Puerto 80 Projects has filed its opening brief in its appeal of the Southern District Court of New York’s denial of its petition to release its Rojadirecta domain names — which had been seized by ICE as property used to facilitate criminal copyright infringement — prior to the completion of the civil forfeiture proceeding. It separately has a motion to dismiss before the court in that proceeding, which I wrote about last week.

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Puerto 80 spends considerable time explaining why prior restraints are bad and what procedures are required under the Constitution. This point is indisputable and uncontroversial — preventing prior restraints is considered the “chief purpose” of the First Amendment. 1Near v. Minnesota, 283 US 697, 713 (1931). But what they don’t do is spend much time explaining why this particular seizure is a prior restraint.

In fact, they don’t explain why at all — they just flat-out state, “The government’s ex parte seizure of Puerto 80’s domain name constituted a prior restraint on speech.” Later, they repeat, “The government’s seizure of the subject domain names constitutes an unlawful prior restraint on speech that suppresses Puerto 80’s users’ and readers’ protected First Amendment activities.”

But calling something a prior restraint doesn’t make it a prior restraint. As the Supreme Court pointed out over 50 years ago, “The phrase ‘prior restraint’ is not a self-wielding sword.” 2Kingsley Books v. Brown, 354 US 436, 441 (1957).

The Defining Characteristics of a Prior Restraint

Ironically, Puerto 80 cites to Alexander v. US to support its first statement that this seizure is a prior restraint. It quotes the Court’s statement that “Temporary restraining orders and permanent injunctions — i.e., court orders that actually forbid speech activities — are classic examples of prior restraints.” But that doesn’t mean all restraining orders or injunctions are prior restraints — like the forfeiture of Alexander’s bookstores in this case, which the Supreme Court held constitutional.

More importantly, the Court later notes the reason to be careful with the “prior restraint” label. It said, “Because we have interpreted the First Amendment as providing greater protection from prior restraints than from subsequent punishments, see it is important for us to delineate with some precision the defining characteristics of a prior restraint.”

The second case Puerto 80 cites to for its self-defining statement provides a clue as to one of these defining characteristics: “An order that prohibits the utterance or publication of particular information or commentary imposes a ‘prior restraint’ on speech” (Emphasis added).

A prior restraint does not refer to any and all suppression of First Amendment activities; the suppression must reference specific subject matter or viewpoint. Although the Supreme Court has never fully defined “prior restraint”, it has been clear that only content-based injunctions can constitute prior restraints. 3DVD Copy Control Ass’n v. Bunner, 75 P.3d 1 (Cali Sup. 2003), citing Thomas v. Chicago Park Dist., 534 US 316 (2002).

For Puerto 80 to succeed in its prior restraint argument, then, it must show that this seizure was content-based. But how can this be? The First Amendment activities that it claims were suppressed revolve around the “forum discussions on the Rojadirecta.com and Rojadirecta.org sites”, which included “political discussions, commentary, and criticism by the site’s users.”  Surely Puerto 80 isn’t claiming that the government seized the domain names because of the content of those discussions — that it perhaps wanted to restrain certain opinions about baseball games.

Now, if the government did want to suppress a site because of the message it conveyed and used the Copyright Act — or any other generally applicable statute — as a pretext, then that likely would be an impermissible prior restraint. But no one is seriously suggesting that anything of that sort has occurred here.

The only way this seizure could be characterized as a prior restraint is if Puerto 80 can convince the court that the restraint of the copyright-protected material on the site is content-based. It attempts to do so, in an argument confined to a footnote. The only legal support for its claim comes from a law review article — co-written by Mark Lemley, one of the attorneys for Puerto 80.

The article hardly counts as legal support: it makes the argument that copyright injunctions should be treated more as prior restraints because currently, and historically, they have not. Indeed, preliminary injunctions in copyright are common, as are pretrial seizures of infringing materials and tools.

Admittedly, the seizure of a domain name to be forfeited as property facilitating copyright infringement is only a recent development. But Puerto 80 makes no attempt to distinguish this action from other copyright injunctions and sanctions.

Prior Restraint in Napster

Puerto 80’s argument is reminiscent of the prior restraint argument made by Napster.

Like Puerto 80, Napster stood in the shoes of its users and argued against a proposed preliminary injunction because it “would silence the entire Napster community, violating not only Napster’s free speech rights, but those of its users as well.” This injunction would be “particularly egregious because it would silence the Napster community in advance of any ruling by the Court confirming that Napster’s directory is protected by the First Amendment. Courts have uniformly viewed any injunction that could act as a prior restraint on free speech as presumptively invalid.”

The District Court disagreed with Napster — noting that in the realm of copyright injunctions, “free speech concerns ‘are protected by and coextensive with the fair use doctrine.'” The court addressed the injunction’s reach to non-infringing portions of Napster’s service, like its message boards and chat rooms. Napster could continue to operate those with the injunction, but

In the event that Napster, Inc. cannot separate the infringing and non-infringing aspects of its service, its First Amendment argument still fails. Courts will not sustain a First Amendment challenge where the defendant entraps itself in an “all-or-nothing predicament.” Even if it is technologically impossible for Napster, Inc. to offer such functions as its directory without facilitating infringement, the court still must take action to protect plaintiffs’ copyrights.

Napster appealed the grant of the preliminary injunction to the Ninth Circuit on a number of grounds, among them its continued belief that the injunction was an impermissible prior restraint. The court, however, recognized this as a frivolous argument, saying only that it would “briefly address Napster’s First Amendment argument so that it is not reasserted on remand.”

We note that First Amendment concerns in copyright are allayed by the presence of the fair use doctrine. There was a preliminary determination here that Napster users are not fair users. Uses of copyrighted material that are not fair uses are rightfully enjoined. 4A&M Records v. Napster, 239 F.3d 1004, 1028 (9th Cir. 2001).

Copyright and First Amendment Challenges

The fact that the domain name seizure isn’t a prior restraint doesn’t mean there’s no First Amendment issue. The Supreme Court has said that “content-neutral time, place, and manner restrictions can be applied in such a manner as to stifle free expression” 5Thomas v. Chicago Park at 323. and also that criminal and civil sanctions having some incidental effect on First Amendment activities are subject to First Amendment scrutiny “where it was conduct with a significant expressive element that drew the legal remedy in the first place … or where a statute based on a nonexpressive activity has the inevitable effect of singling out those engaged in expressive activity.” 6Alexander v. US at 557, quoting Arcara v. Cloud Books, 478 US 697, 706-07 (1986). But these are distinct arguments that Puerto 80 does not raise in its opening brief.

Nevertheless, it should be remembered that there’s good reason why prior restraint is rarely found in cases involving copyright. Copyright is “the engine of free expression”, and infringement causes harm to a copyright holder’s free speech rights. 7See Salinger v. Colting, 607 F.3d 68, 81 (2nd Cir. 2010); Speech interests of creators; and The chilling effect of copyright infringement. What’s more, copyright has “built-in free speech safeguards” that reduce the need for relying on First Amendment doctrines like prior restraint.

We’ve even seen courts explicitly resolve infringement cases on fair use grounds which had earlier been resolved on First Amendment grounds. In Triangle Publications v. Knight-Ridder Newspapers, the appellate court began, “For years, Courts and commentators have recognized a potential conflict between copyright and the First Amendment. However, until the District Court’s opinion in the case now before us, no Court had ever held that a copyright suit could be defeated by a First Amendment defense. We affirm the result reached by the District Court, but disagree with the Court’s rationale. Contrary to the District Court, we hold that fair use constitutes a valid defense to the copyright infringement suit involved in this case.” 8Compare this to Suntrust Bank v. Houghton Mifflin, 252 F.3d 1165 (11th Cir. 2001), where the court vacated a preliminary injunction against the author of The Wind Done Gone, a parody of Gone With the Wind. Although it used the term “prior restraint” in its opinion, the injunction was vacated since the defendant’s strong fair use defense made it unlikely the plaintiff would succeed on the merits of the case.

In most cases concerning infringement, free speech is raised only as a “self-wielding sword” — “the last refuge of an infringing scoundrel”. 9L. Ray Patterson, Free Speech, Copyright, and Fair Use, 40 Vanderbilt Law Review 1, 36 n.110 (1987). When a case doesn’t involve some question of legitimate appropriation of a copyrighted work, “few courts” allow defendants “to hide behind the first amendment.” 10Sid & Marty Krofft TV v. McDonalds, 562 F.2d 1157, 1170-71 (9th Cir. 1977). Based on the court filings so far, it’s my opinion that there’s no legitimate appropriation here, only a web site that seems keen on raising every defense it can to avoid responsibility for facilitating infringement.

CAMP Conference is scheduled for October 3rd; the reply brief from the US is due November 15th.

 

References   [ + ]

1. Near v. Minnesota, 283 US 697, 713 (1931).
2. Kingsley Books v. Brown, 354 US 436, 441 (1957).
3. DVD Copy Control Ass’n v. Bunner, 75 P.3d 1 (Cali Sup. 2003), citing Thomas v. Chicago Park Dist., 534 US 316 (2002).
4. A&M Records v. Napster, 239 F.3d 1004, 1028 (9th Cir. 2001).
5. Thomas v. Chicago Park at 323.
6. Alexander v. US at 557, quoting Arcara v. Cloud Books, 478 US 697, 706-07 (1986).
7. See Salinger v. Colting, 607 F.3d 68, 81 (2nd Cir. 2010); Speech interests of creators; and The chilling effect of copyright infringement.
8. Compare this to Suntrust Bank v. Houghton Mifflin, 252 F.3d 1165 (11th Cir. 2001), where the court vacated a preliminary injunction against the author of The Wind Done Gone, a parody of Gone With the Wind. Although it used the term “prior restraint” in its opinion, the injunction was vacated since the defendant’s strong fair use defense made it unlikely the plaintiff would succeed on the merits of the case.
9. L. Ray Patterson, Free Speech, Copyright, and Fair Use, 40 Vanderbilt Law Review 1, 36 n.110 (1987).
10. Sid & Marty Krofft TV v. McDonalds, 562 F.2d 1157, 1170-71 (9th Cir. 1977).

14 Comments

  1. Based on the court filings so far, it’s my opinion that there’s no legitimate appropriation here, only a web site that seems keen on raising every defense it can to avoid responsibility for facilitating infringement.

    I agree with you that Rojadirecta facilitates infringement. I have to ask you though: If the government seized your copyhype.com domain name, would you think that your First Amendment rights had been violated? If so, why does such a seizure violate your First Amendment rights, but not those of the U.S.-based users of Rojadirecta?

    • Wouldn’t that hinge on why it was seized? It’s not exactly like there’s much here except Terry’s expression of his personal views and analyses. I can think of little cause to seize this particular domain, other than to suppress said expression. In writing this blog Terry is primarily making use of his First Amendment rights.

      Any free speech taking place over at Rojadirecta is an incidental element of the site, which could serve its primary purpose (facilitating infringement) without having any facilities for comments, discussions and the like. Similarly, the discussion fora could be separated out of the site without harm either to them or the infringement facilitating portion – the point brought up in Napster. However, Terry’s free speech cannot be taken out of Copyhype without the site becoming something else entirely – a collection of footnotes and links to court papers, all of which could be removed without fundamentally crippling the site (although limiting the context).

      As Terry points out and as Courts have stated, you can only take the First Amendment so far. Thus, any attempt at drawing analogies between Rojadirecta and Copyhype is just silly.

      • I don’t doubt that the infringement-facilitating speech at Rojadirecta could be seized ex parte without running afoul of the First Amendment, nor do I doubt that the Rojadirecta domain name can be seized after a hearing on the merits. What I question is how the domain name can be seized ex parte, thereby shutting down the protected speech on the fora, without violating the First Amendment.

        I’m trying to understand where the line is drawn. On one end of the spectrum, you have a website like Copyhype. I think we all agree that seizing the copyhype.com domain name ex parte would violate the First Amendment. On the other end, you could imagine a website that only has links to infringing materials. I think we all agree that seizing the domain name of such a site would not violate the First Amendment.

        But where is the line between them? What about a site like Rojadirecta that has both unprotected and protected speech? How much unprotected speech does a site have to have before an ex parte seizure of that site’s domain name doesn’t violate the First Amendment?

        I agree that the protected speech at Rojadirecta is only incidental, but being incidental doesn’t mean it’s insignificant for First Amendment purposes. What authority is there that stands for the proposition that incidental (yet significant) protected speech can be seized ex parte? Arcara only says that such incidental speech can be forfeited after a hearing on the merits–it doesn’t say that an ex parte seizure of such speech is constitutionally permissible.

        See what I’m getting at?

  2. @D.H.
    your rights to liberty stop at the point that they impede my rights to liberty
    and vice-versa.
    Copyright infingment isn’t a “right”, no matter how you use that word [right], or how you slice it.
    It’s a crime.
    Just because people have been getting away with proverbial murder for the last decade, doesn’t make it less so. What you’re seeing is a shift that should have happened at the turn of the century, and squashed out the menace before it grew to a fatal cancer… the chemo to kill the cancer is going to be painful, but it needs to be done. As this cancer isn’t localized anymore, it affects the whole body of creatives out there.

    • I agree with you that people have been getting away with it for far too long, and it’s high time the government started doing something about it. I’m a firm supporter of these domain name seizures and the PROTECT IP Act. My concern is that the process being employed in cases like this (with Rojadirecta) may be constitutionally inadequate.

      When a site has significant amounts of both protected and unprotected speech, seizing that site’s domain name seizes that protected speech. I’m not saying that such speech cannot be seized, but I do think that the First Amendment may require more procedural safeguards than are currently in place.

      • I completely disagree. Law enforcement should be given the tools it needs to take swift action to stop criminal activity. Law enforcement should not have to submit to a full First Amendment inquiry every time it seizes a website for the same reason it should not have to do so every time a drug house it seizes alleges it also sells books out of the living room. Get real. Congress and courts have made the decision that giving law enforcement the ability to seize property involved in a crime is more important than any *alleged* incidental impact on “free speech” that criminals may claim after the fact. The post-seizure hearing is sufficient to protect their interests.

        Instead of dreaming up hypotheticals, look at the actual case: you think the process needs to be found unconstitutional because of some forum comments on a site overrun with infringement? Enough is enough with the emotional calls to the constitution.

        • Law enforcement should be given the tools it needs to take swift action to stop criminal activity.

          Agreed. But those tools cannot be used in a way that violates the Constitution.

          Law enforcement should not have to submit to a full First Amendment inquiry every time it seizes a website for the same reason it should not have to do so every time a drug house it seizes alleges it also sells books out of the living room. Get real.

          But what if that drug house was also a bona fide bookstore? Could the government ex parte shut down that bookstore indefinitely? I should think not. From what I can tell, the fora at Rojadirecta are bona fide fora with in-fact constitutionally-protected speech. It’s not some pretext.

          The PROTECT IP Act provides for a lot more process than we have here. I don’t think that extra process ties the government’s hands significantly. They can still seize domain names, and I suspect most websites won’t even put up a fight.

          Congress and courts have made the decision that giving law enforcement the ability to seize property involved in a crime is more important than any *alleged* incidental impact on “free speech” that criminals may claim after the fact.

          I don’t think it’s that simple. The fora on Rojadirecta contain bona fide protected speech. Can you point me to authority that says that such protected speech may be seized ex parte and indefinitely, so long as the seizure of that protected speech is incidental?

          The post-seizure hearing is sufficient to protect their interests.

          That’s really the issue here: Given the fact that protected speech is being seized, what process is sufficient for First Amendment purposes? We’ve already seen that the government can sit on the seized domain names for months and months without filing an action.

          We’ve also seen that a 983(f) petition won’t reach the merits of the case. I suppose the domain name owner could file suit, like a Bivens action or a 1983 petition, but I’m not sure that those options satisfy the First Amendment. In the end though, I think it all boils down to what process is sufficient.

          Instead of dreaming up hypotheticals, look at the actual case: you think the process needs to be found unconstitutional because of some forum comments on a site overrun with infringement? Enough is enough with the emotional calls to the constitution.

          That’s the way I’m leaning, yes. It’s not emotion–I think Rojadirecta should be shut down and I think its principals should be charged criminally–it’s just that I think the procedure being used here may be insufficient. The fact that the PROTECT IP Act provides for a lot more process when seizing domain names is telling, IMO. The inference can be made that more process is necessary to satisfy the First Amendment.

          • But what if that drug house was also a bona fide bookstore? Could the government ex parte shut down that bookstore indefinitely?

            If that drug house was a “bona fide bookstore,” which it most certainly would not be, I would have no problem with the seizure, because criminals cannot and should not be able to use the First Amendment as a shield to criminal activity. Furthermore, you need to stop characterizing this as an “indefinite” shut down suggesting a complete lack of due process. That is dishonest and untrue. Owners of property that has been forefeited subject to criminal seizure and forfeiture laws have no fewer than four remedies available to them to seek return of the property, some of which are available immediately. Rojadirecta is fighting to have their property returned as we speak. How is that an indefinite shut down without recourse?

            I could not disagree more that this system is inadequate to protect alleged criminals’ rights. Courts (including the magistrates who authorize the seizures) can tell a bookstore from a drug house. Do you have any evidence that the system is abused by law enforcement, and that they have initiated actions which have the effect of shutting down legitimate business owners due to the content of their speech, who are not engaged in illegal activity, and who are not able to seek appropriate redress for the violation in court? In THAT case I would agree that there is a First Amendment issue with the process.

            The fora on Rojadirecta contain bona fide protected speech.

            As I understand it, there was not “substantial” protected speech going on here. There were some forums connected to a site facilitating “substantial” amounts of criminal activity. However, the amount of speech is not relevant. To the extent protected speech is mixed with criminal activity, I have no problem with the government seeking an order to seize property. If the owner of the site has trapped themselves in an all-or-nothing predicament, the incidental effect of speech is, and should be, tolerated. (See Napster). Again, the First Amendment isn’t a shield for criminal activity.

            Can you point me to authority that says that such protected speech may be seized ex parte and indefinitely, so long as the seizure of that protected speech is incidental?

            No, because you’ve grossly and unfairly characterized the process.

            We’ve already seen that the government can sit on the seized domain names for months and months without filing an action.

            The property owner can walk into court the day after their site was seized and file a petition to have it returned. “As with all judicially authorized seizure warrants, the owners of the seized property have the opportunity to challenge the judge’s [i.e., the magistrate who authorized the seizure] determination through a petition. If a petition is filed, a hearing is held in a federal court to determine the validity of the affidavit supporting the seizure, at which point the government would have the burden of proof.”

            The inference can be made that more process is necessary to satisfy the First Amendment.

            The only inference that you should draw is that the differences are based on politics. They want to get this passed, so they are adding provisions to satisfy those who don’t understand the current process, and base their beliefs on emotional calls to the First Amendment rights of alleged criminals. It’s quite frustrating.

  3. I don’t think that it’s possible to draw a definite line between cases where First Amendment protections cease to apply and ones where they do. However, the Napster Court shows us a way around the issue, by shifting the responsibility for site design onto its operator. Thus, an attempt at using “human shields” – in the form of protected speech by the site’s users – to protect a site from injuctions or domain seizures fails.

    • I don’t think that it’s possible to draw a definite line between cases where First Amendment protections cease to apply and ones where they do. However, the Napster Court shows us a way around the issue, by shifting the responsibility for site design onto its operator. Thus, an attempt at using “human shields” – in the form of protected speech by the site’s users – to protect a site from injuctions or domain seizures fails.

      There may not be a definite line, but there is certainly a line. I think that line is crossed when there is significant, protected speech being seized. Once it’s determined that the protected speech on a website is significant (as I believe to be the case with Rojadirecta’s fora), then the First Amendment demands that there be a full and prompt post-seizure hearing. Such a hearing was neither provided nor possible here.

      • I agree that if the protected speech was seized than the procedures would need to be examined to ensure they adequately protect 1A rights.

        But it wasn’t the speech itself that was seized here — only domain names pointing to that speech. That’s not to say there isn’t a 1A concern, just that it is not as great as that present when there’s a risk that speech can be removed from circulation before a hearing.

        Several courts addressed 1A defenses in preliminary injunction motions against domain names in ACPA cases:

        “Finally, Mr. Wick could simply display the content of his web pages in a different location. As he testified, he has many domain names and, thus, many places to display his message.” Morrison & Foerster v. Wick

        “Nor can he argue that such an order would violate his First Amendment right to free speech, as he has plenty of other outlets for his protest (i.e., just one of the three thousand domain names he owns would provide a sufficient forum).” Shields v. Zuccarini

        • I agree that if the protected speech was seized than the procedures would need to be examined to ensure they adequately protect 1A rights.

          But it wasn’t the speech itself that was seized here — only domain names pointing to that speech. That’s not to say there isn’t a 1A concern, just that it is not as great as that present when there’s a risk that speech can be removed from circulation before a hearing.

          That’s definitely an important distinction, but I’m not certain what it means in practice though. It’s not clear to me how exactly that changes the minimum safeguards necessary to seize domain names.

          Several courts addressed 1A defenses in preliminary injunction motions against domain names in ACPA cases:

          Thanks, I’ll take a look at those. I have been meaning to do research into this issue with the ACPA since there might be some cases on point. At first blush though, I’d say that the First Amendment analysis is a little different with a preliminary injunction than with an ex parte seizure. The defendant domain name owner in a preliminary injunction setting has gotten a lot more process than he would have gotten with these seizures.

          Thanks for the links! You know this is one of my favorite topics to think about. 🙂

  4. I never realized that the act of seizing a domain name means that the site using the name can never be visited, thereby stifling “speech”.

  5. the fact is that you can use rojadirecta using rojadirecta.es, so at the end this is a big bad joke.
    I do not understand why they do not use the same criteria to close google search or any other search page that can be used to find torrents and/or any other sites that provide unlawful downloads ?

  6. Pingback: Copyright and the First Amendment: The Unexplored, Unbroken Historical Practice | Copyhype