`
`
`
`No.
`IN THE
`Supreme Court of the United States
`________________
`COX COMMUNICATIONS, INC. and COXCOM, LLC,
`Petitioners,
`
`
`
`v.
`SONY MUSIC ENTERTAINMENT, ET AL.,
`
`
`Respondents.
`________________
`ON PETITION FOR A WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
`________________
`PETITION FOR A WRIT OF CERTIORARI
`________________
`E. Joshua Rosenkranz
`Counsel of Record
`Christopher J. Cariello
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`(212) 506-5000
`jrosenkranz@orrick.com
`
`
`Edward Williams
`James Anglin Flynn
`Abigail Colella
`Kamilyn Y. Choi
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`2100 Pennsylvania Ave. NW
`Washington, DC 20037
`
`Roman Martinez
`Peter E. Davis
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW
`Washington, DC 20004
`
`
`Counsel for Petitioners
`
`
`
`i
`
`QUESTIONS PRESENTED
`1. This Court has held that a business commits
`contributory copyright infringement when it “dis-
`tributes a device with the object of promoting its use
`to infringe copyright, as shown by clear expression or
`other affirmative steps to foster infringement.” Met-
`ro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,
`545 U.S. 913, 919 (2005). The courts of appeals have
`split three ways over the scope of that ruling, devel-
`oping differing standards for when it is appropriate
`to hold an online service provider secondarily liable
`for copyright infringement committed by users.
`Did the Fourth Circuit err in holding that a ser-
`vice provider can be held liable for “materially con-
`tributing” to copyright infringement merely because
`it knew that people were using certain accounts to
`infringe and did not terminate access, without proof
`that the service provider affirmatively fostered in-
`fringement or otherwise intended to promote it?
`2. Generally, a defendant cannot be held liable
`as a willful violator of the law—and subject to in-
`creased penalties—without proof that it knew or
`recklessly disregarded a high risk that its own con-
`duct was illegal. In conflict with the Eighth Circuit,
`the Fourth Circuit upheld an instruction allowing
`the jury to find willfulness if Cox knew its subscrib-
`ers’ conduct was illegal—without proof Cox knew its
`own conduct in not terminating them was illegal.
`Did the Fourth Circuit err in holding that mere
`knowledge of another’s direct infringement suffices
`to find willfulness under 17 U.S.C. § 504(c)?
`
`
`
`
`
`ii
`
`PARTIES TO THE PROCEEDING BELOW
`Petitioners were the Defendants-Appellants be-
`low. They are Cox Communications, Inc. and Cox-
`Com, LLC.
`Respondents include the Plaintiffs-Appellees be-
`low. They are Sony Music Entertainment; Arista
`Music; Arista Records, LLC; LaFace Records LLC;
`Provident Label Group, LLC; Sony Music Enter-
`tainment US Latin LLC; Volcano Entertainment III,
`LLC; Zomba Recordings LLC; Sony/ATV Music Pub-
`lishing LLC; EMI AI Gallico Music Corp.; EMI Algee
`Music Corp.; EMI April Music Inc.; EMI Blackwood
`Music Inc.; Colgems-EMI Music Inc.; EMI Consorti-
`um Music Publishing Inc., d/b/a EMI Full Keel Mu-
`sic; EMI Consortium Songs, Inc., d/b/a EMI
`Longitude Music; EMI Feist Catalog Inc.; EMI Mil-
`ler Catalog Inc.; EMI Mills Music, Inc.; EMI Unart
`Catalog Inc.; EMI U Catalog Inc.; Jobete Music Co.
`Inc.; Stone Agate Music; Screen Gems-EMI Music
`Inc.; Stone Diamond Music Corp.; Atlantic Recording
`Corporation; Bad Boy Records LLC; Elektra Enter-
`tainment Group Inc.; Fueled By Ramen LLC; Road-
`runner Records; Inc.; Warner-Tamerlane Publishing
`Corp.; WB Music Corp.; Unichappell Music Inc.;
`Rightsong Music Inc.; Cotillion Music, Inc.; Inter-
`song U.S.A., Inc.; UMG Recordings, Inc.; Capitol
`Records, LLC; Universal Music Corp.; Universal
`Music – MGB NA LLC; Universal Music Publishing
`Inc.; Universal Music Publishing AB; Universal Mu-
`sic Publishing Limited; Universal Music Publishing
`MGB Limited.; Universal Music – Z Tunes LLC;
`Universal/Island Music Limited; Universal/MCA
`Music Publishing Pty. Limited; Music Corporation of
`
`
`
`
`
`iii
`
`
`America, Inc., d/b/a Universal Music Corp.; Poly-
`gram Publishing, Inc.; Songs of Universal, Inc.;
`Warner Records, Inc., f/k/a W.B.M. Music Corp.;
`Warner Chappell Music, Inc., f/k/a Warner/Chappell
`Music, Inc.; W.C.M. Music Corp., f/k/a W.B.M. Music
`Corp.
`
`
`
`iv
`
`CORPORATE DISCLOSURE STATEMENT
`Cox Communications, Incorporated, is the par-
`ent corporation of CoxCom, LLC. Cox Communica-
`tions, Incorporated, is owned by Cox Enterprises,
`Inc. Neither Cox Communications, Incorporated, nor
`CoxCom, LLC, is a publicly held corporation, and no
`publicly held corporation owns 10% or more of either
`of them.
`
`
`
`
`
`v
`
`RELATED PROCEEDINGS
`
`
`Sony Music Entertainment v. Cox Communications,
`Inc., No. 1:18-cv-950 (E.D. Va.) (judgment issued
`Jan. 12, 2021)
`
`Sony Music Entertainment v. Cox Communications,
`Inc., No. 21-1168 (4th Cir.) (opinion and judgment
`issued Feb. 20, 2024)
`
`
`
`
`
`vi
`
`TABLE OF CONTENTS
`
`Page
`QUESTIONS PRESENTED ...................................... i
`PARTIES TO THE PROCEEDING BELOW ........... ii
`CORPORATE DISCLOSURE STATEMENT ......... iv
`RELATED PROCEEDINGS ......................................v
`TABLE OF AUTHORITIES .................................... ix
`INTRODUCTION ..................................................... 1
`OPINIONS AND ORDERS BELOW ........................ 4
`JURISDICTION ........................................................ 4
`STATUTORY PROVISIONS INVOLVED ............... 5
`STATEMENT OF THE CASE .................................. 5
`This Court’s Previous Rulings On
`Secondary Infringement ............................... 5
`The Music Industry Seeks To Hold ISPs
`Liable For Copyright Infringement By
`Users .............................................................. 7
`BMG Sues Cox, And The Fourth Circuit
`Adopts Unprecedented Contributory-
`Liability And Willfulness Standards .......... 10
`Numerous Music Companies Sue Cox
`Under BMG’s Legal Standards And
`Win A $1 Billion Verdict ............................. 12
`The Fourth Circuit Adopts An
`Unprecedented Material-Contribution
`Standard for Contributory
`Infringement ............................................... 13
`
`
`
`
`
`vii
`
`
`REASONS FOR GRANTING THE WRIT.............. 15
`I. The Fourth Circuit’s Material-
`Contribution Standard Warrants Review. ...... 15
`A. The courts of appeals have adopted
`three conflicting material-contribution
`standards. .................................................... 16
`B. The Fourth Circuit’s approach conflicts
`with Grokster and Twitter. ......................... 23
`II. The Fourth Circuit’s Willfulness Standard
`Warrants Review. ............................................. 29
`A. The Eighth and Fourth Circuits have
`adopted conflicting willfulness
`standards in secondary-infringement
`cases. ............................................................ 30
`B. The Fourth Circuit’s willfulness
`standard is wrong. ...................................... 32
`III. The Questions Presented Are Important
`And Recurring. ................................................. 34
`IV. This Case Is An Ideal Vehicle To Resolve
`The Questions Presented. ................................ 39
`CONCLUSION ........................................................ 40
`APPENDIX A
`Opinion of the Fourth
`Circuit (Feb. 20, 2024) ............ 1a
`Judgment of the Eastern
`District of Virginia (Jan.
`12, 2021) ................................ 39a
`
`APPENDIX B
`
`
`
`viii
`
`Memorandum Opinion &
`Order of the Eastern
`District of Virginia (June
`2, 2020) .................................. 40a
`Amended Memorandum
`Opinion and Order of the
`Eastern District of
`Virginia
`(Nov. 27, 2019) .....................143a
`Order denying rehearing
`(Mar. 19, 2024) .....................179a
`
`APPENDIX C
`
`APPENDIX D
`
`APPENDIX E
`
`
`
`
`
`
`
`
`
`
`ix
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`A&M Records, Inc. v. Napster, Inc.,
`239 F.3d 1004 (9th Cir. 2001) .............................. 20
`In re Aimster Copyright Litig.,
`334 F.3d 643 (7th Cir. 2003) ................................ 23
`Air Line Pilots Ass’n, Int’l v. Trans
`World Airlines, Inc.,
`713 F.2d 940 (2d Cir. 1983) ................................. 33
`ALS Scan, Inc. v. Steadfast Networks, LLC,
`819 F. App’x 522 (9th Cir. 2020) ......................... 38
`BMG Rights Mgmt. (US) LLC v. Altice
`USA, Inc.,
`No. 22-cv-471, 2023 WL 3436089
`(E.D. Tex. May 12, 2023) ..................................... 37
`BMG Rts. Mgmt. (US) LLC v. Cox
`Commc’ns, Inc.,
`881 F.3d 293 (4th Cir. 2018) ........ 11, 12, 23, 31, 39
`Bodyguard Prods., Inc. v. RCN Telecom
`Servs., LLC,
`No. 21-cv-15310, 2022 WL 6750322
`(D.N.J. Oct. 11, 2022) .......................................... 37
`Capitol Records, Inc. v. MP3tunes, LLC,
`821 F. Supp. 2d 627 (S.D.N.Y. 2011) .................. 38
`Capitol Records, LLC v. Vimeo, Inc.,
`No. 21-2949 (2d Cir.) ............................................ 38
`
`
`
`
`
`x
`
`
`Citizens United v. FEC,
`558 U.S. 310 (2010) ................................................7
`Cmty. for Creative Non-Violence v. Reid,
`490 U.S. 730 (1989) .............................................. 36
`Concord Music Grp., Inc., v Anthropic PBC,
`No. 23-cv-01092 (M.D. Tenn.).............................. 38
`Doe v. GTE Corp.,
`347 F.3d 655 (7th Cir. 2003) ................................ 28
`EMI Christian Music Grp., Inc. v.
`MP3tunes, LLC,
`844 F.3d 79 (2d Cir. 2016) ............................. 17, 23
`Flava Works, Inc. v. Gunter,
`689 F.3d 754 (7th Cir. 2012) .......................... 22, 23
`In re Frontier Commc’ns Corp.,
`658 B.R. 277 (Bankr. S.D.N.Y. 2024) .................. 37
`Gershwin Publ’g Corp. v. Columbia
`Artists Mgmt., Inc.,
`443 F.2d 1159 (2d Cir. 1971) ................. 5, 6, 16, 33
`Global-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) .............................................. 23
`Greer v. Moon,
`83 F.4th 1283 (10th Cir. 2023) ...................... 18, 19
`Hunley v. Instagram, LLC,
`73 F.4th 1060 (9th Cir. 2023) .............................. 38
`Matthew Bender & Co. v. West Publ’g Co.,
`158 F.3d 693 (2d Cir. 1998) ................................. 18
`MCA Television Ltd. v. Feltner,
`89 F.3d 766 (11th Cir. 1996) ................................ 31
`
`
`
`xi
`
`McLaughlin v. Richland Shoe Co.,
`486 U.S. 128 (1988) .............................................. 32
`Metro-Goldwyn-Mayer Studios, Inc. v.
`Grokster, Ltd.,
`545 U.S. 913 (2005) ....... 2, 3, 5, 6, 7, 14, 15, 16, 17,
`18, 21, 24, 25, 26
`
`N.Y. Times Co. v. Microsoft Corp.,
`No. 23-cv-11195 (S.D.N.Y.) .................................. 38
`Packingham v. North Carolina,
`582 U.S. 98 (2017) ..................................................7
`Parker v. Google, Inc.,
`242 F. App’x 833 (3d Cir. 2007) ........................... 38
`Perfect 10, Inc. v. Amazon.com, Inc.,
`508 F.3d 1146 (9th Cir. 2007) .............................. 20
`Perfect 10, Inc. v. Giganews, Inc.,
`847 F.3d 657 (9th Cir. 2017) ................................ 20
`Perfect 10, Inc. v. Visa Int’l Serv. Ass’n,
`494 F.3d 788 (9th Cir. 2007) ................................ 38
`PSINet, Inc. v. Chapman,
`317 F.3d 413 (4th Cir. 2003) ................................ 36
`RCA/Ariola Int’l, Inc. v. Thomas &
`Grayston Co.,
`845 F.2d 773 (8th Cir. 1988) .......................... 30, 31
`Religious Tech. Ctr. v. Netcom On-Line
`Commc’n Servs., Inc.,
`907 F. Supp. 1361 (N.D. Cal. 1995) ..................... 20
`Reno v. ACLU,
`521 U.S. 844 (1997) ................................................7
`
`
`
`xii
`
`Rosemond v. United States,
`572 U.S. 65 (2014) ................................................ 28
`Routt v. Amazon.com, Inc.,
`584 F. App’x 713 (9th Cir. 2014) ......................... 38
`Safeco Ins. Co. of Am. v. Burr,
`551 U.S. 47 (2007) ................................................ 32
`Sony Corp. of Am. v. Universal City
`Studios, Inc.
`464 U.S. 417 (1984) ........................ 6, 18, 22, 24, 25
`Trans World Airlines, Inc. v. Thurston,
`469 U.S. 111 (1985) .............................................. 33
`Twitter, Inc. v. Taamneh,
`598 U.S. 471 (2023) .................................. 24, 27, 28
`UMG Recordings, Inc. v. Grande
`Commc’ns Networks, L.L.C.,
`No. 23-50162 (5th Cir.) ........................................ 37
`UMG Recordings, Inc. v. RCN Telecom
`Servs., LLC,
`No. 19-cv-17272, 2020 WL 5204067
`(D.N.J. Aug. 31, 2020) ......................................... 37
`UMG Recordings, Inc. v. Verizon
`Commc’ns Inc.,
`No. 24-cv-5285 (S.D.N.Y.) .................................... 37
`Venegas-Hernández v. ACEMLA,
`424 F.3d 50 (1st Cir. 2005) .................................. 23
`VHT, Inc. v. Zillow Grp., Inc.,
`918 F.3d 723 (9th Cir. 2019) .......................... 21, 38
`Warner Records, Inc. v. Altice USA, Inc.,
`No. 23-cv-576 (E.D. Tex.) ..................................... 37
`
`
`
`xiii
`
`
`Wooden v. United States,
`595 U.S. 360 (2022) .............................................. 33
`Zomba Enters., Inc. v. Panorama
`Records, Inc.,
`491 F.3d 574 (6th Cir. 2007) ................................ 31
`Statutes
`17 U.S.C. § 301(a) ...................................................... 36
`17 U.S.C. § 501 ............................................................5
`17 U.S.C. § 504(c) ........................................................3
`17 U.S.C. § 504(c)(1) ........................................ 5, 13, 29
`17 U.S.C. § 504(c)(2) ........................................ 5, 13, 29
`17 U.S.C. § 512(i)(1)(A) ............................................. 11
`17 U.S.C. § 512(a)-(d) ..................................................8
`17 U.S.C. § 512(l) ........................................................8
`28 U.S.C. § 1254(1) ......................................................4
`Other Authorities
`3 Nimmer on Copyright § 12.04[A][3]
`(2024) .............................................................. 22, 33
`3 Nimmer on Copyright § 14.04[B][3]
`(1987) .................................................................... 31
`6 Patry on Copyright § 21:41 .................................... 22
`Mark Bartholomew & Patrick F.
`McArdle, Causing Infringement, 64
`Vand. L. Rev. 675 (2011) ..................................... 22
`Black’s Law Dictionary (12th ed. 2024) ................... 32
`S. Rep. No. 105-190 (1998) ..........................................8
`
`
`
`xiv
`
`Alfred C. Yen, Torts and the
`Construction of Inducement and
`Contributory Liability in Amazon
`and Visa, 32 Colum. J.L. & Arts 513
`(2009) .................................................................... 22
`
`
`
`
`
`
`
`INTRODUCTION
`This case is about who bears responsibility for
`copyright infringement on the internet. The Fourth
`Circuit gave a staggering answer: whoever provides
`the internet connection used to commit it. At the
`music industry’s urging, the Fourth Circuit held that
`Petitioner Cox Communications—which provides in-
`ternet service to millions of homes and businesses—
`must either terminate internet connections previous-
`ly used for infringement or else face liability for any
`future infringement. In doing so, the court installed
`the most draconian secondary-liability regime in the
`country, one that departs from three other circuits,
`defies this Court’s precedents, and threatens mass
`disruption across the internet. This Court’s review is
`urgently needed.
`According to the music industry’s liability theo-
`ry, once an online service provider has knowledge of
`at least two instances of infringement at a subscrib-
`er’s IP address, the provider is secondarily liable for
`future infringement at that IP address unless it ter-
`minates the connection. The industry claims that
`failing to throw the home or business off the internet
`is a “material contribution” to likely future in-
`fringement. The service provider can be liable even if
`it did nothing to encourage infringement. Even if it
`gains nothing from infringement. Even if scores of
`other, entirely innocent people use the same connec-
`tion. Even if the service is essential for a universe of
`legitimate uses. Even if the service provider went to
`great lengths to try to deter infringing conduct—and
`largely succeeded. A service provider’s only reliable
`way of avoiding liability is to terminate service en-
`
`
`
`
`
`2
`
`tirely. If it does not, and that account is again used
`to infringe, the service provider is liable.
`That is just what happened here. Cox’s millions
`of subscribers rely on the internet for everything
`from video conferences to banking, civic engagement
`to cat videos, robot vacuums to doorbell cams. Less
`than 1% of Cox’s subscribers have also used the ser-
`vice to swap infringing music files; and Cox’s anti-
`infringement measures got 95% of that less than 1%
`to stop. Cox derives no profit from infringement, as
`the Fourth Circuit held. Yet Cox was found liable for
`all the infringement anonymous users committed
`through 57,000 of its internet connections, just be-
`cause the music companies had previously sent Cox
`automated notices alleging that these connections
`were used to infringe. The only way Cox could have
`avoided liability was by terminating those 57,000 in-
`ternet connections. That means terminating entire
`households, coffee shops, hospitals, universities, and
`even regional internet service providers (ISPs)—the
`internet lifeline for tens of thousands of homes and
`businesses—merely because some unidentified per-
`son was previously alleged to have used the connec-
`tion to infringe.
`The Fourth Circuit’s rule misinterprets this
`Court’s decision in Metro-Goldwyn-Mayer Studios,
`Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), and cre-
`ates a three-way circuit split on the proper threshold
`for material-contribution liability. Under Grokster,
`contributory liability requires “purposeful” miscon-
`duct, such as distributing a device “with the object of
`promoting its use to infringe copyright, as shown by
`clear expression or other affirmative steps … to fos-
`
`
`
`3
`
`ter infringement.” 545 U.S. at 937. The Second and
`Tenth Circuits adhere to Grokster in requiring af-
`firmative, culpable conduct. The Ninth adopts a
`middle-ground position demanding only that service
`providers take reasonable—not nuclear—measures
`to prevent infringement. Only the Fourth diverges
`entirely.
`The Fourth Circuit compounded its error—and
`created another circuit split—with a ruling regard-
`ing the standard for willful infringement under 17
`U.S.C. § 504(c). Departing from the Eighth Circuit
`and longstanding common-law principles, the Fourth
`Circuit held that a secondary infringer can be held
`willful—and subject to a five-fold enhancement of
`statutory damages—if
`it provided service with
`knowledge of the direct infringer’s wrongful conduct,
`even if it reasonably believed that its own conduct
`was entirely lawful. That ruling means that every
`contributory infringer by definition acts willfully,
`thereby automatically exposing accused contributory
`infringers to statutory damages of $150,000 per work
`and rendering the statute’s two-tiered damages
`structure meaningless. Here, the Fourth Circuit’s
`rule means Cox is potentially liable for up to $1.5
`billion in damages even if Cox reasonably believed
`its anti-infringement efforts satisfied the law.
`Each of the court’s errors independently merits
`review. Together, these errors form a regime that
`requires urgent rebuke. The stakes are immense.
`The music industry has advanced its terminate-or-
`else theory in ten cases against major ISPs, with no
`signs of relent, while other plaintiffs have adapted
`the theory to target all sorts of other service provid-
`
`
`
`4
`
`ers. The question of who is responsible for online
`copyright infringement carries immense public im-
`plications, affecting the interests of rightsowners,
`businesses, and users on a pervasive scale. This
`Court should grant certiorari to prevent these cases
`from creating confusion, disruption, and chaos on the
`internet. Innovation, privacy, and competition de-
`pend on it.
`
`OPINIONS AND ORDERS BELOW
`The opinion of the United States Court of Ap-
`peals for the Fourth Circuit is published at 93 F.4th
`222 and reproduced at Pet. App. 1a-38a.
`The district court’s memorandum opinion deny-
`ing Defendants’ Rule 50 and Rule 59 post-trial mo-
`tions is published at 464 F. Supp. 3d 795 and
`reproduced at Pet. App. 40a-142a. The district
`court’s memorandum opinion denying Defendants’
`motion for summary judgment and granting in part
`Plaintiffs’ motion for summary judgment on the
`knowledge prong of contributory infringement is
`published at 426 F. Supp. 3d 217 and reproduced at
`Pet. App. 143a-178a.
`
`JURISDICTION
`The Court of Appeals entered judgment on Feb-
`ruary 20, 2024. A timely petition for rehearing was
`denied on March 19, 2024. Pet. App. 179a. On June
`3, 2024, this Court extended the time to file a peti-
`tion for a writ of certiorari to August 16, 2024. This
`Court has jurisdiction under 28 U.S.C. § 1254(1).
`
`
`
`5
`
`STATUTORY PROVISIONS INVOLVED
`17 U.S.C. § 501 imposes liability for direct in-
`fringement of copyright. No provision of the Copy-
`right Act expressly provides for secondary liability.
`17 U.S.C. § 504(c)(1) provides that a “copyright
`owner may elect … to recover, instead of actual
`damages and profits, an award of statutory damages
`… in a sum of not less than $750 or more than
`$30,000 [per an infringed work].”
`17 U.S.C. § 504(c)(2) states that “where … in-
`fringement was committed willfully, the court in its
`discretion may increase the award of statutory dam-
`ages to a sum of not more than $150,000 [per an in-
`fringed work].”
`
`STATEMENT OF THE CASE
`
`This Court’s Previous Rulings On Secondary In-
`fringement
`Courts have developed two doctrines—vicarious
`and contributory liability—that impose liability for
`someone else’s copyright infringement. Grokster, 545
`U.S. at 930-31. Vicarious infringement, “predicated
`upon the agency doctrine of respondeat superior,”
`provides that “one may be vicariously liable if he has
`the right and ability to supervise the infringing ac-
`tivity and also has a direct financial interest in such
`activities.” Gershwin Publ’g Corp. v. Columbia Art-
`ists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).
`Contributory copyright infringement, based on com-
`mon-law aiding-and-abetting liability, applies to
`
`
`
`6
`
`“one who, with knowledge of the infringing activity,
`induces, causes, or materially contributes” to it. Id.
`Every 20 years, it seems, this Court is called up-
`on to apply these secondary-liability doctrines to
`modern technology that can be used to infringe copy-
`rights. First was Sony Corp. of America v. Universal
`City Studios, Inc. 464 U.S. 417, 442 (1984), a case
`about the Betamax videocassette recorder. Weighing
`the “difficult balance between the interests of au-
`thors” and “society’s competing interest in the free
`flow of ideas, information, and commerce,” this Court
`held that there can be no contributory copyright-
`infringement liability for selling a product that is
`“widely used for legitimate, unobjectionable purpos-
`es” but also can be used to infringe. Id. at 429, 442.
`Sony made the world safe for future technology, in-
`cluding digital video recorders, word processors,
`cloud computing, and many other multi-use devices
`and services.
`Twenty years after Sony, this Court revisited
`contributory liability in the context of a nascent in-
`ternet. At issue was Grokster, a file-transfer plat-
`form promoted specifically to encourage music
`piracy. Grokster, 545 U.S. at 919-20. The Court reaf-
`firmed Sony’s noninfringing-use rule but explained
`that a defendant can nevertheless be held liable
`where it “distributes a device with the object of pro-
`moting its use to infringe copyright, as shown by
`clear expression or other affirmative steps … to foster
`infringement.” Id. at 936-37 (emphasis added). The
`Court reaffirmed that “mere[] … failure to take af-
`firmative steps to prevent infringement” is insuffi-
`
`
`
`7
`
`cient to impose liability. Id. at 939 n.12 (emphasis
`added).
`Now, 20 years later, courts are wrestling with
`another variation on the theme: secondary liability
`applied not to a file-transfer platform specifically
`marketed for piracy (as in Grokster) but rather to the
`internet itself. Specifically, this case concerns the
`appropriate standard for a “material contribution”
`claim—a label used in Gershwin’s canonical contrib-
`utory-liability formulation quoted above, but not dis-
`cussed in Grokster. This omission has led to debate
`over whether and how Grokster’s insistence on af-
`firmative, culpable conduct applies to a material-
`contribution claim against a provider of general in-
`ternet services.
`
`The Music Industry Seeks To Hold ISPs Liable
`For Copyright Infringement By Users
`The internet has become one of “the most im-
`portant places” in modern American life. Packing-
`ham v. North Carolina, 582 U.S. 98, 104 (2017). It
`started in the 1990s as “a vast library” and “a
`sprawling mall offering goods and services.” Reno v.
`ACLU, 521 U.S. 844, 853 (1997). By the early 2000s,
`it was a center of civic engagement, where Ameri-
`cans could learn “about political candidates and is-
`sues,” Citizens United v. FEC, 558 U.S. 310, 364
`(2010), “petition their elected representatives,” and
`connect “with their friends and neighbors,” Packing-
`ham, 582 U.S. at 104. Today, people go to school,
`earn their livelihoods, and manage nearly every de-
`tail of day-to-day life through the internet.
`
`
`
`8
`
`But the internet can also be used for ill. Copy-
`right piracy is one example. As Congress recognized
`at the dawn of the internet age, the internet lets us-
`ers “cop[y] and distribute[] [digital works] worldwide
`virtually instantaneously”—which makes infringe-
`ment easy and enforcement hard. S. Rep. No. 105-
`190, at 8 (1998). Congress also appreciated the basic
`tort problems the internet would pose, with numer-
`ous technological intermediaries situated between a
`wrongdoer and an injured party. But it declined to
`resolve these questions, instead encouraging courts
`to adapt preexisting copyright doctrine to new factu-
`al configurations. Id. at 19. Congress’s only interven-
`tion was the Digital Millennium Copyright Act of
`1998 (DMCA), id., which afforded certain service
`providers a safe harbor from damages liability, 17
`U.S.C. § 512(a)-(d), while expressly leaving any other
`“defense” to liability untouched, id. § 512(l).
`For its part, the music industry experimented
`with legal strategies to confront piracy. In the early
`days, the industry went after individual infringing
`users. CA App. 299-300. But suing “students, …
`children, and grandmothers” was unpopular and in-
`effective at scale. CA App. 300, 339. The industry al-
`so pursued online services that were specifically
`designed to facilitate piracy—an approach that came
`to a successful head when this Court decided Grok-
`ster. CA App. 305. But piracy platforms evolved, too,
`in ways that made them a less promising source of
`damages. CA App. 305, 316, 338-39.
`So, around 2008, the industry shifted strategies.
`It decided to target the source of internet access it-
`self: the ISPs that provide the cables, machinery,
`
`
`
`9
`
`and infrastructure needed to send and receive any
`data on the internet. The industry hires services
`that use bots to monitor file-sharing networks. CA
`App. 356. When a bot detects a copyrighted work,
`the service automatically sends notices to ISPs alleg-
`ing that someone at a particular IP address in-
`fringed. Id. The music industry began deluging ISPs
`with millions of notices annually.
`ISPs, however, are much like telephone compa-
`nies: They have limited ability to police how custom-
`ers use the communications infrastructure they
`provide. ISPs cannot block access to specific sites,
`prevent download of particular content, or monitor
`what their users are doing online—and, if they did,
`the privacy protests would be deafening. CA App.
`422-23, 519-20, 530. They have no way of verifying
`whether a bot-generated notice is accurate. CA App.
`535-38. And no one can reliably identify the actual
`individual who used a particular internet connection
`for an illegal download. The ISP could connect the IP
`address to a particular subscriber’s account, but the
`subscriber in question might be a university or a
`conference center with thousands of individual users
`on its network, or a grandmother who unwittingly
`left her internet connection open to the public. Thus,
`the subscriber is often not the infringer and may not
`even know about the infringement.
`Nevertheless, the music industry asserted that
`once an ISP receives allegations that a subscriber’s
`connection has been used to infringe, it is “ob-
`ligat[ed] to enforce the law” by terminating the sub-
`scriber’s internet connection. CA App. 302, 1783-84,
`1787.
`
`
`
`10
`
`BMG Sues Cox, And The Fourth Circuit Adopts
`Unprecedented Contributory-Liability And
`Willfulness Standards
`Cox, which provides internet access to 6 million
`homes and businesses in 18 states, was the music
`industry’s first target in its litigation campaign
`against numerous ISPs. Cox’s subscribers include
`everything from individual households to regional
`ISPs (which rent Cox’s infrastructure to provide in-
`ternet access to an entire region, through a single
`Cox connection). Only 57,000 subscribers, or less
`than 1% of Cox’s subscribers, are accused of in-
`fringement, CA App. 264; so over 99% of Cox sub-
`scribers use their broadband services exclusively for
`noninfringing purposes.
`During the period involved in this case, 2013-
`2014, the industry buried Cox in over a million no-
`tices a year alleging infringement on Cox internet
`connections. CA App. 506. Each notice alleged that
`somebody accessing the internet through a particu-
`lar IP address infringed a particular copyright.
`To address these notices, Cox developed a “grad-
`uated response program.” CA App. 437-38; see CA
`App. 430, 1064-65. For each robo-notice, Cox would
`email a warning to the subscriber. If notices persist-
`ed, Cox would escalate with temporary service sus-
`pensions requiring subscribers to speak with Cox
`investigators to restore service. CA App. 430, 437-38,
`1064-65.
`For 95% of the 1% of subscribers alleged to in-
`fringe—Cox’s graduated-response system worked to
`
`
`
`11
`
`prevent further infringement. CA App. 660, 1735.
`The small minority of subscribers who continued to
`infringe would face possible termination—a step Cox
`deemed appropriate a few dozen times during the
`damages period, though there were no “hard-and-
`fast rules.” CA App. 434-35. In practice, the accounts
`that continued to rack up notices without termina-
`tion were regional ISPs, universities, hotels, military
`housing, and other business accounts used by hun-
`dreds or thousands of individual users—situations
`where account termination would be highly imprac-
`tical and carry disproportionately devastating conse-
`quences. CA App. 663-64, 1743.
`Cox was first sued for alleged secondary copy-
`right infringement in 2014 by music publisher BMG
`Rights Management. BMG Rts. Mgmt. (US) LLC v.
`Cox Commc’ns, Inc., 881 F.3d 293, 298 (4th Cir.
`2018). The district court concluded as a threshold is-
`sue that Cox’s case-by-case approach to subscriber
`termination was not standardized or aggressive
`enough to immunize Cox under the DMCA’s safe-
`harbor provision for ISPs with a policy for “termi-
`nat[ing] … repeat infringers.” Id. at 300 (quoting 17
`U.S.C. § 512(i)(1)(A)). At trial, a jury rejected BMG’s
`vicarious-liability claim but found for BMG on its
`claim of willful, contributory liability. Id.
`The Fourth Circuit overturned the verdict, fault-
`ing the district court for failing to instruct the jury
`that contributory
`infringement requires actual
`knowledge or willful blindness of a subscriber’s in-
`fringement, not mere negligence, and that the plain-
`tiff must prove an ISP knew of the “specific instances
`
`
`
`12
`
`of infringement” for which it was being held second-
`arily liable. Id. at 311-12.
`As to willfulness, however, the Fourth Circuit
`endorsed the district court’s approach. Cox chal-
`lenged a jury instruction that tied willful secondary
`infringement to “‘Cox’s knowledge of its subscribers’
`[infringement],’ rather than Cox’s knowledge that ‘its
`actions constitute an infringement.’” Id. at 312 (quot-
`ing Cox) & n.7 (jury instruction). The Fourth Circuit
`upheld the instructions, offering the circular expla-
`nation that “[c]ontributorily (or vicariously) infring-
`ing with knowledge that one’s subscribers are
`infringing is consistent with at
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