Columbia Pictures Industries Inc v. Bunnell - Document No. 376

Columbia Pictures Industries Inc v. Bunnell Doc.
376
1 Ira P. Rothken (SBN #160029)

2 ROTHKEN LAW FIRM LLP
3 Hamilton Landing, Suite 280
3 Novato, CA 94949
4 Telephone: (415) 924-4250
Facsimile: (415) 924-2905
5
6 Kirk J. Retz (#170208)
7
LAW OFFICES OF KIRK J. RETZ, APC
21535 Hawthorne Blvd., #200
8 Torrance, CA 90503
9 Telephone: (310) 540-9800
Facsimile: (310) 540-9881
10
11 Attorney for Defendants
Justin Bunnell, Wes Parker
12
and Valence Media, Ltd.
13
14 UNITED STATES DISTRICT COURT
15 CENTRAL DISTRICT OF CALIFORNIA
16
17 COLUMBIA PICTURES INDUSTRIES, ) Case No. 06-01093 FMC (JCx)
18 INC., et al. )
) DEFENDANTS’ OBJECTIONS
19 Plaintiffs, ) TO PROPOSED PERMANENT
20 ) INJUNCTION
vs. )
21
)
22 JUSTIN BUNNELL, et al., ) Judge: Florence Marie Cooper
23 ) Ctrm: 750
Defendants. )
24 )
25
26
27
28
DEFENDANTS’ OBJECTIONS TO PROPOSED PERMANENT INJUNCTION

Columbia Pictures et. al. v. Bunnell et. al.
U. S. Dist. Ct., Cent. Dist. Cal., No. CV 06-1903 FMC (JCx)
Dockets.Justia.com
1 TABLE OF CONTENTS
2
3 Page
4
Legal Standard and Summary of Objections ...................................................... 1
5
6 Objection 1. Defendants Object to the Proposed Permanent Injunction in its
Entirety Because There is No Valid Claim Alleged in the Complaint. ............. 5
7
8 Objection 2. Defendants Object to Certain Factual Findings and to Paragraph
9
1(b)(ii) in the Proposed Permanent Injunction That Have No Basis in
Allegations of the Complaint or in Evidence. .................................................... 16
10
11 Objection 3. Defendants Object to All Language In Paragraphs 1(a)
Beginning With “until such time” on the Grounds that Such Language Is
12
Devoid of Meaning and an Attempt to Insert a False Factual Finding Into the
13 Permanent Injunction. ........................................................................................ 20
14
Objection 4. Defendants Object to Paragraphs 1(b), 1(b)(i) and 2 of the
15 Proposed Permanent Injunction Because They Lack Specificity and Are
16 Overbroad. .......................................................................................................... 28
17 Objection 5. Defendants Object to the Conditions Imposed on Transfers Of
18 Assets Under Paragraph 3 of the Proposed Permanent Injunction Because the
Imposition is Punitive and Without Connection to Copyright Infringement. .... 35
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20
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28
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1 INDEX OF AUTHORITIES
2 CASES
3 A & M Records, Inc. v. Napster, Inc., 114 F.Supp.2d 896 (N.D.Cal. 2001) ....................19
4 A & M Records, Inc. v. Napster, Inc., 2001 U.S. Dist. LEXIS 2186, No. C MDL-00-
5 1369 MHP, 2001 WL 227083 (N.D. Cal. Mar. 5, 2001) (Patel, C.J.), aff'd, 284 F.3d
6 1091 (9th Cir. 2002) ........................................................................................................6
7 A & M Records, inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001)...............................19
8 ACLU v. Reno, 929 F. Supp. 824 (E.D. Pa. 1996)............................................................10
9 Alexander v. United States, 509 U.S. 544, 113 S. Ct. 2766, 125 L. Ed. 2d 441 (1993)...31
10 Anderson v. Air West, Inc., 542 F.2d 1090 (9th Cir. 1976) .................................................5
11 Arista Records, Inc. v. MP3Board, Inc., 2002 U.S. Dist. LEXIS 16165, No. 00 CIV.
12 4660, 2002 WL 1997918 (S.D.N.Y. Aug. 29, 2002) ....................................................18
13 Ashcroft v. ACLU, 542 U.S. 656, 124 S. Ct. 2783, 159 L. Ed. 2d 690 (2004)................10
14 Ashcroft v. Free Speech Coalition, 535 U.S. 234, 122 S.Ct. 1389, 152 L.Ed.2d 403
15 (2002).............................................................................................................................33
16 Bartnicki v. Vopper, 532 U.S. 514, 149 L. Ed. 2d 787, 121 S. Ct. 1753 (2001) ..............32
17 Bell Atlantic v. Twombly, 127 S.Ct. 1955, 167 L. Ed. 2d 929 (2007) ..........................7, 16
18 Benny v. Pipes, 799 F.2d 489 (9th Cir. 1986).....................................................................1
19 Bernstein v. JCPenney, Inc., 1998 U.S. Dist. LEXIS 19048, No. 98-2958, 1998 WL
20 906644, (C.D. Cal. Sept. 29, 1998) ...............................................................................18
21 Brennan v. Saghatelian, 514 F. 2d 619 (9th Cir. 1975), reh'g denied sub nom Dunlop
22 v. Saghatelian, 520 F.2d 788 (9th Cir. 1975) ................................................................36
23 Conley v. Gibson, 355 U.S. 41, 78 S. Ct. 99, 2 L. Ed. 2d 80 (1957)..................................7
24 Cripps v. Life Ins. Co. of North America, 980 F.2d 1261, 1267 (9th Cir. 1992)................1
25 Cummings v. Connell, 316 F.3d 886 (9th Cir. 2003).........................................................37
26 Danning v. Lavine, 572 F.2d 1386 (9th Cir. 1978)..............................................................1
27 DirecTV, Inc. v. Hoa Huynh, 503 F.3d 847, 854 (9th Cir. 2007) ..............................1, 5, 16
28 eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S. Ct. 1837, 164 L. Ed. 2d 641
-ii-
1 (2006).........................................................................................................................6, 17
2 Elektra Entm’t Group, Inc. v. Bryant, No. CV 03-6381GAF(JTLx),, 2004 WL
3 783123 (C.D. Cal. Feb. 13, 2004) ...........................................................................19, 20
4 Entertainment Software Association v. Blagojevich, 469 F.3d 641(7th Cir. Ill. 2006)....33
5 Entertainment Software Association v. Foti, 451 F. Supp. 2d 823 (M.D. La. 2006) .......33
6 Federal Election Com. v Furgatch, 869 F.2d 1256 (9th Cir. 1989) ..................................37
7 Granny Goose Foods, Inc. v. Brotherhood of Teamsters, 415 U.S. 423, 39 L. Ed. 2d
8 435, 94 S. Ct. 1113 (1974) ............................................................................................30
9 Hughes Tool Co. v. Trans World Airlines, Inc., 409 U.S. 363, 34 L. Ed. 2d 577, 93 S.
10 Ct. 647 (1973)..................................................................................................................5
11 In re Napster, Inc. Copyright Litig., 377 F.Supp.2d 796 (N.D. Cal. 2005) .......................2
12 Int'l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312 (Fed. Cir. 2004)................................30
13 Madsen v. Womens' Health Center, Inc., 512 U.S. 753, 14 S. Ct. 2516, 129 L. Ed. 2d
14 593 (1994)......................................................................................................................33
15 MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197 (C.D. Cal. 2007) .........passim
16 Micro Star v. Formgen Inc., 154 F.3d 1107 (9th Cir.1998) .............................................19
17 Modtech, Inc. v. Designed Facilities Constr., Inc., 51 U.S.P.Q.2D (BNA) 1206, 1999
18 U.S. Dist. LEXIS 21474, No. CV 98-2871 CBM (MCx) (C.D. Cal. 1999) ................31
19 Mulcahy v. Cheetah Learning LLC, 386 F.3d 849 (8th Cir. 2004) ..............................4, 29
20 Nat'l Car Rental Sys., Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426 (8th Cir.
21 1993) ................................................................................................................................2
22 New.net, Inc. v. Lavasoft, 356 F. Supp. 2d 1071 (C.D. Cal. 2003) ..................................32
23 Newmark v. Turner Broadcasting Network 226 F.Supp.2d 1215, (C.D. Cal. 2002)........29
24 Nishimatsu Constr. Co. v. Houston Nat'l Bank, 515 F.2d 1200 (5th Cir. 1975) ......1, 5, 17
25 Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195 (N.D. Cal. 2004) ..............18
26 Organization for a Better Austin v. Keefe, 402 U.S. 415, 91 S. Ct. 1575, 29 L. Ed. 2d
27 1 (1971)..........................................................................................................................32
28 Peregrine Myanmar v. Segal, 89 F.3d 41 (2d Cir. 1996) .................................................30
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1 Perfect 10 v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007) ...................................13, 18
2 Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828 (C. D. Cal. 2006)............................13, 18
3 Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) ....................7, 14, 16
4 Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007).........................................11
5 Premier Communications Network, Inc. v. Fuentes, 880 F.2d 1096 (9th Cir. 1989)........31
6 Reno v. ACLU, 521 U.S. 844, 138 L. Ed. 2d 874, 117 S. Ct. 2329 (1997) ......................10
7 Rondeau v. Mosinee Paper Corp., 422 U.S. 49, 45 L. Ed. 2d 12, 95 S. Ct. 2069
8 (1975).............................................................................................................................36
9 S.E.C. v. Smyth, 420 F.3d 1225, 1232 (11th Cir. 2005)......................................................4
10 Schmidt v. Lessard, 414 U.S. 473, 38 L. Ed. 2d 661, 94 S. Ct. 713 (1974) .....................30
11 Smith & Nephew, Inc. v. Synthes (U.S.A.), 466 F. Supp. 2d 978 (W.D. Tenn. 2006)......30
12 Subafilms, Ltd. v. MGM-PatheCommunications Co.,24 F.3d 1088 (9th Cir.) (enbanc),
13 cert. denied, 513 U.S. 1001 (1994) ...............................................................................34
14 TeleVideo Systems, Inc. v. Heidenthal, 826 F.2d 915 (9th Cir. 1987).................................4
15 Thomson v. Wooster, 114 U.S. 104, 5 S. Ct. 788, 29 L. Ed. 105 (1884)............................2
16 Ticketmaster Corp. v. Tickets.com, Inc., 2000 U.S. Dist. LEXIS 4553, No. CV 99-
17 7654, 2000 WL 525390 (C.D. Cal. Mar. 27, 2000) ......................................................18
18 Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001 (9th Cir. 1985) cert.
19 den. 474 U.S. 1059 (1986).............................................................................................30
20 Twentieth Century Fox Film Corp. v. Streeter, 438 F.Supp.2d 1065 (D. Ariz. 2006).....19
21 Union Pac. R.R. v. Mower, 219 F.3d 1069 (9th Cir. 2000) ...............................................30
22 United States v W. T. Grant Co., 345 US 629, 97 L Ed 1303, 73 S Ct 894 (1953) ...36, 37
23 United States v. Playboy Entm't. Group, 529 U.S. 803, 120 S. Ct. 1878, 146 L. Ed. 2d
24 865 (2000)......................................................................................................................33
25 Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2nd Cir. 2001) .............................11
26 Waldman Pub. Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994)..............................4, 30
27 STATUTES
28 Fed. R. Civ. P. 55 ............................................................................................................1, 4
-iv-
1 Fed. R. Civ. P. 65 ................................................................................................................4
2 OTHER AUTHORITIES
3 Holmes, The Common Law (1881) ...................................................................................37
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1 Defendants1 Justin Bunnell, Wes Parker and Valence Media, LLC (hereinafter
2 “defendants”) hereby submit their Objections2 to the Proposed Permanent Injunction
3 submitted by plaintiffs.
4 Legal Standard and Summary of Objections.
5 In DirecTV, Inc. v. Hoa Huynh, 503 F.3d 847, 854 (9th Cir. 2007), the court held
6 that no default judgment could be entered because the Complaint in the case failed to
7 allege facts sufficient to sustain the claim. The court ruled that it:
8 <<takes "the well-pleaded factual allegations" in the complaint "as true." Cripps v.
9 Life Ins. Co. of North America, 980 F.2d 1261, 1267 (9th Cir. 1992); see also
Fed. R. Civ. P. 55(a); Benny [v. Pipes, 799 F.2d 489, 495 (9th Cir. 1986)] at
10 495. However, a "defendant is not held to admit facts that are not well-pleaded
11 or to admit conclusions of law." Nishimatsu Constr. Co. v. Houston Nat'l Bank,
515 F.2d 1200, 1206 (5th Cir. 1975).>>
12
See also Danning v. Lavine, 572 F.2d 1386, 1388 (9th Cir. 1978).
13
Both Hoa Huynh and Danning quote from Nishimatsu Constr. Co. v. Houston
14
Nat'l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975), where the Court held:
15
16 1
The action against defendant Forrest Parker has been stayed pursuant to 15 U.S.C. §
17 362(a) (bankruptcy petition triggers stay of continuation of proceedings against the
18 debtor). In light of the bankruptcy petition and the automatic stay for Forrest Parker, the
notion that there is no emergency mandating an injunction (as US access has been turned
19
off since August 2007), and to promote judicial economy and avoid balkanized hearings
20 and inconsistent findings, defendants suggest to the Court to stay the entire action until
21 the bankruptcy impact can be more clearly discerned.
22 2
Defendants have not discerned clear guidance regarding a page limit for their
23 Objections and given the gravity of the case and what is at stake, the interests of due
process, and placing a robust record before the Court on which to make its equitable
24
ruling, defendants have included numerous quotations resulting in a 38 page document.
25 If Defendants’ Objections are to be treated as a Brief with a 25 page limit without leave
26
of Court, Defendants respectfully request such leave or the opportunity to formally make
such request before the matter is ruled upon. Suffice it to say that plaintiffs have and will
27 have filed many more pages of documents in the default hearing/remedy process than
28 defendants and thus eleven pages here does not create unfair prejudice to them.
-1-
1 <<a defendant's default does not in itself warrant the court in entering a default
2 judgment. There must be a sufficient basis in the pleadings for the judgment
entered. As the Supreme Court stated in the "venerable but still definitive
3 case" of Thomson v. Wooster[, 114 U.S. 104, 5 S. Ct. 788, 29 L. Ed. 105
4 (1884)] : a default judgment may be lawfully entered only "according to
what is proper to be decreed upon the statements of the bill, assumed to be
5
true," and not "as of course according to the prayer of the bill." 114 U.S. at
6 113, 5 S. Ct. at 792, 29 L. Ed. at 108. The defendant is not held to admit
7
facts that are not well-pleaded or to admit conclusions of law. In short,
despite occasional statements to the contrary, a default is not treated as an
8 absolute confession by the defendant of his liability and of the plaintiff's
9 right to recover. Thomson v. Wooster...>> (Footnotes omitted.)
10
Defendants object to the Proposed Permanent Injunction in its entirety because
11
there is no valid claim alleged in the Complaint. See Objection 1, infra. Plaintiffs
12
cannot and do not specify their claims in any detail finer than sweeping conclusions of
13
law, e.g. “defendants are liable for inducement of copyright infringement, contributory
14
copyright infringement, and vicarious copyright infringement.” (Proposed Permanent
15
Injunction at 2:10-12.) The “well-pleaded allegations” of the Complaint, even when
16
supplemented by discovery, do not add up to a valid claim. There is no legally
17
recognizable copyright claim for “making available or distributing a dot torrent file.”
18
In re Napster, Inc. Copyright Litig., 377 F.Supp.2d 796, 802-05 (N.D. Cal. 2005), Nat'l
19
Car Rental Sys., Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426, 434 (8th Cir. 1993)
20
(stating that infringement of the distribution right requires the actual dissemination of
21
copies or phonorecords). Torrent text like files are not copyrighted works and they are
22
not copies of copyrighted works. Compare the above to cases (not here) where the
23
copyrighted work was located on the defendant's servers under the rubric of “making
24
available.” Plaintiffs are asking the court for a brand new theory of making available
25
in the context of this case in that there is no legally recognizable claim for tertiary
26
copyright infringement nor has there been a showing of any causation nor the requisite
27
level of knowledge and intent – defendants have no relationship whatsoever with the
28
copyrighted work – they don’t touch it nor do they host it and they certainly do not
-2-
1 distribute it or make it available.
2 Plaintiffs’ Proposed Permanent Injunction incorporates factual findings that have
3 no basis in the Complaint and/or that are nothing more than conclusions of law and/or
4 that would require a hearing with evidence presented on both sides before the court
5 could make such a finding. E.g., the Proposed Permanent Injunction would appear to
6 find Defendants liable for direct copyright infringement, as to which they have never
7 previously been accused; and Paragraph 1(b)(ii) of the Proposed Permanent Injunction
8 appears to enjoin Defendants from direct copyright infringement. Such factual
9 findings and such an injunction should not become part of a Permanent Injunction
10 when there is no basis in the record for them. See Objection 2, infra.
11 Should the Court overrule Objection 1, supra, it is anticipated that the Court will
12 possibly issue a Permanent Injunction like that in Paragraph 1(a) of the Proposed
13 Permanent Injunction at 4:23 - 5:5:4, that enjoins Defendants from operating the
14 TorrentSpy System. Defendants object to certain unnecessary, meaningless and
15 potentially prejudicial language in Paragraph 1(a). See Objection 3, infra.
16 The defects in the Complaint, in their totality, become apparent when considering
17 the terms of a permanent injunction. Because no specific claims are defined or can be
18 defined, the specificity needed for an injunction cannot be attained. Defendants object
19 to Paragraph 1(b) and 1(b)(i) of the Proposed Permanent Injunction on the grounds of
20 lack of specificity and overbreadth. Among other excesses, it constitutes a prior
21 restraint on defendants’ protected speech “about BitTorrent technology.” See
22 Objection 4, infra.
23 Paragraph 3 of the Proposed Permanent Injunction would burden any sale of
24 Defendants’ business assets with conditions that would make such assets
25 unmarketable. Defendants have closed TorrentSpy and are entitled to market and sell
26 the assets. Plaintiffs want to use the Permanent Injunction as a punishment – using it
27 to destroy the value of Defendants’ business assets – but such use of the injunctive
28 remedy is improper. If an injunction is to issue, it will contain Paragraph 1(a). There
-3-
1 is no reason to go beyond the protection accorded by the final sentence of Paragraph 3
2 of the Proposed Permanent Injunction, as follows: “Defendants further shall not
3 engage in a Transfer of TorrentSpy-Related Assets with or to any person whom
4 Defendants know to be engaged in conduct that would violate the terms of Paragraph 1
5 above.” Other than that sentence, Defendants object to Paragraph 3. See Objection 5,
6 infra.
7 In connection with Objection 5, Defendants submit that the Court should dissolve
8 any prior injunctive relief, e.g., the Temporary Restraining Order previously entered
9 and/or any Preliminary Injunction.
10 As stated in MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1226
11 (C.D. Cal. 2007):
12 <<A permanent injunction must be carefully crafted. "[T]he scope of the
13 injunction should be coterminous with the infringement." 4 Nimmer &
Nimmer, supra, § 14.06[C]. This is perhaps partly why "blanket injunctions
14 to obey the law are disfavored." Mulcahy v. Cheetah Learning LLC, 386
15 F.3d 849, 852 n.1 (8th Cir. 2004). Rule 65(d) also requires that injunctions
be specific:
16
Every order granting an injunction and every restraining order shall
17 set forth the reasons for its issuance; shall be specific in terms; shall
18
describe in reasonable detail, and not by reference to the complaint or
other document, the act or acts sought to be restrained.
19 Fed. R. Civ. P. 65(d). "Injunctive relief should be narrowly tailored to fit
20 specific legal violations." Waldman Pub. Corp. v. Landoll, Inc., 43 F.3d 775,
785 (2d Cir. 1994). The devil is in the details.>>
21
22 Fed. R. Civ. P. 55(b) authorizes the court to conduct a hearing or to make a
23 referral. Defendants submit that when, as here, “all essential evidence” has not been
24 put into the record, due process requires a hearing before remedies are imposed. See
25
26
27
28
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1 S.E.C. v. Smyth, 420 F.3d 1225, 1232, 1233 (11th Cir. 2005).3
2
3 OBJECTION 1: DEFENDANTS OBJECT TO THE PROPOSED
4 PERMANENT INJUNCTION IN ITS ENTIRETY BECAUSE THERE
IS NO VALID CLAIM ALLEGED IN THE COMPLAINT.
5
6 A "defendant is not held to admit facts that are not well-pleaded or to admit
7 conclusions of law." When the facts of the Complaint do not add up to cognizable
8 claim, the Court should refuse to enter a default judgment. DirecTV, Inc. v. Hoa
9 Huynh, 503 F.3d 847, 854 (9th Cir. 2007) quoting Nishimatsu Constr. Co. v. Houston
10 Nat'l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975).4
11 There is no allegation in the Complaint that defendants themselves engaged in
12 direct copyright infringement. As shown in detail infra, the Complaint alleges that
13
14
15
16 3
In Cripps, supra, 980 F.2d at 1268, the court vacated the default judgment but not the
17 default and remanded the case to the trial court for fact-finding as to the underlying
18 validity of the claim. The district court held an evidentiary hearing in Benny v. Pipes,
supra, 799 F.2d at 495, n.8. See also TeleVideo Systems, Inc. v. Heidenthal, 826 F.2d 915
19
(9th Cir. 1987) (trial court struck defendants’ answer as sanction for litigation misconduct
20 but ordered a hearing where plaintiff put on its prima facie case).
21 4
In Anderson v. Air West, Inc., 542 F.2d 1090 (9th Cir. 1976), on which Plaintiffs rely
22 (MPA in Support of Motion at 3:4-6), the court ruled:
23
<<Defendants' failure-to-state-a-claim argument was included as one of their
24
"affirmative defenses" below. Both parties recognize that by striking those
25 defenses the district court did not impliedly reject defendants' argument that no
26
claim was stated. Rather, it is not apparent that the district court ever
considered the argument. If in fact no claim is stated, the default order may
27 have to be vacated. See Hughes Tool Co. v. Trans World Airlines, Inc., 409
28 U.S. 363, 34 L. Ed. 2d 577, 93 S. Ct. 647 (1973).>>
-5-
1 defendants formerly5 provided information services and information to anonymous
2 Internet visitors, whom Plaintiffs call “users,” who came to Defendants’ website to
3 obtain information needed to carry out P2P file exchanges. Such exchanges may have
4 ultimately infringed on copyrights somewhere in the World under a given
5 jurisdiction’s laws, but any potential primary infringement occurred after the user had
6 left Defendants’ website, with intermediate stages of Internet activity separating the
7 user’s visit at Defendants’ website from any file exchange. Many visitors to
8 Defendants’ websites, which site(s) were and are located in the Netherlands, used the
9 resources for non-infringing purposes and the vast majority of the Torrentspy.com
10 users were located outside the United States. Under these facts and circumstances, no
11 valid claim for liability can be or has been shown. Defendants do nothing other than
12 to provide information that has no copyrighted content to other persons that those
13 persons use to leave the site and then access P2P file exchanges. Defendants do not
14 themselves set up P2P file exchanges. There is nothing inherent in the operations of
15 Defendants’ system that induces or contributes to copyright infringement. “Whether
16 BitTorrent is used for legitimate purposes or copyright infringement is determined by
17 those who operate its websites and its servers.” (Complaint at 4:2-4.)
18 As shown by plaintiffs’ allegations, there is a class of persons who are similar to
19 Defendants, namely, “operators of torrent sites,” (Complaint, ¶ 14) who may be
20 affected by a judgment issued by the court. For example, if the court were to find as a
21 matter of fact that an operator of a torrent site “could easily prevent infringement of
22 Plaintiffs’ copyrighted works” (Complaint, ¶ 29), such a finding could have serious
23 consequences for other torrent site operators – especially because the proposition is not
24
25
5
26
As indicated in declarations previously provided in this case herein TorrentSpy ceased
providing services to persons connecting through U.S. providers in August, 2007.
27 TorrentSpy shut down completely on March 24, 2008. Arguably the request for
28 injunction is moot and thus no injunction should issue.
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1 factually correct.6 The standard for issuance of an injunction calls for an inquiry into
2 the question of whether “the public interest would not be disserved by a permanent
3 injunction." eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S. Ct. 1837, 1839,
4 164 L. Ed. 2d 641 (2006). Defendants submit that, given the lack of specificity in the
5 allegations of the Complaint, the failure of the Complaint to actually state a valid
6 claim, the potential (but unknown) impact on national policies7 and the potential (but
7 unknown) impact on a class of persons not before the Court, the public interest would
8 be disserved by a permanent injunction. Therefore, the Motion for Permanent
9 Injunction should be denied.
10 As a preliminary matter, Defendants object to a determination that the validity of
11 Plaintiffs’ claim is established by reason of the Court’s Order Denying Motion to
12 Dismiss for Failure to State a Claim (Docket #22) (May 10, 2006), as recited in the
13 Proposed Permanent Injunction at 2:12-13. Under the current standard, to survive a
14 12(b)(6) motion, the "[f]actual allegations must be enough to raise a right to relief
15 above the speculative level." Bell Atlantic v. Twombly, 127 S.Ct. 1955, 1965, 167 L.
16
17
18
19
20
21
22
23
6
See A & M Records, Inc. v. Napster, Inc., 2001 U.S. Dist. LEXIS 2186, No. C MDL-00-
24
1369 MHP, 2001 WL 227083 (N.D. Cal. Mar. 5, 2001) (Patel, C.J.), aff'd, 284 F.3d 1091
25 (9th Cir. 2002) for some of the difficulties to be anticipated in “filtering” files.
26 7
National policies: “promote the continued development of the Internet,” “preserve [its]
27 vibrant and competitive free market” and “encourage the development of technologies
28 which maximize user control.” 47 U.S.C. § 230(b) (emphasis added).
-7-
1 Ed. 2d 929 (2007), "8retir[ing]" the "no set of facts" language of Conley v. Gibson, 355
2 U.S. 41, 78 S. Ct. 99, 2 L. Ed. 2d 80 (1957) under which the Motion to Dismiss was
3 decided. In Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1173 (9th Cir. 2007),
4 issued after the Motion to Dismiss, the court held that a theory of vicarious liability
5 could not be sustained against Google because Google did not have “the legal right to
6 stop or limit the direct infringement of third-party websites,” exactly the situation
7
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22 8
In looking at the equities, the Court can and should take into consideration the pleadings
23 on file in the related case of Bunnell, et al. v. MPAA, U.S. District Court, Central District
of California Case No. 2:06-cv-03206 FMC-JC for the notion that the plaintiffs began
24
this copyright case via an investigation by its trade organization, the MPAA, whereby the
25 MPAA admitted to paying a hacker $15,000 dollars for information obtained from the
26
Torrentspy defendants by intercepting emails without their authorization. Indeed, while
it is axiomatic that two wrongs do not make a right, it does tend to rationally explain the
27 notion that defendants conduct in the instant case has been driven by a desire to retain
28 privacy.
-8-
1 here.9 This recent decision also reformulated the standard for contributory
2 infringement. The validity of the claims at this stage of the proceedings, after
3 discovery and creation of a record, requires more careful scrutiny than at the initial
4 pleading stage.
5 According to the Complaint, copyrights protecting plaintiffs’ movies and
6 television programs are infringed by activities involving “an online computer network
7 known as ‘BitTorrent.’” (Complaint, ¶¶ 4-6.) Defendants’ former website,
8 TorrentSpy, was a tangential part of the BitTorrent Network. BitTorrent is a peer-to-
9 peer network optimized for the copying and downloading of large files. Actual file
10 exchanges, which are the directly infringing acts, take place between users or “peers,”
11 each a person with a BitTorrent “client application” in his or her personal computer.
12 In addition to the class of users, the BitTorrent Network involves a class of indexing
13 websites known as “torrent sites” and a class of computer servers known as BitTorrent
14
15 9
According to plaintiffs’ expert Professor Horowitz Torrentspy provided (at the time of
16 his deposition) search results that link to dot-torrent files found on third party sites (see
Excerpts of Deposition of Professor Ellis Horowitz taken November 28, 2007, attached as
17 Exhibit A to Declaration of Jared R. Smith (hereafter referred to as “Horowitz
18 Deposition” at 24:15-20):
19
Q. To the best of your knowledge currently Torrentspy provides search results that link
20 to dot-torrent files found elsewhere; correct?
21 A. Yes. To the best of my knowledge at this point the links that are provided link to
third-party sites.
22
23 Professor Horowitz makes clear that the Torrentspy.com servers are not involved with
any content hosted on third party sites once the user controlled BitTorrent client
24
application takes over (Horowitz Deposition at 30:4-10):
25
26
Q. TorrentSpy.com, their servers are not involved once the client application BitTorrent
takes over; correct?
27 MR. SERVODIDIO: Vague and ambiguous.
28 THE WITNESS: Yes. That's correct. Once the dot-torrent file has been downloaded,
TorrentSpy machines are not involved.
-9-
1 “trackers.” (Id., ¶¶ 7-10.)
2 Defendants were sued solely as a member of the class of “torrent sites” that
3 provides indexing services and related services. Plaintiffs’ allegation: “Whether
4 BitTorrent is used for legitimate purposes or copyright infringement is determined by
5 those who operate its websites and its servers,” applies to torrent sites. (Id., ¶ 7.) It is
6 undisputed that BitTorrent is used to download large volumes of non-infringing
7 materials, such as independent video productions; and it is undisputed that software,
8 games and updates are routinely downloaded by users using BitTorrent. Hollywood
9 provides its own products through BitTorrent technology.10
10 Defendants operated a “comprehensive aggregator,” gathering material from all
11 available sources, like Google does, but specializing as an information node for torrent
12 files and links. There were and are competitors in providing such aggregation and
13 search engine services to Internet visitors and such aggregators/search engines play an
14 essential role in BitTorrent technology. (Complaint, ¶¶ 11-12.)
15 Torrent sites like the former TorrentSpy provide users with “small files known as
16 ‘torrents.’” Loaded into the client application in the user’s personal computer, a torrent
17 “instruct[s] a user’s computer where to go and how to get the desired file. Torrents
18 interact with specific trackers...” (Id., ¶ 12.) Any file exchange occurs after
19 termination of all connections between the visitor and the torrent site.
20 “Torrent sites play an integral role in the process of using BitTorrent to
21 download files. Without them, users could not identify, locate or download
infringing files. Indeed, the content available on the BitTorrent network is
22
23
10
In the accompanying Request for Judicial Notice, Defendants ask that the Court find
24
that Internet accessibility makes certain facts “capable of accurate and ready
25 determination by resort to sources whose accuracy cannot reasonably be questioned”
26
(Fed. Rule of Evid 201(b)(2)), namely that: “BitTorrent technology is presently being
used for authorized distributions of copyrighted movies and television programs,
27 including copyrighted movies and television programs owned by some plaintiffs (or
28 affiliates of plaintiffs).”
-10-
1 defined entirely by what files the operators of torrent sites – such as
2 Defendants – choose to allow to be indexed and distributed.” (Id., ¶ 14,
emphasis added.)
3 “The fact is that Defendants easily could prevent infringement of Plaintiffs’
4 copyrighted works by not indexing torrent files corresponding to Plaintiffs’
copyrighted works.” (Id., ¶ 29.)
5
6 When evaluated by current authorities, Plaintiffs’ allegations fail to state a claim
7 for any kind of secondary copyright infringement.
8 This is not a case suitable for the inducement rule of MGM Studios Inc. v.
9 Grokster, Ltd., 545 U.S. 913, 919; 125 S. Ct. 2764; 162 L. Ed. 2d 781 (2005), which
10 dealt with “one who distributes a device with the object of promoting its use to infringe
11 copyright.” Here, defendants did not distribute a “device” but defendants only
12 distributed non-copyrighted “torrent” files and links, nothing but information that,
13 defendants submit, is protected by the First Amendment to the United States
14 Constitution In a series of decisions, the United States Supreme Court and lower
15 federal courts have protected speech over the Internet because the Internet provides
16 "the most participatory form of mass speech yet developed,"11 a statement that
17 especially applies to BitTorrent technology at issue here.
18 The lack of any “device” at issue is demonstrated by Plaintiffs’ definition of “the
19 TorrentSpy System” at 4:16-18, namely, “the software, websites, electronic data,
20 forums, guides, and FAQS that make up or support www.torrentspy.com.”
21
22 11
ACLU v. Reno, 929 F. Supp. 824 (E.D. Pa. 1996) at 883, upheld in Reno v. ACLU,
23 521 U.S. 844, 870, 138 L. Ed. 2d 874, 117 S. Ct. 2329 (1997). See also Ashcroft v.
24 ACLU, 542 U.S. 656, 673, 124 S. Ct. 2783, 159 L. Ed. 2d 690 (2004) (burden of
filtering Internet content for materials harmful to children should be borne by parents
25
rather than by constraining general Internet activity); Universal City Studios, Inc. v.
26 Corley, 273 F.3d 429, 445-449 (2nd Cir. 2001). ("Communication does not lose
27
constitutional protection as 'speech' simply because it is expressed in the language of
computer code.")
28
-11-
1 Some of these items, such as data, forums, guides and FAQS are nothing but
2 information protected by the First Amendment. See Universal City Studios, Inc. v.
3 Corley, 273 F.3d 429, 445-449 (2nd Cir. 2001). ("Communication does not lose
4 constitutional protection as 'speech' simply because it is expressed in the language of
5 computer code.") Software and websites might contain “devices” but Defendants did
6 not distribute any such “devices.” Cf. Perfect 10, Inc. v. CCBill LLC, 488 F.3d
7 1102,1114 (9th Cir. 2007) (defendants’ password hacking website compared to
8 “software provided by Grokster.”) Accordingly, Defendants cannot be held liable for
9 inducement under Grokster.
10 The complaint seeks to interpret current law so as to apply to a new kind of
11 technology. Involving older technology, MGM Studios Inc. v. Grokster, Ltd., 545 U.S.
12 913, 919; 125 S. Ct. 2764; 162 L. Ed. 2d 781 (2005) dealt with “one who distributes a
13 device with the object of promoting its use to infringe copyright.” Here, defendants did
14 not distribute a “device” but defendants only distributed non-copyrighted “torrent”
15 files and links, nothing but information that, defendants submit, is protected by the
16 First Amendment to the United States Constitution.
17 One of the lessons assumed from Grokster but rarely scrutinized is that the now
18 famous inducement holding, pled by the plaintiffs in the complaint upon which they
19 are seeking a default, applies to search engines and almost any other type of web
20 service. But a closer reading raises the question whether the inducement liability
21 holding in Grokster even applies to Internet search engines or link sites like Google12
22 or Torrentspy or other torrent file search engines. As stated in Grokster:
23 The question is under what circumstances the distributor
24
12
25 According to Professor Horowitz Google provides search results that link to dot torrent
26
files (Horowitz Deposition at 23:25 –24:2):
27 Q. My question is this then: One could do a file type Torrent search on Google and
28 find dot-torrent files; correct?
A. Yes, you could do that.
-12-
1 of a product capable of both lawful and unlawful use is liable
2 for acts of copyright infringement by third parties using the
product. We hold that one who distributes a device with the
3 object of promoting its use to infringe copyright, as shown by
4 clear expression or other affirmative steps taken to foster
infringement, is liable for the resulting acts of infringement by
5
third parties.
6
7 Further down in the opinion Justice Souter further clarifies and states:
8
In addition to intent to bring about infringement and
distribution of a device suitable for infringing use, the
9 inducement theory of course requires evidence of actual
10 infringement by recipients of the device, the software in this
case.
11
12 If one were to read and "scrutinize" the actual issue and holding of Grokster
13 above it would seem to only apply to "products" or "devices" that can be "used" by
14 third parties to commit copyright infringement. The Grokster software "device"
15 handled the allegedly illegal copying between computers - it was "used" for the
16 copyright infringement.
17 But that is arguably not the case with Internet search engines or sites that manifest
18 hyperlinks to dot torrent files like Torrenstpy.com. First it is arguable that a search
19 engine is not a device or product (like say the executable software "product" at issue in
20 Grokster) but even if it is - it is hard to understand how a third party can use such a
21 device for the actual commission of copyright infringement.
22 For example, if one were to query Google for a famous musician's song
23 unauthorized to be on the net and then click on the link to download it from a third
24 party site the Google search engine is not being used to commit copyright infringement
25 as no copying is being done using the Google site or “device” - the copying is being
26 done using the surfer's browser “device” directly connected to a third party site after
27 the connection with Google is lost. In other words search engine result hyperlinks are
28 not a device that can be "used" to commit copyright infringement - that device usually
-13-
1 is the user's browser (or like in the Grokster case the thin client software known as
2 Grokster) directly connecting to a third party site or server (the recent case of Perfect
3 10 v. Google, Inc., 416 F. Supp. 2d 828, 842 (C. D. Cal. 2006), affirmed in part,
4 reversed in part, Perfect 10 v. Amazon.com, Inc., 487 F.3d 701 (9th Cir. 2007) provides
5 support for this view related to the connection between the user and the third party site
6 after a hyperlink is clicked through).
7 Torrentspy is arguably further removed from potential downstream infringements
8 than Google as Torrentspy provided hyperlinks to dot torrent files (text-like files) that,
9 when clicked on, were downloaded to the user’s hard drive – after the connection with
10 Torrenstpy was lost the user could if they wanted to then load up their software
11 “device” namely the Bittorrent software13, load the torrent file, and then possibly
12 download potential infringing files – thus the notion that Grokster does not apply to
13
14 13
According to Professor Horowitz BitTorrent peer to peer technology involves a
15 software application that users install on their computers known as a client application
16 (Horowitz Deposition at 22:8-12):
17 Q. Now, the BitTorrent peer technology involves a software application that users install
18 on their computers known as a client application; is that correct?
A. Yes, that's correct.
19
Professor Horowitz testified that the BitTorrent client application is a piece of software
20 that has built within it knowledge of the BitTorrent protocol and it's able to take dot-
21 torrent files and cause the corresponding content to be downloaded to the user's machine.
(Horowitz Deposition at 22:13-17):
22
23 Q. What is a client application?
A. It's a piece of software that has built within
24
it knowledge of the BitTorrent protocol, and it's able
25 to take dot-torrent files and cause the corresponding content to be downloaded to the
26
user's machine.
Professor Horowitz favors the BitTorrent client application (Horowitz Deposition at
27 22:18-21):
28 Q. And can you give us an example of any such client applications?
A. Sure. The one that I favor is the one from BitTorrent, which is called BitTorrent.
-14-
1 web sites that provide mere hyperlinks is even more compelling for Torrentspy. Users
2 of the Torrentspy search engine or hyperlink device cannot use such device to commit
3 copyright infringement and therefore Grokster and the inducement theory do not apply
4 to Internet search engines and plaintiffs’ claims based on tertiary liability are not
5 legally recognizable under any case precedent.
6 In addition, given the notion that Torrentspy provided information and it is such
7 information that involves the core of the site and this case, the First Amendment is
8 squarely at issue. Indeed, it is hard to find any cases in the history of American
9 jurisprudence where a web site that did not provide hyperlinks to copyrighted works
10 and that did not have copyrighted works passing through its servers or a software
11 device (like in Napster and Grokster) wherein such site was held liable for secondary
12 copyright infringement under any theory – this may be a case of first impression and
13 even in a default scenario should not be decided or an injunction issued until the court
14 is satisfied that plaintiffs have a real “legally recognizable” claim – especially given
15 that defendants are attenuated and so far removed from downstream conduct that there
16 is little case precedent for Torrentspy having real responsibility for potential off site
17 infringements recognizable under the law.
18 As held in Perfect10 v. Amazon.com, supra, at 487 F.3d at 729, a party is:
19 “contributorily liable if it ‘has actual knowledge that specific infringing
20 material is available using its system,’ Napster, 239 F.3d at 1022, and can
‘take simple measures to prevent further damage’ to copyrighted works,
21 Netcom, 907 F. Supp. at 1375, yet continues to provide access to infringing
22 works.”
23
Here, Plaintiffs’ Complaint has nothing but conclusions that “Defendants have
24
actual and constructive knowledge of the infringing activity that occurs on their torrent
25
site.” (Complaint at 10:10-11.) The allegation is false: No infringing activity
26
27
28
-15-
1 occurred on Defendants’ torrent site.14 Even if a visitor came to Defendants’ website
2 to obtain information for purposes of copyright infringement, and even if the visitor
3 obtained that information at Defendants’ website, the visitor had to leave the website
4 and perform several intermediate steps before any potential copyright infringement
5 could be carried out. Plaintiffs consistently misrepresent the facts because it is only by
6 misrepresentation that a pretense of a valid claim can be maintained.
7 Held against the standard, there is no allegation in the Complaint that Defendants
8 have actual knowledge that specific infringing material is available using Defendants’
9 systems. Defendants’ knowledge is alleged to come through Defendants’ “creation,
10 maintenance, and operation” of the website (Complaint at 10:13) rather than actual
11 knowledge of specific infringing material. The Complaint fails to state a cause of
12
13
14
14
According to the deposition testimony of plaintiffs’ expert Professor Horowitz dot
torrent files do not contain actual copies of a content item (Horowitz Deposition at 28:6-
15 22):
16
Q. Dot-torrent files do not contain actual copies of a content item; correct?
17 A. That's correct.
18 Q. Torrent files contain data that provides an address where content may possibly be
found; correct?
19
MR. SERVODIDIO: Vague and ambiguous.
20 THE WITNESS: No. That's not accurate. Torrent files contain an address, one or more
21 addresses of trackers who in turn have knowledge of where the content can be found.
BY MR. ROTHKEN:
22 Q. Okay. Thank you for that clarification.
23 TorrentSpy.com did not provide content files; correct?
MR. SERVODIDIO: Vague and ambiguous.
24
THE WITNESS: That's correct. They do not provide the content file.
25
26
Professor Horowitz also testified that the defendants in this case do not run a tracker
(Horowitz Deposition at 24:12-14):
27
28 Q. The defendants in this case do not run a Tracker; correct?
A. That's correct. They do not run a Tracker.
-16-
1 action, unless a reader were to enter into speculation, a practice prohibited under Bell
2 Atlantic v. Twombly, 127 S.Ct. 1955, 1965, 167 L. Ed. 2d 929 (2007), quoted supra.
3 Combined with a confirmation of Plaintiffs factually false allegation in ¶ 12 of
4 the Complaint discussed supra [“The fact is that Defendants easily could prevent
5 infringement of Plaintiffs’ copyrighted works by not indexing torrent files
6 corresponding to Plaintiffs’ copyrighted works.”], a holding that Defendants are liable
7 for contributory copyright infringement would amount to holding an independent
8 torrent site operator liable simply by reason of the site’s existence. Such a result
9 should not come about for reasons of national policy and fairness to third parties not
10 present in this proceeding, as set forth supra.
11 As noted supra, Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1173 (9th
12 Cir. 2007) held that a theory of vicarious liability could not be sustained against
13 Google because Google did not have “the legal right to stop or limit the direct
14 infringement of third-party websites,” exactly the situation here. It is not alleged and
15 factually not the case that Defendants could stop or limit any direct infringement in
16 this case. Defendants did nothing but provide information services to purposeful
17 visitors. There are many torrent sites for users to visit.
18 Accordingly, none of the theories of secondary copyright infringement can be
19 sustained. The court should decline to enter a default judgment and should decline to
20 issue a permanent injunction. DirecTV, Inc. v. Hoa Huynh, 503 F.3d 847 (9th Cir.
21 2007).
22
23 OBJECTION 2: DEFENDANTS OBJECT TO FACTUAL FINDINGS
24 AND AN ORDER IN THE PROPOSED PERMANENT INJUNCTION
THAT HAVE NO BASIS IN ALLEGATIONS OF THE COMPLAINT
25 OR IN EVIDENCE.
26
Plaintiffs are seeking to use the circumstances of the default procedure to insert
27
false and/or improper material into the Court’s Order. Plaintiffs’ evident purpose
28
-17-
1 behind such insertions is to use this case as part of their broader campaign against
2 independent BitTorrent operators. The Court should remove such provisions from any
3 Permanent Injunction in the public interest. eBay Inc. v. MercExchange, L.L.C., 547
4 U.S. 388, 126 S. Ct. 1837, 1839, 164 L. Ed. 2d 641 (2006). As discussed supra, a
5 defaulting "defendant is not held to admit facts that are not well-pleaded or to admit
6 conclusions of law." Nishimatsu Constr. Co. v. Houston Nat'l Bank, 515 F.2d 1200,
7 1206 (5th Cir. 1975).
8 A. Defendants object to the statement at 2:17 of the Proposed Permanent
9 Injunction that, unless an injunction is issued, there will be “a threat that Defendant
10 would again infringe Plaintiffs’ copyrighted works.” Defendants object to the Order in
11 Paragraph 1(b)(ii) which enjoins Defendants from “reproducing, downloading,
12 distributing, uploading, linking to, or publicly performing or displaying any
13 Copyrighted Work.”
14 Argument. The proposed language at 2:17 implies that defendants directly
15 infringed Plaintiffs’ copyrighted works. The Complaint does not allege that
16 defendants infringed Plaintiffs’ copyrighted works. There is no evidence that
17 defendants infringed Plaintiffs’ copyrighted works. What is alleged is that defendants
18 are to be held secondarily liable for infringing acts of third parties. The proposed
19 language should not be included in any Permanent Injunction.
20 The admonitions stated in the recent proceedings in MGM Studios, Inc. v.
21 Grokster, Ltd. and quoted supra require that “‘Injunctive relief should be narrowly
22 tailored to fit specific legal violations.’” Since there is no finding and should be no
23 finding as a matter of law that Defendants reproduced, downloaded, distributed,
24 uploaded, linked to (meaning hyperlink as used in the ordinary course), or publicly
25 performed or displayed any Copyrighted Work, the proposed injunctive provision is
26 improper.
27 Defendants specifically object to an injunction against “linking to” Plaintiffs’
28 Copyrighted Works. As stated in Perfect 10 v. Google, Inc., 416 F. Supp. 2d 828, 842
-18-
1 (C. D. Cal. 2006), affirmed in part, reversed in part, Perfect 10 v. Amazon.com, Inc.,
2 487 F.3d 701 (9th Cir. 2007):
3 <<[L]inking does not implicate any of the exclusive rights under copyright.
4 Ticketmaster Corp. v. Tickets.com, Inc., 2000 U.S. Dist. LEXIS 4553, No.
CV 99-7654, 2000 WL 525390, at *2 (C.D. Cal. Mar. 27, 2000)
5 ("Hyperlinking does not itself involve a [direct] violation of the Copyright
6 Act (whatever it may do for other claims) since no copying is involved.");
Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1202 n.12
7
(N.D. Cal. 2004) ("Hyperlinking per se does not constitute direct copyright
8 infringement because there is no copying, [although] in some instances there
9
may be a tenable claim of contributory infringement or vicarious liability.");
Bernstein v. JCPenney, Inc., 1998 U.S. Dist. LEXIS 19048, No. 98-2958,
10 1998 WL 906644, at * 1 (C.D. Cal. Sept. 29, 1998) (unpublished) (granting,
11 without discussion, defendant's motion to dismiss on the ground that
hyperlinking cannot constitute direct infringement); Arista Records, Inc. v.
12
MP3Board, Inc., 2002 U.S. Dist. LEXIS 16165, No. 00 CIV. 4660, 2002
13 WL 1997918, at *4 (S.D.N.Y. Aug. 29, 2002) (unreported) (linking to
content does not implicate distribution right and thus, does not give rise to
14
liability for direct copyright infringement).>>
15
16 There has never previously been any suggestion that “linking to” Plaintiffs’
17 Copyrighted Works was involved in this case.
18 The injunctive relief in Paragraph 1(b)(ii) is unconnected with anything
19 Defendants have done. Plaintiffs accuse Defendants of wanting to infringe copyrights
20 but it is apparent from the record that Defendants have more practical desires focused
21 on sales of Internet advertising and development of websites that draw traffic to
22 Internet advertising. A broadly general and non-specific injunction such as Paragraph
23 1(b)(ii), unconnected any offense properly alleged in the Complaint or shown in
24 evidence, punitively and improperly limits Defendants opportunities in a dynamic
25 industry. See further discussion in Objections 3 and 4.
26 B. Defendants object to provisions 3:3-18 of the Proposed Permanent
27 Injunction, namely the following:
28 The overwhelming infringement facilitated by defendants significantly and
irreparably undermines plaintiffs’ control over their intellectual property.
-19-
1 See A & M Records, inc. v. Napster, Inc., 239 F.3d 1004, 1029 (9th Cir.
2 2001) (imposing injunctive relief in peer-to-peer infringement case because
otherwise “Plaintiffs would lose the power to control their intellectual
3 property”). The online infringement that defendants induce and facilitate
4 uniquely exposes plaintiff’s works to “viral” infringement by allowing end
users to further distribute digital copies of plaintiffs’ works. See Twentieth
5
Century Fox Film Corp. v. Streeter, 438 F.Supp.2d 1065, 1073 & n.2 (D.
6 Ariz. 2006) (distribution of digital copies via Internet “is potentially
7
exponential rather than linear, threatening virtually unstoppable
infringement of the copyright”); Elektra Entm’t Group, Inc. v. Bryant, No.
8 CV 03-6381GAF(JTLx),, 2004 WL 783123, at *6 (C.D. Cal. Feb. 13,
9 2004)(“Defendant’s means of infringement - an online distribution system
with tens of millions of potential users - has left Plaintiffs’ sound recordings
10
vulnerable to massive, repeated, near-instantaneous, and worldwide
11 infringement”).
12
Argument
13
1. The objectionable provisions are irrelevant.
14
In context in the Proposed Permanent Injunction, the challenged provisions are
15
factual predicates for a finding of “irreparable injury.” The following finding of the
16
Proposed Permanent Injunction at 3:18-19 immediately follows the provisions quoted
17
supra: “Accordingly, Plaintiffs will be irreparably harmed...”
18
However, as stated in Plaintiffs’ authority, Twentieth Century Fox Film Corp. v.
19
Streeter, 438 F.Supp.2d at 1065, 1072 (D. Ariz. 2006):
20
Copyright infringement is presumed to give rise to irreparable injury. A & M
21 Records, Inc. v. Napster, Inc., 114 F.Supp.2d 896, 925 (N.D.Cal. 2001)
22 reversed in part on other grounds, citing Micro Star v. Formgen Inc., 154
F.3d 1107, 1109 (9th Cir.1998).
23
24 Because “irreparable injury” is presumptive in this case if the Court were to
25 discern there are actionable infringements that defendant(s) are legally secondarily
26 responsible for, factual embellishment is unnecessary .
27 2. The factual statements in the subject provisions are without foundation in
28 the Complaint or in any evidence. The phrase “plaintiffs’ control over their
-20-
1 intellectual property” comes from the Napster case where a substantial record was
2 developed during preliminary injunction proceedings. The situation in this case is very
3 different because here Plaintiffs’ control over their intellectual property has been
4 undermined by technological development, e.g., of BitTorrent technology, not by
5 anything Defendants have done or threaten to do. There is nothing “unique” about any
6 threats that might be posed by Defendants. Probably, more serious threats are posed
7 by Google which builds far larger data aggregations and which provides more
8 powerful public search engines. There are a multitude of BitTorrent sites, including
9 numerous sites worldwide that are beyond the reach of Plaintiffs. There are many
10 means of Internet file exchange other than BitTorrent, including the Napster system,
11 “Morpheus” at issue in Grokster and “Kazaa” at issue in Elektra Entm’t Group, Inc. v.
12 Bryant cited by Plaintiffs. The ungrounded factual statements are inserted by Plaintiffs
13 to justify citations to authority. Neither the ungrounded factual statements nor the
14 citations should be part of a Permanent Injunction.
15 OBJECTION 3: DEFENDANTS OBJECT TO ALL LANGUAGE IN
16 PARAGRAPHS 1(a) BEGINNING WITH “until such time” ON THE
GROUNDS THAT SUCH LANGUAGE IS DEVOID OF MEANING
17 AND AN ATTEMPT TO INSERT A FALSE FACTUAL FINDING
18 INTO THE PERMANENT INJUNCTION .
19
In this Objection and in Objection 4, infra, Defendants proceed with the understanding
20
that the Court will overrule Objection 1 and issue a Permanent Injunction as Plaintiffs
21
request under Paragraph 1(a) of the Proposed Permanent Injunction. In other words,
22
Defendants anticipate provisions that enjoin Defendants etc.
23
“from directly or indirectly operating, or supporting, assisting or
24 participating in the operation of, the TorrentSpy System until such time as
25
Defendants have satisfied the Court that the TorrentSpy System can and will
be operated in a manner that does not result in the infringement of the
26 Copyrighted Works.” (Proposed Permanent Injunction at 4:26-5:4.)
27
Defendants’ submits that all language beginning with “until such time...” is
28
-21-
1 devoid of content. How could Defendants so satisfy the Court without running
2 prolonged real-life tests that would violate the injunction? The language is apparently
3 an attempt to insert an implied factual finding into the terms of the Permanent
4 Injunction, namely, that TorrentSpy operations could satisfy such allegations in the
5 Complaint as “The fact is that Defendants easily could prevent infringement of
6 Plaintiffs’ copyrighted works by not indexing torrent files corresponding to Plaintiffs’
7 copyrighted works.” (Complaint at 8:20-22.)
8 Indeed according to Professor Horowitz Defendants provided robust systems to
9 remove dot torrent files that copyright owners found offending given the constraints of
10 a search engine like Torrentspy.com that did not “touch” or download copyrighted
11 content (thus making viewing or reviewing such content located on third party servers
12 impractical):
13 Professor Horowitz testified in essence that Defendants can and do ban
14 Torrentspy users either by user name or IP addresses for various infractions and
15 Defendants can and do ban trackers for various reasons and will not index dot
16 torrent files from banned trackers (Horowitz Deposition at 39:5-16)
17 5 Q. The defendants in this case can and do ban
18 6 TorrentSpy users either by user names or IP addresses
7 for various infractions; true?
19 8 A. Yes. Apparently they do.
20 9 Q. Defendants can and do ban trackers for various
10 reasons; correct?
21
11 A. Yes, that's correct.
22 12 Q. TorrentSpy.com will not index incoming
23
13 dot-torrent files from trackers that are banned;
14 correct?
24 15 A. That's correct. They will not index
25 16 dot-Torrent files from banned trackers.
26
Professor Horowitz testified in essence that Defendants provided an interface for
27
Torrentspy site administrators to ban trackers (Horowitz Deposition at 39:17-19):
28
-22-
1 17 Q. Defendants provide interface for TorrentSpy
2 18 site administrators to ban trackers; correct?
19 A. Yes, they do. That's correct.
3
4 Professor Horowitz testified in essence that Defendants block and delete dot
5 torrent files through their software (Horowitz Deposition at 39:20-24):
6 20 Q. Defendants can and do block and delete
7 21 dot-torrent files through their software; correct?
22 A. They have the facility to block and delete
8
23 dot-torrent files, and my understanding is they have
9 24 done that.
10
11 Professor Horowitz testified in essence that Torrentspy blocks dot torrent files
12 which are then flagged as such in Torrentspy's index and the files with the same
13 info hash will not be reindexed (Horowitz Deposition at 39:25 – 40:4):
14
25 Q. And blocked dot-torrent files are flagged as
1 such in TorrentSpy's index and will not be reindexed on
15 2 TorrentSpy; correct?
16 3 A. That's correct. The specific file with that
4 info hash will not be reindexed.
17
18
Professor Horowitz testified in essence that Site administrators can block any dot
19
torrent file on Torrentspy and have a mass blocking functionality through the
20
administrator interface (Horowitz Deposition at 40:5-9)
21
5 Q. Site administrators can block any dot-torrent
22 6 file on TorrentSpy and can block several files at once
7 using the mass block functionality; correct?
23
8 A. Yes, that's correct. It is provided through
24 9 the interface.
25
26 Professor Horowitz testified in essence that Defendants have allowed several
27 companies access to their site in such a manner that these companies after
28 identifying a specific torrent file could have that torrent blocked (Horowitz
-23-
1 Deposition at 40:10-16):
2 10 Q. Defendants have given DMCA members
3 11 functionality to block dot-torrent files; true?
12 MR. SERVODIDIO: Vague and ambiguous.
4 13 THE WITNESS: Defendants have allowed several
5 14 companies access to their site in such a manner that
15 these companies after identifying a specific torrent
6
16 could have that torrent blocked.
7
8 Professor Horowitz testified in essence that Torrentspy.com filters or blocks
9 DMCA noticed Torrent files by hash value regardless of the file name and such
10 files with the same hash value will not be reindexed (Horowitz Deposition at 43:22-
11 46:11):
12 22 Q. And it's your understanding that one of those
13
23 mechanisms is to block dot-torrent files that result
24 from DMCA notifications; correct?
14 25 A. Yes. They apparently have some mechanism in
15 1 place for blocking such files.
2 Q. That's done by hash value; correct?
16
3 A. No. It seemed to be done by a link to the
17 4 content. I believe the DMCA notice requires the
5 copyright owner to provide such a link, and then
18
6 TorrentSpy staff members who have been assigned to the
19 7 process then follow through and attempt to block the
20 8 corresponding content.
9 Q. The filtering that goes on by TorrentSpy.com
21 10 for DMCA noticed Torrent files is to block the Torrent
22 11 files by hash value; correct?
12 MR. SERVODIDIO: Objection. Asked and
23
13 answered.
24 14 THE WITNESS: Well, there is a specific file
25 15 that's being blocked and hence yes, it would be -- would
16 correspond to a specific hash value.
26 17 BY MR. ROTHKEN:
27 18 Q. So regardless of what the Torrent file name
19 is, any Torrent file that had the hash value that was
28
20 blocked would be blocked; correct?
-24-
1 21 A. Yes. I believe that is the case. They do
2 22 check via the hash value.
23 Q. And so if someone provided a DMCA notice for a
3 24 specific dot-torrent file that had a particular hash
4 25 value, then -- and that was blocked by TorrentSpy.com,
5
1 then every other dot-torrent file on its system that had
6 2 the same hash value would be blocked; correct?
7
3 A. Yes. There should not be multiple entries
4 having the same hash value. So I don't think there's
8 5 anything to be gained here with your question. Once
9 6 they've blocked the entry with a corresponding hash,
7 it's blocked. There shouldn't be any additional
10
8 occurrences with that file with the same hash.
11 9 Q. Unless somebody named the Torrent file
10 differently that had the same hash value; correct?
12
11 A. Well, I thought you were saying that they
13 12 might have renamed the file. So the entry would still
14 13 be there, only have a different name value, same hash
14 value.
15 15 Q. I'll start over with the hypothetical. I just
16 16 want to make sure that it's accurate.
17 Under the technology that's used by
17
18 TorrentSpy.com for blocking Torrent files obtained
18 19 through DMCA notices, if TorrentSpy.com were to block a
19 20 specific dot-torrent file that had a specific hash
21 value, all other dot-torrent files regardless of their
20 22 name that had the same hash value would be blocked too;
21 23 true?
24 MR. SERVODIDIO: Object as vague and
22
25 ambiguous.
23
24
1 THE WITNESS: I would say it this way. That
2 is, if they encountered at a later time a Torrent file
25 3 that had the same hash, it would not be downloaded and
26 4 reindexed. So that once a file with the specific hash
5 value is blocked, it is continually blocked going
27 6 forward.
28 7 BY MR. ROTHKEN:
-25-
1 8 Q. In other words, the dot-torrent file that's
2 9 blocked would not appear in its search results
10 regardless of a file name?
3 11 A. Yes. That's correct.
4
5 Professor Horowitz testified in essence that The cooperation of the copyright
6 owners would be helpful for keyword filtering (Horowitz Deposition at 50:3-9):
7 3 Q. So therefore you're agreeing that the
4 cooperation of the copyright owners to properly label
8
5 things and to cooperate is crucial in order for keyword
9 6 filtering to be accurate and successful?
10
7 MR. SERVODIDIO: Misstates the witness's
8 testimony, argumentative.
11 9 THE WITNESS: It would certainly be helpful.
12
13 Professor Horowitz does not know how many words in the dictionary would be
14 taken up if one were to analyze for keywords to use in theoretical keyword filters
15 all the copyrighted movies, videos, and songs in the United States (Horowitz
17 14 Q. How many words, if you know -- and tell me if
15 you don't know. How many words in the dictionary would
18
16 be taken up if one were to analyze all the copyrighted
19 17 movies, videos and songs in the United States?
18 MR. SERVODIDIO: Vague and ambiguous, calls
20
19 for speculation.
21 20 THE WITNESS: First of all, your assumption
22 21 that all of the copyrighted songs and movies would have
22 to be somehow kept track of I think is unrealistic, and
23 23 of course I don't know what that number is.
24
25 Professor Horowitz is of the view that providing keywords for filtering or keeping
26 track of and filtering “all” copyrighted songs and movies is somewhat unrealistic
27 (Horowitz Deposition at 50:14-23):
28 14 Q. How many words, if you know -- and tell me if
-26-
1 15 you don't know. How many words in the dictionary would
2 16 be taken up if one were to analyze all the copyrighted
17 movies, videos and songs in the United States?
3 18 MR. SERVODIDIO: Vague and ambiguous, calls
4 19 for speculation.
20 THE WITNESS: First of all, your assumption
5
21 that all of the copyrighted songs and movies would have
6 22 to be somehow kept track of I think is unrealistic, and
7
23 of course I don't know what that number is.
8
Professor Horowitz does not think it is necessary to block all copyrighted content
9
using keyword filters on dot torrent search engines especially content that ever
10
appeared over the last 20 to 50 years because he thinks the sites that are offering
11
recent content is where copyright infringement seems to be taking hold (Horowitz
12
Deposition at 50:25-51:8):
13
25 Q. Why would it be unrealistic?
14 1 A. Well, I don't think it's necessary to block
15 2 all -- all copyrighted content that's ever appeared over
3 the last -- I don't know -- 20 or 50 years.
16
4 Q. Why is that?
17 5 A. Well, because I think largely the sites are
6 offering recent content, new movies, new music. That's
18
7 where the copyright infringement seems to be taking
19 8 hold.
20
21 Professor Horowitz is of the opinion that in using a keyword filtering technique
22 from a technical perspective on dot torrent sites that some downstream copyright
23 infringement that occurs on third party sites should be tolerable (Horowitz
25 9 Q. Okay. So you're saying then that in a keyword
10 filtering technique, that some downstream copyright
26 11 infringement should be tolerable?
27 12 MR. SERVODIDIO: Objection. Misstates the
13 witness's testimony, calls for a legal conclusion,
28
14 beyond the scope.
-27-
1 15 THE WITNESS: Yeah. I'm just viewing it as
2 16 from a technical perspective, and from a technical
17 perspective I think the issue is you would want to keep
3 18 the database or block list size sufficiently small, and
4 19 there's no reason that it couldn't be kept reasonably
20 small because not all of the copyrighted material need
5
21 to be included.
6
7 Professor Horowitz does not want to be committed to a view on whose
8 copyrighted content should be left out of the keyword filter and he believes that
9 one could do a study and come up with a reasonable set based upon current
10 trends and he has not done such a study (Horowitz Deposition at 51:23-52:8):
11 23 Q. Okay. So whose unauthorized copyrighted
12
24 content gets to be left out?
25 MR. SERVODIDIO: Objection. Calls for
13 1 speculation, beyond the scope, calls for a legal
14 2 conclusion.
3 THE WITNESS: Well, again, I haven't sat down
15
4 and tried to work out all the details. I don't want to
16 5 be committed to something. But I think -- I don't think
6 there's any particular vendor of copyrighted material
17
7 that I would necessarily cut out. I don't think that's
18 8 the way to view it.
19
20 Accordingly, Defendants object to the following language in Paragraph 1(a):
21 “until such time as Defendants have satisfied the Court that the TorrentSpy System can
22 and will be operated in a manner that does not result in the infringement of the
23 Copyrighted Works” as it appears that plaintiffs own expert, Professor Horowitz,
24 acknowledges that some quantum of downstream third party infringement should be
25 tolerable given the constraints of the Torrentspy system and the nature of the Internet
26 technology as whole. Providing an impossible standard of 100 percent perfection for
27 filtering would be overbroad, would not take into account fair use, DMCA protections,
28 parody and worldwide extraterritorial users (given copyright protections on different
-28-
1 content worldwide and the wholly extraterritorial paradigm of users interfacing with
2 the defendants’ Netherlands servers) and violate the First Amendment. Providing an
3 ambiguous standard or “fuzzy standard” could act as a Pandora’s box ready to ensnare
4 someone who meant no harm and had no intention to violate an order. Most
5 importantly, any Torrent file filter system that did not involve plaintiffs providing
6 notice of which of their works in which jurisdiction were being infringed on third party
7 sites and allowing for significant under-breadth of filtering would be doomed to failure
8 – defendants are simply not in the position to visit third party servers and downloads
9 works and then make an assessment on a worldwide basis of what is available with
10 authorization and without, what is an advertisement or teaser and what isn’t, what is
11 properly licensed and what isn’t, and what is fair use and what isn’t for every
12 jurisdiction. Indeed, the Internet and search engines like Torrentspy.com would then
13 only be as good as the most restrictive jurisdiction and that would also impact Free
14 Speech and related Constitutional Protections in the United States.
15
16 OBJECTION 4: DEFENDANTS OBJECT TO PARAGRAPHS 1(b),
17 1(b)(i) AND 2 OF THE PROPOSED PERMANENT INJUNCTION
BECAUSE THEY LACK SPECIFICITY AND ARE OVERBROAD.
18
19 Paragraph (1)(b) of the Proposed Permanent Injunction (at 5:5-20) enjoins
20 Defendants from “directly, indirectly, contributorily, or vicariously infringing any
21 Copyrighted Works.” “[I]ncluding without limitation,” the “following activities” are
22 apparently definitional of a violation:
23 “(i) encouraging, promoting, soliciting or inducing, or knowingly
materially contributing to, enabling, facilitating, or assisting, any person or
24
entity, via any computer server, computer program, website, or online
25 system, network or service, including without limitation any peer-to-peer or
26
file-trading network, (A) to reproduce, download, distribute, upload, link to,
or publicly perform or display any Copyrighted Work, or (B) to make any
27 Copyrighted Work available for reproduction, downloading, distribution,
28 uploading, linking to, or public performance or display.”
-29-
1
2 As quoted in the Legal Standard, supra, "’blanket injunctions to obey the law are
3 disfavored.’ Mulcahy v. Cheetah Learning LLC, 386 F.3d 849, 852 n.1 (8th Cir.
4 2004).” MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1226 (C.D. Cal.
5 2007). The general language at 5:5-8 (Paragraph 1(b)) is a “blanket injunction” and
6 Defendants object thereto.
7 As the Grokster court also stated (Ibid.)
8 “Rule 65(d) also requires that injunctions be specific:
9 Every order granting an injunction and every restraining order shall
set forth the reasons for its issuance; shall be specific in terms; shall
10 describe in reasonable detail, and not by reference to the complaint or
11 other document, the act or acts sought to be restrained.
12
The restraints identified after the “(i)” violate the Rule. Such restraints are not
13
specific but the very opposite of specific.15 The Proposed Permanent Injunction does
14
not “describe in reasonable detail” any specific act or acts but rather constructs an
15
elastic volume of prohibited activities. The result is to prohibit Defendants from
16
engaging in any communication whatsoever with anyone “involved in any peer-to-peer
17
18
15
Indeed under the proposed language of such an injunction defendants’ and their
19
families may even be in violation from day one if they own a TIVO DVR (or device like
20 it commonplace in many homes) that has the same or substantially similar functionality
21 to the Replay TV DVR (including such features of video file sharing of which this Court
is well aware) in which all or substantially all of the instant plaintiffs have already shown
22 a willingness to sue over and allege in such complaint that such home users were primary
23 infringers on which to hinge their case of secondary liability (see Newmark v. Turner
Broadcasting Network 226 F.Supp.2d 1215, (C.D. Cal. 2002.)) Needless to say that even
24
if the Court is inclined to enjoin defendants such injunction should be very narrowly
25 tailored to the Torrentspy.com web site and should not subject defendants to such a broad
26
injunction that would go beyond the accused site into the home or impact the ability of
defendants to make a living working in their profession for Google or another search
27 engine or any other dot com that must rely upon fair use, parody, (evolving law), and the
28 DMCA to counter balance copyright rights on a worldwide basis.
-30-
1 or file-trading network” and to close Defendants out from any employment in vital
2 areas of technology, even as a commentator or an educator. The Proposed Permanent
3 Injunction would banish Defendants from their area of industrial expertise in perpetuo
4 and contrary to the principle that "Injunctive relief should be narrowly tailored to fit
5 specific legal violations." Waldman Pub. Corp. v. Landoll, Inc., 43 F.3d 775, 785 (2d
6 Cir. 1994), as stated in MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197,
7 1226 (C.D. Cal. 2007), supra, “Legal Standard.”
8 We note once again Plaintiffs’ attempts to enjoin “link to” and “linking to”
9 which, as set forth supra in connection with Objection 2.a, have been held to be free
10 from copyright infringement.
11 Measured against the requirements of specificity imposed by the authorities, the
12 provisions in Paragraph 1(b) and 1(b)(i) are improper and Defendants object thereto.
13 Granny Goose Foods, Inc. v. Brotherhood of Teamsters, 415 U.S. 423, 444, 39 L. Ed.
14 2d 435, 94 S. Ct. 1113 (1974); Schmidt v. Lessard, 414 U.S. 473, 476, 38 L. Ed. 2d
15 661, 94 S. Ct. 713 (1974); Union Pac. R.R. v. Mower, 219 F.3d 1069, 1077 (9th Cir.
16 2000) (injunction against former employee’s disclosure of confidential information
17 reversed because “it provides little, if any, guidance to Mower regarding how he
18 should determine what particular information is confidential or privileged”); Int'l
19 Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1315-1317 (Fed. Cir. 2004), reversing
20 an injunction granted by the United States District Court for the Central District of
21 California, Judge Manuel L. Real; Peregrine Myanmar v. Segal, 89 F.3d 41, 51 (2d
22 Cir. 1996) (“Segal makes the valid point that it will be impossible for her--a non-
23 lawyer--to know in advance which ‘threatened’ lawsuits are ‘spurious’ and which are
24 not.”). Cf. Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1022 (9th
25 Cir. 1985) cert. den. 474 U.S. 1059 (1986) (“The injunction in the instant case
26 precisely sets out the forbidden conduct.”) -- see Plaintiffs’ Motion at 9:14-17); Smith
27 & Nephew, Inc. v. Synthes (U.S.A.), 466 F. Supp. 2d 978, 985-986 (W.D. Tenn. 2006)
28 (injunction tightly tethered to defendants’ patent-infringing products, e.g., “ any
-31-
1 version of the Trochanteric Fixation Nail products and colorable variations thereof.”) -
2 - see Plaintiffs’ Motion at 9:17-19; Modtech, Inc. v. Designed Facilities Constr., Inc.,
3 51 U.S.P.Q.2D (BNA) 1206, 1999 U.S. Dist. LEXIS 21474, No. CV 98-2871 CBM
4 (MCx) (C.D. Cal. 1999) (court had enjoined defendant DFC from using "drawings
5 copied or derived from Modtech's drawings.”) -- see plaintiffs’ Motion at 9:19-23.
6 Defendants further object to the provisions of Paragraph 1(b)(i) that restrain
7 speech, e.g., injunctions against “encouraging, promoting, soliciting, or inducing, or
8 knowingly contributing to, enabling, facilitating, or assisting, any person” who might
9 thereafter engage in infringing activities. Such an injunction would, for example,
10 prevent Defendants from teaching about P2P systems in a classroom or favorably
11 commenting on P2P systems in public media. The language is so broad and elastic
12 that it would prohibit a Defendant from accepting employment with BitTorrent.com,
13 which is apparently an authorized distributor of movies for Fox, Paramount and
14 Warner Bros. (Please see Request for Judicial Notice.)
15 In Premier Communications Network, Inc. v. Fuentes, 880 F.2d 1096 (9th Cir.
16 1989), the court reversed a permanent injunction against an owner of equipment that
17 could view copyrighted programs without authorization through a microwave system.
18 “Premier is not entitled to an injunction preventing members of the general
19 public from using modern technology that has multiple substantial uses just
because one of those uses would be the unlawful reception of its signal. On
20 the other hand, Premier is entitled to an injunction preventing the use of the
21 equipment unlawfully to receive its signal. We conclude that paragraph 3 is
ambiguous and overbroad in accomplishing this purpose.” 880 F.2d at 1101.
22
23 The same defects that led to the reversal in Fuentes are present here.
24 Of special importance is that Paragraph 1(b)(i) restrains Defendants’ speech that
25 is protected by the First Amendment. "[P]ermanent injunctions--i.e., court orders that
26 actually forbid speech activities--are classic examples of prior restraints." Alexander v.
27 United States, 509 U.S. 544, 550, 113 S. Ct. 2766, 125 L. Ed. 2d 441 (1993)
28 An “injunction, so far as it imposes prior restraint on speech and publication,
-32-
1 constitutes an impermissible restraint on First Amendment rights.” Organization for a
2 Better Austin v. Keefe, 402 U.S. 415, 418, 91 S. Ct. 1575, 29 L. Ed. 2d 1 (1971).
3 In New.net, Inc. v. Lavasoft, 356 F. Supp. 2d 1071, 1084 (C.D. Cal. 2003), the
4 Court held:
5 <<The First Amendment offers no protection for false or deceptive commercial
6 speech. [Citation.] However, truthful commercial speech does enjoy
meaningful First Amendment protection. ... The Supreme Court has focused
7 on this as a particular basis for proscribing prior restraints, observing: "[t]he
8 special vice of a prior restraint is that communication will be suppressed . . .
before an adequate determination that it is unprotected by the First
9
Amendment." [Citation.] In other words, "[t]he danger of a prior restraint,
10 as opposed to [an] ex post . . . action, is precisely that making predictions ex
11
ante as to what restrictions on speech will ultimately be found permissible is
hazardous and may chill protected speech." [Citation.] >>
12
13 Plaintiffs are improperly asking the Court to enjoin defendants' speech that
14 allegedly "promotes" or "encourages" copyright infringement.
15 "The mere tendency of speech to encourage unlawful acts is not a sufficient
reason for banning it. The government 'cannot constitutionally premise legislation
16
on the desirability of controlling a person's private thoughts.' [Citation.] First
17 Amendment freedoms are most in danger when the government seeks to control
thought or to justify its laws for that impermissible end. The right to think is the
18
beginning of freedom, and speech must be protected from the government
19 because speech is the beginning of thought. "To preserve these freedoms, and to
20 protect speech for its own sake, the Court's First Amendment cases draw vital
distinctions between words and deeds, between ideas and conduct. [Citation]; see
21 also Bartnicki v. Vopper, 532 U.S. 514, 529, 149 L. Ed. 2d 787, 121 S. Ct. 1753
22 (2001) ('The normal method of deterring unlawful conduct is to impose an
appropriate punishment on the person who engages in it'). The government may
23
not prohibit speech because it increases the chance an unlawful act will be
24 committed 'at some indefinite future time.' [Citation.] The government may
25 suppress speech for advocating the use of force or a violation of law only if 'such
advocacy is directed to inciting or producing imminent lawless action and is
26 likely to incite or produce such action.' [Citation.]"
27
See also Ashcroft v. Free Speech Coalition, 535 U.S. 234, 253, 122 S.Ct. 1389,
28
-33-
1 152 L.Ed.2d 403 (2002) ("virtual" child pornography could not be outlawed from the
2 Internet on the grounds that it "whets the appetites of pedophiles and encourages them
3 to engage in illegal conduct." Id.)
4 In Entertainment Software Association v. Blagojevich, 469 F.3d 641(7th Cir. Ill.
5 2006), the Court struck down an Illinois statute, the SEVGL, designed to regulate
6 "indecent" video games because the prohibition was not "narrowly tailored" as required
7 by the First Amendment.
8 "As the State concedes, the SEVGL is a content-based restriction on speech, and
9 we must employ strict scrutiny in assessing its constitutionality. See United States
v. Playboy Entm't. Group, 529 U.S. 803, 813, 120 S. Ct. 1878, 146 L. Ed. 2d 865
10 (2000). To survive strict scrutiny, the SEVGL 'must be narrowly tailored to
11 promote a compelling Government interest.' Playboy, 529 U.S. at 811. Generally,
'a statute is narrowly tailored only if it targets and eliminates no more than the
12
exact source of the "evil" it seeks to remedy.' Put another way, a statute is not
13 narrowly tailored if 'a less restrictive alternative would serve the Government's
14
purpose.' See Playboy, 529 U.S. at 813. We must assure that the State does not
'burn the house to roast the pig.' [Citation.]"
15
16 469 F.3d at 646 (footnote and some citations omitted).
17 See also Entertainment Software Association v. Foti, 451 F. Supp. 2d 823 (M.D.
18 La. 2006), where interactive video games were held to be protected speech and the
19 Court overthrew a statute that tried to outlaw violent video games as a way of "curbing
20 violent behavior."
21 In Madsen v. Womens' Health Center, Inc., 512 U.S. 753, 765-766, 14 S. Ct.
22 2516, 129 L. Ed. 2d 593 (1994), the Court modified an injunction constraining
23 demonstrations at an abortion clinic. holding that free speech rights required it to
24 "ensure that the injunction was no broader than necessary to achieve its desired goals,"
25 that "injunctive relief should be no more burdensome to the defendant than necessary
26 to provide complete relief to the plaintiffs" and that "the injunction [should] burden no
27
28
-34-
1 more speech than necessary to serve a significant government interest."16
2
3 16
Plaintiffs hope to gloss over overbreadth problems related to their proposed injunction
4 including the notion that:
5 Different rights may apply in different geographical regions and depend on where in the
6 world content files are downloaded from or to and Torrentspy and other search engines
cannot be the arbiter and cannot know ahead of time in a preemptive manner such rights;
7
8 Content files may be permissible in one geographic area or country and not in another
9 and thus pure keyword filtering on defendants' sites is overbroad and given the notion
that Torrentspy’s servers are located in the Netherlands any such possible infringement is
10 statistically likely to be extraterritorial and not actionable nor arguably under the subject
11 matter jurisdiction of US Courts under the teachings of Subafilms, Ltd. v. MGM-
PatheCommunications Co.,24 F.3d 1088 (9th Cir.) (enbanc), cert. denied, 513 U.S. 1001
12
(1994);
13
14
There is no defined mechanism for allowing a dot torrent search engine like defendants’
to discern when a downstream file has Digital Rights Management (“DRM”) encryption
15 and thus using keyword filtering alone is overbroad as it may exclude DRM protected
16 files that require payment or a password as a condition of opening;
17 There is no evidence put in the record by plaintiffs of whether or not defendants' sites had
18 a greater or lesser percentage of torrent files that allegedly lead at some point to
infringing downstream content as compared to dot torrent files found generally on the
19
Internet as a whole. Without such an analysis, there is no foundation to find that
20 Torrentspy induces or materially contribute to infringement merely by providing search
21 of the dot torrent file format on the Internet as a whole, as the dot torrent files found on
Torrentspy may be a comprehensive reflection of the statistical makeup of dot torrent
22 files on the Internet as a whole on the date and time of such a search or attempted
23 analysis and to enjoin defendants' sites is the equivalent of enjoining the Torrent file
protocol on the Internet. For example it could hardly be material contribution to
24
infringement if alleged third party content files for Google and other search engines, as
25 they relate to torrent files retrieved via Google and other search engines, are similar to
26
torrent files found on or linked to by defendants' sites (and thus there is little materiality
or inducement if the above sites merely reflect the state of dot torrent files on the Internet
27 as a whole) to provide an injunction in such an instance would in essence to outlaw a site
28 from having on it a Google generic search box for anything "filetype:torrent".
-35-
1 Here too, if any injunctive remedy is to be imposed, it must be "narrowly
2 tailored" to target and eliminate no more than the "exact source of the 'evil' it seeks to
3 remedy." Such an injunction should be "no broader than necessary to achieve its
4 desired goals." The provisions in Paragraph 1(b), 1(b)(i) and (2) are not specific but
5 excessive and overbroad and Defendants object thereto.
6
7 OBJECTION 5: DEFENDANTS OBJECT TO THE CONDITIONS
8 IMPOSED ON TRANSFERS OF ASSETS UNDER PARAGRAPH 3
OF THE PROPOSED PERMANENT INJUNCTION BECAUSE THE
9 IMPOSITION IS PUNITIVE AND WITHOUT CONNECTION TO
10 COPYRIGHT INFRINGEMENT.
11
Objection 5 presupposes that the Court has denied Objection 1 and decided to
12
issue a Permanent Injunction that contains the chief provision of Paragraph 1(a), which
13
prohibits Defendants from operating the “TorrentSpy System,” which term is defined
14
at 4:16-18 of the Proposed Permanent Injunction, namely, as “the software, websites,
15
electronic data, forums, guides, and FAQS that make up or support
16
www.torrentspy.com.”
17
In Paragraph 3 of the Proposed Permanent Injunction, at 6:15-19, appears the
18
following prohibition, to which Defendants, pre-supposing as set forth above, do not
19
object: “Defendants further shall not engage in a Transfer of TorrentSpy-Related
20
Assets with or to any person whom Defendants know to be engaged in conduct that
21
would violate the terms of Paragraph 1. The prohibitions apply to “any part of the
22
software, source code, data files, other technology, domain names, trademarks, or
23
brands used in connection with the TorrentSpy System.”
24
Defendants understand these prohibitions are intended to prevent the operation of
25
TorrentSpy.com under either Defendants’ management or under new management that
26
acquires assets from Defendants. Pre-supposing that these provisions are at the core of
27
a Permanent Injunction, a question is presented as to what further and additional
28
provisions, if any, are needed to protect Plaintiffs from future injury from Defendants.
-36-
1 With the understanding that the foregoing provisions will be in place, Defendants
2 object to any further injunctive provisions. In particular, Defendants object to the
3 remainder of Paragraph 3 that would impose additional restraints on any sale, lease,
4 give away, pledge or other transfer of Defendants’ business assets. Plaintiffs propose
5 that any transferee of such assets must sign various legal documents that apparently
6 expose such transferee to all sorts of expense and inconvenience, and perhaps some
7 sort of liability or sanction.
8 The effect of such an injunction is to destroy the value of the assets altogether.
9 The assets become unmarketable even if they are technological commodities.
10 Defendants cannot even “hypothecate” business assets by giving a bank a security
11 interest in all such assets as part of a loan package for an entirely different business
12 unless they get the bank to enter into this contentious litigation.
13 The effect is to punish Defendants without any connection between the
14 devaluation of any particular business asset and the claim of copyright infringement
15 against Defendants. Plaintiffs’ vague and general Complaint, that floats above any
16 actual infringement, becomes the justification for an all-encompassing system of
17 punitive restraints. Plaintiffs cannot and do not specify what Defendants did that made
18 Defendants liable for secondary copyright infringement so Defendants must be
19 prevented from doing anything at all.
20 It is well settled that injunctive relief looks to the future; it is "designed to deter,
21 not to punish." Rondeau v. Mosinee Paper Corp., 422 U.S. 49, 62, 45 L. Ed. 2d 12, 95
22 S. Ct. 2069 (1975) (internal quotations omitted). See also Brennan v. Saghatelian,
23 514 F. 2d 619, 622 (9th Cir. 1975), reh'g denied sub nom Dunlop v. Saghatelian, 520
24 F.2d 788 (9th Cir. 1975).
25 In United States v W. T. Grant Co., 345 US 629, 633, 97 L Ed 1303, 73 S Ct 894
26 (1953), the Court held:
27 “The purpose of an injunction is to prevent future violations, [citation], and,
28 of course, it can be utilized even without a showing of past wrongs. But the
moving party must satisfy the court that relief is needed. The necessary
-37-
1 determination is that there exists some cognizable danger of recurrent
2 violation, something more than the mere possibility which serves to keep the
case alive.”
3
4 See also Cummings v. Connell, 316 F.3d 886, 897 (9th Cir. 2003), quoting W. T.
5 Grant Co., supra.
6 Defendants submit that the additional restraints on transfer of business-related
7 assets set forth in Paragraph 3 are punitive. Federal Election Com. v Furgatch, 869
8 F.2d 1256 (9th Cir. 1989). They do not guard against “some cognizable danger of
9 recurrent violation,” but are designed simply to strike at tools and products that
10 Plaintiffs believe have been used in unlawful ways. This is nothing more than the
11 attempt to resurrect the ancient “desire of retaliation against the offending thing itself.”
12 Holmes, The Common Law (1881) at 34.
13 “...vengeance, not compensation, and vengeance on the offending thing, was
the original object. The ox in Exodus was to be stoned. The axe in
14
Athenian law was to be banished. The tree, in Mr. Tylor’s instance, was to
15 be chopped to pieces. The slave under all the systems was to be surrendered
16
to the relatives of the slain man, that they might do with him what they liked.
The deodand was an accursed thing.”
17 (Ibid., footnote omitted.)
18 There is no reason to treat the business assets of Defendants as “accursed things”
19 that should be so burdened with restraints as to become unmarketable and without
20 substantial value. Such burdens are merely punitive. Plaintiffs are seeking vengeance,
21 not guarding against future copyright infringements. Accordingly, Defendants object
22 to Paragraph 3 of the Proposed Permanent Injunction from the beginning thereof down
23 to the words “such an order’ at 6:15-16.
24 Dated: April 21, 2008 Respectfully submitted,
25 ROTHKEN LAW FIRM
26 /s/
27 Ira P. Rothken, Esq.,
Attorney for Defendants
28
-38-

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1 Ira P. Rothken (SBN #160029)

DEFENDANTS’ OBJECTIONS TO PROPOSED PERMANENT INJUNCTION

13 info hash will not be reindexed (Horowitz Deposition at 39:25 – 40:4):

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