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The Digital Millennium Copyright Act (“DMCA”) limits copyright liability of online service providers for a variety of activities. For instance, the “user storage” provision limits liability for storing content posted by users, subject to exceptions that, in essence, preserve full liability in specified instances of contributory infringement and vicarious responsibility. Similarly, the “information location tools” provision limits liability for helping users access sites through such devices as directories, indices, references, pointers and hypertext links, subject to similar exceptions. Key to both provisions are notice and take-down procedures that make it clear when a provider must respond to a notification of infringement by removing or disabling access to infringing material, or links to such material. [FOOTNOTE 1]Although litigation over the scope of these provisions has been surprisingly scarce, three recent cases show potential conflicts between these provisions and other affirmative rights conferred by the DMCA, as well as the continued vibrancy of litigation over traditional copyright doctrines in the context of Internet storage and Web navigation. USER STORAGE AND ANTICIRCUMVENTION VIOLATIONS The case that best illustrates the potential conflicts among the DMCA’s various provisions is Universal City Studios Inc. v. Reimerdes. [FOOTNOTE 2]The case involved Web sites that posted the “DeCSS” software utility, which enables users to break the Content Scramble System (CSS) used to prevent unauthorized copying of digital versatile disks (DVDs). The court held that distributing DeCSS in this manner violated the anticircumvention provisions of the DMCA, which prohibit trafficking in certain technology primarily designed to circumvent technological measures to control access to copyrighted works. [FOOTNOTE 3] One of the defendants, however, argued that he qualified for the DMCA’s user storage defense. In a cursory ruling, the court rejected this argument on the grounds that (1) the defendant offered no proof that he was a “service provider” to whom the limitation of liability is afforded, and (2) the user storage defense only provided protection from copyright infringement — not for violations of rights conferred on copyright owners by the DMCA. [FOOTNOTE 4] It is the second ground that is troubling because it removes the distribution of software in violation of the DMCA from the protections the notice and take-down procedures afford to providers who follow such procedures. Nor is the second ground at all necessary to the court’s holding. In particular, because the defendants offered no evidence in opposing the preliminary injunction, the court concluded that each defendant was personally involved in distributing DeCSS. Yet if the defendants were personally distributing the materials in question, they could not qualify for the user storage defense, much less the definition of service providers potentially entitled to that defense. INFORMATION LOCATION TOOLS Universal Studiosillustrates one type of potential gap in the protection the DMCA affords to service providers. Other potential gaps are illustrated by Kelly v. Arriba Soft Corp. [FOOTNOTE 5]In Kelly, a photographer sued the provider of a visual search engine service. The service posted thumbnail copies of images that could be found on the Web. When selected, users could view a window displaying a full-size image, attributes for the image, and a link to the Web page where the image could be located. The full-size image was displayed by linking the user to the image files that were the sources of the images displayed on the plaintiff’s Web pages. Later, the defendant changed the service so that selecting a thumbnail resulted in the simultaneous display of two windows — one displaying the Web page where the images can be located and one displaying the full-size image alone. The plaintiff claimed that the thumbnail and full-size images infringed his copyrights and that linking directly to the image files to display the images, without the Web pages on which they are found, violated the DMCA’s prohibition on altering or removing copyright management information. The court disagreed holding that the thumbnail and full-size image displays were protected by the fair use defense. In particular, the court found that the defendant’s use, although commercial, was transformative in nature and did not exploit the plaintiff’s images beyond the indiscriminate cataloging of images to facilitate access to them. The court was more troubled about the display of full-size images apart from information other than the image attributes, but it dismissed this concern, because the earlier full-size displays were an “early imperfect means” of attaining the transformative purpose, and later versions of the service diminished this concern by displaying the originating Web page simultaneously with the full-size image, in separate windows. [FOOTNOTE 6]Notably, the court did not address the DMCA’s information location tools defense, thus leaving open the question of whether that defense would apply to the use of a thumbnail image in a search service or the use in such a service of deep links to an image file that bypass the Web page on which the file is meant to be found. The court also rejected the plaintiff’s claim under the DMCA for altering or removing copyright management information by displaying thumbnail and full-size images apart from the Web pages where those images are found. In particular, the court held that the plaintiff could not demonstrate that the defendant knew or should have known that this activity would result in infringement by users of the service. Because the service provided information on the Web sites from which these images were obtained, as well as warnings about restrictions and copyright limitations that may apply to such images, the court found that the requisite state of mind was lacking. [FOOTNOTE 7] Again, since the information location tools defense was not addressed, whether that defense protects search services from DMCA claims for bypassing copyright management information through deep links is a question left open. CONTRIBUTORY INFRINGEMENT Finally, another case that might have addressed the information location tools defense, Intellectual Reserve Inc. v. Utah Lighthouse Ministry Inc., [FOOTNOTE 8]75 F. Supp. 2d 1290 (D. Utah 1999), only involved the contributory infringement doctrine, as the defendant did not assert DMCA defenses. In Intellectual Reserve, the defendants had posted on their Web site materials in which the plaintiff claimed copyright ownership. After being enjoined from posting such materials, the defendants then posted the addresses of three other Web sites containing the same materials, with a message indicating that the materials were “back online.” The defendants also sent e-mail messages giving instruction and encouragement to visit these Web sites and download the materials. [FOOTNOTE 9] On a motion for preliminary injunction, the court held that the plaintiff had established that the defendants were likely engaged in contributory infringement and ordered the defendants to cease posting addresses of Web sites known or reasonably likely to contain infringing materials. Although the court held that the defendants did not materially contribute to the infringing activities of the operators of those Web sites, the court also held that the defendants did materially contribute to infringement of users who accessed them. Specifically, the court held that infringing copies were made each time the users browsed those Web sites, thereby loading Web pages into the random access memory of their computers. In addition, the court held that printouts or repostings of the materials would constitute infringement. [FOOTNOTE 10]The court also ruled that the defendants’ activities materially contributed to such infringement. In reaching this finding, the court was influenced by (1) the fact that the defendants’ postings were a reaction to being ordered to remove the same materials from their own site, (2) the instructions and encouragement contained in the defendants’ e-mail messages, and (3) the evidence of increased hits on one of these Web sites during the relevant period. [FOOTNOTE 11] CONCLUSION Conflicts between the DMCA’s various provisions and questions about how those provisions apply to emerging technologies remain to be resolved. As long as such issues remain unresolved and as long as defendants fail to avail themselves of the DMCA’s protections, continued litigation is likely not only over the application of the DMCA, but also over traditional copyright doctrines such as fair use and contributory infringement. Mark D. Robins is a member of Hutchins, Wheeler & Dittmar, A Professional Corporation, in Boston, where he concentrates his practice in representing Internet-based companies in litigation, counseling and licensing matters. :::::::FOOTNOTES::::::: FN1See 17 U.S.C. � 512(c), (d). FN2(S.D.N.Y. WL 124997, Jan. 2000). FN3Id. at *3-*4. FN4Id. FN577 F. Supp. 2d 1116 (C.D. Cal. 1999). FN6Id. at 1119-20 & n.8. FN7Id. at 1122. FN875 F. Supp. 2d 1290 (D. Utah 1999). FN9Id. at 1292, 1294. FN10Id. at 1294. FN11Id. at 1294-95 & n.6.

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