JURIST Guest Columnist Olivier Sylvain of the Fordham University School of Law says that the Second Circuit opinion in Viacom v. YouTube represents a growing convergence of opinion in how to interpret the DMCA, which could ultimately be a good development for all parties involved…

Early last month, in one of the more closely watched intellectual property cases today, the US Court of Appeals for the Second Circuit reinstated and remanded Viacom’s $1 billion lawsuit against YouTube for direct and secondary copyright infringement. The appeals court affirmed the district court’s ruling that YouTube is eligible for safe harbor protection under the Digital Millennium Copyright Act (DMCA). The Second Circuit, however, reversed the trial court’s decision to grant summary judgment, explaining that the district court was too quick to reject, among other things, the evidence in the record of YouTube’s (1) specific knowledge of; (2) willful blindness to; and (3) control over users’ infringing activity.

In the short run, this decision is ostensibly good news for Viacom and bad news for YouTube. After all, the district court had given the popular video hosting site practically everything it asked for when it granted its motion for summary judgment almost two years ago. The Second Circuit changed that by giving Viacom a litigation lifeline and an opportunity to bring the case to trial.

In the long run, however, the opinion is not all bad news for YouTube or other online user-generated service providers. The panel’s opinion unequivocally brings the Second Circuit’s approach to the “actual knowledge” and “red flag knowledge” safe harbor provisions in lockstep with that of the Ninth Circuit. The panel explained that defendant service providers can find refuge in the safe harbor if they have a general awareness of infringing activity. It held that the “actual knowledge” safe harbor relies on a “subjective” standard of knowledge and is not duplicative of the “objective” knowledge standard under the “red flag knowledge” provision. The panel also concluded that the safe harbors protect defendants from all affirmative claims for monetary relief. Notably, the Second Circuit did part ways with the Ninth Circuit on how to interpret the “benefit and control” safe harbor, but this may prove to be less influential than the “actual knowledge” and “red flag knowledge” elaborations. In any event, both features of the holding usefully clarify the courts’ extant approach to the DMCA safe harbors.

It remains to be seen whether, in the long term and with this new clarity, the Second Circuit’s decision will inure to the benefit of content owners, webhosts or users generally. To be sure, the decision has given YouTube much more to worry about, particularly as content owners have shown a willingness to spend millions of dollars in litigation to ferret out evidence of specific knowledge or willful blindness of infringing activity. With enough time and money, the discovery of such evidence is almost inevitable. Any little bit could help in their effort to gain leverage in the dynamic area of licensing and distribution of popular online content. So, in light of the resources content owners are willing to throw at the issue, service providers might lose even if they win. Consider the cases that content owners brought against the smaller video hosting site, Veoh. That company won the safe harbor arguments, but, after all of the litigation in federal court, could not stay afloat.

The Safe Harbor Provision in the DMCA

Generally, the safe harbor provisions of the DMCA present a major hurdle for content owners like Viacom. Under the statute, a defendant “online service provider” is not liable for copyright infringement if, as a threshold matter, it implements a “repeat infringer” policy and “standard technical measures” to “identify or protect copyrighted works.” YouTube easily meets both of these requirements.

Nevertheless, a service provider like YouTube may still be liable under the DMCA if it has “actual knowledge” that infringing material exists on the site or, under the “red flag knowledge” provision, is “aware of facts or circumstances from which infringing activity is apparent.” The DMCA also establishes that a service provider is eligible for safe harbor protection if “it does not receive a financial benefit that is directly attributable to infringing activity” and, moreover, “has the right and ability to control such activity.” These have been the main points of contention at district court and on appeal in Viacom v. YouTube.

In order to gain refuge in the safe harbor, a service provider also must expeditiously remove infringing material once it has obtained notice of the specific material’s existence on its network. Viacom has not disputed that YouTube removes infringing material as soon as they receive specific notice of them.

The District Court Opinion

In 2007, Viacom filed its suit against YouTube, alleging direct and secondary infringement of its copyrights. In their amended complaint [PDF], Viacom and other major content owners allege that, from its founding in 2005 to 2008, YouTube displayed and distributed user-posted videos without permission from content owners.

After almost two years of discovery, the parties filed for summary judgment. In its briefs, Viacom presented pretty damning email correspondence among YouTube founders and executives that demonstrate YouTube’s actual knowledge of specific infringing content on the site.

In 2010, District Court Judge Louis Stanton granted YouTube’s motion on all claims, citing the safe harbor provisions in the DMCA. Judge Stanton relied on a series of opinions from the Ninth Circuit in which courts there held that general awareness of infringing activity on a network does not remove a service provider from safe harbor protection under the DMCA. The district court also summarily rejected the argument that YouTube had the right and ability to control infringing activity, explaining that the company could not have a duty to block or control access to a particular material or activity if it does not know what it must block or control.

Judge Stanton’s decision seemed to join the emergent consensus view — at least in the Ninth Circuit where many of these cases are litigated. Perhaps because of the high profile, high stakes nature of the case, Judge Stanton’s opinion has featured in a handful of federal court opinions on the DMCA safe harbors. Late last summer, the court in Capitol Records v. MP3Tunes relied in part on Judge Stanton’s “actual knowledge” analysis to conclude that the cloud music service offered by MP3tunes was eligible for safe harbor protection under the DMCA. The Ninth Circuit, too, relied heavily on the district court opinion in Viacom in UMG v. Shelter, the latest in a series of opinions related to the Veoh video service.

The Appeal: General Awareness Still Does Not Remove the Safe Harbor Protection

On appeal, the Second Circuit panel was to explain whether the safe harbor provisions — the “actual knowledge,” “red flag knowledge,” and “benefit and control” provisions — impose an affirmative obligation on YouTube to remove infringing material if the video sharing site was just generally aware that the infringing material might exist somewhere on its network. Writing for the panel, Judge José Cabranes agreed with much of the district court’s analysis, but parted ways on the question of whether YouTube could find refuge in the “benefit and control” safe harbor.

The panel explained that, under the “actual knowledge” safe harbor of the DMCA, YouTube only has a duty to remove infringing material if it has knowledge of specific infringing activity on its site. Under the DMCA, he explained, service providers with a general awareness of infringing activity on their site are not liable for their users’ infringing activity, and are protected from all affirmative claims for monetary relief. Viacom and the others would have to establish that YouTube had knowledge about “specific infringing” activities or material in order to impose any affirmative duty to remove the offending material from the video sharing site or claim damages for failing to do so. After all, the court reasoned, YouTube can only expeditiously remove material when it has specific knowledge about what it must remove.

The appeals panel also rejected plaintiffs’ argument that, under this general awareness standard, the “red flag knowledge” provision would become superfluous. Plaintiffs accordingly would require less specificity under the latter. The panel explained that the “actual knowledge” provision “denotes subjective belief” that specific infringement has occurred while the “red flag knowledge” provision suggests that, based on an awareness of facts and circumstances, a reasonable person would conclude that specific infringement has occurred. This formulation moves away from the specific-general framing for the “actual knowledge” analysis and, the panel explained, vindicates the ostensible purposes Congress had when it crafted the DMCA.

But Facts of Specific Knowledge, Willful Blindness and Control of Infringing Activity Still Matter

This aspect of the Second Circuit’s opinion was good news for YouTube and advocates of online platforms for user-generated content. But that was not the end of the analysis. Indeed, the Second Circuit was ostensibly taken aback by the district court’s failure to even discuss the abundance of evidence presented by plaintiffs in their summary judgment briefs.

First, the panel explained, the evidence in the record suggests that the grant of summary judgment for YouTube “was premature.” In a passage that recalls the secondary liability analysis in the cases of Sony Corp. of America v. Universal Cirty Studios, Inc. and Metro-Goldwyn-Mayer Studios Inc. v. Grokster, the panel explained that somewhere between 60 percent and 80 percent of YouTube videos were copyrighted during the period in question. Also, emails between executives and founders at YouTube conveyed awareness about the existence of specific infringing material on the site (including clips of English soccer matches, clips of popular Comedy Central programs, and Bud Light commercials). However, the company failed to remove them. Taken together, the panel explained, the evidence suggests that YouTube might have had specific knowledge that “significant quantities of material on the YouTube site” were infringing. The district court had dealt with this evidence rather summarily in its opinion, focusing almost entirely on the text and legislative history of the DMCA. The Second Circuit accordingly remanded for more fact finding on the question.

The panel also concluded that the district court had failed to address Viacom’s argument that YouTube remained willfully blind to specific infringing activity and, therefore, should not gain the benefit of safe harbor protection without a more careful consideration of the evidence. The panel acknowledged the novelty of the argument in the context of the DMCA and concluded that neither common law nor the statute forecloses the argument. (This is an issue to which the Second Circuit attended in dicta in the Tiffany v. eBay trademark case.) It accordingly remanded the willful blindness question to the trial court.

The Second Circuit reversed the trial court’s decision that YouTube could claim safety in the DMCA because it did not have the right and ability to control users’ infringing activity. This was a question, the panel explained, on which the trial court would have to do more fact-finding. If Viacom could prove that YouTube had the “right and ability to control” infringing activity on its site, then YouTube could not obtain refuge in the DMCA. Importantly, the panel clarified that this safe harbor does not, as some have suspected, invoke the common law vicarious liability standard which also addresses of financial benefit and control.

The Ninth Circuit had ruled in UMG v. Shelter, like the district court in Viacom, that “until a service provider becomes aware of specific unauthorized material, it cannot exercise its power or authority over the specific infringing item.” But this construction would make the “control and benefit” duplicative of the “actual knowledge” provision, and, according to the Second Circuit panel, this could not have been Congress’ intention. Accordingly, it held that in order to gain protection under the “right and ability to control” provision plaintiffs do not need to show specific knowledge of the infringing activity. Instead, plaintiffs must show that the defendant service provider can exert “substantial influence on the activities of users without necessarily — or even frequently — acquiring knowledge of specific infringing activity.” The panel concluded that the “right and ability to control” requires “something more” substantial than simply “the ability to remove or block access” to user posted infringing materials.

The question for the trial court, therefore, is whether the measures employed by YouTube evinced the ability to control. A reasonable juror, the panel held, could find that YouTube had such ability during the period at issue based on the evidence in the record. Accordingly, the Second Circuit panel remanded this factual question to the trial court for more fact finding.

In the end, as painfully expensive as this holding may be in the short term for YouTube, the panel’s decision clarifies a consensus view about the requisite level of knowledge for safe harbor protection under the DMCA that inures to the benefit of all stakeholders in the long-term — or at least until the next web-based sharing application upends the status quo.

Olivier Sylvain is an Associate Professor of Law at Fordham University School of Law and a Research Associate at the Donald McGannon Communication Research Center. His research interests include communications law and policy and the public lawmaking process more generally.

Suggested citation: Olivier Sylvain, Viacom v. YouTube: Examining the Limits of Safe Harbor, JURIST – Forum, May 9, 2012, http://jurist.org/forum/2012/05/olivier-sylvain-viacom-dmca.php.