With respect to the ownership issues, the plaintiffs rested on the legal rule that a
copyright certificate establishes prima facie evidence of the validity of a copyright and the facts
in the certificate.^1781 Napster challenged the presumption of ownership set up by the certificates,
arguing that in 133 of the 144 copyright certificates submitted with the complaint, the registered
works were incorrectly designated as “works for hire.” The plaintiffs, in turn, challenged
Napster’s standing to challenge the presumption of ownership. The court noted a line of cases
holding that a third party does not have standing to challenge the presumption of ownership
when a plaintiff claims ownership by assignment, but ruled that the third-party standing doctrine
does not apply in instances of ownership by authorship. Accordingly, Napster had standing to
challenge whether the works in suit were works for hire.^1782
The court held that there were substantial questions raised by Napster on which it was
entitled to take discovery with respect to whether the plaintiffs could satisfy either of the two
prongs of the definition of “work made for hire.”^1783 With respect to the “specially
commissioned” prong of the definition, the court noted that sound recordings are not one of the
nine types of specially commissioned works listed in the definition that can qualify as works
made for hire. With respect to the “employment” prong of the definition, the court noted that the
plaintiffs had produced no contracts with artists to demonstrate an employment relationship.^1784
The court ordered the plaintiffs to produce all documentation relevant to their ownership of the
works listed as works for hire to a Special Master appointed by the court to review them. The
court specifically withheld any rulings on the work for hire issue, the scope of the plaintiffs’
rights, and the extent to which the plaintiffs were protected by the presumption of ownership
until further discovery was completed.^1785
Napster’s removal of those works, application of the Digital Millennium Copyright Act, copyright misuse, and
willfulness.” Id. at 1095 n.1.(^1781) 17 U.S.C. § 410(c).
(^1782) In re Napster Copyright Litigation, 191 F. Supp. 2d at 1097-98.
(^1783) 17 U.S.C. § 101 defines a “work made for hire” as “(1) a work prepared by an employee within the scope of his
or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective
work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a
compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly
agree in a written instrument signed by them that the work shall be considered a work made for hire. For the
purpose of the foregoing sentence, a ‘supplementary work’ is a work prepared for publication as a secondary
adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising,
commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial
illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests,
bibliographies, appendixes, and indexes, and an ‘instructional text’ is a literary, pictorial, or graphic work
prepared for publication and with the purpose of use in systematic instructional activities.”
(^1784) In re Napster Copyright Litigation, 191 F. Supp. 2d. at 1098.
(^1785) Id. at 1100. The court further ruled that, with respect to works listing an author other than the plaintiffs on the
registration certificate and works protected under state law, the plaintiffs would be obliged to produce a chain of
title from the listed author to themselves. Id. at 1101. Works with pending registrations would be given the
benefit of the presumption of ownership. Id. Finally, for those works for which the plaintiffs had not yet filed
an application for registration, the court ruled that it lacked subject matter jurisdiction. Id.