Penalties for Misrepresented Take Down Notices

Posted by Cyberbear on May 1, 2015 in Copyright Law, DMCA, Intellectual Property, Litigation, Tech News |

Posted by: Chase Millea

April 20, 2015

Image_removed_DMCAIn the United States, a holder of a copyright under the Copyright Act maintains exclusive rights to reproduce and distribute work fixed in a tangible means of expression. In essence, that means that a person can protect against redistribution of original work without authorization.

The Digital Millennium Copyright Act (DMCA) authorizes a copyright holder to issue a “take down notice” to an infringer to remove infringing works “expeditiously… or disable access to the material.” For example, a copyright holder may make a claim under the DMCA to require YouTube to take down a personal video that was uploaded without their authorization. The DMCA requires YouTube to comply or face a penalty.

Although the DMCA offers broad protections for copyrighted material, it also explicitly prohibits entities from citing the Act to unlawfully restrict others from using non-copyrighted material. Now, one of the first cases on the topic affirms that courts are willing to penalize breaches of this provision.

The Copyright Act

Alright, let’s start with the exclusive protections under the Copyright Act. Pursuant to 17 U.S.C. § 106, a copyright holder has exclusive right to:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

Some exceptions temper the extent of “exclusive” rights. The most prominent barrier is the Fair Use Doctrine encoded in 17 U.S.C. § 107. The section provides that the “fair use” (e.g. “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research”) is not an infringement of copyright.

In determining whether a work fits within the fair use exception, courts consider: (1) the purpose and character of the use; (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.

Despite these exceptions, a copyright holder maintains substantial protections. As discussed below, the DMCA provides a vehicle to prohibit continuing infringement (the take down notice – §512(c)).

The Digital Millennium Copyright Act

Under the DMCA, a copyright holder may inform a potential infringer (or secondary infringer like a broadcaster) that they are indeed infringing. Upon such notice, broadcasters are required to take down infringing material.

As one might imagine, this is a fairly substantial power for a copyright holder. In effect, a person claiming infringement can exercise their exclusive rights by forcing media purveyors to remove the content from the Internet.

If the copyright holder does in fact retain a right to prohibit the distribution of the material, the DMCA provides a vehicle for relief. If, however, an entity seeks to employ the Act to further a misrepresentation of an exclusive right, the DMCA not only fails to offer protection, but also provides a penalty for the misrepresentation

Pursuant to 17 U.S.C. § 512:

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

In theory, broad representations of intellectual property infringement are unlikely to receive negative treatment from a court. However, overt misrepresentation of a non-existent right could bring penalties.

Automattic Inc. v. Steiner (2015)

In a recent case, Automattic Inc. v. Steiner, a Federal District Court in New Jersey found for plaintiffs alleging defendant’s misrepresentation of rights under the Copyright Act, and submission of a materially false take down notice.

This case arose when a student received a document entitled “Press Statement” from a person who identified themselves as a press officer of a company with homophobic sentiments. When the student published the article, the company issued a take down notice, claiming that the blog infringed upon the company’s exclusive rights under the Copyright Act.

A federal judge was not pleased with the company’s actions, as elucidated in the decision.

“[T]he Court finds that Defendant knowingly misrepresented that Hotham violated his copyright because Defendant could not have reasonably believed that the Press Release he sent to Hotham was protected under copyright. Moreover, there can be no dispute that Defendant knew, and indeed, specifically intended, that the takedown notice would result in the disabling of Hotham’s article.” (Incontestable)

Pursuant to § 512, described above, the Court awarded monetary damages to the plaintiff as well as attorneys fees. The Court did not, however, award the plaintiff for claims of reputational harm, emotional distress, or chilled speech.


Through various intellectual property mechanisms, creators of original works retain protections against unauthorized distribution. However, exclusive rights do not extend to every communication a person or company makes, nor do they prohibit another person from distributing unprotected works.

In the event that someone (especially a nosey journalist) obtains information that may shed negative light upon a person or company, neither the Copyright Act nor DMCA offer guaranteed protection. And where an entity knows they are not protected, but misrepresents that they are, they face the combined penalty of further negative publicity, and court ordered damages.




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