Sony Corp. of America v.
Universal City Studios, Inc. (Sony-Betamax)
464 U.S. 417, *, 104 S.Ct. 774, 78 L. Ed.2d 574, 224 U.S.P.Q. (BNA)
[In this case, a number of producers of copyrighted television programs
sued Sony, the maker of the first commercially successful video tape reecorder
["VTR"], for contributory infringement of their copyrights. Their
theory was that Sony, by making and selling its equipment, facilitated
consumers' unlawful copying of their copyrighted television programs off
The copyright owners asserted no claims against consumers, who were
the alleged primary or "direct" infringers. Nor did the owners assert
any claim for so-called "librarying," i.e., making tape recordings of
television programs off the air for long-term collection in a library.
The sole challenged act of direct infringement was the much more
common practice of "time-shifting," i.e., recording, for viewing at a
later time, television programs that had been broadcast without charge
over the public airways.
The copyright owners argued that time-shifting constituted infringement
of copyright, and that Sony had contributed to that infringement by providing
the equipment that made it possible. In a portion of the opinion
omitted below, the Court held that private, noncommercial time-shifting
is fair use, thus absolving consumers of liability as direct infringers.
This portion of the opinion provides the Court's legal analysis
of Sony's liability for contributory infringement of copyright—an issue
of first impression in this context.]
* * *
Article I, § 8, of the Constitution provides:
"The Congress shall have Power . . . To Promote the Progress of Science
and useful Arts, by securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and Discoveries." [*429]
The monopoly privileges that Congress may authorize are neither unlimited
nor primarily designed to provide a special private benefit. Rather, the
limited grant is a means by which an important public purpose may be achieved.
It is intended to motivate the creative activity of authors and inventors
by the provision of a special reward, and to allow the public access to
the products of their genius after the limited period of exclusive control
* * *
As the text of the Constitution makes plain, it is Congress
that has been assigned the task of defining the scope of the limited monopoly
that should be granted to authors or to inventors in order
to give the public appropriate access to their work product. Because this
task involves a difficult balance between the interests of authors and inventors
in the control and exploitation of their writings and discoveries on the
one hand, and society's competing interest in the free flow of ideas, information,
and commerce on the other hand, our patent and copyright statutes have been
amended repeatedly.(1) [*430]
From its beginning, the law of copyright has developed in response to significant
changes in technology.(2) Indeed, it was the
invention of a new form of copying equipment—the printing press—that gave
rise to the original need for copyright protection. Repeatedly, as
new developments have [*431] occurred in this country, it has been
the Congress that has fashioned the new rules that new technology made necessary.
Thus, long before the enactment of the Copyright Act of 1909, 35 Stat.
1075, it was settled that the protection given to copyrights is wholly statutory.
. . . (1834). The remedies for infringement "are only those
prescribed by Congress." Thompson v. Hubbard, 131 U.S. 123, 151 (1889).
The judiciary's reluctance to expand the protections afforded by the copyright
without explicit legislative guidance is a recurring theme. . . . Sound
policy, as well as history, supports our consistent deference to Congress
when major technological innovations alter the market for copyrighted materials.
Congress has the constitutional authority and the institutional ability
to accommodate fully the varied permutations of competing interests that
are inevitably implicated by such new technology.
In a case like this, in which Congress has not plainly marked our course,
we must be circumspect in construing the scope of rights created by a legislative
enactment which never contemplated such a calculus of interests. In doing
so, we are guided by Justice Stewart's exposition of the correct approach
to ambiguities in the law of copyright:
"The limited scope of the copyright holder's statutory monopoly, like
the limited copyright duration required by the Constitution, reflects
a balance of competing claims upon the public interest: Creative
work is to be [*432] encouraged and rewarded, but private motivation
must ultimately serve the cause of promoting broad public availability
of literature, music, and the other arts. The immediate effect of our
copyright law is to secure a fair return for an 'author's' creative labor.
But the ultimate aim is, by this incentive, to stimulate artistic
creativity for the general public good. 'The sole interest of the United
States and the primary object in conferring the monopoly,' this Court
has said, 'lie in the general benefits derived by the public from the
labors of authors.' Fox Film Corp. v. Doyal, 286 U.S. 123, 127.
. . . When technological change has rendered its literal terms ambiguous,
the Copyright Act must be construed in light of this basic purpose."
Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975)
* * *
The two respondents in this case do not seek relief against the Betamax
users who have allegedly infringed their copyrights. Moreover, this is not
a class action on behalf of all copyright owners who license their works
for television broadcast, and respondents have no right to invoke whatever
rights other copyright holders may have to bring infringement actions based
on Betamax copying of their works.(3) As was made clear
by their own evidence, the copying of the respondents' programs represents
a small portion of the total use of VTR's. It is, however, the taping of
respondents' own copyrighted programs that provides them with standing to
charge Sony with contributory infringement. To prevail, they have the burden
of proving that users of the Betamax have infringed their copyrights and
that Sony should be held responsible for that infringement.
The Copyright Act does not expressly render anyone liable for infringement
committed by another. In contrast, the [*435] Patent Act expressly
brands anyone who "actively induces infringement of a patent" as an infringer,
35 U. S. C. § 271(b), and further imposes liability on certain individuals
labeled "contributory" infringers, § 271(c). The absence of such express
language in the copyright statute does not preclude the imposition of liability
for copyright infringements on certain parties who have not themselves engaged
in the infringing activity.(4) For vicarious
liability is imposed in virtually all areas of the law, and the concept
of contributory infringement is merely a species of the broader problem
of identifying the circumstances in which it is just to hold one individual
accountable for the actions of another.
Such circumstances were plainly present in Kalem Co. v. Harper Brothers,
222 U.S. 55 (1911), the copyright decision of this Court on which respondents
place their principal reliance. In Kalem, the Court held that
the producer of an unauthorized film dramatization of the copyrighted book
Ben Hur was liable for his sale of the motion picture to jobbers,
who in turn arranged for the commercial exhibition of the film. * * *
[*436] * * * [But t]he producer in Kalem did not merely provide
the "means" to accomplish an infringing activity; the producer supplied
the work itself, albeit in a new medium of expression. Sony in the instant
case does not supply Betamax consumers with respondents' works; respondents
do. Sony supplies a piece of equipment that is generally capable of copying
the entire range of programs that may be televised: those that are uncopyrighted,
those that are copyrighted but may be copied without objection from the
copyright holder, and those that the copyright holder would prefer not to
have copied. The Betamax can be used to [*437] make authorized or
unauthorized uses of copyrighted works, but the range of its potential use
is much broader than the particular infringing use of the film Ben Hur involved
in Kalem. Kalem does not support respondents' novel theory
Justice Holmes [in Kalem] stated that the producer
had "contributed" to the infringement of the copyright, and the label "contributory
infringement" has been applied in a number of lower court copyright cases
involving an ongoing relationship between the direct infringer and the contributory
infringer at the time the infringing conduct occurred. In such cases, as
in other situations in which the imposition of vicarious liability is manifestly
just, the "contributory" infringer was in a position to control the use
of copyrighted works by others and had authorized the use without permission
from the copyright owner.(5) This case, however, plainly
does not fall [*438] in that category. The only contact between Sony
and the users of the Betamax that is disclosed by this record occurred at
the moment of sale. The District Court expressly found that "no employee
of Sony, . . . had either direct involvement with the allegedly infringing
activity or direct contact with purchasers of Betamax who recorded copyrighted
works off-the-air." And it further found that "there was no evidence
that any of the copies made by . . . individual witnesses in this suit were
influenced or encouraged by [Sony's] advertisements." [*439]
If vicarious liability is to be imposed on Sony in this
case, it must rest on the fact that tit has sold equipment with constructive
knowledge of the fact that its customers may use that equipment to make
unauthorized copies of copyrighted material. There is no precedent in the
law of copyright for the imposition of vicarious liability
on such a theory. The closest analogy is provided by the patent law cases
to which it is appropriate to refer because of the historic kinship between
patent law and copyright law.(6) [*440]
In the Patent Act both the concept of infringement and the concept of contributory
infringement are expressly defined by statute.(7) The
prohibition against contributory infringement is confined to the knowing
sale of a component especially made for use in connection with a particular
patent. There is no suggestion in the statute that one patentee may object
to the sale of a product that might be used in connection with other patents.
Moreover, the Act expressly provides that the sale of a "staple article
or commodity of commerce suitable for substantial noninfringing use" is
not contributory infringement. 35 U. S. C. § 271(c).
When a charge of contributory infringement is predicated
entirely on the sale of an article of commerce that is used by the purchaser
to infringe a patent, the public interest in access to that article of commerce
is necessarily implicated. A [*441] finding of contributory infringement
does not, of course, remove the article from the market altogether; it does,
however, give the patentee effective control over the sale of that item.
Indeed, a finding of contributory infringement is normally the functional
equivalent of holding that the disputed article is within the monopoly granted
to the patentee.(8)
For that reason, in contributory infringement cases arising under the patent
laws the Court has always recognized the critical importance of not allowing
the patentee to extend his monopoly beyond the limits of his specific grant.
These cases deny the patentee any right to control the distribution of unpatented
articles unless they are "unsuited for any commercial noninfringing use."
Dawson Chemical Co. v. Rohm & Haas Co., 448 U.S. 176, 198 (1980).
Unless a commodity "has no use except through practice of the patented method,"
the patentee has no right to claim that its distribution constitutes contributory
infringement. "To form the basis for contributory infringement the item
must almost be uniquely suited as a component of the patented invention."
P. Rosenberg, Patent Law Fundamentals § 17.02 (2d ed. 1982). "[A]
sale of an article which though adapted to an infringing use is also adapted
to other and lawful uses, is not enough to make the seller a contributory
infringer. Such a rule would block the wheels of commerce." Henry v.
A. B. Dick Co., 224 U.S. 1, 48 (1912), overruled on other grounds,
[*442] Motion Picture Patents Co. v. Universal Film Mfg. Co.,
243 U.S. 502, 517 (1917).
We recognize there are substantial differences between the patent and copyright
laws. But in both areas the contributory infringement doctrine is grounded
on the recognition that adequate protection of a monopoly may require the
courts to look beyond actual duplication of a device or publication to the
products or activities that make such duplication possible. The staple article
of commerce doctrine must strike a balance between a copyright holder's
legitimate demand for effective—not merely symbolic—protection of the statutory
monopoly, and the rights of others freely to engage in substantially unrelated
areas of commerce. Accordingly, the sale of copying equipment, like the
sale of other articles of commerce, does not constitute contributory infringement
if the product is widely used for legitimate, unobjectionable purposes.
Indeed, it need merely be capable of substantial noninfringing uses.
The question is thus whether the Betamax is capable of commercially significant
noninfringing uses. In order to resolve that question, we need not explore
all the different potential uses of the machine and determine whether or
not they would constitute infringement. Rather, we need only consider whether
on the basis of the facts as found by the District Court a significant number
of them would be noninfringing. Moreover, in order to resolve this case
we need not give precise content to the question of how much use is commercially
significant. For one potential use of the Betamax plainly satisfies this
standard, however it is understood: private, noncommercial time-shifting
in the home. It does so both (A) because respondents have no right to prevent
other copyright holders from authorizing it for their programs, and (B)
because the District Court's factual findings reveal that even the unauthorized
home time-shifting of respondents' programs is legitimate fair use.
* * *
[The Sony majority went on to rule that private, noncommercial
"time-shifting" of television programs that are broadcast for free over
the public airways is fair use. Furthermore, the Court held that such
fair use, when combined with lawful acts of recording that some producers
encouraged and to which others did not object, constituted sufficiently
"substantial" noninfringing use to relieve Sony of contributory liability.]
* * *
One may search the Copyright Act in vain for any sign that the elected representatives
of the millions of people who watch television every day have made it unlawful
to copy a program for later viewing at home, or have enacted a flat prohibition
against the sale of machines that make such copying possible.
It may well be that Congress will take a fresh look at this new technology,
just as it so often has examined other innovations in the past. But it is
not our job to apply laws that have not yet been written. . . .
1. [Court's footnote 10] In its Report
accompanying the comprehensive revision of the Copyright Act in 1909,
the Judiciary Committee of the House of Representatives explained this
"The enactment of copyright legislation by Congress under the terms of
the Constitution is not based upon any natural right that the author has
in his writings, . . . but upon the ground that the welfare of the public
will be served and progress of science and useful arts will be promoted
by securing to authors for limited periods the exclusive rights to their
writings. . . ."
"In enacting a copyright law Congress must consider . . . two questions:
First, how much will the legislation stimulate the producer and so benefit
the public; and, second, how much will the monopoly granted be detrimental
to the public? The granting of such exclusive rights, under the
proper terms and conditions, confers a benefit upon the public that outweighs
the evils of the temporary monopoly."
H. R. Rep. No. 2222, 60th Cong., 2d Sess., 7 (1909).
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2. [Court's footnote 11] Thus, for example,
the development and marketing of player pianos and perforated rolls of
music, see White-Smith Music Publishing Co. v. Apollo Co., 209
U.S. 1 (1908), preceded the enactment of the Copyright Act of 1909; innovations
in copying techniques gave rise to the statutory exemption for library
copying embodied in § 108 of the 1976 revision of the copyright law; the
development of the technology that made it possible to retransmit television
programs by cable or by microwave systems, see Fortnightly Corp. v.
United Artists Television, Inc., 392 U.S. 390 (1968), and Teleprompter
Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974),
prompted the enactment of the complex provisions set forth in 17 U. S.
C. § 111(d)(2)(B) and § 111(d)(5) after years of detailed congressional
study, see Eastern Microwave, Inc. v. Doubleday Sports, Inc., 691
F.2d 125, 129 (CA2 1982).
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By enacting the Sound Recording Amendment of 1971, 85 Stat. 391, Congress
also provided the solution to the "record piracy" problems that had been
created by the development of the audio tape recorder. Sony argues
that the legislative history of that Act, see especially H. R. Rep. No.
92-487, p. 7 (1971), indicates that Congress did not intend to prohibit
the private home use of either audio or video tape recording equipment.
In view of our disposition of the contributory infringement issue,
we express no opinion on that question.
3. [Court's footnote 16] In this regard,
we reject respondents' attempt to cast this action as comparable to a
class action because of the positions taken by amici with copyright interests
and their attempt to treat the statements made by amici as evidence in
this case. The stated desires of amici concerning the outcome of
this or any litigation are no substitute for a class action, are not evidence
in the case, and do not influence our decision; we examine an amicus curiae
brief solely for whatever aid it provides in analyzing the legal questions
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We note the parties' statements that the questions of Sony's liability
under the "doctrines" of "direct infringement" and "vicarious liability"
are not nominally before this Court. We also observe, however, that reasoned
analysis of respondents' unprecedented contributory infringement claim
necessarily entails consideration of arguments and case law which may
also be forwarded under the other labels, and indeed the parties to a
large extent rely upon such arguments and authority in support of their
respective positions on the issue of contributory infringement.
4. [Court's footnote 17] As the District
Court correctly observed, however, "the lines between direct infringement,
contributory infringement and vicarious liability are not clearly drawn
. . . ." The lack of clarity in this area may, in part, be attributable
to the fact that an infringer is not merely one who uses a work without
authorization by the copyright owner, but also one who authorizes the
use of a copyrighted work without actual authority from the copyright
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5. [Court's footnote18] The so-called
"dance hall cases," Famous Music Corp. v. Bay State Harness Horse Racing
& Breeding Assn., Inc., 554 F.2d 1213 (1st Cir. 1977) (racetrack retained
infringer to supply music to paying customers); KECA Music, Inc. v. Dingus
McGee's Co., 432 F.Supp. 72 (W.D. Mo. 1977) (cocktail lounge hired musicians
to supply music to paying customers); Dreamland Ball Room, Inc. v. Shapiro,
Bernstein & Co., 36 F.2d 354 (7th Cir. 1929) (dance hall hired orchestra
to supply music to paying customers), are often contrasted with the so-called
landlord-tenant cases, in which landlords who leased premises to a direct
infringer for a fixed rental and did not participate directly in any infringing
activity were found not to be liable for contributory infringement. .
In Shapiro, Bernstein & Co. v. H. L. Green Co., 316 F.2d 304 (2d Cir.
1963), the owner of 23 chainstores retained the direct infringer to run
its record departments. The relationship was structured as a licensing
arrangement, so that the defendant bore none of the business risk of running
the department. Instead, it received 10% or 12% of the direct infringer's
gross receipts. The Court of Appeals concluded:
"[The dance-hall cases] and this one lie closer on the spectrum to the
employer-employee model, than to the landlord-tenant model. . . . [On]
the particular facts before us, . . . Green's relationship to its infringing
licensee, as well as its strong concern for the financial success of the
phonograph record concession, renders it liable for the unauthorized sales
of the 'bootleg' records.
* * *
". . . [The] imposition of vicarious liability in the case before us cannot
be deemed unduly harsh or unfair. Green has the power to police carefully
the conduct of its concessionaire . . .; our judgment will simply encourage
it to do so, thus placing responsibility where it can and should be effectively
Id., at 308 [emphasis omitted].
In Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d
1159 (CA2 1971), the direct infringers retained the contributory infringer
to manage their performances. The contributory infringer would contact each
direct infringer, obtain the titles of the musical compositions to be performed,
print the programs, and then sell the programs to its own local organizations
for distribution at the time of the direct infringement. The Court
of Appeals emphasized that the contributory infringer had actual knowledge
that the artists it was managing were performing copyrighted works, was
in a position to police the infringing conduct of the artists, and derived
substantial benefit from the actions of the primary infringers.
* * *
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6. [Court's footnote 19] [Citations omitted.]
The two areas of the law, naturally, are not identical twins, and we exercise
the caution which we have expressed in the past in applying doctrine formulated
in one area to the other. See generally Mazer v. Stein, 347 U.S.
201, 217-218 (1954) . . . .
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We have consistently rejected the proposition that a similar kinship exists
between copyright law and trademark law, and in the process of doing so
have recognized the basic similarities between copyrights and patents.
The Trade-Mark Cases, 100 U.S. 82, 91-92 (1879); see also United Drug
Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918) (trademark right
"has little or no analogy" to copyright or patent) . . . . Given
the fundamental differences between copyright law and trademark law, in
this copyright case we do not look to the standard for contributory infringement
set forth in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456
U.S. 844, 854-855 (1982), which was crafted for application in trademark
cases. There we observed that a manufacturer or distributor could be held
liable to the owner of a trademark if it intentionally induced a merchant
down the chain of distribution to pass off its product as that of the
trademark owner's or if it continued to supply a product which could readily
be passed off to a particular merchant whom it knew was mislabeling the
product with the trademark owner's mark. If Inwood's narrow
standard for contributory trademark infringement governed here, respondents'
claim of contributory infringement would merit little discussion. Sony
certainly does not "intentionally [induce]" its customers to make infringing
uses of respondents' copyrights, nor does it supply its products to identified
individuals known by it to be engaging in continuing infringement of respondents'
7. [Court's footnote 20] Title 35 U. S. C.
§ 271 provides:
"(a) Except as otherwise provided in this title, whoever without authority
makes, uses [offers to sell,] or sells any patented invention, within
the United States [or imports into the United States any patented invention]
during the term of the patent therefor, infringes the patent." [Professor's
note: the bracketed language in this subsection was added by amendment
in 1994, long after this case was decided.]
"(b) Whoever actively induces infringement of a patent shall be liable
as an infringer."
"(c) Whoever sells a component of a patented machine, manufacture, combination
or composition, or a material or apparatus for use in practicing a patented
process, constituting a material part of the invention, knowing the same
to be especially made or especially adapted for use in an infringement
of such patent, and not a staple article or commodity of commerce suitable
for substantial noninfringing use, shall be liable as a contributory infringer."
* * *
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8. [Court's footnote 24] It seems extraordinary
to suggest that the Copyright Act confers upon all copyright owners collectively,
much less the two respondents in this case, the exclusive right to distribute
VTR's [video tape recorders] simply because they may be used to infringe
copyrights. That, however, is the logical implication of their claim.
The request for an injunction below indicates that respondents seek, in
effect, to declare VTR's contraband. Their suggestion in this Court that
a continuing royalty pursuant to a judicially created compulsory license
would be an acceptable remedy merely indicates that respondents, for their
part, would be willing to license their claimed monopoly interest in VTR's
to Sony in return for a royalty.
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