Judge Enjoins Contributory Infringement by Web Site

(December 13, 1999) U.S. District Court Judge Tena Campbell issued a preliminary injunction against several critics of the Mormon church on December 6. The order prevents them from publishing in their web site material from a copyrighted church handbook; it also prevents them from publishing information about other infringing web sites.

The preliminary injunction order was issued in the lawsuit, Intellectual Reserve v. Utah Lighthouse Ministries, in federal court in Salt Lake City, Utah.

The lawsuit pertains to the Church of Jesus Christ of Latter-day Saints' Church Handbook of Instructions. A Salt Lake City corporation name Intellectual Reserve, Inc. (IRI) owns the copyright and other intellectual property of the Mormon Church, so it is the plaintiff in the suit.

The defendants are Jerald and Sandra Tanner, two persistent critics of the Mormon Church, and the Utah Lighthouse Ministries, Inc. (ULM), a corporation in which they are principals. The defendants published material from the Handbook in the ULM web site. IRI claims a copyright on the Handbook.

IRI filed its complaint in U.S. District Court in Salt Lake City on October 13 alleging two counts: copyright infringement and violation of copyright management information

The Court issued a temporary restraining order on October 18 stopping the defendants from publishing material from the Handbook. However, the defendants then used their web site to inform readers about other web sites which were infringing IRI's copyright on the Handbook. They also provided the URLs of those other web sites, and encouraged readers to visit those other web sites. IRI responded that this constitutes contributory infringement.

Judge Campbell agreed, and issued a preliminary injunction which not only barred direct infringement, but also included the following bar on contributory infringement:

"Defendants, their agents and those under their control, shall remove from and not post on defendants' website, addresses to websites that defendants know, or have reason to know, contain the material alleged to infringe plaintiff's copyright."

The doctrine of contributory infringement is nothing new. Courts have long applied it in the context of infringement in other media. However, this is a new issue in the context of the world wide web, where hyperlinking provides a new way to assist, promote and/or benefit from the infringement of others.

The Court wrote that while "the copyright statute does not expressly impose liability for contributory infringement, '[t]he absence of such express language in the copyright statute does not preclude the imposition of liability for copyright infringements on certain parties who have not themselves engaged in the infringing activity. For vicarious liability is imposed in virtually all areas of the law, and the concept of contributory infringement is merely a species of the broader problem of identifying the circumstances in which it is just to hold one accountable for the actions of another.' " (The Court quoted from Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 435 (1984).)

The Court continued that "Liability for contributory infringement is imposed when " 'one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.' " (The Court quoted from Gershwin Publ'g Corp. v. Columbia Artists Mgt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).)

The Court then analyzed whether the defendants had violated these principles of contributory infringement. The Court concluded easily that the other web sites had also infringed IRI's copyright on the Handbook. However, the Court rejected the argument that the defendants could be held vicariously liable for the infringement by these other web sites because,

"there is no direct relationship between the defendants and the people who operate the three websites. The defendants did not provide the website operators with the plaintiff's copyrighted material, nor are the defendants receiving any kind of compensation from them."

Instead, the Court found vicariously liability for the infringement by web surfers. That is, when web users visited other web sites with copies of the Handbook, they were violating IRI's copyright. Technically, they made copies while browsing. The Court wrote:

"When a person browses a website, and by so doing displays the Handbook, a copy of the Handbook is made in the computer's random access memory (RAM), to permit viewing of the material. and in making a copy, even a temporary one, the person who browsed infringes the copyright."

The defendants contributed to the acts of infringement by web users by posting information on its web site:

"After being ordered to remove the Handbook from their website, defendants posted on their website: "Church Handbook of Instruction is back online!" and listed the three website addresses."

The preliminary injunction will remain in effect until trial, unless set aside. No trial date has been set yet. However, the defendants have also filed a Motion to Dismiss on the grounds that the Handbook in question is not a copyrighted work. The court will hold a hearing on that issue on January 4.

There is another novel aspect to this case. In addition to pleading copyright infringement, which is a very common claim, the plaintiff also plead violation of copyright management information claim. This is based on a new provision which was enacted into law in October 1998 as part of the Digital Millennium Copyright Act. It is codified at 17 U.S.C. 1202. It makes removing, altering, or providing false, copyright notices a separate offense.