United States District Court, D. Delaware
GREGORY M. SLEET, District Judge.
On July 30, 2009, Square Ring, Inc. ("Square Ring") filed suit against John Does 1-10, UStream.TV Inc., and UStream.TV.COM ("UStream") seeking damages and injunctive relief for copyright infringement under the Copyright Act, 17 U.S.C. § 101, et seq., and common law Trademark infringement (D.I. 1 at ¶ 6.) In its complaint, Square Ring alleged that on March 21, 2009, UStream disseminated a copyrighted boxing and mixed martial arts broadcast owned by Square Ring. ( Id. ¶¶ 3-5.) Square Ring further alleged, among other things, that UStream did not immediately remove or disable access to the broadcast after Square Ring made a demand. ( Id. ¶ 5.) On July 13, 2013, UStream filed a motion for summary judgment in which it argued that, under the safe harbor provisions of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512, it is immune from monetary liability for copyright infringement. (D.I. 100.)
Presently before this court is UStream's Motion for Summary Judgment. (D.I. 100.)
Square Ring is a Florida-based and Delaware-incorporated boxing promotional company that is majority owned by boxer Roy Jones, Jr. (D.I. 1 at ¶ 1.) Square Ring acquires rights to boxing matches from fighters to promote boxing events. ( Id. ) Such promotion includes selling tickets to the public and licensing rights to television networks to distribute the event, on a pay-per-view basis, to residential purchasers and/or on a closed circuit basis to bars and restaurants for commercial exhibition in public venues. ( Id. ) Square Ring is the copyright owner of the complete March 21, 2009, boxing and mixed martial arts ("MMA") broadcast featuring Roy Jones, Jr., vs. Omar Sheika, including all of its undercard events and all other portions of the broadcast (the "March 21 Broadcast"). ( Id. ¶ 3.)
UStream is a Delaware corporation that describes itself as "a user-generated content website, allowing millions throughout the world to freely view and share a wide variety of content ranging from news, politics, music, entertainment, education, and personal events through its site and services." (D.I. 101 at 2.) Each month, UStream's users broadcast approximately 1, 488, 554 live streams and 429, 157 recorded broadcasts. (Declaration of Sheryl Zapanta ("Zapanta Deel.") at ¶ 2.) Before any of UStream's users are permitted to broadcast or share content on Ustream's website, they must register with UStream by providing an email address, user name, and password. Users must also read and agree to UStream's Terms of Service before they are allowed to register.  ( Id. ) (Declaration of Suzanna Tran ("Tran Decl.") at ¶ 2; Zapanta Decl. at ¶ 3.)
During the relevant period, UStream also maintained a Copyright and IP Policy ("Copyright Policy"), publicly available and accessible on UStream's website. (Tran Decl. at ¶ 3; Zapanta Decl. at ¶ 4.) The Copyright Policy provides information and a means by which copyright owners can report alleged infringement to UStream's designated copyright agent pursuant to the Digital Millennium Copyright Act ("DMCA"), including by emailing the requisite DMCA notice information to UStream. ( Id. ) Copyright owners are instructed to submit a list of the copyrighted works and to identify the URL where the allegedly infringing content can be found. ( Id. )
Since 2008, a team of UStream employees (hereinafter, "Content Monitoring Team") located in the San Francisco Bay Area and in Budapest, Hungary has actively monitored and responded to incoming copyright infringement notices. (Tran Decl. at ¶ 4.) First, the Team reviews each incoming notice to make sure that it includes the requisite DMCA information listed in UStream's Copyright Policy. (Tran Decl. at ¶ 4; Zapanta Decl. at ¶ 5.) If the notice does not contain the requisite DMCA information, then an employee will promptly respond to the complainant by email, asking the notice be supplemented with the missing information. ( Id. )
In anticipation of the potential for internet piracy of the March 21 Broadcast, counsel for Square Ring sent a Notice of Infringement to the authorized Copyright Agent for UStream on March 17, 2009. (D.I. 102-1 at 19.) This first notice included a written demand that any and all access to the March 21 Broadcast on UStream be blocked prior to its exhibition or, in the alternative, that Square Ring be provided with a removal tool or that appropriate staffing be made available by UStream so that, "immediately upon notification" by Square Ring, UStream would be able to delete the unauthorized distribution of the March 21 Broadcast. ( Id. at 14-15.) A member of UStream's Content Monitoring Team responded to Square Ring the same day requesting that it "provide the specific channel information and/or include the channel URL, in order for the copyright team to accurately identify the location of the stream." ( Id. at 19.)
In an email to UStream dated March 18, 2009, counsel for Square Ring reiterated his request and further demanded that "my client be given a tool to simultaneously manage infringing content on your site or immediate access to a contact at your company who will be made available on March 21st to ensure that all offending materials are promptly removed." (D.I. 102-1 at 18.) In a subsequent email, counsel for Square Ring also reiterated that, "[y]our failure to act will lead to my client taking all legal measure to protect their interests and we are once again notifying you that your actions or, in this case inactions will lead to a waiver of any safe harbor protection that may have been afforded to you...." (D.I. 128-6 at 2.) As a result of Square Ring's emails, UStream employees ran targeted keyword searches across the website and responded by stating that they had "expeditiously removed or disabled material" identified in response to Square Ring's communications. (D.I. 102-1 at 18.) Counsel for Square Ring sent an email with "FOURTH INFRINGEMENT NOTICE" as the subject line on March 20, which again lacked specific URL or channel identification. (D.I. 128-6 at 2.) The email stated that UStream has "not provided any response to [Square Ring's] request that [UStream] either provide us with a take down tool' or appropriate staffing with the ability to simultaneously remove infringing content from your site." ( Id. )
On Saturday, March 21, 2009, Square Ring's third party monitoring agent delivered notices to UStream's designated copyright agent identifying three URLs streaming broadcasts of the March 21 Broadcast. (Tran Decl. at ¶ 7.) UStream concedes that these notices were DMCA-compliant and sent at 6:26 p.m., 7:13 p.m., and 9:33 p.m. (PST). ( Id. ) On Monday, March 23, 2009, UStream disabled the three channels that had broadcast the March 21 Broadcast. ( Id. ) UStream responded to Square Ring's designated agent at 7:53 p.m. and 7:55 p.m. (PST) on the evening of March 23, informing them that the content on the three infringing channels, to the extent it was still available on UStream's website, had been removed. ( Id. )
III. STANDARD OF REVIEW
Federal Rule of Civil Procedure 56(c) provides for summary judgment when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." See also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585 n.10 (1986). A fact is material if it "could affect the outcome" of the proceeding. Lamont v. New Jersey, 63 7 F.3d 177, 181 (3d Cir. 2011). There is a genuine issue "if the evidence is sufficient to permit a reasonable jury to return a verdict for the non-moving party." Id. When determining whether a genuine issue of material fact exists, the district court must view the evidence in a light most favorable to the nonmoving party and draw inferences in that party's favor. See Wishkin v. Potter, 476 F.3d 180, 184 (3d ...