would potentially authorize massive blocking of noninfringing works. Napster also argued that
the Mar. 5 order impermissibly delegated judicial functions to Dr. Nichols.^1764
With respect to the July 11 oral order, Napster argued that the district court lacked
jurisdiction to issue the order because it constituted a modification of the Mar. 5 order, which
was on appeal. Napster noted that the Ninth Circuit, in its stay order, had itself characterized the
July 11 order as “modifying” the Mar. 5 order.^1765 Napster also argued that, in any event, the
July 11 order’s “zero tolerance” standard was fundamentally at odds with the Ninth Circuit
ruling in Napster I.^1766 The plaintiffs, in turn, challenged the requirements of the preliminary
injunctions that they provide to Napster file names found on the Napster index that corresponded
to their copyrighted works before Napster had a duty to act on those files.
On appeal, the Ninth Circuit rejected most of the arguments of both Napster and the
plaintiffs in a very sparse opinion that will be referred to as “Napster II.”^1767 With respect to the
plaintiffs’ argument that it should not have to supply file names to Napster and that Napster
should instead be required to search for and block all files containing any protected copyrighted
works, not just works with which plaintiffs had been able to provide a corresponding file name,
the Ninth Circuit ruled that the notice requirements of the preliminary injunctions complied with
its holding in Napster I that the plaintiffs bore the burden to provide notice to Napster of
copyrighted works and files containing such works before Napster had a duty to disable access to
the offending content.^1768 The court further held that “Napster’s duty to search under the
modified preliminary injunction is consistent with our holding that Napster must ‘affirmatively
use its ability to patrol its system and preclude access to potentially infringing files listed on its
search index.’ The modified preliminary injunction correctly reflects the legal principles of
contributory and vicarious copyright infringement that we previously articulated.”^1769 Thus, the
Ninth Circuit’s Napster II opinion appears to establish a legal rule under which there is a notice
requirement both for the imposition of common law contributory liability and vicarious liability
on an OSP, contrary to the district court’s conclusion otherwise in its opinion on Napster’s
motion to dismiss, discussed in subsection 17 above.^1770
The Ninth Circuit rejected Napster’s challenge to the preliminary injunction as
impermissibly vague. The court’s very terse response was as follows: “Napster has a duty to
police its system in order to avoid vicarious infringement. Napster can police the system by
searching its index for files containing a noticed copyrighted work. The modified preliminary
(^1764) “Napster Asks 9th Circuit to Modify 1 Order, Vacate Another,” Mealey’s Cyber Tech & E-Commerce Litigation
Reporter (Aug. 2001) 5-6.
(^1765) Id. at 6.
(^1766) Id.
(^1767) A&M Records, Inc. v. Napster, Inc., 284 F.3d 1091 (9th Cir. 2002).
(^1768) Id. at 1096.
(^1769) Id. at 1096-97 (quoting Napster I, 239 F.3d at 1027).
(^1770) This rule would not, however, appear to survive the Supreme Court’s decision in Metro-Goldwyn-Mayer
Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 919 (2005), discussed in Section III.C.4(a) below.