The Viacom v. Google lawsuit over Youtube offers a very high-profile sequel to MGM v. Grokster. In particular, this case appears to pick up where the Grokster case left off: what is the nature of “inducement” to violate copyright laws. The court here will of necessity probe the question that Breyer and Ginsburg debated in their concurrences: how do you judge whether someone offering a particular product, technology or service is actively encouraging infringement and therefore subject to secondary liability for the copyright violations of others?
First, a review of what — by internet time — is now ancient history. Grokster (and Streamcast) offered ways for users to swap files. The vast majority of files so swapped were copyrighted material. Nothing prevented people from swapping material that they had rights to or that were in the public domain (or released under some other distribution license), and some such traffic did take place.
The Ninth Circuit held that because the technology used by Grokster was “capable of substantial non-infringing use” as well as infringing use, and Grokster did not actively control the activities of those using the file-swapping technology, and therefore, under Sony Corp. v. Universal (aka the “Sony” case or “betamax” case), Grokster could not be held liable for the infringing conduct of its users.
The Supreme Court reversed. The Court unanimously held that nothing in the Sony test required a court to ignore other evidence that the company providing the service had actively sought to encourage copyright infringement and profit from same. The Grokster Court then provided a lengthy catalog of evidence that Grokster had actively advertised itself as a place to illegally download music and actively encouraged users to make copyrighted music files available to others. Accordingly, Grokster could be held liable for inducing copyright violation based on its overall conduct regardless of the fact that the peer-to-peer technology it employed met the Sony standard of being capable of substantial non-infringing uses.
This unanimous opinion bridged two significantly divergent views found in the concurrences. Justice Ginsberg, joined by Justice Kennedy and then-Chief Justice Rhenquist, would not have required additional evidence beyond looking at the predominant use of service. Dismissing the evidence of non-infringing use as a “motley collection of declarations,” Justice Ginsburg would have found the Sony rule inapplicable if the “number of non-infringing copies is reflective of, and dwarfed by, the huge total volume of files shared.”
While not saying so explicitly, Ginsburg's view would read the word “capable” out of the Sony test. Only if substantial actual use (however measured) was non-infringing would Ginsburg apparently extend the protection of Sony to a business distributing a technology or service capable of infringing and non-infringing uses.
Justice Breyer, joined by Justice Stevens and then-Justice O'Connor, advanced the opposite view. Breyer stressed the use of the word “capable” as the critical element of the Sony test. This reading, argued Breyer, was necessary to set a reasonable limit on secondary liability in order to protect the ability of innovators and inventors to develop new technologies. The substantial non-infringing uses of a new technology may or may not be obvious immediately. A test that looked only at a specific snap shot in time would create too much uncertainty and would not provide sufficient opportunity for non-infringing uses to develop.
Flash forward now to Viacom v. YouTube. In this case, we see the difference between the Breyer view of Sony and Ginsburg view of Sony squarely presented. On the one hand, Youtube has its origins in user-created content. Unlike Grokster, it is not seeking to capture customers from a business previously declared illegal or explicitly advertising itself as a place to find illegally copied material. Nor can anyone doubt that Youtube is “capable of substantial non-infringing use.” User posted videos have changed politics, outed misbehaving celebrities, and – perhaps most importantly – provided millions of people with an easy way to exchange video content of absolutely no interest to anyone else but themselves and a close circle of family and friends.
Under the Breyer approach, this should provide sufficient evidence to shield Youtube from secondary liability. Yes, Youtube benefits from people uploading content, and the steps Google uses to make user-created or otherwise non-infringing content easy to upload, easy to find, and easy to disseminate similarly make it easy to upload, find and disseminate copyrighted material. And yes, Youtube probably benefits from the increased use this illegally uploaded content brings. But Sony likewise benefitted from the infringing uses of its VCR (as Breyer would point out), enjoying increased sales and increased sales of its video tapes.
Unsurprisingly, the Viacom complaint takes the approach outlined by Ginsburg. The complaint lays great stress on the absolute quantity of Viacom's copyrighted material it purports was illegally uploaded and postulates that this material conveys enormous financial benefit to Youtube. It describes the ease with which users can find, upload and manipulate Viacom's material as if these features had no other purpose. Viacom characterizes the use of Youtube for copying and distributing Viacom's material as “open and notorious” from which it “profits handsomely.” Accordingly, Viacom maintains, Youtube has failed to take appropriate measures to prevent uploading and copying of Viacom's copyrighted material.
Viacom concludes, as it must to satisfy the Grokster standard, that Youtube has “built and infringement-driven business by exploiting the popularity of Plaintiff's copyrighted works (and the works of other copyright owners) to draw millions of users to its website.” Tellingly, however, all the features of which Viacom complains are equally valuable for uploading, finding, disseminating, and protecting non-infringing content. Nor has Viacom produced evidence (although admittedly it is still early in the game) that Youtube ever actively solicited or actively encouraged infringing conduct. Viacom rests its assertions on Youtube's encouragement of infringing conduct on what it characterizes as Youtube's deliberate “blind eye” to alleged infringement and lax enforcement when prodded into action, especially in contrast to its rapid response to behavior that cuts into Youtube's profits.
Under Breyer, this is probably not enough to defeat the shield of Sony. But it may be sufficient under Ginsburg. At the same time, however, this also demonstrates how complicated the “Ginsburg Sony standard” would be in practice as compared to the “Breyer Sony standard.” The Ginsburg standard appears to focus on the proportion of infringing use to non-infringing use. But how much? And how do you verify? Sure, the copyrighted material in question may be among the most popular downloads, but the aggregate number of non-infringing videos downloaded is also quite large – perhaps even larger than the total downloads of Viacom material. Certainly one can point to far more non-infringing uses than the “motley collection of declarations” that Ginsburg treated with such scorn in MGM v. Grokster.
But is this enough non-infringing use to be “substantial”non-infringing use? If not, does it prove that the technology is “capable” of substantial non-infringing use? Does capable even matter under the Ginsburg Sony Standard? If the infringement is sufficiently substantial, will it always “dwarf” the non-infringing use? And how vigorous does a service provider need to be? Does it matter that Viacom apparently ignored this “open and notorious” conduct until Google appeared on the scene?
Sadly, no one can tell. Which was exactly Breyer's argument against Ginsburg and his general plea to leave the Sony standard alone. Ginsburg's apparent assumption that it will always be obvious whether a new service or technology is “capable of substantial non-infringing use” appears highly questionable, heavily fact dependent, and enormously expensive. Precisely the set of circumstances Breyer feared would chill innovation.
Or, to take advantage of existing fair use, “There are more things in heaven and earth, Justice Ginsburg, then are dreamt of in your philosophy.” Let us hope that the courts here adopt the approach of Justice Breyer, rather than constrain technology within the narrow vision of what Justice Ginsburg considers “substantial non-infringing use.”