|In an ever-mounting struggle against online piracy, media giant Viacom has requested a new judge to oversee its case versus the online video site YouTube. The request comes only a few months after Judge Louis Stanton granted summary judgment in favor of YouTube, finding it was entitled to safe harbor protection under the Digital Millennium Copyright Act (DMCA).
The Digital Millennium Copyright Act,1 passed in 1998, provides “online service providers,” defined as “a provider of online services … including an entity offering the transmission, routing or providing of connections for digital online communications,”2 a “safe harbor” from liability to copyright holders in the case of copyright infringement on its website. However, there are some limitations to the safe harbor provision. The service provider may not have “actual knowledge” that material constitutes infringement,3 nor may the service provider be “aware of facts or circumstances from which infringement is apparent,”4 and the service provider may not be “willfully blind” to such infringement. The service provider must also have a system in place to remove any infringing content, and terminate any repeat offenders.
|Viacom, admittedly, had a tough task ahead of it, in proving YouTube had actual knowledge or was “willfully blind” to infringing content – frequently referred to as the “red flag” test. Though not precedent in this particular instance, in the case of Perfect 10, Inc. v. CCBill LLC,5 the court ruled that ignoring website names with “illegal” and “stolen” in the actual URL did not constitute a “red flag.”6 Additionally, unless a service provider knows that a specific video is infringing on a specific copyright, the DMCA has been read to hold that the service provider does not have “actual knowledge” of infringement.7|
|Indeed, Judge Stanton held true to previous trends in his ruling. Citing the fact that YouTube has an extraordinary amount of content uploaded to its site every day, it was not under an affirmative duty to monitor, nor could YouTube know of, specific instances of copyright infringement.8 Additionally, Judge Stanton held that the DMCA excused YouTube of doing any independent search to identify whether certain clips on its website were infringing upon any copyrighted content.9 Judge Stanton clearly states his opinion on the governing standard: “[K]knowledge of the prevalence of infringing activity, and welcoming it, does not itself forfeit the safe harbor. To forfeit that, the provider must influence or participate in the infringement.”10|
|Though YouTube disabled a viewer’s ability to flag a particular video for infringement, stopped regularly monitoring its site for infringement, and kept infringing videos on its website until specifically informed of such infringement by the content owner, none of those actions, in the court’s view constituted control over infringing videos, or specific knowledge of infringing videos.11|
|Viacom has requested not only that the court overturn Judge Stanton’s decision, but also that the Court remove Judge Stanton to “preserve the appearance of justice.”12 Viacom believes that there is an issue of fact as to whether YouTube turned a blind eye to infringing videos.13 Whether the Court obliges Viacom’s request, the decision by Judge Stanton, as it stands now, holds wide-reaching implications for copyright owners. The DMCA’s takedown procedure, which puts the onus on copyright holders to police the Internet for infringement of their work, and inform any service provider of such infringement, has led to many copyright owners being overzealous with their takedown notices – with Google at one point reporting that 40 percent of the takedown notices it received were invalid.14|
|Forcing content owners to forever scour the Internet, and the admittedly incredible amount of content on YouTube in particular, as the Second Circuit appears to have done at least under the current DMCA laws, will be incredibly burdensome upon content owners. Though Viacom may actually have the funds and personnel to actively police for infringement, smaller copyright holders may be forced to endure infringement of their work for simple lack of resources.|
|Additionally, if copyright owners are expectedly overbroad in determining what is or is not infringement, then some legitimate fair uses of infringing content may be removed under the DMCA. Fair use is an affirmative defense to copyright infringement,15 which analyzes the purpose and character of any infringing use, the nature of the copyrighted work, the amount and substantiality of the portion of the copyrighted work used, and the effect of the infringing use on the market place for the copyrighted work.16 Fair use is an oft-cited defense for infringement, and is intended to foster news reporting and education without having to worry about infringement suits. Works that would otherwise be considered fair-use may be improperly removed if left to the whims of content owners.|
|It appears that copyright owners may be woefully ill-equipped to comply with the DMCA under the Second Circuit’s interpretation of the law. Whether the ruling stands or is overturned will have dramatic effects on how copyright law is enforced, not only in New York but across the United States. It seems, however, a strange dichotomy the court has cut here – that website owners are not at all responsible for actively checking content uploaded to its website because that would be too burdensome, but at the very same time it is not burdensome to content owners to scour the Internet for their own works, however numerous they may be. It will be interesting to see whether or not a new judge, or judges across the country in similar cases, is receptive to that sort of dichotomy.|
|In any case, the face of copyright enforcement in this country is one that appears to be changing as the now seven-year-old Viacom case continues. It is important, not only for content owners, but for intellectual property attorneys, to monitor the Viacom case. Advising content owners not only of their rights, but in their responsibilities particularly as it regards the ever-changing technological landscape, will become absolutely critical in protecting a client’s rights. Depending on how Viacom ultimately is decided, either content owners or website owners may drastically see their rights and liabilities shift. This could cause much more robust barriers to entry on either the content or website-sides of business.|
|Keith Black is an Attorney currently with American Greetings Properties in New York City. He has drafted and negotiated several television and home video contracts, including contracts for Internet-exploitation of television shows and movies.|
| 1. 17 U.S.C. § 512.
2. Online Service Providers, U.S. Copyright Office, http://www.copyright.gov/ onlinesp.
3. 17 U.S.C. § 512(c)(1)(A)(i).
4. Id. at § 512(c)(1)(A)(ii).
5. 488 F.3d 1102 (9th Cir. 2007).
6. Id. at 1114.
8. Viacom Int’l Inc. et al v. YouTube et al., 07 civ 2103 (LLS) (S.D.N.Y. Apr. 18, 2013)(“Viacom Remand”) at 10.
10. Id. at 13.
11. Id. at 19-20.
12. Viacom Int’l Inc. et al v. YouTube et al., 13-1720-cv Appellate Brief 2d Cir. at 57, available at http://www.groklaw.net/article.php?story=20130726211308315&query=ViacomOpeningBrief2ndappeal
13. Id. at 22.
14. See Ted Gibbons, Google Submission Hammers Secrion 92A, PC World New Zealand (Mar. 16, 2009), 15. 4-13 MELVILLE B. NIM MER & DAVID NIMMER, NIMMER ON COPYRIGHT § 13.05 (Matthew Bender rev. ed. 2010).
15. 4-13 Melville B. Nimmer & David Nummer, Nimmer on Copyright § 13.05 (Matthew Bender rev. ed. 2010).
16. 17 U.S.C. § 107.
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