Not a Lexis Advance subscriber? Try it out for free.

Viacom Int'l, Inc. v. YouTube, Inc.

United States Court of Appeals for the Second Circuit

October 18, 2011, Argued; April 5, 2012, Decided

Docket No. 10-3270-cv, Docket No. 10-3342-cv

Opinion

 [***1285]  [*25]   José A. Cabranes, Circuit Judge:

This appeal requires us to clarify  [**11] the contours of ] the "safe harbor" provision of the Digital Millennium Copyright Act (DMCA) that limits the liability of online service providers for copyright infringement that occurs "by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider." 17 U.S.C. § 512(c).2

The plaintiffs-appellants in these related actions—Viacom International, Inc. ("Viacom"), The Football Association Premier League Ltd. ("Premier League"), and various film studios, television networks, music publishers, and sports leagues (jointly,  [*26]  the "plaintiffs")3—appeal from an August 10, 2010 judgment of the United States District Court for the Southern District of New York (Louis L. Stanton, Judge), which granted summary judgment to defendants-appellees YouTube, Inc., YouTube, LLC, and Google Inc. (jointly, "YouTube" or the "defendants"). The plaintiffs alleged direct and secondary copyright infringement based on the public performance, display, and reproduction of approximately 79,000 audiovisual "clips" that appeared on the YouTube website between 2005  [**12] and 2008. They demanded, inter alia, statutory damages pursuant to 17 U.S.C. § 504(c) or, in the alternative, actual damages from the alleged infringement, as well as declaratory and injunctive relief.4

In a June 23, 2010 Opinion and Order (the "June 23 Opinion"), the District Court held that the defendants were entitled to DMCA safe harbor protection primarily because they had insufficient notice of the particular infringements in suit. Viacom Int'l, Inc. v. YouTube, Inc., 718 F. Supp. 2d 514, 529 (S.D.N.Y. 2010).  [**13] In construing the statutory safe harbor, the District Court concluded that the "actual knowledge" or "aware[ness] of facts or circumstances" that would disqualify an online service provider from safe harbor protection under § 512(c)(1)(A) refer to "knowledge of specific and identifiable infringements." Id. at 523. The District Court further held that item-specific knowledge of infringing activity is required for a service provider to have the "right and ability to control" infringing activity under § 512(c)(1)(B). Id. at 527. Finally, the District Court held that the replication, transmittal, and display of videos on YouTube constituted activity "by reason of the storage at the direction of a user" within the meaning of § 512(c)(1). Id. at 526-27.

These related cases present a series of significant questions of statutory construction. We conclude that the District Court correctly held that the § 512(c) safe harbor requires knowledge or awareness of specific infringing activity, but we vacate the order granting summary judgment because a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website. We further hold that the District  [**14] Court erred by interpreting the "right and ability to control" provision to require "item-specific" knowledge. Finally, we affirm the District Court's holding that three of the challenged YouTube software functions fall within the safe harbor for infringement that occurs "by reason of" user storage; we remand for further fact-finding with respect to a fourth software function.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

676 F.3d 19 *; 2012 U.S. App. LEXIS 6909 **; 102 U.S.P.Q.2D (BNA) 1283 ***; Copy. L. Rep. (CCH) P30,231; 2012 WL 1130851

VIACOM INTERNATIONAL, INC., COMEDY PARTNERS, COUNTRY MUSIC TELEVISION, INC., PARAMOUNT PICTURES CORPORATION, BLACK ENTERTAINMENT TELEVISION, LLC, Plaintiffs-Appellants, v. YOUTUBE, INC., YOUTUBE, LLC, GOOGLE, INC., Defendants-Appellees.THE FOOTBALL ASSOCIATION PREMIER LEAGUE LIMITED, on behalf of themselves and all others similarly situated, BOURNE CO., CAL IV ENTERTAINMENT, LLC, CHERRY LANE MUSIC PUBLISHING COMPANY, INC., X-RAY DOG MUSIC, INC., FÉDÉRATION FRANÇAISE DE TENNIS, MURBO MUSIC PUBLISHING, INC., STAGE THREE MUSIC (US), INC., Plaintiffs-Appellants, Robert Tur, d/b/a Los Angeles News Service, The Scottish Premier League Limited, The Music Force Media Group LLC, The Music Force, LLC, Sin-Drome Records, Ltd., on behalf of themselves and all others similarly situated, National Music Publishers' Association, The Rodgers & Hammerstein Organization, Edward B. Marks Music Company, Freddy Bienstock Music Company, d/b/a Bienstock Publishing Company, Alley Music Corporation, Plaintiffs, v. YOUTUBE, INC., YOUTUBE, LLC, GOOGLE, INC., Defendants-Appellees.

Subsequent History: As Corrected May 2, 2012.

As Amended June 28, 2012.

On remand at, Summary judgment granted by Viacom Int'l, Inc. v. Youtube, Inc., 940 F. Supp. 2d 110, 2013 U.S. Dist. LEXIS 56646 (S.D.N.Y., Apr. 18, 2013)

Prior History:  [**1] Appeal from the judgment of the United States District Court for the Southern District of New York (Louis L. Stanton, Judge), granting summary judgment to the defendants-appellees on all claims of direct and secondary copyright infringement based on a finding that the defendants-appellees were entitled to safe harbor protection under the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512. Although the District Court correctly held that the § 512(c) safe harbor requires knowledge or awareness of specific infringing activity, we vacate the order granting summary judgment because a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website. We further hold that the District Court erred by interpreting the "right and ability to control" infringing activity to require "item-specific" knowledge. Finally, we affirm the District Court's holding that three of the challenged YouTube software functions fall within the safe harbor for infringement that occurs "by reason of" storage at the direction of the user, and remand for further fact-finding with respect to a fourth software function.

Viacom Int'l, Inc. v. YouTube, Inc., 718 F. Supp. 2d 514, 2010 U.S. Dist. LEXIS 62829 (S.D.N.Y., 2010)

Disposition: Affirmed in part, vacated in part, and  [**2] remanded.

CORE TERMS

infringing, service provider, safe harbor, videos, user, network, actual knowledge, website, clips, circumstances, blindness, ability to control, storage, red flag, summary judgment, notification, willful, copyright infringement, League, monitoring, clips-in-suit, expeditiously, provisions, functions, software, disable, upload, grant summary judgment, plaintiffs', provider

Copyright Law, Copyright Infringement Actions, Digital Millennium Copyright Act, General Overview, Prohibited Conduct, Pertinent Online Activities, Safe Harbor Provisions, Civil Procedure, Summary Judgment, Entitlement as Matter of Law, Genuine Disputes, Appeals, Summary Judgment Review, Standards of Review, Legal Entitlement, Materiality of Facts, Governments, Legislation, Interpretation, Appellate Briefs, Reviewability of Lower Court Decisions, Preservation for Review