doctrine: “Napster’s primary role of facilitating the unauthorized copying and distribution of
established artists’ songs renders Sony inapplicable. ... Because plaintiffs do not ask the court to
shut down such satellite activities, the fact that these activities may be noninfringing does not
lessen plaintiffs’ likelihood of success.”^1671
In conclusion, the district court rejected applicability of the Sony doctrine on the ground
that “any potential noninfringing use of the Napster service is minimal or connected to the
infringing activity, or both. The substantial or commercially significant use of the services was,
and continues to be, the unauthorized downloading and uploading of popular music, most of
which is copyrighted.”^1672
On appeal in Napster I, the Ninth Circuit disagreed with the district court’s overall
conclusion that the Napster system was incapable of substantial noninfringing uses: “The district
court improperly confined the use analysis to current uses, ignoring the system’s capabilities. ...
Consequently, the district court placed undue weight on the proportion of current infringing uses
as compared to current and future noninfringing use.”^1673 The Ninth Circuit therefore concluded
that the Napster system was in fact capable of substantial noninfringing uses.^1674 Nevertheless,
for the reasons set forth in the next subsection, that conclusion was not sufficient to save Napster
from liability under the Sony doctrine.
- Ongoing Control by Napster Over Its Service. In addition to rejecting all of Napster’s
arguments of noninfringing uses of its system, the district court ruled that the Sony doctrine was
inapplicable to Napster for one final reason – because Napster exercised ongoing control over its
service (which was the same control that the court concluded provided a basis in part for its
finding of both contributory and vicarious liability, as analyzed below). The plaintiffs had
argued that the Sony doctrine was applicable only to the manufacture and sale of an article of
commerce, and not to a service. Although the district court appears not to have accepted this
device/service distinction per se, the district court did note that in Sony, the defendant’s
participation did not extend past the manufacturing and selling of the VCRs, and the defendant
had no ongoing participation in the use of the devices to commit infringing acts:^1675
Courts have distinguished the protection Sony offers to the manufacture and sale
of a device from scenarios in which the defendant continues to exercise control
over the device’s use. ... Given defendant’s control over the service, as opposed
to mere manufacturing or selling, the existence of a potentially unobjectionable
use like space-shifting does not defeat plaintiffs’ claims.^1676(^1671) Id. at 917. On appeal, the Ninth Circuit, with no further analysis, simply noted that the plaintiffs had not
requested that Napster’s New Artist Program be enjoined. Napster I, 239 F.3d at 1019.
(^1672) Napster, 114 F. Supp. 2d at 912.
(^1673) Napster I, 239 F.3d at 1021.
(^1674) Id.
(^1675) Napster, 114 F. Supp. 2d at 916-17.
(^1676) Id. at 917 (citations omitted).