UPDATE:: Summer 2004:

The article that follows this update was written and posted during Summer 2003. The district court had ruled in favor of the Recording Industry Association of America's (RIAA's) use of DMCA copyright subpoenas to discover the identities of Verizon subscribers who were swapping music files over the Internet. On December 19, 2003, the U.S. Court of Appeals for the District of Columbia Circuit reversed the rulings of the district court. The D.C. Circuit found that the specific provisions of the DMCA in controversy, authorizing issuance of a copyright subpoena prior to filing an actual lawsuit, do not allow the subpoenas to issue to an ISP that is merely serving as a conduit between two Internet users.

The court of appeals noted that as a pre-condition for the subpoenas to issue, the DMCA requires an aggrieved party to serve a notice to the ISP to "remove" or "disable access to" the allegedly infringing material. In the case at bar, Verizon claims it was merely acting as a transmitter for the transitory peer-to-peer communications. The court reasoned that since Verizon was only functioning as a transmitting medium, as opposed to engaging in information storage, Verizon was exempted from the reach of the copyright subpoenas because there was no information to "remove" or "be disabled." Hence, there could be no notice to do so. The court avoided discussing Verizon's constitutional challenges to the DMCA, and instead based its holding on the ISP's basic statutory construction argument.

On May 24, 2004, the RIAA filed its petition in the Supreme Court of the United States for a writ of certiorari to the D.C. Circuit. For further case history visit the website of the U.S. Supreme Court, Docket No. 03-1579.

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COPYRIGHT SUBPOENA: NAMING NAMES

© 2003 Mark H. Barinholtz

Introduction

These days, my clients' copyright claims usually involve the Internet. Increasingly, the Internet is the means du jour to engage in unauthorized use. Most often, the identity of the infringer is evident. Sometimes, it is not.

This year, in the wake of the well-publicized Napster litigation, a pair of copyright rulings on subpoena enforcement have provoked a new stir. In what appears to be a case of first impression, federal District Judge Bates in Washington, D.C., put some teeth into a novel tool in the Digital Millennium Copyright Act of 1998 (DMCA) -- the copyright subpoena.

As a result, public perception is that the DMCA has become "big brother," stripping away constitutionally protected anonymity to invade the privacy of ordinary Internet users.

Recording Industry Assn. of America vs. Verizon Internet

The issues fleshed out in this controversy revolve around interpreting the meaning and scope of provisions of the DMCA pertaining to copyright subpoenas. The case began with a subpoena enforcement action brought last year by the Recording Industry Association of America (RIAA), seeking to compel Verizon Internet Services (Verizon) to disclose the identity of Verizon's customers (Internet users) who allegedly infringed copyrights in songs through the use of so-called "peer-to-peer" software.

Although the officially reported cases do not reveal much in the way of behind-the-scenes facts, Rolling Stone magazine does. Chronicling the ongoing miseries that the music business is suffering, Rolling Stone reports that for the first half of 2003 the industry meltdown continues. (RS 928) Record-label employee layoffs, retail record-store closings and declining CD sales, arguably impacted by unlawful Internet downloading, have driven the music business to fight back against piracy with tougher tactics.

The record industry, through its watchdog trade group the RIAA, has pursued an aggressive legal campaign against individual downloaders and file-swappers claimed to be infringing music copyrights, impacting record labels and others. Some of the early targets were students anonymously trading music files via the Internet. (RS 929) With the advent of "bots," a software tool used to detect the unauthorized distribution of copyrighted material over the Internet, the RIAA could discern the Internet Protocol address, but not the true identity, of an anonymous user alleged to have unlawfully downloaded over 600 songs in one day. In order to file a copyright infringement suit, the RIAA needed to know the identity of the alleged infringer. Only the service provider, Verizon, could identify that specific user.

Through the mechanism of the DMCA's Section 512(h) copyright subpoena, the RIAA sought to compel Verizon, an Internet service provider (ISP), to disclose the identity of its customers, the alleged infringers. The district court actions unfolded in two rounds of subpoena enforcement proceedings. In the first round, the RIAA sought to enforce a DMCA subpoena served on Verizon to disclose the identity of an alleged infringing downloader. The court upheld the subpoena's statutory validity, rejecting Verizon's argument it was only acting as an innocent conduit, not actually storing any infringing materials, and thus should be exempted from the scope of the DMCA's subpoena power. (240 F.Supp.2d 24) In the second round, Verizon moved to quash another DMCA subpoena on various constitutional grounds. The court denied the motion to quash, ruling that Verizon's constitutional arguments also were not persuasive. (257 F.Supp.2d 244)

The "Digital Millennium Copyright Act of 1998"

The DMCA was designed to foster electronic commerce on the Internet. In enacting the DMCA, Congress was concerned with protection of copyright owners' creative investments in the context of Internet technologies which make copyright theft easy, virtually instantaneous, and undetectable. Indeed, our courts have come to recognize that Internet piracy of intellectual property has reached epidemic proportions.

However, Congress also recognized that to promote the development of e-commerce there needed to be certain liability protections for Internet service providers (ISPs). In many cases, it would be unfair for ISPs to suffer liability for acts of copyright infringement by their customers improperly using the service providers' systems or networks. Among the trade-offs created by Congress within the DMCA were provisions which, to a great extent, immunize ISPs who are able to identify otherwise anonymous infringers, in exchange for assisting copyright owners in making such identifications of ISP customers who are misusing the service providers' systems. In so doing, Congress sought to balance the interests of ISPs, copyright owners, and lawful Internet users.

On October 28, 1998, then President Clinton signed the DMCA into law. It makes numerous amendments to the copyright law which impact the delivery and protection of copyrighted works in digital format, over the Internet and otherwise. The DMCA not only limits the liability of Internet online service providers, but also implements adherence by the United States to various international copyright treaties. The DMCA also establishes protections with regard to preventing the circumvention of copyright management information and other technological measures used by copyright owners to protect their works.

Behind much of this legislation, were the lobbying efforts of the copyright industries including motion pictures, music and publishing companies that hope to turn the Internet into a delivery medium for their products. However, all creators of copyrighted works should be better protected as well, both domestically and internationally, since they will enjoy a more secure environment for their works on the Internet.

The DMCA Section 512(h) Copyright Subpoena

Specific provisions of the DMCA allow a copyright owner or her representative, upon a prescribed notification to an otherwise innocent ISP and application to a United States district court, to obtain issuance of a subpoena which authorizes and orders the ISP to expeditiously disclose information sufficient to identify the alleged anonymous or pseudonymous infringer. The unique feature of this copyright subpoena provision is that the copyright owner only needs to open a miscellaneous file with the Clerk of the federal court, as opposed to filing an actual lawsuit. Presumably, the DMCA subpoena is a faster means to identify an infringer.

First, the copyright owner must alert the ISP by written notice. The notification to the ISP must identify the copyrighted work and the infringing material to be removed, and contain a statement by the complaining party that there is a good faith basis for believing that the accused online use is unauthorized. Next, in order to obtain the subpoena, the complaining party must file with the Clerk of court a copy of the notice given to the ISP, the proposed subpoena, and a sworn declaration that the purpose of the subpoena is limited to seeking the identity of the alleged infringer. Those requirements should be nominal to the copyright owner who acts in good faith.

In order for an otherwise innocent ISP to enjoy the safe harbor of limited liability, the DMCA requires the ISP to first qualify as a service provider. Then, the ISP must publicly designate an agent for purposes of receiving notification of claimed infringements. The designation is made to the Copyright Office which maintains a directory of online service providers who have complied with the DMCA's requirements. The designated agent disclosed to the Copyright Office is the person to whom the ISP notification must be sent.

Moreover, DMCA Section 512(f) contains substantial disincentives for any person (copyright owner, service provider or Internet user) who knowingly makes false statements under Section 512. Misrepresentations that material or activity is allegedly infringing, or false claims that the removal or disabling of the material was accomplished by mistake or misidentification, could result in liability for damages, including attorneys' fees, as a result of an ISP relying upon those false statements in disabling or ceasing to disable the accused material.

Is the DMCA Subpoena Getting a Bad "Rap"?

This controversy has attracted so much attention because it conjures up the specter of invasion of privacy, laying bare the anonymity behind which most law-abiding Internet users feel secure. This is no surprise, since the First Amendment protects anonymous speech, and the Supreme Court has held those protections extend to speech via the Internet.

But Judge Bates' two lengthy decisions carefully explain, bolstered with ample legal precedent, why he supported the DMCA's subpoena provisions. Also compelling was the fact that Verizon clearly warns its users not to infringe copyrights, and as a matter of corporate privacy policy alerts its subscribers that it will "disclose individual customer information to an outside entity ... when Verizon is served with valid legal process for customer information." Further, according to Judge Bates, Verizon did not produce any evidence that in the DMCA's five years of existence the Section 512(h) subpoena power had been used to identify anyone but Internet users engaged in copyright infringement. Moreover, it appeared to the court that the Internet user's expectation of privacy was doubtful, since peer-to-peer file sharing involves an individual voluntarily opening his computer to permit others, essentially the world, to download. Lastly, even Verizon conceded that if the RIAA had filed a copyright infringement complaint as a "John Doe" action, Verizon would have complied with a subpoena served through that lawsuit.

And what about the Internet users whose identities were disclosed through the DMCA subpoenas? The RIAA promptly filed its actual copyright infringement suits in April 2003. According to Rolling Stone, the suits named four students who ran local-area networks enabling trading in thousands of free music files. (RS 929) The suits sought approximately $900 million in damages based on $150,000 for each song allegedly ripped off. Within weeks, the RIAA settled with each of the students for low five-figures. While $15,000 is a large sum for the average student, the settlement was barely micro-pennies on the dollar for the damages asserted. Were the damages claims bona fide, or did the RIAA unfairly use the lawsuits as a public relations scare tactic? Stay tuned.

Conclusion

Due to the fact that major copyright industry players are involved, the controversy over the validity of the DMCA subpoenas will probably press on through all courts of appeal. As of the writing of this article, the district court decisions are before the United States Court of Appeals for the D.C. Circuit. However, Judge Bates' analysis appears to be thorough, well supported and likely to be affirmed. Unless a higher court finds defects, constitutional or otherwise, in the DMCA's copyright subpoena and related provisions, this new, efficient tool for tracking down infringers will likely prove useful in our increasingly complex digital universe.

© 2003 Mark H. Barinholtz

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