# 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%3A71

## Record

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

## Text

CY

No. 04-480

IN THE OFFICE OF THE CLERK ©

Supreme Court of the United States

METRO-GOLDWYN-MAYER STUDIOS INC., et al.,
Petitioners,
v.
GROKSTER, LTD., et al.,

Respondents.

On Writ or CERTIORARI TO THE
Unitep States Court OF APPEALS FOR THE Nintu Circuit

— ——

Brier Or Amici Curtak Orrice Or Tue Commissioner Or BASEBALL,
NATIONAL BASKETBALL ASSOCIATION, NATIONAL FoorBaLt LeaGcue,
PROFESSIONAL PHOTOGRAPHERS OF AMERICA, INC., AMERICAN SOCIETY
Or Mepia Puorocraruers, Inc., ASSOCIATION Or AMERICAN
Pusiisuers, Inc., ASSOCIATION OF AMERICAN UNiverRSITY PRESSES,
Propucers Guitp Or America, Inc., Grapnic Artists GuiLp,
ENTERTAINMENT SOFTWARE ASSOCIATION, THe AUTHORS GuiILp, INc.,
AND Tue INDEPENDENT Fitm & TELEVISION ALLIANCE
IN SuPPORT OF Petirioners

— —_———

Ropert ALAN GARRETT

Counsel of Record
Gary GERTZOG HaApRIAN R. Katz
Senior Vice President of Business Steven R. ENGLUND
Affairs and General Counsel Micuece J. Woops
NATIONAL FooTBALL LEAGUE CHRISTOPHER WINTERS
280 Park Avenue ARNOLD & Porter LLP
New York, NY 10017 555 12th Street, N.W.
(212) 450-2000 Washington, D.C. 20004
Counsel for Amicus (202) 942-5000
National Football League Counsel for Other Amici

192262 g

COUNSEL PRESS
(800) 274-3321 + (B00) 359-6859

i

TABLE OF CONTENTS

TABLE OF CITED AUTHORITIES ............
INTERESTS OF AMICI CURIAE ..............
SUMMARY OF ARGUMENT .................
NPE E vet ovaddanccksrseecusdbcavineasy

I.

Il.

The Decision Below, If Allowed To Stand,
Will Burden The Judicial System With
Multiple Individual Infringement Actions
And Will Deprive Copyright Owners Of A
Meaningful Remedy For Millions Of Acts Of
Copyright Infringement .................

The Decision Below, If Allowed To Stand,
Will Have The Counterproduc. ve Effect Of
Rewarding Peer-To-Peer Services That
Refuse To Take Reasonable Steps To Prevent
Or To Reduce Massive Amounts Of
Copyright Infringement And Resulting
Litigation Against Multiple Individual
ED vcd bn dikes dadbuadikducwieees

As The Seventh Circuit Has Concluded, Peer-
To-Peer Services Should Be Secondarily
Liable For The Massive Copyright
Infringement They Facilitate, Absent A
Showing That It Would Be Disproportionately
Costly For Them To Eliminate Or To Reduce
Substantially That Infringement ..........

CRNEEAINIED Nec ceevecdavescnsiveeseencnne

Page

12

ii

TABLE OF CITED AUTHORITIES

Page
CASES

A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004
fe | eererrerrrrrerr ry rr 12, 13

A&M Records, Inc. v. Napster, Inc., 284 F.3d 1091
Cs COR, BONED veto ctevcvecesesesvassees 12, 13, 14

Aro Mfg. Co. v. Convertible Top Replacement Co.,
S77 UD. STOCIGO cccccccsececseviuszedds ll

BMG Music v. Does 1-203, No. 04-650, 2004
WL 442626 (E.D. Pa. Mar. 5, 2004) ...... cee 9

Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S.
TR GRGOED cv cccecacesevécesnesssnsscvevaut 11, 22

Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
DEDGEOOED 5 00bccveceestecéesonceetaevernse 10

Fromberg, Inc. v. Thornhill, 315 F.2d 407 (Sth Cir.
TWD nvcvccectsseeceeenceessbdnepeneaue 26

Gershwin Publ’g Corp. v. Columbia Artists Mgmt.,
Inc., 443 F.2d 1159 (2d Cir. 1971) ............ 17

Imagexpo, LLC v.-Microsoft Corp., 284 F. Supp. 2d
3GS GED. VO. FRB) nc cccccccccccvescesvaes 27

In re Aimster Copyright Litig., 334 F.3d 643
(7th Cir. 2003), cert. denied, 540 U.S. 1107
CPD cccdccnernevaddnadadcensepecetivans passim

iii
Cited Authorities

Page

In re Cases Filed by Recording Companies, Case

Nos. A-04-CA-550 LY, A-04-CA-636 SS, A-04-

CA-703 LY, A-04-CA-704 LY (W.D. Tex. Nov. 17,
BOON) ...cccnceenesesedenenenennniaeee 9

In re Charter Comms. Inc., Subpoena Enforcement

Matter, _ F.3d __, 2005 WL 15416 (8th Cir.
BOOS) ncccoccesccustensenanaennae 9

Interscope Records v. Does 1-25, No. 6:04-CV-197-
ORL-22-DAB (M.D. Fla. Apr. 27, 2004) ...... 9

Mercoid Corp. v. Mid-Continent Investment Co.,
320 U.S. 668 (IGS) oo ccccesvnaudenanenen 6

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) ...4, 12, 13, 14

Oak Industries, Inc. v. Zenith Electronics Corp.,
697 F. Supp. 988 (N.D. Ill. 1988) ............ 27, 28

Philips Elecs. N. Am. Corp. v. Contec Corp., No. Civ.
A. 02-123-KAJ, 2004 WL 1622442 (D. Del. July
12, SEBS)... cseccesacthéce ceununeanenene 27

iv

Cited Authorities
Page
Recording Indus. Ass'n of Am., Inc. v. Verizon
Internet Servs., Inc., 351 F.3d 1229 (D.C. Cir.
2003), cert. denied, 125 S. Ct. 309 (2004); 125
Gk er ED wacbdocdeuncscoccttsds gene 9
Rupp & Wittgenfeld Co. v. Elliott, 131 F. 730 (6th
Sk C4 saat dus uchodéeeanvaseeseunaseces 26
Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d
DP , De oc ckuvhetdeuedvstessedwe 17
Sony Corp. of America v. Universal City Studios, Inc.,
Pe Ee GE CUUEPED b 6 ccescecectecdsoncece< passim
Thomson-Houston Elec. Co. v. Ohio Brass Co.,
Dt, SE OEOE cvuscdsedtnesduenes 27
Twentieth Century Fox Film Corp. v. Does 1-/ 2,
No. C 04-04862 (N.D. Cal. Nov. 16, 2004) .... 9
Universal City Studios, Inc. v. Sony Corp. of America,
480 F. Supp. 429 (C.D. Cal. 1979) ............ 22-23
STATUTES
SP en UE oo cbaveccadadéed sceeeceesess 27

Vv

Cited Authorities
Page
OTHER AUTHORITIES

William J. Adkinson, Liability of P2P File-Sharing
Systems for Copyright Infringements by their Users,
Prooress ON Point (The Progress & Freedom
Foundation Mar. 2004) @vailable at http://
www.pff.org/publications/ip/pop! 1.7p2psystems.

GE bvccdeadsnecdnetnnnd bees tareianueeas 19

Administrative Office of the U.S. Courts, Table C3
- U.S. District Courts-Civil Cases Commenced,
by Nature of Suit and District, During 12-Month
Period Ending September 30, 2003, 2003 Judicial
Business (available at http://www.uscourts.gov/
judbus2003/appendices/c3.pdf) .............. 8

Stacey L. Dogan, /s Napster a VCR? The Implications
of Sony for Napster and Other Internet Technologies,
$2 Hastincs L.J. 939 (2001) ..................20, 21

Jane Ginsburg, Copyright Use and Excuse on
the Internet, 24 Corum. V.L.A. J.L. & Arts 1
GREE si CobcccubendedvesiatedaSessaenbabe 23

The Intentional Inducement of Copyright Infringements
Act of 2004: Hearing on S. 2560 Before the Senate
Comm. on the Judiciary, 108th Cong. (2004)
(statement of the Hon. Marybeth Peters,
Register of Copyrights, U.S. Copyright Office)
(available at http://www.copyright.gov/docs/
PEED nea csencdévedscectiuct 6, 11, 25

vi

Cited Authorities

Tony Smith, RJAA Sues 754 More P2Pers, Tut REGISTER
(Dec. 17, 2004) (available at http://www .theregister.
co.uk/2004/12/17/riaa_sues 754/) .............

Alex Veiga, Moviemakers to Sue Internet Pirates;
Studios Follow Path of Music Industry, Cut.
Tris., Nov. 5, 2004 (available at 2004 WL

PPASST ISD cc ccccscccccccscccsecseosecteses

Fred Von Lohmann, JAAL (] Am A Lawyer): Peer-to-
Peer File Sharing and Copyright Law After Napster
(2001) at “Lessons and Guidelines for P2P
Developers” (available at http://www.gtamarketing.
com/P2Panalyst/VonLohmann-article.html) .... ..

Fred Von Lohmann, JAAL (1 Am A Lawyer): What Peer-
to-Peer Developers Need to Know about Copyright
Law (Sept. 2004) (available at http//www.efforg/

Page

IP/P2P/2f=p2p copyright wp _v4.html) ...... 15, 16, 17

Brief of Appellee Grokster, Ltd., Metro-Goldwyn
Mayer Studios, Inc. v. Grokster, Ltd., No. 03-

55894, 2003 WL 22762385 (9th Cir. filed Sept.
YR Pe

Reply Brief of Petitioners, Sony Corp. of Am. v.
Universal City Studios, Inc., No. 81-1687, LEXsee

1981 U.S. BRIEFS 1687 (filed Dec. 3, 1982) ...

23

INTERESTS OF AMICI CURIAE'

Amici are twelve separate organizations that represent
thousands of members whose 'ivelihoods or businesses depend
upon effective copyright protection. Those members include
individuals and corporate entities involved in creating and
making available to the American public a wide variety of
copyrighted works — motion pictures, television programming,
sports programming, literary works, interactive video games
and photographic art. Amici's members are subject to the same
Internet piracy that plagues the motion picture and music
industry Petitioners and that the Ninth Circuit, in its decision
below, effectively permits to continue. Amici's primary purpose
in submitting this brief is to draw the Court’s attention to the
practical implications of the decision below and to suggest an
alternative approach for resolving the issues raised by
Respondents’ facilitation of that piracy.

Amici Office of the Commissioner of Baseball, National
Basketball Association, and National Football League represent
clubs engaged in professional sports. The professional sports
clubs and leagues are responsible for the production of, and
own the copyrights in, various audio and video products that
they seek to market to the public, over the Internet and otherwise.
Increasingly, however, these products are distributed illegally,
and free of charge, over Internet file-sharing services, thereby

1. Letters from all parties consenting to the filing of this brief are
on file with the Clerk of the Court. No person or entity, other than Amici,
their members and their counsel, made a monetary contribution to the
preparation or submission of this brief. No counsel for a party in this
matter authored this brief in whole or in part. Counsel for Amici represent
certain of the Petitioners and the Recording Industry Association of
America in matters other than this case, and they represent certain of
the Amici in matters in addition to this case.

2

impairing Amici's ability to engage in an important segment of
their business.

Amicus the Producers Guild of America, Inc. represents
motion picture, television and new media producers.
The members of Amicus the Independent Film & Television
Alliance distribute internationally (and often produce and
finance) the motion pictures and television programming that
are created outside of the seven major United States studios,
including such recent films as the Lord of the Rings trilogy,
Chicago, Cold Mountain, Lost in Translation, Monster, The
Passion of the Christ, Shakespeare in Love, Whale Rider and
Traffic. The income that the members of these Amici receive is
tied directly to sales of DVDs and other video products — the
very sales that are displaced by illegal file-sharing.

Amici the Association of American Publishers, Inc., the
Association of American University Presses, and The Authors
Guild, Inc. represent the creators and distributors of various
types of literary works. Amicus the Graphic Artists Guild
represents, among others, illustrators and cartoonists whose
creative efforts appear in such works and other media. Illegal
file-sharing has adversely impacted the efforts of these Amici
to create a legitimate and robust electronic book market.

Amicus Entertainment Software Association represents
companies that, among other things, publish and sell mteractive
entertainment software (including video and computer games).
Infringing distribution of entertainment software, through peer-
to-peer networks and otherwise, costs legitimate software
vendors billions of dollars in lost sales, robbing game developers
and the game industry of revenue that could be used to
underwrite the creation and marketing of an even wider array
of game titles.

3

Amici the Professional Photographers of America, Inc. and
the American Society of Media Photographers, Inc. represent
the copyright interests of photographers working in a wide range
of media and industries. Illegal file-sharing poses particularly
significant risks for publication photographers and other small
copyright owners whose livelihoods depend to a substantial
degree upon commercial exploitation of their creative works.

SUMMARY OF ARGUMENT

The fundamental issue raised by this case is whether
copynght protection will have any practical meaning in a digital
environment — where Internet “file-sharing” services (without
compensating or obtaining the consent of copyright owners)
permit the virtually effortless and anonymous worldwide
distribution of perfect copies of copyrighted works.

1. There is no dispute that such unauthorized file-sharing
constitutes copyright infringement, which is committed on a
daily basis by millions of people “who are ignorant or more

disdainful of copyright and in any event discount
the likelihood of being sued or prosecuted for copyright
infringement.” Jn re Aimster Copyright Litig., 334 F.3d 643,
645 (7th Cir. 2003) (Posner, J.), cert. denied, 504 U.S. 1107
(2004) (“Aimster’’). Nor is there any dispute that “peer-to-peer”
file-sharing services, such as those offered by Respondents, are
used overwhelmingly for purposes of copyright infringement.
These services profit handsomely from, and would have no
commercial business but for, that infringement. And they take
affirmative steps to ensure that such infringement continues.
Nevertheless, in the decision below, the Ninth Circuit Court of
Appeals held that peer-to-peer services, by simply switching
from a centralized index of files to a decentralized index of
files (a process invisible and meaningless to an Internet user),
can avoid secondary liability for facilitating hundreds of millions

4

of acts of online copyright infringement. See Metro-Goldwyn
Mayer Studios, Inc. v. Grokster, Ltd., 380 F.3d 1154 (9th Cir.
2004), aff’g Metro-Goldwyn Mayer Studios, Inc. v. Grokster,
Lid., 259 F. Supp. 2d 1029 (C.D. Cal. 2003) (“Grokster”).

2. Over twenty years ago, in a very different factual context,
the Court formulated principles to determine whether a
manufacturer of a product that facilitates copynght infringement
is secondarily liable for that infringement. See Sony Corp. of
Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (“Sony-
Betamax”). The Court did so by striking a careful “balance
between a copyright holder’s legitimate demand for effective —
not merely symbolic — protection of the statutory monopoly,
and the rights of others freely to engage in substantially unrelated
areas of commerce.” /d. at 442. The Ninth Circuit decision below
upsets that balance and seriously erodes the value of copyright
protection in a digital world.

That decision leaves the copyright community with an
untenable Hobson’s choice for responding to the literally
millions of daily acts of infringement that the peer-to-peer
services make possible — either flood the federal courts with
numerous “John Doe” lawsuits against individual infringers
(as some copyright owners have already been forced to do) or
permit that infringement to go unchallenged and allow the value
of their works to bleed away. But the very reason that the courts
developed the secondary copyright liability doctrine was to avoid
imposing such a burden on copyright owners and the federal
judicial system and to ensure protection of rights guaranteed by
the Constitution and the Copyright Act. Engaging in costly and
burdensome litigation against a multitude of individual
infringers is simply not a viable option for Amici. Consequently,
the decision below, if allowed to stand, will deprive numerous
copyright owners of an effective means to prevent and to remedy
countless acts of copyright infringement.

5

The decision below also has the perverse effect of
discouraging peer-to-peer services from acting responsibly by
taking steps that could reduce or even eliminate online
copyright infringement, while rewarding those services with
copynght immunity when they refuse or fail to take such actions.
The decision provides peer-to-peer services with a detailed blueprint
for devising a system that evades all liability and equitable relief
for facilitating copyright infringement on an unprecedented scale.
There are several steps peer-to-peer services can reasonably take
(and should take) that would significantly minimize the scope of
online copyright infringement and that would not interfere with
the comparatively de minimis amount of lawful file-sharing
they may make possible. They can take these steps because
(unlike the Betamax manufacturer) they maintain an ongoing
ability to separate infringing and noninfringing uses. The Ninth
Circuit, however, improperly deemed such steps to be “irrelevant.”

3. The Seventh Circuit Court of Appeals has taken a
different, and mure responsible, approach than the Ninth Circuit to
In Aimster, the Seventh Circuit affirmed the district court’s
determination that the peer-to-peer services in that case are
secondarily liable for the infringement they facilitate. In doing so,
the Seventh Circuit concluded:

Even when there are noninffinging uses of an Internet
file-sharing service, moreover, if the infringing uses
are substantial then to avoid liability as a contributory
infringer the provider of the service must show that it
would have been disproportionately costly for him to
eliminate or at least reduce substantially the infringing
uses.

334 F.2d at 653; see also id. at 648 (requiring a showing that

the “detection and prevention of the infringing uses would be

highly burdensome”’).

6

The above approach is consistent with the Court’s decision
in Sony-Betamax and the patent law “staple article of commerce”
doctrine that the Court adapted to copyright law in
Sony-Betamax. Most importantly, the Seventh Circuit approach
is faithful to the balance that the Court struck in Sony-Betamax,
and it addresses the matter that Amici believe should be of
principal concern here. It provides peer-to-peer services with
an incentive (rather than a disincentive) to take reasonable steps
that eliminate or at least minimize the amount of online copyright
infringement — and thereby reduces the need for copyright
owners to initiate (and for the courts to deal with) burdensome
litigation against numerous individual infringers.

4. As the Court noted in Sony-Betamax, “the concept of
contributory infringement is merely a species of the broader
problem of identifying the circumstances in which it is just to
hold one individual accountable for the actions of another.”
464 U.S. at 435. See also Mercoid Corp. v. Mid-Continent Inv.
Co., 320 U.S. 661, 667 (1944) (Frankfurter, J., dissenting)
(noting that “the doctrine of contributory infringement is an
expression both of law and morals”). In its decision below, the
Ninth Circuit has adopted an approach that, as the Register of
Copyright has suggested, “fails to see the forest for the trees’”
and thus loses sight of the principles of justice and moral
responsibility underlying Sony-Betamax and the doctrine of
secondary copyright liability. On the other hand, the Seventh
Circuit in Aimster has adopted a sound and balanced approach
that both makes sense and effectuates these underlying policies.
Amici strongly urge the Court to reverse the decision below and

2. The Intentional Inducement of Copyright Infringements Act of
2004: Hearing on S. 2560 Before the Senate Comm. on the Judiciary,
108th Cong. 13 (2004) (statement of the Hon. Marybeth Peters, Register
of Copyrights, U.S. Copyright Office) (hereinafter “Register’s
Statement”) (available at http://www.copyright.gov/docs/
regstat072204.html) (referring to the district court decision in this case).

7

to adopt the Seventh Circuit approach in dealing with the
secondary copyright liability of peer-to-peer file-sharing
services.

Amici do not believe the courts should discourage
including innovations that facilitate the lawful sharing of
information over the Internet. Nothing in the Seventh Circuit
approach would have such a discouraging effect. In contrast, by
immunizing enterprises like those of Respondents from
secondary copyright liability — enterprises that the record amply
demonstrates were designed and operated with the knowledge
that they would be employed overwhelmingly to facilitate
copyright infringement — the Ninth Circuit did nothing to
promote technology. Indeed, as discussed below, one of the
unfortunate aspects of the Ninth Circuit’s decision would be its
elimination of incentives for genuine technological creativity.

ARGUMENT

I. THE DECISION BELOW, IF ALLOWED TO STAND,
WILL BURDEN THE JUDICIAL SYSTEM WITH
MULTIPLE INDIVIDUAL INFRINGEMENT
ACTIONS AND WILL DEPRIVE COPYRIGHT
OWNERS OF A MEANINGFUL REMEDY
FOR MILLIONS OF ACTS OF COPYRIGHT
INFRINGEMENT
1. The Ninth Circuit’s decision below provides copyright

owners with only one, highly unsatisfactory option for seeking

redress for the hundreds of millions of acts of copyright
infringement that are facilitated by Respondents’ services —
lawsuits against a multitude of individual infringers. That is the
course of action that the recording and motion picture industries
have pursued since the district court in this case first absolved
Respondents from secondary liability. During the past year,

8

record companies have filed copyright infringement actions
against more than 7,700 individual infringers.’ Had each
individual been sued separately, as some courts have required
(see infra page 9), the number of cases generated by that
litigation alone would equal the total number of all other
copyright, trademark and patent lawsuits in the federal court
system for the year ending September 30, 2003.‘ The motion
picture industry also has sued hundreds of individual infringers.°
The experience derived from such litigation highlights the
serious problems with the decision below — both from the
copyright owners’ perspective and from the perspective of
judicial administration.

Copyright owners have faced significant and costly
obstacles in pursuing individual infringers. It is, of course,
difficult to identify those infringers because file-sharing services,
such as those operated by Respondents, are designed to enable
their users to act anonymously or pseudonymously. The
difficulties have been exacerbated by judicial decisions that
preclude copyright owners from taking advantage of provisions
in the Digital Millennium Copyright Act that require Internet
service providers to identify specific infringers in response to

3. See Tony Smith, RIAA Sues 754 More P2Pers, Tt REGISTER
(Dec. 17, 2004) ( available at http://www .theregister.co.uk/2004/12/17/

riaa_sues_754/).

4. See Administrative Office of the U.S. Courts, Table C3 - U.S.
District Courts-Civil Cases Commenced, by Nature of Suit and District,
During 12-Month Period Ending September 30, 2003, 2003 Judicial
Business (available at http://www.uscourts.gov/judbus2003/appendices/
c3.pdf).

5. See Alex Veiga, Moviemakers to Sue Internet Pirates; Studios

Follow Path of Music Industry, Cui. Tris., Nov. 5, 2004, at 5 (available
at 2004 WL 97456770).

9

requests from copyright owners.’ Copyright owners have thus
been forced to file cumbersome “John Doe” suits and then serve
subpoenas (often contested) to obtain the infringers’ identities.

The Electronic Frontier Foundation, which represents one
of the Respondents in this appeal, has conjured a plethora of
arguments designed to make the prosecution of these actions
even more problematic for copyright owners. See, e.g., http://
www.eff.org/IP/P2P/Fonovisa_v_Plank/plank_answer.pdf
(raising twenty-two separate defenses to a John Doe copyright
infringement action). For example, these arguments have
convinced some courts to rule that copyright owners may not
bring one action seeking the identities of multiple “John Doe”
customers of a single internet service provider, but rather
must initiate a separate action against each individual infringer.’
Decisions such as these have imposed considerable and
unnecessary costs on both copyright owners and the judicial
system — all as a result of the decisions below.

6. See In re Charter Comms. Inc., Subpoena Enforcement Matter,
__ F.3d __, 2005 WL 15416 (8th Cir. 2005); Recording Indus. Ass'n of
Am., Inc. v. Verizon Internet Servs., Inc. , 351 F.3d 1229 (D.C. Cir. 2003),
cert. denied, 125 §. Ct. 309 (2004); 125 S. Ct. 347 (2004).

7. See In e Cases Filed by Recording Companies, Case Nos.
A-04-CA-550 LY, A-04-CA-636 SS, A-04-CA-703 LY, A-04-CA-704
LY (W.D. Tex. Nov. 17, 2004) (prohibiting joinder and requiring that
four actions be refiled as 254 separate John Doe actions); BMG Music v.
Does 1-203, Civil Action No. 04-650, 2004 WL 442626 (E.D. Pa. Mar.
5, 2004) (prohibiting joinder and requiring 203 separate John Doe
actions); /nterscope Records v. Does 1-25, No. 6:04-CV-197-ORL-22-
DAB (M.D. Fla. Apr. 27, 2004) (prohibiting joinder and requiring
separate John Doe actions); Twentieth Century Fox Film Corp. v. Does
1-12, No. C 04-04862 (N.D. Cal. Nov. 16, 2004) (permitting discovery
against Doe | and staying action against Does 2-12 because joinder
improper), aff'd on recon., (Dec. 1, 2004). Copies of these orders may
be found at http://www.eff.org/IP/P2P/?f=riaa-v-thepeople.html and
http://www.eff.org/IP/P2P/ MPAA_v_ThePeople/.

10

2. The possibility of instituting individual copyright
infringement actions against a multitude of individuals engaged
in unlawful file-sharing is not a practicable option for Amici
and their members. And, while major motion picture and record
companies have filed lawsuits against thousands of individuals,
they are certainly not able to litigate against all of the millions
of individuals engaged in online copyright infringement.
The costs and burdens of litigation against multiple John Doe
infringers — as reflected in the recording and motion picture
industries’ experience — are overwhelming. Particularly for many
small and individual copyright owners, it is not practicable,
financially or otherwise, to bring enforcement actions against
users of file-sharing technology. Deprived of any practical
remedy to protect their copyright interests against the onslaught
of file-sharing technology, many copyright owners find their
copyrights virtually useless in a digital environment and their
ability to exploit and protect their work seriously endangered.
As the Court has recognized, the endangerment of the protection
of copyrighted works is tantamount to the endangerment of the
creation of those works. See Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 349 (1991).

The very purpose of the copyright secondary liability

doctrine is to avoid precisely such burdensome litigation that

renders impracticable the enforcement of copyright rights.
As the Seventh Circuit in Aimster observed:

Recognizing the impracticability or futility of a
copyright owner’s suing a multitude of individual
infringers (“chasing individual consumers is time
consuming and is a teaspoon solution to an ocean
problem”), ... the law allows a copyright holder to
sue a contributor to the infringement instead, in effect
as an aider and abettor.

11

334 F.3d at 645-46 (citation omitted). Cf Dawson Chem. Co. v.
Rohm & Haas Co., 448 U.S. 176, 188-89 (1980) (explaining
that the protection afforded by the contributory infringement
doctrine in patent law “is of particular importance in situations
. . . Where enforcement against direct infringers would be
difficult’); Aro Mfg. Co. v. Convertible Top Replacement Co.,
377 U.S. 476, 511 (1964) (purpose of patent contributory
infringement doctrine is “to provide for the protection of patent
rights where enforcement against direct infringers is
impracticable . . .””) (citation omitted).

The ability to make use of the secondary copyright liability
doctrine is particularly significant in the digital context where
millions of individuals routinely engage in copyright
infringement on an anonymous or pseudonymous basis. As the
Register of Copyrights has observed, the secondary copyright
liability doctrine is

critical to the effective functioning of our copyright
system, and even more so in the new digital
environment. [That doctrine] allow[s] copyright
owners to focus their enforcement (and licensing)
efforts on those entities that foster infringing activity
and have the resources and wherewithal to either
pay licensing fees or satisfy an infringement
judgment, without bringing costly, time-consuming

and usually futile actions against multiple, mostly

judgment-proof individual defendants.
Register’s Statement, supra note 2, at 2 (emphasis added).
The decision of the Ninth Circuit below improperly deprives
copyright owners of the ability to rely upon the secondary
liability docirine. In doing so, it effectively deprives copyright
owners of any viable means to redress numerous acts of online
infringement.

12

ll. THE DECISION BELOW, IF ALLOWED TO STAND,
WILL HAVE THE COUNTERPRODUCTIVE
EFFECT OF REWARDING PEER-TO-PEER
SERVICES THAT REFUSE TO TAKE
REASONABLE STEPS TO PREVENT OR TO
REDUCE MASSIVE AMOUNTS OF COP %.GHT
INFRINGEMENT AND RESULTING LITIc * clON
AGAINST MULTIPLE INDIVIDUAL INFRINGERS
The economic model of Respondents’ business is simple —

Respondents’ services, the more money Respondents make.

Respondents profit by selling advertising that reaches computer

users while they are committing infringement with the aid of

the file-sharing software Respondents provide free of charge.

Grokster, 259 F. Supp. 2d at 1044; Pet. at 4. That model has

been quite successful. Hundreds of millions of files have been,

and continue to be, traded using peer-to-peer software. While
some individuals may use that software for lawful file-sharing
of public domain or authorized works, the vast majority (over

90%) of peer-to-peer file-sharing is indisputably illegal.

Grokster, 380 F.3d at 1158; Pet. at 9. Under these circumstances,

there is certainly no economic incentive for Respondents or other

peer-to-peer services to take reasonable actions that minimize

the level of copyright infringement. Nor is there any legal
incentive to do so under the decision below.

1. A separate Ninth Circuit panel required a peer-to-peer
service to take such action in A&M Records, Inc. v. Napster,
Inc., 239 F.3d 1004 (9th Cir. 2001) (“Napster I), and A&M
Records, Inc. v. Napster, Inc., 284 F.3d 1091, 1098 (9th Cir.
2002) (“Napster I”) (“Napster must do everything feasible to
block files from its system which contain noticed copyrighted
works.”). The Seventh Circuit did likewise in Aimster. See infra
pp. 18-19. But the panel below chose a different path.

13

Following the Ninth Circuit’s decisions in Napster,
mandated in those decisions to control infringement. Instead,
Respondents chose to structure their system so that (as one of
the Respondents’ counsel had suggested in his widely-circulated
“legal primer”) they could demonstrate “plausible deniability”
of knowledge, and control, of the infringement they facilitate —
sufficient to “convince a judge” that monitoring and blocking
are not possible.* Respondents thereby sought to capitalize on
copyright infringement, and thus maximize their revenues,
without incurring liability for that infringement. See Grokster,
259 F. Supp. 2d at 1046 (acknowledging that Respondents “may
have intentionally structured their businesses to avoid secondary
from the illicit draw of their wares”); Register’s Statement, supra
note 2, at 17-18 (explaining how Respondents’ software is
programmed to ensure that users “share” as many files as
possible without regard to their copyright status).

According to the Ninth Circuit, Respondents found the key
to circumventing the Napster decisions — avoid the use of central
servers with indices of the files residing on their users’
computers. Such decentralization does not result in any reduction
in the amount of infringement that Respondents induce; nor
does it sever the connection between Respondents and users.
After all, Respondents need to keep serving advertisements to
the users to keep their lucrative income stream flowing.
However, in mcving to a decentralized system, Respondents
sought to diminish their ability to stop the infringement they

& See Fred Von Lohmann, JAAL (I Am A Lawyer): Peer-to-Peer
File Sharing and Copyright Law After Napster (2001) at “Lessons and
Guidelines for P2P Developers,” paras. | & 3 (@vailable at http://
www.gtamarketing.com/P2Panalyst/V onLohmann-article.html).

14

knew was occurring. Thus, decentralization provided
Respondents with the level of “plausible deniability” that was
necessary to “convince” at least the Ninth Circuit not to impose
secondary liability.

2. Even under Respondents’ decentralized architecture,
Respondents know very well how to prevent content from
reaching their users when they want to block that content. For
example, Respondents routinely filter out files containing
pornographic material or viruses. They also have blocked or
hindered the distribution of “bogus” (incomplete) files that some
copyright owners have attempted to make available to frustrate
infringement. See Pet. at 7-8 & n.4, 11-14.

Petitioners introduced considerable evidence below that
Respondents likewise could have blocked files containing
copynghted works that were not authorized for distribution over
Respondents’ network, e.g., by employing filtering,
“digital fingerprinting” or “meta data” screening technology.
Compare Napster II, 284 F.3d at 1098-99 (affirming order that
Napster not operate without an appropriate filtermg mechanism).
The district court, however, ruled that evidence “immaterial”
to its analysis, without even considering the feasibility and
efficacy of any of the blocking methods. See Grokster,
259 F. Supp. 2d at 1045; see also id. at 1046 (court “need not
decide whether steps could be taken to reduce the susceptibility
of [Respondents’] software to unlawful use ...”). The court of
appeals agreed, deeming “irrelevant” the measures that
Respondents could have taken to minimize copyright
infringement. Grokster, 380 F.3d at 1166.

The Ninth Circuit below attached significance to the fact.

Respondent Grokster lacked a “registration and log-in process”
which could have been used to block known infringers’ access
to the network. /d. at 1165. Grokster, however, originally

employed such a process and disabled it only after the litigation

15

below was commenced. Pet. at 7. The Ninth Circuit also attached
significance to the fact that Respondent Streamcast chose not
to have a licensing agreement with any of its users (id.), thus
encouraging all peer-to-peer services to put themselves in a
position where they supposedly have no legal right to terminate
infringing users.

3. The decision below sends a clear message to peer-to-
peer services that wish to build their businesses on copyright
infringement. Under the Ninth Circuit approach, peer-to-peer
services need not be concerned about taking any actions that
would minimize the scope of the copyright infringement they
make possible. Under that approach, they can escape liability
for facilitating hundreds of millions of acts of copyright
infringement as long as they take steps designed to distance
themselves from the nght and ability to control that infringement
— notwithstanding that they retain the nght and ability to deliver
advertisements, to block pornographic content and to filter out
anti-infringement methods employed by copyright owners.

The most recent version of the “legal primer” for peer-to-
peer services authored by one of Respondents’ counsel elaborates
on this message, providing the following “advice” on how to

* “fYjou can either include mechanisms that

enable monitoring and control of user activities
(and use them to stop allegedly infringing
activity when you receive complaints), or choose
a truly decentralized architecture that will
convince a judge that such monitoring and

9. Fred Von Lohmann, /AAL (1 Am A Lawyer): What Peer-to-Peer
Developers Need to Know about Copyright Law (Sept. 2004) ( available
at http://www.eff.org /IP/P2P/?f=p2p_copyright_wp_v4.html) (“2004
P2P Primer”).

16

control is impossible without extensive
redesign.” 2004 P2P Primer at V.2 (emphasis
added).

“[A] P2P developer would be wise to choose
an architecture that will convince a judge that
control over end-user activities is impossible.”
Id.

“If you want to avoid monitoring obligations,
you'll have to give up on anything that smacks
of ‘control.”” Jd. at V.3.

“The key here is to let go of any control you
may have over your users — no remote kill
switch, automatic update feature, contractual
termination rights, or other similar
mechanisms.” /d.

“{P}rudence suggests that vendors give anything
that smacks of ‘control’ a wide berth.” /d.
“Separate different functions and concentrate
your efforts on a discrete area. A
disaggregated model .. . may limit what a cout

can order you to do to stop infringing activity
by your users. As the Napster court recognized,
you can only be ordered to police your own
‘premises’ — the smaller it is, the less you can
be required to do.” /d at V.6.

“Although end-user agreements (‘EULA’) are
ubiquitous in the software world .. . they may
leave the impression that a vendor has the legal
right to stop users from using the software [for
infringement]. P2P software vendors should
consider distributing their code without a

17

EULA. Even without a EULA, a software
developer retains all of the protections of

copyright law to prevent unauthorized
duplication and modifications.” Id. at V.8

(emphasis added).

As the above suggests, peer-to-peer services inherently have
the “power to police carefully the conduct” of their users. Sony-
Betamax, 464 U.S. at 438 n.18, quoting Shapiro, Bernstein &
Co. v. H.L. Green Co., 316 F.2d 304, 308 (2d Cir. 1963);
see also Sony-Betamax, 464 U.S. at 438 n.18, citing Gershwin
Publ'g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159,

1163 (2d Cir. 1971) (attaching significance to the fact that the
defendant was ‘in a position to police the infringing conduct’)
(emphasis added). However, the decision below encourages
peer-to-peer services to do what they can to distance themselves
from that power — or at least create “plausible deniability” — in
order to absolve the services of responsibility for the
which they profit.

Amici submit that the Ninth Circuit approach is unwise and
inconsistent with the policies underlying the Court’s decision
in Sony-Betamax. See infra pp. 19-20. The proper balance is
one that encourages (rather than discourages) peer-to-peer
services to minimize copyright infringement while still
preserving their right to facilitate whatever lawful file-sharing
may exist over their networks. Imposing secondary liability on
“simply encourage” them to exercise their inherent “power to
police,” “thus placing responsibility where it can and should be
effectively exercised.” Sony-Betamax, 464 U.S. at 438 n.18,
quoting Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d
304, 308 (2d Cir. 1963).

18

iil. AS THE SEVENTH CIRCUIT HAS CONCLUDED,
PEER-TO-PEER SERVICES SHOULD BE
SECONDARILY LIABLE FOR THE MASSIVE
COPYRIGHT INFRINGEMENT THEY FACIL-
ITATE, ABSENT A SHOWING THAT IT WOULD
BE DISPROPORTIONATELY COSTLY FOR THEM
TO ELIMINATE OR TO REDUCE SUBSTAN-
TIALLY THAT INFRINGEMENT

Amici believe that the decision of the Seventh Circuit Court
of Appeals in Aimster provides an appropriate approach for
dealing with the secondary liability of peer-to-peer services.
In Aimster, the Seventh Circuit affirmed a district court’s ruling
that certain peer-to-peer services are secondarily liable for the
infringements they facilitate, concluding:

Even when there are noninfringing uses of an Internet
file-sharing service, moreover, if the infringing uses
are substantial then to avoid liability as a contributory
infringer the provider of the service must show that
it would have been disproportionately costly for him
to eliminate or at least reduce substantially the
infringing uses.
334 F.3d at 653; see also id. at 648 (requiring a showing that
the “detection and prevention of the infringing uses would be
highly burdensome”).

The Seventh Circuit approach focuses on the feasibility of
actions that peer-to-peer services can take to reduce, if not
eliminate, the amount of infringing activity that occurs with the
software they provide. And, unlike the approach of the Ninth
Circuit below, it provides an incentive for peer-to-peer services
to take that action. If these services fail to take the infringement-
minimizing actions that they are reasonably capable of taking
(if they instead attempt merely to create “plausible deniability”),

19

they will be held secondarily liable for the infringements they
cause. The Seventh Circuit approach would thus help achieve
the goal of reducing the massive amount of online infringement
caused by Respondents and other peer-to-peer services without
the need for costly and burdensome litigation against multiple
individual infringers. See generally William J. Adkinson,
Liability of P2P File-Sharing Systems for Copyright
Infringements by their Users, ProGress ON Pont (The Progress
& Freedom Foundation Mar. 2004) (discussing advantages of
Seventh Circuit approach) @vailable at http://www.pff.org/
publications/ip/pop | 1.7p2psystems.pdf).

1. Amici believe that the Seventh Circuit approach should
be adopted by the Court because it effectuates the policies
underlying the balance that the Court struck in Sony-Betamax.

The Court in Sony-Betamax was confronted with competing
policy considerations. The Court recognized that when a charge
of contributory infringement is based on the sale of an article of
commerce used to infringe, “the public interest in access to that
article of commerce is necessarily implicated.” 464 U.S. at 440.
The Court also noted a concern about “enlarging the scope” of
copyright protection to “encompass control over an article of
commerce that is not the subject of copyright protection.”
Id. at 421. Nevertheless, the Court made clear that “adequate

protection of 2 monopoly may require the courts to look beyond

actual duplication of a device or publication to the products or

activities that make such duplication possible.” Jd. at 442.
The Court in Sony-Betamax thus sought to

strike a balance between a copyright holder’s
legitimate demand for effective — not merely
symbolic — protection of the statutory monopoly, and
the nghts of others freely to engage in substantially
unrelated areas of commerce.

20

Id. at 442. See Stacey L. Dogan, /s Napster a VCR? The
Implications of Sony for Napster and Other Internet
Technologies, 52 Hastincs L.J. 939, 942, 959 (2001)
(The Court’s objective in Sony-Betamax was not “merely to
insulate new technologies. Its objective was to strike a balance
between the incentive structure of copyright, on the one hand,
and the integrity of ‘substantially unrelated areas of commerce,’
on the other. ... As the Supreme Court recognized, the public
does not always benefit when technology prevails over
copyright.”) (citations omitted).

Likewise, the Seventh Circuit in Aimster recognizes that,
absent imposition of secondary liability on peer-to-peer operators
that facilitate massive amounts of infringement, copyright
owners would have no practicable means of protecting their
copyrights in a digital environment; they would be left with
merely “symbolic protection,” 464 U.S. at 442, and their
incentive to create new works would be impaired. At the same
time, the Seventh Circuit simply requires that the peer-to-peer
operator take reasonable action to eliminate or to reduce
infringement; it does not preclude the operator from offering
its service to the public for lawful file-sharing. Where the relief
sought by copyright owners does not, as under the Seventh
Circuit approach, seek to preclude the use of a product for lawful
purposes, the Court’s concerns with protecting access to that
product are not implicated. See S. Dogan, supra, 52 Hastincs
LJ. at 956.

Respondents, of course, may be concerned about the
commercial viability of their services if they offer file-sharing
for only lawful purposes. But if Respondents’ services must
rely upon massive infringement as their primary use, then
Respondents are not “engage[{d] in a substantially unrelated area
of commerce.” 464 U.S. at 442. And the Court’s concern in
Sony-Betamax offers them no sanctuary. As one commentator

21
has noted, “if a product is so integrally related to infringement

that a market for it would never have developed absent
infringement, there is no ‘substantially unrelated’ market with
which courts must not interfere.” S. Dogan, 52 Hastincs L.J. at
943; see also id. at 958 (“A business enterprise whose raison
d'etre is infringement owes it to those who effectively fund its
operation to share in [its] proceeds.”).

2. Amici believe that the Seventh Circuit approach also
should be adopted by the Court because it would create the
appropriate economic incentives for finding a technological
solution to the vexing problem of Internet piracy.

As new generations of digital media are developed — Blu-
Ray discs, HD-DVDs, Dual Discs and their eventual successors
— content owners and providers such as Amici will be able to
employ new encryption and digital rights techniques to protect
their content from unauthorized distribution. Under the Seventh
Circuit approach, peer-to-peer services would be required to
respect these new techniques only if it was reasonable for them
to do so, thereby creating an incentive for technology developers
to make these techniques easier and cheaper to employ. This
should lead in time to a substantial decline in piracy, with little
cost or burden on peer-to-peer services, funded primarily by
the copyright owners who would benefit.

The Ninth Circuit approach, however, by effectively making
willful blindness and evasion a legal defense to contributory
infringement, would eliminate the need for peer-to-peer services
to make any effort to adopt new technology, and would thereby
discourage content owners from making the investment
necessary to find better solutions for protecting content. Even
if better solutions to content protection could be developed, peer-
to-peer services would seem to have an indefinite license to
ignore them, locking in Internet piracy as a permanent social
and economic problem.

22

3. The Seventh Circuit’s focus on the practical ability to
reduce or to eliminate copyright infringement is applicable only
where the defendant satisfies the Sony-Betamax staple article
test. For the reasons advanced by Petitioners, see Pet. at 20-24,
Amici do not believe that Respondents meet that test.
Respondents nevertheless have claimed that the Court in Sony-
Betamax foreclosed any inquiry into whether defendants meeting
that test can operate in a way that minimizes infringement.
According to Respondents, the only relevant inquiry under Sony-
Betamax is whether they offer a staple article capable of
substantial non-infringing uses. For several reasons,
Respondents are wrong.

First, Respondents’ argument is predicated solely upon
Justice Blackmun’s dissenting opinion in Sony-Betamax. Justice
Blackmun did suggest that a “jamming” device might have been
employed by broadcasters to prevent unauthorized home-
recording and that the Betamax could be sold without a “tuner.”
See 464 U.S. at 492 n. 42 & 494 (dissenting opinion). But the
majority in Sony-Betamax “did not discuss these possibilities.”
Aimster, 334 F.3d at 648. That lack of discussion does not mean,
as Respondents suggest, that the Court ruled irrelevant evidence
of whether the defendant could take reasonable actions to
eliminate or to reduce copyright infringement; it simply means
that the majority did not address the issue of alternative designs.
See Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176,
194 n.12 (1980) (“failure to discuss” suggests that the Court
“simply chose not to address a matter that had not been fully
presented”) (citation omitted).

It is not surprising that the majority in Sony-Betamax chose
not to deal with the legal significance of these alternative designs.
The district court specifically found, as a matter of fact, that
these alternative designs were impractical. See Universal City
Studios, Inc. v. Sony Corp. of Am., 480 F. Supp. 429, 462 (C.D.

23

Cal. 1979) (noting that a jamming system would “most likely
require the cooperation of many others: broadcasters, producers
and perhaps the Federal Communications Commission”);
id. at 435 (finding that tuners could be purchased separately
even if they were not originally included with the Betamax).
The Court thus resolved Sony-Betamax on the basis that it would
not be possible to both protect the copyright owners’ works and
permit non-infringing uses to continue. See 464 U.S. at 441
n.21 (noting that the plaintiffs in that case sought to declare all
VCRs “contraband”.

As one commentator has noted, the determination in Sony-
Betamax of

contributory infringement entailed an all-or-nothing

outcome; if the manufacturers were held liable, then

no machine could be distributed, despite its capacity

for non-infringing uses; if no liability, then the

machine can be distributed, despite its capacity for

infringing uses. Splitting the difference by limiting

distribution of the machine to a class of non-

infringers was not a possibility.
Jane Gmsburg, Copyright Use and Excuse on the Internet, 24
Cotum. V.L.A. J.L. & Arrs 1, 37 (2000) (further noting that
with Napster the “differences could be split; the online
technology makes possible the confinement of the service to a
class of non-infringers”). See also Reply Br. of Pets. in
Sony-Betamax, LEXsee 1981 U.S. BRIEFS 1687, at 7 (filed
Dec. 3, 1982) (stating that the “underlying important question
of federal law to be resolved implicitly by this decision is
whether the American public can be deprived of the technical
advance of home VTR reception of free off-the-air TV by two
copyright owners who voluntarily commingle their
programming with all other TV programming .. . [where] the
bulk of TV programming is available for unchallenged Betamax
reception”).

24

Second, the Court itself in Sony-Betamax suggested that
the staple article of commerce doctrine does not provide the
exclusive basis for determining secondary copyright liability.
The Court made clear that “the concept of contributory
infringement is merely a species of the broader problem of
identifying the circumstances in which it is just to hold one
individual accountable for the actions of another.” 464 U.S. at
435. Given the particular “circumstances” before it, the Court
in Sony-Betamax chose to borrow from patent law’s staple article
of commerce doctrine to determine secondary liability. But the
circumstances surrounding peer-to-peer services are dramatically
different than those that were present in Sony-Betamax and upon
which the Court based that choice:

* As the Court noted in Sony-Betamax, “the
average member of the public uses a VIR
principally” for lawful time-shifting. 464 U.S.
at 421. In contrast, at least 90% of the activity
on Respondents’ services involved copyright
infringement. Pet. at 9.

* The Court in Sony-Betamax noted that the
“only contact between Sony and the users of
the Betamax that is disclosed by this
record occurred at the moment of sale;” there
was no “ongoing relationship” between the
manufacturer and the infringer. 464 U.S. at 437-
38. In contrast, Respondents maintain such an
ongoing relationship with their users. See Brief
of Appellee Grokster, Ltd. at 39, Metro-Goldwyn
Mayer Studios, Inc. v. Grokster, Ltd., No. 03-
55894, 2003 WL 22762385 (9th Cir. filed Sept.
17, 2003) (noting that “of course” Grokster
“maintains an{] ongoing relationship with its
users ...”). Indeed, Respondents’ business

25

depends on continually serving advertisements
to their users.

The Court in Sony-Betamax emphasized that
that case did not involve any “issue concerning
the transfer of tapes to other persons.” 464 U.S.
at 425. In contrast, this case involves the
unauthorized distribution of perfect copies of
copynghted works to millions of computer users
around the world. See Register’s Statement,
supra note 2, at 6 (“In my view, if the VCR had
been designed in such a way that when the
consumer merely turned it on, copies of all the
programs he recorded with it were immediately
made available to every other VCR in the world,
there is no doubt the Sony decision would have
gone the opposite way.”).

The Court in Sony-Betamax emphasized that
that case involved only the private copying of
programs “broadcast on the public airwaves
without charge to the viewer” and not the
copying of programs transmitted for a fee on
pay or cable television. 464 U.S. at 421. In
contrast, this case involves the copying and
distribution of copyrighted works that the
owners market to the public for a fee.

In Sony-Betamax, it was not possible for Sony
to separate infringing from non-infringing uses
of the Betamax. That is not the case here. See
supra pp. 22-23.

Given these fundamental differences in the factual
circumstances between Sony-Betamax and the present case, it
does not follow that the only “just” basis, 464 U.S. at 437-38,

26

for imposing secondary liability on Respondents is the staple
article of commerce doctrine. As the Seventh Circuit has
properly concluded, justice (under the circumstances of this case)
requires imposing liability on Respondents and other peer-to-
peer services when they fail or refuse to take reasonable actions
to minimize the extraordinary level of copyright infringement
that they induce — regardless of whether Respondents also may
facilitate an incidental amount of lawful file-sharing. That
approach strikes the same “balance” the Court sought to strike
in Sony-Betamax.

Third, the Seventh Circuit approach — which permits a
finding of contributory liability where there are non-infringing
uses if the infringing uses are substantial — is consistent with
the patent law staple article of commerce doctrine. Historically,
a showing that an article used to infringe a patent was a “staple”
with substantial non-infringing uses simply supported an
inference as to a lack of “intent” on the part of the defendant.
But even where that showing was made, other conduct could
support a finding as to the requisite intent:

The presence or absence of the element of substantial

noninfringing use is significant principally in

determining whether there is an intention to infringe.

The absence of a substantial noninfringing use, of

course, warrants the inference of an intention to

infringe... . As to situations in which intention is
clearly established by other evidence, there is some
indication that suitability for noninfringing use is
no defense.
Fromberg, Inc. v. Thornhill, 315 F.2d 407, 414 n.20 (Sth Cir.
1963) (emphasis added) (citations omitted). See also Rupp &
Wittgenfeld Co. v. Elliott, 131 F. 730, 733 (6th Cir. 1904) (where
an inference as to intent cannot be drawn because the article

27

was “adapted to other uses,” the “‘intention to assist in
infringement must be otherwise shown affirmatively .. . ”),
quoting Thomson-Houston Elec. Co. v. Ohio Brass Co., 80 F.
712, 723 (6th Cir. 1897) (Taft, J.).

Consistent with the Seventh Circuit approach in Aimster,
courts in contributory patent infringement cases have considered
whether the defendants could take reasonable steps to eliminate
the infringing aspects of staple products. For example, in
Imagexpo, LLC v. Microsoft Corp., 284 F. Supp. 2d 365 (E.D.
Va. 2003), the defendant argued that it was entitled to summary
judgment because the allegedly infringing products (certain
software applications) were included in a suite or package of
software that had substantial noninfringing uses within the
meaning of 35 U.S.C. § 271(c). The court denied defendant’s
as to “substantial noninfringing use” (such as whether removal
of the offending applications from the suite would eliminate
infringement). As the court concluded:

“Additional functions in a device that practices a
patented method do[] not diminish direct
infringement and, therefore, the fact that the device
sold has other functions which are performed
simultaneously with the patented method does not
otherwise substantiate a noninfringing use for the
purposes of § 271(c). This rule flows directly from
the logic of patent laws. To hold to the contrary
would allow sellers of products that are clearly
intended to infringe a patented method to avert
liability simply by adding functions to that device.”

284 F. Supp. 2d at 368 (emphasis added), quoting Oak Indus.,
Inc. v. Zenith Elecs. Corp., 697 F. Supp. 988, 995 (N.D. Ii.

1988); accord, Philips Elecs. N. Am. Corp. v. Contec Corp.,
No. Civ A. 02-123-KAJ, 2004 WL 1622442 at *4-5 (D. Del.
July 12, 2004) (ordering defendant to remove the infringing

28

methods from its remote control that had noninfringing uses).
See also Oak Indus., supra, 697 F. Supp. at 996 (questioning
whether a “simple change ‘n design” would eliminate
infringement of the patent and further suggesting that the result
in Sony-Betamax might have been “different if reasonably
uncomplicated technology permitted a Betamax to differentiate
between temporary recovery for time-shifting and permanent
preservation of copynghted material”).

CONCLUSION

For the foregoing reasons, Amici respectfully urge the Court
to reverse the judgment below and to adopt the approach of the
Seventh Circuit in Aimster in determining the secondary
copynght liability of peer-to-peer services such as Respondents.
Peer-to-peer services should be secondarily liable forthe massive
that it would be disproportionately costly for them to eliminate
or to reduce substantially that infringement.

Respectfully submitted,
Ropert ALAN GARRETT
Counsel of Record
Gary GERTZ0G HapriaN R. Katz
Senior Vice President of STEVEN R. ENGLUND
Business Affairs and MicuHe.e J. Woops
Generali Counsel CHRIST OPHER WINTERS
NATIONAL FooTBALL LEAGUE ARNOLD & Porter LLP
280 Park Avenue 555 12th Street, N.W.
New York, NY 10017 Washington, D.C. 20004
(212) 450-2000 (202) 942-5000
Counsel for Amicus Counsel for Other Amici

National Football League

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0043%3A71. Public record. Not legal advice.