Is Grokster Erasing “Capable” from Sony?

At the core of the Grokster dispute over Sony’s meaning was the cryptic language from Sony protecting the makers for the VCR from contributory copyright infringement liability because their product was “capable of substantial noninfringing uses.”  This language raised a bunch of questions: What does “capable” mean?  Isn’t it weird to include “capable” and “substantial” side-by-side?  If something is “capable” of a few noninfringing uses, why wouldn’t it be “capable” of a lot of noninfringing uses?

At first glance, the majority opinion punts on this question, leaving it to Justices Ginsburg and Breyer to duke it out over this issue.  Justice Ginsburg wants this language from Sony to create a quantitative test.  If Grokster is “overwhelmingly used to infringe” and “this infringement was the overwhelming source of revenue from the products” then Sony provides no defense.  (Ginsburg concurrence at 7).  Justice Breyer wants it to be much easier for defendants to use the Sony defense, and he cites evidence in the record that shows that even Grokster itself ought to have a fighting chance on remand because users could find non-infringing MP3s by Wilco, e-books by Project Gutenberg, or public domain software like WinZip on Grokster. (Breyer concurrence at 5).  But, critically, even though Breyer stresses the importance of “capable” (Breyer at 6), he concedes that it doesn’t really mean “capable,” because “Sony’s word ‘capable’ refers to a plausible, not simply a theoretical, likelihood that such uses will come to pass, and that fact anchors Sony in practical reality.” (Breyer at 10).

What does the majority opinion say about this question?  The critical language, it seems to me, appears at page 15 of Souter’s opinion for the Court: “The [Sony] doctrine absolves the equivocal conduct of selling an item with substantial lawful as well as unlawful uses, and limits liability to instances of more acute fault than the mere understanding that some of one’s products will be misused.” 

Sony established a dichotomy.  Defendants’ products were capable of substantial noninfringing uses and therefore not liable, or incapable of substantial noninfringing uses and therefore liable.  Grokster does two things.  First, it established a new middle-category (“maybe liable”), in which facts like how the product was marketed and designed will be decisive on contributory copyright infringement.  Second, it shifts some products from Sony’s safe harbor into the liable category and the middle category.  Products that lack plausible and likely non-infringing uses are potentially liable, according to all nine Justices.  This aspect of the opinion represents a big victory for the content industry, although it obviously didn’t give them all they asked for (and all Justice Ginsburg would have given them).  Linguistically, “capable” remains in Sony, but analytically, I think the word has been erased.  Once we’re modifying “capable” with not only “substantial” but also “plausible” and “likely” we’re no longer talking about capabilities at all.