Over the past decade, websites and Internet Service Providers (ISPs) have learned to rely on the takedown procedures of the Digital Millennium Copyright Act (DMCA) in order to generally avoid copyright infringement liability imposed by content owners.
ISPs have been able to shield themselves from all liability form their users posting infringing material by having a proper takedown system in place. But, a recent Second Circuit case undermines that level of confidence in takedown procedures.
The Second Circuit Court of Appeals is the first U.S. court to decide that ISPs may still be liable for copyright infringement even after complying with the takedown provisions of the DMCA.
As a result, the underlying questions remain: should intermediaries be held liable for their users infringing actions?
If so, then to what extent? Where does the law now draw the line? How can a website owner or ISP best protect itself when posting content provided by others?
The DMCA is known for allowing ISPs, under certain circumstances, to avoid copyright infringement liability for activities that would otherwise lead to secondary liability for copyright infringement.
The ISPs must not receive a financial benefit directly tied to the infringing activity when the ISP has the right and ability to control that activity, and must follow certain takedown provisions listed under § 512(c) of the DMCA to qualify for the safe harbor protection.
According to the language of §512(c), actual or “apparent” knowledge of infringing activity bars this protection. However, no court has ever held that only apparent knowledge of infringement provides a basis for liability of an ISP complying with the DMCA until now. Courts have instead required that a claimant demonstrate the ISP’s actual knowledge of specific infringements before imposing liability.
The Second Circuit’s ruling in Viacom International, Inc. v. YouTube, Inc. reaffirmed the “actual knowledge of specific infringements” standard articulated in previous case law, but it also addressed the limits of DMCA § 512(c)’s safe harbor – specifically asking, “can an ISP take advantage of the DMCA safe harbor when it is ‘willfully blind’ to infringement?”
Viacom sued YouTube and Google for direct and secondary copyright infringement of its public performance, display, and reproduction rights in about 79,000 audiovisual clips on YouTube’s website from 2005 to 2008. A district court granted summary judgment in favor of YouTube after concluding YouTube fell under the protection of § 512(c)’s safe harbor because, among other reasons, YouTube had insufficient notice of the particular infringements at issue (i.e. no actual knowledge).
On appeal, the Second Circuit vacated the decision. The Second Circuit held that an ISP may be prohibited from claiming the safe harbor protection if it is subjectivelyaware of facts or circumstances that would make the specific infringement objectively apparent to a reasonable person (i.e. apparent knowledge). Moreover, the Second Circuit held that “willful blindness” — the deliberate effort to avoid knowledge of infringement — may impute knowledge or awareness of specific instances of infringement, thereby, precluding any safe harbor protection.
Finally, the Second Circuit held that a service provider has the “right and ability to control” infringing activity under § 512(c)(1)(B) even if it lacks knowledge of specific infringing activity, though “something more” than the mere ability to remove or block access to infringing materials is necessary to confer such control. But the court did not define what that “something more” could be; that remains to be seen from a later decision. The Second Circuit thus rejected the Ninth Circuit Court of Appeals’ holding in UMG Recordings, Inc. v. Shelter Capital Partners LLC that a service provider cannot control infringing activity until it has actual knowledge of the infringing material, and created a circuit split on “right and ability to control.” The standard for determining whether or not an ISP qualifies for safe harbor protection will now differ from circuit to circuit.What does this mean for ISPs? Now if a service provider has actual knowledge of the infringing activity, is aware of facts and circumstances that would place a reasonable person on notice of such infringement, or has the right and ability to control the infringement activity (under a Second Circuit definition yet to be applied), the ISP cannot avoid liability merely by expeditiously removing or blocking access to the infringing material in response to take down requests.
ISPs may no longer have the broad protection once assumed to be afforded under the DMCA’s safe harbor, but the consequences of the recent Second Circuit’s ruling are yet to be seen. ISPs and website operators should be cautioned to reexamine their policies and procedures for screening and monitoring, as well as for reporting and acting upon, user-uploaded content.
Lizbeth Hasse
Lizbeth Hasse is the founder of Creative Industry Law. Her practice encompasses intellectual property, media, entertainment and business counseling for corporate and individual clients. She is also a neutral expert in these areas, negotiating and resolving IP, business and media matters.
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