The Software IP Report

DMCA Copyright Infringement Safe Harbors Addressed by 2nd Circuit

By Charles Bieneman

Categories: Copyright, The Software IP Report

In a high-profile case, the Second Circuit has defined contours of the safe harbor provisions of the Digital Millennium Copyright Act, 17 U.S.C. § 512(c); those provisions relieve a service provider of liability for certain copyright infringements.  Viacom Int’l, Inc. v. YouTube, Inc, Nos. 10-3270-cv and 10-3342-cv (2nd Cir. April 5, 2012).  In a detailed opinion that, while vacating summary judgment in favor of the defendants, was not as friendly as the plaintiff copyright owners surely hoped for, the court explained that, among other things, a service provider loses the DMCA’s safe harbor protection for copyright infringement only where the service provider has knowledge of “specific and identifiable infringements.”

The plaintiffs sued YouTube and Google, alleging “direct and secondary copyright infringement based on the public performance, display, and reproduction of approximately 79,000 audiovisual ‘clips’ that appeared on the YouTube website between 2005 and 2008.”  The district court had found that the defendants “had insufficient notice of the particular infringements in suit,” and had therefore granted the defendants’ summary judgment motion, holding “that the defendants were entitled to DMCA safe harbor protection.”

The district court had reasoned that the defendants could have been disqualified from the safe harbor of § 512(c)(1)(A) only where they had “knowledge of specific and identifiable infringements.”  Further, the district court thought that a service provider must have “item-specific knowledge of infringing activity” in order “to have the ‘right and ability to control’ infringing activity under § 512(c)(1)(B).”  Moreover, according to the district court, “the replication, transmittal, and display of videos on YouTube constituted activity ‘by reason of the storage at the direction of a user’ within the meaning of § 512(c)(1).”

The Second Circuit agreed with much of the district court’s reasoning, but vacated the summary judgment order because “a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website,” and because it was error to interpret “the ‘right and ability to control’ provision to require ‘item-specific’ knowledge.”  Further, the Second Circuit remanded the case for additional fact-finding concerning whether one YouTube software function fell “within the safe harbor for infringement that occurs ‘by reason of’ user storage.'”

In particular, looking at 17 U.S.C. § 512(c)(1)(A), the Second Circuit agreed with the district court that “the statutory phrases ‘actual knowledge that the material . . . is infringing’ and ‘facts or circumstances from which infringing activity is apparent’ refer to ‘knowledge of specific and identifiable infringements.”  The court explained that its reasoning was based on the text of the statute.  If a service provider became aware of infringing material, the statute provided that the safe harbor was retained by acting expeditiously to remove it.  Allowing the service provider to be liable for general knowledge of infringing activity would undercut the statute’s incentive for the service provider to take steps to disable infringing material of which it was specifically aware.

The plaintiffs had also argued that summary judgment for YouTube was inappropriate because YouTube had been willfully blind to alleged infringements.  The court noted that DMCA Section 512(m) explicitly stated that DMCA safe harbor protection cannot be conditioned on affirmative monitoring by a service provider.”  However, the willful blindness doctrine does not impose an affirmative duty to monitor.  Therefore, the court held that “that the willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate knowledge or awareness of specific instances of infringement under the DMCA.”  Willful blindness was an issue for the district court to consider on remand.

Concerning the “right and ability to control” infringing activity, the court remanded the case “for further fact-finding on the issue of control” because the district court “erred by importing a specific knowledge requirement into the control and benefit provision.”  Congress did not intend the “right and ability to control” provision, § 512(c)(1)(B), to be coextensive with the doctrine of vicarious liability.  Therefore “the ‘right and ability to control’ infringing activity under § 512(c)(1)(B) requires something more than the ability to remove or block access to materials posted on a service provider’s website.” (Internal quotations omitted.)  The determination of that “something more” was a difficult question to be answered on remand.

Concerning whether “YouTube’s software functions fell within the safe harbor for infringements that occur ‘by reason of’ user storage,” 17 U.S.C. § 512(c)(1), the Second Circuit affirmed the district court’s “holding with respect to three of the challenged software functions–the conversion (or ‘transcoding’) of videos into a standard display format, the playback of videos on ‘watch’ pages, and the ‘related videos’ function [used to identify clips related to a clip being watched by a user].”  However, further fact-finding was needed concerning “the third-party syndication of videos uploaded to YouTube.”  The first three functions were not, as the plaintiffs alleged, content production, but instead were used to facilitate use access to content.  Third party syndication, in contrast, may not occur “at the direction of a user” when involving manual selection of copyrighted material for a third party.