Monday, May 21, 2012

DMCA Safe Harbor is Not Absolute – Do YOU Know What Your Users are Posting on Your Website?

Does your website allow users to post content?  Companies that host websites that allow user generated content have long operated under a belief that they enjoyed broad immunity from copyright infringement claims pursuant to the "safe harbor" provided by the Digital Millennium Copyright Act (“DMCA”).  Subsection 512(c) of the Copyright Act provides limitations on Service Provider liability for storage of copyrighted material that was uploaded, or placed, at the direction of a user.  Section 512(k) defines "Service Provider" as "an entity offering the transmission ... [of] digital online communications, between [users] of material of the user's choosing, without modification to the content of the material as sent or received."

As the recent Viacom decision in the Second Circuit instructs, Service Providers should recognize that such broad immunity may not exist.  As a result, it is wise to think carefully about website policies relating to the removal of user-generated content.  In particular, to what extent might the Service Provider be disqualified from the "safe harbor" provisions of the DMCA. 

In Viacom, a case of first impression, the court held that the “willful blindness” doctrine applied to demonstrate the knowledge or awareness of a Service Provider of specific instances of infringement under the DMCA.  Viacom Int’l, Inc. v. YouTube, Inc., 10-3270, 10-3342, Slip Op. at 22 (2nd Cir. 2012).   Moreover, the court held that Service Providers must stand trial if there is evidence from which a reasonable juror could conclude that defendants had actual knowledge or awareness of specific instances of infringement under the DMCA. The court noted that while the DMCA does not require affirmative monitoring, online providers and service providers shall not make a “deliberate effort to avoid guilty knowledge.”

District Court Proceedings
The Viacom case involved two related class actions that included as plaintiffs:  Viacom International, Inc., The Football Association Premier League Ltd., and various film studios, television networks, music publishers, and sports leagues for themselves and on behalf of others similarly situated.  The plaintiffs  alleged that defendants YouTube, Inc., YouTube, LLC, and Google Inc. (collectively, “YouTube”) engaged in 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.  Plaintiffs demanded statutory damages in an amount up to $150,000 per work infringed.

The United States District Court for the Southern District of New York granted YouTube summary judgment holding that defendants are entitled to safe-harbor protection from infringement liability provided by DMCA in 17 U.S.C. §512(c). 

Second Circuit Opinion
On appeal, the Second Circuit interpreted § 512(c), confirmed the District Court correctly concluded that the § 512(c) safe harbor requires knowledge or awareness of specific infringing activity, but held that summary judgment in favor of YouTube was premature because a reasonable juror could find that YouTube had actual knowledge or awareness of specific infringing activity on its website.

The court concluded that the statutory phrases “actual knowledge that the material … is infringing” and “facts or circumstances from which infringing activity is apparent” both refer to “knowledge or awareness of specific and identifiable infringements.” The court explained that under § 512(c)(1)(A), knowledge or awareness alone does not disqualify the Service Provider for the safe harbor; rather, the Service Provider that gains knowledge or awareness of infringing activity retains safe-harbor protection only if it “acts expeditiously to remove, or disable access to, the material.” 17 U.S.C. § 512(c)(1)(A)(iii).

The court thus held that “actual knowledge or awareness of facts or circumstances that indicate specific and identifiable instances of infringement will disqualify a Service Provider from the safe harbor and if it fails to act “expeditiously to remove, or disable access to, the material.”  Slip Op at 19.

This test is not new, but applying this test to the facts found in the record of this case, the Second Circuit found:
·    an email by the director of video partnerships for Google and YouTube, requesting that his colleagues take down any “clearly infringing, official broadcast footage” from a list of certain premier league clubs in advance of a meeting with the heads of several major sports teams and leagues,

·    a 2006 report by one of YouTube’s co-founders stating that episodes and clips of certain well-known shows could still be found on YouTube’s website and that YouTube would benefit from preemptively removing content that was “blatantly illegal”, and

·    emails by another co-founder that suggested that a CNN video clip of the space shuttle should be left on the website until CNN’s legal department requests that it be taken down. 
In light of these facts, the court held that the plaintiffs raised a genuine issue of material fact regarding YouTube’s knowledge or awareness of specific instances of infringement.  As a result, the court remanded the case for a determination of whether any specific infringements of which You Tube had knowledge or awareness correspond to the clips–in-suit.  Slip Op. at 22 .  Further, the court remanded the case to the District court for a determination of whether the plaintiffs have adduced sufficient evidence to allow a reasonable jury to conclude that You Tube had the right and ability to control the infringing activity and received a financial benefit directly attributable to that activity.  Slip Op. at 28-29.

In light of Viacom, Service Providers of online services that accept user-posted content such as artwork, text, video clips, music clips, television broadcasts and radio broadcasts should immediately seek counsel’s advice on removing or disabling access to infringing content when a take-down notice or other information raises any reasonable inference of actual knowledge of specific infringing activity. It may be preferable to notify the poster of the content and request evidence that the content is authorized or otherwise not infringing.   If there is any serious doubt about whether the Service Provider is on notice of facts that raise such a reasonable inference of infringement, it may be preferable to remove the content than incur the risk of copyright infringement with a potential of up to $150,000 in statutory damages per work and payment of the copyright owner’s reasonable attorneys’ fees. 


Paul Van Slyke

Gregory Casamento