William Rehnquist's Legacy in Technology Law

September 6, 2005. The Supreme Court's record in leading technology related cases is different from its record on many other issues, such as abortion, race, and religion, that now animate the debate over judicial nominees. The Court has decided many of its technology related cases with unanimous, or nearly unanimous, opinions. Moreover, when the Court has been divided, the division has not followed ideological or partisan lines.

Rehnquist, as Chief Justice since 1986, has had the opportunity to assign the task of writing the opinion of the Court in those cases in which he is in the majority. He has rarely assigned technology related opinions to himself. And when he has dissented, he has rarely written an opinion. Hence, his record in technology related cases has largely been that of joining in the opinions written by others.

There are, however, a few leading cases in which he wrote notable opinions. In Bartnicki v. Vopper (2001) he wrote a dissent in which he advocated privacy in electronic communications. In US v. American Library Association (2003) he wrote the opinion of the Court upholding the Children's Internet Protection Act, which requires libraries receiving federal funds to use filtering technology. In Seminole Tribe v. Florida and Florida Prepaid he wrote that the Congress cannot abrogate state sovereign immunity, including in suits for infringement of intellectual property rights.

Privacy of Electronic Communications. On May 21, 2001, the Court issued its opinion in Bartnicki v. Vopper, 532 U.S. 514, holding that a radio host cannot be sued under 18 U.S.C. § 2511 for playing an audio recording of a cellular telephone conversation, despite a federal statute that made illegal both the interception of the conversation, and its disclosure.

The majority reasoned that the case pitted statutes banning disclosure of illegally obtained electronic communications against the First Amendment freedom of speech claims of persons with illegally obtained recordings to disclose them if their content pertains to a public issue. Rehnquist wrote a dissent.

He wrote that "Technology now permits millions of important and confidential conversations to occur through a vast system of electronic networks. These advances, however, raise significant privacy concerns. We are placed in the uncomfortable position of not knowing who might have access to our personal and business e-mails, our medical and financial records, or our cordless and cellular telephone conversations. In an attempt to prevent some of the most egregious violations of privacy, the United States, the District of Columbia, and 40 States have enacted laws prohibiting the intentional interception and knowing disclosure of electronic communications. The Court holds that all of these statutes violate the First Amendment insofar as the illegally intercepted conversation touches upon a matter of ``public concern,´´ an amorphous concept that the Court does not even attempt to define. But the Court's decision diminishes, rather than enhances, the purposes of the First Amendment: chilling the speech of the millions of Americans who rely upon electronic technology to communicate each day."

See also, story titled "Supreme Court Diminishes Electronic Privacy" in TLJ Daily E-Mail Alert No. 192, May 22, 2001.

Internet Filtering. Rehnquist wrote the 2003 opinion of the Court in US v. American Library Association, upholding the constitutionality of the Children's Internet Protection Act (CIPA) [20 pages in PDF], which provides that for libraries to receive federal subsidies or grants, they must use internet filtering technologies. See, opinion [56 pages in PDF] of June 23, 2003.

The CIPA statute, which was enacted by the 106th Congress, requires schools and libraries receiving e-rate subsidies, pursuant to a Federal Communications Commission (FCC) program loosely based on 47 U.S.C. § 254(h)(1)(B), and libraries receiving grants under the Library Services and Technology Act (20 U.S.C. § 9101 et seq.), as a condition for receiving subsidies or grants, to use filtering technologies on computers with internet access that are used by children, and to filter images that constitute obscenity or child pornography.

A three judge panel of the U.S. District Court (EDPa) held the statute unconstitutional as a violation of the First Amendment. It held that filtering software is a content based restriction on access to a public forum, and is therefore subject to the strict scrutiny test -- that is, it must be necessary to achieve a compelling governmental interest, and be narrowly tailored to further that interest. The District Court held that the federal government has a compelling interest in preventing the dissemination of obscenity, child pormography, or, in the case of minors, material harmful to minors. However, it found that mandating the use of filters is not narrowly tailored to further those interests.

The Supreme Court reversed. Justices wrote several opinions. No one opinion was joined by a majority of the Court. However, six Justices joined in opinions stating that the CIPA is constitutional. Rehnquist wrote an opinion that was joined by Justices O'Connor, Scalia and Thomas. In addition, Justice Kennedy wrote an opinion, that was joined by Justice Breyer, that concurred as to the judgment of constitutionality, but offered a different analysis.

Rehnquist first reviewed the nature of internet access and filtering software. He wrote "there is also an enormous amount of pornography on the Internet, much of which is easily obtained. ... The accessibility of this material has created serious problems for libraries, which have found that patrons of all ages, including minors, regularly search for online pormography. ... Some patrons also expose others to pornographic images by leaving them displayed on Internet terminals or printed at library printers. ... Upon discovering these problems, Congress became concerned that the E-rate and LSTA programs were facilitating access to illegal and harmful pornography."

"But Congress also learned that filtering software that blocks access to pornographic Web sites could provide a reasonably effective way to prevent such uses of library resources", wrote Rehnquist.

He also acknowledged that "But a filter set to block pormography may sometimes block other sites that present neither obscene nor pormographic material, but that nevertheless trigger the filter."

Rehnquist then analyzed the function fulfilled by public libraries, and concluded that, in the context of internet access, public libraries are not "public forums" within the meaning of constitutional analysis.

He wrote that "The public forum principles on which the District Court relied ... are out of place in the context of this case. Internet access in public libraries is neither a ``traditional´´ nor a ``designated´´ public forum."

He reasoned that "A public library does not acquire Internet terminals in order to create a public forum for Web publishers to express themselves, any more than it collects books in order to provide a public forum for the authors of books to speak. It provides Internet access, not to ``encourage a diversity of views from private speakers,´´ ... but for the same reasons it offers other library resources: to facilitate research, learning, and recreational pursuits by furnishing materials of requisite and appropriate quality."

See also, story titled "Supreme Court Upholds Children's Internet Protection Act" in TLJ Daily E-Mail Alert No. 686, June 24, 2003.

State Immunity in IPR Cases. Rehnquist wrote the opinion of the Court in Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1996). This case involves the Indian Gaming Regulatory Act and the Indian Commerce clause of the constitution. He wrote that the Congress lacks authority under Article I of the Constitution to abrogate the states' 11th Amendment immunity from suit in federal courts. However, its holding regarding the abrogation of state sovereign immunity serves as the precedent for similar cases involving intellectual property. This was a 5-4 opinion.

Then, Rehnquist wrote the opinion for the Court in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999), invalidating the Patent and Plant Variety Protection Remedy Clarification Act. This too was a 5-4 opinion.

At the same time, the Court issued its opinion in College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 527 U.S. 666 (1999), invalidating the Trademark Remedy Clarification Act. Scalia wrote this 5-4 opinion. Rehnquist joined.

As a result of these cases, states can hold intellectual property, and enforce their intellectual property rights in federal court. At the same same, states are in effect free to steal the intellectual property of others, without fear of a money judgments against them. Some states infringe intellectual property rights, hide behind 11th Amendment immunity, and lobby their Senators to block legislation that would remedy this situation.

For more on legislative efforts to address this situation, see stories titled "Legislators Introduce Bills to Address Infringement by States" in TLJ Daily E-Mail Alert No. 302, November 6, 2001; "Sen. Leahy Reintroduces Bill to Close 11th Amendment Loophole to IPR" in TLJ Daily E-Mail Alert No. 394, March 22, 2002; "Senate Judiciary Committee Considers Federalism and Intellectual Property" in TLJ Daily E-Mail Alert No. 522, October 3, 2002; and "Legislators Re-Introduce Bills to Address State IPR Sovereign Immunity" in TLJ Daily E-Mail Alert No. 680, June 13, 2003.

Rehnquist wrote two of the three opinions that created this situation. He joined in the third. In addition, O'Connor, who has just retired, was a member of the five justice majority in all three cases. Hence, there now remain on the Court only three members of the original majority of five.

The Justice's commitment to the doctrine of stare decisis may be put to the test.

Computer Generated Images. On April 16, 2002, the Court issued its opinion [44 pages in PDF] in Ashcroft v. FSC, 535 US 234, a case involving a constitutional challenge to part of the Child Pormography Prevention Act of 1996 (CPPA). The Court ruled that provisions of the statute banning computer generated images depicting minors engaging in sezually explicit conduct is overbroad, and violates the First Amendment.

Rehnquist wrote a dissenting opinion, and joined in a partial dissent written by O'Connor. See also, story titled "Supreme Court Upholds Speech Rights of Child Pormographers" in TLJ Daily E-Mail Alert No. 412, April 17, 2002. The Congress has since rewritten the statute at issue.

He wrote that "The aim of ensuring the enforceability of our Nation’s child pormography laws is a compelling one. The CPPA is targeted to this aim by extending the definition of child pormography to reach computer-generated images that are virtually indistinguishable from real children engaged in sezually explicit conduct. The statute need not be read to do any more than precisely this, which is not offensive to the First Amendment."

The following is a selection of technology related cases in which Rehnquist joined in the opinions of others, but wrote no opinion himself.

Communications Act Cases

Section 251 Regulation. On January 27, 1999, the Court issued its opinion in AT&T v. Iowa Utilities Board, 525 US 366. Scalia wrote the opinion of the Court. Rehnquist joined in most of this opinion. Thomas wrote an opinion, concurring in part and dissenting in part. Rehnquist also joined in the Thomas opinion.

FCC Price Regulation. On May 13, 2002, the Court issued its 5-3 opinion in Verizon v. FCC, 535 U.S. 467, upholding the FCC's rules regarding how incumbent local exchange carriers (ILECs) charge interexchange carriers (IXCs) and competitors local exchange carriers (CLECs) for access to their facilities; it reversed the U.S. Court of Appeals (8thCir). Souter wrote the opinion of the Court, in which Rehnquist joined. See also, story titled "Supreme Court Upholds FCC Pricing Rules" in TLJ Daily E-Mail Alert No. 431, May 14, 2002.

Antitrust and Telecom. On January 13, 2004, the Court issued its opinion [PDF] in Verizon v. Trinko, 124 S. Ct. 8782, holding that a claim alleging a breach of an ILEC's duty under the 1996 Telecom Act to share its network with competitors does not state a violation of Section 2 of the Sherman Act. Scalia wrote the opinion of the Court, in which Rehnquist joined. See also, story titled "Supreme Court Holds That There is No Sherman Act Claim in Verizon v. Trinko" in TLJ Daily E-Mail Alert No. 815, January 14, 2004.

State Statutes that Bar Local Governments from Providing Telecom Services. On March 24, 2004, the Court issued its opinion [PDF] in Nixon v. Missouri Municipal League, a case regarding 47 U.S.C. § 253(a) and state statutes that prohibit political subdivisions from offering telecommunications services. Souter wrote the opinion of the Court, in which Rehnquist joined. Missouri passed a state statute that bans local governments in Missouri from offering telecommunications services. The local governments, represented by the Missouri Municipal League, want the Federal Communications Commission (FCC) to preempt this statute, under Section 253, which provides that states cannot ban "any entity" from providing telecommunications services. It has always been clear that Section 253 means that states cannot bar any company from providing telecommunications services. The question is, does Section 253 also include local governments. The FCC said no. The 8th Circuit said yes. The Supreme Court said no. Of course, this does not mean that states must bar local governments from providing telecommunications services. This opinion only stands for the proposition that states may bar local governments from providing telecommunications services. See also, story titled "Supreme Court Reverses in Nixon v. Missouri" in TLJ Daily E-Mail Alert No. 864, March 26, 2004.

Cell Towers. On March 22, 2005, the Court issued its opinion [22 pages in PDF] in Rancho Palos Verdes v. Abrams holding that an individual who brings an action to enforce the limitations on state and local authority to regulate the location, construction, and modification of wireless communications facilities under 47 U.S.C. § 332, cannot also recover damages under 42 U.S.C. § 1983. Scalia wrote the opinion of the majority, in which Rehnquist joined. See also, story titled "Supreme Court Holds That Individuals Who Sue Under §332 Cannot Also Recover Damages Under §1983" in TLJ Daily E-Mail Alert No. 1,101, March 23, 2005.

Broadband Internet Services. On June 27, 2005, the Court issued its opinion [59 pages in PDF] in NCTA v. Brand X, upholding the FCC's determination that cable broadband internet access service is an information service. Thomas wrote the opinion of the Court, in which Rehnquist joined. See also, story titled "Supreme Court Rules in Brand X Case" in TLJ Daily E-Mail Alert No. 1,163, June 28, 2005.

Copyright Cases

Sony. In 1984 the Court issued its 5-4 opinion in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417. Stevens wrote the opinion for the majority. Former Justice Blackmun wrote the dissent, in which Rehnquist joined. In Sony, which is also know as the Betamax case, the Court held that Sony was not vicariously liable for infringement by Betamax users because the Betamax was capable of commercially significant noninfringing uses, because consumers used it for time shifting, which is a fair use.

Fair Use and Copying of Unpublished Works. On May 20, 1985, the Court issued its 6-3 opinion in Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985). O'Connor wrote the opinion of the Court, in which Rehnquist joined. The Court held that the unpublished state of a work of authorship may defeat the affirmative defense of fair use.

Database Protection. On March 27, 1991, the Court issued its opinion in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340. O'Connor wrote the opinion of the Court, in which Rehnquist joined. The Court held that collections of data, such as electronic databases, are generally not subject to copyright protection.

Fair Use and Parody. On March 17, 1994, the Court issued its unanimous opinion in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1984). This was the dispute involving the hideous and commercial parody of Roy Obison's classic titled "Oh, Pretty Woman". The Court reversed the Court of Appeals, which had held that the defense of fair use was barred by the song's commercial character and excessive borrowing. Souter wrote the opinion of the Court, in which Rehnquist joined.

Copyright Term Extension Act. On January 15, 2003 the Court issued its 7-2 opinion [89 pages in PDF] in Eldred v. Ashcroft, 123 S.Ct. 769, upholding the constitutionality of the Copyright Term Extension Act, which retroactively extended the maximum duration of copyrights. Ginsburg wrote the opinion of the Court, in which Rehnquist joined. See also, story titled "Supreme Court Upholds CTEA in Eldred v. Ashcroft" in TLJ Daily E-Mail Alert No. 584, January 16, 2003.

Distribution of P2P Systems. On June 27, 2005, the Court issued its unanimous opinion [55 pages in PDF] in MGM v. Grokster, reversing the judgment of the U.S. Court of Appeals (9thCir) regarding vicarious copyright infringement by the distributors of peer to peer (P2P) systems. The Supreme Court held that "one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties." Souter wrote the opinion, in which Rehnquist joined. See also, story titled "Supreme Court Rules in MGM v. Grokster" and story titled "Reaction to the Supreme Court's Opinion in MGM v. Grokster", both in TLJ Daily E-Mail Alert No. 1,163, June 28, 2005.

Trademark Cases

Reverse Passing Off. On June 2, 2003, the Court issued its 8-0 opinion [18 pages in PDF] in Dastar v. Twentieth Century Fox, Scalia wrote the opinion of the Court, in which Rehnquist joined. The defendant copied a work whose copyright had expired, and failed to attribute its origin. The plaintiff alleged that its work of authorship was copied (which can be actionable under the Copyright Act), but instead proceeded on the legal theory of violation of the Lanham Act's false designation of origin provision. Passing off occurs when a producer misrepresents his own goods or services as someone else's. Reverse passing off occurs when a producer misrepresents someone else's goods or services as his own. Both can be actionable under the Lanham Act, which makes actionable not only the misleading use of marks, but also the false designation of origin of goods. The lower courts ruled for the producer. The Supreme Court reversed. It held that this is not the purpose of the Lanham Act. Moreover, allowing this sort of use of the Lanham Act would have the impermissible effect of creating perpetual quasi patents and copyrights. See also, story titled "Supreme Court Reverses in Dastar v. Fox" in TLJ Daily E-Mail Alert No. 672, June 3, 2003.

Patent Cases

Doctrine of Equivalents. On May 28, 2002, the Court issued its unanimous opinion in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722. The Court again affirmed the doctrine of equivalents, articulated its purpose, held that the narrowing of a patent claim may give rise to prosecution history estoppel (but that it does not absolutely bar application of the doctrine of equivalents), and listed circumstances under which it might or might not operate as a bar. Kennedy wrote the opinion of the Court, in which Justice Rehnquist joined. See also, story titled "Supreme Court Reverses in Festo Case" in TLJ Daily E-Mail Alert No.439, May 29, 2002.

Privacy Cases

Privacy and Thermal Imaging. On June 11, 2001, the Court issued its 5-4 opinion in Kyllo v. U.S., 533 U.S. 27, holding that the thermal imaging of a home to detect lamps used for growing marijuana constitutes a search within the meaning of the Fourth Amendment. The Supreme Court further held that such searches are unreasonable under the Fourth Amendment unless supported by probable cause and authorized by a warrant. Scalia wrote the opinion of the Court. Stevens wrote a dissent, in which Rehnquist joined.

E-Commerce Cases

Internet Wine Sales. On May 16, 2005, the Court issued its 5-4 opinion [73 pages in PDF] in Granholm v. Heald, and consolidated cases, holding that Michigan's and New York's regulatory schemes that permit in-state wineries directly to ship alcohol to consumers, but restrict the ability of out-of-state wineries to do so, violate the dormant commerce clause. Rehnquist joined in the dissent written by Thomas. Although, this dissent was based upon application of the 21st Amendment, which gives the states broad authority to regulate alcohol sales. Thus, this dissent does not bear on commerce clause challenges to state protectionist statutes that discriminate against internet based commerce that do not involve alcohol. See also, story titled "Supreme Court Rules in Internet Wine Sales Case" in TLJ Daily E-Mail Alert No. 1,137, May 17, 2005.

Internet Smut Cases

Communications Decency Act. On June 26, 1997, the Court issued its opinion in Reno v. ACLU, 521 US 845, holding that the Communications Decency Act (CDA) is unconstitutional under the First Amendment. Stevens wrote the opinion of the Court, in which all but Rehnquist and O'Connor joined. O'Connor wrote an opinion concurring in part and dissenting in part, in which Rehnquist joined.

COPA. On June 29, 2004, the Court issued its 5-4 opinion [41 pages in PDF] in Ashcroft v. ACLU, a constitutional challenge to the Child Online Protection Act (COPA). The District Court issued a preliminary injunction of the COPA. The U.S. Court of Appeals (3rdCir) affirmed. The Supreme Court affirmed the issuance of the preliminary injunction, and remanded. Kennedy wrote the opinion of the Court. Breyer wrote a dissent in which Rehnquist joined. See also, story titled "Supreme Court Affirms Preliminary Injunction of COPA" in TLJ Daily E-Mail Alert No. 928, June 29, 2004.