As yesterday’s post explained, contributory copyright liability emerged in the nineteenth century, but was not given a determinative test until 1970, in the Second Circuit’s opinion in Gershwin Publishing Corp. v. Columbia Artists Management, Inc. Under that test, a secondary actor could be held contributorily liable for someone else’s infringement if the actor had knowledge of the infringing activity and materially contributed to it.

That test was difficult enough to apply consistently on its own. But in 2005, the Supreme Court threw a further monkey wrench into the works when it resurrected Gershwin’s use of the term “inducement.” In a case involving the distribution of filesharing software to a group largely consisting of infringers, the Court stated the test for contributory liability as follows:

One infringes contributorily by intentionally inducing or encouraging direct infringement, see Gershwin Pub. Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (C.A.2 1971)…. [T]hese doctrines of secondary liability emerged from common law principles and are well established in the law, [Sony Corp. v. Universal City Studios, 464 U.S.,] at 486 (Blackmun, J., dissenting); Kalem Co. v. Harper Brothers, 222 U.S. 55, 62–63 (1911); Gershwin Pub. Corp. v. Columbia Artists Management, supra, at 1162; 3 M. Nimmer & D. Nimmer, Copyright § 12.04[A] (2005).

MGM v. Grokster, 545 U.S. 913, 930–31 (2005).

For the past two decades it’s been unclear what the Grokster Court meant to do here. Was it reformulating the traditional test for contributory infringement to focus only on intentional inducement, rather than knowledge and material contribution? If so, then why the unqualified citations to Gershwin? If not, did this passage just add inducement as an additional form of indirect liability, or did it change Gershwin somehow?

Lower courts, for the most part, read Grokster the last way—inducement was not a complete substitution for the traditional material contribution test, but the traditional test didn’t come through unscathed either. If Grokster was just resurrecting “inducement” as a way of satisfying the second element of Gershwin, then why does Grokster talk about intent? There’s no mention of intent in Gershwin, only knowledge. If Grokster instead intended to add a third form of indirect liability to copyright law, why does the Court call it “contributor[y]” infringement?

The Ninth and the Fourth Circuits have solved this problem by reading Grokster as allowing either inducement or material contribution to satisfy the second element, but in either case requiring intent for the first element. So traditional contributory liability is therefore providing a material contribution to an infringer with the intent to further the infringement. The Fourth Circuit has tried to cram Gershwin back into Grokster by observing that, in standard tort law, intent can be presumed from knowledge that certain consequences “are certain, or substantially certain, to result from his act.” So if someone materially contributes assistance to an infringer, knowing that infringement is substantially certain to result, they can be presumed to have intended to further the infringement.

These gyrations make a mish-mash of the necessary mental state for contributory liability. “Intent” generally refers to a person’s plan in taking an action, but that plan can include numerous downstream consequences or be narrowly focused on a single moment in time. A person might take an act in order to further a larger purpose or goal, such as intentionally helping someone steal some valuables — or the plan might extend no further than the act itself, such as intentionally handing someone a crowbar. Any voluntary action will have intent of the latter sort, but only some actions are part of a broader scheme or plan. If intent is an important and not trivial element of contributory liability, it must mean intent to further the purpose or goal of infringement by helping someone achieve it. Grokster and Streamcast in the Grokster case had that sort of intent, the Supreme Court found. But a lot of parties that have been held liable for contributory infringement do not; they don’t particularly care about the infringement, as long as it is benefitting or at least not bothering them.

Knowledge is a bit different; it’s not about plans, it’s about what information a person has about the past, present, and future state of the world. Obviously intent is based on a foundation of knowledge; you can’t plan for the future without knowing certain things about the state of the world. And, similarly, knowledge is often a key component of proof of intent. Often the only way to assess whether someone had the requisite intent is to ask what they knew. Did Francine intend only to hand Geoffrey a crowbar, or did she intend to assist in a burglary? It will depend on what Francine knew about what Geoffrey was up to.

In some cases someone’s knowledge of the consequences of their actions is so certain that it makes sense to treat those consequences as intended ones, even if the actor had some other purpose in mind. That’s the theory behind Restatement (Second) of Torts § 8A, as explained in illustration 1:

1. A throws a bomb into B’s office for the purpose of killing B. A knows that C, B’s stenographer, is in the office. A has no desire to injure C, but knows that his act is substantially certain to do so. C is injured by the explosion. A is subject to liability to C for an intentional tort.

So certainty as to consequences can substitute for intent to bring about those consequences. But knowledge has other purposes in the law as well. Beyond establishing awareness of consequences, knowledge about some state of the world can be a requirement to establish some predicate element of the claim. For example, negligence requires knowledge too, not as to consequences, but as to risk. Fraud requires that the person making a representation has either knowledge that it is false, or a belief that it is false. Knowledge is an element of statutes as well; a person violates the Wiretap Act by using or disclosing a communication that they know, or have reason to know, was obtained by an illegal interception.

In all of these cases it would be odd to substitute intent for knowledge. A negligent person does not have to intend that their behavior be risky. A fraudster does not have to intend that a fact be false; the intent required is the intent to mislead. A person using an intercepted communication does not have to intend that the communication have been illegally intercepted; indeed, they may prefer that it were not so.

Thus, the Gershwin test’s requirement of knowledge of the infringing activity is not necessarily synonymous with intent. It could be that the proper mental state for contributory liability is knowledge of facts establishing the infringer’s plan, without also sharing the infringer’s goal. Whatever formulation represents the right test as a policy matter, it should be decided by a court that is clear on the difference between knowledge and intent.

Hopefully the Cox Court is such a court. Cox itself, unfortunately, is a bit hampered procedurally in making this argument, however. The issue would be presented most cleanly if it was available for Cox to argue that the lower courts have been getting it all wrong by following the Gershwin test, and in fact what is required is Grokster’s intentional inducement standard. But Cox didn’t object to either the Gershwin test below, or the Fourth Circuit’s mangling of the scienter requirement. It’s thus left arguing that the knowledge prong of Gershwin was not satisfied because there was disputed evidence as to the necessary intent, which is a bit like arguing that the apples requirement was not met because the oranges were too small.

Tomorrow I’ll cover my own attempt to sort all this out in the brief I submitted.