17 December 2016


'The Questionable Origins of the Copyright Infringement Analysis' by Shyamkrishna Balganesh in (2016) 68 Stanford Law Review comments
Central to modern copyright law is the test for determining infringement, famously developed by Judge Jerome Frank in the landmark case of Arnstein v. Porter. The “Arnstein test,” which courts continue to apply, demands that the analysis be divided into two components: actual copying — the question whether the defendant did in fact copy — and improper appropriation — the question whether such copying, if it did exist, was unlawful. Somewhat counterintuitively, though, the test treats both components as pure questions of fact, requiring that even the question of improper appropriation go to a jury. This jury-centric approach continues to influence modern copyright law and is responsible for the subjective and unpredictable nature of the infringement analysis in copyright infringement lawsuits. Examining the memoranda, correspondence, and extrajudicial writings of the three judges who decided the Arnstein case reveals that the court’s decision to empower the jury was driven almost entirely by Judge Frank’s unique legal philosophy — his skeptical views about judicial factfinding and his desire to control lower court decisionmaking. Characterizing the entire infringement analysis as a purely factual one provided him with a perfect mechanism for giving effect to his skepticism. The Arnstein test thus had very little to do with substantive copyright law and policy, a reality that copyright jurisprudence has thus far ignored altogether in its continuing affirmation of the opinion’s framework. This Article disaggregates the complex issues that were at play in Arnstein to show how the opinion was rooted in a dystopian vision of the adjudicative process that has since come to be universally repudiated and argues that it may well be time for copyright jurisprudence to reconsider its dogmatic reliance on Arnstein, thereby freeing copyright law from one of its best-known malaises.
Balganesh argues
The Arnstein opinion itself says very little about its reasons for according juries such a central role in what is unquestionably a complex determination. What makes this omission in the opinion doubly perplexing is the reality that the author of the majority opinion, Judge Jerome Frank, was an outspoken and acerbic critic of the jury system. A well-known legal realist, Judge Frank devoted many hours of his nonjudicial work to criticizing the jury system in various books and articles. The practice of allowing a jury to decide what was in effect “its own ‘law’ in each case” was to Judge Frank among the greatest scourges of the American system of adjudication, since it contributed to unpredictable “jury-made law,” which often bore no connection to actual rules of law. Judge Frank’s lifelong distaste for juries and his careful identification of the various malaises promoted by the jury system are therefore hard to reconcile with the overwhelming confidence in juries that he exudes in Arnstein, a confidence that continues to haunt copyright law and practice to this day.
This Article shows that the Arnstein court’s decision to rely on juries for the infringement analysis had very little to do with copyright law or policy. The Arnstein formulation was hardly a considered decision about the values at stake in the copyright infringement analysis but instead almost entirely the product of Judge Frank’s well-developed legal philosophy, which led him to an approach that minimized the role of lower court judges in the infringement analysis and significantly curtailed their ability to rely on issues of law to decide cases. Considerations of copyright law were for the most part entirely secondary to the court’s decision. While scholars (and, on occasion, courts) have criticized the Arnstein court’s analytical framework, hardly anyone has examined exactly why the majority opinion chose to go down the road that it did.
Understanding Arnstein and its legacy requires appreciating the unique worldview of the majority opinion’s author, Judge Jerome Frank, who held strong views about legal rules and the centrality of facts to adjudication. A close reading of the opinions in the case; an examination of the archival memoranda, draft opinions, and correspondence between the judges; and an analysis of the judges’ various contemporaneous extrajudicial writings tell a complex story about the framing of the court’s opinion and its decision to rely on the jury to assess the legality of a defendant’s copying. In the end, this story reveals that the Arnstein opinion remains a true epitome of legal realism, as famously and controversially articulated and advanced by Judge Frank. This reading even suggests that Arnstein’s canonical status in copyright jurisprudence may merit serious reconsideration.
Arnstein is today taken to have decided an important substantive rule relating to the elements of an actionable copyright infringement claim. In actuality, the majority opinion spends little time on copyright principles and devotes most of its attention to an important procedural question: the appropriate standard for summary judgment. This can be explained by the majority’s discomfort with the lower court opinion. The district court in the case granted the defendant’s motion for summary judgment because the judge refused to believe the plaintiff’s account of the facts. In his opinion finding for the defendant, the district court judge specifically alluded to the plaintiff’s prior record of litigiousness and went on to characterize the plaintiff’s claims as “fantastic.” To the majority in Arnstein, the district court’s seeming reliance on the plaintiff’s prior filings was highly problematic, since it suggested that the judge failed to fully consider the merits of the particular case at hand. What was additionally troublesome to the majority, however, was its intuitive sense that the two works at issue shared some level of similarity, as revealed in the judges’ private correspondence. The majority further felt that this intuition necessitated something more than a summary disposal of the case. Reversing the district court’s grant of summary judgment to ensure that this intuition received due attention upon remand required a fair bit of guile. Without ever mentioning that his disagreement with the lower court was on the facts, Judge Frank devised an approach that would allow his version of the facts to be given due consideration. Instead of simply reversing the district court and remanding for another possible decision on summary judgment, Judge Frank sent the case back to the lower court with specific instructions, not only as to whom the factfinder was meant to be (i.e., the jury), but also as to the appropriate steps and standards to be employed during the factfinding process. While the first of these may have been procedurally desirable to avoid summary judgment, the second was altogether unnecessary since the lower court had not even reached the issue of improper appropriation when it granted summary judgment on the question of copying (access).
Judge Frank thus deftly intermingled both substantive and procedural rules, thereby enabling the jury to test his interpretation of the factual record. Through such maneuvering, he effected a reversal that was, in the end, purely about the facts. But in so doing, he created an all-important copyright law rule: determining whether copying is improper is a subjective factual question for the jury, rather than a legal question with its own normative standard.
Arnstein is perhaps a prime example of a hard case making bad law. Judge Frank’s focus on the procedural aspects of the case in order to ensure the plaintiff received a fair hearing muddied the copyright issues at stake by suggesting that the decision to involve juries in the copyright infringement analysis was a considered point of copyright law. Indeed, it is for this anomalous reason that even though the standard for summary judgment enunciated in Arnstein has since been overruled, copyright law—relying on Arnstein and its rich lineage—continues to accord juries a primary role in the infringement analysis. Ironically, in an opinion handed down a mere five days after Arnstein, Judge Frank himself illustrated his comfort in making copyright infringement determinations without any jury at all, a reality that has gone largely unnoticed. The court’s procedural maneuverings in Arnstein — maneuverings designed to grant Ira Arnstein a jury trial—have instead assumed a life of their own. Appreciating the interwoven factual, procedural, substantive, and theoretical issues that were at play in Arnstein sheds new light on its importance within the copyright canon. Indeed, it raises the distinct possibility that as a principled normative matter — driven by copyright’s utilitarian and constitutional goals — there may be little reason to treat all aspects of the infringement analysis as purely factual questions for a lay jury. That position was driven in large measure by Judge Frank’s legal philosophy, which he applied to the facts of the case before him and much of which has since been soundly repudiated in American legal thinking. There is thus good reason to question the wisdom of continuing to provide juries with primary control over the question of infringement in the manner suggested by Arnstein. Scholars have over the years voiced their skepticism of the Arnstein two-step test and its seemingly naive belief in the competence of lay juries to understand the complexities of copyright law. Yet few have seriously investigated the reasons for this naiveté. A richer understanding of Arnstein’s mistaken legacy suggests that it might well be time for courts to seriously revisit and rationalize copyright law’s infringement analysis.
The argument in this Article unfolds in four parts. Part I begins with a discussion of Ira Arnstein’s copyright claim against the defendant, Cole Porter, and a close reading of the three principal opinions in the case—one from the district court and two (the majority and the dissent) from the Second Circuit. It closes with a brief discussion of how courts have interpreted and adopted Arnstein over the years, illustrating the case’s canonical status in copyright law. Part II introduces the legal philosophies and views of the judges who heard the case. In it, we see how Judge Frank brought to the case his controversial views about the role of courts, rule skepticism, factfinding in trials, and the appropriate use of summary judgment, which played off of the views and opinions of the other judges in the case. Part III reconstructs the Arnstein opinion against the backdrop of these philosophies and the judges’ own archival documents (draft opinions, conference memoranda, and private correspondence) to produce a more nuanced and textured image of the case and its contributions to copyright law. Part IV then moves to the prescriptive and argues that, with the rejection of Judge Frank’s overarching philosophy in Arnstein, it may well be time for copyright law to abandon its doctrinaire conformity to the Arnstein formulation.