Case Information
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA MARIA SCHNEIDER, et al., Case No. 20-cv-04423-JD Plaintiffs, ORDER RE MOTIONS TO CERTIFY v. CLASS AND EXCLUDE EXPERTS YOUTUBE, LLC, et al.,
Defendants.
In this copyright dispute, named plaintiffs Maria Schneider, Uniglobe Entertainment, and AST Publishing have asked to certify four classes under Federal Rule of Civil Procedure 23(b)(3), or, in the alternative, an issues class under Rule 23(c)(4). Dkt. No. 243-1. Defendants YouTube and Google (YouTube) oppose certification and have asked to strike the testimony of two of plaintiffs’ experts. Dkt. Nos. 261-1, 268. Certification is denied across the board, and the motion to strike is terminated without prejudice to renewal, as circumstances might warrant.
BACKGROUND
The summary judgment order provides a wealth of background on this litigation, and is incorporated here. See Dkt. No. 222. In pertinent part, the gravamen of plaintiffs’ case is that YouTube is a known hotbed of copyright piracy but denies most copyright owners access to its premier anti-piracy tool, known as Content ID. Dkt. No. 99 ¶¶ 1-2. Content ID is “a digital fingerprint tool that compares videos being uploaded on YouTube to a catalogue of copyrighted material submitted by those entities permitted access to the tool.” . ¶ 2. According to plaintiffs, only a select group of “powerful” copyright owners are permitted to use Content ID, which allows them to readily identify infringing works and pursue anti-piracy measures. ¶¶ 1, 56. Plaintiffs say that they and other “ordinary” copyright owners who do not have access to Content ID “are relegated to vastly inferior and time-consuming manual means” of searching for infringing videos on the massive YouTube platform. Id. ¶¶ 1, 9. Plaintiffs allege that this two-tiered system has allowed repeated infringement of their works. Specifically, plaintiffs say that after they submitted a takedown notice and YouTube removed the challenged video, “the same person or another person has subsequently re-uploaded Plaintiffs’ copyrighted feature-length films, music recordings, or books.” Id. ¶ 79.
In effect, plaintiffs allege that YouTube has violated the copyright laws by withholding broad access to Content ID. See id. ¶ 80 (“[C]opyright holders should not be forced to repeatedly demand that the same platform take down infringing uses of the same copyrighted work, while other rights holders are provided access to standard digital fingerprinting and blocking tools.”) (emphasis in original). Plaintiffs also allege that YouTube automatically strips metadata out of uploaded videos, including copyright management information (CMI), which makes it harder to catch infringing conduct. ¶¶ 83-86. The first amended complaint (FAC) presents claims for direct, contributory, and vicarious copyright infringement, and violations of Section 1202(b) of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1202(b)(1)-(3), for removal of CMI and distribution of works with CMI removed. A number of developments have changed the litigation terrain since the filing of the complaint. In the original complaint, plaintiff Pirate Monitor, a British Virgin Islands company that owns copyrights to foreign films, alleged that YouTube denied it access to Content ID and restricted the number of takedown notices it could submit in a day. Dkt. No. 1 ¶¶ 17, 65-74. Discovery indicated that Pirate Monitor may have uploaded thousands of videos and then submitted corresponding takedown notices under the DMCA to bolster its infringement claims. See, e.g. , Dkt. No. 268-42 at 11 (YouTube interrogatory response stating that “[t]he facts that YouTube has learned based on its investigation to date leave little doubt that Pirate Monitor [and its agents] were responsible both for uploading clips of certain of the works-in-suit (and other related content) to YouTube in the first place and then for misusing the DMCA process to request the removal of those clips by YouTube”). YouTube filed counterclaims against Pirate Monitor based on the alleged scheme, and Pirate Monitor subsequently dismissed all of its claims against YouTube with prejudice. Dkt. Nos. 34, 66. Pirate Monitor remains in the case as a counterclaim defendant and has filed a motion for summary judgment on the counterclaims. See Dkt. Nos. 160, 260.
Another significant development was the Court’s order on YouTube’s summary judgment
motion against Schneider.
See
Dkt. No. 222. YouTube fired a blunderbuss of defenses at
Schneider’s infringement claims,
see
Dkt. No. 163-10, but its main argument was that it held a
“blanket catalog license” to all 76 of the musical compositions that Schneider asserted as works-
in-suit. Dkt. No. 222 at 5;
see also Great Minds v. Office Depot, Inc.
,
The parties submitted reams of evidence on this issue, which established that there were substantial disputes of material facts. The disputes centered on a chain of contracts and agreements for Schneider’s works. In 2008, Schneider appointed her management company, ArtistShare Music Publishing (AMP), as the “sole and exclusive Administrator” of her musical compositions via a Music Publishing Administration Agreement (AA). Dkt. No. 164-7 § 6 . The AA gave AMP “the exclusive right to administer the Compositions” and “to execute in [Schneider’s] name any licenses and agreements affecting the Compositions.” Id. AMP assigned “all its duties” under the AA to Modern Works Music Publishing (MWP), which was a 50% co- owner of AMP. Dkt. No. 164-6 ¶¶ 2-4. In 2014, MWP granted YouTube a broad license to compositions “owned or controlled” by MWP via a Publishing License Agreement (PLA). Dkt. No. 163-3 at 11, § 2(a). The PLA was said to be the “blanket” license that covered Schneider’s musical compositions.
The factual conflicts concerned Schneider’s knowledge and authorization of these arrangements. Schneider stated that she had not been advised about the assignment from AMP to MWP or the existence of the PLA, and that MWP has never been her publisher. Dkt. No. 222 at 6. For its part, YouTube proffered emails indicating that MWP “supplied” some of Schneider’s songs to YouTube, and royalty summaries showing that Schneider had received payments from YouTube for several of her works. at 7. YouTube also submitted email communications between MWP’s president and Schneider to show that Schneider knew about the PLA and knew that MWP used Content ID to monitor her works. . Schneider stated that the communications and royalty statements did not disclose to her the existence of the PLA or MWP’s licensing activities. Id.
Another subject of intense disagreement between the parties was the validity of the PLA in
light of a consent provision in the AA between Schneider and AMP. at 7-8. Section 7 of the
AA required advance notice and written consent by Schneider for a license of her works.
See
Dkt.
No. 164-7 § 7 (“Notwithstanding anything to the contrary expressed or implied herein, we must
notify you and obtain your prior written approval for any license we grant on your behalf.”).
There was no evidence on summary judgment that AMP or MWP notified Schneider or obtained
her written consent before MWP executed the PLA with YouTube. Dkt. No. 222 at 8.
Schneider contended that this was fatal to the PLA because under New York law, which
governed the AA, Section 7 was a condition precedent to AMP’s, and therefore MWP’s, power to
grant a license to YouTube.
Id.
In Schneider’s view, a failure to satisfy the condition precedent
negated any licenses ostensibly granted by the PLA.
Id.
YouTube argued that Section 7 was a
covenant and not a condition precedent, and so a failure to notify Schneider and obtain her consent
might have breached the AA, but did not invalidate the PLA.
Id.
The distinction was critical
because the failure to satisfy a condition precedent would mean that “any use by the licensee is
without authority from the licensor and may therefore, constitute an infringement of copyright,”
but the breach of a covenant would give rise only to “a cause of action for breach of contract, not
copyright infringement.”
Sohm v. Scholastic, Inc.
,
Determining whether Section 7 was a condition precedent or a covenant required a detailed
analysis of other provisions in the AA, comparisons to other contractual terms that have been
deemed conditions precedent under New York law, and consideration of the policy goals of
federal copyright law. Dkt. No. 222 at 9-12;
Oracle Am., Inc. v. Hewlett Packard Enter. Co.
,
In the end, a multiplicity of disputes of fact about Schneider’s contractual arrangements and licenses, and related issues, precluded summary judgment. Dkt. No. 222 at 7. A jury will need to resolve these disputes.
YouTube raised another license defense on summary judgment based on its Terms of Service (TOS). Id. at 13. The TOS grant a broad license to YouTube for content uploaded by users, and the record established that users must agree to the TOS when creating an account or uploading a video. Id. ; Dkt. No. 164-5 § 6(C). YouTube argued it was entitled to summary judgment on more than 100 of Schneider’s infringement claims because she and her agents uploaded several of her works-in-suit to YouTube. Dkt. No. 222 at 13. This question was properly resolved on summary judgment because the record established that Schneider created a YouTube account in 2012, and that at least 15 of her works-in-suit were included in videos that she and third parties acting with her permission uploaded to YouTube. Id. at 13-15. Summary judgment was granted in favor of YouTube for Schneider’s direct infringement claims based on those works. at 15.
YouTube also asked for summary judgment on the grounds that many of the alleged infringing videos Schneider identified were time-barred by a one-year limitations period in the TOS. Id. ; Dkt. No. 164-5 § 14. The record did not support Schneider’s suggestion that the contractual limitations period was unconscionable, and her interrogatory responses established that she had actual knowledge of 121 alleged infringing videos more than one year before she filed suit. Dkt. No. 222 at 16-20. Summary judgment was granted for YouTube on the 121 untimely alleged infringements. . at 20. The parties agreed that Schneider had not identified any infringements of 27 of her works-in-suit, and so summary judgment was granted in favor of YouTube for those works. Id. at 4 n.2.
Material disputes of fact again precluded summary judgment on Schneider’s claims with respect to CMI under Section 1202(b) of the DMCA. The parties presented conflicting evidence on whether Schneider had identified any works-in-suit for which CMI had been removed, whether she and her agents use CMI to monitor infringement, and whether she had adduced evidence of scienter as required by the statute. See id. at 21-22.
Although the claims of plaintiffs Uniglobe and AST were not challenged on summary judgment, the parties’ filings indicate that they have their own factual disputes about ownership and licenses akin to Schneider’s. The FAC alleges that Uniglobe owns copyrights to motion pictures, see Dkt. No. 99 ¶¶ 66-69, but Uniglobe subsequently stated the allegations were “not entirely correct” because the copyright registrations were for dramatic works and screenplays. Dkt. No. 268-35 at 54:4-57:11, 66:5-20 (deposition testimony of Uniglobe’s CEO). Uniglobe also stated that it owns its works-in-suit through transfers of ownership rights and work-for-hire agreements. Dkt. No. 268-33 at ECF p. 5 (Uniglobe’s amended interrogatory responses). Although the takedown notices that Uniglobe submitted to YouTube identified “Uniglobe Entertainment” as the owner of the works, Uniglobe’s representative could not say whether the plaintiff entity, Uniglobe Entertainment LLC (Wyoming), or the separate entity Uniglobe Entertainment LLC (Delaware), owned the works. Dkt. No. 268-35 at 77:6-10, 93:6-94:16; see also Dkt. No. 248-22 (takedown notice identifying “Uniglobe Entertainment” as the copyright owner). Uniglobe identified more than 60 YouTube videos uploaded by Uniglobe or its agents that contain parts of its works-in-suit, and more than 50 licensing agreements that cover its works- in-suit, including multiple licenses that permit sub-licensing. Dkt. No. 268-33 at ECF pp. 9-14, Ex. A.
AST’s situation is similarly convoluted. AST originally asserted infringement claims for print and audio books, Dkt. No. 99 ¶¶ 75-76, but stated later that “only the audiobook versions of the Works in Suit are at issue.” Dkt. No. 268-34 at ECF p. 5 (letter clarifying AST’s interrogatory responses). AST also said that it obtained ownership of its works-in-suit through “agreements with the authors and/or agents of the authors,” and that it uploaded and authorized others to upload clips of its works-in-suit to YouTube. Dkt. No. 268-37 at 4, 7 (AST’s interrogatory responses). Plaintiffs ask to certify four classes under Rule 23(b)(3). Dkt. No. 243-1. The first
proposed class is a “Registered Works Infringement Class” (Registered Works class), to be represented by Uniglobe and Schneider. Id. at 3. It is defined as “[a]ll persons who own copyrights in one or more works: 1) registered with the United States Copyright Office; 2) contained or used in a video that was displayed on YouTube and then removed from YouTube due to a successful Takedown Notice; and 3) contained or used in a video that was displayed on YouTube subsequent to the first successful Takedown Notice and then removed from YouTube as a result of either a second successful Takedown Notice made on or after July 2, 2019, or an allegation of infringement made in a court of law on or after July 2, 2019.” Id.
The second proposed class is a “Foreign Unregistered Works Infringement Class” (Foreign Works class), to be represented by Uniglobe and AST. Id. It is defined as “[a]ll persons who own copyrights in one or more works: 1) first published outside the United States; 2) contained or used in a video that was displayed on YouTube and then removed from YouTube due to a successful Takedown Notice; and 3) contained or used in a video that was displayed on YouTube subsequent to the first successful Takedown Notice and then removed from YouTube as a result of either a second successful Takedown Notice made on or after July 2, 2019, or an allegation of infringement made in a court of law on or after July 2, 2019.” Id. The third proposed class is an “International Standard Recording Code Class” (ISRC class), to be represented by Schneider. Id. It is defined as “[a]ll persons who own copyrights in one or more digital form sound recordings of musical works that: 1) has been assigned an International Standard Recording Code (‘ISRC’); and 2) was a component of a video that was uploaded to YouTube that (a) did not include the assigned ISRC and (b) was removed from YouTube as a result of either a successful Takedown Notice made on or after July 2, 2019, or an allegation of infringement made in a court of law on or after July 2, 2019.” Id. at 3-4.
The fourth proposed class is a “Clip Filename Class” (CLFN class), again to be represented by Schneider. at 4. It is defined as “[a]ll persons who own copyrights in one or more works that: (1) had an associated Clip Filename (‘CLFN’) field populated with copyright management information (‘CMI’) and (2) was contained in a video uploaded to YouTube (a) either without the associated CMI metadata or with the CMI metadata altered and (b) that was removed from YouTube as a result of either a successful Takedown Notice made on or after July 2, 2019, or an allegation of infringement made in a court of law on or after July 2, 2019.” . at 4.
DISCUSSION
I. LEGAL STANDARDS
The overall goal of Rule 23 is “to select the method best suited to adjudication of the
controversy fairly and efficiently.”
Amgen Inc. v. Conn. Ret. Plans & Tr. Funds
,
Plaintiffs bear the burden of proving by a preponderance of the evidence that the proposed
classes satisfy all four requirements of Rule 23(a) and at least one of the subsections of Rule
23(b).
Id.
;
Olean Wholesale Grocery Coop., Inc. v. Bumble Bee Foods LLC
,
Under Rule 23(b)(3), a class is appropriate when “questions of law or fact common to class members predominate over any questions affecting only individual members,” and a class action is “superior to other available methods for fairly and efficiently adjudicating the controversy.” Fed. R. Civ. P. 23(b)(3). Each of the four required elements of Rule 23(a) -- numerosity, commonality, typicality, and adequacy -- must also be established.
The commonality requirement of Rule 23(a)(2) is satisfied when there are “questions of
law or fact common to the class.” Fed. R. Civ. P. 23(a)(2). Because “any competently crafted
class complaint literally raises common questions,” the Court’s task is to look for a common
contention “capable of classwide resolution -- which means that determination of its truth or
falsity will resolve an issue that is central to the validity of each one of the claims in one stroke.”
Alcantar
,
“Rule 23(b)(3)’s predominance criterion is even more demanding than Rule 23(a),”
Comcast
,
It has been said that “copyright claims are poor candidates for class-action treatment,” and
for good reason.
Football Ass’n Premier League Ltd. v. YouTube, Inc.
,
This is not to say that certification of a copyright infringement class is per se impossible. The Court certainly does not hold that here. But these factors underscore the challenges that plaintiffs face in seeking to obtain class certification.
II. THE REGISTERED WORKS AND FOREIGN WORKS CLASSES
The usual approach to class certification is to march through the Rule 23 factors in
statutory order, starting with the requirements of Rule 23(a). A different organization is warranted
for this copyright case. Plaintiffs face overwhelming problems with commonality and
predominance that in themselves bar certification. Consequently, it makes sense to start the
analysis with these dispositive issues. The other Rule 23 factors will be discussed in closing.
See
McCarty v. SMG Holdings, I, LLC
, No. 17-cv-06232-JD,
All of the class definitions proposed by plaintiffs, including those with respect to CMI, are
based on a shared element: persons who own copyrights in one or more works. Dkt. No. 243-1 at
3-4. Ownership of a copyright is an essential predicate for these claims,
see Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., Inc.
,
Consequently, all of the proposed classes may be evaluated for Rule 23 purposes on the threshold question of whether plaintiffs can demonstrate copyright ownership on a classwide basis, or whether issues of ownership and licenses will entail individualized proof that precludes certification. YouTube’s main argument against certification of each of the proposed classes is that proof of ownership and licensing will necessarily require individualized evidence for each claimant, as the named plaintiffs’ own circumstances indicate. See Dkt. No. 268 at 7-21. Plaintiffs say these questions can be answered on a classwide basis by leveraging takedown notices and other evidence in YouTube’s possession. Dkt. No. 243-1.
The proposed infringement classes are a bellwether test of certification, and so will be
taken up first. “Considering whether ‘questions of law or fact common to class members
predominate’ begins, of course, with the elements of the underlying cause of action.”
Erica P.
John Fund, Inc. v. Halliburton Co.
,
Vicarious copyright infringement also requires a gateway showing of direct infringement
by a third party.
See Amazon
,
A. The DMCA Takedown Procedures Do Not Supply Classwide Proof.
For the proposed Registered Works and Foreign Works classes, plaintiffs say that “nearly
every element of every claim and affirmative defense will be established through common
evidence.” Dkt. No. 243-1 at 5. This common evidence is said to be “successful” takedown
notices, meaning a takedown notice under the DMCA that resulted in the removal of the allegedly
infringing content by YouTube, or the blocking of access to it.
See
17 U.S.C. § 512(c)(3); Dkt.
No. 243-1 at 10. Plaintiffs say a takedown establishes copyright ownership, registration,
infringement, and the absence of affirmative defenses, “because YouTube admits it reviews such
notices to ensure they are complete and valid and relies on them to remove content and issue
copyright strikes.” Dkt. No. 243-1 at 7.
[1]
The problem with this approach is that the takedown of content in response to a DMCA
notice is miles away from substantive proof of copyright ownership or infringement. The
takedown procedure is part of the safe harbor provisions that Congress established in the DMCA
to allow online service providers like YouTube to manage their risks with respect to infringing
materials posted by users. 17 U.S.C
.
§ 512(a)-(d);
Ventura Content, Ltd. v. Motherless, Inc.
,
To preserve the protections of the safe harbor, a service provider must also give the user an
opportunity to respond to a takedown under the DMCA’s “put-back procedures.”
Lenz
, 815 F.3d
at 1151. These procedures are codified in Section 512(g) of the DMCA and require the service
provider to give notice of the takedown to the user, and allow the user an opportunity to restore the
content by sending a counternotification to the effect that the takedown was in error.
See
17
U.S.C. § 512(g);
Lenz
,
Consequently, a takedown under the DMCA indicates only an allegation of infringement.
The allegation may be a strong one,
see UMG
,
Plaintiffs try to overcome the provisional nature of takedowns by contending that YouTube “vets” every takedown notice to ensure “the Takedown Notice author’s rights are superior to the uploader’s rights” before removing a video. Dkt. No. 243-1 at 10. In effect, plaintiffs suggest that YouTube actually adjudicates copyright claims in response to a takedown notice, and expresses a substantive conclusion about ownership, infringement, and defenses every time it removes or blocks access to a video.
The record demonstrates otherwise. YouTube receives millions of DMCA takedown notices annually. Dkt. No. 248-8 at 5 (YouTube Copyright Transparency Report showing that approximately two million removal requests were submitted via YouTube’s webform in the first half of 2022); Dkt. No. 325 at 23:11-24 (certification hearing transcript). To handle this volume, YouTube relies primarily on an automated process in the first instance to review notices for conformance to the DMCA’s procedural requirements. See, e.g. , Dkt. No. 243-12 at 45:10-13, 46:11-24 (YouTube copyright review manager testifying that an automated “classifier” assesses takedown notices for “completeness on the basis of the DMCA statutory requirements”); see also Dkt. No. 268-2 ¶¶ 2-3 (YouTube declaration stating that “YouTube uses a largely automated process to review each notice to determine whether they contain the information and representations required for a DMCA notice”).
YouTube’s copyright operations team and contractors manually review takedown notices in limited situations. See, e.g. , Dkt. No. 243-12 at 46:22-24 (“[I]f the classifier is uncertain that one of these requirements has been met, then it will route it for a human to take a look at.”). Human review typically is reserved for checking whether the notices contain the information required by the DMCA and screening out suspicious and facially invalid notices. Id. at 47:8-10. On occasion, YouTube may contact the sender of a takedown notice and engage YouTube’s legal counsel on questions of fair use and the like. . at 62:18-25, 63:4-5 (YouTube may “ask the claimants to consider fair use and respond back to us with more detail about why they believe the content that they are targeting for removal does not qualify under a copyright exception such as fair use”). Contacts with legal counsel are infrequent in light of the volume of takedown notices. at 60:4-21 (estimating approximately 50 to 100 monthly contacts with legal counsel about fair use).
Overall, this record demonstrates that YouTube “vets” takedown notices to ensure that they comply with the DMCA’s procedural requirements, but does not make a substantive determination of copyright ownership, infringement, or defenses. For the most part, YouTube uses an automated process to handle DMCA notices. To the extent follow-up work is pursued, it is limited to a fraction of the notices received and involves inquiries into highly individualized issues like fair use. The same goes for YouTube’s handling of counternotifications from users contesting a takedown. See id. at 111:18-24 (“So when the YouTube review team -- copyright ops review team reviews the counter-notification, we are checking to see whether the counter is valid on its face and meets the requirements of the DMCA and otherwise would be fine to forward to the claimant to -- to initiate the counter process which is described by statute.”).
There are other reasons why takedowns are doubtful sources of classwide proof. Consider
the situation of plaintiff AST. YouTube noted that none of the takedown notices submitted for
works ostensibly owned by AST actually identified or even mentioned AST.
See
Dkt. Nos. 244-
17, 244-18, 244-19, 244-20, 244-21 (identifying a Russian name “АЗАПИ”). Plaintiffs say this is
“misleading” because АЗАПИ is AZAPI in English, and other documents show that AZAPI was
authorized to submit notices on AST’s behalf through YouTube’s content verification program.
Dkt. No. 271-1 at 5 n.4. Even if that were the case, the salient point is that it took plaintiffs
multiple steps through language translation and documents to get to their ownership claim on
behalf of a named plaintiff. Plaintiffs have not demonstrated that anything less will be required
for the claims of absent class members.
copyright ownership, infringement, or defenses. Plaintiffs have not demonstrated that these
“central issues in the action” are subject to common evidence, and so the Registered Works and
Foreign Works classes cannot be certified.
Tyson Foods
[3]
,
Plaintiffs’ mention of two cases that certified copyright classes does not lead to a different
outcome. In
Flo & Eddie, Inc. v. Sirius XM Radio, Inc.
, No. 13-5693 PSG (RZx), 2015 WL
4776932 (C.D. Cal. May 27, 2015), a copyright class was certified where the defendant admitted
that it had used the works “without first seeking licenses or paying royalties,” and the record did
not demonstrate that “contentious ownership inquiries” would arise. at *11-12. In
In re
Napster, Inc. Copyright Litig.
, Nos. C MDL-00-1369 MHP, C 04-1671 MHP,
B. Individualized Questions Predominate.
Without a viable method of classwide proof, plaintiffs’ infringement claims will
necessarily require highly individualized inquiries into the merits. The question of a license is a
good example of this. There can be no infringement of a copyrighted work if the challenged use
falls within the scope of a valid license.
Great Minds
,
upon facts and circumstances unique to each work and copyright claimant. YouTube’s assertion of a license on summary judgment raised a flurry of factual and legal disputes about whether Schneider had actually granted licensing authority to a publisher. Dkt. No. 222 at 4-13. The disputes prompted the filing of a mountain of evidence and arguments by the parties, and necessitated a close reading of multiple contracts. Id. Even then, the Court concluded that the license defense entailed disputes of material fact that a jury will need to decide. at 7.
So too for plaintiffs Uniglobe and AST, who have their own factual complications with respect to whether YouTube has a license under the TOS or otherwise to works these plaintiffs uploaded themselves. See, e.g. , Dkt. No. 268-33 at ECF pp. 9-14, Ex. A (Uniglobe granted approximately 60 licenses for its works-in-suit, and uploaded or authorized its agents to upload some of its works-in-suit to YouTube); Dkt. No. 268-37 at 7 (AST and its authorized agents uploaded portions of audiobooks to YouTube, including its works-in-suit).
As other courts have aptly concluded, such “individual issues of license” in themselves typically preclude certification of copyright class actions under Rule 23(b)(3). Kihn , 2022 WL 18935, at *2; see also Palmer Kane LLC v. Scholastic Corp ., No. 11 Civ. 7456(KBF), 2012 WL 2952898, at *7 (S.D.N.Y. July 16, 2012). Plaintiffs have not demonstrated otherwise here . Plaintiffs suggest that YouTube “can cross-reference the ISRCs and other required CMI in YouTube’s database against that information for the copyrighted work claimed by a class member” to establish whether a direct license exists. Dkt. No. 243-1 at 13. Even accepting this as true for present purposes, the approach might work as a first cut, but as the record for Schneider demonstrates, a grant of a license may be much more complicated and disputed than surface appearances indicate. See Dkt. No. 222 at 4-13; see also Spinelli v. Nat’l Football League , 903 F.3d 185, 203 (2d Cir. 2018) (“[I]f a sublicensor has no right to issue a particular license, the sublicensee cannot acquire rights in copyrighted works simply because the sublicensor did so anyway.”). Plaintiffs have not demonstrated that a database cross-check will provide a clear-cut answer to the question of licenses on a classwide basis.
III. THE ISRC AND CLFN CLASSES Plaintiffs’ requests to certify the proposed ISRC and CLFN classes are equally unavailing.
These classes are based on the CMI provisions of Section 1202(b) of the DMCA. Section 1202(b)(1) provides that “[n]o person shall, without the authority of the copyright owner or the law … intentionally remove or alter” CMI “knowing” or “having reasonable grounds to know, that it will induce, enable, facilitate, or conceal” infringement. 17 U.S.C. § 1202(b)(1). Section 1202(b)(3) provides that “[n]o person shall, without the authority of the copyright owner or the law,” distribute or perform works “knowing that [CMI] has been removed or altered without authority of the copyright owner or the law,” and “knowing” or “having reasonable grounds to know, that it will induce, enable, facilitate, or conceal” infringement. . § 1202(b)(3).
As this plain language states, the predicate of a claim under either prong of Section 1202(b) is that CMI was removed or altered without a copyright owner’s permission. Consequently, the ISRC and CLFN classes share with the Registered Works and Foreign Works classes the threshold element of copyright ownership. Dkt. No. 243-1 at 3-4. In the opening brief for certification, plaintiffs did not say how they might establish ownership for the ISRC or CLFN classes with common evidence. In a reply brief, they made a somewhat offhand mention of an intention to use again the takedown procedures as common proof of ownership for the ISRC class, see Dkt. No. 271-1 at 12, but said nothing with respect to the CLFN class. Plaintiffs made no other proposals for determining copyright ownership for either class on a common basis. Giving plaintiffs every benefit of the doubt by assuming they proposed to rely on takedown notices for both classes, the takedown approach works no better here than it did for the infringement classes. This is enough to deny certification of the ISRC and CLFN classes.
The scienter requirement in Section 1202(b) also weighs against certification. As the
frequent use of “knowing” conveys, the statute puts an emphasis on scienter as an element of
liability. Some courts have found a “double-scienter” requirement in Section 1202(b).
See, e.g.
,
Mango v. BuzzFeed, Inc.
,
Cases that discuss Section 1202(b) in the summary judgment context illustrate the type of evidence sufficient to prove scienter. In Stevens, for example, two photographers brought a putative class action against a defendant that developed software used by online real estate services. Id. at 670. The software automatically stripped photographs of CMI metadata during the uploading process without the copyright holders’ authorization. Id. at 671. As a result, the photographers alleged that the defendant had violated Sections 1202(b)(1) and (3). at 672.
The Ninth Circuit affirmed the district court’s grant of summary judgment for the defendant. Id. at 670. To establish scienter, each plaintiff was required to make an “[a]ffirmative [s]howing” with “specific evidence that removal of CMI metadata” from their copyrighted works “will impair their policing of infringement.” Id. at 675. The photographers did not prove this because they had no evidence that they “ever used CMI metadata to prevent or detect copyright infringement” and identified “ no instance in which the removal of CMI metadata from any photograph ‘induce[d], enable[d], facilitate[d], or conceal[ed] an infringement.’” Id. (emphasis and alterations in original). In the one instance where the defendant removed a photograph in response to a DMCA takedown notice, there was no evidence that the claimant “used metadata to identify the allegedly infringing copies, that her photograph even contained metadata, or that the infringement identified had anything to do with removal or alteration of metadata.” Id. at 676 n.6.
In
Victor Elias Photography, LLC v. Ice Portal, Inc.
, the Eleventh Circuit reached a similar
outcome in another case where a photographer alleged Section 1202(b) claims against a defendant
whose software automatically removed CMI metadata from photographs before they were posted
online.
Neither
Stevens
nor
Victor Elias
should be read as imposing exacting requirements of
certain types of evidence to prove scienter for a Section 1202(b). To the contrary, both cases
noted the possibility that a wide range of evidence might do the job.
See Stevens
,
This requirement raises obvious barriers to classwide proof, as illustrated by the
individualized disputes of fact that precluded summary judgment on Schneider’s CMI claims.
See
Dkt. No. 222 at 21-22. Plaintiffs again have not demonstrated that “common, aggregating-
enabling, issues” with respect to the scienter element of Section 1202(b) are “more prevalent or
important the non-common, aggregation-defeating, individual issues.”
Olean
,
Another barrier to certification for the ISRC class is that Schneider, who was identified as
the representative claimant for the class, does not have a work-in-suit that fits the class definition.
The ISRC class is defined as “persons who own copyrights in one or more
digital form sound
recordings
of musical works.” Dkt. No. 243-1 at 3 (emphasis added). It does not include persons
who own copyrights in the musical compositions underlying those recordings.
Id.
“It is well
settled that ‘[s]ound recordings and musical compositions are separate works with their own
distinct copyrights,’”
Williams v. Gaye
,
Plaintiffs suggest that there may be ISRCs associated with other recordings of Schneider’s
works,
see, e.g.,
Dkt. No. 271-1 at 11-12; Dkt. No. 271-10 at 14-18; but that is of no moment here.
She did not allege ownership or infringement of those sound recordings separate from the
underlying compositions, and so she does not have a work-in-suit that fits the proposed ISRC
Class definition.
See
Dkt. No. 99 ¶ 60 n.7; Dkt. No. 268-19 at 5-6. Consequently, Schneider is
not a typical or adequate representative of the putative ISRC class.
See
Fed. R. Civ. P. 23(a)(3)-
(4);
Sali v. Corona Reg’l Med. Ctr.
,
IV. OTHER RULE 23(A) ELEMENTS Given the shortfall on commonality and predominance, a detailed discussion of the other Rule 23(a) elements is not particularly called for. Even so, the Court makes the ensuing observations. A. Numerosity (23(a)(1)) Rule 23(a)(1) requires that a proposed class be “so numerous that joinder of all members is impracticable.” Fed. R. Civ. P. 23(a)(1). In most cases, numerosity is readily established. Here, the question is more nuanced. In the absence of a classwide method of establishing copyright ownership and infringement, it is difficult to estimate numerosity with any degree of precision. The commonality and predominance concerns discussed above indicate that a headcount for the
classes would require individual inquires into the merits. While it is true that ascertainability is
not an element of certification in our circuit,
see Briseno v. ConAgra Foods
,
Plaintiffs came rather close to doing just that by saying that numerosity must exist because
YouTube hosts billions of videos and receives millions of takedown notices annually.
See
Dkt.
No. 271-1 at 3; Dkt. No. 244-12; Dkt. No. 248-8 at 5. They dressed this up a bit with opinions by
an expert that there are at least one thousand members in each proposed class. Dkt. No. 243-1
at 4. YouTube objected to the opinions as not properly disclosed during discovery,
see
Dkt. No.
268 at 6, and it is not entirely clear that the class size estimates are based on reliable methods. But
“[i]nadmissibility alone is not a proper basis to reject evidence submitted in support of class
certification.”
Sali
,
B. Typicality (23(a)(3))
Rule 23(a)(3) requires plaintiffs to prove that “the claims or defenses of the representative
parties are typical of the claims or defenses of the class.” Fed. R. Civ. P. 23(a)(3). The typicality
requirement is intended to “assure that the interest of the named representative aligns with the
interests of the class.”
Hanon v. Dataproducts Corp
.,
Typicality is questionable here. Each work-in-suit will be the subject of individualized proof of ownership and infringement, which necessarily makes the claim of each plaintiff a sui generis inquiry. The summary judgment record for Schneider, and YouTube’s filings with respect to Uniglobe and AST, highlight these concerns. Dkt. No. 222.
C. Adequacy (23(a)(4))
Except for the issues discussed with respect to Schneider and the ISRC class, YouTube did not challenge the adequacy of the proposed class representatives or proposed class counsel under Rule 23(a)(4). Consequently, this element is not in dispute.
V. RULE 23(C)(4)
“Even if the common questions do not predominate over the individual questions so that
class certification of the entire action is warranted,” Rule 23(c)(4) “authorizes the district court in
appropriate cases to isolate the common issues … and proceed with class treatment of these
particular issues.”
Valentino v. Carter-Wallace, Inc.
,
YouTube asked to exclude the opinions of plaintiffs’ proposed experts, Dr. Charles Cowan or Dr. Hal Singer, under Federal Rule of Evidence 702 and Daubert . See Dkt. No. 261-1. The Court did not rely on any of these opinions, or the work of either expert, in deciding the certification motion. Consequently, the questions of admissibility that YouTube raised are deferred to another day, as warranted by developments. See Milan v. Clif Bar & Co. , 340 F.R.D. 591, 602 (N.D. Cal. 2021).
CONCLUSION
Plaintiffs’ requests for certification of a class under Rule 23(b)(3), and for issues under Rule 23(c)(4), are denied.
IT IS SO ORDERED.
Dated: May 22, 2023
JAMES DONATO United States District Judge
Notes
[1] This is in some tension with the FAC, which expressly criticized YouTube’s “rudimentary tools” 28 with respect to “the takedown notification process.” Dkt. No. 99 ¶ 14.
[2] A valid notice must be signed under penalty of perjury, identify the copyrighted work and the 28 alleged infringing use, and provide other information as stated in 17 U.S.C. § 512(c)(3).
[3] This conclusion also relates to plaintiffs’ lengthy discussion in their brief that YouTube’s 27 affirmative defenses, including eligibility for the DMCA safe harbor in 17 U.S.C. § 512, may be established with common evidence. See Dkt. No. 243-1 at 16-20. The absence of common proof 28 of liability makes the question of common proof of defenses beside the point.