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No “Safe Harbor” for BitTorrent Website Operator

The U.S. Court of Appeals for the Ninth Circuit affirmed a summary judgment ruling in favor of seven film studios finding that the defendant induced third parties to download infringing copies of the plaintiffs’ copyrighted works. Columbia Pictures Industries, Inc., et al.  v. Gary Fung, et al., Case No. 10-55946 (9th Cir., Mar.21, 2013) (Berzon, J.).

Seven film studios—including Columbia Pictures, Disney and Twentieth Century Fox—sued Gary Fung and his company isoHunt Technologies, claiming that Fung induced third parties to download infringing copies of the studios’ copyrighted works through Fung’s websites, such as and—websites that help users find copies of videos to download and stream through a type of peer-to-peer file sharing network.

The district court found Fung liable for contributory copyright infringement for inducing others to infringe the studios’ copyrights and also found that Fung was not entitled to protection from damages liability under the safe harbor provisions of the Digital Millennium Copyright Act (DMCA).  After a permanent injunction was issued, Fung appealed. 

On appeal, Fung challenged the full holding, including the scope of the injunction claiming that it was vague, punitive and an impediment to free speech.  The 9th Circuit, citing the Supreme Court decision in Grokster III (which also dealt with peer-to-peer file sharing technology), analyzed the facts of the present case under the four elements of the Grokster III inducement principle:  the distribution of a device or product, acts of infringement, an object of promoting its use to infringe copyright and causation.

Inducement Liability Under Grokster III

With respect to the first element of the Grokster III inducement liability standard, Fung argued that he did not develop or distribute products, nor did he develop the BitTorrent protocol used by his websites.  The 9th Circuit, however, distinguished copyrights as expression that are not necessarily in the form of products or devices. Thus, the court concluded that a copyright can be infringed through “culpable actions resulting in impermissible reproductions of copyrighted expression,” even if such actions are the provision of services used in accomplishing the infringement.

Fung was not able to rebut the second “acts of infringement” Grokster III factor after the studios presented evidence that Fung’s services were widely used to infringe copyrights by allowing uploading and downloading of copyrighted material. Accordingly, the court found for the studios on the second factor, noting that the “predominant use” of Fung’s services was for copyright infringement.

As to the third Grokster III factor, the court agreed with Fung that mere knowledge of a potential to infringe, or knowledge of actual infringing uses of a product or service, is not enough for liability.  Nevertheless, the court found there was more than enough evidence that Fung offered his services with the object to promote their use to infringe copyrighted material.  Specifically, the court found that the evidence showed Fung actively encouraged uploading files of specific copyrighted material; he provided links for certain movies and urged users to download those movies; he affirmatively responded to requests for help in locating and playing copyrighted materials; and, he even personally instructed users on how to burn infringing files to DVDs.  The court also referenced two points of circumstantial evidence raised by the Grokster III opinion, namely, that Fung took no steps to develop filtering tools to diminish infringing activity and that he generated revenue by selling advertising space on his websites.

Finally, as to causation, the court adopted the studios’ interpretation of causation and held that the acts of infringement by third parties need only be caused by the product distributed or services provided.  This was contrary to Fung’s theory of causation (which was also joined by amicus curiae, Google) wherein Fung claimed that the infringement must be directly caused by a defendant’s inducing messages.

The Digital Millennium Copyright Act “Safe Harbor” Provisions

Fung also asserted affirmative defenses under three of the DMCA’s safe harbor provisions, 17 U.S.C. §512(a), (c) and (d). Although the studios argued that there can never be a DMCA safe harbor defense to contributory copyright liability inducement, the 9th Circuit disagreed, noting that the safe harbor provisions do not exclude vicarious or contributory liability from its protections. Even so, the court denied all of Fung’s safe harbor defenses.

In particular, the court concluded that Fung did not qualify for protection under §512(a) for transitory digital network communications because Fung’s torrent file trackers, not the third party users, were responsible for selecting the copyrighted data to be transmitted.

The court also concluded that § 512(c), relating to information residing on networks or systems at the direction of the users, was also not applicable because Fung had actual and “red flag” knowledge of infringing activity on his system due to his own active encouragement of infringement, as well as the fact that Fung did not dispute evidence that he personally used his website to download infringing material.

According to the 9th Circuit, Fung did not qualify for protection under §512(c) or §512(d) (for providers of information location tools) because Fung received a “financial benefit” from his services by selling ad space and because he had the “right and ability to control” the infringing activity, which was shown through evidence that Fung exerted substantial influence on the activities of the users of his websites.

Finding no available defenses under the DMCA safe harbors, the court affirmed summary judgment for the studios on the issue of liability under contributory copyright infringement.  However, the court found various terms of the lower court’s permanent injunction to be vague and unduly burdensome and remanded to the district court to modify certain employment prohibitions and to provide more specific language for several terms in the injunction.

© 2022 McDermott Will & EmeryNational Law Review, Volume III, Number 122

About this Author

Sarah Bro, McDermott Will Emery Law Firm, Intellectual Property Attorney

Sarah Bro is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.Sarah focuses her practice on trademark prosecution and trademark litigation support.