Advanced Copyright Issues on the Internet - Fenwick & West LLP

eferences to “reasonable” knowledge and “should have known” of the availability of infringingfiles again suggested a constructive knowledge standard. 1542Nevertheless, the Ninth Circuit went on to formulate guidelines for the narrowing of theinjunction. First, the Ninth Circuit placed the burden on the plaintiffs to provide notice toNapster of copyrighted works and files containing such works available on the Napster system.Second, after plaintiffs provided notice, Napster had the duty to disable access to the offendingcontent, as well as the additional burden of policing the system within the limits of the system(i.e., searching the system for similarly named files). Judge Patel found this section of the NinthCircuit’s opinion to demonstrate the inconsistency in its reasoning. Despite finding that Napsterhad constructive knowledge based on facts unrelated to specific infringing files, the NinthCircuit nonetheless in effect limited Napster’s liability to those files of which Napster had actualknowledge. 1543Judge Patel then summarized her conclusions from the Napster I case as follows:Whether or not it is supported by clear reasoning, the Ninth Circuit explicitlystated that Napster must have “reasonable knowledge” of specific infringingworks before it could be found liable. Plaintiffs attempt to avoid theconsequences of the Ninth Circuit’s holding by arguing that the rules used incrafting an injunction are distinct from those used in determining damages. TheNinth Circuit, however, expressly limited Napster’s “liability,” (i.e., the extent ofits infringing conduct), according to the “reasonable knowledge” standard beforeembarking on a discussion of how the injunction should be modified. Althoughthe actual proposed mechanics of the injunction – notice followed by a duty toremove the files – may be narrower than the outer limits of Napster’s liability,there is no doubt that Napster I significantly reduced the scope of Napster’sexposure. 1544Judge Patel then turned to a discussion of her ruling in the Fonovisa decision, in whichNapster, moving to dismiss Fonovisa’s complaint, had argued that Napster I added a “notice”requirement for claims of secondary copyright infringement by on-line systems. Judge Patelrejected Napster’s arguments in her 2004 decision in Fonovisa, finding that although Napster Iset fairly narrow limits on Napster’s liability, it studiously avoided any clear reshaping of thedoctrine of contributory infringement. 1545Judge Patel then observed that her Fonovisa opinion had set forth four points relevant toHummer Winblad’s and Bertelsmann’s instant motions for summary judgment. First, liability isnot necessarily coextensive with injunctive relief or damages, and the required mental state forNapster’s liability remained “reasonable knowledge.” Second, the conduct identified by the1542 Id. at *19-20.1543 Id. at *20-22.1544 Id. at *22-23.1545 Id. at *24.- 339 -