2008 Digital Millennium Copyright Act and CDA

© 2008 Mudd Law Offices 1
Intellectual Property Issues
on the Internet
What Every Lawyer Should
Know
About Intellectual Property
May 5, 2008

DMCA
Digital Millennium Copyright Act
Two Key Areas Enacted
Limitation on Liability (Safe Harbor) for Infringing Material
17 U.S.C. § 512
Anti-Circumvention Measures
17 U.S.C. § 1201

DMCA
Focus of today’s discussion will be on
Safe Harbor under the DMCA
And conclude with brief reference to the
Safe Harbor under the § 230 of CDA

DMCA - Title II
17 U.S.C. § 512
Provides safe harbor provisions
Title II enacted "to provide greater certainty to service
providers concerning their legal exposure for
infringements that may occur in the course of their
activities.”
Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004).

Safe Harbor (cont’d)
Strict Compliance
For Safe Harbor
For Relief as Copyright Owner

Important to Fit Definition of
Service Provider (OSP / ISP)
– Perfect 10, Inc. v. Visa Int'l Serv. Ass'n,
494 F.3d 788 (9th Cir. Cal. 2007)
(defendant not qualified)
– Arista Records, Inc. v. Flea World, Inc.,
356 F. Supp. 2d 411 (D.N.J. 2005)

“Columbus Farmers Market avers that it is "in
the position of an internet service provider
("ISP") as delineated in the 'safe harbor'
provisions of the Digital Millennium Copyright
Act, 17 U.S.C. § 512." As discussed . . .
supra, this defense is frivolous. A flea market
is not an "internet service provider" and the
instant action has nothing to do with the
internet or the Digital Millennium Copyright
Act.

“Service Provider” means
an entity offering the transmission, routing, or providing of
connections for digital online communications, between or
among points specified by a user, of material of the user’s
choosing, without modification to the content of the material
as sent or received.
Other than subsection (a) (transmission), also means a
provider of online services or network access, or the operator
of facilities therefor, and includes an entity described above
17 U.S.C. § 512(k)(1)

If you do qualify as OSP/ISP
DMCA provides certain immunities
subject to specific requirements

Safe Harbor protects OSP from
Monetary Relief
“means damages, costs, attorneys’ fees, and any
other form of monetary payment.”
17 U.S.C. § 512(k)(2)
All but limited injunctive relief (§ 512(j))

• DMCA provides safe harbor for
– Transmission of Alleged Infringing Material
(17 U.S.C. § 512(a))
– System Caching
(17 U.S.C. § 512(b))
– Information Residing on System
(17 U.S.C. § 512(c))
– Hyperlinks
(17 U.S.C. § 512(d))

Safe Harbor - Transmission
17 U.S.C. § 512(a)
OSP Immune for Transmission, IF
• OSP did not initiate transmission;
• Automatic and without selection of material by OSP
• OSP does not select the recipients except as an automatic
response to the request of another person;
AND

Safe Harbor - Transmission (cont’d)
OSP Immune for Transmission, IF (cont’d)
• no copy is maintained in a manner ordinarily accessible
to anyone other than anticipated recipients, AND
• no such copy is maintained longer than is reasonably
necessary
AND

OSP Immune for Transmission, IF (cont’d)
• OSP does not modify the content
(“the material is transmitted through the system or network
without modification of its content.”)

A note on 512(a) - as will see below
the subpoena process available under
512(h) does not apply to 512(a) entities
In other words….RIAA can’t use DMCA

Safe Harbor - Caching
17 U.S.C. § 512(b)
OSP immune for
temporary storage of material WHERE
material made available online by Third Party (A)
who transmits material through system to Third Party
(B) at (B)’s direction
AND

Safe Harbor - Caching (cont’d)
. . . the storage by OSP is
automatic and
for the purpose of making the material available to users of the
system or network who request material from Third Party (A)
17 U.S.C. § 512(b)(1)
IF (Yes, there are more requirements) . . . .

(1) Transmitted to users without modification;
(2) Where Third Party (A) makes available
without authorization, OSP complies with
512(c)(3) take down procedures;
(3) AND . . .
Other specific terms not addressed here

Cases
• Parker v. Google, Inc., 422 F. Supp. 2d 492
(E.D. Pa. 2006)
• Field v. Google Inc., 412 F. Supp. 2d 1106
(D. Nev. 2006)

Safe Harbor - Storage
17 U.S.C. § 512(c)
OSP not liable for storage IF
No directly attributable financial benefit to OSP where
has the right and ability to control such activity;
OSP complies with 512(c)(3) take down procedures;
AND

Safe Harbor - Storage (cont’d)
AND (§ 512(c)(2))
does not have actual knowledge;
is not aware of facts or circumstances from
which infringing activity is apparent; or
acts expeditiously to remove, or disable access
to, the material upon obtaining knowledge

BUT MUST IDENTIFY
• DMCA Designated Agent to receive
512(c)(3) notices
– Inform on Website
– Inform Copyright Office
• Name, address, phone number and email
address
• Any other information by Copyright Office

Additional Preparation and Documentation
Denied MSJ on 512(c) because insufficient
record on ability to control content
Tur v. Youtube, Inc., 2007 U.S. Dist. LEXIS 50254
(C.D. Cal. June 20, 2007)

Will address 512(c)(3) shortly. . . .

Safe Harbor - Linking
17 U.S.C. § 512(d)
OSP immune for linking WHERE
No directly attributable financial benefit to
OSP has the right and ability to control such
activity;
OSP complies with 512(c)(3) take down
procedures;
AND

Safe Harbor - Linking (cont’d)
AND (§ 512(d)(1))
does not have actual knowledge;
is not aware of facts or circumstances from
which infringing activity is apparent; or
acts expeditiously to remove, or disable access
to, the material upon obtaining knowledge

Safe Harbor - General
In addition to specific requirements for
immunity (linking, caching, storage,
transmission)
the OSP must also have strictly
complied with provisions in 17 U.S.C. §
512(i)

OSP must have
Policy for Termination of Users
Notice to Users
Non-Interference in Technical Measures

Safe Harbor - 512(i) Requirements
Specifically, the OSP must HAVE
• Adopted
• Reasonably Implemented
• Policy that
– provides for the termination
– in appropriate circumstances
– of subscribers and account holders
– who are repeat infringers

Note: Though distinguished by other courts, at
least one court has required efforts to
discourage repeat infringers generally
In re Aimster, 334 F.3d 643, 655 (7th Cir. 2003)
“. . . [the] service provider must do what it can reasonably be asked to do
to prevent the use of its service by ‘repeat infringers.’ 17 U.S.C. §
512(i)(1)(A). Far from doing anything to discourage repeat infringers of
the plaintiffs' copyrights, Aimster invited them to do so, showed them
how they could do so with ease using its system, and by teaching its
users how to encrypt their unlawful distribution of copyrighted materials
disabled itself from doing anything to prevent infringement.”

AND, the OSP must HAVE
• informed subscribers and account holders
• of the service provider’s system or network of
• The Policy

AND, OSP must
• Accommodate and not interfere with standard technical
measures
• Defined as technical measures that are used by
copyright owners to identify or protect copyrighted
works that
• Meet particular requirements under 512(i)

Implementation
• Statute does not define reasonable implementation
• 9th Cir. reasonable implementation occurs if OSP
– Has a working notification system
– Has a procedure for dealing with DMCA-compliant
notifications
– Does not actively prevent copyright owners from collecting
information needed to issue such notifications.
Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1110-1111
(9th Cir. Cal. 2007)

DMCA Take-Down Procedures
512(c)(3) and 512(g)
Steps:
(1) Notice Pursuant to 512(c)(3)
(2) If Notice Compliant, Take Down Material
(3) Inform Subscriber of Take Down
(must to obtain immunity from subscriber)
(4) If Counter-Notice, inform Complainant
(5) Replace Material unless litigation filed

512(c)(3) Notice
Written notification to
DMCA designated agent containing -
• ID copyrighted work
• ID and locate alleged infringing material
• Contact information for complaining party
AND

512(c)(3) Notice
• Good faith statement that “use of the material in the manner
complained of is not authorized by the copyright owner, its
agent, or the law”
• Statement as to accuracy and, upon penalty of perjury,
complaining party authorized to act on behalf of owner of
exclusive right
AND
• Signature of person authorized to act on behalf of owner of
exclusive right

512(c)(3) Notice
• Good Faith Belief
– Subjective Basis
Rossi v. Motion Picture Ass'n of Am., Inc., 391 F.3d
1000, 1004 (9th Cir. Haw. 2004)
Dudnikov v. MGA Entm't, Inc., 410 F. Supp. 2d 1010,
1011 (D. Colo. 2005)

Take Down Material
• If Compliant Notice, Must Take Down
• No liability for Take Down (512(g)(1)) IF
(1) Promptly Notifies Subscriber; and,
(2) Upon receipt of counter notification, conveys
copy of counter notice to complainant and
provides notice that it will replace content in 10
days
§ 512(g)(2)

DMCA Counter-Notice
Must Provide:
• ID and Prior Location Material Removed
• Statement under penalty of perjury good faith
belief material removed by mistake or
misidentification
• Subscriber name, address, phone
• Consent to jurisdiction
• Accept Service Process
• Signature

Replace Material
• Upon Counter Notice, replace material
(no liability - § 512(c)(4))
• Unless, after notice to Complainant,
received notice of
“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.”

Summary - Take Down
Steps:
(1) Notice Pursuant to 512(c)(3)
(2) If Notice Compliant, Take Down Material
(3) Inform Subscriber of Take Down
(must to obtain immunity from subscriber)
(4) If Counter-Notice, inform Complainant
(5) Replace Material unless litigation filed

Safe Harbor - Procedural
To be used as affirmative defense,
not as a basis for DJA
Veoh Networks, Inc. v. UMG Recordings, Inc.,
522 F. Supp. 2d 1265 (S.D. Cal. 2007)

• First, Determine Potential Liability Under
Copyright Act
• Second, Determine Whether OSP Qualifies
for Protection under 17 U.S.C. § 512
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1157 (9th Cir. 2007)

OSP bears burden to demonstrate able to
invoke immunity under safe harbor
Critical that all aspects have been met

Safe Harbor - Subpoena
(17 U.S.C. § 512(h))
• DMCA Subpoena Provision (512(h)) applies
only to ISP or OSP that hosts content not
transmission (eg 512(a))
Recording Indus. Ass'n v. Verizon Internet Servs.,
Inc.,
359 U.S. App. D.C. 85, 351 F.3d 1229, 1233-1236
(D.C. Cir. 2003)
Recording Indus. Ass'n v. Charter Communs., Inc.,
393 F.3d 771, 777 (8th Cir. Mo. 2005)

Misrepresentation - 512(f)
No injunctive relief
Biosafe-One, Inc. v. Hawks,
524 F. Supp. 2d 452, 469 (S.D.N.Y. 2007)

Misrepresentation - 512(f)
• Interesting subject matter question
– Is a misrepresentation claim under 512(f)
copyright or tort?
Although not resolving issue, see:
Doe v. Geller,
533 F. Supp. 2d 996, 1004 (N.D. Cal. 2008)

CDA § 230
OSP Safe Harbor for Content
No provider or user of an interactive computer
service shall be treated as the publisher or speaker of
any information provided by another information
content provider.
47 U.S.C. § 230(c)(1)

CDA § 230 (cont’d)
OSP Safe Harbor for Voluntary Efforts (47 U.S.C. § 230(c)(2))
No provider or user of an interactive computer service shall be
held liable on account of
(A) any action voluntarily taken in good faith to restrict access to
or availability of material that the provider or user considers to
be obscene, lewd, lascivious, filthy, excessively violent,
harassing, or otherwise objectionable, whether or not such
material is constitutionally protected;
OR

OSP Safe Harbor for Voluntary Efforts (47 U.S.C. § 230(c)(2))
No provider or user of an interactive computer service shall be
held liable on account of
(B) any action taken to enable or make available to information
content providers or others the technical means to restrict
access to material described in paragraph (1).

§ 230 Does Not Affect:
Criminal Law
Intellectual Property
ECPA
47 U.S.C. § 230(e)

Additional Provisions:
State law can expand, but not be inconsistent
(47 U.S.C. § 230(e)(3))
Requires Interactive Service Provider to
provide notice of availability parental control
devices
(47 U.S.C. § 230(d))

As always, definitions critical:
Interactive Service Provider
Information Content Provider

Interactive Computer Service
means any information service, system, or access
software provider that provides or enables computer
access by multiple users to a computer server,
including specifically a service or system that
provides access to the Internet and such systems
operated or services offered by libraries or
educational institutions.
47 U.S.C. § 230 (f)(3)

Information Content Provider
means any person or entity that is
responsible, in whole or in part, for the
creation or development of information
provided through the Internet or any other
interactive computer service.
47 U.S.C. § 230 (f)(3)

Broad Protection
Recent Cases
Craigslist
Roommates.com

Craigslist
Chicago Lawyers Cmte. v. Craigslist,
519 F.3d 666 (7th Cir. 2008)
March 14, 2008

Roommates.com
Fair Housing Council v.
Roommates.com
Nos. 04-56916, 04-57173
2008 WL 879293
(9th Cir. 2008)
(April 3, 2008)

Mudd Law Offices
• Litigation with DMCA and CDA
– Defense - Invoking and Defending Immunity
– Plaintiff - Utilizing DMCA Notice
– Plaintiff - Utilizing DMCA Subpoena
– Plaintiff - Addressing DMCA and CDA Defenses
• Transactional
– Drafting DMCA Policies
– Implementing DMCA Policies
– Advising on CDA compliant Policies and
Procedures

Charles Lee Mudd Jr.
Mudd Law Offices
3114 West Irving Park Road
Chicago, Illinois 60618
773.588.5410 Telephone
773.588.5440 Facsimile
cmudd@muddlawoffices.com

2008 Digital Millennium Copyright Act and CDA

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