ESA, RIAA, BSA, SIIA Amicus Brief

Case: 08-10521 Document: 00511200135 Page: 1 Date Filed: 08/10/2010
No. 08-10521
IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT
MGE UPS SYSTEMS, INC.

Plaintiff-Appellant-Cross-Appellee,
v.
POWER PROTECTION SERVICES, LLC;
BILL WILKIE,
Defendants-Appellees,
GE CONSUMER AND INDUSTRIAL, INC.;
GE INDUSTRIAL SYSTEMS, INC.;
GENERAL ELECTRIC COMPANY;
POWER MAINTENANCE INTERNATIONAL, INC.,
Defendants-Appellees-Cross-Appellants.
On Appeal From The United States District Court for the

Northern District Of Texas, Fort Worth Division, No. 4:04-CV-929Y
BRIEF OF AMICI CURIAE ENTERTAINMENT SOFTWARE

ASSOCIATION, BUSINESS SOFTWARE ALLIANCE, RECORDING
INDUSTRY ASSOCIATION OF AMERICA, AND SOFTWARE &
INFORMATION INDUSTRY ASSOCIATION
IN SUPPORT OF APPELLANT’S PETITION FOR REHEARING EN BANC
Stacy R. Obenhaus
Gardere Wynne Sewell LLP
3000 Thanksgiving Tower
1601 Elm Street
Dallas, Texas 75201-4761
Tel: 214.999.4868
Fax: 214.999.3868
sobenhaus@gardere.com
Counsel of Record for Amici Curiae
Kenneth Doroshow
Senior VP, General Counsel
Entertainment Software Association
575 7th Street, NW, Suite 300
Washington, DC 20004
Tel: 202.223.2400 Ext. 145
Fax: 202.223.2401
kdoroshow@theEsa.com
Jennifer Pariser
Senior VP, Litigation
Recording Industry Association of America
1025 F Street, NW, 10th Floor
Tel: 202.857.9605
Fax: 202.775.7253
jpariser@riaa.com
Keith M. Kupferschmid
VP, Intellectual Property Policy & Enforcement
Software & Information Industry Association
1090 Vermont Avenue, NW, 6th Floor
Tel: 202.289.7442 Ext. 1327
Fax: 202.289.7097
kkupfer@siia.net
Of Counsel for Amici Curiae Entertainment Software Association, Business

Software Alliance, Recording Industry Association of America, and Software &
Information Industry Association
CERTIFICATE OF INTERESTED PARTIES
MGE UPS Systems, Inc. v. Power Protection Services, LLC, No. 08-10521
I certify that the following listed persons and entities as described in the
fourth sentence of Fifth Circuit Rule 28.2.1 have an interest in the outcome of this
case. These representations are made in order that the judges of this court may
evaluate possible disqualifications or recusal.
Plaintiff, Appellant and Cross-Appellee: Counsel:
MGE UPS Systems, Inc. Stephen A. Kennedy

Zachary M. Groover
The Law Offices of Stephen A. Kennedy
Dallas, Texas
Defendants-Appellees:
Power Protection Services, LLC

Bill Wilkie
Defendants-Appellees/Cross-Appellants: Counsel:
GE Consumer and Industrial, Inc. Joseph F. Cleveland, Jr.

GE Industrial Systems, Inc. Richard H. Gateley
General Electric Company J. Heath Coffman
Power Maintenance International, Inc. Brackett & Ellis
Fort Worth, Texas
Amici Curiae: Counsel:
Entertainment Software Association Stacy R. Obenhaus

Business Software Alliance Gardere Wynne Sewell LLP
Recording Industry Association Houston/Dallas, Texas
of America
Software & Information Industry /s/ Stacy R. Obenhaus
Association Counsel for Amici Curiae
i
TABLE OF CONTENTS
CERTIFICATE OF INTERESTED PARTIES ..........................................................i
TABLE OF AUTHORITIES ................................................................................... iii
STATEMENT OF INTEREST OF AMICI CURIAE...............................................1
ARGUMENT .............................................................................................................2
A. The Panel Decision Misreads Section 1201(a) .....................................2
B. The Consistent View of the Copyright Office Should be Considered..4
C. The Panel Decision Steps Far Beyond Any Judicial Precedent............5
D. The Panel Decision Could Undermine Digital Commerce in

Copyrighted Materials...........................................................................7
CONCLUSION..........................................................................................................8
CERTIFICATE OF SERVICE ................................................................................10
ii
TABLE OF AUTHORITIES
Cases
Chamberlain v. Skylink Technologies, Inc.,

381 F.3d 1178 (Fed. Cir. 2004) ................................................................... 5, 6, 7
CoxCom, Inc. v. Chaffee,

536 F.3d 101 (1st Cir. 2008) ............................................................................... 5
MDY Indus., LLC v. Blizzard Entm’t, Inc.,

616 F. Supp. 2d 958 (D. Ariz. 2009)................................................................... 5
MGE UPS Systems, Inc. v. GE Consumer and Industrial Inc.,

No. 08-10521 (5th Cir. July 20, 2010) ............................................................ 2, 6
Sony Computer Entm’t America, Inc. v. Divineo, Inc.,

457 F. Supp. 2d 957 (N.D. Cal. 2006) ................................................................ 5
Universal City Studios, Inc. v. Corley,

273 F. 3d 429 (2d Cir. 2001) ............................................................................... 5
Statutes
TEX. PENAL CODE ANN. § 33.02 (2009) ................................................................. 3
Title 17, U.S. Code.................................................................................................. 3

§ 1201 .............................................................................................................. 3, 6
§ 1201(a)..................................................................................................... passim
§ 1201(a)(1) ............................................................................................. 1, 2, 3, 6
§ 1201(a)(1)(A)............................................................................................ 3, 4, 5
§ 1201(a)(2) ......................................................................................................... 5
§ 1201(b).............................................................................................................. 3
§ 1201(a)(1)(B) – (E)........................................................................................... 4
47 U.S.C.
§§ 553, 605 (2006) .............................................................................................. 3
iii
Other Authorities
Exemption to Prohibition on Circumvention of Copyright Protection Systems

for Access Control Technologies Final Rule,
75 Fed. Reg. 43,825 (July 27, 2010) (codified at 37 C.F.R. § 201.40)........... 4, 5
Section-By-Section Analysis of H.R. 2281 as passed by the United States House of

Representatives on August 4, 1998. House Comm. on the Judiciary, 105th
Cong., (Comm. Print 1998) at 6, reprinted in 46 J. Copy. Soc. 631, 639-40
(1999)................................................................................................................... 7
iv
STATEMENT OF INTEREST OF AMICI CURIAE
Amici curiae, trade associations whose members have relied upon access
control technologies to make copyrighted works widely available in the digital
environment, all share a strong interest in interpretation and enforcement of the
statute at issue in this case, 17 U.S.C. § 1201(a)(1).
Amicus Entertainment Software Association (ESA) is a not-for-profit trade
association representing nearly all major U.S. publishers of computer and video
games for video game consoles, personal computers, handheld and mobile devices,
and the Internet.
Amicus Business Software Alliance (BSA) is the voice of the world’s
software industry and its hardware partners on a wide range of business and policy
affairs. BSA’s members are responsible for more than 90 percent of the world’s
office productivity software and a wide array of other software products.
Amicus Recording Industry Association of America (RIAA) represents the
creators, manufacturers, and/or distributors of approximately 85% of all legitimate
sound recordings produced and sold in the U.S.
Amicus Software and Information Industry Association (SIIA) represents
some 500 high-tech companies that develop and market software and electronic
content for business, education, consumers, the Internet, and entertainment.
1
ARGUMENT
Amici support rehearing of a single aspect of the panel’s decision: its ruling
that by-passing a dongle (hardware lock) used to control access to a copyrighted
computer program does not violate 17 U.S.C. § 1201(a)(1) unless the by-passing
also “infringes a right protected by the Copyright Act.” MGE UPS Systems, Inc. v.
GE Consumer and Industrial Inc., No. 08-10521, slip op. at 7 (5th Cir. July 20,
2010) (“slip op.”).1 This conclusion conflicts with the plain language of the
statute, with the consistent view of the expert agency charged by Congress with
interpreting it, and with the decisions of nearly every other court to have
considered the question. Unless corrected on rehearing, the panel’s interpretation
could burden a large and vital sector of the economy, by casting doubt on
protections for access control technologies widely used by copyright owners, and
could erode the basis for the vast expansion of copyrighted works made available
to consumers and businesses in the digital environment.
A. The Panel Decision Misreads Section 1201(a)
MGE claimed that PMI/GE violated § 1201(a)(1)(A) by “circumvent[ing] a
technological measure that effectively controls access to a work protected under”
1
Amici are not calling for rehearing to the extent that the panel’s affirmance of the District
Court’s ruling on this issue rested solely upon the conclusion that MGE did not prove that
“GE/MPI actually circumvented the technology (as opposed to using technology already
circumvented).” Slip op. at 7. Amici take no position on whether MGE failed to prove this fact,
or on whether such a failure of proof would be fatal to its § 1201(a)(1) claim.
2
Title 17.2 In rejecting this claim, the panel’s exclusive focus on the word
“access” led it to a plainly incorrect reading of the statute.
In enacting § 1201(a), Congress built on a common law tradition of
punishing the act of unauthorized access, even if the trespasser commits no further
offense once on the premises. Laws on computer crime3 and cable signal theft4 are
more recent precedents for Congress’s decision to prohibit the act of gaining
unauthorized access to copyrighted works. Although the structure of § 1201
embodies this decision, with separate prohibitions against circumvention of access
controls (§ 1201(a)) and against trafficking in tools to circumvent copy controls
(§ 1201(b)), the panel mistakenly required MGE to show not only unauthorized
access, but also copyright infringement.
Clear evidence that the panel misread the statute comes from § 1201(a)(1)
itself. In the four paragraphs following the prohibition on circumventing access
controls, Congress created a process for recognizing temporary administrative
exemptions to this prohibition, if it is having or is likely to have an adverse impact
on non-infringing uses of copyrighted works. If circumvention of an access
control were never prohibited absent infringement of copyright, then the
Congressional directive in § 1201(a)(1)(B) – (E) —to identify the particular classes
2
All legislative citations are to Title 17, U.S. Code, unless otherwise stated.
3
See, e.g., TEX. PENAL CODE ANN. § 33.02 (2009).
4
See, e.g., 47 U.S.C. §§ 553, 605 (2006).
3
of works as to which the prohibition of that circumvention should be suspended,
because of its impact on non-infringing use —would be pointless.
B. The Consistent View of the Copyright Office Should be Considered
The record of the triennial rulemaking proceedings held pursuant to
§ 1201(a)(1)(B) – (E) is also highly instructive of the proper statutory
interpretation. The Librarian of Congress, acting in accordance with detailed
recommendations of the Register of Copyrights, has considered § 1201(a)(1)(A) in
depth four times over the past decade, and specifically considered the case of
dongles that control access to software. In each cycle, based on extensive
testimony and arguments from proponents and opponents, the Register
recommended – and the Librarian adopted – an administrative exemption to allow
circumvention of malfunctioning or obsolete dongles in certain defined cases.5
Each time, the statutory prohibition was kept in place for other cases of
circumvention of dongles, including for non-infringing purposes. Nowhere in this
voluminous record is there any indication that a dongle might not be protected as
an access control unless its circumvention also constitutes copyright infringement.
To the contrary, the most recent final rule explicitly acknowledged that
circumvention of dongles outside the scope of the administrative exemption

5
For the most recent rule, see Exemption to Prohibition on Circumvention of Copyright
Protection Systems for Access Control Technologies Final Rule, 75 Fed. Reg. 43,825 (July 27,
2010) (codified at 37 C.F.R. § 201.40). No one argues that any administrative exemption
applies to the facts of this case.
4
violates § 1201(a)(1)(A), regardless of whether the circumvention involves
copyright infringement.6
C. The Panel Decision Steps Far Beyond Any Judicial Precedent
Nearly all courts that have ruled on claims of circumvention of access
controls have concluded that the statute does not require proof of a link to
copyright infringement.7 The main outlier to this judicial consensus is the Federal
Circuit, upon whose decision in Chamberlain v. Skylink Technologies, Inc., 381
F.3d 1178 (Fed. Cir. 2004), the panel relied almost exclusively in rejecting MGE’s
§ 1201(a)(1) claim. Amici believe the aspect of Chamberlain on which the panel
relied, if not mere dicta, was wrongly decided, and should not be followed.8 This
is a vital issue for rehearing.
6
See, e.g., 75 Fed. Reg. 43,825, 43,834 (July 27, 2010) (“Some copyright owners legitimately
use dongles to control access to a computer program by unauthorized users and are entitled to the
full benefit of the prohibition as long as reasonable accommodations are offered for
malfunctioning or damaged dongles”).
7
See, e.g., Universal City Studios, Inc. v. Corley, 273 F. 3d 429, 443 (2d Cir. 2001) (“[T]he
DMCA targets the circumvention of digital walls guarding copyrighted material … but does not
concern itself with the use of those materials after circumvention has occurred.”) (emphasis in
original); CoxCom, Inc. v. Chaffee, 536 F.3d 101 (1st Cir. 2008) (trafficking in digital cable
filters which circumvent pay-per-view delivery and billing system violated 1201(a), even though
the goal was to gain free access to pay-per-view movies, not to make copies); MDY Indus., LLC
v. Blizzard Entm’t, Inc., 616 F. Supp. 2d 958, 967-68 & n.2 (D. Ariz. 2009) (circumvention of
measure that controlled access to dynamic elements of online game-play violated 1201(a), even
though no copying occurred through use of circumvention tool); Sony Computer Entm’t America
Inc. v. Divineo, Inc., 457 F. Supp. 2d 957, 965 (N.D. Cal. 2006) (trafficking in devices to
circumvent access controls on game console violated § 1201(a)(2), even where ultimate uses of
accessed works did not infringe copyright).
8
Chamberlain’s observations about the link between § 1201(a) and infringement were obiter
dicta, since the court had already decided that the § 1201(a) claim fell short due to lack of proof
5
Even if Chamberlain were good law, the panel decision misapplied it.
Chamberlain concluded that “17 U.S.C. § 1201 prohibits only forms of access that
bear a reasonable relationship to the protection that the Copyright Act otherwise
affords copyright owners.” Id. at 1202. The panel in this case did not even
mention this test of “reasonable relationship” to infringement. Had it applied the
Chamberlain test, MGE’s claim would have passed it with flying colors. Indeed,
this case is the mirror image of Chamberlain, where the court was faced with a
circumvention tool that “enables only uses that copyright law explicitly
authorizes.” 381 F.3d at 1184. In other words, there was no circumstance in
which circumvention could lead to infringement. Here, by contrast, by-passing the
dongle was the condition precedent to a series of copyright infringements for
which the jury awarded damages of over $2.2 million. Slip op. at 4. It seems
inescapable that by-passing the dongle, at the least, “bore a reasonable
relationship” to the copyright infringement that had occurred. The panel decision
thus extends far beyond even Chamberlain’s misreading of § 1201(a).
that the circumvention was unauthorized by the copyright owner. See Chamberlain, 381 F. 3d at
1204.
6
D. The Panel Decision Could Undermine Digital Commerce in Copyrighted

Materials
In enacting § 1201(a), Congress believed that access controls would
“support new ways of disseminating copyrighted materials to users” and “make
more works more widely available.”9 This prediction has come true, to the benefit
of consumers and businesses everywhere. For example, ESA member companies
use various technologies to prevent unauthorized access to their video games, such
as user and device authentication; restrictions on trial versions of game software, to
allow consumers a “try before you buy” experience; and tethering of downloads to
particular online accounts. Similarly, businesses can license software from SIIA
member companies less expensively because metering technology is used to deny
access to more than the number of simultaneous users authorized by the license.
RIAA member companies rely on access controls to ensure that only paid
subscribers can access music from online subscription services. By enhancing the
copyright owner’s ability to manage access, these technologies encourage
investment in digital dissemination, and benefit consumers and businesses with
wider choices of products, price points, and portability.
The panel’s decision threatens these benefits, by sharply diminishing
copyright owners’ ability to enforce the protections Congress granted in 1998.
9
Section-By-Section Analysis of H.R. 2281 as passed by the United States House
of Representatives on August 4, 1998. House Comm. on the Judiciary, 105th Cong.
(Comm. Print 1998) at 6, reprinted in 46 J. Copy. Soc. 631, 639-40 (1999).
7
Section 1201(a) could be rendered a virtual nullity if it were necessary to prove
that every circumvention of an access control was also a copyright infringement.
CONCLUSION
For the foregoing reasons, amici respectfully urge this court to grant the
Petition for Rehearing En Banc.
8
Respectfully submitted,
/s/ Stacy R. Obenhaus

Stacy R. Obenhaus
Gardere Wynne Sewell LLP
3000 Thanksgiving Tower
1601 Elm Street
Dallas, Texas 75201-4761
Tel: 214.999.4868
Fax: 214.999.3868
sobenhaus@gardere.com
Kenneth Doroshow Jennifer Pariser

Senior VP, General Counsel Senior VP, Litigation
Entertainment Software Association Recording Industry Association of America
575 7th Street, NW, Suite 300 1025 F Street, NW, 10th Floor
Washington, DC 20004 Washington, DC 20004
Tel: 202.223.2400 x 145 Tel: 202.857.9605
Fax: 202.223.2401 Fax: 202.775.7253
kdoroshow@theEsa.com jpariser@riaa.com
Keith M. Kupferschmid
VP, Intellectual Property Policy
& Enforcement Of Counsel for Amici Curiae:
Software & Information Industry
Association Entertainment Software Association
1090 Vermont Avenue, NW Business Software Alliance
6th Floor Recording Industry Association of America
Washington, DC 20005 Software & Information Industry
Tel: 202.289.7442 x 1327 Association
Fax: 202.289.7097
kkupfer@siia.net
9
CERTIFICATE OF SERVICE
I certify that on the 10th day of August, 2010, via electronic delivery, the
original and seven true copies of the foregoing Brief of Amici Curiae have been
filed with the Clerk for the United States Court of Appeals for the Fifth Circuit:
Lyle W. Cayce
Clerk of the Court
United States Court of Appeals for the Fifth Circuit
600 South Maestri Place
New Orleans, Louisiana 70130
and served on the following:
Stephen A. Kennedy
Zachary M. Groover
The Law Offices of Stephen A. Kennedy
1700 Pacific Avenue, Suite 1280
Dallas, Texas 75201
Joseph F. Cleveland, Jr.

Richard H. Gateley
J. Heath Coffman
Brackett & Ellis
A Professional Corporation
100 Main Street
Fort Worth, Texas 76102
Date: August 10, 2010 /s/ Stacy R. Obenhaus

Counsel of Record for Amici Curiae
DALLAS 2159850v.1
10

ESA, RIAA, BSA, SIIA Amicus Brief

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Case: 08-10521 Document: 00511200135 Page: 1 Date Filed: 08/10/2010

IN THE UNITED STATES COURT OF APPEALS

MGE UPS SYSTEMS, INC.

On Appeal From The United States District Court for the

BRIEF OF AMICI CURIAE ENTERTAINMENT SOFTWARE

Of Counsel for Amici Curiae Entertainment Software Association, Business

CERTIFICATE OF INTERESTED PARTIES

evaluate possible disqualifications or recusal.

Plaintiff, Appellant and Cross-Appellee: Counsel:

MGE UPS Systems, Inc. Stephen A. Kennedy

Power Protection Services, LLC

GE Consumer and Industrial, Inc. Joseph F. Cleveland, Jr.

Amici Curiae: Counsel:

Entertainment Software Association Stacy R. Obenhaus

CERTIFICATE OF INTERESTED PARTIES ..........................................................i

TABLE OF AUTHORITIES ................................................................................... iii

STATEMENT OF INTEREST OF AMICI CURIAE...............................................1

A. The Panel Decision Misreads Section 1201(a) .....................................2

B. The Consistent View of the Copyright Office Should be Considered..4

C. The Panel Decision Steps Far Beyond Any Judicial Precedent............5

D. The Panel Decision Could Undermine Digital Commerce in

CERTIFICATE OF SERVICE ................................................................................10

Chamberlain v. Skylink Technologies, Inc.,

CoxCom, Inc. v. Chaffee,

MDY Indus., LLC v. Blizzard Entm’t, Inc.,

MGE UPS Systems, Inc. v. GE Consumer and Industrial Inc.,

Sony Computer Entm’t America, Inc. v. Divineo, Inc.,

Universal City Studios, Inc. v. Corley,

TEX. PENAL CODE ANN. § 33.02 (2009) ................................................................. 3

Title 17, U.S. Code.................................................................................................. 3

Exemption to Prohibition on Circumvention of Copyright Protection Systems

Section-By-Section Analysis of H.R. 2281 as passed by the United States House of

STATEMENT OF INTEREST OF AMICI CURIAE

control technologies to make copyrighted works widely available in the digital

environment, all share a strong interest in interpretation and enforcement of the

statute at issue in this case, 17 U.S.C. § 1201(a)(1).

Amicus Entertainment Software Association (ESA) is a not-for-profit trade

and the Internet.

Amicus Business Software Alliance (BSA) is the voice of the world’s

office productivity software and a wide array of other software products.

Amicus Recording Industry Association of America (RIAA) represents the

creators, manufacturers, and/or distributors of approximately 85% of all legitimate

sound recordings produced and sold in the U.S.

Amicus Software and Information Industry Association (SIIA) represents

content for business, education, consumers, the Internet, and entertainment.

that by-passing a dongle (hardware lock) used to control access to a copyrighted

considered the question. Unless corrected on rehearing, the panel’s interpretation

to consumers and businesses in the digital environment.

A. The Panel Decision Misreads Section 1201(a)

MGE claimed that PMI/GE violated § 1201(a)(1)(A) by “circumvent[ing] a

technological measure that effectively controls access to a work protected under”

“access” led it to a plainly incorrect reading of the statute.

In enacting § 1201(a), Congress built on a common law tradition of

unauthorized access to copyrighted works. Although the structure of § 1201

embodies this decision, with separate prohibitions against circumvention of access

controls (§ 1201(a)) and against trafficking in tools to circumvent copy controls

access, but also copyright infringement.

itself. In the four paragraphs following the prohibition on circumventing access

controls, Congress created a process for recognizing temporary administrative

exemptions to this prohibition, if it is having or is likely to have an adverse impact

on non-infringing uses of copyrighted works. If circumvention of an access

control were never prohibited absent infringement of copyright, then the