THE INTERNET LAW BULLETIN

THE PIANOLA ROLL:

A PRECURSOR TO ?

DR MATTHEW RIMMER

LECTURER

FACULTY OF LAW

THE AUSTRALIAN NATIONAL UNIVERSITY

ACIPA, Faculty Of Law,

The Australian National University, Canberra, ACT, 0200

THE PIANOLA ROLL:

A PRECURSOR TO KAZAA?

DR MATTHEW RIMMER

INTRODUCTION

In 1899, a court ruled in the matter of Boosey v. Whight that the reproduction of perforated player piano rolls did not infringe the copyright protecting sheet music. 1

A century later, in the case of Universal Records v Sharman License Holdings Pty Ltd, the barrister, Robert Ellicot, invoked this precedent in response to allegations that the file- sharing network, Kazaa, was engaged in copyright infringement. The barrister told the Federal

Court of : "It will be our submission in this case that we are exactly in that position now in relation to sound recordings."2 Ellicot argued: "That is to say that, however you describe an MP3 file on a computer hard drive - it is not a copy of a sound recording." 3 The barrister maintained that an "infringing copy has to be a sound recording", and said his clients are further removed from liability by the fact that they are not responsible for uploading the

 Matthew Rimmer, BA (Hons)/ LLB (Hons) (ANU), PhD (UNSW), is a Lecturer at ACIPA, the Faculty of Law, the Australian National University.

1 Boosey v White [1899] 1 Ch. 836.

2 Nicholas Kohler. "Kazaa's New Legal Weapon: The 'Piano Roll' Defence. Tells Universal Music MP3

Files Same as 1863 Device", The Financial Post (Canada), 29 May 2004, p 1.

3 Nicholas Kohler. "Kazaa's New Legal Weapon: The 'Piano Roll' Defence. Tells Universal Music MP3

Files Same as 1863 Device", The Financial Post (Canada), 29 May 2004, p 1. songs.4

However, some have thought that this historical analogy with the pianola roll to be a contingent one. As journalist Nicholas Kohler comments: "Mr. Ellicot's historical analogy is ironic given the otherwise vast chasm separating the sheet music publishers of yesteryear from today's 'virtual' operations."5 It has been suggested that the connection between the pianola roll and the peer to peer network is far-fetched and tenuous.

This article considers whether the historical precedents dealing with pianola roll are both relevant and pertinent to the litigation over the peer to peer network, Kazaa. How might one interpret this legal stratagem? Is this a flight of fancy? A stretch of the imagination? A legal frolic, if you will? Or should this legal tactic be taken seriously? Should credit be due for the creativity and ingenuity of this case? Moreover, it is worthwhile considering whether this daring act of historical revisionism will be successful.

1. KENTUCKY BABE: THE PIANOLA ROLL

The player piano was invented by Henri Fourtneaux of France in 1863, and publicly exhibited at the Philadelphia Centennial Exposition in 1876. It allowed for the recording of piano music by accomplished pianists, whose performances were recorded as holes punched into rolls of paper, which could then be played back in player pianos to reproduce the original performance.

The piano player posed a challenge to copyright holders of musical works in the nineteenth

4 Abby Dinham. "Sharman Pleads 100-Year-Old Defence", ZDNet Australia,19 May 2004, http://www.zdnet.com.au/news/business/0,39023166,39148079,00.htm

5 Nicholas Kohler. "Kazaa's New Legal Weapon: The 'Piano Roll' Defence. Tells Universal Music MP3

Files Same as 1863 Device", The Financial Post (Canada), 29 May 2004, p 1. century.

A century ago, copyright owners brought legal action against the manufacturers of the pianola rolls. In Boosey v White, the proprietors of the copyright in the music of three songs, known as "My Lady's Bower," "The Better Land," and "The Holy City," brought a legal action to restrain the sale of perforated sheets of paper which could be used to play certain instrument songs on a mechanical wind instrument called an "Aeolian".6

Famously, Stirling J was there held that these perforated rolls did not infringe the

English copyright act protecting sheets of music: "In my judgment the Act of 1842, fairly construed, does not prevent the defendants from making or selling these rolls, so far as they contain perforations."7

Upon appeal Lindley, Master of the Rolls, held that "the plaintiffs have no exclusive right to the production of the sounds indicated by or on those sheets of music; nor to the performance in private of the music indicated by such sheets; nor to any mechanism for the production of such sounds or music."8

In White-Smith Music Publishing Company v Apollo Company, the Supreme Court of the United States held that the Apollo Company's piano rolls did not infringe copyright vested in two musical works - "Little Cotton Dolly" and "Kentucky Babe" - which was held by the

White-Smith Music Publishing Company.9

Day J emphasized the need for copies of musical works to be fixed in a material form:

A musical composition is an intellectual creation which first exists in the mind of the composer; he may

6 Boosey v White [1899] 1 Ch. 836.

7 Boosey v White [1899] 1 Ch. 836.

8 Boosey v White [1900] 1 Ch. 122

9 White-Smith Music Publishing Company v Apollo Company (1908) 209 US 1 play it for the first time upon an instrument. It is not susceptible of being copied until it has been put in

a form which other can see and read. The statute has not provided for the protection of the intellectual

conception apart from the thing produced, however meritorious such conception may be, but has provided

for the making and filing of a tangible thing, against the publication and duplication of which it is the

purpose of the statute to protect the composer.10

The Supreme Court of the United States emphasized that the case would also be "applicable to the cylinder of a music box, with its mechanical arrangement for the reproduction of melodious sounds, or the record of the graphophone, or to the pipe organ operated by devices similar to those in use in the pianola."11 It commented that Congress would need to pass legislation if it wanted to protect such subject matter.

In response to the decision, Congress amended the law in 1909 to ensure that composers would be paid for the "mechanical reproductions" of musical works.12 However it also gave recording artists a right to record the music, at a price set by Congress, once the composer allowed it to be recorded once. Lawrence Lessig notes that Congress was keen to promote competition through the provision of compulsory licensing: "Its fear was the monopoly power of rights holders, and that that power would stifle follow-on creativity."13 He observes of this compromise: "The law soon resolved this battle in favor of the composer and the recording

10 White-Smith Music Publishing Company v Apollo Company (1908) 209 US 1

11 White-Smith Music Publishing Company v Apollo Company (1908) 209 US 1

12 Paul Goldstein. Copyright's Highway: From Gutenberg to the Celestial Jukebox. Stanford: Stanford

University Press, 2003, p. 51-54; Edward Samuels. The Illustrated Story of Copyright. New York: St Martin's

Press, 2000, p 33-37; and Lawrence Lessig. Free Culture: How Big Media Uses Technology And The Law To

Lock Down Culture And Control Creativity. New York: Penguin Books, 2004, p 55-58.

13 Lawrence Lessig. Free Culture: How Big Media Uses Technology And The Law To Lock Down Culture

And Control Creativity. New York: Penguin Books, 2004, p 56. artist."14

2. OK COMPUTER: SOFTWARE, CD-ROMS, AND DATABASES

The precedents dealing with the pianola rolls should not be dismissed as merely historical curiosities. The cases have been cited in a range of modern scenarios in Australia to deal with such technologies as computer programs, CD-Roms, and databases.

Famously, in Computer Edge Pty Ltd v Apple Computer Pty Ltd, the High Court held that the Apple source codes were literary works within the meaning of the Act.15 Recalling the precedent of the pianola roll, Gibbs CJ commented during the course of his reasoning: "To keep copyright law abreast of developing technology is no new problem, as the decision in

Boosey v Whight shows."16 His Honour observed: "Although it would be no doubt right to give the Copyright Act a liberal interpretation, it would not be justifiable to depart altogether from its language and principles in an attempt to protect the products of scientific and technological developments which were not contemplated, or only incompletely understood, when the statute was enacted."17 Applying the decision in Boosey v Whight, Gibbs CJ - along with Brennan J - held that the object code of computer programs could not be protected as a literary work. His Honour lamented: "It may be regretted that the respondents have no remedy in copyright against the appellants who pirated their programs."18

14 Lawrence Lessig. Free Culture: How Big Media Uses Technology And The Law To Lock Down Culture

And Control Creativity. New York: Penguin Books, 2004, p 56.

15 Computer Edge Pty Ltd v Apple Computer Pty Ltd (1986) 6 IPR 1.

16 Computer Edge Pty Ltd v Apple Computer Pty Ltd (1986) 6 IPR 1 at 10.

17 Computer Edge Pty Ltd v Apple Computer Pty Ltd (1986) 6 IPR 1 at 10.

18 Computer Edge Pty Ltd v Apple Computer Pty Ltd (1986) 6 IPR 1 at 10. Of course, it is debatable whether such jurisprudence is still influential. In Desktop

Marketing Systems Pty Ltd v Telstra Corporation Ltd, the Full Federal Court considered the decision in Boosey v Whight in the context of a case involving the copyright protection of the white pages and the yellow pages.19 Lindgren J emphasized that section 10 of the Act provides that the "material form" in relation to a work "includes any form (whether visible or not) of storage from which the work ... or a substantial part of the work ... can be reproduced."20 His

Honour observed that the 1984 amendments to the Copyright Act 1968 (Cth) were intended to resolve any difficulties surrounding the material form of computer programs: "Absent that amendment, Telstra could not establish its case as pleaded."21 It noted: "The reason is that

Desktop's CD-ROM products do not resemble, or 'contain' anything that resembles, any of

Telstra's three literary works or any part of any of them (cf Boosey v Whight [1900] 1 Ch 122,

Cuisenaire v Reed [1963] VR 719, Computer Edge)."22

In Kabushiki Kaisha Sony Computer Entertainment v Stevens, Finkelstein J of the Full

Court of the Federal Court cites the Supreme Court of the United States decision of White-

Smith Music Publishing Company v Apollo Company in his consideration of the requirement that a copyright work be fixed in a material form.23 His Honour notes that a work must be fixed because "[i]t is not susceptible to being copied until it has been put in a form which others can see and read."24 Finkelstein J observed: "Although the requirement of fixation initially

19 Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited (2002) 55 IPR 1.

20 Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited (2002) 55 IPR 1 at 58.

21 Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited (2002) 55 IPR 1 at 58.

22 Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited (2002) 55 IPR 1 at 58.

23 Kabushiki Kaisha Sony Computer Entertainment v Stevens (2003) 57 IPR 161.

24 Kabushiki Kaisha Sony Computer Entertainment v Stevens (2003) 57 IPR 161 at 215. applied only to the original 'copy' of the work, it is now also a criterion for reproduction."25

The judge concluded that the meaning of 'material form' must keep abreast with the digital age:

"The legislation should also be construed in a way that accommodates scientific changes."26

In Grain Pool of Western Australia v the Commonwealth, the High Court discusses the larger question of whether regimes of intellectual property should accommodate new technologies.27 Kirby J observes: "The principal inventions of the century, which include flight, applied nuclear fission, informatics and biogenetics were all undiscovered, and for the most part unconceived, in 1900."28 He maintains: "Yet the Constitution certainly envisaged that the Commonwealth was entering an age of special technological inventiveness."29 Such a perspective displays a judicial enthusiasm to expand the categories of subject matter protected under the regimes of intellectual property in order to deal with new scientific developments.

3. THE HONEY PALACE: THE PEER TO PEER NETWORK

Over the last few years, the recording industry and motion picture strategies have taken legal action against the peer to peer network Kazaa in a number of jurisdictions - including Europe, the United States of America, and most recently Australia.30

25 Kabushiki Kaisha Sony Computer Entertainment v Stevens (2003) 57 IPR 161 at 215.

26 Kabushiki Kaisha Sony Computer Entertainment v Stevens (2003) 57 IPR 161 at 215.

27 Grain Pool of Western Australia v Commonwealth (2000) 46 IPR 515.

28 Grain Pool of Western Australia v Commonwealth (2000) 46 IPR 515 at 550.

29 Grain Pool of Western Australia v Commonwealth (2000) 46 IPR 515 at 550.

30 Todd Woody. "The Race To Kill Kazaa", Wired Magazine, February 2003, Issue 11 (2), p. 104-107,

138, URL: http://www.wired.com/wired/archive/11.02/kazaa.html Legal proceedings were initiated against the original owner of Kazaa, Nikolas

Zennstrom, and his company Kazaa BV in the jurisdiction of the Netherlands.31 However, such action has proved to be unsuccessful for the copyright owners. Legal action for copyright infringement was launched against the new operators of Kazaa, the Sharman Networks, and its ally, Brilliant Digital Entertainment, of the United States. The Federal Court has recognised that it has jurisdiction over Sharman Networks, even though it was incorporated in and managed in Australia.32 Yet, in a separate case, it also acknowledged that peer to peer networks such as Grokster and Streamcast could be protected by the defence of fair use because they were capable of a substantial non-infringing uses.33

Finally, the record industry has brought independent legal action against Sharman

Networks and Brilliant Digital Entertainment in the jurisdiction of Australia.34 It obtained a number of Anton Pillar orders in raids against the premises of the companies, their executives, and various intermediaries such as universities, Internet service providers, and telecommunication carriers. The litigation promises to be a rigorous test of the Copyright

Amendment (Digital Agenda) Act 2000 (Cth).

The counsel for the music industry has emphasized that "there is in Australia no right

31 Kazaa won the appeal in the Kazaa v Buma and Stemra (unreported, 28 March 2002, Amsterdam Court of Appeal): http://www.eff.org/IP//P2P/BUMA_v_Kazaa/, as well as the final decision in Buma and Stemra v

Kazaa (unreported, 18 December 2003, the Dutch Supreme Court). For a discussion of this litigation, see Gert-

Jan Van Bergh. "Case Comment: Copyright - File Sharing Service", Entertainment Law Review, 2002, Vol. 13

(6), p. 77-78; Alex Morrison. "Case Comment: Kazaa v Buma and Stemra", European Intellectual Property

Review, 2002, Vol. 24 (8), p. 130-131; and "Dutch Supreme Court Dismisses Suit Against Kazaa", http://news.zdnet.co.uk/business/0,39020645,39118691,00.htm

32 Metro-Goldwyn-Mayer Studios Inc. v Grokster Ltd (2003) 243 F.Supp.2d 1073.

33 Metro-Goldwyn-Mayer Studios v Grokster Ltd. (2003) 259 F.Supp.2d 1029.

34 Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2004] FCA 183. of private copying of copyright sound recordings."35 He stressed that "it is an infringement of copyright for an individual to 'rip' (copy) the content of a copyright commercial CD, or to download a digital music file that is a copyright sound recording, unless specifically authorised to do so."36

In Universal Records v Sharman Networks, Robert Ellicot relies upon the 1899 case of

Boosey v. Whight to challenge the assertion of copyright owners that there is in Australia no right of private copying of copyright sound recordings.37 He suggests that consumers remain at liberty to make copies of sound recordings on personal computers, without fear of infringing copyright law. The barrister thus tries to fend off accusations from copyright owners that it is engaged in sordid and avaricious piracy. He emphasized that the courts can only act within the existing statutory framework, and cannot engage in judicial creativity to protect copyright owners against what they consider to be piracy.

Of course, this case will raise wider issues about copyright law and the digital environment. Questions of jurisdiction and corporate identity could arise, as in the litigation in the United States. One would expect that there will be a serious examination of whether

Sharman Networks authorised copyright infringement on its networks. Robert Ellicot has observed: "My client's not the uploader. We don’t have anything to do with it and that uploader on a worldwide Web could be in Bolivia, could be in South Africa."38 He added that the uploader of the music files that was shared on the Kazaa network must "be in Australia for it

35 Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2004] FCA 183.

36 Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2004] FCA 183.

37 Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2004] FCA 183.

38 Abby Dinham. "Sharman Pleads 100-Year-Old Defence", ZDNet Australia,19 May 2004, http://www.zdnet.com.au/news/business/0,39023166,39148079,00.htm to be an infringement."39 There could be a consideration of the operation of the defence of fair dealing in the digital environment. Sharman Networks will emphasize that the peer to peer network can be used for the distribution of authorised copyright works - such as the work of the Australian independent band, The Honey Palace.40

There has been judicial consideration of the argument that evidence seized from

Sharman's premises may not be admissible, arguing that the raids undertaken by copyright owners were in breach of Australia's Telecommunications (Interception) Act 1979 (Cth).41

Moreover, there have been arguments by copyright owners that Sharman Networks had breached the Trade Practices Act 1974 (Cth) and fair-trading laws by engaging in misleading and deceptive conduct.42 Undoubtedly, remedies will be important. Will the court allow Kazaa to operate if it finds that the peer to peer network has been involved in copyright infringement?

Moreover, there could be further quarrelling over the use of Anton Pillar Orders.43

For its part, Sharman Networks would prefer for such litigation to be resolved by legislative reform. Harking back to the political solution devised to accommodate the pianola roll within the marketplace, the company expounds the need for the legislature to provide compulsory licensing in respect of the digital distribution of musical works and sound recordings. Lawrence Lessig draws historical parallels between the historical debate over the

39 Abby Dinham. "Sharman Pleads 100-Year-Old Defence", ZDNet Australia,19 May 2004, http://www.zdnet.com.au/news/business/0,39023166,39148079,00.htm

40 Nikki Hemming. "Bullies Turn Their Backs On The Future", The Australian Financial Review, 8

February 2004.

41 Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2004] FCA 934; and Tony Smith.

"Aussie Judge Sets Kazaa Trial Date", The Register, 2 July 2004.

42 Patrick Gray. "Sharman Shuffles Legal Team", Wired News, 15 April 2004.

43 Brilliant Digital Entertainment Pty Ltd v Universal Music Australia Pty Ltd [2004] FCA 448. piano roll and the contemporary discussion of peer to peer network: "These arguments have familiar echoes in the wars of our day."44 He proposes that a scheme of compulsory licensing may well be appropriate for modern technologies - such as MP3 files distributed on peer to peer networks.

CONCLUSION

The lawyers for Sharman Networks draw analogies between the pianola roll and the peer to peer network for a number of strategic reasons. They hope to provide historical legitimacy and respectability for Kazaa by placing the software in a tradition of revolutionary technologies - starting with the pianola roll and ending up with the photocopier and the VCR recorder. They seek to rebut the arguments of copyright owners that consumers cannot legally copy sound recordings; and lay the foundation for future policy reform of copyright law in the digital era.

It remains to be seen whether such arguments will persuade the Federal Court of

Australia in the trial set for November 2004. The survival of Sharman Networks will depend upon the outcome of the litigation brought by the music industry. The company also faces a serious challenge from two commercial competitors - it is losing market share to the latest generation of peer to peer networks such as eDonkey, BitTorrent and Earth Station 5;45 and at the same time, it is facing stiff competition from authorised digital download distributors such as iTunes and Napster 2.0.

Ironically, the peer to peer network Kazaa may become obsolete, and suffer the same fate as the pianola roll - the twilight existence of a museum piece.

44 Lawrence Lessig. Free Culture: How Big Media Uses Technology And The Law To Lock Down Culture

And Control Creativity. New York: Penguin Books, 2004, p 55-58.

45 John Borland. "Does Kazaa Matter?", CNET News, 30 June 2004.