Damages for Unregistered Foreign Works in US Copyright Actions: Premier League v YouTube

In May 2007 the English FA Premier League filed a class action in a New York court against YouTube and Google Inc, YouTube’s corporate parent. The claim aimed to stop the unauthorised electronic dissemination of clips from Premier League football matches on the YouTube website and to recover damages from YouTube and Google. Since the action was launched the Premier League claims that more than 5,000 unauthorised postings of its games have been uploaded to YouTube, despite notification to the website owner.

The Premier League says it is bringing the action to vindicate the rights of both large and small copyright owners and accuses YouTube of knowingly encouraging people to upload videos of copyright material. The Premier League say that YouTube is cynically pursuing a deliberate strategy of facilitating massive copyright infringement on YouTube, and that by allowing the popular football clips to be uploaded YouTube drives traffic to its site thereby increasing advertising revenues.

Other copyright owners, including the Rogers & Hammerstein Organisation and Robert Tur, protecting his video of the Reginald Denny beating, have joined in this class action. The Premier League’s New York attorneys have set up a website youtubeclassaction.com inviting anyone who owns copyright works that have been shown on YouTube without permission to contact them.

YouTube, in their defence, claim protection under the US Digital Millennium Copyright Act.  They say Congress chose to make services such as theirs immune from copyright liability for material uploaded to their services.  The Digital Millennium Copyright Act allows internet intermediaries to act as so-called “safe harbors” for the uploading of material as long as the service provider takes down material expeditiously when notified by a content owner that the uploaded material infringes copyright.

At a hearing in the case this month, Judge Louis Stanton was asked to consider the type of damages that the Premier League and the other claimants may recover should they be successful in their claim against YouTube.

In his ruling the judge clarified this complicated area of US copyright law. He said that it was clear that Congress had not intended to exempt foreign works from the relevant section of the Copyright Act and in fact the section was passed to encourage copyright registration.

The judge made three important rulings as follows:

  1. Broadcasts of live foreign events are eligible for statutory damages under the “live broadcast exemption” in the US Copyright Act.  However these exemptions only apply in special situations:
    1. Where a foreign work containing sound and/or images is first recorded simultaneously with its live transmission, and
    2. the copyright owner serves an “Advance Notice of Potential Infringement” upon the possible infringer, at least 48 hours before the broadcast, complying with statutory formalities including details of the broadcast and notice of the copyright owner’s intention to secure copyright in the work.
  2. Owners of foreign works that are not registered in the US cannot recover statutory damages.
  3. Punitive damages are not available for copyright infringement.

The Premier League can claim a successful result regarding the first ruling. Since September 2008 YouTube has been served with more than 340 pre-event notices by the Premier League so could face substantial statutory damages and legal costs for those postings on its website. Statutory damages can be as high as $30,000 per work or $150,000 where the infringement of copyright was committed willfully, as the Premier League claim that YouTube has done in this case.

This case flags up the importance of registering valuable copyright works in the US to protect your ability to claim statutory damages and legal costs. The message is plain: if your UK copyright work is likely to be posted on YouTube or otherwise infringed in the US, immediately register it with the copyright office in the US. Alternatively, ensure that you register your work in the US within the grace period set out in the US Copyright Act.  The deadline for registering your US copyright is the earlier of 1 month after finding out about the infringement or 3 months after the work’s first publication on the internet.

Information on how to register your copyright with the United States Library of Congress can be found here: www.copyright.gov/eco/.

Bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.