© C in a Circle - You Put It Up, They Take It Down - or Not

The rules of the dance for online removal (and restoration) of unlicensed copyrighted material.

By Gary Roth

YouTube, MySpace, Facebook, etc. They are the names of some of the most popular websites in the world. They are also the names of the places where hundreds of thousands of copyrighted items are posted by users daily - without permission of the copyright owners.

I’m sure you’ve read about the attempts by the large copyright owners of both musical and video material to discover and get their unlicensed material removed from these sites. It is a mammoth, expensive undertaking, and as soon as one piece is gone, another crops up. But until the law changes, copyright owners - large and small - must contend with the existing rules created by Congress as to how to get it done. Familiarly known as “notice and takedown” provisions, it’s a little dance among the owners and the ISPs (and sometimes even the subscribers) that tries to shift responsibility to the various parties and avoid legal penalties along the way.

The Copyright Act says that a service provider does not have to pay monetary damages for copyright infringement and, in most cases, won’t be enjoined, if a copyright is infringed by reason of the storage at the direction of a user of material that resides on the ISP’s system, if the ISP meets this three-part test:

• The ISP does not have actual knowledge that the material or an activity using the material is infringing, and if there is no actual knowledge, the ISP is not aware of facts or circumstances from which infringing activity is apparent or upon obtaining such knowledge or awareness acts expeditiously to remove or disable access to the material,
• The ISP does not receive a financial benefit directly attributable to the infringing activity, in a case where the ISP has the right and ability to control such activity, and
• Upon being notified of a claimed infringement, the ISP responds expeditiously to remove or disable access to the material claimed to be infringing or to be the subject of infringing activity.

This test is what the owners of the websites that host all of that music and all of those videos posted by users rely upon to shield themselves from suit when they insist that they do not have actual knowledge of infringement and don’t receive any financial benefit from it anyway. Of course, whether they successfully do so depends upon whether a specific alleged infringement does indeed meet the language of the statute.

Let’s give the language a closer look to see what issues are raised by the law:

While it’s pretty clear what “actual” knowledge is, less certain is whether being “aware of facts or circumstances” from which it is apparent that infringements are going on can be attributed to the ISP. Is it enough that Google (the owner of YouTube) knows (as the rest of the world seems to know) that most of its users upload other peoples’ copyrighted material on a daily basis and that most of it is unlicensed? Or is something more specific required? Does the knowledge test have to apply to every specific clip complained about? How fast is “expeditiously”? Is it within a few hours, or within a few days? What gives the website the “right and ability” to control infringing activity? If there are technological means available to stop potentially infringing uploads, must Facebook use them? Does a website need to screen uploads coming in and pass judgment on whether they include obvious copyrighted product not owned by the uploader? Do the sites have to create a monitoring system to review posted content for potential infringements? Can MySpace put language in its subscriber agreement to absolve itself of the “right” to control infringements, even if they have the right to control most other uses of their service? What constitutes the ability to control the uses? What kind of financial benefit is “directly” attributable to any single infringement? Is the fact that the entire site sells advertising enough? Or must there be a banner ad on the page where the unlicensed video sits? Or must it be even more direct than that?

These are some of the questions that lawyers for copyright owners and ISPs have argued and will continue to debate as lawsuits are brought over whether an ISP can be held liable for a subscriber’s infringements. Moreover, every situation brings with it its own set of facts, making a blanket rule more academic than practical in dealing with the multitude of unlicensed copyrighted material being used online.

In any event, if a copyright owner finds its unlicensed copyrighted material on a site, it usually wants it gone. The notice that it needs to give the ISP in order to get it removed (at the legal peril for the ISP if it ignores the complaint) is set forth as follows:

It must be written, with the following elements:

• A physical or electronic signature of an authorized person on behalf of the owner of the allegedly infringed right;
• Identification of the copyrighted work claimed to have been infringed, or a representative list of works if multiple works at one site are claimed infringements;
• 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 to which access should be disabled and information reasonably sufficient to permit the ISP to locate it;
• Information reasonably sufficient to permit the ISP to contact the complaining party, such as its address, telephone number and any available email address;
• A statement by the complaining party that it has a good faith belief that use of the material is not authorized by the copyright owner, its agent or the law;
• A statement that the information in the notice is accurate and (under penalty of perjury) that the complaining party is authorized to act on behalf of the owner of the allegedly infringed right.

Let’s look at those requirements. The law has put a burden on a copyright owner, who may own tens of thousands of musical works or videos, to monitor every possible site that may have one of its items on it and prepare these detailed notices. As many corporate copyright owners have noted, this is a very expensive undertaking to protect one’s copyright rights from mass infringements as are common in today’s online world, requiring an investment of personnel that most likely is ultimately borne by the consumer. It used to be - back in analog days - that the user of a copyrighted work had to assure it was licensed for use before doing so or be legally liable. Does it seem that the burden has been shifted?

Even if the copyright owner gives the required notice and the ISP takes down or blocks the material in order to avoid being held liable for hosting it, does it end there? Not exactly.

The ISP may be concerned that it will be held liable by the person whose material was removed for any damages that the subscriber may have incurred because of the removal. The ISP can prevent that and not be liable to the person whose material was removed or disabled as long as it notifies the subscriber whose posting was taken down.
However, this brings the subscriber who posted the material to the dance floor. The subscriber may give the ISP a notice that refutes the copyright owners’ notice that what was posted is an infringement. If the subscriber gives the ISP a “counternotice,” as it is called, that the material was removed as the result of mistake (such as it wasn’t a copyright infringement, it was fair use or in the public domain) or misidentification (his clip wasn’t the one complained about, for example), the ISP must give the counternotice to the original complainant and tell it that they will put the material back up on the site within 10 business days, and then the ISP must replace the removed material within 10-14 business days unless the complainant, in turn, tells the ISP that it has filed a lawsuit seeking a court order against the subscriber! Whew!

There are rules that provide for the copyright owner to issue a subpoena to the ISP to find out who the subscriber is so that the lawsuit for its court order can be brought. In the end, this little dance becomes a song-and-dance for the copyright owner to keep its copyrighted product from being improperly used.

The law does say that even if all of the rules are followed in any of the situations I’ve described, in order to be kept from being held liable, the ISP must have adopted and reasonably implemented a policy that it tells its subscribers that it will terminate “in appropriate circumstances” repeat infringers, and also accommodates and doesn’t interfere with technical measures used to identify and protect copyrighted works that may be developed by a consensus of copyright owners and ISPs.

Everyday you turn on your PC and log on to a website. You find lots of videos and tons of music that are not owned by the people who posted them. You may enjoy them as a consumer, but as a creator and copyright owner, be aware that if you find something of yours that you want taken off a site - for whatever reason - you’ll have to put on your dancing shoes and start moving if you think that somebody ought to face the music.

 

Posted Feb 12, 2008

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