A. THE GOVERNMENT FAILS TO ADDRESS THE HEART OF ELCOMSOFT'S MOTION.
The government apparently concedes, or at least does not seriously
contest, critical aspects of Elcomsoft's vagueness motion. Nowhere in
its Opposition does the government contest the key points of
Elcomsoft's motion, which are as follows:
- Congress intended to permit the circumvention of usage control
technologies to allow for fair use and other non-infringing uses once
a copyrighted work had been lawfully obtained and accessed. Congress
did not intend to prohibit tools that allow such circumvention.
(Elcomsoft Mem. at pp. 8-13);
- The AEBPR 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. Consistent with its advertising of the AEBPR,
Elcomsoft is aware of no unlawful use of the AEBPR. Nor has any such
evidence been produced to date. (Elcomsoft Mem. at pp. 3-8);
- There are no guidelines or objective criteria for assessing whether
a circumvention tool is lawful or unlawful. No guidelines are
provided regarding the manufacture and/or marketing of devices which
allow circumvention of copy controls for non-infringing purposes. For
example, 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. Thus, contrary to Congress'
intent, all circumvention tools are apparently prohibited. (Elcomsoft
Mem. at p. 22);
- Under the government's reading of Section 1201(b), any person who
makes any circumvention tool is subject to criminal prosecution
because the government believes that it is irrelevant that the person
has made the device for a non-infringing purpose. (Elcomsoft Mem. at
Indeed, as the government does not contest, Elcomsoft and other
software manufacturers face the ultimate "Catch 22." Consistent with
clear and abundant legislative history, Elcomsoft manufactured and
marketed a device that circumvents protection afforded by a
technological measure in order to allow lawful uses. Notwithstanding,
after Adobe complained about a "Russian hacker company" and its
product, the government was able to take advantage of the broad
language of Section 1201(b) and press charges without regard to
Elcomsoft's purpose, as the statute makes no distinction between
devices made or marketed for lawful purposes and those made or
marketed for unlawful purposes.1 The government became the arbiter of lawfulness after the conduct had already occurred.
Plainly, the DMCA does not provide the kind of advance notice that
will protect an individual from being prosecuted; retroactive notice
in the form of an indictment is no notice at all. Cf. City of Chicago
v. Morales, 527 U.S. 41, 58 (1999) ("Such an order cannot
retroactively give adequate warning of the boundary between the
permissible and the impermissible applications of the law").
B. SECTION 1201(b) PROVIDES NO GUIDANCE TO SOFTWARE MANUFACTURERS AND PERMITS ARBITRARY ENFORCEMENT.
Beginning from the unchallenged premise that devices and technologies
which effectuate circumvention for non-infringing purposes are
lawful, Elcomsoft's vagueness challenge requires this Court to
determine whether it is possible to tell if Section 1201(b)
encompasses lawful as well as unlawful uses of circumvention devices
and technologies. Elcomsoft asserts that it is not possible to
determine if the lawful circumvention devices which it makes are
prohibited by the statute. Elcomsoft's opening memorandum makes
abundantly clear that the principle reason for the statute's
vagueness in this regard is that, unlike other statutes which outlaw
devices, the DMCA fails to clearly define the unlawful purposes to
which the prohibited devices could be put. This defect is apparent
when Section 1201(b) is compared to similar statutes which have often
been subject to vagueness challenges.
One class of statutes are those regulating drug paraphernalia. These
statutes seek to outlaw or otherwise regulate items which may be used
with illegal drugs. See Hoffman Estates v. Flipside, Hoffman Estates,
Inc., 455 U.S. 489 (1982); Posters 'N' Things v. United States, 511
U.S.513 (1994). For example in Hoffman v. Flipside, supra, the
ordinance involved regulated "any items, affect, paraphernalia,
accessory or thing which is designed or marketed for use with illegal
cannabis or drugs as defined by the Illinois defined statutes." Id.
at 500 (emphasis added).
While the statute in the Flipside case was challenged for vagueness
on other grounds, it did not lack language setting forth the
underlying unlawful purpose as does Section 1201(b). If the Flipside
statute were rewritten to reflect the same defect as exists in
Section 1201(b), it would read as follows: "any items, affect,
paraphernalia, accessory or thing which is designed or marketed for
use with drugs." The vagueness of a drug paraphernalia statue written
in this fashion is manifest. The makers of apparently lawful
instruments such as the manufacturers of syringes for the injection
of insulin would no doubt have a challenge for vagueness on the
grounds that they could not tell if the statute's prohibitions
encompassed their instruments.
More analogous to Section 1201(b) are the burglary tools statutes
which, as discussed in Elcomsoft's moving papers, and ignored by the
government, all define an unlawful purpose. See, e.g., California
Penal Code section 466 (defining the unlawful purpose as either
felonious breaking and entering or as unauthorized opening of a
lock). There can be little doubt that a burglary tools statute
phrased in the same manner as Section 1201(b) clearly would be seen
as impermissibly vague. For example a statute which tracked the
language of Section 1201(b) and prohibited "any device designed or
marketed for the purpose of circumventing a lock securing any
valuable items located in an unoccupied building" would not permit
legitimate manufacturers of otherwise lawful tools such as lock
picks, master keys, or even bolt cutters to determine if their
products were covered by the statute, and would convert those
manufacturers into criminals merely for making and selling items with
lawful uses. Elcomsoft and other makers of lawful circumvention tools
are in an identical position under Section 1201(b).
In its opposition papers, the government sets forth what it believes
to be the elements of a violation of 17 U.S.C. §§ 1201(b)(1)(A) and
1201(b)(1)(C). (Opp. Mem. at 32:11-24). The government describes the
elements as follows:
- the defendant trafficked in a technology, product, or device;
- the defendant acted wilfully; and
- the defendant acted for purposes of commercial advantage or
private financial gain.
For purposes of 1201(b)(1)(A), the fourth element that the government
must prove is:
- The device being trafficked in was "primarily designed or produced
for the purpose of circumventing protection afforded by a
technological measure that effectively protects a right of a
For purposes of 1201(b)(1)(C), the fourth element that the government
must prove is:
- The device being trafficked in was "marketed [by the defendant]
for use in circumventing protection afforded by a technological
measure that effectively protects a right of a copyright owner."
The government's recitation of the above elements confirms that
Section 1201(b) is fundamentally flawed. The government is not
required to prove any unlawful purpose, merely circumvention of a
technological measure, thereby ensnaring products -- like AEBPR -- that
were designed to enable non-infringing uses. Lest there be any doubt, the following example -- based on evidence submitted by the government in opposition to Elcomsoft's motion -- demonstrates this fact.
Adobe's product line for electronic publishing is not limited to
software related to the Adobe eBook, but also includes other products
that allow a user to disseminate documents in electronic format.
"Adobe's Acrobat family of products is designed to produce printed
content in a digital master form that can be accurately viewed on a
screen. . . . The file format for Adobe Acrobat files is described as
the Portable Document Format or "PDF" format." Diaz Decl., 3 [filed
with government's Opposition]. Through the use of an "owner"
password, the owner of a PDF file using Adobe Acrobat may restrict
copying and/or printing of a file upon dissemination -- not unlike the
restrictions that may be placed upon an eBook upon dissemination. Cf.
Diaz Decl., ¶ 8. Due to the fact that the Adobe Acrobat "owner"
password allows such restrictions, publishers may make their
copyrighted information available electronically and use the password
restrictions to prevent copying and/or printing. As explained by the
evidence submitted by the government in opposition to Elcomsoft's
Elizabeth Rather, the attorney for Forth, Inc., informed [the FBI]
that Forth publishes software and accompanying manuals, and that
Forth does not publish eBooks. Rather stated that the manuals that
Forth publishes to accompany its software are available online as PDF
files. According to Rather, Forth customers who purchase the software
can download the manual and accompanying documentation as a PDF file
upon which certain restrictions have been placed. Rather stated that
in some cases, Forth places restrictions on the PDF files as
protecting Forth's copyright rights.
O'Connell Decl., ¶ 6 [filed with government's opposition]; see also
O'Connell Declaration, ¶ 5 (describing Sybex's publication of books
in PDF format "with certain digital rights management protections
that prevent printing, copying, or moving the contents of the CD-ROM
to more than one computer").
In such a case, examining the elements of Section 1201(b) as set
forth by the government, one may conclude that any tool runs afoul of
Section 1201(b) if it allows a user to circumvent the publisher's
password (a protection afforded by a technological measure) and
remove restrictions on printing, copying, or moving the contents of
the PDF file (a right of a copyright owner). If that is true,
however, then many legitimate products subject those involved in
their manufacture and distribution to criminal sanction.
Indeed, as explained in the moving papers, one line of software in
which Elcomsoft has specialized is password recovery software.
Elcomsoft has a password recovery product that decrypts protected
Adobe Acrobat PDF files which have an "owner" password set,
preventing the file from being edited and/or printed. Katalov Decl.,
¶ 5. Under the government's view of Section 1201(b) -- which does not
measure the unlawful purpose of a product -- it appears that
Elcomsoft's password recovery software for Adobe Acrobat PDF files
violates Section 1201(b) because through "the use of Elcomsoft's
product, the protected file may be opened in any PDF viewer without
restrictions." Katalov Decl., ¶ 5.
This result, of course, is absurd and flies in the face of Congress'
desire to outlaw "black boxes" and not "products that are capable of
significant non-infringing uses." Burton Decl., Ex. O, H.R. Rep. No.
105-551, Part II, at 39-40. Not only is password recovery software
useful,2 but its illegality is determined by circumstances wholly
outside of Elcomsoft's control and without regard to Elcomsoft's
intended purpose.3 It is roughly analogous to prosecuting Stanley
Tools for making a screwdriver that years later is used to commit a
burglary, or Zippo being subject to criminal sanction because a
cigarette lighter is used to smoke marijuana.
In sum, the government's recitation of the elements supporting a
violation of Section 1201(b) demonstrates that manufacturers and
distributors of legitimate and lawful products have no guidance as to
whether or not their products are legal or illegal. More importantly,
these manufacturers and distributors arbitrarily may be subject to
governmental prosecution after the fact and without regard to
criminal intent, just as is now occurring with the prosecution of
C. THE GOVERNMENT'S ARGUMENTS REGARDING DUE PROCESS ARE MISGUIDED.
Notwithstanding the government's efforts to duck the notice issues
presented by Elcomsoft's moving papers, the government makes several
arguments that ostensibly are in response to Elcomsoft's motion. As
explained below, these arguments are of little value.
1. Elcomsoft's Challenge In This Case Is Not Like the Challenges in
Flipside and Posters 'N' Things.
The government states that the provisions of Section 1201(b) relating
to the design and marketing of a circumvention device "are very
similar to the provisions analyzed by the Supreme Court in Village of
Hoffman Estates v. Flipside, 455 U.S. 489 (1982)." (Opp. Mem. at
32:27-28). In addition to Flipside, the government also cites Posters
'N' Things v. United States, 511 U.S. 513 (1994) in support of its
argument that Section 1201(b) is not unconstitutionally vague as
applied to Elcomsoft. (Opp. Mem. at 33:14-17).4 The government's
reliance on these cases is misplaced, however, because in each
instance the statute construed tied the design or marketing of a
product to an unlawful purpose -- something that Section 1201(b) fails
to do altogether.5
In Flipside, the Supreme Court upheld a village ordinance requiring
an individual or a business to obtain a license if it sells "an
items, effect, paraphernalia, accessory or thing which is designed or
marketed for use with illegal cannabis or drugs." Flipside, supra, 45
U.S. at 499 (emphasis added). Likewise, in Posters 'N' Things, the
Supreme Court analyzed the definition of drug paraphernalia in the
context of a vagueness challenge to the Mail Order Drug Paraphernalia
Control Act. Posters 'N' Things, supra, 511 U.S. at 517. That
definition provided that the "term 'drug paraphernalia' means any
equipment, product, or material of any kind which is primarily
intended or designed for use in manufacturing, compounding,
converting, concealing, producing, ingesting, inhaling, or otherwise
introducing into the human body a controlled substance, possession of
which is unlawful . . ." Id. at fn. 6 (emphasis added).
Flipside is one of the leading Supreme Court cases in the area of
over breadth and vagueness. Elcomsoft cited to the Flipside opinion
in its memorandum, and encourages the Court to study it because it is
essential to understanding the nuance of the void for vagueness
doctrine. However, the government's cavalier assertion that, because
Section 1201(b) contains similar "designed" and "marketed" language,
and therefore this Court should "follow the reasoning adopted by the
Supreme court in that case," (Opp. Mem at, 33:1), is misplaced
because the basis for the vagueness challenge in Flipside and this
case are entirely different. First, Flipside was a pre-enforcement
facial challenge to the ordinance at issue on the grounds of
overbreadth and vagueness. "A 'facial' challenge, in this context,
means a claim that the law is 'invalid in toto -- and therefore
incapable of any valid application,'" Id. fn. 5 (citation omitted).
That is that the law is "impermissibly vague in all of its
applications." Id. at 497. Elcomsoft makes no such broad facial
challenge, but rather as set forth in its moving papers asserts that
Section 1201(b) is vague as applied to it and other producers of
lawful circumvention tools.
Most importantly, the vagueness challenge in Flipside focused on the
"designed or marketed" language because the Illinois ordinance,
unlike Section 1201(b), contained language describing the underlying
unlawful purpose. The Flipside court recognized and commented upon
The ordinance requires Flipside to obtain a license if it sells "any
items, affect, paraphernalia, accessory or thing which is designed or
marketed for use with illegal cannabis or drugs, as defined by the
Illinois revised statutes." Flipside express no uncertainty about
which drug this description encompasses. The District court noted,
Illinois law clearly defined cannabis and numerous other controlled
drugs including cocaine. Ill. Rev. Stat., ch. 56 1/2. ¶¶ 703 and
1102(g) (1980). On the other hand, the words "items, affect,
paraphernalia, accessory or thing" do not identify the type of
merchandise that the village desires to regulate. Flipside's
challenge thus appropriately focuses on the language "designed or
marketed for use."
Id. at 500 (citation and footnote omitted) (emphasis added). Unlike
Flipside, the essence of the vagueness challenge here is the
substantial uncertainty about which circumventions are encompassed by
Similarly, the statute in Posters 'N' Things, supra, clearly defined
the unlawful purpose, thus requiring the court to interpret the
subjective intent element only.6 The statute at issue in that case
provided in part:
The term 'drug paraphernalia' means any equipment, product, or
material of any kind which is primarily intended or designed for use
in manufacturing, compounding, converting, concealing, producing,
processing, preparing, injecting, ingesting, inhaling, or otherwise
introducing into the human body a controlled substance, possession of
which is unlawful under the Controlled Substances Act (title II of
Public Law 91-513) [21 U.S.C. 801 et seq.].
Id. at 517 (emphasis added).
Section 1201(b) is unlike the statutes at issue in Flipside and
Posters 'N' Things because the design or marketing of a circumvention
devices regulated by Section 1201(b) is not tied to an unlawful
purpose, i.e., copyright infringement. Under Section 1201(b) design
or marketing must simply circumvent ". . . protection afforded by a
technological measure that effectively protects a right of a
copyright owner. . ." Indeed, for this same reason, Section 1201(b)
is unlike the burglary tools and federal statutes which were cited in
Elcomsoft's moving papers, and which do tie conduct to an unlawful
purpose. (Elcomsoft Mem. at pp. 18-21).
In sum, Section 1201(b) is flawed because it does not connect the
manufacturer's actions and intent with the relevant unlawful purpose.
Consequently, the statute "does not enable the ordinary citizen to
conform his or her conduct to the law" and any person who makes a
circumvention tool may be subject to criminal prosecution. See, City
of Chicago v. Morales, supra, 527 U.S. at 58.
2. Elcomsoft Is Not Making A Substantive Due Process Argument.
The government claims that Elcomsoft's challenge "misses the point"
and is more appropriately one of substantive due process. (Opp. Mem.
at 34). The government's argument rests on a discussion in Flipside
regarding an objection that the ordinance at issue "would inhibit
innocent uses of items found to be covered by the ordinance."
Flipside, 455 U.S. at 497, fn. 9. The Flipside court rejected this
argument, noting that the legislature could rationally prohibit
devices with both lawful and unlawful uses. Id.
With due respect, the government has "missed the point." As stated ad
nauseam, Elcomsoft's challenge is that Section 1201(b) does not
adequately define the circumvention technologies covered under the
statute, and therefore does not permit one to know if lawful tools
are prohibited. This argument is a classic procedural due process
challenge based on vagueness. See City of Chicago v. Morales, supra,
527 U.S. at 56 ("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"). Elcomsoft does not argue that it would
be impermissible to ban all circumvention technologies, even those
enabling lawful circumvention. However, Elcomsoft does argue that
Congress did not intend to do so, and that Section 1201(b) is
impermissibly vague in describing which technologies are prohibited.
3. The "Wilful" Requirement Does Nothing to Alleviate Notice Concerns.
The government argues that Section 1201(b) contains an adequate
scienter provision because the government must "prove that Elcomsoft
acted 'wilfully,' which in this circuit, requires the government to
prove that the company acted 'voluntarily and intentionally, and not
through ignorance, mistake or accident.'" (Opp. Mem. at 34-35)
Contrary to the government's fixation on this issue in its
Opposition, Elcomsoft's vagueness argument is not premised on the
alleged absence or insufficiency of any subjective intent language.
Rather, as clearly set forth in its opening memorandum of law, it is
based upon the absence of language setting forth an unlawful purpose.
While subjective intent and unlawful purpose are related, they are
different. Both are necessary in a properly constructed statute.
Subjective intent language establishes a measure of the defendant's
state of mind. It may be a general intent, or as in the case of
Sections 1201(b) and 1204, a specific intent. In contrast, language
describing the unlawful purpose identifies to what actions or objects
the subjective intent element must be applied. It is that element
that is absent from Section 1201(b).
Without an unlawful purpose the inclusion of a "wilful" element can
do nothing to eliminate Section 1201(b)'s uncertainty regarding which
circumvention devices are prohibited. Indeed, all that the
"wilfulness" element guarantees is that Elcomsoft will not be
convicted if it designed and marketed the AEBPR involuntarily or by
mistake. A matter of little comfort or consequence. The fact that
certain conduct is wilful does not answer the question of whether or
not that conduct is unlawful. Consequently, the presence of the
"wilful" element does not eliminate "the concern that [the] statute
will trap those who act in good faith." (Opp. Mem. at 35:5-6).