NY District Court Orders Google to Provide Viacom with Vital Data of Google's YouTube Users in $1 Billion Infringement Suit

Holding:

In a ruling on a motion to compel production of evidence as part of Plaintiff Viacom, Inc. and Future Association Premier League Limited 's ("Viacom") $1 billion copyright infringement lawsuit against Defendants YouTube, Inc., YouTube, LLC, and Google, Inc., which owns and operates the video-sharing website known as “YouTube.com” ("Google"), the U.S. District Court for the Southern District of New York required Google to provide the viewing log of YouTube.com, a website owned by Google. The viewing log will be used by Viacom to demonstrate instances of copyright infringement on YouTube.com. In an effort to stop this disclosure, Defendant argued that the data should not be revealed because of YouTube users’ privacy concerns. The District Court rejected this argument, stating that Defendants did not show precedent barring such disclosure in civil discovery proceedings, and that their users' privacy concerns were merely speculative. Therefore, the District Court granted Plaintiffs’ motion to compel production of 12 terabytes of data containing the unique login ID of each viewer, the time he began watching, the Internet Protocol, or IP, address of the user's computer and the identification of the video.

Detailed Summary:

Viacom owns the copyrights in specified television programs, motion pictures, music recordings, and other entertainment programs.  In the underlying lawsuit, Viacom allege s violations of the Copyright Act of 1976 (17 U.S.C. § 101 et seq.) by Google.  Because YouTube.com users contribute pirated copyrighted works to YouTube.com by the thousands, including those owned by Plaintiffs, the videos delivered   by YouTube.com include a vast unauthorized collection of Plaintiffs’ copyrighted audiovisual works. Opinion, pp. 1-2, citing Viacom’s First Amended Complaint, paragraphs 30-31.  In the underlying lawsuit, Viacom allege s that th e pirated copyrighted work were infringements which YouTube and Google induced and for which they were directly, vicariously or contributorily liable, and subject to pay damages of at least $1 billion.  Among other defenses, Google claims the protection afforded by the Digital Millennium Copyright Act of 1998 (“DMCA”) (17 U.S.C. §§ 512(c)-(d), (i)-(j)), which bars copyright infringement awards against online service providers like them.

Viacom brought a motion to compel Google to produce several items of electronically stored information and documents .  First, Viacom sought production of the computer source code which controls both the YouTube.com search function and Google’s internet search tool “Google.com”.  YouTube and Google cross-moved for a protective order barring disclosure of that search code, which they contend is responsible for Google’s growth “from its founding in 1998 to a multi-national presence with more than 16,000 employees and a market valuation of roughly $150 billion” (Id., p. 4, citing Engineer Amitabh Singhal Decl., paragraphs 3, 11), and cannot be disclosed without risking the loss of the business. The District Court ruled that Google should not be made to place this vital asset in hazard and denied Viacom’s motion to compel production of the source code.

Viacom also moved to compel production of another undisputed trade secret, the computer source code for the newly invented “Video ID” program. Using that program, copyright owners may furnish YouTube with video reference samples, which YouTube will use to search for and locate video clips in its library which have characteristics sufficiently matching those of the samples as to suggest infringement. Viacom asserted that it needed production of the Video ID source code to demonstrate what defendants “could be doing -  but are not -  to control infringement” with the Video ID program. Id., p. 8, citing Pls.’ Reply 6. The District Court rejected this argument.  According to the District Code, if there is a way to write a program that can identify and thus control infringing videos, Viacom is free to demonstrate it, with or without reference to the way the Video ID program works. But the question is what infringement detection operations are possible, not how the Video ID source code makes it operate as it does. The District Court considered the notion that examination of the source code might suggest how to make a better method of infringement detection   speculative. Therefore, the District Court denied Viacom’s motion to compel production of the Video ID code.

However, the District Court ruled differently with respect to video-related data from Google’s logging database. YouTube.com’s “Logging” database contains, for each instance a video is watched, the unique “login ID” of the user who watched it, the time when the user started to watch the video, the internet protocol address other devices connected to the internet use to identify the user’s computer (“IP address”), and the identifier for the video. Id., p. 11, citing Do Sept. 12, 2007 Dep. 154:8-21 (Kohlmann Decl. Ex. B); Do Decl. paragraph 16. That database (which is stored on live computer hard drives) is the only existing record of how often each video has been viewed during various time periods.  Viacom sought all data from the Logging database concerning each time a YouTube video has been viewed on the YouTube.com website or through embedding on a third-party website. Id., p. 12, citing Pls.’ Mot. 19.  Viacom asserted it needed the data to compare the attractiveness of allegedly infringing videos with that of non-infringing videos because a markedly higher proportion of infringing-video watching may bear on plaintiffs’ vicarious liability claim (Id., citing Fonovisa, Inc. v. Cherry Action, Inc., 76 F.3d 259, 263 (9th Cir. 1996), and defendants’ substantial non-infringing use defense. (Id., citing Sony Corp. of America v. Universal Studios, Inc., 464 U.S. 417, 442 (1983)).

Google argued that the data should not be disclosed because of users’ privacy concerns but did not refute Viacom’s contention that the “login ID is an anonymous pseudonym that users create for themselves when they sign up with YouTube” which ,  without more,  “cannot identify specific Individuals.” Id., p. 12, citing Pls.’ Reply 44.  Even Google itself admitted such anonymity. Id., p. 14, citing Google Software Engineer Alma Whitten, Are IP addresses personal? GOOGLE PUBLIC POLICY BLOG (Feb. 22, 2008), http://goo glepublicpolicy.blogspot.com/2008/02/are-ip-addresses-personal.html (Wilkens Decl. Ex. M).  Therefore, the District Court granted Viacom’ s motion to compel production of all data from the Logging database concerning each time a YouTube.com video at issue in the underlying lawsuit had been viewed on the YouTube.com website or through embedding on a third-party website.

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