Legal Reality: DMCA Takedown Notices, Requirements
Recently I have received a lot of requests from our readers regarding the requirements for a proper DMCA takedown notice. For those not familiar with a DMCA (Digital Millennium Copyright Act) takedown notice, it is a communication that is sent to an online service provider (OSP) by a party that owns or controls the copyright in a work that the party believes is being infringed on a website or via an online service controlled by the service provider. But before we get into the details about what should be included in a proper DMCA takedown notice, it is helpful to know why such notices are required in the first place.
Under the law in the U.S., a person or other legal entity can be liable for copyright infringement either as a direct infringer or as a contributory copyright infringer. A direct infringer of a copyright is a party that wrongfully copies, publishes, performs or creates unauthorized derivative works of photographs, motion pictures, music, books or other artistic material subject to copyright protection. A contributory copyright infringer, in contrast, is not usually the party that wrongfully copies, publishes, performs or makes derivative works of another’s copyrighted material directly. Instead, a contributory copyright infringer is a person or entity that induces, causes, or materially contributes to the infringing conduct of another with knowledge that the conduct has infringed, or will infringe, someone’s copyright.
For example, suppose that a consumer uploads an unauthorized copy of motion picture content owned by a studio to a website that encourages user generated content (UCG) submissions. If the website is hosted by an OSP providing web hosting services to the company that owns the UCG website, both the OSP and the UCG website owner might be liable to the studio for contributory copyright infringement of the studio’s copyright in the content arising from unauthorized distribution of copies of the content via the UCG website through the service provided by the OSP. This is because the UCG website and OSP’s servers provide the functional means by which the studio’s content is copied and made available to the public. Both activities are likely to be deemed to be material contributions to the infringing activity initiated by the consumer. In fact, in this example, it should be clear that, but for, the operation of the UCG website and the OSP’s web hosting services, the studio’s copyright in the subject content would not be infringed.
The threat of liability for contributory copyright infringement impacts a broad spectrum of online service providers, including web hosting companies, bandwidth providers, and even owners of a websites that allow content uploading or otherwise exploit user generated content. In the early days of the developing World Wide Web, Congress rightly perceived that the risk of potentially enormous contributory copyright infringement liability would be a strong disincentive for companies and entrepreneurs to invest in Internet infrastructure and online service businesses. So to strike a balance between the intellectual property interests of copyright owners and the business interests of online service providers, Congress included in the DMCA, signed into law on Oct. 28, 1998, certain “safe harbor” provisions designed to insulate OSPs from contributory copyright infringement liability. For example, the safe harbor provisions of the DMCA can effectively shield an OSP from liability for contributory copyright infringement that might otherwise be associated with infringing material stored, posted, or otherwise placed on an OSP’s website or transmitted via an online service provided by an OSP.
But, for an OSP to obtain the protections provided by the DMCA, the OSP must meet the following requirements: (i) the OSP must not have had knowledge of the infringing activity, (ii) the infringing material must be expeditiously removed from the website or access to the material must be blocked once the infringement becomes known to the OSP, (iii) the OSP must not receive any direct financial benefit from the infringing activity, and (iv) the OSP must register, with the Copyright Office, the name and contact information of an agent designated to receive notifications of claimed copyright infringements.
The main objective of a DMCA takedown notice is to provide notice to the OSP, in a manner prescribed in the DMCA, that the OSP’s website or other online service contains, or provides access to, the infringement(s) of the work(s) identified in the notice. By providing such notice (assuming that it satisfies the requirements under the DMCA), the recipient OSP’s obligation to expeditiously remove or block access to the infringing material is triggered. In addition, a proper notice will provide the OSP with knowledge of the infringement that will likely bar the OSP’s ability to use the DMCA’s safe harbor provisions to shield the OSP from claims of contributory infringement with respect to the identified infringement of work if the infringing use is not expeditiously removed or access to it is not blocked by the OSP. Essentially this means that, when an OSP receives a notice from a copyright holder, it is required to remove or disable access to the accused material in order to avoid being held liable for copyright infringement itself. This is why, many OSPs, particularly those physically located in the U.S., are generally very responsive and cooperative regarding their receipt of takedown notices.
The Takedown Notice
There is no particular form or format for a DMCA takedown notice. It is basically a firmly worded request or demand, by an authorized party, that directs the OSP to immediately remove or block access to clearly identified works that the sender lawfully asserts are being infringed. In accordance with specifications in the DMCA, each takedown notice must include all of the following:
• A physical or electronic signature of a person authorized to act on behalf of the copyright owner of the work in question (17 U.S.C § 512 (c)(3)(A)(i));
• Identification of the copyrighted work or works claimed to have been infringed, e.g., a copy of the work, or, in the case of multiple works a representative set of samples (17 U.S.C. § 512 (c)(3)(A)(ii));
• Information reasonably sufficient to permit the OSP to locate the material (e.g., the IP address of the infringement) (17U.S.C § 512 (c) (3)(A)(iii));
• Information reasonably sufficient to permit the OSP to contact the complaining party, such as an address, telephone number, and, if available, an email address (17U.S.C § 512 (c) (3)(A)(iv));
• 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 law (17 U.S.C §512 (c) (3)(A)(v)); and,
• A statement, under penalty of perjury, that the information in the notification is accurate and that the complaining party is authorized to act on behalf of the owner of an exclusive copyright that is allegedly infringed(17 U.S.C § 512 (c)(3)(A)(v)).
The following must not be in a takedown notice:
• Misrepresentations concerning copyright infringement (the DMCA subjects a party misrepresenting copyright infringement to liability for damages incurred as a result of the wrongful removal or blocking of the material and associated court costs and attorney’s fees);
• Defamatory statements; and,
• Threats of criminal prosecution.
The takedown notice should be sent to the person registered with the U.S. Copyright Office as the OSP’s “designated agent.” The name and contact information for the designated agent should be easily found on the OSP’s website.
If an OSP does not register a designated agent with the Copyright Office, the OSP may not be eligible to use the DMCA’s safe harbor protections against claims of contributory copyright infringement. This is a very important, and sometimes overlooked, requirement. In fact, failure to register a designated agent with the Copyright Office prior to the receipt of a takedown notice or notice of copyright infringement can result in the OSP’s complete inability to use the DMCA’s protections against claims of contributory copyright infringement associated with content appearing on the OSP’s website until such registration of a designated agent is made.
The importance of the DMCA’s required registration of a designated agent with the Copyright Office was confirmed in a recent decision by the U.S. District Court for the Northern District of California in Oppenheimer vs. All voices Inc.
In that case, the court held that the DMCA will only provide a safe harbor to an OSP if the service provider has designated an agent to receive notifications of claimed infringement as required under the Act. The court observed that Section 512(c)(2) of the Copyright Act “plainly specifies that a registered agent is a predicate, express condition” required for the statutory exemption to apply.
The OSP also failed to designate an agent until after receipt of notification that infringing material had been uploaded to its website by a third party. The court held that the OSP could not invoke the DMCA’s safe harbor provisions with respect to infringing conduct that occurred prior to its designation of a DMCA agent with the Copyright Office.
Despite the importance of obtaining and maintaining the liability protection provided by the DMCA’s safe harbor provisions, it is puzzling to me that many OSPs operating websites that include substantial amounts of user-generated content, such as dating websites, webcam sites, and tubesites, do not provide contact information for the receipt of information regarding alleged infringements on their site, or fail to register a designated agent with the Copyright Office.
Some, I have found, mistakenly believe that the OSP safe harbor protections are automatic. But the law is clear: online service providers must clearly provide contact information for a designated agent to receive reports of alleged copyright infringement on their sites and they must register their DMCA agents with the Copyright Office in order to obtain the protection of the DMCA’s safe harbor limitations of liability for OSPs.
Website owners and other online service providers should also be sure to update their infringement reporting policy and published designated agent contact information on a regular basis to be sure that any modifications to their website do not result in removal of copyright infringement reporting and designated agent contact information from public access.
Unfortunately, I have found that the effectiveness of providing of DMCA takedown notices tends to be much greater for OSPs located in the U.S. It has been my experience that many OSPs outside of the jurisdiction of U.S. courts are much less inclined to respond to DMCA takedown letters. But like many other entertainment attorneys, I am hopeful that someday there will be greater international cooperation regarding the enforcement of copyrights infringed online.
In sum, the notice and takedown provisions of the DMCA are logical and straight-forward. They provide a relatively simple way for copyright owners to provide legal notice of infringement to OSPs that may only be ignored by recipient OSPs at the risk of losing their shielding from contributory copyright infringement.
This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice. If you have a legal question or other matter related to the any of the topics discussed in this article, I invite you to contact our office at the number below or other qualified counsel.
Greg Piccionelli is an experienced entertainment attorney. He can be reached at Piccionelli & Sarno at (818) 201-3955