Background

As we wrote previously, Viacom, a major content provider, sued YouTube in 2007, alleging that clips hosted on the site violated its copyrights. YouTube argued that the site was protected by the safe harbor provisions of the DMCA (§512(c)), and Judge Louis Stanton in the Southern District of New York agreed, granting summary judgment. Of course, with over a billion dollars on the table and important precedent on the line, the story was not going to end there.

Knowledge of Infringing Material

The main question on appeal was how much could YouTube know about the existence of infringing content and still be protected by the safe harbor provision? Clearly, having actual knowledge of specific infringing material would disqualify the site. The statute is clear on this point: “does not have actual knowledge that the material . . . is infringing,” §512(c)(1)(A)(i). However, the statute contains a second, related provision: “in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent,” §512(c)(1)(A)(ii). The controversy revolved around this second, “red flag” test. A couple of surveys suggested to the court that YouTube was generally aware that there were a significant number of infringing videos. However, because the statute requires removing the infringing material, the court, affirming the district court on this point, held that only knowledge indicating specific instances of infringement will disqualify a service provider. Otherwise, it would be impossible for a service provider to comply (i.e., to take down the content).

Viacom argued that if the “red flag” test requires knowledge of specific infringing activity, it is superfluous, since the actual knowledge test requires the same. However, the Second Circuit distinguished the two based not on specific versus general knowledge but rather on subjective versus objective standards. That is, the “red flag” test is really asking whether a service provider was aware of facts that would lead a reasonable person to find specific infringement (i.e., an objective standard).

Without an obligation to followup on a general awareness of infringement, sites effectively put the burden of policing content on copyright holders. With courts being consistently unwilling to shift some of this burden to the sites, it seems likely that content providers will continue to lobby Congress for SOPA-like legislation. 

The site has generated millions of new users last month alone, who are now presumably more productive and imaginative while browsing the Internet.  By joining the site, these users may install a “Pin It” button to their browsers, so that while they surf the Internet, they can “grab an image from any website and add it to one of [their] pinboards.”  Such a quick and easy tool, as well as the website’s availability as an app, has generated a devout following.

With such an open-minded mission statement, however, it is no wonder that the site has also become a potential breeding ground for copyright violations, as IPLJ technology editor Amy Dunayevich pointed out last month.  It was only a matter of time before a copyright lawyer expressed her concern about how the owners of the images so widely and freely shared by Pinterest users might react.  While Pinterest suggests that it is in these owners’ interest to allow a forum for promoting or marketing their work, the company is still responding to intellectual property concerns in an attempt to prevent a Napster-like ending.  In doing so, those in charge at Pinterest have endeavored to reconcile their ethos of openness with the realities of copyright law.

What has Pinterest been doing to address copyright concerns, and how will their actions affect the website’s popularity?  Generally speaking, Pinterest encourages its own users to be mindful that the images they’ve chosen to “pin” might not be theirs for the copying.  However, with its base rapidly growing each day, and with millions of users who are now armed with a “Pin It” button at their disposal just a click away, it is likely that more than a few copyrighted images will fall through the cracks.

Pinterest assures copyright owners that that when a user pins one of their images, the company “automatically grab[s] the source link” and therefore ensures that Pinterest “can credit the original creator.”  Additionally, acknowledging that such a link might not be enough “credit” for a copyright owner, Pinterest will walk the owner through a series of steps designed to flag the violation for both the company and the offending user.  A “Designated Copyright Agent” is ready to receive the complaint, which the owner can generate by clicking on the eye-catchingly large red button on the website’s “Copyright” page.  Pinterest will also provide an opt-out code to the owners of copyrighted works, which they can incorporate into their websites to keep Pinterest users at bay.  If someone tries to add a protected image to his or her pinboard, the user will see a message that the work is off limits to Pinterest. 

First, YouTube uses a fully automated system to identify musical content in a given video and associate it with registered users in commercial partnerships, like Rumblefish.  If this content ID system classifies a video as making improper use of copyrighted content, YouTube provides notice to the uploading user by sending a message informing them that the video contains copyrighted music belonging to another entity.  The user then has the opportunity to file a dispute on the infringement claim, as eeplox did in this case.  Once a dispute is filed, notice is sent to the entity that YouTube believes owns the copyrighted content, here giving Rumblefish an opportunity to review the claim.

However, a second failure occurred when a representative from Rumblefish reinstated the claim, asserting ownership of a nonexistent musical composition on the video.  YouTube planted advertisements on the video in lieu of taking it offline, and Rumblefish seemingly profited from it for a time.

Fortunately for eeplox, his story gained significant web attention, and the claim against his video was eventually removed, but only after the Rumblefish CEO, Paul Anthony, got involved.  Anthony first took to Reddit to explain what happened and deflect his company’s responsibility for the series of errors.  His formal statement on the subject seemed to downplay the mistake, casting this as a one-off incident, and he placed most of the blame on YouTube’s Content ID technology, but pledged to improve his company’s dispute review process. Nevertheless, this offers little consolation for users that fall victim to similarly bogus infringement claims over recorded noises from motorcycle engines or remote-controlled plane propellers.

While incorrect accusations of copyright infringement seem like harmless mistakes or mere inconveniences for YouTube’s users, it can have significant consequences.  If the content ID system is triggered, advertisements on a user’s entire YouTube channel are disabled, so affected users cannot make money from their uploaded content until the dispute on the infringement claim is answered. Thus, errors like this must be avoided or, at the very least, be made easier to remedy.  Currently, YouTube’s self-defensive copyright policy places the onus on users to dispute mistaken infringement claims.  In cases where companies mistakenly reinstate infringement claims, users are seemingly left entirely at their mercy to resolve the issue.  Certainly, the use of audio scanning technology to check for copyright infringement is reasonable and appropriate.  But because the current content ID system is programmed so sensitively and characterized by such a high level of automation, there must be a human check to ensure that average users aren’t harmed by YouTube’s efforts to ensure compliance with the DMCA.  The status quo allows companies to recklessly assert rights over videos they don’t own.

To understand the doctrine of subconscious infringement, first consider ordinary infringement. Imagine someone who seems to have taken the melody from “Blitzkrieg Bop” by the Ramones and made only minor adjustments.  Typically in an infringement action, the plaintiff must show that the defendant had access to the original work and that there is enough similarity that the defendant probably copied the original work.  No defendant will say that he did not come up with the work on his own so the court looks to whether or not the defendant could have heard the song.   In the case of “Blitzkrieg Bop,” anyone who has gone to a sporting event would have heard it.  If the plaintiff can show that at some point in his life, the defendant spent a lot of time at sporting events, he might persuade the court that the defendant subconsciously copied his work.   For an example of this with more explanation, see Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000).

Some of the works removed from the public domain had become similarly ubiquitous.  The example most often cited is “Peter and the Wolf.”  The low cost of public domain works makes them a staple in education.  Many people, some who now make music or write books, grew up on these materials.  They played them in school or read them in class.  The works which left the public domain form the foundation of many American’s educations.

Someone who understood the law might hesitate to create works for fear that the work may take too much from something practiced for hours as a child and long since forgotten.  But how many such people are there?  Can it be said that there is a chilling effect if speech is not chilled, but only because the law is not known by anyone?  The law does not like to operate under the assumption that people do not know it, and chooses to ignore that excuse without a law which says that ignorance is a permissible defense.  Ignorantia legis neminem excusat—Ignorance of the law excuses no one.  This leaves the impact of the bill in a precarious state in which the bill only does not affect people potentially because they do not know what will expose them to liability.

Despite what the Court might say, fair use is not a panacea.  It is a hazy doctrine with which courts and attorneys struggle.  To expect an artist to ascertain whether or not fair use will protect the work she just created is asking too much.  Fair use is not a heavy shield to lift.  It certainly will not prevent people from bringing claims and forcing artists into settlements.   Even if an artist were willing to fight this to the Supreme Court, the plaintiff could drop the suit or grant a license which would render the case moot.

The plaintiffs in Golan were not creators but performers and educators.  They wanted to continue performing the works without paying for them.  The Court found that argument unpersuasive since many people continue to perform the works and just simply purchased a license.  With subconscious infringement, the author/performer does not know she has infringed.  Even if she realized it later, she cannot simply get a performance license to protect herself, since that would not cover the incorporation of the elements of the original work into the new work.  The contrary argument is that the artist is no more at risk for a subconscious infringement claim than with any other song, but this argument neglects to consider how much more prevalent these works are and their roles in society.  Because public domain works are so ubiquitous and so often used as a tool in education, they are more likely to be drawn upon than other works.  Many artists cut their teeth on public domain works, and so these works are of a different character than rock songs played at every sporting event for the past twenty years.

Paramount bought the copyright to Puzo’s novel in 1969 and their agreement granted the studio the “sole and exclusive right: to make and cause to be made literary and dramatic and other versions and adaptations of every kind and character.”  According to the complaint, the Puzo estate has infringed Paramount’s copyright and trademarks in “The Godfather” by allowing publication of a third sequel to the novel without Paramount’s authorization or knowledge.

After Puzo’s death in 1999, the Puzo estate wanted to publish sequels and in 2002, Paramount and the estate entered an agreement.  The parties acknowledged that Paramount did not object to Puzo granting Random House the right to publish one, and only one, sequel to “The Godfather.”  The agreement also maintained that “[Paramount] is the sole and exclusive owner of all motion picture, television and allied rights in and to the novel [i.e., “The Godfather”] and the sequel novel.”  Pursuant to this agreement, Random House published “The Godfather Returns” in 2004.

All was well between the parties until 2006 when the Puzo estate allowed the publication of a second sequel novel, “The Godfather’s Revenge,” allegedly without Paramount’s knowledge or permission.  An outraged Paramount claimed this unauthorized novel “tarnished” the legacy of “The Godfather” and “misled consumers” into believing that the studio had authorized “The Godfather’s Revenge.”  Paramount appears to be concerned that the third novel sequel, “The Family Corleone,” will further tarnish the Godfather mark or at least will continue to confuse consumers as to its source.  So Paramount is bringing their concerns to court.

Paramount arguably has reason to be upset. Apparently, the estate has used the “Godfather” marks owned by Paramount, including the name “The Godfather” and the image of a hand controlling the puppet strings, in connection with the marketing and promotion of the new novel.  Paramount claims this not only infringes upon their trademarks because the marks are being used without consent, but also that the use constitutes a false designation of origin under § 1125(a) of the Lanham Act.  Considering that a simple Google image search of “the Godfather” returns over 74 million results almost entirely consisting of the Godfather logo, Paramount seems to have a strong case for likelihood of confusion.  The well known mark appearing in connection with a literary sequel entitled “The Family Corleone” seems extremely likely to indicate to the average consumer that the novel is an authorized addition to the Godfather empire.

Paramount’s cause of action for copyright infringement claims the estate has violated its exclusive right to create derivative works under § 106 of the 1976 Copyright Act.   Paramount claims that in purchasing the copyright from Mario Puzo in 1969, it reserved all rights in “The Godfather” except the publication rights in the original novel, and that the 2002 agreement did not grant the estate any right to publish additional sequels or other derivative works based on “The Godfather.” 

Thank you to staffer Matthew Mann for the link!