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IRIS 2010-8:1/46

United States

Viacom v. YouTube

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Alexander Malyshev

Stern & Kilcullen

On 23 June 2010 the Federal district court for the Southern District of New York handed down its long-awaited decision in Viacom International Inc. v. YouTube Inc. (Case No. 07 Civ. 2103) (“Viacom”), handing content providers such as Viacom a major defeat – and service providers such as YouTube, and its parent company Google, Inc. a clear victory – regarding the extent to which service providers are liable for infringement by their users. The court determined that the §512(c) “safe harbor” provisions of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. §512(c) shield service providers, like YouTube, against all direct and secondary infringement claims, as well as contributory liability claims for the acts of their users. The Court observed that the principles of §512(c) are clear and practical: “[I]f a service provider knows (from notice from the owner, or a “red flag”) of specific instances of infringement, the provider must promptly remove the infringing material. If not, the burden is on the owner to identify the infringement. General knowledge that infringement is ‘ubiquitous’ does not imply a duty on the service provider to monitor or search its service for infringements.” This common-sense reasoning is rooted in the belief that limiting the liability of service providers incentivizes them to continue to provide their services.

From a service provider’s perspective, there are three necessary elements that must be present if it wants to avail itself of the statutory protection of §512(c):

(1) it must have designated an agent for service of notices of violation with the U.S. Copyright Office;

(2) it must have received “notice” as specified by the DMCA; and

(3) it must promptly remove the infringing material once notified.

The DMCA provides that the limitations on liability only apply if the service provider has designated an agent to receive notifications of claimed infringement. At a minimum, the service provider must make available through its service, including on its website in a location accessible to the public – as well as provide the Copyright Office with – the name, address, phone number, and electronic mail address of the agent (§512(c)(2)).

The court held that the DMCA notification procedure places the burden of policing copyright infringement squarely on the owners of the copyright, and declined to shift this substantial burden to the service providers by requiring them to police their sites. Therefore, a general description of infringing content is not sufficient notice to trigger a take-down requirement. To be effective, a notice must provide “information reasonably sufficient to permit the service provider to locate the material” (§512(c)(3)(A)(iii)). An example of such sufficient information would be a copy or description of the allegedly infringing material and the “uniform resource locator” (the URL, or website address) that allegedly contains the infringing material (Viacom at pg. 29, citing UMG Recordings, Inc. v. Veoh Networks, Inc., 655 F. Supp. 2d 1099, 1109-10 (C.D. Cal. 2009)).

Similarly, the definition of “red flags” that would put a service provider on notice is extremely narrow. While the legislative history provides that if a service provider, in the performance of his regular business, turns a blind eye to “red flags” such as “pirate” or “bootleg” directories he would lose the protections of §512(c), this seems almost theoretical. If any degree of discretion or further investigation is necessary to determine whether content is infringing, then no “red flag” is raised “[A]wareness of pervasive copyright, however flagrant and blatant, does not impose liability on the service provider. It furnishes at most a statistical estimate of the chance any particular posting is infringing – and that is not a ‘red flag’ marking any particular work.”

The court found that YouTube clearly complied with its requirement to act promptly once put on notice by removing over 100,000 infringing videos the very next business day after receiving notice from Viacom. The court further held that YouTube was under no obligation to police its site for other infringing works based on Viacom’s argument that the list was “representative” of other infringing works. The court reasoned that the list was merely a “generic description” if it did not give the works’ location on the site, because it puts the onus on service providers to engage in a factual search in contravention of §512(m) of the DMCA.

In the wake of Viacom, it is clear that the DMCA provides a powerful shield to service providers. Unless a service provider is on “actual notice” from the content provider sufficiently identifying specific infringing works – or in the alternative it confronts clear “red flags” as to the nature of the infringing content on its servers – it is under no duty to act. Once it has been put on notice, the service provider’s only duty is to promptly remove that content which has been specifically identified, but no further duty to locate other infringing work arises.

A version of this article first appeared in Metropolitan Corporate Counsel.

Viacom International Inc. v. YouTube Inc. (Case No. 07 Civ. 2103) EN