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Written Materials From Ken Carson's Recent MCLE Presentation



March 17, 1999


a. Precursors of the DMCA: The Information Infrastructure Working Group and its Green Paper and White Paper

i. The Administrative Working Group on Intellectual Property Rights was chartered in 1993, part of the Information Infrastructure Task Force formed by President Clinton.

(1) Opposition to/skepticism of leadership of the Working Group by Bruce Lehman of the Department of Commerce, a former copyright industry lobbyist.

ii. In September 1994 the Working Group issued a draft/preliminary report -- the "Green Paper" proposing changes to the copyright law to allow it to keep pace with technological changes.

(1) Add "transmissions" to the right of distribution

(2) Exclude "transmissions" from first sale doctrine

(3) Legal remedies for use of devices whose primary purpose is to circumvent technological means of copyright protection.

(4) Legal remedies for deleting or altering copyright management information.

iii. The Group's final report in 1995 was the "White Paper," a 250-page report analyzing copyright law and its application in cyberspace, and proposing changes in copyright law to accommodate new technologies.

(1) Objections to the White Paper as too copyright friendly, restricting educators, business, libraries and consumers from activities that would allow them to take advantage of digital networks.

(2) Indeed, the Digital Future Coalition was formed in response to the White Paper.

b. Conference of WIPO took place in December 1996 to revise the Berne Convention (copyright treaty) to account for digital technology.

c. Result: WIPO treaties, entered into in 1996. Ultimately, the DMCA became the United States' implementing legislation for the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaties.

i. The Copyright Treaty:

(1) Concluded on December 20, 1996. Brings under the rubric of copyright protection computer programs -- whatever the mode or form of their expression -- in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations.

(2) The Treaty grants to authors of protected work the exclusive rights of distribution, rental, and the right of communication to the public. The right of rental actually extends to certain cinematographic works and works embodied in phonograms.

(3) Obliges signatory nations to provide legal remedies against circumvention of technological measures used to exercise copyright rights; and

(4) obliges signatory nations to provide legal remedies against removal or alteration of computer management information;

(5) As of September 1998, the Treaty is not yet in force, but US is a signatory, as is the European Communities.

ii. WIPO Performances and Phonograms Treaty

(1) Same dates as Copyright Treaty

(2) Addresses rights of performers and producers of phonograms.

(3) Performers' Rights:

(a) Performers' rights to their performances fixed in phonograms, subject to exceptions and limits, are:

(i) right of reproduction

(ii) right of distribution

(iii) right of rental

(iv) right of making available

(b) Performers' rights to performances are:

(i) right of broadcasting

(ii) right of communication to the public

(iii)right of fixation

(c) Performers are granted moral rights (right to claim to be identified as the performer and to object to any distortion or mutilation of performer's reputation.)

(4) Producers rights:

(a) reproduction

(b) distribution

(c) rental

(d) making available

(5) "National treatment," or treating the nationals of other signatory nations the same as you treat your own nationals.

(6) Same provisions for legal remedies against circumvention of technological measures to exercise copyright owner's rights and against removal or alteration of copyright management information as exist in WIPO Copyright Treaty.

iii. WIPO considered a Treaty on database protection but did not pass anything. A working group was formed to investigate possible treaties on database protection.


>a. Overall, the White Paper proposed more changes, and a result more aligned with the interests of the copyright industry, than were ultimately included in the DMCA. In some instances, the White Paper was, itself, a move away from copyright owners' interests from the Green Paper.

i. For instance, the Green Paper made no provision for fair use of public libraries or schools. The White Paper makes certain fair use provisions for libraries and not-for-profit organizations, such as allowing libraries to make three copies and other copies for preservation. The DMCA includes an explicit statement that the DMCA does not affect fair use rights. In addition, it provides a specific fair use exception for non-profit organizations and educational institutions solely to determine whether or not to acquire the copyrighted work.

(1) Music library association says that the White Paper eliminated fair use rights whenever a use can, instead, be licensed.

ii. The White Paper recommends that online service providers' liability not be limited, after the Green Paper did not address the issue. The DMCA creates such limitations.

iii. The White Paper proposed that "transmission" be included in the definition of "distribution" rights, raising concerns to some that even an e-mail sent between two individuals with a portion of a copyrighted work attached would be an infringement. But the White Paper acknowledges that "clearly, not all transmissions of copyrighted works will fall within the copyright owner's exclusive distribution right."

(1) The DMCA does not add "transmission" to the definition of distribution

(2) It seems to some to be common sense that transmissions are included in distribution rights.

(3) It's only a violation to distribute "to the public." So one group of commentators say that this issue is a red herring, i.e. of course transmission is a distribution, but only distributions to the public are violations.

iv. RAM-CACHING (Temporary Copies) Some interpret the White Paper as suggesting that temporary copies made during internet browsing, stored in computer's RAM memory, were infringements. Some read it as vague, raising that possibility but also noting that the reproduction and distribution of copies by transmission may sometimes be fair use. In any event, in response, there was lobbying for an explicit provision that temporary copies made during browsing the internet not be infringements of copyright. The result is there is no DMCA provision one way or another about whether temporary copies are violations generally. There is only a provision saying that online service providers are not liable for the making of such copies.

v. The White Paper made no provisions for distance learning. The DMCA directs the Register of Copyrights to submit to Congress a plan for promoting distance education through digital technologies, presumably by de-activating copyright rights in the material used in the distance education.

vi. First sale doctrine. The Green Paper excludes transmissions from the first sale doctrine, meaning that the copyright owner may maintain control over the transfers and uses of electronic works subsequent to the first transmission of the work if that "transmission" is not a sale, which would otherwise bring it within the rubric of the first sale doctrine. The White Paper says that the first sale doctrine does not apply to transmissions. DMCA does not mention the first sale doctrine.

vii. The provisions of Title 2 regarding copyright management information, and making it a violation to utilize circumvention technology, did not change from the White Paper from the DMCA.

b. Other "exceptions" or provisions that specific activities are non-infringing, provided for in the DMCA Conference Report.

i. It is not a violation of 1201(a) and 1202 for makers of consumer electronics, telecommunications or computing products to take measures to counteract appreciable adverse effects on the authorized performance or display of works that result from some technological measure, according to the Conference Report. Conference Report encourages the industry to "vet" technological measures through an inter-industry consultative process to correct any such effects so that makers of products will not have to take these measures.

ii. CMI--Conference Report says there will be no violations of 1202 re: CMI if product adjustments, i.e. alterations or removals of CMI, are done to alleviate recurring appreciable adverse effects on authorized performance of works caused by CMI.

c. Circumvention rules designed to deal with black boxes.

d. Background on types of copyright protection technology The types of copyright protection technology available include (See 5 No. 3 Multimedia Strategist 3, Jenevra Georgini, "Online Copyright Protection Technology" (1998)):

i. "Keys" or passwords allowing access to encrypted music

ii. Embedding inaudible digital data identifying when and where music file was copied

iii. Traditional watermarks for images and invisible watermarks

iv. Service offered by software vendor using embedded data as "homing beacon" that locates copies of those images online.

v. Digital Transmission Content Protection (DTCP) technology to protect video/movies, developed by hardware manufacturers.

e. Title III re: copies made during service or repair partially overturns MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) (copy of computer program made in RAM for purposes of computer repair was an infringement because the copy is "fixed").

f. Issues re: circumvention of "technological measures:"

i. Concern that 1201(a)(2), by disallowing circumvention of control technology, does not allow for legitimately gaining access to the work under fair use.

ii. 1201(a)(1) creates consumer liability and makes consumers subject go criminal penalties. It is this provision whose effectiveness is delayed for two years while the Librarian of Congress analyzes whether certain classes of noninfringing uses will be adversely affected by the provision.

g. Webcaster provisions: I took this from 20 No. 6 Ent. L. Rep. 6, "Congress Amends Copyright Act Provisions Concerning Public Performance Licensing for Digital Transmissions of Music Recordings by Webcasters," (November, 1998).

3. Database protection not included in the DMCA: The Information Antipiracy Act

a. What the Act proposes to do

i. Creates "sweat of the brow" rights or "sweat rights" in collections of information;

ii. Offsets the holding of Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340 (1991)

(1) Compilations protected under 1976 Copyright Act if they had the requisite original selection, coordination or arrangement of information. Protections against both direct copying and rearranging. Rearranging was discouraged by courts whether or not the rearranging hurt the market for the primary work.

(2) Feist found that a telephone directory does not have such originality.

(3) Feist held that while the selection and arrangement of facts in a compilation are protected, the facts are not.

iii. Goal of the proposed law: "to stimulate the creation of more collections [of information], as well as increased dissemination to the public, and to encourage more competition among producers." H.R. Rep. No. 105-S25 at 8 (1998). To restore the incentives for information gathering.

iv. Rather than create a property right, similar to copyright, the act would establish a cause of action for misappropriation of collections of information, creating liability for:

(1) extracting or using in commerce;

(2) all or a substantial part, measured either quantitatively or qualitatively, of;

(3) a collection of information;

(4) gathered, organized or maintained through the investment of substantial monetary or other resources;

(5) causing harm to the actual or potential market for a product or service incorporating that collection of information.

(6) Provides for injunctions and treble damages

(7) There are exemptions for not-for-profit educational, scientific or research users of the database, if they do not harm the actual or potential market.

(8) Protection only available for fifteen years after the investment of resources that qualified the collection or a portion of it for protection.

(9) Exception for verification of independently-gathered information

b. Considerations for supporters and detractors

i. Act would put a lock and key on simple facts, i.e. stock exchanges could hike up their prices because the Act would provide monopoly power on the information.

ii. Science, scholarship and public debate will be squelched if access to facts is limited.

iii. No fair use exception.

iv. Act does not require originality.

c. Constitutional concerns, raised in a memo from the DOJ, Office of the Deputy Assistant Attorney General, to White House Counsel:

i. Is such protection a valid exercise of Congress's power under the Intellectual Property Clause of the Constitution, Art. I, s. 8, cl. 8?

ii. If not, does it constitute a valid exercise of Congress's power under the Commerce Clause, or does the Intellectual Property Clause preclude such Commerce Clause legislation?

iii. If not, does the First Amendment restrict such an exercise of the commerce power?

d. EU Database directive requires members of the European Union to provide: copyright protection for selection and arrangement of information; and sui generis protection for databases by January 1, 1998.

e. Action on the bill:

i. Introduced 10/9/97. Referred to House Judiciary Committee Introduced in Senate 7/10/98. Referred to Senate Committee on Judiciary.

ii. House passed DMCA with Antipiracy Act 10/12/98.

iii. 10/13/98. Referred to Senate Subcommittee on Technology, Terrorism, Government.

f. Case law re: database protection (cases since 1/1/97 dealing with databases, Feist and copyright).

i. Warren Publishing v. Microdos Data Corp., 115 F.3d 1509 (11th Cir. 1997) Directory of cable television systems -- and its system for selecting communities to include -- not sufficiently original for protection.

ii. Matthew Bender & Co., Inc. V. West Publishing Co., 158 F.3d 674 (2d Cir. 1998) Decided 11/3/98. Matthew Bender wanted to publish CD-Rom's with Supreme Court and United States Court of Appeals decisions. Sought declaratory judgment that it was not an infringement on West's reporters. Holding: the aspects of West's compilations in which it claimed copyright -- i.e. insertion of parallel citations, selection and arrangement of information about attorneys, and insertion of citations to cases cited only by name -- did not include sufficient originality to warrant copyright protection.

iii. Matthew Bender & Co., Inc. V. West Publishing Co., 158 F.3d 693 (2d Cir. 1998) Companion case to above, decided 11/3/98. "Star pagination," through which Bender intends to embed page numbers from West's reporters into its CD-Rom's of judicial opinions, was not an infringement. West's volume and page numbers are not original components of reporters and are therefore not protected.

iv. Tasini v. New York Times Co., 972 F. Supp. 804 (S.D.N.Y. 1997) Decided 8/13/97. It is NOT an infringement for New York Times and other defendants to include freelance writers' articles in electronic databases and CD-Rom's of defendant's publications. Copyright Act, section 201(c), protects publishers of collective works when they make "revisions" of their collections. Because the aspects of the publications that are preserved in the electronic databases and CD-Rom's include "one of the few defining original elements of the publishers' collective works," i.e. the selection of articles to include, the electronic "compilations" constitute "revisions." (KLC Note: Interesting issue, interesting opinion.)

4. Congress considered but House/Senate Conference did not include provision superseding L'Anza v. Quality King Distributors, No. 95-56447 (9th Cir. October 22, 1996) (Section 602(a) prohibiting importation into U.S. of copyrighted works acquired outside U.S. creates a right that is not part of section 106 rights and, therefore, is not limited by first sale doctrine).

5. AN ADDITIONAL COPYRIGHT-RELATED ACT WAS SIGNED INTO LAW OCTOBER 27, 1998 Comprised of two titles. (see Jim Jordan, "Copyright Protection Made Longer, Stronger, More Technological, 3 No. 6 Elec. Banking L. & Com. Rep. 10 (1998))

a. FAIRNESS IN MUSIC LISTENING ACT Exempts certain bars and restaurants from paying license fees for playing music under certain circumstances.

b. SONNY BONO COPYRIGHT TERM EXTENSION ACT Lengthened all copyright terms by 20 years.

Copyright SRBC
1998 up