By Mark Conrad
User-generated websites like YouTube provided a treasure trove of content. The range has become vast – from home-grown to professionally-produced. For sports fans, highlights of professional, college, high school and other amateur sports are uploaded and accessed with considerable frequency. Some of the materials have produced tens of millions of views.
The site contains a considerable number of sports broadcasts. Most are portions, but some are complete. A few years ago, in the early days of the website, I learned this first-hand. After reading David Margolick’s enlightening account of the Joe Lewis – Max Schmeling bout (Beyond Glory: Joe Louis vs. Max Schmeling, and a World on the Brink, Random House, 2006), I was curious to see the famous one-round fight. In the past, that meant going to a library or institution containing film archives and requesting a copy. However, I accessed YouTube, typed in the key words and the fight came up; a film of the one-round knockout by Louis with the NBC radio feed in the background — all in a matter of five seconds. Finding and watching the event with such ease was empowering for this user.
However, the problem was that the fight was copyrighted and an infringement occurred when it was uploaded without permission. The uploader, whoever he or she may be, would be primarily liable under the 1976 Copyright Act, 17 USC 101 et. seq. The question is whether YouTube and other content providers can also be liable.
At first glance, the answer would be yes. Secondary infringement, under the subcategories of either contributory or vicarious infringement, is an established doctrine, as noted by the Supreme Court in MGM v. Grokster, 545 U.S. 913 (2005). However, the issue of whether liability extends to a content-provider such as YouTube defies easy conclusion because of a section of a 1998 statute known as the Digital Millennium Copyright Act (“DMCA”) that confers “safe harbor” immunity to providers of Internet content. The scope of the section has been a matter of debate and the issue of whether and how it applies to Web 2.0 providers, such as YouTube, is not clear.
The stakes are high. Copyright holders, particular those of entertainment and sports content have been concerned about the proliferation of their materials (or portions thereof) on YouTube. The liability of YouTube for permitting uploads of copyrighted material – including English Premier League soccer games — was the subject of a Federal district court ruling in New York last summer, one that is currently on appeal at the U.S. Court of Appeals for the Second Circuit.
Judge Louis Stanton, in his decision in Viacom v. Google, (the Premiere League was also a plaintiff) 718 F. Supp. 2d 514 (SDNY, 2010) granted summary judgment, concluding that section 512 immunizes YouTube from liability, despite the fact that the service had “general knowledge” that copyrighted material had been uploaded to the website. The relatively brief decision gave a broad reading to the definition of “notice” in the statute. Section 512 (c) requires “Internet Service Providers” to take down infringing material, but only after they have “notice” of the upload. If they do not, they are not liable for copyright infringement.
The lawsuit was filed in 2007, just months after Google acquired YouTube, for $1.65 billion. A similar lawsuit was filed by the English Premiere Leagues, which was ultimately merged with the Viacom litigation. At the time of the lawsuit, YouTube’s business model was a work in progress, based on a crude and unprofitable advertising model. In 2007, YouTube had relatively few licensing agreements with copyright holders that allowed legal uploads. YouTube today is a more mature service and has a more sophisticated advertising model (utilizing on-screen promotions before and during videos) and more licensing agreements to place content. Additionally, it has utilized a more aggressive take-down policy for infringing uploads. But even today, infringing materials – much of it sports-related – are still found.
Definition of ‘Notice’
Under the statute, lack of notice is defined as either an absence of “actual” knowledge” of the infringing material or a lack of awareness of “facts or circumstances from which infringing activity is apparent” (known as the “red flag” test). Upon notice, Section 512 requires an expeditious removal of the infringing material.
Two questions were presented in the lawsuit. First, is YouTube an “Internet Service Provider” under the statute? The court properly concluded that it was, even though the DMCA was enacted in an era before social media and easy video uploads. Citing, § 512(k)(1)(B) of the DMCA, which defines a service provider as “a provider of online services or network access, or the operator of facilities . . . ” YouTube fit that definition.
The second and more crucial issue involved the scope of the notice requirement. Here the court, looking heavily at legislative history, concluded that “notice” is more than generalized knowledge. Either it is actual or “constructive” – meaning that safe harbor terminates only when the provider has specific and identifiable knowledge of the infringing uploads. As the court stated, “[knowledge as noted in section 512(c)] describe[s] knowledge of specific and identifiable infringements of particular individual items. Mere knowledge of prevalence of such activity in general is not enough . . . to let knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials, impose[s] responsibility on service providers to discover which of their users’ postings infringe a copyright would contravene the structure and operation of the DMCA [emphasis added]. The court also noted that YouTube’s takedown procedures were efficient since 100,000 videos were taken down just one day after Viacom gave notice.
In concluding its broad level of safe harbor protection, the court looked to other recent cases, including a recent trademark infringement case against eBay that essentially concluded that the web auctioneer eBay would not be liable for trademark infringement absent specific knowledge. See Tiffany v. eBay, 600 F.3d 93 (2d Cir. 2010). Did the court grant the safe harbor immunity too broadly by its limited reading of the notice requirement? And if so, should the statute be changed? Those affected by the ease of uploading infringing material notably on our case holders of sports copyrights, may say yes. And, if I was writing this article two years ago, I would tend to agree. However, YouTube makes good business and more copyright holders are seeing the benefits of their property on the website. In the last year, Google concluded partnership deals with content providers such as CBS, ESPN and the NBA. Its growth has focused on a catalog of premium, professional content, rather than amateur videos. And last month, Bloomberg reported that Google is talking with the NBA, NHL and soccer leagues in Europe to show live games. It already shows live Major League Baseball games in Japan and may also be streaming cricket in the U.S. as well. The article also quoted Michael Bass, senior vice president for marketing communications at the NBA as saying, “We’re pleased that YouTube recognizes the value of live sports.”
The solution may be on the business level, rather than continued litigation. And, by the way, that film of the Louis-Schmeling fight was taken down.
Mark Conrad is Associate Professor, Law and Ethics at Fordham University’s Schools of Business. He also has taught at Columbia University’s sports management program and at New York Law School.
