Third, the Ninth Circuit did not specifically define what constitutes a “detectable” act of
infringement, and the scope of the duty to police for such acts is therefore unclear under its
opinion. The Ninth Circuit noted, however, that the district court’s original injunction (discussed
in detail in subsection 13 below) had gone too far in what it required Napster to do. The district
court’s original injunction ruled that “Napster bears the burden of developing a means to comply
with the injunction,” which would have required Napster to develop new blocking technology
that did not exist in its system. The preliminary injunction further required that Napster “must
insure that no work owned by plaintiffs which neither defendant nor Napster users have
permission to use or distribute is uploaded or downloaded on Napster.”
The Ninth Circuit ruled in Napster I that this preliminary injunction went too far in the
burden it placed on Napster to police. Analogizing to the Fonovisa case, which imposed
secondary liability on the operator of the swap meet because the operator had the right and
ability to police the premises of the swap meet, the Ninth Circuit ruled that the district court
“failed to recognize that the boundaries of the premises that Napster ‘controls and patrols’ are
limited. ... Put differently, Napster’s reserved ‘right and ability’ to police is cabined by the
system’s current architecture. As shown by the record, the Napster system does not ‘read’ the
content of indexed files, other than to check that they are in the proper MP3 format.”^1712 The
Ninth Circuit went on to rule that Napster’s duty to police must be limited by the existing
architecture of its system:
Napster, however, has the ability to locate infringing material listed on its search
indices, and the right to terminate users’ access to the system. The file name
indices, therefore, are within the “premises” that Napster has the ability to police.
We recognize that the files are user-named and may not match copyrighted
material exactly (for example, the artist or song could be spelled wrong). For
Napster to function effectively, however, file names must reasonably or roughly
correspond to the material contained in the files, otherwise no user could ever
locate any desired music. As a practical matter, Napster, its users and the record
company plaintiffs have equal access to infringing material by employing
Napster’s “search function.”^1713This passage suggests that Napster’s obligations to police its system for infringing files
was to be limited to monitoring the names of files made available for sharing by Napster users
using the existing search function of the Napster system, which the Ninth Circuit noted was
equally available to both the plaintiffs and Napster for policing for infringing files. Unlike the
district court’s original preliminary injunction, then, the Ninth Circuit in Napster I did not
contemplate that Napster would be required to develop new technology for policing not based on
file name searches (such as digital “fingerprinting” of the content of files or other techniques).
(^1712) Id. at 1023-24.
(^1713) Id. at 1024.