[Infowarrior] - Will Congress Unwittingly Repeal the DMCA and Violate Our Trade Treaties?

[Richard Forno]

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IPI Issue Brief
A Bad Trade: Will Congress Unwittingly Repeal the Digital Millennium
Copyright Act and Violate Our Trade Treaties?
by Lee Hollaar on 06/23/2006
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In his recent IPI Ideas paper ³Will Congress Circumvent the DMCA?,² Richard
Epstein notes how the ³other purposes² of Rep. Boucher¹s (D-VA) H.R. 1201
³could eviscerate the already inadequate protection that federal law
provides against copyright policy.²

Professor Epstein is too kind toward the Boucher bill. If passed with its
proposed language, it would effectively repeal all of the anticircumvention
provisions of the 1998 Digital Millennium Copyright Act (DMCA), and thereby
violate a number of current trade treaties, including the recently-ratified
Central America-Dominican Republic Free Trade Agreement (CAFTA-DR).

Why Anticurcumvention Legislation?

Congress, at the time the DMCA was being considered, was concerned over the
widespread copyright infringement that was occurring on the Internet.
Copyright litigation is expensive and not geared toward addressing millions
of small infringers. Statutory damages are based on the number of works
infringed, and not the number of downloads, so that a person sharing even a
hundred songs would be liable for at least $75,000.1 Such a minimum penalty
actually discourages content providers from filing suit, since they must be
concerned that the court might try to find an excuse for the infringement to
avoid imposing the statutory damages that then becomes a bad precedent.

Digital rights management, while far from perfect, provides an attractive
alternative to litigation. By making it more difficult to infringe a
copyright, users are reminded that what they are about to do may not be
legal. But if circumvention devices or programs were available through
legitimate sources or as a standard feature in a media program, this
important clue would be lost.

Congress has previously dictated copy protection for digital devices as
digital sound recording devices,2 and banned the use and trafficking in
cable TV descramblers3 and satellite decoders.4 While those laws have not
eliminated such illegal devices, there is no doubt that people are aware
through the way they are advertised and are available that they are
illegitimate, and the vast majority of people shun them.

Implementing the WIPO Copyright Treaty

To understand the effect of H.R. 1201, it is necessary to understand how the
DMCA anticircumvention provisions came about and are structured. They were
added to United States copyright law to implement our treaty obligations
under the World Intellectual Property Organization (WIPO) Copyright Treaty.
Its Article 11 states:

            Contracting Parties shall 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 under this Treaty or the Berne Convention and that
restrict acts, in respect of their works, which are not authorized by the
authors concerned or permitted by law.5


Although there may be legitimate uses for circumvention technology, Congress
decided that the most likely use was copyright infringement. Recognizing
that there may be things that could be used to circumvent a protection
mechanism (such as a computer program debugger), it did not ban every device
or computer program that might circumvent a protection mechanism. Instead,
it banned technology that:

            (A) is primarily designed or produced for the purpose of
circumventing protection afforded by a technological measure that
effectively protects a right of a copyright owner under this title [the
Copyright Act] in a work or a portion thereof;
            (B) has only limited commercially significant purpose or use
other than to circumvent protection afforded by a technological measure that
effectively protects a right of a copyright owner under this title in a work
or a portion thereof; or
            (C) is marketed by that person or another acting in concert with
that person with that person¹s knowledge for use in circumventing protection
afforded by a technological measure that effectively protects a right of a
copyright owner under this title in a work or a portion thereof.6


Both (A) and (C) are good examples of the active and intentional inducement
of copyright infringement that the unanimous Supreme Court condemned in its
recent Grokster decision,7 and (B) makes the reasonable assumption that a
company benefits not from some commercially-insignificant activity, but by
its use for infringement by others.

The anticircumvention provisions of the DMCA are really about traffickers in
circumvention technology, not about those using it. It keeps things off the
shelves of stores so they don¹t seem legitimate. But provide a loophole, and
you¹ll see the devices being sold or the programs available, perhaps with a
warning not to use them to infringe (along with a wink).

Circumventing to Access a Copyrighted Work

Before the DMCA, Congress had considered legislation proposed in the Clinton
Administration¹s ³white paper² on copyright in the digital age.8 It proposed
a simple anticircumvention provision:

            No person shall import, manufacture or distribute any device,
product, or component incorporated into a device or product, or offer or
perform any service, the primary purpose or effect of which is to avoid,
bypass, remove, deactivate, or otherwise circumvent, without the authority
of the copyright owner or the law, any process, treatment, mechanism or
system which prevents or inhibits the violation of any of the exclusive
rights of the copyright owner under section 106.


No exceptions of any kind were proposed.

When the DMCA was introduced in the 105th Congress, it contained a similar
provision as Section 1201(b), but also contained a new right for copyright
owners ­ ³No person shall circumvent a technological protection measure that
effectively controls access to a work protected under title 17,² ­ as
Section 1201(a)(1). Section 1201(a)(2) mirrored the ban against trafficking
in circumvention devices of 1201(b), but for ³circumvention to access²
instead of ³circumvention to infringe.² As an example,

            if an effective technological protection measure limits access
to the plain text of a work only to those with authorized access, but
provides no additional protection against copying, displaying, performing or
distributing the work, then a potential cause of action against the
manufacturer of a device designed to circumvent the measure lies under
subsection 1201(a)(2), but not under subsection 1201(b).9


There is little explanation given in the legislative history of the DMCA on
why this new right was given to copyright owners. It does avoid the question
of whether a copy of a work is made when the work is being accessed, say in
a buffer in a computer¹s memory, and whether that copy is sufficiently
permanent to make its creation an infringement.10 This could be a concern
when determining whether streaming audio or using a computer program stored
on a server results in an infringement, and if so, whether it is by the
provider or the user.

Beyond an objection to anticircumvention in general, there was no opposition
to the Section 1201(a)¹s circumvent to access provision as the DMCA was
being considered, except for a concern that it might allow the unwarranted
locking-up of material not protected by copyright. Congress addressed that
with a provision allowing the Copyright Office to issue rules every three
years exempting classes of works from the provision upon a showing of an
impact on criticism, comment, news reporting, teaching, scholarship, or
research and the effect of allowing circumvention on the market value of the
copyrighted works.

The Boucher Bill, A Wolf in Sheep¹s Clothing?

On October 3, 2002, Rep. Rick Boucher (D-VA) along with Rep. John Doolittle
(R-CA) introduced H.R. 5544, the ³Digital Media Consumers¹ Rights Act of
2002.² The day before, Rep. Zoe Lofgren (D-VA) had introduced H.R. 5522,
which proposed a number of changes to the DMCA anticircumvention provisions.
But instead of the clear changes to the DMCA proposed by Rep. Lofgren, Rep.
Boucher put his changes at the end of the bill dealing with mislabeled music
CDs, and called them ³other purposes² in the bill summary.

Rep. Boucher reintroduced his bill in the 108th Congress, changing only
³2002² to ³2003² in the title. But this time, he was able to get the number
H.R. 107, a play on the section number for the ³fair use² provision of the
Copyright Act. For the current Congress, he made some minor changes and was
able to snag the number H.R. 1201, this time a play on the section number of
the DMCA anticircumvention provisions.

Under the heading ³Fair Use Restoration,² H.R. 1201 makes two short changes
to Section 1201. First, it changes 1201(c) so that it would read:

            Nothing in this section shall affect rights, remedies,
limitations, or defenses to copyright infringement, including fair use,
under this title and it is not a violation of this section to circumvent a
technological measure in order to obtain access to the work for purposes of
making noninfringing use of the work. (Added language in italics.)


It also adds a new paragraph to 1201(c):

            (5) Except in instances of direct infringement, it shall not be
a violation of the Copyright Act to manufacture or distribute a hardware or
software product capable of substantial noninfringing uses.


We¹ll look at the new paragraph first.

Come Up With a Use, Avoid Liability

The new paragraph says that anyone who manufactures or distributes software
or hardware will not have any liability for copyright infringement if it is
capable of any substantial noninfringing use.11 Presumably, what Rep.
Boucher is trying to do is codify the Supreme Court¹s Sony Betamax decision.
But as Professor Epstein noted, there has been a dramatic change in the
theory of indirect liability for copyright infringement with the Supreme
Court¹s unanimous decision in Grokster. The Supreme Court in Grokster
recognized the problem with the Sony test.

It is hard to imagine a device or computer program used to reproduce,
display, or distribute a copyrighted work that would not be capable of a
substantial noninfringing use under one of the many exceptions to
infringement in copyright law. Copyright law provides a variety of special
exceptions to the exclusive rights of the copyright owner.12 Libraries can
make a single copy of a work in certain circumstances.13 A computer program
can be duplicated to create an archive copy.14 Works can be performed or
displayed in a classroom setting.15 Judge Posner, in his Aimster opinion,
noted a variety of possible noninfringing uses for peer-to-peer
technology.16

The ³capable of substantial noninfringing uses² test comes from patent law.
But in contrast to copyright, the patent statutes provide only a very
limited statutory exception for patent infringement during the required
testing of a drug.17 In addition, the courts have allowed an ³experimental
use² defense to a charge of patent infringement, but it is far narrower than
copyright¹s ³fair use² defense, being limited to making or using the
patented invention solely ³for amusement, to satisfy idle curiosity or for
strictly philosophical inquiry.²18

In contrast, for almost every copyrighted work of any commercial value there
is some fair use, such as including a snippet of the work in a review or
criticism of the work. Since it is almost always possible to state a
substantial noninfringing use of a work that is protected by a copy control
mechanism, under Rep. Boucher¹s bill it would be possible for anybody to
traffic in devices that circumvent the protection mechanism even when they
know that that will not be the way the device will be most-often used.

And because it should be possible to dream up some substantial noninfringing
use for any circumvention program or tool, what Rep. Boucher is really
proposing is that the DMCA prohibitions on trafficking in such devices be
effectively repealed, although he doesn¹t come right out and say that.

H.R. 1201 Effectively Repeals 1201(A), Too

The second stealthy provision in H.R. 1201 effectively repeals Section
1201(a)(1)¹s prohibition against circumventing to gain access to a
copyrighted work. (Section 1201(a)(2)¹s trafficking provision is gutted
along with Section 1201(b) discussed above, since the same loophole is
created.)

To understand how it does this, you have to remember the two types of
circumventions discussed above. Section 1201(b) addresses ³circumvention to
infringe,² and only has a trafficking provision since any infringement that
results is already a violation of the copyright statutes. Section 1201(a),
on the other hand, addresses ³circumvention to access,² which is of
importance only when there is not an infringement.

H.R. 1201 adds the following: ³It is not a violation of [Section 1201] to
circumvent a technological measure in order to obtain access to the work for
purposes of making noninfringing use of the work.² With that change, you
would only violate the circumvention by access section, Section 1201(a), if
you also infringe. But infringement is already prohibited by the copyright
statutes, and so Section 1201(a) becomes redundant.

The Effect on Recent Trade Agreements

Since the passage of the DMCA in 1998, the United States has included
language that parallels the anticircumvention provisions of the DMCA in
trade pacts. For example, the recently-adopted Central America-Dominican
Republic Free Trade Agreement (CAFTA-DR) Article 15.5 requires that all
parties to the agreement (including the United States) have it be a
violation if a person ­

            (i) circumvents without authority any effective technological
measure that controls access to a protected work, performance, phonogram, or
other subject matter; or (ii) manufactures, imports, distributes, offers to
the public, provides, or otherwise traffics in devices, products, or
components, or offers to the public or provides services, that:
            (A) are promoted, advertised, or marketed for the purpose of
circumvention of any effective technological measure; or
            (B) have only a limited commercially significant purpose or use
other than to circumvent any effective technological measure; or
            (C) are primarily designed, produced, or performed for the
purpose of enabling or facilitating the circumvention of any effective
technological measure,


mirroring the current language of Section 1201(a) of the DMCA. It goes on to
state ­

            Each Party shall provide that a violation of a measure
implementing this paragraph is a separate civil cause of action or criminal
offense, independent of any infringement that might occur under the Party¹s
law on copyright and related rights.


It also limits the exceptions that can be made to the anticircumvention law,
generally mirroring those in the DMCA. Similar provisions are in the trade
agreements with Australia, Bahrain, Chile, Morocco, Oman, and Singapore, as
well as one being negotiated with Colombia, Ecuador, and Peru.19

Adoption of H.R. 1201 would likely mean that we would no longer be in
compliance with those trade agreements, which contain other provisions that
substantially benefit the United States.

Is it Worth it?

It might be worth trying to change, or even dumping, those trade agreements
if the anticircumvention provisions of the DMCA, and in particular the
trafficking provisions and the circumvention to access provision effectively
repealed if H.R. 1201 becomes law, were causing real problems. But it
appears that they are not.
In the almost eight years since the DMCA was enacted, there have been only a
handful of cases regarding Section 1201. Some involved people who were
clearly trafficking in anticircumvention programs, and the courts after
considering their arguments regarding the provisions affecting fair use and
free speech soundly rejected them.20 On the other hand, in the cases where
the anticircumvention provisions were being stretched to protect garage door
opener controllers21 or laser printer toner cartridges,22 the courts have
had no problem in finding that the DMCA provisions were applicable.

The case commonly mentioned regarding the chilling effects on research of
the DMCA anticircumvention provisions involved Princeton professor of
computer science Edward Felten, who received a threatening letter from the
Recording Industry Association of America (RIAA) regarding his proposed
publication of results from a test of a new protection mechanism. (He was
able to crack it.) Even after the RIAA backed off, Felten took the case to
court to try to have the DMCA struck down, but was unsuccessful. His efforts
were not ³chilled² so much as he was seizing an opportunity to try to get
the DMCA struck down in court.

The Electronic Frontier Foundation (EFF) runs a ³Chilling Effects² web
site,23 soliciting examples of how the DMCA anticircumvention provisions
(and other laws) affect researchers and companies. It only lists eleven
instances of cease and desist notices from alleged circumvention activities:
one in 2000 (when the site was established), three in 2001, two in 2002,
none in 2003, one in 2004, one in 2005, and two related letters in 2006.
Many appear to be legitimate concerns and, in any case, these are hardly the
abuse that warrants violating important and hard-fought-for trade
agreements.

While it may be argued that those reports are just the tip of the iceberg,
and that people are not innovating because they are concerned about
violating the DMCA anticircumvention provisions, it is more likely that any
chilling comes from the overheated rhetoric of the DMCA opponents who use it
as a boogie man to get people to support their calls for repeal, and not
what has actually happened since the enactment of the DMCA in 1998.

H.R. 1201 should not be the mechanism for putting the United States in
violation of its trade agreements. If such a far-reaching decision is to be
made, it should be after careful debate based on an understanding of the
anticircumvention provisions. It should not happen by the passage of a
misleading bill that repeals the provisions through stealth.

Endnotes

   1. See 17 U.S.C. § 504(c). If the ³infringer was not aware and had no
reason to believe that his or her acts constituted an infringement of
copyright, the court in its discretion may reduce the award of statutory
damages to a sum of not less than $200² or $20,000 for our hypothetical
³sharer² for 100 files.
   2. 17 U.S.C. § 1002(c).
   3. 47 U.S.C. § 553(a)(2).
   4. 47 U.S.C. § 605(e)(4).
   5. The full text of the treaty, along with other information about it,
can be found at http://www.wipo.int/treaties/en/ip/wct/
   6. 17 U.S.C. § 1201(b)(1).
   7. MGM v. Grokster, decided June 27, 2005, available at
http://straylight.law.cornell.edu/supct/html/04-480.ZO.html. For a
discussion of inducement liability before and after Grokster, particularly
with respect to the Sony decision, see my paper ³Sony Revisited² at
http://digital-law-online.info/papers/lah/sony-revisited.htm.
   8. Intellectual Property and the National Information Infrastructure,
Report of the Working Group on Intellectual Property Rights, Information
Infrastructure Task Force, September 1995, available at
http://www.uspto.gov/web/offices/com/doc/ipnii/. This report also influenced
the U.S. negotiators of the WIPO Copyright Treaty.
   9. Sen. Rep. 105-190, at 12.
  10. See MAI v. Peak, 991 F.2d 511 (Ninth Cir., 1993), holding that loading
a computer program into memory creates a copy that infringes if not
otherwise permitted.
  11. That test comes from the Supreme Court¹s decision in Sony v. Universal
City Studios, 464 U.S. 417 (1984). It is not clear what they considered a
³substantial² use, with some contending that it should be a
commercially-significant use while others argue that it should be any use
that is not just a pretext for other infringement.
  12. See 17 U.S.C. §§107-122.
  13. 17 U.S.C. §108(a).
  14. 17 U.S.C. §117(a).
  15. 17 U.S.C. § 110(1).
  16. In re: Aimster Copyright Litigation, 334 F.3d 643, 652-653 (7th Cir.
2003).
  17. See 37 U.S.C. §271(e).
  18. Roche Products v. Bolar Pharmaceutical, 733 F.2d 858, 863 (Fed. Cir.
1984). Subsection (e) was added to 37 U.S.C. 271 in 1984 specifically to
provide an exception to this case, but Congress declined to provide a
general ³fair use² exception to patent infringement.
  19. Information on current and pending trade agreements can be found at
http://www.ustr.gov/Trade_Agreements/Section_Index.html
  20. See, for example, Universal City Studios v. Corley, 273 F.3d 429
(Second Cir. 2001).
  21. See Chamberlain v. Skylink, 381 F.3d 1178 (Fed. Cir. 2004).
  22. See Lexmark v. Static Control Components, 387 F.3d 522 (Sixth Cir.
2004).
  23. See http://www.chillingeffects.org/anticircumvention/notice.cgi.


About the Author

Lee Hollaar is a professor of computer science in the School of Computing at
the University of Utah, where he teaches computer networking and
intellectual property and computer law. He is the author of Legal Protection
of Digital Information (BNA Books, 2002), available on the Internet along
with a number of his papers at http://digital-law-online.info. He was a
Committee Fellow with the Senate Judiciary Committee during the time the
DMCA was being drafted.