B
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Circumvention Reform in the U.S. Copyright Office
Under the DMCA,
the US Copyright Office conducts a study every three years to determine
which works are adversely affected such that the owners are not
able to make lawful use of them due to technological restrictions.
Under this Rulemaking, the US Copyright Office may issue exemptions to permit owners to circumvent
their media for lawful purposes. In the first Rulemaking in 2000, the Copyright
Office issued only two narrow exemptions, one to permit the circumvention of lists
blocked by filtering software and another to permit bypassing outmoded
or broken dongles.
Under the Rulemaking, the Copyright Office accepts comments from the public in its effort to determine which
class of works have been adversely affected by the DMCA’s circumvention
ban. For more detailed information on the Copyright Office Rulemaking Proceeding,
visit the US Copyright Office website
here
.
IP Justice submitted
Comments
to the US Copyright Office recommending exemptions for the circumvention
of restricted music CDs, DVDs, and eBooks to permit lawful uses. The US
Copyright Office was
flooded
with over several hundred comments from the public during the comment
period requesting exemptions to engage in bypassing DVD region codes, skipping
commercials, and making fair use of copy or access restricted CDs among
other lawful uses.
Reply
comments
have also been posted.
IP Justice
testified
at the 2003 US Copyright Office DMCA Hearings on May 14th
(transcript)
and May 15th
(transcript)
to request the Office recommend exempting restrictions that block consumers' lawful use of digital media
(see schedule).
IP Justice also filed
Post-Hearing Comments
as part of the DMCA Rulemaking proceedings on June 20, 2003.
The head of the National Telecommunications and Information Administration (NTIA),
an agency of the United States Department of Commerce that serves as the President's
principal adviser on telecommunication policies, criticized the US Copyright Office
for placing an unreasonably high burden of proof on consumers who seek DMCA exemptions under
the Rulemaking.
On August 11, 2003 NTIA administrator Nancy J. Victory sent a
letter
to the Register of Copyrights Marybeth Peters stating that the standard set forth by the US
Copyright Office, "imposes a significantly heightened burden on proponents of an exemption, and is
therefore inconsistent with the opportunity that Congress intended to afford the user community"
by creating the Rulemaking.
Based on the US Copyright Office's recommendation, the US Library of Congress will issue its
ruling before October 28, 2003 on what (if any) exemptions will be granted
to the DMCA's general ban on circumvention.
The Copyright Office
granted a
petition
by Static Control Components to consider a newly proposed class of works
to be exempted from the prohibition on circumvention of technological measures
that control access to copyrighted works. Static Control makes printer
cartridges that are compatible with Lexmark’s printers. Lexmark sued Static
Control under the DCMA’s access control prohibitions to prevent it from
providing compatible lower priced printer toner cartridges. Static Control
has asked the Copyright Office to exempt computer programs embedded in
machinery such as printers in order to provide interoperable equipment.
Columbia Law Professor Jane Ginsburg was called as a witness by the US Copyright Office
during its DMCA Rulemaking on May 9th to address Static Control's Petition. Professor Ginsburg
said she worried about the effect that the anti-circumvention provisions could have on other industries.
In her
testimony,
Professor Ginsburg discussed a hypothetical where an embedded chip could be placed
in an automobile component to prevent competitors from making aftermarket replacement
parts.
Static Control's website
also provides more information on its petition to the US Copyright Office under the DMCA Rulemaking.
On August 7, 2003 North Carolina Governor Mike Easley signed
House Bill 999
into law that allows printer users the right to refill any toner cartridge. While not addressing the federal DMCA issues,
this state law does void any contracts or purchase agreements that banned cartridges from being remanufactured.
C
.
DMCA Reform in the US Courts
Several cases are
currently pending in US federal courts that challenge the DMCA’s circumvention
prohibitions and could provide some relief for consumers and innovators
or could further erode consumer rights, depending on the outcome.
1
.
Lexmark v. Static Control Regarding Printer Toner Cartridges
The US’ second
largest printer manufacturer, Lexmark, has won an
injunction
in a
lawsuit
under the DMCA’s circumvention laws to prevent a competitor from selling
lower priced toner cartridges that are compatible with Lexmark printers.
Citing the DMCA’s access control prohibitions, Lexmark claims Static Control
Component’s less costly printer cartridges "circumvent access" to the toner
loading program. Thus Lexmark claims Static Control’s chips in the toner
cartridge are circumvention devices prohibited by the DMCA. Within weeks
of being sued by the printer giant under the DMCA, Static Control agreed
to stop making its lower priced compatible chips.
On Feb. 27, 2003
Judge Karl Forester of the U.S. District Court for the Eastern District
of Kentucky issued an injunction against Static Control Components pending
the outcome of the trial. Read Judge Forester's Findings of Facts
and Conclusions of Law
here
.
Static Control filed an appeal brief with the 6th Circuit Court of Appeals at the end of June, and Lexmark filed a response
at the end of July. The main Static Control argument was that the toner program was not the object
of protection, distinguishing it from works such as DVDs or music. Static Control argues that
the purpose of the technological measure is not to protect the work, but rather to preserve
Lexmark's business model of selling expensive replacement toner cartridges. Static Control also argues
that the exemption for reverse engineering 1201(f) should permit its activity. Static Control also argued
that it is entitled to an exemption based on fair use, since consumers have a fair use right to refill and repair
their printer toner cartridges. It is expected that the court will hold oral arguments this fall
and issue its decision in 2004.
Static Control's
website
posts court briefs and rulings in its litigation against Lexmark.
2
.
321 Studios v. Hollywood Regarding Fair Use of DVDs
In 2002, a software
company called 321 Studios filed a
legal
challenge
to the DMCA’s ban on bypassing DVD access controls in order
to make lawful copies of DVD movies. In the Declaratory Judgment action,
321 Studios asked the court to approve of its distribution of software
that enables fair use and lawful backup copying of DVDs, despite the DMCA’s
ban on circumvention tools. In response, Hollywood studios have filed a
motion
for summary judgment
against 321 Studios to prevent the fair use software’s
distribution.
If successful,
321 Studios’ legal challenge could create some meaningful breathing space
under the DMCA for firms who want to build competing software and devices
that can interoperate with digital media, like DVDs. It could also ensure
consumers are able to copy and edit their music and movies as they have
in the past, despite the legislative and technical prohibitions.
Judge Susan Illston of the US Federal Court for the Northern District of CA
heard testimony
regarding a summary judgment motion on May 15, 2003.
Amicus briefs supporting the public's right to make fair use of DVDs were filed by a
group
of civil liberties organizations and a
coalition
of copyright law professors.
The case is currently pending in US federal court for the Northern District of California.
More information on this legal challenge is available at from the consumer
rights website
Protect Fair Use.
3
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ACLU/Edelman Regarding Access to Test Website Blocking Software
With the help of
the American Civil Liberties Union, Harvard University researcher Ben Edelman
launched a
legal attack
in July 2002 that could overturn portions of the DMCA’s circumvention prohibitions.
Edelman needs to gain access to lists of websites blocked by filtering
software so he can report back to the public on the accuracy and effectiveness
of the software. But filtering software companies use the DMCA and encryption
to prevent researchers such as Edelman from gaining access to the lists.
This prevents this software from being tested.
Although the US
Library of Congress issued an
exemption
in 2000 to permit circumvention to access lists of blocked websites, its
still illegal under the DMCA for anyone to build a tool that could enable
Edelman’s explicitly lawful circumvention. Edelman’s legal challenge points
to the inherent illogic of a law that claims to legalize conduct, but then
outlaws all tools necessary to engage in that conduct.
In April 2003 the case was dismissed because Edelman lacked standing to pursue the action
and could not show a likelihood that N2H2 would file suit if he continued his research. The
appeal deadline for Edelman passed on 5/19/2003, so the case is now officially closed.
More information
on this legal challenge is available from the
ACLU
archive.
4
.
Chamberlain Group v. Skylink Technology Regarding Garage Door Openers
In January 2003 the Chamberlain Group filed a
lawsuit
under the DMCA against its competitor Canadian-based Skylink Technology in the Northern District
of Illinois. Skylink manufactures a universal
garage door opener that is compatible with Chamberlain garage doors by tricking the software on the garage
door motor into opening the door.
Chamberlain claimed that Skylink’s universal garage door opener violated the DMCA by circumventing the
security code technology that controls access to the garage door software, and that it has no other significant
purpose, and that is marketed for the use of circumvention.
Skylink, in its opposition brief, argued that Chamberlain’s claim under the DMCA must fail because the
Skylink device only allows access to the noncopyrightable garage door opening process. Skylink argued
that since the software (the “protection measure”) and the underlying “work” are the same, the software
would be controlling access to itself. This, according to Skylink, is unacceptable, since 1201(a)(2)
requires that the protective measure control
access to a protected work, not the protective measure itself.
Skylink claims that its device is not “marketed for circumvention”, but rather to allow
garage door owners to access their own garage doors.
Skylink also argued that it is not in violation of the DMCA since the statute only prohibits circumvention
without the authority of the copyright owner; and since Chamberlain did not shrink-wrap or set other
restrictions on the customer’s ability to use the garage door software, the use was not unauthorized.
Lastly, Skylink claimed that its product falls under a 1201(f) "safe harbor" exemption for interoperable products.
On August 29th, Judge Rebecca Pallmeyer in Chicago
denied
part of a summary judgment motion filed by
Chamberlain against Skylink. The Court said it disagreed with Chamberlain Group's argument that a
garage owner violates the DMCA if he or she loses the transmitter and manages to operate the garage door
opener by circumventing the computer program in it. The Court said, "The homeowner has a legitimate
expectation that he or she will be able to access the garage even if his transmitter is misplaced or malfunctions."
The Court also expressed appreciation for amicus curie briefs filed by the
Consumers Union
and the
Communications Industry Association (CCIA)
that argued Chamberlain's interpretation of the DMCA as
prohibiting after-market replacement transmitters would have the effect of stifling innovation and
increasing consumer prices.
In rejecting the DMCA claim, the Court said, "for reasons identified by Skylink or by amici, Skylink itself may be entitled to summary judgment."
See IP Justice media release of September 2, 2003:
"Court Rejects DMCA Claim Against Garage
Door Manufacturer: ‘Common Sense’ Prevails in US Copyright Case"
see also
Chamberlain Group v. Skylink Technologies legal case archive.
5
.
Hollywood v Tritton Technologies Over Distribution of DVD Copying Software
On September 17, 2003 Paramount Pictures and 20th Century Fox sued Tritton Technologies, QOJ, Worldreach, and Pronto Ventures
for distributing software that allows people to make back-ups and other lawful fair use copies of their DVD movies. The studios
claim the software is illegal under the the US DMCA and have asked a Federal Court in New York to forbid the software's distribution.
This case is similar to the 321 Studios case because the studio's goal is to ban the DVD copying software, but this time,
Hollywood aims to extend liability not only to creators of the fair use software,
but also to third-party distributors. See IP Justice Media Release of September 18, 2003:
"Movie Studios Attack Distributors of DVD Copying Software"
IV
.
Circumvention Ban in Free Trade Area of the Americas (FTAA) Treaty
The
Free Trade Area of the Americas (FTAA) Treaty,
which is currently being drafted and aims to bind the 34 democracies in the
Western Hemisphere to the same laws in a broad range of topics, including intellectual property. The
FTAA draft treaty
includes a
chapter
on conforming national copyright laws with a proposed
clause
that outlaws even more legitimate consumer circumvention than the DMCA or WIPO.
At present, there are two possible clauses vying for inclusion in the final FTAA Treaty that deal with "Obligations concerning
Technical Measures"
(Section 21.1). The
first proposal basically mirrors the language of the WIPO Treaties on this subject
and would require signatory countries to: "provide adequate legal protection and effective legal remedies against the
circumvention of effective technological measures that are used by authors, ... in connection with the exercise
of their rights ... and that restrict acts, ... which are not authorized ... or permitted by law." The proposal would not
require countries to broadly outlaw circumvention or tools used for circumvention. It would still be possible
for a country to permit legitmate consumer circumvention and digital fair use tools under this language.
The second proposed clause for Section 21.1, however, not only goes further than WIPO requires of countries, it even
outlaws more legitimate consumer circumvention than the US DMCA. It would require countries to outlaw the act of
circumvention and also to forbid tools and services capable of circumventing technological measures "that restrict
unauthorized acts".
And there are none of the exceptions to the general ban
on circumvention that exist (at least theoretically) in the DMCA in an effort to protect reverse engineering
and computer security. And the DMCA's requirement that a person have knowledge that a device is offered for circumvention
to be liable is deleted from this proposal. This clause creates strict liability for a person providing a tool capable
of circumvention even if she had no knowledge
that the software or tool she provided could circumvent a technological measure.
Nor
does this clause include any narrowing provision or other recognition of the need to protect fair use
and freedom of expression rights against the misuse of technological restrictions.
Negotiations over the Treaty's final language are ongoing through January 2005. The Treaty's entry into force is sought
by December 2005.
The FTAA Committee of Government Representatives on the Participation of the Civil Society
issued an
open and ongoing invitation
to civil society in FTAA participating countries to submit
written contributions about the treaty's text.
Written submissions through May 1, 2004 will be included in a report for the 2004 Ministerial Meeting on the FTAA
Treaty. Information on how to participate in the process and send comments is available at the
FTAA's website.
