Unwinding Sony

85 Pages Posted: 19 Sep 2006 Last revised: 9 Apr 2014

See all articles by Peter S. Menell

Peter S. Menell

UC Berkeley School of Law

David Nimmer

Irell & Manella LLP

Date Written: September 15, 2006


The dawning of the digital age has brought the Supreme Court's Sony "staple article of commerce" doctrine to center stage in legal and policy discussions about the proper role and scope of copyright protection. To technology companies, it represents a vital safe harbor for product design; to the content industries, this doctrine remains an Achilles heel. The origins of this doctrine have always been somewhat obscure. With nary a peak at the text or the legislative history of the then-recently enacted overhaul of the copyright system, the Supreme Court adverted to patent law to determine the scope of indirect liability - a fundamental issue that would loom large in the shift from the analog to the digital distribution platform for content. A slim majority of the Supreme Court justified this interpretation of the Copyright Act of 1976 on the basis of a vague assertion of "historic kinship" between patent and copyright.

This article scrutinizes this critical logical premise. Part I exhaustively reviews the litigation and correspondence of the justices to understand why the Court paid so little attention to the legislative materials and so much to the patent law. It finds that gaps in the information provided to the Court, in conjunction with the justices' lack of familiarity with copyright law generally and the Copyright Act of 1976 in particular, led the Court astray. Part II tests the "historic kinship" premise, finding that it cannot withstand scrutiny. Had the Court traced the origins of copyright and patent back to their source, it would have seen that they both derive from a common wellspring: tort principles. Concerns about patent misuse and improper leveraging of monopoly power led the courts, and later Congress, to carve out an express safe harbor in patent law for those selling "staple articles of commerce" - products suitable for substantial non-infringing uses. Part III demonstrates that the 1976 Copyright Act envisioned that courts would continue to use the traditional tort wellspring, informed by the distinctive challenges of copyright enforcement. This would have brought the reasonable alternative design framework of products liability law into play. The article shows that this approach would almost certainly have resulted in the same outcome that the Sony Court reached, but of critical importance, it would have provided a more sound and dynamic jurisprudential framework for calibrating liability as new technologies develop. Part IV examines Sony's legacy, showing that subsequent legislative activity, court decisions, and the marketplace reflect a practical reality that lies closer to the reasonable alternative design standard than a broad "staple article of commerce" safe harbor. In reality, Sony's "staple article of commerce" doctrine has proven largely symbolic and unworkable, as Congress, the courts, and businesses in the marketplace have sought to promote product innovation without unduly jeopardizing copyright protection. The failure to recognize that reality, however, breeds doctrinal confusion, distorts case law evolution, and stultifies the larger policy debate over copyright protection in the digital age.

Keywords: Copyrights, Indirect Liability, Contributory Liability, Statutory Interpretation, Patents, Supreme Court

JEL Classification: O34, Z10, K30

Suggested Citation

Menell, Peter S. and Nimmer, David, Unwinding Sony (September 15, 2006). California Law Review, Vol. 95, p. 941, 2007, Available at SSRN: https://ssrn.com/abstract=930728 or http://dx.doi.org/10.2139/ssrn.930728

Peter S. Menell (Contact Author)

UC Berkeley School of Law ( email )

2240 Bancroft Way
Berkeley, CA 94720-7200
United States

David Nimmer

Irell & Manella LLP ( email )

1800 Avenue of the Stars, Suite 900
Los Angeles, CA 90067
United States
310-277-1010 or (310) 203-7079 (Phone)

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