B  U  L  L  E  T  I  N

of the American Society for Information Science and Technology       Vol. 30, No. 2      December/January  2004

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Copyright's Digital Dilemma Today: Fair Use or Unfair Constraints?

Part 2: The DMCA, the TEACH Act and Other E-Copying Considerations
by Lee S. Strickland

Lee S. Strickland is currently affiliated with the College of Information Studies, University of Maryland, College Park, MD; 301-405-1741; LSTRICKL@deans.umd.edu

Editors note: This article has been split into two parts. The first, published in the previous issue of the Bulletin, covered the legal controversy over electronic file sharing (www.asis.org/Bulletin/Oct-03/index.html.) This article was received for publication in August 2003.

E-copying, as we discussed in the first part of this article (Bulletin of the American Society for Information Science and Technology, v. 30 (1)), continues to be addressed by the basic rules of copyright, and new technology does not change established law. As such, fair use will not justify the reproduction in entirety of millions of copyrighted works. But exactly what are the parameters of fair use today? The 9th Circuit Court of Appeals in the long-running case of Kelly v. Arriba Soft recently provided a partial answer. Here, the owner of copyrighted photographs had sued the operator of a search engine for posting thumbnail images of the works in its search results. The trial court found fair use here on the basis that the search results were transformative and functional for a different purpose cataloging content on the Internet. But the trial court, and initially the appeals court, also found that an additional use by the defendant inline linking to and framing of full-sized images did in fact infringe upon the photographer's exclusive right to display the copyrighted work publicly and was not protected by fair use.

Some Technical Definitions

Hypertext linking a basic feature employed in the html world where a word, symbol or the actual address of content will take your browser to that content. Generally no legal issues are presented here unless one is linking to a site containing judicially or legally proscribed content (e.g., the deCSS code held to violate the DMCA or child pornography).

Deep linking a hypertext link that opens a page deep inside another site rather than the home page of that other site. These may present a legal issue if they violate the terms and conditions of a given site.

Inline linking or framing similar in functionality to regular linking but different in presentation. Here, the linked content is presented in a newly opened browser window but is framed with the basic style, graphics and advertising of the site that contained the link. This type of linking can present a variety of issues from direct copyright infringement to violations of the Lanham Act (trademark) since content belonging to an originator is being "passed off" as belonging to someone else.

Thereafter, the defendant filed a petition for rehearing and, more than a year later, the case was re
-decided on July 7, 2003. In the new opinion, the 9th Circuit re-affirmed that the use of thumbnail images in search engines is legal but withdrew the previous decision on the display of full-size images by linking and framing. The court now found that neither party had moved for summary judgment on this issue, that there was thus no basis for a decision and that the issue must be returned for trial.

The implications for information professionals today are many and include the fact that other image search engines such as Google and many other WWW operations use this technique. Does it mean that all such uses are improper? The short answer is "no" and the longer answer is that a fair use analysis is required. Here, as reported by CNETnews.com, the plaintiff's argument continues to be: "We do not agree that displaying full-size images, which were taken from another person's Website and used to sell products and services at Arriba Soft, is a fair use of that image." On the other hand, the Electronic Frontier Foundation (EFF) that had filed an amicus brief was upbeat: "Website owners can rest a bit easier about linking to copyrighted materials online. By revising its ruling, the court removed a copyright iceberg from the main shipping lanes of the World Wide Web." Perhaps that optimism is overstated. This case suggests, in my view, that linking and framing of copyrighted content is problematic and that such activities in the commercial environment may be difficult to justify under fair use. It is all a matter of risk management, and clearly this case deserves our continued attention.

E-Copying and Encryption

Having considered the basic rules that continue to be applied to the electronic age, we must continue our examination in the context of one of the most significant changes brought by the Digital Millennium Copyright Act (DMCA) the criminal and civil provisions prohibiting the circumvention of technological protection measures (TPMs). The most immediate question is: What are TPMs? They are defined as any combination of software and hardware that regulates access to electronic information and they are essentially tools (usually software-based) that are as simple as passwords or as complex as encryption. In general, the DMCA not only prohibits the manufacture of any device, or the offering of any service, primarily designed to defeat an effective TPM, but also prohibits any individual's circumvention of any TPM used by a copyright holder to restrict access to its material. It does not, however, prohibit circumvention of copying technologies provided that one has authorized access representing a Congressional determination of the appropriate scope of fair use in the digital age. What this means in the vernacular is that one may not "hack" protected digital content to gain access but may undertake "self-help" to use or make copies of legally acquired content.

Within the last two years, several important cases have served to more clearly define the DMCA. Of most significance is Universal City Studios v. Reimerdes the first major test of the DMCA. Here, a group of motion picture companies and makers of DVD copy-control technology sued alleged hackers who posted the software code to decrypt DVDs (generally known as deCSS code) on their Internet websites. At the trial level, the court upheld the constitutionality of the DMCA finding that it was a "content neutral" restriction on speech in furtherance of important governmental interests and that the speech at issue was not "purely expressive any more than the assassination of a political figure is purely a political statement." It additionally found that the posting of links was the functional equivalent of publishing the code and also barred such acts. This decision was affirmed in its entirety by the U.S. Court of Appeals for the 2nd Circuit thus confirming the constitutionality of this important provision of the DMCA while also recognizing that the use of technological means of controlling access to a copyrighted work may affect the ability to make fair uses that have been historically used and recognized.

E-Copying and Licensing

There is little doubt that many people fear that technology such as encryption and the legal protection provided by the DMCA will be used to limit access to works that are not protected by copyright expired or otherwise public domain although defenses to alleged violations in such circumstances such as copyright misuse would be available. But, in point of fact, the danger is more complex given that the technology and the legal protection of the technology through the DMCA can be used in conjunction with licensing in order to present a most formidable scheme of protection to intellectual property far in excess of that generally envisioned by the Copyright Act.

Licensing is today an inherent issue in many DMCA as well as traditional copyright matters, and it may greatly restrict or even prohibit traditional copyright entitlements including fair use. The effectiveness of this "axis of control" began to be displayed in 2000 in Jurisline v. Reed Elsevier a case that focused on extraction of public domain information from licensed content. Here, attorney David Boies of Florida presidential recount fame lost his argument that there was an "invalid copyright by contract scheme." And more recently, the Federal Circuit has continued to recognize the superiority of licenses in a decision with rather sweeping language that statutorily allowed that reverse engineering could violate shrink-wrap licenses. Specifically, the court held in Bowers v. Baystate Technologies, a case that was re-heard and re-decided in January 2003 because of widespread concerns, that even though there was no violation of copyright, the Copyright Act does not preempt contractual shrink -wrap license terms prohibiting reverse engineering, and thus plaintiff's contract claim was valid.

And licensing is also at the heart of the controversy over the Uniform Computer Information Transactions Act (UCITA) that has passed in only two states (Maryland and Virginia) and is now moribund elsewhere given growing hostility from information users. UCITA is controversial for two reasons. First, it represents a movement toward licensing of information and away from the sale of copies as traditionally understood under copyright law. Second, it would enforce all "shrink-wrap" or "click-on" agreements (termed "mass-market licenses" in UCITA) even with the most draconian, anti -consumer provisions. In sum, UCITA would effectively give an information vendor total control of the downstream use of content or product and remove most if not all rights of a user. Without UCITA, one has a broader right to contest legally many onerous provisions of a license or the license in its entirety if it was presented in a manner that did not achieve the users consent. Note, however, that even without UCITA, a party will generally be bound by their agreement and thus negotiation of license terms remains critical.

Another form of license gaining prominence is the "browse wrap" license that is displayed by a WWW site and purports to bind the viewer with terms and conditions of use. To date, "browse wrap" licenses have attempted to be enforced through a variety of legal strategies including tort claims for misappropriate or trespass to property as well as civil claims under the federal Computer Fraud and Abuse Act (CFAA) the federal anti-hacking statute and they have met with mixed legal success. For example, on trespass theories, e-Bay has won, Ticketmaster has lost and Intel has most recently won before the California Supreme Court. The issue in these claims is typically whether or not the alleged wrongful use has damaged the subject computers or imposed a significant cost on the company, and the courts have quite simply taken different views of the evidence presented.

Claims under the federal CFAA or state law equivalents have more generally met with success. Here, Internet service providers routinely take abusers to court and win, and the U.S. Court of Appeals for the 1st Circuit recently issued important judgments in EF Cultural Travel v. Zefar and Explorica. In this somewhat typical case, the plaintiff used the CFAA to move against the use of an electronic agent (a scrapper) that had combed their database for pricing information. The court focused at length on the meaning of the statute's $5000 "damage or loss" provision where "damage" is defined as "any impairment to the integrity or availability of data, a program, a system, or information" but where "loss" is not otherwise defined.

The court held that consultant fees to assess the extent, if any, of the physical damage to a website caused by the intrusion is compensable loss even if it established no physical damage or stress to the site: "As we move into an increasingly electronic world, the instances of physical damage will likely be fewer while the value to the victim of what has been stolen and the victim's costs in shoring up its security features undoubtedly will loom ever-larger. If we were to restrict the statute as appellants urge, we would flout Congress's intent by effectively permitting the CFAA to languish in the twentieth century, as violators of the Act move into the twenty first century and beyond." More recently, the 1st Circuit considered an additional aspect of the continuing litigation and held that a "lack of authorization" a key element of CFAA liability could be either explicit or implicit as expressed on the website or otherwise. This presents one of the stronger recognitions of the validity of "browse wrap" licenses to date.

The Developing DMCA: The Specter of Monopolies

Recently, an innovative effort by Lexmark to use the DMCA to prohibit the use of aftermarket printer cartridges began to raise significant concerns (Lexmark v. Static Control in the Eastern District of Kentucky). It is an effort that, if successful, could be applied to the entire spectrum of consumer and industrial products to the economic detriment of consumers.

Here are the details. Static Control sells computer chips for aftermarket printer cartridges that permit operation in Lexmark printers. In response, Lexmark brought suit under the DMCA alleging circumvention of TPMs that control access to copyrighted Lexmark software. In other words, it is alleged that Static Control's chip circumvented controls on Lexmark printers and allowed access to copyrighted Lexmark code on Lexmark printers. Now it is important to note that pre-DMCA cases had clearly allowed access to and copying of code to permit interoperability (see, for example, Sony v. Connectix). However, the allegations passed initial legal muster and resulted in the issuance of a temporary restraining order and ultimately a decision for Lexmark in June 2003.

This is not to suggest, however, that there are not substantial legal defenses including allowed reverse engineering under the DMCA, copyright misuse (i.e., a general copyright defense that there is no valid underlying copyright) and invalid shrink-wrap license. Moreover, Static Control has filed an antitrust and unfair trade practices countersuit in federal court for middle district of North Carolina (an obvious example of forum shopping) as well as making a submission to the Library of Congress for DMCA exemption under current DMCA rule-making proceedings.

The case is currently on appeal to the 6th Circuit with strong opinions on the public interest side. Rep. Boucher (D-VA) has stated that "this case illustrates the DMCA's shortcomings and potential for abuse that thwarts competition." But there are solutions. The European Union has adopted a directive that prohibits sale of any electronic product that employs Lexmark-type "killer chips." And we consider below in the technology segment some current legislative solutions pending in Congress.

The Developing DMCA: The Super-DMCA State Statutes

While much of our attention has focused on federal-level issues, the states are also presenting a forum of concern. Within the last two years, momentum has developed for the passage of so-called super -DMCA laws model legislation being pushed by the Motion Picture Association of America (MPAA) to amend statutes aimed at cable television theft to include any receipt and use of broadcasts except as expressly allowed by the provider. In addition, these statutes also prohibit the possession of a wide range of electronic equipment as well as a number of ordinary Internet activities that have legitimate purposes. In the view of many, this legislation presents a grave risk to our intellectual freedom.

More specifically, the law declares it illegal to "deliver, offer to deliver, or advertise an unlawful telecommunications access device" while "knowing or having reason to know that the devices are intended to receive decrypt, transmit, retransmit, acquire, intercept any telecommunications service without the express authority or actual consent of the telecommunications service provider." An additional problem: the sweeping language criminalizes a wide range of ordinary Internet activity including the concealment of the place of origin or destination of any communication. While the MPAA is now offering revisions (e.g., to require some specific intent for criminal liability), significant problems remain, including the lack of DMCA-style immunities and the fact that fair use is now placed entirely in the hands of electronic content providers including broadcasters. To date, versions have passed in some states (Delaware, Florida, Illinois, Maryland, Michigan, Oregon, Pennsylvania, Virginia and Wyoming), are pending in a number of other states such as, Massachusetts and Texas, and have recently been vetoed in Colorado. The best sites to track such legislation are www.eff.org and www.freedom-to-tinker.com.

E-Copying and Education

The TEACH Act of 2002, a significant legislative enactment to benefit educators, grew out of one of the little known provisions of the DMCA although the final version made no explicit expansion of protection for educational activities involving the Internet, it did mandate a study of the subject by the Copyright Office. That study was published in May 1999 (see www.loc.gov/copyright/docs/de_rprt .pdf), and the TEACH Act followed as a major expansion to the then-existing, very restrictive 110(2) of the Copyright Act that controlled distance education and was rooted in CCTV paradigm. In general, these provisions parallel the 110(1) classroom rights. As we may recall, our traditional classroom rights allow a teacher to show or perform any intellectual product related to the curriculum, regardless of the medium, in the context of mediated, face-to-face instruction in the classroom. This includes, by way of example, documents, photographs, music and audio-visual works of every kind without limits and without required permissions. The making of copies, of course, is controlled by the educational fair use rules and guideline.

In comparison, the TEACH Act allows the electronic display of most types of works, allows reach to any location (not just formal classrooms), allows reasonable storage of transmitted content and allows the digitization of analog works. But there are some important limitations on these rights. The first concerns the type of works. We can transmit the entirety of "non-dramatic literary or musical works" defined to include items such as poetry, short stories, periodical articles and music other than performed music (e.g., opera, music videos and musicals) but not audiovisual works. We can transmit "reasonable and limited portions" of any other works defined to include all audiovisual works (i.e., films and videos of any type or genre) and the dramatic musical works excluded by the first rule. And we can transmit any work that might usually be displayed in a classroom setting defined to include items such as photographs, drawings or maps. The second limitation concerns digitization. We can convert analog works to digital form to the extent that the work is not available in digital form free of technical protective measures and only to the extent that the digitized version is used only for 110 instructional purposes. This means, in essence, that we may digitally convert an analog video if there is no DVD version or the DVD versions prohibit the extraction of clips via technical measures.

There are also restrictions on who may use the authority and under what circumstances: the rights are available only to a governmental body or accredited nonprofit educational institution, only for enrolled students and only in the context of mediated (i.e., teacher-conducted) instructional activities. Moreover, any qualified institution must promulgate an effective copyright policy, preserve and communicate copyright information, and reasonably prevent copying especially with respect to students. Lastly, excluded are any materials that are specifically developed and marketed for the distance learning market, illegal copies and materials usually purchased by students such as, coursepacks and textbooks. An excellent resource is Georgia Harper's overview at www.utsystem .edu/ogc/intellectualproperty/teachact.htm. Indeed, the entire guide on copyright at the University of Texas Website is perhaps the best of its kind.

Lastly, there is the little-understood caveat that fair use rights continue to be relevant in distance education. A primary reason is that the focus of the TEACH Act is on mediated classroom-like instruction and the materials used in such circumstances not supplementary reading materials that typically constitute physical or electronic reserve systems. Thus fair use and the various guidelines for educational fair use remain very relevant.

Time Is on My Side Or Is It?

We conclude our survey of copyright developments with a brief consideration of the duration of copyright. Space does not permit a review of the pertinent legislation here, but the public domain for published works is as follow:

    Any publication before 1923 with © notice. No more recent works can be assumed to fall into the public domain until 2019. (A 1922 work would have passed into the public domain before the effective date of the 1976 Act that extended the renewal period, but a 1923 or later work has the benefit both of the 1976 and 1998 copyright term extensions.)

    Nonetheless, works published between 1923 and 1963 even with © notice are in the public domain if their copyright was not renewed, and the rate of copyright renewal was quite low. It is therefore likely that they are in the public domain; however, it is absolutely necessary to research the status of any individual work.

    Any publication before March 1989 without © notice since the amendments as a result of the Berne Convention eliminated the notice requirement that had been continued in the 1976 Copyright Act.

For information on researching copyright status: See U.S. Copyright Officer (USCO) Circular 22 available at http://www.copyright.gov/circs/circ22.pdf as well as a digital image version (not database) of the USCO Catalog of Copyright Entries at http://digital.library.upenn.edu/books/cce/.

 Please note that the rules for unpublished works are not the same. In 2003 the unpublished works in the public domain are:

  • Any work for hire created in 1882 or earlier
  • Any work by an author who died in 1932 or earlier.

A Note on Pending Legislation
H.R. 2601, the Public Domain Enhancement Act, was introduced in the current Congress by Rep. Lofgren (D-CA). It would substantially and clearly expand the public domain by requiring renewal through a simple online process and the payment of $1.00. The bill is predicated on evidence that less than 2% of such older material has any commercial value. This legislation is strongly supported by the American Library Association and other public interest organizations.

Concluding Thoughts

Between extreme overreaching of the music and video industry and equally extreme advocates of unrestricted sharing of copyright content, we are faced with a digital dilemma. Technology has provided unparalleled tools not only for creation and use but also for infringement.

The real issues and solutions are perhaps no better expressed than by recording artist Janis Ian (1967 first hit "Society's Child" and 1975 Grammy award-winning "At Seventeen") in two widely circulated articles. The issues? First, resistance to change a new technology will always be opposed by an entrenched industry be it media, medicine or missile technology. We saw this with the contest over the VCR when Jack Valenti of the MPAA testified before Congress that the VCR was to the movie industry what the Boston Strangler was to a woman alone at night. Yet today, video and DVD sales bring more profit to the industry than movies. It is always more comfortable and safe to maintain current paradigms than consider new business plans, new technology and new legal schemes. And second, avarice the industry is protecting the industry and not artists and certainly not the public interest. Are there answers? The value presented by many DVDs offer an example, as do some of the new music download services at reasonable price. Overly expensive and highly restrictive services where the DRM terms prohibit migration to new devices and where the objective is not customer service but customer extortion will not win in the long run.

Words from Janis Ian: See "The Internet Debacle: An Alternative View" published in Performing Songwriters Magazine, May 2002, and available online at www.janisian.com/article-internet_debacle.html and a subsequent article entitled "Fallout" available online at www.janisian.com/article-fallout.html.

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