Consider the following scenario:
Yesterday, your Legal VP’s teenage son advised him that he watched on YouTube several video taken at your company’s corporate retreat. Since these videos are copyrighted (like most works created in Canada, whether published or not, regardless of any registration formality), your Legal VP advises that you should send an infringement notification to YouTube pursuant to the DMCA. What should you know before sending such a notification?
Pursuant to the DMCA, Internet Service Providers (“ISP”) are granted a “safe harbour”, protecting them against liability for copyright infringing material that is uploaded by their users, and therefore transmitted or hosted by the ISP.
To be within the boundaries of this “safe harbour”, however, the ISP must act expeditiously to remove or disable access to the infringing material upon obtaining knowledge that the material is infringing. Practically speaking, the procedure for having infringing materials removed from a website is the following:
- The copyright holder notifies the ISP that it hosts (or transmits, etc.) infringing material (a “DMCA Notification”);
- The ISP automatically takes down the allegedly infringing material;
- The user-infringer may respond to the DMCA notification (by submitting a “Counter Notification”) if he has good faith belief, that the content he uploaded is not infringing;
- If no further action is undertaken by the copyright owner, the ISP must cease disabling access to the materials. However, the ISP must indefinitely disable access to the allegedly infringing material if the DMCA complainant institutes “an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network.”
Drafting and sending a DMCA Notification is extremely easy. Most ISPs even provide their users with a webform (or at least a detailed walk-through) on how to submit a DMCA complaint.
Because of this “user friendly” and automatic takedown procedure, the DMCA is a great tool for intellectual property owners. However, and although in some cases the volume of counterfeiting material posted online appears simply too large to allow for the compliance with “DMCA best practices”,1 copyright owners should be careful when using the DMCA, since they may end up creating a much bigger problem for themselves than that which is caused by the posting of the potentially infringing material online.
As simple as it is to draft a DMCA notice, you and your attorney must know that things can get considerably trickier as the DMCA-driven process evolves. Certain choices you made in a hurry when you enthusiastically sent the internally drafted DMCA notice to the ISP may come back to haunt you later in the process.
With that in mind, there are thus three things that we have learned from experience that you, or your attorney, should know when submitting a DMCA Notification.
1. Play Fair: Don’t Overreach
Generally, copyright owners will have to deal, at the same time, with numerous infringing files uploaded by the same user: Rarely is there one single file uploaded by one single user on one single ISP.
Given how simple and efficient it is to draft a DMCA Notification, it is tempting to draft a “blanket” notice in order to save on legal costs associated with reviewing every infringing item, thinking that you can just get these files offline immediately, and deal more seriously with their actual legality later in the process. However, a bad call on whether a file should be included in a DMCA Notification could:
- Engage the complainant’s liability;
- Make the complainant look awfully bad.
Complainant’s Liability for Misrepresentations
The DMCA provides that any person 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, incurred by:
- the alleged infringer;
- any copyright owner or copyright owner’s authorized licensee; or
- by an ISP, who is injured by such misrepresentation.
Avoiding “misrepresentations” is not just about making sure that a substantial part of your copyrighted work has been reproduced in the infringing materials. Indeed, complainants should know that the fair use defence is to be considered as well. The “Fair Use Doctrine” permits the use of copyrighted materials for certain restricted purposes, such as education, criticism, but also parody. At least in the United States where the fair use doctrine has traditionally been more expanded that its Canadian counterpart, the equitable use. (Yet, this might have changed in Canada.)
In light of a relatively recent judgment of Mr. Justice Jeremy Fogel in Lenz v. Universal Music Corp, it is now clear that DMCA complainants could be liable for the damages they cause by failing to consider fair use before submitting a DMCA Notification.
Making the Complainant Look Bad
On this point, copyright owners must understand that the DMCA is a controversial statute2 and that lots of parties, including stars of the academic blogosphere,3 watch its application closely. In the same vein, copyright owners that submit DMCA Notifications to Google are now advised that Google may send a copy of their DMCA Notification to Chilling Effects Clearinghouse:
Based on this, we can only conclude that, in some cases, it will not be worth sending a DMCA Notification to an ISP like YouTube for a video that was seen by only 24 persons (including the DMCA complainant’s staff and its attorney), only to attract criticism about the complainant’s DMCA practices on blogs read by thousands.
2. Save the Trail
As simple as it seems, copyright owners need to realize that, once a DMCA Notification is submitted to an ISP, the material will disappear from the Internet and may be difficult to recuperate later in the process, therefore creating avoidable evidentiary challenges in the event that court proceedings are undertaken pursuant to the fourth step of the DMCA takedown process (see above). ISPs are generally big companies that are more interested in making money or fighting Chinese hackers than responding to your subpoenas: DMCA complainants will learn, at their expense, that they don’t have much control over the time that an ISP will take to respond to a subpoena.
As a result, we recommend that complainants properly save the infringing materials before sending the DMCA Notification. For example, if the infringing material consists of pictures illegally posted on a blog, they should take screenshots of each of the infringing pictures as they appear on the blog. If the infringing material consists of videos posted on a site like YouTube, they should consider asking IT professionals to help them save the information properly in the event that they need to take legal action. Here is a quick tip on that regard, the website Zamzar allows you to save YouTube videos (and other streamed media) on a local drive.
3.Consider Coupling Your Legal Proceedings With Search Engine Optimization Techniques
Sometimes, legal proceedings could be most effective when used in conjunction with search engine optimization techniques. The best example of this is when a web user posts infringing content that is of relatively little interest to the public, for personal revenge or just to make a mockery of one’s business.
If this business does not have enough legitimate web content under its control, the infringer’s illegal content may come up surprisingly high in search engine search results when searching just for the name of the business or (maybe worse) for the name of the members of its management team. In such a case, the copyright owner will be much more successful if, in addition to its DMCA Notification, he uses search engine optimization techniques, and floods the web with authorized content in order to make it less likely that its clients stumble upon the materials with just an innocent Internet search about the company’s CEO.
How Can We Help?
All of this is good, but why would Canadian copyright owners need the assistance of Canadian lawyers with the application of the DMCA, an American statute?
Remember that, in the event that the infringer responds to a DMCA Notification, the ISP has to cease disabling access to the material, unless a court proceeding is instituted by the DMCA complainant. Canadian copyright owners may feel more at ease taking legal action in Canada instead of in the United States after receiving a Counter Notification from the web user.
In fact, even if the legal proceeding is instituted in the United States, it is possible that Canadian law applies to the issue of the ownership of the copyrighted work (in a case involving a Canadian corporation that took legal action in California against an infringer after receiving a Counter Notification, the Court decided that “because the parties reside in Canada and the original works were made in Canada, the court applies that country's copyright laws to determine initial ownership.”)
To sum up copyright owners should not hesitate to enforce their rights, but we suggest they respect these tips to avoid creating for them more trouble for their business by, inter alia, (i) complicating the process (ii) making them liable for damages or (iii) creating a public relation problem.
Remember, any “copying” is not necessarily infringement and some business (but not all, of course), could find more value in letting some of their content go viral than opposing any and all reuse of their works, regardless of possible fair use defences. In any case, call us if you need help.
1 For some copyright owners, fighting infringement in social media websites must feel like being Staff Sergeant William James: http://www.abajournal.com/magazine/article/copyright_in_the_age_of_youtube/
2 Its detractors argue that the balance of the DMCA favours copyright owners by making it too easy to retrieve potentially legal media from the web by send overreaching DMCA Notifications. Other parts of the DMCA are also contested, like its anti-circumvention provisions.
3 http://www.michaelgeist.ca/, http://wendy.seltzer.org/blog/dmca-nfl
4 A joint project of the Electronic Frontier Foundation and Harvard, Stanford, Berkeley, University of San Francisco, University of Maine, George Washington School of Law, and Santa Clara University School of Law clinics that aims to help web users understand the protections that the First Amendment and intellectual property laws give to your online activities.”