# Amicus Curiae Brief — Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0043%3A55

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2005
- **Citation:** 545 U.S. 913

## Text

IN THE

Supreme Court of the Anited States

METRO-GOLDWYN-MAYER STUDIOS INC., ef ai.,
Petitioners,
Vv.

GROKSTER, LTD., et ai.,
Respondents.

On Writ of Certiorari to the
United States Court of Appeals
for the Ninth Circuit

BRIEF OF KIDS FIRST COALITION, CHRISTIAN
COALITION OF AMERICA, CONCERNED WOMEN
FOR AMERICA, ENOUGH IS ENOUGH, MORALITY

IN MEDIA, INC., NATIONAL CENTER FOR MISSING
AND EXPLOITED CHILDREN, NATIONAL
FRATERNAL ORDER OF POLICE, NATIONAL LAW
CENTER FOR CHILDREN AND FAMILIES, AND
WE CARE AMERICA AS AMICI CURIAE
IN SUPPORT OF PETITIONER

VIET D. DINH

Counsel of Record
CHRISTOPHER D. THUMA
BRIAN A. BENCZKOWSK1I
BANCROFT ASSOCIATES PLLC
2121 Bancroft Place, N.W.
Washington, D.C. 20008
(202) 234-0090

Counsel for Amici

Whether the Ninth Circuit erred in concluding, contrary to
long-established principles of secondary liability in copyright
law (and in acknowledged conflict with the Seventh Circuit),
that the Internet-based “file sharing” services Grokster and
StreamCast should be immunized from copyright liability for
the millions of daily acts of copyright infringement that occur

on their services and that constitute at least 90 percent of the

total use of the services.

TABLE OF CONTENTS

QUESTION PRESENTED...........0:cc.ccccsssssescssessrsessssecees
TABLE OF AUTHORITIEBG..............ccccrccccsesscssessseeeeees

SUMMARY OF ARGUMENT oocccossecssssecsssvssosesosssesssees
CT, Ee Sarde ee SP

BY SANCTIONING RESPONDENTS’
STRATEGY TO EVADE LEGAL LIA-
BILITY, THE DECISION BELOW PRO-
VIDES SANCTUARY FOR _ ILLEGAL
ACTIVITY SUCH AS THE DISTRIBUTION
OF CHILD PORNOGRAPHY, OBSCENITY,
AND OTHER PROHIBITED MATERIALG....

A. The Decision Below Sanctioned Respon-
dents’ Evasion of Law and Encourages the
Development of Anarchic Networks ...........

THE LAW CONSISTENTLY HOLDS
PARTIES LIABLE WHEN THEY FACIL-
ITATE THE ILLEGAL ACTIONS OF

Coun fe = <

10

14

19

iV

TABLE OF CONTENTS—Continued

Page
B. The Decision Below is an Anomaly
Among Traditional Principles of Sec-
ee 24
En 29

Vv

TABLE OF AUTHORITIES
CASES Page
A&M Records, Inc. v. Napster, Inc., 239 F.3d
Eee een passim
A&M Records, Inc. v. Napster, Inc., 114 F. Supp.
NG Oe 22
In re Aimster Copyright Litigation, 334 F.3d 643
a passim
Dawson Chem. Co. v. Rohm & Haas Co., 448
ed BR ED crttansncescnenstiuntinsmsmsennigipinmiintliniin 23
Dreamland Ball Room, Inc. v. Shapiro, Bernstein
& Co., 36 F.2d 354 (7th Cir. 1929) ..00....ccccceee 23
Doe v. Walker, 193 F.3d 42 (ist Cir. 1999).......... 27
Fonovisa, Inc. v. Cherry Auction, 76 F.3d 259
ee 12,21
Gershwin Publ’g Corp. v. Columbia Artists
Memt., Inc., 443 F.2d 1159 (2d Cir. 1971)........ 21
Gerentine v. Coastal Security Sys., 529 So.2d
1191 (Fla. Dist. Ct. App. 1988).................. fess 26
Grosfield v. United States, 276 U.S. 494 (1928)... 25
Kalem v. Harper Bros., 222 U.S. 55 (1911).......... 21, 25
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster,
Lid., 380 F.3d 1154 (9th Cir. 2004)... passim
Metro-Goldwyn-Mayer Studios, Inc., v. Grokster,
Ltd., 259 F. Supp. 2d 1029 (C.D. Cal. 2003)..... passim
New York vy. Ferber, 458 U.S. 747 (1982)............. 15
Roth v. United States, 354 U.S. 476 (1957) .......... 15

Screen Gems-Columbia Music, Inc. v. Mark-Fi
Records, Inc., 256 F. Supp. 399 (S.D.N.Y.

Se ntnemeemssntennenneseeesqpisnemantbiemenimensias 23
Shapiro, Bernstein & Co. v. H. L. Green Co., 316
yn 21,23

Sony “erp. of America v. Universal City Studios,
Inc., 464 U.S. 417 (1984) ......cccccscceseesseseesseeenes passim

vi
TABLE OF AUTHORITIES—Continued

Page
Stalzer v. European Am. Bank, 448 N.Y .S.2d 631
eR ee eee ee 26
Staples v. CBL & Assocs., Inc., 15 $.W.3d 83
CORI, GID consennsimatennenpneememenesntinenaen 27

United States v. Bestfoods, 524 U.S. 51 (1998) .... 28
United States v. Jewell, 532 F.2d 697 (9th Cir.

re nsscensatensenaieanisapiiapiimastiatiiateasiiasiiatiatitninleatiaaiaas 27, 28
United States v. Peoni, 100 F.2d 401 (2d Cir
ee creccinsrenninensienguapiasitininniatnbtastinteaiiestietibinlees 14
United States v. Pino-Perez, 870 F.2d 1230 (7th
Re ee Se ec ee wn 14
Universal City Studios, Inc. v. Sony Corp., 480 F.
Ft 2 22
STATUTES
ORI OO cecctettctiternntncia 20
Fe le te itiicrsinnicnicncrunesiaiimiiatiiads 20
18 U.S.C. §§ 1460-70 (2004) 200.0... ccccccecceceeeceeees 15
ee es Se ED ciccernrcccaisieniinnninieinnis 15
LEGISLATIVE MATERIAL

H.R. Rep. No. 1476, 94th Cong., 2d Sess.
el canenisiteaicendianmeciadaeiesiintaitiattaainiatidaseiiidia tintin 20
Legislative Proposals to Protect Children from
Inappropriate Materials on the Internet, Hear-
ing Before the Subcommittee on Telecommu-
nications, Trade, and Consumer Protection of
the House Committee on Commerce, 105th
Cong. 26 (1998) (statement of Stephen R.
Wiley, Chief, Violent Crimes and Major
Offenders Sections, Federal Bureau of

vii
TABLE OF AUTHORITIES—Continued

Online Pornography: Closing the Doors on Per-
vasive Smut, Hearing Before the House Sub-
committee on Commerce, Trade, and Con-
sumer Protection, 108th Cong. (May 6, 2004)
(statement of Ernie Allen, President and Chief
Executive Officer, National Center for Missing
and Exploited Children).................cccccseeeeeeeeeee 19, 24

Online Pornography: Closing the Doors on Per-
vasive Smut, Hearing Before the House Sub-
committee on Commerce, Trade, and Con-
sumer Protection, 108th Cong. (May 6, 2004)
(statement of Penny Nance, President, Kids

FES GD ensccssescccesesasencenssesenesiasteemniionments 8, 24
S. Rep. No. 106-141, 106th Cong., Ist Sess.
CRIP recrsnracazsssemesseccsepensenmnesassctnnseqpemamasnapnaniens 8, 15,17

Special Investigations Division, Minority Staff
of House Comm. on Government Reform,
107th Cong., Children’s Access to Por-
nography Through Internet File-Sharing
CARTIER, PURE Seer e a ncccresercasuisincimenitnpisiipiaemes 16
Staff of House Comm. on Government Reform,
Report Prepared for Rep. Tom Davis and Rep.
Henry A. Waxman, 108th Cong., File-Sharing
Programs and Peer-to-Peer Networks Privacy
and Security Risks (Comm. Print May 2003)..8, 17, 18
Statement of the Honorable Marybeth Peters,
Register of Copyrights, Hearing Before the
Senate Committee on the Judiciary, 108th
Come: Gast, Di, Fie eccecterssnstniinssvescsnsion 13
U.S. General Accounting Office, Report GAO-
04-757T, File Sharing Program: Users of
Peer-to-Peer Networks Can Readily Access
Child Pornography (May 6, 2003)...............0+ 15, 16

Vill
TABLE OF AUTHORITIES—Continued

MISCELLANEOUS

Alan O. Sykes, The Economics of Vicarious
Liability, 93 Yale L.J. 1231 (1984) .......ccccceeees

Audrey Gillan, Race to Save New Victims of

Child Porn, The Guardian, Nov. 4, 2003,
available at http://www.guardian.co.uk/child/
story/0,7369,1077260,00.html (last visited Jan.
BE, Tibi Pcccececassinnsesstaggnicteapinesinatinnenastitinasinaseies
Darell Smith, The File Sharing Dilemma, CNet
News (Feb. 3, 2004), available at http://news.
com.com/The+file+sharing+dilemma/2010-
1027 3-5152265.html (last visited Jan. 21,

David Luban, Contrived Ignorance, 87 Geo. L.J.
GF CRF Re iccrecnansenstensncncesscqnesenninnstamemsecmstanenes
Jane C. Ginsburg, Copyright Use and Excuse on
the Internet, 24 Colum. VLA J.L. & Arts |

John Foley, Reports of Child Pornography
Continue to Climb, Information Week (Jan.

11, 2005), available at http://www.information
week.com/story/show Article.jhtml?articleID=
57700595 (last visited Jan. 21, 2005)...........000+
National Center for Missing and Exploited Chil-
dren, CyberTipline: Annual Report Totals by
Incident Type: January 1, 1998 to December
5G, FOS Ga rcccscscrentiqscesscunnenamiennietiiainains

Page

23

14

16, 17

ix
TABLE OF AUTHORITIES—Continued

Peer-to-Peer File-Sharing Technology: Con-
sumer Protection and Competition Issues,
Hearing Before the Federal Trade Commission
(Dec. 15, 2004) (statement of Michelle
Collins, Director of the Exploited Child Unit
of the National Center for Missing and Ex-
ploited Children), available at http://fic.gov/
bcp/workshops/filesharing/transcript 041215.
pdf (last visited Jan. 21, 2005)............ccccceceereeee

Remarks of Attorney General John Ashcroft,
Peer-to-Peer Announcement (May 14, 2004),
available at http://www.usdoj.gov/ag/
speeches/2004/51404agwebp2p.htm (last vis-
FORE FUN Be, Bie cccccpniancssetscintetetnattinesiamenasces

Restatement (Second) of Torts § 302A (1965)......

Restatement (Second) of Torts § 344 (1965).........

16, 19

29
25
26

INTERESTS OF AMICI CURIAE'

Amici are a variety of national, non-profit organizations
broadly representing the interests of parents, children, and
law enforcement officers. They share a commitment to the
effective enforcement of the law, in particular prohibitions
against child pornography, obscenity, and other predatory
behavior against the Nation’s children. Amici are concerned
that the decision below will spawn a proliferation of
anonymous, decentralized, unfiltered, and untraceable peer-
to-peer networks that facilitate crimes against children and
that frustrate law enforcement efforts to detect and investigate
these crimes.

Kids First Coalition is a grassroots, non-profit organization
of parents, grandparents, and future parents dedicated to ad-
vancing the interests of children and families and to educating
the country about the needs of children. Penny Nance is the
founder and president of Kids First Coalition. Membership
includes parents from all walks of life throughout the United
States. Kids First Coalition advocates on behalf of a variety of
issues relating to children, including decency in broadcasting
and on the Internet, alcohol regulation, the Innocence Pro-
tection Act, and other pro-family initiatives.

The Christian Coalition of America is a tax-exempt

organization and one of the largest grassroots political groups
in the country with over 2 million members. The orga-

' Petitioners and Respondents have consented to the filing of this brief.
Consistent with Rule 37.6, this brief is not authored in whole or in part by
counsel for any party. No person, other than amici or their counsel, has
made a monetary contribution to the preparation or submission of this
brief. Counsel of record is an independent, non-executive director of the
News Corporation, parent company of Petitioner Twentieth Century Fox
Film Corporation. Bancroft Associates PLLC provides ongoing public
affairs and political strategy advisory services to the Recording Industry
Association of America and the Motion Pictures Association of America,
of which some Petitioners are members.

2

nization is involved in educating public officials and
members of the community on important, pro-family issues
of national concern. The Christian Coalition has played a
particularly active role in state and federal efforts to enact
laws regulating obscenity, child pornography, indecency, and
materials that are harmful to minors.

Concerned Women for America is the nation’s largest
public policy women’s organization. The organization pro-
vides policy analysis, legislative assistance and research for
pro-family organizations. Concerned Women for Amer-
ica’s research and publications on the impact of pornography
have been distributed to scholars, organizations, and citi-
zens across the country. The organization’s Chief Counsel
has also filed briefs with this Court on the subject of
pornography.

Enough is Enough is a non-partisan, non-profit, edu-
cational organization dedicated to making the Internet safe for
children and families. The organization is committed to
raising public awareness regarding the dangers of Internet
pornography and sexual predators, and advancing solutions
that promote shared responsibility between the public,
technology, and the law. Individuals involved with Enough is
Enough come from varied backgrounds, professions, reli-
gions, non-profit organizations, and political affiliations.

Morality in Media, Inc., is a national, non-profit orga-
nization established in 1962 to combat obscenity and uphold
decency standards in the media. Its public information and
public affairs activities are designed to help individuals deal
effectively and constitutionally with the threat of illegal
pornography in their communities and the erosion of decency
standards in the media. Morality in Media specializes in
providing assistance on issues related to the laws of
obscenity, child pornography, broadcast indecency, and the
display and dissemination of materials that are harmful to

minors. The organization regularly prepares proposed legis-

3

lation and administrative regulations, testifies before
legislative and administrative bodies, and submits briefs
amicus curiae in state and federal courts. Morality in Media
also maintains the National Obscenity Law Center, a
clearinghouse of legal materials on obscenity law.

The National Center for Missing and Exploited Children
(“NCMEC”) is a private, non-profit organization that pro-
vides services nationwide for families and professionals to
prevent the abduction, endangerment, and sexual exploitation
of children. Pursuant to its mission and congressional
mandate (see 42 U.S.C. §§ 5771 et seqg.; 42 U.S.C. § 11606;
22 C.F.R. § 94.6), NCMEC operates a CyberTipline that
allows the public to report Internet-related child sexual
exploitation and provides technical assistance to individuals
and law-enforcement agencies in the prevention, investiga-
tion, and prosecution of cases involving missing and
exploited children.

The National Fraternal Order of Police is the world's
largest organization of sworn law enforcement officers, with
more than 318,000 members in all 50 States. The orga-
nization is a non-profit corporation created to represent the
interests of its members including participation as amicus
curiae before this Court in matters in which the organization
has unique expertise and insight. In particular, the organi-
zation understands the difficulties faced by law enforcement
in the investigation of crimes involving child pornography.

The National Law Center for Children and Families is a
non-profit corporation and educational organization special-
izing in legal issues related to obscenity, child pornography
and sexual abuse, Internet regulations, and the display and
dissemination of materials harmful to minors. Through
training, advice, and legal research, the organization provides
support on these issues to concerned citizens, local, state and
federal government officials as well as law enforcement
agencies across the United States. The Center has also filed

4

numerous briefs amicus curiae in this Court and in other
federal and state courts.

We Care America is a faith-based organization dedicated to
community development through governmental and private
advocacy. We Care America sponsors initiatives to support
needy children through adoption and foster care programs
and provides avenues for various community volunteer
opportunities.

STATEMENT Cr THE CASE

Amici adopt the statement of the case presented in the Brief
for Petitioner. For the Court’s convenience, amici highlight
below the facts most salient to the analysis that follows.

Peer-to-peer technology allows a member of an on-line
network to access the computer files of other members.
Because the accessible files are distributed throughout the
members’ computers, not stored in a centralized server, peer-
to-peer software is necessary to catalogue available files,
match the members’ request with files, and connect the
members to facilitate the file transfer. By linking information
localized in individual computers into a network of global
reach, peer-to-peer technology holds great potential for facili-
tating legal, productive activities.

Like any non-sentient, non-judgmental technology, peer-
to-peer technology can be misused for illegal, pernicious
activities. In A&M Records, Inc. v. Napster, Inc., 239 F.3d
1004 (9th Cir. 2001), the court authorized an injunction
against a peer-to-peer network for the illegal transfer of
copyrighted works among its members if the network “knows
or should know that such files are available” on the system
and “fails to act to prevent viral distribution of the works.”
Id. at 1027. The relevant network in that case, Napster,
maintained central servers to catalogue files available on its
members’ computers, to match its members’ searches, and to
connect the requesting “peer” to the offering “peer.”

5

Napster’s failure to prevent viral distribution of copyrighted
works opened the network to secondary liability for its
members’ illegal trade in the works.

With the fall of Napster, peer-to-peer companies that were
built on the same foundation—infringing content—had a
choice: to act responsibly to prevent illegal activity or to turn
in the opposite direction by taking steps to ensure that such
illegal activity could continue to occur. Respondent
StreamCast’s own former Chief Technology Officer stated
that “there are no technical limitations to the ability to filter”
illegal content. Darell Smith, The File Sharing Dilemma,
CNet News (Feb. 3, 2004), available at http://news.com.com/
The+file+sharing+dilemma/2010-1027_35152265.html (last
visited Jan. 21, 2005). It is not a question of “whether file-
sharing companies can filter, but whether they will.” Jd.

Respondents Grokster and StreamCast took the opposite
tack and disabled technologies to monitor and control
network activities. They relocated their central server indices
to the members’ computers and decentralized the search
function. They dismantled log-in and registration require-
ments and refused to install filtering software. Metro-
Goldwyn-Mayer Studios, Inc., v. Grokster, Ltd., 380 F.3d
1154, 1165 (9th Cir. 2004) (hereinafter Grokster II). They
then disclaimed responsibility for the content distrib-
uted over the network that they created and set out to target
former Napster users deterred from the trade in illegal files.

Billing themselves as “the next Napster,” Respondents’
profited from the infringing activities of their users. Metro-
Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 259 F. Supp.
2d 1029, 1044 n.11 (C.D. Cal. 2003) (hereinafter Grokster /).
As the District Court noted and Respondents do not dispute:

StreamCast had $1.8 million in revenue in 2001 from
advertising. And as of July of 2002, StreamCast had $2

6

million in revenue and projects $5.7 million by the end
of the year. Grokster also derives substantial revenue
from advertising. The more individuals who download
the software, the more advertising revenue Defendants
collect. And because a substantial number of users
download the software to acquire copyrighted material,
a significant proportion of Defendants’ advertising
revenue depends upon the infringement. Defendants
thus derive a financial benefit from the infringement.

Id. at 1044 (internal citations omitted).

Petitioners are U.S. motion picture studios, record com-
panies, and a certified class of 27,000 music publishers and
songwriters. Petitioners sought an injunction against
continuing copyright infringement on the Grokster and
StreamCast services based on contributory and vicarious
infringement theories of copyright liability. The District
Court granted summary judgment for Respondents. Grokster
1, 259 F. Supp. 2d at 1046.

The Court of Appeals for the Ninth Circuit affirmed.
Grokster I], 380 F.3d at 1167. The Ninth Circuit recognized
that the Grokster and StreamCast software “enables the user
to participate in the respective peer-to-peer file-sharing net-
works,” id. at 1160; that “the vast majority of the files are
exchanged illegally in violation of the copyright law,” id.;
that Grokster and StreamCast know their systems are being
used for infringement; and that they profit handsomely from,
and in direct proportion to, the level of infringement, id. at
1160, 1164.

Despite these undisputed facts, the court concluded that
Grokster and StreamCast did not materially contribute to the
infringement because they did not possess the “right and
ability to supervise” and control the behavior of its users. /d.
at 1164-65. The Ninth Circuit also rejected Petitioners’ claim
that Respondents should be held liahle because they refused
to take steps to monitor the behavior of their users. /d.

7

Finally, the Ninth Circuit dismissed the argument that
Grokster and StreamCast should not be able to escape
vicarious liability by simply turning a “blind eye” to the
copyright infringement of their users while simultaneously
relying on that activity in order to be profitable. /d. at 1166.
The decision below stands in contrast to /n re Aimster
Copyright Litigation, 334 F.3d 643 (7th Cir. 2003). The
Seventh Circuit there rejected the efforts of the software
designers to blind themselves to illegal activity. /d. at 650.

Aimster involved a peer-to-peer system that used encryp-
tion in an attempt to disclaim responsibility for the illegal
activity on its network. /d. at 646, 649. Although the encryp-
tion prevented Aimster from obtaining actual knowledge of
specific infringement, Judge Posner recognized that “a
deliberate effort to avoid guilty knowledge is all that the law
requires to establish a guilty state of mind.” Jd. at 650. What
matters for contributory liability is not artfully evasive struc-
turing of the network, but rather the magnitude of infringing
and non-infringing uses for the software. /d. at 649-50.

SUMMARY OF ARGUMENT

Respondents designed their business and deployed their
technology to evade the requirements of law. In Napster, the
Ninth Circuit authorized an injunction against a peer-to-peer
network—-similar to that owned by Respondents— in part for
failure to detect and stop infringement. 239 F.3d at 1024,
1029. By redesigning their business model and software so
that they could disclaim any knowledge or control over
distributed content, Respondents sought to profit from the
illegal activity as the “next Napster.” Grokster I, 259 F.
Supp. 2d at 1044 n.11.

The Ninth Circuit’s decision to endorse Respondents’
evasive strategy has implications far beyond that of copyright
law. The decision below shelters not only illegal copyright
infringement, but gives sanctuary to the distribution of child
pornography and obscenity and other illegal activity con-

ducted on peer-to-peer networks. In alarming numbers,
pedophiles are using peer-to-peer systems to trade in illicit
material other than copyrighted works. See S. Rep. No. 106-
141, 106th Cong. Ist Sess. at 3 (1999); Online
Pornography: Closing the Doors on Pervasive Smut, Hearing
Before the House Subcommittee on Commerce, Trade, and
Consumer Protection, 108th Cong. (May 6, 2004) (statement
of Penny Nance, President, Kids First Coalition). Identity
thieves and malicious hackers are similarly drawn to the
anonymity and lack of accountability that these networks
provide. See Staff of House Comm. on Government Reform,
Report Prepared for Rep. Tom Davis and Rep. Henry A.
Waxman, 108th Cong., File-Sharing Programs and Peer-to-
Peer Networks Privacy and Security Risks at 1, 5-9 (Comm.
Print May 2003) (hereinafter Privacy and Security Risks).
The Ninth Circuit’s decision encourages network architects to
blind themselves to such unlawful content and discourages
the detection and prevention of illegal activity.

The decision below is an anomaly among traditional prin-
ciples of secondary liability in copyright law. Courts have
consistently allocated responsibility for copyright infringe-
ment to those who have an ongoing relationship with the
direct infringer. See Sony Corp. of America v. Universal City
Studios, Inc., 464 U.S. 417, 437 (1984). Respondents’ ability
to update their software and otherwise maintain contact with
their customers demonstrates such a relationship. The Ninth
Circuit adopted a false analogy to a manufacturer that sells a
product and loses all control over its use. See Grokster II,
380 F.3d at 1160-61. Respondents, however, are not limited
in filtering infringing use by any technological barrier, but
rather by conscious choice.

These concepts of copyright secondary liability that the
Ninth Circuit ignores general concepts of secondary liability
from other areas of law, such as property, tort, criminal, and
corporate law. The law has consistently taken a dim view of
owners who fail to end illegal use of their property, or who

9

take actions which increase the likelihood of illegal activity.
Respondents did not merely abdicate their responsibility to
prevent illegal activity, but took affirmative steps to facilitate
illegal acts on their networks and benefited from those illegal
acts. Holding Respondents responsible for the illegal use
of the their networks is no different than ensuring that
a landowner does not allow tenants to use property illegally,
holding a store owner responsible for maintaining a safe
workplace.

ARGUMENT

I. BY SANCTIONING RESPONDENTS’ STRA-
TEGY TO EVADE LEGAL LIABILITY, THE
DECISION BELOW PROVIDES SANCTUARY
FOR ILLEGAL ACTIVITY SUCH AS THE
DISTRIBUTION OF CHILD PORNOGRAPHY,
OBSCENITY, AND OTHER PROHIBITED
MATERIALS.

Respondents designed their business and deployed their
technology to evade the requirements of law. Napster
authorized an injunction against a peer-to-peer network in
part because it employed a centralized server and search
engine. 239 F.3d at 1023-24. Respondents structured their
business and technology to evade that ruling. By designing
their software so that they could disclaim any knowledge or
control over distributed content, they hoped to continue to
profit from illegal activity as the-“next Napster.” Grokster /,
259 F. Supp. 2d at 1036, 1044 n.11.

The Ninth Circuit’s endorsement of engineered ignorance
of use and content carries consequences far beyond copyright
law. The decision below shelters file-sharing networks from
copyright liability, but its reasoning encourages network
architects to design their systems deliberately to disclaim

10

knowledge of or control over other illegal conduct. The deci-
sion encourages peer-to-peer networks to blind themselves to
distributed content and to avoid detecting and filtering illegal,
pernicious activities such as the trafficking of child
pornography and obscenity.

A. The Decision Below Sanctioned Respondents’
Evasion of Law and Encourages the Develop-
ment of Anarchic Networks.

The central question in this litigation is whether a network
owner can divest liability for illegal activity facilitated by its
service simply by structuring its business plan, legal instru-
ments, and technology choices to disclaim any supervision or
control over such illegal activity. The Ninth Circuit disag-
gregates its reasoning into two theories of liability, contrib-
utory and vicarious, each with its own three subparts—
respectively, “(1) direct infringement by a primary infringer,
(2) knowledge of the infringement, and (3) material con-
tribution to the infringement,” Grokster I/, 380 F.3d at 1160,
and “(1) direct infringement by a primary party, (2) a direct
financial benefit to the defendant, and (3) the right and ability
to supervise the infringers,” id. at 1164. There is no dispute,
however, that there is direct infringement by Grokster and
Streamcast members, Grokster J, 259 F. Supp. 2d at 1034,
that the networks know that over 90 percent of their traffic is
for infringing use, Grokster II, 380 F.3d at 1157, and that
they profit from advertising revenue derived from such
traffic. Grokster 1, 259 F. Supp. 2d at 1036, 1044 n.11.
According to the decision below, the remaining third prongs
of either theory of liability are simply two sides of the same
coin, for a network owner materially contributes to in-
fringement if it fails to stop the known infringement, Grokster
Il, 380 F.3d at 1163, and is vicariously liable if it does not
exercise the right and ability to supervise its network against
illegal conduct. /d. at 1164-65.

1]

The Ninth Circuit absolved Respondents of legal liability
because they have adopted business, legal, and technological
strategies that disclaim any right and ability to supervise their
network and thus to monitor or stop illegal conduct. Napster
was liable, so goes the reasoning, because it operated “an
integrated service” and “because it controlled the central
indices of files, users were required to register with Napster,
and access to the system depended on the validity of a user’s
registration.” /d. at 1165 (citing Napster, 239 F.3d at 1011-
12, 1023-24); see also Grokster II, 380 F.3d at 1163 (same
for material contribution).

Grokster, by contrast, is not liable because even though it
“nominally reserves the right to block access to individual
users,” it does not exercise that right “given the lack of a
registration and log-in process.” Grokster II, 380 F.3d at
1165. Moreover, “its licensing agreement with KaZaa/
Sharman does not give it the ability to mandate that root
nodes be shut down.” /d. Thus, Grokster bears no legal
responsibility for the design of its business, legal, and
technological structure after it releases the network software
because “possibilities for upgrading software located on
another person’s computer are irrelevant to determining
whether vicarious liability exists.” /d. at 1166.

These business, legal, and technological distinctions did
not arise by happenstance, but rather reflect Respondents’
effort to evade legal requirements. Respondents’ systems
initially operated using the same centralized index server
concept that Napster employed. After the Napster injunction,
they reprogrammed their software to hijack members’
computers to serve as decentralized indexing nodes. JA 279-
86 (Kleinrock declaration).? Likewise, Respondents initially
required individualized registration with a username and

? All citations to record evidence are to the Joint Appendix (“JA”)
before the Ninth Circuit.

12

password. JA 1096, 574-77. During this litigation, Re-
spondents eliminated the log-in feature and thereby dis-
claimed any ability to deny access. Finally, Respondents
initially had user agreements in which they reserved the right
to terminate members’ access to the networks. JA 340-43,
1005-07. During this litigation, StreamCast renounced this
reservation and Grokster denied any enforcement capacity.

The Ninth Circuit blithely dismissed the import of these
evasive maneuvers because “[t]he technology has numerous
other uses, significantly reducing the distribution costs of
public domain and permissively shared art and speech, as
well as reducing the centralized control of that distribution.”
Grokster II, 380 F.3d at 1164. But surely a person’s
numerous innocent reasons for driving down the street in no
way excuse his failure to pull over when followed by a police
car with its lights flashing.

Consider the breathtakingly perverse implications of the
Ninth Circuit’s reasoning. The classic swap meet owner
liable for the trade in infringing products on his premises,
Fonovisa, Inc. vy. Cherry Auction, 76 F.3d 259, 261 (9th Cir.
1996), can divest legal liability simply by eschewing “the
ability to exclude individual participants [and] a practice of
policing the aisles,” Grokster IJ, 380 F.3d at 1165. The
dance hall operator—another classic case of secondary lia-
bility, id. at 1164-65—can absolve liability by throwing the
doors open to brigands and thieves. He can even profit by
selling as much liquor as he wants, provided that he has
disclaimed any responsibility to stop serving alcohol under
any conditions. It defies law and logic that, by opening the
doors wider to illegal activity, the property owner absolves
himself of legal liability. |

The decision below is not only perverse, it is pernicious.
The owners’ engineered ignorance of the content distributed
over their networks extends not only to copyright works, but

13

also to illegal distribution of other prohibited materials, such
as child pornography and obscenity. A system that blinds
itself to infringement also blinds itself to the illegal transfer of
other prohibited materials. Conversely, a responsible net-
work that implements systems to monitor, prevent, and assist
law enforcement prosecute distribution of prohibited mate-
rials stands at a commercial disadvantage to its compete-
tors operating under the Ninth Circuit’s legal sanctuary.

It is of little moment that Respondents have employed a
search filter purportedly to weed out untoward searches.
Whenever a user enters certain search terms—for example,
“nude”—a dialogue box pops up asking whether the user
would like to tum off the adult screening function and
continue with the search. The “filter” thus functions more as
an alert for inadvertent searches rather than a screening filter.
More important, Respondents have restructured their system
to disable any effective screen or filter of illegal use or
content—as “none of the communication between defendants
and users provides a point of access for filtering or searching
for infringing files, since infringing materials and indexing
information do not pass through defendants’ computers.”
Grokster II, 380 F.3d at 1165. Such engineered futility
facilitates illegal activity on a “mind-boggling” scale; the
decision below sanctions a safe haven for such unfettered
illegal activity.

By sanctioning Grokster’s conduct, the Ninth Circuit has
effectively shielded the provider of an ignorant network from
any form of culpability, whether civil or criminal. The
closest analogue in the criminal context to secondary civil
liability is the law of aiding and abetting. Aimster, 334 F.3d
at 651. The law of aiding and abetting requires more than

* Statement of the Honorable Marybeth Peters, Register of Copyrights,
Hearing Before the Senate Committee on the Judiciary, 108th Cong.
(Sept. 9, 2003).

14

simply providing a means or a component necessary for the
completion of an unlawful activity. As Judge Learned Hand
explained, it requires that the alleged aider and abettor “in
some sort associate himself with the venture, that he
participate in it as in something that he wishes to bring about,
that he seek by his action to make it succeed.” United States
v. Peoni, 100 F.2d 401, 402 (2d Cir. 1938). This requires
both knowledge of the intended unlawful activity and
material assistance in that venture in an effort to help it
succeed. See, e.g., United States v. Pino-Perez, 870 F.2d
1230, 1235 (7th Cir. 1989) (en banc). If a network provider
can disavow civil liability simply by constructing a network
of ignorance, it follows, a fortiori, that criminal liability
cannot attach. The Ninth Circuit decision simply ignores the
longstanding and common sense rule that “a deliberate effort
to avoid guilty knowledge is all that the law requires to
establish a guilty state of mind.” Aimster, 334 F.3d at 650;
see generally David Luban, Contrived Ignorance, 87 Geo.
L.J. 957, 959 (1999).

B. The Decision Below Encourages the Prolifer-
ation of Irresponsible Networks that Facilitate
Unfettered Distribution of Illegal Materials.

The failure of regulatory mechanisms to curb illegal uses
of peer-to-peer networks, of which the decision below stands
as the preeminent example, has denigrated this valuable
technology to its lowest form. “Peer-to-peer facilitates the
most extreme, aggressive and reprehensible types of behavior
that the Internet will allow.” Audrey Gillan, Race to Save
New Victims of Child Porn, The Guardian, Nov. 4, 2003
(quoting David Wilson, professor of criminology at the
University of Central England), available at http://www.
guardian.co.uk/child/story/0,7369,1077260,00.htm! (last vis-
ited Jan. 21, 2005).

These networks place children at serious risk of physical
harm. Congress, in passing the Child Internet Protection Act

15

(“CIPA”), documented increasing incidents of professional
pedophiles using the Internet to prey on children. “[A]n
increasingly disturbing trend is that of highly organized, and
technologically sophisticated groups of pedophiles who
utilize advanced technology to . . . sexually exploit and abuse
children.” S. Rep. No. 106-141, at 3-4 (1999). The Internet
and other on-line services are “one of the most prevalent
techniques by which pedophiles and other sexual predators”
identify “children for sexually explicit relationships.”
Legislative Proposals to Protect Children from Inappropriate
Materials on the Internet, Hearing Before the Subcommittee
on Telecommunications, Trade, and Consumer Protection of
the House Committee on Commerce, 105th Cong. 26 (1998)
(statement of Stephen R. Wiley, Chief, Violent Crimes and
Major Offenders Sections, Federal Bureau of Investigation).

Disturbingly, peer-to-peer networks are becoming the
preferred method to transfer child pornography. The United
States General Accounting Office (“GAO”) recently con-
cluded that peer-to-peer networks are quickly emerging as a
major conduit for the distribution of child pornography.‘
U.S. General Accounting Office, Report GAO-04-757T,
File Sharing Program: Users of Peer-to-Peer Networks Can
Readily Access Child Pornography, at 2, 11 (May 6, 2003)
(hereinafter GAO Report 1). In one search of peer-to-peer
networks using 12 keywords known to be associated with
child pornography on the Internet, GAO identified 1,286 titles
and file names, determining that 543 (about 42 percent) were

* See 18 U.S.C. §§ 2251-52 (2004) (prohibiting the creation, posses-
sion, transport, sale, distribution, receipt, and advertisement of child
pornography); 18 U.S.C. §§ 1460-70 (2004) (prohibiting the trans-
portation, transmission, and sale of obscene material). Child pornography
is unprotected by the First Amendment. See New York v. Ferber, 458
U.S. 747 (1982). Nor do First Amendment protections extend to the
production, distribution, or transfer of obscene material. See Roth v.
United States, 354 U.S. 476 (1957).

16

associated with child pornography images. /d. Of the
remaining, 34 percent were classified as adult pornography
and 24 percent as non-pornographic. In another search using
three keywords, a U.S. Customs analyst downloaded 341
images, of which 149 (about 44 percent) contained child
pornography. /d. Similarly, a congressional report noted that
the sixth most popular search on one peer-to-peer network
was the word “teen” and the eighth most popular was
“preteen.” Special Investigations Division, Minority Staff
of House Comm. on Government Reform, 107th Cong.,
Children’s Access to Pornography Through Internet File-
Sharing, at 5 (Comm. Print 2001).

The National Center for Missing and Exploited Children
(“NCMEC”) has found that peer-to-peer technology is in-
creasingly popular for the dissemination of child pornog-
raphy. GAO Report | at 2, 11. The technology makes it
easier to distribute, hide, and access illicit images and videos.
Id. Peer-to-peer technology enables pedophiles to download
larger files—for example, a 10-minute movie with sound—
which they cannot easily obtain through websites or email.
Peer-to-Peer File-Sharing Technology: Consumer Protection
and Competition Issues, Hearing Before the Federal Trade
Commission, at 84 (Dec. 15, 2004) (statement of Michelle
Collins, Director of the Exploited Child Unit of the National
Center for Missing and Exploited Children), available at
http://ftc.gov/bcp/workshops/filesharing/transcript_041215.pdf
(last visited Jan. 21, 2005). Accordingly, reports to NCMEC
of child pornography on peer-to-peer networks increased
more than fivefold from 2001 to 2003. GAO Report | at 2,
11. In 2004, the Center received 39 percent more reports of
suspected child pornography than it did the previous year, due
in part to the increasing popularity of peer-to-peer networks.”

* Reports of child pornography to the Center have increased every year
since the organization established a 24-hour hotline in 1998 to collect tips

on child exploitation. John Foley, Reports of Child Pornography

17

National Center for Missing and Exploited Children, Cyber
Tipline: Annual Report Totals by Incident Type: January 1,
1998 to December 31, 2004 (2005).

Anonymous peer-to-peer networks—of the type that Re-
spondents engineered to evade the Napster decision—present a
particularly acute problem. The absence of registration on
peer-to-peer networks conceals pedophiles’ efforts to identify,
lure, and seduce children into illegal and abusive sexual
activity. S. Rep. No. 106-141, at 3 (1999). Many pedophiles
believe it is harder for them to be detected on peer-to-peer
networks as opposed to other on-line services. Audrey Gil-
lan, Race to Save New Victims of Child Porn, The Guardian,
Nov. 4, 2003, available at http://www.guardian.co.uk/child/
story/0,7369,1077260,00.html (last visited Jan. 21, 2005).

Other types of criminals are similarly attracted to file-
sharing networks. Unlike Napster, which was limited audio
files, the new file-sharing programs allow users to download
any type of file from other computers connected to the
network. Privacy and Security Risks at 1. This feature creates
unique privacy and security risks, because file-sharing
programs potentially make every file on a computer available
to millions of other users on the network. In fact, many users
of file-sharing programs inadvertently make highly personal
information available to. other users. /d. at 1, 5-9. Con-
gressional committee investigators “found that file-sharing
programs could be used to easily obtain tax returns, medical
records, attorney-client communications, and personal cor-
respondence” from peer-to-peer user:.° Id.

Continue to Climb, Information Week, Jan. 11, 2005, available at
http://www. infomrationweek.com/story/show Article eeecunnc bas:
00595 (last visited Jan. 21, 2005).

1 a gaits et baneiedtimanr sie teaientkaieiiiena
Money backup files, which store the user’s personal financial records,
available for download. Privacy and Security Risks at |.

18

High-tech vandals also exploit peer-to-peer networks to
release computer viruses, worms, and other malicious
computer files, often masking their handiwork as popular
music files. Privacy and Security Risks at 11 (quoting Dr.
John Hale, Director of the Center for Information Security at
the University of Tulsa). Computer experts warn that the
risks of viruses induced by security vulnerabilities in peer-to-
peer software make using such software much more
dangerous than merely surfing the Internet. /d. at 5. First,
peer-to-peer networks put users’ computers at high risk for
viruses and other malicious files due to increased con-
nectivity, flaws in software design, and potential for quick
distribution of malicious programs. /d. Second, peer-to-peer
networks offer little in the way of protection, leading one
expert in computer security to state “banning [peer-to-peer]
systems is definitely part of any reasonable best-practices
approach to network security.” /d. at 11-12.

Respondents engineered anonymous, decentralized, un-
supervised, and unfiltered networks to create the fiction of
ignorance of, and inability to control, illegal activity. The
Ninth Circuit blessed these networks that make it increas-
ingly difficult for law enforcement to detect distribution of
child pornography and other illegal activity.

Peer-to-peer programs have made it more difficult to
identify the users. In the past [NCMEC was] able to
easily identify offenders trading child pornography using
peer-to-peer programs because their Internet Protocol
(IP) addresses were visible and they were required to
reveal their email addresses. This is no longer the case.
When [NCMEC] receive[s] reports . . . , it is almost
impossible to identify the perpetrators responsible for
trading the illegal files. The anonymity of recent peer-to-
peer technology has allowed individuals who exploit

19

children to trade images and movies featuring the sexual
assault of children with very little fear of detection.

Online Pornography: Closing the Doors on Pervasive Smut,
Hearing Before House Subcommittee on Commerce, Trade,
and Consumer Protection, 108th Cong. (May 6, 2004) (state-
ment of Ernie Allen, President and Chief Executive Officer,
National Center for Missing and Exploited Children).

Because the average user does not know whence she
downloaded a file, she cannot give law enforcement any
substantial information to track the offender. Peer-to-Peer
File-Sharing Technology: Consumer Protection and Com-
petition Issues, Hearing Before the Federal Trade Commis-
sion, at 86 (Dec. 15, 2004) (statement of Michelle Collins,
Director of the Exploited Child Unit of the National Center
for Missing and Exploited Children), available at http://
ftc.gov/bcp/workshops/filesharing/transcript_041215.pdf (last
visited Jan. 21, 2005). Once the users disable their con-
nection, law enforcement can do nothing to track down the
offenders. /d.

Il. THE LAW CONSISTENTLY HOLDS PARTIES
LIABLE WHEN THEY FACILITATE THE
ILLEGAL ACTIONS OF OTHERS.

The decision below is_an anomaly among traditional
principles of secondary liability in copyright law. Courts
have consistently allocated responsibility for copyright in-
fringement to those who have an ongoing relationship with
the direct infringer. See Sony, 464 U.S. at 437. Respondents
have the ability to update their software and otherwise
maintain contact with their customers: facts that make their
relationship with their users akin to that of a service provider
who has an ongoing relationship with its customers. The
Ninth Circuit ignored these facts and created a false analogy
to a manufacturer that sells a product and loses all control
over its use. See Grokster IT, 380 F.3d at 1154. Respondents,

20

however, unlike Sony, are not limited in filtering infring-
ing use by any technological or practical barrier, but by
conscious choice.

These concepts of copyright secondary liability the Ninth
Circuit ignores simply reflect general concepts of secondary
liability from other areas of law, such as property, tort,
criminal, and corporate law. The law has consistently taken a
dim view of owners who fail to end illegal use of their
property, or to take actions which increase the likelihood of
illegal activity taking place. Respondents did not merely
abdicate their responsibility to prevent illegal activity, but
took affirmative action by facilitating illegal acts on their
networks, and benefited from those illegal acts. Holding
Respondents responsible for the illegal use of their networks
is no different than ensuring that a landowner does not allow
tenants to illegally use property and holding a store owner
responsible for maintaining a safe workplace.

A. The Decision Below is an Anomaly Among
Traditional Principles of Copyright Law.

Through the doctrine of secondary liability, courts recog-
nize that it is improper to build a business based on the
infringement of others’ copyrights.’ Sony, 464 U.S. at 438

” The Copyright Act defines an infringer as “anyone who violates any
of the exclusive rights of the copyright owner... .” 17 U.S.C. § S01(a)
(2004). Courts have not limited this definition to direct infringers, but
imposed secondary liability to those who have some degree of
involvement in the infringement. Sony, 464 U.S. at 434-35. Although the
Act does not expressly mention secondary liability, Congress acknowl-
edged its existence in the Act’s legislative history. H.R. Rep. No. 1476,
94th Cong., 2d Sess. at 61, 159-60 (1976). Similarly, the Digital
Millennium Copyright Act did not abolish secondary liability. Aimster,
334 F.3d at 655; see also 17 U.S.C. § 512. Although the Act gives
Internet service providers safe harbor from liability in some cases, the
service providers “must do what [they] can reasonably be asked to do to
prevent the use of its service by ‘repeat infringers."” Aimster, 334 F.3d at
655 (citing 17 U.S.C. § 512 (i 1 (A)).

21

n.18 (quoting Shapiro, Bernstein & Co. v. H. L. Green Co.,
316 F.2d 304, 308 (2d Cir. 1963)). This liability extends
beyond those who actually manufacture or sell infringing
material, and can apply to conduct that assists others in
infringement. Fonovisa, Inc., 76 F.3d at 259, 261.

In applying secondary liability to copyright law, courts
have attempted to allocate responsibility for infringement
where it may be most effectively exercised. Sony, 464 U.S. at
438 n.18; Shapiro, 316 F.2d at 307; Gershwin Publ'g Corp.
v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir.
1971). The ubiquitous example of this allocation of
responsibility in copyright is that of the dance hall cases. The
common facts of these cases involve a dance hall owner who
hires a band that plays copyrighted music without
authorization. Aimster, 334 F.3d at 654. The owners have
contact with the bands, which are otherwise transient and
difficult for the copyright holders to locate. Thus, courts
reasoned it is the capability to contact and interact with the
potential infringer that imposes responsibility to supervise
their conduct. See id.; Sony, 464 U.S. at 437 (citing Kalem v.
Harper Bros., 222 U.S. 55 (1911)); Shapiro, 316 F.2d at 307
(finding liability derives from “ability to supervise”’).

Respondents, like the dance hall owners before them, have
a “continuing relation with [the potential infringers]” which
imbues them with responsibility for their actions. Aimster,
334 F.3d at 648. Respondents concede that they send
advertising to their members. Grokster I], 380 F.3d at 1166.
It is technically possible to even upgrade the software on the
users’ computers. JA 228-29, 182-83, 279-286. They chose
to dismantle log-in and registration requirements that would
give them additional contact with their users. Grokster II,
380 F.3d at 1165.

This ability to reach out to customers and alter a product in
their hands—whether exercised or not—justifies the imposi-
tion of liability. This is precisely the type of situation where

22

the application of secondary liability is particularly appro-
priate. Sony, 464 U.S. at 437. On similar facts to the instant
case, the Seventh Circuit found the designers of a peer-to-
peer network provide a service as well as a product. Such
service providers have:

[A] continuing relation with [their] customers and there-
fore should be able to prevent, or at least limit, their
infringing copyright by monitoring their use of the
service and terminating them when it is discovered that
they are infringing.

Aimster, 334 F.3d at 648.

When the Ninth Circuit found that Respondents did not
have the ability to supervise infringing conduct, it ignored the
fact that it did so by choice, not from any technological
constraints. Grokster II, 380 F.3d at 1163. The Court stated
that “[gjiven the lack of a registration and log-in process . . .
Grokster has no ability to actually terminate the file sharing
functions” despite the fact that Respondents themselves dis-
abled these features. /d. at 1165.

The Ninth Circuit ignored the difference between flexible
peer-to-peer technology and static products such as video tape
recorders (“VTR”). As the District Court in Napster recog-
nized, once a VTR was sold, its producer could no longer
follow up with how consumers employed it. A&M Records,
Inc. v. Napster, Inc., 114 F. Supp. 2d 896, 916-17 (N.D. Cal.
2000). “Limiting distribution o. the [VTR] machine to a
class of non-infringers was not a possibility.” Jane C. Gins-
burg, Copyright Use and Excuse on the Internet, 24 Colum.
VLA J.L. & Arts 1, 37 (2003) (hereinafter Ginsburg); see
also Sony, 464 U.S. at 437-38 (observing that manufac-
turer had no ongoing relationship after sale); Universal City
Studios, Inc. v. Sony Corp., 480 F. Supp. 429, 461-62 (C.D.
Cal. 1979).

23

Sony thus presented an all-or-nothing choice: if the manu-
facturers were liable, then the product could not be sold,
despite its capacity for non-infringing uses; if manufacturers
were not liable, then the product could be sold, despite its
capacity for infringing uses. Ginsburg at 37. Left with this
all-or-nothing choice, the Court allowed the new technology
to survive. /d.

Technological advancements since Sony have removed the
barrier between seller and user of the product and require that
Respondents take responsibility for the use of their network.
Peer-to-peer’s “online technology makes possible the con-
finement of the service to a class of non-infringers.” /d.
Respondents are prevented from doing so only by choice and
not by any technological barrier. Thus, the all-or-nothing pre-
dicament has been removed. Sony, 464 U.S. at 438 n.18. Sony
noted that secondary liability “places responsibility where it
can and should be effectively exercised,” not merely where
Respondents desire to do so. /d. (emphasis added).

Respondents not only have the ability to identify their
infringing users, they are the only ones who may practically
do so. Courts have found that recovering from direct
infringers frequently proves difficult or impossible. See
Dreamland Ball Room, Inc. v. Shapiro, Bernstein & Co., 36
F.2d 354 (2d Cir. 1929) (citing example of iterant orchestras);
Shapiro, 316 F.2d at 307-308 (2d Cir. 1963) (citing cases);
Screen Gems-Columbia Music, Inc. v. Mark-Fi Records, Inc.,
256 F. Supp. 399 (S.D.N.Y. 1966) (discussing “fly-by-night”
record pirates). Therefore, the only effective relief was found
from a party in a position to stop the infringement. See
Aimster, 334 F.3d at 654; Alan O. Sykes, The Economics of
Vicarious Liability, 93 Yale L.J. 1231, 1241-42, 1272 (1984);
see also Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S.
176, 188 (1980) (noting a similar rationale for the doctrine of
contributory infringement in patent law). The Ninth Circuit,
however, denies Petitioners a remedy and leaves them with

24

the impractical option of suing “a multitude of individual
infringers” whose identities are close to impossible to obtain.
Aimster, 334 F.3d at 645.

Similarly, parents and others concerned about the illegal
activity are also without adequate remedy. For those outside
the network, pedophiles and child pornographers are as
difficult to identify as the infringing users. See Online
Pornography: Closing the Doors on Pervasive Smut, Hearing
Before the House Subcommittee on Commerce, Trade, and
Consumer Protection, 108th Cong. (May 6, 2004) (statement
of Erie Allen, President and Chief Executive Officer,
National Center for Missing and Exploited Children). As
gatekeepers to the network, Respondents are the ones most
capable of interdicting this illegal conduct.

A proper application of the doctrine of secondary liability
serves the interests of the copyright holders, as well as law
enforcement. As the only ones who can effectively exercise
responsibility, Respondents must do so. See Sony, 464 U.S.
at 438 n.18. Increased diligence in this area may give child
predators and other criminals pause before engaging in their
illegal conduct. “Just as the [Internet service providers] are
working to tighten [their] content and shield kids, so must the
peer-to-peer systems take responsibility.” Online Pornog-
raphy: Closing the Doors on Pervasive Smut, Before the
House Subcommittee on Commerce, Trade, and Consumer
Protection, 108th Cong. (May 6, 2004) (statement of Penny
Nance, President, Kids First Coalition).

B. Decision Below is an Anomaly Among Tra-
ditional Principles of Secondary Liability
Generally

The Ninth Circuit’s holding runs counter to the under-

pinnings of longstanding, accepted theories of secondary
liability in areas of the law beyond copyright. As Justice
Holmes noted almost one hundred years ago, the concept of

25

secondary liability in copyright is premised “on principles
recognized in every part of the law.” Kalem, 222 U.S. at 63.
An examination of these principles shows that the law
requires individuals to supervise the use of their property and
prohibits them from reducing the level of security in the face
of known dangers. These concepts are widely applicable and
extend to diverse areas of the law, including both civil (e.g.,
tort, property, and corporate law) and criminal law. Persons
may not condone illegal acts on their property (through
inaction) nor endorse it (through positive action that encour-
ages or otherwise supports illegal acts).

General principles of property law provide seminal exam-
ples of secondary liability of property owners for the illegal
use of their property. In Grosfield v. United States, 276 U.S.
494, 495-496 (1928), the Court enjoined a property owner
against the use of his property for the illegal manufacture of
liquor by his tenant. This Court rejected the landlord’s efforts
to disclaim responsibility for the illegal use of the property by
the tenant, noting:

[I}t is no answe. .o the suit to say that the owner did not
participate in the criminal act of the tenant. That the
tenant may have been ousted and the illegal use of the
premises ended before the decree is not conclusive, if the
evidence furnish reasonable ground for apprehending a
repetition of such use.
Id. at 498. Thus, the owner bears first responsibility to end
the illegal use of his property. Indeed, the language suggests
that the landlord has the burden of preventing reasonably
foreseen repetition of the illegal use of the property.

Basic principles of tort law, likewise, place responsibility
upon the landowner to adequately supervise his property to
prevent illegal acts by any persons. See Restatement
(Second) of Torts § 302A (1965). For instance, a landowner
may be held liable for failing to provide adequate security
protection under circumstances in which criminal attacks

26

upon entrants are otherwise foreseeable." In Gerentine v.
Coastal Security Sys., 529 So.2d 1191 (Fla. Dist. Ct. App.
1988), the Court upheld a complaint seeking damages for the
death of a convenience store employee who was abducted
from the defendant’s store. /d. at 1192. Interpreting Florida
law, the Court found that the defendant’s actions in reducing
security protection despite four previous robberies of the
convenience store, together with his decision not to create and
enforce any policy to deter or prevent robberies, permitted
recovery. /d. at 1193. This previous history of prevalent
crime is analogous to the dominant use of Respondents’
networks for illegal acts. Just as the convenience store owner
was held liable for not taking steps to ensure the safe, legal
use of his property, Respondents should be similarly liable for
not preventing illegal use of their network.

Courts also recognize that in certain cases—even where
they are otherwise under no preexisting duty to prevent a

* See Restatement (Second) of Torts § 344 cmt. f (1965):

Since the possessor is not an insurer of the visitor's safety, he is
ordinarily under no duty to exercise any care until he knows or has
reason to know that the acts of the third person are occurring, or are
about to occur. He may, however, know or have reason to know,
from past experience, that there is a likelihood of conduct on the
part of third persons in general which is likely to endanger the
safety of the visitor, even though he has no reason to expect it on the
part of any particular individual. If the place or character of his
business, or his past experience, is such that he should reasonably
anticipate careless or criminal conduct on the part of third persons,
either generally or at some particular time, he may be under a duty
to take precautions against it, and to provide a reasonably sufficient
number of servants to afford a reasonable protection.
See also Stalzer vy. European Am. Bank, 448 N.Y .S.2d 631, 635 (Civ. Ct.
1982) (finding that since the plaintiff was robbed while inside the defen-
dant’s bank, the defendant's knowledge of prior similar criminal activity
imposed an obligation to “take all necessary protective measures and to
provide a reasonably sufficient number of servants to afford security
protection”).

27

harmful act by some third party—an individual may still be
liable for a failure to respond to illegal activity. In Doe v.
Walker, 193 F.3d 42 (lst Cir. 1999), the plaintiff, a social
guest invited to the defendant’s home, was raped by three
male guests of the defendant. /d. at 45-46 (applying
Massachusetts law). The Court opined that if a social host
becomes aware of criminal conduct being committed by one
of his guests against another guest, and does nothing to avert
or otherwise ameliorate the danger at no risk to himself, this
failure to act could justify criminal charges against the host.
Id. Even assuming, arguendo, Respondents have no other
pre-existing duty to prevent the use of their network for child
pornography, Respondents have knowledge that 90 percent of
the traffic on their network is being used for illegal
infringement and have failed to avert this danger.”

In addition, criminal law teaches that concepts of sec-
ondary liability extend to persons who have positively acted
to encourage or otherwise endorse the illegal action in order
to impose sanctions upon all that are culpable. In United
States v. Jewell, 532 F.2d 697 (9th Cir. 1976), the defendant
agreed to drive a car back from Mexico for an individual he
had met in a bar. /d. at 699 n.1. The defendant became
aware of a secret compartment in the vehicle, but deliberately
avoided obtaining actual knowledge of the 110 pounds of
marijuana contained therein. /d. at 698-99. The Court upheld
a jury instruction which stated that knowledge of the
controlled substance in his vehicle could be derived “solely
and entirely because of a conscious purpose on his part to
avoid learning the truth.” /d. at 698. The Ninth Circuit
wrongly dismissed the concept that Respondents should not
be able to escape liability by willfully blinding themselves to

* See also Staples v. CBL & Assocs., Inc., 15 $.W.3d 83, 90 (Tenn.
2000) (Finding that liability was incurred where the plaintiff was abducted
from a shopping mall after reporting suspicious activity of her abductor to
store employees and they took no further action).

28

the infringement as “rhetoric.” Grokster II, 380 F.3d at 1165.
Just as Mr. Jewell’s narrow definition of knowing was
inconsistent with congressional intent to effectively deal with
“with the growing menace of drug abuse in the United
States,” Jewell, 532 F.2d at 703, so does the Ninth Circuit’s
reasoning render secondary liability meuningless.

Corporate law uses a similar concept of secondary liability
to prevent endorsement and support of illegal acts.
Generally, a parent corporation is not liable for the acts of its
subsidiaries. United States v. Bestfoods, 524 U.S. 51, 61
(1998). This Court, however, has recognized an exception to
this canonical rule to encourage corporations to structure
themselves to comport with the law. “[A]n equally funda-
mental principle of corporate law, applicable to the parent-
subsidiary relationship . . . , [is] that the corporate veil may be
pierced and the shareholder held liable for the corporation’s
conduct when, inter alia, the corporate form would otherwise
be misused to accomplish certain wrongful purposes. .. .” /d.
at 62. The parent corporation bears responsibility over
the conduct of its subsidiary where the corporation—like
Respondents’ network—is constructed merely to evade the
law. The very creation of the shell corporation to absolve the
parent of liability is a positive act that breeds illegal behavior,
and Bestfoods stands for the proposition that such a positive
act endorsing illegal behavior incurs secondary liability.

Secondary liability extends to persons that both condone
illegal activity on their property through their own non-
action, and endorse it through positive steps that encourage or
support the illegal activity. In the same way, Respondents
took no steps to secure their network in the face of known
dangers. In fact, Respondents turned a blind eye to this
danger. They were well aware of, and benefited from, the
high propensity of infringement present in such places. See
Aimster, 334 F.3d at 645 (stating “(t]he [file] swappers are
ignorant or more commonly disdainful of copyright and in

29

any event discount the likelihood of being sued or
prosecuted”). The incidents of child pornography and other
illegal activity on these networks are well-known and well-
documented. See Remarks of Attorney General John Ash-
croft, Peer-to-Peer Announcement, May 14, 2004, available
at http://www.usdoj.gov/ag/speeches/2004/5 1404agwebp2p.
htm (last visited Jan. 21, 2005). Yet, like the store owner in
Gerentine, Respondents not only failed to sécure their
network, but instead took positive action to reduce security
and disabled devices able to detect and stop such activity.
Respondents’ removal of previously existing security re-
strictions on the Grokster network, such as removing the
central server and the log-in requirement, is no different than
the Gerentine convenience store’s reduction of security
protection. Like the store owner, Respondents should not
escape liability for their actions.

CONCLUSION

For the foregoing reasons, as well as those set forth in the
Brief for Respondents, the decision below should be reversed.

Respectfully submitted,

Viet D. DINH

Counsel of Record
CHRISTOPHER D. THUMA
BRIAN A. BENCZKOWSKI
BANCROFT ASSOCIATES PLLC
2121 Bancroft Place, N.W.
Washington, D.C. 20008
(202) 234-0090

Counsel for Amici

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0043%3A55. Public record. Not legal advice.