The Copyright Office published in the Federal Register new regulations for designating a registered agent under the Digital Millennium Copyright Act (DMCA). A copy of the Federal Register notice can be found here. The new regulations become effective on December 1, 2016.
Under the DMCA (17 U.S.C. § 512(c)), a safe harbor is created for service providers from claims for copyright infringement resulting from storage of material at the direction of users of the service, so long as the service provider meets certain criteria (e.g., no financial benefit directly attributable to the infringing activity) and complies with certain procedures (e.g., a notice and take down procedure where copyright owners may contact the service provider and demand the infringing content be removed).
One of the specific requirements for service providers to avail themselves of the safe harbor is to designate an agent to receive notices by copyright owners of copyright infringement under the DMCA. A service provider has to publish this agent's contact information and provide the agent's information to the Copyright Office to include in a directory so copyright owners can contact the service provider.
Previously, under the "interim" regulations (in place since 1998), service providers had to file a paper form and pay a one-time proscribed fee to the Copyright Office. The only time another fee had to be paid or another form had to be submitted was if the information changed (e.g., a different designated agent or another legal entity, such as a new subsidiary, being added to the designation).
There are a number of changes from the interim regulations. The proposed final regulations (codified at 37 C.F.R. § 201.38) require all new designations to be made electronically through the Copyright Office's website. In addition, the fees for registering have been dramatically reduced. Whereas the old system required $105 for an initial designation and $35 per group of 10 additional designations (for example subsidiaries or trade names were not covered by the initial registration), the new flat fee will be $6 per designation. In addition, and most importantly for clients, the designations only last three years and have to be renewed. Thus, it would be a good best practice to docket reminders for renewing your registrations, lest you inadvertently allow it to lapse and open yourself up to infringement challenges without a safe harbor defense.
Finally, for those clients that previously designated interim agents using the old paper filing, those designations will now expire on December 31, 2017. After that time, those grandfathered clients will have to re-register their designated agents through the new electronic filing system at the Copyright Office.
Andrews Kurth Kenyon is closely monitoring implementation of the new regulations. We have extensive experience working with the Copyright Office and in particular dealing with compliance under the DMCA.
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.
