Quinn Emanuel Protects DMCA’s Core Safe Harbor Provisions From Overreach

John is joined by Todd Anten, partner in Quinn Emanuel’s New York office and co-chair of the firm’s Trademark, Copyright, and Trade Secret practices, and Owen F. Roberts, partner in Quinn Emanuel’s New York office. They discuss a sixteen-year copyright dispute involving two appeals to the Second Circuit that centered on the scope of the Digital Millennium Copyright Act’s safe harbor provision. The plaintiffs were major music publishers and recording companies that own the copyrights to some of the world’s most famous songs. The defendant, represented by a Quinn Emanuel team led by Todd and Owen, was Vimeo, a popular video hosting and video sharing platform. The plaintiffs alleged that Vimeo should be held liable for copyright infringement based on users who posted videos incorporating the plaintiffs’ music without permission. The core issue was whether Vimeo was protected by the DMCA’s safe harbor provisions, which shield platforms such as Vimeo from copyright liability for the acts of their users as long as they comply with certain requirements.

Among those requirements are that: (1) the platform does not have “the right or ability to control” allegedly infringing activity; and (2) the platform removes user-posted videos upon receiving sufficient knowledge of infringement, for example, the receipt of a DMCA notice from the copyright holder, or “red flag” knowledge that a video is obviously infringing. The plaintiffs argued that Vimeo did not satisfy these requirements. First, they argued that Vimeo’s voluntary internal moderation practices, such as the removal of unwanted videos, demonstrated that Vimeo controlled users’ infringing activity. Second, although the plaintiffs never sent Vimeo a DMCA takedown notice, they argued that Vimeo staff’s awareness that certain videos contained famous songs was enough to raise an inference of Vimeo’s “red flag” knowledge, imposing a duty on Vimeo staff to remove such videos on sight. In its defense, Vimeo argued that voluntary removal of unwanted videos (for example, bullying, sexual content, or advertising) did not disqualify it from safe harbor eligibility because it is consistent with the sort of moderation that Congress encouraged in the statute. Vimeo further argued that an ordinary Vimeo employee could not reasonably know whether a video is “obviously” infringing on sight and that the plaintiffs were in fact seeking an end-run around the DMCA notice-and-takedown regime.

The Second Circuit agreed with Vimeo. It first concluded in 2016 that mere awareness that a video contains a famous song is not enough to show that it is obviously infringing; it could be authorized or a fair use, which are fact-intensive determinations. As the Court noted, even judges and copyright scholars have difficulty assessing the boundaries of fair use. The Court emphasized that copyright holders were not without remedy—they could send DMCA takedown notices for expeditious removal, which is the deliberate bargain that Congress struck. In 2025, the Second Circuit further ruled that a platform does not forfeit safe harbor by voluntarily removing unwanted videos, as such activity does not rise to providing “substantial influence” in the creation of infringing videos, and such moderation is inherent in promoting the advancement of technology.

These outcomes reinforce the importance of the DMCA’s statutory notice-and-takedown regime, and underscore that a copyright holder’s desire for a new system is an issue to bring to Congress, not to the courts.

Podcast Link: Law-disrupted.fm
Host: John B. Quinn 
Producer: Alexis Hyde
Music and Editing by: Alexander Rossi

Transcript

Note: This transcript is generated from a recorded conversation and may contain errors or omissions. It has been edited for clarity but may not fully capture the original intent or context. For accurate interpretation, please refer to the original audio. 

JOHN QUINN: I’m John Quinn, and this is Law, disrupted, and today we are going to be talking about the Digital Millennium Copyright Act in a case that had a history of 16 years, including two appeals to the Second Circuit. We're gonna be talking to two of my partners, Todd Anten and Owen Roberts, who are in our New York office.

Guys, couldn't you get rid of this case any sooner than 16 years?

TODD ANTEN: And that was only for the DMCA affirmative defense. We never even got to liability.

JOHN QUINN: Wow. So this, I'm sure this, there's quite a history here and we won't be able to cover all of it, but, you know, set the stage for us, who were the parties to this case, and basically what were the claims, and I'll let you two decide who's gonna cover which question and answer.

TODD ANTEN: Sure. I have been on the case since the very beginning of 2009, so I'm happy to deal with the historical questions like that. There are two sets of parties here; one are the music publishers and the other is the record label, the ones who own the sound recording. So they each filed a claim that was consolidated, but basically we just called them the music companies, we call them Capitol Records for short because that's one of the plaintiffs.

JOHN QUINN: The music industry is the plaintiff here, essentially.

TODD ANTEN: Essentially, yes.

JOHN QUINN: We represented the defendant, which was who?

TODD ANTEN: The defendant is Vimeo, if you've heard of it. It is similar to YouTube.

JOHN QUINN: Yeah, I've heard of it. I'm not sure I understand exactly what it is.

TODD ANTEN: It is a video hosting platform where users can post their videos that they like to share with friends, family, and with the world. And the difference between Vimeo and a platform like YouTube is that Vimeo has a requirement that only your own original videos can be posted. You can't post other people's work.

And Vimeo felt very strongly that made it a unique community.

JOHN QUINN: So what could go wrong here? That sounds pretty straightforward. Owen, what was the industry's beef here?

OWEN ROBERTS: You know, I think it really comes down to that aspect of Vimeo that Todd was just talking about, the fact that it has a particular experience it wants to give users. And because of that, it has guidelines. It takes down material that doesn't meet those guidelines. Eight hours of someone playing a video game or you know, someone posting a movie trailer or something like that.

And because Vimeo was very involved in X box, you know, after users had posted things, checking and making sure whether it fit the guidelines or not, the music industry saw that as an opportunity to say that Vimeo had the right and ability to control its users' actions, which is one of the ways you can lose the safe harbor that Congress has given to online platforms against claims of copyright infringement through the DMCA.

JOHN QUINN: Well, tell us about the DMCA and what this safe harbor is.

OWEN ROBERTS: Sure. So basically Congress acted with an eye towards all types of online hosting platforms that have that host user works, whether it's, you know, posting it up on YouTube, putting an image on Facebook, something like that. And in order to not make all of those platforms basically strictly liable for copyright infringement by their users, Congress gave a safe harbor as long as platforms did certain actions.

Those actions included expeditiously taking down any works that you're notified or copyright infringement and then not acting, basically to control your users, to direct them, to put up copyright infringing works through having the right ability to control them. There's some other exceptions, but those are some of the major ones, and Congress gave right holders the ability to very quickly get material taken down in exchange for giving the platforms this safe harbor.

JOHN QUINN: So basically, the platform is gonna be in the clear, so long as it's not found to have, you know, exercised some type of control over what's posted and what's not posted, and as long as it responded to take down requests. Is that essentially the idea? 

OWEN ROBERTS: That's exactly right. There's also a, you can also lose your safe harbor if you have red flag or actual knowledge of the infringement. So you know, if you know that there are infringing works and you don't do anything about it, then you can also lose your safe harbor, but the two ways that you just lined up are the major ones.

JOHN QUINN: So I'm sure a lot of people have heard of section two 30 of the Communications Decency Act. How is this different? How is the Digital Millennium Copyright Act different? It sounds very similar.

TODD ANTEN: Sure. The Digital Millennium Copyright Act is specifically and only for copyright infringement liability. In fact, it is a statute that is baked within the Copyright Act. The Communications Decency Act, or the CDA is focused on third party content. That constitutes what we think of as more traditional state tort, like liable or defamation or negligence.

So it's a completely different set of claims. You can't bring a CDA claim for copyright infringement, for example. So there are just two separate regimes to deal with, two separate types of problems.

JOHN QUINN: With a similar system, like there's immunity in the Decency Act for tort activity provided that you're not involved in it and you respond to take down requests and the like. That structure sounds similar under the DCMA.

TODD ANTEN: Right. This, my understanding is that the CDA doesn't have this strict form of technical takedown notice procedure, that procedure that's part of the statute under the DMCA. It's actually part of the statute of what a takedown notice must include and what acts you must do in order to save yourself from liability in following a DMCA notice.

So it's very regimented. And part of what's important about this particular case is that the music industry has this grab bag of potential remedies, including DMCA notices in order to get their materials down from sites such as Vimeo or others. And Vimeo complied with these procedures. When it received take down notices, it would take down the videos.

Here, the plaintiffs did not send takedown notices for the videos that had accused Vimeo of being infringing.

JOHN QUINN: Was some videos that were posted, presumably of music?

TODD ANTEN: Including music. It wasn't just pure music, but it incorporated music. 

JOHN QUINN: That's right, and, and so they said this was infringing, so seems real simple. Why don't they just send a take down notice or what happened?

TODD ANTEN: That would've saved us our 16 years of litigation. Exactly. And that's part of the front argument of our current claim for attorney's fees. But our position in this case has been that they were trying to avoid the rigors of using the DMCA because the music companies were honestly sick of sending out tons of tons of DMCA notices to various platforms.

And so in our view, they were trying to skirt around that requirement by claiming that Vimeo should have proactively looked for and removed these videos without even getting a DMCA notice because its staff had seen the videos and because the staff had seen the videos and knew that they had popular music, they should have proactively taken it down even without a DMCA notice.

That's how we got here.

JOHN QUINN: If that position had been accepted, that would seem to have really gutted the DCMA.

TODD ANTEN: From your mouth to the Second Circuit. That's exactly what the second circuit said. That it may be that the music companies are not happy with the bargain that Congress set forth about DMCA notices, but that's what they set up and to do so otherwise would effectively dismantle the entire purpose of the DMCA notice and take down these procedures.

JOHN QUINN: So this was a strategic decision apparently by the music industry because they found this whole process of sending take down notices just to be too burdensome.

TODD ANTEN: I won't get into their minds, but I will say that in their attorney's fees motion, they referred to it as Whack-a-Mole. They've, it seems very clear to us that that was always an underlying feature of this particular lawsuit to try to move the needle as to their burden to send DMCA notices that they just found to be just overwhelming.

JOHN QUINN: Well, Owen, tell us what were the strategic decisions that you made in defending this case that got you to the right.

OWEN ROBERTS: Some of the major strategic decisions happened before I was on the case, before I was at Quinn Emanuel, before I went to law school. So, you know, I, but I'll tell you what I've learned.

JOHN QUINN: You were here at the time of victory, so you definitely, you're, in your career, you're gonna be blamed for a lot of things that you aren't responsible for. You should certainly take credit here.

OWEN ROBERTS: That's good advice and I will you know, I think one of the major dividing points in this litigation was right at the very start when Todd and the other Quinn Emanuel people, Jessica Rose, Rachel Kassabian, who are running this case convinced the court and convinced the plaintiffs to split off DMCA discovery from all other discovery.

And so we in 16 years, we never got into discovery about who owned these copyrighted works or any of the basics that would normally happen in a copyright infringement case. Instead, it was totally focused on the DMCA way, a place where, you know, was gonna provide us with the affirmative defense to win.

And that was salting that we focused on discovery because of that, on our part was very, very focused. We only took two 30 B six depositions, two depositions in 16 years. The other side took all their full assortment of depositions, they put in hundreds and hundreds of pages on every summary, judgment ruling and brief things over and over and over again.

Whereas we were able to be very focused on the DMCA issues.

JOHN QUINN: So was there a summary judgment ruling then at the trial court?

OWEN ROBERTS: Twice. There was initially a summary judgment ruling, kind of splitting the difference you know, finding tribal issues as some issues finding that we had no DMCA protection at whatsoever for pre 1972 sound recordings. And that went up on interlocutory appeal, where we ran the table and. All of the videos, you know, are within the DMCA window for safe harbor, and got a ruling from the second Circuit that was going to be very hard for the other side to meet in order to show the type of red flag knowledge of copyright infringement that was required.

Basically, it has to be obviously, infringing to any ordinary person. And if they couldn't meet that, then they couldn't proceed. So we went back down for another several years of further motion practice where we finally won everything on summary judgment leading to the second appeal.

JOHN QUINN: So what would be obviously infringing. What would meet that kind of standard? The folks at Vimeo, I guess the industry's position was, it was obviously infringing. You should have known.

OWEN ROBERTS: Yeah. The Second Circuit's most recent decision gave a lot of good explanation for why that is such a hard standard to meet because there's obviously fair use considerations and the idea that any, almost any work could be seen as obviously not fair use. It's pretty out there given how much it can divide even Supreme Court justices on whether something's fair use or not.

So in short, you know, the Second Circuit's most recent decision made clear that it's incredibly difficult for a person to find something obviously infringing because whether something is fair use or not. And all of these videos had additional visual content. They were not just black screens with a, like an artist's name or something like that.

Whether that's transform, whether that's transformative and fair use, very difficult to tell. And whether someone has authorization from the artist to use work is incredibly difficult to tell from the perspective of an online host. So for both of those reasons, it's there's, you know, at least in this case, there was no work that could be deemed to have even a tribal issue as to whether it was obviously infringing.

JOHN QUINN: I mean, what, suppose if this decision had come out the other way? I mean, what would that have meant for the platforms like Vimeo?

OWEN ROBERTS: Yeah. Yeah. So I mean, there would've been, it would've depended on how we, how it came out the other way. But if the, if they had deemed Vimeo to have the right or ability to control these users and therefore lose its safe harbor it would've put platforms in a really impossible position where they basically had to choose between either moderating at all, removing nudity, removing gore, removing bullying and then being strictly liable for everything that's left on the platform. 

Or just saying our platform is the Wild West. We are literally nothing other than a place where you can post things, post anything you want. And that's clearly not the choice that Congress intended to put platforms to in creating the safe harbor.

JOHN QUINN: So the industry's position was, it should have been obvious to you that these, this was copyright infringement and did they point to some things that Vimeo did, that suggested Vimeo had some ability to control that Vimeo was involved in controlling what was posted?

TODD ANTEN: And you might wanna take the control. I can talk about the steps that plaintiffs took about red flag knowledge.

JOHN QUINN: Let me ask this Todd, did the plaintiffs take the position that Vimeo had red flag knowledge that these were infringing?

TODD ANTEN: Absolutely on remand. The Second Circuit had allowed the plaintiffs to submit discovery to show that Vimeo or its employees had expertise or experience in music or copyright such that it would have been obvious to such a person that each one of these videos was obviously infringing, and they tried to do it in all sorts of ways, including by showing that the entirety of the song was in the video that staff commented on the name of the song in the video and saying, I love that song. They tried to point to experience that employees had in licensing music for their own personal videos to show that they understand how licensing works. 

They pointed to Vimeo's FAQ page, which said that using other people's copyrighted material in videos is generally, although not always, infringing. So they tried to show that Vimeo had an understanding of that boundary between what is and what is not infringing. That still wasn't enough for the Second Circuit because the Second Circuit said these are all intensively fact specific inquiries. You have to look at it video by video, you can't just take a 50,000 foot look and say that Vimeo generally knows what infringement is. Something that the second circuit pointed to is that even judges aren't sure what fair use is. There was the Andy Warhol case that they pointed to that recently came out, that showed that people are still unsure about what constitutes fair use and what doesn't.

And if the Second Circuit doesn't know, how could you say that it's obvious to a Vimeo employee. One other thing that came out of this is that by watching a video on Vimeo, you can't know whether that person got permission or authorization. There are lots of ways to get authorization, and in fact, one of the videos that the plaintiffs originally had in this case was posted by the band itself if they later removed it, showing that this is not just a simple inquiry if anybody can just watch a video and know what kind of authorization or permission is given.

JOHN QUINN: You won in the second circuit in the second appeal. Was that an appeal from a summary judgment in your favor?

TODD ANTEN: Yes.

JOHN QUINN: And so basically after that were there any other proceedings on liability or did you just go then straight to attorney's fees in the district court?

TODD ANTEN: We went straight to attorney's fees for an interesting reason. There were a few videos out of the 1500 that were asserted here, which by the way could have exposed Vimeo to over $200 million in statutory damages. There were a small handful of videos that were posted by Vimeo employees and that raised according to the district court, an issue of fact about whether this constituted what's called storage at the direction of a user, which is one of the requirements for safe harbor.

It has to be that you are passively hosting third party content. What if it's a Vimeo employee who posted it? Is that passive third party content hosting or not? The judge said that there's an issue of fact on that, but as part of expediting, if you can believe it, in the 16-year case, the Second Circuit appeal, the plaintiffs here agreed to stipulate to dismiss all of those with prejudice in order to get to the second appeal faster.

And so now those are all gone because we ran the table on the second circuit, second time, and right now we are just waiting for a ruling on our motion for attorney's fees.

JOHN QUINN: And I assume your motion for attorney's fees cites the 16-year history and the fact that this all could have been avoided if the industry had simply said, take down notices.

OWEN ROBERTS: You could have written it for us. We could have gotten you on the brief. Yeah, exactly. I think that's exactly the point that we made. Copyright law has a specific provision allowing this type of fee shifting in both directions for plaintiffs and for defendants. So it's not, you know, under the normal American rule where everyone bears their own fees.

And really, Vimeo was a test case that was singled out by the record labels and made to bear the entire burden of basically not just protecting this for video hosting sites, but for all types of hosting sites and all types of online platforms. And the lean mean Quinn Emanuel team litigated this case extremely efficiently.

Our attorney's fees request is for far less than you might think after 16 years.

JOHN QUINN: I hate to be crass, but can you say what we are seeking in attorney's fees? I assume it's a matter of public record.

TODD ANTEN: It is, it's in our brief and it is just under $6 million.

JOHN QUINN: A bargain. I'm amazed.

TODD ANTEN: I think so.

JOHN QUINN: You could do this for that much.

TODD ANTEN: For two appeals, two summary judgements, 16 years of litigation.

OWEN ROBERTS: All against the background of $250 million of liability if this came out the other way.

JOHN QUINN: I'm ready to rule. I'm ready to rule. I think there should be an upward adjustment. Well, this is a fantastic result. Congratulations to both of you. Any other takeaways from this case that you think might be interesting to our audience? I mean, this whole take down process is, it is frankly kind of cumbersome, isn't it?

I mean, platforms are deluged with these kind of requests. Does it work really in practice? Are there any alternatives? Any thoughts on that or anything else? Any other takeaways from this?

TODD ANTEN: I'm happy to talk about that part. One of the takeaways is that technology advances faster than the law and the DMCA, some say, was already out of date at the moment it was passed because technology moves so quickly. But nowadays, to the extent that, if there's any kind of burden for putting together DMCA notices, there are so many automated robots and programs that people can avail themselves of if they want to search for and send DMCA notices, as long as they follow the strictures of the DMCA program and that they say under oath that they have a good fake belief that's infringing, et cetera.

Not only that websites are now usually programmed to accept DMCA notices many allow you to upload multiple DMCA notices, multiple notices at a time to bulk upload them because they want to get their safe harbor protection. It's in their interest to be able to accommodate DMCA notices. But I think that one takeaway is that technology is so advanced right now that one wonders how can you accommodate every future possibility.

The fact that the music labels and others are having trouble or about following the DMCA shows that if they want to set up an alternative system, Congress is the place to go to it and they can seek that remedy there and do the best that they can.

JOHN QUINN: Owen, any takeaways from your standpoint?

OWEN ROBERTS: Yeah, and this might not be so interesting to your audience that's tuned in for DMCA talk, but this was the last appeal that Kathleen Sullivan argued as a partner at Quinn Emanuel Urquhart & Sullivan. She's the reason I joined this firm. She's a mentor to me and to so many other people at our firm.

The argument lasted an hour. The first appeal argument lasted over two hours. And this is really, you know, one of the wonderful places where commercial law intersects with The First Amendment values around copyright act, around congressional purpose and around the record, you know, the summary judgment record.

And we had a titan on our team who was able to combine all of those things into a presentation against a frankly skeptical panel, it took the panel more than a year to issue its decision after argument because I think that there were parts of what we were asking for that they were hesitant to give us, but this was a Kathleen Sullivan win.

And it's sad that we won't be able to say that about future cases other than in the spirit of what of that she leads us with.

JOHN QUINN: For those who don't know, Kathleen Sullivan headed up our appellate practice department for many years. She joined us after a very distinguished academic career. She was Dean of the Stanford Law School, was for many years a partner at our firm, a great lawyer, a great oral advocate, and a great partner.

She retired. We miss her. I hope she listens to this and it puts a smile on her face. So, Todd Owen, congratulations on this great result. This has been John Quinn, and this is Law, disrupted.