metadata for any web pages, or maintaining browseable web site categories of Dot-torrent or
similar files using, titles of the plaintiffs’ copyrighted works or terms widely known to be
associated with copyright infringement (such as “warez,” “Axxo,” “Jaybo,” “DVD Rips,” and
the like); or soliciting or targeting a user base generally understood, in substantial part, to be
engaging in infringement of or seeking to infringe the plaintiffs’ copyrighted works.^2207 The
injunction also provided that, “In the event a commercial vendor or other third party becomes
able to provide Defendants with a reliable list of Plaintiffs’ Copyrighted Works, Plaintiffs may
apply to the Court for an order modifying this Permanent Injunction to relieve them of the
obligation of providing Defendants with lists of titles, even if there is a cost to Defendants of
securing the lists of titles from the commercial vendor or third party.”^2208
The Ninth Circuit’s DecisionOn appeal, the Ninth Circuit affirmed liability on the part of the defendants for
inducement. After an extensive recap of the Supreme Court’s Grokster decision, the Ninth
Circuit summarized that the inducement principle enunciated in Grokster has four elements: (1)
the distribution of a device or product, (2) acts of infringement, (3) an object of promoting its use
to infringe copyright, and (4) causation.^2209 The Ninth Circuit addressed the applicability of each
of these elements in turn to the facts of the case.
With respect to element (1) – the distribution of a device or product – Fung argued that
because he did not develop or distribute any “device” – that is, the software or technology used
for downloading – he was not liable under the inducement principle enunciated in Grokster. The
Ninth Circuit disagreed, noting that language in the Supreme Court’s Grokster opinion indicated
that inducement liability is not limited to those who distribute a “device,” but also those who
provide some service used in accomplishing the infringement.^2210
With respect to element (2) – acts of infringement – the court began by observing that
both uploading and downloading copyrighted material are infringing acts. The former violates
the copyright holder’s right to distribution, the latter the right to reproduction. Based on
statistical sampling, one of the plaintiffs’ experts averred that between 90 and 96% of the content
associated with the torrent files available on Fung’s web sites were for confirmed or highly likely
copyright infringing material. Thus, wide acts of infringement were occurring on Fung’s web
sites.^2211
With respect to element (3) – an object of promoting use to infringe copyright – Fung
argued that this factor includes two separate elements, the improper object and clear expression
or other affirmative steps taken to foster infringement. The court disagreed, ruling that “clear
(^2207) Columbia Pictures Industries, Inc. v. Fung, 2010 U.S. Dist. LEXIS 91169 at 20-23 (C.D. Cal. May 20, 2010),
rev’d as to scope of injunction, 710 F.3d 1020 (9th Cir. 2013).
(^2208) Id. at 25.
(^2209) Columbia Pictures Industries, Inc. v. Fung, 710 F.3d 1020, 1032 (9th Cir. 2013).
(^2210) Id. at 1033.
(^2211) Id. at 1034.