The (in my opinion, unfortunate) purpose-bound approach to decompilation, adopted by the EU Software Directive, seems to have inspired the legislators on the other side of the Atlantic.206 Indeed, according to
some commentators:207
A recently prevalent assumption that ‘to better promote the industry, greater protection of the industry’s products are necessary’ has led to most striking legislative actions: the Digital Millennium Copyright Act (DMCA) and the Uniform Computer Information Transactions Act (UCITA). As a result of the current interplay between copyright law and this legislation, uncertainty with respect to reverse engineering has been compounded. These laws undermine the copyright balance by unreasonably narrowing the scope of ‘fair use’ rights and likely bringing about anticompetitive effects in the market. For example, anti- circumvention provisions within legislation are not subject to the well-established fair use copyright defense. Thus, even legitimate reverse engineering, other than that performed for interoperability
203 Obviously ideas and technical rules are “derived” from the reverse engineering process, but they are not “derivative works” in
the copyright law sense. In a similar way, a critical essay about a books must “derive” from the reading of the book, but it is also a completely new original intellectual creation and not a derivative work.
204 The clean room procedure may also be usefully implemented in order to credibly exclude third parties from accessing the
decompiled code, which may be useful in order to fully respects the requirements of article 6 of the European Software Directive.
205 Nevertheless, several open source projects adopted other procedures and complex auditing systems in order to achieve similar
results (see the case of ReactOS, described above).
206 On a comparative perspective, I suggest that this is an interesting evidence of the fact that the emulation of copyright norms
does not always flow from the US to the UE, but there is – more likely – a simple race to imitate protectionist approaches.
207 SEUNGWOO SON, Can Black Dot (Shrinkwrap) Licenses Override Federal Reverse Engineering Rights?: The Relationship Between Copyright, Contract, and Antitrust Laws, 6 Tulane Journal of Technology and Intellectual Property, 63 (2004), p. 64.
purposes, which circumvents a security measure solely for the purposes of accessing uncopyrighted functional elements would be condemned.
In other words, US law has implemented a “purpose-bound” interoperability exception in the field of the legal protection of technological measures (of protection of copyrighted content208). Indeed, there are just
seven exemptions to Section 1201(a)(1)(A)209 of the DMCA210 and the one concerning interoperability is
strikingly similar to article 6 of the European Software Directive:
(f) Reverse Engineering- (1) Notwithstanding the provisions of subsection (a)(1)(A), a person who has lawfully obtained the right to use a copy of a computer program may circumvent a technological measure that effectively controls access to a particular portion of that program for the sole purpose of identifying and analyzing those elements of the program that are necessary to achieve interoperability of an independently created computer program with other programs, and that have not previously been readily available to the person engaging in the circumvention, to the extent any such acts of identification and analysis do not constitute infringement under this title.
(2) Notwithstanding the provisions of subsections (a)(2) and (b), a person may develop and employ technological means to circumvent a technological measure, or to circumvent protection afforded by a technological measure, in order to enable the identification and analysis under paragraph (1), or for the purpose of enabling interoperability of an independently created computer program with other programs, if such means are necessary to achieve such interoperability, to the extent that doing so does not constitute infringement under this title.
(3) The information acquired through the acts permitted under paragraph (1), and the means permitted under paragraph (2), may be made available to others if the person referred to in paragraph (1) or (2), as the case may be, provides such information or means solely for the purpose of enabling interoperability of an independently created computer program with other programs, and to the extent that doing so does not constitute infringement under this title or violate applicable law other than this section.
Quite interestingly, the previous provisions contained in the DMCA – which, in the field of interoperability look to have been copied and pasted from the European Software Directive – have been described by several authors as “giv[ing] rise to a ‘paracopyright,’ in which the new access right is designated by a closed set of exemptions.” In this new legal setting, even cases in which the “post-circumvention behavior is not a copyright infringement, it might still violate the Anti-Circumventing rule. ”211 And that seems to be hardly
acceptable to several American scholars, since “[r]ather than target[ing] the small subsection of copying that is infringement, it targets all copying.”212 However, readers will notice that this “paracopyright” is precisely what
the European Software Directive established about decompilation in 1992.
Moreover, “[t]he DMCA is overbroad in that it prohibits the rights of manufacturers to address non- computer software based interoperability issues”.213 In particular, a problematic case is the one in which
208 To be rigorous, one should qualify this statement: technological measures of protection are actually able to protect any kind of
content, copyrighted, copyrightable or not protected at all. In fact, much of the criticisms to the DMCA and similar legislative acts implementing the 1996 WIPO Copyright Treaty (as the Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society) pivoting around exactly the fact that technological measures of protection do not (and cannot) respect the boundaries of copyright law (for instance, allowing fair uses and other exceptions and limitations). These topics are largely outside the scope of the present paper. However, as an aside, I would like to mention that I personally sympathize with these arguments, but I think that it should also be recognized that – as long as content can be accessed – no measures of protection could prevent users from deriving inspiration from a work or even quoting or reusing it (maybe just in the form of an analogical copy). For instance, critiques of the DMCA mentioning the absence of an exception for “parody” or “quotations” are simply overbroad: as long as a book or movie can be read or watched a parody can be created and notes to quote a given passage can be taken. And surely no digital copying is needed (not even for quotation, in the form in which it is usually understood). Obviously, much more serious problems could arise in other cases (for some compelling ones, see JOSHUA SCHWARTZ,
Thinking Outside the Pandora's Box: Why the DMCA Is Unconstitutional under Article I, § 8 of the U.S. Constitution, 10 Journal of
Technology Law and Policy, 93 (2005), in particular at pp. 130—135 for issues involving hardware interoperability).
209 “Violations regarding circumvention of technological measures- (1)(A) No person shall circumvent a technological measure
that effectively controls access to a work protected under this title.”
210 See DAVIS, The DMCA Interoperability Exceptions, . See also ANDREA OTTOLIA & DAN WIELSCH, Mapping the Information Environment: Legal Aspects of Modularization and Digitalization, 6 Yale Journal of Law and Technology, 174 (2004), in particular text
accompanying footnote 311—312. The exceptions concern: “(a) Non-profit ‘shopping’ privilege, (b) legitimate law enforcement/national security, (c) necessary program interoperability, (d) legitimate encryption research, (e) protection of minors toward harmful material, (f) protection against collection of personal data (surveillance without notice), and (g) computer security testing.”
211 OTTOLIA & WIELSCH, Legal Aspects of Modularization and Digitalization. 212 SCHWARTZ, Why the DMCA Is Unconstitutional, p. 96.
developers want to achieve interoperability with a certain file format or method of transmission or any other protocol “enveloping content” (i.e. any other technology which is not meant just to generate functional effects, but also to “vehicle” or “contain” aesthetic creations). In reality, whenever it is possible to use the information obtained through interoperability also to violate copyright on protected content, then the enjoyment of the interoperability exception becomes very much disputable. And reverse engineering a technological measure of protection – in particular if the information obtained is made available to the public (for instance, publishing the source code of the resulting software) – is an activity which is very likely to have potential infringing uses (or – at least – to significantly facilitate them), as in the following example:
In Universal City Studios v. Corley,214 a suit brought by eight motion picture studios (and not even one
private citizen copyright holder), plaintiffs sued a consumer who cracked the Content Scrambling System for DVDs and reverse engineered a program that would allow users to play DVDs on systems using the Linux operating system. The Defendant argued that he was specifically exempted by the DMCA exception that allows reverse engineering for computer system interoperability. However the Second Circuit held that this defense was not good enough because the same technology could be used by a non-Linux user to circumvent technological copyright protections. The technology had the possibility of being misused with respect to a protected work, so the circuit court held that the technology was proscribed.215 […]
The Corley court’s bottom line was, if technology falls under a DMCA exception and has the added effect of circumventing a technological measure, then two provisions of the DMCA are in conflict, and preventing the violation under § 1201(a) takes priority.216
Given these precedents, it becomes natural to ask oneself whether it is possible to use the DMCA to keep full control on technologies such as the Trusted Computing Platform and avoid “unofficial” compatibility of any kind, de facto foreclosing the software market to several small producers, with particular concern about open source projects. The aforementioned Trusted Computing Platform uses a combination of hardware keys and identifiers in order to make sure that no malicious software is run on a given computer. Some commentators in the open source community think that it may be easily misused in order to foreclose interoperability and asked Microsoft to pledge not to do so,217 in analogy with what the software house did
with its Open Specification Promise.218 Similar fears should also be mitigated by the behavior of some US
courts. In principle, the anti-copying provisions of the DMCA could be (ab)used in order to reinforce market power and foreclose complementary markets, but US courts demonstrated to be able to resist to similar (mis)uses. In particular, in 2004, the Sixth Circuit decided the Lexmark v. SCC case.219 In that case, Lexmark
failed to use the DMCA in order to prevent competitors from producing interoperable products, such as toner cartridges protected by a manufacturer-specific chip embedding an authentication sequence, verified by Lexmark’s Toner Loading Program.
In this case, the defendant
SCC sells its own microchip—the ‘SMARTEK’ chip—that permits consumers to satisfy Lexmark’s authentication sequence each time it would otherwise be performed, i.e., when the printer is turned on or the printer door is opened and shut. SCC’s advertising boasts that its chip breaks Lexmark’s ‘secret code’ (the authentication sequence), which ‘even on the fastest computer available today … would take years to run through all of the possible 8-byte combinations to break.220
In particular, the Lexmark case clarified that it is appropriate to distinguish between the market for the copyrighted work – the technical protection of which is legally reinforced by the DMCA – and other complementary markets – the access to which should not be foreclosed using the copyrighted work as a
214273 F.3d 429 (2d Cir. 2001). For a similar case, see also 321 Studios v. Metro Goldwyn Mayer Studios, Inc., 307 F. Supp. 2d
1085 (N.D. Cal. 2004).
215 SCHWARTZ, Why the DMCA Is Unconstitutional, 108—109. 216 Id., 109.
217 See Michael Tiemann, What Microsoft can do for Open Source, July 25, 2008 (available at http://opensource.org/node/352; last
visited July 27, 2008) and Matt Asay, A prayer for Microsoft, July 27, 2008 (available at http://news.cnet.com/8301-13505_3- 10000366-16.html?tag=blogFeed last visited July 28, 2008).
218 See Microsoft Open Specification Promise, published: September 12, 2006 and last updated: July 25, 2008 (available at
http://www.microsoft.com/interop/osp/default.mspx; last visited July 28, 2008). See also Matt Asay, Microsoft opens up its Open
Specification Promise, July 25, 2008 (available at http://news.cnet.com/8301-13505_3-10000124-16.html; last visited July 28, 2008).
219 Lexmark International, Inc. v. Static Control Components, Inc., U.S. Court of Appeals, Sixth Circuit, filed Oct. 26, 2004, 387
F.3d 522. For a detailed and commented description of the case, see JACQUELINE LIPTON, The Law of Unintended Consequences: The
Digital Millennium Copyright Act and Interoperability, 62 Washington and Lee Law Review, 487 (2005), p. 499—510. 220 387 F.3d 522, 531 (quoting the D. Ct. Op. 103, at 19).
pretext. More generally, and coherently with what I suggested in the first paper of this dissertation and in the present one, the court clarified how the fourth step of the fair use test should be applied:
With respect to the fourth factor—the effect of the use on the value of the copyrighted material—the relevant question likewise is whether the infringement impacted the market for the copyrighted work itself. […] Here, the district court focused on the wrong market: it focused not on the value or marketability of the Toner Loading Program, but on Lexmark’s market for its toner cartridges. Lexmark’s market for its toner cartridges […] may well be diminished by the SMARTEK chip, but that is not the sort of market or value that copyright law protects. […] Lexmark has not introduced any evidence showing that an independent market exists for a program as elementary as its Toner Loading Program, and we doubt at any rate that the SMARTEK chip could have displaced any value in this market.221
In other words, what Lexmark found valuable in its Toner Loading Program was the possibility of practicing price discrimination, using the sales of its own toners as a monitoring tool for the “intensity of usage” of each customer’s printer.222 As frequently happens for software code necessary to obtain interoperability, its value is
not in the creativity or technical complexity of the code itself, but in a competitive strategy enabled by the (absence of) interoperability. In this case – as in other discrimination and two-sided strategies briefly discussed in the first paper (§ 9.3) – it may be the case that some consumers benefited from this kind of differentiation (typically, light-users having the possibility of buying lasers printers for a lower price, indirectly subsidized by heavy-users). However, the court did not think that allowing such a strategy was among the purposes of the copyright act. The court also recalled that similar principles had been applied in Sony v. Connectix:223
Sony understandably seeks control over the market for devices that play games Sony produces or licenses. The copyright law, however, does not confer such a monopoly.
Hence, the “relevant” market for a fair use analysis is not at all the generally relevant market (the competition policy relevant market, for instance) or any market that could be somehow controlled controlling the copyrighted good. When fair use is considered, what matters seems to be the market in which the up- front sunk cost of expression has been supported. And that is consistent with the view of copyright just as a tool to prevent free riding on the costs of expression, trying to avoid any market power concerning ideas. That having been said, the facts of Lexmark case offered the possibility of rejecting Lexmark’s claims on the basis of arguments including the likely non-copyrightability of Lexmark’s small lock-out software,224 so that
the precedent did not look as clear as it could have about the possible (ab)uses of the DMCA in order to prevent interoperability. This is why Judge Merritt decided to write a concurring opinion, taking the following position:
I write separately to emphasize that our holding should not be limited to the narrow facts [of this case]. We should make clear that in the future companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves just by tweaking the facts of this case: by, for example, creating a Toner Loading Program that is more complex and ‘creative’ than the one here, or by cutting off other access to the Printer Engine Program. The crucial point is that the DMCA forbids anyone from trafficking in any technology that ‘is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a [protected] work.’ 17 U.S.C. § 1201(2)(A). The key question is the ‘purpose’ of the circumvention technology. The microchip in SCC’s toner cartridges is intended not to reap any benefit from the Toner Loading Program—SCC’s microchip is not designed to measure toner levels--but only for the purpose of making SCC’s competing toner cartridges work with printers manufactured by Lexmark.
221 387 F.3d 522, 544-545.
222 This is essentially a variation of the traditional strategy of “giving away the razor”, to make money selling the blades. 223 203 F.3d at 607.
224 This is not relevant for the paper at hand. However, the copyrightability of the aforementioned small software may be seen as
related to the copyrightability of interface implementation. In fact – on this point – I dissent from the majority’s opinion in Lexmark and agree with Judge Feikens partly dissenting opinion: “I feel that the record could support a finding that there was enough original expression in the Toner Loading Program to qualify it for copyright protection. Second, although I agree that the district court erred in its factual findings supporting the conclusion that the Toner Loading Program was not functioning as a lock- out code, I feel the record offers support for the proposition that it is possible and practical for competitors to make toner cartridges that function with the printer without copying the Toner Loading Program, and therefore, I would remand that issue to the district court to make a determination in the first instance. Third, although I agree with my colleagues that the district court erred in applying the law of the doctrine of merger and scenes a faire, I would apply the doctrines in this case differently.”.
Indeed, the main purpose of the DMCA is to protect creative works against piracy, not to create technological monopolies and incompatibility.225 Hence, the Lexmark precedent affirms that the DMCA
provisions cannot be used, not even indirectly, to prevent interoperability. However, it must be noted that nothing in the case – and it could not have been otherwise, given the clear text of the DMCA – prevents firms from directly using encryption and various forms of Digital Rights Management in order to prevent interoperability with third party’s products. But these kind of protections are only as strong as their technology. In fact, the Lexmark precedent clarified that, even if the decompilation exception of the DMCA applies only to software, the DMCA itself cannot be abused in order to prevent other kinds of interoperability.
Unfortunately (from my point of view), ideas, methods and principles embedded in software code protected by technological measure of protection are also legally protected by the DMCA, unless they are necessary to achieve interoperability. The only way to avoid that – apart from a legislative change – would be that the Supreme Court decided that the legal protection of non-patented ideas and information offered by the DMCA violates the copyright clauses of the US Constitution, but this is hardly a likely case. Anyhow, I do not think that this kind of protection could be described as patent-like: in fact, independent creation remains available to everybody, under general copyright principles. Indeed, the only field in which actual access to the original implementation is strictly necessary in order to achieve a technological result – to my knowledge – remains interoperability. Hence the DMCA purpose-bound exception, as its European counterpart in article 6 of the software directive, is arguably unnecessary and slightly detrimental to social welfare and innovation, but I will not overstate its scope saying that it offers a patent-like protection to any kind of software innovation.226