8. Digital Millennium Copyright Act

Patents / Computer Related Inventions / US Copyright Protection for Software

8.1 Copyright Management

On December 20, 1996, two new treaties relating to copyright were signed in Geneva. Both contain provisions on computer-related issues, in particular having regard to matters arising from use of the Internet. The first of the new treaties, entitled WIPO Copyright Treaty amends the Berne Convention in a number of ways. The second, entitled WIPO Performances and Phonograms Treaty, complements the Rome Convention (a convention to which the United States is not a party), although membership of the Rome Convention is not a pre-requisite to membership of the new convention. A further proposed treaty that was expected to be considered in Geneva relating to protection for matter extracted from databases was deferred for later consideration.

In order to ratify the treaties two changes were required in United States Law. These relate to the provisions requiring member states to make it unlawful either to circumvent copyright protection devices or to remove or alter copyright management information. The changes were effected by the Digital Millennium Copyright Act.

The most significant changes effected by the new law are:

1. to provide that from October 28, 2000 it shall in general be unlawful to circumvent a technological measure that effectively controls access to a protected work; [107]

2. to make it unlawful to manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that –

• is primarily designed or produced to circumvent a technological measure that effectively controls access to a work or protects a right of a copyright owner in a work protected by copyright or as a mask work;

• has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work or protects a right of a copyright owner in a work protected by copyright or as a mask work; or

• is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work or protects a right of a copyright owner in a work protected by copyright or as a mask work; [108]

and

3) to make it unlawful to provide false copyright management information or intentionally to remove or alter any copyright management information. [109]

There are a few exceptions under the first two of these provisions, for example for:

(a) law enforcement; [110]

(b) in order to carry out reverse engineering on a program that the researcher has a legitimate right to use if the reverse engineering is for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs, and that have not previously been readily available to the person engaging in the circumvention, to the extent any such acts of identification and analysis; [111]

(c) certain encryption research; [112] and

(d) if:

(i) the technological measure, or the work it protects, contains the capability of collecting or disseminating personally identifying information reflecting the online activities of a natural person who seeks to gain access to the work protected;

(ii) in the normal course of its operation, the technological measure, or the work it protects, collects or disseminates personally identifying information about the person who seeks to gain access to the work protected, without providing conspicuous notice of such collection or dissemination to such person, and without providing such person with the capability to prevent or restrict such collection or dissemination;

(iii) the act of circumvention has the sole effect of identifying and disabling the capability described in subparagraph (A), and has no other effect on the ability of any person to gain access to any work; and

(iv) the act of circumvention is carried out solely for the purpose of preventing the collection or dissemination of personally identifying information about a natural person who seeks to gain access to the work protected, and is not in violation of any other law. [113]

In addition to exposure to civil action by those who have been harmed by such unlawful acts, violation of either of these provisions for commercial advantage or private financial gain may result in fines of up to $500,000 and/or five years’ imprisonment for the first offense and fines of up to $1,000,000 and/or ten years’ imprisonment for any subsequent offense.

A number of exceptions from the law are specifically set out including circumvention of such technological measures in the course of analyzing those elements of a program as are necessary to achieve interoperability with an independently created computer program or in the course of carrying out research into encryption technology.

As from April 28, 2000, most analog videocassette recorders and camcorders made, imported or offered to the public in the United States have had to conform to automatic gain control copy control technology. Furthermore it is unlawful to manufacture, import or offer to the public most analog video cassette recorders and camcorders if they had been fitted with automatic gain control copy control technology and they had been modified so that they no longer conform to that technology.

In the case of Sony Computer Entertainment America Inc. v. GameMasters Inc.,[114] it was held that the prohibition on distribution of technologies products or services used to circumvent technological measures which control access to a system protected by copyright was breached by sale of a game “enhancer” that permitted the use of the plaintiffs PlayStation game console with games that were not authorized by the plaintiff. The enhancer overrides some of the computer logic in the system to enable players to modify the rules (i.e. to “cheat” in the game being played) and to permit the user to use the console to play games that were marketed by the plaintiff for distribution only in Japan or Europe. The games are supplied on a CD ROM, which contains encrypted data that permit the games to be played only on consoles supplied to the appropriate jurisdiction unless that encrypted data is circumvented. This is what the enhancer does and the court therefore held that sale of the enhancer was a violation of the statute.

In Universal City Studios Inc. v. Reimerdes,[115] it was held that disseminating software over the internet for the purpose of enabling those who down-loaded the software to avoid the plaintiffs’ encryption system for protecting digital versatile disks from unauthorized viewing and copying was a breach of the law. The court was not persuaded that the acts fell within the fair use exception as the defendants had pleaded since they had carried out no reverse engineering to produce their software which they had obtained from elsewhere and contrary to the defendants assertions, the software in question had neither been created nor was it being disseminated “solely to achieve interoperability between DVDs and the Linux operating system.

[107] 17 USC § 1201(a)(1).

[108] 17 USC § 1201(a)(2) and 17 USC 1202(b).

[109] 17 USC § 1202.

[110] 17 USC § 1201(e).

[111] 17 USC § 1201(f).

[112] 17 USC § 1201(g).

[113] 17 USC § 1201(i).

[114] 54 USPQ2d 1401 (N.D. Cal. 2000).

[115] 55 USPQ2d 1873 (S.D.N.Y. 2000). The decision was upheld on appeal in Universal City Studios Inc. v. Corley, 60 USPQ 1953 (2nd Cir. 2001), where the Second Circuit Court of Appeals considered in detail and rejected the defendants arguments that a broad interpretation of the Digital Millennium Copyright Act would be unconstitutional in view of the freedom of speech provisions of the First Amendment to the Constitution of the United States.

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