Copyright Distribution Infringement Discrete from Copying Infringement

Andrew Diversey, a Ph.D. linguistics student at the University of New Mexico (UNM), sued several administrators and members of the Board of Regents for infringing his copyright in his unpublished dissertation.  Without Diversey’s authorization, a draft of his dissertation was deposited at the UMN Zimmerman Library and was sent to ProQuest, UNM’s dissertation publisher.  The district court ruled that Diversey’s claims were barred by the three year statute of limitations.  The Tenth Circuit Court of Appeals distinguished Diversey’s claim for unauthorized copying from his claim for unauthorized distribution and affirmed in part and reversed in part.

Case Timeline

  • Diversey had an ongoing dispute with UNM officials over correcting deficiencies in the dissertation process.
  • 2/7/2008 – UNM told Diversey that his dissertation had been deposited in the UNM Zimmerman Library and that it had been sent to ProQuest, UNM’s dissertation publisher.
  • 2/20/2008 – Diversey protested.  ProQuest returned the dissertation manuscript to UNM.
  • 6/16/2009 – Diversey discovered that copies of his dissertation were made available to the general public through the UNM Zimmerman Library and Zimmerman Library Center for Southwest Research catalogs.
  • 10/5/2009 – UNM refused Diversey’s demand to return all copies of his dissertation.
  • 6/15/2012 – Diversey filed his suit for copyright infringement.

Limitation Period for Copyright Infringement Claims in General

17 U.S.C. §507(b) requires that a claim for copyright infringement be brought within three years after the claim accrued.  When does a claim accrue?  The Tenth Circuit determined that a copyright infringement claim accrues “when one has knowledge of a violation or is chargeable with such knowledge.”  (Opinion pdf pages 5-6). 

The statute is evenhanded; it does not provide for a waiver of infringing acts within the limitation period if earlier infringements were discovered and not sued upon, nor does it provide for any reach back if an act of infringement occurs within the statutory period.

(Opinion pdf page 6).

The Tenth Circuit rejected “the notion that a plaintiff can recover for acts of infringement occurring more than three years before the filing of a complaint merely because some related act of infringement occurs within the limitation period.”  (Opinion pdf page 6).

The Tenth Circuit rejected a continuing wrong theory for copyright infringement claims.  The statute runs from the time the copyright owner discovers or should have discovered the infringement.

Distinction Between the Copying Claim and the Distribution Claim

A copyright is not a single right, but a bundle of separate rights.  Section 106 of the Copyright Act grants the copyright owner the following exclusive rights:

(1)to reproduce the copyrighted work in copies or phonorecords;

(2)to prepare derivative works based upon the copyrighted work;

(3)to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4)in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5)in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6)in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

This case concerns §106(1), the right to reproduce (copy) and §106(3), the right to distribute.  Regarding the copying infringement, the Tenth Circuit affirmed the district court’s ruling that the claim was barred by the three year statute of limitations.

When ProQuest confirmed it had received a copy on February 20, 2008, Diversey knew at least one unauthorized copy had been made. Thus, his claim for unauthorized copying under § 106(1) accrued no later than February 20, 2008. His June 15, 2012, complaint was not timely.

(Opinion pdf page 9).

The right of distribution is a separate right from the exclusive right to make copies.  The Tenth Circuit separately considered Diversey’s claim of unauthorized distribution under §106(3), ruling in Diversey’s favor under that subsection. 

We see no reason Diversey should have known about the UNM libraries’ distribution of his work before June 16, 2009, when he discovered his draft dissertation’s entry in the UNM libraries’ catalog information system. According to the amended complaint, he diligently checked this information system at regular weekly (and often even daily) intervals. As his prior searches failed to discover any reference to his dissertation, they confirmed the work was not ‘distributed,’ in the parlance of § 106(3), until June 16, 2009. Further, given Diversey’s continued efforts to work with UNM officials to both prevent his dissertation from being distributed and to rectify the lack of attention given to it by the faculty, he had a legitimate reason to believe UNM might indeed change course and elect not to distribute the dissertation in its libraries.

(Opinion pdf pages 10-11).

The Tenth Circuit ruled that when the UNM library listed Diversey’s dissertation in its catalog, the library distributed the work to the public.  The statute of limitations runs from the date that the copyright owner discovered, or should have discovered, the distribution.  The court stated that “the deposit of the dissertation in the library was not tantamount to the distribution of the work. The essence of distribution in the library lending context is the work’s availability to the borrowing or browsing public.”  (Opinion pdf page 11). 

Fair Use Analysis Favors Diversey.

The Tenth Circuit ruled that the defendants’ use was not a fair use and briefly addressed the four fair use factors.  17 U.S.C. §107.  The Tenth Circuit ruled that the only factor favoring the UNM defendants was the first factor, the purpose and character of the use.  A non-commercial, educational purpose strongly favors fair use.  All other factors favor Diversey. 

The second factor, the nature of the copyrighted work, strongly favors Diversey.  The dissertation is an unpublished work and the author has the right to control the first public appearance.  The third factor, the amount and substantiality of the portion used, strongly favors Diversey, as the entire dissertation was used.  For the fourth factor, the effect of the use on the potential market for the copyrighted work, the Tenth Circuit accepted as true Diversey’s assertion that he could not effectively complete the dissertation review at another university while UNM listed his dissertation in its libraries’ catalogs.  “This has completely deprived him of the value of the dissertation.”  (Opinion pdf page 14).

This case is Diversey v. Schmidly, No. 13-2058, Tenth Circuit Court of Appeals.

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