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!

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