United States Court of Appeals
for the Ninth Circuit
Ellison v. Robertson et al.
Harlan Ellison, a natural person,
plaintiff and appellant,
Stephen Robertson, an individual;
RemarQ Communities, Inc., a corporation;
Critical Path, Inc., a corporation;
and Does 1 Through 10,defendants,
America Online, Inc., defendant and appellee.
On Appeal from the United States District Court
for the Central District of California, Western Division
U.S.D.C. No. 00-04321 FMC (RCx)
Honorable Florence-Marie Cooper, Judge
Amici Curaie Brief of
The Business Software Alliance
TABLE OF CONTENTS
INTERESTS OF AMICI
I. The District Court Erred in Holding That Section 512(i) Does Not Require Service Providers Actually to Implement a Repeat Infringer Termination Policy in Order to Qualify for the Safe Harbors of Sections 512(a)(d).
A. The District Court Did Not Follow the Plain Language of Section 512(i).
B. The District Court's Reliance on Legislative History to Override the Plain Language of the Statute Was Misplaced.
II. The District Court Erred in Holding That Storing and Providing Access to Infringing Material for Fourteen Days Falls Within the "Mere Conduit" Safe Harbor of Section 512(a).
A. The District Court Did Not Follow the Plain Language of Section 512(a).
B. The District Court Misinterpreted the Legislative History.
STATEMENT OF INTEREST
The members of the Business Software Alliance ("BSA") have
a vital interest in the proper, balanced interpretation and application of the
safe harbor provisions of the Digital Millennium Copyright Act ("DMCA"),
17 U.S.C. § 512, both as copyright holders that make use of the DMCA in
responding to infringements of copyrights to their software programs and, in
some cases, as service providers that may benefit from the liability
protections embodied in those safe harbors. [note 1]
BSA urges this Court to reverse certain holdings of the district court
interpreting Sections 512(a) and (i) of the DMCA.
Since 1988, the BSA has been the voice of the world's
software, hardware, and Internet sectors before governments and with
consumers in the international marketplace. Its members represent the
fastest growing industry in the world. BSA educates computer users on
software copyrights and cyber security, advocates public policy that fosters
innovation and expands trade opportunities, and fights software piracy.
BSA members include Autodesk, Borland, CNC Software/Mastercam, IBM,
Intuit, Macromedia, Microsoft, Sybase, Symantec and Unigraphic Solutions
(an EDS company), as well as other companies. [note 2]
The BSA was formed out of recognition that preventing the unlawful
reproduction and distribution of software constitutes one of the fundamental economic
imperatives of building and maintaining a healthy U.S. software industry. That struggle
is an ongoing one, and losses attributable to such infringing activities remain very
substantial, accounting for billions of dollars annually. [note 3]
An increasing percentage of these losses are due to unauthorized
reproduction and distribution over online networks, including such activities that take
place within the USENET Internet service. BSA and its members rely on Section 512 of
the DMCA as a key element in their efforts to reduce the losses associated with Internet-based infringement by working closely with service providers to block access to
infringing material and activity. The BSA actively monitors infringing activity occurring
on the Internet, including within USENET groups, and relies upon the provisions of the
DMCA to send notices to protect its members' intellectual property against online
This Court reviews the district court's grant of summary
judgment de novo. Suzuki Motor Corp. v. Consumers Union of U.S., Inc.,
292 F.3d 1192, 1198-99 (9th Cir. 2002). In doing so, this Court must
"determine, viewing the evidence in the light most favorable to the
nonmoving party, whether there are any genuine issues of material fact and
whether the district court correctly applied the relevant substantive law."
Id. at 1199; Anderson v. Liberty Lobby, 477 U.S. 242, 255 (1986). In this
case, the district court made two significant errors of law in granting
summary judgment to the defendant, America Online ("AOL").
First, the district court erred in holding that Section 512(i) of
the DMCA did not require AOL to implement its repeat infringer
termination policy in order to qualify for any of the liability limitations set
forth in Sections 512(a)(d). Section 512(i) expressly provides that these
liability limitations "shall apply… only if the service provider has adopted
and reasonably implemented, and informs subscribers and account holders
of the service provider's system or network of, a policy that provides for the
termination… of subscribers… who are repeat infringers." 17 U.S.C.
§ 512(i) (emphasis added). In holding that AOL could satisfy this provision
by merely adopting a repeat infringer termination policy and notifying its
subscribers of that policywithout actually having "implemented" that
policythe district court failed to follow the plain language of Section
512(i). Instead, the court should have made a determination as to whether
AOL had in fact implemented its repeat infringer policy, and done so
reasonably, and gone further with its DMCA analysis only if this
precondition was met.
Even if the court had properly required and found that AOL
had reasonably implemented its policy, the district court further disregarded
the DMCA's plain language in holding that AOL's storage of infringing
material on its servers for fourteen days for the purpose of allowing any
AOL user to search for and retrieve such postings fell under Section 512(a)
rather than 512(c) of the DMCA. Section 512(a) by its terms applies only to
acts of "transmitting, routing, or providing connections for" potentially
infringing material, and to the "intermediate and transient storage" of such
material if such storage takes place "in the course of" a transmission. Id.
§ 512(a). Moreover, Section 512(a)(4) expressly excludes the storage of
copies that are made "ordinarily accessible to anyone other than anticipated
recipients" or are stored "for a longer period than is reasonably necessary
for the transmission, routing, or provision of connections" to such
anticipated recipients. Id.
Under the statute's plain language, Section 512(a) applies to
copies that are incidental to end-to-end transmissions. It does not apply to
copies such as those AOL stored on its servers in order to allow millions of
AOL usersnone of whom were designated by the sending partyto
search for and retrieve such copies in the same way that they would search
for material on any Internet web site. Such activities fall instead under
Section 512(c), which ensures that copyright holders have the opportunity to
limit the damage caused by such availability and retrieval through specified
notice-and-takedown procedures. The district court erred in failing to
follow the plain language of the statute, instead looking to the DMCA's
legislative history. It then compounded this error by misinterpreting that
legislative history, which in any event confirms that Congress intended a
service provider's storage of infringing material in order to make such
material available for viewing and download by its subscribers to fall under
Section 512(c) of the DMCA rather than Section 512(a).
I. The District Court Erred in Holding That Section 512(i) Does Not Require Service Providers Actually to Implement a Repeat Infringer Termination Policy in Order to Qualify for the Safe Harbors of Sections 512(a)(d).
The DMCA was enacted to address some of the special
challenges that arise in addressing copyright infringement in the online
environment. The statute reflects an effort by Congress to draw a
reasonable balance between the legitimate interests of copyright holders in
protecting their works from unauthorized copying and distribution and the
need to avoid imposing undue burdens on online service providers, who
must be given considerable flexibility in their operations in order to enable
online networks to operate effectively. Under the statutory regime, service
providers are entitled to limitations on their liability for the infringing
activities of their users ifand only ifthey satisfy certain requirements.
Those requirements are limited in scope but are critically important to
ensuring that providers work with copyright holders to mitigate the damage
caused by the infringing activities of users. The district court's decision in
this case disregarded the carefully crafted language of the statute and, as a
result, upset the balance of interests that Congress created.
A. The District Court Did Not Follow the Plain
Language of Section 512(i).
Sections 512(a)(d) of the DMCA provide limitations on
liabilityor "safe harbors"to online service providers engaged in certain
activities and under certain conditions. Service providers gain entry to these
safe harbors when they satisfy the threshold "Conditions of Eligibility" in
Section 512(i), which provides in relevant part:
The limitations on liability established by this section [i.e.,
Section 512] shall apply to a service provider only if the
(A) has adopted and reasonably implemented, and
informs subscribers and account holders of the service
provider's system or network of, a policy that provides for
the termination in appropriate circumstances of subscribers
and account holders… who are repeat infringers…
17 U.S.C. § 512(i)(1) (emphasis added). Thus, Section 512(i) has three
distinct requirements. First, a service provider must have "adopted" a repeat
infringer termination policy. Second, it must have "reasonably
implemented" that policy. And third, it must "inform subscribers" of that
policy. See Perfect 10, Inc. v. Cybernet Ventures, Inc., No. CV 01-2595LGB(SHX), 2002 WL 731721, at *20 (C.D. Cal. Apr. 22, 2002).
The district court's decision in this case read the second
requirement out of the statute, thereby excusing service providers from
"reasonably implement[ing]" their repeat infringer termination policies.
Instead, the court held that Section 512(i) requires nothing more from
service providers than communicating to subscribers "a mere threat" to
terminate repeat infringers. Ellison v. Robertson, 189 F. Supp. 2d 1051,
1066 n.15 (C.D. Cal. 2002). In so doing, the court failed to follow the well-established rule of statutory construction that "[s]tatutes must be interpreted,
if possible, to give each word some operative effect." Walters v.
Metropolitan Educ. Enter., Inc., 519 U.S. 202, 209 (1997); see also In re
Orange County, 262 F.3d 1014, 1019 (9th Cir. 2001) (same); United States
v. Robles-Rodriguez, 281 F.3d 900, 904 (9th Cir. 2002) ("It is a basic rule of
statutory construction that '[o]ne provision of a statute should not be
interpreted in a manner that renders other sections of the same statute
inconsistent, meaningless, or superfluous.'") (quoting United States v.
Fiorillo, 186 F.3d 1136, 1153 (9th Cir. 1999)). Another district court in this
Circuit has more recently recognized that the words "reasonably
implemented" in Section 512(i) must be given some meaning. See Perfect
10, 2002 WL 731721, at *22 (interpreting Section 512(i) to hold that,
"[w]hen confronted with 'appropriate circumstances,'… service providers
should reasonably implement termination").
Because the district court did not follow the express
requirement of Section 512(i) that service providers "reasonably
implement" a repeat infringer termination policy in order to qualify for the
safe harbors of Sections 512(a)(d), the court's holding on that issue should
B. The District Court's Reliance on Legislative History
to Override the Plain Language of the Statute Was Misplaced.
In holding that Section 512(i) requires nothing more than "a
mere threat" by service providers to terminate repeat infringers, the district
court relied primarily on the following passage from a Report issued by the
House Commerce Committee:
[T]he Committee does not intend this provision [i.e.,
Section 512(i)] to undermine the principles of new
subsection (l) or the knowledge standard of new subsection
(c) by suggesting that a provider must investigate possible
infringements, monitor its service, or make difficult
judgments as to whether conduct is or is not infringing.
However, those who repeatedly or flagrantly abuse their
access to the Internet through disrespect for the intellectual
property rights of others should know that there is a
realistic threat of losing access.
See 189 F. Supp. 2d at 1065 (quoting H.R. Rep. No. 105-551(II), at 61 (July
22, 1998)) (emphasis added). The district court's reliance on this passage
was incorrect in several respects.
First, it is well established that courts should not look to
legislative history where the statutory text is clear, and should never rely on
legislative history to override the statute's plain language. In this case,
while people may fairly disagree over what constitutes "reasonable"
implementation under Section 512(i), there can be no dispute that Section
512(i) does in fact require that service providers have "implemented" a
repeat infringer termination policy in order to qualify for the statutory safe
harbors. See, e.g., Costar Group, Inc. v. Loopnet, Inc., 164 F. Supp. 2d 688,
703-04 (D. Md. 2001) (denying service provider's motion for summary
judgment due to factual dispute over whether provider's implementation of
repeat infringer termination policy under § 512(i) was "reasonable and
effective"). Whatever "reasonably implement" may mean in this context, it
does not mean "do nothing." As this Court has often held, "'if the language
of a statute is clear and there is no ambiguity, then there is no need to
'interpret' the language by resorting to the legislative history or other
extrinsic aids.'" United States v. Neville, 985 F.2d 992, 995 (9th Cir. 1993)
(quoting Church of Scientology of California v. U.S. Dept. of Justice, 612
F.2d 417, 421 (9th Cir. 1979)); accord Circuit City Stores, Inc. v. Adams,
532 U.S. 105, 119 (2001) ("'[W]e do not resort to legislative history to
cloud statutory text that is clear.'") (quoting Ratzlaf v. United States, 510
U.S. 135, 147-48 (1994)). Thus, the district court's reliance on legislative
history to override the plain, unambiguous language of Section 512(i) was
Second, the legislative history quoted by the district court
makes clear that Congress did in fact intend Section 512(i) to require
service providers actually to implement a repeat infringer termination policy
in order to qualify for the safe harbors of Sections 512(a)(d). As the last
sentence of the quoted language reflects, Congress intended that "those who
repeatedly or flagrantly abuse their access to the Internet through disrespect
for the intellectual property rights of others should know that there is a
realistic threat of losing that access." S. Rep. No. 105-190, at 52 (May 11,
1998) (emphasis added). Under the district court's construction of Section
512(i), the threat of termination need not be "realistic;" rather, it need only
be "mere." A threat is not "realistic," however, if there is no risk that it will
be acted uponthat is, if the threat can always remain (in the court's words)
a "mere" threat. The court's holding plainly does not require service
providers to do anything to implement a repeat infringer termination policy.
The district court also erred in reasoning that the quoted
legislative history reflects some kind of Congressional ambivalence over the
"reasonably implemented" requirement of Section 512(i). 189 F. Supp. 2d
at 1064-66. This passage merely expresses Congress's intention that
Section 512(i) not be interpreted in a manner that would conflict with
Section 512(m). That section provides in relevant part that operation of the
safe harbors should not be made conditional upon "a service provider
monitoring its service or affirmatively seeking facts indicating infringing
activity." 17 U.S.C. § 512(m). This provision was added to allay concerns
that Section 512 might be interpreted in a manner that would require service
providers affirmatively to seek out infringing activity or to monitor every
communication passing over their networks for evidence of such activity.
There is no inherent conflict, however, between relieving
service providers of an obligation to monitor communications over their
systems and requiring them reasonably to implement a repeat infringer
termination policy. Active monitoring is hardly the only manner through
which a service provider could become aware of repeat infringement by its
users. For example, under the district court's holding, service providers
could willfully ignore evidence presented to them by rights holders and turn
a blind eye to repeated, even flagrant, acts of infringement and still satisfy
the eligibility conditions set forth in Section 512(i). Such a result would
undermine BSA's antipiracy efforts along with those of other copyright
holders and their representatives, clearly contravening Congress's intent. [note 4]
Nor was the district court correct in fearing that having service providers
implement policies for terminating repeat infringers would "indirectly import" the
notice-and-takedown provision of Section 512(c) to Section 512(a). 189 F. Supp. 2d at
1066 n.15. This conclusion confuses the very different mandates and purposes of
Sections 512(c) and (i). Section 512(i) requires service providers to implement a
termination policy as to "subscribers and account holders," but does not require service
providers to take any action with respect to infringing material. Sections 512(b), (c), and
(d), by contrast, require service providers "expeditiously to remove, or disable access to,"
infringing material, but impose no duty with respect to treatment of subscribers or
account holders. Thus, one provision addresses infringing material, while the other
addresses users who engage in infringing activities. Requiring service providers to
"reasonably implement" a repeat infringer termination policy under Section 512(i)as
the statutory text plainly requires and as Congress manifestly intendeddoes not impose
any obligation to take down content in response to notices of the type provided for under
Far from conflicting with the other provisions of the statute, the literal
meaning of Section 512(i) that the district court rejected is critical to a full realization of
the congressional purpose underlying the statute. In enacting the DMCA, Congress
sought to relieve service providers of the burdens that would flow from being subject to
unrestricted liability for the infringing activities of their users, but it also sought to create
statutory incentives for service providers to take those stepssuch as implementing
policies regarding repeat infringersthat they are uniquely positioned to take and can
take with limited cost and disruption to their overall services. To ensure that service
providers have sufficient flexibility in implementing such policies, Congress built
safeguards directly into the statutory text by providing that such implementation need
only be "reasonabl[e]" and that termination of repeat infringers need occur only in
In sum, because the district court erred in holding that Section 512(i) does
not require service providers actually to implement a repeat infringer termination policy,
its summary judgment ruling on this issue should be reversed.
II. The District Court Erred in Holding That Storing and Providing Access to Infringing Material for Fourteen Days Falls Within the "Mere Conduit" Safe Harbor of Section 512(a).
After concluding (erroneously) that AOL met the threshold safe
harbor requirements under Section 512(i), the district court next considered
whether, for purposes of the activities at issue in this case, AOL was subject
to the notice-and-takedown provisions of Section 512(c) of the statute
instead of the "mere conduit" safe harbor of Section 512(a). [note 5] The district court's conclusion that AOL's storage of infringing material on its servers
for fourteen daysduring which time tens of millions of AOL users had unlimited access
to download this materialfell under Section 512(a) rather than Section 512(c) failed to
follow the plain language of the statute.
A. The District Court Did Not Follow the Plain
Language of Section 512(a).
Section 512(a) applies to service providers only to the extent
they engage in "transmitting, routing, or providing connections for"
infringing material. 17 U.S.C. § 512(a). Where service providers also store
copies of such material, their activities fall outside the scope of Section
512(a) unless these copies are limited to the "intermediate and transient
storage of that material in the course of such transmitting, routing, or
providing connections." Id. Thus, where a service provider stores copies of
infringing material for any purpose other than the onward transmission of
that material to the anticipated recipients, these activities fall outside the
scope of Section 512(a). If other types of storage are to qualify for any safe
harbors, they must do so under Section 512(b), (c), or (d).
Section 512(a)(4) further limits the scope of the Section 512(a)
safe harbor by specifying that it will apply only if:
(4) no copy of the material made by the service
provider in the course of such intermediate or transient
storage is maintained on the system or network in a manner
ordinarily accessible to anyone other than anticipated
recipients, and no such copy is maintained on the system or
network in a manner ordinarily accessible to such
anticipated recipients for a longer period than is reasonably
necessary for the transmission, routing, or provision of
Id. § 512(a)(4). Thus, where a service provider either: (i) makes infringing
material "ordinarily accessible to anyone other than anticipated recipients";
or (ii) maintains a copy "for a longer period than is reasonably necessary" to
transmit the material to these anticipated recipients, the provider's activities
are excluded from the scope of Section 512(a).
As the court below observed, "[t]he question presented by this
case is which subsection [of Section 512] applies to the function performed
by AOL when it stores USENET messages in order to provide USENET
access to users." 189 F. Supp. 2d at 1068. The court was not considering,
and BSA does not dispute, that AOL could qualify for Section 512(a)
protection for transient copies of the posting made within its system as a
technical by-product of re-transmitting USENET postings to other USENET
peers, provided that these copies were not accessible to anyone other than
the operators of the USENET peers that were the intended recipients of the
re-transmissions. Instead, what the court had under consideration was the
proper status of the copies of the posting that AOL stored for the purpose of
allowing unlimited access to its users. Contrary to the district court's
characterization of Section 512(a) as "ambiguous," id., the unequivocal
statutory language makes it clear that storage of copies for this additional
purpose falls outside the scope of Section 512(a).
First, AOL's storage of USENET postings for the purpose of
providing access did not constitute "intermediate and transient storage… in
the course of… transmitting, routing, or providing connections." 17
U.S.C. § 512(a) (emphasis added). The record demonstrates that AOL stored
copies of USENET postings on its servers for fourteen days for the specific
purpose of making this material accessible to the search requests of AOL
usersnot for the purpose of transmitting this material to other USENET
peers. [note 6] These stored copies were no longer "in the course of" being transmitted anywhere.
Once AOL stored this material for purposes other than mere transmission, routing, or
connection, its activity fell outside the limited scope of Section 512(a).
AOL's storage also fell outside Section 512(a) because it made the
USENET postings "ordinarily accessible to [users] other than anticipated recipients." Id.
§ 512(a)(4). As the district court observed, "[i]t is clear that AOL did not select certain
recipients for th[is] material. Rather, it was accessible to any AOL user through AOL's
USENET newsgroup server." 189 F. Supp. 2d at 1071. Indeed, the USENET system
does not limit access to a pre-defined group of recipients, "anticipated" or otherwise.
Rather, USENET postings are accessible to anyone who can connect to a USENET serverwhich in practice means anyone with Internet access. See Declaration of Dennis
McClain-Furmanski (Exhibit 208), ¶ 17. Thus, transmission of the infringing material at
issue was not limited to "anticipated recipients."
It cannot seriously be maintained that the universe of Internet users who
can access USENET postings qualify as "anticipated recipients" within the meaning of
Section 512(a)(4), simply because a person posting to a USENET group anticipates or
desires that some unknown number of people will access, view, and download the posted
material. To have some meaning, this statutory text must impose some limits. It does so
by embracing point-to-point transmissions and other "push" scenarios where the content
provider designates the recipients of the materialnot where, as here, the recipients
themselves decide whether or not to download, or "pull," the material to their own
computers. As the district court noted, certain functions "such as hosting a web site or
chatroom fall under the scope of subsection (c)" rather than (a). 189 F. Supp. 2d at 1068.
Yet web sites and chatrooms are exactly the same as the USENET in this regardthe
party posting material clearly anticipates that people will search for and view or download
their postings, but cannot know at the time of posting which of the millions of Internet
users will in fact do so and "pull" their content.
Interpreting "anticipated recipients" in Section 512(a)(4) to encompass all
Internet users would effectively bring all online content within the phrase "ordinarily
accessible to… anticipated recipients." Under this interpretation, any service provider
hosting a web site that allows user postings but deletes them within at least fourteen days
could argue that it need not observe the notice-and-takedown provisions of Section 512(c)
because copies of infringing material posted to its site are merely incidental to a
transmission by the posting party to each and every user that visits and downloads
material. This would render Section 512(a)(4) meaningless, for it would not exclude any
online content from the scope of Section 512(a). As this Circuit has repeatedly held, "[i]t
is a basic rule of statutory construction that '[o]ne provision of a statute should not be
interpreted in a manner that renders other sections of the same statute inconsistent,
meaningless, or superfluous.'" Robles-Rodriguez, 281 F.3d at 904.
The plain language of Section 512(a)(4) on this point is reinforced by
Section 512(k). That subsection defines the term "service provider" for purposes of
Section 512(a) as "an entity offering the transmission, routing, or providing of
connections for digital online communications, between or among points specified by a
user, of material of the user's choosing." 17 U.S.C. § 512(k)(1). [note 7] In this case, because it was the recipients of the infringing USENET posting at issueand not the user who originally posted the materialwho specified the points to which
this material was ultimately re-transmitted, AOL was not acting as a "service provider"
within the narrower meaning of Section 512(a) with respect to the activities at issue, as
opposed to the broader definition of "service provider" applicable to Sections 512(b)(d).
This is not to suggest that there was no safe harbor available to AOL. [note 8] Instead, the district court should have ruled that AOL's storage of the posting for access
by its users fell under Section 512(c), which offers a safe harbor for service providers that
engage in the "storage at the direction of a user of material that resides on a system or
network controlled or operated by or for the service provider." Id. § 512(c)(1). See, e.g.,
ALS Scan, Inc. v. Remarq Communities, Inc., 239 F.3d 619, 620, 622-23 (4th Cir. 2001)
(applying Section 512(c) safe harbor to service provider that stored newsgroup postings
for between eight and ten days for the purpose of providing access to these postings).
Had the district court properly classified AOL's storage of the posting for
access by its users as subject to Section 512(c), AOL would still have had the ability to
limit its liability, but would have come within the notice-and-takedown provisions of
Section 512(c), which require service providers "expeditiously to remove, or disable
access to," infringing material upon notice of the infringement. 17 U.S.C. § 512(c)(1)(C).
Congress did not include a notice-and-takedown provision in Section 512(a), presumably
because it realized that service providers engaging in Section 512(a) activitiesnamely,
the onward transmission of online materialwould not retain copies of infringing
material in their networks long enough to enable them to remove or block access to such
material in response to notice from a copyright holder. Nor would they make them
generally accessible to search requests by internet users, raising the prospect of
geometrically increasing harm the longer the copy is stored. But where notice-and-takedown is feasible and will prevent such broader harmwith respect to service provider
activities falling under Section 512(b), (c), and (d)Congress made the operation of
these safe harbors conditional upon satisfaction of their notice-and-takedown provisions.
See id.; see also id. § 512(b)(2)(E); (d)(3).
Despite the unequivocal statutory language that clearly placed AOL's
storage of the posting for access by its users outside the scope of Section 512(a), the
district court, focusing almost entirely on the words "intermediate and transient storage"
in Section 512(a), concluded that these words were "ambiguous" and therefore looked to
the legislative history. See 189 F. Supp. 2d at 1066-72. This Court has repeatedly held
that courts "must interpret the [statutory] language as it is written, 'giv[ing] effect, if
possible, to every clause and word of a statute.'" In re Orange County, 262 F.3d
1014,1019 (9th Cir. 2001) (quoting Williams v. Taylor, 529 U.S. 362, 404 (2000)). Here,
the district court failed to give any effect to several key provisions of Section 512(a). Had
it done so, the court would have concluded that AOL's storage of infringing material in
order to provide its users with access to this material fell outside the scope of Section
512(a), without proceeding to the legislative history. See Neville, 985 F.2d at 995 (9th
Cir. 1993) ("'[I]f the language of a statute is clear and there is no ambiguity, then there is
no need to 'interpret' the language by resorting to the legislative history or other extrinsic
aids.'") (quoting Church of Scientology of California, 612 F.2d at 421).
Because the plain language of the statute clearly excludes AOL's activities
from the scope of Section 512(a), the district court's holding should be reversed.
B. The District Court Misinterpreted the Legislative
As a consequence of its erroneous determination that the text of
Section 512(a) was ambiguous, the district court went on to consider the
legislative history, and from that, concluded that AOL's actions fell
exclusively under Section 512(a). Even if the court's decision to consider
the legislative history had been correct, that history provides insufficient
basis for the district court's holding. The legislative history strongly
supports the statute's plain language that Section 512(a) applies only to
transmissionand to the storage of material only where it is incidental to a
transmissionbut not, as in this case, where a service provider stores copies
of material for the purpose of making that material accessible to its
subscribers. Thus, Congress stated:
The Committee intends [Section 512(a)(4)] to cover copies
made of material while it is en route to its destination, such
as copies made on a router or mail server, storage of a web
page in the course of transmission to a specific user, store
and forward functions, and other transient copies that
occur en route.
H.R. Rep. No. 105-551(II), p. 51 (July 22, 1998) (emphasis added). This
passage makes clear that different actions by a service provider, and
different copies of infringing material, may fall under different safe harbors
depending on the nature of the action, even if both actions are taken in
connection with the same type of Internet service. As the district court
readily acknowledged, it is clear that a service provider hosting a web site
would fall under § 512(c), and therefore be subject to that section's notice-and-takedown provisions. 189 F. Supp. 2d at 1068. Yet the legislative
history also suggests that if that same service provider made an incidental
copy of a web page in the course of transmitting it to a specific user that has
"pulled" it, that activity would fall under Section 512(a).
Similarly, AOL in its role as an Internet access provider may be
protected by Section 512(a) for incidental copies that it makes in the course
of transmitting a new USENET posting to a USENET peer, or in forwarding
postings to USENET peers. But AOL falls under a different provisionSection 512(c)when it stores a copy of that USENET posting on one of its
servers for the purpose of allowing its millions of users to search for and
download the posting. As Congress observed in another passage of
legislative history ignored by the district court, "[t]he term ['ordinarily
accessible' under Section 512(a)] does not include copies made by a service
provider for the purpose of making the material available to other users."
S. Rep. No. 105-190, at 42 (May 11, 1998) (emphasis added). [note 9] This legislative history confirms that, in enacting Section 512(a), Congress said what it
meant: namely, that Section 512(a) provides a safe harbor only to transmissions and to
intermediate and transient storage that takes place "in the course of" such a transmission.
The district court did not cite or rely upon any of these Congressional
statements. Instead, the court relied exclusively on two paragraphs of a House Report
commenting on an earlier version of a bill that ultimately became the DMCA. 189 F.
Supp. 2d at 1069. The Report begins with the same straightforward principles found
throughout the legislative history:
The exempted storage and transmissions [under Section
512(a)] are those carried out through an automatic
technological process that is indiscriminatei.e., the
provider takes no part in the selection of the particular
material transmittedwhere copies are retained no longer
than necessary for the purpose of carrying out the
transmission. This conduct would ordinarily include
forwarding of customers' Usenet postings to other Internet
sites in accordance with configuration settings that apply
to all such postings.…
Id. at 1069-70 (emphasis added) (quoting H.R. Rep. No. 105-551(I), at 24
(May 22, 1998)). Once again, this language confirms the plain language of
the statute, i.e., that storage of USENET postings falls within the ambit of
Section 512(a) only when associated with transmission "to other Internet
sites" (other USENET peers, not individual users) and only to the extent it
is "no longer than necessary for the purpose of carrying out the
The district court, however, focused on a subsequent passage in
the Report that stated:
This exemption codifies the result of Religious Technology
Center v. Netcom On-Line Communication Services, Inc.,
907 F.Supp. 1361 (N.D. Cal. 1995) ("Netcom"), with
respect to liability of providers for direct copyright
infringement. See id. at 1368-70. In Netcom the court held
that a provider is not liable for direct infringement where
it takes no 'affirmative action that [directly results] in
copying… works other than by installing and maintaining
a system whereby software automatically forwards
messages received from subscribers… and temporarily
stores copies on its system.' By referring to temporary
storage of copies, Netcom recognizes implicitly that
intermediate copies may be retained without liability for
only a limited period of time. The requirement in 512(a)(1)
that "no copy be maintained on the system or network…
for a longer period than reasonably necessary for the
transmission" is drawn from the facts of the Netcom case,
and is intended to codify this implicit limitation in the
See 189 F. Supp. 2d at 1070 (quoting H.R. Rep. No. 105-551(I), at 24 (May
22, 1998)) (emphasis by the court). The district court interpreted this
language as expressing a congressional intent that, so long as the storage is
temporary, as in Netcom, Congress intended Section 512(a) to apply.
Even leaving aside the clear conflict between this conclusion
and the express language of the statute, the district court simply misread this
passage. In the quoted language, the Committee did not suggest that it was
offering an interpretation that would expand the reach of section 512(a). To
the contrary, the quoted language clearly stated the Committee's intent to
limit the safe harbor provided under what later became section 512(a) by
requiring that the transmission-related storage be "temporary." Thus, far
from expanding the statutory language to apply section 512(a) treatment to
any storage that can be characterized as "temporary," the Committee was
confirming its strong intent that even storage activities that otherwise would
fit under section 512(a) would be entitled to the safe harbor of that
provision only if they were temporary in nature. Nothing in this language
indicates any congressional intent to abrogate the other equally critical and
clear elements of Section 512(a)including that any such storage takes
place "in the course of" transmitting the material, and that the service
provider does not make the material "ordinarily accessible to anyone other
than anticipated recipients."
That this latter interpretation more accurately reflects
Congress's intent is reinforced by text that appears immediately following
the passage quoted above, in which the Committee once again confirmed
that, "[t]aken together, paragraphs (1) and (2) [of Section 512(a)] mean that
providers will never be liable for monetary damages for this type of
transmission of material at the request of third parties or for intermediate
storage of such material in the course of the transmission." H.R. Rep. No.
105-551(I), at 24 (May 22, 1998) (emphasis added).
The district court's holding on this issue ultimately rests on the
remarkable conclusion that this single reference in the legislative history
indicated an intent on the part of Congress to incorporate the Netcom
holding into the DMCA in its entiretyand then to expand that holding to
secondary liability as well as direct liability. Neither the language of the
Report nor simple logic supports this conclusion. Netcom held that a
service provider that transmitted and temporarily stored USENET postings
could not be held liable for direct copyright infringement. 907 F.Supp. at
1367-73. It is correct, as the district court observed, that Congress
expressed an intent that the safe harbor provided under section 512(a) apply
to both direct and secondary liability. 189 F. Supp. 2d at 1070 n.20. It is
also correct, as discussed above, that the House Report cited an intent to
codify the implicit holding of Netcom that storage activities cannot be
exempted from liability unless they are "temporary." But it is a huge leap to
conclude that Congress therefore intended to codify all aspects of the
Netcom holding, to interpret that holding as itself broadly exempting any
storage so long as it is "temporary," and then to apply that liberal exemption
even to claims of secondary liability. The DMCA is far more than a simple
codification of Netcom. It is, rather, a complex statutory regime that
subdivides the actions of Internet service providers in ways not considered
by the Netcom court and that imposes prerequisites to its safe harbors that
were neither contemplated nor discussed in Netcom. Most importantly, the
court's misinterpretation would destroy the careful balance struck by
Congress requiring service providers to cooperate with copyright holders in
removing access to infringing material upon proper notice when it is stored
for downloading by millions of Internet users.
In the end, the district court appears to have been led astray
here by an excessively narrow focus on two facts: (1) that AOL is involved
in transmitting USENET postings and (2) that AOL's (separate) storage of
the information for access by users usually does not exceed fourteen days.
Neither of these facts is ultimately germane herethe first because it relates
to a different activity than the one at issue and the second because the
assertedly "temporary" nature of the storage, while necessary for
classification of the activity under section 512(a), is not sufficient for that
purpose. The plain language of Section 512(a) expressly excludes AOL's
storage of infringing material in order to provide all AOL users with the
ability to search for and retrieve this material, and nothing in the legislative
history supports a contrary result. Accordingly, the district court's
judgment should be reversed.
For the reasons stated above and in the briefs of appellants, the
district court's order entering summary judgment for AOL should be
Sonya D. Winner
Evan R. Cox
Daniel J. Hirsch
COVINGTON & BURLING
One Front Street
San Francisco, California 94111
Telephone: (415) 591-6000
Fax: (415) 955-6572
Attorneys for the Business Software Alliance
August 30, 2002
- Section 512 of the Copyright Act, Title 17, codifies Title II of the
DMCA, designated the "Online Copyright Infringement Limitation Act," See Pub. L. 105-304, 112 Stat. 2877 (1998).
- Additional information can be found at http://www.bsa.org
- BSA estimates that approximately one in four software programs used
in the U.S., and more than one in three programs world-wide, have been
copied without authorization, representing a loss to copyright owners and
their authorized distributors of approximately $11 billion dollars in license
fees annually. See International Planning and Research Corporation,
Seventh Annual BSA Global Software Piracy Study (June 2002), available at
http://www.bsa.org/usa/globallib/. This economic impact extends far
beyond the software industry. Studies show that, in 2000 alone, software
piracy cost the U.S. economy 118,000 jobs, $5.6 billion in lost wages, and
$1.6 billion in lost tax revenues. 2001 State Software Piracy Study,
conducted by International Planning and Research Corporation.
- See, e.g., Perfect 10, 2002 WL 731721, at *23 ("The Court does not
read section 512 to endorse business practices that would encourage content
providers to turn a blind eye to the source of massive copyright
infringement…. [O]nline service providers are meant to have strong
incentives to work with copyright holders. The possible loss of the safe
harbor provides that incentive and furthers a regulatory scheme in which
courts are meant to play a secondary role to self-regulation.") (emphasis in
- Although the phrase "mere conduit" does not appear in Section 512
itself, this phrase is often used to describe the safe harbor in Section 512(a).
See, e.g., A&M Records,Inc. v. Napster, Inc., 2000 WL 1170106 (N.D. Cal.,
Aug. 10, 2000) (Memorandum and Order Re Admissibility of Expert
Reports), at *10.
- See, e.g., Declaration of Dennis McClain-Furmanski (Exhibit 208), ¶
13-14 (noting that, while "pass through" servers that merely transmit
USENET messages to other USENET peers delete any copies of these
messages as soon as the messages are transmitted, where a service provider
also intends to make these messages accessible to its users, it will normally
store more permanent copies of these messages on separate servers).
- For purposes of Sections 512(b)(d), Section 512(k) defines "service
provider" more broadly to include "a provider of online services or network
access." 17 U.S.C. § 512(k)(2).
- Indeed, AOL claimed that its activities fell under both Section 512(a)
and Section 512(c). See 189 F. Supp. 2d at 1067.
- See also S. Rep. No. 105-190, at 41 (May 11, 1998) ("[I]ntermediate
and transient' [under Section 512(a)] refers to such copy made and/or stored
in the course of a transmission, not a copy made or stored at the points
where the transmission is initiated or received.").