promotion of a technology, including purely internal communications, will be crucial to the issue
of intent and therefore the focus of discovery and litigation in inducement cases.
The Concurring Opinions – Disagreement About the Scope of the Sony Safe Harbor.
Despite the urging of the petitioners, the majority opinion found it unnecessary to provide “a
more quantified description” of what level of noninfringing uses are required to qualify as
“substantial” or “commercially significant” within the meaning of Sony. Six of the justices,
however, in two concurring opinions, joined this issue and advocated significantly different
positions.
The first concurring opinion was authored by Justice Ginsburg and joined by Chief
Justice Rehnquist and Justice Kennedy. Justice Ginsburg noted that, in addition to liability under
the inducement doctrine articulated by the majority, one could be liable under traditional
contributory infringement principles for distributing a product that users use to infringe
copyrights, if the product is not capable of “substantial” or “commercially significant” uses.^1925
Without choosing between, or articulating any difference between, the two phrases “substantial”
and “commercially significant,” she elaborated on her understanding of what those phrases in
Sony mean collectively.
Although not stating so explicitly, Justice Ginsburg’s opinion seems based on two key
interpretations of the Sony safe harbor: (i) that it requires a court to focus more on actual uses of
a product, or those that are concretely likely to develop over time, rather than merely potential
uses, and (ii) that one should balance the relative numbers of infringing and noninfringing uses,
and not merely the absolute number of noninfringing uses.
With respect to the first principle, Justice Ginsburg expressed the belief that, unlike in
Sony, there had been no finding of fair use and “little beyond anecdotal evidence of
noninfringing uses.”^1926 She noted that the district court’s conclusion of substantial
noninfringing uses rested almost entirely on a collection of declarations submitted by Grokster
and StreamCast, and that review of those declarations showed a collection of mostly anecdotal
evidence, sometimes obtained second-hand, of authorized copyrighted works or public domain
works available online and shared through peer-to-peer networks, and general statements about
the benefits of peer-to-peer technology.^1927 She concluded that the declarations did not support
summary judgment in the face of evidence proffered by the plaintiffs of “overwhelming use of
Grokster’s and StreamCast’s software for infringement”^1928 – clearly focusing on the current,
actual uses of the software. Nor did she see a realistic possibility that concrete noninfringing
uses were likely to develop over time. “Fairly appraised, the evidence was insufficient to
(^1925) Id. at 942 (Ginsburg, J., concurring).
(^1926) Id. at 945.
(^1927) Id. at 946.
(^1928) Id. at 947.