Volume 18, Number 2
March 2001


Safe Harbor Provisions of DMCA Denied in Napster Copyright Infringement Case

By David P. Miranda

The recent lawsuit A&M Records, Inc. v. Napster, Inc., commenced by members of the recording industry against Napster, Inc., raises the issue of the applicability of the safe harbor provisions of the Digital Millennium Copyright Act (DMCA) to Internet websites that provide the means to download music online.

Napster, a California Internet start-up, makes its proprietary MusicShare software freely available for Internet users to download. Users can share the MP3 music files with others using the Napster system. MP3 files reproduce CD-quality sound in a compressed format and are available on a variety of websites free of charge. MusicShare software interacts with Napster’s server-side software when the user logs on, automatically connecting to one of 150 servers that Napster operates.

If a Napster user wants to locate a song, its name or the name of the recording artist is entered on the search page of the MusicShare program, and the user clicks the "Find It" button. The Napster software searches the directory and generates a list of files responsive to the search request. To download a desired file, the user highlights it on the list and clicks the "Get Selected Song" button. The Napster server communicates with the requesting user’s and host user’s MusicShare browser software to facilitate a connection between the two users and initiate the downloading of the file without any further action on either user’s part. The MP3 file is actually transmitted over the Internet, but the steps necessary to make that connection could not take place without the Napster server.

Plaintiff record companies filed suit alleging contributory and vicarious federal copyright infringement and related state law violations against defendant Napster, Inc. Napster sought refuge from the copyright infringement claim under the safe harbor provisions of the DMCA. Napster argued that it is a "service provider" for the purposes of section 512(a) of the DMCA. This subsection limits liability of online service and Internet access providers "for infringement of copyright" if the following five conditions are satisfied:

1. The transmission of the material was initiated by or at the direction of a person other than the service provider.

2. The transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the service provider.

3. The service provider does not select the recipients of the material except as an automatic response to the request of another person.

4. No copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than the anticipated recipients, and no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission, routing, or provision of connections.

5. The material is transmitted through the system or network without modification of its content.

In denying Napster’s motion for summary adjudication regarding the applicability of the DMCA, the court found that Napster did not provide connections "through" its system as required in subparagraph 5. Although the Napster server conveys address information to establish a connection between the requesting and host users, the connection itself occurs through the Internet. The court noted that Congress intended the section 512(a) safe harbor to apply only to activities "in which a service provider plays the role of a ‘conduit’ for the communications of others." The court could not say that Napster served as a conduit for the connection itself since Napster does not transmit, route, or provide connections through its system so as to qualify for the 512(a) safe harbor. Under the court’s literal interpretation of the DMCA, if Napster were doing more to facilitate the transfer of music files by providing connections through its own system rather than users’ and hosts’ systems, the safe harbor provision might apply.

The court went on to find that even if it had determined that Napster met the criteria outlined in subsection 512(a), Napster may have failed to satisfy subsection 512(i), which requires that any service provider claiming DMCA safe harbor must establish that it has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers; and that it accommodates and does not interfere with standard technical measures.

The court noted that Napster did not adopt a written policy, with proper notice to its users, until two months after the filing of the lawsuit. The fact that Napster developed and notified its users of a formal policy after the onset of this action would not moot plaintiffs’ claim to monetary relief for past harms. The court held that Napster’s argument that it had satisfied subsection 512(i) was merely conclusory and did not support summary adjudication in its favor.

The court also found that Napster failed to show that it reasonably implemented a policy for terminating repeat infringers. In the court’s words, "[i]f Napster is formally notified of infringing activity, it blocks the infringer’s password so she cannot log on to the Napster service using that password. Napster does not block the IP addresses of infringing users...."

The court’s finding that Napster failed to fully comply with the DMCA’s notice requirements is particularly instructive to online services that seek to raise a DMCA defense. Because the Act is relatively new, many are not familiar with the procedure to be followed in order to invoke the defense. The Napster case serves as a reminder to online services to review and update their policies and procedures so that the DMCA’s defenses can be invoked if a copyright infringement claim is brought against them.

David P. Miranda (dpm@hriplaw.com) is of counsel to Heslin & Rothenberg P.C., an intellectual property law firm in Albany, New York. He is chair of the Intellectual Property Law Section’s Subcommittee on Trademarks and Metatags on the Internet.

- This article is an abridged and edited version of one that originally appeared on page 30 of IPL Newsletter, Summer 2000 (18:4).

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