Week 11

V. Technological Protections

WIPO Copyright Treaty – December 1996

SUMMARY
 The WIPO Copyright Treaty (WCT) is a special agreement under the Berne Convention that deals with the
protection of works and the rights of their authors in the digital environment.
 Any Contracting Party (even if it is not bound by the Berne Convention) must comply with the substantive
provisions of the 1971 (Paris) Act of the Berne Convention for the Protection of Literary and Artistic Works
(1886).
 WCT mentions TWO SUBJECT MATTERS to be protected by copyright: 
o (i) Computer programs: whatever the mode or form of their expression; and
o (ii) Databases: Compilations of data or other material ("databases"), in any form, which, by reason of
the selection or arrangement of their contents, constitute intellectual creations. (Where a database
does not constitute such a creation, it is outside the scope of this Treaty.)
 As to the RIGHTS GRANTED TO AUTHORS, apart from the rights recognized by the Berne Convention, the
Treaty also grants: 
o (i) the right of distribution;
o (ii) the right of rental;
o (iii) a broader right of communication to the public.
 The right of distribution is the right to authorize the making available to the public of the original and
copies of a work through sale or other transfer of ownership.
 The right of rental is the right to authorize commercial rental to the public of the original and copies of
three kinds of works: 
o (i) computer programs (except where the computer program itself is not the essential object of the
rental);
o (ii) cinematographic works (but only in cases where commercial rental has led to widespread
copying of such works, materially impairing the exclusive right of reproduction);
o (iii) works embodied in phonograms as determined in the national law of Contracting Parties (except
for countries which, since April 15, 1994, have had a system in force for equitable remuneration of
such rental).
 The right of communication to the public is the right to authorize any communication to the public, by wire
or wireless means, including "the making available to the public of works in a way that the members of the
public may access the work from a place and at a time individually chosen by them". The quoted
expression covers, in particular, on-demand, interactive communication through the Internet.
 As to LIMITATIONS AND EXCEPTIONS:
o Article 10 of the WCT incorporates the so-called "three-step" test to determine limitations and
exceptions, as provided for in Article 9(2) of the Berne Convention, extending its application to all
rights.
o The Agreed Statement accompanying the WCT provides that such limitations and exceptions, as
established in national law in compliance with the Berne Convention, may be extended to the
digital environment. Contracting States may devise new exceptions and limitations appropriate to
the digital environment. The extension of existing or the creation of new limitations and exceptions is
allowed if the conditions of the "three-step" test are met.
 As to DURATION, the term of protection must be at least 50 years for any kind of work.
 The enjoyment and exercise of the rights provided for in the Treaty cannot be subject to any formality.
 The Treaty obliges Contracting Parties to provide legal remedies against the circumvention of
technological measures (e.g., encryption) used by authors in connection with the exercise of their rights,
and against the removal or altering of information, such as certain data that identify works or their authors,
necessary for the management (e.g., licensing, collecting and distribution of royalties) of their rights ("rights
management information").
 The Treaty obliges each Contracting Party to adopt, in accordance with its legal system, the measures
necessary to ensure the application of the Treaty. In particular, each Contracting Party must ensure that
enforcement procedures are available under its law so as to permit effective action against any act of
 infringement of rights covered by the Treaty. Such action must include expeditious remedies to prevent
infringement as well as remedies that constitute a deterrent to further infringement.
 The Treaty establishes an Assembly of the Contracting Parties whose main task is to address matters
concerning the maintenance and development of the Treaty. It entrusts to the Secretariat of WIPO the
administrative tasks concerning the Treaty.
 The Treaty was concluded in 1996 and entered into force in 2002.
 The Treaty is open to States members of WIPO and to the European Community. The Assembly constituted
by the Treaty may decide to admit other intergovernmental organizations to become party to the Treaty.
Instruments of ratification or accession must be deposited with the Director General of WIPO.

WIPO Performances and Phonograms Treaty (WPPT) – December 1996

 The WIPO Performances and Phonograms Treaty (WPPT) deals with the rights of two kinds of
beneficiaries, particularly in the digital environment: 
o (i) performers (actors, singers, musicians, etc.); and
o (ii) producers of phonograms (persons or legal entities that take the initiative and have the
responsibility for the fixation of sounds).
o These rights are addressed in the same instrument, because most of the rights granted by the Treaty
to performers are rights connected to their fixed, purely aural performances (which are the subject
matter of phonograms).
 As far as performers are concerned, the Treaty grants performers economic rights in their
performances fixed in phonograms (not in audiovisual fixations, such as motion pictures): 
o (i) the right of reproduction; 
o (ii) the right of distribution;
o (iii) the right of rental;
o (iv) the right of making available.
 The right of reproduction is the right to authorize direct or indirect reproduction of the phonogram in any
manner or form.
 The right of distribution is the right to authorize the making available to the public of the original and copies
of the phonogram through sale or other transfer of ownership.
 The right of rental is the right to authorize the commercial rental to the public of the original and copies of the
phonogram, as determined in the national law of the Contracting Parties (except for countries that, since
April 15, 1994, have had a system in force for equitable remuneration of such rental).
 The right of making available is the right to authorize the making available to the public, by wire or wireless
means, of any performance fixed in a phonogram, in such a way that members of the public may access
the fixed performance from a place and at a time individually chosen by them. This right covers, in
particular, on-demand, interactive making available through the Internet.
 As to unfixed (live) performances, the Treaty grants performers: 
o (i) the right of broadcasting (except in the case of rebroadcasting); 
o (ii) the right of communication to the public (except where the performance is a broadcast
performance); and 
o (iii) the right of fixation.
 The Treaty also grants performers moral rights, that is, the right to claim to be identified as the performer and
the right to object to any distortion, mutilation or other modification that would be prejudicial to the performer's
reputation.

PRODUCERS
 As far as producers of phonograms are concerned, the Treaty grants them economic rights in their
phonograms: 
o (i) the right of reproduction; 
o (ii) the right of distribution; 
o (iii) the right of rental; and 
o (iv) the right of making available.
 The right of reproduction is the right to authorize direct or indirect reproduction of the phonogram in any
manner or form.
 The right of distribution is the right to authorize the making available to the public of the original and copies
of the phonogram through sale or other transfer of ownership.
 The right of rental is the right to authorize the commercial rental to the public of the original and copies of the
phonogram, as determined in the national law of the Contracting Parties (except for countries that, since
April 15, 1994, have a system in force for equitable remuneration of such rental).
 The right of making available is the right to authorize making available to the public, by wire or wireless
means, a phonogram in such a way that members of the public may access the phonogram from a place
 and at a time individually chosen by them. This right covers, in particular, on-demand, interactive making
available through the Internet.
 The Treaty provides that performers and producers of phonograms have the right to a single equitable
remuneration for the direct or indirect use of phonograms, published for commercial purposes, broadcasting
or communication to the public.
o However, any Contracting Party may restrict or – provided that it makes a reservation to the Treaty –
deny this right. In the case and to the extent of a reservation by a Contracting Party, the other
Contracting Parties are permitted to deny, vis-à-vis the reserving Contracting Party, national
treatment ("reciprocity")
 LIMITATIONS AND EXCEPTIONS, Article 16 of the WPPT incorporates the so-called "threestep" test to
determine limitations and exceptions, as provided for in Article 9(2) of the Berne Convention, extending its
application to all rights. The accompanying Agreed Statement provides that such limitations and exceptions,
as established in national law in compliance with the Berne Convention, may be extended to the digital
environment. Contracting States may devise new exceptions and limitations appropriate to the digital
environment. The extension of existing or the creation of new limitations and exceptions is allowed if the
conditions of the "three-step" test are met.
 The term of protection must be at least 50 years.
 The enjoyment and exercise of the rights provided for in the Treaty cannot be subject to any formality.
 The Treaty obliges Contracting Parties to provide for legal remedies against the circumvention of
technological measures (e.g., encryption) used by performers or phonogram producers in connection with the
exercise of their rights, and against the removal or altering of information – such as the indication of certain
data that identify the performer, performance, producer of the phonogram and the phonogram itself –
necessary for the management (e.g., licensing, collecting and distribution of royalties) of the said rights
("rights management information").
 The Treaty obliges each Contracting Party to adopt, in accordance with its legal system, the measures
necessary to ensure the application of the Treaty. In particular, each Contracting Party must ensure that
enforcement procedures are available under its law so as to permit effective action against any act of
infringement of rights covered by the Treaty. Such action must include expeditious remedies to prevent
infringement as well as remedies that constitute a deterrent to further infringement.
 The Treaty establishes an Assembly of the Contracting Parties whose main task is to address matters
concerning the maintenance and development of the Treaty. It entrusts to the Secretariat of WIPO the
administrative tasks concerning the Treaty.
 The Treaty was concluded in 1996 and entered into force in 2002.
 The Treaty is open to States members of WIPO and to the European Community. The Assembly constituted
by the Treaty may decide to admit other intergovernmental organizations to become party to the Treaty.
Instruments of ratification or accession must be deposited with the Director General of WIPO.

171.12. 'TECHNOLOGICAL MEASURE' means any technology, device or component that, in the normal
course of its operation, restricts acts in respect of a work, performance or sound recording, which are
not authorized by the authors, performers or producers of sound recordings concerned or permitted by law;

171.13. 'RIGHTS MANAGEMENT INFORMATION' means information which identifies the work, sound
recording or performance; the author of the work, producer of the sound recording or performer of
the performance; the owner of any right in the work, sound recording or performance; or information
about the terms and conditions of the use of the work, sound recording or performance; and any
number or code that represent such information, when any of these items is attached to a copy of
the work, sound recording or fixation of performance or appears in conjunction with the communication
to the public of a work, sound recording or performance.

SECTION 6. The Organizational Structure of the IPO. RA 10172 – Intellectual Property Code

6.1. The Office shall be headed by a Director General who shall be assisted by two (2) Deputies Director
General.

6.2. The Office shall be divided into seven (7) Bureaus, each of which shall be headed by a Director and
assisted by an Assistant Director. These Bureaus are:

1. a)  The Bureau of Patents;

2. b)  The Bureau of Trademarks;

3. c)  The Bureau of Legal Affairs;

 4. d)  The Documentation, Information and Technology Transfer Bureau;

5. e)  The Management Information System and EDP Bureau; and

6. f)  The Administrative, Financial and Personnel Services Bureau; and

7. g)  The Bureau of Copyright and Other Related Rights.

6.3. The Director General, Deputies Director General, Directors and Assistant Directors shall be
appointed by the President, and the other officers and employees of the Office by the Secretary of Trade
and Industry, conformably with and under the Civil Service Law. (n)

The U.S. Digital Millennium Copyright Act

[DMCA Act of 1998] Too long zzzzzz

Universal City Studios, Inc. v. Reimerdes, 111 F. Sugpp. 2d 294 (S.D.N.Y. 2000)

8 movie studios (Universal City Studios, Inc., Paramount Pictures Corporation, Metro-Goldwyn-Mayer Studios,

Inc., Tristar Pictures, Inc., Columbia Pictures Industries, Inc., Time Warner Entertainment Co., Disney Enterprises,
Inc. and Twentieth Century Fox Film Corporation) filed a lawsuit against Eric Corley (publisher of 2600: The Hacker
Quarterly magazine), Shawn Reimerdes, Roman Kazan and 2600 Enterprises, Inc.

The movie studios claimed that all three defendants, by making available DeCSS, were 'trafficking in circumvention
devices', an illegal act under the DMCA. The studios sought injunctive relief in the form of a court order preventing
the defendants from further publicizing or disseminating the DeCSS program, as well as damages.

● A defendant's company (Eric Corley's), 2600 Enterprises, Inc., publishes a magazine entitled, 2600: The
Hacker Quarterly. 2600: The Hacker Quarterly is considered a "bible" to the hacker community.
○ The name of the magazine commemorates hackers, who in the 1960's successfully found a way to
explore "un-accessible" areas of the telephone system."
● This ability was accomplished by using a 2600-hertz tone over a long distance trunk connection to gain
access to "operator mode."' The website is a companion to the defendant's magazine and is primarily
managed by Mr. Corley. The website has been in existence since 1995.
● Beginning in November of 1999, the source and object code for DeCSS was posted on the 2600.com
website.
● Additionally, the website provided links to other sites that supposedly "mirrored" or offered DeCSS for
download. The Links to the "mirror" sites took three* forms:
○ (1) A link was provided to a website. The linked website would then, itself, contain a link from which
DeCSS could be downloaded. These pages might or might not contain other information than the link
to DeCSS.99
○ (2) The link from 2600.com's website would bring the web user to a website that provided links to
other pages which purportedly contained links to DeCSS.'
○ (3) By following the link, the download of DeCSS began immediately, albeit from a website other than
the defendant's.'
● Plaintiffs, eight major United States motion picture studios, distribute many of their copyrighted motion
pictures for home use on digital versatile disks ("DVDs"), which contain copies of the motion pictures in digital
form.
○ They protect those motion pictures from copying by using an encryption system called CSS.
○ CSS-protected motion pictures on DVDs may be viewed only on players and computer drives
equipped with licensed technology that permits the devices to decrypt and play--but not to copy--the
films.
 ● Late last year (1999), computer hackers (most prominently, a Norwegian teenager named Jon Johanson and
Eric Corley, publisher of 2600: The Hacker Quarterly magazine) devised a computer program called DeCSS
that circumvents the CSS protection system and allows CSS-protected motion pictures to be copied
and played on devices that lack the licensed decryption technology.
● Defendants quickly posted DeCSS on their Internet web site, thus making it readily available to much of the
world.
● Plaintiffs promptly brought this action under the Digital Millennium Copyright Act (the "DMCA") to enjoin
defendants from posting DeCSS and to prevent them from electronically "linking" their site to others that
post DeCSS.
○ Defendants responded with what they termed "electronic civil disobedience" --increasing their efforts
to link their web site to a large number of others that continue to make DeCSS available.
● Defendants contend that their actions do not violate the DMCA and, in any case, that the DMCA, as applied to
computer programs, or code, violates the First Amendment.
○ This is the Court's decision after trial, and the decision may be summarized in a nutshell.
● Defendants argue first that the DMCA should not be construed to reach their conduct, principally because the
DMCA, so applied, could prevent those who wish to gain access to technologically protected copyrighted
works in order to make fair--that is, non-infringing--use of them from doing so.
○ They argue that those who would make fair use of technologically protected copyrighted works need
means, such as DeCSS, of circumventing access control measures not for piracy, but to make
lawful use of those works.

ISSUES:
1) Whether the defendants violated the Anti-Trafficking Provision of the DMCA? - YES;
2) Whether the defendants' conduct fell into one of the exceptions afforded under the Act? - NO;
3) Whether linking to other sites that contain the DeCSS code is prohibited by the DMCA;? - YES;
4) Whether the DeCSScode is protected speech for First Amendment purposes? - NOT FULLY PROTECTED

● The question whether the development of a Linux DVD player motivated those who wrote DeCSS is
immaterial to the question whether the defendants now before the Court violated the anti-trafficking provision
of the DMCA.
● The inescapable facts are that
○ (1) CSS is a technological means that effectively controls access to plaintiffs' copyrighted works,
○ (2) the one and only function of DeCSS is to circumvent CSS, and
○ (3) defendants offered and provided DeCSS by posting it on their website.
● Whether defendants did so to infringe, or to permit or encourage others to infringe, copyrighted works in
violation of other provisions of the Copyright Act simply does not matter for purposes of 1201 (a)(2).
● The offering or provision of the program is the prohibited conduct- and it is prohibited irrespective of why the
program was written, except to whatever extent motive may be germane to determining whether their conduct
falls within one of the statutory exceptions.
● The exceptions claimed by the defendants, according to the DMCA, were (1) reverse engineering; (2)
encryption research; (3) security testing; and, (4) fair use.
○ Reverse engineering (one may circumvent, or develop and employ technological means to
circumvent access- control measures in order to achieve interoperability with another computer
program provided that doing so does not infringe another's copyright.)- even if defendants had done
the reverse engineering themselves, they could only post DeCSS for the sole purpose of providing
interoperability and the defendants in this case did not post DeCSS solely for interoperability
purposes.' Therefore, the Court concluded that this exception would not apply to the defendants'
case.'
○ Encryption research - no evidence to suggest that the defendants made any good faith effort to
obtain permission from the copyright owners, and furthermore, defendants were not engaged in
encryption research.
○ Security testing - The Court found that nothing in the record of Reimerdes indicated DeCSS had
anything to do with testing computers, computer systems, or computer networks.
 ○ Fair use - The Court acknowledged that certain uses deemed fair would still violate the DMCA.
The Court worked its way around the conflict between the DMCA and the fair use doctrine by holding
fast to the fact that defendants were not charged with copyright violation.
■ Rather the Court held that defendants were charged with circumventing a technological
measure that controlled access to copyrighted works in violation of the DMCA.
■ Had Congress wanted fair use to apply to situations like the one before us, the Court noted,
Congress would have said so.
● The Court concluded that links to sites where the DeCSS downloading is automatically begun once the
user clicks on the link is trafficking.
● Also, links to sites that provide only the DeCSS code or simply provide another link to the code is
trafficking.'
● The last type of linking, where the page linked to contain a "good deal" of content other than DeCSS, the
Court posited is more troublesome.'
● However, the Court held, regardless of the potential problems with banning links to these types of pages, that
defendants' conduct involved the active solicitation of others to post the code and by doing so they offered or
otherwise trafficked in the DeCSS code.
● The court held that all computer code - whether source code or object code -is a means of expressing ideas,
and the First Amendment must be brought into play before code may be prohibited or restricted.' However,
determining the level of scrutiny to be applied to statutes or regulations that prohibit or restrict computer code
is the question of most importance, the Court noted.
● The Court stated that simply because "words, symbols and even actions convey ideas and evoke
emotions does not inevitably place them beyond the power of government."'
● Two categories of restrictions on speech have been developed by the Supreme Court:
○ (1) content-based restrictions (restrictions based on the message,ideas, or subject matter of the
contents), and
○ (2) content-neutral restrictions(restrictions not motivated by a desire to limit the message)
● The restriction on speech is subject to a legal standard depending upon the type of restriction (either
content-based or content-neutral).
● Restrictions on non-speech elements of expressive conduct, the Court claimed, should receive a content-
neutral analysis.
● In upholding a regulation of non-speech elements or content-neutral restrictions,
○ the restriction must serve an important governmental interest
○ and restrict First Amendment principles no more than necessary.
● The court determined that DeCSS has a sufficiently high level of functional, non-speech elements
inherent in it (as do all computer programs) to deserve only a content-neutral analysis under the First
Amendment doctrine.
● The Court asserted that in passing the test employed for content-neutral or non-speech elements, the DMCA
was a law passed to further an important governmental interest - that of suppressing copyright piracy
and to promote the availability of copyrighted works in digital form, not of suppressing the expressive
content that may be inherent in DeCSS and code similar to it.
● The court concluded that the DMCA as applied to posting and linking here did not contravene U.S.
Const. amend.
● Plaintiffs have established by clear and convincing evidence that these defendants linked to sites posting
DeCSS, knowing that it was a circumvention device.
● Indeed, they initially touted it as a way to get free movies, and they later maintained the links to promote the
dissemination of the program in an effort to defeat effective judicial relief. They now know that
dissemination of DeCSS violates the DMCA.
● An anti-linking injunction on these facts does no violence to the First Amendment.
○ Nor should it chill the activities of web site operators dealing with different materials, as they
may be held liable only on a compelling showing of deliberate evasion of the statute.
● Thus, plaintiffs were entitled to appropriate injunctive and declaratory relief.

Authorized Versus Unauthorized Access and Interoperable Products

Chamberlain Group, Inc. v. Skylink Tech, Inc., 381 F.3d 1178 (Fed. Cir. 2004), cert. denied, 125 S.Ct. 1669
(2005)
 ● Chamberlain sued Skylink on the ground that the latter is violating the DMCA, specifically the anti-trafficking
provision of 1201 (1)(a)(2).
● Section 1201. Circumvention of copyright protection system
○ (a) Violations regarding circumvention of technological measures
○ (1)(a) No person shall circumvent a tech measure that controls access to a work protected under the
title
○ (2) No person shall manufacture, import, offer to the public, provide or traffic in any technology
product, service, device , component or part that:
■ (A) primarily designed or produced for the purpose of circumventing a tech measure that
controls access to a work protected under this title
■ (B) has only limited commercially significant purpose or use other than to circumvent a tech
measure that controls access to a work
■ (C ) Marketed by that person or another acting in concert with that person with that person’s
knowledge for use in circumventing a tech measure
■ CIRCUMVENT A TECH MEASURE – means to descramble a scrambled work, decrypt an
encrypted work or to avoid, bypass, remove, deactivate, or impair a technological measure
without authority of the copyright owner.

■ 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.
● Garage Door Openers
○ Hand-held portable transmitter and a garage opening device mounted in a homeowner’s garage.
○ The opening device has a receiver with a signal-processing software and a motor to close or open the
garage door.
○ A user must activate the transmitter, send a radio frequency to signal to the receiver located on the
opening device.
● Skylink and Chamberlain are distributors of universal transmitters.(Model 39 and Security +line )
● Chamberlain alleges that Skylink’s transmitters renders their transmitter, Security+, insecure by allowing
unauthorized users to circumvent the security inherent in rolling codes.
○ Rolling codes is a copyrighted computer program of Chamberlain that constantly changes the
transmitter signal needed to open the garage door.

● A homeowner who purchases a Chamberlain GDO owns it and has a right to use it to access his or her own
garage. At the time of sale, Chamberlain does not place any explicit terms or condition on use to limit the
ways that a purchaser may use its products. A homeowner who wishes to use a Model 39 must first program it
into the GDO. Skylink characterizes this action as the homeowner's authorization of the Model 39 to
interoperate with the GDO. In other words, according to Skylink, Chamberlain GDO consumers who purchase
a Skylink transmitter have Chamberlain's implicit permission to purchase and to use any brand of transmitter
that will open their GDO. The District Court agreed that Chamberlain's unconditioned sale implied
authorization.

● In short, the District Court concluded that because Chamberlain never restricted its customers' use of
competing transmitters with its Security+ line, those customers had implicit authorization to use Skylink's
Model 39. Because of that implicit authorization, Chamberlain could not possibly meet its burden of proving
that Skylink trafficked in a device designed to circumvent a technological measure to gain unauthorized
access to Chamberlain's copyrighted computer programs.

 In sum, Chamberlain argues that "Skylink violates the prima facie requirement of anti-trafficking § 1201(a)(2)."
o Chamberlain has not alleged that Skylink's Model 39 infringes its copyrights, nor has it alleged that
the Model 39 contributes to third-party infringement of its copyrights. Chamberlain's allegation is
considerably more straightforward: The only way for the Model 39 to interoperate with a Security+
GDO is by "accessing" copyrighted software. Skylink has therefore committed a per se violation of the
DMCA.

ISSUE: W/N Skylink is committing anti-trafficking under the DMCA 1201?

  The essence of the DMCA's anticircumvention provisions is that §§ 1201(a),(b) establish causes of action for
liability. They do not establish a new property right. The DMCA's text indicates that circumvention is not
infringement, 17 U.S.C. § 1201(c)(1) ("Nothing in this section shall affect rights, remedies, limitations, or
defenses to copyright infringement, including fair use, under this title."), and the statute's structure makes the
point even clearer.
 A plaintiff alleging a violation of Section 1201 (a) (2) must prove:
(1) Ownership of a valid copyright on a work
(2) Controlled by a technological measure which has been circumvented
(3) 3rd parties can now access
(4) Without authorization in a manner that
(5) Infringes or facilitates infringing a right protected by the Copyright Act because of a
product that
(6) Defendant either:
(a) Designed or produced primarily for circumvention
(b) Made available despite only limited commercial significance other than
circumcention
(c) Marketed for use in circumvention of the controlling technological measure.
 A plaintiff incapable of establish elements 1-5 will fail to establish a prima facie case.

 Chamberlain, however, has failed to show not only the requisite lack of authorization, but also the necessary
fifth element of its claim, the critical nexus between access and protection. Chamberlain neither alleged
copyright infringement nor explained how the access provided by the Model 39 transmitter facilitates the
infringement of any right that the Copyright Act protects. There can therefore be no reasonable relationship
between the access that homeowners gain to Chamberlain's copyrighted software when using Skylink's Model
39 transmitter and the protections that the Copyright Act grants to Chamberlain.

 The Copyright Act authorized Chamberlain's customers to use the copy of Chamberlain's copyrighted
software embedded in the GDOs that they purchased. Chamberlain's customers are therefore immune from §
1201(a)(1) circumvention liability. In the absence of allegations of either copyright infringement or § 1201(a)(1)
circumvention, Skylink cannot be liable for § 1201(a)(2) trafficking. The District Court's grant of summary
judgment in Skylink's favor was correct. Chamberlain failed to allege a claim under 17 U.S.C. § 1201.

 The DMCA does not create a new property right for copyright owners. Nor, for that matter, does it divest the
public of the property rights that the Copyright Act has long granted to the public. The anticircumvention and
anti-trafficking provisions of the DMCA create new grounds of liability. A copyright owner seeking to impose
liability on an accused circumventor must demonstrate a reasonable relationship between the circumvention
at issue and a use relating to a property right for which the Copyright Act permits the copyright owner to
withhold authorization—as well as notice that authorization was withheld. A copyright owner seeking to
impose liability on an accused trafficker must demonstrate that the trafficker's device enables either copyright
infringement or a prohibited circumvention. Here, the District Court correctly ruled that Chamberlain pled no
connection between unauthorized use of its copyrighted software and Skylink's accused transmitter. This
connection is critical to sustaining a cause of action under the DMCA.

Lexmark International, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2005)

FACTS:

● Lexmark sold discount toner cartridges for its printers that only Lexmark could re-fill because it had a
microchip that was designed to prevent it from functioning from other toner catrdiges that Lexmar did not refill.

○ Static Control Component (SCC) mimicked Lexmark’s computer chip and sold it to companies.

 Lexmark employs copyrighted computer programs embedded within microchips to control and monitor various

operations on the T-series toner cartridges. It utilizes an authentication sequence to prevent unauthorized
access to its Printer Engine and Toner Loading Program (TLP).
 o In the absence of the authentication sequence, a printer will not recognize a toner cartridge as
being authorized and disables access to the Printer Engine Program.
 Defendant Static Control Components, Inc. (SCC) manufactures and sells components for use in the
remanufacturing of toner cartridges. By reverse engineering the Lexmark microchip, SCC developed
a microchip that copies, and thereby circumvents, the authentication sequence that Lexmark uses in the T-
Series printers. This enables SCC to sell its “SMARTEK” microchip for use by third-parties to market
replacement toner cartridges that are compatible with the T-series despite Lexmark’s intention to limit
replacement cartridges to those it manufactures.

 Lexmark argues that:

o SCC copied their microchip in violation of the federal copyright statute. By copying the chip, it violated
the DMCA by circumventing a technological measure designed to control access to the Printer
Engine Program.

 Toner Loading Program," calculates toner level in printers manufactured by Lexmark

International

 "Printer Engine Program," controls various printer functions on Lexmark printers.

 The general copyright statute, 17 U.S.C. § 101: grants copyright protection to "original works
of authorship fixed in any tangible medium of expression," but does not "extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery,"

 The Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1201: proscribes the sale of
products that may be used to "circumvent a technological measure that effectively controls
access to a work" protected by the copyright statute.

 District Court: Granted the preliminary injunction against SCC.

ISSUE: (1)Did the SMARTEK microchip violate the DMCA by illegally circumventing the access control systems to

both the Printer Engine Program and the Toner Loading Program?
(2) By replicating the TLP in its entirety, did the microchip infringe Lexmark’s copyright in it?

 The use of the Toner Loading Program was indeed a likely copyright violation, because the Toner Loading
Program was not a "lock-out code" that SCC was entitled to copy under the DMCA, and because the
Toner Loading Program could be rewritten in different ways (and therefore had enough creativity to qualify
for copyright protection).
 The Copyright Office's decision to grant copyright registration to the two programs showed that the
programs were probably copyrightable.
o because of the complexity of the authentication system, SCC could not have known that it could
bypass the authentication without using Lexmark's copyrighted program; but it held that this did not
matter because "Innocent infringement, however, is still infringement."
 Fair use did not apply.
 On the DMCA claims, the court found that the SCC microchip circumvented Lexmark's authentication
sequence, and that the reverse engineering exception to the DMCA did not apply, because it only
covers the independent creation of new programs that must interoperate with existing ones, and SCC
did not create any new program.

DISTRICT COURD PROCEEDINGS :

Lexmark sued SCC in U.S. district court and received a preliminary injunction against the continuing sale by SCC of
the “SMARTEK” microchip for T-series replacement cartridges. It granted Lexmark a preliminary injunction against
SCC) for copyright infringement and violation of Section 1201 of the DMCA.
 The court found that Lexmark was likely to prevail on claims of copyright infringement and violation of
the anticircumvention provisions of the DMCA.
 There were two distinct components of SCC’s microchip.
 o One circumvented an authentication sequence embedded in the T-series printer. The sequence
determines whether the printer will accept the cartridge as authorized and subsequently grant
it access to the Printer Engine Program which is resident in the printer’s controller board.
o The other both circumvented access to and copied Lexmark’s TLP in its entirety. The Toner
Loading Program enables the printers to approximate the amount of toner remaining in the cartridge.
This information is used to display a “toner low” message on the printer screen.
 Lexmark’s Toner Program was copyrightable and concluded that it was, relying in part upon the fact that
the U.S. Copyright Office granted Lexmark of a Certificate of Registration for it.
 It considered and rejected a fair use defense.
 It also rejected a copyright misuse defense, finding that attempting to enforce rights under the DMCA to
protect access to a copyrighted computer program cannot have the legal effect of “using copyright to secure
an exclusive right or limited monopoly not expressly granted by copyright law.
 Nor could Lexmark’s efforts to enforce its rights under the DMCA be considered an unlawful act
undertaken to stifle competition. T
 Under the DMCA, “the right to protect against unauthorized access is a right separate and distinct from
the right to protect against violations of exclusive copyright rights such as reproduction and distribution.
  Indeed, the authentication sequence which triggered the interface between Lexmark’s toner cartridge
microchip and printer was exactly the type of “technological measure that effectively controls access
to a work” designed to be protected under the DMCA.
 DMCA’s exemption for reverse engineering was not applicable to SCC’s SMARTEK microchip.In addition to
violating the DMCA by circumventing the authentication sequence to the Printer Engine Program,
SCC’s microchip infringed the Copyright Act because it contained an exact copy of
Lexmark’s copyrighted Toner Loading Program. Therefore, SCC was unable to meet the reverse
engineering exemption requirement that the circumvention enables interoperability of an independently
created  computer program.

CA PROCEEDINGS : overturned the preliminary injunction

 Lexmark was not likely to successfully establish that SCC infringed its copyright for the TLP or that the
SMARTEK microchip violated the DMCA by illegally circumventing access controls.
 Court tried to determine the TLP’s eligibility for copyright protection under the Merger Doctrine and Scenes a
Faire in order to ascertain the boundary of idea-expression and process-non-functional expression.
 The MERGER DOCTRINE precludes copyright protection where there is only one way or very few ways of
expressing an idea. Idea and expression are deemed to be merged because granting copyright to
the expressive component of the work would extend protection to the work’s uncopyrightable ideas as well.
o The scenes a faire doctrine is related.
o In the computer-software context it means that the elements of a program dictated by practical
realities — e.g., by hardware standards and mechanical specifications, software standards
and compatibility requirements, computer manufacturer design standards, target industry practices,
and standard computer programming practices — may not obtain (copyright) protection.
 Lock-out codes generally fall on the functional idea rather than the original expression side of
the copyright line. Manufacturers of interoperable devices such as toner cartridges or garage door opener
transmitters often employ a security system to bar the use of unauthorized components. To unlock the
system to permit operation of the primary device, the printer or the garage door opener, the component must
contain certain code or be engineered to respond correctly to an authentication sequence.
o When a code sequence must be included in a component device to permit its use,
the merger and scenes a faire doctrines often preclude the sequence from obtaining  copyright
protection.
 TLP code did not have sufficient originality to be copyrightable.
o It is a very brief, uncomplicated code sequence that functioned as a lock out code. Brevity in
a computer program does not make it ineligible for copyright protection, but creativity and
effort are reciprocally related: the smaller the effort, the greater the creativity required to
invoke copyright protection.
 Since TLP was not copyrightable, the court declined to rule on SCC’s fair use defense.
o Although the purpose of SCC’s use of the SMARTEK chip was for commercial gain, a factor in a fair
use analysis, its use of the copyrighted TLP on the chip was not. Rather, the use of the TLP was
to satisfy authentication requirements and to permit printer functionality.
 Whether replication of the TLP on the microchip would diminish demand for the TLP? Copyright law is not
properly invoked to protect a secondary market in consumer goods:
o The district court focused on the wrong market: it focused not on the value or marketability of the
Toner Loading Program, but on Lexmark's market for its toner cartridges. Lexmark's market for
its toner cartridges and the profitability of its Prebate program may well be diminished by the
SMARTEK chip, but that is not the sort of market or value that copyright law protects. . . . Lexmark
has not introduced any evidence showing that an independent market exists for a program as
elementary as its Toner Loading Program, and we doubt at any rate that the SMARTEK chip could
have displaced any value in this market.
 Lexmark claimed that SCC's SMARTEK chip is a “device” that “circumvents” Lexmark’s “technological
measure,” i.e., the authentication sequence, which “effectively controls access” to its copyrighted works (the
Toner Loading Program and Printer Engine Program).
o that the SMARTEK chip met all three tests for liability under §1201(a)(2):
 (1) the chip was “primarily designed or produced for the purpose of circumventing”
Lexmark’s authentication sequence,
 (2) it had “only limited commercially significant purpose or use other than to circumvent”
the authentication sequence; and
 (3) SCC marketed the chip “for use in circumventing” the authentication sequence.
o The district court agreed.
 But in the CA:
o The microchip did not provide “access” to the TLP but actually replaced it. More important, since
the DMCA prohibits circumvention of access controls for copyrighted work, the determination that the
TLP was not eligible for copyright protection mooted the DMCA charge.
o The charge of illegal circumvention of the authentication sequence for the copyrighted Printer
Engine Program was more complicated. The district court determined that
the authentication sequence “controlled access” to the Printer Engine Program because it controlled
the consumer’s “ability to make use of” the program.
 The Court of Appeals disagreed, asserting that the authentication sequence did
not control access, rather “[i]t is the purchase of a Lexmark printer that allows 'access’
to the program.”.
 The literal code itself can be read directly from the printer memory without the benefit
of the authentication sequence. There is no security device protecting the Printer
Engine Program.
 While the authentication sequence controls access to the Printer
Engine Program’s functionality, the Program itself is not otherwise effectively protected
by access controls; the data and program can be translated into readable source code.
Hence, the authentication sequence controlled only one avenue of access —
operational compatibility with a printer cartridge.
 Printer Engine Program is not covered by the DMCA. In the setting where the DMCA applies, such
as encrypted data on music CDs and motion-picture DVDs, the copyright content that it protects operates on
“two planes”: the literal code governing the content and its manifestation generated by the code’s execution,
namely, the music or movie.
o In the DMCA’s context, restricting “use” of the [[work] means “restricting consumers from
making use of the copyrightable expression in the work.”
o The manufacturer must prevent access to both planes of the copyrighted material and the
alleged infringer responds by marketing a device that circumvents both levels of protection.
o Thus, because Lexmark did not direct any of its security efforts, through
the authentication sequence or otherwise, to ensuring that the Printer Engine Program could
not be read and copied, “it cannot lay claim to having put in place a 'technological measure
that effectively controls access to a work protected under [the copyright statute].’”
 Nowhere in its deliberations over the DMCA did Congress express an interest in creating liability for
the circumvention of technological measures designed to prevent consumers from using consumer
goods while leaving the copyrightable content of a work unprotected.
 In fact, Congress added the interoperability provision in part to ensure that the DMCA would not diminish the
benefit to consumers of interoperable devices “in the consumer electronics environment.”
CONCURRING OPINION
Interestingly, in a concurring opinion, Circuit Judge Merritt addresses this very point. He advocates broadening the
scope of the holding by making clear “that in the future companies like Lexmark cannot use the DMCA in conjunction
with copyright law to create monopolies of manufactured goods for themselves just by tweaking the facts of this case:
by, for example, creating a Toner Loading Program that is more complex and 'creative’ than the one here, or by
cutting off other access to the Printer Engine Program.”[16]

In his opinion, the critical question is the purpose of the circumvention technology. Because the purpose of the law
is to prohibit piracy of copyright protected works such as movies, music, and computer programs,
an anticircumvention claim should not be permitted to go forward unless the plaintiff can demonstrate that
the circumvention supports piracy. A broad reading of the statute is necessary, he argues, to prevent manufacturers
from creating monopolies for durable goods such as replacement parts through the use of more elaborate
lock-out codes. And the burden of proof to demonstrate piracy must be on the plaintiff in order to prevent the threat
of litigation by powerful manufacturers against smaller rivals and thereby thwart development of devices that facilitate
legitimate access to consumer goods. Only then should the burden of proof shift to the defendant to invoke a statutory
exception, such as the reverse engineering exception.

Protection for Copyright Management Information

IQ Group, Ltd. v. Wiesner Publishing, LLC, 409 F. Supp. 2d 587 (D.N.J. 2006)
FACTS:
 IQ, an online advertising firm, distributed ads for two insurance companies: National Senior Associate
Company (‘‘NSAC’’) and Capital Care, Inc.
 IQ included in the ads its own logo and a hyperlink to copyright information on its own web site
 Both NSAC and Capital Care subsequently hired Wiesner to distribute ads for them.
o Wiesner distributed the same ads that IQ had formerly distributed, but it removed the IQ logo and
the hyperlink to IQ’s web site.
 IQ registered copyright in the ads and then sued Wiesner, NSAC, and Capital Care, alleging copyright
infringement
o The logo falls within ‘‘copyright management information’’ as defined in the DMCA in some of its 8
categories:
 category 2 (‘‘[t]he name of, and other identifying information about, the author of a work’’),
 category 3 (‘‘[t]he name of, and other identifying information about, the copyright owner
of the work’’)
 category 7 (‘‘[i]dentifying numbers or symbols referring to such information or links to
such information’’).
 IQ contends as well that the hyperlink falls within categories 3 and 7, and that the hyperlink points to a
website containing information falling within category 6 (‘‘[t]erms and conditions for use of the work’’)

ISSUE: Whether the information removed by Wiesner from the NSAC and Capital Care ads functioned as a
component of an automated copyright protection or management system? NO

 IQ asks this Court to construe the DMCA so as to allow a logo, functioning as a service mark, to come within
the definition of copyright management information which, by operation of the DMCA, would act to protect the
copyright of its owner logo in an email, to the extent that it operates as a trademark or service mark, could
communicate information that indicates the source of the email. a symbol that refers to identifying information,
so a very broad interpretation of §1202(c) might conceivably include a logo
o The problem is that this construction allows a trademark to invoke DMCA protection of
copyrights
 The Supreme Court cautioned against blurring the boundaries between trademark law and copyright law:
would create a species of mutant copyright law.’
 The text of §1202 appears to define ‘‘copyright management information’’ quite broadly, to the point that
the section, read literally, applies wherever any author has affixed anything that might refer to his or her name
o The DMCA directly protects not the copy- rights, but the technological measures  that protect the
copyrights.
o WIPO protected CMI as part of ‘‘a double protection for technical measures.’
 In the framework of the WIPO treaties, technical measures such as CMI are components of automated
copyright protection systems: ‘‘As digital identification systems and other technologies that enable the marking
and protection of works have started to develop, right holders have feared that these technological tools might
themselves be cracked by other technologies or machines, or that they might be easily modified or removed.’’
Id. The WIPO treaties, and hence the DMCA, protect CMI so as to protect the technological measures of
copyright protection themselves
  Congress intended the DMCA to apply to “electronic commerce” and the “electronic marketplace” and to
“digital networks”
 Known as the ‘‘White Paper,’’ the Report [of the IITF’s Working Group on Intellectual Property Rights]
presented a draft of §§1201and 1202 of the DMCA
o The White Paper demonstrates that the Working Group on Intellectual Property Rights, in drafting
§1202, understood this section to protect the integrity of automated copyright management
systems functioning within a computer network environment
 To come within § 1202, the information removed must function as a component of an automated
copyright protection or management system.
 IQ has not alleged that the logo or the hyperlink were intended to serve such a function. Rather, to the extent
that they functioned to protect copyright at all, they functioned to inform people who would make copyright
management decisions.
 No evidence that IQ intended that an automated system would use the logo or hyperlink to manage
copyrights, nor that the logo or hyperlink performed such a function, nor that Wiesner's actions otherwise
impeded or circumvented the effective functioning of an automated copyright protection system.
 Because the IQ logo removed by Wiesner did not function as a component of an automated copyright
protection or management system, it does not fall within the definition of “copyright management information”
in 17 U.S.C. § 1202(c).
 With regard to the IQ logo in the NSAC and Capital Care ads, Wiesner has not violated any part of 17 U.S.C.
§ 1202.
 Because the hyperlink removed by Wiesner did not function as a component of an automated
copyright protection or management system, it does not fall within the definition of “copyright
management information” in 17 U.S.C. § 1202(c).
 With regard to the hyperlink in the NSAC and Capital Care ads, Wiesner has not violated any part of 17
U.S.C. § 1202.

Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116 (C.D. Cal. 1999)

Recit Ready:
Leslie Kelly, a professional photographer, alleged that Arriba Soft Corp.’s (Arriba) search engine infringed Kelly’s
photographs. Arriba operated a visual search engine that “crawled” the internet searching for images that it copied
and then generated as smaller, lower-resolution “thumbnail” copies for display on a search results page.

Did Arriba's reproduction and display of Kelly's works constitute fair use under § 107 of the Copyright Act?
YES

The court ruled that although Arriba made exact replications of Kelly's images, the thumbnails were much
smaller, lower-resolution images that served an entirely different function than the original images. Kelly's images
served an aesthetic purpose while Arriba's thumbnails were unrelated to any aesthetic purpose and were designed as
a tool to help index and improve access to images on the internet. Users were unlikely to enlarge the thumbnails
and use them for artistic purposes because the thumbnails were of much lower-resolution than the originals, making
them inappropriate as display material. Thus, Arriba's use was transformative. Further, given the thumbnails' lack
of artistic purpose, their use did not stifle creativity. The appellate court determined that two of the four factors
under § 107 weighed in favor of Arriba, which was sufficient for a finding of fair use.

FACTS:
1. Leslie Kelly, is a professional photographer who has copyrighted many of his images of the American West.
Some of these images are located on Kelly's web site or other web sites with which Kelly has a license
agreement. 
2. Arriba Soft Corp., operates an internet search engine that displays its results in the form of small pictures
rather than the more usual form of text.   Arriba obtained its database of pictures by copying images from
other web sites. By clicking on one of these small pictures, called “thumbnails,” the user can then view a large
version of that same picture within the context of the Arriba web page.
3. When Kelly discovered that his photographs were part of Arriba's search engine database, he brought a
claim against Arriba for copyright infringement.
4. The district court found that Kelly had established a prima facie case of copyright infringement based on Arriba's
unauthorized reproduction and display of Kelly's works, but that this reproduction and display constituted a
non-infringing “fair use” under Section 107 of the Copyright Act. 

- The search engine at issue in this case is unconventional in that it displays the results of a user's query as
“thumbnail” images.   When a user wants to search the internet for information on a certain topic, he or she
 types a search term into a search engine, which then produces a list of web sites that contain information
relating to the search term. Normally, the list of results is in text format. The Arriba search engine, however,
produces its list of results as small pictures.
- To provide this service, Arriba developed a computer program that “crawls” the web looking for images to
index. This crawler downloads full-sized copies of the images onto Arriba's server.   The program then uses
these copies to generate smaller, lower-resolution thumbnails of the images.   Once the thumbnails are
created, the program deletes the full-sized originals from the server.   Although a user could copy these
thumbnails to his computer or disk, he cannot increase the resolution of the thumbnail;  any enlargement
would result in a loss of clarity of the image.
- The second component of the Arriba program occurs when the user double-clicks on the thumbnail. From
January 1999 to June 1999, clicking on the thumbnail produced the “Images Attributes” page. This page
used in-line linking to display the original full-sized image, surrounded by text describing the size of the
image, a link to the original web site, the Arriba banner, and Arriba advertising.

ISSUE: Did Arriba's reproduction and display of Kelly's works constitute fair use under § 107 of the Copyright
Act? YES

Fair use is present in this case.

- An owner of a copyright has the exclusive right to reproduce, distribute, and publicly display copies of the
work. To establish a claim of copyright infringement by reproduction, the plaintiff must show ownership of the
copyright and copying by the defendant. As to the thumbnails, Arriba conceded that Kelly established a
prima facie case of infringement of Kelly's reproduction rights.
- A claim of copyright infringement is subject to certain statutory exceptions, including the fair use
exception.
- TThis exception “permits courts to avoid rigid application of the copyright statute when, on occasion, it
would stifle the very creativity which that law is designed to foster.” 
- The statute sets out four factors to consider in determining whether the use in a particular case is a fair use.
We must balance these factors in light of the objectives of copyright law, rather than view them as definitive or
determinative tests.
- Four Factors:
o Purpose and character of the use
 see whether the new work merely supersede[s] the objects of the original creation, or
instead adds something new, with a further purpose or different character, altering the first
with new expression, meaning, or message;  it asks, in other words, whether and to what
extent the new work is transformative.
 There is no dispute that Arriba operates its web site for commercial purposes and that
Kelly's images were part of Arriba's search engine database.   As the district court found,
while such use of Kelly's images was commercial, it was more incidental and less exploitative
in nature than more traditional types of commercial use. Arriba was neither using Kelly's
images to directly promote its web site nor trying to profit by selling Kelly's images.
Instead, Kelly's images were among thousands of images in Arriba's search engine database.
Because the use of Kelly's images was not highly exploitative, the commercial nature
of the use weighs only slightly against a finding of fair use.

o Nature of the copyrighted work

 Works that are creative in nature are closer to the core of intended copyright protection than
are more fact-based works.
 Photographs that are meant to be viewed by the public for informative and aesthetic
purposes, such as Kelly's, are generally creative in nature. The fact that a work is published
or unpublished also is a critical element of its nature. Published works are more likely to
qualify as fair use because the first appearance of the artist's expression has already
occurred. Kelly's images appeared on the internet before Arriba used them in its
search image. When considering both of these elements, we find that this factor weighs only
slightly in favor of Kelly.
o Amount and substantiality of portion used
 While wholesale copying does not preclude fair use per se, copying an entire work
militates against a finding of fair use.” However, the extent of permissible copying varies
 with the purpose and character of the use. If the secondary user only copies as much as is
necessary for his or her intended use, then this factor will not weigh against him or her.
 This factor neither weighs for nor against either party because, although Arriba did copy
each of Kelly's images as a whole, it was reasonable to do so in light of Arriba's use of
the images.   It was necessary for Arriba to copy the entire image to allow users to recognize
the image and decide whether to pursue more information about the image or the originating
web site.   If Arriba only copied part of the image, it would be more difficult to identify it,
thereby reducing the usefulness of the visual search engine.
o Effect of the use upon the potential market for or value of the copyrighted work
 This last factor requires courts to consider “not only the extent of market harm caused by the
particular actions of the alleged infringer, but also ‘whether unrestricted and widespread
conduct of the sort engaged in by the defendant would result in a substantially adverse
impact on the potential market for the original.’
 Arriba's use of Kelly's images in its thumbnails does not harm the market for Kelly's
images or the value of his images. By showing the thumbnails on its results page when
users entered terms related to Kelly's images, the search engine would guide users to
Kelly's web site rather than away from it. Even if users were more interested in the image
itself rather than the information on the web page, they would still have to go to Kelly's site to
see the full-sized image. The thumbnails would not be a substitute for the full-sized
images because the thumbnails lose their clarity when enlarged.   If a user wanted to
view or download a quality image, he or she would have to visit Kelly's web site. This would
hold true whether the thumbnails are solely in Arriba's database or are more widespread and
found in other search engine databases.

DISPOSITION: We hold that Arriba's reproduction of Kelly's images for use as thumbnails in Arriba's search
engine is a fair use under the Copyright Act. However, we hold that the district court should not have reached
whether Arriba's display of Kelly's full-sized images is a fair use because the parties never moved for summary
judgment on this claim and Arriba never conceded the prima facie case as to the full-size images. The district court's
opinion is affirmed as to the thumbnails and reversed as to the display of the full-sized images.   We remand
for further proceedings consistent with this opinion. Each party shall bear its own costs and fees on appeal.