Contributory Copyright Infringement Claim May Need Direct Infringer as a Defendant to Succeed–Miller v. Facebook

By Eric Goldman

Miller v. Facebook, Inc., 2010 WL 2198204 (N.D. Cal. May 28, 2010)

This is my third time blogging about this case (Jan. 2010 post; April 2010 post). The facts as alleged by the plaintiff have always been a bit sketchy, but here’s my understanding of plaintiff’s beef. Plaintiff is a game developer who developed a game called Boomshine. He alleges Yeo created an infringing version of Boomshine. Yeo then distributed the allegedly infringing version via Facebook, but Facebook’s misconduct has been a little muddled. Miller’s latest attempt to explain Facebook’s wrongful behavior is that (1) “the ChainRxn game was allegedly presented by Facebook’s website to its users through the use of an inline frame (or an ‘iFrame’) so that the content appeared to be originating from Facebook’s website” and (2) Facebook “‘took the ‘affirmative step’ to approve the ChainRxn game for publication in the Facebook Application Directory.” These allegations take the lawsuit squarely into territory governed by the Ninth Circuit’s Perfect 10 v. Amazon ruling.

Miller sued both Yeo and Facebook. In January 2010, Facebook successfully invoked its user agreement to transfer the lawsuit from Georgia to its home court in California. Then, in April 2010, Facebook got the complaint dismissed with leave to amend. This ruling deals with Miller’s request to file a second amended complaint, which the court mostly grants, although the court instructs Miller to provide some more factual clarity.

Miller’s latest complaint removes Miller’s direct and vicarious copyright claim against Facebook, proceeding only with a contributory claim, which still requires a showing of Yeo’s direct infringement. The court says that Miller has properly alleged that except with respect to the public display right.

Miller also properly alleged the contributory claim:

First, there is no question that Facebook provides Internet services to the public as a social networking website. Second, the proposed complaint clearly alleges that Facebook had actual knowledge that specific infringing material was available using its system. Plaintiff sent Facebook a letter on May 7, 2009, demanding that Facebook remove ChainRxn from its website because it violated plaintiff’s copyright in Boomshine. Third, plaintiff makes clear that Facebook could have taken one or two simple measures to prevent further harm to his intellectual property rights after this notice was provided-namely, by either disabling defendant Yeo’s Facebook account or by removing ChainRxn from the Facebook Application Directory. Fourth, the proposed complaint alleges that despite this actual knowledge by Facebook and the availability of two simple measures to prevent further harm, Facebook continued to allow its users to search for and access the allegedly infringing work for some period of time thereafter. Fifth, given the immense popularity of the Facebook website, it is a reasonable inference that the continued listing of ChainRxn in the Facebook Application Directory and the access provided to ChainRxn through the Facebook website had the effect of significantly magnifying what might otherwise have been immaterial infringing activities had the ChainRxn game not been part of the Facebook social network.

The most interesting discussion relates to Miller’s apparent inability to serve Yeo. Normally, a contributory copyright infringement claim can be successfully brought without naming a direct infringer as a defendant (see, e.g., most of the lawsuits against P2P file-sharing services). However, the court says that Yeo may be “essential” to Miller’s successful claim against Facebook because, to establish direct infringement, Miller will need to prove:

Mr. Yeo unlawfully “reproduced” the protected elements of Boomshine’s source code to create the accused ChainRxn video game. Without Mr. Yeo in the case to provide testimony and the ChainRxn source code, however, it is unclear how plaintiff would be able to prove such unlawful copying. Without such proof that ChainRxn is an unlawful “reproduction” of Boomshine, plaintiff’s remaining claims all crumble.

I’m a little confused by this. The court apparently treats the case as a source code ripoff, but Yeo’s game could infringe Boomshine’s display/look-and-feel, and Yeo’s testimony isn’t critical to a look-and-feel comparison. Furthermore, in theory, Yeo could supply the necessary testimony without being a defendant. But it’s clear the court expects Miller to find Yeo and try to bring him to justice. The court concludes with this ominous warning: “if plaintiff Yeo is not brought into this action BY JULY 30, 2010, evidenced by proof of service of the summons and complaint, the case will likely be dismissed.” I’m sure Facebook wouldn’t mind seeing the case end on such a technicality.