MCLE ARTICLE AND SELF-ASSESSMENT TEST By reading this article and answering the accompanying test questions, you can earn one MCLE credit. To apply for credit, please follow the instructions on the test answer sheet on page 25. by Andrew M. White and Joshua M. Keesan CopyrightCapabilities Courts continue to be challenged to reconcile the Copyright Act to new technologies s consumers shift to experiencing seen when the laws were enacted, how can flict was addressed under a particular safe television, movies, and other enter- content producers, distributors, and lawyers harbor provision of the Digital Millennium tainment through Internet-based understand what is permissible? Copyright Act (DMCA) in Viacom v. YouTube. delivery systems, broadcasters, stu- Recent litigation continues to demonstrate The second conflict is found in American dios, and other traditional content judicial efforts to reconcile longstanding legal Broadcasting Companies, Inc. v. Aereo, Inc. providers struggle to preserve their principles with changing technologies. Two The implications of these cases for content intellectual property rights (and income areas of acute interest in this conflict between owners, potential infringers, and service streams) under legal frameworks that were copyright protection and technological inno- providers are significant. devisedA in an earlier, less technological envi- vation are 1) Internet services that allow In 1998, recognizing that existing copy- ronment. The proliferation of new content users to upload and share video clips without right law was in need of an update for the distribution technologies has also led to an permission from copyright owners, and 2) an array of new methods to misappropriate Internet service that allows its customers to Andrew M. White is a partner and Joshua M. Keesan works without obtaining permission from view broadcast television programs over the is an associate in the Los Angeles office of Kelley Drye the owners of the intellectual property in Internet, even though the program owners did & Warren LLP. The authors represent film, television, those works. When old laws are interpreted not grant the service provider permission to and other entertainment companies in intellectual with respect to technology that was unfore- copy or transmit the programs. The first con- property and general business litigation. Los Angeles Lawyer May 2014 23 digital age, Congress passed the DMCA.1 infringing” and “facts or circumstances from aware of facts that would have made the The act includes Title II, the Online Copy- which infringing activity is apparent” should specific infringement ‘objectively’ obvious to right Infringement Liability Limitation Act,2 be construed to mean a general awareness that a reasonable person.”18 Thus, the Second the purpose of which is “to detect and deal infringements are widespread and common, Circuit affirmed the lower court’s ruling that with copyright infringements that take place or instead to mean actual or constructive “actual knowledge or awareness of facts or in the digital networked environment.” knowledge of “specific and identifiable circumstances that indicate specific and iden- Rather than rewrite copyright law in its infringements of individual items.”9 The dis- tifiable instances of infringement will dis- entirety, Congress created safe harbors to trict court concluded that the latter approach qualify a service provider from the safe har- exclude liability for certain common activ- was proper.10 bor.”19 ities of service providers.3 The four safe Part of the rationale for this decision was Despite this affirmation of the district harbors under Section 512 of the act are that, unlike most statutory schemes, the court’s interpretation of the law, the Second for 1) transitory communications, 2) sys- DMCA places the burden of policing copy- Circuit concluded that in light of the facts pre- tem caching, 3) storage of information on right infringement on the copyright owners sented, summary judgment was premature. systems or networks at the direction of users, rather than on the defendant.11 Thus, the For example, the court acknowledged various and 4) information location tools.4 Notably, DMCA safe harbors do not condition pro- internal e-mail messages among YouTube these safe harbors apply only “if the provider tection on whether the service provider principals that appeared to acknowledge the is found to be liable under existing princi- actively monitors its service or affirmatively presence of illegal and infringing content on ples of law.”5 seeks facts indicating infringing activity. What the site.20 Based on those messages, a rea- The third safe harbor deals with infor- matters is what the service provider does sonable juror could conclude that YouTube mation uploaded by users onto systems or net- after learning about infringing material.12 “had actual knowledge of specific infringing works and is only available if the service The district court concluded that, based on the activity, or was at least aware of facts or cir- provider 1) does not have actual knowledge record on summary judgment, it was uncon- cumstances from which specific infringing that the material or an activity using the troverted that when YouTube was given take- activity was apparent.”21 material on the system or network is infring- down notices by Viacom and others, it quickly The plaintiffs also argued that, regardless ing, 2) in the absence of such actual knowl- removed the potentially infringing material. of Section 512(c)’s requirements, the evi- edge, is not aware of facts or circumstances As a result, YouTube was thus protected from dence showed that YouTube was “willfully from which infringing activity is apparent, or liability.13 blind” to specific infringing activity, a con- 3) upon obtaining such knowledge or aware- The plaintiffs appealed immediately, argu- cept from common law.22 The Second Circuit ness, acts expeditiously to remove, or dis- ing that if affirmed, the district court’s inter- held that because the DMCA does not abro- able access to, the material.6 pretation of Section 512(c) “would radically gate the doctrine of willful blindness, it Although securing adequate rights and transform the functioning of the copyright sys- could be applied, in appropriate circum- avoiding intellectual property disputes can be tem and severely impair, if not completely stances, to establish a defendant’s knowledge a tricky business even under more traditional destroy, the value of many copyrighted cre- or awareness of specific instances of copy- content delivery models, things get trickier in ations.”14 Rather than looking to specific right infringement.23 The court remanded to the case of the many Internet services (such instances of actual knowledge of infringe- allow the district court to consider whether as YouTube, Vimeo, and others) that allow ment, the plaintiffs argued that under the YouTube made a “deliberate effort to avoid users to upload and share content of their DMCA, Internet service providers “that not guilty knowledge” as a matter of common own. In these situations, the safe harbor is only are aware of pervasive copyright infringe- law.24 important in defending against infringement ment, but actively participate in and profit Following remand, YouTube submitted claims. Although video sharing sites have from it, enjoy no immunity from the copyright to the district court a list of 63,060 video clips proven to be remarkably popular, user- laws and may be held to account for their that were at issue in the litigation and that it uploaded content raises a number of copyright theft of artists’ creations.”15 claimed were never subject to any takedown concerns for rights holders. notices and challenged the plaintiffs to pro- The Second Circuit’s Opinion vide evidence of notice sufficient to meet the Viacom v. YouTube In April 2012, the Second Circuit issued its standards of Section 512(c).25 Over the objec- The challenges of interpreting the require- unanimous opinion.16 On the central issue of tions of the plaintiffs, the district court con- ments of the safe harbor found in Section the requirements of DMCA safe harbor found cluded that it remained their burden to show 512(c) came to a head in Viacom International, in Section 512(c)(1)(A), the Second Circuit that YouTube was aware of the specific Inc. v. YouTube, Inc.7 The case, which was noted that the act offers two scenarios—one infringements at issue and that the plaintiffs merged with a case brought by various film subjective and one objective. The court held lacked sufficient evidence to allow a clip-by- studios, music publishers, and sports leagues, that the reference in Section 512(c)(1)(A)(i) to clip assessment.26 sought substantial damages for the alleged a service provider’s “actual knowledge that On the issue of willful blindness, the dis- public performance, display, and reproduction the material or an activity using the material trict court similarly concluded that the evi- of approximately 79,000 clips appearing on on the system or network is infringing,” dence proffered by the plaintiffs demon- YouTube between 2005 and 2008.8 implicates the defendant’s subjective belief— strated, at best, that YouTube was aware In 2010, the U.S. District Court for the in other words, liability turns on “whether the that infringing activity was taking place with Southern District of New York granted sum- provider actually or ‘subjectively’ knew of spe- respect to particular works but not that mary judgment to YouTube and its parent