protocol worked, infringing materials did not pass through the defendants’ system, which the
court ruled was a prerequisite for the Section 512(a) safe harbor.^2349
On appeal, the Ninth Circuit affirmed, although on a different rationale. It began its
analysis with an examination of whether applying the safe harbor to inducement liability would
be inconsistent with Section 512(i)(a)(A)’s requirement that the service provider implement a
policy of removing repeat infringers. The court concluded that there was no inherent
incompatibility. In some instances the Grokster standard of inducement might be met even
where a service provider had a policy of removing proven repeat infringers. It was therefore
conceivable that a service provider liable for inducement could be entitled to protection under the
safe harbors.^2350 Said the court: “In light of these considerations, we are not clairvoyant enough
to be sure that there are no instances in which a defendant otherwise liable for contributor
copyright infringement could meet the prerequisites for one or more of the DMCA safe harbors.
We therefore think it best to conduct the two inquiries independently – although, as will appear,
aspects of the inducing behavior that give rise to liability are relevant to the operation of some of
the DMCA safe harbors and can, in some circumstances, preclude their application.”^2351
Turning to the applicability of the Section 512(a) safe harbor in particular, the Ninth
Circuit noted that the district court was in error to find Fung ineligible for the Section 512(a) safe
harbor on the ground that infringing materials were not passing through or residing on Fung’s
system. The Ninth Circuit had previously ruled in CCBill that Section 512(a) provides immunity
for transmitting all digital online communications, not just those that directly infringe. Here,
although it was not clear the plaintiffs were seeking to establish liability based directly on the
tracking functions of Fung’s trackers, those trackers generated information concerning the torrent
files transmitted that Fung then compiled and used to induce further infringing use of his web
sites and trackers. In that sense, the tracking function was connected to the basis on which
liability was sought and found (the dot-torrent files Fung collected and indexed). Without
determining whether that information-generating use would itself affect the availability of the
Section 512(a) safe harbor, the court held the safe harbor not available for Fung’s trackers on
other grounds. Specifically, the trackers did not fit the definition of “service provider” applying
to the Section 512(a) safe harbor, which requires the service provider to provide connections
between or among points specified by a user. In this case, it was Fung’s tracker that selected the
“points” (i.e., the publishers from which chunks of data would be transmitted) to which a user’s
client would connect in order to download a file, not the users themselves. Accordingly, the
Section 512(a) safe harbor was not available to Fung.^2352
(^2349) Id. at *60 n.26.
(^2350) Columbia Pictures Industries, Inc. v. Fung, 710 F.3d 1020, 1040 (9th Cir. 2013).
(^2351) Id.
(^2352) Id. at 1041.