use in order to comment on the reliability of electronic voting.^2863 On Nov. 4, 2003, the court
ordered Diebold to show why a preliminary injunction should not be issued to prevent Diebold
from threatening to sue ISPs. In Dec. 2003, the court dismissed the plaintiffs’ motion for the
preliminary injunction as moot, after Diebold represented that it no longer demanded that the
plaintiffs or any other party cease and desist using Diebold’s email archive for noncommercial
critical purposes. Diebold also agreed that it would retract all outstanding DMCA safe harbor
notifications to ISPs concerning the email archive and would not issue such notifications to any
party in any jurisdiction in the future.^2864
In a subsequent action, one of the ISPs and two individual Swarthmore students who
originally posted the Diebold emails on various websites sued Diebold, among other things, to
recover damages and attorneys’ fees under Section 512(f) of the DMCA on the ground that
Diebold’s claims of copyright infringement were based on knowing material
misrepresentations.^2865 Section 512(f) of the DMCA provides:
Any person who knowingly materially misrepresents under this section –(1) that material or activity is infringing, or(2) that material or activity was removed or disabled by mistake or
misidentification,shall be liable for any damages, including costs and attorneys’ fees, incurred by
the alleged infringer, by any copyright owner or copyright owner’s authorized
licensee, or by a service provider, who is injured by such misrepresentation, as the
result of the service provider relying upon such misrepresentation in removing or
disabling access to the material or activity claimed to be infringing, or in
replacing the removed material or ceasing to disable access to it.In adjudicating the plaintiff’s Section 512(f) claim, the court first had to determine the
validity of Diebold’s claims that publication of its email archive constituted copyright
infringement. The court concluded that publication of at least some of the email archive
constituted fair use and was therefore not infringing. With respect to the purpose of the use, the
court noted that discussion of problems associated with Diebold’s electronic voting machines
was clearly in the public interest. Moreover, Diebold had identified no specific commercial
purpose or interest affected by publication of the archive, and there was no evidence that Diebold
itself had intended to or could profit from such content. Finally, the plaintiffs’ use of the
material was transformative, in that they used the email archive to support criticism that was in
(^2863) “ISP Rejects Diebold Copyright Claims Against News Website,” available as of Jan. 17, 2004 at
http://www.eff.org/Legal/ISP_liability/20031016_eff_pr.php. The suit, Online Policy Group v. Deibold, Inc., was
filed in federal court in San Jose.
(^2864) “Electronic Voting Firm Drops DMCA, Copyright Charges Against ISPs,” Mealey’s Litigation Report:
Intellectual Property (Dec. 15, 2003) 13-14.
(^2865) Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1198 (N.D. Cal. 2004).