Viacom v. YouTube (Google) Case: A review of Section 512 (DMCA)
Join a panel of experts to discuss possible implications for significant issues raised by this litigation on DMCA Section 512. Panelists include Mindy M. Morton, Associate, Bergeson, LLP and Co-Chair of the High Technology Law Section of the SCCBA; Professor Tyler Ochoa, Faculty Member at Santa Clara Law School; Fred von Lohmann, Senior Counsel at Electronic Frontier Foundation; and moderator Jenny Lynn Cox, Executive Director, HTLI- Santa Clara Law
Jenny Lynn Cox
Jenny Lynn Cox is VP Legal Affairs, General Counsel and Secretary for Kana Software, Inc., a provider of enterprise software solutions for customer support and communications. She began teaching technology licensing and related courses at Santa Clara Law School in 1996. Prior to Kana, Ms. Cox was General Counsel at CoVia Technologies; Senior Corporate Counsel at BEA Systems and Corporate Counsel at Creative Technology. Ms. Cox received her AB from Occidental College and her JD from Columbia Law School.
Mindy M. Morton practices intellectual property and business litigation. Her wide ranging practice has included representation of one of the leading file sharing companies in its dispute with the recording industry. She has represented companies in securities, First Amendment, and commercial disputes. She is a frequent speaker on electronic discovery, document management, and litigation strategy, and has authored several articles on trade secrets, electronic discovery and document management issues.
Tyler Ochoa is a Professor of Law at Santa Clara University Law School.
Fred von Lohmann
Fred von Lohmann is a senior staff attorney with the Electronic Frontier Foundation, specializing in intellectual property issues. In that role, he has represented programmers, technology innovators, and individuals in litigation against every major record label, movie studio, and television network (as well as several cable TV networks and music publishers) in the United States. In addition to litigation, he is involved in EFF's efforts to educate policy-makers regarding the proper balance between intellectual property protection and the public interest in fair use, free expression, and innovation.
Exclusive right to reproduce, publish, or sell an original work of authorship. It protects from unauthorized copying any published or unpublished work that is fixed in a tangible medium (including a book or manuscript, musical score or recording, script or dramatic production, painting or sculpture, or blueprint or building). It does not protect matters such as an idea, process, or system. Protection in the U.S. now extends for the life of the creator plus 70 years after his or her death. Works made for hire are now protected for a maximum of 95 years from the date of publication or 120 years from the date of the creation of the work. In 1988 the U.S. joined the Bern Convention, an agreement that governs international copyright. The Digital Millennium Copyright Act, adopted in the U.S. in 1998, expanded owners' control over digital forms of their creations and penalized persons who sought to evade technological shields (such as encryption) for copyrighted material. See alsointellectual property; patent; trademark.
The topic for this evening's discussion is the Viacom YouTubeLitigation as a jumping off point for a broader discussion of section 512 of the Digital MillenniumCopyright Act. Probably, commonly referred to by many as a Safe harbor provision for avoiding onlineinfringement liability. In following introductions we are going to give you a brief background onsection 512 followed by a factual background at the Viacom YouTube Case. Then our panelists willanswer several questions related to specific issues raised by the litigation in section 512 moregenerally. Following that discussion we will have Q&A with the audience.So, first on my right is Professor Tyler Ochoa, a member of our faculty here at Santa Clara LawSchool, he is a leading scholar in copyright law, co authoring one of the leading case books and speaksfrequently on a wide range of topics in copyright law. Next to him is Mindy Morton, who practicesintellectual property and business litigation at the Law Firm of Bergeson, LLP in San Jose. She hasrepresented companies in securities, first amendment and commercial disputes including therepresentation of a leading file sharing company in his dispute with the recording industry. Next toMindy is Fred von Lohmann, a senior staff attorney at the Electronic Frontier Foundation. He hasrepresented programmers, technology innovators and individuals in a variety of copyright andtrademark litigation. Before joining EFF, Fred was a visiting researcher at Berkley Center for Law andTechnology and prior to that appointment was an associate at the Law Firm of Morrison & Foerster. Soto get this started, I am going to ask Professor Ochoa to give us a brief background on section 512.Okay. Well, the story of section 512 really goes back about 15 years to to the commercialization ofthe internet, so beginning between 89 1989 and 1991, the protocols for the world wide web wereinvented. The http, html the Hypertext Markup Language, urls all invented in this time period andthat paved away for commercialization of the internet. So we started to see ordinary users, ordinarypeople using the internet, and on large numbers for the first time. As part of that, you will see somepeople who would post copyrighted works of others on to websites or servers or space or on to bulletinboards that were automatically distributed to a number of people and copyright owners wereunderstandably upset about that they wanted to define some way they shut down this infringingactivity. But instead of just suing the people who were doing the posting, they went after internetservice providers, the people who provided the connections for the internet that made this infringementpossible right so an internet service provider might provide a bulletin board service that automaticallytransmitted messages to other people who had signed up for the bulletin board and what they said waswell you know, your computers are the ones that are doing the copy, right. Your computers are the onesthat are sending out this data all over, you are liable for copyright infringement because copyright wastraditionally strict liability statute.In 1995, we had a court decision that substantially rejected that argument that's religious technologycenter versus Netcom online communication services, it's a district court decision from up here in thenorthern district. And what the court basically said was well, yes copyright is traditionally strictliability but this is an automated technical process, right you know, it isn't - they are not affirmativelytransmitting anything through an element of human relation, right they have just set up a system wherethey transmit all messages, it's the person who is using the system he should be directly liable, not theperson who has set up the system. So no direct liability for automated copies made by computersowned by Internet Service Providers absence some evidence of relational causation, but ContributoryInfringement that carries liability were still possible if the elements of those were met so once theservice provider was notified of the alleged infringement, they then had knowledge were on notice andcould be held liable for contribute Contributory Infringement. Vicarious liability was possibility if theyhad the right and ability to control the infringing activity and they had to have a direct financial benefitthat wasn't met in the Netcom case.Now there are other courts that disagreed with Netcom, but I think it's fair to characterize Netcom as aleading case. And in 1998, service provider successfully lobbied congress to get a statute that partiallybut not completely quantified the Netcom approach. And the statute creates four Safe harbors forInternet Service Providers and the idea here is it's a limitation of liability, says that service provider isnot liable for monetary relief and only very limited injunctive relief. If it needs these particular criteria,one of these four Safe harbors, then it's not liable for for remedies for copyright infringement. So thefour Safe harbors are transitory, digital communications, caching, web hosting and information location tools.So start with number subsection A which is the transitory digital network communications so calledconduit liability. So you are not liable for transmitting, rounding or providing connections formaterial that goes through a system or network that's operated by the service provider or for you know,intermediate storage that occurs on that network provided you meet five conditions that somebody elseinitiates the transmission, it's an automated technical process, somebody you are not selecting therecipients to the material, you are the service provider. You are not making that intermediate transientcopies ordinarily available to anyone else and you are not modifying the content. So that's that'sprobably the the broadest of the four Safe harbors but it applies only to a limited number of serviceproviders. The second Safe harbor is for caching, intermediate and temporary storage of material sowhat you have is you know, somebody wants to see a website right so they sent a request to thecomputer that hosts that website they sent some data back and that gets interpreted by your browser andput up on your computer. But that you know, it take some time to go and get the data and come back.It's much easier if intermediate computers along the way just store temporary copies of the data. So thatyou don't have to go all the way to the host website every time you want the data you can just go to alocal website, it's got a cache copy a duplicate copy of the data. And it's used to facilitate facilitate access to it.Okay, so you have got a Safe harbor if you are doing this caching if you meet in this case it's eightdifferent criteria right. The material is made available online is made available by somebody else it'stransmitted through the direction of somebody else, the storage is carried out through an automatedtechnical process again system caching. It's transmitted without modification you comply withgenerally accepted standards for reloading and refreshing the material so the web site says they shouldbe refreshed every you know, every five minutes, you know, then you going to get a refreshed copyof refinements etcetera. You are not interfering with any information that would ordinarily be returned,you are complying with any conditions on access such as faster protection on fees and if you get tonotice that something is claimed to be infringing you take it down. That's the so called notice and takesdown provisions, it applies to the subsections B, C and D we will talk more in detail about that in thecourse of the evening.Some section C is the Safe harbor for a Web Hosting. Right, if you are simply making space availableon your server for somebody else to post things right you know, so storage at the direction of a user ofmaterial that rely resides on a system or network controlled by the service provider. We have got abunch of conditions here, right. One is a condition that has to do with what kind of knowledge theservice provider has? If the service provider does not have actual knowledge that the material isinfringing, is not aware of the facts or circumstances from which infringing activity is apparent we aregoing to have to talk about what that means or upon obtaining such knowledge awareness actsexpeditions so they have to take down the material. Right, so it's like you don't know, that it'sinfringing, you are not you don't have you are not on strong incurring, she don't have good reasonthat you suspect or be aware that is infringing and as soon as some body tells you its infringing youtake it down right? You do not receive a financial benefit directly attributable to the infringing activity,and if you have a right ability to control that's the same test as it is for vicarious infringement, I knowFred who want to talk about that. And once you notify the client infringement you got to moving,especially quickly to take it down.Now this is the whole procedure in there for what has to be in the notice. I am not going to go intodetail about what has to be in the notice right now, or we can talk about that in the course in theevening. Okay, okay and then for the Safe harbors Information Location Tools. This is linking users,hyperlinks that link users to an online location or indexing or direct to is a reference something that youknow, search engines like Google clearly provide Information Location Tools, indexes like yahoo andso forth, and the same three conditions that are applying to Web hosting under C also applying toinformation location tools under D. Okay, now the notice and take down provisions are quite complex,what they say is, if a copyright owner send you a complaint notice that identifies infringing material inyour system. Then in order to get the benefit of the B, C or D Safe harbors you got to immediatelydisable access to that content, right. Move that content from your system and disable access to itimmediately, right. Then you send a copy of the notice to the user who posted that content or who islinking to that content, right or who is cashing that content and then and then you tell them who washe? Yeah you don't if sent the notice because of the cash if it is if it is cash you are doing your self.But in case you send a notice to the user he is posted to the infringing content you tell him, okay this isbeen taking down because of this, right. If you think that this is been an error, you can sent us a counternotification, right. And if they sent you a counter notification within ten within ten to fourteen daysright, then you have to put the material back up, unless the content provider has filed suit against theallegedly infringing user. And if the content provider gives you notice that the files suit against theallegedly infringing user, then the material stays down, in effect it is the equivalent of getting apreliminary injunction with out having to get a court order to do that.My experience is that users really don't use the counter notification system very often. What you haveis content providers providing section 512C notices and if their complaint notices or some times evenif they are not, the service providers are taking stuff down and typically it staying down. Okay, in orderto get the benefit of this the service provider has to comply with certain conditions he got to meet thedefinition of service provider, will talk about what that is in the courts at the evening and in additionthe service provider has to do two things one of which is easily met. You have to accommodate and notinterfere with any Standard Technical Measures that are applicable to protect copyrighted works. Well,that is easy because right now there aren't any Standard Technical Measures. They have to being theyhave to being adopted according to a procedure where there is input from all source of affected people.Really nothing out there other than you know sort of the standard, no archive or Hyper Text Protocolsstuff. So that's no problem.The other one and this is the subject of lot of allegation is they must have adopted and reasonablyimplemented a policy that provides for the termination in appropriate circumstances of users that arerepeat infringers right. So you know what is it mean to a reasonable implemented policy, what areappropriate circumstances, who are repeat infringers, lots of vassal visual language in there, there forelot of litigation. Okay, so that is the summary of the major provision of section 512C and we can talkabout some of the details as we go along, but hopefully they gives you a background of what we were talking about.Thank you very much Tyler. So Fred can you give us some back ground on the Viacom versusYouTube and Viacom versus Google case.Sure. So I first I want to thank Tyler for doing a wonderful job, summarizing I just want to add oneother piece of back ground before I describe the lawsuit. Why it is that these Safe harbors matters somuch to the companies who are seeking to remain with in them. For those of who were copyrightlitigators this will come as all news to you, but for those who don't practice regularly in this area oftenfolks forget be remedial and of the copyright stick and there are statutory damages provided incopyright law that provide a minimum of seven hundred and fifty dollars per work infringedirrespective of any showing of actual harm to the copyright owner. So imagine for a moment that youare a YouTube or any other company that posts user generated content or host user generate content Ishould say, and you could potentially be seeing tens of thousands, hundreds of thousands, potentiallymillions of nominal infringement that may occur that would create a mandatory, statutory damages ofwhat that would basically put any company on the planet out of business and so that is the one very realrisk that motivates companies to try to shield them selves from even a small likelihood of liability.The second issue that people often forget is that there is really no such thing as a corporate veil when itcomes to copyright infringement liability. Officers and directors of companies have routinely been heldliable for as vicarious infringers and contributory infringers in a number of cases that have beenreported and then in fact in cases like the Napster case, the CEO and even investors have been namedin copyright litigations. So not only that you see rule in the statute images but it could potentially reachindividual assets and so that is an important piece of context to keep in mind as we talk about theseSafe harbors and why it is I think that these Safe harbors have essentially acted as huge magnets forinvestment in web to point out companies. If you are in the Safe harbor you are likely to get funded ifyou are not you are not like to get funded and we can talk about whether that is a good or bad thing butI think it is it is what it is. So let me talk about this law suit but in some ways has been emblematic ofthe tensions that have reasoned between service providers and copyright owners and the DMCA Safe harbor Context.Viacom along with a number of its subsidiaries sues YouTube in March of 2007, seems hardlyseems as though this case has been gone on for ever, but in fact it is really been with blink of an eyeas litigation goes. Filed in the Southern District of New York assigned to Judge Stanton there and thecomplaint is actually quite interesting reading to any one who is familiar with the DMCA Safe harbors,the 26 odd pages of the complaint, really are a road map for the suite of arguments that copyrightowners I think use to attack assertions of the Safe harbor, every thing is in there, right and it is clearlywritten to sent that message obviously you could put together a complaint like this I could probably doit inside of ten pages no no trouble and meet requirements of rule 8. Somebody went to the trouble ofwriting 27 very careful detailed pages here in this case the law firm of general block don't for really isthe lead counsel, the same my adverse counsel in the Grokster Case, I keep telling him he should besending me you know presents for all the business making him for you know beating me in that case.So in that complaint and just so we were get both sides of this Google which had acquired YouTubeshortly before this laws whose was brought has hired David Kramer, Wilson Sonsini here in inSilicon Valleys sort of the lead counsel on the other side.So let us talk briefly about kind of the the heart of the complaint. As as all of you no doubt knowYouTube is hosting millions of short form video creations on behalf of millions of users around theworld. Copyright owners are troubled they are concerned by the fact that many users rather than uploading original creativity of there own, have chosen instead up load segments of their favoritetelevision shows, there favorite movies, in some circumstances they may include copyrighted musicthings of that kind, and so what the complaint essentially says is that YouTube is benefitingcommercially directly as a result of these infringements, and so as you read the allegations you see veryvividly the the ways in which Viacom intends to attack the applicability of the Safe harbors. So just alay out the basic allegations, the allegations are, that Google and YouTube are infringing the publicperformance right, the public display right and the reproduction right and that they are doing sodirectly, contributorily, vicariously and by inducement. So pretty much the whole deck of cards, all thepotential claims that are possible are in there.They specifically alleged that YouTube knows and intends that these infringements should have occur,so this goes to this issue of whether there is actual knowledge, which will disqualify a service providerfrom the Safe harbor. It also goes to the issue of so called Red Flag Knowledge which the DMCA saysif you are aware of acts and circumstances from which infringement should have been apparent youwill also lose this Safe harbor, another disqualifier, and there is the complaints specifically says in factuses that legislate of term that is in the legislate of history in the DMCA says YouTube is aware of redflags going on quote that should have made the ongoing infringements obvious. They also specificallysay that YouTube has failed to take any precautions to reduce the amount of infringement arguing thatthere are things that they could have done, and in fact arguing that they have taken steps to reduceinfringements for companies with whom they have a business relationship, arguing that in fact whatGoogle is doing here is using the availability of Copyright Filtering Technology as a god to force tocopyright owners into into deals. They say that Google is directly profiting as a result of this andcontrols the infringements pointing out that Google terms of service are YouTube's terms of servicespecifically grant to Google the right to remove videos at any time they like variety of other standardlevels of control that's pretty typical for the terms of service for a free service like this.They specifically talk about the fact that the availability of videos on YouTube harms their ability tolicense that same material into other online channels things like Juiced for example. And anothercompeting online video distribution service, they say that undermines their ability to exploit theseworks on their own websites, pointing out that comedy Central for example makes some of the dailyshow clips available in its own website. They interestingly as Tyler mentioned the outset the DMCASafe harbors applied four particular functions, so called conduit function, caching, hosting andlinking, loosely Information Location Tools but loosely understood as linking. You see in thecomplaint of very clear effort to characterize YouTube's activities as not being not those four things,no surprise they specifically talk about the fact that YouTube transcodes videos after they are uploaded.So whatever format your video may be in after you uploaded to YouTube, YouTube translates that intoa common format which then uses for all its videos they also point out Google displays ads, theydisplayed the YouTube logo, they have a unique interface that they provide, I read all of these asefforts in the complaints to say that whatever else may be true about the Safe harbors YouTube here isbe outside the limits of just the four functions, as I sometimes counsel clients, you always have toworry that one limb will be hanging outside the blanket right? Because the copyright owner will gohunting for anything you do that arguably does not fall within the four functions, and that's what youcan expect the fire to be concentrated right on whatever it is that apparently falls outside those four functions.They specifically attack a number of YouTube features, and one is the private sharing feature whichsome of you may know you can upload a video and only make it available to people you denominate asyour clinical friends Viacom characterizes these as hidden videos by which they mean hidden fromViacom's Copyright Investigator. And they alleged that this is YouTube's effort to make it moredifficult for them to police the YouTube site. They also point out that YouTube permits embeds andsharing. So anyone who has used YouTube has probably seen these you can embed the YouTube videoin another website so to pierce that is on that site in a blog for example and in fact its streaming directfrom YouTube. Again the argument on the part of Viacom is that essentially is allowing YouTube tofacilitate infringements that evade the ability of Viacom investigators to find them because again theinfringements happening on some blog rather that easily searchable on the YouTube homepage. Theyalso point out that the sharing feature allows users to email essentially watch these video here again theargument is these makes it easier for infringers to get the word out but harder for investigators tolocate, there are also two other items that they find worth mentioning in the complaint, one isYouTube's ability to remove pornography from the site, there have been several people who haveargued well if you can remove porn why cant you remove copyright infringements the one implies -that the power to do the one implies the power to do the other. Again I think going to these question ofwhether they have control, control over the infringements combined with the financial benefit it is oneof the disqualifiers as Tyler mentioned the outset.Finally they argue that they the YouTube fails to block returning recidivist infringers that these userseven if they are identified and kicked off YouTube for infringement can come back and just register anew account. And this again I think again to anyone who is versed in this area of law immediately raisesthe question of YouTube's ability to satisfy the policy of terminating of repeated infringers which is arequirement under section 512-I. So again everything in the compliant as I think carefully crafted topoint at what Viacom believes are our weaknesses in YouTube's Safe harbor defenses. So very briefly letme tell you what has happened since the case was filed bringing it's all up-to-date. First Viacom hascontinued to sent DMCA take down notice as by the bushel as it where as the Tyler mentioned under theDMCA Safe harbor for hosting which is the one that I think everyone expects YouTube to principallybe sheltering within, you must have a notice and takedown policies such that copyright owners cannotify you of infringements and you would promptly remove those infringements from your site.Well Viacom has taken this challenge quiet seriously and delivered one hundred thousand takedownnotices in a single day. And in fact since those times since the march they have filed publicly theyacknowledged sending over a 160000 takedown notices to YouTube one assumes that number probablylarger than that the 160000 numbers from some months ago now. But I do know from conversationswith Viacom's general council that they admit that the number the incidence of infringements of theirworks on YouTube have dramatically declined since they began this take down campaign and he saidthat for whatever set of reasons perhaps the we got out perhaps we managed to weed out the mostpersistent posters of our material that for better for worst they have said that their DMCA take downpolicing efforts are much less onerous than they were before this entire adventure began. So make ofthat what you will because of course one of the arguments in the Viacom's complaint is that it is youknow impossible or unfair for the copyright owner to they have to shoulder the burden of finding andsending takedown since their view that its inadequate solution to the problem there is at least someempirical evidence suggested main article been quite as inadequate as Viacom alleged originally.Now of course they still have to be paid full time staff do nothing with search YouTube and from theirperspective that's a burden that they would like to minimize that will talk a bit more about that. Sincethis Viacom massive was filed there have been a number of other lawsuits filed against YouTubelargely with the same allegations several style that's class actions and there is in essence a process ofconsolidation in STNY and in front of Judge Stanton going on right now. So there is a rather infamoushelicopter pilot in the Los Angeles area named Mr. Tier and Tier had actually been has the honor andthe distinction of being the first to sew YouTube, he is the only law suit copyright law suit on in thisbase I am aware that it was filed before the acquisition went through with Google. And so he startedthe first lawsuit on the field as I am aware but he has in recent months moved tried to get his caseconsolidated with the class actions in the New York, Judge Florence-Marie Cooper in Los Angelesappears to be going along with that, so he may find his action rolled-up with New York class actions.There was also a song writer's class action brought in Tennessee and that also has been moved I thinkit he was dismissed in Tennessee and those sets of plaintiffs have now moved to join the class action in New York.The class actions have been brought on behalf of song writers initially, the N-M-P-A, National MusicPublisher Association has been sort of leading that, and the that sort of class the lead class council inthat actions as Proskauer Rose in New York, and they basically have been joined by a host sort of anarray of plaintiffs that are little that boggle the mind quite frankly, I didn't realize that the you justtake a few examples the UK Rugby Football League cares very much about this problem and they areamong the leaders there, and also the English Premiere Soccer League, a number of other sports relatedentities and its just really been a host of rights holders who have kind of piled on in the New Yorkactions, And so we basically see this case grinding forward in New York. It's in discovery as far as Iam aware that have been noticed positive motions filed yet, they have been there has been, I am surethat there will be a great deal of discovery tussling as that thing moves ahead. In the mean time wehave Google announcing last week, I believe the implementation of a new Video Filtering Technology,home grown apparently developed with in Google, and as I understand and we can talk more about itsdetails as this evening goes on, but the basic idea is they will be comparing the video content of videosas they are up loaded to a reference database of finger prints essentially that seek to match the thecontent that included in the video with any of the reference data that is submitted by copyright owners to the database.So there is sort of two parts here, the copyright owner must first submit a referent to the database inorder for it to be checked against and then the second piece is when users up load videos, those videoswill be you know, processed and then compared against the reference database and this is somethingGoogle says is it's live now ready to go there is a process of copyright owners who would like tosubmit reference Google suggests that you simply up load all your content to Google, and they willtake care of that for you as one copyright one lawyer who represents the copyright industries put in mybusiness that's called Hutzba and they will also you know apparently update that, as their technologyimproves you will automatically get the benefits of those improvements if you have done that. I haveno idea how many right holders have yet agreed to do that although Google I know is working withsome pretty major right holders as kind of pilot project, pilot participants in the project if you will.And Viacom by the way has said they find this this effort well commendable entirely inadequate andso there is no sign yet that this filter by it self will result in any dismissal or settlement of the litigation,and finally just this week actually there was an announcement of something called user generatedcontent principles, that were announced by coalition of a number of very large media companies andwe see Universal, Fox, Viacom, - I am forgetting couple of others, the pretty big that sort of a thecoalition of the leading large media players who have complained about this this difficulty ofinfringement and all of them on the board at least seriously serious set of them and also somemembers of the User Generating Content service provider world including those prominently MySpace, of course a unit of Fox, and so perhaps not entirely disinterested in this. Microsoft which assome of you may ask why Microsoft has a video hosting site? Apparently they do and and also VAIOwhich is a smaller user generated called the Video Hosting site and so these principles are available atugcprinciples.com I believe and sort of lay out from the copyright owner side these these mediacompanies and that the other technology companies involved what they view as being adequate, so thatpretty much brings a up to date the laws of continuous and the badgering I guess as just begun.Oh, I think you know, for starting that easy with soft balls I am going to volunteer for those. Who