Posted by: Lauren Stewart
April 17, 2015
Imagine you are a parking attendant and a person tells you that you have his car. He gives you no proof, but to avoid trouble you give him the keys. Rather than questioning the person about his ownership or enlisting the police to help in prosecuting the theft, not you, but rather, the guy who owned the car must get the car back, identify the thief, prove that the car was rightfully his, and prove damages resulting from the theft. This sort of thing is lurking on the Internet in the realm of DMCA safe harbor protection. The DMCA’s notice-and-takedown procedure gives copyright owners a simple and efficient procedure for removing content from websites that infringes their copyright. The downside of this procedure is that it is easily abused. Such abuse occurs often and those who have their content removed have an uphill battle in rectifying the situation and getting recourse for losses. To date, it appears that only two takedown fraud cases have been awarded damages. But shedding light on the breadth of takedown abuse and promoting efficient redress might subdue overzealous copyright owners and make them think twice before abusing the notice-and-takedown scheme.
The DMCA Takedown Notice Procedure
Enacted in 1998, the Digital Millennium Copyright Act made significant strides in protecting copyrights in the “wild west” Internet landscape. In order to maintain the viability of the Internet, part of this effort required immunizing internet and online service providers from liability when their users infringed a copyright—it simply doesn’t work if service providers have to individually vet authorization for everything users place online.
Among other things, this immunity took form as a safe harbor. The DMCA in § 512 established immunities for service providers who comply with a notice-and-takedown procedure allowing a copyright owner to solicit a service provider’s help in removing content that infringes their protected work. A copyright owner sends a takedown-notice to the service provider and upon receipt, the service provider must “respond expeditiously” in taking down or blocking access to the allegedly infringing content. A service provider that fails to comply with this procedure may lose his safe harbor immunity and be can be liable for the copyright infringement. The natural effect of this consequence is that service providers mechanically remove content, without regard for the notice’s merit. They aren’t required to substantiate notice claims. This makes sense because placing more infringement enforcement burden on private companies than they already have in responding to notices is unreasonable. Further, the volume of notices received by service providers like Google demonstrates its impracticality—again it just doesn’t work and it would undermine the Internet facilitative goals of the DMCA.
The Takedown Fraud Problem
Unfortunately, the effectiveness of the notice-and-takedown procedure results in many meritless takedowns with serious consequences for First Amendment and other interests. A 2005 report suggested that more than one-third of takedown notices were invalid. These may occur unintentionally, like when automated searches misidentify content, or intentionally but wrongly as was the case when Warner Brothers sent a takedown-notice to Hotfile for hosting open source software that “could have speeded up infringing downloads.” Misuse of the takedown procedure is often motivated by non-copyright concerns. For example, notice-senders have used the procedure to halt unwanted criticism and mitigate reputational concerns, or avoid profit losses and harm competitors.
A particularly damaging example occurs with political campaign advertising. In a number of cases, news broadcasters have sent takedown-notices to remove campaign advertisements incorporating their news clips. The broadcasters may be trying to avoid a false impression that use of their content is an endorsement of a candidate. The use however may be a fair use, and thus a defense to infringement. These takedowns tread on core-political speech protections. They may have the potential to alter campaign outcomes—note that content-posters can send counter notices to have their content replaced, but the content stays down for at least 10 days; effectively, an extra-judicial temporary restraining order. Think how serious this might be in the days leading up to an election.
The common problem of asserting copyright interests to stop unwanted speech or dissemination of materials is not new. The fair use defense to copyright infringement and limitations on defamation claims are examples of areas where the courts and Congress have recognized this and given credence to overriding First Amendment principle. But the effectiveness of the notice-and takedown procedure is troubling. Even though notice-senders are supposed to consider fair use before sending a notice, the content comes down regardless of whether this has occurred and content-posters must defend their rights after the fact.
In enacting the DMCA takedown system, Congress realized the potential for takedown abuse and created a cause of action in § 512(f) for misrepresenting infringement. Unfortunately, it has been difficult to succeed under § 512(f). It has been construed to require that the notice-sender knowing materially misrepresented his copyright interest. The materiality requirement is not difficult to meet; a notice-sender is well aware that sending the notice will result in content takedown. The knowledge requirement, however, is more difficult. To get past a motion to dismiss, a plaintiff needs evidence that the notice-sender acted without subjective good faith and knew they didn’t have a copyright interest in the allegedly-infringing content. If it exists, this kind of evidence is likely to be found only during discovery. Further the
In the 2004 case, Online Policy Group v. Diebold, the first case to succeed in awarding damages for a § 512(f) claim, content-posters reported on a disclosed email archive revealing security flaws with Diebold’s electronic voting machines. Diebold asserted copyright over the archive and sent dozens of takedown notices to service providers to stop the dissemination of their archive. All but one service provider complied. The plaintiffs included a non-profit web host and an online-newspaper that didn’t even post the archive, rather they provided a link to it. The 9th Circuit found that not all parts of the archive were protected by copyright and that Diebold was using notice-and-takedown “as a sword to suppress publication of embarrassing content.” The court found the plaintiff’s use was a fair use. Further, noting the magnitude of a revelation concerning the legitimacy of an election, the court stated “It is hard to imagine a subject the discussion of which could be more in the public interest.” Diebold was ordered to pay $125,000 in damages.
Online Policy Group v. Diebold is just one example of how the efficiency and lack of oversight in the notice-and-takedown procedure allows takedown-senders to blow right past copyright limitations and remove content subject to free speech protections such as the fair use defense. The Center for Democracy & Technology described this as “a unique ability to secure immediate removal on demand and with little, if any, resistance.”
And even resistance may be futile in light of the limited opportunity to recover under § 512(f). The statute permits recovery of “any damages, including costs and attorney’s fees, incurred by the alleged infringer.” But damages are rarely awarded. In the notable § 512(f) case of Lenz v. Universal Music Corp., a mother uploaded a 29-second video of her young children dancing to Prince’s “Let’s Go Crazy” on to YouTube. In denying cross-motions to dismiss, the court stated that a copyright owner must consider fair use before sending takedown notices. To be successful however, liability required that the content-poster suffer damages. The court found that her expenditure of time and resources attempting to have the video reinstated and attorney’s fee award provided in her retainer agreement for pro bono counsel were potentially recoverable.
In the March of 2015, § 512(f) damages were awarded for only the second time, and this time, the court definitively addressed the type of damages available. In Automattic Inc. v. Steiner, a blogger who posted the defendant organization’s press release online was awarded damages for lost work and time, and attorney’s fees. The 9th Circuit relied on Lenz, and followed the plain language of the statute that “any damages” are recoverable if they are incurred by the content-poster as a result of the takedown or replacement of the allegedly-infringing content. The plaintiff’s were awarded a total of $25,084 dollars in a default judgment. Frustratingly, the defendant is a U.K. citizen and the plaintiffs are unlikely to recover.
Beyond procedural issues, like extraterritorial standing and service, other problems may frustrate takedown fraud claims. For example, although the notice procedure requires contact information, the notice-sender can give an incorrect name and address. The safe harbor being vital, the service providers wont even verify contact information. The content-poster can still send a counter notice to get content reposted. For the fraud and damages though, the content-poster might have only have recourse against an unknown notice-sender.
If takedown fraud is occurring as often as is suggested, and the cause of action to defend it is as toothless as it appears, one wonders if the notice-and-takedown procedure might do more harm than good. Without adequate remedies, claims are not even litigated and First Amendment consequences may be grave. For example, the extra-judicial nature of the notice-and-takedown procedure and the requirement to takedown without a corresponding requirement to substantiate copyright claims, often before the content-poster even has a chance to refute the notice, may be an unconstitutional prior restraint. Similarly, takedown-notice use by terrorists to obtain identifying information about critics suggests an unsettling ability to chill important anonymous speech.
Solution: Expand redress and shed light on the problem.
Perhaps notice-and-takedown tension is nearing the over-vindication threshold that tends to overprotect copyrights when technological advances occur. By shedding light on the scope of takedown fraud and encouraging courts to expand § 512(f), notice-senders may finally take note of their limited right to remove content from the Internet. The possibility of damages awards and reputational disadvantages to being labeled a “takedown abuser” might give them pause.
The recent Automattic v. Steiner damages success is not sounding any alarms for increased relevance of § 512(f). Realistically, the win may be attributed to the default judgment and the plaintiff wont be able to recover the small damages award. Yet, the court’s broad contouring of the damages statute might empower content-posters to pursue their takedown fraud claims. In another vein, the ability to assert § 512(f) may be expanding the scope of notices that might be challenged. In March of 2015, a District Court denied a motion to dismiss challenging that a deficient takedown-notice could not be subject to a § 512(f) claim.
While courts chip away at the nitty-gritty stuff, the reach and data collection powers of the Internet can shine light on the scope of takedown fraud that might substantiate calls for DMCA reform. In 2012, Google began publishing a report of the false DMCA requests it receives. Google’s Transparency Report clearly illustrates the scope of the requests it receive and their FAQ plainly explains how it handles them. In March of 2015, Google received close to 35.5 million takedown requests. Three percent of these requests were not acted upon when Google determined that they were not clearly infringing. Google’s data is downloadable and makes it possible to see what happens with every takedown-request. Adding to this transparency, the top reporting organizations, top requesting copyright owners, and top specified domains are prominently displayed by the report.
Google may be the first major service provider to reveal the breadth of this problem. Similarly, advocacy groups are using the Internet’s reach to compile data for that substantiates the takedown problem. For example, Chilling Effects collects and analyzes takedown requests to understand the prevalence of the content removal threat. Also, the related Takedown Project is examining notice-and-takedown procedures and contemplating how global online speech works.
Thinking back to that shoe store owner, shedding light on the scope of the problem and the consequences of not having effective legal rights and remedies permits him to point to the perpetrator when the shoes are taken and enlist the law to redress his losses. In advocating for more judgments in DMCA takedown fraud and possible reforms to the DMCA, I do not suggest that the safe harbor or service provider obligations be disturbed. Rather, I suggest that courts expand their approach to §512(f) and let cases be heard when discovery is needed. I suggest also that content-posters consider adding a copyright misuse claim to their filings when copyright owners overextend their rights in ways that are anticompetitive or fail to observe fair uses. I also suggest that courts continue to award damages, even if they aren’t recoverable, to send a message to notice-senders that their copyright claims and motivations must be legitimate. The ease of filing takedown notices needs to be burdened with some responsibility for abusing an unbalanced protection scheme.