In the most recent development in the whack-a-mole saga of the Star-Club recordings, Apple Corps filed suit last week in the Southern District of Florida against Fuego Entertainment, which plans to release Star-Club tapes it acquired from the collection of one Jeffrey Collins. Here is the complaint. And here is Wired’s coverage.

Apple Corps alleges trademark infringement and dilution for the use of The Beatles’ registered stylized mark, violations of their likeness rights for the inclusion of photos of Ringo et al on the defendants’ website, and various unfair competition claims. More importantly, Apple Corps sues for common law copyright infringement and violation of the federal civil anti-bootlegging statute, 17 USC § 1101 .

As I’ve argued before, and perhaps most long-windedly here, 17 USC § 1101 and its criminal counterpart 18 USC § 2319A are constitutionally flawed. In short, these two statutes extend exclusive rights nearly identical to those conferred by copyright law to subject matter that is outside of the scope of Congress’ copyright authority. Moreover, the statutes confer those rights without imposing any durational limit. Live performances, because they are not Writings, aren’t the sort of thing copyright law recognizes as protectable. And even assuming they were, they cannot be protected perpetually.

The statutes are defended on the grounds that Congress has independent authority to legislate under the Commerce Clause and can do so free of any limits imposed by Article I, Section 8, Clause 8. So far this argument, as flawed as it is, has carried the day in the Courts of Appeals. Most recently, the Second Circuit bought this line in Martignon. But before Martignon, the Eleventh Circuit considered the constitutionality of the anti-bootlegging statutes in US v. Moghadam. There the court held that because extending copyright-like protection to non-Writings was not “fundamentally inconsistent” with the aims of Clause 8, the legislation could stand. Notably, the Eleventh Circuit explicitly refused to consider Moghadam’s argument, first raised on appeal, that the statute was unconstitutional because it lacked any durational limit. But the court did intimate on several occasions that it may well have found that argument more persuasive, if properly raised.

Now, I think the Eleventh Circuit’s fundamental inconsistency test was invented from whole cloth and lacks any obvious foundation. And I’m of the opinion that the court misapplied its own test by concluding that the Framers weren’t particularly concerned with limiting the scope of copyrightable subject matter to Writings. That said, Apple Corps v. Fuego, in the event it results in an opinion and appeal, might offer the Eleventh Circuit the chance to revisit these questions. At the very least, it would finally present the court with an opportunity to examine the durational question so invitingly left open in Moghadam.

1. I have to admit, The Beatles bore me to tears. If you want to talk about English bands doing international residencies, I’ll take this one any day. [↩]

Here is the abstract:

This Article attempts to reconcile the breadth of the modern Commerce Clause with the notion of meaningful and enforceable limits on Congress’ copyright authority under Article I, Section 8, Clause 8.

The Article aims to achieve two objectives. First, it seeks to outline a general approach to identifying and resolving inter-clause conflicts, sketching a methodology that has been lacking in the courts’ sparse treatment of such conflicts. Second, it applies that general framework to the copyright power in order to outline the scope of constitutional prohibitions against quasi-copyright protections. In particular, this application focuses on the federal anti-bootlegging statutes and the Second Circuit’s recent analysis of them in United States v. Martignon.

In broad terms, the limits inherent in Clause 8 divide into two categories: limits on the sorts of works in which Congress can grant exclusive rights and limits on the types of exclusive rights Congress can use to protect those works. Those limits constrain Congress any time it attempts to legislate within the core subject matter of its copyright power-grants of exclusive rights in expression. Otherwise, they are effectively stricken from the Constitution, violating the basic canon of construction that rejects readings that render text superfluous.

Once the limits of Clause 8 are understood to apply regardless of the power Congress employs, a component of the public domain firmly and permanently rooted in the Constitution emerges. This public domain, defined by the limits of Clause 8, includes both unoriginal and unwritten expressive works – two classes of works that, as a constitutional matter, cannot be the subject of federal grants of exclusive rights. By extending exclusive rights to unwritten live performances, the antibootlegging statutes run afoul of the external limits of Clause 8.

Anywho, all that talk of 230 got me thinking about defamation liability online more broadly and prompted me to dust off an old article I wrote a couple years back, Relative Access to Corrective Speech: A New Test for Requiring Actual Malice. It appeared in the California Law Review as a student comment, but it isn’t entirely shameful, so take a look if inclined.

Here’s the abstract:

This Article reexamines the First Amendment protections provided by the public figure doctrine. It suggests that the doctrine is rooted in a set of out-dated assumptions regarding the media landscape and, as a result, has failed to adapt in a manner that accounts for our changing communications environment.

The public figure doctrine, which imposes the more rigorous actual malice standard of fault on defamation plaintiffs who enjoy greater access to mass media, was constructed in an era defined by one-to-many communications media. Newspapers, broadcasters, and traditional publishers exhausted the Court’s understanding of the means of communicating with mass audiences. As a result, the public figure doctrine looks only to the status of the plaintiff in determining the appropriate degree of fault.

But the development of many-to-many media, like the internet, challenges the assumptions that underlie the public figure doctrine. Many-to-many media increase access to the means of mass communication, creating variety among speakers that Court neither considered nor predicted in constructing the public figure doctrine. In such a heterogeneous and dynamic communications environment, the uniform treatment of defamation defendants should be questioned.

This Article suggests that in determining whether the actual malice standard should apply, courts should consider not only variations among plaintiffs, but they should also demonstrate sensitivity to the increased diversity among defamation defendants. By considering a plaintiff’s ability to avail herself of corrective counter speech not in isolation, but in light of the reach of the defendant’s publication, courts can more usefully apply the actual malice standard in the contemporary communications environment.

Beginning in the summer of 1981, three friends set out to recreate the iconic adventure film in their basements and back yards, using a betamax recorder and costumes collected from the local Salvation Army. The project was an exercise in infringement from the outset, as Wired reported a few months back:

Zala, Strompolos and Lamb began their Raiders: The Adaptation odyssey 25 years ago by sneaking a tape recorder into a Raiders screening. Listening to the dialog and sound effects, Zala, Strompolos and Lamb spent a year creating a notebook (Book of Ideas and Memos. Indy and Toht’s Notes: Don’t Touch!!) filled with detailed storyboards.

Nowadays, these kids could be in jail for pulling such a stunt. Armed with their illicit audio recording and a script purchased at a local bookstore – the original Raiders wouldn’t be available on VHS for years – the filmmakers undertook the immense task of recreating a $26 million Hollywood film on their allowances.

As the Village Voice reported, it was no easy task:

Achieving such a faithful copy required a great deal of ingenuity. Replicating the film’s signature boulder sequence, for example, became a years-long epic in itself. A first version, a hulking lump of bamboo poles and duct tape, proved too large to leave the bedroom in which it was constructed. Boulder no. 2, made from chicken wire, blew away in a hurricane. The third model, cast in fiberglass in a hand-dug dirt mold with help from a local artisan, finally did the trick (even surviving Katrina many years later; the fiberglass boulder still sits in the backyard of Zala’s mother’s house). Trained monkeys being hard to come by in Mississippi, the boys substituted a dog named Snickers for the comic-relief animal bit.

But after six years of summer-break shooting, when the principals were headed off to college, The Adaptation was in the can.

And in the can it stayed, until 2003 when a high generation copy found its way into the hands of director Eli Roth, who passed a copy on to Spielberg. No stranger to childhood filmmaking, Spielberg loved it and sent letters to the now-adult creators of The Adaptation praising them and their film. Since then, The Adaptation has become something of a film festival favorite, playing on a handful of screens in a handful of cities every year. You can see a clip here.

With Spielberg’s tacit, if not explicit, approval, these guys seem unlikely to have to contend with copyright lawyers knocking on their doors anytime soon. Although I can’t help but think that the limited screenings and lack of DVD or online distribution are due to fears of offending the vengeful gods at Paramount.

Assuming those gods came down from on high for a bit of good old fashioned smiting, what aside from a sacrificial goat could be offered up as appeasement? Do these 12 year olds or their adult selves have a defense for creating and publicly performing their pre-pubescent masterwork?

Given the courts’ transformation fetish, this is something of a tough question. These young filmmakers were in no way interested in commenting on, much less subverting, the cultural meaning offered by Spielberg’s Raiders. Quite the opposite. They were interested in recreating, in as painstakingly-replicated a form as possible, the imagery and meaning they perceived sitting in a darkened theater in the summer of 1981. There was no attempt to reflect the juvenile notions of adventure or the not-so-subtle gender dynamics of the film by replacing the grizzled Harrison Ford with a 12 year old boy. Maybe that would have worked, but that isn’t what these kids were up to.

And all for the better, I say. Perhaps the most remarkable thing about The Adaptation, aside from the talent and persistence of these young filmmakers, is the total absence of irony. There is no mocking, no knowing winks; the fourth wall remains intact throughout. The purity of their unapologetic love of this movie is apparent.

Earlier in the week, Rebecca Tushnet blogged about the recent fair use conference at Columbia. An argument made there by Laura Heymann seems relevant to this discussion. Here is Professor Tushnet paraphrasing Professor Heymann:

Courts approach transformativeness from the wrong direction. They focus on the user as author, asking how much the defendant contributed and what sort of artistic process she used. Instead, they should ask how the reader engaged with the defendant’s use. The current focus leads to judicial skepticism when the defendant hasn’t added much, but readers recognize change more readily.

I’m not sure that this has to be an either/or. But at least in cases like this one, I think this argument has some appeal. While the makers of The Adaptation were engaged in a literal remaking of Raiders, watching it 27 years later in a room of adults, the transformativeness of The Adaptation can’t really be questioned. Every line, every action sequence, hell – every frame of this film offers an entirely different experience than the original film. Lines that were not written for laughs are impossibly funny coming from a 12 year old whose Nazi uniform is an altered Boy Scout outfit. Hackneyed actions sequences become impossibly dangerous – for example, the scene in which a Nepalese bar is engulfed in flames was filmed in the family basement, with no shortage of real flames. Regardless of the creators’ intent, and despite their attention to every detail, The Adaptation offers its audience a new meaning.

As Pitchfork has reported,¹ Fox neither sought nor received permission from Win Butler and company for the use of the song. There are a few questions to ask here.

As Frank Pasquale asks, should a seemingly with-it young band refuse to buy into permission culture by taking legal action? Something in the power dynamic between an indie rock band and News Corp. inclines me to say that if there are ever appropriate circumstances to call on the coercive power of copyright law and the courts, this might be one of them. That is, if they had a case.

Call me doctrinal, but I’m more interested in the substance of Fox’s defense here.

Let’s start with the public performance. The public performance right in sound recordings is narrow. So as long as Fox isn’t providing a digital audio transmission, it is free to publicly perform “No Cars Go” just like your local radio station. Of course, Fox and its affiliates would need to make sure they are paid up with the performance rights agencies to cover the underlying rights in the composition. But I think we can assume they are okay on that front.

What about the copy Fox likely created when it added “No Cars Go” to its NFL promo? Fox relies, as they did a couple of years back when it made use of a track from famously anti-corporate D.C. hardcore outfit Minor Threat, on a statutory defense to copyright infringement. No, not fair use. Fox relies on the less frequently invoked Section 112 ephemeral recordings defense. If the statutory defenses of Title 17 are the Brady children, Section 112 is Cousin Oliver.

It provides in relevant part:

Notwithstanding the provisions of section 106 [17 USCS § 106], and except in the case of a motion picture or other audiovisual work, it is not an infringement of copyright for a transmitting organization entitled to transmit to the public a performance or display of a work, under a license, including a statutory license under section 114(f) [17 USCS § 114(f)], or transfer of the copyright or under the limitations on exclusive rights in sound recordings specified by section 114(a) [17 USCS § 114(a)], or for a transmitting organization that is a broadcast radio or television station licensed as such by the Federal Communications Commission and that makes a broadcast transmission of a performance of a sound recording in a digital format on a nonsubscription basis, to make no more than one copy or phonorecord of a particular transmission program embodying the performance or display, if–

(A) the copy or phonorecord is retained and used solely by the transmitting organization that made it, and no further copies or phonorecords are reproduced from it; and

(B) the copy or phonorecord is used solely for the transmitting organization’s own transmissions within its local service area, or for purposes of archival preservation or security; and

(C) unless preserved exclusively for archival purposes, the copy or phonorecord is destroyed within six months from the date the transmission program was first transmitted to the public.

Well, that explains it, right?

Section 112 says that a broadcaster can make a copy of a sound recording incidental to a broadcast transmission. So long as that copy is used solely for the organization’s own transmissions and is destroyed after 6 months, or preserved solely for archival purposes, the creation of that copy is not an infringement.

There is at least one lingering question here. Is Fox, who presumably created the promo, a transmitting organization? Individual Fox affiliates likely are since they do the transmitting. But maybe Fox looks more like a producer here than a broadcaster. See Agee v. Paramount Communs., 59 F.3d 317 (2d Cir. 1995) (holding that a producer was not eligible for the section 112 defense, but individual stations were). But the Agee case is distinguishable – the content was pre-recorded, and Paramount conceded that it was not a transmitting organization. So Fox looks to be on reasonably strong footing here.

I’ve been thinking about the simultaneous fixation provision lately. Typically a work is fixed “when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” But since some would-be copyright holders broadcast live events, for example the Superbowl, that are not fixed under this definition at the time of broadcast, the Copyright Act fudges on the fixation requirement. A work that is being transmitted is fixed “if a fixation of the work is being made simultaneously with its transmission.” So if Fox is simultaneously recording and transmitting its broadcast, the Copyright Act permits the legal fiction that the entire work was fixed at the kickoff.

Now I’ll admit, I have some fundamental concerns about the simultaneous fixation rule. In fact, I have a sneaking suspicion that it’s unconstitutional. But more on that another day. More on point, something strikes me as more than a little unfair when we consider the juxtaposition of the simultaneous fixation rule and the ephemeral recording defense. Simultaneous fixation allows the NFL and Fox to assert full-fledged copyrights in the live broadcasts of games. They expect copyright law to avert its eyes to the rather inconvenient fact that these broadcasts are not fixed, but are ephemeral live performances. But in the next breath they ask copyright law to ignore the reproduction of the Arcade Fire’s song, in part, because that recording is incidental to an ephemeral broadcast. Maybe those positions are not strictly inconsistent, but it seems to me that the NFL and Fox have managed to have it both ways.

1. I sincerely hope I never have occasion to link to that publication again. [↩]

The issue centered around Healthcare’s use of a robots.txt file. Web spiders, or robots, automatically scour the web and copy the contents of publicly accessible web pages so that search engines and archives can index and preserve their contents. Site owners who prefer not to have their site’s indexed or archived can add a file named “robots.txt” in order to state their preference that the spider ignore the site, or certain portions of it. The Internet Archive’s policy on robots.txt files states that when it finds one, it will stop archiving the site and disable access to previously archived versions.

Harding, in the course of investigating assertions of infringement made by Healthcare against Harding’s client , accessed archived copies of the Healthcare site. Healthcare argued that it added a robots.txt file to its site and, as a result, denied access to older versions of that site. According to Healthcare, the only way Harding could have accessed its site was by circumventing its robots.txt “protection measure.” But the court found that, because of a malfunction at the Internet Archive, Harding simply accessed the Wayback Machine through the normal means where it found archived copies of the Healthcare site. Since Harding took no steps to avoid or bypass any protection measure arguably restricting access to the site, it could not have circumvented in violation of section 1201.

The court’s analysis on the circumvention point is correct, as far as it goes. The problem, from my perspective, is that the court ever got to the question of circumvention. Section 1201(a) provides:

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

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.

The court, after dutifully reciting this definition, went on to conclude that under the circumstances “the robots.txt file qualifies as a technological measure effectively controlling access to the archived copyrighted images of Healthcare Advocates.” The court to its credit, explicitly avoided any general conclusions about whether robots.txt qualifies as an effective technological protection measure, stating that its “finding should not be interpreted as a finding that a robots.txt file universally qualifies as a technological measure that controls access to copyrighted works under the DMCA.”

But the court’s conclusion that robots.txt functions as an effective TPM, even here, is mistaken. Think first of how robots.txt functions in the everyday non-Internet Archive context. A website operator adds a robot.txt file with the goal of warding off those pesky spiders and robots. Every web browser on the planet remains free to access this content. In fact, the average user virtually never has reason to know or care whether a site includes a robots.txt file. Obviously there is no restriction on this variety of access.

But just as users are free to access these sites, so too, as a technological matter, are those dreaded robots and spiders. Robots.txt does not impose any technological barrier whatsoever. A spider need not avoid or bypass robots.txt in order to access those sites; it simply needs to disregard it – no application of information necessary.

Robots.txt, after all, is something of a gentleman’s agreement. It is, by internet terms, a polite request that one’s hoard of robots and spiders avoid accessing particular directories, and nothing more. The force of good etiquette is not sufficient to produce a technological protection measure. The robots.txt protocol is just a convention. And one cannot, under the DMCA, point to a convention that imposes no technological restraint on accessing a work and claim that it functions as a TPM.

Imagine a book publisher who prints up standard English-language, text-on-both-sides, non-invisible-ink, pages-freely-turnable books with a clear notice on the cover that states “We, the publishers, would rather appreciate it if you would refrain from opening this book and perusing its text should you find it on the sidewalk unattended.” This notice, no matter how politely worded and widely followed, does not give rise to a DMCA claim when a curious passerby browses the book.

What if the local library decides, on its own accord, to enforce that notice? Does it magically transform into a TPM? “Magically,” here, signifies that this question is rhetorical in nature. Now, the library may well have its own technological means of preventing access to certain books, among them books with the no-reading notice. Assuming those means independently satisfy the requirements of 1201, they could be effective TPMs. But one who circumvents the library’s TPM cannot reasonably be said to have circumvented the notice on the book cover.

So that tortured analogy was all a means to say that the court here confused an alleged violation of the Internet Archive’s own access controls, which were triggered voluntarily by the robots.txt file, with alleged violations of robots.txt itself. Of course, Healthcare’s own briefing undoubtedly didn’t do much to clarify the conflation inherent in its own argument. Since there was no circumvention, this confusion didn’t hurt Harding. But any suggestion that robots.txt serves as an effective TPM could hurt plenty of companies in future litigation.

The district court dismissed the indictment, holding that 2319A violated the limited times and Writings requirement of Article I, Section 8, Clause 8. According to Judge Baer, since 2319A conferred copyright-like rights in ephemeral live performances and did so without imposing any durational limit on that protection, the statute was repugnant to the limits demanded by Clause 8. Even though the Commerce Clause provides seemingly independent authority for the regulation of bootleg recordings, the court understood that Congress cannot escape the limits in one grant of authority by acting inconsistently under another.

The Second Circuit, in a morass of confused logic and strained analogies, holds today that 2319A creates no conflict with Clause 8 because 2319A is not a “copyright law.” Before wading through the tangle of missteps that led the court to this conclusion, it’s worth pointing out the sole silver lining of this otherwise black cloud of an opinion:²

we conclude that Congress exceeds its power under the Commerce Clause by transgressing limitations of the Copyright Clause only when (1) the law it enacts is an exercise of the power granted Congress by the Copyright Clause and (2) the resulting law violates one or more specific limits of the Copyright Clause.

Not quite how I’d put it, but this recognition – that the limits of the Copyright Clause can affirmatively restrain congressional action ostensibly taken pursuant to the Commerce Clause – is an important one. Despite the fact that the Second Circuit fails to appropriately apply its own standard, the court’s abstract confirmation that the Commerce Clause cannot run roughshod over Clause 8, and the rest of the Constitution for that matter, is sadly a fairly significant step forward in our constitutional copyright jurisprudence.

But from there, things quickly go down hill – and a very steep hill at that. The court concludes that 2319A, while copyright-like, is not a “copyright law” and therefore not enacted pursuant to the Copyright Clause. As a result, 2319A is free to ignore and even contradict the limits imposed by Clause 8. This conclusion is terribly misguided. The two subsections of 2319A at issue here create rights substantively equivalent to those Congress could enact through the exercise of its authority under Clause 8. Section 2319A(a)(1) prohibits, inter alia, unauthorized reproduction of a recording of a live musical performance, while § 2319A(a)(3) prohibits the unauthorized distribution and sale of such a recording. Only the performer has the right to authorize another to engage is copying, distribution and sale of recordings of original expressive works. If that isn’t a piece of legislation Congress could enact under Clause 8 – assuming a durational limit of course – I simply don’t know what is.

But yet, the Second Circuit, displaying an ability to draw dispositive distinctions where no mere mortal could even perceive grounds for differentiation, is convinced that 2319A and the Copyright Act share no common constitutional ancestor. Taken separately or together, the bases upon which the court attempts to justify this conclusion are insufficient.

According to the court, unlike true copyright legislation, “2319A does not create and bestow property rights upon authors or inventors, or allocate those rights among claimants to them.” I’ll not quibble with the court’s formulation of the essence of copyright laws, although my silence is by no means an indication of assent. But even assuming this distillation is correct, the court gives us no good reason to believe 2319A doesn’t serve precisely this function of creating and allocating property rights in expression. ³

First the court suggests that 2319A doesn’t bestow property rights because it is a criminal statute. Following the Second Circuit’s logic, criminal sanctions that have long been considered part of “Copyright proper” are in fact not copyright laws at all. That’s news to, well, just about everyone. Criminal sanctions, according to the court, don’t create rights, they merely create a power in the government to protect the interest of the nominal rightsholder. Now I’m certainly no property scholar, but it seems to me most of our property “rights” eventually reduce to the question of whether or not the “government [will] protect the interest” or not. Surely, the enforcement mechanism, whether civil or criminal, is not of such fundamental importance that it changes the constitutional source of the protected interest.

The court’s other arguments are even weaker. First it points out that under the Copyright Act, authors are afforded “an extensive bundle of rights.” Under 2319A, by contrast, the performer only gets “one right – the right to allow the fixation of his or her performance.” First, this is just flat out wrong. The performer also has the exclusive right to authorize reproduction, copying, sale, distribution, or transmission of that performance. The court may want to take a closer look at the text the next time it is asked to pass on a statute’s constitutionality. Beyond that, even assuming the court is correct, it’s not clear that this distinction makes any bit of difference. So the Copyright Act gives a bundle of rights, therefore any legislation that grants exclusive rights in original expression is not a copyright law so long as those rights are fewer in number than “a bundle.” Really? How many rights are in a standard issue bundle anyway?

The bigger problem, of course, is that the court is rather unimaginatively using the current Copyright Act as the metric for determining whether legislation is an exercise of the power granted by the Copyright Clause. The current Copyright Act is not the entire universe of Congress’ power under Clause 8. Take a look at the 1790 and 1909 Acts if you need further proof on that point. Certainly Congress could amend the 1976 Act to provide fewer than the current bundle of rights. It could, I have no doubt, provide only a single right if it so chose. Would the Copyright Act no longer, on that account, be legislation enacted pursuant to Clause 8? I rather think not.

The same applies to the court’s astute observation that the current Copyright Act permits the transfer of rights. If Congress, in its wisdom, chose to prevent copyright holders from transferring their rights, Clause 8 would certainly not pose a barrier. Nothing in the text of Clause 8 even hints at such a limitation on the power to enact copyright legislation. How then does this consideration weigh in favor of distinguishing 2319A from “real copyright law”? Quite simply, it doesn’t. Or at least shouldn’t.

The Second Circuit failed to articulate a single reason why 2319A does not serve the very same function⁴ envisioned by the Framers when they drafted Clause 8. Indeed, consider the text that precedes the section 106 bundle:

the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

The exclusive rights created and bestowed by 2319A, which provide performers with an exclusive right to authorize the reproduction, distribution, and transmission of their musical performances, would feel right at home in this list, were it not for their unconstitutional lack of a durational limit.

1. I should note that I was one of the principal authors of an amicus brief filed in support of Martignon on behalf of a distinguished group of copyright and constitutional scholars. So my opinion on the case is anything but unbiased. [↩]
2. The other heartening aspect of this opinion is its recognition that the First Amendment may still have some role to play when purportedly non-copyright laws restrict the ability to archive and disseminate speech. Hopefully the district court takes the Second Circuit’s invitation to examine that issue more directly. [↩]
3. I must admit the phrase “property rights in expression” makes me cringe. [↩]
4. 2319A certaintly doesn’t serve the same ideals, but that wasn’t part of the Second Circuit’s cursory inquiry. [↩]

Under the DMCA and its analogs, enacted pursuant to Article 11 of the WIPO Copyright Treaty, the prohibitions on circumvention and trafficking apply only to technological protection measures deemed “effective.” Before getting into the particulars of the statutory definitions of “effective,” it’s worth considering broadly the ways in which effectiveness can be gauged. A couple of general approaches to effectiveness seem worth considering.

First, we might ask whether a protection measure, in the absence of acts of circumvention, is designed in a way that limits access and copying. This metric of inherent effectiveness assumes an idealized environment in which pesky 15 year olds and academic researchers don’t throw a wrench into your lovingly-designed DRM scheme. Since effectiveness is measured only within this unchanging hypothetical environment, it is static. Once a protection measure is deemed effective under this test, that status isn’t up for reexamination, regardless of intervening changes in the real world.

This is a forgiving standard, but not an empty one. It isn’t – or at least shouldn’t – be enough that the designer of the protection measure intend or hope that it limit access or copying. Indeed, a rigorous application of this standard would likely render some widely deployed protection measures ineffective. The once-popular CD-based copy protection schemes, which limited use only on Windows machines with autorun enabled while allowing Mac users, home stereo users, and shift key pushers unrestricted access, are good candidates for failed efforts at effectiveness even measured statically.

But assuming a particular protection measure is effective in the static sense, there is a second question we could ask: given real world conditions, does that measure remain effective? ¹ This dynamic assessment of effectiveness takes into account developments in circumvention technology that could undermine the real world utility of protection measures that at the time of initial deployment were otherwise effective. If circumvention tools become widely available, from this dynamic perspective, it no longer makes much sense to insist that a measure is effective.

A Finnish court recently decided that CSS, the long-cracked technological measure protecting DVDs, is not effective. There the court relied on a dynamic analysis rather than a static one. According to the court, since DeCSS has led to a proliferation of circumvention tools that enable the average computer user to avoid the constraints imposed by CSS, that measure is no longer reasonably termed effective.

This approach is very different from that adopted by U.S. courts with respect to the DMCA. Here courts, at best, analyze the effectiveness of DRM from the static perspective, often without taking a particularly hard look at the question. They certainly have not weighed previous acts of circumvention and the availability of circumvention tools, which are themselves prohibited under the DMCA, in determining the effectiveness of protection measures.

Of course, U.S. courts are not unilaterally opposed to the notion that prior infringements of intellectual property rights can lessen or even vitiate future claims. Repeated infringements of trademarks can lead to loss of protection. And as Bunner demonstrates, once a trade secret has been misappropriated on a sufficiently public scale, the owner no longer has effective rights. But with respect to the DMCA, widespread circumvention does not lessen one’s legal rights.

As Ed Felten points out in this thoughtful post, the difference between the U.S. approach and that adopted by the Finns is in large part the result of statutory definitions. Under the DMCA, a protection 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

The EU copyright directive builds upon this definition but imposes what appears to be an important additional requirement:

Technological measures shall be deemed ‘effective’ where the use of a protected work or other subject-matter is controlled by the rightholders through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject-matter or a copy control mechanism, which achieves the protection objective.

I don’t read this definition as mandating the Finnish court’s determination that CSS is ineffective. But there is no doubt that this subtle but important definitional distinction provided that court with the discretion necessary to deny the effectiveness of CSS. Undoubtedly, in most instances, CSS still does achieve its protection objective, so had the court chosen to rule the other way, it would have been justified as a matter of the statutory text.

The more interesting question is one of motivation. What would drive a court to opt for the dynamic approach over the static one? Given the likely inability of any copyright holder to deploy a DRM system that stands up to the efforts of determined circumventers, the implications of a dynamic definition of effectiveness seem to be that any protection from circumvention will be temporary. And if the history of AACS is any example, very temporary.

So if you are opposed to the very notion of lending the coercive power of the law to DRM, adopting a dynamic definition of effectiveness might be a clever way of complying with the letter of the WIPO Copyright Treaty without interfering much with domestic circumvention. After all, if prior distribution of circumvention tools is sufficient to render a protection measure ineffective, those who circumvent or traffic outside of the U.S. could easily avoid liability in most instances. Whether, from a policy perspective, lax enforcement is preferable isn’t the topic of this post, but it seems likely that the Helsinki District Court has fairly strong opinions on that question.

1. We could also account for the impact of likely future circumvention through a modified static analysis of a protection measure. Even absent any real world circumvention, we could posit a reasonably skilled and reasonably motivated would-be circumventer and decide whether the protection measure would withstand attack. This objective “weak cipher” test could add the benefit of consistent application over time, but would pose some serious line drawing problems for courts, who are not particularly well situated to determine the technical merits of a DRM scheme. [↩]

First, just a day after its unfortunate CDA § 230 decision, it’s nice to see our favorite Circuit still has some grasp on internet issues. No surprise, this one was written by Judge Ikuta, the only panel member who came close to getting things right in the Rommates decision. In P10, the court managed to wade through some fairly technical legal and factual issues, and did so with some nuance. There are too many noteworthy statements in the opinion to do them all justice, so I’ll just focus on one of the key points from the court’s fair use anaysis.

With respect to the first factor, the court offered this observation:

Indeed, a search engine may be more transformative than a parody because a search engine provides an entirely new use for the original work, while a parody typically has the same entertainment purpose as the original work.

The fair use analysis, which is of course highly fact-intensive and context-dependent, often prompts both counsel and courts to grope for easy-to-apply, hard and fast rules that frequently oversimplify, if not flat-out misstate, the law. “Consumptive uses are presumptively unfair.” “Commercial uses are presumptively unfair.” “Parodies are fair; satires are not.” These sorta-truisms always run the risk of being adopted by lazy or sloppy courts and calcifying as precedent until the Supreme Court, or on occasion a Circuit Court, sets things straight. Even still, these rules of thumb seem to gasp and wheeze along, waiting for their chance to reemerge, like that pesky infection you thought you’d beaten after almost finishing that bottle of penicillin.

Since Campbell, parody has been at the top of the fair use hierarchy. Any putative fair use that failed to take the piss out of the original, even if fair, has been seen as somehow less fair. And as for a use as utterly un-ironic as caching or indexing? Well, that’s hardly funny at all. How can it be fair?

Here the Ninth has thankfully eschewed the dominant fair use rule of thumb and looked at the issue, Kelly v. Arriba Soft notwithstanding, with something that approaches a fresh perspective. Non-parodic uses, to be sure, can be highly transformative. A use like Google’s which fundamentally repurposes the bundles of bits it indexes, caches, and searches, is undoubtedly transformative. And it’s nice to see the public benefit considerations weigh into the court’s analysis. So to the extent the P10 decision is a harbinger of future courts deciding fair use cases on their individual merits rather than by choosing into which oddly-shaped and mist-shrouded bucket it likely fits, let’s hear it for Ikuta.

Of course, as others have noted, there is a danger here of replacing one over-simplified paradigm with another. Hopefully, courts realize that parodies are no less fair than they were yesterday, and that even non-parodic, non-search-related uses still have a fighting chance at being fair even if, dare I say, they aren’t transformative at all.

One other point worth mentioning, that I may or may not get around to addressing in a later post: the P10 decision may also signal that copyright holders can’t get away with manufacturing a sham licensing market under factor four. Although it’s not a sufficient remedy to the inherent circularity of the potential market analysis, if more directly articulated, it would be a good common sense rule.

Section 230, for those unfamiliar, provides online services immunity from any cause of action, with the exception of federal intellectual property and criminal claims, arising out of their publication of content authored by third parties. Although the statute has traditionally been interpreted expansively, after the most recent major 230 decision in California, the state Supreme Court’s reaffirmation of a broad immunity in Barrett v. Rosenthal, a backlash of sorts was probably inevitable.

And if a court wants to rein in Section 230, the best way to do so is through classification of the defendant as an “information content provider” – defined as “any person or entity that is responsible in whole or in part for the creation or development of information provided through the internet.” The court, stretching that definition to what one has to imagine is its logical breaking point, held that Roommates.com, a website that allows users to post and search profiles of those offering and seeking housing, could be held liable for discriminatory preferences expressed in those profiles.

The panel’s three opinions are rife with juicy tidbits, but I’ll just focus in on a few of the highlights. First, the court opined that because Roommates designed the questionnaire used by its members to create their profiles, including drop-down forms that allowed users to state sex and gender-based roommate preferences, it could be held liable as an information content provider of the questionnaire itself. I don’t find this particularly troubling since the mere offering of choices in a drop-down menu will rarely be enough to create liability, even without immunity.

If the court had stopped there, this decision would be within the bounds of reasonable interpretation of the statute. But things went steeply downhill from there. Next, the court held that Roommates could not avail itself of 230 immunity for its publishing and distributing of user profiles. According to the court:

While Roommate provides a useful service, its search mechanism and email notifications mean that it is neither a passive pass-through of information provided by others nor merely a facilitator of expression by individuals. By categorizing, channeling and limiting the distribution of users’ profiles, Roommate provides an additional layer of information that it is “responsible” at least “in part” for creating or developing.

This passage should strike fear in the heart of any website owner. By allowing users to search or filter a database using certain criteria and programmatically returning results, a provider can be classified as an information content provider and thus ineligible for 230 immunity. Note that while in this case those search criteria may have been illicit categories, nothing in the court’s logic dictates that the search mechanism in itself rely on categories that are violative of the law. An “additional layer of information” can be added by in many ways – by providing a general purpose search feature, for example. In fact, under a broad reading of the court’s decision, any degree of interactivity is sufficient to undermine immunity. This flies in the face of the purpose of 230 as well as the Ninth Circuit’s own precedent.

The court’s test for status as an information content provider is, in some respects, reminiscent of the Grokster inducement standard: where a provider “actively encourages” third parties to author and post “defamatory, private or otherwise tortious or unlawful information,” 230 immunity is not available. The limits of this standard are fuzzy at best. Are explicit requests for false and defamatory postings necessary? Or is a forum generally devoted to unconfirmed reports of unsavory behavior enough? If the court was going to issue an opinion that was wrong as a matter of both law and policy, it could have at least been more precise in its choice of words.

In what would appear the saving grace of this decision, the court held that Roommates could not be held liable for information written by users in the free-form Additional Comments section of their profiles.¹ But tucked into this otherwise noncontroversial discussion is a rather chilling statement. According to the court, Roommates retained immunity for the Additional Comments section, in part, because it did not use that information “to limit or channel access to listings.” That passage, again, suggests that if Roommates allowed users to search or filter results on the basis of these free form user-generated responses, immunity may be called into question.

Hopefully, future Ninth Circuit panels interpreting 230 are as quick to ignore precedent as this one was.

More commentary from Eugene Volokh, Eric Goldman, and Joe Gratz.

1. Judge Reinhardt in his partial dissent would have held Roommates potentially liable for discriminatory preferences disclosed in this text box, in part because the Additional Comment box appears after questions regarding gender and sexual preference, and – no kidding – because some users of the site like “whiteboy73″ and “blackbarbie” chose screennames that may reveal their race. I’m at a loss for any charitable interpretation of Reinhardt’s logic, so I’ll let the reasoning speak for itself. [↩]