Notes and Questions on Grokster
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1. Before the Supreme Court's decision in Grokster, there
were three tests for secondary liability in copyright law: (1)
the “traditional” two-part
test for contributory infringement, discussed in Fonovisa,
(2) the traditional two-part test for vicarious liability, also discussed
and (3) the Sony test for
contributory infringement liability. What
are the elements of or standards for each of these three tests?
2. What is the precise source of law for each
of the three tests? Are they matters of statutory interpretation
or federal common law? Do they derive from precise application
of statutory text in light of legislative history, or from general
principles refined by analogy and distinction? If the former,
from what statutory text does each derive? Does the copyright
statute mention secondary liability explicitly? If the latter,
what are the general principles?
3. By themselves, are the three tests coherent,
consistent and comprehensive? Do they explain, for example, when
to apply the Sony rule and when to apply the “traditional” rule in assessing contributory fringement? Was that a question
left unresolved in Sony and Napster
I? Are the three tests comprehensive
in the sense that there is no other basis for secondary liability?
Did the Grokster court apply any of these three tests? Or
did it announce a new rule? If the latter, what rule and where
did it come from? Was the rule a matter of statutory interpretation
and textual exegesis or of federal common law? If the former, on
what specific words in the statute did it depend? If the latter,
what general rule or legal principle was involved?
5 . It is black-letter law that copyright infringement is
a strict-liability tort, independent of the defendant’s
state of mind. See, e.g., Buck v. Jewell-La Salle
Realty Co., 283 U.S. 191, 198-199, 51 S.Ct. 410, 75 L.Ed. 971, 9 U.S.P.Q.
(BNA) 17 (1931) (“Intention to infringe [a copyright] is not essential
under the Act. . . . And knowledge of the particular selection
to be played or received is immaterial. One who hires an orchestra
for a public performance for profit is not relieved from a charge of
infringement merely because he does not select the particular program
to be played.”) (Citations
omitted.); De Acosta v. Brown, 146
F.2d 408, 410, 411-412, 63 U.S.P.Q. (BNA) 311 (2d Cir. 1944), cert.
denied 325 U.S.
862 (1945). See generally, 1 Dratler, Intellectual
Property Law: Commercial, Creative, and Industrial Property § 1.07[a]
(Law Journal Press 1991 & Supps.), available on line on LEXIS at
the following path: Secondary Legal : View More Sources : Law Journal
Press: [title of treatise] : Chapter 1 : Section 1.07.
Can the same be said of secondary liability for copyright infringement? Is
that a strict-liability tort, or does it require some sort of
culpability? Make a table of all the forms of secondary liability
for copyright infringement of which you are aware, and list the level of
culpability (state of mind), if any, required for each. What about
vicarious liability? Does it fit the general pattern? Can vicarious
liability be viewed as based on presumed or implied culpability?
the Grokster Court,
unlike the Sony Court,
found secondary liability. Can you distinguish the two
cases on their facts? How strong is the distinction? Could
the courts have decided Grokster by distinction only?
7. Is there any question whether the Grokster defendants’ activities
were a “but for” cause of users’ infringement? The
users could not have shared infringing files without the help of the
software that they downloaded from the defendants’ Websites,
Yet is “but for” the proper test for material contribution
in assessing contributory infringement of copyright? Does any of
the cases we have studied support a “but for” test, or does
each require something more than
“but for” causation? If more is required, what is it, and
is it present in Grokster?
8. In the Aimster decision, which Ninth Circuit in Grokster explicitly
refused to follow, the Seventh Circuit dealt with a Website much like
Napster’s and Grokster’s. There
were two salient differences, however. First,
unlike Napster, Aimster actively encouraged infringement by providing
tutorials involving infringing works. It also offered a “club” for
$4.95 per month that touted file sharing for the top forty hits, nearly
all of which were under copyright. See In re Aimster Copyright
Litigation, 334 F.3d 643, 651-652, 67 U.S.P.Q.2d (BNA) 1233 (7th Cir.
2003) (Posner, J.), cert. denied 124
S.Ct. 1069 (2004). Second, unlike Napster’s,
Aimster’s peer-to-peer file-sharing software
encrypted the files that users shared, so Aimster itself could not, even
in theory, tell whether or not those files contained infringing material. See id.,
334 F.3d at 646.
Analogize or distinguish Aimster to/from Grokster on
Could the Grokster court have decided that case by analogizing Aimster on
its facts? How convincing would that analogy have been?
In Aimster Judge Posner made short work of the defendant’s
argument that the encryption technology prevented it from having the
knowledge of infringement necessary for contributory liability. Characterizing
the lack of knowledge arising from encryption as “willful blindness,” he
implied it was merely a transparent ploy to avoid liability, which the
law would not countenance. See id., 334 F.3d at 650. In Grokster,
the lack of a central directory or index of files also precluded the
defendants there from having knowledge of what files their users shared. Was
that feature a matter of “willful blindness” also? Was
it a transparent ploy
to avoid liability?
9. The Supreme Court's opinion in Grokster was unanimous. What
was its holding? Why did two sets of three Justices, led
by Justices Ginsburg and Breyer, respectively, subscribe to concurring
did they hope to accomplish? Did they succeed? Or did the
fact that they split three-three suggest that their efforts at clarification
might not be easily and universally accepted?
10. The unanimous Grokster Court made clear that
Sony is not a general rule of immunity but a case largely limited
to its facts. After Grokster, when does Sony’s rule apply,
and when does it not?
Is Sony’s rule easy to apply? Isn’t
is hard for courts to tell when a product or technology is “capable
of substantial noninfringing uses”? Doesn’t
the ceaseless and rapid advance of technology make it hard even for Congress
to do so?
Then in the Sony rule a good, clear, administrable rule? Or
would it be better to resolve each case of secondary liability on its
facts, by analogy and distinction? Which approach would produce
the clearest, most predictable, most comprehensible decisions? Which
approach would give ordinary citizens the best chance of understanding
the rationale for decisions? Which approach would best promote
public understanding of and compliance with copyright law?