US LEGISLATION...FMA creates an express exemption to copyright infringement for using technology...
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The US Constitution includes copyright
protections because the Founders
believed that such protections were
necessary for progress. The enacted
copyright laws dealt with issues that
concerned tangible copyrighted works such
as paintings, books, and vinyl records.
However, innovation – particularly the advent
of the internet and of technology permitting
the digitising and easy sharing of all types of
content – has outmoded US copyright law.
Services emerged, using “peer-to-peer”
software, which allowed computer users to
exchange digitised copies of songs, movies,
software, and other content stored in
computer files easily, quickly, and broadly.
Through both legislation and the courts, the
US has attempted to adapt its copyright laws
to the new realities – facing competing
interests in the process.
On one side, content creators and owners,
such as those in the music and movie
18 | May 2005 | Copyright World # 150 www.ipworldonline.com
US LEGISLATION
K Copyright protection versus public access
Cydney A Tune and Carolina A Fornos, of Pillsbury Winthrop ShawPittman LLP, examine pending US copyright legislation
industries, make large investments of time
and money to produce their works and are
trying to protect their livelihood by
supporting legislation to increase copyright
protection and penalties for infringement
and by taking legal action against
infringers. Content producers are unlikely
to continue producing if they do not
get paid, to everyone’s detriment. Public
interest groups concerned about
dissemination of harmful materials over the
internet are often aligned with the content
industries in this struggle.
On the other side is the technology sector,
which is concerned that increased copyright
protection in the digital world will impede
innovation. Public interest groups that
represent consumers or promote free speech
are weighing in to support file sharing
technology. Librarians, archivists, educators
and researchers want to maximise public
access to copyrighted works. It is these
competing interests and their ongoing
struggle that are reflected in legislation
pending before the 109th Congress, which is
attempting to make significant revisions to
existing copyright law.
The Family Entertainment and Copyright Act
of 2005 (FEA) (S 167), and its companion bill
in the House of Representatives (HR 357),
were introduced on 25 January, 2005 and
contain four independent intellectual
property bills, all of which reflect the
continuing struggle between protection for
works and access to and use of such works.
Interestingly, FEA balances these competing
interests by promoting legislation favourable
to each side. Also pending in the House of
A delicatebalance
In summary
K As the US Government reacts to
new technologies with a succession
of Bills, it is also attempting to strike
a balance between promoting
copyright protection and improving
public access
K These competing interests, the
content creators on one side and the
technology sector on the other, and
their ongoing struggle are reflected in
pending legislation, including the
Family Entertainment and Copyright
Act of 2005, which is really a bundle
of Bills, and the Digital Media
Consumers’ Rights Act of 2005
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Representatives is the Digital Media
Consumers’ Rights Act of 2005 (the Digital
Media Act) (HR 1201) a pro-consumer bill
that attempts to force the music industry to
clearly label copy-protected music discs as
such, and the Military Copyright Act, which
seeks to provide faculty of military schools
the right to copyright their work.
Senator Orrin Hatch (R-Utah) introduced
the FEA in the Senate with the aim of
modifying federal copyright law to stop
piracy on the internet and to assist parents
in protecting their families from
inappropriate material in movies. FEA
consists of four intellectual property bills
that the House and Senate have been
working to enact since the 108th
Congress: (i) The Artists’ Rights and Theft
Prevention Act of 2005; (ii) The Family
Movie Act of 2005; (iii) The National Film
Preservation Act of 2005; and (iv) The
Preservation of Orphan Works Act. The
Senate passed FEA on 1 February, 2005
and by 9 March, 2005, the House Judiciary
Committee had approved it. FEA is now
awaiting the President’s signature.
Promoting copyright protectionThe Artists’ Rights and Theft
Prevention Act of 2005 (ART Act): FEA
tackles the issue of piracy, including the
unauthorised dissemination of works that
have not yet been released to the public. The
ART Act makes it a federal crime to use or try
to use a video camera or other comparable
technology to transmit or make copies of a
movie from a film theatre (cinema), or to
distribute a computer program, audiovisual
work, or commercial sound recording to the
public via a computer network. These
provisions are intended to stem bootlegging
and unauthorised distribution of “pre-release
commercial works.”
The reality is that all too frequently an
unauthorised version of a movie is available,
either online or in hard copy, shortly after its
initial theatrical release or even before its
theatrical release. Some bootleg copies are
distributed for free while others are sold at a
price significantly below what would
normally be charged. The poor quality of
most bootleg copies does not seem to lessen
the interest in them. To deter this rampant
piracy, the ART Act imposes criminal
penalties for such infringement.
Specifically, any such offence would be
punishable by a fine and imprisonment for
up to three years and any unauthorised
copies of movies or other audiovisual works
would be forfeited and destroyed. For repeat
offenders, the prison term could be as long
as six years. Film theatre owners, lessees,
and exhibitors would be given the authority
to detain anyone suspected of unauthorised
filming or recording and would receive
criminal and civil immunity from liability
for a reasonable detention for questioning or
arrest of such a person.
The ART Act would also establish
criminal penalties for copyright infringement
from the unauthorised distribution of a pre-
release commercial copyrighted work.
Section 506 of the Copyright Act, which
governs criminal copyright infringement,
currently defines criminal copyright
infringement as wilfully infringing for (1)
commercial advantage or private financial
gain or (2) by reproducing or distributing
within any 180-day period one or more
copyrighted works having a retail value of
US$1,000. A new category of infringement
would be created, for knowingly making a
work (such as computer programs, movies
and sound recordings) being prepared for
commercial distribution available on a
computer network accessible to the public.
The punishment would include fines and/ or
three to ten years’ imprisonment.
To further promote copyright protection,
the ART Act directs the Register of
Copyrights to issue regulations establishing
procedures for pre-registration of an
unpublished commercial copyrighted work,
if that work is of a class that the Registrar
determines has a history of pre-release
infringement. Such a pre-registration
system would allow for a civil action for
copyright infringement, in which statutory
damages and attorneys’ fees can be sought
by the copyright owner, and as well as
providing for criminal penalties. Further,
the United States Sentencing Commission
would review and, if appropriate, amend
federal sentencing guidelines applicable to
persons convicted of intellectual property
crimes, such as trafficking in movies and
sound recordings without permission from
the copyright owner.
Senator Hatch introduced the ART Act as
an attempt to fight piracy and intended for it
to become an important statutory “tool for
law enforcement officials combating the
growing problem of music and movies being
distributed on file-sharing networks and
circulating on the internet before they are
even released.”1
Several states have begun to
criminalise this type of conduct, but the
ART Act would provide a federal
standard to help fight piracy. As Senator
Hatch recognised, “[s]everal States have
already taken steps to criminalise this
activity, but providing a uniform Federal
law – instead of a patchwork of State
criminal statutes – will assist law
enforcement officials in combating the
theft and redistribution of valuable
intellectual property embodied in newly-
released motion pictures.” Recognising
that piracy “severely undercuts the
ability of copyright holders to receive
fair and adequate compensation for their
works,” the ART Act aims to enhance
copyright protection.
National Film Preservation Act of
2005 (Preservation Act): FEA also
promotes copyright protection by creating
measures to recognise and preserve
historically or culturally significant movies,
while also benefiting the public by promoting
the broader dissemination of such movies.
The Preservation Act reauthorises and funds
the National Film Preservation Board and the
National Film Preservation Foundation, both
of which work to recognise and preserve
historically or culturally significant movies.
Any movies on the National Film Registry
would be stored in a proper manner and be
more widely accessible to researchers,
scholars, and the public.
The Preservation Act also directs the
Library of Congress, working with the Film
Preservation Board, to ensure that the
national film preservation plan utilises
advancements in the technology used to
preserve and store movies. The
Preservation Act would also expand the use
of the National Registry Film seal, allowing
a copyright owner to use the seal on other
copies of the Registry version of a film for
mass distribution or public broadcast. This
change permits the copyright owner to
commercially exploit the recognition and
status that flows from a movie’s selection by
the National Film Registry. This Act also
benefits the public because it ensures the
broad dissemination of culturally significant
US LEGISLATION
www.ipworldonline.com Copyright World # 150 | May 2005 |19
Through both legislationand the courts, the US
has attempted to adapt its copyright
laws to the new realities – facing
competing interests in the process
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US LEGISLATION
20 | May 2005 | Copyright World # 150 www.ipworldonline.com
movies. The Preservation Act is not
controversial and is likely to be supported by
all of the competing interests.
FEA additionally addresses pro-consumer
and technology sector concerns by giving the
public and other interested parties certain
exemptions from copyright infringement and
by giving certain specified entities the right to
use orphan works during the last twenty
years of their copyright term.
Promoting public accessThe Family Movie Act of 2005 (FMA):
Technology exists that can be incorporated
into DVD players allowing consumers to
choose to skip or mute selected types of
content – such as nudity, profanity, sex and
graphic violence – during the DVD
playback. This is often referred to as “movie
filtering technology.” Movie filtering
technology does not change the DVD disc
itself, but rather allows the content of the
movie to be altered for viewing.
In September 2002, companies that
manufacture this technology were sued by
eight Hollywood movie studios, fifteen
directors, and the Directors Guild of
America for alleged copyright
and trademark infringement,
asserting that when portions of the
copyrighted content are skipped, a new
version of the work is created and that such a
new version constitutes a derivative work. See
Huntsman v Soderbergh, et al.2. Under present US
law, only the copyright owner has the right to
create derivative works; creating an
unauthorised derivative work is an infringing
act. The directors are particularly upset about
this technology because in their view it distorts
the movie they have created; the consumer is
not viewing it as they intended. Congress is
considering intervention on behalf of the
technology companies with a bill that would
end the litigation.
FMA creates an express exemption to
copyright infringement for using technology
that allows for skipping portions of audio or
video content in legally purchased or rented
movies while they are being viewed in a
private home, and for creating and selling the
devices that allow for such skipping.
FMA “empowers private individuals to use
technology to skip and mute material that
they find objectionable in movies, without
impacting established doctrines of copyright
or trademark law or those whose business
models depend on advertising.”3 Provided that
the user does not create a fixed copy of the
movie, under FAM use of such technology to
skip over content would not be deemed
copyright infringement.
FMA additionally protects a manufacturer,
licensee, or licensor of technology from both
copyright and trademark infringement when
creating or selling the technology that enables
viewers to skip content, provided that a clear
and conspicuous notice states that the
performance of the motion picture is altered
from the original one intended by the directors
and/ or copyright holders of the film at the
beginning of each performance and that only
“limited portions” of the work be skipped.
As Senator Hatch stated: “This is important
legislation both to parents who want the ability
to use new technologies to help shield their
families from inappropriate content as well as
the technology companies, such as ClearPlay in
my home state of Utah, that are working to
develop these technologies.”4
Under present US copy-
right law, it is not
clear that selling or
using movie filtering
technology would be
copyright infringement because a
work must be “fixed” before it is protected
by copyrights. Arguably, a copy of a movie that
is viewed but not “fixed” cannot be a derivative
work and thus could not be an infringing
derivative work. It thus appears that the
legislation may not be necessary.
Litigation is also pending against
businesses that rent edited versions
of motion pictures without
permission from the copyright
owner. This scenario creates
an entirely different legal
situation because the edited
version of the movie has been fixed into a disc,
which is then rented to consumers, and thus a
new work has been created. Whether that new
work constitutes a derivative work, however,
remains to be seen.
The Preservation of Orphan Works Act
(Orphan Works Act): The Orphan Works
Act also promotes public access to
copyrighted works. Under the predecessor to
the present US Copyright Act, a copyright
owner was required to register copyrights
and to affirmatively renew the copyright term.
Under that law, works that could have been
protected by copyrights became part of the
public domain, and thus freely useable, if the
copyrights were not registered or if no
renewal was filed. Those procedural
formalities no longer exist in the present
law. Rather, copyrights arise automatically
when an original work of authorship is
fixed in a tangible medium of expression
and last for a single term during which no
renewal is necessary. An “orphan work” is
one for which no copyright owner can be
found. If a work is protected by copyrights
but the copyright owner cannot be located,
the work cannot be used without
infringement because no permission can
be obtained.
The Sonny Bono Copyright Term
Extension Act, which added 20 years to the
term of copyrights, added Section 108(h)
to the Copyright Act in order to
ensure that the copyright term
extension would not have an
adverse effect on the
preservation and education
work of libraries, archives
and non-profit educational
institutions, by permitting
such entities to reproduce,
distribute, display and
perform copyrighted
works during the
extended copyright term if
the work is not being commercially
exploited and is not available at a
reasonable price. However, that legislation
inadvertently failed to amend Section 108(i) to
include musical, pictorial, graphic and
sculptural works, as well as movies and other
audiovisual works. The Orphan Works Act
will correct this problem by allowing libraries,
archives, and some non-profit organisations to
copy, distribute, display or perform all types of
Arguably, a copy of amovie that is viewed butnot “fixed” cannot be a
derivative work and thuscould not be an infringing
derivative work
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orphan works during the last 20 years of their
copyright term.
Arguably, the Orphan Works Act would
expand the Copyright Act’s fair use
exemption for libraries, archives and
educational non-profit organisations by
including all types of copyrighted works
within its scope, thus promoting wider
public access to copyrighted musical,
pictorial, graphic and sculptural works.
However, it permits limited copying
by those entities only of works that
are not being commercially exploited and
only during the last 20 years of their
copyright term.
Some proponents of broad public access to
copyrighted works do not believe that the
Orphan Works Act goes far enough. They
believe, for example, that the provisions
should apply to all orphaned works – not only
to those that are in the last 20 years of their
copyright term – and that the exemption
from infringement should apply to
unpublished works as well as to those that
have been published.
The Digital Media Consumers’ Rights
Act of 2005: Just last month, Representative
Rick Boucher (D-Va) introduced HR 1201,
known as he Digital Media Consumers’
Rights Act of 2005, to amend the Federal
Trade Commission Act to provide that the
advertising or sale of a mislabelled copy-
protected music disc is an unfair
method of competition and an
unfair and deceptive act or
practice.
Specifically, the Bill seeks to
empower the Federal Trade
Commission to ensure the
adequate labelling of
pre-recorded digital
music products.
Without labelling to
warn consumers of the restrictions on
playability and recordability, the introduction
of “copy-protected compact discs” in
commerce has allegedly caused consumer
confusion and increased the burden on
retailers and manufacturers that respond to
consumer complaints.
The pro-consumer bill seeks to render
unlawful the advertising or sale or attempted
sale of a pre-recorded digital music disc
product that is mislabelled or falsely or
deceptively advertised or invoiced or,
additionally, to remove or mutilate any label
required by the Bill.
The Military Rights Act: Another Bill
pending in this Congress is HR 962, the
“Military Copyright Act.” This Bill, introduced
on 17 February, 2005, proposes to allow faculty
members at Department of Defense service
academies and schools of professional
military education and who are also
members of the Army, Navy, Air Force,
or Marine Corps, or a civilian employee of the
Department of Defense, to secure copyrights
for certain scholarly works that they produce as
part of their official duties to enable them to
submit such works for publication.
The right to copyright is restricted to the
purpose of submitting such work for
publication in a scholarly journal,
publication, or other edited work for which
copyright is a requirement for consideration
for publication. The Military Copyright Act
additionally provides that the person who
obtains such copyright, shall not accept
royalties or other compensation and shall
also transfer the copyright to the owner of
the medium in which the work will be
published.
The Induce Act: One controversial bill
worth mentioning not because it is pending
but, rather, because it is likely to be re-
introduced this summer after the US Supreme
Court rules on Metro-Goldwyn-Mayer Studios
v Grokster, is former Senate bill 2560, which
never made it out of committee in the
108th Congress. This bill, known as
the Inducing Infringement of Copyrights
Act of 2004 or the Induce Act, would have
amended the Copyright Act to provide that
anyone intentionally inducing another to
infringe a copyright would also liable for
copyright infringement.
The Induce Act has been viewed as a direct
attack on file sharing and a response to the
Ninth Circuit Court of Appeals’ decision in
Grokster, holding that peer-to-peer services
by Grokster did not violate copyright laws.
Regardless of how the Supreme Court rules,
it is expected that Congress will see bills being
introduced relating to the issues involved in the
Grokster case and that may seek to work around
any such decision.
In sum, the bills pending in the current
Congress continue the struggle between
protection and access and seek to strike a
delicate balance. Although it remains to be
seen whether any of these bills will be enacted
into law, it is clear that the Copyright Act will
continue to see revisions necessary to keep
pace with technology. K
Notes
1 151 Cong. Rec. S450-01 at S494, daily ed. 25
January, 2005, statement of Senator Hatch.
2 No. 1:02-cv-01662 (D. Colo. filed 29 August, 2002).
3 151 Cong. Rec. S450-01 at S501, daily ed. 25
January, 2005, statement of Senator Hatch.
4 See News Release, Orrin Hatch United States
Senator for Utah 25 January, 2005 at 1.
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US LEGISLATION
The bills pending in thecurrent Congress
continue the strugglebetween protection and
access and seek to strike a delicate balance
About the authorsCydney Tune (near right) is Counsel at Pillsbury Winthrop Shaw Pittman LLP’s San Francisco office, andchairs the firm’s Copyright Practice team. Her practice includes the full range of copyright protection,including counselling, strategic planning, clearances, prosecution, and extensive policing and enforcementboth in the United States and abroad. Ms Tune also handles transactions involving copyright issues,including copyright license and transfer due diligence as well as assignments and licenses. She representsrights owners and accused infringers in copyright and related disputes.
Carolina Fornos (far right) is an associate at Pillsbury Winthrop Shaw Pittman LLP’s New York office.Her experience primarily includes litigation involving copyright and trademark infringement, dilution, anti-counterfeiting, and unfair competition. Ms Fornos additionally has experience in trademark prosecution, drafting and responding to cease and desist letters, and domain name disputes (includingICANN proceedings).