from the not-how-any-of-this-works dept
You may recall that, back in August, we wrote about the bizarre situation of a company called “Business Casual” and its CEO, Alex Edson. Business Casual makes highly produced videos. It made a few on historical topics, including taking some public domain images and modifying them significantly to make “paralax images” that added a sort of 3D feel. Edson/Business Casual claim (credibly!) that RT Arabic, the Arabic language wing of Russia Today, owned by TV-Novosti, copied parts of some of their videos. There were some DMCA claims he filed and then a lawsuit against TV-Novosti.
All that is… perfectly reasonable?
But then, for unclear reasons, Edson decided to sue YouTube/Google as well, claiming direct infringement among other things. That lawsuit did not go well. Not well at all.
It got much more bizarre over the summer, because Edson’s lawyer, Ron Coleman (who these days seems to specialize in fighting ridiculously bad culture war lawsuits which have no chance of success) kept filing for delays on filing for permission to file an amended complaint, saying that Edson was dealing with debilitating health problems. But… the very day that he filed the third such “Edson’s ill, we need more time,” motion (directly stating that Edson “is in agonizing pain and cannot function at this time“), a very healthy looking Edson was releasing a two hour long video on YouTube (complete with a very bad Putin impersonator) explaining — poorly — some details of copyright law, and claiming that YouTube is an “anti-American” company. He also claims, in truly dramatic fashion, that YouTube’s lawyers are “pathological liars” among other things.
While YouTube’s lawyers alerted the judge to this video, the judge ignored it and still granted the extension. Coleman eventually got around to submitting the actual filing. And, right before Thanksgiving the judge ruled on it — again highlighting how truly bad the legal arguments being made are.
First, Edson/Business Casual argue that YouTube failed to apply its “repeat infringer” policy to TV-Novosti by not suspending the account (or rather, suspending it only briefly). But, as the judge notes, the DMCA’s repeat infringer policy requirement (DMCA 512(i)), are only about whether or not a website is eligible for the DMCA’s safe harbors. It’s not its very own cause of action. But Coleman seems to think it is. The judge disabuses him of this:
Plainly, the plaintiff here is attempting to assert an
independent claim against YouTube for its alleged failure to
discontinue TV-Novosti’s account in accordance with its Repeat
Infringer Policy. Lest there be any doubt on this point, the
plaintiff asserts in its motion papers that YouTube’s failure to
“terminate the accounts of repeat infringers . is why we are
here.” Pl.’s Reply at 1. But as this Court already made clear,
Business Casual “misconstrues the safe harbor provisions of the
DMCA and how [those provisions] interact with the other federal
copyright laws.” First Opinion, 2022 WL 837596, at *5. The DMCA
does not establish an affirmative cause of action. Rather, the
DMCA provides internet service providers (“ISPs”) with potential
“safe harbor” defenses that will shield ISPs from liability for
copyright infringement so long as certain statutory criteria,
including the maintenance of a policy for terminating “repeat
infringers,” are met. See Arista Records LLC v. Usenet.com,
Inc., No. 07-cv-8822, 2008 WL 4974823, at *4 (S.D.N.Y. Nov. 24,
2008); Martin v. Tumblr, Inc., No. 15-cv-8338, 2017 WL 11665339,
at *4 (S.D.N.Y. Feb. 10, 2017) (DMCA provision “does not create
a right of action, but rather creates a defense to liability, or
safe harbor”); see also 17 U.S.C. § 512(i)(l)(A) (an ISP will
qualify for the “limitations on liability established by this
section . only if the [ISP] . has adopted and reasonably
implemented” a “policy that provides for the termination” of
“repeat infringers”). Put differently, an ISP’s compliance with
the DMCA’s safe harbor provisions does not come into play until
a plaintiff pleads a viable copyright infringement claim against
the ISP in the first instance, at which point, the ISP may
assert its eligibility for a safe harbor as a defense to
liability. See Arista Records, 2008 WL 4974823, at *4 (DMCA’s
“limitations of liability apply if the provider is found to be
already liable under existing principles of law”).
In short, Business Casual cannot transform the DMCA’s
prerequisites for a safe harbor defense into the basis for an
affirmative claim against YouTube. That is not how the statute
was written, and it is not for the Court to permit a cause of
action that Congress did not create. The allegations concerning
YouTube’s failure to terminate TV-Novosti’s channels would be
relevant here only if the plaintiff had first pleaded a
plausible claim for copyright infringement, thereby shifting the
burden to YouTube to establish its entitlement to a DMCA safe
But… therein lies a problem. Because there is no plausible claim of liability for YouTube. There may well be a plausible claim against TV-Novosti, but that doesn’t magically make YouTube liable as well. Indeed, this case is complicated by the fact that Business Casual uploads its videos to YouTube granting YouTube a license to them. That doesn’t mean that TV-Novosti gets a license, but it does mean that suing YouTube for infringement (especially direct infringement) makes no sense, as it already has a license to the work, and therefore cannot be infringing:
In any event, the plaintiff’s Amended Complaint fails to
state a claim for direct copyright infringement because it is
devoid of allegations casting doubt on the existence, validity,
or enforceability of the License. As noted in the First Opinion,
“it is a hallmark principle of copyright law that licensors may
not sue their licensees for copyright infringement,” Jasper v.
Sony Music Ent., Inc., 378 F. Supp. 2d 334, 339 (S.D.N.Y. 2005),
and here, Business Casual granted to YouTube a broad License to
“use,” “reproduce, distribute, prepare derivative works [from],
display, and perform” the content in Business Casual’s YouTube
videos, see First Opinion, 2022 WL 837596, at *5. Accordingly,
under the plain language of the License, Business Casual cannot
hold YouTube directly liable for hosting or displaying video
content that Business Casual has uploaded to YouTube’s platform.
That would include the hosting or displaying of the copyrighted
video segments that appeared on TV-Novosti’s YouTube channel,
because Business Casual had authorized YouTube to display those
segments when it uploaded the Rockefeller and J.P. Morgan Videos
Business Casual tried to argue that nothing in the license allowed YouTube to then license that work to TV-Novosti, but as the judge explains, that’s not how any of this works.
But this argument misunderstands the
import of the License and the nature of YouTube’s license
defense. The relevant question here is not whether YouTube was
entitled to authorize TV-Novosti’s use of Business Casual’s
copyrighted video content. Rather, the question is whether
YouTube’s use of the plaintiff’s content — here, the display of
copyrighted video segments that Business Casual had previously
uploaded to YouTube — fell within YouTube’s broad rights as the
licensee of the plaintiff’s YouTube videos. As discussed above,
the License does cover that use.
What about contributory or vicarious infringement? No, those don’t fly either. Those things require at least some level of knowledge or profiting off of the infringement by YouTube, which is not shown at all.
Like the Original Complaint, the Amended Complaint contains
no allegation that YouTube knew of the allegedly infringing TVNovosti videos before Business Casual lodged its DMCA takedown
notices. To the contrary, the Amended Complaint alleges that TVNovosti manipulated the video content for the precise purpose of
evading YouTube’s detection. Moreover, because YouTube promptly
and permanently removed the First, Second, and Third RT Videos
from its platform once it received the plaintiff’s DMCA notices,
the Amended Complaint does not permit an inference that YouTube
acted in concert with TV-Novosti.
The Amended Complaint also fails to state a claim for
vicarious infringement. To hold a defendant vicariously liable
for another party’s infringing act, a plaintiff must allege
plausibly that the defendant “profit[ed] from [the] direct
infringement while declining to exercise a right to stop or
limit it.” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
545 U.S. 913, 930 (2005). In this case, the plaintiff’s
allegations foreclose an inference that YouTube declined to
exercise its right to stop TV-Novosti’s alleged infringement.
To the contrary, the allegations indicate that YouTube removed
the First, Second, and Third RT Videos, and thereby stopped the
alleged infringement, shortly after Business Casual notified
YouTube of its copyright concerns.
One other point that the Business Casual complaint kept making is that it took YouTube 23 days to remove one of the videos after receiving one of its DMCA takedown notices. This is used to argue that YouTube wasn’t expeditiously removing infringing works. But, this is presented out of context. As the judge makes clear:
Finally, the Amended Complaint takes issue with the fact
that YouTube removed the Second RT Video 23 days after receiving
the plaintiff’s second DMCA notice. To the extent the plaintiff
intends to suggest that the length of this 23-day period renders
YouTube secondarily liable for TV-Novosti’s infringement, such
an argument is meritless. As before, Business Casual “has not
pointed to any authority” suggesting that YouTube was obligated
to investigate Business Casual’s complaint on “a more compressed
timeline.” First Opinion, 2022 WL 837596, at *4. Moreover, the
new allegations in the Amended Complaint indicate that YouTube
spent the 23-day period actively communicating with Business
Casual and evaluating the alleged infringement, see Am. Compl.
tt 118-119, 123-126, foreclosing any inference that YouTube
simply sat back and allowed the alleged infringement to occur.
Accordingly, the purported delay in YouTube’s removal of the
Second RT Video does not support a contributory or vicarious
infringement claim against YouTube.
In other words, while it did take 23 days, much of that was spent with YouTube communicating back and forth with Business Casual to make sure the work was actually infringing. That’s not ignoring infringement, it’s making sure that it’s not incorrectly taking down non-infringing videos.
Of course, Business Casual immediately appealed, and copyright cases can be a bit of a crapshoot in the appeals court, including the 2nd Circuit. But this seems like a fairly slam dunk bullshit case by someone who does not appear to understand the fundamentals of copyright law, but seems more focused on creating a stupid culture war by misstating how copyright works.
Filed Under: alex edson, copyright, direct infringement, dmca, dmca 512, licenses, notice and takedown, repeat infringer policy, ron coleman
Companies: business casual, google, youtube