Order On Motions in Limine in Capitol v. Thomas

Case 0:06-cv-01497-MJD-RLE Document 315 Filed 06/11/2009 Page 1 of 27
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
________________________________________________________________
CAPITOL RECORDS INC.,
a Delaware corporation;
SONY BMG MUSIC ENTERTAINMENT,
a Delaware general partnership;
ARISTA RECORDS LLC,
a Delaware limited liability company;
INTERSCOPE RECORDS,
a California general partnership;
WARNER BROS. RECORDS INC.,
a Delaware corporation; and
UMG RECORDINGS, INC.,
a Delaware corporation;
Plaintiffs,
v. MEMORANDUM OF LAW & ORDER
Civil File No. 06‐1497 (MJD/RLE)
JAMMIE THOMAS‐RASSET,
Defendant.
________________________________________________________________
Andrew B. Mohraz, David A. Tonini, and Timothy M. Reynolds, Holme Roberts
& Owen, LLP; Felicia J. Boyd, Kara L. B. Barrow, and Mary Andreleita Walker,
Faegre & Benson, LLP; and Matthew J. Oppenheim, Oppenheim Group, LLP;
counsel for Plaintiffs.
Joe Sibley and K. A. D. Camara, Camara & Sibley, LLP, and Garrett D.
Blanchfield, Jr., Reinhardt Wendorf & Blanchfield, counsel for Defendant.
________________________________________________________________
1
This matter is before the Court on the parties’ motions in limine. The
Court heard oral argument on these motions on June 10, 2009. Trial is set to
begin on June 15, 2009.
I. Defendant’s Motion to Suppress Evidence [Docket No. 263]
Defendant Jammie Thomas‐Rasset argues that the Court should exclude all
evidence gathered by MediaSentry because it operated in violation of state and
federal laws and because Plaintiffs’ attorneys violated ethical rules through their
involvement with MediaSentry. Because the Court holds that MediaSentry has
not violated any of the asserted state or federal laws, it denies Defendant’s
motion.
A. MediaSentry’s Actions
Peer‐to‐peer networks allow Internet users to connect to each other and
transfer files directly from user to user. (Jacobson Decl. ¶ 2, Pls. Ex. A.) When
files are distributed from one user to another user through a peer‐to‐peer
network, such as Kazaa, a set of identifying information ties the files back to the
user who distributed the files. (Id. ¶ 3.) This information includes the
distributor’s IP address, the name of the file, the size of the file, the content hash,
2
and the port information. (Id.) The user requesting the files communicates the
request that the sharing computer send the files, and the sharing computer then
sends those requested files. (Id. ¶ 5; Connelly Decl. ¶ 2, Pls. Ex. B.) Kazaa does
not allow one user to gain access into or to manipulate the contents of another
user’s computer. (Jacobson Decl. ¶ 5.) It does allow a user to view the contents
of the files that other users placed in the shared folder. (Id.)
The Kazaa interface displays information about each file that is available
in other users’ shared folders. MediaSentry recorded the image for each screen
displayed by Kazaa that lists the available files. It also used Kazaa to download
selected files to its own machine to confirm that the files were copyrighted sound
recordings.
The IP address is transmitted as part of the normal process of connecting
one computer to another over the Internet. (Jacobson Decl. ¶ 6.) When
attempting to identify alleged infringers on peer‐to‐peer networks, MediaSentry
used the same Kazaa network protocols that every other user used to search for
and download files on the network. (Connelly Decl. ¶ 2.) Files were transferred
to MediaSentry by the uploader in the form of data packets, which contained
information identifying the source IP address. (Id.) Through packet capture
3
technology, MediaSentry recorded the interaction between itself and the
computer connected to the file sharing network and distributing the material to
MediaSentry. (Id.; 1 Trial Tr. 185.) MediaSentry captured every packet
transferred, which included the IP address of the source of the packet. (1 Trial Tr.
187‐88.)
B. The Minnesota Private Detectives Act
1. Whether MediaSentry Violated the Act
Defendant alleges that MediaSentry collected evidence against her in
violation of the Minnesota Private Detectives Act, Minn. Stat. § 326.32, et seq.
(“MPDA”). The MPDA provides:
No person shall engage in the business of private detective or
protective agent, or advertise or indicate in any verbal statement or
in written material that the person is so engaged or available to
supply those services, without having first obtained a license as
provided in sections 326.32 to 326.339.
Minn. Stat. § 326.3381, subd. 1. MediaSentry does not hold a private detective
license in Minnesota. (Def. Ex. A.)
Defendant argues that MediaSentry engaged in the business of being a
private detective under multiple provisions of the statute:
Persons who for a fee, reward, or other consideration, undertake any
4
of the following acts for the purpose of obtaining information for
others are considered to be engaged in the business of a private
detective:
* * *
(2) investigating the identity, habits, conduct, movements,
whereabouts, transactions, reputation, or character of any person or
organization;
(3) investigating the credibility of witnesses or other persons;
(4) investigating the location or recovery of lost or stolen property;
[or]
* * *
(8) obtaining through investigation evidence to be used before any
authorized investigating committee, board of award, board of
arbitration, administrative body, or officer or in preparation for trial
of civil or criminal cases;
Minn. Stat. § 326.338, subd. 1. Defendant asserts that MediaSentry engaged in
each of the listed activities when it investigated the identity of the user of the
computer from which it downloaded the songs at issue in this lawsuit and when
it obtained evidence of the copyrighted songs on Defendant’s computer.
Defendant also claims that MediaSentry violated the MPDA when it held itself
out to be a private detective; however, she has offered no admissible evidence of
such advertisement in Minnesota.
5
Defendant notes that the alleged violations of the MPDA are crimes under
Minnesota law. See Minn. Stat. § 326.339.
The Court concludes that MediaSentry is not subject to the MPDA. Based
on the language of the MPDA, the Act does not apply to persons or companies
operating outside of the state of Minnesota. See Minn. Stat. § 326.3381, subd. 5
(providing procedures for licensing out‐of‐state applications for those who
“establish a Minnesota office”). Additionally, there is a general presumption that
Minnesota statutes do not apply extraterritorially. See In re Pratt, 18 N.W.2d 147,
153 (Minn. 1945), cited in Harrington v. Northwest Airlines, Inc., No. A03‐192,
2003 WL 22016032, at *2 n.1 (Minn. Ct. App. Aug. 26, 2003) (unpublished) (noting
that Minnesota courts employ “the presumption against a state statute having
extraterritorial application”).
MediaSentry does not operate within Minnesota. (Connelly Decl. ¶ 3.) It
has no employees in Minnesota and does not conduct any activities in Minnesota.
(Id.) It pays no taxes in the state and has no agent for service of process here.
(Id.) MediaSentry conducted no activity in Minnesota relating to this case, and
all of the information it received was sent by Defendant from her computer to
MediaSentry’s computer in a state other than Minnesota. (Id.) Merely
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monitoring incoming internet traffic sent from a computer in another state is
insufficient to constitute engaging in the business of private detective within the
state of Minnesota.
C. The Pen Register and Trap and Trace Devices Act
Defendant asserts that MediaSentry violated the Pen Register Act when it
recorded the packets that included the IP address of the sender. It is a crime
under 18 U.S.C. § 3121 to “install or use a pen register or a trap and trace device,
without first obtaining a court order.”
Under the statute both the term “pen register” and the term “trap and trace
device” are defined as devices or processes which capture certain information but
do not capture “the contents of any communication.” 18 U.S.C. § 3127(3), (4). See
also Columbia Pictures, Inc. v. Bunnell, 245 F.R.D. 443, 450 (C.D. Cal. 2007)
(“[P]en registers and trap and trace devices, by definition, do not record ‘the
contents of any communication.’”) (citation omitted).
The Pen Register Act has no application here because the IP address
recorded by MediaSentry was part of the content of the communication. The
metadata that is transmitted along with every file sent through the FastTrack
network used in this case always includes the IP address. (Jacobson Decl. ¶ 6.)
7
Furthermore, the Pen Register Act cannot be intended to prevent
individuals who receive electronic communications from recording the IP
information sent to them. If it did apply in those cases, then the Internet could
not function because standard computer operations require recording IP
addresses so parties can communicate with one another over the Internet.
(Jacobson Decl. ¶ 4.)
Additionally, the Pen Register Act does not bar recordings of the contents
of communications that are made with the consent of one of the parties to the
communication. See, e.g., United States v. Millet, No. 05 CR 81, 2005 WL
3605269, at *1 (N.D. Ill. Nov. 3, 2005) (“And recordings made of conversations
with the consent of one of the parties are permissible under federal law. The pen
registers and trap‐and‐trace devices may well assist the government in
determining the exact time and date of telephone calls and the telephones
accessed, but they do not disclose the contents of the conversations, nor do they
make illegal the consensual recordings.”). In this case, the IP addresses were
communicated as part of the packets Defendant’s computer sent to
MediaSentry’s computer. MediaSentry, as a party to that communication, simply
recorded the information transmitted to it from Thomas‐Rasset’s computer.
8
D. The Electronic Communications Privacy Act of 1986
The Electronic Communications Privacy Act of 1986 prohibits
unauthorized wiretapping:
Except as otherwise specifically provided in this chapter any person
who–
(a) intentionally intercepts, endeavors to intercept, or procures any
other person to intercept or endeavor to intercept, any wire, oral, or
electronic communication;
* * *
shall be punished as provided in subsection (4) or shall be subject to
suit as provided in subsection (5).

18 U.S.C. § 2511(1).
Defendant claims that MediaSentry violated § 2511(1) by intercepting
electronic communications in the form of the packets traveling between Thomas‐
Rasset’s computer and MediaSentry’s computer. Defendant also claims that
MediaSentry violated the statute when it recorded images of the Kazaa interface.
She asserts that the display screen interface of Kazaa constituted an electronic
communication from the sender to the MediaSentry operator, communicating
information about the files on the sender’s computer.

Assuming, without deciding, that MediaSentry’s actions constituted
9
interception of an electronic communication, MediaSentry falls under the
participant exception to the Wiretap Act. Section 2511(2)(d) provides:
It shall not be unlawful under this chapter for a person not acting
under color of law to intercept a wire, oral, or electronic
communication where such person is a party to the communication
or where one of the parties to the communication has given prior
consent to such interception unless such communication is
intercepted for the purpose of committing any criminal or tortious
act in violation of the Constitution or laws of the United States or of
any State.
18 U.S.C.A. § 2511(2)(d).
MediaSentry was clearly a party to the electronic communication with
Defendant. Defendant asserts that this exception does not protect MediaSentry
because MediaSentry was intercepting communications for the purpose of
committing the crime under Minnesota law of engaging in the business of a
private detective without a license, committing the crime under federal law of
recording IP addresses in violation of the Pen Register Act, and committing the
Minnesota tort of intrusion upon seclusion.
MediaSentry did not intercept the communications for the purpose of
committing a crime or tort. As the Court has already held, MediaSentry did not
commit a crime under the MPDA or under the Pen Register Act. Although
10
Defendant has vaguely alluded to private detective licensing laws from other
states, there is no evidence or legal argument before the Court upon which the
Court could conclude that MediaSentry was subject to and violated another
state’s private detective law in this case. Even if, in capturing the information
sent from Defendant’s computer, MediaSentry had incidentally violated a private
detective licensing statute from some other state, gathering evidence of
Defendant’s alleged copyright infringement cannot be said to have been
accomplished for the purpose of committing a tort or crime. See Meredith v.
Gavin, 446 F.2d 794, 798 (8th Cir. 1971) (discussing legislative history of exception
to one‐party consent exception to the Wiretap Act, which was aimed at
“monitoring . . . for insidious purposes such as blackmail, stealing business
secrets” and holding that exception applied when recorder’s “purpose is evil”).
The tort of intrusion upon seclusion occurs when one “intentionally
intrudes, physically or otherwise, upon the solitude or seclusion of another or his
private affairs or concerns . . . if the intrusion would be highly offensive to a
reasonable person.” Lake v. Wal‐Mart Stores, Inc., 582 N.W.2d 231, 233 (Minn.
1998) (footnote omitted). Thomas‐Rasset asserts that MediaSentry’s actions
would be highly offensive to a reasonable person. The Court disagrees. There is
11
no expectation of solitude or seclusion when a person activates a file sharing
program and sends a file to the requesting computer. By participating in Kazaa,
a user expects millions of other users to view and copy her files, each time
receiving the very information that Thomas‐Rasset sent to MediaSentry and
MediaSentry recorded.
E. Ethical Violations
Defendant asserts that the Court should suppress evidence gained by
MediaSentry because it was illegally obtained at the direction and under the
supervision of Plaintiffs’ lawyers in violation of their ethical obligations. The
Court has held that MediaSentry did not illegally obtain the evidence in question.
MediaSentry acted for the legitimate purpose of discovering infringers and
protecting its clients’ copyrights. Therefore, there was no ethical violation
committed by Plaintiffs’ attorneys’ involvement with MediaSentry’s
investigation.
F. Conclusion
Because Defendant has failed to show that MediaSentry violated any law
in gathering the evidence to be used in this case, Defendant’s motion to suppress
is denied.
12
II. Plaintiffs’ Motion in Limine to Exclude the Testimony of Defendant’s
Expert Dr. Yongdae Kim [Docket No. 272]
A. Daubert Standard
The admissibility of expert testimony is governed by Federal Rule of
Evidence 702. The proponent of the testimony has the burden to show by a
preponderance of the evidence that the testimony is admissible under Rule 702.
Lauzon v. Senco Prods., Inc., 270 F.3d 681, 686 (8th Cir. 2001). Under the Rule:
If scientific, technical, or other specialized knowledge will assist the
trier of fact to understand the evidence or to determine a fact in
issue, a witness qualified as an expert by knowledge, skill,
experience, training, or education, may testify thereto in the form of
an opinion or otherwise, if (1) the testimony is based upon sufficient
facts or data, (2) the testimony is the product of reliable principles
and methods, and (3) the witness has applied the principles and
methods reliably to the facts of the case.
Fed. R. Evid. 702.
“Under the framework developed in Daubert, trial courts must serve as
gatekeepers to insure that proffered expert testimony is both relevant and
reliable. Trial courts are given broad discretion in fulfilling this gatekeeping role
. . . .” Wagner v. Hesston Corp., 450 F.3d 756, 758 (8th Cir. 2006) (citations
omitted). The proposed testimony must be useful to the factfinder in deciding
the ultimate fact issue; the expert witness must be qualified; and the proposed
13
evidence must be reliable. Lauzon, 270 F.3d at 686.
When considering the reliability and relevance of expert testimony, the
Court may examine “whether the theory or technique is subject to testing,
whether it has been tested, whether it has been subjected to peer review and
publication, whether there is a high known or potential rate of error associated
with it, and whether it is generally accepted within the relevant community.”
Unrein v. Timesavers, Inc., 394 F.3d 1008, 1011 (8th Cir. 2005) (citation omitted).
The Court’s inquiry is “flexible and fact specific.” Id.
As a general rule, the factual basis of an expert opinion goes to
the credibility of the testimony, not the admissibility, and it is up to
the opposing party to examine the factual basis for the opinion in
cross‐examination. Only if the expert’s opinion is so fundamentally
unsupported that it can offer no assistance to the jury must such
testimony be excluded.
Bonner v. ISP Techs., Inc., 259 F.3d 924, 929‐30 (8th Cir. 2001) (citation omitted).
B. Factual Basis for Kim’s Opinion
Defendant’s expert witness is Dr. Yongdae Kim, as Associate Professor in
the University of Minnesota Department of Computer Science. Kim will not offer
an opinion regarding whether Thomas‐Rasset infringed Plaintiffs’ copyrights or
whether her computer was used to distribute their copyrighted sound
14
recordings. Instead, Kim will offer possible explanations regarding how
someone other than Thomas‐Rasset could have committed the file sharing at
issue in this case. Plaintiffs argue that, although Kim lists fourteen possible
explanations in his report, he admits that there is no evidence to support any of
the explanations.
Defendant retorts that Kim will only offer rebuttal testimony to assist the
jury in properly weighing the evidence regarding the origin of the Kazaa
software and the allegedly infringing songs on Defendant’s computer.
Defendant admits that Kim will not offer an opinion regarding the probable
cause of the presence of Kazaa and the songs on Thomas‐Rasset’s computer.
Instead, he is merely offering his testimony as a rebuttal to the testimony of
Plaintiffs’ expert witness. Kim will opine on the reliability and weight of
Plaintiffs’ expert’s testimony. Kim will also discuss possible alternative
explanations that Plaintiffs’ expert did not consider in arriving at his conclusions.
Defendant asserts that testimony regarding possibilities, even if they are not
probable, is legally sufficient if the proposed expert is attempting to rebut the
testimony of another expert. Defendant also argues that she does not bear the
burden of proof on the question of causation, so her expert does not need to
15
testify regarding probable causation, but can simply offer alternative
explanations to attack Plaintiffs’ theory of causation.
As a defense rebuttal witness, Kim does not have to testify that the other
possible explanations were the probable cause that Kazaa and the sound
recordings at issue appeared to be on Defendant’s computer. See, e.g., Allen v.
Brown Clinic, P.L.L.P., 531 F.3d 568, 574‐75 (8th Cir. 2008) (holding that defense
expert could testify as to other possible, but not necessarily probable, causes of
plaintiff’s injury, because, to require more would “unduly tie a defendant’s
hands in rebutting a plaintiff’s case, where as here, plaintiff’s expert testifies that
no other cause could have caused plaintiff’s injury,” and would “impermissibly
shift the burden of proof and require a defendant to ‘disprove’ a plaintiff’s theory
by a preponderance of the evidence”) (citation omitted). Because Kim is offered
only as a rebuttal expert, and only opines regarding possibilities in his report, his
testimony must be limited such that “remarks are made in rebuttal of Plaintiff’s
expert and are not done to establish a cause.” Morrison v. Stephenson, No.
2:06‐CV‐283, 2008 WL 618778, at *4 (S.D. Ohio Mar. 3, 2008).
Therefore, Kim can testify regarding the possible scenarios that can occur
on a peer‐to‐peer network that would result in the incorrect user being identified
16
by MediaSentry. Kim cannot opine regarding causation or what he thinks
probably occurred in this case.
Plaintiffs note fourteen particular instances of Kim’s testimony that they
allege are unsupported and objectionable. Because Kim’s testimony is limited to
rebuttal and he is not permitted to testify as to causation, the Court rejects most
of Plaintiffs’ arguments regarding admissibility. The alleged lack of factual basis
for many of Kim’s opinions goes to credibility and provides ground for cross
examination. However, the Court does hold that Kim cannot testify based purely
on speculation or when, beyond lacking evidence to support his theory, the
record only contains evidence that makes his theory impossible, and, thus,
unhelpful to the jury. See Marmo v. Tyson Fresh Meats, Inc., 457 F.3d 748, 757
(8th Cir. 2006) (“Expert testimony is inadmissible if it is speculative, unsupported
by sufficient facts, or contrary to the facts of the case.”) (citation omitted).
Therefore, given the evidence that there is no wireless router involved in
this case, the Court excludes Kim’s opinion that it is possible that someone could
have spoofed or hijacked Defendant’s Internet account through an unprotected
wireless access point. Similarly, because Kim explicitly testified that this case
does not involve any “black IP space,” or any “temporarily unused” IP space
17
(Kim Dep. 110‐11), he is not permitted to opine at trial that hijacking of black IP
space or temporary unused IP is a possible explanation in this case.
In § 3.4 of his Report, Kim asserts that there is no evidence that the music
files were “consciously placed” in the shared directory on Thomas‐Rasset’s
computer or were willfully offered for distribution. Kim testified that he is not an
expert in human behavior and that his opinion is based on nothing but
“speculation.” (Kim Dep. 127‐28.) Although the Court grants Kim leeway to
testify regarding possibilities, speculative testimony is still inadmissible. Because
Kim admits that his opinion on this point is speculative, it is excluded.
In § 4.4 of Kim’s report, he opines, “The KaZaA‐reported IP address is not
evidence that the machine running KaZaA is not behind a NAT device.”
However, Kim testified that he has no knowledge to support this opinion. (Kim
Dep. 141‐43.) He admits that he did obtain a functioning version of Kazaa and
could have run it to observe its behavior, but chose not to. (Kim Dep. 144‐45.)
Kim admittedly has no knowledge to support his opinion regarding Kazaa’s
functioning and has not, in fact, observed Kazaa functioning – although he had
the opportunity to do so. His opinion regarding Kazaa’s functioning in this
instance is excluded as not based on a reliable scientific method.
18
As to Kim’s other opinions, the Court concludes that their alleged lack of
foundation or improper factual basis goes to weight not admissibility.
C. Kim’s Expertise
Plaintiffs argue that, while Kim is qualified in computer science, he has no
experience with the Kazaa or Kazaa Lite file sharing programs or with the
FastTrack file sharing network. His only experience with Kazaa was his attempt
to download the program and examine the interface in connection with this case.
He did not attempt to run the program or observe its behavior. Plaintiffs
conclude that, therefore, Kim is not qualified to testify on Kazaa, Kazaa Lite, or
FastTrack. Plaintiffs also argue that Kim is unqualified to opine regarding his
examination of a forensic copy of Defendant’s computer because of his lack of
experience in computer forensics.
Defendant responds that Kim has conducted research and is an expert in
peer‐to‐peer systems and network security. Kim’s education and background in
computer science qualify him as an expert in general computer science.
Defendant admits that Kim has little experience with FastTrack, Kazaa, or Kazaa
Lite, but argues that this is a universal problem because there have been few
studies done of these programs in the academic community, particularly because
19
Kazaa is proprietary. Defendant argues that, somehow, Plaintiffs have a
monopoly on Kazaa experts.
Kim is qualified in the general areas of computer science, peer‐to‐peer
networks, and computer security. He is not specifically an expert in Kazaa,
Kazaa Lite, or FastTrack. Here, Plaintiffs do not control Kazaa, FastTrack, or
Kazaa Lite. In fact, Kim had a functioning copy of Kazaa, but chose not to test it.
There is no institutional barrier to a computer science expert becoming expert in
Kazaa without working with Plaintiffs.
Despite this fact, the Court holds that Kim is qualified to testify in this case.
He is an expert in the general fields of peer‐to‐peer networks and computer
security. Although he has not tested Kazaa, Kazaa Lite, or FastTrack firsthand,
he has gained knowledge of these areas through his review of other academic
studies, informed by his general expertise in peer‐to‐peer networks. Kim’s
failure to test of Kazaa, FastTrack, or Kazaa Lite goes to the weight and
credibility of his opinions and will be grounds for cross examination.
D. Application of Rule 403
Plaintiffs also claim that Kim’s testimony should be excluded under
Federal Rule of Evidence 403.
20
1. Rule 403 Standard
Federal Rule of Evidence 403 provides:
Although relevant, evidence may be excluded if its probative value
is substantially outweighed by the danger of unfair prejudice,
confusion of the issues, or misleading the jury, or by considerations
of undue delay, waste of time, or needless presentation of
cumulative evidence.
“Because ‘[e]xpert evidence can be both powerful and quite misleading,’ a
trial court must take special care to weigh the risk of unfair prejudice against the
probative value of the evidence under Fed. R. Evid. 403.” Nichols v. Am. Nat’l
Ins. Co., 154 F.3d 875, 884 (8th Cir. 1998) (quoting Daubert v. Merrell Dow
Pharm., 509 U.S. 579, 595 (1993)).
2. Application to Kim’s Proposed Testimony
Plaintiffs argue that Kim’s testimony has almost no value because he has
no experience or training with Kazaa or the FastTrack network and because his
opinions rely on speculative assumptions. They conclude that the probative
value of his testimony is outweighed by the dangers of unfair prejudice to
Plaintiffs, of confusing the issues, and of misleading the jury.
The Court has restricted Kim’s testimony to exclude opinions on causation,
opinions based on speculation, and opinions based on facts completely
21
contradicted by the record. The basis for his remaining opinions can be tested
through cross examination. Having weighed the probative value of Kim’s
testimony as rebuttal against the dangers enumerated in Rule 403, the Court
concludes that Rule 403 does not justify additional exclusion.
III. Defendant’s Unopposed Motion in Limine [Docket No. 276]
As the Court orally ruled during the June 10 hearing, the parties shall refer
to the previous trial as “a prior proceeding.” The results of that trial shall not be
revealed to the jury.
IV. Plaintiffs’ Motion in Limine to Preclude Defendant from Raising or
Asserting Evidence of Other Lawsuits [Docket No. 279]
Plaintiffs ask that the Court bar Defendant from introducing evidence
regarding other copyright lawsuits involving Plaintiffs. As the Court explained
during June 10 hearing, it will reserve ruling on this motion because the type of
evidence that Defendant will be permitted to offer will depend upon the evidence
and arguments offered by Plaintiffs. All parties are warned to abide by the Rules
of Evidence and Civil Procedure during trial.
V. Plaintiffs’ Motion in Limine to Preclude Fair Use Defense [Docket No.
283]
Plaintiffs ask that Defendant be barred from asserting the fair use defense
22
because she failed to assert this affirmative defense until two weeks before trial
and has waived the defense.
Fair use is an affirmative defense. Campbell v. Acuff‐Rose Music, Inc., 510
U.S. 569, 590 (1994) (“Since fair use is an affirmative defense, its proponent would
have difficulty carrying the burden of demonstrating fair use without favorable
evidence about relevant markets.”) (footnotes omitted); Harper & Row Publ’rs,
Inc. v. Nation Enters., 471 U.S. 539, 561 (1985) (“The drafters resisted pressures
from special interest groups to create presumptive categories of fair use, but
structured the provision as an affirmative defense requiring a case‐by‐case
analysis.”) (citations omitted).
Defendant’s reliance upon Sony Corp. of America v. Universal City
Studios, Inc., is misplaced. 464 U.S. 417 (1984). In Sony, the Supreme Court did
not hold that fair use is no longer an affirmative defense in non‐commercial
cases. Moreover, both Campbell and Harper & Row were decided after – and
both cited to – Sony and both explicitly provided that fair use is an affirmative
defense. The Supreme Court has explicitly rejected any fair use presumption
based on commercial or non‐commercial use. See Campbell, 510 U.S. at 584
(discussing Sony and holding: “The language of the statute makes clear that the
23
commercial or nonprofit educational purpose of a work is only one element of
the first factor enquiry into its purpose and character. . . . As we explained in
Harper & Row, Congress resisted attempts to narrow the ambit of this traditional
enquiry by adopting categories of presumptively fair use, and it urged courts to
preserve the breadth of their traditionally ample view of the universe of relevant
evidence.”) (citations omitted).
“Generally, failure to plead an affirmative defense results in a waiver of
that defense.” First Union Nat’l Bank v. Pictet Overseas Trust Corp., Ltd., 477
F.3d 616, 622 (8th Cir. 2007) (citations omitted). However, “[w]hen an affirmative
defense is raised in the trial court in a manner that does not result in unfair
surprise, . . . technical failure to comply with Rule 8(c) is not fatal.’” Id. (citation
omitted).
In this case, the Court holds that Defendant has waived the affirmative
defense of fair use. Defendant failed to raise the fair use defense in her Answer,
at any time before the First Trial, during the First Trial, or at any time leading up
to this retrial until only two weeks before retrial. This litigation has gone on for
years, yet Plaintiffs had no inkling of this defense until the eve of trial. Because
Plaintiffs had no notice of this defense, they have taken no discovery regarding
24
Defendant’s alleged fair use defense. The record in this case, with which this
Court is intimately familiar, gave no hint that a fair use defense would be
forthcoming. It would be highly prejudicial to Plaintiffs to allow Defendant to
assert this new affirmative defense on the eve of retrial, when they have no
opportunity to conduct discovery on this issue and long ago missed the
opportunity to file a dispositive motion regarding this affirmative defense. The
Court holds that Defendant has waived the fair use defense. Plaintiffs’ motion is
granted.
VI. Plaintiffs’ Motion in Limine to Preclude Defendant from Asserting an
Innocent Infringement Defense at Trial [Docket No. 284]
Plaintiffs ask the Court to hold that Defendant cannot seek a reduction in
statutory damages under 17 U.S.C. § 504, known as the innocent infringement
defense. They claim that Thomas‐Rasset has waived this defense by not asserting
it until two weeks before trial and, in the alternative, the defense is barred
because Plaintiffs placed proper copyright notices on published copies of their
copyrighted works to which Thomas‐Rasset had access.
At the June 10 hearing, Defendant informed the Court that she does not
oppose Plaintiffs’ motion. Therefore, Plaintiffs’ motion is granted.
25
VII. Defendant’s Motion to Dismiss for Lack of Subject Matter Jurisdiction
[Docket No. 310]
As the Court orally ruled during the June 10 hearing, Defendant’s Motion
to Dismiss for Lack of Subject Matter Jurisdiction is denied at this time because
the motion is premature.
Accordingly, based upon the files, records, and proceedings herein, IT IS
HEREBY ORDERED:
1. Defendant’s Motion to Suppress Evidence [Docket No. 263] is
DENIED.
2. Plaintiffs’ Motion in Limine to Exclude the Testimony of Defendant’s
Expert Dr. Yongdae Kim [Docket No. 272] is GRANTED IN PART
and DENIED IN PART as set forth in this Order.
3. Defendant’s Unopposed Motion in Limine [Docket No. 276] is
GRANTED as set forth in this Order.
4. Plaintiffs’ Motion in Limine to Preclude Defendant from Raising or
Asserting Evidence of Other Lawsuits [Docket No. 279] is
RESERVED.
5. Plaintiffs’ Motion in Limine to Preclude Fair Use Defense [Docket
No. 283] is GRANTED.
6. Plaintiffs’ Motion in Limine to Preclude Defendant from Asserting
an Innocent Infringement Defense at Trial [Docket No. 284] is
GRANTED.
26
7. Defendant’s Motion to Dismiss for Lack of Subject Matter
Jurisdiction [Docket No. 310] is DENIED WITHOUT PREJUDICE
as premature.
Dated: June 11, 2009 s/Michael J. Davis
Michael J. Davis
Chief Judge
United States District Court
27

Order On Motions in Limine in Capitol v. Thomas

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Case 0:06-cv-01497-MJD-RLE Document 315 Filed 06/11/2009 Page 1 of 27

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