www.NicolaBattista.it © ® ♪

A quanto pare, il Piratpartiet svedese ce la farà: un seggio al Parlamento Europeo per i “pirati” alleati di Pirate Bay Continua…

Sorpresa: il giudice del processo contro Pirate Bay è legato ad associazioni pro-copyright.
Appello o nuovo processo? Continua…

Un passo avanti verso l’estensione del copyright sui master discografici in Europa? Forse no. Contrapposizioni, sorprese e confusione attorno alla discussa proposta che sembra arrestarsi Continua…

Finire in galera a Denton, Texas, ed avere nome e faccia notificati al mondo via Twitter e Twitpic. È la prova che il Grande Fratello è ormai tra noi? Forse no… Continua…

Emessa la sentenza contro i più controversi e popolari “pirati” della Rete: condannati i quattro responsabili del noto servizio di Torrent svedese.
Si conclude una battaglia importante, ma i giochi restano aperti… Continua…

Gli svedesi del tracker BitTorrent più famoso del mondo si preparano a una svolta: maggiore privacy per gli utenti grazie a un Virtual Private Network. Ma i guai non sono finiti… Continua…

Fa molto parlare di sé ultimamente: Muziic è di sicuro una utile interfaccia e un pratico convertitore di file.
Ma niente di più; e neppure una minaccia per il copyright…
Continua…

Di bene in meglio: il loro servizio è una bufala, per alcuni potrebbe persino nascondere una truffa bella e buona. L’ultima scoperta è capitata per caso al sottoscritto stamattina: vi sembrerà strano, ma c’è musica apertamente pirata in Qtrax. Continua…

Lo scomparso ex Presidente russo Boris Nikolaevich Eltsin, passa alla storia come figura controversa oltre che come primo Presidente della Russia. Continua…

Nel marasma di notizie dette, sentite, lette, pubblicate, strillate in rete e non solo, pochi sembrano aver raggiunto il nocciolo della questione Napster.

Mentre cloni di questo software ma anche siti musicali molto noti muoiono come mosche, tutti si affannano a parlare del programmino sviluppato dallo “studente” Shawn Fanning possibilmente a sproposito e senza leggere tra le righe delle tonnellate di cartaccia prodotta dai legali delle case discografiche e dai giudici.
Il settore della musica digitale è drogato da citazioni in giudizio da parte delle major, alternate a crolli sull’isterico listino NASDAQ; in un panorama complesso e sfaccettato, si capisce come quella di Napster che agli occhi dello spettatore appare come l’unica importante situazione legata alla musica in rete sia in realtà solo parte di uno scenario molto più vasto, che ha visto (come tanti altri settori della cosiddetta new economy) un boom rapido e scellerato, seguito da una crisi altrettanto rapida nonché profonda.

L’estate scorsa, Napster aveva avuto una prima ingiunzione sfavorevole (ad opera del giudice Marilyn Hall Patel) e solo un ricorso preparato in fretta gli aveva permesso di sopravvivere.
I media, dal 12 febbraio – giorno del verdetto dei giudici del Ninth Circuit contro Napster – si affannano a fare a gara a chi le spara più grosse.

La verità è una sola: Napster non è chiuso, non è stato multato né condannato. Ma i giudici hanno fatto un elegante scaricabarile rispedendo la causa al mittente, il giudice distrettuale Patel, ponendo una seria ipoteca sul futuro dell’applicazione peer-to-peer.
E’ chiaro che la Patel, viste le sue tendenze, altro non farà che emettere una implicita condanna. Eppure, il Ninth Circuit le impone di correggere la sua precedente ingiunzione: Napster non chiude, perché può essere usato per scopi legali. Allo stesso tempo, però, è o può essere ritenuto colpevole di copyright infringment che le potrebbe costare molto caro.
Un’affermazione tanto salomonica quanto delirante, per i motivi che andiamo ad esaminare.

La responsabilità collegata alle caratteristiche del prodotto (product liability) viene da alcuni invocata e da altri ignorata del tutto; intanto tutto continua normalmente (anzi, il numero di utenti cresce a dismisura anche perché tutti vogliono assaggiare un sorso di musica gratuita prima che i giudici chiudano definitivamente i rubinetti).
Rasenta il ridicolo il modo stesso in cui il riferimento alla product liability viene presentato dai giudici stessi: in pratica, si è responsabili per il prodotto solo se si è a conoscenza del fatto che qualcuno lo usa per violare i diritti altrui (?!?).
Forse Napster Inc. non è in grado di accorgersi da sola di cosa può fare il proprio software?

Intanto, BMG (che tecnicamente non è proprietaria di Napster ma di fatto può fare il bello e il cattivo tempo avendo messo in gioco svariate decine di milioni di dollari destinate alla “creazione di un sistema legale di distribuzione peer-to-peer”) dichiara le migliori intenzioni ma di fatto è incapace di produrre un subscription model tecnicamente funzionante e capace di “legalizzare” Napster. Delle società di autori e del loro ruolo nella vicenda meglio non parlare: nel caso Napster in particolare sono state più che altro spettatori passivi di uno spettacolo del quale tuttora non comprendono il significato.

E’ paradossale poi che nessuno tra giudici, legali, megacorporazioni, popstar di rilievo – figuriamoci gli stessi utenti che pensano che scaricare file gratis sia il massimo della vita – si accorga che la prima e più grave violazione commessa da Napster riguarda i diritti morali degli artisti piuttosto che i diritti patrimoniali.
Diritti morali offesi dai nomi di file modificati, dai tag ID3 rimossi (ma anche molti grandi siti come Mp3.com li rimuovono e nessuno sembra farci caso), dai download mozzati che risultano in brani mutilati, dalla mancanza di informazioni biografiche e/o di contatti (che invece si possono tranquillamente inserire in pagine di siti come Mp3.com).

Napster permette una copia aperta a tutti, senza controlli reali, e a differenza dei sistemi di copia privata tradizionale (cassette e cd) non solo non prevede una tassazione del supporto, ma non ha alcun supporto da tassare. Ma questa è cosa nota.
Uno scenario sinistro, ma più che possibile, è quello proposto da Wired: una Napster Inc. che dichiara il fallimento e finisce sotto il diretto controllo delle major a cui cede tutto, incluso il prezioso software: non ci resta che continuare a seguire lo spettacolo e a recitare la nostra parte.

* Studio Legale Monti – djbatman {at} olografix(.)org

[Articolo originariamente pubblicato su Interlex]

UMG RECORDINGS, INC. v. MP3.COM, INC.

United States District Court

for the Southern District of New York

2000 U.S. Dist. LEXIS 5761

May 4, 2000

CASE SUMMARY

PROCEDURAL POSTURE: Plaintiffs moved for partial summary judgment in an action against defendant for copyright infringement.

OVERVIEW: Plaintiff record companies sued defendant internet company for copyright infringement, alleging defendant copied their recordings onto its computer servers and replayed the recordings for its subscribers. Plaintiffs moved for partial summary judgment. Defendant argued the copying was protected by the affirmative defense of “fair use.” The court found the fair use defense was indefensible because simply repackaging the recordings to facilitate their transmission through another medium was an insufficient basis for any legitimate claim of transformation; the recordings being copied were close to the core of intended copyright protection and far removed from the more factual or descriptive work more amenable to “fair use;” defendant copied and replayed the entirety of the copyrighted works at issue; and defendant’s activities on their face invaded plaintiffs’ statutory right to license their copyrighted sound recordings to others for reproduction. Defendant’s other affirmative defenses, including copyright misuse, abandonment, unclean hands, and estoppel, were rejected.

OUTCOME: Partial summary judgment holding defendant infringed plaintiffs’ copyrights granted because defendant’s “fair use” defense was indefensible and was denied as a matter of law and defendant’s other affirmative defenses, including copyright misuse, abandonment, unclean hands, and estoppel, were without merit.

COUNSEL:

[*1] For UMG RECORDINGS, INC., SONY MUSIC ENTERTAINMENT INC., ARISTA RECORDS INC., BMG MUSIC, CAPITOL RECORDS, INC., INTERSCOPE RECORDS, plaintiffs: Robert A. Goodman, Arnold & Porter, New York, NY.

For UMG RECORDINGS, INC., SONY MUSIC ENTERTAINMENT INC., BMG MUSIC, CAPITOL RECORDS, INC., INTERSCOPE RECORDS, plaintiffs: Hadrian R. Katz, Jule L. Sigall, Helene T. Krasnoff, Washington, DC.

For UMG RECORDINGS, INC., SONY MUSIC ENTERTAINMENT INC., BMG MUSIC, CAPITOL RECORDS, INC., INTERSCOPE RECORDS, plaintiffs: Steven B. Fabrizio, Recording Industry Association of America, Inc., Washington, DC.

For WARNER BROS. RECORDS INC., ATLANTIC RECORDING CORPORATION, ELEKTRA ENTERTAINMENT GROUP, INC., SIRE RECORDS GROUP, INC., plaintiffs: Katherine B. Forrest, Cravath, Swaine & Moore, New York, NY.

For ARISTA RECORDS INC., plaintiffs: Hadrian R. Katz, Jule L. Sigall, Washington, DC.

For MP3.COM, INC., defendant: Michael B. Carlinsky, Jeffrey A. Conciatori, Orrick, Herrington & Sutcliffe, L.L.P., New York, NY.

OPINIONBY:

JED S. RAKOFF, United States District Judge.

OPINIONThe complex marvels of cyberspatial communication may create difficult legal issues; but [*2] not in this case. Defendant’s infringement of plaintiff’s copyrights is clear. Accordingly, on April 28, 2000, the Court granted defendant’s motion for partial summary judgment holding defendant liable for copyright infringement. This opinion will state the reasons why.

The pertinent facts, either undisputed or, where disputed, taken most favorably to defendant, are as follows:

The technology known as “MP3” permits rapid and efficient conversion of compact disc recordings (“CDs”) to computer files easily accessed over the Internet. See generally Recording Industry Ass’n of America v. Diamond Multimedia Systems Inc., 180 F.3d 1072, 1073-74 (9th Cir. 1999). Utilizing this technology, defendant MP3.com, on or around January 12, 2000, launched its “My.MP3.com” service, which it advertised as permitting subscribers to store, customize, and listen to the recordings contained on their CDs from any place where they have an internet connection. To make good on this offer, defendant purchased tens of thousands of popular CDs in which plaintiffs held the copyrights, and, without authorization, copied their recordings onto its computer servers so as to be able to replay the [*3] recordings for its subscribers.

Specifically, in order to first access such a recording, a subscriber to MP3.com must either “prove” that he already owns the CD version of the recording by inserting his copy of the commercial CD into his computer CD-Rom drive for a few seconds (the “Beam-it Service”) or must purchase the CD from one of defendant’s cooperating online retailers (the “Instant Listening Service”). Thereafter, however, the subscriber can access via the Internet from a computer anywhere in the world the copy of plaintiffs’ recording made by defendant. Thus, although defendant seeks to portray its service as the “functional equivalent” of storing its subscribers’ CDs, in actuality defendant is re-playing for the subscribers converted versions of the recordings it copied, without authorization, from plaintiffs’ copyrighted CDs. On its face, this makes out a presumptive case of infringement under the Copyright Act of 1976 (“Copyright Act”), 17 U.S.C. § 101 et seq.. See, e.g., Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc. 150 F.3d 132, 137 (2d Cir. 1998); Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985). [*4] n1

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n1 Defendant’s only challenge to plaintiffs’ prima face case of infringement is the suggestion, buried in a footnote in its opposition papers, that its music computer files are not in fact “reproductions” of plaintiffs’ copyrighted works within the meaning of the Copyright Act. See, e.g., 17 U.S.C. § 114(b). Specifically, defendant claims that the simulated sounds on MP3-based music files are not physically identical to the sounds on the original CD recordings. See Def.’s Consolidated Opp. to Pls.’ Motions for Partial Summ. J. at 13-14 n.9. Defendant concedes, however, that the human ear cannot detect a difference between the two. Id. Moreover, defendant admits that a goal of its copying is to create a music file that is sonically as identical to the original CD as possible. See Goodman Reply Aff., Robertson Dep., Ex. A, at 85. In such circumstances, some slight, humanly undetectable difference between the original and the copy does not qualify for exclusion from the coverage of the Act.

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Defendant argues, however, that such copying is protected by the affirmative defense of “fair use.” See 17 U.S.C. § 107. In analyzing such a defense, the Copyright Act specifies four factors that must be considered: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” Id. Other relevant factors may also be considered, since fair use is an “equitable rule of reason” to be applied in light of the overall purposes of the Copyright Act. Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417, 448, 454, 78 L. Ed. 2d 574, 104 S. Ct. 774 (1984); see Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 549, 85 L. Ed. 2d 588, 105 S. Ct. 2218 (1985).

Regarding the first factor — “the purpose and character of the use” — defendant does not dispute that its purpose is commercial, [*6] for while subscribers to My.MP3.com are not currently charged a fee, defendant seeks to attract a sufficiently large subscription base to draw advertising and otherwise make a profit. Consideration of the first factor, however, also involves inquiring into whether the new use essentially repeats the old or whether, instead, it “transforms” it by infusing it with new meaning, new understanding, or the like. See, e.g., Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 127 L. Ed. 2d 500, 114 S. Ct. 1164 (1994); Castle Rock, 150 F.3d at 142; se also Pierre N. Leval, “Toward a Fair Use Standard,” 103 Harv. L. Rev. 1105, 1111 (1990). Here, although defendant recites that My.MP3.com provides a transformative “space shift” by which subscribers can enjoy the sound recordings contained on their CDs without lugging around the physical discs themselves, this is simply another way of saying that the unauthorized copies are being retransmitted in another medium — an insufficient basis for any legitimate claim of transformation. See, e.g., Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998) (rejecting [*7] the fair use defense by operator of a service that retransmitted copyrighted radio broadcasts over telephone lines); Los Angeles News Serv. v. Reuters Television Int’l Ltd., 149 F.3d 987 (9th Cir. 1998) (rejecting the fair use defense where television news agencies copied copyrighted news footage and retransmitted it to news organizations), cert. denied, 525 U.S. 1141, 143 L. Ed. 2d 41, 119 S. Ct. 1032 (1999); see also American Geophysical Union v. Texaco Inc., 60 F.3d 913, 923 (2d Cir.), cert. dismissed, 516 U.S. 1005 (1995); Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522, 1530-31 (S.D.N.Y. 1991); see generally Leval, supra, at 1111 (repetition of copyrighted material that “merely repackages or republishes the original” is unlikely to be deemed a fair use).

Here, defendant adds no new “new aesthetics, new insights and understandings” to the original music recordings it copies, see Castle Rock, 150 F.3d at 142 (internal quotation marks omitted), but simply repackages those recordings to facilitate their transmission through another medium. While such services [*8] may be innovative, they are not transformative. n2

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n2 Defendant’s reliance on the Ninth Circuit’s “reverse engineering” cases, see Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000); Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527 (9th Cir. 1993), is misplaced, because, among other relevant distinctions, those cases involved the copying of software in order to develop a new product, see Sony Computer Entertainment, 203 F.3d at 606; Sega Enterprises, 977 F.2d at 1522, whereas here defendant copied CDs onto its servers not to create any new form of expression but rather to retransmit the same expression in a different medium.

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Regarding the second factor — “the nature of the copyrighted work” — the creative recordings here being copied are “close[] to the core of intended copyright protection,” Campbell, 510 U.S. at 586, and, conversely, far removed from the more factual or descriptive [*9] work more amenable to “fair use,” see Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc., 166 F.3d 65, 72-73 (2d Cir. 1999); see also Castle Rock, 150 F.3d at 143-44.

Regarding the third factor — “the amount and substantiality of the portion [of the copyrighted work] use [by the copier] in relation to the copyrighted work as a whole” — it is undisputed that defendant copies, and replays, the entirety of the copyrighted works here in issue, thus again negating any claim of fair use. See Infinity Broadcast, 150 F.3d at 109 (“The more of a copyrighted work that is taken, the less likely the use is to be fair . . . .”); see generally Leval, supra, at 1122 (“The larger the volume . . . of what is taken, the greater the affront to the interests of the copyright owner, and the less likely that a taking will qualify as a fair use.”).

Regarding the fourth factor — “the effect of the use upon the potential market for or value of the copyrighted work” — defendant’s activities on their face invade plaintiffs’ statutory right to license their copyrighted sound recordings to others for reproduction. See 17 U.S.C. § 106. [*10] Defendant, however, argues that, so far as the derivative market here involved is concerned, plaintiffs have not shown that such licensing is “traditional, reasonable, or likely to be development.” American Geophysical, 60 F.3d at 930 & n.17. Moreover, defendant argues, its activities can only enhance plaintiffs’ sales, since subscribes cannot gain access to particular recordings made available by MP3.com unless they have already “purchased” (actually or purportedly), or agreed to purchase, their own CD copies of those recordings.

Such arguments — though dressed in the garb of an expert’s “opinion” (that, on inspection, consists almost entirely of speculative and conclusory statements) — are unpersuasive. Any allegedly positive impact of defendant’s activities on plaintiffs’ prior market in no way frees defendant to usurp a further market that directly derives from reproduction of the plaintiffs’ copyrighted works. See Infinity Broadcast, 150 F.3d at 111. This would be so even if the copyrightholder had not yet entered the new market in issue, for a copyrightholder’s “exclusive” rights, derived from the Constitution and the Copyright Act, include [*11] the right, within broad limits, to curb the development of such a derivative market by refusing to license a copyrighted work or by doing so only on terms the copyright owner finds acceptable. See Castle Rock, 150 F.3d at 145-46; Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir.), cert. denied, 484 U.S. 890, 98 L. Ed. 2d 177, 108 S. Ct. 213 (1987). Here, moreover, plaintiffs have adduced substantial evidence that they have in fact taken steps to enter that market by entering into various licensing agreements. See, e.g., Forrest R. Aff., Ex. F., Vidich Dep. at 61-63; id., Ex. N; Goodman R. Aff., Ex. B., Silver Dep. at 64-65; id., Ex. D, Eisenberg Dep. at 130-32; id., Ex. E., Evans Dep. 145-48.

Finally, regarding defendant’s purported reliance on other factors, see Campbell, 510 U.S. at 577, this essentially reduces to the claim that My.MP3.com provides a useful service to consumers that, in its absence, will be served by “pirates.” Copyright, however, is not designed to afford consumer protection or convenience but, rather, to protect the copyrightholders’ property interests. Moreover, as a practical [*12] matter, plaintiffs have indicated no objection in principle to licensing their recordings to companies like MP3.com; they simply want to make sure they get the remuneration the law reserves for them as holders of copyrights on creative works. Stripped to its essence, defendant’s “consumer protection” argument amounts to nothing more than a bald claim that defendant should be able to misappropriate plaintiffs’ property simply because there is a consumer demand for it. This hardly appeals to the conscience of equity.

In sum, on any view, defendant’s “fair use” defense is indefensible and must be denied as a matter of law. Defendant’s other affirmative defenses, such as copyright misuse, abandonment, unclean hands, and estoppel, are essentially frivolous and may be disposed of briefly. While defendant contends, under the rubric of copyright misuse, that plaintiffs are misusing their “dominant market position to selectively prosecute only certain online music technology companies,” Def.’s Consolidated Opp. to Pls.’ Motions for Summ. J. at 21, the admissible evidence of records shows only that plaintiffs have reasonably exercised their right to determine which infringers to pursue, and [*13] in which order to pursue them, cf. Broadcast Music, Inc. v. Peppermint Club, Inc., 1985 U.S. Dist. LEXIS 12761, 1985 WL 6141, at *4 (N.D. Ohio Dec. 16, 1985). The abandonment defense must also fall since defendant has failed to adduce any competent evidence of an overt act indicating that plaintiffs, who filed suit against MP3.com shortly after MP3.com launched its infringing MY.MP3.com service, intentionally abandoned their copyrights. See Richard Feiner & Co., Inc. v. H.R. Indus., Inc., 10 F. Supp. 2d 310, 313 (S.D.N.Y. 1998). Similarly, defendant’s estoppel defense must be rejected because defendant has failed to provide any competent evidence that it relied on any action by plaintiffs with respect to defendant’s My.MP3.com service. Finally, the Court must reject defendant’s unclean hands defense given defendant’s failure to come forth with any admissible evidence showing bad faith or misconduct on the part of plaintiffs. See generally Dunlop-McCullen v. Local 1-S, AFL-CIO-CLC, 149 F.3d 85, 90 (2d Cir. 1998); A.H. Emery Co. v. Marcan Prods. Corp., 389 F.2d 11, 18 n.4 (2d Cir.), cert. denied, 393 U.S. 835, 21 L. Ed. 2d 106, 89 S. Ct. 109 (1968). [*14] n3

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n3 The Court also finds no reason to alter or postpone its determination simply because of the recent filing of the complaint in Lester Chambers et al. v. Time Warner, Inc., et al. 00 Civ. 2839 (S.D.N.Y. filed Apr. 12, 2000) (JSR), the allegations of which, according to the defendant here, call into question the exclusivity of plaintiffs’ copyrights. The allegations of a complaint, having no evidentiary value, cannot defeat a motion for summary judgment.

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The Court has also considered defendant’s other points and arguments and finds them sufficiently without merit as not to warrant any further comment.

Accordingly, the Court, for the foregoing reasons, has determined that plaintiffs are entitled to partial summary judgment holding defendant to have infringed plaintiffs’ copyrights.

Hi all,
I’ve been thinking to this for a while.
Now after the last RIAA actions against US pressing plants that are stopping printing cds that may contain uncleared samples, I think it is the right moment to share my thoughts with you. I wanted to put this on a webpage, but really have no time for it now… meanwhile, please take a look at this article, and let me know. :)

bye,
Nicola “Dj Batman” Battista
—————————————————————————-

THE SAMPLE CLEARANCE FUND
or
A proposal to solve the legal problems connected to sampling

1. Introduction
Sample clearance has always been a problem, since sampling and other music recycling techniques went mainstream somewhere in the late 80’s, as a consequence of the house music revolution.
Sampling and scratching already existed for almost a decade when UK group M/A/R/R/S went no.1 in the charts with their seminal “Pump up the volume”, which contained several bits of other records, scratched in by DJs CJ Mackintosh and Dave Dorrell.
They also made a legal case as they were sued by UK pop music producers Stock, Aitken and Waterman for using a bit from the track “Roadblock” without permission.
To be honest they weren’t the first artists to get sued for a sample; I remember rap pioneers like Grandmaster Flash paying royalties to Queen, Chic and Blondie for his 1981 release “Adventures of Grandmaster Flash on the Wheels of Steel” and even the classic that started it all – Sugarhill Gang’s “Rapper’s Delight” had some troubles because of the borrowed Chic bits (“Good times”). Since the days of M/A/R/R/S and with the diffusion of low-cost sampling devices, the number of artists sued for sampling has grown more and more. I could quote the other obvious examples: Black Box and Loleatta Holloway’s “Love sensation”, De La Soul and The Turles’ “You showed me”, The JAMS/KLF and Abba’s “Dancing Queen” (and tons of other stolen tracks), U2 vs. Negativland, Norman Cook of Beats International sued for borrowing a bassline from The Clash’s “Guns of Brixton” (but in that case he said the bassline had been replayed, not actually sampled).
Not to mention James Brown complaining about the fact that everyone was cashing on his old stuff.
More recently, The Verve sampling an orchestral cover of an old Stones track and ending up losing 100% of royalties on “Bitter Sweet Symphony” and Lo-Fidelity Allstarz’s “Disco machine gun” withdrawn from the shelves because of a second or so of distortion borrowed from a Breeders record.

Around 1988/89, it seemed that you could do anything with samples: you could put up an audio collage of whatever you wanted and put your name on it.
Can you remember any authorized samples on the early works of Bomb The Bass or Coldcut?
A while later things started to change. One of the first cleared albums was “De La Soul is dead” by De La Soul (1991). Today when some tracks from a few years ago are reprinted, their credits look different from the first time when they were released.
Black Box’s “Ride on time” is now by Limoni, Davoli, Semplici AND Hartman (the original composer of Loleatta Holloway’s “Love Sensation”). Moby’s “Go” now openly declares to contain bits of Angelo Badalamenti’s score for “Twin Peaks”. Even 2K (just another alias for the KLF) have cleared Isaac Hayes and MC5 bits for “Fuck the millennium”. And some cds have the inner sleeve full of almost unreadable microscopic charachters: a huge list of cleared samples.
But let’s be honest: IT’S IMPOSSIBLE TO CLEAR *ALL* THE SAMPLES ON AN ALBUM.

2. Fair use?
Collage is a legitimate form of visual art, so why and audio collage shouldn’t also be so? Also you can quote a sentence from a book and include in your own work. You indicate the original source and everything’s fine: you don’t have to phone the publisher and pay anyone for that until you keep yourself in the borders of the so-called “Fair use”. I must admit I’ve only read a bit of Negativland’s stuff on this subject, and that was in Italian, on a book called “No Copyright”.
From what I understood, I agree with most of their theories: copyright laws should fight entire bootlegs of commercial releases, not prevent an artist to recycle small bits of sound in a new, original work.
But what is exactly an “original” work? How far can I go with sampling? SAMPLING IS A CREATIVE JOB, NOT JUST PLAIN “BOOTLEGGING”. The recent RIAA actions show us that part of the industry still pretends not to understand that.
Someone said that if you sample the whole of Verdi’s Traviata you have a sample, and if you play it continuosly, that is a loop.
Now Verdi is in the public domain, I think, but that doesn’t matter: when do I go out of the fair use thing? From what I understood from the Italian translation of the Negativland’s article, a “fragment” is less than an entire work. And a fragment is ok.
But what if that “fragment” is just a few seconds shorter than the entire work?
Also: if someone asks you to sample a bit of an old track of yours, how do you react?
If a friend of mine who has a homemade project asked me, I think I’d say ok, go on.
If the same request came from a commercial act, and the fragment of my work was clearly recognizable, I think I’d ask for a percentage on royalties.
This seems fair. I remember some collaborator of Coldcut from the IDM Mailing List, saying that if some unknown bloke used some bits of a Ninja Tune track, that was ok.
On the other side, they had made George Michael pay when he sampled DJ Food.

3. The problem
I like to sample. Sometimes I sample just because I like a sound and want to use it.
Some other times it will be a random thing, clicking the “sample” button on my pc program while a record is spinning or while I am switching through weird MW radio stations, and capturing a second or more of what passes through my sound card.
Some other times I choose to sample as a vengeance. I hate a certain track, so I will take my revenge by destroying it and making something I like out of that track.
You hate that noisy 180 bpm gabber track? Sample it, and make a sweet ambient mix if you can. Or try to make a cool danceable number out of those boring classical music vinyl LPs you have in your livingroom. And so on.
Sometimes I will use the sample as is, most of the times I will change it a bit or even make it unrecognizable using tons of effects with some computer program.
Now, I don’t want troubles but I won’t stop sampling.
At the moment I have no money to pay anyone so if I make a great track I risk to have it sitting unreleased for years because of the samples. I have a friend that still has an exceptional project unreleased after two years, as he sampled tons of stuff from a well known TV serial (the actors’ voices and the soundtrack) and none will take the trouble to release it. In the past months I’ve been doing a plunderphonic project together with a friend of mine. This is supposed to be released as a homemade cd and a cassette. I will make copies on request. But even if I had enough money to release it in several thousand copies and distribute it through an independent distributor, and more cash to pay all the interested acts/authors/labels/publishers, I still would risk to be in troubles for uncleared stuff.
I sampled records from different countries and ages, some of those people could be even dead and I could waste years trying to get in touch with whoever has the rights to the material I used. Also, lately I’ve seen clearing also for movie and TV samples: James Bond movie snippets in Moby’s “James Bond Theme”, “Vanishing Point” sampled by Primal Scream for their “Kowalski”, BBC samples in the last Lo-Fidelity Allstars—- album, to mention just a few.

4. The solution?
If you’re an underground artist whose only interest is making a couple tapes for your friends, this won’t be of your interest. But if you start distributing your material, even in a no-profit circle, you might have problems with sample clearance.
Now wouldn’t it be easier if you had to deal with only ONE subject?
You make a found-sound collage; you want to release it and you want to be honest about it, even if you don’t have the necessary time and money.
You are a member of a society such as ASCAP or BMI and similar, and you usually register your material with them.
Well, in your country it may be different, but in most cases it works this way: here in Italy we have SIAE and for each track you have to deposit the score and the lyrics (for electronic/non score-based music you can deposit a tape) together with a form.
On the form you write all the relevant infos on the track, like the title, the names of the composer(s) and so on.
SIAE deals with both mechanical and performance rights and on the form you will have the performance/broadcast rights (DEM) indicated as a fraction
(the total amount is 24/24) and the mechanicals (DRM) as percentage.
For example, the form for my track “Braindancing” would look like this:

Title: Braindancing
DEM DRM
Composer: Nicola Battista 24/24 100%

of course, if I had the collaborator (another composer or a lyricist) Iwould have to share the percentages with them.

Composer 1 12/24 50%
Composer 2 or Lyricist 12/24 50%

and so on. Obviously, you can have almost unlimited combinations, as of course you could have many co-writers.
Now, if there was an agency for sample clearance or something like that, when I make a track with tons of samples I’d be very happy to register my track like this with SIAE:

Nicola Battista 12/24 50%
(Agency) 12/24 50%

and then this agency pays a quote of those percentages to its associates.
For doing so, the above mentioned agency should be itself a member of a royalty collection agency, in order to collect those percentages.

I’ve briefly talked about this to some people and posted in a couple of mailing lists on the Internet. I must admit I didn’t receive much feedback and I even heard from some folks who aren’t so excited at the idea of having to deal with another “royalty collection agency”. SIAE (the Italian Society for Authors and Publishers) is like a public office, and many people (club owners, people who organize parties and events etc.) see it just like another entity to pay taxes to. And even a nasty one, as SIAE deals not only with music but with literature, television, cinema, and even collects some minor taxes on behalf of the Italian Ministry of Finance.

The Fund I’m talking about would be in a certain way similar to other royalty collection agencies, but what I’m doing here is definitely not a proposal to build another SIAE.
We could have a Fund formed by independent artists, labels, authors, publishers and administered by its own members.
The Fund would have a list of tracks you can use, and everytime someone wants to use the Fund’s repertoire, like in the example above, any eventual performance or mechanical rights collected by the Fund would be shared between all the Fund members.
This way, if you don’t earn anything from your collage track (I’ve never seen a single lira from SIAE since 1996) you don’t have to pay anything. On the other side, if you make a million-selling hit with your cut’n’paste masterpiece, 50% of your writing credits will go to Fund members.
A method for calculating this could be dividing the sum for all the tracks in the fund’s “catalogue” and then divide the resulting quotes for all the interested parties. For example: The Fund has 1000$ and 100 tracks. Which means 10 dollars for every track. Then the 10$ will be divided between the author(s), composer(s), publisher(s) and the label.

5. More problems
a) no one replies positively to this proposal and nothing happens
b) no royalty collection agency accepts to deal with the Fund
c) the Fund is born, grows up and has huge expenses for its administration (it could be necessary to use part of the collected money for expenses or ask for a membership fee, and most folks would hate that)
d) you can freely sample the Fund’s tracks ONLY, so the Fund would work perfectly only if everyone in the music business was a member, and that might never happen.
e) the profits are divided between ALL the tracks. So some members would get money just because they’re members, and even if their stuff isn’t currently sampled by anyone. Some folks might think this is not fair.
f) etc.etc.

6. Conclusion
Sorry if I bored you to death but this my crappy writing style. I also apologize for any eventual typing error.
And this was just a proposal, and possibly the beginning of a debate.
I’ve been thinking to all this for a while, and now it was time to share.
What do you think about it?
Would you join the Fund? Why? Or, why not? What other solutions do you have?
Please spread this message the more you can and mail me your ideas/comments/suggestion at djbatmanATtin.it

Have a nice day, and keep sampling :)

Dj Batman

[originally posted on the Rumori Mailing List and archived at http://www.detritus.net/contact/rumori/000112.html]

SHIRA A. SCHEINDLIN, U.S.D.J.: Plaintiff, Playboy Enterprises, Inc. (“PEI”), has moved for a finding of contempt against Defendant, Tattilo Editrice, S.p.A. (“Tattilo”). PEI alleges that by. operating an Internet site from Italy under the PLAYMEN label, Tattilo has violated a judgment dated June 26, 1981, enjoining it from publishing, printing, distributing or selling in the United States an English language male sophisticate magazine under the name “PLAYMEN” (“Injunction”).

For the reasons enunciated below, the motion is granted. Tattilo must, within two weeks of the date of this Order: (1) either shut down its Internet site completely or refrain from accepting any new subscriptions from customers residing in the United States; (2) invalidate the user names and passwords to the Internet site previously purchased by United States customers; (3) refund to its United States customers the remaining unused portions of their subscriptions; (4) remit to PEI all gross profits earned from subscriptions to its PLAYMEN Pro Internet service by customers in the United States; (5) remit to PEI all gross profits earned from the sale of goods and services advertised on its PLAYMEN Internet service to customers in the United States; (6) revise its Internet site to indicate that all subscription requests from potential United States customers will be denied; and (7) remit to PEI its costs and attorney’s fees incurred in making this application. If these conditions have not been met within the stated two-week period, Tattilo shall pay to PEI a fine of $1,000 per day until it complies with this Order.

I. Facts

In 1967, Tattilo began publishing a male sophisticate magazine in Italy under the name PLAYMEN. Although the magazine carried an English title, it was written entirely in Italian. In July 1979, Tattilo announced plans to publish an English language version of PLAYMEN in the United States. Shortly thereafter, PEI brought suit against Tattilo to enjoin Tattilo’s use of the name PLAYMEN in connection with a male sophisticate magazine and related products. PEI has published the well-known male entertainment magazine “PLAYBOY” since 1953, which is sold throughout the world in a multitude of foreign languages. Plaintiff’s suit for injunctive relief alleged trademark infringement, false designation of origin, unfair competition based on infringement of Plaintiff’s common law trademark rights, and violations of the New York Anti-Dilution Statute.[1]

A permanent injunction was awarded on April 1, 1981, and a judgment subsequently entered on June 26, 1981, permanently enjoining Tattilo from:

a. using the word “PLAYMEN” or any word confusingly similar therewith as or in the title, as or in the subtitle, or anywhere else on the cover of a male sophisticate magazine, published, distributed or sold in the United States;

b. publishing, printing, distributing or selling in the United States and importing into or exporting from the United States an English language male sophisticate magazine which uses the word “PLAYMEN” or any word confusingly similar therewith as or in the title, as or in the subtitle, or anywhere else on the cover of such magazine;

c. using “PLAYBOY”, “PLAYMEN” or any other word confusingly similar with either such word in or as part of any trademark, service mark, brand name, trade name or other business or commercial designation, in connection with the sale, offering for sale or distributing in the United States, importing into or exporting from the United States, English language publications and related products. Declaration of David R. Francescani, Attorney for Playboy, dated February 27, 1996 (“Francescani Decl.”) Ex. 1.

PEI was similarly successful in enjoining the use of the PLAYMEN name in the courts of England, France and West Germany. However, the Italian courts ruled that “lexically” PLAYBOY was a weak mark and not entitled to protection in that country. See Playboy Enters., Inc. v. Chuckleberry Publishing, Inc., 687 F.2d 563, 569 n.3 (2d Cir. 1982) . The publication of PLAYMEN in Italy continues to the present day.

On approximately January 22, 1996, PEI discovered that Tattilo had created an Internet site featuring the PLAYMEN name.[ 2] This Internet site makes available images of the cover of the Italian magazine, as well as its “Women of the Month” feature and several other sexually explicit photographic images. Users of the Internet site also receive “special discounts” on other Tattilo products, such as CD ROMs and Photo CDs. Tattilo created this site by uploading these images onto a World Wide Web server located in Italy. These images can be accessed at the Internet address “http://www.playmen.it.”[3]

Two distinct services are available on the PLAYMEN Internet site. “PLAYMEN Lite” is available without a paid subscription, allowing users of the Internet to view moderately explicit images via computer. It appears that the main (if not sole) purpose of the PLAYMEN Lite service is to allow prospective users to experience a less explicit version of the PLAYMEN product before committing to purchasing a subscription. In addition, the PLAYMEN Internet site offers the more sexually explicit service called “PLAYMEN Pro.” PLAYMEN Pro is available only to users who have paid the subscription price.

In order to access the Lite version of the PLAYMEN Internet service, the prospective user must first contact Tattilo. The user will then receive a temporary user name and password via e-mail. To subscribe to PLAYMEN Pro, the prospective user must fill out a form and send it via fax to Tattilo. Within 24 hours, the user receives by e-mail a unique password and login name that enable the user to browse the PLAYMEN Pro service.

The PLAYMEN Internet site is widely available to patrons living in the United States. More to the point, anyone in the United States with access to the Internet has the capacity to browse the PLAYMEN Internet site, review, and obtain print and electronic copies of sexually explicit pages of PLAYMEN magazine. Francescani Decl. ¶ 4. All that is required to establish the account is the brief contact with Tattilo outlined above.

II. The Standard for Holding a Party in Contempt

It is well settled that “[t]he power to punish for contempts is inherent in all courts.'” Chambers v. Nasco, Inc., 501 U.S. 32, 44 (1991) (quoting Ex parte Robinson, 19 Wall. 505, 510 (1874)). This inherent power “reaches both conduct before the court and that beyond the court’s confines, for “[t]he underlying concern that gave rise to the contempt power was not … merely the disruption of court proceedings. Rather, it was disobedience to the orders of the Judiciary, regardless of whether such disobedience interfered with the conduct of trial.'” Id. (quoting Young v. U.S. ex rel Vuitton et Fils S.A., 481 U.S. 787, 798 (1987)); see also In re Weiss, 703 F.2d 653, 660 (2d Cir. 1983) (“acts of willful disobedience to clear and unambiguous orders of the court constitute contempt of court”).

An order of contempt “is a potent weapon, to which courts should not resort where there is a fair ground of doubt as to the wrongfulness of the defendant’s conduct.” King v. Allied Vision, Ltd., 65 F.3d 1051, 1058 (2d Cir. 1995) (citations omitted). A contempt order is warranted only where the moving party establishes by clear and convincing evidence that the alleged contemnor violated the district court’s edict. Id.; see also Hart Schaffner & Marx v. Alexander’s Dep’t Stores, Inc., 341 F.2d 101, 102 (2d Cir. 1965).

Generally, the purpose of holding a party in civil contempt is “to enforce compliance with an order of the court or to compensate for losses or damages.” Powell v. Ward, 643 F.2d 924, 931 (2d Cir. 1981) (citation omitted). A court has the power to hold a party in civil contempt when (1) there is a “clear and unambiguous” court order; (2) there is clear and convincing proof of noncompliance; and (3) the party has not attempted to comply in a reasonably diligent manner. New York State Nat’l Org. for Women v. Terry, 886 F.2d 1339, 1351 (2d Cir. 1989), cert. denied, 495 U.S. 947 (1990); see also McComb v. Jacksonville Paper Co., 336 U.S. 187, 191 (1949). A “clear and unambiguous” order is one “specific and definite enough to apprise those within its scope of the conduct that is being proscribed.” Terry, 886 F.2d at 1352 (citation omitted). The alleged contemnor “must be able to ascertain from the four corners of the order precisely what acts are forbidden.” Dyywall Tapers and Pointers of Greater New York, Local 1974 v. Local 530 of Operative Plasterers and Cement Masons Int’l Ass’n, 889 F.2d 389, 395 (2d Cir. 1989), cert. denied, 494 U.S. 1030 (1990). Finally, failure to comply with the court order need not be willful. Canterbury Belts, Ltd. v. Lane Walker Rudkin, Ltd., 869 F.2d 34, 39 (2d Cir. 1989).

III. Discussion

The primary issue before the Court is whether the Defendant distributed or sold the PLAYMEN magazine in the United States when it established an Internet site containing pictorial images under the PLAYMEN name.[4]

A. Whether the Injunction Could Have Been Violated

As an initial matter, the question arises whether a fifteen-year-old injunction prohibiting certain traditional publishing activities should be applied to the recent development of cyberspace and the Internet. If the dissemination of information over the Internet, in any form, cannot constitute a violation of the Injunction, then the inquiry is over.

Defendant argues that because this case involves the new technology of the Internet and World Wide Web—which purportedly did not exist when the Injunction was issued—the complained of activities cannot be “clearly and unambiguously” barred.

The 1981 Injunction was issued with respect to the publication and distribution in the United States of print magazines bearing on their cover the name P[LAYMEN]. Plainly, it does not bar the conduct at issue, placing pictorial images on the World Wide Web in Italy, which conduct was not contemplated by any of the parties involved in framing the 1981 Injunction, let alone addressed in that judgment. Defendant’s Memorandum in Opposition to the Motion for Contempt (“Def. Mem.”) at 7.

This argument is premised on the belief that the Internet did not exist in 1981. While it is difficult, if not impossible, to establish a definite “birth date” for this new medium, it appears that the Internet did in fact exist in some form when the Injunction was entered fifteen years ago. See, e.g., The Birth of the Internet, Newsweek, August 8, 1994, at 56. The beginnings of the Internet date back to 1969, when the Department of Defense’s Advanced Research Project Agency funded a project called ARPANET for the purpose of developing a computer network which would enable researchers around the country to share ideas. Id. On that date in 1969, four universities were linked by a computer network for the first time. The number of network sites, called “nodes,” gradually increased to nearly two dozen in 1971 and 62 three years later. Id. By 1981, more than 200 network sites had been established. Today, users of publicly available news groups discuss “everything from particle physics to Barney the dinosaur.” Id.; see also American Civil Liberties Union v. Reno, Civ. A. 96-963, 1996 WL 311865, at *5-6 (E.D. Pa. June 11, 1996).

Nevertheless, I agree with the Defendant that the availability of pictorial images on the Internet could not have been contemplated at the time of the Injunction. While the Internet may have existed in some form in 1981, it was undeniably vastly different from today’s extensive montage of data available in multimedia format. In 1981, the Internet was a means to exchange text-based information, primarily by posting messages on public electronic “bulletin boards” and by sending electronic mail. Today, of course, the Internet can be seen as its own thriving city, where citizens meet to exchange thoughts and ideas, where merchants buy and sell their wares, and where visitors take virtual tours of entire cities and buildings such as the White House and the Louvre. Certainly, only the most active imagination could have contemplated the public dissemination of pictorial images over the Internet when the Injunction was entered in 1981.

The key date, then, is the start of the Internet as it exists today. The Internet, defined narrowly, dates from the time that advanced computer technology made it possible to view, manipulate and exchange pictorial images electronically on a home computer. This was no earlier than the late 1980s, when the microprocessor speed and memory capacity of home computers first allowed large quantities of data to be stored and transferred quickly. Regardless of the exact date, this use could not have been contemplated at the time the Injunction was entered.

Defendant argues that because the Internet (as it now exists) could not have been contemplated by the parties in 1981, the distribution of pictorial images over that medium cannot be barred. Specifically, Defendant argues that “as Internet use was not contemplated by any of the participants who had a hand in shaping [the Injunction], … there is ground to doubt the wrongfulness of the defendant’s conduct.” Def. Mem. at 18 (citation omitted).

I disagree. That this use of the images could not have been contemplated by the parties does not prevent the Injunction from applying to the modern technology of the Internet and the World wide Web. The purpose behind the Injunction was to restrict the ability of Defendant to distribute its product in the United States, where it has been found to infringe upon the copyright of Playboy. Allowing the Defendant to contravene the clear intent of the Injunction by permitting it to distribute its pictorial images over the Internet would emasculate the Injunction. The Injunction’s failure to refer to the Internet by name does not limit its applicability to this new medium. Injunctions entered before the recent explosion of computer technology must continue to have meaning.

Finally, Defendant argues that the determination of this issue properly falls under the purview of the legislature. In support of this position, Defendant cites a recent Wisconsin case, It’s In the Cards, Inc. v. Fuschetto, 535 N.W.2d 11 (Wis. Ct. App. 1995). The issue presented there was whether a posting on an electronic bulletin board located on “SportsNet” was a periodical within the meaning of section 895.05(2) of the Wisconsin statutes. In holding that the posting was not a periodical, the court stated:

[S]ubsec. (2) of Section 895.05, STATS., was repealed in 1951 and reenacted in its present form, years before cyberspace was envisioned. The magnitude of computer networks and the consequent communication possibilities were non-existent at the time this statute was enacted. Applying the present libel laws to cyberspace or computer networks entails rewriting statutes that were written to manage physical, printed objects, not computer networks or services. Consequently, it is for the legislature to address the increasingly common phenomenon of libel and defamation on the information superhighway …. Therefore, we conclude that extending the definition of ‘periodical’ under Section 895.05(2), STATS., to include network bulletin board communications on the SportsNet computer service is judicial legislation in which we will not indulge. Id. at 14-15.

This reasoning has no application to the matter now before this Court. Cards dealt solely with the issue of whether a statute could be interpreted to cover the new technology of the Internet. The Cards court declined to address this issue because it correctly concluded that any extension of the scope of a statute is within the sole province of the legislature. The instant situation, however, is distinguishable. While Cards concerned the interpretation of a statute, this matter involves the interpretation of and compliance with an order entered by this Court. The legislature does not have jurisdiction to determine the scope of a court order. This task is assigned to the Court.

In sum, the Injunction controls the activities complained of here, despite the fact that the Internet in its current form did not exist (and, moreover, could not have been contemplated by the parties) when the Injunction was entered. Prohibition of the sale or distribution of the PLAYMEN magazine within the United States thus extends to the Internet.

B. Whether the Injunction Was Violated

Subsection 1(c) of the Injunction permanently enjoined Tattilo from:

using “PLAYBOY”, “PLAYMEN” or any other word confusingly similar with either such word in or as part of any trademark, service mark, brand name, trade name or other business or commercial designation, in connection with the sale, offering for sale or distributing in the United States, importing into or exporting from the United States, English language publications and related products.

Three conditions must be met to support a finding of a violation of this provision. First, the word PLAYMEN must have been used as part of any trademark, service mark, brand name, trade name or other business or commercial designation. Second, such use must have been in connection with an English language publication or related product. Third, such use must have been made in connection with a sale or distribution within the United States.

There is ample evidence that the word PLAYMEN has been used as a trade name or business or commercial designation of the Internet site. As mentioned above, the site’s URL, which typically remains displayed on the computer screen once the site is accessed, is “playmen.it.” Moreover, the word PLAYMEN prominently appears (along with the PLAYMEN logo) in oversized font on the site’s “home page,” the electronic equivalent of a magazine cover and table of contents. The PLAYMEN name and logo appear in this same form at the top of each “page” accessed on the site. The site’s address, and the prominence of the PLAYMEN name, demonstrate an association between the PLAYMEN name and the Internet site.

Similarly, the PLAYMEN name has been used in connection with an English language publication or related product. First, although there is an intriguing question as to whether an Internet site consisting of uploaded pictorial images constitutes a “publication,” there is no doubt that the “related product” clause is satisfied by this use. Second, this product appears in the English language. Although a portion of the text is written in Italian, enough sections appear in English to allow an English-speaking user to navigate the site with ease.[5] Paramount among these is the PLAYMEN page purportedly answering frequently asked questions about the Internet site, such as the price of a subscription (“$30 U.S., or 50000 [sic] Italian lire for 6 months, payable by all major credit cards”), benefits of a subscription (“You get a unique password, that can be used only by one person at a time, to browse on Playmen Pro, where you can find about 500 xxx rated pictures always updated, mpeg movies, photo cd images, and many other things”), and a description of the PLAYMEN magazine itself (“The ‘Playmen’ magazine is written in Italian, and is sold in Italy and all the major countries in Europe”). Therefore, the English language publication/related product requirement has been met.

The final condition — for a distribution or sale to have taken place within the United States — is analytically more difficult. The question of whether uploading pictorial images onto a computer which may be accessed by other users constitutes a “distribution” has been addressed by at least two courts. In Playboy Enterprises, Inc. v. Frena, 839 F.Supp. 1552 (M.D. Fla. 1993), Defendant Frena operated a subscription electronic bulletin board service accessible by computer modem. Once logged onto the service, subscribers could browse through different directories and view unauthorized copies of PEI’s copyrighted photographs, as well as download and store these images on their home computers. Id. at 1554. The court held that the unauthorized uploading of copyrighted images with the knowledge that the images would be downloaded by other bulletin board subscribers constituted a distribution. Id. at 1556. Similarly, in Religious Technology Center v. Netcom On-Line Communication Servs., Inc., 907 F.Supp. 1361 (N.D. Cal. 1995), copyright holders brought an infringement action against the operator of an Internet access provider, seeking to hold the defendant liable for copyright infringement committed by a bulletin board subscriber. In that case, the court refused to extend the Frena doctrine to an Internet access provider, because Nettom did not create or control the content of the information available to its subscribers.

Although the Internet consists of many different computers networked together, some of which may contain infringing files, it does not make sense to hold the operator of each computer liable as an infringer merely because his or her computer is linked to a Computer with an infringing file. It would be especially inappropriate to hold liable a service that acts more like a conduit, in other words, one that does not itself keep an archive of files for more than a short duration. Finding such a service liable would involve an unreasonably broad construction of public distribution and display rights. 907 F.Supp. at 1372.

Here, Defendant does more than simply provide access to the Internet. It also provides its own services, PLAYMEN Lite and PLAYMEN Pro, and supplies the content for these services. Moreover, as in Frena, these pictorial images can be downloaded to and stored upon the computers of subscribers to the service. In fact, Defendant actively invites such use: the Internet site allows the user to decide between viewing and downloading the images. Thus this use of Defendant’s Internet site constitutes a distribution.

In order to violate the Injunction, however, Defendant must distribute the pictorial images within the United States. Defendant argues that it is merely posting pictorial images on a computer server in Italy, rather than distributing those images to anyone within the United States. A computer operator wishing to view these images must, in effect, transport himself to Italy to view Tattilo’s pictorial displays. The use of the Internet is akin to boarding a plane, landing in Italy, and purchasing a copy of PLAYMEN magazine, an activity permitted under Italian law. Thus Defendant argues that its publication of pictorial images over the Internet cannot be barred by the Injunction despite the fact that computer operators can view these pictorial images in the United States.

Once more, I disagree. Defendant has actively solicited United States customers to its Internet site, and in doing so has distributed its product within the United States. When a potential subscriber faxes the required form to Tattilo, he receives back via e-mail a password and user name. By this process, Tattilo distributes its product within the United States.

Defendant’s analogy of “flying to Italy” to purchase a copy of the PLAYMEN magazine is inapposite. Tattilo may of course maintain its Italian Internet site. The Internet is a world-wide phenomenon, accessible from every corner of the globe. Tattilo cannot be prohibited from operating its Internet site merely because the site is accessible from within one country in which its product is banned. To hold otherwise “would be tantamount to a declaration that this Court, and every other court throughout the world, may assert jurisdiction over all information providers on the global World Wide Web.” Def. Mem. at 2. Such a holding would have a devastating impact on those who use this global service. The Internet deserves special protection as a place where public discourse may be conducted without regard to nationality, religion, sex, age, or to monitors of community standards of decency. See generally American Civil Liberties Union v. Reno, Civ. A. 96-963, 1996 WL 311865 (E.D. Pa. June 11, 1996).

However, this special protection does not extend to ignoring court orders and injunctions. If it did, injunctions would cease to have meaning and intellectual property would no longer be adequately protected. In the absence of enforcement, intellectual property laws could be easily circumvented through the creation of Internet sites that permit the very distribution that has been enjoined. Our long-standing system of intellectual property protections has encouraged creative minds to be productive. Diluting those protections may discourage that creativity.

While this Court has neither the jurisdiction nor the desire to prohibit the creation of Internet sites around the globe, it may prohibit access to those sites in this country. Therefore, while Tattilo may continue to operate its Internet site, it must refrain from accepting subscriptions from customers living in the United States. In accord with this holding, an Italian customer who subsequently moves to the United States may maintain his or her subscription to the Internet site.

I therefore conclude that Tattilo has violated subsection 1(c) of the Injunction by using its PLAYMEN Internet site to distribute its products in the United States.[6] The clear intent of the Injunction was to prohibit Tattilo from selling its PLAYMEN magazine and related products to United States customers. Tattilo has knowingly attempted to circumvent the Injunction by selling its products over the Internet. Cyberspace is not a “safe haven” from which Tattilo may flout the Court’s Injunction.

C. The $5,000 Past Due Payment

Paragraph 4 of the Injunction required Tattilo to pay PEI $5,000 as partial payment of its attorneys’ fees incurred in the original action.[7] Francescani Decl. Ex. 1. PEI contends that Tattilo never paid this amount, and asks for it now, fifteen years later.

Defendant argues that this payment is barred by laches. “To prove laches, a party asserting the defense must show (1) lack of diligence by the party against whom the defense is asserted and (2) prejudice.” Southside Fair Housing Comm. v. City of New York, 928 F.2d 1336, 1354 (2d Cir. 1991) . Factors used to assess prejudice include whether delay has resulted in a loss of records, unavailability of witnesses, or an activity taken in detrimental reliance on the failure to prosecute. See, e.g., Merchant v. Lymon, 828 F.Supp. 1048, 1063 (S.D.N.Y. 1993).

Here, both the relevant records and one of the potential payees — Chuckleberry — have vanished. See Affidavit of Adelina Tattilo, Managing Director of Tattilo Editrice S.p.A., dated April, 1996, para 22 and Ex. C. These are sufficient reasons to bar recovery of this sum under the doctrine of laches.[8]

IV. Sanctions

Sanctions for “indirect” civil contempt—contempt resulting from actions occurring outside the courtroom—are designed specifically to compel future compliance with a court order and are avoidable through compliance. Int’l Union, United Mine Workers of America v. Bagwell, 114 S. Ct. 2552, 2557 (1994); see also Gompers v. Bucks Stove & Range Co., 221 U.S. 418, 441 (1911) (“[W]hen a court imposes fines and punishments on a contemnor, it is not only vindicating its legal authority to enter the initial court order, but it also is seeking to give effect to the law’s purpose of modifying the contemnor’s behavior to conform to the terms required in the order.”). Such sanctions may be imposed “in an ordinary civil proceeding upon notice and an opportunity to be heard.” Int’l Union, 114 S. Ct. at 2557. Neither a jury trial nor proof beyond a reasonable doubt is necessary. Id.

Tattilo is required, within two weeks of the date of this Order, to: (1) either shut down its Internet site completely or refrain from accepting any new subscriptions from customers residing in the United States; (2) invalidate the user names and passwords to the Internet site previously purchased by United States customers; (3) refund to its United States customers the remaining unused portions of their subscriptions; (4) remit to PEI all gross profits earned from subscriptions to its Internet service by customers in the United States; (5) remit to PEI all “gross profits earned from the sale of goods and services advertised on its PLAYMEN Internet service to customers in the United States; (6) revise its Internet site to indicate that all subscription requests from potential United States customers will be denied; and (7) remit to PEI its costs and attorney’s fees incurred in making this application. If these conditions have not been met within the stated two-week period, Tattilo shall pay to PEI a fine of $1,000 each day thereafter until it fully complies with this Order.

V. Conclusion

For the foregoing reasons, the motion for a finding of contempt is granted.

SO ORDERED:

/s/ SHIRA A. SCHEINDLIN, U.S.D.J.

Dated: New York, New

York June 19, 1996

END NOTES

1. A concise summary of the facts of the underlying suit is set forth in Playboy Enters., Inc. v. Chuckleberry Publishing, Inc., 687 F.2d 563 (2d Cir. 1982).

2. For a thorough description of the Internet, see American Civil Liberties Union v. Reno, Civ. A. 96-963, 1996 WL 311865, at *4-26 (E.D. Pa. June 11, 1996). In general, the Internet is a giant network which allows people, institutions, corporations and governments around the globe to exchange information via computer almost instantaneously.

3. Internet addresses, such as the one at issue here, typically include a final extension to their “uniform resource locator” (“URL”) . To United States users of the Internet, the most familiar URL extensions are “.com” (indicating that the accessed computer is commercial); “.edu” (educational); “.org” (non-profit organization); “.gov” (government agency); and “.net” (networking organization). In comparison, “.it” — such as appears in the PLAYMEN Internet site address “http://www.playmen.it”– indicates that the accessed computer is located in Italy.

4. Defendant first argues that this Court has neither personal nor subject matter jurisdiction to determine the issues raised herein. Tattilo is an Italian corporation with no agent or office within the United States; it does not sell, distribute, publish or advertise for its text-based Italian PLAYMEN magazine in this country. However, this Court retained jurisdiction over Defendant for the purposes of enforcing the 1981 Injunction.

5. For example, the page at “http://www.playmen.it/play/ photgirl.htm” states in English: “Here you can found (sic) a list of the Playgirls published in the previous (sic) issues of Playmen. We start from the Playgirl of September 1995, Becky! After this … you’ll find an a excellent list of “beautiful” link, that guide you to the most exciting girls in the World! … Stop! Cool Fun with Playmen.”

6. I do not foreclose the possibility that Subsections 1(a) and 1 (b)of the Injunction have been violated as well. I have already determined that the Internet use constitutes a distribution within the United States, and that the Internet site constitutes an English language publication. In addition to these requirements, in order to find a violation of Subsections 1(a) and 1(b), the word PLAYMEN must have been used in the title, subtitle or anywhere else on the cover of a male sophisticate magazine. If I were to find that the Internet site constitutes a “magazine,” then its home page, as the first screen viewed upon accessing the site, is unquestionably its cover. The sole issue, then, is whether the Internet site constitutes a “magazine.” Although I need not reach this issue today, I believe that it does. According to Webster’s Dictionary, the word “magazine” was at one time used in book titles to mean a “storehouse of information” on a special topic, equivalent to the use of “encyclopedia” today. Webster’s II New Riverside University Dictionary 714 (Houghton Mifflin Co. 1994). The word was also used in titles of periodical publications “that contained a storehouse of miscellaneous literary works, articles on various topics, and other features.” Id. From this latter use, the word took on the meaning that is familiar today: a periodical containing a collection of articles, stories, pictures, or other features. Id. The PLAYMEN Internet site bears these attributes. First, the “periodical” requirement is satisfied. New pictorial images are uploaded monthly; indeed, the “Playgirls Calendar” feature indicates that images of women representing future months can be viewed only when the “new issue” has been uploaded. Second, while the site consists almost exclusively of pictures, the absence of articles and stories does not destroy its status as a magazine.

7. Specifically, the 1981 Injunction provided that “Defendant Chuckleberry Publishing Inc. and Tattilo Editrice S.p.A. [must] pay the portion of defendant’s attorneys fees and disbursements attributable to adjudication of the subtitle issue which are $5,000.”

8. Defendant also argues that laches bars a finding of contempt. A Playboy agent first learned of the PLAYMEN Internet site on October 4, 1995, three months earlier than Plaintiff alleges it learned of the site and five to six months prior to this application. Regardless of when Plaintiff first learned of the PLAYMEN Internet site, this application is not barred by laches. A maximum of six months delay does not constitute “unreasonable delay.” See, e.g., King v. Innovative Books, 976 F.2d 824, 832-833 (2d Cir. 1992) (eight months between learning of improper behavior and filing suit not unreasonable delay); Landmark West! v. U.S. Postal Service, 840 F.Supp. 994, 1001 (S.D.N.Y. 1993) (six-month delay between groundbreaking and action seeking injunction not unreasonable). Furthermore, Defendant has not alleged any prejudice resulting from this delay, a necessary element of a laches defense.