United States: Rethinking Fair Use In The DMCA Context

Last Updated: September 23 2015
Article by Mitchell A. Tuchman

On September 14, 2015, the Ninth Circuit Court of Appeals, ruling in Lenz v. Universal Music Group, 2015 U.S. App. LEXIS 16308 ("Lenz 2015"), affirmed the denial of the respective parties' motions for summary judgment. [*26]. In doing so, the court made a ruling regarding copyright fair use which should not have been surprising to those following the seven-year old case but based it on a reading of the Digital Millennium Copyright Act (the "DMCA") which has the potential for profoundly influencing the way courts decide fair use cases.

Back Story

"Baby Lenz" was 13 months old in February 2007, when his mother, Stephanie, an amateur videographer, filmed him bouncing happily in time—more or less—with Prince's recording of "Let's Go Crazy" (the "Song"). Something this adorable cried out for YouTube distribution, and Stephanie duly posted it with the title "Let's Go Crazy #1" (now available at https://www.youtube.com/watch?v=N1KfJHFWlhQ ). Several months later a Universal employee charged with monitoring YouTube for content infringing copyrights owned or administered by Universal happened upon the Lenz video, determined that it violated Universal's copyright in the Song, and included it, along with more than 200 others, in a DMCA takedown notice addressed to that Internet service provider. Lenz 2015 at [*6].

DMCA

The DMCA was a comprehensive augmentation of the Copyright Act, enacted in 1998, intended expressly to encompass within the broader Copyright Act, 17 U.S.C. § 101 et seq. (the "Act"), electronic reproduction, distribution, performance and display of copyrightable subject matter as well as digital rights management systems. Its manifold provisions are scattered throughout the Act, notably in § 512, entitled "Limitations on Liability Relating to Material Online." The beneficiaries of § 512 are not copyright owners themselves but Internet service providers (each an "ISP"), who, at the instigation of third parties, store materials and make them available online.

As long as an ISP automatically stores and transmits unmodified content at the direction of others and conforms with certain statutory takedown and restoration procedures, it enjoys immunity from claims of infringement. This is the so-called DMCA safe harbor.

Like the Roman god Janus, the DMCA takedown notice provision has a happy face and a sad one. The happy face is § 512(c)(3)(A)(v); the sad one is § 512(f). The former indicates that to be effective, a notice from a copyright owner to an ISP must include "[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." 17 U.S.C. § 512(c)(3)(A)(v) (emphasis added). The latter provides, among other things, that any person who knowingly materially misrepresents that the complained-of material or activity is infringing is liable for damages incurred by the alleged infringer injured by the misrepresentation. 17 U.S.C. § 512(f). Good faith is the sine qua non of an assertion of infringement. Misrepresentation, whether for reasons of convenience, competitive advantage or suppressing diagreeable speech—by way of example—is prohibited as an abuse of the extrajudicial DMCA takedown procedures.

Litigation

Litigation between Lenz and various Universal affiliates has been ongoing for more than seven years. Early on the District Court for the Northern District of California dismissed Lenz's request for a declaratory judgment that her posting of the Song was "self-evident noninfringing fair use." Lenz v. Universal Music Corp., 2008 U.S. Dist. LEXIS 44549 (2008) at [*15]. Whether or not Lenz's activity was fair use is no longer before the court.

Universal's takedown notice contained a pro forma § 512(c)(3)(A)(v) statement of Universal's good faith belief that Lenz's use of the Song was not authorized by the copyright owner, its agent, or the law. Lenz 2015 at [*7]. Lenz's only remaining claim is that this statement was a misrepresentation under § 512(f) because "given [Universal's] procedures for reviewing videos before requesting that they be removed, Universal could not have formed a good faith belief that Lenz's video did not constitute fair use." Lenz v. Universal Music Corp., 2013 U.S. Dist. LEXIS 9799 (2013) at [*11].

The Ninth Circuit Surprise

This is where the italics above come into play. Recall that § 512(c)(3)(A)(v) requires that a takedown notice contain "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." In other words, to be infringing a use must not be authorized by the copyright owner (here, Prince) or its agent (here, Universal) or the law.

Heretofore plaintiffs, defendants, their attorneys and courts have customarily maintained that fair use is an affirmative defense against a claim of infringement. In other words, before there could be a fair use, there had to be an alleged infringement, which fair use might excuse. Not so, says the Ninth Circuit: fair use is a use authorized by law. Lenz 2015 at [*11]. Despite decades of collective wisdom that stood for the proposition that fair use is an affirmative defense, not a right, the Ninth Circuit on September 14 said otherwise. "Fair use is not just excused by the law, it is wholly authorized by the law." Ibid. "Although the traditional approach is to view 'fair use' as an affirmative defense . . . it is better viewed as a right granted by the Copyright Act of 1976." ... [S]ince the passage of the 1976 Act, fair use should no longer be considered an infringement to be excused; instead it is a logical to view fair use as a right." Ibid. at [*13–14] (citations omitted).

As a Practical Matter

The Lenz decision is governing law in the western states that comprise the Ninth Circuit. Copyright owners nationwide, however, should not hesitate to ensure that their current practices conform with the longstanding requirements of § 512(c)(3)(A)(v). Admittedly, these burden copyright owners with precautionary measures before issuing takedown notices.

How great is that burden? The Ninth Circuit itself opines that "consideration of fair use need not be searching or intensive.... Lenz 2015 at [*18]. It need not prevent a copyright owner from responding rapidly to potential infringements. Ibid. at [*19]. Womble Carlyle intellectual property attorneys are available to assist you with right-sizing your efforts.

Your copyrights are valuable assets worthy of protection and enforcement. Here are some practical steps that owners of copyrights in any media can take to conform with the requirements of § 512(c)(3)(A)(v).

  • Knowing that the Internet swarms with infringing materials, be vigilant. The Lenz decision regarding fair use notwithstanding, a good faith belief that copyrighted materials are uploaded by third parties without authorization by their owners and agents remains a valid, if not sufficient, basis for takedown notices.
  • A copyright owner's options in the event that an ISP restores disputed materials subject to a putative infringer's counternotice include, among others, securing a court order restraining further infringing activity, 17 U.S.C. §512(c)(3)(g)(3)(D), or instituting a lawsuit for copyright infringement in federal court.
  • Adopt a policy of registering all mission-critical copyrights as soon as possible after the content has been expressed in a tangible medium or a medium accessible by use of a machine or other device.
  • Familiarize yourself with the exclusive rights of copyright owners, broadly defined at 17 U.S.C. § 106, and the applicable statutory exceptions and exemptions from the exclusive rights of copyright owners, particularly fair use.
  • Institute a procedure for complying with § 512(c)(3)(A)(v), commit that procedure to writing and ensure that the persons responsible for evaluating objectionable uses know and follow that procedure and document their compliance.
  • Fair use has been characterized repeatedly as among the thorniest issues for courts adjudicating copyright infringement matters. Seek advice from your intellectual property counsel when denying—or asserting—fair use.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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
 
In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.