The Irritating Discovery. A few months ago you and your law partners decided to get some new business by writing articles and case law summaries that you post to your firm’s Web site. So with all the due planning, discipline and investment, you’ve been plugging away, carefully crafting your materials which, by the way, are attracting some visitors to your site. Google and the other search engines favor the updated, topical content, and prospective clients are calling and saying they found you online. The countless hours of work are paying off. But unfortunately, not just for you and your firm.
Last night while surfing the Web, you ran across an article that looked familiar, but on a strange page littered with advertisements and sponsored links. You investigated a bit and soon realized why the content looks familiar – you wrote it. A couple more minutes of exploring revealed that you have been ripped off wholesale. The operator of this site has taken almost every piece of content posted on your firm’s site and has placed it on his own. And he is making money off of your material – a few pennies at a time – when visitors to his site click on those ads and sponsored links. What’s more, this fellow has infringed your copyright.
This morning you arrived at the office and asked your IT person for some help in tracking down the content thief. But the news isn’t all that encouraging. The infringer appears to be located in China, far beyond the jurisdiction of an American court or the practical reach of reasonable efforts to pursue him directly. But your IT guy does give you a piece of intriguing information – the infringing Web site is hosted on computer servers located in Arizona.
"I want this stuff down right away," you say to yourself. "So let’s go after this company that’s serving up the infringing content. We’ll get our TRO papers ready, and later we’ll get money damages."
Not so fast there, partner. We’re talking about the Internet here, and there is a special framework that applies. As it turns out, you’re probably going to like this framework, because it will give you quick relief without having to file for a temporary restraining order. And as legislative foresight would have it, this framework will also help protect this Arizona Web host from your – shall we say – zeal. This framework arises from the Digital Millennium Copyright Act ("DMCA"), with its "notice and takedown" and "safe harbor" provisions.1
The Rights at Stake. The law of copyright protects the owners of original works of authorship.2 Unlike other areas of intellectual property law which may protect methods and ideas, works that are protected by copyright must be "fixed in [a] tangible medium of expression."3 Among the types of works that come under the protection of copyright law are literary (i.e., text-based) works, musical works and sound recordings, visual works like photographs, and audiovisual works like motion pictures.4
The holder of a copyright has certain exclusive rights when it comes to the work at issue.5 For example, the copyright owner has the exclusive right to make and distribute copies of the work he or she owns. For some kinds of works, like audiovisual works, the owner has the exclusive right to publicly perform the work. Subject to certain exceptions such as fair use, when someone other than the copyright owner exercises one of these exclusive rights, infringement occurs.6
Copyright infringement commonly occurs on the Internet in a number of ways. For example, infringers copy text from one site and put it on another, often to build up ad revenue like in our introductory hypothetical. This is often done through automatic means, using "bots" to "scrape" and republish textual content. Photos are also a common subject of online copyright infringement, often committed unwittingly by a Web publisher using an image he or she got elsewhere online, erroneously thinking it is permissible to reuse freely. We’ve all heard about the purportedly "massive" online infringement of sound recordings, which have prompted numerous suits by the recording industry against purveyors of file sharing software7 and against individual accused infringers.8 And what discussion of online infringement would be complete without a mention of the huge, billion dollar lawsuit brought by Viacom against YouTube over its platform that facilitates sharing of audiovisual works.9
The Special Problem of Online Copyright Enforce-ment. The Internet presents certain challenges that did not exist for owners of copyrighted works in the pre-online era. With digital technology, one can make perfect copies of works like text, video and music, and with a broadband connection, that person can distribute those copies in innumerable quantities to recipients around the world. What used to require thousands of dollars worth of equipment, specialized training and a complex manufacturing facility can now be accomplished with just a few mouse clicks and simple software that comes pre-loaded onto most computers.
While modern technology has enhanced opportunities for creativity and permits more participation and collaboration in the form of user generated content, the ability to so easily develop and distribute copyrighted works online has created new headaches for copyright owners. There are many infringers copying and distributing many works. Going after every one of those individuals has its obvious practical difficulties. It’s hard to locate them. There may not be substantial damages to recover. And in the cases where there is liability, the infringer may be judgment proof. Moreover, there’s a certain probability (as in the introductory hypo) that the individual infringer is outside of the United States and thus beyond the reach of our court systems.
Is There Anyone Else to Blame? Given these difficulties, a copyright infringement plaintiff may look to recover from the provider of the services through which the infringing content is delivered. If that is the strategy, the plaintiff would put forth a theory of vicarious or contributory infringement on the part of the online service provider. An entity may be vicariously liable for the copyright infringement committed by another when that entity (1) has the right and ability to control the infringer’s actions and (2) receives a direct financial benefit from the infringement.10 Contributory liability arises when, "with the knowledge of the infringing activity, [an entity] induces, causes or materially contributes to the infringing conduct of another."11
But litigating cases like these has its own challenges. The elements of "secondary liability" causes of action require evidence that would normally be available only after significant discovery and the attendant passage of time. (Think, for a moment, how one would actually go about proving that an online service provider derived revenue directly from another’s infringing activity.) And in the meantime, while the parties pursue the expensive and complicated lawsuit, the infringing content may still be online if the court did not award preliminary injunctive relief.
Consider also the position of the online service provider in this context. Should a hosting company or a Web site that merely provides the platform for others to access and view or download content be required to be responsible for affirmatively policing its system to make sure there is no infringing content? How exactly, from a technological standpoint, would it do that? How would that online service provider determine what is infringing? And is it reasonable from an economic standpoint to subject the online service provider to so much litigation on the question of its liability for infringement committed by its users?
So there are various interests at play here. On one hand there are plaintiffs seeking quick relief, probably against an impecunious or faraway defendant. On the other hand there are the service providers who should (because they are able to quickly remove content that is purportedly infringing) perhaps get some leeway as a reward for being cooperative in that process.
Up Steps Congress. Congress recognized this interplay of interests and passed the Digital Millennium Copyright Act, which President Clinton signed on October 28, 1998.12 The DMCA contains a number of important provisions aimed at bringing the U.S. in compliance with certain treaty obligations. It also contains important provisions that deal with online service provider liability for copyright infringement committed by that provider’s users. We refer to these as the "notice and takedown" and "safe harbor" provisions.
The DMCA provides a mechanism for copyright owners whose rights are being infringed online to notify the service provider13 that copyright infringement is occurring. The DMCA also provides a "safe harbor" to service providers from liability for infringement committed by users of the service as long as certain criteria are met.14 Among these criteria is for the service provider to "act expeditiously" to remove or disable access to (i.e., take down) the material claimed to be infringing once it receives a valid notice.
Acting expeditiously is not the only thing a service provider must do in order to sail its ship into the DMCA safe harbor. It has to designate an agent to receive notifications of claimed infringement,15 and must make that designated agent’s contact information available through the service. (For Web sites seeking DMCA safe harbor protection, this information about the designated agent is usually found in the site’s terms of service.)
The service provider also needs to do certain things if it wishes to avoid liability to its user for having taken down that user’s content in response to a claim of copyright infringement by a third party.16 These requirements are often referred to as the "counternotification" or "putback provisions," the latter term intended to connote the reversal of a "takedown." Simply stated, a service provider has to notify its user that his or her content has been removed. The user can then dispute the claim of infringement, and the provider must put the material back online after a couple of weeks if the party who first claimed infringement does not file suit seeking injunctive relief in that time.17
Practical Use of the DMCA. The DMCA sets up an efficient system for moderating disputes over content posted online that infringes on the copyright owner’s rights. Firstly, the interests of the copyright owner are well served by the notice and takedown procedures provide a quick remedy which in many instances will be permanent. Secondly, the user of the service who uploaded the content is not without a right to be heard: that user can object to the notice and takedown, have the content put back, and seek relief for claims of infringement made in bad faith.18 Finally, and not unimportantly for the sake of the development of the Internet’s infrastructure, service providers are shielded from liability when they take the appropriate steps, which include the removal of claimed infringing content upon being notified of it.
So let’s go back to the situation we started out with, that of the pirated law firm articles. Going after the provider in Arizona with a copyright infringement suit right away will probably turn out to be a quick dead end, as most hosting companies do well in positioning themselves in the DMCA safe harbor. But that also means that one has the ability to get the content taken down fast, probably even quicker than by means of a TRO. Before running into court on some theory of secondary liability against the service provider, one is well-advised to go through the notice and takedown procedure. In a situation like the one in our hypothetical, it is unlikely that an infringer on the other side of the world will push back. Armed with a good faith intent to protect one’s rights, and a valid takedown notice, relief for online infringement may be economically had.
1 17 U.S.C. §512
2 17 U.S.C. §102(a)
5 17 U.S.C. §106
6 17 U.S.C. §501(a)
7 See, e.g., A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001); In re Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003); MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913; 125 S. Ct. 2764 (2005).
8 See, e.g., Virgin Records America, Inc. v. Thomas, No. 06-1497 (D. Minn.) (jury verdict of more than $200,000 against individual file-sharer in copyright infringement action brought by record companies).
9 Viacom Int’l Inc. v. YouTube, Inc., No. 07-2103 (S.D.N.Y) (pending).
10 Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 306 (2d Cir. 1963).
11 Religious Technology Ctr. V. Netcom On-line Comm. Servs. Inc., 907 F.Supp. 1361, 1373 (N.D. Cal. 1995).
12 Pub.L. 105-304.
13 For purposes of the present discussion, a "service provider" is "a provider of online services or network access, or the operator of facilities therefor." 17 U.S.C. §512(k).
14 These criteria are set forth in 17 U.S.C. §512(c)(1) and (2).
15 17 U.S.C. §512(c)(2)
16 17 U.S.C. §512(g). The concern of a service provider in the context of taking down content may be one of having breached its contract with its user.
17 17 U.S.C. §512(g)(2)(C).
18 17 U.S.C. §512(f).
Evan Brown lives in Aurora and is attorney in the Chicago office of Hinshaw & Culbertson LLP, practicing in the areas of intellectual property and technology law, and is also the author of the Internet Cases blog [http://www. internetcases.com], which tracks legal developments involving the Internet and new technologies. He is a graduate of the University of Denver College of Law (’00) and received his bachelor’s degree in philosophy at Wabash College (Crawfordsville, Indiana) (’97). He is a frequent public speaker on issues relating to law and technology, and has published numerous articles on those topics. He is licensed to practice law in both Illinois and Colorado. At Hinshaw, Evan handles both litigation and transactional matters, advising startups and established enterprises on issues relating to the distribution of content over the Internet, with special emphasis on technology licensing and acquisition, website development, prepublication review, domain name issues and compliance with the DMCA. He is a member of the firm’s Electronic Discovery Response Team, providing analysis and guidance in litigation matters involving the need for preservation and production of electronically stored information. Evan is the current Chairman of the Chicago Bar Association’s Cyberlaw and Data Privacy Committee, and is a member of the Chicago-Lincoln American Inn of Court.