Course No.: 9200 710 801
Course ID:  17261
Tu 6:30-9:30 p.m.
Room W-215
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2008   Jay Dratler, Jr.  
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Notes and Questions on Skylink:

Is the Sky the Limit on Dictum?

1.  Like Lexmark, Skylink is an aftermarket case.  What was the primary market, what was the aftermarket, and what did Chamberlain hope to accomplish by this suit?

Was the plaintiff's business motivation in Skylink the same as in Lexmark?  Do people buy new transmitters for garage-door openers (GDOs) as often a they buy new printer toner cartridges?  If not, try to identify all of Chamberlain's motives.  Might they have had something to do with the nature and size of the market and Skylink's position as competitor?

2.  Unlike Lexmark, Skylink is not at all easy to understand as a Section 1201 case.  What was the copyrighted work?  What was the alleged "technological measure that effectively controls access" to it, as required by Section 1201(a)(2), (3)?  Are both answers clear?

There certainly had to be some sort of computer program to calculate whether a transmitted rolling code (1) fell within the "forward window" (2) fell within the "rear window" or (3) triggered resynchronization of the GDO.  Where precisely did this program reside?  Did it go anywhere when a code was received?  Did it go anywhere different depending upon whether the transmitted code was a good one or a bad one?  Didn't the program load and work exactly the same way in either case, except for the result of opening garage door or not?  If so, is the code properly characterized as an access control measure under Section 1201(a)(2) or an use-control measure under Section 1201(b)(1)?  Is a means for controlling access to a garage the same as a means for controlling access to a copyrighted work?  Did plaintiff invoke the wrong section of the statute, and, if so, what difference does/should that make?

3.  Unlike two of the opinions in Lexmark, the Skylink panel does not decide the case by applying a definition of access.  Instead, it applies another explicit requirement of the statute.  What is that requirement, where does it appear in the statute, and under which of the two anti-trafficking rule does it arise?  Could the court have used the same rationale to reach the same result under the anti-trafficking rule for use controls, Section 1201(b)?

4.  The Federal Circuit affirms summary judgment for defendant Skylink on precisely the same ground as the district court.  What is that ground, and what is the factual basis for it?  Are you comfortable that both courts reached a just and reasonable decision on the merits?

Having affirmed the district court on the very same ground, the Federal Circuit then proceeds to write a long disquisition on Section 1201, what it means, what it does, and how it should be interpreted.  How much of that disquisition is dictum, and how much is holding?  How much is cogent enough to persuade other courts?

5.  The Federal Circuit begins its long disquisition with the statement that the anti-trafficking rules "establish causes of action for liability.  They do not establish a new property right."

Certainly neither the anticircumvention rule of subsection (a)(1) nor the two anti-trafficking rules of subsections (a)(2), (3) and (b) establish new forms of intellectual property.  By its terms, subsection (a) requires a technological measure that "effectively controls access to a work protected under this title[,]" meaning Title 17 of the United States Code.  Similarly, subsection (b) by its terms requires a technological measure that "effectively protects a right of a copyright owner under this title[.]" Thus both anti-trafficking rules explicitly depend upon pre-existing protection under Title 17, including copyright.  (Title 17 contains the Copyright Act of 1976 in Chapters 1 through 8, but it also contains a number of other statutes.  What effect, if any, should these other statutes have in interpreting subsection (a)?  See Jay Dratler, Jr., Cyberlaw: Intellectual Property in the Digital Millennium § 2.05[2] (Law Journal Press, 1994), available on LEXIS : Secondary Legal : View More Sources : Law Journal Press.)

In any event, is it true that Section 1201 establishes no new property right?  Copyright does not now, and never has, controlled possession of or access to copyrighted works.  See, e.g.,United States v. Smith, 686 F.2d 234, 242, 215 U.S.P.Q. (BNA) 846 (5th Cir. 1982) (stolen-property case) ("The copyright owners not only had no interest in the tangible video cassettes that contained copies of the works, but they did not have the exclusive right to possess or authorize possession of video cassettes containing copies of the works. . . . At most, the [unlawful] distribution denied the copyright owners the privilege of controlling distribution, which is an incorporeal, intangible right"); Khandji v. Keystone Resorts Management, Inc., 140 F.R.D. 697, 700-701, 23 U.S.P.Q.2d (BNA) 1156 (D. Col. 1992) ("The Copyright Act . . . says nothing about an exclusive right to possession of a copyrighted work. Plaintiffs' counsel voluntarily sent the brochure to defense counsel without attempting in advance to secure any agreement on its return.  Plaintiffs' counsel has cited no authority for the proposition that the Copyright Act requires defense counsel to return what was given to him, nor has research uncovered any such authority.  Plaintiffs' counsel already has voluntarily provided a copy of the brochure [*701] and may not now seek assistance from this Court in recapturing it").  See also, 17 U.S.C. § 602(a)(2) (allowing importation of piratical copies purchased abroad by individual entrants into the United States, as long as the imported copies are "for the private use of the importer" and contained in his or her "personal baggage").  In light of this historical character of copyright, is it true to say that a new law prohibiting circumvention of technological controls over access provides no new right?

6.  On the way to rejecting plaintiff Chamberlain's arguments, the Skylink panel says they "create[d] numerous other problems . . . [b]eyond suggesting that Congress enacted by implication a new, highly protective alternative regime for copyrighted works[.]" It thus implicitly disparages the notion the Section 1201 marked a "sea change" in copyright enforcement.

Yet in outlining the statute's legislative history, the Skylink panel neglects to mention an important part.  Early in the legislative process, 62 copyright law professors objected to the pending bill on the ground that "liability under [Section 1201] would result from conduct separate and independent from any act of copyright infringement or any intent to promote infringement."  H. R. Rep. No. 551 (Part 2), 105th Cong., 2d Sess., 24 (July 22, 1998).  (Emphasis added.) These professors further asserted that, if passed, Section 1201 would mark "an unprecedented departure into the zone of what might be called paracopyright—an uncharted new domain of legislative provisions designed to strengthen copyright protection by regulating conduct which traditionally has fallen outside the regulatory sphere of intellectual property law." Id. at 25.  (Emphasis added.) The House Committee on Commerce responded as follows:
    "While the Committee on Commerce agrees with these distinguished professors, the Committee also recognizes that the digital environment poses a unique threat to the rights of copyright owners, and as such, necessitates protection against devices that undermine copyright interests. In contrast to the analog experience, digital technology enables pirates to reproduce and distribute perfect copies of works—at virtually no cost at all to the pirate.  As technology advances, so must our laws.  The Committee thus seeks to protect the interests of copyright owners in the digital environment, while ensuring that copyright law remain technology neutral.  Hence, the Committee has removed the anti-circumvention provisions from Title 17, and established them as free-standing provisions of law."
Id. at 25.  (Emphasis added.)

Thus the principal committee involved in drafting Section 1201 explicitly and emphatically agreed with the objecting professors that the new law would go far beyond copyright and create rights "separate and independent from any act of copyright infringement or any intent to promote infringement[.]" It then passed the bill before it as part of a new, separate, noncopyright law in order to emphasize that very point.

Congress did not carry through the Committee's intention to place Section 1201 outside Title 17 entirely, but it did enact Section 1201 in a chapter of Title 17 apart from the copyright act, thereby reflecting the same intention: to separate Section 1201 from copyright law.  See id. at 22:
    "[The bill] in other words, is about much more than intellectual property.  It defines whether consumers and businesses may engage in certain conduct, or use certain devices, in the course of transacting electronic commerce.  Indeed, many of these rules may determine the extent to which electronic commerce realizes its potential."
Furthermore, two Congressmen "dissented" in part from the House Report because, in their view, the bill's departure from traditional copyright law was too radical and would impinge on fair use.  See id. at 86 (Additional Views of Scott Klug and Rick Boucher).  Does all this suggest that Congress really intended Section 1201 not to alter "business as usual" in copyright law, or did the Federal Circuit panel indulging in wishful thinking?

7.   The Federal Circuit reads Section 1201(c)(1) as incorporating copyright principles into Section 1201(a).  Uncharacteristically for Section 1201, subsection (c)(1) is a clear and simple declarative sentence.  It says that "[n]othing in this section [1201] shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use, under this title."  (Emphasis added.)   Does this sentence import copyright principles into the separate, new causes of action that Section 1201, or does it preserve copyright law unchanged in spite of Section 1201's new rights?  Did the Federal Circuit read it backwards and ignore the negative?

8.  Toward the end of its opinion, the Federal Circuit panel appears to conflate all of Section 1201 with copyright law:
    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 [*1203] may create some uncertainty and consume some judicial resources, it is the only meaningful reading of the statute."
Is this conclusion consistent with the literal text of both subsections (a) and (b)?

Take a close look at the operative portions of subsection (a)—i.e., those that prescribe the anticircumvention rule and the anti-trafficking rule for use controls— preferably with the aid of our computer.  Does the word "copyright" appear in them?  If so, in what context?  Does reference to infringement?

Now compare Section 1202(b), whose postamble specifically refers to facilitating infringement.  If Congress meant Section 1201(a) to apply only to acts that facilitate infringement, why didn't it say so, as in Section 1202(b)?   Why didn't it refer explicitly the "a right of a copyright owner," as it did in the very next subsection, namely Section 1201(b)?  Does dearth of references to copyright and infringement in subsection (a) suggest that rules pertaining to controls on access—an activity that copyright does not now address and never addressed—are something new and unrelated to copyright?

9.  But what about subsection (b)?  According to its explicit text, the technological measures that it addresses protect "a right of a copyright owner under this title in a work or a portion thereof[.]" 17 U.S.C. § 1201(b)(1)(A), (B), (C), (2)(B).  Do those repeated, explicit references to copyright import copyright principles, such as fair use, into subsection (b)?  If so, does the absence of any similar reference in subsection (a) support the Federal Circuit panel's broad conclusion?  Did Congress suggest by its language that there is a crucial distinction between subsection (a) and subsection (b) with regard to the principles of copyright?  See Jay Dratler, Jr., Cyberlaw: Intellectual Property in the Digital Millennium § 2.07 (Law Journal Press, 1994), available on LEXIS: Secondary Legal : View More Sources : Law Journal Press.

10.  At one point in its opinion, the Skylink panel asserts that Section 1201(a), if interpreted other than as incorporating copyright principles not expressed in its text, would be so irrational as to fail the lax constitutional test of rationality for copyright legislation confirmed in Eldred v. Ashcroft.  See Eldred v. Ashcroft, 537 U.S. 186, 205 n.10, 123 S. Ct. 769, 154 L.Ed.2d 683, 65 U.S.P.Q.2d (BNA) 1225 (2003) ("Congress' exercise of its Copyright Clause authority must be rational").  Specifically, the panel states that plaintiff 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."

Yet in adopting Section 1201, did Congress really assume that it would encourage copyright holders to withhold their protected works from the public?  Although no single passage quite captures the entire message, the committee reports as a whole reveal a very different plan.  Congress seems to have assumed that, by reducing fear of untamed piracy on the Internet, Section 1201 would encourage copyright owners to make their property widely available in digital form.  The Senate Report puts it most succinctly:
    "Due to the ease with which digital works can be copied and distributed worldwide virtually instantaneously, copyright owners will hesitate to make their works readily available on the Internet without reasonable assurance that they will be protected against massive piracy.  [This legislation] . . . . will facilitate making available quickly and conveniently via the Internet the movies, music, software, and literary works that are the fruit of American creative genius.  It will also encourage the continued growth of the existing off-line global marketplace for copyrighted works in digital format by setting strong international copyright standards."
See S. Rep. No. 105-190, 105th Cong., 2d Sess. 8 (May 11, 1998).  See also, H. R. Rep. No. 551 (Part 2), 105th Cong., 2d Sess., 22 (July 22, 1998).  Furthermore, Congress also appears to have assumed that, in conformity with the economic law of supply and demand, a large, worldwide digital market would produce low prices for access, making copyrighted works widely available for fair use and other permissible uses.  See H. R. Rep. No. 551 (Part 2), supra, at 23.

Is there anything irrational about these assumptions?  The advent of commercial, 99 cent-per-song musical Websites has created a low-cost, convenient and legitimate means of access to copyrighted popular music, along with choices never before available to legitimate users of music: the possibility of gaining access to a single song without purchasing an entire album at a higher price.  See generally Jeanne Anne Naujeck, "Nashville labels gear up to seek digital fortunes," The Tennessean, Jan. 13, 2005 at 1A.  Another example of the economic benefits of the large legitimate markets that the Internet makes possible—distribution of non-mainstream movies on DVDs marketed over the Internet—was discussed in the press in early 2005.  See Lee Gomes, "Web Allows Fans to See Wide Variety of Movies That Were Hard to Get," Wall St. J., January 31, 2005 at B1, col. (reporting on Websites run by Netflix and Blockbuster, which offer rental DVDs of non-mainstream foreign and "small" movies that had never before been available in that medium).  Do these developments suggest that Congress was "irrational" in assuming that legally reinforced technological protection against digital piracy on the Internet would motivate the creation of a wide market in digital works for everyone's benefit?

11.  Although the Skylink panel declines to resolve the issue of fair use (see footnote 5, the court's footnote 14), it hints in several places that the rules of Section 1201 are, or ought to be, subject to fair use.  But is that so?  Is there any textual basis for importing concepts of fair use into subsection (a)?

Subsection (b), on the other hand contains several explicit references to "a right of a copyright owner" in both its operative provisions, 17 U.S.C. § 1201(b)(1)(A), (B), (C), and in a definition, 17 U.S.C. § 1201(b)(2)(B).  A copyright holder does not have the right to prohibit fair use, does she?  See 17 U.S.C. § 107 (in part: "Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work . . . is not an infringement of copyright"); 17 U.S.C. § 106 (prescribing copyright owner's exclusive rights "[s]ubject to sections 107 through 122"); 17 U.S.C. § 501(a) (defining infringement as violation of "the exclusive rights of the copyright owner as provided by sections 106 through 122").

But if subsection (b) imports a fair use defense in its multiple textual references to "a right of a copyright holder[,"] how should that defense be construed and applied?  A defendant in a subsection (b) case is not an alleged infringer, but a provider of technology to those who may infringe.  By what standard should a defendant's subsection (b) liability be judged, for example, when some users of that technology infringe and others' uses are fair?   See Dratler, supra, § 2.07[2][b].
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