The Digital Millennium Copyright Act of 1998 introduced substantial changes to the Copyright Act of 1976. Some of these amendments created additional liability – such as the anti-circumvention provisions in Sections 1201 (a) and (b) – and some create “safe harbors” – such as limitations on liability for online service providers (OSPs) under Section 512.
A common interaction Internet users have with these provisions are when doing Google searches for music or television. When Google receives a takedown notice, it removes the content and posts a message at the bottom of the webpage listing the search results altering the user that a link has been removed pursuant to a DMCA takedown notice. Takedown notices occur under Section 512 because in order for an OSP to be protected from liability under the safe harbor provision of this statute, an OSP must disable access to the allegedly-infringing content upon receiving notice the such content is available on its servers.
There are requirements for submission of takedown notices under Section 512 (c)(3) including that it be a written communication from someone authorized to act on behalf of the owner of a protected work and identify the infringing material. One key restriction requires that the filer of the takedown notice provide: “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.” 17 U.S.C. §512 (c)(3)(A)(v).
This provision sets forth several defenses to the enforcement of a takedown notice, not by the OSP but by the person whose posted content is alleged to be infringing. Users whose content has been disabled may request that the OSP repost the material and assert that it is not infringing or the takedown notice was improperly filed. The notice may have been filed in bad faith (which occurs sometimes in an attempt to extort the users in exchange for withdrawing the claim or by people who are not authorized by the copyright holder to file such notices), the notice may not concern protected material (see Twelve Inches Around Corp. v. Cisco Systems, Inc., 2009 WL 928077, holding that takedown notices apply only to infringements of copyright), or the notice may have removed material that was not protected by the exclusive rights copyright holders are granted (for example, that the use was fair; see Lenz v. Universal Music Corp., 105 U.S.P.Q.2d 1635).
A person whose content has been improperly disabled has remedies under Section 512 (f), which allows that user or the OSP to recover damages if they have been injured by a misrepresentation under Section 512 (c). A person who likewise misrepresents information in a counterclaim can also be liable for damages. Courts have created an interesting and somewhat paradoxical framework within which a person who has been the subject of a wrongful takedown notice may recover for damages.
Twelve Inches Around Corp. highlights one of the paradoxical results of the language in this section. In this case, the plaintiff brought an action against Cisco Systems, Inc. alleging – among other violations – misrepresentation under Section 512(c) regarding a takedown notice alleging various acts of trademark infringement. 2009 WL 928077 at 1. This notice resulted in the removal of the plaintiff’s website. Id. at 2. Although the court held that a takedown notice under the DMCA may not be used to take down material that infringes trademarks, it went on to dismiss the plaintiff’s claim under Section 512(c). Id. at 3. The court’s reasoning was that the action was a misrepresentation of trademark infringement and not actionable under Section 512 because there was no claim of copyright infringement. Id. Seemingly counterintuitive, this decision excludes from liability individuals who abuse takedown notices when the notices do not allege copyright infringement but some other type of misconduct.
Other cases have addressed the scope of recovery under Section 512(f). In Lenz, a California district court required a “good faith belief” that the subject content was infringing. 2013 WL 271673 at 5. The good faith requirement imposed by this court does not mean that the entity submitting a takedown notice must conduct a complete fair use test. Id. at 6. Instead, the court requires only an “initial assessment” of whether or not the allegedly infringing material may constitute a fair use. Id. Contrariwise, a Massachusetts district court held exactly the opposite and placed the burden on proving fair use on the alleged infringer. Tuteur v. Crosley-Corcoran, 2013 WL 483601. In Tuteur, the court read Lenz to require the initial inquiry only where the filer of the takedown notice has some “actual knowledge” that the notice contains a material misrepresentation. Id. at 7.
The court therefore concluded that requiring the filer of a takedown notice to conduct a fair use inquiry prior to filing goes against congressional intent and it is the burden of the user to prove that a use was fair. Id.
The result of these decisions highlights the challenging balance courts are trying to strike between protection of speech and fair uses of copyrighted content and the copyright holder’s exclusive rights in his works. A paradox arises in the statutory requirement of “knowingly materially misrepresenting” an act of infringement because many takedown notices are automatically generated by bots and not by individuals combing through thousands or even millions of websites. There appears to be almost an absolute bar to recovery by a user affected by an improper takedown notice because the filer can claim in most instances that there was no knowledge of a material misrepresentation in the notice. So although liability has been created, it is nearly impossible to recover damages under the statute as it has been interpreted.
While the California district court in Lenz began to question the extent to which a filer may claim no knowledge of a material misrepresentation, it appears for now that the courts are content to allow willful blindness to prevent filers of improper takedown notices from liability for damages by users subject to the improper notice. Thus, the arbitrary nature of takedown notices generated by bots and not reviewed by people to ensure their accuracy all but ensures that filers of takedown notices who misrepresent material facts cannot be held liable. This seems to run afoul of the intention of the statute. What would be the point of enacting such legislation if in practical application it never resulted in the intended recovery for damages?
A current case may challenge the feasibility of allowing this doctrine to continue. Professor Larry Lessig, a Harvard Law School professor and internationally-renowned ethics and intellectual property scholar, regularly conducts lectures around the world and posts these lectures online. One of these lectures included a discussion of “mash-ups” and Professor Lessig demonstrated his point with a video mash-up done to French band Phoenix’s song “Liztomania.” YouTube, the OSP hosting the content, received a takedown notice and removed the content. Lessig subsequently filed a suit against the filer of the takedown notice – Liberation Music – for a number of violations, including bringing an action under Section 512 (f) for misrepresentation, alleging that his video was clearly fair use of the content. This case was filed in August 2013, so it has not yet gone to trial, but it will be interesting to see how the courts consider the requirement of at least a minor inquiry into the fair use of content prior to filing a takedown notice in light of these facts. The case is Lessig v. Liberation Music, and copies of the filings can be found at the Electronic Frontier Foundation’s website www.eff.org.