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AUSTIN BEIJING BRUSSELS HONGKONG LOSANGELES NEWYORK PALOALTO SANDIEGOSANFRANCISCO SEATTLE SHANGHAI WASHINGTON
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,
DE
December 4, 2014
Via Electronic Mail
Mr. Howard E. KingKing, Holmes, Paterno and Berliner LLP1900 Avenue of the Stars25th Floor Los Angeles, CA 90067
Re: Deficient DMCA Notices
Dear Mr. King:This responds to your letter dated December 2, 2014. This is now your third attempt tocircumvent the straightforward DMCA notice-and-takedown process that Congress devised tohandle situations like this. Once again, purporting to act on behalf of GMR, you demand thatYouTube remove a wide array of material from its service without even trying to meet the basic prerequisites for a valid DMCA takedown notice. As you are no doubt aware, the DMCA makesclear that “[t]o be effective,” a notification of claimed infringement “must” include, among other things:
“Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled,
and information reasonably sufficient to permit the service provider to locate the material
”;
“A statement that the complaining party has a good faith belief that use of thematerial in the manner complained of is not authorized by the copyright owner, its agent,or the law”; and
“A statement that the information in the notification is accurate,
and under penalty of perjury
, that the complaining party is authorized to act on behalf of the owner of anexclusive right that is allegedly infringed.17 U.S.C. § 512(c)(3) (emphases added).Like its predecessors, your latest letter contains none of these things. It does not identifyeven a single video on YouTube that is allegedly infringing any of the songs you have listed,much less provide information sufficient for YouTube to locate such videos. Your letter likewisedoes not state a good faith belief that those (unidentified) videos are using those works in anunauthorized manner. And it offers no statement under penalty of perjury that the informationyou have provided is accurate and that you are authorized to act on behalf of the actual owners of
Mr. Howard E. KingDecember 4, 2014Page 2an exclusive right that has been infringed. Indeed, you continue to be unclear about exactly whatrights GMR purports to have, whether those rights were effectively withdrawn from other performance rights organizations with whom YouTube has licensing agreements, and whether GMR actually has the authority to assert infringement claims on behalf of the relevant copyrightowners.These statutory requirements for a valid takedown notice “are not superfluous.”
Perfect 10, Inc. v. CCBill LLC
, 488 F.3d 1102, 1112 (9th Cir. 2007) (explaining that because“[a]llegations of alleged infringement have drastic consequences,” the DMCA does “not requirea service provider to start potentially invasive proceedings if the complainant is unwilling to stateunder penalty of perjury that he is an authorized representative of the copyright owner, and thathe has a good-faith belief that the material is unlicensed”). They reflect that “[c]opyright holdersknow precisely what materials they own, and are thus better able to efficiently identify infringingcopies than service providers.”
UMG Recordings, Inc. v. Shelter Capital Partners
, 718 F.3d1006, 1022 (9th Cir. 2013). The “goal of this provision is to provide the service provider withadequate information to find and address the allegedly infringing material expeditiously.” H.R.Rep. No. 105-551 (II) at 56 (1998). You have not done that here. But without informationidentifying what specific videos GMR believes include unauthorized versions of the works atissue, YouTube cannot—and has no legal obligation to—seek out such material, guess atwhether it is infringing (as opposed to material uploaded by a copyright holder or a licensed third party, or material that makes fair use of the work), and remove it.As I explained in my last letter, this understanding is clearly reflected in the
Viacom
court’s holding that a DMCA notice, in addition to identifying the works at issue, must “alsogiv[e] the works’ locations at the site”—such as a URL where the allegedly infringing materialresides.
Viacom Int’l, Inc. v. YouTube, Inc
., 718 F. Supp. 2d 514, 528-29 (S.D.N.Y. 2010) (citingH.R. Rep. 105-551 (II) at 55). You respond that we “somewhat embarrassingly” fail to cite theSecond Circuit’s subsequent decision, but it is not I who should be embarrassed. The SecondCircuit in no way disturbed Judge Stanton’s holding about the requirements for a valid DMCAnotice. To the contrary, the court of appeals affirmed that “the basic operation of § 512(c)requires knowledge or awareness of specific infringing activity.”
Viacom Int’l, Inc. v. YouTube, Inc
., 676 F.3d 19, 30 (2d Cir. 2012) (“
Viacom II
”). It explained that “the nature of the removalobligation itself contemplates knowledge or awareness of specific infringing material, becauseexpeditious removal is possible only if the service provider knows with particularity which itemsto remove.”
Id
. That applies equally to the DMCA’s notice-and-takedown requirement. YouTubecan respond “expeditiously” to a notification of claimed infringement (§ 512(c)(1)(C)) only if thenotice indicates “with particularity” what clips it is being asked to remove. You also ignoreJudge Stanton’s subsequent decision on remand, in which he once again granted summary judgment to YouTube.
Viacom Int’l, Inc. v. YouTube, Inc
., 940 F. Supp. 2d 110 (S.D.N.Y. 2013)(“
Viacom III
”). In so doing, the court explained yet again that “Congress has determined that the
Mr. Howard E. KingDecember 4, 2014Page 3 burden of identifying what must be taken down is to be on the copyright owner, a determinationwhich has proven practicable in practice.”
Id
. at 115.Your claim that nothing in § 512(c) requires GMR to “provide the specific location onthe YouTube service where the infringing videos reside” is contrary not only to
Viacom
, but toevery DMCA case that has addressed these issues. Indeed, the court in
UMG Recordings, Inc. v.Veoh Networks Inc
., 665 F. Supp. 2d 1099 (C.D. Cal. 2009) rejected the argument you areadvancing here. In that case, RIAA sent to Veoh (a video service very much like YouTube)notices that listed various artists whose songs were purportedly unauthorized and demanded thatVeoh search its system to find and remove all videos by those artists. The court held that this wasnot a valid takedown request and that Veoh could not be disqualified from the safe harbor for declining to do what RIAA demanded: “Requiring Veoh to perform such searches would alsoconflict with the principle articulated in
CCBill
that ‘[t]he DMCA notification procedures placethe burden of policing copyright infringement—identifying the potentially infringing materialand adequately documenting infringement—squarely on the owners of the copyright.’”
Id
. at1110 (quoting
CCBill
, 488 F.3d at 1113). In affirming that ruling, the Ninth Circuit observed thatthe DMCA’s allocation of responsibility is “reflected in Congress’ decision to enact a notice andtakedown protocol encouraging copyright holders to identify
specific
infringing material toservice providers.”
UMG Recordings, Inc. v. Shelter Capital Partners
, 718 F.3d 1006, 1022 (9thCir. 2013) (emphasis added) (explaining that UMG’s failure to identify “any specific infringingvideo available on Veoh’s system” “stripped it of the most powerful evidence of a service provider’s knowledge—actual notice of infringement from the copyright holder”).Equally misguided is your suggestion that, based on your manifestly insufficient notices,YouTube now has actual knowledge of infringement of the works at issue or awareness of factsand circumstances from which infringement is apparent. As the Ninth Circuit has explained, theDMCA “specifies that notice of infringement by or on behalf of a copyright holder that does notsubstantially comply with § 512(c) ‘shall not be considered . . . in determining whether a service provider has actual knowledge or [has red-flag knowledge].’”
Shelter Capital
, 718 F.3d at 1020n.12 (quoting 17 U.S.C. § 512(c)(3)(B)(i));
see also Viacom III
, 940 F. Supp. 2d at 115(“deficient notifications shall not be considered in determining whether a service provider hasactual or constructive knowledge”). Congress anticipated the stratagem you are trying here andrejected it. Information provided by GMR that does not meet the requirements of a valid DMCAnotice cannot, as a matter of law, create knowledge of infringement that could disqualifyYouTube from the safe harbor. And, in the absence of such knowledge, YouTube is under noobligation to search for videos on its system that may include works under GMR’s control.
See
17 U.S.C. § 512(m);
Viacom II
, 676 F.3d at 35 (explaining that the DMCA “is incompatible witha broad common law duty to monitor or otherwise seek out infringing activity based on generalawareness that infringement may be occurring”).