What legal standard should the courts use to penalize a copyright owner for sending a copyright takedown notice that results in the takedown of a copy protected by fair use? This issue has come up infrequently since the Digital Millennium Copyright Act (DMCA) was enacted in 1998, and never in the First Circuit, but now it is pending in two cases before different federal district court judges in Boston, one of which has reached a conclusion early in the case.
Copyright owners complain that they are disadvantaged by the DMCA, which requires them to target copyright-protected works that are posted repeatedly on sites such as Youtube. While takedowns impose a cost burden on sites like Youtube, that host a large volume of user generated content, the cost to the copyright owners is probably much greater. After all, the owners need to repeatedly locate the works and send notices. As I commented in a 2010 post, this Sisyphean task has proven to be an endless game of whack-a-mole for copyright owners, one that Congress could not have anticipated when it enacted the DMCA in the 1998 pre-filing sharing/pre-Youtube era.
However, the DMCA “takedown notice/counter-notice” regime has the potential to be a double-edged sword. What if the takedown notice targets a copyrighted work in circumstances where the use is protected by the copyright fair use doctrine? For example, what if a user posts a short excerpt from a document for purposes of political commentary or for non-commercial, educational purposes (both are classic examples of fair use), only to have the author misuse the DMCA and send a takedown notice to the web host? And, while the DMCA gives the poster the right to have the web host “put back” the item (subject to a sites’ own policies),* most people are too fearful of becoming involved in an expensive legal imbroglio to exercise the “put back” procedure and risk a lawsuit.
*The DMCA requires Internet service providers to notify a subscriber if its materials have been removed and to provide the subscriber with an opportunity to send a written notice to the service provider stating that the material has been wrongly removed. If a subscriber provides this “counter-notice” the service provider must then notify the claiming party of the objection. If the copyright owner does not bring a lawsuit within 14 days, the service provider may restore posting. For Google’s policy on restoring works following a copyright removal notice, see its Copyright Removal Transparency FAQ, here.
Given this dynamic, what disincentive does the law create for copyright owners who exploit the DMCA takedown law to smother the fair use of copyrighted works?
The answer is found in Sections 512(c) and (f) of the DMCA. Section 512(c) requires that a takedown notice contain 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.” To provide a disincentive for takedown notices that fail this requirement, Section 512(f) imposes liability, including costs and attorney’s fees, on “any person who knowingly materially misrepresents under this section that material or activity is infringing.”
However, like so many issues in the law, this statute is subject to different interpretations by different groups in the Internet and content provider communities. One significant interest group (represented by the Electronic Frontier Foundation and the Digital Media Law Project), argues that the copyright owner must “actually evaluate whether a given use is authorized by law” — and specifically the law of fair use — “before sending a takedown notice.”
An opposing interest group (represented by the Motion Picture Association of America), argues that a copyright owner must be shown to have had an actual, subjective belief that he is making a material misrepresentation of infringement before being subject to liability.
The two interest groups have already clashed in one of the two Massachusetts cases discussed below, and are certain to do so in the second case when the issue arises.
The Massachusetts Cases
Tuteur v. Crosley-Corcoran. I’ve written posts about the two pending District of Massachusetts cases that raise this issue. One case involves an essentially private dispute that got out of hand between two bloggers who have opposing views on the safety of home birthing (Tuteur v. Crosley-Corcoran). In this birthing-methods bloggers war Ms. Crosley-Corcoran crudely expressed her views to Dr. Tuteur by posting on Crosley-Corcoran’s website a picture of herself flipping Tuteur the bird.
Dr. Tuteur copied the image onto her own website (apparently thinking that Ms. Crosley-Corcoran’s argumentation by digitus impudicus actually favored Dr. Tuteur). However, Ms. Crosley-Corcoran owns the copyright in her selfie, and she countered by sending a DMCA takedown notice to Dr. Tuteur’s web host. Tuteur responded by filing suit in Massachusetts, asserting that she had made fair use the image, and therefore Ms. Crosley-Corcoran’s takedown violated the DMCA.
Lessig v. Liberation Music. The second Massachusetts case involves a lecture by Harvard Law Professor Larry Lessig, in which he used fan videos of the song “Lisztomania” by Phoenix to illustrate the creativity unleashed by the web. Liberation Music, the copyright owner, served a takedown notice on Youtube (the web host), and Lessig filed suit under the DMCA, asserting that his use of the song was fair use, and therefore Liberation Music had violated the DMCA.
In both cases there is a strong (indeed, a very strong) argument that the use of the copyrighted work is protected by fair use.* The issue, therefore, is whether the copyright owners violated Section 512(f) of the DMCA by “materially misrepresenting” that the use of their works was infringing.
* It’s worth observing that fair use often is a thorny legal issue that must be decided on a case-by-case basis.
Judge Stearns’ Holding In the Tuteur Case
The Lessig case is just getting started, and there have been no motions that would require the court in that case to decide the standard for judging an allegedly improper takedown notice. However, Crosley-Corcoran filed a motion to dismiss in the Tuteur case, arguing that Dr. Tuteur could not establish that her takedown notice was sent without a good faith belief that use of the material in the manner complained was not authorized.
Crosley-Corcoran’s motion, which was supported by an amicus brief from the MPAA, argued that the proper standard required the copyright owner to have “actual, subjective knowledge” that he or she is materially misrepresenting that the use of the material is infringing.
Dr. Tuteur, in turn, was supported by an amicus brief jointly submitted by the EFF and the DMLP. They argued that the DMCA required the copyright owner to “evaluate or consider” whether the material made fair use of the copyright before sending a takedown notice.
Massachusetts Federal District Court Judge Stearns issued his decision on Crosley-Corcoran’s motion in early September 2013. After reviewing the thin case law and legislative history on the the issue, he rejected the standard proposed by Tuteur and the EFF/DMLP, and followed the holding in a 2004 9th Circuit case (Rossi v. Motion Picture Ass’n of America), which held that the DMCA requires “a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner” before finding a misrepresentation. Judge Stearns stated –
in enacting the DMCA, Congress did not require that a notice-giver verify that he or she had explored an alleged infringer’s possible affirmative defenses prior to acting, only that she affirm a good faith belief that the copyrighted material is being used without her or her agent’s permission. … Undoubtedly abuses will occur … If experience ultimately proves that the remedy is weighted too heavily in favor of copyright owners at the expense of those who seek to make “fair use” of another’s intellectual property, the resetting of the balance is for Congress and not a court to strike.
However, he did not dismiss Tuteur’s case against Crosley-Corcoran. The allegation in Tuteur’s complaint that Crosley-Corcoran had engaged in a “knowing and material misrepresentation” was sufficient to keep the case alive, at least for now.
What Does It All Mean?
The legal standard reached by Judge Stearns is no surprise. He hinted that he saw the law this way earlier in the case, and Dr. Tuteur, along with the EFF and the DMLP, were unable to convince him otherwise. And, it’s easy to see why.
It would place an enormous burden on large publishers to replace what has become overwhelmingly an automated or semi-automated takedown system* with one that requires each potential infringement to be evaluated for possible fair use. Some of the hits, possibly even a substantial number, would require a legal consultation to evaluate fair use (something that is often a difficult judgment call, even for trained lawyers). Judge Stearns is correct that nothing in the language of the statute, or its legislative history, suggests that Congress intended that the takedown procedure be escalated to this extreme.
*Google publishes a “Copyright Removal Transparency Report” which shows that it receives upwards of 4 million takedown notices every week. Obviously, most of these are the product of an automated process. Google discusses inaccurate or intentionally abusive copyright removal requests here.
And, while the harm to a poster is not non-existent, the poster can provide a counter-notice requesting the host to put the work back up. At that point the copyright holder will have 14 days to file suit to force a takedown, a step that would motivate most copyright holders to consult an attorney and determine whether the takedown is meritorious, or whether there is a fair use defense. In other words, the original poster can use the counter-notice to call the copyright owner’s bluff.
My biggest concern with the position taken by Tuteur and the EFF/DMLP is the legal standard they urged the judge to adopt: that the copyright owner must have “evaluated or considered” fair use before sending a DMCA takedown notice.* This standard does not eliminate a subjective decision by the copyright holder. In arguing for this standard the Tuteur parties did not argue that a copyright owner be required to consult a lawyer before sending a takedown notice. Therefore, even under their proposed standard a copyright owner can briefly “consider” fair use, reject it (rightly or wrongly) and thereby satisfy this legal test. At best, the “evaluate or consider” test would prevent large publishers from utilizing automated takedowns, since most of the millions of takedown notices sent every week would have to be viewed by a person, even for a few seconds, in order to “consider” the nature of the use.
*While the EFF and DMLP do cite a case in which the court described an objective “knew or should have known” standard (Online Policy Group v. Diebold), they do not advocate that the court adopt this test.
Clearly, Judge Stearns was unwilling to impose this burden on copyright holders. However, the standard adopted by the court — actual knowledge of misrepresentation — will be very difficult for most recipients of takedown notices to meet in cases where there is a fair use defense, and thus Section 512(f) of the DMCA will, under this decision, remain toothless in practice.
What does this mean for the other DMCA fair use takedown case pending in Massachusetts, Lessig v. Liberation Music? That case has been assigned to Judge Nathaniel Gorton. It seems very unlikely that Judge Gorton will see this issue differently than his colleague, Judge Stearns, and therefore I expect a similar ruling from Judge Gorton, should Lessig v. Liberation proceed to that stage of litigation.