The Federal Circuit Court of Appeals has upheld the district court summary judgement decision in Chamberlain v. Skylink, which had held a third party garage door opener manufacturer not liable under the anti-circumvention provisions of the Digital Millennium Copyright Act (codified at 17 USC 1201). My sharply critical take on the district court case can be found on LawMeme (Judge Asserts Pseudo Distinction to Preserve DMCA). The case went to the Federal Circuit for some complicated jurisdictional issues regarding patent law that I won’t address. via Patently Obvious

This is the most important DMCA decision since the MPAA DeCSS case decided by the Second Circuit in Universal v. Corley. The decision includes a lengthy, at times inspiring, at times frustrating, analysis of the purpose and structure of the DMCA anti-circumvention provisions. In the end, the court determines that a strict construction of the statute would lead to absurdities as many of the DMCA’s critics have argued. In order to solve this problem, the court creates out of the complicated language of the DMCA a balancing test that is not strictly defined, but apparently reconciles Corley with Skylink. Among other things, the balancing test makes the distinction between § 1201(a) and § 1201(b) liability quite murky, and puts the whole reason for DMCA exemptions under the Copyright Office into question. This is a complicated decision, and there are no clear answers to many questions, however, it is a critically important one for innovation, creativity and the future of copyright law. It is sure to be extensively debated and discussed in the coming weeks, months and even years.

Read the 45-page appellate decision: Chamberlain Group, Inc. v. Skylink Technologies, Inc. [PDF].

Read the decision in HTML: Chamberlain Group, Inc. v. Skylink Technologies, Inc. [HTML].

Analysis soon…


Here is my rather lengthy look at the case…

Caveat, caveat, caveat. These are my first impressions. This is a heck of a complicated case, so be warned … the debate will continue.

Really Short Statement of Facts

Read the decision for details. Chamberlain makes Garage Door Openers (GDO). They made a version of a GDO remote, that, let’s simply assume for purposes of the case, acted as a technological protection measure when accessing the software in the GDO itself. The ostensible purpose of this is to prevent criminals from easily opening people’s garages. Skylink makes third party GDO remotes for those who lose their originals or need another one for family members or something. Skylink took advantage of a security vulnerability in Chamberlain’s GDO remote in order for their third party remotes to be compatibile. Chamberlain than sued for, among other things, violation of the anti-circumvention provisions of the DMCA. The district court threw the DMCA issues out on a summary judgement. This is the appeal that resulted.

Introduction of the Case

The introduction of the unanimous decision is essentially the holding:

Chamberlain’s claims at issue stem from its allegation that the District Court incorrectly construed the DMCA as placing a burden upon Chamberlain to prove that the circumvention of its technological measures enabled unauthorized access to its copyrighted software. But Skylink’s accused device enables only uses that copyright law explicitly authorizes, and is therefore presumptively legal. Chamberlain has neither proved nor alleged a connection between Skylink’s accused circumvention device and the protections that the copyright laws afford Chamberlain capable of overcoming that presumption. Chamberlain’s failure to meet this burden alone compels a legal ruling in Skylink’s favor. [underlining in original]

The key here is that the uses may not be authorized by Chamberlain, but that they are authorized by the Copyright Act. In other words, someone who uses Skylink’s third party remote to access a Chamberlain GDO that they have legitimately acquired isn’t violating any copyright infringement laws. The Federal Circuit court here is asserting that before one can be guilty of illicit access under § 1201(a)(1), there must be some “connection” between the circumvention device and copyright infringement. The “connection” is the balancing test.

However, what this balancing requires becomes quite obscure, given the full language of the reasoning of the court.

For example, consider this passage in the decision:

Though only Chamberlain’s DMCA claim is before us, and though the parties dispute whether or not Skylink developed the Model 39 independent of Chamberlain’s copyrighted products, it is nevertheless noteworthy that Chamberlain has not alleged either that Skylink infringed its copyright or that Skylink is liable for contributory copyright infringement. What Chamberlain has alleged is that because its opener and transmitter both incorporate computer programs “protected by copyright” and because rolling codes are a “technological measure” that “controls access” to those programs, Skylink is prima facie liable for violating § 1201(a)(2). [footnote omitted, underlining in original]

Strangely enough, there was never any claim in Corley that he either infringed copyright or was liable for contributory or vicarious copyright infringement. Indeed, I’m not really sure what the relevance of this is. After all, the DMCA creates an entirely new cause of action that is not directly tied to copyright infringement. Why would you need a new law if one could be held liable for either direct or secondary copyright infringement? Obviously, the DMCA must apply to cases where one is guilty of neither, else why the need for this new cause of action?

There is also a strange statement about how deep Corley got into the facts:

To date, in fact, only the Second Circuit has construed § 1201(a)(2), and that construction focused on First Amendment issues rather than on an application of the statute to case-specific facts. See Universal City Studios v. Corley, 273 F.3d 429 (2d Cir. 2001) (“Corley”).


A very interesting aspect of this case is the emphasis the court place on the fact that the DMCA does not create a new property right or change existing rights.

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. This distinction between property and liability is critical. Whereas copyrights, like patents, are property, liability protection from unauthorized circumvention merely creates a new cause of action under which a defendant may be liable. The distinction between property and liability goes straight to the issue of authorization, the issue upon which the District Court both denied Chamberlain’s and granted Skylink’s motion for summary judgment.

This is critically important language for a variety of reasons, both positive and negative with regard to critics of the DMCA, such as questions of whether what some call “paracopyright” violates the “copyright clause” of the Constitution. The reference to 17 U.S.C. § 1201(c)(1) will also play a critical (and sometimes surprising) role in several other aspects of the decision.

In any case, here, the court uses this language to do some burden shifting. Under copyright law, claimed infringement puts the burden of proving authorization on the defendant. Under Skylink the court puts the burden on the plaintiff to prove that the actions were unauthorized.

Authorization was a major part of the argument in the Corley case as well, but was dismissed as “pure sophistry” in the district court case. Compare two passages, the first from Skylink:

The plain language of the statute [DMCA] therefore requires a plaintiff alleging circumvention (or trafficking) to prove that the defendant’s access was unauthorized—a significant burden where, as here, the copyright laws authorize consumers to use the copy of Chamberlain’s software embedded in the GDOs that they purchased. The premise underlying this initial assignment of burden is that the copyright laws authorize members of the public to access a work, but not to copy it. The law therefore places the burden of proof on the party attempting to establish that the circumstances of its case deviate from these normal expectations; defendants must prove authorized copying and plaintiffs must prove unauthorized access.

Compare this to footnote 137 in the district court’s Corley decision (Universal v. Reimerdes [PDF]):

Defendants posit that purchasers of a DVD acquire the right “to perform all acts with it that are not exclusively granted to the copyright holder.” Based on this premise, they argue that DeCSS does not circumvent CSS within the meaning of the statute because the Copyright Act does not grant the copyright holder the right to prohibit purchasers from decrypting. As the copyright holder has no statutory right to prohibit decryption, the argument goes, decryption cannot be understood as unlawful circumvention. The argument is pure sophistry. The DMCA proscribes trafficking in technology that decrypts or avoids an access control measure without the copyright holder consenting to the decryption or avoidance. [citation omitted]

This raises the obvious question of what the distinction between watching a legitimately acquired DVD (which, in my understanding of copyright law, is not infringement) and using a third-party garage door opener. I guess that is all in the balancing test.

Further problems with distinguishing this case from Corley continue:

Such an exemption [that the DMCA obliterates consumer expectations], however, is only plausible if the anticircumvention provisions established a new property right capable of conflicting with the copyright owner’s other legal responsibilities—which as we have already explained, they do not. The anticircumvention provisions convey no additional property rights in and of themselves; they simply provide property owners with new ways to secure their property. Like all property owners taking legitimate steps to protect their property, however, copyright owners relying on the anticircumvention provisions remain bound by all other relevant bodies of law. Contrary to Chamberlain’s assertion, the DMCA emphatically did not “fundamentally alter” the legal landscape governing the reasonable expectations of consumers or competitors; did not “fundamentally alter” the ways that courts analyze industry practices; and did not render the pre-DMCA history of the GDO industry irrelevant. [emphasis in original]

The obvious question here is what are the legitimate consumer expectations of those who purchase DVDs? What would it take to eliminate these consumer expectations? How much notice might be required? It might not be much.

There is a further question as to whether fair use (or how much fair use) is a legitimate consumer expectation, a question that this decision does not answer.

Of course, consumer expectations have a lot to do with existing copyright law. People generally expect to be able to do the things that copyright law permits. This becomes problematic in the distinction between § 1201(a) and § 1201(b). Under § 1201(a) one is liable for using and distributing circumvention devices, whether there is infringement or not. Under § 1201(b), one is liable for distributing circumvention devices, but liability for using the device only occurs when one has infringed copyright and is dealt with as regular old copyright infringement. What is “access” under § 1201(a), and what are legitimate consumer expectations with regard to it, given that it isn’t part of traditional copyright law? Here is the court’s less than crystal explanation:

Prior to the DMCA, a copyright owner would have had no cause of action against anyone who circumvented any sort of technological control, but did not infringe. The DMCA rebalanced these interests to favor the copyright owner; the DMCA created circumvention liability for “digital trespass” under § 1201(a)(1). It also created trafficking liability under § 1201(a)(2) for facilitating such circumvention and under § 1201(b) for facilitating infringement (both subject to the numerous limitations and exceptions outlined throughout the DMCA).

Indeed, there was rebalancing. But the balance was entirely one-sided. The court is going to take this “rebalancing” language and run with it in order to even the scales a bit. However, this case definitely leaves one guessing as to the new balance.

In any case, it once again doesn’t really explain why someone who watches a DVD using DeCSS should be guilty of crime under § 1201(a)(1), if they aren’t infringing the copyright. What is balanced about that?

The court does make some distinctions with regard to Corley, but many of them are quite weak. For example,

The facts here differ greatly from those in Reimerdes. There, a group of movie studios sought an injunction under the DMCA to prohibit illegal copying of digital versatile discs (DVDs).

Illegal copying wasn’t really an issue in the case. Reimerdes would have loved that there be a requirement for the movie studios to prove illegal copying by means of DeCSS. More importantly, the injunction wasn’t against illegal copying (aka “copyright infringement”) but against the distribution of software with substantial non-infringing uses. Poor legal draftsmanship here, certainly. Such poor recitation of the facts in Corley also doesn’t help one figure out why the balance was so one-sided. Again, why should someone be guilty of a crime for making a non-infringing use of a legitimately acquired copy of a work?

This problematic distinction continues:

The plaintiffs presented evidence that each motion picture DVD includes a content scrambling system (CSS) that permits the film to be played, but not copied, using DVD players that incorporate the plaintiffs’ licensed decryption technology. Id. The defendant provided a link on his website that allowed an individual to download DeCSS, a program that allows the user to circumvent the CSS protective system and to view or to copy a motion picture from a DVD, whether or not the user has a DVD player with the licensed technology…..Chamberlain’s proposed construction of the DMCA ignores the significant differences between defendants whose accused products enable copying and those, like Skylink, whose accused products enable only legitimate uses of copyrighted software.

Why is the fact that DeCSS can be used to copy relevant to a case arising solely under § 1201(a)? Section 1201(b) deals with cases of distribution of devices that enable copyright infringement. Section 1201(a) is about cases of circumvention for purposes of access, which, last time I checked, wasn’t one of the exclusive rights copyright provides.

Under the Federal Circuit’s decision, what exactly does § 1201(a) prohibit that § 1201(b) does not? What is the distinction? The Federal Circuit goes on to distinguish three other DMCA cases, including LexmarkReal v. Streambox, and Sony v. Gamemasters:

In short, the access alleged in all three cases was intertwined with a protected right. None of these cases can support a construction as broad as the one that Chamberlain urges us to adopt, even as persuasive authority.

Indeed, the rights were intertwined. How does that help one distinguish between § 1201(a) and § 1201(b), if they are always friggin’ intertwined? Congress believed that there would be many cases brought under one but not the other, that there was an important distinction between the two causes of action. If they are always intertwined, how can that be?

Even the Federal Circuit is forced to recognize that the argument that the two causes should be seen as separate is consistent with Corley:

Furthermore, though the severance of access from protection appears plausible taken out of context, it would also introduce a number of irreconcilable problems in statutory construction. The seeming plausibility arises because the statute’s structure could be seen to suggest that § 1201(b) strengthens a copyright owner’s abilities to protect its recognized rights, while § 1201(a) strengthens a copyright owner’s abilities to protect access to its work without regard to the legitimacy (or illegitimacy) of the actions that the accused access enables. Such an interpretation is consistent with the Second Circuit’s description: “[T]he focus of subsection 1201(a)(2) is circumvention of technologies designed to prevent access to a work, and the focus of subsection 1201(b)(1) is circumvention of technologies designed to permit access to a work but prevent copying of the work or some other act that infringes a copyright.” Corley, 273 F.3d at 440-41 (emphasis in original). [emphasis in original]

Indeed. That would be the plain reading of Corley.

However, Corley leads to absurdities, and the Federal Circuit argues that the Second Circuit could not have meant that. Still, why is it not an absurdity that someone can be prosecuted for watching a legitimately acquired DVD on an unauthorized device?

It is unlikely, however, that the Second Circuit meant to imply anything as drastic as wresting the concept of “access” from its context within the Copyright Act, as Chamberlain would now have us do. Were § 1201(a) to allow copyright owners to use technological measures to block all access to their copyrighted works, it would effectively create two distinct copyright regimes. In the first regime, the owners of a typical work protected by copyright would possess only the rights enumerated in 17 U.S.C. § 106, subject to the additions, exceptions, and limitations outlined throughout the rest of the Copyright Act—notably but not solely the fair use provisions of § 107. Owners who feel that technology has put those rights at risk, and who incorporate technological measures to protect those rights from technological encroachment, gain the additional ability to hold traffickers in circumvention devices liable under § 1201(b) for putting their rights back at risk by enabling circumventors who use these devices to infringe. [footnote omitted]

I interrupt this quote to point out that the next paragraph is a critical one:

Under the second regime that Chamberlain’s proposed construction implies, the owners of a work protected by both copyright and a technological measure that effectively controls access to that work per § 1201(a) would possess unlimited rights to hold circumventors liable under § 1201(a) merely for accessing that work, even if that access enabled only rights that the Copyright Act grants to the public. This second implied regime would be problematic for a number of reasons. First, as the Supreme Court recently explained, “Congress’ exercise of its Copyright Clause authority must be rational.” Eldred v. Ashcroft, 537 U.S. 186, 205 n.10 (2003). In determining whether a particular aspect of the Copyright Act “is a rational exercise of the legislative authority conferred by the Copyright Clause . . . we defer substantially to Congress. It is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors . . . in order to give the public appropriate access to their work product.” Id. at 204-05 (citation omitted) (emphasis added). Chamberlain’s proposed construction of § 1201(a) implies that in enacting the DMCA, Congress attempted to “give the public appropriate access” to copyrighted works by allowing copyright owners to deny all access to the public. Even under the substantial deference due Congress, such a redefinition borders on the irrational.

Wow. I say it again, wow. This is a complicated passage and one that will be subject to much debate.

The way I see it, is that this sets the utmost boundary of what the DMCA means. The court is saying that it is irrational (which is a very, very low standard in legal terms) that Congress would give all control over copyrighted works to the copyright holder. Thus, the DMCA cannot prevent you from using a work, but this doesn’t mean Congress is irrational in eliminating a heck of a lot of fair use. The question is how far that irrationality extends. Footnote 14 is also critical:

We do not reach the relationship between § 107 fair use and violations of § 1201. The District Court in Reimerdes rejected the DeCSS defendants’ argument that fair use was a necessary defense to § 1201(a), Reimerdes, 111 F.Supp. 2d at 317; because any access enables some fair uses, any act of circumvention would embody its own defense. We leave open the question as to when § 107 might serve as an affirmative defense to a prima facie violation of § 1201. For the moment, we note only that though the traditional fair use doctrine of § 107 remains unchanged as a defense to copyright infringement under § 1201(c)(1), circumvention is not infringement.

This looks sort of good, but the court isn’t using this to distinguish Corley, so it is unclear how far the Federal Circuit is willing to push this. Additionally, as I noted, “rational basis” is a very low standard, so, even if there were a fair use defense to the anti-circumvention provisions of the DMCA, “rational basis” would basically permit courts to push the defense as far as the Constitution would allow.

Next, a lengthy except which as some inspiring language seemingly taken from the critics of the DMCA. However, the practical implications of this aren’t nearly as inspiring. Indeed, they may ultimately be entirely depressing, as the DMCA is used to go after technologies judges don’t like, while technologies judges do like are protected from liability.

That apparent irrationality, however, is not the most significant problem that this second regime implies. Such a regime would be hard to reconcile with the DMCA’s statutory prescription that “[n]othing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use, under this title.” 17 U.S.C. § 1201(c)(1). A provision that prohibited access without regard to the rest of the Copyright Act would clearly affect rights and limitations, if not remedies and defenses. Justice Souter has remarked that “[n]o canon of statutory construction familiar to me specifically addresses the situation in which two simultaneously enacted provisions of the same statute flatly contradict one another. We are, of course, bound to avoid such a dilemma if we can, by glimpsing some uncontradicted meaning for each provision.” Reno v. American-Arab Anti-Discrimination Comm., 525 U.S. 471, 509 (1999) (Souter, J., dissenting). Chamberlain’s proposed construction of § 1201(a) would flatly contradict § 1201(c)(1)—a simultaneously enacted provision of the same statute. We are therefore bound, if we can, to obtain an alternative construction that leads to no such contradiction.Chamberlain’s proposed severance of “access” from “protection” in § 1201(a) creates numerous other problems. Beyond suggesting that Congress enacted by implication a new, highly protective alternative regime for copyrighted works; contradicting other provisions of the same statute including § 1201(c)(1); and ignoring the explicit immunization of interoperability from anticircumvention liability under § 1201(f); the broad policy implications of considering “access” in a vacuum devoid of “protection” are both absurd and disastrous. Under Chamberlain’s proposed construction, explicated at oral argument, disabling a burglar alarm to gain “access” to a home containing copyrighted books, music, art, and periodicals would violate the DMCA; anyone who did so would unquestionably have “circumvent[ed] a technological measure that effectively controls access to a work protected under [the Copyright Act].” § 1201(a)(1). The appropriate deterrents to this type of behavior lie in tort law and criminal law, not in copyright law. Yet, were we to read the statute’s “plain language” as Chamberlain urges, disabling a burglar alarm would be a per se violation of the DMCA.

In a similar vein, Chamberlain’s proposed construction would allow any manufacturer of any product to add a single copyrighted sentence or software fragment to its product, wrap the copyrighted material in a trivial “encryption” scheme, an thereby gain the right to restrict consumers’ rights to use its products in conjunction with competing products. In other words, Chamberlain’s construction of the DMCA would allow virtually any company to attempt to leverage its sales into aftermarket monopolies—a practice that both the antitrust laws, see Eastman Kodak Co. v. Image Tech. Servs., 504 U.S. 451, 455 (1992), and the doctrine of copyright misuse, Assessment Techs. of WI, LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7th Cir. 2003), normally prohibit.

Even were we to assume arguendo that the DMCA’s anticircumvention provisions created a new property right, Chamberlain’s attempt to infer such an exemption from copyright misuse and antitrust liability would still be wrong. We have noted numerous times that as a matter of Federal Circuit law, “[i]ntellectual property rights do not confer a privilege to violate the antitrust laws. But it is also correct that the antitrust laws do not negate [a] patentee’s right to exclude others from patent property.” CSU, L.L.C. v. Xerox Corp., 203 F.3d 1322, 1325 (Fed. Cir. 2000) (citations omitted). In what we previously termed “the most extensive analysis of the effect of a unilateral refusal to license copyrighted expression,” id., among our sister Circuits, the First Circuit explained that: “[T]he Copyright Act does not explicitly purport to limit the scope of the Sherman Act. . . . [W]e must harmonize the two [Acts] as best we can.” Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1186-87 (1st Cir. 1994). Our previous consideration of Data General led us to conclude that it was “consistent with both the antitrust and the copyright laws and is the standard that would most likely be followed by the Tenth Circuit.” CSU, 203 F.3d at 1329.

I skip a paragraph concerning how the Seventh Circuit would similarly construe the law.

Finally, the requisite “authorization,” on which the District Court granted Skylink summary judgment, points to yet another inconsistency in Chamberlain’s proposed construction. The notion of authorization is central to understanding § 1201(a). Seee.g., S. Rep. 105-90 at 28 (1998) (“Subsection (a) applies when a person has not obtained authorized access to a copy or a phonorecord that is protected under the Copyright Act and for which the copyright owner has put in place a technological measure that effectively controls access to his or her work.”). Underlying Chamberlain’s argument on appeal that it has not granted such authorization lies the necessary assumption that Chamberlain is entitled to prohibit legitimate purchasers of its embedded software from “accessing” the software by using it. Such an entitlement, however, would go far beyond the idea that the DMCA allows copyright owner to prohibit “fair uses . . . as well as foul.” Reimerdes, 111 F. Supp. 2d at 304. Chamberlain’s proposed construction would allow copyright owners to prohibit exclusively fair uses even in the absence of any feared foul use. It would therefore allow any copyright owner, through a combination of contractual terms and technological measures, to repeal the fair use doctrine with respect to an individual copyrighted work—or even selected copies of that copyrighted work. Again, this implication contradicts § 1201(c)(1) directly. Copyright law itself authorizes the public to make certain uses of copyrighted materials. Consumers who purchase a product containing a copy of embedded software have the inherent legal right to use that copy of the software. What the law authorizes, Chamberlain cannot revoke. [footnote omitted, emphasis in original]

All this is wonderful language, except for one small point. Basically, it only applies in full force to circumvention devices whose use is solely or, in the words of the decision, “exclusively” non-infringing. It even seems to keep the door open for use of the DMCA where there is a “feared” foul use and, believe me, copyright holders are scared of their own shadows.

The court also doesn’t address the question of whether contracts, which are frequently, in the consumer marketplace, contracts of adhesion, would create liability under the DMCA, if the circumvention device were entirely non-infringing, but the use violated the contract. Footnote 17:

It is not clear whether a consumer who circumvents a technological measure controlling access to a copyrighted work in a manner that enables uses permitted under the Copyright Act but prohibited by contract can be subject to liability under the DMCA. Because Chamberlain did not attempt to limit its customers’ use of its product by contract, however, we do not reach this issue.

After this inspiring, but not necessarily entirely positive in a practical sense, language, the court creates a balancing test. Unfortunately, since there is nothing to balance on Chamberlain’s behalf (uses of Skylink’s device are exclusively non-infringing), the court doesn’t go into what factors should be considered in the balancing. Uncertainty indeed. Again, I fear if one can make a legitimate case for “fear” of foul use, the DMCA’s “balancing” will result in a successful case:

We therefore reject Chamberlain’s proposed construction in its entirety. We conclude that 17 U.S.C. § 1201 prohibits only forms of access that bear a reasonable relationship to the protections that the Copyright Act otherwise affords copyright owners. While such a rule of reason may create some uncertainty and consume some judicial resources, it is the only meaningful reading of the statute. Congress attempted to balance the legitimate interests of copyright owners with those of consumers of copyrighted products. See H.R. Rep. No. 105-551, at 26 (1998). The courts must adhere to the language that Congress enacted to determine how it attempted to achieve that balance. See Gwaltney, 484 U.S. at 56.

Frankly, I still see this as problematic. It essentially collapses the distinction between § 1201(a) and § 1201(b). Where is the principle of statutory construction whereby if there are two separate causes of actions, Congress meant them to mean different things?

There is intent, and then there is clear language. But the court goes with intent.

Were we to interpret Congress’s words in a way that eliminated all balance and granted copyright owners carte blanche authority to preclude all use, Congressional intent would remain unrealized.Congress chose words consistent with its stated intent to balance two sets of concerns pushing in opposite directions. See H.R. Rep. No. 105-551, at 26 (1998). The statute lays out broad categories of liability and broad exemptions from liability. It also instructs the courts explicitly not to construe the anticircumvention provisions in ways that would effectively repeal longstanding principles of copyright law. See § 1201(c). The courts must decide where the balance between the rights of copyright owners and those of the broad public tilts subject to a fact-specific rule of reason. Here, Chamberlain can point to no protected property right that Skylink imperils. The DMCA cannot allow Chamberlain to retract the most fundamental right that the Copyright Act grants consumers: the right to use the copy of Chamberlain’s embedded software that they purchased. [footnotes omitted, emphasis in original]

Again, though this language looks very positive, it isn’t very clear how far it extends, and, in fact, it makes the ruling quite narrow. A “fact-specific rule of reason” sounds suspiciously like a “rational basis” test tilted in favor of copyright holders. It doesn’t seem to leave much room for anything else. Corley rejected the fair use test entirely. This decision doesn’t, but it also doesn’t seem to give fair use much running room either. One can imagine that fair use will be defined as narrowly as constitutionally possible.

There are no details for the balancing test, just an additional factor that must be proven to make a anti-circumvention claim under the DMCA:

A plaintiff alleging a violation of § 1201(a)(2) must prove: (1) ownership of a valid copyright on a work, (2) effectively controlled by a technological measure, which has been circumvented, (3) that third 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) the defendant either (i) designed or produced primarily for circumvention; (ii) made available despite only limited commercial significance other than circumvention; or (iii) marketed for use in circumvention of the controlling technological measure. A plaintiff incapable of establishing any one of elements (1) through (5) will have failed to prove a prima facie case.

The first four elements are not really very controversial. It is the fifth element that is the kicker, and isn’t in the language of the law, but has been construed by the court’s interpretation. The court bases its decision on element number 5, though the lower court based its decision on element number 4 (which makes sense, since the lower court didn’t invent element 5 in its decision).

By focusing on element number 5, the court doesn’t have to consider element number 4. Why doesn’t element 5 apply?:

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.

This is interesting language and isn’t entirely clear. One can read this decision and come to the conclusion that Chamberlain’s customers are immune to liability because the uses of Skylink’s GDO are exclusively non-infringing.

However, if there were both infringing and non-infringing uses of Skylink’s GDO, should Skylink’s customers still be liable under § 1201(a)(1) for using the device in non-infringing ways? This is a question that the decision doesn’t answer, and one that is very, very important.

Is it rational for Congress to make it a crime to use a circumvention device for non-infringing uses? Is that a rational balance? Much of the inspiring language of the decision, would seem to indicate no, but it certainly isn’t clear. Given that the court has, to some extent, merged §§ 1201(a) and 1201(b), why is there no protection from circumvention liability for using a circumvention device in a non-infringing way? Under § 1201(b) if you use a circumvention device for non-infringing purposes, you are in the clear. You don’t have that protection under § 1201(a), but why not, given that there has to be some connection between infringement and what is happening under § 1201(a).

Of course, such an argument raises issues regarding the exemptions that the Copyright Office is so loathe to permit. Does this decision undermine the exemption authority by making them generally unnecessary? If not, one has to read the decision to be rather narrow, which is not a good thing.

This aspect of the decision certainly raises many more questions than it answers, and will most likely be one of the most disputed passages. However, I can safely guarantee that as long as Marybeth Peters is in charge of the Copyright Office, it will remain a crime to make non-infringing uses of copyrighted works, if you circumvent an access control device.


Here is the court’s conclusion:

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. We therefore affirm the District Court’s summary judgment in favor of Skylink.

My conclusion? The DMCA has been saved from one of its most absurd aspects. However, that may only strengthen its more pernicious effects in stifling creativity and innovation.

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