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Editor's Notes: BRIAN M. BARNARD USB # 0215 IN THE UNITED STATES DISTRICT COURT
Defendants Utah Lighthouse Ministry, Inc., Jerald Tanner and Sandra Tanner, through counsel Brian M. Barnard submit the following memo regarding contributory infringement as raised in plaintiff’s Reply Memo (Doc. # 13, 11/05/1999)(hereinafter “Reply Memo”): PRELIMINARY STATEMENT In its Reply Memo in support of its motion for preliminary injunction, plaintiff suggested that these defendants were guilty of contributory copyright infringement. At the November 10, 1999 hearing on plaintiff’s motion for preliminary injunction, the Court invited the parties to brief the issue of contributory infringement. The Court set further hearing for November 18, 1999 on plaintiff’s motion for preliminary injunction. In the interim, these defendants have filed a motion to dismiss for lack of jurisdiction and failure to state a claim, Fed. R. Civ. Pro. 12(b)(1)&(6). Doc.# ___, dated 11/12/1999. PERTINENT FACTS 1. Defendants Sandra and Jerald Tanner and Utah Lighthouse Ministry have not violated the initial temporary restraining order entered in this action. 2nd Aff. of Sandra Tanner, ¶ 2 (Doc. # 16); 1st Aff. of Jerald Tanner, ¶ 2 (Doc. # 17). These defendants have ceased any and all alleged “infringing conduct.” 2nd Aff. of Sandra Tanner, ¶ 3; 1st Aff. of Jerald Tanner, ¶ 3. 2. Since entry of the Temporary Restraining Order on October 18, 1999: Defendants have not “publish portions of the Handbook” Defendants are not “publishing and inducing publications of the entire Handbook.” Defendants have not “reproduced and distributed the entire Handbook.” Defendants have not “helped . . . others copy and/or distribute copies of the Handbook.” Defendants have not “affirmatively act[ed] to help people obtain known infringing copies of the entire Handbook.” Defendants have removed the “prohibited indexes” from their web site and are not “actively inviting inquiries about unauthorized copies.” 2nd Aff. of Sandra Tanner, ¶ 4; 1st Aff. of Jerald Tanner, ¶ 4. 3. After this litigation began, these defendants posted on their internet web site www.utlm.org information regarding this action. That section on the web site is titled: Under the Cover of Light: News – LDS Church v. Utah Lighthouse Ministry. That section includes a chronology of the events related to this lawsuit. That information includes copies of certain pleadings, letters, emails received, documents and links to newspaper articles in The Salt Lake Tribune. Included in that page of the web site are the words: Church Handbook of Instructions Excerpts on Name Removal and Church Handbook of Instructions Chapter 10 Church Discipline; no substance from those portions of the Church Handbook of Instructions are currently on the web site. None of the emails posted on the web site were authored or sent by these defendants. 2nd Aff. of Sandra Tanner, ¶ 7; 1st Aff. of Jerald Tanner, ¶ 7. 4. Included in one of the emails posted on defendants’ web site were three (3) URL’s of locations where the Church Handbook of Instructions, Book 1 was said to be posted in its entirety. Reply Memo, Exhibit “1". That email was posted on defendants’ web site on or after November 2, 1999. Defendants’ web site has never included links to the web sites described in the email as containing the Church Handbook of Instructions, Book 1. 5. Since November 10, 1999, these defendants have complied with the modified Temporary Restraining Order, (Doc. # 19, 11/10/1999), and have removed from their web site the URL’s of web sites containing the Church Handbook of Instructions, Book I and have even removed the link to the news article in The Salt Lake Tribune which contained two (2) URL’s where the Handbook could be found. 6. Sandra Tanner, Jerald Tanner and Utah Lighthouse Ministry, Inc. are not responsible for, have no connection with and have no control over the web sites that currently contain the Handbook. These defendants are not responsible for, have no connection with and have no control over the persons operating those web sites. These defendants did not provide The Salt Lake Tribune with the URL’s to the Australian web site or the other site mentioned in its article. These defendants did not encourage or even suggest that the Tribune publish the URL’s in its news article. These defendants have been informed and believe that the entire Handbook was posted at various places on the Internet long before this litigation began.. 2nd Aff. of Sandra Tanner, ¶ 8; 1st Aff. of Jerald Tanner, ¶ 8. 7. Since the entry of the Temporary Restraining Order, these defendant and Utah Lighthouse Ministry have not acted in concert with any one nor have they encouraged any one to reproduce or distribute the offending portion (~17 pages formerly on defendants’ web site) nor the entire Handbook. 2nd Aff. of Sandra Tanner, ¶ 9; 1st Aff. of Jerald Tanner, ¶ 9. 8. These defendants believe that the recent wide circulation of the Handbook (including ~17 pages formerly on defendants’ web site) was caused by public interest and news coverage as a result of the filing of this suit. These defendants believe that the circulation was, in part, caused by plaintiff making those ~17 pages part of the public record in this case available to the public through this Court’s Clerk’s Office. 2nd Aff. of Sandra Tanner, ¶ 10; 1st Aff. of Jerald Tanner, ¶ 10. 9. Plaintiff contends, inter alia, that these defendants posting text of an email containing URL’s of sites containing allegedly infringing materials, including the (~17) pages that are the subject matter of this action, constitutes actionable contributory infringement and should be preliminarily enjoined. Reply Memo, pp. 4 - 7. 10. Plaintiff’s allegation is that these defendants “advertise[] the Internet addresses [URL’s] at which copies of the entire Handbook or portions of the Handbook can be obtained.” Reply Memo, p. 5, emphasis original.[1][2] Plaintiff generally characterizes this conduct as contributory infringement. Id., pp. 4-5.[3] 11. Based upon plaintiff’s Reply Memo, this Court issued a modified temporary restraining order which provided, inter alia:
Order, 11/10/1999, p. 4, Doc. # 19. 12. Plaintiff now asks that a preliminary injunction issue to the effect that “Defendants shall remove and keep off defendants’ website . . . all Internet addresses and other references or materials that guide others to the location of unauthorized copies.” Reply Memo, p. 8. ARGUMENT NO CONTRIBUTORY INFRINGEMENT HAS OCCURRED Contributory infringement requires substantial active conduct aiding a primary infringer far beyond simply reciting an Internet address, a URL. Independent passive non-participatory conduct does not rise to the level of “inducing, causing or materially contributing to the infringing conduct of another.” In the modified Temporary Restraining Order (11/10/1999, Doc. # 19), the Court cites Gershwin Publ’g Corp. v. Columbia Artists Mgt., 443 F.2d 1159, 1162 (2nd Cir. 1971) in support of the proposition that posting a URL may constitute contributory infringement. Gershwin was one of the first cases to consider contributory infringement. Gershwin and its progeny are inapposite to the case at bar. Those cases all require active substantial aid and assistance to the primary infringer. In Gershwin, the direct infringers retained the contributory infringer to manage their musical performances. The contributory infringer would contact each direct infringer, obtain the titles of the musical compositions to be performed, print the programs, and then sell programs to its own local organizations for distribution at the time of the direct infringement. Id. at 1161. The Court of Appeals affirmed the finding of both vicarious and contributory infringement and emphasized that the contributory infringer directly aided the infringing conduct of the artists (the primary direct infringers) and derived substantial monetary benefit from the actions of the primary infringers. Id. at 1163. In Gershwin, the contributory infringer maintained an ongoing relationship and acted in concert with the primary infringer. Id. at 1161-1163. In the case at bar, in contrast to Gershwin, these defendants have no control over the alleged infringing parties and did not aid nor direct the actions of the alleged primary infringers.[4] These defendants are not responsible for, have no connection with and have no control over the web sites that may contain the Handbook. These defendants are not responsible for, have no connection with and have no control over the persons operating those web sites. 2nd Aff. of Sandra Tanner, ¶ 8; 1st Aff. of Jerald Tanner, ¶ 8. These defendants have not acted in concert with any one nor have they encouraged any one to reproduce or distribute the Handbook nor portions thereof. 2nd Aff. of Sandra Tanner, ¶ 9; 1st Aff. of Jerald Tanner, ¶ 9. In Screen Gems-Columbia Music, Inc. v. Mark-Fi Records, Inc., 256 F.Supp 399 (S.D.N.Y. 1966) the direct infringer manufactured and sold bootleg phonograph records. In denying a motion for summary judgment, the trial court held that the infringer’s advertising agency, the radio stations that advertised the infringer’s works and the service agency that boxed and mailed the infringing good could all be held liable, if at trial, it could be demonstrated that they knew or should have know that they were dealing in illegal goods. Each of those potential contributory infringers actively participated in the chain of distribution and had a relationship with the primary infringer. Such is not the case at bar; defendants herein do not know the alleged direct infringers; these defendants have not aided the conduct of the direct infringer. These defendants have not encouraged action by the web site owners and operators. Potential liability in Screen Gems was predicated upon conduct of the advertisers and the packaging and shipping agency that directly and substantially aided the primary infringer in the acts of infringement. Nimmer on Copyright, § 12.04[A][2], p. 1273 (1995). Screen Gems stands for the proposition that a party who acts in concert with the direct infringer may be held liable for contributory infringement. Screen Gems does not hold, as plaintiff broadly suggests in this action, that anyone and everyone that gratuitously gives out (“advertises”) an Internet address (URL) which contains infringing material is guilty of contributory infringement. Recently the Ninth Circuit considered the elements necessary to state a cause of action for contributory infringement. In Fonovisa v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) the court found a complaint sufficient to state a claim for contributory infringement against the owner and operator of a swap meet for bootleg phonograph recordings sold by an independent vendor. The Fonovisa court reviewed the complaint and found allegations of “pervasive participation in the formation and direction” of the acts of the direct infringer by the contributory infringer, the swap meet operator (just as in Gershwin). Fonovisa. at 263. The Fonovisa court suggested the provision of support services (inter alia, space, utilities, parking, advertising, plumbing and customers) by the swap meet operator to the independent vendor would be a “material contribution to the infringing activity,” the actual sale of bootleg records. Id. at 264. The alleged participation by the swap meet owner in Fonovisa was not “passive.” Fonovisa, 264. In contrast to Fonovisa, the defendants at bar have not provided support services nor direct aid to the alleged primary infringers, the web site operators.[5] Primary Infringement By Web Site Owners? Contributory infringement can not exist unless there is a direct primary infringement. Nimmer on Copyright, § 12.04[A][3][a], p. 1284 (1995). Plaintiff asks the court to assume that primary infringement by parties unknown in order to issue a preliminary injunction. Plaintiff has suggested in its memo (but not alleged in its verified complaint) direct primary infringement by the three web sites. Plaintiff has not presented any admissible evidence of direct primary infringement by those web sites. Plaintiff has alleged without supporting affidavits, that the three web sites cited by these defendants contain some or all of the Handbook.[6] Plaintiff suggests that the Handbook or portions thereof posted on the three web sites are in violation of United States copyright laws. Plaintiff has presented no evidence that the Handbook or portions thereof posted on the three web sites are in violation of United States copyright laws.[7] Plaintiff and/or the LDS Church as the publisher of the Church Handbook of Instruction has given express written permission to certain people to reproduce and distribute portions of the Handbook. Specifically, the Handbook recites: This entire book should not be duplicated. However, the stake president or bishop may authorize portions to be duplicated for high councilors and others as needed. Exhibit “Y” attached, title page and portion “Distribution of Book 1.” Perhaps the postings on the web sites are based upon permission granted by plaintiff to duplicate and distribute the materials. Absent something more than plaintiff’s suggestion that there ma have been primary infringement by the web site owners, this Court should not issue a preliminary injunction. No Primary Infringement By Users or Down Loaders Plaintiff has perhaps suggested direct primary infringement by unknown and myriad persons that may have visited the three web sites and/or may have downloaded materials from the web sites. Plaintiff has not presented any admissible evidence of direct primary infringement by the unknown users or down loaders. The existence of and mis-conduct by such unknown users or down loaders is speculative. To establish liability for contributory infringement, the accused must contribute to “the infringing conduct of another.” Gershwin, 1162. Defendants at bar have done nothing to aid or materially contribute to the infringing conduct of another. The rights protected by copyright law are:
17 U.S.C. § 106. To be infringing an act must affect one of the foregoing protected rights. To be a contributory infringer, a person must have aided the primary infringer in an act that violated one of the foregoing protected rights. To be contributory infringement, the act or assistance must bear some direct relationship to the infringing acts, and the person rendering such assistance must be acting in concert with the infringer. Nimmer on Copyright, § 12.04[A][2], p. 1273 (1995). To constitute contributory infringement, the participation by the contributor must be substantial. Religious Technology Center v. Netcom On-Line Communication Services, 907 F.Supp. 1361, 1375 (N.D. Cal. 1995) citing Apple Computer, Inc. v. Microsoft Corp., 821 F.Supp. 616, 625 (N.D. Cal. 1993), aff’d, 35 F.3d 1435 (9th Cir. 1994); Demetriades v. Kaufmann, 690 F. Supp. 289, 294 (S.D.N.Y. 1998). In Netcom, the alleged substantial participation was the providing of Internet related services to the primary infringer which included the ability to control certain of the primary infringer’s activities and the allowance of infringing material on its system after notice of the infringement. Netcom, 1375. In Berstein v. J.C. Penney, Inc., 1998 U.S. Dist. LEXIS 19048, 50 U.S.P.Q.2d 1063, Copy. L. Rep. ¶ 27,824 (C.D. Cal. 1998) a claim was made that a site having a link to another site containing infringing material constituted contributory infringement. Defendants moved to dismiss arguing, inter alia, that (a) internet users viewing infringing material on line is not infringement and (b) linking does not constitute substantial participation in any infringement. The Court summarily dismissed plaintiffs’ claim. In the case at bar, these defendants did not have a link on their web site to the other web sites where the infringing material is allegedly posted. If providing a link is not substantial participation, then merely providing a URL is not culpable aid and participation rising to the level of contributory infringement. Web Site Operators as Primary Infringers Plaintiff contends that the owners or operators of the three (3) web sites are the primary infringers to whom these defendants may have given aid. If the web site operators are the primary infringers, their infringing act is that of posting (i.e., reproducing) the material.[8] Supra. These defendants were not involved in any way in the posting of the copyrighted material on the three (3) URL’s. Uncontroverted affidavits establish that these defendants are not responsible for, have no connection with and have no control over the web sites that currently contain the Handbook. These defendants are not responsible for posting information on the web sites.[9] 2nd Aff. of Sandra Tanner, ¶ 8; 1st Aff. of Jerald Tanner, ¶ 8. These defendant have not acted in concert with any one nor have they encouraged any one to post, reproduce or distribute the Handbook nor portions thereof. 2nd Aff. of Sandra Tanner, ¶ 9; 1st Aff. of Jerald Tanner, ¶ 9. These defendants have done nothing that aided the primary infringers in posting -- their alleged illegitimate activity; thus, these defendants are not contributory infringers. Nimmer on Copyright, § 12.04[A][2], p. 1273 (1995). Users as Primary Infringers Plaintiff may be contending that Internet users that browse the web and visit the three (3) web sites are the primary infringers to whom these defendants may contribute. By posting the URL’s these defendants may have aided web surfers, browsers, users and people looking for information about the Handbook. By posting URL’s, these defendants have given information to people[10]; that is not an infringing act. That some one provides to another a URL does nothing more than create the possibility that the second person may visit that site and a possibility that a person may download material from that site.[11] Visiting a web site that may contain infringing material is fair use and thus not a copyright violation. See Religious Technology Center v. Netcom On-Line Communication Services, 907 F.Supp. 1361, 1378 n.25 (N.D. Cal. 1995). One does not violate copyright law by reading a copyrighted book in a bookstore. A person that listens to an infringing performance of a copyrighted musical work does not violate copyright law. One does not violate copyright law by looking at copyrighted material posted without permission on an Internet site. Netcom, id. Merely encouraging visits to such a web site is not aiding in any infringing act. Downloading May Be Infringement Downloading infringing material from a web site may be an act of infringement. However, providing a person a URL to a site from which a person may download infringing material does not constitute substantial aid to the infringing act. There is no suggestion that these defendants have substantially aided anyone in the actual downloading of material from an offending web site. When asked by a stranger on the street for the location of the nearest photocopying shop, might an answer constitute contributory infringement? That stranger may have in hand copyrighted material and may have in mind copyright infringement. No reported case or authority suggests that providing such an address constitutes contributory infringement. The analysis should not change even if the party providing the address knows that infringement (i.e., unauthorized copying) may occur. Providing an address is not the material substantial aid to an infringing act contemplated by Gershwin and its progeny. In the case at bar, possible infringement by a user/viewer turned down loader is remote from any conduct of these defendants. Having merely provided some one an address is not substantial aid in the infringing conduct (i.e., unauthorized copying or downloading). That such acts of infringement occur or have occurred is speculative in this case. Establishing a sufficient causal connection between defendants providing a URL and the downloading will be difficult, if not impossible. “Substantial” and “material” aid by defendants in an act of downloading has not been alleged and defendants suggest has not occurred. Until down loading is proven, no basis exists for a claim of primary much less contributory infringement. Once an actual down loader is found, an examination can occur as to what actual aid, if any, these defendants contributed to the actual infringing act (i.e., down loading) by that primary infringer. Providing a URL is a passive act. Providing a URL in this case was not done in concert with the myriad unknown users or browsers. A contributory infringer can not act in concert with unknown persons who may engage or who may have engaged in primary infringement. Providing a URL is not the substantial material act in aid of an infringing act sufficient to establish contributory infringement. CONCLUSION & RELIEF Contributory infringement requires action in concert beyond reciting an Internet address, a URL where infringing material may be found. Independent passive non-participatory conduct does not rise to the level of “inducing, causing or materially contributing to the infringing conduct of another.” These defendants have not engaged in conduct amounting to contributory infringement. This Court should so find and declare. This Court should deny plaintiff’s request for a preliminary injunction requiring defendant to “remove and keep off defendants’ website . . . all Internet addresses and other references or materials that guide others to the location of unauthorized copies.” Reply Memo, p. 8 This Court should lift the modified Temporary Restraining Order which temporarily provided similar relief to plaintiff. Order, 11/10/1999, p. 4, Doc. # 19. Lacking subject matter jurisdiction over this action and with a complaint that fails to state a cause of action upon which relief may be granted (Doc. # ____; dated 11/12/1999), this Court should lift and dissolve both the initial (Doc. # 10) and modified Temporary Restraining Orders. Doc. # 19. Dated this 15TH day of NOVEMBER 1999. UTAH LEGAL CLINIC By ______________________________ BRIAN M. BARNARD
CERTIFICATE OF SERVICE I hereby certify that I caused to be hand delivered a true and correct copy of the foregoing REPLY MEMORANDUM RE: LACK OF CONTRIBUTORY INFRINGEMENT to: TODD E. ZENGER on the 15TH day of NOVEMBER 1999. UTAH LEGAL CLINIC By _______________________ EXHIBITS Exhibit “T” Article from The Salt Lake Tribune, 10/30/1999 Exhibit “TT” Article from The Salt Lake Tribune, 11/11/1999 Exhibit “X” Three Pages from Australian Web Site Exhibit “Y” Two Pages from Church Handbook of Instruction, Book 1 Footnotes [1] Interestingly, plaintiff accuses defendants of having “advertised the [Australian] website owner’s infringing copy through statements in the Salt Lake Tribune” published on October 30, 1999. Reply Memo, p. 7. Uncontroverted affidavits of Sandra and Jerald Tanner establish that neither of them gave that URL to the Tribune. 2nd Aff. of Sandra Tanner, ¶ 8; 1st Aff. of Jerald Tanner, ¶ 8. [2] The Salt Lake Tribune engaged in the same conduct of which these defendants stand accused. The Salt Lake Tribune in a news article, (10/30/1999) published the URL’s of two (2) web sites and stated that the Handbook could be found on those sites. Exhibit “T” attached. In contrast to the case at bar, plaintiff announced that it would take no action against The Salt Lake Tribune. Exhibit “TT” attached. [3] Plaintiff repeatedly uses the words “advertise;” “helped and helps,” “expressly tells the work where to go to get a copy;” and “assists.” Reply Memo, pp. 4-5. [4] It is not clear from the Reply Memo, who plaintiff considers to be the primary infringer: the web site owners and operators or the unknown members of the public that may visit the offending sites. As discussed infra neither speculative visits to an Internet site by unknown persons nor speculative downloading by unknown persons can constitute the primary infringement required to establish contributory infringement. [5] In Fonovisa there was evidence that the swap meet owner’s actions had aided the sale of the bootleg records, in part, by attracting customers. In the case at bar, there is no suggestion that defendants’ posting of the URL’s directly and materially aided the primary actors’ infringing actions, that is, posting the copyrighted material. [6] These defendants believe that to be true, but do not know that as fact. [7] One of the offending web sites is in Australia. United States copyright law has no extraterritorial application. Nimmer on Copyright, § 12.04[A][3][b], p. 1285 (1995). Manifold questions exist as to whether the posting of materials protected by United States copyright on an Internet site in Australia is a violation of United States copyright law. Id. Posting on the Australian web site may well not be primary infringement for which this court could find another party liable as a contributory infringer. [8] The web site operator’s infringing act is not distribution. Distribution from the web site occurs upon the act of down loading accomplished by a user. [9] The operator of the Australian web site that has posted the Handbook specifically announces that he has had no contact whatsoever with the Tanners. Exhibit “X” attached, three pages downloaded and dated 11/14/1999. [10] Just like The Salt Lake Tribune has done by printing a story containing the URL’s and just like the Deseret News has done by printing a story saying the Handbook is available on the Internet but not including the URL’s. [11] There is some indication that after The Salt Lake Tribune published the Australian URL on October 30th many people visited that site. In contrast, there is no evidence that defendants’ posting of the URL’s on or after November 2nd caused visits by users or any downloading. |
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