Advanced Copyright Issues on the Internet - Fenwick & West LLP

Next, the court turned to Napster’s challenge that the shut down order improperlyamended the modified preliminary injunction by requiring a non-text-based filtering mechanismand a “zero tolerance” standard for compliance. The Ninth Circuit rejected each of thesechallenges. The court apparently found that the requirement of a non-text-based filteringmechanism did not violate the court’s ruling in Napster I that Napster’s duty to policy was“cabined by the system’s current architecture,” 1315 because the new filtering mechanism “stillrequires Napster to search files located on the index to locate infringing material.” 1316 Thus, thecourt appears to have viewed the “architecture” of the Napster system as index based, rather thantext based. 1317 Moreover, the Ninth Circuit noted that a district court has inherent authority tomodify a preliminary injunction in consideration of new facts. “The text-based filter proved tobe vulnerable to user-defined variations in file names. The new filtering mechanism, on theother hand, does not depend on file names and thus is not similarly susceptible to bypass. It wasa proper exercise of the district court’s supervisory authority to require use of the new filteringmechanism, which may counter Napster’s inability to fully comply with the modifiedpreliminary injunction.” 1318 This is a substantial ruling, as it appears to allow a district court torequire an OSP to adopt new technologies that may become available in order to keep infringingmaterials off its system.With respect to the “zero tolerance” challenge, the Ninth Circuit ruled that the districtcourt’s imposition of a “zero tolerance” standard was permissible because that standard did notapply to all potentially infringing works on Napster’s system, but only to those works that hadbeen noticed by the plaintiff:The district court did not, as Napster argues, premise the shut down order on arequirement that Napster must prevent infringement of all of plaintiffs’copyrighted works, without regard to plaintiffs’ duty to provide notice. Thetolerance standard announced applies only to copyrighted works which plaintiffshave properly noticed as required by the modified preliminary injunction. That is,Napster must do everything feasible to block files from its system which containnoticed copyrighted works. … The district court determined that more could bedone to maximize the effectiveness of the new filtering mechanism. Ordering1315 Napster I, 239 F.3d at 1024.1316 Napster II, 284 F.3d at 1098.1317 It appears that the Ninth Circuit did not fully understand the non-text-based filtering mechanism that the districtcourt required Napster to use. As discussed in subsection 15, that alternative filtering technology known as“fileID,” unlike the old technology, was not based primarily on textual filenames, but rather on a technicalanalysis of the digital musical content contained in a file, including acoustic waveform recognition, to generatea “fingerprint.” Napster combined the fileID technology with its textual filename search technology using theindex, but the fileID technology required a fundamentally different approach to identifying potentiallyinfringing works. However, the fact that Napster continued to maintain an index appears to have led the NinthCircuit to conclude rather facilely that requiring the use of fileID technology did not constitute a departure fromthe original Napster system “architecture,” when in fact it required a radically different approach.1318 Id. at 1098.- 297 -