| Section II |
On-Line Issues: I |
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I. Challenge to DMCA Demonstrates
Copyright, First Amendment Tension
Free expression and copyright have been intertwined from the very emergence of the printed word. The invention of printing in the 15th century led the English government to fear that printers could use this new technology to spread seditious or heretical content. In 1557, Queen Mary granted a printing guild, the Stationers’ Company, the power to control all printing in England. Any book to be distributed in England was to be authorized by a government licensing authority, and licensed books were “registered” at Stationers’ Hall. Registration became seen as granting literary property rights, and a copyright act passed in 1710 made these intellectual property rights formal.
In the United States, the U.S. Constitution recognizes both intellectual property rights and freedom of speech – a tension that has only been heightened by the digital revolution and the emergence of the Internet as a global exchange of digital information. Laws have struggled to keep up with ever-increasing leaps in technology. Of foremost interest in recent years has been the Digital Millennium Copyright Act of 1998 (DMCA).
The anti-circumvention provisions of the DMCA were again the focus of intense public, academic, and judicial scrutiny in 2002. These provisions, found in Section 1201 of the Act, prohibit the circumvention of technological measures that control access to a copyrighted work. Meanwhile, federal courts considered the interaction between copyright and the First Amendment in two significant cases, even as other rulings in 2002 reflected the greatly increased interest in the use and protection of trademarks online. Internet users commonly rely on trademarks to locate goods and services on the World Wide Web.
The Digital Millennium Copyright Act prohibits the manufacture and distribution of technology, products, and services primarily designed or produced to circumvent technical measures applied by copyright holders to control access to a copyrighted work, or that effectively protect the rights of a copyright holder in a copyrighted work. The anti-circumvention provisions are viewed as essential by copyright holders, who want to ensure that they can protect their digital works from unauthorized access and copying before making them widely available for electronic distribution.
Critics view the provisions as jeopardizing the balance between copyright and the First Amendment in two ways: (1) by putting copyright holders in a position to bar access to non-copyrightable elements of their works; and (2) by enabling copyright holders to prevent uses of copyrighted works that would be permitted under the doctrine of fair use. The anti-circumvention provisions are thus alternatively viewed as consistent with or fatal to copyright.
United States v. Elcom Ltd. The anti-circumvention provisions of the DMCA were at the heart of a high-profile case in 2002, United States v. Elcom Ltd., 203 F. Supp. 2d 1111 (N.D. Cal. 2002). In 2001, the criminal provisions of the DMCA gained worldwide attention with the arrest of Dmitri Sklyarov, a Russian programmer involved in the creation of a program that circumvents the technical protection applied to Adobe’s eBook format, converting the file into a PDF file that can be freely copied and distributed. Mr. Sklyarov was arrested following a presentation he made on the weaknesses of the eBook encryption protection at a DefCon hacking conference. The United States reached a deal with Mr. Sklyarov, in which the charges against him would be dropped in exchange for his agreement to testify against his company, Elcom.
Elcom asserted three constitutional challenges, arguing that the DMCA violates the First Amendment: (1) as applied to the sale of the Elcom software; (2) because it infringes the First Amendment rights of third parties; and (3) because it is impermissibly vague, thus chilling otherwise protected speech.
As an initial matter, the court rejected the government’s assertion that since the DMCA bans the sale of technology, and technology is not speech, the First Amendment was inapplicable. The court also rejected the government’s argument that object code (as opposed to source code) is not deserving of First Amendment protection, noting that “[o]bject code is merely one additional translation of speech into a new, and different, language.” Id. at 1126.
Elcom first argued that the DMCA, as applied to the sale of its software, violates the First Amendment because the DMCA is a content-based regulation, and under strict scrutiny analysis is not sufficiently narrowly tailored. However, the court agreed with the government that intermediate (rather than strict) scrutiny analysis was appropriate, because the DMCA does not target speech and is content neutral with respect to speech.
In determining that the DMCA is sufficiently tailored, the court rejected Elcom’s claims that the statute effectively eliminates fair use, limits non-infringing uses, and that it prevents access to material in the public domain and uncopyrightable material. The court noted that while the DMCA may make some fair use more difficult, the defendant “had cited no authority which guarantees a fair user the right to the most technologically convenient way to engage in fair use.” Id. at 1131. The court then rejected Elcom’s contention that there are less burdensome ways to achieve the government’s objectives of promoting e-commerce and protecting the rights of copyright owners.
Second, Elcom argued that the statute is facially unconstitutional because it is overbroad and thus impairs the First Amendment rights of third parties to access non-copyrighted works and to exercise their fair use rights. The court rejected Elcom’s overbreadth contention, holding that “facial attacks on overbreadth grounds are limited to situations in which the statute or regulation by its terms regulates spoken words or expressive conduct.” Id. at 1133 (citing Roulette v. City of Seattle, 97 F.3d 300, 303 (9th Cir. 1996)). The DMCA is directed at trafficking in or marketing of circumvention technology, not at communicative conduct, the court held. The court then rejected the defendant’s claim that the DMCA impacted third parties’ rights to access public domain and non-copyrightable works. Further, the court held that the DMCA does not eliminate or substantially impair fair use rights.
Finally, citing Reno v. ACLU, 512 U.S. 844 (1997), Elcom argued that the DMCA is unconstitutionally vague under the First Amendment because it “provokes uncertainty among speakers” about exactly what speech is prohibited. The court held that Reno v. ACLU was inapplicable, since the DMCA is not a content-based restriction on speech.
ACLU v. N2H2, Inc. In another case that will test the implications of the DMCA for the fair use doctrine, the ACLU filed a lawsuit in a Massachusetts federal district court on behalf of a computer researcher, Benjamin Edelman, against N2H2, Inc. N2H2 is the maker of an Internet filter program used by computer networks to block access to certain types of Internet sites. The ACLU is seeking declaratory judgment that the computer researcher has First Amendment and fair use rights to examine the full list of sites blocked by the N2H2 Internet filtering program and to share his research tools and results with others.
In order to access the list of sites, Edelman claims that he has to “reverse engineer” N2H2’s program and create a software tool to circumvent the measures that prevent users from accessing a readable version of the list. The suit claims that the DMCA has “cast into doubt” the ability of researchers to perform such activities legally, and that the DMCA has narrowed the fair use doctrine by prohibiting the circumvention of content-control technologies even when that circumvention is done for legitimate purposes, such as research or criticism.
Arista Records, Inc. v. MP3Board, Inc. Several record companies sought summary judgment against MP3Board for contributory and vicarious liability. No music files were located on the MP3Board Web site; instead, the site had a search engine that searched for and aggregated links to music files elsewhere on the Internet. The record companies alleged that by providing links to infringing copies of musical recordings, MP3Board facilitated infringement of the record companies’ copyrights. Arista Records, Inc. v. MP3Board, Inc., 2002 WL 1997918 (S.D.N.Y. 2002).
MP3Board moved for summary judgment on the grounds that its activities were protected by the First Amendment. The court denied MP3Board’s motion for summary judgment, holding that its activities were not protected by the First Amendment. Noting that the U.S. Court of Appeals for the Second Circuit has held that “the fair use doctrine encompasses all claims of First Amendment in the copyright field,” id. at *12 (citations omitted), the court analyzed the strength of MP3Board’s fair use claim. The court held that MP3Board’s fair use defense would fail since the four factors to be considered in analyzing the defense all weigh against a finding that MP3Board was engaging in fair use.
First, the purpose and character of MP3Board and its users was commercial, and the copyrighted works were merely retransmitted and not transformed in any way. Second, in considering the nature of the copyrighted work, the court found that the sound recordings are “close to the core of intended copyright protection,” and not “far removed from the more factual or descriptive type of work that is more amenable to fair use.” Id. at *13. Third, the court noted the allegation that the works were infringed in their entirety rather than merely in part. Finally, the court held that the alleged activities of MP3Board and its users would harm the market for the original works.
Veeck v. Southern Building Code Congress International, Inc. The operator of a Web site sought declaratory judgment that he was not violating the Copyright Act by posting model building codes that had been adopted by two municipalities. The nonprofit organization that held the copyright in the model building codes counterclaimed, alleging (among other things) copyright infringement. The district court granted summary judgment for the organization, and the Web site operator appealed.
Upon initial review, the U.S. Court of Appeals for the Fifth Circuit affirmed the district court. However, on rehearing en banc, the court held that the law of the municipalities was not copyrightable, so copying of the enacted code, even if based on a copyrighted model code, was not infringement. The Fifth Circuit found that when the operator reprinted only “the law” of the municipalities, he did not infringe the organization’s copyrights in its model building code. Veeck v. Southern Building Code Congress International, Inc., 293 F.3d 791 (5th Cir. 2002).
Quoting Justice Harlan’s opinion in Howell v. Miller, 91 F. 129, 137 (6th Cir. 1898), the court noted that “any person desiring to publish the statutes of a state may use any copy of such statutes to be found in any printed book.” The court emphasized that by writing and publishing model building codes, the organization had created copyrightable works, but when the model codes were enacted into law by jurisdictions, the model codes can be reproduced and distributed as the “law” of those jurisdictions. The opinion also contained an extended discussion of the role of the idea/expression dichotomy in copyright analysis.
In past years, the impact of the First Amendment on the use of trademarks in domain names has been addressed by several courts of appeal, which held that a cybersquatter does not have a First Amendment right to operate a Web site under a domain name that infringes on the plaintiff’s trademark. Indeed, this principle has become so widely accepted that although there were a number of cases involving domain name disputes and trademarks in 2002, none of the courts even addressed the possible application of a First Amendment defense. See, e.g., Harrods Ltd. v. Sixty Domain Names, 302 F.3d 214 (4th Cir. 2002); E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (5th Cir. 2002); and Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002).
Ty Inc. v. Perryman. In a case that involved the use of a company trademark in a domain name but did not raise the issue of cybersquatting, the U.S. Court of Appeals for the Seventh Circuit rejected the trademark infringement claim made by the manufacturer of Beanie Babies against an individual who sold the used beanbag stuffed animals through her Web site, www.bargainbeanies.com. Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002). Noting that “[y]ou can’t sell a branded product without using its brand name, that is, its trademark,” Judge Richard Posner wrote that the court found it “impossible to understand how [the defendant] could be thought to be blurring, tarnishing, or otherwise free riding to any significant extent on Ty’s investment in its mark.” Id. at 512.
Distinguishing the defendant from a “cybersquatter” who registers domain names for the purpose of selling them to companies that want a domain name that matches the name of their business, the court emphasized that the defendant was engaged in the aftermarket sale of the Beanie Babies as encouraged by the plaintiff’s marketing strategy. Judge Posner observed that “we do not think that by virtue of trademark law producers own their aftermarkets and can impede sellers in the aftermarket from marketing the trademarked product.” Id. at 513.
Kraft Foods Holdings, Inc. v. Helm. The producer of Velveeta cheese brought a trademark dilution action seeking a preliminary injunction against the operator of Internet Web sites that displayed sexually explicit subject matter. Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942 (N.D. Ill. 2002). The Web site operator, who called himself “King VelVeeda,” operated a Web site at www.cheesygraphics.com and also built and provided content for www.courtofporn.com. The defendant used the name “King VelVeeda” to identify content throughout the Web sites as belonging or referring to him. In addition, he offered various products (including coffee mugs and T-shirts) for sale on the sites.
After determining that Kraft had shown that its trademark was being tarnished through its association with the sites and that it was entitled to a preliminary injunction, the court considered the defendant’s claim that his use of the nickname was protected by the First Amendment. The court rejected his contention that the use of the name “King VelVeeda” was a parody of Kraft, pointing to, among other things, the defendant’s own admission that he was not parodying Kraft through the use of the nickname.
The defendant next argued that his use of the word “VelVeeda” for commercial purposes was “inextricably intertwined” with his use of “VelVeeda” in noncommercial speech. In rejecting this contention, the court noted that the defendant admitted he did not need the name “King VelVeeda” to write political or social commentary, because “‘VelVeeda’ is the source and not the object of his commentary.” The court concluded that an injunction ordering the defendant to discontinue his use of the nickname in his commercial endeavors would not prevent him from engaging in any protected free speech activities.
--Kurt Wimmer
The author wishes to thank Dan Hirsch of Covington & Burling for his assistance in the preparation of this chapter.
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