June 24, 2017

Archives for June 2005

Legality of Design Decisions, and Footnote 12 in Grokster

As a technologist I find the most interesting, and scariest, part of the Grokster opinion to be the discussion of product design decisions. The Court seems to say that Sony bars liability based solely on product design (p. 16):

Sony barred secondary liability based on presuming or imputing intent to cause infringement solely from the design of distribution of a product capable of substantial lawful use, which the distributor knows is in fact used for infringement.

And again (on p. 17),

Sony‘s rule limits imputing culpable intent as a matter of law from the characteristics or uses of a distributed product.

But when it comes time to lay out the evidence of intent to foster infringement, we get this (p. 22):

Second, this evidence of unlawful objective is given added significance of MGM’s showing that neither company attempted to develop filtering tools or other mechanisms to diminish the infringing activity using their software. While the Ninth Circuit treated the defendants’ failure to develop such tools as irrelevant because they lacked an independent duty to monitor their users’ activity, we think this evidence underscores Grokster’s and StreamCast’s intentional facilitation of their users’ infringement.

It’s hard to square this with the previous statements that intent is not to be inferred from the characteristics of the product. Perhaps the answer is in -footnote 12, which the court hangs off the last word in the previous quote:

Of course, in the absence of other evidence of intent, a court would be unable to find contributory infringement liability merely based on a failure to take affirmative steps to prevent infringement, if the device otherwise was capable of substantial noninfringing uses. Such a holding would tread too close to the Sony safe harbor.

So it seems that product design decisions are not to be questioned, unless there is some other evidence of bad intent to open the door.

To make things worse, the Court here criticizes Grokster and StreamCast for making a very reasonable engineering decision. There is every reason to believe that filtering technology would add to the cost and complexity of the companies’ software, without substantially reducing infringement. (We discussed this issue in the computer science professors’ brief.) In short, the Court here engages in exactly the kind of design second-guessing that technologists fear.

Legitimate technologists will still worry that a well-funded plaintiff can cook up a stew of product design second-guessing, business model second-guessing, and occasional failures of copyright compliance by low-level employees, into an active inducement case. This risk existed before, and the Court today hasn’t done much to reduce it.

Business Model as Evidence of Intent

One interesting aspect of Justice Souter’s majority opinion in Grokster is the criticism of the business models of StreamCast and Grokster (pp. 22-23):

Third, there is a further complement to the direct evidence of unlawful objective. It is useful to recall that StreamCast and Grokster make money by selling advertising space, by directing ads to the screens of computers employing their software. As the record shows, the more the software is used, the more ads are sent out and the greater the advertising revenue becomes. Since the extent of the software’s use determines the gain to the distributors, the commercial sense of their enterprise turns on high-volume use, which the record shows is infringing. This evidence alone would not justify an inference of unlawful intent, but viewed in the context of the entire record its import is clear.

It’s hard to think of any conceivable business model for a software company under which an increase in use of the product does not lead to an increase in revenue. If you sell software, greater use allows you to increase the price, or to sell more units. Likewise if you sell software by subscription. If you give away the software and make money on auxiliary products or services, you’ll still benefit from increased usage.

Certainly Sony’s profits would have increased the more people used Betamaxes. The same is true for iPods, TiVos, photocopiers, and many other legitimate products. Profiting from use seems like pretty poor evidence of intent to cause infringement.

Grokster Loses

The Supreme Court ruled unanimously against Grokster, finding the company’s actions to be illegal. (Reported by SCOTUSblog.) Expect an explosion of discussion in the blogosphere. My usual one-post-a-day limit will be suspended today.

Unanimous opinion of the Court (written by Souter)
Concurrence of Ginsburg (joined by Rehnquist and Kennedy)
Concurrence of Breyer (joined by Stevens and O’Connor)

I’ll be participating in a special Grokster discussion over at SCOTUSblog, along with several distinguished lawyers. Everything I post here will be duplicated there, and vice versa.

Also, Randy Picker is organizing a lawprof “mobblawg” about today’s Grokster and BrandX rulings, with an impressive group of participants.