This morning, we wrote about the list of sites
that ICE knew was challenging its domain seizures, and some people complained that there still were no details. There's been a lot happening behind the scenes, but the first bit of public information is now available, as the company behind Rojadirecta, Puerto80 has officially filed suit against the US government, demanding the return of its domains. Not only that, but it's brought on some top notch legal talent to help them. The company is represented by Ragesh Tangri and Mark Lemley from Durie Tangri. If you're at all familiar with intellectual property law, you know who Lemley
is, and know the level of respect he gets within intellectual property circles. In fact, it's interesting to note that one of Lemley's papers is one that we've seen frequently cited by those who believe the domain seizures are legal. The fact that he's arguing on the other side seems pretty telling.
As for the filing itself, it details the stalling
by the US government that we pointed out last month:
Contrary to the grounds on which the domain names were seized, the Rojadirecta site is
not violating copyright law, let alone criminal copyright law. Rojadirecta explained this to the
government when, on February 3, 2011, it sent ICE and the Department of Justice a letter
requesting immediate return of the subject domain names pursuant to 18 U.S.C. § 983(f).
Following that letter, counsel for Puerto 80 Projects, S.L.U. (“Puerto 80” or “Petitioner”), the
company which owns the sites, repeatedly tried to discuss the seizure with the government, but
was unable to engage with the government until it notified the U.S. Attorney’s Office of its intent
to seek a temporary restraining order and file a petition for immediate return of the seized
domain names. It was not until then that Puerto 80 was able to have a substantive conversation
with the appropriate officials. Hoping to avoid burdening the court, Puerto 80 held off filing the
instant petition pending the outcome of those negotiations. On May 26, 2011, the government
informed counsel for Puerto 80 that the only acceptable “compromise” would entail Puerto 80
prohibiting its users from linking to any U.S. content anywhere on its sites. Because this
“solution” would prohibit Puerto 80 from engaging in lawful acts not prohibited by copyright
law, Puerto 80 chose instead to challenge the seizure in court.
The filing notes that it is asking the court to speed up the process, as it tried to be patient, but the delays in reclaiming the domain are harming Puerto 80's business. It also notes that "in
hopes of avoiding having its property tied up in lengthy forfeiture proceedings, Puerto 80
decided to engage in good faith negotiations with the government and held off filing the instant
petition pending the outcome of those discussions." It then lists out all of the detailed attempts to get the domains back. It involves multiple attempts by Puerto 80's lawyers to discuss this with the Justice Department, and as we heard from pretty much all the sites in this process, talking to anyone substantial proved to be quite difficult. It also notes that "the government attempted to dissuade Puerto 80 from filing anything in
district court." That supports our contention that the government really wanted to avoid a legal challenge...
As for the specific legal arguments, it starts out by pointing out that under the rules for seized property, there are certain conditions under which the seized property should be returned -- with a key one being that "the
property will be available at the time of the trial." As we've discussed at length, the key official reason for seizures is to preserve evidence. That's why this is a key element here: if the evidence will be there, there is no reason for the seizure.
Then out come the big guns, starting with the claim (as we've suggested in the past) that the seizure represents unlawful prior restraint (i.e., a violation of the First Amendment). Here's a big chunk of the filing, included in its entirety (minus footnotes), because it's quite interesting:
The seizure imposes another hardship on Puerto 80, in that it constitutes an invalid prior
restraint and suppresses its users’ and readers’ protected First Amendment activities. See Fort
Wayne Books, Inc. v. Indiana, 489 U.S. 46, 63 (1989) (“[W]hile the general rule under the Fourth
Amendment is that any and all contraband, instrumentalities, and evidence of crimes may be seized on probable cause . . . ., it is otherwise when materials presumptively protected by the
First Amendment are involved.”). See also Maryland v. Macon, 472 U.S. 463, 468 (1985) (“The
First Amendment imposes special constraints on searches for and seizures of presumptively
protected material, and requires that the Fourth Amendment be applied with ‘scrupulous
exactitude’ in such circumstances.”) (internal citation omitted); Lo-Ji Sales, Inc. v. New York,
442 U.S. 319, 326, n.5 (1979) (noting that the First Amendment imposes special constraints on
searches for, and seizures of, presumptively protected materials). In Fort Wayne, state and local
officials (respondents) filed a civil action pursuant to Indiana’s RICO laws, alleging that the
defendant bookstores had engaged in a pattern of racketeering activity by repeatedly violating
Indiana’s obscenity laws. 489 U.S. at 50-51. Prior to trial, respondents petitioned for, and the
trial court granted, immediate seizure of the bookstores pursuant to a state law that permitted
courts to issue seizure orders “upon a showing of probable cause to believe that a violation of
[the State’s RICO law] involving the property in question has occurred.” Id. at 51. On appeal,
the Supreme Court held that the pretrial seizure order was unconstitutional, stating that “mere
probable cause to believe a legal violation has transpired is not adequate to remove books or
films from circulation.” Id. at 66. As in Fort Wayne, the government here has seized an entire
business and effectively suppressed all of the expressive content hosted on it, including political
discussions, commentary, and criticism by the site’s users—without it being determined whether
the seizure was “actually warranted” under the relevant statutes. Id. at 67.
In Center for Democracy & Technology v. Pappert, 337 F. Supp. 2d 606, 619 (E.D. Pa.
2004), the Eastern District of Pennsylvania struck down, on First Amendment grounds, a
Pennsylvania statute that permitted the state’s Attorney General or a district attorney to seek a
court order requiring an Internet Service Provider (“ISP”) to “remove or disable items residing
on or accessible through” the ISP’s service upon a showing of probable cause that the item
constituted child pornography. The district court found that the statute imposed an
unconstitutional prior restraint on speech. It concluded that under Fort Wayne Books and Bantam Books v. Sullivan, 372 U.S. 58 (1963), a court must “make a final determination that
material is child pornography after an adversary hearing before the material is completely
removed from circulation.” Pappert, 337 F. Supp. 2d at 657 (emphasis added). The court
further noted that the state statute “allow[ed] for an unconstitutional prior restraint because it
prevents future content from being displayed at a URL based on the fact that the URL contained
illegal content in the past.” Id.
In the instant case, the government effectively shut down an entire website, suppressing
all of the speech hosted on it, based on an assertion that there was probable cause to believe that
some of the material linked to by the website (though not found on the website itself) might be
infringing. The site’s owner was not provided any advance notice, nor was he provided the
opportunity to contest the seizure before (or, for that matter, shortly after) the government shut
down the site. Nor were the site’s users afforded any notice or opportunity to contest the seizure.
Because case law is clear that “mere probable cause to believe a legal violation has transpired is
not adequate to remove [protected material] from circulation,” Fort Wayne, 489 U.S. at 66, the seizure of the expressive materials in this case violates the First Amendment. See also Pappert,
337 F. Supp. 2d at 657 (finding that a procedure that permits a judge to make an ex parte finding
of probable cause that material is child pornography, with no opportunity for the content
publisher to receive notice or be heard, violates the First Amendment). This First Amendment
deprivation extends not just to registered users of Rojadirecta, but also to anyone wishing to visit
the website. See, e.g., Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425
U.S. 748, 756 (1976) (“[T]he protection afforded is to the communication, to its source and to its
recipients both.”); Red Lion Broad. Co. v. FCC, 395 U.S. 367, 390 (1969) (“It is the right of the
public to receive suitable access to social, political, esthetic, moral, and other ideas and
experiences . . . . That right may not constitutionally be abridged . . . .”).
If you want the key bit, it's from that third paragraph above. One of the footnotes also points out (as we've noted elsewhere
) that the government appears to have made up, whole cloth, the idea that linking to infringing content can be seen as criminal
Indeed, several courts have held that the act of indexing and linking to copyrighted material—
which was the government’s basis for seizing the domain names—is not direct or indirect
copyright infringement. See Field v. Google Inc., 412 F. Supp. 2d 1106 (D. Nev. 2006); see also
Ticketmaster Corp. v. Tickets.com, Inc., No. CV 99-7654 HLH(BQRX), 2000 WL 525390, at *2
(C.D.Cal. Mar. 27, 2000) (finding that hyperlinking to other sites does not constitute direct
infringement); Arista Records, Inc. v. MP3Board, Inc., No. 00 CIV. 4660, (SHS) 2002 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 liability for direct copyright infringement);
Online Policy Group v. Diebold, Inc., 337 F.Supp.2d 1195, 1202 n.12 (N.D. Cal. 2004)
(“Hyperlinking per se does not constitute direct copyright infringement because there is no
Finally, the filing points out that the domain names did not meet the conditions set out under US law to qualify for seizure in the first place, saying that it is not contraband, evidence, "particularly suited for illegal activities" or "likely to be used to commit additional criminal acts." That last one, I assume, is the one that most supporters of the seizures will take issue with, but, the argument is again laid out in tremendous detail:
Puerto 80 does not host any infringing material on the websites which operate under the
subject domain names... In the same way a search engine or other site which
aggregates links to existing material on the Internet, Rojadirecta provides an index of links to
streams of sporting events that can already be found on the Internet through a search for those
sites or simply by typing the URL for the site directly. Id. Such activity does not constitute
direct copyright infringement, much less criminal infringement. See supra, at note 8. Indeed,
United States Senator Ron Wyden (D-Or) made this point in a letter he wrote to ICE Director
John Morton and Attorney General Holder expressing concern over the government’s seizure of
the subject domain names....
Puerto 80’s operation of the Rojadirecta site does not constitute contributory
infringement because the subject domain names are capable of—and are, in fact, used for— substantial non-infringing uses. Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417,
reh’g denied, 465 U.S. 1112 (1984); Arista Records LLC v. Lime Group LLC, 715 F. Supp. 2d
481, 517-18 (S.D.N.Y. 2010) (summary judgment inappropriate where material fact existed as to
whether file-sharing program, which was “used overwhelmingly for infringement,” is “capable
of substantial non-infringing uses.”).
Nor is Rojadirecta a site devoted simply to linking to such streams. In addition to
providing a forum for discussion on sports, politics, and a variety of other topics, the Rojadirecta
site enables users to post links to authorized sports broadcasts. For example, on Saturday,
February 12, 2011, the Rojadirecta site (hosted on the rojadirecta.es domain name) provided a
link to “9:30am Hockey (NHL): Los Angeles – Washington.”... Clicking on
this link opened a new window for the Yahoo! sports website for the National Hockey League,
and provided a live stream of the match between the Los Angeles Kings and Washington
Nor does Puerto 80’s operation of the Rojadirecta site constitute vicarious liability
because it does not have “a right and ability to supervise that coalesce[s] with an obvious and
direct financial interest in the exploitation of copyrighted materials.” Softel, Inc. v. Dragon
Med. & Sci. Commc’ns Inc., 118 F.3d 955, 971 (2d Cir. 1997) (quoting Shapiro, Bernstein & Co.
v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963) (emphasis added)). Puerto 80 does not
receive any revenue that is derived from specific content hosted on, or streamed by, the sites to
which it links.... In other words, Puerto 80 does not receive any revenue from
any site to which a user can link from the subject domain names based upon the content of that
site. Id. To the extent there is any site to which Rojadirecta links that contains infringing
material, Puerto 80 receives no specific financial benefit from a user clicking through to that site
and viewing such content.... Because Puerto 80’s revenues are not tied to whether or
not infringing material is linked to or accessed, the government cannot show that Puerto 80 has a “direct financial interest in the exploitation of copyrighted materials” which “coalesce[s] with”
any right or ability to supervise what is linked to on the site. See Artists Music, Inc. v. Reed
Publ’g (USA), Inc., Nos. 93 civ. 3428(JFK), 73163, 1994 WL 191643, at *6 (S.D.N.Y. May 17,
1994) (direct financial benefit not established where defendant leased space at a trade show for a
fixed fee to exhibitors who played infringing music, but defendant’s revenues were not
dependant on whether exhibitors actually played music or what they played); Viacom Int’l Inc. v.
YouTube, Inc., 718 F. Supp. 2d 514, 521 (S.D.N.Y. 2010) (in DMCA safe-harbor context,
“financial benefit directly attributable to the infringing activity” not established “where the
infringer makes the same kind of payment as non-infringing users of the provider’s service”)
(quoting Senate Judiciary Committee Report and the House Committee on Commerce Report,
H.R. Rep. No. 105-551, pt. 2 (1998)).
Furthermore, the filing points out that the government totally failed to meet the requirements to show criminal
copyright infringement, and notes that the government cannot show that Rojadirecta meets those requirements.
The full filing is embedded below, but I've pulled out most of the key points above... Earlier this morning we had supporters of the domain seizures insist that no one was actually filing lawsuits in the US over this. It will be interesting to see how they respond to this particular filing.