Safe-Harbor Considerations For Web Videos

The U.S. Copyright Act may provide a critical solution to that dilemma. The Act provides a statutory 'safe harbor' that potentially protects content-hosting service providers from liability to copyright owners. To understand how service providers may obtain safe-harbor protections, it is first necessary to review recent and pending cases that impact such protections and assist in developing certain future strategies to support such protections.

Several recently filed cases, including Tur v. YouTube Inc., 06-CV-64436 (C.D. Cal.), and Viacom International Inc. v. YouTube Inc., 07-CV-2103 (S.D.N.Y.), have garnered widespread attention in the copyright and online communities, in part due to the impact their ultimate determinations will have on YouTube's business model. The complaints in these cases allege that YouTube directly infringes copyrighted works by altering posted videos, and that it secondarily infringes such works by promoting infringing uses, deriving advertising revenue from such infringement, assisting other sites in linking to videos on YouTube's service, and not implementing reasonable measures that could substantially reduce or eliminate the posting of infringing content on the Web site. These matters are in their early stages.

Even more recently, Football Association Premier League Ltd. v. YouTube Inc., 07-CV-3582 (S.D.N.Y.), was filed as a class action, with plaintiffs ' led by the top soccer league in England ' purporting to represent all copyright owners whose rights YouTube allegedly violates. The class plaintiffs, however, face a daunting battle in their quest for class certification. For example, the potential size of the class is monstrous ' nearly 100,000 new videos are uploaded to YouTube every day, conceivably leading to a class comprised of millions of separate copyright owners ' and many of those are happy to have their copyrighted content uploaded to YouTube.

Finally, these types of lawsuits are not limited to YouTube. In UMG Recordings Inc. v. MySpace Inc., 06-CV-7361 (C.D. Calif.), several recording studios allege that MySpace, the social-networking Web site on which users create pages consisting in part of user-generated and organized content (text, pictures, recordings, videos, etc.), directly and secondarily infringes their protected recordings and music videos via this inclusion.

Both YouTube and MySpace are vigorously defending against the lawsuits, arguing their actions do not constitute infringement, and even if they do, that they fall within the safe-harbor defense in the Digital Millennium Copyright Act (DMCA).

Under the traditional copyright regime, an individual can be either primarily or secondarily liable for copyright infringement. Normally to establish primary infringement, a plaintiff must prove ownership of a valid copyright and copying of the protected work.

Individuals can also be found liable under several theories of secondary liability. Vicarious infringement occurs when the defendant possesses the 'right and ability' to supervise the infringing conduct and has an 'obvious and direct financial interest in the exploitation of copyrighted materials.' Contributory infringement occurs when one has knowledge of the infringing activity and 'induces, causes or materially contributes to the infringing work of another.' Finally, the U.S. Supreme Court announced a possible third theory of liability, which some practitioners have treated as separate and apart from contributory infringement. Under 'inducement liability,' 'one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.' MGM Studios Inc. v. Grokster, 545 U.S. 913, 936-937 (2005).

DMCA's Safe Harbor

The DMCA codified several safe-harbor defenses, which protect against potential liability due to a service provider's connection to infringing online materials and which are available to counter allegations of direct or secondary infringement. If certain enumerated conditions are met, these affirmative defenses
protect conduct that constitutes: a) transmitting or routing material through a system or network; b) system caching (automated temporary storage on a system or network); c) information residing on systems or networks at the direction of users; and d) information location tools. See, 17 U.S.C. 512. However, these potential limitations on liability apply only if the service provider both has adopted and reasonably implemented a policy to terminate repeat infringers and accommodates standard technical measures used by copyright owners to prevent piracy. In addition to the DMCA's safe-harbor defenses, traditional copyright defenses, such as fair use (use for purposes such as criticism, comment, news reporting, teaching, scholarship or research), remain available to any alleged infringer.

In both Tur and Viacom, YouTube has asserted as a defense Sec. 512(c), the safe harbor relevant to user-generated content Web sites. Section 512(c)(1) limits liability in the case of:

the storage at the direction of a user or material that resides on a system or network controlled or operated by or for the service provider, if the service provider: (A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material; (B) 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; and (C) upon notification of claimed infringement ' responds expeditiously to remove, or disable access to, the material that is claimed to be infringing.

The requirements of this notification are further spelled out in Sec. 512(c)(3).

Although a multitude of copyright-law issues will ultimately be important in the YouTube litigations, the applicability of the Sec. 512(c) safe harbor is especially significant. As such, in Tur both the plaintiff and YouTube filed separate motions for summary judgment concerning the applicability of the Sec. 512(c) safe harbor before any substantive discovery in the case had begun. Tur, who owns a substantial audiovisual library of his audiovisual news-reporting works, such as the O.J. Simpson freeway chase and the Reginald Denny beating, argued that YouTube cannot be protected by Sec. 512(c) because it does not fulfill the necessary condition of subpart (c)(1)(B). He reasoned, first, that because YouTube sells advertising on its Web site placed in juxtaposition to videos, some of which infringe, it receives a 'financial benefit directly attributable to the infringing activity.' Second, he argued that YouTube has 'the right and ability to control such [infringing] activity' because every YouTube user agreement grants YouTube a license to 'use, reproduce, distribute, prepare derivative works of, display, and perform' all uploaded video. (This test, pertinently, is the mirror of that for vicarious infringement. See, Grokster, 545 U.S. at 930.) However, the court determined that Tur had presented no evidence that YouTube had the 'right and ability' to control infringing activity, and denied his motion on that ground.

Meanwhile, YouTube argued that it had satisfied all the requirements of the safe-harbor provision. The court denied YouTube's motion, observing that YouTube had presented 'insufficient evidence regarding YouTube's knowledge and ability to exercise control over the infringing activity on its site,' and that although YouTube exerts maintenance and management over the site, the nature and extent of its maintenance and infringement are unclear. As such, the applicability of the safe harbor appears destined for trial, or at least further proceedings following some discovery.

The Tur court's twin opinions denying summary judgment are both comparatively succinct, reflecting in part the relatively diminutive submissions by the parties. The court indicated an unwillingness to grant the motions without more detailed support, observing that, although YouTube explained then that it could remove clips after uploading and flagging but could not prescreen or detect allegedly infringing videotapes due to a lack of technical capabilities, there was still 'insufficient evidence before the court concerning the process undertaken by YouTube from the time a user submits a video clip to the point of display on the YouTube Web site,' which prevented the court from adequately assessing YouTube's 'right and ability' to control infringing activity.

At first glance, the court's analysis might appear to be hypertechnical, but it is likely trying to avoid a top-level decision on a matter of first impression; furthermore, the court may have realized that YouTube appears to review postings in some manner before they are publicly available, because, for instance, no pornography ends up on the site. Jonathan Purow, 'The Copyright Implications of YouTube,' 18 N.Y.S.B.A. Entertainment, Arts & Sports L.J. 58, 61 (2007). The remaining YouTube matters have yet to reach the 'right and ability to control' issue, but the court's decisions provide both guidelines as to the type of detailed factual showing a court will expect in order to grant summary judgment on the safe-harbor issue, and a warning that such motions are perhaps better left until at least some further discovery has taken place.

Conclusion

Given the Tur result, it is difficult to predict how the courts will ultimately treat the safe-harbor defense for YouTube and other similar Web sites. Most believed that Tur would be, in some sense, a skirmish before the all-out Viacom battle ' one fought by wealthier copyright holders with a much larger library of works ' that might help guide how the safe harbor is to be applied, or at least provide a possible resolution to the issue. However, Tur announced that he was withdrawing his case in California and instead joining the Premier League proposed class-action suit in New York. (Many others, such as the National Music Publishers' Association, also positioned to join the suit.) With no prompt settlement of the applicability of the safe-harbor defense in Tur, it appears instead that Viacom will provide the first substantive determination of the safe harbor's applicability to YouTube.

Every day, nearly 100-million videos are viewed on YouTube (www.youtube.com), making it an international phenomenon. YouTube allows users to upload videos to its Web site, which then may be searched for and viewed by other visitors. Seemingly overnight, users have uploaded everything from homemade comedies or stunts, to videos of UFOs, to parodies of popular entertainment, to highlights of last week's ballgame. Users often own the copyright of, or utilize a license for, the videos they upload. Other videos, however, contain copyrighted content that its owners wish to protect and financially benefit from, by not allowing free, unauthorized copying and distribution. Although the large-scale communication on YouTube effectively spreads information, copyright owners believe it directly infringes their rights and poses a serious threat to their ability to secure financial rewards for legally protected content.

From YouTube's perspective, taking burdensome steps to prevent the posting of potentially infringing content could destroy the business model and consumer goodwill upon which it relies. [Although YouTube recently announced it was tesing a new copyright filtering process.] This information sharing/rights protection dilemma is not solely limited to YouTube ' many Web sites and other service providers face decisions every day concerning the propriety of user-generated content.

Copyright's Safe Harbor

The U.S. Copyright Act may provide a critical solution to that dilemma. The Act provides a statutory 'safe harbor' that potentially protects content-hosting service providers from liability to copyright owners. To understand how service providers may obtain safe-harbor protections, it is first necessary to review recent and pending cases that impact such protections and assist in developing certain future strategies to support such protections.

Several recently filed cases, including Tur v. YouTube Inc., 06-CV-64436 (C.D. Cal.), and Viacom International Inc. v. YouTube Inc., 07-CV-2103 (S.D.N.Y.), have garnered widespread attention in the copyright and online communities, in part due to the impact their ultimate determinations will have on YouTube's business model. The complaints in these cases allege that YouTube directly infringes copyrighted works by altering posted videos, and that it secondarily infringes such works by promoting infringing uses, deriving advertising revenue from such infringement, assisting other sites in linking to videos on YouTube's service, and not implementing reasonable measures that could substantially reduce or eliminate the posting of infringing content on the Web site. These matters are in their early stages.

Even more recently, Football Association Premier League Ltd. v. YouTube Inc., 07-CV-3582 (S.D.N.Y.), was filed as a class action, with plaintiffs ' led by the top soccer league in England ' purporting to represent all copyright owners whose rights YouTube allegedly violates. The class plaintiffs, however, face a daunting battle in their quest for class certification. For example, the potential size of the class is monstrous ' nearly 100,000 new videos are uploaded to YouTube every day, conceivably leading to a class comprised of millions of separate copyright owners ' and many of those are happy to have their copyrighted content uploaded to YouTube.

Finally, these types of lawsuits are not limited to YouTube. In UMG Recordings Inc. v. MySpace Inc., 06-CV-7361 (C.D. Calif.), several recording studios allege that MySpace, the social-networking Web site on which users create pages consisting in part of user-generated and organized content (text, pictures, recordings, videos, etc.), directly and secondarily infringes their protected recordings and music videos via this inclusion.

Both YouTube and MySpace are vigorously defending against the lawsuits, arguing their actions do not constitute infringement, and even if they do, that they fall within the safe-harbor defense in the Digital Millennium Copyright Act (DMCA).

Under the traditional copyright regime, an individual can be either primarily or secondarily liable for copyright infringement. Normally to establish primary infringement, a plaintiff must prove ownership of a valid copyright and copying of the protected work.

Individuals can also be found liable under several theories of secondary liability. Vicarious infringement occurs when the defendant possesses the 'right and ability' to supervise the infringing conduct and has an 'obvious and direct financial interest in the exploitation of copyrighted materials.' Contributory infringement occurs when one has knowledge of the infringing activity and 'induces, causes or materially contributes to the infringing work of another.' Finally, the U.S. Supreme Court announced a possible third theory of liability, which some practitioners have treated as separate and apart from contributory infringement. Under 'inducement liability,' 'one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.' MGM Studios Inc. v. Grokster , 545 U.S. 913, 936-937 (2005).

DMCA's Safe Harbor

The DMCA codified several safe-harbor defenses, which protect against potential liability due to a service provider's connection to infringing online materials and which are available to counter allegations of direct or secondary infringement. If certain enumerated conditions are met, these affirmative defenses
protect conduct that constitutes: a) transmitting or routing material through a system or network; b) system caching (automated temporary storage on a system or network); c) information residing on systems or networks at the direction of users; and d) information location tools. See, 17 U.S.C. 512. However, these potential limitations on liability apply only if the service provider both has adopted and reasonably implemented a policy to terminate repeat infringers and accommodates standard technical measures used by copyright owners to prevent piracy. In addition to the DMCA's safe-harbor defenses, traditional copyright defenses, such as fair use (use for purposes such as criticism, comment, news reporting, teaching, scholarship or research), remain available to any alleged infringer.

In both Tur and Viacom, YouTube has asserted as a defense Sec. 512(c), the safe harbor relevant to user-generated content Web sites. Section 512(c)(1) limits liability in the case of:

the storage at the direction of a user or material that resides on a system or network controlled or operated by or for the service provider, if the service provider: (A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material; (B) 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; and (C) upon notification of claimed infringement ' responds expeditiously to remove, or disable access to, the material that is claimed to be infringing.

The requirements of this notification are further spelled out in Sec. 512(c)(3).

Although a multitude of copyright-law issues will ultimately be important in the YouTube litigations, the applicability of the Sec. 512(c) safe harbor is especially significant. As such, in Tur both the plaintiff and YouTube filed separate motions for summary judgment concerning the applicability of the Sec. 512(c) safe harbor before any substantive discovery in the case had begun. Tur, who owns a substantial audiovisual library of his audiovisual news-reporting works, such as the O.J. Simpson freeway chase and the Reginald Denny beating, argued that YouTube cannot be protected by Sec. 512(c) because it does not fulfill the necessary condition of subpart (c)(1)(B). He reasoned, first, that because YouTube sells advertising on its Web site placed in juxtaposition to videos, some of which infringe, it receives a 'financial benefit directly attributable to the infringing activity.' Second, he argued that YouTube has 'the right and ability to control such [infringing] activity' because every YouTube user agreement grants YouTube a license to 'use, reproduce, distribute, prepare derivative works of, display, and perform' all uploaded video. (This test, pertinently, is the mirror of that for vicarious infringement. See, Grokster, 545 U.S. at 930.) However, the court determined that Tur had presented no evidence that YouTube had the 'right and ability' to control infringing activity, and denied his motion on that ground.

Meanwhile, YouTube argued that it had satisfied all the requirements of the safe-harbor provision. The court denied YouTube's motion, observing that YouTube had presented 'insufficient evidence regarding YouTube's knowledge and ability to exercise control over the infringing activity on its site,' and that although YouTube exerts maintenance and management over the site, the nature and extent of its maintenance and infringement are unclear. As such, the applicability of the safe harbor appears destined for trial, or at least further proceedings following some discovery.

The Tur court's twin opinions denying summary judgment are both comparatively succinct, reflecting in part the relatively diminutive submissions by the parties. The court indicated an unwillingness to grant the motions without more detailed support, observing that, although YouTube explained then that it could remove clips after uploading and flagging but could not prescreen or detect allegedly infringing videotapes due to a lack of technical capabilities, there was still 'insufficient evidence before the court concerning the process undertaken by YouTube from the time a user submits a video clip to the point of display on the YouTube Web site,' which prevented the court from adequately assessing YouTube's 'right and ability' to control infringing activity.

At first glance, the court's analysis might appear to be hypertechnical, but it is likely trying to avoid a top-level decision on a matter of first impression; furthermore, the court may have realized that YouTube appears to review postings in some manner before they are publicly available, because, for instance, no pornography ends up on the site. Jonathan Purow, 'The Copyright Implications of YouTube,' 18 N.Y.S.B.A. Entertainment, Arts & Sports L.J. 58, 61 (2007). The remaining YouTube matters have yet to reach the 'right and ability to control' issue, but the court's decisions provide both guidelines as to the type of detailed factual showing a court will expect in order to grant summary judgment on the safe-harbor issue, and a warning that such motions are perhaps better left until at least some further discovery has taken place.

Conclusion

Given the Tur result, it is difficult to predict how the courts will ultimately treat the safe-harbor defense for YouTube and other similar Web sites. Most believed that Tur would be, in some sense, a skirmish before the all-out Viacom battle ' one fought by wealthier copyright holders with a much larger library of works ' that might help guide how the safe harbor is to be applied, or at least provide a possible resolution to the issue. However, Tur announced that he was withdrawing his case in California and instead joining the Premier League proposed class-action suit in New York. (Many others, such as the National Music Publishers' Association, also positioned to join the suit.) With no prompt settlement of the applicability of the safe-harbor defense in Tur, it appears instead that Viacom will provide the first substantive determination of the safe harbor's applicability to YouTube.