JOSEPH M. BURTON (SB No. 142105)
STEPHEN H. SUTRO (SB No. 172168)
DUANE MORRIS LLP
100 Spear Street, Suite 1500
San Francisco, CA 94105
Telephone: (415) 371-2200
Facsimile: (415)371-2201
Attorneys for Defendant
ELCOMSOFT COMPANY, LTD.
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
UNITED STATES OF AMERICA Plaintiff, v. ELCOM LTD., a/k/a ELCOMSOFT CO., LTD., Defendant. |
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Case No.: CR 01-20138 RMW MOTION TO DISMISS INDICTMENT FOR
VIOLATION OF DUE PROCESS Date: April 1, 2002 Time: 9:00 a.m. Judge: The Honorable Ronald M. Whyte |
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TABLE OF CONTENTS
MOTION 1
MEMORANDUM OF LAW 1
I. BACKGROUND 1
A. THE
INDICTMENT 1
B.
THE
ADOBE SYSTEMS eBOOK READER 2
C.
ELCOMSOFT
CO. LTD 3
1.
The
Company 3
2.
The
Advanced eBook Processor (“AEBPR”) 4
3.
The
Lawful Uses of AEBPR 5
II. CIRCUMVENTION
OF USAGE CONTROLS IS LAWFUL UNDER THE DIGITAL MILLENNIUM COPYRIGHT ACT 8
A. STATUTORY
STRUCTURE 8
B. UNAUTHORIZED
ACCESS 9
C. UNAUTHORIZED
USE 10
III. SECTION
1201(b) IS UNCONSTITUTIONALLY VAGUE AS APPLIED TO ELCOMSOFT 13
A. THE
VAGUENESS STANDARD 13
B. SECTION
1201(b) FAILS TO SPECIFY AN UNLAWFUL PURPOSE 15
C. SPECIFICATION
OF AN UNLAWFUL PURPOSE IS ESSENTIAL 18
1. Drug
Paraphernalia Statutes 18
2. Burglary
Tools Statutes 20
3. Other
Federal Statutes 21
D. DETERMINING
WHICH TOOLS ARE PROHIBITED IS
IMPOSSIBLE 22
E. APPLICATION
OF SECTION 1201(b) TO ELCOMSOFT 24
V. CONCLUSION 25
TABLE OF AUTHORITIES
CASES
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)................................................................. 11
City of Chicago v. Morales, 527 U.S. 41 (1999).......................................................................... 14,
15
Coates v. City of Cincinnati, 402 U.S. 611 (1971)............................................................................. 22
Connolly v. General Construction Company, 269 U.S. 385, 46 S.Ct. 126 (1926)............................. 25
Free Speech Coalition v. Reno, 198 F.3d 1083 (9th Cir. 1999)......................................................... 15
Grayned v. City of Rockford, 408 U.S. 104 (1972)...................................................................... 13,
25
IDK, Inc. v. Clark County, 836 F.2d 1185 (9th Cir. 1988)................................................................ 14
Levas & Levas v. Village of Antioch, Illinois, 684 F.2d 446 (7th Cir.1982)...................................... 18
Murphy v. Matheson, 742 F.2d 564 (10th Cir. 1984)........................................................................ 18
People v. Materne, 72 F.3d 103 (9th Cir. 1995)................................................................................ 25
Posters ‘N’ Things v. United States, 511 U.S. 513 (1994)................................................................. 24
State v. McDonald, 74 Wash. 2d 474 (1968)..................................................................................... 20
State v. Palmer, 2 Wash. App. 863, 471 P. 2d 118 (1970)................................................................ 20
United States v. Bin Laden, 92 F.Supp. 2d 189 (S.D.N.Y. 2000)...................................................... 25
United States v. Biro, 143 F.3d 1421 (11th Cir. 1998)...................................................................... 21
United States v. Lande, 986 F.2d 907 (9th Cir. 1992)....................................................................... 21
United States v. Martinez, 49 F.3d 1398 (9th Cir.1995).................................................................... 14
Village
of Hoffman Estates v. The Flipside, Hoffman Estates, Inc., 455 U.S. 489
(1982)..................................................................................................................................... 14,
18, 19
STATUTES
California Penal Code, Section 466.................................................................................................... 20
U.S. Const., Art. I, Sec. 8................................................................................................................... 11
17 U.S.C. § 104.................................................................................................................................... 5
17 U.S.C. § 107............................................................................................................................ 11,
16
17 U.S.C. § 109.................................................................................................................................. 11
17 U.S.C. § 1201......................................................................................................................... passim
18 U.S.C. § 2512................................................................................................................................ 21
47 U.S.C. § 553.................................................................................................................................. 21
MISCELLANEOUS
Exemption to Prohibition on Circumvention of Copyright
Protection Systems for Access
Control Technologies, 65 Fed. Reg. 64,557 (2000)
(codified at 37 C.F.R. § 201)............................. 12
H.R. Rep. No.105-551, Part I (1998)................................................................................ 9,
10, 11, 12
H.R. Rep. No. 105-551, Part II (1998)........................................................................................ 10,
12
Note, The Void-for-Vagueness
Doctrine in the Supreme Court, 109 U.Pa.L.Rev. 67 (1960)............................................................. 18
S. Rep. No. 105-190 (1998)......................................................................................................... 11,
13
Validity, Construction, and Application of Statutes
Relating to Burglars’ Tools,
33 A.L.R. 3d 798, 805........................................................................................................................ 20
WIPO Copyright Treaty, April 12, 1997, Art. 11, S.
Treaty Doc. No. 105-17 (1997).................... 13
MOTION
Defendant Elcomsoft Company, Ltd. moves
this Court for an Order dismissing the indictment. As grounds therefore, Elcomsoft asserts that the statute
upon which the charges against it are based violates the Due Process clause of
the Fifth Amendment to the Constitution of the United States. Specifically, Elcomsoft asserts that 17
U.S.C. Section 1201(b)’s prohibitions are not clearly defined, and it is
therefore unconstitutionally vague.
The
prosecution in this case is based on the premise that the Digital Millennium
Copyright Act prohibits, under any circumstance, the circumvention of
technologies which are used to protect the rights of copyright holders in their
works. This is fundamentally
incorrect. The legislative history
of the Digital Millennium Copyright Act makes clear that circumvention of these
technologies is permitted for the purpose of enabling fair use copyrighted
works by persons who have lawfully acquired them.
Section
1201(b) of the Digital Millennium Copyright Act prohibits the manufacture and
sale of software tools which are intended to facilitate unlawful circumvention
of protective technologies.
Elcomsoft is a software company that manufactured and sold software
tools which were intended to be used, and in fact were used to accomplish the
lawful circumvention of protective technologies. However, because of Section 1201(b)’s failure to
clearly define which software tools it prohibits, Elcomsoft could not know,
with any reasonable certainty, if its lawful conduct was meant to be included
within the statutory proscription.
The
failure of a statute, particularly one which carries criminal consequences, to
clearly define the conduct it proscribes and thereby ensnare innocent
law-abiding individuals is the essence of constitutional vagueness, and the
basis for Elcomsoft’s motion.
MEMORANDUM OF LAW
I. BACKGROUND
A.
THE
INDICTMENT.
On
August 28, 2001, Elcomsoft was indicted for alleged violations of Sections
1201(b)(1)(A) (a device “primarily designed or produced for the purpose
of circumventing protection afforded by a technological measure that
effectively protects a right of a copyright owner”) and 1201(b)(1)(C) (a
device “marketed . . . for use in circumventing protection afforded by a
technological measure that effectively protects a right of a copyright
owner”).
The
Indictment charges that “the primary purpose of [AEBPR] was to remove any
and all limitations on an ebook purchaser’s ability to copy, distribute,
print, have the text read audibly by the computer, or any other limitation
imposed by the publisher or distributor of an ebook in the eBook Reader format,
as well as certain other ebook formats.” (Indictment, ¶ 2, at p. 2:22-25). The Indictment otherwise charges
that Elcomsoft made this program available for sale on the Internet. (Indictment, ¶3, at pp. 2:26-3:4).
B.
THE
ADOBE SYSTEMS eBOOK READER.
Adobe
Systems, Inc., (“Adobe”) is a software company headquartered in San
Jose, California, that produces publishing software for various media. (Indictment, pg. 1:27 - pg. 2:1). Adobe distributed a product titled
“Adobe Acrobat eBook Reader” that provided technology for the
reading of books in digital form (“ebooks”) on personal
computers. (Indictment, pg. 2:6-7).
“When
an ebook purchased for viewing in the Adobe eBook Reader format was sold by a
publisher or distributor, the publisher or distributor of the ebook could
authorize or limit the purchaser’s ability to copy, distribute, print, or
have the text read audibly by the computer. Adobe designed the eBook Reader to permit the management of
such digital rights so that in the ordinary course of its operation, the eBook
Reader effectively permitted the publisher or distributor of the ebook to
restrict or limit the exercise of certain copyrights of an owner of the
copyright for an ebook distributed in the eBook Reader format.” (Indictment, pg. 2:14-20).
According
to Adobe promotional material, the Adobe eBook Reader was designed with
encryption technology and digital rights management software to secure and
manage eBooks. Adobe explained
that the software “includes the highest level of encryption technology,
licensed from RSA Laboratories.”
(Declaration of Joseph M. Burton, Ex. A, document titled “Adobe Solutions
for the eBook Market,” at 000041).
C.
ELCOMSOFT
CO. LTD.
1.
The
Company.
Elcomsoft
Co. Ltd. (“Elcomsoft”) is a privately owned software development
company headquartered in Moscow, Russia.
Established in 1990, Elcomsoft produces Windows productivity and utility
applications for businesses and individuals. In particular, Elcomsoft provides state-of-the-art computer
forensics tool development, computer forensics training, and computer evidence consulting. Since 1997, Elcomsoft has developed and
provided forensic software tools to law enforcement, military and intelligence
agencies worldwide, including to law enforcement in the United States.[1]
These software tools are also used by some of Fortune 500 corporations,
many branches of the military all over the world, foreign governments, and
major accounting firms. Elcomsoft
is a member of the Russian Cryptology Association (RCA) and a lifetime member
of the Association of Shareware Professionals (ASP). Elcomsoft is also a Microsoft Independent Software Vendor
(ISV) partner. Katalov
Decl., ¶¶ 2-4.
One
line of software in which Elcomsoft has specialized is password recovery
software. This software allows a
user to recover a password that has been lost, forgotten, or destroyed. For instance, a corporation may use the
software when a former employee has left the corporation without un-protecting
his or her files. Likewise, a
government may use the software in the investigation of a crime. Elcomsoft’s software allows
recovery of passwords for files created in most popular applications, including
Corel WordPerfect Office, Lotus SmartSuite, Intuit Quicken, and Microsoft
Office and WinZIP. Elcomsoft also
has a product that decrypts protected Adobe Acrobat PDF files[2] which have an “owner” password
set, preventing the file from being edited and/or printed. Through
///
the use of Elcomsoft’s product, the
protected file may be opened in any PDF viewer without restrictions. Katalov Decl., ¶ 5.
2.
The
Advanced eBook Processor (“AEBPR”).
On
June 20, 2001, Elcomsoft released the Advanced eBook Processor
(“AEBPR”), a Windows-based program that allowed a lawful user to
remove usage restrictions from Adobe Acrobat PDF files and the Adobe eBook
Reader. The AEBPR program permits
a legitimate purchaser of an e-book formatted in the Adobe Acrobat e-book
reader format to convert that e-book from the Adobe e-book reader format to a
format readable in any PDF viewer without restrictions. Katalov Decl., ¶ 6. As such, the conversion accomplished by
the AEBPR program enabled a legitimate purchaser of an e-book to exercise his
or her rights of fair use under the copyright laws by allowing the lawful owner
of an ebook to read it on another computer, make a back-up copy, print the
ebook, etc.
Importantly,
this product was not sold by Elcomsoft to allow unlawful distribution of copyrighted works. Rather, Elcomsoft sold the product to
allow a lawful owner to
have more freedom to read the book how and/or where the owner wanted. In its press release, Elcomsoft
explained the AEBPR:
The latest addition to Elcomsoft’s
family of password recovery software allows business managers to deal with lost
and destroyed passwords, as well as with employees who, intentionally or
unintentionally, are unable to edit and print password-protected PDF files.
Advanced eBook Processor lets users make
backup copies of eBooks that are protected with passwords, security plug-ins,
various DRM (Digital Rights Management) schemes like EBX and WebBuy, enabling
them to be readable with any PDF viewer, without additional plug-ins. In addition, the program makes it easy
to decrypt eBooks and load them onto Palm Pilot’s and other small,
portable devices. This gives users
- especially users who read on airplanes or in hotels - a more convenient
option than using larger notebooks with limited battery power to read their
eBooks. . . .
Advanced eBook Processor protects
businesses from losing control of their eBooks, technical articles,
documentation manuals, presentations, and all PDF documents that could be
rendered unusable by improperly managed passwords and licenses.
Katalov Decl., Ex. B (June 22, 2001 Press
Release) (emphasis added).
Elcomsoft further explained on its web site that the AEPBR only worked
with eBooks that were legally owned and was priced in a manner that would protect
“unauthorized distribution of eBooks on the piracy market:”
This program only works with eBooks you legally own, i.e. purchased from one of online stores like
Amazon or Barnes & Noble. So
we are absolutely sure that the owner of the eBook has all rights to read the
book he *purchased* where he wants and how he wants.
The demo version of AEBPR allows to convert
only first 10% of the book content.
To protect unauthorized distribution of eBooks on the piracy market,
we have set the “border” price for this program – $99, which
is much more than the eBook cost (most eBooks are being sold from $10 to $30,
and there are a lot of free ones).
Burton Decl., Ex. B. (emphasis added).
The
AEBPR was offered for sale by Elcomsoft on the Internet for only a few weeks.[3]
At no point was the software marketed for an unlawful purpose.[4]
Indeed, following complaints from Adobe and allegations that the
software violated the DMCA, Elcomsoft directed Register Now – the
internet site that sold AEBPR – to remove the product from its internet
site.[5]
See, e.g.,
Burton Decl., Ex. C, July 16, 2001 Statement of Elcomsoft Employee Dmitry
Sklyarov to the FBI, at 000108 (“SKLYAROV stated that [the AEBPR] was
sold commercially for a short period of time over the Internet by ELCOMSOFT for
an amount of $99.95 but after Adobe Inc. complained, it was no longer
sold”).
3. The
Lawful Uses of AEBPR.
Consistent
with its advertising of the AEBPR, Elcomsoft is aware of no unlawful use of AEBPR. Nor has evidence of such unlawful use been revealed in the
discovery provided by the government to date. In contrast, although Elcomsoft does not have the resources
of the United States government, Elcomsoft has been made aware of many lawful
uses of the AEBPR, as follows:
• One
purchaser of AEBPR worked in the insurance business. This individual purchased an eBook for use on his laptop
that contains information that he uses and needs when he is out in “the
field.” The individual does
not know anything about computers.
Within a week or two of normal use, the eBook stopped working and was
not reliable for him to use “in the field.” Several attempts were made to contact
the publisher’s technical support, with no luck. The user was given the option of
purchasing the eBook again, despite the publisher’s prior statements that
the individual was authorized to not only use the eBook, but to load it onto
one other machine. Further
attempts were made to contact the publisher, again with no luck. Not wanting to purchase the eBook again
and risk the same problem, AEBPR was purchased and the problems with the eBook
ceased; the eBook is now fully functional in “the field.” Burton Decl., Ex. E, August 28, 2001
E-mail from Aaron Mathieson.[6]
• One
purchaser of AEBPR was a Mortgage Loan Document Company. The company was working to convert
their loan documents to the Adobe PDF format and needed to determine if the
Adobe software encryption was secure.
The company purchased the AEBPR to test PDF encryption. The company used AEBPR and determined
that the PDF encryption was not secure.
The company therefore did not post PDF documents on the Internet.[7]
Burton Decl., Ex. F, August 31, 2001 FBI Interview of Stephen Richard
Levine.
• One
person sought a copy of AEBPR in order to gain access to malfunctioning eBooks
that he had purchased from Barnes & Noble. The user explained that in May, 2001, he had downloaded and
activated the Adobe Reader “from Barnes & Noble, along with about
$150 in e-Books in both formats.”
The user then experienced problems with his computer and purchased a new
computer. But the user no longer
had “access to the e-Books that [he] paid for.” The user explained that Adobe and
Barnes & Noble failed to respond to his inquiries
and that he could not “afford to buy the same books all over
again.” Burton Decl., Ex. G,
July 5, 2001 E-Mail.
• The
State of Wisconsin sought a copy of AEBPR in order to resolve the problem of
“content being restricted to the computer that was used to download the
ebook.” The State of
Wisconsin explained that “[w]ithout a method of moving content to new
computers as old computers are replaced [the Adobe e-Book] format would not be
an option.” Burton Decl.,
Ex. H, July 6, 2001 E-Mail from State of Wisconsin.
• One
individual sought a copy of AEBPR on behalf of SunGard eSourcing. The employee wanted AEBPR to create a
“one stop document with reference material” from eBooks for the
employee’s department.
Burton Decl., Ex. I, July 5, 2001 E-Mail from SunGard eSourcing.
• One
individual sought a copy of AEBPR on behalf of Time Warner Communications. The individual wrote content for www.pocketnow.com
(a portable computer-related site) and recognized that AEBPR was “very
relevant to mobile computing and portable electronic content.” Burton Decl., Ex. J, July 5, 2001
E-Mail from Time Warner Communications.
• After
purchasing a number of electrical engineering eBooks for use with Adobe eBook
Reader, an e-Book owner’s Adobe e-Book Reader “crashed.” Adobe would not assist the e-Book owner
in restoring the books that he had purchased. The individual sought a copy of AEBPR from Elcomsoft. Burton Decl., Ex. K, July 14, 2001
E-Mail from Daniel Bailey.
Of
course, the lawful use
of AEBPR was not limited to the private sector. Among the purchasers of AEBPR was the United States
government. Records produced by the government in
this case indicate that the celebrated Los Alamos Nuclear Laboratories
purchased AEBPR. This purchase was
made with the use of a government credit card issued to the government employee
that was responsible for purchases for the Solid Waste Division at Los Alamos,
New Mexico, e-mail: Ggg@lanl.gov.
Burton Decl., Exs. L and M.
Although it is unclear what the government intends to use AEBPR for, the
DMCA specifically exempts “an employee of the United States” from
liability for “any lawfully authorized investigative, protective,
information security, or intelligence activity.” 17 U.S.C. § 1201(e).
In
sum, Elcomsoft is aware of no evidence of unlawful uses of AEBPR. Rather, the lawful uses for AEBPR are
well documented.
II. CIRCUMVENTION
OF USAGE CONTROLS IS LAWFUL UNDER THE DIGITAL MILLENNIUM COPYRIGHT ACT
A. STATUTORY
STRUCTURE.
Critical
to understanding the basis for Elcomsoft’s due process claim is the fact
that the Digital Millennium Copyright Act does not prohibit the circumvention of
technological measures which protect the rights of a copyright owner under the
copyright act. These particular
rights which are referred to as “usage control rights” in this brief. Congress treated usage control rights,
for reasons fully explained below, differently than it did a copyright
owner’s right to control access to his works.
On
October 28, 1998, the United States enacted the Digital Millennium Copyright
Act (the “DMCA”), Pub.
L. 105-304 (1998). The DMCA
represents an expansion of traditional copyright law by Congress in recognition
of the fact that in the digital age authors are compelled to employ protective
technologies in order to secure their works from unauthorized actions. Congress therefore developed a
structure designed to prohibit efforts to unlawfully circumvent these
protective technologies. Title I
of the Digital Millennium Copyright Act added a new Chapter 12 to Title 17
U.S.C. (the Copyright Act). The
new anti-circumvention prohibitions are contained in the three distinct
provisions of Section 1201 of Chapter 12 of 17 U.S.C.
The
principal anti-circumvention prohibition is contained in Section 1201(a)(1)(A)
which provides that: “No
person shall circumvent a technological measure that effectively controls access
to a work protected under this title.” Id. Under this provision, the mere act of circumventing access controls is
unlawful. As such it represents an
entirely new form of copyright law violation. One that is separate and distinct from copyright infringement.
The
second prohibition is found in Section 1201(a)(2) which states:
(2) No person shall manufacture, import,
offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part
thereof, that -
(A)
is primarily designed or produced for the purpose of circumventing a
technological measure that effectively controls access to a work protected under this title;
(B)
has only limited commercially significant purpose or use other than to
circumvent a technological measure that effectively controls access to a work protected under this title [17
U.S.C.A. § 1 et seq.]; or
(C)
is marketed by that person or another acting in convert with that person
with that person’s knowledge for use in circumventing a technological
measure that effectively controls access to a work protected under this title.
Id. (emphasis added).
The
final prohibition is the legal foundation upon which the indictment in this
case rests. Section 1201(b)
provides :
(1) No person shall manufacture, import,
offer to the public, provide, or otherwise traffic in any technology, product,
service, device, component, or part thereof, that -
(A) is primarily designed or produced for
the purpose of circumventing protection afforded by a technological measure
that effectively protects a right of a copyright owner under this title in a work or a
portion thereof;
(B) has only limited commercially
significant purpose or use other than to circumvent protection afforded by a
technological measure that effectively protects a right of a copyright owner under this title in a
work or a portion thereof; or
(C) is marketed by that person or another
acting in concert with that person with that person's knowledge for use in
circumventing protection afforded by a technological measure that effectively protects
a right of a copyright
owner under this title in a work or a portion thereof.
Id. (emphasis added).
This
provision is similar to Section 1201(a)(2) in that it uses very similar
language to focus on prohibited tools.
Unlike Section 1201(a)(2), however, it applies to technologies that
protect the rights of a copyright owner in her copyrighted works rather than to
technologies that control access to her copyrighted works.
B. UNAUTHORIZED
ACCESS.
It
is clear from both the language and legislative history of the DMCA that
Congress sought to protect copyright owners from the unauthorized actions of others. However, the nature of the unauthorized
actions prohibited under the DMCA are different and therefore required
different means of control.
Sections
1201(a)(1) and 1201(a)(2) are expressly directed toward preventing unauthorized
access of copyrighted
works. Congress found that the
“act of circumventing a technological protection measure put in place by
a copyright owner to control access to a copyrighted work is the electronic
equivalent of breaking into a locked room in order to obtain a copy of a
book.” Burton Decl., Ex. N,
H.R. Rep. No.105-551, Pt. 1, at 17 (1998).
Section
1201(a) achieves the goal of preventing unauthorized access in two distinct
ways. First, Section 1201(a)(1)
prohibits the act of circumventing protective technologies which control access
to works. It is, by its terms,
absolute. Any and all acts of that
form of circumvention are prohibited. The issue of controlling access to copyrighted works
in digital form was the subject of long and extremely vigorous discussion and
debate in Congress because of its potential to cripple the doctrine of fair
use, and give authors the ability to severely restrict or eliminate public
access to copyrighted materials.
Despite these significant concerns Congress however, chose to completely
ban this form of circumvention subject only to limited and carefully crafted
exemptions.[8]
These exemptions were developed because Congress felt it
“appropriate to modify the flat prohibition against the circumvention of
effective technological measures that control access to copyrighted materials,
in order to insure that access for lawful purposes is not unjustifiably
diminished.” Burton Decl.,
Ex. O, H.R. Rep. No. 105-551, pt. 2, at 36 (1998).
The
second means by which unauthorized access to copyrighted works are protected is
through a ban on the manufacture or trafficking in technologies, devices, etc.
(hereinafter referred to as “tools”) which could enable the
unauthorized circumventions barred in Section 1201(a)(1).
Section
1201(a)(2) is a companion provision to Section 1201(a)(1) which is aimed at
tools which could be used to
facilitate an act of unlawful circumvention under Section 1201(a)(1). Congress intended that Section
1201(a)(2) prohibition against such tools to be a “meaningful protection
and enforcement of the copyright owner’s right to control access to his or her copyrighted
work.” Burton Decl., Ex. N,
H.R. Rep. No. 105-551, Pt. 1, at 18.
(emphasis added)
C. UNAUTHORIZED
USE.
In
stark contrast to the Sections 1201(a)(1) and (2), Section 1201(b) is not
directed at unauthorized access, but at more traditional unlawful
behavior. It prohibits tools which
could be used to facilitate a different kind of circumvention. By its own terms it is concerned with
circumventions of those technological measures that protect “a right
of a copyright owner.” The legislative history makes clear
that Section 1201(b) does not concern itself with unauthorized access to
copyrighted works, but rather the unauthorized use of copyrighted material once authorized
access is obtained. Congress noted
that the “subsequent actions of a person once he or she has obtained
authorized access to a copy of a work protected under Title 17, even if such
actions involve circumvention of additional forms of technological protection
measures” are not covered under Section 1201(a). Burton Decl., Ex. N, H. Rep. No.
105-551, pt. 1, at 18; see also Burton Decl., Ex. P, S. Rep. No. 105-190, at 28 (1998).
If
the circumvention addressed under 1201(a) is the electronic equivalent of
breaking into a locked room in order to obtain a copy of a book, then the
circumvention addressed under 1201(b) is the electronic equivalent of
reproducing and distributing multiple copies of a book purchased from Barnes
& Nobles. Once lawful access
is obtained copyright holders lose control over the work in several
respects. The fair use doctrine,
for example, prevents copyright owners from barring or demanding a royalty for
the use of a quotations in a critique of the work. See
17 U.S.C. § 107 (laying out the factors of fair use).[9]
The right to fair use is deeply rooted in the law of copyright.[10]
Congress recognized that once an individual has gained lawful access to a copyrighted work, there are
authorized uses which can be made of a work, irrespective of the wishes of a
copyright owner. Because of the
significant differences between the range of activities permitted once lawful
access is obtained, Congress used a different scheme to address unauthorized
use.
While
Section 1201(b) is clearly aimed at unauthorized uses of lawfully obtained
(accessed) materials, it only prohibits the tools which could be used to
achieve such unauthorized uses.
There is no underlying substantive prohibition. Unlike its close cousin, Section
1201(a)(2), Section 1201(b) does not have a complimentary provision prohibiting
the act of circumventing usage control measures. Circumvention of usage restrictions is not prohibited under
the DMCA. While the DMCA does not
contain a general ban on the circumvention of usage control technologies,
Section 1201(b) does ban the narrow range of tools which could allow
circumvention of those usage control technologies which protect the rights of a
copyright holder. That is, those
technologies which a copyright holder may employ to prevent unauthorized use of his works. Such unauthorized uses constitute
copyright infringement.
Congress’
determination not to include a prohibition against the circumvention of usage
control technologies was a deliberate decision made in recognition of the right
to exercise fair use once copyrighted material had been lawfully obtained.
As the Copyright Office has noted, there
is no prohibition of the act of circumvention of copy controls in
recognition of the rights of an owner of a copyrighted work to enable fair use:
The type of technological measure addressed
in section 1201(b) includes copy-control measures and other measures that
control uses of works that would infringe the exclusive rights of the copyright
owner. . . . unlike section 1201(a), which prohibits both the conduct of
circumvention and devices that circumvent, section 1201(b) does not prohibit
the conduct of circumventing copy control measures. The prohibition in section
1201(b) extends only to devices that circumvent copy control measures. The
decision not to prohibit the conduct of circumventing copy controls was made,
in part, because it would penalize some noninfringing conduct such as fair use.
Exemption to Prohibition on Circumvention
of Copyright Protection Systems for Access Control Technologies, 65 Fed. Reg.
64,557 (2000) (codified at 37 C.F.R. § 201) (emphasis added).
The
copyright office’s conclusions are borne out by the legislative history:
. . . where access is authorized, the traditional defenses to copyright
infringement, including fair use, would be fully applicable. So, an individual would not be able to
circumvent in order to gain unauthorized access to a work, but would be able to
do so in order to make fair use of a work which he or she has lawfully
acquired. Burton Decl., Ex. N,
H.R. Rep. 105-551, pt. 1, at 18 (1998)(emphasis added).
Once
lawful access to a protected work is obtained, circumvention for purposes of
enabling fair use is not prohibited.
Congress in fact anticipated that this would occur. Circumvention of copy
controls for purposes of fair use is legal
and sanctioned conduct. By its
refusal to prohibit the act of circumventing usage controls, Congress expressed
its intent that society have the ability to continue to make non-infringing
unauthorized uses of works. The
wording in Section 1201(b), protecting “the rights of a copyright
holder,” reflects this intention.[11]
The
tools prohibited by Section 1201(b) are those tools which could be used to
accomplish the unlawful circumvention recognized by that section. That is, tools which can be used for
purposes of copyright infringement
[T]he reason there is no prohibition on
conduct [under Section 1201(b)] akin to the prohibition on circumvention
conduct in [Section 1201(a)(1)] is that the basic provision itself is necessary
because prior to this act, the conduct of circumvention was never before made
unlawful. The device limitation in
[Section 1201(a)(2)] enforces this new prohibition on conduct. The copyright law has long forbidden
copyright infringements so no new prohibition was necessary. The device limitation in [Section
1201(b)] enforces the longstanding prohibitions on infringements.
Burton Decl., Ex. P, S. Rep. No. 105-190, at 12 (1998)
(emphasis added).
Thus,
only those tools which
are “primarily designed” to circumvent usage control technologies
for the unlawful purpose of infringement are prohibited.
III.
SECTION 1201(b) IS UNCONSTITUTIONALLY VAGUE AS APPLIED
TO
ELCOMSOFT
A. THE
VAGUENESS STANDARD.
The
due process clause of the Fifth Amendment to the United States Constitution
requires that a statute clearly delineate the conduct which it intends to
prohibit. A statute violates due
process if its prohibitions are not clearly defined. Grayned v. City of Rockford, 408 U.S. 104, 108 (1972). “Vagueness may invalidate a criminal law for either of
two independent reasons. First, it may fail to provide the kind of notice that
will enable ordinary people to understand what conduct it prohibits; second, it
may authorize and even encourage arbitrary and discriminatory
enforcement.” City of
Chicago v. Morales, 527
U.S. 41, 56 (1999).
“The
degree of vagueness that the Constitution tolerates – as well as the
relative importance of fair notice and fair enforcement -- depends in part on
the nature of the enactment.”
Village of Hoffman Estates v. The Flipside, Hoffman Estates, Inc., 455 U.S. 489, 498 (1982). A statute that imposes criminal
penalties will be subject to more critical scrutiny than will other statutes
challenged on vagueness grounds.
See, e.g., IDK, Inc. v. Clark County, 836 F.2d 1185, 1198 (9th Cir. 1988); Flipside, supra, 455 U.S. at 498-499. Furthermore, just as “a scienter requirement may
mitigate a law’s vagueness, especially with respect to the adequacy of
notice to the complainant that his conduct is proscribed,” Flipside,
supra, 455 U.S. at 499,
where so-called “multi-purpose” devices are at issue (e.g., drug paraphernalia, burglary tools), a
law without a scienter requirement warrants a heightened scrutiny because an
individual must be able to know when his or her conduct is unlawful.
The
legislative history and the language of the DMCA establish that Congress did
not prohibit the act of circumventing usage control technologies. For reasons directly related to that
decision, it also did not ban all tools which might be used to circumvent usage control
technologies. Congress sought to
prohibit only those tools which are intended to be used to circumvent usage
control technologies for the purpose of copyright infringement. Section 1201(b) does not provide a
constitutionally adequate notice of this prohibition.
“It
is established that a law fails to meet the requirements of the Due Process
Clause if it is so vague and standardless that it leaves the public uncertain
as to the conduct it prohibits. . . .” City of Chicago v. Morales, 527 U.S. at 56 (1999), citing Giaccio
v. Pennsylvania, 382 U.S.
399, 402-403 (1966).
The
general rule is that “[a] criminal statute is not vague if it provides
adequate notice in terms that a reasonable person of ordinary intelligence
would understand that [his] conduct is prohibited.” United States v. Martinez, 49 F.3d 1398, 1403 (9th Cir.1995), cert.
denied 516 U.S. 1065 (superseded by statute on other grounds). “The requirement involves an
understanding by a putative actor about what conduct is prohibited. . . . Notice that does not provide a
meaningful
understanding of what conduct is prohibited
is vague and unenforceable.”
Free Speech Coalition v. Reno, 198 F.3d 1083, 1095 (9th Cir. 1999).
“The
purpose of the fair notice requirement is to enable the ordinary citizen to
conform his or her conduct to the law. ‘No one may be required at peril
of life, liberty or property to speculate as to the meaning of penal
statutes.’” City of Chicago v. Morales, 527 U.S. at 58 (1999), citing Lanzetta
v. New Jersey, 306 U.S.
451, 453, 59 S.Ct. 618, 83 L.Ed. 888 (1939).
B. SECTION
1201(b) FAILS TO SPECIFY AN UNLAWFUL PURPOSE.
Section
1201(b) does not directly prohibit the primary unlawful conduct, but is instead
aimed at prohibiting other conduct intended to facilitate it. It parallels Section 1201(a)(2), which
prohibits technologies used to facilitate the unlawful circumvention of access
control technologies. In drafting
Section 1201(b) Congress borrowed almost verbatim from the language of Section
1201(a)(2). Unfortunately, this
has created difficulties because of the differences in the underlying conduct which is prohibited. Section 1201(a)(2) makes explicit
reference to the unlawful purpose which the prohibited tools facilitate (i.e., circumvention of access control
technology). Because the
circumvention of access controls is completely banned, all tools which are intended to facilitate
this purpose are also completely banned.
There is no ambiguity about which tools are banned under Section
1201(a)(2).
Section
1201(b) constitutional shortcomings arise from a simple but significant
omission. It does not itself
identify the unlawful conduct which would be facilitated by the tools it bans. Absent identification of the unlawful
purpose which the tools facilitate, Section 1201(b) is doomed to inherent
vagueness because not all
tools are banned, and the language of the statute renders it impossible to
determine which tools it in fact bans.
Unlike
Section 1201(a)(2), under Section 1201(b) all circumventions of usage control technologies are not banned. Thus, unlike Section 1201(a)(2), the unlawful conduct which
may be facilitated by the prohibited tools must be determined, not by explicit
reference as in Section 1201(a)(2), but by inference from the phrase “. .
. protects a right of a copyright owner under this title. . .” However, because of the nature of the
relationship between copyright owner rights and fair use, reference to this
phrase provides little help in determining what tools are prohibited by Section
1201(b). Any circumvention of a
usage control technology for an authorized purpose must almost invariably
involve circumvention of a technology which “protects a right of a copyright
owner.”
As
set forth fully in the preceding sections of this brief, Congress intended to
permit the circumvention of usage control technologies for the purpose of fair
use once a copyrighted work had been lawfully obtained and accessed. Under copyright law, the rights of a
copyright owner and the “right” of fair use are inexorably
intertwined. Fair use is in fact a
statutory limitation on the rights of a copyright owner. See 17 U.S.C. Section 107. Fair use does not exist in a vacuum but always coincides
with complementary copyright owner rights. For this reason, circumvention of a usage control technology
for the purpose of enabling fair use must almost by definition involve the
circumvention of a technology which protects a right of a copyright owner. Yet, one such circumvention is
prohibited (as are the tools to facilitate it) and the other is not. Reference to the statute’s
language does not enable an individual to determine which circumvention (and
therefore which tool) is prohibited.
This conundrum could only be resolved through inclusion of an explicit
reference to the prohibited conduct.[12]
That is, if Section 1201(b) were to specifically refer to the underlying
unlawful conduct - - circumvention for an unlawful purpose.
The
use of the phrase “primarily designed or produced for the purpose of
circumventing protections. . .” in Section 1201(b)(1)(A) (one of the
subsections directly at issue in this case) only compounds this intrinsic
ambiguity. It is unclear if the
“primarily designed” language is intended to only modify the phrase
“for the purpose of circumventing protections afforded by a technological
measure. . .” or whether this language also modifies the remainder of the
phrase: “that effectively
protects a right of a copyright owner. . .” In other words, must the prohibited tool be designed merely
to circumvent any protective
technological measure or must it be specifically designed to accomplish an
unlawful circumvention? This is a
distinction not without significant consequence. A tool designer, like Elcomsoft, who designs a tool for a
lawful purpose - - circumventing a usage
///
control technology in order to enable fair
use rights - - cannot determine the circumstances under which his conduct will
violate the statute.
Under
the first interpretation there is no scienter required to violate this section;
the designer of any
circumvention tool is guilty irrespective of whether the circumvention tool is
designed for lawful or unlawful purposes.
By definition, any circumvention tool is “primarily designed” to “circumvent[] . .
. a technological measure.”
Under
the second interpretation of 1201(b)(1)(A), a tool designer will not violate
the statute as long as the technological measure which the tool is designed to
circumvent does not also protect a right of a copyright owner. However, this interpretation presents
insurmountable difficulties in application because of the virtual impossibility
of finding a situation in which the right of fair use is not also encompassed
within the same technology which protects a “right of the copyright
owner.” If in making a tool
which is primarily designed for the purpose of enabling the right of fair use
the tool must necessarily
circumvent a technological protection - - which is the fact in virtually every
case - - then the designer will have violated Section 1201(b)(1)(A) despite a
contrary intent.[13]
Recognition of this fact is the reason that Congress specifically
permitted acts of circumvention for the purpose of fair use.
Thus,
application of this second interpretation produces a result identical to the
first interpretation. That is, an
ostensible ban on tools designed for a lawful purpose. While it is arguable that Congress
could have banned all such tools, thus severely restricting or eliminating the
fair use of digital media, they could have done so more directly and easily. More importantly, the legislative
history as discussed infra
in Part II of this brief makes clear that this is the exact opposite of what
they intended to do.
C. SPECIFICATION
OF AN UNLAWFUL PURPOSE IS ESSENTIAL.
These
problems of vagueness and ambiguity arise because Section 1201(b) fails to
refer to any unlawful purpose.
When not all circumventions of usage control technologies are
prohibited, the mere circumvention of a usage control technology without
reference to the purpose for that
circumvention cannot be a violation. However, without the appropriate language, ascertaining when
a violation occurs is impossible.
In order to eliminate this problem, statutes of this type have as an
essential component of their structure, a scienter provision which connects the
putative violator’s actions and intent to a specified unlawful
purpose..
The
lack of such a scienter provision here is startling when contrasted with its
presence in Section 1201(a)(2), and other similar statutes.
1. Drug
Paraphernalia Statutes.
The
cases discussing the need for a scienter provision in “drug
paraphernalia” statutes are instructive here. In that context, the Supreme Court has recognized that
“a scienter requirement may mitigate a law’s vagueness, especially
with respect to the adequacy of notice to the complainant that his conduct is
proscribed.” Flipside, supra, 455 U.S. at 499. Notwithstanding, Courts reviewing such statutes –
which often concern products such as pipes that could be used for lawful and
unlawful purposes – were wary of so-called “scienter”
requirements that did not tie the requisite intent to unlawfulness:
it is evident that . . . the
“scienter” meant must be some other kind of scienter than that
traditionally known to the common law – the knowing performance of an act
with intent to bring about that thing, whatever it is, which the statute
proscribes, knowledge of the fact that it is so proscribed being immaterial. .
. . Such scienter would clarify
nothing; a clarificatory
“scienter” must envisage not only a knowing what is done but a
knowing that what is done is unlawful or, at least, so “wrong” that
it is probably unlawful.
Murphy v. Matheson, 742 F.2d 564, 573 (10th Cir.
1984) (emphasis added), citing, Note, The Void-for-Vagueness Doctrine in the Supreme Court, 109 U.Pa.L.Rev. 67, 87 n. 98 (1960)
(cited in Flipside, 455
U.S. at 499 n. 14). As pointed out
in Levas & Levas v. Village of Antioch, Illinois, 684 F.2d 446, 453 (7th Cir.1982), a scienter
requirement is the only practical way to provide notice that a multi-purpose
device is unlawful:
Here the scienter requirement is not simply
a circular reiteration of the offense – an intent to sell, offer for
sale, display, furnish, supply or give away something that may be classifiable
as drug paraphernalia.
Rather the scienter requirement determines what is classifiable as drug
paraphernalia: the violator must design the item for drug use, intend it for
drug use, or actually employ it for drug use. Since very few of the items a paraphernalia ordinance
seeks to reach are single-purpose items, scienter is the only practical way
of defining when a multi-purpose object becomes paraphernalia. So long as a violation of the ordinance
cannot be made out on the basis of someone other than the violator's knowledge,
or on the basis of knowledge the violator ought to have had but did not, this
sort of intent will suffice to distinguish “the paper clip which holds
the pages of this memorandum of opinion from an identical clip which is used to
hold a marijuana cigarette.”
Id.
To this end, the government should not be
heard to argue that Section 1201 is akin to the drug paraphernalia statute like
the one scrutinized in Flipside, 455 U.S. 489 (1982). In Flipside, the Supreme Court reviewed a void-for-vagueness
constitutional challenge to a local ordinance. “The ordinance [made] it unlawful for any person
‘to sell any items, effect, paraphernalia, accessory or thing which is
designed or marketed for use with illegal cannabis or drugs, as defined by
Illinois Revised Statutes, without obtaining a license therefor.’” Flipside, 455 U.S. at 492. The Flipside Court concluded that “the standard
[designed for use] encompasses at least an item that is principally used with
illegal drugs by virtue of its objective features, i.e., features designed by the
manufacturer.” Id. at 490. Based on this finding, the Court determined that it was
“sufficiently clear that items which are principally used for nondrug
purposes, such as ordinary pipes, are not ‘designed for use’ with
illegal drugs.” Id. at 501. The Court held that the ordinance was “reasonably
clear in its application to the complainant.” Id.
at 505.
Section
1201 as applied in this case is unlike the statute in Flipside.
Elcomsoft is being charged with a crime where its tool was designed for
lawful purposes. Indeed, under the
government’s reading of Section 1201, any person who makes a circumvention tool will be subject
to criminal prosecution because it is irrelevant whether a person intends to
make a device for an authorized purpose.
Accordingly, just as Elcomsoft is being prosecuted in this case for
manufacturing the AEBPR program, under the government’s view a person
could be charged for manufacturing drug paraphernalia if that person made an
ordinary pipe.
2. Burglary
Tools Statutes.
The
analogous state statutes prohibiting the possession or use of burglarer tools
provide a basis for analogous comparison.
Like Section 1201(b) “the purpose of all such statutes is to deter
or prevent the commission a prohibited act by enabling law enforcement
authorities to act before the prospective violator has had the opportunity to
gather his tools, weapons, and plans and strike.” See Validity, Construction, and Application of
Statutes Relating to Burglars’ Tools, 33 A.L.R. 3d 798, 805.
In
achieving this purpose, however, virtually all of the statutes contain a
scienter provision which ties the use or possession of burglarious tool to an
unlawful purpose, burglary. The
relevant California penal code provision provides:
Every person having upon him or her in his
or her possession a picklock, crow, keybit, crowbar, screwdriver, vice grip
pliers, water-pump pliers, slide-hammer, slim jim, tension bar, lock pick gun,
tubular lock pick, floor-safe door puller, master key, or other instrument or
tool with intent feloniously to break or enter into any building, railroad car, aircraft, or
vessel, trailer coach, or vehicle as defined in the Vehicle Code, or who shall
knowingly make or alter, or shall attempt to make or alter, any key or other
instrument above named so that the same will fit or open the lock of a
building, railroad car, aircraft, or vessel, trailer coach, or vehicle as
defined in the Vehicle Code, without being requested so to do by some person
having the right to open the same. . .
California Penal Code, Section 466
(emphasis added).
It
is the presence of similar language which allows these statutes to avoid being
struck because of vagueness. In State
v. Palmer, 2 Wash. App.
863, 471 P. 2d 118 (1970), the
Supreme Court was called upon to consider whether the Washington state burglary
statute was void for vagueness.
That statute provided:
Every person who shall make or mend or
cause to be made or mended, or have in his possession in the day or nighttime
any engine, machine, tool, false key, pick lock, bit, nippers or implement
adapted, designed or commonly used for the permission of burglary, larceny, or
other crime, under circumstances evincing an intent to use or employ or allow
the same to be used or employed in the commission of a crime or knowing that
the same is intended to be so used, shall be guilty of a gross misdemeanor.
R.C.W.A. 9.19.050.
The Washington Supreme Court found that:
The conduct forbidden by the statute is the
possession of tools or devices suitable for and commonly used in unlawful
breaking and entering, with intent to use those tools for that unlawful
purpose. As noted by the court and the State
v. McDonald, 74 Wash. 2d
474, 445 p.345 (1968), ‘we think even the most stupid member of the house
breaking cult would understand that such undesirable conduct falls within the
prohibition of this statute.’
We agree and do not believe that the statute is void for vagueness.
Id. at 471 P.2d 120.
The exact opposite is the case under
Section 1201(b). Here, even the
most intelligent and honest software tool maker can not determine how to make a
tool that would enable the lawful exercise fair use.
3. Other
Federal Statutes.
A
review of analogous federal statutes also revealed the presence of the
requisite scienter component. 18
U.S.C. Section 2512 provides a relevant part:
(1) except as otherwise specifically
provided in this chapter, any person who intentionally -
(b)
manufactures, assembles, possesses, or sells any electronic, mechanical or
other device knowing or having reason to know that the design of such device
renders it primarily useful for the purpose of the surreptitious
interception of wire,
oral, or electronic communications, and that such device or any component
thereof has been or will be sent through the mail or transported in interstate
or foreign commerce. . .
Numerous cases construing the statute have
determined that the use of the term “surreptitious” indicates that
the prohibited devices be used in an illegal or unauthorized manner. See e.g., United States v. Lande, 986 F.2d 907 (9th Cir. 1992); United
States v. Biro, 143 F.3d
1421, 1428 (11th Cir. 1998).
Finally, 47 U.S.C. Section 553 prohibits the manufacture or distribution
of devices which can be used to receive cable telecommunications services.
(1)
no person shall intercept or receive or assist in intercepting or
receiving any communications service offered over a cable system, unless specifically
authorized to do so by a
cable operator or as may be specifically authorized by law.
(2) For the purpose of this section, the
term “assist and intercepting or receiving” shall include the
manufacture or distribution or equipment intended by the manufacturer or
distributor (as the case may be) for unauthorized reception of any communication service offered over
a cable system in violation of subparagraph (1).
Unlike the DMCA, this statute specifically
connects the manufacturer’s actions and intent with the relevant unlawful
purpose.
D. DETERMINING
WHICH TOOLS ARE PROHIBITED IS IMPOSSIBLE.
In
order to be enforceable, at the very least, a law must allow a person to
conform his or her conduct to a “comprehensible standard.” Coates v. City of Cincinnati, 402 U.S. 611, 614 (1971). Unfortunately, under 1201(b), there are
no standards at all
governing when a device is lawful or unlawful. No guidelines are provided regarding the manufacture and/or
marketing of a device which allows authorized circumvention of copy
controls. No objective criteria
are provided for those seeking to create tools that will allow lawful owners of
copyrighted material to exercise their rights to fair use. It cannot now be that Elcomsoft is
guilty of a crime when it was acting in a manner contemplated – indeed
encouraged – by Congress.
The following diagram is helpful in
demonstrating the tremendous uncertainties Elcomsoft and other similarly
situated companies face in determining if the actions they undertake are permissible
under Section 1201(b).
In
the first example [1] the usage control technology only encompasses a copyright
owner rights and no fair use rights are involved (for the reasons discussed
earlier, an impossible situation).
Circumvention of the usage control technologies constitutes a violation
of the statute under any interpretation of the “primarily designed”
language. More importantly,
because the usage control
technologies only
encompass copyright owner rights the circumvention of the protection can only be for an unlawful purpose.
In
the second example [2] the usage control technologies only encompass fair use
rights (no copyright owner rights are involved - - another impossible
situation). Here the statute would
still be violated under the first
interpretation of the primarily designed language. That interpretation only requires that the tool be primarily
designed to circumvent any protective technology, without regard to whether or
not that technology protects a copyright owner’s right, or what the tool
maker’s purpose may be.
Though the purpose of the circumvention can here only be lawful (because no copyright owner
rights are implicated), a tool maker could be liable.
In
the third (real world) example, the usage control technology protects a bundle
of rights, both copyright owner rights and user rights. If the tool maker’s purpose in
circumventing the protective technology is not considered then again any tool would violate the statute. In this example either interpretation
of the primarily designed language would result in a violation (for the same
reason as example No. 1). Most
significantly, even if the tool maker’s sole purpose in designing the
tool were to enable fair use rights, he would still be in violation of the
statute because those rights are within a usage control technology which
“protects a right of a copyright owner.”
The
right to lawfully circumvent usage controls would be meaningless, of course, if
tools that facilitate such lawful circumvention were not allowed. Indeed, for lawful owners of ebooks who
lack the expertise to circumvent password encryption and other usage
restrictions in the Adobe eBook Reader (like the users identified above), the
AEBPR software is the only way to effectuate the uses to which the owner is
legally entitled. Congress
certainly contemplated tools like AEBPR.
It
would seem, therefore, that Elcomsoft’s product is not only lawful under
the statute, but that the product deserves praise – for AEBPR is
necessary to further the policies surrounding copyright law. Indeed, if the lawful owner of an ebook
does not have the ability to exercise his or her rights, then that owner has no
rights at all, and the framework of Section 1201 would be eviscerated. For the reasons discussed earlier in
this brief at length, it is clear that Congress did not intend to ban all circumvention tools and thereby render its
express authorization of lawful circumvention a cruel joke. Despite Congress’ clear
intention, Section 1201(b) does not clearly define how the designer of a tool
intended for a lawful purpose can achieve this purpose without violating its provisions.
E.
APPLICATION
OF SECTION 1201(b) TO ELCOMSOFT.
Whatever
its status as a general matter, it is clear that Section 1201(b) is
unconstitutionally vague as applied to this case. See Posters
‘N’ Things, Ltd. v. United States, 511 U.S. 513, 525, 114 S. Ct. 1747, 1754
(1994). No better case demonstrates
the ambiguities inherent in Section 1201(b). Elcomsoft manufactured and marketed a tool that allows the
lawful owner of an eBook to circumvent usage control technologies for the
lawful purpose of permitting fair use of that eBook. Yet, Elcomsoft could not have known from reading the statute
that its conduct in this regard would subject it to criminal consequences.[14]
In
addition, the vagueness of Section 1201(b) permits precisely the sort of
arbitrary enforcement that the void for vagueness doctrine is designed to guard
against. Notwithstanding that
Congress contemplated the kind of tool that Elcomsoft advertised and sold on
the Internet, the government is using the imprecision of Section
1201(b)’s language to support a criminal case against a Russian
defendant, on behalf of a “victim” which is a very powerful local
software company. Adobe, a
well-known company with a strong presence in the Silicon Valley, felt
threatened by Elcomsoft’s tool because it exposed weaknesses in the
security features of its eBook products.
Rather than fixing the flawed security of its eBook software, Adobe went
to the federal authorities claiming that a Russian company was violating
Section 1201. The federal
authorities, with Adobe’s assistance and reliance upon a vague, untested,
but controversial statute, quickly arrested a visiting Elcomsoft employee. This conduct illustrates precisely the
evils attending delegation of basic policy
matters “for resolution on an ad
hoc and subjective
basis” by those who wield prosecutorial power. Grayned v. City of Rockford, 408 U.S. 104, 108-09 (1972).
“Under
the rule of lenity, an ambiguous criminal statute is to be strictly construed
against the government.” United
States v. Bin Laden, 92
F.Supp. 2d 189, 216 (S.D.N.Y. 2000); People v. Materne, 72 F.3d 103, 106 (9th Cir. 1995). Elcomsoft cannot be subjected to
criminal prosecution because it would have to guess at the meaning of Section
1201(b) or because it may differ with the government as to the statute’s
application. See, Connolly v. General Construction
Company, 269 U.S. 385,
391, 46 S.Ct. 126, 127 (1926). It
is clear that under the well recognized principles of statutory construction,
application of Section 1201(b) to Elcomsoft violates its due process rights.
IV. CONCLUSION
For
all of the foregoing reasons, defendant Elcomsoft requests that the indictment
be dismissed with prejudice in its entirety.
Dated: January ____, 2002 DUANE
MORRIS LLP
By:___________________________
JOSEPH
M. BURTON
Attorneys
for Defendant
SF\28404.1
United States of America v. Elcom Ltd.,
a/k/a Elcomsoft Co., Ltd.
Case No.: CR 01-20138 RMW
PROOF OF SERVICE
I am a resident of the state of California, I am over the age of 18 years, and I am not a party to this lawsuit. My business address is Duane Morris LLP, 100 Spear Street, Suite 1500, San Francisco, California 94105. On the date listed below, I served the following document(s):
MOTION TO DISMISS INDICTMENT FOR VIOLATION OF DUE PROCESS
____ by transmitting via facsimile the document(s) listed above to the fax number(s) set forth below on this date during normal business hours. Our facsimile machine reported the "send" as successful.
____ by placing the document(s) listed above in a sealed envelope with postage thereon fully prepaid, in the United States mail at San Francisco, California, addressed as set forth below.
I am readily familiar with the firm's practice of collecting and processing correspondence for mailing. According to that practice, items are deposited with the United States mail on that same day with postage thereon fully prepaid. I am aware that, on motion of the party served, service is presumed invalid if postal cancellation date or postage meter date is more than one day after the date of deposit for mailing stated in the affidavit.
John Keker
Keker & Van Nest
710 Sansome Street
San Francisco, CA 94111
____ by placing the document(s) listed above in a sealed envelope with postage thereon fully prepaid, deposited with Federal Express Corporation on the same date set out below in the ordinary course of business; to the person at the address set forth below, I caused to be served a true copy of the attached document(s).
Scott H. Frewing
Assistant United States Attorney
United States District Court
Northern District of California
280 South First Street
San Jose, CA 95113
_ by causing personal delivery of the document(s) listed above to the person at the address set forth below.
_ by personally delivering the document(s) listed above to the person at the address set forth below.
I declare under penalty of perjury under the laws of the State of California that the above is true and correct.
Dated: January ___, 2002 ________________________________
Lea A. Chase
SF-28404
[1] For example, after Elcomsoft software helped local officials in Fort Bend, Texas, solve a crime they were investigating, the Sheriff’s Office appointed an Elcomsoft employee “Honorary Deputy Sheriff.” Declaration of Alexander Katalov, Ex. A.
[2] PDF (Portable Document Format) is a file format that has captured all the elements of a printed document as an electronic image such that a user can view, navigate, print, or forward the document to someone else. PDF files may be created using Adobe Acrobat, Acrobat Capture, or similar products. To view and use the files, a user needs Adobe Acrobat Reader. PDF files are especially useful for documents such as magazine articles, product brochures, or flyers in which a viewer wants to preserve the original graphic appearance online.
[3] The indictment charges that sales
were made over the Internet through the use of an on-line payment service,
“RegNow:”
[D]efendant Elcomsoft and others made the AEBPR program available for purchase on the Elcomsoft.com website. Individuals wishing to purchase the AEBPR program were permitted to download a partially functional copy of the program from the Elcomsoft.com and then were directed to pay approximately $99 to an online payment service, RegNow, based in Issaquah, Washington. Upon making a payment via RegNow website, Elcomsoft and other persons provided purchasers a registration number permitting full use of AEBPR program. Indictment, para. 3.
[4] If Elcomsoft sought for others to use the AEBPR for unlawful purposes, it very well could have posted its product and the code on the Internet for free. Ironically, under those circumstances, no criminal charges could have been brought against Elcomsoft because it would not have published the code for financial gain. See Section 104 (criminal penalty for those who violate Section 1201 wilfully and for financial gain).
[5] Before that time, however, Register Now apparently had posted a notice on its web site that the software was only for use with eBooks which were owned by the user. Burton Decl., Ex. D, September 5, 2001 FBI Interview of Aaron Mathieson.
[6] The FBI also has interviewed Mr. Mathieson. Burton Decl., Ex. D, September 5, 2001 FBI Interview of Aaron Mathieson.
[7] “Security Testing” is authorized by the DMCA. 17 U.S.C. § 1201(j).
[8] Whether Congress’ handling of these fair use concerns passes constitutional muster is the subject of a companion Motion to Dismiss based upon First Amendment objections.
[9] Likewise, the first sale doctrine prevents copyright owners from barring or demanding a royalty upon subsequent disposition of published copies. See 17 U.S.C. § 109 (exempting transfer of a particular copy from the copyright owner’s exclusive rights).
[10] The Supreme Court has explained that
fair use has constitutional underpinnings:
From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright's very purpose, ‘to promote the Progress of Science and useful Arts . . . .’ U.S. Const., Art. I, Sec. 8. For as Justice Story explained, ‘in truth, in literature, in science and in art, there are and can be few, if any, things, which in the abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows and must necessarily borrow, and use much which was well known and used before.’ Similarly, Lord Ellenborough expressed the inherent tension in the need simultaneously to protect copyrighted material and to allow others to build upon it when he wrote, ‘while I shall think myself bound to secure every man in the enjoyment of his copy-right, one must not put manacles on science.’ Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994) (citations omitted).
[11] In December 1996, the World
Intellectual Property Organization (“WIPO”), held a diplomatic
conference in Geneva that led to the adoption of the WIPO Copyright Treaty. Article 11 of treaty provides in relevant
part that contracting states “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.” WIPO Copyright Treaty, Apr. 12, 1997,
Art. 11, S. Treaty Doc. No. 105-17 (1997), available at 1997 WL 447232
(emphasis added).
As such, the Treaty called for the establishment of remedies to protect against the circumvention of technology that protected copyrighted works. The Treaty also recognized by its plain terms, however, that under certain circumstances circumvention of the technology was “permitted by law.”
[12] For example Section 1201(b)(1)(A)
could simply have stated:
(A) is primarily designed or produced for the purpose of [unlawfully] circumventing protection afforded by a technological measure that effectively protects a right of a copyright owner under this title [17 U.S.C.A. Section 1, et seq.] in a work or a portion thereof;
[13] Elcomsoft is also charged with two
counts of violation Section 1201(b)(1)(C), which provides that “[n]o person
shall manufacture . . . in any . . . device . . . that . . . is marketed by
that person . . . for use in circumventing protection afforded by a
technological measure that effectively protects a right of a copyright owner
under this title in a work or a portion thereof.”
Like the problems presented with respect to the “primarily designed” language of Section 1201(b)(1)(A), this section does not specify whether the marketing of a device that is designed simply to accomplish circumvention is prohibited, or whether the device also must be marketed to infringe a copyright. Again, the government’s view appears to be that the mere marketing of a device that circumvents a copy control is all that is required to violate Section 1201(b)(1)(C). There is no practical way of defining when one has marketed an authorized or unauthorized device.
[14] The lack of adequate warning inherent in Section 1201(b) is exacerbated in this case because Elcomsoft is a foreign corporation. It had no warning or reason to expect that Section 1201(b) would be applicable to its conduct. See, Burton Decl., Ex. C.