8th Circuit Holds RIAA Cannot Use 512(h) Subpoenas on ISPs for Info on P2P Infringers

January 4, 2005. The U.S. Court of Appeals (8thCir) issued its split opinion [PDF] in RIAA v. Charter Communications, reversing the District Court, and holding that a DMCA Section 512(h) subpoena may not be issued to an ISP that is merely acting as a conduit for the P2P infringement of copyright protected music files.

The Appeals Court followed the reasoning contained in the opinion [16 pages in PDF] of the U.S. Court of Appeals (DCCir) in an almost identical case, RIAA v. Verizon. That case is also reported at 351 F.3d 1229. There is also a pending petition for writ of certiorari in that case. See also, story titled "DC Circuit Reverses in RIAA v. Verizon" in TLJ Daily E-Mail Alert No. 804, December 22, 2003.

The facts in the two cases are very similar. In both cases, the plaintiff is the Recording Industry Association of America (RIAA), which represents music companies whose copyrights are being infringed by people using peer to peer (P2P) systems. In both cases, the RIAA obtained § 512(h) subpoenas from the Clerk of the Court to obtain records from broadband internet access providers that would enable the RIAA to identify individual P2P infringers. In both cases, the District Court allowed the procedure. And, in both cases, the Court of Appeals reversed. In the present case the Appeals Court wrote that "We agree with and adopt the reasoning of the United States Court of Appeals for the District of Columbia Circuit in Verizon as it pertains to this statutory issue."

Both cases were decided on the basis of a complex interpretation of several interrelated statutory provisions.

Judge Douglas Ginsburg wrote the opinion of the DC Circuit, in which Judges Stephen Williams and John Roberts joined. The 8th Circuit was split. Judge Kermit Bye wrote a 13 page opinion, in which Judge Myron Bright joined. Judge Diana Murphy wrote a longer and vigorous dissent.

17 U.S.C. § 512, which was enacted as part of the Digital Millennium Copyright Act (DMCA), provides internet service providers (ISPs) a safe harbor from liability for infringement based upon the activities of their users. There are four specific limitations on liability. § 512(a) pertains to "transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections". This section provides Charter Communications a safe harbor from liability for P2P infringement of music files. The opinion also refer to this as "conduit service".

§ 512(b) pertains to "the intermediate and temporary storage of material on a system or network". § 512(c) pertains to "material that resides on a system or network controlled or operated by or for the service provider". And, § 512(d) pertains to "referring or linking users to an online location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link".

§ 512(h) then provides, in part, that "A copyright owner or a person authorized to act on the owner's behalf may request the clerk of any United States district court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this subsection." The statute then provides that the requester should also provide a copy of the 512(c)(3) notice, a proposed subpoena, and a sworn declaration.

The § 512(c)(3) notice must include, among other things, an "Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material." (See, § 512(c)(3)(a)(iii).)

However, the statute does not expressly limit the availability of § 512(h) subpoenas to § 512(c) situations.

§ 512(h)(5) then provides, in part, that "Upon receipt of the issued subpoena, ... the service provider shall expeditiously disclose to the copyright owner or person authorized by the copyright owner the information required by the subpoena, notwithstanding any other provision of law and regardless of whether the service provider responds to the notification."

The RIAA obtained subpoenas, from the Clerk of the Court of the U.S. District Court (EDMO), directed to Charter Communications, a cable company that provides broadband internet access service, pursuant to § 512(h). These subpoenas required Charter to produce the names, physical addresses, telephone numbers, and email addresses of approximately 200 of Charter's subscribers. Charter moved to quash the subpoenas in the District Court. The District Court denied the motion. This appeal followed.

The Appeals Court reversed. Judge Bye reasoned that the § 512(c) safe harbor, and the safe harbor provisions found in §§ 512(b) and (d) each "protect an ISP from liability if the ISP ``responds expeditiously to remove, or disable access to, the material that is claimed to be infringing upon notification of claimed infringement as described in [§ 512](c)(3).´´ 17 U.S.C. §§ 512(b)(2)(E), 512(c)(1)(C), and 512(d)(3) (emphasis added). In other words, a specific purpose of the notification provision is to allow an ISP, after notification, the opportunity to remove or disable access to infringing material and thereby protect itself from liability for copyright infringement. Therefore, as one might expect, each safe harbor which covers an ISP function allowing the ISP to remove or disable access to infringing material (i.e., the storage, caching, and linking functions) refers to the notification provision and contains a remove-or-disable-access provision." (Parentheses and emphasis in original.)

Judge Bye continued that § 512(a), which is the safe harbor implicated in this case, "does not reference the notification provision of § 512(c)(3)(A), nor does it contain the remove-or-disable-access provision found in the three safe harbors created for the storage, caching, and linking functions of an ISP. The absence of the remove-or-disable-access provision (and the concomitant notification provision) makes sense where an ISP merely acts as a conduit for infringing material -- rather than directly storing, caching, or linking to infringing material -- because the ISP has no ability to remove the infringing material from its system or disable access to the infringing material."

Thus, the Judge Bye concluded, "the text and structure of the DMCA require the ISP to be able both to locate and remove the allegedly infringing material before a subpoena can be issued against it."

Judge Murphy, in her dissenting opinion, concluded that "The subpoena requested by the RIAA in this case was authorized by and in compliance with the DMCA, and the district court's order enforcing it should be affirmed."

She reasoned that while § 512(h) references § 512(c), the structure of the statute, and in particular, the wording of § 512(c), contemplates issuance of § 512(h) subpoenas where the activity of the ISP falls within the § 512(a) safe harbor.

She emphasized the above quoted language of § 512(c)(3)(a)(iii). She argued that § 512(h) "only references § 512(c)(3)(A) to indicate the kind of information which needs to be given to the clerk to request a subpoena". It does not limit the subpoenas to § 512(c) activities. Rather, it identifies both material that is "claimed to be infringing" and material that is "the subject of infringing activity and that is to be removed or access to which is to be disabled."

She wrote that "The distinction within § 512(c)(3)(A) between material ``claimed to be infringing´´ and material that is ``the subject of infringing activity and that is to be removed or access to which is to be disabled´´ appears to carry forward the initial distinction in the DMCA between § 512(a) conduit ISPs and §§ 512(b)-(d) storage ISPs. The copyrighted material stored on an ISP's network becomes the subject of infringing activity when it is unlawfully duplicated by subscribers. In order to remove such material or disable access to it, a storage ISP needs it to be identified. On the other hand, when a subscriber transfers copyrighted material through a conduit ISP, that service provider cannot remove the material from the network. It can, however, provide identifying information about the offeror of the material ``claimed to be infringing.´´ Indeed, as the government points out, the subsection's two categories of material are not mutually exclusive, and a conduit ISP can indirectly disable access to material by terminating the accounts of an infringing subscriber."

Judge Murphy also offered a further rationale for affirming the District Court. "To interpret the statute in the way Charter urges, and the court adopts, is to block copyright holders from obtaining effective protection against infringement through conduit service providers. The repercussions of infringement via the internet are too easily ignored or minimized. Regarded by some as an innocuous form of entertainment, internet piracy of copyrighted sound recordings results in substantial economic and artistic costs. ... It is not just faceless corporations who pay the cost. Local music retailers are also vulnerable to the allure of free music ... and artists can lose economic incentive to create and distribute works."

She added that "it is the ISPs who have the names and personal addresses of the infringers. The only viable way for copyright owners to vindicate their intellectual property rights in a timely manner when infringing materials are transmitted across peer to peer networks is to subpoena the ISPs for disclosure of the identities of alleged infringers."

Judge Bye argued, to the contrary, that "organizations such as the RIAA can also employ alternative avenues to seek this information, such as ``John Doe´´ lawsuits. In such lawsuits, many of which are now pending in district courts across the country, organizations such as the RIAA can file a John Doe suit, along with a motion for third-party discovery of the identity of the otherwise anonymous ``John Doe´´ defendant."

This case is Recording Industry Association of America v. Charter Communications, Inc., U.S. Court of Appeals for the 8th Circuit, App. Ct. No. 03-3802, an appeal from the U.S. District Court for the Eastern District of Missouri, D.C. No. 4:03MC273CEJ.

For more information about RIAA v. Verizon, see the TLJ stories titled "RIAA Seeks to Enforce Subpoena to Identify Anonymous Infringer" in TLJ Daily E-Mail Alert No. 499, August 27, 2002; "Verizon and Privacy Groups Oppose RIAA Subpoena" in TLJ Daily E-Mail Alert No. 501, September 4, 2002; "District Court Rules DMCA Subpoenas Available for P2P Infringers" in TLJ Daily E-Mail Alert No. 588, January 22, 2003; "Law Professor Submits Apocalyptic Declaration in RIAA v. Verizon" in TLJ Daily E-Mail Alert No. 596, February 3, 2003; "DOJ Files Brief in Support of RIAA in Verizon Subpoena Matter" in TLJ Daily E-Mail Alert No. 646, April 22, 2002; "District Court Rules That A DMCA § 512(h) Subpoena for the Identity of an P2P Infringer Does not Violate the Constitution" in TLJ Daily E-Mail Alert No. 649, April 25, 2003; "Court of Appeals Denies Stay in RIAA v. Verizon" in TLJ Daily E-Mail Alert No. 674, June 5, 2003; and "Pacific Bell Internet Services Sues RIAA Over Infringer Subpoenas" in TLJ Daily E-Mail Alert No. 709, August 1, 2003.