In the
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.

No. 02-55797

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

Reply Brief of Appellant
Harlan Ellison





A. The Plain Text of Section 512(a) Refutes AOL's Position.

1. AOL's Interpretation Ignores the Plain Language of Section 512(a) Because AOL's Storage of USENET Messages Is Not "Intermediate and Transient" (Section 512(a)(4)).

2. AOL's Interpretation Ignores the Plain Language of Section 512(a) Because AOL's Selection of USENET Newsgroups is Selection of Content (Section 512(a)(2)).

B. AOL Distorts the Legislative History.




A. AOL Had the Right and Ability to Supervise the Infringing Activity on its Service.

B. AOL Had a Direct Financial Interest in the Infringing Activity.




A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) ("Napster II")

Adobe Sys. Inc. v. Canus Prods., Inc., 173 F. Supp. 2d 1044 (C.D. Cal. 2001)

ALS-Scan, Inc., v. RemarQ Communities, Inc., 239 F.3d 619 (4th Cir. 2001)

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)

Ellison v. Robertson et al., 189 F. Supp. 2d 1051 (C.D. Cal. 2002)

Fonovisa, Inc., v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996)

Gustafson v. Alloyed Co., Inc., 512 U.S. 561 (1995)

Hendrickson v. eBay, 165 F. Supp. 2d 1082 (C.D. Cal. 2001)

Playboy Enters., Inc. v. Webbworld, Inc., 986 F. Supp. 1171 (N.D. Tex. 1997)

Religious Technology Center v. Netcom On-Line Communication Servs., Inc., 907 F. Supp. 1361 (N.D. Cal. 1995) ("Netcom")

Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304 (2d Cir. 1963)

Steidl v. Gramley, 151 F.3d 739 (7th Cir. 1998)

United States v. Ron Pair Enters., 489 U.S. 235 (1989)


17 U.S.C. § 512(a)

17 U.S.C. § 512(c)

17 U.S.C. § 512(i)

17 U.S.C. § 512(k)

Fed. R. Civ. P. 5(b)

Fed. R. Civ. P. 56(a)

Legislative Materials

House Commerce Committee, H.R. Rep. 105-551 (1998) (two vols.)

Senate Judiciary Committee, S. Rep. 105-190 (1998)

Digital Millennium Copyright Act, H.R. Rep. No. 105-796 (1998)


AOL Anywhere Help, (Oct. 29, 2002)

2A Norman J. Singer, Sutherland Statutes and Statutory Construction (6th ed. 2000)

Random House Unabridged Dictionary (2d ed. 1993)

What Are Usenet Newsgroups?, (Oct. 29, 2002)

Willard V. Quine, Philosophy of Logic (1970)


In its brief, AOL fails totally to address the central issue in this case — the plain meaning of the text of 17 U.S.C. § 512(a). Section 512(a) of the DMCA provides a safe harbor for ISPs such as AOL only where the ISP's sole role is transmitting information from place to place, with only "intermediate" and "transient" storage of the information as it passes from origin to destination. AOL's storage of USENET postings for fourteen days to make them available for download by its millions of subscribers can in no way be called either "intermediate" or "transient." If AOL's reading — based solely on a scrap of legislative history discussing a draft of the DMCA that Congress expressly rejected — were correct, ISPs such as AOL could shelter massive infringement of copyrighted material on their USENET servers, and they would be under no obligation ever to stop such material from being disseminated to the world without the author's permission. Congress did not intend that result.

Nor should the Court take seriously AOL's claim that the sky will fall if the District Court is reversed. As discussed below and in Ellison's opening brief, AOL could have claimed the protection under the safe harbor of § 512(c), if only it had complied with the straightforward requirements of the DMCA, including making certain that it had provided the Copyright Office with the correct contact information for reporting instances of infringement and removing infringing material from its USENET servers, as AOL eventually did in this case. Because AOL failed to comply with the eligibility requirements for § 512(c)'s safe harbor and failed to comply with § 512(i)'s requirement that it have "reasonably implemented" a policy against repeat infringers, AOL — on these facts — cannot claim the protection of any of the DMCA's safe harbors.

Finally, the District Court fundamentally misapplied this Court's precedent on vicarious infringement, giving license to AOL to make infringing material available to its subscribers through its USENET service even where it directly benefits from that service and has the ability to control the material that is made available to its subscribers, including by removing infringing postings.

For all of these reasons, the District Court's decision must be reversed, and this case should be remanded for trial on Ellison's claims for vicarious and contributory infringement.


The District Court correctly held there remained a genuine issue of material fact as to whether AOL committed contributory infringement. Ellison v. Robertson, 189 F.Supp. 2d 1051, 1059 (C.D. Cal. 2002). The District Court did not hold a trial on that issue only because it believed that AOL fell within the safe harbor of § 512(a). Because that ruling is wrong, this case must be remanded for a trial on AOL's contributory infringement, regardless of whether this court reverses the District Court's ruling on vicarious infringement.

The District Court made a fundamental error in reading § 512(a) to apply to AOL's conduct in this case, and AOL has utterly failed to rescue that reading. AOL begins by wholly ignoring the text of the statute and ends by distorting the legislative history.

AOL's primary argument is not a legal argument at all. It is a policy argument that the sky will fall on ISPs if the storage of USENET postings available for users to download is not eligible for the § 512(a) safe harbor. That is simply untrue. As the Fourth Circuit found and AOL's own brief concedes, USENET postings are material stored by an ISP and, as such, the ISP may qualify for the safe harbor under § 512(c) if it complies with that subsection. AOL's position is an example of a false dilemma, a classic logical fallacy. But contrary to AOL's assertions, the alternative to classifying USENET postings under § 512(a) is not the absence of any DMCA limitation at all, but rather evaluation under the proper DMCA limitation — § 512(c). See, e.g., Willard V. Quine, Philosophy of Logic (1970) at 83-85 (describing fallacy of the false dilemma). ISPs are thus protected from liability so long as they take the basic steps that AOL failed to take in this case, such as notifying the Copyright Office of a functioning e-mail address to receive complaints of infringement and taking down infringing material upon notice.

In contrast, if AOL's reading prevails, copyright owners will have no ability to stop pervasive infringement of their copyrights. Under AOL's view, it has no obligation at all to remove infringing material — including whole works such as Ellison's in this case — that it knows is being maintained on its servers and being copied and downloaded by millions of subscribers. That result cannot be squared with the statute's text or with Congress' stated goals in enacting the DMCA.

A. The Plain Text of Section 512(a) Refutes AOL's Position.

AOL never comes to grips with the statutory text, which forecloses its interpretation. Indeed, AOL never bothers to parse the statute. Instead, AOL's interpretation of § 512(a) is guided by its apparent belief that a fragment of the legislative history can overrule the plain meaning of the statute.

But that gets traditional principles of statutory construction completely backwards. See United States v. Ron Pair Enters., 489 U.S. 235, 241 (1989) ("The task of resolving the dispute over the meaning of [a statute] begins where all such inquiries must begin: with the language of the statute itself.").[note 1] Regardless of the legislative history, courts must assume

that the plain and ordinary meaning of the statute was intended by the legislature.… Courts are not free to read unwarranted meanings into an unambiguous statute even to support a supposedly desirable policy not effectuated by the act as written.

2A Norman J. Singer, Sutherland Statutes and Statutory Construction § 46.01 (6th ed. 2000) (hereinafter Sutherland). All sections of a statute must be read together to create a "harmonious whole," not as isolated words and clauses out of context. Id. at § 46.05; see also Gustafson v. Alloyed Co., Inc., 512 U.S. 561, 568 (1995) (courts "construe statutes, not isolated provisions").

AOL's position — especially its claim that USENET communications are transitory and that any "temporary" storage of infringing material falls under § 512(a) — is not supported by either the text of the statute or the only appellate opinion to date that applies the DMCA's provisions to USENET services, ALS-Scan v. RemarQ Communities, Inc., 239 F.3d 619 (4th Cir. 2001).[note 2]

1. AOL's Interpretation Ignores the Plain Language of Section 512(a) Because AOL's Storage of USENET Messages Is Not "Intermediate and Transient" (Section 512(a)(4)).

Subsection (a) concerns "transitory digital network communications" and provides a safe harbor only for "transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections…" 17 U.S.C. § 512(a). [note 3] Contrary to AOL's argument, the terms "intermediate" and "transient" are not synonyms for "temporary." Thus, the fact that AOL stored the material for "only" fourteen days on its servers does not place AOL's conduct within § 512(a).

"Intermediate" primarily means "between two points, stages, things, persons, etc.," Random House Unabridged Dictionary (2d ed. 1993) at 995, while "transient" primarily means "not lasting, enduring, or permanent," id. at 2010. "Transient and intermediate" storage thus describes "a communication stage between the origin and destination of a message that is not preserved." To qualify under § 512(a), the storage must be both "intermediate" and "transient" and it must be part of the process of "transmitting, routing, or providing connections" - i.e., the storage must be part of the process of transmitting the information. But information stored for fourteen days on AOL's servers and accessible by any of its millions of subscribers simply does not qualify. Such storage is neither intermediate nor transient. Rec. 1:46-47 (describing storage of USENET messages on servers separate from the peering process); Rec. 1:29 ¶ 23 (admitting that AOL retains binary newsgroup messages for fourteen days).

This reading is confirmed by § 512(a)(4), which provides "no copy of the material made by the service provider in the course of such intermediate and transient storage is maintained on the system or network in such a manner ordinarily accessible to anyone other than the 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 of time than is reasonably necessary for the transmission, routing, or provision of connections." 17 U.S.C. § 512(a)(4). Material stored on USENET servers for all subscribers to access is plainly "maintained… in a manner ordinarily accessible" to people other than its anticipated recipients. This is the whole point of the USENET: postings are made available to the public at large. USENET servers, including AOL's, maintain postings longer than required for transmission and routing of the information, precisely so that millions of subscribers may be able to access them. [note 4]

AOL does not respond to the clear text of the statute. Indeed, AOL does not even seek to explain what the words "intermediate" and "transient" mean. Rather, AOL obfuscates the issue by ignoring storage on its USENET servers, discussing instead the process of transmitting postings from its USENET servers to other such servers. But regardless of its transmission of USENET postings between servers in the peering process, AOL also stores the material for two weeks, allowing anyone to view and download material, if they so desire. Ellison's works were stored on the server aspect of AOL's USENET system for at least two weeks, allowing all AOL subscribers to access them — without Ellison's authorization. 189 F. Supp. 2d at 1054; Rec. 1:46-47, 52, 55.

Ultimately, AOL has no argument about the text of § 512(a) because its conduct here — storing information for the benefit of all of its users — potentially qualifies it for the safe harbor in subsection (c) (see infra), but totally excludes it from the safe harbor in subsection (a).

2. AOL's Interpretation Ignores the Plain Language of Section 512(a) Because AOL's Selection of USENET Newsgroups is Selection of Content (Section 512(a)(2)).

AOL argues that it does not select content because, while it does select which USENET newsgroups to store and make available, it does not choose the postings within each newsgroup. AOL Br. 54-56. That argument — which depends on reading the term "material" to be limited to individual postings - cannot be squared with the statute. AOL further argues that it selected USENET newsgroups based upon strictly technical factors, not editorial considerations. That argument cannot be squared with the facts.

The term "material" in § 512(a) is not limited or qualified in any way and certainly not in the way that AOL suggests. Section 512(a) nowhere suggests that the selection of groups of postings — what AOL does when it selects newsgroups — is somehow different from the selection of individual postings within a group that is defined by subject matter. An ISP such as AOL clearly makes a selection when it chooses what newsgroups to make available to its customers. Accord, Senate Judiciary Committee, Digital Millennium Copyright Act of 1998, S. Rep. No. 105-190 (1998) at 42 (comparing editorial function to a radio station). Unlike an electronic mail message, which can be sent from literally any source on any subject to an ISP's customers, an ISP must affirmatively choose to carry a newsgroup to enable its subscribers to receive that category of information. Rec. 1:51-55. AOL's control over the USENET newsgroups it provides its subscribers is similar to the control that an ISP exercises over the web sites it hosts. The ISP controls what sites it hosts, but does not control the specific content within each of those sites. The DMCA is crystal clear that hosting a web site does not qualify for the safe harbor under § 512(a) — such activities are eligible only for protection under § 512(c). Storing USENET newsgroups is no different.

When deciding to carry specific news groups, AOL's employees considered both technical and content reasons. AOL's employee responsible for adding the individual news groups testified that she "accept[s] requests from AOL members," Rec. 2:98, implying that she does not implement every request. Indeed, AOL has now decided not to carry the alt.binaries.e-book newsgroup. Rec. 2:112.

Contrary to AOL's claims, neither Ellison nor supporting amici demand that AOL monitor its newsgroups for infringing material on a daily basis, or take any action absent knowledge of facts and circumstances that would lead one to conclude that infringement is occurring. When, however, an ISP has total control over whether its millions of subscribers are able to access particular newsgroups and it is made aware that infringement is occurring, it must remove the material in order to retain the protections of the DMCA's safe harbor (under §512(c)). As AOL's belated removal of the newsgroup demonstrates, this is not at all burdensome.

B. AOL Distorts the Legislative History.

Rather than attempt to explain how its interpretation can be squared with the statutory text, AOL forsakes the text entirely and relies exclusively on a fragment of legislative history — specifically its claim that § 512(a) was intended to codify the result in Religious Technology Center v. Netcom On-Line Communication Servs., Inc., 907 F. Supp. 1361, 1370 (N.D. Cal. 1995) ("Netcom").

That is flatly wrong. AOL distorts the legislative history by relying on a fragment from an early draft of the DMCA. [note 5] Both the House and Senate, in later reports concerning a version of the statute much closer to that actually enacted, explicitly denied an intent to codify any decision, much less the Netcom decision. S. Rep. 105-190 (1998) at 19 (expressly denying intent to codify any decision); H.R. Rep. No. 105-551 (II) (1998) at 50-51. The Conference Committee explicitly distinguished the DMCA from "existing law." H.R. Rep. No. 105-796 (1998) at 73. If anything, the fact that Congress deleted any reference to Netcom after rejecting the initial draft of the statute confirms that Congress did not intend to codify that case.

Congress's express rejection of any attempt to codify Netcom coincides with major changes in the structure and purpose of the DMCA from its early drafts. The earlier version sought to legislate changes to the law of direct and vicarious infringement, of which Netcom was one recent articulation. Congress ultimately abandoned that approach and rewrote the structure of the statute. While some words remained the same, the drafts of the DMCA went from defining a single, broad category of conduct that was excluded from copyright infringement to defining several different functions, each of which was eligible for limitations on liability so long as the service provider complied with all relevant requirements. In particular, in the final bill, Congress created a separate safe harbor — subsection (c) — that covers the storage of material — exactly what AOL did here — where the service provider removes infringing material when it has reason to know that infringing activity is occurring. It is the statute that Congress passed that this Court must interpret, not the draft discussed at length in AOL's brief. [note 6]

In staring myopically at a single fragment of early legislative history, AOL grossly distorts the message of the complete legislative history. S. Rep. 105-190 (1998) at 42 (§ 512(a) is limited to conduit-only functions). The complete legislative history draws a clear line between merely transmitting material, which falls within § 512(a), and storing material on a server for general access, which does not. As the House Report explains, to fall within § 512(a), information may be stored only "en route to its destination." H.R. Rep. No. 105-551(II) (1998), at 51. AOL's reliance on a single fragment of legislative history that might support its position is unavailing in the face of the complete legislative history and the text of the statute.

Denying application of § 512(a) to the storage of USENET postings does not eliminate protection under the DMCA. As the Fourth Circuit stated in ALS-Scan, § 512(c) provides another avenue for an ISP to avail itself of the DMCA's limitations on liability. If AOL were to remove the infringing material from its USENET servers, as required by its own policy and as it did in this case after some delay, and otherwise comply with the requirements of the DMCA, such as § 512(i), it would have its liability limited for monetary damages for direct, contributory, or vicarious infringement. This is the result that Congress intended and one that fairly distributes a benefit to AOL in exchange for what is concededly a minimal burden (the burden of removing access to the infringing newsgroup, as it has now done). In contrast, if AOL's § 512(a) argument prevails, Congress' objectives will be upended. AOL would get all of the benefits of a limitation on its liability andall of the benefits that accrue to it by making valuable infringing material available to its millions of subscribers without any obligation to remove the material once it knows it is infringing.

For all of these reasons, AOL is not eligible for the safe harbor under subsection (a) for storing and making available to its millions of subscribers postings from USENET newsgroups. The District Court's opinion should be reversed.


As an alternative to misclassifying USENET servers as providing "transitory communications," AOL attempts to treat those same servers as providing stored communications under § 512(c). Ellison agrees that AOL might qualify for this safe harbor. Accord, ALS-Scan, 239 F.3d at 623 (treating USENET servers as stored communications under the DMCA). AOL, however, can only avail itself of the § 512(c) safe harbor if it complies with the mandatory prerequistites of that subsection. The District Court's findings and the record below demonstrate AOL failed to do so.

First, AOL failed to comply with the clear requirement of § 512(c)(2), which allows a service provider to invoke § 512(c) "only if the service provider has designated an agent to receive notifications of claimed infringement… by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office…" 17 U.S.C. § 512(c)(2) (emphasis added).

AOL's brief obfuscates the matter by asserting what it did do; the problem is instead what it did not. AOL identifies a number of places where it claims one could find contact information to notify it of copyright infringement, but it did not do what the statute requires: AOL did not ensure that it had supplied accurate contact information to the statutorily designated central repository for DMCA agent contact information. See (publicly accessible database provided by the Register of Copyright). Thus, when copyright holders such as Ellison attempted to notify AOL of infringement occurring on or through AOL-based services and sent notifications to the very place that AOL had identified, those notices went into a black hole. [note 7] The notification messages were not forwarded to a working address or, it appears, ever received by anyone. As the District Court recognized, this failure to receive notices of infringement was AOL's own fault, and was relevant to whether AOL could qualify for the § 512(c) safe harbor. 189 F. Supp. 2d at 1058, 1065 n.14. That fact absolutely bars affirmance under AOL's alternate theory.

Second, AOL also failed to meet the mandatory preconditions in § 512(c)(1). Under § 512(c)(1), the safe harbor does not apply if the service provider has actual knowledge or is aware of facts and circumstances from which the infringing activity is apparent and fails to expeditiously stop the infringement on its network. AOL avers that it did not have actual knowledge of the infringements, because its designated agent allegedly did not receive Ellison's counsel's notification e-mail, but the District Court was presented with substantial evidence that AOL had actual knowledge, or at a minimum, an awareness of facts and circumstances from which the infringing activity was apparent. For example, an AOL employee designated to take complaints had actual knowledge of rampant infringements in alt.binaries.e-book. Rec. 1:121-23; 189 F. Supp. 2d at 1058 ("Miller's phone call… is another piece of evidence which might lead a reasonable trier of fact to conclude that AOL should have known about the infringement of Ellison's copyrights occurring in its newsgroup"). Other evidence also could lead a jury to believe that AOL's employees responsible for managing the newsgroup servers were aware of alt.binaries.e-book's nature as a fencing operation for stolen intellectual property. Rec. 2:97-98, 106, 145-47. The very name of the newsgroup would imply to a sophisticated holder of intellectual property rights — such as AOL — that it includes substantial infringing activity. Cf. ALS-Scan, 239 F.3d at 624-25 (name of newsgroup alone could indicate infringing activity).

Indeed, the sum of this evidence led the District Court to conclude that AOL's knowledge was sufficient to support a finding of contributory infringement. 189 F. Supp. 2d at 1058. [note 8] That finding must be construed against AOL's motion for summary judgment, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 244 (1986) (construe facts and evidence against motion for summary judgment), and precludes affirmance under subsection (c) as well.

AOL also did not expeditiously remove the infringing material after it knew of it. John Miller, an AOL customer, notified AOL of substantial infringing activity in early April 2000, and Ellison's counsel notified AOL of the specific infringements at issue on April 17, 2000. [note 9] AOL did not respond to either notification but waited until April 28, 2000, after suit was served upon it. This is inconsistent with AOL's own policy. Rec. 2:50 (48 hours). Neither is it "expeditious," particularly in the moment-to-moment context of the Internet. [note 10]

Finally, AOL asserts that the notification sent by Ellison's counsel did not conform to the requirements of § 512(c)(3). That argument is a red herring because a service provider is eligible for the safe harbor of § 512(c) only if it complies with the mandatory preconditions in that subsection. If the ISP fails, as AOL did, to comply with § 512(c)(1) or (2), it does not matter what Ellison's notice said. AOL thus does not qualify for the safe harbor, and Ellison's claims of infringement must be tried.

In any event, AOL's claim that Ellison's notice was unsatisfactory is also wrong. AOL's argument misinterprets both the contents of the e-mail, Rec. 1:105-07, and the statutory requirement that a notification of infringement "comply substantially" with certain statutory elements. See also ALS-Scan, 239 F.3d at 621 (similar notice found compliant).

AOL asserts that the notification fails to adequately identify either the works or the infringing postings. [note 11] However, the letter explicitly identifies the authors represented and the location of the infringing material in alt.binaries.e-book; it also avers that all identifiable material to be found there by several identified authors, including Ellison, is pirated. Even cursory examination of the subject lines in the newsgroup would disclose the identity of the works in question and their authors. Cf. ALS-Scan, 239 F.3d at 624 ("when a letter provides notice equivalent to a list of representative works that can be easily identified by the service provider, the notice substantially complies with the notification requirements"). AOL asserts that newsgroups named after the copyright holder were the critical factor that made ALS-Scan's notice substantially compliant. However, the Fourth Circuit actually relied upon identification of the groups as created for the purpose of infringing copyrights; the name of the copyright holder in the group name just confirmed identification. Id. A group named "alt.binaries.e-book" would imply that the group contains pirated material, but does not itself identify the holder of the individual rights — who can be identified with the single additional step of reading the subject line of infringing messages found in that group.


AOL can claim the benefit of none of the DMCA safe harbors if it failed to comply with § 512(i). In its brief, AOL mischaracterizes Ellison's arguments, claiming that they concern only dicta in the opinion below. To the contrary, Ellison challenges both the District Court's interpretation of Section 512(i) and the court's apparent finding that there were no disputed material facts that would preclude summary judgment.

The district court interpreted § 512(i) as not requiring service providers, such as AOL, to ever terminate repeat infringers. In its view, the statute requires the existence of a policy against repeat infringers, but does not require that the policy actually to be enforced in order for the ISP to have a "reasonably implemented" policy. For that reason, the district court viewed as irrelevant (and thus insufficient to preclude summary judgment) the fact that AOL has never terminated a repeat infringer and AOL provided to the Copyright Office and to the public a non-functional e-mail address that ensured it would not receive notices of infringement. That interpretation was legal error because a policy can only be "reasonably implemented" as the statute requires, if it is enforced and if the service provider provides adequate means to receive notice of instances of infringement. See Steidl v. Gramley, 151 F.3d 739 (7th Cir. 1998) (systematic failure to enforce a policy is evidence that can result in liability).

Once § 512(i) is properly understood, it is clear that the district court could not have granted summary judgment to AOL. Contrary to the mischaracterizations by AOL and its supporting amici, Ellison and his amici do not seek to make failure to terminate any repeat infringer a per se requirement under § 512(i). Instead, Ellison offers this as one piece of evidence that could lead a jury to find that AOL had not reasonably implemented its policy because AOL — an ISP with 25 million accounts — had never terminated an individual as a repeat infringer. Rec. 2:54-55.

Perhaps AOL simply chose not to enforce its policy. Or perhaps AOL did not receive sufficient complaints to characterize any of its users as repeat infringers because it provided inaccurate and misleading contact information to the Copyright Office. 189 F. Supp. 2d at 1058 ("AOL's failure to receive the April 17, 2000, e-mail is its own fault"). At a minimum, the failure to actually impose the policy, either alone or together with the dubious credibility of AOL's key witness, [note 12] creates a triable issue of fact as to whether AOL's policies and procedures for dealing with repeat infringers were reasonably implemented consistent with § 512(i).

There is no triable issue of fact, however, concerning AOL's provision of misleading and inaccurate contact information to copyright holders who need to notify AOL of infringements. The District Court properly found that it was AOL's "own fault" that it did not receive notification from Ellison's counsel, and virtually certainly from others:

Inexplicably, AOL had changed its contact e-mail address from to in fall 1999, but waited until April 2000 to notify the Copyright Office of this change. As a result, the complaints of individuals such as Ellison's attorney, who obtained AOL's e-mail address from the Copyright Office and attempted to notify AOL of infringement occurring on its servers were routed to the defunct account. Nor did AOL make provision for forwarding to the new address e-mails sent to the defunct account.… If AOL could avoid the knowledge requirement through this oversight or deliberate action, then it would encourage other ISPs to remain willfully ignorant…

189 F. Supp. 2d at 1058 (italics in original); compare with H.R. Rep. 105-551 (II) at 61 ("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"). It is impossible to characterize a threat as "realistic" when an ISP not only fails to comply with the DMCA's notification provisions, but provides affirmatively misleading contact information — contact information upon which copyright holders would rely in notifying the ISP of infringements on its services. The District Court failed to apply its finding that AOL could not evade the knowledge requirements for contributory infringement by supplying inaccurate and misleading contact information, 189 F. Supp. 2d at 1058, to the underlying need to notify an ISP of repeat infringers to create that "realistic threat" of termination under § 512(i), Id. at 1064-66.


Whether a defendant is liable for vicarious infringement must be determined prior to, and independent of, any consideration of the DMCA. See A&M Records, Inc. v. Napster, Inc., 239 F.3d at 1004, 1025 (9th Cir. 2001). AOL, much like the District Court in the case of Hendrickson v. eBay, Inc., 165 F. Supp. 2d 1082 (C.D. Cal. 2001), merges the two inquiries, an inherently flawed approach. The DMCA is a safe harbor from liability for copyright infringement, not a complete defense. A safe harbor need only be considered if the defendant would otherwise be liable for some form of copyright infringement, be it direct, vicarious, or contributory. At a minimum, this Court has the opportunity to re-emphasize the common sense rule articulated in Napster that one must first determine that vicarious liability could exist in a given case before considering any safe harbor provision that might provide protection for that liability. Otherwise, the doctrines of secondary liability may become irretrievably bound up with the DMCA See also S. Rep. No. 105-190 (1998) at 19 ("the Committee decided to leave the current law [of contributory and vicarious liability] in its current state…"). Upholding the ruling below will obscure the doctrines of secondary copyright liability for parties who find themselves litigating copyright cases in non-Internet contexts. Perhaps more importantly, explicitly deferring consideration of the DMCA in deciding whether a party would otherwise be liable for copyright infringement would make clear that the statute did not effectively "rewrite copyright law for the online world," a result the District Court below does not intend. 189 F. Supp. 2d at 1061.

A. AOL Had the Right and Ability to Supervise the Infringing Activity on its Service.

AOL insists a defendant cannot be found liable for vicarious infringement unless it can control infringing conduct at "the root level." Tellingly, AOL ignores an important district court case cited by Ellison in his principal brief, Playboy Enters., Inc. v. Webbworld, Inc., 986 F. Supp. 1171 (N.D. Tex. 1997). The facts of that case are directly on point and the analysis crystallizes Ellison's position:

That defendants had no control over those responsible for originally uploading the infringing images onto the Internet is not relevant to the issue of defendants' control over their infringing activity. The only relevant question regarding the element of control is whether defendants had the right and ability to control what occurred on the Neptics website.

Id. at 1177. Moreover, contrary to AOL's assertions, the "root level" infringements in the seminal case of Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304 (2d Cir. 1963), were not the rack-jobber's sales of the infringing records to the phonorecord section of the department store, but the recording of the infringing records themselves. See also Fonovisa Inc. v. Cherry Auction, Inc., 76 F. 3d 259, 262-63 (9th Cir. 1996) (holding owner of swap meet vicariously liable for sales of infringing material by individual vendors).

The true "root level" infringements of copyrighted works will often occur behind closed doors by one individual with a pen, recording facilities, or, as in this case, a scanner. Very rarely will the defendants who wreak the most harm — such as AOL or the H.L. Green department store — ever have access to that sort of "root level" infringer. If a large distributor of content like AOL must have absolute "control" over an individual like Stephen Robertson in this case, the distributor will almost never be found secondarily liable. This would fly in the face of the burden-shifting signaled by the court in Shapiro: The infringer — here a company that facilitates distribution of infringing material — is in the best position to avoid the harm. See Shapiro, 316 F.2d at 308. [note 13]

B. AOL Had a Direct Financial Interest in the Infringing Activity.

AOL makes Ellison's point when it states that:

Napster, unlike AOL, offered its subscribers only one service… AOL's services, on the other hand, are "radically different from that of Napster," and AOL offers a panoply of offerings…

AOL Br. at 30, quoting Ellison, 189 F. Supp. 2d at 1062. In its brief, AOL argues that the law in this Circuit requires that Ellison prove that the infringing works constitute a "substantial" draw. AOL Br. at 29. This mischaracterizes the law in this Circuit; neither this Court's decision in Fonovisa nor the opinion in Adobe Sys. Inc. v. Canus Prods. Inc., 173 F. Supp. 2d 1044 (C.D. Cal. 2001), require a "substantial" draw to prove direct financial benefit. The court in Adobe held only that Fonovisa requires "a direct financial benefit from the 'draw' of the infringing products." Adobe, 173 F. Supp.2d at 1051. As this District Court recognized, this Court has never held that the draw be substantial. Ellison, 189 F. Supp. 2d at 1063 n.11. The District Court below should have allowed a jury to decide whether or not AOL's USENET services, and its admitted desire to draw customers, sufficiently created a consumer draw to justify imposing vicarious liability. Under AOL's reasoning, no specific service offered by a broad-based ISP like AOL would ever create vicarious liability. Providers of a single service, such as Napster, would be liable, but AOL would not be liable for the exact same conduct. That view finds no support in the law. Cf. Shapiro, 316 F.2d at 308 (imposing liability for infringements taking place in a single department at a department store).

One need only visit AOL's description of the USENET to see that USENET offerings are an important subscriber benefit.

There are newsgroups on every topic imaginable, from celebrity gossip to academic discussion, sports talk and personal ads, and much, much more. And it's not just talk; you can find binary files, such as images, sounds, and software in newsgroups.

[AOL's publicly accessible website,] What Are Usenet Newsgroups?, (Oct. 29, 2002; boldface in original). USENET offerings are important enough to command the fourth entry on AOL's help page. AOL Anywhere Help, (Oct. 29, 2002). The issue of whether AOL was receiving a direct financial benefit has nothing to do with whether a specific number of individuals were specifically drawn to the alt.binaries.e-book newsgroup. There is a genuine issue of material fact as to whether, like the swap meet owner in Fonovisa, AOL derived a direct financial benefit by providing its customers with access to a tremendous variety of services and content, including that newsgroup. Fonovisa, 76 F.3d at 263-64 (holding that "the sale of pirated recordings at the Cherry Auction swap meet is a 'draw' for customers"). AOL devotes at least one employee full time to managing USENET operations, and several other employees have significant duties related to the USENET. AOL would not have expended the effort to create these services and designate employees to maintain them unless the services are a sufficient customer draw to justify the effort involved in creating and maintaining them.


Ellison requests this Court reverse the determination of the district court that AOL may not be found liable for vicarious copyright infringement. Ellison also requests that this Court rule that AOL cannot avail itself of the limitation on liability afforded by the DMCA by holding that AOL's policies and procedures do not satisfy the requirements of 17 U.S.C. § 512(i); that AOL's provision of USENET services to its members does not fall within 17 U.S.C. § 512(a), thereby avoiding a conflict with the Fourth Circuit; and that AOL's provision of USENET services to its members does not qualify on these facts under 17 U.S.C. § 512(c).

Respectfully submitted this fourth day of November, 2002.
John H. Carmichael
Brigit K. Connelly
Charles E. Petit
Kulik, Gottesman, and Mouton, LLP Law Office of Charles E. Petit
Attorneys for Plaintiff and Appellant


  1. AOL cites Ron Pair for the opposite proposition: that one must rely on legislative history to determine intent. However, the Ron Pair court determined that the words of the statute did not clearly contravene the underlying policy, and began by parsing the statute. Ron Pair Enters., 489 U.S. at 242.
  2. Ellison respectfully notes that affirming the District Court on this issue will create a conflict with the Fourth Circuit on the proper treatment of the USENET under the DMCA. ALS-Scan, 239 F.3d at 623 (USENET is stored, not transitory, communication).
  3. Subsection (c) concerns "the storage at the direction of a user of material that resides on a system." If the "intermediate" in "intermediate and transient" refers to some "intermediate term," one would expect subsection (c) in contrast to explicitly refer to a longer period of time, using a phrase such as "long-term storage." Subsection (c) refers only to "storage" without modification. Cf. ALS-Scan, 239 F.3d at 623 (USENET messages are stored communications and fall under § 512(c)). It seems quite curious that one subsection would refer to a temporal threshhold, while a corresponding subsection passed in the same bill would not.
  4. The DMCA defines "service provider" differently for transitory than for stored communications. Compare 17 U.S.C. § 512(k)(1)(A)(defining ISP as provider of transmission, routing, or connections between points specified by user as to § 512(a)) with 17 U.S.C. § 512(k)(1)(B) (defining ISP as provider of online services or network access, a superset of (A), for the other limitations on liability). AOL's claim that the court cannot consider this distinction is without basis.
  5. An early draft of the DMCA was discussed in volume I of H.R. Rep. No. 105-551 (I) (1998). Subsequently, the Senate held hearings and reported out a significantly revised draft. S. Rep. No. 105-190 (1998). The House considered a version much like the Senate version (and totally different from the early draft) and discussed that version in volume 2 of H.R. Rep. No. 105-551 (II)(1998). After both chambers had passed a bill on the subject, the Conference Committee reconciled the two versions to create the DMCA as passed. H.R. Rep. No. 105-796 (1998)
  6. The interpretation of the DMCA advocated by AOL is not a codification of Netcom, as it suggests. Rather, it would be a massive expansion of Netcom, which found the ISP could not be held directly liable for maintaining infringing USENET postings but could be held liable for contributory infringement. Netcom, 907 F. Supp. at 1370, 1373-77. AOL seeks to extend Netcom's holding on direct infringement to contributory and vicarious infringement.
  7. AOL asserts that the difficulty was "only a different e-mail address," AOL Br. at 13, without disclosing that the address had been a black hole — e-mail to that address neither reached the agent nor provided any clue to the sender that delivery had failed. Rec. 1:105-07; cf. Fed. R. Civ. P. 5(b) (sender may presume successful electronic delivery absent positive indication of nondelivery). AOL's own employee admitted that forwarding e-mail to the incorrect address would have been possible, and even routine. Rec. 2:153-54. AOL also avers that it had provided corrected contact information to the Register before 17 April 2000, but neglects to mention that it had left the incorrect contact information in place for nearly six months. 189 F. Supp. 2d at 1058. In any event, the infringements occurred before AOL corrected the data it had provided to the Register.
  8. AOL has not cross-appealed this finding.
  9. The preexisting knowledge of AOL's USENET managers, long predating the actual infringements, is also relevant. At a minimum, this provided facts and circumstances from which the infringements were apparent.
  10. For the reasons discussed in the section on vicarious liability, AOL also fails to meet the requirements of § 512(c)(1) because it does derive a financial benefit from its USENET postings. See infra.
  11. AOL also claims that the notification is deficient because it was not signed under penalty of perjury. While technically correct, the statute indicates that identification of the infringed work and infringement, plus provision of return contact information, is substantial compliance. 17 U.S.C. § 512(c)(3)(B)(ii) (requiring ISP to accept notification and work with complainant to rectify any deficiencies).
  12. AOL offered only the affidavit of Elizabeth Compton, a paralegal in its employ, to demonstrate its policies, procedures, and history concerning complaints of copyright infringement. Ms. Compton was required to, and did, state under oath that she had personal knowledge of all relevant facts. Fed. R. Civ. P. 56(a); Rec. 2:13 ¶ 1. Her deposition testimony, however, demonstrated that she did not have the personal knowledge to aver facts essential to AOL's ability to satisfy the requirements of § 512(i). Compare Rec. 2:13-15 (Compton declaration, averring personal knowledge of technical and compliance matters) with, e.g., Rec. 2:53-55, 72-74 (some of Compton's deposition testimony indicating the absence of such knowledge); see also Ellison, 189 F. Supp. 2d at 1066 (noting Compton's lack of knowledge, although denying applicability to § 512(i)). Plaintiff questions the admissibility of testimony from the only witness offered by AOL in support of its motion on the basis of her own deposition, and believes that a trier of fact could find her testimony lacks credibility even if it was admitted.
  13. As pointed out in Appellant's principal brief, the district court in Hendrickson improperly confused the vicarious infringement analysis with applicability of the DMCA. The doctrines of secondary liability existed long before the internet became reality, and must be analyzed first without reference to the DMCA. The court in Hendricksonfailed to do this, and therefore its holding on this topic must be disregarded.

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