United States: Part 1: Companies Are Not Complying With the Safe Harbor Provision of the DMCA

Last Updated: August 22 2019
Article by Craig L. Cupid

Introduction

The most recent changes to U.S. copyright rules driven by the Digital Millennium Copyright Act (DMCA) became effective on Dec. 1, 2016. However, a considerable time after the effective date, many companies have yet to fully comply with the rules outlined in 37 C.F.R. § 201.38 and 17 U.S.C. § 512. Companies should review the new and existing rules to ensure that they are in compliance.

Users of online service provider (OSP) platforms often post copyrighted materials to their accounts. There are rules that OSPs must follow in order to be shielded from liability when users post copyrighted material to the OSPs' platforms. If OSPs comply with the rules, they can escape liability by relying on the safe harbor provision in the DMCA. While additional requirements for hosting OSPs (e.g., Facebook or YouTube) and linking OSPs (e.g., Google Search) include notice and takedown and designating a copyright agent, all OSPs need to comply with the following requirements: 1) have a policy for terminating repeat infringers, 2) inform subscribers and account holders of the policy and 3) reasonably implement the policy.

Three rules associated with these requirements are recurring issues not being addressed by OSPs:

  1. OSPs must provide the Copyright Office with their full legal name, physical street address and any alternate names affiliated with the platform.
  2. OSPs must register a designated agent to receive copyright infringement notices. The rules require that the agent's full name, address, phone number and email be publicly accessible on the OSP's website and that the identical information be provided to the Copyright Office for display in its DMCA directory.
  3. OSPs must write, post and implement a repeat infringer policy to govern the takedown process for users who recurrently post copyrighted materials.

As simple as these requirements are, many OSPs are not in compliance. Courts have found alternate OSP names inadequate. Moreover, contact information for designated agents is not identical on the OSP's and Copyright Office's websites. In some cases, the agent's contact information provided by the OSP lacks any portion of the four requirements. In other cases, it is difficult to find the contact information for the designated agent at all on the OSP website. Some OSPs have simply not appointed an agent to the Copyright Office. Courts have found OSPs ineligible for safe harbor because of these discrepancies.

DESIGNATED AGENT ISSUES

Alternate Names

In 2015, the U.S. District Court for the Southern District of New York found Hollywood Fan Sites LLC (HFS) ineligible for safe harbor against a copyright claim brought by copyright holder BWP Media.

1 Hollywood Fan Sites failed to list a designated agent and instead attempted to rely on a designation provided by its parent entity, Hollywood.com. The court found that the Hollywood.com designation did not suffice because there was nothing in the parent designation that would suggest Hollywood.com used HFS as an alternative name. The court further suggested, as 37 C.F.R. § 201.38 stipulates, that a single designation may not cover corporate parents and subsidiaries that are considered separate service providers.

The court reasoned that copyright holders should not face difficulty identifying the correct DMCA agent. The court found that 17 U.S.C. § 512 did not shield providers whose entity is not in the Copyright Office directory, because parties searching for a provider's DMCA agent designation should not be expected to know the provider's corporate structure. Moreover, the court reiterated that the mandate of parallel contact information was clear. So, even though BWP was able to get in contact with HFS using the contact information on the HFS website and HFS subsequently took down the copyrighted material, HFS still had not complied with the provisions for safe harbor by submitting parallel contact information to the Copyright Office.

Nonidentical Agent Contact Information: What Is Substantial Compliance?

In BWP Media USA, Inc. v. Hollywood Fan Sites LLC, HFS was not protected from liability under the DMCA safe harbor provision because the court found it had no designated agent listed with the Copyright Office. At least three other OSPs were found ineligible for DMCA protection in California district courts for this very reason.2 Additionally, in Disney Enterprises, Inc. v. Hotfile Corp., Hotfile had designated an agent, but the court found that, the OSP could not receive safe harbor because, among other disqualifications, it did not list a physical address for its designated agent.3 These courts held strictly to what is required of OSPs by the DMCA.

Still, other courts have shown more leniency. In Wolk v. Kodak Imaging Network, Inc., the same court that decided BWP v. HFS found that Photobucket had substantially complied with providing contact information for a designated agent even though it lacked a name and phone number.4 Despite having only the physical address and e-mail for the designated agent, the court found that Photobucket "substantially complied" with the DMCA statute and therefore received the protections it provides. Even more tolerant of incomplete compliance, in BWP Media USA, Inc. v. T & S Software Associates Inc, the Fifth Circuit held that T & S Software was not liable for copyright infringement even though it never designated an agent, because it promptly removed BWP Media's copyrighted images when it became aware of them.5

These mixed opinions tell us that across the board, the case law is largely unsettled regarding what level of compliance is sufficient. One thing is for sure though – anything less than strict compliance risks liability.

Footnotes

1 BWP Media USA, Inc. v. Hollywood Fan Sites LLC, 115 F.Supp.3d 397, 404 (S.D.N.Y. 2015).

2Mavrix Photographs LLC v. Sandra Rose LLC, No. 2:15-cv-00596-CBM-AGR, 2016 WL 6246408 (C.D. Cal. Apr. 6, 2016); Rosen v. Imagevenue.com, No. 13-CV-01742-SJO-MAN, 2013 WL 12132052 (C.D. Cal. Nov. 26, 2013); Perfect 10, Inc. v. Rapidshare A.G., No. 09-CV-2596-H-WMC, 2010 WL 11509105 (S.D. Cal. May 18, 2010).

3 Disney Enters. Inc. v. Hotfile Corp., No. 11-20427-CIV, 2013 WL 6336286, at * 24 (S.D. Fla. Sept. 20, 2013).

4 Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724, 749 (S.D.N.Y. 2012).

5 BWP Media USA, Inc. v. T & S Software Assocs. Inc., 852 F.3d 436, 439 (5th Cir. 2017).

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.

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