Gary Rinkerman (Drinker Biddle and Reath LLP) has kindly send us his opinion on two recent cases before US Courts involving Google: «Viacom vs. YouTube» is the first of those cases.
In one of the most «watched» cases on the «safe harbor» provisions of the Digital Millennium Copyright Act («DMCA»), the Second Circuit issued its opinion in «Viacom v. YouTube«. In essence, Viacom sought more than a billion dollars in copyright infringement damages for tens of thousands of video clips that were uploaded to YouTube by users and appeared on the YouTube website between 2005 and 2008.
The Court’s main holdings are:
1. The Court affirmed the lower court’s ruling that the «safe harbor» shelter from copyright liability will be forfeited if the service provider has: (a) actual knowledge that the subject material is infringing; or (b) is aware of facts or circumstances from which the infringing activity is apparent. However, in order to disqualify the service provider from safe harbor protection, the knowledge must be «knowledge of specific and identifiable infringements.»
ALSO, the Court reversed the lower court’s grant of summary judgment of non-liability on the part of the defendants. A key factor in the reversal was evidence that, in determining how much it should bid for global rights for Premier League soccer content, YouTube searched its own site to gather information on how many «hits» occurred with regard to such unlicensed content already posted on YouTube. In addition, internal YouTube memoranda regarding the potential to preemptively remove «blatantly infringing» material actually identified specific examples of such materials on the YouTube site. Additional discussions and identification of specific, infringing content also were present in internal YouTube emails. Therefore, the Court remanded for further proceedings on the issue of specific knowledge in light of the above-identified evidence.
ALSO, the Court stated that «willful blindness» to specific instances of infringement can abrogate DMCA immunity, although there is no general duty to monitor.
2. Rejecting another aspect of the lower court approach, the Court held that, in order to remove the safe harbor protection of the DMCA, the «right and ability to control» the content on the part of the service provider «requires something more that the ability to remove or block access to materials posted on a service provider’s website.» On the other hand, the Court stressed that «the right and ability to control» abrogation of DMCA immunitydoes not require specific knowledge of particular infringements. Therefore, the Court remanded on the issue of whether plaintiffs «adduced sufficient evidence to allow a reasonable jury to conclude that YouTube had the right and ability to control the infringing activity and received a financial benefit attributable to that activity.»
3. In defining what is meant by DMCA-sheltered «storage» of accused content, the Court agreed that several software functions that, e.g., facilitated access and display fell within a broad definition of «storage.» HOWEVER, while certain software functions that facilitated access and playback did not trigger liability, the Court remanded on the issue of whether syndication by YouTube of content specifically selected by YouTube for wireless access (including transcoding the video content for display on wireless equipment) constitutes mere «storage.» In the Court’s view, plaintiffs argued «with some force» that this business transaction fell outside the definition of mere «storage.» The Court therefore remanded for a factual determination and application of law on the issue of whether any of the plaintiff’s content was included in the materials specifically selected by YouTube for transcoding for wireless access.
4. The Court rejected the argument that YouTube’s practice of restricting its content identification technology to only certain designated «partners» violated the requirement that the DMCA-sheltered service providers use standard technical measures to identify and terminate repeat infringers. In other words, the Court held that YouTube’s policy of not making its proprietary search mechanisms available for general use did not disqualify YouTube from protection under the DMCA.
We anticipate that there will likely be further vigorous dispute regarding the Court’s remand – as well as a continued trend in submission of amicus briefs on these and related issues. (The current opinion lists more than thirty such amicus briefs.)