The most controversial parts of SOPA, an anti-piracy bill defeated in 2012 after a massive public outcry, may end up becoming de facto law after all, depending on the outcome in an obscure case that is working its way through the legal system without anyone noticing.
Next week, the US Appeals Court for the Federal Circuit will hear oral arguments in ClearCorrect Operating, LLC v. International Trade Commission, a case that could give an obscure federal agency the power to force ISPs to block websites. In January, The Verge reported that this very legal strategy is already being considered by the Motion Picture Association of America, as evidenced by a leaked document from the WikiLeaks Sony dump.
“SOPA as originally introduced included a provision allowing the Department of Justice to obtain court orders requiring ISPs to block their customers from accessing foreign websites deemed to be pirate sites,” said Charles Duan, director of the Patent Reform Project at Public Knowledge. “The MPAA memo [published by WikiLeaks] suggests that the MPAA would seek to obtain the same sorts of orders against ISPs, simply using the International Trade Commission rather than the DOJ.”
At first glance, ClearCorrect v. ITC looks pretty banal. It’s a case about a 3D printing model file for invisible braces. ClearCorrect, an Invisalign competitor, had a subsidiary in Pakistan create 3D models of braces, which it then sent from Pakistan to the US over the internet. ClearCorrect then 3D-printed the braces in its Texas offices, a move that might infringe Invisalign patents. (The validity of the patents is being disputed in both court and at the US Patent & Trademark Office.)
It’s "hard to see how it wouldn’t open the door to lots of cases involving digital data."
Align Technologies, the parent company of Invisalign, declined to embark on the long and costly journey of suing ClearCorrect in federal court. Instead, the company went to the International Trade Commission (ITC), a federal agency that deals with imports that allegedly infringe intellectual property rights, such as shipments of fake Louis Vuitton shoes or knock-off pharmaceuticals.
Bizarrely, no physical goods came over the US border in this case. Rather, the digital file was transported over the internet. Last year, the ITC determined that it had the legal authority, under a tariff law from 1930, to stop the transmission of infringing digital files.
The ITC has the power to issue an “exclusion order” that directs US Customs and Border Protection to seize the goods. It also has a cease-and-desist power that can be directed at third parties. Violating the cease and desist order can result in a penalty of “$100,000 or twice the domestic value of the articles,” whichever is greater.
Multiple legal issues are at play, but the one that organizations like the MPAA, RIAA, EFF, and Public Knowledge are most concerned with is the question of whether the word “articles” in Section 337 of the Tariff Act of 1930 can include digital files.
Public Knowledge and EFF argue that digital files are most certainly not “articles.” Obviously the drafters of the Tariff Act of 1930 didn’t give much thought to whether the ITC could or should regulate the internet. Given that no one in 1930 said, “Digital files aren’t articles,” Public Knowledge and EFF has to cite back to things like a 1887 Supreme Court decision discussing telegrams.
But for the ITC, MPAA, and RIAA, the fact that the Tariff Act was drafted “at a time when internet downloads were not in existence” means that the definition of “articles” can be construed broadly using pre-1930s dictionary definitions. The MPAA and RIAA argue in their amicus brief, “Nothing in the statute or legislative history suggests that Congress intended to circumscribe copyright protection under Section 337 to apply only to physical copies of copyrighted works.”
The key point of the case is whether a digital file can actually be an article. Screenshot from the 2014 Federal Circuit filing
All this goes to show how novel the idea of using 337 to go after digital transmissions is. No one really knows how this would play out in the future, since it’s never been done before—but if ClearCorrect loses at the Federal Circuit, it’s “hard to see [how it] wouldn’t open the door to lots of cases involving digital data,” according to Duan. “The ITC has already become an incredibly popular forum for intellectual property owners, given its speed and powerful remedies, and I imagine that those with cases involving digital downloads would want to partake in that forum.”
The leaked MPAA memo from 2014 advises, “[S]eeking a site-blocking order in the ITC would appear to offer a number of advantages over federal court litigation, at least at first blush.” Because the ITC is an agency, not a federal court, it has different procedural rules that could greatly benefit rights-holders.
“A party defending a case [at the ITC] is under a lot of pressure,” said Duan.
The remedies offered by the ITC, like the cease-and-desists, can be issued without considering many of the factors that make it harder to get injunctions and temporary restraining orders from a federal court. Most importantly, the ITC is fast.
“The process is designed to be streamlined, and complex patent cases are generally decided in about a year and a half (compared to multi-year litigation in district courts)," Duan added.
Depending on how this case is decided, it could spawn an entirely new genre of copyright legal action, possibly aimed at ISPs or even companies that use data centers overseas. How any of this fits into the current legal landscape is an open question. The Digital Millennium Copyright Act, for example, offers safe harbor to ISPs and third party sites that comply with a number of requirements, including, in some situations, notice-and-takedown. “An ITC exclusion order would seem to contradict this, as it could potentially require ISPs to monitor content and ‘exclude’ it if it were subject to an order,” said Vera Ranieri, a staff attorney at the Electronic Frontier Foundation.
ITC authority over ISPs could have serious consequences, according to Ranieri. “Suppose someone makes a fair use of a work, how does that interplay with the ITC's exclusion order? How could a service provider, practically, distinguish between those fair uses and infringing uses?”
The MPAA did not respond when asked for comment.
The Federal Circuit will hear oral arguments in ClearCorrect on August 11.