Whose burden is it anyway? Addressing the needs of content owners in DMCA safe harbors.

• Author: Jansen, Greg
• Position: Digital Millennium Copyright Act

1. INTRODUCTION II. BACKGROUND A. What is Secondary Liability? B. Secondary Liability in the Peer-2-Peer (P2P) Context 1. Napster and the Limits of Substantial Noninfringing Uses 2. Aimster and the Reframing of Sony 3. Grokster and Inducement of Infringement C. The DMCA's Safe Harbors and the Liability of OSPs 1. Section 512(i) Threshold Requirements 2. Personal Knowledge and Gain D. The DMCA's Ineffectiveness for P2P Services 1. Falling Short of the Threshold: Aimster 2. The Extended Knowledge Requirement: Napster E. IO Group v. Veoh--Changing Realities 1. Files Stored at the Direction of a Third Party 2. Actual or Apparent Knowledge of Infringing Activity (Contributory) 3. Right and Ability to Control Infringement (Vicarious) F. Viacom v. YouTube--Testing the Limits of Section 512(c) and Veoh 1. Files Stored at the Direction of a Third Party 2. Actual or Apparent Knowledge of Infringing Activity (Contributory) 3. Right and Ability to Control Infringement (Vicarious) III. LIMITING THE BURDEN AND ENHANCING COOPERATION-NOTIFICATION THROUGH TECHNOLOGICAL CONTROL MEASURES A. Who bears the burden of policing infringement? B. The Technical Requirements 1. Hash Values--Digital Fingerprints 2. Video Hashes--Difficulty C. Shortcomings of Current Video Fingerprinting Technology Use 1. The Lack of a Clear Standard in Video Fingerprinting Technology Will Result in a System that Is Not Administrable 2. Allowing Automatic Rejection of a Video Match Curtails Fair-Use Freedoms 3. Complete Automation of the Process Removes the Most Knowledgeable Party and Lowers Accountability D. Proper Use of Video Fingerprinting Technology E. Impact on YouTube Litigation IV. EXTENDING A KNOWLEDGE REQUIREMENT ACROSS THE ENTIRE SAFE-HARBOR PROVISION V. CONCLUSION I. INTRODUCTION

   The struggle between intellectual property (IP) rights and innovation has reached a crucial moment in this country. On one hand, IP rights provide incentives for people to create artistic, literary, and technological works, which benefit society. On the other hand, ongoing innovation has brought us to a point where information has never been more accessible and ideas have never been easier to share. Interestingly, many of the protected creations would not exist but for cumulative innovations that at times can threaten IP rights (and the incentives they provide). In reality, both schemes encourage creation of new goods, technologies, and art in different ways.

   Nowhere is this tension more palpable than on the Internet, where digital technology and widespread adoption have made it simple and inexpensive to copy, distribute, and display creative works to millions, almost instantaneously. The ongoing $1 billion lawsuit between Viacom and YouTube is the pinnacle of this conflict. (1) Viacom asserts, among other contentions, that YouTube bears liability for direct and secondary copyright infringement resulting from YouTube users' video uploads of Viacom content. (2) In response, YouTube invoked the protections afforded by the Digital Millennium Copyright Act (DMCA) to defend its activities. (3)

   The DMCA's Online Copyright Infringement Liability Limitation Act (Section 512) provides a framework for limiting an Online Service Provider's (OSP) liability for a third party's infringing use of its service. (4) The Act also provides a means for content owners to remove the infringing material from the OSP's Web site. (5) Nonetheless, copyright owners continue to pursue litigation against service providers as a means to prevent third-party infringement. (6)

   Large content owners frequently sue facilitators of copyright infringement rather than pursuing individual infringers. (7) Copyright holders understand that many OSPs generate advertising revenue from page views arising from users viewing copyrighted content. (8) Content owners realize shutting down an entire online network capable of facilitating infringement is more effective at curtailing the amount of infringing material available than targeting millions of individual users. (9) These suits also attempt to shift the burden of discovering copyright infringement away from the copyright holder and onto the OSP. (10)

   Traditional defenses to secondary infringement liability have withered as a result of recent cases. (11) Further, the strict framework of Section 512 struggles to fit as applied to new technologies. Indeed, the case history raises confusing contradicting opinions about whether the DMCA's "safe harbor" provides any protection at all. The resulting uncertainty for entrepreneurs and innovators demands a more predictable framework to reduce the inevitable confrontations between copyright owners and OSPs.

   This Note addresses the need to clarify the roles of copyright holders and innovative new services on the Internet, using Viacom v. YouTube as an illustration. Part II describes the litigious history of copyright owners' confrontations with innovative OSPs, highlighting the urgent need for protections on both sides. It also introduces the safe-harbor provisions provided in Section 512 of the DMCA. Part III proposes a solution for notification that will limit the monitoring burden on copyright owners while adequately protecting OSPs. Finally, Part IV discusses the need to impose a knowledge requirement throughout the safe harbor.

2. BACKGROUND

   In Viacom v. YouTube, the plaintiffs assert claims of direct infringement, inducement of infringement, contributory infringement, and vicarious infringement. (12) The realities of the Internet challenge traditional notions of direct infringement. For instance, when sending data through a server, the server will make a temporary copy in its own memory. Servers that host third-party content pose a greater challenge since they, by definition, store content more permanently, though the owner may have had no part in determining whether the content infringes a copyright. Section 512 addresses these issues effectively, (13) but fails to adequately address more complicated secondary liability issues.

   Under current law, the impact of the secondary liability claims on the future of Internet innovation far exceeds the impact of the direct liability claims. Copyright owners, like Viacom, rely on a line of cases that find noninfringers liable for the infringing activities of third parties. The level of involvement necessary for liability has evolved over time and through legislation like the DMCA.

   1. What is Secondary Liability?

      Nothing in the Copyright Act expressly provides for secondary liability; instead, secondary liability is borrowed from patent law and traditional tort-liability doctrines. Patent law expressly assigns liability for contributory infringement on anyone who sells a component, "knowing the same to be especially made or especially adapted for use in an infringement of [a] patent." (14)

      In the copyright arena, secondary liability arises from judicial interpretation of the Copyright Act. (15) Secondary liability has two categories: contributory and vicarious liability. One contributorily infringes by knowingly inducing, causing, or materially contributing to infringing activities. (16) Courts find vicarious liability when the defendant (a) receives a direct financial benefit from infringement and (b) has the right and ability to control that infringement. (17) Recent secondary liability cases trace their roots to the Supreme Court's 1984 decision in Sony Corp. of Am. v. Universal City Studios, Inc. (18)

      The Sony Court, noting the similarities between copyright and patent, embraced the notion of contributory infringement, recognizing that "vicarious liability is imposed in virtually all areas of the law, and the concept of contributory infringement is merely a species of the broader problem of identifying the circumstances in which it is just to hold one individual accountable for the actions of another." (19) However, the Court held that Sony bore no responsibility for the infringing actions of consumers that purchased its Betamax Video Tape Recorder. (20) Drawing on themes from patent law, secondary liability arises only in instances where the technology's sole use is for infringing purposes. (21) Thus, sale of such "dual-use" technologies--those with substantial noninfringing uses--does not result in liability for the producer under the Sony doctrine (22).

      While Sony appeared to provide a significant defense for new technologies that have the potential to be abused to infringe copyright, the dual-use defense did not gain much traction in the Internet age. Courts continued to find peer-2-peer (P2P) file-sharing services secondarily liable for users' copyright infringement. Until recently, neither a dual-use defense nor the new DMCA safe-harbor provisions generally provided any reprieve.

   2. Secondary Liability in the Peer-2-Peer (P2P) Context

      The rise of P2P file-sharing services triggered much of the litigation involving allegations of contributory and vicarious copyright infringement in the online environment. The P2P line of cases began in the Ninth Circuit with the music industry's case against Napster, followed in the Seventh Circuit against Aimster, and finally culminating in the Supreme Court with Grokster. (23)

      1. Napster and the Limits of Substantial Noninfringing Uses (24)

         Many people remember Napster as the first mainstream software utilized to trade copyrighted music files among users. A user logged into the Napster software, searched for a song, and was connected to another user's computer, which would then transfer the song to the searcher's computer. (25)

         Rather than pursuing individual users of the service, music copyright owners sued Napster itself for contributory and vicarious copyright infringement. (26) Napster asserted that it was protected from liability due to "substantial noninfringing uses" under the Sony doctrine. (27) However, the court failed to extend a shield of liability to Napster based on that assertion. (28) Instead, the court...