A surprisingly large number of people in my senior-level computer science class had never heard of the DMCA. If you are guilty of this crime of ignorance, it is imperative that you educate yourself on this topic one way or another. Disclaimers: I have given money to EFF, a party involved in this debate. I do not have a law degree. Nevertheless, I am confident in my analysis.

Problem

How have the United States’ Digital Millennium Copyright Act (DMCA) and related court cases affected intellectual property since that law was enacted in 1998? Has the act helped or hindered modern innovation and the internet?

Introduction

Long, long ago, the delegates to the Philadelphia Convention wrote in the constitution: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Thus is the ultimate basis for the copyright law under question (Delegates to the Philadelphia Convention, 1787). Its writers had no idea of the technological changes yet to come, nor the direction that copyright law would eventually take.

The creation of the DMCA was initially inspired by copyright holders that felt that their works were not sufficiently protected from new, developing and future technologies by existing laws and court rulings. This initially took the form of a white paper published in September 1995, Intellectual Property and the National Information Infrastructure, by a group led by Bruce Lehman, who was the Commissioner of the United States Patent and Trademark Office (Robinson, 2008).

In particular, it was feared that content owners, creators, and distributors would “be willing to put their interests at risk” if systems were not available for them to enforce the conditions under which their content is available. To this end, he proposed that a section be added to the United States’ copyright law that prohibits the circumvention of access controls (Lehman, 2005). There was certainly some dissent from this view among the legal scholars of the time (Boyle, 1995), and some suggestion that Lehman was acting solely on the behalf of content providers such as Disney and CBS (Rothman, 1996).

In 1996, the Clinton administration (represented by Bruce Lehman) brought this white paper to the World Intellectual Property Organization (WIPO), a United Nations agency created in 1967 to protect intellectual property internationally. The white paper served as a central basis for the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, both signed in 1996 (Robinson, 2008) and designed to standardize copyright protection internationally and protect copyright from technology.

These treaties were subsequently enacted by the “WIPO Copyright and Performances and Phonograms Treaties Implementation Act,” also known as Title I of the DMCA. It expands copyright protection to any work created in a country that has signed a copyright treaty (of which there are several) which the United States has also signed (United States Copyright Office, 1998). It expands copyright protection to computer programs and databases. Most notably, it includes language (now §1201 through §1205 of US Copyright Law) known as the “anti-circumvention provisions” (United States Government Printing Office, 2008). This law prevents the creation or sale of programs or devices that circumvent technological restrictions that copyright holders include in their product (Chilling Effects Clearinghouse, Anticircumvention, n.d.). In particular, Section 103 (17 U.S.C. §1201(a)(1)) of the DMCA states:

No person shall circumvent a technological measure that effectively controls access to a work protected under this title

17 U.S.C. §1201(a)(3) clarifies this (United States Government Printing Office, 2008):

(3) As used in this subsection—
(A) to “circumvent a technological measure” means 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; and
(B) 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.

When consumers purchase a product, they have various rights, most of them established by the “First Sale Doctrine.” For example, a consumer has a presumed right in the United States to view, trade, rent and lend a product such as a DVD or CD. The issue is murkier with software as companies have tried to establish that consumers are sold a license to access the work instead of being sold an actual copy of the work, but courts have firmly disagreed with them on that issue, even when the EULA specifically prohibits resale (Timothy S. Vernor v. Autodesk, Inc. 2008).

The law is less clear as to creating a backup (or temporary copy) of intellectual property; the Copyright Act of 1976 allows a consumer to back up a copy of a computer program. At concern is when the anti-circumvention clause of the DMCA prevents consumers from expressing the rights enumerated in this section (Chilling Effects Clearinghouse, Anticircumvention, n.d.). There is some consideration of this issue in a report commissioned by DMCA Section 104 (United States Copyright Office, 2000). Note that the distribution of tools that circumvent copy protection is also prohibited (Electronic Frontier Foundation, 2008).

The DMCA is not limited to the anti-circumvention clause, however. Title II is the Online Copyright Infringement Liability Limitation Act, which seeks to limit liability by websites and internet providers when they are hosting content; it is most commonly known as the “Safe Harbor” provision of the bill, and implements the WIPO Copyright Treaty’s directive to “maintain a balance between the rights of authors and the larger public interest, particularly education, research and access to information” (World Intellectual Property Organization, 1996).

Under DMCA Title II, Section 512, an online service provider is not responsible for hosting copyrighted content so long as they 1) have no knowledge that content on their system is copyrighted; 2) have a clear policy for dealing with copyrighted content (such as removing repeat offenders); and 3) provide a way to submit copyright complaints. If a user of the website (perhaps the one that uploaded the content) believes that the content is either not owned by the complainant, or that the content is sufficiently covered by fair use, a counter-notice can be filed to the copyright owner (Chilling Effects Clearinghouse, DMCA Safe Harbor Provisions, n.d.).

There are three additional titles, none of which have come under much, if any, contention. Title III (the “Computer Maintenance Competition Assurance Act”) allows individuals repairing computers to make temporary copies of software; Title IV (“Miscellaneous Provisions”) added an assortment of minor provisions; and Title V (the “Vessel Hull Design Protection Act”) added copyright protection to boat hull designs, which were not previously covered as their form was clearly related to their function.

Thus the DMCA, unanimously passed by the United States Senate on October 12, 1998 and signed into law by President Clinton on October 28, 1998 (Public Knowledge 2008), is clearly far-reaching. It significantly changed not only United States law, but international intellectual property law via the World Intellectual Property Organization (Robinson, 2008).

It is the author’s opinion that this change has been detrimental to technology; that the anticircumvention clause has been unsuccessful in its stated purpose of preventing piracy, and that the safe harbor provisions would have evolved over time through the justice system.

Supporting Evidence

First, we shall consider the negative effect that the anti-circumvention clause has had on free expression, scientific research, fair use, competition, and innovation. An exhaustive list of relevant court cases has been compiled by the Electronic Frontier Foundation and is updated approximately every two years (Electronic Frontier Foundation, 2008). A few notable examples of such are presented here; but an exhaustive list is beyond the scope of this paper, as is a discussion of the relatively ineffectual anti-circumvention exemption process (Lohmann, 2005).

As mentioned in the introduction, a consumer has a right to view, loan, rent, or sell intellectual property as they please (especially if that property takes the form of a song, album, or movie; the law is less clear in certain cases). CDs and DVDs have attempted a wide variety of copy protection methods, sometimes rendering the media unplayable in some devices (for example, certain copy-protected CDs cannot play in car stereos that lack later hardware.

The best example of this limitation of use is the DVD, which uses a form of copy protection known as the Content Scramble System, or CSS. In CSS, a 40-bit stream cipher was used to obscure the content of the DVD; in order to build a DVD player that played these secure DVDs, one must license a key from the DVD Copy Control Association (and contractually, implement the entire copy control system). This was a hurdle that most likely discouraged independent device manufacturers; for example, Diamond created an mp3 (digital music) player without the restraint of a system such as CSS or the consent of the RIAA, and their device that was ruled legal in RIAA v. Diamond Multimedia (Dabeau 2000). Without the DMCA or CSS, many more manufacturers may have been tempted to support the format. Also consider the evolution of the digital music player; without this ruling, the iPod might never have been invented. Would a similarly ubiquitous DVD-playing device have been invented (other than the Video iPod) if the DMCA did not exist?

Introduced in 1996, CSS was broken by Jon Lech Johansen and two additional anonymous individuals in October 1999, and released as DeCSS (Warren, 2000). The source code was leaked soon thereafter, and quickly spread across the internet (Vogt, n.d.). The first legal test of the DMCA was based around this; in Universal v. Reimerdes, the DMCA was upheld as constitutional, and the distributors of this protection-circumventing application were prevented from continuing; in part, because they openly admitted to distributing the program to promote piracy rather than claiming to support fair use (Universal City Studios, Inc. v. Reimerdes).

For these reasons, DVD playback was initially difficult in the open-source operating system Linux; however, there is an “unofficial” library to add this functionality, libdvdcss, which has not been legally challenged. Note that the DMCA and this lawsuit did not actually remove the program or its source code from the internet; it is still widely available (Warren, 2000). (Vogt, n.d.).

If the law was not effective at protecting their system, as is stated above, what has it accomplished in this instance? It restricted the speech of the program’s creators, who did not directly engage in piracy. Jon Lech Johansen was tried after a complaint by the DVD Copy Control Association and the Motion Picture Association; he was ultimately acquitted, but lost approximately two years of his life to litigation. It was, however, made clear that using DeCSS (or similar programs) is a crime (Warren, 2000), even when it is used under one’s fair use rights.

In 2006, Vijay Raghavan’s company, Load ‘N Go, was sued in Paramount Pictures v. Load ‘N Go Video for violating the DMCA (Lewin, 2006). This company sold consumers a Video iPod and several DVDs, and performed the time-consuming process of loading the legally purchased movies onto the iPod for the consumer (Jayasuriya, 2008), a process that clearly falls under fair use (DeJean, 2006). Because the company technically violated the DMCA’s anti-circumvention clause in their primary service, what would otherwise be a legitimate, innovating company was driven out of business, contrary to the stated goals (piracy reduction) of DMCA anti-circumvention provisions (Jayasuriya, 2006).

It is also important to note that piracy has risen dramatically since the enactment of the DMCA, not decreased; in particular, “The Motion Picture Association (MPA), the international arm of the Motion Picture Association of America (MPAA), estimated worldwide losses because of piracy to be US $2.2 billion in 1997 and $3.5 billion annually in 2002, 2003, and 2004” (Lohmann, June 2006). Thus the DMCA anticircumvention measure is effective at criminalizing piracy (because theft was obviously not already a crime), many consumer technologies are missing from the marketplace (or available but technically illegal) as a result of the anti-circumvention provision.

While the DMCA’s safe harbor provisions do a reasonable job of protecting websites, little concern is given to whether a complainant is justified in their DMCA takedown notice. One particularly notable example of this was presidential candidate John McCain’s YouTube channel; various media organizations that the McCain campaign used clips from (under a legitimate claim of fair use) had McCain ads taken down by various media organizations (Stirland, 2008). The most famous recent example was a 30-second clip of a baby dancing with Prince’s “Let’s Go Crazy” playing in the background, almost certainly a fair use (Rasch, 2008). In a positive move, the judge ruled that content owners must consider fair use when sending takedown notices (McSherry, 2008).

Refuting Evidence

The DMCA is not without positive effects and supporters, however. The safe harbor clause does a sufficient job of keeping content-hosting websites out of much legal trouble (Kravets, 2008). It is again difficult to make a comparison, as most modern-day examples of these sites did not exist before the DMCA due primarily to bandwidth reasons. In 1998, the internet was almost entirely populated by Americans (GVU Center, 1998), AOL was still growing rapidly, spam wasn’t as much of a problem, and Facebook wouldn’t be a sparkle in David Zuckerburg’s eye for another six years. However, it is unclear if these companies would have existed in a world without the DMCA Title II to protect them in a clear manner.

Veoh, a video hosting website, has been involved in two recent examples of the protection afforded by DMCA Title II; in Io Group v. Veoh, the court ruled that even though Veoh performed additional processing on videos (such as converting them to flash, indexing them, and generating a representative thumbnail) all of these actions were performed at the bequest of the user, and therefore Veoh did not necessarily have knowledge of infringing content (Raysman, 2008). In UMG v. Veoh, UMG’s lawyers attempted a variety of “novel” arguments to convince the court that Veoh didn’t fit the definition of a safe harbor; so far, the courts have ruled along the same lines as the previously mentioned case (Goldman, 2009).

The other particularly notable safe harbor case is the ongoing lawsuit, Viacom International Inc. et al v. YouTube, Inc. et al, the largest test of the DMCA safe harbor provision (Bangeman 2007). Viacom sued YouTube and its owner Google for hosting around 150,000 videos to which Viacom claimed some sort of intellectual property ownership, asking for a billion dollars in punitive damages. During discovery, Viacom was granted access to an immense amount of data related to user activity on the site, which both parties agreed would remain anonymous (Opsahl 2008). In March 2008, the court denied the punitive damages, although statutory damages remain a possibility (OUT-LAW.COM, 2008). There have been some suggestions that Google bought YouTube anticipating such a lawsuit, given that a poorly defended YouTube might have established a poor legal precedent that would affected Google’s primary business (Kono 2007).

There is also an argument to be made that the anti-circumvention clause has encouraged speech (Nimmer, 2005); in particular, it has been suggested that the DMCA does not regulate substantially more speech than is necessary, and as such is constitutional; and without the DMCA, less “speech” would have been created due to reduced incentives and additional piracy (Nimmer, 2005).

Proposals

There have been a wide variety of proposals as to how the law should be changed given our retrospective on the DMCA’s effects, most of them concerning the anti-circumvention provisions. A popular suggestion is to simply repeal it and let courts judge based on the many existing laws (McCullagh, 2001), largely because of the effect that anti-circumvention has had on fair use (DeJean, 2006), and that the courts were producing reasonable rulings in this field before the passage of the DMCA (Lee, 2006).

One attempt to amend the DMCA to remedy the problems discussed here was the Benefit Authors without Limiting Advancement or Net Consumer Expectations (BALANCE) Act, proposed by Zoe Lofgren in 2003 (Richmond, 2003). It would have allowed consumers to “make backup copies and display digital works on devices of their choice… prohibit non-negotiable, “shrink-wrap” licenses on digital content … [and] … allow consumers to bypass copy protection technologies if those technologies “impede” their fair-use rights” (Gross, 2003).

The most serious and well-enumerated proposal has been the Digital Media Consumers’ Rights Act, or the DMCRA, first introduced in 2003 and reintroduced in 2005. This act seeks to remedy most of the aforementioned problems with the DMCA while preserving some of the benefits; in particular, it would require clear labeling of copy-protected CDs, make circumvention of copy protection legal provided that it is fair use, and decriminalizes scientific research into copy protection (Boucher, n.d.).

Neither of these two laws made it out of committee, but the DMCRA may have a reasonable chance for success if it is introduced again, given the current political climate. It will doubtlessly be opposed by content providers, and how such a battle would play out is anyone’s guess.

The safe harbor provisions are not without their problems, however. Some recommendations to this end include increased transparency in the process; centralized reporting of DMCA takedown requests; stronger punishments for false notices; and an addition of a system to request attribution instead of entirely removing the work (Bailey, 2008).

Conclusion

Above all else, the establishment of the DMCA should serve as a cautionary tale. Taking potentially controversial legislation and turning it into an international multi-party treaty, signing it, and then presenting it to congress and the American public as fait accompli is extremely undemocratic. There is a significant danger this will happen again with the Anti-Counterfeiting Trade Agreement (ACTA) which, according to a leaked memo, has measures just as draconian as the DMCA’s anti-circumvention provisions (Robinson, 2008).

It is also clear via John McCain’s difficulties with DMCA takedown notices that John McCain (one of the senators that voted for the DMCA) had no idea of the real implications that the DMCA would have on John McCain (candidate for president) (Stirland, 2008). This shows the need for clearer and increased communication between policy-makers and technologists capable of understanding the various impacts of relevant legislation.

It would also be helpful if everyone, including the media conglomerates most responsible for much of the recent intellectual property legislation and DMCA abuses learned and respected the well-established concept of fair use. In one reasonably recent example, the Recording Industry Association of America attempted to claim that ripping CDs to an iPod was not fair use (Lohmann, February 2006). The willingness to criminalize an action that their entire consumer base undoubtedly engages in shows an almost willful ignorance that is not conducive to the creation of a body of law (be it the DMCRA or any other suitable remedy) that is truly fair to content creators, device manufacturers, and consumers.
 

References

Bailey, Jonathan. (August 5, 2008). 5 Ways to Improve DMCA Safe harbor. Retrieved April 11, 2009 from Plagarism Today.

Bangeman, Eric. (May 1, 2007). Google cites Safe harbor, fair use in Viacom v. YouTube defense. Retrieved April 11, 2009 from Ars Technica.

Boyle, James. (November 14, 1995). Overregulating the Internet. Washington Times, A17.

Boucher, Rick. Digital Media Consumers’ Rights Act. Retrieved April 11, 2009 from The Online Office of Congressman Rich Boucher.

Chilling Effects Clearinghouse. Anticircumvention (DMCA). Retreived April 11, 2009 from the Chilling Effects Clearinghouse.

Chilling Effects Clearinghouse. DMCA Safe Harbor Provisions. Retrieved April 11, 2009 from the Chilling Effects Clearinghouse.

Dabeau, Jocelyn. (February 20, 2000). Recording Industry Ass’n of America v. Diamond Multimedia Systems, Inc. Retrieved April 11, 2009 from the Berkman Center of Internet & Society at Harvard University.

DeJean, David. (November 20, 2006). Dear Democrats: Please Repeal the DMCA. Retrieved April 11, 2009 from InformationWeek.

Delegates to the Philadelphia Convention. (1787). Constitution of the United States. Retrieved April 12, 2009 from the U.S. National Archives and Records Administration.

Electronic Frontier Foundation. (October 2008). Ten Years under the DMCA. Retrieved April 11, 2009 from the Electronic Frontier Foundation.

Goldman, Eric. (January 5, 2009). Veoh Gets Another Nice 512(c) Win–UMG v. Veoh. Retrieved April 11, 2009 from Eric Goldman Technology & Marketing Law Blog.

Gross, Grant. (March 5, 2003). Bill would ‘protect’ consumers from DMCA. Retrieved April 11, 2009 from Infoworld.

GVU Center. (October 1998). GVU’s Tenth WWW User Survey: Major Geographical Location. Retrieved April 11, 2009 from GVU Center.

Io Group Inc. v. Veoh Networks Inc., 2008 U.S. Dist. LEXIS 65915 (N.D. Cal. Aug. 27, 2008)

Jayasuriya, Mehan. (October 27, 2008). 10 Years of the DMCA Part One: Vijay Raghavan. Retrieved April 11, 2009 from Public Knowledge. Web site:

Kono, Michi. (March 14, 2007). Maybe Google Wanted to be Sued: YouTube and Plan B. Retrieved April 11, 2009 from Michi Knows.

Kravets, David. (October 27, 2008). 10 Years Later, Misunderstood DMCA is the Law That Saved the Web. Retrieved April 11, 2009 from Wired.

Lee, Timothy B. (March 21, 2006). Circumventing Competition: The Perverse Consequences of the Digital Millennium Copyright Act. CATO Institute.

Lehman, Bruce. (September 2005). Intellectual Property and the National Information Infrastructure. Retrieved April 11, 2009 from the United States Patent and Trademark Office.

Lenz v. Universal Music Group, 2008 U.S. Dist LEXIS 91890 (N.D. Cal. 2008)

Lewin, James. (November 18, 2006). Should Ripping Videos To iPod Be Illegal? Retrieved April 11, 2009 from Podcasting News.

Lohmann, Fred von. (November 30, 2005). DMCA Triennial Rulemaking: Failing Consumers Completely. Retrieved April 11, 2009 from the Electronic Frontier Foundation.

Lohmann, Fred von. (February 15, 2006). RIAA Says Ripping CDs to Your iPod is NOT Fair Use. Retrieved April 11, 2009 from the Electronic Frontier Foundation.

Lohmann, Fred von; Seltzer, Wendy. (June 2006). Death by DMCA. IEEE Spectrum. Retrieved April 11, 2009 from the IEEE.

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McCullagh, Declan. (July 25, 2001). Congress No Haven for Hackers. Retrieved April 11, 2009 from Wired.

McSherry, Corynne. (August 20, 2008). Judge Rules That Content Owners Must Consider Fair Use Before Sending Takedowns. Retrieved April 11, 2008 from the Electronic Frontier Foundation.

Nimmer, Raymond T. (February 2005). First Amendment Speech and the Digital Millennium Copyright Act: A Proper Marriage. Jonathan Griffiths, Uma Suthersanen, eds., Oxford University Press. Retrieved April 11, 2009 from the Social Science Research Network. Also available here.

Opsahl, Kurt. (July 3, 2008). Viacom’s Statement on YouTube User Data Controversy. Retrieved April 11, 2009 from the Electronic Frontier Foundation.

OUT-LAW.COM. (May 27, 2008). Google claims YouTube is exactly what DMCA was made for. Retrieved April 11, 2009 from OUT-LAW.COM.

Rasch, Mark. (March 4, 2008). Let’s Go Crazy. Retrieved April 11, 2009 from Security Focus.

Raysman, Richard. (October 17, 2008). DMCA: A Safe Harbor for Video Sharing? Retrieved April 11, 2009 from Law.com.

Richmond, Robert. (March 21, 2003). Balance Act Seeks to Resturcture DMCA. Retrieved April 11, 2009 from TechIMO Hardware.

Robinson, David. (October 27, 2008). DMCA Week, Part I: How the DMCA Was Born. Retrieved April 12, 2009 from Freedom to Tinker.

Rothman, David. (March 17, 1996). TeleRead Update #6: Copyright Czar Threatens to “Destroy” Law Professor. Retrieved April 11, 2009 from Teleread.

Stirland, Sarah Lai. (October 15, 2008). YouTube to McCain: You Made Your DMCA Bed, Lie in It. Retrieved April 11, 2009 from Wired.

Timothy S. Vernor v. Autodesk, Inc. 87 USPQ2d 1501 (W.D.Wash. 2008)

United States Copyright Office. (2000). Digital Millennium Copyright Act Study.

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Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000), aff’d, 273 F.3d 429 (2d Cir. 2001)

Vogt, Tom. DeCSS Central. Retrieved April 11, 2009 from Lemuria.

Warren, Rob. (May 3, 2000). The Openlaw DVD/DeCSS Forum Frequently Asked Questions (FAQ) List. Retrieved April 11, 2009 from the Berkman Center of Internet & Society at Harvard University.

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Note that while I am an EFF member, I feel that my analysis is relatively unbiased. However, I am not a lawyer, so I would advise taking my clearly marked “unsolicited advice” below with a metaphorical grain of salt. Kudos who anyone who got the joke in the title.

Introduction

Throughout 2006, “Spocko,” an anonymous (and previously unknown) blogger, posted on his blog called “Spocko’s Brain” about violent and inflammatory content on the Disney/ABC-owned radio station KSFO-AM. As part of his campaign, he used clips of KSFO content to illustrate the inflammatory content. He and readers of his blog sent messages to the station’s advertisers, suggesting that they pull their advertisements based on quotes and short clips (Garofoli), and that such a move would not infringe on KSFO’s free speech (Stark).

Frequently-used examples of KSFO content included: (About a black man in Lincoln, Nebraska:) “Now you start with the Sear’s Diehard the battery cables connected to his testicles and you entertain him with that for awhile and then you blow his bleeping head off.”; (About a protestor at a Cindy Sheehan event:) “Whoever did that should have been stomped to death right there. Just stomp their bleeping guts out.”; (About Nancy Pelosi:) “We’ve got a bulls-eye painted on her big laughing eyes.” There are many other examples similar to these in language, tone, content, etc (Stark).

Takedown notice

As a result of Spocko’s actions, multiple advertisers withdrew from KSFO (Garofoli), particularly the Brian Sussman show. That includes, but is not limited to, Netflix, MasterCard, Bank of America, and VISA (Siebert, Media Critic’s Blog…). Shortly after VISA’s withdraw from KSFO’s Melanie Morgan and Lee Rogers show, an ABC lawyer sent Spocko a Cease and Desist letter on December 21, 2006 (Zimmerman); it demanded that Spocko remove the audio clips from his blog because they were a “clear violation of KSFO’s copyright and other interests… [and] confirm that you … will discontinue use of all materials owned by KSFO” (Karpeh). He complied with the C&D, and removed the audio from his host, 1&1 Internet, within six hours (Spocko, It was Spocko’s Speech…). Despite his compliance with the C&D, ABC/Disney then sent a letter to 1&1 Internet, demanding that they shut down Spocko’s Brain. 1&1 Internet complied with ABC/Disney’s request (Spocko, It was Spocko’s Speech…), maintaining that Spocko had never removed the materials (Garofoli).

Within days, other bloggers took up Spocko’s cause, and the clips were posted “all over the web” (Garofoli). In addition, a “supportive YouTube video featuring some of the clips drew more than 31,000 viewers within days” (Garofoli). A few days after his blog was shut down by 1&1 Internet, Spocko had found a new host, Computer Tyme Web Hosting (Siebert, Bloggers Give Spocko…). Their hosting services were more expensive than 1&1 Internet (Zimmerman), but they are known for specializing in free speech web hosting (WebHostingStuff).

EFF response

Spocko then contacted the Electronic Frontier Foundation (EFF) for assistance (Electronic Frontier Foundation, Spocko, KSFO, and…). EFF is a non-profit organization dedicated to protecting freedom of speech on the internet, among other causes. Contemporaneously with Spocko’s joining with EFF, a KSFO talk personality claimed that Spocko was “[trying to] take away [KSFO's] free speech rights.” However, as the EFF pointed out in a press release, there is no clause in the first amendment that protects the right to advertiser-supported speech (Electronic Frontier Foundation, Spocko, KSFO, and…).

On January 25, 2007, the EFF sent ABC/Disney a letter that responded to ABC/Disney’s Cease and Desist notice and affirmatively defended Spocko’s use of KSFO’s content (Zimmerman). Specifically, the EFF letter stated that Spocko was “engaged in criticism of KSFO-AM talk show hosts for language the New York Times recently described as ‘racially insensitive, religiously intolerant or containing violent imagery.’ In order to support his claims, and to allow his readers to consider the remarks themselves, Spocko posted short audio clips from the KSFO programs he was criticizing” (Zimmerman). According to Zimmerman and the Electronic Frontier Foundation, Spocko’s use of the KSFO clips fell squarely under fair use.

Definition of “fair use”

The first legal definition of copyright was given in the United Kingdom’s Statue of Anne in 1709. The statue did not allow for a reasonable use of copyrighted work, so courts established a policy of “fair abridgement” (later “fair use”) that defended the validity of said use notwithstanding the rights of copyright owners (Loren). It was solely in common law in the United States until the passage of the Copyright Act of 1976 (Wikipedia, Fair use), and is specifically codified in 17 USC § 107: “Limitations on Exclusive rights: Fair Use,” which states:

“Notwithstanding the provisions of 106 ["Exclusive rights in copyrighted works"] and 106A ["Rights of certain authors to attribution and integrity"], the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”

In describing fair use, Zimmerman also cited Elvis Presley Enterprises v. Passport Video,¹ 357 F.3d 896, 898 (9th Cir. 2003), Eldred v. Ashcroft,² 537 U.S. 186, 219-20 (2003), and Pierre Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1110 (1990). In the former, it was stated that “[fair use of copyrighted works] is intended to preserve the values enshrined in the First Amendment” (Zimmerman). In the latter, it is stated that “Fair use should not be considered a bizarre, occasionally tolerated departure from the grand conception of the copyright monopoly. To the contrary, it is a necessary part of the overall design. Although no simple definition of fair use can be fashioned, and inevitably disagreement will arise over individual applications, recognition of the function of fair use as integral to copyright’s objectives leads to a coherent and useful set of principles” (Leval).

Fair use analysis

Under 17 USC § 107, there are four criterion/factors used to determine whether a use of a copyrighted work is considered “fair use.” They are the “(1) purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; (4) [and] the effect of the use upon the potential market for or value of the copyrighted work.”

Zimmerman’s response proceeds to analyze each of the four cited criteria with respect to Spocko’s use of the KSFO audio clips. The first criterion was “the purpose and character of the use… including whether such use is of a commercial nature…” (17 USC § 107). Spocko’s use was most certainly a non-profit educational purpose; Spocko did not and does not have advertisements on his blog; he was using it as a tool to inform and report on an activity (Massie). Zimmerman cites Chicago Board of Education v. Substance, Inc.,³ 354 F.3d 624, 628 (7th Cir. 2003), which stated that “one office of the fair use defense is to facilitate criticism of copyrighted works by enabling the critic to quote enough of the criticized work to make his criticism intelligible. Copyright should not be a means by which criticism is stifled with the backing of the courts” (FindLaw, Chicago Board of Education v. Substance, Inc. 6). It should be noted that per Campbell v. Acuff-Rose Music, Inc.,⁴ Spocko could still claim fair use even if his criticism was partially or totally commercial, although being entirely non-commercial strengthens his case to some extent.

The second criterion under consideration is the “nature of the copyrighted work.” This clause distinguishes between works that are informational and those that are intended to entertain, with “[more] creative works falling ‘closer to the core of intended copyright protection.’ Campbell v. Acuff-Rose Music, Inc.,⁴ 510 U.S. 569, 586 (1994); Wall Data Inc. v. Los Angeles County Sheriff’s Dept.,⁵ 447 F.3d 769, 780 (9th Cir. 2006)” (Zimmerman). Also stated is that news reports “may be subject to liberal appropriation for fair use purposes. Party on Copyright, 10:138 at 10-346 (2006). See also, e.g., Nat’l Ass’n of Gov’t Employees v. BUCI Television, Inc.,⁶ 118 F. Supp 2d 126, 129 (D. Mass. 2000)” (Zimmerman). The KSFO audio clips used by Spocko were intended to further his reporting and criticism of the station’s content. Given that the radio broadcasts were decidedly more “informational” than “creative,” the second criterion seems to be satisfied.

The third criterion is the “amount and substantiality of the portion used in relation to the copyrighted work as a whole” (17 USC § 107). Given that only short clips were used of a program that lasted hours (Zimmerman), and that “[t]he KSFO hosts themselves have repeatedly asserted that the clips amounted to anomalies or understandable slip-ups that occasionally occurred in the hundreds of hours per year that they collectively appeared on the air” (Kasindorf),⁷ the third criterion is most definitely satisfied.

The fourth and final criterion is the “effect of the use upon the potential market for or value of the copyrighted work” (17 USC § 107). Per Campbell v. Acuff-Rose Music, “when a lethal parody, like a scathing theater review, kills demand for the original, it does not produce a harm cognizable under the Copyright Act. Because ‘parody may quite legitimately aim at garroting the original, destroying it commercially as well as artistically,’ … the role of the courts is to distinguish between ‘[b]iting criticism [that merely] suppresses demand [and] copyright infringement[, which] usurps it.’”⁸ (FindLaw, Campbell v. Acuff-Rose Music). As such, the use of copyrighted materials in criticism and/or parody is strongly protected under fair use, even when it may cause financial damage (including lost ad revenue). This is precisely how Spocko was using the audio files, and what ABC/Disney intended to suppress with their Cease and Desist notice. “Far from being grounded in law, ABC/KSFO’s complaints amount to nothing more than an attempt to silence an effective critic” (Zimmerman).

Conclusions

Given that Spocko’s use of copyrighted KSFO content is clearly considered fair use under 17 USC § 107 (as established above), the ABC/Disney C&D order is meritless. Therefore, the EFF response to ABC/Disney’s C&D order stated: “Because those threats are legally baseless, they should not have been made in the first place. They have, however, caused Spocko harm and may continue to do so should they remain. In order to prevent any further harm to Spocko, we demand that you retract them immediately and do so in the same way the original claim was made: in a letter to 1&1 Internet, Inc., with a copy to us” (Zimmerman, emphasis added).

Based on the previous conclusions, such an action by ABC/Disney would be appropriate. However, months after the EFF response and demand, no such letter by ABC/Disney has come (Spocko, Still no word from ABC about the EFF letter and Spocko, Spocko to Disney: You Never Call. You Never Write.). Spocko points out that his response to their demands (”remove the content immediately”) was “immediate” (six hours), but that their response has exceeded any reasonable definition of immediate, or timely, for that matter (Spocko, Spocko to Disney: You Never Call. You Never Write.).

The end of the EFF response states that: “Moreover, please be aware that further misrepresentation aimed at silencing Spocko’s protected speech online may subject KSFO and ABC to liability under 17 USC § 512(f) (misrepresentation of liability under the Digital Millennium Copyright Act) and California’s Business & Professions Code § 17200 (prohibiting unlawful, unfair or fraudulent business practices)” (Zimmerman).

17 USC § 512(f) states that, “Any person who knowingly materially misrepresents under this section – (1) that material or activity is infringing, or (2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it” (emphasis added).

17 USC § 512(f) is strongly worded, and is targeted at those who would suppress fair use. However, it may be difficult to prove that ABC/Disney knowingly misrepresented their position, even though it is highly unlikely that an entertainment lawyer would be unfamiliar with the fair use doctrine and its uses. Given that ABC/Disney has been informed by EFF (and legally “knows”) that the material is covered under fair use, any subsequent action in this vein against Spocko would be clearly actionable under 17 USC § 512(f). Other legal remedies are available for Spocko, however; he could sue, as ABC/Disney’s false statements of fact caused him financial damage. Also note that under the DMCA, 1&1 Internet is not liable for removing the content, and is under no obligation to do so in the first place.

Unsolicited advice

Assuming that ABC/Disney will not respond unless a lawsuit is involved, Spocko and EFF need to carefully consider the financial impact and potential judicial precedent of any legal action. However, filing a suit against ABC/Disney in order to force a settlement could be an effective tactic. The EFF has had a considerable amount of success in the past, even requiring a repeat offender to apologize to the internet (Electronic Frontier Foundation, DMCA Abuser…). EFF is also planning to pursue action against Viacom under 17 USC § 512(f)(b) due to a large number of DMCA takedown notices that were sometimes directed at non-Viacom content (Hefflinger).

Notes

¹In Presley Enterprises v. Passport Video, the court concluded that based on the four fair use criterion in 17 USC § 107, Passport Video’s documentary The Definitive Elvis exceeded the fair use guidelines for copyrighted material for which it did not have an appropriate license. Specifically, the documentary used material which it did not discuss, it used a large portion of certain copyrighted materials, the use of the materials would limit the copyright holder’s ability to market the copyrighted work, and Passport Video intended to profit off of the use of said materials-i.e., the use was commercial (FindLaw, Elvis Presley Enterprises v. Passport Video).

²In Eldred v. Ashcroft, a case heard before the Supreme Court, the constitutionality of the 1998 Sonny Bono Copyright Term Extension Act was confirmed (Wikipedia, Eldred v. Ashcroft), in part because the fair use guidelines set forth in 17 USC § 107 protect academic works and free speech as it pertains to a copyrighted work (FindLaw, Eldred et al. v. Ashcroft, Attorney General).

³In Chicago Board of Education v. Substance, the board sued a Chicago public school teacher named Schmidt and a local newspaper called Substance whose target market is teachers. The Chicago Board of Education had created and copyrighted a series of standardized tests, which are governed by special consideration in copyright law given that the usefulness of the test depends on the continued secrecy of the contents. In January 1999, Schmidt published six such standardized tests in full in order to demonstrate their ineffectiveness. Among other conclusions, the court found his use of the material to be too broad because it destroyed the value of the tests, and that use of specific questions would have been more appropriate (FindLaw, Chicago Board of Education v. Substance).

^{4.1, 4.2}In Campbell v. Acuff-Rose Music, Inc., the rap group 2 Live Crew created “Pretty Woman,” a parody of Roy Oribson’s “Oh, Pretty Woman.” The Supreme Court decided that “The commercial nature of a parody does not render it a presumptively unfair use of copyrighted material. Rather, a parody’s commercial character is only one element that should be weighed in a fair use inquiry.” (Wikipedia, Campbell v. Acuff-Rose Music, Inc.).

⁵In Wall Data Inc. v. Los Angeles County Sheriff’s Dept., the Los Angeles Sheriff’s Department installed software created by Wall Data for which they had 3,663 licenses on 6,007 computers. The 9th Circuit Court decided that the fair use defense did not apply as the copying was done to save the time and expense of installing individual copies; the Sheriff’s Department could have paid more money for additional licenses and did not (Higgins).

⁶In National Association of Government Employees v. BUCI Television, Inc., a candidate for Sheriff sued a newspaper for misparaphrasing him, accusing the publication of libel. The Texas Supreme Court ruled that given that the news accounts were “substantially true,” no harm was committed; additionally, their news report “consisted of constitutionally protected interpretation and analysis of a public figure’s political speech” (Texas Supreme Court, National Association of Government Employees v. BUCI Television, Inc.)

⁷The EFF brief cites Kasindorf’s article in USA today (Zimmerman). In particular, it uses the quote “Sussman repeated an apology for his Obama remark and said he sometimes went over the line in talking 20 hours a week” (Kasindorf).

⁸The quoted decision is from Fisher v. Dees, 794 F.2d 432, 438 (9th Cir. 1986) (FindLaw, Campbell v. Acuff-Rose Music). In that case, the fact that “the defendant had sought and was denied permission to use the plaintiff’s song had no bearing on liability when parody was at issue because ‘[t]he parody defense to copyright infringement exists precisely to make possible a use that generally cannot be bought’” (Colombia Law School, Fisher v. Dees).

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