Does the Ninth Circuit’s “Dancing Baby” Decision Mean Anything for Fair Use Under the DMCA’s Anticircumvention Rules?

Last fall, in Lenz v. Universal Music Corp., the Ninth Circuit ruled that copyright owners are required to have a procedure (even if it is mostly an automated, computer-implemented procedure) in place to consider whether someone else’s use of the copyright owner’s work online is legally protected under the fair use doctrine prior to sending a takedown notice to the site where the work has been posted. Failure to consider whether a use is fair, the court implied, disentitles the copyright holder to use the takedown procedure of 17 U.S.C. § 512(c) and (g) (which remains by far the most expeditious lawful means of removing allegedly infringing content from the internet). (For more on the background and consequences of the court’s decision, see Rebecca Tushnet’s analysis).

Rereading the court’s decision in preparation for my classes this semester, I was struck by the possible consequences of the Ninth Circuit’s reasoning for a different DMCA issue, to wit, whether fair use may be invoked as a defense to liability under the anticircumvention rules of 17 U.S.C. § 1201. The Ninth Circuit’s ruling strengthens, albeit perhaps only slightly, the argument that fair use belongs in the DMCA case law, and that those courts that have ruled that it doesn’t (including the Second Circuit in Universal City Studios, Inc. v. Corley, 273 F. 3d 429, 443-44, 458-59 (2d Cir. 2001); and [at least by implication] the Ninth Circuit’s own decision in MDY Industries, LLC v. Blizzard Entertainment, Inc., 629 F. 3d 928 (9th Cir. 2010)) were in error.

Here’s why. The Ninth Circuit’s decision rests upon this language from 17 U.S.C. § 512(c)(3)(A)(v) (italics mine):

To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes … [a] statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law[.]

The Ninth Circuit reasons that a fair use is “authorized by … the law,” and therefore that a copyright owner can’t assert the required “good faith belief” under the statute unless it first considers whether the complained-of use is a fair use. Only if it concludes that “use of the material in the manner complained of is not” a fair use may the copyright holder send a valid takedown notice.

Why does this matter for § 1201’s anticircumvention rules? Because language nearly identical to the quotation above appears in Article 11 of the WIPO Copyright Treaty (WCT):

Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law.

The legal argument that fair use is “permitted by law” in the United States, already seemingly on firm ground, is further strengthened by the Ninth Circuit’s ruling to that effect in Lenz, which construed a different portion of the same statute that Congress passed to implement the WCT.

Therefore, to construe § 1201 to bar circumvention of technological measures for the purpose of making a fair use of the underlying work, as several appeals courts have done, is to place the statute in tension with the United States’ treaty obligations; a tension that disappears if the statute is instead construed to require some nexus with infringement of copyright (as the courts did in, for example, Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004), and Chamberlain Group, Inc. v. Skylink Technologies, Inc., 381 F.3d 1178 (Fed. Cir. 2004)).

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