IP Law Daily Computer scientist and video technology developers can challenge constitutionality of DMCA
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Friday, June 28, 2019

Computer scientist and video technology developers can challenge constitutionality of DMCA

By Thomas Long, J.D.

Although not facially overbroad, the DMCA’s anti-circumvention and anti-trafficking provisions could have unconstitutionally restricted expressive activities the plaintiffs wished to engage in.

Two individuals and a corporation can go forward with claims that the anti-circumvention and anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA) violated the First Amendment as applied to activities in which they wished to engage but had avoided for fear of prosecution, the federal district court in Washington, D.C., has decided. One plaintiff was a computer science professor who wished to publish a book containing detailed information on how to circumvent technological means for protecting copyrighted material. The other two plaintiffs were a company and its principal, who wanted to develop and market a recording device for high-definition multimedia signals that would require circumvention of certain content protection technology in order to function. The court held that the plaintiffs had standing to pursue declaratory and injunctive relief against the Department of Justice, the Copyright Office, the Library of Congress, and the chief officials of those agencies. Although the court rejected their claims that the DMCA provisions at issue were facially overbroad, the plaintiffs adequately asserted that the provisions violated the First Amendment as applied to their planned activities because the government did not show that the provisions did not burden substantially more speech than was necessary to further the government’s legitimate interests. The plaintiffs could not, however, go forward with claims that the Librarian of Congress violated the Administrative Procedure Act (APA) by failing to adopt certain exemptions to the DMCA that allegedly would have covered the plaintiffs’ activities. According to the court, the waiver of sovereign immunity in the APA did not apply here because the Library of Congress was not an "agency" as that term was defined in the APA (Green v. U.S. Department of Justice, June 27, 2019, Sullivan, E.).

Plaintiffs Matthew Green, Andrew Huang, and Alphamax, LLC—allegedly fearing that certain activities they wished to engage in would result in their prosecution under the "anti-circumvention" provision and one of the "anti-trafficking" provisions of the DMCA—brought a pre-enforcement challenge to the provisions, asserting that they violate the First Amendment facially and as applied to their proposed activities. The plaintiffs filed suit for declaratory and injunctive relief against the U.S. Department of Justice, Attorney General William Barr, the Library of Congress, Librarian of Congress Carla Hayden, the U.S. Copyright Office, and Register of Copyrights Karyn Temple Claggett. They also claimed that the Librarian of Congress violated the First Amendment and the APA by failing to include certain exemptions from the anti-circumvention provision in a 2015 final rule promulgated under a rulemaking procedure created by the DMCA. The defendants moved to dismiss all claims for lack of subject-matter jurisdiction and for failure to state a claim.

Conduct at issue. Green was a computer science professor at Johns Hopkins University who investigated computer system security and wished to include detailed information about how to circumvent security systems in a forthcoming book. Green had requested an exemption to cover his security research as part of the 2015 triennial rulemaking process for DMCA exemptions, but the exemption that the Librarian of Congress adopted was not broad enough to cover all of his proposed research. Huang and Alphamax are the creators of "NeTV," a device for editing high-definition digital video. They intended to create an improved device called the "NeTVCR," which would allow users to save content, move content to another viewing device, and convert content to different formats. To do so, they would have to circumvent the technological protection measures (TPMs)—specifically the High-Bandwidth Digital Content Protection (HDCP) technology—that restrict the viewing of High-Definition Multimedia Interface (HDMI) signals. All the plaintiffs asserted that they had curtailed their planned activities because of fear that they would be prosecuted for violating Section 1201 of the DMCA.

Plaintiffs’ claims. The plaintiffs contended that the anti-circumvention provision of Section 1201(a)(1)(A) and the anti-trafficking provisions of Sections 1201(a)(2) and 1201(b)—which prohibit disseminating means to circumvent TPMs—are facially overbroad; that the anti-circumvention provision amounts to an unconstitutional speech-licensing regime; and that both provisions are unconstitutional as applied to their proposed activities. Additionally, they contended that the Librarian of Congress’s denial of exemptions that would have applied to Green’s security research and Huang and Alphamax’s creation and use of NeTVCR violated the First Amendment and the APA.

Subject-matter jurisdiction—standing. The defendants argued that the plaintiffs’ First Amendment challenges to DMCA sections 1201(a)(1)(A) and 1201(a)(2) should be dismissed under Federal Rule of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction because the plaintiffs lacked the standing required to bring such challenges. The court decided that the plaintiffs had standing under Article III and rejected the defendants’ contention that the plaintiffs failed to allege the requisite injury-in-fact. First, the court said that the plaintiffs sufficiently alleged that their proposed course of conduct was proscribed by the DMCA. Second, they sufficiently alleged that they were subject to a "credible threat of prosecution" under the DMCA. Challenging laws burdening expressive rights required only a credible statement by the plaintiff of intent to commit violative acts and a conventional background expectation that the government will enforce the law, the court explained, noting also that courts’ willingness to permit pre-enforcement review was "at its peak" when the First Amendment was involved. The expectation of enforcement was reasonable because the government had brought criminal charges under Section 1201 in the past, and the government had not disavowed enforcement if the plaintiffs undertook their proposed courses of conduct. Finally, the plaintiffs alleged "an intention to engage in a course of conduct arguably affected with a constitutional interest," according to the court, which stated that this component of the standing inquiry only required a challenge to a given law on constitutional grounds.

Failure to state a claim—First Amendment. The defendants also argued that the First Amendment challenges to the DMCA provisions, along with the First Amendment challenges to the Librarian of Congress’s 2015 final rule, should be dismissed under Rule 12(b)(6) for failure to state a claim upon which relief can be granted. The plaintiffs argued that their First Amendment claim was viable because they alleged that they: (1) had created computer programs designed to circumvent access controls on certain copyrighted works, and Section 1201 burdened the right to create and use computer code; (2) sought to gather factual information that they intended to share with the public, and Section 1201 burdened the right to gather information; (3) sought to create new information that they intended to share with others, and Section 1201 burdened the right to create and share information; and (4) sought to disseminate the technological information they developed, and Section 1201 burdened the right to publish speech. They also contended that many people wanted to receive the information they sought to offer, and Section 1201 burdened the right to receive information.

The court agreed that the DMCA and its triennial rulemaking process burdened the use and dissemination of computer code, thereby implicating the First Amendment. Computer code was speech. In addition, the court deemed it at least arguable that the DMCA and its triennial rulemaking process implicated the other First Amendment interests asserted by the plaintiffs. The activities of publishing and sharing information fell within the First Amendment’s purview, and it was well-established that the Constitution protected the right to receive information and ideas. Therefore, it was appropriate to consider the plaintiffs’ First Amendment challenges.

The court, however, held that the plaintiffs’ facial challenges to the DMCA provisions failed. First, they failed to state an overbreadth claim because, in the court’s opinion, they failed to identify any significant difference between their claim that the DMCA provisions were invalid as overbroad and their claim that those provisions were unconstitutional when applied to their proposed course of conduct. The plaintiffs argued that fair use of copyrighted material was constitutionally required and that the DMCA inhibited fair use rights, making it facially unconstitutional. But the plaintiffs had not alleged that the DMCA would have a different impact on third parties’ interests in free speech than it had on their own. Therefore, there was no need to engage in an overbreadth analysis.

Second, the plaintiffs failed to state a claim that the DMCA, on its face, amounted to an unconstitutional prior restraint on speech. They asserted that the DMCA’s triennial exemption process amounted to a speech-licensing regime that lacked the required First Amendment safeguards or definite standards. The plaintiffs failed to allege sufficient facts to state a facial claim that the exemption rulemaking process was an unconstitutional speech-licensing regime because they did not allege that the rulemaking process resulted in censorship through suppression of disfavored speech or disliked speakers, or that the rulemaking defendants were passing judgment on the content of speech.

The plaintiffs’ "as-applied" First Amendment challenges to the anti-circumvention and anti-trafficking provisions fared better. Because these provisions targeted the functional, non-speech component of the plaintiffs’ use and dissemination of code, and only incidentally burdened the code’s expressive capacities, they were content-neutral, and triggered "intermediate scrutiny," the court said. That meant that the government needed only to prove that the restriction served a substantial governmental interest; that the interest served was unrelated to the suppression of free expression; and that the restriction did not burden substantially more speech than necessary to further the government’s legitimate interest. The plaintiffs did not dispute that the DMCA was aimed at furthering a substantial interest and that that interest was unrelated to the suppression of free expression. However, in the court’s view, the government failed to pass the third prong of the test, at least in the context of a motion on the pleadings. The plaintiffs argued that the various permanent exemptions to the anti-circumvention and anti-trafficking provisions were "insufficient to accommodate fair use and protected speech," which demonstrated that those provisions were not narrowly tailored. At this stage, the government had the burden to show that the provisions did not burden substantially more speech than is necessary to further the government’s legitimate interest; the government failed to do so, the court said. The court concluded that plaintiffs had alleged facts sufficient to state a claim that Section 1201, as applied to their intended conduct, violated the First Amendment.

Subject-matter jurisdiction—APA. The defendants raised another jurisdictional challenge to the claims. Specifically, they asserted that the plaintiffs’ APA challenge to the Librarian’s 2015 final rule should be dismissed under Rule 12(b)(1) because the APA’s waiver of sovereign immunity did not apply to the Librarian’s exemption determination. The court agreed, holding that the triennial rulemaking process was not subject to the APA. the Library of Congress was not an "agency" as that term was defined in the APA. Accordingly, the APA’s waiver of sovereign immunity did not apply to the Librarian’s exemption rulemaking. The APA defined "agency" as "each authority of the Government of the United States, whether or not it is within or subject to review by another agency, but does not include—(A) the Congress; (B) the courts of the United States; (C) the governments of the territories or possessions of the United States; (D) the government of the District of Columbia." The Library of Congress was part of Congress, not an executive agency, and the court rejected the plaintiffs’ arguments that the Library functioned as a "hybrid" agency with executive functions. There was no indication that the Congress intended the APA’s waiver of immunity to include the Library of Congress when it was engaging in Executive Branch functions. Also, Congress did not expressly apply the APA to the DMCA. Therefore, the APA claims were dismissed.

This case is No. 1:16-cv-01492-EGS.

Attorneys: Brian M. Willen (Wilson Sonsini Goodrich & Rosati) for Matthew D. Green, Andrew Huang, and Alphamax, LLC. Kathryn L. Wyer for U.S. Department of Justice, Library of Congress, and U.S. Copyright Office.

Companies: Alphamax, LLC

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