contribution to infringement must be intentional for liability to arise. Mere knowledge of
infringing potential or of actual infringing uses does not subject a product distributor or service
provider to liability. However, the element of intent may be imputed to include the natural and
probable consequences of one’s conduct. In the case of inducement to infringe, intent is
manifested where the service provider has actual knowledge that specific infringing material is
available using its system and fails to take reasonable and feasible steps to refrain from providing
access to infringing images.^2109
Under either form of contributory liability, Perfect 10 was required to prove that
Giganews had actual knowledge of specific acts of infringement. With the exception of items
brought to Giganews’ attention through Perfect 10’s DMCA takedown notices, the court found
there was no evidence that Giganews ever had actual knowledge of any specific Perfect 10
images on its servers. The court rejected Perfect 10’s contention that Giganews had constructive
knowledge that every post submitted under the same email address used in an identified
infringing message or using the same image identifier was infringing. The court noted that the
basic structure of USENET posting makes it impossible to tell if two messages with the same
sender email address are actually from the same person or whether two posts with the same
image identifier actually contain the same image. The only information truly unique to a
USENET post is its Message-ID.^2110
With respect to the DMCA notices sent by Perfect 10 – which if they conformed to the
requirements of Section 512(c) of the DMCA would confer actual knowledge on the part of
Giganews – Judge Birotte noted that Judge Collins had already observed that Perfect 10’s
practice of sending Giganews screenshots of a newsreader window along with instructions to
conduct searches of specific names within certain newsgroups, and instructing Giganews that all
of the messages yielded by those searches on a certain date contained infringing material, failed
to substantially comply with the requirements for a DMCA takedown notice. Even putting aside
the fact that USENET material is constantly in a state of flux, Perfect 10’s voluminous search-
screenshot takedown notices would require a manual, line-by-line comparison of countless
individual search results for each notice. And even Perfect 10’s evidence revealed that its own
search-criteria method yielded some messages that were non-infringing. Instead, the only
undisputed method for consistently identifying a specific USENET message that Giganews could
promptly remove was the post’s Message-ID. Where Perfect 10’s takedown notices included the
relevant Message-ID, the evidence showed that Giganews promptly disabled access to the
offending message.^2111
Perfect 10 attempted to create a fact issue by pointing to 542 messages where Message-
IDs were supplied and Giganews did not take the posts down. However, Perfect 10 had
submitted those Message-IDs by faxing screen printouts with the Message-ID in small text, with
contribution’ theory of liability appears to be a restatement of the ‘encouraging’ theory of liability articulated by
the Supreme Court in Grokster.” Id. at p. 8 n.3.(^2109) Id. at p. 8.
(^2110) Id. at pp. 9-10.
(^2111) Id. at pp. 10-12.