IP Law Daily, COPYRIGHT—C.D. Cal.: A vicarious infringement lawsuit is put on hold in favor of a DMCA takedown notice, (Dec 15, 2022)

By Matthew Hersh, J.D.

The music publisher’s lawsuit could not proceed until the publisher tried the statutory remedy first.

A music publishing company was not entitled to use the discovery procedures of litigation to advance a claim that a social media platform vicariously infringement its copyrighted works where it had not bothered to serve the platform with a DMCA takedown notice first, the federal district court for Los Angeles has held. The court, in partially staying and partially dismissing music publishing giant BMG’s lawsuit against the social media platform, also took pains to note that the online platform did not instigate or otherwise directly cause copyright infringement merely by encouraging its users to upload “better music” (BMG Rights Management (US) LLC v. Joyy Inc., December 5, 2022, Scarsi, M.).

The lawsuit centers around Likee, a video uploading that, like TikTok, encourages its users to upload short-form content for viewing by others. The service, run by an entrepreneur from Singapore, is widely criticized for the explicit nature of its content. “We’re not going to mince words,” one reviewer put it. “Likee is a TikTok clone that makes TikTok look downright wholesome—which is saying a lot.” Another review has criticized the app on the ground that its profiles are automatically public, user location is automatically shared, and the app has “an abundance of graphic, sexualized content that is difficult to avoid.”

BMG’s lawsuit in this case involves copyright infringement—another common complaint over services like Likee. The complaint alleges that the service promotes videos that incorporate unlicensed, copyrighted music—and therefore infringe on BMG’s copyrights—by making the videos more visible to users scrolling through their Likee feeds and increasing creators’ odds of “go[ing] viral.” BMG’s lawsuit asserts claims of direct, contributory, and vicarious copyright infringement.

The service moved to dismiss the claim, leading to this opinion.

Direct and contributory infringement. The court granted the motion, finding that BMG had not stated a claim for either direct or secondary infringement.

Direct infringement. BMG failed to state a claim for direct infringement, the court held, because it failed to plead facts that would show the service to be an active, rather than a passive, participant in the infringing conduct. To be sure, the court noted, the service encourages its users to upload music, teaches its users how to generate content, and makes available to others the videos that its users upload. But it was the users themselves and not the service, the court noted, that select the content for videos. BMG argued that the service advises its users “that ‘better music’ will help them go viral,” but that did not change the calculus. “[BMG] does not make any connection between ‘better music’ and copyrighted music,” the court noted, “let alone [BMG’s] copyrighted works.” Thus, the service could not be liable for direct infringement.

Contributory infringement. Nor did BMG make out a claim for contributory infringement, the court held. Contributory copyright infringement, the court noted, may be imposed upon one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another. But the allegations here fell far short. Indeed, the court noted, BMG failed to identify “a single individual copyrighted song” that the service knew was being infringed. “Without more,” the court noted, “the allegations support only [the service’s] generalized knowledge of the possibility of infringement”—far less than was necessary for a claim of secondary liability. Thus, the complaint would be dismissed in its entirety.

Vicarious copyright infringement. In addition to dismissing the direct and contributory infringement claims, the court also stayed—on its own motion—any further proceedings on the vicarious infringement claim until after BMG filed a takedown notice for individual videos under the Digital Millennium Copyright Act, or DMCA. In order to show that the service was vicariously liable for copyright infringement under the DMCA, BMG would have to show that the service was aware of a specific infringing video and refused to take it down even though it had the power to do so. Traditionally copyright owners send a takedown notice under the DMCA and then—if the notice is ignored—use that as evidence of the service’s liability. But BMG tried to short-circuit that process by simply filing its lawsuit first. That would not fly, the court held, noting that “it appears that Plaintiff seeks to leverage discovery procedures and effectively spread the substantial investigative costs to Defendants through this litigation.”

Commentary. The DMCA portion of the decision drew pointed commentary from Santa Clara University law professor Eric Goldman, who noted it as one more instance in which courts have—rightly, in his view—effectively treated DMCA notices as mandatory for a vicarious liability case of this nature. “Of course, we all know what will happen if the plaintiff submits DMCA takedown notices,” Professor Goldman writes. “Likee will expeditiously remove the videos and there will be no lawsuit. BMG, of course, knew that but clearly hoped to find a litigation bypass to sending takedown notices. The court closed the door on that bypass—as it should.”

The Case is No. 2:22-cv-01578-MCS-RAO.

Attorneys: Gerard P. Fox (Gerard Fox Law PC) for BMG Rights Management [US], LLC. David Spencer Bloch (Greenberg Traurig, P.A.) for Joyy Inc.

Companies: BMG Rights Management (US), LLC; Joyy Inc.

Cases: Copyright TechnologyInternet CaliforniaNews