The tension between the First Amendment and intellectual property has existed since the First Amendment was added to the Constitution. Article I, Section 8 of the Constitution gives Congress the power to "secur[e] for limited times to authors and inventors the exclusive right to their respective writings and inventions," a power that could conflict with the freedom of expression required for the First Amendment.

    This tension has been kept in check in part because copyright law protects only the particular expression of an idea rather than the idea itself. Free discussion of an idea, while still protecting an author’s particular expression of the idea, serves both the goals of the First Amendment and the Copyright Clause. The fair use doctrine has served as a safety valve by permitting limited copying of copyrighted expression where there is an important societal justification for doing so.

    The digital revolution -- the expression of traditional copyrighted works (e.g., books, music, motion pictures) in digital form and the creation of entirely new forms of digital works (e.g., computer programs) -- has increased the tension between the First Amendment and intellectual property. This tension has been further heightened by the emergence of the Internet as a global exchange of digital information.

    First, the digital revolution has greatly simplified the ability to copy and distribute a work. This has led to increased copying and to greater pressure to legitimize such copying under the fair use doctrine and the First Amendment. Second, it has given rise to technology that permits copyright holders to place restrictions on the access to and use of their works. This permits them to exert copyright-like restrictions on unprotected elements of their works and to limit or eliminate uses of their works that might have been protected under the fair use doctrine. Finally, the rapid growth of the Internet has greatly increased interest in the use and protection of trademarks, because trademarks are commonly relied on by Internet users to locate goods and services and to bypass the clutter on the World Wide Web.

    Section 1201(a)(1) of the Digital Millennium Copyright Act of 1998 (DMCA), which prohibits circumvention of a technical measure that controls access to a copyrighted work, came into effect on Oct. 28, 2000, two years after the enactment of the DMCA. In drafting the anti-circumvention provisions of the DMCA, Congress considered and attempted to balance First Amendment and intellectual property considerations. To ensure that Section 1201(a)(1) would not unduly diminish access to copyrighted works for legitimate purposes, the statute requires the Librarian of Congress to identify classes of works to which this prohibition should not be applied. Congress delayed the effective date of Section 1201(a)(1) for two years to permit the Librarian to identify any such classes of works.

    On Oct. 27, 2000, the Library of Congress issued a final rule, which created two narrow exemptions to Section 1201(a)(1). These exemptions permit the circumvention of (1) access control mechanisms protecting compilations of lists of Web sites blocked by filtering software applications; and (2) access control mechanisms protecting literary works that fail to permit access because of malfunction, damage, or obsolescence. These exemptions will last for three years, after which the Librarian will issue another rule establishing exemptions for the following three years. In creating the two narrow exemptions, the Librarian rejected numerous proposals for more sweeping exemptions, finding that they did not meet the requirements of Section 1201(a)(1)(C).

    On Aug. 17, 2000, a U.S. district court granted an injunction involving circumvention technology. The order prohibits the defendants from posting, or linking to postings of, a computer program that circumvents the encryption system that prevents the copying of movies on digital versatile disks (DVDs). Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000). The court rejected the defendants’ claim that Section 1201(a)(2), which prohibits the distribution of circumvention technology, violated their First Amendment right to distribute and/or link to the computer program.

    The court found that, because of the functional attributes of computer code, the prohibition in Section 1201(a)(2) should be considered a content-neutral as opposed to a content-based regulation. On this basis, the court ruled that the prohibition on distributing circumvention technology is constitutional because it serves a substantial government interest (protecting copyrighted works) and restricts First Amendment freedoms no more than necessary.

    The court also ruled that the prohibition was not an unconstitutional prior restraint, finding that the considerations supporting an injunction far outweighed the interests served by permitting the dissemination of the circumvention software. The court considered separately restrictions on posting the software and on purposefully linking to the software, but found that the differences between posting and purposeful linking were inconsequential for purposes of its First Amendment analysis.

    In the most high-profile Internet copyright case of the year, a U.S. district court granted a preliminary injunction to 18 record companies that had filed suit against a Web site that allows users to share copies of music files stored in MP3 format. A&M Records, Inc. v. Napster, Inc., Nos. C 99-5183 MHP and C 00-0074 MHP (N.D. Cal. 2000), motion to stay and expedite appeal granted, 2000 U.S. App. LEXIS 18688 (9th Cir. July 28, 2000). The defendant relied on the First Amendment in claiming that the injunction was overbroad and was an unconstitutional prior restraint on speech, because it would enjoin non-infringing speech in addition to infringing speech.

    The court rejected this argument, holding that the injunction applied only to non-infringing speech and was not overbroad. To the extent that the defendant was unable to separate non-infringing speech from infringing speech, the court stated that this was a condition created entirely by the defendant. Thus, it could not serve as a basis for impeding the court from taking steps necessary to prevent infringement of the plaintiffs’ copyrights.

    In another case addressing the First Amendment implications of an injunction, the U.S. Court of Appeals for the Fourth Circuit held that a district court violated the defendants’ First Amendment rights in ordering the removal of significant portions of the defendants’ Web site. CPC International, Inc. v. Skippy, Inc., 214 F.3d 456 (4th Cir. 2000). The injunction prohibited the defendants from communicating in any manner that the plaintiff lacked rights in a trademark. In enforcing its injunction, the district court ordered the removal of parts of a Web site that contained historical information challenging the plaintiff’s trademark and statements of opinion that the plaintiff’s trademark was obtained through improper acts. The court of appeals held that the injunction was overbroad to the extent that it enjoined these editorial and historical comments.

    First Amendment considerations were also at the heart of several cases involving disputes concerning Internet addresses. The U.S. Court of Appeals for the Second Circuit ruled that the National Science Foundation’s restrictions on generic Top Level Domains (gTLDs, e.g., ".com," ".net") did not violate the First Amendment rights of a plaintiff that wished to create new gTLDs, including expressive names such as ".for mayor." Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573 (2d Cir. 2000).

    The court ruled that gTLDs could be expressive speech protected by the First Amendment, despite their functional role. However, the court noted that the plaintiff was not prevented from expressing its message in many other ways, including establishing second-level domain names, such as "formayor.net," and concluded that the restriction on new gTLDs was a permissible restriction on the time, place, or manner of speech. Such a restriction is a valid, content-neutral limitation that is narrowly tailored to serve the significant government interest in regulating the Internet.

    The court also noted that the restriction was temporary and would apply only until the government completed its privatization of the Domain Name System. The court also rejected the plaintiff’s claim that the requirement to use one of the approved gTLDs was compelled speech, because the approved gTLDs have little if any expressive content.

    In a dispute over second-level domain names, a district court ruled that the refusal by Network Solutions, Inc. (NSI) to register second-level domain names that it deemed obscene did not violate the plaintiffs’ First Amendment rights, even though NSI was acting as the sole agent of the federal government in assigning such names. National A-1 Advertising, Inc. v. Network Solutions, Inc., 121 F. Supp. 2d 156 (D.N.H. 2000).

    The court held that the policy to refuse such names was NSI’s own policy and not a government restriction and, therefore, did not implicate the First Amendment. Even if NSI were to qualify as a government actor, however, the court found that the refusal to register obscene second-level domain names did not violate the plaintiffs’ First Amendment rights.

    The court concluded that an Internet address (URL) could be a forum for expressive speech, but that the second-level domain name position in a URL was not itself a separate forum for speech. On this basis, the court held that the rejection of a second-level domain name was not an unconstitutional prior restraint on speech, because the plaintiffs would be free to incorporate their message in other parts of a URL (e.g., a third-level domain), as well as on the Web site itself. The court found that the only unique function of the second-level domain name was as a source identifier -- a means of identifying the associated Web site -- and that this alone was not entitled to constitutional protection.

    Several district courts held that a cybersquatter does not have a First Amendment right to operate a Web site that uses a domain name that infringes on the plaintiff’s trademark. A New York district court addressing this issue found that a domain name could contain expressive content, but that the mere incorporation of the plaintiff’s trademark in a domain name (e.g., www.thebuffalonews.com) was not expressive. OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176 (W.D.N.Y. 2000).

    The domain name did not communicate a message, but merely served as a source identifier that (falsely) identified the source of the Web site. Mere source identification is not expression protected by the First Amendment. The court also noted that the defendant was free to continue to express his opinions on a Web site, and was only prohibited from infringing the plaintiff’s trademark by using it deceptively to attract users to the site.

    A Colorado district court employed a similar analysis in holding that a cybersquatter had no First Amendment right to use domain names that infringed the plaintiff’s trademark. Morrison & Foerster, LLP v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000). In addition, the court rejected the defendant’s claim that his use of the infringing domain names was a parody that was protected under the First Amendment. The court observed that a parody depends on a lack of confusion to make its point. In contrast, the use of the infringing domain names was intended to and did create confusion and therefore was not a parody.

    In People for the Ethical Treatment of Animals v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000), a district court in Virginia ordered the defendant to relinquish the domain name "peta.org" to the plaintiff, which held the registered trademark PETA. The court found that prohibiting the defendant from using the PETA trademark did not violate his First Amendment rights, as he was free to express his viewpoints and operate a Web site that referred critically to PETA. He was merely prohibited from infringing the PETA trademark by using it deceptively to lure Internet users to his site.