Building Careers and Shaping Public Policy

8 July 2004

The Honorable Orrin G. Hatch
Chairman, Senate Judiciary Committee
United States Senate
Washington, DC 20510

Dear Chairman Hatch:

On behalf of the IEEE-USA's Intellectual Property Committee (IPC), I'm writing this letter to share the concern you expressed regarding recent decisions regarding contributory infringement which have departed from the standards established by the Supreme Court in Sony. The IPC has been discussing this issue for many months and understands how difficult a solution can be that maintains the careful balance established by decades of case-law and also addresses the underlying root causes for wide-spread copyright infringement.

Faced with difficult facts, courts have unnecessarily stretched contribution principles in cases, such as Napster and Grokster, to find liability based upon continued control in a technology rather than whether there was active inducement to infringe another's copyright. This has led to technical system designs that make sense as a way to avoid potential infringement liability, rather than making such system design decisions based on their technical merits. As we have seen, such regulation can prove to be both too much and not enough, at once unduly regulating technological innovation and still providing inadequate protection for copyright owners.

The IEEE-USA IPC strongly believes that it should not be an indirect infringement of a copyright to manufacture, distribute, or provide a hardware or software product or process capable of substantial non-infringing use, unless the manufacturer, distributor or maker actively induces the infringement of a copyrighted work by another. By doing so, the well established balance between proper incentives for copyright owners and protecting technological innovations from undue regulation can be maintained. IEEE-USA IPC would support legislation that substantially satisfies these concerns.

As technologists, we are concerned that the Copyright Act should not be changed in ways that would inhibit research and novel technologies, particularly before their worth can be demonstrated through applications that may not be apparent at the time the technology was developed. But we are also mindful that technologies can be misused to infringe a copyrighted work, and people often promote such misuse for their own benefit. Changing the focus from the extent and nature of non-infringing uses and control, to whether infringement is being actively induced provides a better way --perhaps the best way-- to deal with technologies that have both infringing and non-infringing uses. Decades of experience under the active inducement provisions of the Patent Act confirms that indirect liability for non-infringing conduct amounting to active inducement has protected inventors without an undue burden to technological innovation.

Two issues arose in our discussions. First, we believe that any legislation should make it clear to the courts that in a situation such as the Sony case, sale of a technology capable of substantial non-infringing uses without an active and knowing inducement to infringe, will not give rise to indirect liability. Second, concern was expressed with the scope of conduct defined to be an intentional inducement. As you know, the proposed legislation definition of "intentional inducement" departs from the carefully circumscribed analogue under the patent act. We are concerned that a too-broad definition of inducement may impose a dangerous burden to development of and investment in useful and beneficial technologies to the detriment of the USA's international competitiveness, effectively providing to non-technologists a patent-like protection for an indefinite term.

S.2560 is a significant departure from established copyright law. Using untested standards for determining inducement instead of, for example, the well-tested standards of inducement under the patent act (appropriately adapted for the Copyright Act) could have far reaching and unintended consequences.

We look forward to working with you and your staff to discuss changes to the bill that would address our concerns; to discuss language for the legislative history that will provide further guidance and clarity for the courts; to help identify legitimate uses of technology that should be supported; to help identify uses of technology that are being misused; and to participate in hearings on this bill.

IEEE-USA is an organizational unit of the IEEE. It was created in 1973 to advance the public good and promote the careers and public-policy interests of the more than 225,000 technology professionals who are U.S. members of the IEEE. The IEEE is the world's largest technical professional society. For more information, go to http://www.ieeeusa.org.

Thank you for your consideration. Should you have questions or seek further information on our positions, please contact Bill Williams at 202-785-0017.


Sincerely,


Glenn Tenney
Chair
IEEE-USA Intellectual Property Committee

Cc: The Honorable Patrick Leahy
Minority Leader, Senate Judiciary Committee