Contributory Infringement

I. Conceptual Analysis

Infringement is an unauthorised or prohibited use of a right owner’s exclusive Intellectual Property Right, who has his right protected, yet suffers through violation of law. Usually damages in such situations are felt by way of financial and economic deprivation to the owner with an addition to loss of goodwill and exclusivity. This scenario is a typical case of Direct Infringement, where there is sale, reproduction and transportation for gain of unauthorized property by a person, who is neither the authorized owner nor the assignee of the said property. Indian Law like the Lanham Act, and equivalent patent and copyright Acts, recognizes certain secondary liabilities which are otherwise called Indirect Infringement. This includes (a) Induced Infringement (b) Contributory Infringement.  

To understand what contributory Infringement is, we may date back to the 19th century era, when the concept was first entertained as regards patents. It found place in a codified draft under the US 35 271(c) [i] which subsequently evolved as a constructive definition for other branches of IPR as well. It aimed at protecting the patent owners against those who dishonestly and collectively caused injury by taking advantage of their innovation. Primarily, Contributory infringement refers to the actions of one person who either allows or causes another person to infringe the right of a protected owner.

To allege Induced Infringement, the aggrieved party needs to establish that there is an evident act of inducement by the infringer to the owner of a created property, to carry out a direct infringement. The yardstick which determines Inducement is by way of instructing, advising or directing the contributing side as to the matter of bringing about direct infringement. However, the US Law under the Restatement (third) of Unfair Competition, when talks about Contributory Infringement clearly states that liability is imposed on the actor when he “intentionally induces the third person to engage in the infringing conduct, or fails to take reasonable precautions against the occurrence of the third person’s infringing conduct in circumstances in which the infringing conduct can be reasonably anticipated.” [ii]

This explanation cannot be rejected mainly because it highlights on the material contribution by way of inducement or assistance, but is still incomplete because of lacking the crucial element of Knowledge [iii] in Contributory Infringement. Hence, where the infringer knew or had the reason to know about the alleged infringement, he can be rightly held liable under Contributory Infringement for helping in resultant infringement. In the case of service providers, it is often observed through various case laws [iv] that, lack of specific knowledge and an established claim of fair use prevent liability. But does it mean that the protected owner is satisfied and provided the relief?

Interestingly, we can cite instances from Copyrights cases, Trademarks and Patents inventions, which have in their own capacity dealt with a plethora of judicial questions relating to the secondary liability of the Infringer. We see that though the law is very clear when it comes to liability of a direct infringer, but when it comes to contributory infringer, we have first ascertain to what extent the liability belongs and then come to decide the liability on contributory infringement.

However,the parameter of liability would become easy to determine because of the well settled fact that no Contributory Infringement can arise without direct infringement. This principal was rightly reiterated in Aro Mfg Co. Inc. v. Convertible Top Replacement Co., 365 U.S. 336, 128 USPQ 355 (1960). Conversely, this also means that instances where sale cannot prove infringement and at the same time it is settled that the seller did not withhold the required knowledge about possible infringement, no suit for Contributory Infringement would be entertained.

Let us refer to particular situations under Patent/copyright/trademark laws that can decide liability under our topic of discussion. Suppose, one person is the patent owner of a website but a third person has added a feature like online shopping through his website, of products belonging to the creator’s retail. This not only infringes the patent owner’s right but also allows the infringer to gain monetary advantage of the extensive usage over his invention, and the remedy can be sought through Contributory Infringement.

Similarly, the posting of access codes from authorized copies of software, serial numbers, or other tools to assist in accessing such software may subject you to liability; providing a forum for uploading and downloading any copyrighted file or code cracking utility [v] is an example under Contributory copyright infringement.

Also, where there is sufficient information that an intermediary is using an impugned mark, yet one knowingly continues to distribute such mislabelled products in market, he shall hold himself responsible for Contributory Trademark Infringement. (Eg. A uses mark BEN10 and B distributes the same in market knowing that Ben10 is a reputed mark and does not belong to A, B shall be held liable along with A.) This clearly suggests that wilful blindness cannot be taken as excuse to escape liability simply because anyone who provides a platform that encourages contributory Infringement shall hold himself responsible for bringing about such action.

II. Alleged Infringement by way of Linking

Despite having a number of claims set against alleged infringement by website linking, we still cannot resist advertising on own sites because of revenue generation which manifolds with increased trafficking. However, not everyone would hold the same interest especially at the search result pages where sponsored links cause deviation consequent to which an individual hits on a page which was not the intended search and causes loss to the site owner.

A number of websites have instituted suits for unauthorised linking, without holding proper assignment or permission. In Ticketmaster V. Microsoft, [vi] the grievance of the Ticketmaster related to the dilution of trademark, its trade value and unfair trade practice. Ticketmaster claimed that Microsoft's unilateral deeplink reduced the revenue received from companies advertising on Ticketmaster's web site and negated Ticketmaster's ability to control and direct traffic on its web site. [vii] The suit resulted in favour of Ticketmaster, wherein Microsoft removed its deeplinks and routed to the home page of the complainant’s website.

So, where the court found the thumbnail images by Google an act of infringement, the decision was soon reversed and the court asserted that HTML instructions are not showing the full protected images [viii] . Thus, no infringement was possible. But this question is still open under the contributory Infringement clause. This should mean that, if HTML instructions are displayed, and similarly a link is suggested, contrary to the desired search, a third party, here, the platform provider is equally liable.

However, Issues involving cached pages do not stand in the same footing. Cached pages are basically the backup of each examined page. We generally find a cached link with every search result. The area of difference between linking and cached version lies in the fact that Google does not provide cached options where the owner does not want them to appear. Care is taken to ensure that people looking for a desired site get access to the same and have information that the cached page is not the original site. [ix]

In Consim Info Pvt. Ltd V. Google India Pvt. Ltd. and Ors [x] , the defendants carrying out the same commercial venture like the plaintiff’s had adopted certain adwords and text to advertise their services on Google. Plaintiff alleged the adwords to be identical and deceptively similar to his registered mark. He asserted that whenever a web surfer browses for his trademark, the links to the websites of the defendants also appear on the right hand side of the page, as "sponsored links". It was contended that the search engine abetted infringement and was liable under contributory infringement.

The Plaintiff Company in this case was not granted injunction and the court found that keyword suggestion neither amounted to infringement nor did it amount to contributory infringement. In this case the defendant sought relief under section 30, while the ratio set by the court goes like "Court shall not grant injunction to any person claiming exclusivity of invented word, which is right of free commercial speech of fundamental right." Even though the defendant has established its defence, the question of deceptive similarity and mark being well known was left unanswered.

Protection to a mark which is reputed need not be only given monopolistic value during manufacturing and retailing, but where domain name is protected, infringement by way of suggested and sponsored links are likely to cause confusion and damages and requires a strict approach by the law settlers.

In Rosetta Stone V Google [xi] , the consumers who searched for “Rosetta Stone” on Google search engine and clicked on sponsored ad were found visiting a software pirate website that sells sub standard products, and purports to be Rosetta. Statistics provided by the company showed a considerable fall in Rosetta shares by 0.6 percent with an increase of 0.5 percent of Google’s shares on (NASDAQ 29 April 2010). [xii] The case was however dismissed, but the court did not coherently conclude Google’s liability for the sale of trademark-protected keywords to competitors who were not necessarily counterfeiters

Trademarks law therefore has a widened scope and may place limits on linking. But if every time we would take the rescue of public benefit/ public interest and fair use, are we not defeating the whole idea of Intellectual Property Rights. Linking allows association and likely deviation. If such association persists, the idea of exclusivity is badly defeated. This line of thought requires a moment to think, “Do we need to get our right in intellectual property protected”? If the linking site is using similar logo, the possibility of association becomes even higher. It would be unlikely to assume a situation where users do not associate, as they get confused between two sites. Because in law, one cannot rely on assumptions and if the is right infringed the remedy can be sought only in the court of law.

The idea of writing this article was to seek relief from the point of view of a protected owner. Where technology is fast evolving around world, law is static which though changes but with a procedural and consensual approach of the two Houses. The delay however, would invite more legal battles between IPR and supportive arguments for linking on internet. The position in India is not very clear, but an appeal to the Supreme Court in the single judge bench case of Consim’s Info has the scope to bring about a settled law. In purview of this article, a much more judicial deliberation is needed to set up a benchmark precedent which also holds well in favour of IP right owner. This may be done to give protection against exploitation of Intellectual Property Rights in many possible ways that could not be otherwise contemplated.