I was surprised back in June 2010 when U.S. District Judge Louis
Stanton of federal court in Manhattan granted summary judgment to YouTube and Google in a pair of copyright infringement
actions by Viacom and soccer's Premier League. The case record,
after all, was replete with email evidence suggesting that
YouTube executives salted their site with videos they knew were
illegal, even after they'd received notice that the videos
infringed copyrights. YouTube, meanwhile, had alleged that
Viacom secretly uploaded its own videos to the site to entrap
YouTube. Either way, it seemed to me that the factual
allegations demanded an airing, but Stanton instead ruled that
YouTube was protected under the safe harbor provisions of the
Digital Millennium Copyright Act because (among other things),
it had insufficient knowledge of specifically infringing
material. The decision was regarded as a boon to Internet
content-sharing sites and a powerful endorsement of the DMCA's
safe harbor protection.
Too powerful, according to a two-judge panel of the 2nd
Circuit Court of Appeals. On Thursday, Judges Jose Cabranes and
Debra Ann Livingston agreed with Stanton that to get past the
safe harbor provision, plaintiffs must show a defendant has
"actual knowledge or awareness of specific infringing activity."
But they said that a reasonable jury in this case could find YouTube had such knowledge. The judges pointed in particular to
YouTube officials' emails about Viacom and Premier League-owned
content, and said a reasonable juror could conclude from that
evidence that YouTube "was at least aware of facts or
circumstances from which specific infringing activity was
apparent." As Jon Stempel reported for Reuters, the appellate
panel remanded the case to Stanton to determine whether YouTube
knew infringing material was posted on the site.
The most significant aspects of the ruling, according to
Premier League counsel Charles Sims of Proskauer Rose, are the
2nd Circuit's consideration of willful blindness -- an issue of
first impression, according to the appeals court -- and a
defendant's "right and ability to control" infringing content
under the DMCA. The plaintiffs had asserted that YouTube had to
be willfully blind to ignore allegedly infringing material on
its site. The 2nd Circuit noted that the DMCA doesn't mention
willful blindness, but applied its own precedent from trademark
cases to conclude that "the willful blindness doctrine may be
applied, in appropriate circumstances, to demonstrate knowledge
or awareness of specific instances of infringement." Whether the
doctrine applies in this case, the 2nd Circuit said, is a
question for Stanton on remand.
So is the question of YouTube's "right and ability to
control" the posting of infringing material by video uploaders.
Stanton had ruled in the district court that Viacom and the
Premier League hadn't shown YouTube's "item-specific" knowledge
of infringement. The 2nd Circuit said that was the wrong
standard, but it didn't articulate a new standard. Instead, the
appeals judges said it's up to Stanton to determine "whether the
plaintiffs have adduced sufficient evidence to allow a
reasonable jury to conclude that YouTube had the right and
ability to control the infringing activity and received a
financial benefit directly attributable to that activity."
"We think we're very strongly positioned on both willful
blindness and right to control," Sims told me. "YouTube has
extraordinary systems in place to identify works that come over
its portal. When they already have a takedown notice for this
work ... they are being willfully blind if they don't take it
down."
Sims said the plaintiffs' strongest case on remand will be
alleging that YouTube refused to take down reposts of works for
which it had previously received takedown notices. That's why,
according to him, Internet sites shouldn't panic about the 2nd
Circuit's ruling. YouTube has the ability to control its
content, Sims said, and when it's on notice that the content is
infringing, it has an obligation to take it down. "There's no
big dispute about what the law is," Sims said.
YouTube and Google counsel Andrew Schapiro, who moved from
Mayer Brown to Quinn Emanuel Urquhart & Sullivan after arguing
the case at the 2nd Circuit, referred me to Google, which sent a
statement: "The Second Circuit has upheld the long-standing
interpretation of the DMCA and rejected Viacom's reading of the
law. All that is left of the Viacom lawsuit that began as a
wholesale attack on YouTube is a dispute over a tiny percentage
of videos long ago removed from YouTube. Nothing in this
decision impacts the way YouTube is operating. YouTube will
continue to be a vibrant forum for free expression around the
world."
Viacom counsel Paul Smith of Jenner & Block didn't respond
to a phone message.
(Reporting by Alison Frankel)
Follow us on Twitter: @AlisonFrankel, @ReutersLegal