The Supreme Court’s decision in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster1 has incorporated the doctrine of inducing infringement from patent law into copyright law. By utilizing the existing doctrine from patent law, the Supreme Court provided some clarification of the standards for liability for indirect infringement in copyright law. However, the Grokster decision also raises questions about the proof required for inducing infringement with respect to establishing intent and the possibility of defenses based on the defendant's mental state. For example, would a defendant be liable for inducing a third person to copy the plaintiff's copyrighted work if the defendant believed (albeit erroneously) that the third person had a fair use defense to a claim for copyright infringement? Principles from general tort law may suggest an answer to this question as well as to other presently unsettled questions2 involving liability for the indirect infringement of patents, copyrights and trademarks.
Third party liability for indirect infringement has developed separately, but along parallel tracks in patent, copyright and trademark law over the past hundred years. In all three areas, there are circumstances where it is impractical for the owners of intellectual property to enforce their rights against direct infringers, and the owners have sought remedies against third parties who they claimed were responsible for infringement of their intellectual property rights. The applicable doctrines have varied somewhat from one field of intellectual property to another, however. In patent law, third party liability has been imposed for contributory infringement and inducing infringement. Copyright law has three separate doctrines for third party liability: vicarious infringement, contributory infringement, and inducing infringement. Third party liability in trademark law has been imposed for inducing infringement and a failure to take reasonable precautions against infringement. Although liability for the direct infringement of patents, copyrights or trademarks is imposed on a strict liability basis,3 liability for indirect infringement has generally required some sort of a showing of the third party’s intent, knowledge or control with respect to the direct infringement. The particular requirements for indirect infringement vary between patent, copyright and trademark law, and they appear to be still evolving in the case law.
The law of indirect infringement of patents, copyrights and trademarks derived from common law doctrines of joint liability for concerted action, aider and abetter liability, and liability for permitting or directing the conduct of another.4 These common law doctrines have evolved to produce an extensive and well-developed body of tort law that governs the liability of a third party for torts committed by one person against another. Since the indirect infringement of a patent, copyright, or trademark is a statutory tort,5 liability for indirect infringement represents a subset of this more general body of tort law.6 In general, a person’s liability for a tort committed by another should be dependent upon the person’s conduct, culpability, and relationship to the other person, rather than whether the tort is a statutory tort, such as the infringement of intellectual property, or a common law tort, such as trespass or negligence.
Unfortunately, the law of indirect infringement not only has become Balkanized within intellectual property law between its constituent areas of patent, copyright and trademark law, but it also has diverged from the general body of tort law. Cases and commentaries within each substantive area of intellectual property law have tended to focus on that particular area, and they have generally not considered the broader legal context in which the law of indirect infringement operates. One indication of this tendency is the peculiar specialized terminology of vicarious, contributory and inducing infringement7 used to denote the various types of indirect infringement. This specialized terminology has probably helped to promote variations in the substantive requirements for indirect infringement between patent, copyright and trademark law.
A comparison of general tort law to the law of indirect infringement provides two important benefits. First, the more developed body of general tort law may shed light on issues in the law of indirect infringement for which precedent does not yet exist, and this may help to resolve unsettled questions of indirect infringement law. Second, finding differences between general tort law principles and indirect infringement law may flag aspects of indirect infringement law that are unsound and need reexamination.
This Article examines the requirements for indirect infringement in patent, copyright and trademark law. Section II provides an overview of the general tort law which governs a person’s liability for torts committed by others that result in harm to third persons. Section III covers indirect infringement under patent law, where most of the intellectual property cases involving indirect infringement have arisen. Sections III and IV cover indirect infringement under copyright and trademark law, respectively.
II. Liability for Torts Committed by Others
There are a variety of circumstances in which a person may be held liable for a tort committed by another. One basis for liability arises when two or more persons act in concert with each other pursuant to a common end. This basis of liability is found in Restatement (Second) of Torts section 876(a), which provides: “For harm resulting to a third person from the tortious conduct of another, one is subject to liability if he (a) does a tortious act in concert with the other or pursuant to a common design with him, ....”8 The Comment to section 876(a) explains that parties act in concert “when they act in accordance with an agreement to cooperate in a particular line of conduct or to accomplish a particular result,” and that the early common law based their liability on a mutual agency between them.9 The Comment also emphasizes that the defendant’s conduct must itself be tortious for the defendant to be liable, and that a defendant will not be liable for an act that furthers the tortious conduct of another unless the defendant’s act is tortious.10 While section 876(a) requires the defendant and the other person to act in concert for the defendant to be liable for harm caused by the other person, it does not specify more about the defendant’s mental state. In addition, the section includes a caveat that the American Law Institute was not taking a position on whether the defendant must have intended to cause harm when the other person was strictly liable for the harm.11
Another basis for liability that is recognized arises when a person aids and abets the commission of a tort by another. This basis of liability is found in Restatement (Second) of Torts section 876(b), which provides: “For harm resulting to a third person from the tortious conduct of another, one is subject to liability if he ... (b) knows that the other's conduct constitutes a breach of duty and gives substantial assistance or encouragement to the other so to conduct himself, ....”12 While Section 876(a) is based on the defendant’s acting in concert with a tortfeasor pursuant to an agreement, section 876(b) is based on the defendant’s giving substantial assistance or encouragement to the tortfeasor. In contrast to section 876(a), section 876(b) expressly requires the defendant to know that the other person’s conduct is tortious, but it is subject to the caveat13 for section 876 with respect to the defendant’s intent. The defendant’s knowledge of the tortious nature of the tortfeasor’s conduct is crucial to the defendant’s liability, because it provides a basis for the defendant’s culpability and avoids holding parties liable who are not aware that they are unwittingly providing substantial assistance to a tortfeasor. The significance of the knowledge requirement for aiding and abetting liability was emphasized by Professor Ruder in the following example:
If all that is required in order to impose liability for aiding and abetting is that illegal activity under the securities laws exists and that a secondary defendant, such as a bank, gave aid to that illegal activity, the act of loaning funds to the market manipulator would clearly fall within that category and would expose the bank to liability for aiding and abetting. Imposition of such liability upon banks would virtually make them insurers regarding the conduct of insiders to whom they loan money. If it is assumed that an illegal scheme existed and that the bank's loan or other activity provided assistance to that scheme, some remaining distinguishing factor must be found in order to prevent such automatic liability. The bank's knowledge of the illegal scheme at the time it loaned the money or agreed to loan the money provides that additional factor.14
While proof of knowledge is essential for aider and abetter liability, knowledge may be inferred from circumstantial evidence.15
The Comment to section 876(b) gives the following rationale for holding a defendant liable for the tort of another: “Advice or encouragement to act operates as a moral support to a tortfeasor and if the act encouraged is known to be tortious it has the same effect upon the liability of the adviser as participation or physical assistance.”16 The Comment continues that the defendant’s assistance or encouragement must be a substantial factor in causing the tort, and that liability will be imposed whether the tort is intentional or merely negligent, and whether or not the tortfeasor knows the conduct constitutes a tort. The Comment also states that to determine whether the defendant’s assistance or encouragement is substantial enough for the defendant to be liable, the following factors should be considered: the nature of the act encouraged, the amount of assistance provided by the defendant, whether the defendant was present or absent at the time of the tort, the defendant’s relation to the tortfeasor, and the defendant’s state of mind.
Either sections 876(a) and 876(b) might apply to the infringement of patents, copyrights or trademarks. Section 876(a) would be applicable in cases where a defendant acted in concert with a direct infringer pursuant to an agreement to infringe either a patent, copyright, or trademark, and section 876(b) would be applicable where a defendant gave substantial assistance or encouragement to a direct infringer, provided the defendant knew the direct infringer’s conduct was infringing.
The application of sections 876(a) and 876(b) is illustrated by Halberstam v. Welch.17 After Welch killed her husband during a burglary of their home, the plaintiff brought a wrongful death action against both Welch and his live-companion, Hamilton. A judgment for $5.7 million was entered against both defendants, and the appellate court affirmed on the ground that Hamilton was liable both for acting in concert with Welch and for aiding and abetting Welch. While Hamilton did not participate directly in the burglary or killing, the court ruled that the evidence supported the inference that she acted in concert with Welch in his burglary enterprise by helping him dispose of stolen property and serving as his banker, bookkeeper, and secretary over a five year period.18
The court also ruled that Hamilton was liable as an aider and abetter, because she provided substantial assistance to Welch knowing that Welch’s conduct was tortious. While there was no direct evidence that Hamilton knew of the killing, the appellate court decided that the trial court’s inference that Hamilton knew Welch was involved in tortious activity was not clearly erroneous.19 The court ruled that Hamilton was liable for the killing as an aider and abetter, because the killing was a natural and foreseeable consequence of Welch’s tortious activity.20 In applying the factors from the Comment to section 876(b) for determining whether Hamilton’s assistance was sufficiently substantial to justify liability, the court emphasized Hamilton’s state of mind as shown by her long term participation in the burglary enterprise.21
Inducing another person’s tortious conduct is another basis for indirect liability. Restatement (Second) of Torts section 877(a) provides as follows for liability for inducing another person to commit a tort: “For harm resulting to a third person from the tortious conduct of another, one is subject to liability if he (a) orders or induces the conduct, if he knows or should know of circumstances that would make the conduct tortious if it were his own, ....22 Section 877(a) overlaps with section 876(b), because in many cases, a defendant may both order or induce another to commit a tort and also give substantial assistance or encouragement to the tortfeasor. Section 877(a) differs from 876(b), though, because by requiring the defendant to order or induce the tortious conduct, section 877(a) implies that the defendant must have a specific intent to cause the tortfeasor to engage in the tortious conduct. In contrast, the defendant’s state of mind is only one of five factors that are to be considered in determining whether the defendant’s assistance or encouragement was sufficient to warrant liability under section 876(b). Another significant difference between sections 877(a) and 876(b) is that section 876(b) requires the defendant to have actual knowledge that the tortfeasor’s conduct constitutes a breach of duty, while section 877(a) provides for liability if the defendant’s knowledge that the tortfeasor’s conduct is tortious is either actual or constructive. Thus, while section 877(a) requires a specific intent to induce tortious conduct, it requires only constructive knowledge that the tortfeasor’s conduct is tortious. The Comment to section 877(a) notes that in many situations a person giving the order or inducement would also be liable as a principal or master under the law of agency, but section 877(a) provides an independent ground for liability.23 Section 877(a) might be applied to the infringement of patents, copyrights, or trademarks, if the defendant ordered or induced the direct infringement, provided that the defendant had actual or constructive knowledge that the direct infringer’s conduct was infringing.
An additional basis for liability involves a defendant’s permitting a tortfeasor to use the defendant’s property to commit torts. Restatement (Second) of Torts section 877(c) provides: “For harm resulting to a third person from the tortious conduct of another, one is subject to liability if he ... (c) permits the other to act upon his premises or with his instrumentalities, knowing or having reason to know that the other is acting or will act tortiously, ....24 The Comment to this provision makes plain that liability is imposed with respect to a tortfeasor’s use of either the defendant’s land or chattels with the defendant’s permission.25 While section 877(c) could potentially be applicable to patent infringement, it would more likely apply to the infringement of copyrights or trademarks,26 if the defendant permitted the direct infringer to use the defendant’s land or chattels, provided that the defendant knew or had reason to know that the direct infringer was infringing the plaintiff’s copyright or trademarks.
Another source of liability for the torts of another may be found in the Restatement (Second) of Agency. An employer is liable for torts that employees commit in the course of their employment.27 In contrast, the general rule is that an employer is not liable for torts committed by independent contractors.28 The justification for this distinction is that unlike an employer’s power over an employee, an employer’s power over an independent contractor does not extend to controlling the manner in which the independent contractor works, and therefore, the independent contractor rather than the employer should bear responsibility for risks associated with the independent contractor’s working for the employer.
29 Numerous exceptions to the general rule have developed, but they generally fall under one of the following categories: where the harm was due to the employer’s negligence in selecting or supervising the independent contractor, a non-delegable duty of the employer was involved, or the work was inherently dangerous. None of these would appear to be applicable to the infringement of patents, copyrights, or trademarks. Accordingly, it would seem that the general rule that an employer is subject to liability for the torts of employees, but not of independent contractors, should apply to the infringement of intellectual property.30
This section has surveyed the general law of torts relating to the circumstances when a defendant may be liable for torts committed by others. The remaining sections will examine the law of indirect infringement of intellectual property and compare it to the general law of torts described in this section.
III. Indirect Patent Infringement
A claim for the indirect infringement of a patent typically arises in the context of the sale of a product that does not itself infringe, but which may be used by the purchaser to infringe the patent. In many cases, the product is a component of a patented machine, manufacture or composition of matter that consists of a combination of elements, and the patent will not be infringed unless the product satisfies all the elements of the patented combination. While the manufacture or sale of the component is not infringing by itself, the component is susceptible to the purchaser’s combining it with other components, thereby infringing the patent for the combination. Other cases may involve a patented process and the sale of a product that is susceptible to being used to infringe the patent for the process, but the product does not infringe unless it is actually used to do so. If there are a large number of purchasers and only one seller, it may not be feasible for the patentee to bring multiple actions against the purchasers, but it may be feasible to bring a single patent infringement action against the seller.
Indirect infringement in patent law originated in 1871 with the case of Wallace v. Holmes.31 The patent was for a lamp consisting of a burner and a glass chimney that was attached to the burner. The defendants manufactured and sold burners that were substantially the same as the burners described in the patent, but the defendants did not directly infringe the patent, because the defendants did not sell chimneys with the burners. Instead, the purchasers of the burners directly infringed the patent when they used the defendants’ burners with chimneys that they purchased separately. Nevertheless, the Circuit Court held that the defendants were liable for patent infringement because it found that the defendants acted in actual concert with the makers of glass chimneys to cause the patent to be infringed. The court noted that a burner and chimney were “each utterly useless without the other.”32 While there was no direct evidence that the defendants acted in actual concert with the makers of glass chimneys to infringe the patent, the court concluded that their actual concert was a “certain inference from the nature of the case, and the distinct efforts of the defendants to bring the burner into use, which can only be done by adding the chimney.”33 The court explained that even though the defendants may not have had an actual pre-arrangement with any particular person to supply the chimney to be added to the burner, each sale of a burner was a proposal to the purchaser to combine it with a chimney, and the purchase was a consent to the proposal. Thus, the defendants’ manufacture and sale of the burners made them active parties to the infringement.
The Wallace case relied on the defendant’s acting in concert as the basis for liability for indirect patent infringement, and therefore, the Wallace case would fit within the rule in Restatement (Second) of Torts section 876(a) for general tort law. Only a few years after the Wallace case, an additional basis for indirect patent infringement began to be reflected in the patent cases. In the 1878 case of Bowker v. Dows,34 the patent was for a fountain drink containing an extract called saponine that increased the foam in the fountain drink. The defendant sold a saponine extract to buyers who intended to combine it with the other ingredients to make the patented fountain drink. The court observed that the defendant’s manufacture and sale of the saponine extract would not alone be sufficient for indirect infringement. Nevertheless, the court imposed liability for indirect infringement because it found that the defendant had advertised and sold the saponine extract for the purpose of inducing the purchasers to use it to infringe the patent. The court explained:
The defendant sells an extract containing saponine to persons who intend to use it in the combination claimed in the patent, and it is advertised and sold for that very purpose. Such a sale we regard as an infringement of the patent, though the manufacture and sale of the extract of saponine would not, without more, be an infringement. Where the patent was for a combination of the burner and chimney of a lamp, and the defendant made and sold the burner intending that it should be used with the chimney, he was held by Judge Woodruff to be liable as an infringer. Wallace v. Holmes [Case No. 17,100]. We do not think that the law requires us to hold those persons who actually use the combination (most of them, and perhaps all, without any purpose or knowledge of infringing), as the only persons liable, to the exoneration of the only person who makes and sells the extract for the express and avowed purpose of its use in the combination.35
While the Bowker court relied on the Wallace case, Bowker is analytically distinct from Wallace. Liability in Wallace arose from the absence of any non-infringing uses for the burners that the defendants manufactured and sold, and it was based on the defendants acting in concert with the purchasers to infringe the patent. In contrast, the saponine extract in Bowker presumably had other uses (such as increasing foam in other fountain drinks) besides infringement of the patent; otherwise, the defendant’s manufacture and sale of it would have been sufficient for the imposition of liability. Liability in Bowker arose not merely from the defendant’s manufacture and sale of the saponine extract, but from the defendant’s advertising and selling the extract for the purpose of inducing the purchasers to infringe the patent.36 Referring to the general tort law principles in the prior section, the saponine manufacturer in Bowker would be liable as an aider or abetter under Restatement (Second) of Torts section 876(b), because it provided substantial assistance to the direct infringers by supplying them with saponine, provided there was evidence that the manufacturer had actual knowledge of the patent and that the buyers were infringing it. Alternatively, the saponine manufacturer in Bowker would be liable for inducing infringement under Restatement (Second) of Torts section 877(a) through its advertising if it knew or should have known that the buyers would use the saponine to infringe the patent.
Although the categories of indirect infringement in the Wallace and Bowker cases are analytically distinct, subsequent cases consolidated them under the single heading of contributory infringement with liability based on the defendant’s intent to assist another to infringe. For example, the Supreme Court approved the following statement in Henry v. A.B. Dick Co.:37 “‘Contributory infringement ... has been well defined as the intentional aiding of one person by another in the unlawful making, or selling, or using of the patented invention.’”38 A defendant’s intent to assist another to infringe could either be inferred from the absence of noninfringing uses for a product that the defendant sold39 or from evidence that the defendant induced purchasers of the product to infringe through advertising or other means.40
This consolidated version of contributory infringement is similar to the liability for aiding and abetting in Restatement (Second) of Torts section 876(b),41 where a defendant substantially assists or encourages another tortious conduct. Section 876(b) differs from the consolidated version of contributory infringement, however, in that section 876(b) expressly requires the defendant to know that the other person’s conduct is tortious, while the consolidated version of contributory infringement required the defendant to intentionally aid the other person in infringing the patent.
The development of the doctrine of contributory infringement had the beneficial effect of providing redress to patentees against aiders and abetters of patent infringement. It also led to abuse, however, as some patent holders sought to extend their patent rights beyond the legitimate scope of their patents to cover supplies and other staple materials that were used in their inventions. The first means they used were tying arrangements with purchasers of their products in which the patentees licensed their inventions in return for agreements that the purchasers would purchase supplies for the inventions exclusively from the patentees. Instead of enforcing the tying arrangements directly against the purchasers, patentees often relied on the doctrine of contributory infringement to enforce the tying arrangements against companies that provided supplies and other staple materials that the purchasers used to infringe the patents.42 Congress responded to this abuse with the Clayton Act,43 which prohibited tying arrangements. In addition, the Supreme Court created the doctrine of patent misuse to prevent patentees from enlarging their exclusive rights beyond the legitimate scope of their patents.44 In a series of decisions, the Supreme Court rapidly expanded the doctrine of patent misuse until it finally appeared to override the doctrine of contributory infringement.45 The patent bar reacted to these Supreme Court decisions by going to Congress to secure the adoption of section 271 of title 35 of the United States Code in 1952.46
Section 271 codified both the doctrines of contributory infringement and patent misuse so that they would no longer conflict with each other. It also subdivided the consolidated version of contributory infringement into two categories of indirect. Section 271(b) imposed liability on “[w]hoever actively induces infringement of a patent,”47 and it covered the circumstances in the Bowker case where the defendant advertised and sold its product for the express purpose that it would be used to infringe a patent. Section 271(c) imposed liability on the seller of “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.”48 Section 271(c) excluded from its scope the sale of “a staple article or commodity of commerce suitable for substantial noninfringing use.”49 Thus, section 271(c) would cover the sale of the burners in the Wallace case, but not the sale of glass chimneys, which would be excluded because they are staple articles, rather than a material part of the patented invention. By excluding the sale of staple articles from the scope of contributory infringement, section 271(c) avoids the abuses of the doctrine of contributory infringement that led to the development of the doctrine of patent misuse. Finally, section 271(d) limits the scope of patent misuse by excluding circumstances where liability is imposed under paragraphs (b) or (c).50
In terms of the provisions in the Restatement (Second) of Torts, section 271(b) is analogous to the provision for inducing infringement in Restatement (Second) of Torts section 877(a), and section 271(c) is analogous to the provision for aider and abetter liability in Restatement (Second) of Torts section 876(b). Restatement (Second) of Torts section 876(b) differs from section 271(c), however, in that it provides for liability if the aider and abetter “gives substantial assistance or encouragement” to the person committing the tort, while section 271(c) requires the sale of a component that is especially made or adapted for use in infringement of a patent and excludes the sale of a staple article that is suitable for substantial noninfringing use.
It is difficult to conceive of a circumstance where the sale of a component with no substantial noninfringing use would not substantially assist an infringer, and therefore, most of the time, selling a component with no substantial use other than for infringement would constitute “substantial assistance” to an infringer. On the other hand, an aider and abetter might give substantial assistance to an infringer by providing a staple article, because the staple article may be of substantial assistance for infringement, even though it also has substantial noninfringing uses. Therefore, the standard for contributory infringement under section 271(c) appears narrower than the standard for aider and abetter liability under Restatement (Second) of Torts section 876(b). Would it be possible to hold a defendant liable as an aider and abetter under section 876(b) for selling a staple article if there was proof that the defendant had actual knowledge that the buyer was using the staple article to infringe a patent? It would seem that the history behind the enactment of section 271 would preclude such a result. The Senate Report accompanying section 271 stated:
Considerable doubt and confusion as to the scope of contributory infringement has resulted from a number of decisions of the courts in recent years. The purpose of this section is to codify in statutory form principles of contributory infringement and at the same time eliminate this doubt and confusion. ... [Section 271(c)] is much more restricted than many proponents of contributory infringement believe should be in the case.51
It would be contrary to this legislative intent to extend liability for contributory infringement beyond the scope of section 271(c) to cover sales of products with substantial noninfringing uses.
The Supreme Court addressed the mental state required for contributory infringement under section 271(c) in Aro Manufacturing Co. v. Convertible Replacement Co.52 The Aro case involved a patent for automobile convertible tops, and it arose out of the defendant’s sale of replacements for fabric portions of wornout convertible tops to automobile owners. The automobile owners were liable for direct infringement, because the automobile manufacturer (Ford) had not obtained a license from the patentee for the convertible tops. By a 5-4 majority, the Supreme Court held that the defendant’s liability for contributory infringement under section 271(c) depended on the defendant’s knowledge not only that the fabric replacements were “especially made or especially adapted for use” in the convertible tops, but also that the use in the convertible tops would be infringing.53 The Court held that the defendant not only must have been aware of the patent but also it must have known that the automobile manufacturer was not licensed under the patent at the time that the defendant sold the fabric replacements to the automobile owners in order for the defendant’s sales to constitute contributory infringement. This result is consistent with Restatement (Second) of Torts § 876(b), which requires both that a defendant gave substantial assistance or encouragement to another person and that the defendant knew that the other person’s conduct constituted a breach of duty in order for the defendant to be liable for harm to a third person resulting from the other person’s conduct.54
While the defendant’s knowledge of infringement is required for liability for contributory infringement under section 271(c), there is no requirement of an intent to cause infringement under this provision.55 In contrast, there is an intent requirement for inducing infringement under section 271(b). In a number of recent cases, the Court of Appeals for the Federal Circuit has acknowledged an apparent lack of clarity concerning the precise contours of this intent requirement,56 and the issue has been discussed in several law review articles.57 The controversy concerns “whether the required intent must be merely to induce the specific acts [constituting infringement] or additionally to cause an infringement.”58
The apparent lack of clarity arises from two decisions of the Federal Circuit from 1990 – Hewlett-Packard Co. v. Bausch & Lomb Inc.59 and Manville Sales Corp. v. Paramount Systems, Inc.60 In the Hewlett-Packard case, the patentee asserted claims for direct infringement and inducing infringement against the owner of a division that its owner sold while the alleged infringement was occurring. The patentee asserted the claim for direct infringement against the owner of the division for the period before the sale and the claim for inducing infringement against the former owner for the period after the sale. With respect to the direct infringement, the owner admitted infringement but raised the defense of patent invalidity, and it denied liability for inducing infringement. The trial court decided that the owner of the division was liable for direct infringement before the sale, but the owner was not liable for inducing infringement after the sale, and the Federal Circuit affirmed.
In an opinion by Judge Rich, the Federal Circuit held that “proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement.”61 The Federal Circuit concluded that the owner was not liable for inducing infringement, because there was no proof of this intent. Focusing on the owner’s motives, the Federal Circuit decided that the owner was merely interested in selling the division for the highest possible price, and the owner did care not whether the division continued to infringe the patent after the sale or not. Because the Federal Circuit ruled that the owner did not intend to induce the acts which constituted the infringement, it did not need to address whether there were additional reasons that the defendant was not liable for inducing infringement. Had the court done so, it might have decided that the owner was also not liable for inducing infringement because the owner believed the patent was invalid, as the owner had asserted in defending against the direct infringement claim
The Manville case involved the personal liability of corporate officers for patent infringement by their corporation based on their inducing infringement by the corporation. In reversing a judgment with respect to the officers’ liability for inducing infringement, the Federal Circuit held: “The plaintiff has the burden of showing that the alleged infringer's actions induced infringing acts and that he knew or should have known his actions would induce actual infringements.”62 The Federal Circuit decided that the corporate officers were not liable for inducing patent infringement by their corporation, because there was no basis for concluding that they knew or should have known that their actions would induce actual infringements. The officers had no way of knowing that their actions would induce infringement before the suit was filed because they were not aware of the patent until after the suit was filed, and they were not liable for inducing patent infringement after the suit was filed because of their good faith belief, based on advice of counsel, that their corporation’s accused product did not infringe.
The difference between the standards in the Hewlett-Packard and Manville cases is the second part of the Manville standard: that the defendant knew or should have known that the defendant’s actions would induce actual infringements. The standards in Hewlett-Packard and Manville are not really inconsistent, however, because the Hewlett-Packard case did not purport to rule that the intent to induce the acts that constituted infringement was sufficient for inducing infringement.63 Instead, the Hewlett-Packard case held that this intent was only “a necessary prerequisite” to inducing infringement.64
The Manville standard has two mental state components: a specific intent to induce the acts constituting infringement and a mental state of knowledge that the conduct being induced was infringing. The Manville standard closely tracks the provisions of Restatement (Second) of Torts section 877(a),65 under which a defendant is subject to liability for inducing tortious conduct of another if the defendant knows or should know of circumstances that would make the conduct tortious if the conduct were the defendant’s own. In addition, the knowledge component for inducing infringement in Manville is similar to the requirement that the Supreme Court mandated for contributory infringement in Aro, except that the Supreme Court required the defendant to have actual knowledge of the direct infringement in Aro,66 while the Manville case allows liability to be based on either actual or constructive knowledge.
Even though there is no real inconsistency between the Hewlett-Packard and Manville standards, several subsequent Federal Circuit cases have noted an apparent conflict between them. The first case to do so was Insituform Technologies, Inc. v. Cat Contracting, Inc.,67 where the court stated that there was “lack of clarity concerning whether the required intent must be merely to induce the specific acts or additionally to cause an infringement.”68 This statement was followed by citations to the Manville and Hewlett-Packard cases with parenthetical quotations from each of them, including the statement in Hewlett-Packard that an intent to cause the acts constituting infringement was a “necessary prerequisite” to inducing infringement. Although the Insituform decision quoted Hewlett-Packard correctly, the court appeared to interpret the quoted statement as saying that an intent to cause the acts constituting infringement was sufficient for liability for inducing infringement.69 The Federal Circuit continued that it was unnecessary to resolve any ambiguity in the case law, because there was sufficient evidence to affirm the trial court’s finding of liability for inducing infringement under either standard. The court then delineated the evidence that established both the defendant’s intent to induce the acts constituting infringement and the defendant’s knowledge that the acts were infringing.
Similarly, in Fuji Photo Film Co., Ltd. v. Jazz Photo Corp.70 and Golden Blount, Inc. v. Robert H. Peterson Co.,71 the Federal Circuit said that there was a lack of clarity with respect to the intent required for inducing infringement, but then went on to affirm the trial courts’ finding of liability after reviewing the evidence presented of the respective defendants’ intent to induce the acts constituting infringement and their knowledge that the acts were infringing.72 Both the Insituform and Fuji Photo opinions appeared to characterize the knowledge component in Manville as an intent requirement, because they each referred to evidence of the defendants’ awareness of the patent and the charges of infringement as proof of the intent to induce infringement, rather than as proof of the defendants’ knowledge of the infringing activities.73
The other two cases in which the Federal Circuit has referred to a lack of clarity with respect to the intent required for inducing infringement were both concerned with whether the defendant intended to induce the acts constituting infringement, rather than whether had knowledge that the acts constituted patent infringement. In Mercexchange, L.L.C. v. eBay, Inc.,74 the Federal Circuit found there was no evidence that the defendant intended to induce the acts constituting infringement,75 and it therefore reversed the judgment holding the defendant liable for inducing infringement. In MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp.,76 the Federal Circuit found that there were genuine issues of material fact concerning whether the defendant intended to induce the acts constituting infringement, and therefore, it reversed a summary judgment for the defendant.
Thus, although there is language repeated in several recent Federal Circuit opinions and law review articles suggesting that the case law with respect to the intent required for inducing infringement is in disarray, the Federal Circuit has managed to apply the holdings from Hewlett-Packard and Manville in a consistent manner. To reiterate, the mental state that Hewlett-Packard requires for liability for inducing infringement under section 271(b) is a specific intent by the defendant to induce the direct infringer’s acts that constitute infringement,77 and Manville requires in addition that the defendant knew or should have known that the direct infringer’s acts would be infringing.78 These requirements are substantially the same as those found in Restatement of Torts (Second) section 877(a) for tort liability for inducing another’s tortious conduct that results in harm to a third person. In contrast, the mental state required for liability for contributory infringement under section 271(c) is the defendant’s knowledge that “the combination for which his component was especially designed was both patented and infringing.”79
The next section examines the mental states required for indirect liability for copyright infringement and compares them to the general tort standards for indirect liability.
IV. Indirect Copyright Infringement
The contexts in which claims for indirect copyright infringement arise differ from the contexts for indirect patent infringement. Typically, indirect patent infringement claims arise out of the sale of a component of a product that is used by a purchaser to infringe a patent for the product or the sale of a product that is used by a purchaser to infringe a patented method.80 In contrast, indirect copyright infringement claims mostly arise in two other contexts.
In the first context, the defendant has control of premises where copyright infringement is occurring and receives financial benefit from the copyright infringement. Liability is imposed under the heading of vicarious copyright infringement, and it is based on an extension of the agency principle of respondeat superior.81 In the second context, the defendant either materially contributes to or induces copyright infringement by another person and the defendant knows of the infringement. Liability is imposed under the heading of contributory copyright infringement, and the standard for it is similar to that set out in Restatement (Second) of Torts sections 876(b)82 and 877(a).83
The doctrine of vicarious copyright infringement developed out of a series of dance hall cases in which dance hall proprietors were held to be liable for copyright infringement by orchestras that were performing at the dance halls. Liability was imposed on the dance hall proprietors even though the orchestras were independent contractors, rather than employees of the proprietors,84 the proprietors did not participate in the selection of the infringing music,85 and the proprietors neither intended to infringe nor knew of the copyright infringement by the orchestras.86 Summarizing these cases, the Second Circuit concluded in Shapiro, Bernstein & Co. v. H.L. Green Co.87 that liability for vicarious copyright infringement could be predicated on the defendant’s right and ability to supervise the infringing activity together with the defendant’s direct financial interest in the exploitation of the copyrighted materials. The policy for imposing liability when these conditions were satisfied was that placing responsibility on the defendant would encourage it to police the conduct of the infringer and thereby promote enforcement of the copyright law.88 In upholding a finding of vicarious copyright infringement in Gershwin Publishing Corp. v. Columbia Artists Management, Inc.,89 the Second Circuit summarized the holding in the Shapiro case as follows: “[E]ven in the absence of an employer-employee relationship one may be vicariously liable if he has the right and ability to supervise the infringing activity and also has a direct financial interest in such activities.”90
The Ninth Circuit followed Shapiro in Fonovisa, Inc. v. Cherry Auction, Inc.91 The court held that a complaint stated a claim for vicarious copyright infringement against the operators of a swap meet on account of the sale of counterfeit copyrighted recordings by vendors at the swap meet. In addition, in A&M Records, Inc. v. Napster, Inc.,92 the Ninth Circuit affirmed a decision that the plaintiffs had demonstrated a likelihood of success with respect to a vicarious copyright infringement claim. In other cases, courts have found that the elements of vicarious copyright infringement had not been satisfied93 or else have noted the existence of the theory of vicarious copyright but decided that it was unnecessary to address it.94
The doctrine of contributory copyright infringement originated in Kalem Co. v. Harper Brothers,
95 where the Supreme Court grounded the doctrine “on principles recognized in every part of the law.”96 The defendant produced a film version of the novel, Ben Hur, and then advertised and sold films to jobbers who infringed the plaintiff’s copyright by publicly displaying the films. Holding that the defendant was liable for contributory infringement of the copyright, Justice Holmes explained:
The defendant not only expected but invoked by advertisement the use of its films for dramatic reproduction of the story. That was the most conspicuous purpose for which they could be used, and the one for which especially they were made. If the defendant did not contribute to the infringement, it is impossible to do so except by taking part in the final act. It is liable on principles recognized in every part of the law.97
In a subsequent case, Justice Cardozo described the controlling principle from Kalem as follows: “One who sells a film with the intention that the buyer shall use it in the infringement of a copyrighted drama is himself liable as an infringer.”98