Can you sue a platform for not following DMCA takedown procedures?

platform DMCA takedown

Plaintiff sued YouTube after the platform took down one of plaintiff’s videos in response to a DMCA takedown notice. She claimed YouTube failed to follow the procedures in 17 U.S.C. §512 by, for example, not providing her with a physical signature of the copyright owner and otherwise not following the “exact course of the DMCA guidelines.” YouTube moved to dismiss and the court granted the motion.

It held that §512 serves to provide safe harbor protections from copyright infringement liability to platforms. Section 512 does not,  however, give rise to a standalone basis to sue a platform.

When a copyright owner sends a DMCA takedown notice to a platform, it must include substantially the following:

  • A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
  • 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.
  • 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.
  • 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.
  • 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.
  • 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.

If the notification does not include substantially these items, then if the platform leaves the content up, the insufficient notification will not be considered to have placed the platform on notice of the alleged infringing activity. So if the copyright holder sues the platform for copyright infringement, it will have to plead other facts showing that the platform is liable for infringement. Relatedly, if the platform acts expeditiously to remove or disable access to allegedly infringing content when it gets knowledge via a valid takedown notice, it will have an affirmative defense to a claim of copyright infringement.

In this case, the court confirmed the notion that the DMCA provides this safe harbor to the platform but does not give the person whose content has been taken down the right to sue the platform. The court does not mention – but it remains relevant – that one whose content has been taken down can seek a remedy under 17 U.S.C. §512(f) against a party who sends a takedown notice while knowingly materially misrepresenting that the content is infringing. But that is not the course plaintiff in this case took – she sued YouTube for not following the requirements that apply to copyright holders. And she lost.

Finley v. YouTube, 2022 WL 704835 (N.D. Cal., March 9, 2022)

See also: Is it defamation to accuse someone of sending a bogus DMCA takedown notice?

 

In copyright infringement case, artist’s social media popularity supported claim that retail chain copied artwork

copyright social media

Plaintiff is an artist who designs macabre items, including a bat-themed mug. Defendant (Michaels, the well-known retail craft store) started selling a vase that plaintiff claimed infringed its bat mug copyright. So he sued for copyright infringement. Michaels moved to dismiss, arguing there was no substantial similarity between the works. And even if there were substantial similarity, according to Michaels, plaintiff had not sufficiently alleged that Michaels actually copied the work. The court rejected Michaels’ arguments and denied the motion to dismiss.

Actual copying can be shown by indirect evidence. To adequately plead indirect evidence of actual copying, one must allege, among other things, that the accused infringer could reasonably access the plaintiff’s copyrighted work.

In this case, the artist alleged facts sufficient to establish that Michaels could reasonably access the vampire bat mug. Specifically, plaintiff alleged that it advertised its products, including the vampire bat mug, on various social media platforms, such as Facebook, Pinterest, Instagram, and Tumblr. Through these social media accounts, plaintiff had allegedly reached at least 30,000 followers. In addition to its social media presence, plaintiff alleged it advertised the mug on the internet more generally, and sold it through online retailers, including Etsy, eBay, and Amazon. The court credited plaintiff’s allegations that plaintiff’s reach over the internet extended to customers all over the world, in particular customers in China, where designers and advertisers purportedly saw the mug. These allegations were sufficient to show that defendant could have reasonably accessed plaintiff’s work.

Dellamorte, LLC v. The Michaels Companies, 2022 WL 254427 (D. New Jersey, January 27, 2022)

See also:

Copyright ownership transfers must be in writing

copyright

If you are hiring an independent contractor to create copyrightable subject matter, and you want to own the copyright in the resulting work product, be sure to have that contractor sign a written contract that specifically states that copyright ownership is being transferred. Even if you have paid the contractor for the work, and you both intend that ownership be transferred, the contractor will still own the copyright in the deliverables unless there is a writing, signed by the contractor, to the contrary. This is a key concern if your contractor has created subject matter that will be critical to your business – software, graphics, text, photos, any kind of protectable digital asset. If you do not secure ownership, the contractor may later object to how you are using the works differently than intended at the time of the contract, and claim infringement. Or the contractor could grant a license in the same work to another party, even one of your competitors.

The Copyright Act contains a couple of provisions that relate to this issue. The first one pertains to the definition of “work made for hire”. If an employee creates copyrightable subject matter within the scope of his or her employment, that is a work made for hire, and the employer owns the copyright. But note how that relates to employers and employees. Contractors are in a different category. There are other kinds of works that are “ordered or commissioned” that can be considered works made for hire, even if created by an independent contractor. But in any event, the Copyright Act says that these are works made for hire only “if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”

Let’s say you have not established that the contractor’s work is a “work made for hire”. You could still have the contractor assign his or her rights in the deliverables. Again, the Copyright Act requires this to be in writing. You cannot just agree on a handshake that ownership of copyright has been transferred. The statute provides that “[a] transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” Note that the contractor – the one making the assignment – has to sign the written document.

Paying attention to these issues on the front end of hiring an independent contractor will help ensure clear rights in the future, avoid future tangles and disagreements, and ultimately save time and money by avoiding costly dispute resolution.

Evan Brown is a technology and intellectual property attorney in Chicago. Twitter: @internetcases

DMCA anticircumvention case over copied YouTube videos moves forward

Defendant fired plaintiff over two videos advocating for COVID-19 workplace protections that plaintiff posted on YouTube. Around the time of the termination, the employer allegedly used a smartphone to record the videos in question while they were being played on a computer screen. Defendant then allegedly further copied, distributed and performed these videos in connection with legal proceedings involving plaintiff, without plaintiff’s consent.

DMCA anticircumvention

Plaintiff sued his former employer for copyright infringement. And because YouTube technology provides technological protection measures to prevent unauthorized copying of videos, plaintiff sued under Section 1201 of the Copyright Act – one of the anticircumvention provisions of the Digital Millennium Copyright Act (“DMCA”).

No fair use (yet)

Defendant argued its conduct was fair use of the videos. It asserted it submitted the videos in response to plaintiff’s OSHA complaint and in support of a no-trespass order. But the court refused to make a fair use determination at the motion to dismiss stage, since no facts supporting fair use could be found in the complaint.

DMCA circumvention

The court also allowed plaintiff’s DMCA circumvention claim to move forward.

Section 1201(a)(1)(A) of the DMCA states “[n]o person shall circumvent a technological measure that effectively controls access to a work protected under [the Copyright Act].” “Circumvent,” as used in §1201, “means to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner[.]” §1201(a)(3)(A). “[A] technological measure ‘effectively controls access to a work’ if the measure, in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work.” §1201(a)(3)(B).

Defendant argued the court should throw out the DMCA circumvention claim because plaintiff did not identify a specific technological measure that defendant allegedly circumvented. The court rejected that argument, however, saying that that much specificity was not required to survive a motion to dismiss.

Defendant also argued the DMCA claim should fail because the statute prohibits “circumvention,” which is different from copying, and the complained-of conduct was simply copying. The court viewed the law differently, however, citing Chamberlain Group, Inc. v. Skylink Technologies., Inc., 381 F.3d 1178 (Fed. Cir. 2004), where the court held that while infringement and circumvention are distinct, an act of infringement can also involve an act of an authorized circumvention.

The facts of this case may cause one to consider cases such as R. Christopher Goodwin & Assoc., Inc. v. Search, Inc., 2019 WL 5576834 (E.D. Louisiana October 29, 2019) and wonder whether circumvention has really occurred. It does not appear defendant in this case did anything to disable measures that would have prevented it from viewing the videos. Presumably the streamed videos were available to anyone who could visit YouTube. And the act of creating the copies did not even touch on any of the protection measures YouTube put in place. There was no cracking or descrambling – just the capturing of video as it passed through the air (at that moment being analog) from the computer screen to the camera of the smart phone. Perhaps there is an analog hole defense here?

Edland v. Basin Electric Power Cooperative, 2021 WL 3080225 (D.S.D. July 21, 2021)

Chicago area retailers sued over iconic David Bowie photo

Brian Duffy was an English photographer. He died in 2010 but the Brian Duffy Archive owns and enforces the copyright in his works. Defendants are small retailers around Chicago who developed and sold gift items alleged to appropriate one of Duffy’s well-known David Bowie photos. Who among us hasn’t wished for a Rebel Rebel Pouch or a Ziggy Stardust Koozie? Apparently not the Brian Duffy Archive. It has sued for copyright infringement.

Bowie photo

Plaintiff first noticed allegedly infringing works on Instagram and then chased down the defendant retailers who do business both online and through brick and mortar stores. Plaintiff filed the case in January and things are just getting underway. Here are some of the interesting issues that could arise in the litigation:

  • Registration timing issues – the photo was taken in 1973 but not registered in the U.S. until 2017.
  • Whether the photo was ever published before 1989 without a copyright notice. That could have placed it in the public domain.
  • Fair use – Are these uses transformative? Have they affected the market for the original work?

The Duffy Archive is certainly trying to keep defendants under pressure. Plaintiff seeks injunctive relief, maximum damages, costs and attorneys fees and anything else the court will give it.

Duffy Archive Limited v. The Found, Inc. et al., No. 21-cv-00181 (N.D.Ill., filed January 12, 2021)

About the author: Evan Brown is a technology and intellectual property attorney in Chicago. This post originally appeared on evan.law.

Is it defamation to accuse someone of sending a bogus DMCA takedown notice?

DMCA defamatory

Esports aren’t only about 21st century video games. Apparently there is a relatively robust community of Tecmo Bowl enthusiasts who – though the game is three decades old – gets together to compete in tournaments. A couple of members of that community got into it with one another online, and the spat spawned some fierce litigation. That scuffle raised the question of whether accusing someone of sending a bogus DMCA takedown notice is defamatory.

The online scuffle

Plaintiff was upset about posts defendant made in the forum of a Tecmo Bowl tournament website. One of plaintiff’s claims was that defendant had wrongfully accused plaintiff of sending bogus DMCA takedown notices to Facebook concerning a page related to a previous Tecmo Bowl tournament.

Claims of bogus DMCA takedown notices defamatory?

So plaintiff sued defendant in Texas state court for defamation, and lost. He believed that he had established a defamation claim, since defendant had – in plaintiff’s view – accused plaintiff of violating the law by abusing the DMCA process. So plaintiff sought review with the Court of Appeals of Texas. But that higher court agreed with the lower court. It was proper to dismiss the defamation case.

The court evaluated whether an objectively reasonable reader of the forum posts would draw the implication that plaintiff had committed a crime. Specifically, plaintiff had asserted that defendant accused plaintiff of committing perjury, since DMCA takedown notices have to be sworn to. See 17 U.S.C. §512(c)(3)(A)(vi).

But the court did not agree with plaintiff’s theory. It found “that the general public, or more accurately the reasonable reader, is not likely aware of what a “DMCA claim” [is] or what the acronym DMCA even means.” So in this court’s view, and on these facts, accusing someone of sending a DMCA takedown notice that was bogus was not defamatory.

Hawkins v. Knobbe, 2020 WL 7693111 (Ct. App. Texas) December 28, 2020

See also:

Need help with an online issue? Let’s talk.

About the author:

Evan Brown is an intellectual property and technology attorney in Chicago. This post originally appeared on evan.law.

Why get a copyright registration?

A work of authorship is protected by copyright at the moment it is created. If you take a photo or write some software or draft some text, copyright law protects that work the moment it becomes fixed in a tangible medium of expression for more than a transitory duration. You do not need a registration to own a copyright. It exists automatically. But there are certain benefits conferred by registering a copyright.

Copyright registration allows the holder to sue for infringement.

One benefit from having a registration is that the holder of the copyright can sue for infringement. This is a requirement for litigation – a court will not let a copyright infringement case go forward unless the plaintiff shows that it has a registration certificate. And that registration certificate needs to be in hand — it is not enough for the plaintiff to have just applied to register the copyright. It actually needs to have the registration issued.

Better evidence.

A second benefit of having a copyright registration certificate is the evidentiary weight that it carries in court. If the registration is obtained in the five years following the first publication of the work, the judge will look at that registration certificate and give it great importance in ascertaining whether the plaintiff has a valid copyright in the work.

Statutory damages and attorney’s fees.

A third benefit of having a registration is that in certain circumstances the plaintiff can recover its costs and attorneys fees, and be entitled to recover statutory damages. These damages can range anywhere from $750 all the way up to $150,000 per work infringed.

To be entitled to these things the plaintiff must have obtained a timely copyright registration. To be timely, it has to either have been obtained before the infringement began, or if it was obtained after the infringement began, it was obtained within the first three months following the first publication of the work. The key is that timing matters — it is generally advisable to register a work within the first three months following first publication.

Need help with a copyright registration?

Please feel free to give me a call at (630) 362-7237, or send email to ebrown@internetcases.com.

About the author:

Evan Brown, nondisclosure agreementsEvan Brown is a technology and intellectual property attorney in Chicago. This content originally appeared on evan.law.

See also:

No statutory damages in online copyright case where infringement continued after copyright registration

What are the legal issues around web scraping?

Web scraping is that activity where a party uses automated software to crawl the internet and copy data and other content, usually so that it can compile that together and make its own product offering. This may be of concern to you because you are a company that does web scraping. Or you may be a web publisher and there are other parties that are scraping your content. Let’s examine some of the legal issues around web scraping.

Breach of contract

One of the questions that commonly arises around web scraping is whether the activity is a breach of contract. More specifically, the question is whether the use of automated software violates the terms of service of the website that is being scraped. You often see website terms of service prohibit the use of spider and other automated crawling software to access and use the site. Parties who own websites that are being scraped will often look to see whether the scraping of their site is a breach of contract.

Copyright infringement

Another common question arising when analyzing web scraping is lawful whether scraping constitutes copyright infringement. This is a difficult argument to make if all that is being scraped is data, because mere facts usually are not subject to copyright protection. But if there is other content being scraped, such as images or specific compilations of data, the question of copyright infringement becomes a bit easier to answer in that unauthorized copying is an likely an infringement.

Computer Fraud and Abuse Act

The Computer Fraud and Abuse Act is another topic that often comes up in discussions about web scraping. This is a federal law that makes it unlawful for a person to access a protected computer without authorization, or in excess of a specific authorization. So the question becomes whether that access by the automated web scraper violates the Computer Fraud and Abuse Act. There are some important things that have to be proven for a plaintiff to succeed under the Computer Fraud and Abuse Act, and one of those is loss or damage that results from the unauthorized access. It is a very fact intensive inquiry that has to be made, but the Computer Fraud and Abuse Act is one thing that parties should think about in the context of web scraping.

Trade secrets

The question of trade secrets is another good one to raise in the context of web scraping. A trade secret is any information that a company has that gives that company a commercial advantage in the marketplace because it is secret. The information also has to be the subject of protective efforts — the company has to try to keep the information secret. For example, if information on a website is put there in a way that is behind certain protective barrier,s and the party doing the scraping circumvents those barriers, it could be that there is a misappropriation of trade secrets, particularly if that information is used for some competitive purpose.

Let’s talk

Web scraping legal issues can be complex. Scraping presents certain legal risks to the ones doing it, and the law provides certain powerful remedies when web scraping runs afoul of the rules. If you have questions about web scraping, give me a call at (630) 362-7237, or send me an email at ebrown@internetcases.com.

About the author

Evan Brown is a technology and intellectual property attorney in Chicago. This content originally appeared on evan.law.

See also:

YouTube creator’s misrepresentation case over DMCA takedown notices lacked certain key evidence

Plaintiff ran a YouTube channel. Defendant sent takedown notices under the Digital Millennium Copyright Act (DMCA) to YouTube alleging that plaintiff infringed defendant’s copyright. Plaintiff sued defendant under 17 U.S.C. §512(f), which provides for recovery when a person sends a DMCA takedown notice based on “knowingly materially misrepresented” facts.

The district court granted defendant’s summary judgment motion. Plaintiff sought review with the Eleventh Circuit. On appeal, the court affirmed the lower court’s finding that defendant did not knowingly materially misrepresent facts when it sent the DMCA takedown notices to YouTube.

The DMCA’s good faith standard

The DMCA relieves online service providers (such as YouTube) of liability for storing copyright infringing content if, among other things, the service provider properly responds to the copyright holder’s takedown notice. The notice must state that the copyright holder has a “good faith belief” that the identified content infringes. The copyright holder can be liable for damages if it “knowingly materially misrepresents” that the identified content infringes. Copyright law provides that if use of content is fair use, then it is not infringing.

DMCA good faith

In 2016, the Ninth Circuit evaluated the questions of what it means for a DMCA takedown notice sender to have a “good faith belief” and to “knowingly materially misrepresent” that content infringes. In that case (Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2016)), the court held that having a “good faith belief” that certain content infringes requires that the copyright holder, before sending a takedown notice, consider if the potential infringement is a fair use. And the court held that failure to consider fair use before issuing a takedown notice is a misrepresentation of copyright infringement.

What diligence must a takedown notice sender undertake?

What kind of belief must the copyright holder have to be in line with the conduct required of the DMCA? The Lenz court held that a copyright holder’s subjective good faith belief that a use is both unauthorized and not fair use serves as a complete defense to a misrepresentation claim.

Counsel’s consideration of fair use was sufficient

In this case, defendant’s attorneys testified in affidavits that they investigated whether plaintiff’s YouTube uploads infringed. And they testified that they evaluated whether the uploads were fair use. So the court found that defendant, by relying on their attorneys’ investigations and opinions, reasonably believed in good faith that plaintiff’s videos infringed and did not constitute fair use, prior to filing the takedown notices.

The court found that plaintiff’s evidence did not show otherwise. Plaintiff testified in her deposition that she “knew” defendant did not consider fair use. She said that if defendant did consider fair use, it would not have sent the DMCA takedown notices. In the court’s view, this proffered evidence was just a bare and speculative statement, not evidence. It found that plaintiff failed to provide any meaningful evidence that defendant did not consider the fair use doctrine and that it did not have good faith when it submitted the takedown notices.

Johnson v. New Destiny Christian Center Church, Inc., 2020 WL 5289881 (11th Cir., September 4, 2020)

See also:

Website operator not liable for copyright infringement despite lack of DMCA safe harbor protection

About the author:

Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases

Work Made For Hire – Part 3

In a couple of recent blog posts we have covered work made for hire generally and have looked at how it is defined. Let’s focus in this post on a key provision that should be in most independent contractor agreements because of the work made for hire doctrine.

The work made for hire framework

Remember that an employee will own the copyright in what an employee creates within the scope of his or her employment even without a written contract saying that. And with an independent contractor, certain kind of works can be work made for hire if the contract says that they are. There are at least two things to be concerned about because of this concept about work made for hire as it relates to independent contractors.

Why work made for hire creates concerns in contract drafting

The first concern is that if the independent contractor agreement is silent on the question of intellectual property ownership, the contractor, and not the hiring party, will own the copyright in the deliverables. Many hiring parties that have spent a lot of money for the work of an independent contractor have been distressed to learn this.

The second thing to be concerned about is the situation where the contract says the deliverables are to be work made for hire, but they are not a type of work that the Copyright Act says can be work made for hire. (We went through that list in part two of this series.) Software would in most circumstances probably fall into this category. If the contract just says the software will be a work made for hire, then the contract may not establish ownership in the party paying for the software to be developed, because it is not really a work made for hire when created by an independent contractor.

Contractor hereby assigns . . .

So you will often see contracts that say two things on this point. It will say that the deliverables are work made for hire. Then the contract will go on to say something along the lines of, to the extent the deliverables are not work made for hire, contractor hereby assigns all right, title and interest in and to the deliverables to the hiring party. If you have seen that language in an agreement before, you may have thought it was redundant but it serves a good purpose.

work made for hire issues

Blog posts in this series:

Need help with a work made for hire issue? Let’s talk.

Call me at (630) 362-7237, or send an email to ebrown@internetcases.com.

About the author

Evan Brown, Copyright work made for hireEvan Brown is an attorney in Chicago practicing copyright, trademark, technology and in other areas of the law. His clients include individuals and companies in many industries, as well as the technology companies that serve them. Twitter: @internetcases

Scroll to top