# Amicus Curiae Brief — Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0043%3A53

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2005
- **Citation:** 545 U.S. 913

## Text

62) JAN 2 4 2005 |
OFFICE OF THE CLERK

No. 04-480 bats

IN THE

Gnited States Supreme Court

pr<¢

METRO-GOLDWYN-MAYER STUDIOS, INC., ET AL.,

Petitioners,

GROKSTER, LTD., ET AL.,

Respondents.

On Writ of Certiorari to the United States Court of
Appeals for the Ninth Circuit

BRIEF OF AMICI CURIAE INTERNATIONAL
RIGHTS OWNERS SUPPORTING PETITIONERS

ank L. Goldsmith ALLEN N. DIXON

hristopher Wolf* General Counsel

OSKAUER ROSE LLP International Federation of
233 20th Street, N.W. The Phonographic Industry
Suite 800 54 Regent Street

ashington, DC 20036 London
02-416-6800 WI1B SRE

United Kingdom

O11 44 207 8787903

Counsel of Record

[BEST AVARABLE COPYT

TABLE OF CONTENTS

PAGE
TABLE OF AUTHORITIES............. ERA OES
INTEREST OF THE AMICI ..cccsssssssssssssvessssssssssssssssssssesessssse
SUMMARY OF ARGUMENT ...cssssssscscssscsccssccccccscseceseesseeeee5

I. DENYING INTERNATIONAL RIGHTS
OWNERS EFFECTIVE MEANS OF
ENFORCING THEIR RIGHTS AGAINST
MASSIVE INFRINGEMENTS ON PEER-
TO-PEER SERVICES CONTRAVENES
INTERNATIONAL AGREEMENTS TO
WHICH THE UNITED STATES IS A
PARTY

Il. THE DECISION BELOW STRIPS
INTERNATIONAL RIGHTS OWNERS OF
AN EFFECTIVE MEANS OF ENFORCING
THEIR RIGHTS

Ill. THIS DECISION WILL BE TAKEN
INTO CONSIDERATION AS COURTS
OUTSIDE THE UNITED STATES
GRAPPLE WITH THESE ISSUES

COIN LIIIUIN .cccsscecscasessosecesesconesstionsesnipmmasononenainsiesoennsisinelt

TABLE OF AUTHORITIES
CASES

A&M Records, Inc. v. Napster, Inc.,
239 F.3d 1004 (9th Cir. 2001), affirming 114
F. Supp. 2d 896 (N.D. Cal. 2000) .........cccccccceeseesseees 18

Alexander Murray v. Schooner Charming Betsy, 6
U.S. (2 Cranch.) 64 (1804)... cccccccccescesesesseeseseeeees 14

Asia Media Inc. v. Yang,

No. 2002KAHAP77 (Suwon Dist. Ct.,

Seongnam Branch, First Civil Dep't, July 9,

SUG Z) ....cccccccnescsssevsnsensetineibsenniidamniainnnnnannnnnnnnn 19
China Steel Corp. v. United States,

264 F. Supp. 2d 1339 (Ct. Int'l Trade 2003)............ 11

Fed. Mogul Corp. v. United States,
63 F.3d 1572 (Fed. Cir. 1995)..........c.ccscssesssssessssseses 14

Global Digital Tech. Co.,
92 Sue Tze No. 728 (Shi-Lin Dist. Ct.,
D086. 4, 2BGS) ..cocsccesecesecestsenssianiemuninmanisaaananae 20

Hopson v. Kreps,
622 F.2d 1375 (9th Cir. 1980)..........:cccccceeseeeseeeeeseees 10

In re Aimster Copyright Litig.,
334 F.3d 643 (7th Cir. 2003)........:cccccccesseeceereeseesenees 16

In re Charter Communications, Inc.,

2005 U.S. App. LEXIS 31 (9th Cir. Jan. 4,
2005) .....ccccecssccncecsessesssessssintaieiiatinsane 6

Interim Application of Fashion-Now Co., Lid. et al.,
92 Sue Tze No. 2146 (Taipei Dist. Ct.,
GE 20

MGM Studios, Inc.,
259 F. Supp. 2d 1029 (C.D. Cal., 2003),
aff'd, 380 F.3d 1154 (9th Cir. 2004)........... 1,6, 15,17

Nippon Columbia Co. v. Yugen Kaisha Nippon MMO.
2002 (Wa) Case No. 4249 (Tokyo Dist. Ct.,

29th Civil Div. Jam. 29, 2003) .......cccccccccceeeseenennenees 19
PAM. S.p.A. v. United States,

265 F. Supp. 2d 1362 (Ct. Int'l Trade 2003) ............ 11
Parfums Givenchy, Inc. v. Drug Emporium, Inc.,

38 F.3d 477, 484 (9th Cir. 1994) ooo ccccccceeeneees x

Rock Records (Taiwan) Co. v. Fashion-Now Co.,
92 Tsai Chueng No. 20 (Taipei Dist. Ct.,

Rock Records (Taiwan) Co., v. Global Digital Tech. Co
92 Tsai Chueng No. 2082 (Shi-Lin Dist. Ct.,

rn 20
Sony Corp. v. Universal City Studios, Inc.,

464 U.S. 417, 104 S. Ct. 774 (1984)... 14
“Timken v. United States,

240 F. Supp. 2d 1228 (Ct. Int'l Trade 2003) ............ 11
United States v. Moghadam,

175 F.3d 1269 (1 1th Cir. 1999). cccccceceeeenenes u

iii

STATUTES
UE, GB. FY accncsnsumepsuneneiintiihiaiindiieednta 9
SF ULERL. © Bi ccnccssnsesssivtsimentetestnensienitaedammsiiadnaiaaaeaai 7
57 ULB. © BBG ane... annsinciniedinieniatgemieinels 8
SF UBC. 8 OUR cencecoucsssstnicteieraenininaiaeeaeen 10
57 WAL. § B00 ncsesestuminivtsiitisasiaiiiitia ene 9
OTHER AUTHORITIES

4 NIMMER ON COPYRIGHT § 18.06[B][2] .............-cccccccceceeene 9
H.R. REP. No. 103-826, 103d Cong., 2d Sess., pt. 1

Eee Shenstiantianeipiienhisnsuigbineitiiiatindinbiiianients 15
H.R. Doc. No. 103-316, 103d Cong., 2d Sess.(1994)......... 15

A. Dixon, Jnternet Copyright Litigation: Non-U_S.
Development, BNA World E-Commerce & IP
SRS, SUID SEED cencecenictinnininhieniiaitnaiiaiatieateniiensiinnss 18

Agreement on Trade related Aspects of Intellectual
Property Rights, Marrakesh Agreement
Establishing the World Trade Organization,
Annex Ic, Apr. 15, 1994, 1869 U.N.T.S. 299,

33 LL.M. 1125, reprinted at

http://www.wto.org/english/docs e/legal_e/2
Re Re ee 7

iv

Berne Convention for the Protection of Literary &
Artistic Works, July 24, 1971, U.S. Senate
Treaty Doc. 99-27, KAV 2245, | B.D.LE.L.
TOD cconnnesnsasserrsesiaitnsntinnieapsinastnithiitataciiadmutiindienilioaen 7, 8,9

Certain German Interests in Polish Upper Silesia,
[1926] PCI) Rep., Series A, NO. 7 .........ccccceseeseeeeees 13

Convention for the Protection of Producers of
Phonograms Against Unauthorized
Duplication of Their Phonograms (Geneva,
1971), Oct. 29, 1971 25 U.S.T. 309, T.LAS.
7808, 888 U.N.T.S. 67, reprinted at
http://www. wipo.int/clea/docs/en/wo/wo023.

India - Patent Protection for Pharmaceuticals
Protection & Agricultural Chemical
Products, No. 95-0000 (WT/DS50/ABIR,
Sane ae 12, 13

P. Geller, | Int'l Copyright Law & Practice, ¢ 3{3\(b) .......... 8
P. Geller, 1 int'l Copyright Law & Practice, 3{4\(a) ........10
RIAJ Press Release, Court decided Japan MMO, a

file sharing service company, for illegality,

available at http://www.riaj.com/e/news/
20030129. html (Jan. 29, 2003)

Report of the Panel, Unites States-Section 110(5) of
the U.S. Copyright Act, Case No. 00-2284
(WT/DS160/R, June 15, 2000) 9

Report of the Panel, Unites States-Section 337 of the
Tariff Act of 1930 (BISD 36S/345, Nov. 7,
i) ee 13

Request for Consultations by the United States,
European Communities - Enforcement of
Intellectual Property Rights for Motion
Pictures & Television Programs, No. 98-
1824 (WT/DS124/1, IP/D/13, May 7, 1998) .....11, 13

Request for Consultations by the United States,
Greece - Enforcement of Intellectual Property
Rights for Motion Pictures & Television
Programs, No. 98-1813 (WT/DS125/1. -
SS Re es wee 11,13

Universal Copyright Convention (Paris text, 1971)
| B.D.L.E.L. 813, reprinted at
http://www.unesco.org/culture/laws/copyright
FORE SRG Be cscainnnsnttieninemetinniaiaienasitinaial 8

Uruguay Round Trade Agreement. Texts Of
Agreements, Implementing Bill. Statement
Of Administrative Action & Required
Supporting Statements, in H.R. Doc. No. 103-
316, 103d Cong., 2d Sess. (1994) 0000... cccccccceseeeeees 15

WIPO Copyright Treaty, S. Treaty Doc. No. 105-17,
at 1, 36 LL.M. 65 (Geneva, 1997), reprinted
at http://www.wipo.invtreaties/documents/

WIPO Performances & Phonograms Treaty, S.
Treaty Doc. No. 105-17, at 18, 36 LL.M. 76
(Geneva, 1997). reprinted at
http://www. wipo.inUtreaties/documents/engli
a 8.9

BrRieF OF AMICI CURIAE INTERNATIONAL
RIGHTS OWNERS IN SUPPORT OF
PETITIONERS

INTEREST OF THE AMICI

All parties have consented to the filing of this amicus
brief.'

The parties joining this amicus brief, listed below
(the “International Rights Owners”) are trade associations
and professional organizations based outside the United
States, representing hundreds of thousands of owners of
copyrights and related rights all over the world. Specifically,
amici represent record companies, producers and
distributors; music and literary publishers; composers and
authors of a variety of protected works; rights societies; film

From the perspective of amici, this case is primarily
about ensuring that the United States does not falter in its
responsibilities under various international agreements and
norms, by permitting a safe haven for entities to set up
businesses deliberately designed to enable copyright
infringement on a massive scale. That is a perspective we
hope the Court will find informative.

Bureau International des Sociétés Gérant les Droits
d’Enregistrement et de Reproduction Mécanique (“BIEM”),
founded in 1929 and headquartered at Neuilly-sur-Seine.
France, is the international organization representing 44
mechanical rights societies in 42 countries, which societies
license the reproduction of songs includiig musical, literary
and dramatic works. One of BIEM’s principal missions is to
negotiate compensation for its members, the licensors of
copyrighted works, for the uses of their works by others.

International Confederation of Societies of Authors
and Composers (“CISAC”), founded in 1926 and
headquartered at Neuilly-sur-Seine, France, is a non-
governmental, non-profit organization with a membership of
207 authors’ societies in 109 countries, which societies
represent more than 2 million creators of musical, dramatic,
and literary works, as well as works involving the visual and
graphic arts. One of CISAC’s principal objectives is to
watch over. safeguard and contribute to the legal interests of
creators, both in the international sphere and in national

International Confederation of Music Publishers
(“ICMP/CIEM”), established as an association under Swiss
law in Lausanne, Switzerland, is the umbrella non-profit
trade organization which globally represents, through its 32
members — national, regional and international music
publishers’ trade associations in Europe, Northern and Latin

2

America, Australasia and Africa —- most of music publishing
throughout the world. Taking action against unauthorized
Internet usage of copyrighted music is one of the priorities
for ICMP/CIEM within its mission of promoting the value of
songs and of the people who create, and who help to create,
music. ICMP/CIEM has observer status at the Geneva-based
WIPO.

International Federation of Actors (“FIA”), founded
in 1952, is an international non-governmental organization
registered in the United Kingdom. FIA currently represents
the interests of 104 performers’ unions, guilds and
associations in 76 countries around the world, from North
and Latin America, to Europe, Africa and Australasia. FIA
is a recognized non-governmental organization at UNESCO,
the International Labour Organization (ILO), the World
Intellectual Property Organization (WIPO), the International
Theatre Institute (ITI) and the Council of Europe. FIA’s
affiliates represent hundreds of thousands of professional
actors, singers, dancers, choreographers, broadcast
professionals and other artists on a wide range of issues
relating to the social and professional protection of
performers, including their intellectual property rights.

International Federation of the Phonographic Industry
(“IFPI”), founded in 1933 and having its registered office in
Zurich, Switzerland, is a non-profit trade association
representing the international recording industry. IFPI’s
approximately 1,450 record company members, located in 75
countries, own copyrights and related rights in sound
recordings. IFPI's activities focus on combating traditional
hard goods and on-line piracy, promoting legislation that
protects the rights of intellectual property owners, and
encouraging healthy trade and electronic commerce in
recorded music.

International Federation of Film Producers
Associations (“FIAPF™), founded in 1933 and based in Paris,
France, is made up of 30 national producers’ organizations in
27 countries. FIAPF’s mission is to defend and promote the
economic and legal interests of film and audiovisual
producers on a global basis. FIAPF participates in copyright
and neighboring rights’ protection activities, anti-piracy
efforts, the promotion and maintenance of audiovisual
technology standards. and incentive policies for film
production/distribution.

International Publishers Association (“IPA”), based
in Geneva. Switzerland, established as an association under
Swiss law in 1896, represents the worldwide book and
journal publishing industry (print and electronic) through its
78 national and specialized member associations in 66
countries. One of IPA’s main objectives is to promote a
chain of strong and enforceable copyright laws around the
world. including for electronic publishing. IPA enjoys
observer status at the United Nations and its agencies, such
as the Geneva-based WIPO and Paris-based UNESCO, and
participates in developments at the Geneva-based WTO.

International Video Federation (“IVF”) is a non-
profit international association established in 1988 under
Belgian law. with the aim of providing national video
associations with international representation of their
members’ interests as publishers and distributors of pre-
recorded video cassettes and DVDs. Based in Brussels,
Beigium, the IVF represents thousands of video publishers in
numerous international fora. including the European
Communities. WIPO. WTO and the United Nations
institutions. Like the other amici, IVF has a strong interest
in protecting the worldwide rights of its members, and
supports the promotion and fostering of consistent and
effective international enforcement of copyright.

SUMMARY OF ARGUMENT

The decision below is inconsistent with international
agreements to which the United States is a party. Under
these agreements. the United States has an obligation not
only to recognize the intellectual property rights that are
violated by unauthorized uses of copyrighted works on the
Internet, but also to provide rights owners—particularly
foreign rights owners such as amici—adequate and effective
means of enforcing such rights.

The decision below raises two major concerns for
international rights owners as to the enforceability of their
rights.

The first concern is whether they will be able to
enforce their rights effectively and protect them from being
infringed, on a massive and unprecedented scale, in the
United States, if the decision below is not reversed. Far from
promoting effective enforcement of copyright. the decision
below immunizes parties that are responsible for the
infringement of copyrighted works on a massive scale, and
effectively holds that in the face of such copyright
infringement, copyright owners have no effective recourse
whatsoever against such parties.

The Ninth Circuit’s decision thus severely limits the
practical ability of right owners such as amici to enforce
their rights effectively against one of the most virulent
species of online infringements — those carried out using
peer-to-peer networks designed to facilitate infringement —
and thereby threatens to place the United States in breach of
its international obligations and responsibilities. This is
particularly true in the context of what the Ninth Circuit
called today’s “quicksilver technological environment,”
where infringements are possible, and are occurring, on a

scale across the globe that nobody could ever have imagined,
only a short while ago. (380 F.3d at 1167).

The second concern is the potential spill-over effect
that the Ninth Circuit's decision could have for enforcement
of copyright and related rights outside the United States,
especially against the unauthorized distribution, use and
reproduction of material emanating from the United States.
Rights owners have always faced the problem of pursuing
counterfeit or infringing copies. produced in countries with
lax copyright enforcement practices, that cross borders and
infiltrate markets in other countries. If United States law is
now perceived to allow businesses, like defendants’ to
function without restraint, or is perceived as inconsistent and
unreliable. this spill-over problem will be global, massive
and impossible to reverse.

The Ninth Circuit noted that defendants did not “seriously
contest” that of the millions of files copied and distributed
through their services, “the vast majority are exchanged illegally
in violation of copyright law.” 380 F.3d at 1160. The District
Court similarly found that it was “undisputed” that defendants”
software and networks were being used to carry out direct
infringements of copyright (which of course includes
internationally guaranteed exclusive rights). 259 F. Supp. 2d at
1034: 1037: see also In re Charter Communications, Inc., 2005
U.S. App. LEXIS 31, *7 (9 Cir. January 4, 2005)
(“Approximately 90% of the content on [peer to peer] systems is
copyrighted movies, software, images and music disseminated
without authorization. It is estimated more than 6.2 billion
allegedly infringing music file are downloaded monthly.”).

6

ARGUMENT

I. Denying International Rights Owners Effective
Means Of Enforcing Their Rights Against
Massive Infringements On Peer-to-Peer Services
Contravenes International Agreements To Which
The United States Is A Party.

International rights owners such as amicis’ members
are protected in the United States by a number of
international agreements concerning the protection of
intellectual property (all of which are reproduced in the
appendices to Professor Nimmer’s treatise). The main
agreements of relevance here include:

e the Berne Convention for the Protection of
Literary and Artistic Works (protecting “authors”
and their representatives and assignees in all
fields),’

e the World Trade Organization's Agreement on
Trade-Related Aspects of Intellectual Property
Rights (protecting a range of rights owners on
substantive 2.1d enforcement issues),”

> July 24, 1971, U.S. Senate Treaty Doc. 99-27, KAV 2245, |
B.D.1.E.L. 715, 17 U.S.C. § 104; also reprinted at
http://www.wipo.int/clea/docs/en/wo/wo00len.htm (the “Berne
Convention”).

7 Agreement on Trade Related Aspects of Intellectual Property Rights,
Marrakesh Agreement Establishing the World Trade Organization,
Annex IC, Apr. 15, 1994, 1869 U.N.T.S. 299, 33 LL.M. 1125, 1197,
reprinted at
http://www.wto.org/english/docs_e/legal_e/27-trips 01_e.htm (the
“TRIPs Agreement”).

7

e the WIPO “Internet Treaties” (protecting authors,
producers and performers on Internet and other
matters).

e the Universal Copyright Convention (protecting
authors in parallel with the Berne Convention).°
and

e the Geneva Phonograms Convention (protecting
producers against unauthorized reproduction of
their phonograms).

A host of other international legal obligations of the
United States require similar or related protections.* All
these international agreements guarantee non-U.S. owners of
rights in intellectual property substantive rights, which have
been enacted into law.” These include rights to authorize or

WIPO Copyright Treaty, S. Treaty Doc. No. 105-17, at 1, 36 LL.M.
65 (Geneva. 1997), reprinted at
http: www .wipo.inUtreaties/ documents english/word/s-wet.doc
(cited as “WCT™ herein); WIPO Performances and Phonograms
Treaty. S. Treaty Doc. No. 105-17, at 18, 36 I.L.M. 76 (Geneva,
1997). reprinted at
http: www .wipo. int treaties documents english’ word/s-wppt.doc
(“WPPT”).
(Paris text. 1971), July 24. 1971, 25 U.S.T. 1341, T.LA.S. 7868, 1
B.D.1.E.L. 813. reprinted at
a - ‘www .unesco.org culture/laws copyrighv/html_eng/page!.shtm!
(“UCC”).
Convention for the Protection of Producers of Phonograms Against
Unauthorized Duplication of Their Phonograms (Geneva, 1971),
Oct. 29, 1971, 25 U.S.T. 309, T.1.A.S. 7808, 888 U.N.T.S. 67,
reprinted at http://www .wipo.int/ clea docs/en/wo/wo023en.htm.
See generally P. Geller, | Int'l Copyright Law & Practice, 3{3\(b)
(outlining United States treaty ratifications and implementation in
the international copyright area).
See 17 U.S.C. § 104(b) (foreign author may claim U.S. copyright
under certain circumstances). cited in Parfums Givenchy, Inc. v.
Drug Emporium, Inc., 38 F.3d 477, 484 (9th Cir. 1994).

8

prohibit reproduction,” distribution,'' Internet transmission'*

and other substantial uses of their works and other protected
material. The agreements allow for exceptions or limitations
to these rights, but only in certain special cases that do not
conflict with the normal exploitation of the material, and that
do not unreasonably prejudice the legitimate interests of the
rights holders."

The TRIPs Agreement, which provides “the highest
expression to date of binding intellectual property law in the
international arena” (United States v. Moghadam, 175 F.3d
1269, 1272 (11th Cir. 1999) (citation omitted)), for the first
time also imposes far reaching requirements in the
enforcement of intellectual property rights.'* Thus, Article
41(1) of the TRIPs Agreement requires:

'© Berne Convention, art. 9; TRIPs Agreement, art. 9, 14; WCT, art.

1(4) (incorporating Berne requirements); WPPT, arts. 7, 11; UCC,
art. IV bis( 1); Geneva Phonograms Convention, art. 2.

Berne Convention, art.- 14(1) (distribution of cinematographic
works); TRIPs Agreement, arts. 11, 14(4) (rental of computer
programs, cinematographic works, phonograms); WCT, arts. 6-7,
WPPT, arts. 8-9, 12-13; UCC, arts. V, VI; Geneva Phonograms
Convention, art. 2.

“ These rights, encompassed under general provisions of earlier
treaties, are embodied explicitly in WCT, art. 8; WPPT, arts. 10, 14.

Berne Convention, art. 9(2); TRIPs Agreement, art. 13; WCT, art.
10; WPPT, art. 16; UCC, art. 1V; Geneva Phonograms Convention,
art. 6; See generally 17 U.S.C. § 107; World Trade Organization,
Report of the Panel, United States — Section 110(5) of the U.S.
Copyright Act, Case No. 00-2284 (WT/DS160/R, 15 June 2000)
(interpreting Berne Convention art. 9(2) and TRIPs tests).

“TRIPs stands unique among international copyright compacts in the
sophistication of its enforcement mechanisms . . . . [G]iven that
TRIPs contains enforcement provisions far more efficacious than
those extant under Berne, it can be anticipated that TRIPs will set the
international standard for enforcement.” 4 Nimmer on Copyright
§ 18.06[B][2], at 18-67.

14

9

Members shall ensure that enforcement
procedures as specified in this Part are
available under their law so as to permit
effective action against any act of
infringement of intellectual property rights
covered by this Agreement, including

expeditious remedies to _—s— prevent
infringements and remedies’ which
constitute a _ deterrent to _ further

infringements. (emphasis supplied)'*

Amici do not argue here that any of the particular
international intellectual property agreements of the United
States should be given “direct effect.”'® The application of
the “direct effect” doctrine is a complex issue. which is not
necessary to resolve with respect to any particular
international agreement here.'”

Nevertheless. courts have viewed international
obligations like the WTO TRIPs agreement as “persuasive
authority” in interpreting questions that arise under its

'S The WIPO Internet Treaties contain a similar requirement. See, ¢.g.,

WCT, art. 14: WPPT, art. 23.

° See generally Hopson v. Kreps, 622 F.2d 1375, 1381 (9th Cir. 1980)

_ (discussing “direct effect” and self-execution concepts).

'” See generally Geller, | Int'l Copyright Law & Practice § 3{4\(a), at
INT-89: “The situation in the United States is ambiguous. The
United States Congress made abundantly clear its intent to leave the
Berne Convention without any self-executing force. At the same
tmme, the U.S. Senate acknowledged both the courts’ exclusive
power to decide “the question of whether a treaty is self-executing’
and the courts’ responsibility for enforcing ‘appropriate domestic
law’ to protect the rights of Berne claimants. The Congressional
intent—in so many words, as the U.S. Copyright Act [17 U.S.C. §
104(c); Now states. to preclude any ‘reliance upon . . . the provisions
of the Berne Convention’—cannot therefore be read to compel an
ostrich-like refusal by the courts to consult any Berne text at all”
(citations omitted).

10

implementing legislation.'* Indeed. “plaintiffs are free to
argue that Congress would never have intended to violate an
agreement it generally intended to implement without
expressly saying so.” China Steel Corp. v. United States,
264 F. Supp. 2d 1339, 1367 (Ct. Int'l Trade 2003)
(reviewing WTO Agreements’ obligations in dumping area),
citing Timken v. United States, 240 F. Supp. 2d 1228, 1238
(Ct. Int'l Trade 2003).

Traditionally, in the international arena, the United
States has sought more stringent. rather than less stringent.
respect for intellectual property rights, and it has consistently
taken the position in its negotiations with its WTO partners
that “effectiveness” of a party's enforcement and remedies
means enforcement and remedies that “work in practice.”

The one formal WTO dispute in the copyright area
involving the “effectiveness” requirements of Article 41 of
TRIPs is highly instructive.'” In May, 1998, the United
States requested consultations with Greece and the European
Communities under the WTO dispute-settlement procedure.
The United States claimed that Greece and the EC were in
violation of, inter alia, Article 41 not only because of
statutory shortcomings but also because the remedies on the
books had had no practical effect on the problem of

widespread piracy.

18 PAM. SpA. v. United States, slip. op. 2003-48, n.13 (Ct. Int"! Trade

May 8, 2003).

See Request for Consultations by the United States, European
Communities — Enforcement of Intellectual Property Rights for
Motion Pictures and Television Programs, No. 98-1824
(WT/DS124/1, IP/D/13, 7 May 1998), Request for Consultations by
the United States, Greece — Enforcement of Intellectual Property
Rights for Motion Pictures and Television Programs, No. 98-1813
(WT/DS125/1, IP/D/14, 7 May 1998).
1]

19

As evidence of this, the United States cited the facts
that a “significant number” of television stations in Greece
regularly broadcast copyrighted United States films and
television programs without authorization of the copyright
owners. and that infringement occurred repeatedly and
continuously despite efforts by United States rights holders
to pursue their claims in Greece.” The United States
claimed that “effective remedies against copyright
infringement do not appear to be provided or enforced in
Greece” and that “this situation appears to be inconsistent with
the obligations of Members under Articles 41 and 61 of the
TRIPS Agreement.” *'

The dispute ultimately ended by mutually agreed
settlement. which documented both legislative and law-
enforcement initiatives undertaken to remedy the piracy at
issue. as well as to monitor the actual effectiveness of the
actions taken and remedies available. that is, significantly
reduced levels of television piracy in Greece.

Judicial decisions such as this one. moreover, form
an important part of the analysis of whether a particular
country is in compliance with its TRIPs obligations.
Particularly relevant to a consideration of the TRIPs
requirement of “effective action™ to prevent and deter piracy.
the WTO Appellate Body in /ndia -- Patent Protection for
Pharmaceutical Protection and Agricultural Chemical
Products repeated the principle from a 1926 Permanent
Court of International Justice case instructing that national
compliance be evaluated broadly on the basis of numerous
factors. including judicial decisions.

From the standpoint of International Law
and of the Court which is its organ.

20

See Requests for Consultations by the United States. supra.
Id

2!

12

municipal laws are merely facts which
express the will and constitute the activities
of States, in the same manner as do legal
decisions and administrative measures. The
Court is certainly not called upon to
interpret the Polish law as such; but there is
nothing to prevent the Court’s giving
judgment on the question whether or not, in
applying that law, Poland is acting in
conformity with its obligations towards
Germany under the Geneva C onvention.””

It is particularly appropriate in this case to apply the
principle that judicial decisions, among other state actions,
can play a key role in determining whether “in applying [its]
law. [the United States] is acting in conformity with its
obligations” under the TRIPs Agreement.

The decision below essentially renders unavailable
to rights holders an important enforcement mechanism
(vicarious or contributory liability) rooted in the statutes,
and which has been repeatedly articulated by the courts, the
result of mapping common-law principles to that particular
terrain of copyright law. To the extent the decision below
works to make “effective action” against online
infringement “unavailable” to rights holders, including by
denying expeditious preventive remedies and undermining
deterrence, United States compliance with its international
obligations could be called into question. A reversal, on the

22 India ~ Patent Protection for Pharmaceuticals Protection and

Agricultural Chemical Products, No. 95-0000, (WT/DSS0/ABIR, 19
Dec. 1997) 4 65, at 25, citing Certain German Interests in Polish
Upper Silesia, [1926] PC1J Rep., Series A, No. 7, at 19; see also id.
© 67, at 25-26, citing Report of the Panel, United States—Section 337
of the Tariff Act of 1930 (BISD 368/345, 7 Nov. 1989) (panel
conducted detailed examination of United States legislation and
practice, including court proceedings).
13

other hand. would be both (a) a proper application of
domestic law (as Petitioners and others assert); and (b)
would comport well with the U.S.’s obligations to provide
its partners effective enforcement in the copyright area.

Finally. Congress should be assumed to have
intended that “effective enforcement” as required under
international copyright agreements would be available in the
United States, including under the contributory and vicarious
liability doctrines.” “GATT [now WTO] agreements are
international obligations, and absent express Congressional
language to the contrary, statutes should not be interpreted to
conflict with international obligations.” Fed Mogul Corp. v.
United States, 63 F.3d 1572, 1581 (Fed. Cir. 1995). citing
Alexander Murray v. Schooner Charming Betsy, 6 U.S. (2
Cranch.) 64. 118 (1804) (act of Congress ought never to be
construed to violate the law of nations, if any other possible
construction remains).

There is no statutory language or other expression of
Congressional intent anywhere in the history of United
States accession to the WTO or the WIPO Internet Treaties
that suggests that Congress wished to derogate from the
international obligations assumed by the United States
government in a way that would deprive international rights
owners of effective means of enforcing their rights against

As Petitioners have demonstrated, the situation requiring effective
enforcement here is very different from the situation presented in
Sony Corp of America v. Universal City Studios, Inc. 464 U.S. 417,
104 S. Ct. 774 (1984). Among other things, the underlying activity
at issue here is widespread, massive infringing reproductions and
distributions occurring at the speed of light, across the globe, not
substantial “fair use.” and the intermediary has an ongoing
relationship with the direct infringers.
14

the sort of infringements at issue here. Indeed, the indicia of
legislative intent are directly to the contrary.”*

II. The Decision Below Strips International Rights
Owners Of An Effective means Of Enforcing their

rights.

Amici are principally concerned that the decision
below in practice leaves international rights holders without
an effective means of enforcing their rights against what both
Courts below characterized as widespread infringements
involving millions of individuals, promoted by services that
“clearly know that many if not most of those individuals who
downloaded their software subsequently use it to infringe
copyrights” (259 F. Supp. 2d at 1037) and that defendants
“may have intentionally structured their businesses to avoid
secondary liability for copyright infringement, while
benefiting financially from the illicit draw of their wares”
(id. at 1046).

** Hence, when legislation to implement the TRIPs Agreement was
presented to Congress by the U.S. Administration in 1994, the
Agreement was described as “establish[ing] comprehensive
standards for the protection of intellectual property and the
enforcement of intellectual property rights in WTO member
countries,” and “ensur[ing]} that critical enforcement procedures will
be available in each member country to safeguard intellectual
property rights.” Uruguay Round Trade Agreement, Texts Of
Agreements. Implementing Bill, Statement Of Administrative Action
And Required Supporting Statements, in H.R. Doc. No. 103-316,
103d Cong., 2d Sess. (1994) at 981, Uruguay Round Trade
Agreements Act, at 312. While, understandably, the focus of
legislative consideration was on how the TRIPs Agreement “will
dramatically improve protection and enforcement of U.S. intellectual
property rights abroad,” H.R. Rep. No. 103-826, 103d Cong., 2d
Sess.. pt. | (1994) (“Benefits of the Uruguay Trade Agreements”).
there was nothing to indicate that this benefit was to be obtained at
the cost of denying effective enforcement for domestic and
international rights holders under U.S. law.

15

If such knowing facilitators of and contributors to
massive infringement cannot be stopped and ordered to act
responsibly with respect to copyrighted material, what
effective enforcement mechanism is realistically available?
The decision below leaves few, if any, practical options. For
example, even if the alternative of bringing suits against
large numbers of individual infringers may be a possibility
for large and well-funded rights owners, many of amicis’
members are small or otherwise insufficiently funded for that
ever to be a real option.

If unauthorized mass reproduction and distribution
via the Internet cannot be stopped in the United States at the
hub of such activity -- the services that knowingly promote,
assist and profit from massive infringements -- it would put
rights owners in the untenable position of having to chase
every unauthorized copy and transmission to every one of
the other countries to which they are distributed. Such a
result would be unnecessary, unwarranted and potentially
devastating as a practical matter, to amici.

The doctrines of vicarious and contributory liability
evolved precisely in order to provide rights owners an
effective remedy against massive infringement in situations
where they otherwise would not have it. As Judge Posner
said in /n re Aimster Copyright Litig., 334 F.3d 643, 645 (7th
Cir. 2003):

Recognizing the impracticability or futility
of a copyright owner's suing a multitude of
individual infringers (“chasing individual
consumers is time consuming and is a
teaspoon solution to an ocean problem,”
Randal C. Picker, “Copyright As Entry
Policy: The Case of Digital Distribution,”
47 Antitrust Bull., 423, 442 (2002)), the law
allows a copyright holder to sue a

16

contributor to the infringement instead, in
effect as an aidor and abettor.

In making its judgment in this case, this Court
should give careful consideration to what remedies are
available for rights owners to enforce their rights effectively
against what are probably the most widespread
infringements in history, in a world where infringement
increasingly knows no borders.”*

25 As noted by the Petitioners below, the District Court's finding that
“substantial noninfringing uses” exist for defendants’ services and
software because people might use them “in ceuntries where it is
legal” (259 F. Supp. 2d at 1035) does not appear supported by the
record. In any event, it cannot seriously be contended that the
behavior of any “lowest common denominator” country—one that
might refuse to follow international agreements requiring the global
protection of intellectual property rights—should constrain those
nations that seek to provide the required protections.

“17

lil. This Decision Will Be Taken Into Consideration
As Courts Outside The United States Grapple
With These Issues.

The Ninth Circuit’s decision will have a deleterious
ripple effect on similar cases involving so-called
“decentralized” peer-to-peer file transmission and copying
services in other countries. Although courts in every country
apply their own national laws and look to their own legal
precedents and authorities-they also are informed by judicial
decisions in the United States involving new Internet issues.
Parties (including amici) do provide information on United
States court judgments and raise arguments from United

States court decisions as persuasive authority in other
jurisdictions.

The importance of the judicial decisions from the
United States in the international arena cannot be overstated.
For example. United States courts dealt first with the issues
surrounding so-called “centralized” peer-to-peer services in
the Napster litigation.® Since then, cases brought and
decided so far in Japan and Korea have reached the same
result against similar services.*’ In both cases, the parties
submitted information on the decisions of the District Court
and the Ninth Circuit in Napster, and the reasoning of these
decisions appears to have been taken into account in the
foreign courts’ judgments.

A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001),
affirming A&M Records, Inc. v. Napster, Inc., 114 F. Supp. 2d 896
(N.D. Cal. 2000).

See A. Dixon, IJnternet Copyright Litigation: Non-U.S.
Developments, BNA World E-Commerce & IP Report, June 2003, at
5. 6-7. The following case reports are taken from the referenced
article.

18

In Nippon Columbia Co., Ltd., et al. v. Yugen Kaisha
Nippon MMO.** defendant Japan MMO operated a peer-to-
peer service used by approximately 42,000 persons, who
collectively made available about 80,000 files at any one
time. Like Napster, Japan MMO created an index of files
available for download, and users transmitted and copied
files directly to each other. The court found, both at the
preliminary injunction and “interlocutory judgment” stage,
that not only were users violating plaintiffs’ exclusive right
under the copyright law of “making transmittable” plaintiffs’
works and recordings, but Japan MMO itself played a role in
the infringing acts. Japan MMO was enjoined from offering
the service on April 9, 2002, and was found liable on the
merits on January 29, 2003.

In Asia Media Inc. et al v. Yang et al.,”* members of
the Recording Industry Association of Korea (RIAK) filed
civil claims against the Korean “file sharing” service
Soribada on February 8, 2002. On July 9, 2002, the court
issued an injunction requiring the peer-to-peer service to stop
letting users download the plaintiffs’ recordings, to stop
operating the service on the Korean Data Centre's servers,
and to pay a $170,000 guaranty.”

8 2002 (Wa) Case No. 4249 (Tokyo Dist. Ct., 29th Civil Division,
interlocutory judgement 29 Jan. 2003). See RIAJ Press Release,
Court decided Japan MMO. a file-sharing service company, for
illegality; Interlocutory judgment by the Tokyo District Court,
http://www.riaj.com/e/news/20030129.htm! (29 Jan. 2003).

No. 2002KAHAP77 (Suwon Dist. Ct., Seongnam Branch, First Civil
Dep't, 9 July 2002).

RIAK also filed parallel criminal proceedings, and the prosecutor
indicted the two operators, in August 2001, charging them with
aiding and abetting infringement. The criminal case was dismissed
on May 15, 2003, on the ground that the charges did not adequately
specify how Soribada aided and abetted copyright infringement. The
prosecutor has appealed this dismissal to the High Court, and the
appeal is pending.

29

30

19

Pending in Taiwan at present are criminal and civil
proceedings against the subscription peer-to-peer services
EzPeer and Kuro, which started out as “centralized” services
using Napster-based technology but which are migrating to
“decentralized” and encrypted technology. To date, the
Taiwan courts have issued injunctions requiring removal of
105 copyrighted recordings from both services.’ As part of
the proceedings. however. Kuro has asked the trial court to
consider the Ninth Circuit's ruling in Grokster — perhaps
predictably without any mention of the Seventh Circuit's
ruling in Aimster — as authority for Kuro’s proposition that
all decentralized peer-to-peer services should be immune
from liability in Taiwan.”

As courts like these outside the United States begin
considering Internet issues involving the new generation of
peer-to-peer services like Grokster, it is in the interest of
amici and all affected parties that United States law provide
helpful and consistent guidance. on how massive
infringements on services like these can be stopped, and in
particular, how key enablers and facilitators such as
defendants can and should be held responsible.

This will help to promote consistent international
treatment of Internet-based activities, a key goal of the
evolving international treaty structure in the intellectual
property field. Only after effective and consistent

Rock Records (Taiwan) Co. Lid et al. v. Fashion-Now Co., Lid., 92
Tsai Chueng No. 20 (Taipei Dist. Ct.. injunction issued Dec. |,
2003): Rock Records (Taiwan) Co., Lid. et al. v. Global Digital
Technology Co., Lid, 92 Tsai Chueng No. 2082 (Shi-Lin Dist. Ct.,
injunction issued Dec. 11, 2003). See also Fashion-Now Co., Lid et
al., 92 Sue Tze No. 2146 (Taipei District Ct., criminal indictment
issued Dec. 1, 2003): Global Digital Technology Co., Lid. and
others, 92 Sue Tze No. 728 (Shi-Lin Dist. Ct., criminal indictment
issued Dec. 4, 2003).

Interim Application of Fashion-Now Co., Lid, 92 Sue Tze No. 2146
(Taipei Dist. Ct., filed Aug. 31, 2004).

20

enforcement mechanisms are in place against infringement
can the legitimate on-line use of copyrighted materials
ultimately and best be developed and maintained in the

international arena.

CONCLUSION

For all the foregoing reasons, amici respectfully
submit that this Court reverse the judgment of the Court
below.

Respectfully Submitted,

Hank L. Goldsmith Allen N. Dixon

Christopher Wolf* General Counsel,
Proskauer Rose LLP International Federation Of
1233 20" Street, N.W. The Phonographic Industry
Suite 800 54 Regent Street
Washington, DC 20036 London
(202) 416-6800 W1B 5RE

United Kingdom

011 44 207 8787903

*Counsel of Record

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0043%3A53. Public record. Not legal advice.