Filed 8/25/03

IN THE SUPREME COURT OF CALIFORNIA

DVD COPY CONTROL ASSOCIATION, INC.
Plaintiff and Respondent,
v.
ANDREW BUNNER,
Defendant and Appellant.

S102588

Ct.App. 6 H021153

Santa Clara County Super. Ct. No. CV786804

Today we resolve an apparent conflict between California's trade secret law
(Civ. Code, § 3426 et seq.)1 and the free speech clauses of the United States and
California Constitutions. In this case, a Web site operator posted trade secrets
owned by another on his Internet Web site despite knowing or having reason to
know that the secrets were acquired by improper means. The trial court found that
the operator misappropriated these trade secrets in violation of section 3426.1 and
issued a preliminary injunction pursuant to section 3426.2, subdivision (a),
prohibiting the operator from disclosing these secrets. Accepting as true the trial
court's findings, we now consider whether this preliminary injunction violates the First Amendment of the United States Constitution and article I, section 2,
subdivision (a) of the California Constitution. We conclude it does not.

Digital versatile discs (DVD's) "are five-inch wide disks capable of storing
more than 4.7 [Gigabytes] of data. In the application relevant here, they are used
to hold full-length motion pictures in digital form. They are the latest technology
for private home viewing of recorded motion pictures and result in drastically
improved audio and visual clarity and quality of motion pictures shown on
televisions or computer screens." (Universal City Studios, Inc. v. Reimerdes
(S.D.N.Y. 2000) 111 F.Supp.2d 294, 307, fn. omitted (Reimerdes).)
"[T]he improved quality of a movie in a digital format brings with it the
risk that a virtually perfect copy, i.e., one that will not lose perceptible quality in
the copying process, can be readily made at the click of a computer control and
instantly distributed to countless recipients throughout the world over the
Internet." (Universal City Studios, Inc. v. Corley (2d Cir. 2001) 273 F.3d 429, 436
(Corley).) Recognizing this risk of widespread piracy, the motion picture industry
insisted that a viable protection system be made available to prevent users from
making copies of motion pictures in digital form. Without such protection, it
would not have agreed to release movies on DVD's.

To provide this protection, two companies, Toshiba and Matsushita Electric Industrial Co., Ltd., developed the Content Scrambling System (CSS). "CSS is an encryption scheme that employs an algorithm configured by a set of 'keys' to
encrypt a DVD's contents. The algorithm is a type of mathematical formula for
transforming the contents of the movie file into gibberish; the 'keys' are in
actuality strings of 0's and 1's that serve as values for the mathematical formula.
Decryption in the case of CSS requires a set of '[master] keys' contained in
compliant DVD players, as well as an understanding of the CSS encryption
algorithm. Without the [master] keys and the algorithm, a DVD player cannot
access the contents of a DVD. With the [master] keys and the algorithm, a DVD
player can display the movie on a television or a computer screen, but does not
give a viewer the ability to use the copy function of the computer to copy the
movie or to manipulate the digital content of the DVD." (Corley, supra, 273 F.3d
at pp. 436-437.)

The motion picture, computer, and consumer electronics industries decided
to use the CSS technology to encrypt copyrighted content on DVD's and agreed
that this content should not be subject to unauthorized (i) copying or (ii)
transmission, including making the content available over the Internet. To this
end, they began licensing the technology in October 1996. Under the terms of the
licensing agreement, licensees had to maintain the confidentiality of proprietary
information embodied in the CSS technology, including the "master keys" and
algorithms. The agreement also contained other terms and conditions designed to
ensure the confidentiality of this proprietary information. These industries later
established the DVD Copy Control Association, Inc. (DVD CCA) as the entity
charged with granting and administering the licenses to the CSS technology.
Despite these efforts to safeguard the CSS technology, Jon Johansen, a
Norwegian resident, acquired the proprietary information embodied in the
technology-including the master keys and algorithms-by reverse engineering
software created by a licensee, Xing Technology Corporation (Xing). Xing's
software is licensed to users under a license agreement, which specifically
prohibits reverse engineering. Using the proprietary information culled from this
software, Johansen wrote a program called DeCSS that decrypts movies stored on
DVD's and enables users to copy and distribute these movies. According to DVD
CCA, DeCSS "embodies, uses, and/or is a substantial derivation of confidential
proprietary information" found in the CSS technology. Johansen posted the
source code2 of DeCSS on an Internet Web site3 in October 1999.
Soon thereafter, DeCSS appeared on other Web sites, including a Web site
maintained by Andrew Bunner. Bunner posted DeCSS on his Web site allegedly
because "it would enable 'Linux' users to use and enjoy 'DVDs' available for
purchase or rental in video stores" and "make 'Linux' more attractive and viable
to consumers." Bunner also claimed he wanted "to ensure [that] programmers
would have access to the information needed to add new features, fix existing
defects and, in general, improve the '[D]eCSS' program."

Upon discovering the posting of DeCSS on the Internet, DVD CCA and the
Motion Picture Association (MPA) made extensive efforts to identify those Web
sites disclosing proprietary CSS technology or linking to sites posting this
information. The MPA then sent notices to these Web sites and their Internet
service providers demanding that they remove this information from the sites.
Despite receiving these notices, many of these Web sites-including the site
operated by Bunner-refused to remove the information. DVD CCA then filed
this action against Bunner and numerous other named and unnamed individuals
who had published or linked to Web sites publishing DeCSS (collectively
defendants), alleging trade secret misappropriation.4

In the complaint, DVD CCA did not seek damages. Instead, it only sought
an order "enjoining and restraining [d]efendants . . . from making any further use
or otherwise disclosing or distributing, on their web sites or elsewhere, or 'linking'
to other web sites which disclose, distribute, or 'link' to any proprietary property
or trade secrets relating to the CSS technology and specifically enjoining
[d]efendants . . . from copying, duplicating, licensing, selling, distributing,
publishing, leasing, renting or otherwise marketing the DeCSS computer program
and all other products containing, using and/or substantially derived from CSS
proprietary property or trade secrets . . . ."

Soon after filing the complaint, DVD CCA filed an ex parte application for
a temporary restraining order (TRO). The trial court denied the request for a TRO
but issued an order to show cause "why the injunction and restraints sought in
[DVD CCA's] proposed preliminary injunction should not be entered against
defendants . . . ."

Following a hearing and after considering written declarations submitted by
the parties, the trial court issued a preliminary injunction. The injunction enjoined
the named defendants, including Bunner, from "[p]osting or otherwise disclosing
or distributing, on their [W]eb sites or elsewhere, the DeCSS program, the master
keys or algorithms of the Content Scrambling System . . . , or any other
information derived from this proprietary information." The court, however,
refused to enjoin the defendants from "linking to other [Web sites] which contain
the protected materials" because "such an order [would be] overbroad and
extremely burdensome."

In issuing the injunction, the court concluded that DVD CCA was likely to
prevail on the merits and would suffer irreparable harm without injunctive relief.
First, the court concluded that the CSS technology contained protectable trade
secrets because it derived independent economic value from its secrecy and
because DVD CCA made reasonable efforts to maintain its secrecy. Second, the
court found that Johansen had obtained these trade secrets through reverse
engineering in violation of a license agreement and therefore acquired these
secrets by improper means. Third, the court found that the defendants, including
Bunner, knew or should have known that Johansen acquired these trade secrets by
improper means when they posted DeCSS on their Web sites. Fourth, the court
held that the trade secret status of the CSS technology had not been destroyed
because it had been posted on the Internet. Fifth, the court concluded that DVD
CCA would suffer irreparable harm without an injunction. "If the Court does not
immediately enjoin the posting of this proprietary information, [DVD CCA's]
right to protect this information as secret will surely be lost . . . ." The court then
observed that an injunction would cause minimal harm to the defendants. Finally,
the court acknowledged potential enforcement problems, but held that "a
possibility or even a likelihood that an order may be disobeyed or not enforced in
other jurisdictions is not a reason to deny the relief sought."

Only Bunner appealed, and the Court of Appeal reversed. Rather than
review the trial court's findings in support of injunctive relief, the Court of Appeal
assumed that DVD CCA was likely to prevail on the merits and would suffer
irreparable harm. The court then held that the preliminary injunction, even if
justified under California's trade secret law, violated the First Amendment.
According to the Court of Appeal, DeCSS was "pure speech," and the injunction
was an invalid prior restraint on pure speech. In reaching this conclusion, the
court distinguished those cases where courts had enjoined trade secret
misappropriation over a First Amendment defense because "they involved the
actual use of a secret or the breach of a contractual obligation." The court also
found inapplicable the many cases upholding injunctions in copyright cases
against First Amendment challenges because of the differences between trade
secret and copyright protection. We granted review to decide this important
constitutional question.

California has adopted without significant change the Uniform Trade
Secrets Act (UTSA). (§ 3426 et seq.; see Cadence Design Systems, Inc. v. Avant!
Corp. (2002) 29 Cal.4th 215, 221.) Under California's version of the UTSA, a
trade secret consists of "information, including a formula, pattern, compilation,
program, device, method, technique, or process, that: [¶] (1) Derives
independent economic value, actual or potential, from not being generally known
to the public or to other persons who can obtain economic value from its
disclosure or use; and [¶] (2) Is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy." (§ 3426.1, subd. (d).)
Trade secret misappropriation occurs whenever a person: (1) acquires
another's trade secret with knowledge or reason to know "that the trade secret was
acquired by improper means" (§ 3426.1, subd. (b)(1)); (2) discloses or uses,
without consent, another's trade secret that the person "[u]sed improper means to
acquire knowledge of " (id., subd. (b)(2)(A)); (3) discloses or uses, without
consent, another's trade secret that the person, "[a]t the time of disclosure or use,
knew or had reason to know that his or her knowledge of the trade secret was"
(a) "[d]erived from or through a person who had utilized improper means to
acquire it" (id., subd. (b)(2)(B)(i)), (b) "[a]cquired under circumstances giving rise
to a duty to maintain its secrecy or limit its use" (id., subd. (b)(2)(B)(ii)), or
(c) "[d]erived from or through a person who owed a duty to the person seeking
relief to maintain its secrecy or limit its use" (id., subd. (b)(2)(B)(iii)); or (4)
discloses or uses, without consent, another's trade secret that the person, "[b]efore
a material change of his or her position, knew or had reason to know that it was a
trade secret and that knowledge of it had been acquired by accident or mistake"
(id., subd. (b)(2)(C)).

Acquisition of a trade secret by " '[i]mproper means' includes theft,
bribery, misrepresentation, breach or inducement of a breach of a duty to maintain
secrecy, or espionage through electronic or other means." (§ 3426.1, subd. (a).)
"Reverse engineering or independent derivation alone," however, is not
"considered improper means." (Ibid.)

In answering this question, we must first determine whether restrictions on
the dissemination of computer codes in the form of DeCSS are subject to scrutiny
under the First Amendment. We conclude they are.

" '[A]ll ideas having even the slightest redeeming social importance,'
including those concerning 'the advancement of truth, science, morality, and arts'
have the full protection of the First Amendment." (Junger v. Daley (2000) 209
F.3d 481, 484 (Junger), quoting Roth v. United States (1957) 354 U.S. 476, 484.)
"Even dry information, devoid of advocacy, political relevance, or artistic
expression, has been accorded First Amendment protection." (Corley, supra, 273
F.3d at p. 446.) "[F]or example, courts have subjected to First Amendment
scrutiny restrictions on the dissemination of technical scientific information,
[citation] and scientific research, [citation] and attempts to regulate the publication
of instructions [citation]." (Id. at p. 447, fn. omitted.)

As such, "[i]t cannot seriously be argued that any form of computer code
may be regulated without reference to First Amendment doctrine." (Reimerdes,
supra, 111 F.Supp.2d at p. 326.) "A computer program states or represents a
procedure or algorithm in a programming language. The same algorithm could be
written in a natural language like English or a programming language like C or
LISP, but it remains the same algorithm." (Tien, Publishing Software as a Speech
Act (2000) 15 Berkeley Tech. L.J. 629, 633, fn. omitted.) Of course, "[n]ot
everyone can understand each of these forms. Only English speakers will
understand English formulations. Principally those familiar with the particular
programming language will understand the source code expression. And only a
relatively small number of skilled programmers and computer scientists will
understand the machine readable object code. But each form expresses the same
idea, albeit in different ways." (Reimerdes, at p. 326, fn. omitted.) Moreover, "the
fact that a program has the capacity to direct the functioning of a computer does
not mean that it lacks the additional capacity to convey information . . . ."
(Corley, supra, 273 F.3d at p. 447.) Because computer code "is an expressive
means for the exchange of information and ideas about computer programming"
(Junger, supra, 209 F.3d at p. 485), "we join the other courts that have concluded
that computer code, and computer programs constructed from code can merit First
Amendment protection" (Corley, at p. 449; see also Junger, at p. 485; United
States v. Elcom Ltd. (N.D. Cal. 2002) 203 F.Supp.2d 1111, 1126-1127; Reimerdes, at p. 327.)

"As computer code . . . is a means of expressing ideas, the First
Amendment must be considered before its dissemination may be prohibited or
regulated. . . . But that conclusion still leaves for determination the level of
scrutiny to be applied in determining the constitutionality of " an injunction
prohibiting the dissemination of computer code.6 (Reimerdes, supra, 111
F.Supp.2d at p. 327.) In determining the appropriate level of scrutiny, the critical
question is whether the injunction is content neutral or content based. (See
Madsen v. Women's Health Center (1994) 512 U.S. 753, 762-764 (Madsen); Los
Angeles Alliance for Survival v. Los Angeles (2000) 22 Cal.4th 352, 364-365 (LosAngeles Alliance).) Content-based injunctions are subject to "the level of
heightened scrutiny set forth in Perry Ed. Assn. [v. Perry Local Educators Assn.
(1983)] 460 U.S. [37,] 45]." (Madsen, at pp. 763-764.) By contrast, contentneutral
injunctions are subject to the lesser level of scrutiny set forth in Madsen, supra, 512 U.S. at page 765. In this case, we conclude that the preliminary
injunction issued by the trial court is content neutral and should be reviewed under
the standard articulated in Madsen. (See Planned Parenthood Shasta-Diablo, Inc.
v. Williams (1995) 10 Cal.4th 1009, 1023-1025 (Planned Parenthood II)
[reviewing a content-neutral injunction under the Madsen test].)
"Our principal inquiry in determining content neutrality is whether the
government has adopted a regulation of speech 'without reference to the content of
the regulated speech.' " (Madsen, supra, 512 U.S. at p. 763, quoting Ward v. Rock
Against Racism (1989) 491 U.S. 781, 791.) "[L]iteral or absolute content
neutrality" is not necessary. (Los Angeles Alliance, supra, 22 Cal.4th at p. 368.)
"The government's purpose is the controlling consideration," and a governmental
regulation of speech is only content based if the government adopted the
regulation "because of disagreement with the message it conveys." (Ward, at
p. 791.) This is true for "speech cases generally . . . ." (Ibid.) Thus, an injunction
"that serves purposes unrelated to the content of expression is deemed neutral,
even if it has an incidental effect on some speakers or messages but not others."
(Ibid.) However, injunctions "that by their terms distinguish favored speech from
disfavored speech on the basis of the ideas or views expressed are content based."
(Turner Broadcasting System, Inc. v. FCC (1994) 512 U.S. 622, 643.)
Applying this standard, we conclude that the preliminary injunction at issue
here is content neutral. The underlying basis for the injunction is the trial court's
holding that Bunner misappropriated DVD CCA's property-its trade secrets-in
violation of California's trade secret law. (See Ruckelshaus v. Monsanto Co.
(1984) 467 U.S. 986, 1003-1004 (Monsanto) [holding that trade secrets are a
"property right . . . protected by the Taking Clause of the Fifth Amendment"].) In
issuing the injunction, the court therefore relied on the fact that DVD CCA made
reasonable efforts to keep the information secret (§ 3426.1, subd. (d)(2)), and that
DVD CCA received a "competitive advantage over others . . . by virtue of its
exclusive access to the" information (Monsanto, at p. 1012). Thus, the injunction
singled out Bunner's communications because of DVD CCA's efforts to maintain
the secrecy of the CSS technology and the competitive advantage it enjoyed from
those efforts-and not because of the communications' subject matter or any
disagreement with Bunner's message or viewpoint. In other words, the trial court
issued the injunction to protect DVD CCA's statutorily created property interest in
information-and not to suppress the content of Bunner's communications.
Because the injunction is justified without reference to the content of Bunner's
communications, it is content neutral. (See Bartnicki, supra, 532 U.S. at p. 526
[finding a statute that singled out communications "by virtue of the fact that they
were illegally intercepted . . . rather than the subject matter" is content neutral].)
Indeed, the governmental purpose behind protecting trade secrets like the
CSS technology through injunctive relief is wholly unrelated to their content.
"Trade secret law promotes the sharing of knowledge, and the efficient operation
of industry; it permits the individual inventor to reap the rewards of his labor by
contracting with a company large enough to develop and exploit it." (Kewanee
Oil Co. v. Bicron Corp. (1974) 416 U.S. 470, 493 (Kewanee).) The law also
maintains important standards of commercial ethics. (Id. at p. 481.) Assuming, as
we do, that the trial court properly applied California's trade secret law, the
preliminary injunction necessarily serves the broader governmental purpose
behind the law. Because the injunction does not purport to restrict DVD CCA's
trade secrets based on their expressive content, the injunction's restrictions on
Bunner's speech "properly are characterized as incidental to the primary" purpose
of California's trade secret law-which is to promote and reward innovation and
technological development and maintain commercial ethics. (San Francisco Arts
& Athletics, Inc. v. United States Olympic Com. (1987) 483 U.S. 522, 536
(SFA&A).)

The fact that the preliminary injunction identifies the prohibited speech by
its content does not make it content based. "An injunction, by its very nature,
applies only to a particular group (or individuals) and regulates the activities, and
perhaps the speech, of that group. It does so, however, because of the group's past
actions in the context of a specific dispute between real parties. The parties
seeking the injunction assert a violation of their rights; the court hearing the action
is charged with fashioning a remedy for a specific deprivation, not with the
drafting of a statute addressed to the general public." (Madsen, supra, 512 U.S. at
p. 762.) In this case, the specific deprivation to be remedied is the
misappropriation of a property interest in information. (See § 3426.1, subd. (d)
[" 'Trade secret' means information"]; Beckerman-Rodau, Prior Restraints and
Intellectual Property: The Clash Between Intellectual Property and the First
Amendment from an Economic Perspective (2001) 12 Fordham Intell. Prop. Media& Ent. L.J. 1, 60 (Prior Restraints and Intellectual Property) ["Like other types of intellectual property, a trade secret is information or knowledge that is
commercially valuable" (fn. omitted)].) Thus, any injunction remedying this
deprivation must refer to the content of that information in order to identify the
property interest to be protected. Such an injunction remains content neutral so
long as it serves significant governmental purposes unrelated to the content of the
proprietary information. (See SFA&A, supra, 483 U.S. at pp. 536-537 [finding
that an injunction that specifically prohibits the defendant's use of the word
"Olympic" is content neutral because its restrictions serve "the primary
congressional purpose of encouraging and rewarding the [United States Olympic
Committee's] activities"].) Because the preliminary injunction at issue here does
not "involve government censorship of subject matter or governmental favoritism
among different viewpoints," it is content neutral and not subject to strict scrutiny.
(Los Angeles Alliance, supra, 22 Cal.4th at p. 377.)

Bartnicki, supra, 532 U.S. 514, does not mandate a different conclusion.
Bartnicki addressed the constitutionality of several statutes, including title 18
United States Code section 2511(1)(c)-which punished the disclosure of illegally
intercepted communications. (Bartnicki, at p. 520, fn. 3.) Although the majority
observed that a "naked prohibition [like title 18 United States Code section
2511(1)(c)] against disclosures is fairly characterized as a regulation of pure
speech" (Bartnicki, at p. 526), it did not conclude that such a prohibition should be
subject to strict scrutiny. Indeed, the Bartnicki majority never expressly identified
the level of scrutiny it applied. (Smolla, Information as Contraband: The First
Amendment and Liability for Trafficking in Speech (2002) 96 Nw. U. L.Rev. 1099, 1118 (Information as Contraband) ["Astonishingly, at no point in Justice Steven'sopinion does the Court come right out and say what standard of review or
doctrinal test it is applying to the laws before it"].) In any event, five justices in
Bartnicki endorsed the application of a lesser standard even though the statute
arguably prohibited "pure speech." (See Bartnicki, supra, 532 U.S. 514, 536
(conc. opn. of Breyer, J.) [joined by O'Connor, J.]; id. at p. 544 (dis. opn. of
Rehnquist, C.J.) [joined by Scalia, J. and Thomas, J.].) Accordingly, we do the
same.

Under the Madsen test, "when evaluating a content-neutral injunction . . .
[w]e must ask . . . whether the challenged provisions of the injunction burden no
more speech than necessary to serve a significant government interest." (Madsen,
supra, 512 U.S. at p. 765.) This test requires "a balance between the
governmental interest and the magnitude of the speech restriction." (SFA&A,
supra, 483 U.S. at p. 537, fn. 16.) As explained below, we conclude that the
preliminary injunction issued by the trial court achieves the requisite balance and
burdens "no more speech than necessary to serve" the government interests at
stake here. (Madsen, at p. 765.)

As a threshold matter, a preliminary injunction properly issued under
California's trade secret law undoubtedly serves significant government interests.
"Trade secrets . . . offer no protection against independent invention." (Epstein,
Privacy, Publication, and the First Amendment: The Dangers of First Amendment
Exceptionalism (2000) 52 Stanford L.Rev. 1003, 1036 (Privacy, Publication, and
the First Amendment).) Rather, "[t]he basic logic of the common law of trade
secrets recognizes that private parties invest extensive sums of money in certain
information that loses its value when published to the world at large." (Id. at
p. 1035.) Based on this logic, trade secret law creates a property right "defined by
the extent to which the owner of the secret protects his interest from disclosure to
others." (Monsanto, supra, 467 U.S. at p. 1002.) In doing so, it allows the trade
secret owner to reap the fruits of its labor (see Kewanee, supra, 416 U.S. at p. 493)
and protects the owner's "moral entitlement to" these fruits (Information as
Contraband, supra, 96 Nw. U. L.Rev. at p. 1164). As such, "trade secrets have
been recognized as a constitutionally protected intangible property interest." (ITT
Telecom Products Corp. v. Dooley (1989) 214 Cal.App.3d 307, 318.)
By creating a limited property right in information, trade secret law "acts as
an incentive for investment in innovation." (Prior Restraints and Intellectual
Property, supra, 12 Fordham Intell. Prop. Media & Ent. L.J. at p. 60.) "Trade
secret law encourages the development and exploitation of those items of lesser or
different invention than might be accorded protection under the patent laws, but
which items still have an important part to play in the technological and scientific
advancement of the Nation." (Kewanee, supra, 416 U.S. at p. 493.) Like patent
and copyright law, trade secret law "prompt[s] the independent innovator to
proceed with the discovery and exploitation of his invention." (Id. at p. 485.) And
without trade secret protection, "organized scientific and technological research
could become fragmented, and society, as a whole, would suffer." (Id. at p. 486.)
Trade secret law also helps maintain "standards of commercial ethics . . . ."
(Kewanee, supra, 416 U.S. at p. 481.) "The word 'property' as applied to
. . . trade secrets is an unanalyzed expression of certain secondary consequences
of the primary fact that the law makes some rudimentary requirements of good
faith." (E.I. Du Pont de Nemours Powder Co. v. Masland (1917) 244 U.S. 100,
102.) By sanctioning the acquisition, use, and disclosure of another's valuable,
proprietary information by improper means, trade secret law minimizes "the
inevitable cost to the basic decency of society when one . . . steals from another."
(Kewanee, at p. 487.) In doing so, it recognizes that " 'good faith and honest, fair
dealing, is the very life and spirit of the commercial world.' " (Id. at pp. 481-482,
quoting National Tube Co. v. Eastern Tube Co. (1902) 3 Ohio C.C. (n.s.) 459,
462.)

Assuming, as we do, that the trial court properly granted injunctive relief under California's trade secret law, its preliminary injunction burdens no more speech than necessary to serve these significant government interests. First, prohibiting the disclosure of trade secrets acquired by improper means is the only way to preserve the property interest created by trade secret law and its concomitant ability to encourage invention. "Trade secrets are a peculiar kind of
property. Their only value consists in their being kept private." (In re Iowa Freedom of Information Council (8th Cir. 1983) 724 F.2d 658, 662.) Thus, "the right to exclude others is central to the very definition of the property interest. Once the data that constitute a trade secret are disclosed to others, or others are allowed to use those data, the holder of the trade secret has lost his property
interest in the data." (Monsanto, supra, 467 U.S. at p. 1011, fn. omitted.)

The First Amendment does not prohibit courts from incidentally enjoining
speech in order to protect a legitimate property right. (See SFA&A, supra, 483
U.S. at pp. 526, 537-540 [holding that a statutory injunction prohibiting
promotional uses of the word "Olympic" without a showing of a likelihood of
confusion does not violate the First Amendment].) And "[t]he mere fact that"
Bunner "claims an expressive . . . purpose does not give [him] a First Amendment
right to 'appropriat[e] to [himself] the harvest of those who have sown.' " (Id. at
p. 541, quoting International News Service v. Associated Press (1918) 248 U.S.
215, 239-240.) Indeed, the protection of trade secrets and the benefits to research
and development derived from the government's recognition of this property right
depend on the judiciary's power to enjoin disclosures by those who know or have
reason to know of their misappropriation. Bunner proffers, and we can think of,
no less restrictive way of protecting an owner's constitutionally recognized
property interest in its trade secrets. Thus, the preliminary injunction burdens no
more speech than necessary to serve the government's interest in encouraging
innovation and development.

Second, prohibiting Bunner-who knew or had reason to know that the
trade secrets were acquired by improper means-from disclosing those secrets
upholds the standard of commercial ethics maintained by trade secret law. The
duty to respect trade secrets imposed "on any person who acquires the secret with
knowledge that his transferor had improperly acquired it" is derived from "the
rules governing the receipt of stolen or misappropriated land or chattels."
(Privacy, Publication, and the First Amendment, supra, 52 Stan. L.Rev. at
p. 1039.) Under these rules, a purchaser of stolen property with actual or
constructive notice of the true owner's interests in that property cannot prevail
against that owner. (See, e.g., Oakland Village Group v. Fong (1996) 43
Cal.App.4th 539, 549 [holding that the defendant, who received funds with
constructive knowledge of their conversion, could not prevail against the true
owner of the funds]; Hollywood Nat. Bank v. International Business Machines
Corp. (1974) 38 Cal.App.3d 607, 614-615 [holding that the plaintiff was not a
bona fide purchaser of a stock certificate because it had reason to know that the
transaction "reeked of chicanery"].) As we explained long ago, these rules
recognize that "[o]ne who acquires the property from the fraudulent vendee under
such circumstances that he cannot be held to be a purchaser in good faith and for a
valuable consideration is in no better position than the fraudulent vendee, and the
defrauded party has the same remedies against him that he had against such
fraudulent vendee." (Wendling Lumber Co. v. Glenwood Lumber Co. (1908) 153
Cal. 411, 414 (Wendling Lumber).)

By prohibiting Bunner from exploiting and destroying DVD CCA's trade
secrets because of his actual or constructive knowledge of its illegal acquisition,
the preliminary injunction merely applies this venerable standard of commercial
ethics to a constitutionally recognized property interest in information. Because a
person who knowingly exploits the illegal acquisition of property owned by
another should be in "no better position than" the illegal acquirer himself
(Wendling Lumber, supra, 153 Cal. at p. 414), the injunction burdens no more
speech than necessary to serve the government's important interest in maintaining
commercial ethics.

Nonetheless, Bunner contends the preliminary injunction does not satisfy
the Madsen test because it enjoins disclosures by those with no connection to
DVD CCA or those people who acquired its trade secrets by improper means.
According to Bunner, the United States Supreme Court in Bartnicki established
that limitations on the disclosure of information by those who merely know or
have reason to know that the information was obtained unlawfully violate the First
Amendment. But Bartnicki is distinguishable.

In Bartnicki, an unidentified person illegally intercepted and recorded a cell
phone conversation between a union negotiator and the union president (the
plaintiffs) discussing the status of collective bargaining negotiations that had
received " 'a lot of media attention.' " (Bartnicki, supra, 532 U.S. at p. 518.) The
defendants, who received a tape of the intercepted conversation from an
anonymous source, broadcasted and published a portion of the conversation. The
plaintiffs sued the defendants pursuant to statutes penalizing the disclosure of
illegally intercepted communications by persons " 'knowing or having reason to
know' " that the interception was unlawful. (Id. at p. 521, fn. 3.) The United
States Supreme Court held that the application of these statutes to the defendants
violated the First Amendment. (Id. at p. 535.) Despite recognizing the
government's strong interest in preserving the privacy of communications, the
court concluded that "[t]he enforcement of [the statutes at issue] . . . implicates the
core purposes of the First Amendment because it imposes sanctions on the
publication of truthful information of public concern." (Id. at p. 533, italics
added.) Thus, the "privacy concerns give way when balanced against the interest
in publishing matters of public importance." (Id. at p. 534.)

The United States Supreme Court, however, expressly declined to extend Bartnicki to "disclosures of trade secrets or domestic gossip or other information of purely private concern." (Bartnicki, supra, 532 U.S. at p. 533, italics added.) In doing so, the court recognized that the First Amendment interests served by the disclosure of purely private information like trade secrets are not as significant as
the interests served by the disclosure of information concerning a matter of public importance. (See Dun & Bradstreet, Inc. v. Greenmoss Builders, Inc. (1985) 472 U.S. 749, 759 (plur. opn. of Powell, J.) (Dun & Bradstreet) ["speech on matters of purely private concern is of less First Amendment concern" than " 'speech on
public issues' "].) "The suppression of the publication of stolen information does nothing to hamper the critic from denouncing any firm that chooses to preserve its trade secrets, or to chide any government agency for its lackluster enforcement of the general law. It is something of a mystery as to how free and open debate is
frustrated by offering property protection to trade secrets." (Privacy, Publication, and the First Amendment, supra, 52 Stan. L.Rev. at p. 1043.) Thus, Bartnicki implicitly acknowledges that a balancing of First Amendment interests against government interests in the trade secret context may yield a different result. In this case, the content of the trade secrets neither involves a matter of public concern nor implicates the core purpose of the First Amendment. "Whether
. . . speech addresses a matter of public concern must be determined by the content, form, and context of a given statement, as revealed by the whole record." (Connick v. Myers (1983) 461 U.S. 138, 147-148, fn. omitted.) DVD CCA's trade secrets in the CSS technology are not publicly available and convey only technical
information about the method used by specific private entities to protect their intellectual property. Bunner posted these secrets in the form of DeCSS on the Internet so Linux users could enjoy and use DVD's and so others could improve the functional capabilities of DeCSS. He did not post them to comment on any public issue or to participate in any public debate. Indeed, only computer encryption enthusiasts are likely to have an interest in the expressive content-
rather than the uses-of DVD CCA's trade secrets. (See Tien, Publishing Software as a Speech Act, supra, 15 Berkeley Tech. L.J. at pp. 662-663 ["Programming languages provide the best means for communicating highly technical ideas-such as mathematical concepts-within the community of computer scientists and programmers"].) Thus, these trade secrets, as disclosed by Bunner, address matters of purely private concern and not matters of public
importance. (See Connick, at p. 148 [information that, "if released to the public, would convey no information at all other than the fact that a single employee is upset with the status quo" does not involve a matter of public concern]; Dun & Bradstreet, supra, 472 U.S. at p. 762 ["speech solely in the individual interest of the speaker and its specific . . . audience" does not involve a matter of public concern].)

The mere fact that DVD CCA's trade secrets may have some link to a
public issue does not create a legitimate public interest in their disclosure. (Cf.
Board of Trustees of the State University of New York v. Fox (1989) 492 U.S. 469,475 [speech merely linking " ' "a product to a current public debate" is not thereby entitled to the constitutional protection afforded noncommercial speech' "].)
Disclosure of this highly technical information adds nothing to the public debate
over the use of encryption software or the DVD industry's efforts to limit
unauthorized copying of movies on DVD's. And the injunction does not hamper
Bunner's ability to "discuss and debate" these issues as he has "in the past in both
an educational, scientific, philosophical and political context." Bunner does not
explain, and we do not see, how any speech addressing a matter of public concern
is inextricably intertwined with and somehow necessitates disclosure of DVD
CCA's trade secrets. (Cf. id. at p. 474 [where nothing requires a speaker to
combine his noncommercial message with a commercial message, his commercial
speech is not inextricably intertwined with his noncommercial speech and is not
entitled to the full protection of the First Amendment].) The expressive content of
these trade secrets therefore does not substantially relate to a legitimate matter of
public concern. (Cf. Shulman v. Group W Productions, Inc. (1998) 18 Cal.4th
200, 223-224 [the publication of private information is only newsworthy if there is
a logical nexus between the information and a matter of legitimate public
interest].) As such, the First Amendment interests served by the disclosure of
DVD CCA's trade secrets are less significant than the First Amendment interests
served by the disclosures at issue in Bartnicki. (See Dun & Bradstreet, supra, 472
U.S. at p. 759 [speech addressing a purely private matter has less significance
under the First Amendment than speech addressing a matter of public concern].)
The First Amendment must therefore give way to the significant government
interests served by the preliminary injunction in this particular case.7

Finally, the preliminary injunction does not burden more speech than
necessary by prohibiting the disclosure of "information derived from" "the DeCSS
program, the master keys or algorithms of the [CSS]." Because we assume for
purposes of this appeal that the injunction is justified under California's trade
secret law, we also assume that this provision of the injunction is necessary to
protect DVD CCA's property interest in the misappropriated trade secrets.8
Therefore, this portion of the injunction burdens no more speech than necessary to
serve the significant government interests at issue here. (See ante, at pp. 16-19.)
The preliminary injunction issued by the trial court therefore burdens no
more speech than necessary to serve the significant government interests promoted
by California's trade secret law. Accordingly, it satisfies the Madsen test

Although the preliminary injunction issued by the trial court survives the
Madsen test, we must still determine whether the prior restraint doctrine bars it.
Because the injunction is content neutral and was issued because of Bunner's prior
unlawful conduct, we conclude it is not a prior restraint and therefore does not
violate the First Amendment.

"[P]rior restraints on speech and publication are the most serious and the
least tolerable infringement on First Amendment rights." (Nebraska Press Assn. v.
Stuart (1976) 427 U.S. 539, 559.) "The term prior restraint is used 'to describe
administrative and judicial orders forbidding certain communications when issued
in advance of the time that such communications are to occur.' [Citation.]
Temporary restraining orders and permanent injunctions-i.e., court orders that
actually forbid speech activities-are classic examples of prior restraints."
(Alexander v. United States (1993) 509 U.S. 544, 550.) Nonetheless, the United
States Supreme Court "has never held that all injunctions are impermissible."
(Pittsburgh Press Co. v. Pittsburgh Comm'n on Human Relations (1973) 413 U.S.
376, 390.) "The special vice of a prior restraint is that communication will be
suppressed, either directly or by inducing excessive caution in the speaker, before
an adequate determination that it is unprotected by the First Amendment." (Ibid.)
Thus, "[n]ot all injunctions that may incidentally affect expression . . . are 'prior
restraints' . . . ." (Madsen, supra, 512 U.S. at p. 763, fn. 2.)

Despite these pronouncements, the United States Supreme Court has
"neither defined prior restraint, nor explained precisely why injunctions fit within
a definition of prior restraint." (Meyerson, Rewriting Near v. Minnesota:
Creating a Complete Definition of Prior Restraint (2001) 52 Mercer L.Rev. 1087,
1087.) Nonetheless, the court has provided some guiding principles. For
example, the court has recently held that only content-based injunctions are subject
to prior restraint analysis. (See Thomas v. Chicago Park District (2002) 534 U.S.
316, 321-322 [holding that a licensing scheme did not need to "contain certain
procedural safeguards in order to avoid constituting an invalid prior restraint"
because the scheme was "not subject-matter censorship but content-neutral time,
place, and manner regulation of the use of a public forum"]; see also Avis Rent A
Car System, Inc. v. Aguilar (2000) 529 U.S. 1138, ___ [120 S.Ct. 2029, 2032, fn.
2] (dis. opn. of Thomas, J. to den. of pet. for cert.) [noting that "a content-neutral
injunction is not treated as a prior restraint"].) Based on our review of high court
decisions, we have also observed that "[a] prior restraint is a content-based
restriction on speech prior to its occurrence." (Planned Parenthood Shasta-
Diablo, Inc. v. Williams (1994) 7 Cal.4th 860, 871, italics added (Planned
Parenthood I).) Consistent with these guiding principles, the United States
Supreme Court has declined to apply prior restraint analysis to a permanent
injunction (Madsen, supra, 512 U.S. at p. 763, fn. 2) and a preliminary injunction
(Schenck v. Pro-Choice Network of Western New York (1997) 519 U.S. 357,374,
fn. 6 (Schenck) ) "issued not because of the content of petitioners' expression . . .
but because of their prior unlawful conduct" (Madsen, at p. 763, fn. 2; see also
Schenck, at p. 374, fn. 6).

Applying these principles, we find that the preliminary injunction at issue here is not a prior restraint. The injunction is content neutral (see ante, at pp. 11- 15), and the trial court found that Bunner had previously disclosed DVD CCA's trade secrets in violation of California law. The court therefore issued the content neutral injunction because of Bunner's "prior unlawful conduct." (Madsen, supra, 512 U.S. at p. 763, fn. 2.) Although the court made its finding of prior unlawful conduct in the context of a preliminary injunction and found only that DVD CCA was likely to succeed on the merits, this finding is sufficient to render inapplicable
the heavy presumption against prior restraints. (See Schenck, supra, 519 U.S. at p. 374, fn. 6 [refusing to apply prior restraint analysis to a preliminary injunction because the injunction was content neutral and directed at prior unlawful conduct].) Thus, "[t]his is not a case of government censorship, but a private plaintiff's attempt to protect its property rights." (Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, LTD. (2d Cir. 1979) 604 F.2d 200, 206.) Accordingly,
prior restraint doctrine does not bar the injunction.

CBS Inc. v. Davis (1994) 510 U.S. 1315 is inapposite. In CBS, a federal
district court issued an injunction "prohibiting CBS from airing videotape footage
taken at the factory of Federal Beef Processors, Inc." (Federal) (id. at p. 1325),
because the tape disclosed Federal's " 'confidential and proprietary practices and
processes . . . .' " (Id. at p. 1316.) Concluding that the injunction was an
unconstitutional prior restraint, Justice Blackmun stayed its enforcement. (Id. at
pp. 1317-1318.) As a single justice order, CBS is arguably not binding on this
court. In any event, it is distinguishable. Justice Blackmun, in finding a prior
restraint, relied on the lack of clear evidence establishing that CBS had acquired
Federal's proprietary information by improper means. (Id. at p. 1318.) In
contrast, we assume for purposes of this appeal that Bunner knew or had reason to
know that DVD CCA's trade secrets were acquired by improper means.
Moreover, unlike the trade secrets at issue here (see ante, at pp. 21-23), the
videotape footage at issue in CBS appeared to address a matter of public
concern-"unsanitary practices in the meat industry" (CBS, at p. 1315).

Likewise, the out-of-state cases cited by Bunner are not persuasive. In
Bridge C.A.T. Scan Associates v. Technicare Corp. (2d Cir. 1983) 710 F.2d 940,
the Second Circuit Court of Appeals invalidated an injunction prohibiting the
plaintiff from disclosing trade secrets contained in an exhibit to its complaint. In
finding that the injunction was an invalid prior restraint, the court concluded that
there was no evidence the plaintiff had acquired the defendant's trade secrets by
improper means or that the secrets were not publicly available. (Id. at pp. 946-
947.) In this decision, however, we assume that Bunner misappropriated protectable trade secrets.

Oregon ex rel. Sports Mgmt. News v. Nachtigal (Or. 1996) 921 P.2d 1304 is
inapposite for similar reasons. In Nachtigal, the Oregon Supreme Court found that
a statute requiring court approval before a person involved in litigation may
disclose a trade secret constituted an invalid prior restraint. (Id. at pp. 90-91.) The
statute required court approval "even when there is no allegation that the thirdparty
publisher has violated the criminal or civil law to possess the information."
(Id. at p. 83.) By contrast, DVD CCA alleged and established that Bunner
misappropriated its trade secrets in violation of California law. Moreover,
Nachtigal expressly distinguished the statute at issue from another Oregon statute
authorizing injunctive relief for the misappropriation of trade secrets (id. at p. 90),
and noted that its holding did not render the injunctive relief provision
unconstitutional (id. at p. 91, fn. 10). In any event, to the extent Nachtigal's
literalistic analysis of content neutrality conflicts with our decision here, we have
impliedly rejected it (see Los Angeles Alliance, supra, 22 Cal.4th at pp. 367-368),
and therefore do not find it persuasive.
Proctor & Gamble Co. v. Bankers Trust Co. (6th Cir. 1996) 78 F.3d 219 is
also distinguishable. In Proctor & Gamble, the Sixth Circuit Court of Appeals
held that an order prohibiting Business Week from using Proctor & Gamble's
confidential and proprietary information in an article constituted an invalid prior
restraint. The court reached this conclusion in part because the district court never
determined whether the information used in the article was even proprietary-
must less a trade secret-before issuing the order. (See id. at p. 225 [finding that
"the District Court fail[ed] to conduct any First Amendment inquiry before
granting the two TROs"]; see also id. at p. 222 [noting that "[t]he parties and not
the court . . . determine[d] whether the particular documents" were proprietary].)
By contrast, the trial court in this case issued the preliminary injunction after
finding that Bunner likely misappropriated DVD CCA's trade secrets in violation
of California law. Moreover, unlike Bunner, Business Week had not disclosed
any proprietary information prior to the issuance of the order. (Id. at p. 222.) In
any event, Proctor & Gamble is less than helpful because the Sixth Circuit Court
of Appeals apparently assumed the order was a prior restraint and offered no
analysis to support its assumption. For this reason, we also decline to adopt the
reasoning of Ford Motor Co. v. Lane (E.D. Mich. 1999) 67 F.Supp.2d 745.
Accordingly, the preliminary injunction is not an invalid prior restraint under the
First Amendment.

We now turn to Bunner's final contention-that the preliminary injunction
violates the free speech provision found in article I, section 2, subdivision (a) of
the California Constitution. "[T]he California Constitution is independent and . . .federal decisions interpreting the First Amendment are not controlling." (Los
Angeles Alliance, supra, 22 Cal.4th at p. 367.) Nonetheless, "[i]n some areas we
have found that the protection afforded by the California liberty of speech clause
is coterminous with that provided by the federal Constitution." (Id. at p. 367, fn.
12.) For example, we have regularly applied the Madsen test when determining
the constitutionality of a content-neutral injunction. (See, e.g., Gallo v. Acuna
(1997) 14 Cal.4th 1090, 1199-1122; Planned Parenthood II, supra, 10 Cal.4th at
pp. 1019-1025.) Likewise, we have refused to apply prior restraint analysis to
content-neutral injunctions directed at prior unlawful conduct. (See Planned
Parenthood I, supra, 7 Cal.4th at p. 871.) Bunner cites, and we have found,
nothing to suggest that our analysis of the constitutionality of the injunction under
California's free speech clause would yield a different result from our analysis
under the First Amendment in this context. Accordingly, we conclude that the
preliminary injunction does not violate the California Constitution.

Our decision today is quite limited. We merely hold that the preliminary
injunction does not violate the free speech clauses of the United States and
California Constitutions, assuming the trial court properly issued the injunction
under California's trade secret law. On remand, the Court of Appeal should
determine the validity of this assumption. Because there appears to be some
confusion over the proper standard of review, we offer guidance below.
In upholding the preliminary injunction against Bunner's First Amendment
challenges, we rely on the assumption that DVD CCA is likely to prevail on the
merits of its trade secret claim against Bunner. As such, "any factual findings
subsumed" in the trade secret misappropriation determination "are subject to
constitutional fact review." (Rankin v. McPherson (1987) 483 U.S. 378, 385, fn.
8.) "[W]here a Federal right has been denied as the result of a [factual] finding . . .
or where a conclusion of law as to a Federal right and a finding of fact are so
intermingled as to make it necessary, in order to pass upon the Federal question, to
analyze the facts," the reviewing court must independently review these findings.
(Fiske v. State of Kansas (1927) 274 U.S. 380, 385-386.) "[F]acts that are
germane to" the First Amendment analysis "must be sorted out and reviewed de
novo, independently of any previous determinations by the trier of fact." (McCoy
v. Hearst Corp. (1986) 42 Cal.3d 835, 842.) And "the reviewing court must
' "examine for [itself] the statements in issue and the circumstances under which
they were made to see . . . whether they are of a character which the principles of
the First Amendment . . . protect." ' " (Harte-Hanks Communications, Inc. v.
Connaughton (1989) 491 U.S. 657, 688, quoting New York Times Co. v. Sullivan
(1964) 376 U.S. 254, 285.)

On remand, the Court of Appeal must therefore "make an independent
examination of the entire record" (Bose Corp. v. Consumers Union of U.S., Inc.
(1984) 466 U.S. 485, 499), and determine whether the evidence in the record
supports the factual findings necessary to establish that the preliminary injunction
was warranted under California's trade secret law (see Lindsay v. City of San
Antonio (5th Cir. 1987) 821 F.2d 1103, 1107-1108 [noting that appellate courts
must independently review factual findings relevant to the resolution of any First
Amendment issues]). If, after this examination, the court finds the injunction
improper under California's trade secret law, then it should find that the trial court
abused its discretion. (See ibid. [holding that, in determining whether the
"issuance of a preliminary injunction constitutes an abuse of " discretion under the
First Amendment, the reviewing court must independently review the factual
findings subsumed in the constitutional determination]; see also Gallo v. Acuna,
supra, 14 Cal.4th at p. 1109 [holding that preliminary injunctions are reviewed
"under an abuse of discretion standard"].) Otherwise, it should uphold the
injunction.

DISPOSITION
We reverse the judgment of the Court of Appeal and remand for further
proceedings consistent with this opinion.

BROWN, J.

WE CONCUR:
GEORGE, C.J.
BAXTER, J.
RIVERA, J.*
ROBIE, J.**

* Associate Justice of the Court of Appeal, First Appellate District, Division
Four, assigned by the Chief Justice pursuant to article VI, section 6 of the
California Constitution.
** Associate Justice of the Court of Appeal, Third Appellate District, assigned
by the Chief Justice pursuant to article VI, section 6 of the California Constitution.

CONCURRING OPINION BY WERDEGAR, J.
I write separately because I agree partly with the majority and partly with
Justice Moreno.
I agree with the majority's conclusion that the First Amendment to the
United States Constitution does not necessarily preclude injunctive relief in trade
secret cases. I find in Justice Moreno's concurring opinion, however, a more
satisfying reconciliation of that conclusion with the constitutional rules governing
prior restraints and content-based restrictions of speech.
The court agrees that a reviewing court in First Amendment cases must
examine the entire record independently to ensure that the factual predicates for
injunctive relief truly exist. Justice Moreno would have us conduct that
examination ourselves. Certainly we have the power to do so. In my view,
however, considerations of judicial economy justify the majority's decision to
leave this factually intensive task to the Court of Appeal. (See Cal. Const., art. VI,
§ 12, subd. (c); Cal. Rules of Court, rule 29(b)(3).)
WERDEGAR, J.

CONCURRING OPINION BY MORENO, J.

I concur in the majority's narrow holding, which, as I understand it, is that
the First Amendment does not categorically prohibit preliminary injunctions to
enjoin the publication of trade secrets. I further agree that the First Amendment
requires independent appellate review of such preliminary injunctions, rather than
the deferential review usually accorded such injunctions. I write separately for
two reasons. First, I believe there is a need to clarify how the prior restraint
doctrine under the First Amendment applies to the publication of alleged trade
secrets. Second, I would forgo further proceedings in the Court of Appeal and
simply affirm that court's judgment. In my view, the DVD Copy Control
Association's (DVD CCA) trade secret claim against Bunner is patently without
merit for the reasons explained below.

I.

I agree with the majority that computer code is a form of speech under the
First Amendment. "Because computer code 'is an expressive means for the
exchange of information and ideas about computer programming' [citation], 'we
join the other courts that have concluded that computer code, and computer
programs constructed from code can merit First Amendment protection.' " (Maj.
opn., ante, at p. 11.)

I also agree with the majority that the doctrine of prior restraint is not a
model of clarity, and that the definitions of and justifications for the doctrine do
not constitute a coherent doctrinal unity. (See Tribe, American Constitutional
Law (2d ed. 1988) pp. 1039-1042 [noting that the "prior" in prior restraint can
mean both prior to publication and prior to the full adjudication of the merits].)
But the majority correctly identifies one of the meanings of and reasons for the
prohibition against prior restraint, quoting Pittsburgh Press Co. v. The Pittsburgh
Commission on Human Relations (1973) 413 U.S. 376, 390 (Pittsburgh Press
Co.): " 'The special vice of a prior restraint is that communication will be
suppressed, either directly or by inducing excessive caution in the speaker, before
an adequate determination that it is unprotected by the First Amendment.' " (Maj.
opn., ante, at p. 25.) Thus, a preliminary injunction poses a danger that permanent
injunctive relief does not: that potentially protected speech will be enjoined prior
to an adjudication on the merits of the speaker's or publisher's First Amendment
claims. Pittsburgh Press Co. recognized as much when affirming an order
prohibiting sex discrimination in a newspaper's classified ads: "[B]ecause no
interim relief was granted, the order will not have gone into effect before our final
determination that the actions of Pittsburgh Press were unprotected." (Pittsburgh
Press Co., supra, 413 U.S. at p. 390; see also Lemley & Volokh, Freedom of
Speech and Injunctions in Intellectual Property Cases (1998) 48 Duke L.J. 147,
158-164, 216-224 (Lemley & Volokh) [arguing that an important purpose of the
prior restraint doctrine should be curtailing premature censorship of potentially
protected speech through preliminary injunctions]; Redish, The Proper Role of the
Prior Restraint Doctrine in First Amendment Theory (1984) 70 Va. L.Rev. 53, 87-
88 (Redish) [arguing that the prior restraint doctrine recognizes that interim
equitable relief poses a particular danger to First Amendment rights].)
The same distinction was recognized by this court in Aguilar v. Avis Rent A
Car System, Inc. (1999) 21 Cal.4th 121, 138 (Aguilar), upholding a permanent
injunction enjoining the use of certain racial epithets in the workplace. The
Aguilar plurality quoted approvingly from Auburn Police Union v. Carpenter (1st
Cir. 1993) 8 F.3d 886, 903, which upheld a statute prohibiting charitable
solicitation for the benefit of law enforcement agencies: " 'Although the classic
form of prior restraint involves an administrative licensing scheme, [citation], a
judicial injunction that prohibits speech prior to a determination that the speech is
unprotected also constitutes a prior restraint. [Citation.] . . . An injunction that is
narrowly tailored, based upon a continuing course of repetitive speech, and
granted only after a final adjudication on the merits that the speech is unprotected
does not constitute an unlawful prior restraint.' " (Aguilar, supra, 21 Cal.4th at p.
141, italics added.)

The present case involves a preliminary injunction issued prior to "a final
adjudication on the merits that the speech is unprotected." Hence, the danger
posed by prior restraint is present. In general, a prior restraint comes with
" 'heavy presumption' against its constitutional validity." (Organization for a
Better Austin v. Keefe (1971) 402 U.S. 415, 419.)

The majority at one point seems to suggest that the bar against prior
restraint never applies to trade secret publication cases if a court has made a
preliminary finding that a defendant's prior conduct has been unlawful. It
generalizes that the United States Supreme Court "has declined to apply prior
restraint analysis to a permanent injunction (Madsen [v. Women's Health Center
(1994)] 512 U.S. [753,] 763, fn. 2) and a preliminary injunction (Schenck v. Pro-
Choice Network of Western New York (1997) 519 U.S. 357, 374, fn. 6 (Schenck))'issued not because of the content of petitioners' expression . . . but because oftheir prior unlawful conduct' (Madsen, at p. 763, fn. 2; see also Schenck, at p. 374,fn. 6)." (Maj. opn., ante, at p. 25.) The majority concludes: "The injunction [inthis case] is content neutral . . . , and the trial court found that Bunner hadpreviously disclosed DVD CCA's trade secrets in violation of California law. The court therefore issued the content-neutral injunction because of Bunner's 'prior
unlawful conduct.' (Madsen, supra, 512 U.S. at p. 763, fn. 2.) Although the court
made its finding of prior unlawful conduct in the context of a preliminary
injunction and found only that DVD CCA was likely to succeed on the merits, this
finding is sufficient to render inapplicable the heavy presumption against prior
restraints. (See Schenck, supra, 519 U.S. at p. 374, fn. 6 [refusing to apply prior
restraint analysis to a preliminary injunction because the injunction was content
neutral and directed at prior unlawful conduct].)" (Maj. opn., ante, at p. 26.)

The majority's analysis of the above cited cases is incomplete. A closer
reading of these cases reveals that the United States Supreme Court declined to
apply prior restraint analysis not simply because those cases concerned findings of
past unlawful conduct, but also because they did not involve censorship of speech
but merely limits on its time, place and manner. For example, footnote 2 of
Madsen, on which the majority relies, states that prior restraint is not applicable
because "petitioners are not prevented from expressing their message in any one of
several different ways; they are simply prohibited from expressing it within the
36-foot buffer zone. Moreover, the injunction was issued not because of the
content of petitioners' expression . . . but because of their prior unlawful conduct."
(Madsen, supra, 512 U.S. at p. 763, fn. 2.) Schenck, supra, 519 U.S. at page 374,
footnote 6, also emphasizes both reasons: "[A]lternative channels of
communication were left open to the protesters, and 'the injunction was issued not
because of the content of [the protesters'] expression, . . . but because of their prior
unlawful conduct.' "

Our opinion in Planned Parenthood Shasta-Diablo, Inc. v. Williams (1994)
7 Cal.4th 860, also cited in support of the majority's position, highlights the
locational nature of the injunction, in rejecting the applicability of prior restraint
analysis: "[P]etitioners' claim that the injunction operates as an unconstitutional
'prior restraint' on protected speech must fail. A prior restraint is a content-based
restriction on speech prior to its occurrence. [Citation.] Valid time, place and
manner restrictions which do not functionally prohibit all means of
communication are not prior restraints." (Id. at p. 871, fn. omitted.)
In Thomas v. Chicago Park District (2002) 534 U.S. 316, also cited by the
majority, the court upheld a facial challenge to a municipal park ordinance that
required a permit for a more-than-50-person event. The court rejected the
argument that it was an invalid prior restraint similar to an administrative licensing
scheme designed to promote censorship, holding that a licensing scheme did not
need to "contain certain procedural safeguards in order to avoid constituting an
invalid prior restraint" because the scheme was "not subject-matter censorship but
content-neutral time, place, and manner regulation of the use of a public forum."
(Id. at pp. 321-322.)

The preliminary injunction in this case is subject-matter censorship ·
entirely prohibiting Bunner from publishing a particular type of information
related to the DVD CCA's content scrambling system (CSS) and the descrambling
program (DeCSS) · not a content-neutral time, place, and manner regulation.
(See also Oregon ex rel. Sports Mgmt. News v. Nachtigal (Or. 1996) 921 P.2d
1304, 1308 [law requiring court approval of publication of alleged trade secrets is
directed at a "specific subject of communication, excluding some speech based on
the content of the message" and is an unlawful prior restraint].) If the alleged
trade secret is not in fact a trade secret, then the court will be enjoining protected
speech. A preliminary injunction issued prior to an adjudication on the merits
would therefore pose the precise danger of prior restraint identified in Pittsburgh
Press Co., i.e., "the special vice . . . that communication will be suppressed . . .
before an adequate determination that it is unprotected by the First Amendment.' "
(Pittsburgh Press Co., supra, 413 U.S. at p. 390; see also Lemley & Volokh,
supra, 48 Duke L.J. at pp. 169-172; Redish, supra, 70 Va. L.Rev. at p. 88. ) But
that particular "special vice" would not threaten in the case of time, place, and
manner restrictive injunctions or ordinances, where speech is not being entirely
suppressed; instead, the special vice of those regulations is that their restrictions
may be stricter than needed to accomplish the government objective. (See
Madsen, supra, 512 U.S. at pp. 765-766.)1

But concluding that prior restraint analysis applies in the case of
preliminary injunctions of alleged trade secret publications is not the same as
concluding that all such injunctions are prohibited. Both the United States
Supreme Court and this court have recognized that the First Amendment right to
free expression may be legitimately circumscribed by state law intellectual
property rights. (See Cohen v. Cowles Media Co. (1991) 501 U.S. 663, 669-670
[newspaper's right to publish limited by confidentiality agreement enforceable
under state contract law]; Zacchini v. Scripps-Howard Broadcasting Co. (1977)
433 U.S. 562 [upholding right of publicity against having performance
misappropriated by television broadcast]; Comedy III Productions, Inc. v. Gary
Saderup, Inc. (2001) 25 Cal.4th 387, 396 [upholding right of publicity against
literal depictions of celebrities].) Trade secret law is an indisputably important
means of protecting a certain form of intellectual property for the benefit of
society as a whole. (See Kewanee Oil Co. v. Bicron Corp. (1974) 416 U.S. 470,
481, 493; maj. opn., ante, at pp. 13-14.) As the majority correctly recognizes,
"trade secret law creates a property right 'defined by the extent to which the owner
of the secret protects his interest from disclosure to others.' " (Maj. opn., ante, at
p. 16, quoting Ruckelshaus v. Monsanto Co. (1984) 467 U.S. 986, 1002.) Because
the very existence of a trade secret is destroyed by its disclosure, a categorical
inability by trade secret holders to obtain preliminary injunctive relief against the
publication of trade secrets could significantly undermine their property rights.
(See Garth v. Staktek Corp. (Tex.App. 1994) 876 S.W.2d 545, 550 [preliminary
injunction necessary "to provide meaningful legal protection" to trade secret
holders].) In this respect, a trade secret plaintiff differs, for example, from
defamation plaintiffs who may rectify damages to their reputation not only with
monetary damages but also through the rehabilitation of their reputation with
additional speech and publication. Furthermore, as the majority suggests, the fact
that publication of most trade secrets does not address matters of public concern is
a factor that may somewhat lighten the heavy presumption against the
constitutional validity of a prior restraint.

The question, then, is how should a court balance First Amendment
protections with an alleged trade secret holder's property rights when asked to
issue a preliminary injunction against publication? The answer lies in requiring
the plaintiff to make a sufficient evidentiary showing before the injunction is
granted.
The majority recognizes that a preliminary injunction against the disclosure
of an alleged trade secret without sufficient evidentiary support is an unlawful
prior restraint. As it states in discussing Bridge C.A.T. Scan Associates v.
Technicare Corp. (2d Cir. 1983) 710 F.2d 940: "[T]he Second Circuit Court of
Appeals invalidated an injunction prohibiting the plaintiff from disclosing trade
secrets contained in an exhibit to its complaint. In finding that the injunction was
an invalid prior restraint, the court concluded that there was no evidence the
plaintiff had acquired the defendant's trade secrets by improper means or that the
secrets were not publicly available. [Citation.] In this decision, however, we
assume that Bunner misappropriated protectable trade secrets." (Maj. opn., ante,
at p. 27.) In its discussion of CBS Inc. v. Davis (1994) 510 U.S. 1315, the majority also distinguishes it from the present case in part because "Justice Blackmun, in finding a prior restraint, relied on the lack of clear evidence establishing that CBS had acquired [the plaintiff's] proprietary information by improper means." (Maj.opn., ante, at p. 26.)

Implicit in these statements is the assumption that a preliminary injunction of a trade secret publication without the requisite evidence in support would be an unlawful prior restraint.
I agree, but this conclusion raises the question of what evidentiary showing
a plaintiff should be required to make in order to overcome the presumption
against a prior restraint? Ideally, the required showing for granting preliminary
injunctions would separate meritorious trade secret claims from those involving
protected speech. A court is to grant a preliminary injunction only if it finds a
" 'likelihood that the plaintiff will prevail on the merits at trial' " as well as that
the interim balance of harms favors the plaintiff. (Cohen v. Board of Supervisors
(1985) 40 Cal.3d 277, 286.) But in reality, courts are accorded a great deal of
leeway in deciding whether to grant such injunctions. " ' "[By] balancing the
respective equities of the parties, [the trial court] concludes that, pending a trial on
the merits, the defendant should or . . . should not be restrained from exercising
the right claimed by him." ' [Citation.] [¶] . . . Generally, the ruling on an
application for a preliminary injunction rests in the sound discretion of the trial
court. The exercise of that discretion will not be disturbed on appeal absent a
showing that it has been abused." (Ibid.) A trial court may grant a preliminary
injunction based only on a showing that "the questions of law or fact are grave and
difficult," and the balance of harms favors plaintiff. (Wilms v. Hand (1951) 101
Cal.App.2d 811, 815.)

In my view, the need to safeguard the First Amendment right against prior
restraint, while not barring trade secret holders from obtaining preliminary
injunctions, requires that we make the standard for granting such injunctions more
rigorous. As Professor Redish has stated: "[B]ecause such prior restraints are
imposed by a judicial officer following some form of adversarial judicial process,
the heavy negative presumption traditionally associated with the prior restraint
doctrine is inappropriate. Nevertheless, because prior restraints are issued
following only an abbreviated judicial inquiry, they are properly employed only if
the asserted governmental interest could not be adequately protected by regulation
following a full adversarial trial and only if the court determines that a strong
likelihood exists that the government will be able to establish that the challenged
expression is regulable under substantive first amendment standards. . . . The
traditional equitable principle that the issuance of such preliminary relief is largely
a matter of the court's discretion . . . would have to change. Such broad discretion
is not consistent with first amendment concerns, and any court issuing such
preliminary relief against expression should expect no deference in the course of
appellate review." (Redish, supra, 70 Va. L.Rev. at pp. 88-89, fns. omitted.)
A preliminary injunction in the case of an alleged trade secret publication
may be appropriate because the trade secret holder's property rights "could not be
adequately protected by regulation following a full adversarial trial." (Redish,
supra, 70 Va. L.Rev. at p. 88.) But when a publication presumptively protected by
the First Amendment is alleged to contain trade secrets, the broad discretion
usually granted trial courts in these matters should be, while not eliminated
entirely, considerably narrowed. A mere showing that the questions of law or fact
are grave and difficult would be insufficient to warrant a preliminary injunction.
Rather, a plaintiff should be required to actually establish a likelihood of
prevailing on the merits, regardless of the balance of harms.

The majority, as I understand it, implicitly acknowledges this heightened
standard when it holds, based on general First Amendment principles that a trial
court's determination in these cases would be subject to independent appellate
review. As the majority states: "[T]he Court of Appeal must 'make an
independent examination of the entire record' (Bose Corp. v. Consumers Union of
U.S., Inc. (1984) 466 U.S. 485, 499), and determine whether the evidence in the
record supports the factual findings necessary to establish that the preliminary
injunction was warranted under California's trade secret law." (Maj. opn., ante, at
p. 30.) The First Amendment's requirement that appellate courts make an
independent examination of the whole record is designed to "make sure that 'the
judgment does not constitute a forbidden intrusion on the field of free
expression.' " (Bose Corp. v. Consumers Union of U.S., Inc., supra, 466 U.S. at p.
499.) Accordingly, an appellate court must overturn the issuance of a preliminary
injunction against a publication allegedly containing trade secrets if it finds, on its
own examination of the record, no likelihood that the trade secret holder will
prevail on the merits. Otherwise, such independent appellate review would be
devoid of meaning.

In sum, a preliminary injunction on speech issued without a credible
determination that plaintiff will prevail on the merits is a quintessential case of suppressing speech " 'before an adequate determination that it is unprotected by the First Amendment' " (Pittsburgh Press Co., supra, 413 U.S. at p. 390) and would therefore be an unlawful prior restraint. Unlike the Court of Appeal,
however, I would hold that when the alleged trade secret holder bringing an action against a trade secret publisher or would-be publisher actually establishes both a likelihood that it will prevail on the merits, and that the balance of harms is in its favor, the issuance of a preliminary injunction would be an appropriate means of
preserving the secrecy that is the essence of plaintiff's property interest, subject to independent appellate review. Because the majority arrives at essentially the same conclusion, albeit by a different analytical path, I concur in its holding.2

As we recently reaffirmed: " '[B]ecause unnecessarily protracted litigation
would have a chilling effect upon the exercise of First Amendment rights, speedy
resolution of cases involving free speech is desirable.' " (Winter v. DC Comics
(2003) 30 Cal.4th 881, 891.) Undertaking independent review, I conclude, as a
matter of law, that there is no likelihood that the DVD CCA would prevail on the
merits. There is therefore no need to remand to the Court of Appeal for further
proceedings. The unnecessary delay in resolving this litigation can only further
burden speech protected by the First Amendment.

As explained in the majority opinion, Bunner is alleged to have
downloaded from the Internet and republished the DeCSS source code
incorporating CSS, the DVD CCA's proprietary information. The general rule is
that "[o]nce the secret is out, the rest of the world may well have a right to copy it
at will; but this should not protect the misappropriator or his privies."
(Underwater Storage, Inc. v. United States Rubber Co. (D.C. Cir. 1966) 371 F.2d
950, 955.) DeCSS was not demonstrably secret in this case when Bunner
republished it, and Bunner was neither alleged to be the original misappropriator
nor to be in privity with any such misappropriators.

Civil Code section 3426.1, subdivision (d) defines "trade secret" as
"information, including a formula, pattern, compilation, program, device, method,
technique, or process, that: [¶] (1) Derives independent economic value, actual or
potential, from not being generally known to the public or to other persons who
can obtain economic value from its disclosure or use; and [¶] (2) Is the subject of
efforts that are reasonable under the circumstances to maintain its secrecy." A
legislative committee comment further states: "The language 'not being generally
known to the public or to other persons' does not require that information be
generally known to the public for trade secret rights to be lost. If the principal
person who can obtain economic benefit from information is aware of it, there is
no trade secret. A method of casting metal, for example, may be unknown to the
general public but readily known within the foundry industry." (Legis. Com. com.
12A pt.1 West's Ann. Civ. Code (1997 ed.) foll. Civ. Code, § 3426.1, p. 239
(Legislative Committee Comment.).)
The Legislative Committee Comment further explains the original draft
defined a trade secret in part as "not being readily ascertainable by proper means"
and that "the assertion that a matter is readily ascertainable by proper means
remains available as a defense to a claim of misappropriation. [¶] Information is
readily ascertainable if it is available in trade journals, reference books, or
published materials." (Legis. Com. Com., 12A pt. 1 West's Ann. Civ. Code,
supra, foll. Civ. Code, § 3426.1, p. 239.)

Therefore, had Bunner obtained DeCSS information from a computer
magazine or a newspaper, the information would be considered "readily
ascertainable" and not a trade secret. Instead, he learned of DeCSS from a
computer discussion group and downloaded it from a Web site on the Internet.
The date of Bunner's initial posting is unclear from the record, and the availability
of DeCSS on the Internet at the time of the posting is also not clear. The DVD
CCA's attorney declared that at the time the complaint against Bunner and others
was filed in December 1999, approximately two months after the initial posting, at
least 118 Web sites had been identified that either contained proprietary
information related to CSS or provided links to other Web sites with such
information. How can information published in a computer magazine be regarded
as "readily ascertainable" but not information published on numerous Web sites?
Nor is it at all clear that information published in a trade journal would have
greater permanency than information published on the Internet.3
Courts that have considered the matter have agreed that, generally
speaking, a party not involved in the initial misappropriation of a trade secret
cannot be prosecuted under trade secret law for downloading and republishing
proprietary information posted on the Internet, primarily because the information
is in the public domain and is no longer secret. (Religious Technology Center v.
Netcom On-Line Communications Services, Inc. (N.D.Cal. 1995) 923 F.Supp.
1231; Religious Technology Center v. Lerma (E.D.Va. 1995) 908 F.Supp. 1362;
Religious Technology Center v. F.A.C.T.NET, Inc. (D.Col. 1995) 901 F.Supp.
1519.) This conclusion is also consistent with the principle that the First
Amendment generally prohibits limitations, absent some extraordinary showing of
governmental interest, on the publication of information already made public.
(The Florida Star v. B.J.F. (1989) 491 U.S. 524 [state could not punish publication
of name of sexual offense victim lawfully acquired]; Smith v. Daily Mail Pub. Co.
(1979) 443 U.S. 97, 103 [newspapers could not be punished for publishing the
name of a juvenile charged with an offense, lawfully obtained by monitoring the
police radio transmissions]; Landmark Communications, Inc. v. Virginia (1978)
435 U.S. 829 [invalidating criminal sanctions against third party that published
report of judicial review commission]; Cox Broadcasting Corp. v. Cohn (1975)
420 U.S. 469, 491 [state could not forbid or punish the publication of the name of
a rape victim obtained from public records].) Furthermore, Internet speech and
publication are fully protected by the First Amendment. (Reno v. ACLU (1997)
521 U.S. 844, 870.) Thus, both trade secret law and the First Amendment are in
accord that information republished on the Internet after having been made public
on the Internet generally cannot be sanctioned.

The trial court, in preliminarily concluding that the trade secret was not
lost, stated: "Plaintiffs moved expeditiously, reasonably and responsibly to protect
their proprietary information as soon as they discovered it had been disclosed by
investigating, sending cease and desist letters all over the world and then filing suit
against those who refused within two months of the disclosure." But under Civil
Code section 3426.1, subdivision (d), the question whether the information in
question "[i]s the subject of efforts that are reasonable under the circumstances to
maintain its secrecy" is separate from the question whether the information is "not
. . . generally known to the public or to other persons who can obtain economic
value from its disclosure or use." In order to claim the existence of the trade
secret, both conditions must be present. Therefore, even when a trade secret
holder acts with perfect diligence, it has no action against the republisher of no longer-secret information who does not act in privity with the original
misappropriator. (See Religious Technology Center v. Lerma, supra, 908 F.Supp.
1362, 1368 [information posted on the Internet for 10 to 12 days no longer a trade
secret].)

That is not to say that a trade secret is automatically lost any time it is
posted on the Internet. Amici Curiae Intellectual Property Law Professors et alia
argue, for example, that information posted on an obscure Internet site and
detected quickly should not lose trade secret status. This position is consistent
with case law holding that minor disclosures of a trade secret followed by a brief
delay in withdrawing it from the public domain do not cause trade secret status to
be lost. (Hoechst Diafoil Co. v. Nan Ya Plastics Corp. (4th Cir. 1999) 174 F.3d
411, 418 [recognizing as well established that the required secrecy is relative
rather than absolute]; Gates Rubber Co. v. Bando Chemical Indus., Ltd. (10th Cir.
1993) 9 F.3d 823, 849.) But a plaintiff carries the burden of showing that the trade
secret remains a secret despite the Internet posting. In the present case, nothing in
the record indicates that the DVD CCA met that burden. In fact, the trial court
failed to make any particularized findings at all that the information was still
secret when Bunner republished it, instead treating the 20 or so defendants as a
class and making general statements that these defendants had published secret
information. Without evidence in the record that the proprietary information was
still secret at the time Bunner downloaded it from the Internet, the DVD CCA
cannot sustain its burden of demonstrating a likelihood of prevailing on the
merits.4

In sum, the DVD CCA has failed to establish that the information Bunnerrepublished was still secret at the time he republished it on his Web site.5
It is likely that the trial court's view of this case was colored by the content
of the information · that DeCSS is designed to circumvent the encryption of
DVD's. But the fact that the information at issue is being used for a decrypting
purpose is not significant from the standpoint of trade secret law. (See Chicago
Lock Co. v. Fanberg (9th Cir. 1982) 676 F.2d 400, [overturning trade secret
injunction against publication of key codes for tubular locks by two locksmiths
who acquired codes properly by reverse engineering].) It may or may not be the
case that Bunner's action violated the Digital Millennium Copyright Act (DMCA)
(17 U.S.C. § 1201), which explicitly prohibits various efforts to circumvent
"technological measures that effectively control access" to copyrighted works (id.,
§ 1201 (a)(1)(E), (2)(A)). Unlike trade secret law, the DMCA does not inquire
into whether technology-circumventing devices are acquired by improper means
or are based on secret information, but rather considers whether the primary
purpose of those devices was improper. (Ibid.; see Universal City Studios, Inc. v.
Corley (2d Cir. 2001) 273 F.3d 429, 440-441.) DVD CCA's complaint did not
allege a violation of the DMCA and that issue is not before us. All I would decide
is that it is manifest from the record that the DVD CCA did not establish a
likelihood of prevailing on its trade secret claim.

Therefore, I conclude that the trial court's preliminary injunction against
Bunner was an unlawful prior restraint. Accordingly, instead of remanding to the
Court of Appeal for further proceedings, I would affirm its judgment on the
alternate grounds stated above.
MORENO, J.

1 All further statutory references are to the Civil Code unless otherwise
indicated.

2 "The text of programs written in [computer programming] languages is
referred to as source code. And whether directly or through the medium of
another program, the sets of instructions written in programming languages-the
source code-ultimately are translated into machine 'readable' strings of 1's and
0's, known in the computer world as object code, which typically are executable
by the computer." (Reimerdes, supra, 111 F.Supp.2d at p. 306, fns. omitted; for
an explanation of the more technical aspects of computers and computer software,
please read Judge Kaplan's opinion in Reimerdes, supra, 111 F.Supp.2d 294.)

3 As we explained in Pavlovich v. Superior Court (2002) 29 Cal.4th 262,
265, " '[t]he Internet is an international network of interconnected computers'
which 'enables[] tens of millions of people to communicate with one another and
to access vast amounts of information from around the world.' [Citation.] 'The
best known category of communication over the Internet is the World Wide Web,
which allows users to search for and retrieve information stored in remote
computers, as well as, in some cases, to communicate back to designated sites. In
concrete terms, the Web consists of a vast number of documents stored in different
computers all over the world.' [Citation.] On the Web, 'documents commonly
known as Web "pages," are . . . prevalent.' [Citation.] These pages are located at
Web sites and have addresses marking their location on the Web. [Citation.]"

4 Following the filing of this action, Bunner apparently removed DeCSS
from his Web site.

5 Therefore, we need not decide whether the proprietary CSS technology is
part of the public domain and no longer a protectable trade secret or whether
Johansen acquired the trade secrets by improper means when he reverse
engineered the Xing software in violation of a license agreement. We also decline
to address Bunner's contention that the preliminary injunction violates the
intellectual property clause of the United States Constitution (U.S. Const., art. I,
§ 8) because DVD CCA's trade secrets have been publicly disclosed and are no
longer secret. We leave the resolution of these issues for the Court of Appeal on
remand. 

6 Bunner does not challenge the constitutionality of California's trade secret
statutes.

7 For the same reason, those cases where the United States Supreme Court
found unconstitutional statutes or injunctions prohibiting or penalizing the
disclosure of confidential information lawfully obtained and substantially related
to a matter of public significance are inapposite. (See The Florida Star v. B.J.F.
(1989) 491 U.S. 524 [holding that a statute making it unlawful to disclose the
name of a victim of a sexual offense obtained lawfully from the government itself
violated the First Amendment]; Smith v. Daily Mail Publishing Co. (1979) 443
U.S. 97 [holding that a criminal statute punishing a newspaper for publishing the
name of a juvenile offender lawfully obtained violated the First Amendment];
Landmark Communications, Inc. v. Virginia (1978) 435 U.S. 829 [holding that a
criminal statute punishing the dissemination of information about a proceeding
before a state judicial review commission lawfully obtained from the government
violated the First Amendment]; Oklahoma Publishing Co. v. District Court (1977)
430 U.S. 308 [holding that an injunction barring the news media from publishing
the name or picture of a juvenile offender obtained lawfully violated the First
Amendment]; Cox Broadcasting Corp. v. Cohn (1975) 420 U.S. 469 [holding that
a criminal statute punishing the publication or broadcast of the name or identity of
a rape victim obtained lawfully violated the First Amendment].) Indeed, the
United States Supreme Court has acknowledged that these cases may not apply
where, as here, the "sensitive information rests in private hands" (The Florida
Star, at p. 534) or the information was obtained unlawfully (id. at p. 535, fn. 8).

8 On remand, the Court of Appeal should determine whether the preliminary
injunction, including this portion, is justified under California's trade secret law.

1 In further support of its claim that the prior restraint doctrine does not
apply, the majority quotes without discussion the statement in Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd. (2d Cir. 1979) 604 F.2d 200, 206, that
"[t]his is not a case of government censorship, but a private plaintiff's attempt to
protect its property rights." If this dictum is supposed to convey that the prior
restraint doctrine applies only to official government censorship and not to
injunctions issued in the course of litigation between private parties, then it is
simply untrue. (See Metropolitan Opera Association, Inc. v. Local 100, Hotel &
Restaurant Employees International Union (2d Cir. 2001) 239 F.3d 172, 176
[preliminary injunction against publication an unlawful prior restraint in private
defamation actions].) Nor is it at all clear that the prior restraint doctrine does not
apply whenever a plaintiff claims its intellectual property rights are being violated.
It should also be noted that the Court of Appeal properly rejected the DVD
CCA's reliance on copyright cases in arguing that preliminary injunctions should
be routinely granted. As the Court of Appeal stated: "Protections for trade secrets
. . . are not comparable to protections for copyrights with respect to the First
Amendment. First, since both the First Amendment and the constitutional
authority underlying the Copyright Act are contained in the United States
Constitution, the resolution of a conflict between free speech and copyright
involves a delicate balancing of two federal constitutional protections. Article I of
the United States Constitution explicitly grants Congress the power 'To promote
the progress of science and useful arts, by securing for limited times to authors and
inventors the exclusive right to their respective writings and discoveries.' (U.S.
Const., art. I, § 8.) The [Uniform Trade Secrets Act], on the other hand, lacks any
constitutional foundation. . . . [¶] Second, injunctions in copyright infringement
cases have been upheld 'on the ground that First Amendment concerns are
protected by and coextensive with the [Copyright Act's] fair use doctrine.' (Nihon
Keizai Shimbun, Inc. v. Comline Business Data (2d Cir. 1999) 166 F.3d 65, 74.)
The 'fair use' exception permits copying and use of a copyrighted work 'for
purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research' under certain circumstances. (17 U.S.C. § 107.) It 'offers a means of
balancing the exclusive rights of a copyright holder with the public's interest in
dissemination of information affecting areas of universal concern, such as art,
science and industry. . . . . In contrast, the UTSA contains no exception for 'fair
use' or any other vehicle for safeguarding First Amendment concerns."

2 I note that the above standard applies only when there is no indication that
the trade secret involves matters of public concern, as in the present case. As the
majority suggests, when public concern is implicated, the burden of overcoming
the presumption against prior restraint would be substantially higher. (See New
York Times v. United States (1971) 403 U.S. 713.)

3 I note that since the time the preliminary injunction went into effect, it
appears that the DVD CCA's proprietary information has been widely distributed.
According to several uncontradicted declarations attached to Bunner's motion to
dismiss for mootness, filed in this court on February 7, 2003, DeCSS remains
available at hundreds of locations on the Internet. Moreover, CSS and its
algorithms and keys have been the subject of extensive academic research and
discussion, including technical papers describing and analyzing CSS, and
computer science courses in which the methods and flaws of CSS encryption are
taught.

4 Moreover, in assessing the balance of harms, the trial court neglected to
consider the harm to Bunner's First Amendment rights. (See American
Booksellers Association, Inc. v. Superior Court (1982) 129 Cal.App.3d 197, 206.)

5 I also note that it is highly doubtful the alleged trade secret was acquired by
improper means within the meaning of the trade secret law. Civil Code section
3426.1, subdivision (a), defining "improper means," states "[r]everse engineering
. . . alone shall not be considered improper means." Apparently the word "alone"
refers to the fact that the item reverse engineered would have to be obtained "by a
fair and honest means, such as purchase of the item on the open market for reverse
engineering to be lawful." (Legis. Com. Com., 12A pt. 1 West's Ann. Civ. Code,
supra, foll. Civ. Code, § 3426.1, p. 238, quoting Rest. Torts § 757, com. (f).)
According to the allegations of the complaint, the alleged initial misappropriator
of CSS, Jon Johannsen, acquired the secret through reverse engineering. There is
no allegation that he acquired the product containing CSS unlawfully, and that
therefore improper means were employed. The DVD CCA argument below that
violation of a "click license" agreement prohibiting reverse engineering
constituted the improper means does not appear to have merit. To be sure,
contract plays an important role in trade secret law by protecting the trade secret
holder against "unauthorized use or disclosure through a contract with the
recipient of a disclosure" or others who have had special access to trade secret
information, via confidentiality agreements and the like. (Rest.3d Unfair
Competition, § 41, com. d, p. 471, italics added.) But nowhere has it been
recognized that a party wishing to protect proprietary information may employ a
consumer form contract to, in effect, change the statutory definition of "improper
means" under trade secret law to include reverse engineering, so that an alleged
trade secret holder may bring an action even against a nonparty to that contract.
Moreover, if trade secret law did allow alleged trade secret holders to redefine
"improper means" to include reverse engineering, it would likely be preempted by
federal patent law, which alone grants universal protection for a limited time
against the right to reverse engineer. (See Bonito Boats, Inc. v. Thunder Craft
Boats, Inc. (1989) 489 U.S. 141, 155.)