Advanced Copyright Issues on the Internet - Fenwick & West LLP

Napster’s standing to challenge the presumption of ownership. The court noted a line of casesholding that a third party does not have standing to challenge the presumption of ownershipwhen a plaintiff claims ownership by assignment, but ruled that the third-party standing doctrinedoes not apply in instances of ownership by authorship. Accordingly, Napster had standing tochallenge whether the works in suit were works for hire. 1324The court held that there were substantial questions raised by Napster on which it wasentitled to take discovery with respect to whether the plaintiffs could satisfy either of the twoprongs of the definition of “work made for hire.” 1325 With respect to the “speciallycommissioned” prong of the definition, the court noted that sound recordings are not one of thenine types of specially commissioned works listed in the definition that can qualify as worksmade for hire. With respect to the “employment” prong of the definition, the court noted that theplaintiffs had produced no contracts with artists to demonstrate an employment relationship. 1326The court ordered the plaintiffs to produce all documentation relevant to their ownership of theworks listed as works for hire to a Special Master appointed by the court to review them. Thecourt specifically withheld any rulings on the work for hire issue, the scope of the plaintiffs’rights, and the extent to which the plaintiffs were protected by the presumption of ownershipuntil further discovery was completed. 1327The court then turned to Napster’s need for discovery on its allegations of copyrightmisuse by the plaintiffs. The court first noted that, although both itself and the Ninth Circuit haddismissed Napster’s misuse defense at the preliminary injunction stage, “[s]ince those rulings,the factual and procedural landscape has changed significantly. … The evidence now shows thatplaintiffs have licensed their catalogs of works for digital distribution in what could be anoverreaching manner. The evidence also suggests that plaintiffs’ entry into the digitaldistribution market may run afoul of the antitrust laws.” 13281324 In re Napster <strong>Copyright</strong> Litigation, 191 F. Supp. 2d at 1097-98.1325 17 U.S.C. § 101 defines a “work made for hire” as “(1) a work prepared by an employee within the scope of hisor her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collectivework, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as acompilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expresslyagree in a written instrument signed by them that the work shall be considered a work made for hire. For thepurpose of the foregoing sentence, a ‘supplementary work’ is a work prepared for publication as a secondaryadjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining,revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorialillustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests,bibliographies, appendixes, and indexes, and an ‘instructional text’ is a literary, pictorial, or graphic workprepared for publication and with the purpose of use in systematic instructional activities.”1326 In re Napster <strong>Copyright</strong> Litigation, 191 F. Supp. 2d. at 1098.1327 Id. at 1100. The court further ruled that, with respect to works listing an author other than the plaintiffs on theregistration certificate and works protected under state law, the plaintiffs would be obliged to produce a chainof title from the listed author to themselves. Id. at 1101. Works with pending registrations would be given thebenefit of the presumption of ownership. Id. Finally, for those works for which the plaintiffs had not yet filedan application for registration, the court ruled that it lacked subject matter jurisdiction. Id.1328 Id. at 1102 (citations omitted).- 299 -