technology could therefore have different liability depending upon their actions and the
intent behind them.- Even where a distributed technology is used by some to commit infringement, the vendor
of that technology can engage in ordinary acts incident to product distribution, such as
offering customers technical support or product updates, and those acts, in themselves,
will not establish inducement liability.^1920 - The basic immunity of the Sony case remains intact. Sony continues to “bar[] 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, which the distributor
knows is in fact used for infringement.”^1921 - In judging the subjective intent of a defendant accused of inducing infringement, a court
may look at evidence of internal communications (whether or not released to the public
or potential users), the business model of the defendant and whether it is predicated on
infringement, product naming, advertising and press kits, customer support activities in
response to specific questions about how to use the technology for infringing acts,
targeting of users who are known to be committing or likely to commit infringing acts
using the technology in question, whether the defendant has taken steps to reduce or
eliminate use of its technology for infringement, and whether the defendant’s gain is
proportional to infringing volume. - In the absence of other evidence of intent, mere failure to design or redesign a technology
to avoid or reduce infringing uses, by itself, cannot form the basis of liability, if the
technology is otherwise capable of substantial noninfringing uses.^1922 Where there is
other evidence of purpose, however, failure to take steps to prevent infringing uses of a
technology can reinforce an inference of subjective intent to induce infringement. - The traditional tests for secondary liability – the contributory and vicarious liability
doctrines – as articulated by the courts before the Grokster case remain intact.
The Court left open a host of questions with respect to the issue of product design and
infringement avoidance, which the lower courts will be left to work out:
- What threshold showing of intent must be made before the failure to design a product to
reduce or avoid infringement becomes relevant to show culpable purpose to encourage
infringement? The Court’s opinion generally requires “clear expression or other
affirmative steps” to promote infringement. Must the plaintiff therefore show a “clear
expression” of purpose or “affirmative steps” taken through other evidence before the
evidence of failure to design becomes even relevant? Or is a lesser quantum of other
(^1920) Id. at 937.
(^1921) Id. at 933.
(^1922) Id. at 939 n.12.