Volume 73, Number 1

April 1998

An Odyssey Through Copyright’s Vicarious Defenses

David Nimmer

It is rare that an issue of fundamental importance to copyright litigation goes wholly unaddressed. Yet that rare situation applies to the question of how courts should treat affirmative defenses raised by “related” defendants, i.e., those who are claimed not to have committed the infringement itself (the “primary” defendants) but who are nonetheless sought to be held responsible on the theories of vicarious liability or contributory infringement. Should those defenses inure to the benefit solely of the defendant who pleads them? Or should they be evaluated in the context of the primary claim of infringement, and thus radiate outward for the benefit of all defendants in the action? Although legions of cases confront such vicarious defenses, they do so in a wholly uncritical fashion—some adopt the former approach, others the latter; their unifying point is that they fail to articulate any basis for drawing the distinction. Neither do the scholarly commentaries treat this issue, notwithstanding that it would seem to be essential to sound progress in the field. The case law’s failure to address this disparity would give rise to no problems if only everyone’s intuition invariably agreed as to which cases fit into which categories. Recently, however, I found myself for the first time ever disagreeing with how a particular court evaluated the affirmative defense of a related defendant. The case in question is Religious Technology Center v. Netcom On-Line Communications Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995), which rejected the primary defendant’s fair use defense, and then when confronting the related defendant’s summary judgment motion recalibrated the entire fair use equilibrium with respect to the circumstances of that new defendant. To evaluate the wisdom of that court’s treatment of the vicarious fair use defense, it is necessary to take several gigantic strides backwards and to articulate a framework for how related defendants may assert their affirmative defenses, whether personally or globally. Happily, on a recent archaeological romp, I encountered some ancient judicial opinions in which resolution to these issues emerges full-blown from the judicial brow. I hereby present them unedited.