Imposing Liability Under DMCA Counter-Notification Provision

The Digital Millennium Copyright Act (DMCA) codifies a comprehensive procedure through which a copyright holder may petition for the removal of allegedly infringing content from a Web-publishing platform, e.g., video sharing and social media sites like YouTube and Vimeo. See, 17 U.S.C. '512(c). If the copyright holder believes in good faith that the targeted content is infringing, it can disseminate a “takedown notice” to the service provider pursuant to '512(c)(3). The service provider is then required to remove or disable access to the material “expeditiously” lest it be confronted with infringement liability itself.

Sending a DMCA takedown notice is not without risk. If the sender of the notice “knowingly materially misrepresents” that the content is infringing, under the '512(f) counter-notification provision, the recipient can sue for damages, including attorney fees and costs incurred by the purported infringer.

Section 512(c) is oft-litigated, and various specialized doctrines have emerged that deal with individual issues intrinsic to the statutory text, such as what form a valid takedown notice must utilize, and what knowledge a service provider must possess in order to incur liability for a failure to remove content even after receiving a conforming takedown notice. In contrast, '512(f) has rarely been the center of high-profile litigation. This may be starting to change. A federal appellate court heard oral arguments on July 7th concerning a major '512(f) case involving what is alleged to be an unsubstantiated takedown notice sent from a holder to a YouTube subscriber. The questions presented have been bifurcated into both the determination of the requisite mens rea so as to preclude '512(f) liability by the sender, particularly when the recipient raises an affirmative defense as the basis for any sender knowledge, and to what extent, and of what nature, should damages be awarded upon a finding of '512(f) liability.

Although seemingly dry, the few cases heretofore that have confronted questions surrounding misrepresenting takedown notices have contained facts that are arguably ripped from the tabloids, including a bitter dispute between bloggers over the proper method of childbirth, and a kerfuffle arising from the wider publication of the views of a pro-straight pride organization in the U.K.'This article features a description and analysis of both cases, which each discuss the scienter and statutory damage award questions that pervade the instant debate over '512(f). Finally, it concludes with some brief thoughts on the future of '512(f) in light of its forthcoming spotlight in one of the 11 federal appellate courts.

Knowledge Required for a '512(f) Claim

As referenced above, a recipient of a duplicitous DMCA takedown notice can only sustain liability against the sender by proving that such notice was “knowingly materially misrepresent[ed]” when it was first disseminated. A federal district court case squarely examined this scienter query earlier this year, which is a rarity in the context of this DMCA provision.

Automattic v. Steiner, — F. Supp. 3d —-, 2015 WL 1022655 (N.D. Cal. March 2, 2015), concerned a DMCA takedown notice disseminated on the grounds that the reproduction of a press release on the recipient's (Hotham) blog constituted copyright infringement. Hotham, a student journalist based in London, sent a series of questions to representatives from Straight Pride UK, a British group dedicated to raising awareness about the presumed travails of the “heterosexual part of our society.” After receiving responses from Straight Pride UK's self-identified “Press Officer,” Hotham posted this press release on his blog, framed with his own pejorative comments. On that same day, the defendant (Steiner) then sent a takedown notice and ultimately Hotham's ISP, Automattic, disabled the post.

After disposing of jurisdictional questions in favor of the plaintiffs that had arisen from Steiner's promulgation of alleged '512(f) misrepresentations while situated in the United Kingdom, the court evaluated whether Steiner had sufficient knowledge that his takedown notice was “knowingly willfully misrepresenting” the existence of infringement. The standard applied required the plaintiffs to prove that Steiner “actually knew, should have known if [he] acted with reasonable care, or would have had no substantial doubt had it been acting in good faith, that it was making misrepresentations.” See, Online Policy Grp. v. Diebold, 337 F. Supp. 2d 1195 (N.D. Cal. 2004). Under this standard, Steiner was deemed to retain the necessary knowledge that his take down notice was a misrepresentation, as he could not have reasonably believed that the press statement could be construed as copyrighted material.

Another topical case materialized in 2013, and it involved a slightly distinguishable question of scienter in the context of a '512(f) claim. Namely, the case adjudicated the question of the mental state necessary to impose '512(f) liability on the sender when it could potentially be foreseeable that the recipient would proffer a fair use defense in response to any notice.

Tuteur v. Crosley-Corcoran, 961 F. Supp. 2d 333 (D. Mass. 2013), similarly involved a dispute over a blog post that metastasized into DMCA litigation that eventually implicated '512(f). Both the plaintiff (Tuteur) and the defendant (Crosley-Corcoran) blogged from distinctly different viewpoints regarding the safety of certain birthing techniques. After Tuteur posted a picture on her a blog with an underneath caption negatively depicting Crosley-Corcoran (which the latter had created), Crosley-Corcoran sent a DMCA takedown notice alleging infringement.

The parties first differed on what satisfied the '512(c)(3) good faith belief requirement so as to avoid any subsequent '512(f) liability in the instance that it was conceivable that the recipient would raise an affirmative defense in response to the initial takedown notice, namely, the fair use defense.

Plaintiff Tuteur and her amici argued that a good faith belief could only be shown by an ex ante investigation by the copyright holder of any potentially germane fair use or other affirmative defense. Defendant Crosley-Corcoran and her amici countered that '512(f) liability must be conditioned on proof of subjective belief that he or she is making a material misrepresentation of infringement.

The court sided with the defendant Crosley-Corcoran. It first cited to the Ninth Circuit decision in Rossi v. Motion Picture Ass'n of Am., 391 F.3d 1000 (9th Cir. 2004), which concluded that the good faith belief requirement encompasses a subjective, rather than objective standard of knowledge. The court in Tuteur also cited structural and policy concerns in finding for the defendant. For one, fair use is an affirmative defense, and not a right to use, and therefore any burden of proof resides with Tuteur. Such a burden indicates that a bright-line rule mandating the copyright owner investigate fair use prior to filing a takedown notice would not comport with the emphasis of the fair use defense upon the mindset and actions of the alleged infringer.

Second, and most important, the court posited that to require an investigation of a fair use and other affirmative defenses prior to sending a takedown notice would entirely conflict with Congress' express intent to use the DMCA to create an “expeditious[]” and “ rapid response” to “potential infringement” on the Internet.

What Damages Are Appropriate?

Clearly then, Tuteur could not petition for damages, though both plaintiffs in the Automattic litigation could, and did, pursue such an option. After being awarded a default judgment, Hotham petitioned for damages based on an alleged chilling of his free speech rights, as well as for time and resources spent responding to Steiner's takedown notices. Likewise, Automattic requested damages incurred in, inter alia, devoting staff time and resources to review the takedown notices, handling press inquiries, and pursuing the instant action.

Hotham could per senot recover based on any constitutional claim to free speech rights, as such nominal damages are granted only when the speech is chilled by a state actor. However, Hotham did receive remuneration for undertaking an investigation and corresponding with Automattic in order to determine the validity of Steiner's takedown notices. Likewise, Automattic collected damages as a result of its companion investigation into Steiner's ultimately fraudulent takedown notice, largely in the form of attorney fees'accumulated by in-house counsel in researching the notice, and by outside counsel in pursuing action based upon the infirmities of the notice.

Hotham also requested damages based on an alleged suffering of reputational harm insofar as his reputation for journalistic integrity had been impugned by Steiner's fraudulent notice. This seemingly novel argument was rejected, as the judge observed that Hotham had presented no evidence to buttress the claim, and even if he had, those damages are not considered quantifiable, and unlikely to be awarded under this section in any situation.

Richard Raysman is a Partner at Holland & Knight. Peter Brown is the principal at Peter Brown & Associates and a member of this newsletter's Board of Editors. They are co-authors of Computer Law: Drafting and Negotiating Forms and Agreements (Law Journal Press).

The Digital Millennium Copyright Act (DMCA) codifies a comprehensive procedure through which a copyright holder may petition for the removal of allegedly infringing content from a Web-publishing platform, e.g., video sharing and social media sites like YouTube and Vimeo. See, 17 U.S.C. '512(c). If the copyright holder believes in good faith that the targeted content is infringing, it can disseminate a “takedown notice” to the service provider pursuant to '512(c)(3). The service provider is then required to remove or disable access to the material “expeditiously” lest it be confronted with infringement liability itself.

Sending a DMCA takedown notice is not without risk. If the sender of the notice “knowingly materially misrepresents” that the content is infringing, under the '512(f) counter-notification provision, the recipient can sue for damages, including attorney fees and costs incurred by the purported infringer.

Section 512(c) is oft-litigated, and various specialized doctrines have emerged that deal with individual issues intrinsic to the statutory text, such as what form a valid takedown notice must utilize, and what knowledge a service provider must possess in order to incur liability for a failure to remove content even after receiving a conforming takedown notice. In contrast, '512(f) has rarely been the center of high-profile litigation. This may be starting to change. A federal appellate court heard oral arguments on July 7th concerning a major '512(f) case involving what is alleged to be an unsubstantiated takedown notice sent from a holder to a YouTube subscriber. The questions presented have been bifurcated into both the determination of the requisite mens rea so as to preclude '512(f) liability by the sender, particularly when the recipient raises an affirmative defense as the basis for any sender knowledge, and to what extent, and of what nature, should damages be awarded upon a finding of '512(f) liability.

Although seemingly dry, the few cases heretofore that have confronted questions surrounding misrepresenting takedown notices have contained facts that are arguably ripped from the tabloids, including a bitter dispute between bloggers over the proper method of childbirth, and a kerfuffle arising from the wider publication of the views of a pro-straight pride organization in the U.K.'This article features a description and analysis of both cases, which each discuss the scienter and statutory damage award questions that pervade the instant debate over '512(f). Finally, it concludes with some brief thoughts on the future of '512(f) in light of its forthcoming spotlight in one of the 11 federal appellate courts.

Knowledge Required for a '512(f) Claim

As referenced above, a recipient of a duplicitous DMCA takedown notice can only sustain liability against the sender by proving that such notice was “knowingly materially misrepresent[ed]” when it was first disseminated. A federal district court case squarely examined this scienter query earlier this year, which is a rarity in the context of this DMCA provision.

Automattic v. Steiner, — F. Supp. 3d —-, 2015 WL 1022655 (N.D. Cal. March 2, 2015), concerned a DMCA takedown notice disseminated on the grounds that the reproduction of a press release on the recipient's (Hotham) blog constituted copyright infringement. Hotham, a student journalist based in London, sent a series of questions to representatives from Straight Pride UK, a British group dedicated to raising awareness about the presumed travails of the “heterosexual part of our society.” After receiving responses from Straight Pride UK's self-identified “Press Officer,” Hotham posted this press release on his blog, framed with his own pejorative comments. On that same day, the defendant (Steiner) then sent a takedown notice and ultimately Hotham's ISP, Automattic, disabled the post.

After disposing of jurisdictional questions in favor of the plaintiffs that had arisen from Steiner's promulgation of alleged '512(f) misrepresentations while situated in the United Kingdom, the court evaluated whether Steiner had sufficient knowledge that his takedown notice was “knowingly willfully misrepresenting” the existence of infringement. The standard applied required the plaintiffs to prove that Steiner “actually knew, should have known if [he] acted with reasonable care, or would have had no substantial doubt had it been acting in good faith, that it was making misrepresentations.” See, Online Policy Grp. v. Diebold, 337 F. Supp. 2d 1195 (N.D. Cal. 2004). Under this standard, Steiner was deemed to retain the necessary knowledge that his take down notice was a misrepresentation, as he could not have reasonably believed that the press statement could be construed as copyrighted material.

Another topical case materialized in 2013, and it involved a slightly distinguishable question of scienter in the context of a '512(f) claim. Namely, the case adjudicated the question of the mental state necessary to impose '512(f) liability on the sender when it could potentially be foreseeable that the recipient would proffer a fair use defense in response to any notice.

Tuteur v. Crosley-Corcoran, 961 F. Supp. 2d 333 (D. Mass. 2013), similarly involved a dispute over a blog post that metastasized into DMCA litigation that eventually implicated '512(f). Both the plaintiff (Tuteur) and the defendant (Crosley-Corcoran) blogged from distinctly different viewpoints regarding the safety of certain birthing techniques. After Tuteur posted a picture on her a blog with an underneath caption negatively depicting Crosley-Corcoran (which the latter had created), Crosley-Corcoran sent a DMCA takedown notice alleging infringement.

The parties first differed on what satisfied the '512(c)(3) good faith belief requirement so as to avoid any subsequent '512(f) liability in the instance that it was conceivable that the recipient would raise an affirmative defense in response to the initial takedown notice, namely, the fair use defense.

Plaintiff Tuteur and her amici argued that a good faith belief could only be shown by an ex ante investigation by the copyright holder of any potentially germane fair use or other affirmative defense. Defendant Crosley-Corcoran and her amici countered that '512(f) liability must be conditioned on proof of subjective belief that he or she is making a material misrepresentation of infringement.

The court sided with the defendant Crosley-Corcoran. It first cited to the Ninth Circuit decision in Rossi v. Motion Picture Ass'n of Am., 391 F.3d 1000 (9th Cir. 2004), which concluded that the good faith belief requirement encompasses a subjective, rather than objective standard of knowledge. The court in Tuteur also cited structural and policy concerns in finding for the defendant. For one, fair use is an affirmative defense, and not a right to use, and therefore any burden of proof resides with Tuteur. Such a burden indicates that a bright-line rule mandating the copyright owner investigate fair use prior to filing a takedown notice would not comport with the emphasis of the fair use defense upon the mindset and actions of the alleged infringer.

Second, and most important, the court posited that to require an investigation of a fair use and other affirmative defenses prior to sending a takedown notice would entirely conflict with Congress' express intent to use the DMCA to create an “expeditious[]” and “ rapid response” to “potential infringement” on the Internet.

What Damages Are Appropriate?

Clearly then, Tuteur could not petition for damages, though both plaintiffs in the Automattic litigation could, and did, pursue such an option. After being awarded a default judgment, Hotham petitioned for damages based on an alleged chilling of his free speech rights, as well as for time and resources spent responding to Steiner's takedown notices. Likewise, Automattic requested damages incurred in, inter alia, devoting staff time and resources to review the takedown notices, handling press inquiries, and pursuing the instant action.

Hotham could per senot recover based on any constitutional claim to free speech rights, as such nominal damages are granted only when the speech is chilled by a state actor. However, Hotham did receive remuneration for undertaking an investigation and corresponding with Automattic in order to determine the validity of Steiner's takedown notices. Likewise, Automattic collected damages as a result of its companion investigation into Steiner's ultimately fraudulent takedown notice, largely in the form of attorney fees'accumulated by in-house counsel in researching the notice, and by outside counsel in pursuing action based upon the infirmities of the notice.

Hotham also requested damages based on an alleged suffering of reputational harm insofar as his reputation for journalistic integrity had been impugned by Steiner's fraudulent notice. This seemingly novel argument was rejected, as the judge observed that Hotham had presented no evidence to buttress the claim, and even if he had, those damages are not considered quantifiable, and unlikely to be awarded under this section in any situation.

Richard Raysman is a Partner at Holland & Knight. Peter Brown is the principal at Peter Brown & Associates and a member of this newsletter's Board of Editors. They are co-authors of Computer Law: Drafting and Negotiating Forms and Agreements (Law Journal Press).