INTELLECTUAL RESERVE, INC., a Utah corporation,
Plaintiff, vs. UTAH LIGHTHOUSE MINISTRY, INC., a Utah
corporation, et al., Defendants.
Case No. 2:99-CV-808C
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH,
CENTRAL DIVISION
75 F. Supp. 2d 1290; 1999 U.S. Dist. LEXIS 19103; 53
U.S.P.Q.2D (BNA) 1425; Copy. L. Rep. (CCH) P28,013
December 6, 1999, Decided
December 6, 1999, FiledDISPOSITION:
[**1] Plaintiff's motion for preliminary injunction granted.
COUNSEL: For INTELLECTUAL RESERVE, plaintiff: Berne
S Broadbent, Mr., Todd E Zenger, Mr., Michael M. Conger, KIRTON & MCCONKIE,
SALT LAKE CITY, UT.
For UTAH LIGHTHOUSE,
MINISTRY, JERALD TANNER, SANDRA TANNER, defendants: Brian M. Barnard, James L.
Harris, Jr., UTAH LEGAL CLINIC, SALT LAKE CITY, UT.
JUDGES: TENA CAMPBELL, United States District Judge.
OPINIONBY: TENA CAMPBELL
OPINION: [*1291] ORDER
This
matter is before the court on plaintiff's motion for preliminary injunction.
Plaintiff claims that unless a preliminary injunction issues, defendants will
directly infringe and contribute to the infringement of its copyright in the
Church Handbook of Instructions ("Handbook"). Defendants do not oppose a
preliminary injunction, but argue that the scope of the injunction should be
restricted to only prohibit direct infringement of plaintiff's copyright.
Having fully considered the arguments of counsel, the
submissions of the parties and applicable legal authorities, the court grants
plaintiff's motion for a preliminary injunction. However, the scope of the
preliminary injunction is limited.
Discussion
The United States Copyright Act allows a [**2]
court to "grant temporary and final injunctions on such terms as it may deem
reasonable to prevent or restrain infringement of a copyright." 17 U.S.C. §
502(a). Here, in determining whether plaintiff is now entitled to the injunctive
relief, the following factors are to be considered:
(1) substantial likelihood that the movant will eventually prevail
on the merits; (2) a showing that the movant will suffer irreparable injury
unless the injunction issues; (3) proof that the threatened injury to the
movant outweighs whatever damage the proposed injunction may cause the
opposing party; and (4) a showing that the injunction, if issued,
[*1292] would not be adverse to the public interest.
Equifax Servs., Inc. v. Hitz, 905 F.2d 1355,
1360 (10th Cir. 1990) (quoting Lundgrin v. Claytor, 619 F.2d 61, 63 (10th Cir.
1980)).
I. Likelihood of Plaintiff Prevailing on the
Merits
First, the court considers whether there is a
substantial likelihood that plaintiff will eventually prevail on the merits.
Plaintiff alleges that the defendants infringed its copyright directly by
posting substantial portions of its copyrighted material [**3] on
defendants' website, and also contributed to infringement of its copyright by
inducing, causing or materially contributing to the infringing conduct of
another. To determine the proper scope of the preliminary injunction, the court
considers the likelihood that plaintiff will prevail on either or both of its
claims.
A. Direct Infringement
To prevail on its claim of direct copyright infringement, "plaintiff
must establish both: (1) that it possesses a valid copyright and (2) that
defendants copied' protectable elements of the copyrighted work." Country Kids '
N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996). Defendants
initially conceded in a hearing, for purposes of the temporary restraining order
and preliminary injunction, that plaintiff has a valid copyright in the
Handbook, and that defendants directly infringed plaintiff's copyright by
posting substantial portions of the copyrighted material. n1 Defendants changed
their position, in a motion to dismiss, claiming that plaintiff has failed to
allege facts necessary to show ownership of a valid copyright. Despite the
defendants' newly-raised argument, the court finds, for purpose of
this [**4] motion, that the plaintiff owns a valid copyright on the
material defendants posted on their website. Plaintiff has provided evidence of
a copyright registration certificate, (see Verified Compl., Ex. A), and the
certificate "constitutes prima facie evidence of the validity of the copyright."
n2 Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 831 (10th Cir.
1993). Defendants have not advanced any additional affirmative defenses to the
claim of direct infringement. Therefore, the court finds that there is a
substantial likelihood that plaintiff will prevail on its claim of direct
infringement.
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n1 By so doing,
defendants did not admit fault or liability. (See Consent to Extension of
Temporary Order and Response, at 1.)
n2 This issue will be fully explored when the court decides the motion
to dismiss.
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End Footnotes- - - - - - - - - - - - - -
B.
Contributory Infringement
According to plaintiff, after
the defendants were ordered to remove the Handbook from their website, the
defendants began infringing plaintiff's [**5] copyright by inducing,
causing, or materially contributing to the infringing conduct of others. It is
undisputed that defendants placed a notice on their website that the Handbook
was online, and gave three website addresses of websites containing the material
defendants were ordered to remove from their website. Defendants also posted
e-mails on their website that encouraged browsing n3 those websites, printing
copies of the Handbook and sending the Handbook to others.
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n3 The term browse, as used in this order,
means to call up or open a website onto a computer screen.
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Although the copyright statute does not expressly
impose liability for contributory infringement,
the absence of such express language in the copyright statute does
not preclude the imposition of liability for copyright infringements on
certain parties [*1293] who have not themselves engaged in the
infringing activity. For vicarious liability is imposed in virtually all areas
of the law, and the concept of contributory infringement is
merely [**6] a species of the broader problem of identifying the
circumstances in which it is just to hold one accountable for the actions of
another.
Sony Corp. v.
Universal City Studios, Inc., 464 U.S. 417, 435, 78 L. Ed. 2d 574, 104 S. Ct.
774 (1984) (footnote omitted). Even though " the lines between direct
infringement, contributory infringement and vicarious liability are not clearly
drawn'" distinctions can be made between them. Id. at n.17 (quoting Universal
City Studios, Inc. v. Sony Corp., 480 F. Supp. 429, 457-58 (C.D. Cal. 1979)).
Vicarious liability is grounded in the tort concept of respondeat superior, and
contributory infringement is founded in the tort concept of enterprise
liability. See Demetriades v. Kaufmann, 690 F. Supp. 289, 292 (S.D.N.Y. 1988).
"Benefit and control are the signposts of vicarious liability, [whereas]
knowledge and participation [are] the touchstones of contributory infringement."
Id. at 293.
Liability for contributory infringement is
imposed when "one who, with knowledge of the infringing activity, induces,
causes or materially contributes to the infringing conduct of another." Gershwin
Publ'g Corp. v. Columbia Artists Mgt., Inc., 443 F.2d 1159, 1162 (2d Cir.
1971). [**7] Thus, to prevail on its claim of contributory
infringement, plaintiff must first be able to establish that the conduct
defendants allegedly aided or encouraged could amount to infringement. See
Subafilms, Ltd. v. MGM-Pathe Comms. Co., 24 F.3d 1088, 1092 (9th Cir. 1994).
Defendants argue that they have not contributed to copyright infringement by
those who posted the Handbook on websites nor by those who browsed the websites
on their computers.
1. Can the Defendants Be Liable Under a Theory of Contributory
Infringement for the Actions of Those Who Posted the Handbook on the Three
Websites?
a. Did those who posted the Handbook on the websites infringe
plaintiff's copyright?
During
a hearing on the motion to vacate the temporary restraining order, defendants
accepted plaintiff's proffer that the three websites contain the material which
plaintiff alleges is copyrighted. n4 Therefore, plaintiff at trial is likely to
establish that those who have posted the material on the three websites are
directly infringing plaintiff's copyright.
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n4 Defendants also have stated that they believe the three
websites contain the material which plaintiff alleges is copyrighted. (See Memo.
Re: Contributory Infringement, at 9 n.6.)
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- [**8]
b. Did the defendants induce, cause or materially contribute to
the infringement?
The
evidence now before the court indicates that there is no direct relationship
between the defendants and the people who operate the three websites. The
defendants did not provide the website operators with the plaintiff's
copyrighted material, nor are the defendants receiving any kind of compensation
from them. The only connection between the defendants and those who operate the
three websites appears to be the information defendants have posted on their
website concerning the infringing sites. Based on this scant evidence, the court
concludes that plaintiff has not shown that defendants contributed to the
infringing action of those who operate the infringing websites.
2. Can the Defendants Be Liable Under a Theory of Contributory
Infringement for the Actions of Those Who Browse the Three Infringing
Websites?
Defendants make two arguments in
support of their position that the activities [*1294] of those who
browse the three websites do not make them liable under a theory of contributory
infringement. First, defendants contend that those who browse the infringing
websites [**9] are not themselves infringing plaintiff's copyright;
and second, even if those who browse the websites are infringers, defendants
have not materially contributed to the infringing conduct.
a. Do those who browse the websites infringe plaintiff's
copyright?
The first
question, then, is whether those who browse any of the three infringing websites
are infringing plaintiff's copyright. Central to this inquiry is whether the
persons browsing are merely viewing the Handbook (which is not a copyright
infringement), or whether they are making a copy of the Handbook (which is a
copyright infringement). See 17 U.S.C. § 106.
"Copy" is
defined in the Copyright Act as: "material objects . . . in which a work is
fixed by any method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly or with the
aid of a machine or device." 17 U.S.C. § 101. "A work is fixed' . . . when its .
. . sufficiently permanent or stable to permit it to be perceived, reproduced,
or otherwise communicated for a period of more than transitory duration." Id.
When a person [**10] browses a website, and by
so doing displays the Handbook, a copy of the Handbook is made in the computer's
random access memory (RAM), to permit viewing of the material. And in making a
copy, even a temporary one, the person who browsed infringes the copyright. n5
See MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 518 (9th Cir. 1993)
(holding that when material is transferred to a computer's RAM, copying has
occurred; in the absence of ownership of the copyright or express permission by
licence, such an act constitutes copyright infringement); Marobie-Fl., Inc. v.
National Ass'n of Fire Equip. Distrib., 983 F. Supp. 1167, 1179 (N.D. Ill. 1997)
(noting that liability for copyright infringement is with the persons who cause
the display or distribution of the infringing material onto their computer); see
also Nimmer on Copyright § 8.08(A)(1) (stating that the infringing act of
copying may occur from "loading the copyrighted material . . . into the
computer's random access memory (RAM)"). Additionally, a person making a
printout or re-posting a copy of the Handbook on another website would infringe
plaintiff's copyright.
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Footnotes - - - - - - - - - - - - - - -
n5
Although this seems harsh, the Copyright Act has provided a safeguard for
innocent infringers. Where the infringer "was not aware and had no reason to
believe that his or her acts constituted an infringement of copyright, the court
in its discretion may reduce the award of statutory damages. . . ." 17 U.S.C. §
504(c)(2).
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End Footnotes- - - - - - - - - - - - - - [**11]
b. Did the defendants induce, cause or materially contribute to
the infringement?
The court
now considers whether the defendants' actions contributed to the infringement of
plaintiff's copyright by those who browse the three websites.
The following evidence establishes that defendants have actively
encouraged the infringement of plaintiff's copyright. n6 After being ordered to
remove the Handbook from their website, defendants posted on [*1295]
their website: "Church Handbook of Instructions is back online!" and listed the
three website addresses. (See Pl.'s Reply Supp. Mot. Prelim. Inj., Ex. 1; Memo.
Re: Contributory Infringement, at 9 n.6.) Defendants also posted e-mail
suggesting that the lawsuit against defendants would be affected by people
logging onto one of the websites and downloading the complete handbook. (See
id., Ex. 2.) One of the e-mails posted by the defendants mentioned sending a
copy of the copyrighted material to the media. (See id.) In response to an
e-mail stating that the sender had unsuccessfully tried to browse a website that
contained the Handbook, defendants gave further instruction on how to browse the
material. (See id.) [**12] At least one of the three websites
encourages the copying and posting of copies of the allegedly infringing
material on ether websites. (See id., Ex. 4 ("Please mirror these files . . . .
It will be a LOT quicker for you to download the compressed version . . .
Needless to say, we need a LOT of mirror sites, as absolutely soon as
possible.").)
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n6 Plaintiff at
this point has been unable to specifically identify persons who have infringed
its copyright because they were induced or assisted by defendants' conduct,
however, there is a substantial likelihood that plaintiff will be able to do so
after conducting discovery. There is evidence that at least one of the websites
has seen a great increase in "hits" recently. (See Pl.'s Reply Supp. Mot.
Prelim. Inj., Ex. 5.) Also, plaintiff does not have to establish that the
defendants' actions are the sole cause of another's infringement; rather
plaintiff may prevail by establishing that defendants' conduct induces or
materially contributes to the infringing conduct of another.
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Based on
the above, the court finds that the first element necessary for injunctive
relief is satisfied.
II. Irreparable Injury
Because this is a copyright infringement case and
plaintiff has demonstrated a likelihood of success on the merits, there is a
presumption of injury. See Country Kids ' N City Slicks, Inc. v. Sheen, 77 F.3d
1280, 1288-89 (10th Cir. 1996). In addition, plaintiff will suffer additional
immediate and real irreparable harm if defendants are permitted to post the
copyrighted material or to knowingly induce, cause or materially contribute to
the infringement of plaintiff's copyright by others.
III. Harm to Defendants
Defendants argue that
their First Amendment rights will be infringed by a preliminary injunction.
However, the First Amendment does not give defendants the right to infringe on
legally recognized rights under the copyright law. See Cable/Home Comm. Corp. v.
Network Productions, Inc., 902 F.2d 829, 849 (11th Cir. 1990). "Copyright
interests [] must be guarded under the Constitution, and injunctive relief is a
common judicial response to infringement of a valid copyright." Id. The court,
in fashioning [**14] the scope of injunctive relief, is aware of and
will protect the defendants' First Amendment rights.
IV. The Public Interest
Finally, it is in the
public's interest to protect the copyright laws and the interests of copyright
holders.
Order
Therefore, for
the reasons stated, the court orders the following preliminary injunction:
1. Defendants, their agents and those under their control,
shall remove from and not post on defendants' website the material alleged to
infringe plaintiff's copyright;
2. Defendants, their
agents and those under their control, shall not reproduce or distribute
verbatim, in a tangible medium, material alleged to infringe plaintiff's
copyright;
3. Defendants, their agents and those under
their control, shall remove from and not post on defendants' website, addresses
to websites that defendants know, or have reason to know, contain the material
alleged to infringe plaintiff's copyright;
Defendants
have not requested that a security be obtained from plaintiff. If defendants
consider a security to be appropriate in this case, defendants shall file a
motion and memorandum within twenty days from this date. Plaintiff shall then
have fifteen days after [**15] service to respond.
[*1296] A reply memorandum may be filed by defendants within seven
days after service.
IT IS SO ORDERED this 6th day of
December, 1999.
BY THE COURT:
TENA CAMPBELL
United States District Judge
