Petition for Writ of Certiorari — Cox Communications, Inc., et al., Petitioners v. Sony Music Entertainment, et al.

Supreme Court briefAug 15, 2024

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IN THE

Supreme Court of the United States

________________

COX COMMUNICATIONS, INC. and COXCOM, LLC,

Petitioners,

SONY MUSIC ENTERTAINMENT, ET AL.,

Respondents.

________________

ON PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

________________

PETITION FOR A WRIT OF CERTIORARI

________________

Edward Williams

James Anglin Flynn

Abigail Colella

Kamilyn Y. Choi

ORRICK, HERRINGTON &

SUTCLIFFE LLP

2100 Pennsylvania Ave. NW

Washington, DC 20037

Roman Martinez

Peter E. Davis

LATHAM & WATKINS LLP

555 Eleventh Street, NW

Washington, DC 20004

E. Joshua Rosenkranz

Counsel of Record

Christopher J. Cariello

ORRICK, HERRINGTON &

SUTCLIFFE LLP

51 West 52nd Street

New York, NY 10019

(212) 506-5000

jrosenkranz@orrick.com

Counsel for Petitioners

QUESTIONS PRESENTED

1. This Court has held that a business commits

contributory copyright infringement when it “distributes a device with the object of promoting its use

to infringe copyright, as shown by clear expression or

other affirmative steps to foster infringement.” Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,

545 U.S. 913, 919 (2005). The courts of appeals have

split three ways over the scope of that ruling, developing differing standards for when it is appropriate

to hold an online service provider secondarily liable

for copyright infringement committed by users.

Did the Fourth Circuit err in holding that a service provider can be held liable for “materially contributing” to copyright infringement merely because

it knew that people were using certain accounts to

infringe and did not terminate access, without proof

that the service provider affirmatively fostered infringement or otherwise intended to promote it?

2. Generally, a defendant cannot be held liable

as a willful violator of the law—and subject to increased penalties—without proof that it knew or

recklessly disregarded a high risk that its own conduct was illegal. In conflict with the Eighth Circuit,

the Fourth Circuit upheld an instruction allowing

the jury to find willfulness if Cox knew its subscribers’ conduct was illegal—without proof Cox knew its

own conduct in not terminating them was illegal.

Did the Fourth Circuit err in holding that mere

knowledge of another’s direct infringement suffices

to find willfulness under 17 U.S.C. § 504(c)?

PARTIES TO THE PROCEEDING BELOW

Petitioners were the Defendants-Appellants below. They are Cox Communications, Inc. and CoxCom, LLC.

Respondents include the Plaintiffs-Appellees below. They are Sony Music Entertainment; Arista

Music; Arista Records, LLC; LaFace Records LLC;

Provident Label Group, LLC; Sony Music Entertainment US Latin LLC; Volcano Entertainment III,

LLC; Zomba Recordings LLC; Sony/ATV Music Publishing LLC; EMI AI Gallico Music Corp.; EMI Algee

Music Corp.; EMI April Music Inc.; EMI Blackwood

Music Inc.; Colgems-EMI Music Inc.; EMI Consortium Music Publishing Inc., d/b/a EMI Full Keel Music; EMI Consortium Songs, Inc., d/b/a EMI

Longitude Music; EMI Feist Catalog Inc.; EMI Miller Catalog Inc.; EMI Mills Music, Inc.; EMI Unart

Catalog Inc.; EMI U Catalog Inc.; Jobete Music Co.

Inc.; Stone Agate Music; Screen Gems-EMI Music

Inc.; Stone Diamond Music Corp.; Atlantic Recording

Corporation; Bad Boy Records LLC; Elektra Entertainment Group Inc.; Fueled By Ramen LLC; Roadrunner Records; Inc.; Warner-Tamerlane Publishing

Corp.; WB Music Corp.; Unichappell Music Inc.;

Rightsong Music Inc.; Cotillion Music, Inc.; Intersong U.S.A., Inc.; UMG Recordings, Inc.; Capitol

Records, LLC; Universal Music Corp.; Universal

Music – MGB NA LLC; Universal Music Publishing

Inc.; Universal Music Publishing AB; Universal Music Publishing Limited; Universal Music Publishing

MGB Limited.; Universal Music – Z Tunes LLC;

Universal/Island Music Limited; Universal/MCA

Music Publishing Pty. Limited; Music Corporation of

iii

America, Inc., d/b/a Universal Music Corp.; Polygram Publishing, Inc.; Songs of Universal, Inc.;

Warner Records, Inc., f/k/a W.B.M. Music Corp.;

Warner Chappell Music, Inc., f/k/a Warner/Chappell

Music, Inc.; W.C.M. Music Corp., f/k/a W.B.M. Music

Corp.

CORPORATE DISCLOSURE STATEMENT

Cox Communications, Incorporated, is the parent corporation of CoxCom, LLC. Cox Communications, Incorporated, is owned by Cox Enterprises,

Inc. Neither Cox Communications, Incorporated, nor

CoxCom, LLC, is a publicly held corporation, and no

publicly held corporation owns 10% or more of either

of them.

RELATED PROCEEDINGS

Sony Music Entertainment v. Cox Communications,

Inc., No. 1:18-cv-950 (E.D. Va.) (judgment issued

Jan. 12, 2021)

Sony Music Entertainment v. Cox Communications,

Inc., No. 21-1168 (4th Cir.) (opinion and judgment

issued Feb. 20, 2024)

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ...................................... i

PARTIES TO THE PROCEEDING BELOW ........... ii

CORPORATE DISCLOSURE STATEMENT ......... iv

RELATED PROCEEDINGS ......................................v

TABLE OF AUTHORITIES .................................... ix

INTRODUCTION ..................................................... 1

OPINIONS AND ORDERS BELOW ........................ 4

JURISDICTION ........................................................ 4

STATUTORY PROVISIONS INVOLVED ............... 5

STATEMENT OF THE CASE .................................. 5

This Court’s Previous Rulings On

Secondary Infringement ............................... 5

The Music Industry Seeks To Hold ISPs

Liable For Copyright Infringement By

Users .............................................................. 7

BMG Sues Cox, And The Fourth Circuit

Adopts Unprecedented ContributoryLiability And Willfulness Standards .......... 10

Numerous Music Companies Sue Cox

Under BMG’s Legal Standards And

Win A $1 Billion Verdict ............................. 12

The Fourth Circuit Adopts An

Unprecedented Material-Contribution

Standard for Contributory

Infringement ............................................... 13

vii

REASONS FOR GRANTING THE WRIT.............. 15

The Fourth Circuit’s MaterialContribution Standard Warrants Review. ...... 15

A. The courts of appeals have adopted

three conflicting material-contribution

standards. .................................................... 16

B. The Fourth Circuit’s approach conflicts

with Grokster and Twitter. ......................... 23

II. The Fourth Circuit’s Willfulness Standard

Warrants Review. ............................................. 29

A. The Eighth and Fourth Circuits have

adopted conflicting willfulness

standards in secondary-infringement

cases. ............................................................ 30

B. The Fourth Circuit’s willfulness

standard is wrong. ...................................... 32

III. The Questions Presented Are Important

And Recurring. ................................................. 34

IV. This Case Is An Ideal Vehicle To Resolve

The Questions Presented. ................................ 39

CONCLUSION ........................................................ 40

APPENDIX A

Opinion of the Fourth

Circuit (Feb. 20, 2024) ............ 1a

APPENDIX B

Judgment of the Eastern

District of Virginia (Jan.

12, 2021) ................................ 39a

viii

APPENDIX C

Memorandum Opinion &

Order of the Eastern

District of Virginia (June

2, 2020) .................................. 40a

APPENDIX D

Amended Memorandum

Opinion and Order of the

Eastern District of

Virginia

(Nov. 27, 2019) .....................143a

APPENDIX E

Order denying rehearing

(Mar. 19, 2024) .....................179a

TABLE OF AUTHORITIES

Page(s)

Cases

A&M Records, Inc. v. Napster, Inc.,

239 F.3d 1004 (9th Cir. 2001)..............................20

In re Aimster Copyright Litig.,

334 F.3d 643 (7th Cir. 2003)................................23

Air Line Pilots Ass’n, Int’l v. Trans

World Airlines, Inc.,

713 F.2d 940 (2d Cir. 1983) .................................33

ALS Scan, Inc. v. Steadfast Networks, LLC,

819 F. App’x 522 (9th Cir. 2020) .........................38

BMG Rights Mgmt. (US) LLC v. Altice

USA, Inc.,

No. 22-cv-471, 2023 WL 3436089

(E.D. Tex. May 12, 2023) .....................................37

BMG Rts. Mgmt. (US) LLC v. Cox

Commc’ns, Inc.,

881 F.3d 293 (4th Cir. 2018)........ 11, 12, 23, 31, 39

Bodyguard Prods., Inc. v. RCN Telecom

Servs., LLC,

No. 21-cv-15310, 2022 WL 6750322

(D.N.J. Oct. 11, 2022) ..........................................37

Capitol Records, Inc. v. MP3tunes, LLC,

821 F. Supp. 2d 627 (S.D.N.Y. 2011) ..................38

Capitol Records, LLC v. Vimeo, Inc.,

No. 21-2949 (2d Cir.)............................................38

Citizens United v. FEC,

558 U.S. 310 (2010)................................................7

Cmty. for Creative Non-Violence v. Reid,

490 U.S. 730 (1989)..............................................36

Concord Music Grp., Inc., v Anthropic PBC,

No. 23-cv-01092 (M.D. Tenn.)..............................38

Doe v. GTE Corp.,

347 F.3d 655 (7th Cir. 2003)................................28

EMI Christian Music Grp., Inc. v.

MP3tunes, LLC,

844 F.3d 79 (2d Cir. 2016) .............................17, 23

Flava Works, Inc. v. Gunter,

689 F.3d 754 (7th Cir. 2012)..........................22, 23

In re Frontier Commc’ns Corp.,

658 B.R. 277 (Bankr. S.D.N.Y. 2024) ..................37

Gershwin Publ’g Corp. v. Columbia

Artists Mgmt., Inc.,

443 F.2d 1159 (2d Cir. 1971) ................. 5, 6, 16, 33

Global-Tech Appliances, Inc. v. SEB S.A.,

563 U.S. 754 (2011)..............................................23

Greer v. Moon,

83 F.4th 1283 (10th Cir. 2023) ......................18, 19

Hunley v. Instagram, LLC,

73 F.4th 1060 (9th Cir. 2023) ..............................38

Matthew Bender & Co. v. West Publ’g Co.,

158 F.3d 693 (2d Cir. 1998) .................................18

MCA Television Ltd. v. Feltner,

89 F.3d 766 (11th Cir. 1996)................................31

McLaughlin v. Richland Shoe Co.,

486 U.S. 128 (1988)..............................................32

Metro-Goldwyn-Mayer Studios, Inc. v.

Grokster, Ltd.,

545 U.S. 913 (2005)....... 2, 3, 5, 6, 7, 14, 15, 16, 17,

18, 21, 24, 25, 26

N.Y. Times Co. v. Microsoft Corp.,

No. 23-cv-11195 (S.D.N.Y.) ..................................38

Packingham v. North Carolina,

582 U.S. 98 (2017)..................................................7

Parker v. Google, Inc.,

242 F. App’x 833 (3d Cir. 2007) ...........................38

Perfect 10, Inc. v. Amazon.com, Inc.,

508 F.3d 1146 (9th Cir. 2007)..............................20

Perfect 10, Inc. v. Giganews, Inc.,

847 F.3d 657 (9th Cir. 2017)................................20

Perfect 10, Inc. v. Visa Int’l Serv. Ass’n,

494 F.3d 788 (9th Cir. 2007)................................38

PSINet, Inc. v. Chapman,

317 F.3d 413 (4th Cir. 2003)................................36

RCA/Ariola Int’l, Inc. v. Thomas &

Grayston Co.,

845 F.2d 773 (8th Cir. 1988)..........................30, 31

Religious Tech. Ctr. v. Netcom On-Line

Commc’n Servs., Inc.,

907 F. Supp. 1361 (N.D. Cal. 1995).....................20

Reno v. ACLU,

521 U.S. 844 (1997)................................................7

xii

Rosemond v. United States,

572 U.S. 65 (2014)................................................28

Routt v. Amazon.com, Inc.,

584 F. App’x 713 (9th Cir. 2014) .........................38

Safeco Ins. Co. of Am. v. Burr,

551 U.S. 47 (2007)................................................32

Sony Corp. of Am. v. Universal City

Studios, Inc.

464 U.S. 417 (1984)........................ 6, 18, 22, 24, 25

Trans World Airlines, Inc. v. Thurston,

469 U.S. 111 (1985)..............................................33

Twitter, Inc. v. Taamneh,

598 U.S. 471 (2023).................................. 24, 27, 28

UMG Recordings, Inc. v. Grande

Commc’ns Networks, L.L.C.,

No. 23-50162 (5th Cir.) ........................................37

UMG Recordings, Inc. v. RCN Telecom

Servs., LLC,

No. 19-cv-17272, 2020 WL 5204067

(D.N.J. Aug. 31, 2020) .........................................37

UMG Recordings, Inc. v. Verizon

Commc’ns Inc.,

No. 24-cv-5285 (S.D.N.Y.) ....................................37

Venegas-Hernández v. ACEMLA,

424 F.3d 50 (1st Cir. 2005) ..................................23

VHT, Inc. v. Zillow Grp., Inc.,

918 F.3d 723 (9th Cir. 2019)..........................21, 38

Warner Records, Inc. v. Altice USA, Inc.,

No. 23-cv-576 (E.D. Tex.) .....................................37

xiii

Wooden v. United States,

595 U.S. 360 (2022)..............................................33

Zomba Enters., Inc. v. Panorama

Records, Inc.,

491 F.3d 574 (6th Cir. 2007)................................31

Statutes

17 U.S.C. § 301(a)......................................................36

17 U.S.C. § 501 ............................................................5

17 U.S.C. § 504(c) ........................................................3

17 U.S.C. § 504(c)(1)........................................ 5, 13, 29

17 U.S.C. § 504(c)(2)........................................ 5, 13, 29

17 U.S.C. § 512(i)(1)(A) .............................................11

17 U.S.C. § 512(a)-(d) ..................................................8

17 U.S.C. § 512(l) ........................................................8

28 U.S.C. § 1254(1)......................................................4

Other Authorities

3 Nimmer on Copyright § 12.04[A][3]

(2024) ..............................................................22, 33

3 Nimmer on Copyright § 14.04[B][3]

(1987) ....................................................................31

6 Patry on Copyright § 21:41 ....................................22

Mark Bartholomew & Patrick F.

McArdle, Causing Infringement, 64

Vand. L. Rev. 675 (2011) .....................................22

Black’s Law Dictionary (12th ed. 2024) ...................32

S. Rep. No. 105-190 (1998)..........................................8

xiv

Alfred C. Yen, Torts and the

Construction of Inducement and

Contributory Liability in Amazon

and Visa, 32 Colum. J.L. & Arts 513

(2009) ....................................................................22

INTRODUCTION

This case is about who bears responsibility for

Circuit gave a staggering answer: whoever provides

the internet connection used to commit it. At the

music industry’s urging, the Fourth Circuit held that

Petitioner Cox Communications—which provides internet service to millions of homes and businesses—

must either terminate internet connections previously used for infringement or else face liability for any

future infringement. In doing so, the court installed

the most draconian secondary-liability regime in the

country, one that departs from three other circuits,

defies this Court’s precedents, and threatens mass

disruption across the internet. This Court’s review is

urgently needed.

According to the music industry’s liability theory, once an online service provider has knowledge of

at least two instances of infringement at a subscriber’s IP address, the provider is secondarily liable for

future infringement at that IP address unless it terminates the connection. The industry claims that

failing to throw the home or business off the internet

is a “material contribution” to likely future infringement. The service provider can be liable even if

it did nothing to encourage infringement. Even if it

gains nothing from infringement. Even if scores of

other, entirely innocent people use the same connection. Even if the service is essential for a universe of

legitimate uses. Even if the service provider went to

great lengths to try to deter infringing conduct—and

largely succeeded. A service provider’s only reliable

way of avoiding liability is to terminate service en-

tirely. If it does not, and that account is again used

to infringe, the service provider is liable.

That is just what happened here. Cox’s millions

of subscribers rely on the internet for everything

from video conferences to banking, civic engagement

to cat videos, robot vacuums to doorbell cams. Less

than 1% of Cox’s subscribers have also used the service to swap infringing music files; and Cox’s antiinfringement measures got 95% of that less than 1%

to stop. Cox derives no profit from infringement, as

the Fourth Circuit held. Yet Cox was found liable for

all the infringement anonymous users committed

through 57,000 of its internet connections, just because the music companies had previously sent Cox

automated notices alleging that these connections

were used to infringe. The only way Cox could have

avoided liability was by terminating those 57,000 internet connections. That means terminating entire

households, coffee shops, hospitals, universities, and

even regional internet service providers (ISPs)—the

internet lifeline for tens of thousands of homes and

businesses—merely because some unidentified person was previously alleged to have used the connection to infringe.

The Fourth Circuit’s rule misinterprets this

Court’s decision in Metro-Goldwyn-Mayer Studios,

Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), and creates a three-way circuit split on the proper threshold

for material-contribution liability. Under Grokster,

contributory liability requires “purposeful” misconduct, such as distributing a device “with the object of

promoting its use to infringe copyright, as shown by

clear expression or other affirmative steps … to fos-

ter infringement.” 545 U.S. at 937. The Second and

Tenth Circuits adhere to Grokster in requiring affirmative, culpable conduct. The Ninth adopts a

middle-ground position demanding only that service

providers take reasonable—not nuclear—measures

to prevent infringement. Only the Fourth diverges

entirely.

The Fourth Circuit compounded its error—and

created another circuit split—with a ruling regarding the standard for willful infringement under 17

U.S.C. § 504(c). Departing from the Eighth Circuit

and longstanding common-law principles, the Fourth

Circuit held that a secondary infringer can be held

willful—and subject to a five-fold enhancement of

statutory damages—if it provided service with

knowledge of the direct infringer’s wrongful conduct,

even if it reasonably believed that its own conduct

was entirely lawful. That ruling means that every

contributory infringer by definition acts willfully,

thereby automatically exposing accused contributory

infringers to statutory damages of $150,000 per work

and rendering the statute’s two-tiered damages

structure meaningless. Here, the Fourth Circuit’s

rule means Cox is potentially liable for up to $1.5

billion in damages even if Cox reasonably believed

its anti-infringement efforts satisfied the law.

Each of the court’s errors independently merits

review. Together, these errors form a regime that

requires urgent rebuke. The stakes are immense.

The music industry has advanced its terminate-orelse theory in ten cases against major ISPs, with no

signs of relent, while other plaintiffs have adapted

the theory to target all sorts of other service provid-

ers. The question of who is responsible for online

businesses, and users on a pervasive scale. This

Court should grant certiorari to prevent these cases

from creating confusion, disruption, and chaos on the

internet. Innovation, privacy, and competition depend on it.

OPINIONS AND ORDERS BELOW

The opinion of the United States Court of Appeals for the Fourth Circuit is published at 93 F.4th

222 and reproduced at Pet. App. 1a-38a.

The district court’s memorandum opinion denying Defendants’ Rule 50 and Rule 59 post-trial motions is published at 464 F. Supp. 3d 795 and

reproduced at Pet. App. 40a-142a. The district

court’s memorandum opinion denying Defendants’

motion for summary judgment and granting in part

Plaintiffs’ motion for summary judgment on the

knowledge prong of contributory infringement is

published at 426 F. Supp. 3d 217 and reproduced at

Pet. App. 143a-178a.

JURISDICTION

The Court of Appeals entered judgment on February 20, 2024. A timely petition for rehearing was

denied on March 19, 2024. Pet. App. 179a. On June

3, 2024, this Court extended the time to file a petition for a writ of certiorari to August 16, 2024. This

Court has jurisdiction under 28 U.S.C. § 1254(1).

STATUTORY PROVISIONS INVOLVED

17 U.S.C. § 501 imposes liability for direct infringement of copyright. No provision of the Copyright Act expressly provides for secondary liability.

17 U.S.C. § 504(c)(1) provides that a “copyright

owner may elect … to recover, instead of actual

damages and profits, an award of statutory damages

… in a sum of not less than $750 or more than

$30,000 [per an infringed work].”

17 U.S.C. § 504(c)(2) states that “where … infringement was committed willfully, the court in its

discretion may increase the award of statutory damages to a sum of not more than $150,000 [per an infringed work].”

STATEMENT OF THE CASE

This Court’s Previous Rulings On Secondary Infringement

Courts have developed two doctrines—vicarious

and contributory liability—that impose liability for

someone else’s copyright infringement. Grokster, 545

U.S. at 930-31. Vicarious infringement, “predicated

upon the agency doctrine of respondeat superior,”

provides that “one may be vicariously liable if he has

the right and ability to supervise the infringing activity and also has a direct financial interest in such

activities.” Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).

Contributory copyright infringement, based on common-law aiding-and-abetting liability, applies to

“one who, with knowledge of the infringing activity,

induces, causes, or materially contributes” to it. Id.

Every 20 years, it seems, this Court is called upon to apply these secondary-liability doctrines to

modern technology that can be used to infringe copyrights. First was Sony Corp. of America v. Universal

City Studios, Inc. 464 U.S. 417, 442 (1984), a case

about the Betamax videocassette recorder. Weighing

the “difficult balance between the interests of authors” and “society’s competing interest in the free

flow of ideas, information, and commerce,” this Court

held that there can be no contributory copyrightinfringement liability for selling a product that is

“widely used for legitimate, unobjectionable purposes” but also can be used to infringe. Id. at 429, 442.

Sony made the world safe for future technology, including digital video recorders, word processors,

cloud computing, and many other multi-use devices

and services.

Twenty years after Sony, this Court revisited

contributory liability in the context of a nascent internet. At issue was Grokster, a file-transfer platform promoted specifically to encourage music

piracy. Grokster, 545 U.S. at 919-20. The Court reaffirmed Sony’s noninfringing-use rule but explained

that a defendant can nevertheless be held liable

where it “distributes a device with the object of promoting its use to infringe copyright, as shown by

clear expression or other affirmative steps … to foster

infringement.” Id. at 936-37 (emphasis added). The

Court reaffirmed that “mere[] … failure to take affirmative steps to prevent infringement” is insuffi-

cient to impose liability. Id. at 939 n.12 (emphasis

added).

Now, 20 years later, courts are wrestling with

another variation on the theme: secondary liability

applied not to a file-transfer platform specifically

marketed for piracy (as in Grokster) but rather to the

internet itself. Specifically, this case concerns the

appropriate standard for a “material contribution”

claim—a label used in Gershwin’s canonical contributory-liability formulation quoted above, but not discussed in Grokster. This omission has led to debate

over whether and how Grokster’s insistence on affirmative, culpable conduct applies to a materialcontribution claim against a provider of general internet services.

The Music Industry Seeks To Hold ISPs Liable

For Copyright Infringement By Users

The internet has become one of “the most important places” in modern American life. Packingham v. North Carolina, 582 U.S. 98, 104 (2017). It

started in the 1990s as “a vast library” and “a

sprawling mall offering goods and services.” Reno v.

ACLU, 521 U.S. 844, 853 (1997). By the early 2000s,

it was a center of civic engagement, where Americans could learn “about political candidates and issues,” Citizens United v. FEC, 558 U.S. 310, 364

(2010), “petition their elected representatives,” and

connect “with their friends and neighbors,” Packingham, 582 U.S. at 104. Today, people go to school,

earn their livelihoods, and manage nearly every detail of day-to-day life through the internet.

But the internet can also be used for ill. Copyright piracy is one example. As Congress recognized

at the dawn of the internet age, the internet lets users “cop[y] and distribute[] [digital works] worldwide

virtually instantaneously”—which makes infringement easy and enforcement hard. S. Rep. No. 105190, at 8 (1998). Congress also appreciated the basic

tort problems the internet would pose, with numerous technological intermediaries situated between a

wrongdoer and an injured party. But it declined to

resolve these questions, instead encouraging courts

to adapt preexisting copyright doctrine to new factual configurations. Id. at 19. Congress’s only intervention was the Digital Millennium Copyright Act of

1998 (DMCA), id., which afforded certain service

providers a safe harbor from damages liability, 17

U.S.C. § 512(a)-(d), while expressly leaving any other

“defense” to liability untouched, id. § 512(l).

For its part, the music industry experimented

with legal strategies to confront piracy. In the early

days, the industry went after individual infringing

users. CA App. 299-300. But suing “students, …

children, and grandmothers” was unpopular and ineffective at scale. CA App. 300, 339. The industry also pursued online services that were specifically

designed to facilitate piracy—an approach that came

to a successful head when this Court decided Grokster. CA App. 305. But piracy platforms evolved, too,

in ways that made them a less promising source of

damages. CA App. 305, 316, 338-39.

So, around 2008, the industry shifted strategies.

It decided to target the source of internet access itself: the ISPs that provide the cables, machinery,

and infrastructure needed to send and receive any

data on the internet. The industry hires services

that use bots to monitor file-sharing networks. CA

App. 356. When a bot detects a copyrighted work,

the service automatically sends notices to ISPs alleging that someone at a particular IP address infringed. Id. The music industry began deluging ISPs

with millions of notices annually.

ISPs, however, are much like telephone companies: They have limited ability to police how customers use the communications infrastructure they

provide. ISPs cannot block access to specific sites,

prevent download of particular content, or monitor

what their users are doing online—and, if they did,

the privacy protests would be deafening. CA App.

422-23, 519-20, 530. They have no way of verifying

whether a bot-generated notice is accurate. CA App.

535-38. And no one can reliably identify the actual

individual who used a particular internet connection

for an illegal download. The ISP could connect the IP

address to a particular subscriber’s account, but the

subscriber in question might be a university or a

conference center with thousands of individual users

on its network, or a grandmother who unwittingly

left her internet connection open to the public. Thus,

the subscriber is often not the infringer and may not

even know about the infringement.

Nevertheless, the music industry asserted that

once an ISP receives allegations that a subscriber’s

connection has been used to infringe, it is “obligat[ed] to enforce the law” by terminating the subscriber’s internet connection. CA App. 302, 1783-84,

1787.

BMG Sues Cox, And The Fourth Circuit Adopts

Unprecedented

Contributory-Liability

And

Willfulness Standards

Cox, which provides internet access to 6 million

homes and businesses in 18 states, was the music

industry’s first target in its litigation campaign

against numerous ISPs. Cox’s subscribers include

everything from individual households to regional

ISPs (which rent Cox’s infrastructure to provide internet access to an entire region, through a single

Cox connection). Only 57,000 subscribers, or less

than 1% of Cox’s subscribers, are accused of infringement, CA App. 264; so over 99% of Cox subscribers use their broadband services exclusively for

noninfringing purposes.

During the period involved in this case, 20132014, the industry buried Cox in over a million notices a year alleging infringement on Cox internet

connections. CA App. 506. Each notice alleged that

somebody accessing the internet through a particular IP address infringed a particular copyright.

To address these notices, Cox developed a “graduated response program.” CA App. 437-38; see CA

App. 430, 1064-65. For each robo-notice, Cox would

email a warning to the subscriber. If notices persisted, Cox would escalate with temporary service suspensions requiring subscribers to speak with Cox

investigators to restore service. CA App. 430, 437-38,

1064-65.

For 95% of the 1% of subscribers alleged to infringe—Cox’s graduated-response system worked to

prevent further infringement. CA App. 660, 1735.

The small minority of subscribers who continued to

infringe would face possible termination—a step Cox

deemed appropriate a few dozen times during the

damages period, though there were no “hard-andfast rules.” CA App. 434-35. In practice, the accounts

that continued to rack up notices without termination were regional ISPs, universities, hotels, military

housing, and other business accounts used by hundreds or thousands of individual users—situations

where account termination would be highly impractical and carry disproportionately devastating consequences. CA App. 663-64, 1743.

Cox was first sued for alleged secondary copyright infringement in 2014 by music publisher BMG

Rights Management. BMG Rts. Mgmt. (US) LLC v.

Cox Commc’ns, Inc., 881 F.3d 293, 298 (4th Cir.

2018). The district court concluded as a threshold issue that Cox’s case-by-case approach to subscriber

termination was not standardized or aggressive

enough to immunize Cox under the DMCA’s safeharbor provision for ISPs with a policy for “terminat[ing] … repeat infringers.” Id. at 300 (quoting 17

U.S.C. § 512(i)(1)(A)). At trial, a jury rejected BMG’s

vicarious-liability claim but found for BMG on its

claim of willful, contributory liability. Id.

The Fourth Circuit overturned the verdict, faulting the district court for failing to instruct the jury

that contributory infringement requires actual

knowledge or willful blindness of a subscriber’s infringement, not mere negligence, and that the plaintiff must prove an ISP knew of the “specific instances

of infringement” for which it was being held secondarily liable. Id. at 311-12.

As to willfulness, however, the Fourth Circuit

endorsed the district court’s approach. Cox challenged a jury instruction that tied willful secondary

infringement to “‘Cox’s knowledge of its subscribers’

[infringement],’ rather than Cox’s knowledge that ‘its

actions constitute an infringement.’” Id. at 312 (quoting Cox) & n.7 (jury instruction). The Fourth Circuit

upheld the instructions, offering the circular explanation that “[c]ontributorily (or vicariously) infringing with knowledge that one’s subscribers are

infringing is consistent with at least reckless disregard for the copyright holder’s rights.” Id. at 313.

The BMG parties settled before retrial or any petition to this Court.

Numerous Music Companies Sue Cox Under

BMG’s Legal Standards And Win A $1 Billion

Verdict

In July 2018, a month before BMG settled, record labels and publishers representing 80% of the

music industry filed this copycat suit against Cox.

CA App. 189-216. Plaintiffs alleged that Cox is vicariously and contributorily liable (under the same “material contribution” theory) for subscribers’

infringement over four file-sharing networks between February 1, 2013, and November 26, 2014. CA

App. 165, 183-87.

On summary judgment, the district court held

that Plaintiffs “established the knowledge element of

contributory liability” by merely showing that Cox

received automated notices alleging infringement.

CA App. 248-50. At trial, Plaintiffs argued that Cox’s

failure to terminate internet access despite that

knowledge established that Cox materially contributed to any later infringement on those accounts.

The jury found Cox liable for both vicarious and contributory infringement. CA App. 822-23.

The jury also found that Cox acted willfully. CA

App. 822-23. The instruction, drawn from BMG, directed the jury to find Cox willful if “Cox had

knowledge that its subscribers’ actions constituted

infringement of plaintiffs’ copyrights,” CA App.

804—the same knowledge requirement used to establish contributory liability and which the court

told the jury it had “no need to consider” because it

was “already … established” on summary judgment

for liability purposes, CA App. 800-01. This willfulness finding raised the ceiling on available statutory

damages from $30,000 to $150,000 per work. 17

U.S.C. § 504(c)(1)-(2); CA App. 803. Cox presented

evidence that Plaintiffs’ actual losses totaled just

$692,000. CA App. 764, 767-69. Plaintiffs nevertheless persuaded the jury to award $1 billion—$99,830

for each of the 10,017 works Plaintiffs claimed were

infringed. CA App. 389, 823.

The Fourth Circuit Adopts An Unprecedented

Material-Contribution Standard for Contributory Infringement

Cox appealed, challenging both the vicarious and

contributory liability verdicts. (A challenge to the

willfulness standard was foreclosed at the panel

stage by BMG.)

The Fourth Circuit agreed with Cox on vicarious

liability. It explained that Cox could not be held vicariously liable because Plaintiffs “failed, as a matter of law, to prove that Cox profits directly from its

subscribers’ copyright infringement.” Pet. App. 12a.

On the contrary, the evidence showed that “subscribers pa[id] [Cox] a flat monthly fee for their internet access … no matter what they d[id] online,”

and there was no indication that any subscriber

chose Cox over a competitor for ease of infringement.

Id.

As to contributory infringement, however, the

Fourth Circuit upheld the jury’s liability verdict. Cox

argued that Plaintiffs failed to show that Cox engaged in the sort of affirmative, culpable conduct required for contributory liability under Grokster. 545

U.S. at 919; Pet. App. 27a. Cox explained that such a

showing would require evidence that Cox took affirmative steps to encourage infringement by its subscribers, not just that it failed to respond to

infringement allegations as aggressively as

rightsholders would prefer.

The Fourth Circuit acknowledged Grokster’s rule

that “‘mere[] ... failure to take affirmative steps to

prevent infringement’ does not establish contributory liability ‘in the absence of other evidence of intent.’” Pet. App. 27a (quoting Grokster, 545 U.S. 939

n.12). It also recognized that knowledge and material contribution were independent elements of contributory

infringement.

Pet.

App.

20a-21a.

Nonetheless, it concluded that Cox “materially contributed” to direct infringement on its network merely by continuing to provide internet service to

subscribers previously targeted by infringement notices. Pet. App. 25a-27a. In short, the Fourth Circuit

held that continuing to “supply[] a product”—even a

general-purpose service like the internet—“with

knowledge that the recipient will use it to infringe

copyrights is exactly the sort of culpable conduct sufficient for contributory infringement.” Pet. App. 27a.

Nevertheless, the Fourth Circuit ordered a new trial

on damages, because there was no way to know

whether the jury would have awarded lower damages without the vicarious-infringement finding. Pet.

App. 29a-30a.

Cox unsuccessfully sought rehearing en banc as

to both the panel’s holding on the materialcontribution prong of the contributory-infringement

analysis and the BMG willfulness standard Cox

could not raise at the panel stage. Pet. App. 180a183a.

REASONS FOR GRANTING THE WRIT

The Fourth Circuit’s Material-Contribution

Standard Warrants Review.

In Grokster, this Court held that contributoryinfringement liability requires “purposeful, culpable

expression and conduct.” 545 U.S. at 937; see also id.

at 919 (requiring proof that defendant has “the object of promoting its use to infringe copyright, as

shown by clear expression or other affirmative steps

taken to foster infringement”). Nevertheless, the

Fourth Circuit held that merely continuing to supply

internet service “with knowledge that the recipient

will use it to infringe” was “sufficient for contributo-

ry infringement.” Pet. App. 27a. That theory not only

vitiates Grokster’s culpability requirement, but also

deepens a circuit split; conflicts with this Court’s

other decisions addressing online liability; and

threatens to require ISPs to terminate internet access en masse under penalty of crushing liability.

A. The courts of appeals have adopted

three conflicting material-contribution

standards.

This Court’s decision in Grokster generated confusion and a three-way circuit split over whether and

under what circumstances an online service provider

“materially contributes” to copyright infringement.

The circuits generally agree on Gershwin’s canonical formulation that “a ‘contributory’ infringer

[is] … ‘one who, with knowledge of the infringing activity, induces, causes or materially contributes to

the infringing conduct of another.’” 443 F.2d at 1162.

But they part ways from there. Adhering to Grokster’s requirement of “purposeful, culpable expression and conduct” for secondary liability, 545 U.S. at

937, the Second and Tenth Circuits hold that mere

knowledge of direct infringement is not enough; rather, the plaintiff must prove that the service provider took affirmative steps to foster infringement.

In the Ninth Circuit, knowledge of infringement is

also insufficient, but the plaintiff does not necessarily need to prove affirmative steps under Grokster; a

service provider can also be held liable if it knew of

infringement and failed to take available, simple

measures to stop it. The Fourth Circuit alone holds

that where a service provider is aware that a partic-

ular subscriber is likely to infringe, the service provider can be held liable merely for failing to terminate them. This disagreement reflects the

widespread confusion among courts and commentators about the meaning of material contribution after

Grokster.

1. The Second and Tenth Circuits do not impose

contributory liability based only on proof that the

service provider knows specific users are infringing

yet failed to terminate them. Rather, when products

have substantial noninfringing uses, secondary liability requires proof of affirmative, culpable conduct.

The Second Circuit’s rule is drawn straight from

Grokster: Contributory liability flows from “distribut[ing] 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.” EMI Christian Music Grp., Inc. v.

MP3tunes, LLC, 844 F.3d 79, 100 (2d Cir. 2016)

(emphases added) (quoting Grokster, 545 U.S. at

919).

In EMI, copyright holders sued MP3tunes’ CEO

for contributory infringement. Id. at 98-101. The

CEO “personally encouraged his employees” to infringe, which, “in turn, aided and abetted infringement by … users” of a website that facilitated and

rewarded users for illegally downloading music. Id.

at 100. Ultimately, the Second Circuit affirmed the

CEO’s contributory liability because “the evidence

showed that [he] acted in a manner intended to promote infringement.” Id.

The Second Circuit applied a rule requiring affirmative, culpable conduct even before Grokster. In

Matthew Bender & Co. v. West Publishing Co., the

court rejected contributory liability because there

was no evidence of conduct encouraging infringement and the products had “substantial, if not overwhelming, noninfringing uses.” 158 F.3d 693, 706-07

(2d Cir. 1998) (citing Sony, 464 U.S. at 438). The

Sony rule, the court explained, aimed “to prevent

their original work to control distribution of … products that might be used incidentally for infringement.” Id. at 707 (emphasis added).

The Tenth Circuit similarly held that the “failure

to take affirmative steps to prevent infringement”

cannot constitute material contribution. Greer v.

Moon, 83 F.4th 1283, 1295 (10th Cir. 2023) (quoting

Grokster, 545 U.S. at 939 n.12). In Greer, the owner

of the Kiwi Farms website orchestrated a harassment campaign against songwriter Russell Greer. Id.

at 1288. In defense, Greer published a book and then

a song, which website users “illegally put onto Kiwi

Farms.” Id. Kiwi Farms’ owner then publicly mocked

Greer’s requests to have his copyrighted works taken

down. Id. at 1295. That spurred Kiwi Farms users to

infringe even more of Greer’s works, and the infringement continued unabated. Id.

The Tenth Circuit identified three “flavors of

secondary liability”: (i) vicarious liability; (ii) inducement liability; and (iii) “caus[ing] or materially

contribut[ing] to another’s infringing activities.” Id.

at 1287-88. Greer’s “material contribution” theory, it

said, “requires more than ‘merely ‘permitting’ the in-

fringing material to remain on the website.’” Id. at

1294-95 (citation omitted). And, unlike the Fourth

Circuit, the Tenth Circuit requires more than a defendant’s mere knowledge of prior direct infringement. Id. at 1287. In Greer, that “something more”

was the website owner’s “mocking refusal to remove”

the copyrighted works, which “amounted to encouragement” of infringement. Id. at 1295. In so holding,

Greer honored Grokster’s unmistakable command for

affirmative, culpable conduct.

Cox would not be liable under the Second and

Tenth Circuits’ “affirmative conduct” standard. The

overwhelming uses of Cox’s internet service are noninfringing. Only a tiny proportion of Cox’s subscribers use internet service for infringement. And unlike

the defendants in EMI and Greer, Cox did not take

any affirmative steps to encourage use of its services

to infringe—it prohibited infringement and took

steps to stop it. Simply continuing to provide internet services to a subscriber, even with knowledge

that the account would be used to infringe, therefore

would not be considered culpable conduct in the Second and Tenth Circuits.

2. The Ninth Circuit agrees that online service

providers cannot be held liable based on mere

knowledge that a particular account infringes, but

does not always require “affirmative conduct” promoting infringement. Rather, the Ninth Circuit has

adopted a “simple measures” test, allowing culpable

material contribution to be inferred from the failure

to take easy, reasonable action to stop known infringement.

In Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d

1146 (9th Cir. 2007), Perfect 10 sued Google and

Amazon for infringing its copyrighted images of

models. Perfect 10 claimed that Google’s searchengine results included Perfect 10’s copyrighted images as reduced-size “thumbnail” versions and linked

to the full-size versions. Id. at 1155-57. Perfect 10

sued Amazon because Amazon and Google had an

agreement through which Google’s search engine

would display search results, including Perfect 10

images, to Amazon customers. Id. at 1157.

The Ninth Circuit held that a computer-system

operator could be held contributorily liable if it

(i) had “actual knowledge that specific infringing

material” was available on its system and (ii) could

“‘take simple measures to prevent further damage’ to

copyrighted works” but failed to do so. Id. at 1172

(citing A&M Records, Inc. v. Napster, Inc., 239 F.3d

1004, 1022 (9th Cir. 2001); Religious Tech. Ctr. v.

Netcom On-Line Commc’n Servs., Inc., 907 F. Supp.

1361, 1375 (N.D. Cal. 1995)). It defined “simple

measures” as “reasonable and feasible means.” Id.

Because there were factual disputes over whether

Google and Amazon could take simple measures to

prevent infringement, the Ninth Circuit remanded.

Id. at 1173, 1176-77.

The Ninth Circuit has since tried to clarify what

qualifies as “simple measures.” For example, in Perfect 10, Inc. v. Giganews, Inc., the court concluded

that the test was not satisfied where the copyright

owner’s proposed measures—which would “require

354,000 hours of manual work”—were too “onerous

and unreasonably complicated.” 847 F.3d 657, 671

(9th Cir. 2017). In VHT, Inc. v. Zillow Group, Inc.,

the Ninth Circuit concluded that Zillow was unable

to take simple measures to remove infringing images

unless the copyright owner provided specific URLs

for each image. 918 F.3d 723, 745 (9th Cir. 2019).

Cox addressed the simple-measures test as an

alternative to Grokster’s affirmative-conduct standard before the Fourth Circuit, explaining that Cox

already implements onerous measures to stop infringement and that wholesale ejection of homes and

businesses from the internet will rarely be a reasonable and feasible response to infringement notices.

The court did not address the argument.

3. Instead, the Fourth Circuit staked out the

most extreme position of all: Mere knowledge is

enough to constitute material contribution. Pet. App.

27a.

The court started with lip service to Grokster,

acknowledging that “‘mere[] … failure to take affirmative steps to prevent infringement’ does not establish contributory liability” absent intent. Id.

(citing Grokster, 545 U.S. at 939 n.12). Yet in the

same breath, it said that continuing to supply internet service “with knowledge that the recipient will

use it to infringe” constitutes “culpable” conduct. Id.

(emphasis added). That approach collapsed the

knowledge and material-contribution elements, concluding that Cox made a material contribution only

because it knew that particular customers infringed.

Waving away “Cox’s anti-infringement efforts and its

claimed success at deterring repeat infringement,”

the Fourth Circuit ascribed culpable intent to Cox

simply because it “chose to continue providing

monthly internet access” to some repeat infringers.

Pet. App. 28a. The result is to effectively require an

ISP to terminate users at the first allegations of repeat infringement.

4. Judges and scholars alike have expressed deep

confusion over what qualifies as material contribution after Grokster. Leading copyright treatises have

commented that Grokster “deepened the conceptual

morass created in Sony by referring to what may be

a third category of secondary liability, inducement.”

6 Patry on Copyright § 21:41; see also 3 Nimmer on

lower courts interpreting Grokster). The “disarray

caused by Grokster” is especially problematic where,

as here, it impacts “those who wish to develop products and services that will have substantial noninfringing uses and that are not based on a piracy

model.” Id. Law-review articles have likewise pointed out the uncertainty stemming from the materialcontribution question, especially after Grokster. See,

e.g., Mark Bartholomew & Patrick F. McArdle, Causing Infringement, 64 Vand. L. Rev. 675, 679-80

(2011) (noting the “confusing mishmash of contributory infringement decisions”); Alfred C. Yen, Torts

and the Construction of Inducement and Contributory Liability in Amazon and Visa, 32 Colum. J.L. &

Arts 513, 529-30 (2009).

Courts, too, have complained about this morass.

Take Flava Works, Inc. v. Gunter, where Judge Posner wrote for a unanimous panel:

A typical, and typically unhelpful, definition of “contributory infringer” is “one

who, with knowledge of the infringing

activity, induces, causes or materially

contributes to the infringing conduct of

another….” But … what exactly does

“materially contribute” mean? And how

does one materially contribute to something without causing or inducing it?

And how does “cause” differ from “induce”?

689 F.3d 754, 757 (7th Cir. 2012). These questions

are at the very heart of post-Grokster contributoryinfringement cases like this one. Only this Court can

resolve the clear circuit split and confusion over “material contribution.”

B. The Fourth Circuit’s approach conflicts

with Grokster and Twitter.

The Fourth Circuit’s approach is also wrong. As

that court itself has acknowledged, contributory liability is a species of aiding-and-abetting liability.

BMG, 881 F.3d at 309 (applying “law of aiding and

abetting”). 1 Grokster referenced those same “rules of

fault-based liability derived from the common law”

1 See also In re Aimster Copyright Litig., 334 F.3d 643, 651

(7th Cir. 2003) (“aiding and abetting [is] the criminal counterpart to contributory infringement”); EMI, 844 F.3d at 100 (defendant “aided and abetted infringement”); Venegas-Hernández

v. ACEMLA, 424 F.3d 50, 57-58 (1st Cir. 2005) (Gershwin recognized “abettor liability”); cf. Global-Tech Appliances, Inc. v.

SEB S.A., 563 U.S. 754, 764 (2011) (same in patent context).

when it explained that “mere knowledge of infringing potential or of actual infringing uses would not

be enough … to subject a distributor to liability.” 545

U.S. at 934-35, 937. Recently, this Court similarly

turned to “the common law of aiding and abetting” in

Twitter, Inc. v. Taamneh, which rejected liability for

online service providers based on their mere failure

to terminate users they knew were engaging in

wrongful conduct. 598 U.S. 471, 488-89 (2023). By

permitting liability based on passive provision of internet services with knowledge of infringing conduct,

the Fourth Circuit’s decision conflicts with both

Grokster’s affirmative-conduct requirement and

Twitter’s rejection of liability based on mere

knowledge of wrongful conduct.

1. The Fourth Circuit’s decision is flatly inconsistent with the rule that distributing a multi-use

product with “mere knowledge of infringing potential” does not “subject a distributor to liability,”

without proof of “affirmative steps taken to foster infringement.” Grokster, 545 U.S. at 919, 937.

In Sony, this Court squarely rejected copyright

owners’ claims that secondary infringement could

arise from mere distribution of a multi-purpose

product—in that case, videocassette recorders that

were used to record television programs for later

viewing. 464 U.S. at 419-21. Borrowing from patent

law, the Court held that the mere sale of a staple article of commerce does not result in contributoryinfringement liability if the product is “capable of

substantial noninfringing uses.” Id. That rule

“strike[s] a balance between a copyright holder’s legitimate demand for effective … protection of the

statutory monopoly, and the rights of others freely to

engage in substantially unrelated areas of commerce.” Id. at 442.

Grokster further clarified this key limitation on

liability. Grokster distributed free file-sharing “software products.” 545 U.S. at 919. Users routinely

used these products to share copyrighted music and

video files, and a group of copyright holders sued

Grokster. Id. at 920-21. Discovery revealed that

Grokster’s “principal object was use of [its] software

to download copyrighted works.” Id. at 926. For example, it deliberately positioned its products as replacements for Napster, a prominent music piracy

network, which seemed to be on the verge of shutting down by court order. Id. at 937-38.

While Grokster recognized a contributoryinfringement rule that would hold companies like

Grokster liable, it did so only because they had engaged in “purposeful, culpable expression and conduct.” Id. The Court cautioned against “trenching on

regular commerce or discouraging the development

of technologies with lawful and unlawful potential.”

Id. at 937. Accordingly, the Court—applying common-law principles—acknowledged that “mere

knowledge of infringing potential or of actual infringing uses would not be enough.” Id. Instead, contributory-infringement liability requires something

more. Id. In Grokster, that was “distribut[ing] a device with the object of promoting its use to infringe”—or, what the Court called “inducement”

liability. Id. at 919, 935-37. But Grokster’s requirement of “purposeful, culpable expression and conduct” applies to all forms of contributory liability.

The Court was clear: “[A] court would be unable to

find contributory infringement liability merely based

on a failure to take affirmative steps to prevent infringement, if the device otherwise was capable of

substantial noninfringing uses.” Id. at 939 n.12.

The Fourth Circuit flouted those principles in

holding that “providing the means to infringe is culpable” when coupled with knowledge of likely misuse. Pet. App. 27a. Its ruling dispenses with the

bottom line in both Sony and Grokster of “limit[ing]

liability to instances of more acute fault than the

mere understanding that some of one’s products will

be misused.” Grokster, 545 U.S. at 932-33. It imposed this liability for a service with a universe of

noninfringing uses. And it did so upon a passive service provider who has done nothing to encourage infringement and lacks even the slightest interest in

infringement occurring.

The Fourth Circuit attempted to conjure “more

than mere failure to prevent infringement” from the

record; it noted evidence of “increasingly liberal policies and procedures for responding to reported infringement” and “internal Cox emails and chats”

(between two mid-level employees) “displaying contempt for [the DMCA].” Pet. App. 28a. These are obvious makeweights. The former is a semantic trick to

make not terminating existing service sound like active conduct. The latter was workplace griping that

did nothing to change the fundamentally passive

character of Cox’s conduct—for instance, an email

from a mid-level employee saying, “F the dmca!!!”

then proposing that the music industry either “limit

[the deluge of robo-notices] or give us money to hire

people.” CA App. 1495. Colorful language aside,

Cox’s only contribution to anonymous user infringement was continuing to provide internet to homes

and businesses that already had it. That is not

enough under Grokster.

2. The Fourth Circuit’s decision is inconsistent

with this Court’s approach to aiding-and-abetting liability for online service providers outside the copyright realm, too.

In Twitter, the Court interpreted the phrase

“aids and abets” under the Justice Against Sponsors

of Terrorism Act (JASTA), which imposes secondary

liability on those who “knowingly provid[ed] substantial assistance” to a person engaged in international terrorism. 598 U.S. at 495. Plaintiffs sought to

hold several social-media platforms liable on the

theory that the platforms knowingly allowed terrorist content to proliferate and profited from advertisements accompanying that content. Id. at 481-82.

Surveying the long history of aiding-andabetting liability in American jurisprudence, id.

at 489-94, Twitter—like Grokster—made clear that a

defendant cannot be secondarily liable unless it engaged in “conscious, voluntary, and culpable participation in another’s wrongdoing,” id. at 493, 505. In

fact, the Court concluded that merely continuing to

provide “infrastructure” to someone engaged in

wrongdoing is not an “affirmative act” demonstrating the requisite culpable participation; it is mere

inaction that does not establish culpability absent

breach of an independent “duty to act.” Id. at 489-90,

498-99.

Twitter also recognized the “common conceptual

core” binding aiding-and-abetting liability under

JASTA and the common law surrounding both civil

and criminal secondary liability. 598 U.S. at 504. On

secondary criminal liability, the Court recognized

that a defendant ordinarily must “take some ‘affirmative act’ ‘with the intent of facilitating the offense’s

commission,’” such that the defendant can be said to

have given “knowing and substantial assistance” to

the primary wrongdoer. Id. at 490-91 (citation omitted). Such a rule ensures that “ordinary merchants

[do not] become liable for any misuse of their goods

[or] services, no matter how attenuated their relationship with the wrongdoer.” Id. at 489; see also id.

at 490 (discussing Rosemond v. United States, 572

U.S. 65 (2014), a criminal aiding-and-abetting case).

Twitter accords with longstanding limitations on

liability for infrastructure providers. Take the Seventh Circuit’s decision in Doe v. GTE Corp., 347 F.3d

655 (7th Cir. 2003) (Easterbrook, J.) (cited approvingly in Twitter, 598 U.S. at 499). In GTE, the court

observed that “[a] web host, like a delivery service or

phone company, is an intermediary and normally is

indifferent to the content of what it transmits.” Id.

at 659. For example, “Verizon” is not secondarily liable when it “furnishes pagers and cell phones to drug

dealers.” Id. “That web hosting services likewise may

be used to carry out illegal activities does not justify

condemning their provision whenever a given customer turns out to be crooked.” Id.

Likewise, Cox simply provides infrastructure

that some users unfortunately choose to use for illicit

purposes. But Cox has no interest in and does not

promote those illicit uses. The Fourth Circuit’s rule

disrupts the doctrinal consistency concerning secondary liability on the internet. If the Fourth Circuit

had followed Twitter’s teaching, it would have concluded that a provider of online services cannot be

secondarily liable merely because it provides a general-use product or service despite knowing that a

subscriber has a history of misusing that product or

service.

II. The Fourth Circuit’s Willfulness Standard

Warrants Review.

Once a defendant has been found secondarily liable for infringement, what else must the plaintiff

prove to show willful infringement and subject the

defendant to increased statutory damages? The

Fourth and Eighth Circuits have adopted irreconcilable answers. The Eighth Circuit applies a sensible

rule pegged to whether the defendant understood

that its own conduct was unlawful. By contrast, the

Fourth Circuit holds that willfulness turns on

whether the defendant knows that the direct infringer’s conduct is unlawful—meaning that, under

the Fourth Circuit’s combined rulings, all contributory infringement is automatically willful contributory infringement. This question is a matter of

extraordinary consequence for multiple reasons—

most notably that a willfulness finding increases the

available statutory damages 500%, from $30,000 to

$150,000 per violation. 17 U.S.C. § 504(c)(1)-(2).

A. The Eighth and Fourth Circuits have

adopted

conflicting

willfulness

standards in secondary-infringement

cases.

The courts of appeals conflict on whether a

plaintiff must make some additional showing—

beyond what is necessary to establish secondary infringement—to prove that such secondary infringement was willful.

1. In RCA/Ariola International, Inc. v. Thomas

& Grayston Co., the Eighth Circuit addressed the vicarious liability of a tape-copying machine manufacturer, as well as the retailers who provided in-store

access to those machines. 845 F.2d 773, 776-78 (8th

Cir. 1988). The defendants knew that some customers used the machines to infringe protected recordings. See id. at 777. For example, when the plaintiffs’

investigators (disguised as customers) made infringing copies with the machines, some retail employees

proactively told the investigator-customers that their

copying was “‘against the law.’” Id. at 779.

But the Eighth Circuit held that that did not

render the retailers’ secondary infringement willful.

Knowledge that the customers were directly infringing “does not show that the employees understood

their own actions to be culpable.” Id. (emphasis added). And it is that understanding, about one’s own

actions, that matters for willfulness. Id. at 779-80.

In so deciding, the Eighth Circuit relied on Professor Nimmer’s black-letter explanation that, for

purposes,

“‘willfully’

means

with

knowledge that the defendant’s conduct constitutes

appeals agree with Nimmer’s definition. See, e.g.,

Zomba Enters., Inc. v. Panorama Records, Inc., 491

F.3d 574, 584 (6th Cir. 2007) (quoting Nimmer);

MCA Television Ltd. v. Feltner, 89 F.3d 766, 768

(11th Cir. 1996) (same). If a defendant “reasonably

and in good faith believes to the contrary,” i.e., that

its conduct does not constitute copyright infringement, then that conduct “is not ‘willful.’” RCA, 845

F.2d at 779 (quoting Nimmer).

2. The Fourth Circuit took the polar-opposite position in BMG: There, Cox relied on RCA to argue

that the district court “incorrectly required ‘the jury

to analyze Cox’s knowledge of its subscribers’ actions,’ rather than Cox’s knowledge that ‘its actions

constitute an infringement.’” 881 F.3d at 312.

Rejecting that view but ignoring RCA entirely,

the Fourth Circuit held: “Contributorily (or vicariously) infringing with knowledge that one’s subscribers are infringing is consistent with at least

reckless disregard for the copyright holder’s rights”

and, therefore, “is willful.” Id. at 312-13.

At trial in this case, the same district court applied the same basic instruction against Cox, again

lowering the bar from knowledge of one’s own culpability to knowledge of another actor’s underlying direct infringement. See CA App. 804. Facing the

adverse BMG precedent, Cox preserved this issue before the Fourth Circuit panel, Cox CA4 Br. 55 n.3,

and unsuccessfully sought rehearing en banc to remedy BMG’s error, Cox CA4 Pet. for Reh’g 15-21.

B. The

Fourth

Circuit’s

standard is wrong.

willfulness

In the Fourth Circuit, a secondary infringer is

automatically a willful infringer: The knowledge that

establishes liability for $30,000-per-work damages

simultaneously increases that cap to $150,000. That

approach defies the consistent and common-sense

meaning of “willfulness,” and it would dismantle the

enhanced damages regime Congress constructed for

First, it is well established that willfulness inquiries address a defendant’s understanding of its

own conduct and culpability, and willfulness penalties are foreclosed by a defendant’s good-faith, reasonable belief in the lawfulness of its own conduct.

See, e.g., Willful, Black’s Law Dictionary (12th ed.

2024) (“A voluntary act becomes willful, in law, only

when it involves conscious wrong or evil purpose on

the part of the actor, or at least inexcusable carelessness, whether the act is right or wrong.”). As this

Court has explained, “the traditional understanding

of willfulness in the civil sphere” is that a defendant

is knowingly or recklessly “falling down in its duty.”

Safeco Ins. Co. of Am. v. Burr, 551 U.S. 47, 59, 68

(2007) (emphasis added). By contrast, if a defendant

“acts reasonably in determining its legal obligation,

its action cannot be deemed willful.” McLaughlin v.

Richland Shoe Co., 486 U.S. 128, 135 n.13 (1988)

(same).

This principle—that willfulness centers on

knowledge of one’s own culpability—translates consistently across the legal spectrum, from willful

crimes to willful employment discrimination. For

federal criminal willfulness, for instance, this Court

requires proof “that the defendant was aware that

his conduct was unlawful.” Wooden v. United States,

595 U.S. 360, 378 (2022) (Kavanaugh, J., concurring)

(emphasis added) (citations omitted). Interpreting

the Age Discrimination in Employment Act, this

Court agreed that the question is whether the employer “knew or showed reckless disregard for the

matter of whether its conduct was prohibited.” Trans

World Airlines, Inc. v. Thurston, 469 U.S. 111, 126

(1985) (emphasis added) (quoting Air Line Pilots

Ass’n, Int’l v. Trans World Airlines, Inc., 713 F.2d

940, 956 (2d Cir. 1983)). That view “is consistent

with the manner in which this Court has interpreted

the [‘willful’] term in other criminal and civil statutes,” including the Federal Power Act, Internal

Revenue Code, Occupational Safety and Health Act,

and Cruelty to Animals Act. Id. at 126-27 & n.20.

Second, the Copyright Act uses willfulness as a

tool for imposing enhanced damages. But the Fourth

Circuit’s approach would make those enhanced damages the default for secondary infringers, defeating

the escalating regime Congress designed. Where

contributory liability is established, the plaintiff has

always already proved the defendant’s knowledge of

the underlying direct infringement. 3 Nimmer on

F.2d at 1162). By relying on that same knowledge,

the Fourth Circuit’s willfulness inquiry adds nothing

to the analysis; a contributory infringer will always

be a willful infringer, which overrides Congress’s

two-tiered damages regime in secondary-liability

cases.

That is precisely what happened under the

Fourth Circuit’s BMG rule here: The district court

first instructed the jury that Cox had the requisite

knowledge for contributory infringement (as determined at summary judgment) and then instructed

that such knowledge was sufficient to find willfulness, essentially directing a verdict on the issue. See

CA App. 804. There is no reason to think that Congress intended such a topsy-turvy regime, where direct infringers face enhanced willfulness damages

only where they have culpable knowledge about

their own conduct—but where secondary infringers

face enhanced damages regardless of their good-faith

and reasonable beliefs.

III. The Questions Presented Are Important

And Recurring.

A. This is an emergency. Without this Court’s intervention, the Fourth Circuit’s ruling threatens

mass evictions from the internet, severing millions

from an essential conduit to engagement with modern society.

In this billion-dollar case, Plaintiffs accused

57,000 Cox subscribers of infringement over roughly

two years. CA App. 271. That raw number is staggering even though it represents less than 1% of

Cox’s subscriber base. And the number of accounts

does not even begin to capture the number of affected individuals. Accused subscribers included small

businesses, like coffee shops with public Wi-Fi, plus

bigger entities like hospitals, universities, and military housing. See CA App. 395, 425, 630-31, 1066122, 1124-25, 1613. Also included were over a dozen

regional ISPs—businesses that supply internet, using a single Cox connection, to “thousands or tens of

thousands” of their own customers. CA App. 664.

Thus, a massive universe of downstream users rely

on Cox-provided internet connections to run businesses, pay bills, connect with friends, petition their

representatives, and attend school—and the vast

majority have no connection to any alleged infringement.

Imposing liability on providers merely because

they continue providing service after receiving allegations of infringement at a given IP address will

have dangerous and drastic consequences. Grandma

will be thrown off the internet because Junior visited

and illegally downloaded songs. An entire dorm or

corporation will lose internet because a couple of residents or customers infringed. Even with respect to

individuals who did, in fact, infringe, loss of internet

access is very heavy punishment for illegally downloading two songs. A person without internet might

lose their job or have to drop out of school. The consequence is particularly dire for rural subscribers

who often have no other ISP option—leaving terminated customers irreparably cut off from society. Yet

the Fourth Circuit would require service providers

like Cox to mete out this disproportionate punishment to thousands of internet users on pain of

$150,000 per illegal download.

Appropriate guardrails on secondary liability are

thus critical to ensure providers can continue providing important online services to hundreds of millions

of people.

B. This is a national problem, not isolated to one

circuit. This Court has recognized the Copyright

Act’s “express objective of creating a national, uniform copyright law.” Cmty. for Creative Non-Violence

v. Reid, 490 U.S. 730, 740 (1989) (citing 17 U.S.C.

§ 301(a)). And inconsistent legal regimes across the

country are especially disruptive to operation of the

internet, “a decentralized, global medium.” PSINet,

Inc. v. Chapman, 317 F.3d 413, 420 (4th Cir. 2003)

(quoting district court).

Secondary-infringement defendants like Cox typically operate at regional or nationwide scales. They

therefore need certainty about how these regimes

operate, and the answer cannot depend on after-thefact venue choice. Following Sony and Grokster,

courts and commentators are struggling to reach

consensus on the material-contribution question.

The circuits’ conflicting rules upend the goal of uniformity in copyright law. That is especially troubling

given the stakes: balancing artistic protection with

technological innovation on a nationwide (if not

global) scale.

Especially given the five-fold damages enhancement for willfulness, review is needed to restore a

uniform, nationwide copyright damages regime. For

secondary infringers, the maximum statutory damages increase 500% under the Fourth Circuit’s approach, from $30,000 to $150,000 per violation,

without a shred more evidence than what is necessary to prove liability, without regard to the reasonableness of the defendant’s mental state. So here, for

example, the jury was authorized to (and did) ratchet the statutory damages up to $99,830 per violation,

CA App. 823, despite evidence that the Fourth Circuit acknowledged shows “Cox’s anti-infringement

efforts and its claimed success at deterring repeat infringement,” Pet. App. 28a, as well as that court’s

conclusion that “no reasonable jury could find that

Cox received a direct financial benefit from its subscribers’ infringement,” Pet. App. 20a.

C. The issue also frequently recurs. Uncertainty

around secondary-liability rules has generated a

flurry of cases confronting the precise issues presented here. The Fifth Circuit is currently considering the same material-contribution question. UMG

Recordings, Inc. v. Grande Commc’ns Networks,

L.L.C., No. 23-50162 (5th Cir. argued June 3, 2024).

District courts around the country are likewise

grappling with this issue. E.g., UMG Recordings,

Inc. v. Verizon Commc’ns Inc., No. 24-cv-5285

(S.D.N.Y.); Warner Records, Inc. v. Altice USA, Inc.,

No. 23-cv-576 (E.D. Tex.); In re Frontier Commc’ns

Corp., 658 B.R. 277 (Bankr. S.D.N.Y. 2024); BMG

Rights Mgmt. (US) LLC v. Altice USA, Inc., No. 22cv-471, 2023 WL 3436089 (E.D. Tex. May 12, 2023);

Bodyguard Prods., Inc. v. RCN Telecom Servs., LLC,

No. 21-cv-15310, 2022 WL 6750322 (D.N.J. Oct. 11,

2022); UMG Recordings, Inc. v. RCN Telecom Servs.,

LLC, No. 19-cv-17272, 2020 WL 5204067 (D.N.J.

Aug. 31, 2020).

Nor are these issues limited to lawsuits against

conduit ISPs. Rightsholders also target downstream

online service providers—from web-hosting companies to payment processors to search engines. E.g.,

ALS Scan, Inc. v. Steadfast Networks, LLC, 819 F.

App’x 522 (9th Cir. 2020); Perfect 10, Inc. v. Visa Int’l

Serv. Ass’n, 494 F.3d 788, 819 (9th Cir. 2007); Parker

v. Google, Inc., 242 F. App’x 833 (3d Cir. 2007). Other frequent defendants are websites that host thirdparty content, including social-media services. E.g.,

Hunley v. Instagram, LLC, 73 F.4th 1060 (9th Cir.

2023) (social media); VHT, 918 F.3d 723 (real-estate

aggregator); Routt v. Amazon.com, Inc., 584 F. App’x

713 (9th Cir. 2014) (online marketplace); Capitol

Records, Inc. v. MP3tunes, LLC, 821 F. Supp. 2d 627

(S.D.N.Y. 2011) (music “storage locker”); Capitol

Records, LLC v. Vimeo, Inc., No. 21-2949 (2d Cir.)

(video hosting). Most recently, rightsholders have

brought contributory-infringement claims against

companies that use generative artificial intelligence.

E.g., N.Y. Times Co. v. Microsoft Corp., No. 23-cv11195 (S.D.N.Y.); Concord Music Grp., Inc., v Anthropic PBC, No. 23-cv-01092 (M.D. Tenn.).

The material-contribution theory at issue here

will affect secondary liability across these technological contexts. And the continued march of technological progress enhances the need for this Court to

update secondary-liability rules for the modern internet era.

IV. This Case Is An Ideal Vehicle To Resolve

The Questions Presented.

This case squarely presents both questions for

this Court’s resolution.

On secondary liability, the Fourth Circuit issued

a clear rule for this Court’s review: An online service

provider may be held contributorily liable when it

merely “suppl[ies] a product with knowledge that the

recipient will use it to infringe copyrights.” Pet. App.

27a. That rule was outcome-determinative on liability. And reversal of the Fourth Circuit’s expansive

liability holding would have immediate practical impact: Online service providers like Cox would not be

required to quickly cut off internet service—a lifeline

to many—to innocent and infringing users alike,

based on unverifiable infringement notices. Moreover, the factual record regarding Cox’s provision of

internet access is well-developed and uncontested,

allowing the Court to focus on the legal questions

without factual ambiguities.

The willfulness issue is likewise primed for this

Court’s review. In BMG, which settled before any petition to this Court, the Fourth Circuit analyzed (and

endorsed) the precise willfulness instruction at issue

here. 881 F.3d at 312-13. Cox preserved its objections in this follow-on case. Cox CA4 Br. 55 n.3.

While the Fourth Circuit did not revisit its prior

willfulness holding, no further development was

needed to clearly position the issue for this Court’s

review. Moreover, the impact of the erroneous willfulness instruction is even clearer here than it was

in BMG because, here, the district court’s summary-

judgment order established Cox’s knowledge of its

subscribers’ infringement for purposes of contributory liability as a matter of law. Pet. App. 168a-169a.

That finding gives this Court a particularly clean

vehicle to assess this thorny issue.

CONCLUSION

The Court should grant this petition for a writ of

certiorari.

Respectfully submitted,

Edward Williams

James Anglin Flynn

Abigail Colella

Kamilyn Y. Choi

ORRICK, HERRINGTON &

SUTCLIFFE LLP

2100 Pennsylvania Ave.

Washington, DC 20037

Roman Martinez

Peter E. Davis

LATHAM & WATKINS LLP

555 Eleventh Street,

Washington, DC 20004

August 15, 2024

E. Joshua Rosenkranz

Counsel of Record

Christopher J. Cariello

ORRICK, HERRINGTON &

SUTCLIFFE LLP

51 West 52nd Street

New York, NY 10019

(212) 506-5000

jrosenkranz@orrick.com

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.