Bar Journal - Fall 2005
CRIMINAL THEFT OF AN IMAGE: State v. Nelson and Federal Copyright Law
By: Olli S. Baker
The New Hampshire Supreme Court recently affirmed a conviction in criminally misappropriated photographic images, where the defendant was charged with violating a state theft statute. Unfortunately, federal copyright law enacted in 1976 had pre-empted the statute in question.
The Nelson Case
The facts are uncontested. The defendant Nelson, a landlord, was doing maintenance work in a tenant’s apartment. He discovered a set of intimate photos of the tenant, who worked as an exotic dancer. He took the photos to his apartment, scanned them into his computer, and returned them. Upon discovering what had happened, the tenant informed the police, who brought criminal charges against Nelson under the Receiving Stolen Property Section of New Hampshire’s theft statute: “A person commits theft if he receives, retains, or disposes of the property of another knowing that it has been stolen, or believing that it has probably been stolen, with a purpose to deprive the owner thereof.”1 After conviction, Nelson appealed.
On appeal, the Supreme Court affirmed. The Court rejected Nelson’s argument that the images on his computer did not fall under the statutory definition of property, on the grounds that they were covered by language in the statutory definitions that included “intangible personal property” having “value.” The Court pointed out that the images were property “in which the tenant had an interest he was not allowed, under the statute, to infringe,” rejecting Nelson’s argument that the images on his computer were his, because he created them by scanning them himself. Nelson also argued that he had no intent to deprive the tenant of value or benefit in the photos, because he returned them after he scanned them. The Court rejected that argument, pointing out that the right to exclude others from the possession of property is “[i]ntegral to ownership.” Finally, Nelson’s argument that the statute did not in effect place him on constructive notice that his acts constituted theft was summarily dismissed.
History of Copyright Protection
Congress’ power to provide copyright protection for authors stems from Article I, Section 8, Clause 8 of the Constitution: “Congress shall have the power…To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their respective Writings and Discoveries….”2 This grant of power is generally considered positive rather than limitative.3 Thus, historically, under the 1909 Copyright Act states had the power to provide copyright protection above and beyond that which existed at the federal level. This issue was addressed in the 1972 Supreme Court case Goldstein v. California, where the court affirmed the states’ power to provide copyright protection in the absence of a Congressional intent to pre-empt it.4
This state of affairs was short-lived. Congressional intent to pre-empt state power arrived with the 1976 Copyright Act,5 which provided under Section 301 that “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any state.”6 Section 106 sets forth the exclusive rights of copyright owners, including “the right to reproduce the copyrighted work in copies or phonorecords.”7 Sections 102 and 103 define what works qualified for copyright. Section 102, as reiterated in section 301, states that “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression…from which they can be perceived, reproduced, or otherwise communicated….”8 Thus, all works which are “fixed”- written down, recorded, etc.- fall under the exclusive protection of the Federal Act.9
The 1976 Copyright Act as Applied to Nelson
Photographs have long been recognized as copyrightable subject matter,10 and the 1976 Act explicitly defines them as such.11 The images on the tenant’s photos have been fixed on film. Therefore, they fall under the domain of Federal copyright law. Section 106(a) of the 1976 Act provides for the exclusive right to reproduce a work in copies.12 Because Nelson created copies of fixed, copyrightable subject matter, in violation of the copyright owner’s exclusive right to do so, his scanning of the images was actionable under the Federal copyright law.13 Although not pre-empted in itself, the theft statute in Nelson’s case was therefore pre-empted to the degree that the Court’s ruling created an equivalent right to those explicitly reserved to Federal law.
Although it did not appear to play a role in Nelson, New Hampshire’s state copyright statute,14 originally enacted in 1895 (prior even to the passage of the now superseded 1909 Act), made copyright violations of unpublished works a misdemeanor.15 This statute, though pre-empted, remains on the books. Its continued presence may suggest, erroneously, that a cause of action for infringement of unpublished works continues to violate state law. In order to eliminate the possibility of confusion, it would be prudent to repeal the now outdated state copyright statute as soon as possible.
Criminal Penalties for Copyright Violation Under Federal Law
Section 506 of the federal copyright law provides the cause of action for criminal copyright infringement.16 A brief look at the recent history of the criminal legislation will help in understanding the likely outcome of Nelson, had it been prosecuted under federal copyright law.
Historically, federal criminal liability required willful infringement, which was done for the purposes of commercial advantage or financial benefit.17 This requirement was in effect in 1994, when the District Court of Massachusetts heard US v. LaMacchia, a case in which an MIT student created an electronic bulletin board on which he encouraged people to make available for free various works of copyrighted software.18 Because the defendant was an “anti-copyright evangelist”19 motivated by principle, he received no financial benefit from his actions. The court therefore ruled in his favor, remarking: “This is not, of course, to suggest that there is anything edifying about what LaMacchia is alleged to have done….Criminal as well as civil penalties should probably attach to willful, multiple infringements of copyrighted software even absent a commercial motive on the part of the infringer. One can envision ways that the copyright law could be modified to permit such a prosecution. But, ‘[i]t is the legislature, not the Court which is to define a crime, and ordain its punishment.’”20
Congress, reacting specifically to the holding in LaMacchia, amended the Copyright Act in 1997 with the No Electronic Theft Act,21 basically doing away with the financial benefit requirement. Section 506(a) as amended, now provides for criminal prosecution of anyone who infringes either for financial benefit, or “by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000….”22 The penalties for violations of this section are set out on a graduated scale in the criminal code.23
In addition to eliminating the willfulness requirement, the amendment changed the law to provide for criminal penalties for the infringement of a single work, as opposed to the multiple works that were required previously.24 Additionally, the $1,000 minimum value was established to prevent criminalizing minor infringements. The single infringement provision and the minimum value, to a degree, work together. A single infringing copy of a photograph made by a copy shop for a retail customer, for example, would probably not have a retail value of $1,000 or more.25 Instances of such single, minor infringements thus would not be criminalized, whereas criminal penalties might more appropriately apply in the aggregate. The minimum value requirement also avoids criminalizing individuals who engage in minor infringements such as copying computer programs for family use, or for making individual copies of compact discs for friends.
Federal Criminal Liability as Applied to Nelson
Turning to Nelson, it would be necessary first to establish willful infringement. Section 506 specifically states that evidence of reproduction does not in itself establish willfulness.26 A leading commentator suggests that the appropriate understanding of willfulness be defined as a “voluntary, intentional violation of a known legal duty.”27 Under this definition, it would not be necessary to establish that Nelson was aware that he was specifically violating copyright law. Awareness of the fact that his activities would be actionable under some existing law would be sufficient.
The second element to be established would a valid copyright in the photos. The criteria for copyrightability in criminal actions is the same as for civil actions- the work in question must be an original work of authorship fixed in a tangible medium.28 Copyright inures at the moment of fixation.29 Thus, contrary to the law before passage of the 1976 Act, and much current popular belief, registration is not necessary to gain a copyright. In Nelson, therefore, a copyright in the photos existed at the moment the photos were created. Whereas an infringement claim may be defeated by showing that the infringed work does not meet the statutory criteria for copyrightability, it is unlikely that the photos in question would fail to do so.30
Finally, retail value of over $1,000 must be established.31 This would likely prove to be the most difficult element, as the photos were unpublished. This difficulty would be compounded in the absence of any evidence that the owner intended to sell them. If the requisite retail value could not be established, Nelson’s infringement would not fall within the bounds of criminal conduct.
1. N.H. Rev. Sta. Ann. § 637:7, I (1996).
2. U.S. Const. art. I, § 8, cl. 8.
3. See generally Edward C. Walterscheid, To Promote the Progress of Science and Useful Arts: Anatomy of a Congressional Power, 43 IDEA 1 (2002).
4. Goldstein v. Cal., 412 U.S. 546, 560 (1973).
5. The name is slightly misleading- the 1976 Copyright Act actually took effect on January 1, 1978.
6. 17 U.S.C. § 301(a) (2000).
7. 17 U.S.C. § 106(1) (2000).
8. 17 U.S.C. § 102(a) (2000).
9. Section 301(b) provides a list of exceptions in which the states may still provide a degree of copyright protection, unfixed works- such as improvisations, or perhaps ephemeral works of art- being at the head of the list. The remaining items have generated their share of confusion since the section’s enactment- See e.g. Katz, Dochtermann & Epstein, Inc. v. Home Box Office, 1999 U.S. Dist. LEXIS 3971 (1999); ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (1996).
10. See Burrow –Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (photograph of subject deemed copyrightable subject matter).
11. 17 U.S.C. § 101 (2000).
12. 17 U.S.C. § 106(1) (2000).
13. 17 U.S.C. § 501(a) (2000) specifically qualifies Nelson as an infringer.
14. N.H. Rev .Sta. Ann. § 352:1 (1995).
15. N.H. Rev. Sta. Ann. § 352:2 (1995).
16. 17 U.S.C. § 506(a) (2000).
17. Melville B. Nimmer & David Nimmer, Nimmer on Copyright vol. 4, § 15.01, 15-2 (4th ed., Matthew Bender 2004).
18. U.S. v. LaMacchia, 871 F.Supp. 535, 536 (1994).
19. Nimmer, supra n. 17, at 15-16.
20. LaMacchia, supra n. 18, at 545 (quoting U.S. v. Wiltberger, 5 U.S. 79, 95 (1820)).
21. Pub. L. No. 105-339, § 1, 111 Stat. 2678 (1997).
22. 17 U.S.C. § (506)(a)(2) (2000).
23. 18 U.S.C. § 2319 (2000).
24. Nimmer, supra n. 17, at 15-22.
25. Id. at 15-21.
26. 17 U.S.C. § 506(a) (2000).
27. Nimmer, supra n. 17, at 15-6.
28. 17 U.S.C. § 102(a) (2000).
29. 17 U.S.C. §§ 101, 102(a) (2000).
30. Learned Hand once remarked that “[n]o photograph, however simple, can be unaffected by the personal influence of the author, and no two will be exactly alike.” Jeweler’s Circular Publg. Co. v. Keystone Publg. Co., 274 F.932 (S.D.N.Y. 1921). In keeping with Hand’s remark, courts since that time seem to have only rarely found photographs uncopyrightable- see e.g. Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) (photograph of vodka bottle copyrightable); but see Oriental Art Printing, Inc., v. Goldstar Printing Corp., 175 F. Supp. 2d. 542 (S.D.N.Y. 2001) (photos of Chinese food for menu lack necessary originality).
31. 17 U.S.C. § 506(a)(2) (2000).
Olli S. Baker is a third-year student at Pierce Law Center, Concord, New Hampshire.