CASE SUMMARY
FACTS
Plaintiff Viacom International Inc. ("Viacom") owns several large television and movie production studios, including Comedy Central and MTV. Defendant YouTube, Inc. ("YouTube") is a video-sharing website that allows users to upload and share content. Viacom alleged that YouTube was liable for direct and secondary copyright infringement based on the public performance, display, and reproduction of approximately 79,000 "clips" that appeared on the YouTube website between 2005 and 2008. Although YouTube complied with Viacom's takedown requests pursuant to the Online Copyright Infringement Liability Limitation Act, which is part of the Digital Millennium Copyright Act of 1998 ("DMCA"), 17 U.S.C. § 512(c), Viacom argued that YouTube had "actual knowledge" of the infringing videos prior to the takedown requests and accordingly was not eligible for the "safe harbor" provision of the DMCA. Viacom sought one billion dollars in damages.
In 2010, the district court granted YouTube's motion for summary judgment, holding that YouTube was protected by the "safe harbor" provision of the DMCA. The court relied on the DMCA's legislative history to hold that "[m]ere knowledge of [the] prevalence of such activity in general, is not enough." The court also found that YouTube needed "red flag knowledge" of the infringements to disqualify it from immunity under the DMCA's "safe harbor" provisions.
Following an appeal by Viacom, the Second Circuit remanded the case to the district court, ordering it to consider whether (1) on the current record, YouTube had knowledge or awareness of any specific infringements; (2) on the current record, YouTube willfully blinded itself to specific infringements; (3) YouTube had the "right and ability to control" infringing activity within the meaning of § 512(c)(1)(B); and (4) whether any clips-in-suit were syndicated 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 § 512(c)(1), so that YouTube could properly claim the protection of the § 512(c) safe harbor.
ANALYSIS
On remand, the district court again granted YouTube's motion for summary judgment. In analyzing YouTube's knowledge of any specific infringements, the court asked both parties for evidence of any specific knowledge YouTube had of the infringing nature of each of the allegedly infringing YouTube clips. YouTube presented over 60,000 clips that were a part of the suit but did not have a takedown request. Viacom argued that it lacked "the kind of evidence that would allow a clip-by-clip assessment of actual knowledge" because there were so many infringing clips on YouTube that it would be impossible to do a clip-by-clip analysis. The court disagreed, holding that while the argument was "ingenious," Viacom could not shift the burden of proving "that YouTube knew or was aware of the specific infringements of the works in suit" to YouTube. "Congress," Judge Stanton held, "has determined that the burden of identifying what must be taken down is to be on the copyright owner."
Next, the court held that YouTube did not willfully blind itself to specific infringements. Specifically, it held that the e-mails between YouTube executives about the types of materials that should be removed from YouTube were not sufficient evidence to show that YouTube had knowledge of individual infringement: "[I]n imputing knowledge of the willfully disregarded fact, one must not impute more knowledge than the fact conveyed." The DMCA, the court held, only disqualifies a service provider from "safe harbor" protection if that provider is willfully blind to "specific and identifiable instances of infringement."
Viacom argued that YouTube's internal e-mail exchanges about potentially infringing content and subject matter that should be more heavily "policed" was sufficient evidence of actual knowledge. The court disagreed, holding that, at most, YouTube had "information that infringements were occurring with particular works, and occasional indications of promising areas to locate and remove them," which knowledge was insufficient to disqualify YouTube from the DMCA safe harbor.
The court also found that YouTube did not have the "right and ability to control" infringing activity within the meaning of the DMCA. Every service provider is presumed by the DMCA "to have the ability to remove (or block access to) material posted on its website, and to exercise that function in its daily business, including removal of infringing material in response to take-down notices." Therefore, the court found, the ability to "control infringing activity," even without knowledge of specifics, means "something more" than simply "ordinary power over what appears on the provider's website."
Viacom argued that YouTube was profiting from infringement while taking advantage of the DMCA's "safe harbor" provisions. The court held that this alone did not disqualify YouTube from the "safe harbor" because YouTube did not influence users in their infringing activity, and did not have the required "control" beyond the "normal ability of every service provider to decide what appears on its platform." YouTube did not prescreen content, offer users advice about the content of uploaded videos, or edit user videos. In response, Viacom argued that the "something more" was established by YouTube's willingness to allow its service to be used to infringe and by YouTube's exercise of "ultimate editorial judgment and control over the content available on the site." Viacom pointed to YouTube's decisions to remove some, but not all, infringing material and by its enforcement of rules prohibiting some content, such as pornography. The court disagreed, holding that YouTube's decisions to remove some videos but not others and restrict its monitoring efforts to certain groups of infringing clips did not exclude it from the "safe harbor" "regardless of their motivation."
Finding that "evidence also establishe[d] that YouTube's search technologies are an 'automated system' where 'users alone choose' to view infringing content, that YouTube does 'not participate in those decisions,' and that YouTube therefore does not control the infringing activity," the court declined to find liability.
CONCLUSION
The court's decision provides guidance to both Internet service providers and content providers regarding their respective obligations under the DMCA.
This article previously appeared in Incontestable Trademark Newsletter - June 2013.
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