Technology: The Digital Millennium Copyright Act, shield and sword

Not only is the DMCA able to protect you, but you can use the act offensively as well

The Digital Millennium Copyright Act (DMCA) of 1998 was enacted as a response to rapidly-changing technologies and some of the tensions created thereby: Copyright owners felt that the laws then on the books were insufficient to protect their rights, and ISPs and online bulletin board owners were being hit with copyright suits over user-generated content they did not directly control. Among its innovations, DMCA criminalizes “circumvention” measures, i.e., technology or services that avoid measures intended to control access to and protect copyrighted works..

The DMCA is most notable, however, for providing a shield – or “safe harbor” – from copyright liability to entities hosting user-generated content posted at the direction of a user. Under the DMCA, online service providers like YouTube or Facebook that allow users to post content can obtain protection from liability if they meet certain technical requirements and promptly remove user-generated content when they receive notice (or otherwise recognize) that user-generated content is infringing. Among the technical requirements are designating with the U.S. Copyright Office, the company’s agent for receiving DMCA takedown notices, and informing users of the company policy on copyright infringement, including repeated infringement.

Because copyright infringement carries with it potentially large statutory damages, all companies allowing any user-generated content on their website’s services should be aware of, and consider taking advantage of, the DMCA safe harbor, even if their primary business is not online. For example, a brick-and-mortar or traditional company that allows comments on a related blog, or allows users to post reviews and photographs of products they have purchased, may be liable for copyright infringement or other causes of action. Accordingly, all companies need to consider taking advantage of DMCA safe harbor protection. Providing avenues for user-generated content could expose the company to copyright infringement claims if an individual posting a comment or review does not own the content they post and the company has not qualified for the safe harbor under the DMCA.

In addition to acting as a “shield” from liability, the DMCA can be a valuable “sword” for protecting a brand online. Rights owners who find their content posted by users on social media sites may be able to have that content expeditiously removed by submitting a DMCA notice to the social media website provider. For example, a retailer who finds photographs from its website reproduced in an eBay listing may be able to have the photographs removed promptly by submitting a DMCA notice to eBay’s designated DMCA agent. A proper DMCA notice must include (i) the name, address and electronic signature of the complaining party; (ii) the web address or other location of the infringing materials; (iii) sufficient information to identify the copyrighted works; (iv) a statement by the owner that it has a good faith belief that there is no legal basis for the use of the materials complained of; and (v) a statement of the accuracy of the notice and that the complaining party is authorized to act on the behalf of the owner.

However, rights owners should carefully consider whether there might be any legal basis for the use of the materials – including fair use – before submitting a DMCA takedown notice. In one case, a YouTube user posted a 29-second video of her children dancing to the Prince song “Let’s Go Crazy.” The copyright holder, Universal Music, sent a DMCA takedown notice to YouTube, which removed the content. The user then sued Universal for misrepresenting its rights in bad faith and sought a declaratory judgment that the video was non-infringing. The court found in favor of the user, holding that copyright owners must consider fair use when submitting a takedown request and that failure to do so may violate the good faith requirements of the DMCA. More recently, the same court denied both parties’ motions for summary judgment, reiterating that copyright owners may not be “willfully blind” to fair use considerations when determining whether to submit to a takedown request. Thus, undertaking a thoughtful analysis of all of the relevant circumstances before submitting a DMCA takedown notice is vitally important.

The DMCA has been the law of the land for nearly 25 years, and it continues to play a role in shaping the landscape of social media and digital marketing. Companies should be familiar with how the DMCA works so that they can use it to their best advantage — whether offensively or defensively.

Contributing Author

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Christopher D. Mickus

Christopher D. Mickus is an attorney with Neal, Gerber & Eisenberg LLP (Chicago). He is a partner and leader of the firm’s recently-launched Advertising, Marketing...

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Katherine Nye

Katherine Nye is an associate with Neal Gerber Eisenberg. She focuses her practice on trademark policing and litigation. Kate also counsels clients regarding the clearance,...

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