Facilitator: Judge Ronald Whyte, Senior United States District Judge, Northern District of California
Judge A. Howard Matz, Senior United States District Judge, Central District of California
What lawyers should do to make disputes more meaningful to the judge. The process of achieving an appellate decision is radically different from the trial level. Not just the benefit of 3 minds; the record is frozen; no preliminary injunctions/other matters making the trial judge’s job challenging. On any given day he was working on a copyright case, it’s highly likely that at some point that day he was also imposing a sentence in a criminal case or doing other criminal proceedings; dealing with a copyright case in a quick manner fairly and impartially when the stakes/status of the litigants is so different—David and Goliath; we get a lot of subpoenas when the user turns out to be a teenager seeking music noncommercially. We have a flood in the Central District who aren’t represented by lawyers. Not new to have pro se plaintiffs, but new to have pro se defendants, due in part to collapse of housing market and removal of eviction proceedings to federal court but also due in part to IP. Some firms are going after little people; judge has obligation to look for the merits, but it’s not comfortable.
All of this is going on while you’re dealing with the niceties/complexities of the DMCA. Very often the judge who has to address your dispute is doing so without much guidance from above in the way of precedent. Good idea to ask the judge what they’d like you to focus on. Is it new technology? Is it implications for broader economic considerations? Is it the words of the law? Can be hard to prepare, but if it works, it will really help you help the client and the judge.
Told story of a case in which the defendant was allegedly using stolen source code. Was baffled; in that case, he did something rarely done but potentially terrifically helpful: appointed his own expert after a hurried procedure inviting both sides to recommend people for his consideration to teach him some basics about the source code. The experts were very accomplished—academics from established universities. Did try to at least have more than a working familiarity with the basics/fundamentals, sitting side by side with a UC-Irvine professor. We did that over weekends. Process of deciding who should pick should involve lawyers. We kept a record of our communications, maintaining those notes and allowed lawyers to request production though they didn’t. Learned enough to preside over the case. At the end, he asked the expert for his view (sealed) and he looked in the sealed envelope after making his decision—he ended up disagreeing with the expert.
Variants are available to judges—can have not a technical adviser for the court with the right to communicate off the record or court-appointed experts testifying in court. More common in patent cases.
Kramer: you presided over Perfect 10 and UMG; did you know their significance?
J. Matz: knew it would go up; it’s rare for a district court to create a precedent without appellate review. Very often judges make decisions that need to be made, even though they’re not comfortable making them—sometimes they think that if they’re wrong, the court of appeals will reverse them; sometimes they just have to act. It’s not comfortable to issue a ruling no matter how hard you’ve worked when you know that you don’t know the full record the way you would’ve known it if you were a lawyer on one side. Must make choices about how to spend time.
Tyler Ochoa: Frequent 512 issue is what “knowledge” means.
J. Whyte: I didn’t think knowledge was a big issue in Netcom. “Knowledge” was used without having to resolve exactly where the knowledge was; tough question.
J. Matz: can arise in terms of the adequacy of takedown notices. Has been frustrated in a case with more than 30,000 works were the subject of an infringement claim, and many works infringed many times; issues of TM too. Issues with adequacy of notice as well as adequacy of assignments/ownership claims. How do lawyers get their arms around such sprawling facts? Knowledge is a spectrum.
Monahan: start with common sense. A general claim that there’s a bunch of infringing stuff on your site—if that’s sufficient, the DMCA is worthless. If someone can send a letter saying “take this item down and all future items of this sort” and have that be effective, that could also shift the monitoring burden to eBay. Very hard for eBay to have actual notice outside of DMCA—it would always be red flag knowledge unless an eBay employee knew the guy who was posting the illegitimate stuff.
Whyte: what if it’s something that’s often counterfeited?
Monahan: unofficially, yes, we went as far as we could with proactive, voluntary searching to figure out non-brand-specific terms for counterfeiting—slang terms that we learned over time were indicia of piracy, e.g., “silver discs” in music (? This might be slang I misunderstood). But at the end of the day, if there’s no indicia on the face of it we have the rights owner make the call. We apply the same approach with TM; worked so well in copyright that we did it in TM too. Have reached out to some owners for help with indicia.