Viacom's Lawyers In the YouTube DMCA Litigation

Paul Smith of the Washington, DC, office of Jenner & Block wasn't supposed to be the one standing before a panel of appellate judges last October, trying to convince the U.S. Court of Appeals for the Second Circuit to revive Viacom's $1 billion infringement suit against YouTube and Google. Months earlier, Viacom had hired Theodore Olson Jr. of Gibson, Dunn & Crutcher to persuade the court that Google should be held to account for hosting thousands of copyrighted videos on its video sharing site.

But just three days before oral arguments, Viacom changed its mind and called on Smith, who had been involved in the case from the outset, to square off against Google lawyers at Quinn Emanuel Urquhart & Sullivan. Smith split the arguments with Charles Sims of the New York office of Proskauer Rose, who represents a proposed class of copyright holders with their own claims against Google.

“I'd been heavily involved in all the preparation and moot courts, but I basically had to work many hours a day to get up to speed,” Smith says. “It was rather intensive.” (Smith declined to comment on the last-minute change of counsel and Olson couldn't immediately be reached; Viacom's general counsel said that Olson would remain part of the company's legal team.)

Reversal

The preparation paid off for both Smith and Sims in April 2012, when the Second Circuit reversed a June 2010 lower court decision that had granted Google summary judgment in the case. The appellate court held that “a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website” when users illegally uploaded clips from shows like The Daily Show and South Park. Viacom International Inc. v. YouTube Inc., 10-3270 (2nd Cir. 2012).

The Second Circuit decision revived one of the biggest copyright infringement cases in U.S. history, and offers judges much-needed guidance on how to interpret the safe harbor provisions of the Digital Millennium Copyright Act (DMCA), which partially shields Internet companies from copyright claims over user-generated content. As noted in the article on page one of this issue of Entertainment Law & Finance, the two-judge panel held that Viacom and the class could move forward on claims that Google was “willfully blind” to instances of copyright infringement on YouTube.

The Second Circuit also reversed Manhattan federal district court judge Louis Stanton by allowing Viacom to argue that YouTube had a “right and ability to control the infringing activity and received a financial benefit directly attributable to that activity.” Sims took the lead arguing those issues in October.

Sims landed on the case for the appeal after former Proskauer partner Louis Solomon left for Cadwalader, Wickersham & Taft in March 2010. Sims will continue to represent the Football Association Premier League, which is also suing YouTube, now that the case is back at the district court. Taking over the case offered him a second shot at arguing DMCA issues before Second Circuit after a 2001 trip to the court for the plaintiffs in Universal City Studios Inc. v. Corley, 273 F.3d 429, in which the movie studios fought successfully to block a program that could decrypt DVDs.

As the Viacom case returns to the district court, Sims says, “[o]bviously there will be a lot of focus on willful blindness and [YouTube's] knowledge and red flag awareness.” Barring a settlement, more appellate litigation seems all but certain. “I think there is still some ambiguity that the Second Circuit left in the law,” Smith says. “So we'll have some wrangling about what the safe harbors are.”

Paul Smith of the Washington, DC, office of Jenner & Block wasn't supposed to be the one standing before a panel of appellate judges last October, trying to convince the U.S. Court of Appeals for the Second Circuit to revive Viacom's $1 billion infringement suit against YouTube and Google. Months earlier, Viacom had hired Theodore Olson Jr. of Gibson, Dunn & Crutcher to persuade the court that Google should be held to account for hosting thousands of copyrighted videos on its video sharing site.

But just three days before oral arguments, Viacom changed its mind and called on Smith, who had been involved in the case from the outset, to square off against Google lawyers at Quinn Emanuel Urquhart & Sullivan. Smith split the arguments with Charles Sims of the New York office of Proskauer Rose, who represents a proposed class of copyright holders with their own claims against Google.

“I'd been heavily involved in all the preparation and moot courts, but I basically had to work many hours a day to get up to speed,” Smith says. “It was rather intensive.” (Smith declined to comment on the last-minute change of counsel and Olson couldn't immediately be reached; Viacom's general counsel said that Olson would remain part of the company's legal team.)

Reversal

The preparation paid off for both Smith and Sims in April 2012, when the Second Circuit reversed a June 2010 lower court decision that had granted Google summary judgment in the case. The appellate court held that “a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website” when users illegally uploaded clips from shows like The Daily Show and South Park. Viacom International Inc. v. YouTube Inc., 10-3270 (2nd Cir. 2012).

The Second Circuit decision revived one of the biggest copyright infringement cases in U.S. history, and offers judges much-needed guidance on how to interpret the safe harbor provisions of the Digital Millennium Copyright Act (DMCA), which partially shields Internet companies from copyright claims over user-generated content. As noted in the article on page one of this issue of Entertainment Law & Finance, the two-judge panel held that Viacom and the class could move forward on claims that Google was “willfully blind” to instances of copyright infringement on YouTube.

The Second Circuit also reversed Manhattan federal district court judge Louis Stanton by allowing Viacom to argue that YouTube had a “right and ability to control the infringing activity and received a financial benefit directly attributable to that activity.” Sims took the lead arguing those issues in October.

Sims landed on the case for the appeal after former Proskauer partner Louis Solomon left for Cadwalader, Wickersham & Taft in March 2010. Sims will continue to represent the Football Association Premier League, which is also suing YouTube, now that the case is back at the district court. Taking over the case offered him a second shot at arguing DMCA issues before Second Circuit after a 2001 trip to the court for the plaintiffs in Universal City Studios Inc. v. Corley , 273 F.3d 429, in which the movie studios fought successfully to block a program that could decrypt DVDs.

As the Viacom case returns to the district court, Sims says, “[o]bviously there will be a lot of focus on willful blindness and [YouTube's] knowledge and red flag awareness.” Barring a settlement, more appellate litigation seems all but certain. “I think there is still some ambiguity that the Second Circuit left in the law,” Smith says. “So we'll have some wrangling about what the safe harbors are.”