Justice Breyer concluded his opinion with the question of whether a modified Sony rule
would yield a positive copyright impact that would outweigh any technology-related loss.
Although he acknowledged that a more intrusive Sony test would generally provide greater
revenue security for copyright holders, he found it harder to conclude that the gains to copyright
holders would exceed the losses to innovation. “For one thing, the law disfavors equating the
two different kinds of gain and loss; rather, it leans in favor of protecting technology.”^1942 In
addition, since Sony has been the law for quite some time, there should be a serious burden on
copyright holders to show a need for a more strict interpretation of the current rules. Justice
Breyer concluded that a strong demonstrated need for interpreting the Sony standard more
strictly had not been shown and that the Court should maintain Sony, reading it as he had
interpreted it.^1943
Issues Left Open by the Supreme Court. The Supreme Court’s opinion left open a host of
unanswered questions concerning secondary liability and the scope of the Sony immunity.
Among them are the following:
- Whether there is any substantive difference between the phrases “capable of substantial
noninfringing uses” and “capable of commercially significant noninfringing uses” as used
in Sony. None of the majority opinion or the two concurrences expressly analyzes a
difference, and all seem to treat the phrases as interchangeable. However, given that all
justices agreed that the Sony standard need not be revisited as part of the Court’s
disposition of the case, and given that Justice Souter introduced yet a third phrase in the
majority opinion – “capable of substantial lawful use” – the issue was not definitively
resolved by the case. - Whether Sony requires consideration of the relative balance of the infringing uses against
the noninfringing uses of a technology. Justice Ginsburg’s concurrence seems to require
such a balance, whereas Justice Breyer’s concurrence does not. The majority opinion
does not reach the issue. - Whether Sony requires some minimal threshold of noninfringing uses, and if so, what
that threshold is. The wide split in conclusions from the record in the Grokster case
expressed in the concurring opinions illustrate how unsettled this question was among the
members of the Court that decided Grokster. Moreover, three justices did not express an
opinion of any kind on the issue. - What “capable of” means in the Sony test. Both concurrences seem to reject a meaning
of purely theoretical uses. However, Justice Ginsburg’s concurrence focuses much more
on the actual uses of a product, whereas Justice Breyer’s concurrence evidences more of
a willingness to look to future legitimate uses that might be precluded by a strict
interpretation of the Sony safe harbor. Stated differently, Justice Ginsburg’s concurrence
(^1942) Id. at 960.
(^1943) Id. at 960-66.