Senate Approves Copyright Bill

November 20, 2004. The Senate amended and approved by unanimous consent S 3021, the "Family Entertainment and Copyright Act of 2004" on Saturday, November 20, 2004. The House has yet to approve this large composite bill.

This bill was just introduced on November 20 by Sen. Orrin Hatch (R-UT) and Sen. Patrick Leahy (D-VT). However, it is a composite bill made up mostly of language from bills that have already been the subject of committee hearings, markups, House approval, and/or Senate approval. Also, a pre-introduction draft of this bill was the subject of the story titled "Senate May Consider Intellectual Property Bill" in TLJ Daily E-Mail Alert No. 1,022, November 19, 2004.

Also, on October 9, 2004, the Senate Judiciary Committee approved a package of copyright bills. That bill, numbered HR 2391, is also a composite bill. It is titled the "Intellectual Property Protection Act of 2004", or IPPA. See, text of bill [44 pages in PDF], and text of bill, in HTML, with hyperlinked table of contents, and U.S. Code hyperlinks. See also, story titled "Senate Judiciary Committee Approves Large Collection of Copyright Bills" in TLJ Daily E-Mail Alert No. 994, October 11, 2004. S 3021 adds some provisions to the IPPA, and removes some provisions from the IPPA.

Note that HR 2391, as enacted by the House, is a patent bill. The Senate Judiciary Committee made the content of HR 2391 EH a part of the IPPA, and gave the whole IPPA its number.

Title I: ART Act. Title I of S 3021, as amended, is titled the "Artists' Rights and Theft Prevention Act of 2004", or "ART Act". It is a revised version of S 1932, which the full Senate approved as a stand alone bill on June 25, 2004.

This title includes, among other provisions, criminalization of certain unauthorized recording of motion pictures in a motion picture exhibition facility. § 208 of the IPPA, and § 108 of HR 4077, the "Piracy Deterrence and Education Act of 2004", which the House approved on September 28, 2004, contain similar language. It criminalizes using camcorders to copy movies in motion picture exhibition facilities, such as movie theaters.

Title I also gives movie theater owners limited immunity for detaining violators.

Title I also requires the Register of Copyrights to "establish procedures for preregistration of a work that is being prepared for commercial distribution and has not been published ... for any work that is in a class of works that the Register determines has had a history of infringement prior to authorized commercial distribution". It also provides that infringement actions may be based upon these preregistrations.

Title II: Family Movie Act. Title II of S 3021 is titled the "Family Movie Act", but is also known as the ClearPlay bill.

§ 212 of the IPPA (§ 112 of HR 4007 EH) contains another version of the "Family Movie Act". This provision, which is included with the ClearPlay technology in mind, adds a new ¶ 11 to 17 U.S.C. § 110 (which provides exceptions to the exclusive rights of copyright).

S 3021 contains a content skipping exception: "the making imperceptible, by or at the direction of a member of a private household, of limited portions of audio or video content of a motion picture, during a performance in or transmitted to that household for private home viewing, from an authorized copy of the motion picture, or the creation or provision of a computer program or other technology that enables such making imperceptible and that is designed and marketed for such use at the direction of a member of a private household, if no fixed copy of the altered version of the motion picture is created by such computer program or other technology".

S 3021 does not include the IPPA's language regarding ad skipping. That is, the IPPA provided that the new exception applies only if "no changes, deletions or additions are made by such computer program or other technology to commercial advertisements, or to network or station promotional announcements, that would otherwise be performed or displayed before, during or after the performance of the motion picture".

In other words, under the bill as approved by the Senate, ClearPlay and other companies can market products that skip violent or obscene content, and ads, in movies.

The movie industry opposes the "Family Movie Act".

In contrast, Gigi Sohn, of Public Knowledge, stated in a release after Senate passage that "We strongly support the version of the Family Movie Act, included in the bill, which gives families more control over how they watch movies and television, preserving the right to skip over commercials. The bill will benefit consumers, both in their entertainment choices now, and from the innovation in technology that will result in coming years."

See also, story titled "House CIIP Subcommittee Holds Hearing on DVD Filtering Technology" in TLJ Daily E-Mail Alert No. 903, November 21, 2004.

Title III: Film Preservation. Title III of S 3021 includes the "National Film Preservation Act of 2004" and the "National Film Preservation Foundation Reauthorization Act of 2004". Both of these are in the IPPA.

Sen. Orrin HatchSen. Hatch (at right) spoke in the Senate on November 20. He stated that "These entities have worked successfully to recognize and preserve historically or culturally significant films -- often by providing the grants and expertise that enable local historical societies to protect and preserve historically significant films for the local communities for which they are most important. This fine work will ensure that the history of the 20th century will be preserved and available to future generations." See, Congressional Record, November 20, 2004, at Pages S11692-5,

Title IV. Title IV of S 3021 is the "Preservation of Orphan Works Act". This too is in the IPPA.

The entire substance of this title is as follows: "Section 108(i) of title 17, United States Code, is amended by striking ``(b) and (c)´´ and inserting ``(b), (c), and (h)´´." See, 17 U.S.C. § 108.

Sen. Hatch explained that this "ensures the preservation of valuable historic records by correcting a technical error that unnecessarily narrows a limitation on the copyright law applicable to librarians and archivists. This will strengthen the ability of librarians and archivists to better meet the needs of both researchers and ordinary individuals and will result in greater accessibility of important works."

Title V, Subtitle A: Anticounterfeiting Act. Title V of S 3021 includes a Subtitle A, titled the "Anticounterfeiting Act of 2004", and a Subtitle B, titled the "Fraudulent Online Identity Sanctions Act".

Sen. Hatch stated that the Anticounterfeiting Act of 2004 "amends our criminal and civil anti-counterfeiting laws to ensure that these laws keep pace with the counterfeiters. Traffic in counterfeit copies of goods protected by American copyrights, patents or trademarks has become a multi-billion dollar drain on our economy. The proceeds of this illegal traffic are stolen from legitimate American companies and then used to fund other criminal enterprises. Unlike several of the other bills in this package that provide tools for combating music and movie piracy, the Anticounterfeiting Act is directed primarily toward combating counterfeiting practices that enable software piracy around the world."

He continued that "To combat this counterfeiting, companies are using increasingly sophisticated authentication features to distinguish genuine, authorized copies of their products and to protect their customers and distributors. Now, the counterfeiters are fighting back by counterfeiting authentication features or by stealing legally produced authentication features and selling them to counterfeiters. The Anticounterfeiting Act of 2004 will impose criminal and civil penalties upon those who traffic in counterfeit or stolen authentication features. This will ensure that law-enforcement agencies and private rights-holders can halt criminal traffic in counterfeit or stolen authentication features before it even creates an illusion of authenticity that allows counterfeit goods to penetrate legitimate markets and endanger both the growth of our economy and the personal safety of our citizens."

Related bills have been introduced in the House and Senate in this Congress and the 107th Congress. See, for example, S 2227, the "Anticounterfeiting Act of 2004", and story titled "Sen. Biden Introduces Anticounterfeiting Bill" in TLJ Daily E-Mail Alert No. 866, March 30, 2004.

Title V, Subtitle B: Domain Name Fraud. Subtitle B, the "Fraudulent Online Identity Sanctions Act", is very similar to HR 3754, a stand alone bill with the same name, that was approved on May 12, 2004, by the House Judiciary Committee. See, story titled "House Judiciary Committee Approves Domain Name Fraud Bill" in TLJ Daily E-Mail Alert No. 897, May 13, 2004.

This subtitle addresses the registration of domain names with false information. Law enforcement authorities use the Whois database to identify and locate people who use web sites to commit crimes. False registration information makes identifying the fraud artists more difficult. False registration information also makes it harder for trademark holders to pursue cybersquatters, for copyrights holders to locate online infringers, and for manufacturers to locate online sellers of counterfeit goods.

Title VI: CREATE Act. Title VI is the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004". This is HR 2391, which has been approved by the House, and S 2192, which has been approved by the Senate. The language of these bills is also in the IPPA.

This is a patent provision, intended to promote collaborative research. The CREATE Act amends Section 103(c) of the Patent Act, which is codified at 35 U.S.C. § 103, to address the August 8, 1997 opinion of the U.S. Court of Appeals for the Federal Circuit in OddzOn Products, Inc. v. Just Toys, Inc., which ruled that derived prior art may serve as evidence of obviousness.

Section 103(c) currently provides a safe harbor for inventions that are the product of collaboration involving co-inventors within a single company. However, scientific research is increasingly being conducted jointly by multiple companies, universities, government labs, and/or other entities.

The holding in the OddsOn case threatens to discourage collaborative research, where the scientists involved are not employed by the same company or entity. Basically, the Court interpreted Section 103(c) to mean that prior art under Sections 102(f) or 102(g) could be used to determine the obviousness of an invention where there is no common ownership or assignment of the invention and information being shared among the collaborators, and the information exchanged is not publicly known. The bill amends Section 103 to provide that patentability is not precluded in the case of research conducted across entities pursuant to a joint research agreement.

See also, story titled "House Passes CREATE Act" in TLJ Daily E-Mail Alert No. 854, March 11, 2004.

Title VII: Professional Boxing. One more title was added to S 3021 after the draft was circulated last week. It is the "Professional Boxing Amendments Act of 2004''. This lengthy title has nothing to do with intellectual property, or any of the other subject matter of S 3021, the "Family Entertainment" bill.

What is Not in S 3021. Many copyright related bills that have been considered in the 108th Congress, some of which have been approved by committees or by the House or the Senate, are not in S 3021.

Two of the titles of the IPPA are not in S 3021. It does not include Title III of the IPPA, titled the "Protecting Intellectual Rights Against Theft and Expropriation Act of 2004", or "PIRATE Act".

The PIRATE Act would authorize the Department of Justice (DOJ) to bring civil actions for copyright infringement for conduct that already constitutes criminal copyright infringement under 17 U.S.C. § 506. This would accomplish two things. It would make it easier to prevail, because, among other things, the civil action would have a lower burden of proof. It would also provide a less punitive action for youthful P2P music pirates. This is § 302 of the IPPA. This provision would not make any conduct illegal that is not already illegal. Nevertheless, some of the groups that oppose effective protection of copyrights adamantly oppose this provision.

Also, S 3021 does not include Title VI of the IPPA, titled the "Enhancing Federal Obscenity Reporting and Copyright Enforcement Act of 2004", also known as the "EnFORCE Act". This is S 1933.

Also, there are many other intellectual property bills that that are not in S 3021. For example, it does not include S 2560, the "Inducing Infringement of Copyrights Act of 2004", a bill that responds to the opinions of the U.S. District Court and the U.S. Court of Appeals (9thCir) in MGM v. Grokster. It would create a new cause of action for "intentional inducement of infringement". S 3021 does not include HR 107, the "Digital Media Consumers' Rights Act of 2003", Rep. Rick Boucher's (D-VA) bill. Nor does it include HR 3261, the "Database and Collections of Information Misappropriation Act", or HR 3872, the "Consumer Access to Information Act of 2004", bills related to databases.

Gigi Sohn of Public Knowledge stated that "Consumers won a major victory when the Senate passed legislation removing the most egregious elements of the omnibus copyright bill that had previously been under consideration." She added that the Senate "wisely removed the PIRATE Act, which would have made the government the entertainment industry’s private law firm at taxpayer expense."