For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.
While cases in patent law provide some guidance regarding what might be inducement of infringement, the metes-and-bounds of copyright inducement won’t be known until a few cases are litigated.
In 2005, Congress added another form of criminal copyright infringement to Section 506, as part of criminalizing the videotaping of a motion picture playing in a theater and then distributing it on the Internet, which had become a significant problem. {FN88: “Artists' Rights and Theft Prevention Act of 2005, or the “ART Act,” part of “Family Entertainment and Copyright Act of 2005,” Pub. L. 109-9, 119 Stat. 220}Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18, if the infringement was committed-- . . . (C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution. {FN89: 17 U.S.C. 506(a)(1)}There is a problem with this provision. As I discuss in Chapter 3, Section I.B.1.a, the public distribution right covers only the distribution of material objects. And making something “available on a computer network accessible to members of the public,” without more, most certainly doesn’t distribute a material copy anywhere.
It is interesting that this approach was suggested by some of us in 1997 as an alternative to the “No Electronic Theft” Act {FN90: Pub. L. No. 105-147, 111 Stat. 2678, among other things adding subsection (a)(2) to 17 U.S.C. 506} in response to the LaMacchia decision. {FN91: United States v. LaMacchia, 871 F.Supp. 535, 33 USPQ2d 1978 (D. Mass. 1994)} The concern was that it would be difficult to show when the required dollar amount of copies had been made before charging the crime, and it made little sense to wait until enough copies had gone out to stop the infringement. But we also wanted to amend the distribution right to include making the work available to the public, as discussed in Chapter 3, Section I.B.1.f.]
During the second rulemaking
cycle, these two exemptions were refined and two new exemptions were added:Chapter 2 --
Chapter 3 --
(1) Compilations
consisting of lists of Internet locations blocked by commercially
marketed filtering software applications that are intended to prevent
access to domains, websites or portions of websites, but not including
lists of Internet locations blocked by software applications that
operate exclusively to protect against damage to a computer or computer
network or lists of Internet locations blocked by software applications
that operate exclusively to prevent receipt of email.
(2) Computer programs protected by dongles that prevent access due to
malfunction or damage and which are obsolete.
(3) 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. A format shall be considered obsolete if the
machine or system necessary to render perceptible a work stored in that
format is no longer manufactured or is no longer reasonably available in
the commercial marketplace.
(4) 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.
Three definitions were also added:
(1) “Internet locations” are defined to include domains, uniform resource locators (URLs), numeric IP addresses or any combination thereof.
(2) “Obsolete” shall mean “no longer manufactured or reasonably available in the commercial marketplace.”
(3) “Specialized format,” “digital text” and “authorized entities” shall have the same meaning as in 17 U.S.C. §121.
During the third rulemaking cycle, which concluding in November 2006, one of the previous exemptions remained essentially unchanged, two had limiting language added, and one was dropped. Although the exemption for compilations of blocked Internet locations was one of the original two exemptions and continued in a more restricted form in the second round, the proponents of the exemption made no factual showing in the third round that the exemption was still necessary nor that the exemption had been used.
The fourth exemption remains essentially the same.
4. 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 either of the book’s read-aloud function or of screen readers that render the text into a specialized format.
What had previously been the second exemption is now the third, with a definition of when a dongle becomes obsolete added.
3. Computer programs protected by dongles that prevent access due to malfunction or damage and which are obsolete. A dongle shall be considered obsolete if it is no longer manufactured or if a replacement or repair is no longer reasonably available in the commercial marketplace.
What had previously been the third exemption is now the third, but is now limited to preservation and archival activities only.
2. Computer programs and video games distributed in formats that have become obsolete and that require the original media or hardware as a condition of access, when circumvention is accomplished for the purpose of preservation or archival reproduction of published digital works by a library or archive. A format shall be considered obsolete if the machine or system necessary to render perceptible a work stored in that format is no longer manufactured or is no longer reasonably available in the commercial marketplace.
Finally, three new exemptions were added.
1. Audiovisual works included in the educational library of a college or university’s film or media studies department, when circumvention is accomplished for the purpose of making compilations of portions of those works for educational use in the classroom by media studies or film professors.5. Computer programs in the form of firmware that enable wireless telephone handsets to connect to a wireless telephone communication network, when circumvention is accomplished for the sole purpose of lawfully connecting to a wireless telephone communication network.6. Sound recordings, and audiovisual works associated with those sound recordings, distributed in compact disc format and protected by technological protection measures that control access to lawfully purchased works and create or exploit security flaws or vulnerabilities that compromise the security of personal computers, when circumvention is accomplished solely for the purpose of good faith testing, investigating, or correcting such security flaws or vulnerabilities.
In the past, the Copyright Office has restricted the exemptions to particular classes of works, rather than particular uses, as it felt the statute required. This time, both exemptions 1 and 2 further restrict a class of works to a particular use. And it must be remembered that the exemptions are only for the circumvention of an access control mechanism covered by section 1201(a)(1). It does not provide an exemption for the provision of a tool used for such circumvention, which could be a violation of section 1201(a)(2), nor for circumvention that results in infringement, which would be a violation of section 1201(b).
For more information about these exemptions, and the proceedings leading up to them, see:
http://www.copyright.gov/1201/
The online version contains this change.
(1) Request. — A copyright owner or a person authorized to act on the owner's behalf may request the clerk of any United States district court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this subsection.
(2) Contents of request — The request may be made by filing with the clerk—
(A) a copy of a notification described in subsection (c)(3)(A);
(B) a proposed subpoena; and
(C) a sworn declaration to the effect that the purpose for which the subpoena is sought is to obtain the identity of an alleged infringer and that such information will only be used for the purpose of protecting rights under this title.Congress included this provision so that it would not be necessary for a copyright owner to file a "John Doe" lawsuit to obtain the name of a user, which might then have to be dismissed and refiled in the proper venue after the location of the user was determined, thereby lowering litigation costs that might eventually have to be paid by the user. Critics have said that it would allow stalkers to pretend to be a copyright owner in order to get the name and address of a user, because there is no effective review of the subpoena request by the court clerk.
On December 19, 2003, the Court of Appeals for the DC Circuit, in RIAA v. Verizon, held that the subpoena provisions were not applicable to service providers acting as "mere conduits," since the notice provision makes no sense in that context. It is likely that the RIAA will seek remedial legislation by Congress, which will be discussed here when it is introduced.
That shifts the debate to whether a business method that requires using a computer qualifies. And while that seemed to be answered in Alappat when it said that programming a general purpose computer "creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software" {FN63b: In re Alappat, 33 F.3d at 1545, 31 USPQ2d at 1558 (Fed. Cir. 1994)}, a recent decision of the Board of Patent Appeals and Interferences held that the claimed method was "not tied to 'a particular machine,' but rather is tied only to a general purpose computer."{FN63c: Ex parte Langemyr, Appeal 2008-1495 at 24 (BPAI, 2008).}The patent statute was changed in 1999 to permit the reexamination requestor to participate in the reexamination by providing written commentary on the actions of the examiner and the responses of the patent owner. Further changes were made in 2002 to give the requestor the same appeals rights as the patent owner. Previously, while either party could appeal the examiner’s decision to the Board of Patent Appeals and Interferences, only patent owner could further appeal the decision of the Board to the Court of Appeals for the Federal Circuit.
Another change in 2002 allowed the reexamination to be based on prior art already considered by the examiner, as long as a “substantial new question of patentability” is shown. But Congress made it clear that this is not a way to second-guess the examiner.
However, this bill is not a license to abuse patentees and waste the life of a patent. The point must be stressed that the past requirement of ‘a substantial new question of patentability’ has not been diminished. The issue raised must be more that just questioning the judgment of the examiner. There should be substantial evidence that the examiner did not properly understand the reference, or did not consider a portion of the reference in making his decision. That substantial new question must be put forward clearly in the request for reexamination. The bill preserves the necessary safeguard in the Patent Act against harassment of patentees with the safety-valve of a ‘substantial new question of patentability’ standard, not merely ‘any sort of question.’ The agency has discretion in this determination to permit reexamination, but it is not absolute. While the bill clarifies the basis for a reexamination determination and removes the overly-strict bar established by the court, which renders the available process useless in many obvious instances such as with previously considered prior art, the courts should judiciously interpret the ‘substantial new question’ standard to prevent cases of abusive tactics and harassment of patentees through reexamination.The reexamination provision prevents you from using anything that you could have brought up at the time of the reexamination in later litigation. Because of uncertainty about the scope of this bar, reexamination may be undesirable unless you have prior art that you are sure will invalidate the patent, or at least cause new claims that will not concern you.
Though each revision to reexamination makes an important improvement, there are still problems that keep people from taking advantage of reexamination as an alternative to litigation. Perhaps Congress will see this as reason to institute a simplified early reexamination, such as an opposition period for a short time after the issuance of a patent to weed out patents where the best prior art was unavailable to the examiner.
The online version contains this change.
Chapter 5 --
- Page 335, replace "If so, how far have we stretched the patentability boundary and what will be the consequences?" with "In early 2008, the Federal Circuit answered this question, holding that a claim to a signal did not fall into any of the four statutory categories: process, machine, composition of matter, or manufacture. The majority felt that an article of manufacture had to be something tangible. See In re Nuijten."
The online version contains this change.
- Page 321, after the top paragraph, add:
But on October 30, 2008, the Federal Circuit in an en banc decision reopened the question what business methods are patentable by holding that to be patentable, a method must either transform a particular article to a different state or thing or must be “tied to a particular machine or apparatus.” {FN54a: In re Bilski, 88 USPQ2d 1385 (Fed. Cir. 2008).} That clearly precludes patents on many business patents, and shifts the debate to whether a business method that requires using a computer qualifies.The online version contains this change.
- Page 323, after the block quote, add:
But on October 30, 2008, the Federal Circuit in an en banc decision reopened the question of claiming a software-based invention as a method, holding that a method must either transform a particular article to a different state or thing or must be “tied to a particular machine or apparatus.” {FN63a: In re Bilski, 88 USPQ2d 1385 (Fed. Cir. 2008).}
The online version contains this change.
(Note: The patentability of method claims that are not tied to a particular machine or apparatus is currently unclear. Consult a patent attorney or agent familiar with the current state of the law before using the claim forms discussed here.)
The online version contains this change.
In its rulemaking of August 21, 2007, the Patent Office recognized this form of a dependent claim, but indicated that it would be treated as an independent claim for purposes of fee calculation and the new requirement for filing additional information with a patent application that contains more than five independent claims. {72 Fed. Reg. 46716, 46724.} While it is questionable whether the Patent Office can require a higher fee for a claim that meets the statutory requirement of a dependent claim, as long as the new rules are in effect there is no advantage to using the dependent claim form above instead of an independent claim that incorporates the language of what was previously the parent method claim.
Also, on Page 342, in the paragraph starting "This way ...", delete the last sentence that begins "It means that your claims will generally ..."
The online version contains this change.