Leon P. Gold (LG-1434)
Jon A. Baumgarten (JB-7091)
Charles S. Sims (CS-0625)
Scott P. Cooper (SC-5867)
William M. Hart (WH-1604)
Michael T. Mervis (MM-0306)
Carla M. Miller (CM-3534)
PROSKAUER ROSE LLP
New York, New York 10036-8299
(212) 969-3000 Telephone
(212) 969-2900 Facsimile
Attorneys for Plaintiffs
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
UNIVERSAL CITY STUDIOS, INC.; PARAMOUNT PICTURES CORPORATION; METRO-GOLDWYN-MAYER STUDIOS INC.; TRISTAR PICTURES, INC.; COLUMBIA PICTURES INDUSTRIES, INC.; TIME WARNER ENTERTAINMENT CO., L.P.; DISNEY ENTERPRISES, INC.; AND TWENTIETH CENTURY FOX FILM CORPORATION,
ERIC CORLEY A/K/A "EMMANUEL GOLDSTEIN" AND 2600 ENTERPRISES, INC.,
00 Civ. 0277 (LAK)
PLAINTIFFS' POST-TRIAL BRIEF CONCERNING REMEDY
AND DEFENDANTS' FIRST AMENDMENT DEFENSE
This case is an early and major test of the key anti-circumvention provisions of the Digital Millennium Copyright Act ("DMCA"), which provides new and additional protection for copyrighted works in the digital age by mandating legal protection for technological measures that copyright holders put in place to control unauthorized access to their copyrighted works. The DMCA addresses the problem of the instantaneous, widespread proliferation of infringing copies made possible through the Internet, and expressly authorizes injunctive relief against the offering of devices which circumvent technological access control measures, such as encryption and scrambling, that copyright holders put in place to protect their works in digital form.
At trial, plaintiffs proved each of the elements of defendants' violation of 17 U.S.C. § 1201. Indeed, defendant Corley (and other defense witnesses) established that: (1) the Content Scramble System ("CSS") is a technological measure that effectively controls access to, and copying of, plaintiffs' copyrighted works within the meaning of the statute (Tr. 750:14-751:1 (Felton)); (2) "DeCSS" is a device which was created for, and serves the sole function of, decrypting CSS-encoded DVD movies and causing the decrypted movie files to be copied to the user's computer hard drive (Tr. 228:6-9 (Stevenson), 809:18-22, 821:21-822:17, 834:5-6 (Corley), 619:12-18 (Johansen), 748:17-19 (Felton), 896:25-897:4, 898:16-22 (Ramadge), 1099:16-18 (Appel)); and (3) defendants' dissemination of DeCSS is a willful act of "electronic civil disobedience" that will continue, unless enjoined by this Court. (Tr. 834:18-24, 847:10-16 (Corley); PX 96, 361:7-21 (Corley Dep.)).
Defendant Corley also admitted that the defendants' conduct does not fall within either the narrow reverse engineering or encryption research exceptions to the DMCA's anti-trafficking provisions. Mr. Corley, personally, has never been engaged in any reverse engineering or encryption research activities. (Tr. 838:3-8 (Corley)). Although defendants try to excuse their illegal conduct by arguing that DeCSS was used in the development of an unauthorized Linux DVD player (i.e. not licensed to decrypt CSS encoded movies), defendants admittedly were never involved in any such development efforts.
In fact, the evidence shows that the Linux argument is a red herring: DeCSS was developed for and runs under the Microsoft Windows operating system. Further, one of the creators of DeCSS, Jon Johansen, admitted that he first provided DeCSS to an Internet Relay Chat ("IRC") room, called "#pcdvd," which is not limited to users of the Linux operating system. (Tr. 632:9-14, 633:1-4 (Johansen)).
Defendants' attempt to escape imposition of a permanent injunction by asserting that the Court is powerless to stop the illegality since others are engaged in the same wrongdoing, lacks support in either copyright law or general equitable principles. Indeed, this argument already has been specifically rejected by another federal court in a similar DMCA case. See Sony Computer Entertainment v. Gamemasters, 87 F. Supp. 2d 976, 988 (N.D. Cal. 1999), discussed infra at Section I.B.2.
Plaintiffs have more than established their entitlement to injunctive relief against these defendants. The legislative history of the DMCA, the well-established body of copyright jurisprudence, and other federal court decisions granting injunctive relief under the DMCA, all make clear that, in circumstances such as these, the appropriate relief is the granting of a permanent injunction against the defendants before the Court. Indeed, the DMCA could not be effective otherwise given the instantaneous and destructive nature of infringing activities on the Internet, which Congress recognized in enacting the statute.
In Point I below, plaintiffs demonstrate that injunctive relief is appropriate and required here, and that defendants are barred by their own intentional misconduct from arguing otherwise. In Point II below, plaintiffs address defendants' claim that DeCSS constitutes expressive speech that cannot be enjoined under the First Amendment. The DMCA is aimed at conduct, not speech, and the application of the DMCA to defendants' indiscriminate dissemination to the public of an unlawful circumvention device does not implicate, much less violate, the First Amendment.
Finally, any result short of issuing a permanent injunction against these defendants will likely be construed by the public, and future courts hearing similar cases, as endorsing defendants' self-serving "defense" that, once they have caused proliferation of an illegal circumvention device, the federal courts are powerless to grant "effective" relief against such plain and admitted violations of the law. As aptly stated in comparable circumstances, this Court should not be "persuaded that modern technology has withered the strong right arm of equity." Com-Share, Inc. v. Computer Complex, Inc., 338 F. Supp. 1229, 1239 (E.D. Mich. 1971). Under the proven facts of this case, the defendants before this Court must be enjoined from engaging in their ongoing unlawful conduct.
STATEMENT OF FACTS PERTINENT TO THE
OF INJUNCTIVE RELIEF AND THE FIRST AMENDMENT DEFENSE
Defendants' effort to avoid a permanent injunction is best addressed after considering the record on three factual issues: the extent to which the DeCSS computer program (in either the form of an executable utility or source code) is available on the Internet, defendants' role in that availability, and plaintiffs' continuing use of and need for CSS.
1. Throughout the course of the trial, defendants' counsel suggested that the DeCSS decryption software program is essentially "everywhere," such that nothing would be accomplished by enjoining these defendants from providing DeCSS by posting it to the 2600 web site and deliberately providing links to other web sites that are posting the program. But repeated suggestions by counsel are no substitute for proof. In fact, there was no competent evidence to support defendants' claim that DeCSS is so ubiquitous on the Internet as to make plaintiffs' efforts to curtail its proliferation pointless.
Defendants introduced no evidence to quantify the number of web sites on which the DeCSS software program is available. Although they elicited some testimony that typing the character string "DeCSS" into a search engine retrieves "a few hundred hits" (Tr. 1099:23-1100:2 (Appel)), that speculation proved to be highly misleading. As was made clear by defendants' expert, Dr. Appel -- who has specialized knowledge in browser technologies -- search engine results, by their nature, are grossly overbroad, since they do not distinguish between the appearance of articles about DeCSS or about this case, or the use of DeCSS as an acronym, on the one hand, and the appearance of the actual DeCSS software program on the other hand. (Tr. 1111:3-1112:19 (Appel)). Indeed, the only evidence of the number of sites on which DeCSS appears was elicited by plaintiffs' cross-examination of Dr. Appel, who estimated that only 20% to 30% of the 100 to 200 sites he reviewed from his own, independent search on the Internet actually made the DeCSS program available for download. Id. See also Tr. 127:15-128:6, 137:16-138:25 (Shamos, describing search that revealed "a huge number of pages that made reference to the string DeCSS," but that he only saw "a handful . . . between five and ten" which contained the source code and one with the object code). Dr. Appel explained that this results from the fact that any Internet search for "DeCSS": (1) would not provide information about the number of sites that actually have DeCSS source or object code; (2) would report sites that "just mention" DeCSS, but neither have the program nor link to the program on another site; (3) would commonly report multiple entries for different pages of the same site; and (4) would be driven by the appearance of the character string -- "DeCSS" -- that was typed in, rather than report the actual number of sites that are posting or linking to DeCSS in one form or another. (Tr. 1111:3-1114:12 (Appel)).
Moreover, Dr. Appel testified that the number of sites that posted or linked to DeCSS included foreign sites. Congress could not have intended the existence of foreign sites, whether they are subject to the jurisdiction of the U.S. courts or not, to be used as a rationale to defeat the propriety of injunctive relief in a U.S. suit against U.S. persons violating § 1201. Further, the purported existence of additional sites posting DeCSS does not account for the likelihood that many of them voluntarily may remove DeCSS after a well-publicized permanent injunction in this case and upon the issuance of post-injunction cease and desist letters. (Some 60% of sites with DeCSS were voluntarily taken down as of mid-May, many in response to the MPAA's cease and desist letters, after entry of this Court's preliminary injunction.) (See DX AZS, 94:5-95:19 (Jacobsen Dep.); see also Tr. 548:5-9 (King)).
This evidence and simple arithmetic support the fact that there will be comparatively few additional "DeCSS sites" to be eliminated should the Court issue a permanent injunction here. Plaintiffs' "barn" is not empty, and defendants certainly have not proved it so -- although, CSS can continue to work effectively only if trafficking in DeCSS is enjoined by the courts as a clear violation of the anti-circumvention statute that Congress enacted. (Plaintiffs respectfully submit that a better analogy is not to a barn from which the horses have all been let out, but to defendants' torpedo attack on plaintiffs' ship, which may be leaking, but not fatally so. Plaintiffs believe that the damage can be patched, and properly have asked the Court for its help in that reparative work.)
2. What little evidence there is about the dissemination of DeCSS, moreover, must be evaluated in light of defendants' central role in causing it to be so disseminated. After being preliminarily enjoined from posting DeCSS on January 20, 2000, defendants posted a "call to action" to encourage others to do what they had been banned from doing. (PX 52). Mr. Corley admits that others responded by posting DeCSS to their sites and, at defendants' urging, providing their URLs to defendants so that defendants could create links to those sites from the 2600 site. (Tr. 808:21-809:7; 828:19-829:7 (Corley)). In fact, there is no proof in the record that even one web site within the jurisdiction of the United States now posting DeCSS, or linking to DeCSS, was not induced by defendants, or was not created by a person acting in concert or participation with defendants.
Defendants' continued proliferation of the DeCSS decryption software after this Court's January preliminary injunction was an act of "electronic civil disobedience" (Tr. 834:18-835:18 (Corley)) designed to frustrate plaintiffs' often successful efforts to convince others to stop proliferating DeCSS. Indeed, after the preliminary injunction issued, defendants encouraged others to "take a stand [against the MPAA] and mirror these files" in order to replace and add to those that were removed through the MPAA's enforcement efforts. (PX 51). Defendants stressed that because "a handful of sites have gone down due to [enforcement efforts of the MPAA] . . . [w]e need to replace them and add to the number." (PX 28, p. 6; see also PX 51, p. 1).
Defendants' efforts to continue proliferating the DeCSS program after the preliminary injunction were intended specifically to spread the DeCSS program itself. To seal the point, Corley admitted that for each "mirrored" URL that was forwarded to defendants' web site, defendants "initially verified the existence of the site" to ensure that the site actually contained DeCSS before 2600 linked to it (Tr. 851:20-852:7 (Corley)):
THE COURT: And it was your practice to verify the existence of the proposed mirrors before you linked to them, when you put them on your mirror list, right?
THE WITNESS: That's correct.
THE COURT: So the means of knowing whether the link that you posted to your mirror list took someone who clicked on that hyperlink to a page containing a whole bunch of content, some of it relating to DeCSS and others relating to God only knows what, as compared to taking you directly to the source code for DeCSS was entirely in your hands, true?
THE WITNESS: If we had spent more time on it, we could have refined it so it took you directly to the actual [DeCSS] files, yes.
3. Finally, the record shows that the motion picture studios continue to use CSS and to rely on it to protect their motion pictures -- both those already released in DVD format and those yet to be released -- and that they believe a permanent injunction would be of substantial practical benefit, despite the risks defendants have created. This evidence should be given substantial weight. Warner Home Video executive Marsha King made clear that plaintiffs cannot readily abandon CSS, and do not believe that it is futile to try to control the spread of DeCSS -- a belief confirmed by the fact that the DVD CCA continues to grant CSS licenses to consumer electronics equipment manufacturers, including those developing DVD players under the Linux operating systems. (DX AZI, 151:10-21, 203:11-25 (Hoy Dep.)). Indeed, plaintiffs cannot abandon CSS without jeopardizing the consumer goodwill that has been established for the DVD format, since such an abandonment would instantly obsolete millions of existing DVD players and discs already in the marketplace. (Tr. 506:4-23 (King)). In other words, the CSS regime remains viably in place, although threatened, and in need of judicial protection.
Thus, if the distribution of DVDs -- and all of the benefits that come with such distribution (Tr. 420:22-421:7 (King)) -- is to continue, and if films already released on DVDs are to be protected, plaintiffs must be equipped with the tools necessary to stem the proliferation of DeCSS. One such tool, a permanent injunction in this case, is critical to achieving this salutary purpose.
The effect of a refusal to enjoin the proliferation of DeCSS is well known. When the state court in California denied the DVD CCA's TRO application in December 1999, DeCSS postings increased sharply. Universal City Studios, 82 F. Supp. 2d at 214. On the other hand, according to Ken Jacobsen, who heads plaintiffs' anti-piracy efforts, by mid-May of this year approximately 60% of the sites that had been posting or linking to the DeCSS program had stopped doing so in the face of MPAA cease and desist letters following the issuance of this Court's preliminary injunction. (DX AZS, 94:7-96:7 (Jacobsen Dep.)).
Based on this prior experience, plaintiffs conclude that the denial of a permanent injunction here will severely hamstring their efforts to secure voluntary compliance with the DMCA's anti-trafficking provisions, whereas the entry of such an injunction would have a very positive effect on those enforcement efforts. One thing is certain, however. Unless a permanent injunction issues against these defendants -- who have played such a pivotal role in frustrating the protection plaintiffs enjoyed by virtue of CSS and the DMCA -- a substantial majority of those acting in concert with them will view the denial of the requested injunction as permission for their continued dissemination of DeCSS.
I. PLAINTIFFS ARE ENTITLED TO INJUNCTIVEAND DECLARATORY RELIEF
A. Plaintiffs Are Eligible for Injunctive Relief Under 17 U.S.C. § 1203 Title 17 U.S.C. § 1203 provides that "[a]ny person injured by a violation of section 1201 or 1202 may bring a civil action . . . for such violation." This standing requirement, allowing any person "injured by a violation of section 1201 or 1202 [to] bring a civil action in an appropriate United States district court for such violation" and to obtain a permanent injunction "to prevent or restrain a violation," requires nothing more than a nexus between the plaintiffs' encrypted, copyrighted works and the defendants' violation of the DMCA. It does not require, as defendants have repeatedly asserted, a showing that any works owned by plaintiffs have been decrypted by DeCSS, copied, sold in hard good form, or streamed over or downloaded from the Internet (although, if there were such requirements, plaintiffs plainly have met them). It only requires that plaintiffs prove, as they have (and defendants have admitted), that CSS effectively controls access to their DVDs, that DeCSS circumvents CSS, and that defendants are trafficking in DeCSS. Plaintiffs are, therefore, entitled to injunctive relief under § 1203.
1. Defendants Have injured plaintiffs by Trafficking in a Circumvention Device
Plaintiffs' claim is that defendants are providing and, unless they are permanently enjoined, will continue providing DeCSS -- a device which circumvents the CSS system protecting their copyrighted films -- in violation of § 1201 of the DMCA. Defendants' provision of DeCSS has caused plaintiffs to lose the assurance of protection that CSS gives to their valuable, copyrighted digital content released on DVDs. That is the injury the statute was created to prevent, and that is precisely the injury plaintiffs plainly have suffered and continue to suffer.
This showing is sufficient here. "When the [Supreme] Court has decided actual cases involving statutory rights, it has never required any showing of injury beyond that set out in the statute itself" -- that is, beyond "the violation of the statutorily conferred right." William Fletcher, The Structure of Standing, 98 Yale L. J. 221, 253-54 (1988). See, e.g., Havens Realty Corp. v. Coleman, 455 U.S. 363, 373 (1982) ("[T]he actual or threatened injury required by Art. III may exist solely by virtue of "statutes creating legal rights, the invasion of which creates standing.'"); Linda R.S. v. Richard D., 410 U.S. 614, 617 n.3 (1973) (same); Heldman v. Sobol, 962 F.2d 148, 154 (2d Cir. 1992) (same).
Plaintiffs established that the unlawful trafficking in a circumvention device (DeCSS) has exposed their released DVDs to risks of unauthorized and illegal copying, and threatens to destroy the industry's and the public's confidence in DVD as a format for presentation of copyrighted works to the ultimate detriment of consumers. See Tr. 555:18-558:20 (Fisher), 418:17-419:18 (King). These facts, without more, constitute irreparable harm that mandates injunctive relief. See RealNetworks, Inc. v. Streambox, Inc., No. 2:99CV02070, 2000 WL 127311 at *10 (W.D. Wash. Jan. 18, 2000).
Section 1203 does not require additional proof of present harm from copying. See id at *6; 1 Melville B. Nimmer & David Nimmer, Nimmer On Copyright, § 12A.17[B] (2000); Jane C. Ginsburg, Copyright Legislation for the "Digital Millennium," 23 Colum.-VLA J.L. & Arts 137, 138 (1999) ("It is important to appreciate that these violations are distinct from copyright infringement. The violation occurs with the prohibited acts; it is not necessary to prove that the dissemination of circumvention devices resulted in specific infringements."). If it did, the § 1201 anti-trafficking provisions would be meaningless, because a plaintiff would have to wait until copyright infringement has occurred to bring an action, and infringement was already unlawful before the DMCA was enacted. Congress could not have intended a statute enacted after such extensive consideration to be interpreted as mere surplusage to an already existing right to sue for copyright infringement.
Accordingly, defendants' mantra that plaintiffs cannot identify "one single person who has copied a DVD using DeCSS" is irrelevant. The requirement defendants seek to impose is inconsistent with the DMCA's design and purpose, which provide that the harm to plaintiffs is the loss of the right granted by Congress, i.e., the right to restrain the trafficking to the public of unauthorized circumvention devices. In any event, as shown below, the circumstantial evidence that DeCSS is likely now being used for piratical copying is so overwhelming that it is absurd to argue that plaintiffs' "failure" to identify the name of one individual engaging in such copying is of any relevance whatsoever.
2. Even if proof of copying were required, plaintiffs have shown that DeCSS has led to copying and threatens to cause further copying and resulting financial loss in the future
Plaintiffs overwhelmingly demonstrated the substantial threat to the value of their copyrighted material that can, likely has, and certainly will continue to, occur as a result of the circumvention of CSS. Plaintiffs have shown:
Cthat DeCSS can be used with ease to make flawless, unencrypted copies of DVD movies;
Cthat hard drive storage capacity on consumer PCs has been increasing at a rapid rate;
Cthat compression utilities such as DivX can be used to reduce the size of decrypted movie files for transmission over the Internet or to make CD-ROM or VCD copies of the movies. Plaintiffs further established that, once a file is compressed by DivX, digital copies of that file can be transferred again and again to anyone connected to the Internet, without the need for the file to ever be compressed again;
Cthat both the compression utility known as DivX and the instructions for utilizing DivX in connection with DeCSS to create transferable movie files are freely available over the Internet; and
Cthe speed and ease of transfer of such files is increasing as high-speed Internet connections become available to rapidly increasing numbers of people.
It is clear from the trial record that, with respect to obtaining unauthorized copies of decrypted DVD movies, what can be done, has been, is being, and will continue to be done. Although not required to do so, plaintiffs offered unrefuted evidence that infringing, decrypted and DivX-compressed digital copies of plaintiffs' motion pictures already are being offered on the Internet. Instructions available on the Internet for decrypting, copying and compressing such films specifically describe DeCSS as the required first step in the process. Over time, absent a permanent injunction, more and more pirated digital films will be made available. In consequence, plaintiffs are suffering, and absent a permanent injunction will continue to suffer, serious and incalculable financial harm as a result.
Even if the provision of decrypted films on the Internet is still in its nascent stages, courts have the power to, and indeed should, enjoin the trafficking in devices which facilitate such unlawful conduct before it reaches uncontrollable proportions.
3. The Internet Evidence Offered by Plaintiffs is Admissible
Defendants argue incorrectly that three items of evidence proffered by plaintiffs to prove the existence of a market on the Internet for pirated DVDs are inadmissible hearsay: PX 115A (the "private" IRC conversation between Eric Burns (Dr. Shamos' assistant) and "aeRoSoL"); PX 116B (screen prints from the ISONEWS web site listing titles of pirated films available on the Internet; and PX 114F (screen prints from the "AUTHORITYx" web site, suggesting that DeCSS was used to decrypt "Antz"). Courts have admitted printouts from Internet web sites in evidence to prove the truth of certain matters asserted, even though they are technically hearsay. This "general trend," as recognized in Raccioppi v. Apogee Inc., 47 U.S.P.Q.2d 1368, 1998 WL 425473 (T.T.A.B. May 6, 1998), should be followed in this case for the following reasons:
PX 115A and 114F. These exhibits are admissible under Fed. R. Evid. 804(b)(3) as admissions against interest. "aeRoSoL's" statements in Ex. 115A were an offer to trade pirated movies in violation of the Copyright Act. Thus, aeRoSoL's statements, at the time they were made, "so far tended to subject [him or her] to civil or criminal liability . . . that a reasonable person in [his or her] position would not have made the statement[s] unless believing [them] to be true." Fed. R. Evid. 804(b)(3); see also Gichner v. Antonio Troiano Tile & Marble Co., Inc., 410 F.2d 238, 242 (D.C. Cir. 1969) (a statement is against a declarant's interest when it entails possible civil liability); McCormick on Evidence, § 317 (5th ed. 1999). Ex. 114F, the screen prints from the "AUTHORITYx" site giving credit to the FM4 web site (which instructs individuals to use DeCSS to create pirated movie files), are admissible for the same reason.
PX 116B. Fed. R. Evid. 803(17) excludes from the hearsay rule "[m]arket quotations, tabulations, lists, directories, or other published compilations, generally used and relied upon by the public or by persons in particular occupations." The rationale for the rule lies in the fact that the compiler of the information has no reason to deceive the public and the public relies on such information. See Advisory Committee Note to Fed. R. Evid. 803 (1972); see also United States v. Grossman, 614 F.2d 295 (1st Cir. 1980); In re Roberts, 210 B.R. 325 (Bankr. N.D. Iowa 1997).
It is uncontested that ISONEWS "is a place where people may obtain information about the existence of various kinds of movies [on the Internet] in different kinds of formats," including the DivX format, and learn about the "releases" of pirated films. (Tr. 101:2-102:17 (Shamos)). The time and care reflected in the creation and maintenance of the extensive categorized lists compiled in the ISONEWS site, and the fact that the information so compiled is to be relied upon by others, are indicia of reliability. Plainly, ISONEWS has an interest in seeing that its information is accurate and reliable and has no reason to deceive the public about the existence of the market it serves -- indeed, if it did, people would stop visiting the site. Thus, Ex. 116B fits within the Rule 803(17) hearsay exception.
4. Defendants' "Others Are Doing it Too" Defense Is Unavailing under the Reasoning of Summers v. Tice
At trial, defendants made much of their claim that plaintiffs purportedly could not prove conclusively that any of the DivX-compressed films available on the Internet were created using DeCSS, as opposed to some other utility. This argument ignores that, as shown above, plaintiffs do not have to prove that any "actual copying" has occurred in order to obtain a permanent injunction prohibiting defendants from trafficking in DeCSS. However, assuming arguendo that proof of copying were required, given the direct and circumstantial proof of piracy (see supra Section I.A.3), and the proof of defendants' culpable conduct, defendants bore the burden to prove that DeCSS is not responsible for the growing piracy of plaintiffs' DVDs. Defendants did not even attempt to meet that burden.
In tort cases where multiple defendants are at fault and the plaintiff lacks information as to which defendant caused the injury, "the modern trend is to place the burden on the defendants to disprove causation." Zuchowicz v. United States, 140 F.3d 381, 388 n.6 (2d Cir. 1998) (citing Summers v. Tice, 33 Cal. 2d 80, 199 P.2d 1 (Cal. 1948)); see also Restatement (Second) of Torts, § 433B, comment f (1965). Thus, plaintiffs need not prove that it was defendants' "gun" (DeCSS) that caused their "wound" (the creation of piratical movie files). Rather, the burden is on the defendants to disprove that their admitted provision of DeCSS caused the copying. The rationale for placing the burden of proof on the wrongdoer is simple: a plaintiff who clearly has been injured, potentially by several defendants, should not be placed by a defendant who admittedly engaged in an illegal act in the unfair position of having to point to which specific defendant caused the harm. Summers, 33 Cal. 2d at 86, 199 P.2d at 4; see also Bowman v. Redding & Co., 449 F.2d 956, 968 (D.C. Cir. 1971). Instead, the equities of the situation make it incumbent on the wrongdoer "to absolve himself if he can." Id.
Plaintiffs presented evidence that pirated DVDs are available in decrypted form over the Internet. To create such copies, the CSS protection had to have been circumvented. At best, defendants' witnesses offered speculative testimony about the availability of another CSS circumvention device. The evidence was clear, however, that DeCSS is "better" than any alternative, and easier to use. Nonetheless, the burden does not rest on the plaintiffs to prove exactly which devices were used to create the piratical copies -- particularly in light of the fact that defendants' own witnesses admit that DeCSS can be put to such use.
B. Plaintiffs Are Entitled to Injunctive Relief
1. A Permanent Injunction Should be Granted to Prevent or Restrain the Ongoing and Threatened Harm Plaintiffs Face
Congress enacted the DMCA to "encourage technological solutions, in general, by enforcing private parties' use of technological protection measures with legal sanctions for circumvention and for producing and distributing products . . . that are aimed at circumventing technological protection measures" such as CSS. See S. Rep. No. 105-190 at 11 (1998) (emphasis added).
The very purpose of the DMCA was to provide additional protection for copyright owners in the digital age. In view of its findings that the advent of digital technologies presented additional risks to copyright owners that could not be redressed through traditional copyright infringement remedies, Congress concluded that those added risks warranted stronger remedies. Congress saw that "[d]ue to the ease with which digital works can be copied and distributed worldwide virtually instantaneously," copyright owners would understandably hesitate to make their works readily available on digital media without strong protections. See S. Rep. No. 105-190 at 8 (1998). Chief among these concerns was the trafficking in hardware devices and software programs to circumvent access and copying controls. Congress thus provided in § 1203(b)(1) for injunctive relief to "prevent or restrain" the trafficking in circumvention devices such as DeCSS.
Where the language and purpose of a federal statute clearly call for the imposition of prohibitory injunctions, courts should grant the relief provided by Congress, not apply traditional equitable balancing. See Tennessee Valley Authority v. Hill, 437 U.S. 153, 194 (1978) ("[o]nce Congress, exercising its delegated powers, has decided the order of priorities in a given area, it is . . . for the courts to enforce them when enforcement is sought"); Albemarle Paper Co. v. Moody, 422 U.S. 405, 417 (1975); United States v. City & Co. of San Francisco, 310 U.S. 16, 30-31 (1940); cf. Griffin v. Oceanic Contractors, Inc., 458 U.S. 564 (1982).
The overwhelming weight of authority under the Copyright Act mandates injunctive relief once a violation of plaintiff's rights has been shown. See, e.g., Walt Disney Co. v. Powell, 897 F.2d 565, 567 (D.C. Cir. 1990) ("[w]hen a copyright plaintiff has established a threat of continuing infringement, he is entitled to an injunction"); Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1349 (8th Cir. 1994); Pacific and Southern Co. v. Duncan, 744 F.2d 1490, 1499 (11th Cir. 1984); Broadcast Music, Inc. v. 315 East 44th St. Rest. Corp., 93 Civ. 8082, 1995 WL 408399 at *4 (S.D.N.Y. July 11, 1995). Since § 1203 uses the same words and phrasing as § 502, it should, under the "normal rule of statutory construction that identical words used in different parts of the same act are intended to have the same meaning" (CIR v. Lundy, 516 U.S. 235, 250 (1996)), be construed as § 502 has been to make findings of irreparable harm and the issuance of injunctive relief, upon proof of statutory violation, the presumptive remedy.
The deliberate nature of defendants' conduct, and their continued proliferation of DeCSS through their linking scheme since the issuance of the preliminary injunction, makes a clear permanent injunction (prohibiting these defendants' unlawful trafficking activities) vital in this case. See ASA Music Prods., 49 U.S.P.Q.2d at 1552 (permanent injunction justified given defendants' "flagrant and willful" conduct); Antenna Television, A.E. v. Aegean Video, Inc., No. 95 Civ. 2328, 1996 WL 298252 (E.D.N.Y. Apr. 23, 1996) (permanent injunction justified where defendants were involved in widespread trafficking in infringing video cassettes). (Tr. 847:10-16 (Corley); PX 96, 361:7-21 (Corley Dep.)). The Court's January 20, 2000 preliminary injunction did not cause defendants to stop providing DeCSS. Rather, it spurred them to evasive measures to continue their trafficking in DeCSS, as shown by defendant Corley's admissions. (See Tr. 850:20-852:12 (Corley)).
Corley's counsel's attempt to elicit a promise that he would comply with a declaratory judgment, does not moot plaintiffs' entitlement to injunctive relief. See, e.g., Ahrens v. Bowen, 852 F. 2d 49 (2d Cir. 1988); SEC v. Manor Nursing Centers, Inc., 458 F.2d 1082 (2d Cir. 1972); Tradescape.com v. Shivaram, 77 F. Supp. 2d 408, 410 n.2 (S.D.N.Y. 1999) (Kaplan, J.) (entering injunction notwithstanding stated intent to abandon, "as no consent injunction has been tendered"); Sierra Club v. The Hanna Furnace Corp., 636 F. Supp. 527 (W.D.N.Y. 1985). Moreover, Corley's admission that he is involved in civil disobedience (Tr. 834:18-835:18) would appear to show that he already knows that his acts are unlawful, so plaintiffs submit that a mere declaration of what he already knows to be illegal would serve no purpose in this case. Plaintiffs have found no case in which a defendant in Corley's situation avoided a permanent injunction by promising to comply with a declaratory judgment; and, indeed, the caselaw is inconsistent with any such escape from injunctive relief.
Because defendants' proliferation of DeCSS was intentional, and continued even after they were initially enjoined, and because they plainly are responsible for numerous unlawful postings of DeCSS by others, they cannot avoid injunctive relief by appealing to the equitable discretion of this Court. Hermes Int'l v. Lederer de Paris Fifth Avenue, Inc., Nos. 99-9283, 99-9365, 2000 WL 942934 (2d Cir. July 10, 2000) (courts do not entertain an equitable defense to injunctive relief "when the defendant intended the infringement"). "Any doubts in respect of the reach of appropriate injunctive relief should be resolved in favor of an innocent plaintiff and against a willful infringer." Imagineering, Inc. v. Van Klassens, Inc., 851 F. Supp. 532, 541 (S.D.N.Y. 1994), aff'd in part, vacated in part on other grounds, 53 F.3d 1260 (Fed. Cir. 1995).
2. Defendants May not Avoid entry of a permanent Injunction by Suggesting that such an Injunction would be Futile
The Court should not deny plaintiffs' request for a permanent injunction because DeCSS supposedly has been widely proliferated on the Internet (in large part due to defendants' own wrongful actions) or because DeCSS may remain available in some places even if the Court enjoins these defendants. As a district court wrote in comparable circumstances in a pre-DMCA case involving unlawful disclosure of confidential computer software:
Defendant has argued that the Court is presented with a fait accompli, that the transfer of software to Tymshare and incorporations in its system have already started, that the omelet cannot be unscrambled, that equity never decrees a "vain act" and that it would be a "rather apparent [illusory?] victory" for them to get an injunction in this case . . . . We are not persuaded that modern technology has withered the strong right arm of equity . . . .
Com-Share, 338 F. Supp. at 1239 (emphasis added) (brackets in original).
If defendants' "futility" argument were the law, then any defendant, by his own illegal provision of circumvention devices over the Internet, particularly if matched or mirrored by others, always could make injunctive relief futile and, therefore, unavailable. Doing so would be directly contrary to the very congressional purpose underlying the DMCA. See J.I. Case Co. v. Borak, 377 U.S. 426, 433 (1964) ("When a federal statute condemns an act as unlawful, the extent and nature of the legal consequences of the condemnation . . . are to be derived from the statute and the federal policy which it has adopted."); cf. Moore v. PaineWebber, Inc., 189 F.3d 165, 174 (2d Cir. 1999) (Calabresi, J., concurring). To rely on the alleged widespread proliferation of DeCSS as a basis to deny plaintiffs an injunction would transform the very reason for enacting the DMCA into a rationale for not enforcing it. See also Cell Assoc. v. NIH, 579 F.2d 1155, 1157 (9th Cir. 1978) (rejecting the "you can't put horses back in the barn" argument where injunctive relief would preclude the defendant from continuing to harm plaintiff). To the extent that traditional equitable balancing principles were applicable in this case, such a result certainly would not be equitable.
Defendants' "others are doing it too" argument already has been rejected under the DMCA. In Sony Computer Entertainment Am. v. GameMasters, 87 F. Supp. 2d 976 (N.D. Cal. 1999), plaintiffs sought to enjoin defendants' manufacture and sale of a "Game Enhancer" that permitted users to play plaintiffs' games sold in different geographical markets than the ones plaintiffs intended. On plaintiffs' motion for a preliminary injunction, the Court found that defendants likely were trafficking in a circumvention device in violation of § 1201(a)(2) of the DMCA. The defendants claimed that an injunction should not issue because the "Game Enhancer" device was available from numerous other retail sources in the geographic area and on the Internet. In granting the preliminary injunction, the court rejected what it characterized as defendant's "argument . . . that plaintiff must protect its intellectual property rights in an `all or nothing' fashion, suing every infringing retailer at once or suing none at all." Id. at 988; see also Philip Morris, 48 F. Supp. 2d, 844, 855 (S.D. Ind. 1999) (rejecting arguments that "enjoining the Defendants will not cut off the supply of foreign [infringing goods] because of the existence of so many other suppliers").
As shown above, defendants' actions were in large part responsible for the proliferation of DeCSS over the Internet. This Court should not allow defendants to benefit from their own deliberate illegal acts. See Religious Tech. Ctr. v. Netcom On-Line Communication Servs., Inc., 923 F. Supp. 1231, 1256 (N.D. Cal. 1995) ("[t]he court is troubled by the notion that any Internet user . . . can destroy valuable intellectual property rights by posting them over the Internet"); see also Com-Share, supra, 338 F. Supp. at 1239; cf. Hermes Int'l, supra. Simply put, defendants cannot preclude the issuance of a permanent injunction, which in plaintiffs' view would restore a significant increment of the protection that CSS has afforded their DVDs, by pointing to the alleged widespread proliferation of DeCSS for which they are, in large part, responsible. The focus of injunctive relief is, of course, to restrain the defendants before the court from violating the law. A court considering injunctive relief should not be concerned with other potential violators; indeed, a court "cannot lawfully enjoin the world at large, no matter how broadly it words its decree." Alemite Mfg. Corp. v. Staff, 42 F.2d 832 (2d Cir. 1930) (Hand, J.); see also New York v. Operation Rescue Nat'l, 80 F.3d 64, 70 (2d Cir. 1996) (same), cert. denied sub nom., Broderick v. United States, 519 U.S. 825 (1996). The very purpose of injunctive relief, in intellectual property cases as elsewhere, is to restrain the particular defendants before the Court from violating a plaintiff's rights in the future; equity is simply a court's personalization, to deserving defendants, of the legislation's more general commands.
Consistent with equity's defendant-centered focus, courts repeatedly hold that, when a plaintiff seeks relief against one infringer under intellectual property statutes, the existence of other possible infringers does not justify denying relief to the plaintiff. See, e.g., Polymer Techs., Inc. v. Bridwell, 103 F.3d 970 (Fed. Cir. 1996) (district court erroneously denied preliminary injunction in patent infringement case based on, inter alia, finding that presence of other infringers negated presumption of irreparable harm, noting that "[a] patentee does not have to sue all infringers at once"). Indeed, an owner of intellectual property may "pick off one infringer at a time." Id. at 975 (internal punctuation omitted).
To deny plaintiff an injunction because an enterprising user allegedly can obtain DeCSS from other sources on the Internet would place on plaintiffs the unwarranted burden of suing (presumably in a single action or in multiple simultaneous suits filed throughout the country) every possible provider of DeCSS, or none at all. Nothing in either the language or the purpose of the DMCA imposes any such requirement. Cf. Polygram Int'l Publishing v. Nevada/TIG, Inc., 855 F. Supp. 1314, 1334 (D. Mass. 1994) ("nothing in the language of the Copyright Act or in any of the cases interpreting it suggests that every infringer must be a party to the suit"). In UMG Recordings, Inc. v. MP3.Com, Inc., 92 F. Supp. 2d 349 (S.D.N.Y. 2000), the Court recently enjoined unlicensed, on-line distribution of copyrighted musical works, notwithstanding the existence of other forms of infringement (or of other web sites facilitating infringement) and the practical likelihood that, even if the requested injunction were granted, complete suppression of ongoing infringements of the plaintiffs' works would not be accomplished.
Spurred by the Court's comments on this subject, plaintiffs have searched for cases holding that injunctive relief should be denied upon a showing that a defendant's own misconduct was but a small subset of additional wrongdoing by others. We have found none. As noted, plaintiffs have, however, found numerous cases where injunctive relief issued notwithstanding such circumstances. To the extent that the principle "equity will not do a vain act" has been the ratio decidendi of reported cases, it has been in cases of mootness ("fait accompli"), where the conduct to be enjoined, usually an election, has already been completed. See, e.g., Mayor of Philadelphia v. Educational Equality League, 415 U.S. 605 (1974) (injunction under Civil Rights Act for discriminatory election practices denied as moot where allegations related only to a mayor who had already left office); General Electric Co. v. Cathcart, 980 F.2d 927, 934 (3d Cir. 1992); Robert Stigwood Group, Ltd. v. Hurwitz, 462 F.2d 910 (2d Cir. 1972). There can be no such concern here since defendants are capable of continuing to traffic in DeCSS, and have continued to provide it even after entry of the preliminary injunction, by their verified links and by encouraging their allies to provide it. One reason given by this Court for denying a preliminary injunction against continued distribution of a record without proper crediting of the plaintiffs, in Marcy Playground, Inc. v. Capitol Records, Inc., 6 F. Supp. 2d 277, 282 (S.D.N.Y. 1998), was that "the allegedly incorrect album liner has been distributed very extensively whereas the parties agree that any injunction would affect only a comparatively small number of albums remaining in Capitol's inventory," so that "a preliminary injunction here would be very much like locking the barn door after the horse is gone." The facts and equities of that case differ markedly from this one and, in any event, the Second Circuit has repeatedly stated that such considerations, although possibly affecting entitlement to preliminary injunctive relief, do not affect entitlement to permanent injunctive relief. Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985).
C. Declaratory Relief Alone Would Be An Insufficient Remedy
The Court plainly has the power to grant declaratory relief and, in conjunction with a permanent injunction, should declare in clear and forceful terms that defendants' conduct has violated plaintiffs' rights under the DMCA. Bilbrey v. Brown, 738 F.2d 1462, 1471 (9th Cir. 1984) ("a court declaration is a message not only to the parties but also to the public and has significant educational and lasting importance"). "It is the duty of the courts to be alert to provide such remedies as are necessary to make effective the congressional purpose," and courts must "adjust their remedies so as to grant the necessary relief where federally secured rights are invaded." J.I. Case Co., 377 U.S. at 433.
Salutary as declaratory relief would be in addition to injunctive relief, denial of the injunctive relief requested would not only be error (see supra at Section I.B.2), but also would deprive plaintiffs of relief that the defendants' conduct has made essential. Indeed, the Second Circuit has noted that declaratory relief is secondary to coercive relief. See United States v. Doherty, 786 F.2d 491, 498 (2d Cir. 1986) (the declaratory judgment procedure "creates a means by which rights and obligations may be adjudicated in cases involving an actual controversy that has not reached the stage at which either party may seek a coercive remedy, or in which the party entitled to such a remedy fails to sue for it").
First, given defendants' continued illegal trafficking activities, plaintiffs submit that denial of a permanent injunction against posting and linking would fail to restrain threatened harm. With an injunction comes the effective deterrent of a contempt remedy for its violation by the defendants and those in active concert or participation with them. A declaratory judgment, without more, provides no such deterrent. Moreover, if the present extent of proliferation of DeCSS precludes injunctive relief now, it would presumably preclude it a week after entry of a declaratory judgment.
Second, denial of injunctive relief would send a message to other "posters" (both those acting in concert with defendants and those acting on their own) that the Court has refused, or would refuse, to prohibit their posting and proliferation of DeCSS.
Third, refusal of injunctive relief would signal other courts, and the public at large, that there is no effective remedy in cases such as this -- i.e., that courts are powerless to enforce the DMCA so long as wrongdoers purposely proliferate all circumvention devices (or infringing copies) over the Internet, or succeed in enlisting others to do so. Such a message also, in all likelihood, would encourage such conduct and lessen the willingness of Internet Service Providers to take down web sites that are posting DeCSS, although they were willing to do so following the entry of the preliminary injunction in this case. (Tr. 548:5-9 (King)).
Disrespect for, and disobedience of, the rule of law are corrosive. Thus, while supplemental declaratory relief would be welcome, the circumstances here -- including that, as a practical matter, CSS must continue to play a role in protecting plaintiffs' works; plaintiffs have had success so far in causing 60% of the sites posting and linking to DeCSS to take it down (DX AZS, 94:5-95:19 (Jacobsen Dep.)); and the conduct of defendants and those who have responded to their call to "Stop The MPAA" has been willful -- render injunctive relief imperative, and declaratory relief alone insufficient, to "make effective the congressional purpose" underlying the DMCA. J.I. Case Co., 377 U.S. at 433.
II APPLICATION OF THE DMCA TO PROHIBIT DEFENDANTS'UNLAWFUL CONDUCT DOES NOT VIOLATE THE FIRST AMENDMENT
In its February decision granting a preliminary injunction, the Court expressed doubt that the application of the DMCA's anti-circumvention proscription to DeCSS implicates First Amendment concerns at all, but proceeded to hold that, even if it did, injunctive relief would not violate the First Amendment. Universal City Studios, 82 F. Supp. 2d at 220-21. Although it was clearly their burden to do so, defendants adduced no evidence at trial that should change the holding correctly reached months ago -- namely, that the DMCA does not violate the First Amendment, either on its face or as applied.
A. The DMCA Is an Appropriate Governmental Regulation of Conduct, Not Speech .
The prohibition against trafficking in circumvention devices is a law of general application aimed at conduct, not speech. Congress prohibited "manufactur[ing], import[ing], offer[ing] to the public, provid[ing], or otherwise traffic[king]" in any such circumvention devices. See 17 U.S.C. § 1201(a)(2). Laws of general application aimed at conduct are generally not subject to First Amendment review, even when applied to the press. Cohen v. Cowles Media Co., 501 U.S. 663, 669-70 (1991) (noting well-established "line of decisions holding that generally applicable laws do not offend the First Amendment simply because their enforcement against the press has incidental effects on its ability to gather and report the news."); see also Arcara v. Cloud Books, Inc., 478 U.S. 697 (1986).
B. DeCSS is Neither "Speech" Nor "Expressive Conduct. "
Although laws of general application may be subject to intermediate First Amendment review when they are applied to expressive conduct, defendants have not established that DeCSS has expressive content sufficient to warrant even intermediate scrutiny here. Compare Cohen v. Cowles Media Co., supra (no First Amendment review for promissory estoppel claim against newspaper), with Barnes v. Glen Theater, Inc., supra (applying intermediate review to nude dancing).
The question presented is not whether computer code can be sufficiently expressive to warrant First Amendment protection. See Junger v. Daley, 209 F.3d 481 (6th Cir. 2000); Bernstein v. United States Dep't of Justice, 176 F.3d 1132, 1141 (9th Cir.) (holding that encryption software in source code form can be constitutionally protected expression, but expressing no opinion with respect to object code), reh'g en banc granted, op. withdrawn, 192 F.3d 1308 (9th Cir. 1999). Rather, the proper question is whether DeCSS -- particularly in its executable form, but also in any other form posted or sought to be posted by defendants -- is sufficiently expressive to warrant First Amendment protection. The testimony was virtually unanimous that DeCSS is simply a tool for decrypting DVDs -- that it has no expressive content itself. DeCSS is a decryption device and, in that respect, is functionally indistinguishable from a key or "virtual machine." See Universal City Studios, 82 F. Supp. 2d at 219 n.30 (citing R. Polk Wagner, The Medium Is The Mistake: The Law of Software for the First Amendment, 51 Stan. L. Rev. 387 (1999); Mark A. Lemley & Eugene Volakh, Freedom of Speech and Injunctions In Intellectual Property Cases, 48 Duke L.J. 147, 236-37 (1998)).
It is significant that Congress itself considered decrypting technologies and devices to be the equivalent of modern "keys." See S. Rep. No. 105-190 at 11. If, as plaintiffs submit, the unauthorized provision of an automobile key is proscribable and unprotected by the First Amendment, it is hard to see why any different analysis should apply merely because the decrypting technology defendants are providing happens to have been configured as software instead of hardware.
The testimony of Professor Touretzky affords no convincing basis otherwise, since the question of whether DeCSS is "speech" or "expressive conduct" for First Amendment purposes presents a question of law, not one of computer science or philosophy. At bottom, his argument would establish that a housekey is speech as well (as it communicates information to tumblers, which could as well be communicated to humans in various other languages or ways) -- a conclusion that may be a tour de force but would not make house keys eligible for First Amendment protection. Dr. Touretzky's view is based on his puzzlement that the Court could "decide to ban, say, the C source code but not discussion of the algorithm," since "in [his] mind these things are all equivalent." (Tr. 1068:19-1069:2 (Touretzky)). With respect, the law does not treat instructions to machines in the same way as it treats political or academic discussions of those instructions, just as it distinguishes between illicit dealing in firearms and literary discussion of committing a crime. No matter how clever one may be in converting code to English or translating it into any other language, DeCSS itself (whether as an executable utility or in source code) is still just a set of unscrambling instructions to a machine, as inexpressive as the numeric combination to the locks to a bank vault. See also Universal City Studios, 82 F. Supp. 2d at 222 ("Executable computer code of the type at issue in this case does little to further traditional First Amendment interests.") And since Professor Touretzky's testimony established that the source code can be readily converted to object code which, in turn, can be used to create the executable utility, the DeCSS source code is just as much a "technology," "device" or "component, or part thereof" within the meaning of the DMCA as is the executable utility. See 17 U.S.C. § 1201(a)(2).
C. At Most, Application of the DMCA to DeCSS Has An Incidental Impact on Speech and Does Not Violate Defendants' First Amendment Rights.
Assuming arguendo that DeCSS, as provided by defendants (as an executable utility or as object or source code), is sufficiently expressive to constitute "speech" within the meaning of the First Amendment, that conclusion only begins the inquiry, Universal City Studios, 82 F. Supp. 2d at 220, and the DMCA's application to defendants' provision of DeCSS would still be constitutional. The government may regulate, or even proscribe, unlawful conduct and apply those regulations even to conduct claimed to be imbued with elements of protected "speech." See, e.g., United States v. O'Brien, 391 U.S. 367 (1968) (Congress may constitutionally punish expressive burning of Selective Service draft card); Albertini, supra (regulation of expressive entry onto military bases); Clark, supra (regulation of expressive sleeping in parks); Barnes, supra (regulation of nudity applied to dancing); San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 536-37 (1987) (upholding, under O'Brien, Congress's exclusive grant of the use of the word "Olympics" to respondent); Pittsburgh Press Co. v. Pittsburgh Comm'n on Human Relations, 413 U.S. 376, 388 (1973) (regulation of unlawful commercial transactions applied to newspaper's help-wanted notices).
Here, assuming arguendo that the Court finds some expressive aspect to DeCSS (in any form), the DMCA represents unquestionably permissible governmental regulation of a particular course of conduct that causes substantive harm in an area that is within Congress's power to regulate -- in this case, the widespread trafficking in devices which circumvent effective technological measures employed by copyright owners to protect their works. See Universal City Studios, 82 F. Supp. 2d at 220 (finding that "the DMCA appears to be a legitimate exercise of Congress' power" under the Copyright and the Necessary and Proper Clauses of the Constitution). The Supreme Court consistently has deferred to Congress's ability to balance competing interests when technological innovations threaten to diminish constitutionally-based incentives to create, which are protected by the Copyright Act. See, e.g., Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 431 (1984) ("Sound policy, as well as history, supports our consistent deference to Congress when major technological innovations alter the market for copyrighted materials. Congress has the constitutional authority and the institutional ability to accommodate fully the varied permutations of competing interests that are inevitably implicated by such new technology."). Indeed, the Congressional record for the DMCA reflects this careful balancing of First Amendment rights with the clear need to provide strong protections to copyright owners.
Defendants' argument that all computer code (and therefore DeCSS) is necessarily protected speech, and its reliance on Professor Touretzky's "slippery slope" arguments, goes too far. If DeCSS is "speech" immune from any regulation, then no device that can be embodied in computer software could ever be regulated by Congress. That is clearly not the case. Indeed, Congress intended that unlawful "devices" within the meaning of the anti-trafficking provisions would include any "technology measure" meeting the statutory definition, specifically including computer code. See H.R. Conf. Rep. 105-796, 105th Cong., 2d Sess. (Oct. 8, 1998), at 68 ("the conferees believe and intend that . . . software `hacks' are equally prohibited by the general circumvention provision"). Moreover, taken to its logical extreme, defendants' argument would compel the conclusion that Congress could not regulate any Internet activities because, invariably, the transmission of any information over the Internet requires some level of computer processing and, therefore, necessarily entails the use of programming languages/source code. Congress's recent legislative efforts demonstrate the absurdity of such a premise. See, e.g., 15 U.S.C. § 6502 et seq. (prohibiting collection of personal information by websites or online service operators whose services are directed at children); 18 U.S.C. § 1030, et seq. (prohibiting, inter alia, fraud and related activity in connection with unauthorized access to computer systems).
Under O'Brien, the DMCA's application to defendants' conduct easily passes First Amendment muster. As the Court correctly held in its February decision, § 1201's anti-trafficking prohibitions are within the constitutional power of the Government, further a substantial governmental interest unrelated to the suppression of free expression and, if they restrict First Amendment interests at all, any such restriction is no more than is essential to further the interest served. Congress's determination that the DMCA serves a substantial government interest in carrying out the objectives of the Copyright Clause of the Constitution in the Internet age is beyond dispute, and the DMCA's prohibition against trafficking in devices that threaten to diminish copyright holders' incentives to make their works available in digital form furthers that legitimate interest.
The First Amendment does not prohibit the enforcement of laws protecting intellectual property. See Universal City Studios, 82 F. Supp. 2d at 220 ("it is no longer open to doubt that the First Amendment does not shield copyright infringement"); see also Harper & Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 555-60 (1985); Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977) (rejecting First Amendment challenge to damage award against broadcasting company that violated plaintiff's rights of publicity); San Francisco Arts & Athletics, supra; Cable/Home Communication Corp. v. Network Productions, Inc., 902 F.2d 829, 849 (11th Cir. 1990). That premise holds true whether such laws must be applied in the "brick and mortar" world or in cyberspace. Indeed, the First Amendment does not permit even a newspaper to copy the work of another without the copyright owner's consent. See, e.g., New York Times Co. v. United States, 403 U.S. 713, 731-32 n.1 (1971) (White, J., concurring) ("No one denies that a newspaper can properly be enjoined from publishing the copyrighted works of another"); Flamm v. American Ass'n of University Women, 201 F.3d 144, 149 (2d Cir. 2000); Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 93 (2d Cir. 1998); cf. Don King Prods., Inc. v. Douglas, 742 F. Supp. 778, 782 n.4 (S.D.N.Y. 1990).
Congress's purpose and goals in enacting the DMCA would be eviscerated if exceptions to the anti-trafficking provisions were crafted for defendants, or available whenever a plainly illegal decryption device is embodied in software. To hold that the DMCA's anti-circumvention provisions cannot be applied to software devices distributed over the Internet because any form of software is "protected speech" would render the DMCA "dead on arrival."
Congress has enacted comparable laws prohibiting the manufacture, distribution and sale of cable and satellite television "descramblers," which also defeat access control devices, see, e.g., 47 U.S.C. § 553(a)(2) (prohibiting the manufacture or distribution of equipment intended for the unauthorized reception of cable television service) and 47 U.S.C. § 605(e)(4) (prohibiting the manufacture, assembly, import and sale of equipment used in the unauthorized decryption of satellite cable programming), and the federal courts have upheld them.
For example, in Cable/Home Commun. Corp., supra, the Eleventh Circuit held that the defendants' promotion of statutorily-prohibited "descrambling devices" for subscription cable television programming, as well as defendants' creation, advertisement and sale of pirated computer chips to compromise the copyrighted program used to scramble or encrypt the plaintiffs' transmissions, were not protected by the First Amendment. The Eleventh Circuit also noted that because the defendants' "speech" "not only violated the copyright and communications laws, but also encouraged third parties to do so, . . . defendants-appellants have no protection within the First Amendment for their unlawful expression." 902 F.2d at 850. See also California Satellite Sys. v. Seimon, 767 F.2d 1364, 1367-68 (9th Cir. 1985) (no First Amendment right to pirate scrambled satellite broadcast signals). This conclusion should apply with even greater force in this case where the purported "speech" being provided to the public constitutes the unlawful device itself. Moreover, this case fits squarely within the holding of Pittsburgh Press that the First Amendment does not bar the proscription of speech which is itself unlawful conduct that Congress may prohibit. 413 U.S. at 388. See also United States v. Rowlee, 899 F.2d 1275, 128 (2d Cir.) ("Speech is not protected by the First Amendment when it is the very vehicle of the crime itself.") (citing cases), cert. denied, 498 U.S. 828 (1990).
The permanent injunction sought by plaintiffs does not transgress the First Amendment because it proscribes a narrowly defined course of conduct in trafficking in an unlawful circumvention device, and in no way silences defendants (or anyone else) from discussing DeCSS or from criticizing anyone or anything at all (including, but not limited to, the DMCA, Congress, intellectual property law, plaintiffs, or the Court). To the contrary, the injunction furthers, rather than detracts from, speech interests, just like injunctions against copyright infringement: it furthers the constitutional mandate "to Promote the Progress of Science and Useful Arts," U.S. Const. Art. I § 8, by ensuring that plaintiffs' copyrighted expressive content will be more widely disseminated, not less. Not one of defendants' academic witnesses, including Dr. Touretzky, testified to needing wide dissemination of DeCSS on the web, in executable or source code form, in order to teach their students or perform their research.
Finally, on the record adduced at trial, entry of a permanent injunction that reaches defendants' linking is proper, even if linking by others arguably may raise more complex issues. In light of Corley's testimony that, while subject to the preliminary injunction, defendants deliberately solicited additional postings, created links to those postings, and went to the length of personally verifying that the DeCSS program was present on these other sites before establishing each link, there is no doubt that defendants' linking scheme was designed to ensure that they could continue providing DeCSS to the public. Accordingly, this Court can easily conclude that the defendants' linking scheme was designed to avoid the spirit of the Court's preliminary injunction, so that they could continue trafficking in DeCSS in violation of § 1201 of the DMCA, thereby warranting injunctive relief against activities that might not, in some more innocent context, be unlawful otherwise. Accord Oral-B Labs, Inc. v. Mi-Lor Corp, 810 F. 2d 20, 24 (2d Cir. 1987) ("Furthermore, a party who has once infringed a trademark may be required to suffer a position less advantageous than that of an innocent party"); Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 260-61 (5th Cir. 1997), cert. denied, 523 U.S. 1118 (1998); Kentucky Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 390 (5th Cir. 1977) (in fashioning equitable relief against a party "who has transgressed the governing standards, a court of equity is free to proscribe activities that, standing alone, would have been unassailable"). See generally T. Cahn and J. Floum, Applying the Safe Distance Rule in Counterfeiting Cases: A Call for the Use of Broad Equitable Power to Prevent Black and Gray Marketeering, 8 Fordham I. P., Media & Ent. L.J. 487 (1998).
Copyright law regulating digital piracy, and the ability of Congress and the federal courts to protect copyrighted works on the Internet, are subjects of much current public debate. Pirates and hackers have widely publicized the concept that nothing can be done to preserve copyright laws as they relate to the Internet, and that the courts are helpless to apply the law to stop infringement and illegal trafficking in circumvention devices. This is far from the first time that advocates of lawlessness have told the courts that their movement of the day, whatever it is, cannot be dealt with by the law or by the courts established to enforce the law.
Just at this time, this propaganda is at its loudest. Internet technology has reached a cusp with the proliferation of file-swapping utilities where unauthorized copies of copyrighted works, including movies, can be simply and anonymously made available to millions of people. The use of these file-swapping utilities to do just that with respect to virtually every song in the libraries of the major music companies has become front page news. Quantum leaps in technology, and the consequent increase in the power to use that technology to do previously unimagined harm are challenging Congress and the courts to find ways to protect the lawful interests of copyright owners in the digital age. Just at this time, this Court is being asked to enforce Congress's decision to afford copyright owners an additional tool to protect those interests and reject defendants' invitation that the Court ignore their violation of the anti-circumvention law because, they assert, the Court is impotent to prevent the trafficking of DeCSS. According to defendants, the Court cannot eradicate this admittedly illegal device and, therefore, must stand by and allow the widespread dissemination over the Internet of a device whose sole function is the illegal decryption of movies -- at least until the motion picture industry suffers the same immense piracy as the record companies have suffered already (the very harm the DMCA was enacted to prevent).
It is wrong to state that DeCSS has been circulated so widely that it is beyond the reach of the laws. Moreover, it is defendants and their loyal band of believers who have created a large percentage of the sites carrying DeCSS. A permanent injunction against these particular defendants, and those acting in concert with them, will have the immediate, direct effect of eliminating many of the existing sites containing DeCSS, and will give plaintiffs an essential tool for effecting elimination of the remainder. A declaration of law would work to tell those who are not clear about the law, and who truly wish to understand the law, that their acts are illegal.
The judgment, the permanent injunction, and, indeed, the message plaintiffs seek in this case are uniquely important. The DMCA and its anti-circumvention provisions were Congress's answer to its conclusion that a new law was needed to stop infringement, to stop digital piracy, before copying becomes truly ubiquitous. Should this Court say Congress's solution does not work and rule out the availability of injunctive relief in its first significant test? Plaintiffs most respectfully submit that the Court should enforce the law. Plaintiffs are, as they must be, committed to CSS; but they would not lightly risk destroying the value of their new movie releases, or the DVD business, by staying with an encryption system that cannot continue to work and that the law will not protect, notwithstanding the clear mandate of the DMCA. The trial record demonstrates that the industry can control DeCSS with the tools Congress has given it. It will keep the piracy "manageable," but only so long as the courts will enforce the DMCA through the injunctive relief which Congress provided.
For all the foregoing reasons and the reasons set forth in plaintiff's previous memoranda of law, the Court should grant a final judgment: (a) permanently enjoining, pursuant to Fed. R. Civ. P. 65, defendants, their officers, agents, employees, and all those in concert or participation with them, from providing DeCSS by any means, including by posting it to any web site or by linking to any web site that contains it; (b) declaring that the provision of DeCSS to the public violates plaintiffs' rights under 17 U.S.C. § 1201; (c) awarding plaintiffs their costs and reasonable attorneys fees, pursuant to 17 U.S.C. § 505 and/or §§ 1203(b)(4) and (b)(5); and (d) awarding plaintiffs such other and further relief as is appropriate.
Dated: August 8, 2000
Leon P. Gold (LG-1434)
Jon A. Baumgarten (JB-7091)
Charles S. Sims (CS-0624)
Scott P. Cooper (SC-5867)
William M. Hart (WH-1604)
Michael T. Mervis (MM-0306)
Carla M. Miller (CM-3534)
New York, NY 10036-8299
(212) 969-3000 Telephone
(212) 969-2900 Facsimile
Attorneys for Plaintiffs