No More One and Done for DMCA Agent Designation Filing

The Digital Millennium Copyright Act (DMCA) shields online service providers from liability for copyright infringement for information uploaded to their networks by users, the “safe harbor,” if the online service providers meet certain requirements. To benefit from the DMCA safe harbor, the online service provider must designate an agent to receive copyright infringement notices. The online service provider must also file the designated agent contact information with the Register of Copyrights. The DMCA requires the Register of Copyrights to maintain a current directory of the designated agents.

Until now, online service providers could comply with the DMCA designated agent filing requirement by filing with the Register of Copyright just once. The U.S. Copyright Office instituted a new rule entitled “Designation of Agent To Receive Notification of Claimed Infringement,” effective December 1, 2016. Beginning December 1, 2016, online service providers must use the Copyright Office’s new online system to provide the required designated agent information. The Copyright Office will no longer accept paper forms. To ensure the accuracy of the designated agent directory, the Copyright Office now states “all service providers seeking to comply with 17 U.S.C. 512(c)(2), including those that have previously designated an agent using the paper process under the Office’s interim regulations, are required to submit new designations through the electronic system by December 31, 2017.” In addition, the online service provider’s agent designation will expire and become invalid after three years unless the online service provider renews the agent designation. Some copyright thought leaders argue that the Copyright Office’s rule changes create a trap for unwary website owners who currently benefit from the DMCA safe harbor.  Eric Goldman explains his objections to the new rule in Copyright Office Gratuitously Kills the DMCA Safe Harbor for Thousands of Websites.

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ISPs Receive DMCA Safe Harbor Protection for Pre-1972 Sound Recordings

Capitol Records and other sound recording copyright owners sued Vimeo for copyright infringement, alleging Digital Millennium Copyright Act (DMCA) violations.  Vimeo is an Internet service provider that allows members to post videos the members create, which the general public can view.  The copyright owners alleged that some of the member-created videos included copyrighted content without authorization from the copyright owners.  The interlocutory appeal from the district court presented three issues to the Second Circuit Court of Appeals.

(i) whether the DMCA §512(c) safe harbor applies to pre-1972 sound recordings.  This is a different issue than copyright owners’ rights under state copyright law for pre-1972 sound recordings.

(ii) whether evidence of some viewing by Vimeo employees of videos that played all or virtually all of ‘recognizable’ copyrighted songs was sufficient to satisfy the standard of red flag knowledge, which would make Vimeo ineligible for the DMCA safe harbor; and

(iii) whether Plaintiffs have shown that Vimeo had a general policy of willful blindness to infringement of sound recordings, which would justify imputing to Vimeo knowledge of the specific infringements.

The Second Circuit affirmed the district court’s rulings in part and vacated in part.  The Second Circuit ruled that the DMCA safe harbor, a federal statute, protects service providers from infringement liability for pre-1972 sound recordings, which are covered by state law.  Secondly, the Second Circuit ruled that some viewing by a service provider’s employee of a video that plays all or virtually all of a recognizable copyrighted song does not disqualify the service provider from safe harbor protection.  Thirdly, the Second Circuit ruled that the copyright owners did not show a policy of willful blindness by Vimeo that would have disqualified Vimeo from safe harbor protection.

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Independent Contractor Content Providers Ruled DMCA Safe Harbor Users

BWP Media owns the rights to a number of celebrity photographs.  BWP sued Clarity Digital Group (n/k/a/ AXS) for copyright infringement when 75 of BWP’s photos appeared without BWP’s permission on, a website owned by AXS.  AXS argued it was protected from liability by the Digital Millennium Copyright Act (DMCA) safe harbor.  The district court agreed and granted AXS’s motion for summary judgement.  The Tenth Circuit affirmed.

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No Registration Required for DMCA Copyright Management Information Claim

Playboy sued (MTO) for copyright infringement and violating the Digital Millennium Copyright Act (DMCA).  Playboy owns the exclusive license to 3 photos of entertainer Azealia Banks.  Two registered photos are nude photos.  One unregistered photo is a non-nude photo.  Playboy alleges that MTO removed Playboy’s watermark and applied MTO’s own watermark to the photos before publishing the photos on MTO’s website.

MTO moved to dismiss Playboy’s complaint for failure to state a cause of action.  MTO argued that it had a license from Playboy to publish the photos, that MTO’s use of the photos was a fair use and that Playboy could not file suit on the unregistered photo.  The district court denied MTO’s motion to dismiss.

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Fair Use Puts a Block on DMCA Take Down Tactics

Universal Music Corporation filed a DMCA takedown notice to remove from YouTube Stephanie Lenz’s 29 second home video of her two young children dancing to Prince’s song Let’s Go Crazy.  Lenz sued Universal for making misrepresentations of infringing use in its takedown notice. 

According to the Ninth Circuit, this case

boils down to a question of whether copyright holders have been abusing the extrajudicial takedown procedures provided for in the DMCA by declining to first evaluate whether the content qualifies as fair use.

We hold that the statute requires copyright holders to consider fair use before sending a takedown notification, and that failure to do so raises a triable issue as to whether the copyright holder formed a subjective good faith belief that the use was not authorized by law.

(Opinion pdf page 5).

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No Record But Still the Same Old Tune

The district court eloquently described the case’s status and defendants’ post-trial motion following a jury verdict in favor of the plaintiffs.  My favorite sentence in this passage is “Ultimately, the goal is to make a dispute understandable to a lay person.”:

While the world has moved beyond the free-MP3-download craze, the parties in this case have not. This hard-fought litigation spans 7 years and 628 docket entries. Numerous substantive motions were heard. And decisions by this Court did not deter the parties from revisiting the same issues time and again. As trial approached, the parties launched salvos of motions in limine seeking to resurrect discovery disputes, relitigate prior motions, and level an impressive array of claims and defenses. 

A primary function of pre-trial litigation is to distill claims. Ultimately, the goal is to make a dispute understandable to a lay person. Despite this Court’s efforts to winnow the issues, the parties insisted on an 82-page verdict sheet on liability and a 331-page verdict sheet on damages that included dense Excel tables, necessitating at least one juror’s use of a magnifying glass. While the jury did its best, their assignment was beyond all reasonable scale.

To understand how this happened, one must look at the impetus for this litigation. Robertson created a business model designed to operate at the very periphery of copyright law.  While Robertson’s business practices sometimes infringed copyrights, many of the Plaintiffs’ claims were just too big to succeed. Plaintiffs’ evidence on their most significant theories of liability—red flag knowledge and willful blindness—was sparse. And Robertson—by his words, actions, and demeanor—came across as unworthy of belief. That led the jury to rely on something other than the evidence in reaching portions of its verdict. For the following reasons, Robertson’s motions are granted in part and denied in part.

(Opinion pdf pages 1-2).

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Actress’ “Innocence of Muslims” Copyright Claim Forces Google to Take it Down

The Ninth Circuit Court of Appeals ordered Google to take the inflammatory anti-Islamic film “Innocence of Muslims” down from You Tube and all platforms it controls and to take reasonable steps to prevent additional uploads.  The Ninth Circuit’s order results from actress Cindy Lee Garcia’s copyright infringement claim against Google.  Garcia prevailed in her appeal of the district court’s denial of her preliminary injunction motion to order Google to remove the film from You Tube.  The Ninth Circuit ruled that Garcia was likely to succeed on the merits of her copyright claim against Google, that Google’s ongoing infringement caused Garcia irreparable harm and that the balance of the equities and the public interest tipped in Garcia’s favor.

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Haiti Quake Photos Case Offers Multiple Intriguing Issues and $1.2M Jury Award

In late November 2013, a jury awarded Daniel Morel $1.2M against Agence France Presse (AFP) and Getty Images for willfully infringing photos Morel took in Haiti on January 12, 2010, immediately after the earthquake that demolished the country.  Morel, a noted photographer, swiftly contacted AFP and Getty regarding removing his photos from their websites after he found them posted there.  

AFP actually initiated the lawsuit by bringing a declaratory judgment that it did not infringe Morel’s copyrights in his Haiti earthquake photos.  This case presents a number of intriguing issues, including AFP’s and Getty’s claims that they received a license under the Twitter terms of use, AFP’s and Getty’s claims that they were third party beneficiaries of Morel’s Twitter contract, Morel’s contributory infringement and vicarious liability claims against some of the licensees, Morel’s DMCA copyright management information claim, Getty’s claim that it was protected by a DMCA safe-harbor, Morel’s willful copyright infringement claims against AFP and Getty and Morel’s Lanham Act false representation and false advertising claims.  Morel survived motions to dismiss and summary judgment motions brought by AFP and Getty on the way to his jury verdict.  This post discusses why some issues were dismissed, while others remained in the case to be decided by the jury.

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YouTube Protected by DMCA Safe Harbor, Viacom Suit Dismissed on Remand

This post follows up on my post entitled YouTube’s Safe Harbor Status Requires More Fact-Finding, Rules Second Circuit.  Viacom and other plaintiffs who are content owners sued YouTube for copyright infringement.  The district court granted YouTube’s motion for summary judgment, ruling that YouTube was protected by the DMCA §512(c) safe harbor.  On appeal, the Second Circuit ruled in YouTube’s favor on some issues, but remanded the case to the district court to address four specific issues.  On remand, the district court ruled in YouTube’s favor on all four of those issues, granted YouTube’s motion for summary judgment and dismissed the plaintiffs’ complaint.

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Veoh Protected Against UMG Copyright Infringement Claims by DMCA Safe Harbor

Veoh Networks operates a website that allows users to upload and share video content over the Internet.  Universal Music Group (UMG) is a major recorded music and publishing company and also produces music videos.  UMG sued Veoh for direct and secondary copyright infringement, alleging that Veoh’s service allows users to download unauthorized copies of songs for which UMG owns the copyright. 

I previously blogged about this case in Veoh’s Services Protected by DMCA Safe Harbor, Rules Ninth Circuit.  Last week, the Ninth Circuit withdrew its opinion filed December 20, 2011 and filed a superseding opinion.  The Ninth Circuit again upheld the district court ruling that Veoh’s services were protected by a Digital Millennium Copyright Act (DMCA) safe harbor.

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