YouTube Gets Decisive Win in Viacom/FAPL Case

By Eric Goldman

Viacom International, Inc., v. YouTube, Inc., 2010 WL 2532404 (SDNY June 23, 2010).

The Viacom v. YouTube case has been noteworthy for numerous reasons. It involves the cherished Internet brands YouTube and Google, it’s been going on forever (see my initial blog post on Viacom’s complaint from March 2007), and it’s generated lots of water cooler talk (see the salacious details from the parties’ summary judgment motions).

Now, the case is also noteworthy because it hands YouTube a clean and decisive win on the DMCA 512(c) safe harbor. The ruling basically says that the current industry standard practices of notice-and-takedown for user-caused copyright infringement satisfies the safe harbor. Although this seems like an uncontroversial result when stated like that, the reality is that copyright owners have repeatedly angled to get a better deal than Congress gave them in 512. This case will squelch many of those copyright owner requests to force service providers to go beyond current industry-standard practices. Of course, we have to see how the opinion fares on appeal.

The opinion stays above the fray and avoids most of the messy facts from the parties’ voyeuristic filings earlier this year. On the decisive question of what constitutes YouTube’s actual knowledge or red flags awareness of infringement, the court immediately turns to the legislative history. Fortunately for YouTube, the legislative history is replete with defense-favorable statements. Thus, the court summarizes the legislative history by saying its “tenor” requires that service providers have “knowledge of specific and identifiable infringements of particular individual items. Mere knowledge of prevalence of such activity in general is not enough.” Subsequently, the court reinforces that “General knowledge that infringement is ‘ubiquitous’ does not impose a duty on the service provider to monitor or search its service for infringements.”

The court supports these conclusions by noting the difficulty service providers have monitoring/policing large databases of UGC and the fact that the notice-and-takedown system worked well in Viacom’s case when it actually submitted notices. The court also favorably cites the ccBill, UMG v. Veoh, Corbis v. Amazon and Tiffany v. eBay cases. By doing so, the court subtly does two things. First, it imports 9th Circuit 512 jurisprudence into a 2nd Circuit-bound court, and second, it imports the 2nd Circuit’s recent secondary trademark liability analysis into a copyright case. Both moves also favored YouTube.

The latter is particularly interesting because it seems to accept a notice-and-takedown regime for trademark–not the statutory requirement, but nevertheless the logical implication of Tiffany v. eBay. Perhaps we are seeing some convergence in secondary copyright and secondary trademark infringement cases, despite their different statutory foundations.

The court distinguishes Grokster “and its progeny” (Usenet.com, Fung and LimeWire) as having “little application here.” Grokster, Fung and LimeWire all involved P2P file sharing services, which are not covered by 512 (although I’ve always thought 512(d) deserved more consideration than it did). The court distinguishes Fung as “an admitted copyright thief.”

The court further distinguishes Grokster by saying “its application to the particular subset of service providers protected by the DMCA is strained.” I completely agree with this, and the court properly notes the factual differences between a P2P file sharing service and a web host. In response to Viacom’s apparent belief that Grokster was highly relevant, the court cites that “Viacom’s General Counsel said in a 2006 e-mail that ‘….the difference between YouTube’s behavior and Grokster’s is staggering.'” This was the only duplicitous statement the court pulled out of the many ones quoted (on both sides) in the summary judgment briefs.

The court makes a few other abbreviated rulings rejecting various attempts to kick YouTube out of the safe harbor:

* YouTube’s video embedding feature does not eliminate the 512 safe harbor, citing the Io v. Veoh case. The court does indicate that some activities are beyond the fair meaning of “storage” and ancillary activities, and it appears the plaintiffs could try to push this angle (although I doubt they will get much play if they try).

* the court says that YouTube’s “right and ability to control” must be measured on an item-specific basis, so the “right and ability to control” does not kick in until the service provider gets a qualifying notice or otherwise has red flags awareness. This is a powerfully restricted interpretation of that term.

* YouTube’s method of counting three strikes did not disqualify it from the statute. This includes the fact that YouTube does not count a strike when Audible Magic automatically filtered UGC.

* the fact that the statute allows copyright owners to submit a “representative list” of infringed works does not override their obligation to specifically identify the location of any allegedly infringing UGC files in their notices.

The opinion does not clearly say it applies to all of the plaintiffs and not just Viacom. However, Google’s post indicates that it thinks the opinion applies to all plaintiffs, thus effectively removing most issues from the case. The court orders the parties to talk further to see what’s left open by this ruling. There isn’t much. One possibility: 512(c) only eliminates damages, not an injunction, so the plaintiffs could press for an injunction despite this ruling. However, based on the judge’s treatment of the plaintiffs’ arguments, I don’t see how that would be productive. At most, I think this judge would only require YouTube to keep following the statute–something YouTube has already proven that it does. Therefore, probably the next major step in the case will be the appellate ruling–which, in the Second Circuit, could take years.

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