Can You Be A Little More Specific? General Knowledge of Copyright Infringement Not Sufficient to Forfeit DMCA Safe Harbor Protection: Viacom International, Inc. v. YouTube, Inc.

Almost since the founding of YouTube in 2005, the on-line video service has been labeled by commentators as a top virtual destination for copyright-infringing material. According to a lawsuit brought by Viacom International, Inc., YouTube was aware of this alleged infringement as a general matter, and through advertising revenues profited handsomely from it. Nevertheless, a federal judge has held that YouTube’s general knowledge alone, without information about specific instances of infringement, was not enough to forfeit the protection of the Digital Millennium Copyright Act (“DMCA”).

The DMCA, as codified at 17 U.S.C. § 512(c), provides an internet service provider (“ISP”) with “safe harbor” protection against copyright infringement suits under certain conditions. If somebody uses the ISP’s service to store infringing material, the ISP is protected if it does not have actual or constructive knowledge of the infringement, and if it acts quickly to remove such material once it does have knowledge of it. Also, the ISP must not receive a financial benefit directly attributable to infringing activity that it has the “right and ability to control.”

When YouTube did receive notice of specific infringing material, it acted quickly. In February 2007, Viacom sent a mammoth take-down notice to YouTube, naming about 100,000 specific clips. Those clips were removed nearly overnight. However, Viacom alleged that YouTube did little, if anything, to locate and remove potentially infringing material on its own, even though it generally knew that such material existed. In March 2007, Viacom sued YouTube, claiming that this general knowledge gave rise to liability for copyright infringement. YouTube moved for summary judgment, asserting entitlement to safe harbor under the DMCA.

On June 23, 2010 Judge Louis L. Stanton, federal District Court Judge for the Southern District of New York, issued an opinion and order agreeing with YouTube. It was not enough that YouTube was generally aware of, and even welcomed, copyright-infringing material on its website. Rather, in order to lose safe harbor protection, YouTube had to have had knowledge of specific infringing materials, and sufficient information (such as the URL address) to locate and take down those materials. Additionally, Judge Stanton held that, even if YouTube directly profited, it could not be charged with “the right and ability to control” the infringing activity until it had that specific knowledge.

Consistent with the language of 17 U.S.C. § 512(m), Judge Stanton’s ruling puts the burden of on-line policing squarely, and solely, on the copyright holder. An ISP, by contrast, has essentially no duty to determine the copyright ownership of the material it is storing, no matter how prevalent infringement may be, and no matter how much money is gained from that infringement.

Viacom plans to appeal to the Second Circuit which, interestingly enough, recently encountered similar policing issues, albeit unrelated to the DMCA, in Tiffany (NJ), Inc. v. eBay Inc. In that case, in a decision that may foreshadow an appellate defeat for Viacom, the Court held that even though eBay may have known in a very general sense that its website facilitated sales of counterfeit Tiffany products, such general knowledge alone was not sufficient to establish trademark infringement.

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