to filter those works. The court noted that in the Napster case the Ninth Circuit had imposed
notice obligations on the plaintiffs before Napster had a duty to disable access to the offending
content on its system.^1985 The court reflected that, although Sony’s knowledge prong is
completely irrelevant to whether one can be held liable as a vicarious infringer, the Ninth Circuit
had nevertheless, by imposing a notice requirement on the plaintiffs, essentially allowed Sony
notice concerns “to creep back into the vicarious infringement analysis for purposes of an
injunction.”^1986 Accordingly, although actual notice of specific infringing files and the failure to
remove them is not a prerequisite to inducement liability in the first instance, the Ninth Circuit’s
Napster ruling informed the court that, like vicarious infringement, notice should be relevant to
the injunction against StreamCast.^1987 The court ruled that StreamCast’s duty to filter any
particular copyrighted work would commence upon the plaintiffs’ provision of notice in the form
of artist-title pair, a certification of ownership, and some evidence that one or more files
containing each work was available on the Morpheus system.^1988
By order dated Nov. 29, 2007, the court appointed a special master, Andy Johnson-Laird,
to assist the court. The court ordered the special master to report on the type of filtering system
that should be used (e.g., artist and title matching, hash value digital fingerprinting, and/or
acoustical fingerprinting) for the most effectiveness at eliminating the greatest number of
infringing works while allowing the core noninfringing uses to continue, and on the most
effective way by which StreamCast could encourage current users of legacy software versions to
upgrade to a version that possessed the requisite filtering technology.^1989 “The final Report shall
include a comprehensive regimen of the actions StreamCast needs to undertake, the forms of
filtering necessary, and the methods for implementation of these tools. Such a Report is to
include any details of the filtering, such as how StreamCast can adopt keyword filters, common
misspellings, and file extensions into filtering technology.”^1990
(7) The Audiogalaxy CaseOn May 24, 2002, various record companies, music publishers and songwriters filed a
class action lawsuit against the peer-to-peer filing sharing service Audiogalaxy, alleging liability
(^1985) Id. at 118-19.
(^1986) Id. at 120.
(^1987) Id. at 121. The court amplified as follows: “One might argue that Napster’s notice requirement should not be
followed in light of the Supreme Court’s Grokster opinion. At one point, the Supreme Court stated that ‘Sony
did not displace other theories of secondary liability,’ and is confined to cases involving ‘imputed intent.’ It
could reasonably be argued, as a result, that Sony occupies a much less central position in the copyright field
than was previously understood. Since Sony cannot preclude vicarious and inducement liability, the doctrine
could now be viewed as irrelevant to injunctions aimed at preventing such violations. However, this Court will
not read this implication into the Supreme Court’s ruling, nor hold that Napster has been overruled sub silentio
on this question.” Id. at 121-22 (citations omitted).
(^1988) Id. at *123.
(^1989) Order re Appointment of Special Master, Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., CV 01-8541
SVW (C.D. Cal. Nov. 29, 2007) at pp. 5-7.
(^1990) Id. at p. 7.