PLAINTIFF'S MOTION FOR TEMPORARY RESTRAINING ORDER

INTELLECTUAL RESERVE, INC.,

PLAINTIFF,

VS.

UTAH LIGHTHOUSE MINISTRY, INC.,
A UTAH CORPORATION, ET AL.,

DEFENDANT.

CIVIL NO. 2:99-CV-808C

SALT LAKE CITY, UTAH
OCTOBER 18, 1999

PLAINTIFF'S MOTION FOR TEMPORARY RESTRAINING ORDER
BEFORE THE HONORABLE TENA CAMPBELL
UNITED STATES DISTRICT JUDGE

KIRTON & MC CONKIE
BY: TODD E. ZENGER, ESQ.
BERNE S. BROADBENT, ESQ.
1800 EAGLE GATE TOWER
60 EAST SOUTH TEMPLE
SALT LAKE CITY, UTAH 84111
(801) 328-3600

UTAH LEGAL CLINIC
BY: BRIAN M. BARNARD, ESQ.
214 EAST FIFTH SOUTH
SALT LAKE CITY, UTAH 84111
(801) 328-9531

THE COURT: GOOD MORNING. WE'RE HERE IN INTELLECTUAL RESERVE, INC. VERSUS UTAH LIGHTHOUSE MINISTRY, HERE TODAY ON THE PLAINTIFF'S MOTION FOR A TEMPORARY RESTRAINING ORDER. REPRESENTING THE PLAINTIFF IS MR. TODD ZENGER.

THE COURT: BERNE. THANK YOU--BERN BROADBENT, AND I NOTE THE PRESENCE OF MR. WILLIAM NELSON, WHO IS PRESIDENT OF I.R.I. DEFENSE REPRESENTED BY MR. BRIAN BARNARD, AND THE DEFENDANTS SANDRA TANNER AND JERALD TANNER ARE HERE.

MR. ZENGER, MY QUESTION IS--AND AFTER REVIEWING MS. TANNER'S AFFIDAVIT AND THE COPY OF THE MATERIALS THAT WERE ATTACHED, WHAT ELSE IS THERE THAT YOU COULD RECEIVE IN A T.R.O. THAT THE TANNERS HAVE NOT AGREED TO GIVE YOU? THEY'VE TAKEN THE WEB SITE--THE MATERIALS THAT YOU SAY INFRINGE YOUR CLIENT'S COPYRIGHT, THEY'VE TAKEN THEM DOWN. AND THEY HAVE ATTACHED YOUR LETTER. THEY PUT IT ON THE WEB SITE THAT--AND THAT LETTER HAS THE ACKNOWLEDGMENT THAT YOU REQUESTED.

SO WITH THAT IN MIND, I JUST NEED TO KNOW WHAT ELSE I COULD DO THAT THEY HAVEN'T DONE FOR YOU?

MR. ZENGER: YOUR HONOR, MAY I FIRST INQUIRE AS TO WHAT AFFIDAVIT? WE'VE NEVER RECEIVED ONE, AND WE DON'T KNOW WHAT YOU'RE TALKING ABOUT.

THE COURT: THAT CHANGES THE WHOLE THING. YOU TAKE A LOCK AT IT, MR. ZENGER. MR. BARNARD, JUST A MISTAKE IN THE MAILING OR-

THE COURT: I GUESS SINCE THE MATERIALS THAT ARE ALLEGED TO INFRINGE YOUR CLIENT'S COPYRIGHT ARE OFF THE WEB SITE, YOUR LETTER IS ON THE WEB SITE--AND, MR. BARNARD, I THINK THAT'S--I'M CORRECT, AREN'T I?

THE COURT: AND YOUR LETTER CONTAINS THE ACKNOWLEDGMENT THAT IT WASN'T AUTHORIZED AND THAT COPIES SHOULD BE DESTROYED. BOY, IT SEEMS TO ME THAT YOU'VE WON WITHOUT MY DOING ANYTHING, OR AM I MISUNDERSTANDING IT?

MR. ZENGER: YOUR HONOR, WE BELIEVE THERE ARE OTHER HARMS THAT HAVE NOT BEEN REMEDIED BY THAT, AND THAT THERE ARE ONGOING HARMS, AND I WOULD LIKE TO GO TO THOSE. DO I UNDERSTAND, YOUR HONOR, THAT YOU DON'T WANT TO HEAR ABOUT VALID COPYRIGHT AND INFRINGEMENT?

THE COURT: NO. I'M JUST GOING TO ASSUME--AND I MEAN YOUR MATERIALS--AND I READ VERY CAREFULLY YOUR COMPLAINT, AND I SAW THAT--YOUR ATTACHMENT OF YOUR FILING WITH THE COPYRIGHT AND ALL OF THAT. SO I THINK AT THIS POINT IT DOES APPEAR THAT YOU HAVE A VALID COPYRIGHT. THE ONLY POSSIBLE DEFENSE TO USING THEM--AND THE DEFENSE HAS NOT BRIEFED IT--IS PERHAPS THE FAIR COMMENT, BUT I DON'T THINK THERE'S ANY QUESTION AT THIS STAGE YOU'VE GOT A COPYRIGHT.

MR. ZENGER: DOES YOUR HONOR NEED A DISCUSSION ABOUT IN ADDITION TO THE RIGHT TO CONTROL REPRODUCTION AND DISTRIBUTION, DO YOU NEED AN EXPLANATION ABOUT I.R.I.'S EXCLUSIVE RIGHT OF FIRST PUBLICATION, OR DO YOU HAVE THAT CLEAR IN MIND AS WELL?

THE COURT: NO. I'M GOING NOW AT THIS STAGE--AND RECOGNIZING, MR. ZENGER, THAT THIS IS NOT THE LAST WORD ON INJUNCTIVE RELIEF. YOU KNOW THAT. AND WHAT I WOULD ANTICIPATE IS NO MATTER WHAT HAPPENED TODAY, WE'D SET THIS DOWN FOR PRELIMINARY INJUNCTION WHERE I WILL HAVE HAD MORE BRIEFING.

BUT WHAT I'M ASSUMING HERE TODAY IS THAT YOUR CLIENT HAD THE RIGHT TO PUBLISH IT, YOUR CLIENT HAD THE COPYRIGHT, AND THAT IT WAS PUT UP IN POSSIBLE VIOLATION OF THAT. THE ONLY DEFENSE AT THIS STAGE THAT I COULD SEE, AND I DON'T EVEN KNOW, WOULD BE FAIR COMMENT.

MR. ZENGER: I ASSUME THEN THAT THE COURT UNDERSTANDS WE ARE ASSERTING THREE RIGHTS: THE RIGHT TO CONTROL REPRODUCTION--

MR. ZENGER: --THE RIGHT TO DISTRIBUTE, AND SEPARATE FROM THOSE THE RIGHT OF FIRST PUBLICATION.

MR. ZENGER: THANK YOU. I WILL ADDRESS THEN WHAT THE IRREPARABLE HARMS ARE. FIRST OF ALL, SOME OF THE PAST IRREPARABLE HARM HAS BEEN REMEDIED, BUT THE PROBLEM THAT WE HAVE IS I.R.I. HAS CHOSEN, AS THE SUPREME COURT HAS PERMITTED THEM, TO DECIDE WHETHER, WHEN, WHERE AND IN WHAT FORM TO DISTRIBUTE ITS COPYRIGHTED MATERIAL. I.R.I. HAS CHOSEN TO DO THAT IN A LIMITED PRINT MEDIA.

ON THE OTHER HAND, LIGHTHOUSE HAS TAKEN IT UPON ITSELF TO PUT THAT IN AN ELECTRONIC MEDIA, WHICH IS ESSENTIALLY UNCONTROLLABLE ONCE IT'S PUT ON THE WEB. SO THE PAST--THE PAST DAMAGE IS WE DON'T KNOW HOW MANY COPIES WERE MADE; WE DON'T KNOW WHERE THEY WENT; WE DON'T KNOW IF THEY HAVE OTHER ELECTRONIC COPIES. THEY HAVE ADMITTED THEY STILL POSSESS COPIES ON DISKS. AND SO THERE IS AN ONGOING PROBLEM OF COPIES BEING OUT THERE THAT WE CAN'T GATHER IN AND THAT THEY HAVE NOT YET IDENTIFIED FOR US.

AND SO TAKING IT OFF THE WEB SITE IS NOT ENOUGH. AND WE'RE NOT EVEN SURE THAT IT'S OFF THE WEB SITE, BECAUSE EVEN THIS MORNING WE HAVE A WITNESS HERE WHO IS PREPARED TO TESTIFY THAT THE CHURCH HANDBOOK IS STILL LISTED ON THEIR TOPICAL INDEX THIS MORNING.

NOW, IS IT--WHEN YOU CLICK ON IT IS IT ACCESSIBLE? NO. BUT WHAT WE BELIEVE IS THAT IT'S NOT OFF THEIR WEB SITE OR OFF THEIR SERVER, BUT THEY'VE SIMPLY DISABLED THE ACCESS. AND WHAT WE WANT--

THE COURT: NOW, YOU'LL HAVE TO STOP. YOU'RE GETTING A LITTLE TOO COMPLEX FOR ME. WHAT IS THE TOPICAL INDEX? WHAT IS THAT?

MR. ZENGER: LIGHTHOUSE MINISTRIES ON THEIR WEB SITE HAS A TOPICAL INDEX OF THE CONTENT OF THEIR WEB SITE. AND THIS MORNING, AS OF NINE--AFTER 9:00 A.M. THIS MORNING, THE CHURCH HANDBOOK OF INSTRUCTION IS STILL LISTED ON THEIR TOPICAL INDEX, SUGGESTING TO US THAT THEY'RE STILL INVITING INQUIRIES ABOUT IT; THAT THEY MIGHT MAKE COPIES AVAILABLE IN ANOTHER FORM, BE IT IN PRINT MEDIA OR ON A DISK, OR IN SOME OTHER FASHION THAT THEY'VE ALREADY PUT IN PLACE BY HAVING HARD COPIES IN INVENTORY THAT THEY MAIL OUT, OR EVEN E-MAILING A COPY. ALL OF THOSE PROBLEMS ARE NOT ADDRESSED BY SIMPLY REMOVING IT OFF THE WEB SITE.

THE COURT: WHEN YOU GET INTO THE TOPICAL INDEX AND YOU CLICK ONLY IT THOUGH IT WILL NOT GO TO THE HANDBOOK?

MR. ZENGER: IT DOES NOT GO TO IT. AND WHAT THAT SUGGESTS TO US IS THAT ACCESS TO IT IS MERELY DENIED BUT THEY HAVE NOT REMOVED IT. SO WE HAVE NOT ONLY THAT PROBLEM BUT WE HAVE THE PROBLEM CF POTENTIALLY IN MANY OTHER FORMS OF THE INFORMATION BEING DISTRIBUTABLE, IF YOU WILL. THAT IS, THEY HAVE COPIES. THEY ADMIT THEY HAVE COPIES. THEY HAVE EVEN STATED THE INTENT TO CONTINUE TO DISTRIBUTE PORTIONS IN THEIR PUBLIC STATEMENTS MADE TO THE PRESS.

NOW, WE--IT IS SIMPLY AN ONGOING PROBLEM. AND WHAT'S WORSE IS, AS I INDICATED, I.R.I. CHOSE TO CONTROL ITS DISTRIBUTION THROUGH A PRINT MEDIA THAT THEY COULD CONTROL THE COPIES OF. WELL, NOT ONLY TRANSFORMING IT INTO AN ELECTRONIC MEDIA BUT PUTTING IT ON THE WORLDWIDE WEB, THERE IS SIMPLY NO CONTROL OF THAT.

NOW, OTHER ONGOING. I MENTIONED THEY HAVE EXPRESSED AN INTENT TO FURTHER PUBLISH. THIS IS IN SANDRA TANNER'S OWN STATEMENTS IN THE PRESS IN THE LAST TWO DAYS. THEY INTEND TO CONTINUE TO PUBLISH PORTIONS. IN WHAT FORM, WE DON'T KNOW. BUT IT'S IN HER--EVEN IN HER DESERET NEWS STATEMENT.

NOW, I MENTIONED THE ONGOING LISTING OF THE CHURCH HANDBOOK ON THEIR WEB SITE. WHAT DOES THAT DO? IT HAS BEEN THEIR STATEMENTS, THEIR PUBLIC STATEMENTS, THAT THEY HAVE MADE IT AVAILABLE FOR PEOPLE WHO INQUIRE, AND THEY STILL HAVE IT ON THEIR WEB SITE, THUS ENCOURAGING FURTHER INQUIRIES AND POTENTIAL COPIES IN PAPER, DISK, E-MAIL FORM, WE SIMPLY KNOW NOT.

THEY HAVE ALSO REFUSED TO EFFECTIVELY PARTICIPATE IN GATHERING IN UNAUTHORIZED COPIES. IT'S THE OLD--I'M SORRY TO USE THE WORN CUT ANALOGY FEATHERS TO THE WIND, BUT THIS IS THE CLASSIC CASE. WE HAVE ASKED THEM TO ASK ALL OF THOSE WHO COPY FROM THEIR SITE TO DESTROY THEM.

THE COURT: WELL, LET ME ASK. THE ONLY WAY--THEY WOULDN'T KNOW WHO HAS ACCESSED THEIR SITE; RIGHT?

MR. ZENGER: WELL, THERE MAY VERY WELL BE ELECTRONIC SUMMARIES OR HISTORIES OF THE PEOPLE THAT HAVE ACCESSED THEIR SITES. THEY HAVEN'T PROVIDED US THAT INFORMATION. THEY HAVEN'T EVEN INDICATED THAT THEY'RE WILLING TO GO BACK AND ASK THOSE PEOPLE TO REMOVE OR DESTROY THOSE COPIES. SO THEY'RE REFUSING TO PARTICIPATE IN STEMMING THE TIDE OF FURTHER INFRINGEMENTS BY THIRD PARTIES. AND LET ME INDICATE WHY WE THINK THAT'S AN ONGOING PROBLEM.

THE COURT: BEFORE YOU DO THAT, TELL ME, MR. ZENGER, WHAT YOU WOULD HAVE THEM DO LOGISTICALLY. THEY HAVE PUT YOUR LETTER UP THERE SAYING DESTROY IT. WHAT OTHER STEPS PRACTICALLY DO YOU ANTICIPATE OR COULD YOU SEE THEY WOULD DO TO HELP GATHER IN THESE COPIES?

MR. ZENGER: THANK YOU. YOUR HONOR, MAY I COMMENT ON WHY WE DON'T THINK THAT'S AN EFFECTIVE WAY TO GATHER THEM BACK IN?

MR. ZENGER: FIRST OF ALL, IT'S OUR DEMANDS. THE LETTER IS OUR DEMAND. AND THEY POST OUR DEMAND RATHER THAN AN ACKNOWLEDGMENT BY THEM. SECOND, THEY HAVE TAKEN POSITIONS NOW PUBLICLY, IN THE PRESS AGAIN, THAT ARE--THAT DIMINISH OR COMPLETELY EVISCERATE OUR DEMAND. FOR EXAMPLE, WE SAY, "PLEASE ACKNOWLEDGE THAT IT WAS WITHOUT PERMISSION." AND WHAT STATEMENT DO THEY TAKE IN THE PRESS TO COMPLETELY EMASCULATE THAT STATEMENT? "WE DON'T NEED THEIR PERMISSION." SO, IN OTHER WORDS, THEY SAY THEY'RE POSTING MY LETTER WITH THE ACKNOWLEDGMENT, BUT THEN IN THE PRESS THEY'RE MAKING STATEMENTS THAT SAY THEY DON'T BELIEVE THAT ACKNOWLEDGMENT.

THE COURT: WELL, YOU REALIZE THAT I'M CERTAINLY NOT GOING TO ENJOIN AT THIS STAGE THE DEFENDANTS FROM MAKING STATEMENTS IN THE PRESS WITHOUT--YOU KNOW, WE'RE RUNNING INTO FIRST AMENDMENT IMPLICATIONS, AND I'D HAVE TO BE MUCH MORE CERTAIN OF THE GROUNDS BEFORE I DID THAT. SO WHAT WOULD YOU HAVE THEM DO PRACTICALLY?

MR. ZENGER: THIS IS WHAT I WOULD HAVE THEM DO I WOULD HAVE THEM GO TO THEIR WEB SITE, AND AT THE SAME PLACE WHERE THEY HAD EITHER INDEXED OR HAD THE TEXT OF THE INFRINGING WORK, THEY PUT IN THE ACKNOWLEDGMENT, EITHER VERBATIM OR AS--BECAUSE RIGHT NOW IT'S IN A THUMBNAIL; YOU CAN'T READ IT UNLESS YOU GO THROUGH FURTHER CLICKING TO ENLARGE DOCUMENTS. THEY'VE PUT IT IN WHAT'S CALLED A THUMBNAIL PRINT. THE LETTER IS SO SMALL IT'S NOT EVEN LEGIBLE.

SO WE WOULD ASK THAT IT BE PUT IN AS THEIR ACKNOWLEDGEMENT FIRST, AND AT THE SAME PLACE AND PROMINENCE AS THE INFRINGING WORK. THAT WE WOULD WISH, AND THAT IT BE THEIR ACKNOWLEDGMENT, NOT SIMPLY THEIR ACKNOWLEDGMENT OF OUR DEMAND.

MR. ZENGER: NOW, ANOTHER RIGHT, YOUR HONOR, THAT HAS ALREADY BEEN ERODED AND WE BELIEVE WILL BE CONTINUED TO BE ERODED IS OUR RIGHT OF FIRST PUBLICATION. THE SUPREME COURT HAS SAID VERY EMPHATICALLY IN HARPER VERSUS ROW THAT THERE CAN ONLY BE ONE FIRST PUBLISHER, AND THAT THAT RIGHT LIES WITH THE COPYRIGHT OWNER, WHO AS I'VE STATED HAS THE RIGHT TO DECIDE WHETHER, WHEN, WHERE AND HOW TO DISTRIBUTE THE COPYRIGHTED WORK.

INSTEAD, LIGHTHOUSE HAS TAKEN THAT UPON THEMSELVES TO DECIDE WHETHER IT'S GOING TO BE PUBLISHED IN ELECTRONIC MEDIA, WHEN, WHERE AND HOW. SO IT'S AN ABSOLUTE ABROGATION OF I.R.I.'S RIGHT TO CONTROL THE FIRST PUBLICATION. AND--

THE COURT: BUT, MR. ZENGER, AND THAT MAY BE, BUT RIGHT NOW WE'RE TALKING ABOUT AN EXTRAORDINARY REMEDY. YOU'RE ASKING ME TO DO SOMETHING OR HAVE THEM DO SOMETHING. SO, YOU KNOW, I NEED TO KNOW PRACTICALLY WHAT STEPS YOU WANT THE DEFENDANTS TO TAKE THAT YOU BELIEVE WILL KIND OF MAINTAIN THINGS UNTIL THE WHOLE ISSUE IS RESOLVED.

MR. ZENGER: AS I'VE INDICATED ALREADY, WE WANT ASSURANCES BY COURT ORDER THAT THEY HAVE ALL COPIES THAT THEY OWN, BE THEY ON AN INTERNET SERVER, ON THEIR OWN HARD DRIVES, ON ELECTRONIC DISKS, OR IN HARD COPY FORM, OR GIVEN TO SOMEONE ELSE TO HOLD AS A CUSTODIAN OR IN ESCROW. IN OTHER WORDS, WE WANT EVERY SINGLE COPY OF IT DESTROYED OR RETURNED TO US WITH THE ASSURANCE AND WARRANTY THAT NONE REMAIN IN THEIR POSSESSION, CUSTODY OR CONTROL.

THE COURT: I AM SEEING SOME PROBLEM WITH WHAT YOU'RE SEEKING AT THIS STAGE. AND, AGAIN, AND I WANT TO MAKE CLEAR, THAT THE STAGE WE'RE IN ISN'T EVEN PRELIMINARY INJUNCTION; IT'S T.R.O. YOU ARE ASKING ME TO ORDER ESSENTIALLY THE COMPLETE RELIEF YOU WOULD RECEIVE IF YOU PREVAILED AT TRIAL. AND I UNDERSTAND THE LAW TO TELL ME THAT IS GENERALLY NOT--NOT DONE BECAUSE OF WHERE WE ARE NOW. WE'RE AT SUCH A TEMPORARY STAGE.

I MEAN YOU WOULD--AND WHAT IF I DID ORDER THEM DESTROY THOSE MATERIALS, ETCETERA, AND THEY CAME UP WITH SOME VALID DEFENSE TO YOUR INFRINGEMENT ACTION, THEN WHERE WOULD WE BE? I MEAN I WOULD HAVE PERHAPS OVERSTEPPED THE BOUNDARIES OF THE RELIEF I SHOULD BE GIVING.

MR. ZENGER: WELL, WE DON'T BELIEVE THAT'S NECESSARILY OVERSTEPPING, YOUR HONOR, BECAUSE WE UNDERSTAND THE PURPOSE OF INJUNCTIVE RELIEF IS TO RETURN THE PARTIES TO THE STATUS QUO.

THE COURT: WELL, IT'S TO MAINTAIN THE STATUS QUO, WEIGHING THE HARMS UNTIL I CAN GET IT COMPLETELY RESOLVED. AND THE STATUS QUO I'M THINKING IS WOULDN'T A MORE MODERATE APPROACH BE TO GET AN AGREEMENT, OR IF IT'S AN ORDER, THAT THEY NOT DISTRIBUTE, THEY NOT PUBLISH, THAT THESE MATERIALS THAT THEY HAVE THAT YOU SAY ARE INFRINGING, THAT THEY JUST DON'T USE THEM DURING--UNTIL WE GET THIS COMPLETELY SORTED OUT SO THAT THEN IF THERE IS A CHANCE THAT THEY WILL PREVAIL, THEN WE HAVEN'T OVERSTEPPED THE BOUNDS.

THE COURT: LET ME JUST HEAR--LET ME JUST HEAR WHAT MR. BARNARD HAS TO SAY AND WHAT HIS CLIENTS ARE WILLING TO DO, AND LET'S SEE WHERE WE GO FROM THAT.

MR. BARNARD: THANK YOU, YOUR HONOR. AS YOUR HONOR HAS EMPHASIZED A COUPLE TIMES THIS MORNING, WE'RE HERE ON A TEMPORARY RESTRAINING ORDER. WE'RE NOT HERE TO GIVE THE PLAINTIFFS THE FINAL RELIEF THAT THEY SEEK IN THEIR COMPLAINT. I WILL HAVE AN OPPORTUNITY TO FILE AN ANSWER AND HOPEFULLY PRESENT SOME DEFENSES.

WHAT WE'RE TALKING ABOUT IS IMMEDIATE IRREPARABLE HARM THAT IS BEING SUFFERED RIGHT NOW. IT'S OUR POSITION THAT THERE ISN'T ANY IMMEDIATE IRREPARABLE HARM BEING SUFFERED RIGHT NOW. I THINK THE DISTINCTION THAT PLAINTIFF'S COUNSEL IS TRYING TO MAKE BETWEEN IT NOT BEING ACCESSIBLE AND IT BEING DELETED IS A DISTINCTION WITHOUT A DIFFERENCE. THE INFORMATION IS NOT ACCESSIBLE ON MY CLIENT'S INTERNET SITE. YES, HE'S CORRECT, IF THE INTERNET SITE IS CALLED UP, THERE'S A LISTING AND IT SAYS, "HANDBOOK." YOU CLICK ON THAT AND IT SIMPLY SAYS, "INFORMATION IS NOT HERE."

THE COURT: IT SAYS IN YOUR CLIENT'S AFFIDAVIT NUMBER THREE THOUGH THAT IT'S OFF. "I'VE CAUSED TO BE REMOVED FROM THE WEE SITE THE MATERIALS. SO THAT'S MY--MY UNDERSTANDING OF THAT IS MAYBE IT'S ON THE INDEX BUT THE MATERIALS THEMSELVES ARE GONE.

MR. BARNARD: SO THERE'S NO IMMEDIATE IRREPARABLE HARM BEING SUFFERED RIGHT NOW. THE INFORMATION IS NOT AVAILABLE. MY CLIENTS WOULD BE MOST WILLING TO REMOVE THAT REFERENCE FROM THEIR INDEX, AND WE WOULD STIPULATE OR SIMPLY INDICATE TO THE COURT THAT THE AS SOON AS THEY TALK TO THEIR WEBMASTER THEY'LL HAVE THAT REMOVED FROM THE INDEX.

THE COURT: WOULD YOUR CLIENTS BE WILLING TO DO--REMOVE THE INDEX, CONTINUE THE AGREEMENT THEY WILL NOT PUT THE MATERIALS BACK UP, AND AGREE THAT THE SOURCE MATERIALS THAT THEY HAVE THAT PLAINTIFFS SAY ARE INFRINGING, THEY WILL NOT DISTRIBUTE THEM IN SOME OTHER FORM?

I THINK WHAT THE PLAINTIFF IS WORRYING ABOUT AND RIGHTLY SO IS MAYBE IT'S OFF THE WEB SITE BUT THERE ARE CERTAINLY OTHER WAYS TO DISTRIBUTE. I MEAN IT WOULD BE SOMEWHAT OF A BEHIND THE BACK SITUATION IF THEY WENT OFF THE WEB SITE BUT THEN PAMPHLETS WERE HANDED OUT ON THE STREET CORNER FOR EXAMPLE. HOW FAR ARE YOUR CLIENTS WILLING TO GO AS FAR AS NOT--AS AGREEING UNTIL WE HAVE OUR FULL HEARING ON THIS TO NOT DISTRIBUTING THEM IN ANY FORM?

MR. BARNARD: MY--MY CLIENTS WOULD BE WILLING TO DO THAT WITH REGARD TO THE VERBATIM MATERIAL THAT THEY HAVE. THE CONCERN I HAVE--AND THIS IS AN ISSUE THAT WE WILL BRIEF AND PRESENT TO THE COURT--IS THAT MY CLIENTS MAY NOT HAVE THE RIGHT TO PUBLISH THIS INFORMATION VERBATIM. HOWEVER, UNDER SEVERAL--WELL, UNDER THE FAIR USE DOCTRINE, IF NOTHING ELSE, THEY MAY BE ABLE TO QUOTE PORTIONS OF IT.

THE COURT: BUT LET ME JUST SOME YOU THERE. WE'RE JUST TALKING ABOUT 10 OR 15 DAYS. WHAT I'M TRYING TO DO IS WEIGHING AND BALANCING THE HARMS DURING THIS 15 DAY PERIOD. WHAT HARM IS THERE TO YOUR CLIENTS IF FOR 10 OR 15 DAYS THEY TAKE THE MATERIALS OFF--THEY ALREADY ARE--THEY TAKE OFF THE INDEX, AND THEY DO NOT DISTRIBUTE OR PUBLISH THE MATERIALS IN ANY FORM DURING THAT PERIOD OF TIME UNTIL THIS--WE'VE HEARD THIS COMPLETELY AT A HEARING FOR PRELIMINARY RELIEF? I MEAN THEY'RE NOT GOING--WHAT HARM WOULD THEY SUFFER IF THEY DIDN'T DISTRIBUTE THE MATERIALS FOR THAT LIMITED PERIOD OF TIME?

MR. BARNARD: IT DEPENDS ON HOW WE DEFINE DISTRIBUTE THE MATERIAL. IF A NEWSPAPER REPORTER WERE TO ASK MY CLIENTS ORALLY, "TELL ME WHAT WAS IN THAT INFORMATION," OR, "TELL ME WHAT WAS IN THE STUFF THAT WAS ON THE WEB SITE," ORALLY, IF THAT VIOLATES THE AGREEMENT, THEN WE HAVE A PROBLEM THERE.

THE COURT: WELL, I DON'T THINK--I MEAN IT DEPENDS--WE'RE TALKING A LITTLE GOOD FAITH. I'M WELL AWARE THERE'S FIRST AMENDMENT RIGHTS INVOLVED HERE, BUT I MEAN I THINK YOUR CLIENTS WOULD HAVE EVERY RIGHT TO TALK TO THE NEWSPAPER, BUT THEY MIGHT NOT HAVE A RIGHT TO SIT DOWN AND READ ALL 15 PAGES, ETCETERA. i MEAN THERE IS A DISTINCTION THERE.

MR. BARNARD: AND I AGREE. AND AS LONG AS THAT DISTINCTION WOULD BE EMBODIED IN AN AGREEMENT, MY CLIENTS WOULD ENTER INTO SUCH AN AGREEMENT. MY CLIENTS WILL NOT DISTRIBUTE VERBATIM THE MATERIALS THAT WERE ON THE INTERNET SITE, EITHER ELECTRONICALLY OR IN ANY KIND OF A WRITTEN FORM PENDING A HEARING ON THE PRELIMINARY INJUNCTION.

THE COURT: WHAT ABOUT IF--DO YOU THINK THAT THAT WOULD MEAN THAT YOUR CLIENTS WOULD HAVE THE RIGHT TO PUBLISH--AND I'M NOT TALKING ABOUT TALKING TO A NEWSPAPER--BUT TO HAND OUT SAY FIVE PAGES OF WHAT THEY BELIEVE TO BE THE SALIENT POINTS? WHY CAN'T YOUR CLIENTS JUST LAY LOW ON THIS FOR 10 OR 15 DAYS? I MEAN JUST KEEP THINGS AT AN EVEN KEEL UNTIL YOU'VE HAD A CHANCE TO BRIEF IT. ALL I HAVE NOW IS MR. ZENGER'S DOCUMENTS, AND IT LOOKS LIKE THERE'S COPYRIGHT INFRINGEMENT.

MR. BARNARD: YES. AT FIRST BLUSH, READING HIS DOCUMENTS, THERE'S A COPYRIGHT VIOLATION BASED UPON HIS DOCUMENTS. THE QUESTION THOUGH COMES ABOUT THE RELIEF THAT THE COURT CAN ORDER TODAY. AND MY CLIENTS, AS I SAY, HAVE TAKEN IT OFF THE WEB SITE. THEY'RE NOT DISTRIBUTING IT ELECTRONICALLY. THEY WILL NOT DISTRIBUTE IT VERBATIM ELECTRONICALLY. MY CLIENTS WILL AGREE NOT TO MAKE PHOTOCOPIES OF IT AND NOT DISTRIBUTE PHOTOCOPIES OF IT.

MY CLIENTS WOULD LIKE TO BE ABLE TO ANSWER QUESTIONS ASKED BY THE NEWS MEDIA, PARAPHRASE WHAT WAS IN THE MATERIAL OR DESCRIBE GENERALLY WHAT WAS IN THE MATERIAL.

THE COURT: WELL, ANSWERING QUESTIONS FROM THE NEWSPAPER, CERTAINLY I SEE THAT, AND ETCETERA, MAKING COMMENTS. BUT WHEN YOU SAY PARAPHRASE, ETCETERA, ARE WE TALKING ABOUT YOUR CLIENTS PUTTING UP ON THE WEB OR HANDING OUT WRITTEN COPIES OF THEIR OUTLINE OF IT OR WHAT ARE YOU SAYING?

MR. BARNARD: NO, NO. WHAT WE'RE TALKING ABOUT WOULD BE SOMETHING THAT WAS UNQUESTIONABLY AND CLEARLY COVERED BY FAIR USE DOCTRINE, SOMETHING THAT WOULD BE A SMALL QUOTE, SOMETHING THAT WOULD BE A PARAPHRASE.

MR. BARNARD: WITH REGARD TO THE DESCRIPTION OF THE THUMBNAIL ON MY CLIENT'S WEB SITE. LITERALLY IT'S A THUMBNAIL BECAUSE WHEN YOU LOOK AT IT, IT LOOKS LIKE THE SIZE OF YOUR THUMBNAIL. THE DOCUMENT FROM OPPOSING COUNSEL WAS SCANNED INTO MY CLIENT'S COMPUTER AND PUT ON THEIR WEB SITE. STANDARD PRACTICE WHEN A DOCUMENT IS SCANNED, THAT YOU DON'T SCAN THE ENTIRE DOCUMENT. ALL THAT'S REQUIRED IS WHEN SOMEBODY SEES THAT THUMBNAIL IS TO CLICK ON IT. IT IS THEN ENLARGED AND IT IS FULL SIZE. IT'S EIGHT-AND-A-HALF BY ELEVEN AND SHOWS UP ON THE SCREEN. SO IT'S NOT--IT'S NOT HIDDEN. IT'S NOT OBSCURED. AND PUTTING IT ON BY USING A THUMBNAIL LIKE THAT IS STANDARD.

THE COURT: ALL RIGHT, MR. ZENGER. WHAT ELSE--I MEAN, YOU KNOW, WE DO HAVE ISSUES OF THE FIRST AMENDMENT, AND I'M NOT GOING TO GET INTO THAT AT THIS STAGE AT ALL BECAUSE THAT CAN BE TROUBLE. BUT WHAT ABOUT THE OFFER MADE BY MR. BARNARD? AND I'LL TELL YOU; I'D PUT IT INTO AN ORDER. WHAT ABOUT IT DO YOU BELIEVE IS STILL LACKING AT THIS STAGE, IF ANYTHING?

MR. ZENGER: YOUR HONOR, I BELIEVE--YOUR HONOR, I BELIEVE THAT IF THEY'RE WILLING TO BE SUBJECT TO AN ORDER THAT WILL KEEP THEM FROM DISTRIBUTING VERBATIM COPIES SUCH AS THEY HAVE IN THE PAST IN ANY FORM, THAT WE CAN LIVE WITH THAT.

THE COURT: ALL RIGHT. COUNSEL, WHAT IF I ISSUED AN ORDER AND I ACKNOWLEDGE THAT IT'S BASED ON YOUR AGREEMENT THAT THE DEFENDANTS WILL KEEP THE WEB SITE DOWN--TAKE OFF THE INDEX, AS I UNDERSTAND THEY'VE AGREED--TAKE OFF INDEX; AND THEY AGREE THAT THEY WILL NOT DISTRIBUTE VERBATIM THE MATERIALS THAT YOU ALLEGE ARE COVERED BY YOUR COPYRIGHT. IS THAT IT OR IS THERE MORE THAT YOU NEED?

MR. ZENGER: AS LONG AS IT DEALS WITH PORTIONS AS WELL. AS YOUR HONOR MENTIONED IN HER EXAMPLE OF TAKING THE FIVE SALIENT PORTIONS OF AN OTHERWISE 15 PAGE DOCUMENT, WE BELIEVE THAT'S--

THE COURT: OKAY. HOW DO WE PHRASE THIS THOUGH, COUNSEL, SO THAT WE DON'T INTRUDE UPON THEIR RIGHT THAT IT APPEARS THEY MIGHT HAVE TO MAKE COMMENTS TO SAY A NEWSPAPER? WHERE DO YOU DRAW THE LINE?

MR. ZENGER: I THINK YOUR HONOR ALREADY HIT UPON IT IN SIMPLY ASKING THEM FOR THESE 15 DAYS TO REFRAIN FROM VERBATIM PUBLISHING OF THAT WORK AND--THE ALLEGED WORK OR PORTIONS OF IT.

THE COURT: WELL, I'M RUNNING INTO A DIFFICULTY. I DON'T UNDERSTAND THE DIFFERENCE THEY CAN STILL COMMENT BUT THEY DON'T PUBLISH, AND WHAT DO YOU MEAN BY PUBLISH I GUESS IS WHAT I'M--

THE COURT: OKAY. OKAY. DO YOU UNDERSTAND THAT, MR. BARNARD, AND HOW DO YOU FEEL ABOUT IT?

MR. BARNARD: MY CLIENTS WOULD BE WILLING TO AGREE THAT THEY NOT PUBLISH VERBATIM THE MATERIAL, YES.

THE COURT: WELL, I THINK WHAT I WOULD NOT WANT TO SEE THEN WOULD BE AN OUTLINE APPEARING ON THE WEB SITE OR BEING HANDED OUT OF UNDER SAY FIVE PAGES OF IT, POINT ONE, AND THEN YOU GET--WHEN YOU SAY VERBATIM, YOU JUST MEAN WORD BY WORD? IT DOESN'T HAVE TO BE THE WHOLE THING; RIGHT? WHAT DO YOU MEAN?

THE COURT: SEE, I'M A LITTLE CONFUSED ABOUT VERBATIM. THAT DOESN'T MEAN THE TOTAL DOCUMENT. IT'S JUST YOU DON'T WANT THEM TO--WHAT ARE YOU SAYING, SO THAT THEY CAN'T SAY ONE WORD--THAT THEY CAN'T GIVE ONE LINE FROM IT OR WHAT?

MR. ZENGER: YOUR HONOR, I HONESTLY DON'T KNOW IF WE CAN KEEP THEM FROM USING ONE LINE. I'M NOT GOING TO BE COMPLETELY UNREASONABLE ON THAT, BUT THEY HAVE INTENTIONALLY DONE THIS. AND ALL WE'RE ASKING IS FOR THESE 15 DAYS STOP ALL OF IT BECAUSE--AND ALL I'M ASKING FOR IS THE STATUS QUO. BEFORE THE INFRINGEMENT THEY DIDN'T HAVE ANY RIGHT TO DO THIS, AND WE HAD THE RIGHT TO CONTROL ALL PUBLICATIONS OF IT, VERBATIM OR OTHERWISE. AND ALL WE'RE ASKING FOR IS THAT SAME THING FOR THESE 15 DAYS. AND WE HOPE THAT THEY WOULD BE GOOD ENOUGH TO COMPLY WITH EVEN PORTIONS FOR 15 DAYS. IT SEEMS REASONABLE.

THE COURT: ALL RIGHT. BUT BEARING IN MIND THAT THIS ORDER WOULD NOT RESTRICT THEM FROM MAKING COMMENTS TO NEWSPAPERS, ETCETERA, WHICH IS AN ISSUE WE'VE NOT--I DON'T HAVE IN FRONT OF ME, AND I'M WELL AWARE THAT, YOU KNOW, THEY HAVE A RIGHT TO THEIR FIRST AMENDMENT RIGHTS TO EXERCISE, AND I DON'T THINK WE WANT TO GET INTO THAT. OKAY?

MR. BARNARD: BACK TO YOUR HONOR'S SUGGESTION ABOUT AN OUTLINE. AN OUTLINE IS NOT PROTECTED BY A COPYRIGHT. ALTHOUGH THEY MAY HAVE A COPYRIGHT ON A DOCUMENT, IF MY CLIENTS LOOK AT A DOCUMENT AND DO AN OUTLINE, THAT'S NOT A VIOLATION OF THE COPYRIGHT LAWS.

THE COURT: I THINK WHAT WE'RE WORRIED ABOUT WOULD BE SAY, "HERE IS AN OUTLINE, POINT ONE," AND THEN WE GET A COUPLE OF SELECTED PARAGRAPHS FROM THE ACTUAL MATERIAL.

THE COURT: ALL RIGHT. I THINK AT THAT STAGE THAT'S AS FAR AS I CAN--THAT WE CAN GO.

THE COURT: ALL RIGHT. AND I FIND THAT IN A LIMITED FORM--AND I WILL DRAFT THE ORDER, AND I WILL HAVE IT OUT IN A COUPLE OF HOURS--IN A LIMITED FORM I'M GOING TO GRANT THE PLAINTIFF'S MOTION FOR THIS TEMPORARY RELIEF. I BASE THAT ON SEVERAL FACTORS. ONE IS THE WILLINGNESS OF THE DEFENDANTS AND THEIR COUNSEL TO AGREE, AND, TWO, I HAVE LOOKED AT THE FOUR FACTORS THAT I MUST FOR GRANTING INJUNCTIVE RELIEF.

AT THIS STAGE, AND RECOGNIZING I HAVE NOT YET HEARD FROM THE DEFENDANTS, IT DOES APPEAR THAT THERE'S A SUBSTANTIAL LIKELIHOOD OF SUCCESS; THAT PLAINTIFF DOES HAVE A COPYRIGHT INTEREST IN THE MATERIALS WHICH HAS BEEN INFRINGED. AND I'M MINDFUL OF THE FACT THAT VIOLATION OF COPYRIGHT DOES OFTEN REQUIRE INJUNCTIVE RELIEF.

LOOKING AT THE HARMS, I DO NOT SEE ANY HARM THAT WOULD FLOW TO THE DEFENDANTS WITH THE KIND OF LIMITED RELIEF I'M GOING TO GIVE. I COULD SEE A HARM IF I REQUIRED THEM TO DESTROY THE MATERIALS, BUT I AM NOT GOING TO DO THAT. THE HARM TO THE PLAINTIFF IF I DON'T GIVE INJUNCTIVE RELIEF IS THAT THEY WELL COULD HAVE THEIR RIGHTS UNDER THE COPYRIGHT INFRINGED, AND THAT IS SUFFICIENT.

LOOKING AT THE PUBLIC INTEREST, I BELIEVE THAT I WILL STRIKE A BALANCE, RECOGNIZING THE IMPORTANCE OF THE PLAINTIFF'S COPYRIGHT INTERESTS, AND YET VERY MINDFUL THAT THE DEFENDANTS DO HAVE FIRST AMENDMENT RIGHTS, AND THAT I'M NOT GOING TO INTRUDE UPON.

SO I WILL DRAFT THE ORDER, AND IT WILL SIMPLY SAY THAT YOU WILL KEEP THE WEB SITE DOWN. AND WE'RE GOING TO SET A DATE. YOU WILL TAKE OFF THE INDEX. YOU WILL NOT DISTRIBUTE VERBATIM THE PORTIONS OF THE ALLEGEDLY INFRINGED MATERIAL.

THE COURT: TANGIBLE--THAT'S A VERY GOOD WORD--TANGIBLE, OKAY. SO WITH THOSE, THAT WILL BE MY ORDER. MR. BARNARD, ANYTHING FURTHER?

MR. BARNARD: SIMPLY YOUR HONOR MADE A STATEMENT THAT THE WEB SITE WOULD BE DOWN. WE'RE SIMPLY AGREEING TO TAKE THE OFFENDING MATERIAL OFF THE WEB SITE.

THE COURT: THAT'S WHAT I MEAN, THAT THE WEB SITE--THAT YOU WILL KEEP OFF THE WEB SITE THE MATERIALS ALLEGED TO BE INFRINGED.

MR. ZENGER: YOUR HONOR, ARE WE--THERE'S ONE ISSUE THAT WE HAVEN'T ADDRESSED AND THAT IS WHETHER THEY POST AN ACKNOWLEDGMENT THAT IT WAS COPYRIGHTED WORK AT THE SAME SITE AND IN THE SAME PLACE AND THE SAME PROMINENCE. WE THINK THAT SHOULD ALSO BE--

THE COURT: I AM GOING TO DENY THAT AT THIS TIME WITHOUT PREJUDICE BECAUSE I BELIEVE THAT THE LETTER, ALBEIT IN A THUMBNAIL FORM, BUT IT CAN BE ACCESSED, ACHIEVES THE RESULT THAT IS SUFFICIENT FOR THIS LIMITED PERIOD TO PUT USERS--WELL, WAIT NOW, MR. ZENGER. IF YOU CAN'T GET IN THERE--OH, YOU CAN GET IN THERE, AND THAT'S WHAT YOU'LL SEE. IS THAT HOW IT GOES?

ALL RIGHT. TO PUT USERS OF THE WEB SITE AND PEOPLE WHO MIGHT BE LOOKING FOR THAT MATERIAL ON NOTICE THAT THERE IS A DISPUTE AND A POSSIBLE INFRINGEMENT. AND UNTIL I HEAR MORE ABOUT IT, I DON'T BELIEVE THAT--IN FACT, I'M NOT GOING TO ORDER THAT THEY DO ANYTHING FURTHER TO ENSURE THAT ANYTHING OUT THERE COMES BACK TO YOU, BUT THAT WILL BE A POSSIBILITY.

THE COURT: NOW LET'S SET IT DOWN FOR HEARING. YOU NEED TO FILE YOUR OPPOSITION. HOW LONG WILL THAT GIVE YOU? HOW LONG DO YOU NEED FOR THAT, MR. BARNARD? BECAUSE YOU MIGHT WANT TO MAKE IT SHORT, BECAUSE THIS IS GOING TO STAY IN EFFECT UNTIL WE GET IT TAKEN CARE OF. THIS INJUNCTION--ANY PROBLEM WITH IT LASTING UNTIL WE HAVE THE PRELIMINARY HEARING?

MR. ZENGER: YOUR HONOR, JUST FOR YOUR INFORMATION, WE SERVED COPIES OF THE MOTION PAPERS LAST WEDNESDAY.

THE CLERK: THE 27TH--WELL, THAT WOULD BE 14. 15 DAYS WOULD BE THE 28TH OF OCTOBER.

THE COURT: CAN YOU GET YOUR OPPOSITION AND YOUR MATERIALS IN ON--WHAT WAS THAT DATE, MS. BROWN?

MR. ZENGER: I DON'T THINK WE NEED TEN DAYS. WE WOULD SUGGEST THAT WE HAVE THAT TO THE COURT BEFORE THE END OF THE FOLLOWING WEEK SO THAT WE CAN HAVE A HEARING AS SOON AS POSSIBLE.

THE COURT: OKAY. NOW, THEN LET'S SET DOWN A HEARING JUST A FEW DAYS LATER. IF YOU CAN--

THE CLERK: THE 10TH IS THE BEST FOR THE COURT. THAT WOULD BE WEDNESDAY THE 10TH.

MR. ZENGER: THERE'S NOTHING ON FRIDAY THE 5TH? WE WOULD BE WILLING TO EXPEDITE OUR REPLY.

THE COURT: REMEMBER, MR. ZENGER, YOU'D LIKE ME TO HAVE BEEN ABLE TO HAVE READ THIS STUFF, BUT LET'S JUST SEE WHAT HAPPENS.

THE COURT: YES. I'LL GIVE YOU TWO HOURS. AND I REALLY THINK IT SHOULDN'T BE--I WOULD ENCOURAGE YOU, RATHER THAN USING LIVE TESTIMONY, IS TO SUBMIT AFFIDAVITS. AND IF THERE ARE WITNESSES THAT YOU BELIEVE YOU HAVE TO HAVE FOR CROSS-EXAMINATION, HAVE THEM HERE. BUT THE DIRECT OF ANY WITNESSES WHOM YOU ARE RELYING ON, SUBMIT IT IN AFFIDAVIT FORM FOR ME, OKAY?

AND THEN WHAT I'M GOING TO ASK YOU BOTH TO DO, COUNSEL--FOR EXAMPLE, MR. ZENGER, WHEN YOU RECEIVE MR. BARNARD'S MATERIALS, IF YOU SEE HE HAS ATTACHED AFFIDAVITS OF WITNESSES WHOM YOU WANT TO CROSS-EXAMINE, YOU TELL HIM YOU WANT THOSE WITNESSES, AND YOU MAKE THEM AVAILABLE, MR. BARNARD. SAME FOR YOU; IF YOU SEE AFFIDAVITS OF WITNESSES WHOM YOU WANT TO CROSS-EXAMINE, YOU TELL MR. ZENGER AND HE WILL HAVE THEM AVAILABLE.

SO THE ONLY TESTIMONY WE WOULD HAVE--AND I DON'T SEE HOW IT'S GOING TO BE NECESSARY TOO MUCH. I'LL NEED TO SEE WHAT'S UP THERE, BUT I DON'T KNOW THAT PEOPLE TALKING CAN GIVE ME MUCH MORE INFORMATION. BUT ANY WITNESSES YOU ANTICIPATE YOU HAVE TO HAVE FOR CROSS, YOU PRODUCE. YES, SIR?

MR. ZENGER: MAY WE ASK YOUR HONOR IN ORDER TO MOVE THE HEARING--TO MAKE THE HEARING GO EVEN FASTER THAT WE MIGHT DEPOSE ANY WITNESSES BEFORE THEN TO SEE IF THEY'RE EVEN WORTH PUTTING ON THE STAND?

MR. ZENGER: WE DON'T KNOW. WE DON'T KNOW HOW MANY WITNESSES HE'S GOING TO PROPOSE. WHEN WE SEE HIS LIST, CAN WE HAVE THE RIGHT TO DEPOSE THEM AND TO SEE IF THEY'RE EVEN WORTH BEING CALLED AS WITNESSES? WE DON'T WANT TO PUT THEM ON THE STAND AND TO DISCOVERY.

THE COURT: WHAT DO YOU THINK ABOUT THAT, MR. BARNARD? YOU'D HAVE THE RECIPROCAL RIGHT.

THE COURT: FINE. THEN IF IN FACT EITHER PARTY IS RELYING ON A WITNESS OR WITNESSES, DEPOSITIONS MAY BE TAKEN BY THE OTHER SIDE. BUT YOU CAN'T DO DEPOSITIONS OF SOMEONE WHO ISN'T--WHO ISN'T GOING TO BE RELIED ON. IN OTHER WORDS, IF MR. BARNARD DOESN'T SUBMIT AN AFFIDAVIT FROM SOMEONE, YOU CAN'T DEPOSE THEM; AND THE SAME FOR YOU, MR. BARNARD, OKAY?

ALL RIGHT. ANYTHING ELSE? OKAY. I'LL DRAFT THAT ORDER, AND IT SHOULD BE TO YOU SHORTLY. THANK YOU, COUNSEL.