4 Dirty Little Secrets
This article is addressed to the producer who has invested his or her time, blood, sweat, tears, money, and juices (creative or otherwise) in finding talent, paying performers, developing forms, getting access to a studio, directing performers, editing content, creating a site and paying for hosting, design, scripts, SEO, and spending countless hours trying to promote and reap some financial reward from all of this. It is also addressed to those producers who have been the targets of pirate boards, file lockers, peer to peer file sharing protocols, just out and out theft, and most especially to those whose attempts at takedowns and DMCA letters have fallen on deaf ears.
Most U.S. pirating boards are ashamed of what they do and live in fear of liability; U.S. hosting companies are also pretty worried because they have a lot invested — and many of them don’t require any formality to effect a takedown. If you write the request for a takedown on a leaf of stale cabbage in magic marker, without stating any reason or offering any proof or affidavit pursuant to the DMCA, and transmit it by a casual, friendly courier, who works a garbage truck route running past their office and offers to drop it off for you, most of them will take it down fairly immediately, within hours, because they are more afraid of you and your attorneys than they are of the posters. The offshore beehives of piracy are often more brazen the further they are from the civilization of North America and Europe, and within Europe, the more lenient the courts of a country are about “fair use”, the more flagrantly hosts may ignore even the most technically-compliant takedown requests under U.S. and European laws.
• But, honestly, most of them don’t have much to fear from the large bulk of the requests they receive and that’s the first dirty little secret. A huge number of takedown requests are simple emails that do not come within a parsec of actual DMCA compliance: Ignoring them doesn’t risk losing any immunity. Here’s why those deficient notices frequently do work: it’s not easily possible for these hosts and pirates, trading in infringement in bulk as they do, to be able to easily discern between the small number of takedown requests that have a real potential of harm and the large majority which don’t. So many of them, close to home, adopt a policy of overabundant caution hoping that it keeps their liability as close to zero as possible. The foreign hosts factor in their geographical isolation from the reach of your legal resources and often apply a less charitable policy, far less affected by fear of anything you might do. (Never forget that hosts must also consider the risk of getting sued by their customers for wrongful takedowns, too; they truly are between Scylla and Charybdis, a circumstance unavoidable to any of us who have represent hosts.) In recent months, creative and sometimes heroic members of this industry have banded together to create what amounts to insecticides that attack the tools used by knowing infringers’ hives en masse in lieu of trying to kill one bee at a time. I applaud their goals, but what they do is outside the scope of this piece.
If you wish to protect your intellectual property, your copyright, it is a mistake to rely upon the perhaps nonexistent compassion or the largely unfounded fears of your adversaries; you must do everything you are able to do to position yourself to establish an effective and credible threat of an expensive lawsuit.
• The second dirty little secret is that a very tiny number of the videos released via the Internet are ever registered with the Library of Congress. You have no legal right to maintain any lawsuit for infringement on the basis of an unregistered copyright. Period.
Look at Section 411(a) of the Copyright Act.) While your copyright theoretically exists in U.S. law and under the Berne Convention from the time that it is first reduced to a tangible medium (there are exceptions allowing preregistration of things that are first fixed at the time of transmission, like the 6 p.m. network news and Trailer Park Sally’s webcam show), it is a hollow and illusory right upon which no lawsuit can be maintained until you’ve registered it. On the motion of the defendant, it will be dismissed without prejudice.
This is exactly what happened on May 12 of this year in federal court in New York City in many of the consolidated cases under the name In Re: Bittorrent Adult Film Copyright Infringement Cases.
Now, to be complete, I should add that there is a split among the various federal circuits around the country, and some of them will permit a filing to proceed pending an application for registration (the 9th U.S. Circuit Court of Appeals, covering the West Coast and a part of the Southwest and the 7th U.S. Circuit Court of Appeals, sitting in Chicago are among them) but courts of other circuits will dismiss without prejudice until a registration certificate is obtained (the 11th U.S. Circuit Court of Appeals, including Florida, and the trial courts of the Second Circuit [including New York] and of the 3rd U.S. Circuit Court of Appeals[including New Jersey and Philadelphia]).
But no court anywhere will permit an action to continue over objection unless or until the application for copyright registration has been submitted and the fee paid. Threatening any lawsuit, in the absence of a submitted application for registration is just plain premature and is built on a foundation of mud; such a lawsuit may be dismissed without much notice or fanfare.
You may not get past the clerk’s desk with it. (Your adversaries know this and will, if sophisticated, consider the probabilities of whether you can do anything you threaten. A smart reply to any copyright shakedown letter is to demand proof of registration.)
Now, the truth is that an application for copyright registration costs you $35, the completion of an easy to find form, and one or two discs containing the material. The reasoning behind the Copyright Act is simple: if it’s not worth that small expenditure to you to protect your property, why should it be worth the time of the federal courts or that of anyone else? Here is where you start, to read the FAQ’s, obtain forms, and learn how to log on and upload your content for registration: http://www.copyright.gov/help/faq/
• The third dirty little secret is that, to have any credible threat of obtaining an award of attorney’s fees from your adversary, and avoiding all the expense of hiring an expert witness about the value of damages by getting “presumed statutory damages” automatically, your copyright registration must come before the infringement takes place or within three months of first publication of the material. Section 412 of the Copyright Act is where to start in order to learn about this. These two exceptional benefits of timely registration usually establish the difference between an ability to actually proceed in court in the real world and practically being unable to do so.
You can register your copyright at any time during the life of the copyright — and that will always get you into court, able to maintain your suit, but if you wait until after an infringement takes place, and it’s more than three months since first publication, you will have lost your practical ability to sue, unless the value of the infringement is so large, and your pockets so deep, that you are willing to pay your attorney’s fees without hope of recouping them in the judgment, yet risking that you might have to pay your opponent’s legal fees if you lose — yes, a hidden danger is that if your adversary prevails, the judge may award him attorney’s fees regardless of whether you’ve registered! That’s a very serious danger if you manage to file suit without registration.
• The fourth dirty little secret is that if your adversary simply ignores your righteous and technically perfect DMCA takedown demand letter, blowing it off doesn’t give you any independent basis upon which to sue him.
The DMCA notice and takedown provisions merely provide hosts and websites like them an immunity from copyright infringement liability. If they mess up with DMCA compliance, their risk is merely a suit for copyright infringement without the benefit of that statutory immunity. Whether the loss of that immunity makes any difference to the host depends on whether you have a cause of action for infringement that you can maintain in court and whether it’s practical for you to proceed with it.
Absent registration, you can’t stay in court if the other side objects; they will not have any liability for your attorney’s fees and — perhaps most significantly — you will be forced to prove every penny of damages at your own expense — which typically requires the expensive testimony of an accountant and an experienced, knowledgeable operator who understands the value of content (both about its value to bring in subscription revenue, and ultimately its sale value when it is sold in bulk or alternatively, the profits to the infringer associated with it.). Your failure to timely register may leave you with only a theoretical, but entirely impractical ability to secure redress from the thieves.
If you find yourself in that situation, for all intents and purposes, you will be forced to rely upon the kindness and compassion of strangers for any relief at all. It is far better to protect yourself by establishing a routine of copying all of your new content every three months to discs (keep a copy of those discs in a safe deposit box), and transmitting them with certified mail or by upload, to the Copyright Office like clockwork.
I will only add that there are some twists and turns in the law that may provide a remedy for some ongoing infringement despite an untimely registration. Avoid the twists and turns and all the hassles and the need to rely on kind hearts. Register promptly within three months, do it every quarter without fail, and you will always have protection!
J. D. Obenberger is a trial lawyer who has represented adult interests since 1993 and has practiced law since 1979. He represents clients from Budapest to Hong Kong with stops in every region of the U.S. His email address is firstname.lastname@example.org, his firm website is XXXLaw.com, and he can be followed on Twitter at @2257JD.