2 November 2001

This presents two contrasting statements on prior restraint of publishing DeCSS. In both cases similar caselaw is reviewed with different conclusions, though, to be sure, the New York case concerns federal copyright law and the California case California trade secrets law.

The first statement is from a hearing in the New York Federal Court case of Universal City Studios, Inc. et al v. Reimerdes, Corley and Kazan (sometimes called MPAA v. 2600) in which a preliminary injunction was granted against publishing DeCSS, and a decision after trial was eventually reached in favor of MPAA. That decision has been appealed by 2600 to the US Court of Appeals 2nd Circuit and the outcome is awaited.

The second statement is from a California State Court of Appeals case DVD Copy Control Association v. Andrew Bunner in which a recent order reversed a preliminary injunction against publishing DeCSS. That case will now be returned to the State Court for either trial or dismissal.

More documents on both cases: http://cryptome.org/cryptout.htm#DVD-DeCSS

Source: http://cryptome.org/dvd-mpaa-3-ht.htm

Universal City Studios, Inc. et al v. Reimerdes, Corley and Kazan - Hearing Transcript, Southern District of New York, January 21, 2000

[Excerpt]

US District Judge Lewis Kaplan:

Another is a balancing approach in which there would be a balancing between the limitation on expression inherent in protecting a copyright and the values served by protecting the copyright. In this case, I have no doubt about where that balance falls either, assuming that were the appropriate test. The plaintiffs here have enormous investments in copyrighted material, the commercial significance of which is a matter of broad and obvious public knowledge. The creation of media content is one of the large industries in this country and one of our major exports today. The protection of intellectual property rights in materials owned by Americans is an important feature of our foreign policy and our trade policy. You only have to read the newspapers to know that.

On the other side here, we have the interest in expression. I do not for a moment demean that interest; it is an important one. But we always have to ask ourselves what we are really talking about. The facts say a lot. Putting aside programmer comments, nonexecutable programmer comments, which are not the focus of this application, we are dealing with a set or sets of computer instructions. They are, I am prepared to assume, expressive to some degree. They are much closer to an electronic or a mechanical device for performing an operation on a subject to produce a result. They are a set of instructions which cause a computer to render intelligible a data file on a DVD. If I were to balance the interest in protection of copyrights against the extent to which free dissemination of that set of machine-executable instructions serves the goals traditionally served by protection of speech—an informed society, the ability to engage in self-government, the ability to realize social and intellectual goals—the balance in my judgment falls on the side of copyright protection, even though I recognize that there is perhaps some interest served on the defendants’ side of the ledger.

I do not think I need, for present purposes, to come to a definitive theoretical view on this point. Under any of the approaches that have been brought to my attention, or that I have found on my own, I find the legislation under which plaintiffs seek relief, both on its face and as applied here, constitutional or at least highly likely ultimately to be held constitutional.

The final point that plaintiffs [probably "defendants"] make is the argument that an injunction here would be an unlawful prior restraint. It is an argument that is invoked almost as a talisman on the assumption that any and all prior restraints are unconstitutional, short of an immediate and grave threat to national security or something approaching that. I suppose, for popular and even first-year law school purposes, that is not a bad statement. But it is not really entirely accurate.

I took a look during our break at Tribe on Constitutional Law, certainly somebody who has had a few more First Amendment cases than I have, and he makes the point that if you look at what the Supreme Court and the federal courts have done rather than some of the rhetoric, the reality is sometimes hard to square with the rhetoric. He says, and I quote from the second edition of his book, at page 1046, "but prior restraints have been approved in the seemingly less momentous areas of film censorship, commercial advertising, and permit requirements to use public places for expressive activities. The relative importance of the government’s interests, therefore, cannot explain the cases." He then goes on to try to come to a doctrinally satisfying reconciliation, which I will not bore you with.

He does point out, however, that in the Progressive magazine case, United States v. Progressive, Inc., 467 F.Supp. 990, where a magazine attempted to publish an article on how to make a hydrogen bomb, the district court did issue a preliminary injunction. It remained in effect for seven months, and the Supreme Court denied a motion to expedite the appeal. It illustrates the point about the difference between the rhetoric and the reality.

Bearing in mind the very weighty interests on the plaintiffs’ side of the equation here and the, to me, quite limited, although probably not nonexistent, expressive interests in the machine-executable code, and the lack of time sensitivity of the latter, I conclude that a preliminary injunction in this case is consistent with the prior restraint doctrine and, therefore, the motion is granted. A preliminary injunction will issue.

Source: http://cryptome.org/dvd-v-bunner.htm

DVD Copy Control Association v. Andrew Bunner, Order Reversing Preliminary Injunction, November 1, 2001

[Excerpt]

Court of Appeal of the State of California:

Thus, the availability of injunctive relief against copyright infringement is supported by justifications that are inapplicable to trade secrets. Both the First Amendment and the Copyright Act are rooted in the United States Constitution, but the UTSA lacks any constitutional basis. The prohibition on disclosure of a trade secret is of infinite duration while the copyright protection is strictly limited in time, and there is no "fair use" exception as there is for copyrighted material. These significant distinctions between copyright and trade secret protections explain why courts have concluded that the First Amendment is not a barrier to injunctive relief in copyright infringement cases.

We must conclude that Bunner's republication of DeCSS was "pure speech" within the ambit of the First Amendment. It is therefore necessary for us to apply independent review to the trial court's issuance of a preliminary injunction.

5. Prior Restraint

The trial court's prohibition of future disclosures of DeCSS was a prior restraint on Bunner's First Amendment right to publish the DeCSS program. A prior restraint is generally defined as an administrative or judicial order "forbidding certain communications when issued in advance of the time that such communications are to occur." (Alexander v. United States (1993) 509 U.S. 544, 550, italics omitted.) The "special vice" of a prior restraint is that it suppresses expression not only directly, but also by "inducing excessive caution in the speaker." (Pittsburgh Press Co. v. Human Rel. Comm'n (1973) 413 U.S. 3 76, 390.)

Prior restraints on pure speech are highly disfavored and presumptively unconstitutional. (Hurvitz v. Hoefflin (2000) 84 Cal.App. 4th 1232, 1241.) "In the case of a prior restraint on pure speech, the hurdle is substantially higher [than for an ordinary preliminary injunction]: publication must threaten an interest more fundamental than the First Amendment itself Indeed, the Supreme Court has never upheld a prior restraint, even faced with the competing interest of national security or the Sixth Amendment right to a fair trial." (Proctor & Gamble Co. v. Bankers Trust Co. (6th Cir. 1996) 78 F.3d 219, 226-227; cf. Nebraska Press Assn. v. Stuart (1976) 427 U.S. 53 9, 563 [the Sixth Amendment right of a criminal defendant to a fair trial does not outrank the First Amendment right of the press to publish information]; New York Times Co. v. United States (1971) 403 U.S. 713, 718-726 ["national security" interest in suppressing classified information in the Pentagon Papers did not outrank First Amendment right of press to publish classified information].) "[I]t is clear that few things, save grave national security concerns, are sufficient to override First Amendment interests." (United States v. Progressive, Inc. (1979) 467 F. Supp. 990, 992 [court issued prior restraint on publication of technical information about hydrogen bomb only because it found that such information was analogous to information about troop movements which posed a grave threat to national security].) "If a threat to national security was insufficient to warrant a prior restraint in New York Times Co. v. United States, the threat to plaintiff s copyrights and trade secrets is woefully inadequate." (Religious Technology Center v. Lerma (E.D.Va. 1995) 897 F. Supp. 260, 263.)

DVDCCA's statutory right to protect its economically valuable trade secret is not an interest that is "more fundamental" than the First Amendment right to freedom of speech or even on equal footing with the national security interests and other vital governmental interests that have previously been found insufficient to justify a prior restraint. Our respect for the Legislature and its enactment of the UTSA cannot displace our duty to safeguard the rights guaranteed by the First Amendment. Accordingly, we are compelled to reverse the preliminary injunction.

We express no opinion as to whether permanent injunctive relief may be obtained after a full trial on the complaint, as that issue is not before us.⁹ We further have no occasion to decide whether damages for Bunner's disclosure would be appropriate in these circumstances. DVDCCA may, of course, bring an action for damages or even injunctive relief against anyone who violates the Act by conduct rather than speech. In addition, a person who exposes the trade secret may be liable for damages if he or she was bound by a contractual obligation to safeguard the secret. And anyone who infringes a copyright held by DVDCCA or by any DVD content provider may be subject to an action under the Copyright Act. We hold only that a preliminary injunction cannot be used to restrict Bunner from disclosing DeCSS.