Advanced Copyright Issues on the Internet - Fenwick & West LLP

Napster to keep its file transferring service disabled in these circumstances wasnot an abuse of discretion. 1319Even with this clarification of the “zero tolerance” standard, the Ninth Circuit’sallowance of that standard may pose a formidable challenge for many OSPs seeking to avoidliability for copyright infringement. It seems unlikely that any technology for identifying andblocking infringing works on a system will be completely foolproof. And how far must an OSPgo to do “everything feasible” to block noticed copyrighted works – must it constantly upgradeits technology to the most leading, perhaps unproven, technology? Where is the line on what is“feasible”?Finally, the Ninth Circuit rejected Napster’s challenge that the district court lackedauthority to modify the preliminary injunction pending appeal. The court noted that, although adistrict court cannot, while a preliminary injunction is on appeal, modify the injunction in suchmanner as to finally adjudicate substantial rights directly involved in the appeal, it can, underFederal Rule of Civil Procedure 62(c), continue supervision of compliance with the injunction.The Ninth Circuit ruled that the district court had properly exercised its power under thisRule. 1320 Accordingly, the court affirmed both the modified preliminary injunction and the shutdown order, noting that the “shut down order was a proper exercise of the district court’s powerto enforce compliance with the modified preliminary injunction.” 132118. Motions for Summary Judgment and for Discovery on Misuse Theory andOwnership Questions. While the second consolidated appeal was pending, the plaintiffs filedmotions in the district court for summary judgment of willful contributory and vicariouscopyright infringement. Napster requested, pursuant to Rule 56(f) of the Federal Rules of CivilProcedure, that the court stay any decision on the merits to allow for additional discovery on thequestions of (i) whether the plaintiffs actually owned the rights to the musical works for whichthey alleged infringement and (ii) whether the plaintiffs had misused their copyrights byattempting to control the market for the digital distribution of music. 1322With respect to the ownership issues, the plaintiffs rested on the legal rule that acopyright certificate establishes prima facie evidence of the validity of a copyright and the factsin the certificate. 1323 Napster challenged the presumption of ownership set up by the certificates,arguing that in 133 of the 144 copyright certificates submitted with the complaint, the registeredworks were incorrectly designated as “works for hire.” The plaintiffs, in turn, challenged1319 Id.1320 Id. at 1099.1321 Id.1322 In re Napster Inc. <strong>Copyright</strong> Litigation, 191 F. Supp. 2d 1087, 1093 (N.D. Cal. 2002). Napster also alleged thatthere were disputed issues of fact with respect to “plaintiffs’ ownership of the copyrighted works at issue,copying of the works, fair use, the application of Sony, the extent of Napster’s control over its system and itspolicing obligation, the extent of the Napster system’s architecture, the sufficiency of plaintiffs’ notices andNapster’s removal of those works, application of the Digital Millennium <strong>Copyright</strong> Act, copyright misuse, andwillfulness.” Id. at 1095 n.1.1323 17 U.S.C. § 410(c).- 298 -