This article is written by Triveni Singal, pursuing a Diploma in Intellectual Property, Media, and Entertainment Laws from LawSikho.
Among the various kinds of intellectual property rights, copyrights are one. A copyright subsists in any original literary, artistic, dramatic, musical works, cinematograph films, and sound recordings (Section 13 of the Copyright Act, 1957). It confers exclusive rights on the copyright owner regarding the reproduction, translation, adaptation, sale, performance in public, etc. of the copyrighted work, or authorizing someone else to do them (Section 14 of the Copyright Act, 1957.)
Copyright infringement occurs when a third person uses/exploits the copyrighted work without the authorization or consent of the copyright owner (Section 51 of the Copyright Act, 1957). For example, the inclusion of any copyrighted artistic work in a film without authorization from the copyright owner amounts to infringement. Contributory copyright comes into play when a party has induced or substantially contributed to copyright infringement by another party. In this article, we will focus on the concept of contributory infringement, discussing it in the light of case laws with a special emphasis on the case of Harold Davis vs. Pinterest.
What is copyright infringement?
Copyright infringement can further be divided into two categories depending on the intriguing party;
- Direct/primary infringement- As the name suggests, here the infringer is directly involved and is himself carrying out the acts leading to copyright infringement.
- Indirect/secondary infringement- Here, the infringer either assists indirectly or receives benefits from copyright infringement. It can further be classified into two kinds;
- Vicarious infringement,
- Contributory infringement.
In the case of Perfect 10 v. Amazon.com (487 F.3d 701 (9th Cir. 2007), 731), the court stated that the fundamental difference between the two kinds of secondary infringement is that contributory infringement is grounded on the infringer’s failure to preclude its own actions which facilitated third party infringement, on the other hand, if the infringer is unable to stop the third party from continuing their directly infringing activities, he may be liable for vicarious infringement.
Thus, contributory copyright infringement can be said to be based on the principle that if someone indirectly contributes to infringement, he should be held liable. In other words, a person will be liable under this, if he intentionally induces or encourages another person’s direct infringement, either through personal assistance/conduct or by providing the requisite materials and machinery.
Elements of contributory copyright infringement
Essential elements that must be proved for a successful claim of contributory copyright infringement are;
- There has been a direct infringement by a primary infringer.
- The accused/defendant had knowledge of such infringement: A general knowledge regarding the occurrence of any infringement activity or while such an activity is in the process is not sufficient.
- The accused/defendant materially contributed to the infringement: Here, the court investigates whether the defendant had provided fundamental service to the infringer which facilitated the infringement activity, or whether he was just a “passive conduit”.
The following landmark judgments and the recent case of Pinterest on contributory copyright infringement provide a greater understanding of the concept.
Landmark judgements on digital contributory copyright infringement
Staple article of commerce doctrine
This doctrine was applied in the case of Sony Corp. of America v. Universal City Studios Inc. (Sony Betamax Case) (464 U.S. 417 (1984)). According to this doctrine, if the defendant established that the product was “capable of substantial” or “commercially significant non-infringing uses”, it would be sufficient to defeat a claim of contributory copyright infringement. This doctrine, therefore, restricts liability to cases of grave fault rather than the mere understanding that one’s products could be misused. The Betamax videotape recorders were held to have substantial non-infringing use.
Therefore, the U.S. Supreme Court denied that the sale of videotape recorders amounted to contributory copyright infringement liability even though the defendant knew the machines were used to infringe because such constructive knowledge of the infringing activity could not be imputed from the fact that Sony knew the recorders, as a general matter, could be used for infringement.
A&M Records Inc v. Napster
This case stated that for proving contributory infringement, a plaintiff must show that the defendant had knowledge of the infringement, and not particularly knowledge of specific acts of infringement. The concept of “specific knowledge” was highlighted in this case on the ground that for contributory liability, the infringer must know/have reason to know about the direct infringement taking place. Therefore, in certain cases constructive knowledge would be sufficient, but not in cases where “substantial non-infringing use” was involved. The court affirmed that in the digital context, evidence of actual knowledge of specific acts of infringement is mandatory to be established.
Metro-Goldwyn-Mayer v Grokster Ltd.
One of the main issues, in this case, was whether the mere existence of a product’s non-infringing uses could be sufficient to protect a software distributor from indirect infringement liability.
The court relied on the principle that when someone distributes a device to expand its use to infringe copyright, he shall be liable for the resulting acts of infringement by acts of infringement of any third parties. If the evidence showed is beyond the characteristics of the product/knowledge that it can be used for infringing acts to statements/actions leading to the promotion of infringement, Sony’s doctrine would not be applied to prevent liability.
This case gave rise to two kinds of contributory infringement, firstly, where infringement is actively induced/encouraged through specific acts, and secondly, where products (not capable of substantial non-infringing uses) are distributed for infringement.
However, the extent of applicability of Sony’s doctrine in the products that passively allow infringement and the extent of non-infringing uses that must exist for being safeguarded by the doctrine remains unclear.
Perfect 10, Inc. v. Giganews, Inc.
In this case, it was held that direct infringement mandates causation/volitional conduct by the defendant. Further, it was also clarified that a computer system operator would be liable under the “material contribution” theory only if firstly, it has actual knowledge that using its system a specific infringing material is available, secondly, it can take steps to prevent it but it does not and continues to provide access to infringing works.
Harold Davis v. Pinterest, Inc.
Facts and background
This case was filed by Harold Davis (plaintiff), a reputed digital artist and professional photographer against Pinterest (defendant), an online platform wherein users can create their own “virtual” boards by “pinning” or attaching images to their boards. These images can either be the user’s original captures/pictures or they can be copied from other sources on the internet.
The plaintiff alleged the following against the defendant;
- There is no screening system employed by the defendant to screen the “Pins” for copyright notices or other indications of copyright ownership associated with the ‘pinned’ images.
- Instead, the defendant commercializes those images by displaying and distributing them to its users, which are incorporated with targeted advertisements.
- Users can also download the images easily through the platform, which can subsequently be displayed by the user on their own web pages.
- The defendant deliberately removes signs of copyright ownership to render its paid advertisement more effective and to actively oppose the efforts of copyright owners, to police the misuse of their works on and through the platform.
- There are many instances where the plaintiff’s federally copyrighted images have been used by the defendant to market goods and services.
Thus, based on these allegations, the plaintiff filed a complaint on November 20, 2019, accusing the defendant liable for both direct and contributory copyright infringement by third parties. Defendant subsequently moved to dismiss the plaintiff’s contributory infringement claim which was granted by the court.
The plaintiff then presented an amended complaint on March 11, 2020, wherein an additional claim of violation of the Digital Millennial Copyright Act, and to bring the action on behalf of a putative class was added. Again the defendant moved to dismiss the contributory infringement claim, and the court granted the motion on July 22, 2020.
Plaintiff, therefore, filed his second amended complaint on November 11, 2020, and the defendant again moved to dismiss the contributory infringement claim, which has once again been granted by the court through this present order.
The legal standard on which the complaint has been dismissed as the Federal Rule of Civil Procedure 8(a) which mandates a complaint to contain a short and plain statement of the claim showing that the pleader is entitled to relief. Therefore, a defendant may seek to dismiss the complaint about failing to state a claim upon which relief can be granted under Rule 12(b) (6).
The court relied on the following precedents in this regard;
- Mendiondo v. Centinela Hosp. Med. Ctr. (521 F.3d 1097, 1104 (9th Cir. 2008))- If a complaint lacks a cognizable legal theory or sufficient facts to support a cognizable legal theory, it is liable to be dismissed under Rule 12(b)(6).
- Bell Atl. Corp. v. Twombly (550 U.S. 544, 570 (2007))– The plaintiff need only plead sufficient facts to state a claim to relief that is plausible on its face for surviving Rule 12(b)(6).
- Ashcroft v. Iqbal (556 U.S. 662, 678 (2009))– A claim becomes facially plausible when the court can draw the reasonable inference that the defendant is liable for the misconduct alleged from the factual contents of the plaintiff’s pleading.
- Manzarek v. St. Paul Fire & Marine Ins. Co. (519 F.3d 1025, 1031 (9th Cir. 2008))– While considering the plausibility of a complaint, the court shall assume the factual allegations to be true and construed the pleadings in the light most favourable to the nonmoving party.
- In re Gilead Scis. Secs. Litig. (536 F.3d 1049, 1055 (9th Cir. 2008) (quoting Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001))– However, merely conclusive facts, unwarranted deductions of fact, or unreasonable inferences shall not be accepted as true allegations by the court.
Now that we understand when a complaint is liable to be dismissed, let’s study why the present complaint (particularly the claim of contributory copyright infringement) by the plaintiff was dismissed by the court.
The defendant has continuously challenged the plaintiff’s second cause of action for contributory copyright infringement. The plaintiff in the present case alleges both material contribution and inducement to establish the defendant’s liability, both of which were challenged.
The defendant contended that the plaintiff had not alleged that the defendant had actual knowledge of specific acts of third-party infringement (reference was made to the Amazon case and Giganews case described above), which was admitted by the plaintiff.
However, the plaintiff relied on constructive knowledge and willful blindness, both adequately alleged, as sufficient to stage the said allegations (The plaintiff cited two cases to support his argument that constructive knowledge is sufficient, first Erickson Prods., Inc. v. Kast (921 F.3d 822 (9th Cir. 2019)) and A&M Records, Inc. v. Napster, Inc.(supra)).
However, the plaintiff had not alleged that the defendant had knowledge (actual/constructive) of the specific acts of infringement. The plaintiff in his complaint pointed out photographs that were available on the defendant’s website but does not allege that the defendant knew or had a reason to know of them. Further, the legal notices sent by the plaintiff also do not specify any specific acts of infringement, although the defendant also sought them including reference files of the images that the plaintiff wanted to be removed which was not provided by the plaintiff.
Regarding the allegation of the plaintiff regarding willful blindness by the defendant, it is a settled principle that for this claim to be successful the plaintiff must allege that;
- The defendant subjectively believed that infringement was occurring on their platform and,
- The defendant still took deliberate actions to avoid learning about such infringement (Luvdarts, LLC v. AT & T Mobility, LLC, 710 F.3d 1073 (9th Cir. 2013)).
But here also, specific acts of infringement to which the defendant was willfully blind must be shown and not just to general copyright infringement (Willful blindness of specific facts would establish knowledge for contributory liability. (emphasis added).
However, in this case, the plaintiff fails to furnish factual support for his allegations and to show how the defendant was willfully blind. The allegations only indicate that the defendant operates a platform indifferent to the risk of copyright infringement generally and to the difficulty copyright holders may have in identifying misuse of their works.
Thus, the court concluded that the plaintiff had inadequately alleged that the defendant had knowledge of the infringement, which leads to the failure of his claim for contributory copyright infringement.
Thus, this case also emphasizes that knowledge (actual/constructive) of specific acts of infringement is crucial for a successful claim of contributory copyright infringement. The court has also elaborately elucidated the reasons that led to the failure of the plaintiff’s claim.
Further, the court enumerated what should have been pleaded instead for a successful claim, which would act as a guiding tool for future lawsuits against Pinterest or other such platforms.
There is no mention of secondary liability in either the U.S. Copyright Act or the Indian Copyright Act. From the first case in 1971 (Gershwin Publishing Corp v Columbia Artists Management Inc (443 F 2d 1159, 1162 (2d Cir 1971), 14 ALR Fed 819, 170 USPQ 182) where the concept of contributory copyright infringement was articulately expressed, to the recent Pinterest order, the concept has evolved continuously through the various court judgments and orders.
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