April 24, 2014


Splitting the Grokster Baby

David Post at the Volokh Conspiracy predicts, astutely, the outcome of the Grokster case. He predicts that the Supreme Court will try to split the baby by overturning the lower court decision (which Hollywood is asking for) while upholding the Sony Betamax doctrine immunizing designers of dual-use technologies from secondary liability (which technologists are asking for). How will the Court do this? Here’s Post:

The Court has an easy “out” here, and my experience has been that when they’re presented with an easy out they usually grab it. The Ninth Circuit in this case affirmed the grant of summary judgment to Grokster, holding that on any reasonable version of the facts, Grokster could not be held liable for “contributory copyright infringement” because the software involved is “capable of substantial non-infringing uses” under the Sony v. [Universal] case. The record company plaintiffs want the Court to “tighten up” the Sony standard, and to say, in effect, that the non-infringing uses that these P2P networks have are not “substantial” enough under Sony.

That would be a disaster for technology providers — but I don’t think that’s what the Court will say. Instead, I think the Court will send the case back to the Ninth Circuit and say: you were right that, under Sony, the non-infringing uses here are substantial enough so that, standing alone, providers of these p2p technologies can’t be held liable for the copyright infringements of network users. But — and here’s the critical part — on these facts, it doesn’t stand alone; there’s evidence in this record that Grokster and the other defendants actively encouraged and induced its customers to infringe copyrights, and that inducement of this kind is not protected by the Sony safe harbor. The Court will then instruct the Ninth Circuit to re-open the case and evaluate whether or not this evidence is enough to hold the defendants liable on an inducement, or “aiding and abetting,” theory of liability.

In doing this, the Court would be drawing a line between acts of technology design, which would not trigger secondary liability, as long as the technology is capable of substantial noninfringing use, and other acts, which could trigger secondary liability. If the Court isn’t careful to draw this line carefully, we could be left with a terrible muddle.

Consider, for instance, a vendor’s decision not to try to incorporate filtering technologies into its product. This is a decision about the design of the product, but the Hollywood briefs argue that it is also (or instead) a decision about which market to enter, i.e. a non-design decision. Ideally, the Court would make clear that this is a design decision and therefore protected under Sony. But if the Court leaves this issue unaddressed or, worse yet, simply hints at moral disapproval of Grokster’s lack of filtering, technologists may be left in the dark as to which kinds of design decisions are really covered by Sony.

In my predictions for 2005, I predicted that the Court’s ruling would not provide clarity for future technologists. A vague split-the-baby decision is one way that could happen.

[To be safe, I'll follow Post and belabor the obvious: a prediction is an assertion that something will happen; it doesn't imply that the predicted event is or isn't desirable.

I'm being a bit cagey about my own views here, partly because I'm going to be leading class discussions about Grokster soon, and some of my students are probably reading this. Sometimes students take positions that they think will please the professor, on the expectation that they'll get higher grades just because they agree with the professor. I do my best to reward students for making creative and well-reasoned arguments, regardless of whether I agree with them. If anything, I try to lean the other way, and reward students for disagreeing with me, if they do it well.]


  1. patent guy says:

    David Post’s position is the same as AIPLA’s amicus brief.