IP Law Daily, COPYRIGHT—SDNY: YouTube Protected by DMCA Safe Harbor from Infringement Claims by Rights Holders, (Apr 19, 2013)

By Thomas Long, J.D.

Video-hosting website YouTube did not have knowledge or awareness of, and did not engage in willful blindness regarding, any specific instances of infringement related to video clips that were the subject of copyright infringement claims by rights holders, the federal district court in New York City has determined (Viacom International, Inc. v. YouTube, Inc., April 18, 2013, Stanton, L.). YouTube was entitled to “safe harbor” protection under the Digital Millennium Copyright Act (“DMCA”) from the claims. The district court’s ruling was made after a previous determination of safe-harbor eligibility (718 F. Supp. 2d 514 (S.D.N.Y. 2010)) had been vacated by the U.S. Court of Appeals in New York City and remanded for further fact-finding on (1) whether YouTube had knowledge of specific infringements; (2) whether YouTube had willfully blinded itself to specific infringements; (3) whether YouTube had the “right and ability to control” infringing activity; and (4) whether YouTube had syndicated any of the rights holders’ clips to a third party and, if so, whether such syndication occurred “by reason of the storage at the direction of the user” within the meaning of the DMCA.

Knowledge of infringements. The court requested the parties to report, for each clip, “what precise information was given to or reasonably apparent to YouTube identifying the location or site of the infringing matter?” YouTube submitted a list of over 63,000 clips-in-suit and asserted that it never received adequate notices of any of those infringements. YouTube challenged the plaintiffs to fill in the blanks specifying how they claimed notice had been given.

Viacom acknowledged that it had failed to come forward with evidence establishing YouTube’s knowledge of the specific clips-in-suit, but Viacom contended that it was not Viacom’s burden to establish notice, but, rather, it was YouTube’s burden to establish that it had not received notice, because it was the party claiming the DMCA safe harbor as an affirmative defense.

The court called the argument “ingenious” but stated that it was based on an “anachronistic, pre-Digitial Millennium Copyright Act (DMCA), concept.” The DMCA was enacted because service providers performed a useful function, but it was possible that they would inadvertently incur liability under copyright law as a result of infringing works being placed on their platforms, of which the providers were generally unaware. The volume of material posted to YouTube—comprising, at the time of the appellate court decision, more than 24 hours of new video uploaded to the site every minute—meant that no service provider could possibly be aware of the contents of each video posted, the court noted.

To encourage qualified service providers, Congress established a “safe harbor” in the DMCA protecting the provider from infringement liability under certain circumstances. The DMCA placed the burden of notifying service providers of infringements upon the copyright owner or the owner’s agent, the court said. Such notifications were required to be in writing and with specified contents, and deficient notices were not to be considered in determining whether the provider had actual or constructive knowledge.

Viacom’s argument that the volume of material and the lack of evidence indicating which clips-in-suit were specifically known to senior YouTube executives combined to deprive YouTube of safe harbor protection was “extravagant,” in the court’s view. The DMCA’s notice and takedown system was “entirely workable,” the court opined, pointing out that in 2007 Viacom itself had given notice to YouTube of some 100,000 infringing videos, which were taken down by the next business day.

The burden of showing that YouTube knew or was aware of the specific infringements of the works in suit could not be shifted to YouTube to disprove, the court stated. That burden fell on the copyright owner, by statute. Accordingly, in answer to the first question posed by the appellate court, the plaintiffs lacked proof that YouTube had knowledge or awareness of any specific infringements of clips-in-suit, the court held.

Willful blindness. The court noted that DMCA safe harbor protection could not be conditioned on affirmative monitoring by a service provider. Willful blindness, however, was not the same thing as an affirmative duty to monitor. Therefore, the willful blindness doctrine could be applied to demonstrate knowledge or awareness of specific instances of infringement under the DMCA.

According to the court, service providers are disqualified from DMCA protection only when they are willfully blind to “specific and identifiable instances of infringement.” In this case, the examples provided by the plaintiffs at most gave information that infringements were occurring with particular works, and occasional indications of “promising” areas in which to locate and remove them. The specific locations of infringements were not supplied; rather, they, at most, provided an area of search, and they left YouTube to locate the infringing clip. In the court’s view, the plaintiffs did not produce evidence that YouTube was willfully blind to information regarding infringement of specific clips-in-suit.

Right and ability to control. YouTube did not have the right and ability to control infringing activity within the meaning of DMCA Sec. 512(c)(1)(B), the court held. Because every service provider was presumed to have the ability to remove material in response to a takedown notice, the ability to “control infringing activity” contemplated by the DMCA meant “something more” than just ordinary power over what content appears on the provider’s website, the court said. The content provider would have to “exert substantial influence on the activity of users,” even without knowledge of specific infringing activity.

The knowledge of the prevalence of infringing activity, and welcoming it, did not itself forfeit the safe harbor, the court said. In order to forfeit safe harbor protection, the provider had to influence of participate in the infringement. Such activities could include prescreening content, rendering advice to users regarding content, and editing user content.

The evidence showed that YouTube had made a business decision to restrict its monitoring efforts to certain groups of infringing clips—such as entire movies and episodes of TV shows—and other material deemed objectionable—that is, violent, obscene, etc.—while ignoring smaller clips like music videos and comedy sketches. This decision did not exclude it from the safe harbor, the court said. Nor did YouTube’s decision to restrict access to its proprietary search mechanisms for the identification of material to be taken down. Section 512(m) of the DMCA provided that a safe harbor could not be conditioned on affirmative monitoring.

The plaintiffs failed to present evidence of the requisite ability to control beyond the normal functioning of any service provider, the court said. This evidence did not show participation in or inducement of infringing activity by users.

Syndication of clips. YouTube had entered into licenses with Apple, Sony, Panasonic, TiVo, and AT&T under which YouTube provided access to all of the videos stored on its system by transcoding the material into a format accessible by third-party mobile and similar technology. This “syndication” served the purpose of Sec. 512(c) of the DMCA by “providing access to material stored at the direction of users,” the court said. This conduct involved neither manual selection nor delivery of videos. The syndication did nothing more than combine functions that had been held covered by the safe harbor: (1) transcoding videos in order to render them viewable over the Internet to most users and (2) playing back videos in response to user request. Accordingly, YouTube’s conduct with regard to syndication was protected by the safe harbor, the court concluded.

Because YouTube was entitled to safe harbor protection from the plaintiffs’ copyright claims, the complaint was dismissed.

The case is No. 07 Civ. 2103 (LLS).

Attorneys: James C. Cox (Jenner & Block, LLP) for Viacom International, Inc. A. John P. Mancini (Mayer Brown LLP) for YouTube, Inc.

Companies: Viacom International, Inc.; Comedy Partners; Country Music Television, Inc.; Paramount Pictures Corp.; Black Entertainment Television, LLC; YouTube, Inc.; YouTube, LLC; Google, Inc.

Cases: Copyright TechnologyInternet NewYorkNews