Advanced Copyright Issues on the Internet - Fenwick & West LLP

factor, as the injunction will be designed primarily to protect Plaintiffs’ copyrights. The merefact that an adjudicated infringer may have to expend substantial resources to prevent theconsummation of further induced infringements is not a central concern.” 1526Lastly, the court turned to the issue of whether, and to what extent, the injunction shouldrequire notice from the plaintiffs of their copyrighted works in order to trigger StreamCast’s dutyto filter those works. The court noted that in the Napster case the Ninth Circuit had imposednotice obligations on the plaintiffs before Napster had a duty to disable access to the offendingcontent on its system. 1527 The court reflected that, although Sony’s knowledge prong iscompletely irrelevant to whether one can be held liable as a vicarious infringer, the Ninth Circuithad nevertheless, by imposing a notice requirement on the plaintiffs, essentially allowed Sonynotice concerns “to creep back into the vicarious infringement analysis for purposes of aninjunction.” 1528 Accordingly, although actual notice of specific infringing files and the failure toremove them is not a prerequisite to inducement liability in the first instance, the Ninth Circuit’sNapster ruling informed the court that, like vicarious infringement, notice should be relevant tothe injunction against StreamCast. 1529 The court ruled that StreamCast’s duty to filter anyparticular copyrighted work would commence upon the plaintiffs’ provision of notice in the formof artist-title pair, a certification of ownership, and some evidence that one or more filescontaining each work was available on the Morpheus system. 1530By order dated Nov. 29, 2007, the court appointed a special master, Andy Johnson-Laird,to assist the court. The court ordered the special master to report on the type of filtering systemthat should be used (e.g., artist and title matching, hash value digital fingerprinting, and/oracoustical fingerprinting) for the most effectiveness at eliminating the greatest number ofinfringing works while allowing the core noninfringing uses to continue, and on the mosteffective way by which StreamCast could encourage current users of legacy software versions toupgrade to a version that possessed the requisite filtering technology. 1531 “The final Report shallinclude a comprehensive regimen of the actions StreamCast needs to undertake, the forms offiltering necessary, and the methods for implementation of these tools. Such a Report is to1526 Id. at *117.1527 Id. at *118-19.1528 Id. at *120.1529 Id. at *121. The court amplified as follows: “One might argue that Napster’s notice requirement should not befollowed in light of the Supreme Court’s Grokster opinion. At one point, the Supreme Court stated that ‘Sonydid not displace other theories of secondary liability,’ and is confined to cases involving ‘imputed intent.’ Itcould reasonably be argued, as a result, that Sony occupies a much less central position in the copyright fieldthan was previously understood. Since Sony cannot preclude vicarious and inducement liability, the doctrinecould now be viewed as irrelevant to injunctions aimed at preventing such violations. However, this Court willnot read this implication into the Supreme Court’s ruling, nor hold that Napster has been overruled sub silentioon this question.” Id. at *121-22 (citations omitted).1530 Id. at *123.1531 Order re Appointment of Special Master, Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., CV 01-8541SVW (C.D. Cal. Nov. 29, 2007) at pp. 5-7.- 336 -