A&M Records v. Napster

Citation

A&M Records, Inc. v. Napster, Inc., 114 F.Supp.2d 896 (N.D. Cal. 2000) (full-text), aff'd, 239 F.3d 1004, 57 U.S.P.Q.2d (BNA) 1729 (9th Cir. 2001) (full-text), on remand, 2001 WL 777005 (N.D. Cal. Mar 05, 2001), aff'd, 284 F.3d 1091, 62 U.S.P.Q.2d (BNA) 1221 (9th Cir. 2002) (full-text).

Factual Background

In this case, various record companies brought a copyright infringement action against Napster, an Internet service that facilitated the sharing of digital music files among its users. The files themselves — the infringing material — always remained on the users' computer systems and never passed through Napster’s system. However, Napster maintained a central server that indexed the contents of the network. This feature allowed users to search for particular files of interest and to initiate a peer-to-peer transfer of those files.

District Court Proceedings

The district court issued a preliminary injunction on the grounds that the plaintiffs were likely to be able to establish Napster’s liability for contributory (i.e., secondary) copyright infringement. The district court’s decision was based largely on the fact that Napster utilized a central server on which it maintained the index of files available for sharing.

Appellate Court Proceedings

On February 12, 2001, the U.S. Court of Appeals for the Ninth Circuit upheld the lower court opinion, but sent the case back to craft a new injunction against Napster that was narrower than the original injunction.

The court summarized the central features of its decision as follows:

“

The district court correctly recognized that a preliminary injunction against Napster's participation in copyright infringement is not only warranted but required. We believe, however, that the scope of the injunction needs modification in light of our opinion. Specifically, we reiterate that contributory liability may potentially be imposed only to the extent that Napster: (1) receives reasonable knowledge of specific infringing files with copyrighted musical compositions and sound recordings; (2) knows or should know that such files are available on the Napster system; and (3) fails to act to prevent viral distribution of the works. See Netcom, 907 F. Supp. at 1374-75. The mere existence of the Napster system, absent actual notice and Napster's demonstrated failure to remove the offending material, is insufficient to impose contributory liability. See Sony, 464 U.S. at 442-43. Conversely, Napster may be vicariously liable when it fails to affirmatively use its ability to patrol its system and preclude access to potentially infringing files listed in its search index. Napster has both the ability to use its search function to identify infringing musical recordings and the right to bar participation of users who engage in the transmission of infringing files. The preliminary injunction which we stayed is overbroad because it places on Napster the entire burden of ensuring that no "copying, downloading, uploading, transmitting, or distributing" of plaintiffs' works occur on the system. As stated, we place the burden on plaintiffs to provide notice to Napster of copyrighted works and files containing such works available on the Napster system before Napster has the duty to disable access to the offending content. Napster, however, also bears the burden of policing the system within the limits of the system. Here, we recognize that this is not an exact science in that the files are user named. In crafting the injunction on remand, the district court should recognize that Napster's system does not currently appear to allow Napster access to users' MP3 files.

”

Rejecting Napster’s argument that the users were making fair use of the record companies’ copyrighted material, the court emphasized that the use was commercial because the users of the network received for free what they normally would have to buy, namely, compact discs. It was not transformative, since the service added no new creative or expressive elements to the copyrighted material. Moreover, the court held that the service not only harmed the copyright owner’s existing market for the sale of musical compact discs, but also raised barriers to the copyright owner’s entry into the same market.

Subsequent District Court Proceedings

On March 5, 2001, the district court issued a revised injunction consistent with the February 12th decision by the Ninth Circuit. Under the revised injunction:

• Napster is enjoined from “engaging in, or facilitating others in, copying, downloading, uploading, transmitting, or distributing copyrighted sound recordings. . . .”

• However, “the Ninth Circuit held that the burden of ensuring that no copying, downloading, uploading, transmitting or distributing of plaintiffs’ copyrighted works occurs on the system is shared between the parties. The court ‘place[d] the burden on plaintiffs to provide notice to Napster’ and imposed on Napster the burden ‘of policing the system within the limits of the system.’

• The Record Industry Plaintiffs must “provide notice to Napster of their copyrighted sound recordings by providing for each work: (A) the title of the work; (B) the name of the featured recording artist performing the work (“artist name”); (C) the name(s) of one or more files available on the Napster system containing such work; and (D) a certification that plaintiffs own or control the rights allegedly infringed.”

• “All parties shall use reasonable measures in identifying variations of the filename(s), or of the spelling of the titles or artists’ names, of the works identified by plaintiffs. If it is reasonable to believe that a file available on the Napster system is a variation of a particular work or file identified by plaintiffs, all parties have an obligation to ascertain the actual identity (title and artist name) of the work and to take appropriate action within the context of . . . [the March 5th] . . . Order.”

• “Once Napster ‘receives reasonable knowledge’ . . . of specific infringing files containing copyrighted sound recordings,” it shall, “within three (3) business days, prevent such files from being included in the Napster index (thereby preventing access to the files corresponding to such names through the Napster system).”