YouTube Counter Notification

Question

I am a small music creator operating through a limited liability company in the United Kingdom. One of my music tracks was licensed by a major Hollywood studio, and used in the trailer campaign for a major motion picture, so it received a lot of exposure online. On YouTube it received 21 million views.

A person running a YouTube channel, with a Ukrainian address, ripped my music track from the internet, and synced it to their own video. I found it, and used the YouTube procedure to issue a copyright takedown notice. YouTube asked for proof that the music track is mine, I supplied that proof to them, YouTube accepted my proof, and took the infringing video down.

Subsequently the owner of the video, in addition to sending me multiple abusive emails, has challenged my takedown notice using YouTube's counter notification process. YouTube have now sent me this notification:

"We have received the attached counter notification in response to a complaint that you filed with us. We're providing you with the counter notification and await evidence (in no more than 10 business days) that you've filed an action seeking a court order against the counter notifier to restrain the allegedly infringing activity. In most cases, such evidence would include a lawsuit against the uploader who filed the counter notification, which names the specific YouTube URL(s) at issue. If we do not receive notice from you, we may reinstate the material to YouTube."

YouTube also included this statement from the owner of the infringing video in the counter-notification:

"I swear, under penalty of perjury, that I have a good-faith belief that the material was removed due to a mistake or misidentification of the material to be removed or disabled. I consent to the jurisdiction of the Federal District Court for the district in which my address is located or, if my address is outside the United States, the judicial district in which YouTube is located, and will accept service of process from the claimant."

QUESTION 1 So it seems to me, that the video owner has said he will accept the jurisdiction of YouTube, which is the state of Californa So I don't have to try and bring a legal case in the Ukraine, which would be virtually impossible anyway. I could take action in California, which would likely be sufficient for YouTube to uphold my claim, keep the video offline, and uphold the copyright strike that I lodged. Is this correct, that I can take action in California and YouTube will accept that validity, because of the statement the copyright infringer has made about accepting that jurisdiction?

QUESTION 2 If the answer to QUESTION 1 is yes, court action could be taken in California because the infringing party has stated he will accept that jurisdiction, is it then possible to inexpensively take the necessary court action that will satisfy YouTube's requirement for having "filed an action seeking a court order against the counter notifier to restrain the allegedly infringing activity". Would a small claims court action do the trick? I understand YouTube would be in the jurisdiction of San Monteo for small claims. Does anyone know a) How much that would cost? b) Would the action be accepted by the San Monteo small claims court, if lodged by a company based in the UK? c) Would the small claims court accept a case against a defendant in the Ukraine, given the defendant already said they would accept the jurisdiction of the courts in YouTube's location? On the San Monteo small claims court website I looked for an email address for someone to ask these questions to, but couldn't find one. Thanks! R.

Answer 1

It is not obvious what the answer is. There are two fundamental questions – what will Youtube do in response to a particular action, and how can you put an end to the infringement? Youtube's response is driven by federal law, 17 USC 512. There is some danger to Youtube that you could sue them for contributory infringement, and this law specifies the conditions under which they can be immunized against such a suit. Referring to the stage of the DMCA take down process that you are at, they will put the material back up

unless its designated agent first receives notice from the person who submitted the notification under subsection (c)(1)(C) that such person has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network.

As a prelude to filing such an action, the infringer must file

a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person

Observe that the person has to consent to federal jurisdiction, not state jurisdiction.

Small claims court is a state court (copyright small claims court does not yet exist). Under 28 USC 1338, "No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights". For the most part, federal law preempts state law, but that guide might point to something about your case (an added right) that overcomes federal preemption. Supposing that that is the case, you might file a suit in state court over that added right: then, it is literally true that you "filed an action seeking a court order to restrain".

You could also just go ahead and file an action in state court, because sometimes the court just does what it thinks is right, even if it doesn't have jurisdiction. Even if the suit is dismissed for lack of jurisdiction, you will have "filed an action seeking a court order to restrain". However, Youtube may not be impressed, the way they would be if you picked Federal District Court.

At this point, your options (for getting the material taken down) require filing a suit against the infringer. You can file an infringement suit in the UK, but the material will probably be restored on Youtube until they eventually receive a court order demanding that the material be taken down. You can file a suit right now in the relevant federal court in California and notify Youtube, and they should leave the material taken down. Since you are not suing Youtube in small claims court and the infringer is also not in California, you could not sue in small claims court (somebody has to be in California) unless you are suing Youtube (and will lose because they cannot be sued, per safe harbor rules).

Answer 2

Forget your contract with YouTube and forget whatever he has consented to: your cause of action is for his copyright breach and you have no contract or agreement with him.

You can commence action in any court with competent jurisdiction in any country where the copyright breach occurred. Since it was published on the internet, that is any country that is a signatory to the Berne Convention. Choose the one most convenient to you: one of England and Wales, Scotland or Northern Ireland presumably. You will need to investigate which level of court has the requisite jurisdiction to issue an injunction for copyright breach.

Once you have the court paperwork, send that to YouTube as that satisfies their DCMA requirements: “evidence that you've filed an action seeking a court order against the counter notifier”.

To actually progress the lawsuit you will need to serve the infringer with the summons (which may be difficult if you don’t have a physical address as it must be done in accordance with both UK and Ukrainian law - assuming that is actually where he is) but that is not necessary to meet the DCMA requirements.