governing preliminary injunctive relief. See, e.g., Van Deurzen, supra; WPOW, Inc., 584 F. Supp. at 135 (citing cases); see also Warner Bros., 877 F.2d at 1124 (observing that, absent the Copyright Rules, impoundment procedure would be governed by standards set forth in "general rules governing preliminary injunctive relief"); 3 Nimmer on Copyright, § 14.07, at 14-96 (1992) (noting that courts have imputed requirement of showing of likelihood of success into section 503(a)); Frackman, Russell J., Litigating Copyright Cases, 351 PLI/Pat 7 (Nov. 1992); Gerber, supra, 217 PLI/Pat 269; Owens, supra at 249-59.
Plaintiffs have implicitly acknowledged the constitutional infirmity of the impoundment procedure under the Copyright Rules by proposing an order which attempts in some respects to comply with the due process principles set forth in Mitchell and Rule 65. Plaintiffs have made a showing of a likelihood of prevailing on the merits, and the proposed order requires defendants and plaintiffs to appear at a postseizure hearing.
However, they have not gone far enough.
Although this Court can fashion a constitutionally valid method of impoundment in appropriate cases, see, e.g., WPOW, Inc., 584 F. Supp. at 134-35; Bally Midway Mfg., supra, the plaintiffs in these actions have not supported sufficiently their claim that the order of seizure is essential to the protection of their interests. To justify their application for an ex parte seizure order, the plaintiffs state only in conclusory fashion that a seizure order is essential to providing meaningful relief in any "film pirate" action. The plaintiffs explain that videocassettes are small, lightweight, and easily hidden or destroyed, that those who deal in counterfeit videocassettes are aware of the illegal nature of their acts since warning labels describing criminal and civil liabilities for unauthorized copying appear on genuine cassettes, and that film pirates conceal or destroy the offending videocassettes when they are apprised of a pending infringement action. Kaplan Aff. P 7. This last conclusory assertion by plaintiffs' attorneys is not backed up by any specifics either about the defendants in these actions or others.
Nothing in plaintiffs' applications explains why a temporary restraining order would not suffice here. See Van Deurzen, supra (denying ex parte application for impoundment but inviting plaintiffs to file a motion for temporary restraining order); WPOW, Inc., 584 F. Supp. at 135 n.10 (noting that TRO may be more appropriate). Although in some circumstances notice of an infringement action prior to seizure effectively may deny a plaintiff relief, see In re Vuitton Et Fils S.A., 606 F.2d 1, 5 (2d Cir. 1979) (directing the district court to issue an ex parte temporary restraining order in a trademark infringement case where notice repeatedly in the past had enabled the defendant to dispose of infringing materials and "served only to render fruitless further prosecution of the action"), the plaintiffs here have made no showing to support their conclusory allegations that the defendants here are savvy film pirates; nothing in the present applications suggests that defendants are engaged primarily in illegitimate and infringing activities and are thus likely to disregard an order from this Court preventing them from disposing of or destroying any videocassettes on their business premises. See Owens, supra at 253 (suggesting that impoundment may be necessary where defendants primarily engage in infringing conduct). On the contrary, on the basis of plaintiffs' submissions, it appears that defendants are business people operating legitimate video rental and retail stores. Thus, plaintiffs have not shown satisfactorily that the present cases pose exigent circumstances such that postponing notice and a hearing until after the seizure is effected is appropriate. See Doehr, 111 S. Ct. at 2115.
Additionally, the plaintiffs have made no showing regarding the practices of the video rental trade, the operation of licensing agreements, and the process of obtaining authorized tapes. Thus, on the current record, there is no basis on which to appraise plaintiffs' claims that defendants are in fact producing unauthorized copies of tapes, as opposed to buying the tapes from another who holds himself out as a representative of plaintiffs or obtaining possession of the allegedly infringing tapes by some other means.
2. Fourth Amendment. Further, plaintiffs seek a sweeping order of seizure that is offensive to the Fourth Amendment of the United States constitution, which provides:
The right of the people to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures, shall not be violated, and no Warrants shall issue, but upon probable cause, supported by Oath or affirmation, and particularly describing the place to be searched, and the persons or things to be seized.
U.S. Const. amend. IV. It is well settled that the Fourth Amendment prohibition against unreasonable intrusions protects commercial buildings as well as private homes and governs not only criminal investigations but also searches and seizures made pursuant to civil proceedings. See Soldal v. Cook County, Ill., 121 L. Ed. 2d 450, 113 S. Ct. 538, 546, 546 n.10 (1992); Marshall v. Barlow's Inc., 436 U.S. 307, 56 L. Ed. 2d 305, 98 S. Ct. 1816 (1978).
In the civil context, the standards of reasonableness are less stringent than in the criminal context. See United States v. Gordon, 493 F. Supp. 808, 813 (N.D.N.Y. 1980), aff'd, 655 F.2d 475 (2d Cir. 1981). Although the requirements of "probable cause and specificity do not apply strictly where an administrative or civil order of seizure is issued by a court," id., in issuing civil seizure orders, courts are guided by the principles of probable cause and particularity that underlie the notion of reasonableness in the context of searches and seizures. See Founding Church of Scientology of Washington, D.C. v. United States, 133 U.S. App. D.C. 229, 409 F.2d 1146, 1150 (D.C. Cir.), cert. denied, 396 U.S. 963, 24 L. Ed. 2d 427, 90 S. Ct. 434 (1969); Laprease v. Raymours Furniture Co., 315 F. Supp. 716, 721-22 (N.D.N.Y. 1970). Fourth Amendment principles guide a court in issuing a seizure order directing the United States Marshal to impound allegedly infringing articles under the Copyright Act. See Warner Bros, 677 F. Supp. 740, 765 (S.D.N.Y. 1988); Bally Midway Mfg., supra; Jondora Music Publishing Co. v. Melody Recordings, Inc., 362 F. Supp. 494, 499-500 (D.N.J. 1973); see also 3 Nimmer on Copyrights § 14.07, at 14-100-01; Owens, supra at 239-43.
In the present case, plaintiffs' applications are deficient on Fourth Amendment grounds in at least one respect. The plaintiffs' proposed seizure order does not specify with particularity the premises to be searched or the articles to be seized. See generally 3 LaFave, Wayne R., Search and Seizure: A Treatise on the Fourth Amendment § 10.2(f), at 660-64 (2d ed. 1987). The particularity requirement "ensures that the search will be carefully tailored to its justifications and will not take on the character of the wide-ranging exploratory searches the Framers intended to prohibit." Maryland v. Garrison, 480 U.S. 79, 84, 94 L. Ed. 2d 72, 107 S. Ct. 1013 (1987); see also Coolidge v. New Hampshire, 403 U.S. 443, 467, 29 L. Ed. 2d 564, 91 S. Ct. 2022 (1971); United States v. Buck, 813 F.2d 588, 590 (2d Cir.), cert. denied, 484 U.S. 857, 98 L. Ed. 2d 121, 108 S. Ct. 167 (1987). Thus, the scope of a lawful search must be delineated by the object of the search and the places in which there has been a showing that the object is likely to be found. See Garrison, 480 U.S. at 84; In re Impounded Case (Law Firm), 840 F.2d 196, 200 (3d Cir. 1988). The requested order in the present cases is too broad in two respects. First, the requested order permits the plaintiffs not only to seize infringing videocassettes and the machines used to produce them at the defendants' places of business but also to seize such materials at any location where defendants or their agents may be found within the Eastern District of New York. Plaintiffs have provided no justification for this roving warrant. Second, plaintiffs request an order to seize any videocassette which infringes any copyright held by one of the plaintiffs, which would effectively avoid a restriction limiting plaintiffs' authorized seizure to infringing videocassettes of the six films in each case for which plaintiffs have provided copyright certificates. Such an order would abrogate the requirement that plaintiffs make a showing of the merits of their underlying claim of infringement and that the defendants possess infringing tapes of the films for which plaintiffs hold the copyright.
Finally, plaintiffs have not stated with sufficient particularity how infringing videocassettes will be distinguished from legitimate ones. Although plaintiffs describe in general how an unauthorized videocassette may be distinguished from an authorized one, they have not stated that all of the distinguishing markings of an authorized videocassette are present on the authorized videocassettes of films at issue here. Moreover, the criteria to be applied by the U.S. Marshal are in some cases extraordinarily subjective and, in effect, place the decision to seize or not in the hands of plaintiffs' expert rather than the U.S. Marshal. While plaintiffs state that "some of the distributing companies manufacture the cassette cartridge containing the tape" with a heat stamp, see Corrigan Aff. P 5(B) (emphasis added); Investigator Aff. P 3, plaintiffs nowhere claim that the heat stamp is present on all authorized videocassettes of the films at issue in these two actions.
Order Sealing File
Plaintiffs' request to seal the court files in these two actions until defendants have notice of this action or any impoundment order is executed is hereby granted on condition that plaintiffs file within ten days of the date of this decision an additional set of papers redacting the names of the defendants, the names of their businesses and corresponding addresses, as well as the dates of the investigator's visits to the defendants' stores. This Memorandum and Order will not be sealed; however, the defendants' names will be omitted from the caption. Plaintiffs' request to seal the affidavits of the investigator in these cases is also granted pending further order of this or any reviewing court.
The Clerk is directed to mail a copy of the within to the plaintiffs.
Dated : Brooklyn, New York
April 26, 1993
Clifton P. Sifton
United States District Judge