Usually, as the bible of secondary trademark infringement explains, “contributory infringement . . . requires proof of direct infringement by a third party . . . It is not necessary, however, for a plaintiff to bring both direct and indirect claims; rather it must demonstrate that the direct infringement did in fact occur.” Eric Goldman points out that this is every bit as true with respect to contributory infringement in copyright as well. But he notes that in Miller v. Facebook, Inc., 2010 WL 2198204 (N.D. Cal. May 28, 2010), the court seems to require a plaintiff making a contributory infringement claim to name the direct infringer as a defendant if it is to maintain its action at all. As Eric explains:
Normally, a contributory copyright infringement claim can be successfully brought without naming a direct infringer as a defendant see, e.g., most of the lawsuits against P2P file-sharing services. However, the court says that Yeo may be “essential” to Millers successful claim against Facebook because, to establish direct infringement, Miller will need to prove:
Mr. Yeo unlawfully â€œreproducedâ€ the protected elements of Boomshines source code to create the accused ChainRxn video game. Without Mr. Yeo in the case to provide testimony and the ChainRxn source code, however, it is unclear how plaintiff would be able to prove such unlawful copying. Without such proof that ChainRxn is an unlawful â€œreproductionâ€ of Boomshine, plaintiffs remaining claims all crumble.
I’m a little confused by this. The court apparently treats the case as a source code ripoff, but Yeo’s game could infringe Boomshines display/look-and-feel, and Yeo’s testimony isnt critical to a look-and-feel comparison. Furthermore, in theory, Yeo could supply the necessary testimony without being a defendant. But its clear the court expects Miller to find Yeo and try to bring him to justice. The court concludes with this ominous warning: “if plaintiff Yeo is not brought into this action BY JULY 30, 2010, evidenced by proof of service of the summons and complaint, the case will likely be dismissed.” I’m sure Facebook wouldn’t mind seeing the case end on such a technicality.
When Eric writes, “I’m a little confused by this,” he’s being very polite to judges he just might bump into out there in that beautiful weather he enjoys all day long. But “technicality”? Technically, this judge seems … wrong.