Contributory Infringement
Case Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc.
United States District Court for
the District of Utah, Central Division
decided December 6, 1999
ORDER
This matter is before the court
on plaintiff’s motion for preliminary injunction. Plaintiff claims that unless
a preliminary injunction issues, defendants will directly infringe and
contribute to the infringement of its copyright in the Church Handbook of
Instructions ("Handbook"). Defendants do not oppose a preliminary
injunction, but argue that the scope of the injunction should be restricted to
only prohibit direct infringement of plaintiff’s copyright.
Having fully considered the
arguments of counsel, the submissions of the parties and applicable legal
authorities, the court grants plaintiff’s motion for a preliminary injunction.
However, the scope of the preliminary injunction is limited.
Discussion
The United States Copyright Act
allows a court to "grant temporary and final injunctions on such terms as
it may deem reasonable to prevent or restrain infringement of a copyright."
17 U.S.C. § 502(a). Here, in determining whether plaintiff is now entitled
to the injunctive relief, the following factors are to be considered:
(1) substantial likelihood
that the movant will eventually prevail on the merits; (2) a showing that
the movant will suffer irreparable injury unless the injunction issues; (3) proof
that the threatened injury to the movant outweighs whatever damage the proposed
injunction may cause the opposing party; and (4) a showing that the
injunction, if issued, would not be adverse to the public interest. Equifax
Servs., Inc. v. Hitz, 905 F.2d 1355, 1360 (10th Cir. 1990) (quoting Lundgrin v.
Claytor, 619 F.2d 61, 63 (10th Cir. 1980)).
I. Likelihood
of Plaintiff Prevailing on the Merits
First, the court considers
whether there is a substantial likelihood that plaintiff will eventually prevail
on the merits. Plaintiff alleges that the defendants infringed its copyright
directly by posting substantial portions of its copyrighted material on
defendants’ website, and also contributed to infringement of its copyright by
inducing, causing or materially contributing to the infringing conduct of
another. To determine the proper scope of the preliminary injunction, the court
considers the likelihood that plaintiff will prevail on either or both of its
claims.
A. Direct
Infringement
To prevail on its claim of
direct copyright infringement, "plaintiff must establish both: (1) that it
possesses a valid copyright and (2) that defendants copied’ protectable
elements of the copyrighted work." Country Kids ‘ N City Slicks, Inc. v.
Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996). Defendants initially conceded in a
hearing, for purposes of the temporary restraining order and preliminary
injunction, that plaintiff has a valid copyright in the Handbook, and that
defendants directly infringed plaintiff’s copyright by posting substantial
portions of the copyrighted material.(1) Defendants changed
their position, in a motion to dismiss, claiming that plaintiff has failed to
allege facts necessary to show ownership of a valid copyright. Despite the
defendants’ newly-raised argument, the court finds, for purpose of this motion,
that the plaintiff owns a valid copyright on the material defendants posted on
their website. Plaintiff has provided evidence of a copyright registration
certificate, (see Verified Compl., Ex. A), and the certificate "constitutes
prima facie evidence of the validity of the copyright."(2)
Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 831 (10th Cir. 1993).
Defendants have not advanced any additional affirmative defenses to the claim of
direct infringement. Therefore, the court finds that there is a substantial
likelihood that plaintiff will prevail on its claim of direct infringement.
B.
Contributory Infringement
According to plaintiff, after
the defendants were ordered to remove the Handbook from their website, the
defendants began infringing plaintiff’s copyright by inducing, causing, or
materially contributing to the infringing conduct of others. It is undisputed
that defendants placed a notice on their website that the Handbook was online,
and gave three website addresses of websites containing the material defendants
were ordered to remove from their website. Defendants also posted e-mails on
their website that encouraged browsing (3) those websites,
printing copies of the Handbook and sending the Handbook to others.
Although the copyright statute
does not expressly impose liability for contributory infringement, the 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.
Sony Corp. v. Universal City
Studios, Inc., 464 U.S. 417, 435, 78 L. Ed. 2d 574, 104 S. Ct. 774 (1984) (footnote
omitted). Even though "the lines between direct infringement, contributory
infringement and vicarious liability are not clearly drawn" distinctions
can be made between them. Id. at n.17 (quoting Universal City Studios, Inc. v.
Sony Corp., 480 F. Supp. 429, 457-58 (C.D. Cal. 1979)). Vicarious liability is
grounded in the tort concept of respondeat superior, and contributory
infringement is founded in the tort concept of enterprise liability. See
Demetriades v. Kaufmann, 690 F. Supp. 289, 292 (S.D.N.Y. 1988). "Benefit
and control are the signposts of vicarious liability, [whereas] knowledge and
participation [are] the touchstones of contributory infringement." Id. at
293.
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." Gershwin Publ’g Corp. v. Columbia Artists Mgt., Inc., 443 F.2d
1159, 1162 (2d Cir. 1971). Thus, to prevail on its claim of contributory
infringement, plaintiff must first be able to establish that the conduct
defendants allegedly aided or encouraged could amount to infringement. See
Subafilms, Ltd. v. MGM-Pathe Comms. Co., 24 F.3d 1088, 1092 (9th Cir. 1994).
Defendants argue that they have not contributed to copyright infringement by
those who posted the Handbook on websites nor by those who browsed the websites
on their computers.
1. Can the
Defendants Be Liable Under a Theory of Contributory Infringement for the Actions
of Those Who Posted the Handbook on the Three Websites?
a. Did those
who posted the Handbook on the websites infringe plaintiff’s copyright?
During a hearing on the motion
to vacate the temporary restraining order, defendants accepted plaintiff’s
proffer that the three websites contain the material which plaintiff alleges is
copyrighted.(4) Therefore, plaintiff at trial is likely to
establish that those who have posted the material on the three websites are
directly infringing plaintiff’s copyright.
b. Did the
defendants induce, cause or materially contribute to the infringement?
The evidence now before the
court indicates that 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. The only connection
between the defendants and those who operate the three websites appears to be
the information defendants have posted on their website concerning the
infringing sites. Based on this scant evidence, the court concludes that
plaintiff has not shown that defendants contributed to the infringing action of
those who operate the infringing websites.
2. Can the
Defendants Be Liable Under a Theory of Contributory Infringement for the Actions
of Those Who Browse the Three Infringing Websites?
Defendants make two arguments in
support of their position that the activities of those who browse the three
websites do not make them liable under a theory of contributory infringement.
First, defendants contend that those who browse the infringing websites are not
themselves infringing plaintiff’s copyright; and second, even if those who
browse the websites are infringers, defendants have not materially contributed
to the infringing conduct.
a. Do those
who browse the websites infringe plaintiff’s copyright?
The first question, then, is
whether those who browse any of the three infringing websites are infringing
plaintiff’s copyright. Central to this inquiry is whether the persons browsing
are merely viewing the Handbook (which is not a copyright infringement), or
whether they are making a copy of the Handbook (which is a copyright
infringement). See 17 U.S.C. § 106.
"Copy" is defined in
the Copyright Act as: "material objects . . . in which a
work is fixed by any method now known or later developed, and from which the
work can be perceived, reproduced, or otherwise communicated, either directly or
with the aid of a machine or device." 17 U.S.C. § 101. "A work
is fixed . . . when its . . . .sufficiently
permanent or stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration." Id.
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.(5) See MAI Systems Corp. v. Peak Computer, Inc.,
991 F.2d 511, 518 (9th Cir. 1993) (holding that when material is transferred to
a computer’s RAM, copying has occurred; in the absence of ownership of the
copyright or express permission by licence, such an act constitutes copyright
infringement); Marobie-Fl., Inc. v. National Ass’n of Fire Equip. Distrib.,
983 F. Supp. 1167, 1179 (N.D. Ill. 1997) (noting that liability for copyright
infringement is with the persons who cause the display or distribution of the
infringing material onto their computer); see also Nimmer on Copyright § 8.08(A)(1)
(stating that the infringing act of copying may occur from "loading the
copyrighted material . . . .into the computer’s random access
memory (RAM)"). Additionally, a person making a printout or re-posting a
copy of the Handbook on another website would infringe plaintiff’s copyright.
b. Did the
defendants induce, cause or materially contribute to the infringement?
The court now considers whether
the defendants’ actions contributed to the infringement of plaintiff’s
copyright by those who browse the three websites.
The following evidence
establishes that defendants have actively encouraged the infringement of
plaintiff’s copyright.(6) After being ordered to remove the
Handbook from their website, defendants posted on their website: "Church
Handbook of Instructions is back online!" and listed the three website
addresses. (See Pl.’s Reply Supp. Mot. Prelim. Inj., Ex. 1; Memo. Re:
Contributory Infringement, at 9 n.6.) Defendants also posted e-mail suggesting
that the lawsuit against defendants would be affected by people logging onto one
of the websites and downloading the complete handbook. (See id., Ex. 2.) One of
the e-mails posted by the defendants mentioned sending a copy of the copyrighted
material to the media. (See id.) In response to an e-mail stating that the
sender had unsuccessfully tried to browse a website that contained the Handbook,
defendants gave further instruction on how to browse the material. (See id.) At
least one of the three websites encourages the copying and posting of copies of
the allegedly infringing material on ether websites. (See id., Ex. 4 ("Please
mirror these files . . . It will be a LOT quicker for you to
download the compressed version . . . Needless to say, we need a
LOT of mirror sites, as absolutely soon as possible."))
Based on the above, the court
finds that the first element necessary for injunctive relief is satisfied.
II.
Irreparable Injury
Because this is a copyright
infringement case and plaintiff has demonstrated a likelihood of success on the
merits, there is a presumption of injury. See Country Kids ‘ N City Slicks,
Inc. v. Sheen, 77 F.3d 1280, 1288-89 (10th Cir. 1996). In addition, plaintiff
will suffer additional immediate and real irreparable harm if defendants are
permitted to post the copyrighted material or to knowingly induce, cause or
materially contribute to the infringement of plaintiff’s copyright by others.
III. Harm to
Defendants
Defendants argue that their
First Amendment rights will be infringed by a preliminary injunction. However,
the First Amendment does not give defendants the right to infringe on legally
recognized rights under the copyright law. See Cable/Home Comm. Corp. v. Network
Productions, Inc., 902 F.2d 829, 849 (11th Cir. 1990). "Copyright interests
[] must be guarded under the Constitution, and injunctive relief is a common
judicial response to infringement of a valid copyright." Id. The court, in
fashioning the scope of injunctive relief, is aware of and will protect the
defendants’ First Amendment rights.
IV. The Public
Interest
Finally, it is in the public’s
interest to protect the copyright laws and the interests of copyright holders.
Order
Therefore, for the reasons
stated, the court orders the following preliminary injunction:
1. Defendants, their agents and
those under their control, shall remove from and not post on defendants’
website the material alleged to infringe plaintiff’s copyright;
2. Defendants, their agents and
those under their control, shall not reproduce or distribute verbatim, in a
tangible medium, material alleged to infringe plaintiff’s copyright;
3. 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;
Defendants have not requested
that a security be obtained from plaintiff. If defendants consider a security to
be appropriate in this case, defendants shall file a motion and memorandum
within twenty days from this date. Plaintiff shall then have fifteen days after
service to respond. A reply memorandum may be filed by defendants within seven
days after service.
IT IS SO ORDERED this 6th day of
December, 1999.
BY THE COURT:
TENA CAMPBELL
United States District Judge
FOOTNOTES:
1. By so doing,
defendants did not admit fault or liability. (See Consent to Extension of
Temporary Order and Response, at 1.)
2. This issue will be
fully explored when the court decides the motion to dismiss.
3. The term browse, as
used in this order, means to call up or open a website onto a computer screen.
4. Defendants also
have stated that they believe the three websites contain the material which
plaintiff alleges is copyrighted. (See Memo. Re: Contributory Infringement, at 9
n.6.)
5. Although this seems
harsh, the Copyright Act has provided a safeguard for innocent infringers. Where
the infringer "was not aware and had no reason to believe that his or her
acts constituted an infringement of copyright, the court in its discretion may
reduce the award of statutory damages . . . " 17 U.S.C.
§ 504(c)(2).
6. Plaintiff at this
point has been unable to specifically identify persons who have infringed its
copyright because they were induced or assisted by defendants’ conduct,
however, there is a substantial likelihood that plaintiff will be able to do so
after conducting discovery. There is evidence that at least one of the websites
has seen a great increase in "hits" recently. (See Pl.’s Reply Supp.
Mot. Prelim. Inj., Ex. 5.) Also, plaintiff does not have to establish that the
defendants’ actions are the sole cause of another’s infringement; rather
plaintiff may prevail by establishing that defendants’ conduct induces or
materially contributes to the infringing conduct of another.
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