DMCA – After the counternotice

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Sometimes throwing down the gauntlet does more harm than good

Once the counter notice is sent things get tricky – many customers think that, having sent the counter notice, the materials can be returned to the website immediately, but that’s not true. The materials must remain offline for ten days after receipt of a valid counter notice, whether they are infringing or not. This provision is definitely favorable to copyright holders, and annoying to those who have to work around the removal for that ten day period. That waiting period can be particularly impactful when the content is timely, since that ten day window can be just enough to ensure that the content is irrelevant by the time it can be returned to the website. Not surprisingly, we see a lot of questionable DMCA notices during tight political races.

Even more important to remember, if you’re the one sending the counter notice, is that you are essentially throwing down the gauntlet and daring the other party to sue you, since that’s the only way to prevent the return of the materials to the website. Before sending that counter notice, you might want to consider long and hard whether (1) the other party is likely to sue and (2) whether you can afford to defend yourself (and deal with months or even years of legal aggravation) just so that you can use that photo of a kitten cuddling with a hamster on your blog. All kidding aside, lawsuits are painful and expensive, and potential damages for copyright cases can be astronomical, so sometimes it’s better to fold even if you are in the right.

Having received the valid counter notice, the hosting provider will forward it back to the sender of the original notice, which starts the clock ticking on the ten day waiting period. At that point the copyright holder has to either sue or accept that the materials will be put back online. While the law tends to be on the side of a valid copyright holder, the same caveats as above apply – lawsuits are an expensive and messy way to resolve a dispute, and collecting on a large judgment from a blogger with an audience of his mother and three of his best acquaintances may be more trouble than it’s worth. Just today I received a withdrawal of a counter notice against a very large company, which strongly suggests that, rather than sue a small website operator, the company reached out and came to an amicable resolution of the copyright dispute.

That being said, sometimes a lawsuit is the only way to ensure the continued removal of the material. Once the lawsuit is filed, the provider of the notice must provide proof of the lawsuit to the web host, who will forward it to the customer. At that point the web host’s job is done, at least until the lawsuit is complete months or years down the line.

DMCA – The counternotice

In this brief series on the DMCA notice and takedown procedures you’ve learned how to draft a (proper) notice and get it to the designated agent. Upon receipt of the notice by the designated agent, he web host will now review the materials and, if the notice is correct, ensure that the materials are removed from the website. It’s important to remember – the host is not checking to see if the copyright is infringed, it’s merely checking to see that all of the required statements are in the notice. If the notice is proper, in order to retain immunity the materials have to come down, even if they ultimately don’t infringe on anyone’s copyright. While that may seem unfair to customers who aren’t infringing on copyrights, it’s Congress’s compromise to ensure a (relatively) simple process.
The web host will forward the notice to the website owner, at which point the website owner can (and should) remove the allegedly infringing materials, since otherwise the host will have to do so. If the website owner wants to put the materials back online, the next step is to send a counter notice to the DMCA designated agent.

The elements of the counter notice are as follows:

(A) A physical or electronic signature of the subscriber.

As with the takedown notice, this is pretty much anything you intend to have serve as a signature.

(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.

This element will be a repeat of the third element of the original notice, listing the links which lead to the allegedly infringing materials in their original location before they were removed.

(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.

As with the notice, this is language which simply has to be in the counter notice, so this will typically read something like “I have a good faith belief that the material was removed …” and then the rest of the paragraph.

(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.

This one is a bit of a mouthful, but it’s actually pretty simple. First, the counter notice must contain contact information for the person providing the counter notice. Interestingly, whereas the notice provisions don’t necessary require any particular contact information, as long as the information is “reasonably sufficient,” the counter notice provisions specifically require the “name, address, and telephone number” of the person providing the counter notice.

The second part is another repeat of the language in the statute, although it’s a little more tricky. For counter notices filed from an address in the US, you might see something like “I hereby consent to the jurisdiction of the Federal District Court for the judicial district for the above address, and I agree to accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.” It’s not pretty, and it would read better if you replaced the generic language with the actual judicial district (e.g., Eastern District of Pennsylvania), but most non-lawyers won’t want to to figure out the specific district in which they reside. Also, if the wrong district is named, the host might deem the notice improper and ignore it.

While US residents are consenting to be sued in their own home jurisdiction, non-US-residents consent to any location in which the web host (rather than the person who provided the notice) can be sued. That statement might read something like “I hereby consent to the jurisdiction of Federal District Court for any judicial district in which the service provider may be found, and I agree to accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.” Again, you could put the actual service provider name and judicial district in the counter notice, but many service providers will be amenable to service in multiple jurisdictions, so it’s probably best to leave the generic language in there.

It’s very important to note that merely sending the notice does not result in the return of the allegedly infringing materials to the website – we’ll discuss this in detail in the next post, but the materials must remain offline for a period of time before they can be returned (if at all).

DMCA – A few things to remember

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In the last post, I told you how to prepare a DMCA Takedown notice, but I also mentioned a few caveats. Some of those are:

  • As I’ve said before, make sure you have all of the elements of the notice. It’s really not that hard.
  • In a similar vein, don’t lard up the notice with a ton of extraneous language. Lawyers in particular love to do this, but typically it just makes things more complicated for anyone who has to read it and slows the process. Often, the longest letters also leave out critical elements, which means they are actually less effective than a straightforward, simple notice. No one needs the back story – if the item is infringing we don’t need to know that the website belongs to your Uncle Max, who snuck the photo from your grandmother’s basement.
  • The DMCA is a pretty easy way to take down content which is copied, but that also makes it tempting to use for items which you want removed but for which you do not actually have the copyright (e.g., that unflattering photo of you which was actually taken by someone else, or that photo in your grandmother’s basement which you probably didn’t take). You can be held liable for false or inaccurate DMCA notices, so keep that in mind.
  • The DMCA is not for trademark complaints, although some service providers ask for a trademark notice which incorporates some of the elements of the DMCA. Don’t be surprised if a DMCA notice for a trademark matter doesn’t result in an immediate takedown (or any takedown at all).
  • While DMCA notices are most often sent to web hosting companies (and Google), anyone who has third-party content on their website, from comments to contributions, can and should register a DMCA agent. Before sending a cease and desist to a website, consider whether the content is actually the website owners and, if not, check to see if they have a DMCA agent
  • Unfortunately, people intent on copying online materials will often change providers as soon as the first notices are received, so before sending that angry followup to the host make sure the materials are still hosted with them

Unfortunately, as many frustrated writers and photographers have found, combating copyright infringement online resembles a game of whack-a-mole, so you may have to prioritize your copyright battles accordingly.
Next, we’ll find out what happens after your notice arrives at the web host.

DMCA – The takedown notice

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Since we’re on the topic of the DMCA, I thought I’d put together a primer on the DMCA takedown and notice procedures. As I mentioned in my last post, the takedown procedure offers a quick way for copyright holders to have their materials taken offline while reducing the risk for internet hosts and service providers – with caveats. We’ll cover the caveats later, but for now we’ll focus on the takedown notice, which notifies the host or ISP that there is infringing material on a website which they host. The takedown notice is addressed to the service provider, not the actual infringer, and will be forwarded by the service provider to its customer.

The takedown notice must include the following:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

This is pretty easy – anything which you intend to be a signature can be your signature. A scan will do, your name typed and preceded by /s/, just your name, or, in the right circumstances, even an “X” will do. As long as it can be construed as a signature it will probably suffice.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

This is the stuff you want removed, typically in the form of a URL leading directly to the infringing material. If there are too many to list, you can reduce it down to a reasonable sized list, but remember the host should be able to find those materials reasonably quickly – you can’t just point to the home page and say “it’s here” unless the entire home page is a copy of your materials. If the infringement is only a small portion of the page or site, consider providing a pdf with the infringing materials circled or highlighted.
Don’t list your own copyrighted materials here, or you risk having them removed. That’s like what my brother did a few years back when he called the city to have a car towed and inadvertently reported his own car, then in an effort to correct it he reported his car again. He then had to move his car. Don’t do it.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

In most cases, this is where you’ll provide links which show your materials in their original location. Again, a host should be able to look at the pages listed under (ii) then look at the list under (iii) and, without too much effort, see what is allegedly infringing. Use a list of URLs where needed, and an attachment showing the exact location of the original photo or text can be helpful where appropriate.
If your content isn’t online, provide enough information for the host to verify in some way that the materials are yours. I’ve seen links to books on Amazon, citations for published papers, and even scans of documents attached to DMCA notices – as long as the host has something credible to rely on it should suffice, and if it doesn’t they’ll likely let you know so you can supplement the notice with additional materials.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

This should be pretty self-evident, but it should really be more than just a reply-to address in an e-mailed complaint. A DMCA notice with contact information which is intended to avoid disclosing the identity of the complainant may be ignored by some service providers.

(v) 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.
(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

These two requirements seem to confuse people, but in reality it’s easy (and required). You simply have to parrot these two lines in your notice, e.g. “I have a good faith belief …” and “The information in this notification …” Whether you think it makes sense or not, these two statements are required, and leaving them out (or creatively rewriting them) can render the notice ineffective.

You can find a sample letter at EPIC and a host of other sites, or you can look through Lumen’s database of DMCA notices for thousands of examples, good and bad.

Some people (often attorneys) feel the need to lard up their notices with everything from copyright registration information to all sorts of creative reservations of rights or nasty threats. None of that is necessary, and much of it is superfluous. If the notice is proper, in order to benefit from the immunity provisions, an ISP has to either remove the materials or ask for clarification (if certain elements are present but the notice is not entirely in compliance with the law). If the notice is non-compliant it can, and probably will, be ignored.

Think your DMCA designated agent is set? Think again.

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Many businesses strive for an interactive website, but interactivity brings with it the risk that someone else’s posting will create legal risk. Fortunately, a number of laws help shield the website operator from risk, most important among them the Digital Millennium Copyright Act (DMCA)

The DMCA, or more specifically the DMCA “notice and takedown” procedure, protects businesses from copyright liability for content posted to their website by third parties. Essentially, website owners and operators who register with the US Copyright Office and follow the takedown procedure are granted immunity from copyright lawsuits as long as they were not actively involved in posting from the alleged infringement. This protection can be invaluable, given the potentially high cost of even inadvertent copyright infringement.

Key to DMCA protection is the designation of an agent with the US Copyright Office – without an agent, even companies which follow the procedure are not immune from liability. Under the original system, companies completed a paper form which was scanned and put online. Although it’s called a “directory,” the old list was really just a database of scanned forms, many handwritten and some illegible. Since the designations never expired, designations for long-inactive websites remained online well past the expiration dates of the underlying business ventures. Starting December 1, 2016 there’s a new directory which will replace the previous forms. In order to populate the directory, companies will be required to file electronic designations (along with a new, increased fee) by no later than December 31, 2017, after which all registrations under the old system will expire. Under the new rules, registrations must be renewed every three years.

Some have criticized this as a money grab on the part of the US Copyright Office and, frankly, I tend to agree. That being said, anyone who has ever filled out or tried to read the scanned “Interim Designation of Copyright Agent” has to agree that the procedure was in need of an overhaul. It’s hardly surprising that the government would want industry to pay.

For more information, see the US Copyright office’s website.