Judge Finds Napster's Filtering "Disgraceful," but Looks to Expert for Technology Guidance

by Mark Lewis, Webnoize, Inc

Napster's attempts to gain ground in its fight with the recording industry severely backfired on several levels Tuesday, as a federal judge said Napster's alleged failure to block copyrighted recordings was "disgraceful." But despite several moments of verbal fireworks, U.S. District Court Chief Judge Marilyn Hall Patel's main thrust was to ask a neutral technical expert to examine Napster's architecture and determine if the service's file filtering efforts can be improved.

Napster's attorney, Robert Silver of Boies, Schiller & Flexner, argued before the court that under the terms of a preliminary injunction that Judge Patel issued against Napster March 6, major labels suing Napster for copyright infringement must provide at least one file name for every recording they want blocked. But at Tuesday's hearing in San Francisco, Judge Patel was unequivocal that the recording industry's burden need only go as far as providing lists of recordings to be blocked.

"You have a burden to police the system and find infringing files," she told Napster.

Before reaching that conclusion, Judge Patel rejected Silver's argument that Napster needs file names in order to prioritize which requests for blocking it should handle first. And after Russell Frackman, outside counsel for the Recording Industry Association of America, argued that "there's nothing in the law that allows any infringer to decide how to prioritize" which infringements should be dealt with, Judge Patel revealed her view of her original July injunction against Napster. That injunction gave Napster the full burden to stop facilitating the transfer of copyrighted works.

"I still think that I was right," she said. "But the [U.S. 9th Circuit] Court of Appeals said I was wrong." She explained that the 9th Circuit's February decision against Napster shifted some burden back to the major labels by requiring them to provide lists of their works, but still required Napster to police its service. She concluded that she didn't "know how to parse that out in a much different way without running afoul of [the 9th Circuit's] decision." Thus, Napster will probably have to begin blocking around 330,000 artist and title name pairs that the major music labels previously submitted without file names.

But determining that the major labels will not have to deliver file names for every recording was only the first blow to Napster during a contentious hearing. When Silver tried to argue that Judge Patel's interpretation was "reducing the plaintiffs' obligation to zero," Judge Patel would have none of it, stating she was more interested in a "workable solution" to the two sides' grievances than protracted squabbling.

Reiterating a somewhat famous statement she made when she issued a surprise preliminary injunction from the bench last summer, she told Napster that it would have to solve its filtering woes on its own. "It goes back to what I already said: You created this monster. You figure it out."

Her criticism of Napster only increased when Frackman claimed that 512 recordings that the major labels had already asked to be blocked were still available through Napster last weekend. Attorney Carey Ramos, representing songwriters Jerry Leiber and Mike Stoller, added fuel to the fire when he handed Judge Patel a thick stack of papers alleging that 5,050 songs out of 6,000 that the songwriters and others wanted blocked were available through Napster on Monday. What's more, thousands of copies of "Jailhouse Rock" and "Unchained Melody" were available, Ramos claimed.

"This, I think, is disgraceful," Judge Patel said of Napster's allegedly ineffective filtering. When Silver tried to plead that Napster was blocking 1.3 billion file transfers per day, Judge Patel issued another danger sign to the upstart service. "Maybe the system needs to be closed down," she pondered aloud.

Yet she didn't definitively state that she was ready to go that far. Instead, she is placing a great deal of power in the hands of a neutral technical expert, A.J. "Nick" Nichols, who will evaluate Napster's architecture, determine if its filtering can be improved, and examine technologies such as audio fingerprinting and "hashes." Hashes are mathematical formulae that can uniquely identify a file based on its bits.

"I'm interested in... not only what the Napster system is doing, but what else is out there that can be interfaced or plugged in... that can facilitate the compliance of the preliminary injunction," Judge Patel said.

Silver and Frackman will hold a teleconference this Friday with Judge Patel and Nichols, who is expected to produce a report on Napster's system and new filtering technologies in the coming weeks. Nichols served as a neutral expert for the U.S. District Court in Sun Microsystems' suit against Microsoft; his technical expertise ranges from a nine-year stint as a research scientist at Lockheed Missiles and Space Company in the 1960s to founding Probitas, a 20-year-old computer design consulting firm that specializes in firmware and operating systems.

At the same time as Nichols is beginning his evaluation, Napster is moving toward adding new technology as a result of its recent acquisition of Palo Alto, Calif.-based firm Gigabeat [see 04.10.01 Napster Acquires Gigabeat for Cash, Building Its Technology Tool Chest]. Gigabeat engineers are beginning to implement filters based on a common type of hash called MD5, according to a source with knowledge of Napster's engineering efforts.

Cary Sherman, the RIAA's executive vice president and general counsel, said that Napster could immediately begin blocking artist names and song titles separately, rather than treating them as pairs as it does currently. On the other hand, he said that fingerprinting is relatively new, so Nichols will have to evaluate its accuracy, its effect on the performance of Napster's system and its ability to work on a large scale.

Tuesday's hearing also addressed three other legal actions other parties initiated against Napster, its executives and its investors.

Judge Patel dismissed a case filed by music publisher Matthew Katz, who claims to own copyrights to various material written by San Francisco '60s psychedelic bands Moby Grape and the Jefferson Airplane. Katz, who served as his own attorney, was attempting to sue Napster's interim CEO Hank Barry, venture capital firm Hummer Winblad, Napster founder Shawn Fanning and Limp Bizkit frontman Fred Durst, alleging they were aiding Napster in copyright infringement. Judge Patel found the claim frivolous, casting considerable doubt on the concepts of "tertiary infringement" and the liability of investors for a company's actions. Still, she ruled that Katz can amend his claim in the future.

In a separate motion, attorney Ramos, representing the Harry Fox Agency (the licensing unit of the National Music Publishers' Association) argued that Harry Fox's 27,000 publishers should get class action status for the preliminary injunction against Napster. That would allow the Harry Fox Agency to aggregate lists of works the publishers want blocked, similar to the role served by the RIAA.

Napster counsel Lawrence Pulgram argued that Napster could best deal individually with each publisher's blocking request, but Napster may fear that certifying the publishers as a class for the injunction could open the door to higher damages later. Judge Patel seemed favorably inclined to grant class action status for the injunction, but did not issue a ruling.

The court also heard a motion brought forward by attorney Hannah Bentley of the Internet Lawyers Group on behalf of independent artists suing Napster for distributing their works without permission. Bentley wanted Judge Patel to certify all independent artists as a class, but Judge Patel found the concept fraught with problems. A worldwide class of artists could be unmanageable, and it might be extremely difficult to determine how U.S. copyright law should apply to artists residing in various foreign countries, Judge Patel said.

Besides, "there are a lot of independent artists that support Napster," Judge Patel said. Independent artists' attorneys may try to revise their class to only include U.S. recording artists who have registered their works with the U.S. Copyright Office. If filed, Judge Patel would then have to rule on that request for certification in the future.