Advanced Copyright Issues on the Internet - Fenwick & West LLP

“[c]ontrary to Napster’s contention, Napster I did not create a new knowledge standard forcontributory infringement. Instead, the court relied on the traditional formulation that eitherconstructive or actual knowledge is sufficient to impose liability on Napster for contributoryinfringement.” 1297The district court acknowledged some lack of clarity in the Ninth Circuit’s Napster Iopinion on the issue of knowledge, as discussed earlier in this paper: “The court is aware thatthe Ninth Circuit’s reference to actual knowledge and failure to remove access might lead tosome confusion. Lacking a more definitive statement from the Court of Appeals, the courtunderstands the Ninth Circuit to hold that a range of conduct, when linked to Napster’s system,may give rise to constructive or actual knowledge. Conduct sufficient for liability may takeforms other than as a combination of actual knowledge and failure to block access. … Plaintiffsallege that Napster knew of music piracy on its system, that it had the ability to patrol itsdatabase, that Napster had knowledge of some specific infringing files, and did nothing toprevent continued infringement. If these allegations are true, plaintiffs are entitled to at leastpreliminary injunctive relief under the reasoning of [Napster I].” 1298With respect to vicarious liability, the court noted that Napster had not challenged theplaintiffs’ allegations of control and financial interest, but instead had argued that notice is anadditional required element for both vicarious and contributory copyright infringement on thepart of online service providers. 1299 The court therefore turned to the issue of notice as aseparate element of secondary infringement. Napster based its notice argument on the NinthCircuit’s modification in Napster I of the district court’s original July 2000 preliminaryinjunction as being overbroad and its statement that “the burden [is] on plaintiffs to providenotice to Napster of copyrighted works and files containing such works available on the Napstersystem before Napster has the duty to disable access to the offending content.” 1300 Napsterargued that this statement mandated notice as a necessary element of secondary infringement,and that any complaint failing to allege both notice prior to suit and Napster’s subsequent failureto disable infringing material was deficient. 1301The district court found Napster’s interpretation of the Ninth Circuit’s opinion to beproblematic:First, Napster reads the statement out of context. The burden-shifting statementupon which Napster relies addressed only the scope of injunctive relief. TheNinth Circuit was clearly concerned with the overbreadth of the injunction andbelieved that any liability based solely on the architecture of Napster’s systemimplicated Sony. In tailoring injunctive relief to avoid violating Sony, the NinthCircuit shifted the burden to plaintiffs to provide notice of specific infringing1297 Id. at *16.1298 Id. at *23-24.1299 Id. at *26.1300 Id. at *28-29 (quoting Napster I, 239 F.3d at 1027).1301 Fonovisa v. Napster, 2002 U.S. Dist. LEXIS 4270, at *29.- 294 -