Advanced Copyright Issues on the Internet - Fenwick & West LLP

infringements were occurring and had a duty to prevent repeat infringements in the future. Thecourt ruled that the amount of policing for future infringements the OSP would be required to dowould depend upon the level of knowledge it possessed and the specificity of that knowledge.The court further held that, to prove its claim for contributory infringement, the plaintiff wouldhave to establish that the notice it gave to the OSP comprised at least constructive knowledge ofspecific infringing activity which the OSP materially contributed to or induced by its allegedfailure to halt the activity. There remained too many material factual disputes for the court todecide on summary judgment either that such a level of knowledge did or did not exist or that theOSP’s actions in trying to stop the infringement were or were not insufficient to the point ofcomprising inducement as a matter of law.(e) Ellison v. RobertsonIn Ellison v. Robertson, 1551 discussed in detail in Section III.C.5(b)(1)(i)b. below,the district court addressed the “reason to know” prong of the knowledge requirement ofcontributory liability. In that case an individual named Robertson scanned several fictionalworks written by the plaintiff and posted them onto the Usenet group “alt.binaries.e-book,” agroup that was used primarily to exchange pirated and unauthorized digital copies of textmaterial, principally works of fiction by famous authors. AOL, acting as a Usenet peer, hostedthe infringing materials on its Usenet server for a period of fourteen days. The plaintiff sought tohold AOL liable for direct, vicarious and contributory copyright infringement. 1552With respect to contributory infringement, the court found that AOL did not have actualknowledge of the infringement until the lawsuit was filed. Although the plaintiff had attemptedto notify AOL of the presence of the infringing works via email to AOL’s designated copyrightagent as listed in the <strong>Copyright</strong> Office’s records, AOL never received the email because AOLhad changed its contact email address from “copyright@aol.com” to “aolcopyright@aol.com” inFall 1999, but waited until April 2000 to notify the <strong>Copyright</strong> Office of this change. The districtcourt held that, in view of AOL’s failure to explain why it delayed in notifying the <strong>Copyright</strong>Office of its email address change, as well as why it did not make provision for forwarding to thenew address emails sent to the old address, a reasonable trier of fact could find that AOL hadreason to know that infringing copies of the plaintiff’s works were stored on its Usenetservers. 1553 The Ninth Circuit affirmed this ruling on appeal. 15541551 189 F. Supp. 2d 1051 (C.D. Cal. 2002).1552 Id. at 1053-54.1553 Id. at 1057-58. The court also noted that a trier of fact might conclude that AOL had reason to know ofinfringement on its system from the fact that another AOL user had called AOL to report a number ofinfringing books posted on Usenet. The user spoke only to a low-level customer service representative, whoadvised him to send an email setting forth the details of his complaint. The court stated, “a reasonable trier offact might conclude that AOL should have transferred Miller to speak with an employee with knowledge ofAOL’s copyright infringement policies instead of directing him to an email address.” Id. at 1058.1554 Ellison v. Robertson, 357 F.3d 1072, 1077 (9th Cir. 2004) (“Because there is evidence indicating that AOLchanged its e-mail address in an unreasonable manner and that AOL should have been on notice of infringingactivity we conclude that a reasonable trier of fact could find that AOL had reason to know of potentiallyinfringing activity occurring within its USENET network.”).- 341 -