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How to handle the DMCA “Bad Faith” Bully with a 17 U.S.C. 512(f) lawsuit

Jun 22nd, 2016 | By | Category: Copyright Litigation

Intellectual Property Bullies can be Stopped – Here’s One Way to Do It!

Lawyer for DMCA bully caseIntroduction

This blog discusses the general procedure that occurs in DMCA “take down” notice cases.  These cases can get very contentious because in many cases, people are trying to make a living by buying and selling things online, such as books, music, arts, crafts, jewelry, and other items.  When a competitor or a copyright rights holder believes there is infringement of intellectual property rights going on, the “notices can start to fly” and the lawyers made need to get involved to evaluate the legal positions and take appropriate measures.  Where you are dealing with a “bad faith DMCA bully” a lawsuit for money damages may be the appropriate response.  The prince 29 second toddler Prince video case will be discussed (Lenz v. Universal Studios)

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The Take Down Notice – Section 17 U.S.C. 512(c)

The first step in a DMCA case is for the aggrieved party (the one that thinks there stuff is being infringed) to send a DMCA “take down” notice to the online service provider, for example to Youtube, Google, or eBay (and sometimes to the the other party).  Here is the code section that discusses this.


(c) Information Residing on Systems or Networks At Direction of Users.—

(1) In general.—A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—
(A)
(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

So this is where the eBay’s, Etsy’s, Craigslist, Amazon.com’s of the world escape liability if they know remove the allegedly infringing item from their website after they receive a “DMCA take down notice.”


The Service Provider – (“Safe harbors” for the Online Service Provider) – sends a Notice of Takedown to the party alleged to be infringing the copyrights or trademarks of another


The 17 U.S.C. (g) “counter-notice” procedure (to try to get the item back up on the website)

Once the alleged infringer receives the cease and desist or take down notice, they have the legal right to challenge it by sending their own notice, called a “counter-notice.”  Here is what the federal code says:


(g) Replacement of Removed or Disabled Material and Limitation on Other Liability.—

1.  No liability for taking down generally.— Subject to paragraph (2), a service provider shall not be liable to any person for any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material or activity is ultimately determined to be infringing.

(2) Exception.—Paragraph (1) shall not apply with respect to material residing at the direction of a subscriber of the service provider on a system or network controlled or operated by or for the service provider that is removed, or to which access is disabled by the service provider, pursuant to a notice provided under subsection (c)(1)(C), unless the service provider—

(A) takes reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material;
(B) upon receipt of a counter notification described in paragraph (3), promptly provides the person who provided the notification under subsection (c)(1)(C) with a copy of the counter notification, and informs that person that it will replace the removed material or cease disabling access to it in 10 business days; and
C) replaces the removed material and ceases disabling access to it not less than 10, nor more than 14, business days following receipt of the counter notice, unless its designated agent first receives notice from the person who submitted the notification under subsection (c)(1)(C) that such person has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network.

(3) Contents of counter notification.—To be effective under this subsection, a counter notification must be a written communication provided to the service provider’s designated agent that includes substantially the following:

(A) A physical or electronic signature of the subscriber.
(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 subscriber 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 subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.
As happened in the Prince case, when the counter notice was received that the content was being put back up on the website pending the dispute, meaning Universal (the holder of the Prince music rights) would not be able to take down the infringed song, and on top of that, the party who made the 27 second prince dance video decided to get more aggressive and file a lawsuit against Universal under section 512(f) as discussed below for Universal’s bad faith in sending the take down notice in the first place.

17 USC 512(f)  – How to stop a DMCA bully in their tracks with a bad faith misrepresentation claim!

Under federal law, a victim of DMCA bad faith abuse can file a suit for money damages, costs and attorneys fees.  For more information make sure to check out our DMCA 512(f) money damages blog.

Here is what 17 U.S.C. 512(f) says:

(f) Misrepresentations.—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, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

Case example – The Prince “Let’s Go Crazy” case – [Lenz v. Universal Music]

A.  Key facts

On February 7, 2007, Plaintiff Stephanie Lenz (“Lenz”) videotaped her young children dancing in her family’s kitchen. The song “Let’s Go Crazy” by the artist professionally known as Prince (“Prince”) played in the background. The video is twenty-nine seconds in length, and “Let’s Go Crazy” can be heard for approximately twenty seconds, albeit with difficulty given the poor sound quality of the video. The audible portion of the song includes the lyrics, “C’mon baby let’s get nuts” and the song’s distinctive guitar solo. Lenz is heard asking her son, “what do you think of the music?” On February 8, 2007, Lenz titled the video “Let’s Go Crazy # 1” and uploaded it to YouTube.com (“YouTube”), a popular Internet video hosting site, for the alleged purpose of sharing her son’s dancing with friends and family. YouTube provides “video sharing” or “user generated content.”   See See Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1151-52 (N.D. Cal. 2008).

The facts section of the case continued:

Universal owns the copyright to “Let’s Go Crazy.” On June 4, 2007, Universal sent YouTube a takedown notice pursuant to Title II of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512 (2000). The notice was sent to YouTube’s designated address for receiving DMCA notices, “copyright@youtube. com,” and demanded that YouTube remove Lenz’s video from the site because of a copyright violation. YouTube removed the video the following day and sent Lenz an email notifying her that it had done so in response to Universal’s accusation of copyright infringement. YouTube’s email also advised Lenz of the DMCA’s counter-notification procedures and warned her that any repeated incidents of copyright infringement could lead to the deletion of her account and all of her videos.”
The case continues:
After conducting research and consulting counsel, Lenz sent YouTube a DMCA counter-notification pursuant to 17 U.S.C. § 512(g) on June 27, 2007. Lenz asserted that her video constituted fair use of “Let’s Go Crazy” and thus did not infringe Universal’s copyrights. Lenz demanded that the video be re-posted. YouTube re-posted the video on its website about six weeks later. As of the date of this order, the “Let’s Go Crazy # 1” video has been viewed on YouTube more than 593,000 times.
The Lawsuit

On July 24, 2007, Lenz filed suit against Universal alleging misrepresentation pursuant to 17 U.S.C. § 512(f) and tortious interference with her contract with YouTube. She also sought a declaratory judgment of non-infringement. Universal filed a motion to dismiss, which the Court granted on April 8, 2008, 2008 WL 962102. Lenz was given leave to amend her complaint to re-plead her first and second claims for relief. On April 18, 2008, Lenz filed the operative SAC, alleging only a claim for misrepresentation pursuant to 17 U.S.C. § 512(f). On May 23, 2008, Universal filed the instant motion.

See Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1153 (N.D. Cal. 2008)

B.  Holding

The Court denied the Defendants motion to dismiss and discussed that the Defendants should have considered “fair use” before issuing the DMCA take down notice.  Here is the key holding of the case:

A. Fair Use and 17 U.S.C. § 512(c)(3)(A)(v)
“When interpreting a statute, a court must begin “with the language of the statute and ask whether Congress has spoken on the subject before [it].” Norfolk and Western Ry. Co. v. American Train Dispatchers Ass’n, 499 U.S. 117, 128, 111 S.Ct. 1156, 113 L.Ed.2d 95 (1991). If “Congress has made its intent clear, [the court] must give effect to that intent.” Miller v. French, 530 U.S. 327, 336, 120 S.Ct. 2246, 147 L.Ed.2d 326 (2000) (internal quotation marks and citation omitted). Here, the Court concludes that the plain meaning of “authorized by law” is unambiguous. An activity or behavior “authorized by law” is one permitted by law or not contrary to law. Though Congress did not expressly mention the fair use doctrine in the DMCA, the Copyright Act provides explicitly that “the fair use of a copyrighted work is not an infringement of copyright.” 17 U.S.C. § 107. Even if Universal is correct that fair use only excuses infringement, the fact remains that fair use is a lawful use of a copyright. Accordingly, in order for a copyright owner to proceed under the DMCA with “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,” the owner must evaluate whether the material makes fair use of the copyright. 17 U.S.C. § 512(c)(3)(A)(v). An allegation that a copyright owner acted in bad faith by issuing a takedown notice without proper consideration of the fair use doctrine thus is sufficient to state a misrepresentation claim pursuant to Section 512(f) of the DMCA.

In short, DMCA rights holders need to consider “good faith” and common defenses to copyright infringement, such as “fair use” before sending the DMCA take down notice or they themselves can face their own legal challenges and a federal court lawsuit seeking damages and attorney’s fees could be filed.  You can read a nice account of the case here.  The analysis should at least be made by the company before sending down cease and desist demand.   This might prevent some “automated take down” notices that some companies might be sending.

As a footnote to the case noted:

One might imagine a case in which an alleged infringer uses copyrighted material in a manner that unequivocally qualifies as fair use, and in addition there is evidence that the copyright owner deliberately has invoked the DMCA not to protect its copyright but to prevent such use.See, e.g., Online Policy Group v. Diebold, Inc., 337 F.Supp.2d 1195, 1204–05 (N.D.Cal.2004) (suggesting that the copyright owner sought to use the DMCA “as a sword to suppress publication of embarrassing content rather than as a shield to protect its intellectual property”).
This highlights the nature of the legal issue.  Keep in mind, even if a company goes through a “human analysis” of copyright defenses and fair uses, that alone may not save the day if it is obvious a defense applied.

What is the “fair use test” for copyright infringement

In Online Policy Grp. v. Diebold, Inc., 337 F. Supp. 2d 1195, 1200 (N.D. Cal. 2004) the Court discussed the four factors

Copyright protection sometimes appears to conflict with First Amendment protections. This conflict is ameliorated in part by various copyright doctrines. For example, consistent with the “idea-expression” dichotomy, expression, but not an idea, is copyrightable. See 17 U.S.C. § 102(b); Eldred v. Ashcroft, 537 U.S. 186, 219, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003); Baker v. Selden, 101 U.S. 99, 11 Otto 99, 25 L.Ed. 841 (1879). Similarly, copyright law protects only creative works, not facts. See, e.g., Feist Publ’ns, Inc. v. Rural Tel. Service Co., Inc., 499 U.S. 340, 349, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Finally, fair use is not infringement of a copyright. See 17 U.S.C. § 107; Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994); Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). Section 107 provides:
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; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The Supreme Court has clarified that copyright laws should be designed to promote creativity by protecting only creative work and, then, only for a limited time.
If you need help understanding these factors and how they apply to your case, call to speak with an IP Lawyer at (877) 276-5084.  In some cases you may be relying on the parody defense (i.e. making a parody video on Youtube or Vimeo, and posting this on facebook, instagram, vine or similar websites.

Tips to “cooling the jets” of a DMCA take-down bully

If you have a competitor on Ebay trying to shutdown your auction (someone claiming they own the rights to what you are selling, or that you violated the eBay terms of service) you may have legal grounds to fight back. Here are some general tips to consider:

  1.  If you get a DMCA take down letter, do not immediately re-list the items as you do not want to provoke eBay (or Youtube if it is a video at issue) to disable your account access.
  2. Investigate the grounds for alleged infringement (you may need to contact a lawyer and pay for a case review to review possible defenses to copyright infringement).   We can help determine whether this was VeRO member or SNOG program issue.  It may not make sense to try to contact eBay and receive their automated responses.   We can discuss that.
  3. Once you determine who was responsible for sending the DMCA notice or person that tried to shut you down, you (or we) can send them a letter requesting their grounds for the take down notice.  This can help create a paper trail, and could possibly give you a chance to work it out amicably.
  4. Never admit to doing anything wrong, these cases can require a detailed analysis by an experienced intellectual property lawyer.
  5. If your letter is ignored, you need to make the honest assessment of whether your artwork was infringing, whether you copied a photo and are trying to sell it, whether you are selling copyrighted software in violation of the End User Licensing Agreement, using a protected trademark without licensing rights (i.e. selling knockofffs or bootleg copies), or making a “satire” as opposed to a protected first amendment “parody.”  You have to apply the first use test in some cases.  So in other words you have to see if the DMCA notice was in good faith, or nothing but a bully trying to injure your business without any legal right to do so.
  6. A review and analysis of the First Sale Doctrine may also be required, and sometimes a licensing agreement has to be reviewed to see if your rights to re-sell have been abrogated.  This pops up sometimes in our software infringement cases.
  7. If you have strong grounds you can go into federal court, fight to reinstate your auction or video, and possibly seek other damages in federal court.

These are just some general tips and may vary depending upon your case.

Contact a Federal DMCA copyright bully lawyer

We can help defend your business against unwarranted attacks and we can help businesses that need to send legitimate DMCA take down notices to online service providers such as youtube, eBay, Amazon, Etsy, Cragislist, facebook, your ISP, google and other popular eCommerce and social media file sharing websites.  Call to discuss your case with a DMCA copyright attorney.  Call (877) 276-5084.

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