United States: Ninth Circuit: Fair Use Diligence Is Precondition To DMCA Takedowns

The U.S. Court of Appeals for the Ninth Circuit this week issued a decision with implications for owners of music and audiovisual works. The court ruled that copyright owners first must assess whether a use of their content is in fact lawful "fair use" before sending a takedown notification under the Digital Millennium Copyright Act (DMCA). Considering fair use involves a balancing of subjective factors, this newly-clarified requirement may make it logistically more difficult and time consuming for content owners to evaluate whether a use of their content discovered online qualify for takedown notices.

DMCA Safe Harbor Background

The DMCA's "safe harbor" provisions (codified in Section 512 of the Copyright Act) shields qualifying "online service providers" who allow others to post content from monetary liability. YouTube, which does not exercise editorial control over videos posted by its users, is a classic example of the type of online service that benefits from the safe harbor. But for these safe harbor provisions, YouTube would probably struggle to stay in business.

To qualify for the safe harbor, a service provider first must designate a copyright agent (which requires the submission of a form and payment of a fee to the Copyright Office) and provide written notice about and adhere to a procedure mandated under Sec. 512 for responding to "takedown" demands from copyright owners. There are checks and balances built into the process intended to curb copyright owners from overreaching. These include a requirement in Copyright Act Section 512(c)(3)(A)(v) that a copyright owner's takedown notice include a "statement that the complaining party has a good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law." There are potential consequences for moving forward without a good faith belief—Section 512(f) provides that "Any person who knowingly misrepresents under this section-(1) that material or activity is infringing . . . shall be liable for any damages, including costs and attorneys' fees, incurred by the alleged infringer . . ."

The Lenz Decision Background

The facts underlying the decision are simple. Stephanie Lenz recorded a home movie of her toddler dancing to Prince's "Let's Go Crazy." Universal Music was representing Prince at the time, and employed a paralegal to regularly scour YouTube for infringing uses of Prince's music for purposes of sending DMCA takedown notices where merited. The authors observe that the song, which can be heard during 20 of the movie's 29 seconds, is relatively faint-sounding, functioning as background music for the toddler's head-bobbing antics. The audio quality and overall production quality of Lenz's movie was such that the movie obviously was not threatening in terms of impacting the market for Prince's song. Most would agree that the context of the usage was such that, even though the song was audible, it was non-infringing.

Universal sent a takedown notice to YouTube based upon the paralegal's conclusion that the use of the song was infringing. The notice listed some 200 videos, including Lenz's "Let's Go Crazy" video, and contained the required "good faith belief" as to the unlawfulness statement discussed above. Lenz in turn requested that the video be restored and, with the assistance of the Electronic Frontier Foundation as pro bono counsel, filed suit in the U.S. District Court for the Northern District of California alleging misrepresentation under Section 512(f). The parties filed cross-motions for summary judgment, which were each denied, resulting in the appeal.

Universal argued on appeal that while its procedures for reviewing others' use of its content online in making takedown notice determinations did not explicitly call for a fair use analysis, the review was tantamount to a consideration of fair use. The appeals court took the position, however, that whether the review sufficiently took into account fair use was a question for a jury.

Universal also argued that otherwise infringing uses that are ultimately deemed lawful as "fair use" are not "authorized by the law," but instead constitute impermissible conduct that is excused only after the fact by fair use as an affirmative defense. The court disagreed, citing Supreme Court precedent in Sony Corp. of Am. V. Universal City Studios, Inc. that fair use is a defense that establishes that the conduct was non-infringing in the first place, and is not an affirmative defense that excuses infringing conduct. As a consequence, under Lenz, a copyright owner like Universal needs to consider not just whether an online audiovisual posting that includes its copyrighted content is unauthorized, but must also consider whether the use qualifies as non-infringing fair use.

The next question the appeals court considered is whether Universal really had the subjective good faith belief that the dancing toddler video was infringing. The court observed that the statute includes no "reasonableness" standard—it merely requires inquiry as to the copyright owner's subjective belief. The court also pointed out that there need not be an investigation into whether the given use is a fair use. The copyright owner merely needs to form, in the course of its review, a subjective good faith belief that the accused use is not a fair use. The court observed that content owners have adopted the practice of using algorithms to search for infringing content, and did not speak unfavorably about the practice provided that the algorithmic analysis is used to identify more obvious infringements (e.g., where the video and audio tracks of the unauthorized online posting match those of the original work) and that human review is employed for the "minimal remaining content a computer program does not cull."

Implications for Content Owners

A more detailed review as to whether the content might, after all, qualify as non-infringing "fair use" involves a more subjective, fact intensive and time-consuming inquiry. Music publishing companies, movie studios, and other significant content owners send dozens and even hundreds of takedown notifications each day. Under Lenz, the costs and practical challenges associated with spending more time vetting potentially infringing content with the nebulous concept of fair use in mind may add up.

The Ninth Circuit in its decision acknowledged the practical burden that such a requirement will place on copyright owners, yet ruled based upon its plain reading of the law that fair use is use "authorized by the law" and must be taken into account by copyright owners when sending DMCA takedown notices.

Originally published September 17, 2015

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Womble Bond Dickinson
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Womble Bond Dickinson
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions