demonstrate, beyond genuine debate, a reasonable prospect that substantial or commercially
significant noninfringing uses were likely to develop over time.”^1929
Concerning the second principle, Justice Ginsburg stated, “Even if the absolute number
of noninfringing files copied using the Grokster and StreamCast software is large, it does not
follow that the products are therefore put to substantial noninfringing uses and are thus immune
from liability. The number of noninfringing copies may be reflective of, and dwarfed by, the
huge total volume of files shared.”^1930
The second concurring opinion, authored by Justice Breyer and joined by Justices
Stevens and O’Connor, expressly disagreed with Justice Ginsburg’s opinion and articulated a
very different understanding of the Sony safe harbor. Justice Breyer began his analysis by noting
how low a number of actual authorized uses were required in Sony to qualify as “substantial.”
Specifically, the record showed that of all the taping actually done by Sony’s customers, only
around 9% was of the sort the Court referred to as authorized, yet the Court found the magnitude
of authorized programming was “significant.”^1931 Justice Breyer noted that the Sony Court had
concluded from this evidence that rights owners had authorized duplication of their copyrighted
programs “in significant enough numbers to create a substantial market for a noninfringing use”
of the VCR.^1932 By using the key word “substantial,” the Sony Court had concluded that 9%
authorized uses alone constituted a sufficient basis for rejecting the imposition of secondary
liability. Justice Breyer then concluded that, when measured against the evidence of authorized
use present in Sony, the evidence before the Court in the Grokster case should be sufficient to
pass the test of Sony. Specifically, the plaintiffs’ evidence showed 75% of current files available
on Grokster as infringing and 15% likely infringing. That left approximately 10% of files that
were apparently noninfringing, a figure very similar to the 9% of authorized uses of the VCR the
Court faced in Sony.^1933
In addition, Justice Breyer noted that Sony’s standard also incorporates the word
“capable” with respect to noninfringing uses, and concluded “that a figure like 10%, if fixed for
all time, might well prove insufficient, but that such a figure serves as an adequate foundation
where there is a reasonable prospect of expanded legitimate uses over time.”^1934 He found that
the record revealed a significant future market for noninfringing uses of peer-to-peer software
like Grokster’s, and the combination of such foreseeable development, together with an
estimated 10% of existing noninfringing material, is sufficient to meet Sony’s standard.^1935
(^1929) Id. at 948
(^1930) Id.
(^1931) Id. at 950-51.
(^1932) Id. at 951 (quoting Sony, 464 U.S. at 447 n.28) (emphasis added by Justice Breyer).
(^1933) Grokster, 545 U.S. at 952.
(^1934) Id.
(^1935) Id. at 954.