Advanced Copyright Issues on the Internet - Fenwick & West LLP

established artists’ songs renders Sony inapplicable. … Because plaintiffs do not ask the court toshut down such satellite activities, the fact that these activities may be noninfringing does notlessen plaintiffs’ likelihood of success.” 1213In conclusion, the district court rejected applicability of the Sony doctrine on the groundthat “any potential noninfringing use of the Napster service is minimal or connected to theinfringing activity, or both. The substantial or commercially significant use of the services was,and continues to be, the unauthorized downloading and uploading of popular music, most ofwhich is copyrighted.” 1214On appeal in Napster I, the Ninth Circuit disagreed with the district court’s overallconclusion that the Napster system was incapable of substantial noninfringing uses: “Thedistrict court improperly confined the use analysis to current uses, ignoring the system’scapabilities. … Consequently, the district court placed undue weight on the proportion of currentinfringing uses as compared to current and future noninfringing use.” 1215 The Ninth Circuittherefore concluded that the Napster system was in fact capable of substantial noninfringinguses. 1216 Nevertheless, for the reasons set forth in the next subsection, that conclusion was notsufficient to save Napster from liability under the Sony doctrine.8. Ongoing Control by Napster Over Its Service. In addition to rejecting all of Napster’sarguments of noninfringing uses of its system, the district court ruled that the Sony doctrine wasinapplicable to Napster for one final reason – because Napster exercised ongoing control over itsservice (which was the same control that the court concluded provided a basis in part for itsfinding of both contributory and vicarious liability, as analyzed below). The plaintiffs hadargued that the Sony doctrine was applicable only to the manufacture and sale of an article ofcommerce, and not to a service. Although the district court appears not to have accepted thisdevice/service distinction per se, the district court did note that in Sony, the defendant’sparticipation did not extend past the manufacturing and selling of the VCRs, and the defendanthad no ongoing participation in the use of the devices to commit infringing acts: 1217Courts have distinguished the protection Sony offers to the manufacture and saleof a device from scenarios in which the defendant continues to exercise controlover the device’s use. … Given defendant’s control over the service, as opposedto mere manufacturing or selling, the existence of a potentially unobjectionableuse like space-shifting does not defeat plaintiffs’ claims. 12181213 Id. at 917. On appeal, the Ninth Circuit, with no further analysis, simply noted that the plaintiffs had notrequested that Napster’s New Artist Program be enjoined. Napster I, 239 F.3d at 1019.1214 Napster, 114 F. Supp. 2d at 912.1215 Napster I, 239 F.3d at 1021.1216 Id.1217 Napster, 114 F. Supp. 2d at 916-17.1218 Id. at 917 (citations omitted).- 277 -