Professional Documents
Culture Documents
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16. Religious Tech. Ctr. v. Netcom On-line Commcn. Servs., Inc., 907 F. Supp. 1361 (N.D.
Cal. 1995).
17. See id. at 1365-66.
18. See generally Dratler Cyberlaw, supra note 12 at 5A.02 (introduction). The two
leading cases are Buck v. Jewell-La Salle Realty Co., 283 U.S. 191, 198-99 (1931) (hotel proprietor
that tuned in on commercial broadcast for commercial purposes necessarily assume[d] the risk
that in so doing he may infringe the performing rights of another), and De Acosta v. Brown, 146
F.2d 408, 410, 411-12, 63 U.S.P.Q. (BNA) 311 (2d Cir. 1944), cert. denied, 325 U.S. 862 (1945)
(upholding infringement liability of allegedly innocent publisher who relied on infringing authors
impressive research and contractual warranties of original work).
19. Netcom, 907 F.Supp. at 1370 (Although copyright is a strict liability statute, there should
still be some element of volition or causation which is lacking where a defendants system is merely
used to create a copy by a third party).
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In other words, the theory that every operator of every node on the
Internet independently caused the infringement by allowing infringing
copies to pass through its system would have extended liability too far
and impaired the economic viability of the Internet. Somewhere, Judge
Cardozo was smiling.
The Netcom Court also addressed secondary liability for copyright
infringement. In its view, the lens of secondary liability was a better one
with which to examine the case.23
Yet the law of secondary liability complicated the picture, for it
involved two separate tests, each with two parts. A defendant was liable
for contributory infringement if he (1) knew or should have known of
the infringement and (2) made a material contribution to it.24 He was
liable for vicarious infringement if he (1) had the right and ability to
control the infringement; and (2) derived a direct financial benefit from
it.25 The Netcom Court found that the ISPs, which had charged users
only general monthly fees, independent of what the users viewed or
downloaded, derived no direct financial benefit from the infringement.
Therefore it granted the defendants summary judgment on the vicarious
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prove that eBay continued to supply its service to sellers whom eBay
knew to be selling actual counterfeits.34
But here again the court could have reached the same result more
easily by applying the universal tort doctrine of proximate cause. As the
court described in elaborate detail,35 both parties had made considerable
effort to curtail traffic in counterfeit Tiffany products by third-party
sellers on eBay. But Tiffany had had little more than the equivalent of
one full-time employee36 doing policing and had generated 284,139
notices of infringement.37 For its part, eBay had responded to virtually
every notice by removing the auction listing for the infringing item,
refunding sellers fees, and, in many cases, reimbursing buyers of
counterfeit products.38 For over a year, the parties had cooperated
amicably to curtail infringement of Tiffanys trademarks through eBays
auction services.39
As the court itself noted,40 the crux of the dispute was eBays
refusal to comply with Tiffanys demand that eBay automatically
remove any sellers listing of five or more Tiffany items, or any amount
of silver Tiffany items, even before receiving evidence that the items
were counterfeit. The court found insufficient evidence that eBays
failure to follow these proposed rules permitted any more infringement
than the considerable effort that eBay already took.41 It also found
evidence that Tiffanys proposed rules would be overinclusive, i.e.,
would prevent some eBay sellers from selling legitimate merchandise.42
Based on these factual findings, the court could have held that eBays
failure to follow these rules was no proximate cause of the third parties
infringement.
The Ninth Circuits decision in Perfect 10 v. VISA43 was another
missed opportunity to clarify the law of proximate clause in the digital
age. There an on-line purveyor of copyrighted images of feminine
Inwood. See Tiffany Inc., 576 F. Supp. 2d at 502-03 (rejecting the standard of Restatement (Third)
of Unfair Competition 27 (1995)).
34. Tiffany Inc., 576 F. Supp. 2d at 491.
35. Id. at 486-93.
36. See infra note 70 and accompanying text.
37. See Tiffany Inc., 576 F. Supp. 2d at 489-90.
38. See id. at 478-79.
39. See id. at 481-83.
40. See id. at 482-83.
41. See id. at 481-83, 488-90.
42. See id. at 487-88.
43. Perfect 10, Inc. v. Visa Intl Serv. Assn, 494 F.3d 788, 793 (9th Cir. 2007).
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foreign and beyond the jurisdiction of U.S. courts, and it seemed that
stopping on-line payment was the only practical way to shut the foreign
infringers down.53 Finally, the plaintiff alleged that the defendant, which
had a general rule against serving illegal enterprises,54 and which in
fact had used that rule against illegal offshore online gambling, profited
mightily by declining to assert the same rule against the massive and
deliberate copyright infringement for profit at issue here.55 The
allegations suggested that the defendants failure to invoke that rule was
not just a but for causebut a key contributing causeof the
continuing infringement.56
As Judge Kozinski pointed out,57 one or more of these allegations
might have failed at trial, but the very purpose of a trial was to test them.
In affirming dismissal of the claims on the pleadings, the majority took a
narrow approach reminiscent of its similar technology-based analysis in
Grokster.58 There the Ninth Circuit had focused primarily on the lack of
a centralized index for infringing material that defendants could control;
it had given short shrift to defendants methodical, deliberate and
successful plan to take over Napsters 50-million-plus deliberately
infringing users after copyright litigation had put Napster out of
business.59 The Supreme Court repudiated that failure to see the big
picture, inventing a new, inducement theory of secondary liability in
the process.60
53. See id. at 817-20 (After all, how many consumers would be willing to send a check or
money order to a far-off jurisdiction in the hope that days or weeks later they will be allowed to
download some saucy pictures?).
54. See id. at 717-18 & n.13. See also id. at 824 (Credit cards already have the tools to
police the activities of their merchants, which is why we dont see credit card sales of illegal drugs
or child pornography).
55. See id. at 820.
Read fully and fairly, the complaint alleges that defendants are not merely passive
providers of services available on equal terms to legal and illegal businesses alike; they
are actually in cahoots with the pirates to prop up their illegal businesses and share their
ill-gotten gains. If this is not vicarious infringement, nothing is.
Id.
56. See id. at 816 (Defendants know about the infringements; they profit from them; they are
intimately and causally involved in a vast number of infringing transactions that could not be
consummated if they refused to process the payments; they have ready means to stop the
infringements).
57. See id. at 818 n.15, 824.
58. See Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 380 F.3d 1154, 1158-60 (9th
Cir. 2004), vacated and remanded, 545 U.S. 913 (2005).
59. See Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 924, 939-40
(2005); see also Dratler, Statutory Sea, supra note 13, at 430 (discussing Grokster).
60. See Grokster, 545 U.S. at 936-37, 941.
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Although neither the Tiffany majority nor the dissent ever quite said
so explicitly, the implication was clear: Tiffany was the least-cost
avoider. It might have substantially reduced infringing activity with
comparatively little extra expense. Under those circumstances, to
require eBay to do even more, while Tiffany was doing relatively little,
would have violated basic principles of proximate cause and produced
economic waste.
In VISA, the principle of least-cost avoider could have been even
stronger. The plaintiffs allegations suggested that interrupting online
credit-card payments was not just the best way, but the only practical
way, of stopping infringement. Many of the direct infringers operated
abroad, beyond the reach of U.S. law. While corresponding foreign law
might have made foreign legal action possible in theory, the mobility
and guile of infringing businesses abroad made it impracticable. A
pirate needed no more than a laptop, a high capacity disk drive, and
access to the Internet to run a highly profitable business of selling
infringing images. He did not even need a server system; he could
continue his piracy (and move its locus around at will) by uploading his
infringing images and payment software to any one of thousands of
Internet-connected server systems available on line, worldwide. Under
these circumstances, there appeared to be no practical way of stopping
the piracy other than stopping on-line payment.
Without that remedy, plaintiffs right to quiet enjoyment of its
copyright became illusory, in violation of the sacred principle of AngloAmerican law: no right without a remedy. As for the least-cost avoider,
the credit card systems in VISA may have been not just the least
expensive avoiders, but the only practical ones.
Before we close this discussion of proximate cause, an additional
observation is in order. Two of the cases mentioned in the invitation to
this ForumGlenayre72 and Quanta Computer73involved the
venerable doctrine of patent exhaustion, i.e., the so-called first sale
doctrine in patent law.74 The doctrine, which is over 150 years old, is
72. Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851 (Fed. Cir.), cert. denied, 549 U.S. 1030
(2006).
73. Quanta Computer, Inc. v. LG Elecs., Inc., 128 S. Ct. 2109 (2008).
74. See Glenayre Elecs., Inc., 443 F.3d at 863-64 (applying doctrine indirectly to corroborate
holding that patentee that had sued and recovered damages for manufacturers unauthorized making
and sale of patented products could not also recover separately for their use by manufacturers
customer); Quanta Computer, Inc., 128 S. Ct. at 2117-18, 2121-22 (holding that the authorized
sale of an article that substantially embodies a patent exhausts the patent holders rights and
prevents the patent holder from invoking patent law to control postsale use of the article[,] even if
the patent covers only a method).
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See also Glenayre Elecs., Inc., 128 S.Ct. at 2115 (The longstanding doctrine of patent exhaustion
provides that the initial authorized sale of a patented item terminates all patent rights to that item).
See generally, 2 JAY DRATLER, JR., LICENSING OF INTELLECTUAL PROPERTY, 7.05 [hereinafter,
Dratler Licensing].
75. See supra note 74.
76. See Dratler Licensing, supra note 74, at 7.05, page 5-6.
77. Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).
78. For a complete discussion why both Sony and Grokster were federal-common-law
decisions, and not examples of applying or interpreting statutes, see Dratler, Statutory Sea, supra
note 13, at 418-35, n.37.
79. See Grokster, 545 U.S. at 936 (For the same reasons that Sony took the staple-article
doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a
sensible one for copyright. We adopt it here . . .).
80. See Grokster, 380 F.3d at 1154, 1157-60, vacated and remanded, 545 U.S. 913 (2005).
See also supra text accompanying notes 57-60.
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89. See Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 308 (2d Cir. 1963)
(imposing vicarious liability upon department store for concessionaires sales of bootleg records
where store reserved right to supervise and dismiss concessionaires employees and took 10-12 %
of its sales revenue as concession fee).
90. Both practical and jurisprudential problems arise when courts receive abstract statements
of the holdings of precedents as if they were statutory prescriptions adopted by Congress after
hearings, investigation and due democratic deliberation. See Dratler, Statutory Sea, supra note 13,
at 422-29.
91. Shapiro, 316 F.2d at 308 (2d Cir. 1963).
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92. See supra note 83. Other forms of IP also have some special rules, but they are mostly
limited to particular factual situations. See, e.g., Lanham Act 32(2), 15 U.S.C. 1114(2) (special
limitations on secondary liability for trademark infringement of printers, publishers, domain-name
registrars, and makers of technologies for blanking undesired portions of audiovisual works).
93. For a rant on how lobbyists turned simple, basic principles into the statutory monstrosities
of Sections 512 and 1201 of the Copyright Act, see generally Dratler, Cyberlaw, supra note 12, at
3.02, 6.01[5], 6.07[2].
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94. See Dratler, Statutory Sea, supra note 13, at 421-22 n.37.
95. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 395 (2006) ([T]he decision
whether to grant or deny injunctive relief rests within the equitable discretion of the district courts,
and . . . such discretion must be exercised consistent with traditional principles of equity, in patent
disputes no less than in other cases governed by such standards). See generally, Jay Dratler, Jr.,
eBays Practical Effect: Two Differing Versions, 2 AKRON INTELL. PROP. L.J. 37-40 (2008).
96. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 737-38 (2002)
(rejecting Federal Circuits formalistic rule that any amendment to any patent claim creates a
complete bar to applying the doctrine of equivalents to amended claim elements, and opting for a
more flexible rule).
97. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 S. Ct. 764, 774 & n.11, 777
(2007) (rejecting Federal Circuits formalistic conclusion that courts lack Article III jurisdiction
over a patent licensees declaratory-judgment challenge to a licensed patent when the license is
unbreached, and repudiating the reasonable apprehension of suit rule on which that conclusion
was based).
98. For discussion of a counterexample from the difficult field of detainee treatment, see Jay
Dratler, Jr., A Brief Lament on Hamdan, 5 & n.11 (Univ. of Akron Legal Studies Research,
Working
Paper
No.
06-14,
2006),
available
at
http://papers.ssrn.com/sol3/
papers.cfm?abstract_id=913822 (noting that the Supreme Courts various opinions collectively
subsumed over eight times the length of our entire Constitution, including amendments and obsolete
provisions).
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