Advanced Copyright Issues on the Internet - Fenwick & West LLP

It is unclear from the majority opinion whether the inducement doctrine is meant to forma third basis for secondary liability, in addition to the traditional contributory and vicariousliability doctrines, or whether the Court intended it to be merely one species of contributoryliability. At one point in the opinion, Justice Souter stated, “One infringes contributorily byintentionally inducing or encouraging direct infringement … and infringes vicariously byprofiting from direct infringement while declining to exercise a right to stop or limit it.” 1429 Thissentence suggests that intentional inducement is but one species of contributory infringement, asdistinct from vicarious liability. And Justice Souter’s interpretation of Sony as a case “about …imputed intent” 1430 reinforces this notion, since intent is the primary issue for copyrightinducement liability as set forth by the Court. Yet Justice Breyer’s concurring opinion impliesthat the inducement doctrine is a new basis for liability distinct from contributory and vicariousliability, for he notes that the Court’s opinion should further deter infringement “by adding aweapon to the copyright holder’s legal arsenal.” 1431 Justice Ginsburg’s concurring opinioncontains a similar inference in her statement that on the record before the Court, Grokster andStreamCast could be liable “not only for actively inducing copyright infringement,” but“alternatively” for contributory infringement. 1432Despite the ambiguity in the opinion, it seems to be the better view that the inducementdoctrine should be seen as a separate basis for secondary liability distinct from that of thetraditional contributory and vicarious liability doctrines. In addition to the fact that JusticeBreyer reads it that way in his concurrence, Justice Souter notes that Sony, although it forbadeimputing culpable intent as a matter of law from the characteristics or uses of a distributedproduct, was never meant to foreclose rules of “fault-based liability derived from the commonlaw.” 1433 The traditional doctrine of contributory infringement, as articulated by the courtsbefore the Grokster opinion, was not grounded on a concept of “fault,” thereby suggesting thatthe inducement doctrine and its associated notion of “fault” is something new. That notion of“fault” is to be found under the inducement doctrine in proof of intent to promote unlawfulbehavior, coupled with concrete steps taken to act out that intent. 1434 In addition, the kinds ofevidence the Court notes as relevant to intent and inducement liability is different from the kindsof evidence courts had usually considered for contributory liability before the Groksterdecision. 14351429 Id. at 2776.1430 Id. at 2778.1431 Id. at 2791.1432 Id. at 2783.1433 Id. at 2779.1434 The Court noted that the staple article of commerce doctrine in general, and the Sony case in particular,“absolves the equivocal conduct of selling an item with substantial lawful as well as unlawful uses, and limitsliability to instances of more acute fault than the mere understanding that some of one’s products will bemisused.” Id. at 2778.1435 The doctrines of contributory and inducement liability are clearly separate doctrines in the patent law, for theyare embodied in separate statutory sections. 35 U.S.C. § 271(b) sets forth inducement liability: “Whoeveractively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(c) sets forth- 318 -