States District Court for the Southern District of New York
decided February 2, 2000
Leon P. Gold
William M. Hart
PROSAKUER ROSE LLP
Attorneys for Plaintiffs
Peter L. Katz
Robin D. Gross
Allonn E. Levy
HUBER & SAMUELSON PC
Attorneys for Defendants
LEWIS A. KAPLAN, District Judge.
This case is another step in the
evolution of the law of copyright occasioned by advances in technology.
Plaintiff motion picture studios brought this action to enjoin defendants from
providing a computer program on their Internet Web sites that permits users to
decrypt and copy plaintiffs' copyrighted motion pictures from digital versatile
disks ("DVDs''). They rely on the recently enacted Digital Millennium
Copyright Act ("DMCA'').1
On January 20, 2000, the Court
granted plaintiffs' motion for a preliminary
injunction and indicated [see hearing
transcript] that this opinion would follow.
Plaintiffs in this case are
eight major motion picture studios which are engaged in the business of
producing, manufacturing and/or distributing copyrighted and copyrightable
material, including motion pictures. Motion pictures usually are first released
for theatrical distribution and later to consumers in "home video'' formats
such as videotape, laserdisc and, most recently, DVD.
DVDs are five-inch wide discs
that, in this application, hold full-length motion pictures. They are the latest
technology for private home viewing of recorded motion pictures. This technology
drastically improves the clarity and overall quality of a motion picture shown
on a television or computer screen.
DVDs contain motion pictures in
digital form, which presents an enhanced risk of unauthorized reproduction and
distribution because digital copies made from DVDs do not degrade from
generation to generation. Concerned about this risk, motion picture companies,
including plaintiffs, insisted upon the development of an access control and
copy prevention system to inhibit the unauthorized reproduction and distribution
of motion pictures before they released films in the DVD format. The means now
in use, Content Scramble System or CSS, is an encryption-based security and
authentication system that requires the use of appropriately configured hardware
such as a DVD player or a computer DVD drive to decrypt, unscramble and play
back, but not copy, motion pictures on DVDs. CSS has been licensed to hundreds
of DVD player manufacturers and DVD content distributors in the United States
and around the world.
CSS has facilitated enormous
growth in the use of DVDs for the distribution of copyrighted movies to
consumers. DVD movies first were introduced in the United States in 1996. Over
4,000 motion pictures now have been released in that format in the United States,
and movies are being issued on DVDs at the rate of over 40 new titles per month
in addition to rereleases of classic films. More than 5 million DVD players have
been sold, and DVD disc sales now exceed one million units per week.
In October 1999, an individual
or group, believed to be in Europe, managed to "hack'' CSS2 and
began offering, via the Internet, a software utility called DeCSS that enables
users to break the CSS copy protection system and hence to make and distribute
digital copies of DVD movies.
The Motion Picture Association
of America ("MPAA'') almost immediately acted under the provisions of the
DMCA by demanding that Internet service providers remove DeCSS from their
servers and, where the identities of the individuals responsible were known,
that those individuals stop posting DeCSS. These efforts succeeded in removing a
considerable share of the known postings of DeCSS.
On December 29, 1999, the
licensor of CSS, DVD CCA, commenced a state court action in California for the
misappropriation of its trade secrets as embodied in the DeCSS software. On the
same day, the state court judge without explanation denied the plaintiff's
motion for a temporary restraining order.3 Members of the hacker
community then stepped up efforts to distribute DeCSS to the widest possible
audience in an apparent attempt to preclude effective judicial relief. One
individual even announced a contest with prizes (copies of DVDs) for the
greatest number of copies of DeCSS distributed, for the most elegant
distribution method, and for the "lowest tech'' method.
Defendants each are associated
with Web sites that were distributing DeCSS at the time plaintiffs moved for
injunctive relief. Internet registry information indicates that defendant Shawn
Reimerdes owns and is the administrative, technical and billing contact for a
Web site bearing the domain name dvd-copy.com. Defendant Roman Kazan is listed
as the technical contact for krackdown.com and the technical, administrative and
zone contact for escape.com, which are registered to Krackdown and Kazan
Corporation, respectively. Defendant Eric Corley, a/k/a Emmanuel Goldstein, is
similarly listed for a Web site with the domain name 2600.com, registered to
2600 Magazine. None of the defendants submitted any evidence in opposition to
the motion, and the Court in all the circumstances infers that each personally
has been involved in providing and distributing DeCSS over the Internet via
these Web sites.
In order to obtain a preliminary
injunction, the movant must show "(a) irreparable harm, and (b) either (1)
a likelihood of success on the merits, or (2) sufficiently serious questions
going to the merits to make them fair grounds for litigation and a balance of
hardships tipping decidedly in its favor.''4
The requirement of immediate and
irreparable injury is satisfied in this case. Copyright infringement is presumed
to give rise to such harm.5 In this case, plaintiffs do not allege
that defendants have infringed their copyrights, but rather that defendants
offer technology that circumvents their copyright protection system and thus
facilitates infringement. For purposes of the irreparable injury inquiry, this
is a distinction without a difference. If plaintiffs are correct on the merits,
they face substantially the same immediate and irreparable injury from
defendants' posting of DeCSS as they would if defendants were infringing
directly. Moreover, just as in the case of direct copyright infringement, the
extent of the harm plaintiffs will suffer as a result of defendants' alleged
activities cannot readily be measured, suggesting that the injury truly would be
Plaintiffs' sole claim is for
violation of the anti-circumvention provisions of the DMCA. They contend that
plaintiffs' posting of DeCSS violates Section 1201(a)(2) of the statute, which
prohibits unauthorized offering of products that circumvent technological
measures that effectively control access to copyrighted works. Defendants
respond that (1) they have been named improperly as defendants, (2) the posting
of DeCSS falls within one of the DMCA exceptions and is not illegal under the
statute, (3) application of the DMCA to prohibit posting of DeCSS violates
defendants' First Amendment rights, and (4) a preliminary injunction would
constitute an unlawful prior restraint on protected speech.
Defendants Are Properly Named
Defendants contend that
plaintiffs' claim against all three defendants must be dismissed because
defendants are not the owners of the Web sites containing the offending material
and therefore are not the "real parties in interest.'' They rely on Rule 17
of the Federal Rules of Civil Procedure.7
In relevant part, Federal Rule
17 states that "[e]very action shall be prosecuted in the name of the real
party in interest.''8 This rule does not apply to defendants, as they
are not prosecuting this action. Further, whether defendants own the Web sites
at issue is not dispositive of anything. Plaintiffs claim that defendants'
conduct violates the DMCA. If plaintiffs make such a showing, they will win on
the merits. If they fail, defendants will be absolved of liability. As
defendants have failed to submit affidavits or other materials indicating that
they had nothing to do with the offending Web sites, the Court infers from the
evidence before it, for the purpose of this motion, that they are responsible
for the content of the sites. Of course, plaintiffs will bear the burden of
proof on this issue at trial.9
Section 1201(a)(2) of the
Copyright Act, part of the DMCA, provides that:
"No person shall . . .
offer to the public, provide or otherwise traffic in any technology . . .
"(A) is primarily
designed or produced for the purpose of circumventing a technological measure
that effectively controls access to a work protected under [the Copyright Act];
"(B) has only limited
commercially significant purpose or use other than to circumvent a
technological measure that effectively controls access to a work protected
under [the Copyright Act]; or
"(C) is marketed by that
person or another acting in concert with that person with that person's
knowledge for use in circumventing a technological measure that effectively
controls access to a work protected under [the Copyright Act].''10
technological measure'' is defined to mean descrambling a scrambled work,
decrypting an encrypted work, or "otherwise to avoid, bypass, remove,
deactivate, or impair a technological measure, without the authority of the
copyright owner.''11 The statute explains further that "a
technological measure `effectively controls access to a work' if the measure, in
the ordinary course of its operation, requires the application of information or
a process or a treatment, with the authority of the copyright owner, to gain
access to a work.''12
Here, it is perfectly clear that
CSS is a technological measure that effectively controls access to plaintiffs'
copyrighted movies because it requires the application of information or a
process, with the authority of the copyright owner, to gain access to those
works. Indeed, defendants conceded in their memorandum that one cannot in the
ordinary course gain access to the copyrighted works on plaintiffs' DVDs without
a "player key'' issued by the DVDCCA that permits unscrambling the contents
of the disks.13 It is undisputed also that DeCSS defeats CSS and
decrypts copyrighted works without the authority of the copyright owners. As
there is no evidence of any commercially significant purpose of DeCSS other than
circumvention of CSS, defendants' actions likely violated Section 1201(a)(2)(B).
Moreover, although defendants contended at oral argument that DeCSS was not
designed primarily to circumvent CSS, that argument is exceptionally
unpersuasive.14 In consequence, plaintiffs have an extremely high
likelihood of prevailing on the merits unless defendants' activities come within
one of the exceptions in the DMCA or unless there is a constitutional impediment
to this conclusion.
Defendants contend that their
activities come within several exceptions contained in the DMCA and the
Copyright Act and constitute fair use under the Copyright Act. They are unlikely
to prevail on any of these contentions.
Defendant Roman Kazan alone
argues that his conduct falls under Section 512(c) of the Copyright Act,15
which provides limited protection from liability for copyright infringement by
certain service providers for information resident on a system or network owned
or controlled by them.16 This argument fails for several reasons.
First, Mr. Kazan offered no
proof that he is a service provider within the meaning of Section 512(c).17
But that point ultimately is unnecessary to the result.
Section 512(c) provides
protection only from liability for copyright infringement.18
Plaintiffs seek to hold defendants liable not for copyright infringement, but
for a violation of Section 1201(a)(2), which applies only to circumvention
products and technologies. Section 512(c) thus does not apply here.
Defendants claim also to fall
under Section 1201(f) of the statute, which provides that, notwithstanding
"a person who has
lawfully obtained the right to use a copy of a computer program may circumvent
a technological measure that effectively controls access to a particular
portion of that program for the sole purpose of identifying and analyzing
those elements of the program that are necessary to achieve interoperability
of an independently created computer program with other programs . . . to the
extent that any such acts of identification and analysis do not constitute
infringement under this title.''19
They contend that DeCSS is
necessary to achieve interoperability between computers running on the Linux
system and DVDs and that this exception therefore is satisfied.20
This contention fails for three reasons.
First, defendants have offered
no evidence to support this assertion.
Second, even assuming that DeCSS
runs under Linux, it concededly runs under Windows---a far more widely used
operating system---as well. It therefore cannot reasonably be said that DeCSS
was developed "for the sole purpose'' of achieving interoperability between
Linux and DVDs.
Finally, and most important, the
legislative history makes it abundantly clear that Section 1201(f) permits
reverse engineering of copyrighted computer programs only and does not authorize
circumvention of technological systems that control access to other copyrighted
works, such as movies.21 In consequence, the reverse engineering
exception does not apply.
Section 1201(g) provides in
relevant part that:
provisions of subsection (a)(2), it is not a violation of that subsection for
a person to---
"(A) develop and employ
technological means to circumvent a technological measure for the sole purpose
of that person performing the acts of good faith encryption research described
in paragraph (2); and
"(B) provide the
technological means to another person with whom he or she is working
collaboratively for the purpose of conducting the acts of good faith
encryption research described in paragraph (2) or for the purpose of having
that other person verify his or her acts of good faith encryption research
described in paragraph (2).''22
Paragraph (2) in relevant part
permits circumvention of technological measures in the course of good faith
encryption research if:
"(A) the person lawfully
obtained the encrypted copy, phonorecord, performance, or display of the
"(B) such act is
necessary to conduct such encryption research;
"(C) the person made a
good faith effort to obtain authorization before the circumvention; and
"(D) such act does not
constitute infringement under this title . . . .''23
In determining whether one is
engaged in good faith encryption research, the Court is instructed to consider
factors including whether the results of the putative encryption research are
disseminated in a manner designed to advance the state of knowledge of
encryption technology versus facilitation of copyright infringement, whether the
person in question is engaged in legitimate study of or work in encryption, and
whether the results of the research are communicated in a timely fashion to the
There has been a complete
failure of proof by defendants on all of these factors. There is no evidence
that any of them is engaged in encryption research, let alone good faith
encryption research. It appears that DeCSS is being distributed in a manner
specifically intended to facilitate copyright infringement. There is no evidence
that defendants have made any effort to provide the results of the DeCSS effort
to the copyright owners. Surely there is no suggestion that any of them made a
good faith effort to obtain authorization from the copyright owners. Accordingly,
plaintiffs are likely to prevail in their contention that defendants' activities
are not protected by Section 1201(g).
Defendants contend also that
their actions should be considered exempt security testing under Section 1201(j)
of the statute.25 This exception, however, is limited to "assessing
a computer, computer system, or computer network, solely for the purpose of good
faith testing, investigating, or correcting [of a] security flaw or
vulnerability, with the authorization of the owner or operator of such computer
system or computer network.''26
The record does not indicate
that DeCSS has anything to do with testing computers, computer systems, or
computer networks. Certainly defendants sought, and plaintiffs' granted, no
authorization for defendants' activities. This exception therefore has no
bearing in this case.
e. Fair use
Finally, defendants claim that
they are engaged in a fair use under Section 107 of the Copyright Act.27
They are mistaken.
Section 107 of the Act provides
in critical part that certain uses of copyrighted works that otherwise would be
wrongful are "not . . . infringement[s] of copyright.''28
Defendants, however, are not here sued for copyright infringement. They are sued
for offering to the public and providing technology primarily designed to
circumvent technological measures that control access to copyrighted works and
otherwise violating Section 1201(a)(2) of the Act. If Congress had meant the
fair use defense to apply to such actions, it would have said so.
Constitutionality of DMCA
Defendants contend that the
DeCSS computer program is protected speech and that the DMCA, at least insofar
as it purports to prohibit the dissemination of DeCSS to the public, violates
the First Amendment.
As a preliminary matter, it is
far from clear that DeCSS is speech protected by the First Amendment. In
material respects, it is merely a set of instructions that controls computers.29
Courts that have considered the question whether program code is
constitutionally protected expression have divided on the point.30
Nevertheless, this Court assumes for purposes of this motion, although it does
not decide, that even the executable code is sufficiently expressive to merit
some constitutional protection. That, however, is only the beginning of the
Constitutionality of the DMCA
As some commentators have said,
"Copyright law restricts speech: it restricts you from writing, painting,
publicly performing, or otherwise communicating what you please.''31
And though it might conceivably be argued that the First Amendment, which was
adopted after the ratification of the Constitution itself, trumped the Copyright
Clause and forbids all restraint or punishment of copyright infringement,32
this argument has been rejected by the Supreme Court, which views the Bill of
Rights and the original Constitution as a single instrument and has made it
unmistakably clear that the First Amendment does not shield copyright
infringement.33 Indeed, copyright is an "engine of free
expression'' because it "supplies the economic incentive to create and
disseminate ideas.''34 To the extent there is any tension between
free speech and protection of copyright, the Court has found it to be
accommodated fully by traditional fair use doctrine,35 with
expression prohibited by the Copyright Act and not within the fair use exception
considered unprotected by the First Amendment.36
The conclusion that copyright
infringement may be proscribed consistently with the First Amendment does not
end the inquiry, however. This case concerns the DMCA rather than the older
aspects of the Copyright Act. The DMCA sweeps more broadly by prohibiting
production and dissemination of technology that can circumvent measures taken to
protect copyright, not merely infringement of copyright itself. It is a
prophylactic measure. In consequence, further First Amendment analysis of the
DMCA is warranted. Nevertheless, the DMCA appears to be a legitimate exercise of
The Copyright Clause empowers
Congress "[t]o promote the Progress of Science and useful Arts, by securing
for limited Times to Authors . . . the exclusive Right to their respective
Writings . . . .''37 The Necessary and Proper Clause further provides
that Congress may "make all Laws which shall be necessary and proper for
carrying into Execution the foregoing Powers . . . .''38 Hence, the
Necessary and Proper Clause grants Congress the power to do that which is
necessary and proper to prevent others from publishing protected writings for
the duration of the copyright.
The scope of Congress' power
under the Necessary and Proper Clause is broad. As Chief Justice Marshall wrote
in McCulloch v. Maryland,39 "Let the end be legitimate, let it
be within the scope of the Constitution, and all means which are appropriate,
which are plainly adapted to that end, which are not prohibited but consistent
with the letter and spirit of the constitution, are constitutional.''40
Moreover, the Supreme Court has made clear that Congress should be accorded
substantial deference in determining how best to protect copyright in an age of
rapid technological change.41
In enacting the DMCA, Congress
found that the restriction of technologies for the circumvention of
technological means of protecting copyrighted works "facilitate[s] the
robust development and world-wide expansion of electronic commerce,
communications, research, development, and education'' by "mak[ing] digital
networks safe places to disseminate and exploit copyrighted materials.''42
That view can not be dismissed as unreasonable. Section 1201(a)(2) of the DMCA
therefore is a proper exercise of Congress' power under the Necessary and Proper
This conclusion might well
dispose of defendants' First Amendment challenge. Given Congress' justifiable
view that the DMCA is instrumental in carrying out the objective of the
Copyright Clause, there arguably is no First Amendment objection to prohibiting
the dissemination of means for circumventing technological methods for
controlling access to copyrighted works. But the Court need not rest on this
In determining the
constitutionality of governmental restriction on speech, courts traditionally
have balanced the public interest in the restriction against the public interest
in the kind of speech at issue.43 This approach seeks to determine,
in light of the goals of the First Amendment, how much protection the speech at
issue merits. It then examines the underlying rationale for the challenged
regulation and assesses how best to accommodate the relative weights of the
interests in free speech interest and the regulation.44
As Justice Brandeis wrote,
freedom of speech is important both as a means to achieve a democratic society
and as an end in itself.45 Further, it discourages social violence by
permitting people to seek redress of their grievances through meaningful,
non-violent expression.46 These goals have been articulated often and
consistently in the case law.
The computer code at issue in
this case does little to serve these goals. Although this Court has assumed that
DeCSS has at least some expressive content, the expressive aspect appears to be
minimal when compared to its functional component.47 Computer code
primarily is a set of instructions which, when read by the computer, cause it to
function in a particular way, in this case, to render intelligible a data file
on a DVD. It arguably "is best treated as a virtual machine . . . .''48
On the other side of this
balance lie the interests served by the DMCA. Copyright protection exists to
"encourage individual effort by personal gain''49 and thereby
"advance public welfare''50 through the "promot[ion of] the
Progress of Science and useful Arts.''51 The DMCA plainly was
designed with these goals in mind. It is a tool to protect copyright in the
digital age. It responds to the risks of technological circumvention of access
controlling mechanisms designed to protect copyrighted works distributed in
digital form. It is designed to further precisely the goals articulated above,
goals of unquestionably high social value.
This is quite clear in the
specific context of this case. Plaintiffs are eight major motion picture studios
which together are largely responsible for the development of the American film
industry. Their products reach hundreds of millions of viewers internationally
and doubtless are responsible for a substantial portion of the revenue in the
international film industry each year. To doubt the contribution of plaintiffs
to the progress of the arts would be absurd. DVDs are the newest way to
distribute motion pictures to the home market, and their popularity is growing
rapidly. The security of DVD technology is central to the continued distribution
of motion pictures in this format. The dissemination and use of circumvention
technologies such as DeCSS would permit anyone to make flawless copies of DVDs
at little expense.52 Without effective limits on these technologies,
copyright protection in the contents of DVDs would become meaningless and the
continued marketing of DVDs impractical. This obviously would discourage
artistic progress and undermine the goals of copyright.
The balance between these two
interests is clear. Executable computer code of the type at issue in this case
does little to further traditional First Amendment interests. The DMCA, in
contrast, fits squarely within the goals of copyright, both generally and as
applied to DeCSS. In consequence, the balance of interests in this case falls
decidedly on the side of plaintiffs and the DMCA.
Distribution of DeCSS as Part of a Course of Conduct in Violation of Law
Application of the DMCA to
prohibit posting of DeCSS appears constitutional also because that posting is
part of a course of conduct the clear purpose of which is the violation of law.
This line of reasoning first was
articulated by the Supreme Court in Giboney v. Empire Storage & Ice Co.,53
where the Court upheld an injunction against peaceful picketing by union members
despite the contention that the picketers were attempting only to publicize
truthful facts about a labor dispute. Although labor picketing traditionally
enjoys First Amendment protection, the Court declined to extend such protection
in Giboney on the ground that the picketing was integral to a course of conduct
in violation of a valid criminal statute prohibiting restraint of trade.54
The Court warned that, as a general matter, the government "cannot
consistently with our Constitution abridge [First Amendment] freedoms to obviate
slight inconveniences or annoyances,''55 but found that where the
allegedly protected speech is "used as an essential and inseparable part of
a grave offense against an important public law,'' it shall not be "immunize[d]
. . . from state control.''56 The Court held further that "it
has never been deemed an abridgement of freedom of speech or press to make a
course of conduct illegal merely because the conduct was in part initiated,
evidenced, or carried out by means of language, either spoken, written or
printed.''57 This principle has been applied in both criminal and
non-criminal contexts as long as the offense in question is defined by a valid
statutory scheme promoting an important public interest.58
As has been discussed already,
it no longer is open to doubt that the First Amendment does not shield copyright
infringement. The fundamental purpose of DeCSS is to circumvent the
technological means, CSS, that ensures that the exclusive rights of the holders
of copyright in DVD movies---including importantly the exclusive right to make
copies---are protected against infringement. Even assuming that some would use
DeCSS only to view copyrighted motion pictures which they lawfully possessed,
and thus arguably not infringe plaintiffs' copyrights, the record clearly
demonstrates that the chief focus of those promoting the dissemination of DeCSS
is to permit widespread copying and dissemination of unauthorized copies of
copyrighted works. The dissemination of DeCSS therefore is the critical
component of a course of conduct, the principal object of which is copyright
infringement. That DeCSS arguably is expressive to some degree does not alter
that reality. In light of Giboney and its progeny, defendants cannot latch onto
the expressive aspect in order to shield a key aspect of a chain of events, the
main purpose of which is unlawful. Application of the DMCA to prohibit
production and dissemination of DeCSS therefore does not violate the First
Defendants contend summarily
that the DMCA is "vague on its face and as applied.''59 It is
settled in this circuit that a party who "engages in some conduct that is
clearly proscribed [by the challenged statute] cannot complain of the vagueness
of the law as applied to the conduct of others.''60 The record in
this case strongly supports the contention that defendants' conduct fits
comfortably within the statute. In consequence, defendants' claim of vagueness
Defendants allege that the DMCA
is overbroad in that it "unquestionably attaches sanctions to protected
conduct'' and exerts clear "chilling effects'' by restricting dissemination
of protected computer code, limiting the rights of users to receive this code,
and curtailing the rights of all Linux users to decrypt DVDs.61
In order to challenge a statute
on overbreadth grounds, a party first must show that the enactment reaches a
"substantial amount of constitutionally protected conduct.'' 62 Defendants
have not done so here. The claim of overbreadth therefore fails.
Few phrases are as firmly rooted
in our constitutional jurisprudence as the maxim that "[a]ny system of
prior restraints of expression comes to [a] Court bearing a heavy presumption
against its constitutional validity.''63 Yet there is a significant
gap between the rhetoric and the reality. Courts often have upheld restrictions
on expression that many would describe as prior restraints,64
sometimes by characterizing the expression as unprotected65 and on
other occasions finding the restraint justified despite its presumed invalidity.66
Moreover, the prior restraint doctrine, which has expanded far beyond the
Blackstonian model67 that doubtless informed the understanding of the
Framers of the First Amendment,68 has been criticized as filled with
"doctrinal ambiguities and inconsistencies result[ing] from the absence of
any detailed judicial analysis of [its] true rationale''69 and, in
one case, even as "fundamentally unintelligible.''70
Nevertheless, the doctrine has a well established core: administrative
preclearance requirements for and preliminary injunctions against speech as
conventionally understood are presumptively unconstitutional. Yet that
proposition does not dispose of this case.
The classic prior restraint
cases were dramatically different from this one. Near v. Minnesota71
involved a state procedure for abating scandalous and defamatory newspapers as
public nuisances. New York Times Co. v. United States72 dealt with an
attempt to enjoin a newspaper from publishing an internal government history of
the Vietnam War. Nebraska Press Association v. Stuart73 concerned a
court order barring the reporting of certain details about a forthcoming murder
case. In each case, therefore, the government sought to suppress speech at the
very heart of First Amendment concern---expression about public issues of the
sort that is indispensable to self government. And while the prior restraint
doctrine has been applied well beyond the sphere of political expression, we
deal here with something new altogether---computer code, a fundamentally
utilitarian construct even assuming it embodies some expressive element. Hence,
it would be a mistake simply to permit its assumed expressive element to drive a
characterization of the code as speech no different from the Pentagon Papers,
the publication of a newspaper, or the exhibition of a motion picture and then
to apply prior restraint rhetoric without a more nuanced consideration of the
In this case, the considerations
supporting an injunction barring the posting of DeCSS pending a trial on the
merits are very substantial indeed. Copyright and, more broadly, intellectual
property piracy are endemic, as Congress repeatedly has found.74 The
interest served by prohibiting means that facilitate such piracy---the
protection of the monopoly granted to copyright owners by the Copyright Act---is
of constitutional dimension. There is little room for doubting that broad
dissemination of DeCSS would seriously injure or destroy plaintiffs' ability to
distribute their copyrighted products on DVDs and, for that matter, undermine
their ability to sell their products to the "home video'' market in other
forms. The potential damages probably are incalculable, and these defendants
surely would be in no position to compensate plaintiffs for them if plaintiffs
were remitted only to post hoc damage suits.
On the other side of the coin,
the First Amendment interests served by the dissemination of DeCSS prior to a
trial on the merits are minimal. The fact that there may be some expressive
content in the code should not obscure the fact that its predominant character
is no more expressive than an automobile ignition key---it is simply a means,
electronic in one case and mechanical in the other, of causing the machine with
which it is used to function in a particular way. Hence, those of the
traditional rationales for the prior restraint doctrine that relate to
inhibiting the transmission and receipt of ideas are of attenuated relevance
here, even assuming that skilled programmers might learn something about
encryption from studying the DeCSS code. Indeed, even academic commentators who
take the extreme position that most preliminary injunctions in intellectual
property cases are unconstitutional prior restraints concede that there is no
First Amendment obstacle to preliminary injunctions barring distribution of
copyrighted computer object code or restraining the construction of a new
building based on copyrighted architectural drawings because the functional
aspects of these types of information are "sufficiently nonexpressive.''75
To be sure, there is much to be
said in most circumstances for the usual procedural rationale for the prior
restraint doctrine: prior restraints carry with them the risk of erroneously
suppressing expression that could not constitutionally be punished after
publication.76 In this context, however, that concern is not fully
persuasive, both because the enjoined expressive element is minimal and because
of the procedural context of the case. This injunction was issued only on a
finding, after an adversarial proceeding, that plaintiffs have a very strong
likelihood of ultimate success on the merits.77 The Court offered
(and defendants thus far have declined) a virtually immediate trial on the
merits, thus ensuring that the duration of the restraint prior to a final
determination will be as brief as defendants wish.78 Hence, even
assuming that preliminary injunctions that affect expression even incidentally
to the regulation of other action should be granted only on the clearest showing
after an adversary hearing and where the party enjoined may promptly obtain a
final determination on the merits, those requirements have been satisfied here.
Accordingly, the Court holds
that the prior restraint doctrine does not require denial of the preliminary
injunction in this case.79
For the foregoing reasons, the
Court granted plaintiffs' motion for a preliminary injunction and entered such
an order on January 20, 2000. The foregoing, together with those made on the
record on that date, constitute the Court's findings of fact and conclusions of
Dated: February 2, 2000
1. 17 U.S.C. § 1201 et seq.
2. Recent reports indicate that Norwegian police
have arrested an individual said first to have hacked CSS. See Mike Godwin, Teen
Co-Creator of DVD Decryption Program Arrested at Norwegian Home, E-COMMERCE
LAW WEEKLY, Feb. 2, 2000.
3. The same court reportedly granted the
plaintiff's motion for a preliminary injunction following the decision in this
4. Richard Feiner & Co. v. Turner Ent.
Co., MGM/UA, 98 F.3d 33, 34 (2d Cir. 1996) (citing inter alia Jackson
Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979)
5. See Fisher-Price, Inc. v. Well-Made Toy Mfg.
Corp., 25 F.3d 119, 124 (2d Cir. 1994).
6. Defendants suggest that plaintiffs delayed
bringing this action, thereby undermining their claim of irreparable injury.
Although undue delay in some circumstances can defeat a presumption of
irreparable injury, see Markowitz Jewelry Co., Inc. v. Chapal/Zenray, Inc.,
988 F. Supp. 404, 406 (S.D.N.Y. 1994), that is so only where the delay is
unexplained and unjustified. If a party is unaware at the outset of the scope of
the threat or pursues with reasonable dispatch other means to remedy the problem
without coming to court, there is no undue delay. See Gilliam v. American
Broadcasting Companies, Inc., 538 F.2d 14, 25 (2d Cir. 1976). In this case,
plaintiffs first learned of the appearance of DeCSS on the Internet in late
October 1999. Schumann Decl. ¶ 10; Attaway Decl. ¶ 7. Plaintiffs immediately
sought to address the problem by approaching Internet service providers and met
with some success. Attaway Decl. ¶ 8. After a state court in California
declined to issue a temporary restraining order in a case involving
misappropriation of trade secrets on December 29, 1999, the dissemination of
DeCSS became more widespread. Attaway Decl. ¶ 9. As this motion was brought by
order to show cause on January 14, 2000, the Court finds that plaintiffs acted
with reasonable speed and that any delay was not undue.
7. FED. R. CIV. P. 17.
8. Emphasis added.
9. Defendant Roman Kazan argues also that, since
this action was filed, DeCSS has been removed from the Web site that he
allegedly controls. This does not moot the claim against him. See United
States v. W. T. Grant, 345 U.S. 629 (1953).
10. 17 U.S.C. § 1201(a)(2). See also 1
MELVILLE B. NIMMER &DAVID NIMMER, NIMMER ON COPYRIGHT ("NIMMER'') §
12A.03[a], at 12A-16 (1999).
11. 17 U.S.C. § 1201(a)(3)(A).
12. Id. § 1201(a)(3)(B).
13. Def. Mem. at 3.
14. Defendants contended that DeCSS was intended
only to permit persons in lawful possession of copyrighted disks to play them
for their own use on computers running under the Linux operating system rather
than Windows. Tr. at 28. Indeed, they suggested that this is the only possible
use of DeCSS and that DeCSS does not permit the user to copy DVDs. Id. at 28-30.
But the arguments are unpersuasive for two reasons.
First, defendants have submitted no evidence---as
distinguished from unsubstantiated assertions at oral argument---to support
these contentions. Second, even if DeCSS wereintended and usable solely to
permit the playing, and not the copying, of DVDs on Linux machines, the playing
without a licensed CSS "player key'' would "circumvent a technological
measure'' that effectively controls access to a copyrighted work and violate the
statute in any case.
15. 17 U.S.C. § 512(c).
16. Def. Mem. at 6-7.
17. 17 U.S.C. § 512(k) ("[T]he term `service
provider' means a provider of online services or network access, or the operator
of facilities therefore, and includes an entity'' "offering the
transmission, routing, or providing of connections for digital online
communications, between or among points specified by a users, of material of the
user's choosing, without modification to the content of the material as sent or
29. Defendants asserted at oral argument that DeCSS,
or some versions of it, contain programmer's comments, "which are
non-executable appendages to lines of executable code.'' Tradescape.com v.
Shivaram, No. 99 Civ. 8990 (LAK), 1999 WL 1102767, *8 (S.D.N.Y. Dec. 7,
1999). Such comments are protected by the First Amendment. Plaintiffs, however,
have disclaimed any effort to restrain dissemination of programmer comments as
distinguished from executable code.
30. Compare Bernstein v. United States Dept.
of Justice, 176 F.3d 1132, 1141(holding that encryption software in source
code form is constitutionally protected expression but expressing no opinion
with respect to object code), rehearing in banc granted, opinion withdrawn,
192 F.3d 1308 (9th Cir. 1999); with Junger v. Daley, 8 F. Supp.2d 708, 715-18 (N.D.
Ohio 1998) (holding that encryption software in source code form is functional
rather than expressive and therefore not protected speech); Karn v. United
States Dept. of State, 925 F. Supp. 1, 9 n.19 (D. D.C. 1996) (assuming that
source code is protected speech when joined with commentary, but stating that
source code alone is "merely a means of commanding a computer to perform a
function''); R. Polk Wagner, The Medium Is the Mistake: The Law of Software
for the First Amendment, 51 STAN. L. REV. 387 (1999) (arguing that focus of
analysis in software cases should be on whether government interests supporting
regulation are related to suppression of expression, not on whether code itself
is intended to be or understood as expressive); Mark A. Lemley & Eugene
Volokh, Freedom of Speech and Injunctions in Intellectual Property Cases,
48 DUKE L.J. 147, 236-37 (1998) ("most executable software is best treated
as a virtual machine rather than as protected expression'').
31. Lemley & Volokh, supra, 48 DUKE L.J. at
32. This argument is posited by the Nimmers, who
nevertheless do not embrace it. See 1NIMMER § 1.10[A], at 1-66.44 to 1-66.45
33. See generally Harper & Row Publishers
Inc. v. Nation Enterprises, 471 U.S. 539, 555-60 (1985).
34. Id. at 558.
35. See id. at 560. See also Wainwright
Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 95 (2d Cir.
1977), cert. denied, 434 U.S. 1014 (1978) ("Conflicts between
interests protected by the first amendment and the copyright laws thus far have
been resolved by application of the fair use doctrine.''); Nihon Keizai
Shimbun Inc. v. Comline Business Data, Inc., 166 F.3d 65, 74 (2d Cir. 1999).
36. See, e.g., Nihon Keizai Shimbum, 166 F.3d at
37. U.S. CONST., art. I, § 8.
39. 4 Wheat. (17 U.S.) 316 (1819).
40. Id. at 421.
41. See Sony Corp. of America v. Universal
City Studios, 464 U.S. 417, 434 (1984) ("Sound policy, as well as
history, supports or consistent deference to Congress when major technological
innovations alter the market for copyrighted materials. Congress has the
constitutional authority and the institutional ability to accommodate fully the
varied permutations of competing interests that are inevitably implicated by
such new technology.'').
42. S. REP. NO. 105-190, 105th Cong., 2d Sess.
43. 1 NIMMER §§ 1.10[A]-1.10[B], at 1-66.45 to
1-74. This "definitional balancing'' is to be distinguished from "ad
hoc balancing,'' which seeks to balance only the particular interests of the
parties before the court, rather than the more general public interests in the
kind of speech and the governmental regulation at issue. According to the
Nimmers, ad hoc balancing has proven unsatisfactory and generally has been
replaced by the definitional balancing method. Id.§ 1.10[A], at 1-67. See
also Konigsberg v. State Bar of Calif., 366 U.S. 36 (1961).
44. This kind of balancing has been utilized in
cases involving inter alia obscenity, privacy, and libel. 1 NIMMER §
1.10[A], at 1-68 (citing Roth v. United States, 354 U.S. 476 (1957) (obscenity);
Time, Inc. v. Hill, 385 U.S. 374 (1967) (privacy); New York Times v.
Sullivan, 376 U.S. 254 (1964) (libel)).
45. Whitney v. California, 274 U.S. 357, 375
(1927) (Brandeis, J. concurring) (cited in 1 NIMMER § 1.10[B], at 1-72 to
1-73). See also Nixon v. Shrink Missouri Gov't PAC, No. 98- 963, 2000 WL
48424, *14 (U.S. Jan. 24, 2000) (Breyer, J., concurring); Wallace v. Jaffree,
472 U.S. 38, 48 (1985); Mills v. Alabama, 384 U.S. 214, 218-19 (1966).
47. Junger, 8 F. Supp.2d at 715-18; Karn, 925 F.
Supp. at 9 n. 19; Lemley & Volakh, 48 DUKE L. J. at 236-37.
48. Lemley & Volakh, 48 DUKE L.J. at 236-37.
49. Mazer v. Stein, 347 U.S. 201, 219 (1953).
51. U.S. CONST. art. II, § 8.
52. Schumann Decl. ¶¶ 4-5.
53. 336 U.S. 490, 498 (1949).
54. Id. at 498.
55. Id. at 501-02.
56. Id. at 502.
58. See, e.g., Hughes v. Superior Court,
339 U.S. 460 (1950) (injunction against picketing to secure compliance with
demand that store adopt race-based hiring policy on ground that it contravenes
state policy against involuntary employment on racial lines); Pittsburgh
Press Co. v. Pittsburgh Comm'n on Human Relations, 413 U.S. 376 (1973) (injunction
against newspaper's furtherance of illegal sex discrimination by placing of job
advertisements in gender-designated columns); National Society of
Professional Engineers v. United States, 435 U.S. 679 (1978) (injunction
under Sherman Act against professional association's adoption of official
opinions, policy statements or guidelines implying that competitive bidding was
unethical); NLRB v. Local No. 3, 828 F.2d 936 (2d Cir. 1987) (injunction
against union's threat to strike as violation of National Labor Relations Act's
prohibition on unfair labor practices).
59. Def. Mem. at 13.
60. Village of Hoffman Estates v. Flipside,
Hoffman Estates, Inc., 455 U.S. 489, 495 (1982).
61. Def. Mem. at 13.
62. Village of Hoffman Estates, 455 U.S.
63. New York Times Co. v. United States, 403
U.S. 713, 714 (1971) (per curiam) (quoting Bantam Books, Inc. v. Sullivan,
372 U.S. 58, 70 (1963)).
64. See, e.g., Posadas de Puerto Rico Assoc.
v. Tourism Co. of Puerto Rico, 478 U.S. 328 (1986) (upholding restrictions
on casino gambling advertising); Times Film Corp. v. Chicago, 365 U.S. 43
(1961) (upholding local ordinance requiring review of films by municipal
officials as prerequisite to issuance of permits for public screening); Salinger
v. Random House, Inc., 811 F.2d 90 (2d Cir.) (enjoining biographer's use of
subject's unpublished letters as copyright infringement), cert. denied,
484 U.S. 890 (1987); Dallas Cowboy Cheerleaders v. Pussycat Cinema, Ltd.,
604 F.2d 200 (2d Cir. 1979) (enjoining distribution of film on ground that
actresses' uniforms infringed plaintiff's trademark). See generally
LAURENCE H. TRIBE, AMERICAN CONSTITUTIONAL LAW § 12-36, at 1045-46 (1988) (hereinafter
65. See, e.g., Charles of the Ritz Group, Ltd.
v. Quality King Distributors, Inc., 832 F.2d 1317 (2d Cir. 1987) (upholding
injunction against commercial slogan on ground that slogan created a likelihood
of confusion and is therefore "beyond the protective reach of the First
Amendment''); Vondran v. McLinn, No. 95-20296, 1995 WL 415153, *6 (N.D.
Cal. July 5, 1995) (enjoining defendant's false and disparaging remarks
regarding plaintiff's patented process for making fiber reinforced concrete on
the ground that the remarks are not protected by the First Amendment).
66. See, e.g., Times Film Corp. v. Chicago,
365 U.S. 43 (1961) (upholding local ordinance requiring review by city officials
of all films as a prerequisite to grant of permit for public screening despite
concerns of First Amendment violations); Posadas de Puerto Rico Assoc., 478 U.S.
328 (upholding restrictions on advertising despite finding that the advertising
fell within ambit of First Amendment); Dallas Cowboys Cheerleaders, Inc., 604
F.2d 200 (enjoining distribution of film for trademark infringement despite
claim that injunction violated distributor's First Amendment rights).
67. 4 WILLIAM BLACKSTONE, COMMENTARIES ON THE
LAWS OF ENGLAND 151-52 (1769).
68. See Pittsburgh Press Co.,413 U.S. at
69. Martin H. Redish, The Proper Role of the
Prior Restraint Doctrine in First Amendment Theory, 70 VA. L. REV. 53, 54
(1983) (hereinafter "Redish''). See also TRIBE § 12-34, at 1040-41 (2d ed.
74. See H.R. REP. 106-216, 106th Cong., 1st Sess.
(1999) ("Notwithstanding [penalties for copyright infringement] copyright
piracy of intellectual property flourishes, assisted in large part by today's
world of advanced technologies. For example, industry groups estimate that
counterfeiting and piracy of computer software cost the affected copyright
holders more than $11 billion last year (others believe the figure is closer to
$20 billion). In some countries, software piracy rates are as high as 97% of all
sales. The U.S. rate is far lower (25%), but the dollar losses ($2.9 billion)
are the highest worldwide. The effect of this volume of theft is substantial:
lost U.S. jobs, lost wages, lower tax revenue, and higher prices for honest
purchasers of copyrighted software. Unfortunately, the potential for this
problem to worsen is great.''); S. REP. 106-140, 106th Cong., 1st Sess. (1999)
("Trademark owners are facing a new form of piracy on the Internet caused
by acts of `cybersquatting.'''); S. REP. 105-190, 105th Cong., 2d Sess. (1998)
("Due to the ease with which digital works can be copied and distributed
worldwide virtually instantaneously, copyright owners will hesitate to make
their works readily available on the Internet without reasonable assurance that
they will be protected against massive piracy.''); H.R. REP. 105-339, 105th Cong.,
1st Sess. (1997) ("[C]opyright piracy flourishes in the software world.'').
75. Lemley & Volokh, 48 DUKE L.J. at 210
76. See, e.g., Pittsburgh Press Co., 413 U.S.
at 390 ("The special vice of a prior restraint is that communication will
be suppressed . . . before an adequate determination that it is unprotected by
the First Amendment.''); Lemley & Volokh, 48 DUKE L.J. at 200-02, 211; see
Redish, 70 VA. L. REV. at 75-83.
77. See Lemley & Volokh, 48 DUKE L.J. at
211-12, 215 (acknowledging that high likelihood of success diminishes risk of
erroneous suppression of protected speech).
78. See Freedman v. Maryland, 380 U.S 51,
79. As the Court has found a strong likelihood of
success on the merits, it is not necessary to analyze the balance of hardships.
Nonetheless, were such analysis appropriate, the Court would find the balance to
tip decidedly in plaintiffs' favor. Were the injunction erroneously granted,
defendants would risk a delay in their ability to make DeCSS available on their
Web sites. As they have made no claim that dissemination of DeCSS is
particularly time sensitive, the Court finds this risk to be relatively benign.
In contrast, were the injunction wrongly denied, plaintiffs would face a choice
between continued infringement of their copyrights as a result of illegal DVD
decryption or voluntary deferral of release of DVDs until the matter is fully
litigated as well as the cannibalization of the market for their products via
other media. Either option likely would result in substantial economic losses