Secondary liability
The examples and perspective in this article may not represent a worldwide view of the subject. (May 2012) |
Secondary liability, or indirect infringement, arises when a party materially contributes to, facilitates, induces, or is otherwise responsible for directly infringing acts carried out by another party. The US has statutorily codified secondary liability rules for
Early case law
Secondary liability in copyright has come about with case-by-case decisions. In other words, there has not been any real or consolidated theory. Furthermore, patent and copyright cases have tended to cross-cite each other. Examples of this are cases such as Kalem Co. v. Harper Brothers[1] (the producer of the movie Ben Hur did not himself infringe, but was responsible for making and commercially distributing the infringing film), Shapiro, Bernstein and Co. v. H.L. Green Co.[2] (a booth in a department store that sold infringing sound recordings and the store was ultimately held liable), and the so-called "dance hall" cases (the operator of an entertainment establishment was held liable because he had effective control of the premises and obtained a direct financial benefit derived from charging entrance fees to the public).[3]
The Copyright Act of 1790 did not provide a formal definition of infringement, stating only that "any person or persons who shall print or publish any manuscript, without the consent and approbation of the author or proprietor thereof... shall be liable to suffer and pay to the said author or proprietor all damages occasioned by such injury." Furthermore, the Copyright Act of 1909 simply provided that any person who "shall infringe the copyright in any work protected under the copyright laws of the United States... shall be liable" for various remedies.
Despite the fact that the Copyright Act of 1909 did not explicitly establish liability for acts committed by a party different than the direct infringer, several cases decided under this Act set forth the guidelines under which a party may be deemed secondarily liable. Examples of the gradual recognition by courts of copyright liability extending to those who contribute to or vicariously profit from the infringing acts of others are Fishel v. Lueckel[4] and Kalem Co. v. Harper Brothers.[1][5]
Types
There are generally two kinds of secondary
Some academics have classified the active inducement adopted in MGM Studios, Inc. v. Grokster, Ltd. as a new type of secondary liability because it is based on express acts of inducement and not on a mere failure to act;[6] furthermore, the specific intent to bring about infringing acts is another important factor in this analysis.
Vicarious liability
One of the theories widely accepted as a basis for liability in copyright infringement cases is vicarious liability.[7] The concept of vicarious liability was developed in the Second Circuit as an extension of the
Beyond the master-servant context, however, courts have extended liability to those who profit from infringing activity when an enterprise has the right and ability to prevent the infringement. Under Dreamland Ball Room v. Shapiro, Bernstein & Co.,[3]
"[T]he owner of a dance hall at whose place copyrighted musical compositions are played in violation of the rights of the copyright holder is liable, if the playing be for the profit of the proprietor of the dance hall. And this is so even though the orchestra be employed under a contract that would ordinarily make it an independent contractor."
By contrast, courts did not extend liability to landlords who leased premises to a direct infringer for a fixed rental and did not participate directly in organizing or soliciting the infringing activity. For example, Deutsch v. Arnold,[9] Fonovisa v. Cherry Auction[10] (extending liability to the operator of a swap meet who repeatedly leased booth space to concessionaires selling infringing tapes).[11]
The landmark case on vicarious liability for sales of counterfeit recordings is Shapiro, Bernstein and Co. v. H.L. Green Co.[2] In Shapiro, the court was faced with a copyright infringement suit against the owner of a chain of department stores where a concessionaire was selling counterfeit recordings. The Shapiro court ultimately imposed liability, even though the defendant was unaware of the infringement, reasoning that the store proprietor had the power to cease the conduct of the concessionaire, and because the proprietor obtained direct financial benefit from the infringement.
Contributory liability
Contributory liability or
Contributory liability is rooted in the
Not long after the passage of the
Liability of internet service providers (ISPs)
Regarding internet communications, sometimes the most promising remedy is only available from the standpoint of the internet intermediary (e.g. delete the post, take down the link). In fact, the internet is a special field for secondary liability, because the open architecture of the internet facilitates many communications and users need intermediaries in order to access and contact each other's services.
The question of whether Internet service providers (ISPs) should be held liable for the actions of network users is unresolved.[14] As to copyright, however, ISPs remain liable, in all territories, as primary, direct infringers of copyright if, and only to the extent, that they are direct actors and make copies on behalf of their customers, so the issue of additional secondary liability is less significant in a case where direct liability is alleged. An ISP's direct liability arises from the ISP's own actions, not the actions of another party.
Recent statutes in the United States (Digital Millennium Copyright Act of 1998) and the European Union have provided significant, though not total, immunity from primary copyright liability that, in the absence of those statutes, would exist for ISPs.[15]
The
In order to be eligible for the safe harbor provisions, it is required that the service provider has adopted and reasonably implemented a policy to terminate the accounts of repetitive infringers. In addition, ISPs must accommodate and not interfere with standard technical measures used by copyright owners to protect their works.[16]
As to trademarks, in the absence of statutory guidance, courts have extended both types of secondary liability (vicarious and contributory) to third parties, including in some circumstances ISPs. Here, too, the question whether ISPs will be held liable for the acts of their infringing customers will depend on the degree of the ISP's knowledge and involvement in the specific infringing activity.[17]
In the future
Future treatment of secondary liability by US courts is uncertain. Some cases and commentators have argued for broadening secondary liability through cost–benefit analysis, multi-factor balancing tests, or simply basing it on technical designs or business models.[18]
The proposed EU directive would make aiding and abetting infringement a basis for liability. In light of the above, it is permissible to conclude that there is no consensus on this issue.
See also
- Hotfile – a case where both vicarious and contributory liability were considered
- In re Aimster Copyright Litigation
References
- ^ a b Kalem Co. v. Harper Brothers, 222 U.S. 55 (1911).
- ^ a b Shapiro, Bernstein and Co. v. H.L. Green Co., 316 F.2d 304 (1963).
- ^ a b Dreamland Ball Room v. Shapiro, Bernstein & Co., 36 F. 2d 354 (7th Cir. 1929).
- ^ Fishel v. Lueckel, 53 F. 499 (1892).
- ^ Robert P. Merges, Peter S. Menell, and Mark A. Lemley (2007). Intellectual Property in the New Technological Era, p. 572, Aspen Publishers, New York.
- ^ Pamela Samuelson,Three Reactions to MGM v. Grokster Archived 2010-07-06 at the Wayback Machine, 13 Mich. Telecomm. Tech. L. Rev. (2006).
- ^ Robert A. Gorman and Jane C. Ginsburg (2009). Copyright Cases and Materials, Foundation Press, New York.
- ^ M. Witmark & Sons v. Calloway, 22 F. 2d 412, 415 (1927).
- ^ Deutsch v. Arnold, 98 F. 2d 686 (1938).
- ^ Fonovisa v. Cherry Auction, 76 F. 3d 259 (9th Cir. 1996).
- Ruth L. Okediji, and Maureen A. O'Rourke(2006). Copyright in a Global Information Economy, p. 481, Aspen Publishers, New York.
- ^ Gershwin Publ’g Corp. v. Columbia Artists Mgmt., 443 F. 2d 1159 (2d Cir. 1971).
- ^ a b Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 Archived 2008-09-19 at the Wayback Machine (1984).
- ^ See K. A. Taipale, Secondary Liability on the Internet: Towards a Performative Standard for Constitutive Responsibility, Center for Advanced Studies Working Paper No. 04-2003 (2003).
- ^ See D. Panethiere,The Basis for Copyright Infringement Liability: The Law in Common Law Jurisdictions, 13 European Intellectual Property Review 26 (1998).
- ^ a b 17 U.S.C. §512
- ^ See Jane Coleman, Secondary Trademark Infringement: A Short Treatise on Contributory and Vicarious Infringement in Trademark Archived 2012-09-13 at archive.today (Revised, Sept. 2010).
- ^ Pamela Samuelson, Preliminary Thoughts on Copyright Reform, Utah Law Review (2007); UC Berkeley Public Law Research Paper No. 1002676.