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Contributory Infringement on the Web Just Got Easier
by Robert W. Clarida, December 2000
Despite the 1998 passage of the Digital Millennium Copyright Act, which greatly limits the scope of contributory liability in cyberspace, the recent decision by the District of Utah in Intellectual Reserve Inc. v. Utah Lighthouse Ministry 1clearly illustrates that the courts are ultimately responsible for defining contributory infringement. The case also demonstrates that in their zeal to protect copyright owners from imaginative forms of techno-piracy, courts may sometimes raise more questions than they answer.
Utah Lighthouse Ministry ("ULM") is an organization critical of certain teachings of the Mormon Church. Beginning in July 1999, ULM posted 17 pages from the Church's 160-page Church Handbook of Instructions without authorization. Intellectual Reserve, Inc. ("IR"), which owns the Church's intellectual property assets, obtained a temporary restraining order to force ULM to take down the unauthorized posting. ULM subsequently displayed an e-mail message from one of its users indicating that the Church Handbook of Instructions could be found at three Websites other than ULM's ("Church Handbook of Instructions is back online!"), and listed the Web addresses of those three sites.
The court then expanded the injunction by enjoining ULM from reproducing or distributing any of the allegedly infringing material, and also ordered it to "remove from and not post on [its] website, addresses to websites that defendants know, or have reason to know, contained the material" (emphasis added).
The basis of the court's injunction was not that the posting of Website addresses directly infringed the Church's copyright, but rather that it constituted contributory infringement. Citing Gershwin Pub. Corp. v. Columbia Artists Mgt. Inc.,2 the court defined contributory infringement as inducing, causing, or materially contributing to the infringing conduct of a third party, "with knowledge of the infringing activity." As to the operators of the three sites that posted the church material after ULM removed it, the court concluded that ULM did not induce, cause or contribute to the unauthorized postings themselves.
Individual Users Directly Liable
As to the individual users who visited the infringing sites, however, the court held that ULM's actions did "actively encourage" direct infringement by these users. The court reasoned under MAI Sys. Corp. v. Peak Computer Inc.3 that each time a user browses one of the infringing sites, a copy of the infringing material is made in the RAM memory of that user's computer, "and in making a copy, even a temporary one, the person who browsed infringes the copyright."
Once it is assumed that the users are direct infringers, the court's analysis of ULM's contributory infringement liability is simple: ULM knew the three sites were infringing, it "actively encouraged" users to visit those sites for the express purpose of viewing the infringing material, thus it is a contributory infringer under Gershwin. This result seems basically consistent with the leading Internet contributory-infringement case, Religious Technology Center v. Netcom On-Line Comm. Servs., Inc.,4 which held that on-line service provider Netcom could be liable if it had knowledge that one of its subscribers was using Netcom's facilities to infringe.
Unanswered Questions
Nevertheless, the reasoning and result in Intellectual Reserve may require greater restraint on the part of Website operators than has ever been expected of conventional media. Arguably, the Web is somewhat different from other media because the mere act of browsing an infringing site may constitute direct infringement, at least under a strict reading of MAI, but that argument raises some troubling inconsistencies if applied outside the particular facts of Intellectual Reserve. For example, is there any reason why a law review article, or this newsletter, should not be enjoined from publishing the URL's of infringing sites on the same theory? What if the law review or newsletter is available on-line? Does a web posting necessarily "induce" infringement more readily than a comparable print publication because a user who encounters the URL information on the Web has quicker access to the infringing material? Or do print and other conventional media just have a stronger fair use argument? If so, why? Does the difference lie in the medium (hard-copy vs. digital), or the message (sober legal scholarship vs. "go check out this pirated material")? The court in Intellectual Reserve did not address these questions, and perhaps had no opportunity to do so, given the posture of the case, but their answers may be crucial in defining the metes and bounds of copyright law on the Web. An appeal appears likely.
1 No. 2:99-CV-808C1999 U.S. Dist. LEXIS 19103 (D. Utah Dec. 6, 1999).
2 443 F.2d 1159 (2d Cir. 1971).
3 991 F.2d 511 (9th Cir. 1993).
4 907 F. Supp. 1361 (N.D. Cal. 1995).
© 2000 Cowan, Liebowitz & Latman, P.C.
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This the information provided in this article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult with a lawyer concerning your own situation and any specific legal questions you may have.
