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Are the so-called anti-circumvention provisions of the Digital Millennium Copyright Act constitutional? The answer may depend on whom you ask. On Nov. 28, 2001, the 2nd U.S. Circuit Court of Appeals upheld a permanent injunction based on claims under the DMCA that barred a Web site from either posting decryption software or linking to other sites that post such software. Less than a month earlier, however, a California state court of appeals, in a case brought under California’s version of the Uniform Trade Secrets Act, held that the posting of or linking to the same DVD decryption software is an expression of pure free speech under the First Amendment, and thus reversed as a prior restraint a preliminary injunction barring such posting. This article examines the two decisions and the potential implications of those decisions for the protection of intellectual property in the digital age. In Universal City Studios, Inc. v. Corley, a group of eight major motion picture studios sought to prevent the defendant from making available certain software designed to circumvent the encryption used in digital versatile disks — or DVDs. Specifically, defendant Corley publishes a print magazine and maintains an affiliated Web site that targets the “hacker” community. In November 1999, Corley posted a copy of the decryption program “DeCSS” on his Web site and included links to other sites where DeCSS could be found. DeCSS is designed to circumvent the DVD encryption program, known as Content Scramble System or “CSS.” DeCSS allows a user to copy the DVD files and place the copy on the user’s hard drive, from which it can be further copied and shared with others. The case was brought under the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA), which Congress enacted in 1998 to strengthen copyright protection in the digital age. One of its sections is designed to combat copyright piracy in its earlier stages, before the work is even copied. To accomplish this, the DMCA prohibits the development or use of technology designed to circumvent a technological protection measure or so-called “digital walls” — i.e., encryption codes or password protections. The DMCA targets not only those who would circumvent these digital walls ( see17 U.S.C. �1201 (a)(1)), but also anyone who would traffic in a technology primarily designed to circumvent a digital wall ( see17 U.S.C. �1201 (a)(2)). On Aug. 23, 2000, U.S. District Judge Lewis Kaplan, following a bench trial, entered a permanent injunction enjoining Corley and his company from posting DeCSS on their Web site and from knowingly linking their Web site to any other Web site on which DeCSS is posted. See Universal City Studios, Inc. v. Reimerdes, 111 F.Supp.2d 346 (S.D.N.Y. 2000). The first constitutional argument advanced an appeal by Corley and repeated by 46 intellectual property law professors as amici — that the DMCA violates the Copyright Clause because it “empowers copyright owners to effectively secure perpetual protection by mixing public domain works with copyrighted materials, then locking both up with technological protection measures.” The 2nd Circuit rejected this argument on the grounds that (i) it had only been raised in a footnote in Corley’s brief, and therefore was not “entitled to appellate consideration”; and (ii) the argument was “premature and speculative at this time on this record.” The court next turned to the constitutional challenges based on the First Amendment. The court began its discussion by noting that, because this case involved the application of “First Amendment law in the digital age,” and thus required the “task of tailoring familiar constitutional rules to novel technological circumstances,” it was proceeding with “appropriate caution” and in the “spirit” of “narrow” holdings that “would permit the law to mature on a ‘case-by-case’ basis.” The court also made clear that it was joining other courts in holding that computer code and computer programs constructed from code that conveys information or ideas can merit First Amendment protection. The court further clarified, however, its belief that computer code is not entirely speech; it contains a nonspeech — or functional — component. After accepting that the DeCSS computer code contains a “speech” component within the meaning of the First Amendment, the court turned to the question of the scope of protection that such code enjoys. Because the scope of protection depends on whether the restriction at issue is imposed because of the content of the speech or is content-neutral, the court examined whether the DMCA’s restrictions were content-specific or content-neutral, and whether and to what extent the injunction prohibited speech or functional aspects. The 2nd Circuit concluded that DeCSS is both functional — operating like a “skeleton key” unlocking a door — and is a form of communication; it can thus be protected under the First Amendment as “speech.” With respect to the issue of “posting” of DeCSS on the Web site, the court believed that the DMCA’s restriction, as applied by Judge Kaplan, did not affect the content of speech, but rather only the functional aspects of the code. Nevertheless, the court, recognizing that the DMCA’s restrictions will have an impact on the “speech” components of computer code, found such restriction (as did Kaplan) to be a “content-neutral regulation with incidental effects on a speech component.” Thus, as a content-neutral prohibition, it survives constitutional scrutiny if it serves a substantial governmental interest, unrelated to the suppression of free expression, and the incidental restriction on speech does not burden substantially more speech than is necessary to further that interest. The court concluded that the prohibition satisfied each of these elements with respect to posting on the Web site. In applying the DMCA to defendants’ hyperlinking to other Web sites posting DeCSS, the court also agreed with Kaplan’s conclusion that a hyperlink also has both speech and nonspeech aspects: “[i]t conveys information, the Internet address of the linked web page, and has the functional capacity to bring the content of the linked web page to the user’s computer screen.” Thus, it is subject to First Amendment protection. However, the court concluded that the DMCA’s restriction on hyperlinking, as applied by the injunction, was content-neutral because it is justified without regard to the speech component of the hyperlink. Applying the constitutional test for content-neutral regulation, the court easily concluded that Kaplan was correct in ruling that the DMCA, as applied to Corley’s linking, served substantial governmental interests and was unrelated to the suppression of free speech. As to the third element for constitutionality — i.e., whether the restriction would “burden substantially more speech than is necessary to further the government’s legitimate interest” — the court held that Kaplan “carefully considered” this issue, and adopted an approach consistent with constitutional requirements by requiring clear and convincing evidence that those responsible for the linking: (a) know at the relevant time that the offending material is on the linked-to site; (b) know that it is circumvention technology that may not lawfully be offered; and (c) create or maintain the link for the purpose of disseminating that technology. Finally, the court turned to the issue of whether the DMCA, as applied by the District Court, unconstitutionally eliminated “fair use” of copyrighted materials. In rejecting this argument, which the 2nd Circuit labeled an “extravagant claim,” the court preliminarily noted that the U.S. Supreme Court has never held that fair use is constitutionally required. The court went on to conclude that it did not need to reach the question because Corley did not claim to be making a fair use of any copyrighted materials, and nothing in the injunction prohibited him from making such a fair use. But even were the argument made, according to the court, Corley “provided no support for the[] premise that fair use of DVD movies is constitutionally required to be made by copying the original work in its original format.” TRADE SECRET DISPUTE Nearly one month earlier, the DVD Copy Control Association (DVDCCA), a trade association of businesses in the movie industry that controls the right to CSS, brought suit under California’s Uniform Trade Secrets Acts (USTA) to enjoin defendant Bunner and numerous other Internet Web site operators from disclosing its trade secret — i.e., the computer code for CSS — in DVD decryption software (DeCSS) published by Bunner and others on their Web site, or from publishing on their Web sites hyperlinks to other sites where DeCSS was made available. On Dec. 27, 1999, DVDCCA initiated an action against Bunner and others under the UTSA, and sought a preliminary injunction, alleging that DeCSS “embodies, uses, and/or is a substantial derivation of [DVDCCA's] confidential proprietary information.” DVDCCA alleged that it had protected the trade secrets in its encryption software by limiting its disclosure to those who signed licensing agreements prohibiting disclosure to others. DVDCCA alleged that its trade secrets had been “obtained by willfully ‘hacking’ and/or improperly reverse engineering” CSS software created by one of its licensees. In its complaint, DVDCCA sought an injunction to prevent any future disclosures or distribution of DeCSS, and any linking to other Web sites that disclose, distribute or link to any trade secrets relating to the CSS technology. On Jan. 21, 2000, the California Superior Court granted a preliminary injunction enjoining defendants from “posting or otherwise disclosing or distributing, on their Web sites or elsewhere, the DeCSS program, the master keys or algorithms of the Content Scrambling System … or any other information derived from this proprietary information.” The court refused to enjoin the defendants from linking to other Web sites. Bunner appealed the injunction, contending that it constituted a prior restraint on his freedom of speech. On appeal, the California Court of Appeals first stated that, the first issue to be decided is whether DeCSS is “speech” within the scope of the First Amendment, pointing out that if it constitutes “speech” and therefore First Amendment issues, the standard of review on appeal would be independent review, rather than the deferential abuse-of-discretion standard typically applied on appeal from a preliminary injunction. While DVDCCA argued that DeCSS is “insufficiently expressive because it is composed of source code and has a functional aspect,” the court rejected that argument: “Because computer source code is an expressive means for the exchange of information and ideas about computer programming, we hold that it is protected by the First Amendment.” Consequently, the “preliminary injunction barring Bunner from disclosing DeCSS can fairly be characterized as a prohibition of ‘pure speech.’” The court then turned to the question whether the injunction could withstand constitutional scrutiny. Recognizing that “First Amendment protection is not without limits,” and that certain classes of speech such as obscenity, libel and “fighting words” have long fallen outside the scope of protection, the court nevertheless concluded that the DeCSS source code does not fall into any established exception. Instead, the court concluded that because DeCSS is “pure speech,” the preliminary injunction’s prohibition of future disclosures of DeCSS was a prior restraint on Mr. Bunner’s First Amendment right to publish the DeCSS program. As a “prior restraint,” the preliminary injunction was held to be unconstitutional and vacated. OTHER DEVELOPMENTS In addition to these two appellate decisions, one trial court recently declined to hear a case brought by Dr. Edward Felten, a college professor, against the Recording Industry Association of America (RIAA), the recording industry’s trade association, seeking a declaration that his publication of a paper on circumventing certain copyright-control technologies was not unlawful. Because the RIAA had withdrawn its initial threats of filing suit, the court ruled that there was no justiciable controversy. The next decision to shape these issues may come out of the 9th U.S. Circuit Court of Appeals, where Russian software programmer Dmitri Sklyarov has been indicted under the DMCA for writing a program that circumvents the technology that enforces usage rules for Adobe’s eBook software. Briefs in that case are due this month, and a hearing is scheduled for March 2002. CONCLUSION The thorough and well-reasoned opinions of Judge Kaplan and the 2nd Circuit in Universal City Studiosappear to firmly uphold the constitutionality of the anti-circumvention provisions of the DMCA as they are applied to persons “trafficking” in DeCSS or other decryption software. In light of the 2nd Circuit’s decision on the DMCA, the California Court of Appeals’ decision may have little precedential value in future cases brought in federal court challenging the constitutionality of the DMCA. The way things are shaping up, it appears that the 9th Circuit may be the next federal appeals court to address the issue. Michael B. Carlinsky and Jeffrey A. Conciatori are partners with Quinn Emanuel Urquhart Oliver & Hedgesin New York.

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