throbber
Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`._-------------------------------------------------- ~
`
`SOFTWARE FREEDOM
`CONSERVANCY, INC. and ERIK
`ANDERSEN,
`
`Plaintiffs,
`
`OPINION AND ORDER
`
`- against­
`
`09 Civ. 10155 (SAS)
`
`WESTINGHOUSE DIGITAL
`ELECTRONICS, LLC, PHOEBE
`MICRO, INC., ZYXEL
`COMMUNICATIONS INC. and
`WESTERN DIGITAL CORPORATION,
`
`Defendants .
`
`._-------------------------------------------------- )(
`
`SHIRA A. SCHEINDLIN, U.S.D.J.:
`
`I.
`
`INTRODUCTION
`
`On December 14, 2009, the Software Freedom Conservancy, Inc. and
`
`Erik Andersen ("plaintiffs") brought an action against fourteen commercial
`
`electronics distributors for copyright infringement. Plaintiffs now move to hold
`
`non-party Westinghouse Digital LLC ("WD") in contempt of this Court's earlier
`
`injunction against Westinghouse Digital Electronics, LLC ("WDE") pursuant to
`
`Rule 65(d) of the Federal Rules of Civil Procedure. For the reasons discussed
`
`1
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`
`

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`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 2 of 21
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`below, plaintiffs' motion is granted.
`
`II.
`
`BACKGROUND
`
`In 1999, Andersen developed software, which he contributed to an
`
`open source computer program knO\vn as BusyBox.1 On December 14,2009,
`
`plaintiffs filed an action for copyright infringement against fourteen companies,
`
`including WDE.2 Plaintiffs claim that the defendants were distributing BusyBox
`
`without plaintiffs' permission. After filing its answer and several initial
`
`disclosures, WDE ceased responding to plaintiffs' requests for discovery.3 WDE
`
`informed this Court that it had sold all of its assets to Credit Management
`
`Association ("CMA") as part of a General Assignment for the Benefit of Creditors
`
`under California law and would not defend itself in the litigation. 4 In April 2010,
`
`See 6/1/10 Declaration of Erik Andersen in Support of Motion for
`Default Judgment, or in the Alternative, Summary Judgment against Defendant
`Westinghouse Digital Electronics, LLC ("Andersen Decl.") ~~ 3-4.
`
`2
`
`See Complaint ("Compl.") ~ 1.
`
`See Software Freedom Conservancy, Inc. v. Best Buy Co., Inc., No.
`3
`09 Civ. 10155,2010 WL 2985320, at *1 (S.D.N.Y. July 27,2010) ("Software
`Freedom F').
`
`See id. WD claims that CMA, on behalf of WDE, made the decision
`4
`to cease defending the action. See Respondent Westinghouse Digital, LLC's
`Opposition to Plaintiffs' Motion to Find Westinghouse Digital, LLC in Contempt
`("WD Mem.") at 1-2.
`
`2
`
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 3 of 21
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`WD purchased from CMA the assets needed to operate WDE's business.5 On June
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`3,2010, plaintiffs moved for a default judgment or, in the alternative, summary
`
`judgment against WDE.6
`
`In July of 20 1 0, this Court entered a default judgment against WDE
`
`for failing to meet its discovery obligations and awarded plaintiffs permanent
`
`injunctive relief as well as damages. 7 Plaintiffs now move to hold WD, a non-
`
`party to the injunction, in contempt. 8
`
`III. APPLICABLE LAW
`
`A.
`
`Contempt
`
`"A party may be held in contempt only if it is proven by 'clear and
`
`convincing' evidence that the party violated a 'clear and unambiguous' order of
`
`See Memorandum of Law in Support of Plaintiffs' Motion to Find
`5
`Westinghouse Digital, LLC in Contempt ("PI. Mem.") at 3. See also WD Mem. at
`9.
`
`6
`
`7
`
`See Software Freedom 1,2010 WL 2985320, at *1.
`
`See id. at *3.
`
`In August of 20 1 0, plaintiffs moved to join WD and CMA as
`8
`defendants under Rule 2S( c) as successors in interest. This Court denied both
`motions. See Software Freedom Conservancy Inc. v. Best Buy Co., Inc., - F.
`Supp.2d No. 09 Civ. 10155,2011 WL 1465837, at *1 (S.D.N.Y. April 14,
`2011) ("Software Freedom Ir').
`
`3
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`

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`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 4 of 21
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`the court.,,9 "In the context of civil contempt, the clear and convincing standard
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`requires a quantum of proof adequate to demonstrate a 'reasonable certainty' that a
`
`violation occurred."[O
`
`B.
`
`Enjoining a Non-Party
`
`"As a general matter, a court may not enjoin a non-party that has not
`
`appeared before it to have its rights legally adjudicated."I! However, under
`
`Federal Rule of Civil Procedure 65(d), an injunction binds not only the parties, but
`
`also the parties' "officers, agents, servants, employees, and attorneys" and "other
`
`persons who are in active concert or participation with [them]" as long as they
`
`"receive actual notice of it by personal service or otherwise."!2 Under Rule 65( d),
`
`City ofNew York v. Local 28, Sheet Metal Workers' Int 'I Ass 'n, 170
`9
`F.3d 279,282 (2d Cir. 1999) (citation omitted).
`
`Levin v. Tiber Holding Corp., 277 F.3d 243, 250 (2d Cir. 2002)
`10
`(citation omitted).
`
`Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 154
`J1
`F.3d 1345,1351 (Fed. Cir. 1998) (citing Chase Nat 'I Bank v. City ofNorwalk, 291
`U.S. 431, 436-37 (1943)).
`
`Fed. R. Civ. P. 56(d)(2)(A)-(C). Accord Vacco v. Operation Rescue
`12
`Nat 'I, 80 F.3d 64, 70 (2d Cir. 1996) ("Rule 65(d) codifies the well-established
`principle that, in exercising its equitable powers, a court cannot lawfully enjoin the
`world at large. In order for a court to hold a nonparty respondent in contempt of a
`court order, the respondent must either [1] abet the [party named in the order], or
`must [2] be legally identified with him.") (quotation marks and citations omitted).
`
`4
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`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 5 of 21
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`an organization and its agents may not circumvent a valid court
`order merely by making superficial changes in the organization's
`name or form, and in appropriate circumstances a court is
`authorized to enforce its order against a successor ofthe enjoined
`organization. Whether a new organization is the successor of an
`enjoined organization depends upon the facts and circumstances
`of the case. The critical inquiry is whether there is a substantial
`continuity ofidentity between the two organizations. 13
`
`"The party seeking enforcement of an order bears the burden of demonstrating that
`
`the persons to be held in contempt are within the scope of the injunction."14
`
`C.
`
`Fair Use Doctrine
`
`Under the fair use doctrine, "the fair use of a copyrighted work ... for
`
`purposes such as criticism, comment, news reporting, teaching ... , scholarship or
`
`research is not an infringement of copyright." IS The fair use doctrine "permits
`
`[and requires] courts to avoid rigid application of the copyright statute when, on
`
`occasion, it would stifle the very creativity which that law is designed to foster."16
`
`Whether the use of a work is "fair use" turns on
`
`(1) the purpose and character of the use, including whether such
`use is of a commercial nature or is for nonprofit educational
`
`Vacca, 80 F.3d at 70 (citations omitted) (emphasis added).
`
`Id.
`
`17 U.S.C. § 107.
`
`13
`
`14
`
`15
`
`Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,577 (1993)
`16
`(quotation marks and citation omitted) (alterations in original).
`
`5
`
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 6 of 21
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`purposes;
`(2) the nature of the copyrighted work;
`(3) the amount and substantiality ofthe portion used in relation to
`the copyrighted work as a whole; and
`(4) the effect of the use upon the potential market for or value of
`the copyrighted work. 17
`
`"The last factor is undoubtedly the single most important element of fair use.,,18
`
`"Although defendants bear the burden of proving that their use was fair, ... they
`
`need not establish that each of the factors set forth in § 107 weighs in their
`
`favor." I
`
`9
`
`IV. DISCUSSION
`
`WD argues that plaintiffs' allegations do not support a finding of
`
`contempt for the following reasons: (1) WD does not fall under Rule 65(d)
`
`because it is not a successor to WDE; (2) its posting of the BusyBox code on its
`
`website was done pursuant to an Order from the Federal Communications
`
`Commission ("FCC") and (3) its use of BusyBox on its website is a fair use?O I
`
`address each argument in tum.
`
`17
`
`18
`
`(1985).
`
`19
`
`20
`
`17 U.S.C. § 107.
`
`Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566
`
`NXIVM Corp. v. Ross Inst., 364 F.3d 471,477 (2d Cir. 2004).
`
`See WD Mem. at 3.
`
`6
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`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 7 of 21
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`A.
`
`Because There Is a Substantial Continuity of Identity Between
`
`WD and WDE, WD Is Within the Scope, and in Contempt of, the
`
`Injunction
`
`This Court previously held that WD is not a successor in interest to
`
`WDE under Rule 26(c).21 However, the question now before the Court is whether
`
`WD falls within the scope of the injunction under Rule 65( d) based on a
`
`"substantial continuity of identity" between WD and WDE.22
`
`The hallmarks of a "substantial continuity of identity" clearly exist.23
`
`Plaintiffs claim, and WD does not dispute, that WD acquired all the assets
`
`necessary to carry on WDE's business and continues to use the same trade name
`
`21
`
`See Software Freedom 11,2011 WL 1465837, at *1.
`
`As plaintiffs have pointed out, WD has applied the wrong "substantial
`22
`continuity" test in arguing that it is not a successor ofWDE. See Plaintiffs' Reply
`Memorandum of Law in Support of Their Motion to Find Westinghouse Digital,
`LLC in Contempt ("PI. Reply Mem.") at 1-2 n.l. As noted earlier, the appropriate
`test in determining whether a non-party can be held in contempt is the "substantial
`continuity" test under Rule 65( d), not the federal common law test for successor
`liability.
`
`See, e.g, Stotter Division ofGraduate Plastics Co., Inc. v. District 65,
`23
`United Auto Workers, AFL-CIO, 991 F.2d 997, 1001 (2d Cir. 1993) ("In the
`instant case, such continuity clearly exists - the same plant is being operated, the
`Stooter name is being used, the same products are being made with the same
`equipment and methods of production, all the Stotter employees were retained by
`GPC, and employee benefits are calculated based on service time with both Stotter
`and GPC.").
`
`7
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`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 8 of 21
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`24
`and web address. Nor does WD dispute that it occupies the same location as
`
`WDE and operates with many of the same employees, including the same
`
`President and Counsel. In fact, WD admits that "WD employs many of [WDE's]
`
`former officers and employees.,,25 Finally, WD does not dispute that it had actual
`
`notice of the injunction against WDE and has continued to post BusyBox software
`
`on its website. 26
`
`Instead, WD contends that it does not fall within the scope of the
`
`injunction under the theory that it is a "substantial continuation" of WDE because
`
`(1) it was not formed as a means to evade this Court's injunction and (2) it
`
`acquired WDE's assets before the issuance of the injunction against WDE?7 As to
`
`WD's first argument, a court need not find that an organization was formed as a
`
`means to circumvent an injunction in order to hold a non-party in contempt. 28 This
`
`24
`
`25
`
`
`26
`
`27
`
`
`See PI. Reply Mem. at 3.
`
`
`WDMem. at 9.
`
`
`See id. at 3. See also PI. Mem. at 3.
`
`
`See WD Mem. at 9.
`
`See, e.g, Walling v. Reuter, Inc., 321 U.S. 671, 674 (1944) ("Not only
`28
`is such an injunction enforceable by contempt proceedings against the corporation,
`its agents and officers and those individuals associated with it in the conduct of its
`business, but it may also, in appropriate circumstances, be enforced against those
`to whom the business may have been transferred, whether as a means of evading
`the judgement or for other reasons.") (emphasis added).
`
`8
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`

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`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 9 of 21
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`type of scienter is only necessary under the "aiding and abetting" theory of non-
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`party liability.29
`
`WD next argues that it purchased WDE's assets before the injunction
`
`was issued and before plaintiffs even moved for an injunction, barring any
`
`potential for a finding of contempt.30 Plaintiffs respond that, although the
`
`injunction had not yet been issued when WD purchased WDE's assets, the
`
`copyright infringement suit, seeking injunctive relief, was already a pending
`
`matter.31
`
`See Additive Controls, 154 F.3d at 1353 ("[Defendant's] contention is
`29
`more properly directed at the scienter requirement for acting in active concert and
`participation."). Accord National Spiritual Assembly ofBaha'is ofthe U.S. Under
`Hereditary Guardianship, Inc. v. National Spiritual Assembly ofthe Baha'is ofthe
`U.S., Inc., 628 F.3d 837,849 (7th Cir. 2010) (explaining the two categories of
`non-parties potentially bound by an injunction).
`Plaintiffs allude to the "aiding and abetting" theory in their brief. See
`PI. Mem. at 3-4 ("To be sure ... [WD] and [WDE] acted in concert to bring about
`a result forbidden by the injunction, namely the continued distribution of
`infringing versions of Plaintiffs' copyrighted BusyBox software."). To the extent
`that plaintiffs argue WD is aiding and abetting WDE, plaintiffs' argument must
`fail because WDE entered bankruptcy proceedings in 2010. See Additive
`Controls, 154 F.3d at 1354 ("[Defendant] contends that the district court found
`him in contempt based on his actions 'in active concert or participation' with
`AdCon, although AdCon has been dormant for years. If that were the basis for the
`contempt finding, we would agree; one cannot act in concert with an inactive
`corporation.").
`
`30
`
`See WD Mem. at 9.
`
`See PI. Mem. at 5 ("[WDE] acquired as part of their transaction the
`31
`very software that violates the injunction, knowing full well that there was an
`9
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`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 10 of 21
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`In Golden State Bottling v. NLRB, the Supreme Court held that a
`
`purchaser who acquires assets can be held liable under Rule 65( d) if the assets
`
`were purchased with knowledge of the order.32 And as noted by the Federal
`
`Circuit in Kloster Speedsteel AB v. Crucible Inc., courts have "repeatedly found
`
`privity where, after a suit begins, a nonparty acquires assets of a defendant­
`
`infringer.,,33 Like the non-party purchaser in Kloster Speedsteel, WO purchased
`
`WOE's assets with knowledge of the pending litigation. This knowledge, coupled
`
`with the significant operational overlap between WO and WOE, leads me to
`
`conclude that a "substantial continuity of identity" exists between WOE and WO
`
`for the purposes of Rule 65( d). As a successor in interest, WO is therefore bound
`
`by the injunction against WOE.
`
`outstanding software copyright claim against the products containing that
`software.").
`
`See 414 U.S. 168, 180 (1973) ("We hold that a bonafide purchaser,
`32
`acquiring, with knowledge that the wrong remains unremedied ... may be
`considered in privity with the predecessor for purposes of Rule 65( d).") (citations
`omitted).
`
`793 F.2d 1565, 1583 (Fed. Cir. 1986) (overruled on other grounds)
`33
`(emphasis added). In Kloster Speedsteel, the district court found in favor of
`plaintiff for patent infringement and permanently enjoined the defendant and its
`"successor in interest" from infringing plaintiffs patents. The Federal Circuit then
`found that, under Rule 65(d), the injunction also applied to Kloster, a non-party
`purchaser of the infringing assets, even though at the time of the purchase, the
`judgement had not been rendered.
`
`10
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`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 11 of 21
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`B. WD's Affirmative Defenses
`
`
`Perhaps in anticipation of this Court's finding that it is WDE's
`
`successor for the purposes of Rule 65( d), WD argues that use of the BusyBox
`
`software "cannot be considered an act of copyright infringement."34
`
`1.
`
`The 2008 FCC Order
`
`WD asserts that plaintiffs' contempt motion is based solely on WD's
`
`maintenance ofWDE's old website, which allegedly contains the copyrighted
`
`BusyBox code. 35 WD then argues that posting the firmware on its website cannot
`
`amount to copyright infringement because WD was ordered to do so by the FCC. 36
`
`WD relies on two cases in support of this affirmative defense. WD first cites to
`
`SmithKline Beecham Consumer Healthcare, L.P. v. Watson Pharmaceuticals, Inc.,
`
`where the Second Circuit found no copyright liability when the Food and Drug
`
`Administration ("FDA") directed the defendants, pursuant to the Federal Food,
`
`Drug, and Cosmetics Act ("FFDCA"), to use labeling nearly identical to the
`
`plaintiffs copyrighted guide and tape. 37 The SmithKline Beecham court found
`
`34
`
`35
`
`36
`
`37
`
`WDMem. at 7.
`
`See id. at 2.
`
`See id. at 4.
`
`See 211 F.3d 21 (2d Cir. 2000).
`
`11
`
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 12 of 21
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`significant that "the Amendments [to the FFDCA] require that the labeling for the
`
`[defendant's] generic drug be the 'same' as the labeling for the [plaintiff's]
`
`pioneer drug. ,,38
`
`In April 2008, the FCC issued a Consent Decree relating to an
`
`investigation ofWDE's interstate shipment of television receivers that did not
`
`comply with FCC V -Chip technology requirements. 39 Pursuant to the Consent
`
`Decree, the FCC terminated the investigation and, in return, WDE agreed to
`
`adhere to several requirements, including "assist[ing] customers ... in
`
`downloading appropriate firmware from its website ... [and making] the firmware
`
`available on its website for a period of five years.,,40 WD argues that its use of
`
`BusyBox software cannot be a copyright violation because, similar to the FDA's
`
`order in SmithKline Beecham, the FCC Order directed WD to post the BusyBox
`
`firmware on its website.41 Unlike the FDA requirements in SmithKline Beecham,
`
`however, the FCC Order does not require WD to use the BusyBox software.
`
`38
`
`[d. at 27.
`
`See FCC Consent Decree, In the Matter of Westinghouse Digital
`39
`Electronics, LLC ("FCC Consent Decree"), Ex. A to Declaration of Kenneth
`Randall in Support of Respondent Westinghouse Digital, LLC's Opposition to
`Plaintiffs' Motion to Find Westinghouse Digital, LLC in Contempt.
`
`40
`
`41
`
`
`[d. ~ 8.
`
`
`See WD Mem. at 4.
`
`12
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`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 13 of 21
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`Rather, the FCC Order only requires that WD make "appropriate firmware"
`
`available. WD has not carried its burden of showing that it is incapable of
`
`obeying both the FCC Order and respecting plaintiffs' copyright. Therefore,
`
`WD's argument must fai1. 42
`
`2.
`
`Fair Use Doctrine
`
`WD also argues that the fair use doctrine shields it from liability for
`
`copyright infringement.43 WD points to Gulfstream Aerospace Corp. v. Camp
`
`Systems International, Inc., where a federal court allowed defendant's copying of
`
`Gulfstream's airplane repair manuals pursuant to the fair use doctrine. 44
`
`Examining the fourth, and most important, fair use factor, the Gulfstream court
`
`found that defendant's use of the manual did not adversely affect the market for
`
`the manuals.45 The court emphasized that granting copyright protection to the
`
`Gulfstream manuals
`
`let alone to their secondary use - would not further the aims
`
`42 WD also argues that posting the BusyBox firmware on its website
`cannot amount to copyright infringement because the injunction applies only to
`activity done "without permission" and WD is acting with the FCC's permission.
`See id. at 7. This argument is unavailing. The "permission" in the injunction
`clearly refers to the plaintiffs' permission.
`
`43
`
`44
`
`45
`
`See id. at 5.
`
`See 428 F. Supp. 2d 1369 (S.D. Ga. 2006).
`
`See id. at 1379-80.
`
`13
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`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 14 of 21
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`of copyright laws46 because "not only is the content of the manuals specified by
`
`regulation, but also the format of the manuals is specified so that an aircraft
`
`manufacturer may not add unnecessary sections to give the manuals a 'creative' or
`
`'original' touch.,,47
`
`This case is easily distinguishable from Gulfstream. Unlike the
`
`manuals at issue in that case, the BusyBox software was not "written in
`
`accordance with federal guidelines that significantly prescribe[ d] [its] content and
`
`format" a fact that led the Gulfstream court to conclude that "much, if not all, of
`
`Gulfstream's manuals are not copyrightable."48 WD does not even attempt to
`
`argue that the BusyBox software itselfis not subject to copyright protection. What
`
`is more, even assuming the truth ofWD's assertion that "the fimlware posted on
`
`[its] website cannot be read by humans and has no use or value except when
`
`installed on the specific Mora television model for which it was written," that fact
`
`See id. at 1380 (noting that the purpose of copyright law is to promote
`46
`the progress of science and useful arts).
`
`Id. at 1376 (emphasis in original). Accord id. at 1380-81 ("It would
`47
`be especially egregious [to protect Gulfstream's manual] since Gulfstream is
`required by federal regulations to produce the manuals anyway. Again, those
`federal regulations leave Gulfstream little room to make decisions regarding either
`format or the content of those manuals.").
`
`Id. at 1376. Accord id. at 1380-81 ("[G]ranting copyright protection
`48
`under these facts would not serve the purposes of copyright law ....").
`14
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 15 of 21
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`does not establish that "there cannot be any effect on the market for BusyBox.,,49
`
`Under such logic, any use of copywritten work would be "fair" as long as that use
`
`did not result in the copywritten work's unauthorized reproduction by anyone
`
`other than the putative infringer. Because WD has not met its burden of
`
`demonstrating that its use of the BusyBox software would not affect the value of
`
`plaintiffs' copyright, WD's fair use defense fails.
`
`c. Remedies
`
`Plaintiffs request that this Court award (I) coercive and compensatory
`
`damages, (2) attorneys' fees and costs, and (3) an order for WD to deliver all
`
`infringing articles to plaintiffs for disposition. 50
`
`1.
`
`Damages
`
`"The imposition of civil contempt sanctions may serve dual purposes:
`
`to secure future compliance with court orders and to compensate the party that has
`
`been wronged."51 To the extent the sanction is coercive, "[t]he district court is
`
`counseled to consider several factors in calculating a fine including the character
`
`WD Mem. at 6 (reasoning that "those who want to use it must acquire
`49
`it from BusyBox.net or some other source").
`50
`
`See PI. Mem. at 4.
`
`Paramedics Ectromedicina Comerical, Ltda v. GE Medical Sys., 369
`51
`F.3d 645, 657 (2d Cir. 2004).
`
`15
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 16 of 21
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`and magnitude of the ham1 threatened by continued contumacy, the probable
`
`effectiveness of any suggested sanction in bringing about compliance and the
`
`contemnor's ability to pay."52 If the fine is compensatory and paid directly to the
`
`other party, the court has less discretion and "'the sanction should correspond at
`
`least to some degree with the amount of damages. ",53
`
`Unlike in Software Freedom I, plaintiffs here do not elect statutory
`
`damages and have made no recommendations to this Court as to the appropriate
`
`amount of coercive and compensatory damages. Without further information, I am
`
`unable to determine the proper amount of damages. The parties are therefore
`
`ordered to submit information regarding WD's ability to pay and plaintiffs' lost
`
`profits due to WD's unauthorized use of BusyBox54 within fifteen (15) days of the
`
`date of this Order. I reserve decision on the amount of coercive and compensatory
`
`damages until these submissions are received.
`
`2.
`
`Attorneys' Fees and Costs
`
`"It is well settled in this Circuit that costs, including reasonable
`
`52
`
`Id. at 657-58 (quotations and citations omitted).
`
`53
`Cir. 1995)).
`
`Id. at 658 (quoting King v. Allied Vision, Ltd., 65 F.3d 1051,1058 (2d
`
`Plaintiffs allege that BusyBox is an open source computer program
`54
`without a profit-making mission. See Compi. ~~ 21-23.
`16
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`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 17 of 21
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`attorneys' fees, may be awarded to the party who prosecutes a contempt motion as
`
`an appropriate compensatory sanction for contumacious behavior."55 As in
`
`Software Freedom 1, I find that an award of attorneys' fees is both appropriate and
`
`'''in line with the statutory goal of deterrence. ",56 Plaintiffs are directed to submit
`
`a fee application within fifteen (15) days of the date of this Order detailing their
`
`costs and expenses in connection with this litigation.
`
`3.
`
`Forfeiture of Infringing Articles
`
`WD is also ordered to deliver all infringing articles to plaintiffs for
`
`disposition under the same rationale as that provided in Software Freedom 1.57
`
`v.
`
`CONCLUSION
`
`For the aforementioned reasons stated above, plaintiffs' motion to
`
`hold WD in contempt of this Court's earlier injunction against WDE pursuant to
`
`Rule 65( d) is granted. Counsel is ordered to submit information regarding WD's
`
`ability to pay and plaintiffs' lost profits within fifteen (15) days of the issuance of
`
`this Opinion and Order. Plaintiffs are directed to submit a fee application by the
`
`New York State Nat 'I Org./or Women v. Terry, 952 F. Supp. 1033,
`55
`1043 (S.D.N.Y. 1997) (citations omitted).
`
`Software Freedom I, 2010 WL 2985320, at *4 (quoting Kepner-
`56
`Tregoe, Inc. v. Vroom, 186 F.3d 283,289 (2d CiT. 1999)).
`
`See id. (ordering WDE to tum over all infringing articles to plaintiffs
`57
`pursuant to 17 U.S.C. § 503(b)).
`
`17
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 18 of 21
`
`same date. The Clerk of the Court is directed to close this motion (docket # 172).
`
`SO ORDERED:
`
`
`Dated:
`
`New York, New York
`August 8, 2011
`
`18
`
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 19 of 21
`
`- Appearances ­
`
`For Plaintiffs:
`
`Daniel B. Ravicher, Esq.
`
`Aaron Williamson, Esq.
`
`Michael A. Spiegel, Esq.
`
`Software Freedom Law Center
`
`1995 Broadway, 17th Floor
`
`New York, New York 10023-5882
`
`(212) 580-0880
`
`For Respondent Westinghouse Digital, LLC:
`
`Barry M. Kazan, Esq.
`Thompson Hine LLP
`335 Madison Avenue, 12th Floor
`New York, New York 10017
`(212) 344-5680
`
`For Westinghouse Digital Electronics, LLC:
`
`Kyle Bradford Fleming, Esq.
`Baker & Daniels
`111 East Wayne Street, Suite 800
`Fort Wayne, Indiana 46802
`(216) 816-7374
`
`Sarah Hawa Bawany Yousuf, Esq.
`Balber, Pickard, Battistoni, Maldonado & Van Der Tuin
`1370 Avenue of the Americas
`New York, New York
`(212) 246-2400
`
`For Phoebe Micro, Inc.:
`
`Andrew Kaver, Esq.
`
`The Law Office of Andrew M. Kaver
`
`
`19
`
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 20 of 21
`
`32 Broadway, Suite 1710
`
`New York, New York 10004
`
`(212) 897-5803
`
`
`Brian Scott Cohen, Esq.
`
`Cohen Law Group, P.C.
`
`1220 Broadway, Suite 708
`
`New York, New York 10001
`
`(212) 967-2879
`
`
`For Zyxel Communications Inc.:
`
`David Leichtman, Esq.
`
`Robins, Kaplan, Miller & Ciresi LLP
`
`601 Lexington Avenue, Suite 3400
`
`New York, New York 10022
`
`(212) 980-7400
`
`
`Emily Bab Kirsch, Esq.
`
`Reed Smith
`
`599 Lexington Avenue
`
`New York, New York 10022
`
`(212) 521-5400
`
`
`Shiou-Jin Christine Hwang Yang, Esq.
`
`Law Offices of S.1. Christine Yang
`
`17220 Newhope Street, Suite 101-102
`
`Fountain Valley, California 92708
`
`(714) 641-4022
`
`
`For Western Digital Corporation:
`
`Ognjan Varbanov Shentov, Esq.
`
`Jones Day (Cleveland)
`
`901 Lakeside Avenue
`
`Cleveland, Ohio 44114
`
`(212) 326-3650
`
`
`20
`
`

`

`Case 1:09-cv-10155-SAS Document 211 Filed 08/08/11 Page 21 of 21
`
`Lynn Michelle Marvin, Esq.
`
`Stela Christina Tipi, Esq.
`
`Jones Day (NYC)
`
`222 East 41 st Street
`
`New York, New York
`
`(212) 326-3939
`
`21
`
`

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