Facilitating fair use in the digital age

Abstract

The paper refers to the response of the digital content industries to the threat of large scale digital copyright piracy and their successful lobby of legislatures on a global scale for laws that prevent it. It points to the basic problem of the resulting laws in not striking an appropriate balance between the interests of digital copyright holders and others who may have legitimate claims to access and use a protected work. It argues that the Digital Millennium Copyright Act (and other similar laws) takes an all or nothing approach to circumvention technologies. This article advocates a new approach, namely developing a simple and inexpensive procedure to resolve disputes before an administrative agency about lack of access to a protected work for legitimate purposes. It contends that such an approach will prove more effective than current legislation and legislative proposals.

Notes

1 This paper was presented at the Inaugural International Symposium: ‘The Law and Information Interface in the Digitally Networked Society: Is a Conceptual Rethink Imperative?’ held on 4 February at the University of Wolverhampton in the UK, sponsored by the History and Governance Research Institute. The author would like to thank participants at that symposium for useful comments on the original presentation, as well as participants at ‘Real Law and Online Rights’, University of Virginia School of Law on 19 February, and Professors Thomas Nachbar and Mark Lemley, who commented on an associated paper. All mistakes and omissions are those of the author.

2 WIPO Copyright Treaty of 1996, Art. 11: ‘Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law’.

3 WIPO Performances and Phonograms Treaty of 1996, Art. 18: ‘Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by performers or producers of phonograms in connection with the exercise of their rights under this Treaty and that restrict acts, in respect of their performances or phonograms, which are not authorized by the performers or the producers of phonograms concerned or permitted by law’.

4 Directive 2001/29 on Copyright and related rights in the Information Society [2001] OJ L1767/10 (‘the Copyright Directive’), particularly Arts. 5 and 6.

5 Copyright Act 1968 (Cth), s 116A (inserted in 2000).

6 Circumvention and trafficking are generally two distinct prohibitions in relevant legislation. In the United States there is no prohibition on circumventing a copy protection measure per se, although there is a prohibition on trafficking in a device that can circumvent a copy protection measure. The idea is to protect those who wish to make fair use of a relevant work. Circumvention of access control measures and trafficking in devices that can circumvent access control measures are both prohibited in the American legislation. The attempt to preserve fair use in this way in the United States has not been particularly effective. See, for example, Reese, R. A. (2003), Will merging access controls and rights controls undermine the structure of anticircumvention law?, Berkeley Technical Law Journal 18, 619.

7 For the most part, this paper will use the American ‘fair use’ terminology, although this term is used somewhat interchangeably with terms like ‘legitimate use’ and ‘permissible use’ to denote uses that could/should be legally permitted despite attempts by a copyright holder to prevent access and use more broadly. The anglo-Australian equivalent terminology to ‘fair use’ is ‘fair dealing’.

8 See Reese, R. A. (2003), Will merging access controls and rights controls undermine the structure of anticircumvention law?, Berkeley Technical Law Journal 18, 619; Samuelson, P. (1999) Intellectual property in the digital wconomy: why the anti-circumvention regulations need to be revised, Berkeley Technical Law Journal 14, 519, at p. 551 (‘It is unclear whether Congress intended for the technologically savvy who could “do it themselves” to be the only ones who could engage in privileged acts of circumvention’).

9 These may include purposes related to teaching, research, criticism, comment, news reporting, and perhaps creating interoperable software products, creating back-up copies of lawfully purchased copyrighted software etc.

10 See, for example, 17 U.S.C. § 1201(c)(1) (‘Nothing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use, under this title.’).

11 It is not currently clear that fair use is, in fact, a defence to a DMCA claim, at least in the United States: Burk, D. (2003) Anticircumvention misuse, UCLA Law Review 50, 1095, 1137 – 1138 (DMCA makes no explicit provision for fair use with regard to the anticircumvention right itself, as distinct from the copyright in the underlying work); Universal City Studios, Inc v Reimerdes, 111 F. Supp. 2d 292, 322, 323 – 324 (S.D.N.Y. 2000); aff'd 273 F 3d 429 (2d Cir 2001) (fair use is not a defense to DMCA infringement); Samuelson, P. (1999) Intellectual property in the digital wconomy: why the anti-circumvention regulations need to be revised, Berkeley Technical Law Journal 14, 519, 539 n. 108.

12 See, for example, United States v Elcom, 203 F. Supp. 2d 1111, 1134 – 1135 (2002): ‘[W]ith regard to the argument that fair use rights are impaired [by the DMCA], the DMCA does not eliminate fair use or substantially impair the fair use rights of anyone. Congress has not banned or eliminated fair use and nothing in the DMCA prevents anyone from quoting from a work or comparing texts for the purpose of study or criticism. The fair user may find it more difficult to engage in certain fair uses with regard to electronic books, but nevertheless, fair use is still available’.

13 See Universal City Studios v Corley, 273 F. 3d 429, 458 (2nd Cir. 2001) (‘the Supreme Court has never held that fair use is constitutionally required, although some isolated statements in its opinions might arguably be enlisted for such a requirement’).

14 Directive 2001/29 on Copyright and related rights in the Information Society (2001) OJ L1767/10.

15 The complete list of permitted acts referred to in Part 1 of Schedule 5A includes the following sections of the CDPA: §§ 29, 32(2), 32(2), 32(3), 35, 36, 38, 39, 41, 42, 43, 44, 45, 46, 47, 48, 49, 50, 61, 68, 69, 70, 71, 74, and 75.

16 id. § 296ZE(3)(a).

17 id., § 296ZE(3)(b).

18 id., § 296ZE(6).

19 id., § 296ZE(10). It is not clear what ‘lawful access’ means in this context, but this could be a bar to proceedings by a complainant seeking to make a lawful use of a copyright work in circumstances where access has been technologically barred.

20 It should be noted here that the American legislative scheme does attempt to incorporate some balance with its requirement that the Librarian of Congress, on the advice of the Register of Copyrights, should conduct a triennial review with a view to exempting certain non-infringing uses of copyright works from the anti-circumvention provisions set out in section 1201(a)(1) of Title 17 of the United States Code. See sections 1201(a)(1)(C) – (E). However, these provisions do nothing to facilitate fair use by placing affirmative duties on copyright holders to make works available for these purposes, and they do not apply to the anti-trafficking provisions of the DMCA. Thus, many works might still be unavailable for legitimate use purposes even if the Librarian of Congress made a determination allowing circumvention. Additionally, in the first review of the anti-circumvention provision, the determinations made by the Librarian of Congress were not particularly generous.

21 Sub-section 296ZE(3) states that the Secretary of State may give directions to the owner of a copyright work or an exclusive licensee to facilitate the complainant's access to/use of a relevant work.

22 For example, the United States government was very pro-active in the Elcom case in bringing criminal proceedings against the Russian programmer and his employer under the DMCA for infringing the legal rights of an American corporation. It also encouraged the Norwegian government to take criminal action against the student who created the DeCSS code ultimately at issue in the Reimerdes litigation at the behest of the motion picture industry. The British legislature has been prepared to institute criminal penalties for trafficking in circumvention devices: CDPA, § 296ZB and the Australian legislature certainly did not expressly dismiss the possibility of criminal sanctions for infringements of § 116A of the Australian copyright act.

23 As noted above, these terms are used somewhat interchangeably in this article. Part of the challenge of any new system for facilitating legitimate uses of copyright works would be to better define the scope of these terms. It is suggested below that an administrative procedure that deals with many complaints by those whose access to a copyright work has been hindered by a copyright holder could ultimately generate some useful data about emerging social norms in relation to the nature and scope of fair, legitimate or permissible use of copyright works in the digital age.

24 The issue of private, non-transformative copying has been particularly contentious in fair use jurisprudence in the United States. It has been unclear whether such uses should qualify as ‘fair use’ in American copyright law: see Sony v Universal City Studios, 464 U.S. 417 (1984). Some of these issues are currently being re-litigated in the Grokster file sharing litigation in the United States Supreme Court.

25 Some may argue that ‘certainty’ here is neither desirable, nor possible. However, some greater data generation on social norms in relation to fair use in the digital age would certainly be a useful development for the further evolution of copyright principles and policies into the 21st century.

26 See Universal City Studios v Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000), aff 'd Universal City Studios v Corley, 273 F.3d 429 (2nd Cir. 2001); United States v Elcom, 203 F. Supp. 2d 1111 (2002); 321 Studios v MGM Studios, 307 F. Supp. 2d 1085 (2004).

27 Lemley, M. and Reese, R.A. (2004) Reducing digital copyright infringement without restricting innovation, Stanford Law Review 56, 1345; Lemley, M. and Reese, R.A. (2004) A Quick and Inexpensive System for Resolving Digital Copyright Disputes, University of California-Berkeley, School of Law, Public Law and Legal Theory Research Paper Series (available for download from the Social Science Research Network at http://ssrn.com/abstract=525682).

28 For a comprehensive discussion of the relevant litigation, see Yen, A. (2005) Sony, tort doctrines, and the puzzle of peer-to-peer, Case Western Reserve University Law Review, forthcoming.

29 Lemley, M. and Reese, R.A. (2004) Reducing digital copyright infringement without restricting innovation, Stanford Law Review 56, 1345; Lemley, M. and Reese, R.A. (2004) A Quick and Inexpensive System for Resolving Digital Copyright Disputes, University of California-Berkeley, School of Law, Public Law and Legal Theory Research Paper Series (available for download from the Social Science Research Network at http://ssrn.com/abstract=525682).

30 To this end, they suggest the insertion of a new § 514 in Title 17 of the USC. Details of their proposed legislative mechanism are available in: Lemley, M. and Reese, R.A. (2004) A Quick and Inexpensive System for Resolving Digital Copyright Disputes, University of California-Berkeley, School of Law, Public Law and Legal Theory Research Paper Series (available for download from the Social Science Research Network at http://ssrn.com/abstract=525682). See, for example, Leaffer, M. (1999) Understanding Copyright Law (3rd edn), p. 428 (citing Rosement Enters Inc. v Random House Inc., 366 F. 2d 303, 306 (2d Cir 1966), cert denied, 385 U.S. 1009 (1967) describing fair use as a ‘privilege’); Cornish, W. and Llewelyn, D. (2003) Intellectual Property: Patents, Copyrights, Trade Marks and Allied Rights (5th edn), p. 808 (noting that British law has generally assumed that fair dealing exceptions to copyright infringement, the British equivalent to fair use, have generally been assumed to be constitutionally guaranteed rights of access and use, although there has historically been little actual debate about it).

31 This is because over time the administrative procedure would generate more data relating to emerging social norms about fair use which would, in turn, help both copyright holders and potential fiar uses to know what kinds of uses are likely to be regarded as legally permissible.

32 See, for example, United States v Elcom, 203 F. Supp. 2d 1111, 1134 – 1135 (2002): ‘[W]ith regard to the argument that fair use rights are impaired [by the DMCA], the DMCA does not eliminate fair use or substantially impair the fair use rights of anyone. Congress has not banned or eliminated fair use and nothing in the DMCA prevents anyone from quoting from a work or comparing texts for the purpose of study or criticism. The fair user may find it more difficult to engage in certain fair uses with regard to electronic books, but nevertheless, fair use is still available.’; Universal City Studios v Corley, 273 F. 3d 429, 458 (2nd Cir. 2001) (‘the Supreme Court has never held that fair use is constitutionally required, although some isolated statements in its opinions might arguably be enlisted for such a requirement.’). Further, as noted above, it is not currently clear that fair use is, in fact, a defence to a DMCA claim, at least in the United States: Burk, D. (2003) Anticircumvention misuse, UCLA Law Review 50, 1095, pp. 1137 – 1138 (DMCA makes no explicit provision for fair use with regard to the anticircumvention right itself, as distinct from the copyright in the underlying work); Universal City Studios, Inc v Reimerdes, 111 F. Supp. 2d 292, 322, 323 – 324 (S.D.N.Y. 2000); aff 'd 273 F 3d 429 (2d Cir 2001) (fair use is not a defense to DMCA infringement); Samuelson, P. (1999) Intellectual property in the digital economy: why the anti-circumvention regulations need to be revised, Berkeley Technical Law Journal 14, 519, 539 n. 108.

33 The author is indebted to Professor Thomas Nachbar for his thoughts on this issue.

34 In the United States, this would presumably be a federal District Court.

35 See new section 296ZE, CDPA.

36 To some extent, some such data is currently collected in the United States under the triennial Librarian of Congress' review of the anti-circumvention provisions: ss sections 1201(a)(1)(C) – (E) of Title 17 of the United States Code. However, what is suggested in this article is more comprehensive and perhaps more efficient in some ways.

37 This approach has been taken in two recent United States bills that have not been enacted into law. See Digital Media Consumers' Rights Act of 2003, H.R. 107, 108th Cong., § 5(b) (2003) (allowing circumvention of a technological protection measure if it does not result in a copyright infringement); Digital Choice and Freedom Act of 2003, H.R. 1066, 108th Cong., § 5 (2003) (allowing circumvention and/or trafficking in a circumvention device for purposes of making a non-infringing use of a copyright work in certain circumstances).

38 For a more general discussion of balancing rights and obligations of owners of digital property interests, see Lipton, J. (2004) Information property: rights and responsibilities, Florida Law Review 56, 135.

39 In such a scenario, a user granted access in this way could technically go to the trouble of scanning a relevant work into a computer and disseminating it digitally, but this would be a direct infringement of copyright if outside the scope of an access/use order made by the relevant administrative agency.

40 Iowa State Univ. Research Found, Inc. v American Broad. Cos., 621 F. 2d 57, 60 (2d Cir. 1980) (‘the doctrine of fair use … permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which the law is designed to foster.’)

41 See, for example, Universal City Studios v Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000), aff'd Universal City Studios v Corley, 273 F. 3d 429 (2nd Cir. 2001); United States v Elcom, 203 F. Supp. 2d 1111 (2002); 321 Studios v MGM Studios, 307 F. Supp. 2d 1085 (2004).

42 This is an issue that has recently arisen in Australian litigation in the Sony v Stevens case. See [2002] FCA 906 (26 July 2002), available at http://www.austlii.edu.au/cgi-bin/disp.pl/au/cases/cth/federal%5fct/2002/906.html?query=eddy+stevens, last viewed on 14 July 2004. This decision was overturned in part on appeal to the full federal court: see Kabushiki Kaisha Sony Computer Entertainment v Stevens [2003] FCAFC 157 (30 July 2003), available at http://www.austlii.edu.au/au/cases7sol;cth/FCAFC/2003/157.html, last viewed on 14 July 2004.

43 Even the simple clarification that fair use could be used as a sword (i.e. cause of action) in a judicial proceeding, rather than as a mere defence to a copyright infringement action would be an improvement here, as noted above.

44 CDPA, § 50B(2); 17 U.S.C. § 1201(1)(f).

45 Some teaching and research purposes, for example, might be classified as ‘commercial’ but may well not compete with copyright holders' commercial interests and so should be protected under a new administrative mechanism. Working out whether a commercially interest might compete with a potential future commercial interest of the copyright holder will never be an easy task as current online file sharing cases in the United States demonstrate. However, the generation of some data about social norms on fair/legitimate uses of copyright works, taking these potential difficulties into account as much as possible, would still be a useful step forwards here.

46 This discussion focuses on a domestic approach to this issue. However, the suggestions made here could ultimately be expanded to the international level, particular if an inexpensive online dispute resolution procedure were to be employed—see infra.

47 Oversight by the Copyright Office would only be possible in jurisdictions with a Copyright Office, such as the United States. Many jurisdictions do not have a copyright registration system and do not have a Copyright Office. The dispute resolution procedure suggested by Lemley and Reese— supra—is focused on the American position and utilises a mechanism involving filing complaints with the Copyright Office and complaints being decided by an administrative law judge in that office: Lemley, M. and Reese, R.A. (2004) A Quick and Inexpensive System for Resolving Digital Copyright Disputes, University of California-Berkeley, School of Law, Public Law and Legal Theory Research Paper Series, suggested new 17 U.S.C. § 514(c) (available for download from the Social Science Research Network at http://ssrn.com/abstract=525682).

48 Rules for Uniform Domain Name Dispute Resolution Policy, Rules 2(b), 3(b), 5(b). Full text of Rules available at: http://www.icann.org/udrp/udrp-rules-24oct99.htm, last viewed on 24 January 2005.

49 Rules for Uniform Domain Name Dispute Resolution Policy, Rule 13 (‘There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint’). Full text of Rules available at: http://www.icann.org/udrp/udrp-rules-24oct99.htm, last viewed on 24 January 2005.

50 To some extent, this draws from the UDRP notion of the arbitrator(s) making a simple decision whether or not to order a domain name registrant to transfer a disputed domain name to a complainant. The analog here is a notion of arbitrator(s) making a decision whether or not to order a copyright holder to permit a particular use of a copyright work.

51 This might avoid situations such as that which arose in the 321 Studios case—supra—involving the manufacture of a device capable of facilitating both infringing and non-infringing uses of a digital copyright work.

52 This question is becoming increasingly problematic in the digital age with respect to software copyrights in particular. The recent appeal in the Lexmark litigation is a good example of courts revisiting issues relating to the initial copyrightability of certain classes of software code: Lexmark v Static Control Components, 387 F. 3d 522, 537 – 544 (2004) (majority holding particular software code to be uncopyrightable for various reasons including merger of idea and expression, application of scenes a faire doctrine and because the code operated as a ‘lockout code’ on the facts in question).

53 Section 107 of Title 17 of the United States Code actually contrasts ‘commercial nature’ with ‘nonprofit educational purposes’. The ‘educational purposes’ criterion has been omitted here to give the test a more general application and allow more flexible development of emerging social norms on fair use in the digital age.

54 [2002] FCA 906 (26 July 2002), available at http://www.austlii.edu.au/cgi-bin/disp.pl/au/cases/cth/federal%5fct/2002/906.html?query=eddy+stevens, last viewed on 14 July 2004. This decision was overturned in part on appeal to the full federal court: see Kabushiki Kaisha Sony Computer Entertainment v Stevens [2003] FCAFC 157 (30 July 2003), available at http://www.austlii.edu.au/au/cases/cth/FCAFC/2003/157.html, last viewed on 14 July 2004.

55 This assumes that the predominant use for such devices would be by digital pirates if fair users had more effective avenues to gain access to a work for legitimate use purposes.

56 See, for example, Universal City Studios v Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000), aff 'd Universal City Studios v Corley, 273 F.3d 429 (2nd Cir. 2001); United States v Elcom, 203 F. Supp. 2d 1111 (2002); 321 Studios v MGM Studios, 307 F. Supp. 2d 1085 (2004).

57 Such as the online file-sharing software disputed in the Napster and Grokster litigation—see supra. Fore a more detailed discussion of the recent file sharing disputes, see also Lemley, M. and Reese, R.A. (2004) Reducing digital copyright infringement without restricting innovation, Stanford Law Review 56, 1345, 1356 – 1366; Yen, A. (2005) Sony, tort doctrines, and the puzzle of peer-to-peer, Case Western Reserve University Law Review, forthcoming.

58 Lemley, M. and Reese, R.A. (2004) Reducing digital copyright infringement without restricting innovation, Stanford Law Review 56, 1345, 1356 – 1366; Lemley, M. and Reese, R.A. (2004) A Quick and Inexpensive System for Resolving Digital Copyright Disputes, University of California-Berkeley, School of Law, Public Law and Legal Theory Research Paper Series (available for download from the Social Science Research Network at http://ssrn.com/abstract=525682); Yen, A. (2005) Sony, tort doctrines, and the puzzle of peer-to-peer, Case Western Reserve University Law Review, forthcoming.