THE NINTH CIRCUIT’S NAPSTER DECISION: Judicial Opinions Versus Unstoppable Technologies

The Ninth Circuit’s opinion in the Napster appeal upholds the preliminary injunction issued last year by a district court against Napster, the online peer-to-peer file sharing service for MP3’s (although the opinion also requires that the injunction be modified in several ways). The Napster opinion also raises the larger issue of whether a court should issue a decision that cannot be broadly enforced in other, similar cases, because the technology at issue will become prevalent whether courts like it or not.

In holding that the preliminary injunction was proper, the Ninth Circuit reasoned that at a minimum, the plaintiffs — a number of recording industry companies — had raised serious questions about whether Napster was a "vicarious" and/or "contributory" copyright infringer and thus legally responsible for its users’ copying of copyrighted music. The court also noted, in support of its holding, that the plaintiffs had made a sufficient showing that they were suffering harm from Napster-related copyright infringement.

Other, earlier decisions had allowed other unstoppable technologies (the VCR and the portable MP3 player) to survive legal challenge. But the Napster decision took a different path. As a result, it is hard to reconcile the reasoning of the Napster holding with that of these precedents.

First, consider how difficult it is to control real-world, offline copyright and trademark infringement — whether it takes the form of knockoff Kate Spade bags or pirated videotapes. Then consider that while VCRs and portable MP3 players are physical objects that can at least be confiscated and forbidden from being sold (though such remedies are often scattershot and ineffective), Napster-like software is intellectual property, which is mutable and lacks a fixed location.

Second, add to these realities the fact that unlike Napster, alternative services such as Gnutella do not even depend on a central server owned by the company; they can run on the extra processing power of individual users’ computers instead, so shutting the system down would be far more complex than simply shutting down Napster’s server, and might even be impossible. (That is one reason Gnutella-related sites confidently proclaim that Gnutella will never share Napster’s fate.)

Finally, reflect that peer-to-peer file swapping software need not be proprietary; it could become open code, owned by no one, so there would be no one (or at least no one with deep pockets) from whom to seek damages, and possibly also no one to enjoin. With a peer-to-peer file sharing "open source" system — owned by no corporate entity, and with software authored by multiple programmers who work for free — future plaintiffs will find that, unlike with Napster (and conceivably with Gnutella), there will simply be no entity or person to sue. You can’t have a lawsuit without a defendant.

What about going after individual users? That is likely to remain both a public relations disaster and a strategy that is too costly to implement. But with a decentralized peer-to-peer file swapping system - especially a non-proprietary "open source" one - going after users is likely to be the only option.

All these factors suggest that peer-to-peer file swapping is an unstoppable technology.

The Napster court did not seem fully to understand any of these technological realities. For example, consider the court’s holding that record companies’ free downloads, or samples, are proprietary — and therefore that Napster-sponsored sampling, in which a user downloads an MP3 to decide whether to buy a CD, is a commercial use. As a ground for this holding, the Ninth Circuit relied on the fact that the free downloads are "programmed to ‘time out,’ that is, to exist only for a short time on the downloader’s computer."

The problem, though, is that while music companies may intend these free downloads to be mere samples, they can end up as permanent downloads, just as Napster files can. The "time out" mechanism can be easily evaded, and any music that plays from a user’s computer can generally be transformed into a permanent copy, at least by a sophisticated user.

Moreover, Napster shows us that we can all become the equivalent of sophisticated users if the truly sophisticated users (programmers and others who are knowledgeable) provide us with a high-quality user interface to let us easily implement what they know. In this specific instance, as with the Napster decision generally, the court’s technological naiveté was all too evident.

The Napster court’s decision to uphold the injunction against Napster, even though peer-to-peer file sharing is likely an unstoppable technology, put the Napster decision into conflict with two other decisions that did allow essentially unstoppable technologies to go forward: Diamond Rio and Sony.

Bizarrely, the Napster decision failed to even recognize that it was deeply in tension with a prior Ninth Circuit opinion, in RIAA v. Diamond Multimedia Sys. (which I will call the "Diamond Rio" case). There, a Ninth Circuit panel held that use of the portable Diamond Rio MP3 player was "fair use" for copyright law purposes, because it only allows users to copy files "that already reside on a user’s hard drive."

However, files that reside on a user’s hard drive probably include (and may even be dominated by) many files downloaded from Napster and other services that allow peer-to-peer file sharing. Thus, the combination of the Napster and Diamond Rio decisions leads to the strange proposition that while a user violates copyright when he downloads a file from Napster to his own computer for his own use, he does not violate copyright when he transfers that same file to his own MP3 player for his own use.

As a matter of law, that cannot be right. The Ninth Circuit’s decision in Napster suggests that the download from Napster is a commercial use because Napster users barter files with one another — but a major reason they barter files is, of course, to ultimately download them to MP3 players and make them portable.

Either both uses, Napster downloads and Diamond Rio downloads, are personal and thus "fair use" (since the copying results in copies on a personal computer, or personal MP3 player), or both are commercial (since the copying is implicated in a system of barter). The conflict between the two decisions is irremediable.

The conflict between Napster and the Diamond Rio decision is nothing compared to the conflict between Napster and the Supreme Court’s Sony decision.

In Sony, the court held that taping TV shows, using a VCR, was fair use, and thus not illegal, on the ground that it was merely "time-shifting": allowing a viewer to tape a TV show so that he or she could watch it later. But the Court conveniently blinked another potential, illegal use of VCRs: to copy videotapes of movies, TV shows, and other copyrighted material, and barter the tapes.

Napster’s lawyers argued, similarly, that Napster was used for "space-shifting"; a user could upload songs from his or her own CD, a legal use. This time, though, the court didn’t blink at other uses; indeed, it focused on the other, illegal uses of Napster: to copy MP3 files and other copyrighted material, and barter them.

Why did one court blink illegal uses, while the other found them dispositive? No good reason at all. Then how can Sony possibly be distinguished from Napster? It can’t. Not persuasively, at any rate.

To try to differentiate the two decisions, the Ninth Circuit, in Napster, pointed out that in Sony, the majority of VCR users didn’t distribute tapes, whereas the majority of Napster users did distribute MP3s — indeed, the system is configured so that if users download, they must also share files.

But predicating a copyright-law assessment of a particular technology on the breakdown of its uses at a particular snapshot of time seems wrongheaded, especially when the decision may set forth principles that have the effect of governing the future, too. The future of Napster also was likely to include a boom in legal, permissive, free, or low-royalty uses, as individual artists (especially unknowns) became stronger and record companies weaker. (Ironically, in contrast, a boom in illegal VCR uses followed Sony.)

Indeed, the Napster Court itself held that "[t]he district court placed undue weight on the proportion of current infringing use as compared to current and future noninfringing use." Yet inexplicably, it did not remand to the district court for reconsideration on this point, as it should have done.

The truth is that Napster, like a VCR or a portable MP3 player, has a mix of uses that do not infringe copyright and uses that do. Napster was unwise enough to highlight infringing uses, and to promote its service based on those uses, but other, similar services will be smarter — and less susceptible to injunction. When that happens, the Napster court may wish it had simply accepted the inevitable, and let the technological tidal wave pass.