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District Court Dismisses Copyright Infringement Case Against YouTube; Viacom Vows to Appeal
By Owen J. Sloane and Rachel M. Stilwell
A federal court in New York ruled last week that YouTube was shielded from liability for copyright infringement even though its users regularly distributed unlicensed and copyrighted content on the network. The United States District Court for the Southern District of New York agreed with YouTube that it was protected by a "safe harbor provision" of the Digital Millennium Copyright Act (DMCA), as long as it promptly removes infringing material when notified of a violation. See Viacom Int'l Inc. v. YouTube, Inc., 07 Civ. 2103 (LLS) (S.D.N.Y. June 23, 2010).
The Court noted that the DMCA states that an internet service provider cannot qualify for safe harbor protection if it has "actual knowledge that the material or an activity using the material on the network is infringing" and yet fails to remove the infringing content. The Court held that YouTube would be liable for infringement only if it had acquired knowledge by the network of "specific and identifiable infringements of individual items" and also had failed to remove such infringing material. The Court ruled that a "general awareness that there are infringements" occurring on the network was insufficient to strip YouTube of safe harbor protections, given that YouTube consistently removed infringing content when notified of its existence on the network.
The Court relied heavily on legislative history of the DMCA (i.e., what lawmakers were saying when they were constructing the statute). The Court also relied, in part, on a recent decision by the Court of Appeals for the Second Circuit in Tiffany (NJ) Inc. v. eBay Inc., 600 F.d 93 (2d Cir. April 1, 2010), in which it was found that eBay's general knowledge of trademark infringement occurring on its website was insufficient to find eBay vicariously liable for the actions of its infringing users. The Second Circuit had held that "Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary." Note that this ruling by the Second Circuit involves an entirely different statute aimed at protecting trademarks rather than copyrights and is applicable by analogy only.
The Court in the YouTube case concluded that:
"If a service provider knows 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 claimed that the DMCA takedown-notice regime "works efficiently," even though copyright owners have long complained that the safe harbor protections of the DMCA places a heavy burden upon them to monitor sites on which the infringements take place, and send takedown notices repeatedly. Yesterday's ruling makes clear that, at least in New York, internet service providers such as YouTube need not take any actions to police their networks, and may instead rely on notifications by copyright owners of infringement claims.
The Court also distinguished YouTube's business model from that of Grokster, which had previously been found liable for copyright infringement by the United States Supreme Court. The District Court in the YouTube case, noted that Grokster had existed "solely to provide the site and facilities for copyright infringement," and that Grokster failed to remove content after receiving DMCA notices, while YouTube has a mix of legitimate and infringing works on its network, and had consistently removed infringing works "swiftly" after receiving DMCA notices.
The Court also noted that YouTube had shown that it implemented a policy of terminating the accounts of users who had received three warnings of infringing activity, which is consistent with a requirement under the DMCA that an ISP claiming safe harbor protections must develop and utilize a policy for dealing with "repeat infringers."
Interestingly, we have on several different occasions requested of YouTube that they explain to us what their "repeat infringer" policy is, and they refused to disclose that information to us, despite that fact that we represented copyright owners who claimed (in DMCA-compliant takedown notices) that their works had been repeatedly infringed on YouTube. We hope that the Court's decision, at the very least, will put pressure on those ISPs claiming safe harbor protections to divulge the terms of their "repeat infringer" policies so that copyright owners can analyze whether such measures are sufficient to meet the DMCA's statutory requirements.
Viacom has vowed to appeal the ruling and we will closely follow any such appellate activity.
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