Advanced Copyright Issues on the Internet - Fenwick & West LLP

characteristics or uses of an accused product.” 977 In determining whether the allegedcontributory infringer acted with such culpable intent, the court, apparently not believing that theGrokster case repudiated any of the Aimster case’s holding or rationale, noted that the SeventhCircuit considers the following factors under the Aimster case: “(1) the respective magnitudes ofinfringing and noninfringing uses; (2) whether the defendant encouraged the infringing uses; and(3) efforts made by the defendant to eliminate or reduce infringing uses.” 978The court found that the plaintiffs had not satisfied any of the factors. The plaintiffs hadnot submitted any evidence to tie the ratio of Bitstream fonts to non-Bitstream fonts available inthe marketplace to the proportion of such fonts that Bitstream’s customers actually used with theCSR. Nor had they presented any evidence that Bitstream knew of or encouraged the allegedlyinfringing uses of TrueDoc. With respect to the third factor, the court noted that Bitstream hadmade at least some efforts to reduce the risk of infringement of third parties’ intellectual propertythrough the use of TrueDoc, in the form of a “doc-lock” feature with the capability of preventinga third party from using a PFR that it had received for any purpose other than viewing thedocument with which the PFR came. Bitstream also engineered TrueDoc to honor theembedding flags that font foundries include in their font data, which prohibit a third party fromembedding that font into another technology. 979 Finally, the court found no liability under theinducement doctrine of the Grokster case, because there was no evidence that Bitstream hadknowledge of its customers’ alleged infringements, much less that it acted with the “purposeful,culpable expression and conduct” required under the Grokster decision. 980(vi) Keogh v. Big Lots Corp.In Keogh v. Big Lots Corp., 981 the court ruled that the prohibition of Section 1202(b)(3)of the DMCA against distributing works knowing that CMI has been removed or altered withoutauthority of the copyright owner requires actual knowledge that CMI has been removed.Constructive knowledge of removal of CMI is not sufficient. Once CMI is removed from awork, however, the defendant is required to have only “reasonable grounds to know” (aconstructive knowledge standard) that its actions would induce, enable, facilitate, or conceal aninfringement of any right under the DMCA. Because the plaintiff had not alleged that thedefendant had actual knowledge that CMI had been removed from imported birdhouses havingdesigns that allegedly infringed the plaintiff’s birdhouses, the court granted the defendant’smotion to dismiss the CMI claim under Rule 12(b)(6). 982977978979980981982Id.Id.Id. at 887-88.Id. at 888-89.2006 WL 1129375 (M. D. Tenn. Apr. 27, 2006).Id. at *2.- 217 -