3 February 2000
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Source: http://www.nysd.uscourts.gov/courtweb/pdf/00-01149.PDF
See related files: http://jya.com/cryptout.htm#DVD-DeCSS
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[30 pages.]
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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UNIVERSAL CITY STUDIOS, INC, et al.,
Plaintiffs, 00 Civ. 0277
(LAK)
-against-
SHAWN C. REIMERDES, et al.,
Defendants.
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MEMORANDUM OPINION
Appearances:
Leon P. Gold
Jon Baumgarten
William M. Hart
Kenneth Rubenstein
PROSAKUER ROSE LLP
Attorneys for Plaintiffs
Peter L. Katz
Robin D. Gross
Allonn E. Levy
HUBER & SAMUELSON PC
Attorneys for Defendants
LEWIS A. KAPLAN, District Judge.
This case is another step in the evolution of the law of copyright
occasioned by advances in technology. Plaintiff motion picture studios
brought this action to enjoin defendants from providing a computer program
on their Internet Web sites that permits users to decrypt and copy
plaintiffs' copyrighted motion pictures from digital versatile disks
("DVDs''). They rely on the recently enacted Digital Millennium Copyright
Act ("DMCA'').1
____________________
1 17 U.S.C. § 1201 et seq.
On January 20, 2000, the Court granted plaintiffs' motion for a preliminary
injunction and indicated [see hearing transcript] that this opinion would
follow.
Facts
Plaintiffs in this case are eight major motion picture studios which are
engaged in the business of producing, manufacturing and/or distributing
copyrighted and copyrightable material, including motion pictures. Motion
pictures usually are first released for theatrical distribution and later
to consumers in "home video'' formats such as videotape, laserdisc and,
most recently, DVD.
DVDs
DVDs are five-inch wide discs that, in this application, hold full-length
motion pictures. They are the latest technology for private home viewing of
recorded motion pictures. This technology drastically improves the clarity
and overall quality of a motion picture shown on a television or computer
screen.
CSS
DVDs contain motion pictures in digital form, which presents an enhanced
risk of unauthorized reproduction and distribution because digital copies
made from DVDs do not degrade from generation to generation. Concerned
about this risk, motion picture companies, including plaintiffs, insisted
upon the development of an access control and copy prevention system to
inhibit the unauthorized reproduction and distribution of motion pictures
before they released films in the DVD format. The means now in use, Content
Scramble System or CSS, is an encryption-based security and authentication
system that requires the use of appropriately configured hardware such as a
DVD player or a computer DVD drive to decrypt, unscramble and play back,
but not copy, motion pictures on DVDs. CSS has been licensed to hundreds of
DVD player manufacturers and DVD content distributors in the United States
and around the world.
CSS has facilitated enormous growth in the use of DVDs for the distribution
of copyrighted movies to consumers. DVD movies first were introduced in the
United States in 1996. Over 4,000 motion pictures now have been released in
that format in the United States, and movies are being issued on DVDs at
the rate of over 40 new titles per month in addition to rereleases of
classic films. More than 5 million DVD players have been sold, and DVD disc
sales now exceed one million units per week.
DeCSS
In October 1999, an individual or group, believed to be in Europe, managed
to "hack'' CSS2 and began offering, via the Internet, a software utility
called DeCSS that enables users to break the CSS copy protection system and
hence to make and distribute digital copies of DVD movies.
____________________
2 Recent reports indicate that Norwegian police have arrested an
individual said first to have hacked CSS. See Mike Godwin, Teen
Co-Creator of DVD Decryption Program Arrested at Norwegian Home,
E-COMMERCE LAW WEEKLY, Feb. 2, 2000.
The Motion Picture Association of America ("MPAA'') almost immediately
acted under the provisions of the DMCA by demanding that Internet service
providers remove DeCSS from their servers and, where the identities of the
individuals responsible were known, that those individuals stop posting
DeCSS. These efforts succeeded in removing a considerable share of the
known postings of DeCSS.
On December 29, 1999, the licensor of CSS, DVD CCA, commenced a state court
action in California for the misappropriation of its trade secrets as
embodied in the DeCSS software. On the same day, the state court judge
without explanation denied the plaintiff's motion for a temporary
restraining order.3 Members of the hacker community then stepped up efforts
to distribute DeCSS to the widest possible audience in an apparent attempt
to preclude effective judicial relief. One individual even announced a
contest with prizes (copies of DVDs) for the greatest number of copies of
DeCSS distributed, for the most elegant distribution method, and for the
"lowest tech'' method.
____________________
3 The same court reportedly granted the plaintiff's motion for a
preliminary injunction following the decision in this case.
Defendants
Defendants each are associated with Web sites that were distributing DeCSS
at the time plaintiffs moved for injunctive relief. Internet registry
information indicates that defendant Shawn Reimerdes owns and is the
administrative, technical and billing contact for a Web site bearing the
domain name dvd-copy.com. Defendant Roman Kazan is listed as the technical
contact for krackdown.com and the technical, administrative and zone
contact for escape.com, which are registered to Krackdown and Kazan
Corporation, respectively. Defendant Eric Corley, a/k/a Emmanuel Goldstein,
is similarly listed for a Web site with the domain name 2600.com,
registered to 2600 Magazine. None of the defendants submitted any evidence
in opposition to the motion, and the Court in all the circumstances infers
that each personally has been involved in providing and distributing DeCSS
over the Internet via these Web sites.
Discussion
In order to obtain a preliminary injunction, the movant must show "(a)
irreparable harm, and (b) either (1) a likelihood of success on the merits,
or (2) sufficiently serious questions going to the merits to make them fair
grounds for litigation and a balance of hardships tipping decidedly in its
favor.''4
____________________
4 Richard Feiner & Co. v. Turner Ent. Co., MGM/UA, 98 F.3d 33, 34
(2d Cir. 1996) (citing inter alia Jackson Dairy, Inc. v. H.P.
Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979) (per curiam)).
A. Irreparable Injury
The requirement of immediate and irreparable injury is satisfied in this
case. Copyright infringement is presumed to give rise to such harm.5 In
this case, plaintiffs do not allege that defendants have infringed their
copyrights, but rather that defendants offer technology that circumvents
their copyright protection system and thus facilitates infringement. For
purposes of the irreparable injury inquiry, this is a distinction without a
difference. If plaintiffs are correct on the merits, they face
substantially the same immediate and irreparable injury from defendants'
posting of DeCSS as they would if defendants were infringing directly.
Moreover, just as in the case of direct copyright infringement, the extent
of the harm plaintiffs will suffer as a result of defendants' alleged
activities cannot readily be measured, suggesting that the injury truly
would be irreparable.6
____________________
5 See Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d
119, 124 (2d Cir. 1994).
6 Defendants suggest that plaintiffs delayed bringing this
action, thereby undermining their claim of irreparable injury.
Although undue delay in some circumstances can defeat a
presumption of irreparable injury, see Markowitz Jewelry Co.,
Inc. v. Chapal/Zenray, Inc., 988 F. Supp. 404, 406 (S.D.N.Y.
1994), that is so only where the delay is unexplained and
unjustified. If a party is unaware at the outset of the scope of
the threat or pursues with reasonable dispatch other means to
remedy the problem without coming to court, there is no undue
delay. See Gilliam v. American Broadcasting Companies, Inc., 538
F.2d 14, 25 (2d Cir. 1976). In this case, plaintiffs first
learned of the appearance of DeCSS on the Internet in late
October 1999. Schumann Decl. ¶ 10; Attaway Decl. ¶ 7. Plaintiffs
immediately sought to address the problem by approaching Internet
service providers and met with some success. Attaway Decl. ¶ 8.
After a state court in California declined to issue a temporary
restraining order in a case involving misappropriation of trade
secrets on December 29, 1999, the dissemination of DeCSS became
more widespread. Attaway Decl. ¶ 9. As this motion was brought by
order to show cause on January 14, 2000, the Court finds that
plaintiffs acted with reasonable speed and that any delay was not
undue.
B. Likelihood of Success
Plaintiffs' sole claim is for violation of the anti-circumvention
provisions of the DMCA. They contend that plaintiffs' posting of DeCSS
violates Section 1201(a)(2) of the statute, which prohibits unauthorized
offering of products that circumvent technological measures that
effectively control access to copyrighted works. Defendants respond that
(1) they have been named improperly as defendants, (2) the posting of DeCSS
falls within one of the DMCA exceptions and is not illegal under the
statute, (3) application of the DMCA to prohibit posting of DeCSS violates
defendants' First Amendment rights, and (4) a preliminary injunction would
constitute an unlawful prior restraint on protected speech.
1. Defendants Are Properly Named
Defendants contend that plaintiffs' claim against all three defendants must
be dismissed because defendants are not the owners of the Web sites
containing the offending material and therefore are not the "real parties
in interest.'' They rely on Rule 17 of the Federal Rules of Civil
Procedure.7
____________________
7 FED. R. CIV. P. 17.
In relevant part, Federal Rule 17 states that "[e]very action shall be
prosecuted in the name of the real party in interest.''8 This rule does not
apply to defendants, as they are not prosecuting this action. Further,
whether defendants own the Web sites at issue is not dispositive of
anything. Plaintiffs claim that defendants' conduct violates the DMCA. If
plaintiffs make such a showing, they will win on the merits. If they fail,
defendants will be absolved of liability. As defendants have failed to
submit affidavits or other materials indicating that they had nothing to do
with the offending Web sites, the Court infers from the evidence before it,
for the purpose of this motion, that they are responsible for the content
of the sites. Of course, plaintiffs will bear the burden of proof on this
issue at trial.9
____________________
8 Emphasis added.
9 Defendant Roman Kazan argues also that, since this action was
filed, DeCSS has been removed from the Web site that he allegedly
controls. This does not moot the claim against him. See United
States v. W. T. Grant, 345 U.S. 629 (1953).
2. DMCA Violation
Section 1201(a)(2) of the Copyright Act, part of the DMCA, provides that:
"No person shall . . . offer to the public, provide or otherwise
traffic in any technology . . . that---
"(A) is primarily designed or produced for the purpose of
circumventing a technological measure that effectively controls
access to a work protected under [the Copyright Act];
"(B) has only limited commercially significant purpose or use
other than to circumvent a technological measure that effectively
controls access to a work protected under [the Copyright Act]; or
"(C) is marketed by that person or another acting in concert with
that person with that person's knowledge for use in circumventing
a technological measure that effectively controls access to a
work protected under [the Copyright Act].''10
____________________
10 17 U.S.C. § 1201(a)(2). See also 1 MELVILLE B. NIMMER &DAVID
NIMMER, NIMMER ON COPYRIGHT ("NIMMER'') § 12A.03[1][a], at 12A-16
(1999).
"[C]ircumvent a technological measure'' is defined to mean descrambling a
scrambled work, decrypting an encrypted work, or "otherwise to avoid,
bypass, remove, deactivate, or impair a technological measure, without the
authority of the copyright owner.''11 The statute explains further 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 a work.''12
____________________
11 17 U.S.C. § 1201(a)(3)(A).
12 Id. § 1201(a)(3)(B).
Here, it is perfectly clear that CSS is a technological measure that
effectively controls access to plaintiffs' copyrighted movies because it
requires the application of information or a process, with the authority of
the copyright owner, to gain access to those works. Indeed, defendants
conceded in their memorandum that one cannot in the ordinary course gain
access to the copyrighted works on plaintiffs' DVDs without a "player key''
issued by the DVDCCA that permits unscrambling the contents of the disks.13
It is undisputed also that DeCSS defeats CSS and decrypts copyrighted works
without the authority of the copyright owners. As there is no evidence of
any commercially significant purpose of DeCSS other than circumvention of
CSS, defendants' actions likely violated Section 1201(a)(2)(B). Moreover,
although defendants contended at oral argument that DeCSS was not designed
primarily to circumvent CSS, that argument is exceptionally unpersuasive.14
In consequence, plaintiffs have an extremely high likelihood of prevailing
on the merits unless defendants' activities come within one of the
exceptions in the DMCA or unless there is a constitutional impediment to
this conclusion.
____________________
13 Def. Mem. at 3.
14 Defendants contended that DeCSS was intended only to permit
persons in lawful possession of copyrighted disks to play them
for their own use on computers running under the Linux operating
system rather than Windows. Tr. at 28. Indeed, they suggested
that this is the only possible use of DeCSS and that DeCSS does
not permit the user to copy DVDs. Id. at 28-30. But the arguments
are unpersuasive for two reasons.
First, defendants have submitted no evidence---as distinguished
from unsubstantiated assertions at oral argument---to support
these contentions. Second, even if DeCSS wereintended and usable
solely to permit the playing, and not the copying, of DVDs on
Linux machines, the playing without a licensed CSS "player key''
would "circumvent a technological measure'' that effectively
controls access to a copyrighted work and violate the statute in
any case.
Defendants contend that their activities come within several exceptions
contained in the DMCA and the Copyright Act and constitute fair use under
the Copyright Act. They are unlikely to prevail on any of these
contentions.
a. Service Provider Exception
Defendant Roman Kazan alone argues that his conduct falls under Section
512(c) of the Copyright Act,15 which provides limited protection from
liability for copyright infringement by certain service providers for
information resident on a system or network owned or controlled by them.16
This argument fails for several reasons.
____________________
15 17 U.S.C. § 512(c).
16 Def. Mem. at 6-7.
First, Mr. Kazan offered no proof that he is a service provider within the
meaning of Section 512(c).17 But that point ultimately is unnecessary to
the result.
____________________
17 17 U.S.C. § 512(k) ("[T]he term `service provider' means a
provider of online services or network access, or the operator of
facilities therefore, and includes an entity'' "offering the
transmission, routing, or providing of connections for digital
online communications, between or among points specified by a
users, of material of the user's choosing, without modification
to the content of the material as sent or received.'').
Section 512(c) provides protection only from liability for copyright
infringement.18 Plaintiffs seek to hold defendants liable not for copyright
infringement, but for a violation of Section 1201(a)(2), which applies only
to circumvention products and technologies. Section 512(c) thus does not
apply here.
____________________
18 Id. § 512(c)(1).
b. Reverse Engineering Exception
Defendants claim also to fall under Section 1201(f) of the statute, which
provides that, notwithstanding Section 1201(a)(2)---
"a person who has lawfully obtained the right to use a copy of a
computer program may circumvent a technological measure that
effectively controls access to a particular portion of that
program for the sole purpose of identifying and analyzing those
elements of the program that are necessary to achieve
interoperability of an independently created computer program
with other programs . . . to the extent that any such acts of
identification and analysis do not constitute infringement under
this title.''19
____________________
19 17 U.S.C. § 1201(f)(1).
They contend that DeCSS is necessary to achieve interoperability between
computers running on the Linux system and DVDs and that this exception
therefore is satisfied.20 This contention fails for three reasons.
____________________
20 Def. Mem. at 8-9.
First, defendants have offered no evidence to support this assertion.
Second, even assuming that DeCSS runs under Linux, it concededly runs under
Windows---a far more widely used operating system---as well. It therefore
cannot reasonably be said that DeCSS was developed "for the sole purpose''
of achieving interoperability between Linux and DVDs.
Finally, and most important, the legislative history makes it abundantly
clear that Section 1201(f) permits reverse engineering of copyrighted
computer programs only and does not authorize circumvention of
technological systems that control access to other copyrighted works, such
as movies.21 In consequence, the reverse engineering exception does not
apply.
____________________
21 S. REP. NO. 105-190 (1998); H.R. REP. 105-551(II) (1998).
c. Encryption Research
Section 1201(g) provides in relevant part that:
"Notwithstanding the provisions of subsection (a)(2), it is not a
violation of that subsection for a person to---
"(A) develop and employ technological means to circumvent a
technological measure for the sole purpose of that person
performing the acts of good faith encryption research described
in paragraph (2); and
"(B) provide the technological means to another person with whom
he or she is working collaboratively for the purpose of
conducting the acts of good faith encryption research described
in paragraph (2) or for the purpose of having that other person
verify his or her acts of good faith encryption research
described in paragraph (2).''22
____________________
22 17 U.S.C. § 1201(g)(4).
Paragraph (2) in relevant part permits circumvention of technological
measures in the course of good faith encryption research if:
"(A) the person lawfully obtained the encrypted copy,
phonorecord, performance, or display of the published work;
"(B) such act is necessary to conduct such encryption research;
"(C) the person made a good faith effort to obtain authorization
before the circumvention; and
"(D) such act does not constitute infringement under this title .
. . .''23
____________________
23 Id. § 1201(g)(2).
In determining whether one is engaged in good faith encryption research,
the Court is instructed to consider factors including whether the results
of the putative encryption research are disseminated in a manner designed
to advance the state of knowledge of encryption technology versus
facilitation of copyright infringement, whether the person in question is
engaged in legitimate study of or work in encryption, and whether the
results of the research are communicated in a timely fashion to the
copyright owner.24
____________________
24 Id. § 1201(g)(3).
There has been a complete failure of proof by defendants on all of these
factors. There is no evidence that any of them is engaged in encryption
research, let alone good faith encryption research. It appears that DeCSS
is being distributed in a manner specifically intended to facilitate
copyright infringement. There is no evidence that defendants have made any
effort to provide the results of the DeCSS effort to the copyright owners.
Surely there is no suggestion that any of them made a good faith effort to
obtain authorization from the copyright owners. Accordingly, plaintiffs are
likely to prevail in their contention that defendants' activities are not
protected by Section 1201(g).
d. Security testing
Defendants contend also that their actions should be considered exempt
security testing under Section 1201(j) of the statute.25 This exception,
however, is limited to "assessing a computer, computer system, or computer
network, solely for the purpose of good faith testing, investigating, or
correcting [of a] security flaw or vulnerability, with the authorization of
the owner or operator of such computer system or computer network.''26
____________________
25 Def. Mem. at 11-12.
26 Id. § 1201(j)(1).
The record does not indicate that DeCSS has anything to do with testing
computers, computer systems, or computer networks. Certainly defendants
sought, and plaintiffs' granted, no authorization for defendants'
activities. This exception therefore has no bearing in this case.
e. Fair use
Finally, defendants claim that they are engaged in a fair use under Section
107 of the Copyright Act.27 They are mistaken.
____________________
27 Def. Mem. at 12. See 17 U.S.C. § 107.
Section 107 of the Act provides in critical part that certain uses of
copyrighted works that otherwise would be wrongful are "not . . .
infringement[s] of copyright.''28 Defendants, however, are not here sued
for copyright infringement. They are sued for offering to the public and
providing technology primarily designed to circumvent technological
measures that control access to copyrighted works and otherwise violating
Section 1201(a)(2) of the Act. If Congress had meant the fair use defense
to apply to such actions, it would have said so.
____________________
28 17 U.S.C. § 107.
3. Constitutionality of DMCA
Defendants contend that the DeCSS computer program is protected speech and
that the DMCA, at least insofar as it purports to prohibit the
dissemination of DeCSS to the public, violates the First Amendment.
As a preliminary matter, it is far from clear that DeCSS is speech
protected by the First Amendment. In material respects, it is merely a set
of instructions that controls computers.29 Courts that have considered the
question whether program code is constitutionally protected expression have
divided on the point.30 Nevertheless, this Court assumes for purposes of
this motion, although it does not decide, that even the executable code is
sufficiently expressive to merit some constitutional protection. That,
however, is only the beginning of the analysis.
____________________
29 Defendants asserted at oral argument that DeCSS, or some
versions of it, contain programmer's comments, "which are
non-executable appendages to lines of executable code.''
Tradescape.com v. Shivaram, No. 99 Civ. 8990 (LAK), 1999 WL
1102767, *8 (S.D.N.Y. Dec. 7, 1999). Such comments are protected
by the First Amendment. Plaintiffs, however, have disclaimed any
effort to restrain dissemination of programmer comments as
distinguished from executable code.
30 Compare Bernstein v. United States Dept. of Justice, 176 F.3d
1132, 1141(holding that encryption software in source code form
is constitutionally protected expression but expressing no
opinion with respect to object code), rehearing in banc granted,
opinion withdrawn, 192 F.3d 1308 (9th Cir. 1999); with Junger v.
Daley, 8 F. Supp.2d 708, 715-18 (N.D. Ohio 1998) (holding that
encryption software in source code form is functional rather than
expressive and therefore not protected speech); Karn v. United
States Dept. of State, 925 F. Supp. 1, 9 n.19 (D. D.C. 1996)
(assuming that source code is protected speech when joined with
commentary, but stating that source code alone is "merely a means
of commanding a computer to perform a function''); R. Polk
Wagner, The Medium Is the Mistake: The Law of Software for the
First Amendment, 51 STAN. L. REV. 387 (1999) (arguing that focus
of analysis in software cases should be on whether government
interests supporting regulation are related to suppression of
expression, not on whether code itself is intended to be or
understood as expressive); Mark A. Lemley & Eugene Volokh,
Freedom of Speech and Injunctions in Intellectual Property Cases,
48 DUKE L.J. 147, 236-37 (1998) ("most executable software is
best treated as a virtual machine rather than as protected
expression'').
a. Constitutionality of the DMCA
As some commentators have said, "Copyright law restricts speech: it
restricts you from writing, painting, publicly performing, or otherwise
communicating what you please.''31 And though it might conceivably be
argued that the First Amendment, which was adopted after the ratification
of the Constitution itself, trumped the Copyright Clause and forbids all
restraint or punishment of copyright infringement,32 this argument has been
rejected by the Supreme Court, which views the Bill of Rights and the
original Constitution as a single instrument and has made it unmistakably
clear that the First Amendment does not shield copyright infringement.33
Indeed, copyright is an "engine of free expression'' because it "supplies
the economic incentive to create and disseminate ideas.''34 To the extent
there is any tension between free speech and protection of copyright, the
Court has found it to be accommodated fully by traditional fair use
doctrine,35 with expression prohibited by the Copyright Act and not within
the fair use exception considered unprotected by the First Amendment.36
____________________
31 Lemley & Volokh, supra, 48 DUKE L.J. at 165-66.
32 This argument is posited by the Nimmers, who nevertheless do
not embrace it. See 1NIMMER § 1.10[A], at 1-66.44 to 1-66.45
(1999).
33 See generally Harper & Row Publishers Inc. v. Nation
Enterprises, 471 U.S. 539, 555-60 (1985).
34 Id. at 558.
35 See id. at 560. See also Wainwright Securities, Inc. v. Wall
Street Transcript Corp., 558 F.2d 91, 95 (2d Cir. 1977), cert.
denied, 434 U.S. 1014 (1978) ("Conflicts between interests
protected by the first amendment and the copyright laws thus far
have been resolved by application of the fair use doctrine.'');
Nihon Keizai Shimbun Inc. v. Comline Business Data, Inc., 166
F.3d 65, 74 (2d Cir. 1999).
36 See, e.g., Nihon Keizai Shimbum, 166 F.3d at 74.
The conclusion that copyright infringement may be proscribed consistently
with the First Amendment does not end the inquiry, however. This case
concerns the DMCA rather than the older aspects of the Copyright Act. The
DMCA sweeps more broadly by prohibiting production and dissemination of
technology that can circumvent measures taken to protect copyright, not
merely infringement of copyright itself. It is a prophylactic measure. In
consequence, further First Amendment analysis of the DMCA is warranted.
Nevertheless, the DMCA appears to be a legitimate exercise of Congress'
power.
The Copyright Clause empowers Congress "[t]o promote the Progress of
Science and useful Arts, by securing for limited Times to Authors . . . the
exclusive Right to their respective Writings . . . .''37 The Necessary and
Proper Clause further provides that Congress may "make all Laws which shall
be necessary and proper for carrying into Execution the foregoing Powers .
. . .''38 Hence, the Necessary and Proper Clause grants Congress the power
to do that which is necessary and proper to prevent others from publishing
protected writings for the duration of the copyright.
____________________
37 U.S. CONST., art. I, § 8.
38 Id.
The scope of Congress' power under the Necessary and Proper Clause is
broad. As Chief Justice Marshall wrote in McCulloch v. Maryland,39 "Let the
end be legitimate, let it be within the scope of the Constitution, and all
means which are appropriate, which are plainly adapted to that end, which
are not prohibited but consistent with the letter and spirit of the
constitution, are constitutional.''40 Moreover, the Supreme Court has made
clear that Congress should be accorded substantial deference in determining
how best to protect copyright in an age of rapid technological change.41
____________________
39 4 Wheat. (17 U.S.) 316 (1819).
40 Id. at 421.
41 See Sony Corp. of America v. Universal City Studios, 464 U.S.
417, 434 (1984) ("Sound policy, as well as history, supports or
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.'').
In enacting the DMCA, Congress found that the restriction of technologies
for the circumvention of technological means of protecting copyrighted
works "facilitate[s] the robust development and world-wide expansion of
electronic commerce, communications, research, development, and education''
by "mak[ing] digital networks safe places to disseminate and exploit
copyrighted materials.''42 That view can not be dismissed as unreasonable.
Section 1201(a)(2) of the DMCA therefore is a proper exercise of Congress'
power under the Necessary and Proper Clause.
____________________
42 S. REP. NO. 105-190, 105th Cong., 2d Sess. (1998).
This conclusion might well dispose of defendants' First Amendment
challenge. Given Congress' justifiable view that the DMCA is instrumental
in carrying out the objective of the Copyright Clause, there arguably is no
First Amendment objection to prohibiting the dissemination of means for
circumventing technological methods for controlling access to copyrighted
works. But the Court need not rest on this alone.
In determining the constitutionality of governmental restriction on speech,
courts traditionally have balanced the public interest in the restriction
against the public interest in the kind of speech at issue.43 This approach
seeks to determine, in light of the goals of the First Amendment, how much
protection the speech at issue merits. It then examines the underlying
rationale for the challenged regulation and assesses how best to
accommodate the relative weights of the interests in free speech interest
and the regulation.44
____________________
43 1 NIMMER §§ 1.10[A]-1.10[B][1], at 1-66.45 to 1-74. This
"definitional balancing'' is to be distinguished from "ad hoc
balancing,'' which seeks to balance only the particular interests
of the parties before the court, rather than the more general
public interests in the kind of speech and the governmental
regulation at issue. According to the Nimmers, ad hoc balancing
has proven unsatisfactory and generally has been replaced by the
definitional balancing method. Id.§ 1.10[A], at 1-67. See also
Konigsberg v. State Bar of Calif., 366 U.S. 36 (1961).
44 This kind of balancing has been utilized in cases involving
inter alia obscenity, privacy, and libel. 1 NIMMER § 1.10[A], at
1-68 (citing Roth v. United States, 354 U.S. 476 (1957)
(obscenity); Time, Inc. v. Hill, 385 U.S. 374 (1967) (privacy);
New York Times v. Sullivan, 376 U.S. 254 (1964) (libel)).
As Justice Brandeis wrote, freedom of speech is important both as a means
to achieve a democratic society and as an end in itself.45 Further, it
discourages social violence by permitting people to seek redress of their
grievances through meaningful, non-violent expression.46 These goals have
been articulated often and consistently in the case law.
____________________
45 Whitney v. California, 274 U.S. 357, 375 (1927) (Brandeis, J.
concurring) (cited in 1 NIMMER § 1.10[B], at 1-72 to 1-73). See
also Nixon v. Shrink Missouri Gov't PAC, No. 98- 963, 2000 WL
48424, *14 (U.S. Jan. 24, 2000) (Breyer, J., concurring); Wallace
v. Jaffree, 472 U.S. 38, 48 (1985); Mills v. Alabama, 384 U.S.
214, 218-19 (1966).
46 Id.
The computer code at issue in this case does little to serve these goals.
Although this Court has assumed that DeCSS has at least some expressive
content, the expressive aspect appears to be minimal when compared to its
functional component.47 Computer code primarily is a set of instructions
which, when read by the computer, cause it to function in a particular way,
in this case, to render intelligible a data file on a DVD. It arguably "is
best treated as a virtual machine . . . .''48
____________________
47 Junger, 8 F. Supp.2d at 715-18; Karn, 925 F. Supp. at 9 n. 19;
Lemley & Volakh, 48 DUKE L. J. at 236-37.
48 Lemley & Volakh, 48 DUKE L.J. at 236-37.
On the other side of this balance lie the interests served by the DMCA.
Copyright protection exists to "encourage individual effort by personal
gain''49 and thereby "advance public welfare''50 through the "promot[ion
of] the Progress of Science and useful Arts.''51 The DMCA plainly was
designed with these goals in mind. It is a tool to protect copyright in the
digital age. It responds to the risks of technological circumvention of
access controlling mechanisms designed to protect copyrighted works
distributed in digital form. It is designed to further precisely the goals
articulated above, goals of unquestionably high social value.
____________________
49 Mazer v. Stein, 347 U.S. 201, 219 (1953).
50 Id.
51 U.S. CONST. art. II, § 8.
This is quite clear in the specific context of this case. Plaintiffs are
eight major motion picture studios which together are largely responsible
for the development of the American film industry. Their products reach
hundreds of millions of viewers internationally and doubtless are
responsible for a substantial portion of the revenue in the international
film industry each year. To doubt the contribution of plaintiffs to the
progress of the arts would be absurd. DVDs are the newest way to distribute
motion pictures to the home market, and their popularity is growing
rapidly. The security of DVD technology is central to the continued
distribution of motion pictures in this format. The dissemination and use
of circumvention technologies such as DeCSS would permit anyone to make
flawless copies of DVDs at little expense.52 Without effective limits on
these technologies, copyright protection in the contents of DVDs would
become meaningless and the continued marketing of DVDs impractical. This
obviously would discourage artistic progress and undermine the goals of
copyright.
____________________
52 Schumann Decl. ¶¶ 4-5.
The balance between these two interests is clear. Executable computer code
of the type at issue in this case does little to further traditional First
Amendment interests. The DMCA, in contrast, fits squarely within the goals
of copyright, both generally and as applied to DeCSS. In consequence, the
balance of interests in this case falls decidedly on the side of plaintiffs
and the DMCA.
b. Distribution of DeCSS as Part of a Course of Conduct in
Violation of Law
Application of the DMCA to prohibit posting of DeCSS appears constitutional
also because that posting is part of a course of conduct the clear purpose
of which is the violation of law.
This line of reasoning first was articulated by the Supreme Court in
Giboney v. Empire Storage & Ice Co.,53 where the Court upheld an injunction
against peaceful picketing by union members despite the contention that the
picketers were attempting only to publicize truthful facts about a labor
dispute. Although labor picketing traditionally enjoys First Amendment
protection, the Court declined to extend such protection in Giboney on the
ground that the picketing was integral to a course of conduct in violation
of a valid criminal statute prohibiting restraint of trade.54 The Court
warned that, as a general matter, the government "cannot consistently with
our Constitution abridge [First Amendment] freedoms to obviate slight
inconveniences or annoyances,''55 but found that where the allegedly
protected speech is "used as an essential and inseparable part of a grave
offense against an important public law,'' it shall not be "immunize[d] . .
. from state control.''56 The Court held further that "it has never been
deemed an abridgement of freedom of speech or press to make a course of
conduct illegal merely because the conduct was in part initiated,
evidenced, or carried out by means of language, either spoken, written or
printed.''57 This principle has been applied in both criminal and
non-criminal contexts as long as the offense in question is defined by a
valid statutory scheme promoting an important public interest.58
____________________
53 336 U.S. 490, 498 (1949).
54 Id. at 498.
55 Id. at 501-02.
56 Id. at 502.
57 Id.
58 See, e.g., Hughes v. Superior Court, 339 U.S. 460 (1950)
(injunction against picketing to secure compliance with demand
that store adopt race-based hiring policy on ground that it
contravenes state policy against involuntary employment on racial
lines); Pittsburgh Press Co. v. Pittsburgh Comm'n on Human
Relations, 413 U.S. 376 (1973) (injunction against newspaper's
furtherance of illegal sex discrimination by placing of job
advertisements in gender-designated columns); National Society of
Professional Engineers v. United States, 435 U.S. 679 (1978)
(injunction under Sherman Act against professional association's
adoption of official opinions, policy statements or guidelines
implying that competitive bidding was unethical); NLRB v. Local
No. 3, 828 F.2d 936 (2d Cir. 1987) (injunction against union's
threat to strike as violation of National Labor Relations Act's
prohibition on unfair labor practices).
As has been discussed already, it no longer is open to doubt that the First
Amendment does not shield copyright infringement. The fundamental purpose
of DeCSS is to circumvent the technological means, CSS, that ensures that
the exclusive rights of the holders of copyright in DVD movies---including
importantly the exclusive right to make copies---are protected against
infringement. Even assuming that some would use DeCSS only to view
copyrighted motion pictures which they lawfully possessed, and thus
arguably not infringe plaintiffs' copyrights, the record clearly
demonstrates that the chief focus of those promoting the dissemination of
DeCSS is to permit widespread copying and dissemination of unauthorized
copies of copyrighted works. The dissemination of DeCSS therefore is the
critical component of a course of conduct, the principal object of which is
copyright infringement. That DeCSS arguably is expressive to some degree
does not alter that reality. In light of Giboney and its progeny,
defendants cannot latch onto the expressive aspect in order to shield a key
aspect of a chain of events, the main purpose of which is unlawful.
Application of the DMCA to prohibit production and dissemination of DeCSS
therefore does not violate the First Amendment.
c. Vagueness
Defendants contend summarily that the DMCA is "vague on its face and as
applied.''59 It is settled in this circuit that a party who "engages in
some conduct that is clearly proscribed [by the challenged statute] cannot
complain of the vagueness of the law as applied to the conduct of
others.''60 The record in this case strongly supports the contention that
defendants' conduct fits comfortably within the statute. In consequence,
defendants' claim of vagueness is frivolous.
____________________
59 Def. Mem. at 13.
60 Village of Hoffman Estates v. Flipside, Hoffman Estates, Inc.,
455 U.S. 489, 495 (1982).
d. Overbreadth
Defendants allege that the DMCA is overbroad in that it "unquestionably
attaches sanctions to protected conduct'' and exerts clear "chilling
effects'' by restricting dissemination of protected computer code, limiting
the rights of users to receive this code, and curtailing the rights of all
Linux users to decrypt DVDs.61
____________________
61 Def. Mem. at 13.
In order to challenge a statute on overbreadth grounds, a party first must
show that the enactment reaches a "substantial amount of constitutionally
protected conduct.'' 62 Defendants have not done so here. The claim of
overbreadth therefore fails.
____________________
62 Village of Hoffman Estates, 455 U.S. at 494.
4. Prior Restraint
Few phrases are as firmly rooted in our constitutional jurisprudence as the
maxim that "[a]ny system of prior restraints of expression comes to [a]
Court bearing a heavy presumption against its constitutional validity.''63
Yet there is a significant gap between the rhetoric and the reality. Courts
often have upheld restrictions on expression that many would describe as
prior restraints,64 sometimes by characterizing the expression as
unprotected65 and on other occasions finding the restraint justified
despite its presumed invalidity.66 Moreover, the prior restraint doctrine,
which has expanded far beyond the Blackstonian model67 that doubtless
informed the understanding of the Framers of the First Amendment,68 has
been criticized as filled with "doctrinal ambiguities and inconsistencies
result[ing] from the absence of any detailed judicial analysis of [its]
true rationale''69 and, in one case, even as "fundamentally
unintelligible.''70 Nevertheless, the doctrine has a well established core:
administrative preclearance requirements for and preliminary injunctions
against speech as conventionally understood are presumptively
unconstitutional. Yet that proposition does not dispose of this case.
____________________
63 New York Times Co. v. United States, 403 U.S. 713, 714 (1971)
(per curiam) (quoting Bantam Books, Inc. v. Sullivan, 372 U.S.
58, 70 (1963)).
64 See, e.g., Posadas de Puerto Rico Assoc. v. Tourism Co. of
Puerto Rico, 478 U.S. 328 (1986) (upholding restrictions on
casino gambling advertising); Times Film Corp. v. Chicago, 365
U.S. 43 (1961) (upholding local ordinance requiring review of
films by municipal officials as prerequisite to issuance of
permits for public screening); Salinger v. Random House, Inc.,
811 F.2d 90 (2d Cir.) (enjoining biographer's use of subject's
unpublished letters as copyright infringement), cert. denied, 484
U.S. 890 (1987); Dallas Cowboy Cheerleaders v. Pussycat Cinema,
Ltd., 604 F.2d 200 (2d Cir. 1979) (enjoining distribution of film
on ground that actresses' uniforms infringed plaintiff's
trademark). See generally LAURENCE H. TRIBE, AMERICAN
CONSTITUTIONAL LAW § 12-36, at 1045-46 (1988) (hereinafter
TRIBE).
65 See, e.g., Charles of the Ritz Group, Ltd. v. Quality King
Distributors, Inc., 832 F.2d 1317 (2d Cir. 1987) (upholding
injunction against commercial slogan on ground that slogan
created a likelihood of confusion and is therefore "beyond the
protective reach of the First Amendment''); Vondran v. McLinn,
No. 95-20296, 1995 WL 415153, *6 (N.D. Cal. July 5, 1995)
(enjoining defendant's false and disparaging remarks regarding
plaintiff's patented process for making fiber reinforced concrete
on the ground that the remarks are not protected by the First
Amendment).
66 See, e.g., Times Film Corp. v. Chicago, 365 U.S. 43 (1961)
(upholding local ordinance requiring review by city officials of
all films as a prerequisite to grant of permit for public
screening despite concerns of First Amendment violations);
Posadas de Puerto Rico Assoc., 478 U.S. 328 (upholding
restrictions on advertising despite finding that the advertising
fell within ambit of First Amendment); Dallas Cowboys
Cheerleaders, Inc., 604 F.2d 200 (enjoining distribution of film
for trademark infringement despite claim that injunction violated
distributor's First Amendment rights).
67 4 WILLIAM BLACKSTONE, COMMENTARIES ON THE LAWS OF ENGLAND
151-52 (1769).
68 See Pittsburgh Press Co.,413 U.S. at 390.
69 Martin H. Redish, The Proper Role of the Prior Restraint
Doctrine in First Amendment Theory, 70 VA. L. REV. 53, 54 (1983)
(hereinafter "Redish''). See also TRIBE § 12-34, at 1040-41 (2d
ed. 1988).
70 John Calvin Jeffries, Jr., Rethinking Prior Restraint, 92 YALE
L.J. 409, 419 (1983).
The classic prior restraint cases were dramatically different from this
one. Near v. Minnesota71 involved a state procedure for abating scandalous
and defamatory newspapers as public nuisances. New York Times Co. v. United
States72 dealt with an attempt to enjoin a newspaper from publishing an
internal government history of the Vietnam War. Nebraska Press Association
v. Stuart73 concerned a court order barring the reporting of certain
details about a forthcoming murder case. In each case, therefore, the
government sought to suppress speech at the very heart of First Amendment
concern---expression about public issues of the sort that is indispensable
to self government. And while the prior restraint doctrine has been applied
well beyond the sphere of political expression, we deal here with something
new altogether---computer code, a fundamentally utilitarian construct even
assuming it embodies some expressive element. Hence, it would be a mistake
simply to permit its assumed expressive element to drive a characterization
of the code as speech no different from the Pentagon Papers, the
publication of a newspaper, or the exhibition of a motion picture and then
to apply prior restraint rhetoric without a more nuanced consideration of
the competing concerns.
____________________
71 283 U.S. 697 (1931).
72 403 U.S. 713.
73 427 U.S. 539 (1976).
In this case, the considerations supporting an injunction barring the
posting of DeCSS pending a trial on the merits are very substantial indeed.
Copyright and, more broadly, intellectual property piracy are endemic, as
Congress repeatedly has found.74 The interest served by prohibiting means
that facilitate such piracy---the protection of the monopoly granted to
copyright owners by the Copyright Act---is of constitutional dimension.
There is little room for doubting that broad dissemination of DeCSS would
seriously injure or destroy plaintiffs' ability to distribute their
copyrighted products on DVDs and, for that matter, undermine their ability
to sell their products to the "home video'' market in other forms. The
potential damages probably are incalculable, and these defendants surely
would be in no position to compensate plaintiffs for them if plaintiffs
were remitted only to post hoc damage suits.
____________________
74 See H.R. REP. 106-216, 106th Cong., 1st Sess. (1999)
("Notwithstanding [penalties for copyright infringement]
copyright piracy of intellectual property flourishes, assisted in
large part by today's world of advanced technologies. For
example, industry groups estimate that counterfeiting and piracy
of computer software cost the affected copyright holders more
than $11 billion last year (others believe the figure is closer
to $20 billion). In some countries, software piracy rates are as
high as 97% of all sales. The U.S. rate is far lower (25%), but
the dollar losses ($2.9 billion) are the highest worldwide. The
effect of this volume of theft is substantial: lost U.S. jobs,
lost wages, lower tax revenue, and higher prices for honest
purchasers of copyrighted software. Unfortunately, the potential
for this problem to worsen is great.''); S. REP. 106-140, 106th
Cong., 1st Sess. (1999) ("Trademark owners are facing a new form
of piracy on the Internet caused by acts of `cybersquatting.''');
S. REP. 105-190, 105th Cong., 2d Sess. (1998) ("Due to the ease
with which digital works can be copied and distributed worldwide
virtually instantaneously, copyright owners will hesitate to make
their works readily available on the Internet without reasonable
assurance that they will be protected against massive piracy.'');
H.R. REP. 105-339, 105th Cong., 1st Sess. (1997) ("[C]opyright
piracy flourishes in the software world.'').
On the other side of the coin, the First Amendment interests served by the
dissemination of DeCSS prior to a trial on the merits are minimal. The fact
that there may be some expressive content in the code should not obscure
the fact that its predominant character is no more expressive than an
automobile ignition key---it is simply a means, electronic in one case and
mechanical in the other, of causing the machine with which it is used to
function in a particular way. Hence, those of the traditional rationales
for the prior restraint doctrine that relate to inhibiting the transmission
and receipt of ideas are of attenuated relevance here, even assuming that
skilled programmers might learn something about encryption from studying
the DeCSS code. Indeed, even academic commentators who take the extreme
position that most preliminary injunctions in intellectual property cases
are unconstitutional prior restraints concede that there is no First
Amendment obstacle to preliminary injunctions barring distribution of
copyrighted computer object code or restraining the construction of a new
building based on copyrighted architectural drawings because the functional
aspects of these types of information are "sufficiently nonexpressive.''75
____________________
75 Lemley & Volokh, 48 DUKE L.J. at 210 & n.275.
To be sure, there is much to be said in most circumstances for the usual
procedural rationale for the prior restraint doctrine: prior restraints
carry with them the risk of erroneously suppressing expression that could
not constitutionally be punished after publication.76 In this context,
however, that concern is not fully persuasive, both because the enjoined
expressive element is minimal and because of the procedural context of the
case. This injunction was issued only on a finding, after an adversarial
proceeding, that plaintiffs have a very strong likelihood of ultimate
success on the merits.77 The Court offered (and defendants thus far have
declined) a virtually immediate trial on the merits, thus ensuring that the
duration of the restraint prior to a final determination will be as brief
as defendants wish.78 Hence, even assuming that preliminary injunctions
that affect expression even incidentally to the regulation of other action
should be granted only on the clearest showing after an adversary hearing
and where the party enjoined may promptly obtain a final determination on
the merits, those requirements have been satisfied here.
____________________
76 See, e.g., Pittsburgh Press Co., 413 U.S. at 390 ("The special
vice of a prior restraint is that communication will be
suppressed . . . before an adequate determination that it is
unprotected by the First Amendment.''); Lemley & Volokh, 48 DUKE
L.J. at 200-02, 211; see Redish, 70 VA. L. REV. at 75-83.
77 See Lemley & Volokh, 48 DUKE L.J. at 211-12, 215
(acknowledging that high likelihood of success diminishes risk of
erroneous suppression of protected speech).
78 See Freedman v. Maryland, 380 U.S 51, 59 (1965).
Accordingly, the Court holds that the prior restraint doctrine does not
require denial of the preliminary injunction in this case.79
____________________
79 As the Court has found a strong likelihood of success on the
merits, it is not necessary to analyze the balance of hardships.
Nonetheless, were such analysis appropriate, the Court would find
the balance to tip decidedly in plaintiffs' favor. Were the
injunction erroneously granted, defendants would risk a delay in
their ability to make DeCSS available on their Web sites. As they
have made no claim that dissemination of DeCSS is particularly
time sensitive, the Court finds this risk to be relatively
benign. In contrast, were the injunction wrongly denied,
plaintiffs would face a choice between continued infringement of
their copyrights as a result of illegal DVD decryption or
voluntary deferral of release of DVDs until the matter is fully
litigated as well as the cannibalization of the market for their
products via other media. Either option likely would result in
substantial economic losses for plaintiffs.
Conclusion
For the foregoing reasons, the Court granted plaintiffs' motion for a
preliminary injunction and entered such an order on January 20, 2000. The
foregoing, together with those made on the record on that date, constitute
the Court's findings of fact and conclusions of law.
SO ORDERED.
Dated: February 2, 2000
_______________________________________
Lewis A. Kaplan
United States District Judge
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