Advanced Copyright Law on the Internet

11. Summary of Secondary Liability Under the Ninth Circuit’s Decision. At the end of
    its opinion in Napster I, the Ninth Circuit offered the following summary of its standard for
    contributory liability and vicarious liability:

[C]ontributory liability may potentially be imposed only to the extent that

Napster: (1) receives reasonable knowledge of specific infringing files with

copyrighted musical compositions and sound recordings; (2) knows or should

know that such files are available on the Napster system; and (3) fails to act to

prevent viral distribution of the works. The mere existence of the Napster system,

absent actual notice and Napster’s demonstrated failure to remove the offending

material, is insufficient to impose contributory liability.

Conversely, Napster may be vicariously liable when it fails to

affirmatively use its ability to patrol its system and preclude access to potentially

infringing files listed in its search index. Napster has both the ability to use its

search function to identify infringing musical recordings and the right to bar

participation of users who engage in the transmission of infringing files.^1714

This summary replicates many of the ambiguities noted earlier with respect to (i) whether
constructive knowledge is sufficient for liability (the summary first speaks of “knowledge of
specific infringing files” but then speaks of whether Napster “should know” that such files are
available on its system) and (ii) the scope of the duty to police (the summary speaks of blocking
access to “potentially” infringing files without defining when a file is “potentially” infringing,
and of preventing “viral distribution” of “works,” without saying whether, by use of the term
“works,” it meant to reference only particular files of which Napster has notice, or any files that
may contain the copyrighted “work”).

12. Other Defenses Raised by Napster Rejected by the District Court and the Ninth
    Circuit.^1715 The court also rejected a number of other miscellaneous defenses to liability that
    Napster had raised, which may be summarized briefly as follows:

(i) First Amendment. Napster argued that the requested injunction would impose
an overbroad prior restraint on its free speech rights to publish a directory of where files were
located on its users’ computers, as well as that of its users and the unsigned artists who depend
on the Napster service to gain exposure by distributing their music through Napster. The district
court rejected this argument, finding that free speech concerns “are protected by and coextensive
with the fair use doctrine.”^1716 The parties sharply disputed the extent to which infringing and
noninfringing aspects of the Napster service were separable, and whether it was therefore
practical for the court to enjoin only the infringing aspects. The district court ruled, however,

(^1714) Id. at 1027 (citations omitted).
(^1715) Napster also raised defenses under the safe harbors of the DMCA, which are discussed in Section III.C.6(b)
below.
(^1716) Napster, 114 F. Supp. 2d at 922 (citing Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 74
(2d Cir. 1999)).