The Contestants: Viacom International vs. YouTube and Google
Background
In 2007, Viacom, the global mass media company, filed a lawsuit in U.S. District Court in New York against YouTube and its then-new owner, Google, Inc., alleging that YouTube had engaged in copyright infringement by allowing its users to upload and view thousands of videos owned by Viacom without its permission. Since the lawsuit was filed, YouTube has continued to grow and attract enormous numbers of users. In fact, YouTube is now included in Billboard magazine’s charts, as it has become a preferred destination for music and music videos. The case, Viacom International, Inc. v. YouTube, Inc., which could have a significant impact on YouTube and other similar services, is still going strong after six years of litigation. Like a great title prize fight, there have been victories and setbacks for both sides during the case. So, will this titanic clash between the two media giants be resolved any time soon?
Round One—The Complaint
In its Complaint filed in 2007, Viacom claimed that YouTube had infringed on its copyrights by performing, displaying, and reproducing Viacom’s copyrighted works. It characterized this as “brazen” and “massive” copyright infringement. The lawsuit, which sought $1 billion in damages, alleged that over 150,000 unauthorized clips of Viacom’s programming, such as SpongeBob SquarePants and The Daily Show, had been made available on YouTube, and that these clips had collectively been viewed more than 1.5 billion times. Most significantly, the lawsuit alleged that YouTube engaged in, promoted and induced the infringement, and that they had deliberately built up a library of infringing works in order to increase YouTube’s site traffic (and, consequently, its advertising revenue).
Even though YouTube implemented a “Content ID filtering system” to automatically identify and prevent uploading of certain copyrighted materials in 2008, Viacom did not agree to dismiss the lawsuit (although it is not seeking damages for infringements after that date). It still seeks a judgment that YouTube/Google are liable for copyright infringement.
At the core of the case is the extent to which Section 512 of the Copyright Act, also known as the Digital Millennium Copyright Act (“DMCA”), particularly its “Safe Harbor” provision for internet service providers, provides YouTube (and other content hosts) with immunity from copyright infringement liability for the infringing posts of its users. DMCA, which became effective in October 1998, set up a system whereby an internet service provider (“ISP”) would not be liable for copyright infringement for materials posted by a third party on the ISP’s site merely because it provided the “conduit” for a user to post infringing material, as long as a mechanism was put into place to enable a party which claims that its content has been posted unlawfully to demand that it be taken down. The immunity provisions of DMCA do not apply when an ISP posts materials itself.
YouTube, of course, claimed that DMCA shields it from immunity, as it did not “post” any of Viacom’s content to the YouTube site, but merely provided the platform on which its users posted (and continue to post) such content. Viacom claimed that YouTube encouraged and, in any event, clearly was aware that such infringing content was being posted on a massive scale by its users and, as such, YouTube should not be able to cloak itself with the immunity bestowed by DMCA.
Round Two—The First District Court Ruling
Judge Louis Stanton, the U.S. District Court judge presiding in the case, granted Google/YouTube’s motion for summary judgment seeking dismissal of the case in 2010. For you non-lawyers, a “summary judgment” essentially says that, viewing the facts most favorably to the party not seeking the summary judgment, such facts would not amount to a violation of the law. Judge Stanton agreed that DMCA’s immunity provisions shielded YouTube from liability.
Round Three—The First Appeal
Viacom appealed that decision to the United States Court of Appeals for the Second Circuit. In 2012, the Second Circuit overturned in part the lower court’s summary judgment ruling and ordered that the lower court rehear certain aspects of the case. Last month, the Judge Stanton again granted summary judgment in favor of YouTube and once again that decision has been appealed.
In the original 2010 summary judgment ruling, Judge Stanton agreed that YouTube undeniably had general knowledge that some copyrighted material had been uploaded by its users. However, the court felt that YouTube did not know which clips had been uploaded with permission and which had not. Judge Stanton also said in his ruling that mandating video-sharing sites to proactively police every uploaded video “would contravene the structure and operation of the DMCA.” As evidence that the notification and takedown procedures specified by DMCA were effective, Judge Stanton noted that YouTube had successfully addressed a mass take-down notice issued by Viacom in 2007. Significantly, Judge Stanton felt that YouTube’s actions were not comparable to those of other Internet-based, media-sharing companies, such as Grokster, that had previously been found guilty of indirect copyright infringement.
In the original appeal to the Second Circuit following Judge Stanton’s grant of summary judgment the first time, Viacom (by then joined by other plaintiffs in the case, including the English Premier Soccer League), focused on a series of internal emails among YouTube employees who made clear in those e-mails that they were aware of infringement, including specific instances. The District Court previously had indicated that such actual knowledge could be considered to be sufficient to disqualify YouTube from DMCA’s immunity.
The Second Circuit, finding merit in those arguments, reversed Judge Stanton’s grant of summary judgment, and held that a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website and that the right and ability to control infringing activity need not require knowledge of specific infringements. While the Second Circuit overturned the lower court’s granting of summary judgment in favor of Viacom, its ruling ordering the case back to the lower court was limited. The court did reject Viacom’s argument that YouTube automatically would not be entitled to the immunity simply because YouTube’s software allowing users to upload videos has certain functionality (specifically transcoding of content, playback of content and related-video thumbnails). The Second Circuit felt, however, that a fourth function of YouTube’s software, syndication (that would allow others to share and generate revenue from sharing videos), should be examined more closely by the lower court.
Round Four—The Second District Court Ruling
The latest development in the case occurred on April 18, 2013, when Judge Stanton, after reconsidering the case after it was sent back down to him by the Second Circuit, issued yet another order granting summary judgment in favor of YouTube. This time, Judge Stanton’s decision addressed four issues: 1) Whether YouTube had knowledge or awareness of any specific infringements; 2) Whether YouTube willfully “blinded” itself to the infringements; 3) Whether YouTube had the “right and ability to control” infringing activity on its site by its users; and 4) Whether any clips were syndicated.
In his latest ruling, Judge Stanton ruled in favor of YouTube on all four issues, finding that YouTube had no actual knowledge of any specific instance of infringement of Viacom’s works, and therefore could not have “willfully blinded itself” to the infringements. Further, the court found that YouTube did not have the “right and ability to control” infringing activity because “there is no evidence that YouTube induced its users to submit infringing videos, provided users with detailed instructions about what content to upload or edited their content, prescreened submissions for quality, steered users to infringing videos, or otherwise interacted with infringing users to a point where it might be said to have participated in their activity.”
Round Five—Viacom’s Latest Appeal
As might have been predicted, Viacom and the other plaintiffs, once again, have appealed the lower court’s latest decision and it appears that the fight will continue into the later rounds. I don’t expect either side to throw in the towel on this one any time soon.
