Court: Napster must eliminate copyright files

By Tamara Conniff and Brooks Boliek

LOS ANGELES (The Hollywood Reporter) --- Napster received its marching orders Tuesday when a federal judge ordered it to take down all music files identified by the record labels as being protected under copyright laws.

Under the four-page order issued by U.S. District Judge Marilyn Hall Patel, the controversial file-swapping service has five days to tell the court how it is complying with the order that will effectively eliminate access to all copyrighted songs belonging to the five major label groups -- Sony Music, EMI, BMG Entertainment, Warner Music Group and Universal Music Group -- as well as the music publishers.

Once Napster "receives reasonable knowledge" either through lists of songs provided by the plaintiffs or from policing its own system, it will have three business days to remove the files from the service.

Additionally, Patel granted the request by the Recording Industry Association of America -- the trade group representing the record companies -- that the labels also be able to provide Napster with the names of prereleased songs that Napster will then be forced to block before a user has the opportunity to upload them.

Patel's injunction is effective immediately.

"It's the opportunity for Napster to become legitimate," RIAA lead attorney Russell Frackman said. "I think overall it sends the message that the burden is on the people who use copyrighted material to get authorization or else the court may enjoin you."

The conditions as outlined by Patel will not be easy to meet. The judge said in her ruling that Napster and the labels will essentially share the burden of identifying infringing works and file names. Both also face the daunting task of identifying millions of file-name variations as users continue to upload songs under new names. For example, Bing Crosby's "White Christmas" could be listed as "Bing White," "Christmas Crosby," etc.

Given that the technology needed to accomplish the judge's requirements is spotty at best, Patel said in her ruling that any disputes relating to Napster's ability to meet the terms of the injunction can be set for a hearing before the court. "However, such disputes will not be operated to stay this injunction or afford relief from it," she said.

Additionally, Patel reserved the right to appoint an independent third party to serve as a technical expert to determine what is and isn't technologically possible on the Napster system.

"People have grown used to technology and think it's simply flipping a switch; it's not," Napster vp policy and business development Manus Cooney said Tuesday at the Consumer Electronics Assn.'s conference on copyright issues in Washington.

RIAA senior executive vp and general counsel Cary Sherman said: "There are a lot of common variations, so one can immediately program those in. To the extent that new variations arise, it will become obvious pretty quickly. It just means not everything will be eliminated with the first blockage. It could take a second or a third cut, but ultimately, things will come off the system. We think they will come off pretty quickly."

The order largely follows the proposed injunction Napster submitted to the court this month. Patel agreed with Napster lead attorney David Boies' argument that the labels must provide the title of the work, the name of the artist, the name of one or more music files and a certification that the recorded label "owns or control the rights" to a song.

Napster should expect to receive a full accounting from the recording industry, RIAA CEO Hilary Rosen said during the CES conference. "We're going to make sure they receive a full catalog of our members' works," she said.

Sherman said discussions are ongoing as to whether the record labels or the RIAA will be responsible for collecting the song lists and file names to be presented to Napster.

While Rosen and other copyright industry officials admitted that it will be impossible to shut down Internet piracy completely, she said the Napster case is likely to function as a model for the industry. "This is very much a test case," Rosen said. "But no one's arguing that legal solutions are the be-all and end-all of copyright protection."

Napster CEO Hank Barry is still pushing for an out-of-court settlement. Napster and its strategic partner German media company Bertelsmann AG offered the labels $1 billion over five years to settle the case and license their catalogs to the service (HR 3/21/00).

"We will continue to press our case in court and seek a mediated resolution even as we work to implement the court's order," Barry said. "We will continue to seek a settlement with the record companies and to prepare our new membership-based service that will make payments to artists, songwriters and other rights holders."

Napster began to filter out copyrighted music files Sunday night, following through on a pledge made two days earlier in a hearing before Patel to block about 1 million music files, beginning with songs by Metallica and Dr. Dre, two artists who brought suit against Napster last year (HR 3/5/00).

As of late Tuesday, Napster's filter was effective primarily on single-word artists with single-word song titles (HR 3/6). A Napster search produced no results for such songs as Metallica's "Unforgiven" or the Beatles' "Yesterday," for example.

The new Napster technology works on two levels: The first filter screens file names that correspond directly to an artist and song title like Metallica and "Fade to Black." The second filter searches and blocks specific file-name variations like "Fade 2 Black." Boies said at Friday's hearing that he feared an overload of filters could bog down the system.

Officials at Sony Music, UMG, WMG and EMI applauded the court's decision. BMG declined comment.

"We intend to move rapidly to ensure that our copyrighted works are removed from the Napster system and that the interests of our artists are protected," UMG said. "This is an important decision which will ultimately benefit consumers by laying the groundwork for a legitimate online music market."The National Music Publishers Assn. said in a statement, "America's songwriters and music publishers applaud Judge Patel's order today that takes another positive step toward bringing Napster into compliance with long-established copyright law."

The RIAA and the NMPA on behalf of their members sued Napster for contributory copyright infringement in December 1999. During the summer, Patel ordered Napster to stop allowing the swapping of copyrighted music. She was asked by an appeals court to rewrite the order in a way that allows Napster to survive while also prohibiting the trading of copyrighted music.

"We think the decision is wrong," Cooney said. "We think the court erred, and we're appealing the decision." Napster has asked that the entire appellate court review the ruling handed down by a three-judge panel (HR 3/13/00). The court has yet to grant Napster its request.

Many Napster users agree. About six students from Damascus High School in Washington showed up to protest the decision after reading about the CES news conference on the Georgetown University and George Washington University Web sites. A CES spokesman said the organization made the information available and told employees about the news conference but made no attempt to organize the students.

The 16- and 17-year-olds admitted that they skipped school to get their point across. Security guards, however, refused to let them inside the hotel room where the news conference occurred. "I find it funny that the recording industry fears free speech from a couple of teenagers," said Nick Stevens, a 16-year-old junior. Stevens said he and his friends saw nothing wrong with downloading music for free.

While their protests were muffled, there is an indication that the issue is making enough noise for lawmakers to take notice. Rep. Billy Tauzin, R-La., urged the recording industry and the Internet companies to reach an agreement.

"I think it's up to the industry -- and particularly the parts of the industry (most affected) -- to see if that can't somehow come to terms with Napster or organizations like it," he said.

While Tauzin pushed for a settlement, copyright industry officials said they expect legislation.

"I do expect there will be proposals circulating on the Hill to undermine copyright law," Rosen said. "They will be done under the guise of fair use, which we think is a red herring."

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