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Client Alerts

Ninth Circuit Breaks with Federal Circuit and Finds DMCA Violation, Issues Permanent Injunction for Access without Copyright Infringement

December 22, 2010

Client Alerts

Ninth Circuit Breaks with Federal Circuit and Finds DMCA Violation, Issues Permanent Injunction for Access without Copyright Infringement

December 22, 2010

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Ninth Circuit Breaks with Federal Circuit and Finds DMCA Violation, Issues Permanent Injunction for Access without Copyright Infringement

Last week, the Ninth Circuit Court of Appeals broke with the position of the Federal Circuit, finding that “bot” software which automatically played a computer game on behalf of a user violated the Digital Millennium Copyright Act (DMCA) by providing access to copyrighted material, even though there was no copying, and hence no copyright infringement, of the underlying game software.

In MDY v. Blizzard, the Ninth Circuit addressed liability under the DMCA for creators of devices or software that access a third party’s products that incorporate copyrighted materials. Such devices may include, by way of example, ink-jet cartridges, medical devices, garage-door openers, microchips, and consumer software. The implications of Blizzard could create exposure under the DMCA for companies engaged in the manufacture and sale of compatible third-party products, including the possibility of injunctive relief, statutory damages, and attorneys’ fees.

Blizzard, maker of the popular World of Warcraft online computer game, sued MDY over “bot” software that automatically played World of Warcraft, in violation of Blizzard’s terms of service. Blizzard alleged the software caused copyright infringement because a person running the “bot” software became an unlicensed user of the software. Blizzard also alleged the software violated the DMCA because it circumvented technological protections that protected copyrighted material (various aspects of the game itself).

On Blizzard’s copyright claim, the court found no liability. According to the Ninth Circuit, a simple violation of terms of service with only use but not actual copying of the underlying copyrighted material is not copyright infringement. The Court said such a violation sounds in contract, and thus the special remedies afforded for copyright are not available.

On the DMCA claim, the Ninth Circuit held that merely circumventing a measure that controls access to a copyrighted work, even where the measure does not protect against copying, can constitute a DMCA violation. Accordingly, the court held that MDY’s “bot” software violated the DMCA and affirmed a permanent injunction against the defendant from distributing its software. In so doing, the Ninth Circuit’s holding broke with other courts, most notably the Federal Circuit, to find that the “bot” software violated the DMCA. The Federal Circuit held in the Chamberlain case that the DMCA could be violated only where a technological control measure served the purpose of protecting an exclusive right provided by the Copyright Act. The Ninth Circuit explicitly disagreed; noting the plain language of the statute provided no such limitation.

The Blizzard case arose in the context of software running on home computers, but the issues raised and decided are broadly applicable in any context where a device is designed to prevent others from accessing copyrighted material, a situation that may arise when a manufacturer intends to prevent third parties from developing devices that work with its products. As a decision now binding in the Ninth Circuit, where a great deal of software is created and sold, it now stands as the most important guide in avoiding DMCA liability. The complete analysis in any given case will be highly fact specific, both as to the design of the original device and that of the software or hardware that is intended to be compatible with that device. Further complicating the issue is the circuit-split created by this opinion. Still, these opinions provide helpful guideposts to avoid liability for anyone in an affected business.

If you have any questions about this area of law, please contact your Fish attorney or any of the following members of our Copyright Group who specialize in DMCA issues:

Heidi Harvey
Of Counsel
Boston office
harvey@fr.com
617-521-7815
Adam Kessel
Associate
Boston office
kessel@fr.com
617-368-2180
Thomas Brown
Associate
Boston office
tbrown@fr.com
617-521-7834
Kristen McCallion
Associate
New York office
mccallion@fr.com
212-641-2261
© Copyright 2010 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this newsletter has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com.

 

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