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.

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Martin P.J. Kratz
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