Case No. CR 90-0-106


              757 F. Supp. 1046; 1991 U.S. Dist. LEXIS 2286; Copy. L.
                               Rep. (CCH) P26,748

                          February 15, 1991, Decided 
                            February 15, 1991, Filed



   The parties have consented to try this misdemeanor case before me. Trial was
held on January 15, 1991, and briefs were received on January 23, 1991.  I now
find that the defendant is not guilty of the alleged willful infringement of a
copyrighted video cassette in violation of 17 U.S.C. § 506(a).


   Dennis Moran (Moran), the defendant, is a full-time Omaha, Nebraska, police
officer and the owner of a "mom-and-pop" movie rental business which rents video
cassettes of copyrighted motion pictures to the public. On April 14, 1989,
agents of the Federal Bureau of Investigation (FBI) executed a court-ordered
search warrant on the premises of Moran's business. The FBI seized various video
cassettes appearing to be unauthorized copies of copyrighted motion pictures,
including "Bat 21," "Big," "Crocodile Dundee II," "The Fourth Protocol,"
"Hell-Bound: Hellraiser II," and "Mystic Pizza." The parties have stipulated
that these six motion pictures are validly copyrighted motion pictures. The
parties have further stipulated  [**2]  that each of the six motion pictures was
distributed to Moran, with the permission of the copyright holder, between
February 1, 1989, and April 14, 1989. The parties have further stipulated that
at least one of the movies identified was reproduced by Moran onto a video
cassette, without the authorization of the copyright holder, placed into
inventory for rental, and subsequently rented.

   At the time the FBI executed the search warrant, Moran was fully cooperative.
He told the FBI agents he put the "duped" copies out for rental and held the
"originals" back because he feared the "original" motion pictures would be
stolen or damaged. Moran told the FBI agents at the time they executed the
warrant that he believed this practice was legal as long as he had purchased and
was in possession of the "original" motion picture. Moran further advised the
FBI agents that he would affix to the "duped" copies title labels for the
copyrighted motion pictures and a copy of the FBI copyright warning label
commonly found on video cassette tapes. Moran  [*1048]  advised the FBI agents
that he put the title labels and FBI warning on the tapes to stop customers from
stealing or duplicating the tapes.

   Moran testified  [**3]  at trial. He indicated that he had been employed as
an Omaha, Nebraska, police officer for approximately twenty-two-and-a-half
years, including service as a narcotics investigator and as a bodyguard to the
mayor of the city of Omaha. Moran has a reputation for honesty among his

   Moran testified that he began to "insure" copyrighted video cassettes,
meaning that he duplicated copyrighted video cassettes which he had validly
purchased from distributors, when he realized copyrighted tapes were being
vandalized. Moran testified he was under the impression that "insuring" tapes
was legal whereas "pirating" tapes was not. For practical purposes, Moran
defined "insuring" versus "pirating" as meaning that he could duplicate a
copyrighted tape provided he had purchased the copyrighted tape and did not
endeavor to rent both the copyrighted tape and the duplicate he had made. Moran
testified that he formulated his belief about "insuring" versus "pirating" when
talking with various colleagues in the business and from reading trade
publications. However, Moran was not able to specifically identify the source of
his information.

   There was no persuasive evidence that Moran made multiple  [**4]  copies of
each authorized version of the copyrighted material. The evidence indicates that
Moran purchased more than one copyrighted tape of the same movie, but the
persuasive evidence also reveals that Moran made only one copy of each
copyrighted tape he purchased. There was no persuasive evidence that Moran
endeavored to rent both the copyrighted tape and the duplicate. When Moran made
the unauthorized copy, he put the unauthorized copy in a package made to
resemble as closely as possible the package containing the original copyrighted
motion picture Moran had purchased from an authorized distributor.

   II. LAW

   Moran makes two arguments. First, Moran argues that the government must prove
that he had the specific intent to violate the law, that is, he knew that what
he was doing was illegal and he committed the act nevertheless.  Secondly, Moran
argues that he did not have the specific intent to violate the law and, as a
consequence, should be found not guilty.

   In pertinent part 17 U.S.C. § 506(a) punishes as a criminal any "person who
infringes a copyright willfully and for purposes of commercial advantage or
private financial gain." Pursuant to 17 U.S.C. § 106(3), the owner of  [**5]  a
copyright has the exclusive right to "distribute copies . . . of the copyrighted
work to the public by sale or other transfer of ownership, or by rental, lease,
or lending." The "exclusive right" of the owner of a copyright is subject to a
variety of exceptions. See 17 U.S.C. §§ 107-118.


   It must first be determined whether the word "willfully," as used in 17
U.S.C. § 506(a), requires a showing of "bad purpose" or "evil motive" in the
sense that there was an "intentional violation of a known legal duty." Adopting
the research of the Motion Picture Association of America, the government argues
that the term "willful" means only "an intent to copy and not to infringe."
Letter Brief of Government at 4 (citing United States v. Backer, 134 F.2d 533,
535 (2nd Cir. 1943); United States v. Taxe, 380 F. Supp. 1010 (C.D. Cal. 1974),
aff'd, 540 F.2d 961 (9th Cir. 1976)). On the other hand, Moran argues that the
use of the word "willful" implies the kind of specific intent required to be
proven in federal tax cases, which is to say, a voluntary, intentional violation
of a known legal duty. Defendant's Memorandum Brief at 1 (citing United States 
v. Cross, 816 F.2d 297,  [**6]  300-01 (7th Cir. 1987); United States v. Heilman
, 614 F.2d 1133, 1137-38 (7th Cir.), cert. denied, 447 U.S. 922, 65 L. Ed. 2d
1114, 100 S. Ct. 3014 (1980); United States v. Wise, 550 F.2d 1180, 1194 (9th
[*1049]  Cir.), cert. denied, 434 U.S. 929, 54 L. Ed. 2d 290, 98 S. Ct. 416, 199
U.S.P.Q. (BNA) 128 (1977)).

   The general rule is, of course, that ignorance of the law or mistake of the
law is no defense to a criminal prosecution. However, when the term "willfully"
is used in complex statutory schemes, such as federal criminal tax statutes, the
term "willful" means a "voluntary, intentional violation of a known legal duty."
Cheek v. United States, 498 U.S. 192, 112 L. Ed. 2d 617, 59 U.S.L.W. 4049,
4051-52, 111 S. Ct. 604, 67 A.F.T.R.2d (P-H) 344 (1991) (holding in a criminal
tax prosecution that a good faith misunderstanding of the law or a good faith
belief that one is not violating the law negates willfulness, whether or not the
claimed belief or misunderstanding is objectively reasonable). n1 As the Court
recognized in Cheek, id. at     4052, in United States v. Murdock, 290 U.S. 389,
396, 78 L. Ed. 381, 54 S. Ct. 223 (1933), the Supreme Court said that:

     Congress did not intend that a person, by reason of a bona fide
     misunderstanding as to his liability for the tax, as to his duty to
     make a return, or as to the adequacy of the records he maintained,
     [**7]  should become a criminal by his mere failure to measure up to
     the prescribed standard of conduct.

This was evidently so because "the proliferation of statutes and regulations has
sometimes made it difficult for the average citizen to know and comprehend the
extent of the duties and obligations imposed by the tax law." Cheek, 59 U.S.L.W.
at 4051.

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   n1 In other circumstances, the Supreme Court has also derived from the word
"willfully" a requirement of specific intent. Screws v. United States, 325 U.S.
91, 101, 89 L. Ed. 1495, 65 S. Ct. 1031 (1945) (construing 18 U.S.C. § 242,
dealing with violations of civil rights, as requiring specific intent in a
federal criminal prosecution of local law enforcement officers who arrested a
black for a state offense and then wrongfully beat him to death).

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   Apparently no case has compared and analyzed the competing arguments, i.e.,
whether the word "willfully" requires either a showing of specific intent, as
suggested by Moran, or the more generalized intent suggested by the government.
Indeed, a leading text  [**8]  writer acknowledges that there are two divergent
lines of cases, one of which requires specific intent and another which does
not. 3 M. Nimmer & D. Nimmer, Nimmer on Copyright, § 15.01 at 15-5 n. 13 (1990)
(hereinafter Nimmer). As pointed out by the government, some courts have
suggested that "willful" only means an intent to copy, not to infringe.  Backer,
134 F.2d at 535; Taxe, 380 F. Supp. at 1017. On the other hand, as suggested by
Moran, other courts have seemingly required evidence of specific intent. Heilman
, 614 F.2d at 1137-38; Wise, 550 F.2d at 1194. At least two courts have
specifically approved jury instructions essentially stating that an act of
infringement done "willfully" means an act voluntarily and purposely done with
specific intent to do that which the law forbids, that is to say, with bad
purpose either to disobey or disregard the law.  Cross, 816 F.2d at 300-01;
United States v. Rose, 149 U.S.P.Q. (BNA) 820 (S.D.N.Y. 1966) (quoted in Nimmer,
supra, § 15.01 at 15-6 n. 13). None of the cases recognize that there are
divergent lines of cases on this point, and none of the cases endeavor to
explain why one line of cases is more compelling  [**9]  than the other.

   I am persuaded that under 17 U.S.C. § 506(a) "willfully" means that in order
to be criminal the infringement must have been a "voluntary, intentional
violation of a known legal duty." Cheek, 59 U.S.L.W. at 4052. I am so persuaded
because I believe that in using the word "willful" Congress intended to soften
the impact of the common-law presumption that ignorance of the law or mistake of
the law is no defense to a criminal prosecution by making specific intent to
violate the law an element of federal criminal copyright offenses. I came to
this conclusion after examining the use of the word "willful" in the civil
copyright infringement context and applying that use to the criminal statute. n2
Wise, 550 F.2d at 1188 n. 14 (There is  [*1050]  a general principle in
copyright law of looking to civil authority for guidance in criminal cases).

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   n2 The legislative history regarding the use of the word "willful" in the
statutes criminalizing copyright infringement is not helpful. It has been a
criminal offense to willfully infringe a copyright for profit since at least
1909. Copyright Act of 1909, ch. 320, 60 Stat. 1082 at § 28. With the exception
of inserting the phrase "for purposes of commercial advantage or private
financial gain" for the word "profit," a change thought not to be material,
Nimmer, supra p. 6, § 15.01 at 15-1 n. 1, the present statute is nearly
identical to the 1909 statute.  17 U.S.C. § 506(a) (1976). The legislative
history of the 1976 revision of the criminal statute does not explain what
Congress meant by the use of the word "willful." H.R. Rep. No. 1476, 94th Cong.,
2d Sess. at 163-164, reprinted in 1976 U.S. Code Cong. & Admin. News 5659,

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   In the civil context there is "strict liability" for infringement, even where
the infringement was "innocent." United States v. Bily, 406 F. Supp. 726, 733
(E.D. Pa. 1975) (comparing civil and criminal copyright law). In this
connection, a plaintiff in a civil case need not prove actual damages, but
rather may seek what are called statutory damages. The term "willful" is used in
the context of statutory damages, and it is instructive to compare the
definition of the term "willful," as used in the civil context regarding
statutory damages, with the definition of the term "willful" used in the
criminal context.

   In the statutory damage context, a civil plaintiff is generally entitled to
recover no less than $ 250.00 nor more than $ 10,000.00 per act of infringement.
17 U.S.C. § 504(c)(1). But where the infringement is committed "willfully," the
court in its discretion may increase the award of statutory damages up to a
maximum of $ 50,000.00 per act of infringement. 17 U.S.C. § 504(c)(2). On the
other hand, in the case of "innocent infringement," if the defendant sustains
the burden of proving he/she was not aware, and had no reason to believe, that
his/her acts constituted an infringement  [**11]  of the copyright, and the
court so finds, the court may in its discretion reduce the applicable minimum to
$ 100.00 per act of infringement. 17 U.S.C. § 504(c)(2). See H.R. Rep. No. 1476,
94th Cong., 2d Sess. at 162-163, reprinted in 1976 U.S. Code Cong. & Admin. News
5659, 5778-79.

   As noted text writers have concluded, the meaning of the term "willful," used
in 17 U.S.C. § 504, must mean that the infringement was with knowledge that the
defendant's conduct constituted copyright infringement. Nimmer, supra p. 6, §
14.04[B][3] at 14-40.3-14-40.4 (citations omitted). Otherwise, there would be no
point in providing specially for the reduction of awards to the $ 100.00 level
in the case of "innocent" infringement since any infringement which was
nonwillful would necessarily be innocent.

   The circuit courts of appeal which have considered the issue have all adopted
Nimmer's formulation with regard to the meaning of the word "willful" for
purposes of 17 U.S.C. § 504(c)(2) and statutory civil damages.  Cable/Home 
Communication v. Network Productions, 902 F.2d 829, 851, 15 U.S.P.Q.2D (BNA)
1001 (11th Cir. 1990); Broadcast Music, Inc. v. Xanthas, Inc., 855 F.2d 233, 236
(5th Cir. 1988); RCA/Ariola  [**12]  Int'l, Inc. v. Thomas & Grayston Co., 845
F.2d 773, 779 (8th Cir. 1988); Fitzgerald Publishing Co., Inc. v. Baylor 
Publishing Co., Inc., 807 F.2d 1110, 1115 (2d Cir. 1986). In other words, the
term "willful," when used in the civil statutory damage statute, has
consistently been interpreted to mean that the infringement must be "with
knowledge that the defendant's conduct constitutes copyright infringement."
Nimmer, supra p. 6, § 14.04[B][3] at 14-40.3-14-40.4.

   There is nothing in the text of the criminal copyright statute, the overall
scheme of the copyright laws, or the legislative history to suggest that
Congress intended the word "willful," when used in the criminal statute, to mean
simply, as the government suggests, an intent to copy.  Rather, since Congress
used "willful" in the civil damage copyright context to mean that the
infringement must take place with the defendant being knowledgeable that his/her
conduct constituted copyright infringement, there is no compelling reason to
adopt a less stringent requirement in the criminal copyright context.
Accordingly, I find that "willfully," when used in 17 U.S.C. § 506(a), means a
"voluntary, intentional  [*1051]  violation of a  [**13]  known legal duty." n3
Cheek, 59 U.S.L.W. at 4051.

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   n3 The Manual of Model Criminal Jury Instructions for the District Courts of
the Eighth Circuit, Instruction 7.02 at 291 (1989 Revised Edition) (West 1990)
(hereinafter Manual), suggests that no instructions are recommended regarding
the term "willfully" except in criminal tax cases and odometer fraud cases. The
reason for this suggestion is that in most cases, as the Manual suggests, the
words "voluntarily and intentionally" replace the word "willfully." Id. The
Manual recognizes that in tax cases and odometer fraud cases "willfully" should
be defined as, "An act is done 'willfully' if done voluntarily and intentionally
with the purpose of violating a known legal duty." Id. (citations omitted).
However, as the committee comments to the Manual suggest, there may be other
statutes in which "willfully" requires specific intent. Id. This is one of those

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   Having determined that the standard enunciated by the Supreme Court in Cheek,
498 U.S. 192, 112 L. Ed. 2d 617, 59 U.S.L.W.  [**14]  4049, 111 S. Ct. 604, 67
A.F.T.R.2d (P-H) 344, applies, it is important to recognize that the rule does
not require that a defendant's belief that his conduct is lawful be judged by an
objective standard. Rather, the test is whether Moran truly believed that the
copyright laws did not prohibit him from making one copy of a video cassette he
had purchased in order to "insure" against vandalism. In other words, the test
is not whether Moran's view was objectively reasonable, but rather, whether
Moran truly believed that the law did not proscribe his conduct.  Cheek, 59
U.S.L.W. at 4052-53. Of course, the more unreasonable the asserted belief or
misunderstanding, the more likely it is that the finder of fact will consider
the asserted belief or misunderstanding to be nothing more than simple
disagreement with known legal duties imposed by the law, and will find that the
government has carried its burden of proving knowledge. Id. at 4053.

   Most of the government's argument that it proved beyond a reasonable doubt
that Moran violated the criminal copyright statute, even if the word "willfully"
is defined as Moran suggests, is based upon the assumption that Moran's beliefs
must be "objectively" reasonable. As indicated above,  [**15]  Moran's beliefs
need not have been objectively reasonable; rather, if Moran truly believed that
he was not subject to the copyright laws, then his subjective belief would
defeat a finding that he "willfully" violated the statute.

   First, I note that I had an opportunity to observe Moran when he testified.
Moran struck me as an honest, albeit naive, person. I was left with the definite
impression that Moran was befuddled and bewildered by the criminal prosecution.

   Second, although Moran is a local police officer of long standing, there is
nothing in his background to suggest any particular sophistication about
business matters, and there is no evidence to suggest that he has any particular
knowledge about the intricacies of the copyright laws. When confronted by FBI
agents upon the execution of the search warrant, Moran was entirely cooperative.
On the day the search warrant was executed, he told his story in the same way he
now tells his story.

   Third, Moran said he had heard from others and read in various publications
that it was legally appropriate to engage in the practice he called "insuring."
Moran could not cite the specific source of his information. In this regard, I
note that  [**16]  the copyright laws permit libraries and archives to replace a
copyrighted article that is damaged, deteriorated, lost, or stolen, if the
library or archives have, after reasonable effort, determined that an unused
replacement cannot be obtained at a fair price.  17 U.S.C. § 108(c). While Moran
obviously did not operate his business as a library or archives, the government
's assertion that the practice of "insuring" is patently unreasonable is belied
by the recognition that under certain circumstances certain users of copyrighted
materials may lawfully engage in copying activity which is similar to Moran's

   Fourth, Moran testified that he made only one copy of the original motion
picture purchased from the authorized distributor. The government doubts his
testimony, but offers no persuasive evidence to contradict  [*1052]  it.
Moreover, Moran testified that he never rented both the original copyrighted
version of the video cassette purchased from the authorized distributor and the
copy he made. Instead, he testified that he always held back the original motion
picture. Once again, the government doubts this testimony in its brief, but
offers no persuasive evidence to the contrary.  Furthermore,  [**17]  the
evidence indicates that Moran purchased more than one authorized cassette of a
particular motion picture, but made only one duplicate for each authorized
cassette purchased.

   This evidence suggests that Moran was not acting with a willful intention to
violate the copyright laws because if he had such an intention it would make
absolutely no sense to purchase multiple authorized video cassettes and then
make only one duplicate of each authorized cassette. It would have been far
simpler, and certainly more lucrative, for Moran to purchase one authorized
cassette of a particular motion picture and make multiple copies from the
authorized version. In this way Moran would have had to pay only one fee. The
fact that Moran seems to have consistently followed the practice of buying an
authorized version, but making only one copy of it, suggests that he was acting
in accordance with his belief that to duplicate an authorized version in order
to "insure it" was lawful so long as only one copy was made and the authorized
version and copy were not both rented.

   Fifth, the government argues that Moran must have known that what he was
doing constituted a copyright infringement because he had  [**18]  before him
the FBI warning label and in fact affixed such labels to the unauthorized copies
he made. In pertinent part, the FBI warning states, "Federal law provides severe
civil and criminal penalties for the unauthorized reproduction, distribution or
exhibition of copyrighted motion pictures and video tapes" (emphasis added).
Moran explained that he thought these warning labels applied to the renting
public, not to him. The use of the word "unauthorized" on the warning label
suggested to Moran that vendors who had purchased an authorized version were not
subject to the legal restrictions expressed in the warning to the extent that
the practice of "insuring" was legal. As Moran suggests, the FBI warning label
does not specifically address the claim of legality professed by Moran.
Accordingly, Moran's failure to heed the warning label is not determinative.

   Sixth, the government further argues that Moran's effort to place the
unauthorized copy into a video cassette package displaying a label on its spine
and an FBI warning label suggests a sinister motivation. I disagree.  Moran's
testimony, as I understood it, indicated that when he made a copy he endeavored
to make the duplicate look  [**19]  like the original in all respects. After
all, the whole purpose of the practice of "insuring" was to use the unauthorized
copy in lieu of the original when renting to the public. It was perfectly
consistent with Moran's view of the law to make the unauthorized copy look as
nearly as possible like the authorized version.

   In summary, when Moran's actions were viewed from the totality of the
circumstances, the government failed to convince me beyond a reasonable doubt
that Moran acted willfully. Moran is a long-time street cop who was fully
cooperative with law enforcement authorities. He is obviously not sophisticated
and, at least from the record, his business operation of renting movies to the
public was not large or sophisticated. Rather, Moran's business appears to have
been of the "mom-and-pop" variety. Moran's practice of "insuring," while
obviously shifting the risk of loss from Moran to the copyright holder, was
conducted in such a way as not to maximize profits, which one assumes would have
been his purpose if he had acted willfully. For example, Moran purchased
multiple authorized copies of the same movie, but he made only one unauthorized
copy for each authorized version  [**20]  purchased. This suggests that Moran
truly believed that what he was doing was in fact legal. I therefore find Moran
not guilty.  n4

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   n4 At the close of the government's case, Moran moved for judgment of
acquittal. I took his motion under advisement. Moran then offered evidence.
Based upon the evidence submitted by the government and the evidence submitted
by Moran, I find Moran not guilty in my capacity as a finder of fact. Therefore,
I need not rule, and do not decide, whether the motion for acquittal should have
been granted.

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   IT IS ORDERED that the Clerk of the United States District Court for the
District of Nebraska shall, pursuant to Federal Rule of Criminal Procedure
32(b)(1), enter judgment in favor of the defendant, Dennis Moran, and against
the United States of America on the court's finding that the defendant is not