`
`No. 18-1430
`================================================================
`
`In The
`Supreme Court of the United States
`
`--------------------------------- ---------------------------------
`
`REDIGI INC., et al.,
`
`Petitioners,
`
`v.
`
`CAPITOL RECORDS, LLC, et al.,
`
`Respondents.
`
`--------------------------------- ---------------------------------
`
`On Petition For A Writ Of Certiorari
`To The United States Court Of Appeals
`For The Second Circuit
`
`--------------------------------- ---------------------------------
`
`MOTION FOR LEAVE TO FILE AND BRIEF
`AMICUS CURIAE ON BEHALF OF OMNIQ
`IN SUPPORT OF PETITIONERS
`
`--------------------------------- ---------------------------------
`
`
`
`
`
`
`
`
`
`
`JOHN T. MITCHELL
`Counsel of Record
`INTERACTION LAW
`1629 K Street NW
`Suite 300
`Washington, DC 20006
`(202) 415-9213
`john@interactionlaw.com
`
`JUNE 11, 2019
`
`
`Counsel for Amicus Curiae
` OmniQ
`
`================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`
`
`1
`
`MOTION FOR LEAVE TO FILE
`BRIEF AMICUS CURIAE
`Although Petitioners, ReDigi, Inc., et al., have con-
`
`sented to the filing of this amicus brief by OmniQ, Re-
`spondent, Capitol Records, Inc., has not. OmniQ
`therefore moves pursuant to Supreme Court Rule
`37.2(b), for leave to file this amicus curiae brief in sup-
`port of Petitioners in the above captioned matter for
`the following reasons.
`
`OmniQ is the assignee of patent-pending inven-
`
`tions that would rival those of ReDigi, and which pro-
`vide a technologically different manner of shifting a
`work from one material object to another without re-
`production. OmniQ’s method was not before the Dis-
`trict Court or the Second Circuit, however, and the
`Second Circuit’s sweeping language threatens to stifle
`the development of OmniQ’s method to the detriment
`of the public. OmniQ believes it would be helpful for
`this Court to understand the broader impact of the
`Second Circuit’s holding, and why its error warrants
`certiorari.
`
`OmniQ’s patent-pending inventions were devel-
`
`oped following extensive legal research, and rely on
`case law that was never considered below or in the in-
`stant Petition. OmniQ can show that the Second Cir-
`cuit ignored the plain meaning of “reproduction,”
`choosing instead a definition that directly conflicts
`with the plain language of the Copyright Act (when
`read as a whole) and the English-language interpreta-
`tion of “reproduction” adopted by this Court and by the
`
`
`
`2
`
`Supreme Court of Canada (relying, in part, on U.S. case
`law). Also, OmniQ can demonstrate why the Second
`Circuit’s decision usurps the role of Congress by base-
`lessly assuming that well-established jurisprudence in
`the United States and Canada with respect to the “an-
`alog” transfer of the fixation of a work from one mate-
`rial object to another would not carry over to a “digital”
`transfer of the same work from one material object to
`another. That assumption is in direct contravention of
`the Copyright Act’s plain language intended to apply
`to fixation “by any method now known or later devel-
`oped,” (§ 101 definition of “copies” and “phonorecords”).
`By holding that established jurisprudence does not ap-
`ply to this particular method that was later developed,
`the Second Circuit has, instead, developed a judicial
`“solution” to a problem best left to Congress, if it exists
`at all.
`
`OmniQ was established to find a solution to the
`
`impact digital technology is having on the public ben-
`efits from the “first sale doctrine” and Sections 109 and
`202 of the Copyright Act. The partnership includes vet-
`erans of the home video rental industry who were see-
`ing the number of films available to the public shrink
`dramatically as the motion picture industry shifts
`from rental of physical DVDs (an exercise of the distri-
`bution right that is subject to Section 109 and the first
`sale doctrine) to digital delivery of the same work, but
`to a material object (e.g., the customer’s computer)
`owned by the customer, and that is not readily redis-
`tributable without parting with the entirety of the
`
`
`
`3
`
`hard drive’s library of lawfully made copies of unre-
`lated works.
`
`Recognizing that a “copy and delete” means of
`
`transferring a copy from one person to another might
`infringe the reproduction right, the OmniQ invention
`navigates the path set out in the U.S. Copyright Act to
`move the work from one medium to another without
`reproduction. The result preserves the secondary mar-
`ket available to owners of lawfully made copies created
`by licensed reproduction to the owner’s material object
`rather than by licensed reproduction to a plastic disc
`shipped by truck to the new owner.
`
`THEREFORE, OmniQ hereby requests that this
`
`Court grant its Motion for Leave to File Brief Amicus
`Curiae and that the Court accept the attached pro-
`posed brief amicus curiae in support of the position of
`Petitioners, ReDigi, et al.
`
`Respectfully submitted,
`JOHN T. MITCHELL
`Counsel of Record
`INTERACTION LAW
`1629 K Street NW
`Suite 300
`Washington, DC 20006
`(202) 415-9213
`john@interactionlaw.com
`Counsel for Amicus Curiae
` OmniQ
`
`
`
`
`
`
`
`
`
`
`JUNE 11, 2019
`
`
`
`
`
`i
`
`TABLE OF CONTENTS
`
`5
`
`Page
`TABLE OF CONTENTS ......................................
`i
`TABLE OF AUTHORITIES .................................
`ii
`INTEREST OF AMICUS CURIAE ......................
`1
`SUMMARY OF ARGUMENT ..............................
`4
`ARGUMENT ........................................................
`5
`
`I. The Second Circuit Judicially Altered the
`Plain Meaning of “Reproduce” in the Copy-
`right Act .....................................................
`A. There is no “reproduction” without mul-
`tiplication of copies ...............................
`B. Congress understood “reproduction” to
`require multiplication. ........................
` II. Digital Fixations Deserve the Same Treat-
`ment as Analog Fixations .......................... 10
` III. 1960 Doesn’t Exist on Netflix .................... 13
`CONCLUSION ..................................................... 21
`
`
`5
`
`9
`
`
`
`ii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908) ....... 14
`CM Paula Company v. Logan, 355 F. Supp. 189
`(N.D. Tex. 1973) ..................................................... 6, 7
`Entertainment Software Association v. Society of
`Composers, Authors and Music Publishers of
`Canada, 2012 SCC 34, [2012] S.C.R. 231 ............... 12
`Théberge v. Galerie d’Art du Petit Champlain
`Inc., [2002] 2 S.C.R. 336, 2002 SCC 34 (Can-
`ada) .................................................................... 7, 8, 9
`UMG Recordings, Inc. v. Augusto, 628 F.3d 1175
`(9th Cir. 2011) .......................................................... 14
`United States v. Cohen, 946 F.2d 430 (6th Cir.
`1991) ........................................................................ 20
`United States v. Sachs, 801 F.2d 839 (6th Cir.
`1986) ........................................................................ 20
`Walker v. University Books, Inc., 602 F.2d 859
`(9th Cir. 1979) .......................................................... 13
`White Music Publishing Co. v. Apollo Co., 209
`U.S. 1 (1908) ................................................ 5, 6, 7, 10
`
`
`STATUTES
`17 U.S.C. § 101 .................................................. 9, 10, 12
`17 U.S.C. § 106 .................................................... 5, 9, 12
`17 U.S.C. § 109 .................................................. 1, 13, 14
`17 U.S.C. § 202 ........................................................ 1, 13
`
`
`
`iii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`OTHER AUTHORITIES
`Keith Hirsch, The Edison CD Sampler, KEITH
`HIRSCH’S CD RESOURCE, March 30, 2008 ................ 14
`Keith Hirsch, The very rare “red” Bruce Spring-
`steen Born in The U.S.A. CD, KEITH HIRSCH’S
`CD RESOURCE, March 14, 2015 ............................... 14
`Laura M. Holson, Scarecrow Video Has Survived
`This Long. Can It Hang On?, NEW YORK TIMES,
`March 18, 2019 ........................................................ 15
`Testimony of Bonnie J.K. Richardson before the
`House Commerce Committee Subcommittee
`on Commerce, Trade and Consumer Protec-
`tion, May 22, 2001 (prepared statement on be-
`half of the Motion Picture Association of
`America) .................................................................. 20
`Zach Schonfeld, Netflix, Streaming Video And The
`Slow Death Of The Classic Film, NEWSWEEK
`(online), Sept. 15, 2017, at 6:10 AM ............. 15, 16, 17
`
`
`
`1
`
`INTEREST OF AMICUS CURIAE
`OmniQ is a partnership among video industry vet-
`
`erans to develop a lawful means fulfilling the purpose
`and effect of the “first sale doctrine” and Sections 109
`and 202 of the U.S. Copyright Act by shifting the fixa-
`tion of a work from one material object to another with-
`out reproduction.1 To that end, three of the partners
`have filed patent applications teaching their method
`(one of which has already been allowed).2
`
`These inventions provide a secure way for works
`
`fixed in one material object to be un-fixed in the origi-
`nal material object and re-fixed in a new material ob-
`ject, following well established United States case law
`and Canadian Supreme Court jurisprudence. The in-
`ventions prevent the first sale doctrine from becoming
`a dead letter when lawfully made copies have been dis-
`tributed on material objects that are no longer in use,3
`
`
`1 Only Petitioners have consented to the filing of this brief.
`
`Counsel for a party did not author this brief in whole or in part.
`No person or entity other than Amicus Curiae and its partners
`made a monetary contribution to the preparation or submission
`of this brief. The parties were notified ten days prior to the due
`date of this brief of the intention to file.
`2 Application No. 15/130,832, Digitally Lending Content
`
`Without Reproduction, has been allowed. Application No.
`15/130,825, Digitally Transferring Content Across Media Without
`Reproduction, is still pending.
`3 For example, motion pictures fixed on DVDs have been dis-
`
`tributed by the millions, and the owners have a right to privately
`perform them indefinitely, as well as to sell, gift, rent or lend
`them, but DVD technology is quickly being supplanted by new
`delivery methods, such that there are now fewer DVD players and
`reduced ability to acquire or play the DVD. But if the work fixed
`
`
`
`
`2
`
`or when the “distribution” is carried out by a licensed
`reproduction, commonly referred to as a “download,” to
`a material object on which perhaps thousands of other
`works have been fixed, effectively nullifying the pri-
`vate and public benefits of the first sale doctrine given
`that the only way to exercise the entitlement in Section
`109 to lend, sell, rent or give away a particular lawfully
`made copy of a movie fixed on a hard drive is to lend,
`sell, rent or give away all of the thousands of other fix-
`ations residing on that hard drive.
`
`The Second Circuit’s decision brings an end to the
`
`benefits of the first sale doctrine whenever the lawfully
`made copies and phonorecords are fixed on a single
`material object along with the fixation of hundreds or
`perhaps thousands of other works. By misinterpreting
`the right to “re-produce” a work in copies and
`phonorecords in a manner that applies even when no
`additional copies are created, and by refusing to apply
`longstanding “analog” jurisprudence to the “digital”
`environment, as Congress intended, the decision below
`robs the public of the benefits of digital commerce and
`secondary sales, and puts the brakes on the progress
`of science and the useful arts.
`
`Abraham Lincoln could borrow law books when he
`
`did not have the means to purchase them at the pub-
`lisher’s first sale price, requiring only the consent of
`
`in a DVD can be moved to a computer hard drive without repro-
`duction, or from one hard drive to another, all of the economic
`value to the copyright owner is preserved along with the public
`benefit of secondary dissemination of the work without the copy-
`right owner’s consent.
`
`
`
`3
`
`the owner of the books, and not the consent of the
`copyright owner. The lender needed only to pluck indi-
`vidual books from his library shelves and lend them to
`Lincoln. In terms of Article I, Section 8 of the U.S. Con-
`stitution, the book owner’s freedom to lend his books to
`Lincoln furthered the interest in wide dissemination of
`creative works of authorship.
`
`Technological advances have allowed us to com-
`
`press vast libraries onto a single material object, but
`in the process has made it untenable to exercise this
`important entitlement. No doubt Lincoln could not
`have borrowed those books if the lender was required
`to part with his entire library for the duration of the
`single loan.
`
`The outcome of this litigation could have a sub-
`
`stantial impact on the public value of the first sale doc-
`trine in advancing the constitutional purpose of the
`Copyright Act. By preventing the development of tech-
`nology to safely and securely move a fixation from one
`material object to another without re-producing the
`work in a copy or phonorecord, the decision below crip-
`ples the progress of science and the useful arts. The
`entitlement of the owner to redistribute lawfully made
`copies she owns also benefits the person who depends
`upon secondary markets because the price of a new
`pristine copy is out of reach. Although the technologi-
`cal advancements at issue here are not, technically, a
`first sale doctrine issue, OmniQ seeks to keep alive the
`benefits of the first sale doctrine by simply moving the
`fixation from one material object to another, without
`
`
`
`
`4
`
`reproduction. The Second Circuit’s ruling could outlaw
`the use of any such technology.
`
`--------------------------------- ---------------------------------
`
`SUMMARY OF ARGUMENT
`The Second Circuit’s holding contributes to a dra-
`
`matic reduction in the availability of previously dis-
`tributed and fully paid copies and phonorecords,
`increases the cost of access – or forecloses it altogether
`– for those persons most dependent upon secondary
`markets, such as copies obtained by secondhand sale,
`lending or gifting.
`
`To arrive at this devastating result, the Second
`
`Circuit misconstrued what constitutes a “copy” or
`“phonorecord,” and ignored the plain meaning of the
`word “reproduce” – by judicially eliminating the pref-
`ace “re” – such that any fixation counts as a reproduc-
`tion regardless whether there was any multiplication
`of copies. It also failed to apply existing jurisprudence
`allowing the transfer of a fixation from one material
`object to another, choosing instead to exempt “digital”
`fixations from established case law, creating sui gene-
`ris treatment in the case of digital fixations.
`
`In the music industry, members of the public are
`
`more able to access any music of their choosing, thanks
`to blanket licensing, statutory royalties and compul-
`sory licensing. Those avenues do not exist for literary
`or audiovisual works. With respect to the latter,
`wherein lies OmniQ’s expertise, the public has already
`lost access to vast libraries of motion pictures and
`
`
`
`5
`
`other audiovisual works, simply because modern tech-
`nological solutions like the one at issue here are lack-
`ing.
`
`--------------------------------- ---------------------------------
`
`ARGUMENT
`I. The Second Circuit Judicially Altered the
`Plain Meaning of “Reproduce” in the Copy-
`right Act
`Subject to Sections 107-122, Section 106(1) of the
`
`Copyright Act grants the author the exclusive right “to
`reproduce
`the copyrighted work
`in copies or
`phonorecords.” But the Second Circuit in effect substi-
`tuted “produce” for “reproduce,” skirting the normal
`English definition of the prefix “re.” That alteration of
`the English language finds no purchase in the Copy-
`right Act, where Congress clearly understood “repro-
`duce” to mean to make additional copies. Plus, it is
`contrary to this Court’s holding in White Music Pub-
`lishing Company v. Apollo Company, 209 U.S. 1 (1908).
`
`
`
`A. There is no “reproduction” without
`multiplication of copies
`This Court addressed this question over a century
`
`ago in White Music Publishing: “What is meant by a
`copy? We have already referred to the common under-
`standing of it as a reproduction or duplication of a
`thing.” 209 U.S. 1, at 17 (emphasis added). “[I]t seems
`evident that Congress has dealt with the tangible
`thing, a copy of which is required to be filed with the
`
`
`
`6
`
`Librarian of Congress, and wherever the words are
`used (copy or copies) they seem to refer to the term in
`its ordinary sense of indicating reproduction or dupli-
`cation of the original.” Id. at 16 (emphasis added).
`
`Building upon the requirement that there be some
`
`additional copies in order to infringe the reproduction
`right, it has become well established that moving the
`fixation of a work from one material object to another
`does not infringe the exclusive right to reproduce the
`work in copies and phonorecords.
`
`The seminal United States case is CM Paula Com-
`
`pany v. Logan, 355 F. Supp. 189 (N.D. Tex. 1973), which
`involved chemically lifting the fixation of an image
`from a greeting card, and moving it to a ceramic tile,
`leaving the original material object – the card stock –
`blank.
`
`The process utilized by defendant that is now
`in question results in the use of the original
`image on a ceramic plaque; such process is not
`a “reproduction or duplication”.
`
`The Court believes that plaintiff ’s characteri-
`zation of the print thus used as a decal is ap-
`propriate. Each ceramic plaque sold by
`defendant with a Paula print affixed thereto
`requires the purchase and use of an individ-
`ual piece of artwork marketed by the plaintiff.
`For example, should defendant desire to make
`one hundred ceramic plaques using the iden-
`tical Paula print, defendant would be required
`to purchase one hundred separate Paula
`
`
`
`7
`
`prints. The Court finds that the process here
`in question does not constitute copying.
`
`Id. at 191. The Supreme Court of Canada has explicitly
`followed the Logan decision while echoing this Court’s
`definition of “reproduce” in White Music Publishing:
`there can be no reproduction if the fixation is simply
`moved from one material object to another.
`
`My colleague, Gonthier J., takes the position
`that if the image were transferred from one
`piece of paper to a different piece of paper
`with no other “change”, there is a new “fixa-
`tion” and that would be “reproduction”. But in
`what way has the legitimate economic inter-
`est of the copyright holder been infringed?
`The process began with a single poster and
`ended with a single poster. The image “fixed”
`in ink is the subject-matter of the intellectual
`property and it was not reproduced. It was
`transferred from one display to another. It is
`difficult to envisage any intellectual content
`let alone intellectual property embodied in the
`piece of blank paper peeled away, or in the
`piece of blank paper substituted for it. When
`Raphaël’s Madonna di Foligno was lifted for
`preservation purposes from its original can-
`vas in 1799 under the direction of the chemist
`Berthollet and fixed to a new canvas, the re-
`sulting work was considered to be no less an
`original Raphaël.
`
`Théberge, at 338. Théberge v. Galerie d’Art du Petit
`Champlain Inc., [2002] 2 S.C.R. 336, 2002 SCC 34
`(Canada), at ¶ 38.
`
`
`
`8
`
`The historical scope of the notion of “reproduc-
`tion” under the Copyright Act should be kept
`in mind. As one would expect from the very
`word “copyright”, “reproduction” is usually de-
`fined as the act of producing additional or new
`copies of the work in any material form. Mul-
`tiplication of the copies would be a necessary
`consequence of this physical concept of “repro-
`duction”.
`
`Id. at ¶ 42. Commenting on the U.S. Copyright Act,
`Justice Binnie noted,
`
`The U.S. legislation expressly incorporates a
`definition of “derivative work,” as happens for
`example when a cartoon character is turned
`into a puppet, or a tragic novel is turned into
`a musical comedy. In such circumstances
`there is, in a sense, a “production” rather than
`a reproduction. However, the examples of
`what might be called derivative works listed
`in s. 3(1)(a) to (e) of our Act are consistent with
`the notion of reproduction because they all
`imply the creation of new copies or manifesta-
`tions of the work. In the application of the ink
`transfer method, however, there is no deriva-
`tion, reproduction or production of a new and
`original work which incorporates the respond-
`ent’s artistic work.
`
`Even if one were to consider substitution of a
`new substrate to be a “fixation”, the fact re-
`mains that the original poster lives on in the
`“re-fixated” poster. There is no multiplication
`and fixation alone is not an infringement of
`the original work.
`
`
`
`9
`
`Id. at ¶¶ 49-50. The court below failed to recognize that
`the purpose of the reproduction right is solely to pro-
`hibit the replication of the work into additional copies
`without the consent of the copyright owner.
`
`
`
`B. Congress understood “reproduction” to
`require multiplication
`Congress did not grant an exclusive right to “pro-
`
`duce” copies of a work. The copyright only covers re-
`production. The definitions contained in § 101 demon-
`strate that Congress understood “reproduce” to mean
`an increase in the number of copies of the work rather
`than every fixation of the work in a material object. In
`defining “copies” as the fixation of a work onto a mate-
`rial object from which the work could be “perceived, re-
`produced or otherwise communicated,” Congress
`added an important caveat that was necessary to avoid
`the untenable result that the distribution right would
`not apply to the material object bearing the first fixa-
`tion: “The term ‘copies’ includes the material object . . .
`in which the work is first fixed.”4 That enlargement of
`the reach of “copies” to include the original, un-repro-
`duced fixation, would have been unnecessary if the
`Second Circuit’s interpretation were correct. The
`§ 106(1) right to “reproduce” the work in copies and
`phonorecords does not include every fixation of a work
`in a material object; it only includes every fixation that
`
`4 The definition of “phonorecords” includes that same en-
`
`largement of scope to include the original, un-reproduced,
`phonorecord: “The term ‘phonorecords’ includes the material ob-
`ject in which the sounds are first fixed.”
`
`
`
`10
`
`results in an increase in the number of copies. Moving
`the fixation from one material object to another is per-
`missible. And, although these principles were devel-
`oped in the world of “analog fixations,” Congress has
`made clear that “digital fixations” should not be
`treated any differently.
`
`
`II. Digital Fixations Deserve the Same Treat-
`ment as Analog Fixations
`Over a century ago, this Court made clear that
`
`courts should not judicially enlarge the scope of the
`Copyright Act to reach new technologies not specifi-
`cally addressed by the statute. It determined that alt-
`hough it might make sense for Congress to treat
`perforated player piano rolls as copies of the musical
`work, the courts should not simply presume that Con-
`gress would have intended the alteration.
`
`It may be true that the use of these perforated
`rolls, in the absence of statutory protection,
`enables the manufacturers thereof to enjoy
`the use of musical compositions for which
`they pay no value. But such considerations
`properly address themselves to the legisla-
`tive, and not to the judicial, branch of the gov-
`ernment.
`
`White Music Publishing Company v. Apollo Company,
`209 U.S. 1, 18 (1908). In § 101 of the current Act, Con-
`gress intended to future-proof copyright protection by
`defining “copies” and “phonorecords” to include mate-
`rial objects in which the works are “fixed by any
`method now known or later developed,” and from
`
`
`
`11
`
`which the work can be “perceived, reproduced, or oth-
`erwise communicated.” Under this approach, Congress
`intended perforations on paper, grooves in a vinyl rec-
`ord, magnetic impulses on tape, and digital impres-
`sions on a digital recording medium, to all be treated
`the same as ink on paper. In essence, Congress took the
`same approach as the Supreme Court of Canada took
`when it upheld the principle of “technological neutral-
`ity.”
`
`The Board’s conclusion that a separate, “com-
`munication” tariff applies to downloads of
`musical works violates the principle of tech-
`nological neutrality. This principle requires
`that the Act apply equally between traditional
`and more technologically advanced media
`forms. There is no practical difference be-
`tween buying a durable copy of the work in a
`store, receiving a copy in the mail, or down-
`loading an identical copy using the Internet.
`ESA has already paid reproduction royalties
`to the copyright owners for the video games.
`Absent evidence of Parliamentary intent to
`the contrary, we interpret the Act in a way
`that avoids imposing an additional layer of
`protections and fees based solely on the
`method of delivery of the work to the end user.
`To do otherwise would effectively impose a
`gratuitous cost for the use of more efficient,
`Internet-based technologies. The Internet
`should be seen as a technological taxi that de-
`livers a durable copy of the same work to the
`end user. The traditional balance in copyright
`between promoting the public interest in the
`encouragement and dissemination of works
`
`
`
`12
`
`and obtaining a just reward for the creators of
`those works should be preserved in the digital
`environment.
`
`Entertainment Software Association v. Society of Com-
`posers, Authors and Music Publishers of Canada, 2012
`SCC 34, [2012] S.C.R. 231 at 232. But the Second Cir-
`cuit departed from this sound approach, plucking the
`concept of “digital files” out of thin air, and giving them
`sui generis treatment. The Second Circuit’s approach
`of treating the “digital files” as material objects would
`be akin to saying that, in the case of a literary work
`printed on paper, the material object is the ink rather
`than the paper, and in the case of a sound recording on
`a vinyl record, it is the grooves that are the material
`objects, rather than the vinyl disc itself.
`
`For example, the Second Circuit refers to “the re-
`
`sale of digital files containing sound recordings,” Pet.
`App. at 3a, whereas § 101 defines “sound recordings”
`as “works that result from the fixation of a series of
`musical, spoken, or other sounds . . . regardless of the
`nature of the material objects, such as disks, tapes, or
`other phonorecords, in which they are embodied.” Sim-
`ilarly, the court below proclaims, “Today, Plaintiffs also
`distribute their music in the form of digital files,” id.,
`despite that the § 106(3) distribution right applies only
`to copies and phonorecords, not “digital files.” With re-
`spect to whether a “digital file” can or cannot be a
`phonorecord, the Second Circuit observed, “our under-
`standing of the technology is limited, as is our ability
`to appreciate the economic implications.” Id. at 14a,
`n.10. Although it purported to “rule more narrowly”
`
`
`
`13
`
`because of its limited understanding, id., the reality is
`that its limited ability to understand the technology or
`the economic implications impeded its ability to under-
`stand that a “digital file” on its own cannot be a
`phonorecord. At issue is not whether the work was
`fixed by means of a digital file, but whether the work
`was fixed in a material object. “A copy must of neces-
`sity consist of some tangible material object upon
`which the work is ‘fixed.’ ” Walker v. University Books,
`Inc., 602 F.2d 859, 863 (9th Cir. 1979) (citations omit-
`ted).
`
`This Court should grant certiorari to address the
`
`Second Circuit’s dramatic departure from the text of
`the Copyright Act and this Court’s long-established ex-
`planation that to “copy” requires re-production or du-
`plication.
`
`
`III. 1960 Doesn’t Exist on Netflix
`
`For most of our nation’s history, copyrighted works
`have typically been published in discrete copies – ma-
`terial objects in which a single work, or a closely re-
`lated collection of works – were fixed. The Copyright
`Act’s sharp distinction between the intangible copy-
`righted work and the tangible copy of the work (§ 202)
`could be given full effect in commerce, together with
`the “first sale doctrine” and the Copyright Act’s express
`limitation on the distribution right (§ 109), which enti-
`tles owners of lawfully made copies to redistribute
`them without the consent of the copyright holder. (Sec-
`tions 109 and 202 of the Copyright Act of 1976 were
`
`
`
`14
`
`originally codified together in § 41 of the Copyright Act
`of 1909, and in § 27 of the Copyright Act of 1947.)
`
`So-called “digital copies” have been around since
`
`the days of the music CD and DAT (digital audio tape).
`Music CDs have been manufactured commercially in
`the United States since the September 21, 1984, re-
`lease of Bruce Springsteen’s Born in the U.S.A., dubbed
`by CBS as “The First CBS Records Compact Disc Made
`in the U.S.A.”5 That same day, The Edison CD Sampler
`was issued from the same plant.6
`
`Even back then, The Edison CD Sampler betrayed
`
`the publisher’s effort to restrict uses that are statuto-
`rily placed beyond the copyright owner’s control. The
`front face of the digital copy (or “digital phonorecord,”
`to be precise) carried a legal warning resembling the
`one struck down by the Supreme Court in Bobbs-
`Merrill Co. v. Straus, 210 U.S. 339 (1908): “FOR EDU-
`CATIONAL USE ONLY – NOT FOR SALE.” Although
`it is lawful for the owner of the CD to ignore the at-
`tempted nullification of § 109 with respect to digital
`copies fixed in discrete material objects (see, e.g.,
`UMG Recordings, Inc. v. Augusto, 628 F.3d 1175 (9th
`Cir. 2011)), the growing preference for copyright hold-
`ers to deliver the works digitally as reproductions
`
`
`5 Keith Hirsch, The very rare “red” Bruce Springsteen Born
`
`in The U.S.A. CD, KEITH HIRSCH’S CD RESOURCE, March 14,
`2015, available at http://www.keithhirsch.com/the-very-rare-red-
`bruce-springsteen-born-in-the-u-s-a-cd.
`6 Keith Hirsch, The Edison CD Sampler, KEITH HIRSCH’S CD
`
`RESOURCE, March 30, 2008, available at http://www.keithhirsch.
`com/the-edison-cd-sampler.
`
`
`
`15
`
`“downloaded” to the copy owner’s own hard drive is al-
`ready undermining the benefits of the first sale doc-
`trine and its codification since 1909. The delivery
`technology itself is being used, intentionally or not, to
`eliminate secondary markets for sales, rentals and
`gifts that millions of Americans depend upon daily, be-
`cause they cannot afford the price of a “new” copy.
`
`The Second Circuit’s holding is not limited to
`
`phonorecords of sound recordings. Both the Second
`Circuit’s holding and OmniQ’s patent-pending technol-
`ogy would apply to literary works and audiovisual
`works as well. With respect to the latter, the public’s
`access to movies is shrinking dramatically. While there
`may be enough movies available to find something
`worth watching, the breadth of choice in movies was
`many times higher 20 years ago than it is today.
`
`In their heyday, neighborhood video stores might
`
`have carried tens of thousands of titles. Today, rela-
`tively few video rental stores remain. See, e.g., Laura
`M. Holson, Scarecrow Video Has Survived This Long.
`Can It Hang On? NEW YORK TIMES, March 18, 2019,
`available at https://www.nytimes.com/2019/03/18/
`business/scarecrow-video-seattle.html (“The store in
`Seattle has more than 132,000 titles, many of them not
`available on the internet, or anywhere else.”). Even
`Netflix, which had been a fierce competitor of local
`video retailers with its mail order DVD rentals and
`deep catalog of older movies, has been dramatically
`cutting back on its selections as it shifts its business
`model to streaming movies on demand. As observed by
`Zach Schonfeld, Netflix, Streaming Video And The Slow
`
`
`
`16
`
`Death Of The Classic Film, NEWSWEEK (online), Sept.
`15, 2017, at 6:10 AM, available at http://www.news
`week.com/2017/09/22/netflix-streaming-movies-classics-
`664512.html, “in the vast world of Netflix streaming,
`1960 doesn’t exist.” Schonfeld goes on to note that 1960
`was the year Alfred Hitchcock’s Psycho was released,
`along with Billy Wilder’s The Apartment, and Stanley
`Kubrick’s Spartacus:
`
`There’s
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