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Right of Impoundment

By Senior Copyright Counsel, Google Inc.

The remedy of impoundment of allegedly infringing copies has a long and somewhat tangled history. Sections 101(c) and (d) of the 1909 Act provided for impoundment and destruction:

(c) Impounding during action
To deliver up on oath, to be impounded during the pendency of the action, upon such terms and conditions as the court may prescribe, all articles alleged to infringe a copyright;
(d) Destruction of infringing copies and plates
To deliver up on oath for destruction all the infringing copies or devices, as well as all plates, molds, matrices, or other means for making such infringing copies as the court may order.

Seizure and impoundment have been rightly described as "drastic acts," to be imposed only in special circumstances. There were no provisions in the 1909 Act governing how impoundment and destruction were to be carried out, which raised many questions?for example, by whom, under what protections (e.g., notice, security). The Federal Rules of Civil Procedure were 29 years in the future, so into the breach stepped the Supreme Court. Acting under authorization it interpreted to exist in Section 25 of the 1909 Act as passed, the Court promulgated rules governing the practice in copyright cases. The Supreme Court rules had some positive and some negative features. Impoundment was not discretionary, which copyright owners favored. Yet the bond requirement was not only mandatory but was required in amount not less than double the value of the article seized; within three days of seizure, defendant had the right to appear before the court and argue for an increased bond amount. The lack of judicial oversight except perhaps for ensuring formal compliance with the bond requirements was severely criticized, as was the lack of a requirement that seizure be ordered only when it was likely defendant would destroy or conceal evidence.

When the Federal Rules of Civil Procedure were promulgated in 1938, the Supreme Court rules were not repealed, even though the FRCP would have answered virtually all, if not all, of the issues that arose under the statutory provisions and the Supreme Court rules. The paragraph following Section 25(e), on which the Supreme Court rested its authority, was repealed in 1948 (and the rules themselves have subsequently been repealed in favor of application of the FRCP).

The relevant provisions of the 1976 Act are far more detailed than those in the 1909 Act:
503.

Remedies for Infringement: Impounding and Disposition of Infringing Articles
(a) At any time while an action under this title is pending, the court may order the impounding, on such terms as it may deem reasonable, of all copies or phonorecords claimed to have been made or used in violation of the copyright owner?s exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.
(b) As part of a final judgment or decree, the court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner?s exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.

How far does Section 503 reach, specifically, does it authorize the impoundment of infringing copies innocently purchased by a non-infringing person? In Socieite Civile Succession Richard Guino v. International Foundation for Anticancer Drug Recovery, 2006 WL 3138796 (D. Arizona Nov. 3, 2006), the court held the section does not reach that far, being limited to those who both infringe and possess the copies. The opinion is very well-researched and for those who doubt that resort to legislative history is the norm in copyright cases, it is a good opinion to read for that too. The policy is sound and has been applied to recall orders, most notably in cases involving infringing lace on wedding dresses, where the courts have been willing to order the recall of copies from retailers, but not from the brides or brides-to-be.

Full post as published by The Patry Copyright Blog on November 09, 2006 (boomark / email).