Advanced Copyright Issues on the Internet - Fenwick & West LLP

The Ninth Circuit agreed, however, with the district court that Perfect 10 failed toprovide any evidence directly establishing that users of Google’s search engine had storedinfringing images on their computers. Finally, the Ninth Circuit agreed with the district courtthat any cache copies of full size images made by users who linked to infringing web sites were afair use. The copying performed automatically by a user’s computer to assist in accessing theInternet was a transformative use and did not supersede the copyright holder’s exploitation of thework. 329 “Such automatic background copying has no more than a minimal effect on Perfect10’s rights, but a considerable public benefit.” 330 Accordingly, the Ninth Circuit assessedGoogle’s secondary liability based solely with respect to activities of third party web sites thatreproduced, displayed, and distributed unauthorized copies of Perfect 10’s images on theInternet. 331Turning to whether Google could be secondarily liable for the infringing acts of thosethird party web sites, the Ninth Circuit first noted that under the Sony doctrine, Google could notbe held liable for contributory infringement based solely on the fact that the design of its searchengine facilitated such infringement. Nor, under footnote 12 of the Supreme Court’s Groksterdecision, could Google be held liable solely because it did not develop technology that wouldenable its search engine to automatically avoid infringing images. 332The Ninth Circuit next held that Google could not be liable under the Supreme Court’sinducement test in Grokster, because Google had not promoted the use of its search enginespecifically to infringe copyrights. 333 In reaching this result, however, the Ninth Circuit appearsto have put a gloss on the Supreme Court’s test for inducement liability, for in addition to notingthat inducement liability could result from intentionally encouraging infringement throughspecific acts, the Ninth Circuit stated that intent could be imputed “if the actor knowingly takessteps that are substantially certain to result in … direct infringement.” 334Finally, turning to whether Google could have secondary liability under the traditionalcommon law doctrine of contributory liability, the Ninth Circuit, citing its Napster decisions,noted that it had “further refined this test in the context of cyberspace to determine whencontributory liability can be imposed on a provider of Internet access or services.” 335 The NinthCircuit noted that under both Napster and Netcom, a service provider’s knowing failure toprevent infringing actions could be the basis for imposing contributory liability, because undersuch circumstances, the intent required under the Supreme Court’s Grokster decision may beimputed. Accordingly, the Ninth Circuit articulated the following test for contributory liabilityin the context of cyberspace:329330331332333334335Id.Id.Id. at 1170.Id.Id. at 1171 n.11.Id. at 1171.Id.- 85 -