The O’Connor Papers: A Behind-the-Scenes Look at the Making of Three Supreme Court Copyright Decisions

The Ninth Circuit had found that non-commercial private video recordings of television programs infringed the copyright in the programs, and that Sony was partly responsible for this infringement because it was aware that the Betamax machines it produced could be used to reproduce these programs. In a 5-4 decision written by Judge Stevens, the Supreme Court reversed the Ninth Circuit’s decision, holding that consumer “time-shifting” of television programming was a fair use, and that Sony was not a complicit infringer because its Betamax machines suitable for a substantial non-infringing use: this is time-shifting.

Justice Thurgood Marshall paper, when it was opened to the public after his death, it revealed that Judge O’Connor had provided the casting vote for the Court’s decision. At the Supreme Court’s internal conference after the oral argument in 1983, a majority of the justices, including Judge O’Connor, appeared to support the Ninth Circuit’s finding that Sony contributed to copyright infringement. However, after encountering problems with Judge Blackmun’s draft opinion, Judge O’Connor began working with Judge Stevens, who wrote an opinion supporting the reversal. Ultimately, she joined his opinion, and Judge Stevens needed five votes to reverse the Ninth Circuit.

In addition to the materials found in Judge Marshall’s papers, Judge O’Connor’s file contains a May 19, 1982 memo from one of her law clerks regarding whether to grant Sony’s certificate. petition. The memo states that “there can be no doubt that this is a very important matter. The size of the VTR industry, the use of VTRs by millions of Americans, and the threat the Court of Appeals decision poses to the industry makes this a case the Court may want to grant.” The memo continues that on the other hand, “there is no square conflict that requires resolution.” Further, “the CA’s decision does not appear unreasonable in some respects.” Furthermore, “the strongest argument against appropriation in this case is that Congress is considering legislation to solve the problem. If the Court were to dismiss the case, it would retain the option to review the CA’s decision after remand. By thus delaying review, the Court would give Congress an opportunity to pass legislation directly targeting VTRs.” The clerk concludes: “On balance, the Court may well deny this point, hoping that Congress will amend the copyright law before the remand of the case to the (District Court) is completed. At that point, the Court would be entitled to grant the case because of its importance.”

Additionally, the memo notes that 20 amicus briefs have been filed. Briefs from “retailers, VTR manufacturers and suppliers of VTR accessories” support the certification. petition, highlighting “the importance of the case to the VTR industry.” The memo refers to a letter from a group of consumer groups “claiming that the First Amendment interests of television viewers are at stake.” The memo notes that “this letter is particularly interesting because it contains a number of political cartoons inspired by the Betamax decision.” The memo lists opposing amicus briefs, including for CBS, the Motion Picture Association and writers’ associations. The memo notes that some amicus briefs “add a few useful points.” The Ad Hoc Copyright Committee, for example, “explains that ‘VTRs are used to record programs on educational issues by teachers and librarians.’ The Consumer Electronics Group emphasizes that VTRs have apparently unacceptable uses beyond reproducing copyrighted material, such as time shifting (so a viewer can see a program at a different time), putting together home videos, and playing pre-recorded programs recorded in different stores for sale. ”

Judge Marshall’s papers showed that Judge O’Connor did not follow the advice of her law clerk and voted to grant the certificate. Because only four judges cert. (Burger, Stevens, Blackmun and O’Connor), which Judge O’Connor opposed. as its clerk suggested, the Court would not have heard the case; a certificate of award. requires four votes in favor. This would allow the Ninth Circuit’s decision to stand.

Judge O’Connor’s file also contains a memo prepared by a law clerk before oral argument in January 1983. On the first page of the memo, Judge O’Connor hand-wrote a note that appears to summarize her view of the case to understand after reading the file. bench memo: “Home use is simply not a productive use for purposes of copyright law. The factors for fair use only come into play when there is productive use.” This note summarizes the memo’s discussion of fair use, and reflects the Ninth Circuit’s discussion of fair use, as well as that of Blackmun’s dissent. Justice Stevens rejected this productive use theory of fair use in footnote 40 of his opinion to the Court.

The bank memo contains other interesting comments. The clerk notes that “this case has an unfortunate aspect and an unpleasant aspect.”

The unfortunate thing about this case is that the case law on fair use has been fairly well established for decades, without this Court providing any guidance. The Court must now decide the first fair use case in its history, and its decision must necessarily have some far-reaching consequences for fair use theory in general (i.e. audio recordings), even though Congress will The specific situation involved here is likely to be addressed by law. the next two years….

What’s troubling about this case is that, contrary to popular belief, Congress was not aware of this problem in 1976. Although Sony began marketing the Betamax in 1975, Sony had been marketing a VCR for commercial purposes since 1965. the VCR problem. It appears that they very deliberately avoided discussing and resolving the issue and its implications for fair use so that the courts would decide the issue.

Beyond the Clerk’s naivety about how Congress operates, the Clerk recognized a problem that persists to this day: Congress’s inability to address new technologies in a timely manner.

The clerk also advised this

While I will ultimately conclude that (Universal) should prevail, I strongly urge that the Court not use this case as a vehicle for examining copyright law in general. Instead, I recommend that an affirmation of CA9 be written in a very narrow manner so that the Court does not succeed in “freezing” the meaning of the fair use doctrine. Specifically, I believe that the Court should declare that its possession is limited only to the general fair use exemption for video recordings, and that possession does not mean that video recordings can never be a fair use or that its possession in any way applies to audio recordings. which may be treated differently for historical and other reasons.

While turning from fair use to the issue of contributory infringement, the clerk wrote that Sony’s and the court’s reliance on the patent law’s core trade article doctrine is “bizarre” because the VCR is not capable of substantially -infringing use. Unlike cameras and photocopiers that are used for substantial, non-infringing activities, “a VCR is manufactured, advertised, and sold for the purpose of recording television programs, most of which are copyrighted.”

Although Judge O’Connor took a position at the conference consistent with the bench memo in support of confirmation, she ultimately changed sides and joined Judge Stevens’ opinion in reversing the Ninth Circuit. Considering the extent to which the opposing memo cert. and the bench memo supported the Ninth Circuit’s decision, the evolution of Judge O’Connor’s thinking is all the more remarkable.