Installing earlier software version that lacked license check feature triggered DMCA anticircumvention liability

EGS and DDS were in a dispute over the use of DDS’s software. [You can read about the copyright infringement claims here.] DDS claimed EGS had failed to pay license fees for its software. So DDS installed an update that would confirm the current license, and if the license was not up to date, would lock the program. In response, EGS elected to use a previously-licensed and older version of the software that did not contain the license check feature. Because of this, DDS claimed that EGS violated the anticircumvention provisions of the Digital Millennium Copyright Act

EGS moved to dismiss the DMCA anticircumvention claim. The court denied the motion. 

The DMCA provides, in relevant part, that “[n]o person shall circumvent a technological measure that effectively controls access to a work protected under this title.” It goes on to state that “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.” It also explains that “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 a treatment, with the authority of the copyright owner, to gain access to the work.” 

EGS had argued in part that it did not violate the anticircumvention provisions because its conduct was like the defendant in the case of I.M.S. Inquiry Management Systems, Ltd. v. Berkshire Info. Systems, Inc., 307 F. Supp. 2d 521 (S.D.N.Y. 2004). In that case, the defendant used a legitimate username and password to gain access to the protected work. 

The court acknowledged that like the situation in I.M.S., EGS did not do anything to change or manipulate the DDS software. However, as the court noted, the fact remained that EGS allegedly removed the software and reinstalled a prior version. For that reason, I.M.S. and the similar case of Navistar, Inc. v. New Baltimore Garage, Inc., 2012 WL 4338816 (N.D. Ill. Sept. 20, 2012), were not to the contrary.

First, those cases acknowledged that removing a technological measure suffices to state a claim under the DMCA. Second, EGS had leaned heavily on the fact that DDS analogized its license check to a password protection system, and that the district courts in I.M.S. and Navistar reasoned that “using a password to access a copyrighted work, even without authorization, does not constitute circumvention under the DMCA …” But implicit in those courts’ reasoning was a recognition that the licensee already knew the password and thus had the key to the castle.

In this case, to the contrary, EGS had no way to go through the license check and access the current software except by removing it entirely. Accordingly, the court found that a more apt analogy was that EGS circumvented “the deployed technological measure in the measure’s gatekeeping capacity” by uprooting the locked gate.

Eclipse Gaming Systems, LLC v. Antonucci, 2019 WL 3988687 (N.D. Ill. Jan. 31, 2019)

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