Links and repeat infringers: what's the Flava of liability?

Is this sufficient
to stop repeat infringers?

An interesting case concerning §512 DMCA safe harbors is currently pending before the US Court of Appeals for the Seventh Circuit, this being Flava Works v Gunter.

Flava is a company which produces and distributes adult entertainment products, including DVDs and streaming videos. It considers itself to be the best source of gay erotica featuring black and latino men, writes The Hollywood Reporter.

In 2010, the company started proceedings before the US District Court for the Northern District of Illinois Eastern Division, claiming copyright and trade mark infringements. The defendants were Marques Rondale Gunter -- who created, owns and operates a website called myVidster.com, a social video bookmarking site -- and 26 Doe users of myVidster's services.

ISPs should carry out thorough
and most professional investigations
to escape liability

In particular, as reported by TorrentFreak, Flava alleged that Gunter had failed to police his site correctly for infringement. Although Flava did not deny that Gunter had responded to specific takedown requests, this had done nothing to stop a sample of 26 repeat infringers who kept reposting embedded links to infringing contents on myVidster.

In July 2011, US District Judge John Grady upheld the contributory infringement claims and granted a preliminary injunction against myVidster. The judge found that, although Gunter removed videos from myVidster which are listed in DMCA notices, he went no further:

"Beyond his mechanical response to the notices, Gunter refuses to concern himself with copyright protection. It is true that service providers are not required to police their sites for infringement, but they are required to investigate and respond to notices of infringement—with respect to content and repeat infringers."

The injunction was confirmed in September 2011, referring a contrario  to Ninth Circuit's 2007 seminal decision in Perfect 10 v Amazon and the "server test" envisaged therein. As explained by the US District Court for the Central District of California, 

"under the server test, someone could create a website entitled “Infringing Content For All!” with thousands of in-line links to images on other websites that serve infringing content. That website, however, would be immune from claims of direct infringement because it does not actually serve the images."

Judge Grady's ruling was appealed up to the Seventh Circuit, where it has attracted considerable interest and is now to be decided.

Last November the Electronic Frontier Foundation (EFF) and Public Knowledge filed their amicus brief, and were later joined by Google, Facebook and, most recently, by the Motion Pictures Association of America (MPAA). In their amicus brief the EFF and Public Knowledge argue that the District Court "failed to heed direction from the Supreme Court[’s decision in eBay v MercExchange] with regard to a fair injunctive relief and muddied the law surrounding the crucial safe harbor provisions of 17 U.S.C. §512(i)." In particular, the District Court ordered Gunter "to police its site and, by filtering and removing certain content, create prior restraints on user-generated content that may not infringe [Flava]'s (or anyone's) copyrights."

Similarly, a joint brief by Google and Facebook stresses that, while linking can never be direct copyright infringement, it can be potentially contributory or vicarious copyright infringement under some circumstances. In particular, Google and Facebook assert, if Flava can show that 

"myVidster or its users had knowledge of infringement and that their activities were intended to materially contribute to that infringement, myVidster or its users could potentially be liable as contributory infringers. If Flava Works can show that myVidster or its users had the rights and ability to supervise the particular infringing performances and also had a direct financial interest in those performances, myVidster or its users could potentially be liable as vicarious infringers. But one cannot simply say, as the court below did, that myVidster must be enjoined because there has been infringement by someone, somewhere, that was facilitated by the operation of the myVidster website."

Fairly different is the tone of the MPAA's amicus brief, which was submitted on 4 April last. In particular, claims the MPAA, 

"myVidster knew of the direct infringement. Flava notified myVidster of the infringing links as well as "tags" consisting of Flava's trademarks and frequently used by myVidster's customers to mark videos owned by Flava. Rather than discouraging infringement, however, myVidster advertised the availability of infringing material, including mainstream motion pictures; and willfully blinded itself to infringements by failing to take steps, like filtering, to identify re-postings of the same infringing links that Flava had already identified. The district court also correctly concluded that myVidster contributed to the direct infringement by failing to disable or block embedded links to infringing video streams."

The decision of the Court of Appeals is keenly awaited, not only on account of recent developments (see the Viacom/YouTube saga), but also because it promises to have relevant consequences as to the degree of due diligence ISPs are required to exert to avoid liability for infringing activities carried out by third parties.