“Take-Down” Compliance Protects Google from Accusations of Internet Piracy

September 15, 2010

Reports that copyrights are dead are wildly exaggerated, but Google-owned YouTube won a major victory this summer when a federal judge ruled in a summary judgment hearing that the video-sharing site was protected under U.S. copyright law in a case brought by Viacom seeking $1 billion in damages for copyright-infringement.  In short, the decision in Viacom International Inc. v. YouTube Inc.,S.D.N.Y., No. 07 Civ. 2103 (6/23/10), appealed August 11, 2010, held that Internet service providers (ISPs), not just Google or YouTube, are immune from copyright liability, even if they knowthey are hosting infringing material posted by users, but only if the ISPs remove the works expeditiously at the request of the copyright-owner – responding to a “take-down notice.”  Viacom’s production companies and TV channels include Paramount Pictures Corp., Comedy Central, BET, Spike, TV Land, Nickelodeon, MTV, and VH1.

If this ruling survives appeal, it will be a landmark declaration of Internet freedom, especially as it applies to search engines, video-hosting companies, picture-hosting services like Flickr, social-networking sites like Facebook and micro-blogging services such as Twitter, affecting billions of people around the World who communicate and share experiences and content via the ISPs.  Conversely, however, such a far-reaching decision places the burden directly on the copyright owners, making it difficult for them to protect their copyrighted works that are published on-line.

The Online Copyright Infringement Liability Limitation Act (OCILLA) is United States federal law (17 U.S.C. § 512) passed as a part of the 1998 Digital Millennium Copyright Act (DMCA).  Its goal is to strike a balance between the competing interests of copyright owners and digital users.  Also known as the “Safe Harbor” provision, or as “DMCA 512,” it creates a conditional shelter for ISPs and other Internet providers, protecting them from acts of direct copyright infringement, such as making copies, as well as from acts of their users that would make the ISP a secondaryinfringer, e.g., by inadvertently hosting infringing copyright protected material of others that is uploaded by the users.

However, certain rules must be followed to create the safe harbor.  1) The ISP must “adopt and reasonably implement a policy” of addressing and terminating accounts of users who they find to be “repeat infringers.”  2) The ISP must accommodate and not interfere with “standard technical measures.”  ISPs may qualify for the §512 safe harbors regardless of whether the copyright liability involves transmitting, caching, storing, or linking to infringing material, but the safe harbor for storing infringing material under § 512(c) is the most commonly applied provision protecting ISPs, such as YouTube.  If an ISP complies with the requirements, it is sheltered from money damages, but the ISP may still be required perform specific actions, such as disabling access to infringing material.

To qualify for § 512(c) protection, the ISP may not: 1) receive a financial benefit directly attributable to the infringing activity; nor may it 2) be aware of the presence of infringing material or know any facts or circumstances that would make infringing material apparent; and 3) upon receiving notice from copyright owners or their agents, the ISP must act “expeditiously” to remove the purported infringing material.  While an ISP has no duty to monitor its service or affirmatively find infringing material on its system, to qualify for the § 512(c) safe harbor, the ISP may have no actual knowledge that it is actually hosting infringing material, nor may the ISP be aware of facts or circumstances from which infringing activity is apparent, and this was the issue raised by Viacom against YouTube.  The court was asked to determine whether the statutory phrases “actual knowledge … on the system or network is infringing,” meant a general awareness that there are infringements; or did the phrase also encompass constructive knowledge of specific and identifiable infringements of individual items.

The statute offers the ISP two ways to be notified of infringing material on its system: 1) notice from the copyright owner, or 2) the existence of “red flags.”  In this case, Viacom sent more than 100,000 notices to YouTube under §512(c), and YouTube took down the videos identified in the notices.  But Viacom argued that the presence of so many infringing videos meant that YouTube had failed to act on its own, even when it had knowledge of massive infringements on its website.  While no court has defined “expeditious” in these matters, the Viacom court found that to the contrary, the Notice feature protected YouTube, permitting the ISP to thus avoid having to screen the user’s content or make any decisions about whether or not material is actually infringing.  In fact, this court found that the number of take downs showed that YouTube acted “expeditiously.”

While the Viacom decision emphasizes that websites that comply with the notice and take-down requirements of the Copyright Act will be sheltered from liability, the statute sets up issues involving free speech and fair use, not to mention legal and financial liabilities and rights of the users.  Some estimates suggest that to preserve their safe harbors, ISPs tend to overreact on the side of taking down content associated with any suggestion of infringement, even though approximately 60% of all take-down notices are flawed.  For example, take-down requests based upon trademark infringement and defamation are unrelated to copyright infringement, and should be afforded no protection under this copyright law, yet the court equated this case with the decision protecting the eBay on-line auction service.  See, Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 94 USPQ2d 1188 (2d Cir. 2010).  But just as the ISPs do not screen for infringing content, to avoid liability they do not screen the take-down notice.  Google has taken hundreds of sites out of its index because of DMCA requests.  The ISPs simply respond by taking down or disabling the material, perhaps too expeditiously or even wrongfully, regardless of whether the notice is actually supported by fact or good faith belief.

Of course, if a user’s material is “taken down” from the Internet, the user may take counter-measures and has the option of sending a counter-notice to the ISP if the material was taken down unfairly to have the material put “back-up.”  Yet, while §512(f) protects the user from impermissible take-down notices, creating a liability for any proximate damages, including costs and attorneys’ fees, the users often suffer unfair loses that are rarely recovered.  See, Lenz v. Universal Music Corp., 5:07-cv-03783-JF (N.D. Cal. Feb. 25. 2010) (YouTube took-down a 29-second video of Lenz’s toddler dancing in her kitchen to 20 seconds of “Let’s Go Crazy” by Prince, after a take-down notice from copyright owner UMC).  The issue in Lenzwas whether “fair use” of the copyrighted song was considered before sending the take-down notice, and Electronic Frontier Foundation (EFF) is making an example of this case.  But even if Lenz prevails, the litigation in this case has dragged on for 2 1/2 years, reaching well into the equivalent of six figure litigation costs and attorney fees for each side.  So far the court has held that only “attorney advice,” not “litigation expenses,” are covered by §512(f), because it said that “the whole point of the DMCA’s notice-and-take-down (and counter-notice) procedure is to resolve these matters outside of the courthouse.”  So even if Lenz wins, she will lose; not because the copyright owner prevailed, but because of the idiosyncrasies of §512.

Nevertheless, the Viacom decision places the burden on the US copyright owner to identify infringement in this round of litigation, and holds that the ISP has no duty to monitor or search its service for copyright infringements in the US, even if it has general knowledge that the on-line infringement is “ubiquitous,” so long as the ISP diligently responds to take-down requests.  But it is unlikely that the issue of ISP liability will end with this decision, particularly if it can be argued that the ISP profits from the publishing services by providing advertising space.  The Internet operates world-wide, and many country’s laws have yet to be applied.