Ninth Circuit Clarifies Two Criminal Copyright Mens Rea Standards

In an opinion filed the 1st of October,1 the Ninth Circuit addressed the proper meaning of “willfully” under Section 506(a)(1) of Title 17,2 the federal criminal copyright infringement statute, and “knowingly” under Section 2318(a)(1) of Title 18,3 the federal criminal trafficking in counterfeit labels statute. The district court below had treated both standards as ones of strict liability—all that had to be proved was that the defendant intended to make the copies or that he intended to traffic in the labels. The Ninth Circuit instead held that the proper legal standard for both was one of specific intent—it had to be proved that the defendant not only intended to do the acts, but that he also intended to violate the law in the process.4

As to the meaning of “willfully” for criminal copyright infringement, the Ninth Circuit reasoned:

[T]he term “willfully” is ambiguous. To infringe willfully could simply mean to intentionally commit the act that constitutes infringement. Alternatively, it could mean that the defendant must act with a bad purpose or evil motive in the sense that there was an intentional violation of a known legal duty. The 1976 Copyright Act does not define “willfully,” and its legislative history offers little guidance. ***

In reviewing a conviction for criminal copyright infringement, we, and numerous other circuits, have assumed that proof of the defendant’s specific intent to violate someone’s copyright is required. We now explicitly hold that “willfully” as used in 17 U.S.C. § 506(a) connotes a voluntary, intentional violation of a known legal duty. ***

As a practical matter, requiring only a general intent to copy as a basis for a criminal conviction would not shield any appreciable amount of infringing conduct from the threat of prosecution. Civil liability will not lie if an author fortuitously creates a work that is substantially similar to another author’s copyrighted work. Copying is of necessity an intentional act. If we were to read 17 U.S.C. § 506(a)’s willfulness requirement to mean only an intent to copy, there would be no meaningful distinction between civil and criminal liability in the vast majority of cases. That cannot be the result that Congress sought. ***

We conclude that the district court in this case erred by defining willfulness such that the jury could have convicted Liu without finding that he knew that his actions were unlawful.5

And as to “knowingly” for criminal trafficking in counterfeit labels, the Ninth Circuit reasoned:

Th[e] offense requires proof that the defendant acted “knowingly.” Like “willfully,” the word “knowingly” is susceptible to more than one meaning in this context. It could mean either that the defendant knew that he was trafficking or that he knew that the labels were counterfeit. We hold that “knowingly” in this context means the latter, and thus the government must prove that Liu knew the labels were counterfeit.

The original statute required that the defendant act both “knowingly and with fraudulent intent” and, further, that he act “knowing the label to have been falsely made, forged, or counterfeited.” The statutory language changed to its current form—omitting all of these requirements except that the defendant act “knowingly”—in the Piracy and Counterfeiting Amendments Act of 1982. The Senate report makes clear that this change was not intended to be substantive because the omitted language was viewed as superfluous:

[T]he proposed section 2318 eliminates the requirement of fraudulent intent. Instead, it would be sufficient if the offense of trafficking in counterfeit labels were “knowingly” committed. The Department of Justice testified before the Committee [on the Judiciary] that dropping the fraudulent intent requirement would present no problem, essentially agreeing with the Committee’s view that the fraudulent intent requirement is superfluous if one is acting with the knowledge that the articles are counterfeit. In other words, it would be difficult to conceive of a situation in which one could traffic in articles knowing that they are counterfeit without intending to defraud the purchaser.

Thus, it is clear that Congress used “knowingly” to refer to knowledge that the labels were counterfeit. ***

Accordingly, we hold that the district court erred in its instruction on knowledge . . . because the court failed to clarify that “knowingly” referred to knowledge that the labels were counterfeit . . . .6

This seems like the right reasoning and the right result to me. And, frankly, I’m surprised this isn’t already well-settled law in the Ninth Circuit. Section 506(a), the criminal copyright infringement statute, doesn’t define “willfully,” as the court rightly points out. But it does provide the following: “For purposes of this subsection, evidence of reproduction or distribution of a copyrighted work, by itself, shall not be sufficient to establish willful infringement of a copyright.”7 This tells us that the fact of copying is insufficient to prove willful infringement. What’s also necessary is that the copying was done knowing that it was in violation of a legal duty. And as the Ninth Circuit reasoned, if the mens rea did not include such specific intent, there would be no practical difference between civil and criminal copyright infringement.

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© 2013 Devlin Hartline. Licensed under the Law Theories Public License 1.0.

  1. See United States v. Liu, 731 F.3d 982 (9th Cir. 2013). 
  2. See 17 U.S.C.A. § 506(a)(1) (West 2013) (“Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18, if the infringement was committed– (A) for purposes of commercial advantage or private financial gain; (B) by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000; or (C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution.”). 
  3. See 18 U.S.C.A. § 2318(a)(1) (West 2013) (“Whoever, in any of the circumstances described in subsection (c), knowingly traffics in– (A) a counterfeit label or illicit label affixed to, enclosing, or accompanying, or designed to be affixed to, enclose, or accompany– (i) a phonorecord; (ii) a copy of a computer program; (iii) a copy of a motion picture or other audiovisual work; (iv) a copy of a literary work; (v) a copy of a pictorial, graphic, or sculptural work; (vi) a work of visual art; or (vii) documentation or packaging; or (B) counterfeit documentation or packaging, shall be fined under this title or imprisoned for not more than 5 years, or both.”). 
  4. See Liu, 731 F.3d at 985 (“We hold that the term ‘willfully’ requires the government to prove that a defendant knew he was acting illegally rather than simply that he knew he was making copies. Similarly, to ‘knowingly’ traffic in counterfeit labels requires knowledge that the labels were counterfeit.”). 
  5. Id. at 989-92 (internal citations and quotations omitted). 
  6. Id. at 993-95 (internal citations and quotations omitted). 
  7. 17 U.S.C.A. § 506(a)(2) (West 2013).