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Special project: Internet Law   Copyright Law     • Introduction     • Issues & short answers     • Previous state of the law     • Discussion       • The DMCA       • Linking       • Framing       • Digital Music     • Future of the Law     • Authorities Cited

Surfers and Beach Owners: The Application of Copyright Law to the Internet IV. Discussion A. The Digital Millennium Copyright Act The DMCA and its roots The DMCA, enacted on October 28, 1998, attempts to adapt copyright law to the new medium of the Internet. The executive summary of the act states that it constitutes "the foundation of an effort by Congress to implement United States treaty obligations and to move the nation's copyright law into the digital age." Specifically, the DMCA addressed a number of issues by: creating a digital first sale doctrine; creating of an exemption for the making of certain temporary incidental copies; and expanding the previously existing archival copying exemption for computer programs. Treaties of the World Intellectual Property Organization ("WIPO") prompted enactment of the DMCA. In order to comply with WIPO obligations, Congress enacted prohibitions against the circumvention of technological protection measures employed by copyright owners, and against the removal or alteration of copyright management information. The DMCA also incorporated the Online Copyright Infringement Liability Limitation Act ("OCILLA") into US law, providing a safe harbor that significantly limits the liability of ISPs for copyright infringement. Title I of the DMCA: Prohibitions against the circumvention of technological protection measures Title I of the DMCA adds two new violations to the Copyright Act. The first prohibits the circumvention of technological measures used by copyright owners to protect their works; the second prohibits tampering with copyright management information and adds civil remedies and criminal penalties for violating the prohibitions. Section 103 of the DMCA adds a new chapter 12 to the Copyright Act that implements an obligation to provide adequate protection against circumvention of technological measures used by copyright owners to protect their works. Section 1201 prohibits circumvention of technological measures that effectively control access to a copyrighted work. It also prohibits, in certain circumstances, the manufacture or distribution of technologies, products, and services used to circumvent technological measures that control access. Section 1201(a)(2) lists those devices that fall within its ambit: (1) devices primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access; (2) devices that have only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access; and (3) devices marketed for use in circumventing a technological measure that effectively controls access. Savings clauses and exceptions Section 1201 contains savings clauses and exceptions. Section 1201(c)(1) proclaims that nothing in § 1201 shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use. Section 1201(c)(2) adds that nothing in the section shall enlarge or diminish vicarious or contributory liability for copyright infringement. In other words, while the DMCA adds a new chapter to the Copyright Act that addresses specific concerns about the Internet as a new medium, it purports to leave undisturbed the pre-existing copyright framework for rights accorded to copyright owners and available causes of action for infringement claims. Prohibitions in § 1201 are subject to a number of exceptions. Law enforcement, intelligence, and other governmental activities are exempted from the operation of the entire section. Section 1201(a)(1)(B)-(E) allows for an ongoing administrative rule-making proceeding to evaluate the impact of the prohibition against the act of circumvention. Such a prohibition does not take effect for two years from the enactment of the DMCA. Once the prohibition takes effect, it will be subject to exceptions for users of a particular class of work, if the users are, or are likely to be, adversely affected by the prohibition. Six additional exemptions exist: (1) an exemption for nonprofit libraries, archives, and educational institutions; (2) an exemption for reverse engineering (a process the sole purpose of which is to identify and analyze those elements of the program that are necessary to achieve the interoperability of an independently created computer program with other programs); (3) an exemption for encryption research (activities necessary to identify and analyze the flaws of scrambling and descrambling information using algorithms applied to copyrighted works); (4) an exemption for protection of minors; (5) an exemption for personal privacy (permitting circumvention when the technological measure, or work it protects, is capable of collecting or disseminating personally identifying information about the online activities of a natural person); and (6) an exemption for security testing (testing the security of a computer, computer system, or computer network, with the authorization of the owner/operator). Title I of the DMCA: Prohibitions against the removal or alteration of copyright management information Title I of the DMCA protects the integrity of copyright management information ("CMI"). CMI is defined as: information about (1) the work; (2) the author; (3) the copyright owner; and in certain cases, (4) the performer, (5) the writer or director of the work, as well as (6) the terms and conditions for use of work, and such other information that (7) the Register of Copyrights may prescribe by regulation. Section 1202(a) prohibits the knowing supply or distribution of false CMI, if done with intent to induce, enable, facilitate or conceal infringement. Section 1202(b) bars the intentional removal or alteration of CMI, without authority, as well as the dissemination of CMI or copies of works, with knowledge that the CMI has been removed or altered without authority. Exceptions Section 1202 includes a general exemption for law enforcement, intelligence and other governmental activities. The section also limits the liability of broadcast stations and cable systems if there is no intent to infringe. Title II of the DMCA: OCILLA's safe harbor for ISPs Title II of the DMCA adds § 512 to the Copyright Act, which creates new limitations on direct, contributory or vicarious liability for copyright infringement by ISPs. The limitations are based on the following four categories of ISP conduct: (1) transitory digital network communications; (2) system caching; (3) storage of information on systems or networks at directions of users; and (4) information location tools. Each limitation places a bar on monetary damages, and restricts availability of injunctive relief in various respects, and is severable and distinct. The failure of an ISP to qualify for any of the limitations in § 512 does not necessarily make it liable for copyright infringement. The copyright owner has the burden of showing that the provider has infringed, and even then, the provider may still raise such defenses as fair use. Section 512 defines those ISPs and ISP functions shielded by its provisions. In order to invoke the limitation based on transitory digital network communications, the ISP must be an "an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by user, of material of the user's choosing, without modification to the content of the material as sent or received." In order to invoke the other limitations, the ISP must be "a provider of online services or network access, or the operator of facilities therefor." In addition, an ISP must meet two overall conditions: it must adopt and reasonably implement a policy of terminating in appropriate circumstances the accounts of subscribers who are repeat infringers; and it must accommodate and not interfere with standard technical measures. The DMCA's potential impact on case law As the DMCA's enactment is still recent there is relatively little case law interpreting its key provisions. Given their importance decisions should not be long in coming. [index] B. Linking A link is an embedded electronic address on one a page served by site (hereinafter, the "original site") that points to another web location (hereinafter, the "linked site"). The act of linking presents potential copyright infringement issues. A link pointing to a site containing infringing material may cause further infringing copies to occur when the user reaches the site and accesses the infringing material. Moreover, even if the material on the distribution site is not in itself infringing, the reproduction that could occur may not be authorized in the frequent case where the link was established without the explicit permission of the owner of the material on the destination site. Potential copyright infringement via linking: direct and secondary liability A link may potentially generate an unauthorized access and transmission of the destination material, violating such exclusive rights as reproduction, distribution and display. A link may also create an unauthorized derivative work, violating that exclusive right. There are two views: On the one hand, one could argue that the material on the linked site is neither altered by the link nor incorporated into the original site, and thus no derivative work has been created. On the other hand, one could treat a website as a virtual collective work with links producing incorporation of linked material into that collective work. If the linked site material enhances the value of the original site, the linked site owner might argue that the original site is based upon the linked site, therefore constituting a derivative work. In addition to issues of direct infringement, if the linked site contains infringing material, the link could give rise to secondary liability of the original site, subject, however, to the limitations of § 512 of the Copyright Act. The fair use defense Where website owners have not indicated otherwise authority to link may be implied, on a theory that by placing material on the Web the copyright holders have indicated a desire for their material to be disseminated as widely as possible to the public. Fair use is a second possible defense. Implied permission can presumably be negated by clear indications to the contrary and linked site owners can, in some cases, argue that links cause such harm as should defeat a fair use defense. Links can cause harm in several ways: nonconsensual links may result in burdensome amounts of traffic; or, if the original site is somehow undesirable to the linked site, such linking might diminish the commercial value of the copyrighted material on the linked site. Case law A case from Scotland, holding that headlines from a news website could be considered copyrightable literary works, exemplifies how a link can cause harm and thus infringement. The defendant, Shetland News, took verbatim the headlines from plaintiff Shetland Times' website and placed them on the defendant's website to allow their users to follow links to the full text of plaintiff's article without first having to view plaintiff's front page. This shortcut decreased plaintiff's ability to sell advertising on its front page because Internet users who reached plaintiff's articles through defendant's links did not see the ads. The parties subsequently reached a settlement. Under U.S. law, a collection of headlines might be copyrightable as a compilation. Thus, it is likely the defendant's verbatim copying of a collection of plaintiff's headlines from a single issue of plaintiff's newspaper could constitute infringement. However, there are valid arguments on both sides: Defendant could argue that linking to these headlines was a fair use. In arguing a fair use defense, the defendant could argue that the purpose and character of its use was news reporting and that the nature of the copyrighted work was fact. Moreover, the defendant could argue that it only copied individual headlines composed of minimal words. In rebuttal, the plaintiff might argue that the commercial harm to its advertising revenues blocks the fair use defense. Another series of linking infringement cases involves Ticketmaster. In Ticketmaster Corp. v. Microsoft Corp., No. 97 Civ. 3055 (C.D. Cal. filed Apr. 28, 1997), Ticketmaster brought an action against Microsoft based on links from Microsoft's "Seattle Sidewalk" website to Ticketmaster's website.Microsoft had placed links on the Seattle Sidewalk site to the Ticketmaster site so that users could purchase tickets online. According to Ticketmaster, Microsoft had established links that led to interior pages of the Ticketmaster site - rather than to the home page - without Ticketmaster's permission. Ticketmaster asserted a claim of copyright infringement. Arguing that in creating the links, Microsoft copied onto its own computers the copyrighted contents of Ticketmaster's website and, in operating the links, Microsoft was reproducing, publicly distributing, and displaying without permission Ticketmaster's copyrighted website material. Microsoft asserted several defenses, including that: Ticketmaster assumed the risk that others would use its name and URLs; Ticketmaster was estopped from complaining about Microsoft's link because it encouraged users to seek out its website and refer others to the site; and Microsoft's presentation of information about Ticketmaster on its Seattle Sidewalk site was commercial speech protected by the First Amendment. The parties settled their dispute in 1999 on terms that are confidential. Ticketmaster has revealed that Microsoft agreed to cease its practice of linking to pages deep within Ticketmaster's website. Microsoft's links now point to Ticketmaster's home page, where advertisers have purchased screen real estate. Ticketmaster Corp. v. Tickets.com, Inc., No. CV99-7654-HLH, 2000 U.S. Dist. LEXIS 12987 (C.D. Cal. Aug. 19, 2000) is another case in which Ticketmaster filed suit for alleged infringing linking activity by a competitor. In contrast to the earlier case, however, this decision addressed the defendant's fair use defense. The court ruled that the only activity constituting possible copyright infringement was the copying of Ticketmaster's webpages to a local server for extraction of the information they contained. By holding that it was necessary to copy the electronic signals temporarily on the copying computer's RAM in order to extract the factual data present, the court ruled that Tickets.com's intermediate copying of Ticketmaster's website material to obtain unprotected factual data constituted permissible fair use. With regard to linking, the court ruled that the links did not create copies and therefore did not violate copyright law. Courts tend to separate the activity of non-infringing linking from other aspects of a plaintiff's potential copyright infringement claim. The court in Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000) went so far as to imply the possible chilling effect of a rule resting liability on Internet links. In that case, major motion picture studios brought suit against a defendant for posting software on its website that decoded DVD copy protection encryption technology. Defendant's software facilitated copyright infringement by end users who downloaded the program. While defendant had withdrawn the software from its website, it continued to provide links to other sites offering the software. Though ruling that injunctive relief required clear and convincing evidence that the defendants created links to disseminate technology they knew could not be lawfully offered, the court granted the injunction. The court in Bernstein v. J.C. Penney Inc., 50 U.S.P.Q.2d 1063 (C.D. Cal. 1998) discussed the implications of multiple linking. A photographer brought a copyright infringement action against J.C. Penney based on an advertisement on J.C. Penney's website that contained a link to an archive that contained one of the photographer's photographs. Defendant advanced several arguments. First, it argued that a company whose product is merely displayed on another entity's website cannot be held liable for any infringement by the website's author. Second, the defendant argued that linking cannot constitute direct infringement because the server of the linking website does not copy or otherwise process the content of the linked-to site. Finally, it argued that multiple linking cannot constitute contributory infringement because: (1) net users' viewing of material at issue is not infringing and thus there was no direct infringement; (2) linking is capable of substantial non-infringing use and thus cannot support a claim for contributory infringement; and (3) multiple linking does not constitute substantial participation in any infringement in which the linking website does not mention the fact that net users could, by following the links, find infringing material on another website. The court granted defendant's motion to dismiss for failure to state a claim. In Los Angeles Times et al. v. FreeRepublic.com, 4 ILR (P&F) 112, No. 98-7840 (AJW) (S.D. Cal. Nov. 8, 1999) the court suggested that direct linking to internal pages of websites is a permissible alternative to copying online materials. Several large newspapers sued FreeRepublic, a discussion-oriented website that copied and posted articles from plaintiffs' subscription-based websites. The court found that fair use did not protect a website that copied verbatim news stories. However, the court recommended direct linking to the desired articles as a potential solution to the possible copyright infringement problem. Thus, courts are in general agreement that the activity of linking in and of itself does not give rise to copyright infringement liability. Moreover, current case law suggests that linking will not constitute direct infringement if the server of the linking website does not copy or otherwise process the content of the linked-to site. It remains to be seen whether courts will further distinguish linking from deep linking. [index] C. Framing Framing allows website creators to incorporate content from remote sites wholesale into pages served by their own websites, allowing viewers of the web page to view that content without leaving the original page. Thus, by linking a user to the content of another website, the content from the linked site is displayed within a window in a parge from the original site. The content of the original site surrounds the contents brought in from the linked site. Potential copyright infringement liability for framing One of the first cases to deal with possible copyright infringement liability arising from the activity of framing was Washington Post Co. v. TotalNews, Inc., No. 97 Civ. 1190 (S.D.N.Y. filed Feb. 22, 1997). Plaintiffs were several news corporations that published in electronic format; defendants maintained a website, TotalNews, that made a variety of news sources available at a single site. The home page consisted of the totalnews.com URL at the top, a rectangular column in the left margin, and advertising sold by defendants at the bottom. A news window in the right center portion of the screen linked to several of the plaintiffs' websites. Clicking on the links would cause material from the plaintiffs' websites to be displayed in the news window, within the TotalNews "frame." The user was continually exposed to the advertising contained within the TotalNews frame. Plaintiffs claimed that TotalNews republished plaintiffs' material on its own site and thereby infringed on plaintiff's copyright. They also argued that defendants substantially reduced the incentive for plaintiffs to maintain their own websites. The case settled, with the defendants agreeing to refrain from any direct framing of the plaintiffs' websites. Plaintiffs agreed to allow defendants to link to the sites, but only through text-based no-frames links. Similarly, the court in Futuredontics v. Applied Anagramics, Inc., 45 U.S.P.Q.2d (BNA) 2005 (C.D. Cal. 1998) held defendant liable for infringement on the ground that defendant created an unauthorized derivative work through framing. Futuredontics, an operation that ran a dental referral business through its website, filed a complaint against Applied Anagramics, alleging that defendant's pages framed material from plaintiff's website. The framing of pages from Applied Anagramics' website displayed plaintiff's material, yet also included defendant's logo, information on defendant, and links to defendant's other webpages. Plaintiff alleged that defendant's framing created an unauthorized derivative work. Defendant argued that plaintiff's claim should be dismissed because the frame merely provided a "lens" through which users could view the information plaintiff provided. The court held that plaintiff's claim sufficiently alleged copyright infringement based on the creation of an unauthorized derivative work. Hard Rock Café Int'l (USA), Inc. v. Morton, No. 97 Civ. 9483, 1999 U.S. Dist. LEXIS 8340 (S.D.N.Y. June 2, 1999), though not a copyright case, dealt with framing in the analogous context of trademark infringement. Hard Rock brought an action for breach of contract and trademark dilution and infringement. Defendant was granted a license to use the Hard Rock Hotel and Casino trademarks for certain limited purposes. Defendant's website showed the Hard Rock Hotel logo framing links to a third party site where users could purchase CDs. The court concluded that defendant violated his license by selling CDs using the Hard Rock Hotel logo since the framing links might deceive users regarding the origin of the linked content. In sum, courts tend to find infringement in cases that involve framing. In doing so they give a variety of reasons; courts have found copyright infringement when it has concluded that the framed links might deceive users as to the origin of the linked content or that the framed links have created an unauthorized derivative work. Courts recommend text-based, no-frames links as an alternative that will not give rise to copyright infringement liability. [index] D. Digital Music Regulation Many suits have recently arisen regarding the liability of websites that index, post links to, or actually post, music content. Publishing companies and their associations have filed a variety of suits against alleged infringers for copying commercial albums without authorization. Potential infringement liability for users and providers: the Napster case The most publicized case in the recent line of litigation regarding the regulation of digital music dissemination over the Internet is A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). Napster's website enabled users to download software to their individual computers that, once installed, allowed the user to access the Napster system through registration. A registered user listed available MP3 files stored in his or her computer's hard drive for others to access. While the content of the user's shared MP3 files remained on the user's computer, the user's MP3 file names became a part of the collective directory of files available for transfer during the time the user was logged onto the Napster system. To transfer a copy of the contents of a requested MP3 file, the requesting user's computer established a connection with the host user and downloads a copy of the contents of the MP3 file over the Internet. Record companies sued Napster, alleging contributory and vicarious copyright infringement. In July 2000, the Northern District of California granted the plaintiffs' motion for a preliminary injunction, modified somewhat by a later opinion, ruling that Napster was not entitled to the safe harbor provisions of Title II of the DMCA. Napster sought a stay of the injunction from the Ninth Circuit, which was granted. The Ninth Circuit held that, while the district court correctly recognized that a preliminary injunction was required, the injunction was overbroad because it placed on Napster the entire burden of ensuring that no "copying, downloading, uploading, transmitting, or distributing" of plaintiffs' works occurred on the system. The Court of Appeals placed on plaintiffs the burden of providing notice to Napster of copyrighted works and files before Napster had the duty to disable access to the offending content. However, Napster still bore the burden of policing the system. Because the users named the files, such policing was itself no small burden. The Ninth Circuit court remanded the case to the district court for injunction modification. In commenting on the application of the DMCA, the Ninth Circuit court held that it need not accept a blanket conclusion that § 512 of the DMCA will never protect secondary infringers. It opined that Napster's potential liability for contributory and vicarious infringement did not render the DMCA inapplicable per se. The court further held that plaintiffs raised serious questions regarding Napster's ability to qualify for ISP immunity under § 512(d). On remand, the district court preliminarily enjoined Napster from engaging in, or facilitating others in, copying, downloading, uploading, transmitting, or distributing copyrighted sound recordings. The district court also ordered plaintiffs to provide notice to Napster of their copyrighted sound recordings by providing the names of files available on the Napster system containing such work. Potential infringement liability for users and providers: other cases In UMG Recordings, Inc. v. MP3.Com, Inc. 92 F. Supp. 2d 349 (S.D.N.Y. 2000), the court granted summary judgment in favor of the recording industry against the defendant's creation of an online MP3 library by copying commercial albums without authorization. The court rejected defendant's fair use contention that its service was the "functional equivalent" of storing its subscribers' music collections. In Arista Records, Inc. v. MP3Board, Inc., No. 00-20606 (N.D. Cal. June 2, 2000) a major record label filed a copyright infringement action against MP3Board.Unlike Napster, MP3Board indexed and posted links to other sites containing music content. Three weeks prior to the Arista action, MP3Board filed an action against the Recording Industry Association of America ("RIAA") seeking a declaratory judgment that the links on its site were permissible. The S.D.N.Y. action was pending as of March, 2002. While each of these music file sharing systems is unique, courts appear inclined to find some infringement liability, particularly if the system constitutes copying copyright-protected material from commercial albums. [index] next