by Nikki Leung, Emory Law Class of 2016
For some content creators, the digital era is a dream come true. The low-to-non-existent cost of publishing and distributing content means that virtually anyone can create and then monetize their work. But, the increasingly digital nature of our media consumption comes with a darker side. As the law currently stands, it is difficult for individual creators to enforce their rights online, both when being infringed and when falling victim to false takedown notices.
The Digital Millennium Copyright Act
The Digital Millennium Copyright Act (DMCA), which was enacted in 1998, is meant to address copyright in the context of the internet. The most notorious sections of the DMCA that many internet users are likely to encounter at some point are the notice and takedown provisions. Those provisions grant entities that qualify as “service providers,” e.g., YouTube and Google, immunity from liability for infringing content uploaded by their users so long as they comply with certain DMCA requirements. So, if Party X decides to upload an episode of Supernatural to YouTube, then Warner Bros. cannot hold YouTube responsible so long as YouTube abides by those DMCA requirements. The rationale for extending protection to service providers is that if they were to be held liable for any material that other people uploaded, then we wouldn’t have any services provides, because no company would willingly take on such liability.
One of the requirements for safe harbor under the DMCA is that the service provider must either (a) not have actual knowledge of the infringing material or activity on their system, (b) not be aware of facts or circumstances from which infringing activity is apparent, or (c) expeditiously remove access to material upon obtaining knowledge or awareness. When a service provider receives a takedown notice, the notice triggers an obligation on the part of the service provider to “expeditiously” remove the accused material (although the DMCA doesn’t specify what qualifies as “expeditiously,” leading to some variation among service providers). Note that a service provider under these provisions is safer when they don’t have knowledge or awareness that would obligate them to remove content. What this means is that the burden of identifying and filing for removal of infringing content is entirely on the copyright holder.
Takedown notices must also comply with DMCA requirements or risk not triggering an obligation on the part of the service provider to expeditiously remove the accused material. A takedown notice can only be filed by either the copyright holder for the content or someone who has the authority to act on their behalf. Takedown notices should only be used for copyright infringements. This means (1) it must be a valid copyright and (2) it must be an infringement. Before filing, do some research and consider if the use may be protected under the fair use doctrine. Knowingly filing takedown notices to protect other non-copyright interests, such as trademark, censorship, or just to be a jerk, constitutes misuse and can result in penalties.
What Happens After Filing a Takedown Notice?
After a takedown notice is filed, there are a couple things that can happen. If the user whose content was reported doesn’t file a counternotice – which also has its own requirements under the Digital Millennium Copyright Act – then the content remains removed. If the user does file a counternotice, then you have two choices: either commence legal action against that user, which can be expensive, or do nothing. If no legal action is commenced following counternotice, then the service provider is obligated to put the accused material back on the website within 10-14 business days. However, even if the offending content is removed, whether pursuant to a takedown notice or litigation, nothing guarantees that it can’t simply be re-uploaded again, either by the same or different user. This leads to a lot of frustration for copyright holders who feel like they’re playing a game of Whack-a-Mole when trying to protect their copyrights online.
Of course, misuse of the Digital Millennium Copyright Act takedown provisions also happens. Someone may be filing fraudulent notices out of spite, or they may disagree with the content and try to censor it through misuse of the DMCA takedown provisions. Or maybe someone is filing DMCA takedown notices for non-copyright legal claims, such as trademark or defamation.
If you’re a victim of a fraudulent takedown notice, remember that you can file a counternotice if you’re willing to possibly be involved in litigation. Once your counter-notice is filed, either the accuser will do nothing or institute legal action. But even if no litigation is pursued or the person who filed is not actually the copyright owner or person authorized to act on their behalf, waiting 10-14 days for your content to be restored can be frustrating or even financially detrimental, depending on the nature of the content.
On paper, the DMCA prohibits misrepresentative takedown notices under § 512(f). In practice, a claim under that section can be pretty difficult to win. First, as we’ve already established, litigation is costly, and you’d have to file a separate suit for this claim. Next, you have to prove that the accusing party filed the notice with actual knowledge that the claims were misrepresentative. Courts judge whether the complaining party had “actual knowledge” based on a subjective standard. What this means for you is that you have to prove that the accuser actually knew that they were misrepresenting, which can be hard to do.
What About Fair Use?
This past year, the 9th Circuit Court of Appeals 9th Circuit Ruling before sending a takedown notification or risk of being held liable for damages under § 512(f). Note that the holding only extends to the consideration of fair use – whether or not the copyright holder’s conclusion following consideration is different from what a court would decide is not relevant as long as it is a good faith belief that it does not constitute fair use. If there is evidence to the contrary, just claiming that there was consideration might not be enough to save a copyright holder from liability for damages under § 512(f). To prove that you took fair use into account, you could consider drafting a memo to yourself or, if the stakes or high enough, consulting with a reputable attorney on the subject.
While the court in the foregoing case did decide that the victim of a false takedown notice would be entitled to nominal damages – that is, damages that are awarded even in the absence of a financial harm – the question as to recovery for attorneys’ fees has yet to be settled. A previous ruling had limited recovery for attorneys’ fees to services in responding to the original takedown notice and prior to the suit for DMCA misuse. Any other costs and fees, including attorneys’ fees for litigation, would be awarded based on the court’s discretion. Those considering engaging in DMCA misuse litigation should therefore be wary – there is a chance that you will not receive compensation to offset any payments made for attorney services.
Being on either side of the Digital Millennium Copyright Act can be disadvantageous, especially when you’re not an entity that has the resources to foot litigation bills or trawl through a massive amount of content to identify infringers. This dilemma hasn’t gone completely unnoticed – as of December 31, 2015, the Copyright Office has asked for Federal Register Public Comment specifically on the notice and takedown provisions of the DMCA, and will be taking them until March 21, 2016. And there is certainly active public discussion on the matter, so hopefully there will be some improvement in the future. In the meanwhile, content creators will have to ask themselves exactly how much in terms of resources they are willing to commit for their rights.
 17 U.S.C. § 512(c).
 17 U.S.C. § 512(c)(1)(A).
 17 U.S.C. § 512(c)(3)(A).
 17 U.S.C. § 512(c)(1)(A)(iii).
 17 U.S.C. § 512(c)(3)(A).
 17 U.S.C. § 512(f).
17 U.S.C. § 512(g)(3).
17 U.S.C. § 512(g)(2)(C).
 17 U.S.C. § 512(f).
 Rossi v. Motion Picture Association of America, Inc., 391 F.3d 1000, 1005 (9th Cir. 2004) (“A copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake….[T]here must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner”).
 Lenz v. Universal Music Corp. 801 F.3d 1126, 1134 (9th Cir. 2015). (“To be clear, if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under § 512(f)”).
 Id. at 1134-1135.
 Id. at 1135.
 Id. at 1137.
 Lenz v. Universal Music Corp. No. C 07-3783 JF, 2010 U.S. Dist. LEXIS 16899, at *29 (N. D. Cal. Feb. 25 2010).