Advanced Copyright Issues on the Internet - Fenwick & West LLP

set to “Restricted,” including fonts whose embedding bit was set to “Print and Preview.” Thiscapability of Acrobat 5.0 was referred to as the “Any Font Feature.” 777The plaintiffs contended that the Any Font Feature resulted in “editable embedding,”because a recipient of a PDF file with embedded fonts could use the fonts to change the contentsof a form field or free text annotation. The plaintiffs further contended that such editableembedding was possible only because Acrobat 5.0 allowed the embedding bits set by theplaintiffs to be “circumvented” in violation of the DMCA. 778The court rejected the plaintiffs’ claims under both Sections 1201(a)(2) and 1201(b)(1) ofthe DMCA. With respect to Section 1201(a)(2), the court ruled that the plaintiffs’ embeddingbits did not effectively control access to the TrueType fonts. The court found that an embeddingbit was a passive entity that did nothing by itself. Embedding bits were not encrypted, scrambledor authenticated, and software applications such as Acrobat 5.0 did not need to enter a passwordor authorization sequence to obtain access to the embedding bits or the specification for theTrueType font (which was publicly available for free download from the Internet). Theembedding bits therefore did not, in their ordinary course of operation, require the application ofinformation, or a process or a treatment, with the authority of the copyright owner, to gain accessto the plaintiffs’ TrueType fonts, as required by Section 1201(a)(3)(B) in order for atechnological measure to effectively protect access to a copyrighted work. 779In addition, the court ruled that Acrobat 5.0 did not contain technology, components orparts that were primarily designed to circumvent TrueType embedding bits. The court foundthat Acrobat 5.0 had many commercially significant purposes other than to circumventembedding bits, even if it did circumvent them. The purpose of the embedded font capability inAcrobat 5.0 was so that electronic documents could look exactly the same when printed andviewed by a recipient as sent by the creator. The primary purpose of the forms feature was toallow recipients to complete electronic forms they receive and electronically return theinformation inputted on the form to the creator. Similarly, the commercial purpose of the freetext annotation feature was to allow recipients to insert comments into the PDF that could beviewed by the creator when electronically returned. Nor was Acrobat 5.0 marketed for theprimary purpose of circumventing the embedding bits – Adobe had made no mention ofembedding bits, circumvention of embedding bits, or the Any Font Feature in any of itsmarketing materials for Acrobat 5.0. 780With respect to the plaintiffs’ Section 1201(b)(1) claim, Adobe argued, and the courtagreed, that the embedding bits did not constitute a technological measure that prevented,restricted, or otherwise limited the exercise of a right of copyright. The plaintiffs had alreadyauthorized the copy and distribution of their TrueType fonts for embedding in PDF documentsfor “Print and Preview” purposes. Acrobat 5.0 did not make an additional copy or distribution of777778779780Id. at 1032.Id. at 1034.Id. at 1036-37.Id. at 1032-33.- 179 -