Digital Millennium Copyright Act, Overview for Institutions of Higher Education

In recent years, copyright law has grown in importance in educational and research environments. Issues include establishing internal policies regarding copyright ownership created at or at the instruction of the institution; educating institution personnel and establishing policies regarding the use of others' copyrighted works; the "copy shop course packet" cases and the examination of the "fair use" doctrine (concluding that the practice of collecting and binding copyrighted works, even for academic and educational purposes, without permission from the copyright owners, is generally not a fair use); other "fair use" implications; and other issues at the crossroads of copyright law, advancing technology, and educational, research, and non-profit institutions.

In response to concerns regarding liability for online service providers ("Service Providers" or "SPs") for copyright infringement, the Digital Millennium Copyright Act ("DMCA") was passed in October, 1998. The DMCA addresses what Service Providers must do to enjoy the copyright infringement liability limitations in a section called "Online Copyright Infringement Liability Limitation Act" or "OCILLA." Also covered in the DMCA is a section on Copyright Protection and Management Systems ("CPMS"), which addresses liability limitations regarding technologies that protect access to copyrighted works, good faith computer and encryption research, and related issues. This summary is an overview of the DMCA, focussing mostly on OCILLA with some references to the CPMS.

Under the OCILLA, a Service Provider that

1. implements a policy of terminating usage accounts of repeat infringers,
2. informs account holders of the SP's "no infringement" policy, and
3. does not interfere with standard technical measures used by copyright owners to protect their works may qualify for immunity from copyright infringement claims for
1. transmitting, routing, and providing connections to material ("transitory digital network communications"),
2. intermediate and temporary storage of material ("system caching"),
3. information residing on the system at the direction of others,
4. referring or linking users to sites containing infringing material ("information location tools"), and
5. "good faith removal" of infringing material (i.e., SP's obligation to remove or disable access to infringing material).

OCILLA requires a "notification" process by which a party claiming infringement notifies the SP. The process also requires a "counter notification" process by which the accused infringer can reply, explaining away the alleged infringement.

Liability limitation for nonprofit educational institutions. OCILLA provides specific protection for nonprofit educational institutions:

1. faculty members or graduate student employees, who meet certain criteria, shall be considered persons "other than the institution" for certain infringement claims (i.e., the institution may escape liability for the ill deeds of employees), and
2. the knowledge or awareness of infringement by faculty members or graduate student employees, who meet certain criteria, "shall not be attributed to the institution" (i.e., the institution may escape liability for infringement even if the wrongdoing employees knew they were infringing, providing the institution complies with provisions on responsiveness to infringement claims.

CPMS prohibits the circumvention of technology tools that protect access to and use of copyrighted works, including the manufacture and trafficking in devices used to circumvent protective technological measures. However, for certain uses, the CPMS provides exemptions for nonprofit libraries and educational institutions, including the right to access a copyrighted work to determine whether to acquire a copy; reverse engineering of computer programs for certain research; circumvention to develop interoperability of computer programs; circumvention to perform certain encryption research and security testing; and others.

The DMCA provides for civil and criminal penalties for violations.

As we enter the new millennium, many "intellectual property" issues once relegated to "intellectual property" attorneys are now equally likely to be management issues that regularly impact administrators, professors, students, lawyers, and others.

With the enactment of the DMCA (1), educational professionals must remain aware of changing copyright law and policy and act to monitor and protect their institutions. Relevant to education and research institutions are DMCA provisions establishing limitations of liability for copyright infringement for online/Internet services providers (hereafter "SPs"; e.g., "online service provider" ("OSP"), "Internet service provider" ("ISP"), search engines, and others); providing "safe harbor" copyright liability limitations for system caching; establishing notice (and counter notice) provisions as part of liability limitation; establishing liability limitations for nonprofit educational institutions; prohibiting the circumvention of technological protection for copyrighted works; prohibiting tampering with copyright management information used to identify and protect rightful owners; and establishing liability limitations for copyright infringement for computer maintenance and repair needs. The first four items above are found in OCILLA; the next two are found in CPMS. The DMCA defines "SP" broadly, providing ample room to seek coverage for our organizations.

In recent years, general issues of copyright have become more important and prominent on university campuses, in classrooms, in courtrooms, and on our desks. The copyright cases that first attracted the attention of university administrators and lawyers were the "course pack" or "copy shop" cases (2), which focussed on the practice in which instructors created a package of class materials, often physically prepared and bound by a photocopy business, so that students would have all necessary materials in one volume. "Course pack" cases forced the "fair use" issue forward, culminating in only limited guidance for compliance (3). The "fair use" analysis (4), famous and infamous on college campuses, provides some direction; however, concerns exist that educators may conclude that a work is fair game for fair use simply because it is being used for an "educational" purpose (i.e., simply because of its use at a college or university); such a conclusion is not necessarily correct and can be fraught with peril. As copyright law provides for statutory damages (i.e., actual harm need not be proven; only infringement need be proven), mistaken infringement can still result in money payments). Further, though the law says that States and state employees are subject to copyright law, the 1998 Chavez v. Arte Publico Press case addressed Eleventh Amendment (5) sovereign immunity for copyright infringement against a state entity, holding that Eleventh Amendment immunity may protect states against copyright claims in federal courts. Note well: Chavez is controlling law only in the 5th Circuit (6).

Just as those of us charged with overseeing copyright compliance were beginning to understand copyright analyses for course pack and fair use, the exponential growth of technology has provided an electronic frontier replete with issues in need of attention.

Copyright law comes from Article 1, Section 8, Clause 8 of the U. S. Constitution (7). The Copyright Act of 1976 establishes rights and remedies regarding copyrights, existing in original works of authorship that are 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 a machine or device. The amount of creativity required for copyright is minimal; however, the arrangement of simple facts is not sufficient. In short, if a work is original, involves some, even if limited, element of creativity, and is fixed in a tangible medium, it is protected by copyright laws (8). In educational environments, copyright may appear as books, journals, magazines, newspapers, works created in courses, electronic versions of the foregoing, software programs, digitized images (9), and others. Copyright protection is also available for compilations and derivative works.

Copyright protection begins as soon as a work of authorship, eligible for protection, is sufficiently fixed in a tangible medium of expression; notice (e.g., "Copyright 199___" or the "c" symbol") is no longer required.

There are eight categories of protectable subject matter: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; and sound recordings; and architectural works. Specifically excluded from protection are ideas which are inseparable from their expression. The way one expresses an idea or concept is protectable; the underlying idea or concept is not.

The exclusive rights of the copyright owner include the rights: to reproduce the copyrighted work; to prepare derivative works based upon the copyrighted work; to distribute copies or phonorecords of the copyrighted work to the public by sale or otherwise; to perform the copyrighted work publicly; to display the copyrighted work publicly. Without permission from the copyright owner, one cannot engage in any of the exclusive rights.

Copyright protection is also available for interactive works, such as video games and for live transmissions, such as the live broadcast of a baseball game.

Length of copyright protection has changed under different Copyright Acts; the date of creation and/or publication defines the term under the applicable Act. In October, 1998, the Sony Bono Copyright Term Extension Act (10) was enacted to extend the term of copyright protection.

Infringement is the inappropriate use of another's copyright, and the aspect of intent is not relevant in establishing infringement. Intent may impact the extent or amount of damages awarded (i.e., the amount of damages may differ depending upon whether the infringer acted willfully or not); however, intent neither creates nor negates infringement. Contributory infringement is a claim against those who induce or cause copyright infringement by another. Vicarious liability for copyright infringement exists when one has the ability to supervise the infringing activity of another and a financial interest in the infringing activity.

The remedies available to a wronged copyright owner include injunctions (court orders wrongdoer to stop), destruction of infringing goods, payment by wrongdoer to copyright owner of damages (actual loss and wrongdoer's profits), statutory damages (i.e., damages outlined by the statute), and others.

Fair use is a body of copyright law that allows use of another's work in center limited circumstances which require a balancing analysies using the following factors: the purpose and character of the use, including whether the 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. Note well: just because a proposed use is for and/or relates to education, research, or academics, does not necessarily mean that the use is fair (11).

Organizations should establish copyright use and management policies to minimize risk of damages (12). Though copyright owners can seek/collect statutory damages, an organization's behavior may become important in assessing damages and addressing contributory infringement and various liability claims. The organization that establishes, disseminates, and enforces policies that prohibit violations of copyright law may be able to limit its liability when employees violate copyright laws. Creating a culture of compliance, i.e., making employees and students aware of the law and the university's policies and making it known that the university expects compliance, may help to minimize infringement and will allow the university to distance itself from individual employees' wrongful behavior.

To protect copyright owners from infringement, to protect service providers from expanding liability risks (13), and to provide additional guidance to the general public, the DMCA was enacted. Though general aspects were discussed above, the following information outlines the portions of the DMCA most applicable to university, research, non-profit, and similar institutions.

Transitory digital network communications. An online service provider ("SP") shall not be liable for money damages or for injunctive relief for infringement of copyright because of the SP's transmitting, routing, or providing connections for material through a system or network controlled or operated by or for the SP, or because of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections, if:

• the transmission was initiated by someone other than the SP
• the transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the SP;
• the SP does not select the recipients of the material except as an automatic response to another's request;
• no copy of the material made by the SP during such storage is maintained on the system and is ordinarily accessible to anyone other than anticipated recipients;
• no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary; and
• the material is transmitted through the system or network without content modification by the SP.

System caching. An SP shall not be liable for money damages or for injunctive relief for the intermediate and temporary storage of material on a system or network controlled or operated by or for the SP when:

• the material is made available online by one other than the SP;
• the material is transmitted from the non-SP through the system or network to a person other than the non-SP person at the direction of that other person; and
• the storage is carried out through an automatic technical process to make the material available to users of the system or network who, after the material is transmitted as described above, request access to the material from the person described above (i.e., the original submitting party), if the following conditions are met:

Conditions: the material is transmitted to subsequent users without content modification; the SP complies with the submitter's rules concerning the refreshing, reloading, or other updating of the material in accordance with a generally accepted industry standard data communications protocol; the SP does not interfere with the ability of technology to return to the original submitter the information that would have been available to that person if the material had been obtained by the subsequent users directly from the original submitter. The preceding clause seems to require that SPs allow unfettered return to the submitting party of recipient information, including responses and personally identifying information, if such is normally available, providing: such technology does not significantly interfere with the performance of the SP's system or network; is consistent with generally accepted industry standard communications protocols; and does not wrongfully extract information from the SP's network.

Other conditions include: if the original submitter imposes access/response conditions, e.g., fee payment, password, or age verification (14), the SP permits access to the stored material only to users who have met those conditions; and if the original submitter makes that material available online without the authorization of the copyright owner of the material, the service provider responds expeditiously to remove, or disable access to, the material that is claimed to be infringing upon notification of claimed infringement.

Information residing on systems or networks at the direction of users. An SP shall not be liable for money damages for infringement of copyright because of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the SP, if the SP

• does not have actual knowledge that the material is infringing;
• is not aware from facts or circumstances that infringing activity is apparent;
• upon obtaining such knowledge, acts expeditiously to disable access to the infringing material;
• does not receive a financial benefit directly attributable to the infringing activity; and
• upon notification of claimed infringement, responds expeditiously to disable access to the infringing material.

SPs must establish a designated agent to receive notices of copyright infringement. The above limitations on liability apply only if the SP has designated an agent to receive notifications of claimed infringement by making agent contact information available through its service, including on its Web site in a location accessible to the public, and by providing to the Copyright Office, (15) with the following information:

• the name, address, phone number, and electronic mail address of the agent;
• other contact information which the Register of Copyrights deems appropriate.

The Register of Copyrights shall maintain a current directory of agents (16) available to the public for inspection, including electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.

Notification (17) of claimed infringement must be written, provided to the SP's designated agent, and must include: a physical or electronic signature (18) of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed; identification of the copyrighted work claimed to have been infringed; identification of the material that is claimed to be infringing and reasonably sufficient to permit the SP to locate the material; information reasonably sufficient to permit the SP to contact the complaining party; a statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized; a statement that the information in the notification is accurate, and, under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

A notification that fails to comply substantially with the foregoing provisions shall not be considered in determining whether an SP has actual knowledge of infringing activity. However, if the notification fails to comply substantially with the above provisions, but substantially complies with the second, third, and fourth provisions, then the SP enjoys limitations of liability only if it promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with all the identification provisions.

Information location tools. An SP shall not be liable for money damages for infringement of copyright by reason of the SP referring or linking (19) users to an online location containing infringing material or infringing activity, by using information location tools (including a directory, index, reference, pointer, or hypertext link) if the SP

1. does not have actual knowledge that the material or activity is infringing; is not otherwise aware of facts or circumstances from which infringing activity is apparent; or upon obtaining such knowledge or awareness, acts expeditiously to remove or disable access to the material;
2. receives no financial benefit directly attributable to the infringing activity, when the SP can control such activity; and
3. upon notification of claimed infringement, responds expeditiously to remove or disable access to the infringing material.

Limitation on liability for nonprofit educational institutions.

Transitory digital network" and "system caching." When a public or other nonprofit institution of higher education is an SP and when a faculty member or graduate student who is an employee of such institution is performing a teaching or research function, for purposes of the "transitory digital network communications" or "system caching" issues, such faculty member or graduate student shall be considered to be a person other than the institution (i.e., less chance of liability for SP; more chance for personal liability for individual infringer).

"Information residing on systems" and "information location tools." For the purposes of "information residing on systems/networks at direction of uses" or "information location tools" analysis, such faculty member's or graduate student's knowledge or awareness of his/her infringing activities shall not be attributed to the institution if

• such individual's infringing activities do not involve the provision of online access to instructional materials that are or were required or recommended, within the preceding 3-year period, for a course taught at the institution by such faculty member or graduate student;
• the institution has not, within the preceding 3-year period, received more than 2 individual notifications of claimed infringement regarding such faculty member or graduate student, and such notifications of claimed infringement were not actionable under the below section on "misrepresentation" (i.e., such claims were not flawed as defined in 17 U.S.C. 512(f)); and
• the institution provides users of its system with information that describes and promotes compliance with the U. S. Copyright laws.

Presumably, making copyright policies and related materials available online will address this "education" function requirement - and will, hopefully, serve to inform those who need to know the rules.

Misrepresentations. Any person who knowingly, materially misrepresents that material or activity is infringing or that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys' fees, incurred by the alleged infringer, by any copyright owner or copyright owner's authorized licensee, or by an SP, who is injured by reliance upon such misrepresentation.

Replacement of removed or disabled material and limitation on other liability. In general, SPs will not be liable for good faith removal of material, regardless of whether the material or activity is ultimately determined to be infringing. The foregoing liability limitations shall not apply to material residing at the direction of a subscriber of the SP on a system controlled or operated by or for the SP to which access is disabled by the SP, unless the SP

• takes reasonable steps promptly to notify the subscriber that it has disabled access;
• upon receipt of a counter notification, promptly provides the person who provided the original notification with a copy of the counter notification and informs the original notice submitter that it will replace the previously removed material or cease disabling access in 10 business days; and
• replaces the removed material and ceases disabling access not less than 10, nor more than 14, business days following receipt of the counter notice, unless its designated agent first receives notice from the original notice submitter that he/she has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the SP's system.

Identifying infringers. The OCILLA provides that a copyright owner or designee can seek a subpoena to require an SP provide the identity of an alleged infringer.

Counter notification. If an SP responds by removing information or disabling access to a notice of claimed infringement, and another party believes that the first notice is incorrect or inapplicable, the second party can so notify the SP. This counter notification notification must be written, provided to the SP's designated agent, and

• include a physical or electronic signature of the subscriber;
• identification of the material that has been removed or to which access has been disabled;
• the location at which the material appeared before it was removed;
• a statement, under penalty of perjury, that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification;
• the subscriber's name, address, and telephone number, and a statement that the subscriber consents to certain jurisdictional and service process.

This provision seems to allow for an endless hall-of-mirrors series of back-and-forth allegations, termed "dueling notifications" by a colleague, for SPs to manage

Conditions for eligibility. These limitations on SP liability shall apply to an SP only if it has adopted and reasonably implemented, and informs its subscribers and account holders of, a policy that provides for the termination in appropriate circumstances of accounts of the SP's subscribers and account holders who are repeat infringers and accommodates and does not interfere with standard technical measures. In other words: establish, distribute, and enforce policies.

Scope of relief. With respect to conduct other than that which qualifies for the limitation on remedies set forth above, the court may grant injunctive relief with respect to an SP only in one or more of the following forms:

• an order restraining the SP from providing access to infringing material or activity residing at a particular online site on the provider's system or network;
• an order restraining the SP from providing access to a subscriber or account holder of the SP's system or network who is engaging in infringing activity and is identified in the order, by terminating the accounts of the subscriber or account holder that are specified in the order;
• such other injunctive relief as the court may consider necessary to prevent or restrain infringement of copyrighted material specified in the order of the court at a particular online location, if such relief is the least burdensome to the service provider among the forms of relief comparably effective for that purpose.

If the SP does qualify for the above limitation on remedies, the court may only grant injunctive relief against an SP in limited circumstances.

("CPMS") (17 U.S.C. § 1201, et seq.)

As the OCILLA outlines the steps which SPs can take to minimize their liability for copyright infringement, the CPMS addresses the different types of technology used to protect information, technology, copyrighted works, and use of and access to them.

The circumvention of copyright protection systems is prohibited. The CPMS prohibits the circumvention of technological measures that are in place to protect copyrighted works. This provision is good for organizations wanting to protect and commercially exploit their copyrighted works; however, the enforcement methods (e.g., trying to identify and locate wrongdoers) seem somewhat complicated, like tracking down e-mail spammers and other cyberspace outlaws, who are often unknown and difficult to find.

Also important is the provision of review periods for analysis of the law's impact on various fields - including non-profits and educational institutions. The Librarian of Congress will publish a list of a class of copyrighted works which the Librarian has determined that non-infringing uses are, or are likely to be, adversely affected by the DMCA. Though protection of copyright owners' works is important, the areas which Congress wants to monitor (e.g., libraries, distance education, et al.) indicates the acknowledged importance of the convergence of the Internet, electronic communication, and (higher) education.

Also prohibited by the CPMS are the manufacture, import, and trafficking in any technology, product, service, device, or component that is primarily designed/produced to circumvent a technological measure that controls access to a protected work; has only limited use other than to circumvent; or is marketed by someone who knows such is being used to circumvent. Not only is circumvention prohibited, engaging in the industry supporting or assisting such prohibited actions is likewise prohibited.

Other rights are not affected. Other rights, remedies, limitations, or defenses to copyright infringement, including fair use, are not affected by this Act. CPMS neither enlarges nor diminishes vicarious or contributory liability for copyright infringement regarding technology or otherwise.

Exemption for nonprofit libraries, archives, and educational institutions. Nonprofit libraries, archives, and educational institutions can, without being in violation of the circumvention prohibition, access a commercial copyrighted work to determine whether to acquire a copy for the sole purpose of permitted conduct. A copy of a work gained under this exemption may only be used for the determination and may be kept no longer than needed to make the determination. Though this exemption only applies to a work when an identical copy is not reasonably available in another form, Congress, nevertheless, provided a specific exception for many educational institutions in assessing works that they may want to obtain.

Qualifications for exemptions: impacted collections must be open to the public or available not only to researchers affiliated with the institution, but also to other persons doing research in a specialized field.

Reverse engineering and further exemptions for certain research: under certain conditions, a person who has lawfully obtained the right to use a computer program may circumvent a technological access control to a particular portion of that program for the sole purpose of identifying and analyzing portions of the program that are necessary to achieve inter-operability of an independently created computer program with other programs.

Circumvention to allow interoperability. Despite the manufacturing and distribution prohibitions, a person may develop and employ technological means to circumvent a technological measure or to circumvent protection afforded by a technological measure to enable the identification and analysis, or for the purpose of enabling inter-operability, to the extent that doing so does not otherwise constitute infringement.

Permissible acts of encryption research: it is not a violation to circumvent a technological measure as applied to a copy phonorecord, in the course of good faith encryption research, if the researcher lawfully obtained the encrypted copy; such act is necessary for the research; the researcher first made a good faith effort to obtain authorization; and such act does not otherwise constitute infringement.

Factors in determining exemption. In determining whether an encryption exemption applies, consider whether the information derived from the encryption research was disseminated, and, if so, for what purposes; whether the researcher is engaged in a legitimate course of study or work regarding encryption; and whether the researcher provides the work's copyright owner with his/her findings.

Security testing. It is not a violation to engage in security testing, if such act does not otherwise constitute infringement.

Be aware of changes/updates. Be on the lookout for revisions, as the DMCA requires reports from the Register of Copyrights and the Assistant Secretary for Communications and Information of the Department of Commerce to be submitted to Congress on the effect this section has on encryption; the adequacy and effectiveness of technological measures designed to protect copyrighted works; and protection of copyright owners against the unauthorized access to their encrypted copyrighted works.

Protection of personally identifying information. In addition to addressing legal and policy matters regarding protection of copyrighted works and development of new technologies, encryption and otherwise, Congress has taken steps to allow the public to seek privacy protection. The DMCA permits circumvention of a technological measure if the technological measure, or the work it protects, is capable of collecting personally identifying information reflecting online activities; in the normal course of its operation, the technological measure collects personally identifying information without providing notice of such collection or dissemination to the user and without providing the user with the ability to prevent or restrict such collection; the act of circumvention has the sole effect of identifying and disabling the collection capability; and the act of circumvention is carried out solely for the purpose of preventing the collection or dissemination of personally identifying information.

Removal or alteration of copyright management information. No person shall, without the authority of the copyright owner or the law, intentionally remove or alter any copyright management information; distribute or import for distribution copyright management information knowing that it has been removed or altered; or distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered.

Civil remedies. Any person injured by a violation of CPMS may bring a civil action in U. S. district court. The court may grant injunctions to prevent or restrain a violation, but can not impose a prior restraint on free speech or the press. The court may order the impounding of any device or product in the alleged violator's custody or control that the court believes was involved in a violation; may award damages; may allow the recovery of costs by or against any party other than the United States or a U.S. officer; may award attorney's fees to the prevailing party; and order the modification or the destruction of any device or product involved in the violation that is in the custody or control of the violator or has been impounded. These remedies can provide warnings to individual employees, who may not otherwise understand and appreciate (or want to understand) the ramifications, including personal liability, for copyright infringement. Establishing disciplinary personnel actions for violations of copyright law, just like for violations of any other law, may be worth considering.

Criminal penalties. Any person who violates the above restrictions willfully and for purposes of commercial advantage or private financial gain is subject to fines of not more than $500,000 or imprisonment for not more than 5 years, or both, for the first offense; and fines of not more than $1,000,000 or imprisonment for not more than 10 years, or both, for any subsequent offense. Limitation for nonprofit library, archives, or educational institution. The foregoing criminal penalties shall not apply to a nonprofit library, archives, or educational institution.

Innocent violations. The court may reduce or return the award of damages in any case in which the violator convinces the court that the violator was not aware and had no reason to believe that its acts were violations. When nonprofit libraries, archives, or educational institutions appear to be culprits, the court shall remit damages in any case in which the library, archives or educational institution convinces the court that it was not aware and had no reason to believe that its acts constituted violations.

Kevin A. Cranman
Director of Contracts, BellSouth Intellectual Property Management Corporation
Kevin.Cranman@BellSouth.com; (404) 249-4385

This article is made available to the ASU General Counsel Briefing Paper Series by Kevin A. Cranman. A more detailed version of this paper was prepared for and presented at the Stetson University College of Law's 20th Annual National Conference on Law and Higher Education, February, 1999, Clearwater Beach, Florida while the author was serving as in-house counsel at the Georgia Institute of Technology. The complete materials, with legal-styled footnotes and Internet site references, are available from the Stetson University College of Law Office of Continuing Legal Education (http://www.law.stetson.edu/about/home): (727) 562 7830. The author thanks Stetson University's Professor Robert Bickel for the opportunity to participate in the Conference.

(1) Pub. Law 105-304. For online (http://thomas.loc.gov/home/c105query.html) access to the DMCA (H.$. 2281)

(2) E.g., Princeton Univ. Press v. Michigan Document Svcs., 99 F.3d 1381, 1385 (6th Cir. 1996) (en banc) ("The defendant,. . . a commercial copyshop that [bound and sold] substantial segments of copyrighted works of scholarship, . . . to students for use in fulfilling reading assignments given by professors at the University of Michigan. . . . [The defendant] acted without permission from the copyright holders, and the main question presented is whether the "fair use" . . . obviated the need to obtain such permission." The Dist. Ct. found copyright infringement, i.e. the "fair use" doctrine did not protect the defendant's actions. The appellate court agreed "with the district court that the defendant's commercial exploitation of the copyrighted materials did not constitute fair use."). See also Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991) (holding that a Kinko's copyshop had violated the rights of copyright owners by creating and selling course packs of readings without permission from the copyright owners.).

(3) While the statute provides factors help determine "fair use," the issue remains unclear. See, e.g., Campbell, a/k/a Skyywalker, et al. v. Acuff Rose Music, Inc., 510 U.S. 569 (1994) (quoting Stewart v. Abend, 495 U.S. 207, 236 (1990): "The fair use doctrine thus "permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster."); Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984). See also Ochoa, Dr. Seuss, The Juice and Fair Use: How the Grinch Silenced a Parody, 45 J. Copr. Soc'y 546 (vol. 4) (1998) (analyzing fair use, parody, and Dr. Seuss Enters., L.P. v. Penguin Bks. USA, Inc., 109 F.3d 1394 (9th Cir. 1997).

(4) For helpful "fair use" information, see Georgia Harper's "fair use" analysis, a part of her "Copyright Crash Course" (http://www.utsystem.edu/ogc/IntellectualProperty/copyrighthome.htm) (verified Feb. 1, 2000). Other "fair use" reference sites include Stanford University (http://fairuse.stanford.edu); the Conference on Fair Use (CONFU) (http://www.uspto.gov/web/offices/dcom/olia/confu/report.htm); "Copyright, Fair Use, and the Internet," (http://ils.unc.edu/daniel/Internet/presentations/copyright/index.htm) by Lolly Gasaway, Univ. of North Carolina, Chapel Hill; "Guidelines for Classroom Copying," (http://publishers.org/schoolcopyright) Association of American Publishers, Inc. (AAP); (online citations verified Feb. 1, 2000).

(5) U.S. CONST. AMEND. XI: "The judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by citizens of another state, or by citizens or subjects of any foreign state."

(6) For additional information on copyright and Eleventh Amend. Immunity, see "Chavez: Enforcement of Copyright Law Against State Universities," (http://www.utsystem.edu/ogc/IntellectualProperty/copyrighthome.htm) Ofc. of the Gen'l Counsel, Univ. of Texas System; (verified Feb. 1, 2000).

(7) U.S. CONST. Art. I, Sec. 8, Cl. 8 (http://www.house.gov/house/Constitution/Constitution.html): "The Congress shall have Power . . . 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."; (verified Feb. 1, 2000)

(8) "Copyright Basics," (http://www.copyright.gov/) U.S. Copyright Office, ; (verified Feb. 1, 2000).

(9) See "Scholars Face Hefty Fees and Elaborate Contracts When They Use Digital Images," Patricia Failing, The Chronicle of Higher Ed., p. B4, May 29, 1998; "Digitized Artifacts Making Knowledge Available to All, Online," (http://www.nytimes.com/learning/teachers/featured_articles/19981130monda...) Jo Thomas,The New York Times(online) (http://www.nytimes.com), Nov. 29, 1998

(10) Pub. L. 105-298 (http://thomas.loc.gov) (S. 505; H.R. 2589)

(11) See, e.g., American Geophysical Union v. Texaco, 802 F. Supp. 1 (S.D.N.Y. 1992) (copying for internal use by a commercial research library is not fair use), 60 F.3d 913, 926 (2d Cir. 1994), cert. dismissed, 116 S.Ct. 592 (1995).

(12) Example policies: Assoc. of Research Libraries (http://www.arl.org/pp/ppcopyright/); Stanford Univ. (http://www-sul.stanford.edu/cpyright.html); Ariz. State Univ.(http://www.asu.edu/aad/manuals/rsp/rsp107.html); Maricopa Cty. Comm. College Dist. (http://www.maricopa.edu/legal/ip/)Emory Univ. Info. (http://policies.emory.edu)(Verified Feb. 1, 2000)

(13) For example, liability for service providers was addressed in cases involving defamation (Cubby, Inc. v. CompuServe, Inc., 776 F.Supp. 135 (S.D.N.Y., 1991); Stratton Oakmont Inc. v. Prodigy Svcs., Co. (N.Y. Sup. Ct., Dec. 11, 1995); and Zeran v. AOL, 129 F.3d 327 (4th Cir. 1997) (holding that 47 U.S.C. §230, the Communications Decency Act of 1996, immunizes online service providers under certain circumstances)); copyright infringement (Religious Tech. Ctr. v. NETCOM On-Line Communications Svcs., Inc., 907 F.Supp. 1361 (N.D. Cal. 1995)); Playboy Enters., Inc. v. Webworld, Inc., 968 F.Supp. 1171 (N.D. TX 1997); Playboy Enters., Inc. v. Russ Hardenburgh, Inc., 982 F.Supp. 503 (N.D. Ohio 1997).

(14) Many service providers require users to establish some type of record or file to verify the age of the users to comply with, e.g., age limitations for access to "adult" material. See, e.g., the discussion in Loving v. Boren, 956 F.Supp. 953 (W.D. Okla. 1997), aff'd 133 F.3d. 771 (10th Cir. 1998).

(15) U.S. Copyright Office (http://www.copyright.gov/); "Designation by Service Provider of Agent for Notification of Claims of Infringement" (http://lcweb.loc.gov/copyright/onlinesp) (verified Feb. 1, 2000).

(16) Agent notification directory (http://lcweb.loc.gov/copyright/onlinesp/list) (U.S. Copyright Office)

(17) 17 U.S.C. §512(c)(3) (http://www.copyright.gov/title17/92chap5.html#512); Proposed notice format from U.S. Copyright Office

(18) For information on electronic/digital signatures, see Froomkin, Flood Control on the Information Ocean: Living with Anonymity, Digital Cash, and Distributed Databases, 15 J.L. & Com. 395 (1996); Katsh, Law in a Digital World: Computer Networks and Cyberspace, 38 Vill.L.Rev. 403 (1993); "Digital Signature Resource Center" (http://www.perkinscoie.com), Perkins Coie (site includes reference links to digital signature historical information; state, federal, and international electronic authorization laws; and policy discussions/references.). (verified Feb. 1, 2000).

(19) See Kuester and Nieves, Hyperlinks, Frames, and Meta-Tags: An Intellectual Property Analysis (http://www.patentperfect.com/idea.htm), 38 IDEA: J.L. & TECH 243 (1998) (verified Feb. 1, 2000).