UNITED STATES DISTRICT COURT
AT LEXINGTON
CIVIL ACTION NO.
02-571-KSF
vs.
STATIC CONTROL
COMPONENTS, INC. DEFENDANT
BRIEF AMICUS CURIAE OF LAW PROFESSORS
* * * * * * * *
The undersigned are law professors specializing in the
field of copyright, intellectual property and antitrust law. Since the passage of the Digital Millennium
Copyright Act in 1998, many of us have expressed concerns that the
anticircumvention provisions of that law, and particularly the new right with
respect to circumvention of access controls in Section 1201(a), 17 U.S.C. §
1201(a) (2002), might be invoked to thwart activities that otherwise are and
should be deemed legitimate conduct. It
is our view that the above-captioned case presents an instance of such
potential misuse.
Before and since its enactment, Section 1201(a) has
been the subject of close scrutiny and intense controversy. Congress’ express purpose in adopting
Section 1201(a), as all the anticircumvention provisions of the DMCA, was to
promote electronic commerce in copyrighted works as distributed in digital
format, by protecting copyrighted works against acts of piracy – i.e.,
the use and distribution of “black boxes” that undo certain types of
technological protection measures and enable the infringing commercial
distribution and duplication of copyrighted works in an unprotected form.
The impetus for the DMCA arose initially from a Report
by the Information Infrastructure Task Force Working Group on Intellectual
Property Rights, which had recommended adoption of a like provision as 17
U.S.C. § 1201:
No
person shall import, manufacture or distribute any device, product, or
component incorporated into a device or product, or offer or perform any
service, the primary purpose or effect of which is to avoid, bypass, remove,
deactivate, or otherwise circumvent, without the authority of the copyright
owner or the law, any process, treatment, mechanism or system which prevents or
inhibits the violation of any of the exclusive rights of the copyright owner
under section 106.
“Intellectual Property and the National Information
Infrastructure,” the Report of the Working Group on Intellectual Property
Rights, Appendix 1 at 6 (Sept. 1995).
The United States advocated adoption of such protections against
circumvention of technological protection measures during the then-ongoing
treaty negotiations before the World Intellectual Property Organization
(“WIPO”). In December 1996, the WIPO
Copyright Treaty incorporated as Article 11 a provision entitled “Obligations
concerning Protection Measures”:
Contracting
Parties shall provide adequate legal protection and effective legal remedies
against the circumvention of effective technological measures that are used by
authors in connection with the exercise of their rights under this Treaty or
the Berne Convention and that restrict acts, in respect of their works, which
are not authorized by the authors concerned or permitted by law.
Beginning
in 1997, Congress began to consider legislation to implement in our domestic
law this provision of the WIPO Copyright Treaty. Over the nearly two-year course of its deliberations, Congress
received thousands of pages of testimony from copyright industries, educational
and library institutions, public interests and private industries concerning
the bills that would come to be known as the Digital Millennium Copyright
Act. Positions for and against the DMCA
were equally passionate, reflecting the unprecedented nature of the protections
being sought, and the uncertain potential consequences of such provisions upon
technological progress and the public good.
The Commerce Committee of the House of Representatives recognized the
potential for the abuse of Section 1201(a) to thwart lawful activities. In response, Congress delayed for two years
the effective date of Section 1201(a), and adopted in Section 1201(a)(1)(B) an
additional safeguard procedure whereby the Copyright Office, pursuant to a
triennial review, could exempt from the anticircumvention proscriptions of
Section 1201(a)(1) certain classes of works where technological protection
measures had impeded lawful uses.[1] Congress further exempted certain specific
categories of circumvention activities from the Section 1201(a) prohibitions,
including in Section 1201(f) reverse engineering activities for the purpose of
facilitating interoperability between computer programs.
Notably,
throughout these deliberations over the DMCA, the focus of Congress and all
witnesses before it was upon use of Section 1201(a) and the DMCA as a whole to
promote electronic commerce in copyrighted works.[2] We find no suggestion anywhere in the
legislative history that Congress considered, no less intended, Section 1201(a)
to apply to the type of computer program at issue in the Lexmark complaint.
The few cases brought to date under the DMCA have
produced mixed results. But however
controversial these cases have been, the claims have borne some relationship to
the typical scenario envisioned under the DMCA. Each involved the circumvention of a technological protection
measure applied to prevent the reproduction and redistribution of an
independently marketed, non-functional copyrighted work, e.g., streamed sound recordings in Real
Networks v. Streambox,[3] motion
pictures distributed on DVD in Universal Studios v. Reimerdes,[4]
computer games in Sony Computer Entertainment v. Gamemasters[5]
and electronic books in United States v. Elcomsoft.[6]
From the face of the Lexmark Complaint, it
appears that the allegations in this case are novel, to say the least, and lie
beyond the scope of the scenario envisioned by Congress under the DMCA. Here, the object of the technological
protection measure is not to prevent piracy of copyrighted works, but instead
to protect a market for noncopyrighted consumable goods (lower-priced toner
cartridges). Thus, this case presents an
important policy question heretofore not addressed by any court, concerning the
purpose and application of the DMCA. In
our view, application of the DMCA to a claim of this nature would constitute a
startling and unwarranted expansion of the scope of the DMCA and Section
1201(a). If Section 1201(a) could be
applied to such functional software, Section 1201(a) could be susceptible to
widespread abuses across a plethora of industries. For example, could not Section 1201(a), so interpreted, enable
automobile manufacturers to prevent competitors from selling replacement oil
filters, or tires, that did not have a compatible semiconductor chip? Or photocopy machine manufacturers to
prevent use of paper that does not bear the correct watermark? Or computer floppy disks that do not have an
authenticating chip indicating that it was made by the manufacturer of the
floppy drive? In the context of
traditional copyright law, such efforts to extend the reach of the copyright to
protect non-copyrighted articles would most assuredly be deemed copyright
misuse, and it simply cannot be that Congress intended to condone similar
claims under Section 1201(a).[7] We therefore respectfully submit that the
allegations of the complaint merit careful scrutiny as to whether the potent
proscriptions of the DMCA should be applied to the claims at issue in this
case.
The issues presented in this case are novel and
important in another sense. Until now,
no cases under the DMCA have interpreted the scope of permissible reverse engineering
activities for the purpose of achieving interoperability. Reverse engineering activities are central
to the research and development of virtually all modern industries, from
“after-market” replacement auto parts manufacturers to computer software and
game developers, and are economically vital to the advancement of technology
and the promotion of competition. Court
decisions, such as the Ninth Circuit cases of Sega v. Accolade[8]
and Sony Computer Entertainment v. Connectix,[9] consistently
have upheld reverse engineering as lawful under copyright law and the fair use
doctrine. Any decision applying the
DMCA in this case could have a substantial and chilling effect on reverse
engineering across a broad spectrum of industries, encouraging litigation under
the DMCA to prevent competition, and thus discouraging innovation.
We therefore respectfully ask this Court to consider
very carefully the potential ramifications of applying the DMCA to a case of
this nature. In our view, on its face
the Complaint does not present the type of case envisioned by Congress to be
covered by the DMCA. Should the Court
nevertheless determine to address the DMCA claims, we would ask the Court to be
mindful of the potential consequences of any decision in this matter for a variety
of industries and the public good.
Respectfully
submitted,
January 31, 2003
on behalf of
(institutional affiliations provided for
identification purposes only)
[1] See Notice of Inquiry, Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies, 67 Fed. Reg. 63578 (October 15, 2002).
[2] “[The treaties] require two technological adjuncts to the copyright law, intended to ensure a thriving electronic marketplace for copyrighted works on the Internet.” Report of the Committee on the Judiciary, H.R. Rep. No. 105-551 Part 1, 105th Cong. 2d Sess. at 10-11 (May 22, 1998); “H.R. 2281 is one of the most important pieces of legislation affecting electronic commerce that the 105th Congress will consider. It establishes a wide range of rules that will govern not only copyright owners in the marketplace for electronic commerce, but also consumers, manufacturers, libraries, educators, and on-line service providers. … It defines whether consumers may engage in certain conduct, or use certain devices, in the course of transacting electronic commerce.” Report of the Committee on Commerce, H.R. Rep. No. 105-551 Part 2, 105th Cong. 2d Sess. at 22 (July 22, 1998); “The legislation implementing the treaties, Title I of this bill, provides this protection and creates the legal platform for launching the global digital online marketplace for copyrighted works.” S. Rep. No. 105-190, 105th Cong. 2d Sess. at 2 (May 11, 1998).
[3] 2000 U.S. Dist. LEXIS 1889 (W.D. Wash. 2000).
[4] 273 F.3d 429 (2d Cir. 2001).
[5] 87 F. Supp. 2d 976 (N.D. Cal. 1999)
[6] See Lisa Bowman, “ElcomSoft verdict: Not guilty,” http://news.com.com/2100-1023-978176.html (Dec. 17, 2002).
[7]
See Dan L. Burk, AntiCircumvention Misuse, 48 UCLA L. Rev. __ (forthcoming
2003), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=320961
[8] 977 F.2d 1510 (9th Cir. 1993).
[9] 203 F.3d 596 (9th Cir. 2000).