YouTube Stays Safe under DMCA “Safe Harbor”

or the second time in three years, the U.S. District Court for the Southern District of New York determined, in Viacom v. YouTube, that YouTube qualified for and was shielded from copyright infringement liability by the Digital Millennium Copyright Act (“DMCA”).

The Background

In March 2007, Viacom (and other content providers) sued YouTube (and Google) alleging that YouTube should be held liable for copyright infringement for hosting approximately 79,000 infringing videos that appeared on YouTube websites between 2005 and 2008 (the “clips-in-suit”), including clips from The Daily Show, Family Guy, and South Park. The lawsuit sought more than $1 billion in damages.

The case was decided in YouTube’s favor on summary judgment in 2010 by district Judge Louis L. Stanton. Viacom appealed the decision to the Second Circuit, which remanded in 2012 to the district court for further consideration of the issues discussed below. The district court issued its ruling on remand on April 18, 2013, again granting summary judgment on all issues in YouTube’s favor.

The Primary Issues

At the direction of the Second Circuit, the district court addressed three main issues on remand: (1) whether YouTube had “knowledge or awareness of any specific infringements” regarding the clips-in-suit; (2) whether YouTube willfully blinded itself to specific infringements; and (3) whether YouTube had the “right and ability to control” infringing activity on its website. In the event that the court answered any of three questions above in the affirmative, YouTube would lose “safe harbor” protection from copyright infringement under the DMCA.

With respect to each of the three questions, the district court answered as follows:

1. Did YouTube Have Knowledge of Specific Infringements?

No. Viacom acknowledged that it lacked “the kind of evidence that would allow a clip-by-clip assessment of actual knowledge” of specific infringement of the clips-in-suit. Nonetheless, Viacom argued that, given that the DMCA “safe harbor” is a defense, it was YouTube’s burden to show that actual knowledge of infringement did not exist. Judge Stanton, while calling the argument “ingenious,” declined to adopt the reasoning. He ruled that, where service providers are concerned, “Congress has determined that the burden of identifying what must be taken down is to be on the copyright owner,” which requires that the burden of proof remain on Viacom, not YouTube. Since Viacom could not show actual knowledge, YouTube was in the clear.

2. Was YouTube Willfully Blind to Specific Infringements?

No. The Second Circuit ruled that the DMCA “safe harbor” is inapplicable where a service provider is “willfully blind” of specific instances of infringement, as willful blindness is tantamount to knowledge. Here again, Judge Stanton determined that Viacom came up short. He wrote that the examples of willful blindness proffered by Viacom “give at most information that infringements were occurring with particular works, and occasional indications of promising areas to locate and remove them. The specific locations of infringements [i.e., the specific URLs of infringing videos, presumably] are not supplied: at most, an area of search is identified, and YouTube is left to find the infringing clip.” According to Judge Stanton, it does not matter that YouTube may have been able to readily locate infringing videos, as willful blindness does not equate to an affirmative duty to monitor and, under Section 512(m) of the DMCA, YouTube had no duty to “affirmatively seek[] facts indicating infringing activity.”

3. Did YouTube Have the “Right and Ability to Control” Infringements?

No. Under the DMCA, a service provider loses “safe harbor” protection where it financially benefits from infringing conduct which it has the “right and ability to control,” regardless of whether knowledge of infringement exists. According to the Second Circuit, Viacom needed to show that YouTube had “something more” than the ordinary power to remove or block access to material posted on its website. Judge Stanton interpreted this as requiring Viacom to show that YouTube had influenced or participated in the infringement, i.e., by having “high levels of control over activities of users” (e.g., by pre-screening or editing user content) or engaging in “purposeful conduct” that actively encouraged infringement. “[K]nowledge of the prevalence of infringing activity, and welcoming it,” according to Judge Stanton, “does not itself forfeit the safe harbor.”

The court found that the only evidence that YouTube may have pointed users to infringing videos was that two of the clips-in-suit were highlighted on its homepage. However, he determined that “no reasonable jury could conclude from that evidence that YouTube participated in its users’ infringing activities” in these two cases. One of the two clips was featured at the request of the creators of a work contained within the clip and the other was a promotional video of a comedy group featured at the request of the group’s manager. Judge Stanton summarized his conclusion as follows: “There is no evidence that YouTube induced its users to submit infringing videos, provided users with detailed instructions about what content to upload or edited their content, prescreened submissions for quality, steered users to infringing videos, or otherwise interacted with infringing users to a point where it might be said to have participated in their infringing activity.”

The Takeaway

The court was very reluctant to hold the service provider liable for hosting infringing material stored at the direction of users. According to the court, a service provider must have actual knowledge or be willfully blind of “the specific locations of infringements” to lose the DMCA “safe harbor” from copyright infringement liability. Essentially, a service provider must actually know (or be aware of facts and circumstances) that indicate that a video located at a specific URL is infringing. Anything short of this is apparently insufficient to strip a service provider of its DMCA protection.

Viacom has indicated it will appeal the case again to the Second Circuit.