iLaw Eurasia 2004

Tallinn, Estonia
December 13-17

Intellectual Property Rights (IPR)

Wednesday, 15 December 2004

Overview

The increasingly fast evolution of information and communications technologies has placed enormous pressure on the Intellectual Property legal regime throughout the world. Infringement of intellectual property rights over the Internet has grown to unprecedented levels. The traditional schemes of protection of copyrights, trademarks, patents, software, databases, and so forth seem less well-suited to solve many of the problems faced today by governments, businesses and citizens throughout the world – especially when virtually every act makes a copy, where innovation is happening at a rapid pace, and in an environment where sharing of information is nearly instantaneous and costless. Virtually every country is faced with tricky issues related to whether and how to implement international, regional, or national reforms to its intellectual property laws. In the context of developing countries, these issues frequently raise fears of a new form of structurally-enforced imperialism, grounded in property rights and enforced by the most powerful, intellectual property-exporting countries.

 

The Digital Media Crisis

The Digital Media Crisis demonstrates the pressures upon the traditional system of copyright in Europe, Asia, and elsewhere in the world. A simple shift of format – the transition from hard-copy objects like vinyl records to digitized bits of information like MP3s – has prompted an upheaval of business models, legal principles, and social practices associated with the use, distribution, and control of media.  This upheaval has created a void in the digital media world, a void that policymakers, industry representatives, and consumers are scrambling to fill with new laws and technological solutions.  While the transition to digitization has raised plenty of questions about what is legal, lucrative, and beneficial for advancing the arts and production of creative works, the answers are far from clear. And the implications of the outcome of this crisis range far beyond the entertainment goods at issue today.

A series of essentially peer-to-peer technologies – first Napster (not truly peer-to-peer), Grokster, KaZaA, Morpheus, eDonkey, and others – have brought with them extraodinary promise for creative, lawful acts. But these technologies also present unprecedented challenges to the music and movie distribution businesses, which in turn has applied pressure to policy-makers. Many countries are considering ways that new equilibrium between the divergent interests of artists, performers, producers, and consumers can be achieved. Research reveals that there are at least five plausible future scenarios for resolving this crisis. Four of the five possible scenarios would require substantial changes to national and international intellectual property law, business models, and social norms.[1]

In response to this crisis, some advocate expanding the scope of intellectual property law in order to provide additional protection of digital assets, such as music, movies, and text. This goal can be accomplished through the enactment of new legislation and the expansion of "conventional" doctrines to digital rights disputes. Others endeavor to use new legislation to shore up technological shields developed by private industry. This approach might involve mandating, or simply supporting, the deployment of protective technologies and criminalize efforts to circumvent them. Last, some observers think that intellectual property law as applied to the Internet is already overprotective and ought to be substantially reformed. The legal and technology environments should be adjusted in such a manner as to take advantage of the opportunities presented by digital technologies and the internet in particular. Legal reform ought to focus, in this line of reasoning, on the development of a robust public domain, particularly with respect to digital materials, to encourage new forms of creativity and reuse of ideas and expression.

One of the key issues in Europe related to digital media, and copyright in general, is the implementation of the European Union’s Directive 2001/29/EC, better known as the EU Copyright Directive (EUCD), which seeks to harmonize the divergent European copyright regimes and to transpose the WIPO-treaties. During the intellectual property day in Tallinn, we will consider the variety of ways in which EU member states have transposed the EUCD’s provisions on the protection of technological measures (such as encryption, digital watermarking, copy-control technologies, etc.) into national law, and takes a closer look at the relevant definitions, exemptions, sanctions and remedies. EU member states continue to struggle with some of the thorniest problems already identified at the level of the EUCD, and leave it to the national courts and, ultimately, to the European Court of Justice not only to fine-tune the new legislation, but also to address and resolve rather fundamental issues related to the legal protection of technological measures. The EUCD has led to a certain level of harmonization of member states’ laws, but significant differences among member states in the field of anti-circumvention laws.

 

Trademark and Domain Names

Just as in the case of copyrights, the Internet provides ample opportunity for new means of trademark infringement. Trademarks can now be infringed in ways that reach markets through the world in seconds. At the same time, the Internet has created enormous potential to build international brands online and for new forms of non-commercial communication. One of the solutions proposed by the international community includes the application of ICANN's Uniform Dispute Resolution Policy to solve conflicts between trademark rights and domain names in the Internet context. The UDRP and associated national laws raise issues as to fairness, enforceability of decisions, and interaction with traditional domestic trademark law and civil procedure. (While we will not cover these issues in depth during the formal presentations in Tallinn, we would be happy to discuss them and to point the way toward useful resources.)

 

IP Protections for Software

Like those who distribute digital content, the software industry faces new challenges. Lawmakers have similarly passed a series of reforms that provide for greater protections for software, especially through the patent regime and through database protection legislation. The scope of these protections is an important driver in decision-making about how to develop, distribute and use software in the digital era. Successful software development projects have adopted a broad range of approaches to intellectual property, from the most locked-down, proprietary model to the most determinedly “open” or "free software" models. Key issues at present, in Europe and elsewhere, include the controversial move to extend subject matter coverage to allow the patenting of software, the patenting of business models, and protections extended to databases (discussed briefly below). These protections afford software developers the ability to profit more handsomely from their work in the near-term, but may act to restrict innovation in the process. These patents likewise pose problems for the extension of the open source software movement, which offers a vibrant alternative to the dominant proprietary software development model.

 

Database Protection and Recent Caselaw

In November 2004, the European Court of Justice (ECJ) has handed down judgments in four cases[2] concerning the interpretation of the EU Directive on the Legal Protection of Databases, which provides a "sui generis database right" (to be distinguished from copyright) to the maker of a database if there has been a substantial investment in either the obtaining, verification or presentation of the contents of the database. The cases relate to similar factual circumstances and concern databases of sporting information (horse racing information and football fixture lists.) Certain pieces of information from these databases were used by third parties for commercial gambling operations. In proceedings before the relevant national courts, the claimants alleged that these uses by the gambling operators were an infringement of the claimants' sui generis rights under the Directive. In each case, the national courts referred a set of questions to the ECJ.

In these cases, the ECJ, inter alia, now has clarified the definition of the term "database" as used in the Directive; determined the scope of protection (especially with regard to the "substantial investment" requirement); and, specified the infringement of the sui generis right through extraction or re-utilization.

Taken together, these several doctrinal areas – copyright, trademark, patent, database protections and so forth – present extremely important issues, especially for developing countries, related to the control of knowledge necessary to compete in the global economy.

 

CASE STUDIES

Case #1: Free/Open Source Software Development

The open source movement, like digital technologies generally, presents both opportunities and challenges within the intellectual property context. Over the past decade or so, a large, global community of software developers has turned itself into a major economic and political force by developing new software on a collaborative model, known variously as “open source”, “libre”, and “free” software. While open source technologies have not yet become a major player in the desktop computing space, the majority of web pages, for instance, are served using open source technologies. Chief Information Officers of corporations, government agencies, and other large institutions around the world routinely run flavors of LINUX, a major open source platform, as either the predominant or at least a substantial part of their IT systems. International technology firms, most prominently IBM and Sun Microsystems, have championed the use of open source technologies. Even Microsoft, ordinary perceived as the world’s proprietary software leader, has begun to offer major segments of its software to users under its growing “shared source” program.

Open source presents opportunities to countries that are growing their ICT infrastructure because it is often a low-cost software choice (and free, at least in its simple form), more secure than some proprietary technology choices (according to many technologists, though this assertion is controversial), and can foster a local technology development community rather than sending license streams to large technology companies in other countries, frequently the United States. Countries and municipalities frequently consider policies to favor open source technologies over proprietary choices. Consider also the case of the city of Munich’s high-profile decision to procure open source solutions instead of Microsoft products in 2003 (see http://europa.eu.int/ida/en/document/2000). The debate over such choices rages in capitals around the world.

The intellectual property regime related to open source software, however, is not altogether clear. Most open source technologies are, in the first instance, protected by copyright, and then distributed by their authors to others subject to one of about 50 open source or free software licenses, such as the GPL or BSD. These licenses frequently require those who would re-use open source technologies to do certain things, such as re-releasing any derivative works in a certain format and subject to similar forward-looking restrictions. Doubts have cropped up about the legality of such licenses, which have only rarely been tested in court. Likewise, some purported rights-holders in the chain of title to important open source code have challenged end uses of the technologies on intellectual property grounds, most prominently in the case SCO v. IBM, pending in the United States court system and which could have implications for open source software development projects around the world.

Activists and policy-makers are presented with a series of problems related to open source. Is promotion of open source technologies, rather than proprietary choices, sound public policy? Does the intellectual property regime, whether in individual countries or in a global sense, need to be adjusted to support open source technology development? What do local software developers have to gain from a legal and policy regime supportive of open source technologies?

 

Case #2: Dmitry Sklyarov and the International Reach of Intellectual Property Laws

One of the most pressing issues related to the development of intellectual property laws and the internet is the management of conflicting legal regimes over international borders. On the one hand, harmonization and cooperation across national borders would no doubt help the flow of commerce, as supporters of the TRIPS and WIPO regimes argue; on the other, such harmonization and enforcement would likely export and re-inforce the existing United States-based view of intellectual property law, which is a relatively strong strand of protection for copyright holders and those who make copy-protective technologies. The Dmitry Sklyarov case presents a variant of this problem: how United States law and technologies itself can affect the actions of those based in the Eurasia region.

With annual revenues of more than $1 billion, Adobe is the second largest PC software company in the U.S. In an effort to lead the market for software that enables the digital distribution of books, Adobe developed the Adobe Acrobat eBook Reader (now integrated into Adobe Acrobat Reader). Development of the market for digital book distribution software also requires adoption of the technology by book publishers. Adobe's eBook Reader is designed as a ‘trusted system’, offering publishers a spectrum of copyright protection options when encoding their content.

Founded in 1990 and headquartered in Moscow, ElcomSoft is a software company that "specializes in producing Windows productivity and utility applications for businesses and individuals." Among the many software products developed by ElcomSoft is the "Advanced eBook Processor (AEBPR)", which used to be available for download from their site (but seems to have been removed). The program enables users to: i) disable the copyright protection controls deployed by book publishers using Adobe's software and ii) repackage their digital books in a variety of common formats without copyright controls.

Dmitry Sklyarov is a young programmer and cryptographer formerly employed by ElcomSoft who has been researching cryptanalysis in furtherance of a Ph.D. he hopes to earn from a Moscow University. He is allegedly responsible for much of ElcomSoft's AEBPR, most notably, the decryption algorithms it employs to circumvent Adobe's copyright protection controls.

In its first criminal prosecution under the Digital Millenium Copyright Act (DMCA), the U.S. Department of Justice ("D.O.J.") indicted both ElcomSoft and Sklyarov for violations stemming from the development and marketing of ElcomSoft's AEBPR. (Adobe officers brought ElcomSoft's AEBPR to the attention of the FBI on June 26, 2001.) Sklyarov was most likely targeted largely because of his plans to enter the United States for a conference in Las Vegas (making it easier for the D.O.J. to persuade a U.S. court to exert jurisdiction over him). The Electronic Frontier Foundation (EFF) tells the dramatic story as follows:

[Sklyarov] was invited to give a presentation at the DEF CON conference in Las Vegas about the electronic security research work he has performed as part of his PhD research. His presentation concerned the weaknesses in Adobe's eBook technology software. Dmitry was arrested at his hotel in Las Vegas, on 16 July, [2001,] as he was leaving to return to Russia.

In its August 28, 2001 press release, the D.O.J. reported:

The United States Attorney's Office for the Northern District of California announced that Elcom Ltd. (also known as Elcomsoft Co. Ltd.) and Dmitry Sklyarov, 27, both of Moscow, Russia, were indicted today by a federal grand jury in San Jose, California on five counts of copyright violations.

The defendants were each indicted on one count of conspiracy to traffic in technology primarily designed to circumvent, and marketed for use in circumventing, technology that protects a right of a copyright owner, in violation of Title 18, United States Code, Section 371; two counts of trafficking in technology primarily designed to circumvent technology that protects a right of a copyright owner, in violation of Title 17, United States Code, Section 1201(b)(1)(A); and two counts of trafficking in technology marketed for use in circumventing technology that protects a right of a copyright owner, in violation of Title 17, United States Code, Section 1201(b)(1)(C).

Sklyarov's arrest prompted outcries of outrage from software developers, civil libertarians and all who generally oppose the DMCA (for ideological or "practical" reasons). He faced a maximum fine of $2.25 million and up to 25 years imprisonment. Not surprisingly, the D.O.J. promptly reached an agreement with Sklyarov, under the terms of which they have agreed not to prosecute him personally if he assists in their (criminal) prosecution of ElcomSoft.

On December 17, 2002, a federal jury acquitted ElcomSoft of all criminal charges against it and Sklyarov was released subject to a plea agreement. This case is highly fact-specific and unlikely to be repeated. But it demonstrates the power and reach of copyright-related laws – such as the US’s DMCA – outside the geographic boundaries of a given jurisdiction. It also raises issues that a country debating adoption of similar anti-circumvention provisions (as prompted, for instance, by the EUCD) might be well-advised to bear in mind.

 

Background Materials

A Comprehensive Guide to European Law – Summaries of Legislation – Intellectual Property, at http://www.europa.eu.int/scadplus/leg/en/s06020.htm.

WIPO Treaty at http://cyber.law.harvard.edu/globaleconomy/3.3_WIPO.doc.

Implementation of the EU Directive at http://www.patent.gov.uk/about/consultations/eccopyright/annexb.htm.

William W. Fisher, III, Promises to Keep, Chapter 6 (Stanford University Press, 2004), at http://cyber.law.harvard.edu/people/tfisher/PTKChapter6.pdf.

Foundational Whitepaper Five Scenarios for Digital Media in a Post-Napster World, released by the Berkman Center in November 2003, at http://cyber.law.harvard.edu/home/uploads/286/2003-07.pdf.

John Palfrey, Boston Globe Op-ed, The Digital Copyright Crisis, at http://www.boston.com/news/globe/editorial_opinion/oped/articles/2004/09/07/the_digital_copyright_crisis/.

WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), at http://arbiter.wipo.int/domains/guide/index.html.

ECLIP: Domain Names: Trademark Conflicts and Related Issues, at http://europa.eu.int/ISPO/legal/en/lab/991216/recomm_domain_names.pdf.

Readings for the module “Alternatives to Intellectual Property”, at http://cyber.law.harvard.edu/ilaw/harvard_2004_alternativestoip_content#readings.

iTunes Europe: A Preliminary Analysis, at http://cyber.law.harvard.edu/media/itunes_europe.

EUCD Implementation study and interactive chart, at http://cyber.law.harvard.edu/media/eucd.



[1] See http://cyber.law.harvard.edu/media for more on these five scenarios and a variety of other research reports related to the Digital Media crisis. See also William W. Fisher III, Promises to Keep: Technology, Law and the Future of Entertainment (Stanford, 2004).

[2] Judgments of the Court in the cases: Fixtures Marketing Ltd v. Oy Veikkaus Ab; The British Horseracing Board Ltd and Others v. William Hill Organisation Ltd; Fixtures Marketing Ltd v. Svenska Spel AB; and Fixtures Marketing Ltd v. Organismos prognostikon agonon podosfairou (OPAP).