No. 00-1503

IN THE UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
______________________

MICROSYSTEMS SOFTWARE, INC.	
	
						Plaintiff-appellee,			v.						
											
SCANDINAVIA ONLINE AB,		 ISLANDNET.COM,				
EDDY L.O. JANSSON, and			 MATTHEW SKALA				
					
						Defendants-appellees				
WALDO JAQUITH; LINDSAY		 HAISLEY; BENNETT HASELTON	
						
							Appellants	
______________________

ON APPEAL FROM THE UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
______________________

REPLY BRIEF OF APPELLANTS
______________________

Of counsel:
David L. Sobel
Electronic Privacy Information Center
1718 Connecticut Avenue, Suite 200
Washington D.C. 20009
 (202) 483-1140

Jessica Litman
Professor of Law
Wayne State University
468 West Ferry Mall
Detroit, Michigan 48202
(313) 577-3952

Christopher A. Hansen
ACLU Foundation 
125 Broad Street - 18th floor
New York City, New York 10004
(212) 549-2606

Sarah R. Wunsch
Court of Appeals #28628
ACLU of Massachusetts
99 Chauncy Street, Suite 310	
Boston, Massachusetts 02111
(617) 482-3170, ext. 323

TABLE OF CONTENTS
	
												  Page

TABLE OF AUTHORITIES	ii

INTRODUCTION	1

I.  APPELLANTS HAVE STANDING TO APPEAL.	1

II.  THE DISTRICT COURT’S ORDER VIOLATED DUE PROCESS.	5

III.  THE DISTRICT COURT DID NOT HAVE SUBJECT MATTER
       JURISDICTION..	9

IV.  DEFENDANTS’ ACTIONS CONSTITUTED “FAIR USE.”	11

V.  THIS COURT SHOULD REJECT CYBER PATROL’S ATTEMPT TO          
      RAISE NEW LEGAL ISSUES.	14

CONCLUSION	16

CERTIFICATE OF COMPLIANCE	17

CERTIFICATE OF SERVICE	18

TABLE OF AUTHORITIES

Cases										                       Page

Amcel Corp. v. International Executive Sales, Inc., 
	170 F.3d 32 (1st Cir. 1999)	14

Baggett v. Bullitt, 
	377 U.S. 360 (1964)	5

CPC International v. Skippy, 
	2000 WL 710147 (4th Cir. 2000)	6

Dopp v. HTP Corp, 
	947 F.2d 506 (1st Cir. 1991)	2, 3

Goguen v. Smith, 
	471 F.2d 88 (1st Cir. 1972)	9

Hendrix v. Page, 
	986 F.2d 195 (7th Cir. 1993)	9

Johnston v. Holiday Inns, 
	595 F.2d 890 (1st Cir. 1979)	14

Junger v. Daley, 
	209 F.3d 481 (6th Cir. 2000)	9

Kaplan v. Rand, 
	192 F.3d 60 (2nd Cir. 1999)	3, 4

Keith v. Volpe, 
	118 F.3d 1386 (9th Cir. 1997)	4

Lewis Galoob Toys v. Nintendo of America, 
	964 F.2d 965 (9th Cir. 1992)	11

NBA Properties v. Gold, 
	895 F.2d 30 (1st Cir. 1990)	7

Project BASIC v. Kemp, 
	947 F.2d 11 (1st Cir. 1991)	6, 9

Regal Knitwear Co. v. NLRB, 
	324 U.S. 9 (1945)	7

Smith v. Goguen, 
	415 U.S. 566 (1974)	9
	
U.S. v. PATCO, 
	678 F.2d 1 (1st Cir. 1982)	6

Statutes and Codes

17 U.S.C. § 106(2)	10, 11

Fed. R. Civ. Pro. 65(d)	6

H.R. Rep. No. 1476,  94th Cong., 2d Sess. 62 (1976), reprinted in  1976 U.S.C. C.A.N. 5659, 5675	11

Other Citations

http://www.lemuria.org/mirrors/CP/cndecode.c	8

http://www.lemuria.org/mirrors/CP/cph1_rev.c.	8

http://www.openpgp.net/censorship/microsys.sucks/cp4break.html	12, 13, 15

loser.port5.com/index.htm	12	

INTRODUCTION

	Appellants seek to engage in speech about a matter of public importance.  The district court has entered an injunction prohibiting that speech.  Appellants were served with the injunction along with a letter from counsel for the plaintiffs-appellees, the corporate owners of Cyber Patrol (“Cyber Patrol”), threatening appellants with contempt if they spoke.  Appellants asked the district court whether the injunction applied to them.  The district court refused to rule.  Because of the danger that it might apply to them, appellants asked to be heard on the validity of the injunction.  The district court set up a procedure that will prohibit them from ever being heard on that validity.  The effect of the injunction has been to chill appellants from speaking, while at the same time preventing them from being heard on either the applicability or validity of the injunction.  That result is error.
I.  APPELLANTS HAVE STANDING TO APPEAL.
	Appellants are operators of web sites on the Internet.  They mirrored (or copied) the program written by defendants-appellees Jansson and Skala (“Jansson/Skala”) and placed that copy on their web sites.  This Court could have been spared this entire appeal if Cyber Patrol  had simply stated that they did not consider the appellants included within the scope of the district court's order.  But, instead, Cyber Patrol has done everything possible to threaten the appellants with possible contempt proceedings, including serving the permanent injunction on them.   In this context, Cyber Patrol’s argument to this Court that appellants are not affected and therefore do not have standing is, at best, disingenuous.
	For three reasons, appellants, although not formal parties in the district court, have standing to appeal in this case.  First, Cyber Patrol concedes that a non-party may appeal “when a lower court specifically directs an order at a non-party or enjoins it from a course of conduct.”   Dopp v. HTP Corp, 947 F.2d 506, 512 (1st Cir. 1991); See Brief of Appellees, June 21, 2000 (“CP Brief”) p. 14.
	The order in this case is specifically directed at appellants.  Indeed, Cyber Patrol essentially concedes that it intended that result.  Cyber Patrol asked that the order cover not only Jansson/Skala but also those “in active concert” with them.   Pursuant to the order, Cyber Patrol served two of the appellants, along with a cover letter implying it bound them.  It never recants its boasts that they are bound.   CP Brief p. 15, n.15.  Under the procedure adopted by the district court, Cyber Patrol has the sole discretion to decide who it believes to be bound and bring a contempt motion against them.  Add.  p. 17.  Even though the court might ultimately refuse to grant contempt, Cyber Patrol’s ability to hale appellants into court, and force them to risk fine and/or imprisonment, chills appellants’ speech.
	As importantly, appellants’ fear that the order is specifically directed at them does not rely solely on Cyber Patrol’s representations.  Based on the conclusory affidavit of Cyber Patrol’s counsel, the district court found that many (unspecified) mirror sites were created “to prevent this Court from awarding meaningful relief.”  Add. p. 4.  The district court ordered that the order be served on those “in active concert.”  Add. p. 17.   Finally, the district court adopted the procedure that gives Cyber Patrol authority to seek contempt against those that Cyber Patrol believes are “in active concert.”  Add. p. 17.
	Appellants cannot say with certainty that they are bound by the district court’s order.  Indeed, that uncertainty is the reason for this appeal.  However, the Dopp principle is surely strong enough to permit, even require, standing to appeal when a person has a reasonable basis for believing it may be bound by an order, when the person is appealing in part based on the unwillingness of the district court to resolve whether he is bound or not, and when the effect of the vagueness of the order is to suppress speech.
	Second, as Cyber Patrol again concedes, a non-party has standing on the basis of “an affected interest.”  CP Brief p. 12, n. 10.  Kaplan v. Rand, 192 F.3d 60, 67 (2nd Cir. 1999). Without any explanation, Cyber Patrol declares this principle irrelevant because “that is not the case here.”  CP Brief p. 12, n.10.   Yet, in this case, appellants’ “affected interest” is substantially greater than that in Kaplan.  In that case, the “affected interest” was the “possibility” that increased insurance premiums in the future might affect the value of a stockholder’s holdings.  192 F.3d at 68.  Here, appellants’ “affected interest” is the suppression of speech.  Unless they are willing to risk contempt, appellants may not post the disputed speech on the Internet.
	Finally, non-parties have standing to appeal if they were treated as parties in the trial court and if the balance of equities favors standing.  Brief for Appellants p. 16; Keith v. Volpe, 118 F.3d 1386, 1391 (9th Cir. 1997).  Cyber Patrol acknowledges that appellants were allowed to argue in the district court, but insists that this is not enough.  CP Brief p. 15, n. 16, p. 16.  Appellants did not merely argue in the district court.  They briefed substantive issues in their motions below, argued those motions, and received rulings on the merits.  Brief for Appellants p. 15.  The district court arguably directed the order at appellants.  Its opinion, in part, addresses arguments made by appellants.  Cyber Patrol does not address the equities of allowing standing in this case.  Cyber Patrol itself haled appellants into court and into this uncertainty by serving them and asserting they were in privity with Jansson/Skala.  The intended and actual effect of Cyber Patrol’s actions is to suppress appellants’ speech.  The equities do favor standing so that the appellants can determine if the order suppressing their speech is valid and if it applies to them.
II.  THE DISTRICT COURT’S ORDER VIOLATED DUE PROCESS.
	Appellants argued in their initial brief that the district court’s procedures violated due process in two respects.  First, the district court refused appellants’ request that it clarify whether the order was applicable to appellants.  Second, the district court set up a procedure that would prevent appellants from ever challenging the validity of the order.  Brief for Appellants p. 20-24.  Cyber Patrol does not respond to the second argument except to argue that the order was in fact valid.  Cyber Patrol does argue that the district court correctly refused to decide the applicability of the order to appellants.
	Appellants are unable to determine if they are bound by the district court’s order.  Accordingly, they must refrain from speaking or risk contempt.   The order is thus unconstitutionally vague, for “the perils posed by [its] indefinite language” allow appellants to avoid sanction “only by restricting their conduct to that which is unquestionably safe.  Free speech may not be so inhibited.”  Baggett v. Bullitt, 377 U.S. 360, 372-73 (1964).  Cyber Patrol virtually concedes that comparable uncertainty in a statute would be unconstitutionally vague, CP Brief p. 13, n.12, but argues that principles applicable to statutes are irrelevant.  Of course, the same principles, requiring specificity and precision, especially in the First Amendment context, are required of court orders.  CPC International v. Skippy, 2000 WL 710147 (4th Cir. 2000).  In Skippy, the court said that “[t]he First Amendment prohibits not only statutory abridgment but also judicial action that restrains free speech.”  Id. at *5. The court vacated a trademark injunction because it “lacks the findings and specificity required by Fed. R. Civ. Pro. 65(d) and because its substantial breadth raises serious First Amendment concerns...”.  Id. at *1; See also U.S. v. PATCO, 678 F.2d 1, 3 (1st Cir. 1982)(injunction tested against vagueness doctrine and “Rule 65(d) [which] embodies this concept.”).
	There can be no serious question that appellants had a due process right to know if they were covered by the court order or not.  In Project BASIC v. Kemp, 947 F.2d 11 (1st Cir. 1991), this Court reiterated this principle.  “[T]hose who would suffer penalties for disobedience must be aware not merely of an order’s existence, but also of the fact that the order is directed at them.  This tenet has not been stated frequently.  Withal, the relative rarity of articulation testifies more to the sheer obviousness of the principle than to doubts about its legitimacy.”  Id. at 17 (citation omitted).  Appellants asked for this clarity and were denied it.  That was error.
	Cyber Patrol tries to turn this principle upside down and hints (but does not say) that the very vagueness of the order should make appellants feel safe.  CP Brief p. 19.  Apparently, Cyber Patrol is arguing that it could not win a future contempt motion against a non-party such as appellants because the “in active concert” language is so vague.  This is surely a peculiar argument for a party seeking to preserve that language in the order.  Moreover, the cases on which Cyber Patrol relies on do not so hold.   More importantly, if the language in this case (“in active concert”) is so vague as to be unenforceable, it should be stricken.  Most importantly, what is really at work here is Cyber Patrol’s determination to achieve the effect of chilling speech whether or not the court order applies.  Cyber Patrol is seeking on the one hand to preserve the “in active concert” language in order to chill the speech of the appellants, and on the other hand, to minimize the importance of that language in order to prevent appellants from ever being heard on the applicability and validity of the underlying order.  It is Cyber Patrol that wants to have it both ways.
	Second, Cyber Patrol asserts that the vagueness of the order is not a vice because this case does not implicate the First Amendment.  CP Brief p. 14.  It suggests that the Jansson/Skala program includes only object code, not source code and is therefore not speech.  The Court need not address the highly technical distinctions between object code and source code.  The evidence in the record establishes that the Jansson/Skala program includes source code.  See Add. p. 16 (Stipulated Permanent Injunction against “source code”); App. p. 11 (Complaint ¶14 describing the program as “source code”); p. 19 (Cyber Patrol’s affidavit, ¶6, describing the program as “source code”); p. 42 (Temporary Restraining Order, ¶2 enjoining the programs’ “source code”); p. 67; p. 68.  The Jansson/Skala program itself still exists on the Internet, on a site overseas.  Just by looking at it, it is obvious it includes source code.  http://www.lemuria.org/mirrors/CP/cndecode.c; http://www.lemuria.org/mirrors/CP/cph1_rev.c.   Thus, even if the source code/object code distinction had merit, it is irrelevant here.  Because the order does implicate the First Amendment, its vagueness is even more troubling.  Goguen v. Smith, 471 F.2d 88, 105 (1st Cir. 1972)(“The vice of unconstitutional vagueness is further aggravated where ... [it] inhibit[s] the exercise of individual freedoms affirmatively protected by the constitution” including the First Amendment) aff’d Smith v. Goguen, 415 U.S. 566 (1974).
	It was a violation of due process for the district court to refuse to tell appellants if the order applied to them or not.  Project BASIC, supra; Hendrix v. Page, 986 F.2d 195 (7th Cir. 1993); Brief for Appellants at 20-23.  That violation merits reversal.
III.  THE DISTRICT COURT DID NOT HAVE SUBJECT MATTER
	       JURISDICTION.

	Appellants argued that the district court did not have subject matter jurisdiction because the alleged infringing acts were alleged to take place entirely overseas.  Brief for Appellants pp. 34-39.  Cyber Patrol does not deny that the act they claim to be infringing, the copying of Cyber Patrol by Jansson/Skala as a prerequisite to their writing of another, entirely different, computer program, occurred entirely overseas in Sweden or Canada.  Instead, Cyber Patrol continues to assert that jurisdiction exists because Jansson/Skala “promoted” and “published” their own, entirely new  program into the United States.  CP Brief  p. 7.  Even if this were true, it was the Jansson/Skala original work that was “promoted,” not any work copyrighted by Cyber Patrol.  Cyber Patrol has not alleged that the Jansson/Skala program incorporated any protected expression from Cyber Patrol’s program, and there is nothing in the record to support such an inference.  App. p. 7-18; Add. p. 8, ¶31.  The cases which hold that it is a violation to broadcast copyrighted material into the United States without permission are thus irrelevant.
	Recognizing that these allegations, even when combined with allegations of foreign reverse engineering, would not support the exercise of subject matter jurisdiction under the US copyright statute, Cyber Patrol for the first time claims that the Jansson/Skala program was an unlawful derivative work distributed into the United States in violation of 17 U.S.C. § 106(2).  There is no support in the record for that claim.  Cyber Patrol's verified complaint did not allege and the district court did not find that the Jansson/Skala program was a derivative work.  App. p. 7-18; Add.  pp. 8, ¶31.  As just noted, Cyber Patrol did not allege that the Jansson/Skala program incorporated any protected expression from Cyber Patrol’s program, and there is nothing in the record to support such an inference.  Id.  If Jansson/Skala’s program incorporated no protected expression from Cyber Patrol, it by definition cannot be a derivative work.  
[T]o constitute a violation of section 106(2), the infringing work must incorporate a portion of the copyrighted work in some form; for example a detailed commentary on a work or a programmatic musical composition inspired by a novel would not normally constitute infringement ….

H.R. Rep. No. 1476,  94th Cong., 2d Sess. 62 (1976), reprinted in  1976 U.S.C. C.A.N. 5659, 5675.  See Lewis Galoob Toys v. Nintendo of America, 964 F.2d 965 (9th Cir. 1992).   Thus, the Court should refuse to consider Cyber Patrol’s brand new suggestion that this case involves a “derivative” work.  The district court’s finding that jurisdiction existed because of the “promotion” of an original, non-infringing work from Sweden into the United States was error and should be reversed.
IV.  DEFENDANTS’ ACTIONS CONSTITUTED “FAIR USE.”
	Appellants argued that even if the district court had jurisdiction, and even if United States copyright law applied, Jansson/Skala’s actions were permitted under the “fair use” doctrine.  Brief for Appellants pp. 39-49.  Cyber Patrol relies on the argument that Jansson/Skala did not raise the issue of fair use.  See also Add. p. 11, ¶47.  Appellants did, of course raise the issue.
	Cyber Patrol argues that fair use does not apply because this injunction serves the “general public good.”  See Add. p. 11-12, ¶48.  See also CP Brief  21 (“public’s interests”).   To that end, Cyber Patrol makes two arguments.  First, Cyber Patrol argues that there is no record evidence that the Jansson/Skala program would permit lawful owners of Cyber Patrol to read the list of sites its software blocked.  CP Brief pp. 6-7.   That is incorrect.  App. p. 17 (“Excerpts from the list of blocked sites are presented and commented on”); p. 31 (Cyber Patrol brought this suit because the program permits access to blocked sites list); p. 34 (program has a “nice description of how to generate the list”); See also App. p. 33.  In its brief, Cyber Patrol provides a web address for the original article written by Jansson and Skala describing what they did.   www.openpgp.net/censorship/microsys.sucks/cp4break.html.  CP Brief p. 6, n.6.  That article confirms that the program would permit the reading of the blocked sites list.  See also loser.port5.com/index.htm, a list of Cyber Patrol’s blocked sites which the author says were uncovered through use of the Jansson/Skala program. 
	Cyber Patrol’s second argument that the “general public good” supports denial of fair use is that the Jansson/Skala program was not really about obtaining access to the blocked sites list, but was instead about enabling children to disable Cyber Patrol.  As noted in appellants’ initial brief (and not denied by Cyber Patrol), even if the program did at one time have that capability, it no longer does.  Brief for Appellants p. 26-27.  Additionally, Jansson/Skala expressly said that their purpose was to disclose the blocked sites list.  “More interesting for the majority of people are probably the political goals, to expose any hidden agenda that might be lurking behind the product and to fuel the discussion around it, in this case the discussion around censorware. For us, the primary motivation has been the possible political implications.”  www.openpgp.net/censorship/microsys.sucks/cp4break.html.  The lengthy ensuing discussion of blocked sites confirms that purpose.  Id.
	But, even if the program did permit the uncovering of the parental password, the program would still be speech on the very same important public issue, the value of Cyber Patrol for parents, schools, libraries and others.  Its value might be questioned for different reasons (the weakness of the software designed to prevent circumvention of its protections rather than the ineptness of sites chosen for blocking), but this questioning would still be central to a “most profound societal issue.”
V.  THIS COURT SHOULD REJECT CYBER PATROL’S ATTEMPT TO 
            RAISE NEW LEGAL ISSUES.

	Cyber Patrol raises three issues in this Court which it did not raise in the district court.  This Court should reject Cyber Patrol’s effort to raise new issues on appeal.  Amcel Corp. v. International Executive Sales, Inc., 170 F.3d 32, 35 (1st Cir. 1999); Johnston v. Holiday Inns, 595 F.2d 890, 894 (1st Cir. 1979).  
	First, as appellants have discussed above, Cyber Patrol’s assertion that the Jansson/Skala speech was “derivative” was not plead, raised, or found in the district court.  See Section III, supra.
	Second, Cyber Patrol suggests that Jansson/Skala violated the Digital Millennium Copyright Act.  CP Brief pp. 22-23, n. 23.  No allegation of a violation of the Act was pled.  App. pp. 7-12.   None was argued.  App. p. 3, docket entry 3.   The district court did not find such a violation.  Add.  p. 10-12.   This Court should not consider whether there was a violation based on a cause of action not pled, argued, or considered by the district court.
	Finally, Cyber Patrol suggests that there would be a cause of action under Jansson/Skala’s purported assignment of the copyright interest to Cyber Patrol.  CP Brief p. 22, n. 23.  Again, this issue was not pled and not decided by the district court.  App. pp. 7-15; Add. p. 1-18.  Again, it should not be considered by this Court.  In any event, it is unlikely such a claim could succeed.  On March 11, 2000, prior to the purported assignment and indeed prior to the Complaint being filed in this case,  Jansson/Skala gave appellants and others permission to copy their program.  “You are allowed to mirror this document and the related files anywhere you see fit.”  quoted at www.openpgp.net/censorship/microsys.sucks/cp4break.html (cited in CP Brief p. 5-6, n.6.).
	
CONCLUSION
	For these reasons, appellants respectfully ask that the district court’s order entering the stipulated permanent injunction be reversed and the injunction vacated in full.						
						Respectfully submitted,
June 27, 2000				_____________________________
			Christopher A. Hansen
	American Civil Liberties Union Fdn.
	125 Broad Street - 18th floor
	New York City, New York 10004
		(212) 549-2606

	Sarah R. Wunsch, # 28628
					American Civil Liberties Union Fdn. of Massachusetts
					99 Chauncy Street, Suite 310	
					Boston, Massachusetts 02111
					(617) 482-3170, ext. 323

Of counsel:
David L. Sobel
Electronic Privacy Information Center
1718 Connecticut Ave, NW Suite 200
Washington D.C. 20009
(202) 483-1140

Jessica Litman
Professor of Law
Wayne State University
468 West Ferry Mall       
Detroit, MI 48202
(313) 577-3952

					CERTIFICATE OF COMPLIANCE

	Pursuant to Fed. R. App. Pro. 28(a)(11), the undersigned certifies that this brief, exclusive of the exempted portions, contains 4,142 words.  The brief has been prepared in proportionally spaced typeface using:  WP 8; Times New  Roman,  14 point .

Dated: June 27, 2000			__________________________
						Christopher A. Hansen

	
CERTIFICATE OF SERVICE	          I, Christopher A. Hansen, hereby certify that on this the 27th day of June, 2000, a correct copy of the Reply Brief of the Appellant was served via Federal Express upon the following parties:

Irwin B. Schwartz
Joel G. Beckman
Laura N. Kling
Schwartz and Nystrom, LLC
419 Boylston Street
Boston, MA 02116

and by U.S. Mail to the following:

Edmund Letain
Cardinal, Emberton, Rusk & Carfra
2787 Jacklin Rd.
Victoria, British Columbia
V9B 3X7

Ulf Svalling
Careliigatan 7A
SE-632 20 Eskilstuna
Sweden				

	_________________________
	Christopher A. Hansen