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Contributory infringement is a doctrine of intellectual property law, stating that a person can infringe another's intellectual property by contributing to a third party's infringement. Although the most famous contributory infringement cases (VCRs and Napster) have arisen under copyright law, the doctrine also applies to patents and trademarks.

Contributory infringement of copyrights

In copyright law, contributory infringement is a common law doctrine. The basic statement of the doctrine is found in Gershwin Publishing Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159 (2d Cir. 1971):

One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a "contributory" infringer.

There is also a closely related doctrine of vicarious infringement, which historically applied in two situations: making employers liable for the infringement of their employees, and making landlords liable for the infringement of their tenants. It is often found next to contributory infringement in copyright cases, but is not the same thing.

Contributory infringement comes up on its own in cases involving technology that can be used to copy things. Some of those technologies:

1. The VCR. The most famous contributory infringement case was Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984), centering on the Sony Betamax VCR (then known as a VTR). The Court was deeply split on the issue, but a 5-4 majority decided that Sony was not liable for contributory infringement. "The sale of copying equipment," wrote Justice John Paul Stevens, "like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial noninfringing uses." The Court went on to find that "time shifting," the act of videotaping a broadcast to watch it later, was a form of fair use even if unauthorized, and therefore not infringing. This got Sony off the hook, and allowed VCRs to enter just about every American living room.

2. The internet. When you think about it, the World Wide Web is a giant copying machine. Internet service providers were very worried early on about getting hit for contributory infringement, since it's easy to break copyright online, and almost as easy to unknowingly implicate yourself in the infringement by operating a server or a service provider. Congress addressed this in the Digital Millennium Copyright Act of 1998, which created a "safe harbor" for ISPs and server operators, protecting them from contributory infringement as long as they (1) have a policy of terminating users who are repeat copyright infringers, (2) adopt standard copyright protection measures, and (3) register an agent with the Copyright Office to receive infringement claims from copyright owners. The safe harbor applies to systems involved in the routing, storing, caching, and linking of copyrighted data.

3. The MP3 player. The Rio 300 came out in 1998, and it was something of a small miracle back then, holding an hour's worth of MP3 audio files on a little hard drive. The RIAA wanted it dead, and they sued to stop its distribution. But when the case hit the Ninth Circuit in 1999, the court extended the doctrine of Sony, writing that "space shifting"—taking one's legally owned music and putting it on another device for personal use—was totally legitimate and constituted a substantial noninfringing use. This decision paved the way for Apple to get rich on the iPod, and for everyone to own tiny boxes that carry a ton of music.

4. File sharing. MP3 files created many more problems for copyright law. After the Rio case, several websites specializing in MP3s, such as MP3Board and MyMP3, fell to contributory infringement liability. So did Napster, on the grounds that Napster could "see" every peer to peer connection being made through its servers, could tell that loads of copyrighted content was being transferred back and forth, and was doing nothing at all to police its content. When Napster was unable to effectively police its content, it had to declare bankruptcy to avoid further liability. The cases of two decentralized systems, Grokster and Morpheus, made it to the Supreme Court in 2005, and the Court ruled that they were completely different from Sony in that the defendants had a "purpose to cause and profit from third-party acts of copyright infringement." But the legality of today's file sharing programs like BitTorrent is still debatable...

Contributory infringement of patents

Patent law recognizes contributory infringement in a federal statute, 35 U.S.C. ยง 271(c):

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

One example of this arose in the late 1980s between two makers of perfusion catheters, a device used in angioplasty operations. Manufacturer A had obtained a patent for the use of the catheter in angioplasties, but the catheter itself was not patented. Manufacturer B continued to sell their catheter, which was more or less the same product. A number of doctors used B's catheter to perform angioplasties, despite the fact that this was patent infringement. B had to prove that their catheter had substantial noninfringing uses in order to avoid a finding of contributory infringement.

In patent law, there is also a closely related doctrine of inducement—if you induce someone to infringe a patent, you are also liable for infringement. This can happen if, for instance, a consultant "designs" something for a company, and that something turns out to be patented. In such a case, the company would infringe the patent by using the product, but the consultant would also infringe by inducement.

Contributory infringement of trademarks

It's a bit harder to contribute to trademark infringement, although contributory infringement cases have been successfully brought under trademark law.

One instance is when a commercial tenant is selling counterfeit goods. Ralph Lauren was able to bring a successful suit against a building owner in New York's Chinatown for contributory infringement after one of the stores in the building was found selling counterfeit Polo products.

Contributory infringement was also an early legal solution to cybersquatting, when someone bought a domain name corresponding to a trademark that wasn't theirs. A person could bring suit against the registrar for contributory infringement of the trademark. Nowadays, there are specialized statutes and dispute resolution procedures that make this type of claim unnecessary.

Sources

  • Merges et al., Intellectual Property in the New Technological Age (3d ed., Aspen 2003)

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