Randy Clarke

Honors Scholar Seminar

Spring, 2001

A defendant class action lawsuit: one option for the recording industry in the face of threats to copyrights posed by Internet based file-sharing systems.

With Napster reigned in so that most of the formerly available copyrighted material is no longer accessible, other means of Internet file sharing are poised to fill the gap.  These other file sharing systems pose the same threat to the recording industry that Napster did, free availability of copyrighted material over the Internet.  However, the new systems will be much more difficult to target with legal attacks because they do not have a Napster-style central entity to shut down. 

Faced with the difficulty of litigating against non-centralized intermediaries as file-sharing through peer-to-peer networking becomes possible, parties with commercial interests in enforcing copyright infringement may have a tool, the defendant class action suit, which will allow them to attack the new technology by taking action against individual violators of copyright law.  Litigating individual cases against each defendant is economically unfeasible because each violation has only a miniscule value in comparison to the cost of bringing the action.   However, in the aggregate, the total value of copyright violations occurring through Internet file sharing is substantial.  The purpose of defendant class action litigation against copyright violators would not be to recover damages for the value of copyrighted material that has already been duplicated.  Rather, it would be to enjoin additional copyright violations, to define clear penalties that would apply, and to let would be copyright infringers know that copying music files from the Internet is illegal.

This article examines the feasibility of a defendant class action lawsuit brought by the Recording Industry Association of America (RIAA) to protect its copyright interests from infringement.  The examination proceeds as follows:

·         The first section of this article explores why traditional litigation will be ineffective against the next generation of Internet file sharing systems.  This exploration begins by focusing on why file sharing constitutes copyright violation. It continues by looking at how Internet file sharing has worked in the past with systems such as Napster and MP3.com and how it will work in the future with peer-to-peer systems such as Gnutella.  This section next examines several options for combating copyright violations facilitated by Internet file sharing.

·         The second section presents an overview of what authorizes defendant class action lawsuits and how they have been used in the past. 

·         The third section considers in greater detail how a defendant class action lawsuit could be used to address the problems caused by Internet based file sharing, focusing on who the parties would be, how the class would be certified under rule 23 of the Federal Rules of Civil Procedure, and what relief would be available to the plaintiffs. 

·         The final section describes how the relief provided, in combination with the court’s contempt power, can be used as a tool to deal copyright infringement in the Internet file sharing context. 

I.       Why traditional litigation methods are problematic

Using traditional litigation methods to protect copyrights is difficult in the context of individuals downloading files for private use because the amount of damage caused by each violation is relatively small compared with the cost of litigation against individuals.   These small damages amounts, when aggregated over hundreds of thousands, or millions, of violations add up to significant damage. [1]  

A.                             The alleged violation:  elements of direct copyright infringement

Copyright owners have an obvious interest in protecting their copyrights from such aggregated damage caused by unauthorized duplication.  To protect those rights, they must establish that duplication violates copyright law, and that as the copyright owners, they have a right to legal redress.

Two elements must be demonstrated to establish a prima facie case of direct copyright infringement. The fFirst is , ownership of the copyright.  The, and second is, unauthorized duplication of the copyrighted material. [2]   Ownership of a copyright is fairly simple to demonstrate.  A registration of copyright claim with the registrar of copyrights is prima facie evidence of the existence of a copyright. [3]   If the registration is not in the name of the party seeking to enforce the copyright, then a valid chain of title leading from the enforcing party to the name on the copyright certificate will suffice to demonstrate ownership. [4]   Once ownership is demonstrated, the burden of disproving ownership shifts to the defendant. [5]

Duplication can be demonstrated by showing that the defendants had access to the allegedly infringed work and that the alleged infringing work is substantially similar to the allegedly infringed work. [6]   Duplication can also be established by introducing evidence of the act of duplication, but, according to Nimmer, “ It is generally not possible to establish copying as a factual matter by direct evidence. ..Copying is ordinarily established indirectly by proof of defendants access and substantial similarity.” [7]   Additionally, if the similarities are sufficiently striking, the plaintiff will not have to prove access. [8]  

In Langman Fabrics, the court held that the plaintiff’s demonstration of probable access and substantial similarity was sufficient to establish copying, even though the plaintiff was not able to offer evidence demonstrating direct copying of a fabric pattern by the defendant. [9]   Similarly, if plaintiffs are not able to offer evidence of the act of copying music files, then the existence of a duplicate of copyrighted material on the defendant’s computer provides sufficient evidence from which a finder of fact can infer that the work was reproduced, and consequently, infer a violation of copyright law. [10]

1.                                                 Establishing copyright violations by the defendant class:

Members of the contemplated defendant classes are individuals who have used Internet based file sharing systems to download copyrighted material from the Internet.  When a computer user downloads a file containing copyrighted material from the Internet, that material is duplicated and stored on his computer.  Consequently, assuming that the material is copyrighted, the two elements necessary to establish a prima facie case of direct copyright infringement, copyright ownership and duplication, are satisfied. 

The prima facie case may also be established simply by the existence of a file containing copyrighted material on a computer user’s hard drive.  Direct copyright infringement is often satisfied by an indirect showing that the defendant had access to the copyrighted material and possesses a substantially similar work, rather than a direct showing of the act of copying. [11]   Because of the ease with which files containing copyrighted music can be located on the Internet, having access to the Internet will suffice to demonstrate that a potential defendant had access to the copyrighted material.  Digital files containing music that are downloaded from the Internet are more than just similar to the file from which they were duplicated; they are identical.  The more striking the similarity between a duplicate and an alleged original, the less of a demonstration of access is required to establish copyright violation. [12]

With the prima facie case established, the burden of proof shifts to the defendant to assert that there is some reason why creating the file containing the unauthorized duplicate does not constitute a copyright violation.  The defendant could assert a fair use defense, which authorizes duplication of copyrighted materials under certain circumstances. [13]   If this defense fails, then the prima facie case remains intact.

B.                             Difficulties associated with trying to sue an intermediary when there is no intermediary.

Entities that have a strong incentive to protect copyright and prevent copyright violation will not hesitate to take legal action to protect their intellectual property from infringement via Internet file sharing.  Such entities have been successful in litigation against MP3.com, [14] and at the time this article was written, they seem very likely to be successful in shutting down Napster, as well. [15]   Litigation against MP3.com and Napster has been effective because in each case copyright infringement, whether direct, vicarious, or contributory, has been easy to demonstrate. Additionally, both MP3.com and Napster are tangible corporate entities and are therefore easy targets for litigation. 

Other existing [16] and future Internet based file sharing applications will be much more difficult to shut down via litigation because they do not exist as or depend on a single, targetable entity. These other file-sharing applications connect Internet users to one another directly rather than depending on a central “hub” to which users connect.  A closer examination of the operating models of MP3.com, Napster, and Gnutella, three Internet based file sharing services, helps to clarify the difficulties likely to be encountered in attempts to litigate against decentralized Internet based file sharing applications.

1.                                                 MP3.com

MP3.com is an Internet service that allows subscribers to listen to music from any computer connected to the Internet.  MP3.com users are able to access files stored on MP3.com servers by subscribing to MP3.com (for free) and demonstrating, using software provided by MP3.com, that they possess a compact disc with a copy of the music contained in the file they intend to access via MP3.com.  Users who are able to access files can play the specified music as long as they are connected to the MP3.com Website.  The MP3.com model was designed specifically to avoid copyright infringement problems by both requiring that users possess a CD containing the music that they wish to access on MP3.com and by not allowing users to download operable files from MP3.com’s servers to their own computers for subsequent playback.  Rather than providing downloadable music files, MP3.com “streams” [17] the music from its Website to the user’s computer, preventing the user from replaying music without requesting it through MP3.com again.

MP3.com was a relatively easy litigation target because it stored hundreds of thousands of computer files containing unauthorized copies of copyrighted songs on Internet servers under its control. [18]   In litigation against MP3.com, the court did not reach the issue of whether or not MP3.com’s precautions protected it from liability for allowing users to listen to copyrighted material stored on MP3.com’s Internet servers.  Instead, the court determined that that MP3.com’s duplication of the files it stored on its servers constituted direct copyright infringement. [19]  

After determining that MP3.com’s servers contained infringing material, the court ordered MP3.com to stop its infringing practices.  MP3.com was obligated to turn the service “off”, or take whatever steps necessary to comply with the court order.  Since the servers were under MP3.com’s control, they could be turned “off”, ending the availability of MP3.com’s service.  Though the existence of a mechanism to turn a file sharing service off seems obvious, it becomes important in the context of peer-to-peer file sharing systems, where it is not present.

2.                                                 Napster

Napster is an immensely popular file sharing service that is freely available on the Internet. Napster provides an easy way for computer users connected to the Internet to search for and download music files that are stored on other Napster user’s computers.  To use Napster, a person must be connected to the Internet and have Napster’s software running on their computer.  This software does four things: it allows users to share files, it establishes a connection between users’ computers and Napster’s servers, it displays an index of all of the files that are currently connected and available for sharing, and it allows users to initiate file transfers between their computers.   

During the installation of Napster software on a user’s computer, a default directory is created for storing files that the user wishes to share with the entire Napster community.  Using the Internet as a conduit, the software makes a connection between the user’s computer and Napster’s servers.  When a user is connected to Napster’s servers, he joins the cluster of users currently connected to Napster.  Consequently, the Napster network, or community, is dynamic,dynamic; itsit’s size and number of available files determined by the number of attached users at any given time.  Once a user is attached to Napster, files the user places in his default directory are visible to all users in the network via the index located on Napster’s computers.  Any attached user can utilize the index to search through available files and to initiate a file transfer, or “download,” from another user’s computer the his own.

Napster differs from MP3.com in the physical location of where the music files available to users are stored.  While music available to MP3.com users is stored on servers under MP3.com’s control, music files available to Napster users are stored on the computers of individual private users rather than on servers under Napster’s control. 

Instead of actually storing the files available for download in a central location, Napster simply provides a centralized index listing all of the files available on the computers of currently connected users.

a)                                                      Napster’s infringing activity

In it’s lawsuit against Napster, the Recording Industry Association of America (RIAA) claims that Napster’s activities constitute contributory and vicarious copyright infringement.  The RIAA argues that Napster’s activities contribute to copyright infringement by ”knowingly and systematically indexing, causing, and materially contributing to… unauthorized reproduction” of copyrighted works. [20]   The RIAA claims that Napster is vicariously liable for copyright infringement because Napster “had a right and ability to supervise and control infringing conduct of users.” [21]   This right to control includes the ability to prevent or terminate users who make copyrighted material available for duplication, and the ability to refuse to index or create links to copyrighted material contained on Napster users’ computers.  The contributory and vicarious activities violate 17 U.S.C. §§ 105, 116, 501, and make Napster liable for actual and statutory damages under 17 U.S.C. §§ 504(c) and (c). [22]  

Napster makes three arguments in its defense that it is not subject to liability for copyright infringement as a result of enabling Internet based file sharing.  First, Napster asserts that its activities are protected by the Digital Millennium Copyright Act [23] (DMCA) exemption of liability for Internet intermediaries.  Essentially, Napster argues that it is an intermediary and is therefore immunized from liability by the Digital Millennium Copyright Act. [24]   Since files that contain infringing material are not downloaded directly from Napster and since Napster does not make or store duplicate copies of any potentially infringing material, Napster has an argument that its activities do not violate copyright law because it is acting as a service provider and qualifies for exemption under the DMCA.  The DMCA shields Internet service providers and bulletin board services from copyright and defamation liability for material posted on their Internet servers.  Napster argues that since third parties post all materials available to Napster users via the Napster software, it is not liable for the content of those materials. 

Second, Napster argues that its activities are non-commercial, and therefore fit within the exemption from copyright violations created by the Audio Home Recording Act (AHRA) for non-commercial duplication of copyrighted works. [25]   § 1008 of the AHRA provides an exemption for non-commercial duplication from claims brought under the AHRA.

Thus, Napster argues that the activity of Napster users is permitted under the fair Use exception provided in copyright law. [26]   The fair use exception, a somewhat unsettled area of copyright law and a subject of extensive discussion in legal literature, essentially permits unauthorized duplication of copyrighted material under certain conditions. To determine whether the “Fair Use” exception applies, courts balance the following four factors: the purpose and character of the work, the nature of the work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use on the potential market for the value of the copyrighted work. [27]

With regard to the purpose and character of the use, courts are more likely to find non-profit and educational use to be fair and are less likely to find commercial use to be fair. [28]   In evaluating the nature of a copyrighted work, courts will give more protection to a creative work and less to an informational or purely functional work. [29]   Regarding the substantiality of the duplication, courts will make a quantitative and qualitative evaluation of the amount of the work that is copied in relation to the entire work.  Finally, analysis of the effect of use on the copyright owner’s potential market depends on the balance between “the benefit the public will derive if the use is permitted” and “the personal gain the copyright owner will receive if the use is denied.” [30]

The 9th Circuit rejected each of Napster’s arguments for avoiding liability for copyright infringement, and has ordered Napster to block the availability of copyrighted material on the index it provides or to shut down. [31]   The argument that Napster was exempt as an ISP under the DMCA was rejected because the RIAA raised three significant questions as to whether Napster qualified for the exemption: first, whether Napster qualifies as an ISP within the guidelines for exempt ISPs set out in the DMCA at 17 U.S.C. §512(d); [32] second, whether copyright owners must give ISPs “actual notice” of infringing activity taking place on their service in order for the ISP to have actual knowledge of awareness, which triggers a responsibility to remove the infringing material; finally, whether Napster complied with 17 U.S.C. § 512(i) which requires an ISP to adopt a copyright compliance policy. [33]

The court rejected Napster’s defense that its activities were immunized from liability because they fell within the AHRA exemption for non-commercial activity because the claim against Napster was not brought under the AHRA.

The court considered each of the four fair use factors listed in 17 U.S.C. § 107 and agreed with the district court’s determination that Napster is not a fair user. [34]   Regarding the purpose and character of the use, the court agreed with the district court’s finding that the process of duplicating MP3 files is not transformative and that such use is commercial. The court further agreed that the works are creative in nature and therefore are “closer to the core of intended copyright protection.” [35] Napster facilitates wholesale copying of the entire copyrighted works, so analysis of the portion of the work used weighs against a fair use finding.  Finally, the court referred to several studies [36] showing that Napster has had a significant negative impact on music sales in stores near colleges.  

b)                                                      The effect of the courts ruling on Napster:

A court order directed at Napster will have a direct impact because Napster is a fixed, targeteable entity subject to litigation, and its operations are essential to the continued availability of its services. Like MP3.com, Napster has an “off” switch.  A court order directing Napster to either eliminate the availability of material that infringes copyright or to stop offering the service entirely will have its desired effect.  In the first case, if Napster takes action to block the availability of copyrighted material on its index, then users will have no way to locate the blocked material.  In the second case, if Napster ceases its operations, then there will be no central entity to which users can connect and the file-sharing software will be useless.  If Napster’s services are limited or stopped due to a court order, there is no easy workaround solution available that will allow users to continue to access those services.

3.                                                 Gnutella, a peer to peer model

Gnutella, another Internet based file-sharing application, is similar to Napster in many respects but differs in that there is no central entity, or “off” switch.  Rather than using a hub or central connection point, Gnutella connects users computers directly to one another.  This type of direct connection is called peer-to-peer networking.  A brief explanation of peer-to-peer networking will be helpful in understanding why Gnutella and its progeny are more resistant to legal attacks than MP3.com or Napster.

C.                             Peer to peer networking:

In a peer to peer networking arrangement, an individual computer user makes certain directories, files, or resources on his computer available to other computer users who utilize a compatible peer-to-peer protocol.  The extent of the peer-to-peer network at any given time depends on how many computers are connected to it.  This type of network differs from the Internet in that it does not depend on client-server architecture, where information is stored on Web servers and retrieved by computer terminals.  When someone accesses the Internet, he uses browsing software that is installed on their computers to copy and display files that are stored on Web servers connected to the Internet.  As the Internet has commercialized, Internet servers have evolved into powerful computers specially designed for and dedicated to making files available on the Internet for people to copy. [37]   In a peer to peer networking arrangement, the need for Internet servers is eliminated because files are made available on individual computers rather than Web servers.  The most convenient means of connection between computers in a peer-to-peer network is via the Internet, but this sort of networking arrangement is also possible over a series of direct connections between computers or on a local computer network.

The location and connection requirements are addressed by networking protocols, which are essentially instructions telling computers how to recognize and speak to one another.  Operation of the Internet is possible because of widespread adoption of the TCP/IP protocols. [38]    TCP tells computers how to transfer information to and receive information from other computers. IP tells computers how to locate other compatible computers using a numerical addressing system.  In combination, TCP/IP has been adopted globally as a standard for computers to locate one another and exchange information, resulting in the Internet as we currently know it. 

Gnutella is a protocol that takes advantage of existing Internet connections and the IP addressing system underlying the Internet for the connection and location elements of a successful network, and has its own set of instructions for communication once connections are established.  Gnutella differs from the Internet and TCP/IP protocol in that it makes direct connections between computers rather than depending on intermediary Web servers.

The instructions that make up the Gnutella protocol are freely and publicly available.  Software developers are free to integrate elements of the protocol into new versions or into other compatible software.  MP3.com and Napster were relatively easy targets in a legal attack because each contained a central entity with an “off” switch.  Gnutella and similar peer-to-peer file sharing protocols enable Internet based file sharing with the searching functionality found in Napster but without the existence of a targeteable central entity.  Consequently, a legal attack against a peer-to-peer file sharing system will be much more difficult to mount than one against Napster or MP3.com.

1.           Gnutella

Gnutella is a software application that consists essentially of a set of instructions, or protocol, telling computers how to connect with other computers.   One version of the Gnutella instruction set and a graphical user interface is contained in software available freely at www.gnutella.wego.com.  Other versions of the instructions created by software developers not affiliated with Gnutella are also available freely at that same Website as well as many other Websites.  After downloading and installing this software, individuals are able to connect directly to other computers on the Internet running compatible software.  When a user connects to one other computer, they inherit any connections that computer had already established with other computers.  Once a user is connected, other computers can connect to it and access the entire current Gnutella cluster. 

Like Napster, a Gnutella network is dynamic,dynamic; changing with the number of users connected any given time.  The critical difference is that, unlike Napster, every single aspect of Gnutella connections are made directly from user to user rather than from user to a central entity.  Napster uses peer to peer and client server connections.  Peer to peer connections are used for file transfers.   Client server connections are used to compile an index visible to all connected users.    Gnutella users connect directly to each other, and do not ever connect to a central server.   Consequently, multiple Gnutella clusters can exist at an any given time.  This is another important distinction from the Napster model, where, because there is only one Napster central hub, there can be only one Napster network.

Gnutella networks are much more difficult to police or shut down with legal action than MP3.com, where files are stored centrally, or than Napster, where all connections go to a central hub.  The following two reasons explain the heightened challenge with legal action against Gnutella: first, Gnutella networks are easily replicable because the software is open source;  second; second, when a Gnutella network is operating, there is no central entity or “off switch” that can take down the whole network if it is turned off.

“Opens source” means that the source code necessary to write a Gnutella application is freely available.  The source code operates like a “recipe” for creating Gnutella.  Instead of keeping the “recipe” secret, its creators publicized it to the world so that anyone who so desires can make their own. Public distribution is irreversible.  Legal steps to stop the original Gnutella creator from using Gnutella would have no effect on other people who have used or may use the recipe. [39]   Consequently, it would be extremely difficult to rid the Internet of all the applications designed using the Gnutella instructions or “protocol.”

As well as being infinitely recreateable, Gnutella networks are difficult to police because once one is operating, there is no “off” switch, or centralized way to stop or control the use of it.    If two people anywhere make a connection with each other using Gnutella software, they can share files independently of any central entity.  Since no central entity is necessary, there is no convenient, centralized “bottleneck” to target in a legal proceeding against Gnutella. 

D.    What can the parties with interests in protecting copyrights do?

1.           Continue Legal Action Against Intermediaries

As copyrighted material available via Napster is limited by court order, [40] users seeking material now unavailable on Napster will likely attempt to find it using a peer-to-peer file sharing system such as Gnutella.  One option for parties with interests in protecting copyrights is to continue attacking intermediaries that provide Internet file sharing services.  However, legal action against such file sharing systems is impracticable and likely impossible since there is no central entity to attack.  Efforts to block individual hosts [41] that are frequent sources of entry into a Gnutella-style network may be successful for a short period of time, or may make it slightly more difficult to attach to a network, but those efforts would be easy to defeat. [42]   Barring some breakthrough in enforcement technology, legal attacks against  “phantom” peer-to-peer file sharing protocols will be difficult and will not be effective in stopping Internet based file swapping that violates copyright law.

2.           Nothing

Another option for copyright holders in response to the problem of copyright violations facilitated by Internet based file sharing is to do nothing.  The argument in support of this position is that Internet based file sharing does not erode sales of music but instead promotes awareness of music and leads to additional music purchases.   For this argument to be valid, it would be necessary to demonstrate that music purchases made by people who use Internet based file sharing do not decrease.  If people who download music from the Internet tended to find music they liked, and then purchased that music from record stores, Internet based file sharing would give the recording industry a boost.  If such a boost existed, it would be identifiable by looking at sales data from music stores in areas where there is a high concentration of people who download music from the Internet.  The recording industry has assumed that college campuses have a high concentration of Internet music downloaders, and has attempted to gather sales data from music stores near college campuses to see if a “boost” exists. [43]   The study found that Napster has a substantial negative impact on sales of recorded materials.  It suggested that if the recording industry and other parties with interests in protecting copyrights do not take action against Internet based file sharing, they will lose increasing revenue as they are forced into competition against a free supplier of the copyrighted material they are trying to sell.  

3.                                                 Go after individual offenders on a case by case basis

Since pursuing Internet file-sharing intermediaries will become increasingly difficult as the popularity of peer-to-peer networks increases and since the recording industry will suffer great damage if it does not take any action to stop Internet file sharing, the recording industry may consider pursuing litigation against individual offenders on a case-by-case basis.  This strategy has been unpopular traditionally because of the negative publicity associated with taking legal action against your customers.   Additionally, litigation against individual offenders is not economically feasible when the scope of the violation is reduced to an individual duplicating material for personal use.

One traditional legal strategy available to protect copyrights is to go after the largest scale offenders, or “pirates,” who make large quantities of copies of compact discs or videotapes [44] for resale. Cases against these pirates have been relatively simple in a legal sense since the elements of direct copyright infringement, duplication and access, are readily demonstrated by the existence of stockpiles of unauthorized copies of copyrighted materials.  In such cases, the costs of taking legal action against the offender were justified due to the scale of the offense.  

Copyright violation via Internet based file sharing differs from large-scale piracy in that the perpetrators do not generally intend to make multiple copies of the duplicated material for resale.  Instead, the usual scope of the offense in the Internet file-sharing context is a single, unauthorized duplication for use primarily by one user. [45]   The amount of damage caused by such individual violations is relatively low compared to the cost of litigation against the perpetrator, and pursuing individual litigation against each of the perpetrators would be impossible.  However, in the aggregate, the cost of hundreds of thousands of copyright violations is immense.

a)                                                      Bring a defendant class action against all present and future Internet down loaders.

Another option open to record companies and other parties interested in protecting against copyright infringement facilitated by Internet based file sharing is to bring a defendant class action suit against all persons who have used the Internet in a manner that constitutes direct copyright infringement.  The relief sought would be to declare the action of downloading or otherwise using copyrighted material from unauthorized sources illegal and to enjoin future behavior of that nature.  The remainder of this article examines this possibility.

II.             About defendant class actions

The availability of class action lawsuits as a litigation tool in appropriate situations is well established.  Most class actions lawsuits involve a group of plaintiffs opposing named defendants.  Rule 23 of the Federal Rules of Civil Procedure authorizes members of a class to “sue or be sued as representative parties on behalf of all” when conditions prerequisite for maintaining a class action lawsuit are met. [46]   There is no specific mention of defendant class actions in Rule 23, but the “ or be sued” language in the rule clearly contemplates using the tools provided by the rule in either manner.

One of the primary reasons for using defendant class actions lawsuits is to promote judicial economy where possible by dealing with similar issues in a single action.  Though a defendant class action of the size and scope contemplated is likely to be burdensome, litigating each individual claim would be an even larger burden on the plaintiffs and the courts.  The Federal Rules advisory committee stated “taking advantage of economies of time, effort, and expense, while promoting uniformity of decision as to persons similarly situated” [47] was an objective of rule 23.  Other reasons for bringing a defendant class action in a case such as the one contemplated by this article is to avoid the risk of inconsistent adjudication that would result from trying similar claims in multiple forums, producing multiple and potentially conflicting outcomes, and leading to incompatible standards of conduct.

A.                             In what context have defendant class actions historically been used?

Defendant class action litigation has traditionally been used to enforce civil rights, [48] generally in actions against groups of local or state officials. [49]   A defendant class action suit against the firearms industry has long been contemplated as a way to recover expenditures spent combating the effects of gun violence in America. [50]  

Defendant class actions have also been used in contexts more similar to that contemplated by this article.  In Technograph Printed Circuit, Ltd v. Methode Elecs, Inc. [1] [51] (Technograph), the court brought 28 separate patent infringement claims in six judicial districts together in a single class action under Federal Rule of Civil Procedure 23(b)(3).  In Technograph, each defendant was using a process for which the plaintiff claimed to have a valid patent.  The commonality between the defendants in this case was their offense.  The court found this commonality, the numerosity of defendants, and the risk of inconsistent adjudication to be sufficient reason to certify the defendants as a class.  Courts certified similar classes of defendants in Dale Elecs., [52] Inc v. RCL Elecs, and in Research Corp v. Pfister Associated Growers, [53] also both patent infringement cases. [54]

III. What will a defendant class action lawsuit against individual copyright infringers look like?

As in any class action lawsuit, a complaint to initiate a defendant class action lawsuit must identify the parties, state the basis of the court’s jurisdiction, demonstrate how the requirements of rule 23 of the Federal Rules of Civil Procedure are met, describe the alleged violation, and state the relief sought. The following section will outline in detail the requirements for bringing a defendant class action lawsuit, with particular emphasis on rule 23 class certification requirements.  It will then describe two types of defendant class action lawsuits that could be used to combat copyright infringement and will explain how each of these lawsuits fits within the legal framework for class action lawsuits.

A.                             Legal framework for defendant class action lawsuits

A defendant class action lawsuit must involve a controversy that meets the following requirements: the court has jurisdiction over the subject matter and the parties, the class involved in the lawsuit must be certifiable under rule 23 of the Federal Rules of Civil Procedure, the class members must receive adequate notice of the lawsuit and how it will affect their rights, and the lawsuit must seek relief that will be effective and is within the court’s power to grant. 

1.                                                 Establishing jurisdiction

a)                                                      Subject Matter Jurisdiction

The party bringing the lawsuit must demonstrate that Federal courts have jurisdiction over this matter.  Subject matter jurisdiction over matters concerning copyright is conferred to Federal courts by 28 USC §1338.  As a copyright matter, the contemplated lawsuit falls clearly within the provisions of § 1338. 

b)                                                      Personal Jurisdiction

The plaintiff must also demonstrate that the court has personal jurisdiction over the named defendants.  Defendant class action lawsuits bring up due process issues regarding jurisdiction over class members located outside of the court’s forum.  A court hearing a defendant class action needs to have personal jurisdiction over named members of the class.  This jurisdiction extends to unnamed class members. [55]  

Calagav Calagaz v. Calhoon handled the issue of class members located outside the court’s forum.  In Calagaz v. Calhoon,, not all of the named representatives of a class were subject to the jurisdiction of Alabama courts.  When the case was filed, one of the named representatives lived in Alabama and was therefore subject to the jurisdiction of the courts.  This representative died, and none of the other representatives were Alabama residents.  The class members argued that because the named representative to whom Alabama’s jurisdiction extended had died, and because the courts jurisdiction over the class flowed through that representative, that the court no longer had personal jurisdiction over the class.  The court agreed that if it did not have personal jurisdiction over a named representative, then personal jurisdiction would not extend to class members.   The court found that one of the other named representatives had engaged in correspondence within Alabama, that the lawsuit arose from that correspondence, and consequently, that the correspondence was a sufficient basis for finding the representative subject to Alabama courts’ jurisdiction.  The court then held personal jurisdiction over this representative and allowed the class action to continue under his representation.  Extending jurisdiction from named representatives to other class members allows the court and litigants to take advantage of a process that is convenient to the parties and encourages prompt and efficient judicial administration. [56]

While the principle of extending jurisdiction from named to unnamed class members addresses due process concerns surrounding class action lawsuits, notice concerns remain.  Different types of class action lawsuits have different requirements regarding notice that must be given to class members.  These requirements are set out in Rule 23(b) of the Federal Rules of Civil Procedure.  Each type of class action requires that notice requirements be met before the class is certified.   Rule 23 defines the requirements for class certification for a class action lawsuit. The party bringing a class action lawsuit must demonstrate that all four requirements of rule 23(a) and that one of the three requirements of 23(b) are met.

2.                                                  Rule 23(a) Requirements:

Rule 23(a) requires numerosity of class members, common questions of law and fact among class members, typicality of claims or defenses, and adequate representation of the class by the named representatives. [57]  

a)                                                      Numerosity

In order to meet the numerosity requirement, the class must be “so numerous that joinder of all members is impractical.” [58]   The party seeking to bring the class action has the burden of demonstrating that the class is too numerous to make joinder practical.  This burden cannot be met by mere allegation or speculation. [59]   Numerosity determinations require an examination of the facts in each specific case.  There is no absolute limitation or numeric cutoff. [60]   Factors to be considered besides number of class members include geographic location of the class members [61] and the economic feasibility of “obtaining relief within the framework of a multiplicity of small individual suits for damages.” [62]

b)                                                      Common questions of law and fact

Under Rule 23(a)(2), class certification is appropriate only when “there are question of law or fact common to the class.” [63]   The commonalities can be either legal or factual issues.  Common questions are necessary to take advantage of efficiencies of class action litigation.  Without them, class action litigation would be no different than litigation of multiple individual actions. [64]   The commonality requirement is broad, encompassing aspects of the typicality and adequacy requirements.  

c)                                                      Typicality

For Defendant classes the typicality issue concerns typical defenses, not typical claims.  The purpose of the requirement in this context is to ensure that the interests of the named defendants do not conflict with those of the class. [65]   Rule 23(a)(3) states thatstates “claims or defenses of the representative party must be typical of the class.” [66]   Courts are unclear as to the exact demands of this requirement. [67]   The lack of clarity arises because, as the Supreme Court noted, “The commonality and typicality requirements of Rule 23(a) tend to merge….those requirements also tend to merge with the adequacy-of-representation requirement.” [68]   One reading of rule 23(a) says thatsays, “the representatives claims must arise from the same practice or course of conduct that gives rise to the claims of the other class members.” [69]   The rule does not require that the representative’s claim and the class members’ claims beare identical. [70]   Since the typicality requirement is significantly overlapped by the adequacy of representation and commonality requirements, it is unlikely that a class meeting those requirements would not meet the typicality requirement. [71]

d)                                                      Adequacy of representation

The final 23(a) requirement is that the named representatives will adequately represent the unnamed class members.  If the class members are not adequately represented, then their Constitutional due process rights are violated. [72]   One standard for determining if the named representative adequately represent the class is whether the court believes that the representative class members are represented by qualified counsel and that the named class members have common interests with, and no antagonistic interests against, fellow class members.” [73]    To be an adequate representative in the plaintiff class action context, the named plaintiff must be able to bring the case alone.  In the defendant class action context, the representative must be individually liable for the charges brought against the class.  If the named defendants each made individual deals with the plaintiffs to resolve the cases against them, then they would no longer be adequate representatives of the class because they would have an  interestan interest in their individual settlement arrangements that would conflict with the interests of the rest of the class. [74]

3.                                                 Rule 23(b)B requirements

The party seeking to have the class certified must meet all four of the 23(a) requirements discussed above and must also meet one of the following 23(b) requirements. 

a)                                                      23(b)(1)

Rule 23(b)(1) is designed eliminate risks of inconsistent adjudication arising from different parties bringing lawsuits such that a party would be forced to act in a manner inconsistent with one judgment to satisfy another. [75]

Courts will certify a 23(b)(1) class when the actions taken against the class, if treated individually, may require the class members to take different and inconsistent actions.  Contemplated inconsistent actions include equitable orders requiring future behavior where the behavior requirements are inconsistent.  For example, if one court required a defendant to not engage in business with company A and another court required the same defendant to continue its business relations with company A, then the defendant would be faced with inconsistent orders.  The general rule regarding relief available in the 23(b)(1) context is that actions for damages are prohibited; multiple obligations to pay damages are less likely to contradict each other.  It is possible that the multiple damage claims will accumulate beyond the defendant’s means to pay.  In that case, the orders would not be impossible because of their contradictory nature but rather because of the defendant’s lack of assets. 

The 23(b)(1) concern about inconsistent orders is different in the context of defendant class actions than in other types of class action lawsuits.  If the plaintiffs litigate against each defendant individually, then the defendants might assert different defenses, and the plaintiff may be left with a variety of settlement arrangements regarding different defendants.  If all of the settlements involve money, there is no danger of the plaintiff being unable to receive all of the different payments, so consequently, money damages in the 23(b)(1) defendant class action context do not pose a threat of establishing inconsistent standards of conduct.  Since there is no threat of inconsistent requirements from damage actions in the 23(b)(1) defendant class action context, 23(b)(1) certification will be limited to cases where equitable relief is sought in both the defendant and plaintiff class action context.

  Rule 23(b)(1) does not expressly require that individual notice be given to (b)(1) class members.  Instead, rule 23(d)(2) gives the court discretion to issue an order requiring that some or all of the class be given notice and an opportunity to participate. [76]    Class members in a 23(b)(1) suit are not entitled to opt out of the action. [77]   Because individual class members are not able to opt out, courts prefer to certify classes under (b)(1) or (b)(2), where the rule is the same, rather than under (b)(3), where class members can opt out.

b)                                                      23(b)(2):

Rule 23(b)(2) provides for class certification if the party opposing the class has acted or refused to act on grounds generally applicable to the class, thereby making injunctive or declaratory relief with respect to the class appropriate.  While 23(b)(2) lawsuits are most often used in the civil rights context on behalf of groups facing discrimination, nothing in the language of the rule limits its applicability to such cases. [78]

23(b)(2) relief is limited to declaratory and injunctive measures and cannot include monetary damages unless they are incidental to plaintiff’s request for injunctive and declaratory relief. [79]   The circuit courts are split regarding the use of 23(b)(2) for certification of a defendant class.  Some have interpreted the “party opposing the class has acted or refused to act on grounds generally applicable to the class” language of rule 23(b)(2) to make the rule applicable only to plaintiff classes. [80] Other courts have held that plaintiff’s actions can be applicable to an entire class and, consequently, that 23(b)(2) is applicable to certification of defendant classes. [81]

Once a 23(b)(2) class is established, class members cannot opt out if the relief requested is strictly equitable. [82]   If the relief requested included money damages, the court may require opt out provisions for absent class members. [83]   23(b)(2) class members do not have an absolute right to notice of the pending class action. [84]   Courts can exercise discretion to require notice under rule 23(d).  Courts are likely to require notice to address due process concerns, especially if monetary damages are requested. [85]

c)                                                      23(b)(3)

Rule 23(b)(3) certifies classes where there are questions of law and fact common to the class that predominate over questions affecting only individual members and where resolution by class action is superior to other methods available for resolving the controversy. [86] 23(b)(3) differs from (b)(1) and (b)(2) in that it can be used to seek monetary damages without also seeking equitable relief.  All members of 23(b)(3) classes are entitled to receive the best notice practicable under the circumstances.  All members who can be identified through reasonable effort must receive individual notice. [87]   23(b)(3) class action suits are often prohibitively expensive to bring because of the individual notice requirement. 

While no “precise test” governs determinations of commonality, predominance, and superiority in the 23(b)(3) context, courts have agreed on certain standards.  Issues are considered common and predominant when substantive elements of each class member’s claim require the same proof for each class member, when the common issue constitutes a significant part of each class member’s individual case, when the common questions are central to all of the members’ claims, and when the same theory of liability is asserted against all class members and those members all raise the same basic defenses. [88]

In order to demonstrate that a class action is a superior method of resolving the controversy, it is necessary to consider four factors: the interest of the members of the class in individually controlling the prosecution or defense of separate actions, the extent and nature of any ongoing litigation concerning the controversy already commenced by members of the class, the desirability or undesirability of concentrating the litigation of the claims in the particular forum, and the difficulties likely to be encountered in management of the class action. [89]   Manageability of the class action depends of several additional factors: the size of the class, difficulty of giving notice, difficulties likely to be incurred in apportioning and distributing damages, and the existence of counterclaims against the party opposing the class. [90]

Unlike class certification under rules 23(b)(1) and 23(b)(2), rule 23(b)(3) permits class certification where the need for class action treatment is motivated both by convenience to the parties as well as to the court and by considerations of efficient litigation. [91]  

Rule 23(b)(3) neither expressly contemplates nor prohibits defendant class certification.  Defendant classes can be certified under 23(b)(3) if they meet the same requirements as plaintiff classes. [92]   However, in the defendant class action context, 23(b)(3) presents a unique problem.  Since class members are defendants, and they can opt out of the suit, they will almost certainly do so unless they have reason to believe that litigation will be brought against them individually if they opt out of the class action.  In some contexts, pursuit of individuals who opt out of defendant class membership is a reasonable part of the litigation strategy, but in the context of a large group of defendants, the additional cost of individual litigation would be prohibitive.

B.                             Two ways the suit could work as a class action:

1.                                                 Brief descriptions

A defendant class action lawsuit brought by representatives of the recording industry to combat copyright violations via Internet based file sharing would have class carefully chosen to contain members with nearly identical factual cases and defenses.  It is unlikely that such a class would be certifiable under 23(b)(1).  The contemplated legal action would be most effective if it was brought as a 23(b)(2) or 23(b)(3) action. 

a)                                                      23(b)(2))

The general strategy for bringing the action under 23(b)(2) would be to establish that there were enough members of the defendant class to meet the 23(a) numerosity requirement and that they had all committed roughly identical copyright violations using Internet file sharing systems.  Once the size of the class and the homogeneity of the alleged copyright violations was established, the plaintiffs would seek 23(b)(2) certification of a class consisting of anyone who had used Internet based file sharing systems to make unauthorized duplicates of copyrighted works.  Plaintiffs would seek equitable relief only. This would consist of declaratory relief stating that using Internet based file sharing systems to duplicate copyrighted materials violates copyright law and injunctive relief prohibiting future copyright violations.  Enforcement would take the form of the court exercising its contempt power to bring parties violating the equitable orders into compliance.

Major obstacles to carrying out this litigation strategy include the following:  establishing that the plaintiff acted in a manner generally applicable to the class members, identifying named representatives that adequately represent the class, establishing personal and subject matter jurisdiction over the named and unnamed class members, providing enough due process protection to defendant class members in terms of notice and the ability to opt out of the lawsuit, and establishing the appropriateness of equitable relief in this situation.

b)                                                      23(b)(3)

The general strategy for combating copyright violations through Internet based file sharing using a 23(b)(3) lawsuit involves bringing a series of identical lawsuits, one in each judicial circuit, against a relatively small group of identified plaintiffs.  The crucial difference between this strategy and the 23(b)(2) strategy is that, in this case, all of the class members would be identified.  The plaintiff would seek the same equitable relief as in the 23(b)(2) lawsuit, and may also seek nominal damages.  Part of the strategy would be communicating to members of the defendant class that if they chose to opt out of the class action, plaintiffs would sue them individually for the damages amounts authorized by statute. [93]   These amounts would be much greater than the nominal damages sought in the class action case.  The purpose of this campaign of lawsuits would be to establish precedent in each judicial circuit that using an Internet based file sharing system to make unauthorized duplicates of copyrighted material constitutes a copyright violation. 

Major obstacles facing this litigation strategy include: ensuring adequate representation of the defendant class in each lawsuit, identification of enough individual violators in the appropriate jurisdictions to create identified defendant classes in each judicial circuit, and establishing the appropriateness of equitable relief to remedy the problem presented.

C.                             The contemplated lawsuits

The following section will examine how the rules governing class action suits would apply in an effort to bring 23(b)(2) and 23(b)(3) lawsuits as a means for the recording industry to counteract damages done by Internet based file sharing.  The identity of the parties, jurisdiction of the court, rule 23 class certifications requirements, and availability and effectiveness of relief will be examined for each contemplated type of class action. 

1.                                                 Requirements for a 23(b)(2) lawsuit

a)                                                      Parties

The plaintiffs in this case must have an interest in protecting copyrights from violations facilitated by Internet file sharing systems.  Likely plaintiffs include record companies or other entities that own rights in numerous copyrights, such as companies that license copyrights to radio stations. [94]   While it is likely that all major record companies and other similar entities would want to join a case like the one contemplated as plaintiffs, the best leading plaintiff would be the Recording Industry Association of America (RIAA).  The RIAA represents a broad range of entities with a common need to protect copyrights they own from any type of infringement, and has the resources and support from the industry to engage in what would likely be complex and expensive litigation. [95]

The legal theory behind the definition of the defendant class is that the class members are members because they engaged in behavior that is almost certainly a per se violation of copyright law.  Because Internet based file sharing systems are widely used, there are many potential members of the defendant class.  Consequently, the criteria for class membership can be refined so that everyone who meets it will have nearly identical claims or defenses.  Once the class membership criteria is established, named plaintiffs must be found within the jurisdiction of the court where the lawsuit will be brought.

The 23(b)(2) lawsuit contemplates identifying the existence of tens or hundreds of thousands of potential defendants who violated copyright law by downloading copyrighted material from the Internet.  Technology plays a significant role in enabling widespread copyright violations of this type to occur.  Similarly, technology can play a role in copyright enforcement in this context.  The public nature of indexing functionality necessary to search through files available for sharing in a peer-to-peer file-sharing network makes for a convenient starting point in the search for potential defendants.  Both Napster and Gnutella make use of an index.  Without indexes, finding files would involve searching through numerous Websites, or communicating directly and one at a time with other people who have files to share.   Gnutella’s and Napster’s index displays the IP address of computers where a file is located.  The IP address is a number that uniquely identifies a computer on the Internet.  To find potential defendants for the class action lawsuit, the plaintiffs need only connect to Napster, Gnutella, or a similar file sharing service and record the IP addresses associated with files that violate copyright.  After obtaining lists of IP addresses, plaintiffs need to associate those addresses with people that own or control the computers that the IP address represents. 

This association of computers to individuals is difficult, but not impossible.  In individual action to enforce copyright, recording artist Metallica used a firm called NetPD [96] to associate 300,000 IP addresses with Napster membership information and forced Napster to cancel the member’s accounts until offending copyrighted material was removed.  NetPD claims to be capable of using technological means to associate IP addresses with user names and addresses.  Other less sophisticated methods are commonly used to determine a Web user’s approximate location, or at least the location of his first point of connection to the Internet, from his IP address.   These methods could be used to determine that users are located within the U.S., or in the 23(b)(3) context, to determine in which judicial forum they are located.

Determining who is included in the group of unnamed defendants is a matter of establishing criteria for group membership sufficient to warrant class certification and demonstrating that enough potential class members satisfy the criteria.  The identification of individuals can be accomplished through processes similar to the above description of the services that NetPD provided for Metallica.

  The criteria for class membership are essentially that a person has access to the Internet and has made unauthorized copies of copyrighted material using an Internet file sharing system.  The criteria closely track the elements for a prima facie direct copyright infringement case, so that liability for a violation will turn largely on the validity of the copyrights asserted rather than on the specifics of defendant behavior.  While this seems like an assumption of guilt on the part of the defendants, it is similar to the way defendant class actions suits to enforce patents have been handled. [97]   In one such suit, Pfiester, the issue before the court was the validity of the alleged patent.  Violation of the patent, if valid, was assumed based on the behavior of the defendant class members.  It is not necessary to determine the exact identity of every single class member.  Methods of determining unnamed class members, such as census figures, [98] have been allowed in other class action lawsuits.

Rule 23 requires that in order for certification of a class, the court must believe that the named defendants adequately represent and can vigorously defend the unnamed defendants. [99]   Named defendants need not be willing to represent the class as long as the court determines that they have a demonstrated interest in opposing the plaintiff and are capable of doing so. [100]   Identifying named defendants could be accomplished in several ways. 

First, some of the IP addresses on the list of identified IP addresses used to locate the unnamed class members will be resolved down to the level of identified name and street address.  Named defendants could be chosen at random from this list and charged as lead defendants.  The rule 23 adequacy requirement does not require that lead class members be willing to represent the class; instead, it requires that they are able to do so.  In the defendant class context, inability to represent the class would provide a convenient excuse to a class member who did not wish to pursue complex litigation.  The argument of inability would be especially persuasive if the named defendant had to pay for the legal defense necessary to represent the class.  While a defendant cannot argue inability to defend against a civil charge, she could argue that the difference in the required legal effort to defend an individual case brought for nominal damages and a class action lawsuit on behalf of thousands of similarly situated persons renders her unable to represent the class.  To counter this argument, the plaintiffs could make a fund available for use by the named defendants in mounting a legal defense.  The primary considerations for a named defendant’s ability to represent adequately are an evaluation of the experience of defendants counsel, not of the defendant.  The availability of a legal defense fund would not necessarily make the named defendants willing to represent the class adequately, but it would make them able to do so.

Another way to locate defendants who adequately represent the class would be to solicit volunteers.  While it may seem absurd to suggest asking anyone to be named defendant in a lawsuit, public interest groups supporting people’s right to use the Internet in the manner that plaintiffs seek to stop may want to be involved in the lawsuit as a means to publicize their efforts, fight the recording industry, and hopefully obtain a ruling that would make their stance on the issue become law.  Plaintiffs would be taking a risk by trying to settle the legality of Internet based file sharing once and for all in a large class action lawsuit.  If they lost, the issue would be considered settled and they would not be able bring similar suits in the future.   However, a public interest group committed to opposing the recording interest would see this lawsuit as a golden opportunity to stop recording industry efforts to suppress Internet based file sharing.   

b)                                                      Jurisdiction

Subject matter jurisdiction over copyright matters is conferred of Federal courts by 28 US § 1338.  The selection criteria for choosing named defendants in this case would include location of the defendant and the offending computer within the forum of the court.  Since the defendant resides within the forum and the alleged copyright violation took place on equipment within the forum, the court would have personal jurisdiction over the named defendants.  As a matter of judicial economy and convienienceconvenience to the parties, rule 23 has been interpreted to extend jurisdiction over named representative class members to unnamed class members. [101]

c)                                                      23(a) requirements

(1)                Numerosity

In order to be certified under 23(b)(2), the class must first meet the numerosity, common questions, typicality, and adequacy requirements of 23(a).  While there is no specified upper limit to the number of class members for practical for joinder, courts look at the facts of each case, specifically considering judicial economy, the magnitude of the claim, and the geographic location of the the class members in determine when joinder is impractical. [102] The defendant class for the contemplated 23(b)(2) lawsuit potentially consists of hundreds of thousands of members, since class membership is designed to include anyone who has used the Internet to download copyrighted material.  Consequently, satisfying the numerosity requirement should not present any problem. 

(2)                Common questions of law and fact (common defenses)

The questions of law and fact common to all members of the defendant class in the contemplated lawsuit are whether the defendant made copies of copyrighted material using an Internet based file-sharing system and whether such activity constitutes direct copyright infringement.  The class membership criteria will be narrowly construed so that the cases and defenses of all the members are nearly identical.  The legal feature common to all members of the defendant class would be their alleged copyright infringement.  Courts have certified defendant classes where the only link between otherwise unassociated defendants was their alleged offense. [103]   Defendant classes have also been certified where the alleged offenses committed by the members are much less homogeneous that the offenses in the contemplated lawsuit. [104]   In Sebo v. Rubenstein, commonality for members of a D-class was found based on the overriding issue of conspiracy even though individual defendants had varying claims.

(3)                Typicality and adequacy

Typicality between the defenses of the named and unnamed class members will be easy to demonstrate because those defenses arise from identical conduct.  Furthermore, since the class is not seeking recovery, there is no concern that the named defendants will try to maximize their share of an award at the expense of the class.   The adequacy of the named defendants to represent the class will depend on their retention of qualified and experienced counsel.  If the named defendants are “volunteers” with a public interest group who wish to be involved in the case as a test case, then they will have incentive to find counsel who will meet the adequacy requirement.  If it is not possible to locate a “volunteer” lead defendant, then the plaintiffs may have to provide funds for defense council in order to make the lead defendants able to defend the class.

d)                                                      Requirements for 23(b)2b) 2 – applied to this case

To be certified as a class action lawsuit, the group to be certified must comply with the four 23(a) requirements discussed above and one of the 23(b) requirements.  The following section discusses how the contemplated lawsuit fits within the boundaries of 23(b)(2).  In order to fit within the definition of a 23(b)(2) class, the party opposing the class must have acted or refused to act on grounds generally applicable to the class. [105]

(1)                Actions the party opposing the class has taken that are generally applicable to the class members.

In order for a defendant class to be certified under rule 23(b)(2), the plaintiff must show that it has taken action generally applicable to the defendants.  This requirement is more intuitive in the plaintiff class context, where the plaintiffs write a complaint describing the defendants’ offending action.  The aspect of this that makes it a 23(b)(2) certifiable class is that whatever the defendant is doing, it is treating members of the plaintiff class as a group in doing it.  The plaintiff’s goal in bringing a class action is to stop the defendants’ action described in the complaint.

By contrast, in the defendant class action context, the plaintiff wants the class action lawsuit to broaden the affect of its prior actions, making them generally applicable to the class of defendants.  The plaintiff must demonstrate actions it has taken as the party opposing the class.  Instead of describing how the other party’s actions have hurt them, in the 23(b)(2) defendant class action context, the plaintiff must describe its prior actions that are applicable to the defendant class.  In bringing a class action lawsuit, the plaintiff’s goal is to make the actions that it has been taking toward individual members of the class apply all at once to the entire class.  

In other defendant class action cases, plaintiff’s actions applicable to a class of defendants have included obtaining patent or copyright protection, maintaining prior actions to enforce a patent or copyright, and attempting to reach licensing agreements with patent or copyright infringers. [106]  

Plaintiffs seeking certification of a 23(b)(2) defendant class cannot use the lawsuit they are bringing as evidence of action applicable to the class to meet the 23(b)(2) requirement.  The action the plaintiff identifies must have occurred prior to the lawsuit.  If a current lawsuit waswere allowed to satisfy its own requirement for actions applicable to the class, the requirement would become meaningless because the act of filing the lawsuit would satisfy the requirement.

In the contemplated lawsuit, the plaintiff, Recording Industry Association of America (RIAA), can easily demonstrate a history of advocating, obtaining, and defending copyright protection for the artists it represents. [107]   These activities are geared toward people and entities that violate copyright law.  Since the defendant class is also comprised of individuals who have violated copyright laws, the RIAA activities geared toward copyright protection meet the 23(b)(2) requirement of actions taken in opposition to the class. 

e)                                                      Relief sought

After determining that the rule 23 (a) and (b) requirements of the Federal Rules of Civil Procedure are met, the party bringing the contemplated lawsuit must specify what relief is desired.  In bringing this lawsuit, the plaintiffs would seek declaratory and injunctive relief.  The declaratory relief would be a declaratory judgment stating that use of Internet based file sharing systems to make duplicated copies of copyrighted materials violates copyright law and that parties holding copyrights have legal redress against parties who violate those rights in this manner.  The injunctive relief would enjoin members of the defendant class from future use of Internet file sharing systems to download copyrighted material from the Internet.

Neither declaratory judgments nor injunctions are legal relief.  Declaratory judgments are authorized by statute [108] , andinjunctionsand injunctions are a form of equitable relief.  The requirements for each of these forms of relief vary from the requirements for legal relief. 

A declaratory judgment is available to any party seeking one when they properly plead an actual case or controversy to a U.S. court with jurisdiction over the matter, , with a few exceptions [109] .  Such a judgment declares the rights and legal relations of the parties, has the force, effect, and reviewability of a final judgment, and is available even if other adequate remedies at law are also available. [110]   Declaratory judgments often involve matters of law that are undisputed or relatively undisputed and, therefore, are often summary proceedings. [111]

Since an injunction is a form of equitable relief, courts require greater demonstration of the necessity of the relief requested than they would if the plaintiff was seeking legal relief.  In order for a court to grant equitable relief, the plaintiff must demonstrate that there is no adequate remedy at law and that they will be irreparably harmed if an injunction is not issued. 

All of the prerequisites for declaratory relief are met by the circumstances surrounding the contemplated lawsuit.  The court has subject matter jurisdiction pursuant to USC § 1338.  The court has personal jurisdiction over the named defendants because they reside or are incorporated in the forum.  The case is an actual case of controversy because the defendants’ activities are causing the plaintiffs redressable harm.  Consequently, if the court finds for the plaintiffs, issuance of a declaratory judgment would be appropriate.

In order for the court to grant the requested injunction, the plaintiff in the contemplated lawsuit must demonstrate that there is no adequate remedy at law.  There are several possible scenarios where an adequate remedy at law could make injunctive relief appropriate.  The plaintiff’s goal in this litigation is to stop widespread violation of copyright facilitated by Internet file sharing systems.  To accomplish this, the plaintiff could sue each member of the defendant class for damages either individually or through class action mechanisms. [112]   The trouble with suing individuals for damages, discounting the disproportionate expense of the suit relative to value of the damage recovery, is that even if this plaintiff is successful in one lawsuit, the behavior is likely to be repeated.  While legal relief entered against a defendant settles matters between a plaintiff and a defendant regarding specific conduct that occurred in the past, the order is not forward looking.  If the defendant loses the case, pays a damage award, and then downloads another copyrighted song, then the plaintiff is right back at the starting point in terms of achieving the goal of stopping activity that infringes copyrights. 

Equitable relief is available in cases such as this where the behavior that the plaintiff wishes to prohibit is likely to be repeated.  If the plaintiff was trying to stop a neighbor from cutting across his lawn each day, the court would not require the plaintiff to file a lawsuit each time the neighbor cut across the lawn.  Instead, the court would allow equitable relief and grant an injunction ordering the neighbor not to cut across the lawn.  Similarly, the courts would not require the plaintiff in the contemplated lawsuit to file a new lawsuit every time copyrighted material was downloaded from the Internet.  Instead, the court would determine that because of the repeatable nature of the offense no adequate remedy was available at law, and the court would allow the plaintiff to proceed in equity.

2.                                                 Summary and prediction regarding a 23(b)(2) class action lawsuit

The strategies described above address some of the obstacles that the plaintiffs would have to overcome in certifying a defendant class under 23(b)(2) and getting a court to award equitable relief.  It is likely that a court would agree that the class is in technical compliance with rule 23(a).  There are numerous members of the defendant class.  If class membership is defined by a common alleged offense and is narrowed to factually identical cases, then there would be common questions and typical defenses.  The part of 23(b) certification that may be harder to “sell” to a court the extension of jurisdiction from the named defendants to a huge group of unnamed and potentially unidentified or semi-identified defendants where the larger group will not receive personal notice.  A court may find that, as a matter of due process, more notice is required before issuing a judgment that affects the rights of unnamed class members.  Though the relief requested is specifically designed to have a minimum impact on defendant class members’ rights, a court may still be hesitant to string together plaintiffs’ interpretations of compliance with the 23(a) and (b)(2) requirements.  Consequently, plaintiffs may want to argue in the alternative for certification of a series of smaller, more concretely defined defendant classes under rule 23(b)(3).

3.                                                 Requirements for 23(b)(3) class certification

The strategy for combating copyright violations through Internet based file sharing by using a 23(b)(3) lawsuit involves bringing a series of identical lawsuits against small groups of identified plaintiffs.  The crucial difference between this strategy and the 23(b)(2) strategy is that, in this case, all defendant class members are identified.  The plaintiff would seek the same equitable relief as in the 23(b)(2) lawsuit and may also seek nominal damages.  Part of the strategy would involve communicating to members of the defendant class that if they chose to opt out of the class action lawsuit, as they are entitled to under 23(b)(3), plaintiffs would sue them individually for the maximum amount of the damages authorized by statute. [113]  

There would be substantial overlap between parts of the 23(b)(2) and 23(b)(3) class certification processes, as well.  The plaintiffs in each case would be identical.  Additionally, the typicality and common question aspects of compliance with rule 23(a) would be nearly the same.  The technological methods of identifying defendants class members would have the same basis, though more thorough identification (of a smaller number of defendants) would be necessary in the 23(b)(3) context.  Finally, the equitable relief sought and the demonstration that there is no adequate remedy at law would be identical. 

a)                                                      Parties

The plaintiff in the series of 23(b)(3) lawsuits would be identical to the plaintiff in the 23(b)(2) lawsuit. [114]   Identification of appropriate and qualified defendants would be essential to the success of the (b)(3) lawsuits.  The techniques described previously for locating unauthorized copies of copyrighted material could be used in this context to locate individuals to form the defendant class in each region where a 23(b)(3) suit would be filed. 

Location of defendants would require deeper investigation in the 23(b)(3) context than in the 23(b)(2) context.  For 23(b)(3) classes, after identifying IP addresses of computers that contain infringing materials, it would be necessary to employ technology to determine the geographic location of the computers and the identities of the owners.  Smaller groups of potential defendant class members, located in each judicial district where a 23(b)(3) suit will be brought .brought.  Once these smaller groups are identified, additional technological methods will be employed to match the computers with identities of their owners. [115]   When enough matches to satisfy the 23(a) numerosity requirement were made in each judicial district where a 23(b)(3) suit would be brought, proceedings against the class of identified defendants could commence. 

b)                                                      Jurisdiction

Subject matter jurisdiction is conferred to Federal courts for copyright matters by USC § 1338.  Unlike the 23(b)(2) context, demonstrating the courts’ personal jurisdiction over 23(b)(3) classes of defendants in the proposed lawsuits would not be difficult.  Part of the selection criteria for each group of defendant class members would be location within the jurisdictional forum of the court hearing each case.  Because the number of potential defendants is so large, it would be possible to choose appropriate defendants from among those living in each judicial forum.  Defendants that reside in and have committed the alleged offenses within a court’s forum are subject to that court’s jurisdiction. 

c)                                                      23(a) requirements

In order to be certified as a class under 23(b)(3) the class must first meet the numerosity, commonality, typicality, and adequacy requirements of rule 23(a).  Each of the contemplated 23(b)(3) defendant classes would be designed to meet the 23(a) requirements.  The numerosity requirement does not specify a cutoff defining how many members are necessary before a class will be certified.  However, absent special circumstances, courts tend to consider large groups to be too large to practical joinder as individuals, making adjudication as a class appropriate.

Careful selection of the members of a 23(b)(3) defendant class selected for the contemplated lawsuit would fulfill the commonality and typicality requirements of rule 23(a).  The selected individuals would all have defenses that were as close as possible to identical.  Consequently, treatment of the lawsuit as a class action would enable the court to take advantage of the efficiencies of class action litigation by resolving numerous identical claims in a single action.  Because class members with identical factual circumstances would be selected, there would be little chance of the lead representative defendants having interests antagonistic to the other class members.  Furthermore, since all members of the class would be named, there would be no danger of the representative members having interests opposed to unnamed class members.

Ensuring adequate representation in each of the series of 23(b)(3) lawsuits may require the plaintiffs to provide funding for defendants’ counsel.  The representative defendant in each case would be understandably reluctant to hire counsel experienced in Federal class action litigation because of the expense and because failure to do so may disable the lawsuit.  While the decision regarding what counsel to retain must rest with the representative defendant, if that defendant is unwilling to spend the money required to retain adequate counsel, class certification may be derailed by the adequacy requirement.  However, this derailing could be avoided if plaintiffs made a fund available for defendants to use to retain counsel.  Potential conflicts of interest arising from plaintiff paying for defendants’ counsel could be avoided by setting the fund up as a trust to be used for the specific purpose of retaining adequate counsel for each lawsuit.  Setting up a fund for defendants’ use in hiring adequate counsel would make defendants able to do so.  This arrangement should be sufficient to satisfy the adequacy requirement since, in order tohe satisfy the 23(a) adequacy requirement, defendants do not have to be willing to represent the class, just able to do so. 

d)                                                      23(b)(3) requirements

The primary requirement for class certification under 23(b)(3) is that questions of law and fact common to the class predominate over questions affecting only individual members.   Because all class members in the 23(b)(3) lawsuits will be carefully selected, it is possible to align the cases in terms of common questions that predominate over individuals’ issues by selecting class members who’s cases match a typical case profile.

If the cases against the defendant class members were brought individually, then direct copyright infringement would be a significant part of each case.  Consequently, the proof required in each case would be nearly identical and the theory of liability against all defendants would be the same for all defendants.  While individual aspects of defendants’ cases will differ in terms of how many unauthorized duplicate works are present or which file sharing system the defendant used to obtain the works, careful selection of class members would ensure that the differences were minimal and that the common questions and issues predominate.

e)                                                      Relief sought

The relief sought in the 23(b)(3) lawsuit will be identical to the declaratory and injunctive relief sought in the 23(b)(2) lawsuit.   While monetary damages would be available in 23(b)(3) lawsuits, the plaintiffs would refrain from seeking them in the class context as an additional incentive to defendant class members not to opt out of the class.

f)                                                       Notice and opting out

In 23(b)(3) lawsuits, all class members who can be identified through reasonable means must receive individual notice.  In the contemplated lawsuit, all class members would be identified and would receive personal notice of the class action proceeding against them.  23(b)(3) class members have the right opt out of class membership if they do not want their rights adjudicated in the class context.  Without external incentive, it is fair to assume that all members of a defendant class would opt out of the lawsuit if possible.  In order to keep members of the defendant class from opting out, plaintiffs must make clear that they would litigate against class members who opted out on an individual basis, seeking statutory authorized penalties for direct copyright infringement, which range from $200 dollars for non-willful violations up to $150,000 for willful violations. [116]  

In a case such as the contemplated lawsuit, where the law and facts significantly favor the plaintiffs, the defendants’ best option is to remain in the class. The worst possible outcome for those who choose to do so is a finding of liability and issuance of injunctions.  Those who opt out of class membership must spend the time and money necessary for individual litigation and risk having a judgment for damages entered against them. 

The success of this series of lawsuits depends largely on the technological capability of identifying computer owners from IP addresses.  If this identification is possible, then the additional notice and process provided to members of the defendant classes should make class certification possible as well.  A series of class action lawsuits brought under 23(b)(3) would be more likely than a single large 23(b)(2) lawsuit to survive the class certification process because all members of the defendant classes would be identified and would receive personal notice of the action proceeding against them.  Additionally, the class members would have the option of opting out of the class action litigation if they wished to defend the case individually.  For the same reasons discussed in the 23(b)(2) context, courts would allow equitable relief because the behavior that plaintiffs seek to enjoin is likely to be repeated.  

IV. How the relief described above will give the plaintiffs the tools they it needs to deal with the problem.

The relief available to plaintiffs through either the 23(b)(2) or 23(b)(3) class action lawsuits described above would include a declaratory judgment spelling out the legal rights of the parties and an injunction ordering members of the defendant classes not to make use of Internet based file sharing systems in a manner that violates copyright law.  The following section first will describe how the contempt power expands the court’s ability to deal with this problem and then will explore how plaintiffs could make use of that power to provide an effective tool in their fight to defend copyrights. 

An injunction is a flexible response.  It can be used in combination with the court’s contempt power to create relatively light penalties for non-compliance.  In this manner, violators can be cited for a violation and given the opportunity to pay a fine right away or appear for a hearing.  This way, opportunity for a hearing is provided, but the penalty would be small enough that there will not be many hearings,hearings; therefore, doing this will not be a huge burden on the courts.

A.                             Appropriateness of  injunctiveof injunctive relief.

Courts are hesitant to grant broad injunctive relief because of the scope of their equitable power.  Additionally, courts will generally not issue an equitable remedy (injunction) if there is an adequate remedy at law.  However, one situation where courts will issue injunctive relief when there might be an adequate remedy at law is when the behavior to be enjoined is likely to be repeated, and consequently, reliance on relief at law would require plaintiffs to re-file their lawsuit every time the offending behavior occurs.

The brief history of Internet file swapping services such as Napster and Gnutella and the exponential rate at which their use has grown suggest that the behavior to be enjoined in this hypothetical claim is likely to be repeated.  It would be possible for each artist or copyright owner whose copyright is violated to initiate litigation against identified violators.  This is easier when there is a centralized file swapping service where violations can be identified. However, if each artist has to go after each violator for each violation, the damage remedies available at law are relatively small, [117] making such a litigation strategy impractical.  In this situation, where the violation is likely to be repeated and the remedy available at law for individual violations is relatively small, injunctive relief enjoining future violations is appropriate.

1.                                                 Enforcement

The relief contemplated is to enjoin defendant class members from use of the Internet to facilitate direct copyright infringement and from continued storage of unauthorized copies of material that infringes plaintiffs’ copyrights on their computers or other digital storage media.  The key to making the contemplated lawsuit a useful tool for bringing about this relief is the court’s contempt power, which is available because the relief sought was equitable rather than legal.  If the relief sought waswere legal, then the enforcement power of the court would go only as far as issuing a judgment for a fine or damages.  The court would have little power to compel members of the defendant class to comply with the judgment.  This problem is exacerbated by the fact that such a judgment would be relatively small for each individual defendant.  Methods available for enforcement of judgments at law are too costly to employ for such a small amount of money. Furthermore, if legal relief was sought, it would not be possible to certify the defendant class under Federal rule of civil procedure 23(b)(2) because under that rule, relief must be declaratory or injunctive and may not include damages.

The contempt power gives courts power to hold parties violating equitable orders in contempt of court and to issue coercive orders against the violator (in personam) rather than against the violating property (in rem).  If a defendant does not comply with an equitable order, the plaintiff can petition the court to exercise its contempt power to interfere with the defendant, not just with the defendant’s assets.    This interference takes the form of fines or incarceration for continued contempt.  The equitable enforcement method most applicable to the case at hand is a civil contempt citing in which escalating penalties are applied to recalcitrant defendants until they comply with the order. [118]   This sort of contempt order is designed to induce compliance with a court’s order rather than to vindicate a court’s authority, as is the case with a criminal contempt order.

  Civil contempt proceedings are initiated by plaintiffs, not by the courtPlaintiffs, not by the court, initiate civil contempt proceedings. The plaintiffs in this case could use a service like NetPD [119] to monitor class members’ computers for the existence of infringing computer files that violate the terms of an injunction.  If such monitoring were to take place in the 23(b)(3) context, it would involve watching several hundred computers.  In the 23(b)(2) context, since the defendant class would include any computer user who downloads copyrighted material, general searching for the existence of copyrighted materials on computers connected to the Internet would work for identification of violations of the injunction.  Once violators were identified and brought to the court’s attention, the court could order fines designed to bring the violators into compliance with the injunctive order. 

An injunctive order such as this one could be included in the judgment against the defendant class in the contemplated lawsuit so that class members whose future actions violate the terms of the order would have to pay a fine.  The fine required could begin as a nominal amount, and increase with subsequent violations until the defendant is coerced to cease his or her behavior that violates the injunction.

Since the terms of penalties specified by a civil contempt order are clearly spelled out in the order, defendants subject to the order know exactly what they must do to make the penalty stop.  Essentially, those defendants “carry the keys of their prison in their own pocket.” [120]   An injunction prohibiting future copyright violation via Internet based file sharing systems would establish a penalty applicable to future violators.  Enforcement authority for this penalty would lie with the courts contempt power.

V.   Conclusion

Using a class action lawsuit brought against hundreds of thousands of unnamed defendants in combination with an equitable order enforced by the courts contempt power seems like a roundabout way to enforce copyright laws.  Why are such seemingly unorthodox methods appropriate, especially considering the ease with which liability for individual violations can be established on the merits?  Why is it necessary to dredge up and combine concepts such as the defendant class action and equitable relief on a national scope?  The answer is that, as with many other areas of intellectual property law, technology brings about new legal challenges, but these challenges can be met with existing law applied in new ways. 

There is nothing new about copyright violation in the context of Internet based file sharing.  The elements of the violation and the defenses available are the same as in offline contexts.  What is new is the ease with which the Internet allows people to access and duplicate copyrighted material.  Internet based file sharing systems themselves do not violate copyright law.  Violations occur when copyrighted material is made available to or is copied from such a system.  The act of making files available and downloading copies of them are willful acts carried out by individuals.  Copyright enforcement is difficult in the Internet file-sharing context because many aspects of the Internet make violating copyright law easy.   The Internet creates a web of opportunity to carry out acts violating copyright law that extends to nearly every computer.   Copyright law, applied through a defendant class action lawsuit with an equitable remedy, can create a web of liability with similar coverage, extending to willful acts of individual violators of copyright law.

[1] 239 F. 3d 1004 Citing  “Jay Report”, “Fine Report” and “Teece Report”

[2] Playboy Enterprises v. Webbworld, 991 F. Supp. 543 (N.D. Tex. 1997); Feist Publications, Inc., v. Rural Tel. Serve. CO., 499 U.S. 340 (1991) 17 USC § 106(1)

[3] 17 U.S.C. §410

[4] Melville B. Nimmer and David Nimmer, Nimmer on Copyright Vol. 1 § 13.01(2000)

[5] Id.

[6] Id.

[7] Id.

[8] Id. at §13.02

[9] Langman Fabrics v. Graf California Wear Inc., 160 F.3d 106, 115 2nd Cir.(. (1988)

[10] 17 U.S.C. § 106

[11] Nimmer § 13.01

[12] Id., at § 13.02

[13] 17 U.S.C. § 107

[14] UMG Recordings, Inc. v. MP3.com, Inc. 2000 US Dist. (SD NY, 2000)

[15] A&M Records v. Napster, Inc., 55 U.S.P.Q. 2d (BNA) 1781

[16] David Sims, Napster: Not Quite Dead Yet, The Industry Standard, March 5, 2001. (theThe article mentions several alternatives to Napster: OpenNap, Gnutella, Gnotella, Bearshare, iMesh, Gnocleus, and LimeWire)

[17] “Streaming” is a process where audio or video material is provided by a remote website in such a manner that it can only be seen or heard once, as it is played.  Streaming multimedia depends on the user having multimedia player software, such as a “RealPlayerReal Player” from Real Networks, installed on his computer.  This player receives the “stream” from the website and plays it immediately as it is received.  Unlike downloaded audio files, streaming files do not remain on a user’s computer hard drive in playable format after they are downloaded. 

[18] UMG Recordings, Inc. v. MP3.com, Inc. 2000 US Dist. (SD NY, 2000)

[19] Id.

[20] Complaint filed in the United States District Court for the Northern District of California by A&M Records Et. Al. against Napster. (Napster complaint)

[21] Id.

[22] Id.

[23] The Digital Millennium Copyright Act, Public Law 105-304, Signed into law October 28,1998

[24] Id.

[25] Audio Home Recording Act,  17 U.S.C. § 1008

[26] 17 U.S.C.  § 107

[27] Id.

[28] Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171, 1175 (5th Cir.  1980).

[29] Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 347 (1991)

[30] MCA, Inc. v. Wilson, 677 F.2d 180, 183 (2d Cir. 1981).

[31] A&M Records v. Napster, Inc., 239 F. 3d 1004, 2001

[32] 239 F. 3d 1004Id.

[33] Id.

[34] Id.

[35] Campbell v. Acuff-Rose Music, 510 U.S 569,586

[36] See infra. note 1

[37] This simplified description glosses over the now ubiquitous interactive functions of Web servers

[38] TranmissionTransmission Control Protocol / Internet Protocol

[39] Trying to take back open source software would be like trying to take back the recipe for beer or rice krispy treats.  Many people know how to make rice krispy treats or beer, and many people do it.  Even if doing so is made legislatively illegal, people still know how to do it and will probably do so.

[40] See A&M Records v. Napster,

[41] Hosts are computers available for making a first connection to a Gnutella network.  Any computer connected will work, but some users publicize the IP addresses of their computers and act as a host – to allow easier connection for others.

[42] To attach to Gnutella as it currently exists, the user desiring a connection must know and supply the IP address of one other computer that is part of a Gnutella network.  These IP addresses can be found by performing an Internet search for “Gnutella host” or in a variety of other ways.  Other versions of the Gnutella protocol, such as ToadNode, have a list of IP addresses loaded into the software.  This list represents computers that the ToadNode developers knew to be connected to a network.  Such lists represent a target that could be blocked.  However, users desiring to get around such blocking need only locate a non-blocked IP address, and the blocked computers need only change IP address or use a proxy server to avoid being blocked.  The Gnutella protocol, using IP addresses for connections and passing all connections established to all users downstream, is inherently capable of routing around fixed points of blockage.

[43] See infra. noteNote 1

[44] Columbia Pictures Industries v. Jassi, 973 F. Supp. 1075

[45] The single copy is often left available to a file sharing system so it is available to others for duplication.

[46] Federal Rules of Civil Procedure, Rule 23

[47] 39 F.R.D. 73, 102-102 (1966)

[48] Hobson v Pow, 434 F Supp 362 (ND Ala 1977), (civil rights); Hopson v Schilling, 418 F Supp 1223 (ND Ind 1976), (civil rights); Kendall v True,391, 391 F Supp 413 (WD Ky 1975) (civil rights); Redhail v Zablocki, 418 F Supp 1061 (ED Wis 1976), affd, 434 US 374 (1978), (civil rights); Doss v Long, 93 FRD 112 (ND Ga 1981), (civil rights)

[49] Marcera v Chinlund, 91 FRD 579 (WDNY 1979) (criminal justice)

[50] See Symposium:  Defendant Class Actions, 2000 Connecticut Law Review, (32 Conn. L. Rev. 1319)

[51] 285 F Supp 714 (ND Ill 1968)

[52] Dale Elecs, Inc v RCL Elecs, Inc, 53 FRD 531 (DNH 1971)

[53] Research Corp v Pfister Associated Growers, Inc, 301 F Supp 497 (ND Ill 1969)

[54] See also D Kline & Son v Giant Umbrella Co, CA No 71 Civ 4587 (SDNY Dec 29, 1972) (patent); In re Yarn Processing Patent Litig, 56 FRD 648 (SD Fla 1972) (patent); Technitrol, Inc v Control Data Corp, 164 USPQ 552 (D Md 1970) (patent); cf  Winder v Licensing, Inc v King Instrument Corp, 130 FRD 392 (ND Ill 1990) (certification of defendant class denied)

[55] Calagaz v. Calhoon, 309 F.2d 248 1962 

[56] Eisen v. Carlisle & Jacquelin, 417 U.S. 156 (Justices Douglass, Marshall, and Brennan, partially dissenting)

[57] Federal Rules of Civil Procedure Rule23(Rule23 (a)

[58] Id.

[59] Timothy C. Klenk and Jerome K. Bowman, Illinois Institute For Continuing Legal Education Class Actions Supplement.  Chapter 2:  Rule 23 Purpose and Prerequisites. (Hereinafter IICLE) §a.2.20 citing Boyd v. Ozark Airlines, Inc., 568 F.2d 50,55 8th (Cir. 1977)

[60] General Telephone Co. v. EEOC, 446 U.S. 318 (1980)

[61] IICLE §b 2.21 pg. 2-24 citing Dale Electronics, Inc v. R.C.L. Electronics, Inc., 53 F.R.D., 532, 534 (D.N.H. 1971)( 13’(13 Members satisfied numerosity because, “The locations of the defendants range from  Californiafrom California to New York, and from North Carolina to Nebraska.  Joinder would not only be impractical but impossible.”

[62] Deposit Guaranty National Bank v. Roper, 445 U.S. 326, (1980)

[63] Federal Rules of Civil Procedure Rule 23(a)(2)

[64] IICLE pg. 2-26

[65] Moore's Federal Practice (3rd Ed. 2000) Civil §23.34

[66] Federal Rules of Civil Procedure Rule 23(a)

[67] IICLE pg.  2.26-27

[68] General Telephone Company of Southwest v. Falcon, 457 U.S. 147, (1982)

[69] IICLE 2-27 quoting De La Fuente v. Stokley-Van Camp, Inc., 713 FF.2d 225, 232 (7th Cir. 1983)

[70] United States Fidelity & Guarantee Co. v. Lord, 585 F.2d 860, 873 (8th Cir. 1978)

[71] IICLE 2.27

[72] IICLE citing Hansbery v. Lee, 311 U.S. 32, 85, (1940)

[73] Itel. Litigation., 89 F.R.D. at 113, Wetzel v. Liberty Mutual Insurance Co., 508 F.2d 239, 247 (3d. Cir.)

[74] See Swain v. Brinegar, 517 f.2d 766,780 (7th Cir. 1975)

[75] Moores Federal Practice (3rd Ed. 2000) Civil §23.41

[76] Id.

[77] Walsh v. Great Atlantic & Pacific Tea Co., 726 F.2d 956, 963 n.3 (3rd Cir. 1983)

[78] IICLE,  §2.47

[79] Moore's Federal Practice (3rd Ed. 2000) Civil 23.43 Citing Parker v. United Steelworkers of America. 642 F.2d 104, 107 (5th Cir. 1981)

[80] Paxman v. Campbell, 612 F.2d 848 (4th Cir. 1980); Thompson v. Board of Education 709 F.2d 1200, 1203-1204 (6th Cir. 1983); Henson v. East Lincoln Township, 814 F.2d 410, 413 – 417 (7th Cir. 1987); National Union Fire Ins. Co. v. Midland Bancor, 158 F.R.D. 681, 688 (D. Kan, 1994)

[81] Marcera v. Chinlund, 595 F.2d 1231, 1238, (2d. Cir); United States v. Rainbow Family, 695 F. Supp. 314, 320-321 (E.D. Tex. 1988); McKay v. Community Election Commissioners, 158 F.R.D. 620, 625 (E.D. Ark. 1994); Doss v. Long, 93 F.R.D. 112, 118-119 (N.D. Ga. 1981)

[82] Moore's Federal Practice (3rd Ed. 2000) Civil § 5-23 note 32

[83] This requirement is particularly likely if absent class members are not given notice of their rights in the pending litigation.  If notice is given, then absent class members will not generally have the right to opt out of a 23(b)(2) class.

[84] Stoetzner v. U.S. Steel Corp., 897 F.2d 115, 119 (3rd Cir. 1990)

[85] Moore's Federal Practice (3rd Ed. 2000) Civil §23.43

[86] Federal Rules of Civil Procedure Rule 23(b)

[87] Moore's Federal Practice (3rd Ed. 2000) Civil. §23.45 citing FRCP 23(c)(2)

[88] Id. at Civil § 23-46: 

[89] Federal Rules of Civil Procedure 23(b)(3)

[90] IICLE – 2.66  p2.66 ppg. 2-53 – 2-53

[91] Advisory Committee’s notes, 39 F.R.D. 69, 102 (1966)

[92] Moore's Federal Practice (3rd Ed. 2000) Civil §23.45

[93] 17 U.S.C § 504

[94] American Society of Composers, Authors, and Publishers (ASCAP), Broadcast Music Incorporated (BMI).

[95] The Plaintiff in A&M Records v. Napster, Inc. as a group of 19 record companies.  This group includes the vast majority of the recording industry and was brought together for the purposes of a lawsuit against Napster by the Recording Industry Association of American (RIAA).

[96] www.netpd.com

[97] See infra notes 52, 53; Pfeister, Dale Electronics

[98] Vergara v. Hampton, 581 F.2d 1281, 1284 (7th Cir. 1978)

[99] Federal Rules of Civil ProcedureFRCP rule 23

[100] See Pfiester infra note 53

[101] See infra notes 55,Calagaz v. Calhoon

[102] IICLE pg. 2-24

[103] 285 F. Supp 714 (ND Ill 1968)

[104] Sebo v. Rubenstein, 188 F.R.D. 310, (1999)

[105] Federal Rules of Civil Procedure Rule 23(b)(2)

[106] See Technograph, Pfister, Dale Electronics, supra notes 53 - 55

[107] RIAA website www.riaa.com/Copyright-What.cfm  Visited Visited January 26, 2001

[108] 28 USCU.S.C §2201

[109] Exceptions to availability of DJ in §2201 except with respect to Federal taxes other than actions brought under section 7428 of the Internal Revenue Code of 1986, a proceeding under section 505 or 1146 of title 11, or in any civil action involving an antidumping or countervailing duty proceeding regarding a class or kind of merchandise of a free trade area country (as defined in section 516A(f)(10) of the Tariff Act of 1930),

[110] Federal Rules of Civil Procedure Rule 57

[111] Id.

[112] Federal Rules of Civil Procedure rules 23(b)(1) and 23(b)(3)

[113] 17 U.S.C. §504 (c)

[114] See infra note 95

[115] A larger group of unidentified computers than necessary for the final number to be included in the class will allow for a margin of failure in efforts to identify computer IP addresses to user identities.  While arguably unscrupulous, such identification can be done by subpoenaing identifiable “cookie” information from membership based Internet file sharing systems, buying identified IP numbers from some failing Internet start-up that is desperate for cash, or through other proprietary NetPD methodology.

[116] 17 USCU.S.C § 504(c)

[117] Id.

[118] James M. Hirschhorn, Where the Money is: Remedies To Finance Compliance With Strict Structural Injunctions, 82 Mich. L. Rev. 1815, 1826 (1984)

[119] See infra pg. 15

[120] [120] In re Nevitt, 8th Cir. 1902, 117 F. 448, 461, 8th Cir. (1902)