Citation Edit

Perfect 10, Inc. v. Yandex N.V., 2013 WL 1899851 (May 7, 2013) (full-text).

Factual Background Edit

Perfect 10, a company creating adult entertainment products, including photographs. Yandex is a Dutch company operating the leading Russian search engine and offers a broad range of search functions over the Internet.

Before filing the suit, Perfect 10 sent three DMCA takedown notices to Yandex, requesting that it take down links to certain images.

District Court Proceedings Edit

Perfect 10 filed a lawsuit alleging violations of its copyrights by Yandex for copying and displaying the plaintiff's images on its websites, and linking to, storing, and placing ads around the images without Perfect 10's consent.

Perfect 10 alleged that Yandex had actual knowledge of the infringing images/links based on the DMCA notices sent to it. The plaintiff also alleged that Yandex was contributorily liable for third parties' infringement of the plaintiff's copyrights because Yandex made the images available online to third parties for copying.

Perfect 10 moved for partial summary judgment on three issues related to its notices: (1) its notices to Yandex were in compliance with the law (U.S.C. §§512(c) & (d)); (2)) that defendants were not eligible for the DMCA safe harbor when they had no DMCA agent; (3) notices sent conferred actual knowledge on Yandex regarding allegedly infringing images/links.

The court noted that there was no evidence showing that any of the allegedly infringing links identified in the second notice led to domestic infringements. The evidence only showed that Yandex linked to other search providers' websites, not domestically, hosted infringing copies. Therefore, the court held that any further ruling on the sufficiency of the second notice would be advisory. Accordingly, it denied the summary judgment on the second notice.

The court further articulated the eligibility requirements of the DMCA, Section 512(c)(3), for all three notices. First, it explained that the notice has to be a written communication to the designated agent of a service provider which includes: (1) signature of the copyright owner or a person authorized to act on behalf of the owner; (2) identification of the copyrighted work or, if multiple works at a single site, the list of such works; (3) contact information of the complaining party sufficient to allow the service provider to contact the complaining party; (4) a statement setting forth the complaining party's good faith belief that the use of the work was not authorized by the exclusive copyright owner, its agent, or the law. In addition, the court noted that the notices shall be substantial compliance with the law which "means substantial compliance with all of its clauses, not just some of them." Furthermore, it stated that the burden of policing copyright infringement was on the copyright owner exclusively. A DMCA notice will not be adequate if the service provider must take substantial time and gather relevant pieces together to identify a claimed infringement.

The court gave a brief description of the Sample Notice 1. It had a cover email attaching the DMCA notice. Next, there was a short notice letter describing the contents of the notice itself and requesting the images to be taken down. The notice letter in the First notice was followed by several pages of screen shots from Yandex's own image search web sites which showed the claimed copyrighted image's in Yandex's search results along with corresponding links to the party directly hosting the content. Yandex complained that processing DMCA notices were burdensome — it required substantial effort, and it would prefer them in different format, like a "simple list of URLs." The court noted that there were no requirements for any particular form of DMCA notices and there was no evidence showing Yandex making any request to Perfect 10 about its preferences.

Yandex further contended that the notices were deficient because they failed to adequately identify the copyrighted work which forced Yandex go through numerous thumbnails in one section of the notice and compare them to dozens or hundreds of pages of screenshots of alleged infringements to try to match them up. However, the court noted that the Notice 1 was only 11 pages and matching the allegedly copyrighted work to the alleged infringements required only a few seconds. Further, the court found that the Notice 1 made clear that authorized versions appeared at the end of the notice and alleged infringements were included in the screen shots of Yandex web pages. As a result, the court held that the Notice 1 complied with the law.

The court denied summary judgment for Sample Notice 3 since the law has no express requirement that a notice include an exact, authorized copy of a copyright work alleged to be infringed, or even any authorized copy of the allegedly infringed work. Yandex had made an objection that these too are not the identical work.

In addition, the court denied Perfect 10's motion for summary judgment for conferred actual knowledge of copyright infringement for the purposes of a contributory infringement claim. The court held that a DMCA notice provides only a claim of infringement, and is not sufficient by itself to establish actual knowledge.

The court granted Perfect 10's motion for summary judgment on the fact that Yandex was not eligible for the DMCA safe harbor during the period when they had no designated agent. It explained that Section 512(c)(3) requires that the service provider designate an agent to receive DMCA notices.

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