Court of Appeals for the Second Circuit ruled that Viacom and other plaintiffs could pursue copyright infringement claims against YouTube and Google for unauthorized posting of videos, notwithstanding the “safe harbor” provisions of the Digital Millennium Copyright Act of 1998 (“the DMCA”). The decision, Viacom v. YouTube and Google, No. 10-3270, 2012 WL 1130851 (2nd Cir. April. 5, 2012), affirmed fundamental principles important to online Service Providers (“SPs”) that: (i) an SP enjoys safe harbor protection unless it knew of facts or circumstances that indicate specific and identifiable instances of infringement, and (ii) a generalized awareness of infringement is not enough to preclude safe harbor protection. However, the Court also found sufficient evidence for a jury to consider whether defendants knew of the specific infringements, and remanded the case to the lower court. The Viacom decision provides a map for copyright holders to navigate the safe harbor provisions, and may result in entangling more SPs in copyright infringement litigation.

BACKGROUND

In 2007, Viacom, the Premier League (an English soccer league), Bourne Co. and others filed suit against YouTube and its owner Google, alleging copyright infringement due to the unauthorized public performance, display and reproduction of over 70,000 video clips on the YouTube website. YouTube promptly removed the infringing videos in response to plaintiffs’ takedown notices. In 2010, the federal district court granted summary judgment and dismissed plaintiffs’ claims. The court held that YouTube did not know of the specific infringements alleged by plaintiffs until receiving takedown notices, and noted defendants’ timely removal of those videos. The lower court further held that YouTube’s generalized knowledge of infringing activity did not rule out safe harbor protections.

On appeal, the Second Circuit affirmed in part and vacated in part the lower court decision. As a general principle, the Second Circuit agreed that the safe harbor applies unless the SP has knowledge of specific and identifiable instances of infringement, and that a generalized awareness of infringing activity does not bar safe harbor protection. The Circuit also agreed that certain YouTube software functions – its replication and playback of videos, and its directing users to related videos – fall within the safe harbor.

The Court, however, vacated as premature the lower court’s grant of summary judgment. The Court pointed to various pieces of evidence, including internal YouTube communications regarding Premier League videos, a 2006 internal report on Viacom videos posted on its site, and an e-mail exchange involving YouTube founder Chad Hurley, from which a jury could reasonably infer that YouTube had knowledge of, or was at least willfully blind to, the infringements at issue. It remanded the matter to the district court to consider these issues and whether YouTube’s syndication of certain infringing videos (as opposed to mere replication and playback) qualified for safe harbor protection.

ANALYSIS

Prior to Viacom, SPs like YouTube could post content online without fear of copyright infringement claims so long as they promptly deleted infringing content in response to takedown notices, and did not know about the specific infringement prior to receiving notice. Viacom, however, muddies these waters: it permits a court or jury to find that an SP had prior knowledge, and is not entitled to safe harbor protection, based on facts and circumstances that may come to light only after extensive trial discovery. The likely result of Viacom, therefore, is increased litigation costs for SPs, as copyright holders comb SP documents in discovery for evidence that the SP had prior knowledge of the specific infringements at issue.