Ninth Circuit Clarifies that “Willfully” Means “Willfully”

I think most people know that there is such a thing as criminal copyright infringement, i.e., copyright infringement so heinous that the U.S. government will take time from investigating drug deals to investigate the copyright infringement. How heinous? So heinous that even Jammie Thomas-Rasset, who was found liable for allowing 24 song files to be downloaded via a peer-to-peer network, and was found liable for hundreds of thousands or millions of dollars in damage (depending on which jury you ask)—even she did not do something heinous enough. I mean, it really has be terrible, terrible, terrible. Like, industrial-scale terrible.

Actually, that’s technically an exaggeration (though it’s true as to Thomas-Rasset). As a practical matter, the FBI and U.S. attorneys prefer to expend their limited resources on truly large-scale operations*, the law only has two additional requirements that make garden-variety civil infringement into criminal infringement. First, the act of infringement must be committed “willfully.” Second, it must have an economic motivation.**

* Generally speaking, in criminal law, the trend has been to making more and more things illegal (and increase the punishment), then leave it up to prosecutors and police to decide whether the matter is worth pursuing. This is a really efficient and great system, unless you for some reason believe that citizens should have some sense of what is and isn’t illegal before they act.

** Since the economic motivation element is pretty trivial—and I’m quoting none other than Prof. Nimmer here—“The only bar against an overzealous prosecutor criminalizing nearly every copyright infringement case lies in the other prerequisite to criminal liability: willfulness.”

Keep Your Eye on the Bouncing Adverb

In criminal law, it’s crucial to keep your eye on the adverb that describes how the potential criminal carries out the illegal act, because it usually describes the state of mind necessary for the act to be a crime. This is because we usually don’t punish people for merely acting, but for acting with a bad frame of mind. Let’s say statute made it a felony (most of them do these days) for breaking a jar of pickles within 100 feet of an elementary school. You almost never will be guilty of a crime if, at the moment someone is handing you the jar, a raptor swoops down, scratches at you, and you, warding off said raptor, let the jar fall to the ground, where is smashes on the pavement.

If you were liable under these circumstances for causing the pickle jar to break open, you would be said to be “strictly liable” for your actions. It’s exceedingly rare in criminal law.* It is somewhat more common in civil law, most notably products liability. In fact, strict liability is actually the standard for civil copyright infringement.**

* But not unheard of, with statutory rape being the best-known example.

** But even that’s a bit misleading. It is true that there is no “mental” component to civil copyright infringement. But, unlike, say, patent infringement, it’s pretty hard to infringe by complete accident. That’s because (as the court observed) you need to have copied from the underlying work, which implies at least some knowledge of what you’re doing (and that it might be wrong). By contrast, in patent law, you could be minding your own business, manufacturing really cool stuff, when, whammo!, you’re accused of infringing some patent you’ve never seen, owned by some company you’ve never heard of, that has never been directly connected with the manufacture of anything. The closest thing in copyright law is unconscious copying, where you had access to the underlying work, forgot all about your encounter, but remembered the bits you ended up using (illegally) in your own work. I kid you not, that’s exactly what happened to Michael Bolton once upon a time.

Instead, we punish people for:

  • Clumsily dropping the pickle jar on the pavement, causing it to break (“negligently breaking the pickle jar”).
  • Dropping the pickle jar on purpose, though you might not have meant for it to break upon impact (“knowingly breaking the pickle jar”).
  • Dropping the pickle jar on purpose, hoping that it would break upon impact (“willfully breaking the pickle jar”).

There’s a huge difference between these three levels* of what lawyers call “mens rea” (Latin for something like “guilty mind”—rea is actually hard to translate neatly into English), especially between “knowingly” and “willfully.” “Knowingly” just means you had to know what you were doing, but not necessarily the illegal result of your actions. “Willfully” means you also desired for the illegal result of your actions to occur.

* Four, if you include strict liability.

Willfulness can be hard to prove, as you can imagine. It might hard to deny that you meant to drop the pickle jar, but you can always say, “But I didn’t expect it to break open!”* Instead, the prosecutor will have to prove it indirectly. For example, if you meant to drop the jar, and you did so while standing on the pavement, it can be reasonably inferred that you meant for the jar to break open. Or else you’re a moron.

* What you can’t say is that you didn’t know it was illegal to break open pickle jars within 100 feet of a school. Yes, that would be an incredibly obscure law, but everyone is expected to know all laws. “Ignorance of the law is no excuse,” and all that. Not a terribly realistic assumption anymore. Funnily enough, the court in Liu acknowledged that “the modern proliferation of statutes and regulations sometimes makes it difficult for the average citizen to know and comprehend the extent of the duties and obligations imposed by the laws.”

Alas, real criminal law isn’t as neat as it seemed in our criminal law classes in law school. Sometimes courts define “willfully” and “knowingly” in different ways, even interchangeably, which is a big deal, given how crucial the differences are.

It’s a very big deal in copyright law. There’s very significant difference between, say, pressing out 1,000,000 DVDs of a copyrighted movie, and doing so while under the distinct impression you had permission to do so. In both cases, you knew what you were doing (pressing out DVDs), but in the latter case you didn’t know doing so was infringing.

Liu Doesn’t Lose on Appeal

That’s kind of what happened (maybe) in United States v. Liu. The defendant ran a legitimate CD and DVD replication business, which had recently fallen on hard times (like a lot of such businesses). He had been trying to lease out his business space and had had several of his replicators repossessed. Nevertheless, Symantec, the security-software company, had begun to suspect that Liu’s company was making ends meet by pressing out illegal CDs of Symatec’s software. Symantec hired a private investigator, who posed as a potential lessee. She witnessed a CD/DVD replication machine being used and “a locked room that was filled wall to wall with spindles of CDs.”

Which isn’t very suspicious when you consider what line of business Liu was in. But Symantec still managed to convince the FBI that something fishy was going on*, and the FBI (in a matter of months, which is blindingly fast) executed a search warrant. Agents found (1) CDs of a compilation of rap music; (2) CDs of compilations of Latin music; (3) CDs of a Beatles greatest hits album; and (4) DVDs of Crouching Tiger, Hidden Dragon. The opinion says simply: “Liu did not have authorization from the copyright holders to replicate any of these works.”

* Getting the FBI to take the case is often a great result for the rights holder because the FBI and the U.S. attorneys don’t charge you (unlike your lawyers and investigators), there’s no annoying discovery, the federal government has investigatory powers that civil lawyers and private investigators can only dream of, and you can punish people you don’t like in ways (like prison time) you never could by just taking all their money, destroying all their infringing goods, and enjoining their main business practice. Also, when the people you don’t like also don’t have much money, sending them to prison is much more satisfying than collecting nothing. The downside is that the FBI takes its time, and can get distracted by more important things.

Liu seems pretty guilty, right? But Liu had explanations. He had been assured by a customer that it had had the necessary permission to duplicate Crouching Tiger, Hidden Dragon. In fact, he sued that client for $85,000, partly on grounds that he had been defrauded in this regard, though he recovered only $600.* As for the Latin compilations, he was making those CDs for a friend and believed that the friend was the copyright holder. The opinion doesn’t explain about the rap music or the Beatles CDs, except that Liu denied that he was personally involved with those.**

* Liu’s company also sued to recover for breach of contract. At trial, there was evidence that the DVDs were actually of very low quality, so it’s possible that the $600 award represents just the fraud claim (i.e., Liu’s company got nothing for breach of contract).

** The opinion is a little confusing at this point. It’s possible that Liu claimed he was only providing the “overwrapping.” If so, I’m not sure that changes anything, since he’d be liable for illegal distribution, unless he was also claiming that he reasonably believed whoever asked him to do the overwrapping had the right to distribute the copies.

Anyway, Liu is convicted and sentenced to four years in prison. Harsh.

Who Instructs the Instructors Themselves?

But Liu’s conviction is overturned on appeal because the appellate court didn’t like how the district court defined “willfully” for the jury. Like, a lot. It’s pretty rare for convictions to be overturned based on a faulty jury instructions, but the Court of Appeals felt pretty strongly that the district court had blown it.

The Court of Appeals had many complaints, but the main one appeared to be this jury instruction:

An act is done “willfully” if the act is done knowingly and intentionally, not through ignorance, mistake, or accident.

To the Court of Appeals, this is an instruction defining “knowingly” (albeit in a somewhat circular manner), not “willfully.” Notice how the focus is on the act, not on its legal consequences, and how any “knowingly and intentionally” is contrasted with “ignorance, mistake or accident.”

This error is really significant because, based on the facts, a jury really might have concluded that, while Liu meant to duplicate all of those CDs and DVDs, he didn’t know he was thereby committing copyright infringement. That is not, as the lawyers say, a “harmless error.” So vacated (thrown out) and remanded (sent back down for a do-over)?

Does “Willfully” Mean “Willfully” or “Knowingly”?

But, wait: we’re getting ahead of ourselves. Mayhap “willfully” actually means “knowingly” in copyright law? Because such things have been known to happen, because it law. And law is designed to make sense 90% of the time, then throw you for a major loop the other 10% of the time, usually just at the moment you had grown soft and complacent because it was all starting to make sense.

No, fortunately, for logic and potential criminal defendants everywhere: “willfully” means “willfully” in copyright law. More specifically, “willfully” means, “A voluntary, intentional violation of a known legal duty.” In the context of copyright law, it means a voluntary, intentional infringement of someone else’s copyright. So Liu’s conviction is vacated and remanded for a new trial with a new and improved jury instruction.*

* How much do you want to bet he gets convicted anyway?

The problem really is that neither “knowingly” nor “willfully” really works with copyright infringement. “Knowingly” doesn’t work because it would make criminals out of honest people. “Willfully” doesn’t work because it assumes that copyright infringement is as straightforward as, say, breaking a jar of pickles. If you’ve been reading my blog at all, you know this isn’t true. Copyright law is full of counter-intuitive and squishy bits: some things you might expect to be legal are illegal, some things you might expect to be illegal are legal, and lots of things you don’t know are legal or illegal (such as the central elements of substantial similarity and fair use) until a jury decides. A lot of people might be infringing copyright (and thus civilly liable under strict liability) who honestly didn’t know they were (and thus not criminally liable).

The upshot is that criminal liability tends to be reserved for the most obvious types of infringement, like pressing CDs of Beatles greatest hits. But, as Liu shows, even these types of cases can be fraught.

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.