Umg Recordings, Inc. v. Shelter Capital Partners Llc ( 2013 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
UMG RECORDINGS, INC., a Delaware No. 09-55902
corporation; UNIVERSAL MUSIC
CORP ., a New York corporation; D.C. No.
SONGS OF UNIVERSAL, INC., a 2:07-cv-05744-
California corporation; UNIVERSAL- AHM-AJW
POLYGRAM INTERNATIONAL
PUBLISHING , INC., a Delaware
corporation; RONDOR MUSIC
INTERNATIONAL, INC., a California
corporation; UNIVERSAL MUSIC -
MGB NA LLC, a California Limited
Liability Company; UNIVERSAL
MUSIC -Z TUNES LLC, a New York
Limited Liability Company;
UNIVERSAL MUSIC -MBG MUSIC
PUBLISHING LTD ., a UK Company,
Plaintiffs-Appellants,
v.
SHELTER CAPITAL PARTNERS LLC, a
Delaware Limited Liability
Company; SHELTER VENTURE FUND
LP, a Delaware Limited Partnership;
SPARK CAPITAL LLC, a Delaware
Limited Liability Company; SPARK
CAPITAL, L.P., a Delaware Limited
Partnership; TORNANTE COMPANY ,
2 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
LLC, a Delaware Limited Liability
Company,
Defendants-Appellees,
and
VEOH NETWORKS, INC., a California
corporation,
Defendant.
UMG RECORDINGS, INC., a Delaware No. 09-56777
corporation; UNIVERSAL MUSIC
CORP ., a New York corporation; D.C. No.
SONGS OF UNIVERSAL, INC., a 2:07-cv-05744-
California corporation; UNIVERSAL- AHM-AJW
POLYGRAM INTERNATIONAL
PUBLISHING , INC., a Delaware
corporation; RONDOR MUSIC
INTERNATIONAL, INC., a California
corporation; UNIVERSAL MUSIC -
MGB NA LLC, a California Limited
Liability Company; UNIVERSAL
MUSIC -Z TUNES LLC, a New York
Limited Liability Company;
UNIVERSAL MUSIC -MBG MUSIC
PUBLISHING LTD ., a UK Company,
Plaintiffs-Appellants,
v.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 3
VEOH NETWORKS, INC., a California
corporation,
Defendant-Appellee,
and
SHELTER CAPITAL PARTNERS LLC, a
Delaware Limited Liability
Company; SHELTER VENTURE FUND
LP, a Delaware Limited Partnership;
SPARK CAPITAL LLC, a Delaware
Limited Liability Company; SPARK
CAPITAL, L.P., a Delaware Limited
Partnership; TORNANTE COMPANY ,
LLC, a Delaware Limited Liability
Company,
Defendants.
UMG RECORDINGS, INC., a Delaware No. 10-55732
corporation; UNIVERSAL MUSIC
CORP ., a New York corporation; D.C. No.
SONGS OF UNIVERSAL, INC., a 2:07-cv-05744-
California corporation; UNIVERSAL- AHM-AJW
POLYGRAM INTERNATIONAL
PUBLISHING , INC., a Delaware
corporation; RONDOR MUSIC ORDER AND
INTERNATIONAL, INC., a California OPINION
corporation; UNIVERSAL MUSIC -
MGB NA LLC, a California Limited
Liability company; UNIVERSAL
MUSIC -Z TUNES LLC, a New York
4 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Limited Liability company;
UNIVERSAL MUSIC -MBG MUSIC
PUBLISHING LTD ., a UK company,
Plaintiffs-Appellees,
v.
VEOH NETWORKS, INC., a California
corporation,
Defendant-Appellant.
Appeals from the United States District Court
for the Central District of California
A. Howard Matz, District Judge, Presiding
Argued and Submitted
May 6, 2011—Pasadena, California
Filed March 14, 2013
Before: Harry Pregerson, Raymond C. Fisher,
and Marsha S. Berzon, Circuit Judges.
Order;
Opinion by Judge Fisher
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 5
SUMMARY*
Copyright
The panel withdrew its opinion filed on December 20,
2011, and appearing at 667 F.3d 1022 (9th Cir. 2011);
granted appellant’s petition for panel rehearing; denied as
moot a petition for rehearing en banc; and filed a superseding
opinion in an action for direct and secondary copyright
infringement brought by Universal Music Group, a producer
of music videos, against Veoh Networks, the operator of a
publicly accessible website that enables users to share videos
with other users.
In the superseding opinion, the panel affirmed the district
court’s summary judgment. The panel wrote that although
Veoh had implemented various procedures to prevent
copyright infringement through its system, users of Veoh’s
service had been able, without UMG’s authorization, to
download videos containing songs for which UMG owned the
copyright. The panel affirmed the district court’s holding that
Veoh was protected by the Digital Millennium Copyright Act
“safe harbor,” 17 U.S.C. § 512(c), which limits service
providers’ liability for “infringement of copyright by reason
of the storage at the direction of a user of material that resides
on a system or network controlled or operated by or for the
service provider.” Agreeing with the Second Circuit, the
panel rejected UMG’s arguments that the safe harbor did not
apply because: (1) the alleged infringing activities did not
fall within the plain meaning of “infringement of copyright
*
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
6 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
by reason of the storage [of material] at the direction of a
user;” (2) genuine issues of fact remained about whether
Veoh had actual knowledge of infringement, or was “aware
of facts or circumstances from which infringing activity [wa]s
apparent;” and (3) Veoh “receive[d] a financial benefit
directly attributable to . . . infringing activity” that it had the
right and ability to control.
The panel affirmed the district court’s Fed. R. Civ. P
12(b)(6) dismissal of claims for vicarious infringement,
contributory infringement, and inducement of infringement
against three Veoh investors. The panel also affirmed the
district court’s denial of Veoh’s request for attorneys’ fees
under Fed. R. Civ. P. 68 on the basis that fees were not
properly awardable under the Copyright Act. The panel
remanded to the district court to analyze separately whether
Rule 68 costs, excluding attorneys’ fees, were warranted.
COUNSEL
Steven A. Marenberg (argued), Brian D. Ledahl and Carter
Batsell, Irell & Manella LLP, Los Angeles, California, for
Plaintiffs-Appellants-Cross-Appellees.
Michael S. Elkin (argued), Thomas P. Lane (argued), Jennifer
A. Golinveaux and Erin R. Ranahan, Winston & Strawn LLP,
Los Angeles, California, for Defendant-Appellee-Cross-
Appellant.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 7
Robert G. Badal (argued), Joel S. Cavanaugh and Emily S.
Churg, Wilmer Cutler Pickering Hale and Dorr LLP, Los
Angeles, California; Glen L. Kulik (argued) and Alisa S.
Edelson, Kulik, Gottesman, Mouton & Siegel, LLP, Sherman
Oaks, California, for Defendants-Appellees.
Jeffrey G. Knowles and Julia D. Greer, Coblentz, Patch,
Duffy & Bass LLP, San Francisco, California; Eric J.
Schwartz, Mitchell Silberberg & Knupp LLP, Washington,
D.C., for Amici Curiae Broadcast Music, Inc., and American
Society of Composers, Authors and Publishers.
Ronald L. Johnston, Sean Morris and Emilia P.E. Morris,
Arnold & Porter LLP, Los Angeles, California; Robert
Garrett, Arnold & Porter LLP, Washington, D.C., for Amici
Curiae Recording Industry Association of America, National
Music Publishers’ Association, NBC Universal Inc., and
American Federation of Musicians.
Daniel J. Popeo and Cory L. Andrews, Washington Legal
Foundation, Washington, D.C.; Clifford M. Sloan, Mary E.
Rasenberger and Christopher G. Clark, Skadden, Arps, Slate,
Meager & Flom LLP, Washington, D.C., for Amicus Curiae
Washington Legal Foundation.
Corynne McSherry and Michael Barclay, Electronic Frontier
Foundation & Internet Archive, San Francisco, California, for
Amici Curiae Electronic Frontier Foundation, Internet
Archive, American Library Association, Association of
College and Research Libraries, Association of College and
Research Libraries, Computer and Communications Industry
Association, Public Knowledge, Center for Democracy and
Technology and Netcoalition.
8 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Matthew M. Werdegar, Michael S. Kwun and Benjamin
Berkowitz, Keker & Van Nest LLP, San Francisco,
California, for Amici Curiae eBay Inc., Facebook, Inc.,
Google Inc., IAC/InterActiveCorp., and Yahoo! Inc.
ORDER
The opinion filed on December 20, 2011, and appearing
at 667 F.3d 1022 (9th Cir. 2011) is withdrawn.
Appellant’s petition for panel rehearing is GRANTED
and the petition for rehearing en banc is DENIED AS
MOOT.
A superseding opinion will be filed concurrently with this
order.
The parties may file additional petitions for rehearing or
rehearing en banc.
OPINION
FISHER, Circuit Judge:
Veoh Networks (Veoh) operates a publicly accessible
website that enables users to share videos with other users.
Universal Music Group (UMG) is one of the world’s largest
recorded music and music publishing companies, and
includes record labels such as Motown, Def Jam and Geffen.
In addition to producing and distributing recorded music,
UMG produces music videos. Although Veoh has
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 9
implemented various procedures to prevent copyright
infringement through its system, users of Veoh’s service have
in the past been able, without UMG’s authorization, to
download videos containing songs for which UMG owns the
copyright. UMG responded by filing suit against Veoh for
direct and secondary copyright infringement. The district
court granted summary judgment to Veoh after determining
that it was protected by the Digital Millennium Copyright Act
(DMCA) “safe harbor” limiting service providers’ liability
for “infringement of copyright by reason of the storage at the
direction of a user of material that resides on a system or
network controlled or operated by or for the service
provider.” 17 U.S.C. § 512(c). We agree, and accordingly
affirm.
BACKGROUND 1
Veoh allows people to share video content over the
Internet. Users can view videos uploaded by other users as
well as authorized “partner content” made available by major
copyright holders such as SonyBMG, ABC and ESPN. There
are two ways to use Veoh’s service: through a standalone
software client application launched in late 2005, or through
the veoh.com website launched in early 2006 that users
access via a standard web browser. Both services are
provided free of charge. Veoh generates revenue from
advertising displayed along with the videos. “As of April
2009, Veoh had well over a million videos available for
viewing, and users had uploaded more than four million
videos to Veoh.”
1
The facts are undisputed unless otherwise noted.
10 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Before a user may share a video through Veoh, he must
register at veoh.com by providing an email address, user
name and password. He must then state that he has read and
agreed to Veoh’s “Publisher Terms and Conditions” (PTC).
The PTC instructs users that they “may not submit [material]
. . . that contains any . . . infringing . . . or illegal content” and
directs that they “may only upload and publish [material] on
the Veoh Service to which [they] have sufficient rights and
licenses to permit the distribution of [their] [material] via the
Veoh Services.” The PTC agreement also gives Veoh a
license to “publicly display, publicly perform, transmit,
distribute, copy, store, reproduce and/or provide” the
uploaded video “through the Veoh Service, either in its
original form, copy or in the form of an encoded work.”
A user who wants to share a video must also agree to
Veoh’s “Terms of Use,” which give Veoh a license “to use,
reproduce, modify, distribute, prepare derivative works of,
display, publish, perform and transmit” the video. The Terms
of Use provide that “you expressly represent and warrant that
you own or have the necessary licenses, rights, consents, and
permissions to use and authorize Veoh to use all . . .
copyright or other proprietary rights in and to any and all
[material shared on Veoh].” Users must agree “not to (a) take
any action or (b) upload, download, post, submit or otherwise
distribute or facilitate distribution of any [material] . . .
through the Veoh Service, that . . . infringes any . . .
copyright.” Once a user agrees to the PTC and Terms of Use,
he may upload a video. Each time a user begins to upload a
video to Veoh’s website, a message appears stating, “Do not
upload videos that infringe copyright, are pornographic,
obscene, violent, or any other videos that violate Veoh’s
Terms of Use.”
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 11
When a video is uploaded, various automated processes
take place. Veoh’s software automatically breaks down the
video file into smaller 256-kilobyte “chunks,” which facilitate
making the video accessible to others. Veoh’s software also
automatically converts, or “transcodes,” the video file into
Flash 7 format. This is done because “the vast majority of
internet users have software that can play videos” in this
format. Veoh presets the requisite settings for the Flash
conversion. If the user is a “Pro” user, Veoh’s software also
converts the uploaded video into Flash 8 and MPEG-4
formats, which are playable on some portable devices.
Accordingly, when a Pro user uploads a video, Veoh
automatically creates and retains four copies: the chunked
file, the Flash 7 file, the Flash 8 file and the MPEG-4 file.
None of these automated conversions affects the content of
the video.
Veoh’s computers also automatically extract metadata
from information users provide to help others locate the video
for viewing. Users can provide a title, as well as tags or
keywords that describe the video, and can also select pre-set
categories describing the video, such as “music,” “faith” or
“politics.” The Veoh system then automatically assigns every
uploaded video a “permalink,” or web address, that uniquely
identifies the video and makes it available to users. Veoh
employees do not review the user-submitted video, title or
tags before the video is made available.2
Veoh’s system allows users to access shared videos in
two ways. First, the video may be “streamed” from a server,
2
Veoh employees do monitor already accessible videos for
pornography, which is removed, using a “porn tool” to review thumbnail
images of uploaded videos tagged as “sexy.”
12 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
whereby the user’s web browser begins displaying the video
almost immediately, before the entire file has been
transmitted to the user’s computer. Depending on whether
the user stops his web browser from streaming the full video,
a partial or full copy of the video is stored temporarily on the
user’s computer. Second, the user can download a copy of
the video through Veoh’s website or client software
application. Veoh transfers a “chunked” copy of the file to
the user’s computer, and the software reassembles the chunks
into a viewable copy. The downloaded file is stored on the
user’s computer in a Veoh directory, which gives Veoh the
ability to terminate access to the files.
Veoh employs various technologies to automatically
prevent copyright infringement on its system. In 2006, Veoh
adopted “hash filtering” software. Whenever Veoh disables
access to an infringing video, the hash filter also
automatically disables access to any identical videos and
blocks any subsequently submitted duplicates. Veoh also
began developing an additional filtering method of its own,
but in 2007 opted instead to adopt a third-party filtering
solution produced by a company called Audible Magic.
Audible Magic’s technology takes audio “fingerprints” from
video files and compares them to a database of copyrighted
content provided by copyright holders. If a user attempts to
upload a video that matches a fingerprint from Audible
Magic’s database of forbidden material, the video never
becomes available for viewing. Approximately nine months
after beginning to apply the Audible Magic filter to all newly
uploaded videos, Veoh applied the filter to its backlog of
previously uploaded videos. This resulted in the removal of
more than 60,000 videos, including some incorporating
UMG’s works. Veoh has also implemented a policy for
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 13
terminating users who repeatedly upload infringing material,
and has terminated thousands of user accounts.
Despite Veoh’s efforts to prevent copyright infringement
on its system, both Veoh and UMG agree that some of
Veoh’s users were able to download unauthorized videos
containing songs for which UMG owns the copyright. The
parties also agree that before UMG filed its complaint, the
only notices Veoh received regarding alleged infringements
of UMG’s works were sent by the Recording Industry
Association of America (RIAA). The RIAA notices listed
specific videos that were allegedly infringing, and included
links to those videos. The notices did not assert rights to all
works by the identified artists, and did not mention UMG.
UMG does not dispute that Veoh removed the material
located at the links identified in the RIAA notices.
In September 2007, UMG filed suit against Veoh for
direct, vicarious and contributory copyright infringement, and
for inducement of infringement. UMG contended that
Veoh’s efforts to prevent copyright infringement on its
system were “too little too late” because Veoh did not adopt
filtering technology until “after Veoh harbored infringing
material for its own benefit,” and initially it ran the filters
only on newly uploaded videos. UMG also argued that Veoh
“remove[d] copyrighted material only if identified
specifically in a notice of infringement,” and “[e]ven then,
Veoh would only remove the video associated with the
particular URL and bit-for-bit copies of that same video.”
In UMG’s first amended complaint (FAC), it added three
of Veoh’s investors as defendants on theories of secondary
14 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
liability.3 The Investor Defendants sought dismissal of
UMG’s FAC for failure to state a claim against them under
Federal Rule of Civil Procedure 12(b)(6). The district court
granted the motion to dismiss without prejudice and UMG
filed a Second Amended Complaint (SAC). The Investor
Defendants again moved to dismiss, and the district court
dismissed the claims against the Investor Defendants with
prejudice, holding that UMG’s “allegations amounted to little
more than what is legally and customarily required of
corporate board members.” Final judgment on that ground
was entered on June 1, 2009.
Veoh asserted as an affirmative defense that it is protected
by the DMCA safe harbor provisions. UMG moved for
partial summary judgment that Veoh is not entitled to
protection under the 17 U.S.C. § 512(c) safe harbor because
the alleged infringement did not qualify as “by reason of the
storage [of material] at the direction of a user.” The district
court disagreed and denied UMG’s motion. See UMG
Recordings, Inc. v. Veoh Networks Inc. (UMG I), 620 F.
Supp. 2d 1081, 1092 (C.D. Cal. 2008). Veoh then moved for
summary judgment on the basis that it satisfied the remaining
requirements of § 512(c). Judge Matz granted the motion in
a careful and comprehensive decision holding that Veoh met
all the § 512(c) requirements and was thus entitled to DMCA
safe harbor protection. See UMG Recordings, Inc. v. Veoh
Networks Inc. (UMG II), 665 F. Supp. 2d 1099, 1118 (C.D.
Cal. 2009). The parties thereafter stipulated to final
judgment, which was entered on November 3, 2009.
3
The three investors, Shelter Capital LLC, Spark Capital LLC and the
Tornante Company are referred to collectively as “the Investor
Defendants.”
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 15
Veoh moved for an award of costs and attorney’s fees
under Federal Rule of Civil Procedure 68 and the Copyright
Act, 17 U.S.C. § 505. Although the district court found that
Veoh was the prevailing party “on the core issue in the
litigation,” the court declined to exercise its discretion to
award Veoh fees under § 505 because Veoh “failed to
demonstrate that UMG’s legal challenge was improper, in
bad faith, or contrary to the purposes of the Copyright Act.”
Because the court concluded fees were not “properly
awardable” under § 505, it also denied Veoh fees and costs
under Rule 68. Veoh does not challenge the denial of fees
under § 505, but appeals the denial of Rule 68 costs and fees.
UMG appeals the entry of summary judgment in Veoh’s
favor and the dismissal of its complaint against the Investor
Defendants.
DISCUSSION
I.
The district court had jurisdiction over these matters
under 28 U.S.C. § 1331, and we have jurisdiction over the
appeals under 28 U.S.C. § 1291. We review de novo a
district court’s summary judgment ruling. See Rossi v.
Motion Picture Ass’n of Am. Inc., 391 F.3d 1000, 1002 (9th
Cir. 2004). “Viewing the evidence in the light most favorable
to the non-moving party,” the moving party has the “burden
to show that there are no genuine issues of material fact,” and
that it is entitled to judgment as a matter of law. Kennedy v.
Allied Mut. Ins. Co., 952 F.2d 262, 265 (9th Cir. 1991).
Review of a dismissal for failure to state a claim under Rule
12(b)(6) is likewise de novo. See Balistreri v. Pacifica Police
Dep’t, 901 F.2d 696, 699 (9th Cir. 1990). “On a motion to
dismiss, the court accepts the facts alleged in the complaint
16 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
as true,” and “[d]ismissal can be based on the lack of a
cognizable legal theory or the absence of sufficient facts
alleged.” Id. We also review de novo the district court’s
interpretation of the Copyright Act, see Rossi, 391 F.3d at1002–03, and of Rule 68, see Champion Produce, Inc. v.
Ruby Robinson Co., 342 F.3d 1016, 1020 (9th Cir. 2003).
II.
“Difficult and controversial questions of copyright
liability in the online world prompted Congress to enact Title
II of the DMCA, the Online Copyright Infringement Liability
Limitation Act (OCILLA).” Ellison v. Robertson, 357 F.3d
1072, 1076 (9th Cir. 2004). Congress recognized that “[i]n
the ordinary course of their operations service providers must
engage in all kinds of acts that expose them to potential
copyright infringement liability.” S. Rep. No. 105-190, at 8
(1998). Although Congress was aware that the services
provided by companies like Veoh are capable of being
misused to facilitate copyright infringement, it was loath to
permit the specter of liability to chill innovation that could
also serve substantial socially beneficial functions. Congress
decided that “by limiting [service providers’] liability,” it
would “ensure[] that the efficiency of the Internet will
continue to improve and that the variety and quality of
services on the Internet will continue to expand.” Id. To that
end, OCILLA created four safe harbors that preclude
imposing monetary liability on service providers for
copyright infringement that occurs as a result of specified
activities. The district court concluded that Veoh qualified
for one such safe harbor, under 17 U.S.C. § 512(c). UMG
challenges that determination and the consequent entry of
summary judgment in Veoh’s favor.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 17
There are a number of requirements that must be met for
a “service provider” like Veoh to receive § 512(c) safe harbor
protection.4 Section 512(c) provides in relevant part:
(c) Information residing on systems or networks at
direction of users. –
(1) In general. – A service provider shall not be liable
for monetary relief, or, except as provided in
subsection (j), for injunctive or other equitable relief,
for infringement of copyright by reason of the storage
at the direction of a user of material that resides on a
system or network controlled or operated by or for the
service provider, if the service provider –
(A)(i) does not have actual knowledge that the
material or an activity using the material on
the system or network is infringing;
(ii) in the absence of such actual knowledge,
is not aware of facts or circumstances from
which infringing activity is apparent; or
(iii) upon obtaining such knowledge or
awareness, acts expeditiously to remove, or
disable access to, the material;
4
W e assume without deciding that Veoh qualifies as a “service
provider” because UMG does not contend otherwise.
18 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
(B) does not receive a financial benefit
directly attributable to the infringing activity,
in a case in which the service provider has the
right and ability to control such activity; and
(C) upon notification of claimed infringement
as described in paragraph (3), responds
expeditiously to remove, or disable access to,
the material that is claimed to be infringing or
to be the subject of infringing activity.
On appeal, UMG contends that three of these
requirements were not met. First, UMG argues that the
alleged infringing activities do not fall within the plain
meaning of “infringement of copyright by reason of the
storage [of material] at the direction of a user,” a threshold
requirement under § 512(c)(1). Second, UMG argues that
genuine issues of fact remain about whether Veoh had actual
knowledge of infringement, or was “aware of facts or
circumstances from which infringing activity [wa]s apparent”
under § 512(c)(1)(A). Finally, UMG argues that it presented
sufficient evidence that Veoh “receive[d] a financial benefit
directly attributable to . . . infringing activity” that it had “the
right and ability to control” under § 512(c)(1)(B). We
disagree on each count, and accordingly we affirm the district
court.5
5
W e do not address whether Veoh adopted and reasonably implemented
a repeat infringer termination policy as required by § 512(i), or whether,
upon notification, Veoh expeditiously removed or disabled access to
infringing material under § 512(c)(1)(C). Although UMG contested those
points in the district court, its only mention of them on appeal was in a
footnote in its opening brief stating summarily that the district court also
committed reversible error “in holding that no genuine issues of fact
existed as to whether Veoh satisfied the requirements” of those provisions,
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 19
A.
We must first decide whether the functions automatically
performed by Veoh’s software when a user uploads a video
fall within the meaning of “by reason of the storage at the
direction of a user.” 17 U.S.C. § 512(c)(1). Although UMG
concedes that “[s]torage on computers involves making a
copy of the underlying data,” it argues that “nothing in the
ordinary definition of ‘storage’ encompasses” the automatic
processes undertaken to facilitate public access to user-
uploaded videos. Facilitation of access, UMG argues, goes
beyond “storage.” Therefore the creation of chunked and
Flash files and the streaming and downloading of videos fall
outside § 512(c). UMG also contends that these automatic
processes are not undertaken “at the direction of the user.”
The district court concluded that UMG’s reading of
§ 512(c) was too narrow, wrongly requiring “that the
infringing conduct be storage,” rather than be “‘by reason of
the storage,’” as its terms provide. UMG I, 620 F. Supp. 2d
at 1088–89 (quoting § 512(c)) (emphasis in original). We
agree that the phrase “by reason of the storage at the direction
of the user” is broader causal language than UMG contends,
“clearly meant to cover more than mere electronic storage
lockers.” Id. at 1088. We hold that the language and
structure of the statute, as well as the legislative intent that
motivated its enactment, clarify that § 512(c) encompasses
but “[d]ue to space constraints, U M G focuses on errors in the District
Court’s ruling concerning subsections 512(c)(1)(A) and (B).” Given that
UMG presented no argument on these points, Veoh declined to address
them in its answering brief. Accordingly, we will not discuss them either.
See Retlaw Broad. Co. v. NLRB, 53 F.3d 1002, 1005 n.1 (9th Cir. 1995)
(“Although the issue . . . is summarily mentioned in [the] opening brief,
it has not been fully briefed, and we therefore decline to address it.”).
20 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
the access-facilitating processes that automatically occur
when a user uploads a video to Veoh.
UMG’s argument that the district court too broadly
construed the scope of § 512(c) rests in part on UMG’s
contention that the DMCA’s “by reason of” language should
be interpreted in the same way as similar language in the
Racketeer Influenced and Corrupt Organizations Act (RICO),
18 U.S.C. §§ 1961–1968. RICO provides that “[a]ny person
injured in his business or property by reason of a violation of
section 1962 of this chapter may sue therefor.” 18 U.S.C.
§ 1964(c). In Holmes v. Securities Investor Protection Corp.,
503 U.S. 258, 268 (1992), the Supreme Court held that
RICO’s “by reason of” language required proximate
causation. UMG contends that we should thus read
§ 512(c)’s “by reason of storage” to mean that infringement
must be proximately caused by the storage, rather than caused
by the access that the storage facilitates.
Ordinarily we presume that “similar language in similar
statutes should be interpreted similarly.” United States v.
Sioux, 362 F.3d 1241, 1246 (9th Cir. 2004); see also
Northcross v. Bd. of Educ. of Memphis City Schs., 412 U.S.
427, 428 (1973) (noting that the “similarity of language” in
two statutes is an indicator that the statutes “should be
interpreted pari passu,” particularly when they “share a
common raison d’etre” (internal quotations omitted)). In this
case, however, there are important differences between the
statutes and their purposes. The reasoning underlying
Holmes counsels against extending its reading to the DMCA,
and the language and structure of § 512(c) compel us to
conclude that it should not be interpreted in the same manner
as RICO.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 21
The Holmes Court began its analysis by recognizing that
“by reason of” “can, of course, be read to mean that . . . the
defendant’s violation was a ‘but for’ cause of plaintiff’s
injury.” 503 U.S. at 265–66.6 Ultimately, however, Holmes
held that the “unlikelihood that Congress meant to allow all
factually injured plaintiffs to recover persuades us that RICO
should not get such an expansive reading.” Id. at 266.
Holmes explained that “[t]he key to the better interpretation
lies in some statutory history,” and traced the “by reason of”
language back to § 4 of the Clayton Act, which courts had
long held required proximate causation. Id. at 267. Because
RICO was specifically modeled on § 4, Holmes concluded
that the Clayton Act’s interpretation was particularly
persuasive. See id. at 267–68.
Holmes also explained that “such directness of
relationship” between the harm and the alleged wrong is a
“central element[]” of “Clayton Act causation” for three
primary reasons, and, significantly, concluded that all three
“apply with equal force to suits under [RICO].” Id. at
269–70. First, “the less direct an injury is, the more difficult
it becomes to ascertain the amount of a plaintiff’s damages
attributable to the violation.” Id. at 269. Second,
6
“‘But for’ causation is a short way of saying ‘[t]he defendant’s conduct
is a cause of the event if the event would not have occurred but for that
conduct.’ It is sometimes stated as ‘sine qua non’ causation, i.e., ‘without
which not . . . .’” Boeing Co. v. Cascade Corp., 207 F.3d 1177, 1183 (9th
Cir. 2000). “In determining whether a particular factor was a but-for
cause of a given event, we begin by assuming that that factor was present
at the time of the event, and then ask whether, even if that factor had been
absent, the event nevertheless would have transpired in the same way.”
Price Waterhouse v. Hopkins, 490 U.S. 228, 240 (1989) (plurality
opinion), superseded in part by statute on other grounds as recognized in
Desert Palace, Inc. v. Costa, 539 U.S. 90, 94–95 (2003).
22 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
“recognizing claims of the indirectly injured would force
courts to adopt complicated rules apportioning damages
among plaintiffs removed at different levels of injury from
the violative acts, to obviate the risk of multiple recoveries.”
Id. “And, finally, the need to grapple with these problems is
simply unjustified by the general interest in deterring
injurious conduct, since directly injured victims can generally
be counted on to vindicate the law as private attorneys
general, without any of the problems attendant upon suits by
plaintiffs injured more remotely.” Id. at 269–70.
None of these concerns applies to the DMCA, which,
unlike the Clayton Act and RICO, involves a narrow
affirmative defense rather than the expansion of liability.
Further, unlike in Holmes, there is no indication that
Congress modeled the DMCA on the Clayton Act or RICO.
We are therefore doubtful that in this quite different context,
Holmes’ strict reading of “by reason of” is what Congress
intended.7
7
A number of other courts have concluded, outside the RICO and
Clayton Act context, that “by reason of” should be read to require only
“but for” rather than proximate causation. See, e.g., Gross v. FBL Fin.
Servs., Inc., 129 S. Ct. 2343, 2350 (2009) (“The words ‘because of’ mean
‘by reason of: on account of.’ Thus, the ordinary meaning of the ADEA’s
requirement that an employer took adverse action ‘because of’ age is that
age was the ‘reason’ that the employer decided to act. To establish a
disparate-treatment claim under the plain language of the ADEA,
therefore, a plaintiff must prove that age was the ‘but-for’ cause of the
employer’s adverse decision.” (citations omitted) (emphasis added));
Robinson Knife Mfg. Co. v. C.I.R., 600 F.3d 121, 131–32 (2d Cir. 2010)
(holding that in 26 C.F.R. § 1.263A-1(e)(3)(i), the language “‘directly
benefit or are incurred by reason of’ boils down to a but-for causation
test”); Spirtas Co. v. Ins. Co. of Pa., 555 F.3d 647, 652 (8th Cir. 2009)
(holding that the “language ‘by reason of having executed any bond’ is
unambiguous and sets forth a simple cause-in-fact or ‘but-for’ causation
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 23
Our doubts are confirmed by the fact that UMG’s reading
of the “by reason of” language would create internal statutory
conflicts. By its terms, § 512(c) presupposes that service
providers will provide access to users’ stored material, and
we would thus contravene the statute if we held that such
access disqualified Veoh from the safe harbor.
Section 512(c) codifies a detailed notice and takedown
procedure by which copyright holders inform service
providers of infringing material accessible through their sites,
and service providers then “disable access to” such materials.
17 U.S.C. § 512(c)(1)(A)(iii), (c)(1)(C) & (c)(3)(A)(iii)
(emphasis added). This carefully considered protocol, and
the statute’s attendant references to “disabl[ing] access” to
infringing materials, see id., would be superfluous if we
accepted UMG’s constrained reading of the statute. See
Greenwood v. CompuCredit Corp., 615 F.3d 1204, 1209 (9th
Cir. 2010) (“We must, if possible, interpret a statute such that
all its language is given effect, and none of it is rendered
superfluous.” (citing TRW Inc. v. Andrews, 534 U.S. 19, 31
(2001))). Indeed, it is not clear how copyright holders could
even discover infringing materials on service providers’ sites
test.”); New Directions Treatment Servs. v. City of Reading, 490 F.3d 293,
301 n.4 (3d Cir. 2007) (“[T]he ADA prohibits discrimination against an
individual ‘by reason of such disability.’ . . . [T]his language . . . clearly
establishes that the . . . ADA . . . requires only but for causation.”
(citations omitted)); Pacific Ins. Co. v. Eaton Vance Mgmt., 369 F.3d 584,
589 (1st Cir. 2004) (“[W ]e consider the language unambiguous: ‘by
reason of’ means ‘because of,’ Black’s Law Dictionary 201 (6th ed.
1990), and thus necessitates an analysis at least approximating a ‘but-for’
causation test.”).
24 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
to notify them as the protocol dictates if § 512(c) did not
contemplate that there would be access to the materials.8
We do not find persuasive UMG’s effort to reconcile the
internal contradictions its reading of the statute creates by
positing that Congress must have meant § 512(c) to protect
only “web hosting” services. Web hosts “host” websites on
their servers, thereby “mak[ing] storage resources available
to website operators.” The thrust of UMG’s argument seems
to be that web hosts do not undertake the sorts of
accessibility-facilitating functions that Veoh does, and thus
the services they perform “fit within the ordinary meaning of
‘storage,’” and thereby “harmoniz[e]” with the notice and
takedown procedures. UMG’s theory fails to account for the
reality that web hosts, like Veoh, also store user-submitted
materials in order to make those materials accessible to other
Internet users. The reason one has a website is so that others
may view it. As amici note, these access activities define
web hosting – if the web host only stored information for a
single user, it would be more aptly described as an online
back-up service. See Brief for Electronic Frontier Found. et
al. as Amici Curiae Supporting Appellees at 15, UMG
Recordings, Inc. v. Veoh Networks, Inc., No. 09-56777 (9th
Cir. 2011).
8
One commentator discussing the district court’s decision in this case
observed that “[UMG’s] interpretation would have rendered the safe
harbor a complete nullity. Virtually all [service providers] that host third-
party content – ranging from website hosting companies such as GoDaddy
to content companies such as MySpace, Facebook, or Y ouTube – host
such content so that it can be shared with others over the internet.” See
Edward Lee, Decoding the DMCA Safe Harbors, 32 Colum. J.L. & Arts
233, 261 (2009).
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 25
In addition, the technological processes involved in
providing web hosting services require those service
providers to make, transmit and download multiple copies of
users’ stored materials. To create a website, the user uploads
content to the web host’s computers, which make an initial
copy. “Content may be any number of things – family
photos, poems, . . . even sound clips and movies.” Preston
Gralla, How The Internet Works 132 (2d ed. 1999). Then,
when another Internet user wants to access the website by
clicking a link or entering the URL, all the website’s relevant
content is transmitted to the user’s computer, where another
copy is automatically made by the user’s web browser
software in order to assemble the materials for viewing and
listening. See id. at 157. To carry out their function of
making websites available to Internet users, web hosting
services thus routinely copy content and transmit it to Internet
users. See id. We cannot see how these access-facilitating
processes are meaningfully distinguishable from Veoh’s for
§ 512(c)(1) purposes.
Further, the language of the statute recognizes that one is
unlikely to infringe a copyright by merely storing material
that no one could access, and so includes activities that go
beyond storage. Section 512(c)(1)(A)(i) so recognizes in
stating “the material or an activity using the material . . . is
infringing.” (Emphasis added.) Section 512(c)(1)(A)(ii)
similarly addresses “infringing activity.” Section
512(c)(1)(A)(iii) also reinforces this reading by requiring the
service provider “to remove, or disable access to, the
material,” suggesting that if the material were still being
stored by the service provider, but was inaccessible, it might
well not be infringing. (Emphasis added.)
26 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Finally, if Congress wanted to confine § 512(c)
exclusively to web hosts rather than reach a wider range of
service providers, we very much doubt it would have done so
with the oblique “by reason of storage” language. We
presume that Congress instead would have taken the more
straightforward course of clarifying in the definition of
“service provider” that, as it applies to § 512(c), only web
hosts qualify. Indeed, Congress already gives two definitions
of “service provider[s]” – one narrow definition specific to
§ 512(a), and one broader definition that applies to the rest of
§ 512.9 We therefore see no basis for adopting UMG’s novel
theory that Congress intended § 512(c) to protect only web
hosting services.10
9
Section 512(k)(1)(A) provides that, “As used in subsection (a), the
term ‘service provider’ means an entity offering the transmission, routing,
or providing of connections for digital online communications, between
or among points specified by a user, of material of the user’s choosing,
without modification to the content of the material as sent or received.”
By contrast, § 512(k)(1)(B) provides that, “As used in this section, other
than subsection (a), the term ‘service provider’ means a provider of online
services or network access, or the operator of facilities therefor, and
includes an entity described in subparagraph (A).”
10
W e are also unpersuaded by UMG’s argument that “the District Court
used one activity – ‘storage’ – to immunize other activities,” in violation
of § 512(n). W e certainly agree that this would be improper – § 512(n)
clearly states that “[w]hether a service provider qualifies for the limitation
on liability in any one of those subsections . . . shall not affect a
determination of whether that service provider qualifies for the limitations
on liability under any other such subsection.” But we do not understand
Veoh to argue, or the district court to have held, that a service provider
qualifying under § 512(c) necessarily also qualifies under any other safe
harbor. Rather, we affirm the district court’s holding that the “by reason
of storage” language in § 512(c) itself covers the access-facilitating
automatic functions Veoh’s system undertakes, without being
supplemented by any other subsection. These functions are “separate and
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 27
OCILLA’s two “service provider” definitions also
undermine UMG’s argument that the automatic processes that
make user-uploaded videos accessible are not undertaken “at
the direction of the user.” The narrower definition that
applies exclusively to § 512(a), which governs conduit-only
functions, expressly excludes service providers that “modif[y]
[] the content of the material as sent or received.” 17 U.S.C.
§ 512(k)(1)(A). Under the broader definition applying to
§ 512(c), by contrast, there is no limitation on the service
provider’s ability to modify user-submitted material to
facilitate storage and access, as Veoh’s automatic processes
do. See Io Grp., Inc. v. Veoh Networks, Inc., 586 F. Supp. 2d
1132, 1147 (N.D. Cal. 2008). Had Congress intended to
include such a limitation, it would have said so expressly and
unambiguously, as it did in the narrower definition of
“service provider.” See id.“Veoh has simply established a system whereby software
automatically processes user-submitted content and recasts it
in a format that is readily accessible to its users.” Id. at 1148.
Veoh does not actively participate in or supervise file
uploading, “[n]or does it preview or select the files before the
upload is completed.” Id. Rather, this “automated process”
for making files accessible “is initiated entirely at the volition
of Veoh’s users.” Id.; see also CoStar Grp., Inc. v. Loopnet,
distinct,” 17 U.S.C. § 512(n), from the “transmitting, routing, or providing
connections” protected under § 512(a), which addresses “[t]ransitory
digital network communications” where the service provider “merely acts
as a conduit for infringing material without storing, caching, or providing
links to copyrighted material,” and thus “has no ability to remove the
infringing material from its system or disable access to the infringing
material.” In re Charter Commc’ns, Inc., Subpoena Enforcement Matter,
393 F.3d 771, 776 (8th Cir. 2005); see also Ellison, 357 F.3d at 1081(discussing § 512(a) “conduit service provider[s]”).
28 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Inc., 373 F.3d 544, 555 (4th Cir. 2004). We therefore hold
that Veoh has satisfied the threshold requirement that the
infringement be “by reason of the storage at the direction of
a user of material” residing on Veoh’s system. 17 U.S.C.
§ 512(c)(1).
B.
Under § 512(c)(1)(A), a service provider can receive safe
harbor protection only if it “(i) does not have actual
knowledge that the material or an activity using the material
on the system or network is infringing;” “(ii) in the absence
of such actual knowledge, is not aware of facts or
circumstances from which infringing activity is apparent; or”
“(iii) upon obtaining such knowledge or awareness, acts
expeditiously to remove, or disable access to, the material.”11
UMG has never disputed that when Veoh became aware of
allegedly infringing material as a result of the RIAA’s
DMCA notices, it removed the files. Rather, it argues that
Veoh had knowledge or awareness of other infringing videos
that it did not remove. The district court found that UMG
failed to rebut Veoh’s showing “that when it did acquire
knowledge of allegedly infringing material – whether from
DMCA notices, informal notices, or other means – it
expeditiously removed such material.” UMG II, 665 F. Supp.
2d at 1107. UMG argues on appeal that the district court
erred by improperly construing the knowledge requirement to
11
W e note that, to be coherent, the statute must be read to have an
implicit “and” between § 512(c)(1)(A)(i) and (ii). W e thus treat the
provisions as stating that to qualify for the safe harbor, a service provider
must either (1) have no actual knowledge and no “aware[ness] of facts or
circumstances from which infringing activity is apparent” or (2)
expeditiously remove or disable access to infringing material of which it
knows or is aware.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 29
unduly restrict the circumstances in which a service provider
has “actual knowledge” under subsection (i) and setting too
stringent a standard for what we have termed “red flag”
awareness based on facts or circumstances from which
infringing activity is apparent under subsection (ii). We hold
that the district court properly construed these requirements.
1.
It is undisputed that, until the filing of this lawsuit, UMG
“had not identified to Veoh any specific infringing video
available on Veoh’s system.” UMG’s decision to forgo the
DMCA notice protocol “stripped it of the most powerful
evidence of a service provider’s knowledge – actual notice of
infringement from the copyright holder.” Corbis Corp. v.
Amazon.com, Inc., 351 F. Supp. 2d 1090, 1107 (W.D. Wash.
2004) (citing 3 M. Nimmer & D. Nimmer, Nimmer on
Copyright § 12B.04(A)(3), at 12B-53 [hereinafter
“Nimmer”]); see also Io Grp., 586 F. Supp. 2d at 1148.12
Nevertheless, UMG contends that Veoh hosted a category of
copyrightable content – music – for which it had no license
from any major music company. UMG argues Veoh thus
must have known this content was unauthorized, given its
general knowledge that its services could be used to post
12
Notably, the statute specifies that notice of infringement by or on
behalf of a copyright holder that does not substantially comply with
§ 512(c) “shall not be considered . . . in determining whether a service
provider has actual knowledge or [has red-flag knowledge].” 17 U.S.C.
§ 512(c)(3)(B)(i). Proper DMCA notice under 17 U.S.C. § 512(c)(3)
provides only a claim of infringement, and is not necessarily sufficient by
itself to establish actual or “red flag” knowledge. Instead, proper DM CA
notice gives rise independently to an obligation to remove the allegedly
infringing material as well as to procedures for ascertaining whether the
material is indeed infringing. See § 512(g).
30 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
infringing material. UMG urges us to hold that this
sufficiently demonstrates knowledge of infringement. We
cannot, for several reasons.
As an initial matter, contrary to UMG’s contentions, there
are many music videos that could in fact legally appear on
Veoh. “Among the types of videos subject to copyright
protection but lawfully available on Veoh’s system were
videos with music created by users and videos that Veoh
provided pursuant to arrangements it reached with major
copyright holders, such as SonyBMG.” UMG II, 665 F.
Supp. 2d at 1109. Further, Congress’ express intention that
the DMCA “facilitate making available quickly and
conveniently via the Internet . . . movies, music, software, and
literary works” – precisely the service Veoh provides – makes
us skeptical that UMG’s narrow interpretation of § 512(c) is
plausible. S. Rep. No. 105-190, at 8. Finally, if merely
hosting material that falls within a category of content
capable of copyright protection, with the general knowledge
that one’s services could be used to share unauthorized copies
of copyrighted material, was sufficient to impute knowledge
to service providers, the § 512(c) safe harbor would be
rendered a dead letter: § 512(c) applies only to claims of
copyright infringement, yet the fact that a service provider’s
website could contain copyrightable material would remove
the service provider from § 512(c) eligibility.
Cases analyzing knowledge in the secondary copyright
infringement context also counsel against UMG’s should-
have-known approach. In Sony Corp. of America v.
Universal City Studios, Inc., 464 U.S. 417 (1984), the
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 31
Supreme Court held that there was “no precedent in the law
of copyright for the imposition of” liability based on the
theory that the defendant had “sold equipment with
constructive knowledge of the fact that their customers may
use that equipment to make unauthorized copies of
copyrighted material.” Id. at 439. So long as the product was
“capable of substantial noninfringing uses,” the Court refused
to impute knowledge of infringement. Id. at 442. Applying
Sony to the Internet context, we held in A&M Records, Inc. v.
Napster, Inc., 239 F.3d 1004 (9th Cir. 2001), that “if a
computer system operator learns of specific infringing
material available on his system and fails to purge such
material from the system, the operator knows of and
contributes to direct infringement.” Id. at 1021. But “absent
any specific information which identifies infringing activity,
a computer system operator cannot be liable for contributory
infringement merely because the structure of the system
allows for the exchange of copyrighted material.” Id.Requiring specific knowledge of particular infringing
activity makes good sense in the context of the DMCA,
which Congress enacted to foster cooperation among
copyright holders and service providers in dealing with
infringement on the Internet. See S. Rep. No. 105-190, at 20
(noting OCILLA was intended to provide “strong incentives
for service providers and copyright owners to cooperate to
detect and deal with copyright infringements”); H.R. Rep.
No. 105-551, pt. 2, at 49 (1998) (same). Copyright holders
know precisely what materials they own, and are thus better
able to efficiently identify infringing copies than service
providers like Veoh, who cannot readily ascertain what
material is copyrighted and what is not. See S. Rep. No. 105-
190, at 48; (“[A] [service] provider could not be expected,
during the course of its brief cataloguing visit, to determine
32 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
whether [a] photograph was still protected by copyright or
was in the public domain; if the photograph was still
protected by copyright, whether the use was licensed; and if
the use was not licensed, whether it was permitted under the
fair use doctrine.”); H.R. Rep. No. 105-551, pt. 2, at 57–58
(same).
These considerations are reflected in Congress’ decision
to enact a notice and takedown protocol encouraging
copyright holders to identify specific infringing material to
service providers. They are also evidenced in the
“exclusionary rule” that prohibits consideration of
substantially deficient § 512(c)(3)(A) notices for purposes of
“determining whether a service provider has actual
knowledge or is aware of facts and circumstances from which
infringing activity is apparent.” 17 U.S.C. § 512(c)(3)(B)(i);
see also H.R. Rep. No. 105-551, pt. 2, at 56 (explaining this
provision); Nimmer § 12B.04(B)(4)(c) (“[T]he copyright
owner bears the burden of demonstrating knowledge
independently of the failed notification.”). Congress’
intention is further reflected in the DMCA’s direct statement
that “[n]othing in this section shall be construed to condition
the applicability of subsections (a) through (d) on . . . a
service provider monitoring its service or affirmatively
seeking facts indicating infringing activity.” 17 U.S.C.
§ 512(m).13 Congress made a considered policy
13
W e are not persuaded by UMG’s argument that § 512(m)’s title,
“Protection of privacy,” should cause us to read the provision differently.
“Headings and titles are not meant to take the place of the detailed
provisions of the text.” Greenwood, 615 F.3d at 1212 (quoting Bhd. of
R.R. Trainmen v. Balt. & Ohio R.R., Co., 331 U.S. 519, 528–29 (1947))
(internal quotation marks and alteration omitted). Even if privacy was the
impetus for this subsection, nothing in § 512(m) suggests that this should
limit its application. As the district court noted, the statute’s text “could
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 33
determination that the “DMCA notification procedures
[would] place the burden of policing copyright infringement
– identifying the potentially infringing material and
adequately documenting infringement – squarely on the
owners of the copyright.” Perfect 10, Inc. v. CCBill LLC,
488 F.3d 1102, 1113 (9th Cir. 2007). In parsing § 512(c)(3),
we have “decline[d] to shift [that] substantial burden from the
copyright owner to the provider.” Id.
UMG asks us to change course with regard to
§ 512(c)(1)(A) by adopting a broad conception of the
knowledge requirement. We see no principled basis for doing
so. We therefore hold that merely hosting a category of
copyrightable content, such as music videos, with the general
knowledge that one’s services could be used to share
infringing material, is insufficient to meet the actual
knowledge requirement under §512(c)(1)(A)(i).
We reach the same conclusion with regard to the
§ 512(c)(1)(A)(ii) inquiry into whether a service provider is
“aware of facts or circumstances from which infringing
activity is apparent.” The district court’s conception of this
“red flag test” properly followed our analysis in CCBill,
which reiterated that the burden remains with the copyright
holder rather than the service provider. See id. at 1114. The
plaintiffs in CCBill argued that there were a number of red
flags that made it apparent infringing activity was afoot,
noting that the defendant hosted sites with names such as
“illegal.net” and “stolencelebritypics.com,” as well as
hardly be more straightforward,” UMG II, 665 F. Supp. 2d at 1113 n.17,
and “where the plain text of the statute is unambiguous, ‘the heading of a
section cannot limit the plain meaning of the text,’” Greenwood, 615 F.3d
at 1212 (quoting Bhd. of R.R. Trainmen, 331 U.S. at 528–29).
34 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
password hacking websites, which obviously infringe. See id.We disagreed that these were sufficient red flags because
“[w]e do not place the burden of determining whether
[materials] are actually illegal on a service provider,” and
“[w]e impose no such investigative duties on service
providers.” Id. For the same reasons, we hold that Veoh’s
general knowledge that it hosted copyrightable material and
that its services could be used for infringement is insufficient
to constitute a red flag.
Of course, a service provider cannot willfully bury its
head in the sand to avoid obtaining such specific knowledge.
See Viacom Int’l v. YouTube, Inc., 676 F.3d 19, 31 (2d Cir.
2012). Even viewing the evidence in the light most favorable
to UMG as we must here, however, we agree with the district
court there is no evidence that Veoh acted in such a manner.
Rather, the evidence demonstrates that Veoh promptly
removed infringing material when it became aware of specific
instances of infringement. Although the parties agree, in
retrospect, that at times there was infringing material
available on Veoh’s services, the DMCA recognizes that
service providers who do not locate and remove infringing
materials they do not specifically know of should not suffer
the loss of safe harbor protection.
2.
We are not persuaded that UMG’s other purported
evidence of Veoh’s actual or apparent knowledge of
infringement warrants trial. First, UMG points to the tagging
of videos on Veoh’s service as “music videos.” Relying on
the theory rejected above, UMG contends that this
demonstrates Veoh’s knowledge that it hosted a category of
infringing content. Relatedly, UMG argues that Veoh’s
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 35
purchase of certain search terms through the Google
AdWords program demonstrates knowledge of infringing
activity because some of the terms purchased, such as “50
Cent,” “Avril Lavigne” and “Britney Spears,” are the names
of UMG artists. However, artists are not always in exclusive
relationships with recording companies, so just because UMG
owns the copyrights for some Britney Spears songs does not
mean it owns the copyright for all Britney Spears songs.
Indeed, 50 Cent, Avril Lavigne and Britney Spears are also
affiliated with SonyBMG, which gave Veoh permission to
stream its videos by these artists. Furthermore, even if Veoh
had not had such permission, we recognize that companies
sometimes purchase search terms they believe will lead
potential customers to their websites even if the terms do not
describe goods or services the company actually provides.
For example, a sunglass company might buy the search terms
“sunscreen” or “vacation” because it believed that people
interested in such searches would often also be interested in
sunglasses. Accordingly, Veoh’s search term purchases are
insufficient to demonstrate that it knew it hosted infringing
material.
UMG also argues that Veoh’s removal of unauthorized
content identified in RIAA notices demonstrates knowledge,
even if Veoh complied with § 512(c)’s notice and takedown
procedures. According to UMG, Veoh should have taken the
initiative to use search and indexing tools to locate and
remove from its website any other content by the artists
identified in the notices. Relatedly, UMG argues that some
of the videos on Veoh that had been pulled from MTV or
other broadcast television stations bore information about the
artist, song title and record label. UMG contends that Veoh
should have used this information to find and remove
unauthorized videos. As we have explained, however, to so
36 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
require would conflict with § 512(m), § 512(c)(1)(C) and
CCBill’s refusal to “impose . . . investigative duties on
service providers.” 488 F.3d at 1114. It could also result in
removal of noninfringing content.
UMG also points to news articles discussing the
availability of copyrighted materials on Veoh. One article
reported that “several major media companies . . . say that
Veoh.com has been among the least aggressive video sharing
sites in fighting copyrighted content,” and has thus “become
a haven for pirated content.” Brad Stone, Veoh’s Vexing
Visitor Numbers, N.Y. Times Bits Blog (July 15, 2007, 9:35
AM), http://bits.blogs.nytimes.com/2007/07/15/veohs-
vexing-visitor-numbers/. Another article reported that,
Veoh Networks CEO Dmitry Shapiro
acknowledges that only a week after the
company’s official debut, Veoh.com is host to
a wide range of unauthorized and full-length
copies of popular programs. But Shapiro says
it’s not his upstart company’s fault: . . . “We
have a policy that specifically states that when
we see copyright material posted, we take it
down,” Shapiro said. “This problem is the
democratization of publishing. Anyone can
now post a video to the Internet. Sometimes
the material belongs to someone else. We
take this very seriously.”
Greg Sandoval, A new copyright battlefield: Veoh Networks,
CN E T N e ws (F eb . 2 1 , 2 0 0 7 , 4 : 0 0 AM) ,
http://news.cnet.com/A-new-copyright-battlefield-
Veoh-Networks/2100-1026_3-6160860.html. UMG elicited
deposition testimony from Shapiro that he had heard of these
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 37
articles, and was aware that, “from time to time,” “material
belonging to someone else end[ed] up on” Veoh. UMG
argues that this evidence of knowledge that, as a general
matter, unauthorized materials had been previously posted on
Veoh is sufficient to meet the § 512(c)(1)(A) requirements.
At base, this argument relies on UMG’s primary theory,
which we rejected above. Here, as well, more specific
information than UMG has adduced is required. The
DMCA’s detailed notice and takedown procedure assumes
that, “from time to time,” “material belonging to someone
else ends up” on service providers’ websites, and establishes
a process for ensuring the prompt removal of such
unauthorized material. If Veoh’s CEO’s acknowledgment of
this general problem and awareness of news reports
discussing it was enough to remove a service provider from
DMCA safe harbor eligibility, the notice and takedown
procedures would make little sense and the safe harbors
would be effectively nullified. We cannot conclude that
Congress intended such a result, and we therefore hold that
this evidence is insufficient to warrant a trial.
UMG comes closer to meeting the § 512(c)(1)(A)
requirements with its evidence of emails sent to Veoh
executives and investors by copyright holders and users
identifying infringing content. One email, sent by the CEO
of Disney, a major copyright holder, to Michael Eisner, a
Veoh investor, stated that the movie Cinderella III and
various episodes from the television show Lost were available
on Veoh without Disney’s authorization. If this notification
had come from a third party, such as a Veoh user, rather than
from a copyright holder, it might meet the red flag test
38 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
because it specified particular infringing material.14 As a
copyright holder, however, Disney is subject to the
notification requirements in § 512(c)(3), which this informal
email failed to meet. Accordingly, this deficient notice “shall
not be considered under paragraph (1)(A) in determining
whether a service provider has actual knowledge or is aware
of facts or circumstances from which infringing activity is
apparent.” 17 U.S.C. § 512(c)(3)(B)(i). Further, even if this
email could have created actual knowledge or qualified as a
red flag, Eisner’s email in response assured Disney that he
would instruct Veoh to “take it down,” and Eisner copied
Veoh’s founder to ensure this happened “right away.” UMG
nowhere alleges that the offending material was not
immediately removed, and accordingly Veoh would be saved
by § 512(c)(1)(A)(iii), which preserves the safe harbor for
service providers with such knowledge so long as they “act[]
expeditiously to remove, or disable access to, the material.”
UMG also points to an email from a Veoh user whose
video was rejected for containing infringing content. Upset
that Veoh would not post his unauthorized material, he stated
that he had seen “plenty of [other] copyright infringement
material” on the site, and identified another user who he said
posted infringing content. It is possible that this email would
be sufficient to constitute a red flag under § 512(c)(1)(A)(ii),
even though it would not qualify as sufficient notice from a
copyright holder under § 512(c)(3). But even assuming that
is so, UMG has not specifically alleged that Veoh failed to
expeditiously remove the infringing content identified by the
14
W e therefore do not consider whether Veoh’s awareness of apparent
infringement of Disney’s copyrights over movies and television shows
would affect the availability of the § 512(c) safe harbor with regard to
UMG’s claims that Veoh hosted unauthorized UMG music videos.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 39
user’s email. Accordingly, this too fails to create a genuine
issue of material fact regarding Veoh’s knowledge of
infringement.
We do not credit UMG’s contention that the district court
conflated the actual knowledge and red flag awareness tests.
A user email informing Veoh of material that appeared to the
user to be infringing and specifying its location provides a
good example of the distinction. Although the user’s
allegations would not give Veoh actual knowledge under
§ 512(c)(1)(A)(i), because Veoh would have no assurance
that a third party who does not hold the copyright in question
would know whether the material was infringing, the email
nonetheless could act as a red flag under § 512(c)(1)(A)(ii)
provided its information was sufficiently specific. As the
Second Circuit recognized:
The difference between actual and red flag
knowledge is . . . between a subjective and an
objective standard. In other words, the actual
knowledge provision turns on whether the
provider actually or “subjectively” knew of
specific infringement, while the red flag
provision turns on whether the provider was
subjectively aware of facts that would have
made the specific infringement “objectively”
obvious to a reasonable person. The red flag
provision, because it incorporates an objective
standard, is not swallowed up by the actual
knowledge provision under our construction
of the § 512(c) safe harbor. Both provisions
do independent work, and both apply only to
specific instances of infringement.
40 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Viacom Int’l v. YouTube, Inc., 676 F.3d 19, 31 (2d Cir. 2012);
cf. S. Rep. No. 105-190, at 44 (“The ‘red flag’ test has both
a subjective and an objective element. In determining
whether the service provider was aware of a ‘red flag,’ the
subjective awareness of the service provider of the facts or
circumstances in question must be determined. However, in
deciding whether those facts or circumstances constitute a
‘red flag’ – in other words, whether infringing activity would
have been apparent to a reasonable person operating under
the same or similar circumstances – an objective standard
should be used.”). In sum, we agree that there is a distinction
between actual and red flag knowledge, but UMG has not
created a genuine issue of material fact as to whether Veoh
had either kind of knowledge here.15
C.
A service provider is eligible for the § 512(c) safe harbor
only if it “does not receive a financial benefit directly
attributable to the infringing activity, in a case in which the
service provider has the right and ability to control such
activity.” 17 U.S.C. § 512(c)(1)(B). UMG appeals the
district court’s determination that Veoh did not have the
necessary right and ability to control infringing activity and
thus remained eligible for safe harbor protection. We
conclude the district court was correct, and therefore affirm.16
15
In adopting this distinction between actual and “red flag” knowledge,
we note that whether “the specific infringement” is “‘objectively’ obvious
to a reasonable person” may vary depending on the facts proven by the
copyright holder in establishing liability.
16
W e need not consider whether Veoh received “a financial benefit
directly attributable to the infringing activity.”
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 41
“Statutory interpretation begins with the language of the
statute.” Children’s Hosp. & Health Ctr. v. Belshe, 188 F.3d
1090, 1096 (9th Cir. 1999). When terms are not defined
within a statute, they are accorded their plain and ordinary
meaning, which can be deduced through reference sources
such as general usage dictionaries. See Bilski v. Kappos,
130 S. Ct. 3218, 3226 (2010). “[S]tatutory language must
always be read in its proper context,” McCarthy v. Bronson,
500 U.S. 136, 139 (1991), and “[i]n determining the meaning
of the statute, we look not only to the particular statutory
language, but to the design of the statute as a whole and to its
object and policy,” Crandon v. United States, 494 U.S. 152,
158 (1990). We must, if possible, interpret a statute such that
all its language is given effect, and none of it is rendered
superfluous. See TRW Inc. v. Andrews, 534 U.S. 19, 31
(2001).
Whether Veoh had the requisite “ability to control” the
infringing activity at issue depends on what the statute means
by that phrase, which the statute does not define. Looking
first to the dictionary, “ability” is defined as “the quality or
state of being able: physical, mental, or legal power to
perform: competence in doing”; and “able” is in turn defined
as “possessed of needed powers (as intelligence or strength)
or of needed resources (as means or influence) to accomplish
an objective . . . : constituted or situated so as to be
susceptible or readily subjected to some action or treatment.”
Webster’s Third New International Dictionary 3, 4 (2002).
“Control” is defined as having the “power or authority to
guide or manage: directing or restraining domination.” Id. at
496.
42 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
UMG argues that we should interpret § 512(c) as we did
a similar concept in the common law vicarious liability
context in Napster, 239 F.3d at 1024. The Second Circuit
recently rejected this reading, see Viacom, 676 F.3d at 36–38,
and we too are unpersuaded for several reasons. First,
§ 512(c) nowhere mentions the term “vicarious liability.”
Although it uses a set of words that has sometimes been used
to describe common law vicarious liability, the language used
in the common law standard is loose and has varied. For
example, Metro-Goldwyn-Mayer Studios Inc. v. Grokster,
Ltd., 545 U.S. 913, 930 n.9 (2005), refers to “supervis[ing]
the direct infringer” rather than “control[ing] such
[infringing] activity,” § 512(c)(1)(B), and “supervise” and
“control” are different in potentially significant ways.
“Control,” which we have noted means having the “power or
authority to guide or manage: directing or restraining
domination,” connotes more ability to command than does
“supervise,” which means “to look over, inspect, oversee.”
Webster’s Third New International Dictionary 496, 2296.
Second, § 512(c) actually presumes that service providers
have the sort of control that UMG argues satisfies the
§ 512(c)(1)(B) “right and ability to control” requirement to be
eligible for several of the safe harbors: they must “remove[]
or disable access to” infringing material when they become
aware of it. 17 U.S.C. § 512(c)(1)(A)(iii) & (C). Quoting
Napster, 239 F.3d at 1024, UMG argues that service
providers have “the right and ability to control” infringing
activity, § 512(c)(1)(B), as long as they have “the ability to
locate infringing material” and “terminate users’ access.”
Under that reading, service providers would have the “right
and ability to control” infringing activity regardless of their
becoming “aware of” the material. Under that interpretation,
the prerequisite to § 512(c) protection under
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 43
§ 512(c)(1)(A)(iii) and (C), would at the same time be a
disqualifier under § 512(c)(1)(B) where the “financial
benefit” condition is met.
We agree with Judge Matz that “Congress could not have
intended for courts to hold that a service provider loses
immunity under the safe harbor provision of the DMCA
because it engages in acts that are specifically required by the
DMCA” to obtain safe harbor protection. UMG II,
665 F. Supp. 2d at 1113 (quoting Hendrickson v. eBay, Inc.,
165 F. Supp. 2d 1082, 1093–94 (C.D. Cal. 2001)) (internal
quotation marks omitted); see also Io Grp., Inc. v. Veoh
Networks, Inc., 586 F. Supp. 2d 1132, 1151 (N.D. Cal. 2008)
(same); Lee, supra, 32 Colum. J.L. & Arts at 247 (“A[]
[service provider’s] ability to remove materials posted by
third parties does not satisfy the ‘right and ability to control’
prong, because such power is necessary for a[] [service
provider] to satisfy the basic requirement of ‘takedown’ under
the DMCA.”).17 Moreover, Napster was decided after the
17
Most courts that have confronted this question have likewise declined
to assume that Congress created this Catch-22. See, e.g., Perfect 10 v.
Cybernet Ventures, Inc., 213 F. Supp. 2d 1146, 1181 (C.D. Cal. 2002)
(“[C]losing the safe harbor based on the mere ability to exclude users from
the system is inconsistent with the statutory scheme.”); eBay, 165 F. Supp.
2d at 1093 (“[T]he ‘right and ability to control’ the infringing activity, as
the concept is used in the DMCA, cannot simply mean the ability of a
service provider to remove or block access to materials posted on its
website or stored in its system. To hold otherwise would defeat the
purpose of the DMCA and render the statute internally inconsistent.”);
CoStar Grp. Inc. v. LoopNet, Inc., 164 F. Supp. 2d 688, 702 (D. Md.
2001) (“It would be inconsistent . . . if in order to get into the safe harbor,
the provider needed to lack the control to remove or block access.”), aff’d,
373 F.3d 544 (4th Cir. 2004); see also Lee, supra, 32 Colum. J.L. & Arts
at 239, 247–48 & nn.59–65 (noting that “most courts have interpreted the
‘right and ability to control such activity’ portion of Section 512(c)(1)(B),
44 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
DMCA was enacted, so Congress could not have intended to
codify Napster’s precise application upon which UMG relies.
Third, although not definitive, the legislative history
informs our conclusion that Congress did not intend to
exclude from § 512(c)’s safe harbor all service providers who
would be vicariously liable for their users’ infringing activity
under the common law. The legislative history did, at one
point, suggest an intention to codify the “right and ability to
control” element of vicarious infringement, and
§ 512(c)(1)(B) was not modified following that report.18 That
report, however, referred to a version of the bill different
from the one ultimately passed, and the discussion of
vicarious liability is omitted from all later reports and,
notably, from the statutory language. See H.R. Rep. No.
105-551, pt. 2, at 54; S. Rep. No. 105-190, at 44-45; H.R.
Conf. Rep. No. 105-796, at 64 (1998), reprinted in
1998 U.S.C.C.A.N. 639, 649.
Subsequent legislative statements help clarify Congress’
intent. First, Congress explicitly stated in three different
reports that the DMCA was intended to “protect qualifying
service providers from liability for all monetary relief for
direct, vicarious and contributory infringement.” H.R. Conf.
Rep. No. 105-796, at 64, 1998 U.S.C.C.A.N. at 649
(emphasis added); S. Rep. No. 105-190, at 20, 40; H.R. Rep.
as being narrower than the analogous standard under vicarious liability,”
and collecting cases).
18
“The financial benefit standard in subparagraph (B) is intended to
codify and clarify the direct financial benefit element of vicarious liability
. . . . The ‘right and ability to control’ language in Subparagraph (B)
codifies the second element of vicarious liability.” H.R. Rep. No. 105-
551, pt. 1, at 25–26.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 45
No. 105-551, pt. 2, at 50. Under UMG’s interpretation,
however, every service provider subject to vicarious liability
would be automatically excluded from safe harbor protection.
Second, Congress made clear that it intended to provide safe
harbor protection not by altering the common law vicarious
liability standards, but rather by carving out permanent safe
harbors to that liability for Internet service providers even
while the common law standards continue to evolve. See S.
Rep. No. 105-190, at 19 (“There have been several cases
relevant to service provider liability for copyright
infringement. Most have approached the issue from the
standpoint of contributory and vicarious liability. Rather than
embarking upon a wholesale clarification of these doctrines,
the Committee decided to leave current law in its evolving
state and, instead, to create a series of ‘safe harbors,’ for
certain common activities of service providers. A service
provider which qualifies for a safe harbor, receives the benefit
of limited liability.” (footnote omitted)).19
Given Congress’ explicit intention to protect qualifying
service providers who would otherwise be subject to
vicarious liability, it would be puzzling for Congress to make
§ 512(c) entirely coextensive with the vicarious liability
requirements, which would effectively exclude all vicarious
liability claims from the § 512(c) safe harbor. See, e.g., Lee,
supra, 32 Colum. J.L. & Arts at 236–37 (acknowledging that
interpreting the DMCA to exclude service providers subject
to vicarious liability would “undo the benefits of the safe
harbors altogether” (quoting Mark A. Lemley, Rationalizing
19
W e do not mean to suggest that there is no overlap between the facts
that give rise to contributory or vicarious liability and those pertinent to
determining whether one or more of the DMCA safe harbors are available.
In many instances, the overlap will be substantial.
46 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Internet Safe Harbors, 6 J. Telecomm. & High Tech. L. 101,
104 (2007)) (internal quotation marks omitted)). In addition,
it is difficult to envision, from a policy perspective, why
Congress would have chosen to exclude vicarious
infringement from the safe harbors, but retain protection for
contributory infringement. It is not apparent why the former
might be seen as somehow worse than the latter. See id. at
243–44.
Furthermore, if Congress had intended that the
§ 512(c)(1)(B) “right and ability to control” requirement be
coextensive with vicarious liability law, the statute could
have accomplished that result in a more direct manner.
It is conceivable that Congress [would have]
intended that [service providers] which
receive a financial benefit directly attributable
to the infringing activity would not, under any
circumstances, be able to qualify for the
subsection (c) safe harbor. But if that was
indeed their intention, it would have been far
simpler and much more straightforward to
simply say as much. The Court does not
accept that Congress would express its desire
to do so by creating a confusing,
self-contradictory catch-22 situation that pits
512(c)(1)(B) and 512(c)(1)(C) directly at odds
with one another, particularly when there is a
much simpler explanation: the DMCA
requires more than the mere ability to delete
and block access to infringing material after
that material has been posted in order for the
[service provider] to be said to have “the right
and ability to control such activity.”
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 47
Ellison v. Robertson, 189 F. Supp. 2d 1051, 1061 (C.D. Cal.
2002), aff’d in part and rev’d in part on different grounds,
357 F.3d 1072 (9th Cir. 2004). Indeed, in the anti-
circumvention provision in Title I of the DMCA, which was
enacted at the same time as the § 512 safe harbors, Congress
explicitly stated, “Nothing in this section shall enlarge or
diminish vicarious or contributory liability for copyright
infringement in connection with any technology, product,
service, device, component, or part thereof.” 17 U.S.C.
§ 1201(c)(2). “If Congress had intended to exclude vicarious
liability from the DMCA [Title II] safe harbors, it would have
done so expressly as it did in Title I of the DMCA.” Lee,
supra, 32 Colum. J.L. & Arts at 242.
Our reading of § 512(c)(1)(B) is further informed and
reinforced by our concern that the statute would be internally
inconsistent in other respects were we to interpret the “right
and ability to control” language as UMG urges. First,
§ 512(m) cuts against holding that Veoh’s general
knowledge that infringing material could be uploaded to its
site triggered an obligation to “police” its services to the
“fullest extent” possible. As we have explained, § 512(m)
provides that § 512(c)’s safe harbor protection may not be
conditioned on “a service provider monitoring its service or
affirmatively seeking facts indicating infringing activity.”
UMG’s reading of the “right and ability to control” language
would similarly run afoul of CCBill, 488 F.3d at 1113–14,
which likewise clarified that § 512(c) “impose[s] no such
investigative duties on service providers,” and “place[s] the
burden of policing copyright infringement . . . squarely on the
owners of the copyright.” CCBill did not suggest that
Congress meant this limitation on the duty to monitor to
apply only to service providers who do not receive a direct
financial benefit under subsection (B).
48 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
In light of the DMCA’s language, structure, purpose and
legislative history, we are compelled to reject UMG’s
argument that the district court should have employed
Napster’s vicarious liability standard to evaluate whether
Veoh had sufficient “right and ability to control” infringing
activity under § 512(c). Although in some cases service
providers subject to vicarious liability will be excluded from
the § 512(c) safe harbor, in others they will not. As we are
unpersuaded by UMG’s argument, we conclude instead that
whereas the vicarious liability standard applied in Napster
can be met by merely having the general ability to locate
infringing material and terminate users’ access, § 512(c)
requires “something more,” Cybernet Ventures, 213 F. Supp.
2d at 1181 (internal quotation marks omitted); see Napster,
239 F.3d at 1024.
The Second Circuit recently considered what constitutes
“something more.” See Viacom, 676 F.3d at 38. First, the
court observed:
To date, only one court has found that a
service provider had the right and ability to
control infringing act i vi t y under
§ 512(c)(1)(B). In Perfect 10, Inc. v.
Cybernet Ventures, Inc., the court found
control where the service provider instituted a
monitoring program by which user websites
received ‘detailed instructions regard[ing]
issues of layout, appearance, and content.’
The service provider also forbade certain
types of content and refused access to users
who failed to comply with its instructions.”
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 49
Id. (footnote and citations omitted). The Second Circuit also
suggested that “inducement of copyright infringement under
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., which
‘premises liability on purposeful, culpable expression and
conduct,’ might also rise to the level of control under
§ 512(c)(1)(B).” Id. (citations omitted). Finally, the court
noted that “[o]ther courts have suggested that control may
exist where the service provider is ‘actively involved in the
listing, bidding, sale and delivery’ of items offered for sale,
Hendrickson v. eBay, Inc., . . . or otherwise controls vendor
sales by previewing products prior to their listing, editing
product descriptions, or suggesting prices, Corbis Corp. [v.
Amazon.com, Inc.].” Id. at 38 n.13. After offering this
guidance, the Second Circuit “remand[ed] to the District
Court to consider in the first instance whether the plaintiffs
ha[d] adduced sufficient evidence to allow a reasonable jury
to conclude that YouTube had the right and ability to control
the infringing activity and received a financial benefit directly
attributable to that activity.” Id. at 38.
We agree with the Second Circuit and hold that, in order
to have the “right and ability to control,” the service provider
must “exert[] substantial influence on the activities of users.”
Id. “Substantial influence” may include, as the Second
Circuit suggested, high levels of control over activities of
users, as in Cybernet. Or it may include purposeful conduct,
as in Grokster. In this case, Veoh’s interactions with and
conduct toward its users did not rise to such a level. As Judge
Matz recognized, “(a) the allegedly infringing material
resided on Veoh’s system; (b) Veoh had the ability to remove
such material; (c) Veoh could have implemented, and did
implement, filtering systems; and (d) Veoh could have
searched for potentially infringing content.” UMG II, 665 F.
Supp. 2d at 1112. Such circumstances are not equivalent to
50 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
the activities found to constitute substantial influence in
Cybernet and Grokster. Nor has UMG, in its initial or
supplemental briefing to this court, pointed to other evidence
raising a genuine issue of material fact as to whether Veoh’s
activities involved “something more than the ability to
remove or block access to materials posted on a service
provider’s website.” Viacom, 676 F.3d at 38 (quoting Capital
Records, Inc. v. MP3tunes, LLC, 821 F. Supp. 2d 627, 635
(S.D.N.Y. Oct. 25, 2011)); cf. Obodai v. Demand Media, Inc.,
No. 11 Civ. 2503(PKC), 2012 WL 2189740 (S.D.N.Y. June
13, 2012) (citing the Viacom examples and holding, “No
evidence supports a conclusion that the defendant exerted
such close control over content posted to [the website]. . . .
Based on the evidence at summary judgment, no reasonable
jury could conclude that the defendant exercised control over
user submissions sufficient to remove it from the safe harbor
provision of section 512(c)(1)(B).”). Accordingly, because
UMG has not created a triable issue regarding Veoh’s right
and ability to control infringing activity, we conclude that
Veoh met all the § 512(c) requirements, and we affirm the
entry of summary judgment in its favor.
III.
UMG also appeals the district court’s Rule 12(b)(6)
dismissal of its complaint against the Investor Defendants for
vicarious infringement, contributory infringement and
inducement of infringement. It is well-established that
“[s]econdary liability for copyright infringement does not
exist in the absence of direct infringement . . . .” Napster,
239 F.3d at 1013 n.2. UMG argues, however, that even if
summary judgment was properly granted to Veoh on the basis
of the DMCA safe harbor, as we have held it was, “the
[Investor] Defendants remain potentially liable for their
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 51
related indirect infringement” because the district court did
not “make a finding regarding Veoh’s direct infringement,”
and the Investor Defendants do not qualify as “service
providers” who can receive DMCA safe harbor protection.
The Investor Defendants argue that it would be illogical to
impose greater liability on them than on Veoh itself.
Although we agree that this would create an anomalous
result, we assume without deciding that the suit against the
Investor Defendants can properly proceed even though Veoh
is protected from monetary liability by the DMCA.20
20
In Perfect 10, Inc. v. Visa International Service Ass’n, 494 F.3d 788(9th Cir. 2007), we commented on a similar circumstance. There, the
plaintiff sought secondary liability against a credit card company that had
processed payments for websites that posted infringing materials. Visa
observed that,
The result, under Perfect 10’s theories, would therefore
be that a service provider with actual knowledge of
infringement and the actual ability to remove the
infringing material, but which has not received a
statutorily compliant notice, is entitled to a safe harbor
from liability, while credit card companies with actual
knowledge but without the actual ability to remove
infringing material, would benefit from no safe harbor.
W e recognize that the DMCA was not intended to
displace the development of secondary liability in the
courts; rather, we simply take note of the anomalous
result Perfect 10 seeks.
Id. at 795 n.4. W e remain concerned about the possibility of imposing
secondary liability on tangentially involved parties, like Visa and the
Investor Defendants, while those accused of direct infringement receive
safe harbor protection. “[B]y limiting the liability of service providers,”
the DMCA sought to assuage any “hesitat[ion] to make the necessary
investment in the expansion of the speed and capacity of the Internet.”
S. Rep. No. 105-190, at 8. Congress was no doubt well aware that service
providers can make the desired investment only if they receive funding
52 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Reaching the merits of UMG’s secondary liability arguments,
we hold that the district court properly dismissed the
complaint.
UMG first alleges that the Investor Defendants are liable
for contributory infringement. “[O]ne who, with knowledge
of the infringing activity, induces, causes or materially
contributes to the infringing conduct of another, may be held
liable as a ‘contributory’ infringer.” Fonovisa, Inc. v. Cherry
Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996) (quoting
Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc.,
443 F.2d 1159, 1162 (2d Cir. 1971)) (alteration in original)
(internal quotation marks omitted); see also Grokster,
545 U.S. at 930 (“One infringes contributorily by
intentionally inducing or encouraging direct infringement.”).
In Fonovisa, 76 F.3d at 264, we established the “site and
facilities” test: “providing the site and facilities for known
infringing activity is sufficient to establish contributory
liability” where the defendant “actively strives to provide the
environment and the market for counterfeit . . . sales to
thrive.” The district court concluded this test was not met,
dismissing the complaint because UMG did “not allege
sufficiently that [the Investor Defendants] gave material
assistance in helping Veoh or its users accomplish
infringement.” We agree.
UMG acknowledges that funding alone cannot satisfy the
material assistance requirement. It thus argues that the
from investors like the Investor Defendants. Although we do not decide
the matter today, were we to hold that Veoh was protected, but its
investors were not, investors might hesitate to provide the necessary
funding to companies like V eoh, and Congress’ purpose in passing the
DMCA would be undermined.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 53
Investor Defendants “provided Veoh’s necessary funding and
directed its spending” on “basic operations including . . .
hardware, software, and employees” – “elements” UMG
argues “form ‘the site and facilities’ for Veoh’s direct
infringement.” UMG thus attempts to liken its case to UMG
Recordings, Inc. v. Bertelsmann AG et al., 222 F.R.D. 408(N.D. Cal. 2004), where the district court denied an investor’s
motion to dismiss claims of contributory infringement. In
Bertelsmann, however, the investor was Napster’s “only
available source of funding,” and thus “held significant power
and control over Napster’s operations.” Id. at 412. Here, by
contrast, there were multiple investors, and none of the
Investor Defendants could individually control Veoh.
Accordingly, UMG hinges its novel theory of secondary
liability on the contention that the three Investor Defendants
together took control of Veoh’s operations by “obtain[ing]
three of the five seats on Veoh’s Board of Directors,” and
effectively provided the “site and facilities” for direct
infringement by wielding their majority power to direct
spending.
Even assuming that such joint control, not typically an
element of contributory infringement, could satisfy
Fonovisa’s site and facilities requirement, UMG’s argument
fails on its own terms, because the complaint nowhere alleged
that the Investor Defendants agreed to work in concert to this
end. UMG suggests that it “did allege that the [Investor]
Defendants agreed to ‘operate’ Veoh jointly – UMG alleged
that the [Investor] Defendants operated Veoh by ‘s[eeking]
and obtain[ing] seats on Veoh’s Board of Directors as a
condition of their investments.’” But three investors
individually acquiring one seat apiece is not the same as
agreeing to operate as a unified entity to obtain and leverage
majority control. Unless the three independent investors were
54 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
on some level working in concert, then none of them actually
had sufficient control over the Board to direct Veoh in the
way UMG contends. This missing allegation is critical
because finding secondary liability without it would allow
plaintiffs to sue any collection of directors making up 51
percent of the board on the theory that they constitute a
majority, and therefore together they control the company.
Without this lynchpin allegation, UMG’s claim that the
Investor Defendants had sufficient control over Veoh to direct
its spending and operations in a manner that might
theoretically satisfy the “site and facilities” test falls apart.
We therefore affirm the dismissal of UMG’s contributory
infringement claim.
This missing allegation likewise requires us to affirm the
district court’s dismissal of UMG’s vicarious liability and
inducement of infringement claims. Inducement liability is
proper where “one [] distributes a device with the object of
promoting its use to infringe copyright, as shown by clear
expression or other affirmative steps taken to foster
infringement.” Grokster, 545 U.S. at 936–37. Vicarious
liability is warranted if “the defendant profits directly from
the infringement and has a right and ability to supervise the
direct infringer.” Grokster, 545 U.S. at 930 n.9; see also
Visa, 494 F.3d at 802. UMG’s arguments that the Investor
Defendants “distribute[d]” Veoh’s services and had the right
and ability to supervise the infringing users are premised on
the unalleged contention that the Investor Defendants agreed
to act in concert, and thus together they held a majority of
seats on the Board and “maintained operational control over
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 55
the company.” We therefore affirm the dismissal of the
complaint against the Investor Defendants.21
IV.
Veoh appeals the district court’s refusal to grant it costs
and attorney’s fees under Federal Rule of Civil Procedure 68.
“Under Rule 68, if a plaintiff rejects a defendant’s offer of
judgment, and the judgment finally obtained by plaintiff is
not more favorable than the offer, the plaintiff must pay the
costs incurred subsequent to the offer.” United States v.
Trident Seafoods Corp., 92 F.3d 855, 859 (9th Cir. 1996).22
“Rule 68 is designed to ‘require plaintiffs to think very hard
about whether continued litigation is worthwhile,’” and
compensate defendants for costs they ought not have had to
incur. Champion Produce, Inc. v. Ruby Robinson Co.,
342 F.3d 1016, 1032 (9th Cir. 2003) (quoting Marek v.
Chesny, 473 U.S. 1, 11 (1985)). In October 2008, Veoh
offered UMG $100,000 to settle this lawsuit, pursuant to the
procedures set forth in Rule 68. UMG declined the offer and
ultimately failed to win any monetary relief. After the district
court ruled that Veoh was entitled to § 512(c) protection, the
21
Although the district court did not reach the right and ability to
supervise prong in its vicarious liability analysis, resting instead on its
determination that the Investor Defendants did not profit directly from the
infringement, we may affirm a district court’s dismissal for failure to state
a claim “on any basis fairly supported by the record.” Corrie v.
Caterpillar, Inc., 503 F.3d 974, 979 (9th Cir. 2007).
22
Rule 68 provides, in relevant part: “[A] party defending against a
claim may serve upon an opposing party an offer to allow judgment on
specified terms, with costs then accrued. . . . If the judgment that the
offeree finally obtains is not more favorable than the unaccepted offer, the
offeree must pay the costs incurred after the offer was made.” Fed. R.
Civ. P. 68 (emphasis added).
56 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
parties requested the entry of judgment and stipulated that
Veoh “agree[d] to continue to disable access to the Allegedly
Infringing Video Files and to continue to use hash filtering to
prevent [infringing] video files . . . from being accessed by
users,” and UMG “agree[d] that, even if it were to prevail on
its remaining claims against Veoh . . . , it is entitled to no
further relief.”
Veoh contends that it was entitled to receive Rule 68 costs
incurred from the time of its October 2008 settlement offer.
It argues these costs should include attorney’s fees because
Marek, 473 U.S. at 9, held that, “where the underlying statute
defines ‘costs’ to include attorney’s fees, . . . such fees are to
be included as costs for purposes of Rule 68,” and the
Copyright Act, 17 U.S.C. § 505, provides that a court “may
. . . award a reasonable attorney’s fee to the prevailing party
as part of the costs.” Relying on Trident, the district court
declined to grant attorney’s fees under Rule 68 because it had
previously determined that fees were not “properly
awardable” under § 505.23 Veoh has not challenged the
district court’s decision with regard to § 505, but argues on
appeal that under Rule 68 an award of costs, including fees,
was mandatory. We agree with the district court that, because
it found that attorney’s fees were not “properly awardable”
under § 505 in this case, fees could not be awarded under
Rule 68. We remand to the district court to separately
23
The court declined to exercise its discretion to grant fees under § 505
despite its conclusion that Veoh was “the prevailing party on the core
issue in the litigation” because it found that, under the factors described
in Fogerty v. Fantasy, Inc., 510 U.S. 517, 533 & 534 n.19 (1994), UMG’s
legal challenge was not “improper, in bad faith, or contrary to the
purposes of the Copyright Act,” and the manner in which it pursued its
claims was not objectively unreasonable.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 57
analyze whether Rule 68 costs, excluding attorney’s fees, are
warranted.
A.
In Marek, the Supreme Court held that “the term ‘costs’
in Rule 68 was intended to refer to all costs properly
awardable under the relevant substantive statute.” 473 U.S.
at 9 (emphasis added). We have interpreted this to mean that
attorney’s fees may be awarded as Rule 68 costs only if those
fees would have been properly awarded under the relevant
substantive statute in that particular case. In Trident, 92 F.3d
at 860, for example, the issue was the interplay between the
Clean Air Act (CAA) and Rule 68. Under the CAA, fees may
only be awarded if the action was “unreasonable.” See id.24
Trident held that “[t]he only interpretation that gives meaning
to every word in both Rule 68 and the [CAA] is that ‘costs’
in Rule 68 include attorneys’ fees only if the action was
unreasonable.” Id. The fact that fees could have been
awarded under the CAA, had its requirements been met, was
insufficient to make them “properly awardable” within the
meaning of Marek when the district court decided not to grant
them in that case. See id.We confronted the same issue with regard to a different
substantive statute in Champion. There, we considered
whether Rule 68 “costs” included attorney’s fees where Idaho
24
W hen determining whether to award fees under the Copyright Act, we
consider “(1) the degree of success obtained; (2) frivolousness; (3)
motivation; (4) the objective unreasonableness of the losing party’s factual
and legal arguments; and (5) the need, in particular circumstances, to
advance considerations of compensation and deterrence.” Love v.
Associated Newspapers, Ltd., 611 F.3d 601, 614–15 (9th Cir. 2010) (citing
Fogerty, 510 U.S. at 534 n.19).
58 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
Code § 12-120(3) permitted the award of fees to a “prevailing
party,” and the district court expressly held that the defendant
had not prevailed within the meaning of that section. See
Champion, 342 F.3d at 1031. Relying on Trident, we held
that “Rule 68 is not intended to expand the bases for a party’s
recovery of attorneys’ fees,” id. at 1029, and thus,
[j]ust as attorneys’ fees are not “properly
awardable” to a defendant in a Clean Air Act
case unless “the court finds that such action
was unreasonable,” Trident, 92 F.3d at 860,
attorneys’ fees are not “properly awardable”
to a defendant in a case where the relevant
statute awards attorneys’ fees to a prevailing
party unless the defendant is a prevailing
party within the meaning of that statute.
Id. at 1031 (citing Payne v. Milwaukee Cnty., 288 F.3d 1021,
1026 (7th Cir. 2002) (“Briefly put, ‘costs’ cannot encompass
more than the rules or other relevant statutes authorize.”)).
Although we have not yet confronted this question in a
Copyright Act case, Trident and Champion make clear that in
this context as well, because the district court determined that
attorney’s fees were not “properly awardable” to Veoh under
§ 505, they were not awardable under Rule 68 either.25
25
Veoh argues that we should not follow Trident because it “misapplied
the Supreme Court’s approach in Marek,” and urges us instead to follow
the Eleventh Circuit’s contrary approach in Jordan v. Time, Inc., 111 F.3d
102, 105 (11th Cir. 1997). W e disagree. In Champion, 342 F.3d at1029–31, we reaffirmed Trident’s application of Marek and explicitly
rejected the Eleventh Circuit’s approach in Jordan.
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 59
B.
Even though Veoh is not entitled to attorney’s fees under
Rule 68, it may be entitled to its other costs. See, e.g.,
Champion, 342 F.3d at 1028 (holding that even though
attorney’s fees were not properly awardable under Rule 68,
costs (excluding fees) were mandatory). The district court,
however, did not analyze whether costs apart from fees were
warranted. Veoh has already been awarded some of its costs
under Federal Rule of Civil Procedure 54(d), but it argues on
appeal that it is entitled to all of its post-settlement offer costs
under Rule 68. This may be true, if certain conditions are
met. First, costs are awardable under Rule 68 where “the
judgment that the offeree finally obtains is not more favorable
than the unaccepted offer.” Fed. R. Civ. P. 68(d). Veoh
argues that “[b]ecause Veoh was already taking the measures
set forth in the [stipulated] injunction, and UMG was
primarily seeking monetary damages, the value of that
stipulation was less than Veoh’s Rule 68 Offer.” Although
this may prove true, the value of the stipulated injunction is
not clear on this record.
Second, Veoh can recover Rule 68 costs only if it is not
a prevailing defendant. In Delta Air Lines, Inc. v. August,
450 U.S. 346, 352 (1981), the Supreme Court held that Rule
68 “applies only to offers made by the defendant and only to
judgments obtained by the plaintiff,” and “therefore is simply
inapplicable [where] it was the defendant that obtained the
judgment.” See also Goldberg v. Pac. Indem. Co., 627 F.3d
752, 755 (9th Cir. 2010) (“Rule 68 does not allow a defendant
to recover costs when judgment is entered in the defendant’s
favor.”). The Court observed that holding otherwise would
create an odd system in which “any settlement offer, no
matter how small, would apparently trigger the operation of
60 UMG RECORDINGS V . SHELTER CAPITAL PARTNERS
the Rule,” and “[t]hus any defendant, by performing the
meaningless act of making a nominal settlement offer, could
eliminate the trial judge’s discretion under Rule 54(d).”
Delta, 450 U.S. at 353. Delta rejected such an understanding
of Rule 68:
We cannot reasonably conclude that the
drafters of the Federal Rules intended on the
one hand affirmatively to grant the district
judge discretion to deny costs to the
prevailing party under Rule 54(d) and then on
the other hand to give defendants – and only
defendants – the power to take away that
discretion by performing a token act.
Id.; see also MRO Commc’ns, Inc. v. Am. Tel. & Tel. Co.,
197 F.3d 1276, 1280 (9th Cir. 1999) (“Where a defendant
prevails after making an offer of judgment, ‘the trial judge
retains his Rule 54(d) discretion.’” (quoting Delta, 450 U.S.
at 354)).
Veoh argues that Delta does not apply because UMG
“actually obtained certain relief” in the form of the parties’
stipulation that Veoh would continue removing infringing
content discovered by its hash filtering system, and thus
UMG rather than Veoh “obtained the judgment.” Delta,
450 U.S. at 352. Although the district court determined that
Veoh was “the prevailing party on the core issue in the
litigation” for § 505 purposes, it did not clarify whether it
also concluded that Veoh was a prevailing defendant under
Delta for Rule 68 purposes. We therefore remand to the
district court to consider in the first instance whether Veoh is
eligible to receive Rule 68 costs under Delta, and, if so,
whether “the judgment that the offeree finally obtain[ed]
UMG RECORDINGS V . SHELTER CAPITAL PARTNERS 61
[wa]s not more favorable than the unaccepted offer.” Fed. R.
Civ. P. 68(d). If both conditions are met, then the district
court should determine what remaining costs are due to Veoh.
CONCLUSION
We affirm the district court’s determination on summary
judgment that Veoh is entitled to § 512(c) safe harbor
protection, and its dismissal of the claims of secondary
liability against the Investor Defendants. We also affirm its
determination that, in this case, attorney’s fees may not be
awarded under Rule 68. We remand for the district court to
consider in the first instance whether Veoh is entitled to Rule
68 costs excluding attorney’s fees.
The parties shall bear their own costs on appeal.
The motions of the Recording Industry Association of
America et al., the Electronic Frontier Foundation et al., and
eBay Inc. et al., for leave to file amicus curiae briefs are
granted, and the briefs are ordered filed.
AFFIRMED in part and REMANDED in part.