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What Your Business Needs to Know About Copyright:
The DMCA Anti-Circumvention and Trafficking Provisions
March 2, 2011 Heidi E. Harvey, Of Counsel, Boston Thomas A. Brown, Principal, Boston Adam J. Kessel, Associate, Boston
Heidi E. Harvey Of Counsel Boston, MA
Thomas A. Brown Principal
Boston, MA [email protected]
Adam J. Kessel Associate
Boston, MA [email protected]
Speakers
Agenda DMCA: Context and Relationship to Copyright Laws
Statutory Scheme of Protection Against Piracy of Traditional Content
Recent Cases Expanding DMCA Claims Between Competitors
Remedies Q& A/Slides will be Posted
Background of the Legislation
Digital Millennium Copyright Act was enacted in 1998 to harmonize US law with WIPO Copyright treaty:
Protected Works
Applies to “works protected under this Act,” i.e., The Copyright Act, Title 17 U.S.C. Must be subject matter of copyright Must be copyrighted, i.e., original and fixed in a tangible means of expression Work need not be registered
Stated Purpose of the DMCA Address piracy of traditional content such as “movies, music, software, and literary works.” (Senate Judiciary Comm., S. Rep. 105-190 (1998) at 8.)
Scope of DMCA is Much Broader
Provides legal remedies against circumvention of copy controls and access controls What does these terms mean and how are they different? Copyright owner had no exclusive right to control “access” under Section 106
DMCA has arguably has created a new right
Exemptions
Section 512 service providers Non profit libraries, archives and education institutions: limited to a threshhold determination of whether to acquire the work Law enforcement, encryption research, protection of minors Triennial administrative exemptions (Copyright Office) Reverse engineering
Intended Scope of DMCA: Overview
DMCA Prohibitions Access control vs. copy control What is an “effective” measure? Is fair use a defense? Is reverse engineering allowed? Recommendations
DMCA Prohibitions “No person shall circumvent a technological measure that effectively controls access to a work protected under this title.” (17 U.S.C. § 1201(a)(1).) “No person shall . . . traffic in any technology . . . that is primarily designed . . . for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title.” (17 U.S.C. § 1201(a)(2).) “No person shall . . . traffic in any technology . . . that is primarily designed . . . for the purpose of 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.” (17 U.S.C. § 1201(b).)
Access Control vs. Copy Control
Can’t traffic in technology that – Circumvents access control or – Circumvents copy control
Can’t personally circumvent access control Ok to personally circumvent copy control What’s the difference between a copy control measure and an access-control measure?
– An access control measure prevents an unauthorized user from even seeing the protected content
– A copyright-protection measure does nothing to prevent access, but does prevent copying
Blizzard Court
No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that:
What is an “Effective” Control?
Technology need not be particularly “effective” to fall within scope of DMCA
– Even though DVD decryption key is widely known, it is still “effective”
But the measure must protect all ways of getting at the copyrighted work If it’s possible to get at the protected work without circumventing the technological measure, the measure is not effective and there’s no DMCA violation
– MDY Indus. v. Blizzard Entertainment, Inc., 629 F.3d 928, 952. (9th Cir. 2010) (“literal” elements of computer game were stored, unencrypted, on user’s hard drive, and were not protected)
Is Fair Use a Defense?
Not per se. Some courts require that an access-control mechanism have “a reasonable relationship to the protections that the Copyright Act otherwise affords copyright owners.”
– The Chamberlain Group v. Skylink Techs., 381 F.3d 1178, 1202 (Fed. Cir. 2004)
But that analysis was rejected by the Ninth Circuit in MDY v. Blizzard, which held that the unambiguous statutory text forbade circumventing an access control mechanism that controls access to a copyrighted work, regardless of the purpose of the access-control measure.
Is Reverse Engineering a Defense?
Under 1201(f)(1), circumvention in order to reverse engineering is permitted if:
– you have “lawfully obtained the right to use a copy of a computer program”; and
– your “sole purpose [is] of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs,”
– provided that those elements “have not previously been readily available” to you,
– so long as “any such acts of identification and analysis do not constitute [copyright] infringement.”
If you are taking advantage of reverse engineering exception, careful not to infringement any copyrights in the process
Recommendations
If you sell software, or you sell hardware with embedded software, encrypt or otherwise protect the software
– Any “technological” protection will do. – Note that the underlying work has to be copyrightable. Most
software will qualify.
If you want to develop a product compatible with a protected product, make sure you are doing it without infringing any copyrights If you want to prevent others from developing products compatible with your product, make sure this activity is forbidden in your license agreement
– (But consult a lawyer on antitrust implications.)
“Newfangled” Examples of Asserted DMCA Violations Universal Garage Door Openers (Chamberlain 2004) – NO
Printer Toner Cartridges (Lexmark 2004) – NO
Computer tape backup systems (StorageTek 2005) – NO
Video game “auto-pilot” software (Blizzard 2010) - YES
Chamberlain Group v. Skylink Technologies (Federal Circuit 2004)
No violation Facts
– Maker of universal garage door opener accused of violating anti-trafficking provisions of DMCA
– Special series of codes required to open garage door – Work allegedly “protected by copyright” is software in garage door opener
Holdings – Court held that DMCA did not create “a new property right” or
“fundamentally alter” the legal landscape – DMCA not implicated because there was no “infringement of any right that
the Copyright Act protects”
Takeaway: if use of device cannot cause copyright infringement, no DMCA violation.
Lexmark v. Static Control (6th Circuit 2004) No violation Facts
– Maker of discount replacement printer toner cartridges accused of violating anti-trafficking provisions of DMCA
– Toner cartridge required special “handshake” with software on printer before printer would work
– Lexmark alleged copyrighted work was software running on printer
Holdings – Court held that “handshake” did not control “access” to software because
software could be read directly from the printer – Court also noted printer software output was “functional” (e.g., paper feed
and motor control)
Takeaway: DMCA is not implicated where alternative means exist to access copyrighted work without circumvention
StorageTek v. Custom Hardware (Federal Circuit 2005) No violation Facts
– Custom Hardware was independent business that repaired StorageTek backup tapes
– In order to diagnose problems with tapes, Custom Hardware needed to “crack” StorageTek password protection scheme to cause StorageTek system to send maintenance codes
Holdings – Court first decided that running StorageTek software in violation of terms of
use was not copyright infringement – Following Chamberlain decision, Court then found no DMCA violation
because no right protected by copyright was infringed
Takeaway: DMCA violation is intertwined with substantive copyright law analysis
Blizzard v. MDY (9th Circuit 2010) Violation Facts
– MDY developed “bot” software that automatically played World of Warcraft, in violation of Blizzard’s terms of service
– Court found no infringement of Blizzard’s game software by bot
Holdings – Despite no infringement, Court held that “bot” violated the DMCA
by “accessing” game software – Court explicitly broke from Federal Circuit, based on plain language
of statute
Takeaway: circuit split creates uncertainty, but DMCA may be viable tool outside of traditional infringement scenario
Open Issues
Does DMCA require that accused act of circumvention have a “nexus” to copyright infringement? What constitutes an “effective” access control? Effect of license/contractual restrictions on copyright infringement
Remedies-Civil
17 U.S.C. Section 1203
“Any person injured” has standing
Temporary and permanent injunctions
Costs and attorneys’ fees in Court’s discretion
Remedies-Damages
Actual and any additional profits of the violator, or
Statutory damages: “sum of not less than $200 or more than $2,500 per act of circumvention, device, product, component, offer, or performance of service, as the court considers just”
Blizzard case: damages
Court found statutory damages of $800 per act of circumvention
Company had issued 80,000 licenses for “bot” software
$6.4MM damage award
Remedies-Innocent Infringement Remittitur: Court may remit damages for “innocent violations,” Section 1203(5)(c), if violator carries burden of showing he was not aware and had no reason to believe acts were a violation For libraries, archives, non profit educational institutions, and public broadcasting that sustain this burden, Court shall remit damages if this burden is carried
Remedies and Procedure-Criminal
17 U.S.C. Section 1204
Willful violations Commercial advantage or private financial gain $500,000 or 5 years, or both, first offense $1,000,000 or imprisoned for not more than 10 years, or both, for any subsequent offense.
Copyright Webinar Series
Save the date for the next copyright webinar in our series: April 6, 2011 - "What Your Business Needs to Know About Copyright: Registration - Why You Need to Get It Right," presented by Kristen McCallion and Joel Leviton, Co-Chairs of Fish's Copyright Group
Please visit our Copyright Webinar Series site to access archived slides and audio for past events and to view the upcoming schedule for 2011:
www.fr.com/copyright-webinars/
Bibliography-Links The Digital Millennium Copyright Act Senate Judiciary Comm., S. Rep. 105-190 (1998) 17 U.S.C. Chapter 12 § 1201- § 1205 17 U.S.C. Chapter 5 § 512 MDY Indus. v. Blizzard Entertainment, Inc., 629 F.3d 928, 953 et seq. (9th Cir. 2010) The Chamberlain Group v. Skylink Techs., 381 F.3d 1178 (Fed. Cir. 2004) Jacobsen v. Katzer, 535 F.3d 1373, 1380 (Fed. Cir. 2008) Lexmark International, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) Storage Tech. Corp. v. Custom Hardware Eng’g & Consulting, Inc., 421 F.3d 1307 (Fed. Cir. 2005) Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001) RealNetworks, Inc. v. DVD Copy Control Assoc., 641 F. Supp. 2d 913, 936-37 (N.D. Cal. 2009) U.S. v. ElcomSoft & Sklyarov (2002) Blueport Co., LLC v. US, 533 F. 3d 1374
Contact Us
Heidi E. Harvey, [email protected] Of Counsel, Boston, MA
Thomas A. Brown, [email protected]
Principal, Boston, MA Adam J. Kessel, [email protected]
Associate, Boston, MA
© Copyright 2011 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this newsletter has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com.
What Your Business Needs to Know About Copyright:
The DMCA Anti-Circumvention and Trafficking Provisions
March 2, 2011