evidence sufficient to trigger the relevancy of failure to design evidence, which can then
be aggregated with such other evidence to make a showing of “clear expression”? If a
lesser quantum of other evidence is sufficient, what is that quantum?^1923 And must such
other evidence be direct evidence, or may it be circumstantial evidence?- Once evidence of failure to design to avoid infringement becomes relevant, what
substantive standard governs the extent to which the product must be designed to avoid or
reduce infringement? Presumably some kind of reasonableness standard will govern that
looks to both the state of the art of technology that could be deployed in the design to
reduce infringement, as well as the costs and benefits of that technology. - Does the copyright holder itself have a duty to reduce or prevent infringement of its
copyrighted material by deploying technology (such as DRM technology) to protect it at
the time of distribution? If so, how is the burden to deploy technological means to reduce
infringement to be allocated between the copyright holder and the distributor of the
products or services that are ultimately used to commit infringement? - Can a defendant use evidence of affirmative steps it took to prevent infringement as a
defense to inducement liability? - Monetary gain from infringing activity does not by itself justify an inference of unlawful
intent. But where there is other strong evidence of unlawful intent, gain that is
proportional to infringing activity can be reinforcing evidence of intent.^1924 Similar
questions as those discussed in the preceding bullets arise with respect to the threshold
showing of intent through other evidence that must be made before evidence of monetary
gain from infringing activity is relevant. Also unknown is the substantive standard
governing what kinds of monetary gain will be cognizable as evidence of intent to
promote infringement, and how directly tied to the infringing activity such monetary gain
must be.
One can expect that the doctrine of inducement will take on a jurisprudential life of its
own, with attendant uncertainty as to standards and outcomes as further judicial development
takes place. The focus on subjective intent and the business model of the defendant will likely
make summary judgment more difficult to obtain in inducement cases than in other secondary
liability cases. Finally, one can expect that the written record relating to development and
(^1923) The inducement rule set up by the Court in Grokster appears to differ a bit from the active inducement rule in
patent law. Some patent cases, most notably Oak Industries, Inc. v. Zenith Electronics Corp., 726 F. Supp.
1525 (N.D. Ill. 1989), distinguish between an affirmative act directed toward encouraging or promoting
infringement, and the distinct element of intent to induce, which can be proved by evidence not only of
affirmative acts but also design omissions. By contrast, the Grokster opinion requires that intent be shown by
“clear expression or other affirmative steps taken to foster to infringement.” Unlike the patent law, then, intent
cannot be established through acts of design omission alone. See Matthew Brown et al., “Secondary Liability
for Inducing Copyright Infringement After MGM v. Grokster: Infringement-Prevention and Product Design,”
Journal of Internet Law, Dec. 2005, at 21, 25.
(^1924) Grokster, 545 U.S. at 940.