Digital Millenium Copyright Act (DMCA Overview)
The DMCA is a law that basically allows a copyright holder to send a “take-down” notice to an online service provider or web host (such as eBay, or Facebook, or Youtube, Google, Pinterest) and force them to take down a photo, gif or jpeg images, jingle, song, .mov videos, illegal mp3, song lyrics, plagiarized poems, or other item of digital content that the copyright holder believes infringes their copyrights. If the online service provider follows DMCA guidelines, they get “safe harbors” from civil liability.
For example, say you are an eBay seller of products, and you offer software for sale on your website. If the copyright holder (ex. Autodesk, Adobe or Microsoft) believe you are violating their federal copyrights, they could send a “take-down notice” to eBay demanding that they remove the allegedly infringing material. You would have the right to respond with good reasons why the digital content should not need to be removed.
The DMCA is, thus, a law that helps protects digital intellectual property, in this case federal copyrighted software. The one problem is that this law also promotes Copyright bullies who try to force take-down of content that is actually not-infringing. Through the DMCA, Congress also sought to prohibit certain efforts to unlawfully circumvent protective technologies, while at the same time preserving users’ rights of fair use. See U.S. v. Elcom Ltd. (N.D. Cal. 2002) 203 F.Supp.2d 1111, 1119.
What types of internet websites can claim “safe harbors” under the DMCA?
1. Web hosts & ISP’s (ex. facebook, youtube, eBay, Pinterest). An “ISP” stands for internet service provider.
2. Conduits (ex. broadband access providers)
3. Information location websites (ex. search engines and directories)
4. Caching services (ex. Duggmirror, Omgili, Bitacle, Google). This involves companies that “cache” web pages so that surfing the web can be done faster.
These companies must each designate a “DMCA agent” for receiving take-down notices and keep this information updated and accurate. The U.S. Copyright office maintains the registry for the DMCA safe harbor agents.
Keep in mind, without “safe harbors” under the DMCA, companies could literally be sued out of existence by copyright holders who go after “deep pockets” (companies who are insured and have money) for contributory infringement of copyrights.
Does Google have a “safe harbor” for its caching service?
Yes. This was decided in the case of Field v. Google Inc. (D. Nev. 2006) 412 F.Supp.2d 1106, 1123. This is a hilarious case of a Nevada attorney that created various pieces of digital content that he uploaded to a website understanding that google would index and cache his work on their website. He then sued google for alleged copyright infringement seeking statutory copyright damages for his work “Good Tea.” Google, relied on the bad faith of the Plaintiff (basically arguing the Plaintiff was just trying to cash in off the Defendant), and argued they were entitled to “safe harbor” under the Digital Millenium Copyright Act. The Court agreed with google and held:
“The safe harbor of Section 512(b) is directed to system caches and states that “[a] service provider shall not be liable for monetary relief … for infringement of copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider” provided certain requirements are met. See 17 U.S.C. § 512(b)(1).”
What is the process involved in a DMCA take down complaint?
1. The copyright holder, or their agent, must file a notice with the DMCA agent for the website believed to contain infringing goods. Note that the DMCA applies only to companies in the United States, so this may not be effective when the web-host is located in another county. To find out who owns the domain where the alleged copyright infringement material is posted, check the WHOIS.
TIP: Europe, however has their own takedown initiative similar to the DMCA (European Directive for Electronic Commerce – Article 14), so does Australia. Other countries like Canada can be very tough to get a take-down of allegedly infringing copyright material without obtaining a court order.
What must a DMCA take down notice contain?
In short, you need to include a description of the allegedly infringing work (a screenshot would be helpful to preserve as evidence), and reference to where the digital content can be found on the service providers website. Also provide your name, address, phone number, and email address, and a statement “under penalty of perjury under the laws of the United States of America” that the owner of the copyright has a good faith belief that the owner’s exclusive copyrights are being infringed, and that the owner has the legal right to purse the claim. See our sample DMCA notice of infringement below. The letter must be digitally of physically signed and sent to the DMCA agent (see DMCA agent search tool below).
2. The “safe harbor” company/website may then locate and take down your allegedly infringing material and provide you with notice and a chance for a written response.
3. Counter-notice response – the party against whom the copyright infringement notice is asserted has a chance to reply with evidence that there is no copyright infringement and that the digital content should not be removed (called mistake or misidentification). Once again, this will require a declaration of good faith, and a statement that the belief is under penalty of perjury. The counter-filing party must also consent to federal court jurisdiction and provide their contact information where service of process may be delivered and accepted (in the event the copyright holder intends to file a federal lawsuit).
4. Once the counter notice is filed, the “safe harbor provider” will notify the copyright holder that filed the claim, and the material will be reposted and a short dispute period (10-14 days) will be provided where the parties can either resolve their issues, or take the case to copyright court.
As set forth above, for cases of abuse or reckless filing, the responding party might elect to seek damages in Federal Court. In many cases the dispute will be resolved at this stage, often due to the fear of the costs and legal exposure of litigation.
TIP: Websites like Youtube will DING YOU if you get repeat take-down notices filed against you as a DMCA take down notice or content ID removal (as a publisher of digital content, they may disable your ability to post videos longer than 15 minutes in length, which as a video publisher myself is a big deal). Thus, it is important to challenge these notices if you believe the notice is in error. Ask for a complete copy of the infringement notice and engage your intellectual property counsel at the earliest possible stage.
How can I handle a DMCA Bully?
If you have been the victim of a competitor or a copyright holder acting in “bad faith” or misrepresenting the extent of their intellectual property rights and sending off a DMCA takedown notice (ex. to google, facebook, youtube, eBay, Etsy, Amazon, Craigslist, or other social media website), you may have a legal right to sue them in federal court under DMCA section 512(f). This can also happen where you are accused of illegally selling software online. Call us for more help. Here is a podcast that explains a DMCA bad faith action.
What is copyright “fair use”?
One defense you might raise if you receive a copyright take down notice under the DMCA is the copyright “fair use defense” which basically says “yeah I am using your copyright, but the use is fair and will not cripple your commercial market or tarnish your brands.” Classic examples of fair use would be:
1. Fair comment and criticism (ex. quoting a few lines of a song, poem, newspaper article, or website)
2. Parody (making fun of the work at issue and basically creating a new work in the process)
With both of these, you only want to take as little of the copyright work as possible. The Courts when viewing whether or not you will be entitled to the “fair use copyright defense” will look at four factors:
“Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, 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:
(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;
(4) the effect of the use upon the potential market for or value of the copyrighted work. (for example, in internet parodies, it is not considered to rob the copyright holder of the market for their goods, and it has been said that some parodies actually help increase the sales of the original copyrighted work).
See Campbell v. Acuff-Rose Music, Inc. (1994) 510 U.S. 569, 576-77 [114 S.Ct. 1164, 1170, 127 L.Ed.2d 500]. Keep in mind, when it comes to digital parodies, the old saying is “parody is like shooting at the king, you better get it right.” (because if you don’t you could be “telling it to da judge.” : )
The main problem with the fair use law, (or should I say the biggest criticism) is you might get sued in federal court and have to find a copyright lawyer to defend you (at your cost as many times these are not contingency fee type cases for your average intellectual property lawyer) to try to prove up your fair use rights.
How to file for DMCA registration for designation of an agent
The process of filing to register your DMCA agent who will receive take-down and copyright infringement notices is the following:
- Fill out the US Copyright office form (Interim Designation of Agent to Receive Notification of Claimed Infringement). Make sure to fill it our accurately, or you could waste time.
- Add the filing fee [currently $105 + $35 to add a domain name]. Check should be made payable to the “Registrar of Copyrights” You should check on the accuracy of this as terms could change.
- Mail or personal deliver the form to the U.S. Copyright Office:
Bonus Materials: Click here to view a Sample DMCA agent registration form.
Click here to learn more about why you should have a law firm serve as your DMCA agent. We make this inexpensive, affordable and quick under our ZipCounsel.com program!
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