## Facts

- Major record companies and music publishers sued Napster, Inc. for contributory and vicarious copyright infringement based on users’ alleged unauthorized copying and distribution of copyrighted sound recordings through Napster’s peer-to-peer service.
- Napster’s service enabled users to search for MP3 files located on other users’ computers and transfer files directly between users.
- Plaintiffs moved for summary judgment on liability and willfulness.
- Napster sought relief under Federal Rule of Civil Procedure 56(f) (now Rule 56(d)) to obtain additional discovery to oppose summary judgment.
- Napster requested discovery on (1) plaintiffs’ copyright ownership and chain of title for works at issue, including alleged misclassification of some works as “works made for hire,” and (2) an equitable defense of copyright misuse.
- Napster’s misuse theory focused on plaintiffs’ digital-music joint ventures (MusicNet and pressplay) and related licensing restrictions, alleging refusals to license individually and contractual terms that could restrict or punish independent licensing.
- Napster also sought additional discovery to support fair use and noninfringing-use arguments.

## Issues

1. Whether Napster satisfied Rule 56(f) requirements for a continuance and targeted discovery to oppose plaintiffs’ summary-judgment motion.
2. Whether Napster made a sufficient showing to warrant discovery on plaintiffs’ ownership and chain of title for the copyrighted works asserted.
3. Whether Napster made a sufficient showing to warrant discovery on an asserted copyright misuse defense based on plaintiffs’ digital licensing joint ventures and related licensing restraints.
4. Whether additional discovery was warranted on Napster’s fair use and noninfringing-use contentions.

## Decision

- The court granted Napster’s Rule 56(f) motion in part and denied it in part.
- The court allowed additional discovery concerning plaintiffs’ ownership and chain of title for the works at issue.
- The court allowed additional discovery concerning Napster’s copyright misuse defense, including discovery into the structure and competitive effects of plaintiffs’ digital licensing ventures and related contract terms.
- The court denied additional discovery related to fair use, concluding it was unlikely to yield material facts that would alter the analysis in light of the existing record and prior appellate treatment of the defense.
- The court deferred final resolution of summary judgment to permit the targeted discovery it authorized.

## Legal Principles

- Under Rule 56(f) (now Rule 56(d)), a court may defer or deny summary judgment to permit discovery when the nonmovant identifies specific facts it seeks and shows they are essential to oppose summary judgment.
- A plaintiff seeking summary judgment on copyright claims must show enforceable rights in the works at issue; when ownership, “work for hire” status, or chain-of-title documentation is reasonably disputed, limited discovery may be warranted before liability is adjudicated.
- Copyright misuse is an equitable defense that may bar enforcement when a rights holder uses copyright in a manner contrary to public policy, including attempts to obtain market control beyond the statutory grant through restrictive licensing practices.
- A district court may deny additional discovery on a defense when further evidence is unlikely to be material, including where prior proceedings have already developed a substantial record on the issue.

## Conclusion

The court permitted limited discovery focused on ownership/chain-of-title questions and a colorable copyright misuse theory tied to plaintiffs’ digital licensing arrangements, but refused further fair-use discovery, postponing final summary-judgment resolution until the authorized discovery was completed.


In re Napster, Inc. Copyright Litigation, 191 F. Supp. 2d 1087 (N.D. Cal. 2002)