On April 18, 2013, the United States District Court for the Southern District of New York upheld the Digital Millennium Copyright Act (“DMCA”) safe harbor protection for YouTube following a remand from the Second Circuit in a case where Viacom and other plaintiffs alleged YouTube had infringed their copyrights. Of note, the district court found that the DMCA safe harbor provision places the burden of notifying service providers such as YouTube of infringements upon the copyright owner or his agent. The district court also found that YouTube’s general awareness of the existence of infringing material on its system, coupled with a lack of a proactive copyright infringement monitoring program, did not constitute “willful blindness” that would render the safe harbor inapplicable. Furthermore, the court found that YouTube’s minimal interactions with its users did not amount to a “right and ability to control” infringing activity by its users. Accordingly, the district court granted summary judgment in favor of YouTube.

The safe harbor provision is governed by § 512 of the DMCA, which states that online service providers are immune from liability for copyright infringement only 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;

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

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material.

(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity. (Emphases Added)

This case was decided on a remand from the Second Circuit following the Second Circuit’s decision in Viacom Int’l Inc. v. YouTube, Inc., 676 F.3d 19 (2nd Cir. 2012). In that decision, the Second Circuit agreed with the district court that the “actual knowledge” referenced in the DMCA safe harbor required knowledge of specific and identifiable infringements. However, the Second Circuit remanded the case back to the district court because it found that the record was not sufficiently developed to reliably conclude that YouTube had no such specific knowledge (there was evidence that YouTube executives were aware of or knew that some of the YouTube streams contained copyrighted materials owned by third parties).

On remand, the parties effectively agreed that “neither side possesses the kind of evidence that would allow a clip-by-clip assessment of actual knowledge.” However, Viacom argued that because YouTube claims the statutory safe harbor as a defense, YouTube has the burden of establishing which clips-in-suit they knew about and which they did not. The district court disagreed and held that the DMCA places the burden of notifying service providers of infringement upon the copyright owner. Quoting a part of the Senate Report on the DMCA, the district court found that “Congress has determined that the burden of identifying what must be taken down is to be on the copyright owner, a determination which has proven practicable in practice.” Thus, according to the district court, the burden of showing that YouTube knew or was aware of the specific infringement of the Viacom copyrighted works cannot be shifted to YouTube. Because Viacom admitted that it could not produce such evidence, the court found in favor of YouTube on this issue.

In addition, the district court found that this lack of evidence as to knowledge of specific infringements was fatal to Viacom’s “willful blindness” argument. That is, the court found that even though extensive evidence existed as to YouTube’s general awareness of infringing material (albeit non-specific) on its system, the DMCA does not require YouTube to implement a copyright infringement monitoring program to take advantage of the safe harbor.

Furthermore, Viacom argued that the combination of the financial benefits to YouTube arising from the existence of infringing material on its system (e.g., higher site traffic) with YouTube’s control over its system (e.g., its editorial control over the clips that are displayed on its home page, its algorithms to find “related” videos, its auto-suggestion feature when users type in search queries, etc.) means that YouTube has run afoul of Section 512(B). The district court disagreed, concluding that these types of minimal activities did not qualify as giving rise to a “right and ability to control” infringing activities, particularly in view of an absence of evidence connecting these activities to infringing activity.

This decision, which interprets the DMCA safe harbor provision broadly in favor of service providers, puts the burden of policing copyright infringements on copyright owners rather than service providers, even in situations where the service provider is generally aware of the existence of copyright infringements on its system, so long as the service provider implements appropriate “notice and takedown” procedures when specifically notified of infringing material. However, Viacom and other plaintiffs have appealed and are awaiting the Second Circuit’s ruling on whether the district court correctly decided this case.