The Digital Millenium Copyright Act (DMCA) created a notice and takedown provision in §512 of the U.S. copyright laws for alleged online infringement. Essentially, online service providers have a safe harbor against monetary liability for infringing materials that their users/customers post online if they comply with takedown notices alleging copyright infringement. These online service providers need to meet certain additional requirements to qualify. But the basic tradeoff is that the online service providers do not have to monitor and screen materials before they are posted if they commit to acting expeditiously on takedown notices.
Requirements for a DMCA Takedown Notice
To be legally effective, DMCA takedown notices must include certain things specified by law, quoted below. There must be a copyright work being infringed. But a copyright registration is not a prerequisite. DMCA takedown notices can be sent even for unregistered copyrighted works. However, fair use must be considered before sending a DMCA notice.
a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:
(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
(v) 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 the law.
(vi) A statement 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.17 U.S.C. §512(c)(3)(A)
The U.S. Copyright Office provides a takedown notice form that can be filled out and sent to an online service provider. But there is no requirement to use that particular form. Any written notice containing the necessary information can be used.
Counter Notices by Someone Wrongfully Accused
A user who believes he or she was wrongfully accused in a DMCA takedown notice that resulted in online materials being taken down can potentially send a counter notice to the online service provider (17 U.S.C. §512(f)). A counter notice is a counter allegation that the material was removed as a result of mistake or misidentification of the material, and a request for reinstatement of that material. After a counter notice is sent, the original accuser (that is, the alleged copyright owner) has 10-14 business days to sue or the online service provider must restore the material.
To be legally effective, DMCA counter notices must include certain things specified by law, quoted below.
a counter notification must be a written communication provided to the service provider’s designated agent that includes substantially the following:
(A) A physical or electronic signature of the subscriber.
(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.
(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.
(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.17 U.S.C. §512(g)(3)
The U.S. Copyright Office provides a counter notice form that can be filled out and sent to an online service provider to request reinstatement of taken down materials. But there is no requirement to use that particular form. Any written counter notice containing the necessary information can be used.
Liability for Notices and Counter Notices
Anyone who “knowingly materially misrepresents” (1) that material or activity is infringing, or (2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys’ fees (17 U.S.C. §512(f)). This allows the alleged infringer to sue for a bad faith takedown notice, or the copyright owner to sue for a bad faith counter notice.
Advantages and Disadvantages of Takedown Notices
An advantage of this system for copyright owners is that if an infringing work is discovered online, a DMCA notice is potentially a low-cost avenue to have it removed. On the other hand, the need to monitor for online infringement and send notices—potentially many of them—can be burdensome. For users, the ease of sending takedown notices can mean they are abused. There can be legitimate questions about independent creation, fair use, the idea/expression dichotomy, uncopyrightable facts or scènes à faire, etc. Sometimes DMCA notices can even be sent in bad faith.
Not all countries have a DMCA-like provision in their copyright laws. So a notice might result in material being taken down in the USA. But infringement may still arise on platforms operated outside the USA. In those situations, other action like a formal lawsuit may be necessary.
A related approach for takedowns of infringing material online involves sending notices to domain registrars and web hosting companies. For web sites hosted in certain other countries this might be the only available option short of litigation.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.