We’ve been doing a little thinking about outgoing Justice John Paul Stevens and what his legacy will be when it comes to intellectual property. Patent lawyers will surely remember Stevens as one of the justices who, along with justices Breyer and Souter, signed a strongly-worded dissent in the LabCorp v. Metabolite case. Because it was dismissed due to a technicality in the lower courts, LabCorp had no impact on the law, but the dissent showed that Stevens was one of at least three justices keen to rein in the extent of patentable subject matter. If, as many expect, the forthcoming Bilski decision places even greater limits on the patent system, it’s likely that Stevens will have a hand in that. The truth is, Stevens may be only slightly more “patent-skeptical” than the current Supreme Court as a whole. Decisions like the unanimous 2006 eBay v. MercExchange indicate that when it comes to patent law, the court may not actually be divided at all. Instead, the Court is defining itself in this area as being in opposition to the Court of Appeals for the Federal Circuit.More than any other current justice, Stevens has seen both patent and copyright law as balancing acts that need to be kept in check by the Supreme Court. Along with Justice Breyer, Stevens dissented in the Eldred v. Ashcroft case, arguing that Congress shouldn’t be allowed to retroactively extend existing copyright grants, as they did by passing the 1998 Copyright Term Extension Act In fact, Stevens made his most profound impact on intellectual property law in the copyright sphere by authoring the majority opinion in the 1984 case Sony Corp. v. Universal City Studios, also known as the Betamax decision , which some consider the most important copyright ruling of all time. “ Betamax has been the foundational decision of copyright law for the last 35 years,” says Andrew Bridges, a Winston & Strawn IP litigator who has worked on cases that in many ways parallel Betamax—the entertainment industries’ lawsuits against file-sharing services like Napster and Grokster. “It was the first Supreme Court decision to apply the 1976 Copyright Act, and it was the decision that first construed fair use in the modern era.” The most important result of the Betamax decision, Bridges says, is that it established that consumers have a personal “fair use” right to make copies of copyrighted material for non-commercial use. But Justice Stevens’s contribution to the ultimate decision in Betamax extended well beyond writing the opinion. It was actually his negotiating skill pulled together the five-vote majority that allowed home video recorders to be sold and used without interference from entertainment industry copyright holders. When he wrote the first draft of his opinion, Stevens thought he was writing dissent—and possibly a lone dissent at that. Even more remarkably, the justices’ initial debates in the case made it clear that Stevens was the only one of the nine who believed that the “fair use” doctrine gave consumers a right to make personal copies of copyrighted content for home use. Those nuggets–and the complete inside story of the Betamax negotiations–are contained a 2006 paper by University of Michigan Prof. Jessica Litman titled “ The Story of Sony v. Universal Studios: Mary Poppins Meets the Boston Strangler .” (The title refers, of course, to former Motion Picture Association of America president Jack Valenti’s famous testimony before Congress in which he compared the home video recorder to an infamous serial killer. In her paper, Litman describes how Stevens was initially the only justice convinced that consumer home videotaping was allowed under copyright law. Other justices were, to varying degrees, ready to affirm the U.S. Court of Appeals for the Ninth Circuit, which had ruled that home copying was indeed copyright infringement. Litman writes: Justices Blackmun, Marshall and Rehnquist were comfortable with the conclusion that consumer home videotaping taping was illegal infringement, and voted to affirm. Justice Powell felt that home use should be deemed fair use, but saw no way to draw a workable distinction between fair and infringing uses, and he, too, voted to affirm. Justice O’Connor was also disposed to affirm: if she were a legislator, she said, she would vote to exempt home use, but Congress had not done so in the 1976 Copyright Act. Justices Brennan, White and Burger argued that time-shifting was fair use, but building a videotape library was infringement. They were inclined to remand for additional fact-finding on the issue of Sony’s liability, given that the Betamax was used for both infringing and non-infringing purposes. Only Justice Stevens insisted that the copyright statute did not prohibit consumers from making single copies of copyrighted works for their own private use.

Litman describes in detail the arguments—and the compromises—that Stevens used to put together a majority of five justices that agreed with his fundamental position on the home copying issue. She also argues that Stevens’s efforts resulted in a majority opinion and a dissent authored by Justice Harry Blackmun that were both far less clear and tightly reasoned than the original drafts. The final opinion was “an awkward amalgamation of different arguments and rationales,” she writes. Still, there’s no denying the historical importance of the opinion. In his Betamax opinion, Stevens wrote that although the video-recorder could be used to break copyright law—by copying whole programs and re-selling the tapes, for example—it was also “capable of substantial non-infringing use,” and consumers should not be deterred from using it for those purposes. “The ruling that making a single copy for yourself of a broadcast movie was fair use… that was truly huge, and was a point on which the court was deeply divided,” says Bridges. The Betamax decision was written at a time when the Supreme Court was more cognizant of the appropriate limits of its power, he adds. “The Grokster court never once discussed deference to Congress. Grokster ignored the conservatism of the Betamax decision, in terms of what a court should do, as opposed to what Congress should do.” Stevens believed that Congress didn’t intend to ban home copying it when it amended the country’s copyright laws by passing the 1976 Copyright Act. After all, he reasoned, Congress had extended copyright protection to sound recordings in 1971, and at that time made clear that the Copyright Act wouldn’t extend to consumer home taping. He felt video should be no different. It’s an interesting intellectual exercise to imagine what would have developed had the court come out in favor of the entertainment industry rather than Sony. By the time the Betamax case reached the Supreme Court, the movie and television studios had already abandoned their hope for an injunction that would would sweep video recorders off store shelves, and had instead proposed that copyright law should simply entitle them to royalty payments on the devices. The entertainment industry also wanted levies on associated media, such as blank videotapes. A ruling against Sony could have placed a heavy burden on the makers of video-recording devices and the emerging video rental industry. On the other hand, at least some in Congress were ready to fight for the right to home copying. After the Ninth Circuit issued its pro-entertainment industry ruling, legislation was introduced in Congress the very next day to legalize home video recording. Once the Supreme Court agreed to take up the Sony v. Universal case, Congress put the debate on hold. But 3 million people had already bought home video cassette recorders by 1982, and video rental stores were growing in popularity. (This despite the fact that at the time of trial, a Sony Betamax videocasette recorder cost the astronomical sum of $875, the equivalent of almost $2,000 in today’s dollars.) Stevens’ belief that the government had no business messing around with the newfangled machines Americans were attaching to their televisions made him an outlier on the Supreme Court, but likely in the mainstream of public opinion. Indeed, the mainstream press hailed the Betamax decision as a necessary step forward. Washington Post entertainment critic Tom Shales called the decision “one small step for man, one giant kick in Big Brother’s pants.” He further wrote:

Yesterday the Supreme Court ruled, by a frighteningly narrow 5-to-4 majority, that the home taping of TV programs and movies broadcast on the air is not illegal. Five million VCR users breathed an enormous “whew.” Imagine. No more stuffing the Betamax machine under the bed at every unexpected ring of the doorbell. No more disguising tapes as pornographic magazines. No more covert tapings of “Remington Steele” with the shades drawn and the windows locked. (J. Litman, The Story of Sony v. Universal Studios , p. 21.)

So, next time you’re TiVo-ing an episode of Remington Steele—or whatever it is the kids are watching these days—remember to give a quick thanks to Justice John Paul Stevens.