Tomas A. Lipinski and David A. Rice (US)
Recent international developments are placing organizations in an environment of expanded rights of information owners1. This expansion is creating a slow but inexorable paradigm shift in relationship between intellectual property owners, copyright for example, and organizations as users of that property. The shift can be observed along several axis of advance. The first axis is evidenced by the increased compliance requirements placed on those who, like the organization as employer or provider of services to clients, seek to act as intermediaries during the use (“transaction”) of copyrighted material. The “compliance requirements” may be either explicit or implicit. The second axis is observed in the design of recent intellectual property enforcement vehicles. There is an accentuated focus on the functional technology and those who use and supply it in addition to the initial infringing actor and his or her relationship to the infringed work2. Third is the ascendancy of property rights over other personal rights, such as free speech, of private rights over public delineated rights. As a result of this shift, organizations and the individuals who work in the organization are facing a new climate in which more will be asked of them and less given in terms of deference to intellectual property owners rights versus users rights of access to information. This paper identifies the emerging legal requirements facing organizations in the use of information and communication technologies.
First there is an increased “compliance” requirement placed on those, who seek to act as intermediaries in the transaction of intellectual property use. For example, in copyright law, the concept of secondary liability for the acts of intermediaries is well established: those who contribute or assist in the infringing activities of others also share in the liability. In response to early cases that extended concepts of secondary liability to the Internet, in some instances with an expansion of intermediary liability3, the U.S. Congress responded by articulating statutory standards under which an intermediary such as an employer or Internet service provider could face reduced damage liability4. Subsection 512(i) conditions the application of damage limitation (“safe harbors”) for intermediaries on the adoption and reasonable implementation and dissemination of a policy for terminating the accounts of subscribers who infringe copyright repeatedly. An expanded compliance program is also contemplated for safe harbor provisions afforded to institutions of higher education subsection 512(e). This is an expanding trend in the United States: granting some form of “immunity” to some actors (intermediaries) but only on condition of their expanded role in promoting and monitoring enforcement. A very recent example is found in S. 487,5 pending legislation to amend 17 U.S.C. 110(2) governing the use of copyrighted material in distance education. Under the revised subsection 110(2), the use of copyrighted materials in online educational settings would be conditioned upon extensive compliance and monitoring provisions, such as expanded use of warning notices, regulation of student access to secure site material and the use of technological measures that prevent retention or downstream distribution by students, and the establishment and dissemination of a institutional compliance policy. These are explicit measures, but implicit compliance measures also result from the use of UCITA-based6 based licensing, UETA,7 and recent e-sign legislation,8 which operate to validate click-wrap and email-based contracting. As a result, institutions need to increase employee awareness of the risk of inadvertent contract formation by the activation of “I agree” icons in web environs or from the use of email correspondence and other electronic communication.9
A second development targets enforcement strategies on the functional technology used to “infringe” instead of the infringing actor and in so doing redefines the concept of direct copyright infringement. This is evidenced by the implementation of the WIPO treaty provisions known as the anti-trafficking and anti-circumvention provisions.10 Subsection 1201(a)(1) prevents the circumvention of an effective access control a copyright owner places on a work. An example would be the CSS code that is used to restrict the playing of DVD movies on authorized players only. Under 17 U.S.C. 1201(a)(2), transferring the access code to another, by posting it on the Internet by an illegal trafficking of a prohibited access device. If one created a “product” that allowed one to use a technologically protected work and marketed it as such it might also violate a second anti-trafficking provision contained in subsection 1201(b). The significance of these provisions is two fold. First, it conditions fair use of lawfully obtained copyrighted material on a separate permission to access the work. As a result one must not only have a fair use right to use the material but must also have the permission to gain access to the work. Unlike the use of a public park surrounded by private land there is no easement right to gain access to the park. In operation, Section 1201, as it implements the WIPO treaty protocols, gives copyright owners the legal right and ability to foreclose such “public easements.” Second, a subtle but significant shift has occurred: from the infringing act to the functional technology that controls it. This new emphasis represents a shift in over several hundred years of copyright liability and enforcement strategy.
Third is the ascendancy of property rights over personal rights. This can been seen in several developments. First, several recent cases involving copyright and new technologies-some involving litigation of Section 1201, others involving other provisions of the copyright law such as the recent extension of copyright duration-has pitted the rights of copyright owners vis-à-vis the limits of the fair use right against the free speech rights of users.11 In other words users have claimed that while their fair use rights may not have permitted the use made of the copyrighted materials, free speech rights should have supported their use of the material. For example in Universal Studios v. Reimerdes,12 the defendants claimed that their posting of the DeCSS (“De”cryption of CSS) code that could crack access to DVD files was an act of “civil disobedience.” Courts have not been receptive to these arguments and have instead placed copyright owners’ rights ahead of any personal or civil rights such as free speech. A similar result occurs in the case of UCITA (Uniform Computer Transactions Act) that would create a statutory framework for the expanded capacity of owners to license information products and services. Under a UCITA license, a licensee of a product could be restricted according to the terms of the license from commenting publicly the product.13 Finally, licensing systems result in more restrictive limitations on use and access to the acquired content such as databases and software than any legislative reforms either in the United States14 or internationally15 have forwarded.16 These developments impact the ability of organizations to use existing content in the development of new information products and services and may slow or even stifle institutional and industry innovation.
This shift from existing intellectual property norms will have tremendous impact on how organizations will behave in the future. This paper explores the origin, development and future of organizational response that must occur if compliance with these laws is sought and argues that such response is out of proportion to the threat perceived, inconsistent with other principles within copyright and may ultimately prove over whelming for some organizations.
- Jason Sheets, Copyright Misused: The Impact of the DMCA Anti-Circumvention Measures on Fair & Innovative Markets, 23 Hastings Communication & Entertainment Law Journal 1 (2000); Shaun Sparks, Case Note: Busting the Code: The Anti-Trafficking Provision of the Digital Millennium Copyright Act and Free Expression in Digital Media, 2000/2001 International Journal of Communication Law & Policy 1 (2000/2001); Amelia H. Boss, Taking UCITA on the Road: What Lessons have we Learned?, in Uniform Computer Information Transactions Act: A Broad Perspective 121, 156-169 (2001) (PLI Intellectual Property Course Handbook Series # G-673) (discussing UCITA as an international uniform act); Rochelle Cooper Dreyfuss, Symposium: Software As A Commodity: International Licensing of Intellectual Property: Commentary: UCITA in the International Marketplace: Are We About to Export Bad Innovation Policy?, 26 Brooklyn Journal of International Law 49 (2000).
- Jay Dratler, Jr. Cyberlaw: Intellectual Property in the Digital Millennium, Section 1.02, at 1-15 (2001) (“For the first time ever in the United States, they [the anti-trafficking and anti-circumvention rules] impose primary or direct liability not on those who make the unauthorized copies, but on those who provide or use the technology for doing so.” (emphasis original, footnotes omitted)).
- Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).
- 17 U.C.S. 512.
- S. 487, 107th Congress, 1st Session (2000) (Technology, Education and Copyright Harmonization Act of 2001).
- UCITA (Uniform Computer Information Transactions Act), promulgated in 1999 by the National Conference of Commissioners on Uniform State Laws (NCCUSL), is available at www.law.upenn.edu/bll/ucita/ucita.htm. See also, Cem Kaner, Why You Should Oppose UCITA, 17 Computer Lawyer, May 2000, at 20.
- UETA (Uniform Electronic Transactions Act), promulgated in 1999 by the National Conference of Commissioners on Uniform State Laws (NCCUSL), is available at www.law.upenn.edu/bll/ucl/fnact99/1990s/ueta99.htm.
- P.L. No. 106-229, 114 Stat. 464 (2000) (Electronic Signatures in Global and Interstate Commerce Act) (codified at 15 U.S.C. §§ 7001-7031).
- Brook Boyd, E-Sign Laws Could Make You Vulnerable, New York Law Journal, October 17, 2000, at 1.
- 17 U.S.C. 1201.
- Eldred v. Reno, 239 F.3d 372, reh’g denied, reh’g en banc denied, 255 F.3d 849 (D.C. Cir. 2001).
- 82 F. Supp. 2d 211 (S.D.N.Y. 2000), 111 F. Supp. 2d 294, 303, 312 (S.D.N.Y. 2000), aff’d sub nom. Universal City Studios v. Corely, 273 F.3d 429 (2d Cir. 2001) (quoting Universal Studios v. Reimerdes, 273 F.3d at 441).
- Under UCITA, a “contractual use restriction” defined in UCITA, Section 102(a)(20) could include such a limitation (“concerns the use or disclosure of, or access to licensed information or informational rights”); and the limitation would be enforceable under UCITA, Section 307(a): “If a license expressly limits use of the information or information rights, use in any other manner is a breach of contract.” A non-disclosure clause is a contractual use restriction and it would be thus enforceable.
- Richard Keck and Damon Goode, Survey: Of Misappropriated Manure Heaps, Rude Robots and Broken Promises: The Devolving Law Of Database Protection 57 Business Lawyer 513 (November 2001). Update pending legislation and cite to Dbase copyright office report and others, law rev too U.S. Copyright Office, Report of Legal Protection of Databases (1997).
- Council Directive 96/9/EC, of March 11, 1996 on the Legal Protection of Databases, 1996 O.J. (L 77) 20.
- David D. Rice, Legal-Technological Regulation of Information Access, in Libraries, Museums and Archives: Legal Issues and Challenges in the New Information Era 275 (Tomas A. Lipinski, ed. 2001).