Would you like to take a leisurely day trip with me, instead, so I can show you what's been happening in the Google/YouTube-Viacom litigation? There's been a hearing on a motion to compel discovery with some humorous elements to share with you, among other tidbits, that will show you a really effective lawyer at work educating the judge, who admits she's not a techie, on what might work well technically in resolving issues.

The big picture is that Google/YouTube has told the court that it would like to do discovery to prove one of its main points in the litigation, that Viacom is in a better position to police its own copyrighted materials, rather than trying to shift that burden on to YouTube, a mere service provider. [ Update: Here's a very thorough explanation in ABA Journal of the issues in this litigation.]

In support of its discovery motion, YouTube points out that sometimes copyright holders like Viacom and its partners selectively enforce copyright infringement, uploading their own copyrighted materials to YouTube for marketing purposes while at the same time they, or their agents, are sending YouTube cease and desist orders. YouTube would like to do discovery to show that sometimes Viacom knows that its content is on YouTube but, for promotional purposes, and does not ask to remove it, and that since Viacom acquiesces sometimes to its content appearing on YouTube and sometimes it doesn't, it makes it impossible for a service provider like YouTube to tell by simply looking whether any particular video clip is or isn't allowed to be there. The copyright holder is uniquely in a position to know what is and isn't allowed, because only it knows both what it owns and what others can and can't do with it.

Google claims that 37% of DMCA take down notices it receives are not valid copyright claims. Even Viacom's infringement agent, BayTSP, makes mistakes, YouTube says. So how in the world can YouTube do better than they can, when they have the advantage of at least knowing what belongs to Viacom and what is authorized to be on YouTube? And so now YouTube would like to do some discovery to get BayTSP documents that Bay TSP would rather not share.

Here's the example, Exhibit A [PDF], literally, in support of Google/YouTube's Motion to Compel. It's an email from a Google employee, asking about something she noticed while dealing with a DMCA take down request from BayTSP, only to notice who had uploaded the video -- a guy at Viacom's partner, Nickelodeon (whose email I've written out so as not to encourage spam):

Hello,

We received a DMCA from Viacom with a request for the removal of 19 Spongbob URLs. However, when I looked them up, they were uploaded by joe.ruffolo at nick.com and are marked Premium. Before I noticed, I took down the two links, but immediately reinstated them so they should stay up. Still, Mark probably received two email notifications that we took down a video, just fyi.

Any suggestions on what to do in this case? Perhaps we can reach out to the partner and have them get in touch with their copyright team?

For reference, I've pasted the DMCA request below.

Thanks,
Sarah Kate

What, exactly, is YouTube supposed to do? And do such mistakes not clearly demonstrate that YouTube isn't the right party to do the policing? If the copyright holder or its agent can't figure out what it has authorized to be placed on YouTube, how is a service provider like YouTube supposed to get it right? There is no way for YouTube to do well what Viacom wants it to do, even if it were its responsibility. The reason the DMCA puts the responsibility on copyright holders to identify infringement is in part because only they can do it correctly. Google follows the requirements of the DMCA carefully, and one reason it wants the discovery is to demonstrate that it actually does better than most others.

I found that exhibit on Justia.com, which has the documents filed in the motion dispute up through the end of February, available for free. I got started on this little trip originally by this headline, YouTube takes down thousands of fair-use videos. The question is, whose fault is it? Google and Viacom point at each other, as you can see in the article by Richard Koman, who is a lawyer:

In other words, Warner provides a very long list of copyright materials and Google’s tool goes through and wipes them all out, regardless of how fair the use might be.

It’s yet another example of how broken the DMCA regime is. Google believes it is legally obligated to take down every instance of a reported copyright work. More to the point, the scale is so huge it sends its robots out to do the takedowns....So a very large amount of fair-use works are simply taken down, and the digital speech that is the currency of our modern age simply goes offline.

If you recall, this issue of who should be responsible to police infringement was raised in Viacom's complaint and answered by YouTube. First Viacom:

39. YouTube has the right and ability to control the massive infringement on its site. As described above, the infringement is being committed on YouTube's own website, which Defendants control, not on other websites controlled by others.

Viacom's lawsuit challenges the protections of the Digital Millennium Copyright Act ("DMCA") that Congress enacted a decade ago to encourage the development of services like YouTube. Congress recognized that such services could not and would not exist if they faced liability for copyright infringement based on materials users uploaded to their services. It chose to immunize these services from copyright liability provided they are properly responsive to notices of alleged infringement from content owners.

It's quite a dogfight, as I'll show you, and so far Google is ahead on points, so to speak. Here are the most helpful documents from Justia to get you up to speed:

• The transcript of the December hearing on the motion;
• The magistrate judge granted Google's motion in January;
• BayTSP's objections, filed with the presiding judge;
• The presiding judge's request for additional briefing;
• Google's response to BayTSP's objections;
• BayTSP's reply.

The YouTube-BayTSP Discovery Dispute

In its reply memorandum, Google/YouTube clearly explained why it wanted the documents, for both offense and defense:

As we explained in our opening brief, YouTube's subpoena seeks essential information related to Viacom's infringement claims and YouTube's defenses....

In the underlying case, Viacom asks the court to disregard the protections of the Digital Millennium Copyright Act ("DMCA") because the alleged burden on copyright owners to monitor websites for alleged infringement is so great....

YouTube wants to refute Viacom's burden claims, and there is no better source of information to do so than Viacom's primary agent, BayTSP, to whom Viacom has contracted out its monitoring efforts. In addition, Viacom claims that an online service should be able to detect alleged infringement merely by looking at a user-submitted video clip. But YouTube will undermine that position by showing that even Viacom's dedicated monitoring agent, BayTSP, cannot make such determinations on the fly, that it requires detailed instructions to perform the task at a rudimentary level, and that even with these instructions BayTSP often mistakenly identifies for removal content that plainly does not infringe the copyrights of its principal. These are not tangential points to the litigation but some of the most critical ones.

The documents that YouTube seeks are also relevant to its defenses. One of YouTube's primary defenses is that it has complied fully with the notice and take-down regime of the DMCA. See 17 U.S.C. Section 512(c). BayTSP is the party that Viacom has charged with identifying allegedly infringing material, sending take-down notices to YouTube under the DMCA and following up on those notices. Accordingly, it has stores of percipient information showing that YouTube removes material upon BayTSP's request. Perhaps more telling will be the materials showing that Viacom knows that its content is on YouTube but, for promotional purposes, does not ask BayTSP to remove it. Those documents will demonstrate Viacom's acquiescence to its content appearing on YouTube and will further show that, given this acquiescence, an observer of any particular video clip on the YouTube service could not tell merely by looking at it whether it has been authorized by a content owner to appear on the service.

Google/YouTube also say they feel BayTSP is dragging its feet in discovery. BayTSP, the memo goes on to explain, wants to withhold information about its source code on its proprietary software and documents regarding BayTSP's interactions with third parties. But those are the very documents that would enable YouTube to demonstrate its points. And if Viacom says that BayTSP can't necessarily find all infringing videos, and it does, how can YouTube, when BayTSP, through Viacom, has information on what content is authorized and what isn't? And even on the documents that BayTSP has long said it does not dispute, where are all the documents after so much time has gone by since it agreed to produce? Depositions are going forward, and it is prejudicing Google/YouTube not to have the documents. And then there is the issue of restricted access. After Google/YouTube filed its motion to compel, then and only then, according to Google/YouTube, did BayTSP offer to make some moves, albeit dilatory ones, ending up with them offering two computer terminals at its lawyer's office, where YouTube could go to review some 650,000 documents within certain limited hours. Such limited access was not imposed on Viacom and is unworkable, and "no party," YouTube writes, "acting in good faith would make such a proposal." So YouTube feels it has no choice but to ask the court to help.

The Hearing on the Motion to Compel Gives Us a Window Into What's Happening

Eventually, there was a hearing on YouTube's motion, and if you read the transcript of the December hearing, it's quite funny, in a SCO kind of way. Google/YouTube's attorney, John Mancini of Mayer Brown, speaks first at the hearing before Magistrate Judge Patricia V. Trumbull:

Mancini: BayTSP has been acting as an agent for Viacom in canvassing the YouTube web site and issuing notices to take down allegedly infringing content. It's undisputed that Viacom used BayTSP to actually commence the lawsuit in the case in chief in the Southern District of New York....

These documents possessed by BayTSP are amongst the most important in the entire case, not just by third parties, but also by the parties themselves.

Indeed, two depositions have already occurred of Viacom witnesses, namely Michael Housley and Stanley Pierre Louis, where extensive references were made to the processes employed by BayTSP at Viacom's behest to locate allegedly infringing content on the site and to take it down. In addition, four more depositions are yet to proceed which cannot proceed without these documents. They are key Viacom witnesses, namely Warren Solow, Michelena Hallie, Allan Bell, and Lee D'Archevesque.

There are six issues before the court. The first is the scope of documents sought and there are two issues that relate to that, the first of which there may not be a dispute, and that is documents relating to Viacom entities. It appears that BayTSP is ready to produce those, but the concern is the mode in which they seek to produce them.

The second issue, though, is one that is ripe for determination. They seek to -- they are refusing to produce documents relating to non-Viacom entities. They purport to claim that the sole basis for withholding those documents is because of some harm, some harm to their reputation if the information about their dealings with other clients were to get into the public realm.

We have already discussed entering a protective order. There is a protective order in the case in chief that has a provision for third parties that should solve that issue, but that is an issue that there is a dispute on, and we need this court's intervention.

Briefly put, those documents are critically important because they will show, among other things, that other clients of BayTSP other than Viacom Entities have given instructions to either leave content on the YouTube web site, perhaps for promotional reasons or for stealth marketing reasons, understating the powerful viral value that YouTube has to market their content. The existence of that content will dispute one of Viacom's chief claims in the case in chief, namely, that YouTube is able to perhaps discern the authorization of content on the site merely by its existence. Those documents will indisputably refute that position....

They are also important documents because they will show mistakes; for example, BayTSP will make mistakes, despite being armed with the best knowledge by the content holder of what is or i s not its content, of what is or is not authorized by it.

On page 12, BayTSP's lawyer, Steve Hemminger responds and presents BayTSP's side, and let's join him on page 13:

Hemminger: Frankly, BayTSP is totally removed from the lawsuit. It has no involvement --

The Court: Is it correct to characterize you as a contractor basically helping them with the non-deposition discovery?...

Hemminger:... That is not at all what BayTSP does. So let me start, if I can give you a background.

BayTSP started a company after the Digital Millennium Copyright Act came into place. The Digital Millennium Copyright Act had some provisions called Safe Harbors for Internet service providers, provided they met certain criteria. The DMCA also allowed copyright holders to hire an agent who would be authorized to issue takedown notices to the ISP when they found, or if they found, infringing material on the Internet. BayTSP contracts with copyright holders, obviously some of the Viacom entities -- Fox, HBO, Universal, and even many smaller type entities -- who create copyrighted material, and is fearful that its material will end up on the Internet.

Hemminger:... Viacom asked BayTSP to restrict its searches on the Internet I believe to YouTube. So it gets the information saying "South Park is owned by us; Nickelodeon is owned by us. We would like you to find out if anyone has posted infringing material on YouTube."

Hemminger: It's not to take some third party and try to do an end around someone who only has a very, very, very, very limited agency only to send takedown notices. We are not their agent for any other purpose and have no other involvement.

Hemminger: If it's only the instructions they want, they can talk to HBO.

But again, if indeed they are truly an ISP, they don't know about the content and they don't care, they just take it down and they are done. If they have some other interests, well, maybe they are not an ISP and maybe Viacom's suit gets merit. We don't know. We don't take a position.

BayTSP also has issues about its source code being revealed, even under a protective order, "because other people would then be able to copy the software," which they believe would be deleterious to its business. And anyway, as to Viacom documents, BayTSP agreed a year ago to produce them. Um. A *year* ago and it hasn't happened yet?

Then Viacom's lawyer, Steve Hibbard of Shearman & Sterling, stands up, when the judge indicates she is confused by BayTSP's presentation. Which entity, the judge wonders, BayTSP or Viacom, is supposed to produce the Viacom-related documents? Hibbard says, beginning on page 29, that this isn't a question before the court. This is about the third parties. But the subpoenas are "substantially overlapping", except for things like the requests for BayTSP's source code. Google/YouTube asked Viacom for them, and Viacom is working on producing them.

"And so when is that?" the judge asks. Hibbard says it is "happening on a rolling-basis".

So the judge persists: "When is the roll over?" Hibbard says he thinks it's March 15. There are a lot of documents to review.

As to Google/YouTube's worry that Viacom will be able to see what they are viewing on the computers being made available to them to do discovery on, Viacom thinks they are in different user groups, but even if they could see it, they promise not to.

Hahahahaha. Good one.

So the judge asks, "But it's physically possible?" Mr. Hibbard thinks not, but acknowledges he doesn't think the techies have "fully investigated that". But he pledges that they won't give in to temptation and peek, even if they can.

The judge is not convinced:

The Court: That's like in an ordinary paper case telling them, "Gee, give me everything that you have ever done in this case, and we promise not to look at that which we are not supposed to see"?

So Mr. Hemminger stands up again and says they are using Kroll International, an electronic discovery firm, and they say they can set it up to lock them out so they can't see search terms.

I read that as saying that all the discovery Google/YouTube did so far has been an open book to Viacom and BayTSP. So does the judge, I gather. When Hemminger also vows never to peek, she again tries to clarify whether it's possible. Hemminger says no. Hibbard more accurately I think says Viacom is in favor of setting it up so it can't happen. He hasn't talked with Kroll, but he *thinks* they are locked out. A perfect moment for Mr. Mancini to stand up and speak, and he does:

Mr. Mancini: We asked them specifically yesterday, "If the system has a blocking function, would you agree to enable the blocking function so you could not view our activity?" Neither of them would say they would agree.

Mr. Hibbard: That's not correct.

Mr. Mancini: Let me finish.

The Court: Don't stand at the podium and talk to each other.

Mr. Hibbard: I apologize, Your Honor.

Mr. Mancini: What Viacom said is that they will agree as a matter of professional responsibility to not do that, but they would not agree to enable the block function. BayTSP would not make either representation; they were going to investigate. That's the first problem.

The second problem Mr. Mancini next addresses is that BayTSP is printing out the documents for Google/YouTube, instead of letting them do it themselves. "What better way to know about our work product activity than to see everything we are looking at and print it," Mr. Mancini complains. Google/YouTube don't agree that it's a fine system, and what they'd like is CDs that they can then upload to their own system and do discovery in peace, with some privacy. The material is already uploaded to Kroll's database, so it wouldn't be hard to burn it to CDs.

Mr. Hibbard again says that Mr. Mancini is "incorrect" -- Viacom agreed to the block yesterday, and it has no concern about the CDs one way or another, but that Viacom "would absolutely, absolutely deploy any technical block that we could." You have to be very careful with lawyers, when they speak, and parse it out precisely. "That we could" presents some mighty large wiggle room, in my eyes.

The judge then tells them, on page 39, what her draft decision was before the hearing began, almost all in favor of granting the motion, and she says she will take a half-hour break and let them use the time to work out the remaining "technological problems". She doesn't altogether understand the tech, she admits, so she will order whatever the three can agree on, but mostly she's inclined to grant the motion. Mr. Hibbard expresses unhappiness that he doesn't seem to have prevailed on the issue of third parties. But the judge says, in essence, it is what it is.

So, on page 42, we find the little break was productive. They have all agreed to an "electronic download from their service provider, Kroll" to Google/YouTube's.

That leaves costs as an issue. Mr. Hemminger claims that Kroll makes you pay six cents a page to download. The judge is not a techie, so she doesn't know how silly that is, from a technical standpoint. Maybe BayTSP doesn't either. Google/YouTube argues it's Viacom's responsibility. They are mostly Viacom's documents, and BayTSP is its agent. Viacom should pay. Viacom then says they are not its documents, and BayTSP is an "independent company contracted to provide a service".

So the judge humorously, or perhaps in frustration, asks, "Are they anybody's documents?" Viacom says it isn't aware of any written undertaking by Viacom to indemnify BayTSP. Viacom isn't in the ring on this; the costs are an issue between BayTSP and Google/YouTube. Nice partner.

Mancini then says Google/YouTube don't think it's their responsibility, but how much would it be, if they were to offer? BayTSP says the fee is "roughly six to eight cents a page", so it's grown a bit higher already. Don't they have bulk rates, Mancini asks? The court notes a shaking head indicates a no. Mancini points out that since Kroll already uploaded the database, it hardly costs six cents a page to reproduce it to Google's server, and had they started from scratch, with disks at BayTSP, making a copy of those disks wouldn't cost six cents a page either.

Mr. Hemminger then states that there is no disk. Kroll uploaded all the documents related to Viacom, and BayTSP is paying a monthly charge to maintain the database and store it and then a monthly fee once they process that through a filter. As you can see, the price seems to continue to grow.

Google says then that they just want clarity, and they can't see how it could possibly cost six cents a page. They'd like to find a cheaper way. Mancini has a suggestion. He thinks Hemminger is talking about what is known in the industry as a "blowback". Google/YouTube would like to talk to Kroll and negotiate the "most expeditious and inexpensive means" to get that discovery to their database, and he thinks it will cost less than six cents a page. Hemminger says it's not a blowback, it's called "creating a load file".

But in essence, they all agree to Mr. Mancini's suggestion. He reiterates that Google/YouTube shouldn't have to pay it, at least with respect to Viacom's documents, but if they are ordered to do so, he believes they can work out something suitable with Kroll, given that they believe there is a technological fix. Mr. Hemminger would love to learn what that is. You know, someday such discussions will go the way of the dodo bird, but for now, some lawyers have to explain to other lawyers and sometimes to courts how the tech works.

They discuss deadlines, which Google would like made firm, since "soft committals to produce by a certain date have not served us well, which is why we are here."

And there is the issue of the privilege log, which the parties have agreed on, so that leaves the keyword terms issue, and they've agreed to a month to come up with a list, and the protective order. By this point, BayTSP's lawyer, Mr. Hemminger, is feeling a bit glum, as you can see on page 65. When Mr. Mancini suggests a deadline of December 30 instead of the 31st, due to the holiday, the court cordially remarks that likely he wants to party, and he responds in kind, saying at least his kids want to. Mr. Hemminger then gloomily states, "Depending on your ruling, I won't be partying much." The judge pleasantly responds, "Your life is filled with this, so you have always got to take occasions in the middle of it to party."

Amen. Can you tell I'm very impressed with Mr. Mancini?

So, the motion was granted, with the stipulations, but then BayTSP filed objections with the presiding judge, being particularly unhappy about turning over materials about its other customers. It turns out that BayTSP monitors for evil file sharers too. And it sees no reason to share that information with YouTube, if I've understood its position. It doesn't want to have to even tell the names of its customers. But mainly it wishes to narrow the order with respect to any documents in the possession of BayTSP's customers, what it calls fourth parties. But note this section, from BayTSP's objections, on instructions it gets from copyright holders:

These instructions are business and legal decisions by BayTSP's non-party clients and they are reflective of the non-party clients business and legal strategies....The more money the client has in its budget for use in protecting its copyrights from infringement on the internet, the more hours it can purchase. The "rules" the clients set prioritize which videos BayTSP should review for infringement. For example, hypothetically, a client may instruct BayTSP to only review videos that exceed five minutes in length, or only review videos that relate to a particular title or series. This does not mean that a video of less than five minutes does not infringe, it only means that given the limited number of resources the content owner has and the huge volume of infringing postings, the client had to prioritize what BayTSP reviews.

And then, presto. The videos disappear, including those most of us, including at least one lawyer, would describe as fair use videos.

And that is where our little trip ends for now. I'll keep you posted.