Nathan Fan is a JD candidate at Osgoode Hall Law School.
The Southern District Court of New York has sided with YouTube in a decision released on 23 June 2010. In his summary judgment, Judge Louis Stanton held that YouTube qualified as a “service provider” operating within the confines of the DMCA § 512 safe harbour provision and was thus not liable to Viacom for copyright infringement.
The long-awaited decision tentatively concluded Viacom’s lawsuit that was initially filed in 2007. Viacom sued YouTube on claims that its users had uploaded “tens of thousands of videos on YouTube, resulting in hundreds of millions of views” of Viacom’s copyrighted works without consent. Viacom claimed that YouTube had actual knowledge and was aware of the facts or circumstances surrounding such infringing activity, but “failed to do anything about it”. As a result of the Viacom-owned TV shows being made available on YouTube (e.g. South Park, Family Guy), Viacom claimed over one billion dollars in damages from copyright infringement.
Judge Stanton’s summary judgment dealt with the issue of whether YouTube was entitled to rely upon the DMCA’s 17 U.S.C. § 512(c) “safe harbour” provision that protects service providers against liability for direct and secondary copyright infringement claims due to insufficient notice of the particular infringements. From the onset, Judge Stanton characterized YouTube as a “provider of online services or network access, or the operator of facilities therefor” (as defined in § 512(k)(1)(B)) and was therefore a service provider for the purposes of § 512(c).
One of Viacom’s main assertions was that YouTube’s general knowledge of infringing activities of its users was sufficient to cast YouTube outside the protection of the DMCA safe habour. However, Judge Stanton found that the 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” (§ 512(c)(1)(A)(i) and (ii) respectively) were to be interpreted to mean actual or constructive knowledge of specific and identifiable instances of infringement. This finding was supported by references to the legislative history of the DMCA, where Judge Stanton concluded that the “tenor of the foregoing provisions is that the phrases...describe knowledge of specific and identifiable infringements of particular individual items”. The mere knowledge of the prevalence of infringing activity in general was not sufficient to remove YouTube from the safe habour. Judge Stanton explained further 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”.
In its arguments, Viacom had also relied heavily upon the decision of MGM v Grokster and its “progeny” (Arista Records v Usenet.com, Columbia Pictures Industries v Fung, Arista Records v Lime Group) where the courts had found copyright infringement by various P2P service providers. However, the court distinguished these cases in that these P2P cases did not involve the DMCA safe harbour provision. In the case of Fung, the safe harbour defense was denied based on evidence of “purposeful, culpable expression and conduct” aimed towards promoting copyright infringement. Further, the court noted that the P2P models differed significantly from YouTube’s platform, and thus the cases “have little application in this case”.
Ultimately, Judge Stanton concluded that while YouTube might be unaware of the uploaded content, it has identified an agent to receive complaints of infringement and removed the identified material once it learned of such infringement (here, it was noted that the DMCA regime worked efficiently in YouTube’s case: when Viacom sent one mass take-down notice consisting of some 100,000 videos, virtually all of the videos were removed by YouTube by the next business day). Thus, “[t]o such a provider, the DMCA gives a safe harbour, even if otherwise he would be held as a contributory infringer under general law”.
The summary judgment also included other various issues that received brief ruling. Under § 512(c)(1)(B), the safe harbour provision requires 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”. Viacom claimed that YouTube had such “right and ability to control such activity”. However, the court held that the “right and ability to control” first requires knowledge of such infringing activity, which again must be item-specific (i.e. the provider must know of the particular case of infringement before he can control it). As held earlier in the judgment, the provider need not monitor or seek out knowledge or facts of such an activity.
Judge Stanton also commented on the reasonableness of YouTube’s removal policy. YouTube’s policy is to remove only the specific videos identified in DMCA notices and not other unspecified videos which may infringe the same works. Viacom argued that § 512(c)(3)(A)(ii) allowed for copyright owners to issue DMCA notices with a “representative list” of infringed works. However, the court held that such “representative lists” must be accompanied by “information reasonably sufficient to permit the service provider to locate the material” (as per § 512(c)(3)(A)(iii)). To construe “representative list” as a merely generic description (i.e. “all works by Gershwin”) without giving the works’ specific location on the site would “eviscerate the required specificity of notice”.
The court also held that YouTube’s three-strikes user termination policy was a reasonable take-down policy in accordance with the DMCA.
The court’s decision to allow YouTube the protection of the DMCA safe harbour comes as a major victory for websites that host such material. Judge Stanton has presented a guiding example for host websites in implementing policies to satisfy the DMCA safe harbour requirements. However, it also means that copyright owners are now placed with the burden of actively monitoring and patrolling YouTube and other such sites for instances of infringement and to send DMCA take-down notices for each instance.
As a decision with somewhat cursory reasoning, some commentators have criticized the court’s ruling. Having consulted the legislative history of the DMCA for much of the case, Amanda Mooney criticizes the court for not consulting the legislative history when determining the characterization of YouTube as a service provider falling within the safe harbour. Mooney states that “the law was meant to protect traditional internet service providers (“ISP”) from liability from the acts of their users...The law was not intended to allow money making machines to wilfully turn a blind eye to the multitude of infringement that takes place on their sites”.
Ben Sheffner also notes his disappointment with the judgment, stating that Stanton’s decision was extremely cursory and did not properly consider many of the cases brought before the court. For example, Sheffner argues that the P2P cases were brushed off without proper consideration, especially in terms of inducement infringement, arguing that Judge Stanton “appears to have rejected the holding of Fung and Usenet” [citations omitted]. According to Sheffner, Judge Stanton’s decision seems to suggest that a site can actively induce infringement but remain within the DMCA safe harbour as long as it complies with the DMCA notices.
On the other hand, groups like the Electronic Frontier Foundation (EFF), who filed an amicus brief supporting YouTube in the case, have supported the decision. EFF stated that while this is a major victory for YouTube and user-generated content sites, the decision is hardly groundbreaking as it “simply confirms what lawyers for Internet companies have been telling their clients for years, based on the language of the DMCA safe harbors”.
Others like Dan Gillmor have called the decision a “victory for online speech [and] collaboration”. Gillmor stresses that the online environment is a much more collaborative space than the top-down, centralized media of the past. This decision means that sites that help to create such collaborative spaces will not be bogged down by investigative responsibilities that would ultimately prove too onerous for such sites to operate. Gillmor also notes that Congress has enacted similar protection for site hosts in other legislation. For example, Section 230 of the Communications Decency Act protects site hosts from liability for defamatory speech posted on their site by commentators.Viacom is unsatisfied with the decision and has stated it plans to appeal.