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The date on the word process copy is December 22. This would appear to be a typographical error. Todd E. Zenger (#5238) IN THE UNITED STATES DISTRICT COURT
Plaintiff, Intellectual Reserve, Inc., submits these points and authorities in reply to defendants’ opposition to plaintiff’s motion for preliminary injunction and in particular, in reply to defendants’ brief addressing contributory infringement. As established below, defendants’ proven intent and desire to continue to contributorily infringe demands that the Court adopt its Order of November 19, 1999 as a preliminary injunction in this matter.
A party is liable for contributory infringement when it, "with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another." Gershwin Publishing Corp. v. Columbia Artists Mgmt., 443 F.2d 1159, 1162 (2d Cir. 1971). Five years later in 1976, the Copyright Act was amended and the legislative history expressly states that "infringement" under 17 U.S.C. § 501 includes "liability of contributory infringers." H.R. Rep. No. 94-1476, 94th Congress. After the 1976 amendment to the copyright statute, every regional Circuit Court of Appeals which has addressed contributory infringement, including the 2nd, 3rd, 5th, 6th, 7th, 9th and 11th Circuits, has adopted the Gershwin standard. E.g., Matthew Bender & Co. v. West Publishing, 158 F.3d 693, 706 (2nd Cir. 1998) ("A party who has knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be held liable as a contributory infringer."(citing Gershwin 443 F.2d at 1162)); Columbia Pictures, Indus. v. Reddhorn, Inc., 749 F.2d 154, 160 (3d Cir. 1984)("it is well settled that ‘one who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be held liable as a contributory infringer.’"); AlCatel USA, Inc. v. DGI Technologies, 166 F.3d 772, 790 (5th Cir. 1999)("A party is liable for contributory infringement when it, ‘with knowledge of infringing activity, induces, causes or materially contributes to infringing conduct of another.’" (citing Gershwin 443 F.2d at 1162)); Liberty Toy Co. v. Make Believe Toy Co., 1998 U.S. App. LEXIS 14866, Note 5 (6th Cir. 1998) ("One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable, as a contributory infringer. . . The potential liability is predicated upon the common law doctrine that one who knowingly participates or furthers the tortious act is jointly and severally liable with the prime tort feasor." (citing Gershwin 443 F.2d at 1162)); Midway Mfg. Co. v. Arctic Int’l, 704 F.2d. 1009, 1013 (7th Cir. 1983)(A defendant may be a contributory infringer by selling an unauthorized derivative work); (citing Gershwin 443 F.2d at 1162)); Fonovisa, Inc. v. Cherry Auction , Inc., 76 F.3d 259, 264 (9th Cir. 1996) ("The classic statement of the doctrine is . . . ‘one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a "contributory" infringer.’"); Cable/Home Communication Corp. v. Network Productions, Inc., 902 F.2d 829, 845 (11th Cir. 1990) ("This court has stated the well-settled test for a contributory infringer as ‘one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.’"). In those regional circuits where the appellate courts have not addressed the issue, district courts have adopted the same majority rule. E.g., Polygram Int’l v. Nevada/TIG, 855 F. Supp. 1314, 1333 (D. Mass 1994)(1st Cir. district court)("The acknowledged standard for imposing contributory liability was articulated by the Second Circuit in Gershwin . . . ‘One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a contributory" infringer.’"); Aitken, Hazen, Hoffman v. Empire Const. Co., 542 F. Supp. 252, 261 (D. Neb. 1982)(8th Cir. district court) ("[O]ne who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory infringer.’"). Contributory infringement embraces two forms of activities, namely, (i) personal conduct that encourages or assists the infringement; and (ii) providing machinery or goods which facilitate the infringement. Matthew Bender & Co. v. West Publishing, 158 F.3d 693, 706 (2nd Cir. 1998). This is a case in which defendants provide to otherwise unknowledgeable persons all knowledge and information tools necessary to make unauthorized, infringing copies of the subject work.
Defendants argue others may contributorily infringe by posting at web sites unauthorized copies and that unless the defendants assist others in posting unauthorized copies they do not participate in assisting the infringement of others. For example, defendants cite "Gershwin and its progeny" as requiring substantial aid and assistance to the primary infringers who have provided or posted unauthorized copies at other web sites. In other words, defendants argue that they did not bring about the posting or electronic copies by other web site owners, therefore, they are not contributory infringers. The United States Supreme Court has rejected this type of mere "quantitative" analysis. Fortnightly Corp. v. United Artists Television, 392 U.S. 393, 396, 88 S. Ct. 2084, 2087-88 (1968)("quantitative contribution cannot be the proper test to determine copyright liability in the context of television broadcasting"). Instead, the Court required examining the nature of the copyrighted work and the context of the alleged infringement to determine "the function that [the defendant] plays in the total process." Id. Defendants ignore the nature of the electronic copies of this case. Defendants ignore the nature of the unpublished Handbook. Defendants ignore how they have assisted third parties to make additional electronic copies. Instead, defendants argue facts and circumstances not relevant to the context of known unauthorized electronic reproduction of known unauthorized electronic versions of the copyrighted work. For example, defendants argue the need for ongoing relationships, control of direct infringers, deriving substantial monetary benefit, actively participating in the chain of distribution, pervasive participation in the formation and direction of the acts of the direct infringer, etc., to effect infringement. While this may be true in the context of Gershwin public performances, and of Screen Gems and Fonovisa manufacture, sale and distribution of bootleg phono records, these quantitative acts are wholly unnecessary functions needed to effect copyright infringement of an unpublished work in an unauthorized electronic format. In this case, defendants make it possible for individuals to not only learn about previously unknown and unauthorized copies, but defendants have also provided and wish to continue to provide individuals all information needed to make additional electronic copies, even giving explicit instruction on how to do so. In the context of unauthorized reproduction on the Internet, the function that defendants play in the process of infringement induces, causes or materially contributes to infringement by others.
Already presented to the Court are actual examples of persons who with the assistance of the defendants have made or who have attempted to make copies of the Church Handbook of Instructions. That is, unauthorized copies have been made. In addition, persons who, using their computer, access the Handbook at Internet locations identified by the defendants also make unauthorized copies because when the Handbook is accessed at a website, an electronic copy is downloaded from the website into the memory of the computer. Downloading materials from a website is reproduction/copying of the material. MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 518 (9th Cir. 1993); Sega Enter. v. Maphia, 948 F. Supp. 923, 931 (N.D. CA. 1996). Indeed, the display on the screen used to review the copy is generated from the copy in the computer memory, not from the originating website. E.g., Ohio v. Perry, 41 U.S.P.Q.2d 1989, 1995 (Ohio Ct. App. 1997). In other words, individuals who access and view an infringing work on a computer make a copy onto and view the copy from their computer. The copy made into the computer stays in the memory of the computer until deleted. Furthermore, liability for copyright infringement can lie with persons who cause the display or distribution of the infringing material on computers. Marobie-Fl., Inc. v. National Ass’n of Fire Equip. Dist., 983 F. Supp. 1167, 1179 (N.D. Ill. 1997). In this case, the copying and display induced, caused or effected by defendants is without authorization from IRI.
Defendants proactively and substantively provide all information necessary to make unauthorized copies to individuals who, prior to their communications with the defendants, had no such information. This is not a case of persons coming to the defendants saying, "I have a copy, how could I make another copy?" This is a case in which the defendants tell persons (1) about the existence of unauthorized copies of which the individuals were not already aware; (2) the precise location of the unauthorized copies, which location the individuals did not previously know; (3) that the information is readily available and how to get the information; and (4) how to correctly access and copy the information when previous attempts have failed. This is a case about the defendants’ functioning to give people who don’t have the information, all the necessary information to infringe, and, as stated above, there are documented instances in which people have made such copies. In other words, defendants provide all necessary location tools[1] to effect infringement by persons who otherwise were unable to infringe but for the location tools provided by defendants. This illustrates that in the context of electronically reproducing documents already in electronic form, the relevant material information needed to infringe is knowledge as to where the information is and then accessing the site. Prior to the November 10, 1999 Temporary Restraining Order, defendants provided both types of material information which induced, caused or materially contributed to the infringement by others. Defendants have used a directory to Tribune articles, indices, and references which refer users to online locations containing infringing material. Defendants have provided express instruction on how to access sites which download unauthorized copies to the computer of the user at the click of a button. This is not a case of managing relationships to effect public performances where there are many events and steps leading up to a performance. This is not a case of manufacturing and distributing physical copies of records, tapes or videos. This is a case of being able to locate and access/copy unauthorized electronic images with a few easy and costless keystrokes provided by instructions from defendants.[2] The defendants provide all necessary information not previously had by the user, thereby effecting infringement by inducing, causing or materially contributing to the infringing act of another. That is, defendants effect infringement by merely having someone else press the computer keys. This constitutes contributory infringement.
There is also a litany of cases holding advertisers liable for advertising known unauthorized copies of copyrighted works. E.g., Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996) (swap meet organizer liable for contributory copyright infringement where such organizer had knowledge of infringing activity and provided support services including advertising, as well as provision of space, utilities, parking, plumbing, and customers); Cable/Home Communication Corp. v. Network Productions, Inc., 902 F.2d 829, 845-47 (11th Cir. 1990) (defendant's use of news program to promote various pirate chips as well as other infringing aids constituted obtrusive contributory infringement); Columbia Pictures Industry v. Redd Horne, Inc., 749 F.2d 154, 160-161 (3rd Cir. 1984) (affirming summary judgment for contributory infringement and permanent injunction against corporate defendant that advertised and promoted the known infringing company's renting video cassette viewing booths for unauthorized viewing of copyrighted films); Gershwin Publishing Corp. v. Columbia Artists Management, 443 F.2d 1159, 1160-63 (2nd Cir. 1971) (affirming summary judgment for contributory infringement and permanent injunction against promoter that advertised and promoted public performances for concerts in which performing artists infringed music copyrights); Nationwide Education Development Corp. v. Rex Communications, Inc., LEXIS 5331, pp.3-4 (S.D.N.Y. 1990) (potential liability of defendants who arranged for television and radio advertisements of a product defendant may have had reason to know was an infringing product). In this case, defendants have advertised: "Church Handbook of Instructions is back online!" Defendants have posted e-mail on their website that suggests that a person could "download the complete handbook" or send a copy to others. Reply Memo., Ex. 2. Defendants have provided and argued for the right to continue to provide detailed information about the existence and location of unauthorized copies, which once accessed permit copying at the touch of a button. Defendants have played a vital role advertising infringing copies and promoting copying by others. Defendants’ conduct clearly induced, caused or materially contributed to the infringing conduct of another.
Defendants have cited Religious Tech. Center v. Netcom On-line Comm. Serv., 907 F. Supp 1361 (N.C. CA. 1995) and Demetriades v. Kaufmann, 690 F. Supp. 289 (S.D.N.Y. 1988), in an attempt to excuse or justify their conduct. This is disingenuous. These cases dealt with defendants who were Internet service providers who merely provided equipment and services to facilitate infringement. Defendants in this case are not Internet service providers. Defendants also cite Berstein v. J.C. Penney, Inc., 1998 U.S. Dist. LEXIS 19048, 50 USPQ.2d 1063 (C.D. CA. 1998) suggesting that the court dismissed an action on motion for defendant because linking to an infringing website does not constitute substantial participation in any infringement. Defendants grossly mislead this Court regarding the four paragraph Berstein case. The Court provided no analysis whatsoever as suggested by defendants. A copy of Berstein is attached for the Court’s review. Exhibit 2 hereto.
Direct infringement occurs when unauthorized copies are made, even into the memory of computers. The defendants have not only done this themselves but advertise to and educate others as to every necessary step to do so by providing knowledge of the existence of unauthorized copies, the precise location of known infringing copies and all necessary information to access/copy the known infringing copies. Thereby, defendants are advertising and facilitating the virtually instantaneous and costless ‘click-on’ reproduction which occurs each time a user downloads an unauthorized electronic copy for viewing or use. In the context of reproduction of a heretofore unpublished and unauthorized electronic copy, it clearly establishes inducing, causing, or materially contributing to infringement. Therefore, the Court’s November 19, 1999 Temporary Restraining Order was and remains proper and should be adopted as the controlling preliminary injunction in this case. DATED this 22nd day of December, 1999. KIRTON & McCONKIE
By: ___________________ Todd E. Zenger, Esq. CERTIFICATE OF SERVICE I hereby certify that on this ___ day of _______, 1999, I caused a true and correct copy of the foregoing PLAINTIFF’S REPLY TO DEFENDANTS’ POINTS AND AUTHORITIES REGARDING CONTRIBUTORY INFRINGEMENT BY DEFENDANTS IN SUPPORT OF PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION to be both mailed through United States mail, postage prepaid, and transmitted via fax, to the following: Brian M. Barnard Footnotes [1] Potential liability for copyright infringement was contemplated by Congress when addressing e-commerce in the Digital Millennium Copyright Act. Infringement can occur when “a directory, index, reference, pointer, or hypertext link” is used for the purpose of “referring or linking users to an online location containing infringing material or infringing activity.” 17 U.S.C. § 512 (d). The House Committee Report No. 105-55 Part 2 expressly warns against referring to online locations “such as a list of recommended sites” and this “without regard to whether copyright infringement is technically deemed to have occurred at that location or at the location where the material is received.” Ex. 1 hereto (excerpts from the House Report), page 6 of 16. Indeed, “[t]he intended objective of this standard is to exclude from the safe harbor sophisticated ‘pirate’ directories–which refer Internet users to other selected Internet sites where pirate software, books, movies, and music can be downloaded or transmitted.” Id. at page 7 of 16. [2] "Information location tools are essential to the operation of the Internet; without them, users would not be able to find the information they need.” Id. at page 8 of 16. |
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