Entertainment & Media, Law
“Fan Art”—you’ve probably seen it and didn’t know it. Maybe you’ve even purchased it, not knowing it wasn’t legally created. So what is it, exactly? Fan art is art created by fans of characters that were originally created by another person. It can take the form of merchandise, such as paintings, t-shirts, buttons, posters, etc.
Courtesy of GettyImages
Fan art has become incredibly widespread. It regularly appears at large comic book and collectible conventions, often for sale right under the noses of the intellectual property owners of the characters. For example, it is commonplace to see offered for sale at shows things such as Marvel superhero characters immortalized in new paintings and posters that were not licensed to be produced or reproduced. There is also widespread manufacture and sale of other fan art items such as print on demand t-shirt sites on commercial websites.
In my view, such fan art is nearly always an illegal violation of the copyrights to the original works. Under copyright law, the owner of a copyright to a literary work (such as a book), a motion picture work (such as a movie or cartoon) or a work of fine art (such as a drawing or painting) owns not only the exclusive right to display and reproduce that work, but also the exclusive right to create “derivative works” based on the work. A “derivative work” is defined as a “work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” Clearly, in my view, fan art constitutes a derivative work of the original work upon which it is based.
Although copyright’s Fair Use Doctrine permits certain uses that would otherwise constitute copyright infringement, the application of the Fair Use Doctrine is limited to certain uses such as parody, criticism, comment, scholarship, research and the like. However reproducing a work of fan art primarily for commercial purposes (such as fan art created for sale at shows, as opposed to creating a parody of a famous character for political commentary) would seem to fall squarely outside of the scope of Fair Use. (For a more detailed discussion of the Fair Use Doctrine, see https://www.gurwinskeyboard.com/homage-or-rip-of/.)
So WHO owns the copyrights to the fan art? Clearly, that portion of the fan art that merely incorporates the original art is owned by the owner of the original art. But what about the elements added to that original art, i.e., the new elements of the derivative work? This becomes an issue if the owner of the original work seeks to commercially exploit the unauthorized derivative work. For example, if Marvel were to see an unauthorized Spiderman statue but felt it could be commercialized, could it simply take that statue, reproduce it and sell it without paying anything to the fan artist who created it without Marvel’s permission?
While that question is generally unsettled among the various Federal juridical circuits, the most favored approach is that the author of an unauthorized derivative work has NO rights in the derivative work, even the aspects that are original or distinct from the original copyrighted work. So who DOES own those rights? Again, while it is not a settled issue, most of the circuits have taken the position that those new aspects are in the public domain, as opposed to being owned by either the owner of the original copyright or the author of the unauthorized derivative work.
In the case of Keeling v. Hars, recently decided by the influential Second Circuit Court of Appeals, the court held that if the derivative work is fair use, the author of the derivative work IS entitled to copyright protection in the aspects of the derivative work that were his or her original creative contributions. However, as I’ve noted above, given the commercial nature of much of this fan art, I do not think it likely would be deemed to be fair use. Given an appropriate circumstance, however, such as fan art that constitutes a political commentary or parody of the original work which qualifies as fair use, the Second Circuit view is that the copyright to that portion of such fan art that was not part of the original work would be owned by the fan artist, not the original copyright holder.
Trademark law also can serve as a protection against fan art. The unauthorized use of a mark that is likely to cause confusion with an existing trademark or service mark is an infringement. So, if the fan art consists of reproducing a well-known logo (e.g., “Spiderman”), that would constitute not only copyright infringement, but also trademark infringement. While certain types of trademark parodies are considered to be a form of “fair use” (think, Mad Magazine or Garbage Pail Kids), simply appropriating a well-known mark and reproducing it in the form of fan art likely would not constitute permissible a use.
The question is why is fan art activity still so widespread? The answer lies in the practicalities of enforcement, both in terms of costs and relationships with consumers.
I asked one of my clients, Kevin Stecko, President of 80sTees.com, Inc. (80sTees.com), a leading website that sells authentic licensed character merchandise, to weigh in with his thoughts.
When I asked Kevin how the rise of “fan art” has impacted his business, he stated that fan art, by itself, does not hurt his business. “For example deviantart.com is essentially an online gallery for anyone who wants to post their art, and there are a ton of great fan artists who post on there.” However, Kevin pointed out that there are specific sites that have made a business model out of selling unlicensed fan art for the brands that 80sTees.com sells. He gave the example of teefury.com, which has an entire page where they sell “Galactic Style,” “which is just a way of not actually saying Star Wars T-Shirts: teefury.com/collections/galactic-style.” Other examples Kevin cites are redbubble.com and riptapparel.com which have similar business models. Many of these companies even sell “mash ups” of two or more brands.
According to Kevin, these companies have huge advantages over companies like 80sTees.com: “Since there is no licensing, there is no approval process, no royalties, no limits at all, really. So they can move faster and source less expensively than we can.”
I asked Kevin how his licensors were policing these unauthorized products. He told me that, for the most part, the movie and TV studios are not actively pursuing the creators or sellers of this fan art. However, certain smaller brands or individuals sometimes do a great job. He noted that both Chuck Norris and the heirs of Bob Ross are really active in policing their respective IP rights.
Kevin feels that there are three primary reasons for this lack of policing:
- The property owners fear a public relations backlash from fans for cracking down on individuals who are more or less expressing love for their product;
- The property owners do not fully realize just how profitable some of these unauthorized sites are and, therefore, don’t see policing as something in which to to invest; and
- They understand the practical problem of engaging in a costly lawsuit against an entity that does not have much money—essentially making it judgment proof.
While brand awareness and popularity is an obvious benefit for licensors and licensees alike, to the extent that fan art goes beyond mere “homage” to a commercial undertaking where the creators/sellers of such fan art have an unfair competitive advantage over those who are properly licensed, this will continue to be a problem in this industry.
At some point, the owners of this valuable intellectual property will need to take a stand. Otherwise, they run the risk of losing their IP rights or of finding licensees willing to pay license fees to produce products that others are producing without the cost of the license.
My thanks to Kevin Stecko of 80sTees.com for his assistance with this blawg post.
Entertainment & Media, Law, Music
On two previous occasions (see https://www.gurwinskeyboard.com/happy-birthday-to-you-feel-free-to-sing-along/ and https://www.gurwinskeyboard.com/happy-birthday-us-court-rules-happy-birthday-public-domain/) , I wrote about the court battle and decision regarding the copyright status of the lyrics to the song, Happy Birthday to You. As noted in my September 2015 post, the U.S. District Court in California ruled that mega-publisher, Warner/Chappell Music, which had claimed to own the copyright to the song and had been charging royalties for the use of the song, did not own any rights to the song. The court held that Warner/Chappell had never actually owned the copyright to the song. The judge said there was no proof that the song’s original authors, sisters Mildred and Patty Hill, had ever validly assigned their rights to the song to Warner/Chappell.
Two months after the District Court’s decision, another party, the Association for Childhood Education International (“ACEI”), filed a suit claiming to be the rightful owner of the copyright to the birthday party standard. Most lawyers and observers assumed that the District Court’s ruling also meant that the lyrics were now in the public domain. However, a careful reading of that case reveals that the court didn’t explicitly state that: the court merely said there had been no transfer of 
rights and that some person or company theoretically could still claim the rights to the song. ACEI, a charity founded by the late Patty Hill, moved to intervene in the case against Warner/Chappell, claiming that IT was the rightful legal heir to the late authors’ rights in the suddenly unowned copyrights. ACEI’s argument was that if Patty Hill never assigned any rights to Warner/Chappell and its predecessors, she likely died possessing all the copyrights to Happy Birthday to You. Those rights would have then descended to her daughter, Jessica Hill, who in turn bequeathed all of her holdings to ACEI. ACEI stated in its filing that “Until [the District Court’s] ruling, [ACEI] reasonably believed [Warner/Chappell] possessed valid copyrights to the Happy Birthday lyrics — an assumption the parties have operated under since [1992].” Bolstering this argument of its claimed historical rights to the song is the fact that Warner/Chappell had been paying ACEI one-third of the royalties that Warner/Chappell had collected from users of Happy Birthday to You.
In the original case (which was filed by a documentary filmmaker who refused to pay the licensing fees to Warner/Chappell), the plaintiffs had only sought to recover licensing fees paid since 2009. However, the plaintiffs later moved to vastly expand the relief sought, claiming that information learned during the discovery process for the case led them to believe that Warner/Chappell had concealed certain evidence. They argued that the members of the class action lawsuit should be enlarged to cover any one who paid licensing fees for the right to use Happy Birthday to You all the way back to 1949. This month, the District Court ruled further on the case, holding that plaintiffs (the parties who had been charged millions in royalties by Warner/Chappell to use the song) could seek damages going all the way back to 1949 since it never owned the copyright to the song and, therefore, never had a legal right to charge users of the song.
Against this complicated and multi-party litigation backdrop, the lawsuit now has been settled. The settlement, announced in a court filing last Wednesday, involves all three sides of the case — Warner/Chappell, the filmmaker plaintiffs who sued originally, and ACEI, which claimed to rightfully own the song. Thus far, the financial details and other aspects of the settlement have not been made public. However, various sources have reported that, as part of the settlement, the song will be in the public domain. That means it will be free for all to use without fear of a lawsuit.
Entertainment & Media, Law, Technology
I have practiced entertainment and technology law for over 30 years. More than any other area of the law, the developments and enhancements in technology have outpaced the law’s ability to take those developments and enhancements into account. I have written about this many times on this blawg, mostly in the area of copyright law.
Another area of cyber law that has been outpaced by technology is the area of tort liability for wrongs committed on the Internet. Specifically, cyber law has been affected by the ever expanding scope of immunity from tort liability afforded under Section 230 of the Federal Communications Decency Act, 47 U.S.C. § 230 (“CDA”). The CDA was enacted in 1996, primarily in an effort to control Internet pornography. While the anti-porn provisions of the CDA subsequently were struck down as unconstitutional, Section 230 remains the law of the land with respect to immunity provided to “interactive computer services.”
Section 230 of the CDA defines “interactive computer services” as “any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server, including services offered by libraries or education institutions.” The courts have interpreted this to mean all internet service providers (“ISPs”) and web hosts. Section 230 was enacted primarily as a legislative response to two court cases: Stratton Oakmont, Inc. v. Prodigy Services Co. (that had held that traditional common law publisher liability applied to ISPs for the defamatory statements posted by users on the ISPs site) and Cubby, Inc. v. CompuServe, Inc. (which similarly held that traditional distributor liability applied to defamatory statements posted in an online forum). Congress, recognizing that traditional publishers and distributors (who have the ability to pre-screen content before it is published) should not be treated like online hosting services (where posts are made by third parties in real time and really cannot be controlled by the publisher for content), effectively overturned the Stratton Oakmont and Cubby decisions. However, what started out as a statute to immunize ISPs from defamation liability has expanded greatly over the years to include a huge variety of torts.
The language of the statute appeared to be designed to address only defamation cases. Section 230 states that: “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” There is also a “Good Samaritan” provision that allows ISPs to block and screen offensive material without civil liability. Significantly, Section 230 states that it has no effect on intellectual property. As I’ve written in a previous blawg post, the Copyright Act was amended with the enactment of the Digital Millennium Copyright Act (“DMCA”), pursuant to which ISPs enjoy immunity from copyright infringement liability for third party postings that infringe another party’s copyright (provided that the ISP has the appropriate “take down” mechanism in place). What this effectively means is that ISPs still potentially have patent and, most especially, trademark liability for online postings by third parties. It is also important to note that both Section 230 and DMCA only immunize the ISP if the post was not made by the ISP itself.
While the language of Section 230 (and the legislative history for that statute) appears on its face to apply only to defamation liability, since its enactment nearly 20 years ago the courts have taken a much more expansive view of Section 230’s reach, especially over the last 10 years. It has been interpreted as granting ISPs immunity for a broad range of torts committed by online users (in addition to the tort of defamation), including tortious interference with contractual relations, violations of CAN-SPAM Act, Fair Housing Act violations and now even outright fraud. In a recent decision, GiveForward, Inc. v. Hodges, a Federal District Court ruled that Section 230 provided immunity to a crowdsourcing platform on which a user perpetrated a fraudulent campaign to raise funds for an allegedly sick child. The child’s mother (who was not part of the fraudulent campaign) argued that the crowdsourcing platform (i.e., the ISP for purposes of Section 230) should be liable for the fraudulent campaign. Part of her argument was that the ISP influenced the fraudulent post seeking the crowdsourced funds and was actually, therefore, a participant rather than a passive ISP. The crowdsourcing platform sought a declaratory judgment that it wasn’t liable for the fake fundraiser. The court agreed with the ISP and held that it was immune from fraud liability under Section 230 because, in the court’s view, it was not an active participant in the fraud.
The ISP had argued that, if the Section 230 immunity was viewed as not applicable to this situation, it would imply that all crowdsourced platforms would now have legal responsibility for every factual assertion made by their users, thus making any crowdsourcing campaign more costly and time-consuming. On the other hand, as asserted by counsel for the plaintiffs in this action: “This ruling stands for the precedent that a professional fundraiser…can use the CDA to shield itself from any state regulation or state-law based cause of action related to its professional fundraising activities by moving its fundraising activities to an online platform rather than a brick-and-mortar business.”
Will Congress clarify that Section 230 is to be limited to defamation claims, as opposed to the courts’ ever-expanding view of the scope of the immunity afforded? Only time will tell. In the meantime, you may start seeing more “online only” fundraising campaigns (as opposed to the telephone and mail solicitations that are so common now) in light of the expanded view of the immunity provided by Section 230.
Entertainment & Media, Law, Music
In a prior blawg post, I wrote about the then-recently filed case of Good Morning To You Productions Corp. v. Warner/Chappell Music, Inc., in which the issue was whether or not the song, Happy Birthday To You, is still protected by copyright. Specifically at issue were the lyrics to the song. As noted in my prior post, Good Morning To You Productions, which is working on a documentary film tentatively titled “Happy Birthday,” challenged the copyright now held by Warner/Chappell Music Inc., arguing that the song should be “dedicated to public use and in the public domain.”
After nearly two years of litigation, the court has ruled. U.S. District Judge George H. King determined the song’s original copyright, obtained by the Clayton F. Summy Co. from the song’s writers, only covered specific piano arrangements of the song and not its lyrics. The basic tune of the song, derived from another popular children’s song, “Good Morning to All,” has long been in the public domain and its status was not in dispute in the case.
The defendants in the case had argued that the lyrics to Happy Birthday to You were authored by Mildred and Patty Hill around the turn of last century and that the Hill sisters had held onto common law rights to the copyrights for several decades [note: common law copyright rights no longer exist under the new copyright law that is applicable to works first created after January 1, 1978 but did exist under the old 1909 Copyright Act]. The defendants then alleged that these common law rights were transferred to Summy Co., which published and registered them for a Federal copyright in 1935 (which, if true, would have meant that the copyrights could still exist today if the original 1935 registration was renewed after its first 28 year term ended in 1963).
The court, in a lengthy opinion, concluded that “[b]ecause Summy Co. never acquired the rights to the ‘Happy Birthday’ lyrics, defendants, as Summy Co.’s purported successors-in-interest, do not own a valid copyright in the Happy Birthday lyrics.” Further, the original authors of the lyrics never took any steps to prohibit others from using those lyrics, even as Happy Birthday to You became very popular and commercially valuable. Indeed, in 1934, some four decades after the alleged original date of composition of the melody to the song, the successors in interest to those rights finally asserted their rights to the melody but still made no copyright claim as to the lyrics. The court also said that the copyright registration itself (which only creates a presumption of the validity of the copyright) did not specifically state that the lyrics were the element being registered but, instead, it appeared that the registration was intended to cover the new piano arrangement of the song. In short, the court was not convinced that the lyrics ever were registered in 1935. The defendants claimed that this may have just have been a “mistake” in the registration and that the registration should have been afforded “the presumption of the validity of the registration for the entire work.” The court was not convinced.
In addition to seeking a declaration that the lyrics are in the public domain, the plaintiffs in the lawsuit also asked for monetary damages and restitution of more than $5 million in licensing fees it said that had been collected from thousands of people and groups who have paid to use the song over the years. The court has yet to rule on the damages issue.
So, the next time that you want to celebrate a friend’s or loved one’s birthday in public, feel free to sing Happy Birthday to You, original lyrics and all.
Entertainment & Media, Law
In a prior blawg post, I discussed the strange case involving British nature photographer, David Slater, and his claims of ownership over a photo “selfie” that had been “taken” by a monkey (the “Monkey Selfie”) and were uploaded to Wikipedia without his permission. In its defense, the Wikimedia Foundation (the owners of Wikipedia) refused to take down the Monkey Selfie, arguing that, since monkeys can’t hold copyrights, the images are in the public domain.
The Selfie in Question
Last week, People for the Ethical Treatment of Animals (“PETA”) decided to join the fray. It filed a Federal lawsuit claiming that the Monkey Selfie taken by the monkey (whom they have named in the suit as Naruto), came from a “series of purposeful and voluntary actions by Naruto, unaided by Slater” and, as such, “Naruto has the right to own and benefit from the copyright…in the same manner and to the same extent as any other.” PETA said it decided to file the lawsuit against Slater on behalf of the monkey because the monkey could not “due to inaccessibility and incapacity” and claimed jurisdiction in the US courts because Slater’s book was published in the US.
Not surprisingly, PETA’s Complaint asked the court to declare that Naruto, not Slater, is the author and owner of the copyright to the Monkey Selfie and to declare that Naruto is entitled to an award of damages.
I have been practicing law for over thirty years. I recognize (and frequently note in this blawg) that there are flaws and ambiguities in the US copyright statute. However, to claim that the term “author,” as used in the statute, applies to animals as well as humans, is just absurd. Nothing in the Copyright Act would suggest that it is intended to cover works created by anything other than a human being. While the Copyright Act does not specifically define the term “author,” that term is used in portions of the law and the context of such uses makes it clear that an author must be either a person or, in the case of a work made for hire, the person or legal entity (e.g., corporation, partnership, LLC) that engaged such person to create a work. For example, the term “anonymous work” is a “work on the copies…of which no natural person is identified as author.” A “joint work” is defined as a “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”
Clearly, the copyright law was not drafted to take into account the intentions of animals. Just as clearly, animals cannot “own” property. Even in cases of monetary disputes involving animals (such as the famous Leona Helmsley case in which she left $12 million in her estate to her pet dog), the animal is not the “owner” of the property but merely is a beneficiary of a guardianship set up to assure its care. The issue here has absolutely nothing to do with animal welfare. Instead, it is quite simply a case that is based on a farcical argument that animals are entitled to the same property ownership rights as are humans.
In another recent case, The People of the State of New York ex rel The Nonhuman Rights Project Inc., on Behalf of Tommy vs. Lavery, a New York appellate court rejected a lawsuit by the Nonhuman Rights Project (NhRP) to free a chimp named Tommy from captivity. The group had argued that the chimpanzee deserved the human right of bodily liberty. The court stated that chimpanzees, although cognitively complex, aren’t entitled to the same legal status as human beings. While the issue in the New York case did not involve property rights, it is illustrative of the law’s view of creating an equivalency between humans and animals under the law.
Even if PETA could successfully argue that the monkey is entitled to own property (and I certainly do not believe that is the case), PETA’s claims still must fail in this action. The original Monkey Selfie case involved the creation of a photo utilizing technology that allowed the picture to be taken remotely, but the copyright claim extended to the composition and setup of the photograph, not to the technical action of snapping the photograph. That is why the Slater court felt that Slater did own a copyright to the photograph even though the picture was “taken” by the monkey by virtue of its having pressed a button. In this case, PETA seems to be alleging that the mechanical act of snapping the photograph amounts to copyrightable expression created by the monkey—something that would not be considered to be copyrightable even if done by a human.
This case is another example of frivolous litigation that clogs the nation’s courts and lowers peoples’ view of the rule of law. It is, in a word, bananas. Hopefully the court will not allow PETA to make a monkey out of it in this process.
Entertainment & Media, Law, Music
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
