SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

3:17-CV-00561-WHO 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

DENISE M. MINGRONE (STATE BAR NO. 135224)

dmingrone@orrick.com 

ROBERT L. URIARTE (STATE BAR NO. 258274) 

ruriarte@orrick.com 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

1000 Marsh Road 

Menlo Park, CA 94025-1015 

Telephone: +1 650 614 7400 

Facsimile: +1 650 614 7401 

CLAUDIA FROST (Pro Hac Vice Pending) 

cfrost@orrick.com 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

609 Main Street, 40th Floor 

Houston, TX 77002-3106 

Telephone: +1 713 658 6460 

Facsimile: +1 713 658 6401 

Attorneys for Plaintiff/Counterdefendant 

SYNOPSYS, INC.

IN THE UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

SYNOPSYS, INC.,

Plaintiff, 

v. 

UBIQUITI NETWORKS, INC., UBIQUITI 

NETWORKS INTERNATIONAL LIMITED, 

CHING-HAN TSAI, and DOES 1-20, 

inclusive, 

Defendants. 

Case No. 3:17-cv-00561-WHO-LB

SYNOPSYS’ RESPONSE TO 

DEFENDANTS’ SUPPLEMENTAL 

BRIEF RE EXTRATERRITORIALITY 

OF 17 U.S.C. § 1201(a)(1) 

Date: January 18, 2018 

Time: 9:30 a.m. 

Dept. Courtroom C, 15th Floor 

Judge: Hon. Laurel Beeler

UBIQUITI NETWORKS, INC. AND 

UBIQUITI NETWORKS INTERNATIONAL 

LIMITED, 

Counterclaimants, 

v. 

SYNOPSYS, INC., 

Counterdefendant. 
TABLE OF CONTENTS 

Clause Page 

i 

SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

3:17-CV-00561-WHO 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

I. INTRODUCTION .................................................................................................................... 1

II. RELEVANT FACTUAL BACKGROUND ............................................................................ 1

III. LEGAL STANDARD .............................................................................................................. 3

IV. ARGUMENT............................................................................................................................ 3

A. Computers in Taiwan Are Relevant to Domestic DMCA § 1201(a)(1) Claims .................. 4

1.The “Focus” of § 1201(a)(1) is Circumvention of Access Controls, Which Ubiquiti Admits 

Doing From Within the U.S. .................................................................................................... 6

2. Traditional Copyright Jurisprudence Regarding Cross-Border Infringement Does Not 

Support Defendants’ Position .................................................................................................. 7

V. CONCLUSION ...................................................................................................................... 10
ii 

SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

3:17-CV-00561-WHO 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Allarcom Pay TV, Ltd. v. General Instrument Corp., 

69 F.3d 381 (9th Cir. 1995) ......................................................................................................7,8 

Automattic Inc. v. Steiner, 

82 F. Supp. 3d 1011 (N.D. Cal. 2015) ..................................................................................5,6,9 

Columbia Pictures Indus. v. Fung, 

2009 U.S. Dist. LEXIS 122661 (C.D. Cal. 2009) .......................................................................9 

Columbia Pictures Indus. v. Gary Fung, 

710 F.3d 1020 (9th Cir. 2013) ...................................................................................................10 

Doe v. Geller, 

533 F. Supp. 2d 996 (N.D. Cal. 2008) ............................................................................5, 6, 8, 9 

Dytch v. Yoon, 

2011 WL 839421 (N.D. Cal. 2011).............................................................................................4 

Flava Works, Inc. v. Gunter, 

2011 U.S. Dist. LEXIS 98451 (N.D. Ill. 2011) ...........................................................................9 

Goes Int’l, AB v. Dodur Ltd., 

2016 U.S. Dist. LEXIS 13748 (N.D. Cal. Feb. 4, 2016) .........................................................3, 8 

Kirtsaeng v. John Wiley & Sons, Inc., 

568 U.S. 519 (2013) ....................................................................................................................9 

Liberty Media Holdings, LLC v. Vinigay.com, 

2011 U.S. Dist. LEXIS 153615 (D. Arizona 2011) ....................................................................9 

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 

2010 U.S. Dist. LEXIS 85266 (N.D. Cal. 2010) .........................................................................9 

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 

658 F.3d 936 (9th Cir. 2011) .....................................................................................................10 

MDY Indus., LLC v. Blizzard Entm’t, Inc., 

629 F.3d 928 (9th Cir. 2010) ...........................................................................................6, 7, 8, 9 

Perfect 10, Inc. v. Amazon.com, Inc., 

508 F.3d 1146 (9th Cir. 2007) ...............................................................................................9, 10 

Perfect 10, Inc. v. Yandex N.V., 

962 F. Supp. 2d 1146 (N.D. Cal. 2013) ....................................................................................10 
iii SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

RJR Nabisco, Inc. v. European Cmty., 

136 S. Ct. 2090 (2016) ........................................................................................................4, 5, 6 

Shropshire v. Canning, 

809 F. Supp. 2d 1139 (N.D. Cal. 2011) ..................................................................................8, 9 

Subafilms, Ltd. v. Mgm-Pathe Commc’ns. Co., 

24 F.3d 1088 (9th Cir. 1994) ...................................................................................................5, 8 

Synopsys, Inc. v. Ubiquiti Networks, Inc., 

2017 U.S. Dist. LEXIS 130070 (N.D. Cal. Aug. 15, 2017) ..................................................4, 10 

Teespring, Inc. v. Puetz, 

2017 U.S. Dist. LEXIS 35733 (N.D. Cal. 2017) .........................................................................9 

Universal City Studios v. Corley, 

273 F.3d 429 (2nd Cir. 2001) ....................................................................................................10 

Statutes 

17 U.S.C. § 602 .................................................................................................................................9 

17 U.S.C. § 1201(a)(2) & 1201(b) ....................................................................................................1 

17 U.S.C. § 1201(a)(3)(A) ................................................................................................................7 

17 U.S.C. § 1201(a)(3)(B).................................................................................................................7 

17 U.S.C. § 1202 ...............................................................................................................................5 

18 U.S.C. § 1029 ...........................................................................................................................1, 4 

18 U.S.C. § 2318 ...........................................................................................................................1, 4 

Other Authorities 

Fed. R. Civ. P. 26 ..............................................................................................................................4 

Fed. R. Civ. P. 26(b)(1) .....................................................................................................................3 

Fed. R. Evid. 104... ..........................................................................................................................3 

S. Rep. No. 105-190 (1998) ..............................................................................................................5 
1 

SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

3:17-CV-00561-WHO 

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

I. INTRODUCTION 

Synopsys seeks to forensically inspect the computers Defendants used to pirate 

Synopsys’ software. Defendants’ sole argument against the requested inspection is that 

computers in Taiwan are not relevant to Synopsys’ DMCA § 1201(a)(1) claim because the 

Copyright Act generally does not apply abroad. Dkt. 105, Defendants’ Supplemental Brief 

(“Supp. Br.”) at 4:27-5:12. Defendants’ extraterritoriality argument is wrong, but more 

importantly, it is a red herring for two reasons. First, Defendants concede that at least two 

Ubiquiti employees gained access within the United States to Synopsys’ software hosted on 

Defendants’ devices in Taiwan. Application of the DMCA to these U.S.-based acts is a domestic 

application of the statute. Because it is undisputed that Defendants’ devices in Taiwan facilitated 

domestic DMCA violations, discovery of the subject devices is relevant even if the DMCA does 

not apply to “wholly extraterritorial” conduct. Likewise, computers belonging to Defendants’ 

Taiwan-based employees that could have been transported to (or remotely accessed from) the 

U.S. are subject to discovery notwithstanding Defendants’ extraterritoriality argument. 

Second, Defendants ignore Synopsys’ five additional claims—independent of its DMCA 

§ 1201(a)(1) claim—that justify the requested forensic discovery. Synopsys asserts claims for 

trafficking in circumvention technology (17 U.S.C. § 1201(a)(2) & 1201(b)), trafficking in 

counterfeit software labels (18 U.S.C. § 2318), trafficking in counterfeit access devices (18 

U.S.C. § 1029), and fraud, all of which involve Defendants’ Taiwan computers. Defendants 

have not made any extraterritoriality arguments regarding these claims, nor can they. 

II. RELEVANT FACTUAL BACKGROUND 

Synopsys’ claims all arise from Defendants’ trafficking and use of counterfeit license keys 

to pirate Synopsys’ software. Synopsys seeks forensic discovery of three categories of devices: 

(1) devices that Defendants used to host Synopsys’ software and license keys for remote access; 

(2) devices that Defendants’ employees used to access Synopsys software; and (3) devices 

belonging to Defendant Tsai.1 Defendants’ statement that Synopsys seeks “hundreds and 

1

 Tsai’s devices were not at issue when the parties submitted their initial joint letter brief, because 

the parties had already agreed to inspection of the devices on a date in late December 2017. Dkt. 

99 at 4, n.2. But Defendants reneged on their agreement at the eleventh hour, citing the Court’s 
2 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

hundreds of Defendants’ computers” (Supp. Br. at 3, n.1) is false, as Synopsys only seeks 

inspection of the specific devices used to access Synopsys’ software.2

Synopsys’ Second Amended Complaint (“SAC”) alleges that Defendants “set up networks 

of computers that permitted persons to remotely access counterfeit keys...and unauthorized and 

counterfeit copies of Synopsys’ software from multiple workstations connected to the Internet 

and to shared IT infrastructure via IP addresses, domains, and subdomains owned and/or 

controlled by Ubiquiti and UNIL.” SAC ¶ 59. Defendants’ supplemental brief and supporting 

declarations establish that these allegations are true: “the entire team” of Ubiquiti and UNIL 

employees working on Ubiquiti’s semiconductor design project had “access to two shared 

username accounts on UNIL’s computer system,” and the computers Defendants set up to host 

Synopsys’ software and license keys were “remotely accessed by ASIC design team members 

using their individual laptops and computers.” Supp. Br. at 4:2-3; 4:10-14. Critically, 

Defendants concede that Ubiquiti employees engaged in the conduct described in SAC ¶ 59 from 

within the U.S. Tsai Decl., Dkt. 105-5 ¶¶ 15-17; Wang Decl., Dkt. 105-18 ¶6. 

The SAC further alleges that Defendants “configured computers so that Synopsys’ 

applications and counterfeit license keys were accessible from a virtual machine” that could be 

“transported and used in and outside of California.” SAC ¶ 62. This allegation also finds support 

in Defendants’ recent submissions. Although Defendants previously told the Court under penalty 

of perjury that UNIL conducted no business activities whatsoever in California or the United 

States,3 Defendants now admit that UNIL employees with access to Synopsys’ software did 

indeed travel to California and other U.S. locations during the relevant time period. 

Conveniently, these employees “do not recall” whether they used Synopsys’ software while they 

December 22, 2017 order as authority for dictating to Synopsys an unreasonable protocol 

designed to hamstring Synopsys’ experts and force waiver of work product protection.

2

 Synopsys will not address seriatim Defendants’ immaterial misrepresentations about the meet 

and confer history underlying this discovery dispute, but notes that it has been attempting to 

negotiate a compromise on forensics for many months. Defendants have been dilatory at every 

step and have now reneged on the one compromise that the parties were able to agree on. 

3 Dkt. 25-1; see also Dkt. 25 at 1 (“it is [] not true that UNIL conducts or has conducted business 

within this state”) June 14, 2017 Hr’g Tr. 6:7-15 (counsel vouching that “UNIL has nothing 

happening in the United States.”).
3 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

were in the U.S. on company business. Dkt. 105-15 ¶ 5 (discussing U.S. trip to visit “silicon IP 

vendor”); Dkt. 105-5 ¶ 16 (discussing visit to “silicon IP vendor’s headquarters near San Jose”); 

Dkt. 105-10 ¶ 5; Dkt. 105-13 ¶ 5. Combined with Synopsys’ call-home data showing 

circumvention carried out from computers with U.S. IP addresses, U.S. travel by Defendants’ 

employees amply justifies discovery of the subject devices. Forensic discovery is especially 

important given Defendants’ alteration of evidence after Synopsys confronted them about their 

rampant piracy. Dkt. 85-1 ¶17 (discussing Tsai’s reconfiguration of IT systems). 

III. LEGAL STANDARD 

The Court’s analysis in Goes Int'l, AB v. Dodur Ltd., 2016 U.S. Dist. LEXIS 13748, at *4-

7 (N.D. Cal. Feb. 4, 2016) applies with full force here: 

It is important to recall exactly what is before the court. This is a discovery 

motion. It is not a dispositive motion on the merits of the plaintiff’s claim. The 

plaintiff is not limited to admissible evidence; it need not prove its claim. The 

plaintiff must show only that, given its claim, the requested discovery is relevant 

and proportional to the needs of this case. See Fed. R. Civ. P. 26(b)(1). 

“Information . . . need not be admissible in evidence to be discoverable.” Id. In 

deciding whether the plaintiff has made that showing, the court can consider even 

inadmissible evidence. Cf. Fed. R. Evid. 104... 

The court cannot reach a substantive decision — especially one of such potentially 

broad consequence— without fuller factual development using admissible 

evidence, and legal argument specifically directed to, and elaborated on the basis 

of, that fuller proof... 

Rule 26(b)(1) of the Federal Rules of Civil Procedure describes the basic scope of 

discovery — i.e., what information parties can rightly demand from one another: 

Parties may obtain discovery regarding any nonprivileged matter 

that is relevant to any party's claim or defense and proportional to 

the needs of the case, considering the importance of the issues at 

stake in the action, the amount in controversy, the parties' relative 

access to relevant information, the parties' resources, the 

importance of the discovery in resolving the issues, and whether 

the burden or expense of the proposed discovery outweighs its 

likely benefit.... 

(citing Fed. R. Civ. P. 26). 

IV. ARGUMENT 

Defendants’ brief adds nothing of substance to the extraterritoriality argument that this 

Court and Judge Orrick have already rejected. Dkt. 104 at 4. Defendants’ brief fails to discuss 

the only two cases that contain reasoned analysis of the DMCA’s extraterritoriality, 
4 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

mischaracterizes the state of the law regarding cross-border copyright infringement, and does not 

even attempt to apply the two-step extraterritoriality analysis required by RJR Nabisco, Inc. v. 

European Cmty., 136 S. Ct. 2090, 2100-01 (2016). 

Moreover, although Synopsys noted in its section of the parties’ joint letter that 

Defendants’ section 1201(a)(1) extraterritoriality argument is a complete red herring because 

other claims justify forensic discovery of computers in Taiwan, Defendants’ brief makes no 

attempt to address any of these claims.4 The requested forensic discovery is indisputably 

relevant to Synopsys’ (i) fraud claim, which arose in the U.S.; (ii) DMCA trafficking claims, 

which assert manufacture and importation of circumvention technology, see Synopsys, Inc. v. 

Ubiquiti Networks, Inc., 2017 U.S. Dist. LEXIS 130070, at *23-24 (N.D. Cal. Aug. 15, 2017) 

(discussing trafficking claims); (iii) counterfeit label trafficking claim under 18 U.S.C. § 2318, a 

statute that applies if “a facility of interstate or foreign commerce is used or intended to be used 

in the commission of the offense” (emphasis added); and (iv) counterfeit access device claim 

under 18 U.S.C. § 1029, a statute that expressly applies to persons “outside the jurisdiction of the 

United States.” These claims all involve Defendants’ activity, conducted between the U.S. and 

Taiwan, to carry out the alleged violations and all justify Synopsys’ demand for inspection. 

A. Computers in Taiwan Are Relevant to Domestic DMCA § 1201(a)(1) Claims 

The Supreme Court has established a two-step framework for analyzing whether a case 

involves impermissible extraterritorial application of U.S. law: 

At the first step, we ask whether the presumption against extraterritoriality has 

been rebutted—that is, whether the statute gives a clear, affirmative indication 

that it applies extraterritorially...If the statute is not extraterritorial, then at the 

second step we determine whether the case involves a domestic application of the 

statute, and we do this by looking to the statute’s “focus.” If the conduct relevant 

to the statute’s focus occurred in the United States, then the case involves a 

permissible domestic application even if other conduct occurred abroad... 

RJR Nabisco, 136 S. Ct. at 2101. The DMCA’s text, legislative history, and purpose are 

sufficient to rebut the presumption against extraterritoriality under step one of the RJR Nabisco

4

 Because parties cannot raise a new issue for the first time in their reply briefs, Defendants have 

waived any arguments regarding the relevance of the subject computers to Synopsys’ other 

claims. See, e.g., Dytch v. Yoon, 2011 WL 839421, at *3 (N.D. Cal. 2011) (collecting cases). 

Likewise, Defendants have waived their conclusory undue burden objection, which is not 

supported by any factual showing despite Defendants’ deluge of declarations. 
5 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

analysis.5 But step-one analysis is immaterial to this discovery dispute, because the second step 

of the RJR Nabisco analysis is dispositive. 

Courts have yet to apply RJR Nabisco’s two step analysis to the DMCA. Synopsys is 

aware of only two cases that contain reasoned analysis of the DMCA’s extraterritoriality, and 

they are both from the Northern District of California. See Doe v. Geller, 533 F. Supp. 2d 996, 

1004 (N.D. Cal. 2008) (“Geller”); Automattic Inc. v. Steiner, 82 F. Supp. 3d 1011, 1017 (N.D. 

Cal. 2015) (“Steiner”).6 Although these cases both predate RJR Nabisco, their reasoning is 

consistent with RJR Nabisco’s step-two “focus” inquiry and supports Synopsys’ position here. 

First, in Geller, Judge Walker considered a takedown notice sent from a party abroad to 

YouTube’s California offices concerning a video posted by a YouTube user in Pennsylvania. 

The plaintiff argued that copyright “authorization” case law such as Subafilms (note 7, supra)

should control the analysis, but Judge Walker held “that body of case law is inapposite” because 

it is rooted vicarious liability and the derivative relationship between direct and indirect 

copyright infringement. Geller, 533 F. Supp. 2d at 1004. After noting that “copyright law is 

especially unsettled when it comes to cross-border communications” Judge Walker concluded 

that “copyright law does not provide a satisfactory answer whether United States courts have 

jurisdiction over cross-border communications in § 512(f) suits.” Id. at 1003-04. 

Second, in Steiner, Judge Spero analyzed a claim by a blogger in London who posted an 

article on a website hosted by a company in California. A foreign defendant sent a DMCA 

takedown notice to the California company falsely claiming that that the blogger’s post infringed 

its copyrights. The California company and the blogger both sued the defendant under DMCA § 

5 This is so inter alia because the DMCA creates rights distinct from traditional copyright rights, 

prohibits importation of circumvention technology, and is based on a legislative history replete 

with references to a need for global protection of U.S. copyrighted works in the digital 

marketplace. See S. Rep. No. 105-190, at *1-2 (1998). Moreover, as this case makes clear, the 

DMCA’s anti-circumvention provision would be a dead letter if pirates could escape liability by 

simply setting up remote hosts offshore. 

6

 Defendants chose not to inform the Court of these two published Northern District cases, both 

of which reject Defendants’ argument that the DMCA only applies to conduct that takes place 

“wholly” within the United States. Defendants rely instead on an unpublished district court case 

that contains exactly one sentence regarding extraterritoriality of 17 U.S.C. § 1202, which is not 

at issue. 
6 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

512(f), which prohibits takedown notices that contain misrepresentations. Judge Spero concluded 

that notwithstanding the presumption against extraterritoriality, the plaintiffs’ claims were 

cognizable because “key elements of the cause of action were performed in California.” Steiner, 

82 F. Supp. 3d at 1027-28. 

Although Geller and Steiner concerned § 512, their analytical framework and harmonious 

rejection of Defendants’ position are instructive on the question of whether Synopsys’ claims 

entail a proper domestic application of § 1201(a)(1) to circumventions initiated and completed 

within the U.S., “even if other conduct occurred abroad.” RJR Nabisco, 136 S. Ct. at 2101. 

1. The “Focus” of § 1201(a)(1) is Circumvention of Access Controls, Which 

Ubiquiti Admits Doing From Within the U.S. 

Section 1201(a)(1)(A) prohibits “circumventing a technological measure that effectively 

controls access to a work protected under [the Copyright Act].” When Congress passed § 

1201(a)(1), it created a new substantive right: “the right to prevent circumvention of access 

controls.” MDY Indus., LLC v. Blizzard Entm't, Inc., 629 F.3d 928, 945 (9th Cir. 2010). This 

“access control” right is distinct from the exclusive rights under §106 of the Copyright Act. 

“Historically speaking, preventing ‘access’ to a protected work in itself has not been a right of a 

copyright owner arising from the Copyright Act.” MDY Indus., 629 F.3d at 944. But with the 

passage of the DMCA, copyright owners obtained a new right focused on preventing 

unauthorized access to digital works. To frame this right in Defendants’ own terms, the “final 

completed act” that § 1201(a)(1) prohibits is circumvention of an access control measure, which 

“culminates” when a user gains unauthorized access to a protected digital work. See 17 U.S.C. § 

1201(a)(3)(B) (circumvention technology violates the DMCA if it permits a person to “gain 

access to the work”); 17 U.S.C. § 1201(a)(3)(A) (broadly defining the phrase “circumvent a 

technological measure” to include “avoiding” and “bypassing” access controls in order to access a 

work); MDY Indus., 629 F.3d at 945 (right created by section 1201(a) is violated when 

circumvention technology “enables someone to watch or listen to a work without authorization”). 

Stated simply, Defendants violated the DMCA domestically when Ubiquiti employees 

who were physically present in the U.S. accessed Synopsys’ copyright protected works by 
7 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

avoiding, bypassing, and impairing Synopsys’ license key system. Forensic inspection of 

Defendants’ host computers in Taiwan may provide further evidence regarding how Defendants 

accomplished these U.S. violations of law, assuming complete spoliation has not occurred. 

Forensic inspection of Defendants’ non-host computers is also relevant discovery 

concerning potential DMCA violations carried out on virtual machines that may have been 

transported to or accessed from the U.S. Synopsys disputes Defendants’ current story that they 

only installed Synopsys’ software on a single host in Taiwan, because (i) Synopsys has produced 

call-home data showing Defendants’ executing Synopsys’ software from U.S. IP addresses, and 

(ii) Defendant Tsai previously stated under oath that he initially set up his personal laptop as the 

host machine for Synopsys’ software. Dkt. 35-1 ¶4. Synopsys believes that Defendants installed 

multiple copies of Synopsys’ software on multiple computers, some of which were transported to 

and from the U.S. The parties’ factual dispute on this issue highlights the need for forensic 

discovery that will enable Synopsys to test the self-serving attorney-speak from UNIL employees 

who state that they “do not recall” using Synopsys’ software during their travels to the U.S. 

2. Traditional Copyright Jurisprudence Regarding Cross-Border 

Infringement Does Not Support Defendants’ Position 

The lynchpin of Defendants’ extraterritoriality objection is the incorrect assertion that 

“[u]nder Allarcom, there is no liability where an act is initiated in the U.S. but completed in 

another country.” Supp. Br. at 9:6-8 (citing Allarcom Pay TV, Ltd. v. General Instrument Corp.,

69 F.3d 381, 387 (9th Cir. 1995).7 Defendants argue that “[b]ecause only acts of circumvention 

that occur wholly in the U.S. give rise to liability under the DMCA, Defendants need not turn 

over devices located in Taiwan.” Dkt. 99 at 5 (emphasis in original). But as several courts have 

7 Defendants also miscite Subafilms for this proposition (Supp. Br. at 6:11-12), but it says nothing 

of the sort. On the contrary, Subafilms cites with approval the following analysis from Professor 

Nimmer: 

If and to the extent a part of an “act” of infringement occurs within the United 

States, then, although such act is completed in a foreign jurisdiction, those parties 

who contributed to the act within the United States may be rendered liable under 

American copyright law. 

Subafilms, Ltd. v. Mgm-Pathe Commc’ns. Co., 24 F.3d 1088, 1094 n.9 (9th Cir. 1994). The Ninth 

Circuit expressly distinguished Subafilms from cases, like this one, in which “liability is not based 

on contributory infringement.” Id. at 1095. 
8 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

recognized, the issue is not that simple. E.g., Goes, 2016 U.S. Dist. LEXIS 13748, *7 (collecting 

cases). Assuming arguendo for purposes of this motion that traditional copyright jurisprudence 

provides the appropriate rubric for analysis of extraterritoriality of the DMCA,8 Defendants’ 

argument fails on its own terms. 

Contrary to Defendants argument, “courts are split on whether the infringing act must 

occur wholly within the United States or if the infringing act only must not occur wholly outside 

of the United States.” Shropshire v. Canning, 809 F. Supp. 2d 1139, 1145 (N.D. Cal. 2011) 

(collecting cases). Several courts have correctly declined to follow the dicta9 from Allarcom that 

Defendants rely on, choosing instead to examine “the precise factual details of the case before it: 

where was the illegal copy made, where was it broadcast from, where broadcast to, and so on.” 

Goes, 2016 U.S. Dist. LEXIS 13748, at *7 (collecting cases). Ascertaining the “precise factual 

details” regarding Defendants’ use and trafficking of circumvention technology via a 

sophisticated network of domestic and foreign computers is the reason that Synopsys seeks 

forensic discovery. Neither Allarcom nor any other case supports Defendants’ extreme position 

that Synopsys may not obtain discovery regarding foreign activities that facilitated infringement 

within the U.S. In fact, some copyright cases inherently require discovery of extraterritorial 

conduct in order to establish liability. See Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519, 

547 (2013) (discussing significance of extraterritorial copying under 17 U.S.C. § 602). 

 Defendants mischaracterize the “server test,” which is of no help to them. First, the 

server test is not a test for “determining the site of the alleged violation,” as Defendants argue. 

Supp. Br. at 6:23-26. Rather, the server test is a narrowly applicable test for determining whether 

a plaintiff has “made a prima facie case of violation of its display right” under 17 U.S.C. § 106 in 

8 Contra Geller, 533 F. Supp. 2d at 1004 (holding that traditional copyright law was of “little 

help” to assessing DMCA §512 extraterritoriality, since DMCA claims are not actually copyright 

claims); see also MDY Indus., 629 F.3d at 952 (noting that Congress created a distinct anticircumvention right under § 1201 that is distinct from the rights protected under 17 U.S.C. §106). 

9 Allarcom was a Federal Communications Act case that did not involve any copyright claims by 

the time the case reached the Ninth Circuit. The cited dicta regarding copyright is curious because 

the defendant who broadcast the accused satellite transmissions, Showtime Networks, also owned 

the copyrights to the transmissions and could not have infringed its own display rights. 
9 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

cases involving digital image thumbnails and hyperlinks.10 Perfect 10, Inc. v. Amazon.com, Inc., 

508 F.3d 1146, 1159 (9th Cir. 2007); Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 2010 

U.S. Dist. LEXIS 85266, *9 (N.D. Cal. 2010) (server test determines “whether digital image data 

stored on a computer may constitute a ‘copy’ under the Copyright Act.”) (partially overruled on 

other grounds); see also Flava Works, Inc. v. Gunter, 2011 U.S. Dist. LEXIS 98451, at *10 (N.D. 

Ill. 2011) (Perfect 10’s holding is “highly fact-specific”); Teespring, Inc. v. Puetz, 2017 U.S. Dist. 

LEXIS 35733, at *7 (N.D. Cal. 2017) (distinguishing Perfect 10 from cases where material is 

hosted on defendant’s own website); Liberty Media Holdings, LLC v. Vinigay.com, 2011 U.S. 

Dist. LEXIS 153615, at *17 (D. Arizona 2011) (analyzing Internet extraterritoriality issue without 

reference to server test); Geller, 533 F. Supp. at 1004 (same); Steiner, 82 F. Supp. 3d at 1017 

(same); Shropshire, 809 F. Supp. 2d at 1147 (same); Columbia Pictures Indus. v. Fung, 2009 

U.S. Dist. LEXIS 122661, at *30 (C.D. Cal. 2009) (same) (partially overruled on other grounds). 

Second, the server test concerns rights under 17 U.S.C. § 106 that are significantly 

different than the anti-circumvention right created by section 1201(a)(1). See MDY Indus., 629 

F.3d at 945 (discussing nature of new access control right); compare Perfect 10, 508 F.3d at 1159 

(no copyright liability for hosting hyperlinks to infringing material because hyperlinks were not 

“copies” of the images) with Universal City Studios v. Corley, 273 F.3d 429, 457 (2nd Cir. 2001) 

(affirming DMCA injunction prohibiting hyperlinks to websites hosting circumvention 

technology, because hyperlinks “enable[d] anyone anywhere to gain unauthorized access to 

copyrighted movies on DVDs”). 

Third, Defendants’ invocation of the server test is based on the logical fallacy that there 

can be only one “situs” of infringement carried out over the Internet. Contra Columbia Pictures 

Indus. v. Gary Fung, 710 F.3d 1020, 1034 (9th Cir. 2013) (noting that file sharing transaction 

involved two distinct copyright violations by two different parties). Defendants’ premise is 

10 The Ninth Circuit defined the server test as follows: “a computer owner that stores an image as 

electronic information and serves that electronic information directly to the user (i.e., physically 

sending ones and zeroes over the [I]nternet to the user’s browser, is displaying the electronic 

information in violation of a copyright holder’s exclusive display right. Conversely, the owner of 

a computer that does not store and serve the electronic information to a user is not displaying that 

information, even if such owner in-line links to or frames the electronic information.” Id. 

(citations omitted). 
10 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

wrong as a matter of law, as this case aptly demonstrates. When Defendant Tsai remotely 

accessed Synopsys’ software in the U.S. using counterfeit keys hosted on UNIL servers in 

Taiwan, multiple DMCA violations occurred in multiple locations: Tsai circumvented access 

controls within the U.S., while UNIL and Ubiquiti trafficked circumvention technology by 

providing from Taiwan, and importing to the U.S., circumvention technology that facilitated 

Tsai’s access. See Ubiquiti Networks, Inc., 2017 U.S. Dist. LEXIS 130070, at *23-24. 

To the extent the server test has any relevance here, it actually supports Synopsys’ 

position. Unlike the defendant’s servers in Perfect 10, UNIL’s servers did “store and serve the 

electronic information” at issue by “physically sending ones and zeroes over the Internet” to users 

in the U.S. 508 F.3d at 1159. And unlike Yandex, which did not involve any “actual downloads 

in the United States,” here, it is undisputed that users in the U.S. connected to Defendants’ servers 

in Taiwan in order to commit the DMCA violations alleged in the SAC. Perfect 10, Inc. v. 

Yandex N.V., 962 F. Supp. 2d 1146, 1153 (N.D. Cal. 2013). “There is no question that providing 

direct infringers with server space” can result in copyright infringement liability. Louis Vuitton 

Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 943 (9th Cir. 2011). 

***** 

This case may well result in the first comprehensive judicial analysis of the extraterritorial 

reach of DMCA § 1201(a)(1), but that analysis should take place with the benefit of a full 

evidentiary record showing when, where, and how Defendants used and trafficked the 

circumvention technology at issue. This important issue of first impression should not be 

unnecessarily decided in the context of a discovery motion in which only one side has access to 

the relevant forensic evidence. 

V. CONCLUSION 

For the reasons stated, Synopsys respectfully requests that the Court issue an order 

compelling Defendants to provide the requested forensic inspection and awarding Synopsys 

reasonable attorneys’ fees incurred in bringing the instant motion to compel. 
11 SYNOPSYS’ RESPONSE RE: DEFS.’ SUPPLEMENTAL 

EXTRATERRITORIALITY BRIEF

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28 

ORRICK, HERRINGTON &

SUTCLIFFE LLP 

ATTORNEYS AT LAW

SILICON VALLEY

Dated: January 8, 2018 DENISE M. MINGRONE

ROBERT L. URIARTE 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

By: /s/ Denise M. Mingrone

DENISE M. MINGRONE 

Attorneys for Plaintiff/Counterdefendant 

SYNOPSYS, INC.