Canada: YouTube (Part III) Notice-And-Take-Down Safe Harbour Under The DMCA

Last Updated: June 3 2013
Article by Martin P.J. Kratz

A driving force for the development of the Internet was to provide certainty for Internet service organizations on the liability exposure they may have for acts of third parties on their Internet sites.

Given that many Canadian Internet web sites do receive U.S. visitors and many also utilize a DMCA safe-harbour provision, understanding the scope of protection that the safe harbour provides can be important to Canadians. The ongoing legal saga in Viacom International Inc., et al. v. YouTube, Inc., YouTube, LLC, and Google, Inc., 07 Civ. 2103 illuminates the scope of the DMCA safe harbour.

The DMCA provides safe-harbour protection against certain copyright infringement claims in respect of third-party copyright infringing content posted on the Internet service organization's web site. The scope and extent of the safe harbour protection was tested in, Viacom International Inc., et al. v. YouTube, Inc., YouTube, LLC, and Google, Inc.,07 Civ. 2103 and 3582, decided June 23, 2010 (D.C. S.D. N.Y.), a case in which the plaintiffs alleged direct and secondary infringement claims, including claims for inducement contributory liability. The defendants moved for summary judgment that they are entitled to the protection of the safe harbour, because they had insufficient notice, under the DMCA, of the particular infringements in suit.

The Court examined the DMCA's safe-harbour provisions, 17 U.S.C. § 512(c), (m) and (n). The Court found that defendant YouTube operates a web site onto which users may upload video files free of charge. Uploaded files are copied and formatted by YouTube's computer systems and then made available for viewing on YouTube.

The plaintiffs alleged that the defendants were not only aware of but also welcomed copyright infringing content being posted to their web site and the defendants profited from such activities. The plaintiffs argued that defendants are liable for vicarious infringement of their works, and for the direct infringement of those works alleging that the defendants had 'actual knowledge' and were "aware of facts and circumstances from which infringing activity was apparent," but failed to "act expeditiously" to stop it; and that the defendants "received a financial benefit directly attributable to the infringing activity" and "had the right and ability to control such activity".

The Court found that when YouTube's designated agent received a DMCA notice that a specific item infringed a copyright then they swiftly removed it. The key issue for the court was to assess the statutory language in respect of the degree of knowledge YouTube may have had of the specific infringements.

The Court focused on the critical question whether the statutory 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" in § 512(c)(1)(A)(i) and (ii) mean a general awareness that there are infringements or rather mean actual or constructive knowledge of specific and identifiable infringements of individual items.

The Court conducted a lengthy review of the legislative history behind the DMCA and noted that the phrases "actual knowledge that the material or an activity" is infringing, and "facts or circumstances" indicating infringing activity, describe knowledge of specific and identifiable infringements of particular individual items. The Court noted that mere knowledge of prevalence of such activity in general is not enough. The Court noted that to require an Internet service organization discover which of their users' postings infringe a copyright would contravene the structure and operation of the DMCA.

On appeal, Docket No. 10-3270-cv 2nd Cir. (April 5, 2012), the 2nd Circuit confirmed that the § 512(c) safe harbour requires knowledge or awareness of specific infringing activity but vacated the order granting summary judgment because they were of the view that a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its web site. The appeal court further held that the District Court erred by interpreting the "right and ability to control" infringing activity to require "item-specific" knowledge. The 2nd Circuit sent that case back to the District Court to determine whether, on the current record, YouTube had knowledge or awareness of any specific infringements or willfully blinded itself to specific infringements or had the right and ability to control infringing activity within the meaning of § 512(c)(1)(B).

The US District Court addressed the issues posited by the 2nd Circuit in 07-cv-02103 (D.C. S.D. N.Y. April 18, 2013). When pressed on the question of demonstrating actual knowledge Viacom admitted that there was no evidence to allow a clip-by-clip assessment of actual knowledge of YouTube but asserted that it was not Viacom's burden to provide notice. Rather Viacom asserted that YouTube had the burden to show it did not have notice of the infringements.

The District Court reviewed the legislative history of the safe harbour under the DMCA and noted that the legislative requirement is that the owner of the copyright or his agent is required to identify the infringements by giving notice to the service provider. The Court noted that the system was workable and used the example, in 2007, when Viacom gave notice to YouTube of over 100,000 infringements which were taken down by YouTube the next business day.

In the absence of evidence to permit a clip-by-clip assessment of actual knowledge, the Court examined substitute equivalents to actual knowledge, such as willful blindness or the right and ability to control infringing activity within the meaning of § 512(c)(1)(B).

In this case the Court found no willful blindness in this case. The Court noted that the DMCA does not require YouTube to search for infringements.

The Court noted that the right and ability to control infringing activity within the meaning of § 512(c)(1)(B) requires something more than merely the ability to remove or block material posted on its web site. The Court noted that where a service provider so influences or participates in infringing activity, while gaining a financial benefit from it, may lose the safe harbour. This requires a high level of control or purposeful conduct.

As a result, the Court summarized the governing principle that knowledge of the prevalence of infringing activity, and welcoming it, does not itself forfeit the safe harbour. To lose the safe harbour the service provider must influence or participate in the infringement.

The evidence showed that YouTube placed the burden on Viacom to search YouTube for infringing clips but the Court noted that it is where the burden is placed under the DMCA safe harbour.

The Court found YouTube was not required to monitor infringing clips proactively nor to permit others to have access to YouTube's proprietary search mechanisms. The Court found that YouTube's influence on its users consisted of: exercising its right not to monitor the service for infringements, enforcing basic rules regarding content (such as limits on violence, hate or sexual material), facilitating access to user stored materials regardless (and without actual or constructive knowledge) of whether it was infringing, and monitoring its site for some infringing materials and assisting some content owners in their efforts to also do so. The Court found no evidence YouTube induced its users to submit infringing videos,  provided users with detailed instructions about what content to upload, edited their content or prescreen submissions for quality, steered users to infringing videos nor interacted with infringing users to a point where it could be said that YouTube also participated in such user's infringing activity.

In these circumstances the Court found that YouTube did not have the right and ability to control infringing activity within the meaning of § 512(c)(1)(B).

The Court lastly considered YouTube's syndication agreements under which Apple, Sony, Panasonic, TiVo and AT&T users were able to obtain YouTube content on their mobile devices. The Court found that such content was merely making available to users user-stored videos and that such arrangements were protected by the § 512(c) safe harbour.

The YouTube case provides some comfort for web site operators who operate on the notice-and-take-down model and seek to shelter under the DMCA safe harbour. Clear messages from the Court are that the safe harbour does not require proactive investigation but also that it is critical that the web site operator properly enable the DMCA safe harbour by satisfying applicable conditions, have meaningful procedures in place to quickly and carefully operate in response to applicable infringement notices and otherwise not operate the web site solely to provide the site and facilities for copyright infringement.

It is reported that the latest decision is again to be appealed. On appeal we may see further details of the DMCA safe harbour illuminated.

A version of this article first appeared in SLAW.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Martin P.J. Kratz
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions