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IP/Entertainment Case Law Updates

Perfect 10, Inc. v. Google, Inc.

Court grants in part and denies in part Google’s partial motions for summary judgment on the issue of whether it is entitled to several DMCA safe harbors for linking, caching and storing images that allegedly infringed plaintiff’s copyrighted works.

Plaintiff Perfect 10 maintains a subscription website with pictures of nude models. Perfect 10 filed suit against Google for, among other things, direct, contributory, and vicarious copyright infringement based on Google’s (1) linking to third-party websites that host images that infringe Perfect 10’s copyrights, (2) caching portions of websites that host infringing images, and (3) hosting infringing images on its own servers that have been uploaded by users of its “Blogger” service.

Google filed three motions for partial summary judgment on the basis that it is entitled to immunity under three different provisions of the Digital Millennium Copyright Act (“DMCA”): 17 U.S.C. § 512(d) for its web and image searches, 17 U.S.C. § 512(b) for its caching feature, and 17 U.S.C. § 512(c) for its Blogger service.

The court first determined that Google met the three threshold requirements for all three of the DMCA safe harbors: (1) it is a service provider as defined in the DMCA; (2) it adopted and reasonably implemented a repeat infringer policy; and (3) it accommodates and does not interfere with standard technical measures used by copyright owners to identify or protect copyrighted works. The parties did not dispute the first and third requirements, but Perfect 10 argued that Google did not have an adequate repeat infringer policy because, among other reasons, Google tracks only email addresses and not the actual names of users. The court held that the DMCA does not impose an obligation on service providers to track their users in any particular way (citing Io Group, Inc. v. Veoh Networks, Inc., 586 F. Supp. 2d 1132 (N.D. Cal. 2008)), and concluded that Google meets the threshold requirements for the DMCA safe harbors.

The court then turned to the three safe harbors: § 512(d) for Google’s web and image services, and to bloggers and caching that link to content hosted on third-party sites; § 512(b) for caching; and § 512(c) for storage of content on Google’s servers at the direction of bloggers. One issue central to all three safe harbors was whether Perfect 10’s DMCA notices were defective and thus did not provide Google with sufficient knowledge of the alleged infringement. The DMCA specifies that in order for a notification of claimed infringement to be effective, it must include:
(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
(ii) 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.
(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
17 U.S.C. § 512(c)(3).

Perfect 10 argued that Google acquired knowledge of infringement when it received notices of infringement from Perfect 10 and, that once Google had this knowledge, it did not act expeditiously to suppress the infringing links. Google countered Perfect 10's argument that Google had knowledge of infringement by asserting that Perfect 10's notices of infringement were defective for a multitude of reasons and that Google nonetheless expeditiously processed numerous notices in circumstances where it was feasible to do so.

Perfect 10’s notices were divided into three groups: Group A contained email notices sent to the wrong address; Group B contained notices comprised of spreadsheets and cover letters; and Group C notices were comprised of cover letters, DVDs and hard drives.

The court held that the majority of Perfect 10’s notices were defective because they failed to adequately identify the copyrighted work, and failed to include all of the required information in a single written document. All of the notices in Group A were defective because they were not sent to the address Google provided for receiving DMCA notices and because they did not specifically identify the infringing works. All of the notices in Group C were defective because they did not identify the copyrighted work and because they did not provide all of the requirements for a DMCA notice in a single written communication. Some of the notices in Group B were defective, but some were compliant. The court granted Google’s motion for partial summary judgment for the § 512(d) safe harbor with regard to the defective notices and denied the motion with respect to the compliant notices.

Turning to Google’s motion for partial summary judgment for its caching feature, the court granted Google’s motion under § 512(d) (rather than § 512(b) as requested by Google) because Perfect 10 failed to present evidence that any of its compliant notices identified any specific material in Google’s cache as infringing. The court had ordered the parties to file statements identifying where in the existing briefs on Google’s motion for safe harbor there is any reference in any of the Group B notices identifying any specific material on Google’s cache as infringing. According to the court, nowhere in any of the Group B notices did Perfect 10 identify any specific material in Google’s cache as infringing. Instead, Perfect 10 cited to one Group B notice that mentioned in passing that “ has thousands of Perfect and has many as well.” The court stated that the mere reference to “thousands of Perfect 10 infringements” could not reasonably be deemed to confer notice of infringement as to these cache pages on Google. Because there were no compliant DMCA notices pertaining to infringing material in Google’s cache, the court held it unnecessary to go through the analysis of whether Google might also be entitled to safe harbor under § 512(b) because Perfect 10 failed to indicate in its notices that the infringing material had been removed from the originating site.

Finally, the court granted Google’s motion for partial summary judgment for the 512(c) safe harbor because the notices listing infringing Blogger URLS failed to provide “information reasonably sufficient to permit the service provider to locate the material” as required by 17 U.S.C. § 513(c)(3)(A)(iii). The court also ruled that, in order to be eligible for the safe harbor under § 512(c), Google had to show that it did “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.”

Relying on UMG Recordings, Inc. v. Veoh Networks Inc., 665 F. Supp. 2d 1099 (C.D. Cal. 2009), the court held that a service provider’s mere ability to remove material is insufficient as a matter of law to establish the right and ability to control the infringing activity. Because Perfect 10 failed to show that Google had the right or ability to control the infringing activity, the court held that it need not determine whether Google received a financial benefit from the alleged infringement.

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