DMCA

DMCA "Repeat Infringers": Scientology Critic’s Account Reinstated after Counter-Notification

Wendy Seltzer — Fri, 06 Jun 2008 11:30:26 -0400

The Scientology critic known as “Wise Beard Man” returned to YouTube this week after successfully filing counter-notifications to copyright claims that had earlier been made against his account. The takedown and delayed return illuminate another of the lesser-known shoals of the DMCA safe harbor, the 512(i)(1)(A) “repeat infringers” consideration.

As Mark Bunker, the critic, describes it, he had initially set up a YouTube account under the name XenuTV, where he posted clips including commentary on Scientology. Some of these clips came from other sources, and two of them attracted DMCA takedown requests from Viacom, for “Colbert Report” clips in which Stephen talked about Scientology. These might well have been fair use, or he might have chosen to remove them, but as Bunker says, “Before I could act on the takedown notices and remove the offending clips, the accounts were canceled.”

Bunker began using a second YouTube account, XenuTV1, posting only clips of entirely his own material. His advice to the “Anonymous” critics made him a sort of elder statesman to the movement, and his account attracted over 10,000 subscribed viewers.

In April, however, this second account was abruptly canceled. Apparently, YouTube had discovered that it was Mr. Bunker’s second, after a canceled first, and interpreted the DMCA to compel termination of this second account.

The provision they were invoking was 512(i)(1)(A), which sets some conditions for service provider eligibility for shelter in the DMCA safe harbor:

“The limitations on liability established by this section shall apply to a service provider only if the service provider—
(A) has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers”

Now the DMCA does not define “repeat infringers,” and no cases have yet done so, so it’s left to ISPs to determine how to do so. Copyright claimants urge that two takedown notices make someone a “repeat infringer” whose account must be terminated (let’s hope it’s just the account, and not the subscriber himself!). In contrast, noted copyright scholar and attorney David Nimmer suggests that the provision should be construed strictly, to require “repeat infringer” sanctions only against those who have more than once been found liable for copyright infringement after legal proceedings. Nimmer, Repeat Infringers, 52 J. Copyright Soc’y 167 (2005). Nimmer also notes that unless “repeat” is limited to the service at issue, all the major motion picture studios would be ineligible for online posting accounts, since all have had multiple copyright infringement judgments rendered against them. Nor does the DMCA define “appropriate circumstances" for account termination, so mitigating factors might well be raised against the termination of any particular account. The DMCA pre-condition is open to interpretation.

It appears, however, that YouTube determined that the two Viacom notices (Feb. 2, 2007, and Jan. 15, 2008) levied against Mr. Bunker’s XenuTV account marked him as a “repeat infringer.” Therefore, to maintain safe-harbor eligibility, YouTube felt compelled to terminate the second account, XenuTV1, upon recognizing that it was the same individual. Notwithstanding a complete absence of copyright claims against the XenuTV1 account, YouTube apparently concluded the risks of continuing to host the marked "repeat infringer" were too great.

Notably, 512(i) is a general precondition to the safe-harbor. Failure to “adopt[] and reasonably implement[]” a repeat infringers policy in one instance could be used against a provider as an argument to deny it the benefits of safe-harbor protection in an entirely unrelated case. YouTube’s risk calculation in responding to Mr. Bunker’s accounts, therefore, was not merely whether Viacom would sue over the Colbert clips Mr. Bunker had posted and YouTube removed, but whether entirely different copyright holders, complaining about other accounts’ postings, would invoke a failure to remove Mr. Bunker’s account as non-compliance with the DMCA's eligibility requirements and seek to hold YouTube liable for other users' infringements.

Mr. Bunker’s story concludes successfully, however, thanks in part to Viacom’s good sense. YouTube invited Mr. Bunker to file counter-notifications (form) for the Viacom clips, and he did so in mid-May, asserting that the “mistake or misidentification of the material” was in not recognizing its use as fair. Viacom’s acceptance of the counter-notifications allowed YouTube to remove the “infringer” stain from Mr. Bunker’s account. For his part, Mr. Bunker says he was supported in his counter-notifications by the public messages of support and group effort to contact YouTube and Viacom to lay the groundwork, including those of VictoireFlamel and The Masked Analyst, who has a series of videos explaining the DMCA and counter-notification. Bunker reports that Viacom’s attorneys said they “wouldn’t be hard-nosed about fair use clips.”

Ten to 14 days after the counter-notification, therefore, when Viacom did not go to court to press its original copyright infringement claims, YouTube allowed the XenuTV accounts’ reinstatement.

While Mr. Bunker's story ends happily for fair use, another story this week illustrates the danger of taking DMCA notifications as the mark of “repeat infringement”: University of Washington researchers reported getting DMCA takedowns against their laser printers, allegedly for sharing copies of “Iron Man” and “Indiana Jones.” MPAA agents sent DMCA notices without any verification that material was available from the accused IP addresses, much less that the materials infringed copyright. Meanwhile, universities report that they get DMCA takedowns alleging infringement by “shared folders” even when filters such Audible Magic make sharing impossible by blocking any transmission of files.

If the DMCA as a whole is to have any coherence, providers shouldn’t lose DMCA protection or subscribers lose their hosting based on such flimsy allegations.

Prince, Radiohead, and the Bootlegging Provision of the Copyright Act

Sam Bayard — Mon, 02 Jun 2008 18:59:23 -0400

Prince is at it again. We've covered his legal antics before -- his lawyers went after a number of fan sites last November, and Universal Music sent a takedown notice to YouTube last June over a video of a toddler dancing with "Let's Go Crazy" playing in the background. This time, his record label apparently sent a takedown notice to YouTube over a video of Prince performing a cover of Radiohead's "Creep" at the Coachella Valley Music & Arts Festival. The interesting thing is that Radiohead wants the video put back up. A copy is available at present, but it's hard to tell whether this is because someone else posted the video or because YouTube put it back up at Radiohead's request.

Untangling all the legal strings here is more difficult than it initially appears. At first, this looks like His Purpleness engaging in some flagrant DMCA abuse. Radiohead owns the copyright in the musical composition of "Creep," and the concertgoer probably owns the copyrights in his sound and video recording of the performance (anyone know the technical details on this?). But Prince may have some legal ground to stand on.

Section 1101 of the Copyright Act, 17 U.S.C. § 1101, states that anyone who "fixes the sounds or sounds and images of a live musical performance . . . shall be subject to the remedies provided in sections 502 through 505, to the same extent as an infringer of copyright." It also applies to anyone who "distributes or offers to distribute . . . or traffics in any copy or phonorecord fixed as described [above]." The person who made the unauthorized video pretty clearly violated the first part of this anti-bootlegging provision, and Prince has a non-frivolous argument that YouTube is violating the second part by "distribut[ing]" or "traffic[king]" in the unauthorized recording. This is not something YouTube would want to take lightly.

Exactly how section 1101 fits with the rest of the Copyright Act is not altogether clear. It just says that a violator will be subject to the remedies in sections 502 through 505. These are the ordinary remedies that a plaintiff can obtain in a successful infringement lawsuit -- an injunction (17 U.S.C. § 502), impounding of infringing articles (17 U.S.C. § 503), damages and profits (17 U.S.C. § 504), and costs and attorneys fees (17 U.S.C. § 505). It does not make unauthorized fixation equivalent to copyright infringement, and it does not give the performer copyrights in the performance. Most importantly, a plain reading of the statute suggests that section 1101 doesn't fit within the notice-and-takedown procedure found in section 512 of the DMCA, 17 U.S.C. § 512. Specifically, it doesn't look like a violation of section 1101 is a basis for sending a "notification of claimed infringement," or that Prince is "authorized to act on behalf of the owner of an exclusive right that is allegedly infringed." 17 U.S.C. § 512(c)(3) (emphasis added). For more detailed information about the notice-and-takedown procedure, see our legal guide section on Notice-and-Takedown.

So, Prince's objection to the video may not be as flimsy as it initially seemed, but sending a DMCA takedown is technically the wrong approach to deal with it under the circumstances. Of course, an old-fashioned cease-and-desist letter laying out the section 1101 claim would be entirely justifiable from a legal -- if not from a public relations -- point of view. It's hard to make a call without seeing what exactly Prince's lawyers sent to YouTube in the first place. In any event, YouTube's lawyers truly are stuck between the horns of a dilemma on this one.

Air Force DMCA-Bombs YouTubed Ad

Wendy Seltzer — Sat, 08 Mar 2008 10:24:38 -0500

Over at Wired's Threat Level blog, Kevin Poulsen reports on a new DMCA overreach: the U.S. Air Force complained (via outside counsel) about his posting of their recruiting video. The post, Poulsen says, was initially made at the Air Force's invitation.

If the government created this work, then the DMCA claim is improper. Works of the U.S. government are not copyrightable. But the statute allows the government to receive copyright assignments, so if an independent contractor created the video, still available at the Air Force's (non .mil) site, the government could meet that technical requisite of the DMCA.

The DMCA also requires that the notifier assert the posting was unauthorized. Poulsen's article, however, says the Air Force sent Wired the ad and "thanked THREAT LEVEL for agreeing to run it." That doesn't quite square with the DMCA-required statement that the notice-sender "ha[s] a good faith belief that none of the materials or activities listed above has been authorized by the U.S. Air Force, its agents, or the law."

Even if the Air Force's DMCA claim is truthful, however, it's still a policy overreach. Wired posted the video in order to report on government recruiting efforts; the video's dissemination is part of that First-Amendment protected discussion, whether it happens on or off government websites. The DMCA makes it too easy to takedown first, think later.

YouTube Removes “Shred” Parody Videos; WIRED Puts Them Back Up

Matt C. Sanchez — Fri, 29 Feb 2008 09:47:52 -0500

Earlier this month, some of the most creative and entertaining parody videos on the Web were pulled from YouTube over dubious copyright claims. The disputed works, known as the “shred” videos, are a series of parodies in which Finnish media artist Santeri Ojala overdubs performances of legendary guitarists such as Steve Vai, Carlos Santana, and Eric Clapton. Ojala replaces the audio tracks of the guitarists' performances with his own (intentionally) bad guitar playing.

Because Ojala is a skilled guitar player himself, the horrific sounds match closely with the guitar hero's hand and finger movements, which makes the videos that much more surreal. Other rock stars unwary enough to enter the screen during the guitarists' performances get similar treatment – in one notable clip, Ozzy Osbourne's clapping to the beat is reduced to a rhythmless patter that wouldn't have cut it in a backyard birthday celebration, much less a rock show.

The juxtaposition of the guitarists' rock-star stage antics and “rockin” facial expressions with Ojala's amateurish noodling was humorous and well-executed enough to warrant attention from WIRED, Guitar Player magazine, and the Jimmy Kimmel Live! television show, among others. Guns N' Roses guitarist Slash, who was a guest on the same episode of Jimmy Kimmel's show, jammed with Ojala after Ojala performed a live parody of a Slash concert video on the show.

In January or February, YouTube recieved three complaints regarding the videos, which appear to have come from artists that Ojala had parodied. In response, YouTube took down the videos and disabled Ojala's account. According to Listening Post, a WIRED.com blog, YouTube's parent company Google has a policy of disabling accounts that have "multiple copyright infringement claims filed against them." At this point Ojala has not taken action to reinstate his account; Listening Post quotes Google as saying that this would require that Ojala "hire a lawyer and appeal the artists' infringement claims."

This situation highlights one of the problems with the DMCA takedown notice framework, especially as it pertains to foreign content creators such as Ojala. These videos are clear examples of parody, which means that Ojala would have a strong fair use defense to the guitarists' copyright claims. If Ojala had sent a counter-notice asking that the videos be put back up pursuant to 17 U.S.C. § 512(g), YouTube would have been legally required to do so – at least in order to stay in the safe harbor against wrongful takedown liability – and it is unlikely that the guitarists would have prevailed if they would have pursued a claim in federal court. It's even likely that the guitarists wouldn't have pursued a claim at all. In order to send a counter-notice, however, Ojala would have had to agree to the jurisdiction of the federal district court in the district where YouTube is located. Ojala also would have had to agree to accept service of process from the person who sent the original copyright complaint (see 17 U.S.C. § 512(g)(3)(D). Without a voluntarily agreement, such as automatic consent under the DMCA, there would probably be no way to sue Ojala in the U.S. for copyright infringement.

This puts Ojala in a dilemma. He cannot get his content put back up without sending a counter-notice, and he can't send a counter-notice without placing himself at the mercy of the U.S. court system. For Ojala, a native of Finland, you can be sure this is not an attractive prospect. While the DMCA theoretically allows us to take a stand for free speech, it is unrealistic to expect this to offer much solace to U.S.-based content creators who can't afford to defend a case in federal court and foreign content creators like Ojala who don't want to submit to the jurisdiction of a U.S. court, which necessarily involves significant if not crippling costs and inconvenience.

Thankfully, there are others who are willing to take a stand for Ojala's speech rights. WIRED blog Underwire – which along with Listening Post has covered the situation in a number of posts – has put up copies of several of the shred videos. The videos are hosted at WIRED.com, rather than YouTube, and thus are safe from removal so long as WIRED is willing to stand behind Ojala.

It remains to be seen whether YouTube ever will reactivate Ojala's account or whether the shred videos will result in liability for Ojala. For now, Ojala still is making new and increasingly complex shred videos, as can be seen on his website.

(Matt C. Sanchez is a second-year law student at Harvard Law School and the CMLP's Legal Threats Editor.)

Primer on Copyright Liability and Fair Use

CMLP Staff — Thu, 24 Jan 2008 23:49:38 -0500

As a lead up to the launch of the Citizen Media Law Project's Legal Guide later this month, we are putting up longer, substantive blog posts on various subjects covered in the guide. This post is the second in our series of legal primers. The first addressed the subject of immunity and liability for third-party content under section 230 of the Communications Decency Act. In this post we discuss copyright and fair use in the context of citizen media.

I. COPYRIGHT PROTECTION AND FAIR USE

A broad array of creative, expressive media are subject to copyright protection, including literature, photographs, music compositions and recordings, films, paintings and sculptures, and news articles – any “original work of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102. Citizen media creators who use the works of others need to be careful that they do not open themselves to copyright liability when doing so.

Fortunately, there are several circumstances in which the work of others may be used without liability. Bare facts and ideas, government documents, and items in the public domain are not subject to copyright, and some materials may be published under a Creative Commons license or other license that permits reuse. In addition, the doctrine of fair use provides that copyrighted materials may be used without the consent of the original owner in certain situations, such as when using excerpts for criticism or news reporting.

A. What can be copyrighted?

Because only creative expression, not facts or ideas, may be copyrighted, you can typically use bare factual information found in other sources without liability. There are some situations in which a compilation of facts may be protected if the creator of the original publication selected, coordinated, or arranged the facts in an original way. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344 (1991). However, in these situations the raw facts may still be copied at will. If you copy historical facts, current events, or other ideas and facts from another resource, you should be careful not to copy the method of expression in the original source.

It is also worth noting that linking to copyrighted material will not subject you to copyright liability. Courts have consistently held that no copying is involved in the act of hyperlinking. See Ticketmaster Corp. v. Tickets.com, Inc., 2000 U.S. Dist. LEXIS 4553 (C.D. Cal. 2000). Although some websites may try and prohibit 'deep linking' (i.e., linking to a page within a website other than the home page), these prohibitions are not legally enforceable.

In addition, works by the U.S. Government are not copyrightable, 17 U.S.C. § 105, which includes "work prepared by an officer or employee of the United States Government as part of that person's official duties." 17 U.S.C. § 101. Thus, not only may you freely copy documents and other material produced by the federal government, but also the texts of speeches by government officials made in their official capacities.

B. Fair Use

The policy behind copyright protection is aimed not at the rights of those who produce content, but at the "promotion of the sciences and the useful arts." Because allowing authors to enforce their copyrights in all cases would actually hamper this end, the fair use doctrine was adopted to permit uses of copyrighted materials that are considered to be beneficial to society, many of which are also entitled to First Amendment protection.

Fair use will not permit you to merely copy another’s work and profit from it, but when your use contributes to society by continuing the public discourse or creating a new work in the process, fair use might come into play. Fair use thus has its origins in both the First Amendment and the general policies regarding creative endeavors that form the basis of the copyright code.

Fair use, which is now a part of the Copyright Act itself, is defined in the Act as follows:

[T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include--

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Unfortunately, there is no clear formula that you can use to determine the boundaries of fair use. Instead, a court will weigh these four factors holistically in order to determine whether the use in question is a fair use.

In order for you to assess whether your use of another's copyrighted work will be permitted, you will need an understanding of why fair use applies, and how courts interpret each part of the test.

1. Purpose and Character of Your Use

If you use another's copyrighted work for the purpose of criticism, news reporting, or commentary, this use will weigh in favor of fair use. See Campbell v. Acuff-Rose Music, 510 U.S. 569, 578 (1994). Purposes such as these are often considered "in the public interest" and are favored by the courts over uses that merely seek to profit from another’s work. Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1203 (N.D. Cal. 2004). When you put copyrighted material to new use, this furthers the goal of copyright to "promote the sciences and the arts."

In evaluating the purpose and character of your use, a court will look to whether the new work you've created is "transformative" and adds a new meaning or message. To be transformative, a use must add to the original "with a further purpose or different character, altering the first with new expression, meaning, or message." Campbell, 510 U.S. at 579. Although transformative use is not absolutely necessary, the more transformative your use is, the less you will have to show on the remaining three factors.

Courts originally presumed that if your use was commercial it was an unfair exploitation. Court later abandoned that assumption because many of the enumerated purposes (such as news reporting) are conducted for profit. Although the commercial nature of the use is still part of the analysis, courts will look to the degree to which it is commercial and will not disfavor a transformative use merely because it makes a profit. Accordingly, the presence of advertising on a website would not, in of itself, doom one’s claim to fair use.

If you merely reprint or repost a copyrighted work without anything more, however, it is less likely to qualify for protection under this prong. If you include additional text, audio, or video that comments or expands on the original material, this will enhance your claim of fair use. In addition, if you use the original work in order to create a parody this may qualify as fair use even without commentary directed toward the original work.

Moreover, if the original work or your use of it has news value, this can also increase the likelihood that your use is a fair use. Although there is no particular legal doctrine specifying how this is weighed, several court opinions have cited the newsworthiness of the work in question when finding in favor of fair use. See, e.g., Diebold, 337 F. Supp. at 1203 (concluding "[i]t is hard to imagine a subject the discussion of which could be more in the public’s interest”), Norse v. Henry Holt & Co., 847 F. Supp. 142, 147 (N.D. Cal. 1994) (noting "the public benefits from the additional knowledge that Morgan provides about William Burroughs and other writers of the same era").

2. Nature of the Copyrighted Work

In examining this factor, a court will look to whether the material you have used is factual or creative, and whether it is published or unpublished. Although non-fiction works such as biographies and news articles are protected by copyright law, their factual nature means that one may “rely more heavily” on these items and still enjoy the protections of fair use. Unlike factual works, fictional works are typically given greater protection in a fair use analysis. However, this question is not dispositive, and courts have found fair use of fictional works in some of the pivotal cases on the subject. See, e.g., Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 456 (1984).

The published or unpublished nature of the original work is only a determining factor in a narrow class of cases. In 1992, Congress amended the Copyright Act to add that fair use may apply to unpublished works. See 17 U.S.C. § 107. This distinction remains mostly to protect the secrecy of works that are on their way to publication. Therefore, the nature of the copyrighted work is often a small part of the fair use analysis, which is more often determined by looking at the remaining three prongs.

3. Amount and Substantiality of the Portion Used

Unfortunately, there is no single guide that definitively states how much of a copyrighted work you can use without copyright liability. Instead, courts look to how such excerpts were used and what their relation was to the whole work. If the excerpt in question diminishes the value of the original or embodies a substantial part of the efforts of the author, even an excerpt may constitute an infringing use.

If you limit your use of copyrighted text, video, or other materials to only the portion that is necessary to accomplish your purpose or convey your message, it will increase the likelihood that a court will find your use is a fair use.

Of course, if you are reviewing a book or movie, you will need to reprint portions of the copyrighted work in the course of reviewing it. Even substantial quotations may qualify as fair use in "a review of a published work or a news account of a speech that had been delivered to the public or disseminated to the press" Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 564 (1985). However, substantial quotations from non-public sources or unpublished works do not enjoy the same protections. Id.

4. The Effect of Your Use Upon the Potential Market for the Copyrighted Work

In examining the fourth factor, which courts tend to view as the most important factor, a court will look to see how much the market value of the copyrighted work is affected by the use in question. This factor will weigh in favor of the copyright holder if “unrestricted and widespread” use similar to the one in question would have a “substantially adverse impact” on the potential market for the work.

Although the copyright holder need not have established a market for the work beforehand, he or she must demonstrate that the market is "traditional, reasonable, or likely to be developed." Ringgold v. Black Entertainment TV, 126 F.3d 70, 81 (2d Cir. 1997). An actual effect on the number of licensing requests need not be shown. The fact that the original work was distributed for free, however, may weigh against a finding that the work had publication value. See Nunez v. Caribbean Int'l News Corp., 235 F.3d 18, 25 (1st Cir. 2000). Likewise, the fact that the source is out of print or no longer sold will also weigh in favor of fair use.

The analysis under this factor will also depend on the nature of the original work; the author of a popular blog or website may argue that there was an established market since some such authors have been given contracts to turn their works into books. Therefore, a finding of fair use may hinge on the nature of the circulated work; simple e-mails such as those in Diebold are unlikely to have a market, while blog posts and other creative content may fit the mold of those turned into published books or otherwise sold. In addition, the author of a work not available online, or available only through a paid subscription, may argue that the use in question will hurt the potential market value of such work on the Internet.

Assessing the impact on a copyrighted work’s market value often interplays with the third factor because the portion of the work used will often determine how much value remains. For instance, the publication of five lines from a 100 page epic poem will be treated differently than the publication of the entirety of a five-line poem.

This fourth factor is concerned only with the remaining value in the copyrighted work itself; the fact that the use may otherwise financially harm the copyright holder (such as negative publicity) is not part of the analysis. Diebold, 337 F. Supp. 2d at 1203; see also Campbell, 510 U.S. at 591-92 (“[W]hen a lethal parody. . . kills demand for the original, it does not produce a harm cognizable under the Copyright Act.”). The fact that the use being challenged creates or improves the market for the original work will likewise favor a finding for fair use on this prong. See Nunez, 235 F.3d at 25 (finding fair use when the publication of nude photos actually stirred the controversy that created their market value and there was no evidence that the market existed beforehand).

C. Publishing the Contents of Factual Research

As previously mentioned, you may make use of the facts you draw from research reports without violating the copyright of the author. As long as you do not copy the creative expression of those ideas or the specific arrangement of the facts, fair use need not even apply since those aspects of the report are not copyrightable. Research reports created by the U.S. Government, including those of Congress and executive agencies, are also in the public domain.

Moreover, fair use may also protect your use of even copyrighted materials in research reports. For example, quotes from research reports that are used for news reporting may be used if the factors discussed above indicate fair use.

D. Publishing the Contents of Private Letters and E-Mail (including letters from lawyers threatening legal action)

Fair use may protect the publication of the content of private letters and e-mail, including communications from lawyers threatening legal action. As mentioned above, unpublished materials sometimes enjoy greater protection than published documents. Although an author may argue that the "unpublished" nature of his or her correspondence warrants a finding against fair use, such an argument carries weight only when the use involves a heretofore secret work “on its way” to publication.

Recently, two students at Swarthmore college posted an e-mail archive of internal e-mails among Diebold employees; an online newspaper linked to the archive in an article critical of Diebold’s voting machines. A court held that although the letters were not published, they were nonetheless protected by fair use. Diebold, 337 F. Supp. 2d at 1203. Applying the four fair use factors, the court found the fourth factor entirely lacking because Diebold had no intention of selling the archive for profit, they were not denied any value when it was published online. The court also noted the students and newspaper use was intended to support criticism of the company, which was a transformative use under the first factor.

II. DIGITAL MILLENNIUM COPYRIGHT ACT

Even when you have a strong argument that your use of another's copyrighted work is a fair use, you may still find that your hosting provider has taken down your material in response to a "cease and desist" letter sent by someone claiming copyright infringement. The Digital Millennium Copyright Act (DMCA) provides that Internet Service Providers (ISP) or Online Service Providers (OSP) that take down material in response to such a claim do not face liability themselves for copyright violations. 17 U.S.C. § 512(a). Although the DMCA does not impose automatic liability on service providers that do not take down allegedly infringing materials, litigation-averse companies may routinely take down material upon receipt of such a notice to stay within the DMCA’s safe harbor.

To prevent misuse of this procedure, the DMCA provides penalties for copyright holders if they "knowingly and materially" misrepresent that copyright infringement has occurred. 17 U.S.C. § 512(f).

In the Diebold case discussed above, the students and newspaper filed an action under this provision of the DMCA. When Diebold sent cease and desist letters to their hosting providers, the students and newspaper filed a lawsuit, alleging that because there was no possible copyright protection for the e-mail archive, Diebold’s letters contained “material misrepresentations.” The court agreed and held that Diebold's use of the DMCA's take-down procedure was improper, finding that some materials in the archive were not copyrightable content and that the student and newspaper's use of copyrighted material was a fair use. Diebold, 337 F. Supp. 2d at 1198.

III. THE IMPACT OF WIDESPREAD PUBLIC DISSEMINATION ON COPYRIGHT

A copyrighted work cannot enter the public domain through widespread distribution. A work enters the public domain when the copyright expires, usually 70 years after the author’s death. 17 U.S.C. § 302. No actions by third parties can end the copyright protection of a particular work (although the author herself can disclaim copyright).

Wide distribution of a copyrighted work may, in some cases, strengthen a claim of fair use. If such circulation was done without the copyright holder's permission, however, it will not support a finding of fair use. Nevertheless, if the copyright holder widely posted the work in question, this may indicate that a subsequent use of the work is a fair use. For example, wide posting by the author herself may weaken the argument that the infringing use hurt the market value.

IV. CONCLUSION

While there is no definitive test for determining whether your use of another's copyrighted work is a fair use, there are several things you can do to minimize your risk of copyright liability:

Use only as much of the copyrighted work as is necessary to accomplish your purpose or convey your message;

Use the work in such a way that it is clear that your purpose is commentary, news reporting, or criticism;

Add something new or beneficial (don't just copy it -- improve it!);

If your source is nonfiction, limit your copying to the facts and data; and

Seek out Creative Commons or other freely licensed works when such substitutions can be made and respect the attribution requests in those works.

Mashups, DVD Ripping, and Fair Use

Sam Bayard — Wed, 23 Jan 2008 11:09:31 -0500

Chris Soghoian at CNET Blogs published an interesting post yesterday -- Did Slate violate copyright law? It talks about a hilarious mashup video that Slate posted a few days ago called Hillary's Inner Tracy Flick, which juxtaposes images from the 1999 film Election and current footage of presidential hopeful Hillary Clinton. The mashup plays on the earnestness and ambition shared by Hillary and Reese Witherspoon's character in the movie -- Tracy Flick, a hyper-driven high school student seeking election as class president.

The clip is made up completely of preexisting footage, but it manages to pull off something novel, funny, and politically poignant. As Cynthia Brumfeld writes on IP Democracy:

Nothing in this video is 'original' although the video itself is without a doubt a work of originality and creativity. It also brilliantly makes a political point.

Brumfeld's post is worth reading in its entirety; it uses the Slate mashup to contrast the differing views on fair use held by ubiquitous Columbia law professor Tim Wu and NBC counsel Rick Cotton, as found in the excellent online debate on remixing and fair use published in the New York Bits Blog last week (another must read). I believe, and Wu and Brumfeld would agree, that the Slate mashup is a fair use because it is clearly transformative and it adds value to the original rather than substituting for it.

But let's get back to Chris Soghoian. He makes a simple and incisive point. Forget about fair use, he says, because it's clear that whoever made the Slate video must have ripped the movie footage from a DVD. That means that the mashup maker must have circumvented the DRM on the DVD (probably using DeCSS or something like it) and must therefore have violated 17 U.S.C. § 1201(a), which prohibits "circumvent[ion] of a technological measure that effectively controls access to a work protected [by copyright]."

Soghoian's post is useful because it points out a key aspect of section 1201: the "anti-circumvention" provisions of the DMCA pay no mind to fair use. That is, it does not matter a fig whether you want to put the locked-up material to a fair or an unfair use, the violation is in circumventing the DRM, not in any alleged infringement of copyright. The Slate video provides a concrete example of why this is a problem: It is wrong-headed from a policy perspective that the simple technological steps necessary to create this hysterical mashup, which itself is likely a fair use under copyright law, could subject its creator to liabiity.

So far, no Hollywood lawyers have come threatening a lawsuit (at least not that I am aware of). This is undoubtedly a good PR move on the part of the studios. Soghoian appears to relish the idea of a confrontation, in the hope that public outrcry could precipitate an overhaul to the DMCA. I hope that the clip stays up; I'm not so optimistic about the prospects of copyright reform these days.

Here Comes Another Takedown

Wendy Seltzer — Fri, 21 Dec 2007 11:56:59 -0500

Earlier this month, comedy group The Richter Scales released a funny music video, "Here Comes Another Bubble." The video showed a montage of Silicon Valley images over a sound-track adapted from Billy Joel's "We Didn't Start the Fire," lampooning the Web 2.0 bubble that seems near bursting again. The video must have touched a nerve, as well as a funny bone, because it got wide linkage and discussion and became the week's top-rated video.

Then, it was removed from YouTube, "due to a copyright claim by a third party."

Photographer Lane Hartwell says she objected to use of her photograph of Valleywag's Owen Thomas, so she sent a DMCA takedown notice to YouTube. Hartwell says she owns copyright in the image and did not license its use. In response, YouTube appears to have disabled the video pursuant to its copyright policy (perplexingly, it did not identify the "third party" sender of the complaint.)

Now, the video is back, in a revised version that omits Hartwell's photograph.

To me, the original situation seems to lie near the blurry edge of copyright's fair use exception. The Richter Scales would argue that their use was "transformative," using the photograph to comment on the bubbly scene the photographer chose to depict; commentators on Silicon Valley foibles might be unable to get permission for photos used to skewer the establishment. Hartwell, by contrast, tells us that "Photography is my livelihood. It’s how I pay my bills. I’m not treating the band any differently than any other group that uses my work without my permission." She sells or licenses her work to magazines and others who want to use photo illustrations, and sees no reason to treat the Richter Scales differently.

Is the momentary use of Hartwell's photo an unfair substitute for something she should have had the right to license, or a fair use the law should license irrespective of the copyright holder's wishes? I'd be inclined to find the use fair, as transformative commentary, but I couldn't guarantee that a court would agree with me.

The DMCA harbors no such ambiguity, however. The moment someone claims an infringement, the law encourages the service provider to act "expeditiously" to remove the offending material. The strict penalties in copyright's "property rule" nature support that response: One who can prove copyright infringement can often get both an injunction and stiff statutory damages. Acting individually, the parties might stand firm or be pushed by the costs of legal uncertainty to settle their differences, but the service provider in the middle changes the calculus.

The intermediary service provider rarely wants to risk outsize damages or get into negotiations with copyright claimants and small content-posters, and so tends to take down rather than face even a remote chance of liability. If, on the other hand, intermediaries' secondary liability were limited as it is for defamation, content creators would be freer to make and defend fair use arguments. A liability rule or compulsory license, enforcing rights through payment rather than removal, could leave these items in the public view.

Absent copyright reform, we're stuck with the likelihood that clever montages -- which depend on pulling content from many sources -- get popped even more quickly than tech bubbles.

Court Rejects Bid to Use DMCA to Bypass First Amendment Protection for Anonymous Speech

Sam Bayard — Mon, 17 Dec 2007 14:34:48 -0500

This weekend I came accross a recent case, In re Subpoena Issued Pursuant to the Digital Millennium Copyright Act to: 43SB.COM, LLC, 2007 WL 4335441 (D. Idaho Dec. 7, 2007). The decision came down earlier this month, but I hadn't read anything about it until now, which is surpising because it is a veritable smörgåsbord of some of our favorite topics -- anonymity, the Digital Millennium Copyright Act (DMCA), and lawyers threatening to sue for copyright infringement of their cease-and-desist letters. The case provides a clear example of a party attempting to use the controversial "administrative subpoena" provision of the DMCA (found at 17 U.S.C § 512(h)) to circumvent the safeguards imposed by courts before ordering disclosure of the identity of an anonymous poster in defamation cases. Fortunately, the federal district court in Idaho rejected this gambit, although overall its decision leaves something to be desired. Here's the background:

43rd State Blues: Democracy for Idaho describes itself as a "website of, by and for Democrats and those who lean towards Democratic, progressive causes." The website offers what it calls a "team blog" service -- users who register for an account can maintain their own personal blog on the site. One of the site's users, going by the pseudonym "Tom Paine," published a post in early April 2007 about Melaleuca, Inc. and its CEO Frank VanderSloot. VanderSloot and Melaleuca objected to the post, which, according to court documents, discussed rumors about questionable payments made to a US Senator. On April 6, counsel for Melaleuca sent a cease-and-desist letter to an individual believed to be the administrator of 43rd State Blues, claiming that the post was defamatory and demanding its removal within 24 hours. The next day, an anonymous individual with the user name "d2" posted the cease-and-desist letter on the website.

In late April, Melaleuca sent a DMCA takedown notice to the hosting provider for 43rd State Blues, demanding that the hosting provider remove the April 6 cease-and-desist letter from the website. The hosting provider complied, but Melaleuca was not content to stop there. It served administrative subpoenas issued pursuant to section 512(h) of the DMCA first on the hosting provider, and then on the "reseller" of the account associated with 43rd State Blues. These subpoenas asked for documents and information identitying "those persons who posted the infringing content identified in the Take-Down Notice [sent to the hosting provider], including but not limited to those persons using or associated with the screen names 'd2' or 'Tom Paine' as found at the website 43rdstateblues.com." The hosting provider informed Melaleuca that it had no information other than the name of the reseller of the account. When the reseller recieved a subpoena, 43SB.COM, LLC ("43SB"), the actual owner of the site, contacted Melaleuca through counsel and asked that further communications be directed to his office.

Melaleuca then obtained and served the same DMCA subpoena on 43SB, and 43SB filed a motion to quash the subpoena on June 25, 2007, arguing that the subpoena did not comply with the requirements of the DMCA and violated the First Amendment. At oral argument, counsel for 43SB narrowed its objections to two points: (1) that the cease-and-desist letter lacked the originality necessary for copyright protection; and (2) that upholding the subpoena would violate Tom Paine's First Amendment right to engage in anonymous speech because there was not a sufficient connection between Paine and the posting of the cease-and-desist letter.

On December 7, the district court adopted the Report and Recommendation of the magistrate judge (to whom the motion had been referred for decision). The Report recommended that the court deny the motion to quash with respect to d2, but grant the motion with respect to Tom Paine.

The magistrate judge rejected 43SB's argument that the cease-and-desist letter was insufficiently original to garner copyright protection. 43SB had argued that the letter was akin to a set of instructions or a recipe -- a work "detailing a process for the owner of the Website to follow in taking down remarks made about Melaleuca and its CEO." The magistrate judge sidestepped the issue, ruling that it would "not go into an in-depth analysis of the merits of a copyright infringement claim in determining whether to quash this subpoena." Instead, the court concluded that Melaleuca's registration of the letter with the Copyright Office was a sufficient indication of ownership of a valid copyright for the DMCA subpoena to issue.

Reasonable minds could disagree on whether this C&D was sufficiently original to enjoy copyright protection, but the magistrate judge's hesitancy to examine the merits of the claim is disquieting, especially in this context where anonymous speech (rather than anonymous piracy) is at issue. Additionally, the court failed to consider fair use. One could argue that posting a C&D like this is always, or almost always, going to constitute fair use, and so a DMCA subpoena should not issue based on its posting. The case that comes to mind is Online Policy Group v. Diebold, where the court held that portions of Diebold's email archive were so clearly subject to the fair use defense that "[n]o reasonable copyright holder could have believed that [they] were protected by copyright." In that case, fair use rendered a takedown notice defective (and made the sender liable for material misrepresentation). It is not a long stretch to argue that fair use could bar issuance of a subpoena, especially when the party seeking it must submit both a copy of a valid takedown notice and a sworn declaration that "the purpose for which the subpoena is sought is to obtain the identity of an alleged infringer." 17 U.S.C. § 512(h)(2)(A), (C).

Then again, fair use is an affirmative defense, and so far courts have held that, in order to obtain a subpoena under sectin 512(h), a copyright holder need only plead a "prima facie case" of copyright infringement -- that is, (a) ownership of a valid copyright; and (b) unauthorized copying. In such an analysis, there is no room for a fair use challenge. The question remains, however, whether this minimal standard does enough to protect the First Amendment rights of anonymous posters when copyright and First Amendment interests clash. The better view is that courts should impose a heightened standard of review before issuing a DMCA subpoena when the allegedly infringing activity is speech, or part of a larger pattern of speech. (Note that this will not be the case in all, or even most, online copyright cases. See, e.g. Sony Music Ent. Inc. v. Does, 326 F. Supp.2d 556, 564 (S.D.N.Y. 2004)).

Luckily, the magistrate judge's opinion was not a complete disaster, and he had a good enough grasp on the factual and technical issues to see through the ruse of naming "Tom Paine" in the subpoena as one of "those persons who posted the infringing content." Melaleuca's beef with Tom Paine was that he made allegedly defamatory statements on his blog. There was no reason to assume, at least not from any evidence put forward by Melaleuca, that Tom Paine was the administrator of 43rd Street Blues, who received and posted the C&D. So, at least in the end, the court stymied Melaleuca's attempt to use the DMCA to unmask a potential defamation defendant, a result that would have made a mockery of the First Amendment protection for anonymous speech recognized and implemented by courts like Cahill, Dendrite, Mobilisa, and Essent, to name a few.

(For additinal details and court documents, please see the CMLP database entry, Melaleuca v. 43SB.COM.)

Prince Threatens Fansites with Legal Action

Sam Bayard — Wed, 07 Nov 2007 11:18:14 -0500

Waning pop genius Prince has initiated a campaign to force fan websites dedicated to his work to stop "all use of photographs, images, lyrics, album covers, and anything linked to [his] likeness." (The quote is from the Prince Fans United press release, discussed below.) According to reports (here, here, and here), Prince's lawyers have sent cease-and-desist letters and at least one DMCA takedown notice to the three largest Prince fansites, Prince.org, Princefams.com, and Housequake.com, demanding that they remove the above materials and requesting that the sites provide them with "substantive details of the means by which you propose to compensate our clients [Paisley Park Enterprises, NPG Records and Anschutz Entertainment Group (AEG)] for damages."

Apparently, the letters went so far as to request removal of photographs taken by fans of their Prince tattoos and their automobiles carrying Prince-inspired license plates. As of yet, we've been unable to get a copy of one of the cease-and-desist letters, but it looks like Prince's lawyers are asserting a mix of copyright and publicity rights in his name and likeness in order to justify their demands.

The fansites are not taking this lying down. They've formed a coalition, Prince Fans United, and have issued a press release criticizing the letter campaign as an effort to stifle critical commentary about Prince and squelch their freedom of speech. They've got a decent grip on the legal claims and defenses potentially at issue:

The owners of housequake.com, princefams.com and prince.org acknowledge that, while Prince is entitled to control of his copyrights, it should be within the law. The law clearly provides for displaying of images of a celebrity's likeness for newsworthy events or matters which are considered to be public interest. All three websites feel that the photographs and/or likeness displayed on their websites clearly fall within the public interest category. Additionally, the use of photographs is legal based on the fair use doctrine, i.e. the displaying of album cover art, or the collage headers created by website members using a variety of different photographs.

This is not the first time Prince has used aggressive tactics to enforce his rights. According to the Guardian, Prince hired Web Sheriff in September 2007 to "police the removal of up to 2,000 clips from YouTube." That same month, Prince announced his intention to sue YouTube, the Pirate Bay, and eBay based on the allegedly coypright infringing activities of their users (Tech Crunch has details). There was also controversy surrounding Universal Music's sending a DMCA takedown notice to YouTube complaining about Stephanie Lenz's 29-second home video of her eighteen-month-old dancing in her kitchen to "Let's Go Crazy." (For details, see Lenz's complaint against Universal in federal court in California.) To be sure, Prince's relationships with his former record companies has been notoriously stormy, but some reports indicate that Universal was acting at Prince's behest in the Lenz matter.

We're looking for a copy of the recent cease-and-desist letters, which may have been sent to fansites other than those specifically discussed above. We'll keep you posted.

Not Every Cease-And-Desist Letter is a DMCA Takedown Notice

Sam Bayard — Fri, 28 Sep 2007 14:56:52 -0400

Today, the Chilling Effects Clearinghouse posted a cease-and-desist letter from MediaDefender to gpio.org complaining that MediaDefender's leaked emails had been posted to the site. The operator of the site, which subsequently moved to http://mediadefender-defenders.com (but not because of the letter), also posted the letter and his reply. His reply quite effectively points out that he and his server are in Norway and thus "it appears that your legal grounds for throwing letters at me claiming this-or-that is shaky enough that you might want to relocate."

This exchange reminded me of an article in Ars Technica a few weeks back discussing the reactions of peer-to-peer site operators to similar letters from MediaDefender. I meant to post on this article at the time, but forgot about it until today. The gist of the story is that some peer-to-peer site operators received cease-and-desist letters from MediaDefender and responded with blistering comments ridiculing the MediaDefender lawyers for their impoverished understanding of U.S. copyright law. For example:

[isoHunt's] formal response to SMR&H is filled with caustic wit and considerable legal expertise. "If Mr. Gerber is truly as experienced in IP law as his bio claims he is," asks the isoHunt administrator in his response, "why is it that he is incapable of composing a DMCA takedown notice as per USC Title 17 Section 512?" The isoHunt administrator explains that Gerber failed to adequately specify the allegedly infringing content as required by law. The administrator also helpfully provides a link to a valid sample complaint so that SMR&H will be less likely to send the improper information in their second attempt. The following is an excerpt of the isoHunt administrator's response:
"This e-mail serves as a counter notification under USC Title 17 Section 512(c)(3)(A)(iii) that you have failed to properly identifying links to content that allegedly infringes your copyright/trademark/rights (or, in this case, has something to do with really embarrassing trade secrets *and* employee social security numbers) AND you have failed to address your e-mail to the appropriate agent, namely copyright@isohunt.com, so I invite you and your clients to take a long walk off a short pier, since you and/or your clients might actually manage to NOT get something that simple wrong."

In closing, the isoHunt administrator says that the he will comply with the request if it is properly submitted. "Despite us being located in Canada, if you do actually figure out how to compose a valid DMCA notice, we will honor it," he concedes, "just as soon as we're done laughing at you."

Don't get me wrong -- I understand the widely felt animosity towards MediaDefender these days. But I'm not so sure that isoHunt's "considerable legal expertise" hits the mark here. The DMCA notice-and-takedown provisions, found at 17 U.S.C. 512(c), only apply to claims of -- wait for it -- copyright infringement. Now, I didn't see the letter that isoHunt received, but it's a good bet that it's identical to the one gpio.org received. Guess what? No claim of copyright infringement there -- just the assertion that posting MediaDefender's emails violates (1) the federal Computer Fraud and Abuse Act; (2) the federal Electronic Communications Privacy Act; and (3) the California Computer Data Access and Fraud Act. (This fits with Ars Technica's description of the isoHunt letter, which apparently cited "various sections of the Computer Fraud and Abuse Act, the Electronic Communications Privacy Act, and the California Computer Data Access and Fraud Act.")

The letter requests that gpio.org "immediately and permanently cease and desist from posting, distributing or otherwise making available MediaDefender's trade secrets and confidential information, and provide us with written confirmation regarding the same." This essentially looks like a trade secrets case, albeit a complicated one.

The formula is simple: no claim for copyright infringement, no DMCA takedown notice, full stop.

My guess is that MediaDefender is not asserting claims of copyright infringement because of an important case, Online Policy Group v. Diebold, Inc., 337 F. Supp.2d 1195 (N.D. Cal. 2004). In that case, Diebold, a manufacturer of electronic voting machines, sent DMCA takedown notices to a number of ISPs that were hosting leaked internal Diebold documents revealing flaws in its machines. The DMCA notices claimed that posting the company's internal email archive violated Diebold's copyrights and demanded that access to the email archive be disabled. An ISP and the two college students who were posting the documents sued Diebold, and the district court held that Diebold had violated Section 512(f) of the DMCA, which makes a copyright owner liable for damages, including costs and attorneys' fees, for "knowingly materially misrepresent[ing]" in a takedown notice "that material or activity is infringing." The court found that portions of the email archive were so clearly subject to the fair use exception that "[n]o reasonable copyright holder could have believed that [they] were protected by copyright." According to the EFF, Diebold subsequently agreed to pay $125,000 in damages and fees. Needless to say, there are some strong factual similarities between the Diebold leak and MediaDefender's troubles over the last couple of weeks.

There was no reason why MediaDefender had to send isoHunt a valid DMCA takedown notice under the circumstances, and the company's mocking response -- while amusing -- was not coherent from a legal point of view. This was just an ordinary cease-and-desist letter, much like the ones that website operators receive all the time in defamation cases. The DMCA gets a great deal of attention in discussions of online speech, especially in technical circles. This attention is warranted, and vigorous debate about this controversial provision of the Copyright Act is necessary. But it's important to remember that there are other legal issues affecting your online activities.