IP Law Daily Provider of user-uploaded online courses qualified for DMCA safe harbor
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Friday, April 2, 2021

Provider of user-uploaded online courses qualified for DMCA safe harbor

By Thomas Long, J.D.

A computer programming educator was precluded by the safe harbor from bringing infringement claims against the provider in connection with two courses uploaded to the provider’s site without his authorization.

The safe harbor provided by Section 512 of the Digital Millennium Copyright Act precluded a computer programming educator from pursuing claims against a technology company that allegedly infringed two of the educator’s programs, the federal district court in San Francisco has decided. The defending company had the requisite policy in place to ban "repeat infringers" and had in fact cancelled the accounts of the users who had uploaded the educator’s course materials and videos. The company removed the content expeditiously after the educator informed the company as to its infringing nature. In addition, a state law claim for misappropriation of the instructor’s right of publicity was held to be preempted by the Copyright Act (Kinsley v. Udemy, Inc., March 31, 2021, Corley, J.).

Computer programming instructor Harrison Kinsley asserted that Udemy, Inc., reproduced and distributed his copyrighted works without permission or authorization. His complaint included claims for copyright infringement and misappropriation of the right of publicity.

Udemy provided third-party individuals—referred to as "instructors"—the ability to upload educational content for Udemy users. Kinsley alleged that two of his programming courses were uploaded to Udemy’s platform by third-party instructors. Udemy removed both of them after Kinsley informed Udemy that they infringed his copyrights. Further, Udemy banned the instructors identified as having posted the content. Udemy moved for summary judgment on Kinsley’s copyright claims, invoking the safe harbor of 17 U.S.C. § 512. In addition, Udemy contended that the state law publicity rights claim was preempted by the Copyright Act.

Section 512 safe harbor. Section 512 protects qualifying Internet service providers from liability for copyright infringement under certain circumstances. The Section 512(c) safe harbor applies when a plaintiff seeks to hold an Internet service provider liable for either: (1) infringing "material" stored and displayed on the service provider’s website or (2) infringing "activity using the material on the [service provider’s computer] system." The court agreed with Udemy that Section 512(c) applied in this case.

Kinsley did not dispute that Udemy qualified as a service provider for purposes of the safe harbor, and, in the court’s view, the evidence clearly established that it was. It provided online services to users in the form of its courses. Udemy had a designated agent to receive notifications of claimed infringement, as required under Section 512(c)(2). It also had an "Instructor Ban Policy" that met the statute’s requirement under Section 512(i) that service providers must adopt and reasonably implement a policy for the termination of users who are repeat infringers. Udemy’s policy banned accounts of instructors deemed to represent a high risk of additional infringements, and presumed a "high risk of additional infringement … when there has either been a material violation [of the policy], cases of impersonation, and repeated non-material violations." The policy adequately informed users that instructors found to be repeat infringers shall have their courses removed. Furthermore, the court noted, Udemy had actually terminated the accounts of the instructors who posted Kinsley’s courses. Udemy also allowed users to see "free previews" of courses and to report potentially infringing works.

Kinsley argued that Udemy did not meet the Section 512(i) requirements because it waited to ban the infringing instructors until after he had filed suit. However, the court said that this alleged delay did not change the fact that Udemy had policies in place—and had informed its instructors about them—that complied with the statute before Kinsley notified Udemy of the infringement or filed suit. Therefore, the court concluded that Udemy was eligible for the safe harbor.

The court also held that Udemy satisfied the safe harbor requirements of Section 512(c). First, nothing indicated that Udemy had actual knowledge of the copyright violations before Kinsley notified it of them. Merely hosting the material did not constitute actual knowledge, and the court rejected the proposition that Udemy could have had "red flag" knowledge, explaining that no evidence supported a finding that Udemy was aware of facts that would have made the infringements objectively obvious to a reasonable person. Second, the evidence in the record did not support Kinsley’s allegation that Udemy left the infringing content available on its marketplace for approximately two years after he sent the takedown notices. Kinsley provided nothing to contradict Udemy’s evidence that it removed the content expeditiously. Third, Kinsley failed to provide support for his contention that Udemy delayed in banning the instructors who posted his courses.

The court also determined that Udemy did not have the "right and ability to control" infringing activity. Instructors uploaded the content, and Udemy did not control their actions or have prior knowledge that the content infringed Kinsley’s rights. Udemy had only the general ability to locate infringing material and did not exert the type of control over uploaders that rose to the level of a "substantial influence."

Publicity rights. The court agreed with Udemy that the Copyright Act preempted Kinsley’s claim for misappropriation of his right of publicity. In the court’s view, his course material and videos fell within the subject matter of the Copyright Act, and the misappropriation claim was based on Kinsley’s right to exclusively own and control the reproduction and publication of his works. The misappropriation allegations incorporated and mirrored the copyright allegations and were based solely on rights granted under the Copyright Act.

This case is No. 3:19-cv-04334-JSC.

Attorneys: Steven Howard Kuhn (Law Firm of Steven H. Kuhn) for Harrison Snow Kinsley. Alexei Klestoff (ZwillGen Law LLP) for Udemy, Inc.

Companies: Udemy, Inc.

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