Disney Enterprises, Inc., et al v. VidAngel, Inc.

Filing 24

Submitted (ECF) excerpts of record. Submitted by Appellant VidAngel, Inc.. Date of service: 01/11/2017. [10263145] [16-56843] (Stris, Peter) [Entered: 01/11/2017 09:33 PM]

No. 16-56843
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
VIDANGEL, INC.,
Defendant-Appellant,
v.
DISNEY ENTERPRISES, INC.; LUCASFILM LTD. LLC;
TWENTIETH CENTURY FOX FILM CORPORATION; AND
WARNER BROS. ENTERTAINMENT, INC.,
Plaintiffs-Appellees.
On Appeal from the United States District Court
for the Central District of California
Hon. André Birotte Jr.
No. 2:16-cv-04109-AB-PLA
EXCERPTS OF RECORD
VOLUME I OF V
(Pages 1-22)
Brendan S. Maher
Daniel L. Geyser
Douglas D. Geyser
STRIS & MAHER LLP
6688 N. Central Expy., Ste. 1650
Dallas, TX 75206
Telephone: [phone]
Facsimile: [phone]
January 11, 2016

Peter K. Stris
Elizabeth Rogers Brannen
Dana Berkowitz
Victor O’Connell
STRIS & MAHER LLP
725 S. Figueroa St., Ste. 1830
Los Angeles, CA 90017
Telephone: [phone]
Facsimile: [phone]
[e-mail]

Counsel for Defendant-Appellant VidAngel, Inc.

TABLE OF CONTENTS
VOLUME I OF V
Pages 1 to 22

ECF Description
144

Page

Order Granting Plaintiffs’ Motion for Preliminary Injunction

ER001

VOLUME II OF V
Pages 23 to 289

ECF Description

Page

175

[In Chambers] Order Granting Plaintiffs’ Ex Parte Application
for an Order to Show Cause Why VidAngel Should Not Be Held
in Contempt

ER023

172

Ninth Circuit Order Denying VidAngel, Inc.’s Emergency Motion
for a Stay Pending Appeal

ER024

167

Declaration of David Quinto

ER026

166

[In Chambers] Order Denying Defendant’s Ex Parte Application
to Stay Preliminary Injunction Pending Appeal or Alternatively,
Pending Decision by the Ninth Circuit on Stay Pending Appeal

ER029

164

VidAngel, Inc.’s Opposition to Plaintiffs’ Ex Parte Application
for an Order to Show Cause

ER034

164-1

Declaration of Neal Harmon in Support of VidAngel,
Inc.’s Opposition to Plaintiffs’ Ex Parte Application for
an Order to Show Cause

ER050

164-2

Declaration of David Quinto in Support of VidAngel,
Inc.’s Opposition to Plaintiffs’ Ex Parte Application for
an Order to Show Cause

ER060

164-3

Declaration of Jarom McDonald in Support of
VidAngel, Inc.’s Opposition to Plaintiffs’ Ex Parte
Application for an Order to Show Cause

ER070

ECF Description

Page

163

Plaintiffs’ Preliminary Injunction Bond

ER075

158

Declaration of Neal Harmon in Support of VidAngel, Inc.’s Ex
Parte Application to Stay Preliminary Injunction Pending Appeal
or, Alternatively Pending Decision by the Ninth Circuit on Stay
Pending Appeal

ER080

149

VidAngel, Inc.’s Notice of Appeal from Order Granting Motion
for Preliminary Injunction; Representation Statement

ER088

145

Court Reporter’s Transcript of Proceedings on Monday,
November 14, 2016

ER094

123

Order Regarding Hearing Date on Plaintiffs’ Motion for
Preliminary Injunction

ER218

110

Supplemental Declaration of Neal Harmon in Opposition to
Motion for Entry of Preliminary Injunction (with Exhibits)

ER220

109

Declaration of William J. Aho in Support of VidAngel, Inc.’s
Opposition to Motion for Entry of Preliminary Injunction

ER283

78

Order Continuing Hearing of Plaintiffs’ Motions for Preliminary
Injunction and to Dismiss VidAngel’s Countercomplaint

ER288

VOLUME III OF V
Pages 290 to 567

ECF Description

Page

77

Amended Answer and First Amended Counterclaims

ER290

69

Declaration of Tim Wildmon in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER350

68

Declaration of Tim Barton in Support of VidAngel’s Opposition
to Motion for Preliminary Injunction

ER354

ECF Description

Page

67

Declaration of Theodore Baehr in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER358

66

Declaration of Rick Green in Support of VidAngel’s Opposition
to Motion for Preliminary Injunction

ER362

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Declaration of Rebecca Hagelin in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER366

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Declaration of Patrick Trueman in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER371

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Declaration of Matt Kibbe in Support of VidAngel’s Opposition
to Motion for Preliminary Injunction

ER375

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Declaration of L. Brent Bozell III in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER378

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Declaration of George E. Roller in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER383

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Declaration of Gary Marx in Support of VidAngel’s Opposition
to Motion for Preliminary Injunction

ER387

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Declaration of Gary Bauer in Support of VidAngel’s Opposition
to Motion for Preliminary Injunction

ER391

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Declaration of David Bozell in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER395

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Declaration of David Barton in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER399

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Declaration of Connor Boyack in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER403

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Declaration of Harry R. Jackson Jr. in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER407

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Declaration of Timothy F. Winter in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER411

ECF Description

Page

53

Declaration of Donna Rice Hughes in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER419

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Declaration of Bryan and Diane Schwartz in Support of
VidAngel’s Opposition to Motion for Preliminary Injunction

ER428

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Declaration of Bob Waliszewski in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER433

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Declaration of Andrea Lafferty in Support of VidAngel’s
Opposition to Motion for Preliminary Injunction

ER436

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Declaration of David W. Quinto in Support of VidAngel’s
Memorandum of Points and Authorities in Opposition to
Preliminary Injunction Motion

ER441

45

Declaration of Jaime W. Marquart in Support of VidAngel’s
Memorandum of Points and Authorities in Opposition to
Preliminary Injunction Motion

ER451

45-2

[Redacted] Exhibit B to Declaration of Jaime W.
Marquart in Support of VidAngel’s Memorandum of
Points and Authorities in Opposition to Preliminary
Injunction Motion

ER455

45-4

[Redacted] Exhibit D to Declaration of Jaime W.
Marquart in Support of VidAngel’s Memorandum of
Points and Authorities in Opposition to Preliminary
Injunction Motion

ER469

44

[Redacted] Declaration of Sigurd Meldal in Support of
VidAngel’s Memorandum of Points and Authorities in
Opposition to Preliminary Injunction Motion

ER470

44-4

ER514

Exhibit D to Declaration of Sigurd Meldal in Support
of VidAngel’s Memorandum of Points and Authorities
In Opposition to Preliminary Injunction Motion

ECF Description

Page

43

[Redacted] Declaration of Neal Harmon in Support of
VidAngel’s Memorandum of Points and Authorities In
Opposition to Preliminary Injunction Motion

ER520

43-1

Exhibit A to Declaration of Neal Harmon in Support of
VidAngel’s Memorandum of Points and Authorities In
Opposition to Preliminary Injunction Motion

ER545

43-2

Exhibit B to Declaration of Neal Harmon in Support of
VidAngel’s Memorandum of Points and Authorities In
Opposition to Preliminary Injunction Motion

ER547

43-3

Exhibit C to Declaration of Neal Harmon in Support of
VidAngel’s Memorandum of Points and Authorities In
Opposition to Preliminary Injunction Motion

ER551

28

Declaration of Tedd Cittadine in Support of Plaintiffs’ Motion
for Preliminary Injunction

ER554

VOLUME IV OF V
Pages 568 to 660

ECF Description

Page

27

[Redacted] Plaintiffs’ Notice of Motion and Motion for
Preliminary Injunction; Memorandum of Points and Authorities
in Support Thereof

ER568

1

Complaint for Copyright Infringement and Violation of Digital
Millennium Copyright Act

ER613

[1/11/2017] Docket Sheet

ER633

VOLUME V OF V
(FILED UNDER SEAL)
Pages 661 to 848

ECF Description

Page

80-1 Declaration of Neal Harmon in Support of VidAngel’s
Memorandum of Points and Authorities In Opposition to
Preliminary Injunction Motion

ER661

80-2 Declaration of Sigurd Meldal in Support of VidAngel’s
Memorandum of Points and Authorities in Opposition to
Preliminary Injunction Motion

ER686

80-3 Exhibit B to Declaration of Jaime W. Marquart in Support of
VidAngel’s Memorandum of Points and Authorities in Opposition
to Preliminary Injunction Motion

ER709

80-4 Exhibit D to Declaration of Jaime W. Marquart in Support of
VidAngel’s Memorandum of Points and Authorities in Opposition
to Preliminary Injunction Motion

ER723

33

Plaintiffs’ Notice of Motion and Motion for Preliminary
Injunction; Memorandum of Points and Authorities in Support
Thereof

ER804

Case 2:16-cv-04109-AB-PLA Document 144 Filed 12/12/16 Page 1 of 22 Page ID #:4891

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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DISNEY ENTERPRISES, INC.;
LUCASFILM LTD. LLC;
TWENTIETH CENTURY FOX FILM
CORPORATION and WARNER
BROS. ENTERTAINMENT, INC.,
Plaintiff,

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Case No. 2:16-cv-04109 – AB (PLAx)

ORDER GRANTING PLAINTIFFS’
MOTION FOR PRELIMINARY
INJUNCTION

v.
VIDANGEL, INC.,
Defendant.

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Pending before the Court is Plaintiffs’ Disney Enterprises, Inc., Lucasfilm Ltd.
LLC, Twentieth Century Fox Film Corporation, and Warner Bros. Entertainment Inc.
(“Plaintiffs”) Motion for Preliminary Injunction. (“Mot.” Dkt. No. 26-1.) Plaintiffs
seek to enjoin Defendant VidAngel Inc. (“VidAngel”) from [1] violating Plaintiffs’
rights pursuant to § 1201(a) of the Digital Millennium Copyright Act (“DMCA”), 17
U.S.C. § 1201(a), by circumventing technological measures that effectively control
access to Plaintiffs’ copyrighted works on DVDs and Blu-ray discs; and [2] infringing
by any means, directly or indirectly, Plaintiffs’ exclusive rights under § 106 of the
Copyright Act, id. § 106, including by reproducing or publicly performing Plaintiffs’
copyrighted works.
Plaintiffs bring this motion on the grounds that they are likely to succeed on the
merits of their claims and that they will suffer irreparable harm, absent an injunction.

ER001

1.

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Plaintiffs contend that the balance of equities tips decidedly in their favor, and an
injunction is in the public interest. Furthermore, Plaintiffs contend that VidAngel’s
defenses to violating Plaintiff’s rights are meritless and thus Plaintiffs are entitled to a
preliminary injunction against Defendants. VidAngel filed an opposition and the
Plaintiffs filed their reply. The Court heard oral arguments from the parties on
November 14, 2016 and took the matter under submission. Upon consideration of the
parties’ arguments, papers and the case file, the court hereby GRANTS the motion for
preliminary injunction.

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I.

a. Factual and Procedural Background

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BACKGROUND

i. Plaintiffs and Their Copyrighted Works
Plaintiffs are in the business of producing and distributing motion pictures and
television programs. (“Compl.” Dkt. No 1 ¶ 19.) Plaintiffs invest considerable effort
and resources each year to develop, produce, distribute and publicly perform their
Copyrighted Works. (Id. at ¶ 25.) Plaintiffs own and have the exclusive U.S. rights to
reproduce and publicly perform their Copyrighted Works, including by means of
streaming those works over the internet to the public. (Id. at ¶ 25.) Plaintiffs
distribute and license their content for home entertainment across a number of
channels. (Id. at ¶ 27.) These include, among others: (1) physical Discs; (2) digital
download through services like iTunes, VUDU or Amazon Video; (3) on-demand
streaming for short-term viewing on a per transaction fee (e.g., iTunes Store or Google
Play Store); or (4) subscription on-demand streaming (e.g., Netflix or Hulu).
(Cittadine Decl. ¶ 9.)
Plaintiffs strategically release their content across different distribution
channels and to different licensees over time, a process called “windowing.” (Id.)
The value and price for each offering is tailored to the willingness of customers (and
licensees) to pay for those offerings. (Id.) Plaintiffs often negotiate higher licensing
fees in exchange for granting a licensee the exclusive right to perform a movie or
television show during a particular time period. (Id.) Plaintiffs assert that online and
digital distribution channels have become increasingly important revenue sources. (Id.
¶ 10.)

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ER002

2.

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i.

VidAngel’s Service

VidAngel offers more than 2,500 movies and television episodes for purchase
on its website. Answer/Counterclaim (“CC,” Dkt. No. 77 ¶ 59.) VidAngel purchases
physical copies of each of these titles in DVD format. (Id.) VidAngel enters each
DVD it has purchased into an inventory management application database and assigns
a unique barcode to each physical disc case. (Id. at ¶ 60.) VidAngel then uses a
commercially available software program to decrypt a copy of each individual title.
(Meldal Dec., ¶ 37(ii).) After decryption, VidAngel creates “intermediate” files.
(Oppo. at 17.) VidAngel tags the files for over 80 types of potentially objectionable
content. (Meldal Dec., ¶¶ 33-38.)
Before watching a particular movie or television episode, a customer
must purchase a physical DVD containing the title from VidAngel. (CC ¶ 63.) The
purchase price for each DVD is $20. (Id. ¶ 64.) To purchase a disc, users must logon
to the VidAngel website. First-time users are required to provide an email address to
establish a unique user ID and create a password. (Id.) Once a purchase transaction
has occurred, the disc is removed from available inventory and the title is transferred
to that customer’s unique user ID. (Id. at 65.) VidAngel typically maintains
possession of the physical DVD on behalf of the purchasers, but purchasers may
request that the DVD be sent to them or retrieve the DVD from VidAngel’s offices.
(Id. ¶ 63.)

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After a customer purchases a physical DVD they are shown a listing of the
various types of potentially objectionable content identified in the purchased work, as
well as the number of occurrences of each such type of content within the work. (Id.
¶ 62.) The user then selects the types of content he or she wishes to have silenced or
deleted. (Id.) Each user must apply at least one filter in order to view a video. (Id. ¶
30.) After selecting filters, a subscriber is able to view the stream instantaneously on
any VidAngel-supported device, including Roku, Apple TV, Smart TV, Amazon Fire
TV, Android, Chromecast, iPad/iPhone and desktop or laptop computers. (Id. ¶ 66.)

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Once a user has viewed a stream, the user may re-sell the DVD
back to VidAngel for a partial credit of the $20 purchase price. (Id. ¶ 68.) The
sellback price decreases $1 per night for standard definition (SD) purchases and $2
per night for high-definition (HD) purchases. (Id.) Once a user sells the movie back
to VidAngel, the user’s access to the title is terminated and the remaining balance is
credited back to the user’s VidAngel account. (Id.) For example: A $20 SD disk is
owned for 2 nights at $1 per night and sold back for $18 in sell-back credit. (Id.) If a
VidAngel customer keeps a DVD for more than 20 days, he or she can either view it

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ER003

3.

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through the VidAngel platform in perpetuity, sell it back for $1 or $2 in credit, or
VidAngel will send the DVD to the customer, if requested. (Id.)
At the time of this motion, VidAngel offered over 80 of Plaintiff’s copyrighted
works on their website. (Compl. Ex. A.; Ehler Decl. Ex. EE at Tr. 27:19-29:14.)
Plaintiffs have not provided authorization, permission or consent to VidAngel to copy
or publicly perform the Copyrighted Works, or to exercise any other rights affecting
their copyrights with respect to the Copyrighted Works. (Compl. ¶ 29.)
On June 9, 2016, Plaintiffs commenced this action by filing a complaint against
Defendants. (Complaint, Dkt. No. 1.) On July 5, 2016, Defendants filed an answer
and counterclaim. (Dkt. No. 11.) On August 22, 2016, Plaintiffs filed a Motion for
Preliminary Injunction. (Dkt. No. 27) On September 16, 2016, Defendants filed an
Amended Answer and Affirmative Defenses, as well as First Amended
Counterclaims. (Dkt. No. 77.)

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II.

LEGAL STANDARD

Injunctive relief is "an extraordinary remedy that may only be issued upon a
clear showing that plaintiff is entitled to such relief." Winter v. Natural Resources
Defense Council, 555 U.S. 7, 129 S. Ct. 365, 376, 172 L. Ed. 2d 249 (2008). The
purpose of a preliminary injunction is to preserve the status quo and the rights of the
parties until a final judgment on the merits can be rendered. U.S. Philips Corp. v.
KBC Bank N.V., 590 F.3d 1091, 1094 (9th Cir. 2010). A party seeking preliminary
injunctive relief must establish that they are (1) likely to succeed on the merits; (2)
that they are likely to suffer irreparable harm in the absence of preliminary relief; (3)
that the balance of equities tips in their favor and (4) that an injunction is in the public
interest. Am. Trucking Ass’n, Inc. v. City of Los Angeles, 559 F.3d 1046, 1052 (9th
Cir. 2009).
Alternatively, “‘serious questions going to the merits’ and a hardship balance
that tips sharply toward the plaintiff can support the issuance of an injunction,”
provided that the plaintiff also shows irreparable harm and that the injunction is in the
public interest. Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1132 (9th
Cir. 2011); A “serious question” is one on which the movant “has a fair chance of
success on the merits.” Sierra On-Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415,
1421 (9th Cir. 1984).
The elements of this test are “balanced, so that a stronger showing of one
element may offset a weaker showing of another.” Alliance for the Wild Rockies, 622

ER004

4.

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F.3d 1045, 1049–50 (9th Cir. 2010), rev’d on other grounds, 632 F.3d 1127 (9th Cir.
2011). However, the applicant must demonstrate that immediate or imminent
irreparable harm is likely: “Speculative injury does not constitute irreparable injury
sufficient to warrant granting a preliminary injunction. A plaintiff must do more than
merely allege imminent harm sufficient to establish standing; a plaintiff must
demonstrate immediate threatened injury as a prerequisite to preliminary injunctive
relief.” Caribbean Marine Servs. Co. v. Baldrige, 844 F.2d 668, 674 (9th Cir. 1988)
(emphasis in original) (internal citations omitted); see also Fin. & Sec. Prods. Ass’n v.
Diebold, Inc., Case No. C 04-04347 WHA, 2005 WL 1629813, *6 (N.D. Cal. July 8,
2005) (“Irreparable harm must not be speculative or merely alleged to be imminent . .
. .”).
"[A] preliminary injunction is customarily granted on the basis of procedures
that are less formal and evidence that is less complete than in a trial on the merits."
Univ. of Texas v. Camenisch, 451 U.S. 390, 395 (1981). Therefore, the Federal Rules
of Evidence do not strictly apply to preliminary injunction proceedings. See, e.g.,
Republic of the Philippines v. Marcos, 862 F.2d 1355, 1363 (9th Cir. 1988) (en banc);
Flynt Distrib. Co. v. Harvey, 734 F.2d 1389, 1394 (9th Cir. 1984). The Court is
permitted to consider inadmissible evidence in deciding a motion for a preliminary
injunction. Id. This flexibility exists because "[t]he urgency of obtaining a
preliminary injunction necessitates a prompt determination" and makes it difficult for
a party to procure supporting evidence in a form that would be admissible at trial. Id.
“While district courts may consider inadmissible evidence in the context of a
preliminary injunction, this does not mean that evidentiary issues have no relevance to
this proceeding. Such issues, however, properly go to weight rather than
admissibility.” Am. Hotel & Lodging Ass'n v. City of Los Angeles, 119 F. Supp. 3d
1177, 1185 (C.D. Cal. 2015) 1

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Both sides make numerous evidentiary objections. In light of the relaxed evidentiary standard for
preliminary injunction proceedings, the Court need not rule on admissibility. However, the Court has
considered the likely admissibility of the evidence in determining whether the Plaintiff demonstrated a
likelihood of success on the merits, for purposes of the preliminary injunction. Where the Court has
expressly relied on evidence that is subject to an evidentiary objection, the Court has overruled the objection.

ER005

5.

Case 2:16-cv-04109-AB-PLA Document 144 Filed 12/12/16 Page 6 of 22 Page ID #:4896

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III.

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a. Plaintiffs Have Demonstrated A Likelihood of Success on the Merits.

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i. Plaintiffs’ DMCA Claim

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DISCUSSION

Section 1201(a)(1)(A) of the Digital Millennium Copyright Act provides that
“No person shall circumvent a technological measure that effectively controls access
to a work protected under this title.” A technological measure effectively controls
access to a copyrighted work if, “the measure, in the ordinary course of its operation,
requires the application of information, or a process or a treatment, with the authority
of the copyright owner, to gain access to the work.” 17 U.S.C. § 1201(a)(3)(B).
Plaintiffs use Content Scramble System technology (“CSS”), among other
technologies2, in order to prevent unauthorized access to the content on DVDs.
(Schumann Decl. ¶¶ 20, 27). “CSS is a technological measure that effectively
controls access to copyrighted works, namely, copyrighted DVD content.”
Realnetworks, Inc. v. DVD Copy Control Ass'n, 641 F. Supp. 2d 913, 933 (N.D. Cal.
2009).
Plaintiffs contend that VidAngel circumvents the technological protection
measures on Plaintiffs DVDs. The DMCA specifies that “to ‘circumvent a
technological measure’ means to descramble a scrambled work, to decrypt an
encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a
technological measure, without the authority of the copyright owner.” 17 U.S.C. §
1201(a)(3)(A). VidAngel admits that it “uses a commercially available software
program to automatically allow read-access for the purpose of mounting the DVD
[and Blu-ray] files for uploading onto a computer, in the process removing restrictions
on DVD [and Blu-ray] encryption.” (Dkt. No. 77, ¶ 120(b)). VidAngel argues that
this activity doesn’t amount to circumvention because they are only decrypting DVDs
to allow them to be viewed in another way, a procedure known as re-formatting or
“space shifting.” (Oppo at 17.) VidAngel asserts that the practice of “space-shifting”
is legal when it is performed for disc purchasers who elect to have their DVD content
streamed to them rather than receiving the physical discs. (Id.) The Court finds no
support for VidAngel’s position.
Multiple courts have declined to adopt an exemption for space-shifting. In 321
Studios v. MGM Studios, Inc., 307 F. Supp. 2d 1085, 1096 (N.D. Cal. 2004), the court
held that the purchase of a DVD does not give to the purchaser the authority of the
copyright holder to decrypt CSS. The court in 321 Studios cited a Second Circuit
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The TPMs that protect Plaintiffs’ content on DVDs and Blu-ray discs include the CSS (for DVDs) and the
Advanced Access Content System (“AACS”) and/or BD+ (for Blu-ray discs). (Compl. ¶ 32.)

ER006

6.

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decision that directly addressed issues of DVD copying and the DMCA. In Universal
City Studios v. Corley, 273 F.3d 429, 444 (2d Cir. 2001), the defendants argued "that
an individual who buys a DVD has the 'authority of the copyright owner' to view the
DVD, and therefore is exempted from the DMCA pursuant to subsection
1201(a)(3)(A) when the buyer circumvents an encryption technology in order to view
the DVD on a competing platform." The court responded that Section 1201(a)(3)(A)
only exempts from liability those “who would 'decrypt' an encrypted DVD with the
authority of a copyright owner, not those who would 'view' a DVD with the authority
of a copyright owner." Id. The purchase of a DVD only conveys the authority to
view the DVD, not to decrypt it.3 VidAngel has not offered any evidence that the
Plaintiffs have either explicitly or implicitly authorized DVD buyers to circumvent
encryption technology in order to view the DVD on a different platform such as
VidAngel’s streaming service.
The Librarian of Congress, and the Register of Copyrights, also recently
declined to adopt an exemption that would allow circumvention of access controls on
lawfully made and acquired audiovisual works for the purpose of noncommercial
space-shifting or format-shifting. Exemption to Prohibition on Circumvention of
Copyright Protection Systems for Access Control Technologies, 80 Fed. Reg. 65944
(Oct. 28, 2015) (to be codified at 37 C.F.R. pt. 201).
VidAngel also argues that the Family Home Movie Act of 2005 (“FMA”)
provides an exemption for decrypting DVDs for the purpose of accessing a disk to
filter audio and visual content. VidAngel asserts that the provisions of the FMA
render their circumvention lawful because “the making of a decrypted copy [is] the
necessary first step in making a lawfully purchased DVD capable of being filtered.”
(Dkt. 11 ¶ 61.) (Counter-Complaint). The FMA, codified in 17 U.S.C. § 110(11),
specifically carves out an exemption from copyright infringement for:

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“the making imperceptible, by or at the direction of a member of a
private household, of limited portions of audio or video content of a
motion picture, during a performance in or transmitted to that household
for private home viewing, from an authorized copy of the motion picture,
or the creation or provision of a computer program or other technology
that enables such making imperceptible and that is designed and

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3

VidAngel asserts that former Solicitor General Don Verrilli, “while representing the major record labels and
movie studios” in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, 545 U.S. 913 (2005), assured the Supreme
Court that his clients agreed that space shifting is legal. (Oppo. at 17.) (emphasis added). However, Don
Verrilli specifically stated that “The record companies, my clients, have said, for some time now…that it's
perfectly lawful to take a CD that you've purchased, upload it onto your computer, put it onto your iPod.
(RJN Ex. B at 53. (Tr. of MGM v. Grokster Oral Argument at 12.)) (emphasis added). This statement did not
involve movie studios, nor did it address space-shifting in the context of copying DVDs.

ER007

7.

Case 2:16-cv-04109-AB-PLA Document 144 Filed 12/12/16 Page 8 of 22 Page ID #:4898

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marketed to be used, at the direction of a member of a private household,
for such making imperceptible, if no fixed copy of the altered version of
the motion picture is created by such computer program or other
technology”

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17 U.S.C. § 110(11). Neither the plain language nor the legislative history of the
FMA support VidAngel’s position. In fact, the legislative history directly contradicts
VidAngel’s assertion that the FMA provides an exemption to the anti-circumvention
provisions of the DMCA. Senator Orrin Hatch, who introduced the FMA to the U.S.
Senate, stated that the FMA “does not provide any exemption from the anticircumvention provisions of section 1201 of title 17.” 150 Cong. Rec. S.11852-01 at
S11853 (Statement of Senator Hatch) (RJN Ex. G at 269).4 Senator Hatch further
stated that “It would not be a defense to a claim of violation of section 1201 that the
circumvention is for the purpose of engaging in the conduct covered by this new
exemption in section 110(11).” Id.
Finally, VidAngel states that in MDY Indus., LLC v. Blizzard Entm't, Inc., 629
F.3d 928, 951 (9th Cir. 2010) the Ninth Circuit court expressly cautioned against
DMCA application when, as here, antitrust issues are present. (Oppo at 18.) A close
reading of the MDY Indus. decision shows that the court actually declined to consider
the interplay between the anti-circumvention right and antitrust. MDY Indus., 629
F.3d at 950. The court advised that they would consider this issue “If a § 1201(a)(2)
defendant in a future case claims that a plaintiff is attempting to enforce its DMCA
anti-circumvention right in a manner that violates antitrust law.” VidAngel is not
alleged to have violated § 1201(a)(2) of the DMCA, which prohibits trafficking in
circumvention technology, and thus is not the type of defendant contemplated by the
court in MDY Indus. VidAngel’s remaining arguments also fail.5
For the foregoing reasons, Plaintiffs have shown a strong likelihood of success
on the merits of their claim that VidAngel has violated, and continues to violate,
section 1201(a)(1)(A) of the Digital Millenium Copyright Act by circumventing
technological measures that effectively control access to Plaintiffs’ copyrighted works
on DVDs and Blu-ray discs.

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Because legislative history is a matter of public record, which is not subject to reasonable dispute, the court
will take judicial notice of this item. See FED.R.EVID. 201(b). See also Palmer v. Stassinos, 348 F.Supp.2d
1070, 1077 (C.D. Cal. 2004) (taking judicial notice of legislative history materials…because they "constitute
judicial facts sufficiently capable of accurate and ready determination.")
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VidAngel makes a very brief assertion that the remedies section of the DMCA makes clear that to redress
violations, courts “may not impose a prior restraint on free speech,” 17 U.S.C. § 1203(b)(1). (Oppo. at 18.)
VidAngel has not sufficiently briefed this issue nor otherwise argued it before the court. Therefore the Court
will not reach this argument.

ER008

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ii. Plaintiffs’ Copyright Infringement Claims
Plaintiffs must satisfy two requirements to present a prima facie case of direct
infringement: (1) they must show ownership of the allegedly infringed material and
(2) they must demonstrate that the alleged infringers violate at least one exclusive
right granted to copyright holders under 17 U.S.C. § 106. Plaintiffs have sufficiently
demonstrated ownership of the copyrighted works identified in the complaint by
providing certificates of registration issued by the Copyright Office. (Klaus Decl.
Exs. A-RR.) A certificate of registration is "prima facie evidence of the validity of the
copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). VidAngel has
not disputed that it currently offers all of the works listed in Exhibit A to the
complaint and states that it will continue to offer these works and other future
releases, unless enjoined. (Ehler Decl. Ex. EE at Tr. 27:19-29:14; 30:3-20; 31:637:4.) VidAngel also does not dispute the validity of Plaintiffs' copyrights.
Therefore, the only factor at issue in this case is whether Defendants have violated at
least one exclusive right granted to Plaintiffs as copyright holders.

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1. VidAngel Violates Plaintiffs’ Exclusive Right To
Reproduce Their Works By Making Copies

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One of the rights granted by Section 106 of the Copyright Act is the exclusive
right "to reproduce the copyrighted work in copies." 17 U.S.C. § 106(1). VidAngel
admits to making copies of Plaintiffs’ works onto a computer system and third-party
servers. (Ehler Decl. Ex. EE at Tr. 58:1-4.) The Ninth Circuit in MAI Sys. Corp. v.
Peak Computer, Inc., 991 F.2d 511, 518 (9th Cir. 1993) stated that transferring digital
work “from a permanent storage device to a computer’s RAM [or storage]” infringes
the reproduction right.” Although, the MAI Sys. Corp. decision addressed the
infringement of computer software, the same analysis applies to the digital transfer
other types of copyrighted work. Tiffany Design, Inc. v. Reno-Tahoe Specialty, Inc.
55 F. Supp. 2d 1113, 1121 (D. Nev. 1999)(“ the digitization or input of any
copyrighted material, whether it be computer code or visual imagery, may support a
finding of infringement notwithstanding only the briefest of existence in a computer's
RAM.”)
VidAngel claims that their copies of Plaintiffs’ works are only “intermediate”
copies and not “copies” as defined by the Copyright Act. VidAngel’s process of
copying involves several steps. First, VidAngel decrypts the DVDs. (Oppo. at 17.)
After decryption, VidAngel creates “intermediate” files. (Id.) VidAngel tags the files
for over 80 types of content, and breaks them into approximately 1,300 fragments that
contain no more than 10 seconds of content, then encrypts those fragments, and stores
them in a secure, access-controlled location in the cloud. (Meldal Dec., ¶¶ 33-38.)

ER009

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VidAngel asserts that these fragments are not capable of being watched until
“VidAngel software assembles the segments in sequence, and for each segment
decrypts the content, displays it and then discards the segment.” (Meldal Dec., ¶
37(xiii)).
VidAngel contends that case law regarding the reproduction right under §
106(1) draws a clear distinction between unlawful copies, which can be viewed by
consumers, and lawful “intermediate” copies, which cannot be viewed. (Oppo. at 10.)
VidAngel argues that since their intermediate copies are unable to be viewed by
consumers, they are not “copies” as defined by the Copyright Act and, as a matter of
law, do not give rise to infringement claims. (Id.) Defendants cite the Ninth Circuit’s
decision in Sega Enters. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) as support
for their proposition that “intermediate” copying does not violate the Copyright Act.
However, the court in Sega stated that “on its face, the language of 17 U.S.C. § 106(1)
unambiguously encompasses and proscribes ‘intermediate copying’” Id. at 1518. 17
U.S.C. § 101 provides that “in order to constitute a "copy" for purposes of the
Copyright Act, the allegedly infringing work must be fixed in some tangible form,
"from which the work can be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device." (emphasis added). VidAngel’s
fragmented copies may not be able to be perceived directly by consumers, however
they are able to be perceived with the aid of VidAngel’s software. Thus the copying
performed by Defendants falls within the category of acts that are proscribed by the
statute.

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2. VidAngel Violates Plaintiffs’ Exclusive Right To Publicly
Perform Their Copyrighted Works

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Another of the rights granted by Section 106 of the Copyright Act is the
exclusive right "in the case of . . . motion pictures and other audiovisual works, to
perform the copyrighted work publicly." 17 U.S.C. § 106(4). What constitutes a
public performance for purposes of Section 106(4) is defined by the Copyright Act in
Section 101. “Under Section 101(2), the "transmit" clause, a performance is public if
someone: transmits or otherwise communicates a performance or display of the
work…to the public, by means of any device or process.” Warner Bros. Entm't, Inc.
v. WTV Sys., 824 F. Supp. 2d 1003, 1009 (C.D. Cal. 2011). A transmission is made
“to the public” if “the relationship between …the transmitter of the performance, and
the audience…is a commercial, ‘public’ relationship regardless of where the viewing
takes place.” Id. at 1010;
Plaintiffs assert that services like VidAngel’s violate the public performance
right, despite the fact that the performances are transmitted privately for in home

ER010

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viewing. The court in On Command Video Corporation v. Columbia Pictures
Industries, 777 F. Supp. 787 (N.D. Cal. 1991), held that a hotel’s “electronic rental”
system infringed the public performance right, despite the fact that the hotel’s service
transmitted performances from the main office to individual hotel rooms. The court
held that the “relationship between the transmitter of the performance…and the
audience,” was “a commercial, ‘public’ one regardless of where the viewing takes
place.” Id. at 788. Likewise, the court in Warner Bros. Entertainment Inc. v. WTV
Systems, Inc., held that a service which streamed the contents of DVDs from DVD
players purportedly assigned to individual users also violated the public performance
right. 824 F. Supp. 2d at 1006-07, 1010. The Supreme Court in Am. Broad. Cos. v.
Aereo, Inc., 134 S. Ct. 2498 (2014) (“Aereo”.), held that internet streaming of
copyrighted material captured from over-the-air broadcast signals by thousands of
separate antennae, each of which was purportedly assigned separately to individual
subscribers, infringed the public performance right.
VidAngel argues that their service does not engage in public performances
because VidAngel streams filtered versions of motion pictures created at the direction
of and owned by its customers. (Oppo. at 11.) VidAngel cites the Aereo decision as
support. There, the Supreme Court declared that a transmission of a copyrighted
program is not made to “the public” when it is made “to those who act as owners or
possessors of the relevant product.” Am. Broad. Cos. v. Aereo, Inc., 134 S. Ct. at
2510. Assuming arguendo that VidAngel’s buy/sellback service creates a valid
ownership interest in a DVD, this ownership would only apply to the physical DVD,
not the digital content that VidAngel streams to paying subscribers. Subscribers view
a stream from a master copy stored on a server, not a DVD temporarily “owned” by
the user. Furthermore, lawful ownership of a DVD only conveys authorization to
view the DVD, not to decrypt it for the purpose of viewing it on an alternative
platform. See discussion supra Section III.A.i. Therefore, VidAngel’s customers are
not lawful “owners or possessors” of the digital content that is streamed via
VidAngel’s service. Finally, VidAngel’s argument that Aereo holds that the public
performance right is not infringed when the user pays for something other than the
transmission of copyrighted works, is unsupported. (Oppo. at 11.) In Aereo, the
Supreme Court specifically stated that they had “not considered whether the public
performance right is infringed when the user of a service pays primarily for something
other than the transmission of copyrighted works.” For the foregoing reasons, the
Court holds that Plaintiffs have shown a strong likelihood of success on the merits of
their claims that VidAngel has violated, and continues to violate, 17 U.S.C. § 106(1)
and 17 U.S.C. § 106(4), by creating copies of Plaintiff’s copyrighted material, and
publicly performing Plaintiff’s copyrighted material.

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ER011

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3. VidAngel’s FMA Defense for Copyright Infringement
The Family Home Movie Act is codified in 17 U.S.C § 110(11). It provides an
exemption from copyright infringement for:

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the making imperceptible, by or at the direction of a member of a private
household, of limited portions of audio or video content of a motion
picture, during a performance in or transmitted to that household for
private home viewing, from an authorized copy of the motion picture, or
the creation or provision of a computer program or other technology that
enables such making imperceptible and that is designed and marketed to
be used, at the direction of a member of a private household, for such
making imperceptible, if no fixed copy of the altered version of the
motion picture is created by such computer program or other technology.

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Plaintiffs assert, and the Court agrees that the FMA exempts only (1) “the making
imperceptible” of limited portions of a motion picture; and (2) “the creation or
provision of a computer program or other technology that enables such making
imperceptible.” 17 U.S.C § 110(11). VidAngel’s contends that the FMA expressly
provides that a third party may filter and transmit content as specified by a lawful
owner of a copy so long as a fixed copy of the altered content is not created.
However, this assertion is unsupported by the clear language of the statute. (Oppo. at
12.) The statute clearly requires that a performance or transmission of filtered
content must come from an “authorized copy” of the motion picture. The digital
content that VidAngel streams to its customers is not from an authorized copy.
VidAngel streams from a digital copy that it acquires by circumventing technological
protection measures on Plaintiff’s DVDs in violation of § 1201(a) of the DMCA. See
discussion supra Sections III.A.i, III.A.ii.2. Furthermore, the requirement that the
filtered content come “from an authorized copy” is a clear indication that the FMA is
not intended to displace a copyright holder’s exclusive reproduction right under
section 106(1) of the Copyright Act. The last sentence of the FMA also provides that:
“Nothing in paragraph (11) shall be construed to imply further rights under section
106 of this title, or to have any effect on defenses or limitations on rights granted
under any other section of this title or under any other paragraph of this section.” 17
U.S.C § 110(11). This language directly contradicts VidAngel’s argument that a
filtering service that complies with the FMA, need not satisfy any other provisions of
the Copyright Act. (Oppo. at 15.) The evidence in the record and the unambiguous
language of the FMA show that (1) VidAngel’s service does not comply with the
express language of the FMA, and (2) The FMA does not provide a defense to
VidAngel’s violations of sections 106(1) and 106(4) of the Copyright Act.

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ER012

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iii. VidAngel’s “Fair Use” Defense
VidAngel asserts that they are making "fair use" of the copyrighted works as
provided in 17 U.S.C. § 107 of the Copyright Act. The pertinent language of that
section reads as follows:

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Notwithstanding the provisions of sections 106 and 106A, the fair
use of a copyrighted work, including such use by reproduction in copies
or phonorecords or by any other means specified by that section, for
purposes such as criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or research, is not an
infringement of a copyright. In determining whether the use made of a
work in any particular case is a fair use the factors to be considered shall
include:

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(1) the purpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educational purposes;

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(2) the nature of the copyrighted work;

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(3) the amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and

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(4) the effect of the use upon the potential market for or value of the
copyrighted work.

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1. Purpose and Character of the Use.

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The “purpose and character of use" factor in the fair use inquiry asks "to what
extent the new work is transformative" and does not simply "supplant" the original
work and whether the work's purpose was for or not-for-profit. Mattel Inc. v. Walking
Mt. Prods., 353 F.3d 792, (9th Cir. 2003) (citing Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 579 (1994)). VidAngel does not dispute that they profit from the use of
Plaintiffs’ works. Commercial use of copyrighted material is "presumptively an
unfair exploitation of the monopoly privilege that belongs to the owner of the
copyright.” Leadsinger, Inc. v. BMG Music Publ'g, 512 F.3d 522, 545 (9th Cir. 2008)
(citing Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984)).

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VidAngel argues that their filtering service is transformative in that it alters the
content of the works as seen by different viewers in different ways. (Oppo. at 20.)
The Supreme Court has said that a use is transformative if it "adds something new,

ER013

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with a further purpose or different character, altering the first with new expression,
meaning or message." Campbell, 510 U.S. at 579. VidAngel’s service does not add
anything to Plaintiff’s works. It simply omits portions that viewers find objectionable.
The court in Clean Flicks of Colo. v. LLC v. Soderbergh, 433 F. Supp. 2d 1236 (D.
Colo. 2006), rejected a fair use defense from defendants that provided a service which
is similar to that of VidAngel. In Clean Flicks, the court ruled that defendants’ editing
of objectionable content was not transformative because it added nothing to the
copyrighted works, and only removed “a small percentage of most of the films.” Id. at
1241. Furthermore, the Ninth Circuit has held that works are transformative when
“the works use copy-righted material for purposes distinct from the purpose of the
original material.” Elvis Presley Enters. v. Passport Video, 349 F.3d 622, 629 (9th
Cir. 2003). Notwithstanding the edits made by users, VidAngel’s use of plaintiff’s
works serves the “same intrinsic entertainment value that is protected by Plaintiffs'
copyrights”, and is thus not transformative. Id. VidAngel’s commercial use of the
copyrighted works, coupled with non-transformative nature of the edited copies weigh
heavily in favor of the Plaintiffs under the first statutory factor in the fair use analysis.

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2. Nature of the Copyrighted Work

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“The second statutory factor, ‘the nature of the copyrighted work,’ § 107(2),
draws on Justice Story's expression, the ‘value of the materials used.’” Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 586 (1994) (citing Folsom v. Marsh, 9 F. Cas.
342, 348 (C.C.D. Mass. 1841)) “This factor calls for recognition that some works are
closer to the core of intended copyright protection than others, with the consequence
that fair use is more difficult to establish when the former works are copied.”
Campbell, 510 U.S. at 586. For example, the Ninth Circuit has held that “works such
as original songs, motion pictures, and photographs taken for aesthetic purposes, are
creative in nature and thus fit squarely within the core of copyright protection.” Elvis
Presley Enters. v. Passport Video, 349 F.3d 622, 629 (9th Cir. 2003) (citing Sony
Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984)). This factor also weighs in
favor of the Plaintiffs.

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3. Amount and Substantiality of the Portion Used in
Relation to the Copyrighted Work as a Whole

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The third factor in the fair use analysis evaluates both the quantity of the work
taken and the quality and importance of the portion taken. Campbell, 510 U.S. at 586.
“This factor calls for thought not only about the quantity of the materials used, but
about their quality and importance, too.” Id. at 577. The evidence in this case shows
that VidAngel copies Plaintiff’s works in their entirety. (Ehler Decl. Ex. EE at Tr.
112:19-113:2.) The Supreme Court in Campbell advised that the verbatim copying of

ER014

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"a substantial portion of the infringing work" is a relevant inquiry in the fair use
analysis. Id. at 588. VidAngel does not dispute that they copy a substantial portion of
the Plaintiff’s copyrighted works. Instead VidAngel simply states that their viewers
never watch exact copies of the original films, due to the requirement that each user
must apply at least one filter. Defendants also assert that the filtered versions of the
movies are not substitutes for the Plaintiff’s works. However, the Supreme Court in
Campbell held that “a work composed primarily of an original, particularly its heart,
with little added or changed, is more likely to be a merely superseding use, fulfilling
demand for the original. Id. The heart of a copyrighted work is the portion that is the
"most likely to be newsworthy and important in licensing serialization." Campbell,
510 U.S. at 586. Despite the fact that VidAngel’s service omits portions of each
work, the essential storyline, cinematography, and acting portrayals remain
unchanged. These elements are the heart of the movie. Courts consistently find that
the performance of the “heart” of a copyrighted work weighs against a fair use
determination. See Campbell, 510 U.S. at 586; Elvis Presley Enters., 349 F.3d at 630;
L.A. News Serv. v. Tullo, 973 F.2d 791, 798 (9th Cir. 1992). Arista Records LLC v.
Myxer Inc., 2011 U.S. Dist. LEXIS 109668 (C.D. Cal. Apr. 1, 2011). Accordingly,
the Court finds that this factor weighs in favor of the Plaintiffs.
4. Effect of the Use Upon the Potential Market For or
Value of the Copyrighted Work

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The fourth factor in the fair use analysis considers current market harm and
‘“whether unrestricted and widespread conduct of the sort engaged in by the defendant
. . . would result in a substantially adverse impact on the potential market’ for the
original.” Campbell, 510 U.S. at 590 (citations omitted). As discussed above,
Plaintiff’s use of Plaintiff’s copyrighted works is commercial and non-transformative.
The Ninth Circuit has held that when "the intended use is for commercial gain," the
likelihood of market harm "may be presumed." Leadsinger, Inc. v. BMG Music
Publ'g, 512 F.3d 522, 531. (9th Cir. Cal. 2008).
VidAngel argues that their service does not harm the market for Plaintiff’s
copyrighted works because filtered movies are not a substitute for Plaintiff’s
unfiltered movies. (Oppo. at 21.) VidAngel also asserts that their filtering service
actually increases the market for Disney’s works. (Id.) VidAngel attempts to support
their arguments by offering customer survey results that indicate that over 51% of
VidAngel customers would not watch their offerings without filtering. The survey
results are ultimately detrimental to VidAngel’s arguments. The fact that 49% of
VidAngel’s customers would view movies without filters shows that VidAngel’s
service does serve as an effective substitute for Plaintiff’s unfiltered works, for
approximately half of VidAngels users. Furthermore, the fact that VidAngel’s

ER015

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streams are “composed primarily” of Plaintiff’s works, including the heart of the
work, “with little added or changed” makes the streams “more likely to be a merely
superseding use, fulfilling demand for the original.” Campbell, 510 U.S. at 586.
Therefore, the Court finds that this factor also weighs in favor of the Plaintiffs.
At trial, the defendant in an infringement action bears the burden of proving fair
use. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994). “Because
‘the burdens at the preliminary injunction stage track the burdens at trial,’ once the
moving party has carried its burden of showing a likelihood of success on the merits,
the burden shifts to the nonmoving party to show a likelihood that its affirmative
defense will succeed.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1158 (9th
Cir. 2007) (citing Gonzales v. O Centro Espirita Beneficente Uniao do Vegetal, 546
U.S. 418, 429 (2006). Plaintiffs have shown a likelihood of success on their DMCA
and Copyright Infringement claims, therefore VidAngel bears the burden of showing
that they are making fair use of the Plaintiffs Copyrighted works. Based on the
analysis of the aforementioned factors, the Court finds that VidAngel has not met this
burden.

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b. Plaintiffs Have Demonstrated A Likelihood of Imminent Irreparable
Injury.

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Following the Supreme Court’s decisions in eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388 (2006), and Winter v. Natural Resources Defense Council, 555
U.S. 7 (2006), the Ninth Circuit concluded that it is no longer appropriate to apply a
presumption of irreparable harm in trademark and copyright cases. See, e.g., Herb
Reed Enters., LLC v. Fla. Entm't Mgmt., 736 F.3d 1239, 1249 (9th Cir. 2013)
("Following eBay and Winter, we held that likely irreparable harm must be
demonstrated to obtain a preliminary injunction in a copyright infringement case. . . .”
It is not enough, moreover, that the claimed harm be irreparable; it must be imminent
as well. Caribbean Marine Servs. Co., Inc. v. Baldrige, 844 F.2d 668, 674 (9th Cir.
1988); see also Amylin Pharmaceuticals, Inc. v. Eli Lilly and Co., 456 Fed. Appx.
676, 679 (9th Cir. Cal. 2011) ("[E]stablishing a threat of irreparable harm in the
indefinite future is not enough"). Speculative injury does not constitute irreparable
injury sufficient to warrant granting a preliminary injunction. Caribbean Marine
Servs., 844 F.2d at 674 (citing Goldie's Bookstore, Inc. v. Superior Court, 739 F.2d
466, 472 (9th Cir. 1984)). Applying these standards, a party seeking injunctive relief
must adduce evidence of likely irreparable harm and may not rely on "unsupported
and conclusory statements regarding harm [the plaintiff] might suffer." Herb Reed
Enterprises, 736 F.3d at 1250. “Those seeking injunctive relief must proffer evidence

ER016

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sufficient to establish a likelihood of irreparable harm." Id. at 1251.
Plaintiffs argue that they will suffer irreparable harm in the absence of a
preliminary injunction. First, Plaintiffs argue that VidAngel’s service interferes with
their basic right to control how, when and through which channels consumers can
view their copyrighted works. (Mot. at 27.) Where defendants operate an “infringing
service without the normal licensing restrictions imposed by Plaintiffs, [it] interfere[s]
with Plaintiffs’ ability to control the use and transmission of their Copyrighted works,
thereby, causing irreparable injury.” Warner Bros. Entm't, Inc. v. WTV Sys., 824 F.
Supp. 2d 1003, 1012 (C.D. Cal. 2011). Plaintiffs’ provided a declaration from Tedd
Cittadine, Senior Vice President of Digital Distribution at 20th Century Fox Home
Entertainment. Cittadine testified that Plaintiffs’ exclusive rights under copyright are
critical to providing Plaintiffs the opportunity to earn a return on their substantial
investments. (Cittadine Decl. ¶¶ 7-8.) Plaintiffs exercise their rights through
agreements with authorized distributors. Some licenses grant the licensee an
exclusive time window for performing a title. (Id. ¶ 15.) The price for such a license
is based, in part, on the promise and scope of exclusivity. (Id.) Plaintiffs often
negotiate higher licensing fees in exchange for granting a licensee the exclusive right
to perform a movie or television show during a particular time period. (Id.) Because
VidAngel operates without any license and performs Plaintiffs’ works during
negotiated exclusivity periods it interferes with Plaintiffs’ exercise of their exclusive
rights and frustrates Plaintiffs’ ability to negotiate for similar rights in the future. (Id.
¶¶ 17, 36.)6
Second, Plaintiffs argue that VidAngel threatens harm to Plaintiffs’
relationships and goodwill with authorized distributors by undermining their ability to
provide licensed offerings. (Mot. at 28.) Plaintiffs assert that this harm continues to
grow as VidAngel adds more users and encourages them to stream through VidAngel
rather than a licensed service. Plaintiffs assert that this poses a threat to the businesses
of Plaintiffs’ legitimate licensees and, in turn, to Plaintiffs’ relationships with them
and the goodwill Plaintiffs have worked to create. (Cittadine Decl. ¶¶ 18-22.) Tedd
Cittadine states that Plaintiffs’ clients worry about unlicensed services in the market
that compete with their business on unfair terms. (Id. ¶ 19.) He also states that
licensees have complained in partnership meetings, and especially in negotiations, that
it is difficult to compete with services like VidAngel who do not act pursuant to
licensing restrictions. (Id.) Cittadine states that licensees specifically complain that it
is difficult to compete with unlicensed services’ low-cost offerings. (Id.)

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Cittadine declared that at the time of his declaration VidAngel was offering (at least) two of
Plaintiffs’ works—The Martian and Brooklyn—during periods these works are exclusive to an
authorized licensee, HBO. (Cittadine Decl. ¶ 30.)

ER017

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VidAngel argues that Plaintiff’s alleged harms are speculative and that there is
no evidence of actual harm to Plaintiffs other than the declaration of Tedd Cittadine.
(Oppo. at 27.) In Fox TV Stations, Inc. v. FilmOn X LLC, 966 F. Supp. 2d 30 (D.D.C.
2013), the court considered a similar argument in an analogous case. There, the
defendants, like VidAngel, operated an unlicensed service that transmitted the
plaintiff’s copyrighted performances over the internet. The plaintiffs argued that
defendant’s service caused several types of irreparable harm including “undermining
Plaintiff’s positions in negotiations” and damaging “Plaintiff’s goodwill with their
licensees.” Id. at 49. The defendants argued that plaintiff’s alleged harms were
“insufficiently speculative and ‘unsupported by any evidence.’” Id. at 50. The court
found that Plaintiffs had sufficiently supported their alleged harms “with evidence that
Defendant had not controverted, including a sworn declaration from a senior executive
who states that cable companies have already referenced businesses like [Defendant’s
business] in seeking to negotiate lower fees.” Id. Similarly, in ABC v. AEREO, Inc.,
874 F. Supp. 2d 373, (S.D.N.Y. 2012) the court held that harm to a plaintiff’s
negotiating position was not speculative where senior executives had provided sworn
statements indicating that licensees had expressed concerns about unlicensed service
providers in negotiations. (Id. at 388-89). Here, the Plaintiffs have provided
uncontroverted evidence that VidAngel operates their service without a license, and
offers Plaintiff’s works during exclusivity periods that Plaintiff negotiated with
licensees. Furthermore, Plaintiffs have offered Tedd Cittadine’s sworn declaration
stating that unlicensed services like VidAngel’s had been specifically referenced as a
concern during negotiation meetings with licensees. The Court finds that this is a
sufficient showing that VidAngel’s service undermines Plaintiffs negotiating position
with licensees and also damages goodwill with licensees.
VidAngel also contends that any damage their service might cause to Plaintiffs
is economic in nature and thus doesn’t qualify as irreparable harm. (Oppo. at 28-29.)
However, harm to one’s negotiating position and/or goodwill with licensees is
difficult to quantify. In Fox Television Stations, Inc. v. BarryDriller Content Sys.,
PLC, 915 F. Supp. 2d 1138, 1147 (C.D. Cal. 2012) the court held that harm to a
plaintiff’s negotiating position was irreparable because it was “neither easily
calculable, nor easily compensable."(quoting Warner Bros. Entm't, Inc. v. WTV Sys.,
824 F. Supp. 2d at 1013)). “And it is well-established that harm to one's reputation,
goodwill, or relationships-all of which may result from future copyright infringement
may constitute irreparable harm.” Kelly v. Primco Mgmt., 2015 U.S. Dist. LEXIS
181288 *, 2015 WL 10990368 (C.D. Cal. Jan. 12, 2015); See, e.g., Rent-A-Center,
Inc. v. Canyon Television & Appliance Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991)
(noting that damage to one's reputation or goodwill, because it is difficult to calculate,
qualifies as irreparable harm).

ER018

18.

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VidAngel also asserts that Plaintiff’s delay in filing an injunction belies their
claims of irreparable harm. VidAngel states that they notified the Plaintiffs about
their service with two letters in July and August 2015. (Oppo. at 22.) VidAngel
asserts that these letters described their business model, including the fact that
VidAngel: (1) “purchases the DVD or Blu-ray disc for the customer and stores it in a
physical vault;” (2) “streams” the contents of the disc to the customer in a filtered
format chosen by the customer; and (3) then “re-purchase[s] the disc at a discount
from the sale price. . .based on the length of time the customer has owned the disc.”
(Id.) VidAngel added that it had grown from 43 to 4848 users in just under six
months. (Id.) Plaintiffs filed for a preliminary injunction on August 22, 2016. (Dkt.
No. 27.) VidAngel contends that Plaintiff’s delay of more than one year before
requesting a preliminary injunction is inconsistent with a claim of irreparable harm.

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Courts have held that “long delay before seeking a preliminary injunction
implies a lack of urgency and irreparable harm.” Oakland Trib., Inc. v. Chron. Pub.
Co., 762 F.2d 1374, 1377 (9th Cir. 1985). However, “delay is but a single factor to
consider in evaluating irreparable injury” and “courts are ‘loath to withhold relief
solely on that ground.’” Arc of Cal. v. Douglas, 757 F.3d 975, 990 (9th Cir. 2014)
(citing Lydo Enters., Inc. v. City of Las Vegas, 745 F.2d 1211, 1214 (9th Cir. 1984)).
Furthermore, “tardiness is not particularly probative in the context of ongoing,
worsening injuries.”

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Plaintiffs assert that when they first learned of VidAngel, it was in “limited
beta” and had fewer than 5,000 users—which would not lead legitimate streaming
licensees to “notice (let alone complain).” (Cittadine Decl. ¶¶ 35-36.) Plaintiffs state
that they monitored VidAngel and investigated their claims, and once VidAngel
started marketing itself more aggressively, expanded its content offering, and posed a
more significant threat of harm, Plaintiffs filed this action and sought a preliminary
injunction. Id. In, ABC v. AEREO, Inc., the court found no undue delay under
analogous circumstances. There, the plaintiffs “were aware of [the service’s]
existence for roughly a full year before seeking [an] injunction,” 874 F. Supp. 2d at
401. The court ruled that the plaintiffs’ delay, which was “based on the limited
availability of Aereo's service, its status in beta testing, and the prospect that litigation
was unnecessary until it became clear that Aereo posed a viable threat of harm,” was
reasonable and did not suggest that plaintiff’s harms were reparable. Id. Additionally,
VidAngel admits it intends to continue to stream Plaintiff’s works and add other
future releases, unless enjoined. (Ehler Decl. Ex. EE at Tr. 27:19-29:14; 30:3-20;
31:6-37:4.) Plaintiffs’ delay in seeking an injunction was reasonable under the
circumstances, their alleged irreparable harms are ongoing, and will likely only
increase absent an injunction.

ER019

19.

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Based on the foregoing, the Court holds that Plaintiffs have sufficiently shown
that they will suffer irreparable harm in the absence of an injunction.
c. Balance of Hardships Weighs in Favor of the Plaintiffs

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An injunction may not issue unless the balance of hardships tips sharply in
favor of the moving party. International Jensen, Inc. v. Metrosound U.S.A., Inc., 4
F.3d 819, 822 (9th Cir. 1993). In this case, Plaintiffs have demonstrated that the
balance of hardships tips sharply in their favor. Defendants claim that an injunction
would cause them to suffer an unimaginable financial hardship. However, the Ninth
Circuit has held that “[Defendants] cannot complain of the harm that will befall it
when properly forced to desist from its infringing activities." Triad Sys. Corp. v.
Southeastern Express Co., 64 F.3d 1330, 1338 (9th Cir. 1995). “Where the only
hardship that the defendant will suffer is lost profits from an activity which has been
shown likely to be infringing, such an argument in defense 'merits little equitable
consideration [on an appeal from a preliminary injunction].'" Id. (citing Concrete
Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 612 (1st Cir. 1988);
accord Apple Computer, Inc. v. Formula Int'l, Inc., 725 F.2d 521, 523 (9th Cir. 1984)
(in motion for preliminary injunction, district court should not consider the
"devastating effect" of the injunction on the infringer's business.)
Accordingly, the Court concludes that the balance of hardships tips sharply in
favor of Plaintiffs.

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d. A Preliminary Injunction is in the Public Interest

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VidAngel argues that the public interest in protecting every person’s right to
watch filtered content in private would be severely undercut by the issuance of a
preliminary injunction. This argument strongly relies on VidAngel’s characterization
of its service as the only filtering service under the FMA that supports streaming
digital content to mobile devices, tablets, and Smart TV’s. However, the evidence in
the record shows that another filtering service, ClearPlay, offers filtering to Google
Play users who access authorized streams from GooglePlay’s licensed service.
(Bennett Decl. Ex. A. at 5-6.) An injunction in this case would not prevent VidAngel
or any other company from providing a filtering service similar to ClearPlay’s, and
thus wouldn’t negatively impact the public interest in watching filtered content in
private.

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On the other hand, "it is virtually axiomatic that the public interest can only be

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ER020

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served by upholding copyright protections and correspondingly, preventing the
misappropriation of skills, creative energies, and resources which are invested in the
protected work." Warner Bros. Entm't, Inc. v. WTV Sys., 824 F. Supp. 2d 1003, 1015
(C.D. Cal. 2011) (citing Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d
1240, 1255 (3rd Cir. 1983)). Accordingly, the Court concludes that a preliminary
injunction is in the public interest.
IV.

AMOUNT OF SECURITY

Federal Rule of Civil Procedure 65(c) provides that "[t]he court may issue a
preliminary injunction or a temporary restraining order only if the movant gives
security in an amount that the court considers proper to pay the costs and damages
sustained by any party found to have been wrongfully enjoined or restrained." The
Ninth Circuit has recognized that Rule 65(c) invests the district court "with discretion
as to the amount of security required, if any." Barahona-Gomez v. Reno, 167 F.3d
1228, 1237 (9th Cir. 1999) (citing Doctor's Assoc., Inc. v. Stuart, 85 F.3d 975, 985 (2d
Cir. 1996).
VidAngel asks the court to impose a substantial bond of $50,000,000 because
an injunction threatens to put VidAngel out of business before any resolution on the
merits and would cause it serious financial loss. VidAngel contends that this
substantial bond is required because, “A party that is wrongfully enjoined may be
limited to the amount of the bond as its recovery. Buddy Sys., Inc. v. Exer-Genie, Inc.,
545 F. 2d 1164, 1168 (9th Cir. 1976). However, Defendants also admit that Plaintiffs
are well funded and established giants in the entertainment industry. (Oppo. at 35.)
Plaintiffs have considerable assets to respond in damages if VidAngel is found to have
been wrongfully enjoined.

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Plaintiffs contend that analogous cases have required security bonds well below
$1 million. See, e.g., BarryDriller, 915 F. Supp. 2d at 1149 (rejecting request for $15
million bond in favor of $250,000); Zediva, 824 F. Supp. 2d at 1015 ($50,000);
FilmOn X, 966 F. Supp. 2d at 50 ($150,000). The Court finds no substantial
distinctions between this case and the cases cited by Plaintiffs. Based on the Court's
findings regarding Plaintiffs' likelihood of success on the merits, irreparable harm, the
balance of hardships and public interest, and considering the bond amounts in
analogous cases, the Court finds that a bond in the amount of two hundred and fifty
thousand dollars ($250,000.00) is satisfactory.

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ER021

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V.

CONCLUSION

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For the foregoing reasons, the Court GRANTS Defendant’s Motion for
Preliminary Injunction. (Dkt. No. 27.) Defendants, as well as their officers,
employees, attorneys, and those acting in concert with them are temporarily enjoined
from:

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(1) circumventing technological measures protecting Plaintiffs’
copyrighted works on DVDs, Blu-ray discs, or any other medium;

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(2) copying Plaintiffs’ copyrighted works, including but not limited to
copying the works onto computers or servers;

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(3) streaming, transmitting or otherwise publicly performing or
displaying any of Plaintiffs’ copyrighted works over the Internet (through
such websites as VidAngel.com), via web applications (available through
platforms such as the Windows App Store, Apple’s App Store, the
Amazon App Store, Facebook or Google Play), via portable devices
(such as through applications on devices such as iPhones, iPads, Android
devices, smart phones or tablets), via media streaming devices (such as
Roku, Chromecast or Apple TV), or by means of any other device or
process; or

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(4) engaging in any other activity that violates, directly or indirectly,
Plaintiffs anti-circumvention right under § 1201 of the Copyright Act, 17
U.S.C. §1201(a), or infringing by any means, directly or indirectly,
Plaintiffs’ exclusive rights under § 106 of the Copyright Act, 17 U.S.C. §
106.

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Plaintiff is ordered to post a bond in the amount of $250,000.

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IT IS SO ORDERED.

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Dated: December 12, 2016

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_______________________________________
HONORABLE ANDRÉ BIROTTE JR.
UNITED STATES DISTRICT COURT JUDGE

cc: FISCAL

ER022

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