“It’s Like Déjà Vu All Over Again”

By Dan McPheeters and Michael Stein

Yesterday (presuming you read serials in order), we looked at the lines drawn in the private sector between supporters and opponents of the now-tabled Stop Online Piracy Act. We posited possible overriding concerns for each side, and wondered whether we might have seen this fight once before – like that time when a group of content providers sued a tiny search-engine company over a home-video website it had purchased the year before. All kidding aside, the titanic Viacom v. YouTube lawsuit was in many ways the prequel to the current debate, and the 2010 opinion denying the plaintiffs’ claims may very well have been the catalyst for advancing the legislation now known as SOPA.  Continue reading

“In the Blue Corner, Our Challenger…”

By Dan McPheeters and Michael Stein

In our last post, we explored an element of SOPA that served as a point of division between supporters and opponents of the bill. Today, we look at the dynamics of the fight and the driving concerns of each side. Much of this may be common knowledge by now, but it helps set up our next post, where we explore SOPA in the context of Viacom v. Youtube and try to determine whether this was a unique fight or merely another round of what could be a long war between entrenched content developers and online distributors.

At the legislative level, at least initially, SOPA was surprisingly bi-partisan on both sides of the issue. With Rep. Lamar Smith (R) and John Conyers (D) on one side and Minority Leader Pelosi (D) and Rep. Issa (R) on the other, this was far from the typical controversial bill. Indeed, very little was made of SOPA on a partisan or political level that would illustrate some greater principle (except, as some have said, that we now have more evidence that Congress fails to understand the internet).

On the private sector side, however, the differences were easy to see. On the one hand, the MPAA and RIAA reprised their roles from the mid-2000’s as policemen of content piracy and portrayed the bill as being necessary to preserve an American industry and jobs. They were backed by the House Judiciary Committee and its Chairman, Lamar Smith, who issued a statement maintaining support for the bill the same day last week thatopponents, such as Wikipedia, staged the now-famous internet blackout. Continue reading

SOPA is dead! (What, no longer newsworthy?)

By Dan McPheeters and Michael Stein

Now that the immediate reactions and analyses have died down, we thought we could dedicate the inaugural series of the revamped Stein McEwen “blawg” to taking stock of the SOPA debate and explore what the future may look like for online regulation viz. piracy.

The opposition to the Stop Online Piracy Act (“SOPA”), culminating in the internet blackout last Wednesday, coalesced around the idea that the bill would kill the internet as we know it (see, e.g., David Post’s series at the Volokh Conspiracy). Supporters, on the other hand, asserted that the bill “only target(ed) foreign websites that are primarily dedicated to illegal activity.” As is often the case in politics and PR, both statements are true.

While SOPA was primarily aimed at foreign websites directed to US users, the enforcement provision allowed the Government to obtain an injunction against websites such as Google and Huffington Post in order to force their compliance with the Government’s quest to purge the internet of the offending material. Here is where things became ugly – because the targets of SOPA are foreign persons/companies, it is difficult to serve them with process or otherwise obtain jurisdiction over them. Any attempt by the Dept. of Justice to file a suit is likely going to be ex parte, yet that is fully contemplated by the statute; the AG is specifically authorized to “commence an in rem action against a foreign infringing site or the foreign domain name used by such site” in the event the person behind the alleged infringement cannot be found after a “good faith effort.” (SOPA §102(b)(2)). Continue reading

Federal Circuit Finds No Waiver of Sovereign Immunity under DMCA

In Blueport Co. v. United States, 533 F.3d 1374, 87 USPQ2d 1512 (Fed. Cir. 2008), Mark Davenport, a Technical Sergeant with the Air Force, worked with the Air Force’s Manpower Data System (MDS).  Through working with the MDS, Davenport concluded that the software used to run the MDS program was inefficient and began to seek ways of improving the software.  Davenport sought training in computer programming from the Air Force, but was denied.  As such, Davenport learned how to program on his own time, and subsequently wrote a new program called “the AUMD” program, also on his own time at his home.

Davenport used the AUMD program at work and began sharing it with coworkers.  Based on his experiences using the AUMD program at work, Davenport made changes from time to time to improve the program.  At no time did Davenport bring the source code to work or copy it onto Air Force computers.

The AUMD program began to catch on, and Davenport shared it with other colleagues by posting it on a page in the Air Force intranet.  He continued to modify the AUMD program, and eventually added an expiration date feature where users had to download a new version of the program whenever the old one expired.

Davenport gave a presentation to senior Air Force personnel and convinced them of the usefulness of the AUMD program.  Davenport’s performance evaluations marked him as the go-to guy for troubleshooting with the MDS and recommended an immediate promotion.

The Air Force eventually determined that it was too reliant on Davenport for access to the AUMD program and asked him to turn over the source code.  When he refused, his superiors at the Air Force threatened him with a demotion and a pay cut and removed him from the MDS advisory board.  Davenport then assigned his rights in the AUMD program to Blueport, the plaintiff.

Blueport attempted to negotiate a license with the Air Force, but was unable to reach an agreement.  The Air Force contracted with SAIC to recreate the AUMD program and to modify the existing AUMD program to remove the expiration date.  Blueport brought claims against the Air Force alleging copyright infringement and a violation of the DMCA in the Court of Federal Claims.  The Court of Federal Claims dismissed the actions for lack of jurisdiction on the ground that the Government had not waived its sovereign immunity for any of the claims.  Blueport appealed to the Federal Circuit.

On appeal, the Federal Circuit considered the scope and application of the Government’s waiver of sovereign immunity for copyright infringement under 28 U.S.C. § 1498(b).  The Court also considered whether the Government has waived its sovereign immunity for claims brought under the DMCA.  Blueport at 5-6.

In making its determinations, the Federal Circuit kept in mind two long-established principles of sovereign immunity.

First, “the United States, as [a] sovereign, ‘is immune from suit save as it consents to be sued . . . and the terms of its consent to be sued in any court define that court’s jurisdiction to entertain the suit.’” United States v. Testan, 424 U.S. 392, 953 (1976) (quoting United States v. Sherwood, 312 U.S. 584, 586 (1941)).

Second, “a waiver of the Government’s sovereign immunity will be strictly construed, in terms of its scope, in favor of the sovereign.” Lane v. Pena, 518 U.S. 187, 192 (1996).

Id.  In summary, the Federal Circuit noted that the United States is immune from suit except for where it waives its immunity, and any such waivers are to be strictly read and construed in favor of the sovereign.

Sovereign Immunity for Copyright Infringement Does Not Extend to Infringement Caused By Author While Government Employee

The Federal Circuit held that 28 U.S.C. § 1498(b) grants copyright owners a right of action for copyright infringement against the United States.  Further, Government Employees are specifically allowed to bring such suits, subject to three provisos.  The first proviso denies a right of action to a Government employee who “was in a position to order, influence, or induce use of the copyrighted work by the Government.”  28 U.S.C. § 1498(b).  The second proviso confers no right of action “with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee.”  Id.  The third proviso confers no right of action “with respect to any copyrighted work . . . in the preparation of which Government time, material, or facilities were used.”  Id.  See Blueport at 6-7.

The Court of Federal Claims held that Blueport’s infringement claim was separately barred by all three provisos.  On appeal, Blueport argued that the provisos were affirmative defenses, that the Government had the burden to show that the claims were barred, and that their claim did not fall under any of the provisos.  Blueport at 7.

Turning to the first argument, the Federal Circuit recognized that whether a limitation is jurisdictional or an affirmative defense depends on the language and the content of the statute at issue.  The Federal Circuit found that the text and structure of 28 U.S.C. § 1498(b) demonstrated that the three provisos limiting the waiver of sovereign immunity were intended to be jurisdictional limitations.  First, the fact that the provisos were included in the same subsection as the waiver suggested that they defined the scope of the waiver.  Second, the provisos were phrased in terms of withholding a waiver for certain rights of action.  Accordingly, the Federal Circuit interpreted the inclusion of the provisos as carving out three classes of copyright violations that would not be covered by the waiver of sovereign immunity.  This reading was in line with the principle that the waiver of sovereign immunity should be interpreted in favor of the sovereign.  Blueport at 8-10.

Turning to the second argument, the Federal Circuit held that a party seeking the benefit of the courts has the burden of establishing jurisdiction.  Blueport at 11 (citing McNutt v. Gen. Motors Acceptance Corp., 298 U.S. 178, 189 (1936)).  The Federal Circuit was not persuaded by the cases introduced by Blueport where other circuits had read a requirement that the burden rested on the Government.  This was because the cases cited were limited to the Federal Torts Claim Act and the circuits were undecided on the issue.

Turning to the third argument, the Federal Circuit agreed with the CFC that Blueport’s claim was barred by the first proviso (“order, influence, or induce”) and did not address the other two provisos.  The Federal Circuit found that Davenport was in a position to influence and induce his coworkers at the MDS to use his AUMD program.  He distributed and promoted the program within the Air Force.  Further, the Air Force’s use after Davenport was removed from the advisory board was also found to be guarded by sovereign immunity.  This is because the Federal Circuit saw nothing in 28 U.S.C. § 1498(b) to suggest that a party who was in a position to influence the Government’s use of copyrighted work can later bring a claim for continued use after he lost his position of influence.  Blueport at 12.

Thus, the Federal Circuit found that Blueport could not bring a claim of copyright infringement against the Government because the Government had not waived its sovereign immunity.

Sovereign Immunity under the DMCA

The Digital Millennium Copyright Act of 1998 (“DMCA”) provides additional liability for copyright infringement.  Pub. L. No. 105-304, 112 Stat. 2860 (Oct. 28, 1998), codified at 17 U.S.C. § 1201, et seq. Blueport brought claims under the DMCA against the Government for use of their copyrighted software.  The CFC dismissed the claims on the ground that the Government has not waived sovereign immunity for DMCA claims.  The Federal Circuit affirmed.

In affirming the decision, the Federal Circuit held that the “DMCA itself contains no express waiver of sovereign immunity. Indeed, the substantive prohibitions of the DMCA refer to individual persons, not the Government.”  Blueport at 13.  Blueport argued that a waiver should be implied, but the Court recognized that “it is well-established that a waiver of sovereign immunity ‘cannot be implied but must be unequivocally expressed.’ ” Blueport at 13 (citing United States v. King, 395 U.S. 1, 4 (1969)).

Blueport further argued that the Tucker Act, 28 U.S.C. § 1491(a)(1) provided a general waiver of sovereignty.  The Federal Circuit found that the Tucker Act served to provide jurisdiction to the Court of Federal Claims over any claim arising under a law that creates the right to money damages from the Government, and thus did not grant the waiver of sovereignty necessary for Blueport to bring their claim.  Specifically, the Federal Circuit held that “the DMCA does not contain an express or implied right to recover money-damages from the Government.”  Blueport at 15.

Blueport’s final argument was that the waiver of sovereignty under copyright infringement was sufficient to waive sovereignty under the DMCA.  The Federal Circuit rejected this argument, pointing out that the DMCA created new claims for liability that are separate and distinct from copyright infringement.  Blueport at 15-16.  As such, the Federal Circuit held that the DMCA does not provide an alternative grounds for relief outside of any claims otherwise viable under 28 U.S.C. § 1498.


Significance to Government Claimants

As similarly found in Zoltek Corp. v. United States, 442 F.3d 1345 (Fed. Cir. 2006), Blueport confirms the narrow construction afforded any waiver of sovereign immunity by the Government.  Thus, where it is believed that the Government, or a contractor, is infringing intellectual property, the intellectual property owner needs to ensure that any claim is made clearly within the bounds of an explicit waiver for sovereign immunity.  Additionally, where such explicit waiver is not found and the Government is not liable for infringement, a contractor needs to be aware that there is the possibility that the contractor will be liable for such work.  Additional discussion on this topic can be found in the Intellectual Property In Government Contracts: Protecting And Enforcing IP At The State And Federal Level, which is slated for release in early 2009 by Oxford University Press.

Copyright Office Issues New Set of DMCA Exemptions in Third Triennial Rulemaking

ByDoug Agopsowicz


On November 27, 2006, the Librarian of Congress, on the recommendation of the Register of Copyrights, announced the classes of works subject to the exemption from the Digital Millennium Copyright Act (“DMCA”).  The announcement marked the third time that the Librarian of Congress granted a series of exemptions to the DMCA.  This third rulemaking resulted in more exemptions being granted than the number granted in the first two rulemakings of 2000 and 2003.  This third rulemaking also marks a significant change in the way in which the Library of Congress defines a “class of works” exempt from the DMCA, by defining a “class of works” based at least partially on the intended use of the works in addition to intrinsic characteristics of the works. 


The Digital Millennium Copyright Act (“DMCA”), Pub. L. 105-304 (1998), amended Title 17 of the United States Code to add a new chapter 12.  One of the provisions of chapter 12 prohibits circumvention of access control technologies employed by or on behalf of copyright owners to protect their works.  Specifically, subsection 1201(a)(1)(A) provides, inter alia, that “No person shall circumvent a technological protection measure that effectively controls access to a work protected under this title.” 

Subparagraph (B) of subsection 1201(a)(1) provides a safety valve against the sweeping nature of subsection (A).  Specifically, subparagraph (B) provides that the prohibition against circumvention “shall not apply to persons who are users of a copyrighted work which is in a particular class of works, if such persons are, or are likely to be in the succeeding 3-year period, adversely affected by virtue of such prohibition in their ability to make noninfringing uses of that particular class of works under this title” as determined in this rulemaking.  This prohibition against circumvention became effective two years after the date of enactment, on October 28, 2000. 


In the first rulemaking, the Librarian of Congress exempted two classes of works from 17 U.S.C. §1201(a)(1)(A).  The two exempted classes included “compilations consisting of lists of websites blocked by filtering software applications” and “literary works, including computer programs and databases, protected by access control mechanisms that fail to permit access because of malfunction, damage, or obsoleteness.”  Explaining why the vast majority of proposed exemptions were recommended to be rejected, the Register noted that “proponents attempted to define classes of works by reference to the intended uses to be made of the works, or the intended user”, and that “for almost all the proposed classes, the proponents failed to demonstrate that there have been or are about to be adverse effects on noninfringing uses that have ‘distinct, verifiable, and measurable impacts.’”[1]

In the recommendation, the Register explained that defining a “class” of works meant defining the works based on intrinsic characteristics of the works themselves.  The Register reasoned that “the view that a ‘class’ of works can be defined in terms of the status of the user or the nature of the intended use appears to be untenable” because the statutory language appeared to require that “the Librarian identify a ‘class of works’ based upon attributes of the works themselves”, because “the dictionary defines ‘class’ as ‘a group, set or kind sharing common attributes’”, and because “the term is used throughout the copyright law to refer to a work of authorship, rather than to a material object on which the work appears or to the readers or users of the work”.[2]  Nevertheless, the Register admitted that “the statutory language is arguably ambiguous.”[3]


In the second rulemaking, the Librarian of Congress doubled the number of classes exempted from the previous rulemaking, exempting four classes of works.  Two of the four exempted were substantially similar to the two classes exempted in the first rulemaking of 2000.  The two new classes included “computer programs and video games distributed in formats that have become obsolete and which require the original media or hardware as a condition of access” and “literary works distributed in ebook format when all existing ebook editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling of the ebook’s read-aloud function and that prevent the enabling of screen readers to render the text into a specialized format.”  The Register again recommended rejecting the vast majority of proposed exemptions proposed in 2003 for substantially the same reasons relied upon in 2000, namely because “proponents failed to propose a true ‘particular class of copyrighted works’ and failed to demonstrate that users of such works have been or will be adversely affected in their ability to make noninfringing uses of those works.”[4]  

The Register once again recommended that a class of works be defined based upon “attributes of the works themselves”, relying on the same arguments used in the 2000 recommendation.  The Register stated that the class might be “defined in part by reference to the medium on which the works are distributed, or even to the access control measures applied to them.”[5]  The Register emphasized, however, that “it is not permissible to classify a work by reference to the type of user or use.”[6] 


In the third rulemaking, the Librarian of Congress exempted six classes of works.  The Librarian granted an exemption for one class of works for audiovisual works included in the educational library of a college or university’s film or media studies department, when used for the purpose of making compilations.  The Librarian granted two more exemptions related to obsolete technology, included one exemption directed towards archived versions of obsolete computer programs and video games, and another exemption directed towards obsolete dongle technology.  The Librarian granted a fourth exemption for ebooks which closely resembled the exemption granted in 2003, a fifth exemption for computer programs in the form of firmware used to lawfully connect to a wireless telephone communication network, and a sixth exemption for sound recordings distributed in compact disc (CD) format, when used for the purpose of good faith testing, investigating, or correcting security flaws and vulnerabilities. 

As indicated by these six exemptions, the Register departed from the methodology used in the previous two rulemaking proceedings and recommended defining a “class of works” based at least somewhat on the use of the proposed class of works.  Four of the six classes of works granted in the third rulemaking (other than the dongle and ebook exemptions) are defined at least partially by the intended use of the works.  Defending this departure from the previous manner of defining classes of works, the Register explained: “based on the proposals made in the past rulemaking proceedings, proponents had failed to satisfy certain threshold requirements that would have necessitated consideration of whether a class that was primarily defined by reference to a section 102 category of works could be further narrowed by reference to the user or use.”[7]  The Register clarified, however, that classes of works still should not be initially defined by reference to a particular type of use or user, but rather, should be refined by such, when supported by sufficient evidence.[8]


The impact of these six exemptions should be significant within the industries which they relate to.  For example, the first exemption grants film professors the right to circumvent technological protection measures[9] to use audiovisual works included in the educational library of a college or university’s film or media studies department for the purpose of making compilations.  This first exemption  should play a key role in enabling film professors across the country to use DVD film compilations in the classroom.  Accordingly, this first exemption should save valuable classroom time (otherwise spent loading and unloading DVDs) for film professors across the country, improving the efficiency of film and media classes.

The second exemption, granting an exemption to computer programs and video games distributed in obsolete formats and that require the original media or hardware as a condition of access, could potentially prove valuable for companies looking to archive old software.  The second exemption arose from the need of the Internet Archive, a nonprofit digital library which archives old software and video games, to emulate floppy disk drives in order to “migrate” obsolete software and video games from one hard drive to another.  Manufacturers designed floppy disks with “original-only” access controls which prevented access to the contents of the disk unless the disk was loaded into the original corresponding disk drive.  Since storage units inevitably begin to deteriorate, the Internet Archive needed to migrate the contents of these disks from one storage unit to another, in order to verify the authenticity of the migrated version.[10]

Without the recently granted exemption, this emulation triggered DMCA liability, since the emulation of disk drives to circumvent original-only access control measures constituted a circumvention of “technological protection measures,” as prohibited by §1201(a)(1)(A).  Now, however, this emulation is exempted from the scope of DMCA liability.  Thus, under this new exemption, companies may emulate technological protection measures, such as floppy disk drives, in order to access the contents of computer programs and video games, assuming that the use is for archival purposes, and that the computer programs and video games are distributed in obsolete[11] formats and require the original media or hardware as a condition of access.

One significant impact of these new exemptions is the limiting effect that the “use-based” definitions have on the four classes of works partially defined by use.  In the previous rulemakings, the Register recommended and the Librarian granted exemptions for classes of works which were defined based upon intrinsic attributes of the works themselves.  To fall under the protection of these previous exemptions, as long as a user used a copyrighted work which satisfied the intrinsic attributes according to the class definition (e.g., “computer programs and video games distributed in obsolete formats and that require the original media or hardware as a condition of access”), any noninfringing use of the copyrighted work fell outside of the scope of DMCA liability. 

Now, however, protection is limited to works which not only have the intrinsic attributes as defined by the class definition (e.g., “computer programs and video games distributed in obsolete formats and that require the original media or hardware as a condition of access”), but which are also used in the specific manner defined by the class definition (e.g., “when circumvention is accomplished for the purpose of preservation or archival reproduction of published digital works by a library or archive”).  Thus, by refining the definitions of classes of works based on specific intended uses, these new exemptions are more narrowly circumscribed than previous exemptions.   


The six exemptions granted in the third triennial rulemaking reflect a willingness on the part of the Library of Congress to carve out more exemptions to the DMCA than in the previous two rulemakings.  On the other hand, by refining the definitions of classes of works based in part upon the intended uses of the works, many future exemptions may be significantly narrower than the exemptions granted in the first and second rulemaking proceedings.  These six exemptions should prove valuable tools for the specific industries to which they relate. 

[1] Federal Register, Vol. 65, No. 209, Friday, October 27, 2000, Rules and Regulations, p. 64562

[2] Id. at 64559

[3] Id.

[4] Recommendation of the Register of Copyrights, October 27, 2004, p. 82

[5] Id. at 12.

[6] Id. at 13.

[7] Recommendation of the Register of Copyrights, November 17, 2006, p. 17.

[8] Id.

[9] The primary technological protection measure found in DVDs is the Content Scrambling System (“CSS), which encrypts the content of the DVD so that only authorized DVD players with authorized decryption devices may access the contents.  See Recommendation of the Register of Copyrights, November 17, 2006, p. 12.

[10] Recommendation of the Register of Copyrights, November 17, 2006, p. 27-28.

[11] Obsolete is defined as “no longer manufactured or…no longer reasonably available in the commercial marketplace.” Id. at 25. 

Digital Millennium Copyright Act: Lexmark Reversed on Digital Millennium Copyright Act (DMCA) Since Unprotected Program Is Not Subject to DMCA Protection and Since Encryption Protected Program Was Not Copyrightable

Lexmark International, Inc. (hereinafter Lexmark) is a manufacturer of printers and printer cartridges.  In order to prevent unauthorized re-filling of the printer cartridges, Lexmark has been attempting to enforce its rights using a combination of actions, including one well publicized action based upon the DMCA.  Lexmark brought suit against Static Control Components, Inc. (hereinafter SCC) in the Eastern District of Kentucky and was initially granted a preliminary injunction preventing SCC from selling the chip.  Among the grounds supporting the preliminary injunction, the District Court found that Lexmark was likely to succeed on its claim that SCC’s chip was in violation of 17 USC 1201(a)(2) of the DMCA.  On appeal to the Court of Appeals for the Sixth Circuit, the District Court was reversed on the DMCA claim. Continue reading


Genuine issues of fact as to whether consumers are authorized to use defendant’s transmitters to operate plaintiff’s garage door openers by circumventing “rolling code” technology in plaintiff’s computer program preclude summary judgment that defendant is liable for violation of anti-circumvention provisions of Digital Millennium Copyright Act, 17 U.S.C. §1201(a).  (Chamberlain Group Inc. v. Skylink Technologies Inc., 68 USPQ2d 1009, DC NIll, 8/29/03).