I. STATEMENT OF SUITABILITY FOR APPEAL
This is an appeal from an Order Granting Preliminary Injunction entered
January 21, 2000 by William J. Elfving, Judge of the Superior Court for the
County of Santa Clara. [AA711] An order granting a preliminary injunction
is an appealable order. Cal. Code Civ. Proc. =A7904.1(a)(6). Thornton v.
Carlson, 4 Cal.App.4th 1249, 1255 n.5 (1992).
II. STATEMENT OF THE CASE
Defendant-Appellant appeals the January 21, 2000 order of the Superior
Court for the County of Santa Clara granting to plaintiff DVD Copy Control
Association (DVD CCA) a preliminary injunction. DVD CCA asserted below that
defendants knowingly misappropriated trade secrets licensed by DVD CCA by
posting the DeCSS computer program on their websites, or mirroring, or
linking to other sites that posted it. [AA017]
The order enjoined Bunner and the 20 other named defendants, as well as
their officers, directors, principals, agents, servants, employees,
attorneys, successors and assigns, representatives and all persons acting
in concert with them, from
posting or otherwise disclosing or distributing, on their websites or
elsewhere, the DeCSS program, the master keys or algorithms of the Content
Scrambling System ("CSS"), or any other information derived from this
proprietary information.
[AA711-12]
Bunner contends in this appeal that the trial court abused its discretion
in issuing the preliminary injunction and must be reversed.
This appeal arises in an action brought pursuant to the California Uniform
Trade Secret Act, Cal. Civil Code =A73426.1 et seq., by the DVD CCA, the
entity that licenses the use of the DVD Content Scrambling System (CSS),
against 21 named and 500 Doe individuals. [AA001] The lawsuit was
occasioned by the appearance on the Internet of DeCSS in October 1999.
Many Internet users either published DeCSS via their websites or linked to
websites that published it. Some of these users are now the defendants in
this lawsuit. The DVD CCA claims that each of the defendants disclose
proprietary information on their Internet websites. [AA002] The DVD CCA
seeks a permanent injunction prohibiting the defendants from disclosing on
their websites, or linking to other websites that do disclose, "any
proprietary property or trade secrets relating to the CSS technology," and
specifically "the DeCSS computer program." [AA019]
III. STATEMENT OF FACTS
A DVD is a 5-inch shiny disk. [AA068] A movie can be printed on a DVD
disk. [AA068] CSS is an idea about how to scramble or encrypt the movies
printed on the disk. [AA068] Many movies are scrambled or encrypted using
CSS. One can play an encrypted DVD by putting it into a player that uses
the CSS ideas to unscramble the movie. [AA068] The CSS ideas have been
protected by a web of contracts and licenses among those who make and place
movies on DVDs, those who make the machines that play DVDs, and those who
make software that allows for movies to be played on a computer that has a
DVD drive. [AA070-73] By examining the DVD software or a player in
detail, it is possible to discern (or reverse engineer) the CSS ideas.
DeCSS is a different set of instructions that also tells a DVD player how
to unscramble a movie. [AA276] DeCSS never belonged to the DVD CCA. The
DVD CCA does not contend that it created, owns or controls the ability to
license DeCSS. DeCSS was published for free over the Internet. Those who
wanted to use it or download it or publish it were not asked to enter into
a licensing agreement. As a result, one who uses the DeCSS ideas is free
to discuss and examine the security system ideas publicly, to improve the
security system ideas, to play movies from anywhere in the world, to play
movies on operating systems for which DVD players are not made, to skip
over advertisements that precede the movies, and to make fair use of the
movie for education or for personal convenience. [AA276-79]
DVD CCA and the major movie studios have filed three lawsuits in three
venues, each naming multiple defendants, because they do not want anyone to
have these freedoms. See Universal City Studios et al. v. Reimerdes et
al., case no. 00Civ. 0277 (LAK), (S.D.N.Y.). The case before this Court
was the first such lawsuit.
The DVD CCA believes DeCSS was formulated by reverse engineering the CSS
ideas. [AA074] The DVD CCA suspects that, Jon Johansen, a 15 year old
Norwegian citizen living in Norway, is the individual who reverse
engineered CSS and formulated DeCSS. [AA479] That belief is based on
their belief that Johansen was the first to post DeCSS on a website, on
October 6, 1999. [AA479] The DVD CCA further suspects that software
supplied by one of its licensees, Xing, is the product that was in fact
reverse engineered. [AA479] The DVD CCA asserts that everyone in the
world who uses the Xing software is bound by an agreement not to reverse
engineer it, regardless of whether the user knew the terms of the agreement.
Andrew Bunner first became aware of DeCSS on October 26, 1999 through a
discussion on the news website slashdot.org. [AA287] Bunner often uses
the Linux Operating System, an alternative to Microsoft Windows, the
dominant operating system on the market. [AA287] Bunner "mirrored" DeCSS
on his own website, in order to make it available for other Linux users,
who could not otherwise play DVD movies on their computers, to download and
install. [AA287] Bunner hoped that by making DeCSS available he would
help make Linux a more attractive and viable operating system. [AA287] At
the time he posted DeCSS, Bunner had no information suggesting that DeCSS
contained any trade secrets or that it involved any misappropriation of
trade secrets. [AA288]
The DVD CCA does not allege that Bunner published CSS on his website.
The DVD CCA does not allege that Bunner violated any licensing agreement.
The DVD CCA does not allege that Bunner formulated DeCSS. The DVD CCA does
not allege that Bunner stole its trade secrets. The DVD CCA does not
allege that Bunner is pirating movies. The DVD CCA does not allege that
Bunner is copying or distributing movies. The DVD CCA's sole complaint
against Bunner is that he published DeCSS on his website.
=0CIV. STANDARD OF REVIEW
To issue a preliminary injunction, the trial court must find that (1) the
harm to the plaintiff if the injunction is denied outweighs the harm to the
defendant if the injunction is granted, and (2) the plaintiff will likely
succeed on the merits. Paradise Hills Associates v. Procel, 235 Cal.App.3d
1528, 1537-38 (1991). On appeal, the trial court's decision is reviewed
for abuse of discretion in making the two determinations necessary to
justify the issuance of the preliminary injunction. Paradise Hills, 235
Cal.App.3d at 1538. The finding that a trial court failed to consider the
defendants' First Amendment rights indicates an abuse of discretion and
will support the reversal of a preliminary injunction. See id. at 1546.
The reviewing court is not however confined to the factual findings made
by the trial court. The United States Supreme Court has repeatedly held
that in cases raising First Amendment issues an appellate court "has an
obligation" to examine the record independently to ensure that the judgment
does not unnecessarily intrude on the fundamental right of free expression.
Bose Corp. v. Consumers Union, 466 U.S. 485, 499 (1984) (citing NAACP v.
Claiborne Hardware Co., 458 U.S. 886, 933-34 (1982); Greenbelt Cooperative
Publishing Ass'n v. Bresler, 398 U.S. 6, 11 (1970); St. Amant v. Thompson,
390 U.S. 727, 732-33 (1968); New York Times Co. v. Sullivan, 376 U.S. 254,
284-86 (1964)).
The trial court's interpretation of statutes are legal questions that are
reviewed de novo. Paradise Hills, 235 Cal.App.3d at 1538; Department of
Fish & Game v. Anderson-Cottonwood Irrigation District, 8 Cal.App.4th 1554,
1561 (1992).
=09
V. THE ISSUANCE OF THE PRELIMINARY INJUNCTION IS BARRED BY THE FIRST=
AMENDMENT
The trial court erred and abused its discretion by ignoring Bunner's First
Amendment rights. This error manifested itself in three distinct ways:
the trial court failed to use the enhanced procedural safeguards that are
necessary when a preliminary injunction is sought against the exercise of
First Amendment rights; the trial court failed to consider the gravity of
the constitutional injury caused by the injunction and failed to require
the plaintiffs to assert a more fundamental countervailing interest; and
the trial court failed to consider that for the DVD CCA to prevail on the
merits it will ultimately need to overcome the substantial barriers to a
prior restraint on the freedom of expression.
A. DeCSS is Expression Protected by the First Amendment
Bunner's First Amendment right to publish DeCSS on his website is well
established. He is therefore entitled to the full benefit of the
constitutional protections afforded to this fundamental liberty.
Freedom of speech is a hallmark of both the U.S. and California
Constitutions. The First Amendment to the U.S. Constitution's charge that
"Congress shall make no law . . . abridging the freedom of speech, or of
the press" remains our democracy's proudest pronouncement. Article 1,
section 2 of the California Constitution--"Every person may freely speak,
write and publish his or her sentiments on all subjects . . . . A law may
not restrain or abridge liberty of speech or press"-- does not merely echo
this avowal. Rather it is "more definitive and inclusive than the First
Amendment." Wilson v. Superior Court, 13 Cal.3d 652, 658 (1975).
Computer source code, such as DeCSS, "is an expressive means for the
exchange of information and ideas about computer programming" and is thus
protected by the First Amendment. Junger v. Daley, ___ F.3d ___, 2000 FED
App. 0117P at 2 (6th Cir., April 4, 2000).
A similar decision was reached by the Northern District of California in
Bernstein v. United States Department of State , 922 F. Supp. 1426 (N.D.
Cal. 1996) (Bernstein I). In that case, the court found that
Bernstein's encryption system is written in computer language rather than
in English. . . . [=B6] . . . . The particular language one chooses [does
not] change the nature of language for First Amendment purposes. This
court can find no meaningful difference between computer language,
particularly high-level languages as defined above, and German or French.
All participate in a complex system of understood meanings with specific
communities. . . . [=B6]Whether source code or object code are functional is
immaterial to the analysis at this stage. Contrary to defendants'
suggestion, the functionality of a language does not make it any less like
speech.
Id. at 1434-35.=20
These holdings follow naturally from the jurisprudence acknowledging that
other forms of "coded" speech, such as foreign languages and music, and
other types of "functional" speech, such as chemical and mathematical
formulas and how-to manuals are shielded by the First Amendment. See,
e.g., Ward v. Rock Against Racism, 491 U.S. 781, 790 (1989) (music);
Stanford Univ. v. Sullivan, 773 F.Supp. 472, 474 (D.D.C. 1991) (scientific
expression and debate); United States v. The Progressive, Inc., 467
F.Supp. 990 (W.D. Wisc. 1979) (instructional material regarding
bomb-making). The First Amendment protects all forms of expression,
including "the paintings of Jackson Pollock, the music of Arnold
Schoenberg, and the Jabberwocky verse of Lewis Carroll." Hurley v.
Irish-American Gay, Lesbian & Bisexual Group, 515 U.S. 557, 569 (1995).
That the expression might not be understood by many members of the
audience does not negate its constitutional protection. "[A] musical
score cannot be read by the majority of the public but can be used as a
means of communication among musicians. Likewise, computer source code,
though unintelligible to many, is the preferred method of communication
among computer programers." Junger, 2000 FED App. 0117P at 2.
And, perhaps most importantly, at the hearing before the trial court, the
DVD CCA agreed that "computer code is speech." [RT 39:19-20]
Furthermore, expression over the Internet or by way of web pages is at
the core of protected speech:
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. Through the use of Web pages, mail exploders, and newsgroups, the
same individual can become a pamphleteer. . . . We agree that our cases
provide no basis for qualifying the level of First Amendment scrutiny that
should be applied to this medium.
Reno v. ACLU, 521 U.S. 844, 870 (1997). =20
Bunner's First Amendment right to publish DeCSS does not disappear if
DeCSS contains alleged trade secrets or other confidential information.
See Proctor & Gamble v. Bankers Trust, 78 F.3d 219, 225 (6th Cir. 1996)
(finding a First Amendment right to publish material that was asserted to
be trade secrets, had been filed under seal, and was otherwise
confidential); Ford Motor Co. v. Lane, 67 F.Supp.2d 745,752-53 (E.D. Mich.
1999). Indeed, courts have long protected the First Amendment right of one
to publish confidential information in a variety of contexts, irrespective
of whether the information was initially obtained improperly by someone
else. See Landmark Communications v. Virginia, 435 U.S. 829, 840 (1978)
(rejecting argument that First Amendment protection does not extend to "the
publication of information =91which by Constitutional mandate is to be
confidential'"). See, e.g., Florida Star v. B.J.F., 491 U.S. 524, 526
(1989) (identity of rape victim); Smith v. Daily Mail Publishing Co., 443
U.S. 97, 98 (1979) (identity of juvenile offender); Landmark
Communications, 435 U.S. at 830 (judicial disciplinary proceedings);
Bartnicki v. Vopper, 200 F.3d 109, 113 (3d Cir. 1999) (cellular phone
conversation known to have been illegally recorded), cert. petition filed
(April 19, 2000); In re Application to Adjudge the Providence Journal Co.,
820 F.2d 1342, 1351 (1st cir. 1986), mod. on other grounds on reh'g en
banc, 820 F.2d 1354 (1st Cir. 1987) (surveillance logs received by way of
improper Freedom of Information Act production). See also New York Times
v. United States, 403 U.S. 713, 714, 740 (1971) (White, J. concurring)
(holding that the New York Times could publish the confidential Pentagon
Papers, even though the reporter obtained them without authorization and
possibly as a result of criminal conduct). =20
The preliminary injunction the DVD CCA seeks is a restraint on "pure
speech," that is, speech that is not merely the expressive element of
conduct, or the regulation of which is merely incidental to the regulation
of conduct. See Nebraska Press Ass'n v. Stuart, 427 U.S. 539, 558, 570
(1976) (White, J. concurring). The DVD CCA seeks to restrict Bunner's
right to free speech precisely because they do not want others to know the
ideas Bunner seeks to circulate. The DVD CCA does not contend that Bunner
is using DeCSS to copy or distribute movies, or is acting in concert with
anyone who is. The DVD CCA does not contend that Bunner has himself
violated any contract or confidentiality agreement. The DVD CCA does not
contend that Bunner's mere possession of DeCSS is improper. The undeniable
purpose of the action against Bunner is to stop his communication with
other people.
Although the trial court made passing reference to the defendants'
ability to "discuss and debate the subject," [AA714] it failed to recognize
that DeCSS itself, and not just the topic of the CSS, is protected
expression, and that those who publish are protected in doing so by the
First Amendment.
B. THE PRELIMINARY INJUNCTION IS A PRIOR RESTRAINT ON FREEDOM OF EXPRESSION
An order that prevents one from exercising his or her free speech rights,
rather than addressing the harm caused by an utterance after the fact, is a
"prior restraint." Prior restraints strike at the very heart of the First
Amendment:=20
In determining the extent of the [First Amendment's] constitutional
protection, it has generally, if not universally, been considered that the
chief purpose of the guaranty is to prevent previous restraints on
publication.
Near v. Minnesota 283 U.S. 697, 713 (1930). See Nebraska Press Ass'n v.
Stuart, 427 U.S. 539, 559 (1976) ("[P]rior restraints upon speech and
publication are the most serious and least tolerable infringement on First
Amendment rights."); New York Times v. United States (1969) 403 U.S. 713,
726-27, 730 (stating that prior restraints are permissible only "at time of
war" (Brennan, J. concurring), or when a "direct, immediate and irreparable
damage to our nation or its people" is certain to result) (Stewart J.
concurring)). =20
As a result, any restriction on Bunner's ability to publish DeCSS must
be analyzed by the Court as a restriction on his free speech rights and in
the context of prior restraint jurisprudence.
1. Preliminary Injunctions Against the Exercise of First Amendment Rights
are Subject to Strict Scrutiny and other Procedural Safeguards
California courts, acknowledging the central role of freedom of expression
in our democracy, have applied rigorous procedural safeguards against the
issuance of preliminary injunctions of publication that do not come into
play when such relief is sought in other contexts. A preliminary
injunction may proscribe the fundamental right of free expression only
after strict scrutiny of its elements. Smith v. Silvey, 149 Cal.App.3d
400, 406-07 (1983). Plaintiffs bear a heavy evidentiary burden in
demonstrating that a preliminary injunction against the exercise of free
speech rights is justified. Paradise Hills Associates v. Procel, 235
Cal.App.3d 1528, 1538-39 (1991); Chico Feminists Women's Health Center v,
Scully, 208 Cal.App.3d 230, 247 (1989). A preliminary injunction which
restrains constitutionally protected activity will be upheld only if it is
imposed for a specified brief period of time for the purpose of preserving
the status quo, and a prompt final judicial determination is assured.
People v. Mitchell Bros.' Santa Ana Theater, 118 Cal.App.3d 863, 867-68
(1981). Moreover, a preliminary injunction against speech must be carefully
crafted so that it is neither vague nor overbroad. Ketchens v. Reiner, 194
Cal.App.3d 470, 476-77 (1987).
Federal courts, too, have enhanced substantially the procedural
safeguards and the burden on a party seeking a preliminary injunction
against publication. The U.S. Supreme Court "has insisted upon careful
procedural provisions, designed to assure the fullest presentation and
consideration of the matter which the circumstances permit." Carroll v.
President & Commissioners of Princess Anne, 393 U.S. 175, 181, 183 (1968)
(noting also "the balanced analysis and careful conclusions which are
essential in the area of First Amendment adjudication"). See also Freedman
v. Maryland, 380 U.S. 51, 58 (1965) (requiring "procedural safeguards
designed to obviate the dangers of a censorship system"); Bantam Books v.
Sullivan, 372 U.S. 58, 66 (1963) (stating "the larger principle that the
freedoms of expression must be ringed about with bulwarks").
Although permitted in other contexts, temporary injunctions that may be
deemed necessary to allow the court time to sort out difficult legal or
factual questions are not available to prohibit the exercise of First
Amendment rights. As Justice Brennan stated, concurring in the Pentagon
Papers case, the First Amendment injury occasioned by an injunction that
sought to preserve the confidentiality of documents was not diminished
"because that restraint was justified as necessary to afford the courts an
opportunity to examine the claim more thoroughly." New York Times v.
United States, 403 U.S. 713, 727 (1971) (Brennan, J. concurring). See also
Proctor & Gamble v. Bankers Trust, 78 F.3d 219, 226-27 (6th Cir. 1996)
(rejecting the contention that First Amendment rights could be temporarily
restrained in order to give the court time to study the legal questions).
Compare Wilms v. Hand, 101 Cal.App.2d 811, 815 (1951), cited in trial
court, (noting in a non-free speech context that a preliminary injunction
is warranted when "the questions of law or fact are grave and difficult").
The Sixth Circuit, in reviewing the publication of asserted trade secrets
acknowledged that "the prerequisites for emergency, temporary relief in the
First Amendment realm differ dramatically, and appropriately, from the
realm of everyday resolution of civil disputes governed by the Federal
Rules." Proctor & Gamble Co v. Bankers Trust Co., 78 F.3d 219, 227 (6th
Cir. 1996). The court noted the following differences: (1) the status quo
is to allow publication, not restrain it; (2) ex parte proceedings are
prohibited; (3) publication must threaten an interest more fundamental than
the First Amendment itself; and (4) the standard of review is de novo. Id.=
=20
Moreover, seventy five years of First Amendment jurisprudence have
established beyond dispute that those who seek to restrain or punish speech
bear the burdens of persuasion and proof. See New York Times v. United
States, 403 U.S. 713, 713(1971) (per curiam).
The reason for these "bulwarks" is clear. A preliminary injunction comes
without the benefit of a full consideration of the facts. The parties have
had little opportunity to develop evidence. As whatever evidence there is
is typically submitted by way of declaration, on information and belief,
the parties are denied the opportunity to cross-examine, and the court is
denied the opportunity to assess credibility. This is an extremely
careless mechanism to use when First Amendment rights are at peril. =20
=20
2. The Trial Court Abused its Discretion by Not Applying These Procedural
Safeguards
As its order makes clear, the trial court did not employ the necessary
procedural safeguards in determining whether the preliminary injunction
requested by the DVD CCA should be granted.
The trial court's formulation suffers from several defects. Most
troubling perhaps, is its placement of the burden of proof on Bunner. This
occurs twice. First, the court required Bunner to prove that he has
suffered harm. [AA714] Second, the trial court required Bunner to prove
the absence of misappropriation by showing that Norwegian law permits the
alleged reverse engineering of CSS. [AA714]
In addition, far from manifesting the required strict scrutiny, the trial
court's order reflects the deference with which it received the DVD CCA's
factual assertions. The record is rife with speculation and unsupported
conclusions. Even the court admitted that the plaintiff's misappropriation
case was "problematic at this pre-discovery stage" and noted that the DVD
CCA had "no direct evidence" to support it. [AA713]
Most glaringly, the trial court simply skipped over some of the most
pivotal determinations. The trial court found that CSS is a trade secret.
[AA713] But Bunner did not publish CSS. Noticeably absent is any finding
whether DeCSS, the information that Bunner is being enjoined from
publishing, is or contains trade secrets. Also, the trial court made no
findings about Bunner's--or any particular defendant's--knowledge of
impropriety. Instead, it grouped all of the defendants together as if they
were a single entity.
Nor did the court find that any of the defendants engaged in any
misconduct or were bound by any contract. With respect to Johansen, the
only person the DVD CCA asserts did anything "improper," the court
acknowledged that whether he engaged in misconduct was, at best, equivocal.
The preliminary injunction is defective for other reasons as well. It is
unlimited in time, a feature that is prohibited under the First Amendment
however common it may be in other contexts.
The preliminary injunction is vague. It prohibits Bunner from "posting to
otherwise disclosing or distributing, on [his] website or elsewhere, the
DeCSS program, the master keys or algorithms of the Content Scrambling
system ("CSS"), or any other information derived from this proprietary
information." [AA712] However, neither the court nor the DVD CCA offered
any definition of, or method for, identifying "CSS," "master keys,"
"algorithms" or "proprietary information." There is no way to discern what
is "derived from" the "proprietary information." Bunner is thus uncertain
exactly which computer programs he is enjoined from publishing.
The preliminary injunction is overbroad because it includes within its
reach a prohibition on information that is not the trade secret of the DVD
CCA. DeCSS is different expression than CSS. CSS is one set of
instructions. DeCSS is another. At most, the DVD CCA alleges that DeCSS
contains a single "key" from CSS. [AA480] But it does not indicate
where or what that key is. The injunction extends well beyond the
publication of this single key. See Smith v. Silvey, 149 Cal.App.3d 400,
407 (1983) (striking down as overbroad an injunction that barred both
constitutionally protected speech as well as unlawful activity). Moreover,
the preliminary injunction makes no distinction between authorized and
unauthorized postings or derivations.
The quality of the evidence presented to the trial court is startlingly
weak: anonymous postings on websites, newsgroups and chat rooms,
declarations filled with legal conclusions and argument, unsupported
assumptions about the looming threat of mass piracy. A preliminary
injunction against First Amendment rights requires significantly more.
C. THE TRIAL COURT ERRED IN BALANCING THE HARDSHIPS BECAUSE IT IGNORED
BUNNER'S CONSTITUTIONAL INJURY CAUSED BY THE INJUNCTION AND OVERVALUED THE
DVD CCA'S PURELY ECONOMIC AND PROPRIETARY INTEREST
1. Harm to Bunner
The trial court identified the harm to Bunner and the other defendants as
"truly minimal." [AA714] The court stated:
They will simply have to remove the trade secret information from their
web sites. They may still continue to discuss and debate the subject as
they have in the past in both educational, scientific, philosophical and
political context. Defendants have not provided evidence of any economic
harm which an injunction could currently cause.
[AA714]
The trial court blatantly failed to respect the constitutional injury to
Bunner in denying him the right to publish DeCSS. California courts have
recognized the principle that "[t]he loss of First Amendment freedoms for
even minimal periods of time, unquestionably constitutes irreparable
injury." Ketchens v. Reiner, 194 Cal.App.3d 470, 480 (1987) (quoting Elrod
v. Burns, 427 U.S. 347, 373 (1976)); See also Paradise Hills v. Procel,
235 Cal.App.3d 1528, 1538 (1991) (applying the principle while balancing
the harms in the context of the request for a preliminary injunction of
protected speech). Thus, the temporary nature of a preliminary injunction
does not make the harm suffered less "irreparable." See Nebraska Press
Ass'n v. Stuart, 427 U.S. 539, 559 (1976) (holding that the temporary
nature of the restraint did not reduce the severity of the constitutional
injury).
Moreover, the general public, not just Bunner and the other defendants,
will suffer irreparable harm if the preliminary injunction is entered. See
American Booksellers Ass'n v. Superior Court, 129 Cal.App.3d 197, 206
(1982) (noting "the pervasive chilling effect" of a preliminary injunction
against the exercise of free expression). As the California Supreme Court
has stated:
There can be no doubt that vindications of the rights at stake in this
litigation effectuate fundamental constitutional principles. =91Freedom of
speech is a right which is at the fountainhead of all our liberties' . . .
. While these rights are by nature individual rights, their enforcement
benefits society as a whole. Indeed, only by protecting each individual's
free speech and petition rights will society's general interests in these
rights be secured.
Press v. Lucky Stores, 34 Cal.3d 311, 319 (1983).
=0C 2. Harm to DVD CCA=20
a. DVD CCA's Potential Injury is Purely Economic and Proprietary
When an injunction is sought against pure speech, the trial court must
find that publication "threatens an interest more fundamental than the
First Amendment itself" and forgo the simple balancing analysis that is
used in a standard request for an injunction. Proctor & Gamble v. Bankers
Trust, 78 F.3d 219, 227 (6th Cir. 1996). See also City of Long Beach v.
Bozek, 31 Cal.3d 527, 536 (1982) (holding that First Amendment rights are
awarded substantial weight in counterbalancing tort policies), cert.
vacated, 459 U.S. 1095 (1983), aff'd on remand, 33 Cal.3d 727 (1983);
Smith v. Silvey, 149 Cal.App.3d 400, 407 (1983) (requiring that the
interest sought to be protected by the injunction have "equal dignity and
protection with First Amendment liberties"); In re Providence Journal, 820
F.2d 1342, 1351 (1986) (requiring that the party requesting the preliminary
injunction against publication assert a "near sacred right"). Indeed, the
only cases in which the U.S. Supreme Court has seemed willing to even
entertain the possibility of overriding First Amendment interests are those
in which the interests of co-equal constitutional protections or the fate
of the Republic itself were asserted. Cf. Florida Star v. B.J.F., 491 U.S.
524, 526 (1989) (right to privacy) Landmark Communications v. Virginia,
435 U.S. 829, 841 (1978) (integrity of the judiciary); Nebraska Press
Association v. Stuart, 427 U.S. 539, 551(1976) (Sixth Amendment right to a
fair trial); New York Times v. United States, 403 U.S. 713, 722 (1971)
(Douglas, J. concurring) ("power to wage war successfully").
An economic or property interest in an asserted trade secret simply does
not rise to this lofty level. Allred v. Shawley, 232 Cal.App.3d 1489, 1496
(1991) (noting that in comparing the rights of shopping center owners with
those of speakers, "[t]he balance is tipped in favor of the right to voice
ideas as opposed to the property rights or mere naked title of the owners"=
).
In Proctor & Gamble, 78 F.3d at 225, the Sixth Circuit examined whether
an injunction could issue against the publication of asserted trade secrets
that had been sealed during litigation but obtained by Business Week. The
court found that the companies' "interest in protecting . . . their
commercial self-interest simply does not qualify as grounds for imposing a
prior restraint." Id. See also Paradise Hills v. Procel, 235 Cal.App.3d
1528, 1538, 1542 (1991) (holding that the plaintiff's economic interest was
outweighed by the denial of the defendant's free speech rights).
According to the trial court, the DVD CCA would have suffered a purely
economic harm had the preliminary injunction not issued. [AA714-15] In
finding that this commercial injury outweighed the constitutional injuries
suffered by the defendants, the trial court clearly abused its discretion.
Indeed, the trial court, by seemingly requiring Bunner and the other
defendants to "provide[] evidence of any economic harm," seems to have
gotten the analysis perfectly backward. [AA714]
b. The Evidence of Harm is Deficient
Even if the purely economic harm to DVD CCA could equal Bunner's
constitutional harm, the evidence offered by the DVD CCA falls far short of
what is required.
The harm must be beyond conjecture. The relevant "balancing harm"
analysis is what injury "will result to the moving party" should the
preliminary injunction not issue. Paradise Hills v. Procel, 235 Cal.App.3d
1528, 1538 (1991) (emphasis added). Importantly, the analysis is in the
imperative--will result, not may result. See New York Times v. United
States, 403 U.S. 713, 730 (1971) (Stewart, J. concurring) (requiring a
showing that the absence of the injunction will "surely result in direct,
immediate or irreparable damage") (emphasis added).
The DVD CCA failed to offer anything more than mere averments that
Bunner's acts may result in the alleged harm. It did not produce credible,
factual evidence that irreparable and substantial harm will actually occur.
One of its declarants admitted that large scale movie piracy was presently
only a potentiality. [AA488] The DVD CCA places much emphasis on the
assertion that the music industry has put off the release of DVD audio
because of the security problems. [AA611] However, it fails to articulate
why this is harm to the DVD CCA. Indeed, it seems that the exposure of the
weakness of CSS may have helped DVD CCA avoid liability to the music
industry and forestalled a premature and doomed massive deployment of DVD
audio.
Any claim that irreparable harm should be presumed because the California
Uniform Trade Secrets Act authorizes an injunction [AA611; TR44:1-5] is
also without merit. The presumption of irreparable harm that in other
contexts accompanies a legislative authorization of an injunction is not
available when First Amendment rights are at issue. Pennekamp v. Florida,
328 U.S. 331, 335 (1946); Whitney v. California, 274 U.S. 357, 378-79
(1927) (Brandeis, J., concurring).
Were it otherwise, the scope of freedom of speech and of press would be
subject to legislative definition and the function of the First Amendment
as a check of legislative power would be nullified.
Landmark Communications v. Virginia, 435 U.S. 829, 843-44 (1978).
c. The Potential Harm to DVD CCA is Significantly Diminished by the
Inefficacy of the Preliminary Injunction
The fact that an injunction issued in Santa Clara County may do little to
stop the international publication of the asserted trade secret further
supports the finding that the balance of hardships weighs in Bunner's favor.
Obviously, the court cannot be sure that any less injury "will result,"
if it is not certain the injunction will be enforced. And the resulting
"harm" will not be significantly diminished by the issuance of an
injunction that is ineffectual or incapable of being enforced.
The U.S. Supreme Court has directly and strongly cautioned against prior
restraints that are of questionable efficacy. The Court has stated that a
court cannot "ignore the reality of the problems of managing and enforcing
pretrial restraining orders." Nebraska Press Ass'n v. Stuart, 427 U.S. 539,
565 (1976). Indeed a court "must assess" the "probable efficacy of prior
restraint on publication" to operate as a "workable method" of protecting
the rights that the injunction is designed to address. Id. Specifically
relevant to this assessment is a court's inability to enjoin publication in
other jurisdictions:
The territorial jurisdiction of the issuing court is limited by concepts
of sovereignty. The need for In Personam Jurisdiction also presents an
obstacle to a restraining order that applies to publication at large as
distinguished from restraining publication within a given jurisdiction.
Id. at 565-66 (citations omitted).
The trial court acknowledged the "many potential enforcement problems" of
its injunction. [AA416] It clearly erred when it held that "a likelihood
that an order may be . . . not enforced in other jurisdictions is not a
reason to deny the relief sought." [AA416] A prior restraint against the
freedom of speech cannot rest on such a flimsy foundation.=0C D. THE DVD CCA
IS UNLIKELY TO PREVAIL ON THE MERITS BECAUSE THE COURT IS UNLIKELY TO ISSUE
A PRIOR RESTRAINT AGAINST THE EXERCISE OF FIRST AMENDMENT RIGHTS
When, as here, the balance of hardships sharply favors the defendants, the
grant of a preliminary injunction will be upheld only upon the strongest
showing of likelihood of success on the merits. See King v. Meese, 43
Cal.3d 1217, 1227-28 (1987); Paradise Hills v. Procel, 235 Cal.App.3d 1528,
1542 (1991).=20
1. Prior Restraint is Strongly Disfavored
In this instance, the DVD CCA is unlikely to prevail on the merits because
it is seeking a remedy--a prior restraint against First Amendment
rights--that is "one of the most extraordinary remedies known to our
jurisprudence." Nebraska Press Ass'n v. Stuart, 427 U.S. 539, 562 (1976)=20
As discussed above, a prior restraint strikes at the very heart of the
First Amendment and thus bears "a heavy presumption against its
constitutional validity." Organization for a Better Austin v. Keefe, 402
U.S. 415, 419 (1971). Indeed, for the DVD CCA to prevail on its claims
here, and obtain a prior restraint on pure speech, would be an exceptional
victory.=20
There is perhaps some degree of hyperbole surrounding the prohibition
against prior restraints. And the DVD CCA may well uncover various court
sanctioned examples of injunctions against publication by persons not
voluntarily bound by a confidentiality agreement or fiduciary duty. Yet
the showing that an injunction is a possibility is not persuasive here. A
preliminary injunction will be supported only if DVD CCA could prove that
it will likely obtain its requested relief.
Moreover, that prior restraints on the publication of trade secrets may
have been found appropriate in other cases does not negate the strict
scrutiny and enhanced burden of proof that the DVD CCA will confront in
order to get this injunction.
The California Uniform Trade Secrets Act's authorization of injunctive
relief as a remedy when trade secrets have been misappropriated does not
provide that proof. To the extent the Act authorizes an injunction against
one who owed no fiduciary or other duty of confidentiality to the holder of
the trade secret, the Act is unconstitutional.
The Eastern District of Michigan reached this result in considering the
near identical provisions of the Michigan Uniform Trade Secrets Act in a
case closely analogous to the one presently before this court. Ford Motor
Co v. Lane, 67 F.Supp.2d 745 (E.D. Mich. 1999). In Ford, the defendant
published what were admittedly Ford's trade secrets on his website. It was
believed the defendant obtained the trade secrets from Ford employees who
had violated the confidentiality agreements that were part of their
employment contracts. Ford sought a preliminary injunction prohibiting the
defendant from disclosing any of its internal documents. The district
court held that, under these facts, the Michigan Act's "authorization of an
injunction violates the prior restraint doctrine and the First Amendment."
The court distinguished the case before it from the situation in which one
"plans to reveal a trade secret in violation of an employment contract or
in breach of fiduciary duty." Id. at 750.
The court rejected the argument that these trade secrets should be treated
differently than the information that was the subject of the seminal prior
restraint cases:
Although there are some distinctions one can draw between the case brought
by Ford and the existing precedent on prior restraint, those distinctions
are defeated by the strength of the First Amendment. While it may be true
that Ford's trade secrets here are more competitive in nature and more
carefully protected than those at issue in Proctor & Gamble, they are
certainly not more volatile than those at issue in the Pentagon Papers
case. While it may be true that publication on the Internet is subject to
fewer editorial restraints than The New York Times, Business Week, or The
Washington Post, the material here is not more inflammatory than the anti-
Semitic tabloid at issue in Near. And while the reach and power of the
Internet rases serious legal implications, nothing in our jurisprudence
suggests that the First Amendment is circumscribed by the size of the
publisher or his audience.
Id. at 752-53.
2. The DVD CCA Failed to Carry Its Heavy Evidentiary Burden of Proving It
Will Likely Prevail on the Merits
Even if the DVD CCA could under some set of facts legally obtain an
injunction against the publication of DeCSS, it failed to carry its heavy
evidentiary burden of proving that it will be entitled to such relief in
this case against defendant Bunner. Given what even the trial court
acknowledged to be the weak state of the evidence at present, it is, at
best, impossible for a court to decide whether the DVD CCA will prevail on
the merits. A finding that they will likely prevail is simply not
supported by the record.
a. DVD CCA is Not Likely to Prove that DeCSS is or Contains Their Trade
Secrets
The trial court relied on its finding that CSS is a trade secret.
However, the court made no finding that DeCSS is or contains the DVD CCA's
trade secrets. Indeed, the DVD CCA has scarcely articulated what its trade
secret is, let alone offer considerable evidence that it exists within
DeCSS. =20
The DVD CCA is clearly unhappy with the results of DeCSS. It clearly
wishes that the DVD security system were impenetrable. Bunner does not
dispute that the DVD CCA is mad. However, just because DeCSS undermines
the DVD security system, it does not necessarily follow that DeCSS contains
the DVD CCA's trade secrets. It is entirely possible that DeCSS instructs
a computer to play a DVD movie in some other fashion. And the burden
remains on the DVD CCA to prove otherwise.
In addition, it is difficult to divine what "economic value" CSS derives
"from not being generally known to the public," as the Uniform Trade
Secrets Act requires. Cal. Civil Code 3426.1. The trial court did not
identify any. Any value seems to lie not in CSS itself, but in the
underlying copyrighted works that it is hoped CSS will protect. Perhaps
for antitrust reasons, the DVD CCA is a non-profit corporation made up of
the major competitors within the movie, electronics and computer
industries. It does not derive a profit from licensing CSS; nor does it
compete with rival computer security companies for the right to control the
DVD security system. Indeed, DVD CCA's "competitive advantage" in the
market derives not from the appeal of CSS, but from the fact that there is
no one to provide content or equipment to its competitors. CSS derived its
"value" not from being secret, but from being effective. Now that CSS is
no longer as effective as was believed, DVD CCA can exercise its market
dominance to impose a new security system on the industries.
Therefore, the trial court could not reasonably have found that there was
a strong likelihood that the DVD CCA would prove that DeCSS was or
contained its trade secret.
b. DVD CCA is Not Likely to Prove that the Claimed Trade Secrets Were
Misappropriated
If the DVD CCA is able to prove that DeCSS contains its trade secrets, it
must then prove that Bunner misappropriated these trade secrets.
The California Uniform Trade Secrets Act defines "misappropriation," in
pertinent part, as:
disclosure . . . of a trade secret of another by a person who: . . . [=B6]
at the time of disclosure . . . knew or had reason to know that his or her
knowledge of the trade secret was: [=B6] derived from or through a person wh=
o
had utilized improper means to acquire it.
Cal. Civil Code =A73426.1.
Thus, in order to prevail on the merits, the DVD CCA will have to prove
that Bunner knew or had reason to know that the asserted trade secret was
acquired initially through improper means.
i. The circumstantial evidence does not prove that Bunner should have
known that the ideas in DeCSS were acquired improperly
The DVD CCA cannot assert that Bunner knew or should have known that DeCSS
contained trade secrets that were obtained improperly merely because the
DVD CCA told him so. [RT28:10-14] This is precisely the type of "mere
averment" that is insufficient to sustain a prior restraint on free speech.
If anyone could guarantee their "likelihood of success" by merely stating
their belief that an improper action occurred, then First Amendment rights
could be cast aside routinely. Such a policy would in effect empower
everyone to be a censor merely by putting another on notice of their
allegation.
The trial court imputed to Bunner knowledge of impropriety based on
circumstantial evidence, "available mostly due to various defendants'
inclination to boast about their disrespect of the law." [AA413] This
finding is troublesome for two reasons. Bunner was not one of the
"boasters." Nor is there any evidence that Bunner was part off the "hacker
community" to which the DVD CCA ascribes a common body of knowledge. The
court's holding thus imputes to Bunner the knowledge of his unknown and
unnamed non-parties, a holding without support in the law.
Second, the court's conclusion mischaracterizes the "boasts." The
evidence submitted by the DVD CCA demonstrated that some of the
participants in discussions on various Internet newsgroups acknowledged
that the publication of, linking to, or joyful celebrations about DeCSS had
upset the motion picture and DVD industries. [AA390, 392, 395, 401, 403,
408, 427, 448] Many of the "boasters" expressed resentment that innocent
people were being haled into court. [AA370, 374] Although some of the
"boasting" indicated a belief that the original writing of DeCSS may have
been improper, much of it reflected the opposite. Indeed, many of the
"boasters" directly questioned why reverse engineering would be improper
and expressed doubts that DeCSS contained bona fide trade secrets. [AA380,
383-88, 398, 405, 445, 451, 464, 466, 470] There is scarcely a general
consensus or mutual understanding that the formulation of DeCSS was
improper that could reasonably support imputing knowledge to the general
public, or to Bunner in particular.
The trend here is obvious. The DVD CCA and the movie industry being
outraged is no proof of any impropriety. They likely would have been
unhappy regardless of the "propriety" of the circumstances. The fact that
those who advocate for the open sharing of source code and oppose the
commercial usurpation of the Internet were boastful is no proof of
impropriety. They too likely would have been happy regardless of the
propriety of the situation.
ii. DVD CCA must prove that Bunner should have known a question of
unresolved Norwegian law=20
The trial court found that "the trade secret was obtained through reverse
engineering." [AA713] This holding alone sheds no light on what Bunner
knew or should have known. As the trial court acknowledged, reverse
engineering alone is not improper means. See Civ. Code =A73426.1(a) &
Legislative Committee comment 2 (1984 addition). To be improper, the
reverse engineering must occur in violation of a fiduciary or contractual
duty of confidentiality.
Whether the asserted reverse engineering in this case violated a duty of
confidentiality requires the resolution of several complex legal and
factual questions. The DVD CCA asserts that the reverse engineering was
performed in Norway by a 15 year old citizen of Norway who was subject to a
"click license agreement" that prohibited reverse engineering even if this
Norwegian citizen did not actually click on the "Agree" box to indicate his
agreement. The DVD CCA will thus ultimately have to prove that such an
agreement existed and was legally enforceable, as against a minor, under
Norwegian law whether or not it was actually "clicked."
Even if the DVD CCA could establish this factual predicate and convince
the court that Norwegian law should be interpreted in its favor, it must
still prove then that Bunner actually knew or should have known that the
reverse engineering was improper. That is, the DVD CCA must impute to
Bunner an understanding of the Norwegian law on the enforceability of click
licensing agreements with minors. As discussed above, this is a daunting
task considering that even the trial court was "not well positioned to
interpret Norwegian law."
Given this context and the enhanced evidentiary burden the DVD CCA will
confront because they seek a prior restraint, the DVD CCA's task is
mammoth. The trial court acknowledged that the DVD CCA's is presently
"problematic" on several points. It simply cannot be said that, at
present, the DVD CCA will likely prevail on the merits.=20
=0CVII. CONCLUSION
Prior restraints on the freedoms of expression and publication are perhaps
the most disfavored remedy in our legal system. Requests for prior
restraints in the form of preliminary injunctions must be scrutinized with
great skepticism because they typically arise before there has been an
opportunity to fully develop the evidence and present to the court the
complete picture of a dispute.
The DVD CCA is understandably unhappy. DeCSS, an alternative to CSS, was
formulated and distributed broadly and for free on the Internet. However,
rather than accept that CSS is not completely effective, and (a) move on to
develop an improved security concept, (b) seek damages from those it
believes are responsible for the problem, or (c) avail itself of the strong
protections that copyright law affords against the illegal commercial
production and distribution of pirated movies, DVD CCA seeks an
extraordinary remedy. It seeks to have the courts control in perpetuity
the publication of DeCSS. It seeks an injunction against everyone,
including appellant Andrew Bunner, who made DeCSS available via his or her
web site regardless of whether he or she had any connection to the
formulation of DeCSS, and regardless of where that person lives.
The trial court clearly abused its discretion in granting the preliminary
injunction. The publication of DeCSS is protected by the First Amendment,
and thus the injunctions the DVD CCA seeks, both the preliminary injunction
granted by the trial court and the permanent injunction that comprises its
ultimate claim for relief, are prior restraints. Yet the trial court
failed to acknowledge the fundamental constitutional questions involved,
failed to employ the procedural safeguards that are warranted when First
Amendment rights are threatened, and failed to appreciate the irreparable
harm that is suffered by one who is denied his or her First Amendment
rights for even brief periods.
The trial court's order must be reversed and the request for the
preliminary injunction denied.