Many are awaiting the outcome of a US case between the Premier League and YouTube for confirmation as to whether UK companies need to register their copyright with the US Copyright Office or risk not being able to claim statutory damages in any future litigation. Samantha Rice dissects the case.
Topic: Intellectual property
Who: The English Premier League and YouTube
When: 3 July 2009
Where: United States, New York
Law stated as at: 27 July 2009
What happened:
A US District Judge has dismissed part of a copyright infringement claim brought by the English Premier League against YouTube and its parent company Google Inc, because the English Premier Leage had failed to register its copyright.
The Premier League filed its class action under the Copyright Act 1976 back in May 2007 along with music producer Bourne Ltd and other interested parties. Their claim alleges that by failing to prevent copyright protected television broadcasts, sound broadcastings and musical compositions from being uploaded to and viewed on the YouTube website, YouTube and Google are responsible for a "deliberate strategy of engaging in, permitting, and facilitating massive copyright infringement". The claim alleges that YouTube has refrained from implementing readily available technical measures to prevent infringement because the valuable copyright material, namely football matches from the English Premiership, has increased traffic to the YouTube website thus increasing the website's advertising revenue. The Premier League complained that YouTube actively searches for and removes potentially offensive material from its website but fails to offer the same protection for copyright works.
Amongst other remedies, the class action seeks an injunction, the use of technical measures to prevent infringement, the 'disgorgement' of any illegal profits as well as statutory and punitive damages. The opinion and order of Judge Stanton of the US District Court of the Southern District of New York dated 3 July 2009 concerns the availability of both statutory and punitive damages to the plaintiffs should they succeed at trial.
The availability of punitive damages
Judge Stanton swiftly dismissed the plaintiffs' request for punitive damages and referred to his own ruling last year in Viacom v YouTube. The ongoing Viacom case is based upon similar facts to the present case and has previously found that a plaintiff cannot be awarded punitive damages for copyright infringement as the Copyright Act 1976 makes no provision for this remedy.
The availability of statutory damages
Judge Stanton's opinion states that statutory damages under the Copyright Act of up $150,000 per infringement are not available as a remedy unless the copyright has been registered with the US Copyright Office. Despite the Premier League's submissions, the Judge held that there was no exemption in the legislation for non US works and that Section 412 of the Copyright Act prohibits recovery of statutory damages for any work unless it was registered before the infringing act or within three months after the work’s first publication.
Judge Stanton also dismissed the Premier League's contention that the US legislation could not be interpreted inconsistently with the Berne Convention and TRIPS Agreement which state that copyright protection should not be conditional upon registration requirements. The Judge held that the provisions of these agreements will not bind the US where they contradict the clear intention of Congress in US copyright legislation.
Live broadcast exemption
The requirement to register copyright works in order to claim statutory damages does not apply where the copyright in question is a live broadcast. In the present case this is a significant exemption as a vast amount of the infringing material complained of consists of recordings from live football match broadcasts. YouTube and Google will seek to rely on the safe harbour provisions of the Digital Millennium Copyright Act ("DCMA") which provides that websites are not liable for their users' copyright infringement if the websites follow set procedures for removing infringing material upon the receipt of a notice of infringement. The copyright owner must have served an advance notice of potential infringement with supporting information on the potential infringer at least 48 hours before the live broadcast. The Premier League claims it has served up to 340 such Advance Notices to YouTube.
Why this matters:
If the ruling of Judge Stanton is upheld at trial then its consequence is to impose a substantial burden on companies to register their copyright with the US Copyright Office or risk not being able to claim statutory damages in any future litigation.
Although in the present case the Premier League can rely on the live broadcast exemption to claim statutory damages, the ruling is bad news for other non US copyright owners who cannot use this exemption and may be unaware of this somewhat draconian requirement to register their copyright.
