Eighth Circuit Rejects RIAA's Use Of DMCA Subpoenas To Identify P2P File Sharers
On Jan. 4, 2005, the U.S. Court of Appeals for the Eighth Circuit ruled that copyright owners may not use subpoenas under the Digital Millennium Copyright Act (“DMCA”) to force Internet service providers (“ISPs”) to identify subscribers they believe are illegally swapping copyrighted materials using peer-to-peer (“P2P”) file sharing software. In interpreting Section 512 of the DMCA, the Court held that clerk-issued subpoenas may only be served on ISPs that allegedly cache infringing materials, store infringing materials on their own servers, or provide links to infringing materials. Subpoenas may not be issued, however, when the ISPs are acting as mere conduits, providing only Internet transmission and routing services between or among customer-owned PCs. The Court did not reach the argument that Section 512 of the DMCA was unconstitutional, but did suggest that the DMCA’s subpoena mechanism “may unconstitutionally invade the power of the judiciary. . . .” One judge on the three-judge panel dissented, finding that Congress intended to subject all ISPs (including those simply providing Internet transmission service) to the subpoena provisions and that the subpoena provision was, in her opinion, constitutional.
This decision should finally put to rest any remaining effort by copyright owners to use the casual process of obtaining clerk-issued subpoenas to force ISPs to identify thousands of subscribers suspected of infringing copyrights through P2P file sharing prior to filing suit. Most copyright owners abandoned the DMCA subpoena process last year and instead began filing anonymous John Doe suits against suspected file-swappers. The copyright owners have then sought the alleged infringers’ names and addresses from the ISPs by way of traditional discovery requests in the litigation. (This practice was not at issue here.)
The underlying dispute
In Recording Industry Association of America, Inc. v. Charter Communications, Inc., No. 03-3802 (8th Cir., Jan. 4, 2005), the Eighth Circuit reversed a St. Louis federal district court’s refusal to quash a DMCA subpoena that was obtained by the RIAA from the clerk of the district court and served on the ISP (“Charter”). The RIAA had obtained the dynamic Internet Protocol (“IP”) addresses of 200 suspected infringers, determined that these IP addresses were associated with users of Charter’s Internet service, and in its DMCA subpoena demanded that Charter identify its subscribers associated with the identified IP addresses. In refusing to quash the subpoena, the district court followed a decision issued by the federal district court in D.C. that had enforced a similar DMCA subpoena obtained by the RIAA and served on Verizon (see Update dated Jan. 22, 2003). Charter immediately appealed to the Eighth Circuit and sought a stay of the district court’s order. The stay was denied and Charter provided the RIAA with the names, addresses and email addresses of the subscribers associated with the IP addresses.
Shortly after Charter’s appeal was lodged in the Eighth Circuit, however, the D.C. Circuit reversed the D.C. federal district court in Verizon (see Update dated Dec. 22, 2003).1 Notwithstanding that reversal, the RIAA continued to defend the subpoena served on Charter in this case. In reversing the district court here, the Eighth Circuit followed the lead of the D.C. Circuit by focusing on the language of Section 512 of the DMCA. The Eighth Circuit held that the subpoena provision in Section 512 does not apply to any ISP acting as a mere “conduit” when its subscribers share files that are stored solely on the subscribers’ PCs and are not stored or linked anywhere on the ISP’s network. Because Charter had already complied with the subpoena and turned over its subscribers’ names and addresses, the Eighth Circuit remanded the case to the district court for the purpose of ordering RIAA to (1) return all the subscriber information Charter provided; (2) maintain no copies of the subscriber information; and (3) make no further use of any of Charter’s subscribers’ information.
Although this decision is another significant setback for certain copyright owners (primarily the music and movie industries) who have used the DMCA to identify and threaten litigation against individuals using P2P software, its practical effect has been somewhat limited by the owners’ change in tactics, using John Doe suits rather than the DMCA subpoena process to obtain the identity of suspected infringers. The owners have been looking for easier ways to remedy the damage that P2P file sharing allegedly causes and would prefer to sue ISPs directly. Accordingly, the decision here may support the copyright owners’ lobbying efforts to revise the DMCA’s “safe harbor” provisions in order to impose liability on ISPs whose subscribers share infringing materials.
Last year, the Inducing Infringement of Copyrights Act (the “Induce Act”) was introduced in Congress. That Act would have changed the DMCA safe harbors to make ISPs secondarily liable for “inducing” subscribers to commit copyright infringement when they share files containing copyrighted works. If passed, the Induce Act would have essentially banned P2P technologies. As a counter, the “Discouraging Online Networked Trafficking Inducement Act of 2004” (the “Don’t Induce Act”) was also introduced, as were revisions to the “Induce Act” itself. No legislation was passed by the 108th Congress, and new legislative proposals may be delayed until the Supreme Court has decided the Grokster case (which helped establish that operators of P2P networks are immune from liability). See Updates dated April 30, 2003, Aug. 24 2004, and Dec. 13, 2004.
If you have further questions about this decision, legislation, or other copyright or DMCA-related issues, please contact us.
1 The Supreme Court denied RIAA’s petition for certiorari on Oct. 12, 2004.