January 7, 2000

By CARL S. KAPLAN

DVD Lawsuit Questions Legality of Linking

or the second time in as many months, an American court has been asked to wrestle with a problem whose answer could determine the future look and free-wheeling nature of the World Wide Web.

Related Articles DVDs Are a Step in Making the VCR Obsolete (January 7, 2000) Judge Rejects Effort to Block DVD Program (December 31, 1999)

The legal puzzle is simple to pose but difficult for some to answer: Under what circumstances, if any, is hyperlinking to information in cyberspace legally taboo?

Proponents of the freedom-to-link say that any effort to curtail linking is impractical and would chill speech on the Web. Others say that in certain cases -- such as knowingly linking to a stolen text or secret formula posted online -- the practice has to be discouraged, lest private property become a meaningless concept in cyberspace. Both sides agree that the issue is a crucial one for the Internet, which relies on links.

In the latest dispute raising the issue, a group representing Hollywood and the consumer electronics industry last week accused 72 Web site programmers in the United States and other countries of illegally posting, or linking to, an underground software program called DeCSS.

In is unclear who precisely created the DeCSS program, but several news reports have said it was a band of Norwegian programmers. The program unlocks, or decrypts, the security system on DVD video movies, an action that industry representatives say paves the way for wholesale piracy of a new medium.

In its complaint, filed last week in Santa Clara County Superior Count, in California, the California-based DVD Copy Control Association, which licenses technology for DVD video movies, asserted that all of the defendants, as well as hundreds of other potential defendants around the world, violated trade secret law when they posted, or linked to sites that posted, DeCSS. The group argued that even though the defendants did not create DeCSS, they are nevertheless liable for its dissemination because they knew, or should have known, that the program was the result of an original sin -- it was improperly designed by its creator with help from the association's trade secrets.

A team of volunteer lawyers, who are representing one of the defendants, Andrew Bunner, is expected to issue legal papers on Friday answering the charges. Bunner has since taken down his posting.

Beyond the narrow questions of trade secret law is a larger issue involving the First Amendment.

The DVD Copy Control Association is seeking a court order that would prevent the defendants from continuing to post the DeCSS program or link to it. Last week, Judge William Elfving denied, without comment, the group's request for an emergency temporary restraining order. A more complete hearing for a preliminary injunction is scheduled for Jan. 14.

The essential facts of the DVD case are straightforward. DVDs, or digital versatile discs, are parts of a new medium that enables consumers to view movies and other images encoded on a 5-inch shiny disk. The disks are played with specially licensed DVD drives and players, which operate in tandem with necessary software. To prevent copying, the disks are encrypted with a special proprietary technology called Contents Scramble System (CSS).

According to legal papers, in late October 1999, a computer program called DeCSS, which is capable of decrypting the DVD disk for viewing on an unlicensed player, appeared on a Web site in Norway. The program and links to it soon spread quickly around the world, despite efforts by the DVD Copy Control Association to stamp it out.

Jeffrey Kessler, a lawyer for the association, said in an interview that the creator of DeCSS either improperly hacked the group's CSS proprietary technology, or improperly reverse-engineered it by violating a user agreement on licensed software that banned reverse engineering. Either way, the original creator misappropriated the group's trade secrets, he said. And once the program began appearing on the Internet, his client was forced to take action, he added.

"If the [DeCSS] program were to spread everywhere, as the defendants are trying to do, it will undermine the whole basis upon which DVD" is being readied for the market, he said. DeCSS, he said, is capable of being combined with other software by consumers to strip data off DVDs and make illicit copies.

Kessler said his client sued linkers, as well as those who posted DeCSS, because "all of the linkers . . . acknowledged the wrongful nature of this and encouraged people to use" the DeCSS software. The defendants were not "passive" or innocent linkers, he said.

He added that the case is similar to another case pending in federal court in Salt Lake City, in which a judge last month issued an injunction banning a couple from posting the Web addresses of sites that posted copyrighted material owned by the Mormon Church. That decision is being appealed to the United States Court of Appeals.

Allonn E. Levy, a private lawyer in San Jose who is helping the defense team, which includes Robin Gross, a counsel with the Electronic Frontier Foundation, and Eben Moglen, a professor at Columbia Law School, said in an interview that the defense will mount a multi-pronged attack.

For one thing, he said, the defense plans to dispute whether the original creator of DeCSS improperly used any trade secrets. It is entirely possible, he said, that the unknown creator merely engaged in lawful reverse-engineering -- without violating any software user agreement. The purpose of DeCSS is to allow users to play DVDs on computers that run Linux, an alternative computer operating system, he said. He added that DeCSS was not a piracy product.

Internet links of interest to Cyber Law Journal readers

Even if there were an original sin, he argued, there is insufficient evidence that the defendants engaged in any kind of conspiracy. He said that in disseminating DeCSS the defendants believed that they were linking and posting to a program that was lawfully designed.

Beyond the narrow questions of trade secret law is a larger issue involving the First Amendment, which protects computer code, a form of speech, said the defense lawyers.

"The problem here is that manufacturers of intellectual property are willing to attempt an extraordinary global limit on freedom of speech in order to protect their content-protection systems," said Professor Moglen of Columbia.

He added: "Once the secret [of DeCSS] is out, can you stop everyone from talking about it? A preliminary injunction here would essentially stop a public discussion about how DVDs work. That's a prior restraint of an important public conversation -- something the First Amendment limits."

Lawyers who are not involved in the case are divided about the issues.

Claude Stern, a partner at Fenwick & West, a Palo Alto, Calif., law firm with a large high-tech practice, rejected the defense's First Amendment argument. He maintained that by suing linkers the DVD Copy Control Association was rightfully spreading the word that is it not kosher to link to or post some types of private information on the Internet. "There's a tremendous amount of content that could be distributed on the Net but can't be because of a fear by intellectual property owners of unauthorized copying," he said, adding, "In the end, the public is harmed" by the activity of the DVD defendants.

But Mark Sableman, a lawyer who practices intellectual property law with the law firm Thompson Coburn in St. Louis, said it was problematic to sue linkers -- who could range from individual Web site programmers, who are the modern equivalent of pamphleteers, to media organizations that are reporting the news.

Noting that one of the "linking" defendants in the DVD case is Slashdot, a news Web site, he said: "If the media is just reporting what is going on, and simply referencing sites, I think it's extreme to go after them for trade secret misappropriation."

"The Web is changing everything," Sableman said. "Maybe it's changing our views of the kinds of secrets we can keep."

CYBER LAW JOURNAL is published weekly, on Fridays. Click here for a list of links to other columns in the series.

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Related Sites
These sites are not part of The New York Times on the Web, and The Times has no control over their content or availability.

• DVD Copy Control Association Inc.

• Electronic Frontier Foundation

• Slashdot

  Also of Interest

• Defendant's legal authorities cited at TRO oral argument, from Robin D. Gross's personal Web site, and Gross's Virtual Chronicle," which includes links to legal documents in the case

• Superior Court of California, County of Santa Clara

• California's Uniform Trade Secrets Act: Definition of Misappropriation, from Robin D. Gross's personal Web site

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Carl S. Kaplan at kaplanc@nytimes.com welcomes your comments and suggestions.

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