United States District Court, E.D. Virginia, Alexandria Division
EILLS. III UNITED STATES DISTRICT JUDGE
issue in this criminal copyright infringement case is the
government's motion (i) to order defendants to declare
before trial whether they will assert an advice-of-counsel
defense and (ii) to confirm waiver of the attorney-client
privilege with respect to a memorandum Mr. Dallmann allegedly
received from an attorney. The indictment in this case
charges eight defendants with conspiracy to commit criminal
copyright infringement, in violation of 18 U.S.C. § 371,
through the operation of Jetflicks, an online,
subscription-based service that permitted users to stream
copyrighted works without permission from the copyright
owners.The government alleges that Jetflicks was
an illegal version of Netflix, namely a service where
defendants obtained infringing digital copies of copyrighted
television shows from pirate sites, processed and renamed
those works, and then streamed and distributed them on an
unlimited basis to paying subscribers.
is the mens rea that the government must establish
for each of the criminal copyright infringement offenses that
have been charged in this case. See, e.g., United States v.
Liu, 731 F.3d 982, 989 (9th Cir. 2013). A
defendant's assertion of the advice-of-counsel defense is
a way to "negate the element of willfulness."
United States v. Westbrooks, 780 F.3d 593, 595-96
(4th Cir. 2015). Accordingly, the government has filed the
instant motion because of concerns that one or more of the
defendants may seek to assert an advice-of-counsel defense at
trial, and that if a defendant asserts the advice-of-counsel
defense during trial without providing advance notice or
discovery to the government, such an assertion would require
a delay mid-trial so that the government could conduct the
necessary discovery and review of the attorney's advice.
reasons that follow, the government's motion is granted
in part and denied in part. Specifically, the
government's motion to order defendants to declare before
trial whether they will assert an advice-of-counsel defense
is granted, but the government's motion is denied to the
extent it seeks to compel defendants to declare their intent
now, long before trial. Accordingly, any defendant who
intends to assert an advice-of-counsel defense must provide
notice and discovery, but not until ten days prior to trial.
The government's motion to confirm waiver of the
attorney-client privilege with respect to a memorandum Mr.
Dallmann allegedly received from an attorney is denied,
without prejudice to the government's ability to renew
the motion in the event additional evidence is presented
concerning Mr. Dallmann's specific disclosures to the
initial matter, it is necessary to set forth the factual
background pertinent to the disposition of the
government's motion. According to the government, at
least three pieces of information indicate that Mr. Dallmann,
and potentially other defendants, may intend to assert the
advice-of-counsel defense at trial.
the government claims that during a November 16, 2019
interview between Mr. Dallmann and the FBI, Mr. Dallmann said
that he paid $3, 000 to an unidentified attorney for legal
advice regarding Jetflicks' streaming services. According
to Mr. Dallmann, the attorney provided three categories under
which Mr. Dallmann could operate Jetflicks, and Mr. Dallmann
stated that a memo from the attorney that detailed these
three permissible categories of operation would be among the
records seized by the FBI. During the execution of search
warrants at Mr. Dallmann's residences, the FBI did find a
hard copy document that was marked as privileged. To date,
neither the government nor the FBI has reviewed this
document, but the government did produce the document in
during that same November 16, 2019 interview with the FBI,
Mr. Dallmann told agents that Jetflicks received a cease and
desist letter from the Motion Picture Association of America
(MPAA) around November 2012. Mr. Dallmann claimed that he
brought this letter to the unidentified attorney, the
attorney told Mr. Dallmann to ignore the letter, and Mr.
Dallmann followed the attorney's advice.
the government has learned that in 2012 or 2013 an attorney
may have visited Jetflicks and opined on the legality of some
part of the operation in the presence of Mr. Dallmann and
other defendants. The government does not know whether this
attorney is the same person as the attorney Mr. Dallmann
described in his interview with the FBI.
December 15, 2019, the government asked counsel for the six
remaining defendants to advise the government whether they
intend to assert an advice-of-counsel defense at trial. Each
counsel that responded to the government advised that they
remain uncertain whether they will assert an
advice-of-counsel defense. In addition, defendant Felipe
Garcia's counsel reportedly expressed disagreement with
the principle that assertion of an advice-of-counsel defense
will constitute a waiver of the attorney-client privilege. On
December 26, 2019, the government filed the instant motion
(i) to order defendants to declare long before trial whether
they will assert an advice-of-counsel defense,  and (ii) to
confirm that the circumstances and content of Mr.
Dallmann's FBI interview waived his attorney-client
privilege with respect to a memorandum Mr. Dallmann allegedly
received from an attorney. On January 9, 2020, Mr. Garcia
filed a response to the government's motion, arguing that
the defendants should not be required to provide pretrial
notice of their intent to rely on the advice-of-counsel
defense. Subsequently, defendants Dallmann, Vaillant, and
Jaurequi filed motions to adopt Mr. Garcia's response as
noted, willfulness is the mens rea that the
government must establish for each of the criminal copyright
infringement offenses that have been charged in this case.
See, e.g., United States v. Liu, 731 F.3d 982, 989
(9th Cir. 2013). And a defendant's assertion of the
advice-of-counsel defense is a way to "negate the
element of willfulness." United States v.
Westbrooks, 780 F.3d 593, 595-96 (4th Cir. 2015). In
other words, the advice-of-counsel defense may be relevant if
"the defendant, on the basis of counsel's advice,
believed his conduct to be lawful and thus could not be found
to have had unlawful intent." United States v.
Beach-Nut Nutrition Corp., 871 F.2d 1181, 1194 (2d Cir.
initial matter, it is constitutionally permissible to place
on a defendant the burden of producing some evidence to
establish the advice-of-counsel defense. See
Westbrooks, 780 F.3d at 596 (finding that "a burden
of production to establish a prima facie defense is distinct
from the ultimate burden of proving an element of an offense
beyond a reasonable doubt" in reference to the
advice-of-counsel defense). Yet, it is important to note that
this in no way shifts the ultimate burden of proof, which
remains on the prosecution. It is equally important to note
that "the law places no burden on any defendant to prove
an affirmative defense beyond a reasonable doubt."
United States v. Gonzalez, 58 F.3d 506, 512 (10th
Cir. 1995). To the contrary, the defendant need only produce
"more than a scintilla of evidence" regarding such
a defense, while the burden remains on the government to
prove beyond a reasonable doubt every element of the offenses
charged. See United States v. Sligh, 142 F.3d 761,
762 (4th Cir. 1998) (discussing affirmative defense of
entrapment). Put simply, "the government must
prove the element of willfulness, [but] the court
may require the defendant to produce evidence
supporting the advice-of-counsel defense."
Westbrooks, 780 F.3d at 596. Thus, the defendant
bears the initial burden of production, but the prosecution
always retains the burden of persuasion, namely the burden of
proving the defendant's guilty state of mind beyond a
to establish the advice-of-counsel defense, defendants must
produce some evidence-more than a scintilla-showing that:
(i) the advice was sought and received before taking action,
(ii) they in good faith sought the advice of a professional
whom they considered competent, (iii) the purpose of securing
advice was to determine the lawfulness of future conduct,
(iv) a full and accurate report was made to the professional
of all material facts which the defendants knew and (v) they
acted strictly in accordance with the advice of the
professional who had been given a full report.
United States v. O'Connor, 158 F.Supp.2d 697,
727-28 (E.D. Va. 2001) (citing United States v.
Polytarides, 584 F.2d 1350, 1352 (4th Cir. 1978)). More
recently, the Fourth Circuit consolidated these five elements
into two, namely (i) full disclosure of all pertinent facts
to an attorney, and (ii) good faith reliance on the
attorney's advice. United States v. Powell, 680
F.3d 350, 356 (4th Cir. 2012) (citing United States v.
Butler, 211 F.3d 826, 833 (4th Cir. 2000) (citing
United States v. Miller, 658 F.2d 235, 237 (4th Cir.
1981)); see also United States v. O'Connor, 158
F.Supp.2d 697, 728 (E.D. Va. 2001).
defendant produces more than a scintilla of evidence that
that defendant disclosed all pertinent facts to an attorney
and relied on that attorney's advice in good faith, and
therefore asserts an advice-of-counsel defense, then whether
that defendant's advice-of-counsel defense negates the
willfulness requirement is a matter to be considered by the
jury in determining whether the government has proven
defendant's guilt beyond a reasonable doubt. See
United States v. Thaggard,477 F.2d 626, 632 (5th Cir.
1973) ("Advice of counsel, when given on full disclosure
of all the facts and followed in good faith, may be a matter
to be considered by the jury in determining the
appellant's guilt."); Miller v. United
States,277 F. 721, 726 ...