Authored by J. (Jay) T. Westermeier
Since the US Digital Millennium Copyright Act (DMCA) became law in 1998, there have been a number of legal rulings related to the "Safe Harbor" provisions in s.512(c).
To recap on the main implications of the DMCA Safe Harbor provisions:
"Internet Copyright Infringement Liability Clarification Act of 1998
This Act establishes limited liability for online copyright infringement for service providers and other such entities which:
- transmit, route or provide connections for digital online communications of such infringing material, or for
- the intermediate and transient storage of such material in the course of such transmitting, routing or providing connections,
(i) the service provider does not initiate or instruct the communication nor select the recipients of such material (except as an automatic response to the request of another);
(ii) the communication is carried out through an automatic technical process without selection of such material by the service provider;
(iii) no copy of the infringing material is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is maintained on the system or network in a manner ordinarily accessible to the anticipated recipients for a longer period than is reasonably necessary for the communication; and
(iv) the material is transmitted by the service provider without modification to its content.
In addition, a service provider shall not be liable for infringement for the intermediate and temporary storage of material on the system or network (i.e. system caching) controlled or operated by or for the service provider,
(i) such material is made available online by a person other than such service provider;
(ii) the service provider does not select the recipients of such material;
(iii) the storage is carried out through an automatic technical process for the purpose of making such material available to users of such system or network, who subsequently request access to that material from the person described in paragraph (i);
(iv) the material is transmitted to such subsequent users without modification to its original content;
(v) the service provider complies with rules concerning the refreshing, reloading or other updating of such material, when specified by the person making that material available online, in accordance with an accepted industry standard data communications protocol for the system or network through which that person makes the material available;
(vi) the service provider does not interfere with the ability of technology associated with such material that returns user information back to the person described in paragraph (i) above (there are other conditions attached to this provision);
(vii) the service provider responds expeditiously to remove, or disable access to, the infringing material once notified1 of the claimed infringement."
The Act also provides service providers with limited liability in circumstances where users are linked to an online location containing infringing materials or activity by using information location tools.
In summary therefore, a service provider will not be liable for transmitting or storing infringing material where the service provider has no actual knowledge or reason to suspect that the material is infringing, does not financially benefit from the infringing activity and acts expeditiously to remove or disable access to such material upon discovering or being notified that the same is infringing. The Act further absolves service providers of liability with respect to claims based on good faith disabling of access to, or removal of, material or activity claimed to be infringing, regardless of whether the material or activity is ultimately determined to be infringing.
To be able to claim limitations of liability under the Act, a service provider must also comply with the following requirements. It must:
- have designated an agent to receive notifications of claimed infringement by making contact information available through its service and to the US Copyright Office;
- implement and inform subscribers of a policy for terminating subscribers who are repeat infringers; and
- accommodate and not interfere with certain standard technical measures used by copyright owners to identify or protect copyrighted works.
The "safe harbor" provisions under s.512 of the DMCA were discussed at length in Perfect 10 Inc v CCBillLLC.2 In Perfect 10 the court held that a service provider "implements" a repeat infringer policy if it has a working notification system, a procedure for dealing with DMCA-compliant notifications and if it does not actively prevent copyright owners from collecting information needed to issue such notifications.3 The DMCA permits service provides to implement a variety of procedures, but an implementation is reasonable if, under appropriate circumstances, the service provider terminates users who repeatedly or blatantly infringe copyright.
The Act also describes conditions under which a court may grant injunctive relief with respect to service providers. There have been a number of recent legal rulings related to s.512(c) of the DMCA.
Veoh Networks has been at the centre of recent legal rulings related to the s.512(c) DMCA safe harbor. In 10 Group, Inc v Veoh Networks, Inc,4 the court did not:
". . . find that the DMCA was intended to have Veoh shoulder the entire burden of policing third-party copyrights on its website (at the cost of losing its business if it cannot). Rather, the issue is whether Veoh takes appropriate steps to deal with copyright infringement that takes place. The record presented demonstrates that, far from encouraging copyright infringement, Veoh has a strong DMCA policy, takes active steps to limit incidents of infringement on its website and works diligently to keep unauthorized works off its website. In sum, Veoh has met its burden in establishing its entitlement to safe harbor for the alleged infringements."5
In UMG Recordings Inc v Veoh Networks Inc,6 the court discussed the requirements for qualifying for safe harbor protection under s.512(c) of the Copyright Act. First, the party must be a "service provider" that meets the requirements of s.512(c) and 512(i). Under s.512(c) a service provider will not be liable:
" ... 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: (1) 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."7
In addition, the service provider must:
" ... (1) 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 (ii) upon notification of claimed infringement ... responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity."8
In UMG Recordings Inc v Veoh Networks Inc,9 the court found that Veoh had shown that when it did acquire knowledge of allegedly infringing material--whether from DMCA notices, informal notices, or other means--it expeditiously removed such material, and UMG had failed to rebut that showing. As such, the court found that Veoh had met its burden of proving compliance with s.512(c). To ensure that the service provider qualifies for the safe haven protection under s.512(c), service providers need to maintain records consistent with showing compliance with s.512(c).
In Viacom International, Inc v YouTube, Inc,10 the district court found that YouTube was protected by the DMCA safe harbor against billion-dollar claims brought by Viacom and other content owners regarding alleged ubiquitous infringement for which YouTube had general knowledge. This court ruling is on appeal to the US Court of Appeals for the Second Circuit. In this Viacom district court ruling, the court holds that service providers must have knowledge of specific and identifiable infringements of particular individual items protected by copyright to bar eligibility for DMCA safe haven protection. Mere general awareness of user-uploaded infringements is not enough to trigger the DMCA notice and takedown procedures. This court rules that if the service provider takes down or disables access to the specific infringing material identified in a DMCA notice, the service provider will be eligible for safe harbor protection under the DMCA. Current industry notice-and-takedown procedures satisfy the DMCA safe harbor requirements.
The Ninth Circuit has emphasised that the DMCA notification procedures place the burden of policing copyright infringement on the copyright owners to identify the potentially infringing material and to document the infringement adequately.11 If a service provider becomes aware of a "red flag" from which infringing activity is apparent, it will lose the safe haven protection if it takes no action. In the UMG Recordings v Veoh case, the court noted "that it takes willful ignorance of readily apparent infringement to find a 'red flag'", and that Veoh had provided substantial evidence that it had met the requirements of s.512(c)(1)(A). There is a high bar for finding "red flag" knowledge. The court further observed that the DMCA does not impose an obligation for the service provider to implement filtering technology. In the UMGRecordings v Veoh case the court found that UMG had failed to show that Veoh was aware of any "red flags". Furthermore, the service provider is not required to monitor its service or affirmatively seek facts indicating infringing activity; however, if the service provider becomes aware of a "red flag" from which infringing activity is apparent the service provider will lose its safe haven protection if it takes no action.
The Copyright Office has published interim regulations regarding the procedures by which a service provider may receive notifications of claimed infringement. The Copyright Office does not make any printed forms available for designating an agent but does provide suggested formats for filing an interim designation (Appendix A) or an amended designation (Appendix B). It is important to make sure the notice designation at the Copyright Office remains current and accurate to avoid issues respecting the sufficiency of any contact information provided. For example, Ellison v Robertson12 serves as an example of the adverse consequences that may result from failing to keep the contact information for a designated DMCA copyright agent current at the Copyright Office.
The designation, whether the interim designation or the amended designation, must be accompanied by a $105 fee, payable to the Register of Copyrights.13 If mailed, the designation should be addressed to: Copyright GC/I&R, P.O. Box 70400, Washington, D.C. 20024.
The Copyright Office reviews each designation for obvious errors and to make sure all required information is provided. However, the fact that the Copyright Office accepts an agent designation and includes it in the Copyright Office's directory of agents may not be construed as a judgment by the Copyright Office that the designation is sufficient or error-free. The "Directory of Agents" is available on the Copyright Office's website, http://www.copyright.gov/ [Accessed October 25, 2010].
In addition to designating an agent for notification of copyright infringement claims the service provider needs to comply with the DMCA notice and takedown procedures.
In UMG Recordings v Veoh Networks Inc14 the court considered Veoh's policies for terminating repeat infringers under 17 USC §512(i). The court notes that a service provider implements a reasonable policy if under appropriate circumstances the service provider terminates users who repeatedly or blatantly infringe copyright rights. Notices of infringement, however, do not, in themselves, provide evidence of blatant copyright infringement sufficient to justify terminating a user's account because the notice may be in error.15 Veoh's policy of terminating users after a second warning was found to satisfy the requirement that:
"... those who repeatedly or flagrantly abuse their access to the Internet through disrespect for the intellectual property rights of others should know that there is a realistic threat of losing access."
1 There are various conditions for such notification.
2 Perfect 10 Inc v CCBillLLC 448 F. 3d 1102 (9th Cir.), cert denied, 128 S. Ct 709 (2007).
3 Perfect 10 448 F. 3d 1102 (9th Cir.), cert denied, 128 S. Ct 709 (2007).
4 10 Group, Inc v Veoh Networks, Inc 586 F. Supp. 2d 1132, 1155 (N.D. Cal. 2008).
5 10 Group v Veoh Networks 586 F. Supp. 2d 1132, 1155 (N.D. Cal. 2008).
6 UMG Recordings Inc v Veoh Networks Inc 93 U.S.P.Q. 2d 1010 (C.D. Cal. September 11, 2009).
7 17 USC §512(c)(1)(A).
8 17 USC §512(c)(1)(B) and (C).
9 UMC Recordings v Veoh Networks 93 U.S.P.Q. 2d 1010 (C.D. Cal. September 11, 2009).
10 Viacom International, Inc v YouTube, Inc 2010 WL 2532404 (S.D.N.Y. June 23, 2010).
11 Perfect 10, Inc v CCBillLLC 488 F. 3d 1102, 1113 (9th Cir. 2007).
12 Ellison v Robertson 357 F. 3d 1072 (9th Cir. 2004).
13 The Copyright Office increased the fee from $80.00 to $105.00 on August 1, 2009 for the online service provider designation of an agent to receive notification of claimed infringement under s.512(c)(2). These fees may change. Please consult the Copyright Office fee schedule at http://www.copyright.gov/ [Accessed October 25, 2010].
14 UMG Recordings v Veoh Networks Inc 93 U.S.P.Q. 2d 1010 (C.D. Cal. September 11, 2009).
15 See Corbis Corp v Amazon.com Inc 351 F. Supp. 2d 1090, 1109 n.9 (WD. Wash. 2004).
Originally printed in Computer and Telecommunications Law Review. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.