DMCA Safe Harbor and Takedown Notice Checklists

September 23, 2014 Leave a comment

The Digital Millennium Copyright Act (DMCA) offers protection against liability for website owners from third-party content. Copyright owners can also demand removal of their copyrighted works by following the rules provided by the DMCA.

Below are some checklists for website owners as well as copyright owners.

Website Owners: Do You Need Protection from the DMCA Safe Harbor Provisions?

Should you set up DMCA notification policies? If the answer to any of the following questions is “yes,” you likely want to ensure that the DMCA safe harbor provisions will protect you.

  • Is your site reliant on or otherwise focused on user-provided content?
  • Are users likely to post infringing materials in the comments section, discussion boards, or forums?
  • Do you link to other sites that could be posting infringing material without your knowledge?

Keep in mind that there may be other less-typical circumstances where you would also want to consider DMCA safe harbor protection — the key is whether your site will feature a lot of third-party content that may be infringing.

Website Owners: Protecting Yourself Under the DMCA Safe Harbor Provisions

Once you have decided that you will likely need protection under the DMCA safe harbor provisions, below are the conditions you must satisfy.

  • If you have the right and ability to control the infringing activity, you must not receive a financial benefit directly attributable to that activity.
“Right and ability to control” has been interpreted by many courts to mean something more than just the ability to locate infringing material and terminate users’ access. It has been found where:

  • a site owner organized torrent files with specific search terms describing material likely to be infringing (e.g., “screener,” “PPV”), personally assisted users in locating infringing files, or personally screened files to remove fake, infected, or bad torrents; and
  • a service provider gave participating websites detailed instructions regarding issues of layout, appearance, and content, refused access to its system until the sites comply with its requirements, or monitored images to ensure that the sites did not primarily consist of celebrity images;

“Right and ability to control” has not been found where:

  • the site owner could have implemented and did implement automatic filtering systems and could have merely searched for potentially infringing content.

“Financial benefit” can include advertising revenue.
  • You must not have actual knowledge that the material is infringing.
Generally, knowledge is not imputed on the website owner simply due to the material’s existence on the website.
  • Upon learning that the material is infringing, you must expeditiously remove such material.
What constitutes “expeditious” has not been further explained in the statutes, and likely depends on the circumstances. Courts have generally found that removing infringing materials within a few days is “expeditious”; for DMCA notices identifying 170 videos, 3.5 weeks has been considered “expeditious.” A processing time of four to 17 months, on the other hand, may not be “expeditious” — the court left the issue up to a jury to decide.
  • You must designate an agent to receive DMCA notifications; this agent’s name, address, phone number, and email must be on file with the U.S. Copyright Office and available on your own site.
Make sure to:

  • keep this information updated and current;
  • have someone regularly check correspondences, preferably daily;
  • for email, double-check your spam filters; and
  • for online forms, double-check that these work.

If the forms are forwarded to an email address, double-check spam filters. Certain email providers will flag online form emails as a “spoofed” email.

If you need to provide certain instructions to the copyright holder (e.g., how to provide a link to a comment or bulletin board post that will be specific enough for you to identify the infringing material), make that information available as well.
  • You must have adopted and reasonably implemented, as well as informed users, a policy that terminates the accounts for repeat infringers in appropriate circumstances.
The statute does not define “appropriate circumstances.” The key here is to craft a reasonable policy, adhere to that policy, and inform users of that policy.In the Ninth Circuit, the website/service owner must also not actively prevent copyright owners from collecting information necessary to issue DMCA notifications. For example, a peer-to-peer file-sharing network that encrypted data as to which user was sharing which files was found not to have a reasonably implemented repeat infringer policy.
  • You and your site must accommodate and not interfere with standard technical measures.
The statute defines “standard technical measures” as “technical measures that are used by copyright owners to identify or protect copyrighted works” and

  • “have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process”;
  • “are available to any person on reasonable and nondiscriminatory terms”; and
  • “do not impose substantial costs on service providers or substantial burdens on their systems or networks.”

Congress attempted to think ahead with this provision, but to date, nothing has qualified as “standard technical measures.”

At least one court has rejected the argument that providing an online image-cropping tool that could potentially crop out copyright watermarks would constitute interference with “standard technical measures.”

Copyright Owners: Issuing DMCA Takedown Notices

Before issuing a DMCA takedown notice, here are some questions to consider:

  • Do you own the copyright? If not, are you authorized by the copyright owner to issue the takedown notice? You must answer “yes” to one of these questions.
  • Keeping in mind fair use, is the material infringing?
Misrepresentations of infringement may make you liable for damages suffered by the other party, including the attorneys’ fees and costs they incurred.Whether a use constitutes fair use can be a complicated issue, but usually the following uses are not considered infringing: criticism, comment, news reporting, teaching, scholarship, research, or parodies.

Have you completely filled out the DMCA notice? If you do not, then the infringing material may not be removed.

    • You must identify the work being infringed upon (e.g., copyright registration number, URLs for the official work, or title/author information).
    • You must identify the infringing material with specificity such that it can be easily located by the host (e.g., URLs of pages or images).
    • You must provide your contact information, including address and telephone number, and email address if available.
    • You must state that you have “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.”
    • You must also state that “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.”
    • You must provide a signature, electronic or otherwise.

If the host refuses to act, or if the user issues a counter-notification, would you want to litigate the issue in courts? If so, your copyrighted material may have to be registered with the U.S. Copyright Office.

If there is a counter-notification and you would like to keep the infringing material off the website, you only have 10-14 days to file a lawsuit. Some federal districts require only that you have begun the registration process; others hold that you will need an issued registration at the time of filing the lawsuit. As case law is continually updated, you will have to verify the applicable law before issuing the DMCA takedown notice if litigation is a possibility.

 

Filed under Copyright Owners, DMCA, DMCA safe harbor provisions, DMCA take-down notices, Third-Party Content, Website Owners