Late Friday, Puerto 80, the company behind Rojadirecta, filed its motion to dismiss
(pdf) the attempt to forfeit the two domains rojadirecta.org and rojadirecta.com. Because people get confused, a quick explanation is in order: the government already seized
the domains, which is a temporary process, but it is now trying to forfeit them permanently, which involves a separate (though similar) process. The part we wrote about on Friday, in which the court refused
to give back the domains, was more in dealing with the seizure. Now we've moved on to the discussion over forfeiture.
The argument put forth in the latest filing is actually quite specific and technical, but seems extremely compelling. In simplified form, it is that the Justice Department is making up a law that doesn't exist. More specifically, the argument is that the Justice Department is playing a bit of a game with the law here. It fails to allege the specific conditions necessary to prevail under the law it claims to be using -- and even admits that it fails on those key points. Instead, it appears to be trying to rely on the standards from a different law, which quite clearly in the law cannot be used for this kind of action. Separately, in a bit of a surprise, Puerto 80 does not even raise the First Amendment issue, though I have a theory as to why, which I'll explain later.
The details are a bit technical, so let's dive in. I will say, first off, that what's being argued over here is pretty technical, and trying to reduce it down to a simple "but of course it infringes!" is meaningless for a variety of reasons. I would hope that we can have this debate actually focus on the specifics of the argument, rather than a back and forth using broad brush strokes unrelated to the specifics of this case.
As for the specifics, in order to seize the domain, the government argued it had probable cause that these domains were property used for criminal copyright infringement. Criminal copyright infringement has some very specific hurdles that need to be met, as we've discussed before
, found in section 506
of US Copyright law. For this particular case the factors that matter are that the government must show that Rojadirecta willfully directly
infringed (by reproduction or distribution of) the copyrighted works of others which have a value of $1,000 or more, for the purpose of commercial advantage or financial gain. There are a few other factors related to criminal copyright infringement, but they simply are not relevant here, so we will ignore them.
with the government's attempt to forfeit these domains is that it completely fails
to allege a rather key component required under section 506: that Rojadirecta directly infringed
on anyone's copyrights. Instead, it only alleges that it was involved in indirect infringement
by linking to content hosted elsewhere. Again, for the sake of clarity, direct copyright infringement occurs when the specific party is actually copying
the content itself. There are, however, a number of different forms of indirect
copyright infringement, including contributory infringement, vicarious infringement and inducement. However, those are only
found in civil
copyright law and are not found in criminal copyright. Furthermore, no court can simply say that because they're in civil copyright law, they also appear in criminal copyright law, because criminal copyright law has to be specific in the statute, not driven by common law principles, as is the case with indirect infringement in civil copyright law.
What's amazing is that the government more or less concedes this point, by never even arguing that Rojadirecta directly infringed anyone's copyright, pointing only to the fact that it linked to works on other servers. The filing goes through a long
list of case law that shows it is extremely well-established in the law that, at best
linking can only be indirect infringement, and even then the barrier is quite high:
Because Puerto 80 did not copy anything, it cannot be found liable for direct
infringement by virtue of hosting links to content. This is a firmly established legal proposition
that has been affirmed time and time again by many courts. See CoStar Group, Inc. v. LoopNet,
Inc., 373 F.3d 544, 546 (4th Cir. 2004) (“Because LoopNet, as an Internet service provider, is
simply the owner and manager of a system used by others who are violating CoStar’s copyrights
and is not an actual duplicator itself, it is not directly liable for copyright infringement.”)
(emphasis in original). Accord Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 717 (9th Cir.
2007) (party from whose site content is actually transmitted and subsequently displayed on the
end-user’s screen is responsible for display, not search engine that merely links to that content);
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
copying.”); Arista Records, Inc. v. MP3Board, Inc., No. 00 CIV. 4660(SHS), 2002 WL 1997918,
at *4 (S.D.N.Y. Aug. 29, 2002) (linking to content does not implicate distribution right and thus,
does not give rise to liability for direct copyright infringement); Ticketmaster Corp. v.
Tickets.com, Inc., 54 U.S.P.Q.2d 1344, 1346 (C.D. Cal. 2000) (“[H]yperlinking does not itself
involve a [direct] violation of the Copyright Act (whatever it may do for other claims) since no
copying is involved. . . . [It] is analogous to using a library’s card index to get reference to
particular items, albeit faster and more efficiently.”); Bernstein v. JC Penney, Inc., No. 98-2958
R EX, 1998 WL 906644, at *1 (C.D. Cal. Sept. 29, 1998) (granting motion to dismiss on the
ground that hyperlinking cannot constitute direct infringement).
To further prove this point, the filing notes that if linking to copyrighted material existing elsewhere on the internet alone constituted direct copyright infringement, nearly every website online would be guilty, "including websites hosted by the Department of Justice and the White House," and then shows where both include links to others' works. On top of that, it points to the Justice Department's own manual
on Prosecuting Intellectual Property Crimes
and notes that it only
discusses direct copying, and never mentions any secondary or indirect copyright infringement issues as being applicable.
Even more damning, the filing points to both COICA and PROTECT IP, which try to establish some form of criminal secondary liability as evidence that even Congress knows existing copyright law has no such thing.
The standard response from those who support these efforts to seize and forfeit domains is that indirect infringement, or secondary liability claims, can work. However, this fails also, and shows where the government is either trying to make up a law that doesn't exist, or is playing a quick game of switcheroo between laws to try to get what it wants. As explained above, none of the secondary liability concepts found in civil copyright law are found in criminal copyright law. Supporters of these procedures always try to get around this by leaping over to "aiding and abetting" laws, which can
be used in relation to copyright under certain specific circumstances (with a pretty high bar). However
there are two massive
problems with this: (1) the government never
alleges aiding and abetting in its complaint. And there's a good reason for that: because the laws on forfeiture do not allow forfeiture for aiding and abetting
Let that sink in a bit. Because it basically undermines the entire case. In simplified form: for forfeiture to be allowed, the government must show direct
copyright infringement. And yet, it does not even try to. Instead, it seems to allege criminal secondary
infringement, which does not exist in the law
. For those who try to ignore the fact that there is no such thing as indirect infringement in criminal copyright law, and who argue that it's the same thing as "aiding and abetting," that argument fails equally, because the government did not allege aiding and abetting in its forfeiture claim... and that's because forfeitures are not allowed for aiding and abetting.
At this point, the only way the government wins is if the court either does not understand what the law actually says, or effectively pretends that the Justice Department's made up law exists, which it is expressly not allowed to do.
Separately, Puerto 80 points out that the government cannot and does not show "willful" infringement (which is necessary to allege criminal infringement), in part because of the two rulings in Spain that found Rojadirecta legal in its home country. Now, many have tried to argue that the rulings in Spain do not matter, because this is about US copyright law. And that is true to a certain extent. However, it is extremely relevant for presenting any evidence of willfulness
. A court would have to be convinced that the folks behind Rojadirecta somehow purposely set up a system that they knew was legal in Spain, while specifically willfully violating US copyright law. That seems like a massive hurdle (though perhaps less massive than the issue above of direct/indirect liability in criminal copyright law). Separately, the filing points out that the government makes no actual showing of willfulness (even unrelated to the Spanish rulings), merely noting that the ICE agent downloaded works that were covered by copyright. And yet (again) the case law is clear that just knowing of infringement is not enough to show willfulness, or (as the courts have held) it "would turn every copyright claim into willful infringement."
Finally, Puerto 80 argues that US copyright law can only be applied to infringement acts that occur in the US
, and points to a fun case we discussed earlier this year
, alleging infringement on the song Grandma Got Run Over By A Reindeer
. In that case, a Canadian resident uploaded a video with that song in Canada, and the court found that the defendant could not be sued in the US, even though the video was available in the US. This is a problem for the government's case:
Rojadirecta’s content (i.e., its links and discussion forums) is stored on servers residing outside the United States. Compl. ¶ 14(f) (alleging that the
domain names are hosted on a server in Canada). There is no allegation that Puerto 80 operates
its site from within the U.S., and indeed the Complaint appears to acknowledge that the
Rojadirecta site is based in Spain.... The government accessed the links which
directed them to the allegedly infringing material by visiting a site hosted outside the United
States. Thus, each step of the process occurs outside the United States, and any material that
Puerto 80 has control over resides on serves outside the United States. Therefore, no act of
infringement by Puerto 80 has taken place in the United States. Accord Perfect 10, Inc. v.
Amazon.com, Inc., 487 F.3d 701, 718-19 (9th Cir. 2007) (copying (and therefore infringement)
occurs when material is stored on server).
Not surprisingly, I find that this filing is really quite compelling and strong. I don't see how a judge who actually understands the filing can rule against Puerto 80 in this case.
Now, as for the surprise that First Amendment issues aren't being raised at all in the filing (especially since the judge on Friday specifically noted that Puerto 80 could raise such issues in this very filing). The only thing I can figure is that since this is the lawsuit over forfeiture
, rather than the seizure
, the First Amendment issue is moot. That is, prior restraint only occurs when there's a restriction on speech before it's deemed illegal. At this stage of the legal fight, they're arguing over whether or not the speech is legal or not, so there's no First Amendment issue to be argued. But, even then I'm not entirely sure, since even the judge suggested the First Amendment issues could be raised at this stage of the game. Either way, I'm surprised.
No matter what, this case is certainly one to follow closely. When the government replies, we'll go through that as well...