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When a California appeal court ruled last year that the First Amendment trumps the state’s trade secrets law, few could have anticipated The Coca-Cola Co. stepping in months later to say the decision threatens the 116-year-old secret formula of the company’s trademark beverage. Or that corporate America would arise almost as one in righteous anger. But that’s exactly what’s happened. Atlanta-based Coke has joined with a legion of Fortune 500 companies and highly influential organizations, such as the Motion Picture Association of America and the National Football League, in filing amicus curiae briefs with the California Supreme Court in hope of getting the November ruling overturned. What’s got everyone up in arms is the 6th District Court of Appeal’s Nov. 1 ruling in DVD Copy Control Association Inc. v. Bunner, S102588. The San Jose court’s unanimous decision overturned a preliminary injunction ordering Andrew Bunner and others to remove from their Web sites Internet links that direct viewers to DeCSS, a computer code that helps unscramble encrypted DVDs. Bunner sent a shock through the business world, which fears that the ruling will lead to rampant trade secret theft by making it nearly impossible to block the distribution of malicious software programs. The California Supreme Court, which granted review in Bunner in February, has been flooded with amicus briefs on behalf of 42 companies or organizations — with most taking industry’s side. “If the decision is affirmed,” University of Chicago Law School Professor Richard Epstein writes, “businesses will no longer be able to rely on California courts to preserve a wide range of trade secrets, from customer lists to blueprints to industrial know-how — even the secret formula for Coca-Cola.” Epstein’s brief was written not only for Coke, but also for Microsoft Corp., Ford Motor Co., The Boeing Co., Sears, Roebuck & Co., Procter & Gamble Co., AOL Time Warner Inc., BellSouth Corp. and the National Association of Manufacturers. Amicus briefs are a natural part of any supreme court case, but the sheer volume and powerhouse nature of those filed in the DVD case are noteworthy. And University of California, Berkeley’s Boalt Hall School of Law Professor Stephen Barnett says it’s a trend that’s likely to continue. “I would say that amicus filings are more and more making the judicial process increasingly like the legislative one,” he says. “That’s essentially an observation on the number of amicus filings and the influence they have.” Barnett’s view is borne out by other cases pending before the California Supreme Court. At least 13 groups have signed on as amici in Intel Corp. v. Hamidi, S103781, in which the high court will determine whether the 3rd District was correct when it ruled that a former Intel employee trespassed on the company’s computer system by sending e-mail messages to employees. The amici range from the American Civil Liberties Union and the Service Employees International Union on behalf of Kourosh Hamidi to the U.S. Chamber of Commerce and the Civil Justice Association of California for Intel. And, if Professor Barnett is correct, the amici in both the Intel and DVD cases could make a difference. “Judges are human,” he says, “and, especially in a tough case where they may be undecided, they are affected by the sheer number and lineup of the amici.” Based on that presumption, the high court has a daunting task evaluating the views of the amici, or “friends of the court,” that have poured in for Bunner. The ruling was one of two by the 6th District last year that dealt with alleged DVD piracy. The first, Pavlovich v. Superior Court ( DVD Copy Control), S100809, will be heard by the supreme court on Sept. 5 in San Francisco. In that case, the 6th District held that an out-of-state college student can be made to answer in California for running a Web site that reportedly lets users pirate films on DVD in violation of state copyright law. Only three amici weighed in on that case — and all of them on the student’s side. Corporate America is instead focusing on Bunner. Besides Coke and its colleagues, DVD Copy Control is backed by California Attorney General Bill Lockyer, the Intellectual Property Owners Association, and 24 entertainment and sports organizations ranging from the Screen Actors’ Guild to the National Hockey League and the Office of the Commissioner of Baseball. “Without adequate legal protection for the trade secrets and other intellectual property that permit [Control Scramble System] and similar security measures to function,” David Kendall, a partner in Washington, D.C.’s Williams & Connolly writes, “piracy of intellectual property … threatens to go unchecked, causing future artistic creation and technological innovation to be chilled.” Bunner and his pals, meanwhile, have the support of the ACLU and the Silha Center for the Study of Media Ethics. Both say the defendants cannot have violated the California Uniform Trade Secrets Act because that act requires the information sought to be secret: DeCSS had been posted by a Norwegian teen-ager long before Bunner acquired it and was available on Web sites in 11 countries. “The only issue presented by this case is whether the First Amendment permits an injunction prohibiting the disclosure by third parties of lawfully obtained and widely disseminated information because its origins may be of questionable pedigree,” San Francisco ACLU lawyer Ann Brick writes. “The answer to that is no.” As the amici engage in a war of written words, the lead attorneys on each side welcome their input. “The fact that many Fortune 500 companies and the AG of California have thought it appropriate to enter this case will make clear to the court how critical the issue is,” says DVD Copy Control lawyer Robert Sugarman, a partner in New York’s Weil, Gotshal & Manges. “The California AG, who is normally a very staunch supporter of First Amendment rights, takes the position that the First Amendment should not bar an injunction against the theft of trade secrets.” In a brief written by Deputy Attorneys General Regina Brown and Emilio Varanini IV, the AG’s office says it has a “keen interest” in ensuring free-speech values in the cyberworld. “Nevertheless, that free-speech claim cannot be used to facilitate the wholesale piracy of DVDs via the Internet, in defiance of federal and state intellectual property law,” Brown and Varanini write. “The Internet cannot serve as a safe harbor where people can escape criminal or civil liability for conduct which would violate federal or state law in the physical world.” David Greene, executive director of the Oakland, Calif.-based First Amendment Project, which represents the defendants, expresses little worry about the muscular amici weighing in against him. “What amicus briefs are supposed to do is provide expertise to the court that the parties either do not have or have not had the opportunity to present,” he says. “And I don’t believe the amicus supporting DVD Copy Control do that. They just try to argue the same case [from the lower court].” In addition, Greene says he thinks the opposing amici also ask the supreme court to rule on issues of law not raised by the 6th District opinion. “They’re asking the supreme court to change the fundamental nature of how the California Supreme Court defines trade secrets,” he says. “They’re asking to transform trade secrets from a right based on relationships and duties to a right against the general public.” Meanwhile, two sets of amici go off on their own tangent, less interested in the free-speech issues than in trying to ensure that the supreme court not upset the concept of “reverse engineering.” Under this process, researchers can start with a known product and work backward to find the method by which it was developed and, theoretically, make new discoveries. While supporting affirmance of the 6th District ruling, the Computer Professionals for Social Responsibility, the Intellectual Property Law Professors — including Boalt Hall’s Barnett — and two other groups argue that reverse engineering is vital to innovative research. “A lock purchaser’s reverse engineering of his own lock, and subsequent publication of a method he discovered to duplicate keys for these locks,” Stanford lawyer Jennifer Granick writes for the computer professionals, “is an example of independent invention and reverse engineering expressly allowed by trade secret law.” Maybe so, but the attorney general’s lawyers say that’s not what happened in the DVD case. Instead, they argue, a “Norwegian hacker” created the DeCSS source code by reverse engineering an encryption algorithm and master key from a version licensed to someone else. “The attorney general will argue that, whereas reverse engineering towards a legitimate end, such as achieving software interoperability or creating a new product, is lawful and protected under the UTSA, reverse engineering towards an illegitimate end, such as the creation of a de-encryption program to facilitate content piracy, is not.” Lead plaintiffs and defense lawyers Sugarman and Greene don’t believe the reverse engineering issue will be a big factor in a case focused on First Amendment law versus trade secrets law. “That was not an issue that the court of appeal even considered, no less decided,” Sugarman says. All in all, though, the briefs are shaping up to be interesting reading for the supreme court justices. If they decide the injunction was improper as a matter of trade secrets law, that may be the end of it. But if the decision implicates the First Amendment, expect the case, with all its big-ticket implications, to move on to the U.S. Supreme Court. And then watch the amici wars start all over again.

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