Two Federal Courts of Appeals Interpret DMCA Anti-Trafficking Provision
The United States Courts of Appeals for the Sixth and the Federal Circuits have both recently issued opinions interpreting the anti-trafficking provisions of the Digital Millennium Copyright Act (“DMCA”). Both decisions were favorable to the defendant and each will likely have broad-reaching implications.1 The only other federal appeals court to interpret the anti-trafficking provisions, the Second Circuit, previously upheld a lower court decision in favor of a plaintiff.
The DMCA prohibits both the circumvention of a technological measure that “effectively controls access” to a copyright-protected work, 17 U.S.C. § 1201(a)(1), and the manufacture of, or trafficking in, products targeted at such circumvention, 17 U.S.C. § 1201(a)(2). The DMCA also contains a related anti-trafficking provision aimed at products that circumvent a technological measure that “effectively protects a right of a copyright owner” under the Copyright Act, such as a measure that restricts the copying or distribution of a work. 17 U.S.C. § 1201(b)(1).
At issue in the two most recent federal appellate court decisions (informally known as the “garage door opener” and “toner cartridge” cases) was the “access measure” anti-trafficking provision in Section 1201(a)(2). First, on August 31, 2004, the Federal Circuit concluded in Chamberlain v. Skylink that Skylink’s manufacture and sale of a universal garage door control that operates competitor Chamberlain’s garage door openers (“GDO”) did not violate the DMCA, because Chamberlain failed to demonstrate that there was a connection between “access” to its GDO code and any rights it might have in that code. Specifically, the court ruled that Section 1201 “prohibits only forms of access that bear a reasonable relationship to the protections that the Copyright Act otherwise affords copyright owners” (emphasis added). The court reasoned that the DMCA created only new liability, not new property rights, and that the DMCA therefore did not “rescind…the basic bargain” between copyright users and owners, “granting the public noninfringing and fair uses of copyrighted materials.” Otherwise, the court noted, dismantling a burglar alarm to “access” a house containing copyright-protected books would constitute a DMCA violation.
The Federal Circuit’s decision in Chamberlain is in direct conflict with the Second Circuit’s November 2001 holding in Universal City Studios v. Corley, in which the Second Circuit rejected an argument that Section 1201 was unconstitutional because it did not preserve the constitutional balance between users and owners, reasoning that the DMCA “does not concern itself with the use of those materials after circumvention has occurred,” and thus does not impact fair use. In reading Section 1201 to require a reasonable relationship between “access” and other rights and limitations under the Copyright Act, the more recent Federal Circuit decision in Chamberlain has given copyright users a considerable victory.
Just this week, on October 27, 2004, the Sixth Circuit released its opinion in Lexmark v. SSC, vacating the district court’s grant of a preliminary injunction against defendant SSC and remanding the case back to the district court for further consideration. The decision involved a claim by plaintiff Lexmark, a manufacturer of computer printers and toner cartridges, that defendant SSC had violated Section 1201(a)(2) by trafficking in computer chips enabling use of SSC’s toner cartridges in Lexmark printers. The Sixth Circuit remanded for consideration of whether Lexmark’s authentication code constituted copyrightable expression, and if so, whether Lexmark’s “access” mechanisms “effectively” control access by prohibiting other means of accessing its code. The court suggested that Lexmark’s access measures do not “effectively” control access, as required under the DMCA for a finding of liability. Interestingly, the court held that SSC might have a viable fair use defense, depending on the impact of its actions on the commercial purpose of, and market for, the authentication code, without regard to the market for toner cartridges. Whether other courts would follow this line of reasoning is questionable, since it is difficult to envision the value of an authentication code without regard to the product protected by that code.
Nevertheless, the Chamberlain and Lexmark decisions represent significant steps in the evolution of the DMCA in the courts. We have closely followed the DMCA’s jurisprudential development since its adoption in 1998. If you have any questions about the DMCA or this decision, please contact us.
1 These decisions concern Title I of the DMCA. The statutory “safe harbor” provisions for ISPs, and the recent decisions concerning RIAA’s use of subpoenas to discern ISP subscriber identities, involve Title II of the DMCA.