Digital Law Online: Indirect Infringement

Even if you do not directly infringe any of the exclusive rights in copyright, you may be guilty of indirect copyright infringement as either a “contributory infringer” or a “vicarious infringer” if you help somebody else infringe. The two concepts are somewhat similar, and often someone can be both a contributory infringer and a vicarious infringer. Although these concepts are not part of the Copyright Act of 1976, the Supreme Court has borrowed contributory infringement from the patent statute and noted that vicarious liability is common in the law.

II.J.1. Contributory Infringement

Contributory infringement results when somebody knows of the direct infringement of another and substantially participates in that infringement, such as inducing, causing, or materially contributing to the infringing conduct. That substantial participation could take the form of providing a device or service that facilitates the infringement if that device or service has no substantial use other than infringement. In the classic case on contributory infringement, the Supreme Court’s 1984 “Betamax” decision, {FN75: Sony v. Universal City Studios, 464 U.S. 417, 220 USPQ 665 (1984)} the Court held that Sony was not a contributory infringer by selling VCRs because there was a number of uses for the VCR (including time-shifting of a broadcast program for personal use) that would not infringe copyright.

II.J.2. Vicarious Infringement

Vicarious infringement results when there has been a direct infringement and the vicarious infringer is in a position to control the direct infringer and benefits financially from the infringement. In a 1996 Ninth Circuit case, {FN76: Fonovisa Inc. v. Cherry Auction, 76 F.3d 259, 37 USPQ2d 1590 (9th Cir. 1996)} the operator of a flea market where counterfeit recordings were regularly sold was found to be a vicarious infringer because he could have policed the vendors who rented booths from him but didn’t, and he made money from that booth rental as well as from admission fees from the people attending the flea market. The court believed that many of the people who paid those admission fees did so to gain access to the counterfeit recordings. The court also found that the flea market operator was guilty of contributory infringement.

Contributory or vicarious infringement has been a major consideration in cases regarding the use of digital information on the Internet.

[In addition to contributory infringement and vicarious infringement, there is another form of indirect infringement: inducement of infringement. This was more commonly seen in patent law, because it is specifically indicated in the patent statutes (17 U.S.C. 271(b)), but as I noted in my paper "Sony Revisited: A new look at contributory copyright infringement," is also applicable to copyright. This was confirmed in the Supreme Court’s unanimous opinion in MGM v. Grokster, which stated:

For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.

While cases in patent law provide some guidance regarding what might be inducement of infringement, the metes-and-bounds of copyright inducement won’t be known until a few cases are litigated.]