The court in Marobie-FL, Inc. v. National Association of Fire Equipment Distributors^649
ruled that the placement of three files containing copyrighted clip art on the Web page of the
defendant constituted a direct violation of the plaintiff’s distribution right because the files were
available for downloading by Internet users and were transmitted to Internet users upon request.
In all of the preceding four cases, it was apparent that actual downloads of complete
copies of the copyrighted material had taken place, and this fact, coupled with affirmative steps
taken by the defendants to promote the acts of downloading, seem to have led those courts to
find a violation of the distribution right. The more difficult cases of line drawing have arisen in
the peer-to-peer file sharing cases, many of which are discussed in the remainder of this
subsection and the next subsection, in which the defendant often merely makes available
copyrighted files for sharing (through a “shared file” folder used by the peer-to-peer client
software), but does not take additional affirmative steps to promote the downloading of copies of
those files. In addition, there often is not clear proof in those cases whether actual downloads
have taken place from the defendant’s particular shared file folder, and if so, to what extent –
including whether complete copies have been downloaded from the defendant’s shared file
folder or only bits and pieces of files, as is the inherent nature of the peer-to-peer protocol
mechanisms.
In its decision in Napster I, the Ninth Circuit held, without any discussion, that “Napster
users who upload files names to the search index for others to copy violate plaintiff’s distribution
rights.”^650 Although the Ninth Circuit’s opinion addressed whether Napster could be secondarily
liable for the infringing acts of its users through the system, it did not address the question of
whether Napster itself directly violated the plaintiff’s distribution rights by maintaining its search
index. That question was subsequently adjudicated by the district court in the Napster litigation,
which answered the question in the negative, as discussed in the next subsection.
In Interscope Records v. Duty,^651 the court held that the mere placement of copyrighted
works in a share folder connected to the Kazaa peer-to-peer service constituted a public
distribution of those works. The court noted that, although “distribute” is not defined in the
copyright statute, the right of distribution is synonymous with the right of publication, which is
defined to include the “offering to distribute copies or phonorecords to a group of persons for
purposes of further distribution, public performance, or public display.”^652 The court also cited
the Ninth Circuit’s decision in Napster I, which held that “Napster users who upload files names
to the search index for others to copy violate plaintiff’s distribution rights.”^653
In Warner Bros. Records, Inc. v. Payne,^654 the court ruled, on a motion to dismiss the
plaintiff’s complaint against a defendant who was making the plaintiff’s recordings available
(^649) 45 U.S.P.Q.2d 1236 (N.D. Ill. 1997).
(^650) A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1014 (9th Cir. 2001) (emphasis added).
(^651) 2006 U.S. Dist. LEXIS 20214 (D. Ariz. Apr. 14, 2006).
(^652) Id. at 7 (citing 17 U.S.C. § 101) (emphasis by the court).
(^653) Id. at 8 (quoting A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1014 (9th Cir. 2001)).
(^654) 2006 U.S. Dist. LEXIS 65765 (W.D. Tex. July 17, 2006).