Category Archives: DMCA

Must a service provider remove all content a repeat infringer uploaded to qualify for the DMCA safe harbor?

459px-Enjoy_Don't_DestroyDoes an online service provider forfeit the safe harbor protections of the Digital Millennium Copyright Act if, when terminating the account of a repeat infringer, it does not delete all content the repeat infringer uploaded — infringing and noninfringing alike? A recent decision involving the antique internet technology Usenet sheds light on an answer.

Active copyright plaintiff Perfect 10 sued Usenet provider Giganews for direct and secondary liability for hosting allegedly infringing materials on the Giganews servers. Giganews asserted the safe harbor of the DMCA (17 U.S.C. 512) as an affirmative defense. Perfect 10 moved for summary judgment on whether the safe harbor applied – it argued that the safe harbor did not apply, Giganews argued that it did. The court denied Perfect 10’s motion.

Perfect 10 asserted that Giganews had not reasonably implemented a policy to terminate the accounts of repeat infringers as required by 17 U.S.C. 512 (i)(1)(A). One of the arguments Perfect 10 made was that Giganews did not reasonably implement its repeat infringer policy because Giganews terminated the accounts of the infringers but did not also delete all the content the infringers had uploaded.

The court was not persuaded that § 512(i)(1)(A) requires a service provider to disable or delete all content a repeat infringer has ever posted. The plain language of the statute requires “termination … of subscribers and account holders,” not the deletion of content. And because a requirement of taking down all content, not just infringing content, would serve no infringement-preventing purpose, the court held that there was no justification for reading such a requirement into the statute.

Perfect 10, Inc. v. Giganews, Inc., — F.Supp.2d —, 2014 WL 323655 (C.D.Cal. January 29, 2014)

Court refuses to help author who was victim of alleged bogus DMCA takedown notices

Author and her publisher disagreed on the content of two of the author’s new books. (As an aside, this author is very prolific — she alleges that she publishes a new book every two weeks!) So rather than deal with publisher, author self-published the works on Amazon. Publisher sent DMCA takedown notices to Amazon, with which Amazon complied. Author sued publisher under Section 512(f) of the DMCA, which provides penalties against senders of DMCA takedown notices that knowingly materially misrepresent claims of infringement. She sought a temporary restraining order (TRO), asking the court to instruct publisher to tell Amazon to make the works available.

The court denied the TRO motion. It found that author had failed to show she would suffer irreparable harm if the works were not put back on the market. In the court’s view, author failed to show how a temporary delay in sales would affect her reputation or goodwill.

The case presents an interesting issue concerning a party’s right to send a DMCA takedown notice. Author alleges that her agreement with publisher provided she owns the copyright in her works, and that publisher merely has a right of first refusal to publish any “sequels” to her previous works. So if what author is saying is true, that publisher does not have a copyright interest in the books but merely a contract interest, she stands a good chance, ultimately, on her 512(f) claim.

Flynn v. Siren-BookStrand, Inc., 2013 WL 5315959 (September 20, 2013)

Court rules against Ripoff Report in copyright case

Xcentric Ventures, LLC v. Mediolex Ltd., 2012 WL 5269403 (D.Ariz. October 24, 2012)

Plaintiff Xcentric Ventures provides the infamous Ripoff Report, a website where consumers can go to defame complain about businesses they have dealt with. Defendant ComplaintsBoard.com is a similar kind of website.

Ripoff Report’s Terms of Service provide that users grant Ripoff Report an exclusive license in the content they post to the site. Based on this right, Xcentric sued various defendants associated with ComplaintsBoard for “encourag[ing] and permit[ing] consumers to post content that has been exclusively licensed to Xcentric.”

Defendants moved to dismiss the copyright infringement claim, asserting they were protected by the safe harbor provision of the Digital Millennium Copyright Act (“DMCA”). The court granted the motion to dismiss, but not because of the DMCA.

DMCA Analysis

The safe harbor provision of the DMCA states that a “service provider shall not be liable for monetary relief” if all of the following requirements are met:

(1) it does not have actual knowledge that the material on its network is infringing;

(2) it is not aware of facts or circumstances that would make the infringing activity apparent;and

(3) upon obtaining knowledge or awareness of such infringing activity, it acts expeditiously to remove or disable access to the copyrighted material.

In this case, Xcentric alleged that defendants actively “encouraged and permitted” copyright infringement by ComplaintsBoard users. The court held that this allegation, if taken as true, could be sufficient to preclude defendants from taking advantage of the DMCA’s safe harbor provisions.

But the court went on to hold that Xcentric had failed to state a copyright claim on which relief may be granted.

Secondary Liability Insufficiently Pled

Xcentric did not allege that defendants directly infringed copyright. Instead, it alleged that by encouraging and permitting users to copy and republish material, ComplaintsBoard was engaged in secondary infringement — either vicarious or contributory infringement.

To state a claim for contributory copyright infringement, Xcentric had to plead that ComplaintsBoard had knowledge of the infringing activity and induced, caused, or materially contributed to the infringing conduct of its users. The court found that Xcentric had not alleged any facts that would lead to a reasonable inference that defendants knew of their users’ republishing Xcentric’s copyrighted content or that defendants had induced, caused, or materially contributed to such republication.

To successfully plead vicarious infringement, Xcentric had to show that defendants had the right and ability to supervise the infringing activity and also had a direct financial interest in those activities. The court found that Xcentric had not put forward enought facts to show that defendants had the right and ability to supervise the infringing activity.

DMCA takedown notices are not just for content

Apple using the DMCA to stop early sales of iOS 6.

The infamous Digital Millennium Copyright Act takedown process gets quite a bit of press when content owners such as movie studios and record companies use it to take infringing copies of films or music offline. The safe harbor provisions of the DMCA are at the heart of content-distribution platforms’ defenses against infringement occasioned by users of the platform. (Think Viacom v. YouTube.)

Apple reminds us, however, that the DMCA gives all copyright owners — not just those who own copyrights in content – a mechanism for getting infringing works off the internet. According to this piece on Engadget, Apple has been contacting hosting providers of sites that offer unauthorized copies of the forthcoming iOS 6 for sale.

So the DMCA, acting in the name of copyright protection, provides a remedy for software providers to keep the clamps on parties who may have access to software for their own use (in this case, iOS developers) but go outside the bounds of such use and offer the technology for sale to others.

Fair use, the DMCA, and presidential politics

The 2012 presidential election cycle is already giving internet law enthusiasts things to talk about. Last week it was Ron Paul’s grumblings about an unauthorized campaign ad on YouTube. Now NBC is moaning about a Mitt Romney ad comprised almost entirely of Tom Brokaw on the Nightly News in 1997.

NBC has asked the ad be pulled, claiming it is a copyright infringement. Smart people are already saying the ad is fair use. It probably is fair use.

And NBC knows that. Romney’s campaign posted the ad on YouTube five days ago, and it is yet to be the subject of a DMCA takedown notice. Though such a notice would be easy to draft and send, NBC is aware that the fallout could be expensive. Section 512(f) of the DMCA penalizes the senders of bogus takedown notices. And the courts have not taken kindly to purported victims of infringement who do not fully consider fair use before having content taken off YouTube.

With the election still months away, we may yet see controversial action like we did in 2008 by the news media to disable political content. These situations underscore the problem presented by how long it takes to process DMCA counternotifications and 512(f) actions.

A candidate’s defeat makes these processes moot. So maybe we should hope for a longer republican primary season just so we can see some good DMCA and fair use litigation. Come on NBC, send that takedown notice!

Court orders company to stop sending bogus DMCA notices to eBay

Design Furnishings, Inc. v. Zen Path LLC, No. 10-2765, 2010 WL 4321568 (E.D. Cal. October 21, 2010)

Decision shows court’s willingness to crack down on overreaching rights holders and abusive DMCA takedown practices.

Plaintiff and defendant both sell wicker furniture on eBay. Defendant sent 63 notices to eBay complaining that plaintiffs auctions infringed on defendant’s purported copyright in the furniture.

So plaintiff filed a lawsuit over the barrage of DMCA takedown notices, claiming, among other things, that defendant violated 17 U.S.C. 512(f) by knowingly and materially misrepresenting that plaintiff’s eBay auctions contained infringing material. Plaintiff asked the court to grant a temporary restraining order (TRO), stopping defendant from sending the notices to eBay. The court granted the motion.

The court found that plaintiff would likely succeed on its Section 512(f) claim because of the strong inference that defendant knew it did not have a valid copyright claim. On this point, the court found that the defendant appeared to be claiming copyright protection in the industrial design of the wicker furniture. But the Copyright Act excludes “useful articles” from the scope of copyright protection.

The court also found plaintiff might suffer irreparable harm if defendant were permitted to keep sending the bogus DMCA takedown notices. If eBay were to suspend plaintiff’s account, plaintiff might lose prospective customers and goodwill. This sort of harm was intangible and not capable of measurement. Because of the risk of harm, the court also found that the balance of equities tipped in plaintiff’s favor.

Finally, the court found that the TRO would serve the public interest. On this point the court made the intriguing observation that eBay’s policies of taking down content upon the mere allegations of infringement reverses the ordinary burden of proof in copyright infringement matters. The court granted the TRO to prevent defendant from “effectively shut[ting] down a competitor’s business on eBay simply by filing the notice that the seller’s product allegedly infringes on the complaining party’s copyright.”

YouTube victorious in copyright case brought by Viacom

District court grants summary judgment, finding YouTube protected by DMCA safe harbor.

Viacom v. YouTube, No. 07-2103, (S.D.N.Y. June 23, 2010)

The question of whether and to what extent a website operator should be liable for the copyright infringement occasioned by the content uploaded by the site’s users is one of the central problems of internet law. In talks I’ve given on this topic of “secondary liability,” I’ve often referred it simply as “the YouTube problem”: should YouTube be liable for the infringing content people upload, especially when it knows that there is infringing material.

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Today was a big day in the history of that problem. The district court granted summary judgment in favor of YouTube in the notorious billion dollar copyright lawsuit brought against YouTube by Viacom way back in 2007.

The court held that the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”) (at 17 USC 512) protected YouTube from Viacom’s direct and secondary copyright claims.

Simply stated, the DMCA protects online service providers from liability for copyright infringement arising from content uploaded by end users if a number of conditions are met. Among those conditions are that the service provider “not have actual knowledge that the material or an activity using the material on the system or network is infringing,” or in the absence of such actual knowledge, “is not aware of facts or circumstances from which infringing activity is apparent.”

The major issue in the case was whether YouTube met these conditions of “non-knowledge” (that’s my term, not the court’s) so that it could be in the DMCA safe harbor. Viacom argued that the infringement was so pervasive on YouTube that the site should have been aware of the infringement and thus not in the safe harbor. YouTube of course argued otherwise.

The court sided with YouTube :

Mere knowledge of prevalence of such activity in general is not enough. . . . To let knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials, impose responsibility on service providers to discover which of their users’ postings infringe a copyright would contravene the structure and operation of the DMCA.

Given the magnitude of the case, there’s little doubt this isn’t the end of the story — we’ll almost certainly see the case appealed to the Second Circuit Court of Appeals. Stay tuned.

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Pro-DRM decision under DMCA

Actuate Corp. v. IBM Corp., No. 09-5892 (N.D. Cal. April 5, 2010) [Scroll down for opinion]

Distribution of software license keys on the internet may constitute trafficking in circumvention technology, which is prohibited under the Digital Millennium Copyright Act (“DMCA”)

Plaintiff software licensor sued defendant for, among other things, violation of the anticircumvention provisions of the DMCA found at 17 USC 1201. Plaintiff alleged that defendant posted license keys on the internet, which purportedly would enable plaintiff’s software to be “installed on an unlimited basis.”

Defendant moved to dismiss, pointing to a line of cases including I.M.S. Inquiry Management Systems, Ltd. v. Berkshire Information Systems, Inc. and Egilman v. Keller & Heckman, LLP [see this old blog post about Egilman].

The I.M.S. line of cases hold that the use of a password issued by the copyright holder does not amount to “circumvention” under the DMCA. Under this thinking, the use of an issued password, even if done without authority, does not result in the “avoiding, bypassing, removing, deactivating, or otherwise impairing [of] a technological measure.”

But another line of cases, headed by 321 Studios v. MGM Studios, Inc. suggests differently. The court in 321 Studios reasoned that unauthorized use of a decryption code (the same one issued by the manufacturer) to bypass the encryption on a DVD served to avoid and bypass the encryption.

In this case, despite both parties’ attempts to show the compatibility of the lines of cases, the court found them to be irreconcilable. It sided with the thinking behind the 321 Studios line, finding no support for a distinction between passwords and other types of code that might be used for decryption.

Here’s the opinion:

Skeleton key photo courtesy Flickr user theogeo under this Creative Commons license.

Should ISPs get paid to respond to DMCA takedown notices?

CNET News is running a story about how Jerry Scroggin, the owner of Louisiana’s Bayou Internet and Communications, expects big media to pay him for complying with DMCA takedown notices. No doubt Scroggin gets a little PR boost for his maverick attitude, and CNET keeps its traffic up by covering a provocative topic. After all, people love to see the little guy stick it to the man.

Here is something from the article that caught my attention:

Small companies like [Bayou] are innocent bystanders in the music industry’s war on copyright infringement. Nonetheless, they are asked to help enforce copyright law free of charge.

A couple of assumptions in this statement need addressing. I submit that:

ISPs are not innocent bystanders.

As much as one may disdain the RIAA, the organization is enforcing legitimate copyright rights. Though an ISP may have no bad intent to help people infringe (i.e., the “innocent” part), infringing content does pass through their systems. And few would disagree that the owner of a system is in the best position to control what happens in that system. So unless we’re going to turn the entire network over to a government, we must rely on the ISPs at the lower parts of the web to comply with the DMCA. They owe a duty. It’s in this way that the ISPs are anything by innocent bystanders in the copyright wars. In fact, they’re soldiers (albeit perhaps drafted).

Though the administrative burdens of DMCA compliance fall on the ISPs, the work is not undertaken for free.

The safe harbor that ISPs enjoy in return for compliance is a huge compensation. An entity in the safe harbor has more certainty that a suit for infringement would be unsuccessful. Were there more doubt about the outcome, there would be more litigation. More litigation equals more cost. And I guarantee you that those litigation costs would dwarf the administrative costs associated with taking down content identified in a notice. So substract the administrative costs from the hypothetical litigation costs, and there you have the compensation paid to ISPs for compliance.

What do you think?

Pirate Christmas photo courtesy Flickr user Ross_Angus under this Creative Commons license.

DMCA reaches the decade mark

My friend Kevin Thompson over at Cyberlaw Central reminded me this morning in this post that President Clinton signed the Digital Millennium Copyright Act ten years ago today. Tempus fugit. It’s interesting to reflect on how this critical piece of legislation has affected (I think fostered) the growth of the online infrastructure with its safe harbor provisions found at 17 U.S.C. 512.

DMCA at 10 years

Simply stated, the DMCA at section 512 gives safe harbor protections to providers of interactive computer services (like ISPs and websites hosting user generated content) from liability when users upload content that infringes on another’s copyright rights. To sail its ship into the safe harbor, the provider has to take certain affirmative steps, like registering an agent with the Copyright Office, terminating the accounts of repeat infringers, and, most importantly, responding appropriately to “takedown notices” sent by copyright owners identifying infringing content on the provider’s system.

Though few could disagree with the principle of protecting service providers from infringement liability occasioned by the conduct of third party users (i.e., stemming from user generated content), the DMCA has its critics. And the actual mechanism has some bugs.

A big factor in the problem is the sheer volume of user generated content that’s put online. How can an operator like YouTube, who gets hours of new content loaded to its servers every minute, reasonably be expected to give meaningful review to every takedown notice that comes its way? It can’t.

So for practical reasons, big providers (and smaller ones alike) take down accused content essentially with a rubber stamp. And who can blame them? It saves administrative time and helps ensure safe harbor protection. But there are negative consequences to users and to the public. These consequences on the First Amendment and other rights are well-exemplified by the recent correspondence between the McCain-Palin campaign and YouTube, with amicus-like voices joining the chorus.

Like any ten-year old, the DMCA shows signs of maturity. It has withstood a decade of scrutiny, all the while giving service providers peace of mind, along with relatively efficient mechanisms for copyright owners to get infringing material taken down quickly. But also like a ten-year-old, the challenging years of adolescence — and the accompanying rudimentary changes — are around the corner. It’ll still be the DMCA, but I wouldn’t be surprised to see some transformation going on as user generated content becomes less a novelty and more a standard.

Birthday cake photo courtesy of Flickr user “juverna” via this Creative Commons license.