The Ninth Circuit agreed, however, with the district court that Perfect 10 failed to provide
any evidence directly establishing that users of Google’s search engine had stored infringing
images on their computers. Finally, the Ninth Circuit agreed with the district court that any
cache copies of full size images made by users who linked to infringing web sites were a fair use.
The copying performed automatically by a user’s computer to assist in accessing the Internet was
a transformative use and did not supersede the copyright holder’s exploitation of the work.^602
“Such automatic background copying has no more than a minimal effect on Perfect 10’s rights,
but a considerable public benefit.”^603 Accordingly, the Ninth Circuit assessed Google’s
secondary liability based solely with respect to activities of third party web sites that reproduced,
displayed, and distributed unauthorized copies of Perfect 10’s images on the Internet.^604
Turning to whether Google could be secondarily liable for the infringing acts of those
third party web sites, the Ninth Circuit first noted that under the Sony doctrine, Google could not
be held liable for contributory infringement based solely on the fact that the design of its search
engine facilitated such infringement. Nor, under footnote 12 of the Supreme Court’s Grokster
decision, could Google be held liable solely because it did not develop technology that would
enable its search engine to automatically avoid infringing images.^605
The Ninth Circuit next held that Google could not be liable under the Supreme Court’s
inducement test in Grokster, because Google had not promoted the use of its search engine
specifically to infringe copyrights.^606 In reaching this result, however, the Ninth Circuit appears
to have put a gloss on the Supreme Court’s test for inducement liability, for in addition to noting
that inducement liability could result from intentionally encouraging infringement through
specific acts, the Ninth Circuit stated that intent could be imputed “if the actor knowingly takes
steps that are substantially certain to result in ... direct infringement.”^607
Finally, turning to whether Google could have secondary liability under the traditional
common law doctrine of contributory liability, the Ninth Circuit, citing its Napster decisions,
noted that it had “further refined this test in the context of cyberspace to determine when
contributory liability can be imposed on a provider of Internet access or services.”^608 The Ninth
Circuit noted that under both Napster and Netcom, a service provider’s knowing failure to
prevent infringing actions could be the basis for imposing contributory liability, because under
such circumstances, the intent required under the Supreme Court’s Grokster decision may be
imputed. Accordingly, the Ninth Circuit articulated the following test for contributory liability
in the context of cyberspace:
(^602) Id.
(^603) Id.
(^604) Id. at 1170.
(^605) Id.
(^606) Id. at 1171 n.11.
(^607) Id. at 1171.
(^608) Id.