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SDNY Again Finds in Favor of YouTube on Remand
Practical Law Legal Update 8-525-9085 (Approx. 4 pages)
SDNY Again Finds in Favor of YouTube on Remand
by PLC Intellectual Property & Technology
| Published on 22 Apr 2013 • USA (National/Federal) |
On April 18, 2013, in Viacom v. YouTube, the US District Court for the Southern District of New York granted the renewed motion for summary judgment in favor of the defendants, YouTube, Inc and Google, Inc., and held that the Digital Millennium Copyright Act's (DMCA) safe harbor provisions protected the defendant service providers. The case was before the SDNY on remand from the US Court of Appeals for the Second Circuit.
On April 18, 2013, in Viacom v. YouTube, the US District Court for the Southern District of New York granted the defendants' renewed motion for summary judgment, again holding that the defendants qualify for safe harbor protection under section 512(c) of the Digital Millennium Copyright Act. The SDNY heard the case on remand from the US Court of Appeals for the Second Circuit. In an April 5, 2012 opinion, the Second Circuit reversed the district court's original grant of summary judgment for the defendants and remanded the case for briefing on whether YouTube:
- Had actual or red-flag knowledge of specific infringements of the works at issue (clips-in-suit).
- Was willfully blind to specific infringements.
- Had the right and ability to control infringing activity within the meaning of section 512(c)(1)(B) of the DMCA.
- Syndicated any of the allegedly infringing material to a third party and, if so, whether the syndication occurred "by reason of storage at the direction of the user."
Knowledge of Specific Infringements
The SDNY held that the plaintiffs bore the burden of proving that YouTube had actual or red-flag knowledge of specific infringements of clips-in-suit, and found that they did not meet that burden.
Viacom conceded that it lacked the type of evidence necessary to assess whether YouTube had knowledge that any particular clips-in-suit were infringed, but argued that it was YouTube's burden to disprove knowledge as an element of an affirmative defense. The court rejected this argument, finding that it rests on a pre-DMCA concept and that the DMCA squarely placed the burden on the copyright owner or his agent to notify service providers of infringements.
Willful Blindness
The SDNY also found that the plaintiffs had not shown that YouTube had been willfully blind to specific infringements, noting that:
- The plaintiffs did not supply the specific locations of infringements. At most they identified an area of search, leaving YouTube to find the infringing clip.
- The DMCA excused YouTube from having to affirmatively seek facts indicating infringement.
Right and Ability to Control
The SDNY also held that YouTube did not have the right and ability to control infringing activity within the meaning of the safe harbor. The Second Circuit held that the right and ability to control infringing activity required "something more" than a service provider's ability to remove or block access to content, but then remanded the issue to the district court to determine both the standard and whether YouTube satisfied it.
Citing substantial Ninth Circuit precedent, the SDNY found that to forfeit the safe harbor protection, the service provider must influence or participate in the infringement. Applying this standard, the court rejected the plaintiffs' arguments that the "something more" was established by YouTube's:
- Willingness to allow its service be used to infringe.
- Exercise of editorial control over the content available on its site.
- Decision to stop regular monitoring in favor of taking down content only on receiving a takedown notice.
The court instead found that the plaintiffs' evidence had not shown more than a service provider's normal functioning and, in particular, did not show participation in, or coercion of, user infringement activity.
Syndication
Finally, the court found that YouTube had not syndicated any clips-in-suit. Specifically, the court noted that YouTube did not manually select and deliver videos to any third party other than under its agreement with Verizon Wireless, and that the clips delivered to Verizon Wireless did not include clips-in-suit. Under its other license agreements, YouTube transcoded videos to a format compatible with third-party technology, but stored the videos on its own systems. The SDNY held that this syndication served the purposes of the DMCA's safe harbor by providing access to material stored at the user's direction, and that the process merely combined two functions that the Second Circuit had already found to be protected by the DMCA's safe harbor provisions, specifically:
- Transcoding videos to allow them to be seen over the internet to most users.
- Playing back videos in response to user requests.