Digital Millennium Copyright Act (Intellectual Property Law Series)

THIS CASEBOOK contains a selection of 40 U. S. Court of Appeals decisions that analyze and interpret provisions of the Digital Millennium Copyright Act. The full text of the Supreme Court's 2005 Grokster III decision is also included. The selection of decisions spans from 2003 to the date of publication.

Columbia Pictures Industries, Inc. v. Fung, 710 F. 3d 1020 (9th Cir. 2013) clarifies and extends the inducement liability doctrine of the Grokster III decision. Columbia Pictures involves of a website operator whose services allegedly induce third parties to download infringing copies of a film studio's copyrighted works via the BitTorrent protocol.

The "inducement" theory, [] was spelled out in the Internet technology context by the Supreme Court in Grokster III, Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 US 913 (2005). Considering how to apply copyright law to file sharing over P2P networks, Grokster III addressed the circumstances in which individuals and companies are secondarily liable for the copyright infringement of others using the Internet to download protected material. Columbia Pictures, supra at 1031.

[T]he "inducement rule," [] borrowed from patent law, provid[es] 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." This inducement principle, as enunciated in Grokster III, has four elements: (1) the distribution of a device or product, (2) acts of infringement, (3) an object of promoting its use to infringe copyright, and (4) causation. Columbia Pictures, supra at 1032.

i. Unlike patents, copyrights protect expression, not products or devices. Inducement liability is not limited, either logically or as articulated in Grokster III, to those who distribute a "device." As a result, one can infringe a copyright through culpable actions resulting in the impermissible reproduction of copyrighted expression, whether those actions involve making available a device or product or providing some service used in accomplishing the infringement. Columbia Pictures, supra at 1033.

When a widely shared service or product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively against all direct infringers, the only practical alternative being to go against the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement. Ibid.

ii. To prove copyright infringement on an inducement theory, [the plaintiff must] adduce "evidence of actual infringement by" users of [the] services. Ibid.

Both uploading and downloading copyrighted material are infringing acts. The former violates the copyright holder's right to distribution, the latter the right to reproduction. Ibid. at 1034.

iii. The third, usually dispositive, requirement for inducement liability is that the "device" or service be distributed "with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement." Columbia Pictures, supra, at 1034, citing Grokster III.