Thursday, November 09, 2006

Right of Impoundment

The remedy of impoundment of allegedly infringing copies has a long and somewhat tangled history. Sections 101(c) and (d) of the 1909 Act provided for impoundment and destruction:

(c) Impounding during action
To deliver up on oath, to be impounded during the pendency of the action, upon such terms and conditions as the court may prescribe, all articles alleged to infringe a copyright;
(d) Destruction of infringing copies and plates
To deliver up on oath for destruction all the infringing copies or devices, as well as all plates, molds, matrices, or other means for making such infringing copies as the court may order.

Seizure and impoundment have been rightly described as "drastic acts," to be imposed only in special circumstances. There were no provisions in the 1909 Act governing how impoundment and destruction were to be carried out, which raised many questions—for example, by whom, under what protections (e.g., notice, security). The Federal Rules of Civil Procedure were 29 years in the future, so into the breach stepped the Supreme Court. Acting under authorization it interpreted to exist in Section 25 of the 1909 Act as passed, the Court promulgated rules governing the practice in copyright cases. The Supreme Court rules had some positive and some negative features. Impoundment was not discretionary, which copyright owners favored. Yet the bond requirement was not only mandatory but was required in amount not less than double the value of the article seized; within three days of seizure, defendant had the right to appear before the court and argue for an increased bond amount. The lack of judicial oversight except perhaps for ensuring formal compliance with the bond requirements was severely criticized, as was the lack of a requirement that seizure be ordered only when it was likely defendant would destroy or conceal evidence.

When the Federal Rules of Civil Procedure were promulgated in 1938, the Supreme Court rules were not repealed, even though the FRCP would have answered virtually all, if not all, of the issues that arose under the statutory provisions and the Supreme Court rules. The paragraph following Section 25(e), on which the Supreme Court rested its authority, was repealed in 1948 (and the rules themselves have subsequently been repealed in favor of application of the FRCP).

The relevant provisions of the 1976 Act are far more detailed than those in the 1909 Act:

Remedies for Infringement: Impounding and Disposition of Infringing Articles
(a) At any time while an action under this title is pending, the court may order the impounding, on such terms as it may deem reasonable, of all copies or phonorecords claimed to have been made or used in violation of the copyright owner’s exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.
(b) As part of a final judgment or decree, the court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner’s exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.

How far does Section 503 reach, specifically, does it authorize the impoundment of infringing copies innocently purchased by a non-infringing person? In Socieite Civile Succession Richard Guino v. International Foundation for Anticancer Drug Recovery, 2006 WL 3138796 (D. Arizona Nov. 3, 2006), the court held the section does not reach that far, being limited to those who both infringe and possess the copies. The opinion is very well-researched and for those who doubt that resort to legislative history is the norm in copyright cases, it is a good opinion to read for that too. The policy is sound and has been applied to recall orders, most notably in cases involving infringing lace on wedding dresses, where the courts have been willing to order the recall of copies from retailers, but not from the brides or brides-to-be.


Anonymous said...

Note also the provision of 506(b), which provides that where a defendant is convicted of criminal copyright infringement, the court "shall" order the forfeiture and destruction of the infringing copies and the equipment used to create it.

Point and query: wouldn't this *require* a recall and destruction order in the wake of a criminal conviction, even as to infringing copies in the hands of BFP's? If not, what part of the statute creates the loophole?

LKB in Houston

William Patry said...

LBK, the impoundment stuff I thought of as being relevant before trial, and so a discretionary remedy seems particularly appropriate. After a crimial conviction, shall seems OK, but I think the larger point you are making is does Section 506(b) also reach innocent third-parties. I think this court would say no.

Anonymous said...

I agree that as a pretrial civil remedy, discretion on 503(b) relief is perfectly appropriate. (Whether it would be an abuse of discretion to refuse some sort of 503(b) relief post-judgment regarding infringing copies still in the hands of the infringer is an open question, IMHO.)

The criminal issue is rather pithy. I don't doubt that a court might strain to say that 506(b) shouldn't reach infringing copies in the hands of innocent third parties . . . but what's the intellectually-honest reason for so holding? The statute is absolute and leaves no wiggle room: the infringing copies "shall" be ordered destroyed. No discretion allowed, unless "shall" is not given its ordinary meaning.

There's clearly a public policy reason here . . . any further sale would likely be an act of further criminal behavior, and so the infringing articles should be removed from the stream of commerce. If a court is going to depart from the plain reading of the statute -- especially where there is a perfectly plausible public policy reason for it -- then I contend that a court should have to explain itself better than "I just don't think it's fair."

Does this put the wood to innocent purchasers? Of course, but that's hardly alien to copyright law: there's no "innocent purchaser" or BFP defense to civil copyright liability, and "innocent purchasers" get it in the neck all the time.

LKB in Houston

William Patry said...


I have encountered the word "wood" in a different context.

Anonymous said...

The Treloar Copyright Bill of 1896 (first version was 54 HR 5976) contained provisions for impoundment (at s 16 of the original bill):

copies, of any copyrighted article, in violation of this act...shall be seized by the government authorities, and...immediately forwarded to the Copyright department in Washington, DC, and forthwith be totally destroyed.

The bill never passed, but since I've spent much time with it lately, I thought it would be relevant.

William Patry said...

Thanks, Zvi, that act is quite a resource