The ‘means’ of infringement: tracing a line through Moorhouse, Tape Manufacturers, Cooper, and Kazaa (via Sony)

The iiNet judgment traces an interesting line through authorisation liability in the context of technology cases. Cowdroy reads the technology authorisation cases (Moorhouse, Australian Tape Manufacturers, Cooper, and Kazaa) as predicating liability firstly upon whether the defendant has provided the ‘means’ of infringement; a complex factual determination that depends on the context, but seems to implicitly incorporate the Sony test of whether the technology has substantial non-infringing uses and an intention test that goes to the design of the system and the invitation to infringe.

The conclusion that Cowdrow J draws is that iiNet does not provide the ‘means’ to infringement, because (a) the internet has many ‘lawful uses’ (Tape Manufacturers) (cf Sony, ‘substantial non-infringing uses’); and (b) iiNet has not actively supported the system that is the ‘means’ of infringement (the BitTorrent system, as a whole). Crucially, one does not infringe merely by using the internet – users need to do something else (seek out BitTorrent trackers and files) in order to infringe. If iiNet had played a more active part in the infringement, then it may be seen as providing the ‘means’ (in Moorhouse, this was by providing a copier in a library and effectively extending an invitation to infringe (per Jacobs J) or where it was ‘likely’ to be used for infringement (per Gibbs J); in Kazaa this was the advertising, predominantly ‘join the revolution’; in Cooper it was the knowledge and intent that most files on the website were infringing). What makes this interesting is that ‘means’ appears to incorporate intent in some way, although it is not exactly clear how this plays out.

Only after the ‘means’ are identified do the other factors become relevant – control, power to prevent, and knowledge of infringements. It would seem that the best reading of Cooper is that the ISP in that case was that while it did not provide the ‘means’ by hosting Cooper’s website, it was drawn into his infringement by the support it gave him with knowledge and intent that the files were predominantly infringing. No such relationship of control or support existed between iiNet and anyone providing BitTorrent services.

Much of this reasoning appears to depend on a finding that the internet is much more useful for non-infringing uses (not a ‘human right’, but performs a “central role in almost all aspects of modern life”).([411]) This distinguishes general technologies that “have lawful uses” (Tape Manufacturers) from technologies like Kazaa and Cooper’s website, whose ‘predominant’ or ‘overwhelming’ uses are to infringe ([412]). This seems explicitly draw Australian authority into line with the development of US authority in Sony, that developers will not be liable for products that have “substantial non-infringing uses”, and the exception that was drawn in Grokster holding developers liable where they ‘induced’ infringement. In this way, Cowdroy neatly reads Moorhouse in line with Sony and both Cooper and Kazaa in line with Grokster.

This is actually quite a neat distinction. Rather than treating every link in the chain that makes infringement possible as the ‘means’ of infringement and then having to carefully examine factors such as control, power to prevent, and knowledge, Cowdroy J has managed to articulate a distinction between mere facilities and services that are actually either designed to aide infringement, promoted to do so, or have little other purpose than to facilitate infringement. This puts an end to the classic confusion – if iiNet are liable for the acts of its users, surely the electricity company can also be liable, because but for their power, infringements could not occur. By interpreting ‘means of infringement’to require some more active role, Cowdroy J has created some certainty for the providers of general use technologies.

The role of s 101(1A)

A potential problem on appeal may be whether this definition of ‘means’ is consistent with s 101(1A), which requires that in addressing authorisation, a court must take into account control (power to prevent), relationship, and reasonable steps taken. If the enquiry is ended by the definition of ‘means’ of infringement, these factors may not be adequately taken into account. Justice Cowdroy dealt with this by relying on Kazaa and Metro as authority that 101(1A) did not change the common law for authorisation([415]); the statutory considerations are therefore relevant, and must be considered, but they seem to be subsumed within the threshold question of whether the respondent provided the ‘means’. So, in this case, iiNet did not have a power to prevent because they had no control BitTorrent – which meant that iiNet did not provide the ‘means’.([424],[444]) Similarly, there was nothing in the relationship of iiNet with its subscribers that suggested that iiNet authorised their infringements – unlike Kazaa.([452]) Finally, the Court found that iiNet had no reasonable steps it could have taken to prevent infringement.([458]) It would seem, in Cowdroy J’s framework, that if any of these factors were different, iiNet may be taken as having provided the ‘means’ for infringement (though they are not determinative of themselves). The same goes for knowledge and encouragement, which are relevant but not statutory factors.([463], [473]). More analysis is required as to how exactly the statutory factors inform both the finding of whether a technology provides the ‘means’ of infringement and the questions that must be asked after the means have been identified, but, as a complex question of fact, Cowdroy J’s use of a distinction based upon the ‘means’ does not seem to fall into an error of law and seems to provide a useful way to distinguish active from passive actors.

More detailed analysis

Cowdroy’s reading of Moorhouse confines liability to what he identifies as providing “the true ‘means’ of infringement’.([381]) In context, Moorhouse was to be read as imposing liability when copying machines were placed in close proximity with library books; the inference to be drawn is that UNSW authorised library users to copy library books.(UNSW v Moorhouse at 14 (Gibbs J); 21 (Jacobs J, McTiernan ACJ agreeing).) Only after proper ‘means’ of infringement had been established were the quesitons of control, power to prevent, and knowledge of infringements relevant.([382]) The implication is that in an authorisation case, “it is of fundamental importance to decide, in the particular circumstances of each case, whether the person alleged to have authorised actually provided the ‘means’ of infringement. Context is all important in authorisation proceedings.” ([382])

Armed with this distinction, Cowdroy J then considers the judgments in Cooper and Kazaa. Cooper’s website was the proper ‘means’ of infringement, because “The website is clearly designed to – and does – facilitate and enable this infringing downloading”, and that Cooper “designed and organised it to achieve this result”([391]-[392], quoting Cooper [2005] FCA 972, [84]). Cooper went well beyond Moorhouse in that “Mr Cooper intended that the website be used to infringe copyright.”([392]) Cowdroy J finds support for the distinction in the FCAFC decision, where Branson J found that what was required was not just the provision of a technical capacity, but one which was “calculated to lead to the doing of [the infringing] act”([394], quoting 156 FCR 380, [41]).

Justice Cowdroy traced a similar distinction in Kazaa, it was the intention to invite infringement that made the Kazaa Media Desktop the ‘means of infringement’ (following the reasoning of Gibbs J in UNSW v Moorhouse) or the ‘explicit invitation’ (following the reasoning of Jacobs J) ([397]).

Interestingly, Cowdroy J considered that Comcen, the ISP hosting Cooper’s website, did not provide the ‘means’ of infringement, but was liable because it was “so complicit in the existence of the website (which was the ‘means’ of infringement) that it provided such facility in the same way that Mr Cooper himself did”([398]) (based upon its knowledge that the website was used predominantly infringing and the financial benefit it purposely drew up in contractual arrangements with Cooper to benefit from high levels of traffic).

Applying this reasoning to whether iiNet provided the ‘means’ of infringement, Cowdroy J continues:

It is important to distinguish between the provision of a necessary precondition to infringements occurring, and the provision of the actual ‘means’ of infringement in the reasoning of Gibbs J in Moorhouse. As discussed earlier, a photocopier can be used to infringe copyright, but on the reasoning of Gibbs J and Jacobs J, the mere provision of a photocopier was not the ‘means’ of infringement in the abstract.”([400]
[...]
In the present circumstances, it is obvious that the respondent’s provision of the internet was a necessary precondition for the infringements which occurred. However, that does not mean that the provision of the internet was the ‘means’ of infringement. [...] ([401])

The use of the BitTorrent system as a whole was not just a precondition to infringement; it was, in a very real sense, the ‘means’ by which the applicants’ copyright has been infringed. This is the inevitable conclusion one must reach when there is not a scintilla of evidence of infringement occurring other than by the use of the BitTorrent system. Such conclusion is reinforced by the critical fact that there does not appear to be any way to infringe the applicants’ copyright from mere use of the internet. There will always have to be an additional tool employed, whether that be a website linking to copyright infringing content like Mr Cooper’s website in Cooper, or a p2p system like the Kazaa system in Kazaa and the BitTorrent system in the current proceedings. Absent the BitTorrent system, the infringements could not have occurred.([402])
The infringing iiNet users must seek out a BitTorrent client and must seek out .torrent files related to infringing material themselves. In doing so, they are provided with no assistance from the respondent. The respondent cannot monitor them doing so or prevent them from doing so.([403])

Accordingly, it was the “use of the BitTorrent system as a whole which is the ‘means’” of infringement, not iiNet’s service.([404]) iiNet could accordingly not be said to authorise any infringements.

Because iiNet had no connection to the BitTorrent system (unlike the ISP in Cooper, which ‘actively supported’ the creation and upkeep of Cooper’s website), it could not be drawn into the liability of anyone who did actually provide the ‘means’ of infringemnet.([407]-[408])