Case Study: Viacom V. YouTube. Was this the right outcome? Why or why not? The Second Circuit recently breathed new life into Viacom International Inc.'s and other video content owners' copyright infringement lawsuit against Google Inc.'s YouTube that alleges over 70,000 instances of infringement on YouTube's site between 2005 and 2008. However, in doing so, it did not severely limit the "safe harbor" protections of the Digital Millennium Copyright Act as Viacom had urged the court to do. Rather, it held that such protections would only not be available to YouTube if it had actual knowledge or was generally aware of facts and circumstances of specific infringing activity. The fact that YouTube was generally aware of prevalent infringement on its site did not preclude it from the DMCA's safe harbor. In 2010, the District Court for the Southern District of New York granted summary judgment in YouTube's favor, finding that it was immune from the plaintiffs' claims of copyright infringement as YouTube was eligible for the safe harbor protections available under the DMCA for qualified service providers such as YouTube. The main issue on appeal was whether YouTube could be deprived of the DMCA safe harbor protections if it was generally aware of prevalent infringement on its site, or whether, instead, it would only be deprived of such protections if it had actual knowledge or was generally aware of specific infringing activity. The Second Circuit agreed with the district court's holding that the DMCA's safe harbor is only unavailable where a service provider has actual knowledge or is generally aware of facts and circumstances of specific infringing activity. However, it did still reverse the district court's granting of summary judgment in favor of YouTube, as it found that a reasonable jury could find that YouTube did in fact have the requisite actual knowledge or general awareness, and remanded the case back to the district court for this determination. It also asked the district court to determine if YouTube should be ineligible for safe harbor protections because it engaged in willful blindness. Safe Harbor Protections The safe harbors of the DMCA protect a qualifying online service provider from claims of copyright infringement for content posted by users of the service provider's service, as long as the service provider, upon becoming aware of the infringing activity, acts expeditiously to remove the infringing material. One of the criteria entitling a service provider to safe harbor protection concerns whether the service provider was aware, specifically or generally, of infringing activity. The focus of the Viacom appeal was whether the general awareness language in one of the safe harbors, referred to as "Red Flag Knowledge," only required general awareness of prevalent infringing activity on YouTube, or, instead, required general awareness of facts and circumstances of specific infringement. Viacom's Complaint In Viacom's case before the district court, Viacom alleged that between 2005 and 2008, over 60,000 instances of video clips that were posted on YouTube contained unauthorized copies of Viacom's copyrighted shows, such as "SpongeBob SquarePants" and "The Daily Show." It was not disputed that Viacom sent a massive takedown notice to YouTube in 2007 and that YouTube quickly responded by removing all the referenced clips from its site. Viacom argued that YouTube, nonetheless, should not be entitled to the DMCA's safe harbor because it was generally aware of prevalent infringement on its service and thus was not eligible for safe harbor protection. Viacom also argued that its take-down notice required YouTube to take down all infringements of its content referenced in the takedown notice and not just the specific instances of infringement identified in the takedown notice. YouTube's Defense YouTube, in opposition to Viacom's appeal, argued that it was entitled to the safe harbor defense as it was not actually or generally aware of the specific infringements claimed by Viacom until it received the DMCA takedown notice from Viacom, and that once it did receive the notice, it acted expeditiously in removing all the referenced clips. YouTube further argued that it did not have an affirmative duty to search for all infringements of Viacom's content, but only those postings it was made aware of by Viacom. As noted by the Second Circuit in its decision, by the time of the parties' summary judgment briefing, site traffic on YouTube had reached over 1 billion daily views, with more than 24 hours of new video uploaded to the site every minute. YouTube argued that with such volume, it would be prohibitively burdensome to require it to actively monitor every upload on its site for potentially infringing content. Second Circuit's Decision In its decision of the appeal, the Second Circuit agreed with the district court's interpretation of the DMCA's safe harbor provision. It held that with respect to "Red Flag Knowledge," awareness of prevalent infringing activity in general is not enough to disqualify a service provider from protection. Rather, to be disqualified from the safe harbor, in the absence of actual knowledge, a service provider must have awareness of facts or circumstances that indicate specific and identifiable instances of infringement. It went on to explain that actual knowledge is a subjective standard, while general, red- flag knowledge is an objective standard. However, the Second Circuit did disagree with the district court's determination that the plaintiffs failed to demonstrate a fact issue regarding the extent of YouTube's knowledge. The Second Circuit focused on internal YouTube correspondence in which company founders and other upper-level management acknowledged that certain video clips users had uploaded to the website constituted infringement. The Second Circuit held that these emails "raised a material issue of fact regarding YouTube's knowledge or awareness of specific instances of infringement." Thus, the court reversed the grant of summary judgment in YouTube's favor and remanded the case to the Southern District of New York for a determination of whether the clips referenced in the emails were clips at issue in the lawsuit, and YouTube was therefore aware of specific instances of infringement. The Second Circuit further held that the common law doctrine of willful blindness "may be applied, in appropriate circumstances, to demonstrate knowledge or awareness of specific instances of infringement under the DMCA," and instructed the district court to consider on remand whether there were sufficient facts to demonstrate that YouTube made a deliberate effort to avoid knowledge of specific instances of infringement, which would also deprive it of the protections of the safe harbor. Conclusion This decision confirms that online service providers can still rely on the safe harbor provisions of the DMCA in defending against copyright infringement claims, even if these providers have general awareness of prevalent infringing activity on their websites. It is general awareness of specific instances of infringement that makes a service provider ineligible for the protections of the safe harbor. What remains unclear is the factual showing a copyright holder will have to make in order to show general awareness of specific infringing activity and to establish an inference of specific knowledge based upon the willful blindness doctrine. We expect that the proceedings before the Southern District upon remand will flesh out some of these issues. Online service providers do need to continue to have in place procedures for expeditiously handling DMCA takedown notices, and should quickly address instances where they otherwise have knowledge of specific infringing activity, whether that knowledge is actual or general. As to copyright owners, it is in their best interests to quickly send out DMCA takedown notices to service providers of infringements that they discover and to specifically identify the infringing materials that they are seeking to have removed from the service provider's site. --By Marc J. Rachman and Holly A. Melton, Davis & Gilbert LLP Marc Rachman is a partner and co-chairman of the intellectual property litigation practice group of Davis & Gilbert, in the firm's New York office. Holly Melton is an associate and member of the firm's IP litigation practice group in New York. The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice