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Appellate Reply Brief of Movie Industry
Plaintiffs-Appellee in MPAA v. 2600 Case
(officially Universal v. Reimerdes), Feb 28, 2001
00-9185
To Be Argued By:
Charles
S. Sims
United States Court Of Appeals
for the
Second Circuit
¨¨¨¨¨
UNIVERSAL
CITY STUDIOS, INC., PARAMOUNT PICTURES
CORPORATION,
METRO-GOLDWYN-MAYER STUDIOS INC., TRISTAR
PICTURES, INC., COLUMBIA
PICTURES INDUSTRIES, INC., TIME
WARNER ENTERTAINMENT COMPANY,
L.P., DISNEY ENTERPRISES
INC., TWENTIETH CENTURY FOX FILM
CORPORATION,
Plaintiffs-Appellees,
-against-
ERIC
CORLEY, also known as Emmanuel Goldstein
and 2600 ENTERPRISES
INC.,
Defendants-Appellants,
-and-
SHAWN
C. REIMERDES and ROMAN KAZAN,
Defendants.
ON
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN
DISTRICT OF NEW YORK
BRIEF FOR PLAINTIFFS-APPELLEES
Leon P. Gold, Esq.
Charles S. Sims, Esq.
Jon A. Baumgarten, Esq.
Carla M. Miller, Esq
Matthew J. Morris, Esq.
Proskauer Rose LLP
1585 Broadway
New York, New York 10036
(212) 969-3000
Attorneys for Plaintiffs-Appellees
TABLE OF CONTENTS
Page
ADDENDUM OF
PERTINENT STATUTORY AND
LEGISLATIVE MATERIALS
17 U.S.C.
§ 1201 Add-1
S. Rep. No.
105-190 (1998) Add-8
H.R. Conf. Rep.
No. 105-796 (1998) Add-47
House Comm. on
the Judiciary, 105th C ong., 2d Sess., Section-
by-Section
Analysis of H.R. 2281 as Passed by the United States
House of
Representatives on August 4, 1998 (Comm. Print. 1998) Add-58
H.R. Rep. No.
105-551, pt. 1 (1998) Add-79
H.R. Rep. No.
105-551, pt. 2 (1998) Add-88
Recommendation of
the Register of Copyrights, Exemption to
Prohibition on
Circumvention of the Copyright Protection
Systems for Access
Control Technologies, 65 Fed. Reg. 64556
(Oct. 27, 2000) Add-109
144 Cong. Rec.
H10615 (Statements of Rep. Barney Frank) Add-129
TABLE
OF AUTHORITIES
CASES
Page(s)
American Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994) 61
A&M Records, Inc. v Napster, Inc.,
No. 00-16401, 16403, 2001 WL 115033 (9th Cir. Feb. 12,
2001) 54, 62
Anderson v. Branen,
27 F.3d 29 (2d Cir. 1994) 3
Anderson v. Nidorf,
26 F.3d 100 (9th Cir. 1994),
cert. denied, 574 U.S. 1035 (1995) 64
Arcara v. Cloud Books, Inc.,
478 U.S. 697 (1986) 19, 20
Austin v. Michigan St. Chamber of Commerce,
494 U.S. 652 (1989) 53
Authors League of America, Inc. v. Oman,
790 F.2d 220 (2d Cir. 1986) 64
Basic Books, Inc. v. Kinko's Graphics Corp.,
758 F. Supp. 1522 (S.D.N.Y. 1991) 63
Bernstein v. United States Department of Justice,
176 F.3d 1132 (9th Cir.), reh'g en banc granted, op.
withdrawn,
192 F.3d 1308 (9th Cir. 1986) 20
Bery v. City of New York,
97 F.3d 689 (2d Cir. 1996) 44
Blount v. Rizzi,
400 U.S. 410 (1971 25
Bose Corp. v. Consumers Union,
466 U.S. 485 (1984) 17
Broadrick v. Oklahoma,
413 U.S. 601 (1973) 49, 64
Burson v. Freeman,
504 U.S. 191 (1992) 53
Cable/Home Communication Corp. v. Network Products,
Inc.,
902 F.2d 829 (11th Cir. 1990) 35, 36
California Satellite System v. Seimon,
767 F.2d 1364 (9th Cir. 1985) 36
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) 60
Chicago Lock v. Fanberg,
676 F.2d 400 (9th Cir. 1982) 27
Cincinnati v. Discovery Network Inc.,
507 U.S. 410 (1993) 32
City of Ladue v. Gilleo,
512 U.S. 43 (1994) 23, 24
Clark v. Community for Creative Non-Violence,
468 U.S. 288 (1984) 18, 24, 44
Cohen v. Cowles Media Co.,
501 U.S. 663 (1991) passim
Commissioner v. Clark,
489 U.S. 726 (1989) 59
Cox Broad. Corp. v. Cohn,
420 U.S. 469 (1975), reversed 33
Distasio v. Perkin Elmer Corp.,
157 F.3d 55 (2d Cir. 1998) 3
Don King Products, Inc. v. Douglas,
742 F. Supp. 778 (S.D.N.Y. 1990) 35
FCC v. Pacifica Foundation,
438 U.S. 726 (1978) 38, 49
Flamm v. American Association of University Women,
201 F.3d 144 (2d Cir. 2000) 35
Florida Star v. B.J.F.,
491 U.S. 524 (1989) passim
Harper & Row Publishers Inc. v. Nation
Enterprises,
471 U.S. 539 (1985) 35, 60
Hill v. Colorado,
120 S. Ct. 2480 (2000) passim
Hurley v. BLIB,
515 U.S. 539 (1985) 17
Infinity Broad. Corp., v. Kirkwood,
150 F.3d 104 (2d Cir. 1998) 62
Itar-Tass Russian News Agency v. Russian Kurier,
Inc.,
153 F.3d 82 (2d Cir. 1998) 35
Jews for Jesus, Inc. v. Jewish Community Relations
Council, Inc.,
968 F.2d 286 (2d Cir. 1992) 35
Junger v. Daley,
209 F.3d 481 (6th Cir. 2000) 20, 37
Kentucky Fried Chicken Corp. v. Diversified Packaging
Corp., 549
F.2d 368 (5th Cir. 1977) 47
Konigsberg v. State Bar,
366 U.S. 36 (1961) 32
Landmark Communications, Inc. v. Virginia,
435 U.S. 829 (1978) 33
Longo v. United States Postal Service,
953 F.2d 790 (2d Cir. 1992), cert. denied,509
U.S. 904 (1993) 64
Los Angeles Police Department v. United Reporting
Publ'g Corp.,
528 U.S. 32 (1999) 43, 44. 50, 51
Madsen v. Women's Health Ctr., Inc.,
512 U.S. 753 (1994) 39
Mehta v. Surles,
905 F.2d 595 (2d Cir. 1990) 63
Members of City Council v. Taxpayers for Vincent,
466 U.S. 789 (1984) 63
New York v. Ferber,
458 U.S. 747 (1982) 64
New York Times Co. v. United States,
403 U.S. 713 (1971) 35
Nixon v. Shrink Missouri Government PAC,
528 U.S. 377 (2000) 28
Oral-B Laboratoriess, Inc. v. Mi-Lor Corp.,
810 F.2d 20 (2d Cir. 1987) 47
Osborne v. Ohio,
495 U.S. 103 (1990) 53, 64
Patsy v. Board of Regents,
457 U.S. 496 (1982) 59
Pittsburgh Press Co. v. Pittsburgh Commission on
Human Relations,
413 U.S. 376 (1973) passim
Princeton University Press v. Michigan Document
Services,
99 F.3d 1381 (6th Cir. 1996),
cert. denied, 520 U.S. 1156 (1997) 62
Procunier v. Martinez,
416 U.S. 396 (1974),
overruled in part on other grounds by Thornburgh v.
Abbott,
490 U.S. 401 (1989) 19, 37
Reno v. ACLU,
521 U.S. 844 (1997) 18, 24
Sable Communications of Cal., Inc. v. FCC,
492 U.S. 115 (1989) 18, 25
San Francisco Arts & Athletics, Inc. v. United
States Olympic Committee,
483 U.S. 522 (1987) 19, 35
Schenck v. Pro-Choice Network,
519 U.S. 357 (1997) 43, 44, 50, 52
Smith v. Daily Mail Pub'g Co.,
443 U.S. 97 (1979) 33
Sony Corp. of America v. Universal City Studios,
Inc.,
464 U.S. 417 (1984) 26, 57, 59, 61
Stewart v. Abend,
495 U.S. 207 (1990) 66
Turner Broad. System, Inc. v. FCC,
512 U.S. 622 (1994) passim
Turner Broad. System, Inc. v. FCC,
520 U.S. 180 (1997) passim
UMG Recordings, Inc. v. MP3.com, Inc.,
92 F. Supp. 2d 349 (S.D.N.Y. 2000) 63
United States v. Albertini,
472 U.S. 675 (1985) passim
United States v. Babwah,
972 F.2d 30 (2d Cir. 1992) 39
United States v. Mendelsohn,
896 F.2d 1183 (9th Cir. 1990) passim
United States v. O'Brien,
391 U.S. 367 (1968) passim
United States v. Playboy Entm't Group, Inc.,
120 S. Ct. 1878 (2000) 18, 29
United States v. Quiroz,
22 F.3d 489 (2d Cir. 1994) 39
United States v. Scott,
187 F.3d 282 (2d Cir. 1999) passim
United States v. Spy Factory,
951 F. Supp. 450 (S.D.N.Y. 1997) 25, 36
United States v. Tappin,
205 F.3d 536 (2d Cir.),
cert. denied, 121 S. Ct. 260 (2000) 59
United States v. Weslin,
156 F.3d 292 (2d Cir. 1998) 23, 30, 39, 42
Universal Studios, Inc. v. Reimerdes,
111 F. Supp. 2d 294 (S.D.N.Y. 2000) 1
Veilleux v. National Broad. Co.,
206 F.3d 92 (1st Cir. 2000) 13
Ward v. Rock Against Racism,
491 U.S. 781 (1989) 15
Winter v. G.P. Putnam's Sons,
938 F.2d 1033 (9th Cir. 1991) 29
Zacchini v. Scripps-Howard Broad. Co.,
433 U.S. 562 (1977) 27
STATUTES
2 U.S.C. § 1607 38
17 U.S.C. § 107 1, 55, 60, 68
17 U.S.C. § 202 66
17 U.S.C. § 601 64
17 U.S.C. § 1201(a) 55
17 U.S.C. § 1201(a)(1) passim
17 U.S.C. § 1201(a)(2) passim
17 U.S.C. § 1201(a)(3) 65
17 U.S.C. § 1201(b) passim
17 U.S.C. § 1201(b)(1)(a) 7
17 U.S.C. § 1201(c)(1) 60
17 U.S.C. § 1201(c)(4) 38
17 U.S.C. § 1201(d) 55
17 U.S.C. § 1201(e) 55
17 U.S.C. § 1201(f) passim
17 U.S.C. § 1201(g) passim
17 U.S.C. § 1201(h) 55
17 U.S.C. § 1201(i) 55
17 U.S.C. § 1201(j) 13, 55, 62
17 U.S.C. § 1201(j)(4) 45, 58
17 U.S.C. § 1201(k) 31
18 U.S.C. § 112(d) 38
18 U.S.C. § 2512 25, 36
42 U.S.C. § 2000bb-4 38
47 U.S.C.§ 326 38
47 U.S.C.§ 553(a)(2) 36
47 U.S.C.§ 605 (e)(4) 36
Pub L. No. 106-274
(Religious Land Use and Institutional Persons Act of
2000) 38
U.C.C. § 2-314 36
U.C.I.T.A. § 405 (Uniform Computer Information
Transaction Act of 2000) 38
TREATISES
Nimmer
on Copyright, § 12A.03[C] (2000) 6
Milgrim
on Licensing, § 5.20 (2000)
OTHER AUTHORITIES
Dan L. Burk, Patenting Speech,
79 Tex. L. Rev. 99, 116 (2000) 16
Timothy R. Cahn and Joshua R. 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) 48
Katherine A. Moerke
Free Speech to a Machine? Encryption Software Source
Code Is Not Constitutionally Protected "Speech" Under the
First Amendment,
84 Minn. L. Rev. 1007 (2000) 21
David Nimmer,
A Riff on Fair Use in the Digital Millennium
Copyright Act,
148 U. Pa. L. Rev. 673, 723 (2000) 56, 67
Pamela Samuelson, J.H. Reichman, et al.,
A Manifesto Concerning the Legal Protection of
Computer
Programs, 94 Colum. L. Rev. 2308 (1994) 16
H.R. Rep. No. 105-796 (1998) 22, 26
H.R. Rep. No. 105-551, pt. 1, (1998) 28, 40
H.R. Rep. No. 105-551, pt. 2, (1998) 40, 56, 57
S. Rep. No. 105-190 (1998) passim
65 Fed. Reg. 64556 (Oct. 27, 2000) passim
144 Cong. Rec. H10615 (1998) 40
Bruce Schneier, Publicising Vulnerabilities,
Crypto-Gram, Feb. 15, 2000 43
Staff
of House Comm. on the Judiciary, 105th Cong., 2d Sess.,
Section-by-Section Analysis of H.R. 2281 as Passed by the United
States
House of Representatives on August 4, 1998 (Comm.
Print. 1998) 26, 58
Testimony
Regarding Implementation of the December 1996 WIPO
Copyright and
Phonograms Treaties: Hearing on H.R, 2281 Before the
House Comm.
on Commerce, 105th Cong. (1998) 56
Testimony
Regarding Comprehensive Implementation of the December
1996 WIPO
Copyright and Phonograph Treaties: Hearing on H.R. 2281
Before the
House Comm. on the Judiciary, 105th Cong. (1997) 56
ISSUES PRESENTED FOR REVIEW
1.Whether the post trial injunction issued by the district court
pursuant to the trafficking proscriptions of the Digital Millennium
Copyright Act, 17 U.S.C. § 1201(a)(2) and (b), prohibiting
defendants from continuing to provide DeCSS to the public, is
consistent with the First Amendment.
2.Whether the district court correctly rejected defendants' fair
use defense where Congress expressly rejected providing a fair use
defense to the trafficking cause of action under 17 U.S.C. §
1201(a)(2) and (b); and defendants were not themselves seeking to use
or make fair use of DeCSS, and could not meet the fair use standards
of 17 U.S.C. § 107.
STATEMENT OF THE CASE
Defendants-appellants Eric
Corley (a/k/a Emmanuel Goldstein) and 2600 Enterprises, Inc.
(collectively "Corley")
1
appeal the final judgment and order of permanent injunction entered
on August 17, 2000 by the Honorable Lewis A. Kaplan, after a full
trial on the merits.
This case presents an important
test of the trafficking proscriptions of the Digital Millennium
Copyright Act of 1998 ("DMCA"), 17 U.S.C. § 1201 et
seq. Congress enacted the DMCA, after its ratification in 1997 of
the World Intellectual Property Organization ("WIPO")
Copyright Treaties, to provide new and additional protection for
copyrighted works in the digital age by mandating legal protection
for technological measures employed to prevent unauthorized copying
and distribution of copyrighted works. The DMCA addresses the
problem of instantaneous, widespread proliferation of infringing
copies made possible through the Internet, and expressly authorizes
injunctive relief against trafficking in, and offering to the public,
devices which circumvent technological measures, such as encryption
and scrambling, that copyright holders put in place to protect their
works in digital form.
At trial, Plaintiffs-appellees
(the "Studios") proved each of the elements of Corley's
violation of 17 U.S.C. § 1201(a)(2) and (b).
2
Corley does not challenge those findings or dispute on this appeal
that: (1) the Content Scramble System ("CSS") is a
technological measure that effectively controls access to, and
copying of, the Studios' copyrighted works delivered in digital form
on DVDs, within the meaning of the DMCA (Tr. 750:14-751:1);
3
(2) "DeCSS" is a device that was primarily designed to
decrypt CSS-encoded DVDs and copy the decrypted movie to a computer
hard drive (Tr. 228:6-9, 809:18-22, 821:21-822:17, 834:5-6,
619:12-18, 748:17-19, 896:25-897:4, 898:16-22, 1099:16-18); and (3)
Corley disseminated DeCSS as a willful act of "electronic civil
disobedience." (Tr. 834:18-24, 847:10-16; A2374, 361:7-21)
4
Rather, Corley appeals Judge
Kaplan's final judgment and permanent injunction prohibiting his
trafficking in an unlawful circumvention device solely on First
Amendment grounds, arguing that DeCSS, the software utility that
decrypts the Studios' files, is protected speech whose dissemination
to the public cannot be interfered with consistently with the First
Amendment. As the Studios demonstrate below - and as Judge Kaplan
correctly found in a comprehensive and well-reasoned opinion - the
trafficking proscriptions of the DMCA are aimed at conduct, not
speech. Application of the DMCA to Corley's conduct of
indiscriminately disseminating an unlawful circumvention device to
the public does not violate the First Amendment.
A.The Film Studios' Businesses, the Advent of DVD Technology, and
the Content Scramble System ("CSS").
The Studios produce, manufacture
and distribute copyrightable and copyrighted material, including,
specifically, full-length motion pictures. (Tr. 401:16-402:7;
404:8-11) The Studios, either directly or through affiliates,
distribute motion pictures for theatrical exhibition, for television
broadcast, and on portable media such as videocassette tapes and
digital versatile discs ("DVDs") for distribution in the
home video market. (Tr. 402:5-14)
DVDs are the most current
technological advance in the home video market (Tr. 402:8-14), and
can be played on standalone "DVD players," or on personal
computers configured with a DVD drive and additional hardware or
software devices sometimes referred to as "media players."
(Tr. 25:4-11, 925:3) Because they store audiovisual information
digitally, DVDs offer improved picture and sound quality over analog
media such as videocassette tapes. (Tr. 240:3-12; 403:18-404:2)
When digital data is copied or
transmitted, the overall quality does not degrade as in copies made
from an analog source. (Tr. 404:19-22) Thus, without an effective
protection system for DVDs, it would be relatively simple for pirates
to make pristine, unauthorized copies. (Tr. 404:23-24) Such
unauthorized copies could be stored on computer hard drives or other
auxiliary storage devices such as CD-ROMs, and duplicated for
unlawful sale, transfer or exchange, including by transmission over
the Internet, and each of those copies would be a perfect master for
further copying. (Tr. 404:23-25, 628:21-629:15)
Because of this enhanced risk of
unauthorized copying and distribution of digital media, the Studios
were reluctant to release valuable copyrighted films on DVDs without
implementing a copy protection and access control system. (Tr.
404:16-405:5, 480:22-23) The Studios, therefore, in reliance on
Congress's enactment of the anti-circumvention provisions of the
DMCA, adopted such a system - the "Contents Scramble System"
("CSS") - to provide security for the copyrighted motion
pictures stored on DVDs. (Tr. 406:13-407:7)
CSS includes elements of
encryption and other security and authentication measures that
require DVD player devices to operate with licensed software "player
keys," which are necessary to descramble and intelligibly play
back the DVD content. (Tr. 24:22-25:3; 209:20-210:13; 628:4-6) CSS
has been licensed, by the DVD Copy Control Association, on a
non-discriminatory basis to hundreds of DVD player manufacturers
around the world, and is similarly available to others. (Tr.
409:17-25, 511:9-13) Under the CSS license, authorized DVD players
are designed to decrypt, unscramble and play back the DVD movie
content, but not to enable users to access that content in digital
form or make digital copies of the copyrighted content. (Tr.
409:20-24; 505:4-6)
B.The Digital Millennium Copyright Act of 1998 ("DMCA")
One of the primary objectives of
the DMCA was to bring United States copyright law in line with the
WIPO Copyright treaties. The WIPO treaties imposed an obligation on
member countries to "provide 'legal protection and effective
legal remedies' against circumventing technological measures, e.g.,
encryption and password protection, that are used by copyright owners
to protect their works from piracy . . . ." See S. Rep.
No. 105-190, at 8, 10-11 (1998) (Add-15, 17-18). Key provisions of
the DMCA unambiguously prohibit trafficking in devices designed to
circumvent so-called technological access control and copy control
measures, like CSS. See Nimmer on Copyright § 12A.03[C]
at 12A-27 n.105 (2000). Specifically, Title 17 U.S.C. §
1201(a)(2) provides that:
[n]o
person shall manufacture, import, offer to the public, provide, or
otherwise traffic in any technology, product, service, device,
component, or part thereof, that
(A) is
primarily designed or produced for the purpose of circumventing a
technological measure that effectively controls access to a work
protected under this title;
(B) has
only limited commercially significant purpose or use other than to
circumvent a technological measure that effectively controls access
to a work protected under this title; or
(C) is
marketed by that person or another acting in concert with that person
with that person's knowledge for use in circumventing a technological
measure that effectively controls access to a work protected under
this title.
17 U.S.C. § 1201(a)(2) (2000).
5
Section 1201(b)(1)(a) similarly prohibits trafficking in devices
"for the purpose of circumventing protection afforded by a
technological measure that effectively protects a right of a
copyright owner." The anti-trafficking provisions supplement
the prohibition of circumventing in § 1201(a)(l) "[i]n
order to provide meaningful protection and enforcement of the
copyright owner's right to control access," copying and
distribution. S. Rep. No. 105-190 at 28 (1998) (Add- 35).
C.The Circumvention of CSS, and the Creation and Proliferation of
DeCSS.
In or around October 1999, it
was widely reported that a group of computer "hackers" in
Europe had identified the encryption keys for CSS. (Tr.
619:22-621:20) These hackers - including a Norwegian, Jon Johanssen,
who testified at trial - created and posted on the Internet an
executable software program commonly referred to as "DeCSS,"
which, without authorization from the copyright owners, allowed
motion pictures on DVDs to be decrypted and copied to a computer hard
drive. (Tr. 245:11-22; 622:21-23; 822:14-17)
DeCSS, which was designed to run
on the Windows(R) operating system, accomplishes this function by
mimicking the software player key that a CSS-licensed DVD player
would use to decrypt and unscramble the DVD content, thereby
circumventing, without authorization, the protections afforded by
CSS. (Tr. 214:4-5; 250:7-251:16; 628:12-629:15; 898:19-22) DeCSS
performs no functions other than decrypting a DVD movie file and then
copying it to the user's computer hard drive or other designated
storage device. (Tr. 246:24-248:5; 619:12-16; 896:25-897:4)
Although Corley continues to assert (Br. 4) that DeCSS was created
for the purpose of developing an "open-source" DVD player
to run on the Linux operating system, Judge Kaplan questioned the
veracity of that tale and refused to so find. Universalat 311 &
n.79. In fact, contrary to the claim that DeCSS was created only to
help the Linux development project, Johanssen admitted at trial that
he first posted DeCSS to an Internet chat room that is an open forum
for DVD enthusiasts generally, not just Linux developers (Tr.
632:9-14, 633:1-4), and that, "about a month" later,
another visitor to that chat room told Johanssen that he had
downloaded a movie from the Internet. (Tr. 629:16-633:4)
The significant harm posed to
the Studios' investment in their copyrighted works by the
dissemination of DeCSS (and, with it, the potential for widespread
dissemination over the Internet of infringing copies of their movies)
is neither exaggerated nor hypothetical. The Studios proved at
trial, and Judge Kaplan expressly found, that "DeCSS is a free,
effective and fast means of decrypting plaintiffs' DVDs and copying
them to computer hard drives." Universal at 315.
Moreover, using DeCSS in conjunction with a file compression utility
known as DivX "which is [also] available over the Internet for
nothing, with the investment of some time and effort, permits
compression of the decrypted files to sizes that readily fit on a
writeable CD-ROM" or can be exchanged over the Internet via
high-speed connections. id.
D.Defendants Eric Corley and 2600 Enterprises, Inc., and
Their
Unlawful Trafficking in DeCSS and Linking Scheme
Intentionally Designed to Evade the Preliminary Injunction
On January 17, 2000, the Studios
initiated this lawsuit for violation of the trafficking proscriptions
of the DMCA against Corley - a self-described hacker journalist - and
two other individuals, each of whom had posted the DeCSS executable
program on their Internet websites.
6
(A5)
On January 20, 2000, Judge
Kaplan issued a preliminary injunction prohibiting the defendants
from, inter alia, "posting on any Internet web site, or
in any other way manufacturing, importing, or offering to the public,
providing, or otherwise trafficking in DeCSS . . . ." (A2563)
After the preliminary injunction issued, the Studios also were
successful in their efforts, through their trade association the
Motion Picture Association of America, to discourage the posting of
DeCSS on the Internet by sending out numerous cease and desist
letters. Universal at 312; see, e.g.,A2284.
Following issuance of the
preliminary injunction, Corley removed the DeCSS posting from the
Site. However, contrary to Corley's contention that "[t]here is
no evidence that 2600's publication of DeCSS was different or more
widespread than prior or subsequent publications by others,"
(Br. 5), Judge Kaplan found that Corley set out on a course of
conduct purposefully designed "to frustrate plaintiffs' recourse
to the judicial system by making effective relief difficult or
impossible," Universal at 313, "to promote the
dissemination of the program in an effort to defeat effective
judicial relief," id. at 341, and "to defeat the
purpose of the preliminary injunction," id. at 343, by
setting up a veritable DeCSS clearinghouse on the Site. (A2295,
A2330)
Corley solicited other hackers
to post DeCSS and then forward back to the Site the website addresses
(called "URLs") for those postings. Corley even provided a
convenient input box on the Site through which one could transmit to
him the URL for a new posting of DeCSS so that he could link to it.
(A2281)
As Judge Kaplan expressly found
(Universal at 312-13):
[i]n
what [Corley] termed an act of "electronic civil disobedience"
. . [Corley] continued to support links to other web sites purporting
to offer DeCSS for download, a list which had grown to nearly five
hundred by July 2000 . . . . Indeed, [the Site] carried a banner
saying "Stop the MPAA" and, in reference to this lawsuit,
proclaimed: "We have to face the possibility that we could be
forced into submission. For that reason it's especially important
that as many of you as possible, all throughout the world, take a
stand and mirror these files."
7
Corley admitted at trial that
his linking scheme was intended specifically to provide the DeCSS
program itself, not just to disseminate information about the
utility. Indeed, Corley testified that when a URL was forwarded to
the Site, he "initially verified the existence of the site"
and that DeCSS was available there before linking to it (Tr.
851:20-852:12):
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?
CORLEY: 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?
CORLEY: If
we had spent more time on it, we could have refined it so it took you
directly to the actual [DeCSS] files, yes . . . What we did was we
took what they gave us and looked at that and said, does this go to
DeCSS . . . and if it did we just put it in . . . .
Yet, despite this startling trial admission, Corley (Br.
5) and his amici still attempt inexplicably to characterize
his intentional, knowingly unlawful conduct, whose very purpose was
to provide the DeCSS utility to the public, as "part of the
coverage of the ongoing political and legal debate about copyright in
the digital age."
8
E.The District Court's Opinion and Injunction.
After a six-day trial, Judge
Kaplan permanently enjoined Corley from trafficking in DeCSS, finding
that: (1) Corley had "clearly violated [the trafficking
provision of the DMCA] by posting DeCSS to [the Site],"
Universal at 319; (2) Corley's conduct was not excusable under the
reverse engineering (17 U.S.C. § 1201(f)), encryption research
(§ 1201(g)(4)), or security testing (§ 1201(j)) exemptions
to the DMCA, id. at 319-22; and (3) Corley's "statutory
fair use argument . . . [was] entirely without merit." id.
at 322-24. Judge Kaplan also held that Corley's First Amendment
arguments failed because, inter alia, the trafficking
proscriptions of the DMCA are content-neutral regulations - and are,
therefore, subject to no more than intermediate scrutiny under United
States v. O'Brien, 391 U.S. 367 (1968) - which have
nothing
to do with suppressing particular ideas of computer programmers and
everything to do with functionality - with preventing people from
circumventing technological access control measures - just as laws
prohibiting the possession of burglar tools have nothing to do with
preventing people from expressing themselves by accumulating what to
them may be attractive assortments of implements and everything to do
with preventing burglaries.
Universal at 329; see also id. at 328
n.191. Judge Kaplan also held that Corley's intentional linking
scheme constituted "offer[ing], provid[ing] or otherwise
traffick[ing] in DeCSS" within the meaning of § 1201,
because
[Corley]
urged others to post DeCSS in an effort to disseminate DeCSS and to
inform [Corley] that they were doing so. [Corley] then linked [the
Site] to those "mirror" sites, after first checking to
ensure that the mirror sites in fact were posting DeCSS or something
that looked like it, and proclaimed on [the Site] that DeCSS could be
had by clicking on the hyperlinks on [the Site].
Universal at 325. As Judge Kaplan recognized and
held, under the circumstances, Corley's linking scheme was tantamount
to, and indistinguishable from, the actual posting of the DeCSS
utility on the Site, from which he already had been enjoined.
Universal at 324.
SUMMARY OF ARGUMENT
Judge Kaplan's final judgment
was correct, and should be affirmed in its entirety by this Court.
The trafficking proscriptions of the DMCA aim at conduct and are not
content-based, and thus are subject at most to intermediate scrutiny.
Even assuming that Corley's distribution of a decryption device
implicates any expressive interest at all - which is doubtful, since
the provision of decryption tools embodied in hardware would not
warrant First Amendment review and no different result should obtain
because such tools may also be embodied in software, see United
States v. Mendelsohn, 896 F.2d 1183, 1185 (9th Cir. 1990) -
Congress's purpose was unrelated to the suppression of speech and
neither aims at speech, nor at particular viewpoints or content. The
statutory text reveals, and the legislative history confirms, that
Congress sought to regulate conduct, the provision of the means for
copyright infringement, by analogy to statutes barring the provision
of burglary tools.
The cases leading to Florida
Star v. B.J.F., 491 U.S. 524 (1989), on which Corley relies, are
inapposite, as those cases involve content-based laws aimed at
speech. Moreover, intermediate review was selected not because
Corley's purported speech was "functional" and entitled to
any lesser protection, but in light of the fact that the DMCA's
trafficking proscriptions are aimed at conduct, not speech, and are
not content-based. Judge Kaplan did not afford intermediate scrutiny
on any finding that the alleged speech at issue was less than "fully
protected." Corley's suggestion otherwise is factually and
legally incorrect.
The trafficking proscriptions
and the injunction easily pass intermediate review. Corley does not
dispute that an important governmental interest - protecting digital
copyrighted works from enhanced risks of piracy - underlies the
trafficking proscriptions, and absent the proscriptions, that
interest would be advanced far less effectively. The statute and
injunction are congruent to the benefits afforded and support that
interest and the further interest of complying with the WIPO treaties
requiring circumvention legislation, without "significantly
restricting a substantial quantity of speech." Turner Broad.
Sys., Inc. v. FCC, 520 U.S. 180, 216 (1997) ("Turner II").
In view of Corley's attempts to evade the preliminary injunction and
his sustained, knowing provision of DeCSS to the public, the
injunction against his provision of DeCSS properly encompassed his
public provision of DeCSS by any means.
Finally, the injunction does not
"unconstitutionally eliminate fair use," and the fair use
doctrine provides Corley with no defense against the injunction.
Congress rejected any fair use defense to the trafficking
proscriptions; Corley could not prevail on such a defense in any
event; and Corley's submission that the trafficking proscriptions
eliminate or even significantly impair fair use is factually
preposterous. The First Amendment is not violated by the fact that
fair use of films, or plays, or artworks, is necessarily constrained
by copyright owners' decisions about how, when, and to what extent to
make their works publicly available, and there is today a far greater
scope for fair use of films, and of films on DVDs, than ever existed
in the pre- VCR era.
ARGUMENT
9
I.APPLICATION OF THE TRAFFICKING PROSCRIPTIONS
OF THE DMCA TO
CORLEY'S CONDUCT IS SUBJECT, AT MOST, TO INTERMEDIATE SCRUTINY.
Judge Kaplan correctly held that
none of the reasons justifying strict scrutiny apply here, as the
trafficking prohibitions of the DMCA are aimed at conduct and are not
content-based. This Court should affirm this holding because, here,
the DMCA was applied properly to Corley's conduct and,
accordingly, is subject at most to intermediate scrutiny.
Because Corley asserts that his
expressive interests are burdened because DeCSS constitutes, in
itself, protected speech, this Court must "decide at the outset
the [appropriate] level of scrutiny": "not every
interference with speech triggers the same degree of scrutiny under
the First Amendment." Turner Broad. Sys., Inc. v. FCC,
512 U.S. 622, 637 (1994) ("Turner I"). At one end
of the spectrum, in order to prevent the government from suppressing
unpopular ideas or disfavored views, courts subject to strict
scrutiny content-based laws that attempt to "stifle[] speech on
account of its message." See, e.g., United States v. Playboy
Entm't Group, Inc., 120 S. Ct. 1878, 1880 (2000); Reno v.
ACLU, 521 U.S. 844 (1997); Sable Communications of Cal., Inc.
v. FCC, 492 U.S. 115, 126 (1989).
Where, as here, a law which is
aimed at conduct is asserted to have impacted speech, no more than an
intermediate level of review applies. E.g., O'Brien, 391 U.S.
at 377 (law against burning draft cards applied to expressive
protest); Clark v. Community for Creative Non-Violence, 468
U.S. 288 (1984) (ban on sleeping on the Mall applied to homeless
protest); United States v. Albertini, 472 U.S. 675 (1985)
(exclusion order applied to protestor on military base).
Intermediate review is also applied to laws that are aimed at
expressive activity or the media, but which are not content or
viewpoint based and are justified by reasons other than the impact of
speech. E.g., Turner I, 512 U.S. at 641-652, 662 and Turner
II, 520 U.S. 180 (must- carry regulations, justified by need to
increase multiplicity of voices and to increase competitiveness of
marketplace); Ward v. Rock Against Racism, 491 U.S. 781, 791
(1989) (speech volume limitations).
10
Moreover, no scrutiny is
required when laws aimed at conduct are applied to non-expressive
conduct. Cohen v. Cowles Media Co., 501 U.S. 663, 669-70
(1991) ("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");
Arcara v. Cloud Books, Inc., 478 U.S. 697, 704, 706 (1986)
(intermediate review is required only when "it was conduct with
a significant expressive element that drew the legal remedy in the
first place").
The Studios argued below that
this case was governed by Arcara and Cohen, and Judge
Kaplan adopted a similar analysis in his decision granting the
preliminary injunction (although he concluded otherwise in his final
Opinion).
11
There is substantial doubt that public distribution of DeCSS is an
expressive act any more than unauthorized provision of a password
protecting a work (which Congress proscribed, see pp.30-31
infra) would be. Because enforcement of the trafficking
proscriptions against Corley plainly satisfies O'Brien,
however, the Court need not decide whether no scrutiny is required as
in Arcara and Cohen - that is, whether Corley's public
distribution of DeCSS implicates no legitimate speech interests.
If the Court does address the
issue, the question would be not whether computer code can be
sufficiently expressive to warrant First Amendment protection,
12
but, as Judge Kaplan noted, whether application of the trafficking
proscription to Corley's distribution of DeCSS on the Site implicates
the First Amendment. The testimony was virtually unanimous that
DeCSS is simply a tool for decrypting DVDs
13
- meaning, the Studios submit, that it has no expressive content
itself, and should be subject to the same analysis as would be
accorded a key, a password, or a "virtual machine." See
Universal at 219 n.30 (citing authorities).
14
In comparable circumstances, in United States v. Mendelsohn,
896 F.2d 1183, 1185 (9th Cir. 1990), the Ninth Circuit held that a
particular computer program was a "device" prohibited by a
law barring interstate transportation of gambling paraphernalia, and
rejected a First Amendment challenge because the software
furnished
computerized directions for functional use in an illegal activity . .
. . Although a computer program under other circumstances might
warrant first amendment protection [this one] does not [as it is] too
instrumental in and intertwined with the performance of criminal
activity to retain first amendment protection.
Corley's
unauthorized provision to the public of burglary tools, a password,
or an automobile key would not implicate the First Amendment, and no
different analysis should apply merely because the decrypting
technology Corley provided happens to have been configured as
software; indeed, Congress prohibited trafficking in decryption
devices whether configured as hardware or software and, accordingly,
this Court should reach the same result as the Ninth Circuit did in
Mendelsohn. See Conference Committee Report, H. R. Rep. No.
105-796 at 68 (1998) (Add-53) ("copy control technologies may be
rendered ineffective either by redesign of video recorders or by
intervention of 'black box' devices or software 'hacks'. . . the
conferees believe and intend that the term 'technology' should be
read to include the software 'hacks' of this type and that such
'hacks' are equally prohibited by the general circumvention
provision").
A.The DMCA Is a Generally Applicable Regulation of
Conduct,
Not Speech.
As the Supreme Court repeatedly
has held since United States v. O'Brien, 391 U.S. 367, 377
(1968), the enforcement of a law aimed at conduct is generally
subjected, at most, to intermediate scrutiny. Such laws "pose a
less substantial risk of excising certain ideas or viewpoints from
the public dialogue." Turner I, 512 U.S. at 642. "The
distinction between regulating speech and regulating conduct that has
expressive components is fundamental," this Court held in United
States v. Weslin, 156 F.3d 292, 297 (2d Cir. 1998), cert.
denied, 525 U.S. 1071 (1999) (citations omitted):
It
is why government can validly prohibit a range of activities ranging
from secondary boycotts . . . through public nudity . . . to
political assassinations . . . It would be wrong to say that those
activities are not or cannot be forms of expression. But the fact
that they have expressive aspects does not exempt them from
governmental prohibition.
Intermediate scrutiny does not
presume that the speech at issue is of lesser value, or less than
"fully protected." To the contrary, courts apply
intermediate scrutiny on the assumption (or determination) that the
speech at issue is fully protected. The Court in O'Brien
assumed that "the alleged communicative element in O'Brien's
conduct is sufficient to bring into play the First Amendment,"
id. at 376, but held, nevertheless, that intermediate scrutiny
was appropriate because "the law punished him for the
'noncommunicative impact of his conduct, and for nothing else.'"
See also Albertini, supra; City of Erie v. Pap's A.M., 529
U.S. 277, 291 (2000) (plurality opinion) (quoting O'Brien, 391
U.S. at 382).
Distilled to its essence,
Corley's argument for strict scrutiny stems from his contention that
all computer software is "speech" deserving of the highest
order of First Amendment protection, regardless of the character of
the statute regulating or even incidentally impacting it. But even
assuming arguendo that Corley's provision of DeCSS has a
"significant expressive element" because it is a software
tool or was "published" on a website, no more than
intermediate review is required because application of the DMCA in
this case involves simply the enforcement of a law regulating
conduct, and a defense by a party that his expression has been
thereby infringed. See, e.g., City of Erie, supra; Albertini,
supra; Clark, supra.
The DMCA's trafficking
proscriptions are generally applicable conduct regulations and
reflect Congress's concern with conduct, not speech. They do not set
out to regulate speech, and a fortiori do not single out
particular categories of speech or viewpoint. Contrary to the
assumption made by Corley and his amici - who contend without
authority or justification that the trafficking proscriptions are
subject to strict scrutiny - the trafficking proscriptions are
conduct regulations, like the statutes upheld in O'Brien,
Albertini, CCNV, and City of Erie, and are significantly
less problematic than the statute at issue in Turner I and
Turner II, which was a direct regulation of the media,
yet, nonetheless, was subjected only to intermediate review because
it was justified by reasons unrelated to the communicative impact of
the speech affected. See Turner I, 512 U.S. at 642.
Unlike the statutes challenged
in the cases on which Corley and his amici rely,
15
which drew strict scrutiny because they directly prohibited or
restricted "communications" or "disclosures" or
other speech, the DMCA's trafficking proscriptions are aimed at
"products" and "devices" that circumvent
technological measures protecting the Studio's digital copyrighted
works. Although framed with sufficient generality to encompass such
devices whether embodied in hardware or software, the statutory text
restricts only the conduct of publicly distributing tools that
accomplish the circumvention that Congress sought to deter. In
comparable circumstances, courts have upheld anti-trafficking
statutes like 18 U.S.C. § 2512, which bars the distribution of
"wire, oral or electronic communication intercepting devices,"
even though such devices arguably may have lawful uses that may
further speech interests. See, e.g., United States v. Spy
Factory, 951 F. Supp. 450, 474-75 (S.D.N.Y. 1997) (Sotomayor,
J.); Mendelsohn, 896 F.2d at 1185-86.
The DMCA's legislative history
confirms that Congress sought to regulate con duct, the provision of
decryption devices, using the express analogy of laws barring the
provision of burglary tools. See, e.g., S. Rep. No. 105-190,
at 11 (1998) (Add- 18).
16
Congress's purpose, revealed
with indisputable clarity, was to facilitate the wider
distribution of creative speech, not to eliminate or reduce harm from
particular viewpoints, messages, or ideas. The trafficking
proscriptions were enacted to comply with the nation's obligation,
under the WIPO Copyright Treaties, to "provide adequate legal
protection and effective legal remedies against the circumvention of
effective technological measures that are used by authors in
connection with the exercise of their rights," and thereby to
provide "the legal platform for launching the global digital
on-line marketplace for copyrighted works." S. Rep. No.
105-190, at 2, 5 (1998) (Add-9, 12).
Concerned that copyright owners
were hesitating "to make their works readily available on the
Internet without reasonable assurance that they will be protected
against massive piracy" (id. at 8) (Add-15), Congress
sought (id. at 11) (Add-18) to
encourage
technological solutions, in general, by enforcing private parties'
use of technological protection measures with legal sanctions for . .
. producing and distributing products or providing services that are
aimed at circumventing technological protection measures that
effectively protect copyrighted works. For example, if unauthorized
access to a copyrighted work is effectively prevented through use of
a password, it would be a violation of this section to defeat or
bypass the password and to make the means to do so, as long as the
primary purpose of the means was to perform this kind of act. This
is roughly analogous to making it illegal to break into a house using
a tool, the primary purpose of which is to break into houses.
Legislation
prohibiting circumvention devices is not unprecedented. The
Copyright Act in section 1002(c) already protects sound recordings
and musical works by prohibiting devices which circumvent any program
or circuit that implements a serial copy management system. . . .
The Communications Act in section 605(e)(4) prohibits devices that
are 'primarily of assistance in the unauthorized decryption of
satellite programming . . . .'
17
Corley's attack on the
trafficking proscriptions as a violation of free speech is perverse,
because the DMCA was enacted to increase the amount and
variety of digital speech available to the public, not to suppress
speech or speakers.
18
Even assuming arguendo that any speech interests of Corley
are implicated at all, "[w]here constitutionally protected
interests lie on both sides of the legal equation[,] . . . there is
no place for a strong presumption against constitutionality, of the
sort often thought to accompany the words 'strict scrutiny.'"
Nixon v. Shrink Missouri Gov't PAC, 528 U.S. 377, 400 (2000)
(Breyer, J., concurring); see also, e.g., Turner I, 512 U.S.
at 647 (even where statute assisted some speakers at expense of other
speakers, only intermediate scrutiny was warranted because the
statutory purpose was to "guarantee the survival of a medium
that has become a vital part of the Nation's communication system").
B.The DMCA's Trafficking Proscriptions Are Not Content-Based and
Do Not Single Out Speech or the Media for Differential Treatment.
The trafficking proscriptions on
conduct are not content- or viewpoint-based, and leave Corley and his
supporters entirely free to criticize the DMCA, Congress, the
judiciary, or Hollywood. Like the law barring newspapers'
publication of discriminatory help-wanted ads upheld in Pittsburgh
Press Co. v. Pittsburgh Commission on Human Relations, 413 U.S.
376, 388 (1973), or laws barring breaking and entering into
bookstores or libraries without permission, their justification lies
in the "noncommunicative impact" of the regulated activity.
O'Brien, 391 U.S. at 382. The trafficking proscriptions
further legitimate and substantial interests in treaty compliance and
preserving the incentives created by copyright protection to create
and disseminate original works. Any burden on the exchange of ideas
and information is incidental to, and a necessary byproduct of, the
government's pursuit of "a legitimate regulatory goal"
unrelated to the suppression of speech or the content of the
speaker's message. Turner I, 512 U.S. at 641.
"[T]he principal inquiry in
determining content-neutrality . . . is whether the government has
adopted a regulation of speech because of [agreement or] disagreement
with the message it conveys." Turner I, 512 U.S. at 642
(internal quotation marks and citation omitted). The "purpose,
or justification" of the law is, thus, the touchstone in
ascertaining content neutrality. id. "Government
regulation of expressive activity is content neutral so long as it is
justified without reference to the content of the regulated speech."
Ward, 491 U.S. at 791.
The text and history of the
DMCA's trafficking proscriptions do not single out a particular
message, speaker, subject, or viewpoint for disfavored treatment, nor
even single out speech. In contrast to the statute struck down in
United States v. Playboy Entertainment Group, Inc., 120 S. Ct.
1878, 1885 (2000), which singled out particular content and
particular speakers, the DMCA's trafficking proscriptions apply
regardless of the content, subject matter, or identity of speakers,
and can be used to protect any film, any book, or any
musical recording. Far from reflecting any effort to "suppress,
disadvantage, or impose differential burdens upon speech because of
its content," Turner I, 512 U.S. at 642, they
reflect a legislative judgment that all copyright owners should be
able to protect their digital works from virtually instantaneous,
unauthorized worldwide dissemination in an age when technological
advances diminish the deterrent effect and remedial efficacy of the
infringement cause of action. The restrictions are thus "justified
without reference to the content" of speech. Ward, 491
U.S. at 791; see also Hill v. Colorado, supra; United
States v. Weslin, supra.
Corley's contention (Br. 19)
that § 1201(a)(2) "plainly categorizes banned
'technologies' including computer programs, based upon their subject
matter and ideas" is frivolous. The DMCA bars trafficking
in circumvention devices (regardless of how configured) because of
what they do and are suited to do, not because of their ideas;
indeed, like the "black boxes," "passwords," and
keys which Congress envisioned, decryption devices express no
"ideas." Public provision of decryption tools is
actionable regardless of purpose, just as legislatures have made it
unlawful, or could, to publicly distribute wiretapping tools, burglar
tools, master keys to new vehicle fleets, and combinations to
identified bank vaults or safes.
19
Even if application of the
statute, on occasion, may prevent persons, including the news media,
from providing specific strings of numbers or software devices to the
public in particular instances, that is simply a consequence of the
fact that "keys" to unlock encrypted copyrighted works can
be embodied not only in hardware but in software as well, and that
Congress has prohibited their distribution in either form. Cf.
Pittsburgh Press, supra.
"[G]enerally 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." Cohen, 501 U.S. at 669.
Cohen's holding that the First Amendment did not bar an
anonymous source's claim for damages flowing from breach of a
newspaper's promise of confidentiality demonstrates that strict
scrutiny does not apply even when, in particular cases, generally
applicable laws attach liability to the public disclosure of
truthful, newsworthy information. id. at 668-72; see also
Konigsberg v. State Bar, 366 U.S. 36, 50-51 (1961).
Cohen also reflects the
broader principle that "the comprehensiveness of [a] statute is
a virtue, not a vice, because it is evidence against there being a
discriminatory governmental motive." Hill, 120 S. Ct. at
2497; cf. Turner I, 512 U.S. at 661 ("broad based"
regulations "do not pose the same dangers of suppression and
manipulation that [are] posed by . . . more narrowly targeted
regulations [aimed at particular speakers]"); Cincinnati v.
Discovery Network Inc., 507 U.S. 410, 424-26 (1993). That
reasoning is equally applicable here, on both sides of the DMCA: it
protects copyright owners generally and prohibits public distribution
of circumvention devices regardless of how or by whom it might be
effected, and is not confined to hackers, the media or to
anti-Hollywood websites. That two-fold generality confirms that
Congress was motivated not by hostility toward the dissemination of
information generally or a particular category of information, but
instead by the "noncommunicative impact," O'Brien,
391 U.S. at 382, of the public distribution of circumvention tools.
C.Corley's Remaining Arguments for Strict Scrutiny Are Meritless.
Corley's argument that strict
scrutiny is required by the line of cases culminating in Florida
Star v. B.J.F., 491 U.S. 524, 533 (1989), reversing criminal
punishment of or damage awards against the press for publishing
"truthful information about a matter of public significance,"
is baseless.
First, unlike the DMCA's
trafficking proscriptions, the statutes involved in those cases were
content-based and squarely aimed at speech.
20
That difference is dispositive: the Supreme Court squarely has held
that a generally applicable law that does not single out expression
is not governed by Florida Star even when in a particular case
it is applied to a purported media defendant and sanctions the
disclosure of truthful information about a matter of public
significance. Cohen, 501 U.S. at 668-69.
Second, even ignoring (as the
cases do not) the character of the regulation and focusing instead on
the consequence of its application, DeCSS is not "truthful
information," much less "truthful information about a
matter of public significance," but a piece of functional
software, accord Mendelsohn, 896 F.2d at 1185, whose sole
purpose is to do what Congress has rendered unlawful - namely, to
decrypt without authorization DVDs that have been encrypted with CSS
to protect the Studios' copyrighted films from piracy.
Corley was not sued for
reporting that DeCSS had been developed and that it decrypts DVDs; he
was sued for providing to the public on a sustained and continuous
basis, in violation of the DMCA, the actual decryption device whose
distribution Congress prohibited. The DMCA does not target
disclosure of information, but the distribution of unlawful
circumvention devices. The case is therefore governed not by Florida
Star but rather by the rule underlying Pittsburgh Press,
which upheld the constitutionality of an order enforcing a law
prohibiting employers from publishing, or any other person from
aiding the publication of, any "notice or advertisement relating
to 'employment' or membership which indicates any discrimination
because of . . . sex." Rejecting the newspaper's First
Amendment challenge, the Supreme Court held that "[t]he present
order does not endanger arguably protected speech. Because the order
is based on a continuing course of repetitive conduct, this is not a
case in which the Court is asked to speculate as to the effect of
publication . . . . Moreover, the order is clear and sweeps no more
broadly than necessary . . . ." 413 U.S. at 390 (citations
omitted). As Pittsburgh Press makes plain, the First
Amendment does not bar the proscription of speech which is itself
unlawful conduct that Congress may prohibit. See also Jews for
Jesus, Inc. v. Jewish Community Relations Council, Inc., 968 F.2d
286, 295-96 (2d Cir. 1992) (citing various laws that "can be
violated by speech or other expressive conduct" without First
Amendment difficulty); Mendelsohn, 896 F.2d at 1185-86.
Corley's reliance on Florida
Star also ignores the well-settled rule that the First Amendment
does not prohibit the enforcement of laws protecting intellectual
property - even against a media defendant. See Harper & Row
Publishers Inc. v. Nation Enters., 471 U.S. 539, 555-60 (1985);
Zacchini v. Scripps-Howard Broad. 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 Prods., Inc., 902 F.2d 829, 849
(11th Cir. 1990).
21
To hold that the DMCA's
trafficking proscriptions cannot be applied to software devices
distributed over the Internet because any form of software is
"truthful information" would turn First Amendment
jurisprudence on its head, and eviscerate the conduct-targeted
trafficking proscriptions.
The trafficking proscriptions
are no more subject to strict scrutiny than the analogous laws, some
of which were expressly cited by Congress as models for the DMCA,
prohibiting the manufacture, distribution and sale of cable and
satellite television "descramblers," which also defeat
access control systems. See, e.g., 47 U.S.C. § 553(a)(2)
(2000), 47 U.S.C. § 605(e)(4) (2000), and 18 U.S.C. § 2512
(2000). See, e.g., Cable/Home Communication Corp., 902 F.2d
at 850 (promotion of statutorily-prohibited "descrambling
devices" for subscription cable television programming, and sale
of pirated computer chips to compromise the encryption of plaintiffs'
transmissions, were not protected by the First Amendment; because
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"); California
Satellite Sys. v. Seimon, 767 F.2d 1364, 1367-68 (9th Cir. 1985)
(no First Amendment right to pirate scrambled satellite broadcast
signals); Spy Factory, supra.
22
Corley's argument that there is
no First Amendment justification for down grading the protection for
"functional expression" (Br. 33-40) misstates what Judge
Kaplan did and attempts to raise an issue not decided below or at
issue here. Judge Kaplan did not "create a new category of
lesser protected speech" (Br. 33) or hold that DeCSS was
"unworthy of full First Amendment protection because DeCSS is
written in a computer language rather than the English language (or
mathematics or iambic pentameter) allowing it to 'function'"
(Br. 33). To the contrary, he agreed with Corley that "DeCSS
is expressive" (Universal at 328), but concluded that
because the trafficking proscriptions are aimed at conduct, and are
not content-based, only intermediate review is applicable. Universal
at 329-30.
23
The decision to apply
intermediate scrutiny always reflects a decision (or
assumption) that there is some impact on "speech," and
presents the question whether that impact is nonetheless permissible.
Turner I, supra; Procunier v. Martinez, supra. As Judge
Kaplan correctly recognized, it is the character of the regulation,
not whether as applied it impacts "speech" in a given
instance (or speech of greater or les ser value), that determines
whether intermediate or strict scrutiny applies. Universal at
327-28. Because Judge Kaplan undertook O'Brien analysis on
the assumption that Corley's speech interests were at issue, and that
protected speech was being impacted, the arguments Corley and
his amici make concerning "functional" speech are
simply not germane to any issue on appeal. FCC v. Pacifica
Found., 438 U.S. 726, 735 (1978).
Finally, Corley's effort to root
strict scrutiny in 17 U.S.C. § 1201(c)(4) is also meritless.
That subsection's assurance that nothing in § 1201 "shall
enlarge or diminish any rights of free speech or the press for
activities using consumer electronics, telecommunications, or
computing products" does not support Corley's claimed right to
provide decryption devices to the public, much less suggest the
standard of review to be applied in assessing the First Amendment
defense he offers. Such provisions are used by Congress to reassure
bill opponents that Congress considered the relevant interests, and
intended no violation of the First Amendment.
24
No court has held that such savings clauses require any different
analysis than would otherwise obtain.
II.THE APPLICATION OF THE TRAFFICKING PROSCRIPTIONS
TO
CORLEY'S CONDUCT SATISFIES INTERMEDIATE
SCRUTINY.
Intermediate scrutiny entails a
two-fold inquiry. First, does the law "further[] an important
or substantial governmental interest" that is "unrelated to
the suppression of free expression." Second, is the "the
incidental restriction on alleged First Amendment freedoms . . . no
greater than is essential to the furtherance of that interest."
O'Brien, 391 U.S. at 377; United States v. Weslin,
156 F.3d at 297. The DMCA's trafficking proscriptions and Judge
Kaplan's injunction against Corley's admitted trafficking in DeCSS
easily meet both requirements.
A.The Trafficking Proscriptions Further Significant
Interests
Unrelated to the Suppression of Expression.
Corley contends (Br. 25) that
the DMCA and injunction are insufficiently tailored, but accepts (Br.
22) Judge Kaplan's holding that the trafficking proscriptions further
significant interests unrelated to the suppression of expression.
The first part of the O'Brien standard (whether the law
furthers a substantial governmental interest) is, therefore, not at
issue.
25
See Universal at 330 ("The anti-trafficking
provision of the DMCA furthers an important governmental interest -
the protection of copyrighted works stored on digital media from the
vastly expanded risk of piracy in this electronic age. The
substantiality of that interest is evident both from the fact that
the Constitution specifically empowers Congress to provide for
copyright protection and from the significance to our economy of
trade in copyrighted materials.").
26
B.The Injunction Against Providing DeCSS Does Not Unnecessarily
Restrict Expressive Activities.
To satisfy O'Brien's
narrow tailoring requirement, a regulation need not be the least
speech-restrictive means of advancing the government's interests.
Rather, the requirement of narrow tailoring is satisfied "so
long as the . . . regulation promotes a substantial governmental
interest that would be achieved less effectively absent the
regulation," and does not "burden substantially more speech
than is necessary to further" that interest. Turner II,
520 U.S. at 213-14; see also id. at 215. The standard is
satisfied if the "burden . . . . is congruent to the benefits it
affords." Ward, 491 U.S. at 799 (quoting United
States v. Albertini, 472 U.S. 675, 689 (1985)). "'The
essence of narrow tailoring is 'focusing on the evils the
[government] seeks to eliminate . . . [without] significantly
restricting a substantial quantity of speech that does not create the
same evils.'" Turner II, 520 U.S. at 216 (citation
omitted).
The trafficking proscriptions
easily meet that test. Congress's purposes plainly would be achieved
"less effectively absent the regulation." The risks of
widespread digital dissemination of infringing copies of digital
copyrighted works are reduced if the means for circumventing the
technological protections that prevent access to and copying of the
unencrypted digital content on DVDs cannot be indiscriminately
provided to the public. Moreover, the WIPO treaties require "legal
protection and effective legal remedies," which § 1201
affords.
Indeed, as Congress expected, it
took the DMCA and the technological access control measures and other
protections it fosters and protects to induce various
copyright owners to make their works available digitally.
27
Moreover, the trafficking proscriptions are "congruent to the
benefits" they afford and do not "restrict a substantial
quantity of speech" because all that they prohibit is the
provision of actual decryption devices to the public. They do not
restrict academic research, or protest against the DMCA. Most of
what they were intended to reach, and do reach, is not speech at all;
and if they do reach any "speech," the trafficking
proscriptions only prohibit disseminating to the public the very
circumvention devices that Congress decreed may not be
distributed. The trafficking proscriptions thus advance precisely
the interest that the nations ratifying and implementing WIPO,
including the United States, have sought to advance.
In comparable circumstances, in
United States v. Weslin, this Court easily held the Federal
Access to Clinic Entrances Act ("FACE") "valid under
O'Brien," noting that FACE advanced the interests
underlying it more effectively than would be possible without it,
while leaving "anti-abortion protestors and all other persons
wishing to exercise free speech rights under the First Amendment at
liberty to hold signs, pass out handbills, speak conversationally,
and so forth, anywhere and anytime they choose." 156 F.3d at
298. Corley and his allies are similarly free to criticize the DMCA
or Hollywood, discuss and teach cryptography, and so forth, anywhere
and anytime they choose. All that they may not do is provide to the
public the particular circumvention device, DeCSS, that would defeat
the access and copy controls with which the Studios have protected
their works.
28
As in Pittsburgh Press,
the burden (if any) imposed by the DMCA's trafficking proscriptions
is exactly "congruent to the benefits" it affords. Indeed,
the "speech" burdened by the DMCA is limited to any
decryption utility that may itself not be distributed (just as in
Pittsburgh Press the burden fell only on publishing
discriminatory employment advertisements). The DMCA and Judge
Kaplan's permanent injunction prohibit precisely the conduct that
Congress found would be harmful and, thus, defined as unlawful: the
offering to the public of decryption devices. Throughout its range,
the restriction produces the precise benefit Congress sought to
obtain. See Albertini, supra; Ward, supra.
29
The only case Corley cites in
which a law subject to O'Brien review was invalidated, Bery
v. City of New York, 97 F.3d 689, 697 (2d Cir. 1996), is
inapposite, since it involves protected activity, not conduct that
may be prohibited. Review of "time, place, and manner"
regulations always has entailed consideration of whether such
regulations "leave open ample alternative channels for
communication." See, e.g., Clark, 468 U.S. at 293.
Accordingly, the Bery court, after concluding that the City's
licensing regime for street artists was effectively "a de facto
bar preventing visual artists from exhibiting and selling their art
in public areas in New York," held that "[t]he sidewalks of
the City must be available for appellants to reach their public
audience," and that the "City has thus failed to meet the
requirement of demonstrating alternative channels for appellants'
expression." Bery, 97 F.3d at 697-98. But when O'Brien
review is aimed at conduct regulations, and speech impacts are
incidental (if they exist at all), the question is less pertinent, or
at least different, and the touchstone, as identified in Turner
and Albertini, is simply whether the governmental interest would
be advanced less effectively absent the regulation. See
Albertini, 472 U.S. at 688-689, see also Turner I and II,
supra.
Corley complains (Br. 25) that
Judge Kaplan failed "entirely to consider the availability of
alternative channels of expression for DeCSS." However,
"alternative channels" analysis does not apply where what
is regulated is itself unlawful, such as the discriminatory
help-wanted notices in Pittsburgh Press, the software program
in Mendelsohn, and the trafficking in decryption devices here.
Defendants in fraud cases, for example, may not challenge the
application of fraud statutes to their speech because "alternative
channels of expression" for their fraud are unavailable. In any
event, the DMCA leaves untouched channels of communication for
persons engaged in protest, encryption research, reverse engineering,
and security testing. See 17 U.S.C. §§ 1201(f)(3),
1201(g)(4)(B) & 1201(j)(4). All it proscribes, and properly so,
is provision of decryption devices like DeCSS to the public at large
(where they would lead to great harm). See also Albertini,
472 U.S. at 688-89.
C.Given Corley's "Studied Effort to Defeat" the
Preliminary Injunction, the Injunction Barring Him from Knowingly and
Purposely Providing DeCSS by Linking Does Not Unnecessarily Restrict
His Expressive Activities and Satisfies Intermediate Scrutiny.
Having found that Corley
violated the trafficking proscriptions and made "a studied
effort to defeat the purpose of the preliminary injunction," and
that there was a "substantial likelihood of future violations
absent injunctive relief," Universal at 343, Judge Kaplan
correctly formulated a decree to prevent and restrain further
violation of the Studios' rights. Accordingly, in paragraphs 1(a)
and 1(b) of the Final Judgment (A2690), Judge Kaplan enjoined Corley
from "offering to the public, providing, or otherwise
trafficking in DeCSS" - by any means, including
the means he had been using during the six months that the
preliminary injunction was in effect (i.e. providing
hyperlinks to DeCSS) in a flagrant challenge to the district court's
authority.
To satisfy Rule 65(d) and
eliminate any contention that the prohibition against "providing"
DeCSS was insufficiently specific or left Corley free to find other
indirect ways of providing DeCSS to the public, Judge Kaplan, adding
belt to suspenders, also expressly enjoined Corley from further
distribution of DeCSS to persons accessing his site by "knowingly
linking any Internet web site operated by them to any other web site
containing DeCSS or knowingly maintaining any such link for the
purpose of disseminating DeCSS." (A2692, paragraph 1(c))
The core of the Studios'
position on Corley's linking scheme was that Corley's behavior once
legal action commenced (e.g., his brazen attempts to frustrate
the Studios' ability to obtain effective relief by encouraging
additional DeCSS postings, and then to evade the preliminary
injunction by setting up hundreds of links to DeCSS on the Site
instead of keeping a "safe distance" from his enjoined
conduct) was an intentional, sustained distribution of DeCSS to the
public, thereby warranting further injunctive relief. That was the
basis on which the permanent injunction against Corley's linking
scheme was sought and imposed. Federal courts have held consistently
that a defendant's failure to keep a "safe distance" from
previously- enjoined conduct sufficiently warrants broader injunctive
relief. See, e.g., Scott, 187 F.3d at 288-89 ("in
certain situations, 'a record of abusive conduct makes a prohibition'
permissible where it would not otherwise have been"); 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"); 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").
30
Contrary to the protestations of
some of Corley's amici, see, e.g., Online News Association Br.
at 13, Judge Kaplan made plain that he was not broadly holding
"linking" unlawful. Universal at 340-41. Rather,
the injunction was based soundly on the particular facts of Corley's
"studied effort to defeat the purpose of the preliminary
injunction" (A2684) and his admitted purpose of disseminating
DeCSS. Corley's 500 links to DeCSS were not merely a by-product of
an article describing a controversy, or an effort to make such an
article more complete; rather, he admittedly set out to distribute
DeCSS to the public, and engaged in repeated efforts to do so,
providing it continuously for many months.
Barring Corley from "knowingly
linking any Internet web site operated by [him] to any other web site
containing DeCSS or knowingly maintaining any such link for the
purpose of disseminating DeCSS" was necessary if the
governmental interest underlying the trafficking proscriptions was to
be served, as Judge Kaplan recognized. Unless Judge Kaplan framed
the injunction to make plain to Corley that it prohibited his
provision of DeCSS by any method, including by linking, its
remaining provisions could not achieve the purpose for which Congress
authorized injunctive relief.
Corley and his amici
ignore this history against which the permanent injunction was
crafted and, misguidedly, complain that this appeal presents broad
questions about the constitutional status of linking generally. But
as the Supreme Court held in FCC v. Pacifica Foundation, 438
U.S. 726, 734 (1978), appellate courts "review[] judgments, not
statements in opinions . . . [and that rule] has special force when
the statements raise constitutional questions, for it is our settled
practice to avoid the unnecessary decision of such issues."
Accordingly, the focus of review here is properly on the injunction
entered against Corley, not on the issues that Corley and his amici
- by grossly overreading the permanent injunction, misreading the
opinion and studiously ignoring the findings and record on which it
was entered - would rather address (such as whether the district
court's "test for linking liability is inadequate" or
whether it "will chill significantly more speech than the
defamation standard").
31
This case, after all, like Pacifica, is an enforcement
action, not an affirmative facial challenge, much less an affirmative
facial challenge to a law directed at speech. See also Broadrick
v. Oklahoma, 413 U.S. 601, 615-16 (1973) ("particularly
where conduct and not merely speech is involved, we believe that the
overbreadth of a statute must not only be real, but substantial as
well, judged in relation to the statute's plainly legitimate sweep").
It is also important to note
that Corley's linking is already proscribed (although not with the
same unmistakable clarity) by paragraphs 1(a) and (b) of the Final
Judgment. Those restrictions in the permanent injunction prohibit
Corley from providing DeCSS to the public by any means. Thus, the
simplest basis for upholding paragraph 1(c) - which eliminated any
doubt that the injunction barred Corley from providing DeCSS in any
manner whatever, including linking - is that it reaches no conduct
(or speech) not already barred by paragraphs 1(a) and 1(b) and,
therefore, satisfies the First Amendment if they do. Because
paragraphs 1(a) and (b) survive O'Brien review, so too does
paragraph 1(c). See supra n.29 and Point IIA.
Even if the Madsen-Schenck
test were applied to the injunction, every part of it is valid,
including the clarification in paragraph 1(c) that Corley's knowing,
intentional provision of DeCSS by linking is prohibited. Under
Madsen and Schenck, an injunction directed at
expressive activity is valid if it "burdens [no] more speech
than necessary to serve a significant governmental interest."
See Schenck, 519 U.S. at 374; Scott, 187 F.3d at 287.
32
Enjoining Corley from knowingly providing the public with links on
his Site to DeCSS "for the purpose of disseminating DeCSS"
serves precisely the interests underlying the DMCA, which are not
challenged here, and, accordingly, burdens "no more speech than
necessary."
Determining whether an
injunction burdens more speech than necessary requires assessing how
much speech is likely to be burdened and whether that burden is
necessary in light of the circumstances presented. On the facts
adduced at trial - which proved that Corley engaged in a campaign of
"electronic civil disobedience" by soliciting others to
copy DeCSS onto their own web sites and then return to him their URLs
so that he could, after carefully verifying that those sites
contained the DeCSS, create a link back to DeCSS, whose presence he
had induced
33
- it is plain that very little, if any, "speech" of
Corley's was burdened by paragraph 1(c), and that any such burden is
"necessary" within the meaning of Madsen and Scott.
No speech of Corley's is
prohibited by the restriction in paragraph 1(c) against Corley's
provision of DeCSS by linking. He evidenced no interest in linking
to those sites other than to further distribute DeCSS to the public.
Corley's testimony that he did not link to the sites whose addresses
were returned to him unless they contained DeCSS (Tr.
847:28-848:7, 851:20-852:12) indisputably confirms that his interest
was limited to providing DeCSS and did not extend to republishing any
non-DeCSS content on those sites. (Given his plea to hackers to copy
DeCSS and practice of linking back to their sites only after he
ensured that they had done so, it is fair to say that any claim that
he has an interest in "sharing" the speech of others would
be based on smoke and mirrors.)
That the injunction is narrowly
tailored to Corley's provision of DeCSS (by whatever means), without
burdening more speech than necessary, is also confirmed by the fact
that the injunction prohibits Corley from providing DeCSS by linking
to sites containing it, but does not eliminate those sites or purport
to reach them (unless they are acting "in concert" with
him, in which case their provision of DeCSS is already prohibited by
paragraphs 1(a) and 1(b)). Nor is any burden produced by
"uncertainty" and resulting chilling effect; the injunction
against linking makes entirely clear what Corley may not do. Cf.
Scott, 187 F.3d at 287-88 (discussing the uncertainty problem in
Schenck that it found not present in the order under review).
Corley's own conduct brings the Scott justification squarely
into play and makes plain that, under the circumstances, any marginal
burden on Corley's "speech" imposed by paragraph 1(c) is no
greater than necessary.
34
III.THE INJUNCTION AGAINST CORLEY'S INDISCRIMINATE TRAFFICKING IN
DeCSS DOES NOT UNCONSTITUTIONALLY ELIMINATE FAIR USE.
Corley's argument (Br. 41-66)
that the injunction "unconstitutionally eliminates fair use"
and that the anti-circumvention and trafficking proscriptions of the
DMCA should be construed to avert this purported constitutional
difficulty is wrong for multiple reasons. First, Congress
deliberately declined to enact a fair use defense for either the
circumvention (§ 1201(a)(1)) or trafficking causes of action (§
1201(a)(2),(b)), providing, instead, an assortment of defenses and
exemptions better- tailored to the statutory plan. Second, because
Corley did not seek to use DeCSS himself and distributed DeCSS to the
world at large without making the slightest attempt to limit
distribution to persons seeking to make what he contends would be
"fair use decryption," Corley cannot defend his trafficking
in DeCSS on the theory that it would facilitate fair use by others.
As Judge Kaplan recognized,
Corley raises the purported "right to fair use" solely on
the basis of third-party hypothetical uses, none of them serious,
imminent or prevalent enough to justify striking down a statute whose
application in most instances (preventing the "Napster-ization"
35
of the Studio's copyrighted films) is constitutional. See
Universal at 337-39. Such a third-party fair use defense to
public trafficking in unlawful decryption devices, abstracted from
the use of specific copy righted works, is conceptually
unintelligible, and even if it were not, Corley's indiscriminate
dissemination of DeCSS to the general public renders him ineligible
for any such defense.
Further, given technological
advances, there is today, under the DMCA, a far greater opportunity
for fair use of the Studio's motion pictures and the supplementary
materials distributed with them on DVDs than was available either
before commercial distribution of VCRs or since. The First Amendment
surely does not require a fair use defense for the indiscriminate
public provision of decryption devices, least of all now, while the
dystopian scenarios that so alarm amici are nowhere near
becoming reality and wholly unsupported by the record. This Court
should affirm Judge Kaplan's decision and reject Corley's attempt at
an unnecessary "saving" construction of the statute, a
construction that would nullify the protection Congress afforded in
the DMCA.
A.Congress Expressly Rejected a Fair Use Defense to
the Ban on Providing Circumvention Devices to the Public.
Rejecting a general fair use
defense for § 1201(a) and (b), which Corley's attorneys and many
of his amici urged Congress to enact, Congress instead
provided seven narrower exemptions and defenses where it was possible
to do so consistent with the overall purpose of the
anti-circumvention and anti-trafficking statutory mandates. See
17 U.S.C. § 1201(d)-(j) (2000).
36
This statutory scheme reflects a conscientious effort to balance the
interests of copyright holders and others and to articulate this
balance in terms appropriate to the distinctive purpose of the DMCA.
Corley asserted several of these statutory exceptions, and Judge
Kaplan's rejection of these defenses by Corley is unchallenged. See
Universal at 319-21. But § 1201 conspicuously does not
provide a "fair use" defense to trafficking in
circumvention devices.
37
The legislative history confirms
that Congress intended that the DMCA should not detract from the fair
use defense already available to copyright infringement
actions, and equally that "fair use principles certainly should
not be extended beyond their current formulation." H.R. Rep.
No. 105-551, pt. 2, at 25 (1998) (Add-91); see also S. Rep.
No. 105-190, at 23-24, 30 (1998) (Add-30-31, 37). Advocates of a
general fair use defense to a violation of § 1201, including
representatives of amici, presented their concerns to
Congress,
38
and the House Commerce Committee was particularly "concerned
that marketplace realities" could lead to "less access,
rather than more, to copyrighted materials," and in a worst-case
scenario "the permanent encryption of all electronic copies."
H.R. Rep. No., pt. 2, at 36 (Add-96). Indeed, an amendment
"legislating an equivalent fair use defense for the new right to
control access" was proposed. H.R. Rep. No. 105-551, pt. 2,
Additional Views of Scott Klug and Rick Boucher, at 85-86
(Add-106-07).
But, as the amendment's
advocates acknowledge, id., Congress rejected the pleas
of 62 law professors to forego the trafficking proscriptions, H.R.
Rep. No. 105- 551, pt. 2, at 24 (Add-90), and also declined to enact
a fair use defense. Instead, Congress adopted, inter alia, a
two-year moratorium on circumvention liability under §
1201(a)(1)(A) - but, importantly, not on trafficking liability
- and narrowly tailored exemptions from trafficking liability that
would not destroy the village in order to save it. See 17
U.S.C. § 1201(a)(1)(A-D), § 1201(f-j).
Notably, the DMCA makes a firm
distinction between circumvention liability - for which Congress
provided in § 1201(a)(1) the possibility of regulatory exemption
of classes of works in furtherance of the interests that underlie the
fair use defense to infringement actions - and trafficking liability
under §§ 1201(a)(2) and (b), as to which no such exemption
was afforded or conceptually possible. Indeed, as Congress
recognized, public provision of decryption devices would eliminate
pre cisely the security for technologically protected copyrighted
works that Congress sought to foster. See 17 U.S.C. §
1201(a)(1)(E); Staff of House Comm. on the Judiciary, 105th Cong., 2d
Sess., Section-by-Section Analysis of H.R. 2281 as Passed by the
United States House of Representatives on August 4, 1998, (Comm.
Print 1998) ("Committee Print"), at 8 (Add-66).
Congress's rejection of a
general fair use defense to trafficking liability is reflected in
three narrow exemptions to § 1201(a)(2) for persons who develop
and provide circumvention technologies for the limited purposes of
reverse engineering, encryption research, and security testing. See
17 U.S.C. § 1201(f)(2), (f)(3), (g)(4), (j)(4). Congress was
mindful of potentially legitimate needs to circumvent technological
protections limiting access and copying, and chose to craft
exemptions narrowly tailored to those needs so as to advance the
DMCA's goal of inducing copy right owners to make their works
available in digital form. See Committee Print at 15
(Add-73-74) (Section 1201(f)(3) accommodates sharing of circumvention
tools to facilitate interoperability of newly-developed computer
programs, but "[r]ecognizing . . . that making circumvention
information or tools generally available would undermine the
objectives of this Act, the provision imposes strict
limitations.").
The Supreme Court consistently
has deferred to Congress's ability to balance competing interests
when technological innovations threaten to diminish the incentives
fostered by the Copyright Act. See, e.g., Sony Corp. of Am. v.
Universal City Studios, Inc., 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."). Congress deliberately omitted a fair
use defense for trafficking in circumvention devices, and the
targeted exemptions that it did craft would be rendered superfluous -
in violation of basic rules of statutory construction - by the fair
use defense Corley and his amici ask the Court to enact. See,
e.g., Commissioner v. Clark, 489 U.S. 726, 739 (1989) (statutory
exceptions are construed narrowly to preserve the primary operation
of the statute); Patsy v. Board of Regents, 457 U.S. 496,
507-12 (1982) (rejecting proposed construction that would render
other statutory provisions superfluous); United States v. Tappin,
205 F.3d 536, 540 (2d Cir.) (same), cert. denied, 121 S. Ct.
260 (2000). The statutory text, structure, and legislative history
all confirm that the reference to "fair use" in §
1201(c)(1) is to keep causes of action for circumvention and
trafficking, and defenses thereto, separate from infringement
actions and defenses.
By its very nature, fair use
cannot be wrenched from the infringement context and wedged into the
DMCA's statutory framework: fair use is the "use of a
copyrighted work," 17 U.S.C. § 107, permissible only under
a "case-by-case analysis" of the use in relation to the
work, Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577
n.8 (1994); Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539, 560 (1985). A defendant establishes a fair use
affirmative defense by proving, Campbell, 510 U.S. at 590,
that his use of a particular work will be limited and unlikely
to cause market harm. By contrast, the DMCA is concerned not with
the copying of specific works but with the public dissemination of
devices that facilitate infringement and thereby risk harm to all
copyrighted works protected by a given technology. A fair use
defense to trafficking in circumvention devices - which Congress
refused to enact, despite pleas to do so by, among others, Corley's
attorneys and many of his amici - would render the
proscription meaningless and eviscerate the technological protections
against digital copying that Congress sought to foster.
B.Even If Congress Had Not Expressly Rejected a Fair Use Defense
to a Trafficking Claim, Corley Could Not Prevail on Any Such Defense
and His "Overbreadth" Argument Is Equally Unavailing
Judge Kaplan's permanent
injunction against Corley's trafficking in DeCSS cannot be overturned
on fair use grounds not only because Congress provided no such
defense, but also because, by Corley's own admission, he would not be
entitled to it in any event. During the course of the proceedings
below, Corley admitted that: (a) he did not own any DVDs or a DVD
player; (b) he personally never used, nor sought to use, DeCSS; and
(c) he never wanted or needed to decrypt any work protected with CSS.
(A337-38) The only "use" Corley made of DeCSS was his
sustained trafficking in the device on the Site, with no attempt to
limit distribution to persons with some particularized need to use it
for a non-infringing, or any other arguably permissible purpose.
39
On this record, Corley cannot
possibly be entitled to rely on fair use because he personally is not
making any "use" of either DVDs or DeCSS. Corley's fair
use mantra is an impermissible attempt to raise the purported fair
use rights of a host of third-party, hypothetical users of DeCSS, in
defiance of Congress's decision that consideration of such purported
uses - i.e., the doctrine of Sony, 464 U.S. at 440-42 -
"is not part of this legislation." See supra n.16.
40
Federal courts routinely have rejected defendants' attempts to
assert the fair use rights (whether real or hypo thetical) of third
parties to excuse their unlawful conduct. See, e.g., Napster,
Inc., 2001 WL 115033, at *6-*12 (rejecting defendant MP3 music
file sharing service's argument that its users engaged in fair use);
Infinity Broad. Corp., v. Kirkwood, 150 F.3d 104, 108 (2d Cir.
1998) (rejecting defense despite argument by defendant which
retransmitted copyrighted radio broadcasts over telephone lines that
end listeners engaged in transformative fair use of broadcasts);
Princeton Univ. Press v. Michigan Document Servs., 99 F.3d
1381, 1386 & n.2 (6th Cir. 1996) (rejecting fair use defense to
college campus "copy shop" operator's unauthorized copying
of "coursepacks" despite assertion that "it would be
fair use for the students or professors to make their own copies"),
cert. denied, 520 U.S. 1156 (1997); Basic Books, Inc. v.
Kinko's Graphics Corp., 758 F. Supp. 1522, 1530-31 (S.D.N.Y.
1991) (same); UMG Recordings, Inc. v. MP3.com, Inc., 92 F.
Supp. 2d 349, 351-53 (S.D.N.Y. 2000)(rejecting fair use defense to
website operator's unauthorized copying of copyrighted CDs despite
defendant's attempt to portray service as "functional
equivalent" of its subscribers' fair use).
For this same reason, this Court
also should reject any attempt to argue that by impairing fair use of
DVDs generally the DMCA's trafficking proscriptions are
unconstitutionally overbroad (which Corley seems to have abandoned in
any event, see Br. at 52, but which some of his amici press).
41
Generally, a litigant has standing only to vindicate his own rights.
Members of City Council v. Taxpayers for Vincent, 466 U.S.
789, 796 (1984).
42
Accordingly, Corley may assert hypothetical fair uses by others only
if the overbreadth doctrine were applicable here. It is not. As the
Supreme Court repeatedly has cautioned, overbreadth is "strong
medicine" that should be applied only "with hesitation"
and as a "last resort." Los Angeles Police Dep't v.
United Reporting Publ'g Corp., 528 U.S. 32, 39 (1999); New
York v. Ferber, 458 U.S. 747, 769 (1982); Broadrick, 413
U.S. at 613. Where statutes aimed solely at conduct - as are §
1201(a)(2) and (b), see Point IA, supra - are
concerned, "the overbreadth of a statute must not only be real,
but substantial as well, judged in relation to the statute's plainly
legitimate sweep," before the statute can be invalidated. Hill,
120 S. Ct. at 2498; Ferber, 458 U.S. at 770; Broadrick,
413 U.S. at 615. Here, as in United Reporting, Ferber, and
Authors League of Am., Inc. v. Oman, 790 F.2d 220, 225-26 (2d
Cir. 1986) (Oakes, J., concurring), Congress's stated, legitimate
purpose in enacting, and the permissible applications of, the DMCA's
trafficking proscriptions dwarf whatever marginal applications might
be imagined to impair expressive interests, and Judge Kaplan properly
rejected Corley's argument that application of the DMCA to his
trafficking activities is unconstitutional because of its supposed
chilling effect on some theoretically permissible conduct or speech
of others. Universal at 337-39.
43
C.The Trafficking Proscriptions Do Not Eliminate
Fair
Use of Films Delivered on DVD.
Corley and his amici
erroneously assert that the permanent injunction, and the DMCA's
trafficking proscriptions in general, sound the death knell for fair
use of copyrighted works delivered on DVDs.
44
Contrary to those claims, however, the public now has a far greater
body of commercially-released films from which to make fair use, and
a greater scope for fair use of each of those films, than was ever
available prior to the commercial launch of VCRs in the 1970s. In
the pre-VCR era and since, the First Amendment has not been violated
by the fact that the fair uses that could have been made of films
always have been necessarily impacted by the Studios' decisions about
how frequently, and in what cities and theaters, to release their
films. The property rights that have, for example, permitted Disney
to release Snow White only periodically and for limited times,
and that permit both live stage and motion picture theaters to refuse
to allow ticketholders to film or videotape plays and films, do not
violate the First Amendment, and neither do the state law rights
that, together with 17 U.S.C. § 202, permit purchasers of art
objects or literary manuscripts (whether or not copyrighted) to keep
them out of public view. The Studios are free to release their films
exclusively for display in movie theaters, or not to release them at
all. See, e.g., Stewart v. Abend, 495 U.S. 207, 228-29 (1990)
("nothing in the copyright statutes would prevent an author from
hoarding all of his works during the term of the copyright").
Studios distributed their works for decades in this manner before the
advent of DVDs, or even of videocassettes, and fair uses for film
criticism, comment, teaching, scholarship, and research were as
common as crabgrass.
Contrary to Corley's assertion
(Br. 41) that the permanent injunction is "unconstitutional
because it eliminates fair use of DVD movies," neither the
injunction nor the DMCA "eliminate fair use" of anything,
much less of any copyrighted work at issue in this action.
45
65 Fed. Reg. 64555, 64567. A movie released on DVD and in no other
format
46
could be the subject of innumerable uses potentially qualifying as
fair use. Its plot and characters can be imitated or spoofed; its
language can be quoted; and it can be shown on a DVD player in a
classroom. Further, nothing in the DMCA, for example, would prohibit
taking a brief snapshot from a TV or video display, that otherwise
meets the statutory fair use criteria, of the content on a DVD (which
would not, to be sure, be a perfect digital copy, but that is
precisely the point of the trafficking proscriptions). In short,
rigorous enforcement of the anti-circumvention provisions would
impair, at most, the marginal quality of the image available for
certain kinds of exotic fair uses. However, § 107 of the
Copyright Act does not afford a "privilege" to make perfect
digital copies of DVD movies; it merely provides a defense in
infringement actions for certain permissible uses.
47
Nothing in the DMCA or the First
Amendment gives courts the duty or power, in the abstract, to create
a new fair use "right" to optimal copies of a
copyright owner's works, when Congress already has weighed the
competing interests and come to a different balance. Yet, it is only
in this diminished ease of access to such optimal copies -
anecdotally suggested here and there in the record, with no reference
to specific users or specific works - that Corley grounds his
sweeping assertion that fair use is being "eliminated."
Even if his constitutional arguments were not otherwise defective,
Corley's claims about fair use should be rejected because of their
sheer factual inaccuracy and his failure of proof.
CONCLUSION
For the foregoing reasons, this
Court should affirm the judgment of the district court in all
respects.
Leon P. Gold, Esq.
Charles S. Sims, Esq.
Jon A. Baumgarten, Esq.
Carla M. Miller, Esq
Matthew J. Morris, Esq.
Proskauer Rose LLP
1585 Broadway
New York, New York 10036
(212) 969-3000
Attorneys for Plaintiffs-Appellees
CERTIFICATION
The undersigned attorney for
appellees certifies that the foregoing brief complies with the
type-volume limitation set forth in Federal Rule of Appellate
Procedure 32(a)(7). The total number of words in the foregoing brief
is 16,949.
Leon P. Gold, Esq.
Charles S. Sims, Esq.
Jon A. Baumgarten, Esq.
Carla M. Miller, Esq
Matthew J. Morris, Esq.
Proskauer Rose LLP
1585 Broadway
New York, New York 10036
(212) 969-3000
Attorneys for Plaintiffs-Appellees
FRAP 26.1 STATEMENT
Pursuant to Rule 26.1 of the
Federal Rules of Appellate Procedure, and to enable judges of the
Court to evaluate possible disqualification or recusal,
plaintiffs-appellees - Universal City Studios, Inc.; Paramount
Pictures Corporation; Metro-Goldwyn-Mayer Studios Inc.; TriStar
Pictures, Inc.; Columbia Pictures Industries, Inc.; Time Warner
Entertainment Company, L.P.; Disney Enterprises, Inc.; and Twentieth
Century Fox Film Corporation (each a private, non-governmental party)
- certify that the following are all of the corporate parents, and
other publicly held companies owning 10% or more of any
plaintiff-appellee's stock:
AOL
Time Warner Inc.
AT&T
Corp.
Bombay
Hook Limited
Fox
Entertainment Group, Inc.
French
Street Management Inc.
Metro-Goldwyn-Mayer,
Inc.
News
America, Incorporated
The
News Corporation Limited
Sony
Corporation
Viacom,
Inc.
Viacom
International, Inc.
Vivendi
Universal S.A.
The Walt Disney Company
1 Corley
is the sole shareholder of 2600 Enterprises, Inc., which was
subsequently named as a defendant in the lawsuit. (A37) 2600
Enterprises, Inc. purportedly owns the website at issue,
"www.2600.com," (the "Site") on which defendant
Corley initially posted the DeCSS utility. Corley and 2600
Enterprises, Inc. also publish a magazine entitled "2600: The
Hacker Quarterly" (the "Quarterly"), which Corley
founded in 1984. See Universal Studios, Inc. v. Reimerdes,
111 F. Supp. 2d 294, 308-09 (S.D.N.Y. 2000) ("Universal").
2 The
trafficking proscriptions apply to devices that circumvent
technological measures controlling access to a work (§
1201(a)(2)) and devices that circumvent technological measures
protecting the rights of a copyright owner (§ 1201(b)). The
Second Amended Complaint alleged violation of both (A44), the
Studios relied on both at trial, and the district court's findings
establish a violation of both (A2630-34). Corley's suggestion that
additional briefing would be necessary for this Court to address §
1201(b) is baseless.
3 Throughout
this brief, references to the trial transcript, which is reproduced
in Volume I of the Appendix, have been denoted with the prefix "Tr."
followed by the page and line number. All other citations to the
Joint Appendix are represented as A###." Section 1201 and
pertinent portions of legislative reports cited are reproduced in
the Addendum ("Add-##").
4 Corley
also admitted below and also does not dispute on appeal that his
conduct did not fall within either the narrow reverse engineering or
encryption research exceptions to the DMCA's trafficking
proscriptions. (Tr. 838:3-8) Accordingly, Corley has abandoned his
arguments on the Studios' statutory claims, and Judge Kaplan's
findings regarding those claims, and his rejection of Corley's
entitlement to any statutory defenses under the DMCA are conclusive.
Distasio v. Perkin Elmer Corp., 157 F.3d 55, 66 (2d Cir.
1998); Anderson v. Branen, 27 F.3d 29, 30 (2d Cir. 1994).
5 Section
1201 is reproduced in its entirety below at Add-1.
6 The
other two defendants, Roman Kazan and Shawn Reimerdes, entered
consent decrees with the Studios following the issuance of the
preliminary injunction. Universal at 312 n.91.
7 Corley's
plea for others to "mirror these files" asked them to copy
them onto a website of their own. (Tr. 808:17-19)
8 Judge
Kaplan also expressly noted that "[n]ot surprisingly, [Corley's
magazine] has included articles on such topics as how to steal an
Internet domain name, access other people's e-mail, intercept
cellular phone calls, and break into the computer systems at Costco
stores . . . and Federal Express." Universal at 308-09
(internal citations omitted).
9 In
view of his contention that his First Amendment rights are
infringed, Corley is correct that he is entitled to an independent
appellate review of the record bearing on the ultimate First
Amendment issue. He is wrong in suggesting that standard to be
identical to de novo review, or that it applies to the appeal
as a whole. Bose Corp. v. Consumers Union, 466 U.S. 485, 514
n.31 (1984) ("There are, of course, many findings of fact in a
defamation case that are irrelevant to the constitutional standard .
. . and to which the clearly-erroneous standard of Rule 52(a) is
fully applicable. Indeed, it is not actually necessary to review
the 'entire' record to fulfill the function of independent appellate
review on the actual-malice question; rather, only those portions of
the record which relate to the actual-malice determination must be
independently assessed. The independent review function is not
equivalent to a 'de novo' review . . . ."); Veilleux
v. National Broad. Co., 206 F.3d 92, 97 (1st Cir. 2000) (same).
10 See
also Hill v. Colorado, 120 S. Ct. 2480, 2491 (2000) (time,
place, and manner regulations for protests near health care
facilities); San Francisco Arts & Athletics, Inc. v. United
States Olympic Comm., 483 U.S. 522, 536-537 (1987) (restriction
on use of "Olympic" designation); and Procunier v.
Martinez, 416 U.S. 396, 410-14 (1974) (limitations on prisoner
mail), overruled in part on other grounds by Thornburgh v.
Abbott, 490 U.S. 401, 413-14 (1989).
11 Compare
A2570-71 with Universal at 326-27.
12 See
Junger v. Daley, 209 F.3d 481 (6th Cir. 2000) (reversing
district court decision that encryption export regulations presented
no First Amendment issue, and suggesting that intermediate scrutiny
would apply if plaintiff had standing to challenge revised
regulations); 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).
13 Tr.
25:15-19 (Shamos), 228:6-9 (Stevenson), 245:3-246:1, 259:6-9
(Schumann), 619:12-18 (Johannsen), 748:17-19 (Felton), 809:18-22,
821:21-822:17, 834:5-6 (Corley), 896:25-897:4, 898:16-22 (Ramadge),
1099:16-18 (Appel); A726, 33:18-21 (Hunt Dep.).
14 See
also Katherine A. Moerke, Free Speech to a Machine?
Encryption Software Source Code Is Not Constitutionally Protected
"Speech" Under the First Amendment, 84 Minn. L. Rev.
1007 (2000). Contradicting arguments they (and Corley) press here,
Professor Pamela Samuelson, co-author of the ACLU amicus
brief, and Professor J.H. Reichman, also an amicus here, have
previously written while "traditional literary works" are
"valued because of their expression . . . [p]rograms have
almost no value to users as texts. Rather, their value lies in
behavior," and conceded that "programs are, in fact,
machines" that "could as easily be implemented in hardware
as in software," and that programs "exist to make
computers perform tasks . . . Traditional literary works, such as
books, do not behave. Programs, like other machines, do."
Pamela Samuelson, J.H. Reichman, et al., A Manifesto Concerning
the Legal Protection of Computer Programs, 94 Colum. L. Rev.
2308, 2315-16, 2319-20 (1994). Similarly, Professor Dan L. Burk,
one of the 46 amici law professors, has observed that "congressional
restriction of the function of software does not offend the First
Amendment, even if it constrains the expression of values embedded
in the artifact." Burk, Patenting Speech, 79 Tex. L.
Rev. 99, 116 (2000). Any functional device is likely to have some
expressive elements, but if such elements brought regulation of the
devices under First Amendment scrutiny, "then it is difficult
to see where the confines of the label 'speech' will be found."
Id. at 112.
15 See,
e.g., Reno v. ACLU, 521 U.S. 844, 859-60 (1997) (criminalizing
the knowing transmission of defined "comment[s], request[s],
suggestion[s], proposal[s], image[s], or other communication[s]");
Florida Star v. B.J.F., 491 U.S. 524, 526 (1989) (unlawful to
"print, publish, or broadcast . . . in any instrument of mass
communication" names of rape victims); Sable Communications
of Cal., Inc. v. FCC, 492 U.S. 115, 120-23 (1989) (criminalizing
"indecent communication for commercial purposes"); Blount
v. Rizzi, 400 U.S. 410, 419 (1971) (authorizing Postmaster to
return allegedly obscene mail).
16 See
also Staff of House Comm. on the Judiciary, 105th Cong., 2d
Sess., Section- by-Section Analysis of H.R. 2281 as Passed by the
United States House of Representatives on August 4, 1998, (Comm.
Print 1998), at 8-9 (Add-67) ("While this legislation is aimed
primarily at 'black boxes' that have virtually no legitimate uses,
trafficking in any product or service that meets one or more of the
three points in this test could lead to liability. . . . The Sony
test of 'capab[ility] of substantial non- infringing uses,' while
still operative in cases claiming contributory infringement of
copyright, is not part of this legislation . . . "); Conference
Committee Report, H.R. Rep. No. 105-796, at 63-65 (1998) (Add-48-50)
(noting that the "black box" or "anti- circumvention"
provisions were enacted to comply with the WIPO obligation to
provide "adequate legal protection and effective legal remedies
against the circumvention of effective technological measures that
are used by authors in connection with the exercise of their
rights").
17 Congress's
reference to "passwords" underlines the irrelevance of
Chicago Lock v. Fanberg, 676 F.2d 400 (9th Cir. 1982), on
which Corley relies (Br. 24). Chicago Lock held only that
California common law imposed no confidentiality duties on
locksmiths, and said nothing about whether such duties might have
been imposed.
18 See
H.R. Rep. No. 105-551, pt. 1, at 9-10 (1998) (Add-80-81). The
Register of Copyrights recently agreed, in the rulemaking mandated
by Congress concerning § 1201(a)(1), that the DMCA was enacted
to enable a much wider and much earlier dissemination of creative
works than would occur if content owners could not protect their
works from near-instantaneous worldwide digital dissemination, and
concluded that the DMCA is serving that purpose. 65 Fed. Reg.
64556, 64568 n.13 (Oct. 27, 2000) (Add-122).
19 Seizing
on narrow exemptions that certain interest groups lobbied for and
obtained concerning encryption research, reverse engineering, and
security testing, § 1201(f, g, and k), Corley contends (Br. 20)
that the existence of those exemptions somehow triggers strict
scrutiny. The law is otherwise. City of Ladue v. Gilleo,
512 U.S. 43, 52 (1994), on which Corley relies, says only that
exemptions "may diminish the credibility of the
government's rationale for restricting speech in the first place."
(Emphasis added.) Here, the narrowly tailored exemptions that
Congress afforded in lieu of a broader fair use defense does not at
all "diminish the credibility" of the rationale for the
general trafficking prohibition Congress enacted to comply with the
WIPO treaty and preserve the inducement to creation and
dissemination that copyright affords.
20 Florida
Star reversed a damage award imposed for violating a law barring
publication of the names of rape victims; Smith v. Daily Mail
Pub'g Co., 443 U.S. 97, 98 (1979), overturned a conviction under
a law barring publication of the names of juvenile defendants "in
any newspaper"; Landmark Communications, Inc. v. Virginia,
435 U.S. 829, 830 (1978), reversed a penalty under a law making it
unlawful to "divulge" information about judicial
misconduct proceedings; and Cox Broad. Corp. v. Cohn, 420
U.S. 469, 471 n.1, 487 (1975), reversed a damage award under a law
prohibiting publication of name of rape victim to protect victim's
identity.
21 See
also 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 Univ. 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).
22 Corley's
argument that software is necessarily "fully protected speech"
deserving strict scrutiny regardless of the character of the
regulation is at odds with the settled application of a wide range
of strict liability product warranties and other regulation to
software under, e.g., U.C.C. § 2-314, U.C.I.T.A. § 405,
and other state laws. Unlike the expression in books and
newspapers, to which such warranties and regulation cannot
constitutionally be applied, see, e.g., Winter v. G.P. Putnam's
Sons, 938 F.2d 1033 (9th Cir. 1991) (citing cases), courts have
consistently held that software is a product subject to such
warranties. See Milgrim on licensing, § 5.20 (2000)
(citing U.C.I.T.A. and other authorities).
23 Thus,
the Opinion justifies the application of intermediate scrutiny
before analyzing the Junger case, on which Corley relied, and
addressing its discussion of functionality. Universal at
328-30.
24 E.g.,
2 U.S.C. § 1607 (2000) (Lobbying Disclosure Act of 1995); 18
U.S.C. § 112(d) (2000) (Act for the Protection of Foreign
Officials); 42 U.S.C. § 2000bb-4 (2000) (Religious Freedom
Restoration Act); 47 U.S.C. § 326 (2000) (Communications Act);
Pub. L. No. 106-274, 114 Stat. 803, §§ 5, 6 (Religious
Land Use and Institutionalized Persons Act of 2000).
25 E.g.,
United States v. Quiroz, 22 F.3d 489, 490 (2d Cir. 1994) ("It
is well established that 'an argument not raised on appeal is deemed
abandoned"); Mehta v. Surles, 905 F.2d 595, 598 (2d Cir.
1990); United States v. Babwah, 972 F.2d 30, 34 (2d Cir.
1992).
26 The
pertinent portions of each legislative report amply reflect the
compelling interests underlying the trafficking proscriptions, and
are reproduced in the Addendum. Hearings were conducted by the
Senate Judiciary's Subcommittee on Courts and Intellectual Property,
see S. Rep. No. 105-190, at 6 (Add-13) (1998); by the House
Judiciary Committee's Subcommittee on Courts and Intellectual
Property, see H.R. Rep. No. 105-551, pt. 1, at 12 (Add-83)
(1998); and by the House Commerce Committee's Subcommittee on
Telecommunications, Trade, and Consumer Protection, see H.R.
Rep. No. 105-551, pt. 2, at 28 (Add-94) (1998). See also, e.g.,
144 Cong. Rec. H10615, H10618 (Add-132) (1998) (Statement of Rep.
Barney Frank) ("I want to express my satisfaction with what we
worked out. As Members have mentioned, we have a tough situation
here in which we want to protect intellectual property rights but
not interfere with freedom of expression.").
27 65
Fed. Reg. 64556, 64568 n.13 (Add-122).
28 Although
several of Corley's amici from the field of cryptography,
including cryptographer Bruce Schneier, criticize the scope of the
encryption research exemption of the DMCA, § 1201(g),
ironically, even Mr. Schneier has voiced strong personal opposition
to the public dissemination of "exploits" (i.e., computer
programs "that make[] use of a vulnerability to attack a
system" (A1056)), like DeCSS, stating that "I believe that
it is irresponsible, and possibly criminal, to distribute exploits.
Reverse- engineering security systems, discovering vulnerabilities,
and writing research papers about them benefits research; it makes
us smarter at designing secure systems. Distributing exploits just
make [sic] us more vulnerable. . . Handing computer weaponry to
clueless teenagers is part of the problem." See Bruce
Schneier, Publicizing Vulnerabilities, Crypto-Gram, Feb. 15,
2000 (available at
http://www.counterpane.com/crypto-gram-0002.html).
29 In
an elliptical footnote (at 25 n.16), Corley suggests that the
standard of scrutiny applicable to the injunction is not the usual
O'Brien standard but the marginally heightened standard (although
less than strict scrutiny) applied in Madsen v. Women's Health
Ctr., Inc., 512 U.S. 753 (1994). Compare Schenck v.
Pro-Choice Network, 519 U.S. 357, 372-73 (1997), and United
States v. Scott, 187 F.3d 282, 287 (2d Cir. 1999) (applying
Madsen standard) with Hill, 120 S. Ct. at 2488
(applying the O'Brien- Ward standard, not Madsen, in a
facial challenge to a legislative enactment). Here, because
paragraphs 1(a) and 1(b) of the Final Judgment merely track
Congress's own legislative directions and, unlike the injunctions in
those cases, entail no further interstitial judicial
mini-legislation directed at when, how, and in what manner "speech"
may be limited, only the usual O'Brien-Ward test is
applicable, although the injunction easily passes the Madsen
test as well. The injunctive provisions upheld in Madsen,
Schenck, and Scott burdened significantly more speech
than does the injunction here.
30 See
generally Timothy R. Cahn and Joshua R. 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).
31 See
Corley Br. 30; Online News Association Br. 14.
32 For
the reasons relied on in Madsen, 512 U.S. at 763-64 n.2, and
in Schenck, 519 U.S. at 374 n.6, the injunction is
content-neutral because it "was issued not because of the
content but because of [defendants'] prior unlawful conduct."
See Universal at 328-329 (defendants undertook "a
studied effort to defeat the purpose of the preliminary
injunction").
33 See
supra, at 10-12. Corley asked other hackers to publicly provide
the decryp tion device only once he was apprehensive that the
Studios would assert their rights (redoubling his efforts after the
preliminary injunction). E.g., A2270-93; A2619-22, 2684-86.
34 While
the Studios submit that the purpose and reach of the trafficking
proscriptions require no more than intermediate scrutiny, the
trafficking proscriptions are narrowly tailored to serve compelling
governmental interests, including interests in the wider
dissemination of protected speech, and would therefore survive even
strict scrutiny. See, e.g., Burson v. Freeman, 504 U.S. 191
(1992) (upholding statute on strict scrutiny); Osborne v. Ohio,
495 U.S. 103 (1990); Austin v. Michigan St. Chamber of Commerce,
494 U.S. 652 (1989). The means Congress chose were "precisely
targeted," indeed with laser-like accuracy, at the compelling
governmental interests in treaty compliance, protecting copyright
incentives from the harms threatened by technological advances, and
inducing reluctant copyright owners to disseminate into the
marketplace in digital form their copyrighted works, while leaving
the DMCA's opponents free "to express their political views."
Austin, 494 U.S. at 660. On their face, and as applied
here, the trafficking proscriptions prohibit nothing except the
public distribution of the actual means of decryption,
leaving cryptologists, academics, and everyone else free to
criticize, comment, or engage in any speech about such means,
or about anything else.
35 See
generally A&M Records, Inc. v Napster, Inc., No. 00-16401,
16403, 2001 WL 115033 (9th Cir. Feb. 12, 2001).
36 The
Register of Copyright also recently noted in the Final Rule issued
in the rulemaking proceeding required by § 1201(a)(1)(C), that
"fair use, as codified in 17 U.S.C. § 107, is not a
defense to the cause of action created by the anti-circumvention
prohibition of section 1201." Recommendation of the Register
of Copyrights, 65 Fed. Reg. 64556, 64561 (Add-115).
37 Even
commentators critical of aspects of the DMCA have recognized that a
fair use defense is simply not part of the statutory plan. See,
e.g., David Nimmer, A Riff on Fair Use in the Digital
Millennium Copyright Act, 148 U. Pa. L. Rev. 673, 723 (2000).
38 See,
e.g., Testimony Regarding Implementation of the December 1996 WIPO
Copyright and Phonograms Treaties: Hearing on H.R. 2281 Before the
House Comm. on Commerce, 105th Cong. (1998) (statement of Robert
Oakley), available at http://com-notes.house.gov. (proposing, on
behalf of American Library Association and others, that § 1201
should include a subsection stating that "[a]ll rights,
limitations and defenses available under this title, including fair
use, shall be applicable to actions arising under this chapter");
Testimony Regarding Comprehensive Implementation of the December
1996 WIPO Copyright and Phonograph Treaties: Hearing on H.R. 2281
Before the House Comm. on the Judiciary, 105th Cong. (1997)
(statement of Gary J. Shapiro), available at
http://www.house.gov/judiciary/4008.htm (arguing, on behalf of
consumer electronics manufacturers, that Section 1201 is defective
because it does not "allow 'fair use' to be invoked as a
defense for a product that enables fair uses by consumers");
id. (statement of Chris Byrne), available at
http://www.house.gov/judiciary/4023.htm (advocating revision of DMCA
to incorporate Sony standard and link "liability for
circumventing a copy protection system to an intent to infringe"
and "enable users to access and copy material for fair use").
39 Corley
posted DeCSS on his web site, and solicited others to do so as well,
describing it as a free DVD decoder to enable people to copy DVDs,
and with an invitation to all and sundry to download it. See
A371, A2270. Even if there were a fair use defense to assert,
Corley would not succeed, given Congress's categorical conclu sion
that public provision of decryption devices "would adversely
affect the potential market" for copyrighted works. See
Sony, 464 U.S. at 451; American Geophysical Union v. Texaco
Inc., 60 F.3d 913, 927 n.13 (2d Cir. 1994).
40 Corley
adduced testimony from computer scientists about potential
third-party scientific uses that conceivably might be facilitated by
DeCSS. See A386-390 (testimony of Prof. Peter Ramadge) and
Br. at 47-49. Such evidence cannot afford Corley a defense,
however, because he did not know of these third parties or their
research and made no effort to limit his distribution of DeCSS for
such purposes. SeeA374. Corley's indiscriminate
dissemination of DeCSS is in sharp contrast to the narrow exemptions
for distribution of circumvention devices Congress enacted in 17
U.S.C. § 1201(f), (g), and (j).
In fact, Dr. Peter
Ramadge's testimony showed that digital audiovisual content can be
licensed for his research purposes, and that DeCSS is, at most, a
means to obtain better quality content at a better price - i.e.,
free. See A388-90. He had no knowledge of whether his
corporate research sponsors approached copyright owners to obtain
licenses to use digital content. A398.
41 See,
e.g., ACM Committee Br. at 5.
42 Naturally,
if a statute is facially invalid in every conceivable application,
any litigant will have standing to challenge it, Taxpayers for
Vincent, 466 U.S. at 803 (citing cases invalidating laws
requiring speakers to obtain licenses for speech, or prohibiting
specific expressions based on content), but the trafficking
proscriptions here have unchallengeable constitutional application
to a wide range of conduct, and are not at all analogous to the
statutes subject to invalidation on that ground.
43 Among
decisions rejecting overbreadth challenges in copyright-related
cases, see, e.g., Anderson v. Nidorf, 26 F.3d 100, 104 (9th
Cir. 1994), cert. denied, 574 U.S. 1035 (1995), and Authors
League, 790 F.2d at 225-26 (Oakes, J., concurring) (agreeing
that Copyright Act manufacturing clause, 17 U.S.C. § 601, did
not violate plaintiffs' rights and that the court should "leave
to another day the question whether it is unconstitutional as
applied" to others). Among other recent cases rejecting
overbreadth challenges to statutes aimed conduct, see, e.g.,
Osborne v. Ohio, 495 U.S. 103, 112 (1990), and Longo v.
United States Postal Serv., 953 F.2d 790, 797-98 (2d Cir. 1992),
vacated and remanded on other grounds, 506 U.S. 802 (1992),
adhered to, 983 F.2d 9 (2d Cir. 1992), cert. denied,
509 U.S. 904 (1993).
Finally, Corley mistakenly proposes (at
63-66) that to remedy the asserted constitutional infirmity of the
DMCA this Court should construe § 1201(a)(3) to mean that "the
authority of the copyright owner" to decrypt an encrypted work
passes to the buyer of a copy of such a work upon sale of a DVD.
Judge Kaplan rightly rejected this tortured reading as "sophistry."
See Universal at 317 n.137. Copyright owners would not go
to the trouble of encrypting their works for use with DVD players
with authorized decryption keys if the mere sale of a copy entitled
the buyer to decrypt the works and copy them with impunity. The
authorization by the Studios has been limited to accessing DVD
content via authorized equipment, and does not extend to decryption
enabling the further copying and distribution of the digital (or
analog) output. Both this proposed "saving construction"
and the proposed judicial imposition of a "fair use"
defense would eviscerate the trafficking proscriptions and eliminate
the protection for which Congress enacted them.
44 See,
e.g., Corley Br. 41; Lessig and Benkler Br. 10; ACLU Br. 4-5,
14-15.
45 The
Register of Copyrights recently found those same "Chicken
Little" alarms, which were raised by Corley's attorneys and
many of his amici here, completely unwarranted: "[T]here
has been no evidence submitted in this rulemaking that access to
works available only in a secured format is being denied or has
become prohibitively difficult. Even considering the examples
presented by various commentators, they merely establish that there
are works that exist only in digital form. They have not
established that access controls on those works have adversely
impacted their ability to make noninfringing uses, or, indeed, that
access controls impede their use of those works at all . . . . In
the case of motion pictures on DVDs, anyone with the proper
equipment can access (view) the work. If there were evidence that
technological access controls were being used to lock up material in
such a way that there was effectively no means for a user wanting to
make a noninfringing use to get access, it could have a substantial
adverse impact on users . . . . Nonetheless, that evidence would
have to be balanced against an author's right to grant access to a
work. . . . [In any event, n]o such evidence has been presented . .
. ." 65 Fed. Reg. at 64567 (Add- 121). Indeed, rejecting the
very contention pressed here as well, the Register noted that motion
picture producers had been "generally unwilling to release
their works in DVD format unless they are protected by access
control measures," and that "it appears that the
availability of access control measures has resulted in greater
availability of these materials." 65 Fed. Reg. at 64568
n.13 (Add-122).
46 Although
Corley and amici prophesy that "most works in a few
short years will certainly be" available only in
encryption-protected digital media, Benkler and Lessig Br. 10,
Intellectual Property Law Professors Br. 18, Corley Br. 54, the
record supports no such proposition about the present or the future.
As Judge Kaplan noted, "all or substantially all motion
pictures available on DVD are also on videotape." Universal
at 337. Even David Nimmer's musings about a "pay-per-use"
world are qualified by the admission that technological and economic
factors make such a world "not inevitable" and in any
event "decades" distant if it materializes at all.
Nimmer, A Riff on Fair Use in the Digital Millennium Copyright
Act, 148 U. Pa. L. Rev. 673, 740 (2000).
47 None
of the cases relied upon by amici Intellectual Property Law
Professors supports the proposition that a "fair user" is
entitled to perfect digital copies, much less that the First
Amendment would be violated if Congress provided for fair use but
denied access to perfect digital copies for the small portion of
fair uses that involve visual quotation.
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