I would like to thank Question IPR for his/her comments on Part I of the post series and am reproducing the his/her first comment below for a better understanding of the law of secondary liability for copyright infringement in the U.S.
Question IPR stated that, “Indirect infringement liability (Secondary liability for Copyright infringement) in the
· Contributory Infringement
· Vicarious Infringement
· Inducement standard [I disagree with him/her. It is pertinent to note that the Sony standard of substantial non-infringing use was a standard created to determine contributory liability for secondary copyright infringement as opposed to vicarious liability for such infringement. Moreover, the Grokster ‘inducement’ standard was created to address the loophole in the law of contributory infringement, which failed to nab models like Grokster and Morpheus. Thus, the Grokster ‘inducement’ standard is an alternate to the Sony standard for determining liability for contributory liability for secondary copyright infringement, and is not a third independent standard for determining secondary infringement.]
A. Contributory –
One who knowingly induces, causes, or materially contributes to the infringing conduct of others is liable for contributory infringement. The defendant must:
1. know or have a reason to know of another's directly infringing activity; and
2. actively participate in it by inducing, materially contributing to, or furthering it
B. Vicarious -
Vicarious Infringement may be found whenever the defendant has:
1.the right and ability to control or supervise the direct infringer
2. a direct financial interest in the infringement
C. Inducement -
The standard laid down in the Grokster case is called “inducement infringement”
“ one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties”.
In applying the Inducement Test, the court looked at:
· Evidence of intent
· Unlawful purpose
· Active steps
Court found Grokster to be guilty because it:
· endeavored to be Napster replacement;
· made no attempt to develop filters to diminish infringing activity; and
· by selling ads, profited from high-volume use.”
I would suggest that readers read this part of the post after reading Question IPR’s comments, as they add to the content of Part I of this post series. Moving on, now we examine the application of the Grokster standard to TPB.
Application of The Grokster Standard: Liability of TPB
So, if the TPB case was to come up in the
It is pertinent to note that the charge against Grokster was that Grokster and Streamcast knowingly and intentionally distributed their software to enable users to reproduce and distribute the copyrighted works in violation of the Copyright Act. The technology in Grokster worked as follows:
A user who downloaded and installed the Grokster software possessed the Fast Track protocol which enabled him to send requests for files directly to the computers of others using compatible software.
On the FastTrack network opened by the Grokster software, the user’s request went to a computer given an indexing capacity by the software and designated a supernode, or to some other computer with comparable power and capacity to collect temporary indexes of the files available on the computers of users connected to it. The supernode (or indexing computer) searches its own index and may communicate the search request to other supernodes. If the file is found, the supernode discloses its location to the computer requesting it, and the requesting user can download the file directly from the computer located.
The copied file is placed in a designated sharing folder on the requesting user's computer, where it is available for other users to download in turn, along with any other file in that folder.
Thus, the ‘search engine/indexing capability’ was located within the Grokster setup itself, the user could make available, access and download files solely using the Grokster set up.
In the present case the software used is BitTorrent’s application, after converting the concerned audio/video files into torrent files, the content of the files are uploaded and accessible on the BitTorrent trackers and indexes, TPB being one example. Thus, one can access, download and upload torrent files only through torrent application downloaded from BitTorrent’s website.
However, as stated above, torrent links are not available on BitTorrent’s website. For torrent links, indexes and trackers similar to TPB have to be used. In fact, torrent links also show up on a Google search. Once the user clicks on this link he is directed towards another user’s computer which stores the said content, which can then be downloaded by the first user. TPB argues that post displaying the torrent links and directing the user to the content, it is out of the picture. The infringing material is on someone else’s computer and is downloaded only after the user gets in contact with that other network.
So interestingly, as there was a change in technology post Napster, we see a change in technology post Grokster also. In Grokster the set up facilitated the entire process of searching, making available, accessing and downloading infringing files. However, in our case if one were to sue BitTorrent for contributory copyright infringement, they would argue that like Sony, their only point of contact with the consumer is when the software is downloaded. Therefore, they cannot be made use for subsequent use of the software/application to make available, access and download infringing material.
Since the material is actually stored on the user’s computer, and the search engines, which arguably act as a point of contact, simply argue that they acting provide mere search results and cannot be held liable for content of third party, which is available outside the website. The issue is where does the liability lie?
The Grokster standards being: (1) the defendant promoted the infringement-enabling virtues of its device; (2) the defendant failed to filter out infringing uses; and (3) defendant’s business plan depended on a high volume of infringement.
The first problem is that the device, i.e., the BitTorrent software isn’t owned or operated by TPB. In any case, TPB has not actively promoted its infringement-enabling virtues. It is pertinent to note that that in Grokster, Justice Souter stated that, “We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”
In the instant case there was is no such evidence of clear expression or any other affirmative step being taken by TPB to foster infringement. Though in Grokster the Supreme Court was mindful of the survey submitted by MGM which displayed that the probable scope of infringement was staggering and was influenced by it, it was more affected by the attitude of the operators in marketing Grokster as the next Napster, post the Napster litigation.
However, let us assume for the sake of argument that a survey can prove that BitTorrent technology was predominantly used to have access to copyright infringing work and TPB marketed itself as by stating that “half of the world’s torrents are found using its trackers.” Could this be presumed to fall within the first Grokster criteria? Could intention be found in the fact that overwhelming percentage of results on TPB’s search were links to infringing material?
Then comes the next issue, can TPB filter content available on it’s website?
As is evident from Google’s operations, search engines can use filters. The efficacy of such filters is another concern. For instance, Google filters pornography to some extent through it’s safe search option] In fact, torrentfreak reports that Google has started filtering links to torrent files. TPB’s claims that it can filter the content available and displayed, but it won’t do so. [See the TPB ’about page’]
Third, is their business plan based on a high volume of infringement? Since, the site is supported by advertising revenue - the answer to this would be yes.
It is submitted that apart from the intention criteria, both the other criteria could be satisfactorily proven. Though two factors support a finding of infringement, the Supreme Court greatly stressed on the requirement of culpable intent, which as defined by the Court isn’t really present in our case. Consequently, will TPB get away scot-free?
This brings us to our next contention, can one argue that the way the entire system is worked - broken in to parts, one place to access and download the software, the infringing files being made available elsewhere, and indexing of such files occurring on a separate search engine, is all of this to do away with any possibility of locating intention at any on level, and thus, an attempt to find a way out of the Grokster standard?
Application of The Grokster Standard: Perfect 10, the Ninth Cicruit and Liability of TPB
There are a series of Perfect 10 cases which deal with the application of the Grokster standard. the case most relevant for our purposes is Perfect 10, Inc. v. Google & Anr., 487 F.3d 701 (2007).
In this case, on appeal the Ninth Circuit Court applied the Grokster standard. More importantly, the issue addressed in the case is of direct relevance to us. One of the claims against Google was for contributorily infringing copyright as its search results linked to third-party websites that displayed infringing full-size versions of Perfect 10’s images, i.e., Google’s search results linked to infringing content outside website. As is evident the claim is similar to the claim in the present case.
The most interesting and bizarre part of the judgment is the interpretation given by the Ninth Circuit to the Grokster standard. The reasoning is reproduced below as there is no possible way of otherwise explaining it:
Before that, for a brief background, the Ninth Circuit accepted the existence of direct infringement by third party users using the Google search engine as a medium. Second, it accepted the general definition of contributory infringement as enunciated in Grokster, and then went on to talk about the different liability standards which can fall within this definition.
“….Within the general rule that “[o]ne infringes contributorily by intentionally inducing or encouraging direct infringement,” the [U.S. Supreme] Court has defined two categories of contributory liability: (1) Liability under our jurisprudence may be predicated on actively encouraging (or inducing) infringement through specific acts (as the Court's opinion develops) or (2) on distributing a product distributees use to infringe copyrights, if the product is not capable of ‘substantial’ or ‘commercially significant’ noninfringing uses. ….We must next consider whether Google could be held liable under the first category of contributory liability identified by the Supreme Court, that is, the liability that may be imposed for intentionally encouraging infringement through specific acts.
Grokster tells us that contribution to infringement must be intentional for liability to arise. However, Grokster also directs us to analyze contributory liability in light of “rules of fault-based liability derived from the common law,” and common law principles establish that intent may be imputed. [For instance], Tort law ordinarily imputes to an actor the intention to cause the natural and probable consequences of his conduct.” (“If the actor knows that the consequences are certain, or substantially certain, to result from his act, and still goes ahead, he is treated by the law as if he had in fact desired to produce the result.”).
Google's activities do not meet the “inducement” test explained in Grokster because Google has not promoted the use of its search engine specifically to infringe copyrights. However, the Supreme Court in Grokster did not suggest that a court must find inducement in order to impose contributory liability under common law principles.
Our tests for contributory liability [the Napster test] are consistent with the rule set forth in Grokster. We have adopted the general rule: “one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer,” In Napster, we considered claims that the operator of an electronic file sharing system was contributorily liable for assisting individual users to swap copyrighted music files stored on their home computers with other users of the system. We stated that “if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement.” Because Napster knew of the availability of infringing music files, assisted users in accessing such files, and failed to block access to such files, we concluded that Napster materially contributed to infringement.
Although neither Napster nor Netcom expressly required a finding of intent, those cases are consistent with Grokster because both decisions ruled that a service provider's knowing failure to prevent infringing actions could be the basis for imposing contributory liability. Under such circumstances, intent for infringement may be imputed. In addition, Napster and Netcom are consistent with the longstanding requirement that an actor's contribution to infringement must be material to warrant the imposition of contributory liability. Accordingly, we hold that a computer system operator can be held contributorily liable if it “has actual knowledge that specific infringing material is available using its system,” and can “take simple measures to prevent further damage” to copyrighted works, yet continues to provide access to infringing works.
Here, the district court held that even assuming Google had actual knowledge of infringing material available on its system, Google did not materially contribute to infringing conduct because it did not undertake any substantial promotional or advertising efforts to encourage visits to infringing websites, nor provide a significant revenue stream to the infringing websites. This analysis is erroneous. There is no dispute that Google substantially assists websites to distribute their infringing copies to a worldwide market and assists a worldwide audience of users to access infringing materials. We cannot discount the effect of such a service on copyright owners, even though Google's assistance is available to all websites, not just infringing ones. Applying our test, Google could be held contributorily liable if it had knowledge that infringing perfect 10 images were available using its search engine, could take simple measures to prevent further damage to perfect 10's copyrighted works, and failed to take such steps.”
As stated earlier the dictum of the Ninth Circuit is interesting and bizarre on two very important points. It is pertinent to note that in Grokster the Apex Court held as follows:
“We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.…. mere knowledge of infringing potential or of actual infringing uses would not be enough here to subject a distributor to liability. The inducement rule, instead, premises liability on purposeful, culpable expression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise.”
Thus, one, Grokster held that the intention of the party to facilitate infringement had to be found in clear expression or other affirmative steps, failure to filter or making money out of contributory infringement in themselves were not sufficient to make a party guilty, in the absence of other purposeful, culpable expression and conduct. The Ninth Circuit decision goes clearly against this and states that intent, even in cases like the Google search engine, when not clear or culpable can be imputed on the satisfaction of the Napster test.
This brings us to our second point, that the
Thus, whether the Ninth Circuit decision is in keeping with the Grokster standard is questionable. However, it is important to note that applying this test to the Google search engine, they held that in all probability Google would be liable for providing links to third party websites which hosted illegal or infringing matter if Google had actual knowledge that the material was infringing, could have taken simple measures to take off the material, but failed to do so.
Applying this dicta to the case at hand, from the legal notices TPB (available on their website) received it is clear that it had actual knowledge of availability of links that lead to infringing material on their website. Second, whether they could filter it using simple measures requires factual inquiry, but it should be noted that on their website, ‘about us’ page they clearly show or reflect an anti-content filtering stance. Third, if there are such measures and TPB failed to take stock, then under the Ninth Circuit standard they could be held liable for contributory infringement.
More importantly, in the beginning of this rather long post, I had stated that under Swedish law intent needs to be proved to impute liability for contributory infringement. It is submitted that the Ninth Circuit decision, through it’s test, does impute intent to facilitate infringement on the distributor in general or Google search engine in specific. Thus, if such reasoning is applied in
To make matters more interesting, on
Will TPB be liable under Indian law? Post to follow!