President Bush's pick to succeed Justice Sandra Day O'Connor was part of the three-judge panel that threw out a section of the Digital Millennium Copyright Act that would have given entertainment comp

WASHINGTON, D.C. (The Hollywood Reporter) -- President Bush's pick to succeed Justice Sandra Day O'Connor was part of the three-judge panel that threw out a section of the Digital Millennium Copyright Act that would have given entertainment companies an expedited way to identify alleged copyright pirates on the Internet.

In a December 2003 ruling, Judge John Roberts joined two other appellate court judges in overturning a ruling that the DMCA subpoena was constitutional. Roberts was nominated to the Supreme Court by Bush on July 19.

In its opinion, the panel dismissed arguments by the Recording Industry Assn. of America that peer-to-peer services are simply an extension of the central-server technology that was around when Congress approved the DMCA in 1998. The DMCA subpoena requires Internet service providers to turn over the identity without a judge's order. The panel rejected one of the RIAA's key arguments that the subpoenas were legal even if the P2P technology wasn't invented when the DMCA was approved.

"The RIAA argues that the definition of 'Internet' service provider (in the law is) applicable to an ISP regardless what function it performs with respect to infringing material -- transmitting it ... caching it ... hosting it ... or locating it," Judge Douglas Ginsburg wrote for the panel. "This argument borders upon the silly."

During questioning by the panel in September 2003, Roberts was one of the most active judges on the panel as he grilled attorneys representing the RIAA and Verizon. At the time, the battle over the DMCA between the nation's biggest phone company and Verizon was one of the most hotly contested in copyright law.

Roberts wondered at the time whether the fact that copyrighted files were publicly accessible on someone's computer necessarily means that the Internet user is illegally distributing those files.

"Isn't it equivalent to my leaving the door to my library open?" Roberts asked music industry attorney Don Verrilli Jr. "Somebody may come in and copy my books, but that doesn't mean I'm liable for copyright infringement."

While Roberts expressed serious doubts about the viability of the subpoenas, he was equally concerned with Verizon's contentions that copyright holders should have to go before a judge.

"Shouldn't we read the law to solve the problems Congress meant to solve?" he asked Verizon attorney Andrew McBride.

McBride answered by spelling "S-O-N-Y" in a reference to the Sony Betamax case, which turned back entertainment industry challenges to the VCR. He told the judges that the RIAA's move was the same knee-jerk reaction to new technology that it has had from piano rolls to the computer.

But Roberts also questioned Verizon's motives.

"You make a lot of money off piracy," Roberts said to McBride, pointing out that people who download large collections of music traditionally favor high-speed Internet connections like those offered by Verizon's Internet subsidiary.

In the end, though, Roberts sided with Verizon, joining Ginsburg and Judge Stephen Williams as they ordered the lower court to vacate its order enforcing one of the RIAA's DMCA subpoenas and to granting Verizon's motion to quash the another subpoena. The appellate court's order was upheld by the Supreme Court when it refused to hear the RIAA's appeal.

While there was a pitched legal battle over the DMCA subpoena, losing it didn't matter in the end. The RIAA has compelled Internet service providers to turn over the names hundreds of times using "John Doe" litigation and then issuing subpoenas. This has proven to be a potent weapon in the copyright holders' anti-piracy arsenal.

Roberts' decision to join his fellows on the court in the opinion doesn't necessarily mean he would bring an anti-copyright bias to the high court. RIAA president/CEO Mitch Bainwol warned against reading too much into it, saying one opinion does not a justice make.

"That Judge Roberts ruled against us in a case involving the interpretation of a statute would not impact our views on his nomination," Bainwol said. "We will look at any nominee from a broad perspective, not on the basis of any single case. The question relevant to the industry is: Does the nominee show respect for property rights and constitutional freedoms? While we haven't had a chance to do a thorough review of his record, the answer at first blush seems to be yes."