January 04, 2013 Articles

You're a YouTube Star! Now What?

Approaches to enforce your rights when copyrighted works are posted without permission.

By Mary Ann L. Wymore and John E. Petite

If you discover your copyrighted work on YouTube without your permission, you are not alone.  Following a website survey conducted by employees, YouTube estimates that 75 to 80 percent of all YouTube streams contain copyrighted material. Similarly, 2Google financial advisor Credit Suisse estimates that more than 60 percent of YouTube's content is copyrighted and that only 10 percent of such copyrighted content uploaded to YouTube was authorized.

What do you do if you find your copyrighted works on YouTube without permission?  Essentially, you have two options. The quickest and easiest option is to issue a take-down notice to YouTube under the Digital Millennium Copyright Act (DMCA). The second option is to file a lawsuit seeking immediate injunctive relief in the form of a temporary restraining order or preliminary injunction.

I.  Following the Procedure Set Forth in YouTube's Terms of Service and the DMCA
Under YouTube's Terms of Service, which specifically reference the DMCA, copyright owners who believe that content on YouTube infringes their copyrighted material must submit notification of the infringement to YouTube's copyright agent. If YouTube receives a valid written notification, the infringing video will be taken down from the site. To satisfy the notification requirement for YouTube account holders, YouTube provides an online copyright complaint form. A nonaccount holder must send its written notification to YouTube's designated copyright agent set forth in the terms of service. The written notification must contain "substantially" the following information: (1) a signature by the copyright owner or authorized representative; (2) identification of the allegedly infringed copyrighted material; (3) identification of the material on YouTube that infringes the copyrighted work and that should be removed or disabled—YouTube recommends providing the URLs of the infringing content in the notification; (4) contact information; (5) a statement that the person sending the notification has a good faith belief the use of the copyrighted material is not authorized; and (6) a statement, under penalty of perjury, that the notification is accurate and that the sender of the notification is authorized to act on behalf of the copyright owner.

Once a valid notification is sent and processed, YouTube will take down the infringing material and issue a "copyright strike" against the account holder who posted the video. After receiving a strike, the targeted account holder has the option to submit a counter-notification to YouTube, putting forth its authorization to post the information in question. If the counter-notification satisfies YouTube's requirements, YouTube will forward the counter-notification to the complainant who submitted the original notification. The copyright owner then must notify YouTube within 10 business days whether it has filed a legal action seeking a court order or injunction. If it has, YouTube will not repost the content and courts will be the ultimate arbiter of the dispute. If a lawsuit has not been filed, YouTube reserves the right under its terms and conditions to repost the content on its website. Thus, if the alleged copyright infringer files a counter-notification, the owner must initiate a lawsuit to prevent the infringing material from going back online. Of course, this requirement does not prevent a copyright holder from pursuing legal action outside the 10-day window in any event. It may, however, affect what relief, if any, the copyright holder eventually may be entitled to from YouTube.

II. Taking the Fight to Court
A copyright owner is not legally bound to utilize YouTube's take-down procedure. It can instead choose to initiate a legal proceeding at the outset in the hope of obtaining immediate relief through a temporary restraining order or preliminary injunction against the alleged infringer. Potential impediments to a copyright owner considering the litigation route are cost, frequent difficulty in identifying and locating the alleged infringer, and potential issues of venue and the court's jurisdiction. An often-significant impediment is determining who to sue.

Can I Target the Person Who Posted the Content? 
The short answer is yes. Copyright holders have exclusive rights in their creative works, such as the right to reproduce, distribute, and publicly display the copyrighted material. If the social media user is not the copyright holder, he or she infringes the copyright in the work by reproducing, distributing, or publicly displaying the copyrighted material on YouTube. The difficulty with online postings, however, is it may be difficult to identify or locate the alleged infringer and, even if you do, the infringer may not be within the reach of the court. A byproduct of dynamic IP addresses and technical developments is that it is often nearly impossible to identify the person who posted the material even if YouTube is able to assist with this endeavor—which is a large assumption.

Also, whether someone is an infringer often is a fact-specific analysis that can be extremely complicated—particularly in an online world. For example, it is quite possible to grant a license to someone inadvertently if you utilize social media. Most social-media sites such as YouTube and Facebook require that you grant them a broad license to what you post. The terms and conditions of some social-media sites, such as Pinterest, for example, also provide for a license for all users of these services. In fact, the terms and conditions of many social-media sites actually grant the sites a license to assign an account holder's rights under their broad license.  Therefore, if you post material on certain social-media sites, it is possible that you have granted a license to the "infringer" inadvertently.

Another question can be whether the posting is a "fair use" of your copyrighted material—a statutory defense to copyright infringement. The fair use doctrine permits the use or reproduction of copyrighted materials for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. There are four statutory factors that are considered when determining whether the use or reproduction of copyrighted material is a fair use: (1) the purpose and nature of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. These often are complicated, fact-specific inquiries.

Can I Target YouTube? 
Although there are certain circumstances in which a lawsuit for direct or contributory trademark or copyright infringement against YouTube or other similar companies may be successful, there are many case-specific legal issues that need to be analyzed before reaching this conclusion. Depending on how your trademark or copyright is being portrayed on YouTube, there may also be important business and/or marketing issues you may want to consider before deciding to bring a lawsuit or seek removal of the material from YouTube. At least one company decided instead to grant a license to the individual who posted material on Facebook, concerning its product and even hired the person to maintain the company's official Facebook webpage. Some of these major legal issues are examined below.

First, you will need to consider whether, given the unique circumstances of your situation, YouTube falls within one of the safe harbors of the Digital Millennium Copyright Act (DMCA). More specifically, whether YouTube or a similar company falls within the four safe harbors set forth in Title II of the DMCA, which is separately titled the Online Copyright Infringement Liability Limitations Act (OCILLA) and is designed to "clarif[y] the liability faced by service providers who transmit potentially infringing material over their networks." 

To qualify for protection under any of OCILLA's four safe harbors, YouTube (or other similar service providers) must satisfy three threshold criteria:   

1. The party must be a "service provider" as defined by OCILLA and the DMCA. There are two definitions of a service provider under the OCILLA. The narrower definition, which applies only to service providers falling under § 512(a), is limited to entities that "offer the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received."  The border definition of service provider that applies to the other three safe harbors set forth in OCILLA is "a provider of online services or a network access, or the operator of facilities therefore."

2. Service provider must have "adopted and reasonably implemented, and informed subscribers and account holders of the service provider's system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders . . . who are repeat infringers." 17 U.S.C. § 512(i)(1)(A).

3. The service provider's system or network must accommodate and not interfere with "standard technical measures" that are "used by copyright owners to identify and protect copyrighted works." 17 U.S.C. §§ 512(i)(1)(B) and 512(i)(2).

Once these three threshold criteria are satisfied, a service provider must also satisfy the particular requirements of OCILLA's four safe harbors. The four safe harbors allow qualifying service providers to limit their liability on claims of copyright infringement based on (a) "transitory digital network communications," (b) "system caching," (c) "information residing on systems or networks at [the] direction of users," and (d) "information location tools." 17 U.S.C. § 512(a)-(d). YouTube has successfully relied on the 17 U.S.C. § 512(c) safe harbor in the past and argued that the direct or contributory copyright infringement claims against it arise only "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."    

The § 512(c) safe harbor will apply if the service provider: 

A)(i) Does not have actual knowledge that the material or an activity using the material on the system or network is infringing

(ii) In the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent

(iii)  Upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material

B) Does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity

C) Upon notification of claimed infringement (as described in paragraph III), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

Additionally, § 512(c) sets forth a detailed notification scheme that requires service providers to designate an agent to receive notifications of claimed infringement and specifies the components of a proper notification, commonly known as a "takedown notice," to the agent. Therefore, under § 512(c), actual knowledge of the infringing material, awareness of facts or circumstances that make infringing activity apparent, or receipt of a takedown notice will each trigger an obligation by YouTube to remove the infringing material expeditiously and may expose it to potential copyright-infringement liability.

The Second Circuit Court of Appeals recently addressed whether YouTube fell within a safe harbor in Viacom Intern. Inc. v. YouTube, Inc.,676 F.3d 19 (2d Cir. 2012).  Plaintiff Viacom sued YouTube, alleging direct and secondary copyright infringement based on the public performance, display, and reproduction of an audiovisual work on the YouTube website.  Separately, plaintiffs Premier League and English soccer league and Bourne Co., filed a putative class action against YouTube, alleging direct and secondary copyright infringement on behalf of all copyright owners whose material was copied, stored, displayed, or performed on YouTube without authorization. The parties in the related actions cross-moved for partial summary judgment with respect to the applicability of the § 512(c) safe-harbor defense. The District Court granted summary judgment to defendants, holding that YouTube qualified for safe-harbor protection with respect to all claims of direct and secondary copyright infringement. On appeal, the opinion of the Second Circuit Court of Appeals may indicate a narrowing of the § 512(c) safe harbor as it applied to YouTube and other similar service providers.

Knowledge of the Infringement
The Second Circuit first held that that the statutory phrases "actual knowledge that the material . . . is infringing" and "facts and circumstances from which infringing activity is apparent" refer to "knowledge of specific and identifiable infringements." In other words, YouTube must have actual knowledge related to the specific clips or infringement alleged in the lawsuit. It is insufficient whether YouTube encourages copyright infringement or possesses general knowledge that much of its content generally infringes upon copyrighted works. The Second Circuit also held that the "willful blindness doctrine" is applicable to a § 512(c) safe-harbor defense. If YouTube "has reason to suspect that users of its service are infringing a protected mark," therefore, "it may not shield itself from learning of the particular infringing transaction by looking the other way." The Second Circuit then overturned the grant of summary judgment and remanded the case back to the district court for further factual analysis under these standards. 

Specifically, the Second Circuit relied upon internal emails produced by YouTube that indicated it had specifically searched for and considered removing some of Viacom's shows and Premier league content to support its decision to determine that a factual dispute was possible. The Second Circuit charged the district court to determine on remand whether any specific infringement of which YouTube had acknowledged or was aware corresponded to the clips-in-suit. The appellate court further charged the district court to determine if there were sufficient facts to determine if YouTube was "willfully blind" to the infringement. 

This is important for future infringement claims against YouTube because it indicates that it may be possible through discovery to provide evidence that YouTube either had actual knowledge of the infringing material or was willfully blind to the infringement. Notably, as discussed above, if you were to make a request to YouTube to remove infringing material pursuant to its terms and conditions and YouTube failed, or refused, to remove the infringing material, it may be possible to bring a suit against YouTube and argue that the safe harbor does not apply. 

Control and Benefit
The § 512(c) safe harbor also provides that an eligible service provider must "not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has a right and ability to control such activity."  Like the District Court in Viacom, the Ninth Circuit in UMG Recording, Inc. v. Shelter Capital Partners LLC, 667 F.3d 1022, 1041 (9th Cir. 2011) held that "until [the service provider] becomes aware of specific unauthorized material, it cannot exercise its power or authority over the specific infringing item." 

The Second Circuit in Viacom, however, rejected this holding and concluded that such an interpretation would render a portion of OCILLA superfluous. The Viacom court further concluded that the right and ability to control infringing activity requires something more than the ability to remove or block access to materials posted on a service provider's website. Unfortunately, the Viacom court failed to set forth a detailed definition of the "something more" that is required. The Viacom court did, however, note two opinions in which the service providers exerted substantial influence on the activity of users, without necessarily—or even frequently—acquiring knowledge of specific infringing activity. 

In Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.2d 1146 (C.D. Cal. 2002), the court found control where the service provider instituted a monitoring program by which user websites received "detailed instructions regard[ing] issues of layout, appearance, and content."  The service provider also forbade certain types of content and refused access to users who failed to comply with its instructions. Similarly, the Viacom court noted that the inducement of copyright infringement under Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), which "premises liability on purposeful, culpable expression and conduct, might also rise to the level of control under § 512(c). 

Ultimately, the Viacom Court also charged the district court to determine on remand whether the plaintiffs "have adduced sufficient evidence to allow a reasonable jury to conclude that YouTube had the right and ability to control the infringing activity and received a financial benefit directly attributable to that activity." 

By Reason of Storage: 512(c)(1)           
The § 512(c) safe harbor is only available when the infringement 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." The Viacom Court concluded that three of YouTube's software functions fall within this safe harbor: (1) the conversion (or transcoding) of videos into a standard display format, (2) the playback of videos into a standard display format and the playback of videos on "watch" pages, and (3) the "related video's" function of YouTube. The Viacom Court, however, took issue with the third-party syndication of videos uploaded to YouTube. Specifically, the court noted that in or around March 2007, YouTube transcoded a select number of videos into a format compatible with mobile devices and syndicated or licensed the video to Verizon Wireless and other companies. If the clips at issue were among those licensed, YouTube may fall outside the safe harbor because such licensing likely did not occur at the direction of the user.

Recently, the Seventh Circuit Court of Appeals had occasion to weigh in on the subject of service-provider liability in a case not involving YouTube. In Flava Works, Inc. v. Gunter, 689 F.3d 754 (7th Cir. 2012),the Seventh Circuit overturned a trial court's issuance of a preliminary injunction when a video producer sued an online social-bookmarking service provider for alleged copyright infringement. Judge Posner, writing for the appellate court, noted that the video producer was not a copyright facilitator because it was not inviting or inducing copyright infringement, even if it knew that some of the videos bookmarked on its website were infringing.  The same could be argued for YouTube, although an important distinction exists: the video producer in Flava Works merely provided a connection between the user and server containing the video; YouTube, in contrast, hosts videos on its own servers. Moreover, Flava Works needs to be considered in its cautionary context as the court repeatedly qualified its decision because the record before it was likely incomplete given the early stage of the litigation from which the case was appealed. Therefore, while Flava Works and UMG Recording may make it more difficult to obtain injunctive relief against YouTube for copyright infringement, the door may not be completely shut in light of Viacom.

Keywords: litigation, intellectual property, YouTube, copyright infringement, safe harbor, DMCA, OCILLA, service provider

Mary Ann L. Wymore and John E. Petite – January 4, 2013


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