Re: Contributory Infringement

On 9/24/98, Bob Cumbow <cumbr[_at_]perkinscoie.com> wrote:
>
> I seem to recall reading somewhere that you can't bring a claim of
> contributory infringement unless there is also a direct infringement.
> But I can't find it now, and I'm beginning to wonder if I just made it
> up. Does anyone on the list know whether "contributory infringement"
> constitutes a claim in its own right, or must be attached to a claim
> of direct infringement? It seems evident to me that there can't be a
> contributory infringement unless there is a direct infringement; but I
> remember cases like the Sony Betamax case, where it was claimed that
> distribution of VCRs contributed to infringement, but I don't believe
> any end users were actually sued for direct infringement. So the
> questions are:
>
> (a) Can you make a claim for contributory infringement alone?
>
> (b) If not, is it sufficient merely to show that there is or could be
> a direct infringement? or
>
> (c) Do you have to actually name a direct infringement defendant in
> order to bring an action against a contributory infringement
> defendant?
>
> Thanks for any help anyone can offer.
>

You do have to prove direct infringement; if you don't, there is nothing to contribute to. But you don't have to actually *sue* anyone for direct infringement.

Sony was indeed such a case; the question of whether the (unsued) end users had a fair use defense turned out to be dispositive of the contributory infringement claim. See also CR Bard v. ACS, 911 F.2d 670 (Fed. Cir. 1990) (a patent case, but Sony says the standards are the same) ("of course, a finding of induced or contributory infringement must be predicated on a direct infringement... by the users of the ACS catheter.").

Mark Lemley
Visiting Professor, Boalt Hall School of Law University of California at Berkeley (fall 1998) mlemley[_at_]mail.law.berkeley.edu
Professor of Law
University of Texas School of Law
Of counsel, Fish & Richardson P.C.
mlemley[_at_]mail.law.utexas.edu Received on Fri Sep 25 1998 - 20:21:25 GMT