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Final Hearing Transcript,
Felten v. RIAA (Nov. 28, 2001)
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
EDWARD W. FELTEN, ET AL.,
Case No. 01 CV 2669
402 E. State St.
Trenton, NJ 08608
RECORDING INDUSTRY, ET AL.,
November 28, 2001
TRANSCRIPT OF MOTIONS
BEFORE HONORABLE GARRETT E. BROWN
UNITED STATES DISTRICT COURT JUDGE
For the Plaintiffs:
Grayson Barber, L.L.C
By: GRAYSON BARBER, ESQ.
68 Locust Lane
Princeton, New Jersey 08540
for the Plaintiffs:
Rossi Barry Corrado & Grassi
By: FRANK L. CORRADO, ESQ.
2700 Pacific Avenue
Wildwood, New Jersey 08260
Pro Hac Vice Counsel For Plaintiffs:
Electronic Frontier Foundation
By: LEE TIEN, ESQ.
454 Shotwell Street
San Francisco, California 94110
JAMES S. TYRE, ESQ.
10736 Jefferson Boulevard, 512
Culver City, California 90230-4969
GINO J. SCARSELLI, ESQ.
664 Allison Drive
Richmond Heights, Ohio 44143
For the Defendants:
Sterns & Weinroth
By: KAREN A. CONFOY, ESQ.
50 West State Street, Suite 1400
Trenton, New Jersey 08607
Pro Hac Vice Counsel
For the Defendants:
Williams & Connolly, LLP
By: DAVID E. KENDALL, ESQ.
KEVIN HARDY, ESQ.
725 Twelfth Street, NW
Washington, DC 20005
LYNDA BRAUN, ESQ.
THOMAS WACK, ESQ.
For the Government:
U.S. Department of Justice,
By: RICHARD G. PHILLIPS, JR., ESQ.
901 E. Street, NW
Washington, DC 20530
Proceedings recorded by electronic sound recording, transcript
produced by transcription service.
Order permitting filing under seal sought
by the plaintiff 6
Response to the Briefs:
By Mr. Scarselli 7
Response by Mr. Kendall 19
Response by Mr. Phillips 22
Decision by the Court 23
THE COURT: Who do we have on the line?
MR. WACK: Your Honor, this is Thomas Wack
[phonetic] on behalf of defendant, Secured Digital Music and
MS. BRAUN: And Lynda Braun on behalf of the Verance
THE COURT: Could you give the reporter the spelling
of your last names?
MS. BRAUN: Sure. Lynda, L-Y-N-D-A, Braun, B-R-A-U-N.
THE COURT: All right. The case is Felten, et al., v.
Recording Industry Association, et al.
Let me have appearances first by the plaintiff.
MS. BARBER: Thank you, Your Honor. I'm the local
counsel for the plaintiffs. My name is Grayson Barber. And I'd
like to introduce my co-local counsel, Frank Corrado of Rossi,
Barry, Corrado and Grassi.
And we have three out-of-state counsel who have been
admitted pro hac vice. Gino Scarselli will be presenting
argument today. With him are Jim Tyre and Lee Tien of the
Electronic Frontier Foundation.
THE COURT: So, who is the lawyer who will actually be
speaking when called upon by the plaintiff.
MR. BARBER: This will be Gino Scarselli, Your Honor.
THE COURT: Thank you very much. And for the defense?
MS. CONFOY: Your Honor, Karen Confoy, Sterns &
Weinroth as local counsel for the defendants, Recording Industry
Association of America, Secured Digital Music Initiative
Foundation and Verance Corporation.
And with me to my left is David Kendall, Kevin Hardy,
both admitted pro hac vice from the firm of Williams and
Connolly for Recording Industry Association of American. Mr.
Kendall will be leading the argument today for the defendants.
THE COURT: All right. Now, I assume that you also --
you'll also be speaking on behalf of Secured Digital Musical
Initiative and Verance Corporation, is that right?
MR. KENDALL: Your Honor, they --
MR. WACK: Your Honor, this is Thomas Wack.
THE COURT: Okay.
MR. WACK: Mr. -- Mr. Kendall's argument, I believe,
will be -- I won't have much to add to what he has to say,
although I will have a few comments.
THE COURT: And you're representing whom, Mr. Wack?
MR. WACK: Secured Digital Music Initiative
THE COURT: Who's representing Verance?
MS. BRAUN: I am, Lynda Braun, Your Honor. And I will
defer to Mr. Kendall's argument.
THE COURT: Okay. And representing the Attorney
MR. PHILLIPS: Richard Phillips, Your Honor, from the
THE COURT: Is there anyone else whose appearance
hasn't been noted? All right.
MS. CONFOY: Your Honor, I just have with me
representatives from Recording Industry Association of America,
Dean Garfield and Matthew Oppenheim, also from the SDMI.
THE COURT: All right. Now we start out with an order
permitting filing under seal sought by the plaintiff. Is there
any opposition by the defense to their motion to file under seal
a computer program entitled Tiny Warp Dot C, the Source Code
Used to Defeat Technology F During the SDMI Public Challenge,
according to the letter of October 24th of Ms. Barber. Anyone
have any opposition to it being filed under seal?
All right, I will sign the order by consent. And the
Clerk will file it.
The plaintiffs filed a complaint, and then a first
amended complaint. All defendants move to dismiss the letter.
We have two sets of motion papers. The defendants -- the
private defendants, Recording Industry, Verance and Secure
Digital Music move in one set of papers, which the defense has
responded to and which we have a series of declarations filed by
both sides. And also, the Attorney General has moved to
dismiss, as well.
And, again, the plaintiffs have responded and filed
declarations and we have a full set of briefing on both sides.
I have read the briefs and I do not desire to have any
party repeat the arguments in their briefs. I think the matter
has been fully briefed by both sides. Nonetheless, if either
side wishes to be heard briefly on points raised since the
briefing, I will permit it.
Perhaps the wisest thing to do since the moving
parties have had the last brief is to ask Mr. Scarselli whether
he has any response to the briefs.
MR. SCARSELLI: Yes, Your Honor, I have a number of
responses to particular points.
THE COURT: All right. Don't repeat your brief and
only respond to the last brief that was filed. I've read the
rest of it several times.
MR. SCARSELLI: Yes.
THE COURT: Shall we turn first to the private
MR. SCARSELLI: Yes. May I?
THE COURT: Proceed.
MR. SCARSELLI: May it please the Court, I am Gino
Scarselli and I represent the plaintiffs in this action.
Your Honor, with respect to the private defendants'
briefs, the reply brief, the last brief, what I would like to
point out are simply two things:
One is our concern over the three papers to which the
private defendants have represented to the Court --
THE COURT: They say they have no problem, correct?
If it weren't for the one Oppenheim letter, you wouldn't be
here, would you?
MR. SCARSELLI: No, because of the whole series of
events, Your Honor, that took place leading up to the Oppenheim
THE COURT: So, you have one letter which they
withdrew before the seminar took place. And since then, they
have been saying over and over again we're not going to sue in
these papers, we're not going to sue in these papers, we're not
going to sue in these papers. Indeed, back last summer you came
in for injunctive relief and I told you it didn't make sense.
MR. SCARSELLI: Your Honor, there was no retraction
from the other side prior to the filing of the complaint. All
there was was a press statement --
THE COURT: Well, that's a matter of dispute. They
say that they issued it before but you didn't get it before.
MR. SCARSELLI: No --
THE COURT: Let's talk about the stipulation that you
MR. SCARSELLI: Yes.
THE COURT: -- entered into with them or were going to
enter into with them. Why wasn't that signed?
MR. SCARSELLI: We didn't -- it wasn't signed because
the private defendants refused to sign it. It was a
stipulation, first of all, to avoid a need for preliminary
relief or extraordinary relief.
THE COURT: And what was it that the private
defendants found troubling about that proposed stipulation?
MR. SCARSELLI: I honestly don't know, Your Honor. I
don't know the answer to that question.
THE COURT: Then we'll have to ask them when it comes
to be their turn. Okay.
MR. SCARSELLI: So --
THE COURT: Go ahead.
MR. SCARSELLI: So what we tried to do -- but, Your
Honor, if I may clarify, it wasn't just a matter of a single
letter by Mr. Oppenheim that was sent on April 9th. It was a
matter of events that occurred post letter, that occurred over
the span of two weeks leading up to the date of the conference.
THE COURT: You're talking about the negotiation
between the lawyers?
MR. SCARSELLI: Those were -- Your Honor, they -- they
can be construed as negotiations. But they're -- they were
clearly considered threats, not just by these plaintiffs, but by
University counsels for Princeton or Rice Universities, by the
Program Chair of the Information Hiding Workshop who pulled the
papers, the decision was reversed by a higher committee the
following day. But he actually pulled the paper.
It's not just a matter of these plaintiffs looking and
feeling threatened or chilled by the letter and the ensuing
In those negotiations, Mr. Turnbull [phonetic] of
Verance's outside counsel referred to the paper as a recipe for
circumventing technological measures, what would put it clearly
under the -- under the Statute.
Mr. Liebowitz [phonetic], Verance's CEO, claimed that
the plaintiffs have violated the DMCA strictly by submitting the
paper to the conference. Those events --
THE COURT: That one letter is what you seem to be
hanging your hat on.
MR. SCARSELLI: It was the negotiations also, and it
was also the -- these were -- Mr. Endy [phonetic] of Rice -- of
Princeton University -- Princeton's general counsel describes
daily and sometimes hourly conversations. Now, they occurred
over a short span of time, but they occurred over a short span
of time because there was a date certain when the paper was
supposed to be published.
And during that time, threats were -- I mean there's
different ways of saying that. We could say that the same
threat was reiterated, were -- that other threats were made.
But the point is that it was absolutely clear to everyone
present on our side of the table, along with the University
counsels of two major universities, along with outside counsel
of Rice University, because Rice retained outside counsel in
anticipation of litigation.
THE COURT: Well, since that time, you've published
everything you want to publish without a peep out of the
defense, except to say go to it, correct?
MR. SCARSELLI: We have published -- I want to be very
THE COURT: Okay.
MR. SCARSELLI: There was -- there were three papers
we attached to the complaint.
THE COURT: Um-hum.
MR. SCARSELLI: All right? After the paper was
pulled, the only -- the plaintiffs had heard nothing from the
private defendants. General counsels of Princeton and Rice
heard nothing from the private defendants.
Mr. Endy and Mr. Zanzitus [phonetic], both counsels of
Rice, stated that they were still concerned at that point. This
is after the paper was pulled and after RIAA/SDMI issued that
press statement on that same day. That was all that happened,
that was all that the other side did.
So, the concern -- the -- that there still was a live
threat of litigation persisted that entire time. One of the
papers -- the ICAS [phonetic] paper, this is a paper that
Professor Wu who just graduated from Princeton and is
now at University of Maryland College Park had written
principally with Mr. Craver, who's still a graduate student at
Princeton. That paper was submitted to another conference. It
was a similar paper, but it had -- it wasn't exactly the same.
There was some technical details that were different.
What happens, Your Honor, is with all the focus on the
SDMI paper, the paper -- excuse me. The paper that was
ultimately pulled from the Pittsburgh conference, this one just
sort of -- it fell through the cracks. When they realized it
after the paper was pulled, they tried -- they tried to pull it
from that conference also.
Professor Liu, who's Professor Wu's advisor, contacted
the organizers of the second conference --
THE COURT: I read your submissions. Most of what
you're saying is in your submissions, is it not?
MR. SCARSELLI: Yes. Yes.
THE COURT: All right.
MR. SCARSELLI: Excuse me, Your Honor.
THE COURT: Let's not repeat things that we already
MR. SCARSELLI: So, --
THE COURT: I mean I've spent hours going over this, I
don't intend to spend hours listening to it.
MR. SCARSELLI: I'm sorry, Your Honor. Let me just
move on. But that paper has been published. There was an
effort to pull it, but it was too late because that conference
didn't just -- didn't just present the paper -- publish the
papers in paper form, they burn CD's, and they had already
burned CD's at that time, so it was too late to pull that paper.
The paper -- the other paper, the paper that was
pulled from the Pittsburgh conference was re-advised --
THE COURT: You still haven't answered my question.
My question is: Is there anything as of now that these
plaintiffs have prepared for publication and sought to publish
which has not been published?
MR. SCARSELLI: Well, there is the program Tiny Warp,
which we submitted and you've just granted the motion to file
under seal. That is written and that's ready for publication.
THE COURT: Have the --
MR. SCARSELLI: But the problem --
THE COURT: Have the defendants said that they will
sue you if you publish that?
MR. SCARSELLI: No, Your Honor. But the initial
threat was -- excuse me -- wasn't about one paper. Mr.
Oppenheim's letter of April 9th refers to the public discussion
of information gained during the --
THE COURT: We're back to the --
MR. SCARSELLI: -- SDMI public challenge.
THE COURT: -- original Oppenheim letter again, aren't
MR. SCARSELLI: Well -- well, I mean, yes, we're back
there. We're back at those negotiations because that's when the
THE COURT: Maybe it would be profitable to turn to
your response to the Attorney General's --
MR. SCARSELLI: Yes.
THE COURT: -- submissions at this point.
MR. SCARSELLI: Yes, sir.
THE COURT: Now, you're asserting that I suppose
USENIX fears criminal prosecution by the Attorney General, is
that what you're saying?
MR. SCARSELLI: USENIX has a credible -- faces a
credible threat of prosecution from the Attorney --
THE COURT: The other plaintiffs have a credible
threat of prosecution by the Attorney General?
MR. SCARSELLI: Professor Felten does because the
paper that he wants to write for Scientific American, he was
invited to write it, would place him under the criminal
provisions because Scientific American, unlike peer review
journals, actually pays for articles.
THE COURT: Okay. In your injunctive relief request
at Paragraph K, you seek a preliminary and permanent injunction
against the Department of Justice --
MR. SCARSELLI: Yes.
THE COURT: -- from enforcing the DMCA against
plaintiffs USENIX for violating the Act. But you don't seek it
as to the other plaintiffs. Are you saying that they don't fear
prosecution by the Attorney General?
MR. SCARSELLI: Your Honor, we have -- this is a very
difficult -- it's a complicated Statute and we believed at that
time that the only -- the only plaintiff that faced criminal
prosecution because of Section 1204, which is the criminal
provision, and requires that a violation be done for commercial
-- a commercial advantage or private financial gain only apply
to USENIX because they gain money through the conference.
Since the arrest of Mr. Sklyarov, we're not sure where
that line is drawn any longer.
THE COURT: Well, I'm looking at the amended
complaint, you're not seeking that relief. Now, are you saying
that these defendants -- the defendant Attorney General would
prosecute your plaintiffs? It seems to me there's a tremendous
difference between Mr. Sklyarov and your plaintiffs, isn't
MR. SCARSELLI: I don't --
THE COURT: You don't see it?
MR. SCARSELLI: We don't see that -- no, Your Honor.
THE COURT: Okay.
MR. SCARSELLI: He's a grad --
THE COURT: Well --
MR. SCARSELLI: -- student at Moscow State University.
THE COURT: Okay.
MR. SCARSELLI: He came to the United States --
THE COURT: Well, if you don't see it, enough said.
We'll deal --
MR. SCARSELLI: Okay.
THE COURT: -- with that later. I mean I -- I see the
difference as being night and day, you don't. Let's move on
MR. SCARSELLI: Yes, sir. If I could say just one --
if I may follow-up just one more thing.
THE COURT: All right, go ahead.
MR. SCARSELLI: Under the Statute, our point is that
under the Statute, the lines aren't clear between Mr. Sklyarov's
case and our case. We don't know all of the facts of that case
yet. And reviewing the Government's indictment is just not
clear to us.
The other point, though -- and really what is relevant
about the Sklyarov case, sir, is that it shows that the
Government is intent on enforcing the Statute. This is not a
Statute that the Attorney General has dismissed that refuses to
enforce. He will enforce it. But exactly --
THE COURT: Does that mean that anyone --
MR. SCARSELLI: Exactly the --
THE COURT: -- can seek an injunction against
prosecution, regardless of the circumstance? Regardless of
asserting that they are actually going to engage in prohibited
MR. SCARSELLI: Sir, we would -- Your Honor, we would
have to amend that complaint because I don't believe injunctive
relief is warranted now.
THE COURT: I'm dealing with the complaint as you have
amended it the first time.
MR. SCARSELLI: Correct.
THE COURT: That's what they've moved to dismiss.
MR. SCARSELLI: Correct. And I don't think injunctive
relief is appropriate against the Government for the USENIX
conference, I do believe though that declaratory relief is still
THE COURT: Okay. So, you concede that you don't have
standing to bring an injunction action against the Government to
stop it from contemplating a prosecution against you that they
have not even contemplated, is that what you're saying?
MR. SCARSELLI: Only with respect to the USENIX
THE COURT: Otherwise you think you do?
MR. SCARSELLI: Absolutely.
THE COURT: Okay.
MR. SCARSELLI: Under -- under controlling Third
Circuit law, Your Honor. Because under Third Circuit law, if --
I mean a threat from the Attorney General is not required. All
that is required is that the plaintiffs want to engage in
conduct that's constitutionally protected and that the Statute
proscribes their conduct. That's all that's required.
THE COURT: And you assert the Statute --
MR. SCARSELLI: Then a presumption is created.
THE COURT: -- proscribes your conduct, is that what
MR. SCARSELLI: I'm saying that the Statute absolutely
proscribes the -- proscribes the publication of the Tiny Warp
And as far as the plaintiffs' other conduct --
THE COURT: Even though all your adversaries disagree
with you on that.
MR. SCARSELLI: Your Honor, the private defendants
threatened -- threatens to sue under the DMCA for the
publication and presentation of an academic paper. They
obviously must read the Statute and to help draft the Statute so
that it covers papers. And it makes sense, though, it's a
reasonable reading of the Statute and it's a reasonable reading
of part of the intent behind the Statute, which is to prevent
the disclosure of information that can be used to circumvent
measures that are intended to protect copying and access to
THE COURT: Anything else?
MR. SCARSELLI: With respect to the --
THE COURT: Either of those two points, then I'm going
to give your adversaries no more than five minutes a piece to
respond and then I'll rule.
MR. SCARSELLI: Yes, sir. Your Honor, may I comment -
- may I have just a moment?
MR. SCARSELLI: Nothing, Your Honor.
THE COURT: Okay. All right, counsel for the private
defendants. You heard my injunction to your adversary, I've
read the papers, don't repeat them, no more than five minutes,
and please confine yourself to what we've been hearing from your
MR. KENDALL: May it please the Court, David Kendall --
THE COURT: This is just designed to supplement your
papers. No more.
MR. KENDALL: David Kendall for defendant, RIAA. The
Court asked why the stipulation was not signed, that stipulation
is attached as Exhibit J to Mr. Hardy's declaration in support
of our motion to dismiss.
THE COURT: That's right.
MR. KENDALL: The only reason it wasn't signed, Your
Honor, is one word. You'll note that there's a signature line
for the Court. The one word that is missing from the
stipulation is dismissed.
We believe -- and I think -- I thought that the
plaintiffs believed that that stipulation resolved both past and
present questions. It resolved past questions by giving them
assurances from not only --
THE COURT: Who prepared the stipulation?
MR. KENDALL: Excuse me?
THE COURT: Who prepared the stipulation?
MR. KENDALL: It was really prepared by both sides and
it's so recites in it --
THE COURT: But you were the ones that wouldn't sign
it, you wouldn't sign it because they wouldn't agree to dismiss
this action, as well as everything else that was agreed in
there, is that right?
MR. KENDALL: That's correct.
THE COURT: Okay.
MR. KENDALL: And we thought that we had dealt with
the three papers in Paragraphs 1, 2 and 3, which gave them
categorical assurances, not only RIAA, but SDMI and Verance that
no action on those papers would be taken.
They recognize our point in Paragraph 6 that as to the
future, nobody knows. We can't -- you know, nobody can give
assurances about the future. We thought that ended the case. I
said so in my letter sent back to Mr. Scarselli the same day,
that we only had one problem, and that was we wanted a dismissal
on it. So, that's why the stipulation wasn't signed.
I think it does end the case. I think the case -- for
reasons set forth in our papers, is moot. And there's no actual
As to Mr. Scarselli's second point, he referred to
papers. And I think that the short answer to them is that every
THE COURT: Is it moot or is the issue not ripe? Or
do the plaintiffs lack standing?
MR. KENDALL: I think you could say either one of
those, Your Honor. My feeling is that the plaintiffs probably
lack standing. I think moot suggests that there was at one time
So, I would say that probably they lack standing and
the issue isn't ripe. But I think also, if -- even if you gave
them the benefit of the doubt, it's been mooted by the
stipulation and our assurances.
THE COURT: All right. Anything else?
MR. KENDALL: The only thing I -- in Mr. Scarselli's
second point, he mentioned papers. We responded to every paper
identified in their amended complaint. They were filed under
seal, there's no reason to seal them anymore, Your Honor,
because they've been published on the Internet by regular paper
and given at conferences.
THE COURT: All right. Mr. Wack, do you have anything
MR. WACK: I have nothing to add, Your Honor.
THE COURT: Ms. Braun?
MS. BRAUN: No, Your Honor.
THE COURT: All right. Mr. Phillips, for the
MR. PHILLIPS: Actually, Your Honor -- Richard
Phillips from the Justice Department.
Actually, Your Honor, I appreciate the five minutes,
but I believe the briefs covered the waterfront. If the Court
has questions, I'd be happy to answer them.
THE COURT: Okay. All right, very well.
MR. PHILLIPS: Thank you.
THE COURT: All right. Well, I certainly have had an
opportunity to read the various briefs submitted by the parties
and the declarations submitted by the parties, and I have
reviewed the first amended complaint in some detail with the
It's tempting to reserve decision and write a
definitive opinion here, but it's unnecessary because the United
States Supreme Court -- the United States Court of Appeals for
the Third Circuit, among others, have already conclusively
spoken on the issues presented. And this would serve no purpose
other than to delay this matter further.
I will discuss the issues raised in somewhat of an
abbreviated fashion. The question presented is, as the parties
have annunciated, do we have a case or controversy. That
limitation on the Federal Courts is both a separation of Powers
limitation and a Prudential limitation. We don't have roving
commissions to go about and consider any statute passed by the
Congress, which some party may wish to question. The reasons
for that are set forth in the briefs submitted, and I will
hopefully go into that in some greater detail.
But an abstract review of the constitutionality of
statutes passed by Congress is beyond the powers of this Court
and, of course, is certainly limited by prudential concerns, as
The Courts of the United States are quite busy
handling real, rather than theoretical cases, between true
adversaries with an adequately developed factual record.
I feel that if I were to delay my ruling, it would be
unfortunate. I think right now, it's necessary to speak and
avoid further expenditure of the resources of the parties and of
the Court where we do not have an actual case or controversy.
As Dorothy Parker said in another context, "there is
no there there." Looking at the repeated assurances given by
the defendants that there is no dispute, that there is no
controversy, the plaintiffs seem unwilling to accept that.
You'll have to bear with me and don't interrupt me, I
have a series of notes and references here and I will try to
dictate an abbreviated opinion into the record, which I think
will assist the parties. And when and if they do have a case or
controversy, they are certainly free to come back to this Court.
But at this point, as I say, they do not.
I think everybody has given me a form of order here if
I'm not mistaken, let me just make sure.
THE COURT: Yes, I have a form of order here from the
United States and I have one from the Recording Industry
Association, one from SDMI and one from Verance.
THE COURT: My apologies to the attorneys that are
present by telephone. I'm going to keep you for a while. Is
that inconvenient? Are you someplace where you can't stay on
the phone for a while?
MR. WACK: No. We -- I can certainly stay on the
phone, Your Honor.
MS. BRAUN: So can I, Your Honor.
THE COURT: All right.
THE COURT: The claim here arises out of what is
called the SDMI initiative, a letter to the digital community to
attack certain technologies, which is referred to in the
beginning of the amended complaint, which also sets forth the
The plaintiffs assert that they did enter this
contest. They assert that they were successful, at least in
part, the defendants assert they were not, but that is
irrelevant to the matters that are before us.
In any event, the claim is that the plaintiffs, as
scholars and researchers, intended to publish the results of
their examination. And that they were met with a response by
Mr. Oppenheim, which is set forth at Paragraph 43 of the
complaint. This goes on after allegedly Professor Felten was in
correspondence with Mr. Winograd of Verance. And Dr.
Winograd said at Paragraph 41 that, "I am most concerned that
your paper provides unnecessarily detailed information, in
particular relating to detailed numerical measurements, such as
frequencies, numeric parameters, etc., you and your
colleagues obtain through analysis of the samples provided by
SDMI and/or employ in your proposed attacks. It's not clear to
me that the inclusion of these specific numeric details either
advances your stated goal for furthering the academic body of
knowledge regarding security technologies or any other cause
other than facilitating the use of your results by others
seeking to circumvent the legitimate use of these technologies
for copyright protection purposes. I urge you to reconsider
your decision to include this information in your publication, I
believe that there could be ways in which our individual
objectives can be met without potentially compromising the
academic value of your work or the security of any of the
technologies that were included in the SDMI challenge.
"I welcome the opportunity to discuss these further
with you while there is still time to do so."
And it's alleged that three days later, Professor
Felten received a letter from Matthew Oppenheim, Esquire, Senior
Vice President of Business and Legal Affairs of the Recording
Institute of America -- Industry Association of America, Inc.,
one of the defendants here. And this is the letter which seems
to be the crux of the plaintiffs' claimed fears, together with
the claimed negotiations thereafter.
Oppenheim said, "As you are aware, at least one of the
technologies that was the subject of the public challenge, the
Verance Watermark is already in commercial use. A disclosure of
any information that might assist others to remove this
watermark would seriously jeopardize the technology and content
"Other technologies that were part of the challenge
are either likewise in commercial use or could be utilized in
this capacity in the near future.
"Therefore, any disclosure of the information that
would allow the defeat of those technologies would violate both
the spirit and the terms of the click-through agreement. In
addition, any disclosure of information gained from
participating in the public challenge would be outside the scope
of activities permitted by the agreement and could subject you
and your research team to action under the Digital Millennium
Copyright Act, DMCA.
"Unfortunately, the disclosure that you are
contemplating could result in significantly broader consequences
and could directly lead to the illegal distribution of
copyrighted materials." Material, singular.
"Such disclosure is not authorized in the agreement,
would constitute a violation of the agreement and would subject
your research team to enforcement actions under the DMCA and
possibly other Federal laws.
"As you are aware, the agreement covering the public
challenge narrowly authorizes participants to attack the limited
number of music samples and files that were provided by the
SDMI. The specific purpose of providing these encoded files and
for setting up the challenge was to assist the SDMI in
determining which proposed technologies are best suited to
protect the content in phase two products." It talks about the
And then goes on -- and I won't read all of it, but
what he is saying it would -- you'd be in direct violation of
the agreement and would be outside the limited authorization of
the agreement, could be subject to the enforcement under Federal
laws, including the DMCA. And disclosure could be subject to a
And it's alleged that thereafter, the plaintiffs were
concerned, negotiated with the defendants, both themselves and
counsel for the universities, and while finally the paper was
cleared for a publication by the presenting organization, the
plaintiff, specifically Dr. Felten, decided not to present it.
The plaintiff have four causes of action here, and I
will not read the entire amended complaint, which is lengthy. I
need not do that, it's part of the record.
They're seeking, first, declaratory judgment, that
they're not liable under the Act for submitting the referenced
papers. And going beyond that, that they would not be liable
for presentation of publication of any research resulting from
or relating to the public challenge. And also, a declaration of
the Act is not violated by the publication or presentation by
plaintiffs or others of future scientific or technical
information, including computer code, related to access and copy
control measures and copyright management information systems.
They're also seeking a declaration, a second cause of
action, that the Act violates the First Amendment of the United
States Constitution on its face and as applied.
And, third, a declaration that they will not violate
the click-through agreement by certain designated acts.
And, fourth, a declaration that the act is in Act is
unconstitutional because it's not a valid exercise of any of
Congress' enumerated powers.
The injunctive relief is set forth thereafter. I
referred to the claim for an injunction against the Department
of Justice from initiating criminal prosecutions. I understand
from counsel that maybe that is not what they're seeking right
now, but that's what the complaint says.
Now, when we look at this complaint, of course, the
first thing the Court must consider is its own jurisdiction or
lack thereof. And as I said initially, we have jurisdiction
under Article 3 only for actual cases and controversies.
Indeed, early in the founding of the republic, there were some
consideration of whether the Court, specifically the Supreme
Court, should have advisory powers to pass on the
constitutionality of acts of Congress. And, of course, that
view was soundly rejected.
What we have here is a situation where we don't have
any justiciable case or controversy. We don't have the
necessary adversity, which is required for this Court's subject
matter jurisdiction. On one side you have people saying we are
afraid things are going to happen. On the other side, we have
people saying, no, they're not, we're not going to do any such
thing. This leads to, at best, a collusive lawsuit in a worse -
- almost a default situation.
We're not here to abstractly consider the merits of
legislation, the wisdom of legislation. And I know that the
plaintiffs' attack of the wisdom of the legislation is a matter
for the Congress and not for the courts.
The plaintiffs seek a declaration of their rights to
publish and present three, and sometimes it's characterized as
four if you look at permutations of one of them, specifically
identified academic papers.
And the private defendants repeatedly expressed
publicly and in correspondence, you can see it in the record and
the declarations, they have no objection whatsoever to them
publishing or presenting these three papers. And if you look at
the proposed stipulation, you'll see how narrow the issue
between the parties is. And it basically comes down to is there
a present judicable controversy or not? Can this action be
dismissed or not?
The plaintiffs don't say, well, it's not true, they
really say they are going to sue us. They haven't said that.
They rely on the Oppenheim letter, which, as we know, disavowed
quite early on.
Now, as far as papers that may be written in the
future, again, we have a non-justiciable dispute. It's unripe
An analogy came to mind and, of course, all analogies
should be approached with caution and are, by nature, imprecise
and probably misleading. If we had a party who said I wish to
enter into agreements with banks, but I'm afraid of the bank
fraud laws, I'm afraid that my good faith submissions to the
bank will be considered as bank fraud and I will be prosecuted
for it. Therefore, I would like a declaration in advance.
Well, if the bank says, I'm not going to have any
civil remedy under bank fraud. And the Attorney General says,
we're not going to prosecute you under that one. I don't see
how they can do it then.
If the plaintiff says, well, how about any papers I
ever submit to a bank? I think, again, we have something that's
unripe and speculative. And one could hardly expect the
Attorney General to say any papers you ever submit to a bank or
anyone ever submits to a bank will not be prosecuted for bank
fraud. It may well be, we don't know.
I'm not in a position to rule on hypotheticals, that's
why we try to sharpen the record by adverse interest so I can
deal with real cases and real controversies.
The factual scenario is set forth in the declarations
of the parties and in the briefs submitted. And I don't think I
need to go over all of those.
What we do know, and it's clear, is that the Oppenheim
letter, which seems to be the catalyst, has been explained by
the RIAA and the SDMI saying that the response was far too
strong and threatening, and that there was no intent at any time
to sue, nor did they overtly say we are going to sue you. It
could be seen in the Oppenheim letter, but it was not expressed
It talks about the possibility of or violations, but
it doesn't say we're going to sue you.
Now, the counsel of Princeton and Rice were concerned
about a lawsuit, and did discuss them at the time. But the
plaintiffs received permission to present this paper in the
academic conference which had been notified of the controversy,
and they decided to withdraw it. They've subsequently decided
to present it.
And we know that the private defendant said that SDMI
does not, nor did it ever intend to bring any legal action
against Professor Felten or his coauthors.
The record is clear as to whether or not there is a
case or controversy that this Court could consider whether it
has jurisdiction that the private defendants have plainly,
unequivocally, over and over again stated repeatedly that they
have no objection to presenting or publishing the Felten paper
or the Wu paper.
And, of course, they said that it was never our
intention to bring any kind of action against Felten. And this
-- we're going back before this lawsuit was filed. The irony is
that the defendants having said we're not going to sue you, the
plaintiffs decided apparently to catalyze this action by
bringing a suit themselves.
And one thing that I noted was that Mr. Oppenheim, in
a letter to plaintiffs' counsel, said that the RIAA and the SDMI
do not object to the publication of the academic papers
identified in the complaint, and gave a list of published
statements, which they've expressly disavowed any intention of
initiating litigation and said we, frankly, don't know how we
could have been any clearer. Or to paraphrase a popular phrase,
what part of the word yes don't you understand?
Of course, after that, we had this request for
emergent relief, and I could see no basis for the emergent
relief back in June. And specifically expressed my concern
about the lack of an actual case or controversy between the
Of course, we have the negotiation of the stipulation.
When you look at the stipulation as to the terms, of course the
parties can't stipulate as to future events. But as to present
events, I agree with the defense that the only dispute between
the parties is the justiciability of this case, which is a
question of law, and one that I think is not particularly
difficult. We're just not here to give advisory opinions on
abstract or hypothetical issues. This is an Article 3
We can't declare an act of Congress unconstitutional
in such a context. We need true adverse interest and standing.
I can't find any adversity of interest with respect to
the Felten paper or the Wu papers. And I would note that the
defendants never said they were going to do anything at any time
against the Wu paper. That is only Ms. Wu's statement that she
felt that she was in danger of being sued.
As the parties focus on the key case in the Third
Circuit, Stepsaver Data Systems, Inc. v. Wise Technology, 912
F.2d 643, Third Circuit, 1990, the question in each declaratory
judgment case is whether the facts alleged under all the
circumstances show there's a substantial controversy between
parties having adverse legal interest of sufficient immediacy
and reality to warrant the issuance of a declaratory judgment.
I cannot find that those questions are met in this case.
As the defendants note in their brief, there's another
principle applicable here, avoiding the ruling on Federal
Constitutional matters in advance of a necessity for deciding
them, which is a factor also to be considered in justiciability.
As I said, we don't have some roving commission to go
around declaring acts of Congress unconstitutional because some
party would like us to look at them.
The plaintiffs say, well, this is a First Amendment
case and, therefore, it is different. Well, as the Third
Circuit has noted in the Salvation Army case, again referred to
by both sides, 919 F.2d 183, Third Circuit, 1990, where a
plaintiff seeks a declaratory judgment with respect to
constitutionality of a State Statute, even when the attack is on
First Amendment grounds, there must be a real and immediate
threat of enforcement against the plaintiff. And this threat
must remain throughout the course of the litigation.
Well, the clear and uncontested record here indicates
that there is not a real and immediate threat of enforcement
against the plaintiffs, much less one that remains throughout
the course of the litigation.
The fact that the plaintiffs assert that they feel
chilled, their subjective views are insufficient unless we find
evidence that there is an actual immediate threat.
As to the hypothetical future academic papers, I don't
think that those provide a sufficient ground for the immediacy
asserted by the plaintiffs. The plaintiffs, of course, bear the
burden of establishing the elements of the jurisdiction of this
Court. I don't see any injury, in fact, here.
Not only would it be premature adjudication, but it is
ephemeral adjudication. It is speculative adjudication. It is
by analogy. Sort of adjudication that would let the Court peer
into the future to determine whether any loan application by a
putative plaintiff could conceivably be a fraud. Courts are ill
equipped to engage in that sort of speculation.
Indeed, the absence of a controversy can be seen by
the fact that there are no mentions of any threat by any private
defendant, or the Attorney General with respect to the
plaintiffs' future works at all, even if we knew what those
As the defense notes, pre-enforcement review of a
statute is the exception, rather than the rule, Artway v.
Attorney General [phonetic], 81 F.3d 1235, 1247, Third Circuit,
1996. Pre-enforcement review of a statute may occur only where
the plaintiff has alleged an intention to engage in a course of
conduct, arguably affected with the constitutional interest, but
proscribed by the Statute, and there exists a credible threat of
the prosecution thereunder.
Here, the plaintiffs have not alleged that they plan
to violate the Statute, only that the Statute appears unclear to
I can't see any credible threat of any imminent
prosecution, either civilly or criminally. There's no real
immediate threat of enforcement.
Indeed, because the papers have not even been written,
it's impossible to know whether they will or will not violate
the Act, or any other law for that matter. And the Court
declines to engage in feudal speculation.
Plaintiffs are also seeking, in addition to the claim
based upon the past papers as to which there is no objection to
them publishing them, or future papers that they may prepare
seeking to have me invalidate the Act as it applies to,
according to the amended complaint, publication or presentation
of all scientific, academic or technical speech, including the
publication of computer programs. A rather broad and ephemeral,
at best and one that would require the Court to engage in
I don't know that I need to further discuss the claims
against the individual defendants. I will say that I think that
the position taken by the individual defendants as to Third
Circuit and Supreme Court law is correct. And that there is no
basis for me to find a case or controversy here. Of course, the
Salvation Army case from the Third Circuit is particularly
Stepsaver factors, which are not met here, are
particularly the instructive here, as well.
I can't find any injury in fact here. So, therefore,
a pre-enforcement review of a Statute would be inappropriate.
I can't say that the plaintiffs have alleged an
intention to engage in a course of conduct arguably affected
with a Constitutional interest, but proscribed by the Statute.
Indeed, the defendants assert that it's not proscribed by the
Indeed, the Attorney General, when he talks about the
Statute, explains why it is not. There's certainly no credible
threat of prosecution here, much less one that is impending.
To feel -- fear or concern asserted by the plaintiffs,
again, is subjective. Threats claimed derived from the
Oppenheim letter, which the defendants clarified and explained
that they were not threatening any lawsuit. Whether it was
withdrawn before the complaint or after the complaint, it was --
I don't think we need to reach at this point.
The Wu papers, nobody ever made any reference to the
Act concerning the Wu papers.
And, indeed, as I noted, all the papers have since
been published. Thus, arguing against the claimed chill and the
-- there's an assertion by the defense that the Felten paper was
not out of circulation, even if withdrawn from the information
hiding workshop because it was already publicly released on the
So, we have all these repeated protestations that, you
know, we're not threatening you, and I don't understand how this
one letter or the -- even the negotiations thereafter, in light
of the record here, can show me any real case or controversy
Certainly the plaintiffs have not demonstrated that
the conduct that they seek to engage in is clearly proscribed by
the relevant Statute. To the contrary, the plaintiffs say the
Statute is ambiguous and uncertain.
I -- even if there were a case or controversy, which
there is not, I would note that the Declaratory Judgment Act
gives me discretion. And if I had discretion here, I would not
exercise it to consider the constitutionality or applicability
of a recent act of Congress in this area where the facts are not
developed and where there is no adversity between the parties.
But I don't think I need to reach that issue because it seems to
me it would be a clear Article 3 violation for me to do that.
Now, I'm going to turn to the suit against the
Attorney General. The plaintiffs admit that they haven't been
prosecuted nor threatened with prosecution under the Act by the
Attorney General. The Attorney General does not indicate that
he plans to do so.
The fact that he will not give in advance a nonprosecution
agreement or waiver as to any conduct that the
plaintiffs or any other party may engage in in the future does
not mean that there is a case or controversy here.
The analogy or the concern as to the criminal case
that has been brought does not seem to assist the plaintiffs.
The defendants have referred to, I think it's
Sklyarov, S-K-L-Y-A-R-O-V, indictment, against Dmitry Sklyarov
and Elcom[Soft] Ltd., and it's clear distinction between what is
alleged there and anything that the plaintiffs say they are
doing or intend to do.
The indictment charges that these defendants designed
a program that circumvents a restriction on copying,
distributing and printing of certain electronic books and
offered -- and I believe it was Adobe Acrobat, and offered the
program for sale to the general public on the Internet
specifically for the purpose of circumventing these
The plaintiffs do not allege that they have [engaged]
or intend to engage in piracy of that nature. They don't assert
that they are trying to prepare programs to circumvent
restrictions on copying and that they have a constitutional
right to do so or that they intend to sell them to the public or
have sold them to the public.
Rather, they're saying they published them to fellow
scientists as part of a scientific process of improving access
controls. I can't see how the prosecution of Mr. Sklyarov
assists them in their effort to have the criminal portion of the
Statute declared unconstitutional. I'm not sure entirely that
that is what they're seeking at this time based upon counsel's
argument. But I certainly can't find any adverse legal interest
here between the Attorney General and the plaintiffs.
Of course, the other factors of the Stepsaver analysis
-- and I cited that case previously -- the case is susceptible
if it concludes a judgment, the judgment would be a practical
utility of the parties are as inapplicable here as they are in
the case of the private defendants.
The Act which was entered -- passed by the Congress,
pursuant to an international copyright treaty, prohibits the
manufacturing offering the public and the like of any
technology, et cetera, and is primarily designed or produced for
the purpose of circumventing the technological measure that
effectively controls the access to work protected under the
Copyright Act, that's 17 U.S. Code 1201(A)(2), or has only
limited commercial significant purpose or use other than to
circumvent, and I'm paraphrasing here, or is marketed for use in
circumventing. Language such as is primarily designed or
As the Attorney General notes, seven exceptions here.
If you look at 1201(D) through J, including conduct which is
necessary to engage in encryption research or conduct which is
necessary to engage in security testing of computer system.
Also, provides for innocent violations where the violator
neither knew nor should have known that its acts constituted a
If someone where prosecuted under these, would these
exceptions apply? I don't know. I can't speculate. I can't
create an intellectual dichotomy with myself where there is no
adversity of -- between the parties.
The Attorney General argues that the plaintiffs'
claims are not ripe. So, we don't have an actual case of
Of course, the doctrines of ripeness and standing,
while different, are certainly intertwined. And they're both
founded on concerns on the proper limited role of the unelected
third branch, Democratic Society.
The Supreme Court has repeatedly admonished us not to
entertain constitutional questions in advance of the strictest
necessity. And the parties cite Poe v. Allman [phonetic] for
that, 367 U.S. 497, 503, 1961, but it has been said on numerous
occasions. And, of course, the Attorney General says, again,
these are truisms really from the first year of constitutional
law. The ability of the judiciary to declare a law
unconstitutional does not amount to an unlimited power to survey
the statute books and pass judgment on laws before the courts
are called upon to enforce them, citing Younger v. Harris 401
U.S. 37 52, 1971. Of course, power is legitimate only as a last
resort, as a necessity to determine real earnest and vital
controversy between individuals, which we don't have here.
There is a danger of premature adjudication.
Entangling the Court in abstract disagreements, as the Third
Circuit said in the Artway case that I've previously referred
to, 81 F.3d at 1246.
I can't find that the Attorney General has an adverse
legal interest to the plaintiffs at this time. He hasn't
prosecuted them, or threatened them with prosecution under the
Statute. There's no substantial threat of real harm of
prosecution. There's no chill that is objectively reasonable.
It's not enough for an individual to say I feel chilled.
There's no objective reasonableness chilling here. The Attorney
General says the mere existence of the Act without more is
insufficient here to create a concrete adversity of interest.
Nor does the prosecution, which I believe is in
California, Northern District of California, which is completely
distinguishable, as I state here. That, on the other hand, I
will just note as a footnote. There the Court will have
adversity of interest. They will have a real controversy. And
any constitutional issues which Mr. Sklyarov or Elcom could
raise will properly be before the Court for determination. That
is not the case here.
The plaintiffs, on the other hand, allege their
conduct falls outside the scope of the Act, that they are not
violating the Act. They say, as the Attorney General says, by
their own allegations, their purpose is not to circumvent any
access control measures, but rather to study and assist other in
bolstering those access controls. They don't say they're going
to manufacture or offer any product designed to circumvent
access controls or sell them.
The Attorney General also says that the plaintiffs'
claim did not admit a conclusive relief as the applicability of
the act of their conduct is contingent on the precise papers
they intend to publish, which the plaintiff have not yet
Now, I discussed that in connection with the private
plaintiffs, and I don't need to discuss it that much further
here. Again, we can't forecast the future, nor can we give an
overall determination that anything the plaintiffs may wish to
do or that anyone else may wish to do in the future will not
violate the Statute or some provision thereof. All we know is
at the present time, plaintiffs have published and they have not
been prosecuted and don't have any realistic fear of being
Now, the plaintiffs, again, argue, as they did with
the private defendants, that this is a First Amendment case and
a question of ripeness should be less stringently applied here.
But as the Attorney General says, the slender First Amendment
exception only applies to those who have suffered some
cognizable injury whose conduct is not protected by the First
Amendment to assert the Constitutional Rights of others.
Plaintiffs here haven't demonstrated they themselves
suffered an injury. In fact, the Statute has never been applied
to the plaintiffs. They had -- cannot show that they had at
least a substantial threat of real harm from prosecution under
the Statute. They haven't shown that their conduct is
proscribed by the Statute or they face a credible threat of
prosecution under it.
They assert that the Attorney General's view that the
plaintiffs' academic pursuits are not proscribed by the Act,
seeking to thus create some adversity between the two parties.
If you look at the primarily designed language, look at the
language in the Statute and look at the Attorney General saying
this is the way I interpret it, I certainly can't find any
realistic threat of prosecution here whatsoever. Certainly not
to speculate as to what may happen in the future.
Now, the plaintiffs take the position that no threat
is required. The Attorney General disagrees and says that you
can presume a credible threat of prosecution if a reasonable
reading of the Statute would include the plaintiffs' conduct,
and there's no compelling evidence against that presumption.
Here, plaintiffs' conduct is clearly not covered by
the Act which the plaintiffs say is ambiguous. They don't say
we plan to violate the Act, please declare the Act
unconstitutional. They say it's unclear. The Attorney General
says it's clear, it doesn't apply to them. No credible threat
that prosecution can be presumed.
Consider also the fact that much of what the
plaintiffs propose to do has been done. And, again, without any
repercussions whatsoever from the Attorney General.
The parties' subjective fear that they may be
prosecuted for engaging in expressive activity will not be held
to constitute an injury for standing purposes unless the fear is
objectively reasonable. And here, I can't find that it is.
The Attorney General concludes the only pattern you
can glean from plaintiffs' conduct -- this is at his brief, Page
12 of the reply brief, is that they are willing to and, in fact,
continue to engage in the very conduct they claim is proscribed
by the Act. The decision to publish certain speech and to delay
or possibly forego other identical speech does not reflect a
fear of prosecution. If it did, then logically plaintiffs would
be publishing none of the material. Therefore, any alleged
refusals to publish cannot be considered a chill and do not
evince a need or basis for declaratory judgment in this case.
Now, a few other points.
THE COURT: The plaintiffs liken themselves to modern
Galileos persecuted by authorities. I fear that a more apt
analogy would be to modern day Don Quixotes feeling
threatened by windmills which they perceive as giants. There is
no real controversy here.
The plaintiffs may wish to strike down the Statute,
but their concern is, as the defendants say, political, rather
than a legal concern, one that can best be pursued in the halls
of the Legislature until they have a real case or controversy to
bring before this Court.
At this stage, they do not. That constitutes the
opinion of the Court. And I reserve the right to extend or
modify it as set forth in the local rules of this Court, but I
thought that for the interest of all parties, prompt resolution
would assist all of you.
I have entered orders reflecting this opinion as
submitted by counsel for the defense. Court stands in recess.
C E R T I F I C A T I O N
I, KAREN HARTMANN, certify that the foregoing is a
correct transcript to the best of my ability, from the
electronic sound recording of the proceedings in the aboveentitled
J&J COURT TRANSCRIBERS, INC.
Date: December 12, 2001
[Some obvious transcription errors were corrected by
the Electronic Frontier Foundation, Dec. 21, 2001.]