Charles S. Baker (pro hac vice)
Lance T. Lackey (pro hac vice)
BROBECK, PHLEGER & HARRISON LLP
4801 Plaza on the Lake
Austin, TX 78746
Telephone:  (512) 330-4000
Facsimile:  (512) 330-4001

Debra E. Pole (SBN 97816)
Sarah J. Barney (SBN 183910)
BROBECK, PHLEGER & HARRISON LLP
550 South Hope Street
Los Angeles, CA  90071
Telephone:  (213) 489-4060
Facsimile:  (213)  745-3345

John M. Benassi (SBN 74137)
Colbern C. Stuart, III (SBN 177897)
Matthew C. Lapple (SBN 193546)
BROBECK, PHLEGER & HARRISON LLP
12390 El Camino Real
San Diego, CA 92130
Telephone:  (858) 720-2500
Facsimile:  (858)  720-2555

Cindy A. Cohn (SBN 145997)
Fred Von Lohmann (SBN 192657)
Robin D. Gross (SBN 200701)
ELECTRONIC FRONTIER
FOUNDATION
454 Shotwell Street
San Francisco, CA 94110
Telephone:  (415) 436-9333
Facsimile:  (415) 436-9993

Joseph R. Taylor (SBN 129933)
Jeffrey K. Compton (SBN 142969)
Max J. Sprecher (SBN 169285)
LINER YANKELEVITZ
  SUNSHINE & REGENSTREIF
3130 Wilshire Boulevard, Suite 200
Santa Monica, CA 90403
Telephone:  (310) 453-5900
Facsimile:  (310) 453-5901

Attorneys for Defendants
MusicCity.com, Inc. (now known as StreamCast Networks, Inc.)
and MusicCity Networks, Inc.

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

METRO-GOLDWYN-MAYER
STUDIOS INC., et al.,

	Plaintiffs,

	v.

GROKSTER, LTD., et al.,

	Defendants.

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	Case No. CV 01-09923 SVW (PJWx)
(Consolidated with CV 01-08541 SVW (PJWx))

MEMORANDUM OF POINTS AND AUTHORITIES OF DEFENDANTS MUSICCITY.COM, INC. (NOW KNOWN AS STREAMCAST NETWORKS, INC.) AND MUSICCITY NETWORKS, INC. IN SUPPORT OF MOTION FOR PARTIAL
	
JERRY LEIBER, et al.,

	Plaintiffs,

	v.

CONSUMER EMPOWERMENT BV a/k/a FASTTRACK, et al.,

			Defendants.

					

AND COUNTERCLAIMS.

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)	SUMMARY JUDGMENT REGARDING CONTRIBUTORY INFRINGEMENT; DECLARATIONS OF DARRELL SMITH, STEVEN GRIBBLE, JANIS IAN, GREGORY NEWBY, SEAN L. MAYERS, BREWSTER KAHLE, RICHARD PRELINGER, PATRICIA HOEKMAN, COLBERN STUART, ARAM SINNREICH, CHARLES BAKER AND JOHN BUSHER
_____________________________

[Notice of Motion and Motion, Statement of Uncontroverted Facts and Conclusions of Law, and Compendium of Declarations and Exhibits filed concurrently herewith]

Date:	December 2, 2002
Time:	1:30 p.m.
Ctrm:	6 (Spring Street)
	Hon. Stephen V. Wilson

MEMORANDUM OF POINTS AND AUTHORITIES
The StreamCast Defendants (hereafter “StreamCast”) ask that the Court enter partial summary judgment against all Plaintiffs’ claims of contributory copyright infringement arising from the use by members of the public of the Gnutella-based version of the Morpheus software program (Morpheus Preview, 1.9 and 2.0) that StreamCast has been distributing since March 2002.  This motion is filed in conjunction with Defendants’ Motion for Partial Summary Judgment Regarding Vicarious Infringement (hereinafter the “Vicarious Motion”).  As the facts relating to both motions overlap substantially, this motion references and incorporates the statement of facts of the Vicarious Motion.
I.	  INTRODUCTION AND SUMMARY OF ARGUMENT
This case raises a question of critical importance at the border between copyright and innovation: when should the distributor of a multi-purpose tool be held liable for the infringements that may be committed by end-users of the tool? Unsatisfied with the absence of an express answer to this question in the Copyright Act, Plaintiffs here ask this Court to fashion a radical new form of technology regulation from the judicially-created doctrine of contributory copyright infringement. Such a transmogrification of the contributory infringement doctrine, however, is foreclosed by Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S. Ct. 774, 78 L. Ed. 2d 574 (1984) (hereafter “Sony-Betamax”), the landmark Supreme Court decision that was followed and reinforced by the Ninth Circuit last year in A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (hereafter “Napster”).  That path is foreclosed for good reason: technological innovation depends upon bright line rules defining when the misuse of a new technology by consumers could expose its creator to liability.
In Sony-Betamax, the Supreme Court was required to balance the benefits of technological innovation with the risks of copyright infringement made possible by new technology.  The Court established the rule on which innovators of all stripes have come to depend that manufacturers and distributors of mass-market technology for a variety of uses (“staple articles of commerce”) may not be subjected to liability for distribution of the products to the general public so long as their products are “merely capable of substantial noninfringing uses.”  Sony-Betamax, 464 U.S. at 442. The rule applies even if the technology is and may be expected to be used by the public for infringing uses.  As the Supreme Court stated:  
[T]he sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes.  Indeed, it need merely be capable of substantial noninfringing uses. [¶] The question is thus whether the Betamax is capable of commercially significant noninfringing uses.
Id. (emphasis added).  Holding that the Betamax video tape recorder was capable of at least two noninfringing uses, taping programs authorized for recording by the copyright owners, and fair use “time shifting” of programs, the Supreme Court upheld a decision in favor of the manufacturer. See Id.  This decision has since been applied to protect a copying technology that only had a single noninfringing use. See Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255 (5th Cir. 1988).
In Napster, the Ninth Circuit considered a defendant sued for conducting and operating a central file indexing service that facilitated through its computers (servers) the sharing of commercial musical recordings.  In vacating and remanding the district court’s injunction, the court of appeals emphasized a “clear distinction between the architecture of the Napster system and Napster’s conduct in relation to the operational capacity of the system.” Napster, 239 F.3d at 1020 (emphasis added).  It continued, “To enjoin simply because a computer network allows for infringing use would, in our opinion, violate Sony and potentially restrict activity unrelated to the infringing use.” Id. at 1021.
In this case, StreamCast’s product is exactly the kind of technology that is protected under the Sony-Betamax, Vault and Napster decisions.  Like the Betamax, the Morpheus software program has many uses.  The Morpheus software program allows users to search for, obtain, and disseminate a wide variety of digital content:  software, video, audio, graphics, and documents.  Many actual uses of the program are substantial and noninfringing; the potential uses and capabilities are vast and still unfolding.  Like Sony, at the time it delivers its product, StreamCast has no particular knowledge, at the time it delivers its product, whether the product will be used by a specific consumer for infringing or noninfringing uses.  Like Sony, StreamCast lacks the power to control or stop infringing uses once the product is delivered to a user.  Unlike Napster, StreamCast does not operate a centralized service that participates in or can prevent infringing uses of the software product, and it has no ability take effective action against a particular user based on after-acquired knowledge that the user has allegedly used the product for unlawful purposes.
Plaintiffs’ claims are also barred because they cannot point to evidence sufficient to satisfy the standards imposed by Napster: that StreamCast has “actual” knowledge that specific infringing material is available on its system, that it could block access to its system by suppliers of the infringing material, and that it failed to remove the material. Id. at 1022.  There is simply no Morpheus “system” of users for StreamCast to control; Morpheus users are part of the Gnutella network, an open, public network comprised of individually owned and controlled computers spanning the globe.  As such StreamCast does not own or control a “system” on which “specific infringing material” is available.  Moreover, even if these “notices” could satisfy the specificity requirements laid out in Napster, they arrive at a time when StreamCast has no ability to act on them.  As a consequence, under Sony-Betamax and Napster, StreamCast cannot be liable for contributory copyright infringement based on distribution of the Morpheus software program to the general public.
II.	  FACTUAL BACKGROUND
A.	The Morpheus Software
For the sake of brevity, StreamCast incorporates herein Section II A. of its Memorandum of Points and Authorities in Support of its Motion for Partial Summary Judgment Regarding Vicarious Infringement for a detailed description of the Morpheus software product. 
B.	The Morpheus Software Program’s Undisputed Capability for Substantial Noninfringing Uses
As explained further below, the Supreme Court in Sony-Betamax made it clear that the mere capability of substantial noninfringing uses is all that is required to protect a new technology from an attack grounded on allegations of contributory copyright infringement. Accord Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255 (5th Cir. 1988).  As the examples below demonstrate, it is beyond dispute that the Morpheus software program is capable of significant noninfringing uses.
1.	Works Authorized for Redistribution
a)	Media Content
Some entertainment rights holders are pleased to have their works attain wide distribution through peer-to-peer software networks.  Janis Ian, a songwriter and performer with nine Grammy nominations to her name, welcomes distribution of her works on peer-to-peer networks.  She anticipates that peer-to-peer networks and direct file sharing software programs like Morpheus will provide enormous benefit to musicians and authors and will broaden and improve distribution and promotional opportunities for them. Declaration of Jan Ian (“Ian Decl.”) at ¶¶ 11-13.  She also credits distribution of her works on peer-to-peer networks with an increase in her visibility and income as an artist. Ian Decl. at ¶¶ 8-10. 
Aram Sinnreich, an expert in media and entertainment industries, has noted that a number of high-profile artists (and countless lesser-known musicians) have found positive business benefits in file sharing.  Aram Sinnreich Decl. at ¶¶ 8-20.  Mr. Sinnreich also describes the overall positive aspects of file trading using P2P for companies sharing copyrighted material, such as music sharing networks and other commercial platforms. Sinnreich Decl. at ¶¶ 21-34.
A number of performers, including Phish, Pearl Jam, the Dave Matthews Band and John Mayer, have specifically authorized the making and sharing of live concert recordings among their fans.  Declaration of Patricia Hoekman (hereinafter “Hoekman Decl.”). at ¶ 7.  These authorized live recordings can easily be found on the Gnutella network. Hoekman Decl. at ¶ 6.
The Morpheus software program also provides a technology for wide and economical distribution of authorized media content.  Distributors such as J!VE Media and its media partners (including record labels affiliated with some of the Plaintiffs in this case) have already been using peer-to-peer networks, including the Gnutella network used by Morpheus, to distribute their works.  See Hoekman Decl. at ¶ 5. P2P networks provide content owners with distinct business advantages over alternate online distribution technologies.  By using peer-to-peer file-sharing networks, content owners are able to rely almost entirely on users to provide the most costly computing resources involved in digital distribution such as hard disk storage and “bandwidth.” Declaration of Sean Mayers (“Mayers Decl.”) at ¶¶ 8, 11.  J!VE Media represents a variety of content owners and distributes their content using digital rights management technology. Mayers Decl. at ¶¶ 5-7, 14-17; see also Declaration of Aram Sinnreich (“Sinnreich Decl.”) at ¶¶ 35-40 (describing experimentation by content owners with distribution via P2P networks).
All indications are that this form of distribution will continue to gain in popularity as peer-to-peer and digital rights management technologies develop. Already, a number of entertainment companies both large and small (including affiliates of the Plaintiffs) have begun experimenting in this area. Sinnreich Decl. at ¶ 21-24. 
b)	Permitted Distribution of Computer Software
Another significant noninfringing use of the Morpheus software program is the authorized distribution of computer software.  Many software developers grant express, blanket authorizations for redistribution of their software.  This is true for several categories of software developers: (1) developers of “freeware” who are happy for their works to have wide distribution; (2) developers of “ad-ware” software products, where advertising is embedded in entertaining content intended for widespread distribution; and (3) developers of software that rely upon distribution of “evaluation,” “shareware” or “demo” versions that is distributed for free on a trial basis to stimulate sales of full-featured software. See Sinnreich Decl. at ¶ 33, 34.
One example is Acoustica, a small software company that promotes its software through the distribution of free “trialware” over P2P networks (including the Gnutella network). See Declaration of John Busher (“Busher Decl.”) at ¶¶ 1-6.  Their use of P2P networks has not only increased Acoustica’s sales but has also decreased their bandwidth costs and reduced software piracy. Busher Decl. at ¶¶ 8-12.
Another example is WinZip, one of the most popular software titles in the world. Sinnreich Decl. at ¶ 34.  WinZip is available from users of the Morpheus software program, and redistribution is expressly authorized by the WinZip license agreement. Hoekman Decl. at ¶ 8.  Other examples of the distribution of computer software over P2P networks are given in Mr. Sinnreich’s declaration. Sinnreich Decl. at ¶¶ 33, 34.
2.	Public Domain Works
a)	Project Gutenberg and other eBooks
One of the most exciting uses of the Morpheus software program is in furtherance of Project Gutenberg.  As described more fully in the Declaration of Gregory Newby (“Newby Decl.”), Project Gutenberg seeks to convert to digital form, and widely distribute over the Internet, many different types of documents from the King James Bible to Shakespeare to the CIA World Fact Book. Newby Decl. at ¶ 4.  Project Gutenberg prepares and distributes over 5,600 works that are either in the public domain or authorized for distribution by the copyright holders.  There are expected to be over 6,000 public domain eBooks available on the Internet by the end of 2002. Newby Decl. at ¶ 6.  The Morpheus software program allows more decentralized (and thus less expensive) distribution of Project Gutenberg’s eBooks.  As a result, the eBooks are readily available through the Morpheus software program and the Gnutella network of Morpheus users. Hoekman Decl. at ¶ 4.  As Project Gutenberg’s CEO has stated: “Any technology that makes it easier and cheaper for individuals to redistribute eBooks over the Internet helps achieve Project Gutenberg’s goals of making public domain information freely available to the general public.” Newby Decl. at ¶ 12.
b)	Public Domain Content
There is an abundance of public domain material available that may be distributed by users of the Morpheus software program.  The public domain material includes material as to which copyright was never obtained or asserted, as well as material as to which copyright protection lapsed or expired. See generally Stephen Fishman, The Public Domain:  How to Find & Use Copyright-Free Writings, Music, Art & More (2000); (Notice of Lodgment, Ex. 1).
Two significant distributors of public domain materials that are delighted with the Morpheus software program’s capability for wide and inexpensive distribution of media are the Internet Archive and Prelinger Archives.  As Brewster Kahle, the Internet pioneer and entrepreneur who established the non-profit Internet Archive, has noted: “Peer-to-peer file sharing technologies, like those offered by the Morpheus, Grokster and KaZaA software, overcome many of the limitations of centralized download and streaming technologies and constitute a valuable advance in technology for those seeking to provide universal access to public domain material.” Declaration of Brewster Kahle at ¶14.
Prelinger Archives is a for-profit company that has assembled over 48,000 advertising, educational, industrial, documentary, and amateur films produced between 1903 and 1990.  Approximately 60% of its holdings are in the public domain; it owns the copyright in approximately 5% of its holdings.  Prelinger Archives furnishes stock footage for the motion picture industry, television networks, software publishers; educational media producers; advertising agencies; and artists and non-profit organizations. Declaration of Richard Prelinger (“Prelinger Decl.”) at ¶¶ 5-6.  Prelinger Archives has furnished over 1000 of its films to the Internet Archive for redistribution.  Prelinger Archives profits from providing access to its archives, even when its materials are in the public domain, and it welcomes redistribution by users of the defendants’ software. See Prelinger Decl. at ¶¶ 11-18.
c)	Government Documents
Another significant noninfringing use of the Morpheus software program is for the distribution of U.S. government documents, which are not protectible by copyright.  See 17 U.S.C. § 105.  Some government documents are already being made available through Project Gutenberg as noted above.  The Morpheus software program allows easy distribution of other government works, including videos of Presidential addresses, NASA photographs, and so forth. See Hoekman Decl. at ¶¶ 3, 9.
C.	Media Companies Effort to Obtain Judge-Made Technology Policy Through Secondary Copyright Liability Doctrines
The copyright industries have not been content with the legislative recourse afforded to them under our system of government, nor with the infringement remedies provided by the Copyright Act against direct infringers.  Instead, they have asked courts to transform copyright’s secondary liability doctrines, including contributory infringement, into a new form of judicially-fashioned technology regulation.  Copyright’s secondary liability doctrines are particularly ill-suited to bearing the weight of this policy-making burden, as they are themselves judicial creations crafted to address concerns far removed from challenges of technology policy. See Sony, 464 U.S. at 434 (“The Copyright Act does not expressly render anyone liable for infringement committed by another.”).  In the words of the Supreme Court, “[i]n a case like this, in which Congress has not plainly marked our course, [courts] must be circumspect in construing the scope of rights created by a legislative enactment which never contemplated such a calculus of interests.” Id. at 431.  Courts have repeatedly declined the invitation to expand secondary liability theories beyond their traditional limits, as this Court should do in the instant case.
In as much this argument is adequately covered in Section II B. of the Memorandum of Points and Authorities filed in support of the Vicarious Motion, for the sake of brevity it will not be repeated herein.
III.	  ARGUMENT
A.	The Standard for Contributory Copyright Infringement
The Ninth Circuit recently summarized the standard for contributory copyright infringement as follows:
Traditionally, “one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer.”  Put differently, liability exists if the defendant engages in “personal conduct that encourages or assists the infringement.” Napster, 239 F.3d at 1019 (citations omitted).
B.	The Standard for Summary Judgment
In general, a defendant is entitled to summary judgment where it shows “that there is an absence of evidence to support the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986).  As this Court has noted, “The parties’ respective burdens on summary judgment are inextricably tied to their burdens of proof at trial.  . . . [W]here the burden of proof on an issue would ultimately lie with the non-moving party, the moving party only needs to point to a lack of evidence supporting the non-moving party’s burden.  The non-moving party then has the burden to point to evidence from which a reasonable jury could conclude that she has met her burden of proof.”  Nixon-Egli Equipment Co. v. John A. Alexander Co., 949 F.Supp. 1435, 1441 (C.D. Cal. 1996) (citations omitted).  In Nixon-Egli, this Court carefully distinguished between an affirmative defense and a statutory exception, holding that the issue in that case was a statutory exception as to which the plaintiff had the burden. See id. at 1442-43.
In Sony-Betamax, the Supreme Court squarely placed the burden on plaintiffs:  “To prevail, [plaintiffs] have the burden of proving that users of the Betamax have infringed their copyrights and that Sony should be held responsible for the infringement.” Sony-Betamax, 464 U.S. at 434. 
As applied to this case, the summary judgement and contributory infringement standards together mean that, to avoid partial summary judgment on this issue, Plaintiffs must provide evidence that the Morpheus software program is incapable of substantial noninfringing uses.
C.	Under the Supreme Court’s Bright-Line Test for Contributory Copyright Infringement Arising from Distribution of Technology to the General Public, StreamCast is Entitled to Partial Summary Judgment
The central holding of the Supreme Court’s Sony-Betamax decision is that one who distributes technology to the general public will not be liable for contributory copyright infringement merely because the technology may be (and is) used for infringing purposes.  The Court stated that, to avoid liability, the technology “need merely be capable of substantial noninfringing uses.” Id., 464 U.S. at 442.
The Supreme Court’s analysis started from the principle that contributory copyright infringement depends upon a knowing contribution to infringing conduct.  It first addressed the district court’s finding that Sony had constructive knowledge of infringing uses of the product: “If vicarious liability is to be imposed on Sony in this case, it must rest on the fact that they have sold equipment with constructive knowledge of the fact that its customers may use that equipment to make unauthorized copies of copyrighted material.” Id., 464 U.S. at 439.
The Court found no precedent for such a theory in copyright law.  Id.  In fact, the Court expressly noted that such a rule would improperly extend the copyright monopoly to include consumer technologies generally.  Id. at 441 n.21. (“It seems extraordinary to suggest that the Copyright Act confers upon all copyright owners collectively, much less the two respondents in this case, the exclusive right to distribute VTR's simply because they may be used to infringe copyrights.  That, however, is the logical implication of their claim.”)  The Court therefore turned to patent law for an analogy, noting that the Patent “Act expressly provides that the sale of a ‘staple article or commodity of commerce suitable for substantial noninfringing use’ is not contributory infringement.” Id. at 440.
The Court, continuing the analogy from patent law, explained the rationale for limits upon contributory infringement liability:
[I]n contributory infringement cases arising under the patent laws the Court has always recognized the critical importance of not allowing the patentee to extend his monopoly beyond the limits of his specific grant.  These cases deny the patentee any right to control the distribution of unpatented articles unless they are “unsuited for any commercial noninfringing use.  Unless a commodity “has no use except through practice of the patented method, the patentee has no right to claim that its distribution constitutes contributory infringement. “To form the basis for contributory infringement the item must almost be uniquely suited as a component of the patented invention.  [A] sale of an article which though adapted to an infringing use is also adapted to other and lawful uses, is not enough to make the seller a contributory infringer.  Such a rule would block the wheels of commerce. 
Id., 464 U.S. at 441 (internal quotations and citations omitted). Applying the contributory infringement analogy to copyright law from patent law, the Court concluded that, to avoid liability, the challenged product “need merely be capable of substantial noninfringing uses.” Id. at 442.
The “capability” standard was at the core of the Supreme Court’s holding, and it creates a bright-line test that is readily amenable to summary judgment.  Such a test also secures for innovators a zone of necessary security from the uncertainties of potential copyright litigation.  The Court expressly rejected any consideration of the potential for infringing uses, or any measure of the proportions of infringing and noninfringing uses.  It was on that very point that the Supreme Court reversed the Ninth Circuit. See id. at 428 (noting that the Ninth Circuit had erroneously focused on “the major use” of the Betamax); see also id. at 498-99 (Blackmun, J., dissenting).  In fact, the Court specifically held that one “substantial noninfringing use” for the Betamax was to tape programs authorized by copyright owners for recording, notwithstanding the fact that such uses accounted for merely seven percent of all uses. Id., 464 U.S. at 424 (finding that 7.3% of all Betamax use was to record professional sports, and that this use constituted a substantial noninfringing use); see also id. at 493-94 & n.45 (dissenters recognizing this holding).  
The Ninth Circuit’s decision in Napster reaffirmed the Supreme Court’s Sony-Betamax decision.  As the Ninth Circuit observed:
“We are bound to follow Sony, and will not impute the requisite level of knowledge to Napster merely because peer-to-peer file sharing technology may be used to infringe plaintiffs’ copyrights. See 464 U.S. at 436 (rejecting argument that merely supplying the “‘means’ to accomplish an infringing activity” leads to imposition of liability).”
Napster, 239 F.3d at 1020-21 (citations omitted).
The Ninth Circuit in Napster also underscored the Supreme Court’s bright-line “capabilities” standard.  On this point the court of appeals criticized the district court:
“We depart from the reasoning of the district court that Napster failed to demonstrate that its system is capable of commercially significant noninfringing uses. See A&M Records, Inc. v. Napster, Inc., 114 F. Supp. 2d 896, 916, 917-18 (N.D. Cal. 2000).  The district court improperly confined the use analysis to current uses, ignoring the system’s capabilities. See generally Sony, 464 U.S. at 442-43, 104 S. Ct. 774 (framing inquiry as whether the video tape recorder is “capable of commercially significant noninfringing uses”) (emphasis added). Consequently, the district court placed undue weight on the proportion of current infringing use as compared to current and future noninfringing use. See generally Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255, 264-67 (5th Cir. 1988) (single noninfringing use implicated Sony).”
Id.
Because the Morpheus software is plainly capable of present and future substantial noninfringing uses, StreamCast cannot be charged with constructive knowledge that the general public may use the software program to infringe upon any copyrights of Plaintiffs.
D.	Plaintiffs’ Cannot Establish that StreamCast has Obtained the Requisite Level of Actual Knowledge for a Finding of Contributory Liability
In previous papers filed in this lawsuit, Plaintiffs have claimed that the shield of Sony-Betamax is not available to StreamCast because it has actual knowledge of infringing activities.  Plaintiffs are wrong, for the Napster court never made such a ruling.  Instead, after deciding that the district court had placed too much weight on current infringing uses, the Ninth Circuit held that in an online context, evidence of actual knowledge of specific acts of infringement is required to hold one liable for contributory copyright infringement. See id., 239 at 1021.  In order to establish such actual knowledge, a copyright holder must not only provide the necessary documentation to show the existence of likely infringement (i.e., that there is specific infringing material on the defendant’s systems), the copyright holder must also show that the defendant, after learning of the alleged infringement, had the ability to remove the offending material from its system and failed to do so. See id. at 1021.  Thus, not only must one have the ability to block access to their “system,” knowledge of the alleged infringement acquired too late (i.e., at a time when it cannot be acted upon) cannot constitute actual knowledge for purposes of contributory infringement.  Here, the “actual knowledge” relied upon by Plaintiffs falls well short of that required under Napster, since the only “knowledge” of infringement comes at a time when StreamCast cannot prevent further infringement.
Since StreamCast began distributing the Morpheus software based on the Gnutella platform, Plaintiffs have sent several “infringement notices” to StreamCast purporting to identify files “that are or have been available for copying (downloading) and distribution on the MusicCity system and service.” See Declaration of Charles Baker at ¶ 3.  These letters, which the Plaintiffs will attempt to use to prove “actual” knowledge, have enclosed lists that, without exception, identify no more than the titles of allegedly copyrighted files existing on the “Morpheus System”, the IP address of the connection that the computer containing the allegedly copyrighted files was using, and the date the search was conducted.  At most, Plaintiffs “notice” letters identify files in shared folders of computers connected to the Gnutella network at a given moment in time. Plaintiffs’ notices even fail to identify whether the connected computer is running a Morpheus client (i.e., a Morpheus user) or one of the many other clients compatible with the Gnutella protocol. Indeed, Plaintiffs’ “notices” tell StreamCast no more than the fact that one of Plaintiffs’ detectives running a version of Morpheus was able to locate allegedly infringing content in a shared folder on a computer then-connected to the Gnutella network.  
Even if these notice letters could satisfy the Napster requirement that they identify specific infringements by specific end users, they by necessity arrive after the distribution of the Morpheus program, at a time when StreamCast has no ability to act upon the notices. Gribble Decl. at ¶¶ 13, 18, 21, 27, 32 and 34.  Moreover, StreamCast neither possesses the legal right to repossess the software, nor the technical ability to disable it, just as Sony lacks the ability to repossess or disable a VCR after distributing it to the public. Gribble Decl. at ¶¶ 39-40; Smith Decl. at ¶ 37. 
Comparing StreamCast’s position with Napster’s makes the distinction plain. Unlike StreamCast, Napster not only had knowledge of specific infringements by specific Napster users with specific files but most importantly, it was also in a position to act on that knowledge.  As noted above, the court of appeals stated that  “Napster’s actual, specific knowledge of direct infringement renders Sony’s holding of limited assistance to Napster.  We are compelled to make a clear distinction between the architecture of the Napster system and Napster’s conduct in relation to the operational capacity of the system.” Id. at 1020 (emphasis added). It was Napster’s failure to act, within the architecture of its system, that cost it the protection of the Sony-Betamax defense: “We agree that if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement.” Id. at 1021 (emphasis added).
In contrast to Napster, StreamCast does not “operate” any user network or “system,” and it does not operate a file-indexing service.  Users of the Morpheus software program take advantage of the program’s full file-sharing functionality without StreamCast’s continuing involvement.  Users join the network, select which files to share, send and receive searches, and download files, all without the involvement of any StreamCast servers.  StreamCast could shut its doors completely and eliminate all of its servers, and Morpheus user would continue to be able to join the user network, search for, and share files. Gribble Decl. at ¶¶ 7,13,18,21,23,27,32 and 34.  Once the user has downloaded the Morpheus software product, StreamCast has no ability to repossess it or otherwise interfere with a the users’ file-sharing activities, just as Sony could not interfere with the Betamax users’ activities. 
The Supreme Court has also made it clear that, where distribution of a multi-purpose tool is concerned, there can be no contributory liability unless knowledge arrives at a time when the distributor is in a position to do something about the alleged infringement.  The Court in Sony-Betamax emphasized that contributory infringement depends on the demonstration of an “ongoing relationship between the direct infringer and the contributory infringer at the time the infringing conduct occurred,” such that “the contributory infringer was in a position to control the use of the copyrighted works by others and had authorized the use without permission from the copyright owners.” 464 U.S. at 437.  With respect to the Betamax, Sony did not have any knowledge of infringement on the part of Betamax purchasers at the time of purchase, which in turn was the last time when Sony was in a position to control the use of the device.  Similarly, StreamCast has no knowledge of infringement on the part of those who download Morpheus at the time of distribution, which is the last moment when StreamCast exercises any control whatsoever over the file-sharing capabilities of the Morpheus software product.
The imposition of contributory infringement liability on a technology vendor on the basis of actual knowledge delivered after the accused product has moved beyond the vendor’s ability to control its use would create a bizarre form of “springing” copyright liability that would undermine the rationale of the Sony-Betamax case and imperil innovators generally.  On Plaintiffs’ view, the movie studios could today gather evidence of copyright infringement by owners of Sony VCRs, deliver this information to Sony, and then re-file a contributory infringement action based on the “actual knowledge” thereby manufactured.  For that matter, any copyright owner could gather evidence of infringement by the users of any software or device, deliver “notice” of such infringement to the technology vendor, and thus conjure contributory infringement liability weeks, months, or years after the device or software had left the hands of the technology vendor.  It was precisely this intrusion of judge-made secondary liability principles into the realm of commerce that the Court meant to foreclose in Sony-Betamax. 
IV.	  CONCLUSION
When faced with claims of contributory copyright infringement by media interests against new technologies capable of noninfringing uses, the Supreme Court and the Ninth Circuit have taught that the answer is not to interpret this judge–made doctrine to bestow on copyright owners a roving veto right over the technologies.  Infringing users of those technologies remain subject to direct liability for their conduct, so copyright owners do not lack for remedy.  If new remedies are needed, that is a role for Congress. See Sony, 464 U.S. 431 (“Sound policy, as well as history, supports our consistent deference to Congress when major technological innovations alter the market for copyrighted works.”)
Because Plaintiffs cannot show that there is a genuine dispute regarding the Morpheus software program’s capability of substantial noninfringing uses, or that StreamCast has insufficient knowledge at the time when the software is distributed that it will be used for infringing activities, the Court should grant partial summary judgment to the StreamCast defendants with respect to the distribution of Gnutella-based versions of the Morpheus software program to the general public.
Dated:  September 9, 2002	Respectfully submitted,
BROBECK, PHLEGER & HARRISON LLP

By ___________________________________
	Charles S. Baker

Attorneys for Defendants MusicCity.com, Inc. (now known as StreamCast Networks, Inc.) and MusicCity Networks, Inc.

TABLE OF CONTENTS
	Page(s)
I. INTRODUCTION AND SUMMARY OF ARGUMENT	1
II. FACTUAL BACKGROUND	4
A.	The Morpheus Software	4
B.	The Morpheus Software Program’s Undisputed Capability for Substantial Noninfringing Uses	4
1.	Works Authorized for Redistribution	4
a)	Media Content	4
b)	Permitted Distribution of Computer Software	6
2.	Public Domain Works	7
a)	Project Gutenberg and other eBooks	7
b)	Public Domain Content	7
c)	Government Documents	8
C.	Media Companies Effort to Obtain Judge-Made Technology Policy Through Secondary Copyright Liability Doctrines	9
III. ARGUMENT	9
A.	The Standard for Contributory Copyright Infringement	9
B.	The Standard for Summary Judgment	10
C.	Under the Supreme Court’s Bright-Line Test for Contributory Copyright Infringement Arising from Distribution of Technology to the General Public, StreamCast is Entitled to Partial Summary Judgment	11
D.	Plaintiffs’ Cannot Establish that StreamCast has Obtained the Requisite Level of Actual Knowledge for a Finding of Contributory Liability	14
IV. CONCLUSION	18

TABLE OF AUTHORITIES
	Page(s)
CASES 

A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004	2

Napster, 239 F.3d at 1019	10

Napster, 239 F.3d at 1020	3

Id. at 1021    	3

Id. at 1022    	3

Napster, 239 F.3d at 1020	16

Napster, 239 F.3d at 1020-21	13

Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548 [91 L.Ed.2d 265]	10

Cybiotronics, Ltd. v. Golden Source Electronics, Ltd., 130 F.Supp.2d 1152	10

Nixon-Egli Equipment Co. v. John A. Alexander Co., 949 F.Supp. 1435	10

id. at 1442-43 	10

Sony, 464 U.S. 431	18

Sony, 464 U.S. at 434	9

Id. at 431     	9

Sony-Betamax, 464 U.S. at 434	10

464 U.S. at 437	17

Id., 464 U.S. at 439	11

id             	11

Id. at 441 n.21.	11

Id. at 440     	11

Sony-Betamax, 464 U.S. at 440	10

Id., 464 U.S. at 441	14

Id. at 442     	12

id. at 428     	12

id. at 498-99  	14

Sony-Betamax, 464 U.S. at 442	3

Id.            	4

id             	4

Id., 464 U.S. at 442	12

464 U.S. at 491	14

Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, [78 L.Ed.2d 574]	3

Id., 464 U.S. at 424	14

id. at 493-94 & n.45	15

Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255	4

Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255	6

Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255	15

id             	15

Vault Corp. v. Quaid Software Ltd., 847 F.2d 255	16

id., 239 at 1021	16

id. at 1021    	16

FEDERAL STATUTES 

17 U.S.C. § 105	10

Section 271 of the Patent Act, 35 U.S.C. § 271	12

35 U.S.C. § 271	13