Reimerdes, Chamberlain, and RealDVD: the DMCA and a doctrine of nonsubstantial infringing uses.

• Author: Derderian, Michael J.
• Position: Digital Millennium Copyright Act of 1998

INTRODUCTION

On August 11, 2009, federal Judge Marilyn Hall Patel of the Northern District of California issued a memorandum and order preliminarily enjoining RealNetworks, Inc. ("Real") from manufacturing, trafficking, and distributing RealDVD, (1) a product that allows users to "rip" digital versatile discs (DVDs) to the hard drives of computers. (2) Although RealDVD provides users with a variety of functions--for instance, supplying information about a DVD's content, making available links to relevant websites, and providing protection from scratching--its principal and controversial function is to save the content of a DVD to the hard drive of a computer. This, according to Real, allows consumers to backup their personal property. (3) The product provides a limit of five software licenses, so users can play back copies of their DVDs on up to five computers on which RealDVD has been downloaded and registered to the individual's user account and license key. (4) Although Real markets its product solely for use with DVDs that a consumer owns, warning its potential users that the product is legal only if you are the owner of the to-be copied DVD, the product itself does not limit the number of times a physical DVD can be copied and allows a user to copy DVDs not owned by its user. (5)

RealDVD works by decrypting the technological security measures that are placed on a DVD by those who own the copyright to its content. (6) The principal security measure, Content Scramble System (CSS) technology, "is an encryption-based system that requires the use of appropriately configured hardware such as a DVD player or a computer DVD drive to decrypt, unscramble and play back, but not copy, motion pictures on DVDs." (7) This encryption-based system employs an algorithm configured by a set of security keys that transforms a DVD's content into "gibberish." (8) Only those devices that contain "player keys" and the CSS encryption algorithm can access the DVD's contents. (9) Hollywood smartly released its copyrighted content in digital form only after it had developed these security measures, which allowed it to successfully combat piracy, (10) Hollywood now controls the use of a DVD's content, and so it licenses decryption information for an annual fee to those DVD player manufacturers that have an interest in having their DVD players work. (11)

But Hollywood does not give away the keys to its castle: "The CSS technology creates a system whereby a movie ... may only be played back in decrypted and unscrambled form from the physical DVD and not any other source, such as a computer hard drive. This same system ensures that 'playable,' i.e., decrypted and descrambled, copies ... cannot be made." (12) Furthermore, the terms of the license include a confidentiality agreement that keeps "player keys" and other data secret. (13) With this technology in hand, the Studios began releasing movies on DVD in 1997. (14) The format quickly became popular, creating a significant source of revenue. (15)

In deciding whether to enjoin Real from taking its product to the market, Judge Patel faced two overarching issues: (1) whether Real's conduct violated the Digital Millennium Copyright Act (DMCA) (16) and (2) whether Real had breached its license agreement with the DVD Copy Control Association. (17) The latter issue concerned the CSS License Agreement signed by the parties, an agreement which made Real a licensee of CSS technology, giving to Real the information it needed to develop RealDVD. The former issue concerned a law--the DMCA--whose interpretation is currently in controversy and is the subject of this Note. (18) From Judge Patel's order and memorandum enjoining Real, an issue emerges, which can only be understood after an explication of the DMCA. Thus, Part I lays out the relevant provisions of the DMCA, followed by Part II, which presents the issue of this Note--an issue faced, considered, and ruled on by Judge Patel. Part III then describes two conflicting interpretations of the DMCA, followed by Part IV, which describes the regime in place before the DMCA was enacted. All of this background sheds light on Part V--a brief comment on Judge Patel's ruling and opinion. (19)

1. THE DMCA

   Signed into law by President Clinton in 1998, the DMCA implemented two 1996 World Intellectual Property Organization (WIPO) treaties while addressing other significant copyright-related issues in an attempt to bring U.S. copyright law "squarely into the digital age." (20) The legislation is divided into five titles, covering a range of topics from limiting the liability of online service providers for online copyright infringement to creating a new form of intellectual property protection for the design of vessel hulls. (21) In the debate leading up to the passage of the bill, most relevant were the three provisions targeted at the circumvention of technological protection measures. (22) "[A] critical focus of Congressional consideration of the legislation was the conflict between those who opposed anti-circumvention measures as inappropriate extensions of copyright and impediments to fair use and those who supported them as essential to proper protection of copyrighted materials in the digital age." (23) As with almost any bill, compromise and balance paved the way for its passing the bicameral and presentment requirements of the Constitution and becoming law. (24) The compromise--between those who opposed anticircumvention measures as extending copyright and impeding fair use and those who supported the measures as proper protection--found its expression in the three "anticircumvention" provisions of [section] 1201(a)(1), [section] 1201(a)(2), and [section] 1201(b) of Title 17 of the U.S. Code. (25)

   Section 1201(a) (1) (A) provides in part that "[n]o person shall circumvent a technological measure that effectively controls access to a work protected under this title." (26) Section 1201(a)(2), more complex, provides that

   [n]o person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that--

   (A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;

   (B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or

   (C) 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 protected under this title. (27)

   And lastly, [section] 1201(b)(1), mirroring [section] 1201(a)(2), provides that:

   [n] o person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that

   (A) is primarily designed or produced for the purpose of circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof;

   (B) has only limited commercially significant purpose or use other than to circumvent protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof; or

   (C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title in a work or a portion thereof. (28)

   Thus, [section] 1201 concerns two different categories of "anti-circumvention" prohibitions: those dealing with unauthorized access and those dealing with unauthorized copying. (29) The "true" anticircumvention provision of [section] 1201(a)(1) prohibits the act of circumventing a technological measure protecting access, (30) whereas the anticircumvention provisions of [section] 1201 (a)(2) and [section] 1201 (b) prohibit trafficking in devices that are used to circumvent a technological measure that either protects access or protects a right of a copyright owner. (31) Because of this distinction--between 1201(a)(1)'s prohibition of an act of circumvention and [section] 1201(a)(2)'s and [section] 1201(b)'s prohibition of trafficking in devices--the latter sections will be referred to as the "antitrafficking" provisions of the DMCA, although all three provisions are commonly referred to as simply "anticircumvention" provisions.

   Noticeably missing from these provisions is a fourth prohibition against the act of circumventing a technological measure that protects a right of a copyright owner. Congress intentionally excluded this prohibition in order to "assure that the public will have the continued ability to make fair use of copyrighted works." (32) The DMCA does not prohibit the act of circumventing a technological measure designed to prevent copying because the public may have the right to "copy" a copyrighted work under the fair use doctrine. (33) Inapposite, the act of gaining unauthorized access to a copyrighted work is never protected by fair use (34) and, according to Congress, is "the electronic equivalent of breaking into a locked room in order to obtain a copy of a book." (35) But Congress did not rely on this distinction and its legislative history to preserve fair use rights. Instead, Congress embodied its intent in the statute itself, more specifically in [section] 1201(c)(1), which provides that: "Nothing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use, under this title." (36) The varying interpretations of how [section] 1201(c) (1) (and the fair use doctrine) affect the meaning of the anticircumvention and antitrafficking...