Advanced Copyright Issues on the Internet - Fenwick & West LLP

July 11 order as “modifying” the Mar. 5 order. 1307 Napster also argued that, in any event, theJuly 11 order’s “zero tolerance” standard was fundamentally at odds with the Ninth Circuitruling in Napster I. 1308 The plaintiffs, in turn, challenged the requirements of the preliminaryinjunctions that they provide to Napster file names found on the Napster index that correspondedto their copyrighted works before Napster had a duty to act on those files.On appeal, the Ninth Circuit rejected most of the arguments of both Napster and theplaintiffs in a very sparse opinion that will be referred to as “Napster II.” 1309 With respect to theplaintiffs’ argument that it should not have to supply file names to Napster and that Napstershould instead be required to search for and block all files containing any protected copyrightedworks, not just works with which plaintiffs had been able to provide a corresponding file name,the Ninth Circuit ruled that the notice requirements of the preliminary injunctions complied withits holding in Napster I that the plaintiffs bore the burden to provide notice to Napster ofcopyrighted works and files containing such works before Napster had a duty to disable access tothe offending content. 1310 The court further held that “Napster’s duty to search under themodified preliminary injunction is consistent with our holding that Napster must ‘affirmativelyuse its ability to patrol its system and preclude access to potentially infringing files listed on itssearch index.’ The modified preliminary injunction correctly reflects the legal principles ofcontributory and vicarious copyright infringement that we previously articulated.” 1311 Thus, theNinth Circuit’s Napster II opinion appears to establish a legal rule under which there is a noticerequirement both for the imposition of common law contributory liability and vicarious liabilityon an OSP, contrary to the district court’s conclusion otherwise in its opinion on Napster’smotion to dismiss, discussed in subsection 17 above. 1312The Ninth Circuit rejected Napster’s challenge to the preliminary injunction asimpermissibly vague. The court’s very terse response was as follows: “Napster has a duty topolice its system in order to avoid vicarious infringement. Napster can police the system bysearching its index for files containing a noticed copyrighted work. The modified preliminaryinjunction directs Napster, in no vague terms, to do exactly that.” 1313 The court also rejectedNapster’s argument that the district court had improperly delegated its judicial authority to Dr.Nichols: “At no time did the technical advisor displace the district court’s judicial role. Thetechnical advisor never unilaterally issued findings of fact or conclusions of law regardingNapster’s compliance.” 13141307 Id. at 6.1308 Id.1309 A&M Records, Inc. v. Napster, Inc., 284 F.3d 1091 (9 th Cir. 2002).1310 Id. at 1096.1311 Id. at 1096-97 (quoting Napster I, 239 F.3d at 1027).1312 This rule would not, however, appear to survive the Supreme Court’s decision in Metro-Goldwyn-MayerStudios Inc. v. Grokster, Ltd., 125 S. Ct. 2764, 2770 (2005), discussed in Section III.C.4(a) below.1313 Napster II, 284 F.3d at 1097.1314 Id.- 296 -