Court of Appeals Issues Opinion in Viacom v. YouTube

April 5, 2012. A two judge panel of the U.S. Court of Appeals (2ndCir) issued its opinion [39 pages in PDF] in Viacom v. YouTube, affirming in part and vacating the judgment of the U.S. District Court (SDNY).

The District Court granted summary judgment to Google/YouTube on all claims in 2010. It held that the Section 512(c) safe harbor of the Digital Millennium Copyright Act (DMCA) requires knowledge or awareness of specific infringing activity. The Court of Appeals affirmed this. However, the Court of Appeals also vacated for several reasons, reversed other holdings of the District Court, and remanded to the District Court for further proceedings.

This opinion neither provides finality in these proceedings, nor clarity to several legal issues.

No party obtained the holding that it had sought. The Court of Appeals holding has many elements, some of which favor Google/YouTube, and some of which favor Viacom and the other content industry plaintiffs. Moreover, on some issues the Court of Appeals rendered a vaguely worded holding, without articulating a legal standard to be applied by the District Court. Interactive web site operators and rights holders still lack notice as to the precise meaning of DMCA safe harbor.

The Court of Appeals upheld the District Court's holding that the Section 512(c)(1)(A) safe harbor requires knowledge or awareness of specific infringing activity. This is a victory for Google and other companies that make money from advertising on web sites that enable users to upload the copyrighted works of others.

However, the Court of Appeals vacated the summary judgment order because it also held that "a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website". Although, this only applies to a limited list of uploaded videos.

Also, the Court of Appeals held that the willful blindness doctrine may be applied to demonstrate knowledge or awareness of specific instances of infringement under § 512(c)(1)(A). But, the Court of Appeals did not elaborate on what willful blindness means in the context of uploaded infringing content.

Also, the Court of Appeals held that the District Court erred in interpreting the Section 512(c)(1)(B) "right and ability to control" infringing activity to require "item-specific" knowledge. But again, the Court of Appeals opinion lacks elucidation.

Also, the Court of Appeals affirmed the District Court's holding that three of the challenged YouTube software functions fall within the safe harbor for infringement that occurs "by reason of" storage at the direction of the user, and remand for further fact-finding with respect to a fourth software function.

Therefore, the case now goes back to the District Court, where much fact finding and legal interpretation remains to be done. One might also predict that this case will eventually be back before the Court of Appeals.

DMCA Safe Harbor. This case involves the meaning of the safe harbor provision of the 1998 DMCA, codified at 17 U.S.C. § 512, which Google/YouTube raised as a defense.

Subsection 512(c) pertains to "Information Residing on Systems or Networks At Direction of Users". Subsection 512(c)(1) provides, in full, with emphasis added, as follows:

Then, subsection 512(c)(2) pertains to service providers' designation of agents to receive notifications of claimed
infringement. Finally, subsection 512(c)(3) lists the requisite elements of claims of infringement.

District Court Proceedings. Viacom and other rights holders filed a complaint [27 pages in PDF] in the U.S. District Court (SDNY) on March 12, 2007, against Google and YouTube alleging violation of copyright law in connection with the operation of a commercial web site that permits users to publish copies of copyrighted works, without license. See, story titled "Viacom Files Complaint Against Google and YouTube Alleging Violations of Copyright Law" in TLJ Daily E-Mail Alert No. 1,551, March 13, 2007.

The six count complaint alleged direct infringement by public performance, direct infringement by public display, direct infringement by reproduction, inducement of copyright infringement, contributory copyright infringement, vicarious copyright infringement.

The other plaintiffs are Comedy Partners, Country Music Television, Inc., Paramount Pictures Corporation, and Black Entertainment Television.

In addition, Premier League, Bourne Co., Cal IV Entertainment, LLC, Cherry Lane Music Publishing Company, Inc., X-Ray Dog Music, Inc., Fédération Française de Tennis, Murbo Music Publishing, Inc., and Stage Three Music (US), Inc. filed a similar complaint in the same District Court, and requested class action status. The two actions were assigned to the same judge. Summary judgment motions were considered together.

The District Court granted summary judgment to Google/YouTube on June 23, 2010. It ruled in its opinion and order [30 pages in PDF] that the activities of Google/YouTube at issue in this action fall within the safe harbor protection of the DMCA.

The District Court wrote that the "critical question is 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 (here, claimed to be widespread and common), or rather mean actual or constructive knowledge of specific and identifiable infringements of individual items." (Parentheses in original.)

The District Court held 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 District Court added that mere knowledge of the prevalence of such activity in general is not enough.

The District Court also rejected a willful blindness theory of knowledge.

The District Court also held that Google/YouTube did not have a "right and ability to control" infringing activity within the meaning of Subsection 512(c)(1)(B).

See, story titled "District Court Grants Summary Judgment to YouTube in Copyright Infringement Case" in TLJ Daily E-Mail Alert No. 2,100, June 23, 2010.

The plaintiffs brought the present appeals to the 2nd Circuit.

Court of Appeals: 512(c)(1)(A) and Actual Knowledge. This subsection provides that "A service provider shall not be liable ... for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider ... does not have actual knowledge that the material or an activity using the material on the system or network is infringing".

The Court of Appeals wrote that the meaning of knowledge in this subsection is the most important question upon appeal.

The Court of Appeals wrote that "we are persuaded that the basic operation of § 512(c) requires knowledge or awareness of specific infringing activity", and "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".

This affirms the District Court on this question.

However, the District Court applied this holding to the facts before the court, found no dispute, and granted summary judgment to Google/YouTube. Rule 56 of the Federal Rules of Civil Procedure (FRCP) provides that "The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law."

The Court of Appeals vacated the summary judgment order "because a reasonable jury could conclude that YouTube had knowledge or awareness under § 512(c)(1)(A) at least with respect to a handful of specific clips". It remanded the case to the District Court "to determine whether YouTube had knowledge or awareness of any specific instances of infringement corresponding to the clips-in-suit".

The Court of Appeals elaborated that surveys by plaintiffs and Google/YouTube that indicated that a high percentage of uploaded videos were infringing "are insufficient, standing alone, to create a triable issue of fact as to whether YouTube actually knew, or was aware of facts or circumstances that would indicate, the existence of particular instances of infringement".

However, the Court of Appeals noted that the summary judgment evidence included "internal YouTube communications that do refer to particular clips or groups of clips" that were infringing. Hence, "Upon a review of the record, we are persuaded that the plaintiffs may have raised a material issue of fact regarding YouTube's knowledge or awareness of specific instances of infringement."

If upon remand the plaintiffs were to prevail as to these clips, they would only obtain damages based upon these enumerated infringing clips.

The Court of Appeals also held that "The willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate knowledge or awareness of specific instances of infringement under § 512(c)(1)(A)". It remanded the case to the District Court "to consider the application of the willful blindness doctrine in the first instance".

Willful blindness is a common law doctrine, not referenced by the DMCA. It has a long history, but prior to these cases, it had not been considered in the context of the DMCA.

The Court of Appeals held that the DMCA does not abrogate the willful blindness doctrine. It noted that Section 512(m) provides that the DMCA safe harbor protection cannot be conditioned on affirmative monitoring by a service provider, but this is not the same thing as willful blindness.

However, the Court of Appeals left the District Court and parties with little guidance as to what willful blindness means in the context of uploading of infringing works.

Court of Appeals: 512(c)(1)(B) and Right and Ability to Control. This subsection provides that "A service provider shall not be liable ... for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider ... does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity".

The Court of Appeals wrote that the right and ability to control infringing activity means more than "the ability to remove or block access to materials posted on a service provider’s website".

However, the opinion is unclear regarding what more is required.

The Court of Appeals held that the District Court "erred by requiring ``item-specific´´ knowledge of infringement in its interpretation of the ``right and ability to control´´ infringing activity under 17 U.S.C. § 512(c)(1)(B)". It therefore reversed the District Court on this issue, and remanded the case "for further fact-finding by the District Court on the issues of control and financial benefit".

Reaction. Sherwin Siy of the Public Knowledge (PK) stated in a a short release that "We are pleased with the Appeals Court ruling. The Court upheld the basic principles of the Digital Millennium Copyright Act (DMCA). Crucially, the Court rejected Viacom's attempt to create a new duty of those hosting content to monitor actively for infringement in order to qualify for the law's safe-harbor provisions. The Court upheld the need for knowledge of specific instances of infringement in the DMCA, and that a general awareness of possible infringement is not sufficient."

He elaborated in a longer release that "Despite the Digital Millennium Copyright Act's (DMCA) clear statements that services don't need to monitor, the content companies keep trying to pick away at other components of the law to work their way around it."

The PK filed an amicus curiae brief with the Court of Appeals. See, story titled "Public Knowledge Urges Court of Appeals Not to Require Filtering As Prerequisite for DMCA Safe Harbor" in TLJ Daily E-Mail Alert No. 2,219, April 7, 2011.

More Information. The two District Court cases are Viacom International, Inc. et al. v. YouTube, Inc. et al., D.C. No. 07 Civ 2130 (LLS), and Football Association Premier League Limited, et al. v. YouTube, Inc., D.C. No. 07 Civ. 3582 (LLS), both in the U.S. District Court for the Southern District of New York, Judge Louis Stanton presiding.

The Court of Appeals cases are Viacom International, Inc. et al. v. YouTube, Inc., et al., App Ct. No. 10-3270-cv. and Football Association Premier League Limited v. YouTube, Inc., et al., App. Ct. No. 10-3342-cv.

A two judge panel comprised of Judge Jose Cabranes and Judge Debra Ann Livingston affirmed in part, vacated in part, and remanded the case to the District Court. The late Judge Roger Miner had been assigned to the panel, but died on February 18, 2012. Judge Cabranes wrote the opinion of the Court.

See also, TLJ stories titled: