Declaration of Howard Ende

in Felten v. RIAA (Aug. 13, 2001)

Grayson Barber (GB 0034)
Grayson Barber, L.L.C.
68 Locust Lane
Princeton, NJ 08540
(609) 921-0391

Frank L. Corrado (FLC 9895)
Rossi, Barry, Corrado & Grassi, P.C.
2700 Pacific Avenue
Wildwood, NJ 08260
(609) 729-1333

(Additional Counsel listed on signature page)
Attorneys for Plaintiffs

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY

Howard S. Ende, being of full age, certifies and says:

1. I am an attorney at law admitted to practice before the courts of New Jersey, and the General Counsel for Princeton University. I make this certification in support of relief sought by the Plaintiffs in this matter.

2. On April 10, 2001, I received a copy of an April 9, 2001 letter from Matthew J. Oppenheim, Esq. to Princeton Professor Edward Felten. The letter identified Mr. Oppenheim as the Senior Vice President, Business and Legal Affairs, of the Recording Industry Association of America ("RIAA"). Additionally, Mr. Oppenheim signed the letter as the Secretary of the SDMI Foundation ("SDMI").

3. Without violating attorney-client privilege or waiving work product protections, I can say that through nearly immediate communications with Professor Felten and my independent investigation, I came to learn of the genesis of the dispute which has resulted in this lawsuit. I learned that Mr. Oppenheim's letter concerned a paper which Professor Felten and others had researched and written, entitled "Reading Between the Lines: Lessons from the SDMI Challenge" (which has been referred to as the "SDMI Paper"). I learned as well that SDMI sponsored a public challenge during the Fall of 2000, in which it invited the internet community to attempt to crack certain technologies which SDMI was considering to protect digital music files from copyright infringement, and that Professor Felten and his team believed that they successfully defeated most of the proposed technologies, including one propounded by Verance Corporation ("Verance"). As suggested by Mr. Oppenheim's April 9th letter, and confirmed to me by Professor Felten, the SDMI Paper, which discussed the team's research, had been scheduled to be presented and published in the conference proceedings of the Fourth International Information Hiding Workshop ("IHW") in Pittsburgh on April 25-27, 2001.

4. I learned that, in addition to Professor Felten, the co-authors of the SDMI Paper included other Princeton faculty and graduate students (as well as researchers from Rice University and the Xerox Palo Alto Research Center). Thus, Mr. Oppenheim's letter, which referenced Professor Felten's potential violation of “the spirit and terms of the Click-Through Agreement” and the possibility that Professor Felten and his research team could be “subject… to actions under the Digital Millennium Copyright Act” for presenting what I understood to be an scientific research paper, raised a significant concern here at Princeton University, and in my office specifically. For days thereafter, I devoted hours upon hours to the matter.

5. By April 11th I was in contact with legal counsel for Rice University and Xerox, and had reviewed a series of e-mail correspondence provided to me by Professor Felten, including (i) a March 30, 2001 e-mail from Joseph M. Winograd, the Executive Vice President and Chief Technology Officer of Verance, to Professor Felten requesting a pre-publication copy of the SDMI Paper; (ii) Professor Felten's March 31st reply which sent a preliminary copy of the SDMI Paper to Dr. Winograd in electronic form; and (iii) Dr. Winograd's April 6th follow up e-mail to Professor Felten, which stated non-specific concerns about the SDMI Paper, and advised that he had given a general description of the paper to SDMI, among others.

6. Intense daily (and sometimes hourly) consultations commenced with, among others, Professor Felten, Richard Zansitis, Esq. (Rice University's General Counsel), other attorneys engaged by Rice, and Xerox's Patent Counsel. I viewed Mr. Oppenheim's letter as a warning of legal action that could be directed against the SDMI Paper's Princeton co-authors in the event the paper was presented in late April. As such, Princeton's interests - including the institutional concern for academic freedom - were implicated, and I took Mr. Oppenheim's letter with the utmost seriousness.

7. Though it was clear to me that Mr. Oppenheim was threatening legal action against the Princeton co-authors, and possibly this institution as well, his letter was bereft of details concerning the factual basis for his stated position and the legal implications referenced in his letter. Therefore, on April 13th I sent a letter to Mr. Oppenheim by fax and overnight delivery, noting Princeton's concerns about prior restraint and academic freedom, and requesting that he clarify some of the statements made in his letter. (A copy of my letter is annexed hereto as Exhibit A.) Neither Mr. Oppenheim nor any other representative of RIAA or SDMI ever provided me with the requested clarification. Instead, as noted below, the first response to the legal questions I raised came from Bruce Turnbull, Esq., a partner at Weil, Gotschal & Manges, LLP (Verance's outside counsel), in a conference call on April 23rd.

8. Since I first became involved in this dispute on April 10th, one of my goals was to find a solution that would, from the Princeton co-authors' standpoint, preserve the scientific integrity of the research and allow them to present and publish the SDMI Paper at the rapidly approaching IHW without risking a resulting lawsuit. Therefore, my April 13th letter to Mr. Oppenheim also indicated an interest in finding common ground in terms of the disputed issues, and asked to be provided with a redacted copy of the SDMI Paper that would satisfy his apparent concerns.

9. Professor Felten made a similar request to Dr. Winograd in an e-mail on the afternoon of April 17th, and two and one half hours later Dr. Winograd e-mailed to Professor Felten a long list of "recommended" changes to the SDMI Paper. Although I have absolutely no technical expertise in terms of the SDMI paper's subject matter, I do understand that had the researchers agreed to accept the changes Dr. Winograd proposed to Professor Felten, the substance of the SDMI Paper would have been greatly diminished. (The proposed changes were technical in nature, and as one might expect from a scientist, Dr. Winograd's e-mail did not address the legal issues raised by Mr. Oppenheim's April 9th letter, or the questions I posed in my April 13th letter to Mr. Oppenheim. Indeed, it was unclear at the time whether Dr. Winograd was speaking only on behalf of Verance, or whether he had authority to speak on behalf of RIAA and SDMI.).

10. On Friday, April 20th, I participated in an extended conference call among representatives of the co-authors, their institutions, the recording industry and Verance to discuss the situation. Mr. Oppenheim and Dr. Winograd and Mr.Turnbull (Verance's lead lawyer at Weil, Gotschal & Manges) were among the many individuals on the call. I recall asking Mr. Oppenheim to be more specific about the legal violations he claimed in his letter, concerning both the Digital Millennium Copyright Act ("DMCA") and the so-called Click-Through Agreement. Unfortunately, Mr. Oppenheim did not provide a responsive answer, nor did Mr. Turnbull or Dr. Winograd.

11. I also asked for clarification as to who had authority to speak for whom in terms of of RIAA, SDMI, and Verance. I recall Mr. Oppenheim saying that the Verance perspective probably would be the same as that of SDMI and RIAA. I do not recall him clarifying that comment.

12. At that point, Mr. Oppenheim left the call. Professor Felten and Dr. Winograd had an extended discussion of their respective views of the SDMI Paper. Professor Felten explained why, when academics and scientists conduct experiments, they must describe not only the experiments themselves to their colleagues, but also the results, so that their colleagues can properly evaluate the worth of the experiments and the results. Dr. Winograd stated that, in his view (with which Professor Felten strongly disagreed), the SDMI Paper was written in part to circumvent Verance's technologies and to allow others to do so, with no specific expertise required. Dr. Winograd did not argue with the principle of the SDMI Paper, but contended that it was too specific, saying that it was like giving out the combination to a safe, rather than just discussing the general strength of a safe, how long it took to break into it and the like.

13. While I certainly cannot describe the dialogue in every detail, it became clear that Professor Felten and Dr. Winograd were not going to come to a meeting of the minds during that conversation. In response to my question to Dr. Winograd as to whether the recommendations in his April 17th e-mail were the best which he was willing to offer, or whether there was maneuvering room, Dr. Winograd responded that he had made what he considered to be a reasonable proposal to alter the SDMI Paper, and did not indicate any willingness to change his position. The conference call ended with no substantive agreements, the only agreements being that Dr. Winograd and Professor Felten would attempt to speak further over the weekend, and that another conference call would occur on Monday, April 23rd.

14. The next conference call did occur late in the afternoon on April 23rd, less than two full days before IHW was to commence. I recall that, except for Mr. Oppenheim, roughly all of the participants in the April 20th call were on this one as well. However, others also joined the call. New participants included lawyers from Baker Botts, outside counsel to Rice; another Weil, Gotschal lawyer; and David Liebowitz, the Chairman of the Board of Verance.

15. The conversation began with discussion of the fact that over the weekend, a superceded and unauthorized version of the SDMI Paper somehow had made its way onto the internet. No one was pleased about this, and no one knew how the SDMI Paper had gotten out. Mr. Turnbull, the lead outside counsel for Verance, who had e-mailed me on Sunday April 22nd to introduce Weil, Gotschal's four person legal team and advise me that they were “greatly concerned” about this development and “reviewing [their] legal options,” expressed the most outrage, stating that Verance would consider getting an injunction forcing removal of the paper from the internet. Mr. Turnbull stated that he hoped an injunction was unnecessary, but that he was reserving Verance's rights, noting that trade secrets are protectible if prompt action is taken after an unauthorized disclosure.

16. The conversation then turned to the substance of the claims made by Mr. Oppenheim in his April 9th letter. Mr. Turnbull articulated why, in his view, the SDMI Paper violated at least two separate provisions of the DMCA: one which protects the right of copyright owners against circumvention of technological measures designed to protect their copyrights; and another which protects copyright management information. Mr. Turnbull asserted that the Verance watermark is copyright management information, and that the paper is a recipe for, and in effect removal of, copyright management information. Mr. Turnbull further stated that trade secrets of Verance were implicated in the SDMI Paper, and that, when a person knows that trade secrets are involved, reverse engineering of those trade secrets can be enjoined.

17. During the call Verance's Chairman, Mr. Liebowitz, who I understood to be formerly in-house counsel aligned with the recording industry, very aggressively stated his company's position that the publication of the SDMI Paper would be a violation of Verance's rights and the DMCA. His comments, together with those of Verance's lawyers, left me with the clear impression that Verance would take whatever legal steps were necessary in an effort to protect the company's perceived interests.

18. The call ended with no agreements having been reached, nor were any reached at any time prior to when the SDMI Paper was supposed to have been presented at IHW. As a result, I learned that the authors made the decision not to present the SDMI Paper at IHW, for fear of being sued.

19. Despite seeing a press release stating that SDMI never intended to sue Professor Felten or his colleagues, neither Mr. Oppenheim nor any other representative of SDMI or RIAA made any similar statement to me prior to the announcement that the paper had been withdrawn from IHW. Thus, on behalf of Princeton, I continued to be attentive to the legal implications of a potential future presentation of the SDMI Paper, particularly in light of the unresolved issues as of the conclusion of the April 23rd conference call, and the involvement of significant legal talent and time on behalf of the parties. Furthermore, I am unaware of Verance backing off the positions expressed by its representatives prior to the withdrawal of the SDMI paper.

20. I emphasize that Princeton is not a party to this action, and my office is not representing the Plaintiffs, for the simple reason that the copyright to the SDMI Paper is held by the researchers individually, not by Princeton. However, Princeton supports the right and desire of the Princeton co-authors to seek to have the SDMI Paper published, undeterred by the DMCA or by the threat of litigation.

[Exhibit A not available at this time. It will be appended here if/when available in electronic form. - ed.]

I certify that the foregoing statements made by me are true. I am aware that if any of the statements are willfully false, I am subject to punishment.

Dated: June 12, 2001

______________________________
Howard Ende

Attorneys for Plaintiffs

Please send any questions or comments to webmaster@eff.org.