In 2007, Stephanie Lenz went to You-Tube and posted a video of her baby running around her kitchen, pushing a toy cart, with a few seconds of Prince’s “Lets Go Crazy” playing in the background. Little did she know that this 29- second video would turn into a landmark court decision that would have significant effects on the adult entertainment industry.
Universal sent YouTube a DMCA takedown notice, claiming that the short, muffled video infringed on Universal’s copyright to the song. Lenz then utilized a rarely employed portion of the DMCA, 17 U.S.C. § 512(f), which allows a lawsuit against someone who uses a DMCA notice in bad faith. The basis of her claim in the so-called “dancing baby” case was that Universal knew, or should have known, that her use of the short bit of the song constituted “fair use.”
If you are a paysite owner, imagine the outrage you would feel if you hired a DMCA takedown company, they send thousands of notices on your behalf, but they hit a handful of licensed clips and a handful of cumpilations. A few weeks later, you get served with a lawsuit by a collection of tube sites!
The Digital Millennium Copyright Act (DMCA) allows copyright owners to demand that infringing content comes down, as long as a formal notice gets sent to the relevant website. Once the service provider gets a DMCA notice, they have to remove the content “expeditiously” or they can be held liable themselves. This immunity grants service providers protection, but some say that it infringes free expression, as there is no reason for service providers to actually evaluate the legitimacy of the takedown notices. Meanwhile, providers are not concerned about user-initiated suits because most have waivers of liability in their user agreements. Thus, in many cases providers have little reason to make users aware of the takedown or to inform them that a counter-notice is an option.
Under the DMCA, all the copyright owner has to do is swear that it is his content and that it isn’t authorized, and down it comes (at least in theory). At the time the DMCA passed, movie studios and record companies liked the provision—since it allowed them to remedy online piracy with little more than a form letter. However, some saw it as an over-reach and a prior restraint on speech.
Congress recognized the potential for DMCA notice abuse. Therefore, it put in a provision that puts a price tag on unsupported infringement claims. Subsection 512(f) provides liability for bogus takedown requests, including actual damages, costs, and attorneys’ fees.
At the advent of the DMCA, some alarmists said that the sky was falling, and some continue to. Amici curiae in the Lenz case noted that Google, Twitter, and other OSPs receive hundreds of unfounded takedown claims per day and even cite to the EFF “Takedown Hall of Shame” to illustrate the harsh realities of what they consider to be the DMCA’s ineffective system. Before the most recent Lenz decision, copyright owners were “free to send a takedown notice for cases of questionable infringement, de minimis infringement, or in clear cases of fair use.” There simply was very little disincentive.
Predictions of DMCA abuse have proven prescient. “A number of notices … appear to include claims in addition to, or instead of, copyright infringement—such as unfair competition, trademark-type claims, or privacy concerns.” However, even those have some justification. But, the DMCA is also a tool of straight up censorship. In Automattic Inc. vs. Steiner, a blogger contacted “ Straight Pride UK” and inquired about their stance on gay rights. The blogger posted the interview, which was not flattering to Straight pride. The group sent DMCA notices, and down the article came. The blogger brought a § 512(f) claim and prevailed, although on default.
The DMCA is not only subject to intentional abuse, but ham-fisted errors as well. For instance, in 2003 the RIAA sent a DMCA notice to Penn State University regarding a song performed by Penn State staff member Peter Usher, which was in fact about a gamma ray satellite designed by the school. The combination of “Usher” and “.mp3” triggered the notice. The “RIAA confirmed that its policy does not require its Internet copyright enforcers to listen to the complete song.”
In 2013, professor Lawrence Lessig brought a claim against Liberation Music over a DMCA takedown notice for a recording of his lecture. Lessig’s lecture, held in Seoul, South Korea, was about culture and the Internet. It included different video clips from the “Lisztomania copycat video phenomenon” to illustrate tools used in Internet communication. Liberation Music issued a takedown notice after Lessig posted his lecture to YouTube. In response to his counter-notice, Liberation sent an email directly to Lessig stating it would “commence legal proceedings … for copyright infringement … in 72 hours” if he failed to retract the counter-notice. Lessig responded by filing for declaratory judgment and damages under § 512(f) and Liberation immediately settled for an undisclosed amount. Liberation blamed an untrained employee who failed to watch the video before issuing the notice.
These examples show how DMCA takedown notices can be abused as tools of censorship, either intentional or unintentional. But, it also shows that if you send a DMCA notice without thinking it through, you very well could find yourself in legal trouble.
It isn’t just users and websites who find that the DMCA is a poor fit for today’s reality. Copyright owners have found that growing online piracy left them playing “whack a mole” by having to send hundreds of thousands of notices, just to find that the content winds up online again seconds later. The “digital movement has turned everybody into potential distributors and, in the eyes of copyright holders, into potentially dangerous copyright infringers.” ISPs can aid copyright owners by using some limited network management tools, but the available routes do not come close to their ability to implement all takedown notices.
Congress recognized the potential for DMCA notices to be abused. Therefore, it put in the provision that puts a price tag on unsupported infringement claims, and which was at the center of the Lenz case. Subsection 512(f) provides liability for bogus takedown requests, including “any damages, including costs and attorneys’ fees incurred by the alleged infringer … or by a service provider.”
Although the DMCA is intended to protect copyright, and it has the effect of making some free speech “collateral damage,” the DMCA has especially poor eyesight when it comes to “fair use.” Fair use is the right we all have to use someone else’s copyrighted works — with or without permission, as long as we are creating a “transformative” work in the process.
For example, let’s say you want to review a movie. You can’t very well do that without showing at least a short clip from the film. Or, if you want to criticize a book, you can’t do that without some quotes. Parodies? You need to use some of the original. In the adult entertainment context, “cumpilations” are the most common form of “fair use.” These are when a user takes his favorite bits from a number of works, making a mashup of those brief clips. Of course, some users think that taking three clips of 20 minutes each and making them into a 60-minute “compilation” is fair use as well. It is not.
There is always a tension between “fair use” and copyright owners. That same First Amendment that adult film producers love when censors knock on their door? It requires them to give up some control. Copyright owners understandably want to control and/or profit from every aspect of their works. But, the First Amendment requires that we have some fair use provisions, otherwise copyright acts too much like a tool of censorship and strangles creativity.
The Lenz Case
The key question in whether the copyright owner will be liable under 512(f) is whether they appropriately swear under 17 U.S.C. § 512(c) that the “use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.” Before this decision, it was unclear whether the owner of the work really had to worry about 512(f) claims. However, Lenz vs. Universal demands that before you send a DMCA notice, you must consider fair use.
In Lenz, the 9th U.S. Circuit Court of Appeals disagreed with Universal, holding “Anyone who makes a fair use of the work is not an infringer of the copyright with respect to such use.” In fact, fair use under § 107 “expressly authorizes fair use,” making it a right.
Given that there is so much adult content being pirated online, adult film producers blanket tube sites and one click hosting sites with DMCA notices. Nate Glass, who runs one of the best-known DMCA services in the industry, said that the adult industry sends more than 10 million takedown requests per month. Such a volume creates a mathematical impossibility that there are not thousands of errors per month. Whether a studio sends its own DMCA notices or has a third party send them, 512(f) is now something to be concerned about.
While Lenz makes it clear that a takedown request can only be sent after considering fair use, its implications are broader than that. For example, what if a studio sends a DMCA takedown request to a tube site, but that content was placed on the tube site by an affiliate, who had the right to place it there? While Lenz did not consider this question, it would seem that licensed content wrongfully removed could cause even greater headaches than hard-to-pin-down fair uses.
Porn tube sites may see a decrease in the number of takedown notices while copyright owners adjust to Lenz. Any takedown service or studio would be well-advised to be a lot more careful before sending a DMCA notice. While 512(f) has always been there, it has been regarded as somewhat impotent. Lenz changes that, especially in light of its language that the site need not show actual damages.
If you are a paysite owner, imagine the outrage you would feel if you hired a DMCA takedown company, they send thousands of notices on your behalf, but they hit a handful of licensed clips and a handful of cumpilations.
A few weeks later, you get served with a lawsuit by a collection of tube sites!
Under § 512(f) and Lenz, this is a distinct possibility. Therefore, if there is any question as to whether the file is legally up or not, you should be extremely cautious.
© Marc J. Randazza
Marc J. Randazza is the managing partner at Randazza Legal Group. The firm has offices in Las Vegas and Miami, both specializing in intellectual property, First Amendment and Internet law. He can be reached at firstname.lastname@example.org