Federal circuit v. ninth circuit: a split over the conflicting approaches to DMCA section 1201.

AuthorArthur, Robert
PositionCOMMENTS - Digital Millennium Copyright Act


Prior to opening statements in U.S.A. v. Crippen, (1) a federal criminal DMCA case, U.S. District Judge Phillip Gutierrez vented his frustration during a 30-minute tirade to prosecutors. "I really don't understand what we're doing here," he began. (2) The defendant, Matthew Crippen, was charged with two counts of violating the anti-circumvention provisions of the DMCA, facing a maximum of five years in prison for each count. The government alleged that Crippen ran a business modifying the firmware on Xbox systems to make them capable of running pirated copies of games. Crippen asserted the Betamax defense, (3) arguing that his firmware modifications were legal because they had significant non-infringing uses, such as allowing the user to run alternative software or to make backup copies of their own games. Prosecutors responded that the DMCA did not allow a defendant in a [section] 1201 action to use the defenses of traditional copyright law, such as the Betamax defense. Judge Gutierrez seemed to think (and this author agrees) that the anti-circumvention and anti-trafficking provisions in [section] 1201 are oddly disconnected from familiar copyright law and policy.

The root of Judge Gutierrez's frustration is that the DMCA's anti-circumvention provisions are in direct conflict with traditional intellectual property doctrine and public policy. Thanks to the misinterpretation of the statute, the lack of any relationship between these provisions and traditional copyright protection has allowed for absurd conclusions, bizarre limitations of fair use, and obtuse applications of the law that threaten long-standing policy goals of intellectual property law and antitrust law.

The Chamberlain line of cases provided an opportunity for the Federal Circuit to examine the balance between the DMCA's prohibition of unauthorized access and traditional copyright protection, in light of consumers' expectations regarding the products they own. Misinterpretation of the DMCA was threatening to create a dangerous new property right, the right of access, completely detached from the traditional bundle of rights in [section] 106 of the Copyright Act, resulting in two distinct copyright regimes. In Chamberlain III, the Federal Circuit countered the threat of access right theory, adding a new limitation to the scope of [section] 1201: a reasonable relation between access and the traditional protections of copyright. The Federal Circuit's reasonable relation test brought [section] 1201 of the DMCA back in harmony with the rest of the Copyright Act and its legislative intent, restoring the balance between the interests of content owners in countering the digital threat and consumers' expectations regarding the products they own.

Unfortunately, the Ninth Circuit recently rejected the Federal Circuit's reasonable relation test in MDY Industries, breathing new life into the notion that [section] 1201 creates a new right of access, distinct from the rights of traditional copyright law. Because the two holdings are completely incompatible, with the Ninth Circuit expressly rejecting the Federal Circuit's interpretation of [section] 1201, the result is a circuit split. The time is ripe for either a supreme Court review or Congressional action to determine which court got it right.

The first part of this paper discusses the original policy goals of the DMCA. In the second part, I examine the issues in Chamberlain I & II. In the third part, I discuss the dangers of creating a new property right in the DMCA, the right of access. In the fourth part, I consider how the Federal Circuit corrected this misinterpretation in Chamberlain III, adding a new limitation to [section] 1201: a reasonable relation between access and the traditional rights of copyright. In the fifth part, I propose several reasonable relationship tests. In the sixth part, I examine the Ninth Circuit's contrasting treatment of [section] 1201 inMDYIndustries. Finally, I give my conclusions.


    To protect copyright owners from the "digital threat," Congress enacted the DMCA, which created a new cause of action that prohibits unauthorized access to a copyrighted work that is protected by a technological measure. Congress wrote the DMCA in 1998 to implement two treaties adopted by the World Intellectual Property Organization (WIPO): the WIPO Copyright Treaty and the WIPO Phonograms Treaty. (4) These treaties required signing nations to enact laws providing "adequate legal protection and effective legal remedies against the circumvention of effective technological measures in connection with the exercise of their rights." (5) Existing U.S. copyright laws had already addressed most of the obligations of the WIPO treaty. However, new statutes were needed to implement the protection of the "technological measures" referred to in the treaty language that, in turn, protected copyrighted works. At about the same time, content owners were lobbying Congress for greater protection for their works to counter the "digital threat."

    The content industry's concern over the copying of digital media and the threat it posed to copyright was well-founded, at least in theory. Due to the unique nature of digital content, it can be copied as many times as desired without any loss of quality. The simultaneous rise of the Internet made the transmission of those digital copies cheap, easy, and virtually instantaneous. To the content industry, the combination of the two was frightening. In the past, copyright owners would shut down printing presses to stop illegal copying, countering the infringement one source at a time.

    However, this new digital threat was something completely different, more like an infectious disease. One pristine digital copy could be transmitted to another person, that person could copy and transmit, and so on. Very quickly, one infringing copy of a work could become thousands, even millions of infringing copies. Moreover, the strategy of attacking the source was useless against this new digital threat because the sources were distributed throughout the population. A single illegal printing press is relatively easy to find, but when the source becomes thousands of personal computers in individual living rooms, the problem becomes too large to attack in the old way.

    To rights owners, the only solution was to prevent all unauthorized digital copying completely, locking down digital content using encryption and other technological measures. However, they realized that this protection was highly vulnerable for the same reasons their content was threatened. In a digital future, only one person needs to discover a way to defeat the protection, and then this method can be transmitted rapidly through the Internet. To protect the protection, rights owners convinced Congress that new laws were needed.

    To that end, the DMCA added chapter twelve, "Copyright Protection and Management Systems," to the Copyright Act. Among the provisions is [section] 1201, (6) which made it illegal to circumvent the technological measures that protect digital content (the anti-circumvention provisions). This section also made it illegal to traffic in devices that accomplish such circumvention (the anti-trafficking provisions). At issue in this paper are the provisions in [section] 1201(a), which specifically protect "access control" measures, prohibiting both the circumvention of and the trafficking in devices used to circumvent such measures.

    The anti-circumvention provision, [section] 1201(a)(1)(A), provides that no person may "circumvent a technological protection measure" used by the copyright owner which "effectively controls access" to a copyrighted work. (7) As defined in the DMCA, a technological measure effectively controls access to a work "if the measure, in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work." (8) To circumvent such a technological measure is "to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner." (9)

    The anti-trafficking provision, [section] 1201(a)(2), prohibits manufacturing, importing, or otherwise trafficking in any means that "is primarily designed ... for the purpose of circumventing a technological measure that effectively controls access to a work ... [,] has only limited commercially significant purpose or use other than to circumvent ... [, or] is marketed ... for use in circumventing a technological measure." (10) Violation of this anti-trafficking provision led to the main cause of action in Chamberlain. Since its enactment, most DMCA cases dealing with circumvention have been anti-trafficking cases because it is much easier for plaintiffs to target a single device manufacturer or software developer rather than pursue many individual anti-circumvention actions.

    Three features of chapter twelve are noteworthy. First, [section] 1203 created a new civil cause of action--completely separate from actions for infringement elsewhere in the Copyright Act--for "any persons injured by a violation" of [section][section] 1201 or 1202.11 Damag es can include injunctive relief, impoundment of equipment, actual and statutory damages, costs, and attorney's fees. (12) Second, [section] 1204 created a new criminal offense--also separate from criminal offenses for copyright...

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