                           UNITED STATES DISTRICT COURT
                           FOR THE DISTRICT OF COLUMBIA


                                               )
SPANSKI ENTERPRISES, INC.,                     )
                                               )
              Plaintiff,                       )
                                               )
       v.                                      )       Civil Action No. 12-cv-957 (TSC)
                                               )
TELEWIZJA POLSKA S.A.,                         )
                                               )
              Defendant.                       )
                                               )


                     MEMORANDUM OPINION SETTING FORTH
                  FINDINGS OF FACT AND CONCLUSIONS OF LAW

       Plaintiff 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.

       The 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.

       Based 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.

       Specifically, 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.

I.     FINDINGS OF FACT

       A. Whether Plaintiff held valid copyrights for TVP Polonia episodes

       Three 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 copyright.

       The court makes the following findings of fact regarding whether SEI held a copyright

for TVP Polonia episodes in the United States:

           1. TVP is Poland’s national public television broadcasting company and is
              owned by the Polish Treasury. (Tr. 280:22-23).

           2. TVP 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).

           3. TVP 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).

           4. TVP 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. 282:5-10, 283:4-11).

           5. SEI 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).



                                                 2
6. On 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).

7. TVP 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).

8. SEI 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 at 6)

9. 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).

10. TVP Polonia’s individual episodes are all foreign works. (Tr. 20:25-21:9;
    Tr. 283:4-11).

11. SEI 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).




                                     3
                   d. Between February 8, 2012 and March 8, 2012, SEI registered the
                      51 episodes with the U.S. Copyright Office. (PX 34 and 35).

                   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).

           12. As 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).

       B. TVPs geoblocking capability

       Three 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.

       The court makes the following findings of fact regarding TVP’s geoblocking capability:

           1. TVP 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. 284:3-11).



                                                4
2. The 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).

3. 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 at 4-6).

       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).




                                     5
                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 deletion).

       f. While the court finds that TVP actively engaged in changing video
          formats over the infringing period, as discussed below, re-
          formatting 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).

4. The 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, 514:1-3).

       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. 299:12–300:4,
          514:10-21).

       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, 513:3-16).

       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).




                                      6
5. The 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 origin. (Id.).

6. The 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. 293:21–294:1, 305:1-24).

7. 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. 558:14-22, 560:2–561:17).

8. 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, 295:21–296:4, 602:2-10).

       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




                                    7
           addresses on a country level. (Tr. 636:15-638:19, 694:14-17, DX 7
           a 7).

                i. While the court agrees that geoblocking is not a perfect
                   system, and thus is never 100% accurate, the court, as
                   discussed below, does not find that a malfunction of the
                   MaxMind database caused SEI’s copyrighted TVP Polonia
                   episodes to be accessible in the Territory via TVP’s
                   website.

9. TVP has a geoblocking system built into its VOD system, which in 2007
   was activated to block access from the Territory, based on an agreement
   with SEI. (Tr. 295:12-20, 296:5–297: 17). This territorial restriction was
   in place during the infringing period. (Id.).

10. During the infringing period, the CMS and workflow systems had a
    default territorial restriction of minus ameryki. (Tr. 299:2-11).

11. On the workflow system half of the VOD architecture, territorial
    restrictions were emplaced by adding an access channel at the format
    level, which was defined by the type of device (for example, mobile
    phone) and the location (minus ameryki). An AV technician would create
    an access channel for each format based on the territorial restriction in the
    digitization card generated in CMS. Then the AV technician would
    distribute the format with the territorial restriction. (Tr. 302:22–303:7,
    303:24–304:20).

12. Since minus ameryki was the default setting in the CMS system, even if a
    TVP employee did not enter a territorial restriction into the workflow
    system, access to the VOD by an IP address in the U.S. would be
    automatically denied unless the territorial restriction in CMS was also
    removed. (Tr. 344:2-14, 602:20–603:9, 604:4-16, DX 7 at 5-6).

       a. Since the default setting in CMS was minus ameryki, a program
          editor would have to select a different setting from a dropdown
          menu to change the geo-block setting in CMS. (Tr. 299:7–
          300:23).

       b. Thus, for an IP address in the Territory to gain access to TVP’s
          VOD, there would either have to be a failure of the geoblocking
          system, or a volitional step by a TVP employee to give access.

13. TVP has used geoblocking for various other non-TVP Polonia content on
    its website, including broadcasts of the Olympics and World Cup. (Tr.
    295:12-17, 297:3-8, 307:4-9, 617:2-9, DX 7 at 8).




                                      8
           14. No organization other than SEI reported that TVP’s geoblocking system
               did not work. (Tr. 306:23–308:5, 617:2–618:11, DX 7 at 8).

           15. TVP continually checks the functioning of its geoblocking, and from 2007
               to 2012, tested its effectiveness and found it was functioning. (Tr.
               301:12–302:7).

       C. Whether Defendant infringed Plaintiff’s copyrights

       Five witnesses testified about the facts and circumstances surrounding SEI’s claim that

TVP infringed its exclusive copyright over TVP Polonia programming: (i) Michael Barnett; (ii)

Christian Jensen; (iii) Jacek Terlicki; (iv) Loeb & Loeb network operations manager Courtney

Spence; and (v) Tomasz Gladkowski, a contractor who provided website development and

monitoring services to Plaintiff (Gladkowski was deceased at the time of trial, but his deposition

testimony was presented). The court finds that Barnett, Jensen, Spence and Gladkowski testified

credibly. The court finds Terlicki’s testimony to have been credible in some respects, but also

finds some aspects of it to have been less than credible and contradicted by other, more reliable

testimony and evidence. Moreover, the court notes that Barnett, Jensen, and Gladkowski were

tasked with checking and reporting on whether TVP programming was available without charge

on the TVP website, and finds that while they may not have had specific recollections of viewing

each individual episode, their testimony, taken together, was sufficient to show that the

registered episodes were available for viewing and viewed in the U.S.

       The court makes the following findings of fact regarding whether TVP infringed SEI’s

copyright in the United States:

       1. SEI held a valid copyright for 51 episodes of TVP Polonia. (PX 35, 36).

       2. As 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. He did so
          by going to the TVP website and accessing the recordings. None of these
          episodes should have been available in the U.S. under the geoblocking
          agreements between TVP and SEI. The 36 episodes are Galeria episodes
          Nos. 4-14; M jak Milosc episodes Nos. 884-894; Plebania episodes Nos.


                                                 9
   1825-1829; and Rezydencja episodes Nos. 48-56. (PX 34, 38, Tr. at 223:18-
   228:19).

           a. Michael Barnett also viewed TVP episodes through TVP’s website
              in the U.S. at the Loeb & Loeb office in Manhattan, and at his
              home in Brooklyn, New York. While Barnett could not testify as
              to which specific episodes of the 51 he viewed, his general
              recollection adds credence to Jensen’s recordings and testimony.
              (Tr. 168:18-22; 172:15-21, 197:18-198:16).

                   i. Barnett testified that he was able to click on videos on
                      TVP’s website, and they were available to view without
                      charge. He then watched portions of multiple TVP serial
                      show episodes. (Tr. 169:10–170:18; 171:13-20).

                  ii. Barnett was able to capture screenshots of six of the fifteen
                      registered episodes that were not recorded by Jensen. (PX
                      40 at SEI-INTERNET 0000273).

           b. Tomasz Gladkowski testified that he was able to access TVP
              content, including the registered episodes, in Canada between
              December 2011 and March 2012, and that he checked the website
              almost daily during that period. (Gladkowski Dep. 22:9-24).
              Because TVP’s geoblocking system set North and South America
              as a restriction, programming that would be blocked in the U.S.
              would also be blocked in Canada, and programming available in
              Canada would also be available in the U.S. (Tr. 299:12-16, 603:1-
              15).

           c. The testimony of Barnett, Jensen, and Gladkowski established that
              TVP content was available in the U.S. free of charge and viewed
              on the internet from December 2011 to March 2012.

3. The court credits the testimony of the SEI witnesses that they did not attempt
   to circumvent TVP’s geoblocking when they viewed the copyrighted shows in
   North America, and there was no evidence to indicate that such attempts were
   made.

           a. Both Barnett and Jensen testified that when they viewed the TVP
              serial shows in the United States, they did so from the Loeb &
              Loeb offices, and at home, and did not use a proxy server or virtual
              private network which could trick geoblocking technology.

                   i. Barnett stated he did not use either technology. (Tr. 171:9–
                      172:14; 180:21–181:2, 190:8–191:2, 214:11-22)

                  ii. Barnett stated that he did not order Mr. Jensen to use any
                      geoblock evading technology. (190:22-25).


                                        10
              iii. Jensen stated he did not use geoblock evading technology.
                   (Tr. 223:21–224:16, 227:8–228:19, 242:19-23).

              iv. Gladkowski stated he did not use geoblock evading
                  technology. (Gladkowski Dep. 16:6-9).

               v. Defendant’s expert witness Dr. Hallam-Baker admitted that
                  TVP had no evidence that Barnett or Jensen had used
                  geoblock evading technology. (Tr. at 653:11-17).

       b. The fact that Barnett and Jensen did not record web session
          information, such as the IP address of the computer they used to
          access the 36 serial shows, does not undermine their testimony.
          Neither Jensen nor Barnett are IT professionals or investigators.

       c. Courtney Spence testified that Loeb & Loeb has software that
          precludes the use of proxy tricking software, and he confirmed that
          any internet traffic from the law firm’s New York office, where
          Jensen recorded the 36 serial shows, would be directed through a
          dedicated circuit located in the U.S., not overseas. (Tr. 769-771,
          PX 67).

       d. Barnett (Tr. 171:3-8) and Gladkowski (Dep. 15:3-16:5, 44:8-
          45:14) testified that some episodes were blocked, while others
          were not, which showed that they were not using geoblock evading
          tools. Additionally, on March 1, 2012, neither Barnett nor Jensen
          could access any more shows without charge. (Tr. 187:21–188:16,
          230:11–231:6). Had they been using geoblock evading
          technology, they would have been able to continue accessing TVP
          Polonia episodes.

4. The court therefore finds that Plaintiff established by a preponderance of
   the evidence that the 51 episodes copyrighted by SEI were available and
   viewed in the U.S. via TVP’s website.

       a. Jensen viewed the 36 shows he preregistered in the U.S. over the
          TVP website, and did not view the 15 that were recorded overseas.
          (Tr. 230:11-19, 240:23–241:12, 276:11-14)

       b. Barnett testified he was able to view the 51 TVP Polonia shows in
          the United States, although he could not recall the specific
          episodes he viewed, and did not create a contemporaneous list.
          (Tr. 197:23–200:21, 203:16–204:16). He also testified that he did
          not have a specific recollection of watching all 51 episodes, but
          that he “certainly watched a lot of episodes and confirmed that
          they were streaming.” (Tr. 200:12-21). Gladkowski also testified



                                    11
                         that he believed he was able to access all of the registered episodes
                         during the relevant period. (Dep. 33:17-18)

                   c. Barnett made screenshots of 6 of the 15 episodes displayed in PX
                      40—Bates number SEI-INTERNET 0000273 (Galeria eps. 16),
                      287 (Galeria eps. 18), 295 (Galeria eps. 17), 296 (Galeria eps. 19),
                      297 (Galeria eps. 20), 351 (Rezydencja eps. 58).

                   d.     The court concludes that Barnett’s, Gladkowski’s, and Jensen’s
                         testimony established by a preponderance of the evidence that all
                         51 registered episodes were in fact available and viewed on the
                         TVP website for free, and Plaintiff’s rights in all 51 were therefore
                         infringed.

           5. The period of infringement was from December 2011 to March 2012. (Tr.
              167:13; 187:21-25).

                        a. On March 1, 2012, Barnett and Jensen could no longer view
                           TVP Polonia programming through TVP’s website. (Tr. 187:21–
                           188:16, 230:11–231:6).

       D. Whether Defendant’s infringement was volitional and willful

       Six witnesses testified about the facts and circumstances surrounding SEI’s claim that

TVP infringed its exclusive copyright over TVP Polonia programming in the United States: (i)

Michael Barnett; (ii) Christian Jensen; (iii) Jacek Terlicki; (iv) Courtney Spence; (v) Dr. Phillip

Hallam-Baker; and (vi) Dr. Matthew Edman. The court found the testimony of Dr. Hallam-

Baker to be unhelpful in determining whether the infringement was volitional and willful. Dr.

Hallam-Baker did not speak with TVP employees Tomporowski or Jezewski, (Tr. 667:11-12;

674:11-16), and only speculated about “hypothetical” reasons why TVP’s geoblocking

technology might not have worked. (Tr. 620:20-22). His answers on cross-examination

demonstrated that he did not have a complete understanding of TVP’s geoblocking system, and

he appeared to have done little or no independent research. Moreover, despite his testimony that

geoblocking failure could have been caused by a failure of the Mongo database (Tr. 628:8-11),

Dr. Hallam-Baker admitted that there was no evidence of such a system failure (Tr. 697:11-22),



                                                  12
and that such a scenario was only a “hypothetical” explanation. (Tr. 626:20-22). Similarly, Dr.

Hallam-Baker’s testimony that a geoblocking failure could have occurred from a flaw in the

MaxMind database of IP addresses was mere speculation, since there was no evidence presented

of such a flaw, and Dr. Hallam-Baker conceded that the MaxMind database is 99.8% accurate on

a country basis. (DX 7 at 7).

         The court makes the following findings of fact regarding whether TVP willfully and

volitionally infringed Plaintiff’s copyrights:

       1. TVP acted volitionally in infringing SEI’s copyright. As noted in the court’s findings
          above regarding TVP’s geoblocking technology:

               a. AV technicians manually input regional restrictions into the formats for each
                  episode in the workflow system. (Tr. 302:22–303:7, 303:24–304:20).

               b. The CMS system is set to a default of minus ameryki, and in order for the
                  default to be removed, a program editor must select a different setting from a
                  drop-down menu. (Tr. 299:12–00:4, 514:10-21).

               c. TVP program editors working on the CMS would be able to see any changes
                  to territorial restrictions that were made in the workflow system. (Tr. 291:9-
                  19).

               d. In order to make TVP Polonia programming accessible in North America,
                  TVP personnel working on the workflow system and CMS would have to take
                  specific actions.

               e. Since the court finds that the SEI witnesses did actually view TVP Polonia
                  content in the U.S., it also finds that TVP employees took the required
                  volitional actions to remove territorial restrictions.

       2. TVP acted willfully and intentionally to infringe SEI’s copyright.

               a. The person in charge of TVP’s geoblocking system, Jacek Terlicki, denied
                  that multiple formats of episodes—one geoblocked, the other not
                  geoblocked—were created. Having two formats would enable the territorial
                  restrictions on shows to be changed without having to remove the show from
                  distribution. (Tr. 418:11–419:9).

               b. However, contrary to Terlicki’s assertions on the witness stand, screenshots of
                  the TVP workflow system show that multiple formats were made for episodes,



                                                 13
   and these formats included one with a minus ameryki territorial restriction,
   and one without a territorial restriction. (PX 55, 56, 60, 63, 64).

       i. The workflow screen shots at issue are for episode 894 of M jak
          Milosc, episode 4 of Galeria, episode 52 of Rezydencja, episode 878
          of M jak Milosc, episode 1810 of Plebania, episode 1829 of Plebania,
          episode 10 of Galeria, episode 11 of Galeria, and episode 21 of
          Galeria.

       ii. PX 57, which is a copy of DX 5, is a workflow activity log from the
           infringing period, and shows multiple formats created for a number of
           TVP Polonia episodes in the workflow system.

      iii. PX 58 shows that 46 of the 51 episodes which SEI copyrighted had
           multiple formats created.

c. The creation of multiple formats for SEI copyrighted demonstrates that the
   infringement was intentional and willful, since creating a format is an
   intentional act, and there was no evidence that a format could be created
   accidentally.

d. Further, TVP employees acted intentionally to delete the multiple formats.

       i. PX 58 shows that for the 46 copyrighted episodes which had multiple
          formats, all of the non-geoblocked formats were deleted.

       ii. In particular, on February 25, 2012, TVP AV technician Mariusz
           Tomporowski deleted/removed (in Polish, “usuniety”) 27 formats
           which had no territorial restriction. These 27 deletions, all of which
           were done sequentially, were done only for episodes which SEI had
           preregistered. (PX 57, 58).

      iii. The deletions do not appear to have been done by mistake or accident.
           (Tr. 440:9-24).

      iv. The deletions were not a coincidence, nor did they occur merely
          because TVP was replacing old material, as TVP witnesses Terlicki
          and Hallam-Baker speculated. (Tr. 436:2-11, 749:6-24).

       v. Further, in the case of an unregistered episode, episode 874 of M jak
          Milosc (which had two formats created), TVP personnel did not delete
          the alternative format that was withdrawn. Only registered episodes
          had alternative formats deleted. (PX 57, 58, 59, Tr. 436:14–437:18).

      vi. The deletions occurred weeks after the formats were withdrawn and
          prior to distribution of new formats, indicating that the deletions were



                                14
           not done in order to distribute these episodes in updated formats, such
           as MP4. (PX 57, Tr. 438:5–440:24).

     vii. The odds that, of all of TVP’s shows, 27 registered episodes were
          deleted in sequence on the same day were estimated by two witnesses
          to be “substantially more than a billion to one, and less than one in a
          quintillion.” (Tr. 672:16–673:18, 812:13–813:5).

e. The evidence also shows intentional manipulation of workflow logs prior to
   TVP taking screenshots being taken of them for purposes of this litigation.

       i. On August 31, 2012, AV technician Przemyslaw Jezewski removed
          formats from distribution, changed the workflow settings, and then
          republished the formats in distribution just prior to taking a screenshot
          of the workflow format screens for use in this litigation. (Compare PX
          57 at TVP-Internet 00091 which shows that on August 31, 2012 from
          2:49 to 2:50 p.m., Jezewski removed format number 340770 (episode
          895 of M jak Milosc) from distribution, then manipulated its settings in
          the Workflow system, and re-published the format in distribution, with
          DX 3 at TVP-Internet 000065 (Workflow screenshot for format
          number 340770 (episode 895 of M jak Milosc), printed on August 31,
          2012 at 2:52 p.m.).

       ii. Other examples of this conduct include:

                   Compare PX 57 TVP-Internet 00090-91 (on August 31, 2012
                    from 2:47 to 2:48 p.m., Jezewski removed format number
                    340776 (episode 894 of M jak Milosc) from distribution,
                    manipulated its settings in the Workflow system, and re-
                    published the format in distribution) with DX 3 at TVP-
                    Internet 000064 (Workflow screenshot for format number
                    340776 (episode 895 of M jak Milosc), printed on August 31,
                    2012 at 2:48 p.m.);
                   Compare also PX 57 at TVP-Internet 00094 (on August 31,
                    2012 at 2:55 p.m., Jezewski removed format number 332756
                    (episode 1828 of Plebania) from distribution, manipulated its
                    settings in the Workflow system, and re-published the format
                    in distribution) with DX 3 at TVP- Internet 000069
                    (Workflow screenshot for format number 332756 (episode
                    1828 of Plebania) printed on August 31, 2012 at 2:55 p.m.).

      iii. The method of changing these formats—removing one episode from
           distribution, manipulating the format, and republishing it—is the
           method used to change the territorial restriction for a format. (Tr.
           464:16-19).




                                15
             iv. These formats were not removed from distribution for the purpose of
                 changing the publication end date, they were removed because
                 Defendant’s employee, Jezewski, altered the territorial restrictions to
                 geoblock them. (DX 3 at TVP-Internet 066279, 066282).

       f. As noted above, CMS system records are overwritten, so any changes during
          the infringing period would not have been captured when this litigation
          commenced. The CMS records that were produced were printed on August
          31, 2012, which is the same day Jezewski removed formats in the workflow
          system, then republished them prior to screenshots being taken. (DX 4). The
          court did not find Defendant’s exhibits dealing with the CMS system and
          purporting to show geoblocked content to be helpful or credible.

3. There is no evidence that a failure in TVP’s geoblocking system caused the
   infringement.

       a. Jacek Terlicki testified that he had not heard of any problems with the
          geoblocking system, and was “absolutely certain the system was working with
          one hundred percent reliability.” (Tr. 309:8-12).

       b. Dr. Hallam-Baker speculated about several possible flaws or malfunctions that
          could have led to an inadvertent failure in geoblocking, but, as noted above,
          the court did not find his testimony on this issue to be useful or credible.
          Moreover, Dr. Hallam-Baker testified that:

               i. He was unaware of any technological failure in TVP’s geoblocking
                  system that would have allowed TVP Polonia shows to be accessed in
                  the U.S. via TVP’s website. (Tr. 697:11-22).

              ii. He had no information that a replication failure in the Mongo database
                  led to a geoblocking failure, but suggested this as a “hypothetical”
                  explanation. (Tr. 626: 20-22).

             iii. The MaxMind database is between 98 and 99.8% accurate in blocking
                  access on a country basis, and he had no information to suggest that
                  there was a database flaw leading to TVP Polonia shows being
                  available on the TVP website in the U.S. (DX 7 at 7; Tr. 694:14-17).

       c. Dr. Erdman testified that had a database failure occurred, TVP IT
          administrators would have noticed it. (Tr. 807).

       d. PX 37, screenshots taken by Gladkowski over the infringing period, show that
          some TVP shows were geoblocked, while others were not, lending further
          credence to the assertion that TVP employees selectively removed the
          geoblock for some shows, instead of there being a mass failure of the system.
          (PX 37).



                                       16
       E. Defendant’s equitable estoppel defense

       The court finds that the evidence did not support Defendant’s equitable estoppel defense,

and makes the following findings of fact regarding whether SEI is equitably estopped from

pursuing its copyright infringement claims:

       1. TVP employees were aware that they infringed SEI’s copyrights. As set forth above,
          since the default settings for programs were to geoblock TVP Polonia content from
          being accessible in the U.S., TVP employees had to take willful and volitional steps
          to remove the geo-block for the 36 episodes that were viewed and recorded in the
          U.S. by Jensen. (Tr. 344:2-14, 602:20–603:9, 604:4-16, DX 7 at 5-6).

       2. Further, a TVP employee took the deliberate step of deleting formats that did not
          contain the minus ameryki restriction prior to taking screen shots of the workflow
          system. (Compare PX 57 at TVP-Internet 00091 with DX 3 at TVP-Internet 000065).

       3. No evidence was presented to show that SEI had advance knowledge that its
          copyrights were being infringed; rather, the evidence shows that SEI discovered the
          infringement after TVP employees removed the territorial restrictions, and after
          discovering this, SEI acted to register the 36 shows in the U.S. (Tr. 202:9-203:1).

II.    CONCLUSIONS OF LAW

       A. Copyright Infringement Generally

           1. “In order to prevail in a copyright infringement action, a plaintiff must
              show two elements: First, that he is the rightful owner of the copyright at
              issue, and second, that the defendant infringed his copyright.” Staggers v.
              Real Authentic Sound, 77 F. Supp. 2d 57, 61 (D.D.C. 1999) (citing Feist
              Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).

           2. The plaintiff bears the burden of proving that any infringement of its
              copyrights occurred. See Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.
              Ct. 1962, 1976 (2014).

       B. Whether Plaintiff Possessed A Valid Copyright Over TVP Polonia Programming
          In The US

           1. Plaintiff has met its burden of establishing that it possesses a valid copyright over
              TVP Polonia programming in the U.S.

           2. Defendant is the creator of TVP Polonia programming, and thus originally held
              all rights over its use.




                                                17
       a. “An author holds a bundle of exclusive rights in the copyrighted work.”
          Stewart v. Abend, 495 U.S. 207, 220 (1990).

       b. The bundle of rights “is entirely statutory and is set forth in 17 U.S.C. §
          106.” Staggers, 77 F. Supp. 2d at 60–61 (citing Sony Corp. of America v.
          Universal City Studios, Inc., 464 U.S. 417 (1984)).

       c. TVP, as the originator and owner of TVP Polonia programing, had the
          right to license its exclusive rights to another party. 17 U.S.C. § 201(d).

3. SEI is the exclusive licensee of TVP’s rights in TVP Polonia. SEI therefore has
   the exclusive license to broadcast TVP Polonia programming in the U.S. This
   legal conclusion is not in dispute.

       a. Under 17 U.S.C. § 204(a), in order to validly transfer of copyright
          ownership, a transfer of exclusive rights must be in writing and signed by
          the owner of the rights conveyed or such owner’s duly authorized agent.
          Atkins v. Fischer, 331 F.3d 988, 991 (D.C. Cir. 2003).

       b. SEI and TVP executed multiple written agreements—the December 14,
          1994 agreement and the 199 Addendum to the 1994 Agreement—which
          give SEI the exclusive right to “use” TVP Polonia content over the
          internet within the U.S.

4. Since TVP validly transferred copyright ownership to SEI, SEI is the exclusive
   owner of any copyrights over TVP Polonia programming in the U.S. 17 U.S.C. §
   101; see also William Patry, 2 Patry on Copyright § 5:101 (2016).

5. TVP Polonia programming are foreign works, and “holders of copyrights for
   foreign works need not register those works in order to bring a suit for copyright
   infringement. Registration is only a prerequisite when the foreign copyright
   holder seeks statutory damages and attorney’s fees.” Rudnicki v. WPNA 1490
   AM, 580 F. Supp. 2d 690, 694 (N.D. Ill. 2008). Thus SEI was not required to
   register its copyright of TVP Polonia programming in the U.S.

6. However, SEI registered 51 episodes of TVP Polonia with the Copyright Office.
   Copyright registration certificates are prima facie evidence of a valid copyright.
   17 U.S.C. § 410(c); see also Stenograph L.L.C. v. Bossard Associates, Inc., 144
   F.3d 96, 99 (D.C. Cir. 1998) (“Stenograph’s certificates of registration for
   Premier Power . . . constitute prima facie evidence of the validity of the copyright
   of the software, and [defendant] makes no argument that such certificates were
   improvidently issued); MOB Music Pub. v. Zanzibar on the Waterfront, LLC, 698
   F. Supp. 2d 197, 202 (D.D.C. 2010) (“[C]opyright registration certificates
   constitute prima facie evidence of plaintiffs’ valid copyrights . . .”).




                                    18
                      a. The 51 registered episodes are Galeria episodes 4 – 25, Gleboka woda
                         episode 13, M jak Milosc episodes 884 – 895, Plebania episodes 1825 –
                         1829, and Rezydencja episodes 48 – 58.

              7. Thus, SEI is the valid holder of copyrights for all TVP Polonia programming in
                 the U.S., including the 51 registered episodes.

          C. Whether TVP Infringed SEI’s Public Performance Right1

              1. SEI has met its burden to prove that its public performance right was infringed by
                 TVP for all 51 episodes of TVP Polonia programming.

              2. SEI holds the exclusive right to “perform the copyrighted work publicly.” 17
                 U.S.C. § 106(4).2 SEI’s public performance right includes the exclusive right to
                 transmit TVP Polonia shows to viewers in the U.S. 17 U.S.C. § 101.

                      a. Under 17 U.S.C. § 101, “[t]o ‘perform’ a work means to recite, render,
                         play, dance, or act it, either directly or by means of any device or process
                         or, in the case of a motion picture or other audiovisual work, to show its
                         images in any sequence or to make the sounds accompanying it audible.
                         To ‘transmit’ a performance is to communicate [a work] by any device or
                         process whereby images or sounds are received beyond the place from
                         which they are sent. To perform a work ‘publicly’ is to transmit or
                         otherwise communicate a performance or display of the work to . . . the
                         public, by means of any device or process, whether the members of the
                         public capable of receiving the performance or display receive it in the
                         same place or in separate places and at the same time or at different times
                         [the ‘Transmit Clause’].” Fox Broad. Co., 160 F. Supp. 3d at 1158
                         (internal citations omitted).

                      b. The Transmit Clause defines the public performance right as the right to
                         “transmit a performance to the public ‘whether the members of the public
                         capable of receiving the performance ... receive it ... at the same time or at
                         different times.’” Am. Broad. Companies, Inc. v. Aereo, Inc., 134 S. Ct.
                         2498, 2509 (2014) (citing 17 U.S.C. § 101).

              3. “For the Transmit Clause to apply, there must be (1) a transmission or other
                 communication; (2) of a performance of a work; (3) to the public. Not all
                 transmissions are performances, and not all performances are transmissions.” Fox
                 Broad. Co., 160 F. Supp. 3d at 1158 (internal citation omitted).

              4. Both parties agree that unauthorized streaming of copyrighted content can
                 constitute a violation of the public performance right. (Def.’s Trial Brief at 4;


1
    Plaintiff does not appear to allege an infringement of its distribution rights.



                                                    19
               Pl.’s Trial Brief at 5). See Aereo, 134 S. Ct. at 2506-2507 (Provider that sold
               subscribers broadcast television programming streamed over the Internet from
               small antennas housed in a central warehouse “performed” copyrighted works
               within the meaning of the Copyright Act. Although the provider’s system
               remained inert until a subscriber indicated that he or she wanted to watch a
               program and may have emulated equipment a viewer could use at home, it
               allowed subscribers to watch programs almost as they were being broadcast);
               United States v. Am. Soc. of Composers, Authors, Publishers, 627 F.3d 64, 74 (2d
               Cir. 2010) (“The Internet Companies’ stream transmissions, which all parties
               agree constitute public performances, illustrate why a download is not a public
               performance. A stream is an electronic transmission that renders the musical
               work audible as it is received by the client-computer’s temporary memory. This
               transmission, like a television or radio broadcast, is a performance because there
               is a playing of the song that is perceived simultaneously with the transmission.”).

           5. Both Michael Barnett and Christian Jensen were able to stream and view TVP
              Polonia episodes by accessing TVP’s website, www.tvp.pl in the U.S. Thus SEI’s
              public performance right was infringed.3

           6. TVP argues that even if the shows were viewed in the U.S. by Barnett and Jensen,
              and in Canada by Gladkowski, that the Copyright Act requires volitional conduct
              by the Defendant for direct infringement to have occurred; “A defendant may be
              held directly liable only if it has engaged in volitional conduct that violates the
              Act.” Aereo, 134 S. Ct. at 2512.

                   a. Because “the Supreme Court did not find it necessary to address the
                      ‘volitional conduct’ requirement in Aereo III to hold that both Aereo and
                      its subscribers perform within the meaning of the Transmit Clause,” the
                      Court indicated that the requirement that a direct infringer act volitionally
                      has been met in circumstances involving streaming transmission. Fox
                      Television Stations, Inc. v. FilmOn X LLC, 150 F. Supp. 3d 1, 31 (D.D.C.
                      2015).

           7. TVP volitionally and intentionally infringed Plaintiff’s copyrights over the 51
              infringed episodes of TVP Polonia.




3
  While the infringing content was streamed from overseas into the U.S., “[w]ith respect to
extraterritoriality, the Court adopts the reasoning in Automattic Inc. v. Steiner, from the Northern
District of California, which held that copyright infringement that commenced abroad but was
completed in the United States was not wholly extraterritorial, and thus the Copyright Act
covered the defendant’s conduct.” (Transcript of July 9, 2015 Motions Hearing at 74:2-25)
(citing Automattic v. Steiner, 82 F. Supp. 3d 1011, 1028 (N.D. Cal. 2015)).


                                                20
       D. Whether SEI Should Be Equitably Estopped From Claiming Infringement

           1. TVP did not carry its burden to prove that SEI should be equitably estopped from
              claiming that its copyrights were infringed.

           2. “[W]hen a copyright owner engages in intentionally misleading representations
              concerning his abstention from suit, and the alleged infringer detrimentally relies
              on the copyright owner’s deception, the doctrine of estoppel may bar the
              copyright owner’s claims completely, eliminating all potential remedies.” Petrella
              v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. at 1966.

           3. “To establish equitable estoppel as a defense to a copyright infringement action,
              the defendant must prove four conjunctive elements: “(1) the plaintiff must know
              the facts of the defendant’s infringing conduct; (2) the plaintiff must intend that
              its conduct shall be acted on or must so act that the defendant has a right to
              believe that it is so intended; (3) the defendant must be ignorant of the true facts;
              and (4) the defendant must rely on the plaintiff’s conduct to its injury.” Tech 7
              Sys., Inc. v. Vacation Acquisition, LLC, 594 F. Supp. 2d 76, 86 (D.D.C. 2009)
              (citing Carson v. Dynegy, Inc., 344 F.3d 446, 453 (5th Cir. 2003)).

           4. Because the court finds that TVP took intentional and volitional action to infringe
              SEI’s copyright, TVP could not be ignorant of the true facts in this dispute, and
              therefore cannot meet its burden to prove the third and fourth element of estoppel.

                   a. TVP could not have been ignorant that it was infringing SEI’s copyright
                      because it (1) granted the exclusive license over TVP Polonia content to
                      SEI and (2) then intentionally infringed SEI’s rights. Nor could TVP
                      have relied on SEI’s actions to its own injury, as it was the party
                      intentionally harming SEI.

       E. Damages

       Because the court has determined that TVP infringed SEI’s copyrights with regards to 51

TVP Polonia episodes which SEI had registered in the U.S., and the court has wide discretion in

determining the amount of damages, the court requests supplementary briefing from the parties

on the issue of the appropriate amount of damages it should award.




                                                21
III.    CONCLUSION

        For the reasons set forth above, and based upon the evidence presented at trial, the court

 concludes that Plaintiff Spanski Enterprises has sustained its burden of proof on its copyright

 infringement claim, and that judgment must therefore be entered in favor of Plaintiff.


 Date: December 2, 2016


                                              Tanya S. Chutkan
                                              TANYA S. CHUTKAN
                                              United States District Judge




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