fair use and the dmca

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Fair Use and the DMCA: How 1201(b) is Unconstitutional in the Digital Age

Hillary Musselman

Spring 2009, Santa Clara University Law


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Introduction

The last two decades have seen dramatic developments in technologies designed to create

and spread information and media. The ability to create in a digital format, along with the ability

to access the Internet via high speed connections, allows people around the world to share

content with one another almost instantaneously. A girl in Ohio can create a mash-up of her

favorite music videos and send it to her best friend in Florida, and a Professor at Oxford can post

a paper he is working on to an online academic bulletin board and receive feedback from

professors in Taipei and Ontario simultaneously. These developments have created new outlets

for creativity and expression and have enabled knowledge and information sharing on an

unprecedented level. The benefits of these developments for fostering cooperation and

understanding and for spreading knowledge and information cannot be overstated.

As the myriad of benefits surrounding these technologies have developed, so too has the

potential to abuse them. Works in digital formats can be easily and quickly copied and the copies

may be nearly flawless. There is no static on recordings, there are no stray marks from unwieldy

copy machines, and there are no awkward cuts in videos. The ability of pirates to make identical

copies of copyrighted works and then share them with the world via the Internet threatens to

undermine one of purposes for which copyright law was created: to ensure that creators have

incentives to create and share for the betterment of society. In order to guard against piracy many

creators have turned to technological protections to limit access to their copyrighted works. Such

controls, often referred to as Digital Rights Management (DRM), include coding that prevents

files from being copied or prevents DVD players from reading disks that do not contain the

correct access codes.


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These protective measures are not flawless, however. People knowledgeable in the

technology can develop ways to break through the codes in order to obtain access to the

underlying content, potentially allowing for infringement on the rights of a creator. In

recognition of this problem, Congress specifically included provisions that prohibit

circumvention of technological protections and the trafficking of devices created to facilitate

circumvention when it passed the Digital Millennium Copyright Act (DMCA) in 1998. What

Congress failed to adequately consider in enacting these statutes is that while they do not

prohibit circumvention where fair uses may be made of the underlying content, preventing

distribution of goods that allow users to access to protected content will have substantially the

same effect. The courts, however, have maintained that the prohibition on trafficking of

circumvention devices does not violate the fair use doctrine.

In this paper I will argue that in a world where content is increasingly only available in

digital formats, preventing a large segment of the population from obtaining the tools necessary

to circumvent DRM prevents people from making fair uses of the content. By essentially

eliminating fair uses, the DMCA goes too far in granting rights to copyright holders and violates

not only its own terms1

but the purposes of copyright law. And, the courts, in maintaining that

the provisions do not eliminate fair uses, are upholding laws that were created in excess of the

power granted to Congress in the Intellectual Property Clause of the Constitution.

I will begin by briefly examining the history of copyright law, including the DMCA and

the fair use doctrine and by reviewing the position the courts have taken on anti-circumvention

cases to date. I will then examine technological trends and how, in light of these trends, the

courts have imbued the DMCA, particularly 1201(b), with unconstitutionally broad powers. I

117 U.S.C. 1201(c)(1) (2008): Nothing in this section shall affect rights, remedies,

limitations, or defenses to copyright infringement, including fair use, under this title.


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will then conclude by presenting a method for analysis of 1201(b) claims that would serve to

address the concerns that gave rise to its enactment while at the same time protecting the public

interests for which Congress was given the authority to create intellectual property protections.

I. Copyright in History

a. Early Developments

Copyright began in the United Kingdom as a right for publishers to maintain control over

the works they printed.2

Prior to the enactment of any laws on the subject, the Stationers

Company created for itself a system of private perpetual copyrights.

3

As the publishing

industry expanded, the Crown wanted to be able to exercise greater control over the material

being printed and passed the Licensing Act of 1662, granting the Stationers Company a

monopoly over the printing of books. In 1694 Parliament refused to renew the act and passed the

Statute of Anne in 1710,4

granting authors an exclusive copyright over their works for fourteen

years from the time of publication with the ability to add another fourteen years if the author was

still living.5 This statute marked the transition of copyright law from law establishing rights for

publishers to law securing rights for authors.6

For the first time, it was the creators of the

underlying content, not the creators of the physical books, who were given ownership rights to

their works.

2LYMAN RAY PATTERSON, COPYRIGHT IN HISTORICAL PERSPECTIVE, LYMAN RAY PATTERSON 6

(1986).3

Craig W. Dallon, Original Intent and the Copyright Claus: Eldred v. Ashcroft Gets it Right, 50St. Louis L.J. 307, 341 (2006).4Id. at 342.

5Id. at 341.

6 PATTERSON,supra note 3, at 150.


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Following the Revolutionary War, the drafters of the U.S. Constitution recognized the

need for similar protections of intellectual property in the new nation. Article I, section 8, clause

8, the Intellectual Property Clause, of the Constitution granted the federal government the power

to enact copyright laws to promote the progress of science and useful arts.7

The first copyright

law was passed as the Copyright Act of 1790, which was prompted by several private petitions

to Congress for copyright protection for existing works.8

In the time since, the law has been

changed, interpreted, and added to many times in order to make accommodations for

technological advances.

In 1909 Congress passed the first modern copyright law in the United States, establishing

a twenty-eight year term for copyrights and giving authors the ability to renew for another

twenty-eight years at the end of the first term.9

It only provided protection for published works in

order to create an incentive for authors to publish their works for the greater public good.10

The

provisions of this act were largely replaced by the 1976 Copyright Act, although much of the

1909 law is still applied by courts.

While the 1909 Act was created in order to bring together scattered statutory provisions

with relatively few changes or innovations,11

the 1976 Act was enacted in order to address

technological developments, including recording devices, television, film, and video.12

In the

drafting process the Copyright Office supported negotiations between authors, book and music

publishers, and motion picture studios that produced a compromise on the substance and

7U.S. CONST. art. 1, 8, cl. 8.

8Dallon,supra note 4, at 329.

9Jessica D. Litman, Copyright, Compromise, and Legislative History, 72 Cornell L. Rev. 857,

888 (1987).10

Dallon,supra note 4, at 333.11

Litman,supra note 10, at 858.12Id.


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language of several provisions.13

The new act extended the period of protection for original

works and provided that content was protected immediately upon creation, whether published or

un-published so long as it existed in a fixed medium.14

It also codified fair use exceptions in an

attempt to balance incentives for creators with the need for public access in order to meet the

Constitutional requirements of enacting copyright laws.15 The bill gave authors expansive rights,

but then provided specific, detailed exemptions for those [public] interests whose

representatives had the bargaining power to negotiate them.16

Until 1976 the fair use doctrine existed solely in case law, although a 1961 report from

the Register of Copyright supported its codification.

17

The process of actually implementing it

into law was one of the hard fought battles of the 1976 act. The Ad Hoc Committee of

Educational Organizations and Institutions wanted broad exemptions for educational uses, but

authors and publishers were strongly opposed to them.18

Professor Litman asserts that [t]he

ensuing negotiations over these exemptions produced statutory privileges for uses that would

have constituted copyright infringement under the 1909 Act.19

The fair use standard that

emerged from these negotiations established a flexible standard that addressed the needs of the

public while maintaining private incentives.20

It is now codified in 17 USC 107, which reads:

107. Limitations on exclusive rights: Fair useNotwithstanding the provisions of sections 106 and 106A, the fair use of a

copyrighted work, including such use by reproduction in copies or phonorecordsor by any other means specified by that section, for purposes such as criticism,

comment, news reporting, teaching (including multiple copies for classroom use),

13Id. at 867.14

17 U.S.C. 102(a) (2008)15

Dallon,supra note 4, at 328.16

Litman,supra note 10, at 883.17Id. at 875.18

Id. at 876.19

Id. at 885.20 Dan L. Burk,Anticircumvention Misuse, 50 UCLA L. Rev. 1095, 1099(2003).


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scholarship, or research, is not an infringement of copyright. In determiningwhether the use made of a work in any particular case is a fair use the factors to

be considered shall include

(1) the purpose and character of the use, including whether such use is of a

commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted

work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrightedwork.

The fact that a work is unpublished shall not itself bar a finding of fair use if suchfinding is made upon consideration of all the above factors.21

Since its implementation, the full implications and meanings of 107 have been explored

in a number of cases, most notably Campbell v. Acuff Rose.

The Cambellcase arose as a result of 2 Live Crews adaptation of Ray Orbisons classic

song Pretty Woman. The rap group created a song intended as a parody of the original, and

Orbisons record company sued the group claiming copyright infringement. The Supreme Court

declared that the 2 Live Crews version was not an infringement because it qualified as a fair use

and was therefore exempt. The court indicated that even under the Statute of Anne the English

courts made exceptions for fair uses,22

and stated that [f]rom the infancy of copyright

protection, some opportunity for fair use of copyrighted materials has been thought necessary to

fulfill copyrights very purpose, to promote the Progress of Science and useful Arts...23

The

opinion also reaffirmed that the goal of copyright to promote science and the arts is generally

2117 U.S.C. 107 (2008).

22Campbell v. Acuff Rose Music, Inc., 510 U.S. 569,576.

23Id. at 575.


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furthered by the creation of transformative works. Such works lie at the heart of the fair use

doctrines guarantee of breathing space within the confines of copyright.24

Maintaining the delicate balance between incentivizing creators and protecting public

access has always been one of the greatest challenges faced in enacting intellectual property law.

If creators must worry that their works can be copied and widely distributed without any benefit

given to them, they will be less inclined to create. Certainly all authors would not cease to write

nor would computer programmers cease to develop new tools, but their endeavors would be

relegated to the land of the hobby, a pursuit taken up when the days work is finished. Therefore,

the process of creation would take much longer, it is likely that many works would not be

created, and society will be the worse for it. However, to grant an exclusive monopoly to creators

in all circumstances would do a disservice to the public as well, for what would the world be

without the ability to comment on, adapt, and teach previously created works? Professor

Ginsberg urges in her article Copyright and Control Over New Technologies of Dissemination

that creators should maintain sufficient control over new markets to keep the copyright

incentive meaningful, but not so much as to stifle the spread of the new technologies of

dissemination.25

b. The DMCA

One of the notable features of copyright law in the United States, which is entirely

statutory, is that changes to it over time have occurred largely in order to bring American law

into line with international law in accordance with treaties. Early in the history of copyright law

24Id. at 579.

25Jane C. Ginsberg, Copyright and Control Over New Technologies of Dissemination, Colum. L.

Rev. 1613, 1613 (2001).


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agreements between nations occurred primarily on a bilateral basis. In 1886, however, the Berne-

Convention was established as one of the first multi-lateral international agreements on copyright

law.26

The United States did not initially participate because at that time it imported more

copyrights than it exported and it was not economically beneficial.27

But, over time [t]he US. . .

evolved from a copyright isolationist to a leader in setting and enforcing global copyright

policy.28

Today the US is the top copyright exporter in the world.29

In 1988, in response to

billions of dollars of losses resulting from inconsistent copyright laws, Congress passed the

Convention Implementation Act, which adapted existing policy in order to bring US and

international law in line with one another.

30

It did so, however, by making as few changes to US

law as possible.31

Today the World Intellectual Property Organization (WIPO), which emerged from the

Berne Convention in 1967, is responsible for enacting the treaties that set the standards for

intellectual property rights around the world. It is a special section of the United Nations located

in Geneva and is the oldest and most well known international intellectual property

institution.32

In 1996 WIPO passed the WIPO Performances and Phonograms Treaty and the WIPO

Copyright Treaty (WCT) in order to address the challenges of protecting copyright in the digital

age.33

One of these challenges was addressing new the technologies being developed in order to

circumvent technological devices used by creators to protect their copyrights. Therefore, the

26 JULIE E. COHEN ET AL., COPYRIGHT IN A GLOBAL INFORMATION ECONOMY 35 (2006).27

DAVIDNIMMER, COPYRIGHT: SACRED TEXT, TECHNOLOGY AND THE DMCA 56-57 (2003).28

Cohen, supra note 26, at 33.29

NIMMER,supra note 28, at 56.30Id. at 59.31

Id.32

Cohen, supra note 26, at 40.33Id. at 40.


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WCT required ratifying states to provide protection against the circumvention of technological

tools used by creators to protect against infringement.34

In 1998 the United States ratified the WIPO treaties and implemented them into law in

the Digital Millennium Copyright Act (DMCA). This act was a departure from earlier

amendments to copyright law in that for the first time Congress anticipated new technologies and

crafted the law around potential developments instead of waiting for technology to develop and

then legislating to address the new problems it created.35

As a result, many feel that the act is

overreaching.

The anti-circumvention provisions, codified in 17 USC 1201, are among the most

highly contested elements of the DMCA. One of the primary arguments against these provisions

is that technological controls are increasingly being used by creators in place of licensing

agreements and they often create restrictions on use that would not be upheld as licenses.36

Therefore, those who use such protective measures are able to use the DMCA to obtain

additional rights by being able to challenge circumvention alone instead of having to rely on

standard claims of copyright infringement or licensing agreement violation.37 Professor Burk

asserts that anti-circumvention laws used as an adjunct to technological controls confer upon

content owners a degree of control never attainable under a regime of traditional copyright.38

This would be acceptable in cases where the technology is actually protecting against

34Matt Jackson, Using Technology to Circumvent the Law: The DMCA's Push to Privatize

Copyright, 23 Hastings Comm. & Ent. L.J. 607, 629 (2001).35Ginsberg,supra note 26, at1634.

36Burk,supra note 20, at 1101

37Id. at 1132.

38Id. at 1102.


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infringement, but there is a hole in the laws where circumvention of technology does not result in

infringement.39

Section 1201 provides in part that:

(a) Violations Regarding Circumvention of Technological Measures.

(1)(A) No person shall circumvent a technological measure that effectively controls

access to a work protected under this title. The prohibition contained in thepreceding sentence shall take effect at the end of the 2-year period beginning on

the date of the enactment of this chapter.40

and

(b) Additional Violations.

(1) No person shall manufacture, import, offer to the public, provide, or otherwise

traffic in any technology, product, service, device, component, or part thereof,that

(A) is primarily designed or produced for the purpose of circumventing protection

afforded by a technological measure that effectively protects a right of a copyrightowner under this title in a work or a portion thereof;

(B) has only limited commercially significant purpose or use other than to

circumvent protection afforded by a technological measure that effectivelyprotects a right of a copyright owner under this title in a work or a portion thereof;

or(C) is marketed by that person or another acting in concert with that person with

that persons knowledge for use in circumventing protection afforded by atechnological measure that effectively protects a right of a copyright owner under

this title in a work or a portion thereof..41

The statute further provides that the Library of Congress may decide to allow exemptions to

1201 if it prevents fair uses, but distribution of the technology that may allow circumvention is

not subject to such exemptions. Additionally, in 2000 the Copyright Office determined that the

language of the exemptions must be more narrow than to simply permit an exemption for a fair

39Jackson,supra note 34, at 628.

4017 USC 1201(a).

41 17 USC 1201(b) (2008).


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use.42

Subsection (b) provisions are to be applied regardless of additional non-infringing uses

that the circumvention tools may be put to.43 As a result, the DMCA increases private control

over content by creating legal protection for the anti-circumvention technology that copyright

owners use to control content.44

II. The Courts View

Because the laws and the technology are relatively new, only a handful of cases have

been heard on the subject, but the courts have largely agreed that the language of the statutes

does not impermissibly hinder the publics ability to make fair uses of material.

a. Universal City Studios, Inc. v. Shawn C. Reimerdes

Reimerdes was one of the first cases heard on the issue of anti-circumvention technology.

In his opinion for the US District Court for the Southern District of New York, affirmed by the

2nd

Circuit, Judge Kaplan expressed the opinion that 1201 does not eliminate fair uses and

required the defendant to remove certain links from his Website.45

With the rising popularity of DVDs and the potential for pirates to make and sell copies,

the movie industry began to use CSS encryption technology to protect the sound and graphic

data on DVDs.46

These protections prevented buyers from making copies of the DVDs by

placing digital locks on the information contained on them. Shortly after CSS codes came into

use a teenager in Norway was able to reverse engineer the encryption algorithm and create a

42Cohen, supra note 26, at 623.

43 Burk,supra note 20, at 1136.44

Jackson,supra note 34, at 610.45

Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294,338.46Id. at 310.


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program, DeCSS, that could be used to circumvent the protections and make copies of the

DVDs.47 Reimerdes and his co-defendants posted the program to their site along with links to

other sites where the program could be downloaded.48

They were promptly sued by the Motion

Picture Association of America (MPAA) for violating 1201(b) of the DMCA.49

At trial, the defendants invoked the fair use doctrine. They claimed that they posted the

code in order to allow DVD purchasers using computers running Linux operating systems to

play the movies.50

The court expressly disallowed the fair use doctrine as a defense on the basis

that the defendants were not being sued for copyright infringement but for violating 1201(b) by

providing circumvention technology.

51

Kaplans opinion indicated that the purposes for which

the program was developed were immaterial to the question whether the defendant now before

the court violated the anti-trafficking provision of the DMCA.52

The court found it irrelevant that the program may have a number of fair use applications,

such as making back-up copies. The court ruled that 1201(b) applies in any situation where a

defendant is providing access to a circumvention tool, and fair use is not a defense under that

statute.53 Kaplan wrote that [b]y prohibiting the provision of circumvention technology, the

DMCA fundamentally altered the landscape. A given device or piece of technology might have

substantial non-infringing use. . . but nonetheless still be subject to suppression under

1201.54

The court did recognize that the anti-trafficking provisions may impede people from

making fair uses of content in efficient, desirable ways, but determined that they were not strictly

47Id. at 308.48

Id.49

Id.50

Id. at 311.51Id. at 322.52

Id. at 319.53

Id. at 323.54Id. at 323.


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prohibited from making a fair use of content and, therefore, the DMCA did not effectively

remove the fair use doctrine from law.55

b. 321 Studios v. Metro Goldwyn Mayer Studios, Inc.

In a case similar toReimerdes, heard by the District Court for the Northern District of

California, movie studios sued to stop 321 Studios from making and selling software and

instructions for copying DVDs protected by CSS encryption. They based their claims on

1201(a)(2) and 1201 (b)(1).56

321 sought declaratory judgment that their activities did not

constitute violation of the DMCA on the basis that their software had uses other than allowing

for circumvention.57

The plaintiffs argued that their software was designed primarily to allow DVD purchasers

to make back up copies of their movies, a fair use under the statutes, and that the circumvention

feature is only an aspect of allowing the non-infringing use and therefore not a violation of

1201(b).58

The studios argued that while a portion of their program did have uses that did not

constitute violation of the statute, a portion of the program was designed solely to circumvent

CSS technology.59

The court agreed that this portion of the program did violate the provisions of

the DMCA, and that the purchase of a DVD does not give the buyer the right to decrypt CSS

technology.60

As inReimerdes, the court found that it is the technology itself at issue, not the

55Id. at 338.

56321 Studios v. Metro Goldwyn Mayer Studios, Inc., 307 F. Supp. 2d 1085,1094.

57Id. at 1094.58

Id. at 1096.59

Id. at 1095.60Id. at 1096.


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uses to which copyrighted material may be put. . . legal downstream use. . .is not a defense to the

software manufacturers violation of the provisions of 1201(b)(1).61

c. U.S. v. Elcom

In 2002 the Northern District of California explicitly stated that disallowing trafficking of

tools that may enable circumvention is not inconsistent with the purposes of the Intellectual

Property Clause.62

Elcom involved technology designed to avoid controls used by Adobe to limit

access to e-Books. Adobe placed protections on its e-Books in order to prevent users from

distributing the books after initially downloading them.

63

When a buyer purchased an e-Book

from Adobe they received a voucher that their e-Book Reader would recognize. The book could

then only be accessed by the computer to which it was first downloaded and no additional copies

could be made.64

The defendant company developed a program that allowed users to circumvent these

controls, which it marketed as Advanced e-Book Processor. This program allowed users to make

copies of the e-Books and transfer them to other computers.65 Advanced e-Book Processor has

the potential to allow users to make both fair use copies (back-ups) and to infringe on

copyrights.66

Elcom was indicted under 1201(b) for trafficking products that allowed circumvention

of a technology designed to protect an owners copyright. The court first considered whether the

statute specifically banned circumvention tools that allow users to infringe on copyright or if it

61Id. at 1097.

62U.S. v. Elcom Ltd., 203 F. Supp. 2d 1111,1135.

63Id. at 1118.64

Id.65

Id.66Id.


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simply banned all tools that could be used for circumvention.67

Elcom argued that the language

of 1201(b) was not clear on this issue, and that this made the statute unconstitutionally vague

under the Due Process Clause.68

The court found 1201(b) clear on its face and determined that

[t]he statute does not distinguish between devices based on the uses to which the device will be

put. Instead, all tools that enable circumvention of use restrictions are banned, not merely those

use restrictions that prohibit infringement.

Elcom then attacked the constitutionality of 1201(b) under the first amendment,

claiming that it violated the rights of users to make fair uses of the content in the e-Books.69

The

defense specifically argued that the governments approach to the DMCA effectively eliminates

fair use. . . and prevents access to material in the public domain and uncopyrightable material

protected by technological measures.70

The court rejected this argument as well and found that

it is not circumvention of access control devices that is illegal under the DMCA, it is only the

trafficking of the anti-circumvention technology that is prohibited.71

Judge Whytes opinion

indicates that in enacting the provisions of the DMCA the legislature intended to encourage e-

commerce while still protecting the rights of copyright owners.72 Congress did not prohibit the

act of circumvention because it sought to preserve the fair use rights of persons who had lawfully

acquired a work.73

In his opinion, Whyte stated that there was not a constitutional guarantee that a person

should be allowed to make a fair use of material in the most efficient way and that simply having

67Id. at 1121.

68Id. at 1122.

69Id.

70Id. at 1130.71

Id. at 1120.72

Id. at 1124.73Id. at 1120.


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to go to non-digital sources in order to make a legal use of content was not a sufficient

impediment to the continued existence of the fair use doctrine.74 Congress has not banned or

eliminated fair use. . . The fair user may find it more difficult to engage in certain fair uses with

regard to electronic books, but nevertheless, fair use is still available.75

III. Discussion

a. The problem with technology

What Judge Whyte did not take into consideration when deciding that fair use had not

been eliminated simply because it was more difficult is that there will likely be a time when most

content is delivered by digital means. When this is the case it may be impossible to gain access

to an unprotected work without the use of circumvention tools.

People are increasingly obtaining information and entertainment from digital sources.

The U.S. government has mandated that in 2009 all television stations must be broadcast

digitally. In 2008 newspaper readership fell by 3.6% on weekdays and 4.6% on Sundays,76

and

as readership declined, newspaper companies around the nation began to cut employment and

even close some of their papers with smaller circulation.77

Conversely, traffic on newspaper

Websites increased by 15.8% in 2008.78

Although musical records have developed something of

74Id. at 1131.

75Id. at 1134-5.

76 Richard, Perez-Pena,Newspaper Circulation Continues to Decline Rapidly, NEW YORKTIMES

(Oct. 27, 2008), available athttp://www.nytimes.com/2008/10/28/business/media/28circ.html?partner=rssnyt&emc=rss (last visited Jan. 24, 2009).77

Richard, Perez-Pena,An Industry Imperiled by Falling Profits and Shrinking Ads, NEW YORKTIMES (Feb. 7, 2008), available athttp://www.nytimes.com/2008/02/07/business/media/07paper

.html (last visited Jan. 24, 2009).78

Jeff Sigmund,Newspaper Web Site Audience Increases Sixteen Percent in Third Quarter to

68.3 Million Visitors, NEWSPAPERASSOCIATION OF AMERICA, (Oct. 23, 2008), available athttp://


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a cult resurgence in recent years, people have primarily purchased music on CDs since the

1990s and have now moved to online downloads. In 2008 online digital album sales rose by

32% (65.8 million total) and sales of digital tracks by 27% (1.07 billion total).79

Only 400,000

cassette tapes were sold in 2007,80

and popular music is often no longer released in cassette

format.81 As for video, Circuit City announced in 2002 that it would no longer carry VHS tapes82

and Wal-Mart, Target, and Best Buy followed suit.83

While most book sales still occur in traditional format, Amazons e-Book reader, Kindle,

has sold out for the last two holiday seasons in a row and e-Book sales increased 55.2% in the

first nine months of 2008.

84

Products like the Kindle allow users to store a librarys worth of

books in a handheld device. While it seems unlikely that books will disappear the way VHS and

cassette tapes seem poised to do, it does seem likely that e-Books will someday largely replace

hardcopies, and books will become the new records. Publishers will print certain titles for their

nostalgic value and collectors will seek them out, but they will not be widely distributed and it is

likely that many works will only be available digitally.

www.naa.org/PressCenter/SearchPressReleases/2008/NEWSPAPER-WEB-SITE-AUDIENCE-INCREASES-SIXTEEN-PERCENT-IN-THIRD-QUARTER.aspx (last visited Jan. 24, 2009).79

Jonathan Skillings, Music sales for 2008 ride digital coattails, C NET, Jan. 1, 2009, http://news.cnet.com/8301-1023_3-10130206-93.html.80 Andrew Adam Newman, Cassette tape going the way of the eight-track, INTERNATIONALHERALD TRIBUNE (July 28, 2008), available athttp://www.iht.com/articles /2008/07/28/business

cassette.php accessed (last visited Jan. 24, 2009).81Id.82

Richard Shim, Circuit City hits stop on VHS tape sales, CNET, June 17, 2002, http://news.cnet.com/Circuit-City-hits-stop-on-VHS-tape-sales/2110-1040_3-936889.html.83

Wal-Mart said to stop selling VHS, CNNMONEY.COM, June 13, 2005, , http://money.cnn.com/2005/06/13/news/fortune500/walmart_vhs/, accessed 1.24.0984

Jeffrey A. Trachtenberg & Christopher Lawton,Better Scratch That Kindle Off Your List ---Amazon's E-Book Gadgets Sell Out After Oprah's Plug;Calculating the Whim Factor, WALL

STREET JOURNAL, Dec. 4, 2008


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Additionally, a great deal of content is now produced solely for distribution on the

Internet. NBCs Website offers a variety of videos meant to supplement their television

programs. For its popular series Heroes, the network has created a companion series called

Heroes Destiny that is only available for viewing online. ABC, Bravo, and the FoodNetwork all

offer similar content on their sites.

This presents a serious problem. When television, news, music, video, and books are all

primarily available in a digital format that can be protected by technological locks, and it is

illegal to provide tools to break these locks, how can the public gain access to content for non-

infringing uses? Professor Jackson argued that if a person wants to make a fair use of a

technologically protected work, she must first either locate an unsecured copy of the work, or in

the absence of such a copy, ask the permission of the content owner.85

The only other

alternative is for the user to circumvent the technological lock himself, which is not illegal.86

This is a perfectly acceptable approach for someone who happens to be highly proficient in

computer programming but is simply unrealistic for the average person.

Jackson further argued that the new law effectively outlaws the development of the

circumvention tools that users would need for. . . permissible purposes. Without access to

circumvention technologies, users will find it difficult to use content even for a legitimate, non-

infringing purposes.87

The protections that the content under technological locks receive is

entirely separate from the protection provided to content under copyright law, and it grants

creators rights that may have little to do with guarding against copyright infringement.88 In

assessing whether a person has violated the law, the court does not even consider if an

85 Burk,supra note 20, at 1106.86

Jackson,supra note 34, at 367.87

Id. at 611.88 Burk,supra note 20, at 1113.


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infringement has taken place, only if a tool with few uses other than circumvention has been

distributed.89 Professor Jackson asserts that [w]hat makes the anti-circumvention provisions so

troubling is that they prevent courts from engaging in fair use analysis. Indeed, as technology

becomes the primary means of protecting content. . . courts are removed entirely.90

In a locked digital world most people will not be able to gain access to content and will

not be able to take advantage of fair uses in order to further disseminate information and

knowledge. 1201(b) creates an entirely new right that is not permissible according to he

DMCA itself91

or the Constitution.

b. The Constitutional Problem

Article I, Section 8, Clause 8 of the U.S. Constitution, the Intellectual Property clause,

specifically grants to Congress the power [t]o promote the progress of science and useful arts,

by securing for limited times to authors and inventors the exclusive right to their respective

writings and discoveries. This is a narrow grant of power, with three requirements. First, the

action must be taken to promote progress; second, the right given must be limited; and finally,

the right must be to protect an author (as a copyright) or inventor (as a patent).92

In his article,

Original Intent and the Copyright Claus: Eldred v. Ashcroft Gets it Right, Professor Dallon

argues that [u]nder the Copyright Clause and our legal tradition, the public interest and private

interest are not co-equal interests and never have been. The private interest is only relevant to the

extent that it furthers the public interest.93

89Jackson,supra note 34, at 641.

90Id. at 639.91

17 USC 1201(c) (2008).92

Dallon,supra note 4, at 319.93Id. at 352.


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The first requirement certainly recognizes the need to incentivize creators to create in

order to promote the progress of society, but it is also severely limiting. The power granted to

Congress may only be exercised if it is done to further public progress. It may not be used solely

to create private incentives for authors and inventors. The language of the clause focuses on the

public benefit94, as was recognized by Justice Stevens writing the opinion for the court in Sony v.

Universal.

The monopoly privileges that Congress may authorize are neither unlimited norprimarily designed to provide a special private benefit. Rather, the limited grant is

a means by which an important public purpose may be achieved. It is intended tomotivate the creative activity of authors and inventors by the provision of a

special reward, and to allow the public access to the products of their genius afterthe limited period of exclusive control has expired.95

The DMCAs prohibition on distributing tools that have the potential to be used to

circumvent technological locks runs directly afoul of this requirement. It is clear that in the

digital age where flawless copies are so easily made and infringement may be achieved by a few

keystrokes authors need to be able to protect their works. Prohibiting circumvention that is done

in order to make an infringing use of a work is clearly a legitimate exercise of Congressional

authority under Article I, Section 8, Clause 8 because it helps to maintain incentives for authors

to produce and share their work with the public. However, 1201(b) allows creators to place

their works under a perpetual lock, thereby permanently removing them from the public domain.

This does not promote progress, it stifles it.

Further, it violates the second Constitutional requirement for enacting copyright laws.

Any right granted to an author must exist only for a limited time.96 There may be no permanent

94Id. at 349.

95Sony v. Universal, 464 U.S. 417 (1984)

96 U.S. CONST. art. 1, 8, cl. 8.


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monopoly granted over an expression. Justice Story supported limited rights in Commentaries on

the Constitution of the United States.

It was beneficial to all parties, that the national government should possess this

power. . . as it would promote the progress of science and the useful arts, andadmit the people at large, after a short interval, to the full possession andenjoyment of all writings and inventions without restraint

97

By prohibiting any distribution of tools that may be used to allow people to gain access to

locked content, the DMCA prevents most people from using material except as passive

consumers. Fair uses become irrelevant, and the owners copyright is unconstitutionally

expanded into a perpetual monopoly.

1201(b) also violates the third requirement under the Intellectual Property clause. The

right it affords is neither a copyright nor a patent. It is an economic right secured by means of a

restriction on the distribution of a product. This clearly does not fit within the language of the

Constitution. Professor Dallon asserts that the Intellectual Property clause allows Congress to

promote the progress of science and useful arts pursuant to this clause only in the ways identified

in the by securing phrase- by affording copyright and patent protection.98

It does not allow

Congress to impose restrictions on trade in order to provide permanent private rights that are

counter to the primary purpose for which they are empowered to establish intellectual property

laws in the first place.

97JOSEPH STORY, COMMENTARIES ON THE CONSTITUTION OF THE UNITED STATES; WITH A

PRELIMINARY REVIEW OF THE CONSTITUTIONAL HISTORY OF THE COLONIES AND STATES, BEFORE

THE ADOPTION OF THE CONSTITUTION 1147 (1883) http://www.constitution.org/js/js_319.htm(last visited Jan. 25, 2009)98 Dallon,supra note 4, at 317


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IV. Alternative Analysis

By refusing to employ a fair use analysis in considering cases arising under 1201(b),

courts give to the DMCA a meaning that is impermissible under the Constitution. Where

circumvention tools are distributed in order to allow for non-infringing uses, the courts should

not find the distributor in violation. This is the approach that has been taken in other countries

that have enacted similar legislation in order to bring their own laws into compliance with the

WIPO treaties.

Although the WCT requires states to establish protections against circumvention

technology and penalties for circumvention,

99

it provides countries with broad discretion in

deciding how to implement its provisions.100 The European Union Directive (EUCD)

implementing the WCT requires that member states use reasonable measures to provide access

around circumvention.101

Additionally, the EUCD requires that a party charged under the law

know that their actions constitute illegal circumvention, while the DMCA imposes strict

liability.102

Under the provisions implemented in the United Kingdom

. . . any person who provided, promoted, advertised or marketed a service in thecourse of business or otherwise so as to prejudicially affect the copyright owner,

with the purpose of enabling or facilitating circumvention, was. . .said to havecommitted an offence. Nevertheless, the alleged offender may defend his position

by proving that he had no knowledge or reasonable ground for believing that thedevice, product, component or services provided enabled or facilitated the

circumvention.103

99WIPO Copyright Treaty, Dec. 20, 1996, S. Treaty Doc. No. 105-17, 36 I.L.M. 65 available at

http://www.wipo.int/clea/docs/en/wo/wo033en.htm.100

Cohen, supra note 26, at 624.101Id. at 625102

Aashit Shah, UK's Implementation of the Anti-Circumvention Provisions of the EU CopyrightDirective: An Analysis, 2004 Duke L. & Tech. Rev. 3 (2004)103Id.


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If American law took a similar approach, 1201(b) would require that distributors know

that their products are being used to facilitate copyright infringement. The legal analysis for

determining if a violation had occurred would be as follows: 1) Did the individual know or have

reason to know that their product was being used to circumvent technology designed to protect a

copyright in order to make an infringing use of the underlying content? 2) Does the product have

any significant uses other than circumvention? If the answer to the first question is yes and the

answer to the second is no, that is, the products primary function is to circumvent protective

locks and the creator/distributor knows that it is being used in order to facilitate copyright

infringement, that person is guilty of violating 1201(b). The individuals who fail this test are

likely to be those who create products specifically designed to facilitate piracy, the individuals

WIPO was most concerned about when it drafted the WCT.

If however, the creator/distributor is not aware that the device is being used to facilitate

copyright infringement, even if the primary use of the device is to allow circumvention, they will

not be guilty. Similarly, they will not be guilty if they are aware that their product is being used

to facilitate infringement, but it has other significant uses.

This rule allows circumvention tools to remain on the market so that the public may use

them in order to make fair uses of protected content. It also protects those who distribute tools

that have significant uses other than circumvention. At the same time, creators are protected

because those who use the tools for infringing purposes are still liable under 1201(a) and those

who develop the tools to enable piracy are liable under 1201(b). This solution would likely be

unsatisfactory to those who would wish to prohibit all devices whose primary purpose is

circumvention, but in a digital world these products will be necessary to further discourse and

intellectual development. Teachers will need tools to unlock content to make presentations for


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their classes, journalists will need them to access works for fair comment and criticism, artists

will need them to make permissible derivative works.

V. Conclusion

In the digital world, it will only be by allowing qualified distribution of circumvention

tools that 1201 can be considered to promote the progress of science and useful arts,104

and

therefore a valid exercise of Congressional authority under the Constitution. A blanket

prohibition on circumvention devices eliminates the fair use doctrine and grants copyright

owners with a limitless monopoly over their works. Such a right was never contemplated by the

authors of the Constitution and to allow it to persist would run counter to the purposes for which

they granted Congress the authority to enact copyright laws.

104 U.S. CONST. art. 1, 8, cl. 8.


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fair use and the dmca

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