Judge Sleet Finds Live Streaming Website Qualifies for DMCA Copyright Infringement Safe Harbor Threshold Requirements But Denies Summary Judgment Involving Live Pay-Per-View Event and Advance Notice of Potential Infringement

Judge Sleet was recently required to decide a unique issue in a copyright and trademark infringement case raised by the Digital Millennium Copyright Act’s (DMCA) notice and takedown Safe Harbor procedure. The plaintiff, Square Ring, is a boxing and mixed martial arts promoter that promoted a fight that occurred on March 21, 2009 and owns the copyright to the broadcast of that fight. The defendant, UStream, is a website that allows users to stream video of live events over the Internet. In the days leading up to the March 21 fight, Square Ring sent UStream four emails notifying UStream that the March 21 fight would likely be shared on UStream and requesting in advance that Square Ring be given either a “take down tool” or “appropriate staffing with the ability to simultaneously remove infringing content from your site.” Square Ring, Inc. v. John Doe-1, et al., C.A. No. 09-563-GMS, Memo. at 1-5 (D. Del. Jan. 23, 2015). UStream moved for summary judgment that it is immune from liability for copyright infringement due to the DMCA Safe Harbor provisions.

Judge Sleet first rejected Square Ring’s argument that Congress intended to exclude live broadcasts from the reach of the DMCA Safe Harbor. Id. at 8-9. His Honor then proceeded to the statutory analysis and addressed whether UStream met the Safe Harbor’s three threshold requirements. Judge Sleet found that because “UStream provides a website that allows its users to stream, share, and comment on user-generated video content . . . no genuine issue of material fact exists as to UStream’s qualification as a ‘service provider’ under” the DMCA. Id. at 9-10. Next, Judge Sleet addressed whether UStream satisfied the requirement for “reasonable implementation” of a “policy under which copyright holders can submit a take-down notice, such policy is available to the public through its website, and the service provider acts to remove infringing content once it receives adequate takedown notices.” Id. at 10. UStream has two office staffed with individuals who respond to DMCA takedown notices, and Judge Sleet found that “UStream has a strong DMCA policy, provides instructions for copyright owners to report alleged copyright infringement, takes active steps to limit incidents of infringement on its website and works diligently to keep unauthorized works off its website.” Id. Finally, to qualify for the Safe Harbor, “a service provider must accommodate and not interfere with standard technical measures used by copyright owners to identify or protect copyrighted works.” Id. at 10-11. Here, “Square Ring has not presented any evidence that UStream sought to conceal, delete, or suppress its ability to identify the March 21 Broadcast. Quite the opposite is true here. Square Ring’s monitoring agent was able to readily identify the channel names and URLs of the three purportedly infringing streams on the day that they were broadcast. . . . The court finds, as a matter of law, that UStream meets all three of the DMCA threshold requirements.” Id. at 10-11.

Judge Sleet then analyzed whether the specific requirements of the 17 U.S.C. § 512(c) Safe Harbor were met, and found under the circumstances that a material issue of fact remained for the jury as to “whether UStrearn was willfully blind such that it is not eligible for safe harbor protection” even though “UStrearn was not under an affirmative duty to discover and remove the March 21 Broadcast.” Id. at 12-13. Interestingly, the Court found that “questions related to UStrearn’s ‘red flag knowledge’ as a result of the pre-event notices are appropriately left to trial” and therefore “the lack of DMCA-compliant notice prior to the March 21 Broadcast is not fatal to Square Ring’s claims.” Id. at 13. Here, it was “clear . . . that Square Ring was incapable of providing a formal takedown notice compliance with the DMCA prior to the start of the March 21 Broadcast.” Id. at 13 n.5. Square Ring, accordingly, conceded that its emails prior to the March 21 fight were not adequate DMCA takedown notices, but contended that UStream had actual or constructive knowledge of infringement that precludes the safe harbor protections. Similarly, Square Ring contended that UStream did not act “expeditiously” to remove the March 21 Broadcast. Judge Sleet ultimately was “persuaded . . . by the complete lack of legal precedent for this factual situation” and was “not prepare to make a factual determination” when proceeding to trial would resolve such material issues of fact. Id. at 13.

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