Viacom v. YouTube: Further Thoughts on DMCA Section (512(c)(3)(A)(ii), the Representative List Dilemma, and a Solution

Whew! What a long title – admittedly clunky, but accurate. At this weekend’s State Bar of California IP Law Section’s 35th Annual Intellectual Property Institute, I attended an excellent panel with a similarly long title: UGC on a Global Stage: International Update on Secondary Liability for Copyright Infringement. Moderated by James Nguyen of the Beverly Hills office of Wildman Harrold Allen & Dixon, the panel’s focus was on how secondary liability for UGC (user generated content) was being addressed in countries throughout the world. The discussion began with an insightful presentation by Melinda Mehringer, Senior Vice-President, Content Protection Litigation, Fox Entertainment Group, which summarized the UGC issues in the U.S., exemplified principally by the decision in the Viacom v. Google, YouTube et al. litigation.

I have previously discussed this case (see my July 1, 2010 blog posts) and voiced my concern that the DMCA notice and takedown process was a poor fit for UGC comprised of multiple uploads of the same or similar content. The inability of ISPs to locate posts via the “Representative List” process offered by DMCA Section (512(c)(3)(A)(ii) left content providers in the difficult situation of having to identify, by individual URL, each infringing post – a burdensome task when a work is posted and reposted multiple times. In subsequent commentary about the case that I offered on a panel at the Fall ABA conference in San Francisco, I noted that the use of hash marks as a form of pre-upload filtering was not much of a solution, since the hash marking systems only worked for identical content – which meant that any YouTube posting that added or mashed up content would escape detection.

I was reassured, and a bit horrified, to find Ms. Mehringer reaffirming the view that the notice and takedown system wasn’t working in the UGC context. She noted that in the first half of 2010, Fox Entertainment had sent out seven million (7,000,000) takedown notices! This is a staggering number of notices, and makes it abundantly clear that we need a better system to allow content owners to protect their work. Ms. Mehringer noted, in a conversation we had following her presentation, that the entire suite of different types of pre-upload filtering systems now in use by YouTube and other ISPs are allowing content owners to identify up to 85% of infringing content, but the burden of sending out notices, particularly in the kinds of numbers she cited, remains untenable.

All of this puts me to mind of Prof. Lawrence Lessig’s discussion, in the first version of his book, Code, and Other Laws of Cyberspace, that to effect change in the online universe, four different modalities must be involved: Code (or architecture), Law, The Market, and Social Normative change. While filtering systems and threats of legal enforcement may help address UGC infringement issues, the absence of any economic consequences, and more importantly, the failure to convince users that infringement is a social harm, likely means that this battle will continue, to the detriment of the creative community.

Coming up with a solution to this dilemma is a challenge for all of us in the IP community – so consider the gauntlet thrown readers – how do we solve this?