YouTube and eBay Protected by the DMCAs Safe Harbor Provision Even Though they are Used Widely to Facilitate the Distribution Copyright-Infringing Property

July 9th, 2010

Major copyright owners in the entertainment industry and in popular fashion have been frustrated by recent court rulings reinforcing the protection offered by the Digital Millennium Copyright Act’s (DMCA) Safe Harbor Provision. The Safe Harbor Provision draws its authority from the DMCA Title II, the Online Copyright Infringement Liability Limitation Act.

The Safe Harbor Provision protects online service providers (OSPs) from copyright and trademark infringement liability if the service providers follow certain steps;

1) An OSP must take measures to preventtrademark infringement counterfeiting, and

2) After being notified of infringing content by the copyright owner or his agent, the OSP must promptly take down the content in question, and

3) The OSP must take steps to prevent repeat infringers.

Recently we drew your attention to the lawsuit between the entertainment industry giant Viacom and Google where Viacom was alleging more than $1billion in damages. Judge Stanton set a very high bar for any plaintiff wishing to prove that a defendant had actual knowledge of any specific instance of infringing content. More on that suit can be found here;

However even more recently is the case of Tiffany v. eBay, where the famous jewelry store chain brought suit against eBay for its role in perpetuating the sale of Tiffany ‘replicas’ (counterfeit) on its online auction site. Tiffany alleged false advertising, trademark dilution, and similar to the Viacom suit; contributory trademark infringement.

trademark infringementIn its complaint, Tiffany alleges that some 75% of “Tiffany” brand jewelry being sold on eBay is comprised of counterfeit goods. Tiffany argued to the court that eBay knew or had reason to know that counterfeit goods were being sold on their website due to the huge volume of transactions involving counterfeit Tiffany jewelry. The jewelry company claims that it has filed thousands of notices of claimed infringement forms (NOCIs) prior to bringing the most recent suit and it points out that eBay has received numerous complaints brought by consumers informing eBay that their “Tiffany” purchases off eBay yielded counterfeit items.

However, in spite of these allegations the court rejected the theory advanced by Tiffany that eBay had general knowledge of these instances of trademark-infringement. The court ruled that Tiffany failed to demonstrate that eBay was supplying its services to sellers who it (eBay) knew, or had reason to know, were selling counterfeit goods.

In order to escape liability, eBay has instituted copyright infringement policies which now allow a copyright or trademark owner to request the removal of infringing material. eBay’s program is called the Verified Owner’s Rights program (VeRo). On their webpage, eBay notes that the VeRo program;

“Works to ensure that item listings do not infringe upon the copyright, trademark or other intellectual property rights of third parties. VeRO Program participants have the ability to identify and request removal of allegedly infringing items and materials.”

YouTube has also adopted a program very similar to eBay’s VeRo program. YouTube’s program utilizes the Copyright Complaint Webform, which allows users to report instances of copyright / trademark-infringement to YouTube so they can then take the infringing content offline. Further, YouTube has setup a Content Verification Program, to “assist copyright owners in searching for material that they believe to be infringing, and providing YouTube with information reasonably sufficient to permit us to locate that material.”

Intellectual property owners should take a lesson from Viacom Intl v. YouTube and Tiffany v. eBay. The burden of protecting your copyrighted or trademarked property is on the owner. However, the new programs instituted by both YouTube and eBay should help owners identify infringing content and get it removed expediently.

There is available recourse outside of the newest programs offered by eBay and YouTube. If you need help protecting your copyright or trademark, your best bet is to contact an internet lawyer to protect your intellectual property rights.