Appendix — Recording Industry Ass'n of America, Inc. v. Verizon Internet Services, Inc.

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Appendix A

United States Court of Appeals,

District of Columbia Circuit.

RECORDING INDUSTRY ASSOCIATION OF AMERICA,

INC., Appellee,

VERIZON INTERNET SERVICES, INC., Appellant.

Nos. 03-7015 & 03-7053.

Argued Sept. 16, 2003.

Decided Dec. 19, 2003.

Before: GINSBURG, Chief Judge,and ROBERTS, Circuit

Judge, and WILLIAMS, Senior Circuit Judge.

Opinion for the Court filed by Chief Judge GINSBURG.

GINSBURG, Chief Judge:

This case concerns the Recording Industry Association of

America’s use of the subpoena provision of the Digital

Millennium Copyright Act, 17 U.S.C. § 512(h), to identify

internet users the RIAA believes are infringing the

copyrights of its members. The RIAA served two subpoenas

upon Verizon Internet Services in order to discover the

names of two Verizon subscribers who appeared to be

trading large numbers of .mp3 files of copyrighted music via

“peer-to- peer” (P2P) file sharing programs, such as KaZaA.

Verizon refused to comply with the subpoenas on various

legal grounds.

The district court rejected Verizon’s statutory and

constitutional challenges to § 512(h) and ordered the internet

service provider (ISP) to disclose to the RIAA the names of

the two subscribers. On appeal Verizon presents three

alternative arguments for reversing the orders of the district

court: (1) § 512(h) does not authorize the issuance of a

subpoena to an ISP acting solely as a conduit for

communications the content of which is determined by

others; if the statute does authorize such a subpoena, then

the statute is unconstitutional because (2) the district court

lacked Article III jurisdiction to issue a subpoena with no

underlying “case or controversy” periding before the court;

and (3) §512(h) violates the First Amendment because it

lacks sufficient safeguards to protect an internet user's

ability to speak and to associate anonymously. Because we

agree with Verizon's interpretation of the statute, we reverse

the orders of the district court enforcing the subpoenas and

do not reach either of Verizon's constitutional arguments.

I. Background

Individuals with a personal computer and access to the

internet began to offer digital copies of recordings for

download by other users, an activity known as file sharing,

in the late 1990’s using a program called Napster. Although

recording companies and music publishers successfully

obtained an injunction against Napster’s facilitating the

sharing of files containing copyrighted recordings, see A&M

Records, Inc. v. Napster, Inc., 284 F.3d 1091 (9th Cir. 2002);

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

2001), millions of people in the United States and around the

world continue to share digital .mp3 files of copyrighted

1 The district court's jurisdiction to issue the orders here under review is

not drawn into question by Verizon's Article Il] argument. See Interstate

Commerce Comm'n v. Brimson, 154 USS. 447, 476-78, 14 S. Ct. 1125, 1132-34,

38 L. Ed. 1047 (1894) (application of ICC to enforce subpoena issued by

agency in furtherance of investigation presents “case or controversy”

subject to judicial resolution).

recordings using P2P computer programs such as KaZaA,

Morpheus, Grokster, and eDonkey. See John Borland, File

Swapping Shifts Up a Gear (May 27, 2003), available at http:/ /

news.com.com/2100-1026-1009742.html, (last visited

December 2, 2003). Unlike Napster, which relied upon a

centralized communication architecture to identify the .mp3

files available for download, the current generation of P2P

file sharing programs allow an internet user to search

directly the .mp3 file libraries of other users; no web site is

involved. See Douglas Lichtman & William Landes, Indirect

Liability for Copyright Infringement: An Economic Perspective,

16 HARV. J. LAW & TECH. 395, 403, 408-09 (2003). To date,

owners of copyrights have not been able to stop the use of

these decentralized programs. See Metro-Goldwyn-Mayer

Studios, Inc. v. Grokster, Ltd., 259 F. Supp. 2d 1029 (C.D. Cal.

2003) (holding Grokster not contributorily liable for

program).

The RIAA now has begun to direct its anti-infrirygement

efforts against individual users of P2P file sharing programs.

In order to pursue apparent infringers the RIAA needs to be

able to identify the individuals who are sharing and trading

files using P2P programs. The RIAA can readily obtain the

screen name of an individual user, and using the Internet

Protocol (IP) address associated with that screen name, can

trace the user to his ISP. Only the ISP, however, can link the

IP address used to access a P2P program with the name and

address of a person - the ISP’s customer - who can then be

contacted or, if need be, sued by the RIAA.

The RIAA has used the subpoena provisions of § 512(h)

of the Digital Millennium Copyright Act (DMCA) to compel

ISPs to disclose the names of subscribers whom the RIAA

has reason to believe are infringing its members’ copyrights.

See 17 U.S.C. § 512(h)(1) (copyright owner may “request the

clerk of any United States district court to issue a subpoena

to [an ISP] for identification of an alleged infringer”). Some

ISPs have complied with the RIAA’s § 512(h) subpoenas and

identified the names of the subscribers sought by the RIAA.

The RIAA has sent letters to and filed lawsuits against

several hundred such individuals, each of whom allegedly

made available for download by other users hundreds or in

some cases even thousands of .mp3 files of copyrighted

recordings. Verizon refused to comply with and instead has

challenged the validity of the two § 512(h) subpoenas it has

received.

A copyright owner (or its agent, such as the RIAA) must

file three items along with its request that the Clerk of a

district court issue a subpoena: (1) a “notification of claimed

infringement” identifying the copyrighted work(s) claimed

to have been infringed and the infringing material or

activity, and providing information reasonably sufficient for

the ISP to locate the material, all as further specified in

§ 512(c)(3)(A); (2) the proposed subpoena directed to the ISP;

and (3) a sworn declaration that the purpose of the subpoena

is “to obtain the identity of an alleged infringer and that

such information will only be used for the purpose of

protecting” rights under the copyright laws of the United

States. 17 U.S.C. §§ 512(h)(2)(A)-(C)- If the copyright

owner’s request contains all three items, then the Clerk

“shall expeditiously issue and sign the proposed subpoena

and return it to the requester for delivery to the [ISP].” 17

U.S.C. § 512(h)(4). Upon receipt of the subpoena the ISP is

“authorize[d] and order[ed]” to disclose to the copyright

owner the identity of the alleged infringer. See 17 U.S.C.

§§ 512(h)(3), (5).

On July 24, 2002 the RIAA served Verizon with a

subpoena issued pursuant to § 512(h), seeking the identity of

a subscriber whom the RIAA believed to be engaged in

infringing activity. The subpoena was for “information

sufficient to identify the alleged infringer of the sound

recordings described in the attached notification.” The

“notification of claimed infringement” identified the IP

address of the subscriber and about 800 sound files he

offered for trading; expressed the RIAA’s “good faith

belief” the file sharing activity of Verizon’s subscriber

constituted infringement of its members’ copyrights; and

asked for Verizon's “immediate assistance in stopping this

unauthorized activity.” “Specifically, we request that you

remove or disable access to the infringing sound files via

your system.”

When Verizon refused to disclose the name of its

subscriber, the RIAA filed a motion to compel production

pursuant to Federal Rule of Civil Procedure 45(c)(2)(B) and §

512(h)(6) of the Act. In opposition to that motion, Verizon

argued § 512(h) does not apply to an ISP acting merely as a

conduit for an individual using a P2P file sharing program

to exchange files. The district court rejected Verizon's

argument based upon “the language and structure of the

statute, as confirmed by the purpose and history of the

legislation,” and ordered Verizon to disclose to the RIAA the

name of its subscriber. In re Verizon Internet Servs., Inc., 240

F. Supp. 2d 24, 45 (D.D.C. 2003) (Verizon I).

The RIAA then obtained another § 512(h) subpoena

directed to Verizon. This time Verizon moved to quash the

subpoena, arguing that the district court, acting through the

Clerk, lacked jurisdiction under Article III to issue the

subpoena and in the alternative that § 512(h) violates the

First Amendment. The district court rejected Verizon's

constitutional arguments, denied the motion to quash, and

again ordered Verizon to disclose the identity of its

subscriber. In re Verizon Internet Servs., Inc., 257 F. Supp. 2d

244, 247, 275 (D.D.C. 2003) (Verizon II).

Verizon appealed both orders to this Court and we

consolidated the two cases. As it did before the district

court, the RIAA defends both the applicability of § 512(h) to

an ISP acting as a conduit for P2P file sharing and the

constitutionality of § 512(h). The United States has

intervened solely to defend the constitutionality of the

statute.

Il. Analysis

The court ordinarily reviews a district court's grant of a

motion to compel or denial of a motion to quash for abuse of

discretion. See, e.g., In re Sealed Case, 121 F.3d 729, 740 (D.C.

Cir. 1997). Here, however, Verizon contends the orders of

the district court were based upon errors of law, specifically

errors regarding the meaning of § 512(h). Our review is

therefore plenary. See In re Subpoena Served Upon the

Comptroller of the Currency, 967 F.2d 630, 633 (D.C. Cir. 1992).

The issue is whether § 512(h) applies to an ISP acting,

only as a conduit for data transferred between two internet

users, such as persons sending and receiving e-mail or, as in

this case, sharing P2P files. Verizon contends § 512(h) does

not authorize the issuance of a subpoena to an ISP that

transmits infringing material but does not store any such

material on its servers. The RIAA argues § 512(h) on its face

authorizes the issuance of a subpoena to an “linternet]

service provider” without regard to whether the ISP is

acting as a conduit for user-directed communications. We

conclude from both the terms of § 512(h) and the overall

structure of § 512 that, as Verizon contends, a subpoena may

be issued only to an ISP engaged in storing on its servers

material that is infringing or the subject of infringing

activity.

A. Subsection 512(h) by its Terms

We begin our analysis, as always, with the text of the

statute. See Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450, 122

S. Ct. 941, 950, 151 L. Ed. 2d 908 (2002). Verizon’s statutory

arguments address the meaning of and interaction between

§§ 512(h) and 512(a)-(d). Having already discussed the

general requirements of § 512(h), we now introduce

§§ 512(a)-(d).

Section 512 creatus four safe harbors, each of which

immunizes ISPs from liability for copyright infringement

under certain highly specified conditions. Subsection 512(a),

entitled “Transitory digital network communications,”

provides a safe harbor “for infringement of copyright by

reason of the [ISP’s] transmitting, routing, or providing

connections for” infringing material, subject to certain

conditions, including that the transmission is initiated and

directed by an internet user. See 17 U.S.C. §§ 512(a)(1)-(5).

Subsection 512(b), “System caching,” provides immunity

from liability “for infringement of copyright by reason of the

intermediate and temporary storage of material on a system

or network controlled or operated by or for the [ISP],”

§ 512(b)(1), as long as certain conditions regarding the

transmission and retrieval of the material created by the ISP

are met. See 17 U.S.C. §§ 512(b)(2)(A)-(E). Subsection 512(c),

“Information residing on systems or networks at the

direction of users,” creates a safe harbor from liability “for

infringement of copyright by reason of 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,” as long as the ISP meets certain conditions

regarding its lack of knowledge concerning, financial benefit

from, and expeditious efforts to remove or deny access to,

material that is infringing or that is claimed to be the subject

of infringing activity. See 17 U.S.C. §§ 512(c)(1)(A)-(C).

Finally, § 512(d), “Information location tools,” provides a

safe harbor from liability “for infringement of copyright by

reason of the provider referring or linking users to an online

location containing infringing material or infringing activity,

by using information location tools” such as “a directory,

index, reference, pointer, or hypertext link,” subject to the

same conditions as in §§ 512(c)(1)(A)-(C). See 17 USC.

§§ 512(d)(1)-(3).

Notably present in §§ 512(b)-(d), and notably absent

from §512(a), is the so-called notice and take-down

provision. It makes a condition of the ISP’s protection from

liability for copyright infringement that “upon notification

of claimed infringement as described in [§ 512}(c)(3),” the

ISP “responds expeditiously to remove, or disable access to,

the material that is claimed to be infringing.” See 17 U.S.C.

§§ 512(b)(2)(E), 512(c)(1)(C), and 512(d)(3).

Verizon argues that § 512(h) by its terms precludes the

Clerk of Court from issuing a subpoena to an ISP acting as a

conduit for P2P communications because a § 512(h)

subpoena request cannot meet the requirement in

§ 512(h)(2)(A) that a proposed subpoena contain “a copy of a

notification [of claimed infringement, as] described in

{§ 512}(c)(3)(A)."? In particular, Verizon maintains the two

2 Subsection 512(c)(3)(A) provides that “{t]o be effective under this

subsection, a notification of claimed infringement must be a written

communication . . . that includes substantially the following”:

(i) A physical or electronic signature of a person authorized to

act on behalf of the owner of an exclusive right that is allegedly

infringed.

(ii) Identification of the copyrighted work claimed to have

been infringed, or, if multiple copyrighted works at a single

online site are covered by a single notification, a representative

list of such works at that site.

(iii) Identification of the material that is claimed to be

infringing or to be the subject of infringing activity and that is

subpoenas obtained by the RIAA fail to meet the

requirements of § 512(c)(3)(A)(iii) in that they do not -

because Verizon is not storing the infringing material on its

server - and can not, identify material “to be removed or

access to which is to be disabled” by Verizon. Here Verizon

points out that § 512(h)(4) makes satisfaction of the

notification requirement of § 512(c)(3)(A) a condition

precedent to issuance of a subpoena: “If the notification

filed satisfies the provisions of [§ 512](c)(3)(A)” and the

other content requirements of § 512(h)(2) are met, then “the

clerk shall expeditiously issue and sign the proposed

subpoena ... for delivery” to the ISP.

Infringing material obtained or distributed via P2P file

sharing is located in the computer (or in an off-line storage

device, such as a compact disc) of an individual user. No

matter what information the copyright owner may provide,

the ISP can neither “remove” nor “disable access to” the

infringing material because that material is not stored on the

ISP’s servers. Verizon can not remove or disable one user’s

access to infringing material resident on another user’s

to be removed or access to which is to be disabled, and

information reasonably sufficient to permit the service

provider to locate the material.

(iv) Information reasonably sufficient to permit the service

provider to contact the complaining party, such as an address,

telephone number, and, if available, an electronic mail address

at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith

belief that use of the material in the manner complained of is

not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is

accurate, and under penalty of perjury, that the complaining

party is authorized to act on behalf of the owner of an

exclusive right that is allegedly infringed.

17 U.S.C. § 512(c)(3)(A).

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computer because Verizon does not control the content on

its subscribers’ computers.

The RIAA contends an ISP can indeed “disable access”

to infringing material by terminating the offending

subscriber’s internet account. This argument is undone by

the terms of the Act, however. As Verizon notes, the

Congress considered disabling an individual’s access to

infringing material and disabling access to the internet to be

different remedies for the protection of copyright owners,

the former blocking access to the infringing material on the

offender’s computer and the latter more broadly blocking

the offender’s access to the internet (at least via his chosen

ISP). Compare 17 US.C. § 512(j)(1)(A)@) (authorizing

injunction restraining ISP “from providing access to

infringing material”) with 17 U.S.C. § 512(j)(1)(A)(i)

(authorizing injunction restraining ISP “from providing

access to a subscriber or account holder ... who is engaging

in infringing activity ... by terminating the accounts of the

subscriber or account holder”). “(Where different terms are

used in a single piece of legislation, the court must presume

that Congress intended the terms have different meanings.”

Transbrasil S.A. Linhas Aereas v. Dep't of Transp., 791 F.2d 202,

205 (D.C. Cir. 1986). These distinct statutory remedies

establish that terminating a subscriber's account is not the

same as removing or disabling access by others to the

infringing material resident on the subscriber’s computer.

The RIAA points out that even if, with respect to an ISP

functioning as a conduit for user-directed communications, a

§ 512(c)(3)(A)(iii) by identifying material to be removed by

the ISP, a notification is effective under § 512(c)(3)(A) if it

“includes substantially” the required information; that

standard is satisfied, the RIAA maintains, because the ISP

can identify the infringer based upon the information

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provided by the copyright owner pursuant to

§§ 512(c)(3)(A)(i) - (ii) and (iv)-(vi). According to the RIAA,

the purpose of § 512(h) being to identify infringers. a notice

should be deemed sufficient so long as the ISP can identify

the infringer from the IP address in the subpoena.

Nothing in the Act itself says how we should determine

whether a notification “includes substantially” all the

required information, both the Senate and House Reports,

however, state the term means only that “technica: errors . . .

such as misspelling a name” or “supplying an outdated area

code” will not render ineffective an otherwise complete

§ 512(c)(3)(A) notification. S. Rep. No. 105-190, at 47 (1998);

H.R. Rep. No. 105-551 (II), at 56 (1998). Clearly, however,

the defect in the RIAA’s notification is not a mere technical

error; nor could it be thought “insubstantial” even under a

more forgiving standard. The RIAA’s notification identifies

absolutely no material Verizon could re .ove or access to

which it could disable, which indicates to us that

§ 512(c)(3)(A) concerns means of infringement other than

P2P file sharing.

Finally, the RIAA argues the definition of “[internet]

service provider” in § 512(k)(1)(B) makes § 512(h) applicable

to an ISP regardless what function it performs with respect

to infringing material - transmitting it per § 512(a), caching it

per § 512(b), hosting it per § 512(c), or locating it per

§ 512(d).

This argument borders upon the silly. The details of this

argument need not burden the Federal Reporter, for the

specific provisions of § 512(h), which we have just rehearsed,

make clear that however broadly “[internet] service

provider” is defined in § 512(k)(1)(B), a subpoena may issue

to an ISP only under the prescribed conditions regarding

notification. Define all the world as an ISP if you like, the

validity of a § 512(h) subpoena still depends upon the

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notification effective under § 512(c)(3)(A). And as we have

seen, any notice to an ISP concerning its activity as a mere

conduit does not satisfy the condition of § 512(c)(3)(A)(iii)

and is therefore ineffective.

In sum, we agree with Verizon that § 512(h) does not by

its terms authorize the subpoenas issued here. A § 512(h)

subpoena simply cannot meet the notice requirement of

§ 512(c)(3)(A) (iii).

B. Structure

Verizon alse argues the subpoena provision, § 512(h),

relates uniquely to the safe harbor in § 512(c) for ISPs

engaged in storing copyrighted material and does not apply

to the transmitting function addressed by the safe harbor in

§512(a). Verizon's claim is based upon the “three separate

cross - references” in § 512(h) to the notification described in

§ 512(c)(3)(A). First, as we have seen, § 512(h)(2)(A) requires

the copyright owner to file, along with its request for a

subpoena, the notification described in § 512(c)(3)(A).

Second, and again as we have seen, § 512(h)(4) requires that

the notification satisfy “the provisions of [§ 512](c)(3)(A)” as

a condition precedent to the Clerk's issuing the requested

subpoena. Third, § 512(h)(5) conditions the ISP’s obligation

to identify the alleged infringer upon “receipt of a

notification described in [§ 512](c)(3)(A).” We agree that the

presence in § 512(h) of three separate references to § 512(c)

and the absence of any reference to § 512(a) suggests the

subpoena power of § 512(h) applies only to ISPs engaged in

storing copyrighted material and not to those engaged solely

in transmitting it on behalf of others.

As the RIAA points out in response, however, because

§§ 512(b) and (d) also require a copyright owner to provide a

“notification . . . as described in [§ 512}(c)(3),” the cross-

ee eT ee ee

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references to § 512(c)(3)(A) in § 512(h) can not confine the

operation of § 512(h) solely to the functions described in

§ 512(c), but must also include, at a minimum, the functions

described in §§ 512(b) and (d). Therefore, according to the

RIAA, because Verizon is mistaken in stating that “the take-

down notice described in [§ 512](c)(3)(A) .. . applies

exclusively to the particular functions described in [§ 512](c)

of the statute,” the subpoena power in § 512(h) is not linked

exclusively to § 512(c) but rather applies to all the ISP

functions, wherever they may be described in §§ 512(a)-(d).

Although the RIAA’s conclusion is a non-sequitur with

respect to § 512(a), we agree with the RIAA that Verizon

overreaches by claiming the notification described in

§ 512(c)(3)(A) applies only to the functions identified in

§512(c). As Verizon correctly notes, however, the ISP

activities described in §§ 512(b) and (d) are storage

functions. As such, they are, like the ISP activities described

in § 512(c) and unlike the transmission functions listed in

§ 512(a), susceptible to the notice and take down regime of

§§ 512(b)-(d), of which the subpoena power of § 512(h) is an

integral part. We think it clear, therefore, that the cross-

references to § 512(c)(3) in §§ 512(b)-(d) demonstrate that

§ 512(h) applies to an ISP storing infringing material on its

servers in any capacity - whether as a temporary cache of a

web page created by the ISP per § 512(b), as a web site

stored on the ISP’s server per § 512(c), or as an information

locating tool hosted by the ISP per § 512(d) - and does not

apply to an ISP routing infringing material to or from a

personal computer owned and used by a subscriber.

The storage activities described in the safe harbors of

§§ 512(b)-(d) are subject to § 512(c)(3), including the

notification described in § 512(c)(3)(A). By contrast, as we

have already seen, an ISP performing a function described in

§ 512(a), such as transmitting e-mails, instant messages, Or

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files sent by an internet user from his computer to that of

another internet user, cannot be sent an effective

§ 512(c)(3)(A) notification. Therefore, the references to

§ 512(c)(3) in §§ 512(b) and (d) lead inexorably to the

conclusion that § 512(h) is structurally linked to the storage

functions of an ISP and not to its transmission functions,

such as those listed in § 512(a).

C. Legislative History

In support of its claim that § 512(h) can - and should - be

read to reach P2P technology, the RIAA points to

congressional testimony and news articles available to the

Congress prior to passage of the DMCA. These sources

document the threat to copyright owners posed by bulletin

board services (BBSs) and file transfer protocol (FTP) sites,

which the RIAA says were precursors to P2P programs.

We need not, however, resort to investigating what the

105th Congress may have known because the text of § 512(h)

and the overall structure of § 512 clearly establish, as we

have seen, that § 512(h) does not authorize the issuance of a

subpoena to an ISP acting as a mere conduit for the

transmission of information sent by others. Legislative

history can serve to inform the court’s reading of an

otherwise ambiguous text; it cannot lead the court to

contradict the legislation itself. See Ratzlaf v. United States,

510 USS. 135, 147-48, 114 S. Ct. 655, 662-63, 126 L. Ed. 2d 615

(1994) ( “[W]e do not resort to legislative history to cloud a

statutory text that is clear”).

In any event, not only is the statute clear (albeit

complex), the legislative history of the DMCA betrays no

awareness whatsoever that internet users might be able

directly to exchange files containing copyrighted works.

That is not surprising; P2P software was “not even a

glimmer in anyone's eye when the DMCA was enacted.” In

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re Verizon I, 240 F. Supp. 2d at 38. Furthermore, such

testimony as was available to the Congress prior to passage

of the DMCA concerned “hackers” who established

unauthorized FTP or BBS sites on the servers of ISPs, see

Balance of Responsibilities on the Internet and the Online

the House Subcomm. on Courts and Intellectual Property, Comm.

on the Judiciary, 105th Cong. (1997) (statement of Ken Wasch,

President, Software Publishers Ass’n); rogue ISPs that

posted FTP sites on their servers, thereby making files of

copyrighted musical works available for download, see

Complaint, Geffen Records, Inc. v. Arizona Bizness Network,

No. CIV. 98-0794, at | 1 (D. Ariz. May 5, 1998) available at

http://www.riaa.com/news/newsletter/pdf/geffencompla

int.pdf, (last visited December 2, 2003); and BBS subscribers

using dial-up technology to connect to a BBS hosted by an

ISP. The Congress had no reason to foresee the application

of § 512(h) to P2P file sharing, nor did they draft the DMCA

broadly enough to reach the new technology when it came

along. Had the Congress been aware of P2P technology, or

anticipated its development, § 512(h) might have been

drafted more generally. Be that as it may, contrary to the

RIAA’s claim, nothing in the legislative history supports the

issuance of a § 512(h) subpoena to an ISP acting as a conduit

for P2P file sharing.

D. Purpose of the DMCA

Finally, the RIAA argues Verizon’s interpretation of the

statute “would defeat the core objectives” of the Act. More

specifically, according to the RIAA there is no policy

justification for limiting the reach of § 512(h) to situations in

which the ISP stores infringing material on its system,

considering that many more acts of copyright infringement

are committed in the P2P realm, in which the ISP merely

transmits the material for others, and that the burden upon

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an ISP required to identify an infringing subscriber is

minimal.

We are not unsympathetic either to the RIAA’s concern

regarding the widespread infringement of its members’

copyrights, or to the need for legal tools to protect those

rights. It is not the province of the courts, however, to

rewrite the DMCA in order to make it fit a new and

unforeseen internet architecture, no matter how damaging

that development has been to the music industry or

threatens being to the motion picture and software

industries. The plight of copyright holders must be

addressed in the first instance by the Congress; only the

“Congress has the constitutional authority and the

institutional ability to accommodate fully the varied

rmutations of competing interests that are inevitably

implicated by such new technology.” See Sony Corp. v.

Universal City Studios, Inc., 464 US. 417, 431, 104 S. Ct. 774,

783, 78 L. Ed. 2d 574 (1984).

The stakes are large for the music, motion picture, and

software industries and their role in fostering technological

innovation and our popular culture. It is not surprising,

therefore, that even as this case was being argued,

committees of the Congress were considering how best to

deal with the threat to copyrights posed by P2P file sharing

schemes. See, e.g., Privacy & Piracy: The Paradox of Illegal File

Sharing on Peer-to-Peer Networks and the Impact of Technology

on the Entertainment Industry: Hearing Before the Senate Comm.

On Governmental Affairs, 108th Congress (Sept. 30, 2003);

Pornography, Technology, and Process: Problems and Solutions

on Peer-to-Peer Networks: Hearing Before the Senate Comm. on

the Judiciary, 108th Congress (Sept. 9, 2003).

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III. Conclusion

For the foregoing reasons, we remand this case to the

district court to vacate its order enforcing the July 24

subpoena and to grant Verizon’s motion to quash the

February 4 subpoena.

So ordered.

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Appendix B

United States District Court,

District of Columbia.

In re. VERIZON INTERNET SERVICES, INC.,

Subpoena Enforcement Matter,

Recording Industry Association of America, Plaintiff,

Verizon Internet Services, Defendant.

No. CIV.A.02-MS-0323(JDB).

Jan. 21, 2003.

MEMORANDUM OPINION

BATES, District Judge.

The Recording Industry Association of America

(“RIAA”)! has moved to enforce a subpoena served on

Verizon Internet Services (“Verizon”) under the Digital .

Millennium Copyright Act of 1998 (“DMCA” or “Act”), 17

US.C. § 512. On behalf of copyright owners, RIAA seeks the

identity of an anonymous user of Verizon’s service who is

alleged to have infringed copyrights with respect to more

than 600 songs offered for downloading over the Internet in

a single day. The copyright owners (and thus RIAA) can

discern the Internet Protocol address, but not the identity, of

the alleged infringer--only the service orovider can identify

the user. Verizon argues that the subpoena relates to

1 RIAA is the industry trade association for sound and music recordings,

whose members create and distribute the overwhelming majority of all

music sold in the United States. RIAA is authorized to enforce the

copyrights of its members.

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material transmitted over Verizon’s network, not stored on

it, and thus falls outside the scope of the subpoena power

authorized in the DMCA. RIAA counters that the subpoena

power under section 512(h) of the DMCA applies to all

Internet service providers, including Verizon, whether the

infringing material is stored on or simply transmitted over

the service provider's network.

The case thus presents a core issue of statutory

interpretation relating to the scope of the subpoena

authority under the DMCA. The parties, and several amici

curiae, agree that this is an issue of first impression of great

importance to the application of copyright law to the

Internet. indeed, they concede that this case is presented as

a test case on the DMCA subpoena power. Based on the

language and structure of the statute, as confirmed by the

purpose and history of the legislation, the Court concludes

that the subpoena power in 17 U.S.C. § 512(h) applies to all

Internet service providers within the scope of the DMCA,

not just to those service providers storing information on a

system or network at the direction of a user. Therefore, the

Court grants RIAA’s motion to enforce, and orders Verizon

to comply with the properly issued and supported subpoena

from RIAA seeking the identity of the alleged infringer.

BACKGROUND

An assessment of this issue requires some understanding

of both the DMCA and the subpoena served by RIAA on

Verizon. Although the subpoena power is specifically

delineated in section 512(h), that language cannot be isolated

from the structure and purpose of the DMCA, and RIAA’s

subpoena to Verizon must be assessed in that context.

1. The Digital Millennium Copyright Act

The DMCA amended chapter 5 of the Copyright Act, 17

U.S.C. § 501 et seq., and created a new section 512 entitled

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“Limitations on liability relating to material online.” As the

title indicates, the DMCA is designed primarily to limit the

liability of Internet service providers for acts of copyright

infringement by customers who are using the providers’

systems or networks. Section 512 contains limitations on the

liability of service providers for four general categories of

activity set forth in subsections (a) through (d). The statute

thereby creates a series of “safe harbors” that allow service

providers to limit their liability for copyright infringement

by users if certain conditions under the Act are satisfied.

“The limitations in subsections (a) through (d) protect

qualifying service providers from liability for all monetary

relief for direct, vicarious and contributory [copyright]

infringement.” S. Rep. No. 105-190, at 20 (1998).

Under the DMCA, an Internet service provider falls

within one of these four subsections based on how the

allegedly infringing material has interacted with the service

provider’s system or network. To qualify for a “safe

harbor,” the service provider must fulfill the conditions

under the applicable subsection and the conditions of

subsection (i), which includes the requirement that a service

provider implement and inform its users of its policy to

terminate a subscriber’s account in cases of repeat copyright

infringement. See 17 U.S.C. § 512(i)(1)(A). Under subsection

(a), which Verizon contends is applicable here, if the service

provider meets certain conditions it will not be liable for the

user’s copyright infringement when the service provider

transmits the copyrighted material over its system Or

network:

(a) Transitory digital network communications.--

A service provider shall not be liable . . . for

infringement of copyright by reason of the

provider's transmitting, routing, OF providing

[Internet] connections for, material through a

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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 . . ..

Id. § 512(a). On the other hand, subsection (c), the other

subsection most relevant here, pertains to copyrighted

material that is stored on the service provider’s network or

system:

at direction of users. -- . . . A service provider

shall not be liable . . . for infringement of

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).2. Under subsection (c), a service provider

must also designate an agent to receive notifications of

claimed infringement from copyright owners. Id. § 512(c)(2).

Of particular importance here, subsection (c)(3)(A) spells

out requirements to be met by copyright owners for effective

notification of copyright infringement under subsection (c).

The notification of claimed infringement must be in a

writing provided to the designated agent, and must include

the following -- a “signature of a person authorized to act on

behalf of the [copyright] owner”; identification of the

copyrighted work allegedly infringed (or a list of multiple

2 Subsection (b) covers “system caching,” which is the temporary storage

of allegedly infringing material on the provider’s system or network,

while subsection (d) relates to “information location tools,” which refer or

link users to an online location having infringing material through the use

of “a directory, index, reference, pointer, [ ] hypertext link” or other

information location tool. Id. §§ 512(b) & (d).

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copyrighted works covered by 4a single notification);

identification of the allegedly infringing material “that is to

be removed or access to which is to be disabled,” and

information to enable the provider to locate the material;

information to permit the provider to contact the

complaining party; 4 statement of good faith belief that the

use complained of is not authorized; and a “statement that

the information in the notification is accurate, and under

penalty of perjury, that the complaining party is authorized

to act on behalf of the owner.” Id. § 512(c)(3)(A)(i)-(vi)- This

notification requirement is located within subsection (c), an

there is no similar notification requirement within

subsection (a) or elsewhere in section 512. The subsection

(c)(3) notification requirement is referenced, however, in the

conditions under both subsection (b) and subsection (d). See

id. §§ 512(b)(2)(E) & (d)(3).

The DMCA also contains a novel provision in subsection

(h) -- which lies at the heart of the dispute before the Court --

permitting a copyright owner to obtain and serve a

subpoena on a service provider seeking the identity of a

customer alleged to be infringing the owner's copyright.

The subpoena is issued by the clerk of any United States

District Court upon a request by the copyright owner (or one

authorized to act on the owner's behalf) containing the

proposed subpoena, “a copy of a notification described in

subsection (c)(3)(A),” and a sworn declaration ensuring that

the subpoena is solely to obtain the identity of the alleged

infringer, which information will be used only to protect

rights to the copyright. Id. § 512(h)(2). The subpoena, in

turn, authorizes and orders the recipient service provider “to

expeditiously disclose” information sufficient to identify the

alleged infringer. Id. § 512(h)(3). The clerk “shall

expeditiously issue” the subpoena if it is in proper form, the

declaration is properly executed, and “the notification filed

satisfies the provisions of subsection (c)(3)(A).” Id. §

———_ I - — °° ° ° °°

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512(h)(4). The service provider, upon receipt of the

subpoena, “shall expeditiously disclose” the information

required by the subpoena to the copyright owner (or

authorized person). Id. § 512(h)(5). The issuance, delivery

and enforcement of subpoenas is to be governed (to the

extent practicable) by the provisions of the Federal Rules of

Civil Procedure dealing with subpoenas duces tecum. Id. §

512(h)(6).

2. RIAA’s Subpoena to Verizon

On July 24, 2002, RIAA served a subpoena on Verizon

seeking identifying information about an anonymous

offer for downloading copyrighted songs through peer-to-

peer software provided by KaZaA, without the copyright

holders’ authorization. See Motion to Enforce, Ex. A. Along

with the subpoena, RIAA provided Verizon with a list of

more than 600 files (predominantly individual songs, most

by well-known artists) allegedly offered for downloading by

the user on one day. Id., Ex. B. The subpoena included the

user’s specified Internet Protocol (IP) address, to enable

Verizon to locate the computer where the infringement

occurred. In addition to the IP address, RIAA provided the

time and date when the songs were downloaded and

furnished a declaration, under penalty of perjury, that the

information was sought in good faith and would only be

used in connection with “protecting the rights” of RIAA

members. Id., Ex. B (letter from Whitehead to Crowder

dated July 24, 2002). RIAA also requested that Verizon

“remove or disable access to the infringing sound files.” Id.

Verizon responded by letter refusing to comply with

RIAA’s subpoena. Id., Ex. D (letter from Daily to Whitehead

dated Aug. 6, 2002). Verizon emphasized its view that the

DMCA subpoena power applies only if the infringed

material is stored or controlled on the service provider's

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system or network under subsection (c). Id. at pp. 2-3.

Verizon stated: “The allegedly infringing contents of the

[downloaded files] do not reside on any system or network

controlled or operated by or for [Verizon], but . . . are stored

on the hardware of the Customer. Thus, neither §

512(c)(3)(A) nor § 512(h) is applicable for this reason alone.”

Id. According to Verizon, a subpoena under the DMCA is

“conditioned” on notification under section 512(c)(3)(A),

“and that provision is addressed to ‘material that resides on

a system or network controlled or operated by or for [a] service

provider.’” Id. (emphasis in original). In contrast, Verizon

stressed, it only provided the customer with Internet

connectivity service. Id. Verizon also refused RIAA's

request to terminate the user’s Internet connection. Id. at 3.

Verizon’s position, therefore, is that because it only provided

the alleged infringer with an Internet connection, it falls

under subsection (a) of section 512, not under subsection (c),

and it is thus outside the subpoena authority of subsection

(h), which Verizon contends is limited to service providers

storing material under subsection (c).

RIAA, on the other hand, is of the view that the DMCA

subpoena power under section 512(h) applies to all service

providers within the provisions of subsections (a) through

(d), including Verizon in the instant case? Given Verizon's

refusal to comply with the subpoena, RIAA moved pursuant

to 17 U.S.C. § 512(h)(6) and Fed. R. Civ. P. 45(c)(2)(B) to

enforce the subpoena. Substantial briefing (including

submissions by amici curiae on both sides) and a hearing

followed.

3 Hence, RIAA submits that it does not matter for purposes of

enforcement of the subpoena whether Verizon comes within subsection

(a) or subsection (c) in this case; in either event, RIAA contends, the

subpoena is valid.

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ANALYSIS

This case turns on the meaning and scope of the

provisions of the DMCA. “As in all statutory construction

cases, we begin with the language of the statute.” Barnhart v.

Sigmon Coal Co., 534 U.S. 438, 450, 122 S. Ct. 941, 151 L. Ed.

2d 908 (2002); see also United States v. Braxtonbrown-Smith, 278

F.3d 1348, 1352 (D.C. Cir. 2002). The first step “is to

determine whether the language at issue has a plain and

unambiguous meaning with regard to the particular dispute

in the case.” Robinson v. Shell Oil Co., 519 U.S. 337, 340, 117 S.

Ct. 843, 136 L. Ed. 2d 808 (1997) (citing United States v. Ron

Pair Enters., Inc., 489 U.S. 235, 240, 109 S. Ct. 1026, 103 L. Ed.

2d 290 (1989)). If so, and if the statutory scheme is “coherent

and consistent,” then the inquiry ceases. Barnhart, 534 U.S. at

450, 122 S. Ct. 941 (quoting Robinson, 519 U.S. at 340, 117 S.

Ct. 843). Nonetheless, “[s]tatutory construction ‘is a holistic

endeavor,’ and, at a minimum, must account for a statute’s

full text, language as well as punctuation, structure, and

subject matter.” Connecticut Nat’l Bank v. Germain, 503 U.S.

249, 254, 112 S. Ct. 1146, 117 L. Ed. 2d 391 (1992) (quoting

United Savings Ass’n of Texas v. Timbers of Inwood Forest

Assocs., Ltd., 484 U.S. 365, 371, 108 S. Ct. 626, 98 L. Ed. 2d 740

(1988)). Hence, “courts should disfavor interpretations of

statutes that render language superfluous.” Connecticut

Nat'l Bank, 503 U.S. at 253, 112 S. Ct. 1146. But as the

Supreme Court has explained:

[C]anons of construction are no more than rules

of thumb that help courts determine the

meaning of legislation, and in interpreting a

statute a court should always turn first to one,

cardinal canon before all others. We have stated

time and again that courts must presume that a

legislature says in a statute wnat it means and

means in a statute what it says there.

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Id. at 254, 112 S. Ct. 1146; accord Ron Pair Enters., Inc., 489

US. at 241-42, 109 S. Ct. 1026; United States v. Goldenberg, 168

US. 95, 102-03, 18 S. Ct. 3, 42 L. Ed. 394 (1897). “When the

words of a statute are unambiguous, then, this first canon is

also the last: ‘judicial inquiry is complete.”” Connecticut

Nat'l Bank, 503 U.S. at 254, 112 S. Ct. 1146 (quoting Rubin v.

United States, 449 U.S. 424, 430, 101 S. Ct. 698, 66 L. Ed. 2d

633 (1981)); see also Ratzlaf v. United States, 510 U.S. 135, 147-

48, 114 S. Ct. 655, 126 L. Ed. 2d 615 (1994) (“There are, we

recognize, contrary indications in the statute’s legislative

history. But we do not resort to legislative history to cloud a

statutory text that is clear.”); Barnhill v. Johnson, 503 U.S. 393,

401, 112 S. Ct. 1386, 118 L. Ed. 2d 39 (1992).

Here, the statutory language and structure lead to a

single result -- the section 512(h) subpoena authority applies

to service providers within not only subsection (c) but also

subsections (a), (b), and (d) of section 512. Moreover, the

purpose and history of the DMCA are consistent with that

conclusion.

1. Statutory Definition of “Service Provider”

The statutory text of the DMCA provides clear guidance

for construing the subpoena authority of subsection (h) to

apply to all service providers under the Act. The term

“service provider” is employed repeatedly in subsection (h).

The request to the clerk is “to issue a subpoena to a service

provider for identification of an alleged infringer”

(§ 512(h)(1)); the subpoena “shall authorize and order the

service provider receiving the notification and the

subpoena” to disclose the identifying information to the

extent it is available to the service provider (§ 512(h)(3)); a

proper subpoena shall be executed by the clerk, who shall

return it to the requester “for delivery to the service

provider” (§ 512(h)(4)); and upon receipt “the service

provider shall expeditiously disclose” the information

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required by the subpoena “regardless of whether the service

provider responds to the notification” (§ 512(h)(5)).

The question, then, is whether the “service provider”

repeatedly referenced in subsection (h) is limited to one

described by subsection (c) or instead includes those

described in subsections (a), (b) and (d) of section 512 as

well. The DMCA answers that question unequivocally.

The Act provides two distinct definitions of “service

provider” -- a narrow definition as the term is used solely

within subsection (a), and a broader definition governing all

other subsections, which specifically includes a “service

provider” under subsection (a) as well:

(k) Definitions. -

(1) Service provider. -

(A) As used in subsection (a), the term

“service provider” means 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, without modification to the

content of the material as sent or received.

(B) As used in this section, other than

subsection (a), the term “service provider”

means a provider of online services or

network access, or the operator of facilities

therefor, and includes an entity described in

subparagraph (A).

17 U.S.C. § 512(k); see also ALS Scan, Inc. v. RemarQ

Communities, Inc., 239 F.3d 619, 623 (4th Cir. 2001) (the

DMCA “defines a service provider broadly”).

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The textual definition of “service provider” in subsection

(k) leaves no doubt, therefore, that the subpoena power in

subsection (h) applies to all service providers, regardless of

the functions a service provider may perform under the four

categories set out in subsections (a) through (d). The broad

definition in subsection (k)(1)(B) -- “a provider of online

services or network access” -- expressly applies to the term

“service provider” as used in subsection (h), since the

narrow definition found in subsection (k)(1)(A) is applicable

only to the term as used in subsection (a). By the plain text

of the statute, moreover, the term “service provider” as

employed in subsection (h) encompasses those entities

defined in subsection (k)(1)(A), which explicitly includes

“service providers” under subsection (a) such as Verizon (an

“entity offering the transmission, routing, or providing of

connections for digital online communications”). In short,

Verizon contends that it has only provided an Internet

connection, and thus is within subsection (a) of the DMCA;

but the definition of “service provider” in subsection (k)

applicable to the subpoena authority under subsection (h)

squarely includes subsection (a) entities such as Verizon that

are “providing . - - connections for digital online

communications.” Given the broad definition of “service

provider” in subsection (k)(1)(B), and the use of that defined

term throughout subsection (h), the Court must, under well-

established statutory construction tools, read these

provisions together, as a whole. See United States v. Wilson,

990 F.3d 347, 355 (D.C. Cir. 2002) (“It is the ‘classic judicial

task’ of construing related statutory provisions ‘to make

sense in combination.’”) (quoting United States v. Fausto, 484

US. 439, 453, 108 S. Ct. 668, 98 L. Ed. 2d 830 (1988)).

Applying the statutory definition of “service provider”

leaves no doubt whatsoever, then, that the DMCA subpoena

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authority reaches a subsection (a) service provider such as

Verizon contends it is here.‘

Verizon’s response is to downplay the subsection (k)

definition, dismissing it as “beside the point.” But the

language is clear, and the Court cannot overlook the

governing definition of service provider in subsection

(k)(1)(B), which plainly sets the scope of the subsection (h)

subpoena power. Rather, the Court must take into account

all relevant parts of the statute. See United States Telecom

Ass’n v. FCC, 227 F.3d 450, 463 (D.C. Cir. 2000) (noting “the

well-accepted principle of statutory construction that

requires every provision of a statute to be given effect”); Qi-

Zhuo v. Meissner, 70 F.3d 136, 139 (D.C. Cir. 1995) (courts

have “endlessly reiterated [the] principle of statutory

construction .. . that all words in a statute are to be assigned

meaning, and that nothing therein is to be construed as

surplusage”). “If a statute defines a term in its definitional

section, then that definition controls the meaning of the term

wherever it appears in the statute.” Lilly v. Internal Revenue

Service, 76 F.3d 568, 571 (4th Cir. 1996); see also Colautti v.

Franklin, 439 U.S. 379, 392 n. 10, 99 S. Ct. 675, 58 L. Ed. 2d 596

(1979) (“[A} definition which declares what a term ‘means’ . .

. excludes any meaning that is not stated.”); Florida Dep’t of

Banking & Fin. v. Board of Governors of Fed. Reserve Sys., 800

4 The legislative history of the DMCA comports with this reading of the

definitional language of subsection (k). The Senate Report explains that

“[t]he second definition of ‘service provider,’ set forth in subsection

(j)(1)(b), applies to the term as used in any other subsection of section

512.” S. Rep. No. 105-190, at 54 (subsection (j)(1)(b) ultimately became

subsection (k)(1)(B)). “This definition includes, for example, services such

as providing Internet access, e-mail, chat room and web page hosting

services,” and “{ijhe definition also specifically includes any entity that

falls within the first definition of service provider.” Id. at 54-55. See also

H.R. Rep. No. 105-551(II), at 64 (1998) (definition of “service provider”

“includes, for example, services such as providing Internet access, email,”

etc.).

——_— —— ———— —--- —- —-—

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F.2d 1534, 1536 (11th Cir. 1986) (“It is an elementary precept

of statutory construction that the definition of a term in the

definitional section of a statute controls the construction of

that term wherever it appears throughout the statute.”). It

would simply make no sense here to dismiss the statutory

definition of “service provider” as irrelevant.

As Verizon explained in its letter to RIAA refusing to

comply with the subpoena, “the only service [Verizon]

provides to the Customer is Internet connectivity.” Motion

to Enforce, Ex. D, at p. 2 (letter from Dailey to Whitehead

dated Aug. 6, 2002). But the broad definition of “service

provider” under subsection (k)(1)(B) that is expressly

applicable to subsection (h), together with the fact that

Verizon indisputably provided network access to the alleged

infringer, lead ineluctably to the conclusion that the

subpoena authority of the DMCA applies to all service

providers within the scope of the Act, including those like

Verizon falling under subsection (a).

2. The Statutory Structure

Verizon’s assertions to the contrary are refuted by the

structure and language of the DMCA. An essential condition

for a valid subpoena under subsection 512(h), Verizon

claims, “is a notification to the service provider that

complies with subsection (c)(3)(A).” Verizon Opp. at pp. 2-

3. Therefore, Verizon argues, it is implicit that a subpoena

may only be issued to service providers described in

subsection (c) -- in other words, “to [those] service providers

who have stored offending material on their own system or

network.” Id. at p. 3. Verizon notes that, in contrast,

“subsection (a) -- the provision of section 512 for service

providers acting simply as passive transmitters, as Verizon

was here -- contains no provision for any notification of

claimed infringers, much less notification that ‘satisfies the

requirements of (c)(3)(A).’” Id. Thus, Verizon reasons,

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RIAA's subpoena to it is invalid because Verizon is not

storing the infringing material on its system or network, but

is simply providing “Internet connectivity” or acting as a

“passive conduit” under subsection (a), and hence need not

comply with the notification requirement in subsection

(c)(3)(A).

The Court disagrees with Verizon's strained reading of

the Act, which disregards entirely the clear definitional

language of subsection (k). The holistic character of

Statutory construction requires an examination of all

relevant text, and of language as well as structure. See

Connecticut Nat'l Bank, 503 U.S. at 254, 112 S. Ct. 1146. Not

only the language but also the structure of the DMCA

dispenses with the contentions advanced by Verizon.

Verizon contends that the Court should infer that the

subpoena authority under subsection (h) only applies to

subsection (c) in light of the reference in subsection (h)(2)(A)

to the notification requirement of subsection (c)(3)(A). But

that reference does not mean that subsection (h) only applies

to service providers described in subsection (c). In fact, the

notification provision in subsection (c) is also referenced

elsewhere in the DMCA, including in subsections (b)(2)(E)

and (d)(3). The latter references confirm the expectation that

notifications like that described in subsection (c)(3) will at

times be needed in settings under subsections (b) and (d),

and hence are not confined to subsection (c) settings.

Subsection (h), moreover, is written without limitation or

restriction as to its application. It is entitled “Subpoena to

identify infringer” - not “Subpoena to identify infringer

Storing copyrighted material on a service provider's

network” or “Subpoena to identify infringer relating to

subsection (c)” If Congress intended to restrict or limit the

subsection (h) subpoena authority based on where the

infringing material resides, one would expect to see that

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limitation spelled out in subsection (h). And if Congress

intended to limit subsection (h) subpoenas strictly to service

providers under subsection (c), it certainly could have made

such a limitation explicit.

There is simply nothing in the text of the statute that

states, or even suggests, that the subpoena authority in

subsection (h) applies only to those service providers

described in subsection (c). Indeed, subsection (h) does not

require, as Verizon contends, a copyright owner to comply

fully with subsection (c)(3)(A). The references in subsection

(h) to “a notification described in” (see §§ 512(h)(2)(A) &

(h)(5)) or that “satisfies the provisions of” (see § 512(h)(4))

subsection (c)(3)(A) do not by their language limit the

subpoena authority. Rather, these references are consistent

with the construction that when a subpoena under

subsection (h) is sought against a service provider falling

within subsections (a), (b) or (d), the copyright owner or

authorized person must then provide a notification like the

one always required under subsection (c) but not otherwise

required under (a), (b) or (d). Thus, as part of the process to

obtain a subpoena, subsection (h)(2)(A) simply requires a

“notification described in subsection (c)(3)(A).”

Significantly, then, if Congress had intended subsection

(h) subpoenas to apply solely to subsection (c) service

providers, it could have stated such a limitation in

subsection (h), or stated that subsection (h) does not apply to

subsections (a), (b) or (d), or even have placed the subpoena

authority itself within subsection (c). But Congress did not

do so. Instead, the subpoena authority in the DMCA is

contained in a stand-alone subsection, just as separate from

5 Ts a

OR ee tk sen, es omit or

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subsection (c) as it is from subsections (a), (b), and (d).5 It is

a “fundamental canon of statutory construction that the

words of a statute must be read in their context and with a

view to their place in the overall statutory scheme.” FDA v.

Brown & Williamson Tobacco Corp., 529 U.S. 120, 133, 120 S.

Ct. 1291, 146 L. Ed. 2d 121 (2000).

Verizon's proposed construction does not comport with

other aspects of the Act either. A court must consider “the

particular statutory language at issue, as well as the

5 Verizon also points out that under subsection (c)(3)(A)(iii) a copyright

owner must identify the infringing material “that is to be removed or

access to which is to be disabled.” In order to remove or disable access to

the material, Verizon argues, the material must be stored on its system --

an indication that Congress intended subsection (h) to apply only to those

service providers who store infringing material on their systems. The

Court is not persuaded. To begin with, a subpoena issued pursuant to

subsection (h) is used to identify the infringer, not to force the service

provider to remove material or disable access to it. The requirement for

the notification is simply that it identify the infringing material to be

removed, not that removal be effectuated. In addition, a copyright owner

can meet the requirement under subsection (c)(3)(A)(iii) if it cam disable

access to material. Here, Verizon certainly can disable access to the

material by terminating the account altogether. Verizon makes clear to

customers in its terms of service that the use of its network for copyright

infringement is strictly forbidden, and can result in a variety of sanctions,

including termination. In fact, the DMCA requires service providers, in

order to obtain the various safe harbor protections, to implement “a policy

that provides for termination in appropriate circumstances of subscribers

and account holders of the service provider’s system or network who are

repeat infringers.” 17 U.S.C. § 512(i) (1)(A). Verizon counters that

terminating service is too harsh, and may prevent other family members

from having Internet service. But again, the requirement is only

identification of infringing material, not actual removal or access denial.

There is nothing, moreover, to prevent a family member from opening

another account. In any event, it is irrelevant whether the service

provider is able, or intends, to disable access to the material. See id.

§ 512(h)(5) (“service provider shall expeditiously disclose to the copyright

owner . . . the information required by the subpoena, . . . regardless of

whether the service provider responds to the notification”).

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language and design of the statute as a whole.” K Mart v.

Cartier, Inc., 486 U.S. 281, 291, 108 S. Ct. 1811, 100 L. Ed. 2d

313 (1988). There is no discernable reason why Congress

would limit the subpoena authority under subsection (h) to

subsection (c) service providers alone. To begin with, the

burden on a service provider in identifying an apparent

infringer is no different depending on which subsection of

512 is implicated.6 Indeed, considering the four-part

structure of the liability limitations under the DMCA,

subsections (a) through (d) together with the subpoena

authority under subsection (h) only “make sense in

combination” if construed so that the subpoena authority

extends to service providers in all four categories. See

Fausto, 484 U.S. at 453, 108 S. Ct. 668; Wilson, 290 F.3d at 355.

Otherwise, the statute would fail significantly to address

many contexts in which a copyright owner needs to utilize

the subpoena process in order to discern the identity of an

apparent copyright infringer. And although Verizon has

attempted to justify an exclusion of just subsection (a)

service providers from the reach of the subpoena authority,

the position advanced by Verizon logically supports

confining the subpoena authority to subsection (c) service

providers alone, whereas the statutory language and

structure certainly provide no basis for differentiating

service providers within subsection (a) from those within

subsections (b) and (d) as to the scope of the subpoena

power. Moreover, whatever rationale warrants

6 Arguably, the total burden on service providers may be heavier from

subpoenas relating to subsection (a), as there may be more infringement

occurring with subsection (a) service providers than with subsection (c)

service providers. But in exchange for complying with subpoenas under

subsection (h), service providers receive liability protection from any

additional burden is offset by that protection, which, of course, is exactly

the contemplation reflected in the structure of the DMCA.

35a

distinguishing among subsections (a) through (d) for

purposes of the safe harbor liability protections, there is no

corresponding rationale for such distinctions regarding a

subpoena power that entails merely identifying infringers.

Importantly, Verizon's construction does not square with

Congress’s express and repeated direction to make the

subpoena process “expeditious.” See, eg., 17 USC.

§§ 512(h)(3), (h)(4) & (h)(5) (subpoena shall require service

provider to expeditiously disclose identity of infringer; clerk

shall expeditiously issue subpoena; and service provider

shall expeditiously disclose identity of infringer upon receipt

of subpoena). The statute contemplates a rapid subpoena

process designed quickly to identify apparent infringers and

then curtail the infringement. The copyright holder,

however, cannot readily determine whether its infringed

material was stored on or merely transmitted across the

service provider’s system, and hence whether it faces a

subsection (c) or subsection (a) situation. As a result, if the

subsection (c) service providers, it would have to establish at

the outset that the service provider fell within subsection (c)

in the particular case at hand. Hence, in many instances an

initial contested factual issue would ensue in court with

respect to where the material is stored, resulting in

potentially lengthy delays in obtaining identifying

information about the infringer. Such complication and

delay hardly comports with the language peppered

throughout subsection (h) indicating that the subpoena

process should be “expeditious.” In fact, there is an

important reason why Congress required service providers

to act promptly upon receipt of a subpoena to prevent

further infringement -- “the ease with which digital works

36a

can be copied and distributed worldwide _ virtually

instantaneously.” S. Rep. No. 105-190, at 8.’

Verizon’s construction thus makes little sense from a

policy standpoint. Verizon has provided no sound reason

why Congress would enable a copyright owner to obtain

identifying information from a service provider storing the

infringing material on its system, but would not enable a

service provider transmitting the material over its system

(or, indeed, from a service provider engaged in system

caching under subsection (b) or providing information

location tools under subsection (d)). After all, the

information obtained simply permits the copyright owner to

take steps directly with the infringer to prevent further

infringement. It is unlikely, the Court concludes, that

Congress would seek to protect copyright owners in only

some of the settings addressed in the DMCA, but not in

others.

In short, Verizon's position that the subpoena power in

subsection (h) only applies to subsection (c) service

providers, and not to subsection (a) (or for that matter to

subsections (b) and (d)) service providers, would create a

huge loophole in Congress's effort to prevent copyright

infringement on the Internet. There is little doubt that the

largest opportunity for copyright theft is through peer-to-

peer (“P2P”) software, as used by the alleged infringer here.

7 The consequence of delaying the receipt of information identifying an

infringer was highlighted by amicus curiae Motion Picture Association of

America. If Warner Brothers sought to obtain by subpoena information

identifying an alleged infringer disseminating the latest Warner Brothers’

movie release over the Internet, but needed first to establish that the

movie was stored on the service provider's system, the movie could be

distributed all over the world in the meantime, dramatically diminishing

the value of the copyright.

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37a

One amici characterizes such P2P software as “the biggest

revolution to happen on the Internet since the advent of

email or the World Wide Web -- millions of individuals use

P2P now, and the number is growing exponentially.” Br. of

Amicus Curiae U.S. Internet Service Provider Assoc. at p. 6.

Even Verizon states that “more than 100 million copies of

[KaZaA’s] peer-to-peer file sharing software have been

downloaded, and more than two million of its users are

commonly online at any given time.” Verizon Opp. at p. 8.

Because peer-to-peer users most often swap materials over

the Internet that are stored on their own computers -- not on

the service providers’ networks -- such activity is within

subsection (a), not subsection (c). Thus, under Verizon’s

reading of the Act, a significant amount of potential

subpoena authority of the DMCA That would, in effect,

give Internet copyright infringers shelter from the long arm

of the DMCA subpoena power, and allow infringement to

flourish. The Court can find nothing in the language or

structure of the statute that suggests Congress intended the

DMCA to protect only a very limited portion of copyrighted

material on the Internet.

3. The Purpose and History of the DMCA

“The traditional tools [of statutory construction] include

examination of the statute’s text, legislative history, and

8 Verizon recognizes the extent of this resulting loophole. In addressing

the burden on service providers if subsection (h) applied to subsection (a),

Verizon conceded at oral argument that far more infringement occurs

with subsection (a) service providers: “There are, under subsection (a), far

greater number of uses, e-mail, for instance, is part of subsection (a). The

whole Internet is potentially drawn into subsection (a).” Tr. of Hearing

(Oct. 4, 2002) at p. 61. Indeed, as one District Court observed in

construing an unrelated provision of the DMCA, “piracy of intellectual

property has reached epidemic proportions.” United States v. Elcom Ltd.,

203 F. Supp. 2d 1111, 1132 (N.D. Cal. 2002).

38a

structure, as well as its purpose.” Natural Resources Defense

Council, Inc., v. Daley, 209 F.3d 747, 752 (D.C. Cir. 2000).

Here, the text and structure of the DMCA are clear, as

explained above, and “we do not resort to legislative history

to cloud a statutory text that is clear.” Ratzlaf v. United

States, 510 U.S. at 147- 48, 114 S. Ct. 655. Nonetheless,

common sense suggests that an assessment of the subpoena

authority under the DMCA may benefit from an

understanding of the purpose and history of the legislation.

See Wisconsin Public Intervenor v. Mortier, 501 US. 597, 611 n.

4,111S. Ct. 2476, 115 L. Ed. 2d 532 (1991).

Congress not only sought to limit the liability of service

providers under the DMCA, but also intended to assist

legislative history makes clear that in enacting the DMCA,

Congress attempted to balance the liability protections for

service providers with the need for broad protection of

copyrights on the Internet? The clear purpose of the

DMCA, evident in its legislative history, confirms that the

scope of the subsection (h) subpoena power extends to

service providers within subsection (a) as well as subsection

(c).

The dual purpose and balance of the DMCA has been

recognized by the courts. The Fourth Circuit has explained

that “[t]he DMCA was enacted both to preserve copyright

enforcement on the Internet and to provide immunity to

service providers from copyright infringement liability for

‘passive,’ ‘automatic’ actions in which a service provider's

system engages through a technological process initiated by

another without the knowledge of the service provider.”

9 To the extent the statutory language in the DMCA is unclear, “the

legislative history of the DMCA can be useful in fleshing out its meaning

given the paucity of precedent interpreting the statute.” Costar Group, Inc.

v. Loopnet, Inc., 164 F. Supp. 2d 688, 700 (D. Md. 2001).

]

39a

ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619, 625

(4th Cir. 2001). Other courts note this balancing as well.

“Congress was concerned with promoting electronic

commerce while protecting the rights of copyright owners,

particularly in the digital age where near exact copies of

protected works can be made at virtually no cost and

distributed instantaneously on a worldwide basis.” United

States v. Elcom Ltd., 203 F. Supp. 2d 1111, 1124 (N.D. Cal.

2002) (citing S. Rep. No. 105-190, at 8). In short, Congress

sought “to protect against unlawful piracy and promote the

development of electronic commerce and the availability of

copyrighted material on the Internet.” Id. at 1125.

Congress thus created tradeoffs within the DMCA:

service providers would receive liability protections in

exchange for assisting copyright owners in identifying and

dealing with infringers who misuse the service providers’

systems. At the same time, copyright owners would forgo

pursuing service providers for the copyright infringement of

their users, in exchange for assistance in identifying and

acting against those infringers.

Title II [of the DMCA] preserves strong

incentives for service providers and copyright

owners to cooperate to detect and deal with

digital networked environment. At the same

time, it provides greater certainty to service

providers concerning their legal exposure for

infringements that may occur in the course of

their activities.

S. Rep. No. 105-190, at 20. “[T]he Committee believes it has

appropriately balanced the interests of content owners, on-

line and other service providers, and information users in a

way that will foster the continued development of electronic

commerce and the growth of the Internet.” H.R. Rep. No.

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105- 551(II), at 21; see also H.R. Rep. No. 105-551(1), at 11

(noting that remedies “ensurfe] that it is possible for

capacity to prevent ongoing infringement”).!° In striking

this balance, Congress was driven by the observation that

unless copyright owners have the ability to protect their

copyrights on the Internet, they will be less likely to make

their works available online:

Due to the ease with which digital works can be

copied and distributed worldwide virtually

instantaneously, copyright owners will hesitate

to make their works readily available on the

Internet without reasonable assurance that they

will be protected against massive piracy . - - [This

legislation] will facilitate making available

quickly and conveniently via the Internet the

movies, music, software, and literary works that

are the fruit of the American creative genius.

S. Rep. No. 105-190, at 3.

Congress also recognized that the Internet created

unprecedented opportunities for copyright infringement,

and sought to provide assistance to copyright owners in

light of the technological developments surrounding the

Internet:

years to keep pace with emerging technology

from the struggle over music played on a player

10 “The DMCA affects [service providers’] liability by insulating

[providers] from liability as long as they comply with certain statutory

requirements designed to facilitate content providers’ efforts to protect

their copyrighted material.” A. Yen, Internet Service Provider Liability for

Subscriber Copyright Infringement, Enterprise Liability, and the First

Amendment, 99 Geo. LJ. 1833, 1881 (2000).

4la

piano roll in the 1900's to the introduction of the

VCR in the 1980’s. With this constant evolution

in technology, the law must adapt in order to

make digital networks safe places to disseminate

and exploit copyrighted materials . . . Title II [of

the DMCA] clarifies the liability faced by service

providers who transmit potentially infringing

material over their networks. In short, Title Il

ensures that the efficiency of the Internet will

continue to improve and that the variety and

quality of services on the Internet will expand.

S. Rep. No. 105-190, at 1-2. As Senator Leahy explained,

“[t]Ihe DMCA is a product of the Senate Judiciary

Committee’s recognition that ours is a time of

unprecedented challenge to copyright protection . . . This bill

is a well - balanced package of proposals that address the

needs of creators, consumers and commerce in the digital

age and well into the next century.” Id. at 68.

Congress was concerned about the ability of copyright

owners to protect their creative investments in light of rapid

technological innovations on the Internet that make

undetectable. Therefore, in exchange for the liability

protections afforded to service providers in subsections (a)

through (d) of the DMCA, Congress sought through

subsection (h) to require service providers to assist copyright

owners in identifying infringers using the service providers’

systems. If, as Verizon contends, service providers only

have such obligations when the infringing material is stored

on their systems, then service providers falling within

subsection (a) -- a large portion of those addressed by the

DMCA -- would receive the liability protections of the Act

without the corresponding obligation to assist copyright

owners in identifying infringers. There is no logical

42a

connection between the line Verizon seeks to draw and the

objectives Congress sought to achieve through the DMCA.

Verizon’s reading would thus undermine the balance

Congress established in the DMCA, and does not comport

with the Act’s purpose and history."" It is not for this Court

to second-guess the compromises, negotiations, or even

brokered deals that produced the DMCA; rather, the Court's

role is to interpret the statute as enacted by Congress, and

the clear language and structure of the DMCA must

therefore control. See Barnhart, 534 U.S. at 460-61, 122 S. Ct.

941.

Complicating this assessment somewhat is the fact that

two new technology developments underlying the issues in

this case -- peer-to-peer (P2P) software and “bots,” a

software tool used by copyright owners to monitor the

Internet and detect unauthorized distribution of copyrighted

material -- were “not even a glimmer in anyone’s eye when

the DMCA was enacted” by Congress in 1998.12 RIAA

contends that P2P software makes Internet copyright piracy

easy and immediate, while Verizon counters that “bots” will

inundate service providers with thousands of computer-

generated subpoenas seeking to identify infringers.

Whether or not Congress was able to anticipate these

technologies in enacting the DMCA, however, the courts

cannot read new provisions OF exceptions into a statute in

order to accommodate future technological developments.

11 This balance was adopted with substantial input from the service

providers. In fact, the large service providers, including AOL and others,

were heavily involved in negotiating these tradeoffs in the legislation.

“Title Il, for example, reflects 3 months of negotiations supervised by

Chairman Hatch and assisted by Senator Ashcroft among the major

S. Rep. No. 105-190, at 9.

12 Br. of Amicus Curiae Alliance for Public Technology, et al., at p. 6.

DE DE CEI Sn Saws =

43a

Particularly in the field of copyright, federal courts must

defer to Congress’ expertise and constitutional authority.

The Constitution assigns to Congress the authority to

“promote the Progress of Science and useful Arts, by

securing for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and

Discoveries.” U.S. Const., art. I, § 8, cl. 8. The Supreme

Court has long deferred to Congress on the scope and

nuances of copyright law, especially regarding new

technologies:

Sound policy, as well as history, supports our

consistent deference to Congress when major

technological innovations alter the market for

copyrighted materials. Congress has the

constitutional authority and the institutional

ability to accommodate fully the varied

permutations of competing interests that are

inevitably complicated by such new technology.

Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 431,

104 S. Ct. 774, 78 L. Ed. 2d 574 (1984); see also Teleprompter

Corp. v. CBS, Inc., 415 U.S. 394, 414, 94 S. Ct. 1129, 39 L. Ed.

2d 415 (1974) (“Detailed regulation of these relationships,

and any ultimate resolution of the many sensitive and

important problems in [the copyright] field, must be left to

Congress.”); Fortnightly Corp. v. United Artists Television, Inc.,

392 U.S. 390, 401, 88 S. Ct. 2084, 20 L. Ed. 2d 1176 (1968)

(Court refused “to render a compromise decision . . . [to]

accommodate various competing considerations of

decline that invitation. That job is for Congress.”). As

recently as last week, the Supreme Court reiterated that “we

defer substantially to Congress” on copyright law, that “we

are not at liberty to second-guess congressional

determinations and policy judgments” regarding copyright

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issues, and that “it is generally for Congress, not the courts,

to decide how best to pursue the Copyright Clause’s

objectives.” Eldred v. Ashcroft, 537 U.S. 186, 123 S. Ct. 769,

772, 782, 785, 154 L. Ed. 2d 683 (2003) (citing Sony Corp., 464

US. at 429, 104 S. Ct. 774, and Stewart v. Abend, 495 US. 207,

230, 110 S. Ct. 1750, 109 L. Ed. 2d 184 (1990)).

Notwithstanding these technological advancements,

then, this Court will not attempt to re-balance the competing

interests among service providers and copyright holders to

address P2P software or “bots” that can roam the Internet

detecting infringing material. As the Supreme Court stated

in Fortnightly, “[t}hat job is for Congress.” 392 U.S. at 401, 88

S. Ct. 2084. To date, Congress has spoken through the text,

structure and purpose of the DMCA, under which, the Court

concludes, RIAA’s subpoeri to Verizon meets the

requirements spelled out in subsection (h) and therefore is

valid.

4. “John Doe” Actions As an Alternative

Verizon maintains that under its construction of the

DMCA, with the subsection (h) subpoena power limited to

service providers under subsection (c), owners would still

have an adequate means to protect their copyrights. Verizon

suggests that as an alternative RIAA may bring a “John

Doe” action in federal court to obtain information

identifying copyright infringers who, under subsection (a) of

the DMCA, transmit infringing material over a service

13 Verizon has not challenged RIAA's subpoena to Verizon on the ground

that it does not meet the notification requirements under subsections

(c)(3)(A) or (h)(2). RIAA provided a notification described in (c)(3)(A),

including the identity of the copyright works infringed, a statement in

good faith that the use of the works is not authorized, and a sworn

declaration that the purpose of the subpoena is to obtain the identity of

the infringer and that the information will only be used to protect rights to

the copyright. See Motion to Enforce, Ex. B.

45a

provider’s network. As Verizon sees it, the copyright owner

would file a complaint against John Doe, the unnamed

infringer, and a third-party subpoena would then be issued

and served on the service provider pursuant to Fed. R. Civ.

P. 45. The service provider would then inform John Doe (its

customer) of the lawsuit. Under this process, Verizon

asserts, there would be protections, both procedural and

substantive, for the user’s rights, and service providers

would have the opportunity to seek to quash the subpoena.

The short answer to Verizon's suggestion is that there is

absolutely nothing in the DMCA or its history to indicate

that Congress contemplated copyright owners utilizing John

Doe actions in federal court to obtain the identity of

apparent infringers, rather than employing the subsection

(h) process specifically designed by Congress to address that

need. Moreover, as Verizon concedes, the burden on service

providers is certainly no greater with a DMCA subpoena

than with a Rule 45 third-party subpoena.

The additional burden on copyright owners, however,

would be considerable, given the effort and expense

associated with pursuing such John Doe suits in court.

Congress has noted the vast extent of copyright piracy over

the Internet, and growing numbers of suits involving

disputes over the sufficiency of allegations of infringement

and other issues would, in turn, likely undermine the

determination of copyright owners to prosecute such

actions. Importantly, the time and delay associated with

filing complaints and pursuing third-party subpoenas in

court would undermine the ability of copyright owners to

act quickly to prevent further infringement of their

copyrights. That is at odds with the design of Congress

through the DMCA, which commands “expeditious”

issuance of and response to subpoenas under subsection (h).

Moreover, Verizon overlooks altogether the burden on the

46a

federal courts from large numbers of such actions. Federal

courts have exclusive jurisdiction over copyright actions,

and considering the extent of Internet copyright piracy could

become inundated with John Doe actions seeking the

identity of copyright infringers. See NBC, Inc. v. Copyright

Royalty Tribunal, 848 F.2d 1289, 1295 (D.C. Cir. 1988) (“the

federal courts . . . have exclusive jurisdiction over actions

‘arising under’ the Copyright Act, such as infringement

actions”). Undoubtedly, the John Doe actions contemplated

by Verizon would be more complex (involving three-party

litigation) and time consuming than occasional enforcement

actions for DMCA subpoenas.

Not only are John Doe actions more burdensome and

less timely, but in several important ways they are less

protective of the rights of service providers and Internet

users than is the section 512(h) process. The DMCA

mandates that a copyright holder fulfill several requirements

under subsection (h) before the holder can obtain

information from the service provider identifying the

infringer. These protections ensure that a service provider

will not be forced to disclose its customer's identifying

information without a reasonable showing that there has

been copyright infringement. Thus, to obtain a subsection

(h) subpoena a copyright owner must have a “good faith

belief that the use of the material in the manner complained

of is not authorized by the copyright owner, its agent, or the

law,” § 512(c)(3)(A)(v), and must provide a “statement that

the information in the notification is accurate, and under

penalty of perjury, that the complaining party is authorized

to act on behalf of the owner of an exclusive right that is

allegedly infringed,” § 512(c)(3)(A)(vi). Moreover, Congress

required a copyright owner to submit

a swom declaration to the effect that the purpose

for which the subpoena is sought is to obtain the

47a

identity of an alleged infringer and that such

inforrnation will only be used for the purpose of

protecting rights under this title.

17 U.S.C. § 512(h)(2)(c). These requirements provide

substantial protection to service providers and _ their

customers against overly aggressive copyright owners and

unwarranted subpoenas. Indeed, they provide greater

threshold protection against issuance of an unsupported

subpoena than is available in the context of a John Doe

action. And, of course, nothing in the DMCA precludes a

service provider from raising non-compliance or other

objections to a subsection (h) subpoena. See, e.g., ALS Scan,

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

(action addressing service provider's resistance to subpoena

for non-compliance with the DMCA).

Given these various protections incorporated into the

DMCA subpoena process,!5 the Court concludes that

14 The DMCA also provides disincentives for false representations under

the Act, making it costly for anyone to seek a subpoena on the basis of

intentional misrepresentations, and thereby further ensuring that

subpoenas will only be used in circumstances of good faith allegations of

Misrepresentations -- Any person who knowingly materially

misrepresents under this section (1) that material or activity is

infringing, or (2) that material or activity was removed or

disabled by mistake or misidentification, shall be liable for any

damages, including costs and attorneys’ fees, incurred by the

alleged infringer . . . or by a service provider, who is injured by

such misrepresentations, as the result of the service provider

relying upon such misrepresentation in removing or disabling

access to the material or activity claimed to be infringing .. ..

17 U.S.C. § 512(f).

15 Indeed, the requirements for obtaining a section 512(h) subpoena are

precisely the type of procedural requirements that other courts have

imposed for subpoenas on service providers to identify anonymous

posters of messages on the Internet. See Doe v. 2TheMart.Com. Inc., 140 F.

48a

Verizon's suggestion that John Doe actions are an adequate

alternative remedy is not convincing. There is nothing in the

DMCA to indicate that Congress intended that result. Such

actions would be unworkable, far too slow, and

uneconomical for copyright holders, and much too

burdensome for the federal courts. Congress did not, in the

Court’s view, contemplate some service providers subject to

the DMCA facing expeditious subsection (h) subpoenas,

while others would only have to provide information

identifying infringers through the slower, more cumbersome

process of a John Doe action. Indeed, Verizon's suggestion

would mean subpoenas under subsection (h) -- if limited to

subsection (c) service providers -- would be delayed by

complex factual issues involving whether a subsection (c)

setting was actually presented, while subpoenas to all other

service providers would be pursuant to even more

burdensome, and slower, John Doe actions. Such a

cumbersome, dual structure is flatly inconsistent with the

“expeditious” subsection (h) subpoena process, and would

run a serious risk of dissuading copyright owners from

seeking the identity of apparent infringers and protecting

their copyrights. That result would be contrary to

Congressional intent as evidenced in the text, structure and

history of the DMCA.

Supp. 2d 1088, 1095 (W.D. Wash. 2001) (party seeking subpoena to service

provider to identify anonymous non-party must show subpoena sought in

“good faith” and that identifying information sought is directly and

materially relevant to core claim and unavailable from any other source);

see also Columbia Ins. Co. v. Seescandy.Com, 185 F.R.D. 573, 578-79 (N.D. Cal.

1999).

16 When the Court asked Verizon's counsel whether John Doe actions

might be so expensive that they would “scare off” copyright owners, he

responded that “[t]here is that possibility” given the protections and

“hoops that have to be gone through under the John Due suits.” Tr. of

Hearing (Oct. 4, 2002) at p. 62.

re ee

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5. The DMCA and the Constitution

A number of possible constitutional challenges to the

subsection (h) subpoena power have been identified by amici

curiae. Verizon, however, does not assert that the subpoena

power in subsection (h), as applied to service providers (like

Verizon) under subsection (a), is unconstitutional; instead,

Verizon merely states that it “raises substantial questions.””

RIAA accordingly has not fully briefed the various

constitutional issues raised by the amici curiae supporting

Verizon. Hence, the Court is without the benefit of full

development of these issues by the parties.

F Unless raised by the parties, a court normally should not

€ entertain statutory or constitutional challenges asserted

solely by amici. See, e.g., A.D. Bedell Wholesale Co. v. Philip

Morris Inc., 263 F.3d 239, 266 (3d Cir. 2001) (“Although the

Cato Institute, amicus curiae for plaintiffs, argues

constitutional claims, new issues raised by an amicus are not

properly before the court in the absence of exceptional

circumstances.”) (quoting General Eng’g Corp. v. Virgin

Islands Water and Power Auth., 805 F.2d 88, 92 (3d Cir. 1986)).

Indeed, in construing the DMCA, the Second Circuit refused

to consider a constitutional challenge briefly addressed by

the defendant in a footnote, although fully examined by an

amicus. See Universal City Studios, Inc. v. Corley, 273 F.3d 429

(2nd Cir. 2001). Without a “properly developed record,” the

court found that the defendant effectively waived the

constitutional challenge: “Although an amicus brief can be

helpful in elaborating issues properly presented by the

parties, it is normally not a method for injecting new issues

17 Verizon devotes only two sentences and a footnote to the constitutional

issues, coniending that the subsection (h) subpoena authority, if broadly

construed, raises substantial Article III (judicial power) and First

Amendment (freedom to engage in anonymous speech) questions. See

Verizon Opp. at p. 4.

50a

.., at least in cases where the parties are competently

represented by counsel.” Id. at 445. Here, because Verizon

is not raising any explicit constitutional challenge to the

DMCA, the Court is wary of considering such issues.'8

Even if the Court were to consider a constitutional

challenge here, it must be noted that any constitutional

problems faced by service providers or their customers

would exist under Verizon's construction of the DMCA as

well. The Court's authority and users’ anonymity are

equally at issue with subsection (c) as with subsection (a),

and the First Amendment interest -- the identity of the user -

- is identical no matter which subsection is invoked.

It is also clear that the First Amendment does not protect

Nation Enters., 471 U.S. 539, 555-60, 105 S. Ct. 2218, 85 L. Ed.

2d 588 (1985); Zacchini v. Scripps- Howard, 433 USS. 562, 574-

78, 97 S. Ct. 2849, 53 L. Ed. 2d 965 (1977). Moreover, the

Supreme Court recently confirmed in Eldred v. Ashcroft that

the proximity of the Copyright Clause and the First

Amendment demonstrates “the Framers’ view [that]

speech principles,” and that copyright serves to promote

First Amendment i¢ -u's as “’the engine of free expression.””

123 S. Ct. at 788 (quoting Harper & Row, 471 USS. at 558, 105

S. Ct. 2218). The Court noted “built-in First Amendment

accommodations” in copyright law, including the distinction

between ideas and expression and the “fair use” doctrine,

which it found “are generally adequate to address” First

Amendment concerns relating to asserted rights to use the

speech of others. Id. at 788-89; see Nihon Keizai Shimbun, Inc.

18 RIAA and Verizon have acknowledged that Verizon may not have

standing to raise a challenge to the subpoena based on the user's alleged

First Amendment or other constitutional interests. The Court need not

address that issue here.

5la

v. Comline Bus. Data, Inc., 166 F.3d 65, 74 (2d Cir. 1999) (“We

have repeatedly rejected First Amendment challenges to

injunctions from copyright infringement on the ground that

First Amendment concerns are protected by and coextensive

with the fair use doctrine.”). Here, of course, the various

protections incorporated into subsection (h), and discussed

supra, further guard against First Amendment concerns.

Nor is this an instance where the anonymity of an

Internet user merits free speech and privacy protections.

Certainly, the Supreme Court has recognized that, in some

situations, the First Amendment protects a speaker's

anonymity. See, e.g., Watchtower Bible & Tract Society of New

York, Inc. v. Village of Stratton, 536 U.S. 150, 122 S. Ct. 2080,

2090, 153 L. Ed. 2d 205 (2002) (municipal ordinance

requiring pamphleteers to disclose names implicates

“anonymity interests” rooted in the First Amendment);

Buckley v. Am. Constitutional Law Foun., Inc., 525 U.S. 182, 119

S. Ct. 636, 142 L. Ed. 2d 599 (1999) (state requirement forcing

petitioners to wear identification badge violated First

Amendment because it infringed on petitioners’ anonymity);

McIntyre v. Ohio Elections Comm., 514 U.S. 334, 115 S. Ct.

1511, 131 L. Ed. 2d 426 (1995) (the right to speak

anonymously “exemplifies the purpose behind the Bill of

Rights, and the First Amendment in particular”). Lower

federal courts have specifically recognized that the First

Amendment may protect an individual’s anonymity on the

Internet. See, e.g., Doe v. 2TheMart.Com, Inc., 140 F. Supp. 2d

at 1097 (“the constitutional rights of Internet users, including

the right to speak anonymously, must be carefully

safeguarded”); ACLU v. Johnson, 4 F. Supp. 2d 1029, 1033

(D.N.M. 1998), affd, 194 F.3d 1149 (10th Cir. 1999)

(upholding First Amendment right to communicate

anonymously over the Internet); ACLU of Georgia v. Miller,

977 F. Supp. 1228, 1230 (N.D. Ga. 1997) (recognizing

constitutional right to communicate anonymously and

52a

pseudonymously on the Internet). The Internet and

Worldwide Web provide an unprecedented electronic

megaphone for the expression of ideas and an unparalleled

opportunity for a national--even international--town square

for expression. See, e.g., Rene v. ACLU, 521 U.S. 844, 853, 117

S. Ct. 2329, 138 L. Ed. 2d 874 (1997) (“Through the use of

chat rooms, any person with a phone line can become a

town crier with a voice that resonates farther than it could

from any soapbox.”).

But neither Verizon nor any amici has suggested that

anonymously offering for downloading more than 600 songs

over the Internet without authorization is protected

expression under the First Amendment.’? To be sure, this is

not a case where Verizon’s customer is anonymously using

the Internet to distribute speeches of Lenin, Biblical

passages, educational materials, or criticisms of the

government--situations in which assertions of First

Amendment rights more plausibly could be made. As the

Supreme Court explained in Watchtower Bible & Tract Society,

the purpose of protecting anonymous expression is to

safeguard those “who support causes anonymously” and

those who “fear economic or official retaliation,” “social

ostracism,” or an unwanted intrusion into “privacy.” 122 S.

Ct. at 2089. The materials RIAA alleges are being infringed

include more than 600 copyrighted recordings by well-

known artists. RIAA has shown that the copyright owners

have not authorized such use; moreover, the fact that these

copyrighted materials were shared over the peer-to-peer

software of KaZaA only reinforces the belief that copyrights

are being infringed. There is no evidence, or even

suggestion, in the record to indicate that downloading or

19 RIAA notes, moreover, that the alleged infringer is not truly

anonymous--Verizon knows the identity.

wae

en —— ———

53a

transmitting these recordings is somehow protected

expression.20

Interestingly, Verizon’s argument that a copyright owner

seeking to obtain information about an alleged infringer

should use a John Doe action undercuts the contention that

the DMCA subpoena process violates the Internet user’s

right to anonymity. The First Amendment problems, if any,

would be the same in either litigation setting, and the user

could assert its rights and objections to either subpoena.?!

Hence, if the John Doe action alternative poses no First

20 The Ninth Circuit has twice upheld injunctions ordering a defendant to

disable its file transferring service and shut down the service, without

finding any First Amendment violation. See A & M Records, Inc. v. Napster,

Inc., 284 F.3d 1091 (9th Cir. 2002); A & M Records, Inc. v. Napster, Inc., 239

F.3d 1004, 1028 (9th Cir. 2001) (“First Amendment concerns in copyright

are allayed by the presence of the fair use doctrine” and “[u]ses of

copyrighted material that are not fair uses are rightfully enjoined”). This

Court, however, is not being asked to enjoin the peer-to-peer software

used here; litigation against KaZaA is proceeding in other courts across

the country. All that is at issue here is the identity of the apparent

infringer using Verizon’s system, and whether the DMCA requires

Verizon to produce that limited information.

21 The amici also challenge the subsection (h) subpoena power on the

ground that under Article III of the Constitution there must be a “case or

controversy” before the Court to provide jurisdiction to issue a subpoena.

Again, Verizon has made it clear that it is not raising an Article III

challenge to the DMCA, but only noting a “policy consideration” relevant

in interpreting the DMCA, and there has been no briefing on this issue by

the parties. See Tr. of Hearing (Oct. 4, 2002) at p. 61. Of course, the

DMCA includes a provision in subsection (h)(6) requiring that the

issuance and enforcement of subpoenas “shall be governed to the greatest

extent practicable by those provisions of the Federal Rules of Civil

Procedure governing the issuance, service, and enforcement of a

subpoena duces tecum.” That protection ensures that service providers

served with subpoenas can resort to the Federal Rules, including Fed. R.

Civ. P. 45, which specifically addresses subpoena enforcement and the

rules for quashing a subpoena.

54a

Amendment issue, the subsection (h) subpoena process does

not either.

The Court does not, however, resolve the constitutional

issues identified by Verizon and several amici. Absent a

clear challenge by Verizon, and full briefing and

development by the parties, it is not appropriate to do so.

But certainly the issues raised do not reveal an obviously

fatal constitutional flaw in the subpoena process available

under the DMCA.”

CONCLUSION

Based on the text and structure of the Digital Millennium

the Act, the Court concludes that the subpoena authority of

section 512(h) applies to all service providers within the

coverage of the Act, including Verizon and other service

providers falling within subsection (a). With copyright

legislation such as the DMCA, “It]he wisdom of Congress’

action . . . is not within [the Court’s] province to second

guess.” Eldred v. Ashcroft, at 790. Therefore, the Court

grants RIAA’s motion to enforce its subpoena, and orders

Verizon to comply with the subpoena. A separate order has

been issued on this date.

22 Arguably, a First Amendment challenge by Verizon would be facial

rather than as applied, and thus it would have to be shown that in

virtually every application the DMCA offends the First Amendment by

requiring the production of the identity of an anonymous user. See United

States v. Salerno, 481 U.S. 739, 745, 107 S. Ct. 2095, 95 L. Ed. 2d 697 (1987).

That is a heavy burden for Verizon to satisfy.

55a

Appendix C

United States District Court,

District of Columbia.

In re: VERIZON INTERNET SERVICES, INC.,

Subpoena Enforcement Matter,

Recording Industry Association of America, Plaintiff,

Verizon Internet Services, Defendant.

No. CIV.A. 03-MS-0040 JDB.

April 24, 2003.

MEMORANDUM OPINION

BATES, District Judge.

Before the Court is the motion of Verizon Internet

Services (“Verizon”) to quash the February 4, 2003 subpoena

served on it by the Recording Industry Association of

America (“RIAA”) pursuant to the Digital Millennium

behalf of copyright owners, RIAA seeks the identity of an

anonymous user of the conduit functions of Verizon’s

Internet service who is alleged to have infringed copyrights

by offering hundreds of songs for downloading over the

Internet.! In an earlier action, this Court rejected Verizon’s

statutory challenges to a similar subpoena, holding that

Verizon’s conduit functions were within the scope of the

subpoena authority of § 512(h) of the DMCA. See In re:

1 RIAA is the industry trade association for sound and music recordings,

and is authorized to enforce the copyrights of its members, who create

and distribute most of the music sold in the United States.

56a

Verizon Internet Services, Inc., Subpeona Enforcernent Matter,

240 F. Supp. 2d 24 (D.D.C. 2003). Verizon now claims that

§ 512(h) violates Article III of the Constitution because it

authorizes federal courts to issue binding process in the

absence of a pending case or controversy, and that § 512(h)

violates the First Amendment rights of Internet users. If the

merits of Verizon's constitutional challenges are rejected by

this Court, Verizon seeks a stay pending appeal of that

ruling, and of the earlier statutory ruling by this Court.

Having considered the parties’ several memoranda,

three hearings, the brief of the United States as intervenor

defending the constitutionality of § 512(h), a number of

amicus briefs, and the entire record herein, the Court denies

Verizon’s motion to quash RIAA’s February 4, 2003

subpoena. The subpoena power authorized under § 512(h)

of the DMCA does not violate the case or controversy

requirement of Article III and does not abridge the First

Amendment rights of Internet users. Moreover, because

Verizon is unable to show irreparable harm or that it is likely

to succeed on an appeal of its constitutional or statutory

challenges, the Court also denies Verizon’s request for a stay

pending appeal.

I. PROCEDURAL HISTORY

This case has followed a somewhat circuitous procedural

path. To begin with, ais is the second subpoena RIAA has

served on Verizon pursuant to the DMCA seeking the

identity of an anonymous Internet user alleged to have

infringed protected copyrights. On July 24, 2002, RIAA

served its first subpoena to obtain the identity of a Verizon

subscriber alleged to have made more than 600 copyrighted

songs available for downloading over the Internet through

2 A temporary stay of 14 days will be entered to enable Verizon to seek a

stay in the Court of Appeals.

57a

peer-to- peer file transfer software provided by KaZaA.

Verizon claimed that because RIAA’s subpoena related to

material transmitted over Verizon’s network -- rather than

stored on it -- it fell outside the scope of the subpoena power

authorized by § 512(h). Verizon read § 512(h) as applying

only in those situations where the infringing material is

physically stored on the service provider’s network. RIAA

contended that the subpoena authority under § 512(h)

ap lied to all service providers under the DMCA, including

Verizon. The parties framed the issue as one of statutory

construction, although Verizon noted that if § 512(h)’s

subpoena authority were construed as applying to all servicz

providers, the statute “raises substantial questions” under

Article III and the First Amendment.

The Court construed the subpoena power in § 512(h) as

applying to all service providers under the DMCA, and

granted RIAA’s motion to enforce the subpoena. See In re:

Verizon Internet Services, Inc., 240 F. Supp. 2d 24 (hereinafter

“First Subpoena Decision”). The Court did not reach the

constitutional arguments, instead deciding the question

strictly on statutory grounds by construing the DMCA’s

language, structure, purpose, and legislative history. As a

result, the Court found the subpoena valid and ordered

Verizon expeditiously to provide RIAA with the identity of

the subscriber alleged to be infringing copyrighted songs.

Verizon appealed that decision, and moved to stay the

Court’s order pending resolution of its appeal.3 In its

motion for a stay, Verizon asserted constitutional challenges

as the primary basis for a stay, claiming that the Court's

construction of § 512(h) raised serious questions regarding

the First Amendment rights of Internet users and presented

3 Pursuant to Fed. R. App. P. 8(a), this Court ordered a temporary stay to

allow the issues to be fully briefed and decided.

58a

a critical issue whether a subpoena could issue under Article

III without an actual “case or controversy” pending in

federal court. RIAA contended that because Verizon had

not raised these issues earlier, it had waived them on appeal.

The Court held a hearing on Verizon’s stay motion.

Meanwhile, however, RIAA served a second subpoena on

Verizon on February 4, 2003. Shortly after the hearing on its

motion to stay the first subpoena, Verizon moved to quash

RIAA’s second subpoena, directly presenting the

constitutional challenges.‘ In an effort to resolve both the

motion to stay on the first subpoena and the constitutional

challenges to the second subpoena, the Court ordered

another round of expedited briefing. Verizon proposed

notifying the two subscribers whose conduct is at issue of

the commencement and status of these actions, and the

nature of RIAA’s allegations of copyright infringement,

which was then done at the Court’s urging. A third hearing

to address Verizon's constitutional challenges to § 512(h)

was held on April 1, 2003. Subsequently, the United States

has moved, and been permitted, to intervene and has

submitted a brief defending the constitutionality of the

DMCA.

The gravamen of Verizon’s statutory challenge to the

first subpoena was that the subpoena power under § 512(h)

should be construed as limited to situations within § 512(c)

where allegedly infringing material is stored on the Internet

service provider’s network. This Court firmly rejected that

view in First Subpoena Decision, 240 F. Supp. 2d 24. The

constitutional challenges now asserted by Verizon in

response to the second RIAA subpoena are, although

4 Because the second subpoena involved the same parties as the first

subpoena and related legal issues, Verizon’s motion to quash was

assigned to this juc.ze with the agreement of both Verizon and RIAA.

59a

substantive and in apparent good faith, somewhat in tension

with the earlier statutory challenge. If Verizon were correct

that § 512(h) should be construed to permit subpoenas only

for subsection (c) service providers -- which it is not --

Verizon’s Article III challenge would nonetheless retain its

full force because such subpoenas would still, under

Verizon’s view, be unconnected to a pending case or

controversy, and the asserted First Amendment concerns

would also remain, albeit focused on the more limited subset

of subscribers of subsection (c) service providers. Given this

tensien, one might ask why the constitutional challenges

were not more fully pressed by Verizon in the first subpoena

litigation. Be that as it may, those issues are now squarely

before the Court in this case.5

II. SECTION 512(h) DOES NOT VIOLATE ARTICLE III

Verizon contends that § 512(h) violates Article III of the

Constitution because it authorizes federal courts to issue

subpoenas in the absence of a pending case or controversy.

Citing cases from the eighteenth and nineteenth centuries,

Verizon argues that federal judges can neither exercise

authority outside the context of an actual case or controversy

nor undertake non-judicial functions. See Hayburn’s Case, 2

U.S. (2 Dall.) 408, 1 L. Ed. 436 (1792); United States v. Ferreira,

54 U.S. 40, 13 How. 40, 14 L. Ed. 40 (1851). Relying on United

States Catholic Conference v. Abortion Rights Mobilization, Inc.,

487 US. 72, 108 S. Ct. 2268, 101 L. Ed. 2d 69 (1988), and

Houston Business Journal, Inc. v. Office of the Comptroller of the

Currency, 86 F.3d 1208 (D.C. Cir. 1996), Verizon also argues

more specifically that “the power to issue subpoenas exists

only in the context of a case that is properly pending before

> Because the First Subpoena Decision provided an extensive overview of §

512 of the DMCA, the Court will not repeat that explanation here, and

instead incorporates that background discussion by reference.

60a

a federal court.” Verizon’s Br. Supp. Mot. Quash Feb. 4,

2003 Subpoena at 12.°

Verizon's arguments, although intriguing, are ultimately

not persuasive. No doubt the justices of the Supreme Court

have indicated that the federal courts are properly confined

to the exercise of “judicial power.” See Hayburn’s Case, 2 US.

at 410 n.*, 2 Dall. 409; Ferreira, 54 U.S. at 48, 13 How. 40.’

And, more recently, the Supreme Court has noted that

“(flederal judicial power itself extends only to adjudication

of cases and controversies and it is natural that its

investigative powers should be jealously confined to these

ends.” United States v. Morton Salt Co., 338 U.S. 632, 641-642,

70 S. Ct. 357, 94 L. Ed. 401 (1950). But upon examination, it

is clear that the § 512(h) subpoena authorization does not

represent an innovation that is inconsistent with the limited

role of the judiciary as it has traditionally been understood

in our constitutional regime.

6 To be clear, Verizon does not contend that the instant proceeding to

quash a subpoena is not a case or controversy, rather, Verizon contends

that the issuance of the subpoena under § 512(h) does not constitute, and

was not conducted in the context of, a case or controversy. It is well-

established that courts may hear an action to enforce or quash a subpoena

even where the subpoena was not issued in connection with a case

pending in the federal courts. See ICC v. Brimson, 154 U.S. 447, 490, 14 S.

Ct. 1125, 38 L. Ed. 1047 (1894) (courts may aid inquiries before the ICC);

United States v. Hill, 694 F.2d 258, 269 (D.C. Cir. 1982) (court has

jurisdiction to enforce investigatory subpoenas issued by the Department

of Energy).

7 The Supreme Court itself did not reach the constitutional issue in

Hayburn’s Case, but the opinions of several Circuit Courts (on which

certain Justices of the Supreme Court sat) “were reported in the margins

of the Court's decision in that case, and have since been taken to reflect a

proper understanding of the role of the Judiciary under the Constitution.”

Morrison v. Olson, 487 U.S. 654, 678 n. 15, 108 S. Ct. 2597, 101 L. Ed. 2d 569

(1988).

6la

As an initial matter, the clerk’s issuance of a § 512(h)

subpoena does not involve either the exercise of judicial

power or the exercise by federal judges of Article { or Article

II-type investigatory power. Indeed, the issuance of a

§ 512(h) subpoena cannot properly be considered an act of

“the court.” Subsection (h)(4) provides that “[i]f the

notification [of claimed infringement] filed satisfies the

provisions of subsection (c)(3)(A), the proposed subpoena is

in proper form, and the accompanying declaration is

properly executed, the clerk shall expeditiously issue and

sign the proposed subpoena and return it to the requester

for delivery to the service provider.” 17 U.S.C. § 512(h)(4)

(emphasis added). Under this subsection, the clerk exercises

no discretion; if the requirements are met, the subpoena

must be issued. The clerk, in other words, executes a

quintessentially ministerial duty. See Mississippi v. Johnson,

71 US. (4 Wall.) 475, 498, 18 L. Ed. 437 (1866) (“A ministerial

duty ... is one in respect to which nothing is left to

discretion. It is a simple, definite duty, arising under

conditions admitted or proved to exist, and imposed by

law.”); Nealon v. Davis, 18 F.2d 175, 176 (D.C. Cir. 1927) (“A

ministerial act is one which a person performs in a given

state of facts, in a prescribed manner, in obedience to the

mandate of legal authority, without regard to, or the exercise

of his own judgment upon the propriety of the act being

done.” (citation and internal quotation marks omitted)). In

fact, the legislative history of § 512(h) indicates that

Congress specifically intended the issuance of the subpoena

to “be a ministerial function.” S. Rep. No. 105-190, at 51

(1998).

Stretching back to the days of Chief Justice Marshall, the

Supreme Court has repeatedly distinguished between

actions that are ministerial in nature and those that

constitute an exercise of judicial, legislative, or discretionary

executive power. See, e.g., Custiss v. Georgetown & Alexandria

62a

Turnpike Co., 6 Cranch 233, 10 U.S. 233, 237, 3 L. Ed. 209

(1810) (Marshall, C.J.) (clerk’s act of recording an inquisition

signed by marshal and jurymen is a “ministerial act which

the law directs the clerk to perform ... and requires no

exercise of judicial functions”); Elliot v. Lessee of William

Peirsol, 26 U.S. 328, 341, 1 Pet. 328, 7 L. Ed. 164 (1828) (in

making and recording a certificate of acknowledgment of a

deed, clerk of court “acted ministerially, and not judicially”);

Ex parte Virginia, 100 U.S. 339, 348, 10 Otto 339, 25 L. Ed. 676

(1879) (selection of jurors “surely is not a judicial act” but “is

merely a ministerial act”); Central Loan & Trust Co. v.

Campbell Comm'n Co., 173 U.S. 84, 95, 19 S. Ct. 346, 43 L. Ed.

623 (1899) (probate judge’s grant of an order for attachment

did “not involve the discharge of a judicial function but

merely the performance of a ministerial duty”); ICC v.

Chicago Great W. Ry. Co., 209 U.S. 108, 117-18, 28 S. Ct. 493, 52

L. Ed. 705 (1908) (positing distinction between duties that

are “ministerial, and therefore such as may legally be

imposed upon a ministerial body” and those that are

“legislative, and therefore, under the Federal Constitution, a

matter for congressional action”); Wells v. Roper, 246 U.S.

335, 338, 38 S. Ct. 317, 62 L. Ed. 755 (1918) (decision by

Postmaster General and his deputy to cancel contract “was

executive in character, not ministerial, and required an

exercise of official discretion”); District of Columbia Court of

Appeals v. Feldman, 460 U.S. 462, 479, 103 S. Ct. 1303, 75 L. Ed.

2d 206 (1983) (District of Columbia Court of Appeals acted

judicially, not ministerially, in considering petitions for

waiver of bar admission requirements).8 Chief Justice

Marshall specifically noted in Custiss that “the legislature

8 See also Dornan v. Sanchez, 978 F. Supp. 1315, 1326 (C.D. Cal. 1997)

(court’s issuance of subpoenas in connection with election contest to be

adjudicated by House of Representatives is a “ministerial” function that

does not require the court to “exercise its own judicial power”).

63a

may direct the clerk of a court to perform a specified service,

without making his act the act of the court.” 10 U.S. at 236, 6

Cranch 233.

Here, the fact that Congress has directed an employee of

the judicial branch to carry out a specific non-discretionary

function neither implicates Article III judicial power nor

involves federal judges in an investigation of the sort

properly relegated to one of the other branches. In a real-

world sense, no Article III judge takes any action with

respect to a § 512(h) subpoena until the copyright holder

moves to enforce the subpoena or the service provider

moves to quash it-at which time there is a concrete

controversy sufficient to confer jurisdiction under Article III

of the Constitution.

Verizon objects to this line of analysis, arguing that a

§ 512(h) subpoena is issued in the name of the district court

and thus should be treated as an act of the court. And,

indeed, it is true that because the procedures in Fed.R.Civ.P.

45 governing enforcement of a subpoena duces tecum are

applicable to a § 512(h) subpoena, see 17 U.S.C. § 512(h)(6), a

service provider's failure to comply with a § 512(h)

subpoena could, like a failure to comply with a Rule 45

subpoena, be construed as a violation of a court order,

providing a basis for contempt sanctions. See Waste

Conversion, Inc. v. Rollins Envtl. Servs. (NJ). Inc., 893 F.2d 605,

608 (3d Cir. 1990) (en banc) (assuming “for purposes of this

appeal,” that failure to comply with a Rule 45 subpoena for

testimony could subject a person to criminal contempt);

Fisher v. Marubeni Cotton Corp., 526 F.2d 1338, 1340 (8th Cir.

1975) (“A subpoena is a lawfully issued mandate of the court

issued by the clerk thereof.”); Fed. R. Civ. P. 45 advisory

committee notes for 1991 amendment (“Although the

subpoena is in a sense the command of the attorney who

completes the form, defiance of a subpoena is nevertheless

64a

an act in defiance of a court order and exposes the defiant

witness to contempt sanctions.”). But even in the Rule 45

context, courts recognize that a subpoena issued upon

express order of a judge and a subpoena issued by the clerk

of the court are not equivalent. See Waste Conversion, 893

F.2d at 608 (“A subpoena, obtainable as of course from the

Clerk of the Court, is not of the same order as one issued by

a judicial officer in the resolution of a specific dispute.”);

Daval Steel Prods. v. M/V Fakredine, 951 F.2d 1357, 1364 (2d

Cir. 1991) (same); Fed. R. Civ. P. 45 advisory committee

notes for 1991 amendment (“But, because the command of

the subpoena is not in fact one uttered by a judicial officer,

contempt should be very sparingly applied when the

nonparty witness has been overborne by a party or

attosney.”); see also Doe v. DiGenova, 779 F.2d 74, 85 (D.C. Cir.

1985) (grand jury subpoena is not an “order of a court”

unless specifically approved by a court). The better view

here is that because the issuance of a § 512(h) subpoena is a

ministerial task accomplished without judicial involvement,

it does not implicate Article Ill judicial power or improperly

place federal judges in an investigatory role.

In any event, assuming that the issuance of a § 512(h)

subpoena can be conceptualized as a judicial act, Verizon's

challenge still fails. In the first place, § 512(h) is by no means

as unique as Verizon claims. Congress has enacted several

provisions that specifically authorize the clerk of the district

court to issue subpoenas despite the absence of a pending

case or controversy in the federal courts. See, e.g.,2 USC. §

388 (subpoenas for depositions in connection with

proceedings in the House of Representatives); 35 U.S.C. § 24

(subpoenas for evidence to be used in connection with

proceedings in Patent and Trademark Office); 45 U.S.C.

§ 157(h) (subpoenas at the request of arbitrators under the

Railway Labor Act); 7 U.S.C. § 2354(a) (subpoenas for

evidence to be used in connection with proceedings in Plant

65a

Variety Protection Office). Moreover, these provisions are

not recent innovations but rather were firmly established by

the time that § 512(h) was enacted in 1998. See Dornan, 978 F.

Supp. at 1319 (noting that precursor to 2 U.S.C. § 388 was

enacted in 1798); Act of July 8, 1870, ch. 230, § 44, 16 Stat. 204

(original source of 35 U.S.C. § 24); Railway Labor Act, chi.

347, § 7, 44 Stat. 577 (1926) (original source of 45 U.S.C. §

157(h)); Pub.L. 91-577, tit. 1, § 24, 84 Stat. 1544 (1970) (original

source of 7 U.S.C. § 2354(a)).

But even setting aside these particular provisions, it is

clear that “federal courts and judges have long performed a

variety of functions that . . . do not necessarily or directly

involve adversarial proceedings within a trial or appellate

court.” Morrison, 487 U.S. at 681 n. 20, 108 S. Ct. 2597; see also

United States v. Reagan, 453 F.2d 165, 173 n.4 (6th Cir. 1971)

(“The invocation of judicial power prior to formal charges

being made or before filing suit is indeed a common practice

in our jurisprudence.”). In the criminal context, for example,

courts issue warrants, see Fed. R. Crim. P. 41, and review

applications for wire taps, see 18 U.S.C. §§ 2516, 2518, “both

of which may require a court to consider the nature and

scope of criminal investigations on the basis of evidence

submitted in an ex parte proceeding.” Morrison, 487 US. at

681 n.20, 108 S. Ct. 2597. Courts also assist grand juries in

their investigative function by compelling the testimony of

witnesses, despite the absence of a traditional adversarial

proceeding. See id.? And Congress has authorized district

9 Verizon baldly asserts that the § 512(h) subpoena context cannot “be

analogized to the textually assigned judicial roles of checking Executive

power in grand jury investigations and applications for search warrants.”

See Verizon’s Reply Br. Supp. Mot. Quash at 2 n.3 (citing U.S. Const.

amends. IV & V). But the proposition that in these settings courts serve to

check Executive power does not undermine the overarching fact that the

Constitution acknowledges roles for the judiciary outside the context of

a classic case or controversy.

66a

courts to require testimony or other evidence for use in a

foreign tribunal, even where no proceeding is yet pending in

that forum. See 28 U.S.C. § 1782(a); In re: Letter Rogatory, 42

F.3d 308, 310 (5th Cir. 1995) ( “Congress abrogated the

requirement that the foreign litigation actually be pending

before relief could be had under § 1782.”).!°

In the civil context, perhaps the most deeply rooted

analogue to § 512(h) is Fed. R. Civ. P. 27(a). That provision

reflects the traditional powers of the courts at equity dating

from even before the adoption of the Constitution, see

Arizona v. California, 292 U.S. 341, 347, 54S. Ct. 735, 78 L. Ed.

1298 (1934), and allows a federal court to authorize a person

to perpetuate testimony by deposition before an action is

filed where doing so would “prevent a failure or delay of

justice.” Fed. R. Civ. P. 27(a)(3). In order to obtain a Rule

27(a) order, the petitioner seeking testimony must show

1, that the petitioner expects to be a party to an

action cognizable in a court of the United States

but is presently unable to bring it or cause it to

be brought, 2, the subject matter of the expected

action and the petitioner’s interest therein, 3, the

facts which the petitioner desires to establish by

the proposed testimony and the reasons for

desiring to perpetuate it, 4, the names or a

description of the persons the petitioner expects

will be adverse parties and their addresses so far

as known, and 5, the names and addresses of the

persons to be examined and the substance of the

testimony which the petitioner expects to elicit

from each.

10 Moreover, as the United States points out, in the § 1782 setting it is

unlikely there will ever be an underlying claim within federal court

jurisdiction because the proceeding in the foreign tribunal arises under

foreign, not American, law. See Br. Intervenor United States at 8.

nee a eee ee

67a

Fed. R. Civ. P. 27(a)(1).

Notably, the requirements for obtaining a § 512(h)

subpoena are similarly rigorous. A copyright owner (or a

person authorized to act on the owner's behalf) must present

to the clerk a proposed subpoena, “a sworn declaration to

the effect that the purpose for which the subpoena is sought

is to obtain the identity of an alleged infringer and that such

information will only be used for the purpose of protecting

rights under [Title 17],” and a copy of the notification of

claimed infringement. 17 U.S.C. § 512(h)(1), (2). This

notification, in turn, must include “substantially the

following”:

(i) A physical or electronic signature of a person

authorized to act on behalf of the owner of an

exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work

claimed to have been infringed, or, if multiple

copyrighted works at a single online site are

covered by a single notification, a representative

list of such works at that site.

(iii) Identification of the material that is claimed

to be infringing or to be the subject of infringing

activity and that is to be removed or access to

which is to be disabled, and information

reasonably sufficient to permit the service

provider to locate the material.

(iv) Information reasonably sufficient to permit

the service provider to contact the complaining

party, such as an address, telephone number,

and, if available, an electronic mail address at

which the complaining party may be contacted.

68a

(v) A statement that the complaining party has a

good faith belief that use of the material in the

manner complained of is not authorized by the

(vi) A statement that the information in the

notification is accurate, and under penalty of

perjury, that the complaining party is authorized

to act on behalf of the owner of an exclusive

right that is allegedly infringed.

Id. § 512(c)(3). Thus, under both Rule 27(a) and § 512(h),

private parties may avail themselves of judicial machinery to

obtain information prior to the filing of a complaint -- but

only if they satisfy a specific set of criteria and identify with

particularity the information they seek to compel.

For its part, Verizon argues vigorously that Rule 27(a) is

not sufficiently analogous to § 512(h) to be instructive.

Primarily, Verizon contends that Rule 27(a) is distinguished

by its requirement for a clear allegation of intent to file a

lawsuit. See 8 Charles A. Wright, Arthur R. Miller, &

Richard L. Marcus, Federal Practice and Procedure § 2072

(2d ed. 1994). Under § 512(h), Verizon points out, the

subpoena application need not even come from the

bring a lawsuit. In addition, Verizon argues, Rule 27(a) does

not allow actual discovery but only the preservation of

evidence where necessary, see Penn Mut. Life Ins. Co. v.

United States, 68 F.3d 1371, 1376 (D.C. Cir. 1995), and allows

the adverse party the opportunity to contest the petition to

perpetuate testimony, see Fed. R. Civ. P. 27(a)(2).

These differences, however, are neither as substantial -

nor as consequential as Verizon contends. First, although an

entity seeking a subpoena under § 512(h) need not state that

it expects to be a party to an action cognizable in federal

<——-. >,

69a

court, it does have to make a sworn statement of good faith

belief that a copyright is being used in an unauthorized

manner--a statement largely to the effect that a copyright

action cognizable in federal court could be asserted (if not by

the party seeking the subpoena then by its principal, the

a prerequisite to court action a significant showing as to the

existence of a breach or violation into which the court could

ultimately be drawn. Moreover, in neither the Rule 27(a)

nor the § 512(h) setting can the court be certain that a judicial

action will ever be filed. See Penn Mut., 68 F.3d at 1374 (“[A]

party need not demonstrate that litigation is an absolute

certainty in order to perpetuate testimony pursuant to Rule

27(a).”).

With respect to Verizon's distinction between discovery

and preservation of evidence under Rule 27(2), it is

undisputed that some service providers (although not

Verizon) might log only temporarily the identifying

information sought on a § 512(h) subpoena. See Tr. of April

1, 2003, Hearing at 14-15; Declaration of Frank Creighton

16. Hence, § 512(h), like Rule 27(a), provides a method for

preserving, not merely discovering, information essential to

a potential lawsuit. Also lacking in merit is Verizon's

argument that Rule 27(a) is distinguished by the possibility

of adversarial proceedings contesting the petition. The

alleged infringer may receive no notice of a § 512(h)

subpoena before his identity is released, but the entity

subpoenaed (the service provider) does have the

opportunity to contest the subpoena in federal court before

it is enforced. See, e.g., ALS Scan, Inc. v. RemarQ Communities,

Inc., 239 F.3d 619 (4th Cir. 2001) (action addressing service

provider’s resistance to DMCA subpoena). In other words, §

512(h) does not authorize an entirely ex parte form of judicial

compulsion.

70a

Overall then, despite Verizon’s objections, Rule 27(a)

provides a compelling precedent for judicial compulsion of

information outside the context of a pending case or

controversy. Furthermore, taking Rule 27(a) together with

the other analogues discussed above, there is ample basis for

the Court to conclude that the role assigned to the clerk of

the court in § 512(h) is countenanced by the Constitution.

Notwithstanding Verizon’s contentions, United States

Catholic Conference v. Abortion Rights Mobilization, Inc., 487

USS. 72, 108 S. Ct. 2268, 101 L. Ed. 2d 69 (1988), and Houston

Business Journal, Inc. v. Office of the Comptroller of the Currency,

86 F.3d 1208 (D.C. Cir. 1996), do not undermine this

conclusion. In Catholic Conference, the Supreme Court held

that where a district court lacks subject matter jurisdiction

over an action, it also lacks power to issue a contempt

citation for failure to comply with a subpoena issued in

connection with that action. 487 U.S. at 80, 108 S. Ct. 2268.

In Houston Business Journal, the D.C. Circuit held that a

district court lacks power to issue a subpoena when the

underlying action is asserted in state, not federal, court. 86

F.3d at 1213.

Importantly, in both Catholic Conference and Houston

Business Journal, the only conceivable source for the district

court's jurisdiction to issue a subpoena was a pending case

or controversy; it was the absence of a sound federal case or

controversy that was thus fatai -o the validity of the

subpoenas in question. Here, in contrast, Congress has

expressly provided the clerk of the court with the authority

to issue § 512(h) subpoenas; thus the clerk need not draw

upon the powers arising from jurisdiction over a pending

case or controversy. Section 512(h) accordingly presents a

situation neither expressly contemplated nor ruled out by

the holdings in Catholic Conference and Houston Business

Journal. Indeed, the D.C. Circuit implicitly recognized in

71a

Houston Business Journal that in settings such as Rule 27(a)

the federal courts’ subpoena power may properly be

asserted in the absence of subject matter jurisdiction over an

underlying action. See 86 F.3d at 1213.

Verizon seeks to bolster its position by arguing that §

512(h) offends the policy concerns that underlie the case-or-

controversy requirement. According to Verizon, this

requirement “ensures both that the judiciary does not take

on non-adjudicatory tasks and that neither Congress nor the

Executive attempts to foist non-judicial duties on the Article

Ill courts.” Verizon's Br. Supp. Mot. Quash at 5 (emphasis

omitted). Duties that are inconsistent with the judicial

function, Verizon contends, “undermine public confidence

in the independence and impartiality of the judiciary and

take the courts’ resources away from their primary role.” Id.

By putting the judiciary in the role of the copyright holder’s

“investigator,” Verizon maintains, § 512(h) implic ‘es both

of these concerns.

The Court does not agree. In Morrison v. Olson, the

Supreme Court identified two principal concerns underlying

the general rule, derived from the case-or-controversy

requirement, that “executive or administrative duties of a

nonjudicial nature may not be imposed on judges holding

office under Art. III of the Constitution.’”” 487 U.S. at 677,

108 S. Ct. 2597 (quoting Buckley v. Valeo, 424 U.S. 1, 123, 96 S.

Ct. 612, 46 L. Ed. 2d 659 (1976)). First, the rule “help[s]

ensure the independence of the Judicial Branch”; second, it

“prevent[s] the Judiciary from encroaching into areas

reserved for other branches.” Id. at 678, 108 S. Ct. 2597.

Neither of these concerns is implicated here. Verizon

does not appear to be arguing that the second of these

concerns is threatened and, in fact, it is clear enough that the

activity under § 512(h) poses no danger of encroachment or

aggrandizement. Under § 512(h), the clerk carries out a

72a

nondiscretionary duty that allows one private party to

retrieve information from another private party. This rather

passive, ministerial function by court personnel in no way

resembles or impedes upon the authority of the Executive

and Legislative Branches to pursue active investigation of

possible civil or criminal wrongdoing. As the Supreme

Court has noted, the “separation of powers ‘left to each

[Branch] power to exercise, in some respects, functions in

their nature executive, legislative and judicial.’” Mistretta v.

United States, 488 U.S. 361, 386, 109 S. Ct. 647, 102 L. Ed. 2d

714 (1989) (quoting Myers v. United States, 272 U.S. 52, 291, 47

S. Ct. 21 (1926) (Brandeis, J., dissenting)). Here, the minimal

role of court personnel in issuing a § 512(h) subpoena “does

not pose a sufficient threat of judicial intrusion into matters

that are more properly within the Executive’s [or

Legislature’s] authority to require that the Act be invalidated

as inconsistent with Article III.” Morrison, 487 U.S. at 683,

108 S. Ct. 2597.11

With respect to the first concern elucidated in Morrison,

there is simply no basis to conclude that § 512(h)

undermines the independence or institutional integrity of

the Judicial Branch. Under § 512(h), the district court does

not take sides in the copyright holder’s request for the

alleged infringer’s name, but rather, through the clerk,

serves as a passive, neutral instrument facilitating the

attempt to retrieve the name. Furthermore, an Article Ill

judge does not by virtue of the clerk’s action become in any

way invested in either the request for the alleged infringer’s

11 To the extent that a district court issuing a § 512(h) subpoena is

properly understood to be exercising nothing other than a ministerial

function, it is worth noting that the Supreme Court in Morrison held that

the assumption of “essentially ministerial” powers by a special court

under the Ethics in Government Act of 1978 did not impermissibly

trespass upon the authority of the Executive Branch. Id. at 681, 108 S. Ct.

2597.

~~: ST ss ee 2 ee Ss ~~

73a

name or the potential copyright infringement case. The

judge will still be able to approach any dispute over the

information retrieval or the underlying copyright

infringement in an entirely objective, unbiased fashion.

In short, given that the clerk only, and not a federal

judge, issues a subpoena, § 512(h) does not “pose[ ] any

threat to the ‘impartial and independent federal adjudication

of claims within the judicial power of the United States.’ “

Id. at 683, 108 S. Ct. 2597 (quoting Commodity Futures Trading

Comm'n v. Schor, 478 U.S. 833, 850, 106 S. Ct. 3245, 92 L. Ed.

2d 675 (1986)). Any possible public perception that federal

judges are being enlisted by copyright holders ex parte to

investigate possible infringement would be based upon a

complete misapprehension of how § 512(h) actually

operates, and thus cannot provide a basis for striking down

the provision.

There may be some merit, albeit quite limited, to

Verizon’s argument that § 512(h) foists a burden upon the

Article III branch that could impede the judiciary’s ability to

perform its primary function--adjudication. Although no

federal judge need allocate his or her time to issuing § 512(h)

subpoenas, if, as Verizon hypothesizes, copyright holders

start to present the clerks of the federal courts with tens of

thousands of subpoena requests, some strain on the

administrative resources of the judicial branch may result.

But to date, that concern is entirely speculative, as no such

barrage of requests has occurred. The statutory

requirements for seeking a subpoena under § 512(h) serve, to

some extent, to curtail the threat. Morever, Congress could

ameliorate any additional burden on the courts by providing

additional funding or resources. Verizon's challenge based

on limited resources of the judiciary therefore cannot carry

the day at this time.

74a

In sum, § 512(h) does not place the Article II branch in a

role inconsistent with that accorded to it under the

Constitution. To the extent that the power of the judiciary is

even implicated by the issuance of a subpoena under

§ 512(h), which assigns only a ministerial function to the

clerk of the court, there are abundant analogues both in the

criminal and civil contexts for judicial action in the absence

of a pending federal case or controversy, including the close

parallel of Rule 27.2 And whatever authority is granted

under § 512(h) presents neither a danger of encroachment

nor some other threat to the institutional integrity and

independence of the judiciary. Accordingly, and in light of

the reluctance of the federal courts to declare an Act of

12 Because the Court concludes that § 512(h) is constitutional on the

grounds that it involves only a ministerial function by judicial personnel

and is consonant with the role that federal courts have long played in

other settings, the Court need not reach an alternate argument advanced

by RIAA and the United States--that a case or controversy sufficient to

provide a jurisdictional basis for the issuance of a subpoena inheres in the

dispute between the copyright holder and the service provider over

disclosing the alleged infringer’s name. The Court notes, however, that

when requesting a subpoena from the clerk of the court, a copyright

holder need not assert that a disagreement over whether to provide the

alleged infringer’s name has emerged or will emerge. See 17 U.S.C.

§ 512(h)(1), (2). Indeed, the § 5i2(h) subpoena may constitute the

conceivably the service provider will have no objections to disclosing the

name (although, in this particular case, RIAA did make a pre-subpoena

request for the name and Verizon did object). Thus, at the time of

issuance, a § 512(h) subpoena will not necessarily be tethered to a present

or even anticipated “adversary proceeding, involving a real, not a

hypothetical, controversy” over providing the name. Nashville,

Chattanooga & St. Louis Ry. v. Wallace, 288 U.S. 249, 259, 53 S. Ct. 345, 77 L.

Ed. 730 (1933). Section § 512(h) is therefore not, as RIAA and the United

States contend, analogous to 29 U.S.C. § 1132(c)(1), which allows an

ERISA beneficiary to bring a civil action against a plan administrator for

information only after the administrator has failed or refused to comply

with a request for the information.

75a

Congress unconstitutional, see Mistretta, 488 U.S. at 384, 109

S. Ct. 647,13 and the substantial deference owed to Congress

on copyright matters, see Eldred v. Ashcroft, 537 U.S. 186, 123

S. Ct. 769, 785, 788, 790, 154 L. Ed. 2d 683 (2003), Verizon’s

contention that § 512(h) is unconstitutional must fail.

III. SECTION 512(h) DOES NOT VIOLATE THE FIRST

AMENDMENT

Verizon also contends that the subpoena authority in

512(h) violates the First Amendment rights of Internet users

-- by piercing their anonymity -- both because it does not

provide sufficient procedural protection for expressive and

associational rights and because it is overbroad and sweeps

in protected expression. Although these are certainly

important considerations, the Court concludes that § 512(h)

does not offend the First Amendment.

13 Verizon cites Justice Scalia’s dissenting opinion in Morrison for the

proposition that deference is not owed to Congress in assessing the

constitutionality of a statute where separation of powers issues are at

stake. But one of the factors motivating Justice Scalia’s conclusion that

deference was unwarranted in Morrison was the fact that, in that case, the

“political branches [were] ... in disagreement” as to the constitutionality of

the statute at issue, and thus neither branch could “be presumed correct.”

Morrison, 487 U.S. at 705, 108 S. Ct. 2597 (Scalia, J., dissenting). Here, of

course, the Executive Branch has now intervened in this case to defend the

constitutionality of the statute, and hence the political branches are in full

accord. Moreover, in Mistretta, which followed Morrison and involved

separation of powers issues concerning the independence and integrity of

the judiciary, the Supreme Court stated unequivocally: ““When this Court

is asked to invalidate a statutory provision that has been approved by

both Houses of the Congress and signed by the President, particularly an

Act of Congress that confronts a deeply vexing national problem, it

should only do so for the most compelling constitutional reasons.’” 488

USS. at 384, 109 S. Ct. 647 (quoting Bowsher v. Synar, 478 U.S. 714, 736, 106

S. Ct. 3181, 92 L. Ed. 2d 583 (1986) (opinion concurring in judgment)).

76a

A. Verizon Has Standing to Assert the First

Amendment Rights of its Subscribers

A “plaintiff generally must assert his own legal rights

and interests, and cannot rest his claim to relief on the legal

rights and interests of third parties.” Warth v. Seldin, 422

US. 490, 499, 95 S. Ct. 2197, 45 L. Ed. 2d 343 (1975). This

rule prevents “premature interpretations of statutes in areas

where their constitutional application might be cloudy” and

“assures the court that the issues before it will be concrete

and sharply presented.” Sec’y of State of Maryland v. Joseph H.

Munson Co., 467 U.S. 947, 955, 104 S. Ct. 2839, 81 L. Ed. 2d

786 (1984). The Supreme Court “has altered its traditional

rules of standing to permit -- in the First Amendment area --

‘attacks on overly broad statutes with no requirement that

the person making the attack demonstrate that his own

conduct could not be regulated by a statute drawn with the

requisite narrow specificity.’” Broadrick v. Oklahoma, 413 U.S.

601, 612, 93 S. Ct. 2908, 37 L. Ed. 2d 830 (1973) (quoting

Dombrowski v. Pfister, 380 U.S. 479, 486, 85 S. Ct. 1116, 14 L.

Ed. 2d 22 (1965)). As the Supreme Court stated in Broadrick:

Litigants, therefore, are permitted to challenge a

statute not because their own rights of free

expression are violated, but because of a judicial

prediction or assumption that the statute’s very

existence may cause others not before the court

14 Although RIAA does not directly challenge Verizon's standing to assert

the First Amendment rights of its subscribers, the Court nonetheless must

determine whether Verizon has standing to bring these claims. “The

federal courts are under an independent obligation to examine their own

jurisdiction, and standing ‘is perhaps the most important of [the

jurisdictional] doctrines.” FW/PBS, Inc. v. Dallas, 493 U.S. 215, 231, 110 S.

Ct. 596, 107 L. Ed. 2d 603 (1990) (quoting Allen v. Wright, 468 U.S. 737, 750,

104 S. Ct. 3315, 82 L. Ed. 2d 556 (1984)).

77a

to refrain from constitutionally protected speech

or expression.

Id.; accord Joseph H. Munson Co., 467 U.S. at 956, 104 S. Ct.

2839 (party may assert First Amendment overbreadth

challenge “of another without regard to the ability of the

other to assert his own claim”). Thus, even though

Verizon’s two subscribers here could arguably assert their

own rights,5 Verizon nonetheless may assert a First

Amendment challenge on their behalf.

Although Verizon’s First Amendment rights are not

directly implicated by RIAA’s_ subpoenas, “[flacial

challenges to overly broad statutes are allowed not primarily

for the benefit of the litigant, but for the benefit of society --

to prevent the statute from chilling the First Amendment

rights of other parties not before the court.” Joseph H.

Munson Co., 467 U.S. at 958, 104 S. Ct. 2839.

Even where a First Amendment challenge could

be brought by one actually engaged in protected

activity, there is a possibility that, rather than

risk punishment for his conduct in challenging

the statute, he will refrain from engaging further

in the protected activity. Society as a whole then

would be the loser. Thus, when there is a

danger of chilling free speech, the concern that

constitutional adjudication be avoided whenever

possible may be outweighed by society’s interest

in having the statute challenged.

15 The alleged infringers could assert their own First Amendment rights,

while still protecting their anonymity, as “John Doe” litigants. Verizon has

now notified both subscribers of RIAA’s subpoenas and allegations of

EEE eee rel

‘

78a

Id. at 956, 104 S. Ct. 2839. A plaintiff's “ability to serve that

function has nothing to do with whether or not its own First

Amendment rights are at stake.” Id. at 958, 104S. Ct. 2839.

Verizon is, moreover, an adequate advocate to assert the

First Amendment rights of its subscribers. The relationship

between an Internet service provider and its subscribers is

the type of relationship cuurts have found will ensure that

issues will be “concrete and sharply presented.” Verizon

has a vested interest in vigorously protecting its subscribers’

First Amendment rights, because a failure to do so could

affect Verizon's ability to maintain and broaden its client

base. The Supreme Court has recognized third-party

standing in similar business/client relationships. See

Virginia v. American Booksellers Assoc., 484 U.S. 383, 392-93,

108 S. Ct. 636, 98 L. Ed. 2d 782 (1988) (bookstores may raise

First Amendment rights on behalf of booksellers); joseph H.

Munson Co., 467 U.S. at 958, 104 S. Ct. 2839 (professional

fundraiser may assert First Amendment rights of its client

charities); Dep’t of Labor v. Triplett, 494 U.S. 715, 720, 110 S.

Ct. 1428, 108 L. Ed. 2d 701 (1990) (“A restriction upon the

fees a lawyer may charge that deprives the lawyer's

prospective client of a due process right to obtain legal

representation falls squarely within this principle.”); Craig v.

Boren, 429 U.S. 190, 194-97, 97 S. Ct. 451, 50 L. Ed. 2d 397

(1976) (beer vendor may assert equal protection claims of

males not allowed to purchase beer until they turn 21); see

also Broadrick, 413 U.S. at 612, 93 S. Ct. 2908 (“Overbreadth

attacks [raised by third-parties] have also been allowed

where the Court thought rights of association were ensnared

in statutes which, by their broad sweep, might result in

burdening innocent associations.”). Verizon's relationship

with its client subscribers is the kind of relationship that

79a

warrants allowing Verizon to assert a First Amendment

challenge on their behalf.'6

B. The First Amendment Protects Anonymous

Expression on the Internet

The Supreme Court has recognized a right of anonymity

within the First Amendment. Buckley v. American

Constitutional Law Found., 525 U.S. 182, 200, 119 S. Ct. 636,

142 L. Ed. 2d 599 (1999) (invalidating, on First Amendment

grounds, a Colorado statute that required initiative

petitioners to wear identification badges); McIntyre v. Ohio

Elections Comm’n, 514 U.S. 334, 357, 115 S. Ct. 1511, 131 L. Ed.

2d 426 (1995) (overturning Ohio law that prohibited

distribution of campaign literature without name and

address of the person issuing the literature; “anonymous

pamphleteering is not a pernicious, fraudulent practice, but

an honorable tradition of advocacy and of dissent”); Talley v.

California, 362 U.S. 60, 65, 80 S. Ct. 536, 4 L. Ed. 2d 559 (1960)

(invalidating California statute prohibiting distribution of

handbills without name and address of preparer).!? Courts

have also recognized that the protections of the First

Amendment reach expression on the Internet. See, e.g., Reno

v. ACLU, 521 U.S. 844, 870, 117 S. Ct. 2329, 138 L. Ed. 2d 874

16 The Court is also aided in this case by the submissions of amici

representing the interests of Internet users.

17 Courts have acknowledged some limitations on the subpoena power

when its invocation affects First Amendment rights involving anonymity.

See, e.g., NAACP v. Alabama ex rel. Patterson, 357 U.S. 449, 461, 78 S. Ct.

1163, 2 L. Ed. 2d 1488 (1958) (discussing First Amendment implications of

civil subpoena to disclose membership list); Doe v. 2TheMart.Com Inc., 140

F. Supp. 2d 1088, 1091 (W.D. Wash. 2001) (addressing First Amendment

rights when corporation served subpoena on ISP to obtain identity of

anonymous shareholders in derivative action); Los Angeles Memorial

Coliseum Comm'n v. Nat'l Football League, 89 F.R.D. 489 (C.D.Cal.1981)

(discussing First Amendment implications of civil subpoena to disclose

names of confidential journalistic sources).

80a

(1997) (“Through the use of chat rooms, any person with a

phone line can become a town crier with a voice that

resonates further than it could from any soapbox.”);

2TheMart.Com, 140 F. Supp. 2d at 1092 (“First Amendment

protections extend to speech via the Internet.”).

An individual’s anonymity may be important for

encouraging the type of expression protected by the First

Amendment. “The decision in favor of anonymity may be

motivated by fear of economic or official retaliation, by

concern about social ostracism, or merely by a desire to

preserve as much of one’s privacy as possible.” McIntyre,

514 US. at 341-42, 115 S. Ct. 1511. Indeed, “quite apart from

any threat of persecution, an advocate may believe her ideas

will be more persuasive if her readers are unaware of her

identity.” Id. at 342, 115 S. Ct. 1511. As stated in Talley,

“{aJnonymous pamphlets, leaflets, brochures and even

books have played an important role in the progress of

mankind.” 362 U.S. at 64, 80S. Ct. 536. Hence, several lower

court cases have found that First Amendments rights,

particularly the right to anonymity, extend to expression on

the Internet. See, e.g., 2TheMart.Com, 140 F. Supp. 2d at 1097

(“the constitutional rights of Internet users, including the

right to speak anonymously, must be carefully

safeguarded”); ACLU v. Johnson, 4 F. Supp. 2d 1029, 1033

(D.N.M. 1998) (striking law “that prevents people from

communicating and accessing information anonymously”);

Columbia Ins. Co. v. Seescandy.Com, 185 F.R.D. 573, 578 (N.D.

Cal. 1999) (recognizing “legitimate and valuable right to

participate in online forums anonymously or

pseudonymously”). ,

But when the Supreme Court has held that the First

Amendment protects anonymity, it has typically done so in

cases involving core First Amendment expression. See, ¢.g.,

Watchtower Bible, Tract Society of New York, Inc. v. Village of

8la

Stratton, 536 U.S. 150, 153, 122 S. Ct. 2080, 153 L. Ed. 2d 205

(2002) (striking down ordinance requiring permit for door-

to-door advocacy “not only as it applies to religious

proselytizing, but also to anonymous political speech and

the distribution of handbills”); Buckley, 525 US. at 199, 119 S.

Ct. 636 (striking down petition circulation rule requiring

petitioners to be registered voters because “that endeavor .. .

of necessity involves . . . the expression of a desire for

political change”); McIntyre, 514 U.S. at 346, 115 S. Ct. 1511

(“the speech in which Mrs. McIntyre engaged -- handing out

leaflets in the advocacy of a politically controversial

viewpoint -- is the essence of First Amendment expression”).

As the Supreme Court has explained, “[t]he First

Amendment affords the broadest protection to such political

expression in order ‘to assure [the] unfettered interchange of

ideas for the bringing about of political and social changes

desired by the people.” Id. at 346, 115 S. Ct. 1511 (quoting

Roth v. United States, 354 U.S. 476, 484, 77 S. Ct. 1304, 1 L. Ed.

2d 1498 (1957)). “When a law burdens core political speech,

we apply ‘exacting scrutiny,’ and we uphold the restriction

only if it is narrowly tailored to serve an overriding state

interest.” Id. at 347,115 S. Ct. 1511.

The DMCA, however, does not directly impact core

political speech, and thus may not warrant the type of

“exacting scrutiny” reserved for that context. Section 512(h)

deals strictly with copyright infringement. Verizon

concedes, as it must, that there is no First Amendment

defense to copyright violations. The “Supreme Court . . . has

made it unmistakably clear that the First Amendment does

not shield copyright infringement.” Universal City Studios,

Inc. v. Reimerdes, 82 F. Supp. 2d 211, 220 (S.D.N.Y. 2000); see

Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S.

539, 568, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985) (rejecting

First Amendment challenge to copyright infringement

action); Zacchini v. Scripps-Howard, 433 U.S. 562, 574-78, 97 S.

82a

Ct. 2849, 53 L. Ed. 2d 965 (1977). In other words, “the First

Amendment is not a license to trammel on legally

recognized rights in intellectual property.” In re Capital

Cities/ABC, Inc., 918 F.2d 140, 143 (11th Cir. 1990) (quotations

omitted). Indeed, copyrights serve as important incentives

to encourage and protect expression: “the Fra: ers intended

123 S. Ct. at 788 (quoting Harper & Row, 471 U.S. at 558, 105

S. Ct. 2218). “By establishing a marketable right to the use of

one’s expression, copyright supplies the economic incentive

to create and disseminate ideas.” Id. Nonetheless, the Court

concludes for present purposes that there is some level of

First Amendment protection that should be afforded to

anonymous expression on the Internet, even though the

degree of protection is minimal where alleged copyright

infringement is the expression at issue.

C. § 512(h) Provides Sufficient Safeguards to Prote-t

Internet Users’ Rights

Verizon maintains that the DMCA does not provide

adequate safeguards to protect Internet users’ rights of

expression and association. In this regard, Verizon relies

heavily on the Supreme Court’s decision in Blount v. Rizzi,

400 U.S. 410, 91 S. Ct. 423, 27 L. Ed. 2d 498 (1971), which

overturned a federal statute authorizing prior restraint and

censorship of obscene materials sent through the mail. The

Court in Blount held that “the line between speech

unconditionally guaranteed and speech which may

legitimately be regulated .. . is finely drawn,” and thus

- “[t]he separation of legitimate from illegitimate speech calls

for sensitive tools.” Id. at 417, 91 S. Ct. 423 (quoting Speiser v.

Randall, 357 U.S. 513, 525, 78 S. Ct. 1332, 2 L. Ed. 2d 1460

(1958)). The strictures in Blount and its progeny, however,

do not apply outside the obscenity realm; moreover, even if

they did, the DMCA contains adequate safeguards to ensure

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that the First Amendment rights of Internet users will not be

curtailed.

Blount struck down a statute that authorized the

Postmaster General to halt the use of the mails for commerce

in allegedly obscene materials and permitted detention of

mail pending resolution of an obscenity determination.

Since § 4006 on its face, and § 4007 as applied,

are procedures designed to deny use of the mails

to commercial distributors of obscene literature,

those procedures violate the First Amendment

unless they include built-in safeguards against

curtailment of constitutionally protected

expression, for Government is not free to adopt

whatever procedures it pleases for dealing with

obscenity . . . without regard to the possible

consequences for constitutionally protected

speech. Rather, the First Amendment requires

that procedures be incorporated that ensure

against the curtailment of constitutionally

protected expression, which is often separate

from obscenity oniy by a dim and uncertain line.

400 US. at 416, 91S. Ct. 423 (citations omitted). Because the

government was censoring speech and regulating obscenity,

the Court “insist[ed] that regulations of obscenity

scrupulously embody the most rigorous procedural

Safeguards.” Id. “[T]he fatal flaw of the [statute’s]

procedure,” the Court explained, was that it “fail[ed] to

require that the Postmaster General seek to obtain a prompt

judicial determination of the obscenity of the material.” Id. at

418, 91S. Ct. 423.

The Supreme Court's decision in Blount cannot be read

as broadly as Verizon would like. The statute challenged in

Blount authorized government censorship ana pricr restraint

84a

of allegedly obscene material sent through the mail, without

any judicial determination of obscenity. In such

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