IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- September 27, 2013

Table of Contents

Capitol Records, LLC v. Vimeo, LLC, USDC, S.D.N.Y., September 18, 2013
 Click here to download a PDF of the full decision.

  • District court grants in part and denies in part video-sharing website’s summary judgment motion for safe harbor protection under the DMCA for videos containing plaintiffs’ copyrighted music, finding that website employees’ “interaction” with certain videos created material fact as to knowledge of infringement as to those videos, and grants summary judgment for remaining videos.

Capitol Records, LLC, Virgin Records America, Inc., EMI Blackwood Music, Inc. (EMI), and various other entities associated with EMI (collectively, plaintiffs) brought a copyright infringement action against Vimeo, LLC, and Connected Ventures, LLC (collectively, Vimeo), based on Vimeo’s video-sharing website’s inclusion of 199 videos with music for which plaintiffs owned the copyrights, without their permission.

Vimeo’s website allows users who have created a user account to upload videos that they have created. Users can interact with the videos, including “liking” or commenting on videos. Vimeo moved for summary judgment, asserting “safe harbor” protection under the Digital Millennium Copyright Act (DMCA). Plaintiffs cross-moved for summary judgment, asserting that Vimeo was ineligible for safe harbor protection. The district court held that there were triable issues as to whether Vimeo was entitled to safe harbor protection for 55 of the 199 videos, because Vimeo employees had uploaded and/or interacted on Vimeo’s website with these 55 videos. The court held that Vimeo met the three threshold criteria for it to be qualified for protection under any of the four safe harbor affirmative defenses under the DMCA. First, it qualified as a “service provider” because it provides services over and above the mere storage of uploaded user content, such as allowing users to share videos. Second, it adopted and reasonably implemented a policy for repeat infringers because it has – and enforces – a policy that terminates service for repeat infringers, and users are required to agree not to infringe others’ copyrights. Third, it did not interfere with standard technical measures by copyright owners to protect their copyrights.

The court then considered whether Vimeo established that it met the requirements of safe harbor protection under section 512(c), which only provides a defense for infringement claims “by reason of the storage at the direction of a user of material that resides on a system … controlled … by the service provider.” The court found a triable issue as to whether Vimeo was not entitled to safe harbor protection as to 10 of the videos at issue, which were uploaded by Vimeo employees, stating that reasonable minds could differ as to whether the employees uploaded these videos in their personal capacities (making them users for the purposes of the safe harbor) or in their capacities as agents for Vimeo (which would remove them from the safe harbor protection). The court rejected plaintiff’s assertion that because Vimeo permits downloading of videos on its site, it does not provide “storage” pursuant to section 512(c), concluding that no authority supported the automatic denial of the safe harbor protections simply because a service allows its users to download content.

Section 512(c) requires that Vimeo establish that (1) it does not have “actual knowledge” of the infringement; (2) in the absence of such actual knowledge, it is not aware of facts or circumstances from which infringing activity is apparent (also known as “red flag knowledge”); and (3) it acts expeditiously to remove access to the infringing material upon obtaining such awareness. For 55 of the videos, Vimeo employees had interacted with the postings, including commenting on the videos or “liking” them. For those videos, the court found a triable issue as to whether Vimeo acquired actual or “red flag” knowledge of the infringing content. The court granted Vimeo summary judgment for the remaining videos, with which Vimeo employees indisputably did not interact. The court also noted that plaintiffs did not provide evidence that Vimeo was willfully blind to the infringement.

Section 512(c) requires that Vimeo establish that it does not have a right and ability to control the infringing activity and does not receive a financial benefit directly attributable to that infringing activity. The court held that under the tests articulated in Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002) and Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), there was no triable issue of fact – Vimeo did not exert substantial influence on user activity via its monitoring program or through inducement.

Finally, section 512(c) requires that Vimeo expeditiously remove access to infringing material after being notified of it. The court held that Vimeo met this requirement by removing the infringing material the same day that it received two separate notices of infringement from plaintiffs and within a few weeks after receiving a third notice of infringement from plaintiffs.

Noting that the DMCA safe harbors do not apply to pre-1972 sound recordings, the court granted summary judgment to Vimeo for all the remaining 144 videos, except those containing sound recordings made prior to 1972, and granted plaintiffs’ cross-motion for partial summary judgment as to those videos.

Doe v. Gangland Productions, Inc., USCA, September 16, 2013
 Click here for a copy of the full decision.

  • In case arising from disclosure of the identity of a former prison gang member and police informant in the documentary television series Gangland, Ninth Circuit affirms in part and denies in part district court’s denial of defendants’ anti-SLAPP motion to strike, finding that California’s anti-SLAPP statute applied to plaintiff’s lawsuit, and that (i) plaintiff met his burden to show a probability of prevailing on his claims for public disclosure of private fact, intentional infliction of emotional distress, false promise and declaratory relief, but (ii) plaintiff failed to establish a probability of prevailing on his claims for appropriation of likeness and negligent infliction of emotional distress, and thus those claims were stricken.

Plaintiff, a former prison gang member and police informant, sued defendants, Gangland Productions, Inc., and A&E Television Network, for including footage of an interview with him in an episode of the television series Gangland without concealing plaintiff’s face or physical identity. Gangland was a documentary television program that explored gang culture, and the episode in question focused on a notoriously violent gang with a white-supremacist reputation, Public Enemy Number 1. Although plaintiff had never been a member of Public Enemy Number 1, he was a childhood friend of one of the co-founders of the gang and, in the interview, he discussed the facts surrounding his friend’s murder, including the theory that fellow gang members had brutally murdered him after he gave a media interview about the gang. The episode featured other gang members discussing the gang’s violent activities. In the broadcast, some individuals’ names and faces were disclosed while certain others’ were concealed.

Plaintiff alleged that he had received assurances that his face and identity would be fully concealed and that he relied on those promises in agreeing to be interviewed. Prior to taping the interview, plaintiff signed a Program Participation and Release Agreement that defendants argued expressly consented to their unrestricted use of his name and identity and waived his right to any claims based on that use. Plaintiff asserted that he was dyslexic and barely literate and that he signed the release because the interviewer misled him about the document’s nature. Specifically, he claimed that he was led to believe that the release was simply a receipt for the $300 defendants paid him for the interview.

Plaintiff’s first amended complaint asserted six claims based on defendants’ disclosure of his face and name, including appropriation of likeness, public disclosure of private information, false promise, negligent infliction of emotional distress, intentional infliction of emotional distress and declaratory relief. The district court denied defendants’ motion to strike plaintiff’s complaint under California’s statute addressing Strategic Lawsuits Against Public Participation (Anti-SLAPP statute), finding that defendants had failed to show that revealing plaintiff’s identity in violation of an alleged promise not to do so – the basis for plaintiff’s claims against them – was in furtherance of their exercise of free speech or that including plaintiff’s identity in the program was in connection with a public issue or an issue of public interest. (Read our summary of the district court’s decision here.

On appeal, the Ninth Circuit rejected the district court’s Anti-SLAPP analysis, concluding that the district court framed the initial inquiry in the required two-step analysis too narrowly. The defendant initially bears the burden of showing that the Anti-SLAPP statute applies because the lawsuit arises from defendant’s act in furtherance of its right of petition or free speech. If the defendant meets its burden, the burden then shifts to plaintiff to demonstrate a probability of prevailing on the merits of each of plaintiff’s claims. In the court’s view, the district court improperly focused on plaintiff’s allegations while conducting the initial, defendant-focused analysis. The proper analysis should examine the broadcast overall, rather than erroneously focus on the legality or propriety of including plaintiff’s face in the broadcast. Noting that the district court’s approach would render the second step “superfluous,” the Ninth Circuit reasoned that for purposes of the initial analysis, the inquiry should focus on the legitimate First Amendment rights attached to the broadcast overall. Citing a number of cases, the panel noted that a broadcaster or journalist may satisfy its burden for Anti-SLAPP purposes even if the broadcast involved illegal elements (such as including information unlawfully obtained). Noting that it was “uncontested” that the broadcast itself was protected, the Ninth Circuit concluded that the district court erred in narrowing its analysis to require that the specific inclusion of plaintiff’s face and identity further the public interest.

Having concluded that defendants satisfied the first step of the analysis, the panel proceeded to consider the viability of each of plaintiff’s claims. The Ninth Circuit noted that, under the appropriate standard for evaluating plaintiff’s claims, the court should not engage in credibility determinations but instead credit the evidence as presented by plaintiff. Plaintiff provided a sworn declaration that he was barely literate and was misled about the content of the release – that he had been told that it was simply a “receipt” for the $300 he received for the interview. The court viewed this evidence as sufficient, at this stage in the proceedings, to establish fraud in the execution of the release, which would render the release void. As a result, the court was unwilling to find that defendants’ release operated as a waiver of any claims plaintiff might have related to the use of his image in the broadcast.

The court found that plaintiff has shown a reasonable probability of prevailing on four of his claims (public disclosure of private fact, intentional infliction of emotional distress, false promise, and declaratory relief) but not on his claims for appropriation of likeness and negligent infliction of emotional distress. The Ninth Circuit accordingly reversed in part and affirmed in part the district court’s ruling, remanding for further proceedings on the four claims surviving the Anti-SLAPP analysis.   

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we inform you that any advice (including in any attachment) (1) was not written and is not intended to be used, and cannot be used, for the purpose of avoiding any federal tax penalty that may be imposed on the taxpayer, and (2) may not be used in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein.


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