Spring, 1999
14 Berkeley Tech. L.J. 519
LENGTH: 25580 words
SYMPOSIUM: Intellectual Property
and the Digital Economy: Why the Anti-Circumvention Regulations Need to
Be Revised
By Pamela Samuelson*
© 1999 Pamela Samuelson.
* Professor of Information Management
and of Law, University of California at Berkeley; Co-Director of the
Berkeley Center for Law and Technology.
This paper is an outgrowth of work initially done for an Emory Law
School conference on the law of
cyberspace held in February 1996. The draft article produced for that
conference entitled Technical Protection
for Copyrighted Works discussed a 1995 legislative proposal for
regulating the circumvention of
technical protection systems. I am deeply indebted to Benjamin Black who
was
my research assistant during preparation
of this draft. He subsequently collaborated with me on a derivative
work of that paper. Although that
project was never completed, this article builds on the base of that
collaboration. I am also grateful
for comments on this draft from Hal Abelson, Jonathan Band, Yochai Benkler,
Julie Cohen, Gideon Frieder, Joan
Feigenbaum, Bob Glushko, Peter Huang, Laurel Jamtgaard, and Kurt Opsahl.
SUMMARY:
... The Digital Millennium Copyright
Act of 1998 ("DMCA") prohibits the circumvention of technological
protection measures used by copyright
owners to control access to their works. ... Some representatives of
major copyright industries who testified
at a Congressional hearing on this legislation expressed the view that
fair use should not be an acceptable
reason to "break" a technical protection system used by copyright
owners to protect their works. ...
It also proposed a moratorium on the anti-circumvention rules so that a
study could be conducted about the
potential impact of anti-circumvention rules on fair use, the public
domain, and other noninfringing
uses of copyrighted works. ... The only way to find out whether the copyright
owner's suspicion is valid may be
to circumvent the technical protection system to get access to the
encrypted material. ... It is, however,
difficult to believe that most judges would find providing either software
or information to enable circumvention
of this component of a technical protection system to fall within the
DMCA anti-device rules. ... This
creates a potential for "strike suits" by nervous or opportunistic copyright
owners who might challenge (or threaten
to challenge) the deployment of a new information technology tool
whose capabilities may include circumvention
of some technical protection system. ...
TEXT:
[*519]
Abstract
The Digital Millennium Copyright
Act of 1998 ("DMCA") prohibits the circumvention of technological protection
measures used by copyright owners
to control access to their works. It also bans devices whose primary
purpose is to enable circumvention
of technical protection systems. The Clinton administration proposed these
anti-circumvention rules as implementations
of U.S. obligations under the World Intellectual Property
Organization Copyright Treaty. However,
the DMCA's provisions are significantly broader than the treaty
required. They violate the Administration's
stated goal of only imposing "predictable, minimalist, consistent, and
simple" regulations on the budding
digital economy.
Although Congress heeded some concerns
of digital economy firms by crafting certain exceptions to authorize
legitimate circumvention, those
exceptions are overly narrow and shortsighted. They should be supplemented
by a more general "other legitimate
purposes" exception. The DMCA's anti-device provisions are, moreover,
overbroad and unclear, especially
on the question whether it is legal to develop a technology necessary to
engage in a privileged act of circumvention
(e.g., a fair use). Either Congress or the courts will be forced to
constrain the reach of the anti-device
rules so as not to undermine Congressional intent to preserve fair uses
and so as not to harm competition
and innovation in the information technology sector. Finally, though the
DMCA provides [*520]
for a study of one class of potentially harmful impacts of the anti-circumvention
rules,
this study needs to be broadened
to consider the full impact of this unprecedented legislation.
I. Introduction
The Clinton Administration's Framework
For Global Electronic Commerce aims to promote the development of a
vast global market in which electronic
contracts will be made for delivery of electronic information products
and services via digital networks
which will be paid for with electronic currencies. n1 The Framework
simultaneously encourages private
investment and entrepreneurship, urges governments at all levels to act
with restraint in considering regulations
of the emerging digital economy, and argues for international
cooperation in adopting consistent
policies that will promote this commerce. n2 The Commerce Department's
First Annual Report on the Framework
initiative indicates that this initiative has [*521] met with
some
success. n3 Passage of the Digital
Millennium Copyright Act ("DMCA") n4 is among the successes claimed in
this report. n5
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n1. See William J. Clinton &
Albert Gore, Jr., A Framework for Global Electronic Commerce (1997), available
at
<http://www.iitf.nist.gov/eleccomm/ecomm.htm>
[hereinafter Framework].
n2. See id. at 2-4.
n3. See U.S. Gov't Working Group
on Elec. Commerce, First Annual Report (1998), available at
<http://www.doc.gov/ecommerce/E-comm.pdf>
[hereinafter First Annual Report].
n4. Digital Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (1998).
n5. See First Annual Report, supra
note 3, at 2.
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The Commerce Department may be correct
in thinking that the interests of the digital economy will be
furthered by widespread acceptance
of the World Intellectual Property Organization ("WIPO") Copyright Treaty
n6 in the international community.
n7 This treaty establishes several important international norms for applying
copyright law in the digital environment.
n8 International consensus on these norms should aid the growth of
the global digital economy. n9 However,
the DMCA was largely unnecessary to implement the WIPO Copyright
Treaty because U.S. law already
complied with all but one minor provision of that treaty. n10
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n6. See WIPO Copyright Treaty, adopted
by the Diplomatic Conference on Dec. 20, 1996, WIPO Doc.
CRNR/DC/94 (Dec. 23, 1996) [hereinafter
WIPO Copyright Treaty]. There were actually two treaties concluded
at this diplomatic conference. The
other was the WIPO Performances and Phonograms Treaty, adopted by the
Diplomatic Conference on Dec. 20,
1996, WIPO Doc. CRNR/DC/95 (Dec. 23, 1996). Because the U.S. protects
the interests of producers and performers
of phonograms largely through copyright law and because the
phonograms treaty was not materially
different in its requirements as regards issues covered in this article,
the
article will, for the sake of simplicity,
focus on the WIPO Copyright Treaty provisions.
n7. See generally Pamela Samuelson,
The U.S. Digital Agenda at WIPO, 37 Va. J. Int'l L. 369 (1997) (discussing
the negotiations leading to conclusion
of the WIPO Copyright Treaty).
n8. See infra notes 45-55 and accompanying text for a discussion of these norms.
n9. See First Annual Report, supra note 3, at 10-11.
n10. See, e.g., Pamela Samuelson,
Big Media Beaten Back, Wired, March 1997, at 64 (explaining that U.S. law
was in compliance with almost all
norms of the treaty). Only the treaty provision calling for protecting
the
integrity of rights management information
needed legislative implementation in U.S. law. WIPO Copyright
Treaty, supra note 7, art. 12; see
also infra notes 56-64 and accompanying text.
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Although the WIPO Copyright Treaty
requires countries to provide "adequate protection" against the
circumvention of technical measures
used by copyright owners to protect their works from infringement, the
DMCA went far beyond treaty requirements
in broadly outlawing acts of circumvention of access controls and
technologies that have circumvention-enabling
uses. n11
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n11. WIPO Copyright Treaty, supra
note 6, art. 11. The DMCA anti-circumvention provision can be found at
17
U.S.C.A. 1201 (West Supp. 1999).
See infra notes 66-70 and accompanying text for a discussion of why the
treaty did not require the DMCA
provisions.
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[*522] The anti-circumvention
rules in the DMCA do not match up well with the needs of the digital
economy, or with the principles
propounded in the Framework. n12 Although the First Annual Report praises
the DMCA for the balance it embodies
between copyright protection and access to information, n13 this article
will demonstrate that such balance
as the DMCA contains is attributable to congressional foresight, not to
the
Clinton Administration. n14 Indeed,
for the past five years, the Administration has supported highly unbalanced
digital copyright initiatives and
has resisted most efforts to introduce more balance in these initiatives.
n15
With the enactment of the anti-circumvention
provisions of the DMCA, the Administration may have had more
success in achieving imbalance in
digital copyright law than Congress may have realized. n16
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n12. See infra Part III for an articulation
of these principles. See infra Parts V-VIII for an analysis of why these
provisions may be harmful to digital
economy interests.
n13. See First Annual Report, supra note 3, at 14.
n14. See infra Part V.
n15. See U.S. Dep't of Commerce Info.
Infrastructure Task Force, Intellectual Property and the National
Information Infrastructure: The
Report of the Working Group on Intellectual Property Rights (1995) [hereinafter
White Paper]. Numerous articles
have criticized this and an earlier draft report because of its imbalance
heavily
tilted in favor of publisher interests.
See, e.g., Peter A. Jaszi, Caught in the Net of Copyright, 75 Or. L. Rev.
299 (1996); Leslie Kurtz, Copyright
and the National Information Infrastructure, 18 Eur. Intell. Prop. Rev.
120
(1996); Jessica Litman, The Exclusive
Right to Read, 13 Cardozo Arts & Ent. L. 29 (1994); Charles R. McManis,
Taking TRIPS on the Information
Superhighway: International Intellectual Property Protection and Emerging
Computer Technology, 41 Vill. L.
Rev. 207 (1996); Pamela Samuelson, The Copyright Grab, Wired, Jan. 1996,
at 134.
n16. See infra Parts V-VII.
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It would oversimplify the facts -
although not by much - to say that the battle in Congress over the
anti-circumvention provisions of
the DMCA was a battle between Hollywood and Silicon Valley. n17 Hollywood
and its allies sought the strongest
possible ban both on the act of circum [*523] venting a technical
protection system used by copyright
owners to protect their works and on technologies having
circumvention-enabling uses. n18
Silicon Valley firms and their allies opposed this broad legislation because
of
deleterious effects it would have
on their ability to engage in lawful reverse engineering, computer security
testing, and encryption research.
n19 They supported legislation to outlaw acts of circumvention engaged
in
for the purpose of infringing copyrights
and would have supported narrowly drawn device legislation had the
Congressional subcommittees principally
responsible for formulating WIPO treaty implementation legislation
been receptive to a narrower bill.
n20 Silicon Valley and its allies warned of dire consequences if the overbroad
anti-circumvention provisions Hollywood
supported were adopted. n21 Yet, by colorful use of high rhetoric and
forceful lobbying, Hollywood and
its allies were successful in persuading Congress to adopt the broad
anti-circumvention legislation they
favored, even if it is now subject to some specific exceptions that respond
to some concerns raised by Silicon
Valley firms and their allies in the legislative process. n22
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n17. See, e.g., WIPO Copyright Treaties
Implementation Act; and Online Copyright Liability Limitation Act:
Hearing on H.R. 2281 and H.R. 2280
Before the Subcomm. on Courts and Intellectual Property of the House
Comm. on the Judiciary 105th Cong.
78-82 (1997) [hereinafter Judiciary Hearing] (statement of Jack Valenti,
President and CEO, Motion Picture
Ass'n of America); id. at 256-65 (statement of Edward J. Black, President,
Computer and Communications Industry
Ass'n ). It should be noted that the Business Software Alliance, whose
principal member is Microsoft, supported
Hollywood's preferred bill for reasons which may become apparent
later in this article. See infra
notes 180-186 and accompanying text. See also Judiciary Hearing, supra,
at
68-77 (statement of Robert W. Holleyman
II, President, Business Software Alliance).
n18. See, e.g., Judiciary Hearing,
supra note 17, at 78-82 (statement of Jack Valenti); id. at 204-12
(statement of Allan R. Adler, Vice
President for legal and governmental affairs, Ass'n of American Publishers).
n19. See infra notes 87-94 and accompanying
text. Other groups opposed to the broad anti-circumvention
legislation of H.R. 2281 included
librarians and educators. See infra notes 117-120 and accompanying text.
n20. The Digital Future Coalition
- whose members include the Computer & Communications Industry
Association, among other high tech
industry groups - endorsed H.R. 3048, 105th Cong. (1997), which
proposed such a narrow circumvention
provision. See Introduction of the Digital Era Copyright Enhancement
Act, 55 BNA Pat., Trademark &
Copyright J. 68, 70-71 (1997) (describing the anti-circumvention provision
of
H.R. 3048). See also Judiciary Hearing,
supra note 17, at 256-65 (statement of Edward J. Black) (critical of
the Administration's anti-circumvention
proposal); id. at 249-56 (statement of Chris Byrne, Director of
Intellectual Property, Silicon Graphics,
Inc., on behalf of the Info. Tech. Indus. Council) (critical of H.R. 2281).
n21. See, e.g., Judiciary Hearing,
supra note 17, at 260 (prepared statement of Edward J. Black); see also
id.
at 154-55 (prepared statement of
Prof. Robert L. Oakley, Georgetown University Law Center).
n22. See infra Part V.
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Had the Administration sought to
broker a fairer compromise between the interests of Hollywood and its allies
and the interests of Silicon Valley
and its allies, this process would almost certainly have produced better
legislation than the anti-circumvention
provisions of the DMCA. One would have thought, given the
Framework's principles and the Administration's
enthusiasm for the strong economic performance of the infor
[*524] mation technology
sector, that the Administration would have taken a more balanced position
on
these issues. n23 One can call the
DMCA's anti-circumvention provisions many things, but one cannot honestly
speak of them as "predictable, minimalist,
consistent, and simple" components of a legal environment for
electronic commerce, as the Framework
principles would suggest they should be. n24
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n23. See infra Part III.
n24. See Framework, supra note 1,
at 3. For further criticism of the DMCA's anti-circumvention provisions
on
constitutional grounds, see Yochai
Benkler, Free As the Air To Common Use: First Amendment Constraints on
the Enclosure of the Public Domain,
74 N.Y.U. L. Rev. 354 (1999).
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This article will make three main
points about the anti-circumvention rules in the DMCA. First, there are
far
more legitimate reasons to circumvent
a technical protection system than the DMCA's act-of-circumvention
provision expressly recognizes.
n25 This provision should be amended to provide a general purpose "or other
legitimate purposes" provision to
avert judicial contortions in interpreting the statute. Second, the anti-device
provisions of the DMCA are highly
ambiguous and overbroad, raising questions about whether Congress
understood the potential for these
provisions to undermine circumvention privileges built into the
act-of-circumvention prohibition.
n26 The anti-device provisions of DMCA should be clarified and a more
minimalist approach taken to the
regulation of technologies with circumvention-enabling uses so that the
ambiguity and overbreadth of the
existing provisions will not cause harm to innovation and competition in
the
information technology sector. Third,
periodic reviews of the impact of the anti-circumvention provisions of
the
DMCA as a whole should be undertaken.
n27 Given how broad the anti-circumvention rules are, given their
unprecedented character, and given
the potential for harmful consequences from these rules, Congress should
authorize a far broader study of
the impact of these provisions than the DMCA presently contemplates. It
should also heed proposals for change
to the anti-circumvention provisions recommended in such studies.
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n25. See infra Part VI.
n26. See infra Part VII.
n27. See infra Part VIII.
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[*525] II. THE DIGITAL
ECONOMY IS A HIGH GROWTH, HIGH POTENTIAL SECTOR WHOSE NEEDS DESERVE
CAREFUL CONSIDERATION
An April 1998 report, The Emerging
Digital Economy, published by the U.S. Department of Commerce begins
with the following observations:
During the past few years, the United
States economy has performed beyond most expectations. A shrinking
budget deficit, low interest rates,
a stable macroeconomic environment, expanding international trade with
fewer barriers, and effective private
sector management are all credited with playing a role in this healthy
economic performance.
Many observers believe advances in
information technology ("IT"), driven by the growth of the Internet, have
also contributed to creating this
healthier-than-expected economy.
In recent testimony to Congress,
Federal Reserve Board Chairman Alan Greenspan noted, "our nation has been
experiencing a higher growth rate
of productivity - output per hour - worked in recent years. The dramatic
improvements in computing power
and communication and information technology appear to have been a major
force behind this beneficial trend."
n28
This report indicates that the IT
sector of the U.S. economy - which includes the computer hardware,
software, networking and telecommunications
industries - now constitutes an estimated 8.2 per cent of the
gross domestic product, close to
twice its share of GDP as compared with a decade or so before. n29 The
IT
sector, moreover, accounts for more
than one-quarter of the real economic growth in the American economy.
n30 Approximately 45 per cent of
current expenditures on business equipment are investments in IT products
and services. n31 It is no wonder,
then, that the collective capitalization of five major firms in this sector
-
Microsoft, Intel, Compaq, Dell,
and Cisco Systems - has grown from $ 12 billion in 1987 to $ 588 billion
in 1997,
nearly a fifty-fold increase in
only a dec [*526] ade. n32 Perhaps somewhat more wondrous are
the
astonishing market capitalizations
of relatively new Internet firms, such as Amazon.com, Yahoo!, and E*Trade.
These valuations reflect the market's
belief in the high growth potential of these players in the digital
economy, even if their earnings
so far might seem to belie this. n33 It is, of course, important to realize
that
the IT sector is not the only component
of the digital economy. n34 It is, however, a significant part of that
economy, and it is also the enabler
of growth in other parts of the digital economy, as vendors of products
and services of both tangible and
intangible kinds make use of digital networks to offer their wares to a
global
market. n35 Especially as electronic
commerce via the Internet and the World Wide Web expands, the IT
sector is likely to experience further
explosive growth. n36
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n28. U.S. Dep't Of Commerce, Secretariat
on Elec. Commerce, The Emerging Digital Economy 1 (1998)
[hereinafter Emerging Digital Economy].
n29. See id. at 4.
n30. See id. at 6.
n31. See id.
n32. See id. Of course, it is fair
to observe that some of this growth has occurred by virtue of acquisitions
of
other substantial firms, such as
Compaq's acquisition of Digital Equipment Corp.
n33. See, e.g., James J. Cramer,
TulipMania.com? Despite their soaring prices, the best Internet stocks
are
still bargains. Here's how to pick
'em, Time, Aug. 3, 1998, at 77; see generally Steve Mott, Where Eagles
Soar:
Making Sense of Internet Valuations,
Business 2.0, Nov. 1998.
n34. See Emerging Digital Economy, supra note 28, chs. 4-5 (discussing digital economy sectors).
n35. See id.
n36. See id.
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The Emerging Digital Economy report
continues along the path set by the Administration's early policy
document, The Framework for Global
Electronic Commerce, in seeking to foster the growth potential of the
digital economy. n37 Both documents
recognize that "governments can have a profound effect on the growth
of commerce on the Internet. By
their actions, they can facilitate electronic trade or inhibit it. Knowing
when
to act and - at least as important
- when not to act, will be crucial to the development of electronic
commerce." n38 One of the signal
achievements of the Framework was the promulgation of five principles that
were supposed to guide U.S. as well
as other governmental action on policy initiatives on electronic
commerce:
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n37. See id. at 50-51.
n38. Framework, supra note 1, at
2; Emerging Digital Economy, supra note 28, at 50-51.
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1) The private sector should lead.
2) Governments should avoid undue restrictions on electronic commerce.
[*527] 3) Where government
involvement is needed, its aim should be to support and enforce a predictable,
minimalist, consistent, and simple
legal environment for commerce.
4) Governments should recognize the unique qualities of the Internet.
5) Electronic commerce over the Internet
should be facilitated on a global basis. n39
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n39. Framework, supra note 1, at
2-3.
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The First Annual Report of the U.S.
Working Group on Electronic Commerce offers evidence that the
Framework's policy objectives are
being achieved. n40
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n40. See id. at iii-v.
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As laudable as the Framework's principles
are, it should be said that the Clinton Administration has been
somewhat erratic in following them.
The Administration has a good record in promoting minimalist tax and
customs policies. n41 However, it
has been widely criticized by the IT/digital economy sector for not following
these principles in the security/encryption
policy area and in the content policy area, owing to the
Administration's support for the
Clipper Chip and the Communications Decency Act. n42 In the legislative
struggle leading up to adoption
of the DMCA, the Administration deviated from these principles once again
in
heeding the desires of established
copyright industries to reconstruct the legal infrastructure of the digital
environment so that it would accommodate
their preferences. These industries insisted that this restructuring
was necessary to protect them from
the grave threat of piracy posed in the digital environment. n43 Many
significant players in the existing
digital economy counseled against this restructuring. n44 The Administration
should, of course, have considered
the interests and concerns of Hollywood and other copyright industry
groups in its consideration of an
appropriate digital copyright policy initiative. However, the Administration
might have done more to consider
the interests of those already partici [*528] pating in the
digital economy
in its policy formation on these
issues, particularly since its preferred policy so clearly violated the
principles
that the Administration had asserted
it would follow.
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n41. See id. at iii, 7 (mentioning
passage of the Internet Tax Freedom Act); see also id. at 12 (discussing
foreign tax initiatives).
n42. See, e.g., Esther Dyson, Release 2.0 (1997).
n43. See Judiciary Hearing, supra note 17, at 79-80 (prepared statement of Jack Valenti).
n44. See id. (testimony of Edward
J. Black; testimony of Chris Byrne); see also The WIPO Copyright Treaties
Implementation Act: Hearing on H.R.
2281 Before the Subcomm. on Telecomm., Trade, & Consumer Protection
of the House Comm. on Commerce,
105th Cong. (1998) [hereinafter Commerce Hearing].
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III. THE WIPO COPYRIGHT TREATY IS
GOOD FOR THE NEW ECONOMY
The WIPO Copyright Treaty established
several norms about applying copyright law in the digital environment.
n45 They include:
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n45. See WIPO Copyright Treaty, supra
note 7. See also Samuelson, supra note 7 (discussing the digital
agenda WIPO treaty provisions).
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1) copyright owners should have an
exclusive right to control the making of copies of their works in digital
form, n46
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n46. There was an explicit provision
on the reproduction right in the draft treaty initially considered at WIPO.
See Basic Proposal For the Substantive
Provisions of the Treaty On Certain Questions Concerning the
Protection of Literary and Artistic
Works To Be Considered at the Diplomatic Conference, WIPO Doc.
CRNR/DC/4, art. 7(1) (Aug. 30, 1996).
However, this provision did not attract consensus because of its
inclusion of temporary reproductions,
which was highly controversial. See Samuelson, supra note 7, at 382-90.
Instead, the diplomatic conference
agreed on certain statements of interpretation of the treaty which included
a provision on the reproduction
right. See Agreed Statements Concerning the WIPO Copyright Treaty, adopted
by the Diplomatic Conference on
Dec. 20, 1996, WIPO Doc. CRNR/DC/96 at 1 (Dec. 23, 1996) [hereinafter
Agreed Statements]. For a discussion
of the tortured history of the draft treaty provision, the Agreed
Statements, and what they mean,
see Samuelson, supra note 7, at 382-92.
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2) copyright owners should have an
exclusive right to control the communication of their works to the public,
n47
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n47. See WIPO Copyright Treaty, supra
note 6, art. 8. While the United States does not have an exclusive
right of communication in its copyright
law, see 17 U.S.C. 106 (1994) (exclusive rights provisions), its public
performance and distribution rights
are substantively equivalent to this right. See id.; Samuelson, supra note
7, at 392-98 (discussing negotiations
concerning digital communications).
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3) countries can continue to apply
existing exceptions and limitations, such as fair use, as appropriate in
the
digital environment, and can even
create new exceptions and limitations appropriate to the digital
environment, n48
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n48. See Agreed Statements, supra
note 46, at 2. This agreed statement was in striking contrast to the
proposed treaty language and proposed
comments on exceptions and limitations to copyright in the draft
treaty considered at the WIPO diplomatic
conference. See Samuelson, supra note 7, at 398-409 (discussing
the draft and final provisions on
fair use and other exceptions). Although the White Paper had expressed
doubts about the viability of fair
use in the digital environment, the Clinton Administration was ultimately
persuaded that the WIPO Copyright
Treaty should contain a more positive statement about fair use in the
digital environment. See White Paper,
supra note 15, at 82; Samuelson, supra note 7, at 406.
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[*529] 4) merely providing
facilities for the communication of works should not be a basis for infringement
liability, n49
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n49. See Agreed Statements, supra
note 46, at 2. This issue had been highly contentious, both in the U.S.
and at the diplomatic conference,
because the Clinton Administration supported holding online service
providers strictly liable for infringing
acts of their users. See White Paper, supra note 15, at 114-24;
Samuelson, supra note 7, at 385-88
(discussing controversy at diplomatic conference). The DMCA included a
provision substantially limiting
on online service provider liability. See 17 U.S.C.A. 512 (West Supp. 1999).
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5) it should be illegal to tamper
with copyright management information insofar as this would facilitate
or
conceal infringement in the digital
environment, n50 and
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n50. See WIPO Copyright Treaty, supra
note 7, art. 12. For a discussion of the history and meaning of this
provision, see Samuelson, supra
note 7, at 415-18.
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6) countries should have "adequate
legal protection and effective legal remedies against the circumvention
of
effective technological measures"
used by copyright owners to protect their works from infringing uses. n51
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n51. See WIPO Copyright Treaty, supra
note 7, art. 11. The draft treaty considered at WIPO included a
provision quite similar to the anti-circumvention
provision endorsed by the Clinton Administration in the White
Paper which sought to outlaw technologies,
the primary purpose or effect of which was to circumvent
technical protection measures. The
draft treaty provision, like the White Paper's proposed anti-circumvention
regulation, was highly controversial
within the United States and even more so at the diplomatic conference.
Many delegations expressed concern
about the impact of such regulations on fair uses and public domain
information. As a consequence, the
final treaty included only a very general norm on anti-circumvention. See
Samuelson, supra note 7, at 409-15.
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To the extent that uncertainties
about how copyright law should apply in the digital environment were
impeding the growth of a global
market in electronic intellectual property products, n52 there was reason
to be
optimis [*530] tic that
conclusion of this treaty would remove these blockages and allow e-commerce
to
flourish. n53 These norms are as
"predictable, minimalist, consistent, and simple" components of a legal
environment for commerce as one
could expect copyright professionals to devise. n54 Thus, the WIPO treaty
itself established norms compatible
with Framework principles and with the needs of the digital economy. That
nearly one hundred sixty nations
signed this treaty indicated a strong consensus that digital works should
be
given appropriate protection on
an international scale. n55 This was very good news for U.S. digital economy
industries.
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n52. Other factors besides uncertainties
about the application of copyright law in the digital environment may
be responsible for the slower-than-anticipated
growth in the market for digital versions of copyrighted works.
See, e.g., Pamela Samuelson, Authors'
Rights in Cyberspace: Are New International Rules Needed?, First
Monday (Oct. 1996), available at
<http://www.firstmonday.dk/issues/issue4/samuelson/index.html>. However,
there is a better case for such
uncertainties being an impediment on an international scale than in the
United
States. That U.S. copyright law
protects authors against unauthorized digital reproductions of their works
has
been clear since 1979. See National
Comm'n on New Technological Uses of Copyrighted Works, Final Report
(1979). In some countries, however,
this was not as clear. Insofar as the WIPO Copyright Treaty clarified this
on an international basis, it did
contribute to the legal infrastructure for global e-commerce. See Samuelson,
supra note 7, at 382-85 (discussing
lack of clarity about the reproduction right in the digital environment).
n53. See, e.g., First Annual Report, supra note 3, at 13-14.
n54. Framework, supra note 1, at 3.
n55. See List of Participants, WIPO
Doc. No. CRNR/DC/INF.2 (Dec. 20, 1996).
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The WIPO treaty digital copyright
norms were, however, mostly old news for U.S. law. n56 Its cases had
already recognized the rights of
authors to control digital reproductions of their works, n57 as well as
to
control digital transmissions of
their works to the public. n58 Courts had invoked fair use in a number
of digital
copyright cases, n59 and had refused
to hold online service providers liable for infringing activities of users
about which the providers had no
knowledge. n60 Because of the substantial accord between the WIPO treaty
norms and existing U.S. law, the
Clinton Administration initially considered whether the WIPO Copyright
Treaty
might even be sent to the Senate
for ratification "clean" of implementing legislation. n61 This would have
avoided the kind of protracted legislative
battle that oc [*531] curred when Congress considered the
Administration's White Paper legislation
in 1996. n62 Eventually, the Administration decided that implementing
legislation was necessary for the
U.S. to comply with the WIPO treaty provision requiring protection for
the
integrity of copyright management
information. n63 The DMCA implementation of this norm, which closely
tracks the treaty language, was
uncontroversial during the legislative process. n64
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n56. The WIPO Copyright Treaty, as
finally concluded, was actually far more consistent with U.S. copyright
law than the draft treaty with which
the negotiations had begun (and which was substantially based on
proposals by U.S. officials). See
Samuelson, supra note 7, at 434-37.
n57. See, e.g., Sega Enterprises, Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994).
n58. See, e.g., Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).
n59. See, e.g., Lewis Galoob Toys,
Inc. v. Nintendo of America, 964 F.2d 965 (9th Cir. 1992) (software
enabling temporary changes in the
play of Nintendo games held fair use).
n60. See, e.g., Religious Tech. Center
v. Netcom Online Comm. Corp., 907 F. Supp. 1361 (N.D. Cal. 1995)
(online service provider should
not be held strictly liable for user infringement of which it had no knowledge).
n61. See Clinton Administration Is
Undecided On Implementing Steps For WIPO Treaties, 53 BNA Pat.,
Trademark & Copyright J. 241
(1997).
n62. See Samuelson, supra note 7,
at 427-32 (arguing that U.S. efforts at WIPO conference were aimed at
bypassing contention over domestic
legislative proposals).
n63. See WIPO Copyright Treaty, supra
note 7, art. 12. Had this treaty defined the term "rights management
information" ("RMI") only as "information
which identifies the work, the author of the work, the owner of any
right in the work," the U.S. could
have relied on section 43(a) of the Lanham Act to assert that it was in
compliance with the norms of this
Article as well. See Julie E. Cohen, Some Reflections on Copyright
Management Systems and Laws Designed
to Protect Them, 12 Berkeley Tech. L.J. 161, 169 n.31. However,
the treaty defines RMI as including
"information about the terms and conditions of use of the work, or any
numbers or codes that represent
such information<elip>." WIPO Copyright Treaty, supra note 6, art. 12.
Section 43(a) would not seem to
cover misrepresentations of this sort. See 15 U.S.C. 1125(a) (1994); see
also Cohen, supra, at 169 n.31.
In addition, it appears that some technical amendments to U.S. law were
necessary to change the terminology
about which foreign nationals could claim rights under U.S. law. See
Section-by-Section Analysis of H.R.
2281 As Passed By the United States House of Representatives on August
4, 1998, 105th Cong., at 3-4 (1998)
[hereinafter House Manager's Report].
n64. See 17 U.S.C.A. 1202 (West Supp.
1999). Concerns had earlier been expressed that copyright
management systems might be intrusive
on privacy interests of users. See, e.g., Julie E. Cohen, The Right to
Read Anonymously: A Closer Look
at "Copyright Management" in Cyberspace, 28 Conn. L. Rev. 981 (1996). In
response to concerns of this sort,
the legislative history of DMCA makes clear that copyright management
information ("CMI") does not include
digital information used to track or monitor usage of copyrighted works:
"It would be inconsistent with the
purpose and construction of this bill and contrary to the protection of
privacy to include tracking and
usage information within the definition of CMI." House Manager's Report,
supra
note 63, at 20.
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The U.S. could have asserted that
its law already complied with the WIPO treaty's anti-circumvention norm.
n65 This norm was, after all, very
[*532] general in character and provided treaty signatories with
considerable latitude in implementation.
Moreover, anti-circumvention legislation was new enough to many
national intellectual property systems,
and certainly to international law, to mean that there was no standard
by which to judge how to instantiate
the norm. The U.S. could have pointed to a number of statutes and
judicial decisions that establish
anti-circumvention norms. n66 With U.S. copyright industries thriving in
the
current legal environment, it would
have been fair to conclude that copyright owners already were adequately
protected by the law. n67 Even many
of those who favor use of technical systems to protect digital
copyrighted works have expressed
skepticism about the need for or appropriateness of anti-circumvention
regulations, at least at this stage.
n68 Let content producers build their technical fences, advised one
prominent information economist,
but do not legislatively reinforce those fences until experience proves
the
existence of one or more abuses
in need of a specific cure. n69 However, the political reality and legislative
dynamics of the WIPO Copyright Treaty
implementation process were such that some sort of
anti-circumvention provision appeared
to be a necessary part of the bill.
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n65. It is far more plausible that
the U.S. is in compliance with the WIPO treaty anti-circumvention norm
than
that it is in compliance with the
moral rights provision of the Berne Convention, which is one of the minimum
standard rules required of Berne
Union members. See Berne Convention for the Protection of Literary and
Artistic Works, Sept. 9, 1886, art.
6bis (Paris Text, 1971, amended 1979), reprinted in 1 Basic Documents of
Int'l Econ. L. (CCH) 715 (1994).
See also Jessica Litman, The Tales That Article 2B Tells, 13 Berkeley Tech.
L.J. 931, 932 (1998) (discussing
the U.S. rationale for claiming to be in compliance with the Berne Convention's
moral rights provision, and expressing
skepticism about the adequacy of this rationale). See also Jonathan
Band & Taro Isshiki, The New
Anti-Circumvention Provision in the Copyright Act: A Flawed First Step,
3
Cyberspace Law. 2 (1999) (explaining
that the DMCA's anti-circumvention regulations were not required for
compliance with the WIPO Copyright
Treaty).
n66. See White Paper, supra note
15, at 232-34 (discussing statutes); Sega Enterprises, Ltd. v. MAPHIA,
857
F. Supp. 679 (N.D. Cal. 1994) (finding
copyright liability for providing tools to enable game software to be
removed from disks and posted on
the Internet).
n67. See, e.g., Judiciary Hearing,
supra note 17, at 78 (statement of Jack Valenti) (citing $ 60 billion in
annual
U.S. revenues from international
sales of intellectual property and naming copyright industry as single
greatest
contributor to U.S. economy); Motion
Picture Ass'n of America Research Dep't, MPAA 1998 U.S. Economic
Review (visited Apr. 22, 1999) <http://www.mpaa.org/useconomicreview/1998/index.htm>
(demonstrating
steadily increasing U.S. box office
receipts between 1991 and 1998).
n68. See, e.g., Tom W. Bell, Fair
Use vs. Fared Use: The Impact of Automated Rights Management on
Copyright's Fair Use Doctrine, 76
N.C. L. Rev. 557, 561-62 (1998); David Friedman, In Defense of Private
Orderings, 13 Berkeley Tech. L.J.
1151, 1163-64 n.31 (1998).
n69. See Ejan Mackaay, The Economics
of Emergent Property Rights on the Internet, in The Future Of
Copyright in a Digital Environment
13, 21 (P. Bernt Hugenholtz ed., 1996). "It is this restraint," says MacKaay,
"that guards us from sliding into
rent-seeking." Id. at 22.
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Even if a reasoned assessment of
U.S. law might have led policymakers to conclude that some additional
anti-circumvention legislation was
necessary or desirable, one would have thought that the Administration
would have supported a "predictable,
minimalist, consistent, and simple" [*533] legal rule, as its
Framework
principles call for. The Administration
might have, for example, proposed to make it illegal to circumvent a
technical protection system for
purposes of engaging in or enabling copyright infringement. This, after
all, was
the danger that was said to give
rise to the call for anti-circumvention regulations in the first place.
Silicon
Valley Representative Tom Campbell
proposed such an approach in his alternative bill. n70 If this same
assessment caused policymakers to
decide there was also a need for some regulation of circumvention
technologies to promote electronic
commerce, then a "predictable, minimalist, consistent, and simple" legal
rule
would have been to outlaw making
or distributing a technology intentionally designed or produced to enable
copyright infringement. n71 Many
"digital economy" firms and organizations supported the first of these
proposals, n72 and they would likely
have supported the second if it had ever had a chance of being taken
seriously.
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n70. See H.R. 3048, 105th Cong. 8
(1997). Northern Virginia Representative Rick Boucher (whose district
includes America Online) cosponsored
this bill.
n71. This was how most previous regulations
of circumvention technologies had been framed. See, e.g.,
Thomas C. Vinje, A Brave New World
of Technical Protection Systems, 8 Eur. Intell. Prop. Rev. 431 (1996).
n72. See supra note 20.
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Clinton Administration officials,
bowing to the wishes of Hollywood and its allies, opted instead to support
an
unpredictable, overbroad, and maximalist
set of anti-circumvention regulations. During Congressional
consideration of these provisions,
these regulations became complex and inconsistent for reasons that will
become evident in later sections
of this article. n73 It was, in short, not the needs of the digital economy
that
drove adoption of the anti-circumvention
provisions in the DMCA. Rather, what drove the debate was high
rhetoric, exaggerated claims, and
power politics from representatives of certain established but frightened
copyright indu [*534]
stries. These groups seem to believe they are so important to America that
they
should be allowed to control every
facet of what Americans do with digital information. n74 They also seem
to
think they are entitled to control
the design and manufacture of all information technologies that can process
digital information. n75 The DMCA
caters to their interests far more than to the interests of the innovative
information technology sector or
of the public.
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n73. The anti-circumvention regulations
are one of a number of amendments to the Copyright Act of 1976 that
are contributing to its becoming
increasingly unreadable. See, e.g., 17 U.S.C. 104A (1994) (restoration
of
copyright in foreign works that
had fallen into the public domain for lack of compliance with U.S. formality
rules
in effect until 1989). This is not
to say that the 1976 Act was a model of comprehensibility in all respects.
See, e.g., 17 U.S.C. 111-112 (1994)
(effective Jan. 1, 1978) (exceptions permitting passive retransmission
of
broadcast signals by cable systems
and ephemeral recordings during broadcast transmission). However, these
incomprehensible provisions had
at least been negotiated by affected industry sectors who understood what
the provisions meant, even if virtually
no one else could comprehend them. In contrast, the restoration of
foreign copyright and the new anti-circumvention
regulations affect a broad range of industries. This makes
the incomprehensibility of the provisions
more troublesome.
n74. See Samuelson, supra note 15
(discussing the copyright maximalist agenda the Clinton Administration
has
supported).
n75. The potential for broad anti-circumvention
regulations to give copyright owners power to control the
design of consumer electronics products
was recognized in Geneva. See John Browning, Africa 1, Hollywood 0,
Wired, March 1997, at 61, 186 ("Japan
and other Asian nations were up in arms about proposals that would
effectively have turned the consumer
electronics industry into a branch of publishing."). Indeed, some
unnoticed provisions of the DMCA
will require the makers of consumer videotape recorders to build in
anti-copying technology in subsequent
models. See 17 U.S.C.A. 1201(k).
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IV. DMCA'S OVERBROAD ANTI-CIRCUMVENTION
PROVISIONS ARE NEITHER CONSISTENT WITH FRAMEWORK
PRINCIPLES NOR GOOD FOR THE NEW
ECONOMY
There are three principal rules
in the final DMCA's anti-circumvention provision. The first focuses on
the act of
circumvention. Section 1201(a)(1)(A)
generally outlaws the act of circumventing "a technological measure
that effectively controls access
to a work protected under this title." n76 This rule will, however, not
take
effect for two years from enactment,
in part to allow time for a study to be conducted of the potential impact
of this norm on noninfringing uses
of copyrighted works. n77 When it does come into force, it will be subject
to
seven complex exceptions that will
be discussed below in Part V.A. n78
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n76. 17 U.S.C.A. 1201(a)(1)(A).
n77. See id.; infra notes 208-210 and accompanying text.
n78. See id. 1201(d)-(j), discussed
infra notes 98-135 and accompanying text.
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Section 1201 also contains two "anti-device"
provisions. Sections 1201(a)(2) and 1201(b)(1) both regulate
technologies with circumvention-enabling
capabilities. The former focuses on devices that circumvent "a
technological measure that effectively
controls access to a [copyrighted] work" (access controls). n79 The
latter relates to devices that circumvent
the "protection afforded by a technological measure that effectively
protects a [*535] right
of a copyright owner <elip> in a work or a portion thereof" (e.g., copy
controls). n80
In each case, section 1201 states
that "no person shall manufacture, import, offer to the public, provide,
or
otherwise traffic in any technology,
product, service, device, component, or part thereof" n81 if it (1) "is
primarily designed or produced for
the purpose of circumventing," n82 (2) "has only limited commercially
significant purpose or use other
than to circumvent," n83 or (3) "is marketed by that person or another
acting
in concert with that person with
that person's knowledge for use in circumventing" n84 the technological
measure or the protection it affords.
The anti-device rules have a narrower range of exceptions than does the
act-of-circumvention ban. n85
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n79. Id. 1201(a)(2); see also id.
1201(a)(3) (defining the phrases "circumvent a technological measure" and
"effectively controls access to
a work").
n80. Id. 1201 (b)(1); see also id.
1201(b)(2) (defining the terms "circumvent protection afforded by a
technological measure" and "effectively
protects a right of a copyright owner under this title").
n81. Id. 1201(a)(2), (b)(1).
n82. Id. 1201(a)(2)(A), (b)(1)(A).
There is no definition of "primarily designed or produced" in the statute;
nor
are any criteria for determining
it provided in the statute.
n83. Id. 1201(a)(2)(B), (b)(1)(B).
This subsection may be the broadest and most dangerous of the three
conditions because it would seem
to put at risk "freeware" or "shareware" programs that, by their very nature,
have no commercial uses. MIT Professor
Hal Abelson has informed me that he expressed his reservations about
this subsection to Rep. Barney Frank
who serves on the House Intellectual Property Subcommittee. Prof.
Abelson said that this provision
should outlaw technologies having "only limited legitimate uses." He reports
that Rep. Frank agreed with this
assessment. Yet the final provision retains the "limited commercial purposes"
construction with which it began.
Email correspondence with Hal Abelson (Feb. 28, 1999) (on file with author).
n84. 17 U.S.C.A. 1201(a)(2)(C), (b)(1)(C).
n85. See id. 1201(g)(4), (j)(4).
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One would have to admit that the
act-of-circumvention rule initially sought by the Administration was simpler,
and at least in this respect, more
consistent with the Framework's principles than the DMCA as enacted. The
original proposal would have outlawed
circumventions of technical protection systems except when done for
legitimate law enforcement or intelligence
purposes. n86 However, representatives of major information
technology firms and organizations
brought to Congress's attention that this norm would interfere with many
legitimate activities. n87 It would,
for example, have outlawed encryption research and computer security
testing, even though these activities
are critical to achieving many of the ob [*536] jectives of
the digital
economy. n88 As Congress came to
recognize that there were a number of legitimate reasons to circumvent
technical protection systems, the
bill slowly accreted exceptions that made the bill more complicated but
less
harmful to growth of the digital
economy. n89
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n86. See H.R. 2281 1201, 105th Cong.
(1997) (as introduced in the House of Representatives on July 29,
1997), reprinted in 54 BNA Pat.,
Trademark & Copyright J. 270 (1997).
n87. See, e.g., Judiciary Hearing, supra note 17, at 256-61 (statement of Edward J. Black).
n88. See Letter from Dr. Charles
Brownstein, Chair of the Public Policy Committee of the U.S. Chapter of
the
Association for Computing Machinery,
to Rep. Thomas J. Bliley, Chairman of the House Commerce Committee
(Sept. 29, 1998) (on file with author)
(expressing concern about impact of broad anti-circumvention
regulations on computer security
research). See also Framework, supra note 1 , 6 (emphasizing the importance
of computer security to the growth
of global economic commerce).
n89. See infra Part V.
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These same firms and organizations,
in alliance with major consumer electronics firms, were also critical of
the
Administration's preferred anti-device
provisions. n90 However, these digital economy groups exhausted their
political capital on getting critical
exceptions to the act-of-circumvention ban n91 and on establishing that
they had no affirmative duty to
build their technologies to respond to technical protection systems, but
only a
duty to refrain from actively undermining
them. n92 They took some comfort in statements by Congressional
supporters of a limited interpretation
of [*537] the anti-device norms indicating that Congress meant
for the
anti-device provisions to apply
to ""black boxes' that are expressly intended to facilitate circumvention."
n93
Still, the digital economy sector
remains understandably concerned about the potential for overbroad
application of the anti-circumvention
and anti-device norms, and recent developments suggest that there is
reason for this concern. n94
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n90. See Commerce Hearing, supra
note 44, at 32-33 (prepared statement of Chris Byrne, Director of
Intellectual Property, Silicon Graphics,
Inc., on behalf of Info. Tech. Indus. Council); id. at 28-30 (statement
of Jonathan Callas, Chief Technology
Officer, Network Assocs., Inc.); id. at 58-63 (statement of Seth
Greenstein, Esq., on behalf of the
Digital Media Ass'n); id. at 46-49 (statement of Walter H. Hinton, Vice
President, Storage Tech. Corp.,
on behalf of the Computer and Communications Indus. Ass'n); id. at 18-27
(statement of Gary J. Shapiro, Chairman,
Home Recording Rights Coalition, and President, Consumer Elecs.
Mfrs. Ass'n).
n91. See 17 U.S.C.A. 1201(f), (g), and (j).
n92. See id. 1201(c)(3); 144 Cong. Rec. H7093, H7095 (daily ed. Aug. 4, 1998) (statement of Rep. Bliley).
n93. See id. at H7094-95 ("This provision
is not aimed at products that are capable of commercially significant
noninfringing uses<elip>.").
See also id. at H7097 ("It is not enough for the primary effect of the
device to be
circumvention. It, therefore, excludes
legitimate multipurpose devices<elip>."); House Manager's Report, supra
note 63, at 9 ("[Section 1201(a)(2)]
is carefully drafted to target "black boxes' and to ensure that legitimate
multipurpose devices can continue
to be made and sold."); infra note 192 and accompanying text.
n94. See infra notes 193-195and accompanying
text.
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Although Administration officials
admitted in Congressional testimony that its preferred legislation went
beyond
what the WIPO Copyright Treaty required,
it argued for this broader rule in part to set a standard that would
help the U.S. persuade other countries
to pass similarly strong rules. n95 Proponents of the Administration's
preferred anti-circumvention regulations
scoffed at arguments made by an alliance of consumer electronics
firms and by representatives of
the computer and software industries about the harm that broad
anti-circumvention regulations would
do in this industry. n96 They also dismissed as specious arguments made
by library and educational groups
about threats to fair use and the public domain arising from broad
anti-circumvention regulations.
n97
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- -Footnotes- - - - - - - - - - - - - - - - - -
n95. See, e.g., House Subcommittee
Holds Hearings on WIPO Treaty Bills, OSP Liability, 54 BNA Pat.,
Trademark & Copyright J. 414
(1997).
n96. See, e.g., Judiciary Hearing, supra note 17, at 204-12 (statement of Allan Adler).
n97. See, e.g., id. at 229, 235-36
(testimony of Michael K. Kirk, executive director, American Intellectual
Property Law Ass'n).
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V. THE ENUMERATED EXCEPTIONS IN THE
ACT-OF-CIRCUMVENTION BAN ARE UNDULY NARROW AND
INCONSISTENT WITH FRAMEWORK PRINCIPLES
A. The Statutory Exceptions to the
Circumvention Ban
The DMCA ban on the act of circumventing
technical protection systems is subject to seven very specific
exceptions, n98 as well as being
qualified by several other subsections. n99 In addition, it is subject
to a
two-year moratorium during which
the Librarian of Congress is supposed to study the potential impact of
the
anti-circumvention ban on noninfringing
uses of copyrighted works which may lead to further limitations on the
act-of-circumvention rule. n100
While several of these exceptions and limitations respond to the gravest
of
concerns expressed by digital economy
firms, n101 [*538] they are still too narrowly crafted, as
examples
given below will reveal. n102 Congress
should have adopted a provision enabling courts to exempt acts of
circumvention engaged in for other
legitimate purposes. Courts interpreting section 1201 may either be forced
to find liability in some situations
in which it would be inappropriate to impose it or to stretch existing
limitations. Congress may eventually
need to revise this provision to recognize a broader range of exceptions.
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n98. See 17 U.S.C.A. 1201(d)-(i) (West Supp. 1999).
n99. See id. 1201(c)(1)-(4).
n100. See id. 1201(a)(1)(A)-(C).
n101. See id. 1201(f) (reverse engineering
exception), 1201(g) (encryption research), and 1201(j) (computer
security testing). See also Judiciary
Hearing, supra note 17, at 260-61 (prepared statement of Edward J.
Black) (expressing concern about
reverse engineering); Commerce Hearing, supra note 44, at 29-30 (prepared
statement of Jonathan Callas) (expressing
concern about encryption and security research).
n102. See infra Part V.B.
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The structure of the final DMCA anti-circumvention
provision and its complexity resulted from the maximalist
position with which the Administration
and its major copyright industry allies began the legislative struggle.
Only when IT industry groups were
able to identify particularized situations in which circumvention was
appropriate was there any legislative
"give" on the issue, and then only to the extent of that identified
situation. n103 As noted above,
Clinton Administration officials initially sought an almost unlimited ban
of
circumvention activities. n104 The
only exception to the circumvention ban in the Administration's favored
legislation was an authorization
of circumvention of technical protection systems for legitimate law
enforcement, intelligence, and other
governmental purposes. n105 Without this exception, suspected Mafia
bosses and terrorists, oddly enough,
might have been able to challenge attempted law enforcement or
intelligence agency decryptions
of their records or communications under section 1201(a)(1). n106
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n103. See supra note 101.
n104. See Band & Isshiki, supra
note 65 (indicating that Patent and Trademark Office (PTO) officials had
initially sought to outlaw circumvention
of copy controls, as well as of access controls, and that lobbying by
library and educational groups had
persuaded Commerce Department officials to drop this provision of the
PTO's preferred bill).
n105. See H.R. 2281 1201(e), 105th
Cong. (1997) (as introduced in the House of Representatives on July 29,
1997). The DMCA version of 1201
has such a provision, although it has been expanded to enable government
agencies to test the vulnerabilities
of their computer systems or networks. See 17 U.S.C.A. 1201(e) (West
Supp. 1999).
n106. Virtually all such records
would likely embody a modicum of originality that would enable these actors
to
claim copyright protection in fixations
of these records. If these persons used technical protection systems to
prevent unauthorized access to these
records, any act of the government to circumvent such systems would,
strictly speaking, run afoul of
1201(a)(1).
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The Administration's preferred bill
also provided that nothing in section 1201 would "affect rights, remedies,
limitations, or defenses to copy
[*539] right infringement, including fair use, under this title."
n107 This
seemed to recognize that circumventing
a technical protection system for purposes of engaging in fair use or
other noninfringing acts would be
lawful, although it did not directly say so. n108 Some representatives
of
major copyright industries who testified
at a Congressional hearing on this legislation expressed the view that
fair use should not be an acceptable
reason to "break" a technical protection system used by copyright
owners to protect their works. n109
Allan Adler, testifying on behalf of the Association of American Publishers,
for example, stated that "the fair
use doctrine has never given anyone a right to break other laws for the
stated purpose of exercising the
fair use privilege. Fair use doesn't allow you to break into a locked library
in
order to make "fair use' copies
of the books in it, or steal newspapers from a vending machine in order
to copy
articles and share them with a friend."
n110 The "breaking and entering" metaphor for circumvention activities
swayed some influential Congressmen
in the debate over anti-circumvention regulations. n111
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n107. H.R. 2281 1201(d) (as introduced
in the House of Representatives on July 29, 1997). See 17 U.S.C.A.
1201(c)(1).
n108. An extremely narrow interpretation
of the provision might suggest that fair use could be raised as a
defense to an infringement claim
based on activities engaged in after a circumvention had taken place (e.g.,
reproducing a portion of the work
for fair use purposes), even if the act of circumvention itself would not
be
excused. See Judiciary Hearing,
supra note 17, at 235-36 (testimony of Michael K. Kirk).
n109. See also White Paper, supra
note 15, at 231 (indicating that copyright owners have no obligation to
make their works available in a
form that will enable fair uses to be made of them).
n110. Judiciary Hearing, supra note
17, at 208 (prepared statement of Allan Adler). This same speaker went
on
to say that "the Declaration of
Independence is in the public domain, but there is nothing wrong with the
National Archives keeping it in
a vault and punishing anyone who tries to break through security to get
hold of
that copy." Id.
n111. See House Manager's Report,
supra note 63, at 5 (characterizing circumvention to get unauthorized
access as "the electronic equivalent
to breaking into a locked room to obtain a copy of a book"). But see,
e.g., Friedman, supra note 68, at
1163 n.31 (arguing against the treatment of technologies capable of
circumventing technical protection
systems as "the digital equivalent of burglar's tools").
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Courts should distinguish between
circumvention aimed at getting unauthorized access to a work and
circumvention aimed at making noninfringing
uses of a lawfully obtained copy. n112 Section 1201(a)(1) is
aimed at the former, not the latter.
Fair use, for example, would provide a poor [*540] excuse for
breaking
into a computer system in order
to get access to a work one wished to parody. However, if one had already
lawfully acquired a copy of the
work, and it was necessary to bypass a technical protection system to make
fair use of that copy, this would
appear to be lawful under section 1201(a)(1) and (c)(1). n113 Take, for
example, an act of circumvention
performed by Geoffery Nunberg, a friend of mine who works for Xerox's Palo
Alto Research Center. He was an
expert witness in a lawsuit which successfully challenged the Washington
Redskins' trademark on the ground
that the word "redskins" is scandalous or disparaging. n114 Nunberg decided
it was necessary to take a clip
from an old Western movie to demonstrate derogatory uses of the term in
context. It was necessary for him
to defeat a technical protection system adopted by the owner of the
copyright in this movie in order
to make the clip for this purpose. If section 1201(c)(1)'s preservation
of fair
use and other defenses to infringement
are to be given their plain meaning, it would seem that this sort of
circumvention should be permissible.
n115 Thus, if the clip from the movie qualifies as a fair use, the act
of
circumvention may be privileged
under section 1201(c)(1). n116
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n112. See Cohen, supra note 63, at
174-76 (discussing lawful circumvention); see also Julie E. Cohen,
Copyright and The Jurisprudence
of Self-Help, 13 Berkeley Tech. L.J. 1089, 1142 n.200 (1998) (finding in
copyright's fair use doctrine an
affirmative right to "hack" technical protection systems to make fair uses).
n113. See 144 Cong. Rec. H7097 (daily
ed. Aug. 4, 1998) (letter from Rep. Howard Coble to Rep. Rick Boucher)
(indicating an intent to distinguish
between circumvention to get unauthorized access to a work and
circumvention to make fair uses).
n114. See Harjo v. Pro-Football,
Inc., 45 U.S.P.Q.2d (BNA) 1789 (1998); 15 U.S.C. 1052(a) (1994) (excluding
scandalous and disparaging matter
from trademark protection); See also "Redskins" Mark is Cancelled as
Disparaging to Native Americans,
BNA Pat., Trademark & Copyright Law Daily (Apr. 12, 1999).
n115. See, e.g., 144 Cong. Rec. H7093
(daily ed. Aug. 4, 1998) (statement of Rep. Bliley) (indicating that the
Commerce Committee understood the
legislation to enable consumers to "exercise their historical fair use
rights"); see also id. at H7097
(letter from Rep. Coble to Rep. Boucher).
n116. But see infra notes 157-162
and accompanying text for a discussion about whether this person's
development of a technology enabling
him to defeat the technical protection system would be similarly
privileged.
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Although this section's apparent
preservation of fair use was important, it did not satisfy library and
nonprofit
groups who expressed substantial
concern about the impact that the anti-circumvention provisions would have
on public access to information.
n117 The only additional concession that the House Subcommittee on
Intellectual Property thought should
be made to concerns expressed by these groups was to create a special
"shopping privilege" for them. This
exception, which was included in the final DMCA, enables nonprofit library
and educational institutions to
circum [*541] vent technical protection systems to "make a
good faith
determination of whether to acquire
a copy" of the work. n118 Librarians and educators do not see much value
in this provision because vendors
of technically protected copyrighted works will generally have incentives
to
allow librarians and educators to
have sufficient access to make acquisition decisions. n119 Their broader
concerns about the impact of anti-circumvention
regulations on noninfringing uses fell on deaf ears in both the
House and Senate Subcommittees on
Intellectual Property. n120
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n117. See, e.g., Commerce Hearing, supra note 44, at 64-66 (statement of Prof. Robert L. Oakley).
n118. See 17 U.S.C.A. 1201(d) (West Supp. 1999).
n119. See infra notes 151-156 and
accompanying text, concerning whether the shopping privilege could be
undermined by the lack of available
tools to enable this circumvention.
n120. See, e.g., Judiciary Hearing,
supra note 17, at 148-56 (statement of Robert L. Oakley); id. at 64-68
(statement of M.R.C. Greenwood,
chancellor of the University of California, Santa Cruz) (expressing concerns
about the impact of technical protection
systems on noninfringing uses of protected works - concerns the
"shopping privilege" does not address).
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Computer and software industry groups
were initially unsuccessful in persuading Congress to create additional
exceptions to the anti-circumvention
rules and other changes to the anti-circumvention regulations to make
them less harmful to legitimate
activities in these industries. n121 Not until the full Senate Judiciary
Committee
and the House Commerce Committee
undertook their reviews of the legislation were concerns of these industry
groups heeded. Out of the Senate
Committee emerged three significant changes to the DMCA. The first was
creation of a new exception to enable
circumvention of technical protection systems for purposes of enabling
a software developer to achieve
interoperability among computer programs. n122 The second was a provision
clarifying that equipment manufacturers
were under no obligation to specially design their products to respond
to any particular technical measure
used by those providing content for this equipment. n123 The third was
a
provision indicating that section
1201 was not intended to broaden contributory or vicarious copyright liability.
n124
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n121. See, e.g., id. at 256-65 (statement
of Edward J. Black) (expressing concern about the impact of the
anti-circumvention provisions for
achieving interoperability among computer programs).
n122. See 17 U.S.C.A. 1201(f) (West Supp. 1999).
n123. See id. 1201(c)(3).
n124. See id. 1201(c)(2).
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An interesting twist in the saga
leading up to adoption of the DMCA was the House Commerce Committee's
decision to exercise jurisdiction
[*542] over part of the digital copyright legislation. n125 Its review
led to
several other significant changes
to the bill. Some of these responded to concerns expressed by digital
economy firms; others responded
to concerns expressed by library, educational, and other nonprofit groups.
n126 The Commerce version of the
bill added a new exception to enable encryption research and the
development of encryption-research
tools. n127 It also created two consumer-oriented exceptions, one to
enable parents to circumvent access
controls when necessary to protect their children from accessing harmful
material on the Internet, and the
other to enable circumvention to protect personal privacy. n128 It also
proposed a moratorium on the anti-circumvention
rules so that a study could be conducted about the
potential impact of anti-circumvention
rules on fair use, the public domain, and other noninfringing uses of
copyrighted works. n129
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n125. See Commerce Hearing, supra
note 44, at 1-3 (statement of Rep. Tauzin, Subcomm. Chairman)
(explaining the Commerce Committee's
reasons for reviewing the WIPO treaty implementation legislation).
n126. See Commerce Panel Clears Digital
Copyright Bill With Further Concessions on Fair Use, 56 BNA Pat.,
Trademark & Copyright J. 326
(1998).
n127. This eventually was codified in the DMCA. See 17 U.S.C.A. 1201(g) (West Supp. 1999).
n128. These were also eventually codified in the DMCA. See id. 1201(h), (i).
n129. See id. 1201(a)(1)(B). See
also infra notes 205-206 and accompanying text for discussion of this
provision.
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More clearly than the Judiciary Committees
in either branch of Congress, the Commerce Committee recognized
the unprecedented nature of the
access right that was implicit in the act-of-circumvention provision of
section 1201. "If left unqualified,"
said Congressman Bliley, "this new right <elip> could well prove to
be the
legal foundation for a society in
which information becomes available only on a "pay-per-use' basis." n130
To
ensure this would not occur, the
legislation was amended to enable librarians and educators to make a
showing that the anti-circumvention
provision was interfering with noninfringing uses of copyrighted materials
and to seek an exemption from the
ban. n131 Insofar as such a showing could be made, the Commerce
Committee thought that affected
classes of works or of users should be exempt from section 1201(a)(1)(A).
Congressman Bliley pointed out that
"copyright law is not just about protecting information. It's just as much
about affording reasonable access
to it as a means of [*543] keeping our democracy healthy<elip>."
n132
The Commerce Committee review of
the legislation also led to inclusion of a provision indicating that nothing
in
section 1201 "shall enlarge or diminish
any rights of free speech or of the press for activities using consumer
electronics, telecommunications,
or computing products." n133 This provision recognizes the potential impact
of the anti-circumvention rule on
free speech and free press interests.
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n130. 144 Cong. Rec. H7094 (daily ed. Aug. 4, 1998) (statement of Rep. Bliley).
n131. See 17 U.S.C.A. 1201(a)(1)(B)-(D). See infra notes 203-210 and accompanying text.
n132. 144 Cong. Rec. H7094 (daily ed. Aug. 4, 1998) (statement of Rep. Bliley).
n133. 17 U.S.C.A. 1201(c)(4).
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During the final negotiations leading
up to passage of the DMCA, several of the exceptions were refined. n134
In addition, the computer security
research community finally persuaded legislators to add another exception
to enable circumvention of technical
protection systems necessary for legitimate testing of the security of
computer systems. n135
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n134. Compare H.R. 2281, 105th Cong.
(1998) (as passed on Aug. 4, 1998), with Digital Millennium Copyright
Act, Pub. L. No. 105-304, 112 Stat.
2860 (1998).
n135. See 17 U.S.C.A. 1201(j). This
too had been the subject of testimony before the House Commerce
Committee. See Commerce Hearing,
supra note 44, at 27-30 (statement of Jonathan Callas).
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B. Circumvention for Other Legitimate
Reasons Should Be Privileged
While the final version of the DMCA
anti-circumvention provision responded to several significant concerns
of
the digital economy sector, it did
so mainly by adopting specific exceptions. There are, however, many other
legitimate reasons for circumventing
technical protection systems that are not, strictly speaking, covered by
the exceptions in the final bill.
Five examples demonstrate that section 1201 should have an "or other
legitimate purposes" exception to
section 1201(a)(1).
Suppose, for example, that a copyright
owner had reason to believe that an encrypted work contained an
infringing version of one of its
works. The only way to find out whether the copyright owner's suspicion
is valid
may be to circumvent the technical
protection system to get access to the encrypted material. Even if its
suspicions proved correct, the copyright
owner would have violated section 1201(a)(1)(A) in the course of
discovering this. There is no exception
in section 1201 to protect this kind of decryption activity.
Or suppose that a content producer
had licensed certain software that was essential to the development of
its product (e.g., editing software
used in the process of making motion pictures). In the course of a dispute
about the performance quality of
this software, the content producer might with [*544] hold
payment of a
royalty as a way of communicating
its displeasure with the licensor's maintenance of the software. The
software's licensor might then respond
by activating a technical "self-help" system embedded in the software
to stop the software from operating.
n136 To deal with this development, the licensee might well attempt to
circumvent the self-help feature
now blocking access to the software because the licensee needed to use
the
software to finish its movie and
because it regarded itself as having a legitimate claim of licensor breach
to
justify holding back the royalty.
n137 However legitimate the claim or this activity, there is no exception
to
the anti-circumvention rule to protect
the licensee in this situation.
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n136. Software developers can embed
specialized disabling subprograms in licensed software. These may
cause the software to cease operation
unless a new code has been made available to the licensee by the
licensor. They can also be invoked
via a network connection to the licensor's site or by a remote act by the
licensor. For a discussion of public
policy issues raised by technical self-help systems, see Pamela Samuelson,
Embedding Technical Self-Help in
Licensed Software, 40 Comm. ACM 13 (1997).
n137. A model law to regulate licensing
of computer information has proposed to validate, as a matter of
contract law, a licensor's use of
technical self-help systems as long as certain procedural steps are taken
to