Statement of Marybeth Peters
The Register of Copyrights
Subcommittee on Courts and Intellectual Property
Committee on the Judiciary
United States House of Representatives
105th Congress, 1st Session
September 16, 1997
WIPO Copyright Treaties Implementation Act (H.R. 2281) and On-Line Copyright
Liability Limitation Act (H.R. 2180)
Mr. Chairman, members of the Subcommittee,
I appreciate the opportunity to testify today on H.R. 2281, the WIPO Copyright Treaties Implementation
Act and H.R. 2180, the On-Line Copyright Liability Limitation Act. H.R.
2281 would make the changes to U.S. law that are necessary to allow the
United States to join the two World Intellectual Property Organization
treaties concluded in Geneva in December of 1996. H.R. 2180 would add a
new section 512 to the Copyright Act, creating an exemption from infringement
liability for certain acts of transmitting or providing access to material
on-line, that are typically engaged in by providers of on-line services
and Internet access.
H.R. 2281 The WIPO Copyright Treaties Implementation Act
The changes that would be made by H.R. 2281 are significant but few in number.
The nature and scope of copyright rights and exceptions would not be affected,
continuing the substantive balance of interests embodied in today's Copyright
Act. The bill's primary effect would be to add to the law two technological
adjuncts to copyright, intended to ensure that rights can be meaningfully enforced
and licensed in the digital environment. In addition, several minor technical
changes would be made to provisions of the Copyright Act to provide the protection
required by the treaties to works from other countries that join the treaties.
The Copyright Office supports the bill generally. In our view, it fully and
adequately implements the obligations of the new WIPO treaties, without amending
the law in areas where a change is not required for implementation. While other
issues relating to how copyright law applies to the use of copyrighted works
in digital form, such as the liability issues addressed by H.R. 2180, are important
and should be fully debated and carefully considered by Congress, they do not
need to be dealt with in order to make U.S. law compatible with the treaty obligations.
The treaties are extremely valuable for the United States, as they will require
other countries to adopt a copyright system that comports with the balance already
struck in U.S. law, and ensure that U.S. works are adequately protected abroad
in the digital age. They have been widely hailed as fair and balanced by copyright
owner and user groups alike. The sooner the treaties become effective, and the
more countries that join them, the less piracy there will be of U.S. works around
the world. This process may take some time, however, since the treaties will
not take effect until thirty countries have joined. The United States' approach
will be influential, and our prompt ratification is likely to encourage others
to do the same.
In addition to satisfying our treaty obligations, the Copyright Office believes
that the proposed additions to U.S. law further valuable goals domestically
in and of themselves. Prior versions of the technological adjuncts were proposed
in the 104th Congress as part of the National Information Infrastructure Copyright
Protection Act. At that time, the Copyright Office expressed support for the
goals of these provisions, but raised certain concerns about their formulation.
The versions contained in H.R. 2281 represent a refinement of those prior proposals,
which we view as substantially improved.
This does not mean that we see the language of these provisions as perfect.
Rather, it represents a reasonable effort to achieve compromise on several difficult
issues. The anti- circumvention provision in particular has raised concerns
as to its scope and impact, and may need further refinement. On this and other
issues, the Copyright Office has some questions and suggestions, which are described
below. We look forward to working with the Subcommittee in the weeks ahead.
A. Technical Amendments
The two WIPO treaties obligate each member country to protect works from other
member countries, including works in existence on the date each treaty becomes
effective for that country, without imposing any formalities as conditions for
the enjoyment or enforcement of rights. In order to implement these obligations,
the bill would make several technical amendments to three sections of the Copyright
Act: section 104, which specifies the conditions on which works from other countries
are protected in the United States; section 104A, which provides protection
to preexisting works from other countries; and section 411(a), which makes copyright
registration a precondition to bringing suit for infringement for some works.
These amendments in turn require some additions and changes in the definitional
section of the Copyright Act, section 101.
The Copyright Office prepared the initial drafts of these sections of the bill,
and fully supports them in their current form. These sections make those changes
that are necessary to fulfill future U.S. obligations to other WIPO treaty members,
and do so in a simple and efficient way.
1. Section 104: Subject matter of copyright: National origin.
Section 104 of the Copyright Act sets out the criteria
making foreign works eligible for U.S. copyright protection. In its current
form, it contains separate but overlapping sections relating to particular
treaties. The bill would amend section 104 to add the new WIPO treaties,
and re-organize its structure by listing all of the relevant factual points of attachment, and applying them
to all countries with which the United States has an appropriate treaty relationship.
Thus, all countries that have copyright relations with the United States would
be referred to collectively by a new defined term in section 101: treaty
party. The amended section 104 would then extend protection to foreign
works from any treaty party based on the following four points of attachment:
nationality of the author, place of first publication of the work, place of
fixation of the sounds embodied in a sound recording, and the situs of a constructed
architectural work. The amendment implements the treaty obligation in a manner
that simplifies and clarifies section 104, as well as making it more easily
adaptable to future changes in U.S. treaty membership. If we join any future
treaties, they can simply be added to the list of international agreements without
detailed amendments repeating the criteria for eligibility for purposes
of each treaty.
2. Section 104A. Copyright in restored works.
As to retroactive protection for existing works from
treaty parties, the approach is straight-forward. The amendment adds to
section 104A's definition of eligible
countries whose works are subject to restoration those countries
that are parties to treaties that require such retroactivity, including
the new WIPO treaties.
3. Section 411(a). Registration and infringement actions.
The WIPO treaties prohibit formalities from being imposed
on the enjoyment or exercise of rights. Under current law, all works other
than Berne Convention works whose country of origin is not the United States
must be registered with the Copyright Office before suit can be brought
for their infringement. 17 U.S.C. § 411(a). The bill would amend this
provision to exempt works from members of the two WIPO treaties.
It does so in the simplest way possible, by reframing the
registration requirement in the affirmative, as the converse of the current
statute. In other words, the provision states affirmatively that United States works must
be registered before suit, with United States works defined
as the converse of the current definition of works whose country of origin
is not the United States. This approach avoids the need to change several
complex technical provisions of the Copyright Act each time the United
States joins another treaty.
B. Technological Adjuncts to Copyright
Each of the WIPO treaties includes two provisions that require member countries
to provide technological adjuncts to copyright protection. These technological
adjuncts are intended to further the development of digital networks by making
them a safe environment for copyrighted works to be disseminated and exploited.
One provision protects against circumvention of the technology that copyright
owners may use to protect their works against infringement. It is phrased in
very general terms, leaving up to each country precisely how to define the prohibited
conduct. The other provision prohibits the deliberate alteration or deletion
of information that copyright owners may choose to provide over the Internet
to identify their works and the terms and conditions of their use.
The bill would create a new Chapter 12 in Title 17 to implement these obligations.
The prohibitions themselves are contained in new sections 1201 and 1202; sections
1203 and 1204 set out civil remedies and criminal penalties, respectively.
a. Background and purpose
New section 1201 would implement Article 11 of the WIPO
Copyright Treaty and Article 18 of the WIPO Performances and Phonograms
Treaty, which require treaty members to "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 . . . and that restrict acts, in respect of their works, which are
not authorized by the authors concerned or permitted by law."
This language was deliberately written to be broad and
general, and to leave to individual countries considerable flexibility
in determining precisely how to formulate the prohibition. There are likely
to be different methods adopted in different countries to satisfy this
obligation. The ultimate test of treaty compliance for any of them will
be whether the language chosen "provide[s]
adequate legal protection and effective legal remedies."
After an extensive analysis, the Copyright Office has concluded
that existing protections under U.S. law are insufficient to satisfy the
treaty obligation. In making this determination, the Copyright Office examined
a number of existing bodies of law. These include the doctrine of contributory
infringement under copyright law, and a variety of federal statutes including
the Audio Home Recording Act, 17 U.S.C. § 1002, the Communications Act, 47 U.S.C. §§ 553
and 605, the National Stolen Property Act, 18 U.S.C. § 2314, the Electronic
Communications Privacy Act, 18 U.S.C. §§ 2510 et seq.,
and the Computer Fraud and Abuse Act, 18 U.S.C. § 1030.
We do not believe that the doctrine of contributory infringement
provides sufficient protection to fulfill the treaty obligation to provide adequate legal
protection and effective legal remedies against circumvention. As
the Supreme Court interpreted that doctrine inSony Corp. v. Universal
City Studios, Inc., 464 U.S. 417 (1984), the manufacturer or distributor
of a copying device is not liable if the device is merely capable
of substantial noninfringing uses. Id. at 442. Most devices for circumventing
technological measures, even those designed or entirely used for infringing
purposes, will be capable of substantial noninfringing uses since they
could potentially be employed in the course of a fair use, or in the use of
a public domain work. It is therefore not surprising that the Sony standard,
in practice, has been ineffective in addressing the circumvention problem. See
Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1983).
Copyright, moreover, may not afford any recourse against those who engage in
acts of circumvention alone.
Some of the other laws we considered address particular aspects of circumvention
of particular types of technological protection measures such as the scrambling
of broadcast signals. In the aggregate, however, they fail to provide the general
coverage required by the treaties.
The anti-circumvention issue is without doubt the most difficult of the issues
presented in treaty implementation. The challenge is how to formulate a prohibition
that provides meaningful protection to copyright owners, while avoiding chilling
the development of legitimate consumer technology and lawful uses of copyrighted
works and public domain materials. While a perfect solution may not be possible,
we believe that an appropriate compromise can be found. Section 1201 of H.R.
2281 represents a reasonable attempt to reach such a compromise. It reflects
the lengthy debate that took place in the United States and Geneva over the
course of the past two years, and is narrower and more carefully tailored than
In the Copyright Office's November 1995 testimony on the NII Copyright Protection
Act, we noted the importance of providing legal protection for technological
measures used by copyright owners to protect their works against unauthorized
use on the Internet. Unless copyright owners have confidence that their works
can be secured against loss, they will not be willing to utilize this promising
new means of exploitation to its full potential. As I stated then,
One of the most serious challenges to effective enforcement of copyright
in the digital environment is the ease, speed and accuracy of copying at multiple,
anonymous locations. In order to meet this challenge, copyright owners must
rely on technology to protect their works against widespread infringement.
But every technological device that can be devised for this purpose can in
turn be defeated by someone else's ingenuity. Meaningful protection for copyrighted
works must therefore proceed on two fronts: the property rights themselves,
supplemented by legal assurances that those rights can be technologically
It was for these reasons that the countries meeting in Geneva to negotiate
the WIPO treaties agreed unanimously on the need for such a legal prohibition.
At the same time, the Copyright Office expressed concern
about the breadth of the language used in the NII bill. Our chief concern
related to various problems we saw with the primary purpose or effect test used to determine
the legality of a device or service used to circumvent technological protection.
We noted that primary purpose could be difficult to prove,
and that a device intended for entirely legitimate purposes might be put
to use primarily to circumvent.
The language of H.R. 2281 addresses these concerns, and a number of concerns
that were expressed by others, in a manner which represents a substantial improvement
over the prior bill. It aims more precisely at culpable conduct, and more clearly
excludes circumvention engaged in to access or use material that is not protected
by copyright. The bill also adopts a new two-tier approach, separating out technological
measures that control access to copyrighted material and technological measures
that prevent infringing uses of that material, and providing stronger protection
for the former. Finally, it contains for the first time a savings clause stating
explicitly that the substance and scope of copyright rights and exceptions,
including fair use, are not affected.
b. The coverage of the bill
The substance of section 1201's prohibition is set out in paragraphs (1) and
(2). Paragraph (1) deals with the circumvention of technological measures that
control access to a copyrighted work, for example through encryption. This provision
is similar to existing legislation prohibiting the decryption or descrambling
of cable programming signals transmitted by satellite, which protects the ability
of broadcasters to secure a market for pay cable by scrambling signals and allowing
only paying subscribers to view them.
Not every technological measure that controls access would
be covered by this language. The prohibition would apply only to those
measures that operate by requiring the application of information, or a
process or a treatment, that is authorized by the copyright owner. Moreover,
the measure must do so "in
the ordinary course of its operation." This would exclude technologies
that may have the incidental or unintended effect of controlling access,
or do so only when used in an unusual way.
Subparagraph (a) prohibits the act itself of circumventing a technological
measure that effectively controls access to a copyrighted work. Subparagraph
(b) relates to the means or technologies that may be used in order to circumvent.
It prohibits the manufacture or sale of products or services that meet three
criteria meant to distinguish legitimate business activities from the illegitimate.
Thus, the provision covers circumstances where the products or services are
primarily designed or produced to perform the prohibited acts, or are marketed
by advertising their capability of doing so. It also covers those products or
services that have only limited commercially significant purpose or use other
than to perform the prohibited acts.
Paragraph (2) of section 1201 deals with measures that prevent acts of infringement,
rather than access. Such measures might include a technology that blocks users
from downloading copies. The treatment of these infringement prevention measures
differs from the treatment of access prevention measures in paragraph (1) in
that it does not include a prohibition on the act of circumvention itself. It
covers only the manufacture or sale of products or services, utilizing the same
approach of focusing on how the product or service is marketed, designed or
produced, and the nature and extent of its commercially significant purposes
Paragraph (2) is limited to measures that protect rights of a copyright owner
under Title 17.
Paragraph (4) specifies that section 1201 cannot be read to alter existing
rights, defenses, limitations or remedies under Title 17.
c. Issues and concerns
Two main areas of concern have been identified with respect to section 1201:
its coverage of products used to circumvent, such as consumer electronics and
software, and its potential impact on fair use interests.1
1 These concerns relate not only to fair use, but to all
permitted uses under the Copyright Act, including those made possible by the
idea-expression dichotomy and the first sale doctrine. For purposes of our discussion
here, we will refer to all of these user privileges collectively as fair use
Some have urged that the legislation not address the provision of products
or services, but focus solely on acts of circumvention. They state that the
treaties do not require such coverage, and argue that devices themselves are
neutral, and can be used for either legitimate or illegitimate purposes.
It is true that the treaties do not specifically refer to the provision of
products or services, but merely require adequate protection and effective remedies
against circumvention. As discussed above, however, the treaty language gives
leeway to member countries to determine what protection is appropriate, with
the question being whether it is adequate and effective. Because of the difficulty
involved in discovering and obtaining meaningful relief from individuals who
engage in acts of circumvention, a broader prohibition extending to those in
the business of providing the means for circumvention appears to be necessary
to make the protection adequate and effective. It is the conduct of commercial
suppliers that will enable and result in large-scale circumvention.
The bills approach to manufacturing, importing and selling is essentially
an application of the familiar concept that those who participate in or assist
in a prohibited act may themselves be culpable. There is ample precedent for
the approach. So-called black boxes for descrambling cable
and satellite signals are banned under federal law, as are devices for
thwarting serial copy management systems in digital audio recording devices. See 47
U.S.C. §§ 553(a)(2) and 605(c)(4); 17 U.S.C. § 1002(c).
The challenge is how to limit the coverage of such activities sufficiently,
so as not to chill legitimate development activities. There appears to be general
agreement on two basic propositions: (1) People should not be able to engage
in profit-making activities intentionally aimed at circumventing protection
for copyrighted material; (2) the development and sale of multi-purpose products
with substantial lawful uses should not be prevented. The difficulty lies in
the grey area in between.
The NII Copyright Protection Act sought to draw the line
between permissible and impermissible products and services by looking
to their "primary purpose
or effect." The Copyright Office and others raised concerns about
the potential overbreadth of this standard. H.R. 2281 is significantly
more restrictive in its coverage; it imposes three limitations on circumstances
where liability may be found. The provider would have to deliberately design
the product to circumvent or advertise it as doing so, or the product would
have to be essentially a circumvention device with only limited use for
other purposes. In contrast, those items that have significant legitimate
purposes or functions, such as general purpose computers, would not be
covered despite the fact that they may also be used on occasion to circumvent.
The "only limited commercially significant purpose or use" test
appears to build on, but tighten, the Sony standard. It makes the standard more
meaningful by referring to the extent to which the product is actually used
for legitimate purposes, rather than its capability to be used for such purposes.
At the same time, it is consistent with Sony in that it does not prohibit
products with a substantial non-circumventing use, only those with merely limited
commercially significant non-circumventing use.
These limitations improve on prior versions of anti-circumvention
legislation, and aim more precisely at bad actorsthose who deliberately
facilitate unlawful activity. The limitations would rule out, for example,
devices produced for a legitimate purpose that unexpectedly turn out to
be used by consumers primarily to circumvent (as long as they were also
used for their intended purpose to a commercially significant extent).
It might be possible, however, to refine the approach even further, and
we would be happy to work with any who have such suggestions.
The other major area of controversy relates to the impact of section 1201 on
fair use and other user privileges under the Copyright Act. The Copyright Office
firmly believes that the fair use doctrine is a fundamental element of the copyright
law, and that its continued role in striking an appropriate balance of rights
and exceptions should not be diminished. We also believe that it is possible
to provide effective protection against circumvention without undermining this
Section 1201 seeks to accomplish this result in several ways. First, it treats
access- prevention technology separately from infringement-prevention technology,
and does not contain a prohibition against individual acts of circumvention
of the latter. As a result, an individual would not be able to circumvent in
order to gain unauthorized access to a work, but would be able to do so in order
to make fair use of a work which she has lawfully acquired. Second, it contains
a savings clause that explicitly preserves fair use and other exceptions to
rights in the Copyright Act.
Some argue, however, that these attempts do not go far enough and will not
avoid damage to fair use interests. As a practical matter, they are concerned
that access will not be made available for fair use purposes, and that there
may be technological control over each occasion of use. They are also concerned
that section 1201 will prevent the development of products that enable individuals
to bypass such continued access controls, or infringement- prevention technology
under paragraph (2), in order to make fair use. These are important issues that
deserve careful consideration.
Some background may be helpful in considering the topic
of access controls. It has long been accepted in U.S. law that the copyright
owner has the right to control access to his work, and may choose not to
make it available to others or to do so only on set terms. This means not
only that a copyright owner may keep a work forever unpublished, but also
that he can publish it while controlling the conditions under which others
are allowed to see itsuch as charging
a fee or imposing restrictions on how the work may be used.2 Users
generally pay for access and then, depending on the form in which the work is
embodied, may accept the copyright owner's terms or negotiate for other terms.
Libraries, for example, typically purchase a physical copy such as a book to
make available on-site, or in obtaining access to works in electronic form,
accept the terms presented or negotiate terms for use by their patrons.
2 The extent to which restrictions can be imposed by contract
on uses that would otherwise be permissible under copyright law has also become
a controversial issue. See, e.g., ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th
Cir. 1996) (holding that the Copyright Act does not generally preempt contract
The bill would continue this basic premise, allowing the copyright owner to
keep a work under lock and key and to show it to others selectively. Section
1201 has therefore been analogized to the equivalent of a law against breaking
and entering. Under existing law, it is not permissible to break into a locked
room in order to make fair use of a manuscript kept inside.
In this area too, the treaties do not specifically require protection for access
controls in themselves. Again, the determination to be made by Congress is how
best to ensure adequate and effective protection for technological measures
used by copyright owners to prevent infringement. It is our understanding that
access controls such as encryption will be the primary and most effective measures
that copyright owners are likely to use in the on-line environment.
One key issue is the type of access involved. Once a person has lawfully acquired
access to a work, will he or she be able to make fair use? Or will such strong
technological controls be imposed that each use will require additional authorization?
If the former, users could be required to pay for access as they are today,
and then subsequent uses might be permissible under Copyright Act exemptions.
(Some have noted, however, that the existence of legal protection itself may
not be possible ever to engage in such exempted conduct without payment of a
new access fee.
Other critical questions are whether, as a practical matter,
copyright owners will adopt reasonable terms for granting lawful access,
including recognition of fair use interests; whether copyrighted works
will remain available in formats other than electronic, encrypted form
to be used for fair use purposes; and whether any technological means will
be developed to allow individuals to circumvent for lawful purposes. The
Copyright Office agrees that it would be extremely undesirable to end up
with a world where fair use interests were not accommodated in an optimal
manner. We share the concerns as to how these questions will be answered.
If the fair use communitys fears were realized, the risk would
be high. If access for such purposes becomes unduly restricted, with fees
charged for each use, unreasonable costs imposed, and copies not available
in non-electronic form, a legislative solution would be called for.
Finally, questions have been raised about the meaning and effect of the savings
clause. In the view of the Copyright Office, this clause serves two functions:
(1) It constitutes a recognition of the importance of the existing balance built
into the Copyright Act, including the fair use doctrine; (2) it may eliminate
the possibility of an unclean hands-type argument in an infringement case. In
other words, a copyright owner would not be able to defeat a fair use claim
by pointing to the fact that the defendant had circumvented a technological
protection measure. Cf. Harper & Row, Publishers v. Nation Enters.,
471 U.S. 539, 563 (1985) (weighing in the fair use balance the bad faith
of the defendant in gaining unauthorized access to the plaintiffs
Atari Games Corp. v. Nintendo, 975 F.2d 832, 843 (Fed. Cir. 1992).
As drafted, however, the clause does not establish fair
use as a defense to the violation of section 1201 in itself. It refers
only to "rights, remedies,
limitations, or defenses to copyright infringement, including fair use," and
the fair use provision in section 107 by its terms applies only to infringement
of copyright rights. While the clause might be read by a court as a signal
to extend the concept of fair use as a judge-made defense, it does not
provide clear legislative authority to do so.
2. Copyright management information
a. Background and purpose
New section 1202 would ensure the accuracy and reliability of copyright management
information provided to users of copyrighted works.
The Internet offers tremendous potential to develop as a marketplace for copyrighted
works. Electronic licensing should prove to be easier and less expensive than
traditional methods of obtaining permissions. Users could agree with a keystroke
to a particular price for a particular type of use, with transaction costs minimized.
If the system is to work, however, users need to be able to trust its integrity.
Information must be easily available that identifies works, their owners, and
their licensing terms--and the information must be reliable. If authorizations
can turn out to be defective because someone changed the name of the copyright
owner or misrepresented the material as available for free, consumers will not
be willing to rely on the system. It is therefore critical to protect the integrity
of the electronic marketplace.
In order to do so, the treaties oblige countries to make
it unlawful to knowingly remove or alter such information when provided
by the copyright owner in connection with a copy or communication of the
work in electronic form, or to distribute, import, broadcast or communicate
to the public works or copies of works knowing that such information has
been removed or altered. Article 12 of WIPO Copyright Treaty; Article 19
of WIPO Performances and Phonograms Treaty. The treaties define the relevant
information as "information which identifies the work,
the author of the work, the owner of any right in the work, or information
about the terms and conditions of use of the work, and any numbers or codes
that represent such information, when any of these items of information
is attached to a copy of a work or appears in connection with the communication
of a work to the public."
Again, the Copyright Office has examined a number of bodies
of law to determine whether implementating legislation is necessary. We
considered trademark law, the National Stolen Property Act, 18 U.S.C. § 2318, the prohibitions concerning
copyright notice in the Copyright Act, 17 U.S.C. § 506, federal and state
laws regarding unfair competition, false advertising and consumer protection,
state law regarding rights of publicity, and common law fraud. We have concluded
that these laws in the aggregate provide less coverage than is required by the
treaty. In particular, with the exception of 17 U.S.C. § 506(d) with
respect to the fraudulent removal of a copyright notice, they address the
alteration, but not the removal, of only a small subset of rights management
Apart from the treaty requirements, we believe that such
a law is good domestic policy. In the Copyright Office's testimony on the
NII Copyright Protection Act, we supported the adoption of similar protection
into U.S. law. We pointed out that "[i]t is in everyone's interest, both owners and users of copyrighted
material, to be able to rely on the information provided to facilitate identification
and licensing." Again, however, we raised a few questions about the
relevant provision as drafted, with regard to both the scope of its coverage
and its interaction with provisions of existing law. We believe that the
proposed section 1202 in this bill adequately and appropriately implements
the treaty obligation, and does so in a manner that resolves many of the
questions we had raised about the prior version. It goes beyond the bare
minimum obligation in several respects, mainly in covering the provision
of false information and information not in electronic form. In our view,
these extensions are useful and appropriate.
b. The coverage of the bill
Section 1202 contains three paragraphs. The third paragraph
management information"; the first two deal with, respectively, the
provision of such information that is false, and the deletion or alteration
of such information. Paragraph (a) prohibits the knowing provision, public
distribution, or importation for public distribution, of false copyright
management information. Paragraph (b) prohibits the following acts when
done without the authority of the copyright owner or the law: the knowing
removal or alteration of copyright management information, or the distribution
or importation for distribution of copyright management information that
has been altered without the authority of the copyright owner or the law,
or copies or phonorecords from which copyright management information has
been removed without the authority of the copyright owner or the law.
Paragraph (c) defines "copyright management information" as
the following items, when conveyed in connection with copies, phonorecords,
performances or displays of a work: identifying information about the work,
or the copyright owner (including title and names); terms and conditions for
use of the work; identifying numbers or symbols referring to such information
or links to such information; or such other information as the Register of Copyrights
may prescribe by regulation.
3Section 1202 implements the relevant obligation under
both WIPO treaties. Since performers whose performances are fixed in
sound recordings may qualify as authors under U.S. copyright law, the
reference in the definition of "copyright management information" to identifying information about
the "author of a work" covers such performers as well as other
categories of authors.
c. Issues and concerns
The issue has been rasied as to this provisions
impact on the privacy interests of consumers. Because section 1202 does
not require the provision
of any information over the Internet or elsewhere, it will not lead to
the collection or dissemination of information about users and therefore
should not affect their privacy. The provision simply makes it unlawful
for someone to provide false information with bad intent, or deliberately
to delete or alter such information, once it has already been provided.
Nor could it be used to prevent consumers from taking steps to remove private
information from the Internet, since the definition of "copyright management information" does
not include information about users, and since the prohibited acts require
an element of knowledge or intent tied to infringement.
While the clause explicitly stating that "the Register of Copyrights may
not require the provision of any information concerning the user of a copyrighted
work" therefore does not appear to be necessary, if such language
will assuage any lingering concerns, the Copyright Office certainly has
no objections to its inclusion. We recommend, however, that the wording
be changed to eliminate the implication that the Office does have authority to require the provision
of any other information. As noted above, section 1202 does not mandate that
any particular information be provided, but simply protects whatever information
is in fact provided.
The provisions in section 1202 do not apply to those who
act innocently. The acts covered all must have been performed knowingly.
In addition, the provision of false information is only unlawful where
it is done "with the intent
to induce, enable, facilitate, or conceal infringement." Liability for
the removal or alteration of information requires the actor to know or have
reason to know that his acts "will induce, enable, facilitate or conceal" infringement.
Some copyright owners have expressed concern that this standard will be too
difficult to meet, requiring proof of an ultimate infringement in order to find
a violation. The Copyright Office believes that it is important to make clear,
possibly in legislative history, that the reference to infringement does not
mean that the actor must have intended to further any particular act of infringement--just
to make infringement generally possible or easier to accomplish.
We believe that the knowledge and intent standards resolve the concerns we
expressed in 1995 about the prohibition's scope of coverage. They ensure that
no one will be liable who deletes, alters or provides inaccurate information
for legitimate reasons, such as technological constraints or a good faith belief
that he or she has the right to do so. For example, a broadcaster who interrupts
a broadcast of a motion picture for a news bulletin, thereby deleting part of
the motion picture's credits, would not fall within the prohibition. Nor would
the provision apply to an individual who believed she was entitled to claim
authorship in a work, based on a dispute over the work's status as a joint work
or work made for hire. Similarly, de minimis alteration, or clarification or
supplementation of information, would be ruled out. As to the provision of false
information, the provision as drafted would ensure that a film distributor who
distributes an old copy of a motion picture containing outdated information
about the ownership of rights in the motion picture would not be liable simply
because it knew the information was false. Nor could it be argued that the use
of a pseudonym constituted a violation.
The bill also improves on the prior versions in other respects.
It limits the context in which information is protected to information "conveyed in connection
with" copies, performances or displays of a work. This provides a link
between the information and a particular manifestation of the copyrighted work,
and avoids any application of the provision to such information that may happen
to be contained on a piece of paper in a file somewhere. In addition, the coverage
of "identifying number or symbols" will allow the development
of voluntary coding systems which can refer users to a complete and up-to-date
database of licensing information.
We do note a few remaining concerns about the provision's
interaction with other provisions of existing law, and a few minor drafting
issues. In its current form, section 1202 still overlaps with and renders
redundant at least some of the provisions of section 506(c)-(d). These
sections require careful analysis to determine whether they should be deleted
or amended to accommodate the new prohibitions. In paragraph (b)(3), we
would propose adding a reference to "public
display" of works or phonorecords, in addition to the coverage of
distribution, importation and public performance. Finally, we suggest making
parallel the acts covered by paragraphs (a) and (b), adding an equivalent
to subparagraph (3) to paragraph (a) to cover the distribution, importation,
public performance or public display of copies of works knowing that they
contain false information.
The Copyright Office urges prompt ratification of the WIPO treaties, and supports
H.R. 2281 as a reasonable implementation of the treaties' obligations. To that
end, we would be pleased to assist Congress to resolve the questions raised
in this statement as well as any other concerns.
H.R. 2180 The On-Line Copyright Liability Limitation Act
H.R. 2180, the On-Line Copyright Liability Limitation Act, would
add a new section 512 to the Copyright Act, creating a new exemption from
infringement liability for certain acts of transmitting or providing access
to material on-line that are typically engaged in by providers of on-line
services and internet access.
As the Copyright Office has stated, existing doctrines
of copyright law have so far been applied by the courts to such acts in
a generally appropriate way. If a statutory structure is established to
provide greater certainty for service providers, we view H.R. 2180 as a
useful starting point for a fresh beginning in achieving a resolution to
this important and controversial issue. This bill builds on the concepts
that were developed in last years negotiations
chaired by Congressman Goodlatte. However, the bill is simpler in its approach
in various respects. Notably, it provides a single exemption that is available
to any person engaging in certain acts, which were dealt with in several separate
exemptions in prior proposals. In determining eligibility for the exemption,
the bill avoids terms that are specific to particular business models or technologies,
and focuses instead on general concepts of a persons level of control,
participation, and knowledge of the infringement. It also omits detailed
notification procedures and industry-specific codes of conduct, leaving
such matters to resolution by the affected parties. This approach offers
the benefit of flexibility, allowing adaptation to the inevitable rapid
changes in technology and business practices.
In addressing the responsibility of those who participate
in bringing infringing works to the public, the courts have over the years
developed doctrines of contributory infringement and vicarious liability
to supplement the potential direct infringement that may occur through
acts of distribution and public performance or display. Under current law,
a person is liable for direct infringement who engages in an act within
section 106 without authorization, regardless of his knowledge or intent.
17 U.S.C. § 501. A person is vicariously liable for the infringement
of another if he has the right and ability to control the infringement,
and receives a direct financial benefit, with or without knowledge of infringement.
RCA/Ariola Intl v. Thomas & Grayston Co., 845 F.2d 773, 781 (8th
Cir. 1988). A person is liable for contributory infringement who induces, causes
or materially contributes to another's infringement, knowing or having reason
to know of the infringement. Sony Corp. v. Universal City Studios, Inc.,
464 U.S. 417, 435 (1984).
A number of courts have applied these doctrines to on-line activities in recent
years. The Copyright Office has prepared a summary of the case law, which is
attached to our testimony. While the legal analysis has not always been consistent,
the outcomes have been appropriate, imposing liability only on parties who clearly
should have been held responsible.
The most extensive judicial analysis of the issues to date can be found in
Religious Technology Center v. Netcom On-Line Communications Services,
Inc., 907 F. Supp. 1361 (N.D. Cal. 1995). The Netcom case is
in many respects quite favorable to the interests of on-line service providers.
The court found that none of the acts committed by the defendant on-line
service provider were direct infringements, and that the provider was not
vicariously liable for the infringing acts of its subscriber. Although
the court did not dispose of the plaintiffs claim of contributory
infringement on summary judgment, it declined to grant a preliminary injunction
in part because it viewed the plaintiff as unlikely to succeed on the merits
of the claim, because of a lack of evidence that the provider should have
known of the infringement or substantially contributed to it.
Other courts have imposed liability on the party placing the work on-line,
or on an electronic bulletin board (BBS) operator. In those cases that have
held BBS operators liable, the facts have generally supported the conclusion
that the defendant knew that the infringement was taking place and either actively
encouraged the infringing activity or failed to take steps to prevent it. No
case has yet held a service provider liable.
Nonetheless, providers of on-line and internet access services remain concerned
about the lack of certainty in how courts will develop the application of these
doctrines, and their exosure to lawsuits in the interim. H.R. 2180 seeks to
provide greater certainty while safeguarding the ability of copyright owners
to protect their exclusive rights in an on-line environment.
The issue of service provider liability is of great concern to all of the interests
involved, and has received tremendous attention both in the United States and
at an international level. It is critical to ensure that any new exemption not
undermine the ability of copyright owners to enforce their rights and have meaningful
recourse to prevent on-line infringement. At the same time, of course, liability
should not be imposed inappropriately. The goal is a system where copyright
owners and service providers work together to minimize infringement and expand
the Internet as a medium for exploiting copyrighted works.
In the past, the Copyright Office has cautioned that any legislation shielding
service providers from liability (1) should be calibrated to particular degrees
of involvement and responsibility; (2) should not contain mandatory extra-judicial
procedural requirements for copyright owners to be able to enforce their rights;
and (3) should not create incentives to avoid knowledge of infringement. While
we recognize that the particular calibration of the elements in the bill will
be subject to negotiation, we believe that the approach of H.R. 2180 essentially
meets these criteria.
H.R. 2180 would amend the Copyright Act to create a new
section 512. This section exempts any person who transmits or otherwise
provides access to material on-line from liability for direct infringement,
as well as vicarious liability for the infringing acts of another, if six
criteria are met. Anyone who qualifies under these criteria would also
be exempt from monetary damages for contributory infringement. The exemption
applies only to liability that is based solely on transmitting or otherwise
providing access to material on-line; other acts, such as retention and
further use of copies of material, are not covered. The exemption would
encompass within its scope the specific circumstances covered by separate
exemptions in prior proposals: mere conduit transmissions,
material residing on a server, and electronic communications.
The six criteria relate to levels of active involvement
and knowledge. They are drawn from discussions during last years
negotiations, and from existing case law, with various modifications to
take into account issues raised in those discussions.
The first three criteria that the person seeking the exemption (A) does
not initially place the material on-line; (B) does not generate, select, or
alter the content of the material; and (C) does not determine the recipients
of the material establish a passive, intermediary role. The remaining
criteria relate to the degree of the persons participation, benefit
and knowledge. All are phrased in simple language as basic concepts, leaving
room for further discussion of their meaning as well as flexibility for
application in a wide array of changing circumstances.
We note that the result of the exemption would be to codify some aspects of
existing doctrines of contributory infringement and vicarious liability, but
to narrow them in certain respects. Some activities that could result in liability
under the existing doctrines would qualify for the exemption. Conversely, however,
some activities that would not qualify for the exemption, may not be infringing
under current liability doctrines.
It is important to understand that failure to qualify for the new exemption
would not necessarily lead to liability. The doctrines of existing law would
apply, and determine whether liability was appropriate.
Other provisions are helpful in removing possible disincentives
to a providers
taking prompt action to limit the effects of an infringement. These include
a good Samaritan defense ensuring that a provider cannot be liable
for taking down material in response to a notice alleging infringement. Another
subsection provides that neither a providers action in taking down allegedly
infringing material, nor its failure to act, will be held against it in considering
a defense to a claim of infringement. This eliminates, among other things, a
potential Hobsons choice between increasing potential exposure to
liability by allowing continued access to infringing material after receiving
notice, and prejudicing a defense such as fair use by removing material.
Finally, some deterrence is provided against those who falsely claim infringement.
Subsection (d) would make anyone who materially misrepresents that material
on-line is infringing liable for damages incurred by those relying on the misrepresentation
by taking down the material.
H.R. 2180 contains no formalized notice and takedown procedure or prescription
of responsible operating practices for the on-line services industry, as was
proposed last year. Such provisions could be negotiated privately by the affected
parties. This approach has the benefit of avoiding the codification of industry-specific
rules in inflexible statutory language.
In summary, if legislation is enacted to deal with this issue, the Copyright
Office favors a simplified approach such as that taken in H.R. 2180. We view
the bill as a constructive starting point for further discussion. While we recognize
that many of the specifics of the legislation are subject to negotiation, we
believe the bill identifies the key concepts of levels of participation and
knowledge in a useful way. We believe that progress has been made in clarifying
the issues, and would be pleased to work with Congress and the affected parties
to assist in finding an acceptable solution.
CASE LAW ON ONLINE TRANSMISSIONS OF
United States Copyright Office
The following is a brief summary of reported U.S. cases
as of June 1997 challenging unauthorized online transmissions of copyrighted
works. All courts addressing a copyright claim either found infringement
or sufficient evidence to support such a finding. The nature of the analysis,
however, differed from case to case. Most courts relied on the reproduction
right; some found that other rights, such as the rights of distribution
and public display, had been implicated. Those courts that discussed the
issue of RAM copies took it as settled that a reproduction of a work in
a computers RAM is sufficiently fixed to constitute
a copy under the copyright law.
In a number of these cases, the question of which rights
were infringed is less than clear. The courts often fail to differentiate
among the rights, or to conduct a thorough analysis of each separately.
Thus, they may simply find copying in its plain English meaning, or use words like transmitted,
posted, distributed, uploaded, or downloaded without
clearly indicating what actions were sufficient to constitute aprima
facie infringement, and of which right.
Despite the consistent determinations on infringement,
the courts have not subjected everyone in the chain of distribution to
liability. In general, liability was imposed on individuals who placed
unauthorized copies of works on the Internet or on operators of bulletin
board services (BBSs) dedicated to encouraging piracy, based either on
direct infringement or on contributory infringement. In a few cases, a
courts imprecise language suggested the possibility of direct
infringement by a BBS operator which had not itself engaged in acts within the
scope of the copyright owners rights. In each of these cases, however,
the facts appeared sufficient to support a finding of contributory infringement
based on knowledge and participation.
Plaintiffs generally did not name Internet access providers
or online service providers (together, IAPs) as defendants.
The sole case indicating potential liability for an IAP was Religious Technology
Center v. Netcom, where the court held that an IAP would be liable for
contributory infringement if it had allowed distribution of infringing
material with knowledge of the infringement.
I. Cases holding reproduction right and other rights implicated
Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1996)
Action against operator of BBS, whose subscribers uploaded
or downloaded unauthorized copies of plaintiffs works.
Citing MAI v. Peak, 991 F. 2d 511 (9th Cir. 1993), court found copies were
made when works were uploaded to or downloaded from the BBS. Citing Netcom,
court held defendant was not directly liable for the reproduction since the
subscribers, not defendant, copied the works by uploading or downloading them.
Court held defendant liable for contributory infringement, where defendant knew
of the infringing activity and contributed to this activity by, among other
things, providing the BBS as a central depository site for the unauthorized
copies of the game, furnishing facilities for the copying of the game by providing,
monitoring, and operating the BBS software, hardware, and phone lines necessary
for the users to upload and download games, and allowing the subsequent distribution
of the copies by subscriber downloads.
This decision explicitly clarifies and supersedes an earlier decision on a
motion for a preliminary injunction, which suggested the possibility of the
BBS operator being liable for direct infringement, not just contributory infringement.
Sega Enterprises Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994).
Religious Technology Ctr. v. Netcom On-Line Communication Servs., Inc.,
907 F. Supp. 1361 (N.D. Cal. 1995)
Action against operator of BBS and Internet access provider
(IAP) for copyright infringement where BBS subscriber posted plaintiffs
works on BBS.
Court stated that when subscriber posts work on Usenet,
it is transmitted and automatically copied from BBS operators computer onto IAPs computer
and other computers on Usenet. Court stated that there is no question
after MAI that copies were created, as the subscribers
act of posting messages caused reproduction of plaintiffs works on both
defendants storage devices.
As to defendants liability, court held that their storage and re-transmission
of infringing copies did not constitute direct infringements of the rights of
reproduction, distribution, or public display due to the absence of the necessary
volitional or causal elements, where the defendants did not initiate
such acts themselves, or take any affirmative action that resulted in such
acts. In contrast to the holding of Playboy v. Frena (described below) on this
point, court stated that only the subscriber should be directly liable for
the infringement of these rights, because he uploaded copies onto the computer
and caused their distribution.
Defendants were, however, potentially liable for contributory
infringement of the distribution right. Court held that defendants would
be liable for contributory infringement, if plaintiffs could prove that
defendants, with knowledge of the infringing postings, continued to allow
the distribution of the works on their systems. Preliminary injunction
denied, however, because there was little evidence that defendants knew
or should have known of the infringement, and their participation was not
substantial. Court found no vicarious liability because though there was
an issue of fact as to defendants right and ability to control, there
was no direct financial benefit to them.
Central Point Software, Inc. v. Nugent, 903 F. Supp. 1057 (E.D. Tex. 1995)
Action against operator of BBS, who allowed and encouraged
subscribers to upload and download unauthorized copies of plaintiffs works.
Citing Vault Corp. v. Quaid Software Ltd., 847 F.2d 255
(5th Cir. 1989), court stated that copying of plaintiffs software could be established if it
was reproduced in a computers memory without permission. Court found
liable, apparently for direct infringement, based on evidence that
works were copied to defendants hard drive when posted on the BBS, and
available for downloading, stating, It is uncontroverted that Defendant
reproduced these later versions of the copyrighted works. Opinion unclear
as to whether BBS operator did anything other than allow and encourage subscribers
to upload and download the software. In its discussion of statutory damages,
the court indicated that the distribution right was an additional basis for
its finding of infringement, stating that [d]efendant chose to violate
the copyright laws by reproducing and providing distribution of the plaintiffs copyrighted
Playboy Enters. Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).
Action against operator of a BBS whose subscribers uploaded
and downloaded unauthorized copies of plaintiffs works.
Without any further analysis, court found direct infringement
of (1) the right of distribution, stating: There is no dispute that Defendant Frena supplied
a product containing unauthorized copies of a copyrighted work. It does not
matter that Defendant Frena claims he did not make the copies himself. and
(2) the right of public display because defendant displayed copyrighted
works on the BBS to subscribers.
Brode v. Tax Management, Inc., 1990 U.S. Dist. LEXIS 998 (N.D. Ill. 1990)
Action by author of copyrighted work against its publishers and Mead Data,
provider of LEXIS computer assisted research service, alleging infringement
based on continued availability of the work on LEXIS after the license to publish
it electronically had expired.
Defendant argued that the work's "mere availability on LEXIS failed to
abridge plaintiff's copyright, and that there was no act of reproduction
or distribution since plaintiff had presented no evidence that the work was
ever "called up" or printed out. Court did not address
this argument as to the distribution right, but as to the reproduction right,
it held that sufficient evidence had been adduced that the database containing
plaintiffs work was called up to survive a motion of
II. Cases holding the reproduction right alone implicated
Sega Enterprises v. Sabella, 1996 U.S. Dist. LEXIS 20470 (N.D. Cal. 1996)
Action against operator of BBS, whose subscribers uploaded
and downloaded unauthorized copies of plaintiffs works.
Citing MAI, court found copying of works established by the fact that they
were uploaded or downloaded from the BBS. Following Netcom, court held that
defendant was not directly liable for infringement since she did not herself
upload or download the works. The court found that Sabella engaged
in acts including providing the BBS as a central depository site for the
copies of the works, allowing their subsequent distribution by user downloads,
and providing, monitoring, and operating the BBS software, hardware, and
phone lines necessary for the users to upload and download the works. Court
therefore held defendant liable for contributory infringement where she
knew of her subscribers
infringing activity and contributed to this activity by providing facilities,
direction, and encouragement for the unauthorized copying. While the court explained
that through the operation of a BBS video game programs can be distributed, it
focused on the acts of reproduction, rather than distribution.
Religious Technology Ctr. v. Lerma, 1996 U.S. Dist. LEXIS 15454 (E.D.Va.
Action against defendant who copied plaintiffs works onto his computer
and posted them onto the Internet. Initially action included claims against
defendants IAP, but these claims were voluntarily dismissed by plaintiffs.
Defendant admitted copying works by posting segments on
the Internet. Rejecting fair use defense, court held that defendant infringed
by posting the material.
Scientist, Inc. v. Lindsey, 1996 U.S. Dist. LEXIS 7099 (E.D. Pa. 1996),
summ. j. denied, 1996 U.S. Dist. LEXIS 11372 (E.D. Pa. 1996)
Action against publisher of Internet newsletter which
contained unauthorized copies of plaintiffs works. IAP not named
as a defendant.
Copying of plaintiffs works in defendants online
newsletter not denied; opinion turned on issue of originality of material
copied. Court denied summary judgment, finding material issues of fact
as to the issue of originality.
III. Other online transmission cases
The following cases do not directly address claims of copyright infringement,
but contain relevant assumptions, analogies or dicta.
United States v. Stowe, 1996 U.S. Dist. LEXIS 11911 (N.D. Ill. 1996)
Motion by operator of BBS for the return of computer hardware and software
seized by the government in criminal copyright infringement case.
The warrant that authorized the seizure was based on allegations
of copyright infringement by a BBS operator, where the BBS had been designed
so that users could download copyrighted software only if they had previously
uploaded other copyrighted software. Citing the governments continuing criminal investigation,
court denied defendants motion.
ProCD Inc. v. Zeidenberg, 86 F. 3d 1447 (7th Cir. 1996)
Action by producer of computer program and database against
purchaser who made the database available on the Internet, and sold access
to users. Defendants
actions violated the terms of the shrinkwrap license, which prohibited
use of the product for commercial purposes.
Court held that shrinkwrap licenses are binding contracts,
and that enforcement under state law did not create rights equivalent to
exclusive rights within the scope of copyright, and so was not preempted
by the Copyright Act. In dicta, the court stated that copyright law would
prohibit an unauthorized individual from transmit[ting] or
copying the work.
Playboy Enters v. Chuckleberry Publ., Inc., 939 F. Supp. 1032 (S.D.N.Y
1996), recons. denied, 1996 U.S. Dist. LEXIS 9865 (S.D.N.Y. 1996)
Trademark infringement case bearing on the meaning of distribution
on the Internet. Defendant had established in Italy an Internet site containing
pictorial images under the Playmen name, which were available
for downloading by subscribers. IAP not named as a defendant.
Motion for contempt; issue was whether defendants activities on the Internet
violated a 1981 injunction barring it from distributing or selling in the United
States a magazine bearing the name Playmen. Relying on the copyright
cases Playboy v. Frena and Religious Technology Center v. Netcom (discussed
above) in its analysis, court concluded that a prohibited distribution occurred
when defendants set up an Internet site containing images under the Playmen
name that could be downloaded by subscribers. Defendant argued that it had not
distributed its magazine in the United States, but merely posted
images on a computer in Italy, which was outside of the scope of the injunction.
Court held that defendant had distributed its product in the United States,
when it solicited United States subscribers to its Internet site and provided
them with passwords. In its later opinion denying a motion for reconsideration,
the court clarified that its finding that distribution occurred in the United
States was based not only on the exchange between defendants and users concerning
passwords, but on the fact that by inviting users to download images, defendant
caused[ed] and contribut[ed] to their distribution within the United
Comedy III Prods. v. Class Publ., Inc. 1996 U.S. Dist. LEXIS 5710 (S.D.N.Y.
Action under the Lanham Act and related state law causes of action. IAP not
named as a defendant.
Defendants had continued to advertise merchandise bearing
the names, likenesses, and trademarks of the Three Stooges on its web site
after its license to do so had expired. Court held that defendants violated
to the titles, symbols, trademarks, copyrights, designs, advertising,
artwork, likenesses and logo of the Three Stooges, and that their
conduct violated Section 43(a) of the Lanham Act.
(1) These concerns relate not only to fair use, but to all permitted
uses under the Copyright Act, including those made possible by the idea-expression
dichotomy and the first sale doctrine. For purposes of our discussion
here, we will refer to all of these user privileges collectively as
fair use interests.
(2) The extent to which restrictions can be imposed by contract on
uses that would otherwise be permissible under copyright law has also
become a controversial issue. See, e.g., ProCD, Inc. v. Zeidenberg,
86 F.3d 1447 (7th Cir. 1996) (holding that the Copyright Act does not
generally preempt contract rights).
(3) Section 1202 implements the relevant obligation under both WIPO
treaties. Since performers whose performances are fixed in sound recordings
may qualify as authors under U.S. copyright law, the reference in the
definition of “copyright
management information” to identifying information about the “author
of a work” covers such performers as well as other categories