- Court grants summary judgment for YouTube and Google in copyright infringement action for large amount of copyrighted material on website, holding that defendants are entitled to the DMCA 512(c) safe harbor because they had insufficient notice of the particular infringements.
Plaintiffs Viacom International, Comedy Partners, Country Music Television, Paramount Pictures and Black Entertainment Television sued YouTube and its parent Google for direct and secondary copyright infringement. The defendants moved for summary judgment on the grounds that they are entitled to the Digital Millennium Copyright Act (DMCA) safe harbor (17 U.S.C. §512(c)) because they had insufficient notice, under the DMCA, of the particular infringements at issue. The plaintiffs cross-moved for summary judgment on the grounds that the defendants are not protected by the DMCA safe harbor.
Section 512(c) provides, in part:
A service provider shall not be liable . . . for infringement of copyright by reason of the storage at the direction of the user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider –
(A) (i) does not have actual knowledge that the material or an activity
using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or
circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously
to remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.
The plaintiffs claimed that “tens of thousands of videos on YouTube, resulting in hundreds of millions of views, were taken unlawfully from Viacom’s copyrighted works without authorization” and that “Defendants had ‘actual knowledge’ and were ‘aware of facts or circumstances from which infringing activity [was] apparent,’ but failed to do anything about it.” However, the court pointed out that the defendants designated an agent, and when they received specific notice that a particular item infringed a copyright, they swiftly removed it. It was uncontroverted that all the clips in this action were removed from the YouTube website, most having been removed in response to DMCA takedown notices.
The critical question, according to the court, is whether the statutory phrases “actual knowledge that the material or an activity using the material on the system or network is infringing,” and “facts or circumstances from which infringing activity is apparent” in § 512(c)(1)(A)(i) and (ii) mean a general awareness that there are infringements or rather mean actual or constructive knowledge of specific and identifiable infringements of individual items.
The court relied on legislative history of the DMCA and case law (most from the district courts and appellate court in the Ninth Circuit) in reaching its conclusion that the DMCA requires more than mere knowledge of infringement in general. The court interpreted the phrases “actual knowledge that the material or an activity” is infringing, and “facts or circumstances” indicating infringing activity, as describing knowledge of specific and identifiable infringements of particular infringed items. The court stated that “[t]o let knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials, impose responsibility on service providers to discover which of their users’ postings infringe a copyright would contravene the structure and operation of the DMCA.” The court quoted from Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007), in which the Ninth Circuit stated “The DMCA notification procedures place the burden of policing copyright infringement – identifying the potentially infringing material and adequately documenting infringement – squarely on the owners of the copyright. We decline to shift a substantial burden from the copyright owner to the provider . . . .”
The district court agreed that the burden should not be shifted to the service provider, on the basis that the infringing works may be a small fraction of millions of works posted by others on the service’s platform, whose provider cannot by inspection determine whether the use has been licensed by the owner, or whether its posting is a “fair use” of the material, or even whether its copyright owner or licensee objects to its posting. The court went on to say that the present case shows that “the DMCA notification regime works efficiently: when Viacom over a period of months accumulated some 100,000 videos and then sent one mass take-down notice on February 2, 2007, by the next business day YouTube had removed virtually all of them.”
The court also discussed the recent Second Circuit decision Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. April 1, 2010) which involved analogous claims of trademark infringement (but not the DMCA) based on sales of counterfeit merchandise on eBay. The Second Circuit explained that “eBay appears to concede that it knew as a general matter that counterfeit Tiffany products were listed and sold through its website. Without more, however, this knowledge is insufficient to trigger liability . . . .” The Second Circuit held that for “contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.”
The district court in the case at hand reasoned that “the DMCA applies the same principle, and its establishment of a safe harbor is clear and practical: if a service provider knows (from notice from the owner, or a ‘red flag’) of specific instances of infringement, the provider must promptly remove the infringing material. If not, the burden is on the owner to identify the infringement. General knowledge that infringement is ‘ubiquitous’ does not impose a duty on the service provider to monitor or search its service for infringements.”
The court also distinguished this case from Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), and its progeny Arista Records LLC v. Usenet.com, Inc., 633 F. Supp. 2d 124 (S.D.N.Y. 2009), Columbia Pictures Industries, Inc. v. Fung, No. 06 Civ. 5578, 2009 U.S. Dist. LEXIS 122661 (C.D. Cal. Dec. 21, 2009), and Arista Records LLC v. Lime Group LLC, No. 06 Civ. 5936, 2010 WL 2291485 (S.D.N.Y. May 25, 2010), stating that these cases “have little application here.” According to the court, these cases involved peer-to-peer file-sharing networks which are not covered by the safe harbor provisions of the DMCA. Although Grokster addressed the more general law of contributory liability for copyright infringement, “[t]he Grokster model does not comport with that of a service provider who furnishes a platform on which its users post and access all sorts of materials as they wish, while the provider is unaware of its content, but identifies an agent to receive complaints of infringement, and removes identified material when he learns it infringes. To such a provider, the DMCA gives a safe harbor, even if otherwise he would be held as a contributory infringer under the general law.”
The court also addressed several “Other Points.” The plaintiffs also claimed that the replication, transmittal and display of videos on YouTube fall outside § 512(c) safe harbor for “infringement of copyright by reason of the storage at the direction of a user of material” on a service provider’s system or network. The court stated that such an interpretation “confines the word ‘storage’ too narrowly to meet the statute’s purpose.” In § 512(k)(1)(B) a “service provider” is defined as “a provider of online services or network access, or the operator of facilities therefor,” and includes “an entity offering the transmission, routing, or providing of connections for digital online communications.” As the court surmised, “Surely the provision of such services, access, and operation of facilities are within the safe harbor when they flow from the material’s placement on the provider’s system or network: it is inconceivable that they are left exposed to be claimed as unprotected infringements.”
Regarding the safe harbor requirement that the service provider “not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity,” the court stated that “[t]here may be arguments whether revenues from advertising, applied equally to space regardless of whether its contents are or are not infringing, are ‘directly attributable to’ infringements, but in any event the provider must know of the particular case before he can control it. As shown by the discussion in Parts 1 and 2 above, the provider need not monitor or seek out facts indicating such activity. If ‘red flags’ identify infringing material with sufficient particularity, it must be taken down.”
Finally, the court addressed “three minor arguments” that “do not singly or cumulatively affect YouTube’s safe harbor coverage.” First, the court held that YouTube’s “three strikes” repeat infringer policy for terminating a user (whereby YouTube counts as only one strike against a user a single DMCA take-down notice or multiple take-down notices received within a two hour period) does not mean that this policy is not “reasonably implemented” as required by § 512(i)(1)(A). Second, YouTube’s use of Audible Magic, a fingerprinting tool that removes video automatically if it matches some portion of a reference video submitted by a copyright owner, and assigning strikes only when the rights-holder manually requests removal of the videos does not violate § 512(i)(1)(A). Third, the plaintiffs complained that YouTube removes only the specific clips identified in DMCA notices, and not other clips which infringe the same works. The plaintiffs pointed to the provision in § 512(c)(3)(A)(ii) that a notification must include “Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.” The court held that this “representative list” reference “would eviscerate the required specificity of notice (see discussion in Parts 1 and 2 above) if it were construed to mean a merely generic description (‘all works by Gershwin’) without also giving the works’ locations at the site, and would put the provider to the factual search forbidden by § 512(m).”