Ex Parte TRO/Seizure App
Andrew H. Wilson
WILSON, RYAN & CAMPILONGO
115 Sansome Street
Fourth Floor
San Francisco, California 94104
(415) 391-3900
Thomas M. Small
Janet Kobrin
SMALL, LARKIN & KIDDE
10940 Wilshire Boulevard, Suite 1800
Los Angeles, California 90024-3945
(310 209-4400
Helena K. Kobrin
7629 Fulton Avenue
North Hollywood, CA 91605
(213) 960-1933
Attorneys for Plaintiffs
RELIGIOUS TECHNOLOGY CENTER and
BRIDGE PUBLICATIONS, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
______________________________________
RELIGIONS TECHNOLOGY CENTER, a
California non-profit corporation;
and BRIDGE PUBLICATIONS, INC., a
California non-profit corporation, No. C-95-20091-RMW
(EAI)
Plaintiffs,
v. EX PARTE APPLICATION FOR TEMPORARY
RESTRAINING ORDER,
ORDER TO SHOW CAUSE
RE: PRELIMINARY
INJUNCTION, AND FOR ORDER
OF IMPOUNDMENT;
MEMORANDUM OF POINTS
AND AUTHORITIES
NETCOM ON-LINE COMMUNICATION
SERVICES, INC., a Delaware
corporation; DENNIS ERLICH, an
individual; and TOM KLEMESRUD, an
individual, dba CLEARWOOD DATA
SERVICES,
Defendants.
______________________________________
TO THE UNITED STATES DISTRICT COURT FOR THE NORTHERN
DISTRICT OF CALIFORNIA:
Plaintiffs Religious Technology Center ("RTC") and
Bridge Publications, Inc. ("BPI") hereby apply to this Court for an
order directing defendants Netcom On-Line Communication Services,
Inc. ("Netcom"), Dennis Erlich ("Erlich") and Tom
Klemesrud, dba Clearwood Data Services ("Klemesrud"), to appear
before this Court at a specified time and date to show cause why a
Preliminary Injunction should not be issued requiring said defendants
to cease and desist from infringing plaintiffs' rights under the federal
copyright laws by making unauthorized reproductions of
copyrighted works on the Internet network or other databases,
and from violating RTC's rights under California trade secrets laws
by copying unauthorized copies of confidential works of L. Ron
Hubbard onto that network's database. The contents of those
confidential works are known as "the Advanced Technology"
of the Scientology religion.
Because defendants' actions are ongoing and have not
ceased in the face of multiple warnings to cease and desist,
plaintiff further apply for a temporary restraining order restraining
defendants, their agents, and persons acting in concert with
them, from engaging in any such conduct pending the hearing
on plaintiffs' application for preliminary injunction. The form of
the requested order to show cause, temporary restraining order,
and an order of impoundment are more particularly described below
and in the accompanying proposed form of Temporary Restraining Order,
Order to Show Cause Re: Preliminary Injunction, and Order of
Impoundment.
GROUNDS FOR APPLICATION
Plaintiffs apply to the Court for the requested relief
pursuant to Rule 65 of the Federal Rules of Civil Procedure, on the
grounds that plaintiffs hold exclusive rights relating to the
reproduction, publication, and display of numerous literary
works that are protected under federal law, some also containing
trade secrets protected under state law; that in violation of those
rights, defendants are, and recently have been, copying those
works totaling at least 154 pages to date, with many works in their
entirety, or causing them to be copied onto computerized data
base information services, in violation of the copyright laws
and state law; that defendants have continued their actions in
spite of notification by plaintiffs of their rights and objections
to the unauthorized copying and disclosure; and, that plaintiffs will
suffer irreparable injury unless defendants are restrained from such
actions during the pendency of this action.
FORM OF TEMPORARY RESTRAINING ORDER REQUESTED
Plaintiffs request that, pending the hearing on the
Order to Show Cause Re: Preliminary Injunction, this Court issue
a Temporary Restraining Order enjoining and restraining defendants,
their agents, and all persons acting in concert with them or on
their behalf:
1. From all copying of any of the copyrighted
works of L. Ron Hubbard including, but not limited to, those
identified in Exhibits A and B to the Complaint, and in particular from
copying any of the copyrighted works into any computer data
base, information service, storage facility, archives, or other
computerized network or facility;
2. From disclosing or displaying, or causing to
be disclosed or displayed, any portion of the unpublished confidential
works identified in Exhibit B to the Complaint, or of any other
work that is part of the Advanced Technology; and
3. From destroying or concealing, or in any way
disposing of any reproduction, copy, facsimile, excerpt, or
derivative of any work of L. Ron Hubbard that is in defendants'
possession, custody or control.
FORM OF REQUESTED ORDER TO SHOW CAUSE
Plaintiffs further request that this Court issue an
order directing defendants to show cause why a preliminary
injunction should not be issued enjoining and restraining them,
their agents, and all persons acting in concert with them or on
their behalf, from violating the copyrights and trade secret rights
of plaintiffs during the pendency of this action, and particularly:
1. From all copying of any of the copyrighted
works of L. Ron Hubbard including, but not limited to, those
identified in Exhibits A and B to the Complaint, and in particular from
copying any of those works into any computer data base, information
service, storage facility, archives, or other computerized network
or facility;
2. From disclosing, displaying or reproducing, or
causing to be disclosed, displayed or reproduced, any of the Unpublished
Confidential Works identified in Exhibit B to the Complaint or any
other work that is part of the Advanced Technology;
3. From destroying or concealing, or in any way
disposing of any reproduction, copy, facsimile, excerpt, or derivative
of any work of L. Ron Hubbard that is in defendants' possession, custody
or control.
FORM OF IMPOUNDMENT ORDER
Plaintiffs request that this Court issue an order that
defendants Netcom and Klemesrud turn over for impoundment, to remain
in the custody of plaintiffs' counsel during the pendency
of this action, all unauthorized copies in their possession,
custody or control of any copyrighted works of L. Ron Hubbard,
including, but not limited to:
1. All copies of the copyrighted published
literary works of L. Ron Hubbard;
2. All copies of the unpublished confidential
works of L. Ron Hubbard, containing
Advanced Technology; and
3. All computer disks, cassette tapes and other
media on which defendants have stored such works.
This application is based upon this Ex Parte
Application, the accompanying Memorandum of Points and Authorities,
the fact set forth in the accompanying declarations of Thomas M.
Small, Warren McShane, Marilyn Pisani and Helena K. Kobrin, the
accompanying Ex Parte Application for Order for Issuance of Writ of
Seizure and related Memorandum of Points and Authorities, the Verified
Company in this action, and such additional evidence and arguments
as may be properly presented at or before the hearing of the Application.
Dated: February __, 1995 WILSON, RYAN & CAMPILONGO
By:
Andrew H. Wilson
Thomas M. Small
Janet Kobrin
SMALL, LARKIN & KIDDE
Helen K. Kobrin
Attorneys for Plaintiffs
RELIGIOUS TECHNOLOGY CENTER and
BRIDGE PUBLICATIONS, INC.
TABLE OF CONTENTS
Page
I. PRELIMINARY STATEMENT...........................7
II. FACTUAL STATEMENT...............................8
A. Plaintiffs Have The Exclusive Rights To
Reproduce And Publish The Materials
That Are The Subject Of
This Application.........................................8
B. Defendants Are Engaging In Unlawful Copying
And Publishing Of Plaintiffs'
Literary Works...........................11
C. Absent A Restraining Order, There Is A Strong
Likelihood That Defendants Will Continue To Make And Publish
Unauthorized Copies Of The Copyrighted Materials........15
III. DEFENDANTS PLAINLY HAVE INFRINGED PLAINTIFFS'
COPYRIGHTS UNDER
FEDERAL LAW..............................................16
IV. PLAINTIFFS ARE ENTITLED TO A TEMPORARY RESTRAINING
ORDER AND PRELIMINARY
INJUNCTION ON ALL CAUSES OF ACTION.......................17
A. Plaintiffs Have Established A Likelihood Of
Success On The Merits Of Each
Cause Of Action..........................18
B. Plaintiffs Will Be Irreparably Injured If
Defendant Is Not Preliminarily
Enjoined..................................19
C. The Equities Weigh Heavily In Favor Of
Granting The Temporary Restraining Order And Preliminary
Injunction...............................................20
D. Defendants Should Not Be Given Notice Prior To
Issuance Of The Temporary
Restraining Order.........................21
V. PLAINTIFFS ARE ENTITLED TO AN ORDER IMPOUNDING THE
INFRINGING MATERIALS AND THE ARTICLES BY WHICH UNAUTHORIZED
COPIES HAVE BEEN
REPRODUCED...............................................22
A. Impoundment May Be Ordered In An Action For
Copyright Infringement To
Prevent Ongoing Infringement............22
B. An Impoundment Order Should Issue In This
Case..........25
VI. VI.
CONCLUSION...............................................26
STATEMENT OF ISSUES
The principal issue presented by this application is
whether defendants' actions in infringing plaintiffs' copyrights
warrant the issuance of a temporary restraining order and an
order to show cause why a preliminary injunction should not be
issued requiring the defendants to cease and desist from infringing
plaintiffs' rights under the federal copyright laws by making
unauthorized reproductions of copyrighted works on the Internet
network or other databases, and from violating RTC's rights under
California trade secrets laws by copying unauthorized copies
of confidential works of L. Ron Hubbard onto that network's
database. A related issue is whether those actions entitle plaintiffs
to an order impounding the infringing materials and the articles by
which unauthorized copies have been reproduced.
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF
EX PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER AND ORDER
TO SHOW CAUSE RE: PRELIMINARY INJUNCTION
I.
PRELIMINARY STATEMENT
By virtue of exclusive licenses, plaintiffs Religious
Technology Center ("RTC") and Bridge Publications, Inc. ("BPI")
hold exclusive rights to reproduce, publish and display
numerous copyrighted literary works of L. Ron Hubbard. Some of
these works are unpublished and contain confidential information
consisting of trade secrets owned by RTC.
Defendants Netcom On-Line Communications Systems, Inc.
("Netcom"), Dennis Erlich ("Erlich"), and Tom Klemesrud, dba
Clearwood Data Services ("Klemesrud") (collectively, "defendants")
have engaged in a scheme of unauthorized, wholesale copying of the
copyrighted materials onto the Internet computer network ("Internet") via
newsgroups on the Internet. In this fashion, defendants have collected
copyrighted literary works subject to plaintiffs' exclusive licenses and
are engaging in unauthorized reproduction of these works, passed on to
others by means of defendants' computer equipment. Many of the works
that have been copied into the Internet are unpublished and confidential
works containing trade secrets. At least 154 pages of copyrighted materials
have been so copied and in many instances constitute the totality of the
copied work.
Defendants' copying of plaintiffs' copyrighted literary works
violates federal copyright law, and the unauthorized disclosure of the
contents of the unpublished works violates RTC's rights under California
trade secrets laws as well. Absent the issuance of the restraining and
impoundment orders requested, defendants will continue their unlawful actions
and may expand those actions. Defendant Erlich has already stated that "No
local government or court in the U.S. has the power to tell (him) otherwise."
(Kobrin Dec., Ex. F.) There also is a danger that defendants may conceal
the unauthorized copies or transfer those copies to other, unknown locations.
Plaintiffs accordingly request issuance of the ex parte temporary
restraining order and order to show cause re: preliminary injunction
mandated under these circumstances by Rules 64 and 65 of the Federal Rules
of Civil Procedure and of the impoundment order permitted by 17 U.S.C. 503.
II.
FACTUAL STATEMENT
A. Plaintiffs Have The Exclusive Rights To Produce And
Publish The Materials That Are The Subject Of This Application
Prior to his death in 1986, L. Ron Hubbard created
numerous literary works which are protected by federal copyright law.
(Pisani Dec., 2-3.) Mr. Hubbard died on January 24, 1986, and Norman F.
Starkey was, on February 18, 1986, duly appointed the Executor of the Estate
of L. Ron Hubbard by the Superior Court in and for the County of San Luis
Obispo, California, Case No. 20885. By agreement dated September 17,
1987, all rights in the copyrights to certain of Mr. Hubbard's unpublished
works, referred to as the "Advanced Technology material," were granted by
the Estate to plaintiff RTC. RTC was granted authority, inter alia, to
enforce all rights belonging to the holder of the copyrights in the Advanced
Technology materials. At all relevant times that agreement has remained
in full force and effect. (McShane Dec., 2 4.)
In 1989, all of the assets of the Estate of L. Ron
Hubbard, including the copyrights pertaining to the literary works and the
Advanced Technology materials, were distributed to Author's Family Trust-B
("the Trust"), and in 1993, the assets of the Trust were distributed to
Church of Spiritual Technology, a California nonprofit religious corporation
("CST"), which now is the owner of the copyrights in the literary works.
While the copyrights in the literary works were held by the Trust, on
October 1, 1991, the Trustee entered into an exclusive license agreement
with BPI (hereinafter "the Literary Agreement") which granted to BPI,
inter alia, the exclusive right in the United States to print, publish
and sell the literary works, other than the Advanced Technology materials,
and to make and publish compilations and derivative works of and from the
published literary works, and to enforce all rights in those works.
(Pisani Dec., 3.)
In an agreement dated November 29, 1993, CST affirmed
RTC's September 17, 1987 license under all copyrights pertaining to
the Advanced Technology materials with the right and obligation to enforce
all the copyrights in the Advanced Technology materials. (McShane Dec.,
6.) In an agreement dated November 29, 1993, CST assumed and affirmed
the Literary Agreement with BPI. (Pisani Dec., 4.)
Plaintiff BPI derives substantial revenue from the
distribution and sale of L. Ron Hubbard's published literary works.
Plaintiff RTC derives substantial revenue from the delivery of services
utilizing Mr. Hubbard's unpublished literary works containing the Advanced
Technology. (Pisani Dec., 3; McShane Dec., 8.)
Accordingly, the activities at issue in this action have caused and continue
to cause substantial injury to plaintiffs.
Plaintiffs and their licensors have perfected their
copyrights in the works in question. The copyrights in works listed in
Exhibits A and B to the Complaint have been duly registered with the United
States Copyright Office. (Pisani Dec., 6; McShane Dec., 41.)
In addition, like all of the Advanced Technology materials,
the unpublished confidential works are unpublished materials
containing trade secrets which are maintained confidential by RTC and
all other entities licensed by RTC for their use, and substantial
measures are taken by RTC and its licensees to protect the
confidentiality of the Advanced Technology materials. As more fully
described in the declaration of Warren McShane, these measures
include, inter alia, the numbering of all copies of the materials
containing Advanced Technology; locking all such materials in locked
cabinets or safes when not in use; logging of the materials upon each
use; electronically connecting the materials to the cabinets in which
they are stored and to the tables on which they are used and
monitoring of those connections by security computers and alarm
systems; issuing photo-identity cards to those who are authorized to
access the materials; separating the Advanced Technology course rooms
from all other parts of the organization; locking the doors of the
Advanced Technology course rooms at all times and magnetically locking
them while materials are moving between a file cabinet and the table
where they will be used; and posting security personnel at all times.
(McShane Dec., 14-19.) The unpublished confidential works are
never available outside the protected premises of RTC or its licensees
except as the result of theft or unauthorized disclosure. (McShane
Dec., 22.)
The trade secrets status of the Advanced Technology
materials has been judicially recognized in court decisions dealing
with this question. See Bridge Publications Inc. v. Vien,
827 F.Supp. 629, 633 (S.D.Cal. 1993), and cases cited therein.
Thus, the right of plaintiff RTC to protect these materials against
unauthorized disclosure under California law is clear.
B. Defendants Are Engaging In Unlawful Copying And
Publishing Of Plaintiffs' Literary Works
As shown by the accompanying declarations, defendant
Erlich has engaged in the repeated unlawful copying of the literary
works onto the Internet, the international network of computer
networks, through postings on a newsgroup, or public discussion group,
known as "alt.religion.scientology." Erlich's postings are made
through a bulletin board service maintained by Klemesrud, who accesses
the Internet via Netcom's system, to which Klemesrud is a subscriber,
and include both published literary works and unpublished
confidential works of L. Ron Hubbard, as listed in Exhibits A
and B of the Complaint herein. Klemesrud and Netcom provide the
gateway through which Erlich's Internet access is achieved.
On or about August 3, 1994, defendant Erlich copied or
caused to be copied onto the Internet via the alt.religion.scientology
newsgroup an unauthorized copy of 17 pages of the transcript of a
confidential lecture, referred to as "Class VIII," that is one of the
works containing part of the Advanced Technology. (McShane Dec.,
28.) Such copying violated RTC's rights as the exclusive licensee of
the copyright materials. On August 22, 1994, plaintiffs' attorney
wrote to Erlich informing him that his unauthorized copying of the
Class VIII work violated RTC's copyrights and trade secrets rights in
the material and demanding that Erlich cease and desist in all such
copying. (Small Dec., 5.)
On the same date, Erlich responded with a denial that his copying
constituted copyright infringement and a assertion of the right to
continue his activities on the Internet. (Small Dec., 6, and
Exhibit B thereto.) On that same date, Erlich re-copied 17 pages of
the Class VIII work onto the alt.religion.scientology newsgroup, along
with counsel's August 22 letter, and announced his intention to
continue such activities. (Small Dec., 6, and Ex. B thereto.)
On August 25, 1994, plaintiffs' counsel again wrote to
Erlich, informing him that his position regarding his copying of the
confidential work was legally incorrect. (Small Dec., 7.) In his
response of August 25, 1994, which Erlich posted on the
alt.religion.scientology newsgroup, Erlich again claimed that his
copying of the confidential work did not violate the law. (Small
Dec., and Ex. D thereto.)
On August 28 and 29, 1994, and September 2, 14, 22,
26, 27, and 28, 1994, Erlich copied or caused to be copied onto the
alt.religion.scientology newsgroup substantial portions of
the additional copyrighted works listed in Exhibit A to the
Complaint, including the copyright notices on certain of the works and
consisting of a total of 16 pages of copyrighted materials.
(Pisani Dec., 6a-6j.) On or about September 8, 1994, he copied
onto the alt.religion.scientology newsgroup an unauthorized copy of
another confidential work known as "NOTs Series 24." (McShane Dec.,
31.)
After the exchanges between plaintiffs' counsel and
Erlich in September, it appeared that Erlich had acquiesced to
plaintiffs' demands and had ceased his infringing actions. Then, on
or about December 24, 1994, Erlich reposted, through Klemesrud's
and Netcom's systems, the following confidential works: two pages of
OT 1, 12 pages of OT 2, and the entire 2 pages of NOTs Series 36.
(McShane Dec. 33.) And on or about December 29, 1994, Erlich posted
the following additional confidential works onto the Internet via
Klemesrud's and Netcom's systems: three pages of OT 1, 42 pages of OT
2, a few of which were duplicates of each other, and oneparagraph of
NOTs Series 34. Erlich also informed plaintiffs' attorney that he was
"exercising [sic] his rights as a citizen of the United States."
(Kobrin Dec., Ex. A.)
On December 29, 1994, plaintiffs' counsel gave notice
to Netcom via its Manager of Computer Operations regarding Erlich's
unauthorized postings through Netcom and requested that Netcom take
whatever measures necessary to suspend access to its system for
Erlich's unlawful postings. Netcom did not take any such measures.
On December 30, 1994, plaintiff RTC, through its
counsel, notified Klemesrud that his system was being used for
unlawful postings of RTC's copyrighted and trade secret materials,
requesting that he take action to eliminate the unlawful postings, and
informing him that failure to do so would be deem contributory
infringement. (Kobrin Dec., 4 and Ex. C.) On December 31,
1994, Klemesrud responded to RTC's counsel, refuse to eliminate
Erlich's Internet access. (Kobrin Dec., 5 and Ex D.)
On January 2, 1995, Erlich sent a message to Klemesrud
via "e-mail" admitting that Erlich was reposting the materials sent to
him on the Internet and that it was his choice to make. He further
stated that "No local government or court in the US ha the power to
tell me otherwise." (Kobrin Dec., 7 and Ex.F.)
During the first several days of January, counsel for
plaintiffs communicated again with representatives of Netcom regarding
the need to take action to prevent these postings from going to the
Internet via its system. They refused to take any action to stop such
postings. (Kobrin Dec., 8 and Ex. G.) A since that time, Erlich's
postings of plaintiffs' copyrighted trade secret materials have
continued. (McShane Dec., 37-38.)
In summary, defendant Erlich has resumed, and
continues to engage in, unauthorized copying and publication of the
works in violation of plaintiffs' copyrights and trade secrets
rights. He is obviously in possession of hard copies of the works as
the sources of the unauthorized copies which he is creating on the
Internet. All copies which defendant Erlich possesses of the
confidential works and of any other Advanced Technology materials are
unauthorized. No authorized copies of the Advanced Technology
materials ever have been distributed outside the advanced Churches of
Scientology which are licensed by RTC to receive such Advanced
Technology materials under confidentiality agreements and to deliver
the services to which the Advanced Technology relates. (McShane Dec.,
55.) A theft of the NOTs Series materials from a Church of
Scientology in Denmark occurred in 1983. Testimony in a lawsuit
against those involved in the theft shows that Erlich was in
communication with the defendants in that case during the time period
surrounding the theft. (McShane Dec., 22.)
C. Absent A Restraining Order, There Is A Strong
Likelihood That Defendants Will Continue To Make And Publish
Unauthorized Copies Of The Copyrighted Materials
Erlich has shown his total disregard for plaintiffs'
rights, and also has shown contempt for the power of the court in his
statement that: "No local government or court in the U.S. has the
power to tell me otherwise." This shows that defendant Erlich will
continue his infringing conduct unless effectively restrained by this
Court. The failure of Klemesrud and Netcom to prevent Erlich's access
to Internet with infringing copying is an essential component of the
continuing infringement, and they also should be restrained by
this Court to halt the ongoing conduct.
III.
PLAINTIFF'S COPYRIGHTS UNDER FEDERAL LAW
Only two elements must be proven in a copyright
infringement action:
ownership of a valid copyright and copying of the copyrighted
work. Data East USA, Inc. v. Epyx. Inc., 862 F.2d 204, 206 (9th Cir.
1988); Baxter v. MCA, Inc., 812 F.2d 421, 423 (9th Cir. 1987), cert.
denied, 484 U.S. 954, 108 S.Ct. 346 (1987); M. Nimmer, 3 Nimmer on
Copyright 13.01.
Title 17 U.S.C. 201(d) provides that "The owner of
any particular exclusive right is entitled, to the extent of that
right, to all of the protection and remedies accorded to the copyright
owner by this title." Plaintiffs are exclusive licensees and therefore
are entitled to the same remedies and protections as the original
holders of the copyrights. Hearst Corp. v. Stark, 639 F.Supp. 970,
973 (N.D.Cal. 1986); M. Nimmer, 3 Nimmer on Copyright, 13.01[A].
The literary works in question have been duly registered
pursuant to the Copyright Act (McShane Dec., 41; Pisani Dec.,
6a-6j). Plaintiffs thereby have secured and perfected their exclusive
rights and privileges in and to those copyrights. Thus, plaintiffs,
as the exclusive licensees of the copyrights, may bring this action
for copyright infringement pursuant to 17 U.S.C. 501(b).
That defendants "copied" the copyrighted works is
beyond doubt; defendants duplicated all or substantial portions of
numerous works onto a newsgroup on an international computer network
and thereby published and made them potentially accessible to millions
of Internet subscribers who could become additional copiers. The
conduct of defendant Erlich is wholesale and willful copying of
copyrighted materials subject to the special remedies of 17
U.S.C. 504(c)(2), and the conduct of defendants Klemesrud and Netcom
constitutes either direct or contributory copyright infringement
through their providing Erlich the facilities through which unlawful
copying may occur and their additional publication of such copies.
See Sega Enterprises Ltd. v. Maphia, 1994 WL 132215, 1322 (N.D.Cal.
March 26, 1994).
By continuing to make infringing copies of literary works for
which United States copyright protection exists, defendants have
engaged in undeniable infringement of plaintiffs rights as exclusive
licensees of the copyrights, in violation of the Copyright Act, 17
U.S.C. 101, et seq.
IV.
PLAINTIFFS ARE ENTITLED TO A TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION ON ALL CAUSES OF ACTION
The Copyright Act provides that injunctive relief is
an appropriate remedy for the infringement of a copyright:
Any court having jurisdiction of a civil action
arising under this title may . . . grant temporary and final
injunctions on such terms as it may deem reasonable to prevent or
restrain infringement of a copyright.
17 U.S.C. 502(a).
In the Ninth Circuit, a party seeking preliminary
injunctive relief must show: "(1) a likelihood of success on the
merits and the possibility of irreparable injury or (2) the existence
of serious questions going to the merits and the balance of hardships
tipping in its [the copyright owner's] favor."
Apple Computer, Inc. v. Formula Int'l. Inc., 725 F.2d 521, 523
(9th Cir. 1984); Beltran v. Myers, 677 F.2d 1317, 1320 (9th Cir.
1982); Aleknagik Natives, Ltd, v. Andrus, 648 F.2d 496, 502 (9th Cir.
1980). The two standards actually are not separate tests but are the
"outer reaches" of a single continuum such that the greater the
balance of hardships tips in favor of the moving party, the less
likelihood of success on the merits need be shown. Apple
Computer, Inc. v. Formula Int'l. Inc., 562 F.Supp. 775, 783 (C.D. Cal.
1983) aff'd 725 F.2d 521 (9th Cir. 1984); Los Angeles Memorial
Coliseum v. NFL, 634 F.2d 1197, 1201 (9th Cir. 1980).
Rule 65 of the Federal Rules of Civil Procedure, "by
its very terms allows for the issuance of an ex parte temporary
restraining order when (1) the failure to issue it would result in
'immediate and irreparable injury, loss, or damage'and (2) the
applicant sufficiently demonstrates the reason that notice should not
be required."' Matter of Vuitton et Fils S.A., 606 F.2d 1, 4 (2nd Cir.
1979).
A. Plaintiffs Have Established A Likelihood Of Success On
The Merits Of Each Cause of Action In the instant case, ownership of
the copyrighted works is clearly established. The certificates of
registration provide prima facie proof of validity and ownership of
the copyrights. 17 U.S.C. 410(c); Transgo, Inc.
v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1019 (9th Cir.
1985), cert. denied, 474 U.S. 1059, 106 S.Ct. 802 (1985); National
Theme Productions, Inc. v. Jerry B. Beck, Inc., 696 F.Supp. 1348, 1352
(S.D. Cal. 1988.
Plaintiffs, as exclusive licensees, are entitled "to
all of the protection and remedies accorded the copyright owner by
this title." 17 U.S.C. 201(d). Thus, plaintiffs are likely to
prevail at trial.
B. Plaintiffs Will be Irreparably Injured If Defendant Is
Not Preliminary Enjoined As a general rule, if the holder of the
copyright establishes a probability of success on the merits, a court
will presume irreparable harm. Apple Computer, supra, 725 F.2d at
525. ("A showing of a reasonable likelihood of success on the
merits in a copyright infringement claim raises a presumption
of irreparable harm."); Wainwright Sec. v. Wall Street Transcript
Corp., 558 F.2d 91, 94 (2nd Cir. 1977), cert. den., 434 U.S. 1014, 98
S.Ct. 730 (1978) ("[I]f probable success -- a prima facie case of
copyright infringement -- can be shown, the allegations of irreparable
injury need not be very detailed, because such injury can normally be
presumed when a copyright is infringed.").
In addition, the difficulty of measuring the extent of
injury to plaintiffs through Internet publication is justification
itself for granting a temporary restraining order, since any remedy at
law would be inadequate.
U-Haul International, Inc. v. Jartran, Inc., 522 F.Supp. 1238, 1255
(D.Ariz. 1981), aff'd, 681 F.2d 1159 (9th Cir. 1982). In U-Haul, a
case under the Lanham Act involving false and deceptive advertising,
the court found irreparable injury without any proof of actual
injury. The Court noted:
[I)njury sometimes occurs whose measure is uncertain and a threat of
injury may be quite real even though the measure ofthreatened injury
defies calculation. . . . Indeed, one reason for issuing an injunction
may be that damages, being immeasurable, will not provide a remedy at
law.
Id. at 1255-56 (quoting Treasure Valley Potato Bargaining Asson
v. Ore-Ida Foods, Inc., 497 F.2d 203, 218 (9th Cir. 1974), cert.
denied, 419 U.S. 999, 95 S.Ct. 314 (1974)) (emphasis added).
Here, the danger of irreparable injury is even greater
than in the usual case, because defendants are copying not only
published works available for purchase, but also unpublished works.
Furthermore, the unauthorized publication of the works is over an
international network of computer networks which potentially exposes
the infringements to 25 million users, with the attendant risk that
the works could be copied and recopied virtually without limit.
Plaintiffs have no control over copy by defendants and others,
and that lack of control constitutes irreparable injury sufficient to
support the issuance of a preliminary injunction.
C. The Equities Weigh Heavily In Favor Of Granting The
Temporary Restraining Order And Preliminary Injunction
In this case, all equitable considerations lie on the
side of plaintiffs and weigh heavily in favor of granting a
temporary restraining order and preliminary injunction. If relief is
denied, plaintiffs will continue to suffer inevitable and irreparable
harm, both under the law and in fact, as a result o the violation of
plaintiffs' exclusive rights to publication o the copyrighted works in
question, including the unpublished confidential works which are never
published or sold to anyone Even if defendants could show any harm as
a result of the requested injunctive relief, such harm should
not enter into the Court's consideration. Where a defendant acts with
full knowledge of the plaintiff's rights and with an understanding of
the consequences which might ensue, there shall be no such balancing
of equities. Morgan v. Veach, 59 Cal.App.2d 682, 690, 139 P.2nd 976,
980 (1943); People ex rel. Younger v. F.E. Crites, Inc., 51 Cal.App.3d
961, 968, 124 Cal.Rptr. 664, 668 (1975). Despite their protestations
to the contrary, defendants obviously acted with full knowledge of the
copyrighted nature of the literary works, even copying the copyright
notices on those works in many instances. Their copying is clearly
intentional and without justification.
D. Defendants Should Not Be Given Notice Prior To
Issuance Of The Temporary Restraining Order In view of the malicious
and intentional nature of Erlich's actions, and his contempt for the
power of the courts, every possible measure should be used to prevent
him from engaging in further destructive copying and publication of
plaintiffs' protected works. Accordingly, this Court should grant the
temporary relief sought without notice to the defendants, and also
should grant the seizure order sought herein.
Further, if Erlich is permitted to dispose of or hide
his unauthorized copies after he learns of this litigation, but before
he is enjoined from doing so, the damage to plaintiffs will continue,
and this litigation could be fruitless. (McShane Dec., 56-57.)
Plaintiffs will be put to greatly increased expense to track down the
additional unauthorized copies in the hands of individuals who may
have copied them from the Internet into different archives and data
bases across the globe. There will be a great likelihood
thatplaintiffs will be unsuccessful in locating those infringing
copies. The law does not require notice under these circumstances.
To the contrary, a temporary restraining order should issue ex part.
Matter of Vuitton et Fils S.A., 606 F.2d 1, 3 (2nd Cir. 1979).
V.
PLAINTIFFS ARE ENTITLED TO AN ORDER IMPOUNDING
THE INFRINGING MATERIALS AND THE ARTICLES BY WHICH
UNAUTHORIZED COPIES HAVE BEEN REPRODUCED
A. Impoundment May Be Ordered In An Action For Copyright Infringement To
Prevent Ongoing Infringement
17 U.S.C. 503 provides in pertinent part:
(a) At any time while an action under this title is pending, the
court may order the impounding, on such terms as it may deem
reasonable, of all copies . . . claimed to have been made or used in
violation of the copyright owner's exclusive rights, and of all
plates, molds, matrices, masters, tapes, film negatives, or other
articles by means of which such copies . . . may be reproduced.
Section 503 became effective January 1, 1978. Its predecessor, former 17 U.S.C.
101, contained a similar provision providing for impoundment "during the
pendency of the action upon such terms and conditions as the court may prescribe.
. . ."
By demonstrating the need for ex parte injunctive relief to restrain
further infringement of plaintiffs' exclusive rights regarding the copyrighted
works, plaintiffs have met the standard for granting ex parte relief. See,
Duchess Music Corporation v. Stern, 458 F.2d 1305, 1307 (9th Cir. 1972), cert.
denied. 409 U.S. 847 (1972) (plaintiffs obtained ex parte order to show cause,
a temporary restraining order and a writ of seizure upon showing that defendants
were making cassette tape recordings of phonograph records legitimately issued
by plaintiffs from copyrighted compositions).
The procedures for impounding articles by court-ordered deposit or seizure
by the United States Marshal during the pendency of an action have been set by
the United States Supreme Court in its Rules of Practice for Copyright Cases.
The procedure is a summary one. As the Ninth Circuit stated in Duchess Music
Corporation v. Stern, supra, 458 F.2d at 1308:
[T]he statutory mandate is clear. "All articles alleged to infringe
the copyright" are to be impounded, and "all infringing copies . .
. " are to be destroyed. Neither the statute nor the Supreme Court
rules give the District Court any discretion to determine what to
impound or what to destroy. The process Congress granted the
aggrieved copyright proprietor is a summary one. . . . It is to
impound everything the plaintiff alleges infringes his copyright.
Rules 9 and 10 then provide that the defendant may apply to the
court for return of the seized articles if he shows that the
articles seized are not infringing copies, records, plates, molds,
matrices, or other means for making the copies alleged to infringe
the copyright.' Rule 9 . . If the articles seized are infringing
copies or infringing means, the District Court has no discretion to
return them. (Emphasis in the original.)
See also, Jondora Music Publishing Company v. Melody Recording, Inc., 362 F.Supp.
494, 499 (D.N.J. 1973), vacated on other grounds, 506 F.2d 392 (3rd Cir. 1974),
cert. denied, 421 U.S. 1012, 95 S.Ct. 2417 (1975). The Second Circuit has
re-affirmed the propriety of impoundment, and even seizure by the United States
Marshals, of articles during the pendency of a copyright action. Warner Bros.,
Inc. v. Dae-Rim Trading.Inc., 877 F.2d 1120, 1123-26 (2nd Cir. 1989).
In their separate Application for Writ of Seizure, plaintiffs are
requesting that such a writ issue only against defendant Erlich as a result of
his repeated and willful copying of Advanced Technology materials and other
materials. With respect to the remaining defendants, plaintiffs do not request
an ex parte seizure order permitting the United States Marshal to seize the
infringing materials and the instrumentalities by which they have been and may
be reproduced. Instead, plaintiffs seek only an order of impoundment requiring
defendants Klemesrud and Netcom to turn over within 24 hours, by their own hands,
all unauthorized copies in their possession. Once they have done s they are free
to move the Court to release any materials which they believe have been
wrongfully subjected to impoundment, although there should be none in light of
the narrowly drawn impoundment request.
B. An Impoundment Order Should Issue In This Case
The accompanying declarations demonstrate the following facts:
1. BPI has an exclusive license to print, publish and sell the published
literary works. (Pisani Dec., 3.) RTC has an exclusive license under the
copyrights in the unpublished confidential works containing the Advanced
Technology. (McShane Dec., 4, 24.)
2. Defendants have copied and published electronically, and are
continuing to copy and publish, a large number of copyrighted works without
authorization to do so, in violation of plaintiffs' copyrights in the works.
(McShane Dec., 28-39, 4348; Pisani Dec., 6.)
3. Because of defendants' unauthorized copying and publication of the
copyrighted works, BPI's and RTC's rights under the copyright laws are being and
have been violated by defendants.
Erlich's possession of copies of the works which he has used, and continues
to use, to make and publish unauthorized copies, as well as those unauthorized
copies which already have been made, increases both the actual and potential harm
suffered by plaintiffs. Therefore, to the extent that these copies are not
subject to a writ of seizure, they should be subject to the requested impoundment
order.
Plaintiffs' proposed Impoundment Order is narrowly drawn and specifies the
materials to be turned over.
VI.
CONCLUSION
As shown by the foregoing, Erlich has commenced and is continuing an
insidious campaign of copyright infringement and trade secrets misappropriation
in violation of federal and state law by reproducing and publishing copyrighted
materials over an international medium of gargantuan distribution capabilities,
and has been enabled in this respect by Klemesrud and Netcom. Unless enjoined,
defendants are likely to continue to copy and publish plaintiffs' copyrighted
works in violation of the exclusive rights of plaintiffs in these works.
Plaintiffs have established clear copyright infringement and irreparable harm
which justify the requested relief. The law prohibits the activities engaged in
by defendants, mandates the issuance of the requested temporary restraining order
and preliminary injunction, and justifies the Order of Impoundment permitted by
17 U.S.C. 503.
Dated: February 7, 1995 Respectfully submitted,
WILSON, RYAN & CAMPILONGO
By:
Andrew H. Wilson
Thomas M. Small
Janet Kobrin
SMALL, LARKIN & KIDD
Helena K. Kobrin
Attorneys for Plaintiffs
RELIGIOUS TECHNOLOGY CENTER and
BRIDGE PUBLICATIONS, INC.
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