September 16, 2020

 

  • The Honorable Howard Coble
  • Chairman
  • Subcommittee on Courts and Intellectual Property
  • B351A Rayburn House Office Building
  • Washington, D.C. 20515
  • Dear Mr. Chairman:

The undersigned law teachers write to express our concern over legislation to implement the 1996 WIPO Copyright and Performances and Phonograms Treaties suggested by the Administration and recently introduced as H.R. 2281 and S. 1121. That concern is focussed on the provisions of proposed new Section 1201 of the Copyright Act, which would address the "circumvention of copyright protection systems" by imposing a variety of civil and criminal penalties (as detailed in proposed Section 1203) on the manufacture or sale of technologies capable of being used to overcome technological safeguards applied to copyrighted works, and on the use of such technologies to gain access -- for whatever purpose -- to protected works.  Although it would be codified in Title 17, Section 1201 would not be an ordinary copyright provision; liability under the section would result from conduct separate and independent from any act of copyright infringement or any intent to promote infringement. Thus, enactment of Section 1201 would represent an unprecedented departure into the zone of what might be called paracopyright -- an uncharted new domain of legislative provisions designed to strengthen copyright protection by regulating conduct which traditionally has fallen outside the regulatory scope of intellectual property law.

In particular, we are skeptical about the broadly sketched prohibitions of proposed Section 1201, which could be applied to various multi-purpose computers and home electronic devices, as well as to software programs, with the ultimate unintended effect of chilling the very expressive activities which the copyright law is designed to encourage. We believe that there is a real risk that, if enacted as currently drafted, Section 1201 would impede encryption research which helps ensure secure networks, prevent legitimate reverse engineering in the development of new software, and effectively overrule the Supreme Court's decision in Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (the fountainhead of the VCR revolution).  It also could jeopardize education and research by allowing copyright owners to lock up public domain materials and by frustrating the fair use rights of information consumers.

We also note that the proposed savings clause of Section 1201(d) is of extremely limited -- if any -- real utility. Because proposed subsections 1201(a) and (b) define entirely new wrongs, independent of copyright infringement itself, and subsection (c) creates a cause of action under the Tariff Act of 1930, the preservation of defenses currently available in infringement actions brought under 17 U.S.C. Sec. 501 would have no bearing on the operation of the new provisions..  In other words, the savings clause does not mean that any fair use defense would be available against a claim brought under this new paracopyright regime. Indeed, given the design of Section 1201, it is difficult to see how such a defense could be afforded in connection with such claims, at least where the prohibitions on technology in subsections (b) and (c) are concerned.

All of us believe that the problem of circumvention of technological safeguards is an important one, and many of us would consider supporting legislative limits on particular "black box" technologies developed and marketed specifically to promote or enable infringement. However, we believe that the utmost caution is appropriate in creating new non-infringement- based crimes and civil wrongs within the scheme of the Copyright Act. At this time, therefore, Congress should act to bolster technological safeguards with new forms of legal liability only to the extent required under the WIPO treaties.

There is some question whether any new legislation is required to bring U.S. copyright  into conformity with the treaties, which require that (to quote Article 11 of the WIPO Copyright Treaty) "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...." . As the law stands today, engaging in circumvention in violation of the rights of a copyrighted owner will constitute a direct infringement of copyright, and the intentional marketing of goods or services designed to promote such circumvention will be actionable as an inducement of infringement; vicarious liability may apply to businesses which provide circumvention services in the course of infringement, and under Sony contributory liability upon manufacturers, importers, sellers and distributors of non-staple articles of commerce that circumvent in the course of  infringement, and upon staple articles of commerce that have no substantial noninfringing uses. SeeA&M Records v. General Audio Video Cassettes, 948 F. Supp. 1449 (C.D. Cal. 1996) and Compaq Computer Corp. v. ProComm Tech, 908 F. Supp. 1409 (S.D. Tex. 1995).

In addition, when Congress has examined a specific technology, and determined that there is a way to prevent the distribution of devices with no substantial non-infringing uses, while preserving both the public's fair use rights and the ability of legitimate users of that technology to continue to employ useful devices, it has shown itself well able to craft specific, detailed provisions. Thus, the Audio Home Recording Act, 17 U.S.C. 1001, et seq., already prohibits circumvention of specified technological safeguards applied to digital audio recordings, as well as trafficking in devices whose primary purposes or effect is to circumvent those protection measures. In addition, the Communications Act addresses unauthorized reception of cable and satellite services (including encrypted or scrambled services), and trafficking in equipment designed to facilitate such unauthorized reception. See 47 U.S.C. secs. 553(a)(1) -(2), 605 (a) and (e)(4). Further relief against unauthorized signal descrambling is afforded under the Electronic Communications Privacy Act, 18 U.S.C. sec. 2511, while patent law remedies are available against the makers of devices designed to defeat patented technological safeguard systems. In sum, U.S. law already provides an array of legal protections and remedies against circumvention and the facilitation of circumvention which is almost certain unmatched in the domestic laws of any other country.

To the extent that WIPO treaties may require the enactment any new U.S. legislation at this time, they clearly do not mandate the sweeping prohibitions of proposed Section 1201. Had the December 1996 WIPO Diplomatic Conference adopted the original draft language on "Obligations concerning Technological Measures" in the final treaties, the analysis might well be different: That language would have called on treaty states to "make unlawful the importation, manufacture or distribution of protection defeating devices....." In deleting this language and substituting the current formulation, however, the Diplomatic Conference conclusively rejected the proposition that the duty to provide protection and remedies against "circumvention" must take the form of general prohibitions on devices. Nevertheless, the bills now pending take exactly this approach, and their broad prohibitory language poses a very real risk that good and useful technologies (such as encryption) will be outlawed.

Today, we have no specific idea of what sorts of effective technological measures will be adopted by copyright owners or what means would-be infringers may adopt to defeat them.  Until such time as it becomes possible to frame legislation which will safeguard the privilege to circumvent technological protection for fair uses like reverse engineering, ensure that copyright owners do not use technological measures as a ruse for locking up public domain material, and preserve useful technologies with substantial applications unrelated to copyright infringement, the Congress should reject the paracopyright approach of H.R. 2281 and S. 1121. If any new legislation is required now to fulfill the mandate of the treaties, it should of the kind that those treaties specifically anticipate -- a measure providing protection and legal remedies against the act of circumvention itself, when that circumvention is undertaken for an unlawful purpose.

The copyright system of the United States, with its traditional emphasis on defining rights in particular works and providing effective remedies against the infringement of those rights, has been a notable success. Over two centuries, it has fostered education, research and individual creativity, as well as the growth of copyright industries which today dominate the international marketplace in information products. In pursuing the worthy aim of implementing the WIPO treaties, we should not rush to drastically alter that tested system in ways that may produce unsought, unforseen, and unwelcome consequences.

Sincerely,

Keith Aoki (Oregon)

Ann Bartow (Idaho)

Yochai Benkler (NYU)

Stuart Biegel (UCLA)

Thomas Blackwell (Chi-Kent)

William Boyd (Arizona)

James Boyle (American)

Dan L. Burk (Seton Hall)

Fred Cate (Indiana)

Margaret Chon (Seattle)

Julie E. Cohen (Pittsburgh)

 Rochelle Dreyfuss (NYU)

Eric Easton (Baltimore)

 Niva Elkin-Koren (Villanova)

Tom Field (Franklin Pierce)

 William Fisher (Harvard)

Eric M. Freedman (Hofstra)

Michael Froomkin (Miami)

Jon Garon (Western State)

Laura Gasaway (UNC)

 Llew Gibbons (Orlando)

Paul Heald (Georgia)

Peter Jaszi (American)

Mary Brandt Jensen (Mississippi)

Peter Junger (Case Western)

Dennis Karjala (Arizona)

Etan Katsh (Massachusetts)

Robert Kasunic (Baltimore)

Robert Kreiss (Dayton)

 Leslie Kurtz (UC-Davis)

 Roberta Kwall (DePaul)

Michael Landau (Georgia St.)

Mark Lemley (Texas)

Jessica Litman (Wayne State)

Lydia Loren (Lewis & Clark)

 Steve McJohn (Suffolk)

Charles McManis (Washington U)

Peter Martin (Cornell)

Peter Menell (UC-Berkeley)

Neil Netanel (Texas)

Charles Nesson (Harvard)

Robert Oakley (Georgetown)

. Ray Patterson (Georgia)

 David Post (Temple)

 Ann Puckett (Georgia)

Margaret Jane Radin (Stanford)

Arti Rai (San Diego)

Leo Raskind (Minnesota)

Jerome Reichman (Vanderbilt)

 Joel Reidenberg (Fordham)

David Rice (Roger Williams)

William D. Rich (Akron)

Jon Romberg (Seton Hall)

 Michael Rustad (Suffolk)

 Pamela Samuelson (UC- Berkeley)

David Sorkin (John Marshall)

Peter Swire (Ohio State)

Jonathan Weinberg (Wayne State)

Alfred Yen (Boston College)

Diane Zimmerman (NYU)

affiliations indicated for purposes of indentifcation only

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