Last Monday, the influential Ninth Circuit Federal Court of Appeals, in the case of Lenz v. Universal Music Corp., ruled in the so-called “Dancing Baby” case, by stating that copyright owners who claim that their content has been posted to a website illegally must consider the fair use doctrine before sending Digital Millennium Copyright Act (“DMCA”) take down notices to online hosts like YouTube.
The DMCA, codified as Section 512 of the Copyright Act, was enacted primarily to implement two international intellectual property treaties to which the United States was a signatory. The DMCA primarily addresses copy protection for digital copyrighted works (including music, videos and the like). However, a key provision of DMCA creates immunity for online service providers (“OSPs”) that allow people to upload content, such as YouTube, from direct and indirect copyright infringement liability. Before the passage of DMCA, OSPs had been treated like book publishers—they were liable for all content posted on their sites even if that content was posted in real time.
Under DMCA, in order to enjoy the immunity of Section 512, OSP’s have to have a procedure to allow copyright holders to object to the posting of their copyrighted materials on a site (a so-called “Take Down Notice” provision). Under the DMCA procedures, the party alleging copyright infringement gives a Take Down Notice to the OSP. The Take Down Notice must include the following:
(a) a physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed; (b) identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site; (c) 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 access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material; (d) information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted; (e) 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; and (e) a statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. If a Take Down Notice which substantially complies with these requirements is received, the OSP must expeditiously remove or disable access to the allegedly infringing material.
After a proper Take Down Notice has been submitted, the OSP must take reasonable steps to promptly notify the alleged infringer of the action. Under the statutory language, the OSP is not prohibited from notifying the alleged infringer in advance, but is required to do so afterward. If there is a counter notification from the alleged infringer (a “Counter Notice”), the OSP must respond appropriately to that Counter Notice. If the OSP complies with the Counter Notice procedures, the OSP is safe from legal liability to its own customer as a result of taking down the material.
In the Lenz case, Lenz sued after Universal Music Group (“UMG”) sent a Take Down Notice to YouTube over a 30-second clip she had posted of her son dancing to Prince’s “Let’s Go Crazy.” [Note: YouTube, as the OSP, was not a party to this case. Rather, the parties were the woman who posted the allegedly infringing video, Lenz, and UMG which issued the Take Down Notice as the copyright owner of Prince’s song.] Lenz claimed the use of the song in the video was fair use and that the label had thus violated Section 512(f) in its Taked Down Notice by knowingly misrepresenting the video was an unauthorized use of a copyrighted work. The crux of the case is whether or not a party (such as UMG) that intends to send a Take Down Notice first must evaluate whether the content that is the subject of the Take Down Notice qualifies as “fair use.” (For a discussion of the Copyright Fair Use Doctrine see my posts of [February 20, 2013, November 21, 2013, December 23, 2013 and May 29, 2015.)
The 9th Circuit held that Section 512(f), which prohibits a party from knowingly misrepresenting that the “material or activity is infringing,” requires the party to conduct a fair use analysis before sending out the Take Down Notice, even though such a requirement is not mentioned anywhere in the statute. The Court further held that a party that does not do that analysis before sending out the Take Down Notice can be held liable for damages.
Major content providers (such as UMG) as well as advocates for internet freedom each had a lot at stake in this case. Lenz (and her supporter in this effort, the Electronic Frontier Foundation) said a win would provide a needed counterbalance to overly aggressive Take Down Notices from large media companies. UMG and other media firms, on the other hand, said the DMCA’s take down system already overburdens them and the system can’t function as designed if they’re required to do a fair use analysis each time they send a Take Down Notice.
I found this decision to be particularly odd. “Fair Use” is a defense that can be asserted by a defendant in a copyright infringement suit when it believes that, despite what would otherwise amount to copyright infringement, the fair use doctrine allows for the use of the copyrighted work. A plaintiff in a copyright case is not expected to argue why a defendant’s action did not amount to “fair use” unless that defense is raised by the defendant. In this situation, if the party who posted the video did not agree with the Take Down Notice of the video, she could have filed a Counter Notice—the procedure that is spelled out in the DMCA. Instead, the court now says that a party must anticipate the merits of that defense before it can issue the Take Down Notice, something that is nowhere to be found in the statute. How this decision will be viewed by other Federal circuits remains to be seen. Should a similar case come before another Federal circuit and should it rule contrary to the 9th Circuit, it is possible that the Supreme Court will have to take up resolving this matter. In the meantime, at least in the 9th Circuit (which includes California), this new requirement of conducting a fair use analysis before sending out a Take Down Notice could have significant impact.
You can view the video at issue here: https://www.youtube.com/watch?v=N1KfJHFWlhQ