FEATURE

The Future of P2P File Sharing -
Implications of Sharman and Grokster*

Some see illegal peer-to-peer (‘P2P’) file-sharing as an evil that must be stamped out with rigorous copyright enforcement; others see it as heralding a new commercial reality that businesses must adjust to and adopt to effectively tackle infringement. The copyright owner’s interests have to be measured against freedom of information, privacy concerns and the need to promote technology and innovation. It is the composing of these various interests into an acceptable equation that presents the greatest difficulties.

 

Introduction

Peer-to-peer (‘P2P’) file sharing is so prevalent today that it is estimated that illegal file sharing traffic is at rate a 40 to 50 times the traffic of legitimate sites.1 Tracking services show that in September 2005, the average number of people logged onto P2P networks worldwide was over nine million – double the number from two years earlier2 – with access to over a billion music files.3 Indeed, some view file sharing as an irreversible trend that should not be outlawed but instead managed in other ways in order to harness maximum benefit for both the user and copyright owner.4 Opinions run the gamut but the two extreme ends respectively urge the outlawing of any device or system that can be abused by users to directly infringe copyright and the absolute protection of such device or system that shows the potential to be used in a lawful manner. 

 

With it has come a series of litigation in the USA, UK and Australia against direct and contributory infringers. In P2P file sharing, the technology provider’s potential liability comes to the fore. When the users use the software being distributed to unlawfully exchange copyrighted music files, would the software distributor/technology provider be indirectly liable for such copyright infringement by its users? Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (Australian Federal Court) (‘Sharman’)5 and MGM Studios v Grokster Ltd (US Supreme Court) (‘Grokster’)6 have found the software distributor/technology provider liable for secondary copyright infringement. 

Background

File sharing system

A P2P file sharing system can be set up in various ways. 

1    Centralised system: the distributor maintains on its server an index of the available file names of online users.7 

 

2    Decentralised system: searching, file transferring and locating other users are carried out without the help of the software provider or its server nor the establishment of intermediaries.8

 

3    Supernode (or ‘distributed’) network model used in both Sharman and Grokster. An intermediate system where a select number of users’ computers on the network are designated as supernodes or indexing servers to keep an index of available files. The actual files available for downloading are kept in the respective users’ computers. 

 

For the decentralised and the intermediate systems, even if the central server was shut down, ‘users of [the software] products would continue sharing files with little or no interruption’.9

The Australian position

Sharman Networks Ltd (‘Sharman’) operated the Kazaa Internet P2P file sharing system and distributed its Kazaa software free to users. ‘Blue files’ were stored in a My Shared Folder in each user’s computer. The system directed a user’s search request via a supernode that searched through indices of all current blue files available in other users’ My Shared Folders. The requesting party then downloaded the desired file for free directly from the My Shared Folder of the other user. Paid website advertising constituted the main source of Sharman’s revenue. Through a tie-up with Alnet Inc (‘Alnet’), the Kazaa network offered other works made available by licence with copyright owners. These works were called ‘gold files’.

 

The copyright owners sued Sharman, Alnet and related companies, as well as the CEOs and key technology personnel who were alleged to have control over the operations and file sharing policies of the Kazaa network.

 

Sharman was liable for authorising users’ primary copyright infringement as Wilcox J found ‘something more’ than mere provision of facilities for copyright infringement. There was positive conduct by Sharman, including promotion of its website as a file sharing facility. There was also a marked failure to install any sort of filtering devices at all, due to a financial motive in increasing file sharing.

The US position

Grokster, Ltd. and StreamCast Networks, Inc distributed free software products allowing users to share electronic files by the users’ computers communicating directly with each other. Communications were not dependent on and did not go through a central server. It was proven that a significant percentage of users were exchanging copyrighted music files although there was some evidence of non-infringing uses (such as sharing of public domain material, licensed music videos and movie segments, and free electronic books). The entertainment industry sued under the common law actions of contributory infringement and vicarious liability. 

 

Contributory infringement occurs upon material contribution to an infringing activity together with knowledge of the alleged secondary infringer of such infringing activity at the time of the material contribution.10 Vicarious liability attaches when the defendant profits directly from the infringement and has a right and ability to supervise the direct infringer – knowledge of primary infringement is not necessary.11

 

The District Court12 and Ninth Circuit13 found no liability in contributory infringement arising from primary copyright infringement by users exchanging copyrighted music files. Applying the Sony doctrine (from Sony Corp v Universal City Studios, Inc (‘Sony’)),14 the courts found no such intent to cause infringement at the time of distribution of the software. At the time of actual primary infringement by users, the distributor had no more control over how the software was being applied – the software was capable of non-infringing uses as well.  The distributor could not be regarded as furnishing the ‘site and facilities’15 for direct infringement.16 

 

The Supreme Court in Grokster sidestepped the Sony difficulty by articulating an inducement theory of infringement. Drawing from first principles of contributory infringement, Justice Souter in Grokster distilled its essence as liability that arises when ‘[o]ne infringes contributorily by intentionally inducing or encouraging direct infringement’.17 This overcame the problem of the distributors having no real control over the decentralised network system. Justice Souter shifted the emphasis away from the technology, to focus on the alleged secondary infringer’s behaviour instead. Thus, ‘one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or affirmative steps taken to foster infringement, is liable for the resulting acts of infringement of third parties’.18 In determining an unlawful objective, all relevant facts are considered. Three particularly relevant factors to showing intent are whether the alleged secondary infringer: (a) showed itself to be aiming to satisfy a known source of demand for copyright infringement; (b) attempted to develop filtering tools or other mechanisms to diminish the infringing activity using the software or technology in question; and (c) makes money by selling advertising space, by directing ads to the screens of computers employing their software.

 

The Supreme Court accepted the Sony doctrine as correct but held that it did not immunise a party liable for inducing copyright infringement.19 On the facts, there was blatant advertising, and promotion of its services for use in unlawful music file exchanges. Other relevant factors included the failure to implement any filtering devices and the proportionality of the number of users to the quantum of its website advertising revenue.  

The Sony defence

In Sony,20 Sony Corp was found not contributorily liable for the distribution of the Betamax recorder as the latter was ‘capable of substantial non-infringing uses’.21 This case was celebrated as a resounding endorsement for technologists and inventors who may develop products susceptible to abuse by users yet that are perfectly able to be used legitimately. This principle derived from a modified ‘staple article of commerce’ doctrine in patent law. 

 

On the facts, though the Betamax recorder could be used for making illegal copies of programmes, it was also used in time-shifting (ie recording of programmes for viewing at a later time) which was non-infringing or amounted to fair use. Authorised taping constituted only approximately nine per cent of all types of uses. The US Supreme Court, on a majority of five to four, held there was no contributory infringement.22

 

While Sony remains good law, debate rages over the test of ‘capable of substantial non-infringing uses’. Two streams of interpretations have arisen over the years.

 

The broad interpretation asks whether a technology is merely capable of non-infringing uses in commerce. If the technology has present or future substantial non-infringing uses, it satisfied this bright line test. No comparison of the proportion of non-infringing uses to infringing uses is required.

 

The narrow approach undertakes the unenviable (and impossible) task of balancing current and potential non-infringing uses against infringing uses. This interpretation emphasises the ‘substantial’ element over the ‘capable’ element in the Sony doctrine.

 

Uncertainty surrounds these contradictory approaches.23

 

Going by the Sony facts, where evidence was adduced to show that only nine per cent of the uses were legal, it seems clear that the first approach was intended. The court did not engage in any exercise of measuring and balancing current and anticipated non-infringing uses against infringing use. This was Justice Breyer’s view24 in Grokster, where he laid out the benefits of such an approach, namely certainty and the promotion of innovation.  His view, though, is strictly obiter as he concurred with the court’s finding of active inducement of primary infringement.

 

Other cases supporting the broad approach include the Ninth Circuit case of Grokster. Here, the Ninth Circuit expressly disagreed with In re: Aimster Copyright Litigation (Seventh Circuit)25 which had supported a narrow reading of Sony.

 

Justice Ginsburg26 in Grokster entered the fray by issuing a separate judgment on her interpretation of Sony.  As with Justice Breyer, she concurred with the court’s finding that there was unlawful inducement of infringement. Her separate judgment sought to explain why the defendants had misapplied the Sony doctrine.  

 

Justice Ginsburg opined that:

 

[e]ven if the absolute number of noninfringing files copied using the Groskster and StreamCast software is large, it does not follow that products are therefore put to substantial noninfringing uses and are thus immune from liability. The number of noninfringing copies may be reflective of, and dwarfed by, the huge total volume of files shared …. Fairly appraised, the evidence was insufficient to demonstrate a reasonable prospect that substantial or commercially significant noninfringing uses were likely to develop over time.27

 

This opinion indicates a preference for the narrow interpretation of Sony.  However, Justice Ginsburg failed to clarify the proportion of non-infringing present and future uses (as compared to infringing use) that would satisfy her understanding of the test. 

 

The divided views on this issue among the Supreme Court, and the Ninth and Seventh Circuits speak to a deeper problem of policy making, and the desirability and competence of judges venturing into areas involving complex socio-economic implications. Tellingly, Justice Souter (delivering the court’s unanimous opinion on inducement liability) merely held that Sony did not displace other theories of secondary liability, and declined to further comment on Sony.28

Comparing the Australian and US Positions

Comparing Sharman and Grokster provides an interesting study of the scope of P2P infringement liability in Australia and US. 

The safe harbour

Both US and Australia laws deal with a form of safe harbour. Its raison d’etre is to provide certainty and immunity to distributors of new technology, where the distributor has no control over how users apply the technology. This is seen to strike a good compromise between innovation and copyright owners’ interests. 

 

The US safe harbour, under the Sony doctrine,29 bars ‘secondary liability based on presuming or imputing intent to cause infringement solely from the design or distribution of a product capable of substantial lawful use’.30 In this case, Sony Corp, in distributing the Betamax recorder, was found not contributorily liable for illegal taping by home viewers, as the recorder was such a product.  While certain aspects of the Sony doctrine are still unsettled, it is at least clear in Sony that no contributory liability attaches where after the sale of the recorder, Sony Corp had no ‘direct involvement with the [unauthorized taping] or direct contact with the purchasers of Betamax.’

 

The Australia Copyright Act (s 112E) too prescribes a safe harbour, ie that a person who provides facilities for making or facilitating the making of a communication is not treated as having authorised copyright infringement in an audio-visual item simply because another person uses the facilities to infringe copyright.  When and how this safe harbour applies is unfortunately less clear. Sharman confirmed that s 112E applies only where there is no authorisation in the first place. An authorisation finding in turn depends on all relevant factors of each case – lack of action plus knowledge of primary infringement, and control over the operational policies of the P2P network may possibly be enough to constitute authorisation. Further, s 112E ‘does not confer general immunity against a finding of authorisation’31 when for other reasons, the alleged secondary infringer may be taken to have authorised the primary infringement.    

Wrongful conduct

In both cases, there was clear positive behaviour resulting in secondary infringement liability. In Grokster, its services were blatantly advertised as an alternative to the unauthorised Napster services.32 Similarly, in Sharman, the software distributor made exhortations to users to use the facility and to share their files, using the Kazaa software as a file sharing facility, including promoting a ‘Join the Revolution’ movement.33 In both cases, the distributor’s advertising revenues (the main source of earnings) multiplied with greater file sharing.34

 

Notably, the respective judges set quite distinct consequences of inaction at the time of the secondary infringing act. 

 

In Grokster, Souter J stressed the purposeful culpable expression and conduct required for inducement of infringement liability. This means that poor or inadequate design alone, for instance, no or a poor attempt to implement filtering tools, is unlikely to be sufficient to constitute secondary liability. 35

 

Wilcox J in Sharman, in contrast, emphasised blameworthy inaction. Authorisation may be positive acts or steps or may be ‘inactivity or indifference, exhibited by acts of commission or omission’ that reaches ‘a degree as to support an inference of authorisation or permission.’36 Notwithstanding the clear positive wrongful conduct in Sharman, the articulated principles may be applied more broadly. Failure or omission to properly design new products or to properly update the design for the old products already released may possibly lead to a finding of ‘authorisation’ in Australia. It is possible that future cases will restrict their scope by reference to the Sharman facts or apply it on a wider basis. If the latter holds, the Australian position would be much wider than US contributory liability and inducement of infringement liability. 

Design obligation

Sharman emphasised the act of distribution as the triggering cause of users’ infringement as well as the inaction of the distributor who had knowledge of the users’ infringement. The lack of action includes a reprehensible omission to properly create or revise the design of the system. A highly significant circumstance was not installing filtering technologies to at least ‘substantially reduce’37 the incidence of file sharing. Such filtering obligations imply that distributors of new technology may have to continually look to revising and updating anti-infringement features in their products for new users who themselves may not be under distributor’s control post-distribution.

 

In contrast, Grokster did not clearly impose such a wide design obligation. The supernode model meant that the distributor had no real control over how the users were going to use the software.  The distributor’s lack of control prompted Grokster to formulate the inducement of infringement doctrine to find liability based on the distributors’ objectionable conduct, and not solely rely on the failure to develop any filtering tools.    

 

It remains to be seen whether future cases will interpret Grokster widely or narrowly in this respect. The US courts’ express concern about stifling technology indicate that the US Supreme Court will be slow to read a duty as wide as the ongoing design duty imposed by the Australian courts.38   

Knowledge

In Sharman, knowledge (constructive or actual) is only one of several factors to be considered on the facts of each case. Importantly, the absence of any knowledge is not always an impediment to proving authorisation. 

 

In the US, knowledge remains a critical element of the doctrines of contributory infringement and inducement of infringement. Only for vicarious liability is knowledge not a prerequisite.

Liability of fringe players

In Australia, the concept of ‘authorising copyright infringement’ has been widely applied to catch fringe players in Australia. In Sharman, the operator of the system itself and five other respondents were also liable for authorising the users’ primary infringement. Broadly, these respondents possessed either real control or influence over the policy-making in the development and operation of the Kazaa system. To this extent, they could have attempted (but failed) to implement some measure to prevent or reduce users’ copyright infringement.

 

There has not been the same opportunity for the US P2P cases to examine in greater detail the extent of liability of such fringe players. Grokster did not discuss how contributory infringement and inducement of infringement liabilities might apply to joint venture parties, controlling corporate shareholders and dominant or sole directors.

Other Options for Copyright Owners

As part of the strategy to thwart copyright infringement, copyright owners have sued secondary infringers. The protection for technologists and distributors that had appeared so broad in scope in Sony is today rather the worse for wear. In addition to suing secondary infringers, copyright owners may do or are doing any one or all of the following to counter copyright infringement:

Sue the direct infringers

This is a monumental task for infringement in the digital era, considering, for instance, the sheer number of P2P users.39 Nevertheless, this has not stopped the Recording Industry Association of America (‘RIAA’) from doing precisely this in the last two years.40 As at January 12, 2006, it had launched at least 17,000 lawsuits41 against individuals accused of illegal money-lending and stands to collect over US$85 million in settlement money.42

 

Whether RIAA’s actions have helped to decrease primary infringement is controversial. Justice Breyer in Grokster cites studies that show the efficacy of RIAA’s actions in reducing primary infringement.43 However, it appears that RIAA’s court victories, in absolute numbers, may be misleading. First, the settlement amount may be illusory insofar as the defendants may have no means to pay.44 Second, RIAA’s practice of ‘arbitrarily targeting a few hundred unlucky fans to sue every month out of the millions of people who download music’45 suggests RIAA’s litigious crusade may not be actually controlling the growth of illegal file sharing, merely catching a larger number of illegal users from an ever-growing pool.    

 

In Fred von Lohmann’s46 words, ‘[D]espite all the publicity, studies show that P2P usage is increasing instead of decreasing.’ 

Change the business model

Copyright is said to give the right against unacceptable copying but does not protect the businesses per se, even though they are built upon the copyrighted works.

 

As suing primary infringers is costly and cumbersome,47 and suing secondary infringers fraught with difficulty, it behooves the copyright owner to explore alternative ways of exploiting copyright for commercial gain. 

 

Recording companies are regarded by some as attempting to retain their traditional preserve on music distribution ie through recording deals signed with artistes. This motive is said to underlie the Grokster lawsuit. P2P networks represent a new way of legal music distribution that is seen as a real threat to traditional music business.48

 

Given evidence that suggests P2P file sharing can only increase (and with it illegal music swapping), a more effective way to stem the piracy may be through the music industry remaking their business model of selling music.49 

 

For instance, Shared Media Licensing Inc operates a paid on-line music service at www.weedshare.com that allows users to purchase individuals songs for a low fee, half of which goes directly to the artistes themselves.50 This allows independent artistes who may otherwise not be considered commercially marketable to directly sell their songs in a non-traditional way. Music purchased through www.weedshare.com are expressly allowed to be shared through P2P networks.51

 

Another possible way is through collective licensing societies that grant blanket licenses for digital downloads. The societies would be formed by the music industry players (ie music publishers, recording companies, songwriters and artistes) to collect royalties through such blanket licenses, and distribute them accordingly. 

 

The premise underlying any business restructuring is a reduction of the cost of downloading of music or movie (all for a song). This reduction must be sufficiently attractive for users to switch from illegal swapping to legal use yet not militate against the incentive for creativity. The hoped-for result of higher volume of legal users, attracted by the latest releases and their high quality, enlightened by education, and enticed by other marketing and promotional tactics, should help return profits to the entertainment industry. A combination of these strategies is seen as limiting, even decreasing, illegal swapping.

 

Whether any of the above business methods is a long-term solution to rampant piracy is still an unknown. The amazing ease of free file sharing with a click of the mouse may not be so easily counteracted. As at the date of writing, RIAA has rejected collective licensing (proposed by the Electronic Frontier Foundation) as the way forward and it does not appear to have reconsidered its position.52 

Use technology to track infringement

Copyright owners are also implementing a slew of infringement tracking or anti-infringement devices, for instance, digital watermarking and digital fingerprinting encoded within the file information about the author and the copyright scope and date. This basically leads back to the issue of the efficacy of instituting action against primary infringement and the correctness of holding secondary infringers liable. Its direct effect on deterring primary infringers is not known. 

 

Encryption technology embedded, for instance, in CDs, restrict users’ ability to make a digital copy. This has brought a set of new challenges to industry players as seen in the lawsuits against Sony BMG Music over its failed anti-piracy technology on music CDs. While this may temporarily slow down the ability to copy songs, this strategy simply fails to address the reality that more and more songs will be sold on-line in the future.  

The Reality of Enforcement Measures and Technological Advances

Technology continues to be developed in an attempt to stay one step ahead of the law. As part of the evolution of the P2P network, the BitTorrent software enables peers to receive from other peers tiny digital fragments, which are eventually reconstituted as a single file. In other words, no one peer provides the entire file. Sites supporting the BitTorrent technology such as Pirate Bay have flourished as a platform linking up users with movies and music files for exchange. This distinguishing feature of BitTorrent file sharing has presented new challenges for copyright enforcement, as there is no wholesale transfer of an entire work by any single peer. Operators of these file swapping sites do not themselves store any copyrighted works. In particular, the burgeoning of movie swapping has been aided partly by improved bandwidth and increasingly sophisticated reproduction equipment. Recent raids by the Swedish police in May 2006 and seizure of servers at Pirate Bay offices did not prevent them from resurrecting the site within three days by borrowing equipment 53 – due in no small part to the fact that the copyrighted files were stored remotely in the peers’ computers and the BitTorrent software is itself available from other sources. BitTorrent technology has been refined to enable a trackerless mode of exchange ie without a centralised server such as Pirate Bay to show the available torrents.  The relentless march of technology and the current inability of the law enforcement agencies to effectively stamp out internet piracy mean that any viable business model must take into account each and every new and ingenious development in file swapping networks.

 

On a global view, there are many players who contribute in varying degrees to the user being able to download and play pirated files, not merely the network operator or the software developer. Imposing liability on and apportioning blame among these players must necessarily balance the copyright owner’s interest against the need to promote innovation, and the right of users to enjoy the benefit of technological advances, as well as public interest of access to knowledge and information and privacy issues.

 

How this equation will be worked out in the final analysis remains to be seen. The candid observation of Justice Breyer in Grokster bears noting:

 

Consider, for example, the question whether devices can be added to Grokster’s software that will filter out infringing files. MGM tells us this is easy enough to do, as do several amici that produce and sell the filtering technology … Grokster says it is not at all easy to do and not an efficient solution in any event, and several apparently disinterested computer science professors agree … Which account should a judge credit? Sony says that the judge will not necessarily have to decide.54

 

Jeffrey Lee

Lee Chai & Boon

 

Notes

*    This commentary is adapted from the article by Jeffrey Lee, ‘The ongoing design duty in Universal Music Australia Pty Ltd v Sharman License Holdings Ltd – Casting the scope of copyright infringement even wider’ International Journal of Law and Information Technology 1 (advance access published on December 6, 2006) at http://ijlit.oxfordjournals.org.

 

 1  See H. Rosen, ‘The Supreme Wisdom of Not Relying on the Court,’ the Huffington Post (June 26, 2005) at: www.huffingtonpost.com/theblog/archive/hilary-rosen/the-supreme-wisdom–of-not_3221.html.

 

2    See http://www.pcpro.co.uk/news/78525/p2p-activity-doubles-in-two-years.html.

 

3    See www.rollingstone.com/news/story/_/id/7380412/?pageid=rs.Home&pageregion=sigle1&nrd=1122320285908&has-player=true&version=6.0.12.872.

4    ibid. See also the prepared testimony of P2P United, Inc. to the United States Senate (Committee on Commerce, Science and Transportation) July 28, 2005 at http://www.eff.org/IP/P2P/MGM_v_Grokster.

 

5    [2005] FCA 1242 (5 September 2005).

 

6    125 S. Ct 2764 (2005). Other notable US cases include A&M Records, Inc. v Napster, Inc. 239F. 3d 1004 (Ninth Circuit 2001) (‘Napster’), and In re: Aimster Copyright Litigation 334 F. 3d 643 (Seventh Circuit 2003) (‘Aimster’) (all dealing with secondary infringement liability of P2P software providers).

 

7    This was the system in Napster, supra n [6].

 

8    The most notable protocol Gnutella uses a open-source concept and was used by StreamCast Networks, Inc., one of the two distributors in the Grokster. This system, while providing the greatest protection to the distributor from secondary liability, has many practical implementation issues including motivating users to donate files and to limit their own use of the network so as to increase the range and depth of available content, and prevent a system crash due to stark differences in user bandwidth and lack of a central mechanism for directing traffic.

 

9    Metro-Goldwyn-Mayer Studios, Inc. v Grokster, Ltd 259 F. Supp. 2d 1029 (CD Cal. 2003) at [1041].

 

10  Contributory copyright infringement occurs when ‘one … with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another…’ (see Gershwin Publishing Corp v Columbia Artists Management, Inc. 443 F. 2d 1159 at p 1162 (Second Circuit 1971)).

 

11  Shapiro, Bernstein & Co v H.L. Green Co 316 F. 2d 304 (2d Circuit 1963).

12  Metro-Goldwyn-Mayer Studios, Inc. v Grokster, Ltd 259 F. Supp. 2d 1029 (CD Cal. 2003).

 

13  Metro-Goldwyn-Mayer Studios, Inc. v Grokster, Ltd 380 F. 3d 1154 (Ninth Circuit 2004).

 

14  464 U.S. 417 (Supreme Court 1984).

 

15  Ibid, at 1163, citing Fonovisa, Inc v Cherry Auction Inc. 76 F. 3d 259 (Ninth Circuit, 1996) and other cases.

 

16  Ibid at 442.

 

17  Supra n [6] at 2767.

 

18  Grokster, supra n [6] at pages 2770, 2780.

 

19  Souter J stated that ‘Sony did not displace other theories of secondary liability’ and ‘Sony’s rule limits     imputing culpable intent as a matter of law from the characteristics or uses of a distributed product. But nothing in Sony requires courts to ignore evidence of intent if there is such evidence, and the case was never meant to foreclose rules of fault-based liability derived from the common law: Grokster, supra n [6] at pages 2778- 2779].

 

20  Supra n [14].  

 

21  Supra n [14] at 442.

 

22  Justice Blackmun, writing for the four dissenters in Sony, felt that contributory liability should be imposed when ‘no one would buy the product for noninfringing purposes alone’ as this means that ‘the manufacturer is purposefully profiting from the infringement’. (464 U.S. 417 at p 491). This represent a view to the other extreme, that of strongly protecting of copyright owners and a clear disincentive to innovation.

 

23  This is not helped by Sony deciding that it was not necessary on its facts to ‘give precise content to the question of how much use is commercially significant’. Supra n [14] at 442.

 

24  Justice Stevens and Justice O’Connor joining.

25  334 F. 3d 643 (Seventh Circuit, 2003).

 

26  Justice Rehnquist and Kennedy joining.

 

27  Supra n [6] at 2786.

 

28  ‘It is enough to note that the Ninth Circuit’s judgment rested on an erroneous understanding of Sony and to leave further consideration of the Sony rule for a day when that may be required’ (Justice Souter in Grokster, supra n [6]  at 2779).

 

29  Supra, see n [14].

 

30  Grokster, supra n [6] at page 2778.

 

31  Sharman, n [5] at para 399.

 

32  The then StreamCast chief technology officer had averred that ‘[t]he goal is to get in trouble with the law and get sued. It’s the best way to get in the new[s]’: Grokster, supra n [6] at p [2773].

 

33  Sharman, supra n [5] at para 405. The ‘Join the Revolution’ was a movement advocating file-sharing, to   which website Sharman License Holdings Ltd provided links from its own website.  ‘Especially to a young audience, the ‘Join the Revolution’ website material would have conveyed the idea that it was ‘cool’ to defy the record companies and their stuffy reliance on their copyrights’ (per Wilcox J at para 405).

 

34  Grokster, supra n [6] at page 2782 and Sharman, supra n [5] at para 407.

 

35  Grokster, supra n[6] at page 2781 footnote 12. ‘Of course, in the absence of other evidence of intent, a court would be unable to find contributory infringement liability merely based on a failure to take affirmative steps to prevent infringement if the device otherwise was capable of substantial noninfringing uses. Such a device would tread too close to the Sony safe harbour.’ (per Souter J).

36  Sharman, supra n [5] at para 402.

 

37  Sharman, supra n [5] at para 411.

 

38  It is significant that Souter J referred to post-distribution offering of upgrades by itself as not amounting to inducement, without commenting on whether such offer should include filtering upgrades.         

 

39  For suggestions on how to reduce the cost of direct infringement claims, see Mark A Lemely & Anthony Reese, ‘Reducing Digital Copyright Infringement Without Restricting Innovation’ 56 Stan. L. Rev. at 1374 n 110.

 

40  Copyright owners in other countries are following suit: see article ‘Music Industry targets nearly 1,000 with file-sharing suits’ (April 14, 2005) at www.pcpro.co.uk/news/71434/ music-industry-targets-nearly-1000-with-filesharing-suits.html (last viewed Feb 28, 2006).

 

41  See the article ‘Despite Legal Onslaught, Piracy Still Haunts Music Labels’ (January 12, 2006) at http://ip.law360.com/Secure/ViewArticle.aspx?id=4979(last viewed February 27, 2006).

 

42  This is computed on the basis that US$5,000.00 is payable by the infringer on each lawsuit. It is estimated that most people settle for between US5,000 and US$7,000: see article ‘Despite Legal Onslaught, Piracy Still Haunts Music Labels’, ibid.. See the website of Recording Industry Association of America at http://www.riaa.com including the article ‘RIAA Brings New Round Of Lawsuits Against 751 Online Music Thieves’ (December 15, 2005)(http://www.riaa.com/news/newsletter/121505.asp (last viewed February 27, 2006). See also the article by S. Knopper, ‘RIAA Will Keep on Suing’ Rolling Stone (June 6, 2005) at www.rollingstone.com/news story/_/id/7380412/?pageid=rs.Home&pageregion=sigle1&nrd=1122320285908&has-player=true&version=6.0.12.872 (last viewed February 27, 2006).

 

43  Grokster, supra, n [6] at 2794-2795. ‘These suits have provided copyright holders with damages; have served as a teaching tool, making clear that much file sharing, if done without permission, is unlawful; and apparently have had a real and significant deterrent effect.’ (per Justice Breyer)

 

44  See article ‘RIAA v The People: Two Years Later’ at http://www.eff.org/IP.P2P/RIAAatTWO-FINAL.pdf

 

45  See the articles ‘File-Sharing Lawsuits Fail to Deter P2P Downloaders’ (November 3, 2005) at http://www.eff.org/news/archives/2005_11.php (last viewed February 27, 2006) and ‘Despite Legal Onslaught, Piracy Still Haunts Music Labels’, (January 12, 2006) at http://i[.law360.com/Secure/ViewArticle.aspx?id=4979 (last viewed February 27, 2006).  

  

46  Senior IP Attorney, Electronic Frontier Foundation.

 

47  This is seen by some as constituting a powerful argument for imposing indirect liability on secondary infringers. ‘When a widely shared service or product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively against all direct infringers, the only practical alternative being to go against the distributor of the copyright device for secondary liability on a theory of contributory or vicarious infringement’ [per Justice Souter in Grokster , supra n [6] at 2767].

 

48  ‘The introduction of new technology is always disruptive to old markets, and particularly to those copyright owners whose works are sold through well-established distribution mechanisms. Yet, history has shown that time and market forces often provide equilibrium in balancing interests, whether the new technology be a player piano, a copier, a tape recorder, a video recorder, a personal computer, a karaoke machine, or an MP3 player. Thus, it is prudent for courts to exercise caution before restructuring liability theories for the purpose of addressing specific market abuses, despite their apparent present magnitude.’ [per Judge Thomas in Metro-Goldwyn-Mayer Studios, Inc. v Grokster, Ltd 380 F. 3d 1154 (Ninth Circuit 2004)] at 1167]

 

49  The recent summary judgments obtained by the British Phonographic Industry (BPI) against primary P2P infringers, prompted this cynical response from the Cory Doctorow, member of the UK Open Rights Advisory Council, ‘Congratulation, you’ve successfully sued a customer… How many customers do you imagine you’ll need to sue before England returns to the mall, credit card in hand?’ (see www.pcpro.co.uk/news/hot-topics/83050/drm-lobbyists-cry-foul-over-bpi-p2p-win.html) (January 27, 2006) (last viewed February 27, 2006).

 

50  Other services are available at www.walmart.com which sells music for less than $1 per song, and http://music.yahoo.com/unlimited/ that offers users unlimited to more than one million songs for less than US$5 a month. Apple Computer Inc.’s online iTunes music store is another instance.

 

51  See http://www.weedshare.com/help/howweedworks/. In recognition of the new commercial reality, the website carries this statement: ‘We created Weed because we knew there had to be a better answer to the problems of file-sharing on the Internet. We support file-trading —after all, it’s hard to fault peop le for sharing music that makes them happy. But we support musicians, too — it’s hard enough for artists to make a living.’ (see http://www.weedshare.com/company/).

 

52  See http://www.eff.org/IP/P2P/MGM_v_Grokster?p2punited_testimony.pdf p 10.

 

53  See article by Steven Daly, ‘Pirates of the Multiplex’ (March 2007) at http://www.vanityfair.com/ontheweb/features/2007/03/piratebay200703 (last viewed 1 March 2007).

 

54  Grokster, supra n[6], at 2792.