COPYRIGHT LAW FALL 2006
Columbus School of Law
The Catholic University of America
Prof. Fischer
November 27, 2006
DMCA wrap-up points
• DMCA gives copyright owner new rights to
back up technological protections in the
digital environment
DMCA s. 1201 (d)-(j)
• Section 1201 (d)-(j) provides exceptions for,
e.g., certain reverse engineering, law
enforcement activities, certain library uses,
certain encryption research, privacy
protection, protection of minors, security
testing of computer systems
• Also – rulemaking provision under s.
1201(a)(1)(B)-(D).
First Triennial Inquiry
• Are there particular “classes of works” as to which
users are, or are likely to be, adversely affected in
their ability to make noninfringing uses if they are
prohibited from circumventing such technological
measures
• On October 27, 2000, Library of
Congress/Copyright Office issued a final rule
identifying 2 classes of works exempt from access
provisions
Exemptions following first
Copyright Office triennial inquiry
• 1. Compilations of lists of web sites blocked by
filtering software applications
• 2. Literary works, including computer programs
and databases, protected by access control
mechanisms that fail to permit access because of
malfunction, damage or obsoleteness
• In future there may be a need for more exemptions
Second Triennial Inquiry
• Announced Oct. 23, 2003
• Exempts 4 categories of works
Exempted category 1
• 1) Compilations consisting of lists of Internet
locations blocked by commercially marketed
filtering software applications that are intended to
prevent access to domains, websites or portions of
websites, but not including lists of Internet
locations blocked by software applications that
operate exclusively to protect against damage to a
computer or computer network or lists of Internet
locations blocked by software applications that
operate exclusively to prevent receipt of email.
Exempted category 2
• (2) Computer programs protected by
dongles that prevent access due to
malfunction or damage and which are
obsolete.
Exempted category 3
• (3) Computer programs and video games
distributed in formats that have become obsolete
and which require the original media or hardware
as a condition of access. A format shall be
considered obsolete if the machine or system
necessary to render perceptible a work stored in
that format is no longer manufactured or is no
longer reasonably available in the commercial
marketplace.
Exempted category 4
• (4) 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 of the ebook's read-aloud
function and that prevent the enabling of screen
readers to render the text into a specialized format.
Third triennial Inquiry
• 6 exemptions – largest number ever
• Come into effect Nov. 27
• Each exemption expires after three years.
•
Realnetworks, Inc. v. Streambox
• One of the first real analyses of
circumventing conduct
• What about unauthorized inputting of a
password? See IMS v. Berkshire (SDNY
2004)
Universal City Studios v.
Reimerdes CB p. 964
• Plaintiffs: 8 major
motion picture studios
• Defendants included
(l) Eric Corley a.k.a.
Emmanuel Goldstein,
publisher of 2600: The
Hacker Quarterly
• Ps alleged violations
of DMCA – how did
defendants respond?
Jon Johansen: Creator of DeCSS
• Norwegian teenager: 15
years old when he created
DeCSS
• Prosecuted under s. 145(2)
145(2) of the Norwegian
Criminal Code, which
punishes "any person who
by breaking a protective
device or in a similar
manner, unlawfully
obtains access to data or
programs which are stored
or transferred by
electronic or other
technical means."
• Acquitted in Jan. 2003,
under appeal
For a Norwegian legal
perspective
• See an essay by Nowegian professor Jon
Bing at:
http://www.eff.org/IP/DRM/DeCSS_prosec
utions/Johansen_DeCSS_case/20000125_bi
ng_johansen_case_summary.html
Protesters at the federal trial (2000)
http://www.nylug.org/articles/index.shtml?nycdvdcourt
“Electronic Civil Disobedience?”
REIMERDES
• Cause of action: DMCA 12(a)(2) – antitrafficking provisions
• Defense: Actions don’t violate DMCA and
DMCA violates the First
Amendment/Copyright Clause by
obstructing fair use and DMCA violates
limits on duration in Copyright Clause
JUDGE KAPLAN
• Finds (after full jury trial)
• 1. Posting DeCSS was a violation of 1201(a)(2)
that was not protected by statutory exceptions for
fair use, good faith encryption research, or
security testing or by fair use, as was linking
where knew offending material on linked-to-cite
and knew unlawful circumvention technology and
link created to disseminating that technology..
• 2. Anti-trafficking provisions constitutional under
first Amendment
• 3. Awards injunctive and declaratory relief- to
deter
REIMERDES APPEAL
• Second Circuit ruled in November to affirm
Judge Kaplan’s order
• Kathleen Sullivan, the Dean of Stanford
Law School and a noted constitutional
scholar, argued the appeal for the
defendants.
• Review by the U.S. Supreme Court is not
sought
More DMCA litigation
• Considerable number of cases have been brought
under the DMCA
• Some, such as EFF Fred Von Lohmann, have
alleged that the unintended consequences of the
DMCA litigation is that it is being used not to
control piracy but to stifle competition, to impede
free expression and scientific research, and to
jeopardize fair use. See:
http://www.eff.org/IP/DMCA/20030102_dmca_un
intended_consequences.html
• Some prominent commentators like Pamela
Samuelson have argued for revision of DMCA
• Copyright industries counter that the DMCA is
necessary to combat the growing problem of
321 Studios Case (CB p. 957)
• Which provision of the DMCA was at
issue?
321 Studios Case
• Which provision of the DMCA was at
issue? Argument that 321 Studios was
violating the anti-trafficking provisions in
1201(a)(2) and 1201(b)(1) by marketing of
DVD copying software – DVD Copy Plus
and DVD-X-COPY
Sklyarov/ElcomSoft Prosecution:
ND Cal. Rejected First
Amendment challenge
to DMCA
Also found DMCA
constitutional under
the IP Clause and
Commerce Clause
Sklyarov/ElcomSoft Prosecution:
ElcomSoft was acquitted
DMCA- copyright management
provisions
• S. 1202
• Kelly v. Arriba Soft – no violation of
1202(b)(1): why not?
Fair Use
• What is fair use?
• Why does copyright law have a doctrine of
fair use?
Codification of Fair Use
• Fair use was originally a judge-made
doctrine, but it was codified in the 1976 Act
at what provision?
Codification of Fair Use
• Fair use was originally a judge-made
doctrine, but it was codified in the 1976 Act
at what provision? At 17 U.S.C. section 107
• According to this section, how should a
court determine whether a use made of a
copyrighted work is a fair use that would
exempt the use from liability for
infringement?
Fair Use Factors
• (1) purpose and character of the use (commercial
or non-commercial eg. educational?)
• (2) nature of copyrighted work (fact or fiction?)
• (3) amount and substantiality of amount used
• (4) effect on the market for the copyrighted work
• Does it make any difference if a work is
unpublished?
Fair Use Factors
• (1) purpose and character of the use (commercial
or non-commercial eg. educational?)
• (2) nature of copyrighted work (fact or fiction?)
• (3) amount and substantiality of amount used
• (4) effect on the market for the copyrighted work
• Does it make any difference if a work is
unpublished? NO
Fair Use is VERY fact-specific
• Section 107 restates judicial doctrine of fair use
• Fair use is essentially an “equitable rule of reason”
so there is no “generally acceptable definition”
• Each case must be decided on its own facts
• There are no bright-line rules, as Justice Souter
has stated.
• Of course, this makes it hard for lawyers to advise
clients on when a particular use of a copyrighted
work will be a fair use.
Fair Use and Parody: The AcuffRose case
• How does Justice Souter apply the 4 fair use factors to
analyze whether the rap song’s use of the Roy Orbison
song is a fair use?
• Does it make any difference that the rap song is
commercial?
• Does it matter if the parody is in bad taste, or not funny?
• Do you agree with Justice Souter’s analysis? Why or why
not?
• Do you agree with the outcome/reasoning in the Barbie
case in your supplement?
The Cat in the Hat case
• Why did the court rule
against the parody
defense for the book
on the O.J. Simpson
Trial?
Annie Leibovitz Naked Gun Case
Annie Leibovitz Naked Gun Case
• Why did Leibovitz sue over the “Naked
Gun” ads. Did fair use apply? Why or why
not? Is this consistent with the Dr. Seuss
case?
Gone With the Wind case
Suntrust Bank v.Houghton Mifflin
(11th Cir. 2001)
• According to the 11th
Circuit, should the
The Wind Done Gone
be treated as a fair use
parody even though it
was not comic? Why
or why not?
• Do you agree?
Fair Use and unpublished works
• How does the fact that a work is
unpublished affect fair use? (See Harper,
CB p. 754, Sundeman (4th Cir. 1998) (CB p.
760)
Additional Fair Use Considerations
• Do courts ever consider any additional
considerations beyond the four s. 107
factors?
Additional Fair Use Considerations
• Amount and substantiality in comparison
to D’s work
• Whether background copying is
“substantial” (e.g. Ringgold, Sandoval)
• Equitable considerations: D’s
conduct/bad faith – see NXIVM Corp v.
Ross (CB p. 770)
• P’s conduct e.g. Rosemont (CB p. 775)
Seinfeld case: Castle Rock v.
Carol Pub. (2d Cir. 1998)
• Was the preparation
and sale of Seinfeld
Aptitude Test a fair
use, according to the
Second Circuit? Why
or why not?
Fair Use Generally
• Are all these cases just hopelessly
inconsistent?
• How does one advise a client on the issue of
fair use?
• How, if at all, should the doctrine be
changed?
Fair Use Generally: To Consider
• Are all these fair use cases that we read in
the last class just hopelessly inconsistent?
• How does one advise a client on the issue of
fair use?
• How, if at all, should the doctrine be
changed?
Sega v. Accolade: Intermediate
Copying
• Accolade is a game developer that made
and markets game software that was
compatible with Sega’s Genesis console,
without being a licensee of Sega.
• How did Accolade make sure its games
were compatible with Sega’s console?
Sega v. Accolade: Intermediate
Copying
• 1. Reverse engineered Sega’s video game
programs - used decompilation to
dissasemble object code to source code and
created a manual that included description
of interface requirements but not code.
• 2. Relying on information in the manual,
Accolade created games for the Genesis.
Is Intermediate Copying
Infringement?
• Did the 9th Circuit in Sega find that
intermediate copying constituted a
copyright infringement where copies were
not made available to the public but the
fruits of the copying were?
Is Intermediate Copying
Infringement?
• Did the 9th Circuit in Sega find that
intermediate copying constituted copyright
infringement where copies were not made
available to the public but the fruits of the
copying were? Intermediate copying during
the reverse engineering process would
infringe even if the end product did not.
Is Reverse Engineering Fair Use
• Did the 9th Circuit in Sega find that reverse
engineering was a fair use? How did the
9th Circuit apply the fair use factors?
Is Reverse Engineering Fair Use
• Did the 9th Circuit in Sega find that reverse
engineering was a fair use? Yes, “where
disassembly provides the only means of
access to those elements of the code that are
not protected by copyright and the copier
has a legitimate reason for seeking such
access”. Found 1st, 2d and 4th fair use
factors to support Accolade. Particular
concern about unfair monopolization fo
market.
Sony v. Connectix (9th Cir. 2000)
• Issue\ here: entrepreneur reverse-engineers a
console’s operating system to create a rival
console that plays Sony games.
• In Accolade, the entrepreneur reverse engineered
the operating system to sell compatible computer
games. Thus the reverse engineering resulted in a
product that did not compete with the reverse
engineered work, whereas in Connectix, it did.
Sony v. Connectix (9th Cir. 2000)
• Issue here: entrepreneur reverse-engineers a
console’s operating system to create a rival
console - does that matter when considering
first and fourth fair use factors?
Sony v. Connectix (9th Cir. 2000)
• Issue here: entrepreneur reverse-engineers a
console’s operating system to create a rival
console - does that matter when considering
first and fourth fair use factors?
• No - both factors support fair use.
Connectix’s Virtual Game Station is
transformative and does not just supplant
the Sony PlayStation; Connectix is a
legitimate competitor.
Sony v. Bleem (9th Cir. 2000)
• What did Bleem do that Sony termed an
infringement?
• Did the 9th Circuit find that Bleem’s use of
Sony’s copyrighted work was a fair use?
• Why or why not?
Kelly v. Arriba
• Was Defendant's display on a visual search engine
of lower resolution "thumbnails" of copyrighted
images appearing elsewhere on the Internet,
without the copyright owners' permission, a fair
use?
• What about the display of the full image?
• Does Google’s visual search engine infringe
copyrights?
Kelly v. Arriba
• Defendant's display on a visual search engine of
lower resolution "thumbnails" of copyrighted
images appearing elsewhere on the Internet,
without the copyright owners' permission, is a
protected fair use of those images under the
Copyright Act.
• The court further holds that defendant's display of
the full copyrighted image as part of its search
engine results, either via inline linking or framing,
infringes the copyright owner's right to publicly
display the work.
REMEDIES
• What remedies are available for civil
copyright infringement?
REMEDIES
• Section 504
• A. DAMAGES (either actual damages
and profit OR statutory damages) s. 504
• B. INJUNCTIVE RELIEF (s. 502)
• C. SEIZURE/IMPOUNDMENT (section
503)
• D. COSTS/ATTORNEYS FEES (s. 505)
• (PROPERTY TYPE OF REMEDIES)
INJUNCTIONS
• More routine than in many other civil cases
• Preliminary injunctive relief is generally
awarded if P establishes p.f. case on validity
and infringement (irreparable injury is
presumed)
• Permanent injunction generally awarded if
copyright validity and infringement are
found
OTHER NONMONETARY
RELIEF
• Impounding and destruction of infringing
articles (section 503)
ACTUAL DAMAGES/PROFITS
• What are actual damages?
• (See Frank Music Case)
ACTUAL DAMAGES/PROFITS
• Actual damages are extent to which
market value of copyrighted work has been
injured or destroyed by an infringement
including fair market value of licensing
fee (Davis)
• If too speculative, will not be awarded
• Punitive damages are not generally
awarded in copyright actions
INFRINGER’S PROFITS
• What profits is a prevailing plaintiff
permitted to recover in a copyright
infringement action?
What must P prove? - see Davis case
INFRINGER’S PROFITS
• Prevailing P can recover infringer’s profits if
attributable to infringement
• Plaintiff is only required to prove D’s sales that
are reasonably related to the infringement
• Burden then shifts to D to prove elements of costs
to be deducted from sales in arriving at profit.
• Doubt about computing costs/profits should be
resolved in P’s favor.
FRANK MUSIC
• Had defendant met its burden in proving element
of costs to be deducted from sales in arriving at
profit?
• Why or why not?
• Can a copyright proprietor recover “indirect
profits”?
• How should profits be apportioned?
• To what extent are joint defendants liable for an
award of profits?
STATUTORY DAMAGES
• What are statutory damages?
• Can you recover statutory damages as well as
actual damages and profits?
• Are there any prerequisites for statutory
damages? See s. 412
• When must P elect statutory damages?
• What amount of statutory damages may a court
award? What if infringement willful?
DIGITAL THEFT DETERRENCE AND
COPYRIGHT DAMAGES
IMPROVEMENT ACT
• 1999 legislation raising statutory damages
by 50% (See supplement)
STATUTORY DAMAGES
• See s. 504©
• Statutory damages can be between $750 and
$30,000 per work “as the court considers just”
• For willful infringement, statutory damages can
be increased to no more than $150,000.
• If infringement innocent, statutory damages can
be reduced to $200
COMPILATIONS/DERIVATIVE
WORKS
• For purposes of statutory damages, all parts
of compilation/derivative work are to be
regarded as constituting a single work
ENGEL V. WILD OATS
• What was the issue for the Southern
District of New York?
• How did it resolve this issue?
LESSIG
• The Future of Ideas
COSTS AND ATTORNEY’S
FEES
• See Fogerty v. Fantasy (1994)
• What was the subject of the split in the
circuit?
• How did the Supreme Court rule on this
split?
• Is Judge Posner’s statement in Gonzalez
(see supplement) sound?