The Music Man | Russell Frackman

BY JEAN-LUC RENAULT

When Russell Frackman got a phone call in 1999 about potential litigation against a website that threatened to undermine the music industry, he had never heard of it.

"I went home that night to my son, who was then in high school, and I said, 'Steven, have you ever heard of something called Napster?'" said Frackman, feigning a wide-eyed look of ignorance.

He convinced his reluctant son to spend the evening showing him around the site that allowed users to share music files for free.

"He became my initial technical expert," said Frackman, who was soon the lead lawyer for the music and film industries on a series of lawsuits against Napster and other sites that broke new ground in copyright law and the Internet.

Frackman's two lawsuits with the highest profiles - A&M Records Inc. vs. Napster Inc. followed by Metro-Goldwyn-Mayer Inc. vs. Grokster - thrust existing copyright law into the digital age, tweaking old-school theories to apply them to the online world.

More prominently, Frackman's cases helped change the public's perception of downloading music for free from a harmless activity to a federal crime.

"Many didn't necessarily think that what they were doing was illegal," said Jack Lerner, a professor at the University of Southern California Gould School of Law. "The lawsuit against Napster did a lot to change people's mindsets, and that was part of the strategy."

The Brooklyn-born Frackman had spent much of his 40 years at the firm going after pirated music in all its forms - first vinyl, then 8-tracks, cassette tapes and finally CDs - and viewed the site as he did flea markets whose vendors sold unlicensed albums.

"The legal issues in general terms were similar," said Frackman.

Whether Frackman and his co-counsel could build a convincing case when they filed suit against the site was another question.

"The application to the online world was brand new," said Frackman. "We were not sure whether an entity like Napster could be held liable under contributory or vicarious infringement."

Napster had tried to rely on a previous Supreme Court decision in which Sony Corp. of America was found to be not liable for infringement if people used the company's VCRs to copy movies or television shows.

A federal district judge and the 9th U.S. Circuit Court of Appeals disagreed, holding that Napster played an active role in users' infringing activities. That case set the stage for a lawsuit against Grokster, another file-sharing website, filed by a group of movie studios Frackman represented.

After district and appellate courts sided with Grokster, the case went to the U.S. Supreme Court in 2005, with the justices finding the site was liable for inducing users to infringe copyrights.

Grokster has since been shut down and Napster has been turned into a legitimate site.

Zia F. Modabber, a partner with Katten Muchin Rosenman, said the cases sent a strong message to the public.

"Everybody now knows that because of Napster you can't turn a blind eye to copyright infringement," he said.

Although many argue the record industry never recovered from the hit it took from peer-to-peer sites, Frackman said he believes Napster and Grokster helped pave the way for legitimate methods of distributing music online.

"It's a beneficial side effect of Napster that any content holder can now license their works on the Internet, can license material that may have been very difficult to find in the CD world or the vinyl world or the tape world, and can get paid for it," he said.

"One can wonder whether if we had lost Napster there would have been an iTunes or a Pandora," he added.

Since then, Frackman has continued to break new ground in intellectual property law.

He successfully represented a video game company in a dispute with a strip club that accused the company of violating its trademark by using the club's sign in a game, setting a precedent that video games are First Amendment-protected.

Regardless, getting familiar with emerging technologies hasn't been without its learning curves. Steven said his father barely knew how to work a mouse back when he showed him how to use Napster.

"He was unable to conceptualize how it moved the cursor," said the younger Frackman, now a lawyer. "He would lift it up off the pad to try to move it."

But in the decade since, Frackman has outpaced his son in keeping up with the latest innovations.

"He asks me about stuff that I haven't even heard of," said Steven, who has long given up peer-to-peer services. "He's sort of a guru in that sense."