Volume 18, Number 6
September 2001

INTELLECTUAL PROPERTY LAW

New Exemptions to DMCA

By David P. Miranda

The Librarian of Congress, upon recommendation of the U.S. Copyright Office, has issued a ruling clarifying the Digital Millennium Copyright Act of 1998 (DMCA), permitting, in certain instances, the circumvention of access control technologies. The DMCA prohibits circumvention of access control technologies employed by or on behalf of copyright owners to protect their works, effective on October 28, 2000, or two years after the enactment of the DMCA. Because the DMCA's prohibition against circumvention raised unchartered technological and legal issues, Congress delayed the implementation of the law in order to permit a determination of whether noninfringing uses of particular classes of copyrighted works might be affected.

During the two-year period between enactment and the effective date of the provision, Congress asked the Librarian of Congress to make a determination as to classes of works to be exempted from the prohibition, based upon a recommendation from the Copyright Office. After the solicitation of public comments and hearings, the Copyright Office determined that two exemptions were necessary. One exemption addresses compilations consisting of lists of websites blocked by filtering software applications, and the other exemption concerns the right to penetrate electronic barriers protecting copyrighted materials when the barriers are erected as a result of a malfunction.

Certain software products, commonly known as "filtering software" or "blocking software," restrict users from visiting certain Internet websites. These software products include compilations of websites to which the software will deny access. This software is often used by schools, libraries, and parents to prevent access to inappropriate materials on their computers. Manufacturers of filtering software encrypt the names of blocked websites that are protected by copyright law as compilations.

In at least one instance ( Micro Systems Software, Inc. v. Scandinavia Online), an injunction was obtained against authors of a program that decrypted the listing of blocked websites. Such acts of decryption would likely violate DMCA § 1201(a)(1) without the exemption. The Copyright Office notes that there is legitimate non-infringing use of such compilations for the purposes of providing critique and comment on lists of websites blocked by filtering software. The Copyright Office finds that there is no alternative but to decrypt the encrypted list, in order to learn what websites are included in the filtering software.

The second exemption addresses users who are prevented from accessing certain works contained in software or databases because access control protections are not functioning as they were intended. In particular, libraries and educational institutions stated they have experienced instances where materials protected by access controls malfunctioned, and they could not obtain timely relief from the copyright owner. The Copyright Office determined that circumvention of access controls in these instances should not have a significant effect on the market for the work because copyright owners typically already will have been compensated for the use of the work.

The most significant aspect of the Copyright Office's recommendation may be its failure to provide an exemption for audiovisual works on digital versatile discs (DVDs). The recommendation notes that more comments and testimony were submitted on the subject of motion pictures on DVDs and the technological measures employed to protect them, such as the Content Scrambling System (CSS), than on any other subject in this rulemaking. CSS is an encryption system used on most commercially distributed DVDs. DVDs with CSS may be viewed only on properly licensed equipment.

Some argued an exemption was necessary to permit the circumvention of CSS because it prevents the user from making otherwise noninfringing uses of lawfully acquired copies, such as excerpting parts of the material on a DVD for a film class that might be considered a fair use. The Copyright Office found, however, that any harm caused by the existence of access control measures used in DVDs could be avoided by obtaining a copy of the work on VHS tape.

The Copyright Office also noted the recent decision in Universal City Studios, Inc. v. Reimerdes, which enjoined Internet website owners from posting or downloading computer software that decrypted digitally encrypted movies on DVDs, or from including hyperlinks to other websites that made the decryption software available. That ruling rejected the argument that a separate portion of the DMCA should be applied to permit reverse engineering of DVDs. The Copyright Office noted that the Universal City Studios case is on appeal and subsequent developments in that case or future cases could make the need to fashion an exemption for DVDs moot. The Copyright Office stated that it would proceed with caution before creating an exemption to accommodate reverse engineering that goes beyond the scope of congressional intentions.

The exemptions established by the Copyright Office will be effective until October 28, 2003. Prior to the expiration of that three-year period, the Copyright Office will initiate a new rulemaking process to consider what classes of marks, if any, should be exempt from § 1201 after October 28, 2003. Based upon the increasing use of and interest in DVDs, it is likely that the Copyright Office will again consider an exemption regarding DVD encryption technologies during its next rulemaking phase.

David P. Miranda is a member of the intellectual property law firm of Heslin Rothenberg Farley & Mesiti, P.C., in Albany, New York. He may be reached at dpm@hrfmlaw.com.

This article is an abridged and edited version of one that originally appeared on page 22 of IPL Newsletter, Winter 2001 (19:2).

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