US against media giant, Viacom, and Google have finally settled their seven year dispute involving user-posted episodes of “South Park”, “SpongeBob SquarePants” and various other television programs on YouTube. Terms of settlement are undisclosed, but occurred within 12 months of Google’s most recent win in the courts.

History of the dispute

In 2007, Viacom launched an action against YouTube, now owned by Google, for copyright infringement. The media giant, Viacom, claimed that YouTube had infringed its copyright by failing to prevent its users from posting infringing copyright content (such as episodes of “South Park” and “Spongebob Squarepants”) on YouTube. The US district court found in favour of YouTube, concluding that YouTube had acted within the ‘safe harbour’ exemptions of the Digital Millennium  Copyright  Act  (DMCA) (Viacom International, Inc. v. YouTube,Inc. and Anor, No. 07 Civ. 2103, June 23,2010).

Viacom appealed the original decision on the grounds that the DMCA exemption did not apply to YouTube as YouTube had knowledge or awareness of the infringing content, or was otherwise wilfully blind to the infringements, and had capacity to control the infringing activity and failed to do so. Although the appeal was permitted by the second circuit court, the matter was remitted back to the district court for determination (Viacom International, Inc. v. YouTube, Inc. and Anor, No. 10-3270-cv, April 5, 2012).

In April 2013, the US district court again rejected Viacom’s motion and held that the owner of YouTube, Google, was not liable to Viacom for infringing copyright content posted by users on YouTube by virtue of the ‘safe harbor’ exemptions of the DMCA. (Viacom International, Inc. v. YouTube, Inc., No. 07 Civ. 2103, April 18, 2013)

Google’s US victory

While the US court considered Viacom’s argument to be “ingenious”, in relation to whether YouTube had knowledge or awareness of any specific copyright infringement, the US Court held that Viacom’s arguments were based on anachronistic concepts which predated the DMCA.

The US court observed that no service provider dealing with that amount of site traffic (namely, 24 hours of new video posted by users every minute) could be expected to have had knowledge or awareness of each and every video posted. Further, the US court highlighted that the US Congress established the ‘safe harbour’ provisions under the DMCA to provide service providers with protection against copyright liability to specifically deal with situations such as this.

The US court held that Viacom had failed to adequately notify YouTube, in writing, of the infringing copyright works on YouTube and, in such circumstances, it was not reasonable to infer that Google had knowledge or awareness of the infringing content.

The US court acknowledged that the ‘safe harbour’ protection would not automatically extend to service providers that are wilfully blind of copyright infringements and had the right and ability to control the infringement. However,the US court observed that in this case to “mandate an amorphous obligation to ‘take commercially reasonable steps’ in response to a generalised awareness of infringement” was not appropriate. Further, the Court observed that:

  • Knowledge of the infringing activity, and allowing it, will not of itself forfeit the protection provided by the ‘safe harbour’ provisions.

  • “Something more” was required such as actual influence or participation in the infringement by the service provider.

Viacom argued that “something more” was established in this case by Google’s willingness to allow users to upload and view infringing content on YouTube and its “ultimate editorial judgment and control” over content on YouTube. The US court rejected this argument, highlighting that YouTube’s search technologies were automated. The US court concluded that the users, in this instance, chose to upload and view infringing content and, therefore, YouTube did not participate in or control the infringing activity.

Viacom also argued that the ‘safe harbour’ provisions could not apply as Google was acting on its own accord and in its own self-interest and for its own financial benefit. The US court also rejected this argument.

Position in Australia

The US court’s decision is broadly consistent with the approach taken in Australia to date, namely, that internet intermediaries will have limited liability for infringing content published through their facilities unless the copyright owner has given adequate and appropriate notice to the intermediary of the infringing content.

This can be seen in the High Court’s  decision in Roadshow Films Pty Ltd v iiNet Limited [2012] HCA 16. In that case, the High Court unanimously held that an internet service provider, iiNet, was not liable to a copyright owner for the provision of internet services that enabled its users to download infringing copyright works. For further information on this case, see the article published in Piper Alderman’s May 2012 e-bulletin.

Australian copyright owners should take note that there are some legislative protections afforded under section 116AA of the Copyright Act 1968 (Cth) to carriage service providers against copyrightinfringement. These are similar to, but not the same as, the US ‘safe harbour’provisions in the DMCA.