IP News

District Court Grants YouTube's 'Safe Harbor' Summary Judgment Motion

In Viacom Int'l Inc. v. YouTube, Inc., Nos. 07-CV-2103, 3582, 2010 U.S. Dist. LEXIS 62829 (S.D.N.Y. June 23, 2010), the District Court for the Southern District of New York granted defendants' motion for summary judgment that they are entitled to the Digital Millennium Copyright Act's (“DMCA”), 17 U.S.C. ' 512(c), “safe harbor” protection against all of plaintiffs' direct and secondary infringement claims, because they had insufficient notice, under the DMCA, of the particular infringements in suit.

Defendant YouTube, which is owned by defendant Google, operates a Web site onto which users may upload video files free of charge. Uploaded files are copied and formatted by YouTube's computer systems, and then made available for viewing. Plaintiffs brought suit alleging that “tens of thousands of videos on YouTube, resulting in hundreds of millions of views, were taken unlawfully from Viacom's copyrighted works without authorization” and that “Defendants had 'actual knowledge' and were 'aware of facts or circumstances from which infringing activity [was] apparent,' but failed to do anything about it.” Defendants moved for summary judgment of no liability under the safe harbor provision of the DMCA.

The safe harbor provision of the DMCA (17 U.S.C. ' 512(c)) states, in relevant part:

(c) Information residing on systems or networks at direction of users.'

(1) In general. ' A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, 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 '

(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; [or]

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent;

'

It was undisputed that defendants designated an agent, and that when they received specific notice that a particular item infringed a copyright, they swiftly removed it. Therefore, the court posed the summary judgment question as 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), (ii) mean a general awareness that the there are infringements or rather mean an actual or constructive knowledge of specific and identifiable infringements. The court held that the statutory language meant the latter, and that the safe harbor provision applies unless the service provider failed to act upon an actual or constructive knowledge of specific and identifiable infringements.

The court reasoned that the tenor of the legislative history suggested that mere knowledge of the prevalence of infringing activity in general is not enough and that “[t]o let knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials, impose responsibility on service providers to discover which of their users' postings infringe a copyright would contravene the structure and operation of the DMCA.”

The court further reasoned that case law was consistent with the view that generalized knowledge of infringement is insufficient to remove a service provider from the safe harbor provision. The court distinguished Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (“Grokster“) and its progeny, which were heavily relied upon by plaintiffs, since those decisions involved peer-to-peer file-sharing networks that are not covered by the safe harbor provisions of DMCA.

Finally, the court rejected plaintiffs' argument that YouTube's replication, transmittal, and display activities fall outside the protection ' 512 gives to “infringement of copyright by reason of the storage at the direction of a user of material.” The court reasoned that this defined the word “storage” too narrowly to meet the statute's purpose, since “service provider” was elsewhere defined as including “an entity offering the transmission, routing, or providing of connections for digital online communications.”

Jeffrey S. Ginsberg is a partner and Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.

District Court Grants YouTube's 'Safe Harbor' Summary Judgment Motion

In Viacom Int'l Inc. v. YouTube, Inc., Nos. 07-CV-2103, 3582, 2010 U.S. Dist. LEXIS 62829 (S.D.N.Y. June 23, 2010), the District Court for the Southern District of New York granted defendants' motion for summary judgment that they are entitled to the Digital Millennium Copyright Act's (“DMCA”), 17 U.S.C. ' 512(c), “safe harbor” protection against all of plaintiffs' direct and secondary infringement claims, because they had insufficient notice, under the DMCA, of the particular infringements in suit.

Defendant YouTube, which is owned by defendant Google, operates a Web site onto which users may upload video files free of charge. Uploaded files are copied and formatted by YouTube's computer systems, and then made available for viewing. Plaintiffs brought suit alleging that “tens of thousands of videos on YouTube, resulting in hundreds of millions of views, were taken unlawfully from Viacom's copyrighted works without authorization” and that “Defendants had 'actual knowledge' and were 'aware of facts or circumstances from which infringing activity [was] apparent,' but failed to do anything about it.” Defendants moved for summary judgment of no liability under the safe harbor provision of the DMCA.

The safe harbor provision of the DMCA (17 U.S.C. ' 512(c)) states, in relevant part:

(c) Information residing on systems or networks at direction of users.'

(1) In general. ' A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, 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 '

(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; [or]

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent;

'

It was undisputed that defendants designated an agent, and that when they received specific notice that a particular item infringed a copyright, they swiftly removed it. Therefore, the court posed the summary judgment question as 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), (ii) mean a general awareness that the there are infringements or rather mean an actual or constructive knowledge of specific and identifiable infringements. The court held that the statutory language meant the latter, and that the safe harbor provision applies unless the service provider failed to act upon an actual or constructive knowledge of specific and identifiable infringements.

The court reasoned that the tenor of the legislative history suggested that mere knowledge of the prevalence of infringing activity in general is not enough and that “[t]o let knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials, impose responsibility on service providers to discover which of their users' postings infringe a copyright would contravene the structure and operation of the DMCA.”

The court further reasoned that case law was consistent with the view that generalized knowledge of infringement is insufficient to remove a service provider from the safe harbor provision. The court distinguished Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd. , 545 U.S. 913 (2005) (“ Grokster “) and its progeny, which were heavily relied upon by plaintiffs, since those decisions involved peer-to-peer file-sharing networks that are not covered by the safe harbor provisions of DMCA.

Finally, the court rejected plaintiffs' argument that YouTube's replication, transmittal, and display activities fall outside the protection ' 512 gives to “infringement of copyright by reason of the storage at the direction of a user of material.” The court reasoned that this defined the word “storage” too narrowly to meet the statute's purpose, since “service provider” was elsewhere defined as including “an entity offering the transmission, routing, or providing of connections for digital online communications.”

Jeffrey S. Ginsberg is a partner and Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.