FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`STEPHANIE LENZ,
`
`Plaintiff-Appellee/
`Cross-Appellant,
`
`v.
`
`UNIVERSAL MUSIC CORP.;
`UNIVERSAL MUSIC PUBLISHING INC.;
`UNIVERSAL MUSIC PUBLISHING
`GROUP INC.,
`
`Defendants-Appellants/
`Cross-Appellees.
`
`Nos. 13-16106
`13-16107
`
`D.C. No.
`5:07-cv-03783-
`JF
`
`OPINION
`
`Appeal from the United States District Court
`for the Northern District of California
`Jeremy D. Fogel, District Judge, Presiding
`
`Argued and Submitted
`July 7, 2015—San Francisco, California
`
`Filed September 14, 2015
`
`Before: Richard C. Tallman, Milan D. Smith, Jr.,
`and Mary H. Murguia, Circuit Judges.
`
`Opinion by Judge Tallman;
`Partial Concurrence and Partial Dissent by Judge Milan D.
`Smith, Jr.
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`STEPHANIE LENZ,
`
`Plaintiff-Appellee/
`Cross-Appellant,
`
`v.
`
`UNIVERSAL MUSIC CORP.;
`UNIVERSAL MUSIC PUBLISHING INC.;
`UNIVERSAL MUSIC PUBLISHING
`GROUP INC.,
`
`Defendants-Appellants/
`Cross-Appellees.
`
`Nos. 13-16106
`13-16107
`
`D.C. No.
`5:07-cv-03783-
`JF
`
`OPINION
`
`Appeal from the United States District Court
`for the Northern District of California
`Jeremy D. Fogel, District Judge, Presiding
`
`Argued and Submitted
`July 7, 2015—San Francisco, California
`
`Filed September 14, 2015
`
`Before: Richard C. Tallman, Milan D. Smith, Jr.,
`and Mary H. Murguia, Circuit Judges.
`
`Opinion by Judge Tallman;
`Partial Concurrence and Partial Dissent by Judge Milan D.
`Smith, Jr.
`
`
`
`2
`
`LENZ V. UNIVERSAL MUSIC
`
`SUMMARY*
`
`Digital Millennium Copyright Act
`
`The panel affirmed the district court’s denial of the
`parties’ cross-motions for summary judgment in an action
`under the Digital Millennium Copyright Act (“DMCA”)
`alleging that the defendants violated 17 U.S.C. § 512(f) by
`misrepresenting in a takedown notification that the plaintiff’s
`home video constituted an infringing use of a portion of a
`Prince composition.
`
`The panel held that the DMCA requires copyright holders
`to consider fair use before sending a takedown notification,
`and that failure to do so raises a triable issue as to whether the
`copyright holder formed a subjective good faith belief that the
`use was not authorized by law. Regarding good faith belief,
`the panel held that the plaintiff could proceed under an actual
`knowledge theory. The panel held that the willful blindness
`doctrine may be used to determine whether a copyright holder
`knowingly materially misrepresented that it held a good faith
`belief that the offending activity was not a fair use. The
`plaintiff here, however, could not proceed to trial under a
`willful blindness theory because she did not show that the
`defendants subjectively believed there was a high probability
`that the video constituted fair use. The panel also held that a
`plaintiff may seek recovery of nominal damages for an injury
`incurred as a result of a § 512(f) misrepresentation.
`
` * This summary constitutes no part of the opinion of the court. It has
`been prepared by court staff for the convenience of the reader.
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`3
`
`Judge M. Smith concurred in part, dissented in part, and
`concurred in the judgment. Dissenting from Part IV.C of
`the majority opinion, addressing good faith belief, he
`questioned whether § 512(f) directly prohibits a party from
`misrepresenting that it has formed a good faith belief that a
`work is subject to the fair use doctrine. He wrote that the
`plain text of the statute prohibits misrepresentations that a
`work is infringing, not misrepresentations about the party’s
`diligence in forming its belief that the work is infringing.
`Judge M. Smith disagreed that there was any material dispute
`about whether the defendants considered fair use, and he
`wrote that the willful blindness doctrine does not apply
`where, as here, a party has failed to consider fair use and has
`affirmatively misrepresented that a work is infringing.
`
`COUNSEL
`
`Kelly M. Klaus (argued) and Melinda LeMoine, Munger,
`Tolles & Olson LLP, Los Angeles, California, for
`Defendants-Appellants/Cross-Appellees.
`
`Corynne McSherry (argued), Cindy Cohn, Kurt Opsahl,
`Daniel K. Nazer, and Julie Samuels, Electronic Frontier
`Foundation, San Francisco, California; Ashok Ramani,
`Michael S. Kwun, and Theresa H. Nguyen, Keker & Van
`Nest LLP, San Francisco, California, for Plaintiff-
`Appellee/Cross-Appellant.
`
`Steven Fabrizio and Scott Wilkens, Jenner & Block LLP,
`Washington, D.C., for Amicus Curiae Motion Picture
`Association of America, Inc.
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`ennifer Pariser, Of Counsel, Recording Industry Association
`of America, Washington, D.C.; Cynthia Arato, Marc Isserles,
`and Jeremy Licht, Shapiro, Arato & Isserles LLP, New York,
`New York, for Amicus Curiae Recording Industry
`Association of America.
`
`4 J
`
`Joseph Gratz, Durie Tangri LLP, San Francisco, California,
`for Amici Curiae Google Inc., Twitter Inc., and Tumblr, Inc.
`
`Marvin Ammori and Lavon Ammori, Ammori Group,
`Washington, D.C., for Amicus Curiae Automatic, Inc.
`
`Julie Ahrens and Timothy Greene, Stanford Law School
`Center for Internet and Society, Stanford, California, for
`Amici Curiae Organization fo Transformative Works, Public
`Knowledge, and International Documentary Association.
`
`OPINION
`
`TALLMAN, Circuit Judge:
`
`Stephanie Lenz filed suit under 17 U.S.C. § 512(f)—part
`of the Digital Millennium Copyright Act (“DMCA”)—
`against Universal Music Corp., Universal Music Publishing,
`Inc., and Universal Music Publishing Group (collectively
`“Universal”). She alleges Universal misrepresented in a
`takedown notification that her 29-second home video (the
`“video”) constituted an infringing use of a portion of a
`composition by the Artist known as Prince, which Universal
`insists was unauthorized by the law. Her claim boils down to
`a question of whether copyright holders have been abusing
`the extrajudicial takedown procedures provided for in the
`DMCA by declining to first evaluate whether the content
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`5
`
`qualifies as fair use. We hold that the statute requires
`copyright holders to consider fair use before sending a
`takedown notification, and that failure to do so raises a triable
`issue as to whether the copyright holder formed a subjective
`good faith belief that the use was not authorized by law. We
`affirm the denial of the parties’ cross-motions for summary
`judgment.
`
`I
`
`Founded in May 2005, YouTube (now owned by Google)
`operates a website that hosts user-generated content. About
`YouTube, YouTube.com, https://www. youtube.com/yt/about/
`(last visited September 4, 2015). Users upload videos
`directly to the website. Id. On February 7, 2007, Lenz
`uploaded to YouTube a 29-second home video of her two
`young children in the family kitchen dancing to the song Let’s
`Go Crazy by Prince.1 Available at https://www.youtube.com/
`watch?v=N1Kf JHFWlhQ (last visited September 4, 2015).
`She titled the video “‘Let’s Go Crazy’ #1.” About four
`seconds into the video, Lenz asks her thirteen month-old son
`“what do you think of the music?” after which he bobs up and
`down while holding a push toy.
`
`At the time Lenz posted the video, Universal was Prince’s
`publishing administrator responsible for enforcing his
`copyrights. To accomplish this objective with respect to
`YouTube, Robert Allen, Universal’s head of business affairs,
`assigned Sean Johnson, an assistant in the legal department,
`
` 1 YouTube is a for-profit company that generates revenues by selling
`advertising. If users choose to become “content partners” with YouTube,
`they share in a portion of the advertising revenue generated. Lenz is not
`a content partner and no advertisements appear next to the video.
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`6 t
`
`o monitor YouTube on a daily basis. Johnson searched
`YouTube for Prince’s songs and reviewed the video postings
`returned by his online search query. When reviewing such
`videos, he evaluated whether they “embodied a Prince
`composition” by making “significant use of . . . the
`composition, specifically if the song was recognizable, was
`in a significant portion of the video or was the focus of the
`video.” According to Allen, “[t]he general guidelines are that
`. . . we review the video to ensure that the composition was
`the focus and if it was we then notify YouTube that the video
`should be removed.”
`
`Johnson contrasted videos that met this criteria to those
`“that may have had a second or less of a Prince song, literally
`a one line, half line of Prince song” or “were shot in
`incredibly noisy environments, such as bars, where there
`could be a Prince song playing deep in the background . . . to
`the point where if there was any Prince composition
`embodied . . . in those videos that it was distorted beyond
`reasonable recognition.” None of the video evaluation
`guidelines explicitly include consideration of the fair use
`doctrine.
`
`When Johnson reviewed Lenz’s video, he recognized
`Let’s Go Crazy immediately. He noted that it played loudly
`in the background throughout the entire video. Based on
`these details, the video’s title, and Lenz’s query during the
`video asking if her son liked the song, he concluded that
`Prince’s song “was very much the focus of the video.” As a
`result, Johnson decided the video should be included in a
`takedown notification sent to YouTube that listed more than
`200 YouTube videos Universal believed to be making
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`7
`
`unauthorized use of Prince’s songs.2 The notice included a
`“good faith belief” statement as required by 17 U.S.C.
`§ 512(c)(3)(A)(v): “We have a good faith belief that the
`above-described activity is not authorized by the copyright
`owner, its agent, or the law.”
`
`After receiving the takedown notification, YouTube
`removed the video and sent Lenz an email on June 5, 2007,
`notifying her of the removal. On June 7, 2007, Lenz
`attempted to restore the video by sending a counter-
`notification to YouTube pursuant to § 512(g)(3). After
`YouTube provided this counter-notification to Universal per
`§ 512(g)(2)(B), Universal protested the video’s reinstatement
`because Lenz failed to properly acknowledge that her
`statement was made under penalty of perjury, as required by
`§ 512(g)(3)(C). Universal’s protest reiterated that the video
`constituted infringement because there was no record that
`“either she or YouTube were ever granted licenses to
`reproduce, distribute, publicly perform or otherwise exploit
`the Composition.” The protest made no mention of fair use.
`After obtaining pro bono counsel, Lenz sent a second
`counter-notification on June 27, 2007, which resulted in
`YouTube’s reinstatement of the video in mid-July.
`
`II
`
`Lenz filed the instant action on July 24, 2007, and her
`Amended Complaint on August 15, 2007. After the district
`court dismissed her tortious interference claim and request for
`
` 2 “[T]he parties do not dispute that Lenz used copyrighted material in her
`video or that Universal is the true owner of Prince’s copyrighted music.”
`Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1153–54 (N.D. Cal.
`2008).
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`eclaratory relief, Lenz filed her Second Amended Complaint
`on April 18, 2008, alleging only a claim for misrepresentation
`under § 512(f). The district court denied Universal’s motion
`to dismiss the action.
`
`8 d
`
`On February 25, 2010, the district court granted Lenz’s
`partial motion for summary judgment on Universal’s six
`affirmative defenses, including the third affirmative defense
`that Lenz suffered no damages. Both parties subsequently
`moved for summary
`judgment on Lenz’s § 512(f)
`misrepresentation claim. On January 24, 2013, the district
`court denied both motions in an order that is now before us.
`
`The district court certified its summary judgment order
`for interlocutory appeal under 28 U.S.C. § 1292(b), and
`stayed proceedings in district court pending resolution of the
`appeal. We granted the parties permission to bring an
`interlocutory appeal.
`
`III
`
`We review de novo the district court’s denial of summary
`judgment. When doing so, we “must determine whether the
`evidence, viewed in a light most favorable to the non-moving
`party, presents any genuine issues of material fact and
`whether the district court correctly applied the law.” Warren
`v. City of Carlsbad, 58 F.3d 439, 441 (9th Cir. 1995). On
`cross-motions for summary judgment, we evaluate each
`motion independently, “giving the nonmoving party in each
`instance the benefit of all reasonable inferences.” ACLU v.
`City of Las Vegas, 333 F.3d 1092, 1097 (9th Cir. 2003).
`
`When evaluating an interlocutory appeal, we “may
`address any issue fairly included within the certified order
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`9
`
`because it is the order that is appealable, and not the
`controlling question identified by the district court.” Yamaha
`Motor Corp., U.S.A. v. Calhoun, 516 U.S. 199, 205 (1996)
`(emphasis in original) (quotation omitted). We may therefore
`“address those issues material to the order from which appeal
`has been taken.” In re Cinematronics, Inc., 916 F.2d 1444,
`1449 (9th Cir. 1990) (emphasis in original) (permitting
`appellate review of a ruling issued prior to the order certified
`for interlocutory appeal).
`
`IV
`
`Effective on October 28, 1998, the DMCA added new
`sections to existing copyright law by enacting five Titles,
`only one of which is relevant here: Title II—Online
`Copyright Infringement Liability Limitation Act—now
`codified in 17 U.S.C. § 512. Sections 512(c), (f), and (g) are
`at the heart of the parties’ dispute.
`
`A
`
`Section 512(c) permits service providers, e.g., YouTube
`or Google, to avoid copyright infringement liability for
`storing users’ content if—among other requirements—the
`service provider “expeditiously” removes or disables access
`to the content after receiving notification from a copyright
`holder that the content is infringing. 17 U.S.C. § 512(c).
`Section 512(c)(3)(A) sets forth the elements that such a
`“takedown notification” must contain. These elements
`include identification of the copyrighted work, identification
`of the allegedly infringing material, and, critically, a
`statement that the copyright holder believes in good faith the
`infringing material “is not authorized by the copyright owner,
`its agent, or the law.” Id. § 512(c)(3)(A). The procedures
`
`
`
`10
`
`LENZ V. UNIVERSAL MUSIC
`
`outlined in § 512(c) are referred to as the DMCA’s
`“takedown procedures.”
`
`To avoid liability for disabling or removing content, the
`service provider must notify the user of the takedown. Id.
`§ 512(g)(1)–(2). The user then has the option of restoring the
`content by sending a counter-notification, which must include
`a statement of “good faith belief that the material was
`removed or disabled as a
`result of mistake or
`misidentification . . . .” Id. § 512(g)(3)(C). Upon receipt of
`a valid counter-notification, the service provider must inform
`the copyright holder of the counter-notification and restore
`the content within “not less than 10, nor more than 14,
`business days,” unless the service provider receives notice
`that the copyright holder has filed a lawsuit against the user
`seeking to restrain the user’s infringing behavior. Id.
`§ 512(g)(2)(B)–(C). The procedures outlined in § 512(g) are
`referred to as the DMCA’s “put-back procedures.”
`
`If an entity abuses the DMCA, it may be subject to
`liability under § 512(f). That section provides: “Any person
`who knowingly materially misrepresents under
`this
`section—(1) that material or activity is infringing, or (2) that
`material or activity was removed or disabled by mistake or
`misidentification, shall be liable for any damages . . . .” Id.
`§ 512(f). Subsection (1) generally applies to copyright
`holders and subsection (2) generally applies to users. Only
`subsection (1) is at issue here.
`
`B
`
`first determine whether 17 U.S.C.
`We must
`§ 512(c)(3)(A)(v) requires copyright holders to consider
`whether the potentially infringing material is a fair use of a
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`11
`
`copyright under 17 U.S.C. § 107 before issuing a takedown
`notification. Section 512(c)(3)(A)(v) requires a takedown
`notification to include a “statement that the complaining party
`has a good faith belief that the use of the material in the
`manner complained of is not authorized by the copyright
`owner, its agent, or the law.” The parties dispute whether fair
`use is an authorization under the law as contemplated by the
`statute—which is so far as we know an issue of first
`impression in any circuit across the nation. “Canons of
`statutory construction dictate that if the language of a statute
`is clear, we look no further than that language in determining
`the statute’s meaning. . . . A court looks to legislative history
`only if the statute is unclear.” United States v. Lewis, 67 F.3d
`225, 228–29 (9th Cir. 1995) (citations omitted). We agree
`with the district court and hold that the statute unambiguously
`contemplates fair use as a use authorized by the law.
`
`Fair use is not just excused by the law, it is wholly
`authorized by the law. In 1976, Congress codified the
`application of a four-step test for determining the fair use of
`copyrighted works:
`
`Notwithstanding the provisions of sections
`106 and 106A, the fair use of a copyrighted
`work, . . . for purposes such as criticism,
`comment, news reporting, teaching (including
`multiple copies
`for classroom use),
`scholarship, or
`research,
`is not an
`infringement of copyright. In determining
`whether the use made of a work in any
`particular case is a fair use the factors to be
`considered shall include—
`
`
`
`12
`
`LENZ V. UNIVERSAL MUSIC
`
`(1) the purpose and character of the use,
`including whether such use is of a
`commercial nature or is for nonprofit
`educational purposes;
`
`(2) the nature of the copyrighted work;
`
`(3) the amount and substantiality of the
`portion used in relation to the copyrighted
`work as a whole; and
`
`(4) the effect of the use upon the potential
`market for or value of the copyrighted
`work.
`
`The fact that a work is unpublished shall not
`itself bar a finding of fair use if such finding
`is made upon consideration of all the above
`factors.
`
`17 U.S.C. § 107 (emphasis added). The statute explains that
`the fair use of a copyrighted work is permissible because it is
`a non-infringing use.
`
`While Title 17 of the United States Code (“Copyrights”)
`does not define the term “authorize” or “authorized,” “[w]hen
`there is no indication that Congress intended a specific legal
`meaning for the term, the court may look to sources such as
`dictionaries for a definition.” United States v. Mohrbacher,
`182 F.3d 1041, 1048 (9th Cir. 1999). Black’s Law Dictionary
`defines “authorize” as “1. To give legal authority; to
`empower” and “2. To formally approve; to sanction.”
`Authorize, Black’s Law Dictionary (10th ed. 2014). Because
`17 U.S.C. § 107 both “empowers” and “formally approves”
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`13
`
`the use of copyrighted material if the use constitutes fair use,
`fair use is “authorized by the law” within the meaning of
`§ 512(c). See also 17 U.S.C. § 108(f)(4) (“Nothing in this
`section in any way affects the right of fair use as provided by
`section 107 . . . .” (emphasis added)).
`
`Universal’s sole textual argument is that fair use is not
`“authorized by the law” because it is an affirmative defense
`that excuses otherwise infringing conduct. Universal’s
`interpretation is incorrect as it conflates two different
`concepts: an affirmative defense that is labeled as such due to
`the procedural posture of the case, and an affirmative defense
`that excuses impermissible conduct. Supreme Court
`precedent squarely supports the conclusion that fair use does
`not fall into the latter camp: “[A]nyone who . . . makes a fair
`use of the work is not an infringer of the copyright with
`respect to such use.” Sony Corp. of Am. v. Universal City
`Studios, Inc., 464 U.S. 417, 433 (1984).
`
`Given that 17 U.S.C. § 107 expressly authorizes fair use,
`labeling it as an affirmative defense that excuses conduct is
`a misnomer:
`
`Although the traditional approach is to view
`“fair use” as an affirmative defense, . . . it is
`better viewed as a right granted by the
`Copyright Act of 1976. Originally, as a
`judicial doctrine without any statutory basis,
`fair use was an infringement that was
`excused—this is presumably why it was
`treated as a defense. As a statutory doctrine,
`however, fair use is not an infringement.
`Thus, since the passage of the 1976 Act, fair
`use should no longer be considered an
`
`
`
`14
`
`LENZ V. UNIVERSAL MUSIC
`
`infringement to be excused; instead, it is
`logical to view fair use as a right. Regardless
`of how fair use is viewed, it is clear that the
`burden of proving fair use is always on the
`putative infringer.
`
`Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 n.22 (11th
`Cir. 1996); cf. Lydia Pallas Loren, Fair Use: An Affirmative
`Defense?, 90 Wash. L. Rev. 685, 688 (2015) (“Congress did
`not intend fair use to be an affirmative defense—a defense,
`yes, but not an affirmative defense.”). Fair use is therefore
`distinct from affirmative defenses where a use infringes a
`copyright, but there is no liability due to a valid excuse, e.g.,
`misuse of a copyright, Practice Management Information
`Corp. v. American Medical Ass’n, 121 F.3d 516, 520 (9th Cir.
`1997), and laches, Danjaq LLC v. Sony Corp., 263 F.3d 942,
`950–51 (9th Cir. 2001).
`
`Universal concedes it must give due consideration to
`other uses authorized by law such as compulsory licenses.
`The introductory language in 17 U.S.C. § 112 for compulsory
`licenses closely mirrors that in the fair use statute. Compare
`17 U.S.C. § 112(a)(1) (“Notwithstanding the provisions of
`section 106, . . . it is not an infringement of copyright for a
`transmitting organization entitled to transmit to the public a
`performance or display of a work . . . to make no more than
`one copy or phonorecord of a particular transmission program
`embodying the performance or display . . . .”), with id. § 107
`(“Notwithstanding the provisions of sections 106 and 106A,
`the fair use of a copyrighted work . . . is not an infringement
`of copyright.”). That fair use may be labeled as an affirmative
`defense due to the procedural posture of the case is no
`different than labeling a license an affirmative defense for the
`same reason. Compare Campbell v. Acuff-Rose Music, Inc.,
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`15
`
`510 U.S. 569, 573 & n.3, 590 (1994) (stating that “fair use is
`an affirmative defense” where the district court converted a
`motion to dismiss based on fair use into a motion for
`summary judgment), with A&M Records, Inc. v. Napster,
`Inc., 239 F.3d 1004, 1025–26 (9th Cir. 2001) (“Napster
`contends that . . . the district court improperly rejected valid
`affirmative defenses of . . . implied license . . . .”). Thus,
`Universal’s argument that it need not consider fair use in
`addition to compulsory licenses rings hollow.
`
`Even if, as Universal urges, fair use is classified as an
`“affirmative defense,” we hold—for the purposes of the
`DMCA—fair use is uniquely situated in copyright law so as
`to be treated differently than traditional affirmative defenses.
`We conclude that because 17 U.S.C. § 107 created a type of
`non-infringing use, fair use is “authorized by the law” and a
`copyright holder must consider the existence of fair use
`before sending a takedown notification under § 512(c).
`
`C
`
`We must next determine if a genuine issue of material
`fact exists as to whether Universal knowingly misrepresented
`that it had formed a good faith belief the video did not
`constitute fair use. This inquiry lies not in whether a court
`would adjudge the video as a fair use, but whether Universal
`formed a good faith belief that it was not. Contrary to the
`district court’s holding, Lenz may proceed under an actual
`knowledge theory, but not under a willful blindness theory.
`
`1
`
`Though Lenz argues Universal should have known the
`video qualifies for fair use as a matter of law, our court has
`
`
`
`16
`
`LENZ V. UNIVERSAL MUSIC
`
`already decided a copyright holder need only form a
`subjective good faith belief that a use is not authorized. Rossi
`v. Motion Picture Ass’n of Am. Inc., 391 F.3d 1000 (9th Cir.
`2004). In Rossi, we explicitly held that “the ‘good faith
`belief’ requirement in § 512(c)(3)(A)(v) encompasses a
`subjective, rather than objective standard.” Id. at 1004. We
`further held:
`
`In § 512(f), Congress included an expressly
`limited cause of action
`for
`improper
`infringement notifications, imposing liability
`only if the copyright owner’s notification is a
`knowing misrepresentation. A copyright
`owner cannot be liable simply because an
`unknowing mistake is made, even if the
`copyright owner acted unreasonably
`in
`making the mistake. Rather, there must be a
`demonstration of some actual knowledge of
`misrepresentation on the part of the copyright
`owner.
`
`Id. at 1004–05 (citations omitted). Neither of these holdings
`are dictum. See United States v. Johnson, 256 F.3d 895, 914
`(9th Cir. 2001) (en banc) (“[W]here a panel confronts an
`issue germane to the eventual resolution of the case, and
`resolves it after reasoned consideration in a published
`opinion, that ruling becomes the law of the circuit, regardless
`of whether doing so is necessary in some strict logical
`sense.”).
`
`As a result, Lenz’s request to impose a subjective
`standard only with respect to factual beliefs and an objective
`standard with respect to legal determinations is untenable.
`Such a
`request grafts an objective standard onto
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`17
`
`§ 512(c)(3)(A)(v) directly in contravention to Rossi. See
`Rossi, 391 F.3d at 1004 (“When enacting the DMCA,
`Congress could have easily incorporated an objective
`standard of reasonableness. The fact that it did not do so
`indicates an intent to adhere to the subjective standard
`traditionally associated with a good faith requirement.”). We
`therefore judge Universal’s actions by the subjective beliefs
`it formed about the video.
`
`2
`
`Universal faces liability if it knowingly misrepresented in
`the takedown notification that it had formed a good faith
`belief the video was not authorized by the law, i.e., did not
`constitute fair use. Here, Lenz presented evidence that
`Universal did not form any subjective belief about the video’s
`fair use—one way or another— because it failed to consider
`fair use at all, and knew that it failed to do so. Universal
`nevertheless contends that its procedures, while not formally
`labeled consideration of fair use, were tantamount to such
`consideration. Because the DMCA requires consideration of
`fair use prior to sending a takedown notification, a jury must
`determine whether Universal’s actions were sufficient to form
`a subjective good faith belief about the video’s fair use or
`lack thereof.
`
`To be clear, if a copyright holder ignores or neglects our
`unequivocal holding that it must consider fair use before
`sending a takedown notification, it is liable for damages
`under § 512(f). If, however, a copyright holder forms a
`subjective good faith belief the allegedly infringing material
`does not constitute fair use, we are in no position to dispute
`the copyright holder’s belief even if we would have reached
`the opposite conclusion. A copyright holder who pays lip
`
`
`
`18
`
`LENZ V. UNIVERSAL MUSIC
`
`service to the consideration of fair use by claiming it formed
`a good faith belief when there is evidence to the contrary is
`still subject to § 512(f) liability. Cf. Disney Enters., Inc. v.
`Hotfile Corp., No. 11-cv-20427, 2013 WL 6336286, at *48
`(S.D. Fla. Sept. 20, 2013) (denying summary judgment of
`§ 512(f) counterclaim due to “sufficient evidence in the
`record to suggest that [Plaintiff] Warner intentionally targeted
`files it knew it had no right to remove”); Rosen v. Hosting
`Servs., Inc., 771 F. Supp. 2d 1219, 1223 (C.D. Cal. 2010)
`(denying summary judgment of § 512(f) counterclaim where
`the takedown notification listed four URL links that did not
`contain content matching the description of the purportedly
`infringed material); Online Policy Grp. v. Diebold, Inc.,
`337 F. Supp. 2d 1195, 1204–05 (N.D. Cal. 2004) (“[T]here is
`no genuine issue of fact that Diebold knew—and indeed that
`it specifically intended—that its letters to OPG and
`Swarthmore would result in prevention of publication of that
`content. . . . The fact that Diebold never actually brought suit
`against any alleged infringer suggests strongly that Diebold
`sought to use the DMCA’s safe harbor provisions—which
`were designed to protect ISPs, not copyright holders—as a
`sword to suppress publication of embarrassing content rather
`than as a shield to protect its intellectual property.”).
`
`strictures of
`the
`comply with
`to
`In order
`§ 512(c)(3)(A)(v), a copyright holder’s consideration of fair
`use need not be searching or intensive. We follow Rossi’s
`guidance that formation of a subjective good faith belief does
`not require investigation of the allegedly infringing content.
`See 391 F.3d at 1003, 1005. We are mindful of the pressing
`crush of voluminous infringing content that copyright holders
`face in a digital age. But that does not excuse a failure to
`comply with the procedures outlined by Congress. Cf. Lenz,
`572 F. Supp. 2d at 1155 (“[I]n the majority of cases, a
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`19
`
`consideration of fair use prior to issuing a takedown notice
`will not be so complicated as to jeopardize a copyright
`owner’s ability to respond rapidly to potential infringements.
`The DMCA already requires copyright owners to make an
`initial review of the potentially infringing material prior to
`sending a takedown notice; indeed, it would be impossible to
`meet any of the requirements of Section 512(c) without doing
`so. A consideration of the applicability of the fair use
`doctrine simply is part of that initial review.”).
`
`the
`that
`judgment,
`We note, without passing
`implementation of computer algorithms appears to be a valid
`and good faith middle ground for processing a plethora of
`content while still meeting the DMCA’s requirements to
`somehow consider fair use. Cf. Hotfile, 2013 WL 6336286,
`at *47 (“The Court . . . is unaware of any decision to date that
`actually addressed the need for human review, and the statute
`does not specify how belief of infringement may be formed
`or what knowledge may be chargeable to the notifying
`entity.”). For example, consideration of fair use may be
`sufficient if copyright holders utilize computer programs that
`automatically identify for takedown notifications content
`where: “(1) the video track matches the video track of a
`copyrighted work submitted by a content owner; (2) the audio
`track matches the audio track of that same copyrighted work;
`and (3) nearly the entirety . . . is comprised of a single
`copyrighted work.” Brief for The Org. for Transformative
`Works, Public Knowledge & Int’l Documentary Ass’n as
`Amici Curiae Supporting Appellee at 29–30 n.8 (citing the
`Electronic Frontier Foundation website (link unavailable)).
`
`Copyright holders could then employ individuals like
`Johnson to review the minimal remaining content a computer
`program does not cull. See Brief for The Recording Indus.
`
`
`
`20
`
`LENZ V. UNIVERSAL MUSIC
`
`Ass’n of Am. as Amici Curiae Supporting Appellants at 15
`(“[T]he RIAA has an entire department dedicated to
`identifying infringement and issuing takedown requests.”);
`see also Hotfile, 2013 WL 6336286, at *14. During oral
`argument Universal explained that service providers now use
`screening algorithms. However, we need not definitively
`decide the issue here because Universal did not proffer any
`evidence that—at the time it sent the takedown notification to
`Lenz—it used a computer program to identify potentially
`infringing content.
`
`3
`
`We hold the willful blindness doctrine may be used to
`determine whether a copyright holder “knowingly materially
`misrepresent[ed]” that it held a “good faith belief” the
`offending activity was not a fair use. See 17 U.S.C.
`§ 512(c)(3)(A)(v), (f). “[T]he willful blindness doctrine may
`be applied, in appropriate circumstances, to demonstrate
`knowledge or awareness of specific instances of infringement
`under the DMCA.” Viacom Int’l, Inc. v. YouTube, Inc.,
`676 F.3d 19, 35 (2d Cir. 2012) (interpreting how a party can
`establish the “actual knowledge”—a subjective belief—
`required by § 512(c)(1)(A)(I)); see also UMG Recordings,
`Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006, 1023
`(9th Cir. 2013) (“Of course, a service provider cannot
`willfully bury its head in the sand to avoid obtaining such
`specific knowledge.” (citing Viacom, 676 F.3d at 31)). But,
`based on the specific facts presented during summary
`judgment, we reject the district court’s conclusion that Lenz
`may proceed to trial under a willful blindness theory.
`
`To demonstrate willful blindness a plaintiff must establish
`two factors: “(1) the defendant must subjectively believe that
`
`
`
`LENZ V. UNIVERSAL MUSIC
`
`21
`
`there is a high probability that a fact exists and (2) the
`defendant must take deliberate actions to avoid learning of
`that fact.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S.
`Ct. 2060, 2070 (2011). “Under this formulation, a willfully
`blind defendant is one who takes deliberate actions to avoid
`confirming a high probability of wrongdoing and who can
`almost be said to have actually known the critical facts.” Id.
`at 2070–71. To meet the Global-Tech test, Lenz must
`demonstrate a genuine issue as to whether—before sending
`the
`takedown notification—Universal (1) subjectively
`believed there was a high probability that the video
`constituted fair use, and (2) took deliberate actions to avoi
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