Advanced Copyright Issues on the Internet - Fenwick & West LLP

listing at the time of removal, eBay had removed out of an abundance of caution, and the recorddid not reflect why eBay removed the second listing. 1816In sum, the court ruled that proper identification under Section 512(c)(3)(A)(iii) shouldinclude the item numbers of the listings that were allegedly offering pirated copies of“Manson.” 1817 Because the plaintiff had failed to submit a written notice substantiallycomplying with the notice requirements of Section 512(c), eBay did not have a duty to act underSection 512(c)(1)(C) to remove the allegedly infringing listings, and would therefore be entitledto the Section 512(c) safe harbor if it met the remaining prongs of the safe harbor test: 1818– Absence of Actual or Constructive Notice: Because the plaintiff’s notices did notsubstantially comply with the notice requirements of Section 512(c), the court ruled that theycould not, as a matter of law, establish actual or constructive knowledge that particular listingswere involved in infringing activity. Since the record showed that eBay otherwise did not haveactual or constructive knowledge before the lawsuit was filed, the court ruled that eBay hadsatisfied the first prong of the safe harbor test under Section 512(c)(1)(A). 1819– Right and Ability to Control the Infringing Activity: Under Section 512(c)(1)(B),eBay was required to show that it did not receive a financial benefit directly attributable to theinfringing activity in a case in which it had the right and ability to control such activity. Thecourt ruled that, because the undisputed facts established that eBay did not have the right andability to control the infringing activity, the court need not evaluate the financial benefitelement. 1820 Plaintiff argued that eBay had the ability to control infringing activity based on itsability to remove infringing listings after receiving proper notification, and its program ofprophylactic searching for apparent infringements based on searching its website daily forgeneric key words such as “bootleg,” “pirated,” “counterfeit” and “taped off TV” that mightindicate potentially infringing activity. 1821 The court rejected these arguments, first noting theCatch 22 that would arise if the mere ability to remove infringing materials were sufficient tosatisfy the control prong, since the DMCA requires an OSP to remove infringing materials:[T]he ‘right and ability to control’ the infringing activity, as the concept is used inthe DMCA, cannot simply mean the ability of a service provider to remove orblock access to materials posted on its website or stored in its system. To holdotherwise would defeat the purpose of the DMCA and render the statute internallyinconsistent. The DMCA specifically requires a service provider to remove orblock access to materials posted on its system when it receives notice of claimedinfringement. The DMCA also provides that the limitations on liability onlyapply to a service provider that has ‘adopted and reasonably implemented … a1816 Id. at 1091-92.1817 Id. at 1092.1818 Id.1819 Id. at 1093.1820 Id.1821 Id. at 1093 & n. 14.- 396 -