1. Regulatory and Judicial Developments Regarding the DMCAs Anticircumvention Provision -- 17 U.S.C. § 1201(a) Fordham Conference on Intellectual Property Law & Policy April 28, 2011 New York David O. Carson General Counsel United States Copyright Office

2. § 1201 Rulemaking 17 U.S.C. § 1201(a)(1)(A) Circumvention of copyright protection systems: No person shall circumvent a technological measure that effectively controls access to a work protected under this title….

3. 17 U.S.C. § 1201(a)(2) [is primarily designed or produced for the purpose of] [or has only limited commercially significant purpose or use other than] [or is marketed for use in] circumventing protection afforded by a technological measure that effectively controls access to a work protected under this title. No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that

4. 17 U.S.C. § 1201(b)(1) [is primarily designed or produced for the purpose of] [or has only limited commercially significant purpose or use other than] [or is marketed for use in] circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof. No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that

5. § 1201 Rulemaking §1201(a)(1)(B) The prohibition contained in subparagraph (A) shall not apply to persons who are users of a copyrighted work which is in a particular class of works, if such persons are, or are likely to be in the succeeding 3-year period, adversely affected by virtue of such prohibition in their ability to make noninfringing uses of that particular class of works under this title, as determined under subparagraph (C).

6. § 1201 Rulemaking §1201(a)(1)(C): During the 2-year period described in subparagraph (A), and during each succeeding 3-year period, the Librarian of Congress, upon the recommendation of the Register of Copyrights, who shall consult with the Assistant Secretary for Communications and Information of the Department of Commerce and report and comment on his or her views in making such recommendation, shall make the determination in a rulemaking proceeding on the record for purposes of subparagraph (B) of whether persons who are users of a copyrighted work are, or are likely to be in the succeeding 3-year period, adversely affected by the prohibition under subparagraph (A) in their ability to make noninfringing uses under this title of a particular class of copyrighted works.

7. §1201 Rulemaking The Librarian shall publish any class of copyrighted works for which the Librarian has determined, pursuant to the rulemaking conducted under subparagraph (C), that noninfringing uses by persons who are users of a copyrighted work are, or are likely to be, adversely affected, and the prohibition contained in subparagraph (A) shall not apply to such users with respect to such class of works for the ensuing 3-year period. §1201(a)(1)(D)

8. Designated Classes July 27, 2010

9. Motion Picture Excerpts Motion pictures on DVDs that are lawfully made and acquired and that are protected by the Content Scrambling System when circumvention is accomplished solely in order to accomplish the incorporation of short portions of motion pictures into new works for the purpose of criticism or comment, and where the person engaging in circumvention believes and has reasonable grounds for believing that circumvention is necessary to fulfill the purpose of the use in the following instances: –(i) Educational uses by college and university professors and by college and university film and media studies students; –(ii) Documentary filmmaking; –(iii) Noncommercial videos

10. Motion Picture Excerpts Noncommercial, transformative users have also sufficiently demonstrated that certain uses require high quality in order for the purpose of the use to be sufficiently expressed and communicated. …One particular example of bringing the background to the foreground was demonstrated in the vid, How Much Is That Geisha In he Window, …. This vid criticizes and comments upon Joss Whedons science fiction television series Firefly. The series incorporates Asian culture and art, but the vid demonstrates that almost no Asian characters are featured and that they appear only in the background. The vid concludes with a text screen that states: There is only one Asian actor with English dialogue in all of Firefly and in the next screen states, She plays a whore. -- Registers Recommendation, p. 66

11. Jailbreaking Computer programs that enable wireless telephone handsets to execute software applications, where circumvention is accomplished for the sole purpose of enabling interoperability of such applications, when they have been lawfully obtained, with computer programs on the telephone handset.

12. 17 U.S.C. 117 Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided: (1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or (2) that such new copy or adaptation is for archival purposes only and that all archived copies are destroyed in the event that continued possession of the computer program should cease to be rightful.

13. Cellphone Network Switching Computer programs, in the form of firmware or software, that enable used wireless telephone handsets to connect to a wireless telecommunications network, when circumvention is initiated by the owner of the copy of the computer program solely in order to connect to a wireless telecommunications network and access to the network is authorized by the operator of the network.

14. Video Games/Security Flaws Video games accessible on personal computers and protected by technological protection measures that control access to lawfully obtained works, when circumvention is accomplished solely for the purpose of good faith testing for, investigating, or correcting security flaws or vulnerabilities, if: –(i) The information derived from the security testing is used primarily to promote the security of the owner or operator of a computer, computer system, or computer network; and –(ii) The information derived from the security testing is used or maintained in a manner that does not facilitate copyright infringement or a violation of applicable law [See 17 U.S.C. 1201(j) (security testing of computer, computer system, or computer network)]

15. Dongles Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete. A dongle shall be considered obsolete if it is no longer manufactured or if a replacement or repair is no longer reasonably available in the commercial marketplace.

16. eBooks / Visually Impaired Literary works distributed in ebook format when all existing ebook editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling either of the books read-aloud function or of screen readers that render the text into a specialized format.

17. Judicial Developments

18. Federal Circuit Precedent Chamberlain v. Skylink, 381 F.3d 1178 (Fed. Cir. 2004) –Plaintiff must demonstrate a nexus to infringement i.e., that the defendants trafficking in circumventing technology had a reasonable relationship to the protections that the Copyright Act affords copyright owners. –Defendants whose circumvention devices do not facilitate infringement are not subject to § 1201 liability. Storage Tech. Corp. v. Custom Hardware Engg, 421 F.3d 1307 (Fed. Cir. 2005).

19. MGE UPS Sys. v. GE Consumer & Indus. 612 F.3d 760, withdrawn and superseded in part on rehearing, 622 F.3d 361 (5 th Cir. 2010) (MGE I) MGE I Merely bypassing a technological protection that restricts a user from viewing or using a work is insufficient to trigger the DMCAs anti- circumvention provision. The DMCA prohibits only forms of access that would violate or impinge on the protections that the Copyright Act otherwise affords copyright owners. See Chamberlain Group, Inc. v. Skylink Techs., Inc., 381 F.3d 1178, 1202 (Fed. Cir. 2004).

20. MGE UPS Sys. v. GE Consumer & Indus. 612 F.3d 760, withdrawn and superseded in part on rehearing, 622 F.3d 361 (5 th Cir. 2010) (MGE I) MGE I Without showing a link between access and protection of the copyrighted work, the DMCAs anti-circumvention provision does not apply. The owners technological measure must protect the copyrighted material against an infringement of a right that the Copyright Act protects, not from mere use or viewing.

21. MGE UPS Sys. v. GE Consumer & Indus. 612 F.3d 760, withdrawn and superseded in part on rehearing, 622 F.3d 361 (5 th Cir. 2010) (MGE I) MGE I MGE has not shown that bypassing its dongle infringes a right protected by the Copyright Act. –The dongle merely prevents initial access to the software. –Dongle does not prevent the literal code or text of the software from being freely read and copied once access has been obtained. –There is no encryption or other form of protection on the software itself to prevent copyright violations. Because the dongle does not protect against copyright violations, the mere fact that the dongle itself is circumvented does not give rise to a circumvention violation within the meaning of the DMCA.

22. MGE UPS Sys. v. GE Consumer & Indus. Petition for Rehearing Amicus Brief of United States The United States respectfully urges the Court to grant panel rehearing and revise its opinion to omit its unnecessary discussion of the types of access prohibited by 17 U.S.C. § 1201(a)(1). The panels decision threatens to frustrate Congresss purpose in section 1201(a)(1), which was to provide a federal prohibition against bypassing passwords, encryption, and other technologies that regulate access to a copyrighted work in circumstances in which the copyright owner would not otherwise have a remedy under the Copyright Act. …

23. MGE UPS Sys. v. GE Consumer & Indus. Petition for Rehearing Amicus Brief of United States The panels decision is of particular concern to the United States, moreover, because it essentially renders pointless the administrative authority that Congress granted to the Librarian of Congress under the DMCA to promulgate exemptions to Section 1201(a)(1)s anti- circumvention prohibition. The plain language of section 1201(a)(1)(A) thus restricts any unauthorized access to a copyrighted work that is protected by an access control, just as breaking- and-entering laws prohibit any access to a locked house, even if nothing inside is stolen. Nothing in the text of the statute links access with infringement of the underlying copyright.

24. MGE UPS Sys. v. GE Consumer & Indus. Petition for Rehearing Amicus Brief of United States [I]f the access prohibited under section 1201(a)(1)(A) must infringe[] a right protected by the Copyright Act, then the DMCA only prohibits what the Copyright Act already prohibits. The panels reading of the statute conflates (§1201(a)) technological access controls with §1201(b) infringement controls. The panels decision also threatens to frustrate Congresss purposes in enacting section 1201(a)(1). The entire point of that provision was to provide a federal prohibition against bypassing passwords, encryption, and other technologies that regulate access to a copyrighted work in circumstances in which the act of obtaining access would not by itself violate the copyright laws. Congress was concerned that, absent a strong federal prohibition on circumventing such technological locks, copyright owners would be unwilling to release digital versions of their works in online marketplaces.

25. MGE UPS Sys. v. GE Consumer & Indus. Petition for Rehearing Amicus Brief of United States [T]he panels discussion of the types of access prohibited by section 1201(a)(1) was unnecessary to the outcome. As an alternative ground for affirming the district courts dismissal of the DMCA claim, the panel held that MGE failed to carry its burden to prove that GE/PMI committed an unauthorized act of circumvention.

26. MGE UPS Sys. v. GE Consumer & Indus. 622 F.3d 361 (5 th Cir. 2010) (MGE II) MGE II Because § 1201(a)(1) is targeted at circumvention, it does not apply to the use of copyrighted works after the technological measure has been circumvented. The issue, therefore, is not whether the technological measures that effectively controlled access to MGE's software were circumvented at some point, but whether the actions of GE/PMI's own representatives amounted to circumvention. Without proving GE/PMI actually circumvented the technology, MGE does not present a valid DMCA claim.

27. MDY Industries v. Blizzard Ent. 629 F.3d 928 (9 th Cir., Dec. 14, 2010) § 1201 creates 2 types of claims –§ 1201(a) prohibits the circumvention of any technological measure that effectively controls access to a protected work and grants copyright owners the right to enforce that prohibition. –§ 1201(b) prohibits trafficking in technologies that circumvent technological measures that effectively protect a right of a copyright owner. § 1201(a) does not explicitly refer to copyright infringement. –It extends a new form of protection -- the right to prevent circumvention of access controls, broadly to copyrighted works. –Descrambling a scrambled work and decrypting an encrypted work the actions given as examples of circumvention -- are acts that do not necessarily infringe or facilitate infringement of a copyright.

28. MDY Industries v. Blizzard Ent. 629 F.3d 928 (9 th Cir., Dec. 14, 2010) 9 th Cir. declines to adopt Chamberlains nexus requirement because it is contrary to plain language of the statute. –Congress chose to link only § 1201(b) explicitly to infringement. –Descrambling and decrypting, regulated by § 1201(a), may only enable noninfringing access to a work. –Congress created a mechanism in § 1201(a)(1)(B)-(D) (Library of Congress rulemaking) to exempt certain non- infringing behavior from § 1201(a) liability, a mechanism that would be unnecessary if an infringement nexus requirement existed. In mandating a § 1201(a) nexus to infringement, we would deprive copyright owners of the important enforcement tool that Congress granted them to make sure that they are compensated for valuable non-infringing accessfor instance, copyright owners who make movies or music available online, protected by an access control measure, in exchange for direct or indirect payment.

29. MDY Industries v. Blizzard Ent. 629 F.3d 928 (9 th Cir., Dec. 14, 2010) The differences in structure between § 1201(a) and (b) reflect Congress's intent to address distinct concerns by creating different rights with different elements. Legislative history: Congress created a new anticircumvention right in § 1201(a)(2) independent of traditional copyright infringement and granted copyright owners a new weapon against copyright infringement in § 1201(b)(1). Congress intended, in light of the current digital age, to grant copyright owners an independent right to enforce the prohibition against circumvention of effective technological access controls. Section (a) creates a new anticircumvention right distinct from copyright infringement, while section (b) strengthens the traditional prohibition against copyright infringement.