United States District Court, District of Columbia
AMENDED MEMORANDUM OPINION SETTING FORTH FINDINGS OF
FACT AND CONCLUSIONS OF LAW
S. CHUTKAN, UNITED STATES DISTRICT JUDGE
Spanski Enterprises, Inc. (“SEI”) sued Defendant
Telewizja Polska, S.A. (“TVP”) for copyright
infringement under 17 U.S.C. §101 et seq.,
alleging that TVP displayed television show episodes in the
United States over which Plaintiff holds exclusive rights.
court held a five-day bench trial from February 22, 2016
through February 26, 2016, and the parties filed post-trial
briefs on April 1, 2016.
upon the evidence presented at trial, and having reviewed the
parties' submissions, the court makes the findings of
fact and conclusions of law set forth below. Based on these
findings of fact and conclusions of law, the court concludes
that Plaintiff has sustained its burden of proof on its
copyright claim, and that judgment must therefore be entered
in favor of SEI.
the court finds that Plaintiff has carried its burden of
establishing by a preponderance of the evidence that: (1) SEI
was the exclusive licensee and owner of valid copyrights over
51 TVP Polonia episodes discussed herein; (2) TVP infringed
SEI's exclusive copyright on the 51 shows by making them
available in the U.S. via the website www.tvp.pl
from the period of December 2011 to March 1, 2012; (3)
TVP's infringement was volitional and intentional, and
not due to a failure of its geoblocking system or an effort
at circumventing geoblocking by SEI; and (4) Defendant did
not carry its burden of establishing by a preponderance of
the evidence that SEI should be equitably estopped from
bringing this claim.
FINDINGS OF FACT
Whether Plaintiff held valid copyrights for TVP Polonia
witnesses testified about the facts and circumstances
surrounding SEI's claim that it held an exclusive
copyright for TVP Polonia programming in the United States:
(i) SEI President Boguslaw Spanski; (ii) former Loeb &
Loeb attorney Michael Barnett; and (iii) former Loeb &
Loeb paralegal Christian Jensen. The court finds that all
three witnesses testified credibly regarding Plaintiff's
court makes the following findings of fact regarding whether
SEI held a copyright for TVP Polonia episodes in the United
is Poland's national public television broadcasting
company and is owned by the Polish Treasury. (Tr. 280:22-23).
owns and operates twelve national and sixteen regional
Polish-language television channels, including the channel
TVP Polonia. (Stipulated Facts ¶ 3; Tr. 280:21-281:7).
distributes TVP Polonia content, as well as content from
TVP's other channels, through its www.tvp.pl
website (or “TVP website”) in Poland, some of
which is free and some of which is offered on a pay-per-view
basis. (Tr. 283:22-284:11).
creates all TVP Polonia content, and while it owns a
copyright in the material it created, TVP licenses some of
its material to other distributors. (PX 1, § 2; Tr.
is a Canadian corporation which, together with its
subsidiaries and affiliated companies, distributes
Polish-language television and radio content in North and
South America via satellite, cable television, and the
internet. (Stipulated Facts ¶ 1).
December 14, 1994, TVP and SEI entered into an agreement in
which TVP granted SEI the exclusive right to one-time use of
TVP Polonia (then called “TV Polonia”) shows in
its programming in North and South America (the
“Territory”). (PX 1, § 2).
and SEI executed an Addendum to the 1994 Agreement in 1999,
giving SEI the exclusive right to use-e.g., distribute,
broadcast, and display-TVP Polonia content over the internet
within the Territory. (PX 2, § 1).
and TVP engaged in discussions involving geoblocking content
as early as 2000. (PX 44; Tr. 26:4-16).
a. Geoblocking is a method to prevent user access to a
network, based on the geographic location of that user. (DX 7
Beginning in 2007, TVP and SEI engaged in litigation in the
Southern District of New York, which resulted in a 2009
Settlement Agreement specifying that SEI is the exclusive
licensee of TVP Polonia, including its copyrighted content,
in the Territory. SEI therefore has the exclusive right to
distribute, broadcast, perform, and display TVP Polonia
content, including over the internet and mobile devices, in
the United States. (PX 10§ II.A-B; see also Tr.
of Motions Hearing, dated July 9, 2015 [ECF No. 33] at
73:15-18; DX 9; Tr. 46:19-25-47:4).
Polonia's individual episodes are all foreign works. (Tr.
20:25-21:9; Tr. 283:4-11).
registered 51 separate individual TVP Polonia episodes for
copyright in 2012. (PX 34, 35, 36).
a. Between January 18, 2012 and February 14, 2012, SEI,
through then Loeb & Loeb attorney Michael Barnett and
then Loeb & Loeb paralegal Christian Jensen, filed
pre-registration applications with the U.S. copyright office
for 51 TVP Polonia episodes. (PX 34, 49).
b. SEI pre-registered these episodes prior to having any
knowledge that they were available in the United States on
TVP's website. (Tr. 202:9-25).
c. The 51episodes are Galeria episodes 4 - 25,
Gleboka woda episode 13, M jak Milosc
episodes 884 - 895, Plebania episodes 1825 - 1829,
and Rezydencja episodes 48 - 58. (Stipulated Facts
para 15; PX 34).
d. Between February 8, 2012 and March 8, 2012, SEI registered
the 51 episodes with the U.S. Copyright Office. (PX 34 and
e. Between February 13, 2012 and March 13, 2012, the U.S.
Copyright Office issued copyright registration certificates
for the 51 Episodes. (PX 35).
f. The original copyright registrations were made under the
name “Euro Vu, S.A., ” and on May 31, 2012, the
U.S. Copyright Office issued supplemental registrations
changing the copyright claimant name for the 51 episodes from
“Euro Vu, S.A.” to “Spanski Enterprises,
Inc.” (PX 36). Euro Vu, S.A. is a subsidiary of SEI.
(Compl. ¶ 17).
part of the copyright process, Christian Jensen made
recordings in the U.S. of 36 of the 51 episodes for the
purpose of having deposit copies. The 36 episodes are
Galeria episodes Nos. 4-14; M jak Milosc
episodes Nos. 884-894; Plebania episodes Nos.
1825-1829; and Rezydencja episodes Nos. 48-56. (PX
38, Tr. 223:18-228:19). The remaining 15 episodes of the 51
were filmed outside of the U.S. for deposit copy purposes.
(Tr. 190:8-17; PX 38, 45).
witnesses testified about the facts and circumstances
surrounding TVP's geoblocking capability: (i) TVP Deputy
Director for Informatics or Computer Technology in the
department of TVP technology Jacek Terlicki; (ii) TVP expert
witness Dr. Phillip Hallam-Baker; and (iii) SEI expert
witness Dr. Matthew Edman. The court finds the testimony of
Terlicki on the subject of whether there was a failure of
geoblocking to have been severely undermined by other
credible testimony and evidence. Similarly, as set forth in
more detail below, the court finds that much of Dr.
Hallam-Baker's testimony was not supported by the
evidence, and that on cross-examination, he was unable to
provide credible explanations for many of his conclusions.
court makes the following findings of fact regarding
TVP's geoblocking capability:
uses an online video-on-demand (“VOD”) system to
make programming available to the public through the
internet. (Tr. 283:22-24). Individuals access content by
entering the web portal at www.tvp.pl, then
selecting an episode from a list of programming. (Tr.
VOD function works through an online distribution system that
has four main components: (a) the Workflow System, which
accepts video content in various source formats and converts
those formats to the formats required for online
distribution; (b) the Content Management System
(“CMS”), which allows descriptive information to
be added to material loaded to the Workflow System; (c) the
Web Portal Engine (“Portal Engine”), which
creates the internet user's website viewing experience
(except for the video content, which is separately handled)
from information supplied by the CMS system, and (d) the
Content Delivery Network, which delivers the video content to
internet users. (DX 7 at 4-5).
First, the workflow system receives the actual video of TVP
programming that will be displayed online. Audio/visual
(“AV”) technicians receive the video of an
episode from the production department, and then convert it
into video formats which can be viewed from computers, smart
phones, or other devices that can access the internet. (DX 7
a. When AV technicians receive a new program to load into the
workflow system, the technicians create a file with a basic
format that is used as a template from which other formatted
files are created. (Tr. 290: 2-9).
b. At times, TVP programming is released through the VOD
system first as a pay-per-view episode, before it is
broadcast to the general public. (Tr. 284:12-23).
c. Each episode receives a format in the workflow system. If
the episode is first released on a pay-per-view basis, it
receives one format, and then after the episode has been
broadcast and is available for free viewing, it is given a
second format. (Tr. 290:2-291:1, 421:17-21).
d. As technology evolved, and demand for higher quality video
grew, TVP modified formats in the workflow system to be MP4
formats, a type of video formatting that allows video to be
streamed on a smartphone. TVP AV technicians were engaged in
changing episode formats in the workflow system to MP4 during
the period of alleged infringement at issue. (Tr.
290:17-291:1, DX 3, 26).
e. Modifications to formats in the workflow system are
retained by TVP for an extended period of time, and TVP was
able, after the initiation of this litigation, to print out
and save workflow logs from the infringing period. (Tr.
317:18-23, 318:12-17, 340:5- 350:4).
i. TVP argues that the workflow system logs displayed in DX 5
show that no modifications were made to the geographic
restrictions in workflow, but, as Plaintiff points out, DX 5
is incomplete. (Compare DX 3 at TVP-Internet 066222
which shows the deletion of format number 342670 for Episode
9 of Galeria, with DX 5 at TVP-internet
000078, which shows the creation and distribution of format
number 342670 for Episode 9 of Galeria, but not its
f. While the court finds that TVP actively engaged in
changing video formats over the infringing period, as
discussed below, reformatting to MP4 was not the reason why
multiple formats for the same episode, some containing a
minus “minus ameryki” (minus America)
restriction-e.g., the episode was geoblocked from being shown
in the Territory-and some not, were created. Rather, the
court finds by a preponderance of the evidence that the
reason was to intentionally make the programming available in
the U.S. (PX 57, Tr. 438:5-440:24).
second part of the system is the CMS. Program editors receive
information such as schedules, show descriptions, plot
summaries, etc., and enter this information into CMS. Program
editors also enter a “digitization card” for each
episode of a show, which is a set of instructions for the AV
technicians who operate the workflow system. The digitization
card contains any territorial restrictions applicable to the
episode, such as minus America. (Tr. 288:3-289:6).
a. The CMS system's default setting is minus ameryki,
which blocks access to the VOD system from IP addresses
associated with any country in the Territory. (Tr. 299:2-23,
b. In order for the default of minus ameryki to be removed in
the CMS, a program editor must take the volitional step of
selecting a different setting from a drop-down menu. (Tr.
c. CMS also logs entries in its system, similar to the
workflow system, but CMS logs are saved only for one month,
then overwritten. Thus, no logs from the infringing period
were saved. (Tr. 315:22-25, 316:14-317:17, 500:6-501:14,
d. Workflow entries for territorial restrictions could also
be seen by the program editors, but they could not edit the
information. (Tr. 291:9-19).
third part of the system is the portal engine, which takes
information entered into CMS, and displays it on a webpage
that can be read in a user's web browser. In addition to
providing all of the visual and text elements of the TVP
website, except for the actual video of the episode, the
portal engine also provides the interface for a user to log
in and access VOD, as well as make payments if the video is
pay-per-view. (Tr. 292:19-293:20).
a. The portal engine also logs the IP addresses of users who
request to view VOD materials through the TVP website, and
whether access to the programming was blocked because it came
from an area that is geo-blocked. However, during the
infringing period, this information was automatically
overwritten after 14 days, and was therefore not available.
(Tr. 311:1-13, 312:5-314:24, DX 1, 2).
b. The portal engine interfaces with TVP's external
payment system, which accepts credit card payment for
pay-per-view access. The portal engine logs this information,
and during the infringing period, according to logs provided
by the Defendant, did not show any IP addresses located in
either North or South America. (DX 24). However, entries 1466
through 4198 show IP addresses that have no listed country of
fourth part of the system is the Content Delivery Network,
which delivers the video content that is pushed from the
workflow system, and displays it on a user's screen. (Tr.
Devices such as computers and smartphones have unique IP
addresses that show where they are located, and, when they
access the internet, allow content to reach the device. (Tr.
Geoblocking is used to prevent user access to a network,
based on the geographic location of that user. (DX 7 at 6).
a. In VOD systems, such as TVP's, the video content is
stored on servers and delivered in response to a request for
access. Geoblocking works by comparing the IP address of the
user requesting access with a third party database. If the
programming is designated to be blocked in the geographic
region where the IP address of a requesting device
originates, then access is denied. (Tr. 284:3-11,
b. Geoblocking is an automated process, and as such, can have
inherent flaws. TVP uses the MaxMind database for its
geoblocking system, which is at least 98% accurate in
blocking IP addresses on a country ...