Date: 30 Jan 2002
From: Paul Stack
To: Tom 7
Subject: Font Embedding

Dear Mr. Murphy. I represent Agfa Monotype Corporation and International Typeface Corporation. The program you are distributing on your website which allows a person to change the embedding restrictions on a font has been brought to my attention.

The distribution of this program, whether for free or for a fee, infringes my client's federal copyrights in their TrueType programs. This infringement carries the storng possibility of very substantial statutory damages, the imposition of a federal injunction, and an award of attorneys' fees. Demand is made upon to you to immediately remove this program from your website and to contact me so that we can discuss remaining issues between you and my clients.

Very truly yours,

Paul F. Stack
Stack & Filpi Chtd.
...
Chicago, IL

Date: 30 Jan 2002
From: Tom 7
To: Paul F. Stack
Subject: re: Font embedding

> The distribution of this program, whether for free or for a fee,
> infringes my client's federal copyrights in their TrueType programs.

My web page contains none of your clients' copyrighted material. In order for me to take this message seriously, I think you should explain how precisely I am violating your clients' copyrights.

I hope you address the fact that I have a legitimate use for this program, namely the modification of the dozens of typefaces that I created.

Thanks,

Tom

[ Tom 7 : http://www.andrew.cmu.edu/~twm/ ]
[ Tom 7 : http://fonts.tom7.com/ ]

Months pass. Now, another letter with a stronger tone (but just as vague)...

Date: 17 April 2002
From: Paul F. Stack
To: Tom 7
Cc: Steve Kuhlman (VP Sales & Marketing, Agfa Monotype), Lawyers
Subject: Cease and Desist Letter

This office represents The Monotype Corporation and International Typeface Corporation. I have previously written to you about the computer software program which you are offering from the web site owned and operated by Carnegie Mellon University which allows a party to alter the embedding bits preset on TrueType fonts by many font manufacturers, including my clients. I have informed you that your conduct violates the copyright law. I have discovered today that you are still offering this program. Demand is made upon you to immediately cease and desist your unlawful conduct. If you are still offering your program by 5 pm, Central Daylight Time, on April 18, 2002, we will take such action against both you and Carnegie Mellon University as we deem appropriate without further notice to you.

Paul F. Stack
Stack & Filpi Chtd.
...
Chicago, IL

Date: 18 April 2002
From: Tom 7
To: Lawyers, Steve Kuhlman (VP Sales & Marketing, Agfa Monotype)
Subject: Re: Cease and Desist Letter

I have no reason to believe that I am violating your client's copyright. I feel strongly about free speech issues, and it upsets me to be bullied by lawyers -- not to mention the fact that I and others use this program in the totally legal process of creating free fonts. Therefore, I do not intend to remove the program unless you provide convincing arguments that I am breaking the law, or unless ordered to do so by the court. (And if you intend to take me to court, you might as well begin developing legal arguments now.)

Please do not e-mail me again unless you intend to explain specifically how I am violating Monotype/ITC copyright.

(Steve, do you really want to sue a student designer and a university? Trying to sue a program out of existence usually only causes it to become more popular (cf. DeCSS) on the internet. Several of my colleagues, including faculty members, have already volunteered to host the program on their websites in order to help. I also imagine that suing a popular* free font designer will not be such good publicity for Agfa Monotype or ITC among the community of young designers!)

- Tom

PS. I have forwarded your letter to chillingeffects.org, an Electronic Freedom Foundation clearing house for Cease and Desist letters.

* Search google for "truetype fonts", and notice that my page is ranked 4th and 9th; your sites *pay* for the privilege to be listed on the first page!

Date: 22 April 2002
From: Paul F. Stack
To: Tom 7
Subject: "Embed"

Mr. Murphy. You have asked for an explanation of the law regarding your program "embed." A memorandum is attached. I will check tomorrow to confirm that your program has been removed.

(attached memo converted from WORD format)

You have requested further information regarding the basis for our clients' cease and desist demand. The computer software program that you are offering on your website, identified as "embed," violates copyright law. Section 1201(a) of the 1998 Digital Millennium Copyright Act ("DMCA"), effective October 28, 2000, states, in part, "No person shall circumvent a technological measure that effectively controls access to a work protected under this title." A technological measure "effectively controls access to a work" if the measure, in the ordinary course of its operation, requires the application of information, or a process or treatment, with the authority of the copyright owner, to gain access to the work. One "circumvents a technological measure" when he uses any means to descramble a work, to decrypt an encrypted work, or otherwise, to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner.

Our clients, The Monotype Corporation, International Typeface Corporation, and Agfa Monotype Corporation own copyrights in numerous computer programs that generate digital typeface fonts. They, along with many other type designers, invest large amounts of time and energy in creating digitized typeface designs ("fonts"). They earn money by licensing copies of these fonts to third parties under end-user license agreements.

TrueType fonts have embedding "bits" which allow the creator of the font to decide the level of embedding that will be permitted. There are four different embedding bits: (1) no embedding, (2) embedding for view and print only, (3) embedding for view, print and editing, and (4) installable embedding.. Many small type design houses have set their embedding bits so that embedding of any kind is not permitted. Monotype and ITC allow end users to transmit embedded fonts for print and preview only, but do not permit editable embedding. Editable embedding and installable embedding, as you know, permits a person to transmit a copy of a font to another party simply by using it in a document and transmitting the document over the Internet or by copying on a floppy disk. The party receiving the font thereafter has a complete, useable copy of the font. An embedding bit is a "technological measure" that "effectively controls access" to their copyrighted works under the DMCA.

"Embed" is a software program that enables the end user to remove the embedding bits preset by type designers and type foundries. By using "embed," an end user can change the preset embedding bits on a copyrighted font from restricted, print and preview, or editable embedding to installable embedding. By circumventing the preset embedding bits, "embed" circumvents a technological measure set by the copyright owners on their copyrighted data. Use of "embed" on a copyrighted font is a clear violation of the DMCA.

You previously received notice that your software program violates my clients' copyrights. Continued distribution of "embed" is an intentional violation of the DMCA, and subjects you to actual or statutory damages. Statutory damages allow a recovery between $200 and $2,500 per act of circumvention, along with attorneys fees, costs and other items of damages. We also have a right to seek an injunction against you to prohibit you from violating our clients' rights. Demand is again made upon you to cease and desist the distribution of your program.

Dated: April 22, 2002

Date: 25 Apr 2002
From: Tom 7
To: Paul F. Stack
Subject: re: "Embed"

I have reviewed your claims and have concluded that they are not applicable, and that Embed does not violate your clients' copyrights. My reasoning is included below.

1. Background

2. Embedding bits are not a "technological measure that effectively control access to a work" under 17 U.S.C.

3. Embed is not a "circumvention device" as defined under 17 U.S.C.

4. Embed has substantial non-infringing use

5. No circumvention has taken place

6. DMCA additions to 17 U.S.C. are unconstitutional

I trust that this clears up the issues between me and your clients.

Tom

A few days after I got this mail and posted it here, word made it to slashdot and CNET news.com and everybody got up in arms. I got cc'd on a ton of "I'll never buy your products again!" e-mails, but also lots of offers of support, including one from the EFF. All of the fallout caused this page to be viewed over 13,000 times just in the week after the letter; it was the most popular object on CMU's web server by far. If the object of this game is to keep people from knowing about embed, Agfa Monotype and ITC have definitely already lost!

Just when I thought they had given up, I got another new mail. This one is extremely long and doesn't mention fonts at all. I'm not sure if Stack is just trying to waste my time, or give me a law lesson, or what.

Date: 7 May 2002
From: Paul F. Stack
CC: Bill Davis (Vice President of Business Development, Monotype)
To: Tom 7
Subject: embed

Dear Mr. Murphy. I received your last e-mail and noted your citation of the Supreme Court's decision in the Sony v. Universal Studios case. I updated a memorandum I wrote regarding Sony and its relationship with the DMCA and would like to forward the same to you for your review. Very truly yours, Paul F. Stack

(attached memo converted from WORD format)

MEMORANDUM

TO: Thomas Murphy
FROM: Paul F. Stack (Stack & F)
DATE: May 7, 2002

RE: Copyright Issues

In Sony Corp. v. Universal City Studios, 464 U.S. 471 (1984), owners of copyrighted television programs sued manufacturers and distributors of Betamax video recording devices, alleging that the defendants were contributorily infringing the copyrights in the programs. In discussing the findings of the district court, the Court noted that both parties:

conducted surveys of the way the Betamax machine was used by several hundred owners during a sample period in 1978. Although there were some differences in the surveys, they both showed that the primary use of the machine for most owners was 'time-shifting,' -- the practice of recording a program to view it once at a later time, and thereafter erasing it. . . . Both surveys also showed, however, that a substantial number of interviewees had accumulated libraries of tapes. Sony's survey indicated that over 80% of the interviewees watched at least as much regular television as they had before owning a Betamax.

The Court began its legal analysis of the case by citing Art. I, Sec. 8 of the Constitution:

The Congress shall have Power . . . to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their respective Writings and Discoveries.

The Court went on to note that as the text of the Constitution makes clear, "it is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors or inventors . . ." The Court stated:

Because this task involves a difficult balance between the interests of authors and inventors in the control and exploitation of their writings, and discoveries on the one hand, and society's competing interest in the free flow of ideas, information, and commerce on the other hand, our patent and copyright statutes have been amended repeatedly.

The Court stated that "the law of copyright has developed in response to significant changes in technology," and noted that the invention of the printing press gave rise to the original need for copyright protection. Citing the Copyright Act, the Court identified the five exclusive rights of copyright owners, two of which are relevant here:

(1) to reproduce the copyrighted work in copies . . .;

(3) to distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.

The Court noted that the copyright owners did not seek relief against the purchasers of the Betamax machines and, indeed, the Court noted that the copying of the plaintiff's programs represented only a "small portion" of the total use of the machines. Nevertheless, the Court held that the plaintiffs had standing to charge Sony with contributory infringement. "To prevail," the Court noted, "they have the burden of proving that users of the Betamax have infringed their copyrights and that Sony should be held responsible for that infringement."

The Court noted that the Copyright Act, unlike the Patent Act, does not expressly render anyone liable for infringement committed by another. Nevertheless, the Court stated that "vicarious liability is imposed in virtually all areas of the law" and that concept of contributory infringement is:

merely a species of the broader problem of identifying the circumstances in which it is just to hold one individual accountable for the actions of another.

On the facts before it, the Court stated that:

If vicarious liability is to be imposed on petitioners in this case, it must rest on the fact that they have sold equipment with constructive knowledge of the fact that their customers may use that equipment to make unauthorized copies of copyrighted material. There is no precedent in the law of copyright for the imposition of vicarious liability on such a theory.

In summarizing its analysis of case law involving contributory infringement, the Court stated that the question "is thus whether Betamax is capable of commercially significant noninfringing uses." The Court then held that the machine can be used for "private, noncommercial time-shifting in the home," and held that the plaintiffs had no right to prohibit other copyright holders from allowing their programs to be time-shifted, and that unauthorized home time-shifting is legitimate fair use.

The Court noted that the plaintiffs percentage of televised material was less than 10 percent of the total market share and that "many producers [of copyrighted programs] are willing to allow private time-shifting to continue, at least for an experimental time period." Further, the record showed that owners of copyrighted sports, religious, educational and other program actually consented to the time-shifting copying of their programs. Indeed, Fred Rogers of Mr. Roger's Neighborhood, testified that "he had absolutely no objection to home taping for noncommercial use and expressed the opinion that it is a real service to families to be able to record children's programs and to show them at appropriate times." The Court noted:

If there are millions of owners of VTR's who make copies of televised sports events, religious broadcasts, and educational programs such as Mister Roger's Neighborhood, and if the proprietors of those programs welcome the practice, the business of supplying the equipment that makes such copyright feasible should not be stifled simply because the equipment is used by some individuals to make unauthorized reproductions of respondent's works.

The Court stated "in an action for contributory infringement against the seller of copying equipment, the copyright holder may not prevail unless the relief that he seeks affects only his programs, or unless he speaks for virtually all copyright holders with an interest in the outcome." The Court concluded:

First, Sony demonstrated a significant likelihood that substantial numbers of copyright holders who license their works for broadcast on free television would not object to having their broadcasts time-shifted by private viewers. And second, respondents failed to demonstrate that time-shifting would cause any likelihood of nonminimal harm to the potential market for, or the value of, their copyrighted works. The Betamax is, therefore, capable of substantial noninfringing uses. Sony's sale of such equipment to the general public does not constitute contributory infringement of respondent's copyrights.

In October 1998, the Digital Millennium Copyright Act ("DMCA") was enacted. The DMCA amended the Copyright Act in a variety of ways, including the addition of a Chapter 12, entitled "Copyright Protection and Management Systems." Section 1201 ("Circumvention of copyright protection systems") provides in subsection (a)(1)(A):

No person shall circumvent a technological measure that effectively controls access to a work protected under this title. The prohibition contained in the preceding sentence shall take effect at the end of the 2-year period beginning on the date of the enactment of this chapter [October 29, 2000].

Section 1201(a)(2) of DMCA provides that:

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 commercial significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or

(C) is marketed by that person or another acting in concert with that person's knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.

For the purpose of Section 1201(a)(2), to "circumvent a technological measure" means "to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner." A technological measure "effectively controls access to a work" if the measure, in the ordinary course of its operation, requires the application of information, or a process or treatment, with the authority of the copyright owner, to gain access to the work.

Section 1201(b)(1) provides:

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.

For the purpose of Section 1201(b)(1), to "circumvent a technological measure" means "avoiding, bypassing, removing, deactivating, or impairing a technological measure, without the authority of the copyright owner." A technological measure "effectively protects a right of a copyright owner under this title" if the measure, in the ordinary course of its operation, prevents, restricts, or otherwise limits the exercise of a right of a copyright owner under this title. Finally, the DMCA provides that it has no effect upon vicarious or contributory infringement of copyrights.

In RealNetworks, Inc. v. Streambox, Inc., 2000 WL 127311 (W.D. Wash. 2000), RealNetworks offered a product which allow customers to access audio and video content over the Internet through "streaming." Under streaming, "no trace of the clip is left on the consumer's computer, unless the content owner has permitted the consumer to download the file." In this regard, streaming is differentiated from downloading, "a process by which a complete copy of an audio or video clip is delivered to and stored on a consumer's computer." The RealNetworks products were the "RealProducer," "RealServer," and "RealPlayer." Owners of copyrighted content could place their content in RealNetwork's format. Once in that format, the content (called RealMedia) can be placed in a RealServer to send that content to consumers. To download streaming content distributed by a RealServer, a consumer must use RealPlayer, a software program that resides on a consumer's computer and must be used to access and play a streaming RealMedia file.

The RealNetwork system used a "secret handshake," an authentication sequence which only RealServers and RealPlayers know. In addition, RealNetworks used a second security measure called the "Copy Switch," described by the court as:

a piece of data in all RealMedia files that contains the content owner's preference regarding whether or not the stream may be copied by end-users. If a content owner turns on the Copy Switch in a particular RealMedia file, when that file is streamed, an end-user can use the RealPlayer to save a copy of that RealMedia file to the user's computer. If a content owner does not turn on the Copy Switch in a RealMedia file, the RealPlayer will not allow an end-user to make a copy of that file. The file will simply 'evaporate' as the user listens to or watches it stream.

Through the use of the Secret Handshake and the Copy Switch, owners of audio and video content can prevent the unauthorized copying of their content if they so choose.

The court held that content owners who choose to use the security measures "are likely to be seeking to prevent their works from being copied without their authorization." Many of the copyright owners stated that if users could circumvent the security measures and make unauthorized copies of the content, they likely would not put their content up on the Internet.

The defendant, Streambox, produced three products, the Streambox VCR, the Ripper, and the Ferret. The court held that the VCR mimics a RealPlayer and circumvents the Secret Handshake. "In other words, the Streambox VCR is able to convince the RealServer into thinking that the VCR is, in fact, a RealPlayer." Unlike the RealPlayer, however, the Streambox VCR allows the "end-user to download RealMedia files even if the content owner has used the Copy Switch to prohibit end-users from downloading the files."

The court held "[g]iven the circumvention capabilities of the Streambox VCR, Streambox violates the DMCA if the product or a part thereof: (i) is primarily designed to serve this function; (ii) has only limited commercial significant purposes beyond the circumvention; or (iii) is marketed as a means of circumvention. . . . These three tests are disjunctive. . . . A product that meets only one of the three independent bases for liability is still prohibited..

Streambox asserted as its primary defense that the VCR had legitimate uses, to allow consumers to make "fair use" copies of RealMedia files, notwithstanding the access control and copy protection measures. Rejecting this defense, the court states that by using the security measures and Copy Switch, "copyright owners have made clear they do not want" their content copied. For this reason, the court held the "fair use" defense in Sony was not applicable. The court reasoned:

The Sony decision turned in large part on a finding that substantial numbers of copyright holders who broadcast their works either had authorized or would not object to having their works time-shifted by private viewers. . . . Here, by contrast, copyright owners have specifically chosen to prevent the copying enabled by the Streambox VCR by putting their content on RealServers and leaving the Copy Switch off.

Moreover, the Sony decision did not involve interpretation of the DMCA. Under the DMCA, product developers do not have the right to distribute products that circumvent technological measures that prevent consumers from gaining unauthorized access to or making unauthorized copies of works protected by the Copyright Act. Instead, Congress specifically prohibited the distribution of the tools by which such circumvention could be accomplished.

In finding liability under the DMCA, the court quoted with approval the following passage from 1 Nimmer on Copyright (1999 Supp.), §12A.18[B]:

. . . those who manufacture equipment and products generally can no longer gauge their conduct as permitted or forbidden by reference to the Sony doctrine. For a given piece of machinery might qualify as a stable item of commerce, with a substantial noninfringing use, and hence be immune from attack under Sony's construction of the Copyright Act -- but nonetheless still be subject to suppression under Section 1201.

In Universal City Studios, Inc. v. Reimerdes, 111 F.Supp.2d 294 (S.D.N.Y. 2000), aff.d, 273 F.3d 429 (2d Cir. 2001), eight motion picture studios distributed their copyrighted moves on DVDs and protected them from copying by using an encryption system called CSS. These encrypted DVDs may be viewed only on players and computer drives equipped with licensed technology that permits the devices to decrypt and play -- but not to copy - - the motion pictures.

A group of hackers devised a program called DeCSS that circumvented the CSS protection system. The defendants quickly posted DeCSS on their Internet web site, prompting the suit. Defendant Eric Corely was the publisher of 2600: The Hacker Quarterly, which is something of a bible to the hacker community. Prior to the commencement of the suit, Corely posted the source and object code for DeCSS on the web site (www.2600.com).

The defendants asserted that "DeCSS was not created for the purpose of pirating copyrighted motion pictures. Rather, they argue, it was written to further the development of a DVD player that would run under the Linux operating system, as there allegedly were no Linux compatible players on the market at the time." In discussing this defense, the court stated:

As noted, Section 120(a) of the DMCA contains two distinct prohibitions. Section 1201(a)(1), the so-called basic provision, 'aims against those who engage in unauthorized circumvention of technological measures . . . . [i]t focuses directly on wrongful conduct, rather than on those who facilitate wrongful conduct . . . ." Section 1201(a)(2), the anti-trafficking provision at issue in this case, on the other hand, separately bans offering or providing technology that may be used to circumvent technological means of controlling access to copyrighted works. . . . .

As the earlier discussion demonstrates, the question whether the development of a Linux DVD player motivated those who wrote DeCSS is immaterial to the question whether the defendants now before the Court violated the anti-trafficking provision of the DMCA. . . .

In discussing the defendant's claim of "fair use," the court stated:

Sony does not apply to the activities with which defendants here are charged. Even if it did, it would not govern here. Sony involved a construction of the Copyright Act that has been overruled by the later enactment of the DMCA to the extent of any inconsistency between Sony and the new statute.

The question here is whether the possibility of noninfringing fair use by someone who gains access to a protected copyrighted work through a circumvention technology distributed by defendants saves the defendants from liability under Section 1201. But nothing in Section 1201 so suggests. By prohibiting the provision of circumvention technology, the DMCA fundamentally altered the landscape. A given device or piece of technology might have "a substantial noninfringing use, and hence be immune from attack under Sony's construction of the Copyright Act--but nonetheless still be subject to suppression under Section 1201. Indeed, Congress explicitly noted that Section 1201 does not incorporate Sony.

The court enjoined the further distribution of DeCSS.

To illustrate how simple this program is (in the style of Dave Touretzky's Gallery), I leave you with the following haiku explaining how it works:

The OS/2 chunk
has a bit for embedding.
Set it to zero.