Today’s guest post comes from Copyhype contributor Devlin Hartline.

Last week, Seattle-based photographer Christopher Boffoli sued Twitter in the U.S. District Court for the Western District of Washington for contributory copyright infringement. Boffoli is well-known for his “Disparity Series,” which according to the complaint is “a series of art photographs featuring miniature figures in whimsical poses on fruit.” Seattle Magazine has a brief article about the series. Boffoli’s case was also a topic of discussion on the most recent episode of “This Week in Law” (where Terry Hart was a guest).

In the complaint, Boffoli alleges that Twitter users uploaded several of his copyrighted photographs without license or permission and then linked to them in various tweets. Some images were hosted on Twitter’s own servers, while others were hosted on servers operated by third-parties. Boffoli claims that even though he sent four DMCA takedown notices to Twitter’s registered agent for receiving such notices, none of the hosted links or images were removed.

As such, Boffoli alleges that Twitter is liable for willful contributory infringement because (1) it had actual knowledge of infringement provided by his DMCA takedown notices, and (2) it materially contributed to the underlying infringements by Twitter’s users.

Ars Technica and Techdirt ran articles about the lawsuit last week. Both pointed out that Twitter’s failure to respond to the DMCA takedown notices doesn’t necessarily mean that the service provider is liable for infringement. That much is true, but it was also suggested in both articles that Twitter wasn’t likely to be liable for infringement despite its failure to remove the links and images complained of. It’s that notion that I’ll examine more closely.

DMCA Notice-and-Takedown

The DMCA1 notice-and-takedown provisions are no doubt familiar. Title II of the DMCA, titled the “Online Copyright Infringement Liability Limitation Act,” created Section 5122 of the Copyright Act—what people often are referring to when they talk about the “DMCA,” even though it’s only one part. It’s here that the notice-and-takedown provisions are found. The idea is simple: A copyright owner who finds infringing material on a service provider’s system sends notice to the service provider who then takes it down.

The “DMCA did not simply rewrite copyright law for the on-line world,” but rather, “it crafted a number of safe harbors which insulate ISPs from most liability should they be accused of violating traditional copyright law.”3 The DMCA uses a classic carrot-and-stick approach to get service providers to play along. The carrot of limited liability within the safe harbors is enforced by the stick of full liability without. This “preserves strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital networked environment.”4

When a third-party user stores material on a service provider’s system, the provider’s potential copyright liability is greatly reduced if it “responds expeditiously to remove, or disable access to,” the material upon notice that it “is claimed to be infringing or to be the subject of infringing activity.”5 Thus, to moor in the safe harbors, a service provider must quickly take down allegedly infringing material when notified. Once in the safe harbors, a service provider is only potentially liable for limited injunctive relief—it’s not potentially liable for monetary relief as it would be otherwise.

A common misperception is in thinking that a service provider that qualifies for the safe harbors cannot be liable for infringement. The DMCA itself is irrelevant to determining whether the service provider is an infringer. The safe harbors limit liability, but they “do not affect the question of ultimate liability under the various doctrines of direct, vicarious, and contributory” infringement.6 After it’s determined that a service provider is an infringer in the first place, the safe harbors can be used to assess the extent of the liability. Although as a practical matter, courts usually start with the analysis of the safe harbors first.7

Nor does the fact that a service provider fails to qualify for the safe harbors necessarily mean that it is liable for infringement. Such a service provider “is still entitled to all other arguments under the law—whether by way of an affirmative defense or through an argument that conduct simply does not constitute a prima facie case of infringement under the Copyright Act.”8 This make sense because the material complained of may not even be infringing or the service provider may qualify for some defense. Just because its liability isn’t limited by the safe harbors, it doesn’t mean that the service provider is liable in the first place.

Immunity under the safe harbors is not presumptive, and it’s only granted to service providers who do not have knowledge, either actual or constructive, of infringement. The “DMCA’s protection of an innocent service provider disappears at the moment the service provider loses its innocence, i.e., at the moment it becomes aware that a third party is using its system to infringe.”9 One common way to alert a service provider of infringement is via a takedown notice, which is effective only if it “includes substantially” certain elements listed in the statute.10

Contributory Infringement

With “roots in the tort-law concepts of enterprise liability and imputed intent,” contributory infringement is a type of secondary copyright liability.11 It follows from the common law doctrine that “one who knowingly participates in or furthers a tortious act is jointly and severally liable with the prime tortfeasor,” a concept that applies in copyright law as it does in numerous other areas of the law.12 Put simply, contributory infringement is the idea that a person who contributes to the infringement of another is held liable for the infringement they helped to bring about.

The courts have formulated different tests for contributory infringement, but they all share the same basic elements. The test in the Ninth Circuit, where Boffoli filed his suit against Twitter, is simple: “one contributorily infringes when he (1) has knowledge of another’s infringement and (2) either (a) materially contributes to or (b) induces that infringement.”13 Inducement infringement, identified by the Supreme Court in the Grokster opinion,14 is not at issue here. Boffoli is claiming traditional contributory infringement, which has two elements: (1) knowledge, and (2) material contribution.

As to the knowledge element, contributory infringement “requires that the secondary infringer know or have reason to know of direct infringement.”15 In other words, either actual or constructive knowledge will suffice. It’s not enough that a service provider merely supplies the means of accomplishing infringement.16 Instead, there must be knowledge of “specific information which identifies infringing activity” before liability attaches.17 This makes sense because without specific knowledge, a service provider wouldn’t know what items to remove to avoid liability.

The relationship between knowledge and intent should also be noted. An explicit finding of intent is not “necessary to support liability for contributory copyright infringement.”18 Under the “rules of fault-based liability derived from the common law,”19 the “intention to cause the natural and probable consequences” of one’s conduct may be imputed.20 It’s not mandatory to find that a service provider actually intended to contribute to the underlying infringement. Instead, a “knowing failure to prevent infringing actions” can be the basis for imposing contributory liability.21

Generally speaking, the material contribution element “turns on whether the activity in question substantially assists direct infringement.”22 In the internet context, the Ninth Circuit last year held that there “is no question that providing direct infringers with server space satisfies” this standard because it is “an essential step in the infringement process.”23 The alleged material contribution must have a direct connection to the infringement such that it assists or enables internet users to locate infringing content.24

In the famous Napster case, the Ninth Circuit held 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.”25 The appellate court concluded that “Napster materially contributes to the infringing activity,” since without its help, “Napster users could not find and download the music they want” as easily.26 To impose contributory liability, it was enough that “Napster provides the site and facilities for direct infringement.”27

Similarly, the Ninth Circuit in Perfect 10 stated 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.”28 The court of appeals held that “Google could be held contributorily liable if it had knowledge that infringing . . . images were available using its search engine, could take simple measures to prevent further damage to [plaintiff’s] copyrighted works, and failed to take such steps.”29

Putting it all together, I think Boffoli has a good chance of success on the merits of his claim. If he sent DMCA takedown notices to Twitter that complied substantially with the elements listed in the statute, then Twitter will have lost its innocence and will be deemed to have knowledge of the infringement (should there actually be any). Once knowledge is established, Twitter’s intent to cause the infringement will be imputed. And as to material contribution, Twitter is assisting and enabling its users to find the infringing content it provides on its system.

This is similar to the situation in Napster, where the Ninth Circuit held that Napster could be liable as a contributory infringer for failing to remove material it knew to be infringing. This is also similar to the circumstances in Perfect 10, where the Ninth Circuit held that Google could be liable as a contributory infringer for failing to remove links to infringing images once alerted to their presence. Here, Twitter is failing to remove both links and images.

That said, it’s kind of hard to understand why Twitter hasn’t removed the links and images Boffoli complained of. Perhaps there’s more going on here than meets the eye, but under the allegations in the complaint, it seems to me that Twitter could be contributorily liable for whatever infringement is taking place of Boffoli’s copyrighted images.

Follow me on Twitter: @devlinhartline

Footnotes

  1. Digital Millennium Copyright Act, Pub.L. No. 105-304, 112 Stat. 2860 (1998) (codified as amended in scattered sections of 17 U.S.C. and at 28 U.S.C. § 4001). []
  2. 17 U.S.C.A. § 512 (West 2012); Section 512 codified the principles developed by the district court in Religious Tech. Ctr. v. Netcom On-Line Commc’n Services, Inc., 907 F.Supp. 1361 (N.D. Cal. 1995). []
  3. Ellison v. Robertson, 189 F.Supp.2d 1051, 1061 (C.D. Cal. 2002). []
  4. H.R. Conf. Rep. 105-796, 72 (1998). []
  5. See 17 U.S.C.A. § 512(c)(1)(C) (West 2012) (“A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider– *** upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.”). []
  6. Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.Supp.2d 1146, 1174 (C.D. Cal. 2002). []
  7. See, e.g., Costar Group Inc. v. Loopnet, Inc., 164 F.Supp.2d 688, 699 (D. Md. 2001) (“The existence of the safe harbor convolutes the analysis of copyright infringement which, theoretically, should proceed in a straight line. Ideally, CoStar would have to make a prima facie showing that LoopNet was liable of contributory infringement and then the court would turn to the question of whether the “safe harbor” provided a defense. However, because the parameters of the liability protection provided by the “safe harbor” are not contiguous with the bounds of liability for contributory infringement, the analysis may proceed more efficiently if issues are decided a bit out of order. On summary judgment, it is often appropriate for a court to decide issues out of the traditional order because a dispute of fact is only material if it can affect the outcome of a proceeding. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Thus, to the extent, if at all, that LoopNet is entitled to summary judgment in its safe harbor defense, all other issues concerning damages liability for contributory infringement would be rendered immaterial.”). []
  8. CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 552 (4th Cir. 2004). []
  9. ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619, 625 (4th Cir. 2001). []
  10. 17 U.S.C.A. § 512(c)(3)(A) (West 2012) (“To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”). []
  11. Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 795 (9th Cir. 2007). []
  12. 1 Niel Boorstyn, Boorstyn On Copyright § 10.06[2], at 10-21 (1994). []
  13. Perfect 10, 494 F.3d at 795; it should be noted too that contributory infringement requires direct infringement to have occurred before liability attaches; see 1 Goldstein, Copyright: Principles, Law and Practice § 6.1, at 705 (1989) (“It is definitional that, for a defendant to be held contributorily . . . liable, a direct infringement must have occurred.”). []
  14. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (the Court held 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.”). []
  15. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1020 (9th Cir. 2001). []
  16. See, e.g., Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 436 (1984). []
  17. Napster, 239 F.3d at 1021. []
  18. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 943 (9th Cir. 2011). []
  19. Grokster, 545 U.S. at 934-35. []
  20. DeVoto v. Pac. Fid. Life Ins. Co., 618 F.2d 1340, 1347 (9th Cir. 1980); see also Restatement (Second) of Torts § 8A (1965) (“All consequences which the actor desires to bring about are intended, as the word is used in this Restatement. Intent is not, however, limited to consequences which are desired. 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.”). []
  21. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007). []
  22. Louis Vuitton, 658 F.3d at 943 (internal quotations omitted). []
  23. Id. (internal quotations omitted). []
  24. Perfect 10, 494 F.3d at 797. []
  25. Napster, 239 F.3d at 1021. []
  26. Id. at 1022. []
  27. Id. []
  28. Perfect 10, 508 F.3d at 1172 (internal quotations and citations omitted). []
  29. Id. []

Today’s guest post comes from Devlin Hartline, a J.D. candidate at Loyola University New Orleans College of Law with an expected graduation date of May, 2012. His primary interests are in copyright, internet, and constitutional law. He lives with his wife and two young sons in Metairie, Louisiana. You can follow him on Twitter: @devlinhartline.

Introduction

Apparently, Google thinks it should be above the law. It hasn’t explicitly said so, of course, but that’s my takeaway from its protest of the Stop Online Piracy Act (SOPA) and the PROTECT IP Act this past January. Specifically, Google thinks that it should be allowed to list rogue sites in its search results without any court having the power to order it to stop. Google’s position strikes me as self-contradictory. On the one hand it says that Congress is “trying to do the right thing by going after pirates and counterfeiters.” On the other hand it says that search engines shouldn’t “be forced to delete entire websites from their search results.” What Google glosses over is the fact that search engines like itself are part of the problem—search engines drive traffic to rogue sites by listing them in their search results. This is why courts already order search engines to delist rogue sites.

The day before the protests, Google provided a written statement to the Huffington Post announcing that it’d be joining the grumblers: “we oppose these bills because there are smart, targeted ways to shut down foreign rogue websites without asking American companies to censor the Internet.” Sure enough, the next day Google blacked-out the logo on its home page. When users clicked on the self-censored insignia, they were taken to an information page, “End Piracy, Not Liberty.” From there, a tab led to another page, “More about SOPA and PIPA,” where Google sketched out the reasons behind its opposition. Google’s three main gripes with the bills can be boiled down thusly: (1) it’s censorship, (2) it’ll hurt innovation, and (3) it’s futile. Noticeably absent from this explanation is any acknowledgement that search engines meaningfully contribute to online infringement.

I can’t help but feel cynical. The same Google that unilaterally delisted over 11 million websites from its search results because they were too “spammy and low-quality” thinks it’s wrong that a court should order it to delist even one single site that has been determined to be dedicated to infringement. The same Google that forfeited $500 million to the United States government after it got caught assisting foreign pharmacies in importing illegal drugs thinks it’s OK to assist foreign rogue sites in the commission of online piracy. If Google really thinks that preventing piracy is such a good thing, then why does it want to help rogue sites out by linking to them? As with many things, I think the answer is money—it costs real money to comply with a court order to delist a rogue site. The question is whether any of this should actually be Google’s problem. I think that clearly the answer is, “yes.”

“I Come From Cyberspace”

In his iconic “A Declaration of the Independence of Cyberspace,” Grateful Dead lyricist, EFF cofounder, and cyberlibertarian John Perry Barlow threw down the gauntlet on behalf of cyberspace:

Governments of the Industrial World, you weary giants of flesh and steel, I come from Cyberspace, the new home of Mind. On behalf of the future, I ask you of the past to leave us alone. You are not welcome among us. You have no sovereignty where we gather. . . . I declare the global social space we are building to be naturally independent of the tyrannies you seek to impose on us. You have no moral right to rule us nor do you possess any methods of enforcement we have true reason to fear. . . . Cyberspace does not lie within your borders. . . . Ours is a world that is both everywhere and nowhere, but it is not where bodies live.

Barlow’s quaint and utopian, if not anarchic, vision of cyberspace as existing somewhere untouchable by the “Governments of the Industrial World” never was. Nor would it ever come to be. In fact, in an ironic twist of fate, the “would-be Cyber-Jefferson” Barlow delivered his Declaration on the same day that President Clinton signed the internet-regulating Communications Decency Act into law.1 While cyberspace as a metaphorical place does not lie within any actual borders (and what metaphor ever does?), the same cannot be said for the people that make cyberspace possible—the so-called intermediaries. According to Black’s Law Dictionary (9th ed. 2009), an “intermediary” is “a mediator or go-between; a third-party negotiator.” An intermediary, then, is just a middleman. Cyberspace may be “everywhere and nowhere,” but the intermediaries all dwell in this world of “flesh and steel,” anything but “independent of the tyrannies.”

For netizens, cyberspace’s intermediaries take on familiar forms such as internet service providers, payment processors, content hosts, search engines, and advertising networks. Use of intermediaries in mass communications is nothing new; yesterday’s switchboard is today’s network switch. Without intermediaries, mass communication platforms such as the internet wouldn’t exist. The internet, after all, is just a global network of interconnected intermediaries who host, transport, and organize our data. And given their “essential role in facilitating online communication, intermediaries often are capable of exercising authority over wrongdoers who are otherwise unreachable” for a variety of reasons.2 Instead of circumventing the middlemen, the digital revolution has simply replaced one set of intermediaries with another. The internet’s decentralized structure has, by design, engendered the proliferation of a new set of intermediaries.

There’s no doubt that intermediaries like Google make infringement on the internet possible, for without the intermediaries there’d be no internet to infringe on in the first place. The difficult question then is which intermediaries, if any, should be held responsible for the infringement they help make possible. Should a search engine like Google be liable for infringement that takes place on the rogue sites it links to in its search results?

Common Law Secondary Liability

Copyright infringement is a tort, or a civil wrong. The Copyright Act, in § 106, provides that “the owner of copyright . . . has the exclusive rights to do and to authorize” certain enumerated acts, including making copies, preparing derivative works, and distributing copies. § 501(a) of the Act provides that “[a]nyone who violates any of the exclusive rights of the copyright owner . . . is an infringer of the copyright.” Thus, only the copyright owner has the right, say, to make copies or to authorize the making of copies, and anyone else who does so is liable for infringement.

Direct copyright infringement occurs when someone, called the primary or direct infringer, is held liable for their own infringing acts. If I unlawfully make copies of your copyrighted work, I’m a primary infringer. Indirect copyright infringement, on the other hand, occurs when someone else, called the secondary or indirect infringer, is held liable as well. If someone else unlawfully authorizes me to make copies of your copyrighted work and I do so, I’m a primary infringer and the party that gave me authorization is a secondary infringer. Even though that other party didn’t personally make the copy (only I did), the law holds them responsible because they played a significant part in my unlawful copying.

The idea of placing liability on someone other than the primary infringer is what’s referred to as secondary liability in copyright law. It’s called other things too, like intermediary liability, indirect liability, third-party liability, or derivative liability. Whatever it’s called, the basic notion is the same: If someone else helps me to infringe, by, say, inciting or facilitating my infringement, then that someone else will be liable for my infringement since they helped to bring it about. The idea of holding responsible those who help others commit unlawful acts is not unique to copyright law. Perhaps more familiar are the similar concepts of accomplice or accessory liabilities in criminal law. If I help you plan a robbery or act as your lookout while you rob a bank, I’m liable because I helped you commit your crime. By making it unlawful to help others commit unlawful acts, we deter people from doing so.

The Copyright Act itself does not expressly provide for secondary liability for infringement. Nonetheless, the Supreme Court has noted that the “absence of such express language in the copyright statute does not preclude the imposition of liability for copyright infringements on certain parties who have not themselves engaged in the infringing activity.”3 Indeed, secondary liability concepts in copyright law have been developed over time through judge-made, common law. “Courts have long recognized . . . that one may be held liable for the infringing acts of another.”4 Two distinct branches of secondary liability have been developed: “vicarious liability (grounded in the tort concept of respondeat superior) and contributory infringement (founded on the tort concept of enterprise liability).”5

While it’s true that the Copyright Act doesn’t explicitly refer to secondary liability in so many words, § 106’s grant of the exclusive right “to authorize” in fact indicates Congress’s endorsement of court-developed contributory liability principles. The relevant House Report explains: “Use of the phrase ‘to authorize’ is intended to avoid any questions as to the liability of contributory infringers.”6 This comes as no surprise, since, as the Supreme Court noted over a century ago, contributory liability is a principle “recognized in every part of the law.”7 The Second Circuit’s formulation of contributory liability is oft-quoted: “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.”8 Thus, liability for contributory infringement turns on two elements: (1) knowledge, and (2) inducement, causation, or material contribution. So where does Google’s search engine fall within this rubric?

Google’s Secondary Liability

Conveniently enough, the Ninth Circuit addressed this very point at length in Perfect 10 v. Amazon.com.9 There, plaintiff Perfect 10 argued that defendant Google was secondarily liable for infringement occurring on third-party websites because Google provided links to these sites in its search results. The circuit court started its analysis by noting that contributory liability is examined in light of the “rules of fault-based liability derived from the common law,” a principle of which is that intent may be imputed: “Tort law ordinarily imputes to an actor the intention to cause the natural and probable consequences of his conduct.”10 Thus, since its intent to encourage direct infringement may be imputed, an actor (like Google) may be liable for contributory infringement if it knowingly takes actions (like linking) that are substantially certain to result in direct infringement by others.

The court of appeals then looked to two cases, Napster11 and Netcom,12 for the application of these principles in cyberspace. In Napster, the Ninth Circuit 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.”13 Similarly, the district court in Netcom held that if an internet service provider knows or has reason to know that material on its system is infringing and fails to remove it, then it is liable for contributory infringement since its failure constitutes substantial participation in the resulting infringement.14 Both cases stand for the proposition that a “service provider’s knowing failure to prevent infringing actions” can be the “basis for imposing contributory liability” since intent to cause the natural result of its conduct may be imputed.15

The Ninth Circuit noted that a central theme of Napster and Netcom is the fact that online services have the ability to drastically amplify the effects of infringing activities. As the Supreme Court noted in Grokster,16 when a service enables individuals to commit infringement on a large scale, the argument for imposing indirect liability on that service is particularly powerful. The court of appeals observed that when a service is used widely to infringe, it is simply not possible for a copyright owner to enforce its rights against all of the direct infringers. Sometimes “the only practical alternative” is “to go against the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement.”17 Accordingly, the circuit court held 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.”18

The Ninth Circuit then turned its sights on Google: “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.”19 Thus, the court of appeals held that Google could be liable as a contributory infringer if it: (1) knew that infringing materials were available using its search engine, (2) could take simple measures to remove the links, and (3) failed to do so.

The Ninth Circuit’s opinion comports with the DMCA safe harbor provisions. Under § 512(d) of the Copyright Act, a search engine such as Google is significantly shielded from liability for infringement that occurs via links it provides so long as the links are quickly removed or disabled when the search engine becomes aware that they lead to infringing material or activity. Thus, the DMCA seeks to encourage the delisting of rogue sites from search results by giving search engines safe harbor if they remove links when presented with proper takedown notices (which are deemed as a matter of law to impart knowledge of infringement). This embodies Congress’s judgment that it’s generally a bad thing for search engines to provide links to rogue sites. According to both Congress and the courts, search engines that knowingly link to rogue sites are opening themselves up to secondary liability for the infringement they help bring about. And given that “Google is ranked #1 in the world” according to Alexa’s traffic rankings, its contribution to the problem of online infringement is all the more impossible to deny.

Censorship, Innovation, And Futility

When the argument is properly framed as whether Google should be allowed to substantially assist worldwide infringement via its search engine, its counterarguments about censorship, innovation, and futility fall apart. Google complains that “search engines could be forced to delete entire websites from their search results.” There’s no doubt that under some broad definition of the word, a court ordering Google to delist a rogue site is censorship. But so what? All law enforcement efforts are censorship on some level. The whole point is to censor—that is, to stop—the party that’s unjustifiably causing harm. Google can be forced to “delete entire websites” from its search results because those links are significantly contributing to whatever infringing material or activity they point to. What’s being censored is Google’s excessive role in the problem of online piracy. If Google really thinks that pursuing piracy is a lofty goal, you’d think it’d want to remove its own links to these rogue sites.

Google’s complaint about innovation is equally vapid. It starts with the curious assertion that “internet companies would have to monitor everything users link to or upload or face the risk of time-consuming litigation.” This is simply not so. It is fundamental to secondary liability doctrine that intermediaries “do not take on an affirmative duty to act or to prevent tortious or illegal conduct, but only a duty not to facilitate known wrongdoing.”20 Google has no duty to monitor the links it provides in its search results, and nothing in the Stop Online Piracy Act or the PROTECT IP Act would establish such a duty—in fact both bills explicitly say there’s no affirmative duty to monitor. Google also points to letters from internet companies, venture capitalists, and entrepreneurs making vague arguments about how the bills would stifle innovation generally. But innovators like Google are not exempt from the law, and it’s hard to see how complying with court orders is unduly burdensome for a company like Google that already has such mechanisms in place. Google’s service creates a harm to innocent third parties that is significant enough to warrant holding it responsible for that harm. It’s disingenuous for Google to complain about the cost of eliminating a harm that Google itself is creating.

Google’s final argument is that “SOPA and PIPA won’t even work” since rogue sites will just relocate. Instead, it argues that “Congress should consider alternatives like the OPEN Act” that take a follow-the-money approach. This argument is clearly self-serving. All of the bills (SOPA, PROTECT IP Act, and OPEN Act) target the money supplies of rogue sites. If targeting the money supply is by itself effective, then why does adding the requirement that search engines also delist rogue sites suddenly make the whole thing not work? That makes no sense. Google’s support of the OPEN Act is better explained by the fact that the Act contains no provisions dictating that search engines must delist rogue sites. In other words, the OPEN Act doesn’t make Google responsible for the harm that it chooses to create (and, I assume, to profit from). How very convenient. Google’s complaint here is not about the futility of the bills—it’s about Google’s bottom line. And that’s what all of this hoopla has been about all along, if you ask me.

Follow me on Twitter: @devlinhartline

Footnotes

  1. Alex Kozinski & Josh Goldfoot, A Declaration of the Dependence of Cyberspace, 32 Colum. J.L. & Arts 365 (2009). []
  2. David S. Ardia, Free Speech Savior or Shield for Scoundrels: An Empirical Study of Intermediary Immunity Under Section 230 of the Communications Decency Act, 43 Loy. L.A. L. Rev. 373, 378-79 (2010). []
  3. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 434 (1984). []
  4. Demetriades v. Kaufmann, 690 F.Supp. 289, 292 (S.D.N.Y. 1988). []
  5. Id. (internal quotation marks omitted). []
  6. H.R. Rep. No. 94-1478 at 61; the House Report also endorses common law vicarious infringement, id. at 159-60 (“a person who violates any of the exclusive rights of the copyright owner is an infringer, including persons who can be considered related or vicarious infringers. . . . The committee has decided that no justification exists for changing the existing law . . . .”). []
  7. Kalem Co. v. Harper Bros., 222 U.S. 55, 63 (1911). []
  8. Gershwin Pub. Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). []
  9. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007). []
  10. Id. at 1171 (internal quotations and citations omitted). []
  11. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). []
  12. Religious Tech. Ctr. v. Netcom On-Line Commc’n Services, Inc., 907 F.Supp. 1361 (N.D. Cal. 1995). []
  13. Perfect 10, 508 F.3d at 1171 (internal quotations omitted). []
  14. Id. at 1171-72. []
  15. Id. at 1172. []
  16. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). []
  17. Perfect 10, 508 F.3d at 1172. []
  18. Id. (internal quotations and citations omitted). []
  19. Id. []
  20. David S. Ardia, Free Speech Savior or Shield for Scoundrels: An Empirical Study of Intermediary Immunity Under Section 230 of the Communications Decency Act, 43 Loy. L.A. L. Rev. 373, 505 (2010). []

I sometimes see the phrase “.torrent = .crime” used online in discussions about enforcing copyright online. It is considered by copyright critics as a dig against efforts to enforce the widespread copyright infringement occurring within the bittorrent ecosystem1 — the idea being that content producers have mistakenly declared torrent technology categorically unlawful.

Most recently, it has popped up in response to the US government’s seizure of domain names as part of Operation in Our Sites. A number of the sites targeted were part of the bittorrent ecosystem, like meta-search engine Torrent Finder. And with the pending appeal of Isohunt in the Ninth Circuit, the meme will likely persist — the torrent search engine’s appellate brief devotes considerable space to rebutting the association between torrents and infringement. Proponents of the meme believe the association is unfair and are quick to point out the many legitimate uses of the bittorrent protocol as evidence.

The snappy soundbite, however, glosses over the distinction between a technology and uses of a technology. It also relies on a fundamentally flawed premise: the fact that there are some legitimate uses of a technology does not make all uses of that technology legitimate. And within the general bittorrent ecosystem, there are a lot of illegitimate uses of the technology — so much so that the association between “torrent” and “crime” is not entirely unfair.

The Supreme Court, through its decisions in Sony Corp of America v. Universal City Studios, 464 US 417, and MGM v. Grokster, 545 US 913, maintained what is really a common sense distinction between technology and uses of that technology. Simply put, you can’t be liable simply for making something that can be used for copyright infringement, but you can be liable if you intend or encourage infringing uses.

Put another way, while direct infringement is a strict liability tort, meaning the intent of an infringer is irrelevant, secondary liability requires some form of culpability. Grokster reads Sony as saying you can’t impute this intent based solely on the characteristics of a device. But the rule in Sony doesn’t mean a manufacturer or service is completely precluded from liability if it satisfies the Sony safe harbor — a manufacturer or service provider can still be liable if it is found to be culpable in other ways, including whether it induced infringement.

The Supreme Court in Grokster noted three features of the evidence of intent that most showed culpability. Satisfying a known source of demand for copyright infringement, no attempt to filter or develop mechanisms for diminishing infringing activities, and selling advertising based on high-volume use — revenues increase the more people use it, and the overwhelming amount of people use it for infringing purposes. Any one of these alone is not enough to show culpability, but taken together, the intent to encourage infringement is, in the words of the Court, “unmistakeable.”

The torrent ecosystem facilitates piracy — not by design, but by use.

I’m talking about just the torrent ecosystem here — the trackers, hosts, and search engines that do little if anything to ensure their services are not used to aid in distributing unauthorized content. BitTorrent as a protocol is in no way a problem. Facebook, Twitter, and other large-scale systems use the BitTorrent protocol to distribute software updates to their servers; the same is true of gaming companies like Blizzard Entertainment, makers of Worlds of Warcraft. Many Linux distros are promulgated via bittorrent. The technology offers several advantages over other methods of distributing large amounts of data.

But outside these specific uses is a world of public torrent hosts that allow anyone to upload torrent files of any type of content, no questions asked, and search engines that can help users locate whatever they want. And it is here where, any way you look at it, “.torrent” actually does equal “.crime”. The overwhelming majority of what is being distributed in the general bittorrent ecosystem is infringing.

How overwhelming? According to the available research, anywhere from 90-99% of files available in the torrent ecosystem are infringing.2 A study released January 2011 discovered only 1 legitimately offered file in the top 10,000 torrents offered by one of the largest public bittorrent trackers.

In the face of such overwhelming infringement, it’s absurd to think you can design a site or service that facilitates access to this universe of material, without any attempt at filtering or mitigating infringement, and escape liability. The fact that there are some legitimate uses for the technology does not mean that all uses of the technology are legitimate. Search engines, trackers, and torrent hosts exist for verified and authorized content. But that fact doesn’t save the general and open-for-all torrent sites; neither does the fact that the protocol is used by large-scale systems for distributing software updates. It’s not like Facebook and Twitter are going to Torrent Finder to find new patches.

The distinction between legitimate and illegitimate uses of bittorrent is a distinction between services where the use of the protocol is secondary to the service and the ability to pirate through the service is diminished and minimized, and services that tap into the general bittorrent ecosystem. The latter services may claim to have legitimate uses, but these claims are drowned out by the evidence.

The business model of these sites depends on popular — ie, copyrighted — content. It’s the major draw: Torrent Finder wasn’t making $15,000 a year advertising to people looking for the latest Linux distros or searching for unsigned bands. Isohunt’s Gary Fung admitted as much during the course of that litigation.3 Courts looking at nearly every other major file-sharing service that has found itself subject to a lawsuit have come to the same conclusion: “While there is doubtless some demand for free Shakespeare,” said the Supreme Court in Grokster, “the evidence shows that substantive volume is a function of free access to copyrighted work.”4

Sites that have gone legit have discovered just how true this is. Search engine YouTorrent reported that it lost over half its traffic when it stopped indexing files from sites like PirateBay and only returned verified authorized and open-license results.

Some torrent site operators have adopted a “would if they could” attitude toward copyright infringement: they’d like to stop it, but it’s impossible to know what files are authorized and which are not. This argument doesn’t hold up against the significant percentage of infringing files available.

Some theories of secondary liability, like contributory infringement, require that the secondary party has some knowledge of the underlying misconduct, with the caveat that the secondary party cannot escape liability by being “willfully blind.” You can’t, like an ostrich with his head in the sand, deliberately ignore bad behavior and expect to stay out of trouble. While the question of willful blindness can often be a tough one to answer, courts haven’t had trouble in cases of file-sharing services. With such a high percentage of infringing files present on all these services — 89%, 95%, 99% — you can’t claim ignorance of infringement.

Anyone who bristles at the association of bittorrent with copyright infringement has to admit, if honest, that within the general bittorrent ecosystem, torrents have largely become synonymous with distributing unauthorized content. The technology itself is neutral, it can be put to legitimate or illegitimate uses, but any service wanting to become a component part of the unregulated, open, and public torrent universe has a high burden for establishing legitimacy.

 

Footnotes

  1. The bittorrent “ecosystem” describes the multitude of independent components — from torrent file hosts, to torrent search engines and meta search engines, to trackers — that together make the bittorrent protocol work. []
  2. Robert Layton & Paul Watters, Investigation into the extent of infringing content on BitTorrent networks, Internet Commerce Security Laboratory (2010), confirms 89% of all torrents in sample infringing; Sauhard Sahi & Ed Felten, Census of files available via BitTorrent, (2010), concluded 99% of files likely infringing; Columbia Pictures v. Fung, Order granting Plaintiffs’ motion for summary judgment on liability (2009), evidence showed approximately 95% of files available on defendant’s torrent search engines infringing. []
  3. Columbia Pictures v. Fung, p. 34. []
  4. 545 US at 926. []

Within the past 15 or so years, we’ve seen a large number of cases and laws addressing the issue of indirect liability — also referred to as secondary liability or third-party liability — for copyright infringement online.

In 1998, Congress passed the Digital Millennium Copyright Act, providing conditional safe harbors for online service providers. There’s also been a number of high-profile lawsuits against Napster, Aimster, Grokster, Limewire, and YouTube addressing indirect infringement.

Even so, there remains a misunderstanding among the public, especially online, about indirect liability. Why should X be liable when someone else is engaged in copyright infringement if X is only hosting/transmitting/providing a link to the unauthorized work?

This misunderstanding is embraced by TechDirt, who last week highlighted a story about an open letter from Russian ISPs to the entertainment industry in response to pressure on the ISPs for the copyright infringement of their users. TechDirt characterized the letter as explaining “basic liability concepts” to the entertainment industry. “The basic idea is that a third party service provider or tool should not be held liable for what users do with those tools,” explained Mike Masnick at TechDirt.

But that idea is not a “basic liability concept”; to the contrary, the idea ignores reality and the bulk of the history of law in most countries. Indeed, Masnick’s characterization of “basic liability concepts” isn’t even recognized in Russia1 — hence the reason the letter was written in the first place.

I previously wrote about secondary liability in Viacom Appeals Lawsuit Against YouTube, but I think the topic merits further discussion. There’s a gap in the common, public understanding of liability and how the law treats liability. The gap stems from a misunderstanding of tort law in general and is compounded when we start talking about indirect tort liability and how it is applied in the copyright context. You can see the gap in this understanding of tort law not only in debates concerning indirect copyright infringement, but also displayed in the perennial debates about tort reform, or in public reactions to what are sometimes referred to as “frivolous lawsuits.”2

To bridge the gap in understanding, I want to take a walk through tort law and why we have it. Next, I want to take a look at secondary liability in general and then specifically in terms of copyright. Finally, I want to look at how these concepts transferred to the online world and the legislative responses to dealing with the particular challenges of applying them to internet service providers. We’ll see that zero liability for service providers for the actions of their users is not a “basic liability concept” — far from being a logical or foregone conclusion, it is one of several possibilities of liability for service providers based on ancient concepts of tort liability, and it is an option that has, in part, been discarded in most of the world.

First, let’s talk about what “torts” are and why I brought them up.

These Torts are Delicious

Torts, in their broadest sense, are legal “wrongs”. They are private, rather than public, wrongs — distinguishing them from crimes — and they stem from universally applicable duties, rather than voluntarily agreed-upon duties — distinguishing them from contract claims.

The reason I’ll be talking about torts is that copyright infringement is a tort. In 1869, the Massachusetts Circuit Court wrote:

Rights secured by copyright are property within the meaning of the law of copyright, and whoever invades that property beyond the privilege conceded to subsequent authors commits a tort.3

This characterization of copyright infringement as tort has survived since then.4

The Goals of Tort Law

I think a big reason for the gap in understanding comes from a lack of understanding the goals of tort law. Most people understand the basic goals of criminal law. Some things are just bad — murder, robbery, rape. Society as a whole wants to either prevent them from happening or punish those who do them. Criminal law serves these goals; prison and fines act as punishment, the threat of prison and fines acts as a deterrent.5 The problem comes when people assume that the law of torts — private wrongs — has the same goals as the law of crimes — public wrongs. Deterrence and punishment are indeed part of the goals of tort law, but there are more goals to consider. One way of looking at it is laid out by Sir John William Salmond, who wrote in 1891:

A law is a rule of conduct set by the state and enforced by a sanction; a sanction is an evil inflicted upon those who disregard the rule; the administration of justice is that function of the state which consists in the infliction of such sanctions, that is to say, in punishment . Now, as a matter of fact, punishment is not an invariable or essential end of the administration of justice, but is merely one of several ends. These are at least three in number; namely, (i) prevention, (2) punishment, and (3) compensation.6

The addition of “compensation” to the ends of justice plays a large role in the administration of tort law. Indeed, nowadays economics plays just as much a role in shaping the law of torts as morality and ethics. Tort law professor F. Patrick Hubbard restates these goals from a modern perspective as such:

The tort system’s redistribution of the loss from the plaintiff to the defendant has been justified in terms of three policy goals. First, the liability for payment of compensatory damages prevents wrongdoing and thus protects rights in several ways, particularly: (1) the payment for injuries caused by wrongful conduct provides an incentive to avoid wrongful conduct; and (2) even where no wrongdoing is involved, imposing liability for accident costs provides an incentive to reduce injuries not currently preventable by due care by lowering the level of activity, or by seeking innovations that result in new, more cost-effective safety measures. Second, our sense of fairness requires that, as a matter of “corrective justice,” victims who suffer injury because their rights have been wrongly denied should have recourse to a system that requires injurers to pay compensation. These injurers “deserve” to bear the costs of their wrongs, not innocent victims. This concept of “just desert” also serves to limit liability from becoming disproportionately large in comparison to a defendant’s wrongdoing. Third, compensation of victims is frequently said to be, by itself, a goal of tort law.7

A thorough discussion of the goals and justifications of tort law is well beyond the scope of this article; for more, check out Stanford Encylopedia of Philosophy’s entry on Theories of Tort Law. For purposes of our discussion, it’s enough to say that modern tort law goes beyond merely “placing blame.” It asks also, among other things, what are the most efficient ways to allocate the losses attached to wrongs among the parties involved and what rules provide the best incentives to reduce the likelihood of wrongs. While differing theories about tort law compete, it is safe to say that the goals of “fairness” and “efficiency” are at the heart of modern tort jurisprudence.

Secondary Liability in Tort Law

The gap in the public’s understanding of tort law grows wider when it comes to secondary liability — those doctrines that place liability on someone other than the person who actually committed the wrong. How can this be? In 1883, political economist William Edward Hearn wrote:

§ 4. The general principle of justice which governs men’s responsibility for their conduct has two branches. One is that, subject to certain specified grounds of defence, every man is answerable for his own acts and his own forbearances, or for those which he has ordered. The other is that no man is answerable for the conduct of any other person. To the latter proposition, however, there are certain exceptions. These are cases of vicarious liability.8

Vicarious liability grew out of the long-established doctrine of respondeat superior in common law. Respondeat superior states that an employer, or principal, is liable for the acts of his employee, or agent.9

Contributory liability is the name most often used in the intellectual property context to describe the doctrine of holding someone liable for their contribution to the commission of a tort.10 The theory behind it is sometimes referred to as “concert of action” and it finds its genesis in the criminal law idea of “aiding and abetting.”11

“The most ancient authorities of the law” considered those who assisted in the commission of a crime to be guilty of the crime itself.12 So, for example, a getaway driver for a bank robber could be found guilty of the robbery even if his role was limited to sitting in the car while others did the actual robbing.

This principle remains the same when the wrong in question is a tort rather than a crime. In 1831, the Supreme Court of Ohio wrote in Bell v. Miller:

All concerned in the commission of a trespass are considered principals. An assault and battery may be committed by a party not present, if he be a principal actor in or adviser and promoter of making the attack. If one person employ another to commit an assault and battery or any other trespass, and the act is perpetrated, both are guilty, and both responsible in damages. It was not supposed that this was now a debatable question.13

The justifications for secondary liability build off of the fairness and efficiency goals of tort law. Associate professor of law Mark Bartholomew restates it as such: “While vicarious liability exists to redistribute risk in the absence of fault, contributory liability seeks to apportion liability on the basis of moral dessert.”14

Secondary Liability in Copyright Law

As mentioned above, copyright infringement is a tort. One would expect, then, that doctrines of secondary liability have made their way into cases dealing with copyright infringement. And indeed, they have.

Courts have generally recognized three theories for holding a third party indirectly liable for direct infringement caused by another:

  • Vicarious infringement — where one profits from direct infringement that one has the right and ability to control15
  • Contributory infringement — where one has knowledge of the infringement and causes or materially contributes to the infringement16
  • Inducement — where one engages in purposeful conduct that encourages infringement with the intent to encourage infringement17

These well-established principles of secondary liability have been applied in infringement cases for decades, if not longer.18 But it wasn’t until the widespread adoption of the internet over the last 20 or so years that these doctrines have played an increasingly important role in copyright infringement cases.

One quick note: some copyright critics cling to the belief that secondary liability doesn’t exist in the realm of copyright infringement because it is not mentioned in the Copyright Act. The belief is bolstered, perhaps, by Justice Stevens’s remark in Sony v. Universal City Studios that “The Copyright Act does not expressly render anyone liable for infringement committed by another.”19 But the idea that third-party liability in copyright infringement is invalid is wrong on two counts.

First, the US operates under a common law system. The law is developed in the courts unless and until it is modified by statute. As shown above, courts have long recognized doctrines of secondary liability in infringement cases. And if you read just a couple sentences more, you see Stevens explain the same:

The absence of such express language in the copyright statute does not preclude the imposition of liability for copyright infringements on certain parties who have not themselves engaged in the infringing activity. For vicarious liability is imposed in virtually all areas of the law, and the concept of contributory infringement is merely a species of the broader problem of identifying the circumstances in which it is just to hold one individual accountable for the actions of another.

Second, even recognizing that secondary liability exists in copyright law under the common law, some have suggested that Stevens was, in fact, wrong that the Copyright Act didn’t expressly recognize it. Peter Menell and David Nimmer explain:

The extensive legislative history underlying the 1976 Act refers specifically to the law of torts in clarifying that “where the work was infringed by two or more joint tort feasors, the bill would make them jointly and severally liable …” More references to tort law undergird the 1976 Act’s remedial provisions. These references cement the proposition that tort doctrine furnishes the background law for determining what circumstances render someone liable for infringement and, if liable, the scope of remedies.

The legislative history makes two direct references to indirect liability standards, both of which support the continuation of then-existing doctrines and their further refinement through judicial decisions. In explaining the general scope of copyright, the House Report recognizes contributory liability:

The exclusive rights accorded to a copyright owner under section 106 are ‘to do and to authorize’ any of the activities specified in the five numbered clauses. Use of the phrase ‘to authorize’ is intended to avoid any questions as to the liability of contributory infringers. For example, a person who lawfully acquires an authorized copy of a motion picture would be an infringer if he or she engages in the business of renting it to others for purposes of unauthorized public performance.

In discussing infringement, the House Report explains:

Vicarious Liability for Infringing Performances

The committee has considered and rejected an amendment to this section intended to exempt the proprietors of an establishment, such as a ballroom or night club, from liability for copyright infringement committed by an independent contractor, such as an orchestra laeder [sic]. A well-established principle of copyright law is that a person who violates any of the exclusive rights of the copyright owner is an infringer, including persons who can be considered related or vicarious infringers. To be held a related or vicarious infringer in the case of performing rights, a defendant must either actively operate or supervise the operation of the place wherein the performances occur, or control the content of the infringing program, and expect commercial gain from the operation and either direct or indirect benefit from the infringing performance. The committee has decided that no justification exists for changing existing law, and causing a significant erosion of the public performance right.

That excerpt shows legislative intent to preserve the principles of vicarious liability that had developed through the courts under prior law under the 1976 Act.20

Copyright Liability Online

With the advent of digital technology — allowing text, music, and visual works to be reproduced easily and perfectly — and the internet — allowing digital files to be distributed cheaply across the globe — liability for copyright infringement quickly entered new territory.

Copyright infringement has traditionally been characterized as a strict liability tort, meaning one can be liable without intending to infringe any of the exclusive rights protected by copyright.21 This strict liability, in theory, implicates many parties that make up the backbone of the internet since transmission of digital data necessarily involves “copying” and distribution, as well as public display or performance, at many different stages.

In the US, the Digital Millennium Copyright Act (DMCA) — specifically, the safe harbors the bill amended to §512 of Title 17 of the US Code —  was a watershed bill for dealing with copyright liability online. One can divide how the law treats copyright liability for online service providers into two eras: pre-DMCA and post-DMCA.

Prior to the DMCA, it was up to courts to determine whether service providers were directly infringing on copyright for their role in copying and transmitting infringing works originally uploaded by users of the service. In at least one case, Playboy Enterprises v. Frena, the court found that the service provider was liable for direct infringement.22 Despite Playboy Enterprises, however, the case law suggests that courts were largely unwilling to hold service providers liable for direct infringement.23

When we turn to the question of indirect infringement — whether a service provider is liable for vicarious or contributory infringement — the pre-DMCA case law shows a far more muddied application of the doctrines. Contrasting approaches to these doctrines as applied to service providers emerged in the courts, with the result being a great deal of uncertainty for service providers.24

Governments around the world faced the same issues. The internet represented a great source of innovation and advancement. How best to craft liability rules that would ensure continued innovation and advancement while protecting long-established, real world rights online? The US Congress ultimately crafted the DMCA to address these concerns and provide certainty.

Addressing Online Liability Through Legislation

The choice for what level of liability online service providers should be subjected to, by law, generally comes down to one of three options: no liability, strict liability, or some type of limited or conditional liability. The DMCA takes a mixed approach, depending on what role an online service provider has taken on. Service providers have zero copyright liability if they are only engaged in transmitting and routing data, or if copies are made for system caching purposes.25 Conditional liability is placed on service providers for infringing works residing on the provider’s system at the direction of a user — for example, an unauthorized video uploaded to YouTube, an unauthorized photo posted on a message board, or an unauthorized song hosted on a user’s web site.

The general consensus is that conditional liability for service providers in the copyright context is the best of the three options.26 This approach balances the multitude of competing factors involved: it creates incentives on parties to reduce the harms of copyright infringement while avoiding overzealous monitoring that may suppress noninfringing speech. Most major countries around the world have adopted some form of conditional liability for online service providers in the copyright realm.27

What would liability for service providers look like today had there not been a DMCA? The answer is unclear. Certainly, there would have been a period of great uncertainty at the early stages of the growth of the internet as courts addressed the question. Perhaps the common law would have developed toward standards which fairly and efficiently allocated the risks of user infringement among the various parties; it is not unlikely, however, that courts could have adopted rules placing more of a burden on service providers for user infringement. Either way, if the question was left to the courts, it would likely have stifled innovation when such a result would have been most detrimental. A large company at the time like Yahoo or AOL could easily fend off legal challenges, where a cash-strapped startup might have folded, unable to fight in court no matter how likely its eventual success would be.

Conclusion

Zero liability for online service providers is far from a “basic liability concept.” Tort law has long recognized several doctrines where indirect liability may be imposed, and copyright law has long adopted those doctrines. Absent legislation like the DMCA, it is uncertain how courts would have applied those doctrines to service providers in the online context. The period of greatest uncertainty in the law would have coincided with the early stages of the widespread adoption of the internet: a time when uncertainty would have provided the most detriment.

It’s true that the laws regarding online liability for service providers are far from perfect. Stakeholders on all sides have expressed areas where they could be improved. But claims that zero liability for service providers are a foregone conclusion from a “common sense” point of view or that they reflect “basic liability concepts” are entirely off-base.

See Also

Footnotes

  1. Christopher Osakwe, Russian Civil Code. Parts 1-3: Text and Analysis (Wolters Kluver 2008). []
  2. Most notably the “hot coffee” lawsuit against McDonalds. []
  3. Lawrence v. Dana, 15 F. Cas. 26, 61 (C.C. Mass. 1869). []
  4. Peter S. Menell & David Nimmer, Unwinding Sony, 95 California Law Review 941, 996 (2007). []
  5. This is obviously an over-simplification for the purpose of discussion. For a more detailed look at theories of criminal law, start at Stanford Encyclopedia of Philosophy – Theories of Criminal Law. []
  6. Essays in Jurisprudence and Legal History, pg. 123. []
  7. Hubbard, The Nature and Impact of the ‘Tort Reform’ Movement, 35 Hofstra Law Review 437, 445-46 (2006). []
  8. The Theory of Legal Duties and Rights, pg 125. []
  9. See, for example: Broom, Manisty, and Cagney, A Selection of Legal Maxims, Classified and Illustrated, pg. 798 (1884) for a discussion of the doctrine and its long-standing place in history. []
  10. For example, in trademark cases like Inwood Labs v. Ives Labs, 456 US 844 (1982) and especially in patent cases: Thomson-Houston Electric v. Kelsey Electric, 72 F1d 1016 (1896). []
  11. See In re Aimster Copyright Litigation, 334 F.3d 643, 651 (7th Cir. 2003); Boedecker, Kasulis, Morgan, and Stoltman, The History of Enterprise Liability, Ninth C.H.A.R.M. Conference on Historical Analysis and Research in Marketing, 205, 210 (1999). []
  12. The American and English Encyclopedia of Law, pp. 29-30 (Edward Thompson Company, 1896). []
  13. Bell v. Miller, 5 Ohio 250 (Supreme Court of Ohio, 1831). []
  14. Mark Bartholomew, Copyright, Trademark and Secondary Liability after Grokster, 32 Columbia Journal of Law & the Arts 445, 465 (2009). []
  15. Shapiro, Bernstein & Co. v. HL Green Company, 316 F.2d 304, 308-309 (2nd Cir. 1963). []
  16. Gershwin Publishing Corp. v. Columbia Artists Man., 443 F.2d 1159, 1162 (2nd Cir. 1971). []
  17. Arista Records v. Lime Group (SDNY 2010). While there has been some doubt as to whether inducement is a new theory of secondary liability or just a restatement of contributory infringement, the court in Arista Records concluded that the Supreme Court in MGM v. Grokster confirmed inducement as a “distinct cause of action.” []
  18. See Unwinding Sony, pp 996-1005 for a thorough discussion of the history here. []
  19. 464 US 435. []
  20. Unwinding Sony, pp. 995-96. []
  21. Patry on Copyright, §9:5. []
  22. 839 F. Supp. 1552 (M.D. Fla. 1993). []
  23. Alfred Yen, Internet Service Provider Liability for Subscriber Copyright Infringement, Enterprise Liability, and the First Amendment, 88 Georgetown Law Journal 1833, 1842 (2000). []
  24. Yen, 1877. []
  25. 17 USC § 512 (a) and (b). []
  26. See, for example, Alan Woodfield, When Should the Bell Toll? The Economics of New Zealand’s Debate on Indirect Liability for Online Copyright Infringement, 1 Review of Economic Research on Copyright Issues 119, 147 (2004), discussing why New Zealand’s adoption of conditional liability was the best of the three options. []
  27. See Woodfield; Aditya Gupta, The Scope of Online Service Providers’ for Copyright Infringing Third Party Content Under the Indian Laws – the Road Ahead, 15 Journal of Intellectual Property Rights 35 (2010) (discussing UK, Canada, Australia, and India); VK Unni, Internet Service Provider’s Liability for Copyright Infringement – How to Clear the Misty Indian Perspective, 8 Richmond Journal of Law & Technology 13 (2001) (also discussing Canada, Australia, and India, as well as Singapore); the procedure the Russian ISPs propose in their letter highlighted in the TechDirt article mirrors these approaches. []

On August 11, 2010, media giant Viacom filed notice with the Second Circuit that it would be seeking an appeal in its legal battle against YouTube. The Southern District Court of New York essentially threw out the case, granting summary judgment to YouTube on June 23. Viacom originally sued the video site in 2007, claiming that the site did not do enough to prevent users from uploading infringing videos. The stakes are high – Viacom alleges $1 billion in damages, and Google has already spent $100 million to defend. More importantly, the case may have ramifications for many sites that rely on users for content.

What is this case all about? Some have suggested that Viacom is trying to “get back” at YouTube after it failed in a bid to buy the video site. Or even more sinisterly, maybe the case is an example of the entertainment industry’s shift toward propping up failing business models by extracting settlement money from legal threats. Exploring those contentions may have merit, but that’s not what this site is for. Instead, I’m more interested in examining the legal principles at work to get a better grasp at what’s going on inside the courtroom.

The case boils down to this: what obligation does a host like YouTube have to keep infringing materials off their site? To understand this a little better, let’s first take a closer look at secondary liability and internet safe harbors.

Secondary Liability

Qui facit per alium facit per se.1

By default, we are not responsible for someone else’s actions. There are circumstances however where the law does hold one person responsible for the actions of another. In criminal law, for example, someone aiding and abetting a criminal can be charged with the same offense. In civil law, the concept is sometimes referred to as secondary liability.2

It makes sense. If you have some sort of control over another’s actions and you benefit from their wrongdoing, or if you help someone knowing they will use your help to commit a wrong, you shouldn’t be let off the hook. Secondary liability is also a form of risk allocation. Holding someone responsible for the acts of those in their control encourages safety and fair business practices. Finally, secondary liability addresses concerns of obtaining redress when someone is wronged. It is more efficient to sue a single employer rather than multiple employees, and the person running the show often has deeper pockets than those under his control.

Secondary liability is well-established in many areas of the law. Let’s turn now to how courts have used it in the copyright context.

Secondary Liability in Copyright

Courts have applied two separate theories of secondary liability to copyright cases: vicarious  liability and contributory infringement.3 Vicarious liability includes the concept of respondeat superior, used to hold employers responsible for the acts of their employees, and requires that one benefits from conduct within one’s right or ability to control. Contributory infringement requires providing the means to engage in infringement with knowledge that infringement will occur.

One point of confusion: it’s easy to conflate secondary liability with direct infringement, but important to keep the two ideas separate.4 Direct infringement requires an unauthorized reproduction, distribution, or public performance. Secondary liability is liability for indirect infringement. The person doing the actual reproduction or distribution is directly liable; anyone who is not engaged in those acts but is contributing to – or controlling and benefiting from – that direct infringement is indirectly liable.

While vicarious liability is fairly easy to find in older copyright cases5, contributory infringement was relatively rare before the internet became popular. It became easy for anyone connected to transmit all kinds of data, including copyrighted content – and transmit they did, first by the hundreds, than by the thousands, than by the millions (often anonymously). The transmission of this content was made possible by several different parties: ISPs, web hosts, BBS operators, etc. Which of these parties should also be held responsible for infringement by internet users?

The DMCA

Needless to say, courts struggled with applying traditional legal doctrines to new, unfamiliar technologies. Concerned about the effects liability would have on the growth of an important communications network and the problem of having inconsistent law throughout the country, Congress passed the Online Copyright Infringement Liability Limitation Act (OCILLA) as part of the Digital Millennium Copyright Act of 1998 (DMCA).6

OCILLA provides online service providers7 with a conditional safe-harbor from secondary liability.  For anything stored on a service provider’s system or network at the direction of a user – e.g., a video uploaded to YouTube – service providers can qualify for this safe-harbor if they do not have knowledge of the specific infringing act, do not benefit directly from the infringement, and remove the infringing material when they receive notification from a content owner. This last aspect is known as a “notice-and-takedown” procedure.

So, continuing with the YouTube example, a user who uploads a television clip to YouTube has directly infringed – he has reproduced and distributed a copyrighted work without authorization from the owner.  YouTube would ordinarily be indirectly liable for this infringement, either because it has provided the means for the user to infringe or because it has the right and ability to control what is presented on its site and benefits from the traffic its content attracts. But under OCILLA, it is shielded from this potential liability if it removes the video once it either has knowledge that it is infringing or when the content owner sends a DMCA notice.

Viacom v. YouTube

The heart of the case between Viacom and YouTube hinged on interpretation of the “knowledge” component of the safe-harbor. The full language of the statute states that a service provider only qualifies if it

(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material.

Viacom alleged that YouTube was acting in “willful blindness“. It was well aware that large amounts of  content on its site was infringing but chose to ignore it – welcoming it, even – unless it received notification from the content owner. Essentially, Viacom argued, this awareness of infringement in general constituted the “actual knowledge” that triggers YouTube’s obligation to remove the material without receiving notice from the content owner.

The court sided instead with YouTube, and held that actual knowledge meant “actual or constructive knowledge of specific and identifiable infringements of individual items.” “General knowledge that infringement is ‘ubiquitous’ does not impose a duty on the service provider to monitor or search its service for infringements.”

That leaves the second prong of the knowledge component – a lack of awareness of “facts or circumstances from which infringing activity is apparent.” This is sometimes called “red flag infringement,” as in the facts and circumstances surrounding the activity should raise a red flag that infringement is occurring.

After reading the case though, I couldn’t figure out what, if anything, constitutes a “red flag”. Several others have pointed out that courts have largely written out the “red flag” prong. Here, the court wholesale adopted reasoning from Perfect 10 v. CCBill, a 9th Circuit case dealing with “red flag” trademark infringement. Copyrights and Campaigns author Ben Sheffner notes how unconvincing the reasoning of that case was:

In other words, under Ninth Circuit precedent, having material identified by its poster as “illegal” and “stolen” is not a red flag that infringing activity is taking place. One is left to wonder whether the panel would have ruled the same way had actual red flags been waved in the defendants’ faces.

One of the basic rules of interpreting a law is to avoid rendering any part superfluous.8 Courts assume lawmakers had a reason for wording a statute the way they did; any interpretation that vitiates a word, phrase, or entire provision subverts the lawmaking process.9

So the question is, what exactly would count as a “red flag”? It would have to be something less than specific knowledge that a particular work is infringing, but something more than general knowledge of infringing activity, including material specifically identified as being “illegal” or “stolen.” It’s difficult to think of anything that would fall in that middle ground, and it is possible that this interpretation of “red flags” will be revisited on appeal.

Why This Matters

This ruling has little effect on YouTube. Its policies have changed substantially since the suit was filed; today, many content providers have few qualms with YouTube’s approach to infringement, and the site continues to develop technological solutions to police infringement more effectively, especially its Content ID program. In addition, the pending appeal means that the lower court’s holding has little effect.

But the issues at play bring up a larger question: how much burden should be placed on hosts for policing infringement when they encourage user-generated content to drive traffic to their sites and, ultimately, sell advertising (or make money off the traffic in some other way)? While the DMCA has given content providers a mechanism to remove infringing material that is far cheaper and faster than going to court, the scale of the internet and ease of reproducing and distributing content means that creators still must focus an inordinate amount of time on managing infringement. YouTube is just one of many sites.10 If we talk about secondary liability in the context of risk allocation, should sites like YouTube – which receive a direct benefit by allowing user-generated content and have a greater ability to monitor what is uploaded on the back-end than multiple content creators have on the front-end – have more of an obligation to minimize direct infringement?

We’ll have to wait and see.

Footnotes

  1. “He who acts through another does the act himself.” []
  2. It is also sometimes called third-party liability, a linguistic oddity that makes me chuckle. []
  3. A third type of secondary liability, inducement, was introduced in MGM v. Grokster, but it is still unclear whether the Supreme Court meant to create a new, discrete form of secondary liability or whether they were merely rephrasing the concept of contributory infringement. []
  4. Some courts have even fallen into this trap – see Patry on Copyright § 21:40 []
  5. Many cases involve unauthorized public performances of music by bands hired by dance halls []
  6. OCILLA was codified as 17 U.S.C. § 512. []
  7. “Online service providers” encompasses any company or service that transmits or communicates information between users and includes internet service providers and web sites. []
  8. CRS Report for Congress, Statutory Interpretation: General Principles and Recent Trends. []
  9. This is different from a court striking down a law on constitutional grounds. If the constitutionality of a law is not being challenged, courts generally don’t have the power to change the meaning of laws to whatever suits them. []
  10. Viacom notes that monitoring YouTube alone is time-consuming. []