.
Feist is important, no doubt about it. If I had thought more systematically about other cases I would have put it on my list of alternatives. Eliminating the sweat-of-the-brow theory has been important in several cases, but the threshold for creativity set by Feist (and by Bleistein) is so low that as a practical matter few laborious enterprises are going to be excluded. Still, Feist probably affects the amount of protection a work receives in a practically significant way.
As I noted though, my choice was pretty subjective–which Supreme Court case is the most important to me. Feist was an important choice at a theoretical crossroads. Betamax is more of a marker for a paradigm shift in the underlying structure of copyright law.
I have heard some law school faculty argue that Sony was wrongly decided at the time, and that cases since then (most notably Grokster) represents the SC’s attempt to reverse a judgment that may have made political sense (given the prevalence of VCRs by the time the case was decided) but made little sense in legal terms.
Since you picked it, I guess you think that Sony will continue to be of importance to fair use litigation rather than the one aberrant instance of licensing being rejected in favor of fair use.
If you really want to look at the nascent impact of copying technologies, I think that the 4 to 4 non-decision in Williams & Wilkins may be just as important. It established that there are times when consumers could copy entire works without paying license fees – and also was an impetus for the passage of the 1976 Act.
Thanks Peter, I agree entirely on Williams & Wilkins and I highly recommend to everyone Paul Goldstein’s chapter on the litigation in Copyright’s Highway. It’s entertaining as well as informative, particularly on the problem of assessing the harm, which also affected the Sony litigation. When I was in practice I helped Jon Baumgarten prepare his chapter for the recently re-released Unhurried View of Copyright, which is on how the photocopying wars presaged all of the computer-related difficulties copyright has run into.
It’s an interesting question what my ultimate opinion is about whether Sony is rightly or wrongly decided. It’s been part of the received wisdom of copyright law since long before I became a lawyer, and it’s difficult to conceive of the world that would have come into being had Blackmun’s dissent carried 5 votes. (I’m guessing there would not have been an injunction, but who exactly would have been paid, and how much?) I think my take is a little less legal-realist than saying that political realities won out over faithful application of precedent; I see a systemic shift occurring and Sony is a key harbinger of it, even if imperfect.