Grokster and You

by Glenn Tenney, CISSP, CISM

Peer-to-Peer (P2P) file sharing, Grokster, Kazaa and copyright inducement have been in the news the past year. What's it all about, and how does it affect you?

Most of us are aware that creative works (e.g. books, magazines, movies, records, etc.) are generally copyrighted and that making and selling thousands of copies without permission is illegal (direct copyright infringement). However, it's not as clear whether the company that manufactured and sold the copying machine used to make those infringing copies should be culpable as well as the one who actually made the copies. The issue is: under what conditions should the people who invented, designed, manufactured and sold the copier, but did not themselves infringe, be held responsible for infringement by their customers.

Before the Internet we had photocopiers and it was more clear who was doing the copying and who was selling the copier — and whether the company designing and selling the copier was somehow involved in encouraging people to make illegal copies. The Internet and new technologies have changed that.

File sharing makes it easy for one person to make files of any kind available to many other people who can then easily make a copy for themselves, which in turn can be distributed to still more people. While file sharing can be used legitimately to distribute authorized works or to engage in fair use, many incidents of file sharing copies of movies and music are performed without permission and in violation of the rights of the copyright owner.

Generally, file sharing is done using a P2P model in which the files are stored on each person's individual computer (not on any company's system). Dozens of people may be making the same file available, each from their own computer. This utilizes a program running on a personal computer that seeks out other computers running a similar program to find who has files of interest to be downloaded, while at the same time making more files available to be found by others on the Internet. Grokster is one of the more recent P2P file sharing programs widely used around the world via the Internet. Many, if not most, of the files shared this way are unauthorized copies of copyrighted works.

Copyright owners are faced with a dilemma. They can go after millions of file-sharing users, who are possibly infringing their works, or they can try to stop the technology used to infringe at its source. The copyright owners’ problem is that the P2P provider is not infringing any copyright, but merely providing the copying and distribution technology. If every technologist could be held liable to every copyright holder in the United States for the acts of any of the users of their technology, no new copying or distribution technology could be brought to market without enormous risk.

But why is IEEE-USA involved in this? We IEEE members are inventors and software authors who create and use cutting-edge technology; we research and publish professional articles and journals; we develop published standards that are the basis for widely adopted and critical technologies; and we are the entrepreneurs and employees of firms that design, develop, acquire, license and market the copyrighted product of all of those activities. How copyright infringement is interpreted by legislation and the courts therefore has a direct effect not only on how we, as members, use copyrighted works, but whether we will be held liable for the acts of others using the devices we invent.

The IEEE-USA Intellectual Property Committee (IPC) participated in the U.S. Senate's hearings on copyright inducement during 2004, and spent weeks in sessions with Senate staff and representatives of many sides to this complex issue trying to come up with legislation. Going into these sessions it was clear that there are "bad actors" out there clearly making thousands of illegal copies. The challenge, though, was how can we distinguish those bad acts from the common engineering approach of inventing a new technology that can be used for good or evil. Most solutions were both "not enough" and "too much" at the same time.

IPC developed the IEEE-USA position that it should not be indirect infringement of a copyright to manufacture, distribute or provide a hardware or software product or process that is capable of enabling substantial non-infringing use of a copyrighted work, unless the manufacturer, distributor or maker actively induces the infringement of a copyrighted work by another.

The U.S. Supreme Court last year decided to hear the case of MGM versus Grokster, a case focusing in part on whether, and how much, a manufacturer of P2P file sharing should have secondary liability for infringing copies made by Grokster users and not by Grokster themselves. The underlying issues are much more complex. Depending on how the court finally rules, it is possible that copyright owners could prevent the distribution of new technologies with non-infringing uses merely because infringing uses were possible as well — something that affects the work of IEEE members, and would chill the advancement of new technologies. Such a ruling would essentially grant copyright holders a de facto patent over all centralized technologies for reproducing or distributing works.

IPC also developed IEEE-USA’s amicus ("friend-of-the-court") brief to the Supreme Court on this case — not in support of either side, but in support of a balance. The committee believes that the law should be clear, predictable, objective and technologically neutral.

IEEE-USA's amicus brief concluded:

"The Copyright Act should be interpreted to promote progress by balancing copyright owners' interest in protection for their works and the public's interest in access to technologies that may be lawfully used. Neither the Ninth Circuit's nor the Seventh Circuit's approach balances those interests adequately with respect to the secondary liability of a provider of a dual-use reproduction and distribution technology.

By comparison, the active inducement standard described in this brief best promotes progress. It is easily grasped and applied, assures fundamental fairness and predictability, and is derived directly from the stated policies of Congress and the jurisprudence of this Court. Accordingly, IEEE-USA respectfully submits that a non-infringing provider of a dual-use reproduction or distribution technology should not be liable for infringement committed by a user of the technology, unless the provider actively induced the user to infringe."

For More Information

• IEEE-USA Intellectual Property Committee
  www.ieeeusa.org/volunteers/committees/ipc/index.html

• Testimony by Andy Greenberg, Vice Chair, IEEE-USA Intellectual Property Committee to the Senate Judiciary Committee on the Inducing Infringement of Copyrights Act of 2004 (S. 2560)

• IEEE-USA's amicus brief on inducement of copyright infringement in electronic file sharing, filed in Metro-Goldwyn-Mayer Studios v. Grokster (U.S. Supreme Court.) (24 Jan. 2005)

Glenn Tenney, CISSP CISM, is a former chair of the IEEE-USA Intellectual Property Committee, and IEEE-USA's Career Policy editor.