We have reached a telling intersection in the law of secondary copyright liability. Cases in which defendants seek to broaden the safe harbors of Section 512 of the Digital Millennium Copyright Act (“DMCA”) are running up against precedent generated by Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., in which courts have held service providers liable for promoting infringement by their users. In some instances, the behavior for which the defendants are seeking shelter under Section 512 bears more resemblance to the sort of purposeful conduct condemned by the Supreme Court in its 2005 Grokster decision than that of the prototypical “innocent” service provider Congress sought to shield under the DMCA.
It seems we may be having another Grokster moment in the law. Just as in the pre-Grokster era, when the staple article of commerce doctrine of Sony Corporation v. Universal City Studios, Inc. was expanding beyond the realm of legitimate innovation to protect purposefully infringing activity—ultimately necessitating corrective action by the Supreme Court—so, too, the DMCA safe harbors, as construed in Viacom International, Inc. v. YouTube, Inc. and by some other courts, are threatening to swallow the very principles of secondary liability they were meant to incorporate. With respect to inducement of infringement liability in particular, at least one recent decision, Columbia Pictures Industries, Inc. v. Fung, has recognized the inherent conflict between DMCA immunity and Grokster culpability. According to Judge Wilson—notably, the same Judge Wilson whose grant of summary judgment in favor of the Grokster defendants at the trial level was ultimately reversed by the Supreme Court—a finding that a defendant induced infringement necessarily renders that defendant ineligible for the Section 512 safe harbors.
This essay reviews Fung and Viacom, then revisits Grokster to demonstrate how the core principles of that case should guide judicial engagement with the DMCA safe harbors. Under the edifying light of Grokster, the missteps of Viacom are apparent, and the logic of Fung is undeniable.