A Commentary by T. R. Halvorson
T. R. Halvorson is a lawyer in sole practice in Sidney, MT, President of Pastel Programming Co., a division of Synoptic Text Information Services, Inc., and author of Law of the Super Searchers: the Online Secrets of Top Legal Researchers, How to Avoid Liability: The Information Professional's Guide to Negligence and Warranty Risks, and Legal Liability Problems in Cyberspace: Craters in the Information Highway.
Published March 15, 2000
Yet Another Legal Apocalypse
Federal Judge Tena Campbell issued a preliminary injunction ordering a defendant to remove from its website the URLs of pages at other websites that it knew contained infringing copies of a copyrighted work of the Mormon Church. (Order, December 6, 1999, Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc., U.S. District Court, Central District of Utah, Case No. 2:99-CV-808C.). The order has evoked widespread and strong reaction.
"A ruling this week by a federal court in Utah could represent a body blow to a key feature of the Web: linking users of one site to information on others." -- Stephen Lawson, Copyright Ruling Targets Web Links, CNN.com, December 14, 1999.
"A Federal judge in Utah has issued a ruling that could fundamentally alter, if not destroy, the Web as it exists today." -- Chris Sherman, The End of Linking?, About.com, December 10, 1999.
"... a ruling that could undermine the freedom to create links on the Web ..." -- Carl S. Kaplan, Copyright Threatens Freedom to Link, The New York Times, December 10, 1999.
"If that decision ultimately holds up, then linking is definitely dead." -- Jeffrey R. Kuester, copyright lawyer practicing cyberspace law at Thomas, Kayden, Horstemeyre & Risley, as quoted by Kaplan.
Repetition of this chorus by usually reliable sources probably has convinced many people that the sky is falling. What do you think? Are the federal courts going to destroy ALSO, CataLaw, FindLaw, Heiros Gamos, Katsuey's Legal Links, LLRX.com, Meta-Index for U.S. Legal Research, The Virtual Chase, WashLaw Web, Yahoo!, and the rest of the Web? Should they rush to take down their links for fear of the courts? They can do that if they want, but I am not rushing to take down TR's Legal Research Links nor Good Stuff - A Collection of Resources for Searchers, and I am not leaving links out of this article. I am reasonably sure the preliminary injunction said no such thing.
The form of the question posed in the About.com poll accompanying Paul S. Reed's article, Illegal Links: Utah Case Demonstrates Need for Rethinking 'Net IP Law, stands in the fine tradition of polling that makes the response a foregone conclusion: "Are you comfortable with the idea that you might technically be a copyright infringer whenever you visit copyrighted websites?" They might as well ask, "Do you feel comfortable with the bill in Congress that would outlaw automatic washers and driers and force women to beat the laundry on rocks down at the creek?" The question requires the respondent to assume the bill says that, and About.com's poll leads respondents to assume that the preliminary injunction makes you a copyright infringer when you visit copyrighted websites.
A student once asked Professor Martin Luther a question about the end of the world. Assuming we could know when the world would end and we knew the end would be tomorrow, he said, what would you do today? Dr. Luther replied, "I would plant a tree." In this article I invite you to join me in a cybernetic arbor day.
The Church of Jesus Christ of Latter-day Saints authored a work titled Church Handbook of Instructions. Intellectual Reserve, Inc. is the corporation that holds the copyrights in works of the Mormon Church. Attached to its Verified Complaint as Exhibit "A" is a copyright registration certificate. The certificate "constitutes prima facie evidence of the validity of the copyright."1
By statute, the holder of copyright enjoys a bundle of rights,2 including:
- the exclusive right of first publication
- the exclusive right to control reproduction
- the exclusive right to control distribution
The copyright holder has the sole right to exercise any of the exclusive rights of copyright and to exclude others from exercising any of the rights, but these broad rights are qualified by various statutory limitations. The "fair use" limitation applies to every exclusive right in the bundle while other limitations apply only to specified rights.
Intellectual Reserve contends that the Handbook is an unpublished work. I have found no dispute of that by Utah Lighthouse Ministries.
The fact that a work is unpublished is a critical element of its "nature." 3 Nimmer § 13.05[A]; Comment, 58 St. John's L Rev, at 613. Our prior discussion establishes that the scope of fair use is narrower with respect to unpublished works. While even substantial quotations might qualify as fair use in a review of a published work or a news account of a speech that had been delivered to the public or disseminated to the press, see House Report, at 65, the author's right to control the first public appearance of his expression weighs against such use of the work before its release. The right of first publication encompasses not only the choice whether to publish at all, but also the choices of when, where, and in what form first to publish a work.
Harper and Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 564, 105 S.Ct. 2218, 85 L.Ed. 2d 588 (1985). In the exercise of these rights, the Mormon Church elected to produce a "privately printed, unpublished handbook."3 It is a "limited-distribution book that enables lay clergy to administer the affairs of the Church."4 "Officers who leave their positions must return their copy."5 The work contained the following notice of copyright immediately below its title:
The Church of Jesus Christ of Latter-day Saints
Salt Lake City, Utah
© 1998 by Intellectual Reserve, Inc.
All rights reserved
Utah Lighthouse Ministry says someone anonymously left a computer disc in its mailbox containing a copy of the Handbook. It published a verbatim copy of the tenth chapter and portions of two other chapters at its website. Intellectual Reserve asked Utah Lighthouse Ministry to cease publication. The Lighthouse continued publication and Intellectual Reserve filed suit.
The court issued a temporary restraining order requiring the Lighthouse to stop any verbatim reproduction or distribution of Intellectual Reserve's copyrighted material. From a reading of all court documents that I can find online6, the articles of other writers cited in this article, and articles in The Salt Lake Tribune,7 I cannot find where Utah Lighthouse Ministry ever opposed the temporary restraining order. The Consent to Extention of Temporary Order & Response stipulates that the temporary restraining order may remain in effect as a preliminary injunction, and the Order of December 6, 1999 recites that the Lighthouse did not oppose a preliminary injunction against direct infringement.
A preliminary injunction is issued without prejudice to the final determination of the issues of the case at trial. Few of the writers who have induced negative reaction to the court's ruling give due emphasis to this trait of preliminary injunctions. Readers easily, though incorrectly, infer that the preliminary injunction were the court's final determination of whether the work is copyrighted, whether posting copies of chapter ten and portions of two other chapters was a direct infringement, and whether publishing the URLs of pages at other websites that the Lighthouse knew contained infringing copies of a copyrighted work was part of a contributory infringement. That just is not so. The function of a preliminary injunction is to preserve the status quo while the case proceeds toward final determination. The status quo is that Intellectual Reserve has made a prima facie showing of a copyrightable work by producing a copyright registration certificate and a showing of probable direct infringement. In copyright litigation where a prima facie showing of a copyright and a showing of probable infringement have been made, a court is not supposed to act like a fire truck parked by a burning house that refuses to apply water until it is determined whether the insurance will pay. While that is being decided, the house can burn down.
The same writers fail to give due emphasis to the fact that Utah Lighthouse Ministry stipulated to continuing the temporary restraining order against direct infringement as a preliminary injunction. To satisfy us, was the court supposed to deny a preliminary injunction that one party asked for and the other party agreed to? We are not parties to the suit and adjudication is not legislation. Does the granting of the preliminary injunction under those circumstances say much about what might have happened had it been opposed? Does it say much about what would happen in some other case where a preliminary injunction is opposed? Is the distinction between stipulation and opposition so subtle? How hard would it be for defense counsel in some other case to distinguish that case from this one on the ground that in this one, the parties agreed? It would not be difficult at all.
At least three other websites published complete copies of the Handbook. On those sites, as in the hardcopy book, the copyright notice appears immediately below the title and within the first screen in a browser. At least one of the sites encouraged copying and posting copies of the Handbook on more websites:
"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."
The court had ordered Utah Lighthouse Ministry to remove directly infringing material, namely, chapter ten and portions of two other chapters, from its site. While under that order, the Lighthouse:
- posted on their website "Church Handbook of Instructions is back online!"
- published email suggesting that the lawsuit against them would be affected by people logging onto one of the websites and downloading the complete Handbook
- published email mentioning sending a copy of the copyrighted material to the media
- in response to email stating that the sender tried to browse a site that had the Handbook but was unsuccessful, gave further instructions on how to browse it
- published URLs where people could get the complete Handbook
Query: does Judge Campbell's finding of contributory infringement in such a context rest solely on the publishing of URLs where infringing material could be found? The writers write as though that were true and threatens to "destroy the web as it exists today."
I think not. The publishing of the URLs was one thread in a tapestry of purposely subverting an order of court. The tapestry, not the thread, is what got Utah Lighthouse Ministry into trouble. Publishing the URLs was part of a larger end run around an order of court to which they agreed. The Lighthouse made that end run for the acknowledged and published purpose of affecting the litigation.
Mike Mehrman, an intellectual property attorney, said the Utah Lighthouse Ministry arguments are futile.
If they knew the same material was printed elsewhere, then it's illegal to publicize those other venues, said Mehrman, of Atlanta-based Jones & Askew. "They're trying to avoid the scope of the judge's order," he said.
Kathleen Ohlson, "Judge bars group from posting URLs for Mormon handbook," Online News, Computerworld, December 13, 1999.
In our imaginations, we might envision some other case where a court might rule that the sole act of posting URLs to infringing material is contributory infringement, but that has not happened in this case. How difficult would it be for defense counsel in another case to distinguish the Lighthouse case by distinguishing the tapestry and the thread? It would not difficult at all. Another court would have to be slipping more than one cog in its mental gears to view the Lighthouse case as holding that the single act of publishing URLs to infringing material is contributory infringement. The other court might make that ruling, but it would have to rely on something besides the Lighthouse case.
Query: does Judge Campbell's finding of contributory infringement mean you might technically be a copyright infringer whenever you visit copyrighted websites as presupposed by About.com's survey question?
I think not. When The New York Times publishes a copyrighted article on the web, it grants us an implied license to read it. Intellectual Reserve did not publish the Handbook on the web. Direct infringers did that. Can direct infringers, by the wrongful act of infringing, impose upon the holder of a copyright an involuntary license? Is the difference between posting by the holder and posting by an infringer so subtle? That difference is glaring and ought to calm the apocalyptic hysteria of the urban legend the writers are creating. The suggestion that Judge Campbell's order means you infringe the copyright of The New York Times when you read it online is baseless.
Query: will Judge Campbell's ruling have a chilling effect on anyone who wants to tell someone else where something can be found on the Web. Jeffrey Kuester is quoted in The Salt Lake Tribune as saying that if Judge Cambell's ruling stands, "it is going to have a chilling impact on anyone who wants to tell someone else where something can be found on the Web."8 Berne Broadbent, a lawyer for Intellectual Reserve, said the judge's decision "won't chill linking in general."9
I think it will not. Hysteria about prior linking cases has proved to be just that, hysteria.10 The holdings of prior cases have been held to the factual context of those cases. That is no surprise. A fundamental principle of jurisprudence in Common Law adjudication is minimalism: a court deciding a question of first impression will attempt to do so on the most minimal scope available to avoid prejudice to further consideration of the new field by the judiciary in subsequent cases. At the stage of issuing a temporary restraining order, which pops up rapidly, a court might not have had sufficient opportunity to think through the application of minimalism to the case. By final adjudication, and more certainly on appeal, minimalism is very likely to set in.
One of the previous hysterias related to linking and framing. Writers roller-brushed the issue as though all framing per se were bad. That was as good as saying that the courts viewed a technology, framing in that instance, as inherently evil. In truth, the courts view framing the way they typically view technology, as adiaphora ("things indifferent"), as things neither good nor evil in themselves, but which might be used for good or ill. Consider an an old communication technology, billboards along highways. If one firm built a billboard in front of another firm's billboard so that the second billboard obscured motorists' view of the first one, a court likely would be sympathetic to a cry of foul. Would the courts have banned billboards? Or course not. Billboards are adiaphora. Obscuring someone else's communication is a wrong against the person whose communication is obscured, never mind the technology involved. On the information highway, it is the same. Framing cases never have stood for the proposition that frames are bad. They have stood for such propositions as, for example, that using frames to obscure someone else's communication is bad.
Though often criticized for this, actually it is fortunate that the judiciary lives somewhat in a world apart. While the chorus of writers establish a conventional wisdom that over-blows the impact of linking decisions and collectively prove their view is right by a hypertext spaghetti of cross footnoting one another, the courts won't pay much attention to that. They won't discern the holdings of prior precedent in the apocalyptic terms of the urban legend writers create. They will get their understanding of what courts have previously held by reading those courts. The effect will be that courts will not apply earlier cases in the way the prophets say. The chill won't come from the courts. The chill will come from the writers. The urban legend we're creating will impinge upon our freedom more than the holdings of the courts will. In Montana, we call that shooting ourselves in the foot. Somewhere else they might call it psyching ourselves out.
Judge Campbell says, "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." Based on that statement, some writers ridicule the court for concluding that the Lighthouse committed contributory infringement. They are reading indistinctly.
Vicarious liability and contributory infringement are distinct legal theories of liability. A contribution to "infringing action" goes to the issue of vicarious liability. Having found no contribution by Utah Lighthouse Ministry to the infringing action of other websites, the court correctly ruled that there was an insufficient showing to support a finding of vicarious liability. Whether a party has contributed to the infringing action of another does not go to the alternate theory of liability, contributory infringement.
The court cited Demetriades v. Kaufmann, 690 F.Supp. 289, 293 (S.D.N.Y. 1988) for the distinction between vicarious liability and contributory infringement: "[B]enefits and control are the signposts of vicarious liability, [whereas] knowledge and participation [are] the touchstones of contributory infringement." The Lighthouse had knowledge and participation. That supports a finding of contributory infringement never mind whether vicarious liability was shown.
Contributory conduct can be of two types. It can be personal conduct that forms part of or furthers the infringement; conduct that "induces, causes or materially contributes to the infringing conduct of another." For example, A may actively assist B to illegally copy a copyright item. Conduct can also take the form of contribution of items or machinery that provide the means to infringe and an example of this would be A giving to B a dubbing machine so that B can copy tapes but A does not actually take part in the action of copying. A simple causal relationship is all that is required. Contributory infringement, in this respect, differs from vicarious liability. As will be discussed further below, vicarious liability requires a relationship of control and benefit between the primary actor and the vicarious infringer.
Yee Fen Lim, The Application of the Doctrines of Contributory Ingringement and Vicarious Liability to Internet Service Providers, 3 W. Va. J. L. & Tech. 2 (March 15, 1999) <http://www.wvjolt.wvu.edu/v3i2/lim.htm>
The writers also ridicule the court for holding that the act of browsing on the web involves "copying." They write as though Judge Campbell just made that up as she went along, that she is a dangerous maverick. The truth is that, whatever her private philosophy on the issue might be, Judge Campbell submitted the power of the trial court bench to the authority of the appellate courts and precedent. That is what trial courts are supposed to do. Whether browsing involves copying already was decided in MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 518-19 (9th Cir. 1993), Marobie-FL, Inc. v. National Assoc. of Fire Equip. Distribs., 983 F. Supp. 1167 (N.D. Ill. 1997), Religious Technology Center v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995). Judge Campbell also cited Nimmer on Copyright, § 8.08(A)(1).
The Lighthouse has appealed to the U. S. Court of Appeals for the Tenth Circuit. The Electronic Frontier Foundation, a non-profit group that studies cyberspace freedom of expression issues, has promised to get involved in in the appeal.11 According to The Salt Lake Tribune, Robin Gross, staff attorney for EFF says, "It has never been illegal for someone to say 'Go down to Joe's warehouse. He has pirated CDs down there.' These restrictions represent a huge leap [in the law]."12
Is that analogy whole, or did it leave out a few things. Did Lighthouse just post URLs where people could find pirated copies of the Handbook?
The Lighthouse itself posted a pirated copy of chapter ten and portions of two other chapters. Then they agreed to an order not to publish pirated material from the Handbook. Then they pointed people to sites with complete pirated copies where people were encouraged to not merely browse but download and mirror the Handbook with as many copies as they could get as fast as they could get them. They posted information that their lawsuit could be affected by having as many people as possible download the complete Handbook. When someone had trouble getting a copy of the Handbook, they helped out. They tried to manufacture mootness by encouraging copying and dissemination of infringing copies. Publishing the URLs was one part of the whole conduct.
If EFF wants to argue by analogy, it should prepare itself to answer their opponent or the Tenth Circuit asking them about the whole analogy. The whole analogy might run something like this. John Pirate rents a warehouse and sells pirated copies of CDs. Jane Copyrightholder asks John Pirate to stop. John Pirate refuses. Jane Copyrightholder sues. The court issues a temporary restraining order and John Pirate agrees to let the restraint of direct infringement continue as a preliminary injunction. While under the injunction, John Pirate discovers that Joe Pirate also has rented a warehouse and is selling pirated copies of the same CDs. John Pirate takes out an advertisement telling everyone who bothers to read it that Joe Pirate is selling the pirated CDs that John Pirate previously sold, giving the address where people can go to buy the pirated CDs. John Pirate includes in his advertisement information that his lawsuit will be affected by having as many people as possible buy the pirated CDs from Joe Pirate, copy them on their CD burners, and spread them around -- that we need as many copies as possible burned and spread around as fast as we can. When somebody had trouble reading a pirated CD in his or her CD drive, John Pirate showed him or her how to read it. With the whole analogy, what is the argument that shows this is not contributory infringement?
Normally, nonparties have no standing to argue in someone else's case. Amicus curiae are nonparties allowed to argue in someone else's case because of the contention that the issues affect many people beyond the parties. Amicus curiae in this case might contend that it would affect most linking, sharing the view of the writers who have reported on the case. Observing the whole analogy, however, exposes that contention as alarmism. Very few people who link are also direct infringers. Very few people who link point to resources they know are directly infringing copies. Very few people who link also post information that encourages widespread downloading, copying, and mirroring of directly infringing material. Even fewer point to unpublished works. EFF should prepare itself to show how the interest of the people it purports to be advocating for in this case truly would be affected by the Tenth Circuit affirming the district court.
Not To Worry
Judge Campbell is no threat to free speech. She is not going to destroy the web as we know it. You are not infringing copyrights when you browse copyrighted material posted to the web by the copyright holders. The injunction will not chill linking. But the urban legend being created might. Let's keep our heads, think independently, and keep planting trees.
- Gates Rubber Co. v. Bando Chem. Indus. Ltd, 9 F.3d 823, 831 (10th Cir. 1993). <back to text>
- 17 U.S.C. § 106. <back to text>
- Sheila R. McCann, "With LDS Book on Net, Lawsuit Might Be Moot," The Salt Lake Tribune, October 30, 1999. <back to text>
- Carl S. Kaplan, Copyright Threatens Freedom to Link, The New York Times, December 10, 1999. <back to text>
- Sheila McCann, Web site Prompts Mormon Church to Sue Critics, October 15, 1999. <back to text>
- Order [preliminary injunction] of December 6, 1999, Consent to Extention of Temporary Order & Response dated October 28, 1999, Order [denying motion for summary judgment] of January 28, 2000, available at "Under the Cover of Light: News" on Utah Lighthouse Ministry, Inc.'s site, and the transcripts of proceedings on October 18, 1999, November 23, 1999, and January 4, 2000), available at "Court Transcripts" on Utah Lighthouse Ministry, Inc.'s site. <back to text>
- See links to The Salt Lake Tribune articles at "Under the Cover of Light: News" on Utah Lighthouse Ministry, Inc.'s site. <back to text>
- Steven Obereck, "Web Links at Issue in LDS Lawsuit," The Salt Lake Tribune, January 5, 2000. <back to text>
- Katheleen Ohlson, "Judge bars group from posting URLs for Mormon handbook," Online News, Computer World, December 13, 1999. <back to text>
- See Paul C. Van Slyke, Hypertext Hysteria, 13 Tex. Law. S9 (1997); Emily Madoff, " Freedom to Link Under Attack; Web Community Up In Arms Over Lawsuits," N.Y.L.J., (June 23, 1997) at S1. <back to text>
- Steven Obereck, "Web Links at Issue in LDS Lawsuit," The Salt Lake Tribune, January 5, 2000. <back to text>
- Id. <back to text>
Copyright © 2000 T. R. Halvorson. All Rights Reserved. Disclaimer: Any views expressed or implied herein do not necessarily reflect the opinions of LLRX.com.