by Michael Riskin
The Digital Millennium Copyright Act (DMCA) made a number of
changes to copyright and how copyright enforcement works in the age of the
internet. To say that the DMCA has a mixed reputation would be an
understatement. One controversial provision prevents consumers of lawfully
purchased music or movies from making legal copies because doing so would
involve circumventing copy protection measures. An example of this would be the
copying of a DVD to a portable device like an iPod. The provision that
criminalizes the mere possession of circumvention tools such as DVD copying
software is equally controversial.
Sometimes the controversy is caused by the misuse of the DMCA by companies inappropriately invoking its provisions to unfairly limit consumer choice. This was done by Lexmark, an inkjet and laser printer manufacturer who tried to use the DMCA to prevent third party ink makers from competing with Lexmark’s high priced refills. Their efforts failed in court.
The safe harbor provision only protects service providers if they play by particular rules. Before we get to the rules we first have to know what the game is. The game is the issuing of notice and takedown requests. These are the tools the DMCA gives to copyright owners to quickly remove infringing material from the internet. All a copyright owner needs to do to remove material it believes to be infringing is send a service provider a request to remove the material, and the service provider is obligated by the DMCA to remove the material. If the service provider fails to remove the material then it risks losing its safe harbor protection. So, what are service providers?
There are five types of service providers specifically mentioned in the DMCA section relating to limitations of liability. Transitory communications providers are network providers or other related services that provide a conduit for the transmission of data. System caching providers provide temporary storage for data moving through the internet as a way to shorten the wait for frequently accessed information. Providers who store information at the direction of a user are sites like YouTube, Flickr, web hosting services, blog services, and many other services that provide users a place to post information. Information location tools are search engines. The fifth class of service provider covers nonprofit educational institutions. Each category of service provider has to satisfy different requirements that correspond with the function of the service it is providing in order to qualify for immunity.
These are the players. Let’s see how to play the game.
How to Issue a Notice and Takedown Request
The DMCA has a straightforward checklist of requirements to
include in a notice and takedown request. The copyright owner must provide the
following information to the service provider:
(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
How do you find out where to send the request once it has been drafted? Fortunately, the DMCA requires service providers, specifically providers who store information at the direction of users, to register with the Copyright Office a designated agent to receive your notice and takedown request. The service provider must include the name, address, phone number, and email address of the registered designated agent in the filing with the Copyright Office. They must also post it in a publically accessible area of the service provider’s website. If the service provider fails to do all of these things (designate the agent, register the agent with the Copyright Office, include the agent’s contact information, and post the agent’s contact information on the service provider’s website) then they will lose their safe harbor status. Service providers therefore have a strong incentive to comply, thus making it easier for copyright owners to send notice and takedown requests.
Once the request is received, the offending material will be taken down.
How to Respond to a Notice and Takedown Request
The notice and takedown provision of the DMCA
isn’t all wine and roses for copyright owners. Users who have their content
taken down by a service provider pursuant to a notice and takedown request have
some remedies at their disposal courtesy of the DMCA. The DMCA giveth, and the
DMCA taketh away.
Once a service provider has removed a user’s material at the request of a copyright owner the service provider must notify the user of the removal. The user must have an opportunity contest the removal by sending a counter notice to the service provider. A counter notice must be in writing and must be sent to the service provider’s registered agent, the same agent whose contact information is on file with the Copyright Office and posted on the service provider’s website. The counter notice must meet the following requirements:
(A) A physical or electronic signature of the user.
(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.
(C) A statement under penalty of perjury that the user has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.
(D) The user’s name, address, and telephone number, and a statement that the user consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the user’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the user will accept service of process from the person who provided notification to the service provided.
Once the user provides a proper counter notice the service provider must then notify the copyright owner that the user is contesting the takedown. If the copyright owner doesn’t file a lawsuit against the objecting user within 14 days the service provider is obligated to reinstate the user’s materials.
There are two serious things to note here. First, if a user is going to file a counter notice he or she must be willing to make a statement under penalty of perjury that the material shouldn’t have been removed. Second, if a user files a counter notice he or she should be prepared to be served with a lawsuit. In other words, if you’re going to fight the takedown you should know what you’re getting yourself into and be sure you’re in a good position to fight.
In addition to having the power to contest the removal of their material, users also have a legal remedy against those who misuse the notice and takedown process. Those who misrepresent that material is infringing or use takedown notices to remove upsetting but non-infringing content such as criticism will be liable for damages. Just as users should be careful when filing counter notices, copyright owners filing notice and takedown requests should equally be sure to follow the law or face liability for misusing the tools the DMCA provides.