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).