The district court did not, as Napster argues, premise the shut down order on a
requirement that Napster must prevent infringement of all of plaintiffs’
copyrighted works, without regard to plaintiffs’ duty to provide notice. The
tolerance standard announced applies only to copyrighted works which plaintiffs
have properly noticed as required by the modified preliminary injunction. That is,
Napster must do everything feasible to block files from its system which contain
noticed copyrighted works. ... The district court determined that more could be
done to maximize the effectiveness of the new filtering mechanism. Ordering
Napster to keep its file transferring service disabled in these circumstances was
not an abuse of discretion.^1777Even with this clarification of the “zero tolerance” standard, the Ninth Circuit’s
allowance of that standard may pose a formidable challenge for many OSPs seeking to avoid
liability for copyright infringement. It seems unlikely that any technology for identifying and
blocking infringing works on a system will be completely foolproof. And how far must an OSP
go to do “everything feasible” to block noticed copyrighted works – must it constantly upgrade
its technology to the most leading, perhaps unproven, technology? Where is the line on what is
“feasible”?
Finally, the Ninth Circuit rejected Napster’s challenge that the district court lacked
authority to modify the preliminary injunction pending appeal. The court noted that, although a
district court cannot, while a preliminary injunction is on appeal, modify the injunction in such
manner as to finally adjudicate substantial rights directly involved in the appeal, it can, under
Federal Rule of Civil Procedure 62(c), continue supervision of compliance with the injunction.
The Ninth Circuit ruled that the district court had properly exercised its power under this
Rule.^1778 Accordingly, the court affirmed both the modified preliminary injunction and the shut
down order, noting that the “shut down order was a proper exercise of the district court’s power
to enforce compliance with the modified preliminary injunction.”^1779
- Motions for Summary Judgment and for Discovery on Misuse Theory and
Ownership Questions. While the second consolidated appeal was pending, the plaintiffs filed
motions in the district court for summary judgment of willful contributory and vicarious
copyright infringement. Napster requested, pursuant to Rule 56(f) of the Federal Rules of Civil
Procedure, that the court stay any decision on the merits to allow for additional discovery on the
questions of (i) whether the plaintiffs actually owned the rights to the musical works for which
they alleged infringement and (ii) whether the plaintiffs had misused their copyrights by
attempting to control the market for the digital distribution of music.^1780
(^1777) Id.
(^1778) Id. at 1099.
(^1779) Id.
(^1780) In re Napster Inc. Copyright Litigation, 191 F. Supp. 2d 1087, 1093 (N.D. Cal. 2002). Napster also alleged that
there were disputed issues of fact with respect to “plaintiffs’ ownership of the copyrighted works at issue,
copying of the works, fair use, the application of Sony, the extent of Napster’s control over its system and its
policing obligation, the extent of the Napster system’s architecture, the sufficiency of plaintiffs’ notices and