IT GROUP PRESENTATION
DIGITAL MILLENNIUM COPYRIGHT ACT
by Eric Goldman
1. Section 512, Subsection (k). Definitions.
[Except with respect to subsection (a),] service provider means a provider of online services or network access, or the operator of facilities therefor, and includes an [ISP].
What is this? Does this include a website or not? Is it that hard to use the term “website” in a statute?
2. Section 512, Subsection (c): Limit on liability for user-caused copyright infringement.
A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider–
(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.
So what does this mean?
Under the statute, the service provider is protected from direct infringement claims attributable to users. This probably overturns contrary case law in Central Point Software, Inc. v. Nugent, 903 F. Supp. 1057 (E.D. Tex. 1995); Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993); Playboy Enterprises, Inc. v. Russ Hardenburgh, Inc., 982 F. Supp. 503 (N.D. Ohio November 25, 1997); Playboy Enterprises v. Sanfilippo, 1998 U.S. Dist. LEXIS 5125 (S.D. Cal. March 25, 1998); Playboy Enterprises, Inc. v. Webbworld, Inc., 968 F. Supp. 1171 (N.D. Tex. June 27, 1997) and 991 F. Supp. 543 (N.D. Tex. December 11, 1997); Sega Enterprises Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994). (Note that some of these cases also found contributory or vicarious infringement for user-caused copyright infringement, and as discussed below, these results are not overturned by the statute).
However, direct infringement for user-caused infringements has already been rejected by a line of cases as well. See Marobie-FL, Inc. v. National Association of Fire Equipment Distributors, 1997 WL 709747 (N.D. Ill. Nov. 13, 1997); Religious Technology Center v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal. November 21, 1995); Sega Enterprises Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1996); Sega Enterprises Ltd. v. Sabella, 1996 U.S. Dist. LEXIS 20470 (N.D. Cal. December 18, 1996).
So did the DMCA just codify existing law, or did it create new law? Through (A), (B) and (C), which capture the elements of contributory and vicarious infringement, the safe harbor explicitly excludes from the scope of its coverage contributory and vicarious infringement for user-generated copyright infringement. In some ways, the carve-outs in part (A) are broader than existing law (especially point (ii)).
THUS, TO MINIMIZE THE EXPOSURE FOR CONTRIBUTORY/VICARIOUS INFRINGEMENT, WE CONTINUE TO BELIEVE THAT MINIMIZING KNOWLEDGE/RIGHT AND ABILITY TO CONTROL OUR USERS’ ACTIONS IS THE BEST WAY TO REDUCE THE RISK OF LIABILITY FOR USER-CAUSED COPYRIGHT INFRINGEMENTS. In other words, the statute does nothing to change our clients’ behavior. So what was the point of this lovely exercise?
Subsection (c) also says that the safe harbor in the statute is only available if the service provider registers with the Copyright Office according to the statutory procedure. THUS, DESPITE THE WEAKNESSES IN THE LAW, TO MAXIMIZE THE STATUTORY BENEFIT WE SHOULD RECOMMEND TO ALL OF OUR CLIENTS THAT THEY IMMEDIATELY REGISTER WITH THE COPYRIGHT OFFICE.
Finally, subsection (c) clarifies some lingering ambiguities about what constitutes sufficient notice to trigger the requisite obligation to remove infringing material (at peril of being liable for it derivatively). Sufficient notice requires (i) a signature, (ii) identification of the work infringed (or if multiple works are infringed, a representative sample), (iii) identification of the infringing work with sufficient information to permit the service provider to find it, (iv) contact information of the notifier, (v) a statement that the notifier has a good faith belief that the use was not authorized, and (vi) a statement that the information in the notice is accurate and, under penalty of perjury, that the notifier is authorized to act on behalf of the owner. A notice that does not substantially say the foregoing can be ignored, unless the notice contains (ii), (iii) and (iv), in which the service provider can ignore the notice only after contacting the notifier or taking other reasonable steps to try to get a conforming notice.
So, if our clients are trying to get service providers to take down infringing material, we will need to send a notice that has all of the requisite elements. If our clients are service providers, we might be able to ignore some notices that currently are given great weight, but the service provider still must carefully analyze each complaint it receives.
3. Section 512, Subsection (d): Safe harbor for linking to infringing material.
A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the provider referring or linking users to an online location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link, if the service provider—
(1)(A) does not have actual knowledge that the material or activity is infringing;
(B) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(C) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(2) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(3) upon notification of claimed infringement as described in subsection (c)(3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity, except that, for purposes of this paragraph, the information described in subsection (c)(3)(A)(iii) shall be identification of the reference or link, to material or activity claimed to be infringing, that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate that reference or link.
A truly bizarre statute. This appears to set up a safe harbor for linking to infringing material. But there has been no case law suggesting that linking to infringing material is direct infringement, nor does the existing text of the copyright act support such an interpretation. Some people (notably the SPA) have argued that websites should be liable for infringing material at the terminus of links, but such liability was predicated on derivative liability. Note that, for the same reasons discussed above, derivative liability is carved out of the safe harbor. So this statute appears to solve a non-existent and non-meaningful problem, while not addressing a potential problem. And worse, will some judge infer that Congress supports derivative liability for linking to infringing material by virtue of the carve-outs from the safe harbor? What was the point of this lovely exercise?
4. Section 512, Subsection (f). Misrepresentations. A notifier who knowingly materially misrepresents that material or activity is infringing, or a person who knowingly materially misrepresents material or activity was removed or disabled by mistake or identification, shall be liable for any damages (plus attorneys’ fees) by a party harmed by the service provider relying on the misrepresentation.
While substantively this is probably good policy, is this a new cause of action, or did existing causes of action for misrepresentation already cover this circumstance?
5. Section 512, Subsection (g). Liability for Taking Down Allegedly Infringing Content.
Paragraph (1) says:
Subject to paragraph (2), a service provider shall not be liable to any person for any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material or activity is ultimately determined to be infringing.
This clause is reminiscent of 47 USC 230(c)(2), which also creates a safe harbor for disabling access to “objectionable” material. However, like that clause, this clause—which sounds so good—accomplishes little.
We have never seen a suit from a person whose web page was taken down, and as a practical matter, most service provider terms and conditions would undercut such a suit. With respect to plaintiffs who are the complaining copyright holders, as we have said above, the safe harbors carve out protection for contributory/vicarious infringement, which is where all the action is anyway. What was needed was a provision insulating service providers from all claims—IP or not—based on a monitoring program plus responding to complaints. This statute does not accomplish this goal (but see discussion regarding the legislative history, below).
Paragraph (2) says that, to get the benefit of the foregoing safe harbor, a service provider must (i) take reasonable steps to notify the user that their content was removed, (ii) if the user provides a counter-notice in accordance with paragraph (3), provide a copy of the counter-notice to the initial notifier and tell the notifier that the content will be restored in 10 business days, and (iii) restore the removed content between 10 and 14 business days later unless it receives notice that the initial notifier is suing the user. If the service provider restores the material in accordance with Paragraph (2), the service provider does not create “liability for itself” under Section (c)(1)(C) above [note that (c)(1)(C) was part of a safe harbor, not a cause of action—so the “liability creation” is a little bizarre and presumably a drafting error].
Paragraph (2) clearly contemplates that service providers will engage in a complicated, shifting-burdens approach to resolving copyright disputes between users and third party complainers. Why? As mentioned above, assuming the service provider uses a standard user agreement, the service provider should not be liable to users under any prevailing theory for taking down materials. In light of this fact, the service provider’s real liability concern is to third party copyright owners suing for contributory or vicarious infringement. Since this statute provides no protection for that, there really is no incentive for a service provider to follow the statutory scheme to obtain an unnecessary safe harbor. Thus, most service providers are likely to treat third party complaints (that meet the requirements of subsection (c) described above) as they always have—complained-about material gets taken down, and the user is ignored.
6. Section 512, Subsection (l). Other Defenses Not Affected.
The failure of a service provider’s conduct to qualify for limitation of liability under this section shall not bear adversely upon the consideration of a defense by the service provider that the service provider’s conduct is not infringing under this title or any other defense.
This may be true…or will it be? If Congress has spoken on what it takes to reach certain defenses, won’t judges be moved?
7. Legislative History. Does legislative history even mean anything? Will it be looked to by the courts, or totally ignored?
This legislation is not intended to discourage the service provider from monitoring its service for infringing material. Courts should not conclude that the service provider loses eligibility for limitations on liability under section 512 solely because it engaged in a monitoring program.
Call this the eBay safe harbor. These two sentences were the product of several thousand dollars of lobbying by a group led by eBay (which also included Cooley Godward clients theglobe.com and Supernews). But does it do anything? If this were the statute, this would solve the contributory infringement problem and, perhaps, some of the vicarious infringement problem. But it’s not the statute.
The limitations in subsections (a) through (d) protect qualifying service providers from liability for all monetary relief for direct, vicarious and contributory infringement.
This statement is GREAT….but it is not true under the express terms of the statute! Can service providers get any benefit from it anyway?