On February 22, 1993, President Clinton unveiled his plan to appoint a White House Information Infrastructure Task Force whose primary duty would consist of mapping out the administration's vision for the future of the National Information Infrastructure.(1) The creation of this task force led to the genesis of the Working Group on Intellectual Property Rights chaired by Bruce A. Lehman, Assistant Secretary of Commerce. The Working Group dedicated itself to the goal of identifying intellectual property issues in regard to the NII and determining whether these issues required an overhaul of current intellectual property law.(2) This working group was placed in the unenviable position of balancing two very powerful interests: on the one hand, the necessity to promote the dissemination of information to the public; and on the other hand, the duty to maintain enforceable intellectual property rights for those who would be the providers of this information.
On July 7, 1994, the Working Group introduced its primary conclusions in the Green Paper.(3) This report was developed after exhaustive research which involved 26 different government agencies and voluminous testimony and written statements by private individuals and corporations affected by the proposed legislation. This Green Paper was then upheld to public and private critique which led to the release of the White Paper on September 5, 1995. The White Paper serves as documentation of the Working Group's final effort and is the basis for the proposed copyright legislation in the Senate (S. 1284) and the House of Representatives (HB. 2441).(4)
Contrary to all the media flapdoodle, a National Information Infrastructure has existed for decades in the U.S. In fact this country has developed several mini-infrastructures that in a synergistic fashion serve to provide us with a deep and deadly sea of information.(5) We already have a telephone system, a broadcast radio system, a cable-T.V. system etc. Therefore, it is essential to point out that the common public perception of the NII as an "information superhighway" is in reality both simplistic and inaccurate. The "information superhighway" will not exist as a solitary free-standing monolith, but rather as a chaotic, direction less free flow of information and data over phone lines, radio waves, fiber-optic cable, and co-axial as well as any other hardware that may develop in the future.
This paper seeks to define and critique the some of the most important changes in copyright protection that the White Paper recommends. The framers of this document contend that owners of intellectual property in general and copyright holders specifically are unable, under current copyright law, to protect their work from infringement in the digital environment. Secretary Lehman and the other members of the Working Group correctly assert that the value of the NII will rely on the availability of quality information. They question the efficacy of a "superhighway" where no goods are carried or exchanged. This author agrees that the protection of copyrightable property is necessary for the continuing development of software and hardware that will form the cornerstone of the future NII. However, the intent of the Working Group, while laudable, falls short of providing adequate solutions to all the vexing questions raised. Specifically, the White Paper:
Prior to an in depth discussion of copyright issues raised by the White Paper it is essential that a clear understanding exists as to how these Copyright Law issues are treated today. Congress is explicitly granted the power to effectuate copyright Legislation under the Constitution. The United States Constitution, Article I, Section 8, Clause 8, states that Congress has the authority, "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."
The value that copyright industries contribute to today's economy is nearly inconceivable. Copyright industries added 238.6 billion dollars to the U.S. economy in 1993.(6) The profits realized through foreign markets exceeded 45.8 billion dollars in 1992 alone.(7) It is little wonder then that copyright legislation has been and will continue to be an area of paramount concern to the U.S. government.
The current Copyright Act was adopted in 1976 and was the product of nearly 200 years of legislative and judicial evolution. Sec. 102(a) of the 1976 act covers the subject matter of the copyright.
Copyright protection subsists...in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated either directly or with the aid of machine or device. Works of authorship include: 1) literary works; 2) music works including any accompanying words; 3) dramatic works including any accompanying music; 4) pantomimes and choreographic works; 5) pictorial, graphic, and sculptural works; 6) motion pictures and other audiovisual works; 7) sound recordings; and 8) architectural works.(8)
However, copyright extends solely to the expression of ideas or concepts and not in the idea or concept itself. This idea/expression dichotomy differentiates copyright law from patent law.(9) Sec.102 (b) states, "In no case does copyright protection of an original work of authorship extend to any idea, process, system, method of operation, concept principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work."(10)
Current copyright law has different standards which are employed to determine the length of the copyright. Living authors who published works after 1978 have their life plus 50 years of copyright protection unless the work was published anonymously or with a pseudonym.(11) Additionally authors or their successors may terminate any assignments or licenses within a five year period commencing after year thirty-five.(12) Works done for hire have a term of 75 years from the date of publication or 100 years after creation, whichever is less.(13)
Under United States law copyright is attached to a work simply by "fixing it in a tangible medium". There is no requirement of a traditional notice such as "copr." or "All Rights Reserved". This traditional notice requirement was mandated in the 1909 Copyright Act, but was deemed permissive rather than required by the authors of the 1989 amendments.(14) An author, however, must deposit two copies of his work to the Copyright Office.
A copyright gives the owner five exclusive rights under the Copyright Act (S. 106) These include the right to reproduce the work, the right to prepare derivative works, the right to distribute copies, and the right for some to perform or display their work publicly. It has been understood that the copyright holder may control only the first sale of copies of their work. This is referred to as the "first sale doctrine".(15) Thus an author, for example, holds the right to sell her copy of a book to a member of the public who then may do what she sees fit with this copy (sell it, loan it, throw it in the river, etc.)
If a copyright is infringed upon the owner is entitled to bring the case to federal court. The court may enjoin the infringer, impound or destroy illegal copies, and/or order awards in the form of statutory minimum damages, costs, and attorney's fees.(16)
One charged with infringement has several defenses. The defendant may make the generic claim that the plaintiff enters with unclean hands or that the plaintiff is attempting to commit a fraud on the Copyright Office. Additionally, the defendant may claim that the copyright in question is invalid. A claim is presumptively valid, but clear and convincing evidence to the contrary will strip this presumption.(17) Another possible defense is that the use was not an infringement under the statute. Non-infringement pertains to a use not specifically forbidden by Sec.106; a use permitted under Sec.102(b); or a "fair use" under Secs. 107-120.(18)
Fair use is a narrowly carved out exception to the exclusive rights of a copyright holder that allow, "things such as commentary, parody, news reporting, research and education about copyrighted works without permission by the author."(19) 17 U.S.C Sec. 107 sets the criteria to be used in the interpretation of a "fair use". The section states that:
In determining whether the use made of a work in any particular case is a fair use, the factors to considered shall include--
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
One can clearly see that types of fair use are not specifically defined. Rather the judiciary is forced to determine whether an apparent infringement is covered by the umbrella of exceptions. Often this determination consists of a balancing test of determining whether the use undermines the commercial profitability of the author.(20) Without fair use, however, it would be impossible to use a personal copy of material for learning or research. Scholars and teachers likewise would be unable to quote copyrighted for critique or analysis without the permission of the copyright holder. The fair use defense is an essential element in balancing the public's right to free dissemination of information with the copyright holders interest in receiving value for her work.
The use of digital and computer technology clearly have a profound impact on the creation, and reproduction of copyrighted works. Digital technology makes it possible to copy and transmit documents anywhere in the world at high speed and low cost. The quality of this digital product does not deteriorate as it is copied. There is no difference in the first generation and the 100th generation.(21) The ease by which a single criminal could reproduce and distribute copyrighted work to the detriment of the author is laughable. Indeed examples abound of cases where copyrighted work has been sent to bulletin boards where thousands of people have had access to the infringing product.
The stakes to the legitimate producers of copyrighted works are mile-high. The Working Group sees only one possible result if some type of equilibrium is not established. Producers will simply refuse to use these new technologies for fear of widespread infringement. While agreeing with the concerns of the Working Group, this author contends that the changes offered by the White Paper fail to recognize the flexibility of current copyright law. The proposed legislation establishes new substantive rights to publishers while greatly reducing the public's access to freedom of information.
The Working Group, curiously enough, has characterized the proposed overhaul of the current Copyright Act as merely "a few alterations".(22) The most crucial change proposed by the White Paper is the assertion that there should be an exclusive right of digital transmission. This exclusive right would amend 17 U.S.C., sec. 106(3) by adding the phrase, "or by transmission."(23) The Working Group contends that this does not create a new right, but rather is a logical acceptance that technological developments have initiated digital transmissions which have distribution rights. Besides this argument being tautological, it also fails to acknowledge the true effect of this change in copyright law. The White Paper focuses on the MAI Systems Corp v. Peak Computer, Inc., decision. This case maintains that digital copies placed in the RAM of a computer constitute "fixing" of the work.(24) Thus, as long as the computer is on a copy is stored which constitutes copyright infringement.
The effect of this interpretation of "distribution" is that users simply browsing a web page could be violating copyright law since the computer must make a temporary "copy" of the work in RAM. This has a tremendous possibility of creating a chilling effect on Web users. Researchers, teachers and students will be exposed to liability simply by using the Internet. Copyright holders also gain a large "stick" since they will be able threaten legal action. It is difficult to see how this does not greatly expand the rights of copyright holders while simultaneously decreasing the freedom of the public.
The White Paper, while accepting the possibility that digital transmissions may already enjoy protection under current copyright law, argues that, "the fact that more than one right may be involved in the infringing activity does not, and should not mean that only one right should apply."(25) Under current law it has been established that digital transmissions of copyrighted works for public performance or public display are actionable.(26) What copyright holders do not have is the right to control of performances or displays for private, non-public use.
The incorporation of, "or by transmission" to Sec. 106(3) would greatly expand the rights of copyright holders since they would now be able to exclusively control all performances and displays of copyrighted works. The White Paper argues that even if the legislative change makes all transmission of copies within the scope of the right, the transmission will not per se be unlawful. The White Paper declares that the distribution must still be to the public.(27) Assuming en arguendo that this is the case, it then seems redundant to incorporate a change in the law that is already a substantive right in the Act. The argument is clearly circular.
The White Paper's interpretation of the fair use doctrine will serve to decrease the public's access to information. It is granted that the potential of abuse in the digital environment makes the question of what constitutes fair use a difficult issue. However, a strict interpretation of fair use would serve to impose an unnecessary burden on the public's right to information. Any limitation on fair use, for example, could well effect the availability of research material to scholars and educational material to students.(28)
Close scrutiny of the White Paper reveals the Working Group's antipathy towards the fair use doctrine. In fact, it seems clear that the Working Group rejects the notion that private noncommercial copying of copyrighted work is always non-infringing. The White Paper cites, Sony Corp. v. Universal City Studios, Inc., to argue that a presumption exists against fair use in any conceivable commercial context.(29) The White Paper intimates that the case was decided in favor of allowing taping for "time-shifting purposes" merely because the plaintiffs did not have a market in place to realize commercial gains.(30) The White Paper quietly suggests that fair use will be a mute issue in any situation where commercial value could be realized. The Working Group fails to point out that the court in Sony also declared that any private noncommercial copying should be presumed to be legal.
The White Paper cites a line of cases including, Harper & Roe , Inc. v. Nation Enterprises, Stewart v. Abend, and Cambell v. Acuff-Rose Music, Inc., to support its argument that fair use is not applicable in any situation where a potential market could be exploited by a copyright owner.(31) The White Paper maintains that private non-commercial uses will still be covered under fair-use, yet due to its interpretation of the fair use doctrine it is difficult to conceive of an example of any noncommercial use.
Fair use is not accorded any greater consideration in the educational environment. The paper paints a bleak picture of researchers right to information. The paper implies that the holdings of Encyclopedia Britannica Educ. Corp. v. Crooks and Basic Books, Inc. v. Kinko's Graphics Corp. affirmatively limit the defense of fair use by educators and researchers.(32) In Britannica, the court held that a school system could not employ fair use as a defense against tape educational broadcasts for future classroom use. In Basic Books, the court found that an off-campus copy store could not copy and distribute photocopies of periodical material specified by teachers for their students. Simultaneously, the paper discounts Williams & Wilkins Co. in which a fair use defense was found applicable in a situation where a library photocopied material for research scientists.(33) Williams & Wilkins Co. v. U.S. is discounted by the White Paper because the technological means of tracking licensing should, in the paper's view, lead to a reduction in scope of the fair use defense.(34)
In taking this controversial stance the Working Group loses sight of the fact that the copyright power granted to Congress in the Constitution is not primarily concerned with the economic interest of the copyright holder, but rather with the necessity of the public to receive information and ideas.(35) The Working Group's viewpoint also fails to concede that the fair use defense is intricately tied to fundamental First Amendment considerations.
The White Paper assaults the historical "first sale doctrine" and suggests that it will have no application in the NII. The "first sale doctrine" has historically limited the owner of copyright from asserting control over future transfer of a purchased work. The reasoning is that the purchaser of a copyrighted work should be permitted to transfer her copy of the work to others. For example if one buys a CD, she is free to listen to it, sell it, loan it to a friend, etc. The only limitations placed on the "first sale doctrine" have been a refusal to grant the right of rental to sound recordings and computer programs. Courts have traditionally recognized the validity of the "first sale doctrine". In Columbia Pictures v. Redd Horne, Inc., The court held that, "The first sale doctrine prevents the copyright owner from controlling the transfer of a particular copy once its material ownership has been transferred."(36)
The White Paper, however, asserts that the "first sale doctrine" should not be expanded to digital transmissions. The rationale is two-fold. First, digital transmission is analogized to the inapplicability of the "first sale doctrine" to sound recording and computer software rental because, "these exceptions were enacted because of the ease with which reproduction of those works can be made at lower cost than the original with minimum degradation in quality."(37) Second, the White Paper asserts that digital transmission should not be covered under the "first sale doctrine" since the computer sending the copyrighted material would still have a copy of the work in its hard drive. Even if the owner subsequently destroyed his copy she still would have violated the copyright holders exclusive right of reproduction.(38)
The "first sale doctrine" could be preserved if the White Paper were willing to accept digital transfer of the copyrighted work as long as the user immediately destroyed her copy of the work. The White Paper could also have declared that the necessary intermediate copying should be considered a fair use under a neutral reading of the Sony decision. The greater ease of reproduction in and of itself should not end the historic application of the "first sale doctrine".
importation, manufacture or distribution of any device, product, or component incorporated into a device or product, or the provision of any service, the primary purpose or effect of which is to avoid, bypass, remove, deactivate, or otherwise circumvent, without the authority of the copyright owner or the law, any process, treatment, mechanism or system which prevents or inhibits the violation of any exclusive rights under Section 106.(39)
The White Paper accepts and encourages the establishment of systems to protect their intellectual property in digital form. Of course, the fact that these technologies will be employed with or without a fundamental change in the Copyright Act is not explored in depth. Protection in the form of contract provisions, payment schemes such as Xanadu, technological safeguards such as digital watermarks, encryption, and Steganograpghy, and accounting procedures are either presently available or forthcoming.(40) The White Paper states that as soon as a new technological system is established for copyright protection a new technology to defeat this protection will not lag far behind.(41)
Unlike many critics of the White Paper recommendation, this author does agree that the future copyright legislation will have a legitimate interest in suppressing the manufacture of decryption devices whose sole purpose is the illegal copying and distribution of copyrighted work. The Copyright Act, Sec. 1002 provides a similar ban on the manufacture of any device designed to circumvent a program or circuit that is used in a serial copying management system. This legislation has been effective in protecting the rights of copyright owners in sound recordings and musical works.(42)
Concern arises nonetheless, due to the general nature of the proposed legislation. The White Paper correctly points out that the fair use doctrine does not, "require a copyright owner to allow or to facilitate unauthorized access or use of a work."(43) It is also agreed that, "if the circumvention device is primarily intended and used for legal purposes, such as fair use, the device would not violate the provision."(44) Due to the vagueness of the statute, however, a manufacturer will have no way of knowing whether a device will be found to have "primarily" a legal purpose without exposing herself to litigation and possible civil and criminal litigation. For example, it is unclear whether the proposed section serves to overturn Sega v. Accolade, where the court found that Accolade's decompilation of the Sega code for use in its own game programs was a legitimate use.(45) This section must be reworked to provide for certainty and stability for technological manufacturers.
The White Paper authoritatively asserts that on-line service provider should be responsible for the actions of their subscribers.(46) The paper denies that ISP's should have any limitation on liability due to lack of actual knowledge or the lack of ability and authority to stop the infringement. ISP's are to be the first line of defense in the war against copyright violation. The paper cites, Buck v. Jewell- LaSalle Realty Co., to argue that the risk of liability is a, "legitimate cost of engaging in a business that causes harm to others."(47)
It is a mistake to disregard the fact that without service providers there would be no access to the "information superhighway". The White Paper assumes that the cost of risking copyright liability is outweighed by the rewards of the business, but the "reward" to the ISP is the same whether the user violates copyright law or not. The ISP should not be liable where it receives no financial benefit from a users infringement. If on-line service providers are forced to become "Little Brother" the result would be increased cost and decreased efficiency for the users. At this point it is impossible for an ISP to monitor even a fraction of user activity. Additionally, it is illegal under the Electronic Communications Privacy Act for the ISP to monitor private electronic correspondence.(48) Another factor that weighs against ISP liability is the possibility of numerous unfounded yet expensive law suits by copyright holders against ISP's. Examples of this have already occurred. In Religious Technology Center and Bridge Publications Inc. v. Netcom, the Church of Scientology sued both the alleged offender and the ISP for posting trade secrets on an electronic bulletin board.(49)
It is disturbing that the White Paper completely disregards the importance of ISP's in the future evolution of the NII. The ability of copyright owners to hold ISP's liable for vicarious copyright infringement may surely expand their confidence in the electronic market, yet it will inevitable serve to drive all of the customers away.
The recurring theme found in the White Paper is that the NII will never achieve its potential unless copyright owners are cloaked with a blanket of security. The paper visions today's "superhighway" as a dangerous road with bandits lurking at every curve.
The expansion of protections offered to copyright owners in the proposed legislation is unwarranted and ill-advised. It seems clear that the Working Group has failed to strike the crucial balance between the necessity to promote the dissemination of information to the public and a duty to maintain enforceable intellectual property rights for copyright owners.
1. Statement of Bruce A. Lehman, on S. 1284 and H.R. 2441: Before the Subcommittee on Courts and Intellectual Property, Committee on the Judiciary, United States House of Representatives and the Committee of the Judiciary, United States Senate, 1-2 (Nov. 15, 1995). Available online at URL http://www.uspto.gov/web/ipnii/nii/hill.html.
2. Statement of Bruce A. Lehman, Notice of Hearings and Request for Comments on Preliminary Draft of the Report of the Working Group on Intellectual Property Rights, 59 Fed. Reg. 42,819 (August 19, 1994).
3. Information Infrastructure Task Force, Working Group on Intellectual Property Rights, Intellectual Property and the National Information Infrastructure: A Preliminary Draft of the Report of the Working Group on Intellectual Property Rights (July 1994). Available online at URL http://www.ilt.columbia.edu/projects/copyright/papers/ipnii.html.
4. Information Infrastructure Task Force, Working Group on Intellectual Property Rights, Intellectual Property and the National Information Infrastructure: The Report of the Working Group on Intellectual Property Rights, 1-17 (Sept. 1995). Available online at URL http://www.uspto.gov/web/ipnii/ipnii.doc.
5. Statement of Douglas K. Brotz, Notice of Hearings and Request for Comments on Preliminary Draft of the Report of the Working Group on Intellectual Property Rights, 59 Fed. Reg. 42,819 (August 19, 1994).
6. Senator Orrin G. Hatch, Copyright and the Global Marketplace, ROLL CALL, March 1, 1996. Available online at URL http://www.cic.org/clip4.html.
7. Hatch, supra note 6.
8. 17 U.S.C. Sec. 102(a).
9. For an concise overview of copyright law see, Thomas G. Field, Jr., Intellectual Property: The Practical and Legal Fundamentals (1995), available online at URL http://www.fplc.edu/TFIELD/PLFIP.htm.
10. 17 U.S.C. Sec. 102(b).
11. 17 U.S.C. Sec. 302.
12. 17 U.S.C. Sec. 203(a)(3).
13. 17 U.S.C. Sec. 302.
14. 17 U.S.C. Sec. 405.
15. Pamela Samuelson, Legally Speaking: The NII Intellectual Property Report, COMMUNICATIONS OF THE ACM (Dec. 1994). Available online at URL http://www.ilt.columbia.edu/projects/copyright/papers/samuelson2.htm.
16. 17 U.S.C. Secs. 501-510.
17. 17 U.S.C. Sec. 410(c).
18. Fair Use is covered under 17 U.S.C. Secs. 107-120.
19. Brad Templeton, 10 Big Myths About Copyright Explained(Feb. 12, 1995) Available online at URL http://www.teleport.com/~bw/copyright.html.
20. Paul Sarmarco, Copyright on the Internet (March 23, 1995) Available online at URL http://www.eecis.udel.edu/~sarmarco/paulucci/ethics.htm.
21. Lehman, supra note 1 at 7.
22. Supra note 4 at 212.
23.Supra note 4 at 213-217.
24. MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 519 (9th Cir. 1993).
25. Supra note 4 at 214.
26. Pamela Samuelson, The Copyright Grab, WIRED (1995). Available online at URL http://www.hotwired.com/wired/whitepaper.html.
27. Supra note 4 at 215.
28. Statement of Lisa Freedman, Notice of Hearings and Request for Comments on Preliminary Draft of the Report of the Working Group on Intellectual Property Rights, 59 Fed. Reg. 42,819 (August 19, 1994).
29. Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984).
30. Supra note 4 at 79.
31. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985).; Stewart v. Abend, 495 U.S. 207 (1990).; Cambell v. Acuff-Rose Music, Inc., 114 S.Ct. 1164 (1990).
32. Encyclopedia Britannica Educ. Corp. v. Crooks, 558 F. Supp. 1247 (W.D.N.Y. 1983).; Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991).
33. Williams & Wilkins Co. v. U.S., 487 F.2d 1345 (Ct. Cl. 1973).
34. Supra note 4 at 82.
35. Institute for Learning Technologies, ILT Comments on the Preliminary Report of the ITTF Working Group on Intellectual Property Rights, ILT WEB (Aug. 1994). Available online at URL http://www.ilt.columbia.edu/projects/copyright/papers/iltdocs/ILTWGIP.html.
36. Columbia Pictures Indus. v. Redd Horne, Inc, 749 F.2d 154 (3rd Cir. 1984).
37. Supra note 4 at 91.
38. Id. at 92.
39. Id. at 231.
40. An excellent group of papers on the future of copyright protection systems can be viewed at URL: gopher://gopher.cni.org//11/cniftp/misdocs/ima.ip-workshop. The most fascinating paper in was Theodor Holm Nelson's, A Publishing Model For Network Documents. Mr. Nelson's paper dealt with the proposed Xanadu project which would create a publishing royalty system where the user actually has the ability to "pay-per-byte".
41. Supra note 4 at 230.
42. 17 U.S.C. Sec. 1002 (Supp. V 1993).
43. Supra note 4 at 231.
44. Id. at 231-232.
45. Samuelson, Supra note 15.
46. Supra note 4 at 117.
47. Buck v. Jewell-LaSalle Realty Co., 283 U.S. 191, 198-199 (1931).
48. Samuelson, Supra note 26.
49. Religious Technology Center and Bridge Publications Inc. v. Netcom, 907 F. Supp. 1361 (N.D. Cal 1995). Available online at URL http://www.eff.org/pub/Legal/Cases/scientology_cases/whyte_cos_v_erlich_092295.ruling.