Contributory copyright infringement is a way of imposing secondary liability for infringement of a copyright. It is a means by which a person may be held liable for copyright infringement even though they did not directly engage in the infringing activity. It is one of the two forms of secondary liability apart from vicarious liability. Contributory infringement is understood to be a form of infringement in which a person is not directly violating a copyright but induces or authorizes another person to directly infringe the copyright.
This doctrine is a development of general tort law and is an extension of the principle in tort law that in addition to the tortfeasor, anyone who contributed to the tort should also be held liable.
Requirements The requirements for fulfilling the threshold of contributory infringement and imposing liability for copyright infringement on a party are:Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). The defendant having knowledge of a direct infringement; and The defendant materially contributing to that infringement. Contributory infringement leads to imposition of liability in two situations. First situation is when the defendant, through their conduct, assists in the infringement, and the second situation is when the means for facilitating the infringement such as machinery is provided by the defendant.Matthew Bender & Co. v. West Publ'g Co., 158 F.3d 693, 706 (2d Cir. 1998)
Knowledge The knowledge requirement for contributory infringement is an objective assessment and stands fulfilled if the defendant has actual or constructive knowledge of an infringement, i.e., if they has reason to believe that an infringement is taking place.Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923, 933 (N.D. Cal. 1996) But, constructive knowledge need not be imputed to the defendant if the product was capable of significant noninfringing uses.Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)
Material contribution Material contribution is the second requirement of contributory infringement. For instance, merely providing facilities for the site for an infringement might amount to material contribution.Fonovisa, 76 F.3d at 264 But, some courts put emphasis on the contribution to be 'substantial' and therefore, would hold that providing equipment and facilities for infringement is not in itself determinative of material contribution.Apple Computer, Inc. v. Microsoft Corp., 821 F. Supp. 616, 625 (N.D. Cal. 1993)
Difference from vicarious liability Vicarious liability is another form of secondary liability for copyright infringement through which a person who himself has not directly infringed a copyright can, nevertheless, be held liable. The requirements for attracting vicarious liability under copyright law are: The defendant had the right to control the infringing activity; and The defendant derives a financial or commercial benefit from the infringement Unlike contributory infringement, vicarious liability can be imposed even in the absence of any intent or knowledge on part of the defendant. In the Napster case, the Court of Appeals for the Ninth Circuit observed:
In the United States In the United States of America, the doctrine of contributory infringement is based on the 1911 case of Kalem v Harper Brothers.Kalem v. Harper Brothers, 222 U.S. 55 (1911). The ingredients of contributory infringement were laid down in the Second Circuit Court of Appeals decision in Gershwin Publishing Corp v Columbia Artists Management Inc.443 F.2d 1159, 1162 (2d Cir. 1971). in which the court said that contributory infringement is said to happen when someone, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another. This doctrine was developed in the context of the 1909 Copyright Act which did not have any reference to contributory infringement. But, the 1976 Act recognised the exclusive right of a copyright owner 'to do and to authorize' the rights attached to a copyright enumerated in the Act.17 U.S.C. § 106 The words 'to authorize' were meant to bring contributory infringements within the purview of the Act. But, still, the Act did not specify the requirements of such forms of infringement and left its application to the discretion of courts.
Sony Betamax case The case of Sony Corp v Universal City Studios Inc,464 U.S. 417 (1984). commonly known as the Betamax case, gave the United States Supreme Court its first opportunity to comprehensively look into and interpret the rules regarding secondary liability and contributory infringement in context of the 1976 Copyright statute. The primary issue in this case was whether a VCR manufacturing company could be held liable for copyright infringements done by its customers. The court held that secondary liability for copyright infringements was not a foreign concept to US Copyright law and it was well enshrined in the copyright law of the United States. In the court's own words:
But, in this case, the Court held that Sony did not have actual knowledge of the infringing activities of its customers. At the most it could be argued that Sony had constructive knowledge of the fact that "its customers may use that equipment to make unauthorised copies of copyrighted material."464 U.S. 417 (1984). at 439 The court then relied on the "staple article of commerce" doctrine of patent law and applied it to copyrights. The 'staple article of commerce' defence is available under Patent law in the United States and it lays down that when an infringing article is capable of 'substantial non infringing uses', it would become a 'staple article of commerce' and therefore, not attract any liability for infringement.
Based on this reasoning, it was held
Since the Betamax was capable of "significant noninfringing uses", Sony was not held liable for contributory infringement.
Contributory infringement in P2P services Contributory infringement has been the central issue in the cases involving peer-to-peer services such as Napster, Aimster, Grokster, and Morpheus. The courts have applied the Sony Betamax ratio differently in all these cases. For instance, Napster was held liable for contributory infringement. But, a similar service like Grokster was not held liable for contributory infringement as in this case, a district court, grounding its reasoning on the Sony Betamax decision, held that secondary liability could not be applied to peer-to-peer services.
A&M Records v Napster Napster was the first peer-to-peer service to be subject to copyright infringement litigation. In the Napster case,239 F.3d 1004 (9th Cir. 2001) the issue was regarding the infringement of copyrights through the 'Music Share' software of Napster. Whenever this software was used on a computer system, it would collect information about the MP3 files stored on the computer and send it to Napster servers. Based on this information, the Napster created a centralized index of files available for download on the Napster network. When someone wanted to download that file, the Music Share software would use the Napster index to locate the user who already had that file on their system and then connect the two users directly to facilitate the download of the MP3 file, without routing the file through Napster's servers.239 F.3d 1004 (9th Cir. 2001) at 1012.
The Ninth Circuit Court of Appeals found Napster liable for both "contributory infringement" and "vicarious infringement". Regarding the issue of contributory infringement, the court held that Napster had "actual knowledge" of infringing activity, and providing its software and services to the infringers meant that it had "materially contributed" to the infringement. It was held that the defense in Sony was of "limited assistance to Napster". The test whether a technology is capable of substantial non infringing uses was relevant only for imputing knowledge of infringement to the technology provider. But, in Napster's case, it was found that Napster had "actual, specific knowledge of direct infringement", and therefore, the Sony test would not be applicable.
In Re Aimster In In re Aimster,334 F.3d 643 (7th Cir. 2003) the Seventh Circuit was called upon to decide the liability of peer-to-peer sharing of music files through the Instant Messaging services provided by Aimster. Aimster had argued that the transmission of files between its users was encrypted and because of that, Aimster could not possibly know the nature of files being transmitted using its services. But, the Seventh circuit Court of Appeals affirmed the decision of the district court which had issued a preliminary injunction against Aimster. It was found that Aimster had knowledge of the infringing activity. Its tutorial showed examples of copyrighted music files being shared.334 F.3d 643 (7th Cir. 2003) at 649. Also, the 'Club Aimster' service provided a list of 40 most popular songs made available on the service.334 F.3d 643 (7th Cir. 2003) at 651. It was also held that the encrypted nature of the transmission was not a valid defence as it was merely a means to avoid liability by purposefully remaining ignorant. It was held that 'willful blindness is knowledge, in copyright law.."334 F.3d 643 (7th Cir. 2003) at 650. The Sony defence raised by Aimster was also rejected because of the inability of Aimster to bring on record any evidence to show that its service could be used for non infringing uses. Lastly, Aimster could also not get benefit of DMCA 'safe harbor' provisions because it had not done anything to comply with the requirements of Section 512. Instead, it encouraged infringement.
MGM Studios v Grokster The District Court for the Central District of California, in MGM Studios v Grokster,545 U.S. 913 (2005) held that the peer-to-peer services Morpheus and Grokster were not liable for copyright infringements carried out by their users. Unlike Napster, these services did not maintain a centralised index. Instead, they created ad hoc indices known as supernodes on the users computers. Sometimes, the software operated without creating any index at all. Thus, it was held that Grokster and Morpheus had no way of controlling the behaviour of their users once their software had been sold, just like Sony did with Betamax. It was found that the defendants did have knowledge of infringement because of the legal notices sent to them. But, it was also held that to attract liability under contributory infringement, there should be knowledge of a specific infringement at the precise moment when it would be possible for the defendant to limit such infringement.545 U.S. 913 (2005) at 1037. Also, it was found that there was no material contribution. For this, the court relied on Sony and compared the technology to that of a VCR or a photocopier to hold that the technology was capable of both infringing as well as non infringing uses. Grokster differs from Sony, as it looks at the intent of the defendant rather than just the design of the system. As per Grokster, a plaintiff must show that the defendant actually induced the infringement. The test was reformulated as "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."
Digital Millennium Copyright Act